Intellectual Property

In this area, I advise clients on their IP strategy, including on the protection and enforcement of copyrights, designs and the management of trademarks (including both registered and non-registered marks). I also handle all aspects of IP transactions, including licensing, assignments, and other transfers to secure and maximize the value of clients’ IP assets.

More specifically:

I can assist you in preparing or reviewing the following:

1. IP Audit: An IP audit is a useful starting point in the protecting and enforcing of your IP. The aim of the exercise is to create an inventory of your business’ IP, including any registered as well as non-registered IP.

2. IP Strategy: An IP strategy should be apart of any sustainable business plan or business strategy. It should indicate the key IP assets for your business, and how you should use your IP to strengthen your business, including by making additional IP registrations or cancelling those that you no longer require. Naturally, an IP audit is generally of great use here.

3. Copyright: Under English law, copyright in various types of original works arises automatically, meaning that you don’t need to register your works to be able to rely on copyright protection. However, you should still be proactive in protecting and enforcing your copyright works, especially if they are significant for your business.  

4. Formal registrations: Certain IP assets, including trademarks, designs, or patents, require registration. Registration is subject to meeting strict criteria. More importantly, registration is also linked to a specific territory. I advise on the appropriateness of formal registrations, also in light of clients’ overall IP strategy.

5. Licensing: IP licences permit the use of IP rights subject to certain protections for the owner. The owner will still enjoy certain exclusive rights to use, control, exploit and own the IP as an asset.Typically, the owner will obtain payment or royalties in exchange for the licence.

6. Assignments and Transfers: Unlike with licensing, IP assignments or transfers involve the transfer of the relevant asset to the new owner.Typically, this would happen during the sale of business, but can also occur in simple IP transactions or disputes (relatively common in domain name transfers).I regularly assist in preparing the relevant transfer documents.

Recent Experience:

Advised a client operating an augmented reality platform and developing 3D content in the form of non-fungible tokens for the platform on their ability to create 3D avatars based on certain existing 2D copyright works, as well as on the client’s IP assignment and licence agreement.

Advised a world-renowned designer and manufacturer of flexible, glass-free electrophoretic displays (licensee) in relation to termination of exclusive patent licence due to the outbreak of the Ukraine conflict. Prepared an assessment and general overview of available remedies possibly claimed from the client’s supplier and customer who have allegedly breached provisions of various collaboration agreements, including exclusivity, confidentiality and non-competition provisions.

Participated in advising global tech companies as well as fashion and footwear retailers on the protection and enforcement of intellectual property rights, and on IP strategy. Prepared registration applications and opposition submissions.

Participated in advising a leading manufacturer of scooters on the global protection and enforcement of its intellectual property rights, and in recommending the appropriate forms of IP protection with respect to its business plans. 

Participated in advising a boutique hotel on IP infringement proceedings threatened by a competitor due to alleged similarity of trade names. Assisted the client in negotiations and implementation of the new name and visual style. 

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