Юридическая фирма VERBA LEGAL

Intellectual Property

The Intellectual Property Practice offers consultation to various industry clients on protecting and monetizing intellectual property.

Intellectual Property

Our Intellectual Property Practice advises clients on various matters relating to intellectual property management and complex technology-related transactions and conducts intellectual property audits and checks to verify the integrity of intellectual property rights.

Our team represents clients in Russian courts and Rospatent, the Russian Patents and Trademarks Agency, in relation to various disputes over intellectual property rights, including trademarks, patents and copyright items. Additionally, we act for our clients in a wide range of unfair competition cases.

Our experts assist clients in developing their intellectual property portfolio and registering trademarks and patents to inventions and know-how.

Clients of our Intellectual Property Practice include pharmaceutical companies, agro-industrial conglomerates, IT companies, chemical groups, automakers, oil & gas and heavy machinery companies, FMCG sector companies, investment holding companies.

Services

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Comprehensive transactional management involving the transfer of intellectual property rights, including licensing and sale agreements

Development of intellectual property rights protection strategies

Protection of intellectual property rights, including representations in the Chamber for Patent Disputes, Intellectual Property Rights Courts, and antitrust authorities

Intellectual property legal due diligence

Preparation of documentation to verify the integrity of intellectual property rights

Assessment of a company's existing intellectual property management and protection policies and procedures

Registration of intellectual property rights

Preparation of legal opinions and memoranda on various intellectual property matters

Holding seminars, workshops and intellectual property trainings for clients and their employees

Experience Highlights

Protection of Rights and Litigation Proceedings

Advising:

Gazprom Neftekhim Salavat LLC in a RUB 300,000,000 patent dispute over an employee's invention;

a major Russian vegetable oils producer in a case over the similarity of packing designs brought by the client's key competitor to the FAS of Russia; proceedings in the case were discontinued in respect of all the claims;

a well-known Russian music band in a case over cancellation of trademarks for non-use (Case No. SIP-226/2014);

Yandex LLC in a number of cases over non-use cancellation of trademarks belonging to Afisha Company LLC;

Yandex LLC in a precedent-creating case over the Yandex-Afisha trademark in a series of related cases; the key case (i.e. Case No. SIP-591/2020) set a precedent for application of Paragraph 10 of Article 1483 of the Russian Civil Code;

a client in connection with the development and implementation of the strategy to challenge a competitor's confusingly similar trademark;

a Russian coder in a precedent-creating case over infringement of the rights to software involving one of the major international software developers; the case reached the Russian Federation Constitutional Court which upheld our client's position;

an applicant in a precedent-creating Case No. SIP-735/2018 over inadmissibility of voluntary modification by Rospatent of the status of a non-protectable element of a trademark; the applicant's position was upheld by the Presidium of the Intellectual Property Rights Court;

a pharmaceutical company in a compulsory license case where a plaintiff claimed the right to use the invention on the basis of an alleged insufficient use in the Russian Federation;

a client in a series of related disputes with the Russian antitrust authorities and Rospatent's Chamber for Patent Disputes in a case over unfair trademark registration by a former partner and claims to discontinue a competing company's operations.

Transactional Support

Advising:

an anti-Covid drug developer and manufacturer throughout the life cycle: structuring technology transfer and production process localization transactions in more than 20 jurisdictions, getting the drug registered in 70+ countries as well as concluding over 150 agreements with foreign partners with special focus placed on the protection of intellectual property rights;

Sanofi on its successful disposal of a drug portfolio taking into account the special characteristics of intellectual property items and the specifics of drug regulatory regimes, antitrust restrictions and commercial structuring;

Binnopharm Group in one of the largest asset deals in the Russian pharmaceutical market by asset value;

a party to a transaction envisaging the acquisition of rights to scoring software, including structuring the transfer of rights with a reverse license to other territories, assisting the client in dealing with technical matters and software upgrades;

a manufacturing company on production localization issues arising in the context of its activities in India, China and South Korea;

a startup in the field of medical decision support systems using embedded artificial intelligence;

a chemical company in conducting an audit of employees’ inventions, checking whether the rights to the trademarks, patents and software were good and valid, working out recommendations on how to have the relevant inventions registered and execute agreements with contractors as well as rendering legal support for a transaction envisaging the acquisition of production technology;

parties to a major project involving the granting of exclusive rights to patents in the territory of the Eurasian Economic Union;

a company conducting a legal audit in the field of agricultural production;

clients on issues arising in connection with the disposal of intellectual property amid counter-sanction restrictions.

Trademark Registration and IP Management

Advising:

Russian and foreign clients on having several hundred trademarks registered, where as part of the project we managed to successfully overcome refusals to register, including in the Chamber for Patent Disputes of the Russian Federal Service for Intellectual Property, Patents and Trademarks;

a pharmaceutical company in assessing the prospects for overcoming opposition when having its trademarks registered in Kyrgyzstan, Kazakhstan, Uzbekistan and India;

one of the world's largest online banks in managing its extensive intellectual property portfolio;

clients on the matters relating to the management of intellectual property amid sanctions and counter-sanction restrictions, the protection and registration of trademark rights including the extension of foreign registrations;

a client in checking the designations for the purposes of having its trademarks registered and advising on the revisions designed to ensure the registrability of trademarks;

a digital entertainment platform in drafting license and sublicense agreements with CIS-based companies including developing a contractual model for the transfer of rights to software taking into account the preferential regime for IT companies operating in the region, as well as drafting user agreements and confidentiality policies for the domestic and foreign markets and having a series of trademarks registered in order to protect the brand;

a pharmaceutical company on patenting inventions and having its trademarks registered in more than 70 countries in connection with the development of its coronavirus vaccine;

a foreign company holding the rights to the world auto racing championship’s visual identities in protecting its trademarks in Russia and counteracting the proliferation of counterfeit products.

Who will be working with you

Our team