Secerna

The attorneys at Secerna are highly experienced in the core disciplines of drafting, filing and prosecuting patent applications in a wide range of technologies. Our attorneys have worked with multi-national corporations, large companies, SME’s and academic institutions and offer a tailored approach to securing patent protection that is selected according to the client’s wishes and commercial situation. We understand that each client is unique and will come to us with their own requirements. At every step, these requirements will be at the heart of the advice we provide.

We recognise that identifying new inventions and suitably defining them in a patent specification at the outset can ultimately be the key to strong patent rights. We therefore work closely with clients to characterise new potential inventions and determine how best to protect them. Thereafter, based on discussions with the client, we advise on suitable filing strategies, draft patent specifications and lodge these at appropriate patent offices. In addition, we establish a clear communication channel with the client to determine the ongoing scope of protection and geographical coverage sought and how best to achieve these aims to ensure that the resultant granted patents are of maximum commercial value.

Each jurisdiction has its own peculiarities and Secerna’s attorneys have the knowledge and experience to navigate any pitfalls and exploit any given opportunities. Our attorneys are well-versed in representing clients at the UK Intellectual Property Office, European Patent Office and, via trusted overseas agents, national Patent Offices around the world. Particularly, our attorneys have an intimate knowledge of filing and prosecuting patent applications under the Patent Cooperation Treaty, the European Patent Convention and many national patent laws. This includes, when necessary, representing client’s interests at hearings and other forms of oral proceedings.

As the value of Intellectual Property becomes ever more significant as part of any commercial transaction, it becomes ever more important that a competent and detailed due diligence exercise is carried to identify strengths and weaknesses of an IP portfolio. Such exercises are carried out in preparation for mergers, acquisitions, funding submissions, market listings and re-financing rounds.

The attorneys at Secerna have a wealth of experience in the provision of due diligence services, including the preparation of Due Diligence Reports in all areas of Intellectual Property for all types of organisations and over a wide range of technological disciplines. The due diligence services we can provide range from straightforward ownership checks to fully comprehensive assessments of the infringement risks associated with a product range or service, validity issues associated with identified IP rights, complex transactional concerns and the identification of future IP opportunities and risks.

Due diligence may also be carried out on an ongoing basis to continually clear the way as new products and services are brought to market and as new competitors are identified. At Secerna, we are well versed in this process and can offer a tailored, commercially minded service responsive to any client requirement. Carrying out such due diligence, whether on a one off or ongoing basis, minimises risks and maximises opportunities should the prospect of litigation arise. Under such circumstances, the attorneys at Secerna can provide a full litigation support service including instructing counsel and case management.

We recognise that from time to time the validity of a key patent can be of the utmost concern. Sometimes a competitor patent will represent a threat or block to progress and its revocation or amendment is necessary. In the case of a European patent, one way this can be achieved is through the use of the Opposition procedure at the European Patent Office which allows the validity of granted European patents to be challenged centrally. In preparing and filing such an Opposition, the attorneys at Secerna will first determine the commercial relevance of the patent in question, any perceived weaknesses and then advise on a suitable strategy for achieving a successful outcome.

Conversely, third parties may from time to time initiate Opposition proceedings in an attempt to revoke or amend a client’s European patent. In these circumstances, our attorneys will undertake a comprehensive analysis of the Opposition and its strengths and weaknesses and develop a strategy for defending the patent accordingly.

The attorneys at Secerna have considerable experience in both the preparation and filing of Oppositions and also the preparation and filing of submissions in response to such Oppositions, including representing clients in multi-opponent proceedings. Such preparation may include the securing of scientific evidence, preparation of expert witness statements, the development of prior art searching strategies and development of legal argumentation based on current case law. We pride ourselves on providing tactical advice which keeps the client’s interests uppermost at all times.

Secerna is able to offer an extensive IP portfolio management service to all sizes and types of organisation so as to create and extract maximum value from an organisation’s IP. Our attorneys can provide management services for both developing and/or mature IP portfolios. We can advise on ways to grow a portfolio so as to maximize its perceived strength or alternatively, ways to slim down the portfolio so as to control overall costs. At all times, the client’s commercial and budgetary considerations are at the forefront in any proposed strategy.

Our attorneys have considerable experience in the management of global IP portfolios including the development of new invention identification schemes, coordinated filing campaigns and centralised prosecution strategies. We are also able to advise on the geographical reach and ambit of the IP rights to ensure that any pursued rights match current and future business activities and ambitions.

Secerna is also able to carry out audits of an organisation’s IP portfolio. This can be either as a one-off event or on a regular ongoing basis. Audits can be used to identify where efficiencies may be made, as well as determining possible licensing opportunities and potential gaps or duplication in coverage. In addition, we can carry out reviews to identify previously unutilised or unrecognised inventions and other IP rights which represent opportunities to strengthen a portfolio.

Design laws have been established around the world to protect the look and shape of a product. In the UK automatic protection may be available on the creation of any new design. However, it is advisable to take positive steps to register a design since registered rights are generally easier to enforce. We can advise on which aspects of a product may be protectable and how those identified aspects may best be represented so as to maximise protection.

We can assist in the filing of UK registered design applications, as well as registered Community Design applications which are single design registrations that cover all EU countries. Registered Community Designs are exclusive rights which protect the outward appearance of the whole or part of a product and which result from the features, such as the lines or contours, of the product itself and/or its ornamentation.

As design registrations are territorial by nature and thus design protection may be required in different countries, the attorneys at Secerna work with trusted overseas agents to secure design protection abroad. We will give expert guidance on strategy, timing and costs to ensure that the design of the product is protected in key markets.

A trade mark is a sign used by a business to distinguish their goods or services from those of their competitors. Typically a trade mark will consist of a word or device (often described as a logo). More unusual signs, for example, colours or sounds can also function as trade marks.

Registration of a trade mark in a country provides an owner with the exclusive right to use that mark for the goods or services for which it has been registered in that country. Registration is a significant deterrent to other businesses and provides incontrovertible evidence of a claim to legal rights. Marks which have been used and which have acquired a reputation may also enjoy legal protection in a number of countries; however, it is typically easier to enforce a registered trade mark against unauthorised use.

Copyright provides protection for original "works" including literary, dramatic, musical and artistic works, published editions of works, sound recordings, films and broadcasts.  Copyright is an automatic right which comes into existence when any new work is first created.  Typically, the copyright in a work endures for the life of the author of the work plus seventy years.  However, it is to be noted that special rules apply to the duration of some types of copyright, for example, sound recordings and broadcasts.

In many countries, including the UK, there is no mechanism for registering copyright. However, in other countries, for example the USA, it is possible to register copyright works. To obtain the full benefit of any copyright protection it is key to show ownership of the copyright. Maintenance of good records of the circumstances in which new copyright works are created is therefore advisable.