Searches and Freedom to Operate
At Maxwells, we can have a range of patent searches carried out in Australia and overseas to provide you with a better understanding of the patent landscape surrounding an invention. For example, Freedom To Operate (FTO) searches are an essential tool for assessing whether or not an invention is likely to infringe a patent. Validity searches allow for an assessment of the likely prospects of a patent being granted for an invention and how strong any such patent may be. Another possible benefit of such searches is that it enables our attorneys to “draft around” what is revealed by these searches when preparing a patent application for your invention.
Freedom To Operate Searches
Do you really want to run the risk of infringement of the patent rights of others and incur the large associated legal costs?
We know a lot of time and money is invested in an invention from concept to commercialisation. So we encourage our clients to have relevant searches done to establish early on in the research and development stages whether or not they are likely to infringe the valid patent rights of others.
Freedom to operate in the patent landscape is territorial and the question of patent infringement must be assessed in each country where your invention is to be commercially exploited. As technology continues to move forward and patent applications for inventions of increasing complexity are filed each year, assessing the risk of patent infringement becomes harder and more complicated. On the basis of the results of the freedom to operate search, we can provide you with our professional opinion as to whether or not your invention will infringe any of the patents revealed by that search.
Validity searches, also called subject matter searches, allow for an assessment of the likely prospects of a patent being granted for your invention and how strong any such patent may be. They can also be used to assess the validity of someone else’s patent and this may be a useful tool in the event that you are the target of allegations of infringement of that same patent. On the basis of the results of the validity search, we can provide you with our professional opinion as to whether or not any patent granted for your invention will be valid over the patent subject matter revealed by that search.
These are searches that seek to locate any patent applications or granted patents which are under a particular name, being either in the name of an inventor, an applicant or a patent owner. These searches can be useful in keeping an eye on the patent filing activities of a known competitor.
When you become aware of the existence of a patent application to someone else, it is possible to track the progress of that application and determine its outcome. If the outcome of a competitor’s application is that it is accepted by IP Australia, our watch service will provide you with details of its examination history and enable you to decide if you want to oppose the grant of a patent on that application or request its re-examination.
In cases where you have become aware of a competitor’s product or process which you believe might infringe your patent rights, we can provide you with our professional opinion as to whether or not that product or process will infringe your patent.
Cease and Desist
A Cease and Desist letter is sometimes called a Letter of Demand in Australia. It demands the recipient stop the activity alleged to infringe a patent and refrain from carrying out any such activity in the country covered by the patent.
This letter will outline:
- The patent owner’s identity and patent rights (including the patent number)
- The activity of the recipient alleged to infringe those rights
- The legal grounds on which the allegation of infringement are based
- The patent owner’s specific demands
- The deadline to cease the allegedly infringing activity
- What actions will be taken, and the remedies sought, if that activity continues, and
- Any offer to negotiate other possible outcomes.
The remedies sought may be damages or an account of profits.
If deemed suitable, an offer to license the patent rights to the recipient may be included.
If the recipient complies with the demands, no further action need be taken, unless there is recommencement of the allegedly infringing activity.
Getting the right legal advice before you embark on patent infringement action is crucial to minimizing costs and achieving the best outcome in the circumstances.
Maxwells will assist you all the way, from searching and assessing questions of infringement and validity of a patent, to enforcement of your rights, so that you can have available to you the full commercial value of your patent.