IP Advisory Solicitors & Consultants in Edinburgh & London
Many of the Investment deals that we work on relate to technology and intellectual property (IP) rich companies and we have a dedicated IP team who work closely with our corporate team on these investment transactions. This IP support includes an accredited IP specialist, a US attorney, a trademark attorney and several patent attorneys. This allows us to add real commercial value, beyond expected legal input, when it comes to specific technical and IP due diligence issues involving patent and trademark portfolios and issues around freedom to operate where our trademark and patent attorneys can help.
We offer specialist IP consultancy services, beyond legal and contractual issues. This includes specialist support on hand from our trademark attorney and patent attorneys who can add value and insight into IP disputes that relate to trademarks and patents. Many of the cases we have assisted with have had an international element.
Patents are a complex area of the law. We assist clients with advice regarding patent infringement by third parties or the risk of infringement of third party patents. We also provide advice in respect of disputes arising from the registration of patents where the ownership of the innovation being protected by a patent application is disputed.
Our two patent attorney consultants, Michael Ellis and Claudia Duffy, provide consultancy services on the following:
- Investment and M&A intellectual property due diligence and advisory work (including freedom to operate searches and advice on perceived likelihood of success and commercial implications);
- Advice on patentability as part of MBM Commercial’s IP audits;
- Advice and input into intellectual property disputes and litigation; and
- Advice and input into intellectual property contract negotiations.
We have considerable experience in both prosecuting and defending proceedings for trademark infringement and passing off. When acting for pursuers, we can often assist in the first instance by issuing pre-action correspondence with a view to bringing about early resolution and stopping infringing activity without the need for court proceedings. When defending allegations, we seek to provide clear advice on the strengths of any defence available and to seek a resolution on the best terms possible. We also have experience with assisting clients with the proceedings before UK Intellectual Property Office and Office for Harmonization in the Internal Market which administers the registration of Community Trademarks.
Our trademark attorney, Jude Tonner can provide specialist trademark services including:
- Managing international trademark portfolios of clients;
- Drafting, filing and prosecuting trade mark applications through the UK, European Community and Madrid Protocol systems, and in jurisdictions throughout the world via a long-established network of attorneys;
- Trademark clearance searching and advising on potential conflicts of use and registration of new marks from risk mitigation and commercial standpoint, recommending future branding directions and strategies;
- Advice on trademarks as part of MBM Commercial’s IP audits;
- Monitoring of worldwide registers for potentially conflicting marks, advising on third party conflict options, perceived likelihood of success and commercial implications;
- Representing parties before the UK and EU IP Offices, (e.g.- in opposition and cancellation proceedings), collation and submission of evidence of use and accompanying witness statements, preparing statutory declarations and skeleton arguments;
- Advice and input into intellectual property disputes and litigation;
- Advice and input into intellectual property contract negotiations;
- Advising on company names and acting before the UK Company Names Tribunal; and
- Advising on and enforcing eBay’s VeRO IP rights owners programme.