Case Studies

Patentcheck located new material even though the patent family was previously examined in DE, EP and US. We were pleased to learn from the patent attorney that the client decided to include, especially at such a late stage of prosecution, one of our results into their last submission.

Having analysed and conducted prior art searches on the 15 underlying concepts, it transpired that 8 were not novel. The institute decided to refocus their efforts and budgets on the remaining 7 projects.

Patentcheck established that the patent holder had opportunistically patented the product which they had presented at a fair earlier. Bolstered by the search results and report our client resumed negotiations and later informed that: ‘The other party backed down.’

The manufacturer was accused of 'borrowing' 5 design features of 4 different apparatus and the case looked bleak. However, once we analysed each of the in total 20 features, the outlook changed drastically. The IP lawyers, in close cooperation with Patentcheck and Patent Attorneys, nullified the infringement impact of 17 features and the remaining 3 were less relevant for non-prior art reasons.

Patentcheck located similar proposals in online non-patent literature and our client refocussed their attention to other applications for their optical waveguide expertise.

One of the publications we located in our search covered exactly the product variant our client was developing. Introducing this publication in opposition proceedings eliminated claims that otherwise could have stood in our client’s way.

The other party offered a license deal but that would render our client’s prices uncompetitive. Patentcheck located prior art and requested an Opinion at the UK Patent Office. Their subsequent Decision ruled 13 of 14 claims invalid. This outcome resulted in a free license for our client.

... regards the boundaries of the field of technology for the person skilled in the art.

An example of this came up for an external computer switch design. In the relevant Locarno class for computer peripherals we located portable USB hard drives with matching visual features.