PATENTS

You developed an innovation and wish to protect it?

A patent is an Industrial Property right conferring exclusive protection to a technical innovation during 20 years in a defined territory.

WHERE TO START?

  • First meeting free of charge to discuss your potential needs in the patent field
  • We help you define and develop a global protection strategy that corresponds to your needs by considering every aspect of your project. Our goal is to secure optimum protection for you wherever that protection is needed, at a reasonable cost. Our approach is tailored to your needs, meaning that we invest time in understanding you and your preferred ways of working with us
  • Personalized advice on defining a clear patent strategy best suited to your specific R&D program / business and maximizing the return on investment
  • Pragmatic solutions to defend your patent rights

CORE EXPERTISE

In Life Sciences, the patent case law is constantly evolving. An invention that was considered innovative ten years ago may no longer be considered as such in view of the rapid scientific progress in biology and biotechnology.

For this reason, the patent attorneys at KATZAROV keep up to date with scientific and legal developments so as to be able to provide you with their expertise in obtaining strong patent protection for an invention in this field.

Among others, we have expertise in different sectors such as biologics, biotechnology, oncology, neurobiology and neurodegenerative diseases, protein engineering and formulations, medical diagnostics thanks to biomarkers, personalized medicine, proteomics, metabolomics and genomics, including gene editing, gene therapy and cell therapy.

The drug development process involves high costs, high levels of risk and development through long periods of time. In order to recoup their research and developments expenditures, pharmaceutical companies need to obtain patent protection in every single country where they will be commercializing their drug.

In the pharmaceutical industry, patent applications are filed very early in the R&D process, mainly because the state of the art evolves fast and because earlier patent filings by competitors should be avoided.

Patent attorneys at Katzarov have previous experience in the pharmaceutical industry and assist clients in protecting different inventive aspects of a drug, and use or administration thereof that may occur during the R&D phase and clinical studies, thanks to a very unique patent filing strategy and supplementary protection certificates (SPC) or patent term extensions (PTE).

In addition to pharmaceuticals, patent attorneys at Katzarov assist clients in identifying and protecting inventions in neutraceuticals, such as for a product derived from different combined food sources with extra health benefits or enhanced performance compared to that of their individual components.

The success of a chemical project may be the result of many years of hard work and considerable expense. Patents play an important role in the chemical industry for protecting the results of research and development.

A new chemical entity should be claimed as a compound or composition of matter, i.e. in using the generic Markush structures. In addition, process claims defining the methods for making and using the new composition, “product by process” claims or new formulations may be considered.

The chemical technical field has a broad definition and includes, among others, analytical, organic, inorganic, physical and polymer chemistry, computational chemistry, paints coating and pigments, cosmetics, material science, chemical engineering, dyes and inks, the oil industry, textiles, nuclear, agrochemistry, electrochemistry, and so on.

Our patent attorneys, who have expertise in that domain, master these technologies thanks to their chemical engineering background.

In many jurisdictions, a patent cannot protect a therapeutic method/treatment or surgical method. Therefore, the solution to protect the core invention is to claim the device used to perform the treatment or apply the surgical method, in other words: protect the medical device instead of the method.

The MedTech covers any technology that can be used in a care setting, which covers disposables, capital equipment and surgical procedure innovations, through to implant technology, biomaterials and connected health IT. In other words, MedTech accounts for all devices with which a patient can be diagnosed or treated.

It is therefore critical to have a thorough and reliable understanding of life science and mechanics/electronics to handle MedTech cases. At KATZAROV, MedTech specialized patent attorneys have a deep knowledge based on years of practice both in mechanics/electronics and life sciences to understand your technology and help you protect your MedTech based invention.

Mechanical and electronical inventions are usually the most copied innovations since they are easily subject to reverse-engineering. For that reason, patent protection in this field is highly recommended.

Once created, a mechanical/robotic device or assembling components should be protected by a patent. Frequently, the invention lies in how the components are combined and not so much in one particular component. To that end, the patent will describe the function of the component or the component itself and, at KATZAROV, we will help you identify how to obtain the broadest scope of protection.

In microtechnology, and in particular watchmaking, adequate patent protection plays a crucial role to support a sustainable business model for a watchmaking brand or a subcontractor. This field is very dense in terms of IP so that there is a need to have a deep understanding of both the technics and the prior art to identify the remaining protectable features, either regarding movement or external parts.

Computer sciences/Electronics is one of the most hindered technical fields in terms of patents because of the rapidity of the technological developments. Thus, this domain is one of the most crucial from an IP point of view. Given the high costs of creating new products, it is important to obtain patents to protect your investment and competitive advantage.

Whereas, in the old days, software related products were considered to be protectable by copyright only, with the arising of the 4.0 industry based on AI technology and the huge amount of data available (Big Data), there is an increased need for patent protection of AI based software, for instance in Digital Health or in Mechanics/robotics.

At Katzarov, we follow the latest developments regarding patentability of AI based inventions to offer our clients the most suitable and up to date advice to secure their AI based technology as well as their software technology with a very unique patent drafting method.

Also, the industry of Telecommunication / Security has continuously grown since the last century and its security has greatly been improved with the emergence of new paradigms based on quantum physics and the like. This has generated an entire new patent ecosystem in constant progress, comprising for instance Quantum Cryptography and 5G networks.

Katzarov’s experts have the knowledge and competence to advise and help you in these fields.

OUR SKILLS

  • Patentability search consists in identifying prior art that may be detrimental to the novelty and/or inventive step of an invention and which contributes to assessing the likelihood of securing a reliable patent with the adequate claim scope
  • Freedom to operate search consists in identifying conflicting third parties’ patent rights early on in the technology development process with the aim to reduce the chances of encountering potential obstacles in the commercialization of your products
  • Patent landscaping search consists in outlining the existing technical field – usually during the scoping of the R&D program – and its available parts, in order to provide a clearer picture of innovation potential and thus to yield broader patent protection

Patent drafting calls for high standards of technical knowledge in order to describe the invention combined with a solid legal framework in order to maximize its scope of protection, in light of the existing prior art.

The way a patent application is drafted varies depending on the technical field and, therefore, KATZAROV provides you with the best suited Patent Attorney with the relevant expertise to advise you.

Following the filing strategy discussed with the client, we prepare and file the patent application(s).

  • Once filed, the patent application will go through several steps, including official search, examination and, finally, grant
  • We handle every step to ensure that the maximum scope of protection for the resulting patent is obtained
  • Thanks to our expertise, as well as Katzarov’s Manual on Industrial Property and a worldwide network of trusted partners, we assist you in fulfilling all requested formalities, meeting all deadlines and overcoming inquiries and objections, if any office actions are issued
  • We have special expertise with the European, Russian and former republics of the Soviet Union’s patent offices as well as with the Eurasian Patent Office

Once a European Patent is granted, protection is available in all 38 EPC member states  – plus 2 extension states and 4 validation states – countries.

Katzarov offers tailored advice on which group of countries is relevant to validate based on your situation.

Katzarov has the expertise and handles a complete EP validation process in all member state countries, with an accurate and reasonable cost estimate for the entire validation process and end-to-end support for the validation process and the required administrative tasks.

  • We follow any changes concerning your business and ensure that they are reflected before the relevant patent office whenever necessary
  • We advise on mandatory formalities in updating records following M&As, licenses, transfers and/or pledges
  • We prepare all the necessary documents in accordance with local requirements
  • We file and prosecute recordation requests with the patent offices, overcoming inquiries and objections, if any
  • We verify the information in the official documents issued by the corresponding patent offices and attesting to the recordation of changes

Once your patent is granted, your competitors may challenge or bypass your Industrial Property rights.

For 50 years, KATZAROV’s expertise in handling such situations has been enriched, including in representing and defending their clients before the various courts.

From pre-litigation to due diligence and validity opinions, from opposition to appeal management and litigation support, we offer a full range of litigation management services to prepare our clients, build a strong strategy and defend their patent rights.

  • A patent requires the payment of maintenance fees to maintain protection in a specific country. Missing the due date for payment of such fee leads to a loss of rights
  • We ensure the continuity of your patent rights and provide reliable maintenance fee management
  • We docket maintenance fee payments in our management system and remind you well ahead of time
  • We handle the payment of the maintenance fee in all territories that are of interest to you
  • We offer watch services to monitor third parties’ applications, for instance by applicant or by technical field/feature
  • We advise you on appropriate steps to be timely taken in each particular case
  • We assess the strengths, weaknesses, opportunities and threats (SWOT) regarding your patent rights, in connection with your business
  • We review your existing portfolio, as well as your competitors’, and identify any gaps and overlaps in protection
  • We develop the strategy which is appropriate for you, with a clear budget forecast
  • We create different layers of IP protection – combining IP rights (e.g. patent-design or patent- trademark) – to enable you to build a strong IP portfolio and optimize the protection of your intangible assets

FIELD EXPERTISE

The European Patent Convention (EPC) defines a patentable invention in its Article 52(1):

“European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application. 

It is therefore crucial for an inventor or a corporation who innovates to find help and advice from the right patent attorney and, thus, collaborate with someone who masters not only the given patent law but also the technical field in which the invention falls.

Because of the numerous technical fields likely to constitute the cradle of innovation, Katzarov will provide you with a patent attorney mastering your technology, who will work collaboratively with you, objectively analyze your product to determine which aspects may be protected and develop the corresponding protection strategy.