Patent Research

The question

Patent research answers three different questions, and it helps to know which one you are asking.

Can I get a patent? That is a patentability question: is the invention new and inventive over everything that was made available to the public before the filing date? Can I sell this product without infringing someone else's patent? That is freedom to operate. And who else is active in this field, and what are they filing? That is a landscape and monitoring question.

Each calls for a different method and a different standard of proof. A search that is good enough to decide whether to file is not good enough to clear a product launch, and the cost of confusing the two falls on you later: a refused application, a cease-and-desist letter, or a patent that is granted but easy to revoke.

Clients come to us in situations such as these: an inventor wants to know whether a patent is realistic before spending on an application; a product team needs a go or no-go before launching in Germany; a company has received a letter alleging infringement and needs to know how strong the other patent is; or management wants to see what competitors have been filing over the past three years.

Our approach

We begin by agreeing the question, the technical scope and the countries that matter. A freedom-to-operate analysis, for example, concerns patents in force where you will make, use or sell, not every document ever published.

Our patent analysis and research function then retrieves candidate documents from European Patent Office data and sorts them. For third-party patents it supports claim construction, validity review and freedom-to-operate analysis, and where we answer legal questions it relies on EPO and UPC case law with citations that we verify against the source.

A European patent attorney then does the part that cannot be automated: reading the claims, deciding what they cover under Article 69 EPC and its Protocol, and comparing them with your product or process. Prior art and how to search for it and freedom-to-operate analysis explain the legal tests we apply.

Research is a snapshot. Patents are published, granted, lapse and are transferred every week, so where the answer has to stay current we set up a patent watch, which compares each run with the previous one and reports what is new.

In practice the work runs in four steps. The technology retrieves and sorts candidate documents and builds claim charts. The attorney sets the search strategy, reads the documents that matter and decides which are close enough to count. For a third-party patent, the validity review maps its claim features to the prior art, and the attorney decides whether an argument would hold before the EPO or the Unified Patent Court. The opinion is only issued after the attorney has checked the citations to case law against the source.

What you get

• A written report matched to the question: a patentability opinion, a freedom-to-operate opinion, a validity assessment of a specific patent, or a landscape overview.
• A list of the documents that matter, the claims that are relevant and the reasoning that connects them to your invention or product.
• A risk assessment with options where a problem is found: design around, licence, challenge the patent, or proceed with eyes open.
• Where useful, a watch on the field, so that new filings by competitors reach you without a new search.

Every opinion is reviewed and signed by an attorney. We state what the research covered and what it did not, because no search of published documents is exhaustive. Applications are published about 18 months after filing, so very recent filings cannot be seen.

The results feed directly into your patent strategy: they shape the claims we draft, the countries we recommend and the decision whether to file at all.

Consider a European food-technology company that received a letter citing a European patent. Our report shows that the patent was validated in only two of the countries where the company sells, that one independent claim requires a processing step the company does not use, and that a published paper from before the filing date may anticipate another claim. The company can then answer the letter from a position of knowledge, and decide whether to negotiate, design around or challenge.

Next step

Describe the invention or the product, the markets you care about and the decision the research should support. We will propose the scope of the work before we start.

Schedule a meeting or contact us.