Tag: patent

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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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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.