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Intellectual Property Surveillance in business

The watching process over the Intellectual Property third party’s rights should be the first step in the analysis of a business in a company. It is based on the innovative technical/technological characteristics of products or services and inherent to its manufacture and commercialization.

The new technology developers, which impact incides in the emergence of products or services for the consumer market, are accustomed to consider the Intellectual Property’s legal protection as a means of:

reinforcing the negotiation elements within the invention´s business offer, and/or
providing those companies, which will receive the use profits of the inventions or to their own company, with the competitive advantage of the exclusive utilization rights for a specific time period.
The Intellectual Property rights of inventions are granted per country, even when the applications were accessed by International Agreements or Treaties. Furthermore, the national legislations in IP determine diverse technical elements that may be protected.

Consequently, the risk analysis over potential rights infringement must be elaborated by technical and legal professionals with expertise in IP to know the scope of their own IP national legislation regarding the protectability of the technical subject matter.

The exclusivity rights for the utilization of the protected inventions, obligates to third parties by means of the national IP legislations (as the Mexican, Ley de la Propiedad Industrial, Article 25) to require the assignee´s consent to apply the rights on:

The products: to manufacture, use, sell, offering or import the protected product, and
The processes: to use them in the manufacturing and furthermore to use, sell, offering or import the product directly obtainable by its means
Hence, it is important to notice the necessity to develop this recommended watch, previously to incide in the manufacture or import of a product, that is because it might be ignored the fact that a product partial or totally manufactured by third parties by means of one or a group of inventions, mandatory requires the use of a license issued by the assignee(s) to demonstrate his/their consent for its manipulation and commercialization.

A watching technical-legal risk study starts with the whole global product’s or service’s analysis, by the technical skilled professionals in the subject matter and IP specialists. That is, to define, based on their intrinsic characteristics, the legal IP’s type of protections involved (patents, utility models, designs), in order to perform the prior art searches of in-force invention´s documents which may affect third parties in the specific country (ies).

Once performed the technical step, the legal opinion is prepared by specialized IP Lawyers in the country (ies) of interest to define the feasible options and opportunities to perform a free commercialization, or otherwise to provide the support information as per the recommendation of not performing it.

A clear example of these studies is in the assembling companies, which must be sure whether the product’s parts/pieces individually or as a whole, involve more than one type of IP protection and determine if any third party rights are infringed or not before the manufacturing, licensing, import or export of the product in/into different countries, as a prevision step in business.

An IP watching risk analysis as part of the first prevision step in business will help to determine the freedom to operate in a specific country of interest. This is a very important step and not always taken into consideration to prevent incurring in business operations with a high legal and economic cost, and/or even prestige damaging.

Carmen Sánchez-Puelles