Intellectual Property

Trademarks

• Advising on the suitability of marks for registration
• Conducting availability searches in national and international data bases
• Advising and representing clients in filing trademark applications before various offices, using the World Intellectual Property Office, and prosecuting to registrations
• Conducting opposition, appeal, and cancellation proceedings
• Filing Community trademarks and conducting registrations before the Office for the Harmonization in the Internal Market (OHIM) or the United States Patent and Trademark Office (USPTO)
• Filing trademarks worldwide, directly or through our carefully selected network of partners
• Building trademark survey mechanisms against infringers
• Administrating and renewing registered trademarks
• Advising and representing clients in all the procedures related to trademark infringement, including drafting petitions for the intervention of various customs authorities, counterfeit and unfair competition actions
• Negotiating the sale and acquisition of trademarks
• Drafting and reviewing complex agreements related to trademarks, including assignment, license, franchise and distribution agreements

Patents

• Availability search and patentability opinions
• Filing patent and utility models applications, evaluating and answering to examiners’ objections
• Filing appeals with various patent offices, including the USPTO and the EPO
• Drafting and filing revocation requests against published patents, or applicant’s response to the revocation requests
• Patent monitoring services
• Legal assistance for technology transfer transactions (assignments, licensing etc)
• Representation in complex litigation, including cancellation, anti-counterfeiting, antitrust, and border customs actions

Designs

• Advising clients on the possibility of obtaining design protection in various jurisdictions
• Performing national and international searches
• Advising and representing clients in all procedures before various national or regional offices
• Advising and representing clients before WIPO in filing and registering international designs under the Hague Agreement Concerning the International Deposit of Industrial Designs
• Filing designs worldwide
• Filing Community designs and conducting registrations before the Office for the Harmonization in the Internal Market (OHIM)
• Administrating and renewing registered designs
• Representing clients with regard to design infringements and cancellation actions
• Performing monitoring services
• Drafting and reviewing complex agreements related to designs, including assignment, license and distribution agreements

Domain names

• Litigation or arbitration proceedings regarding infringement of a trademark by a domain name, including representation before the WIPO Arbitration and Mediation Center, under the UDRP Rules and Policy
• Recovering domain names from “cyber squatters”
• Negotiations, sales and transfers of domain names registered by third parties
• Advising on litigation and arbitration strategies regarding any infringement of the domain name
• Managing domain names portfolios, including domain name acquisitions and renewals

Software

• Drafting and negotiating software outsourcing or development agreements and other business software contracts
• Reviewing software applications and software policies
• Drafting or reviewing software licensing agreements

Copyright

• Advising clients on any type of infringement of moral and patrimonial rights
• Assistance for the recording procedures in various national registries
• Representing clients in relation to counterfeiting and piracy
• Representing clients before collective societies
• Negotiation and assistance for the drafting of assignment, distribution, publishing, theatrical representation, musical execution, and rental agreements
• Assistance regarding the neighbouring rights of the copyright, especially for cinematographic and other audio-visual works
• Assistance regarding the protection of copyrights deriving from computer software
• Assistance regarding the sui-generis protection of the authors of databases
• Representation regarding the protection of visual arts, architecture, and photography works, and the protection of the portrait
• Representation of television and radio broadcasting bodies, in relation to public communication by satellite and cable retransmission

Personal Data Protection

• Reviewing the software or corporate tools that involve or contain personal data
• Preparing, filing or adjusting personal data protection notifications, before national bodies within the European Union
• Performing due-diligence in connection with data protection issues, especially during the take-over or acquisition of new companies

Business methods and ideas

Know-how

Transactions support

• • • • Assignments
      • Licensing
      • Franchising
      • Technology transfers

IP Asset Management

• • • • IP portfolio management: routine renewals, follow-up on the renewal process, update and record of the legal changes in the status of the client
      • IP portfolio optimization: we regularly check with our clients their new products, markets or packages, in order to identify the relevant new IP assets. We also check the usefulness of renewing or abandoning already registered assets which are no longer of interest
      • IP search – very often under highly confidential requirement and high time pressure, we perform preliminary search in view of new product launches, or new market entries.
      • IP due diligence – one of the most difficult tasks that are entrusted to us is to perform IP due diligence during the acquisition period, before or after the contractual closing

Enforcement

• • • • Customs and borders
      • Infringement of intellectual property rights
      • Counterfeit
      • Unfair competition