Скачать или смотреть IP Expert Talk: FTO in Practice, Part II (Christof Karl, Tobias Kaufmann, 2019)

Contact Christof Karl: https://www.bardehle.com/team/detail/...
Contact Tobias Kaufmann: https://www.bardehle.com/team/detail/...

Welcome back to our talk about FTO in practice. In this second part we will talk about what happens when the search results come in.

Tobias, the search results of an FTO search may encompass dozens if not hundreds of documents. How do you deal with this complexity?

You should classify them into a manageable set of categories according to the risk level associated with the respective patent or application. Now first of all you look at infringement, and for infringement you look at the claims and check if each and every element of the claim is fulfilled by your product. Oftentimes you can exclude a large number of matches already in this step.

Secondly, you look at validity or the legal status of the document. If it's a granted patent it is of course more dangerous than if it's still a pending application or a non-examined utility model. Now if we merge the two findings we may then have a manageable set of three to five categories. Now only on the ones where we see a high risk level we would recommend obtaining a more detailed opinion.

Right, and for this opinion, when it is about a European patent, clients often turn to us for an analysis under German law, and there are two reasons for that: First of all, Germany is the most important market, so to speak for, patent infringement cases and secondly, German judges tend to award a broad scope to patents. So in a way if we can say this patent would not be infringed under German law, chances are that another European Court would also not find this patent infringed.

In this analysis also one should not forget to look at the doctrine of equivalents, because if you find a feature that is not realized by your product, this is not the end of the analysis. You also should check whether there are equivalent means by which the patent might still be infringed.

Now and as a second step, as I said, we look at validity and in the course of a validity assessment, of course granted patents are more dangerous than pending applications.

Now if we look at a granted patent, we typically look at the most narrow claim. If we think that this claim can be invalidated, for example on the basis of prior art which we know from foreign counterparts, then the risk level associated with this particular patent decreases.

Only if we cannot decrease the risk level on the basis of the prior art which we have from the various patent prosecution filings available, then we would obtain an additional prior art search.

This was the second part of our talk "FTO in Practice". In the third part we will talk about how a typical work product looks like and we will talk about money.