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SEARCHING, DRAFTING & PROSECUTION

Learn more about patent attorney services in the field of industrial property

I encourage everyone, who needs support of a patent attorney, to explore my services – I can assist individual inventors, scientific institutions, small- or medium-sized companies, corporations, as well as individual professional representatives or entire law firms, from Poland, Europe or other regions.

Searching, meaning any type of prior art search - each one answering a slightly different question, depending on the circumstances and particular needs.

Prior Art Search

Are you working on a solution, but it's not ready yet? Maybe you're interested in a specific field and want to learn about the latest solutions being developed? Or perhaps you're looking for publications made by specific Inventors? In short - if you have a more or less specific question, we can try and answer it together using patent databases and see what we can find. Among the hundreds of millions of documents, there’ll surely be something interesting for everyone.

Patentability/Novelty Search

A patentability or novelty search involves comparing the solution developed by the Inventor with its closest equivalents already known in the prior art to assess whether it meets the statutory criteria for obtaining protection, i.e., novelty and inventive step (Articles 25 and 26 of Polish Industrial Property Law / Articles 54 and 56 of the European Patent Convention) in the case of patents. For utility models, on the other hand, the primary objective is to verify whether the requirement for novelty is met, although the conditions are not standardized across all countries, so a certain degree of inventive step analysis may also be necessary. The report's conclusions estimate the possibility of obtaining protection, and the more precisely the examined solution is described at the start, the more precise the conclusions will be.

Freedom-To-Operate

FTO, risk of patent infringement, freedom of entry into the market, patent risk assessment – there are many names for an search that answers a single question: "Will your solution infringe another's patent/utility model?" To prepare for this, you need to know WHAT we are analysing and WHERE.

WHAT – requires a precise definition of the solution being examined, i.e., what it is, what has been changed/improved and what has been known for many years.

WHERE – requires defining the territory to be examined ("the whole world" means a lot of documents and responsibility, therefore it will take time and cost more).

Ultimately, it's worth to work on the criteria for the search together and agree on a specific search query that will limit the group of documents that will be subjected to in-depth analysis. The conclusions from the search estimate the risk of conflict when launching a given solution into the market.

Search needed for grants

Grant applications often require the submission of a prior art report that supports the viability of developing a given solution, both in terms of the possibility of obtaining protection and introducing R&D results into the market without infringing on the rights of other entities. Preparing such a report therefore requires a mixed approach, examining both aspects of patentability and possible infringements, along with precise listing of how the search was conducted. A report presenting relevant publications and formulating substantiated conclusions can be indispensable when applying for funding.

Broad research of technology / competition / industry trends

Are you not interested in reading specific publications, but enjoy graphical visualizations of certain information? You don't have a ready solution that you could launch into the market or try to patent, but are curious about the possible development directions of a given field of technology? Do you know your competitors but want to learn more about what they do or where they see potential markets? Or perhaps you want to learn about the competition your solution might face, as you're just entering the market? Even relatively vague questions can be turned into something that provides useful insights that can be presented in various ways.

Invalidation Search

Is someone threatening to invalidate your patent or utility model? Do you want to know the chances of invalidating those belonging to your competitor? To begin, you need a document to be analysed, with the contents available or translated into Polish or English. Based on the filing date (or priority) of such document, older publications are searched which may fully or partially disclose aspects of the protected solution. Finally, a conclusion is formulated – whether the given patent/utility model met the legal requirements for obtaining protection or not.

Is your question different? Let's talk, and I'll prepare something specifically for you.

Drafting, or preparing the text of patent applications and utility models.

In general, our collaboration may look as follows:

  • Receiving the first set of materials from the Inventors
  • Initial assessment whether the documents seem complete
  • Drafting the first possible version of the claims
  • Meeting with the Inventors (e.g., virtual one) to clarify details and/or supplement the materials
  • Finalizing the description, including claims, embodiments, and drawings that best represent the invention, in a manner that meets the standards and requirements of the Polish Patent Office/EPO
  • Sending the proposed, complete application text to the Inventors for approval
  • Incorporating potential comments from the Inventors
  • Preparing the final version of the application

This work can be conducted in Polish or English.

The estimated time required to finalize the application ranges from several days to several weeks, depending on the amount of materials, the complexity of the topic and the availability of the Inventors. While you can try to do everything at once, it is best if both the patent attorney and the Inventors have time to consider the content being created without any rush.

Patent Prosecution - all activities related to obtaining and maintaining patent protection.

I treat this somewhat separately from searching and drafting applications, as it depends the least on our (the attorneys and Inventors) actions, and it is sometimes difficult to predict when the next steps will be taken. Some cases can finish with a granted right within 2 years, while others can wait 4-5 years for any initial response from the patent office.

This includes activities such as:

  • Filing Polish, European and International applications
  • Filing motions to the Polish Patent Office, European Patent Office, and World Patent and Trademark Office
  • Intermediating in contacts with patent attorneys / law firms and patent offices from Poland and abroad
  • Corresponding with patent offices / experts (preparing responses, explanations, and completing all procedural steps) regarding filed applications
  • Monitoring deadlines / reminding the clients to pay official fees on time
  • Paying official fees on behalf of the client
  • Continuing patent proceedings (taking over a case / initiating the regional phase before the EPO)
  • Correcting / “rescuing” patent applications
  • Preparing Polish validations of granted European patents
  • Support in the maintenance of patents / registering changes in the register
  • Translating / verifying translations of patent documents into Polish and English
  • Assistance in litigation