Why you should consult patent attorneys from other countries?
People doing business in different countries have to deal with many obstacles – not only more varied competition and different client approach, but also IP rights and how they are executed.
Once, a client came asking, whether they would infringe an EP patent of their competition – it was a typical object, that you can find in your home. After looking into the matter, we gave our response – ‘Sadly, yes, your product would infringe that patent, as you have all of the features that the independent claim lists.’ Typical follow-up question was asked – ‘If that is the case, what can we modify in our product, to be on the safe side of the patent? Here you have several suggestions of modifications of the products’ features – let’s call them – Ann, Bob and Katie.’
We took our time, looked carefully on how the patent’s claim is drafted and what it requires from our jolly group of features, and came to such conclusions:
- Ann has to wear shoes; our modified Ann would wear very nice, comfy and springy basketball shoes – but a shoes nonetheless – so not a good way to escape the patent’s grasp;
- Bob needs to have his trousers raven-black; proposed modified Bob would have his trousers short - summer style with side pockets, but still raven-black, so again, Bob would fit into the claim’s scope;
- finally Katie – the claim wants her to wear a V-neck sweater, while the proposed modified Katie would wear a loose T-shirt – ‘YES! That’s it, give her a T-shirt, and your problems are gone! You don’t know what to put on the T-shirt? Right, that’s another problem, but still – this is a way to go, just make sure this T-shirt is not in any way similar to the V-neck sweater from the claim, and you’ll be good.’
Great, case closed? Unfortunately not, as a different patent attorney, from a next-door country, said ‘You know, better try with Bob, as making his trousers shorter would be easier and probably safer, as designing new T-shirt seems troublesome’… Client comes back and asks – ‘So…who should we work on, Bob or Katie?’ We look again, consult with more people on our side, and reply confident – ‘Go with Katie, cause the claim does not say what the length of the trousers should be, just the color, and you need to stick with that color.’
Client comes back – ‘Ok, but that other patent attorney again says to go with Bob – why is that?’
‘We told you to go with Katie, and will tell you nothing else – and we do not understand, why Bob could be a solution to your problems.’ The solution wasn’t clear, so the client arranged a meeting, to confront the views.
Who was wrong? Who was right? It turned out – everybody, was partly right.
What we didn’t know, is that in the language of that next-door country, the binding language was the one that the EP patent was granted in, and in this language said trousers implicitly had to be long – so making them short could seem like a solution. However, what the other patent attorney didn’t know was that in here – as the claim has been translated, the binding version was the one translated, and after translation – the implicit length of the trousers was no longer to be found. Finally, as the client stated that their factories are located in here, and not in the next-door country, we all agreed, that the safest way is to go with Katie.
What to take from this story? Never assume that rules are the same everywhere – especially for IP rights; and if you have doubts – always consult with a local patent attorney, as even small details may have a big impact to the final advice.