CONTENTS 4
Al-Otaishan Intellectual Property & Technology Law Firm (AIP&T)
5
Aumento & Ponce
6
Barlow, Josephs & Holmes, Ltd
7
Cotty Vivant Marchisio & Lauzeral
8
Greer, Burns & Crain
9
Hicks IP
10
Minter Ellison
11
Palmer Biggs IP, Solicitors
12
Patent Law Firm Wittmann IP
2 | Intellectual Property, Copyright & Trademark Law Awards 2017 | www.prosectornetwork.com
The Professional Sector Network is a leading choice for professional and corporate individuals from around the world. Our subscribers and users trust the Professional Sector Network to deliver leading advisers and hotels globally to them every day. The Professional Sector Network is the leading monthly source of business and dealmaker intelligence for those trading in today’s global corporate marketplace.
Unrivalled in both market and geographic reach, the diversity ofthe Professional Sector Network’s global users and subscribers is one of the many things that distinguishes us from other international networks. Our audience’s come from a multitude of disciplines, business activities and sectors worldwide. Nowhere else can you find access to and regularly updated information on all these corporate professionals on just one site.
This truly diversified global audience is made up of key senior corporate executives ranging from (among others) chief executive officers, chief operating officers and finance directors to managing directors, partners and managers at national and international businesses, including: • Mid-market and SME public and private businesses • Large multinational businesses • Private and institutional investors • Private equity and venture capital firms and associations • Asset base lenders • Banks leveraged, commercial and acquisition finance • Law firms • In-house general counsel of leading corporations • Government organisations • Investment and fund managers • Fund administrators and custodians • Financial advisory and accounting firms • Due diligence advisers • Public relations • Brand managers • High-net-worth individuals
Intellectual Property, Copyright & Trademark Law Awards 2017 | www.prosectornetwork.com | 3
Al-Otaishan Intellectual Property & Technology Law Firm (AIP&T) Office 10, Bldg. 03, AL Ezdehar District, South of Manarat Al Riyadh School, Exit (8), Riyadh, Saudi Arabia Tel: +966- 11 454 4765 http://aiptlaw.com/
Intellectual property assets (IP) represents an essential portion of a company’s capital. Yet intellectual property asset formation, acquisition, estimation, transfer, and protection are more difficult than ordinary tangible assets. AIP&T offers its local/foreign clients comprehensive services at very competitive rates for all IP rights including utility patents, design patents, trademarks, domain names, copyrights, and trade secrets. The firm’s professionals are very experienced with procedures for securing and protecting all IP rights such as: • Availability searches and pre filing advice • Drafting and filing applications • Prosecution, registration and renewal • Licensing, franchising, assignment, and technology contracts • Enforcement, anti piracy, and anti-counterfeit solutions • Litigation and professional advice for validity and infringement • IP rights valuation AIP&T is located in Saudi Arabia but we provide global IP services through our networking with trademark and patent agents with particular emphasis on Gulf Cooperation Council Countries (GCC); Arabia, Kuwait, United Arab Emirate, Oman, Qatar, and Bahrain.
We are a member of the International Trademark Association (INTA) and is a regular attendee of INTA annual conferences and meetings, MARQUES, The International Association for the Protection of Intellectual Property (AIPPI), European Communities Trademark Association (ECTA). Al-Otaishan Intellectual Property & Technology Law Firm (AIP&T) is an IP Law Firm in Riyadh, Saudi Arabia with an active presence in the GCC, Middle East, Africa, and Asian countries. AIP&T is managed by Atty. Mohammad Al-Otaishan, who holds an LL.M. degree in Intellectual Property from the University of Washington, USA. Atty. Mohammad was previously a legal advisor for Saudi Basic Industries Corporation (SABIC). During his career at SABIC, he made a very remarkable contribution to the case EXXON Mobile vs SABIC which is the largest case ever in the region with respect to volume of damages and one of the most complex cases in the Middle East. The intellectual property assets (IP) represent an essential portion of company’s capital. Yet intellectual assets formation, acquisition, estimation, transfer, and protection are more difficult than ordinary tangible assets.
rights including trademarks, utility patens, design patents, domain names, copyright, and trade secrets. Our office is located in Riyadh, Saudi Arabia but we provide IP services by associating with major trademark, design, and patent agents all over the GCC, Middle East, Asian and African Countries. Currently, AIP&T is rapidly expanding with its service in more than 30 jurisdictions in the GCC, Middle East, Africa, and Asian countries. The firm’s professionals are very experienced with procedures for securing and protecting all IP rights such as, Trademark: Availability search , Registration , Prosecution , Enforcement , Litigation , Renewal , Assignment , Licensing , Amendments , Trademark Watch, Response to office actions.
AIP&T offers its clients comprehensive services at very competitive charges for all IP
4 | Intellectual Property, Copyright & Trademark Law Awards 2017 | www.prosectornetwork.com
Aumento & Ponce 10A Net Lima Building, 5th Avenue corner 26th Street, Bonifacio, Global City Taguig City, 1634 Metro Manila, PHILIPPINES Tel: (632) 669-2769 https://www.aumentolaw.com.ph/
Aumento & Ponce is an intellectual property law firm in the Philippines, representing both local and international clients. The firm is composed of lawyers, registered patent agents, engineers and trademark specialists who are equipped with the necessary know-how and experience vital in helping clients with their intellectual property concerns. Our registered patent agents and engineers have decades of experience in extensive patent work, including the drafting of specifications, abstracts and claims, and conducting patent searches and freedom to operate opinions. The firm’s trademark specialists, on the other hand, are highly knowledgeable in prosecuting and registering trademarks and are able to handle and manage numerous trademark files and portfolio for clients. Our lawyers have over 25 years of combined experience in litigating cases involving intellectual
property rights before the Intellectual Property Office, the Regional Trial Courts, the Court of Appeals and the Supreme Court of the Philippines. Aumento & Ponce is an active member of and several international intellectual property organizations including International Trademarks Association (INTA). Aumento & Ponce is a law firm that renders legal services in the field of intellectual property law. The firm’s lawyers, registered patent agents, engineers and trademark specialists are equipped with the technical and professional expertise in handling all types of intellectual propertyrelated concerns from local and international clients. The firm’s registered patent agents and engineers have decades of experience in extensive patent work, including the drafting of specifications, abstracts and
claims, and in conducting patent searches and freedom to operate opinions, while its trademark specialists are adept at handling all aspects of trademark prosecution. The lawyers of Aumento & Ponce have over 25 years of combined experience in litigating cases and in handling patent and trademark matters, including enforcement of clients’ intellectual property rights. Aumento & Ponce offers the following major services to clients: • Patent • Trademarks • Copyright •
Licensing, Franchising and Technology Transfer
• Litigation •
Enforcement of Intellectual Property Rights
•
Other Legal Services
Intellectual Property, Copyright Mergers &&Acquisitions Trademark Law Law Awards Awards 2017 2017 || www.prosectornetwork.com www.prosectornetwork.com || 55
by the client, patent protection in foreign countries may be sought with the assistance of a network of foreign legal associates throughout the world. Although a very lengthy and expensive process, foreign protection is critical to clients with operations and sales outside of the United States. Non-Infringement Studies - Barlow, Josephs & Holmes, Ltd. is available for conducting comprehensive noninfringement analyses where a client’s device is studied to determine whether it infringes a particular patent. Patent Licensing and Sale - After patent grant, license/royalty agreements can be drafted as well as assignment documents in connection with the sale of patent.
protection. Barlow, Josephs & Holmes, Ltd. will handle all aspects of the prosecution of the trademark application through the United States Patent and Trademark Office. Foreign Trademark Protection - If desired by the client, trademark protection in foreign countries may be sought with the assistance of a network of foreign legal associates throughout the world. Foreign trademark registration protection is critical to clients who sell their products abroad. Recently, the CTM (Community Trade Mark) registration procedure has made trademark registration in the European Community simpler, more streamlined and much less expensive. Trademark Licensing and Sale - Registered trademarks and nonregistered trademarks (common law marks) are available for license and sale. Barlow, Josephs & Holmes, Ltd. is available for counseling and planning in connection with the sale or licensing of a trademark as well as to draft any documents needed in connection with such matters.
Practice Area: Trademark
Practice Area: Copyrights
Trademark
Copyrights
Barlow, Josephs & Holmes, Ltd. provides a wide array of trademark services for clients of all sizes, from the sole proprietor to the large corporation. These trademark services include registration protection as well as counseling and planning regarding mark selection and adoption. Trademark Search and Registrability Opinion - The first step in the trademark protection process is a comprehensive trademark search to determine whether the selected mark is available for use and registration. Such a search includes research in numerous databases, including Federal Registrations and Application, State Registrations, Dun & Bradstreet Business Directory, Corporate Name Finder, a Common Law Registry and several others. A complete registrability and use opinion is issued along with a listing of trademark items uncovered as a result of the search. Federal Trademark Application - If the search indicates that the mark is available for use and registration to the satisfaction of the client, a federal trademark application is drafted and filed seeking federal registration
Barlow, Josephs & Holmes, Ltd. practices in all areas of Copyright Law. In particular, the firm provides counseling and planning regarding protection of new works as well as maintaining and enforcing an existing copyright portfolio. Litigation and enforcement includes civil actions against infringers
Barlow, Josephs & Holmes, Ltd. 101 Dyer Street, 5th Floor Providence, RI 02903 Phone:Â 401-273-4446 http://www.barjos.com/
Barlow, Josephs & Holmes, Ltd., established in 1857, is one of the oldest intellectual property law firms in the United States. The firm specializes in all facets of patent, trademark, copyright and trade secret law including patent, trademark and copyright protection, related litigation and enforcement. Barlow, Josephs & Holmes is a small firm which is wellsuited to providing personalized and speedy legal services, at reasonable cost, to small individual clients and large corporate clients alike. With its extensive experience, the firm is able to comprehensively advise its clients how to protect their valuable intellectual property. Located in Providence, Rhode Island, Barlow, Josephs & Holmes, Ltd. is easily accessible from all parts of New England.
Patents Barlow, Josephs & Holmes, Ltd. is experienced in all facets of obtaining patent protection in the United States. Being a small firm, Barlow, Josephs & Holmes, Ltd. is well-suited to developing and maintaining a direct and personal relationship with the client throughout the entire patent protection process. Patent Search and Patentability Opinion - The first step in the patent protection process is the patent search to determine the level of possible patentability of the invention. In connection with a thorough patent search, a complete patentability opinion is issued along with copies of all patents uncovered as a result of the search. U.S. Patent Protection - If the search indicates that patentability exists to the satisfaction of the client, a patent application is drafted and filed seeking patent protection. Barlow, Josephs & Holmes, Ltd. will handle all aspects of the prosecution of the patent application through the United States Patent and Trademark Office. Foreign Patent Protection - If desired
Practice Area: Litigation Litigation After protection is obtained for a given patent, trademark or copyright, enforcement is often required. Barlow, Josephs & Holmes, Ltd. will work with its clients in the important phase of policing and enforcing its intellectual property. This includes evaluation of accused items and taking the appropriate action to terminate the offending activity. If appropriate, the Firm will bring civil actions, either directly or with the assistance of a litigation law firm, as part of the enforcement.
6 | Intellectual Property, Copyright & Trademark Law Awards 2017 | www.prosectornetwork.com
Alain Zahlan de Cayetti Managing Partner CVML Limited Tel: +971505510624 www.cvml.com a.zahlan@cvml.com Suite 206, Tower B, Park Towers, DIFC, P.O. Box 482025, Dubai, UAE
The Firm CVML is an independent law firm founded in Paris in 2003 with its headquarters located at Rue du Faubourg Saint Honoré, a few meters away from the Palais de l’Elysée. With time, CVML has set-up offices in Dubai, Singapore and Yangon; and built a large network of local correspondents in many countries including the UK, the USA, Africa and China. CVML Dubai has been created in 2011 and holds licenses from the Dubai Legal Affairs Department (DLAD), the Dubai International Financial Centre Authority (DIFCA) and the Dubai Financial Services Authority (DFSA). The firm’s accounts are audited on yearly basis, in compliance with DFSA and international standards. Dubai is managed by Alain Zahlan de Cayetti (http://www.cvml.com/ en/who-we-are/our-team/partners/ alain-zahlan-de-cayetti ). CVML Dubai is the oldest and largest French based firm in the Dubai International Financial
Centre (UAE) and provides all types of Dispute Resolution and Business Law services. CVML (Dubai) specializes in a number of award-winning practice areas, including, in general, Alternative Dispute Resolution, Commercial and Contract laws and, in particular, Intellectual Property law. CVML provides expertise and legal counsel to government entities, federations, based in the UAE and abroad. Our team of lawyers includes European, Middle East and North - African qualified lawyers operating in English, Arabic, French, Spanish and Russian. They are supported by a highly motivated multi cultural partners, associates and paralegals. Our team has gained an extensive experience in both in-house and private practice, while assisting individuals, companies, private and governmental institutions. with extensive experience in both common and civil laws, CVML (Dubai) is able to adapt and manage any national and international situation.
We support our clients in a number of services and industry sectors in all geographic regions, covering a broad spectrum of legal practice areas and including the following: • International and local Alternative Dispute Resolution •
International Mergers & Acquisitions – Corporate and Bankruptcy
•
Intellectual property
• Contracts • •
Franchising, distribution and retail Tax, banking and finance
•
Criminal law
•
Sport law
•
Trusts and family business
•
Real estate
• Asset tracking and enforcement
Intellectual Property, Copyright & Trademark Law Awards 2017 | www.prosectornetwork.com | 7
Greer, Burns & Crain 300 S. Wacker Drive Suite 2500 Chicago, Illinois 60606 Tel: 312.360.0080 http://gbc.law/
At GBC, we’re all about Intellectual Property
Not too big, not too small Greer, Burns & Crain is large enough to offer a full spectrum of intellectual property legal services to even the largest clients with extensive IP portfolios, yet is small enough to achieve cost efficiencies and intense client focus that are often not possible at larger firms. GBC is large enough to provide experienced attorneys to serve any IP need, yet is a size that ensures that clients are never neglected or lost in the shuffle.
Budget conscious GBC understands the economics of businesses, and delivers excellent IP legal services within reasonable budgets. Simply put, our attorneys are committed to delivering value to clients.
All clients are served by partners Unlike many larger firms where clients have limited access to partners, GBC believes that every client deserves an experienced partner’s attention. Our partners are consistently available to clients. Greer, Burns & Crain maintains a high partner-toassociate ratio to ensure that every client’s IP agenda is overseen and guided by a highly experienced attorney.
We serve clients of all sizes Our diverse client base encompasses large multi-national corporations, universities, small businesses and individuals. A representative few of our trusted clients include Hewlett Packard,
Bosch, Fujitsu, UGG® footwear, US Gypsum, Metso Minerals Industries, Whirlpool, Stora Enso, Biotronik AG and the Universities of Illinois, California, Missouri, and Louisville, Kentucky.
Full range of IP services While a firm of modest size, we are not a micro firm. GBC’s nearly 20 attorneys are widely experienced in all aspects of the practice of IP law — a range of experience that matches or betters IP groups at larger firms. We are far more than just a patent prosecution shop: we have extensive, international trademark and transactional practices, and our attorneys litigate IP matters around the world. We had developed industry-leading international anti-counterfeiting strategies and tools that have resulted in large scale take-downs of online networks and physical operations. We manage the intellectual property portfolios of companies from start-ups to publicly traded multi-nationals.
We value long term relationships Many of our client relationships date from prior to the founding of the firm. Long-term relationships allow us to understand the businesses we represent, provide continuity to management, and help us practically incorporate business considerations into the development of intellectual property portfolios. Our depth of knowledge developed through long term client relationships produces more efficient representation and higher quality results.
We are leaders within the intellectual property legal community Many of GBC’s intellectual property attorneys lecture at seminars, law schools, and bar association events in Chicago and elsewhere regarding obtaining and securing intellectual property rights. Greer Burns & Crain, LTD. practices in the field of Intellectual Property, including patents, trademarks, copyrights, anticounterfeiting, licensing, technology transfer, trade secrets, and international intellectual property. The firm is experienced in the litigation of intellectual property rights in the State and Federal Courts and the International Trade Commission, and the resolution of such controversies through alternative dispute resolution vehicles such as mediation. We are experienced in obtaining patents, trademark registrations and copyright registrations for clients in both the United States and foreign countries. Our international capability is the result of a network of experienced foreign associates with whom we maintain established relationships. Greer Burns & Crain, LTD. provides legal services for our clients in a manner that is consistent with our own values and management philosophy. We have continued to serve valued clients and broaden our client base by striving to provide quality legal services promptly and at a competitive cost.
8 | Intellectual Property, Copyright & Trademark Law Awards 2017 | www.prosectornetwork.com
The firms of Hicks Intellectual Property Law and Hicks & Associates Intellectual Property provide a full range of intellectual property services. We are located in Alberta, Canada, a region of Canada known for its innovative and entrepreneurial spirit.
Hicks IP 709 Main Street, Suite 300 Canmore, Alberta, Canada T1W 2B2 Tel: 403.609.9421 http://www.hicksip.com/
Hicks Intellectual Property Law Hicks Intellectual Property Law is a legal professional corporation with a practice restricted to intellectual property. Hicks Intellectual Property Law handles all trademark matters for Canadian clients as well as all patent, trademark and industrial design matters in Canada for our foreign associates. Hicks Intellectual Property Law
provides legal services in the areas of licensing, intellectual property portfolio management, acquisition or sale of intellectual property rights and enforcement of intellectual property rights.
Hicks & Associates Intellectual Property Hicks & Associates Intellectual Property is a patent agency firm. Its team of patent agents work with a broad range of clients to protect the clients’ inventions, designs and technology by preparing patent and industrial design applications and filing and prosecuting those applications both in Canada and worldwide through its extensive network of foreign associates.
Intellectual Property, Copyright Mergers &&Acquisitions Trademark Law Law Awards Awards 2017 2017 || www.prosectornetwork.com www.prosectornetwork.com || 99
Christopher Young Partner Minter Ellison Rudd Watts Tel: 09 353 9910 https://minterellison.co.nz christopher.young@minterellison.co.nz 88 Shortland Street, Auckland 1010
The Firm Named New Zealand Law Firm of the Year by Chambers and Partners in 2017, we’re a leading full service law firm with the expertise to help your team achieve your business objectives. We have a dedicated IP practice and a leading internationally recognised team. We are unique in the New Zealand market as we are part of an Australasian practice. We work closely with the Minter Ellison Legal Group’s IP practice, which is a strong and experienced team. We have a wide range of clients, industries and work types for both local and international companies (including privately owned, SMEs and large public and multinational companies). We advise on all aspects of IP work, (but not patent prosecution). Best known for: •
Commercialisation of IP, including structuring, licensing, using IP as security, IP financing, and effective tax structures
•
Branding strategy, trade mark registration and portfolio management locally and internationally
• IP aspects of a wide range of major corporate transactions, including IP due diligence, preparing due diligence reports, and dealing with IP in commercial transactions, including negotiating IP aspects of sale and purchase contracts and licensing resulting from the transaction (mergers, acquisitions, asset transfers, licensing, joint ventures, development agreements, and capital raisings)
• IP dispute resolution and litigation including trade mark, copyright, Fair Trading Act, passing-off, confidential information •
Marketing and advertising
Christopher Young heads the intellectual property team and brings significant expertise to his widely recognised IP practice. He gives practical advice on all aspects of IP including development, protection, transfer, enforcement and commercialisation. He is repeatedly recommended as a leading lawyer in leading legal directories including Chambers, Asia Pacific Legal 500, Managing IP and WIPR for a strategic and commercial approach to IP over a wide range of areas. He advises clients in a broad range of industries including FMCG, fashion/apparel, publishing, food and beverage, liquor, advertising and marketing, retail, TMT, aviation, automotive, banking and financial services, entertainment, agriculture/horticulture, manufacturing, pharmaceutical, building, forestry, education, health and ageing, transportation and energy.
with the Fair Trading Act, marketing, advertising, consumer protection, passing off and trade mark oppositions. Chris’ expertise in IP dispute resolution and strategy sees him co-ordinate litigation strategy and provide strategic and technical advice to clients and supporting our litigation legal teams. He also advises on film and television production acting for a range of major US studios. He advises on regulatory work in the pharmaceutical and other medical sectors. Chris has extensive international networks including through the International Trademark Association (INTA) and the International Bar Association. He has been actively involved with INTA for many years and has been appointed to a range of INTA’s committees, including, having previously chaired INTA’s East Asia Pacific Famous Marks subcommittee and he is currently appointed to INTA’s Internet Committee, the Parallel Imports Committee and the Asia Pacific Global Advisory Council.
With over 20 years’ experience in licensing and commercialisation, franchising, commercial arrangements and the IP aspects of transactions, including business acquisitions and mergers, and financing, commercial IP is a key area of his practice. He also has significant expertise in brand strategy and managing trade mark portfolios both nationally and internationally including managing risks, launching new brands locally and internationally and strategies to commercialise, protect and enforce brands and counterfeits strategies, coupled with extensive experience
10 | Intellectual Property, Copyright & Trademark Law Awards 2017 | www.prosectornetwork.com
Palmer Biggs IP, Solicitors Richmond House 13 Carfax Horsham UK Head Office: +44(0)1403 211211 http://www.pbip.com
Palmer Biggs IP, Solicitors holds some of the world’s leading IP legal minds of Patent Attorney and Intellectual Property Litigation. Our UK intellectual property office prides itself on a reputation for excellence, personal service, niche sector expertise and a technologically innovative approach to IPR (Intellectual Property Rights).
your brand (service or product) is our job, this way you can relax and focus on running your business. Over the years we have built client trust and gained great rewards for internationally recognised client brands portraying our top IP capabilities.
We are hugely proud to have been recommended by Legal 500 year on year, you can be assured you will have a sustainable and long term IP solution with us. We hold everything you would expect from a world-class IPR Law firm, from trade mark acquisitions and registrations to providing a full strategy to managing your Intellectual Property portfolio.
Established in 2006 by Steve Palmer, Senior Partner, Palmer Biggs IP, Solicitors is a boutique law firm based in Horsham specialising in intellectual property and business law as well as offering notarial services.
Our IP team believes in a bespoke service, what matters most to us is our client relationship and working closely with your team to achieve your brand ambitions. Protecting
ABOUT PB IP
An innovator in the field of providing client-focused legal solutions to everyday commercial problems, Palmer Biggs IP, Solicitors uses its understanding of technology to deliver a costeffective and time-efficient service at highly competitive rates.
Intellectual Property, Copyright Mergers &&Acquisitions Trademark Law Law Awards Awards 2017 2017 || www.prosectornetwork.com www.prosectornetwork.com || 11 11
Our IP law firm is based in Munich/Germany, the center of intellectual property in Europe where the German Patent and Trademark Office (GPTO), the European Patent Office (EPO) and the Federal Patent Court are located. We advice and represent a broad spectrum of clients and offer a broad range of services in the field of intellectual property for protecting your intellectual property. The IP law firm Wittmann offers detailed and individual advice for protecting your ideas, innovations, complex developments and know how. We are pleased to support our clients in obtaining such protection by means of patents, utility models, trademarks and design patents in Europe and Germany. These industrial property rights allow you to obtain an optimized positioning of your economic activity compared to competitors. Such positioning is product and market specific and will be optimized by our attorneys. In this regard, we are used to prepare client-specific strategies being optimized, for example, depending on type of invention, product, company, sales region and competitors.
The legal services of the IP law firm Wittmann include drafting, filing, prosecuting and enforcing of intellectual property rights, as well as representing clients in opposition, appeal and nullity proceedings. Further legal services of our patent law firm are directed to regional phases in Europe and national phases in Germany. Also, we regularly assist our clients in filing IP rights almost worldwide through our global network of well-established law firms. In addition to the traditional services of a patent law firm (prosecution, opposition, appeal, nullity, trademarks), the patent attorneys of the IP law firm Wittmann have wide experience in drafting infringement opinions (expert opinions), freedom-tooperate analyses (FTO) and standard essentiality analyses, as well as in conducting novelty searches and drafting novelty analyses. Furthermore, the patent attorneys have experience in supporting clients as technical experts in infringement proceedings and licensing negotiations.
Patent Law Firm Wittmann IP Frans-Hals-StraĂ&#x;e 31 81479 MĂźnchen Germany Tel: +49 89 5505 218-0 http://www.wh-ip.com
The technical expertise of Patent Law Firm Wittmann covers in particular electronic engineering, telecommunications (e.g. mobile radio communications), software, medical engineering, mechanical engineering, image processing, optics and technical physics. We represent international companies and Universities in the field of intellectual property and patent infringement in Europe and worldwide.
12 | Intellectual Property, Copyright & Trademark Law Awards 2017 | www.prosectornetwork.com
Intellectual Property, Copyright & Trademark Law Awards 2017 | www.prosectornetwork.com | 13