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Clearing the way to market
We were approached by a pharmaceutical company that was planning to sell one of its proprietary drugs in a newly designed package which provided a controlled release of the drug to a patient. The company had become aware of a European patent recently granted to one of its competitors with broad patent claims that covered the release mechanism. We filed an opposition to the European patent at the European Patent Office on the basis that the claims of the patent were too broad. We found a research paper published by a University professor which showed that the broad idea of the release mechanism was already known and used this to force the patent claims to be narrowed, so that the patent would not be infringed by our client.
Venture capital investment
Our client, a venture capital organisation, was looking to invest in a new company recently started by an inventor who had left his previous employer to develop imaging equipment. We were asked to review the patent applications that had been filed for the project and prepare a report. We found that the patent applications were adequately focused on the project but it turned out that the new company did not clearly own the rights to the technology even though the company was owned by the inventor. We proposed a solution and after adopting our proposals, the investment was made and the company was eventually the subject of an initial public share offering that produced a significant financial return for the client.
Defending trade mark rights
A multinational pharmaceutical manufacturer had recently launched a new drug for a radical new treatment of a medical condition, under a distinctive trade mark, which had received a substantial amount of media attention. It was discovered that a number of applications were being made by others to register confusingly similar trade marks not only for pharmaceuticals but also other goods and services which attempted to gain benefit from the reputation associated with our client’s mark. We provided a watching service to locate these rogue applications and successfully filed oppositions and other interventions to preserve the integrity of our client’s trade mark rights.
R&D collaboration
A semiconductor manufacturer entered into a collaboration agreement with a British University to develop a new approach to semiconductor design that provides improved chip miniaturisation. We were closely involved with the project and filed a series of patent applications for inventions devised during the development programme. This required our attorneys to become conversant with a new field of applied physics and to develop a good rapport with the members of the research team so that inventions could be identified and protected effectively. Protection was obtained initially through the European Patent Office and then extended internationally into countries such as USA, Japan and Korea. We also advised the company on the IP aspects of the contractual arrangements with the University.
Software start-up
Two computer science graduates had devised a novel software solution for mobile telecommunications and formed a start-up company. We filed a patent application for their invention, adopting a strategy to keep the costs down whilst financial backing was sought. We also advised them about copyright aspects of their developments. We provided due diligence reports for potential investors and funding was then obtained. The product was later licensed to a telecommunications manufacturer and we assisted in the preparation of the licence. The package was to be marketed under a distinctive name. Our trade mark attorneys carried out searches and found a similar trade mark that had previously been registered by a large telecommunications company and advised that a different trade mark be adopted. The client accepted the advice, used a different mark for the launch of the product and as a result avoided the risk of expensive trade mark litigation.
New drug development
Our client, a pharmaceutical company had identified by their research an improved drug and planned to bring it to the market. They provided a list of candidate trade marks for it. The product was to be sold in a novel design package. We checked to see whether they would be free to use the trade marks in a number of territories and advised on their registrability. The trade mark was selected on the basis of this advice and a programme of international registration was undertaken. We also carried out an infringement clearance search to determine whether the new drug would infringe patents held by competitors. We also filed a patent application directed to the improved efficacy of the drug. A registered design was filed to protect the shape and configuration of the packaging.
Engineering success
A retail design & build company devised a very simple and effective shop merchandising system for department stores and retail outlets. We advised that although the system was mechanically simple, it involved an elegant invention and we successfully obtained patents and registered designs for the system in America, Europe and a number of Pacific Rim countries. The elegant simplicity of the design meant that it was easy to copy and a number of infringers came to light worldwide. We successfully co-ordinated action against the infringers through our associates in the countries concerned in order to protect our client’s competitive edge and market share.
Working with overseas associates
A firm of patent attorneys in USA had filed a series of US patent applications for a new client operating in a high technology field and wanted to obtain protection in Europe. We advised them how best to adapt the original US application documents into a form suitable for filing at the European Patent Office and formulated patent claims which maximized the scope of protection for the inventions. We filed and successfully prosecuted the European applications to grant. Having got to know the US attorney firm and their expertise, we were able to send them cases to be filed at the US Patent and Trade mark Office on a reciprocal basis.
