Activities of an Industrial Property Consultant
The main activities related to the profession of an Industrial Property Consultant are varied and disparate. In a preliminary stage, the Consultant carries out searches in order to assess whether the right at hand meets the requirements of patentability / registrability (prior art searches and analysis of the risks of violation of third party’s rights), the IP Consultant also suggests the filing strategy of Industrial Property rights and, in the case of a patent, he shall draw the text. Once filed the application, the Industrial Property Consultant responds to any objections which may be issued by the examiners, he may submits appeals in case of refusal of the IP rights and he is active in defending the application in case of opposition filed by third parties. Once the IP title has been registered, the Industrial Property Consultant shall ensure the payment of its maintenance fees, he takes care of procedures relating to the recordal of transfers of rights at the competent offices in the event of changes of property of the IP right and he monitors the activities of the competitors. In the event that IP violations are detected, the Industrial Property Consultant sets up with the client, and, in case, with the assistance of a lawyer specialized in the IP field, the course of action to be taken in order to protect the client’s right, such course of action may consists of sending warning letters and / or activating lawsuits for infringement or requesting urgent measures. In the event that certain patents or trademarks owned by competitors represent an obstacle to the activities of the client, the Industrial Property Consultant may file an opposition against such patents or trademarks at the competent offices on behalf of the client. Moreover, the Industrial Property Consultant provides assistance in contracting issues (for example, license agreements and coexistence agreements) and offers his expertise in the judicial defense and for the economic evaluation of the IP rights.
The added value of a qualified Industrial Property Consultant
The Industrial Property Consultant is a qualified professional. His membership in the Italian Industrial Property Consultants Institute binds him to a code of conduct: in particular, he is bound to constant professional updating activities and to keep professional confidentiality.