De Simone & Partners

Approach

• Advice and support for patent strategies and prior art searches

• Drafting, filing and prosecuting patent applications worldwide

• Maintenance fee schedules and payments

• European Parliament-granted patent validations in Italy and other engineering, procurement and construction (EPC) contracting procedures

• Oppositions and appeals before the European Patent Office (EPO)

• Patentability / validity and infringement opinions for pre-litigation stage and as ex parte expert

• Freedom to operate opinions

• Enforcement of patent rights, including legal actions before national courts

• Nullity actions with national courts

• Expert witness testimonies in patent litigations

• Drafting, filing and prosecuting of national and European Community Certificates for Plant Varieties

• Drafting, filing and prosecuting of Supplementary Protection Certificates (SPCs)

• Patent strategy advice for startups and investors

• Worldwide management of patent portfolios

• Regular client reports: budgets, due dates, strategy and investor meetings

Approach

Approximately 90 % of prosecuted cases are in the chemistry, pharma, biotech and life science technical fields including:

• Biomedicine

• Pharmaceuticals

• Diagnostics

• Life sciences

• Biotechnology

• Nanotechnology

• Chemistry

• Medicinal chemistry

• Formulations

• Cosmetics

• Alloys

• Polymers

• Nutraceutics

• Plant Varieties

• Food and food supplements

• Medical and Surgical Device

Other areas of prosecutorial action include:

• Mechanics

• Electronics

• Telecommunications

Results & benefits

• First filings: Italian and European applicants

• 90% of European Parliament representation is for Italian applicants

Approach

• Advice and support for trademark strategies and anteriority searches

• Filing, prosecuting and administering trademark applications and portfolios worldwide

• Actions before the Italian and San Marino trademark offices (TMOs), European Union Intellectual Property Office (EUIPO) and World Intellectual Property Organization (WIPO)

• Instructions for foreign associates

• Trademark oppositions and appeals before the Italian and European TMOs

• Nullity actions before national courts

• Enforcement of trademark rights, including legal actions before national courts

• Counsel on distribution, franchising and licensing for contracts

• Due diligence in mergers and acquisitions (M&A) operations

• Coordination of anti-counterfeiting and customs processes: trademark customs recordals, parallel imports and seizures

• Consideration of Italian criminal and civil courts’ proceedings and injunctions concerning trademark and design cases

• Domain name registration and maintenance

• Alternate dispute resolution (ADRs) services both as complainant/defendant representatives and as arbitrators

Approach

• De Simone & Partners manages the trademark portfolios of clients in the following industries: fashion, mechanics, electronics, pharmaceuticals, food and beverage, software, oil, entertainment, telecommunications and others.

• De Simone & Partners focuses on the luxury industry, assisting famous Italian and international fashion and jewelry brands to protect and enforce their IP rights worldwide.

• By assisting major Italian and foreign clients with their IP, legal and regulatory issues, De Simone & Partners has acquired extensive expertise in the energy and food and beverage sectors.

• Within the sports industry and those operations related to the Olympic Games, De Simone & Partners: 

  • Assists in managing ambush marketing during the Olympic games in support of sponsors’ rights

  • Offers specific expertise in drafting contracts for sports authorities

  • Advises on the protection of design and patentability of sports equipment

  • Provides training assistance in industrial and IP matters related to major sporting events