Experience

European and UK IP Law

About

In today’s global economy, companies and organizations looking to protect their ideas and innovations need clear guidance, creative strategies, and a law firm with global intellectual property (IP) experience. As well as practising in the United States, Finnegan has an active IP practice in Europe. Finnegan’s European professionals have active practices at the European Patent Office (EPO), the UK Intellectual Property Office (UKIPO), the European Union Intellectual Property Office (EUIPO), and the UK courts. They also possess a keen understanding of the diversity of laws and practice among the European national systems. This knowledge of the European legal system and how it differs from that in the United States and elsewhere in the world allows Finnegan to effectively counsel its clients on a full range of IP issues and to find cohesive solutions tailored to the needs of companies with global intellectual property interests.

A base in Europe

Finnegan established its European office in Brussels, Belgium in 1993. In November 2013, the office relocated to London, one of the main centres of IP practice in Europe, and a central location that allows us to work side-by-side with our clients. Our London-based professionals can answer clients’ questions in real-time, meet with them in person, and address all of their IP challenges. The lawyers and European patent and trade mark attorneys in our office are multicultural and multilingual, and can represent clients in matters both in Europe and the United States.

Providing educational opportunities throughout Europe

Finnegan routinely sponsors, hosts, and presents at conferences and seminars throughout Europe. Since 2010, we have hosted an annual webinar series focused on issues of particular relevance to European companies. In 2011, we introduced an annual seminar series also focused on timely relevant issues of interest to European countries.

Our attorneys are actively involved in the intellectual property law community, participating in organizations such as the Chartered Institute of Patent Attorneys (CIPA); European Patent Institute (epi); Licensing Executives Society International (LESI) and LES Benelux; German Association for the Protection of Intellectual Property (GRUR); Norwegian Industrial Property Association (NIPO); Association of Patent & Trademark Attorneys in Italian Industry (AICIPI); International Property Owners Association (IPO); International Federation of Intellectual Property Attorneys (FICPI); Association Internationale pour la Protection de la Propriete Intellectuelle (AIPPI); International Bar Association; International Chamber of Commerce, Intellectual Property Institute; and MARQUES Association of European Trademark Owners.

Contacts

Everyone in this practice

Practice Areas

Designs

Our European team assists UK, European, and international clients with their European and UK design portfolios. Finnegan is able to represent applicants for design registration directly at the EUIPO and the UKIPO, and using the Hague system at WIPO.

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EPO Third Party Observations

Third party observations can be filed against any European application or patent for which proceedings are pending, including EPO oppositions and appeals. Our European patent attorneys have extensive experience in preparing and filing third party observations.

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EPO Opposition and Appeals

The EPO opposition procedure offers third parties an opportunity to attack a European patent centrally at the EPO for a limited period after grant.

Our European patent attorneys have have extensive experience before the EPO’s Opposition Divisions and various Boards of Appeal.

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Patent Prosecution

Our London team drafts, files, and prosecutes patent applications at the EPO and UKIPO, and also under the PCT.

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Supplementary Protection Certificates (SPCs)

SPCs can extend patent protection of human and veterinary medicines and plant protection products, including herbicides and insecticides, by up to five and a half years. Finnegan's European attorneys are experienced in handling filings and successfully obtaining SPCs in the UK and across Europe.

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Trade Marks

Our European team assists UK, European, and international clients with their European and UK trade mark portfolios. Finnegan is able to represent applicants for trade mark registration at the UKIPO and using the Madrid system at WIPO.

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United Kingdom Patent Law

Although the EPO is responsible for granting the majority of patents that are in force in the United Kingdom, the UKIPO offers a number of services that are not provided by the EPO. Finnegan's European attorneys are fully qualified UK patent attorneys, and also include Higher Court patent attorney litigators entitled to conduct litigation in the UK courts.

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Experience

Nuvera Fuel Cells retained Finnegan to manage all of the company's IP portfolio assets, which were recently consolidated. Much of the management is focused on the procurement of patents, both U.S. and foreign, directed to various aspects of fuel cell technology. The firm's representation has included providing guidance on inventorship determinations, disclosure agreements, and portfolio landscaping.

Finnegan prepared and prosecuted patents for startup Hutchison Medipharma in the United States for the treatment of metastatic colorectal cancer. Those patents cover a small molecule, fruquintinib, which received approval in China.

Coordinating defense of Abbott's cardiovascular stent products in lawsuits pending in the Netherlands, Germany, the UK, and Ireland, and before the European Patent Office (EPO).

EPO

Oversaw prosecution of VirnetX’s global patent portfolio, which includes 185 U.S. and international patents and pending applications.

Guided Anoto through a successful European arbitration proceeding to enforce a supply agreement for a critical component of Anoto’s products, and then spearheaded a successful effort to enforce the arbitrator’s decision in the United States.

3:16-cv-06209, N.D. Cal., Judge Tigar

California-based ACTON, Inc. received funding from over 700 backers in over 40 countries through its Kickstarter campaign to start production of its smart electric RocketSkates^® roller skates. This fast-moving company, whose innovative personal transportation products blend form and function through cutting-edge designs, has relied on Finnegan to protect its designs in the United States and internationally. After preparing and filing design patent applications in the United States, Finnegan has coordinated the prosecution of counterpart cases by working with its extensive network of international partners across the globe, including in European Union, China, Japan, and South Korea.

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