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Focus

Intellectual property is one of the most dynamic areas of the law: new technological or legal issues regularly arise and imply a rapid assimilation by companies. In order to respond agilely to these new challenges, abello continually offers new Focus services, precisely targeting complex or emerging issues.

  • Employee's Inventions
  • FRAND Trading
  • Counterfeit seizures

abello IP benefits on the market from a unique experience in the field of employee’s inventions, as our litigation department is regularly requested for such a specific and strategic issue for companies.

Methodology

  • Cases regarding employee inventions involves combining a detailed knowledge of patent law and employment law issues on both the employer and employee sides, while taking into account the effects of the statute of limitations that are often invoked.
  • abello IP’s experience enables it to choose the best strategy between litigation and conciliation through the CNIS (Commission Nationale des Inventions de Salariés), whose secretariat is provided by the INPI.
  • The firm also combines its technical and legal analysis with an in-depth financial assessment of inventors’ requests, whether for additional remuneration for mission inventions or the fair price of off-mission inventions.

Book

Intellectual property rights of employees

Published by Sanna Wolk, Kacper Szkalej, 2017

Employee Intellectual Property Rights Described and Analyzed by Employers Intellectual Property Rights of Employees in thirty-four different jurisdictions around the world, collectively representing all habitable continents.

The firm has developed a FRAND negotiation strategy for Standards Essential Patents (SEPs), in compliance with the criteria set out by the Court of Justice of the European Union in its landmark decision Huawei v. ZTE of 16 July 2015 (C-170/13).

Methodology

For MS patent holders:

  • Where applicable, review of the essentiality of the patents in the portfolio against applicable standards, including optional or elective parts
  • Claim chart on exemplary patents
  • Determination of the FRAND royalty rate based on comparable licenses in the industry
  • Drafting of a FRAND license offer, taking into account French and European case law
  • Conduct of negotiations in accordance with the criteria of European case law

For companies subject to a FRAND negotiation offer:

  • Study of the license offer, in particular its fair, reasonable and non-discriminatory nature in relation to French and European case law
  • Identification of patents in the portfolio with reduced risk, using a preliminary validity and ownership study
  • Study of the essentiality of the patents in the moderate-risk portfolio, taking into account the applicable standards, and in particular the optional or optional parts
  • Thorough validity study of patents deemed essential and high-risk profiled, using prior art searches
  • If necessary, preparation of a counter-offer on FRAND terms, with determination of the applicable royalty rate in comparison with comparable licenses in the industry sector
  • Conduct of negotiations in accordance with the criteria of European case law
  • Where appropriate, assistance in the provision of a bank security or guarantee to reduce the risk of an action for preliminary injunction

Infringement seizures and findings by order 145, are one of the firm’s major specialties and are an integral part of the strategic management of litigation, for which the Partners have acquired a long experience while assisting, as experts, the instrumental bailiffs.

Methodology

In defence, abello offers high value-added support for customers who suffer a counterfeit seizure or a surprise finding on their premises, and has pushed innovation to the point of creating a dedicated and innovative Smartphone application “SOS Saisies” centred on 4 essential pillars:

  • PREPARE: train in advance the personnel exposed in the company and organize internally to be ready to react
  • REACT : emergency advice gathered in a checklist to be checked off, intended for the personnel concerned (reception, internal referent, dedicated team)
  • WHAT TO DO / AVOID : recommendations on how to behave towards the bailiff and the pitfalls to avoid
  • FINALIZE: a checklist to be ticked at the end of the operations and foresee potential recourses

 

Download the app

Upon request, abello determines the best evidence-gathering strategy for the counterfeit seizure for the purposes of the infringement action, and coordinates all operations from start to finish, from the application for judicial authorisation, the interventions of bailiffs and experts, to the analysis of the results with a view to a summons.

The Firm is also the author of the reference work “Guide des Saisies-contrefaçons et des Constats de 2016” published by Lexis Nexis.

News & Documentation

Newsletter

Reform of the litigation procedures in the field of trademark and of appeal against décisions of the INPI

27 July 2020
Litigation

Conciliation on the remuneration of an employee’s invention

20 March 2020
Litigation

Record number of judgments in favor of employee inventors

20 March 2020

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