Searches and watching
Protecting investmenthistorymarket position
REDUCING BUSINESS RISK
Prior art searches
Prior art searches (whether trademark, patent, or design searches) are an often crucial tool in the process of protecting intellectual property, as they allow to evaluate the state of the art in order to:
- optimize the scope of protection of the title you wish to register
- prevent legal conflicts
- identify “the most appropriate way” to invest capital.
- check the novelty requirements
- analyze the validity of earlier rights
THE FIRST STEP TO TAKE BEFORE USING A NAME
Searches among existing trademarks
Before proceeding with studying and developing trademarks, and investing money in them, it is always of utmost importance to carry out in-depth investigations by means of prior word-mark searches.
A search among existing trademarks is the first step to take when considering using a name for commercial purposes: the results of the search identify the elements that might be obstacles to trademark registration or might cause infringement with the use of a name and allow us to define the best strategy for trademark registration.
The search for identity, contains, similarity with analysis detects active trademarks potentially confusable with a proposed name in a specific area according to any point of view under evaluation that is visual, phonetic and conceptual. It analyses their scope of protection and provides an opinion on existing risks and available strategies.
The identity search is limited to the detection of active trademarks in a specific area that are identical to a given name.
ANALYSIS OF THE STATE OF THE ART
Patent prior art searches
In the field of patents, searches can be useful for example in order to:
- know the state of the art, that is the technical solutions adopted in a specific area or for a specific problem so as to safeguard initial investments;
- become aware of a competitor’s innovations;
- verify the extent and geographic distribution of the property rights of others (very useful information to develop effective business strategies);
- identify patents which can be licensed (often less expensive than developing a new non-patented solution to a technical problem).
When carrying out patent searches, it should be considered that they can be done based on multiple parameters, such as keywords in the title or description, name of the owner or inventor, International Patent Classification.
In addition, the result of the search may be different depending on when the search is carried out due to the fact that patents for invention enjoy a secrecy period of eighteen months from the filing date of the application.
Therefore, upon subsequent search, new filed patents may appear that were not previously accessible.
From July 1st, 2008, also Italian patent applications are subject to a novelty search by the EPO, European Patent Office, which is then sent to the UIBM and forwarded to the applicant within 9 months of filing, together with an opinion on the patentability of the invention.
This makes it advantageous to file an application because at a low cost you get a search whose results may be useful to the applicant to understand whether the patent deserves to be extended abroad or not or in any case whether it is worth investing in it.
Patent searches by subject-matter investigate published inventions in a specific field or concerning a specific technology.
Searches by applicant provide titles published in a field selected by a specific applicant.
DETECTION OF NEW CONFUSABLE TRADEMARKS
Trademark watching
The trademark watching service provides for the monthly issuing of a monthly summary of applications for similar trademarks published (and sometimes not yet published) in the designated area (territory and class of goods or services) drawn up on the basis of a check in the official databases of countries around the world and details of them, in particular timing for opposition, products and services covered by the application and applicant.
The Italian Patent and Trademark Office (UIBM) does not carry out any searches among existing trademarks on receipt of a new trademark application.
The purpose of the trademark watching service is to enable the applicant of the monitored trademark to file opposition to registration against potentially confusing or harmful trademark applications within the tight deadlines imposed by the various national and international competent offices (the deadline for filing opposition to an Italian or EU trademark application is 3 months from the date of publication) and is carried out following the client’s needs, allowing complete and constant monitoring on the filing of similar names and enabling the monitoring of trademarks, initially not in conflict, that could become so, for example, as a result of an enlargement of the territories or products/services marketed.
The opposition procedure has the purpose of obtaining the limitation or rejection of the conflicting trademark application with a procedure that is simpler and certainly less expensive than a legal action, so the watching service proves to be an important tool for the protection of a name in consideration of how the growing trend in the number of worldwide trademark application filings is followed by the growing trend of infringement cases.
The watching offered is available in more than 200 countries and registers and can also be extended to figurative trademarks and possibly company names as well as designs.
60 YEARS SUPPORTING INVENTORS
Why choose us
TEAM OF INDUSTRIAL PROPERTY CONSULTANTS
The strategic decisions related to your case will be assessed with a discussion among several consultants in order to obtain a more complete view of it and be sure to objectively consider risks and opportunities, taking advantage of the experience of each individual consultant.
Consultants are certified professionals who have precise training in the field of Intellectual Property and are registered with the Italian Institute of Industrial Property Consultants. Their aim is to enhance the intangible assets of their clients by helping to generate an economic asset and an advantage over competitors.
Within the firm there is a team of consultants registered with the Italian Institute of Industrial Property Consultants, Patent, Trademark and Design section, consultants qualified with the European Patent Office, consultants qualified with the EUIPO for European Union Trademarks and Community Designs, and a consultant qualified as a Patent Litigator with the Unified Patent Court. Several of the consultants working with us have also served as Technical Advisers to the Judge and Experts for the Court of Udine.
360-DEGREE EXPERIENCE
Our consultants have:
- Knowledge of regulations and experience that enable identification of the most suitable type of search and correct interpretation of results.
- Access to international paid databases and knowledge of analysis tools.
- Experience in suggesting changes so that the risks and consequences of disputes and litigation can be overcome or reduced.
- Experience in identifying the best strategies in case of infringement.
- Experience in defining the best strategies, based on the client’s interests, of commercial exploitation and licensing of IP titles.
- Capacity for recognizing any weaknesses in trademarks, designs, patents for invention.
During our 60 years of activity we have assisted numerous clients in a wide variety of cases pertaining to the commercial exploitation of IP titles and are able to suggest the most suitable strategy in the conclusion of agreements for the transfer of rights and exploitation of patents, designs and trademarks, as well as for the drafting of any agreements related to these rights (non-disclosure agreements, non-compete agreements, distribution agreements, assignments, etc.).
AN INDUSTRIAL PROPERTY CONSULTANT FOR INITIAL GUIDANCE
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