Specialisation

Industrial property law

Related people:
Strategic consulting and management of industrial property rights

In the ever-changing business and economic environment, responsible management of one of the most valuable assets in the company – the brand – becomes a key management task. Together with our clients, we define the areas of innovation and develop a strategy for the protection of industrial property rights in order to adapt the type of protection to their business needs. We also provide assistance in managing the portfolio of existing industrial property rights.

Our experience:

  • Audits of the objects of industrial property rights existing in the company and advice on choosing the optimal method of protection.
  • Legal opinions and analyses of the possibility of obtaining exclusive rights to objects of industrial property rights (including opinions on the registrability of industrial marks or designs, the patentability of inventions, prior art in the case of inventions, and the permissibility of the use of a specific designation or technical solution on the market).
  • Implementation of projects aimed at obtaining exclusive rights to objects of industrial property rights by means of agreements with employees, agreements on transferring rights or licensing agreements.
  • Comprehensive management of the portfolio of industrial property rights.
  • Developing a strategy for dealing with allegations of infringement of intellectual property rights of others, including their impact on the brand image (considering of anti-crisis steps).
Applications and proceedings before the Patent Office and OHIM

We provide comprehensive support in the conduct of application proceedings for trademarks, industrial designs, utility models and inventions, both in Poland and the EU, as well as at the international level. With regard to the inventions, we collaborate with leading experts in various fields of technology, depending on the specific subject matter of the invention. We have extensive experience in the conduct of litigation before the Polish Patent Office and the European Union Intellectual Property Office.

Our experience:

  • Trademark applications and applications for the protection of other objects of industrial property.
  • Management of a portfolio of industrial property rights in order to maintain the protection (payment of fees, monitoring deadlines, extension of protection, monitoring the applications of third parties).
  • Conducting litigation on the cancellation of exclusive rights (trademarks, industrial designs and utility models, patents) and the extinction of exclusive rights (trademarks).
  • Conducting proceedings before administrative courts (the Provincial Administrative Court in Warsaw and the Supreme Administrative Court) and the European courts (the General Court and the Court of Justice of the European Union).
Protection against infringement and unfair competition

Our team of experts has extensive experience in conducting litigation concerning infringement of industrial property rights. We also support clients in proceedings against unfair competition, such as imitation of products or commercial designations and unfair advertising. We provide comprehensive support at every stage of the proceedings. In court proceedings, we collaborate with experts in the field of valuation of industrial property rights, design, consumer behaviour psychology and sociology, as well as with agencies conducting consumer research and PR agencies.

Our experience:

  • Conducting proceedings before courts of law, including the Court for Community Trademarks and Industrial Designs, regarding violations of industrial property rights and unfair competition.
  • Conducting litigation concerning the protection of business secrets, imitation of products and packaging, as well as other acts of unfair competition with regard to marking and misleading practices.
  • Preparation of applications for temporary injunctive relief and for the provision of information.
  • Representing clients in cases of patent infringement, including pharmaceutical patents.
  • Conducting of mediation and settlement negotiations.
Internet domain names

A significant portion of business transactions take place via the Internet, hence the huge economic importance of Internet domain names and their protection against fraudulent use. Our firm handles matters related to the maintenance and protection of Internet domain names and represents clients in proceedings before the court of arbitration for Internet domains, as well as courts of law.

Our experience:

  • Analyzing the registrability and registration of Internet domain names.
  • Monitoring of used Internet names (including renewal of registration).
  • Conducting proceedings before courts of arbitration or courts of law in the field of Internet domain names.
  • Protection against the so-called cyber-squatting (appropriation of Internet domains).
  • Conducting mediation and negotiation in cases of conflict between domains and other domains or distinctive marking.
Audits and contracts

A team of the law firm’s experts audits existing contracts in terms of industrial property rights, and drafts contracts for the transfer of industrial property rights and the exercise of these rights. The law firm collaborates with tax experts to assess the tax aspects of transactions, including in-kind contribution of industrial property rights and know-how to the company, and transfer of rights in the context of ownership transformation. We also offer support in negotiating agreements on industrial property, in particular within the framework of larger projects involving many players.

Our experience:

  • Agreements on the transfer of exclusive rights and licensing agreements.
  • Agreements on the secrecy of certain commercial and technological solutions, either existing or potentially arising in the future.
  • Agreements on the transfer of know-how, and agreements on collaboration in a research and development consortium.
  • Audits of employment contracts in terms of the employer’s industrial property rights.
  • Assessment of exclusive distribution clauses in terms of compliance with competition law.
Training and workshops

Our experts conduct training and workshops in the field of industrial property law, brand protection, and issues relating to unfair competition. These include internal training and workshops, adapted to the legal and business environment in which our clients operate. The training sessions often concern new regulations, where interpretation and identification of the possible types of legal risk is particularly problematic, while being essential for the functioning of the company.

Industrial property law Download PDF (622 kB)

Industrial property law is one of the main specialisations of the law firm. An experienced team of experts provides legal support at every stage of management of industrial property rights. Patent attorneys, barristers and legal counsels advise clients on the appropriate forms of protection for industrial property and examine potential conflicts with the rights of others.

Strategic consultancy often involves issues at the interface of industrial property law and other key business issues, such as marketing, advertising, public relations and valuation of industrial property rights. The above-mentioned services are provided in consideration of Polish and European law. Our patent attorneys conduct proceedings relating to obtaining or cancellation of industrial property rights in procedures before the European Patent Office and the European Union Intellectual Property Office, as well as in international procedures.

  • Strategic consulting and management of industrial property rights

    In the ever-changing business and economic environment, responsible management of one of the most valuable assets in the company – the brand – becomes a key management task. Together with our clients, we define the areas of innovation and develop a strategy for the protection of industrial property rights in order to adapt the type of protection to their business needs. We also provide assistance in managing the portfolio of existing industrial property rights.

    Our experience:

    • Audits of the objects of industrial property rights existing in the company and advice on choosing the optimal method of protection.
    • Legal opinions and analyses of the possibility of obtaining exclusive rights to objects of industrial property rights (including opinions on the registrability of industrial marks or designs, the patentability of inventions, prior art in the case of inventions, and the permissibility of the use of a specific designation or technical solution on the market).
    • Implementation of projects aimed at obtaining exclusive rights to objects of industrial property rights by means of agreements with employees, agreements on transferring rights or licensing agreements.
    • Comprehensive management of the portfolio of industrial property rights.
    • Developing a strategy for dealing with allegations of infringement of intellectual property rights of others, including their impact on the brand image (considering of anti-crisis steps).
  • Applications and proceedings before the Patent Office and OHIM

    We provide comprehensive support in the conduct of application proceedings for trademarks, industrial designs, utility models and inventions, both in Poland and the EU, as well as at the international level. With regard to the inventions, we collaborate with leading experts in various fields of technology, depending on the specific subject matter of the invention. We have extensive experience in the conduct of litigation before the Polish Patent Office and the European Union Intellectual Property Office.

    Our experience:

    • Trademark applications and applications for the protection of other objects of industrial property.
    • Management of a portfolio of industrial property rights in order to maintain the protection (payment of fees, monitoring deadlines, extension of protection, monitoring the applications of third parties).
    • Conducting litigation on the cancellation of exclusive rights (trademarks, industrial designs and utility models, patents) and the extinction of exclusive rights (trademarks).
    • Conducting proceedings before administrative courts (the Provincial Administrative Court in Warsaw and the Supreme Administrative Court) and the European courts (the General Court and the Court of Justice of the European Union).
  • Protection against infringement and unfair competition

    Our team of experts has extensive experience in conducting litigation concerning infringement of industrial property rights. We also support clients in proceedings against unfair competition, such as imitation of products or commercial designations and unfair advertising. We provide comprehensive support at every stage of the proceedings. In court proceedings, we collaborate with experts in the field of valuation of industrial property rights, design, consumer behaviour psychology and sociology, as well as with agencies conducting consumer research and PR agencies.

    Our experience:

    • Conducting proceedings before courts of law, including the Court for Community Trademarks and Industrial Designs, regarding violations of industrial property rights and unfair competition.
    • Conducting litigation concerning the protection of business secrets, imitation of products and packaging, as well as other acts of unfair competition with regard to marking and misleading practices.
    • Preparation of applications for temporary injunctive relief and for the provision of information.
    • Representing clients in cases of patent infringement, including pharmaceutical patents.
    • Conducting of mediation and settlement negotiations.
  • Internet domain names

    A significant portion of business transactions take place via the Internet, hence the huge economic importance of Internet domain names and their protection against fraudulent use. Our firm handles matters related to the maintenance and protection of Internet domain names and represents clients in proceedings before the court of arbitration for Internet domains, as well as courts of law.

    Our experience:

    • Analyzing the registrability and registration of Internet domain names.
    • Monitoring of used Internet names (including renewal of registration).
    • Conducting proceedings before courts of arbitration or courts of law in the field of Internet domain names.
    • Protection against the so-called cyber-squatting (appropriation of Internet domains).
    • Conducting mediation and negotiation in cases of conflict between domains and other domains or distinctive marking.
  • Audits and contracts

    A team of the law firm’s experts audits existing contracts in terms of industrial property rights, and drafts contracts for the transfer of industrial property rights and the exercise of these rights. The law firm collaborates with tax experts to assess the tax aspects of transactions, including in-kind contribution of industrial property rights and know-how to the company, and transfer of rights in the context of ownership transformation. We also offer support in negotiating agreements on industrial property, in particular within the framework of larger projects involving many players.

    Our experience:

    • Agreements on the transfer of exclusive rights and licensing agreements.
    • Agreements on the secrecy of certain commercial and technological solutions, either existing or potentially arising in the future.
    • Agreements on the transfer of know-how, and agreements on collaboration in a research and development consortium.
    • Audits of employment contracts in terms of the employer’s industrial property rights.
    • Assessment of exclusive distribution clauses in terms of compliance with competition law.
  • Training and workshops

    Our experts conduct training and workshops in the field of industrial property law, brand protection, and issues relating to unfair competition. These include internal training and workshops, adapted to the legal and business environment in which our clients operate. The training sessions often concern new regulations, where interpretation and identification of the possible types of legal risk is particularly problematic, while being essential for the functioning of the company.