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
Smit & Van Wyk. Inc. | Apex Corporate Park, Persequor Technopark, Pretoria, South Africa | Tel: 012 349 7800 | E-mail: enquiries@svw.co.za
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