Category: IP Rights

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Services for non-profit institutions

Unless effectively managed, non-profit research and the intellectual property it generates does not benefit the public and cannot be effectively commercialized. At our firm, we are skilled in assisting non-profit institutions with their technology transfer efforts as well as devising the institutional policies that form the foundation for those efforts.

Our experience allows us to deal effectively with many of the issues non-profit institutions commonly face, such as: inventor ship disputes; the need for clear and timely recommendations to tech transfer professionals with large dockets; managing deadlines to avoid extension of time fees.

We value our relationships with non-profit institutions and strive to provide sophisticated technology transfer counseling in an efficient, cost-effective manner.

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Licensing and assignments of IP rights

Today, IP transactions play a key role in an organization’s overall IP strategy. The field of licensing has grown beyond the traditional patent, trade mark, design and copyright licensing agreement.

A license agreement is a document whereby the licensor (which remains the owner of the intellectual property rights) authorizes the licensee to use the distinguishing sign on an exclusive basis.

We know that licensing and other intellectual property transactions go beyond sharing information. They involve comprehensive strategies that identify and prioritize a company’s most valuable intellectual capital, as well as counseling on the potential conflicts faced in commercially exploiting each asset. Our extensive practice in patent, trade mark, and copyright prosecution and litigation for our clients allows us to approach each transaction with a deep understanding of how the intellectual property will affect our client’s business, and where the opportunities and pitfalls of the transaction lie.

For instance, the enterprise that wishes to shift its production towards technologically more advanced sectors may achieve this aim in a shorter time and at more contained costs by resorting to technologies that are already available rather than by concentrating its efforts uniquely on the search for original solutions within its own company structure.
On the other hand, the enterprise that decides to license out its own technologies in countries where it would not be able to operate may count upon an additional economic return on its own investments, transferring all the expenses involved to the licensee.

A licensing agreement typically involves royalty payments based upon a percentage of sales. An assignment usually refers to selling the IP rights for one lump sum, but may also include royalties. The difference between the two is that by assigning the IP rights to another party, you are transferring legal title to that IP matter. What this means is that once the rights are assigned you no longer own or have any control of the rights.

Applications of a Intellectual Property or any interest therein, can be assigned and will be recorded, provided the assignment is in writing. An assignment can be filed at any time during the pending application or after grant of the patent or registration as well.
The aspect of the exclusive rights granted by the patent is that the patentee can authorise others to exploit the invention described in the patent.

The firm represents both licensors and licensees IP rights in licensing and franchising activities worldwide.

Recordal of changes

A change in ownership or other details such as a change of name or change of address of the proprietor must be recorded by making a single request to the responsible Office.

These frequently require recordal in many countries which can be expensive and time consuming, involving complex formalities and procedures with many different legal regimes. This is especially true in cases where receivership or the administration of assets is involved.
We have extensive experience in producing budgets, suitable documentation and the supporting evidence to achieve successful recordal at minimum cost.

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Unfair competition

Unfair competition laws protect competitors from the unlawful conduct of their business rivals.

As examples, unfair competition laws prohibit interference with business relationships, disparagement, and defamation, invasion of privacy, palming off, plagiarism, unfair competition, deceptive trade practices, fraud, misrepresentation, and other related conduct. Many unfair competition issues arise in conjunction with infringement or misappropriation of intellectual property

We can obtain many favourable decisions for our clients enjoining unfair competitive acts such as copying of our clients’ distinctive product shapes (product configurations), packaging (trade dress) and names (trade mark)…

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Trade secrets

Our firm can provide wide services in trade secret protection to our clients. Dealings with ex-employees, customers and competitors constantly put a company’s valuable trade secrets at risk. Many businesses, however, fail to take the basic steps necessary to protect their trade secrets. In helping our clients protect their valuable intangible assets, we start by providing a detailed evaluation of whether the client company is adequately protecting its trade secrets and confidential information. Then, we help implement a customized program for better protection of the assets.

We have the necessary legal and technical resources to provide a comprehensive range of trade secrets services, including:

  • identifying trade secrets that can be protected;
  • reviewing methods for preserving secrecy and security;
  • drafting appropriate contracts with employees and third parties.

Trade name

The trade name should be registered with the Commercial Register where the business is organized. One benefit of having a trade name is that no other organization can transact business under the same or deceptively similar name to the registered trade name. A trade mark can also be used to prevent another organization from registering a similar trade name.

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Protection of Plant Varieties

The original breeder or his successor in title may obtain a registered property right for plant varieties which are distinguishable, homogenous, persistent and novel.

A Registration of plant varieties protects the rights of an individual who is first to appreciate the distinctive qualities of a plant and reproduces it asexually (by means other than seeds).

Applying for plant variety certificates

We can advise on applying for plant variety protection in the Czech Republic, EU and overseas and on infringement, validity and licenses granted under such rights.

Plant variety rights

A plant or plant variety right may be obtained in relation to a new botanical genus or species by registration with the appropriate authority. In the Czech Republic, the right is granted under the Plant Varieties Act 1999.
A community plant variety right is obtainable which has effect in all member states of the European Community. This right is granted by the European Plant Variety Office.

We are fully qualified to advise on obtaining, enforcement and exploitation of all forms of Intellectual Property Rights.
In all cases, professional assistance should be obtained to ensure the best protection.

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Topographies and semiconductors

Three-dimensional structures of microelectronic semiconductor products may – as far as they have distinctive features, i.e. are not ordinary – be protected by filing applications with the Czech Industrial Property Office and registration in the Semiconductor Protection Register.

The Directive gives legal definition of the notions, “semiconductor”, “topography” and “commercial use”. It introduces the obligation to give legal protection to the topographies in so far as the latter are product of intellectual efforts and are not in common use in the semiconductor industry. The right is granted alternatively by registration or first use, defining the range of persons who are entitled to register and protect the topography of semiconductors. The period of protection is set at 10 years beginning either from the end of the calendar year in which the topography has first been used in trade in any part of the world or, under the registration scheme, from the end of the calendar year in which the application for registration has been filed.

Within the registration scheme, the right originates from the date on which the application has been filed.

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Domain names

In order to protect your goodwill in this new internet market you require a registered trade mark. Without a registration there is very little that can be done to stop others from infringing your rights.

The domain name relates to your web site and may only stop others from having the same site name. But here there are a number of variables; “anyname.com” which has international status means no one else can have “this.com” address but it can be used by others for national addresses i.e. “anyname.xx”, “anyname.cz” or “anyname.??” for “XXstate” and the Czech Republic respectively. Famous names such as IBM can only be registered as a domain name by its trade marks owners.

Our company is handling domain name disputes; negotiating acquisition of domain names; providing advice regarding protection of domain names and trade marks used on web sites; filing trade mark applications for Internet-related brands; and preparing licenses relating to the use of trade marks on web sites.

Domain names are now being registered not only to serve as addresses for websites, but frequently to also try and secure such addresses to prevent others from being able to use the similar domain name. Domain names are generally registered on a first come first served basis and regulation over entitlement to claim a name is still very much in its infancy.

We will work with you to develop a domain name and trade mark strategy, including searches, registering domain names and advising on issues relating to the management of your domain name portfolio.

With the possible implementation of additional top level domain names, it is more important than ever to obtain trade mark protection of a domain name in order to protect a valuable asset. Additionally, it will help to prevent confusion and dilution of a valuable domain name.

We can assist with the registration of domain names and, if required we can help with the setting up of an associated brief web site to consolidate protective rights.

EXAMPLE: REGISTERED TRADE MARK for the followings:

your_firm_name ®
your_firm_name.com ®
www. your_firm_name.com ®
http://www. your_firm_name.com ®

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Copyright

Copyright is a form of protection which arises automatically whenever an original work is created. It protects many different types of original work.

Copyright is more usually though of as applying to books, music, films, etc. However in the area of industry and commerce there is some overlap between design right and copyright. Copyright is an unregistered right that applies in the Czech Republic and EU.

Under present law, copyright lasts for the life of the author plus 70 years.

The author is the natural person who has created the work.

The copyright to a work which has been produced until the time of the completion of the work as a single work by the creative activity of two or more authors (work by joint authors) shall belong to all the joint authors jointly and inseparably. The establishment of a work by joint authors shall not be prejudiced if the creative contributions to the work by the individual joint authors can be distinguished, unless such contributions are capable of being used independently. Copyright shall include exclusive moral rights and exclusive economic rights.

Copyright shall not be infringed by whoever

  • quotes, to a justified degree, in his own work, excerpts from the published works of other authors,
  • includes into his independent scientific, critical or technical work, or into a work designated for teaching purposes, for the clarification of its content, small published works in their entirety,
  • uses a published work in a lecture exclusively for scientific, teaching or other instructive or educational purposes;

the name of the author, unless the work is an anonymous work, or the name of the person under whose name the work is being introduced in public must however always be indicated; the title of the work and source must also be indicated.

Copyright shall not be infringed by whoever records or expresses by drawing, painting, graphic art, photography or film a work located on a square, in a street, in a park, on a public route or in any other public place; the author’s consent shall not be needed also for the reproduction, dissemination and communication to the public of the work recorded or expressed by such means.

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Design

A registered design will give the proprietor a monopoly in the appearance of his design as applied to a particular article. A design must, of course, be new to be registrable, but disclosure of the design outside the Czech Republic does not constitute a bar.

A registered design subsists initially for 5 years from application, and this term can be extended to a total of 25 years. Renewal reminders can be sent directly from our office.

Scope of protection

The scope of the protection shall be given by the representation of the industrial design as it is registered except features being predestined by the technical function of the design, or which must necessarily be reproduced in exact form and dimensions, in order to permit the product, in which the industrial design is incorporated or to which it is applied to be mechanically connected to or placed in, round or against another product, so that either product may perform its function.

Like patents, registered design protection is essentially territorial and it is necessary to obtain a registration in each country of interest.

An international convention allows the applicant to file in convention countries within 6 months of his initial application date.

Our firm is able to offer advice on the various options which are frequently available for the prosecution of design protection. We file the Czech Republic priority design applications, co-ordinate foreign filings worldwide and advise on the enforcement of those rights.

International design registration

The filing of a national industrial design application generates a priority date, which can be claimed to support corresponding design applications filed abroad within six months of the national filing date. It is also possible for the national design application to claim priority from a foreign filing.

Community design registration

The Community design regulation provides for a single community design registration, without any separate formalities in each State, which will be enforceable in all of the countries of the European Union. It also provides for short term (3 years) unregistered design protection.

From April 1, 2003 a Registered Community Design provides, through a simple, single, low cost registration, the opportunity to acquire a monopoly for your designs for up to 25 years in all member states of the EU.

We can deal with all aspects of filing an application and obtaining a registration of a design on your behalf. To enable us to prepare documents for filing an application, we need drawings or photographs showing all features of the design. Alternatively, if a specimen or model is available, we can prepare drawings or photographs from it.

In the context of intellectual property, the design of an article is generally its shape or ornamentation applied to it. Essentially, the design of a product relates to its appearance, rather than to technical principles of its construction or operation.

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Geographic indications and designations of origin

Regulation on the protection of geographic indications and designations of origin for products and/or services

This Law regulates the relations formed in connection with registration, protection and use of product (services) appellations of origin and geographical indications.

The protection refers to all types of products which owe their specific properties or peculiarities to the geographic environment including natural conditions or production traditions of a given country, or region whose geographic name is the appellation of origin for the product.

The designation of the product with the place of origin takes its tradition in the far past. This can be explained by the natural desire of the producer to indicate the especial features and quality conditioned by the specific geographical disposition. Here must be marked, that the high quality and reputation of such products, on the one hand, and non-existence of special laws in the conditions of developing the production and widening the trade relations scale, on the other hand, resulted in uncontrolled use of the well-known names in various countries of the world.

The appellation of origin and geographical indication, as well as the trade mark, are used to designate the product, but they by their essence are completely different objects.
If the trade mark is a property of a natural person or a legal entity and the regulation of the relations is prerogative of the private law, the instructions of recognition and use of the appellations of origin and geographical indications relate to the public law sphere.

As an appellations of origin and geographical indication shall not be registered the names, which have become the generic names and which is likely to mislead the consumer as to its origin, contradicts to the national dignity, religion and traditions, public morality and order.

The right to use a geographical indication, obtained by registration, shall belong to the members of the association entered on the list communicated to the Intellectual Property Office. The right to use a geographical indication may not be transferred.