OUR SERVICES RELATED TO INTELLECTUAL PROPERTY (IP)

OFFICE FREYLINGER S.A. was founded in the year 1966.
We are:

Intellectual property counsels (“conseils en propriété industrielle”)
European Patent Attorneys
European Trademark and Design Attorneys

We help you to secure IP rights throughout the world

We offer a comprehensive range of intellectual property services covering patents, trademarks, designs and copyrights. This includes obtaining worldwide protection, portfolio management, strategic advice, commercial advice, licensing, enforcement, due diligence and litigation.

In addition, we are able to act directly (i.e. without involving a local correspondent) before the National Offices in the surrounding countries, gaining in flexibility and speed of action, and offering competitive costs to our clients.

We also act directly before various national offices in Europe

IP Offices Patents Trademarks Designs Formalities -
Patent validations
Formalities -
Recordals before registers
European Patent Office yes       yes
Community Trademark Office   yes yes   yes
Benelux Office   yes yes   yes
Austria yes yes yes yes yes
Belgium (*) yes yes yes yes yes
France yes yes yes yes yes
Germany yes yes yes yes yes
Ireland yes yes yes yes yes
Luxembourg (*) yes yes yes yes yes
Switzerland yes     yes yes
United Kingdom yes yes yes yes yes
(*) Trademark and Design protection in Luxembourg and Belgium are obtained via the Benelux trademark and Benelux design granted by the Benelux Office for Intellectual Property (BOIP).

ALL SERVICES

PATENTS

As main route to protecting technological innovations, the patent protects many of the products we use and consume every day. The patent guarantees a strategic competitive advantage and constitutes part of a company’s intangible assets.

INTEGRATING INTELLECTUAL PROPERTY IN THE STRATEGY OF YOUR COMPANY

Innovation is essential to the viability and success of the modern economy.
Globalisation has expanded the economic space in which businesses operate. While new markets are opened, competition increases and companies face a complex, restricting and constantly changing environment. The risks of imitation and counterfeiting are increasing.
The patent is the legal tool to strengthen and enhance the value of a company’s innovative effort.
In economic terms, companies with expertise and selling branded and patented products or processes find themselves in a better competitive position to maintain existing or acquire new market share.

THE EFFECTS OF A PATENT

The patent is an industrial property right that provides its proprietor with an exclusive right to exploit the protected invention for a maximum period of 20 years on a given territory.
This exclusive right may prevent others (competitors) to manufacture, sell, use or import a patented product or system, or to use a patented process.
The patent proprietor may pursue counterfeiters before the competent courts. The patent also reveals itself as an effective deterrent, and its existence is often enough to avoid litigation.

WHAT CAN BE PROTECTED?

The patent provides protection for technological innovations on products and processes.
To be patentable, an invention must, in Europe, belong to a technical field and meet three criteria laid down by law. The invention must be:

  • new,
  • involve an inventive step, and
  • be susceptible of industrial application.

Also, the invention must not belong to a field excluded from patentability.

WHAT ARE THE REQUIREMENTS FOR FILING A PATENT APPLICATION?

The filing of a patent application requires the preparation of a legal and technical document, which includes a description of the invention, drawings, claims and an abstract.
The description explains the invention while emphasising the differences with respect to prior art solutions and showing how these differences solve shortcomings in the state of the art.
The claims are the heart of the patent; they define the scope of protection sought.

PROTECTION STRATEGIES

The patent produces its effect in the State in or for which it is granted. Through international conventions, the applicant may extend its rights to other States within a period of 12 months following the initial filing.
In Europe, the European patent allows obtaining protection in about 40 countries through a centralised filing and examination process controlled by the European Patent Office.
The typical approach is to file a first national application and then extend protection by filing an international application under the PCT (Patent Cooperation Treaty). The international application provides an option on about 140 countries for 30 months from the first filing. This gives the applicant time to evaluate the patentability and commercial potential of the invention. At the end of the 30-month period, the applicant chooses in which countries he actually wants to obtain a patent (Europe, USA, China, Japan, etc...).

OFFICE FREYLINGER PROPOSES TO:

  • draft patent applications for your inventions, in all technical fields (in English, German or French);
  • evaluate the patentability of your inventions;
  • file your patent applications on national, regional or international level, and assist you in the granting procedure;
  • carry out prior art searches and monitoring;
  • file oppositions against third party patents;
  • provide advice on counterfeiting,
  • draft your contracts linked to the commercialisation of your patents (licenses, assignments)

 

Please contact us for additional information or documentation.

REGISTERED TRADEMARKS PROTECTION

You probably use a trademark daily without knowing it. You are investing to promote your company and its products and/or services. This investment has to be protected through a registered trademark.

WHAT IS A TRADEMARK?

  • The name of a product or service
  • The company's brand: its name, its logo.

The trademark is a fundamental element in a company’s strategy. By enhancing and protecting the value of its trademark, the company can maintain existing or acquire new market share. The trademark is a vital instrument for communicating with the public. A trademark does not just identify the origin of goods; it also establishes a relationship with the consumer, based on trust and reputation.

 A TRADEMARK IS THEREFORE:

  • a signature enabling your clients to recognise your product or your service;
  • a sign distinguishing your company from its competitors;
  • your company's image;
  • a way to create customer loyalty;
  • an asset that must be protected.
 Your trademark is a precious asset that
needs protection and valorisation!

WHY APPLY FOR A TRADEMARK?

A trademark is legally protected only after application and registration before the competent authorities. Even if a name has been used for many years, this use does not create a trademark right unless the name is registered. Third parties may therefore use such a name, and even apply for a trademark for it, which may then be used against the prior user.

NO APPLICATION = NO PROTECTION

The use of a name, in almost all the countries of the European Union, does not confer any rights without a trademark registration to support it.
To be registered, a trademark has to be distinctive, i.e. it must not be:
generic, deceptive or descriptive, i.e. lacking of distinctive power; this criteria has to be assessed in relation to each trademark;
identical or similar to the rights of a third party; preliminary searches may assess the risk in adopting a new name.

OPPOSITION PROCEDURE

Oppositions are administrative, quick and cost effective proceedings to enforce trademark rights and protect a trademark. Such proceedings are open to third parties in order to protect their prior trademark rights, after publication of a new trademark application.

WITH THIS TRADEMARK YOU WILL BE ABLE TO:

  • prevent third parties from commercially using your trademark, or trademarks creating a likelihood of confusion for identical or similar products or services, and initiate legal actions;
  • assign your trademark or confer licences and obtain royalties;
  • capitalise your commercial and advertising expenses.

TRADEMARK WATCH

A trademark watch will enable you to be kept informed of the publication of younger trademarks, which are identical or confusingly similar, to protect your trademark and your investments in the trademark registration, but also the firm’s image as conveyed by the trademark.

OBLIGATION OF USE

An actual and serious use of the trademark is required to maintain it. If the trademark is not used, it may be subject to a cancellation action for non-use.

OFFICE FREYLINGER PROPOSES TO:

  • determine whether a trademark may be registered;
  • carry out searches to reveal potential prior rights;
  • handle applications up to registration;
  • advise on possible infringement, drafting and engaging infringement, opposition and cancellation proceedings in the trademark offices and before the specialised trademark courts;
  • help you in all other aspects in relation to your trademark and other intellectual property rights.

 

Please contact us for additional information or documentation.

REGISTERED DESIGNS RIGHTS

The appearance of a product is often its best sales argument and buyers are often drawn to eye-pleasing products. All products that have a new appearance and produce an impression, different from known ones, may be protected.

WHY PROTECT THE DESIGN OF A PRODUCT?

If the appearance of a product is its selling point, the appearance is valuable, in that it has the ability to promote sales or encourage customers to buy the product again. The appearance thus creates a financial value. Furthermore, if others can use identical or similar images or shapes, they may draw customers away from the original products.

ADVANTAGES OF INDUSTRIAL DESIGNS

One of the advantages is to materialize the rights to the appearance of a product and to therefore protect its value. By obtaining a right opposable to third parties, it will be possible to apply for injunctions to stop the infringement of design rights and to obtain a seizure of goods or other sanctions such as damages.

DESIGN RIGHTS

There are two types of design rights: the unregistered design right and the registered design right. An unregistered design right protects a creation as from its first publication or first disclosure on the market. Such a right is however limited to three years and confers a protection against deliberate copy only. It will therefore be necessary to prove the rights on the design and to prove that the infringing party did have knowledge of the original design.

REGISTERED DESIGN RIGHTS

The advantage of the registered design is to provide a protection not only against deliberate copies, but also against confusingly similar designs. Registering the design will provide a stronger and more efficient way to acquire a monopoly right on the design and to prevent any third party from manufacturing and/or commercialising copies of the registered design or confusingly similar products.

TERM OF PROTECTION FOR REGISTERED RIGHTS

The maximum duration of protection is 25 years; the first protection period lasting 5 years and being renewable for successive 5-year periods.

SERIES OF REGISTERED DESIGNS

It is possible to cover a series of designs in a single “multiple” application. These designs need not be related, but must belong to the same family of products. This “multiple” application is very useful for protecting product lines, a series of 3-D models, toys, cartoon characters, etc.

CRITERIA FOR PROTECTION

The designs that can be protected have to be visible to the end user. This covers the lines, contours, colours, shape, texture and/or materials of a product or its ornamentation. For example, a new form of packaging or a new texture applied to a product can be protected. The designs protect only the appearance and cannot be used to protect, for example, hidden parts of a vehicle, such as couplings, or designs, which are solely dictated by the product’s technical function.

NOVELTY

A design has to be new. If it has already been disclosed, it will nevertheless be possible to obtain a registered design, provided that the application for registration is filed within 12 months after the first disclosure. However attractive it may seem to defer filing until the commercial success of the design is proven, it is highly recommendable to register the design as soon as possible. This will avoid any uncertainty on the rights resulting from third parties’ creations during this 12-month “grace period”.

OWNER OF THE DESIGN RIGHT

It is presumed that the applicant is the owner of a design right. If the creator of the design is an employee, the rights on the design are automatically transferred to the employer. If the design results from a contract with an external party, an assignment of the rights must be secured by written agreement.

OFFICE FREYLINGER PROPOSES TO:

  • determine whether a design can be registered
  • carry out searches to establish existing prior rights
  • handle applications up to registration
  • advise on possible infringement, draft and engage infringement and cancellation proceedings before the offices and the specialised design courts
  • help you in all other aspects relating to your design and other intellectual property rights.

 

Please contact us for additional information or documentation.

DOMAIN NAME SERVICES

IP addresses, i.e. an identifier for a device or website in Internet, are not particularly user-friendly. It is easier to use a name, like for example “freylinger”. A domain name identifies one or more IP addresses. For instance, the domain name freylinger.com represents two IP addresses. Domain names are used in URLs to identify particular Web pages. The domain name therefore is a representation of the trademark on Internet. It provides high visibility for the trademark, especially if a website is active under the domain.

Every domain name has a suffix that indicates which top level domain (TLD) it belongs to. There is only a limited number of such domains. For example:

  • .com - commercial business
  • .eu - european companies or citizens
  • .lu - Luxembourg
  • .de - Germany
  • .fr - France

A domain name can contain 3 to 63 alphanumeric characters (letters, numbers or dashes), and can therefore take the verbal elements of the brand. The domain name is not related to an activity or to specific products. In addition, the rule of registration is simple, namely: “first come, first served”.

There are many cases in which the domain names corresponding to a trademark have been registered by a third party in bad faith. To avoid such inconvenience, it is recommended to protect the trademark on the Internet by registering the corresponding domain name.

Domain names are sometimes reserved by third parties, in good faith or bad faith. In this case, we check the rights of the holder of the domain name, and verify that said domain name constitutes no infringement of trademark rights. If required and/or useful, we than intervene against bad faith registrations.

 

Please click here to conduct a free online search and to register your domain name.

INTELLECTUAL PROPERTY COURSES

Office Freylinger offers Seminars and Training Courses in the field of Intellectual Property.

The Seminar called “Intellectual Property - A Company’s Most Valuable Asset” is a modular, comprehensive yet in depth seminar, which provides participants with valuable information with respect to INTELLECTUAL PROPERTY issues.

The objective of the seminar is to promote awareness of intellectual property, as one of the most important assets of a company, in the global market environment.

The seminar provides an informative and interesting overview (and exchange of views) for professionals and non-professionals on a company’s Intellectual Property (IP) management strategy. Participants acquire a better understanding on how to protect their company’s Intellectual Property by means of:

  • Trade secrets
  • Patents
  • Trademarks
  • Registered designs
  • Domain names
  • Copyrights
  • Software programs

and on how to take profit from such Intellectual Property Rights as commercial and marketing tools.

The course provides an in-depth discussion of issues such as: offensive and defensive IP-protection, enforcement of IP-rights, penetrating and consolidating markets with IP-rights, exploiting and trading IP-rights, IP-rights as an advertising tool, monitoring your competitor’s IP-rights.

Our seminars can also be directed to the implementation of IP – Audits; the valuation of IP-rights and thenegotiation of IP-licence agreements. Participants in the seminar will gain a better understanding on how to incorporate a company’s intangible intellectual property into its business strategy.

 

IP Valuation

Reasons for IP valuation

Companies are becoming increasingly dependent on their intellectual property rights (IP). As a result,strategic decisions are increasingly dependent on understanding the economics affecting the value of these properties. The value of an asset is normally determined by the market, for example by comparing the asset to other assets having been transfered between two unrelated entities dealing at arm’s length. Unfortunately, intangible assets and IP seldom benefit from open market conditions. In consideration of the growing investments required to develop and market products and services, there is a clear need for assessing the economic value of such IP.

Time for IP valuation

Important corporate events, such as Mergers & Acquisitions, financing and to a lesser degree dissolutions, may lead to evaluate the financial value of IP. IP can also be valued at other stages of the product’s or service’s life. Valuation, depending on the extent of its scope, can represent an unique opportunity to make a broad assessment of all factors, inputs and other data related to IP for one product, service or company.

Benefits of value assessment

Office Freylinger’s valuation of IP can generate significant awareness by helping companies to:

  • select market opportunities;
  • more effectively protect and leverage the IP rights necessary to today and future growth;
  • develop a strategy for IP development and protection;
  • identify revenue opportunities;
  • better use the IP rights (for example through licensing, joint ventures, divestiture, transfer to suppliers, set-up of subsidiaries, spin-offs);
  • justify a return on investment for technology and patents;
  • reflect overall company value more accurately on financial statements.

Office Freylinger’s expertise

Based on more than 40 years experience in the IP field and in IP valuation and support to our clients, we can provide you with simplified or in-depth assessment of IP value, regarding one specific IP right or every rights of one company or group of companies.

 

Please contact us for more information.

IP CONFLICTS

For over 40 years, Office Freylinger has been one of the leading players in the field of IP conflicts.

We are amongst others active in:

  • pre-litigation advising and counselling
  • patent oppositions, cancellations and other patent-related proceedings
  • trademark oppositions, cancellations and other trademark-related litigation
  • registered designs cancellations and other design-related actions

Our patent and trademark attorneys are also used to comparing and using various laws, including laws from Luxembourg, Belgium, Benelux, France, Germany, Austria, United Kingdom, Ireland and Spain, as well as Chinese or US law for example. Office Freylinger can therefore propose actions in a large number of countries, depending on its client’s interests and/or of the adverse party, and of the respective positions of the two parties in various countries. This broad spectrum of knowledge and activities performed by multi-disciplinary teams allows Office Freylinger to provide its clients with high-quality and business-oriented opinions and pre-litigation support.

Upon defining the strategy to be applied in a specific case, together with the client, Office Freylinger will ensure that the required actions will be conducted according to its high standards of quality and efficiency.

 

Please contact us for more information.

IP FORMALITIES

The procedure for obtaining and maintaining intellectual property rights comprises a number of formalities to be carried out.

Over the years, we have developed a large Formalities department to deal with the different formalities. The department is staffed by highly motivated paralegals that are committed to quickly, efficiently and, most importantly, accurately deal with any administrative matters.

The Formalities department deals with:

  • The monitoring of applications for patents, utility models, trademarks and designs by accompanying the application from the day it is filed to the day it is granted or registered. This also involves any intermediate steps such the administrative side of dealing with any official notifications that may be issued by the patent and trademark office
  • The validating of a granted European patent in the various European counties chosen by the client. After grant of the patent, certain procedural steps need to be performed to ensure that the European patent is in force in the respective country.
  • The translation of patents or patent applications into either English, French or German either for obtaining the grant of a European patent or for validating the European patent in various European countries.
  • The translation of patent applications into languages other than English, French or German by relying on a network of valued and trusted local agents in the various countries all over the world.
  • The registering of transfers, changes of name, changes of address for any intellectual property right.
  • The monitoring of maintenance fees for patents, utility models, trademarks and designs, including informing the client that a fee will be due, monitoring the receipt of his decision to maintain in force or abandon the IP right and ensuring that any due maintenance fees are paid so as to keep the client’s IP right in force.

All of these formalities are carried out all over the world. In many European counties we deal directly with the Patent and/or Trademark offices, without the necessity to involve local agents, due to the fact that the paralegals in our Formalities department are all fluent in English, French or German.

Our Formalities department also acts as an important in-house support to our patent and trademark attorneys, by preparing various documents and monitoring internal, client and official deadlines.

 

Please contact us for further information.