Legal services

Legal services

Our company name P&TS is an acronym for Patents & Technology Surveys because from the very start, we decided to combine these two aspects. This puts us in a unique position for preparing IP audits. The reports prepared by P&TS aim to analyse an existing patent portfolio to answer mainly the following questions:

  • Can the owner’s patents/patent applications be defended? What are the risks of them becoming invalidated?
  • Can these patents/patent applications be easily circumvented?
  • Are the patents/patent applications aligned with the owner’s business plan and commercial strategy? What advantage do they afford?
  • Do they effectively protect the owner’s core business?
  • Is the choice of countries in which the patents have been filed appropriate?
  • Is a company at risk of being attacked for infringing third party patents?
These P&TS audit reports are useful notably for helping companies to identify their needs and to define priorities in establishing an IP policy adapted to their budget and ambitions. Intellectual property due diligence reports are also often provided for investors and venture capitalists and during mergers or acquisition of companies.

The P&TS audits usually begin with an inventory of the intellectual capital of the company in question and of the IP titles it possibly already owns. We then check the quality of this portfolio and whether it is aligned with the company’s business strategy, and compare it quantitatively and qualitatively to that of competitors in the same domain.

Discussions with R&D managers and product managers are then organised to examine the company’s products that have the potential of being better protected, to assess the risk of these products being attacked by third parties and to identify sources of waste.

A report is then produced that clearly identifies the existing risks and puts forward short and longer term suggestions for improving the efficiency of investments in IP matters.

Thanks to our considerable activity in technology and patent intelligence, we are frequently lead to participate in opposition procedures to have the patents of competitors invalidated or for defending our clients’ patents. We are entitled to represent clients for all the steps in connection with an opposition or appeals procedure in front of the European Patent Office in Munich.

Third-party observations

It is possible to initiate an action very simply against a pending patent application filed by a competitor. The European Patent Convention affords the possibility to anyone of filing third party observations on a European patent application (Article 115 EPC), i.e. to communicate arguments to the Patent Office or to file new documents, e.g. documents that have not been cited in the search report, or proof that the challenged application does not fulfill the requirements of the EPC. No official fee is required for filing third party observations, which incidentally can also be filed anonymously. The party filing observations under Article 115 EPC is however not party to the procedure, which constitutes one of the main restrictions of this system. The arguments and documents filed will then be discussed directly between the applicant and the examining division, without the third party being able to participate in these discussions. The applicant is thus in a favorable position for attempting to convince the examiner.

Oppositions

Apart from third party observations, the EPC provides for an opposition procedure allowing third parties to have a granted patent invalidated. The opposition must be in writing and filed within a nine months’ deadline after grant of the patent upon payment of an official fee. Grounds for the opposition must be provided. About 6% of granted patents are the object of an opposition (status in 1999); of the opposed patents, a third is totally invalidated, a third maintained in a modified form and a third maintained without amendments. The average duration of an opposition procedure is at least two years. A subsequent appeal can extend the procedure by another two years. Thanks to our ability in prior art searches, to our knowledge of the internal workings of the European Patent Office and to the experience accumulated in this kind of procedure, we are particularly competent for managing from end to end highly complex opposition procedures.

Infringement actions; patent nullity actions

After grant, once the opposition deadline has lapsed, the only way of obtaining the revocation of a patent is to bring the matter in front of the courts, who are also in sole position to impose punishment on infringers. We assist you in evaluating the costs, benefits and risks before initiating a procedure and advise you as to the choice of courts in front of which to bring the action (choice of country or canton), we help you to collect the necessary proofs and documents, we recommend the best attorneys in each jurisdiction and act as technical experts to direct or back the entire litigation procedure. Thanks to our experience in conducting negotiations and in licensing matters, we can also help you to reach an amicable settlement before the final judgment.

Non-disclosure agreements

This is the contract that prevents information exchanged in the context of contract negotiations or fulfilment from being communicated by one party to third parties without the agreement of the other party.

It is sometimes necessary to communicate one’s invention or confidential information to potential partners or investors before filing a patent application. In this case, it is possible to prevent the secret from being divulged by having the recipients of the information sign a non-disclosure agreement. This type of the creation of agreement is especially appropriate in the initial development phases of the creaton of an invention, before an application is filed, or for secrets intended to remain indefinitely confidential, for example an internal manufacturing process. Unlike a patent, the non-disclosure agreement does not grant any monopoly but allows the recipient of the confidential information to be sued in case of abusive divulging and to demand compensation for incurred losses. The amount of the compensation, decided by the judge, can be difficult to prove in case of breach of the agreement. It is thus advisable to include in the contract a penalty clause. P&TS can advise you for drafting a non-disclosure agreement tailored to your needs. The downloadable non-disclosure agreement (NDA) specimen illustrates the structure of a typical non-disclosure agreement. It is given here by way of example only and we invite you to contact us before using it in order to ascertain whether it is adapted for being used in your actual situation.

Licensing agreement

The licensing agreement is the contract by which the licensor gives the licensee the right to use and exploit industrially or commercially an immaterial property against compensation. In contrast to an assignment contract, the owner of the IP rights remains their owner. In other words, there is no change or transfer of ownership, the owner only grants the right to use and commercialise.

It is possible to distinguish between an exclusive licence and a simple licence. In the first case, the licensor refrains from granting to third parties the right to use or commercialise the IP rights. It must be emphasized that the owners themselves undertake not to use or commercialise the immaterial property (e.g. to exploit the invention commercially). A simple licence means that the licensor remains free to use and commercialise the immaterial property and/or to grant this right to third parties.
Contract for assignment of IP rights

By means of an assignment agreement, the assignor assigns to the assignee the right to the immaterial property. The assignment means that the IP rights are transferred. Under Swiss law (art. 33 para. 2bis Patents Act), the written form is required to transferring a patent or patent application but not for transferring the right to the patent (art. 3 Patents Act). The right to the patent means the right to perform all necessary steps for obtaining patent protection.

Non-practitioners often confuse license and assignment. We will illustrate the difference between the two contracts with the example of a lease which is similar to the license and a sale which can be synonymous with an assignment.
Research and Development (R&D) contract

The research contract is the contract by means of which the principal entrusts the researcher(s) to carry out research on a scientific and/or technical problem and to make available the results of this work

The development contract aims to develop a product, a tool or another technical instrument.

In Switzerland, the R&D contract is widely used in the context of collaborations between universities (such as EPFL/ETHZ, HES-Arc etc.) and industrial partners that finance a research project. It is thus very important to determine in the contract the issue of transfer of rights to the intellectual property that might arise from the results of a project, the question of use of the right to the immaterial property of each party to the contract prior to the collaboration and the possibility of scientific publication of the results.

Made in Switerland - Swissness

Can you use the names « Swiss », « made in Switzerland » or signs such as the « Swiss cross » on your products or for your services ? These questions will become particularly pertinent from 1st January 2017 when the legislation « Swissness » will become law.

What is « Swissness » ?

Designations such as the Swiss cross, «  made in Switzerland » or « Swiss quality » are widely used by many companies to valorise their products or services. « Swissness » is new legislation which calls for the amendment of federal law for the protection of trademarks and indications concerning the origin (LPM) and the federal law for the protection of public coats-of-arms and other public signs (LPAP). The aim of these new legal provisions is primarily to protect the value of the « Swiss brand », to reinforce the protection of the indication of origin « Swiss » and the Swiss cross, both at national level as well as with a view to an implementation overseas.

The main changes

Indications of origin « Swiss » for products
The amendment of the LPM calls for new criteria allowing the determination of the geographical origin of a product, in other words to what extent a product must be Swiss to be able to claim to have this origin.  In this wa, the law will define if and when the product can use the label « Swissmade ».

According to the new legislation, products will be classified into three categories : Swissness conditions for products

An indication of “Swiss” origin can be used in relation to a product if the criteria established for the corresponding product category are respected.

For natural products, the origin is defined using a single criterion which varies depending on the nature of the product.  It can be for example a place of extraction of mineral products, the place where the vegetable products were harvested, for meat products, it would be the place where animals spent most of their existence.

For natural transformed products and industrial products, the law provides for cumulative criteria that take into consideration the fact that some raw materials are not available on the home market and some production stages take place overseas.  It concerns (1) value criteria and (2) criteria that stipulate that the activity that gave the product its essential characteristics must take place in Switzerland.

Swissness conditions for foodstuff

The following factors can be taken into account :

  • manufacturing and assembly costs,
  • research and development costs,
  • costs involved in quality assurance and certification required by law or regulated in a homogeneous manner throughout a sector of activity.

swiss made conditions

Costs that cannot be taken into consideration :

  • costs incurred in the sales of the finished products (e.g. advertising and marketing costs)
  • packaging costs of the merchandise
  • costs incurred by the after-sales service

The indications of origin « Swiss » for services The new law reinforces the criterion of attachment for the indications of origin for services. Currently, according to art. 49 al. 1 LPM, the origin of services is determined either (1) by the head office of the person who provides the service, or (2) by the nationality or (3) the home of the persons who effectively control the sales policy and the management. These conditions are alternatives. In the future, the new art. 49 LPM will be amended to benefit  cumulative criteria which foresee that the indication of the origin of the services is only correct on the condition that (1) it corresponds to the head office of the person who supplies the service and (2) that this person has a real administrative centre in Switzerland, in such a way to avoid that simply having a post office box is sufficient. Use of the official coats-of-arms of the Confederation, the Swiss flag and the Swiss cross The new LPAP clearly defines and distinguishes on the one hand the official coats-of-arms of the Confederation,  (Swiss cross in an ecusson), which can in principal only be used by the Confederation or its departments and, on the other hand, the Swiss flag and Swiss cross, which from now on can be used by any person matching the requirements for the use of the designation « Swiss », not only for services, but also for products.  Companies who have been using the coats-of-arms of the Confederation for decades for products and services of Swiss origin will be able to apply to the federal department of justice and police (FDJP) within two years  from when the new law comes into force at the latest, to be able to continue to do so provided there is a legitimate justification. Orders of Execution Apart from the amendment of the LPM and the LPAP, the legislative works « Swissness » include the various orders of execution :

  1. Order for the protection of trademarks which has been revised to specify how to calculate the 60 % of the cost price of the industrial product.
  1. Order for the use of the indication of origin « Swiss » for food products which defines how to calculate the minimum required amount of Swiss raw materials.
  1. Order concerning the register of designation of origin and geographical indications for non-agricultural products regulates the new possibility of registering with the Federal Institute of Intellectual Property a geographical indication for products such as watches and mineral water.
  1. Order concerning the protection of Swiss coats-of-arms and other public signs regulates the management of the electronic list of protected public signs of the Confederation, the cantons and communities.

In addition, the Swiss Watch Federation has presented a draft project for the revision of the order regulating the use of the « Swiss » name for watches. According to this new text, it will be not only be required to have at least 60% of the production costs of a watch incurred in Switzerland, but also the technical development of the watch and the movement should be done in Switzerland. The federal council has approved this amendment to the order. Legislative step – what is the status ? On 2nd September 2015, the federal council adopted the group of orders « Swissness ». It set the effective date for the application of the « Swissness » project to 1st January 2017. A maximum transitional time frame of two years (up to 31st December 2018) is planned to allow companies to adapt to the new regulations.  In other words, products produced before this date can be sold up to the end of 2018.  The same applies to services.

IP roadmaps make it possible to define an intellectual property strategy in collaboration with a company or start-up. This involves understanding the company’s business plan, conducting a panoramic search of patent databases to understand the competitive context, and then proposing an intellectual property strategy to support the company’s business plan and strategic vision.

We have extensive experience in this field and have completed more than 400 IP roadmaps in 10 years for start-ups, including as experts for CTI Startup / Innosuisse. 400 companies we visited, interviewed and examined from all angles to propose an intellectual property strategy adapted to their needs and ambitions. Indeed, for start-ups even more than for established companies, efficient management of time and money resources is essential to build a solid patent portfolio, convince investors, avoid problems of freedom of exploitation, and create visibility.

CONTACT

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Ewa Gillabert

Lawyer