Our clients require accurate and reliable knowledge of the state of the art in which they intend to develop their innovation activities.
For this reason, at Abril Abogados we offer extensive experience in conducting searches and analyzing results, producing reports on the current state of the art. These reports include opinions and recommendations on the most appropriate protection strategies for our clients’ interests, both in terms of protection type and geographical scope.
Likewise, this experience allows us to provide a rigorous and objective analysis of the patentability and/or potential infringement related to the subject matter of interest to our clients.
Infringement Reports
This type of report may serve different purposes. In some cases, it aims to assess the commercial viability of a product or service in relation to potential third-party rights (FTO – Freedom to Operate analysis). In other cases, the objective may be the opposite: to determine potential infringement of the client’s own patent rights by third parties through the commercialization of the product or service under analysis.
Due to the technical-legal nature of these reports, they must always be prepared by a technical expert in collaboration with a lawyer specialized in Industrial Property, and the report is jointly signed by both.
To this end, the following steps are carried out:
- Search for patents related to the product of interest, where applicable.
- Analysis of the prosecution status and validity of the relevant rights.
- Comparative analysis of the identified rights and the product or service—whether our client’s or a third party’s—that may give rise to infringement.
- Preparation of the Infringement Report and corresponding recommendations.
On Patent Searches…
The International Patent Classification (IPC), based on an international multilateral treaty administered by WIPO and known as the Strasbourg Agreement Concerning the International Patent Classification, is essential for retrieving patent documents during state-of-the-art searches.
But what system is used to find patent information? How are searches conducted or new publications identified?
To obtain accurate results in patent searches, it is necessary to master the use of keywords, filter entries, and interpret the various patent examination reports.
Each database has its own particularities. Our technical team has the necessary expertise in using platforms with full-text databases such as Latipat, Espacenet, and Patentscope, which contain millions of national and international patent and utility model documents that must be properly handled.
In this way, the analysis of relevant documents, their legal status, and their geographical scope are key factors in defining the strategy and managing our clients’ applications.
