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We offer the full range of services that you would expect from a firm of British and European Patent Attorneys including UK and European patent drafting, filing and prosecution and also services relating to due diligence and post-grant contentious proceedings such as validity and infringement assessments and attacking and defending European patents via the centralised EPO opposition procedure. We employ cutting-edge patent management software to electronically track and maintain all of our cases and can provide a client portal for remote access if desired.
The below offers only a snapshot of the type of services offered. For any questions, please get in touch using the e-mail address below or via the contact section.
Patent drafting is the process of putting together a patent application ready for filing.
Once filed, a patent application must stand on its own merits.
A patent provides a monopoly commensurate with the scope of disclosure. Therefore common to most jurisdictions around the world, and especially Europe, there are strict rules governing amendment of patent applications during examination, preventing an applicant from obtaining an unwarranted advantage.
At the same time, the obstacles a patent might face during examination, such as prior disclosures, are typically not known at the time of filing.
Once filed, patents are examined based on jurisdiction-dependent factors such as whether they: are novel and inventive; sufficiently disclosed; satisfy various clarity requirements and are susceptible to industrial application.
Then there are the differences between key global jurisdictions, e.g. between the US and Europe, sometimes necessitating subtle or major differences in approach for equivalent applications.
All of these factors combine to: complicate the process of drafting; necessitate a drafting style that facilitates a great deal of flexibility in terms of amendment during prosecution; and increase the importance of putting things in good order from the beginning of the process - once filed, there is limited scope for improvement.
Our commitment to excellence serves to strengthen the prospects of not merely obtaining a granted patent, but obtaining a valid, enforceable and commercially beneficial patent.
Somerville Associates has specific experience in drafting patent applications in the technical fields of: medical devices; automobiles; and telecommunications including the technically challenging 3GPP/LTE standard essential patents with global jurisdictions in mind and particular emphasis on the US and Europe.
Here is an example of a drafting process from inception through to completion:
inventor puts together invention disclosure statement;
invention disclosure statement is reviewed;
a search is undertaken to discern pertinent prior art disclosures;
we review invention disclosure statement and prior art;
we conduct interview with inventor;
we put together set of claims and discuss with inventor/applicant;
we draft remainder of patent specification.
Once a patent application has been drafted it can be filed in a number of different ways according to one of a number of possible filing strategies.
Somerville Associates can file British, European and International PCT applications, and we have links with patent attorneys around the world for filing in the remaining jurisdictions.
Once filed, we employ the latest generation patent management software to electronically manage the filing (and related filings) over the full course of its lifetime from filing, through to and beyond grant, including payments of renewals.
Patent prosecution refers to the process between filing and grant which can take up to five years or more depending on a number of factors such as the complexity of the case and filing strategy.
Typically in each jurisdiction there is an exchange back and forth between the patent representative on record and the specifically assigned examiner in the relevant patent office, e.g. the UK Intellectual Property Office (UKIPO) or the European Patent Office (EPO), and the patent is amended in the process.
This process typically takes around five years leading to a granted patent, although applications can also be voluntarily withdrawn or refused.
The scope of any granted patent is dependent on not only the content of the application as filed, but also the amendment effected by the patent representative during prosecution, and therefore it is important that both these vital steps are undertaken to the highest possible professional standard to obtain valid and enforceable patents.
Failures during prosecution can lead to unenforceable patents. This is particularly so for the UK and Europe owing to the highly strict amendment requirements in respect of 'added subject-matter' imposed by British and European patent law; amendments during prosecution can lead to the so-called 'inescapable trap' in which the only way to remove an offending amendment post-grant would be to unallowably extend the scope of protection, with the only outcome being revocation. British and European patents are regularly revoked for this reason.
Ideally the patent representative is capable of offering judicious recommendations during each step in the prosecution process and able to do so efficiently, avoiding compromising the effectiveness of the patent or incurring undue expense in the process.
Somerville Associates is highly experienced in efficiently prosecuting patent applications before the UKIPO and the EPO across a wide variety of the electromechanical technical fields.
European Patents can be centrally opposed in the period of 9-months following grant with one of three possible outcomes: maintained as granted; maintained in amended form; or revoked.
Opposition involves a thorough test of the strength of a granted patent. A representative acting on behalf of the Opponent seeks to have the patent amended or even revoked and a representative acting on behalf of the Patentee seeks to maintain the patent as granted. These are therefore inter-partes proceedings.
In Europe patents are regularly revoked during the EPO opposition procedure owing to failures in the European prosecution leading to the introduction of new subject-matter: a patent has been amended during prosecution in such a manner that the only way to remove the new subject-matter would be to unallowably extend the scope of protection - the so-called 'inescapable trap'.
There is significant variation between the extent of opposition experience between European patent attorneys and capability when it comes to achieving successful outcomes and oppositions are best handled by those with experience - and aptitude - in this area.
Somerville Associates has particular experience in both defending against and instigating opposition proceedings before the European Patent Office on a significant number of granted European patents in the highly contentious medical devices and turbocharger fields.
This opposition experience strengthens the capability of Somerville Associates in respect of drafting and prosecution; knowledge of the pitfalls during EPO oppositions is invaluable when it comes to securing valid and enforceable patents for clients.
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