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Patent strategy

The Patent team at Beau de Loménie assists and advises its clients in defining, implementing and optimising their strategies for acquiring, protecting, developing, using and defending their technologies.

The Patent team has more than fifty attorneys and trainee attorneys, a majority of whom are qualified attorneys registered with the French and European patent offices. The team includes attorneys from many different countries (France, Germany, United Kingdom, Spain, United States, Japan and China notably), with experience in the fields that are most representative of the profession: research and development, industry, practice within national or supranational patent offices (including the European Patent Office) and in the conduct of IP litigation within large French or foreign firms. The team has the support of specialised lawyers in intellectual property with experience as legal practitioners within international firms.

Grouped within four major technological divisions, the attorneys provide expertise and advice in all areas of science and industry: physics, chemistry, biology, biotechnology, pharmaceuticals, cosmetics, life sciences, mechanics, materials, electronics, electricity, optics, information and communication technologies, IT, nanotechnologies, artificial intelligence, etc.

Each client of Beau de Loménie has a specialized contact attorney in the appropriate field, the leader and coordinator of a technical, legal and administrative team specifically defined according to the requirements of the client. Particular attention is paid to knowledge of the history of the activities and requirements of clients and the stability of their contacts within the firm. The services offered cover all requirements that are likely to be encountered by the client: studies on freedom to operate, strategies for filing and obtaining patents in all countries, opposition proceedings, protection of know-how, technology and competition monitoring, management and audit of patent portfolios, staff training, drawing up and negotiating contracts for R&D and industrial development, pre-litigation and litigation before jurisdictions specialised in intellectual property.

Attorneys and administrative staff with native-language fluency in various languages, notably Japanese and Chinese, are available to the client if needed to achieve the best possible understanding of the client’s expectations and optimise the quality of discussions.

European patent

Beau de Loménie occupies a leading position in Europe, with more than a thousand applications for European patents filed annually. It represents its clients, individuals and SMEs of all nationalities as well as large international groups, before the European Patent Office when they wish to protect their inventions in countries covered by the European Patent Convention.

The firm has a centralised service specifically dedicated to filing applications for European patents, including persons of various native languages, French, English, German, Japanese and Chinese.

Our attorneys registered at the European Patent Office assist the firm’s clients throughout the procedures for the filing and of applications for patents and proceedings on to grant. They endeavour to seek the most appropriate protection and to propose the procedural timeframes that are most adapted to the strategy of each client.

Beau de Loménie takes care of numerous opposition proceedings, as opponent or patentee; its attorneys are capable of working in the three official languages set down by the European Patent Convention. They can rely on the experience of the  attorneys within our firm who are former Examiners of the European Patent Office.

Beau de Loménie initiates and coordinates litigation involving European patents before the French, German and British national courts. Our firm very closely monitors French and European patent legislation, and notably developments concerning the unitary patent and the Unified Patent Court.

Beau de Loménie is a member of the EPI (Institute of attorneys registered at the European Patent Office).

FOCUS ON OUR EUROPEAN PATENT ATTORNEYS

PCT applications

With a high level of activity in filing international (PCT) patent applications, Beau de Loménie advises its clients in the optimisation of the international protection of their inventions. Beau de Loménie directly handles the Euro-PCT regional phases and the German and British national phases and relies on its network of foreign correspondents for granting procedures in other countries.

When a first national filing has been carried out with the French patent office (“Institut National de la Propriété Industrielle” or “INPI“), the drawing up of the international PCT application, claiming priority from the French application, provides an opportunity, after receiving the search report issued by the INPI, for any appropriate revision of the description of the invention and redefinition of the scope of the claims in view of to the planned countries of filing.

Beau de Loménie also advises its clients on the procedural timeframes to be preferred, proposing to delay or accelerate all or part of the national phases according to the client’s research and development timetables and any industrial or budgetary constraints.

National patents

When the client wishes to give preference to direct national registrations, Beau de Loménie takes advantage of its geographical locations in France, the United Kingdom and Germany to offer the client a single entry point for managing and coordinating procedures for filing, examination and grant before the main national patent offices in Europe. Beau de Loménie’s attorneys thus draft and file more than a thousand applications for national patents every year.

Beau de Loménie also relies on a network of foreign correspondents selected over a long period. It therefore has colleagues in all countries who can assist in obtaining national patents. It is also able to coordinate disputes before the various national jurisdictions, notably via the contacts of its network of French and German lawyers.

FOCUS ON OUR FRENCH PATENT ATTORNEYS

Patent searching

The firm has a centralised team with four technically qualified staff members specialised in patent searching and technology monitoring. Working in all areas of science and industry, these staff members offer valued support both in their direct relationships with clients and with the firm’s attorneys in charge of drafting patent applications (analysis of the state of the art and studies of freedom to operate in particular).

The patent searching team performs its searches for prior art documents in patent databases, in scientific databases and via the main search engines. It can rely on the firm’s network of foreign correspondents to extend its researches to certain foreign databases, such as Japanese and Chinese databases.

Beau de Loménie’s patent searching team provides its results in the form of a document database offering an advanced interface for display and browsing.

Maintenance of patents

Beau de Loménie provides its clients with a group of seven people specifically dedicated to monitoring the payment in due time of annuities for the maintenance of patent applications and granted patents. This group can also take charge, on behalf of clients, of the payment of French and foreign maintenance annuities, thus securely guaranteeing the continuity of the client’s patent portfolio.

In case the holder of a patent forgets to pay the maintenance annuities and the patent concerned subsequently lapses, Beau de Loménie is able to initiate appeals for reinstatement with the support of its lawyers specialised in IP.