There are many benefits to closely monitoring your competitors’ patent applications that could threaten the marketing of your own products: You know the scope of the claims before they are granted and can evaluate their relevance to your own products. You can start gathering material for post-grant opposition proceedings early. You can also submit documents challenging patentability to the Patent Office as part of a third party filing before a patent is granted in order to prevent the patent from being granted or at least to further narrow the claims.
We are also available to assist you with ongoing patent monitoring in a specific technical area or in relation to specific competitors to identify the ‘nuisance’ patent applications to be monitored.
Monitoring the grant procedure of individual patent applications in Germany and abroad through regular searches of online patent registers (e.g. DPMA, EPO, WIPO, national patent registers in the USA, China, Japan, Korea, India, France, UK)
Regular status reports, with file inspection documents if requested (including machine translation)
Comments on official communications and applicant submissions
Notification and monitoring of opposition and third party filing deadlines
Preparation and filing of third party observations
Many trademark offices do not check for conflicts with existing identical or similar trademarks before registering a trademark. Therefore, you should be informed at an early stage of trademark applications filed by third parties in Germany and abroad that may conflict with your registered trademarks. The value of a trademark depends in large part on its distinctiveness, which is why ongoing monitoring of your trademark is critical to establishing and maintaining strong trademark protection.
If we discover a newly registered trademark or published trademark application of a third party that is identical or similar to your registered trademark, we will promptly send you a Conflict Notice with our assessment of the likelihood of confusion and the opposition period.
In this way, you can prevent or (partially) cancel the registration of the competitor’s trademark for those goods and services that conflict with your registered trademark through opposition proceedings, which are often much less expensive than legal proceedings. It is also sometimes possible to find contractual Schedulements for delimitation/coexistence.
AI-assisted monitoring of trademark registers in Germany and abroad for new applications similar to your registered trademark (DPMA, EUIPO, WIPO and any other national registers you wish to include)
Review of the monitoring results by our experienced patent attorneys
If applicable, sending a collision notice with information about the registered trademark, the goods and services for which protection is sought, the applicant and the opposition period, as well as an assessment of the likelihood of confusion with your trademark
Noting and monitoring the opposition period
Negotiating with trademark owners and drafting trademark agreements such as priority/coexistence and licensing agreements