WE BELIEVE THAT A CLEAR FOCUS IS KEY TO OFFERING THE LEVEL OF SERVICE THAT OUR CLIENTS REQUIRE. WE KEPT THIS FOCUS TROUGHOUT THE YEARS. WE OFFER SERVICES THAT FALL WITHIN THE COMPREHENSIVE IP SOLUTION.
For our clients we ensure cost-effective management of large portfolios of patents and trademarks. Our clients can benefit from our creative filing strategies relevant for what the client and competition intend. Our formalities’ team effectively manages renewals and other aspects of portfolio management. Part of the global approach to our clients’ cases is monitoring of the general administrative case-law to see how the concepts derived therein apply to the specifics of the client’s IP problem. In prosecution we have been successful in challenging established practices with respect to issues such as sufficient disclosure or application of the problem-solution approach in the inventive step analysis.
STRATEGIC APPROACH Patent disputes tend to be highly complex cases where technical, procedural and substantive law skills are required to jointly fall into place in a synchronized and synergistic manner for each case.
PATENT INFRINGEMENT Patent infringement in Poland is dealt with by the general civil commercial courts. There is therefore some opportunity for forum shopping in search of competence and/or speed. There is a possibility to seek preliminary injunctions, including ex-parte injunctions. The courts will appoint an expert to advise on the technical aspects of the case. The civil courts have no jurisdiction over validity. There is varying case law with respect to stays pending invalidity actions before the Patent Office.
DOCTRINE OF EQUIVALENTS UNDER POLISH LAW The case law on doctrine of equivalents is relatively limited in Poland. One partner of the firm has been involved in a highly complex pharmaceutical litigation, where the Court of Appeals has recently confirmed that there is a necessity to interpret claims in Poland and that this interpretation may be extensive, going beyond the literal meaning.
INVALIDITY Invalidity cases are tried by the Patent Office and an appeal is available (generally non-suspensive on the execution of the Patent Office decision) to the administrative court. The interrelation between the civil and administrative procedures and the enforceability of the first instance Patent Office decisions create a very complex area where strategic and procedural competence are required to achieve the goals that the proceedings are to achieve.
EXPERT OPINION MANAGEMENT A patent case has a tendency of turning into a battle of experts; whereas only court appointed expert opinions are considered proof in proceedings, parties should and do employ private experts to provide opinion and sometimes even give testimony. Extensive knowledge of the relevant fields allows us to identify the right persons that could be suggested as court-appointed experts or whom we could employ on our client’s side.
Our clients can benefit from professional advice and representation in all stages of trade mark enforcement proceedings.
GENERAL STRATEGIC ADVICE
It is important to stay creative when doing trademark enforcement. Bearing in mind that no two cases are the same, we apply our experience, knowledge of the procedure and substantive law to develop a tailored strategy.
Timely action is an extremely important consideration in all legal work but it is especially relevant for enforcement work. For our clients we have secured several interim measure awards within a few days from their filing.
Our office is conducting a number of cases based on the provisions of the freshly implemented Enforcement Directive into Polish Law where case law in this area will be established. Our clients can benefit from our understanding of the fact that a business perspective needs to be put on any enforcement action and our awareness of the risk-benefit relationship in any economic venture.
Our clients can draw from our experience in enforcing not only straightforward word or figurative marks, but also marks which pertain to use of a color combination per se or to the trade-dress of the product.
Product design protection
Our creativity and strategic approach are at their best use in product design cases. This field requires careful co-ordination of unfair competition, design law and trademarks, sometimes also other skills are called for. Only specialization in the field allows to gather sufficient know-how to conduct these complex disputes.
For our clients we have conducted prosecution and litigated numerous cases involving designs of containers for alcoholic beverages, perfume and other products. These are very often borderline cases where the fundamental principles of trade mark law are tested.
We have assisted in some cases and also devised protection strategies for colours or colour combinations per se as applied to the outer appearance of the product.
REGISTERED AND UN-REGISTERED DESIGNS
The European Union is clearly in the avant-garde of design legislation worldwide. The concepts of individual character and the overall impression of the design are slowly being defined in case-law. The lawyers of LDS stay on top of these development and invest their input into them in Poland.
Pharmaceutical regulatory law
Our pharmaceutical clients also benefit from our understanding of general pharma regulatory law. This is especially important in patent litigation for pharmaceutical products.
PHARMA AND LIFE-SCIENCE
Pharmaceutical and life-science work is one of the most sophisticated aspects of our business. The prosecution practice of our firm involves several hundred pending and granted patents under our supervision. We have often challenged the restrictive practices of the Polish Patent Office with respect to enablement and obviousness at the administrative court and have gained excellent experience in this respect. For our clients our litigation team has tackled several complex cases regarding enforcement of active compound, process and composition patents and interrelated invalidity proceedings.
We provide insight into the realities of the Polish legal system based on many years of representing major brand owners in all anti-counterfeiting procedures.
Polish customs have a good track record of seizing counterfeited and pirated goods not only on the border but also within the country. We are in close touch with the customs administration and their practice as regards:
trainings of customs officers
links between customs and other procedures
the Polish phase of Community wide customs protection schemes
CRIMINAL LIABILITY FOR COUNTERFEITING
In numerous cases, using the penal way assists best to discourage distributors and break the supply chain. We aim at protection of our clients’ interests by use of their rights in the capacity as the injured party in penal proceedings. We also serve our clients’ interests dealing with the practical aspects of changing the Police's, prosecutors’ and courts’ approach to counterfeiting.
Where necessary we coordinate supply of evidence in proceedings and exchange information with relevant State officers.
Whenever it is feasible to track participants of the counterfeiting business and they may be held liable financially, it is sensible to employ the civil route. It gives access to injunctive relief, damages and generally broader remedies. We pay attention to any case when middlemen such as auction sites may be effectively discouraged from participation in that business by a court action.
In many cases it is a sound business solution to acquire exclusive rights or suitable scopes of licenses to patents, designs or brands - rather than to build assets from scratch. Transfer of IP assets must involve a check of the acquired rights and identification of any IP related issues and potential exposures. They should be taken into account from the outset and may have an effect on the whole structure of the transaction. The negotiated concluded agreements should address and secure all relevant aspects of the client’s interests. We also assist clients in IP aspects of larger corporate transactions such as mergers and acquisitions.
In the relatively short history of market economy in Poland some basic concepts are yet to be coined, e.g. what are fair practices in business, how likely the average consumer is to be misled or whether the ownership of some IP rights justifies acting in the detriment of competitors. Therefore the position of the client must always be presented in a well-considered manner in order to succeed. We assist clients on various matters such as:
protection of business names
protection of product configurations
protection of commercial secrets
unfair advertising charges
Our clients can benefit from our experience covering various spheres of copyright law:
drafting and negotiating all types of contracts related to development of advertising works
advising on copyright related issues in marketing and brand design
representing publishers in drafting and negotiating of contracts as well as in contentious cases
litigation in a variety of contentious matters
We see brand building and IP protection as two faces of the same complex process - creating and defending the rights that businesses may have in their product. We have extensive experience providing full service legal assistance for major network and local advertising agencies. Our clients can also draw from deep and competent legal insight while being attentive to the business needs and realities.
Our clients can benefit from professional advice on all legal issues related to marketing communication:
setting a model of cooperation between advertisers and agencies
drafting contracts related to various projects from TV commercials’ production to untypical BTL actions\
acquisition and clearing of IP rights
commercialization of images, talent contracts
complex agreements with celebrities
assessment of conformance of marketing strategies with the law and protected interests of third parties
legal aspects of product marking
personal data protection
providing comprehensive solutions for promotional competitions and lotteries
representing clients in all stages of disputes
Food and beverage regulations
We serve our client’s interests with our general legal expertise combined with knowledge of details related to food manufacturing, marking and marketing as well as our experience of working for new brands as well as for brands with a long tradition on the Polish market.
We assist our clients in their creation of new packaging:
clearing the new design against earlier rights
checking compliance with regulatory laws
acquiring or registering rights suitable for protection