The office provides a comprehensive service for all our clients’ needs relating to inventions, utility models and industrial designs, both at home and worldwide.
We carry out domestic and foreign searches for novelty of technical solutions, for non-infringement of patents in force, for state of the art and names, all including final evaluations. For foreign searches, we work with our international partner offices.
Our searches examine the following sources:
a) the Patent Literature Library of the IPO, which holds domestic patents, utility models, industrial designs, published patent applications, as well as patents and published applications from selected states and under certain patent organizations (including Germany, the United Kingdom, France, USA, Poland, Russia, the European Patent Office and the Patent Cooperation Treaty);
b) the Official Journals of the IPO including their CD-ROM publications;
c) the Registration Databases of the IPO;
d) Databases accessible via the Internet, namely ESPACENET, DELPHION and individual patent offices’ electronic databases ; and
e) Technical literature.
Procedure
We complete and file applications related to inventions, utility models and industrial designs both at home and abroad. We like to work directly with clients when preparing an application, but are able to complete an application from technical documentation alone if necessary. At least two attorneys from a suitable technical background will work on each application.
We will only file an application after the client consents to its wording. After filing, we provide the client with full copies of all documents, forms and filing certificates. For foreign applications, we include a copy of the foreign attorney’s invoice.
We send all filing receipts to our client, along with a suggestion for next action. We then work with the client to work out these next steps in more precise terms, including possible modifications to an application. After filing a submission, the client receives a full copy of the submission and an invoice for our services. For foreign applications, we enclose a copy of the foreign attorney’s invoice.
Our office monitors for legal and official activity related to applications and titles of protection throughout their duration using our bespoke monitoring software, with frequent direct attention from the attorney handling the matter. Typically, a client receives one month’s notice of maintenance fees falling due. Alternatively, we may agree with a client that we will provide a list of all titles to be maintained in the next year at home and abroad, always towards the end of November or early in December.
The office drafts licence contracts for our clients and reviews those drafts produced by the other contracting party, always in close cooperation with our client. The office directly handles the registration of licence contracts in the IPO of the Czech and Slovak Republics. The office also manages the registration of licence contracts in other countries via our international network of partner patent and legal offices.
Contentious work
The office provides representation in declaratory, revocation and cancellation procedures both in defence of the client’s rights and in contestation of foreign titles of protection. All representation is carried out by licensed patent attorneys, each with many years’ experience appearing before the IPO first and second instance commissions. All presentations are prepared by at least two of our patent attorneys, with one performing the role of an opponent. We suggest clients seek oral proceedings before the IPO commission and will provide at least one patent attorney for the hearing. We may be able to conduct these matters in the absence of a client. When necessary, however, we will recommend the client attends.
International patents
Since 1991, the office has regularly handled all aspects of international PCT applications. We instruct and manage any international attorneys, analyse international search results and suggest any consequent modifications to an application, file applications for international preliminary examination and suggest any consequent modifications to an application. After filing, we work with clients on an ongoing basis to monitor a patent’s validity and ensure maintenance fees are paid.
Through our partner offices, we provide access to the patent filing systems of Member States of the Patent Cooperation Treaty. We draw up European patent applications and file them directly and to the European PCT through our partner foreign offices. When splitting a granted European patent into discrete national patents, we verify the validity of the European patent in the individual Member States.