Intellectual Property

Alerion’s Intellectual Property team will assist clients in setting up the necessary legal framework to generate value from their intangible assets.

Our team provides clients with advice and litigation support whether they are a start-up, an innovative company, an entity active in the areas of culture, design or entertainment or more generally a company concerned about its intangible assets, a company with a brand-based business in the French market or operating internationally.

We advise clients on a full range of projects, such as protecting the value of their company, its corporate identity, know-how, designs or innovative ideas, securing ownership of their research, development and other achievements, organizing the use of their work, inventions, software or trademarks, defending their intangible assets.

We provide solutions that include, as needed, the assistance of specialists in other areas of law or tax within our firm, or in other professions (patent attorneys, auditors, bailiffs, etc.), both in France and abroad, through our network of international correspondents.

Protect innovative ideas:
  • Defining strategies to protect IP portfolios (in or out of litigation);
  • Providing support for innovative projects;
  • Carrying out the necessary formalities to protect intangible assets and proof of registration (trademarks, patents, domain names, designs, Soleau envelopes, copyrights, software solutions, databases, site and/or application components and prior rights searches;
  • Drafting contracts that protect know-how and business confidentiality (confidentiality, transfers, etc.);
  • Drafting contracts governing R&D activity (partnerships, technology transfers, co-ownership, consortium, etc.);
  • Securing the transfer of rights to the company in employment contracts concluded with employees (intrapreneurship) and service contracts with external service providers.
Leverage your innovations to generate value:
  • Managing trademark, patent, design and domain name portfolios;
  • Establishing assignment or license agreements for the use of intangible assets (copyrights, patents, trademarks, designs, domain names, software solutions and databases);
  • Establishing contracts for the production, co-production, financial participation, publishing, distribution or use of copyright-protected works (audiovisual works, cinematographic works, multimedia and video games, and new media);
  • Carrying out audits of IP portfolios to assess and add value to intangible assets.
Defend your rights and interests for your innovations:
  • Conducting trademarks and domain names watches;
  • Defending and protecting image rights and privacy;
  • Undertaking opposition proceedings in respect of trademark applications and replies to third party oppositions and objections by national intellectual property authorities;
  • Negotiating coexistence contracts or settlement agreements to end disputes over intangible assets;
  • Gathering proof of intellectual property rights infringements (bailiff’s reports);
  • Executing counterfeit seizures and provisional measures to protect intangible assets (letters of formal notice before litigation on the merits);
  • Initiating legal proceedings (infringement, claims, cancellation, unfair competition, parasitism, violation of know-how or business secrecy) or use of mediation as an alternative dispute resolution method;
  • Providing assistance before the National Commission on Employees’ Inventions (CNIS), recourse before the National Institute of Industrial Property (INPI) and the EUIPO.
  • Strategic advice in the frame of a rebranding operation (new brand and new company name) of a French group working in more than 30 countries worldwide.
  • Assistance in the video game sector in order to secure assignment of rights of multimedia works.
  • Negotiation and drafting of co-existence agreements following the filing of a challenge against the registration of an EU trademark introduced by a third party based on an alleged anteriority.
  • Regular participation in due diligence audits conducted by Alerion’s M&A department to analyse clients’ intellectual property assets (seller or vendor).
  • Pre-litigation in the field of image protection and violation of private life to obtain an indemnification for a client.
  • Assistance to a client to establish specifications for obtaining a quality label of sustainability.