Our area of expertise is not limited to industrial property, but extends to all intellectual property matters. We can indeed advise clients on:
- Patents by drafting, filing and prosecuting applications directly before the European Patent Office (EPO) and national Offices in France, Germany, Austria, Belgium, Ireland, United Kingdom and Luxembourg, as well as around the world via PCT applications and through our extensive network of foreign associates
- Trademarks and Designs, by preparing, filing and managing the registration proceedings before the European Union Intellectual Property Office (EUIPO) the Benelux Office of Intellectual Property (BOIP) and national Offices in France, Germany, Austria, United Kingdom and Ireland, as well as around the world through International Trademark Registrations and our extensive network of foreign associates
- Domain Names by registering names around the world
We also deal with:
- Assessment of potentially protectable intellectual property which could be protected
- Patent and trademark searches to determine patentability/registrability and freedom to use
- IP Consulting on the exploitation and enforcement of intellectual property rights
- Agreements relating to patents, trademarks, designs, copyrights and domain names
- IP Litigations including oppositions, cancellation actions and other legal proceedings
- Enforcement services including seizure of counterfeiting products, legal actions, etc.
- IP Audits including intellectual property rights valuation and portfolio management advises
- IP Training courses for management as well as for administrative staff
- Formalities management namely validations, translations, recordals of transfers and change of name or address
- Renewals of IP Rights
Project analysis and strategy
Each project and each situation is unique.
As Office Freylinger is dedicated to accompanying its clients, we always analyse a new project under several aspects. As a single product or service is often protectable through several IP rights, it is important to carefully analyse the new product or service, to select the appropriate right(s), and to combine the same to obtain the appropriate level of protection, while considering the costs to be incurred, the cash amounts to be invested, the best timing for each protection, the market situation and many other factors.
Globally speaking, our experts will check if there is a possibility to protect a technical invention (through patent rights), a name (through trademark rights), a logo (through design or trademark rights), or copyrights. Other alternative rights might be considered, for example database sui generis rights on computer databases, unfair competition, etc.
Technical invention protection
Identify the specific technical features and effects of your invention.
- Discussion with inventors
Upon receipt of a report of invention, the Patent Attorney or Patent Engineer in charge of the file will contact the inventors to discuss their invention and make sure he or she correctly understood the various specific aspects of the invention.
- Determine whether the invention is worth patenting
Our Patent Attorneys will help you to answer the following questions in order to define the best procedural option and timeline to protect your invention:
Does it make financial sense, i.e. would the benefits of the patented product sales cover the costs of patenting? Is the market big enough? Is there competition, and if so, where?
Our Patent Attorneys can also help you determine whether the patent protection is the best way to protect your invention or if other IP rights would be better suited, such as e.g. design protection or copyright protection.
- Prior art search
Once it has been decided that patenting is the best way to protect your invention, the Patent Attorney in charge commonly performs a prior art search to check whether your product or idea has already been invented and patented by somebody else by consulting patents databases. Based on the findings of the prior art search, the novel and inventive features of the invention can be more precisely identified with respect to the known prior art so a decision can be reached regarding the targeted scope of protection to be applied for by drafting the claims, and whether or not the decision to apply for a patent should be maintained.
Draft a patent application
Once the possible scope of protection has been defined, the Patent Attorney will draft a patent application. The patent application will be discussed with the inventors prior to its filing, to ensure that the application to be filed corresponds to the gist of the invention and does not contain any information the inventors do not wish to disclose.
Identify territories of interest for patent protection
Various territories for which patent protection may be desired must be identified. A patent confers a monopoly on the invention, i.e. allows the owner of the patent to forbid any third party to use (produce, sell, import) the invention without the consent of the owner in the country where a patent is in force. However, this right can only be enforced in countries where a patent application has been filed and a patent is actually granted and maintained.
The choice regarding where a patent protection is desired is therefore of outmost relevance, and the filing strategy must be set up at an early stage. It may no longer be possible to obtain patent protection for a particular territory if that territory was not considered earlier.
The choice of territories generally includes the countries in which the applicant has market presence, countries in which commercialisation of the invention is likely to bring most profit or countries in which competitors have market presence.
File the patent application
A typical route for obtaining patent protection for a number of territories is via a first filing, followed by an international application according to the Patent Cooperation Treaty (PCT), leading to individual national or regional phases of the PCT.
One of the advantages of the present strategy is that costs can be minimised by optimising the number of parallel patent application pending at the beginning of the process. Also, the choices of which countries to proceed in can be postponed and the choice can be made based on the search reports established in the meantime. The option of which countries to finally obtain patent protection in is available for most countries up to about 30 months after the first filing. This generally gives sufficient time to test the invention, to evaluate the market for the invention, but also to possibly include countries that may not have been considered ab initio.
- First filing
After drafting a patent application, it is recommended to file a single application, often referred to as “first filing“, for only one territory. Starting with a single application allows to secure a priority date and obtain a prior art search and an opinion from an Examiner, while keeping the costs down. Based on a renewed analysis of the patentability of the claimed invention in view of the prior art search and opinion from the Examiner, it is then possible to refine the filing’s strategy regarding in which countries to proceed with obtaining patent protection.
- Extension during the priority year
Before expiration of the priority year (i.e. 12 months from the first filing) it is recommended to file an international patent application under the PCT and national patent applications for any identified country that is not member of the PCT. The filing of an international patent application under the PCT allows proceeding only a single patent application covering the PCT member States – a complete list of member States can be found here. The PCT is a cost-effective way to obtain temporary worldwide coverage, allowing the Applicant to postpone the decision in which countries to proceed with obtaining patent protection.
Before expiration of the deadline for entering the national/regional phases of the PCT (i.e. 30 months from the first filing, although some offices allow for an extended deadline), a choice must be made about which countries should finally be maintained for obtaining patent protection in.
- Names, logos and other commercial signs protection
Our team will first determine whether a trademark may be registered according to the official requirements specific to each country:
- Distinctiveness: how to add distinctive element to your sign
- Decency: you sign must respect the good morals
- Availability: is there identical or similar sign in your domain of activities
In order to check whether your sign isn’t already used as a trademark in your countries of interest, we carry out searches to reveal potential prior rights, whether they are identical, phonetically identical or similar.
Based on this information, we are able to advise on the possible infringement and on the risk of opposition from third parties.
We will also determine a strategy for the territorial protection according to your needs, the potential development of your business activities, the risk of opposition in one country or another…
Our mutual aim will be to avoid useless expense while covering your needs as widely and safely as possible.
- Protection of designs, logos, computer programs, etc.
Our team will first determine whether a design may be registered according to the official requirements specific to each country and local examination.
We will help you to determine whether your design is new and if it possesses individual character. Based on this information, we are able to advise on the possible refusal in one country or another.
We will also assist you in selecting the graphical representation of your design, and will suggest adaptations or modifications to obtain the broadest and most effective protection.
Monitoring of deadlines
The monitoring of deadlines is a crucial aspect of the work of patent and trademark attorneys since this work generates numerous deadlines. Some deadlines may be extended on a simple request, some may be extended upon payment of a fee and some may not be extended at all. The consequences of not meeting a deadline may also vary. In some cases, the fact that a deadline was not met may have as a consequence that the IP right is irrevocably lost.
Most of our due dates and internal reminders are associated with workflows, i.e. they allow to automatically start a specific workflow, which guides the attorney or paralegal through the specific actions to be performed. Thus, the term management module enables us to ensure timely treatment of tasks, timely payment of fees and an efficient scheduling of reports.
Upon request, we can provide a reporting system comprising:
- detailed action reports
- detailed reports on services and costs
- weekly or monthly aggregate reports
- quarterly overview reports;
- quarterly forecasts;
- detailed quarterly billing reports;
- yearly overview reports
- yearly financial analyses.
Quality of our drafting
Since we have been involved in numerous opposition/appeal proceedings and infringement cases, we know how important it is to draft and amend patent applications and trademark specifications carefully. Drafting trademarks and patents is therefore directly related to the strategy the client wants to follow regarding one specific project.
Our philosophy is that patents and trademarks are commercial tools, which must be able to furnish a return on investment. This return on investment can be achieved by ensuring a monopoly on the protected invention, by giving licences to competitors, by ensuring the spread out of a technology coming from fundamental or applied research, and/or by enforcing IP rights against infringers. All these actions are only possible if the patent is carefully drafted, or if the trademark is efficiently protected.
Each patent application is discussed between two patent attorneys prior to establishing the first draft so as to ensure that no important aspect of the invention is overlooked. This also ensures that at least two patent attorneys are informed about each patent application. The patent attorneys regularly meet to discuss new cases and to ensure the follow-up of the applications in the process of being drafted.
Each new trademark application or each new project involving trademarks, designs and/or domain names is carefully reviewed by two experienced trademark attorneys, to ensure that all the options and all the opportunities are presented to the client.
Same remarks apply to the preparation of opposition or litigation cases in patent or trademark matters and for the drafting of license, transfer or co-proprietorship agreements.
Being a mid-size Firm, having mostly direct clients requiring our services, the quality of our services is our most important asset. Quality generates trust from our clients and trust is the most essential requirement in our profession.
The fact that we work very closely with our local clients on all levels concerning intellectual property rights, and the fact that we have a very flat hierarchical structure enables Office Freylinger to monitor the services rendered by our patent and trademark attorneys as well as by our other employees very closely and efficiently.
Our procedures and operating modes are carefully documented and updated, in order to allow each member of the team to rely on an efficient and practical oriented documentation and knowledge base.
We have also put in place a quality control system based on reporting of incidents, including a list of immediate and future corrective measures. Measures can include additional procedures, additional controls or modification of our way to propose and/or conduct our operations. This system allows us to continuously improve the quality of our services and to avoid repeating past errors.
Keeping up to date with the case law and the changes of law
The attorneys of our firm are members of a number of professional organisations and regularly participate in conferences and lectures on Intellectual Property.
Our patent attorneys are e.g. members of The Institute of Professional Representatives before the European Patent Office, also known as the European Patent Institute.
Our trademark lawyers are also members of various professional associations, including BMM (Benelux trademark attorney association), APRAM (French trademark attorney association), GRUR (German trademark attorney association), ITMA (UK trademark attorney association), INTA (International trademark attorney association), MARQUES and ECTA (European trademark attorney associations). We are receiving almost every day information about the national practices and the new case law issued in various countries.
Most of the patent and trademark attorneys are members of the Luxembourg section of AIPPI (Association Internationale pour la Protection de la Propriété Intellectuelle) and numerous other associations in the IP field.
The attorneys regularly participate in courses on various aspects on Intellectual Property throughout the world.
Our firm actively encourages all our employees to participate in continuous education courses, and our firm subscribes to a number of specialised reviews in the IP field.
Each member of the Firm has a very strict confidentiality clause in his or her employment contract. The fact, that the confidentiality of our work and of the information given to us by our clients is a crucial factor, is regularly reminded to the employees.
All our wastepaper is collected and destroyed at regular intervals by a specialised company, which issues a certificate attesting that the paper has been destroyed according to strict standards.
The question of optimising expenses has a high priority in our Firm.
In trademark and design matters, we are able to act before the Community Trademark Office, WIPO and the national trademark offices of Benelux, France, Germany, Austria, United Kingdom, Ireland and Spain directly from Luxembourg without the need of a local agent.
In patent matters, we are able to act before the European Patent Office and before the national patent offices of Luxembourg, Belgium, France, Germany, Austria, United Kingdom, Ireland and Switzerland directly from Luxembourg without the need of a local agent. The fact that we can directly act before so many offices is a unique feature of our Firm and allows us work more efficiently and more cost effectively because there are no intermediaries.
The initial drafting of the (European) patent application is preferably performed in English, which may help to optimise expenses by reducing translation costs in the early stages of the application. Furthermore, the drafting of the specification and claims in the English language generally provides enhanced quality of the specification for the patent prosecution in the English-speaking countries (e.g. in the USA) as well as in other countries, as e.g. Japan or China (the translations from English to the respective national language is usually better and less expensive than from other languages like German or French).
When establishing a new trademark protection strategy, we integrate from the very beginning the costs related to the protection, including for choosing between various concurring routes; the quality, timing and risks are however predominating our analysis.