IPRIMA - Intellectual Property Specialists

Every business should conduct an infringement search before gearing up to release a product or service into a market.

While this guide has focused on exploiting your own IP rights, do not forget that your competitors will also be establishing their own rights. They may then be in a position to prevent your exploitation of a particular product or Intellectual Property. Searching before you start manufacturing, printing and packag-ing can save you considerable expense should you find you cannot proceed further with your planned commer-cialisation. Similarly, infringement searching before committing to agreements with other parties (e.g. licensing, sale or distribution) can avoid awkward withdrawals, or legal problems from not being able to perform the contract.

Infringement searching is particularly important before launching product or services in a foreign market. Distance and legal differences can make dealing with an infringement problem overseas substantially more difficult and expensive. Having a shipment of product impounded on arrival by Customs is not only frustrating, but may cause you to miss key deadlines or breach agreements in place. The forfeiture of goods in some cases adds to the expense of the exercise. The importance of infringement searching before dispatching product or cementing agreements in overseas markets cannot be underestimated.

When searching overseas markets, it is important to realise that Intellectual Property is territorial, and must generally be established by an IP owner in each country of interest. While a UK patent and design search might have pre-viously shown no infringement prob-lems existing in that market, you cannot assume that the rest of Europe will be the same. Each European country you intend to market in, and also Europe as a region, would ideally be searched.

Another trap is to rely on the results of novelty searches performed during examination of your patent applications. Patent Offices often limit their searching to specific countries and may use search criteria unlikely to identify IP which is an infringement problem. Such results may also, by now, be out of date. Such searching is usefully indicative of whether to proceed further in a market – the next step is to conduct an appropriate infringement oriented search.