IP Rescue: How can we help?

Your application was lodged, and you thought that was that – you set about making your concept a reality and courting investors based on your portfolio of applications. Now you’ve had a letter from the Intellectual Property Office citing all sorts of problems with it. You’re not sure how some of these issues can be overcome, and you feel out of your depth.

You might have begun this process alone, but you don’t need to finish it that way. Our IP experts can advise on your ongoing applications and your existing IP portfolio and answer questions like…

…IS THIS LETTER LEGITIMATE?

Published applications have associated proprietor addresses. Unfortunately, not everyone uses these responsibly, and there are known issues with applicants being targeted with correspondence that looks terribly official, but isn’t. We can help you triage which letters to take seriously and which to bin. (And if we are added as official representatives, we can act as the “address for service” for the IP in question.)

…CAN MY APPLICATION BE SALVAGED?

We have extensive experience in responding to office actions and resolving objections. We also pride ourselves on levelling with you about the odds of success – and if it becomes apparent that your existing application is fatally flawed, we can advise on what can be done to salvage the situation.

…SHOULD I BE WORRIED ABOUT THIS PRIOR ART?

Let’s say your application has prompted an examination report citing several pieces of prior art, all of which the examiner has used to object to the validity of your application. We can assist you in discerning when these prior art documents pose a real issue that demands action, and when the examiner has made an error that can be overcome through patient argument.

In addition, this prior art will often be in the form of other IP applications of the same time, which may be active and provide enforceable rights to their proprietors in the jurisdictions in question. In particular, when it comes to patents, you might be able to get a valid application to “A+B”… but if someone had the pre-existing patent to “A”, or “B”, then you may find that these existing prior rights pose a potential freedom to operate risk. We can advise when this comes up, either through the usual examination process or a freedom-to-operate search.

…WHY IS THIS STRANGER WRITING TO THE EXAMINER, OBJECTING TO MY APPLICATION?

IP isn’t just a private matter between you and the intellectual property office; inherently, the grant of a patent, trademark, or design right to you grants you rights which can be enforced against others in the jurisdiction. It’s only fair, then, that people who may be affected get a chance to raise issues if they spot that your applications may have problems – and they may well do so if they believe your IP will cause them significant issues, like a trademark that’s a touch too close to their brand, a registered design which looks a little too close to their product’s distinctive style, or a patent which might get in the way of their own ideas.

Third-party observations – or outright oppositions – are more common in some areas than others because some technical fields or lines of business are more aggressively competitive, but they can show up anywhere. We can help you figure out when a third party’s objections to your application are worth heeding – and what to do to overcome them.

(For that matter, if you are keen to make sure the competition doesn’t acquire IP which will put a crimp on your style, we can arrange to file objections of our own…)

…WHAT’S THIS WEIRD LETTER I’VE RECEIVED ABOUT SOMEONE ELSE’S IP?

Once your application has been published, you’ve shown the world the brand concept, aesthetic design, or technical idea you’ve been contemplating bringing to market – and someone might have a problem with that. A letter from out of the blue, drawing your attention to someone’s IP, may well be a prelude to a dispute. Our IP attorneys can help you assess how much of a problem this third party’s IP is likely to pose – and, in conjunction with our Disputes team, can help you mount the best possible defence should the other side proceed with legal action.

…WHAT DO I DO NEXT?

Maybe you’ve run into one of the above problems. Maybe you haven’t – but you’re now worried you might. Or maybe you haven’t yet put in that application, and you’re having second thoughts about going it alone. Whatever the case may be, our IP team stand ready to advise you at whatever stage you are on your intellectual property journey.

Find out more about our IP expertise.