Having studied the materials of the client and taking into account the fact that protection in the format of a utility model is possible only in a limited list of foreign countries, we conducted a patent search and suggested the inventor improve the technology of applying a protective coating to metal articles in view of the search results.
To protect the modified technology, an application for an invention was drafted and submitted to Rospatent. Subsequently, in accordance with the requirements of Russian legislation, an international application for an invention was prepared based on the above Russian application and filed under the PCT (Patent Cooperation Treaty) procedure. Taking into account the client’s interest in the European market, we chose the European Patent Office (EPO) for the international search.
After receiving a positive opinion from the EPO, the above international application was transferred to the national phases in the patent offices of the countries of the Asian region, as well as to the regional phase in the EPO.
Where applicable, we used the PPH (Patent Prosecution Highway) procedure, and within a year after the end of the international phase, the client’s new technology was protected in the countries of interest.
Strategy
Background
The client received a utility model in Russia for equipment for applying a protective coating to metal articles. European customers showed interest in the above equipment. The client also had the intention to present its technical solution in the countries of the Asian region.
We were able to optimize the client’s expenses and duration of the prosecution of the applications in foreign patent offices, as well as ensure our client a monopoly position for the presentation of the technology in foreign markets.
Result
Practice
Protecting the client's new technology abroad
Protective nano-coatings’ manufacturer (Russia)
Client
See also
Effective rebuff to a brand squatter in Kazakhstan
We protected the interests of a Russian food manufacturer against a brand invader in Kazakhstan.
Restoration of Protection of Illegally Invalidated Patent
We retained the client's patent, initially invalidated based on documents fabricated by a competitor.
Consulting and handling disposal of trademark rights
We provided consultations and carried out the necessary actions to dispose of the client's trademark rights in connection with the business restructuring.
Overcoming the PTO’s refusal to register a trademark
We overcame Rospatent's refusal to register our client's mark by filing a non-use cancellation lawsuit against the cited trademark.
Enforced the company name "I-PLAST" LLC
We analyzed the business of the infringing party and then sent them an official letter demanding they change their company name.