Services

TRAINING

 

As is known, Industrial Property (IP) is regulated by national laws harmonized with International Conventions manage by international bodies such as the World Industrial Property Organization (an agency of the United Nations Organization) or the European Union. In particular, applicable regulations in Italy are found in the Industrial Property Code (IPC) and in some articles of the Civil Code and of the Criminal Code. In particular, the IPC defines and regulates trade marks, inventions, designs and design models, utility models, topographies of semi-conductor products, confidential information and new plant varieties. The IPC also establishes the procedural provisions, the measures against piracy, the methods of acquiring and maintaining industrial property rights, the rules regulating professional practice in the Industrial Property sector. By its very nature, IP is therefore an extremely complex multidisciplinary sector that involves technical and legal, as well as economic aspects. In consequence, an adequate knowledge of IP fundamentals and an awareness of what the effectively offered opportunities are and the restrictions imposed by industrial rights, is becoming an increasingly fundamental requirement for working successfully on the national and international markets. For these reasons, R&A provides training on IP topics tailored to effective business needs and coaching paths for managers and entrepreneurs, aimed at sharing a strategic approach aware of the main topics and tools of IP.

SEARCH AND MONITORING

 

R&A provides search and monitoring services to increase knowledge of the competitive scenario.

In the patent field prior art searches are aimed at disclosing the state of the art in a specific field of technology at a given date. Therefore, they can be undertaken to facilitate evaluation of the patentability of an inventive idea, with regard to novelty and inventive step, but also to verify the freedom to operate of this inventive idea in a given territory. In the first case, when the focus in on patentability, the search can be carried out by looking for relevant information of any kind: scientific documentation, trade press, catalogues, publications of any type, patent documentation. In the second case, only patent documentation must be consulted. In the second case the database of reference consists mainly of patent documentation from states in which commercial exploitation of the inventive idea is effectively of interest, while in the first case the same documentation is usually referred to in order to limit the time dedicated to the search and, consequently, also the respective costs. Patent documentation in fact consists of documents that have been classified so as to be more easily searchable, although it must be borne in mind that it generally remains secret for 18 months after the date of filing of the relevant application (patent) and not all states make it available. Undoubtedly, this analysis is very useful when evaluating the validity of a given patent document, as in these cases the prior art scenario has normally been fully disclosed, due to the fact that the 18 months of secrecy have long since expired. Therefore, it is always advisable to consider the result of the patent search as a photograph of the prior art scenario and, as such, as a rough representation of the competitive situation, the degree of approximation of which can be difficult to define. Therefore, patent searches are one of the elements to be considered to define company strategies for protecting the knowledge gained within the company and for attacking the activity of competitors. R&A carries out patent searches making use of the main national and international databases and, given the complex interpretation of patent documentation, normally accompanies the results of these searches with opinions based on the study of the search results. Therefore, R&A provides: - patentability advice, which provides an opinion on the presence of the requirements of novelty and inventive step of a given inventive concept; and - freedom to operate advice, which provides an opinion on the possibility of freely using the examined inventive concept in a given territorial area.

The periodic monitoring of the patent activity of operators in one or more sectors of interest permits being constantly up-to-date on the most recent technological innovations, to identify and follow the development directions of these sectors and, in consequence, to know about any changes in the group of competitors. R&A carries out patent monitoring using the main databases available and referring to the national industrial property offices of the states of interest.

Prior art searches are carried out to identify trade marks that have similarities or are likely to be confused with a given distinctive sign. These searches are performed by taking into consideration trade marks that are registered, or for which a registration application has been made, in one or more classes of the Nice international classification of products and services. Examination of the prior art search results allow the current scenario to be defined and to comparatively assess the novelty and distinctive character of the examined distinctive sign with respect to previously registered trade marks in the chosen classes. For this reason, it is normally advisable to carry out this search as a preliminary to the registration of a new trade mark. These searches are also useful for verifying the effective validity of a given trade mark. R&A carries out trade mark searches making use of the main national and international databases. The results of these searches can be used to draft a report with: - registrability advice, which provides an opinion on the presence of the requirements of novelty and distinctive character in the examined distinctive sign; and - infringement advice, which provides an opinion on the possibility of freely using the examined distinctive sign in the chosen product and service classes and with reference to a given territorial area.

Each distinctive sign or registered trade mark can be “monitored” in a given territorial area. The purpose is to constantly monitor the evolution in the competitive scenario of this sign, and to detect trade mark registration applications that could be confused with the “monitored” trade mark. This monitoring is carried out by examining similarities between distinctive signs with reference to given product and service classes, in given territorial areas identified according to considerations of a competitive nature. Therefore, this monitoring allows prompt identification of potential infringements of your registered distinctive signs and pre-emption of the effects of the possible coexistence of your trade marks with similar distinctive signs, which could lead to undesirable phenomena of confusion. R&A carries out periodic monitoring on the registration processes of new trade marks using the main databases available and referring to the national industrial property offices of the states of interest.

Each prior art search in the field of industrial design is carried out to check whether a given two- or three-dimensional shape developed for a given product class is identical or similar to a registered industrial design. Examination of the search results allows the shape in question to be positioned with respect to previously registered designs in the chosen classes and evaluation of its novelty and individual character for a given class of the Locarno Classification. For this reason, it is normally advisable to carry out this search as a preliminary to registering a new design. These searches are also useful for verifying the effective existence of an exclusive right for exploitation of an industrial design belonging to a third party. R&A carries out prior art searches in the field of industrial design using the main national and international databases. The results of these searches can be used to draft a report with: - registrability advice, which provides an opinion on the presence of the requirements of novelty and individual character associated with the examined shape; - infringement advice, which provides an opinion on the possibility of freely and economically exploiting the examined shape in a given territorial area.

Each monitoring operation of a given design is carried out with reference to one or more product classes in the Locarno Classification and in a given territorial area. Through this monitoring activity, it is possible to regularly observe the registration processes of new designs and identify industrial designs likely to be confused with the given design. Design monitoring is therefore useful for keeping abreast with evolution of the competitive scenario in the sectors of interest and preventing infringements of industrial designs by third parties. R&A carries out periodic monitoring on industrial designs using the main databases available and referring to the national industrial property offices of the states of interest.

INVENTIONS & UTILITY MODELS

 

R&A provides the following services in the patents sector:

Prior art searches allow the state of the art regarding a given inventive concept to be determined on the basis of already published and effectively available patent documents. The comparative examination of a prior art search allows the characterizing aspects of the inventive concept to be positioned with respect to the known art and to evaluate its patentability. For this reason, it is normally advisable to carry out a search as a preliminary to drafting a patent specification for filing. These searches are also useful for verifying the effective scope or validity of a production restriction consisting of a portfolio of patent documents. R&A carries out prior art searches making use of the main national and international databases. The results of these searches can be used to draft a report with: - patentability advice, which provides an opinion on the presence of the requirements of novelty, inventive step (non-obviousness) and industrial applicability in the examined inventive concept; - freedom to operate advice, which provides an opinion on the possibility of freely and economically exploiting the examined inventive concept in a given territorial area.

Due to their specific nature, patent documents have technical content to which exclusive legal significance is associated in a given territorial area. The technical content concerns a given inventive concept that must have minimum requirements of novelty and inventive step in relation to the prior art in the field. The inventive concept must be presented by means of a language that is clear and in keeping with the practices of the national and international authorities in charge of granting patents. R&A handles the drafting and filing of applications for national patents, both Italian and foreign, of European and international patents (for example according to the PCT process). These patent applications are prepared starting from the technical information received from the applicant.

Each patent process is initiated with the filing of an application and can end with the granting of a patent for the inventive concept described therein, for a part of it or, at worst, with the rejection of the application. In particular, each patent process is managed by the IP Office responsible for the territory concerned. This Office will normally be a national or supranational authority according to the type of patent requested. Patent processes comprise an initial preliminary investigation, conducted by an examiner who identifies the state of the art in the sector and subsequently carries out a substantive examination comprising up to three cross-examination phases. During this examination, the examiner verifies the effective presence and scope of the patentability requirements. R&A handles relations with the national, foreign and international Intellectual Property Offices (EPO, WIPO), from the filing of the patent application to its possible granting, according to a strategy agreed with the applicant. In particular, R&A - follows the examination phase and handles any cross-examination with the patent examiners; - handles any opposition proceedings for grant of patents or appeal proceedings against IP Office decisions; - arranges for payment of the grant fee and annual renewal fees contemplated by current regulations; - keeps each applicant/holder constantly informed on the status of the respective patent case.

Filing of each patent application gives rise to a priority right that lasts 12 months. This right is internationally recognized right and grants the applicant of the original application the right to restrict the activity of examiners who must verify that patentability requirements exist at international level. In particular, these examiners must assess the patentability of applications deriving from the original application, with reference to a prior art dating back at most to the date of filing of the original application. This opportunity allows territorial extension of an exclusive right to be planned within a year from the date of filing of the original application. R&A handles the internationalization processes for patent applications on the basis of strategic choices agreed with applicants and through the tools provided for by national and international reference regulations, in particular, the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT).

The possibility of following the substantive examination processes for patent applications conducted by the Offices in charge of granting national and international patent rights allows the patent activity of your competitors to be monitored more or less in real time. In addition, in situations where the position taken by these Offices is not shared, the majority of international patent regulations provide for the possibility of taking part in the patent processes, both during substantive examination and after granting. R&A, based on a duly agreed strategy: - monitors the given patent application examination processes in real time; - submits prior art documents for the examiners’ attention that are aimed at pointing out the lack of patentability requirements of given applications; - initiates and handles opposition processes to the granting of given patents.

The patent activity of your competitors can be continually monitoring by carrying out periodic investigations according to subject and/or holder. Through this activity it is possible to remain constantly up-to-date on the most recently conceived technological innovations, identify and follow the development directions of sectors of interest and, consequently, to know about any changes in the structure of your competitors. R&A carries out patent monitoring using the main databases available and referring to the national industrial property offices of the states of interest.

Each patent right, whether pending or granted, must be considered valid until proven otherwise, as this right, even after possibly passing a substantive examination, could be lacking in at least one of the requirements foreseen by current regulations. Therefore, in situations where one or more industrial rights impede the development of a given commercial strategy, it might be advisable to check the effective validity. To this end, R&A carries out validity research on applications and granted patents, identifying the most relevant prior art and investigating the patent processes and results of any substantive examinations. This research enables drawing up advice on the effective validity and strength of each patent document analysed.

DISTINCTIVE SIGNS AND TRADE MARKS

 

R&A provides the following services in the trade marks sector:

Prior art searches are conducted to identify innovation of a given distinctive sign in a given territory with reference to given product or service classes. Therefore, the aim of these searches is to avoid the likelihood of confusion with trade marks already chosen by others and of association between companies that use similar trade marks for identical or similar products. Examination of the prior art search results allow the current scenario to be defined and to comparatively assess the novelty and distinctive character of the examined distinctive sign with respect to previously registered trade marks in the chosen classes. For this reason, it is normally advisable to carry out this search as a preliminary to the registration of a new trade mark. R&A carries out prior art searches making use of the main national and international databases. The results of these searches can be used to draft a report with: - registrability advice, which provides an opinion on the presence of the requirements of novelty and distinctive character in the examined distinctive sign; - infringement advice, which provides an opinion on the possibility of freely using the examined distinctive sign in the chosen product and service classes and with reference to a given territorial area.

Utilization of a trade mark that epitomizes company values and communicates them effectively to the public significantly facilitates the implementation of company policies and business development plans. Therefore, when inventing a trade mark, it is important to privilege the choice of a "strong" sign that has a highly distinctive character, so as to be more easily protected from infringement. R&A provides support consultancy for the design and development of strong distinctive signs, right from the first creative requirement. In addition, R&A initiates and handles the registration processes for national trade marks, Italian or foreign, European Union trade marks and international trade marks.

Each trade mark registration process is initiated with the filing of an application for registration in which the sign to be used to identify products or services supplied by your company is described and identified with reference to the classes and categories they are to identify commercially. The application is filed with the competent IP Office of the state or states concerned. The result of the process can end with granting, rejection or limitation of the trade mark. These registration processes generally comprise an examination phase, during which an examiner expresses an opinion on the presence of the requirements for registration in cross-examination with the applicant’s representatives. R&A handles relations with the national, foreign or international Intellectual Property Offices, from the filing of the registration application to the possible registration of the trade mark. In particular, R&A: - follows the examination and international extension processes for a trade mark registration application; - handles any opposition processes posted by third parties or appeal proceedings against IP Office decisions; - arranges for payment of the grant and renewal fees contemplated by current regulations; - keeps each applicant/holder constantly informed on the status of the respective registration process.

The filing of each application for registration of a trade mark gives rise to an internationally recognized right of priority that grants the holder the possibility to condition examination of novelty of identical trade marks for which registration has been requested by third parties in states of interest to the holder. The duration of this right is 6 months from the initial date of filing. R&A handles the internationalization processes for trade mark registration applications on the basis of strategic choices agreed with the applicants and through the tools provided for by national and international reference regulations, in particular, EU regulation 2015/2424 of the European Parliament and of the Council that amends Council Regulation (CE) No. 207/2009 on the Community Trade Mark, which introduces the European Union Trade Mark, managed by the EUIPO, and the Madrid Agreement/ Protocol System on the International Trade Mark, managed by WIPO.

The regulations currently in force in most states and with the European Union provide for the possibility of opposing the granting of a new trade mark that is considered similar or likely to be confused with another party’s sign in the same or similar classes. To that end, the majority of registration processes provide a period of opposition, the duration of which can vary depending on the reference regulations, but which is generally 3 months from the date of publication of the registration application to be opposed. uring this period of opposition, it is possible to intervene in the registration process of the trade mark to be opposed, provided it is possible to prove ownership of a prior right, for example a prior registration or an adequately documented pre-use right for at least one of your trade marks. R&A, based on a duly agreed strategy: - carries out continual monitoring on new trade mark registration applications; - initiates and handles opposition processes to the granting of given trade marks;

The purpose of periodically monitoring a given trade mark is to find new trade marks that are likely to be confused with this given trade mark. This monitoring is carried out by examining the registration processes of new distinctive signs with reference to the product and service classes that are the same or similar to those of the given trade mark and in a given territorial area. Monitoring is therefore particularly useful to keep abreast with evolution in trade marks being registered in opposition to your own, to allow action during the phase of establishing entitlement and consequently to pre-empt the effects of the possible coexistence of your trade marks with similar distinctive signs. R&A carries out periodic monitoring on the registration processes of new trade marks using the main databases available and referring to the National IP offices of the states concerned.

Each trade mark, whether the subject of a registration application or already registered, must be considered valid until proven otherwise, as this right, even after possibly passing a substantive examination, could be lacking in at least one of the requirements foreseen by current regulations. Therefore, in situations where one or more trade marks impede the development of a given commercial strategy, it might be advisable to check the effective validity. To this end, R&A carries out validity research on registration applications and registered trade marks, identifying the most relevant prior distinctive signs and investigating the registration processes and results of any substantive examinations. This research enables drawing up advice on the effective validity and strength of each trade mark analyzed, which, in some cases, is of fundamental importance to prepare legal action aimed at obtaining cancellation of trade marks considered not to have the requirements of validity.

DESIGN & MODELS

 

R&A provides the following services in the industrial design field:

Aesthetic shapes can be registered if they are novel and have individual character. Therefore, all prior art searches in the field of aesthetic shapes are carried out taking account of the industrial designs in at least one category of the corresponding Locarno classification. The aim is to identify any prior art designs having similarities or traits that can be attributed to a given aesthetic shape. For this reason, it is normally advisable to carry out this kind of search as a preliminary to the registration of a new design. These searches are also useful to verify the effective validity of a prior art industrial design. R&A carries out prior art searches in the industrial design field, making use of the main national and international databases. The results of these searches can be used to draft a report with: - registrability advice, which provides an opinion on the presence of the requirements of novelty and individual character associated with a given shape; - infringement advice, which provides an opinion on the possibility of freely using a given shape in a given territorial area.

Through registration of a design it is possible to protect the design of a product or of one of its component as defined by the characteristics of the lines, contours, colours, the surface structure or by the production materials used clearly expressed. Therefore, it is essential to illustrate the design of this product in keeping with the practices of the individual national and international Offices in charge of granting designs. R&A prepares and files registration applications for national designs, both Italian and foreign, for Community Designs and for International designs, starting from the preparatory sketches, drawings or photos of the products seeking protection of their design.

Each industrial design registration process starts with the filing of an application for registration, which can include an examination on the merits that leads to granting or refusal of the registration. In particular, each registration process is conducted by a territorially competent IP Office, which can also be a national or supranational authority according to the type of industrial design requested. R&A takes care of the design process from filing of the application to its registration. According to the agreed strategy, R&A manages relations with the national, foreign or international IP Offices for each registration application filed or pending filing. In particular, R&A: - follows the examination and international extension processes for a design registration application; - handles any appeal proceedings against IP Office decisions; - arranges for payment of the grant and renewal fees contemplated by current regulations; - keeps each applicant/holder constantly informed on the status of the respective registration process.

The filing of each design registration application gives rise to an internationally recognized right of priority that grants the holder the possibility to condition applications for registration of designs in territories of interest to the holder of the original application for registration. This priority right is valid between WIPO member states and lasts 6 months from the initial date of filing. R&A handles the internationalization processes for design registration applications on the basis of strategic choices agreed with the applicants and through the tools provided for by national and international reference regulations, in particular the directives that entered into force at the EUIPO on 23 March 2016 and by the Hague Agreement Concerning the International Registration of Industrial Designs.

Each monitoring operation of a given design is carried out with reference to one or more product classes in the Locarno Classification and in a given territorial area. Activation of the monitoring service allows constant monitoring of the start of registration processes for new aesthetic shapes and identification of industrial designs that could be confused with the design monitored. Design monitoring is therefore useful to follow the evolution in the competitive scenario in sectors of interest and to prevent third parties from infringing your industrial designs. R&A carries out periodic monitoring of industrial designs using the main databases available and referring to the national industrial property offices of the states of interest.

Each industrial design, whether pending or granted, must be considered valid until proven otherwise, although the requirements of novelty and individual character must be studied in order to understand whether granting of registration is probable or is liable to cancellation. Therefore, in situations where one or more design or models impede the development of a given commercial strategy, it might be advisable to check the effective validity. To this end, R&A carries out validity research on design and models, identifying the most relevant prior art and investigating the registration processes and results of any substantive examinations. This research enables drawing up advice on the effective validity and strength of each design and model analysed.

INTERNET AND DOMAIN MANES

 

The Internet and the World Wide Web in particular, increasingly represent indispensable tools for effective business communication. It is therefore of fundamental importance to dispose of a domain name that is easily identifiable “on the Net” and characteristic of the company’s identity. With reference to IP, a domain name is similar to a sign that every company has in its own IT shop window and represents the first element of company identification for anyone who performs a search on the Internet.
R&A provides consultancy for choosing available domain names and follows the registration and renewal processes for all types of domain name. In addition, R&A provides technical-legal consultancy in cases of potential interference between domain names and trade marks.

CONTRACT & LICENSING

 

R&A provides the following services in the contract and licence sector:

The development of commercial agreements is usually preceded by a phase in which the parties involved knowingly identify their expectations and, in particular, identify their points of resistance and the negotiable aspects of talks. By working in this way, right from the first meeting, it is possible to prevent misalignment of the parties’ positions and consequent mutual loss of interest. Once a commercial agreement is reached, it will be possible to define a contract that formalizes the operating methods that the parties have agreed upon, to regulate their collaboration with reciprocal satisfaction. R&A provides support to enterprises in identifying their competitive position and in defining the role that it is wished to play in the competitive scenario of reference, in order to facilitate reaching satisfactory commercial agreements.

After a commercial agreement has been reached, it is necessary to draw up a contract that regulates the economic aspects between the parties in observance of existing regulations in the territorial areas of reference. In particular, when the parties are of different nationalities, the drafting of such contracts requires a thorough knowledge of both IP laws and international processes, and the regulations and any bilateral agreements in force in the states of reference. R&A provides the necessary support to draw up and integrate commercial agreements, with particular attention to the management of industrial and intellectual property rights. In particular, through its international network of agents, R&A is able to meet all needs relating to contracts in any foreign state of interest.

Confidential company information, especially technical and commercial know-how, innovative ideas, projects, models or prototypes of new products always represent one of the fundamental resources of every company. However, the current economic phase, typified by rapid product obsolescence and the continuous quest for innovative solutions, demands sharing this confidential information with a growing number of subjects involved in design and creative activities. It is therefore of fundamental importance to carefully regulate relations with subjects who have access to confidential information, to prevent accidental or culpable disclosure outside of the respective company environment. Furthermore, only in this way will it be possible to foster the creation of a work climate of reciprocal trust between subjects who exchange or have access to this confidential information. To this end, R&A draws up non-disclosure agreement (NDA), tailored according to needs and with the aim of regulating the exchange of confidential information between employees, collaborators and/or suppliers.

Amongst the intangible property of a company, industrial property rights and company know-how represent the “intangible” resources that capitalize the greatest economic and strategic value, and so it is advisable to pay maximum attention to agreements and contracts regarding the acquisition or transfer of ownership of such intangible property. In particular, the drafting of such contracts requires both specific legal expertise in the IP field and technical expertise oriented to the correct assessment of the intangible property in question. Furthermore, when the parties are of different nationalities, the drafting of such contracts requires a thorough knowledge of the national and international regulations concerning competition and free trade. R&A provides support for drawing up and integrating: - Contracts for the assignment, transfer and acquisition of IP rights and company know-how; - Contracts for the acquisition or assignment of licences for IP rights and company know-how. R&A also carries out all necessary formalities for validating the open-ended transfer or licence transfer of IP rights at the competent national or international offices.

TECHNICAL-LEGAL ASSISTANCE

 

R&A provides the following services in the contract and licence sector:

Industrial property rights can be used to interfere with the commercial strategy of competitors, limiting or even blocking their freedom to operate. Therefore, each time an industrial property right that apparently overlaps your present or future activity is identified it is advisable to check its effective validity, scope of protection and territorial distribution. To this end, R&A evaluates the effective presence of requirements of patentability of inventions and utility models and registrability of designs and trade marks and expresses: - validity advice on the effective validity and strength of the analyzed industrial property right; - freedom to operate advice on the possibility of freely exploiting inventive concepts, distinctive signs/industrial designs to implement given commercial strategies in given territorial environments. In addition, R&A provides support in the definition of commercial strategies aimed at preventing possible interference with the rights of others in order to minimize the risks associated with any litigation that may arise.

The extreme competitiveness that distinguishes present-day markets requires close monitoring of competitors’ activities. In particular, the main aim of this monitoring is to analyze the competition in the sector and allow efficient control of the competitive scenario, so as to facilitate the definition of suitable entrepreneurial strategies.

During legal actions that involve the Judicial Authority, at least one of the parties concerned is often motivated to seek an agreement that facilitates solving disputes. Often, the solution closes direct negotiation between the parties and frequently is based on a commercial agreement. R&A provides an integrated technical and legal consultancy for defining a strategy with which to efficiently tackle disputes on IP matters. In particular, R&A: - provides support in cases of precautionary measures and emergency court orders, such as descriptions, sequestrations, injunctions, etc.; - assists its partner’s legal advisors in each stage of the legal proceedings; - provides technical consultancy for its partner, both in the stage of commencing legal action, and during the stages of legal proceedings.