Tag: WIPO

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Compiled by German patent attorney Ralph Beier

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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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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.