Global IP Who’s Who

Legal protection for the expression of creative ideas and the outcomes of scientific research is essential for the development and long-term growth of business and innovation.

Intellectual property encompasses the legal property rights over creations of the mind, both artistic and commercial, and the corresponding fields of law. Under intellectual property law, owners are granted certain exclusive rights to a variety of intangible assets such as musical, literary and artistic works; ideas, discoveries and inventions; as well as words, phrases, symbols and designs. Common types of intellectual property include copyrights, trademarks, patents, industrial design rights and trade secrets. For many companies, intellectual property is an extremely valuable, but not fully appreciated or understood, asset. All businesses have intellectual property, regardless of their size or sector. A company’s IP is likely to be a valuable asset.

Securing and protecting it could be essential to a business’s future success. The first step to protecting and exploiting a business’s intellectual property successfully is carrying out a systematic IP audit. This is not always a straightforward task, as IP doesn’t just reside in patents held or trademarks registered. One must also consider items such as any bespoke software, written material, domain names and customer databases.

The majority of IP rights provide creators of original works with economic incentive to develop and share ideas through a form of temporary monopoly. Although many of the legal principles governing intellectual property have evolved over the centuries, it was not until the late 20th century that the term “intellectual property” began to be used as a unifying concept.

Solicitors within this field work in a broad range of areas, but most commonly ones for which design is central to their business, such as manufacturing and the creative industries. Intellectual property essentially provides a controlled monopoly for designers to exploit. An intellectual property solicitor works on the sale and purchase of IP, its registration and licensing – as well as dealing with third-party IP claims.

Key Contacts:

International Bar Association

Patricia Hoet-Limbourg Co-Chair – Intellectual Property and Entertainment Law Committee phoet@hpcd.com

Alexander Birnstiel Co-Chair – Intellectual Property and Entertainment Law Committee alexander.birnstiel@noerr.com

Key Trends

The Future Is Open: State of Innovation, an analysis of global scientific literature and patent data across 12 technology areas, shows that although overall patent activity has reached an alltime high, year-over-year growth in new inventions has slowed considerably and scientific literature production has declined in almost every industry. Key findings from the report include:

• Year-Over-Year Innovation Growth Slows

Total, worldwide patent volume increased just 3% over the past two years, the slowest rate of patent volume growth since the end of the global recession in 2009. The total volume of new scientific research decreased 34% over the same period. The largest declines in patent and scientific research volume were in the Semiconductor industry.

• Overall Patent Volume Reaches New High

Despite the slowdown in year-over-year growth rate, total, worldwide patent volume has reached a record high, with over 2.1 million unique inventions published over the last two years. The industries showing the largest growth in patent volume were Food, Beverages & Tobacco (21%); Pharmaceuticals (12%); Cosmetics & Well-Being (8%); and Biotechnology (7%).

• Businesses Embrace “Open Innovation”

Across virtually every industry studied, the trend toward “open innovation,” whereby companies partner with academic institutions, individual researchers and other companies (in some cases, even competitors) has been on visible display. Samsung, for example, has moved to aggressively partner with academic institutions in the development of semiconductor technologies, filing 129.1 of every 10,000 patent filings in this space jointly with an academic institution.

• Traditional Industry Lines Blur

Driven largely by the rise of the Internet of Things, the traditional boundaries between industries and companies’ areas of specialisation have continued to blur. Dozens of companies featured in the study, such as Apple, DuPont, General Electric, IBM, and Samsung, appear among the top patent assignees in multiple industries outside of their core areas of focus. Samsung is the most extreme example, ranking among the top 25 patent assignees in nine of the 12 industries analysed in the study.

“We are standing at a fascinating inflection point in the history of technological innovation,” said Basil Moftah, president, Thomson Reuters IP & Science. “The organisations in this study clearly recognise the challenges inherent in continuing to break new ground at the pace they’ve maintained for the last several years. They’re taking clear strides, with strategies such as open innovation and aggressive expansion into new industries, to try to achieve even faster, better results.”

China

Eagle IP Limited

Jacqueline Lui is a US Registered Patent Agent. She started her intellectual property (IP) practice in Singapore and has drafted and prosecuted patent cases worldwide for Fortune 500 firms, multinational firms and publicly listed companies in SG, HK and abroad.

Besides her own biotechnology specialisation, Dr Lui also has considerable IP experience in the areas of pharmacology, materials science, internet, manufacturing, medical devices, and mechanical and chemical engineering.

Dr Lui returned to HK in 2000 and was former head of patent registration at Wilkinson & Grist and executive director of Ella Cheong (HK). She joined Eagle IP Limited as managing director in 2005. She specialises in international patent prosecution and has been involved in advising clients on IP-related matters including strategic planning, rights procurement, portfolio management, technology transfer, due diligence and enforcement. She heads a large team of patent professionals and provides them with training on both Chinese and US patent law. In 2015, Dr Lui was recognised as The World’s Leading Patent Firms & Individuals by Intellectual Asset Management (IAM).

According to Dr Lui, the Chinese government is very proactive in raising the standard of IP law to international levels. She highlighted the setting up of IP courts in Beijing, Shanghai and Guangzhou.

“We understand that the best IP judges are all transferred to these special courts, so we believe that the quality of their ruling will be good and acceptable,” she commented. “However, many Western companies still do not understand the unique way the civil law is practised in China and have unrealistic expectations about the discovery and the trial process. In addition, language and cultural barriers continue to be a significant hindrance to understanding local practice. It is therefore very important to engage a practitioner who has both western and local knowledge.”

Dr Lui stated that companies in Hong Kong and China are becoming more and more aware of the importance of having their IP protected. She added that “they are also beginning to appreciate the value of quality patent drafting, like what we have been offering”.

In China, requirements for patent protection of software, life science and pharma-related inventions are very different/strict compared to the requirements in the US and Europe. Dr Lui added that the interpretation of patent claims by the courts and with the re-examination board of the Chinese patent office is also different compared to the West.

“As such, it is critical that the patent attorney working on a case for a foreign (non-Chinese) company be able to understand the needs of the foreign company and at the same time be able to come up with strategies that would work for the company in China. We access this bridge with our knowledge of both East and West, both culturally and legally,” she concluded.

Eagle IP Limited

Dr Jacqueline Lui Managing Director Tel: +852 8101 4006 info@eipgroup.asia www.eipgroup.asia

Germany

PATENTSHIP Patentanwaltsgesellschaft mbH

Robert Klinski is the managing partner of PATENTSHIP, a patent firm specialised in prosecuting and litigating national and international intellectual property rights in the fields of electrical engineering and information technology, physics, mechanics and chemistry.

The firm is located in Munich – close to the German Patent and Trademark Office, the European Patent Office as well as the German Federal Patent Court. Another branch of the firm is located in Aschaffenburg, from where clients from the entire Rhein-Main-Area are serviced directly and on-site.

PATENTSHIP’s team supports leading technology companies, universities and

PATENTSHIP Patentanwaltsgesellschaft mbH

Dr Robert Klinski Managing Partner Tel: +49-(0)89-75969869-0 mail@patentship.eu www.patentship.eu start-ups in Germany and worldwide. The firm has a profound patent prosecution experience in Germany, the EU, the US, China and Japan. Its team members have comprehensive scientific and industrial background, enabling the efficient prosecution and litigation of most demanding technologies.

PATENTSHIP further has a strong patent litigation experience resulting from national and international patent litigations, including US proceedings, which have been successfully handled by the firm for years.

PATENTSHIP’s further services include IP monetisation, IP valuation, technology transfer and startup incubation services.

“We strive to offer our clients the best possible service at affordable prices,” said Dr Klinski. “We believe that this can be accomplished only through a close cooperation with our clients. Understanding our clients’ technology and needs is the key for us to provide goalorientated services in all fields of IP.

“While the focus of our work is the prosecution of patents and other protective rights including utility models, trademarks and designs in Europe and throughout the world, a close cooperation with attorneys at law specialised in IP allows us also to offer qualified services in nullity and infringement proceedings. Moreover, a wide network of associate patent firms throughout the world enables us to implement multinational IP strategies for our clients.”

PATENTSHIP provides worldwide full cover service for intellectual property matters such as German, European, Asian and US patents, German and foreign utility models, applications under the Patent Cooperation Treaty (PCT), national, international and community trademarks, national and international design models and topographic designs, trademark and patent searches, expert analysis, litigation, licence matters, the law of employees’ inventions, portfolio and intellectual property right strategies.

Dr Klinski studied electrical engineering and telecommunications at the Technical University Hamburg-Harburg and received his doctorate with honours from the Munich Technical University in the field of mobile communication technologies. He also worked as researcher with the Fraunhofer Institute in Munich where he designed wired and wireless communication systems.

Dr Klinski has extensive experience in patent prosecution and litigation, particularly in the area of telecommunication systems and communication networks.

Dr Klinski has been successfully representing a globally operating network operator in a number of initiated infringement lawsuits initiated by NPEs and corresponding nullity proceedings in the field of DSL technologies. He further successfully defended a telecommunications enterprise in a German part of international infringement proceedings in the field of wireless communication networks.

Greece

VAYANOS KOSTOPOULOS

VAYANOS KOSTOPOULOS, founded in 1900 by the pioneer IP Law attorney Dr Alkiviadis Zoiopoulos is one of the leading law firms in Greece. Through dedication, commitment and flexibility, the diverse needs of businesses and associates are catered for by client-tailored solutions and state-of-the-art legal advice in a timely and precise manner. Its broad client base encompasses both multinational as well as local enterprises, consisting of not only businesses, but also individual inventors, creators, designers, authors and other IP holders.

VAYANOS KOSTOPOULOS

Dr Nikolaos Lyberis Managing Director Tel: +30-210-3808501 n.lyberis@vklaw.gr www.vklaw.gr

Since 1993 the firm is under the direction of Dr Nikolaos Lyberis who, being a litigator, is admitted before the Supreme Courts for civil and administrative matters. Nikolaos represents prestigious clients in trademark, patent and other IP rights conflicts from all sectors of industry and commerce and is also a member of numerous international associations focusing on IP law, such as ECTA, AIPPI, INTA, FICPI, GRUR and others.

The original establishment location of the law firm has been retained in the vicinity of the centre of Athens at Stournara Str. 37, opposite the Athens Polytechnic University and the National Archaeological Museum.

A wide range of IP related services are rendered, including prosecution and litigation of all kinds of rights on intangible assets such as trademarks, patents and Supplementary Protection Certificates (SPCs), domain names, copyright, IP rights maintenance and representation before State and Regulatory Authorities. Further areas of IP practice are successful representation in Customs Interventions, IPR infringement proceedings before all court instances, including interlocutory injunctions. The drafting of contracts, market supervision law (health, consumer, advertising and privacy), legal consultancy and supporting services (administration, translations and IPR maintenance) constitute the core of the VAYANOS KOSTOPOULOS team’s activities. A diverse workforce comprising European Patent Attorneys, Lawyers, Trademark Attorneys and Litigators, Technical Advisors, Paralegals and IP Rights Administrators, enables the firm to offer a top-class, comprehensive service to its broad client base. Some of the market leaders in the industry and service provision sectors are included among the clientele, such as pharmaceutical companies, automobile manufacturers, chemical industries, electronics, tobacco, food beverages, cosmetics, entertainment and financial enterprises, et al.

The efficient operation of the offices is supported through the use of up-to-date customised software and hardware facilities, enabling fluid execution of necessary functions, including the maintenance of reliable electronic records, an indispensable tool in serving the needs of not only large, but also small and mediumsized enterprises.

India

Lall Lahiri & Salhotra

Lall Lahiri & Salhotra (“LLS”) is today one of the most reputed and well regarded law firms in India with exceptional team experience, domain expertise and a business centric approach. LLS is also known for its proactive measures, fresh thinking as well as providing services of the highest calibre to all its clients. Consisting of more than 55 attorneys (including six partners) and a support staff of 85, including attorneys, patent agents, scientific and engineering experts, life sciences experts, transactional attorneys and company secretaries in two locations, LLS is fast expanding to become the foremost legal advisory practices in the country.

Lall Lahiri & Salhotra

Rahul Chaudhry Managing Partner Tel: +91 11 435 000 00 rahul@lls.in www.lls.in

The firm handles all IP related work, including management, protection of large scale IP portfolios, creation and protection of IP, enforcement, transactions including licensing, assignments, takeovers and acquisitions, monetisation, strategy and planning for long-term IP optimisation etc. LLS also acts as a point of contact for various multinational entities for IP management and protection across South East Asia and the Middle East; hub-andspoke arrangements for clients based on their requirements.

The IP department at LLS has more than 30 years’ experience in both contentious and non-contentious matters. Our firm and the attorneys have been committed to providing high-quality services to our clients and have had the privilege of assisting some of the most well-known names in fields as diverse as oil & gas, pharmaceuticals, FMCG, consumer goods, IT, fashion, telecom, electronics, entertainment, media & publishing, retail and automotive, among others.

The firm is headed by Mr Rahul Chaudhry, the managing partner of LLS. Mr Chaudhry has been at the helm of the firm’s entire practice since June 2007, turning it from a small familyrun law practice into one of the finest, professionally managed, businessorientated full-service law firms in India. He has directed and managed the changes in LLS’s operations, structure and business approach, resulting in a considerable increase in the strength of the whole team and the expertise of LLS. His vision of ensuring that the best legal talents be pooled at LLS has resulted in immense depth of knowledge available for clients to rely upon.

Mr Chaudhry adopts a solutions-based approach to all matters entrusted to him by his clients. Not satisfied by merely elucidating the law, he encourages his clients to develop long-term strategies based on business goals and long-term cost-benefit analysis.

His personal involvement in all aspects of the firm’s operations and ability to anticipate client needs has made him, and LLS, the first choice for both national and international clients who seek his expertise on legal matters and business operations. Clients from diverse industrial backgrounds seek his legal and business acumen, making him among the leading advisers in the country. As a result, LLS has developed an enviable legal practice with decades of experience and a team consisting of the most eminent legal practitioners with specialist intellectual property, corporate, commercial and transactional expertise.

Japan

Uchida & Samejima Law Firm

Uchida & Samejima Law Firm (USLF) is one of the leading law firms in the field of IP/IT law. Most of the firm’s 20 attorneys have legal and IP experience in larger Japanese corporations such as Toshiba, Hitachi, Sony and Mitsubishi; as well as having qualified both in Benrishi (Patent Agent) and Bengoshi (Attorney at Law), with backgrounds in various technologies such as life science, chemicals, mechanics, electronics and software.

Masahiro Samejima, founder and senior partner, practised IP at IBM Japan, followed by 15 years’ practice of IP litigation and licensing in various law firms, before establishing USLF in 2004.

Uchida & Samejima Law Firm Masahiro Samejima Founder, Senior Partner Tel: +813-5561-8550 info@uslf.jp www.uslf.jp/english

“This unique portfolio of attorney is most significant point to distinguish our law firm,” said Mr Samejima. “Generally, attorneys in Japan do not have any business background or technological knowledge. With this advantage, we can complete our legal work in a relatively short time which is cost-effective to the clients, with a taste of business strategy.”

He also highlighted the relatively small size of law firms in Japan compared to other countries – with 20 attorneys, USLF is now one of the largest IP boutique law firms in Japan.

According to Mr Samejima, many Japanese companies have recently become aware that IP is one of the major factors required to be competitive in the market. He noted that this trend came late compared to the US and Europe, as before 2000 Japanese companies were competitive in product cost and quality.

“Now, the situation has changed as Asian companies have become players in the market to provide more costly products,” he explained. “This change of situation led Japanese companies to be aware of another factor to compete, which was IP.”

Discussing complexities associated with Japanese patent litigation, Mr Samejima noted that both literal infringement and validity are dealt with in one district court jurisdiction, and that the latter can also be challenged in JPO.

“This means a ‘double track’: one process in the district court (patent infringement litigation), another process in the JPO, if appealed; two processes in IP High Court; which is, in total, four procedures at most. However, it is an effective procedure because the scope of the claim is deeply dependent onto the validity of the patent. If you construe the claim wording as broad as you assert, the claim may include scope which is not valid. This is a typical way to assert in Japanese patent court, which is possible because the judges are engaged in considering the scope of the claim and validity of the patent simultaneously.”

He also pointed out that Japanese patent litigation is relatively inexpensive compared to that in the US.

“Despite that the double-track seems to be complex, there is no heavy, timeconsuming procedure such as discovery in Japanese lawsuit. This effectively saves client attorney fees, besides the fact that Japanese attorney’s time charge rate is not so expensive. The relatively short procedure is also an advantage to enforce patents in Japan.”

The Philippines

Sapalo Velez Bundang & Bulilan (SVBB)

Sapalo Velez Bundang & Bulilan (SVBB) has been involved with intellectual property practice for 39 years. As managing partner, Atty. Ignacio S. Sapalo was a former director of the Bureau of Patents, Trademarks & Technology Transfer (BPTTT) and a consultant of the Department of Trade & Industry (DTI) of the government of the Philippines from 1987 to 1996.

The head of the IP department of the firm is Atty. Neptali L. Bulilan, a mechanical engineer, who has been a patent examiner at the BPTTT for 11 years. Among its lawyers is a chemist who obtained a masteral degree from Ateneo de Manila, Atty. Anne Mariae

Sapalo Velez Bundang & Bulilan (SVBB) Ignacio S. Sapalo Managing Partner Tel: (+632) 8911316 info@sapalovelez.com www.sapalovelez.com Celeste V. Jumadla; and a graduate of bio-chemistry at the University of Santo Tomas, Atty. Leonides M. Madrilejo. Its paralegals include Maryneck Daulong, a computer engineer; Dyan Hazel Lumapas, a chemical engineer; and Josel Bonifacio, a bio-chemist.

SVBB’s awards include Patent Law Firm of the year from IP Asia; Top 10 filers for trademark and patent categories for 2015 from IPOPHL; and an IP Star for Atty. Ignacio S. Sapalo in 2014 by Managing IP.

SVBB handles patent and trademark prosecution, inter partes cases, enforcement and litigation. SVBB is active in enforcement action and litigation for patent infringement of pharmaceutical drugs and has been successful in obtaining Writ of Search and Seizure which is patterned after the Anton Piller order.

According to Mr Sapalo, the IP Code in the Philippines enumerates copyright and related rights; trademarks and service marks; geographical indications; industrial designs; patents; layout designs of integrated circuits; and undisclosed information, but effectively limits its scope to copyright (and related rights), trademarks, and patent laws (including utility models and industrial designs) only.

“A unique provision of our trademark law that makes the Philippines standout among the countries in the world is the fact that it requires the filing of a Declaration of Actual Use (DAU) within three years from the date of filing of the trademark application,” he added.

He also noted that the Philippines acceded to the Madrid Protocol on April 25, 2012, stating that amended rules on UM and ID have removed the substantive examination requirement for UM and ID applications.

Discussing complexities associated with enforcing IP rights, Mr Sapalo stated that stricter monitoring and control of entry and registration of infringing pharmaceutical products is imperative.

“Generic drugs are allowed entry by the Bureau of Customs (BOC) and registered by the Food and Drug Administration (FDA) purportedly under the Cheaper Medicines Law notwithstanding that they are covered by valid patents issued to innovators. Under existing regulations, the FDA does not concern itself with IPR but leave the issue to IPOPHL jurisdiction. This results to substantial losses in sales of innovator drugs.

“Furthermore, the FDA and IPOPHL should amend the rules to prevent registration of a drug still covered by a patent, or, as a compromise to avoid delaying the entry of generic drugs in the market, wait until the life of the patent is about to expire before allowing generic companies to start clinical tests needed to obtain FDA approval,” he concluded.

Nigeria

Olaniwun Ajayi LP

Olaniwun Ajayi LP

Toyosi Alabi Partner Tel: +234-1-2702551 Ext 2706 talabi@olaniwunajayi.net www.olaniwunajayi.net

A trademark, when registered, shall be registered as of the date of the application for registration and that date shall be taken for the purposes of the Act (emphasis mine) to be the date of registration (Section 22(2) of the Trademarks Act Nigeria (TMA)).

Non-Use of a Trademark: When Does Time Begin to Run?

The “retrospective” effect of this provision undoubtedly enhances investor confidence, as any commercial obligation which is hinged on date of registration, will not be hampered by lengthy registration procedures. It is perhaps in the same spirit that the food and drugs agency in Nigeria (NAFDAC1 ) has taken a liberal approach to its regulation on procedure by accepting evidence of potential proprietorship as evidence of proprietary ownership or approval 2 .

There is a contrary effect of Section 22(2) TMA however, which may frustrate or deter proprietors in making a business decision on when to register their marks. By Section 31 TMA, a trademark is liable to revocation if it is not used within a certain timeframe and on a combined reading of Section 31 and Section 22(2) TMA, a proprietor of a mark may be caught, if commencement of use of his mark is commercially tied to issuance of his certificate.

Section 31(2)(b) TMA provides that a registered trade mark may be taken off the register if up to the date one month before the date of the application (for revocation) a continuous period of five years or longer elapsed “during which the trademark was a registered trademark” and during which there was no bona fide use of the mark.

Interpreting this section in the light of Section 22(2) of the TMA could thus mean that the mark of a lawful proprietor whose registration process for the purposes of argument, takes five years, may be liable to be revoked on the date his certificate issues.

It is very doubtful that the draftsman could have intended that the operative date for computation of the period of non-use would be the date of application as envisaged in Section 22(2), TMA. Literally interpreted, the explicit reference to the period, “during

which the trademark was a registered

trademark” in Section 31(2)(b) TMA must mean that the relevant date for the purpose of non-use, must be the date upon which the certificate of trademark registration issues and the mark is placed on the trademark register, since, a mark is not registered unless it is entered on the register.

Curiously, the Nigerian Courts seem to have interpreted Section 31(2)(b) TMA to align with the application of Section 22(2) TMA. The Court of Appeal in Procter & Gamble Co. v. Global Soap & Detergent Case3 did not agree that time begins to run, in relation to the non-use provisions in Section 31 TMA, when a mark is entered on the register.

In contrast, The UK Trademarks Act 1994 Act explicitly spells out the draftsman’s expectation in relation to the computation of length of time for “non-use”. Section 46(1)(a) of the UK Act provides that the registration of a trademark may be revoked on the ground: “that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom …”

The position under the UK Trademarks Act is no doubt appealing and in line with the philosophy of not punishing the proprietor for the sins of the registry. The Nigerian TMA would benefit from an amendment of its Section 31, to more closely accord with Section 46(1) of the UK Trademarks Act. Alternatively, it will be apposite for our apex court to adopt a literal interpretation of Section 31 TMA, which does not unduly divest proprietors of their rights.

In the meantime, until there is a beneficial interpretation or amendment of Section 31 TMA, proprietors must themselves exercise diligence in engaging in bona-fide use of their trademark once their trademark application is filed.

Olaniwun Ajayi LP

Olaniwun Ajayi LP is a fully integrated firm, with over 50 years’ experience in helping our clients achieve their objectives. Our dedicated Intellectual Property Practice is skilled in servicing local and foreign businesses in the registration and protection of their IP and other proprietary rights in Nigeria and other parts of Africa. We handle portfolio management and enforcement of IP rights in Nigeria, Ghana, OAPI and other countries in Africa. Our in-depth knowledge of commercial law and arrangements, coupled with our familiarity with regulators, stand us in good stead to meet our clients’ needs.

Toyosi Alabi

Our team lead, Toyosi Alabi, has more than 17 years’ work experience as an IP lawyer, having prosecuted and defended law suits involving trademark, design and patent infringement, revocation of trademarks and oppositions. She was part of the team which assisted in improving and reshaping operations at the trademarks registry in Abuja. Her experience also spans revocation of infringing company names at the Corporate Affairs Commission and revocation of conflicting NAFDAC registrations4 .

1. National Agency for Food and Drug Administration and control 2. The NAFDAC circular on registration of products requires a certificate of brand registration / evidence of trademark approval as a prerequisite to registration. In practice, provision of a Notice of Acceptance of trademark from the

Trademarks Registry, satisfies this requirement. 3. (2013) 2 NWLR Part 1336 page 409 4. Curiously, the Court of Appeal in the Procter & Gamble case lent credence to the above philosophy where it relied on a Supreme Court’s ratio in Okotie-Eboh v. Manager (2004) (2004) 18 NWLR Pt. 905 pg. 242 at page 282, para.

A and held that: “Statutes which encroach on the rights of the subject, whether as regards person or property, are construed as penal laws fortissimo contra preferentes; that is, strictly in favour of the subject.”

Portugal

Raul César Ferreira (Herd.) S.A.

Raul César Ferreira (Herd.) S.A. is a well-established company in the industrial property field, founded in 1929 and one of the leading companies in Portugal. We are an IP-dedicated firm with proved expertise in all fields of industrial property. RCF works in Portugal, in the African Portuguese speaking countries of Angola, Mozambique, Cape Verde and Sao Tome and Principe, in Timor and also in the SAR of Macao, PRC.

Raul César Ferreira (Herd.) S.A.

João Jorge COO; Patent and Trademark Attorney Tel: +351 21 3907373 joao.jorge@rcf.pt www.rcf.pt

There is no typical client for RCF as our portfolio of clients include some of the most important Portuguese companies, as well as several of the most significant European, American and Asian companies, in various business fields, but also national and foreign SMEs that have chosen us directly or through the reference from our colleagues abroad. Independently of the type of clients all get the attention, dedication, commitment and quality that have always been present in the relationship with our clients and business partners.

The Patent and Designs Department has the required expertise in several technical areas (chemistry, biochemistry, molecular biology, mechanical engineering, etc) and in drafting, prosecuting, and in actively cooperating with the enforcement and litigation of IP rights.

The Trademark Department has expertise in clearance searches and search opinions, prosecution, enforcement and oppositions in national, community and international trademarks, and also providing counselling and supporting trademark litigation.

RCF also has a vast expertise in matters such as utility models, copyrights, and also in IP due diligence, namely validity analysis, infringement analysis, technical expertise in litigation, infringement probative searches, state-ofthe-art and advanced technical searches, skilled surveillance, maintenance and technical translations.

Having made a great investment in highly skilled persons, our collaborators are mainly patent and trademark attorneys but also collaborators specifically qualified in the field of mechanics, chemistry, computer science, biology, molecular biology, pharmacy, biochemistry and others, with proved experience in infringement analysis and validity assessment of IP rights, conducting state of the art searches and promoting a very active expert cooperation in IP disputes.

Remarkably, RCF has developed a very effective anti-counterfeiting strategy that IP owners have adhered to and that has been revealed to be quite effective in achieving the required results.

The RCF team is keen to promote and participate in the discussion of important IP matters, reason why several of our collaborators are strongly involved in the work carried out by national and international organisations, such as ACPI, INTA, ECTA, AIPPI, FICPI, MARQUES, PTMG, ITMA, UNION, VPP, GRUR, CIPA, ABPI, ASIPI and EPI.

Washington, US

Kelly IP

David Kelly is a partner at Kelly IP, a firm specialising in intellectual property law based in Washington DC, US.

Mr Kelly has represented clients in trademark, copyright, and unfair competition issues for nearly 30 years, with a focus on litigation, disputes and strategic counselling. He is consistently recognised as one of the country’s top trademark lawyers. In 2014, The Legal 500 US named Mr Kelly as a Leading Lawyer, Legal 500’s top category, in both trademark litigation and non-contentious trademark matters. This highest honour was bestowed upon only eight lawyers across the country in each category. These 2014 honours mark the seventh consecutive year that he was named a Leading Lawyer in both categories.

From 2009-2013, Mr Kelly was the only US trademark lawyer to be named a Leading Lawyer in both categories. According to Legal 500, clients describe Mr Kelly as “an outstanding trademark litigator” and “an exceptionally bright and thoughtful advocate”. Clients also look to Mr Kelly for strategic advice based on his reputation for being “full of business savvy” and “a source of much practical advice…that understands our business in a way that most lawyers don’t”.

Kelly IP

David Kelly Partner Tel: +1 (202) 808-3571 david.kelly@kelly-ip.com www.kelly-ip.com

David Kelly is a partner at Kelly IP, a firm specialising in intellectual property law based in Washington DC, US.

David Kelly is a partner at Kelly IP, a firm specialising in intellectual property law based in Washington DC, US.

Mr Kelly has represented clients in trademark, copyright, and unfair competition issues for nearly 30 years, with a focus on litigation, disputes and strategic counselling. He is consistently recognised as one of the country’s top trademark lawyers. In 2014, The Legal 500 US named Mr Kelly as a Leading Lawyer, Legal 500’s top category, in both trademark litigation and non-contentious trademark matters. This highest honour was bestowed upon only eight lawyers across the country in each category. These 2014 honours mark the seventh consecutive year that he was named a Leading Lawyer in both categories.

From 2009-2013, Mr Kelly was the only US trademark lawyer to be named a Leading Lawyer in both categories. According to Legal 500, clients describe Mr Kelly as “an outstanding trademark litigator” and “an exceptionally bright and thoughtful advocate”. Clients also look to Mr Kelly for strategic advice based on his reputation for being “full of business savvy” and “a source of much practical advice…that understands our business in a way that most lawyers don’t”.

In the World Trademark Review 1000, clients report they depend on Mr Kelly because his “substantial proficiency and estimable business acumen single him out in the field” and he is an “absolutely fantastic trademark attorney.”

He has been similarly recognised by Managing Intellectual Property, World Trademark Review, IP Stars, Legal Media Group, Super Lawyers, among others.

Before joining Kelly IP, Mr Kelly practised trademark and copyright law for 26 years at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP in Washington, DC. He served as chair of Finnegan’s Trademark and Copyright Practice Group for most of his 20-plus years as a partner.

Mr Kelly commented: “The legal market is changing. And Kelly IP is leading the way. The owners of the world’s top brands deserve lawyers who are as passionate and innovative as they are about nurturing and protecting their brands and creative works. They deserve lawyers with years of big-firm IP experience who believe in delivering value to their clients. They deserve lawyers who know their business, not just the law. They deserve lawyers who define the cutting edge, but never lose their human touch. It’s a brand new world. Welcome to Kelly IP.”