Contentious proceedings decision tool

It is important to understand the full range of rights you own in the services and products you have developed. These may be registered rights, such as patents, trademarks and designs, or unregistered rights, such as copyright, know how and trade secrets. Based on a good understanding of your rights, their territorial coverage and the competitor’s activities a strategy for stopping others from taking advantage of them can be developed. This may take the form of simple cease and desist letters or, if commercially appropriate, allow you to call upon the courts to stop other parties from using your rights. 

If you are concerned that you may infringe a competitor’s IP rights, it is important to assess which rights a competitor can rely on and to what extent they are relevant to your operation. We have a large amount of experience in assessing if our client’s are free to operate in the manner they chose and, should there be a concern that this may not be the case, advise on possible design arounds. 

You should also consider:

• Do you have IP rights (patents, utility models, registered designs, or trademarks) covering your product/service?
• Where is the competitor based and where are the potentially infringing activities taking place?

Existing contact from a competitor alleging IP right infringement can be unsettling. Whilst they may threaten court proceedings, they also provide an opportunity to assess the validity of the competitor IP infringement claim and the validity of any IP rights the claim is based on before any potential court proceedings have commenced. In this manner the risks associated with the alleged IP infringement and chances of success in an IP rights dispute can be assessed early. Our team of solicitors has a wealth of experience in advising in such situations and, should an amicable solution not be possible or desired, defend our clients in court and, if appropriate, attack the validity of the underlying IP right.

You should also consider:

• Has this been communicated formally in writing?

If so, could you please provide details of the jurisdiction in which this dispute takes place and, in as far possible, how far this dispute has progressed, i.e. are you still at initial stages of the dispute, have you already made some of your own submissions or had a first instance decision already been handed down? Are you interested in a second opinion on the matter or even looking for additional or alternative counsel? 

You should also consider:

• If so, in which jurisdiction and which courts or forums are involved (EPO, UPC, National Courts)?

We have a wealth of experience in defending against challenges against patents. This includes many successful defences against EPO oppositions as well as defending against validity challenges in the expert evidence heavy UK courts or the more front-loaded UPC. 

You should also consider:

• In which forum is the challenge taking place?

Immediate action is of the essence. The courts are willing to stop competitors (initially only preliminarily but later also permanently) at short notice (as short as a few weeks) upon receipt of the relevant request. However, any delay in filing the request with the courts can be taken as indicating that the matter is not urgent. This may delay the grant of an injunction against your competitors. 

The loss of market opportunities and market share can have severe consequences for businesses. We are experienced in obtaining recompense for such loss in addition to the above mentioned injunctions. 

Freedom to operate (FTO) analyses are sometimes overlooked. A well crafted FTO exercise can be conducted quickly and provide reassurances of the business risks you may face or identify risks that may have serious consequences for your business. Investors are keen to understand the risks faced by a business and, should such risks be higher than comfortable, see a strategy for managing any such risk.  

We have a wealth of experience in analysing risks to our client’s freedom to operate and advising on strategies for mitigating any such risks. FTO’s are commonly conducted prior to the introduction of new products but, if necessary, can be instigated when a concern is first raised. 

You should also consider:

• Do you need to assess whether you have freedom to operate in your target markets?

Commercial resolutions of disputes can provide for expedient and consensual settlements. Creativity in negotiating settlement terms can help to resolve even complex disputes, if there is some will to engage amongst the parties, be that in direct correspondence or in mediation and arbitration proceedings.

Should an amicable solution not be possible, then the courts can be called upon to judge in the matter. We have decades of experience in assisting our clients in resolving commercial disputes, including many notable patent disputes of the highest value.  

You should slso consider: 

• Are you interested in alternative dispute resolution options such as mediation or arbitration?

Patents are powerful IP rights that allow the exclusion of all others from practicing the claimed invention. Patents tend to be crafted to cover subject matter far wider than that described in its examples. Analysing the scope of the monopolistic claim of a patent portfolio is a skilled task that can help de-risk your business strategy and reassure investors by determining your freedom to operate. 

We target freedom to operate exercises to precisely match our client’s business needs and to provide recommendations on how any identified risks can be eliminated or mitigated. 

You should also consider:

• How significant is this concern and what impact could it have on your business operations?