Category: IP Rights

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Trademarks

Keeping your good name safe around the world

Today more than ever a business’s unique identity, reputation, and br /and provide tangible return on investment and a critical competitive advantage.

We offer our clients a full range of trade mark services:

  • Developing, selection, clearance and executing prosecution strategies not only to protect a client’s products, but also to analyze those of its competitors to help ensure that the client realizes value from its intellectual property assets;
  • Advise on whether a trade mark can be registered;
  • Prosecution and maintenance;
  • Counseling, including portfolio management;
  • International trade mark protection;
  • Preparing and negotiating licenses, assessing the licensing value of competitors’ trade marks, and guiding the client in the decision to license;
  • Civil litigation at both the trial and appellate levels, including infringement and dilution cases, counterfeiting, gray-market goods, false advertising, and cyber squatting;
  • Industrial Property Office litigation, including oppositions and cancellation proceedings;
  • Advise on domain name issues and trade mark registration

A trade mark is an item of property that can be extremely valuable to its owner. It is the principal means of product recognition. It facilitates repeat purchases by satisfied customers.

Trade marks may be registered to protect the goodwill associated with a mark. The mark must not conflict with any existing traders and should not be descriptive of the product or service. To be registrable a trade mark must be capable of distinguishing the goods or services of one party from those of other parties.

As trade mark attorney, it is our role to advise and assist our clients along each step of the way from the selection of a suitable mark, to its clearance for registration and use and its protection in the markets of present and potential future interest. We also offer considerable expertise in the subsequent exploitation and enforcement of trade mark rights, ensuring that our clients are able to maintain a commercial advantage over their competitors.

Exclusive rights to use a trade mark are obtained by registration. The effects of registration commence on the date on which the application is filed, and last for ten years. Once registered, a trade mark can usually be kept in force for as long as is required, subject only to the payment of renewal fees to keep the registration in force.

Search

We can also advise on selecting a trade mark for your product or service. This work typically involves conducting a clearance search for the trade mark you are considering adopting or purchasing. The search will determine whether anyone else is using the same or a similar mark. We will give you an opinion as to whether you have the right to use your proposed trade mark, and what risks might be encountered in going forward with your proposed trade mark.

National Trade Mark

A registration of a trade mark is to be requested by filing an application at the Czech Industrial Property Office. After filing with the Office, the application is examined for legal conformity and a report on prior registered marks which are deemed to be similar is prepared. However, the same or similar prior trade marks are no obstacle to registration.

International Trade Mark

An international trade mark may be registered on the basis of a national trade mark at the World Intellectual Property Organization (WIPO) through the original registration office for a plurality of countries, having the same effects in each of these countries as a national trade mark.

EU Trade Mark

EU Trade Mark is a unitary mark which covers the whole of the European union. Applications for EU trade marks may be filed with the European union Intellectual Property Office (EUIPO). After an examination for conformity with the law these are first published for possible opposition and ultimately, when all requirements for registration are met, registered. After filing of a single application, this protection automatically extends to all member countries of the European Union. Any party can apply for a EU Trade Mark.

You can establish national rights by using and seeking to register a mark or you can reserve it nationwide by filing an International application stating that you intend to use the mark.

Our international presence and our network of associate law firms around the globe allow us to move swiftly to protect our clients’ marks anywhere on the Earth.

There are a number of ways in which trade marts can be protected, please contact us.

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Utility model

A utility model protects functional aspects of an invention and, once issued, lasts for 10 years from its filing date. After filing this application, you may want to file a PCT international application to test marketplace interest in your invention. It will give you up to a year of additional “patent pending” status. By doing this, you could benefit from as much as 21 years of combined priority registered utility model / patent pending status.

Novel, commercially usable inventions of lesser inventive merit than patents may be protected for a maximum period of 10 years. Examination is only for formal requirements, not for novelty and inventive merit; however, a search concerning the prior art is carried out to which the scope of protection claimed may be adapted.

If desired, a utility model application may be converted into a patent application prior to publication. Otherwise analogous provisions as to patents and patent applications apply.

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Patents

The patent-related services we provide to our clients include:

  • Developing and executing prosecution strategies not only to protect a client’s products, but also to analyse those of its competitors to help ensure that the client realizes value from its intellectual property assets;
  • Patent, Europatent, PCT and SPC Application Preparation and Prosecution;
  • Advise on whether a patent can be granted;
  • International patent protection and national phases;
  • Civil litigation at both the trial and appellate levels, including infringement and dilution cases, counterfeiting, grey-market goods, false advertising, and cyber squatting;
  • Industrial Property Office and European Patent Office litigation, including oppositions and cancellation proceedings;
  • Preparing and negotiating licenses, assessing the licensing value of competitors’ patents, and guiding the client in the decision to license;
  • Monitoring the field to know when a client needs a clearance opinion or has a potential interference issue. These efforts can help direct the client in research and development areas that minimize patent obstacles;
  • Providing counsel on business-related matters, including antitrust and competition issues;
  • Advising on potential litigation strategies, and, when necessary, deploying experienced trial and appellate teams;

Our major area of endeavor is patent application work, including patent searching, preparation and filing of patent applications in the Czech Republic Industrial Property Office in the European Patent Office and through Patent Cooperation Treaty (PCT).

Whoever invents or discovers any new and useful process, machine, manufacture or composition of matter or any new and useful improvement thereof may obtain a patent.
Inventions which are new, involve an inventive step, and are suitable for industrial application” may constitute the object matter of a patent.

It is generally only through patent protection that others can be prevented from copying one’s inventions. Our goal is to obtain the best possible patent protection for our clients at a reasonable cost.
Our firm have the technical expertise in many diverse areas of today and tomorrow to help our clients protect their intellectual property.
We can file for patents abroad. We also do a significant amount of work for patent firms and other clients in foreign countries who need patent representation in the Czech Republic or in the European Community

We will work with you to determine the optimum strategy for obtaining protection. This includes advice concerning the use of the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT) in order to defer costs and maintain the maximum flexibility in selecting the countries where protection is to be sought. We also offer a full “national phase” service in all member states of the EPC for clients seeking patent protection through that Convention.
We have technical specialists in virtually every field where patents may be obtained. We can also advise on analogous rights and know-how in such areas as computer software, bio-tech, plant patent, utility model, copyright and design right issues.

Small Improvements Can Have a Large Impact!

Czech and European Patent Prosecution

Preparation and prosecution of patent applications, both in the EU, Czech Republic and abroad, is the basis for the firm’s practice at its founding, and has been significant in its client services ever since.

We act for clients before the Czech and European Patent Offices in all matters relating to patents. We manage and prosecute international patent programmes both by direct national and European applications and by international applications via the Patent Cooperation Treaty PCT. We advise on the most cost effective and appropriate filing strategy in each case.

European Patent

The European patent system is a procedure by which a single patent application my be filed at the European Patent Office under the European Patent Convention (“EPC”) to obtain patents in a number of European countries.
European Patent may be filed through our firm directly to the European Patent Office in Munich or at the Czech Patent Office in Prague. On completion of the central grant procedure the patent has to be validated in the individual designated countries by submitting translations if necessary.
Within nine months as from the grant a European patent may be opposed centrally at the European Patent Office, later only in the individual designated countries. The maximum period of protection is 20 (+5) years; maintenance in the individual countries is realized separately.

European Patent extension and validation

Validation European Patent in the Czech Republic requires translation of the publication of the European Patent and filing in respective Industrial Property Office.

Office allows filing claim(s) translation before granting, after filing date of European Patent.
If the EP application is refused, it is still possible to file a utility model application in the Czech Republic.

To allow cost reduction and most effective uniform translation, European or International Patent Applications can be extended and validated in the Czech Republic and Slovak Republic by our firm in a single action as well as in this case is issued a single debit note with both Validations Documents and Receipt.

Save Up to 50% with our firm.

International patent application

In addition to applying for a patent in the EU state, you should consider seeking patent protection in other countries. By filing an international application or applications in selected countries, you can expand the potential market for your invention.
An international application via the Patent Cooperation Treaty (PCT => Patent Cooperative Treaty; available for multi-country filing) can preserve your options to pursue patents in over 150 countries around the world. If filed within 1 year of your first filed priority patent and/or utility model application, you can have up to 31 months from your priority filing date to apply for patents and/or utility models in these countries. International patent applications may be filed directly at the World Intellectual Property Organisation in Geneva or through Czech Industrial Property Office.

Foreign patent application based on Paris Convention period

Foreign patent protection will enable you to prevent others from profiting from your idea in other countries. Many countries will allow you to claim priority from your national application. If you apply for a national patent (or filed a utility model application), we recommend filing foreign patent applications within one year at the latest from the earliest relied on filing date of your national patent application (Paris Convention period). The proper foreign protection for your invention will depend upon your business plan.

Filing in foreign countries not only increases your patent protection but also increases the market value of your idea, particularly to companies that import and export their products. Furthermore, if you plan to be the exclusive source of the invention and intend to manufacture your product overseas, you should definitely want to file for patent protection in those countries.

Supplementary Protection Certificate (SPC)

The Czech and many foreign law regulation provides additional protection for patented pharmaceutical products or plant-protective agents. The validity period of the patent has been extended by the amount of time necessary to obtaining a marketing licence from the competent authorities decreased by 5 years, i.e. this provides for a longer patent protection whereby the normal 20-year period of validity of the patent may be extended to at least 25 years. The supplementary protection certificate must be requested within 6 months of the date of first authorisation to market the product as a medicinal product or the date of grant of the patent, whichever is the latest.
The legal effect of a supplementary protection certificate is substantially the same as that of the patent upon which it is based.

Our international presence and our network of associate Intellectual Property firms around the globe allow us to move swiftly to protect our clients’ ideas almost anywhere on Earth.