Intellectual Property

"In IP, which is dedicated to innovation, even the most necessary changes are aged in parliamentary committees longer than your favorite whiskey. Under these conditions, we have to be inventive in protecting the rights of clients all the time." – Vitalii Savchuk, partner.

We deal with the range of IP work, from legal advice before registering intellectual property to accompanying the most complex patent disputes in a number of industries, including healthcare and pharmaceuticals. Understanding the risks our clients face, we guide them in a legislative and regulatory landscape. We help protect their intellectual property and comply with a spectrum of local and international laws.

We provide clients with incisive and business-focused advice, which considers all relevant commercial and legal, and even wartime conditions. Recent few years marked for LA Law Firm (Legal Alliance) by victories in long-term and unique IP litigations. As a result of the consideration of such disputes, a new law enforcement practice in the field of intellectual property was created. In the future this may become an example for the settlement of certain issues on the market.

Our IP practice brings together unique lawyers qualified to practice in Ukraine and Central Asian countries, including Kazakhstan, Uzbekistan, Azerbaijan etc. Experience and achievements of the team in IP related matters have been repeatedly recognized by international research guides, including the most authoritative The Legal 500 EMEA, Who's Who Legal: Life Sciences and The Best Lawyers.

SERVICES

We have a full service practice that covers all areas of IP:

• Inventions and utility models
• Trademarks
• Domain names
• Design (industrial designs)
• Copyright
• Trade secrets and know-how
• Competition in IP
• Mediation and negotiations
• IP litigation
• Patent search
• IP portfolio audit and due diligence
• Naming of medicines and other products
• Tax planning of IP transactions
• Fighting counterfeit and piracy
• Contract structuring
• Training of staffs in IP

EXPERIENCE – recent representative projects

• Supported several large anti-counterfeit cases on the transnational corporations on a prejudicial and judicial stages in Ukraine and Kazakhstan.

• Successfully represented an international pharmaceutical company in the Supreme Court concerning the protection of IP rights, confirming the plaintiff’s patent for medicines is valid and canceling the order on the registration of the respondent's medicine (the last was issued with violation of the client's IP rights). The precedent of the Supreme Court defined the practice for the protection of IP rights in pharmaceuticals as the use of the invention was proven, including through the use of equivalent features which was the first successful case of the kind in Ukraine.

• Successfully represented the holding company of a Ukrainian pharmaceutical group of companies in negotiations with the opponent which produces the similar (infringing) product (the same form, design, and chemical composition) by the non-judicial dispute settlement. As a result, the opponent has changed the form and the design of the product and is obligated to alter the chemical composition.

• Performed the audit of the portfolio of IP objects of the pharmacy chain regarding their compliance with the current legislation and possible risks from the opponents.

• Advised on creation of the multiple objects of IP and for mitigation of the possible risks. Drafted agreements of transfer of IP rights and license agreements.

• Protected the rights of the Espumizan™ in the dispute important for Ukrainian case law.
• Protected the rights of a British pharmaceutical company in a patent trolling case by a third party on the use of the utility model’s "QR code reading and applying".

• Represented the interests of a pharmaceutical manufacturer in a claim for invalidation of certificates for trademarks of a brand-name medicine.

• Consulting the telecom business on operating in Ukraine, including the IP aspects.

• Advised for the organization of business in the field of consumer lending.

• Structured transactions related to the creation, transfer and use of rights for complex objects of intellectual property.

• Developed IP rights management model for creating an online and offline educational hub.

• Provided complex legal support of the transfer of trademarks rights for several dozens of ОТС and RX products including the groups of antibiotics, antidepressants and other medicinal products of large pharmaceutical manufacturers.

• Represented a large foreign pharmaceutical company in a dispute over the protection of rights for the patented invention.

• Represented interests in the process of prohibiting the use and registration cancellation of a medicinal product of another international manufacturer.

• Mediated (settled out-of-court) the conflict regarding the rights to the slogan between the two international companies.

• Provided legal support of a multi-stage project for the protection of IP rights for software.

• Represented the interests of a pharmaceutical manufacturer in a dispute on the unlawful registration of a trademark by a distributor in Georgia.

• Conducted patent searches for the active substance of medicines of more than 40 medicines.

• Developed naming for a medicinal product used in ophthalmology that meets the requirements of the law and the protectability of the future brand.

• Participated in negotiations, drafting of documents and legal support of the transaction on partial free transfer of rights for software complex to state authorities.

• Represented a client in litigation on trademark rights and transfer of rights for domain name.