Patent & Trademark Attorneys Patent & Trademark Attorneys Patent & Trademark Attorneys Patent & Trademark Attorneys

1. Intellectual Property Management Services

1.1 Development of business case focused IP strategies
  • IP commercialization strategies based on defined business cases, products, services, technologies and R&D core areas, markets, manufacturing locations as well as analysis of competitors
  • IP protection strategies aligned with IP commercialization strategies under consideration of options for by-passing the claims, available budgets, strategies of potential licensees etc.
  • Development as well as implementation of IP related processes:
Invention disclosure and evaluation-, patent filing-, general stop-or-go decision-, competitor monitoring-, evaluation of dependencies on third party rights (FTO)-, and budgeting-, internal communication- and teaching-process 

1.2 Patent landscape analysis
  • Patent search in relevant technology or product fields
  • Patent statistics/bibliometric analysis: number of patents, dominant applicants 
etc. in different classes per year, per region etc.
  • Citation analysis based on expertise of patent examiners
  • Identification of patent activities in specific technological fields and positioning of own patents (3-D illustration)
  • Identification of innovation potential: trends, market niches and opportunities
1.3 Freedom to operate (FTO) analysis
  • Patent search inclusive first evaluation/prioritization of identified results
  • Legal status analysis of relevant patent families: identification of valid patents
  • Claim chart analysis of selected valid patents or assessment of possible protection coverage of not yet granted but filed patents
  • Evaluation of possible dependencies as well as conclusions and recommendations
1.4 Invention evaluation
  • Assessment regarding legal, technical, economical, financial and strategic criteria as e.g. ownership, patentability, market potential and target customers, chances for return-on-investment, feasibility, chances/risks (SWOT) as well as “soft factors”
  • Development of potential exploitation models and options
  • Recommendations for patenting and exploitation strategy including milestones 
(stage-gate process)
1.5 IP marketing (technology push)
  • Development as well as verification of exploitation strategy
  • Preparation of required documents like technology offer, information 
memorandum
  • Identification and establishment of first contacts with potential partners: Licensees, collaboration partners, investors or intermediaries
  • Follow-up with contact process, development of possible business cases with one or more partners 

1.6 Scouting for technologies or collaboration partners (market pull)
  • Defining the need and development of search profile for technologies, products or 
collaboration partners
  • Publication of search profile on web platform for technology brokering
  • Search in specialized databases as well as participation in partnering events
  • Identification and contacting of potential partners
  • Offers for available technologies, products or collaborations
  • Clearing of IP issues as well as definition of in-licensing strategy 

1.7 Education and training for internal staff in IP related fields
  • Tailoring of training programs: in-house, online and external education events
  • Lecturing at and moderation of workshops, seminars and trainings
  • Mentoring of IP staff and/or R&D collaborators

2. IP protection

2.1 Patent filing, prosecution and administration
  • Preparation and filing of priority applications
  • Preparation and filing of follow-up applications: PCT, national phase in various countries
  • Handling and administration of intellectual property rights: due time monitoring, annuity payments, tracking of patent prosecution process
  • Estimation of required patent budgets for existing and new patents and patent portfolios
  • Advice on patent enforcement strategies
  • Enforcement of patent rights in South Africa and in foreign jurisdictions
2.2 Registered Design filing and prosecution
  • Preparation and filing of priority applications
  • Preparation and filing of follow-up applications: national phase
  • Handling and administration of rights: due time monitoring, annuity payments, tracking of design prosecution process
  • Estimation of required design budgets for existing and new design portfolios
  • Advice on design enforcement strategies
  • Enforcement of design rights in South Africa and in foreign jurisdictions
2.3 Trade Mark filing and prosecution
  • Trade mark availability searches and registrability advice in South Africa and foreign jurisdictions
  • Preparation and filing of trade mark applications in South Africa and foreign jurisdictions
  • Handling and administration of trade marks: due time monitoring, renewal payments, tracking of trade mark prosecution process
  • Monitoring of conflicting trade mark applications and oppositions
  • Advice on trade mark enforcement strategies
  • Enforcement of trade mark rights in South Africa and in foreign jurisdictions
2.4 Domain names
  • Search for available domain names
  • Registration of domain names in South Africa and in foreign jurisdictions
  • Hosting of domain names (in anticipation of website hosting)
  • Enforcement of domain name rights
  • Handling of domain name disputes
2.5 Copyright
  • Advise clients on various forms of copyright protection
  • Agreements related to copyright and transfer of copyright
  • Copyright enforcement in South Africa and in foreign jurisdictions
  • Registration of copyright where applicable
2.6 Common Law rights
  • Enforcement of common law IP rights including rights to well known marks
  • Litigation related to unlawful competition and passing-off

3. Negotiation and drafting of IP and commercial agreements

  • Support in development and improvement of negotiation position
  • Support or leading the negotiation process
  • Development of term sheets
  • Defining, evaluating, revising or finalizing draft agreements
  • Type of agreements: Non-Disclosure Agreement (NDAs), Material Transfer Agreement (MTAs), option agreements, licensing agreements, assignments, escrow agreements, hypothecation agreements, R&D collaboration agreements, contract research agreements, consortia agreements, shareholders agreements, subscription agreements, publication agreements, advertising agreements, sponsorship agreements

4. South African Research and Development (R&D) Tax incentives

  • Identification and assessment of R&D activities that qualify for the SA Tax incentive
  • Financial review of the R&D expenditure in line with the legislative requirements
  • Preparation and submission of all required dossiers for tax incentives to the relevant government departments
  • Drafting of technical motivations to substantiate tax incentive applications to the the SA Government
  • Tax Incentive claim prosecution both procedural and substantial
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Smit & Van Wyk. Inc. | Apex Corporate Park, Persequor Technopark, Pretoria, South Africa | Tel: 012 349 7800 | E-mail: enquiries@svw.co.za