Case Studies

Set out below are a few examples of real scenarios where we have helped our clients achieve their commercial aims, with the minimum of fuss or delay.  Have a read through and see if you could use this type of help.

Turning Threats to Advantages

Our client won several contracts ahead of a failing competitor which was a subsidiary of a much larger company. The competitor used its stronger funding to start a 'dirty tricks' campaign in the industry in order to attempt to win back lost business and prevent loss of further business. This was potentially very damaging to our client's reputation and to its order books.

It became known in the industry that the failing competitor was considering suing several operators in the area.  Eventually an infringement action was filed against our client in Texas.

This caused considerable concern and distraction with our client at a critical time when the business was busy successfully fulfilling many orders.  We were able quickly to identify suitable Counsel in the US to deal with the preliminary matters of the trial and to provide infringement and validity advice in relation to the IP rights (patents in this case).  We quickly identified several major flaws in the US rights.  There were issues of disclosure of appropriate documents during examination of the US patent and issues of ownership and entitlement.  Additionally, we were quickly able to confirm that very little of the patented material was actually new and therefore validly protected by the patent.

Therefore within a very few days we were able to put our client in a strong negotiating position which allowed it to arrive at a settlement which potentially cleared the field of competition for our client and yet had little or no negative commercial impact on our client.

Only shortly after the US issue raised its head, the competitor issued warning letters in other territories and proceedings were issued in the UK High Court without warning.  However, these were seriously flawed not least because the wrong patent was identified and even when this was corrected it became apparent that the competitor had not properly recorded ownership of the patent.  Again, we were able quickly to neutralise these distractions to our client's business and its management and arrive at a face-saving negotiated settlement which had little or no negative commercial impact to our client around the world.

Thus we were able to support our client and help minimise distraction and cost by turning what appeared to be a highly threatening situation into an advantageous situation in which some of our client's competitors had been cleared from the field and our client was free to continue as before.

Encouraging Trust Through Experience

We were approached by a firm of solicitors who were handling a complex management buyout from a large multinational company.

We were asked to check that the identified IP rights were in existence and also to advise on appropriate documentation for recording assignment of those rights at various patent offices around the world. From experience, we know that costs of such transactions can be significantly increased if the appropriate documentation is not in place at the beginning. This is usually exacerbated because the parties to the agreement are rarely available to sign documents subsequent to the normal completion of the whole transaction. The solicitors knew we had the expertise to avoid these problems.

We were able to draw on our experience quickly to produce composite assignment documents which could be executed on completion day and which would comply with the requirements of the various patent offices in the territories concerned. We also were able to check schedules prepared by the vendor and spot several errors and unpaid renewal fees. Additionally, we helped assess the value of the IP portfolio which was being bought by commenting on the scope of protection and for those applications still pending, the likelihood of successful registration.

Following completion, we were delighted that the management buyout team were sufficiently impressed with our work that they asked us to take over the entire portfolio and help them put in place good IP management systems to maintain and grow the portfolio. We were also able to provide support in the form of internal educational seminars in consultation with senior management, to ensure that the whole company is clear on its IP-related objectives.

Working with the Big Guys...

A large multinational client had an imminent disclosure of an important new line of technology. It quickly recognised that its internal resources were inadequate to prepare and file the necessary number of patent registrations in time and at adequate quality. After a brief tendering process in which we presented a high quality team of people with the necessary skill set, we were asked to carry out the work.

We completed the work ahead of time and under budget and were complimented by the internal IP department on the quality of the work and our approach to time-pressured employees of the client. Subsequently, we have built an excellent relationship with our client and continue to provide prompt high quality outsourcing support.

and with the Small

We were approached by a small family run craft company with a stylish product which they had designed, had manufactured overseas and were intending to launch for the Christmas retail season.

They were concerned that it was such a delightful product that they would be subject to copying.  However, with no revenue as yet from the product they wanted to keep to a sensibly low budget. We suggested a UK design registration which was duly filed and registered.

During October, a national chain of department stores started selling a very similar product.  This threatened to entirely destroy the market for our client's design and appeared to result from counterfeit products being sourced from the same or a nearby supplier as our client.  We approached the legal department of the department store on behalf of our client to attempt to resolve the situation.  It became clear that the department store had not intentionally copied our client's product but nevertheless given that they had a substantial stock to sell before Christmas and presumably on the basis that our client was relatively small, refused to remove the stock from their stores.

Our client had no wish to sue the department store since the cost in relation to the profits from the product would not have made commercial sense.  Nevertheless, there was a clear infringement issue and it seemed unlikely that the department store would wish to undergo the embarrassment of successfully being sued for copying a product from a very presentable small family run craft business.

However, we arrived at a cost-effective tactic (which we won't disclose here because we have successfully used it since and will do again!) which sufficiently alarmed the department store that they were likely to get sued that they did, quickly, remove the product from their stores. This allowed our client to sell all of its stock and make its desired profit.

As an interesting postscript, the drawings we had prepared for the design registration were of sufficient aesthetic appeal and quality that the Patent Office asked permission to use it in its advertising materials for the UK Designs Registry as an example of how to prepare and file a design application.  After checking with our client, we readily granted permission!

A Green-Fingered Supermarket

Our client is the registered owner of two UK Trade Mark Registrations and one Community Trade Mark Registration, for a mark covering, amongst other things, garden containers and equipment. It was discovered that one of the leading UK supermarkets was selling a very similar product to one of our client’s branded containers, under the identical or at least very similar sign. We needed to prevent the supermarket from offering for sale their own brand plastic container bearing the offending branding.

We successfully exercised our client’s rights, resulting in the supermarket immediately removing all stock bearing the sign from point of sale. They noted our request for damages and profits and subsequently offered as an alternative an invitation to our client to stock its product range in the supermarkets top stores for the rest of the gardening season.

Our client, however, declined this offer and instead wished to receive a lump sum.

We negotiated on our client’s behalf successfully obtaining the amount our client requested, together with a signed undertaking that the supermarket would not apply the sign, or any confusingly similar sign, to plastic containers or similar goods, that may amount to infringement of our client’s registered trade marks.

Client protection is in the bag!

Where there is a Will and the Skill

Our client was sued for patent infringement by a larger competitor.  A settlement was agreed, but for a limited time only. As the expiry of the agreement loomed, it was essential for our client to have some patents of its own that could be used against the competitor (especially in the USA, which was the most important market for both companies), in order to provide a bargaining position.

One application that we were handling had claims that were infringed by a new product of the competitor, if only we could get them granted.  The US examiner had found a piece of prior art that showed some but not all of the features of the broadest claims.  Initially, the examiner tried to argue that the claims were obvious by combining this document with another that was alleged to show the missing features.  However, we were able to point out that the examiner had misinterpreted the disclosure of the second document, and it did not show the missing features at all.  Also, the features relied on by the examiner were physically in the wrong place in the overall construction, so that even if they had been the correct features, a combination of the two disclosures would not have resulted in the claimed arrangement.

The objection was withdrawn and a new objection was raised combining the first document with a new document that appeared to show exactly the correct missing features in exactly the correct place.  We analysed the embodiments of the new document carefully, and studied its disclosure.  Taking the new document on its own terms, we were able to demonstrate that it was intended to solve a particular problem that arose under one specific set of circumstances, and its method of operation relied on those circumstances being present in order to work.  Under other circumstances, it was not just unnecessary; it would not function.

Returning to the first prior art document armed with this knowledge, we noted a statement in its background discussion that it was concerned with a situation where this specific set of circumstances was absent.  On this basis, we prepared an argument that the documents themselves taught that they should not be combined with each other.  Additionally, we made a detailed technical analysis of the precise effect of modifying the embodiment of the first document to add the relevant feature from the new document, and we were able to demonstrate that owing to the manner in which the feature was implemented in the new document, its insertion into the embodiment of the first document would result in a catastrophic failure of the embodiment.  Accordingly, we also constructed an argument that the combination of disclosures would not function and was disadvantageous.

These arguments eventually persuaded the US examiner to withdraw the objections, and the examiner agreed to allow the case with claims that still covered the competitor’s product, thereby giving our client a valuable asset in its negotiations with the competitor.

What's on the Menu?

Our client is both the owner of a UK Trade Mark Registration which covers restaurant services and dates back to the mid 1990's and the proprietor of a restaurant by the same name. Consequently, our client was most concerned to note the opening of a new bar and restaurant bearing the same name and using a similar domain name. Our task was to prevent the new proprietor from using our client’s registered mark, and the domain name.

Following our first approach to them on behalf of our client, the other party confirmed that they did not consider the issue of trade marks before naming their bar and restaurant. They argued that their establishment was more of a bar than a restaurant, and that our client’s trade mark registration did not cover their activities.

They also claimed that their restaurant was a long way from our client's premises, therefore, customers would not be confused: we pointed out that a trade mark registration covers all of the UK, not just the local area surrounding the registered owner's business.

We requested provision of photos of their premises as proof of their claim that it was only a bar. It was clear from the photos that the bar and restaurant were linked as there was only a doorway separating them, thereby allowing customers to pass easily from one to the other.

Therefore, we did not accept their arguments and were ultimately successful in persuading the other party to rebrand their restaurant with a completely different name and to stop using the similar domain name.