When you market your products, you publicly display your offer and your know-how. Your competitors are in a position to react, and if one of them accuses you of counterfeiting, thefreedom-to-operate study can help you defend yourself.
I want to protect my invention
The patent attorney is a professional
of patent law and an expert in your technical field.
The patent holder has a monopoly on the invention
The monopoly granted on the date of issue of the patent grants exclusive rights to exploit the invention for a period of 20 years. Obtaining an industrial property title authorizes the use of administrative and legal measures to combat counterfeiting.
In the normal course of business, if you haven’t taken any steps yourself to protect your industrial property, it’s quite possible that you’ll receive a formal notice. A patent holder who believes that your product uses an invention of which he has a monopoly will send you a notice to stop the infringement.
You can question the validity of a patent!
If you believe, with the help of an IP attorney or patent attorney, that the owner’s claim is well-founded, you can stop commercialization or offer to license the patent. But you can also question the validity of the patent, particularly if you have a more relevant document than those relied on by the examiner. If the patent owner admits that the document is relevant against his patent, he must abandon his action.
Prior art search and validity study
In this situation, we advise you to carry out a prior art search and validity study. Indeed, thanks to a prior art search, it is possible that an IP attorney will discover on the databases that the invention for which you have received a formal notice has already been the subject of a patent or a prior article!
This would mean that the feature invoked by the XXX patent has already been described in a previously published document, and that the invention is not new. The validity study enables you to prove this
With this information, you can bring a nullity action before the Commercial Court to have the XXX patent annulled. This is a somewhat costly formality, as it requires time and the support of professionals. The patent lawyer and industrial property attorney work together to defend your interests and restore your freedom to operate. You can then ask the judge to reimburse your legal and IP attorney fees.
À lire : Filing for a patent: Choosing an IP attorney or a lawyer?
You also have the option of contacting the company owning the XXX patent to negotiate a free license with them, in exchange for which you will not attack their patent for the duration of this license.
The PACTE law has created a new formality foropposing a patent, enabling you to make an administrative request toINPI to have the XXX patent annulled. However, for this procedure to be valid, it must be carried out as soon as possible after grant. The time allowed to carry out the procedure will be specified by order.
Read more: Wifi costs Apple dearly: the firm is sued by Caltech for counterfeiting
In one image, our infographic sheds light on the validity study and its use when receiving a formal notice:
