Today, there is increasing focus on the value-creating potential of intellectual property. IP-driven mergers & acquisitions and patent auctions are entering the commercial mainstream, alongside innovative approaches to in- and out-licensing of IP rights. In a globalized and increasingly competitive marketplace, the protection and exploitation of intellectual property¿ from patents, copyright and trademarks to design rights and data¿are thus vital commercial objectives to ensuring the success of your business ventures.
We bring our vast experience and expertise to help our clients protect their valuable intellectual property. Our attorneys regularly act for leading international companies and organizations, as well as entrepreneurs and businesses, that are often at the forefront of their respective fields. We provide practical and commercial legal advice at every stage in the development and life of intellectual property rights¿from creation to exploitation, and, if necessary, to protection and enforcement. With offices in London, New York, New Haven, Greenwich, San Francisco, Geneva, Zürich, Padua, Milan, Hong Kong, Singapore, Tokyo, Sydney and the BVI, we reach across all major global time zones. Throughout our transactions, our IP team employs multi-lingual capabilities, facilitating effective communication with our clients.
The firm regularly advise clients on keeping ideas and proprietary information confidential, filing strategies and the proper management and exploitation of rights (including effective digital rights management for e-commerce). Our services offer in-depth experience of all aspects of IP and law¿both transactional and contentious¿across the wide range of technology, media and commercial sectors, including art, biotechnology, chemical, design, digital commerce, electrical, fashion, financial services, general manufacturing, hospitality, leisure, luxury brands, mechanical, professional services, software, sports and travel services.
We handle all types of intellectual property procurement rights. This includes copyrights, design rights, utility patents, trademarks, trade dress and domain names, as well as advising on all types of intellectual property licensing and purchase agreements and trade secret protection. We are experienced at protecting our clients’ intellectual property rights by way of multiple legal avenues, including by court and administrative (e.g. international trade commission) action. When it comes to the protection and enforcement of our clients’ IP rights, we have considerable experience in devising and managing both multi-party and multi-jurisdiction IP disputes.
We have acted as lead counsel in intellectual property cases involving advertising compliance, copyright, trademark, design patents, trade dress, trade secret, unfair competition and utility patents. Our attorneys have appeared in actions in Australia, Europe, Singapore, and the United States, handling cases before High Courts/District Courts, Courts of Appeal, and before the Supreme Courts of the land. We defend our clients’ intellectual property rights, as well as protect them against the assertion of intellectual property rights by others.
As a truly worldwide firm, we have the bandwidth to use the administrative and court procedures available across the globe to protect our clients’ intellectual property rights, and to defend them from those asserting questionable intellectual property rights. Unlike the vast majority firms touting their intellectual property capability, our law firm has extensive experience in organizing the tax-efficient licensing and exploitation of IP rights as a standalone initiative or as part of a larger transaction, including any competition and antitrust implications that might arise. Such tax-efficient savings can be used to reinvest into R&D, capital expenditure, manufacturing, talent acquisition, and, of course, intellectual property development.
To ensure that the technical advice our clients receive is of the highest quality and relevance to their chosen market, our team works closely with specialist lawyers in our other practice areas across the firm to effectively meet your holistic needs. This allows us to take a joined-up approach across a range of our other legal disciplines, including corporate and commercial, employment, immigration, financial services, real estate, banking, corporate tax, wealth planning, private client, trusts and estates, family, charity law and litigation.
How We Can Help
A number of critical issues should be addressed when you are choosing to protect your intellectual property, including:
- Where should you hold your IP?
- If offshore, does this include existing IP or only newly developed IP? What are the tax risks to owning IP rights offshore? If you are planning to hold your IP offshore, what business/corporate issues may arise?
- What issues surround the cross-border transfer of IP?
- What export controls and technology transfer regulations should be considered?
We Can Assist With:
- Advice around intellectual property and branding, to protect the business now and in the future.
- The registration of copyrights and trademarks, the prosecution and procurement of all types of patents.
- Advice on advertising compliance, domain name disputes, licensing and sale of intellectual property rights, grey market and counterfeiting matters, potential infringement of copyrights, trademarks, patents, and trade dress, unfair competition law, antitrust concerns regarding intellectual property licensing and settlements, freedom to operate in respect of the intellectual property rights of others, options when confronted with intellectual property assertions of others, and options when detecting infringement of your own intellectual property by others.
- Administrative proceedings available worldwide to attack the assertion of intellectual property rights by others, including ex parte review, inter partes review available in the United States with respect to patents, oppositions in regard to trademark registration in the United States, oppositions in respect of patents and trademarks, and cancellation proceedings, in Europe.
- Legal proceedings to protect your intellectual property rights, whether residing in copyright, trademark, trade dress or patent, or to challenge the intellectual property rights of others (e.g. declaratory judgment actions).
- Administrative proceedings to protect your intellectual property rights, such as URDP proceedings (domain name rights), NAD proceeding (pertaining to stopping false advertising claims) and ITC proceedings (pertaining to the right to exclude products infringing a valid and enforceable patent or registered trademark, infringement of registered copyright, mask works, misappropriation of trade secrets or trade dress, passing off and false advertising).
- The creation of essential legal documents, such as non-disclosure agreements, employment agreements and employee handbooks, terms of business and email disclaimers, as well as license and intellectual property sale agreements.
- Legal actions to protect your trade secrets and to protect you against those that may make use of your confidential information.
- Raising capital and advice on strategic alliances, joint ventures and mergers, and IPOs, as well as due diligence review of intellectual property estates for potential acquisition.
- Compliance with privacy and data security laws.
Recent work
- Acted for a leading Japanese manufacturer in a dispute over alleged infringement of a patent relating to the computer control systems of food packaging machinery.
- Represented leading Indian generic companies in overcoming the worldwide legal hurdles when faced with bringing new generic products into the market.
- Represented a Swiss electrical device manufacturer in assertion of its patent rights.
- Represented a U.S. consumer goods company in advertising compliance issues.
- Advised a UK company on the IP aspects of their acquisition of a local company providing online hotel reservation services.
- Advised a publicly listed company in Singapore in respect to patent infringement claims.
- Advised in the acquisition by a US technology company of software and intellectual property assets from an embedded software company in Moscow and related technology service agreements with an affiliated entity in British Virgin Islands.
- Advising a foreign broadcasting company on regulatory compliance in Singapore in anticipation of a review of satellite broadcasting.
- Advised a Singapore-based company on the acquisition of clean technology from a Korean company.
- Advised a system integration and digital services company on the acquisition of the entire issued share capital of a UK-based IT consultancy provider which specializes in BizTalk services. Corporate, tax, employment, IP and property advice were also provided.
- Acted for a major Italian manufacturer in the bio-medical and electro-medical equipment sector in pursuing a claim for patent infringement of one of its devices used for carrying out specific surgical procedures.
- Advised a Singapore-based mobile communications company on the acquisition of mobile traffic technology from a US company.
- Represented a competitive motor sport team on all aspects of its business, including intellectual property matters, and sponsorship and merchandising agreements, among which was its agreement with a toy manufacturer.
- Advised several companies and associations in Singapore on compliance with the Personal Data Protection Act.
- Acted for a leading Italian manufacturer of explosives and specialty chemicals in a long-running design right case involving multiple warhead systems. The case was notable as the Court, for the first time, had to assess the impact of the alleged infringers’ mental capacity in deciding whether the alleged acts amounted to infringements under the wording of the relevant legislation.
- Managed the trademark portfolio of a leading Italian wine manufacturer.
- Advised several statutory boards in Singapore on the issuance and award of tender contracts.
- Acted for an Italian sports celebrity against an international beverage company in a trade name dispute.
- Acted for a defense sector manufacturer in a claim of passing off with related cross-border proceedings.
- Defended a copyright infringement claim asserted against an internationally-recognized jazz musician, arising from his preparation of a musical score for the feature and silent film presentations focusing on the life of the father of jazz, Buddy Holden.
- Acted for an Italian wholesaler of perfumery in relation to a trademark infringement and parallel trade case.
- Enforced the rights in the Netherlands of a Singapore-based company against a Dutch counterpart in respect of false allegations of IP infringement.
- Advised a Shanghai-based company on their rights under a technology license agreement with a US company.
- Represented a Singapore-based media giant in trademark opposition proceedings against a Malaysian competitor.
- Advised an international beer manufacturer on trademark infringement in Singapore.
- Force India Formula 1 Team Limited v. 1Malaysia Racing Team SDN BHD & Ors: advising the corporate defendants in this high profile claim. Force India had alleged that there had been ‘systematic copying’ of the entire aerodynamic system for its 2009 car, the value of which was put at £15million. Adverse findings are less than what had previously been admitted and damages were limited to just €25,000.
- Advising Handi-Craft Company and New Vent Designs Inc, the manufacturers of Dr Brown's anti-colic baby feeding bottle, on the patent, trade mark, design right and copyright aspects of an infringement action. Passing off was also involved and a novel form of interim injunction obtained.
- Acting in two recent leading trade mark cases, Laboratoire de la Mer Trade Mark, and MasterCigars Direct Ltd v Hunters & Frankau Ltd and Corporacion Habanos SA.
- Advising on the IP aspects of the acquisition of a high profile London-based football club.
