The activities of our consulting firm
Protection and prosecution of IP Rights
We file and prosecute applications:
- Directly at the national Patent, Trademark and Design Offices of France, Germany, Great Britain, Ireland, Belgium, Luxemburg and Benelux
- At the European Patent Office
- At the Community trademark and Design Office (OHIM)
- At the World Intellectual Property Organization (WIPO)
- In Copyright matters
- In the area of domain names (UDRP, etc)
Patent applications at national offices
The partners, associates and consultants in our firm handle ail steps from drafting through filing and prosecution of patent applications in France, at European level, as well as at national level in certain other European countries.
- Directly at the national Patent Offices of France, Germany, Great Britain, Ireland, Monaco, Belgium, Luxemburg and Benelux
- At the European Patent Office (EPO) in Munich,
- At the World Intellectual Property Organization (WIPO) in Geneva through the PCT (Patent Cooperation Treaty) system
Filing and prosecuting Patent applications at the European Patent Office
We are one of the firms filing and prosecuting the largest number of European and PCT applications, amounting for several years now to around 210 to 292 applications per year, not only on behalf of French applicants but also on behalf of companies worldwide.
Trademark and Design applications at national offices
- Our Partners, Associates and Consultants undertake direct filing and prosecution at the French German, British, Irish, Belgium, Luxemburg PTOs as well as at the Benelux PTO, the WIPO in Geneva, the Community Trademark Office (OHIM) in Alicante, and various foreign national Patent and Trademark Offices, covering:
- Trademark and Design applications
- International Trademark and Design applications
- Community Trademark (CTM) and Design applications
Filing and prosecuting trademark and Design applications at OHIM
Since 1996, our firm has filed over 1500 Community trademarks (CTM) and Community Design applications at the OHIM (Office for Harmonisation in the Internai Market) in Alicante.
According to statistics published by the OHIM concerning firms that were the most active in filing applications on behalf of US companies between 1996 and 2003, our Firm was in first position for France, and 34th position for Europe.
Filing and prosecuting applications before WIPO
Our Firm has filed more than 2000 International Trademark and Design applications at the WIPO in Geneva (under the Madrid Arrangement/Protocol and Hague Agreement).
In Copyright (droit d’auteur) matters
Our specialists provide opinion work in questions of literary and artistic property rights and Copyright. We have particularly developed our activities in the areas of the rights of creation (Copyright) in the fashion and music areas as well as well as merchandising (use of rights derived from the original creation), and their application in the field of trademarks.
Services in the area of domain names
Protecting distinctive signs and monitoring trademark use on the Internet requires acting both preventively as well as protectively:
- We advise clients on the strategy for registering domain names that are the most appropriate to their activity, their markets and their trademarks;
- We file domain narine registrations throughout the whole world on behalf of our clients;
- We manage important domain name portfolios;
- We perform searches on domain name availability (through similarities) in parallel with searches on availability to file/use trademarks;
- We monitor new domain name registrations throughout the whole world (similarity searches);
- In the framework of mergers and the requirement for due diligences, we perform auditing of domain name portfolios.
Our payment service is especially developed annuities and electronic means at our disposal allow an advantageous cost reduction for those of our clients who have entrusted their entire portfolios of annuities.
Number of applications/validations filed
As regards filing and prosecution of patents at the various intellectual property offices, for the period 2006 to 2013 our firm handled:
More than 7000 French, foreign and European patent applications of which 1800 were European Patent applications or PCT applications (the major part of these European Patent applications having been filed on behalf of foreign (non-French) companies)
and more than 9000 National Phase validations of European Patents filed by our Firm directly in France, Germany, Great Britain, Ireland, Monaco, Belgium and Luxemburg.
Looking after your IP
Recording changes on Patent and Trademark Registers throughout the world
A sometimes little-known but important aspect of work consists in
- Registering Intellectual Property rights assignment deeds;
- Registering license agreements;
- Registering securities on IP rights
Our experienced staff specializing in trademark and patent portfolio management and getting assignments and changes in rights registered worldwide were able, in a recent case to get 40,000 assignments and name changes registered in around 100 countries, over the last 5 years.
Opinion on freedom to use Trademarks
We regularly give opinions on availability to use/file trademarks and can comply with short deadlines for such opinions.
The presence of native British, German, Italian, and Spanish speaking staff in our Firm and our knowledge of other foreign languages (Dutch) allows us to take account of connotations which are language-specific and might otherwise have gone unnoticed.
The transmission and the use of know-how and technology transfers raise particular problems on a scientific and technical level when drafting such contracts.
The diverse nature of the way in which patented or unpatented technologies may be used, as well as their scientific technicalities make not only legal training a necessity but also a high degree of scientific and technical training and good awareness of industrial issues.
The fact that a good percentage of our staff are trained to a high level in both technical and legal matters is of indispensable help in advising clients and drafting such contracts.
IP tax matters
IP transactions can involve certain unavoidable tax issues.
We are used to dealing with tax aspects in the sale, purchase and exploitation of Trademarks, Designs, Copyright and Patents, along with determining the value of Intellectual Property portfolios.
Thanks to our international orientation and experience, major groups, not only French but also German and North American, particularly in the food, pharmaceutical, cosmetics and hi-tech industries, have decided to entrust us with the management of their worldwide trademark and patent portfolios.