IP Services & Solutions TECHNOLOGY & INNOVATION/media/Noerr... · Innovative corporate IP...
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IP Services & Solutions TECHNOLOGY & INNOVATION ENGLISH
Transcript of IP Services & Solutions TECHNOLOGY & INNOVATION/media/Noerr... · Innovative corporate IP...
IP Services & Solutions
TECHNOLOGY & INNOVATION
ENGLISH
Noerr Patent Group
COMBINED EXCELLENCEIN LAW & TECHNOLOGY
We often experience that technology companies neglect the IP landscape when developing their business strategy. Likewise, the work of the IP department is often detached from the business strategy, so that respective patents have little or no value for the company and its business model.
We can change this by our integrated, business driven IP Services & Solu-tions, no matter whether it comes to patent prosecution, litigation, licensing, or transactions.
We think that IP is much more than just the result of successful research and devel-opment (R&D). We understand that IP management and business strategy may exponentially accelerate economical
success if they are integral and interac-tive parts of the overall business manage-ment:
The IP portfolio should reflect the company’s business strategy, i.e. IP generation, usage and enforcement have to be in tune with the company’s strategy.
Likewise, the company strategy should be inspired by the “IP land-scape”, i.e. third party rights and areas of technology not covered by third party rights (“white spots”).
THIS IS HOW WE THINK IP
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We speak technology
The Noerr Patent Group comprises 14 lawyers and patent attorneys. Our law-yers are highly experienced in handling all litigious and non-litigious patent matters. Our patent attorneys are sea-soned engineers and scientists covering all technological fields, in particular, electrical and mechanical engineering, chemistry, medical, pharmaceutical and biotechnology.
The services of the Noerr Patent Group are seamlessly integrated into the outstanding competence of Noerr in all areas of business law. Our lawyers are usually ranked top tier and considered global leaders in their field.
The Noerr Patent Group, our team of legal and technical experts, provides seamless and integrated IP Services & Solutions around the globe. Together with our more than 480 colleagues working at Noerr worldwide, we handle all legal mat-ters related to technology & innovation in the most professional and diligent way:
Global IP prosecution & strategic portfolio management
Patent litigation & enforcement(national & international)
Licences & distribution systems
Standard-essential patents/FRAND
IP transactions & tax optimisation
IP restructuring
IP valuation
IP insurance
OUR INTEGRATED IP SERVICES & SOLUTIONS
Global IP prosecution & strategic portfolio management
IP insurance
IP restructuring
IP transactions & tax optimisation
Standard-essential patents/FRAND
IP valuation
Licences & distribution systems
Patent litigation & enforcement(national & international)
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The phase between the genesis of an in-novative idea and the grant of respective intellectual property rights is the most important part of the IP lifecycle. Every step the company takes during this phase has a paramount impact on the future value of its IP rights, in particular its strategic value, enforceability and scope of protection. Therefore, the Noerr Patent Group developed a comprehensive and integrated concept of IP services for this phase:
Global IP prosecution services
Strategic IP portfolio development
Technology transfer
R&D joint ventures
Employees’ invention management
Government research funding
The members of the Noerr Patent Group are the trial lawyers of choice for many renowned high-tech companies.
We regularly argue complex infringement cases before German patent courts. We have longstanding experience in handling international and multi-jurisdictional patent litigations, based on our estab-lished and reliable network of offices and “best-friend” law firms.
Likewise, our litigation services cover legal advice and representation in nullification actions and opposition proceedings before the German and the European Patent Offices.
We have one of the most prolific practices in alternative dispute resolution. Our clients benefit from our experience in han-dling litigations before various arbitration tribunals, including ICC and WIPO.
We provide intelligent coordination and active management of patent application prosecution in various jurisdictions. Our service comprises a very cost effective, reliable and transparent system to estab-lish, monitor and manage international patent portfolios around the globe. Our lawyers are ranked as leading German experts in technology transfer and R&D management.
Together with our exclusive cooperation partner Bosch Jehle Patentanwalts GmbH, we are able to offer our clients worldwide first class patent filing & prosecution services. All patent attorneys of Bosch Jehle have gained unparalleled experi-ence as scientists at renowned university laboratories and hold PhD degrees in engineering, physics and chemistry, or have worked in research and development departments of cutting edge technology companies.
We stay at the forefront of technology.
Moreover, our forensic advice covers the following in particular:
Multi-jurisdictional evidence collection measures
Border seizures
Product piracy
Limitation procedures
Our clients’ business strategy is thecornerstone of our litigation approach.Wether our client finds itself as plaintiff ordefendant, we will utilise litigation to cli-ent’s business advantage while keepingits priorities in place.
For more detailed information on our patent litigation practice please consult our brochure “Patent Litigation – Infringe-ment, Nullity, Opposition”.
GLOBAL IP PROSECUTION &STRATEGIC INNOVATION MANAGEMENT
PATENT LITIGATION & ENFORCEMENTNATIONAL & INTERNATIONAL
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We experience that many companies do not make full use of the value of their IP portfolio, as they often neglect licensing opportunities regarding their know-how and IP rights. We can change this by our tailored licensing concepts & man-agement systems, and by our innova-tive, reliable and robust distribution systems.
We provide legal advice in the following areas in particular:
Developing licence programmes and strategies, integrating licence and distribution strategies, cross-licence agreements, and joint ventures for joint technology development
Manufacturers are increasingly required by law to observe industry standards (such as UMTS, MPEG or HDMI). Regularly, the respective industry standard includes the technical teaching of one or several patents (known as standard-essential patents).
Legal enforcement of standard-essential patents is extremely complex: accord-ing to the case law of some European countries – including Germany – the patent owner has to offer licences at “fair, reasonable and non-discriminatory con-ditions” (FRAND). Similar obligations may result from memberships in a standards organisation such as ETSI (the European Telecommunications Standards Institute) or ITU (the International Telecommunica-tion Union).
Creating national and international distribution structures (above all, exclu-sive distribution, selective distribution, authorised dealer and commercial agency agreements)
EU antitrust & competition law, particu-larly distribution antitrust law. Impor-tant issues here include: prohibition of price fixing, restrictions of clienteles and territories, prohibition of competition, and admissible agreement of purchase quantities
Online distribution and e-commerce, dual distribution systems (i.e. where the manufacturer acts both as supplier and retailer)
Litigations concerning standard-essential patents require seamless cooperation between patent lawyers and antitrust law experts. Our antitrust & competition law team is among the leaders in the market. Our patent lawyers have many years of experience in dealing with standard-essential patents. Our practice thus offers integrated solutions at the interface of patent law and antitrust & competition law.
LICENCES & DISTRIBUTION SYSTEMS
STANDARD-ESSENTIAL PATENTS/FRAND
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The commercial success of an IP transac-tion essentially depends on two factors:
Is the technology sufficiently protec-ted by the targeted IP portfolio? Are the IP rights valid and enforceable, and do they cover the technology which is supposed to create the economic value of the transaction?
Does the targeted IP portfolio/compa-ny provide freedom to operate? Does the current or planned business of the target infringe any third party rights? Will existing licensing agreements survive the transaction?
Therefore, transactions in the techno-logy sector require expertise going far beyond conventional transaction know-how. We handle technology transactions with a team consisting of patent lawyers, transaction specialists, auditors and tax experts. Our services & solutions include:
Comprehensive IP due diligence
Innovative corporate IP structures
IP based financing, sell & licence-back solutions for IP portfolios
Successful restructurings and reorganisa-tions of technology enterprises necessi-tate sustainable concepts for IP rights and know-how.
Based on our excellent understanding of technologies and markets we are able to newly structure patent and licences portfolios. Realigning and strategically op-timising existing and future IP portfolios is essential. We develop innovative solutions facilitating sustainable exploitation of our clients’ IP portfolios.
Our restructuring team is among the most successful and renowned practices in Europe. Over the past ten years Noerr has advised on seven of the ten largest insolvency cases, five of which concerned technology enterprises. Within short time frames we organise and support com-petitive bidder processes and develop refinancing solutions by involving interna-tional capital markets.
The tax structuring of transactions and the tax accounting of patents and licences has a direct impact on the commercial success of transactions. The tax-optimised allocation of patents and licences is an important issue for innovative companies. This applies particularly to cross-border tax structures. We advise on:
Tax optimisation of IP transactions and IP accounting
Tax optimisation of licence agreements and intra-corporate licences
Selecting and assessing tax jurisdic-tions for portfolio management
We advise, both nationally and interna-tionally, private undertakings and corpora-tions, business managers and sharehold-ers, banks and finance investors, as well as insolvency administrators, particularly on the following issues:
Distressed IP transactions
Reorganisation and refinancing
IP rights as collaterals
Establishing and managing IP pools
Termination of IP licences
Relicensing of IP right portfolios
IP TRANSACTIONS & TAX OPTIMISATION
IP RESTRUCTURING
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Together with our auditing and tax consult-ing firm, NOERR AG, we value individual property rights and portfolios.
Our valuation service is particularly re-quired in the following cases:
Equity investments, corporate succession planning etc.
Licence granting and technology transfer
Liquidation, insolvency
Damage calculation in case of IP rights infringements
In-kind company formation with IP rights
R&D profitability analysis
High quality IP management causes con-siderable costs, namely for small and me-dium-sized enterprises (SMEs). Especially legal defence costs, settlement payments and business interruption can damage a business’ performance and reputation.
In addition, the companies must also ac-count for IP pursuit costs and the opportu-nity costs of not maximising returns from their IP portfolios.
Intellectual Property Rights (IPR) insurance allows for effective management of these risks by providing cover for:
Litigation costs – to defend an insured against an alleged breach by a third party
Damages settlements – awarded by a court, arbitration or administrative tribunal
Cross-undertaking costs – for court ordered damages arising from a failed legal pursuit
Pursuit costs – associated with the pursuit of a third party for infringement of the insured’s IP rights
Recall expense – litigation costs and third party damages arising from a product recall order
D&O – costs to directors or officers per-sonally joined in litigation for a breach of third party IP rights
Such insurance enables the companies to operate in a flexible manner and to utilise their IP as efficiently as possible.
Working in concert with leading insur-ance brokers (Howden/Hendricks) and IPR insurers, upon clients request Noerr is able to provide advice concerning the coverage IPR insurance and the insurance premium costs.
IP VALUATION
IP INSURANCE
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Excellent advice – worldwide
Our clients rely on our excellent profes-sional and strategic advice from Germany. As a leading European law firm in Central and Eastern Europe, we also have an extensive network of our own offices in that region. Our IP practice in Moscow is regarded as one of the country’s best.
We also have established specialised desks for those jurisdictions that are of particular significance to our clients, i.e. Brazil, China and India:
China Desk in Frankfurt am Main(Dr. Hui Zhao)
Brazil Desk in Frankfurt am Main(Dr. Holger Alfes, LL.M. and Luiza Saito Sampaio, LL.M.)
India Desk in Munich and London(Dr. Gerald Reger and Dr. Michael Mittermeier)
In countries where we do not have our own offices our clients can rely on our Lex Mundi network: Around 160 law offices have joined together in this largest and most renowned network of independ-ent top-notch law firms. A total of 21,000 lawyers in more than 100 countries are available to our clients.
In China the effective protection of tech-nology is primarily a question of know-how. Most problems can be avoided in a sustainable and resource-efficient way by taking appropriate business organisation actions, establishing contractual control mechanisms and conducting tried and tested technical protective measures.
In the area of the enforcement of rights, the particularities in China offer chances as well as risks to technology enterprises. Where the taking of evidence is con-cerned, for example, it must be made clear from the outset that any evidence obtained will be fully notarised. Also, stra-tegically selecting the venue and paying regard to political decision structures are the essential contributors to success in any litigation.
Research & Development in China is an in-creasingly focus for innovative companies. While products are developed specially for the Chinese market, the increasing tech-nological competence of Chinese devel-opers is used specifically as a competitive edge on the world market. Accordingly, the strict rules of technology transfer law must be observed – including in relation to a wholly-owned Chinese subsidiary.
OUR GLOBAL NETWORKFocus on China
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Key contacts Team
Dr. Ralph NackRechtsanwalt
MunichT +49 89 [email protected]
Legal expert for patent infringement litigations, oppositions and nullity actions, in particular for complex German & international litigations, SPC litigations, antitrust/FRAND and border seizures
Education
Legal studies in Heidelberg, Munich, Tokyo (Todai) and Washington DC (GWU)
Lecturer in patent law at the University of Munich (LMU) and the Munich Intel-lectual Property Law Centre (MIPLC)
Secretary of the Patents Committee of AIPPI
Dipl. Ing., Dr. jur.Dr. Matthias Bosch*Patentanwalt, European Patent Attorney
MunichT +49 89 [email protected]
Technical expert for patent infringe-ment litigations, oppositions and nullity actions, in particular in the fields of telecommunication, semiconductors, electrical engineering, automotive and medical devices
Education
Technical studies in Munich (Dipl.-Ing. 1994)
Legal Studies in Munich and Seattle (Dr. jur. 1999)
Lecturer at the University of Washington School of Law and Waseda University, Tokyo
THE NOERRPATENT GROUP
Dipl.-Ing., Dipl.-Kfm.Volker Jehle*Patentanwalt, European Patent Attorney
MunichT +49 89 [email protected]
Georg A. Jahn, M.C.L.Rechtsanwalt, Attorney andCounselor-at-Law (NY)MunichT +49 89 [email protected]
Dipl.-Phys.Stefan Kuch*European Patent Attorney
MunichT +49 89 [email protected]
Katharina Klett, LL.M.Rechtsanwältin
DresdenT +49 351 [email protected]
* Of Counsel, also affiliated with Bosch Jehle Patentanwalts GmbH * Of Counsel, also affiliated with Bosch Jehle Patentanwalts GmbH
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Katharina PehleRechtsanwältin
MunichT +49 89 [email protected]
Dipl.-Chem., Dr. biol. hum.Dr. Christian Störle*Patentanwalt, European Patent Attorney
MunichT +49 89 [email protected]
Dipl.-Ing.Frank Kunz*Patentanwalt, European Patent Attorney
MunichT +49 89 [email protected]
Philipp Roman SchrölerRechtsanwalt
Düsseldorf T +49 211 [email protected]
Dipl.-Ing. (TU)Albrecht Ritter*Patentanwalt, European Patent Attorney
MunichT +49 89 [email protected]
Dr. Natalya Babenkova, LL.M.Attorney-at-law (Russian Federation)
Moscow+7 495 [email protected]
Dipl.-Phys., Dr. rer. nat.Dr. Rudolf Reichold*Patentanwalt, European Patent Attorney
MunichT +49 89 [email protected]
Prof. Dr. Sebastian Wündisch, LL.M.Rechtsanwalt
Dresden+49 351 [email protected]
* Of Counsel, also affiliated with Bosch Jehle Patentanwalts GmbH * Of Counsel, also affiliated with Bosch Jehle Patentanwalts GmbH
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OUR OFFICES
AlicanteNoerr Alicante IP, S.L.Paseo de la Explanada 2, 2 izq.03002 AlicanteSpainT +34 965 980480
BerlinNoerr LLPCharlottenstraße 5710117 BerlinGermanyT +49 30 20942000
BratislavaNoerr s.r.o.AC DiplomatPalisády 29/A81106 BratislavaSlovak RepublicT +421 2 59101010
BudapestNoerr & Partners Law OfficeFő utca 14-181011 BudapestHungaryT +36 1 2240900
BucharestS.P.R.L. Menzer & Bachmann - NoerrStr. General ConstantinBudişteanu nr. 28 C, sector 1010775 BucharestRomaniaT +40 21 3125888
DresdenNoerr LLPPaul-Schwarze-Straße 201097 DresdenGermanyT +49 351 816600
DüsseldorfNoerr LLPSpeditionstraße 140221 DüsseldorfGermanyT +49 211 499860
Frankfurt am MainNoerr LLPBörsenstraße 160313 Frankfurt am MainGermanyT +49 69 9714770
KievNoerr TOVVul. Khreschatyk 7/1101001 KievUkraineT +380 44 4953080
LondonNoerr LLPTower 4225 Old Broad StreetLondon EC2N 1HQUnited KingdomT +44 20 75624330
MoscowNoerr OOO1-ya Brestskaya ul. 29125047 MoscowRussian FederationT +7 495 7995696
MunichNoerr LLPBrienner Straße 2880333 MunichGermanyT +49 89 286280
New YorkNoerr LLPRepresentative Office885 Third Avenue, Suite 2610New York, NY 10022USAT +1 212 4331396
PragueNoerr s.r.o.Na Poříčí 1079/3a110 00 Prague 1Czech RepublicT +420 233 112111
WarsawNoerr Sp. z o.o. Spiering Sp. k.Al. Armii Ludowej 2600-609 WarsawPolandT +48 22 5793060
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