Once a patent has been identified as an appropriate tool for protecting your IP, it is important to consider where and when to file, taking into account your specific commercial needs. Once the filing strategy is decided upon, we are ready to prepare a patent application.
Meeting with inventors and drafting patent applications is what we love! We have extensive experience of this process, both for first-time inventors and regular inventors, and for inventors in academia and industry. We enjoy getting to grips with complex technical subject matter and framing patent applications to cover the key concepts and their variations.
After filing, a patent application will in due course undergo examination by the relevant Patent Office. This includes an assessment of novelty and inventive step. The novelty test is generally based upon an objective comparison of features, although the Patent Examiners can often misinterpret terms used in the application or in the prior art that is cited. Inventive step is an inherently subjective question, and the Patent Examiners can often think that cited prior art is more relevant than it really is upon proper consideration. We have experience of overcoming objections that are made by the Examiners, and entering into an effective dialogue with them to negotiate grant of the application.
When it comes to computer-implemented inventions, the law regarding patents is complex. Different countries have different laws about what type of subject matter can and cannot be protected with a patent, as a matter of policy. The USA in particular takes an approach that is very different to that taken in Europe. We have in-depth working knowledge of the practice of the UK Intellectual Property Office, European Patent Office and US Patent and Trade Mark Office in this regard. For a software innovation we always start off by advising what can be patented and what cannot, according to the relevant restrictions.
We also have experience in conducting opposition and appeal proceedings at the European Patent Office. These typically end with oral proceedings. Obtaining a successful result at oral proceedings requires meticulous preparation, effective oral communication, and quick-witted thinking. Our skill set provides a perfect fit for these proceedings.
We act directly before the UK Intellectual Property Office (UKIPO), the European Patent Office (EPO), the World Intellectual Property Office (WIPO), and the Office for Harmonization in the Internal Market (OHIM). We also have experience in patent prosecution in a wide range of international territories. In particular, we have an in depth knowledge of patent law and procedures in the USA.