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Auditing IP rights in the context of an acquisition


IP MANAGEMENT

The situation:
An audit of IP rights (trademarks, domain names, patents, designs) was required in the context of the planned acquisition of a US company with various establishments in Europe. The technology being transferred was central to the operation’s strategy. A consistent policy to protect this technology was thus critical to the acquisition.

Our intervention:
We checked a portfolio of approximately 140 titles to the rights held, either directly or through various establishments, and identified the problems and anomalies attached to the intellectual property rights (validity of titles, ownership, possible registered encumbrances on the rights). Our intervention also extended to checking the consistency of the overall policy of registering and managing rights.

The result:
The client is now positioned as a major player in the acquired technology. 

Emergency international protection for an invention


PATENTS

The situation:
A major industrial player had an extremely urgent wish to establish an international protection strategy for inventions utilising biological mechanisms that are very difficult to protect by means of patents.

Our intervention:
We drafted and dispatched abroad a large number of simultaneous patent applications. We were able to intervene rapidly in a large number of countries at the same time, working in co-ordination with our foreign associates. We participated in interviews with the inspectors concerned in Europe, the United States and Japan to accelerate the granting of optimised patents.

The result:
Our intervention allowed the client to establish a portfolio of patents and secure its industrial property in a very competitive field.

 

Introduction of a remuneration policy for employee-inventors


IP MANAGEMENT

The situation:
A company requested our assistance in introducing a policy for declaring inventions and remunerating employee-inventors. The company management wished to encourage research and development work.

Our intervention:
We designed an invention declaration system that took account of the company’s internal organisation and proposed an invention remuneration policy that encouraged such declarations by rewarding commercial value and remunerating inventors in a graduated, straightforward manner. We assisted the technical and human resources departments in this operation because the introduction of the policy impacted both the wording of employment contracts and their amendments.

The result:
Our intervention served as a basis for the drafting of a company-wide agreement.

Synchronised anti-counterfeiting actions in Europe


IP LITIGATION

The situation:
A group was confronted with a multi-faceted dispute affecting France and many other European countries and involving French and European patents, trademarks, and design rights, as well as problems with domain names, unfair competition and misleading advertising.

Our intervention:
Working with the group, we defined their international dispute strategy and formed an ad hoc partnership with UK, French, German, Italian, and Spanish patent and trademark attorneys with the aim of coordinating and rationalising all the legal action the group initiated in Europe. We identified the networks that were manufacturing and distributing the counterfeit goods and took synchronised action against the main producers that were identified.

The result:
The flexibility and effectiveness of this approach resulted in several successful court actions, including court awards of significant sums.

Protection strategy for the creation of a luxury brand


ACQUISITION OF TRADEMARKS AND DESIGN RIGHTS

The situation:

A fashion house that had just launched its own luxury brand asked us to implement a policy that would protect and extend its trademarks, copyright and designs and to ensure the organisation and asset management of its rights between itself and its commercialization structure.

Our intervention:
We worked alongside the client in developing a protection strategy, defining how it should hold its trademark rights and the rights to its creations, establishing the priority and secondary regions for protection and the domains requiring protection. This strategy was implemented not just through filing procedures but also by establishing contracts governing transfers of rights and licences. We also determined the remuneration for the assigned or licensed rights.

The result:
Our intervention allowed the trademark to be deployed accross the world. We also established a structure for the exploitation of the industrial and intellectual property rights attached to this designer’s products.

Collaboration with customs to detect and seize imported of counterfeit products


CUSTOMS INTERVENTION

The situation:
Cabinet Beau de Loménie represents various companies, particularly Japanese corporations, before the French customs authorities. In order to detect and destroy imported counterfeit products, it has proved necessary to introduce day-to-day co-operation with French customs officials.

Our intervention:
We have been actively intervening for many years now in the day-to-day management of customs disputes and we participate in the new schemes introduced by the customs authorities. The management of these cases demands considerable reactivity as regards both the customs and the investigating court authorities, who regularly request the customs authorities to arrange hearings with us. We also co-operate with the customs authorities in identifying and combating internet-based counterfeiting operations.

The result:
To date we have obtained the destruction of several hundred thousand counterfeit items.

Creation of a contract library


IP MANAGEMENT

The situation:
A French subsidiary of an international group wished to establish a comprehensive library of contracts covering confidentiality, co-operation, secrecy and development involving intellectual property issues.

Our intervention:
We applied our contracts know-how to create a library of contracts that would fit the various situations encountered by this client in its relations with development and industrial partners, particularly subcontractors. The question was to identify the nature of the situation that were encountered based on the level of partnership and the know-how concerned, and to enable the client to match the right type of contract to each of its partnerships. For contracts with industrial partners such as subcontractors, the requirement was not only to ensure confidentiality of know-how, but also to maintain the client’s competitive advantage and protect its own clients. In relation to development contracts it was necessary to ensure confidentiality and to introduce an effective mechanism to safeguard the ownership of any industrial property rights arising from the development.

The result:
This library is now used by the company’s administrative division which, thanks to our action, has been able to ensure that its research and development engineers and sales staff establish systematic contractual relationships with their partners.

Customized IP training programmes


IP MANAGEMENT

The situation:
Our client, a foreign group, realised that its teams in France had an inadequate knowledge of industrial property and the relevant management procedures. Industrial property was often seen as an obscure, off-putting area by operational staff (in particular by R&D engineers and marketing personnel). As there was no suitable in-house training available, the group resquested our services.

Our intervention:
We introduced customized training programmes for the group which were adapted to its teams and their activities. In particular, we organised training seminars on industrial property for its legal, research & development and commercial departments.

The result:
We helped the group’s teams to gain a better knowledge of the field of intellectual property, to develop appropriate legal responses, to improve their monitoring of the competition and to better integrate issues relating to the protection of rights into their internal procedures.

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MARSEILLE OFFICE

New address from July 1st 2018:

Cabinet Beau de Loménie
Tour Méditerranée
65 avenue Jules Cantini
13 006 Marseille

Contact details keep unchanged:

Tel.: +33 (0)4 91 76 55 30
Fax.: +33 (0)4 91 77 97 09
email: marseille@bdl-ip.com

Official communiqué

Cabinet Beau de Loménie - 158 rue de l'Université - F75340 PARIS CEDEX 07 | T : +33 (0) 1 44 18 89 00 | F : +33 (0) 1 44 18 04 23