Patent watch

Patent watch is the continuous monitoring of published patent applications, grants and events affecting the legal status of titles in a technical field or in respect of identified competitors. It relies on the databases of offices and specialist providers, using search profiles run at regular intervals. No legislation requires it, but it is a precondition for making effective use of several legal remedies subject to short time limits. It differs from patent landscaping, which provides an overall picture at a given point in time.

Scope of the watch

Watch covers first of all newly published applications, which reveal competitors’ lines of research about eighteen months after their first filing. It then tracks the progress of sensitive applications, in particular amendments to claims during examination, grants and the filing of divisional applications. Finally, it monitors the status of titles, whether payment of renewal fees, lapses, limitations, oppositions, applications for supplementary protection certificates or, since the entry into operation of the Unified Patent Court (UPC), opt-out requests and withdrawals.

Remedies opened up by the watch

During the examination of a European patent application, any third party may file observations on the patentability of the invention under Article 115 of the European Patent Convention (EPC). After grant, an opposition must be filed within nine months of publication of the mention of grant, and a comparable procedure now exists for French patents. After that period, only an invalidity action, before the national court or the UPC, remains available, at higher cost. Effective watch also makes it possible to anticipate a risk of infringement, prepare a freedom-to-operate analysis or start licence negotiations before a product launch.

Organising the watch

The quality of the watch depends on the precision of the profiles, the frequency of updates and, above all, the analysis of the results by people able to assess their technical and legal significance. A watch that is not read or is poorly assessed gives an illusory sense of security. The business must define who receives the alerts, who decides on a response and within what time frame, and involve its patent attorney or its counsel in decisions to oppose or take action.

Key points

Patent watch makes it possible to learn of competitors’ filings and titles in time and to use challenge procedures before their deadlines expire. The nine-month opposition period following grant of a European patent is the main issue at stake. Monitoring profiles should be targeted, a person designated to analyse the results and a rapid decision-making procedure put in place for filing an opposition or third-party observations.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats litigates patent disputes before the Paris Judicial Court, the Paris Court of Appeal and the Unified Patent Court. Where the question arises in a real case, the useful moment is almost always before proceedings are issued.

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