Intellectual Property

The CLTPSJ IP team advises clients on a full-range of IP matters and issues, including:

  • Registration of trademarks, patents and copyrights

  • Opposition to trademark registrations and cancellation of patents and trademark registrations
  • Trademark, patent and copyright infringement and unfair competition
  • Customs recordation and border enforcement
  • Licensing, transfers and assignments

Trademarks, patents, copyrights and other forms of intellectual property (“IP”) are valuable assets of our clients. While these assets are intangible, they are nonetheless valuable property that our clients take all efforts and measures to protect. In providing legal services, we share our clients’ passion in protecting these assets.

We therefore try to learn the business, products and services of our clients so we can provide proper and relevant advice. It is not enough for us to understand what business or industry our clients are engaged in. It is important for us to know, for example, how our client’s products appear in the market, where and how our clients’ products and services are sold and performed, in what forms these are advertised and promoted, the consumers who are likely to buy their products and services, and who our client’s competitors are.

We commit to provide prompt and timely advice as we recognize that the protection of most of our clients’ intellectual property rights is time-sensitive. To this end, inculcated in the members of our department is the discipline to be able to respond to clients’ communications and to attend to their concerns in a timely and efficient manner.

To aid our staff in the performance of their assignments, we have invested in an IP management software to manage IP rights, track due dates and assist in IP lifecycles.

We realize that the strong feelings that our clients have on the strength of their IP rights are equally matched by the opposing party’s strong conviction that our clients’ position is wrong. We therefore endeavor to provide balanced counsel to our clients so they know the strengths and weaknesses of their legal position by which they could come up with an informed decision.

Our clients are some of the big names in high fashion and clothing, top pharmaceutical and chemical manufacturing companies, well-known consumer health products companies, one of the world’s largest oil and gas companies, a 120-year old lighting company, an international motor racing company, a world-famous food seasonings company, one of the biggest cement manufacturing companies, and an industrial building materials company, among several others.

Our department has a full complement of lawyers, paralegals and specialists who are ready to provide a seamless chain of services from application and registration to enforcement and litigation. They are supported by a dedicated staff who handle docketing, monitoring and filing.

Sub Practice Areas

Our trademarks practice team consists of the trademark prosecution group and trademark litigation group.

The trademark prosecution group handles the filing of both national and Madrid Protocol applications towards obtaining registrations of trademarks. If requested, it conducts trademark availability searches to find out if there are prior rights belonging to third parties. In the course of prosecuting the application and once registration is obtained, the team handles the filing of statement and proof of actual use of trademarks and submission of renewal petition to maintain the validity and effectivity of the registration.

The team is well-versed in identifying the likely issues that may arise during the application, thereby avoiding for the client the likely pitfalls that may delay the application. Our team’s vast experience helps ensure that majority of our applications go through a smooth-sailing process.

In the course of the application and maintaining the registration once obtained, our team is perfectly capable of handling the transfer and assignment of trademark application and registration.

The team likewise handles the registration of trademarks with the customs office as part of client’s customs and border protection program.

We are frequently called upon to perform non-infringement analysis not only during a trademark search and prior to the filing of trademark application but also in the course of maintaining the client’s trademark registration.

The trademark litigation group advises and represents clients in infringement and unfair competition actions and in inter partes opposition and cancellation proceedings both in the first instance and on appeal. It can provide advice whether the infringement or unfair competition action should be filed with the trial courts or with the adjudication arm of the trademark and patent office. It has good experience in applying for and obtaining restraining orders and interim injunctions. It also has vast experience in handling negotiations either within or outside of court-annexed mediation to shorten litigation and achieve for the client optimum terms of settlement.

The team has good experience in conducting searches and seizures of counterfeit goods. It has good working relationship with private investigation groups and government enforcement agencies for the conduct of market surveys, confidential investigations, test buys, raids and seizures.

Our patents practice team consists of the patent prosecution group and patent litigation group.

The patent prosecution group handles the filing of both national and Patent Cooperation Treaty applications towards obtaining letters patent for inventions and utility model. The team is well-versed with issues associated with unity of inventions and divisional applications, double patenting and overlapping of claims, patent eligibility of medical uses for known compounds and other related technologies, amendment of claims, revival of abandoned applications, conversion of patent applications to utility model applications, and maintenance of a patent, among others.

If an invention is not patentable, the team can advise and recommend whether the client may be entitled to a utility model registration instead.

Apart from invention patents and utility models, our patent specialists also handle industrial design registrations.

We also conduct prior art searches and provide patentability opinion prior to the drafting of patent specifications. We have been successful in securing patent protection for our local clients here and abroad.

Our team has considerable experience in the conduct of non-infringement or freedom-to-operate search and analysis, which involves a careful review of the records of the patent office and intensive analysis of the relevant documents.

A significant portion of our practice consists of monitoring and maintenance of invention and utility patents and industrial design registrations, such as renewal and payment of annuities, recordal of transfers and assignments and other changes in a patent such as limiting the extent of protection and correcting mistakes or errors in the patent, revival of abandoned patents and patent applications, providing opinions/suggestions on arguments or amendments to secure grant/registration and ensuring that all formality requirements are timely complied with.

The patent litigation group advises and represents clients in patent infringement actions and in inter partes patent cancellation proceedings both at the first instance level and on appeal. It has vast experience in handling cases involving pharmaceutical patents. It can provide advice whether the infringement action should be filed with the trial courts or with the adjudication arm of the patent office. It has good experience in applying for and obtaining restraining orders and interim injunctions. It also has vast experience in handling negotiations either within or outside of court-annexed mediation to shorten litigation and achieve for the client optimum terms of settlement.

Our team has advised clients on claims of and defenses against claims of infringement of copyright to music, books, television program and software.

We have represented clients in copyright enforcement action either as plaintiff or as defendant. Among such clients were a music collective management organization for composers, arrangers and performers, a television broadcasting company, a university, and a food supplements manufacturing company.

We have considerable experience in advising clients on IP rights licensing issues, review of licensing agreements to ensure they are compliant with local laws and therefore enforceable in a court of law, and in registrations of license agreements. As a full service firm, we are in a unique position to provide comprehensive advice considering that most licensing agreements are attended with tax and other non-IP related issues.