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IP Client Strategies in Europe, 2010 edition

IP Client Strategies in Europe, 2010 edition

  • Author:
  • Publisher: Aspatore
  • ISBN: 9780314268563
  • Published In: August 2010
  • Format: Paperback , 312 pages
  • Jurisdiction: Europe ? Disclaimer:
    Countri(es) stated herein are used as reference only
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    IP Client Strategies in Europe, 2010 ed.: Leading Lawyers on Analyzing Emerging IP Trends, Building Client Relationships, and Navigating European IP Laws and Legal Systems (Inside the Minds)
     

    This product provides an authoritative, insider's perspective on protecting and maximizing intellectual property for today's European clients. Partners from law firms across various countries in Europe, including England, Ireland, Scotland, France, Germany, Italy, Spain, and Austria, guide the reader through the complexities of the different nations' IP laws and analyze noteworthy legal decisions and developments. Chapters written by these top lawyers cover topics from trademarks and patents to keyword advertising and Web content. The authors also discuss the critical elements of an effective pan-European IP strategy and offer proven, expert advice for both enforcement and litigation.

  • Axel Anderl
     
    Axel Anderl is a partner with Dorda Brugger Jordis Rechtsanwälte GmbH. He is head of the information technology, intellectual property, and media department, also covering data protection and unfair competition. He is well known for his work in e-commerce and software law, and his practice covers drafting and negotiation of international information technology-related contracts, licenses, franchising and distribution contracts, as well as information technology/intellectual property and media litigation. He has advised on complex outsourcing projects and information technology-related merger and acquisition deals. Mr. Anderl has published numerous articles on information technology and intellectual property law. He studied law at the University of Vienna.
     
    Emmanuel Baud
     
    Emmanuel Baud, a partner at Jones Day, handles complex litigations for French and international clients in the areas of intellectual property law and technology, including patents, trademarks, copyrights, designs, domain names, know-how, software, and geographical indications as well as unfair competition/passing off matters before national and European jurisdictions and institutions. Mr. Baud regularly assists clients in drafting and negotiating contracts involving intellectual property rights. He also advises clients on intellectual property strategy involving trademarks, models and designs prosecution, and Internet-related issues such as domain name grabbing. In addition, he has a great deal of experience in the field of protected geographical indications, particularly with appellations of origin (AOC). Mr. Baud is president of the Association des Praticiens du Droit des Marques et des Modèles (APRAM) and a member of the International Trademark Association (INTA).
     
    Richard Binns
     
    Richard Binns is a partner and head of the intellectual property department of the London office of Simmons & Simmons and head of the firm’s international intellectual property practice. His commercial intellectual property (IP) practice is specifically rated in the non-contentious IP section of The Legal 500 (where he is described as “superb”) and Chambers (where he is described as “exceptionally smart” and puts clients at ease because “he really knows what he is talking about”). He is also listed in The Insider’s Guide to Legal Services - Pharmaceuticals & Biotechnology (New City Media). He is recommended in European Counsel and Global Counsel for intellectual property and life sciences and listed as an IP expert by Legal Business in Legal Experts Report. He is named in Euromoney’s Guide to the World’s Leading Patent Law Experts, Mondaq’s world’s leading IP lawyers survey and in Marquis Who’s Who in Medicine and Healthcare and he is also acknowledged and highly recommended in both PLC Cross-Border Intellectual Property and Life Sciences Handbooks. He has also been nominated as one of the world’s leading IP strategists and was featured in IAM 250 – A Guide to the World’s Leading IP Strategists produced by Intellectual Asset Management (IAM) magazine. He has also been acknowledged in 2010 in IAM Licensing 250 - The World’s Leading Patent and Technology Licensing Lawyers. Mr. Binns has written a substantial number of articles for legal and pharmaceutical journals and lectures extensively in the U.K. and elsewhere on intellectual property related matters. He is a former lecturer on “IP aspects of corporate transactions” for Bristol University’s IP diploma course workshop. Mr. Binns is the coauthor of Successful Licensing: Negotiating and Drafting Optimum Pharmaceutical Deals, published by FT Pharmaceuticals. He has also contributed to the intellectual property section of the book by W K Knight, The Acquisition of Private Companies and Business Assets (7th edition), published by FT Law & Tax. Mr. Binns obtained degrees in science and law before training as a solicitor with Simmons & Simmons. He qualified in 1988 and became a partner in 1996. Mr. Binns is a member of the Healthcare Committee of the Licensing Executives Society. He is also a member of the Intellectual Property Sub-Committee of the City of London Solicitors’ Company.
     
    Alison Bryce
     
    Alison Bryce is a partner in Maclay Murray & Spens LLP’s IP and technology team, heading up the non-contentious division. Ms. Bryce has specialized in intellectual property and IT commercial contracts since 2000 and regularly advises clients on IP strategies, trademark protection, and commercialization of patents and designs. Ms. Bryce is a member of the Licensing Executive Society and has had articles featured in The Times, the Daily Telegraph, and Computer Headlines. Examples of Ms. Bryce’s experience on ICT matters and Data Protection include providing advice to Picsel Technologies Limited in relation to their ICT commercial contracts with major blue chip technology companies including Sony, Samsung, Hewlett Packard, H3G, and Motorola; providing strategic advice and drafting and negotiating the £6.5 million commercial contract between systems provider Trak Healthcare to the NHS; advising the SPSA on the procurement of the Airwave and Automatic Number Plate Recognition Systems; providing advice to Scottish Enterprise on the implementation of their IT Information Library; completing a number of software license and maintenance agreements for Ascertus Limited with major financial institutions; practical data protection advice in relation to the merger of the University of Paisley and Bell College; advising Scottish Health Innovations Limited, the body incorporated to commercialize IPR arising from the NHS, on compliance with data protection requirements and appropriate responses to Freedom of Information requests; and advising Glasgow Community and Safety Services on branding and IP ownership and protection. Ms. Bryce has written a number of thought pieces on the issue of Open Source Software that have been featured in The Times, the Daily Telegraph, and Computer Headline magazine. She is currently providing a training course on the legal implications of Web 2.0 to public sector organizations across the U.K. Ms. Bryce is a member of Maclay Murray & Spens’ top rated IP and technology department and local government and shared services teams, focusing on providing commercial advice in relation to ICT procurement, data protection, and freedom of information legislation. Ms. Bryce has particular expertise in relation to the transfer and procurement of ICT systems and a range of complex IT based commercial contracts; compliance advice in relation to data protection and freedom of information legislation; and protection of intellectual property rights and branding. Ms. Bryce received both her L.P. and LL.B., with honors, from the University of Dundee.
     
    Andreas Ebert-Weidenfeller
     
    Andreas Ebert-Weidenfeller, a partner at Jones Day, has extensive experience in trademark, anti-counterfeiting, design patent, and unfair competition law and practice. The scope of his work is centered on intellectual property matters, with a main focus on trademarks and the entire range of laws regarding signs. Dr. Ebert-Weidenfeller manages large trademark portfolios worldwide. This includes comprehensive advice on trademark launches and the defense of existing trademarks by means of oppositions and delimitation agreements. The fight against product piracy, primarily by means of border seizure procedures, and trademark infringement disputes are also part of his practice. Further, the protection of the product design and get-up (outward appearance), primarily under design patent and unfair competition law, is an important part of this daily work. He also handles fair trading issues. Dr. Ebert-Weidenfeller has worked in the area of intellectual property since 1992. He represents medium-sized German companies in various industries as well as globally operating branded companies, all of them on issues of German and European trademark protection, design patent law, and unfair competition law. Dr. Ebert-Weidenfeller has been listed in The International Who’s Who of Trademark Lawyers in the German section consecutively since 2004. He is a member of several legal organizations, including the German Association for the Protection of Intellectual Property (GRUR) and the International Association for the Protection of Intellectual Property (AIPPI).
     
    Gill Grassie
     
    Gill Grassie has been a partner at Maclay Murray & Spens LLP since 1993 and has specialized for some eighteen years in IP and IT litigation and dispute resolution. Ms. Grassie is head of the IP & Technology Department and heads up the department’s dedicated IP/IT dispute resolution team. Her experience spans the whole gambit of contentious intellectual property including both soft and hard IP. Ms. Grassie is an accredited IP specialist and a member of the International Trade Mark Association, ITMA, CIPA, and AIPPI. She is also a committee member of the INTA Parallel Imports Trade Mark Committee, LES, and The Intellectual Property Lawyers Organisation. Ms. Grassie’s extensive experience includes representing Verathon Medical (Canada) Inc. in their patent infringement action against Aircraft Medical Limited; FMC Inc. in its patent infringement claim against Vetco Gray; Arrow Generics Limited in two patent invalidity actions in the Court of Session; Philips Electronics NV in a Scottish patent litigation; Roche Diagnostics in its campaign against parallel imports; multinational pharmaceutical company Boehringer Ingelheim in various court actions against parallel importers; and a major software developer in an outsourcing dispute. She has provided trademark advice to owners of Budweiser in the Scottish jurisdiction and has acted on behalf of owner of plant breeder rights in infringement action in the Court of Session; on behalf of a number of international film companies in enforcing copyright in Scotland; in several successful mediations for clients in trademark and Internet related disputes; on behalf of Lancaster Group in enforcing its Davidoff, Joop and other perfume brands in parallel import cases; on behalf of Easy Group on brand enforcement issues in Scotland; on behalf of Pringle re brand enforcement issues; on behalf of Virgin, Jack Wolfskin, and the owner of KAZAA brand re enforcement issues; on behalf of Microsoft in its anti piracy campaign; for Pebble Beach and Beecham in trademark infringement cases; for Coflexip in a patent infringement case; on behalf of UVG in successfully obtaining interim interdict to prevent infringement of their design right in step/ramp for ambulances; and in the first Scottish case on cyber squatting and in various domain name disputes. Ms. Grassie received her L.P. and LL.B. from the University of Edinburgh.
     
    Stefano Macchi di Cellere
     
    Stefano Macchi di Cellere, a partner at Jones Day, practices cross-border competition law, acting in merger and cartel cases before the EU antitrust authorities and assisting global enterprises on abuse of dominant position claims and investigations, as well as on private damages, unfair competition, and intellectual property litigation. Mr. Macchi di Cellere leads the Antitrust & Competition, Technology, Media, and Telecommunications Italian law practices of Jones Day. Mr. Macchi di Cellere advises multinational groups on concentrations, joint ventures, and commercial transactions and has handled numerous acquisitions in a wide range of manufacturing businesses, from the pharmaceuticals and consumers' products sectors to the automotive and media industries. He gained extensive experience in communications law representing international clients since the liberalization of the industry, working with operators involved in fixed, mobile, and satellite networks and services and advising corporations on radio and television broadcasting, information technology, and Internet communications. Mr. Macchi di Cellere is a regular author and speaker on antitrust and communications law topics and a contributor to the World Bank’s Doing Business annual reports. He is a member of the Italian Bar, the Law Society of England and Wales, the International Bar Association (Antitrust and Trade and Communications Law Committees), the American Bar Association (Section of Antitrust Law), the Inter- Pacific Bar Association (council member and chair of the Aerospace Committee, 1998- 2000, vice chair, 1996-1998), and the Alumni Association of the Academy of American and International Law (deputy secretary general, 1990-1991).
     
    Alastair McCulloch
     
    Alastair McCulloch, a partner at Jones Day, is an intellectual property lawyer, advising on patents, trademarks, copyright, designs, and confidential information. Mr. McCulloch focuses on litigating technical matters, especially high-technology patents, but also advises on IP-led transactions. He has a scientific background having studied chemistry, physics, and cell biology. On dispute work, Mr. McCulloch practices not only in cases before the English courts (including the Patents Court, the Patents County Court, and the Court of Appeal), but also in arbitrations and cases before the European Patent Office. Many of his cases have been international in nature, and he has extensive experience in multijurisdictional disputes, having coordinated parallel proceedings in the U.S., Germany, France, Italy, the Netherlands, Belgium, Hong Kong, China, and Australia. His experience includes cases in which competition defenses have played a prominent role. On transactional matters, Mr. McCulloch advises on all types of agreements in which intellectual property is important, including licensing, R&D, confidentiality, distribution, and broadcasting agreements. He works in the fields of pharmaceuticals, electronics and computer systems, specialist chemicals, medical devices, renewable energy, and mechanical engineering. Mr. McCulloch is recommended in the Chambers UK and Chambers Europe directories. He is an associate of the Chartered Institute of Patent Agents and a member of AIPPI and AIPLA. He lectures frequently on patent and other IP matters.
     
    Marco Nicolini
     
    Marco Nicolini is a partner of Chiomenti Studio Legale and a member of the corporate and M&A department at the Milan office. He is supervisor of the intellectual property, data protection and information technology practice area of the firm. He joined the firm in 1995 and became a partner in 2006. In 2002, he worked as a foreign associate at Skadden, Arps, Slate, Meagher & Flom in Chicago. He practices corporate, commercial, and contract law and assists Italian and foreign clients specifically for mergers, acquisitions, joint ventures, and strategic alliances in both industrial and financial sectors. He has experience in the intellectual property, information technology, and antitrust law fields.
     
    Gregor Pryor
     
    Gregor Pryor is a partner at Reed Smith LLP. Mr. Pryor has broad experience in advising clients concerning the acquisition, production, licensing, and distribution of content on digital media networks and platforms. He has particular specialist expertise in music, and regularly advises commercial music users, record labels, music publishers, and advertisers regarding the exploitation and use of music. He also advises companies that are involved in the distribution and sale of digital content, such as social networks, online retailers, aggregators, network operators, platform owners, and search engines, regarding their arrangements with content owners and consumers. In acknowledgement of his work in the digital music sector, Mr. Pryor was a finalist in Legal Week’s 2008 Young Solicitor of the Year Award. The Legal 500 describes him as a “digital carriage superstar.” Mr. Pryor has been ranked ninety-three in Wired Magazine’s 2010 The Wired 100 Most Influential People in Digital Media. His standing in this field received recognition in the form of an invitation to be a speaker at the C&binet UK Government Digital Media Initiative in October 2009.
     
    Peppe Santoro
     
    Peppe Santoro is a partner and head of the intellectual property team at Eversheds O’Donnell Sweeney. He is an Irish solicitor and trademark agent. His main areas of practice include corporate/commercial, intellectual property, information technology, and data protection. Mr. Santoro has more than ten years’ experience in advising domestic and multinational companies on strategic intellectual property and associated business issues, particularly in the technology sector. He advises individuals and companies on the tax efficient exploitation of intellectual property and his practice also involves the negotiation of technology and intellectual property licenses and franchising and distribution agreements. He has advised on complex outsourcing projects and technology-related mergers and acquisitions.
     
    Verena von Bomhard
     
    Verena von Bomhard is the founder of Hogan Lovells International LLP’s Alicante office and has been involved with Community trademarks from the very beginning. She has extensive experience in managing large portfolios and in all matters relating to the prosecution and enforcement of Community trademarks and designs, in advising on complex trademark conflicts in the European Union, on effective dispute settlement strategies, and on non-traditional marks. Ms. von Bomhard holds a doctorate in law from the University of Munich, has authored and co-authored numerous books and articles on the Community trademark and design, and is a frequent speaker on these topics. She teaches European trademark law at the IP Master Program of the Max Planck Institute (MIPLC) and at the Magister Lucentinus - the IP Master Program of the University of Alicante. She is a very active member of INTA, where she has been on the board of directors, has co-chaired an annual meeting and chaired the CTM Subcommittee, and currently chairs the Programs Committee. She is also a member of ECTA, GRUR, and PTMG. Apart from her native German, Ms. von Bomhard is fluent in English and Spanish.
     
    Dorothee Weber-Bruls
     
    Dorothée Weber-Bruls, a partner at Jones Day, has extensive experience in physics and mechanical engineering, particularly in the areas of materials science, nanotechnology, thermodynamics, instrumentation and control, and vibration and damping technology. She heads Jones Day’s Physics Patent Practice in Germany and Europe. Dr. Weber-Bruls deals with all aspects of intellectual property law, especially with obtaining, prosecuting, and defending patents, utility models, and designs. She also advises on how to respect as well as how to avoid infringement of patents. In addition, her practice involves honoring employee inventions and advising on strategic decisions such as those regarding market launches of new products. Dr. Weber-Bruls has worked in the area of intellectual property since 1992 and represents international companies in various industries. Dr. Weber-Bruls is a member of the German Association for the Protection of Intellectual Property (GRUR), the International Association for the Protection of Intellectual Property (AIPPI), the Licensing Executives Society (LES) with active participation in the Automotive Working Group, the German Association of Intellectual Property Experts (VPP), the Institute of Professional Representatives before the European Patent Office (epi), and the Federal Association of German Patent Attorneys. She has lectured on patent law at the Goethe University in Frankfurt since 2003 and is active in the alumni council at the university as well. Dr. Weber-Bruls is recommended as a patent attorney in numerous publications, including JUVE and The Legal 500.

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