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Litigation / Advising / Licensing and Assignments / Search and Monitoring / Annuities, Renewals and Maintenance / Business and Finance / Services for Non-profit Institutions / Filing and Prosecution Requirements / Fees and Costs / Terms
Litigation
Firm attorneys represent their clients' interests on both sides of these issues in courts as well as Offices throughout the Czech Republic. In addition, firm attorneys assist and consulted in connection with enforcement activities worldwide playing key roles in the strategy and coordination of foreign litigation.
Firm attorneys have highly trained abilities to understand modern technology and to explain it in concise, common sense terms. Equally important, firm attorneys have a thorough understanding of intellectual property law and the ability to work closely with other scientists and engineers, identifying what is truly important and what is not.
While litigation is expensive and time consuming and should be considered a remedy of last resort, it is often the only way to resolve conflicts. The enforcement of patents, trade marks, copyrights and other intellectual property matters through litigation and related activities, has been a principal component of the firm's practice since its founding.
Advising
We are highly skilled at counseling our clients on how best to secure their intellectual property rights in the most advantageous and cost-effective manner, whether it be through patents (design or utility models), trade marks, trade dress, copyrights, domain names, trade secrets, covenants not to compete or other restrictive covenants. We are also proficient at rendering high-quality independent legal opinions relating to the validity or infringement/non-infringement of our clients' intellectual property, or that of others, including performing "freedom to practice" or "clearance" analyses of products, methods and packaging, and providing our clients with "design around" advice, so that potential conflicts can be avoided.
In providing our service we are always willing to cooperate with your other professional advisers whether legal, financial or technical in the field of Intellectual Property.
Naturally, we will keep you informed of the progress and any necessary action taken in relation to all matters that you have entrusted to our care.
We have also set high standards in terms of the advice we give. We believe you should receive advice which:
- can be understood immediately;
- is provided in good time to meet your commercial requirements;
- is reasonably and competitively priced.
We can advise on all aspects of intellectual and industrial property.
Licensing and Assignments of IP Rights
Today, IP transactions play a key role in an organization's overall IP strategy. The field of licensing has grown beyond the traditional patent, trade mark, design and copyright licensing agreement.
A license agreement is a document whereby the licensor (which remains the owner of the intellectual property rights) authorizes the licensee to use the distinguishing sign on an exclusive basis.
We know that licensing and other intellectual property transactions go beyond sharing information. They involve comprehensive strategies that identify and prioritize a company's most valuable intellectual capital, as well as counseling on the potential conflicts faced in commercially exploiting each asset. Our extensive practice in patent, trade mark, and copyright prosecution and litigation for our clients allows us to approach each transaction with a deep understanding of how the intellectual property will affect our client's business, and where the opportunities and pitfalls of the transaction lie.
For instance, the enterprise that wishes to shift its production towards technologically more advanced sectors may achieve this aim in a shorter time and at more contained costs by resorting to technologies that are already available rather than by concentrating its efforts uniquely on the search for original solutions within its own company structure.
On the other hand, the enterprise that decides to license out its own technologies in countries where it would not be able to operate may count upon an additional economic return on its own investments, transferring all the expenses involved to the licensee.
A licensing agreement typically involves royalty payments based upon a percentage of sales. An assignment usually refers to selling the IP rights for one lump sum, but may also include royalties. The difference between the two is that by assigning the IP rights to another party, you are transferring legal title to that IP matter. What this means is that once the rights are assigned you no longer own or have any control of the rights.
Applications of a Intellectual Property or any interest therein, can be assigned and will be recorded, provided the assignment is in writing. An assignment can be filed at any time during the pending application or after grant of the patent or registration as well.
The aspect of the exclusive rights granted by the patent is that the patentee can authorise others to exploit the invention described in the patent.
The firm represents both licensors and licensees IP rights in licensing and franchising activities worldwide.
Recordal of changes
A change in ownership or other details such as a change of name or change of address of the proprietor must be recorded by making a single request to the responsible Office.
These frequently require recordal in many countries which can be expensive and time consuming, involving complex formalities and procedures with many different legal regimes. This is especially true in cases where receivership or the administration of assets is involved.
We have extensive experience in producing budgets, suitable documentation and the supporting evidence to achieve successful recordal at minimum cost.
Search and Monitoring
We have the in-house ability to conduct searches for the Czech and Slovak Republic, European Community and most worldwide regions. We also search, utilizing experienced search firms in all countries.
Through searches, watching services and private investigations, the firm is often able to detect infringers and counterfeiters at an early stage, thus permitting swift action to prevent the pirating of valuable trade mark rights, both in the Czech Republic and abroad.
Should you desire to use a mark, with or without registration, a professional trade mark search is recommended to determine whether your mark is eligible for use and registration. A trade mark search could also alert you to whether your use of the mark would infringe upon another party's trade mark rights. It will help you find out whether your mark is available and whether or not you can claim exclusive rights for it.
Patents as source of information
Using modern online patent databases, a huge amount of information can be obtained selectively and very rapidly. For example, the following searches of patent literature can be performed, and are of great strategic interest to companies.
In all fields of competition, in particular in the areas protected by special rights (patent right, trade mark right, etc.) it is advisable to conduct a search, prior to going on the market, for the existence of prior rights in order to avoid possible collisions.
Monitoring
Our firm monitors maintenance fees and prosecution for patents, trade marks, designs and other IP rights worldwide.
Monitoring your competitors
We also carries out competitor monitoring. This monitoring provides continuous information about the patent activities of others, and can provide indications of, for instance, future competing products or possible patent infringement.
We can:
- conduct industry sector monitoring for clients in patents, designs and trade marks,
- advise on patent citation watches where a client's patents are cited in third party applications,
- maintain watching services to identify applications to register trade marks anywhere in the world, which may conflict with our clients' own trade marks. The Watch Service is also made available to other firms in the trade mark field who do not have this capability.
Annuities, Renewals and Maintenance
When a patent is granted, it remains in force only so long as annuity fees are paid. These become due in respect of the fifth and subsequent years from the application date and increase annually.
The registration of trade marks may be renewed for successive periods of ten years from the date of filing or the date of the renewal registration then expiring. The renewal declaration must be executed and filed no earlier than twelve months prior to expiration and no later than six months after the expiration.
The registration of utility models may be renewed for successive periods of 4 years +2x3 years from the date of filing or the date of the renewal registration then expiring.
The registration of industrial designs may be renewed for successive periods of 5 years +4x5 years from the date of filing or the date of the renewal registration then expiring.
We offer the maintenance of annuities or renewals and we can communicate directly with the owner, inventor or with the attorney of an IP right.
Business and Finance
Technology-based Businesses / Brand-based Businesses / Franchising
Danek's Intellectual Property Business & Finance practice offers a skilled team of attorneys with a wide range of experience in both domestic and international commercial finance transactions. They are skilled at analysing, structuring and negotiating financing transactions, including secured issues, licensing, distribution arrangements and multinational ventures.
We can:
- offer Intellectual Property Rights audits,
- assist in reviewing internal practices, strategic counselling and portfolio management,
- advise on the most appropriate way to organise and manage your Intellectual Property affairs,
- offer assistance in the maintenance of Intellectual Property matters,
- process IP methodology and strategy,
We are also committed to helping our clients maximize the value of their intellectual property through customized portfolio management techniques. We provide targeted strategies for the extraction of often-hidden value from a business, closely monitor registration renewal dates and provide the framework for ensuring our clients receive the maximum benefit from some of their most valued assets.
We analyse the potential for generating royalty income by enforcing or licensing our clients' existing rights. Our firm is recognized as a leader in IP litigation of all types, including trial and appellate proceedings, as well as mediation, alternative dispute resolution, and specialized procedures in the Industrial Property Office. We have helped companies organize and transfer various IP assets to patent holding companies that serve as a separate business and profit centre. And we have designed, directed, and carried out licensing programs that have generated large revenue streams.
Technology-based Businesses
Industrial competition for companies who are suppliers to other companies makes it increasingly valuable to have IP protection, especially patents, on their technology. This protection can mean retaining existing business as well as acquiring new customers.
Legal protection for technology is a significant factor which influences potential investors. We have considerable experience in building up cost-effective patent portfolios to help start-up companies obtain funding.
Brand-based Businesses
Having your brand protected by registered trade marks provides the mechanism for protecting your position as well as enhancing the company's asset value. In recent years, businesses have increasingly recognized the fundamental importance of their brands to their present and future success.
As the value of trade marks has grown, so has their misuse by competitors eager to benefit from the established reputation of a well known brand. Registered trade marks and, to a lesser extent, unregistered trade marks, are a powerful weapon against unfair practices.
Franchising
The company's goal is to assist our clients in implementing franchise and distribution systems that afford them the greatest amount of flexibility and control permissible by law. These services begin with assisting clients in the process of deciding how to market or franchise their products or services, and then continue with the preparation, negotiation and execution of contracts and documents that implement the company's objectives while complying with applicable laws.
Services for Non-profit Institutions
Unless effectively managed, non-profit research and the intellectual property it generates does not benefit the public and cannot be effectively commercialized. At our firm, we are skilled in assisting non-profit institutions with their technology transfer efforts as well as devising the institutional policies that form the foundation for those efforts.
Our experience allows us to deal effectively with many of the issues non-profit institutions commonly face, such as: inventor ship disputes; the need for clear and timely recommendations to tech transfer professionals with large dockets; managing deadlines to avoid extension of time fees.
We value our relationships with non-profit institutions and strive to provide sophisticated technology transfer counseling in an efficient, cost-effective manner.
Filing and Prosecution Requirements
Please, always contact us for advice relevant to your specific situation.
EUROPEAN:
PATENT
Priority and/or Non-Priority Application
COMMUNITY TRADE MARK
Priority and/or Non-Priority Application
NATIONAL IN THE CZECH REPUBLIC:
PATENT APPLICATION
Non-priority claiming application
PATENT APPLICATION
Priority claiming patent application
CZECH REPUBLIC PCT NATIONAL PHASE
National Phase
UTILITY MODEL APPLICATION
DESIGN APPLICATION
TRADE MARK REGISTRATION IN THE CZECH REPUBLIC
ASSIGNMENTS, LICENSES OR CHANGES
EUROPEAN PATENT
Priority and/or Non-Priority Application
(Priority applications must be filed within 12 months of the earliest priority date)
- Applicant(s) name and address; inventor(s) name, address and nationality
- Description and abstract of the invention including at least one claim, in one of the official languages of the EPO, namely English (our preferred language - we strongly recommend its use), French or German
- Drawings; if any (we can prepare these for you)
- If claimed, date and country of filing of priority application
- Where necessary, indication in the specification that a deposit of biological material has been made, under the provisions of the Budapest Treaty
- Power of Attorney signed by the applicant (no certification or legalization required)
The following additional information/documents may be provided after filing.
- List of Contracting State(s) to designate - at least one of: Austria (AT), Belgium (BE), Republic of Bulgaria (BG), Czech Republic (CZ), Cyprus (CY), Germany (DE), Denmark (DK), Republic of Estonia (EE), Spain (ES), Finland (FI), France (FR), Hellenic Republic (GR), Hungary (HU), Ireland (IE), Italy (IT), Luxembourg (LU), Monaco (MC), Netherlands (NL), Portugal (PT), Slovakia (SK), Slovenia (SI) Sweden (SE), Turkey (TR), Romania (RO), Switzerland (CH), Liechtenstein (LI), United Kingdom (GB).
- List of Extension States to designate - any one or more of the following: Albania (AL), Lithuania (LT), Latvia (LV), former Yugoslav Republic of Macedonia (MK).
- Details of applicant's right to apply for the patent
Certified copy of the priority application
- For inventions relating to biological material
- Name of the International Depository Authority
- Date the biological material was deposited
- Accession number for the deposit
- Copy of the receipt issued by the International Depository Authority
Note that the number of EPC member countries is higher than the number of European Union member countries.
EUROPEAN COMMUNITY TRADE MARK
(Priority applications must be filed within 6 months of the earliest priority date)
- Applicant's name and address
- Specimen of device (logo) or stylized mark or details of work mark
- List of Goods or Services to be protected and their International Classification adopted the last edition of NICE Classification
- Power of Attorney signed by the applicant (no certification or legalization required)
The following additional information/documents may be provided after filing.
- If seniority is to be claimed, the date, number and country of the earlier registration and evidence of prior National Registration
- If priority claimed: date, number and country of filing of priority application
- A certified copy of any priority application
PATENT APPLICATION
Non-priority claiming application
- Applicant's name and address
- Inventor(s) name, address and nationality
- Description and specification of the invention in English, German or French
- Formal drawings; if any (we can prepare these for you)
- For inventions relating to biological material requiring a deposit to be made with an International Depository Authority, indication in the specification that a deposit has been made under the provisions of the Budapest Treaty.
- Power of Attorney signed by the applicant (no legalization required)
The following additional information/documents may be provided after filing.
- Details of applicant's right to apply for the patent
- Investor's Declaration and Assignment of the rights (no legalization required)
- For inventions relating to biological material
- Name of the International Depository Authority
- Date the biological material was deposited
- Accession number for the deposit
- Copy of the receipt issued by the International Depository Authority
PATENT APPLICATION
Priority claiming patent application ---must be filed within 12 months of the earliest priority date
- Applicant's name and address
- Inventor(s) name, address and nationality
- Description and specification of the invention in English, German or French
- Formal drawings; if any (we can prepare these for you)
- Date and country of filing of priority application
- For inventions relating to biological material requiring a deposit to be made with an International Depository Authority, indication in the specification that a deposit has been made under the provisions of the Budapest Treaty.
- Power of Attorney signed by the applicant (no legalization required)
The following additional information/documents may be provided after filing.
- A certified copy of the priority application only if required by the Patent Office
- Investor's Declaration and Assignment of the rights (no legalization required)
- Assignment of priority right only if the applicant is not identical with the applicant of the priority application, signed by the applicant of the priority application - to be filed upon an invitation from and within a deadline set during the proceedings by the Patent Office
- For inventions relating to biological material
- Name of the International Depository Authority
- Date the biological material was deposited
- Accession number for the deposit
- Copy of the receipt issued by the International Depository Authority
CZECH REPUBLIC PCT NATIONAL PHASE
National Phase ---must be filed within the 31 month Chapter I or II deadline
- Copy of an International Patent Application or publication number
- Details of any transfer, assignment or change of name, as recorded
- Details of any amendments
- Indication whether the Czech Republic is a designated state
- Power of Attorney signed by the applicant (no legalization required)
We recommend that you also provide us with copies of the following, if available
- Written Opinion and any responses thereto
- Copy of PCT Pamphlet
- The IPER and any Annex thereto
- The International Search Report including copies of citations, if available
UTILITY MODEL APPLICATION
(Priority claiming application must be filed within 12 months of the earliest priority date)
- Name and address of the applicant(s) and of the author(s)
- Specification, claims and abstract in English, German or French
- Drawings, incl. drawing pertaining to the abstract, informal drawings are sufficient
- Power of Attorney signed by the applicant (no certification or legalization required)
The following additional information/documents may be provided after filing.
- Author's Declaration and Assignment of the rights (no legalization required)
If convention priority is claimed
- Priority Document
- Copy of the national and/or international Utility Model/Patent Application, as filed
- Assignment of Priority Right, if an applicant is not identical with the first applicant (no legalization required)
DESIGN APPLICATION
(Priority claiming application must be filed within 6 months of the earliest priority date)
- Name and address of the applicant(s) and of the creator(s)
- Drawings or photographs showing the whole article for which protection is required or each part of industrial design, which registration is demanded in the application, from which the principle of the design can be unambiguously recognized and which can be reproduced (in 6 copies)
- Name of the design
- Designation of product in which the design is incorporated or to which it is applied, inclusive its classification according to classes of the international classification of designs
- If not apparent from the drawings, brief description of the article to which the design is applied
- If priority claimed, date and country of filing of priority application
- Power of Attorney signed by the applicant (no certification or legalization required)
The following additional information/documents may be provided after filing.
- Formal drawings (we can prepare these for you)
- Author's Declaration and Assignment of the rights (no legalization required)
If convention priority is claimed
- Priority Document
- Copy of the national and/or regional Design Application, as filed
- Assignment of Priority Right, if an applicant is not identical with the first applicant (no legalization required)
The application may contain request for the registration of several design (multiple design application). It may concern only designs included in one class of the international classification of designs.
- List of variants, (there is no limit of variants), if multiple design is concerned
CZECH REPUBLIC TRADE MARK
(Priority applications must be filed within 6 months of the earliest priority date)
- Applicant's name and address
- Clear Specimen of device (logo) or stylized mark or details of word mark (any size print for design or word mark of a special typographical character)
- If priority claimed, date, number and country of filing of priority application
- List of Goods or Services to be protected and, preferably, their International Classification adopted the last edition of NICE Classification
- In the case of collective trademarks, the regulations concerning the use of the mark and the controls lay down
- Power of Attorney signed by the applicant (no certification or legalization required)
The following additional information/documents may be provided after filing.
- Nationality and State of incorporation of applicant
- A certified copy of any priority application
ASSIGNMENTS, LICENSES OR CHANGES
- Suitable evidence, e.g. Assignment Document, License Agreement, Official Deed indicating the change to be recorded, etc. For Assignment also an Affidavit stating that the signatory is the legal representative of the Assignor
- Power of Attorney signed by the applicant (no certification or legalization required)
Fees and Costs
The ethical code of the Czech Chamber of Patent Attorneys do not allow us to publicly display our list of charges. Our tariff can be sent to you either in printed or in electronic form upon request.
There are three elements to our fees:
Fixed fees
Where possible, and upon request, we will agree fixed fees with clients. These provide absolute certainly in estimating the costs of relatively straightforward matters (official government fees and/or the fees of a foreign associate).
Time-based fees
These are used when the time spent crucially depends on the particular nature of your case, for example in responding to an examiner's objections or advising on infringement issues. These fees may vary depending on the difficulty of the work involved and the seniority and experience of the fee-earner.
Disbursements
These usually represent official government fees or the fees of a foreign associate.
Official fees are subject of change, we attempt to update continuously but we cannot guarantee exact data. The US$ values are calculated on the exchange rate basis of US$ 1,x - 1,xx : 1 EURO and will change continuously according to the Market Exchange Rate
Estimating the costs
We maintain scrupulous records through our cost-estimating facilities which are constantly updated with information.
We can give you a clear and accurate estimate of the costs we are likely to incur on your behalf. We also strive to agree your budget with you and to provide ample notice of those dates when a decision which will incur costs must be taken.
We are always willing to give you an estimate in writing. We will willingly discuss likely fees with you on an informal basis, with no obligation.
Invoicing
In general, we will invoice you once the work has been done, subject to agreed credit limits. But in some cases - for example, involving sizeable disbursements - we may ask for money on account.
For urgent work at short notice, please consider an additional Fee of 30% to 50%.
Discounts of Attorney's fees are granted to large clients and for a plurality of identical services rendered at the same time.
We aim to provide good service.
More detailed information will be supplied upon request.
Terms
It is our practice to tell you of time limits, and of actions or instructions that are required, but we do not undertake to give reminders.
We rely on you to give us timely, complete and accurate information and instructions in response to our requests. Government Offices often impose strict time limits and we can accept no liability if you do not provide instructions early enough for us to act within the time limit.
- Please remember that the obtaining of patents, trade marks, copyrights and design rights can take a long time and once obtained they last many years.
- Please confirm all oral instructions in writing, and mail or facsimile confirmation of any instructions given by electronic means.
- Please notify us promptly of any change of responsible personnel or address, or of any change in ownership of rights. Many such changes have to be officially registered.
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