What are my options if a company in Europe holds the patent...

What are my options if a company in Europe holds the patent to a product I invented and how do I prevent future IP infringement?

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The fact that you know a foreign company holds the patent to your invention means that you have done your research. It is a good thing that you are trying to protect your intellectual property (IP). Protecting intellectual property is something that many inventors avoid because it isn’t a cheap process.

Patents are complex

There may be a way around your problem, but you must get legal advice. “If you have checked that the patent is only registered in Europe, try to find out when the patent was registered, as there may be a window of opportunity open to you.

If the registration was very recent, you might still be able to register the patent locally. If you adjust the product to include new features, you could register a patent for the new features, but not for the original idea,” says Dieter Welthagen, patent attorney at Adams & Adams.

Get an expert to advise you

“Even if you don’t own the patent, you could still manufacture it in South Africa. However, before you go ahead, it’s highly advisable to consult a professional patent lawyer before considering its manufacture,” advises Welthagen.

How to prevent IP Infringement

Copyright laws have been in existence for over 100 years, but it’s only recently with the emergence of the Internet that intellectual property theft has become easier than ever to carry out. Entrepreneurs are often in a tricky situation when presenting their business plans and intellectual property (IP) to potential investors.

The purpose of a confidentiality agreement is it to protect the idea so the entrepreneur can patent it later so the agreement should be catered towards that.

Typical things to include in the confidentiality agreement would be the duration – in other words when it expires – also spell out what a breach of the agreement would be and then what the consequences are and don’t forget to define the parties carefully.

Confidentiality agreements, or non-disclosure documents as they are also known, protect sensitive technical or commercial information from disclosure to others. If after a non-disclosure agreement has been signed, the information is revealed to another individual or company, the injured party has cause to claim a breach of contract.

The type of information that can be included is virtually unlimited – data, know-how, prototypes, engineering drawings, computer software, test results, tools, systems, and specifications.

Wessel van Wyk
Wessel van Wyk is a qualified patent attorney of the firm Smit & Van Wyk, which handles all aspects of intellectual property protection, prosecution and enforcement. For more information on detailed aspects related to intellectual property visit the Smit & Van Wyk website at www.svw.co.za.