What’s the Situation?
In view of the fact that a very high number of protective rights such as patents or trademarks exist, every company is threatened by the danger of infringing the protective rights of other parties with its products and services. Injunctions and damages in particular can be the painful consequences of such infringing actions. It is, therefore, of high importance that a company initiates a clearance review before a new product or new trademark is placed on the market. To this end, the existing protective rights in the relevant field need to be searched and assessed with respect to their scope of protection.
Further, many companies place a watch on protective rights that are newly granted, e.g., protective rights in a particular technical area or of a particular competitor. If such protective rights are identified, a determination has to be made if such rights represent a danger for the own company and should, therefore, be attacked.
Analyzing the scope of protection of a protective right also is at the beginning of each assessment if a particular protective right is infringed by a third party. What is the scope of protection of your protective right and does the accused device lie within that scope?
An expert opinion may also consider whether a particular protective right is valid or can be successfully attacked, e.g., by means of an opposition or a nullity action in case of patents or an opposition or an action for cancellation in case of trademarks. This question is of high importance for a company that is accused of infringing an IP right when deciding whether to defend against such allegation or not.
For many years, I have provided analysis and given advice with respect to the relevance and validity of protective rights such as patents. Will the protective right likely be infringed by the client? Can the protective right likely be invalidated? The result of such analysis is an assessment of how likely it is that the client infringes the analyzed protective right or how likely it is that the analyzed protective right is valid. Such an assessment provides a necessary basis for a company to make a prudent decision.