19
WTS RZECZNICY PATENTOWI | WTS PATENT ATTORNEYS

WTS PATENT ATTORNEYS

Embed Size (px)

DESCRIPTION

WTS Patent Attorneys' folder

Citation preview

Page 1: WTS PATENT ATTORNEYS

WTS RZECZNICY PATENTOWI | WTS PATENT ATTORNEYS

Page 2: WTS PATENT ATTORNEYS

The WTS Partnership is a patent attor-

ney practice whose goal is to provide

aid in all matters connected with the

protection, transfer and commerciali-

sation of intellectual property rights.

The partnership was formed in 2002 by

three patent attorneys who combined

their experience, gathered over sev-

eral years, from working at other pat-

ent agencies. The patent attorneys

representing our practice are licensed

to represent clients in matters relating

to the protection of intellectual prop-

erty rights before Polish administrative

bodies, as well as their counterparts in

the European Union, meaning the Eu-

ropean Patent Offi ce (EPO) as well as

the Offi ce of Harmonisation of the In-

ternal Market (OHIM). Our fi rm has of-

fi ces in Wrocław and Warsaw, and the

Munich offi ce opened in 2004.

The Partnership

Munich

Due to the professional qualifi cations of our partners, since its inception the partnership has specialised in the pro-tection of intellectual property rights in the biotechnology, chemistry, phar-macology and medical sectors, as well as in trade mark cases. In 2008, as a result of accepting a new associ-ate, we also began to specialise in the protection of computer programs and solutions in electronics.

Our services include the prepara-tion and prosecution of patent appli-cations, utility models and industrial models; registration of trade marks in Poland and abroad; registration of novel plant varieties; representation of parties before appropriate courts in all contested matters and in connec-tion with the infringement of exclusive rights; patent or trade mark invalida-tion proceedings as well as evaluat-ing the possibilities of successfully con-ducting the above proceedings.In matters concerning the commer-

cialisation of IP, our fi rm aids compa-nies in fi nding partners, securing the rights of parties participating in trade negotiations as well as in the drafting of contracts and agreements.In presenting you with this small folder, we would like to demonstrate select examples of our services. We would

Page 3: WTS PATENT ATTORNEYS

Warsaw

Wrocław

also like our potential clients to know that we initiate any relationship with them by attempting to understand their needs and requirements. For this reason, our services are always tai-lored to the particular requirements of each client.We would also like to present our team. The staff of WTS Patent Attorneys has al-ways developed along with the fi rm’s growth. In organising and attending various courses, we continually aug-ment our skills and abilities. This is the direct result of our conscious choice to focus on the life science and pharma-ceutical sectors, and ours is currently the largest specialist team in Poland. We strive to meet the expectations of the ever-growing number of inno-vative companies in Poland, and to actively participate in their develop-ment.

We invite you and your Company to make use of our services in the fi rm be-lief that your success is our success.

Page 4: WTS PATENT ATTORNEYS

Patents and utility models

WTS Patent Attorneys aids its clients in

all procedural and legal matters re-

lating to European, international and

Polish patent applications, patents,

and utility models. Furthermore, we

cooperate with numerous foreign at-

torneys to represent our international

clients in Polish and European pro-

ceedings dealing with the protection

of intellectual property rights.

Our services include the following:

• patent queries in order to determine the

extant state of the art and the legal status

of third party applications;

• evaluation of the possibilities of obtaining

legal protection for a given technical solu-

tion or trade mark, examinations for pat-

entability;

• evaluation and rendering of opinions on

marketability and determination of the

scope of any existing exclusive rights of

third parties;

• legal and technical assistance in matters

of licensing, selling and making-available

of exclusive rights and know-how, particu-

larly:

◦ aiding in the preparation of offers for

investors,

◦ searching for investors,

◦ estimating the value of non-material

property,

◦ participating in negotiations;

• assistance in the selection of an optimal

patent strategy;

• preparation and verifi cation of patent

and utility model applications;

• fi ling of patent and utility model appli-

cations in Poland and abroad, and su-

pervision of application proceedings. In-

ternational patent applications may be

submitted directly as international appli-

cations at the national level, or regionally

(i.e. European Patent applications), or as

international applications within the con-

fi nes of the PCT;

• preparing and fi ling non-patentability

statements/opposition suits as well as ini-

tiating invalidation proceedings against

in-process or granted patents before the

Polish Patent Offi ce or European Patent

Offi ce;

• obtaining additional legal protection for

medicinal products and phyto-protect-

ants (i.e. Supplementary Protection Certifi -

cates (SPCs)).

Page 5: WTS PATENT ATTORNEYS

Trade marksValidations of European Patents in Poland

WTS Patent Attorneys assists clients

in all procedural and legal matters

involved in the fi ling, opposition, in-

validation and appeal procedures

pertaining to Polish, European and In-

ternational trade marks. Furthermore,

we cooperate with many international

agencies to represent our foreign cli-

ents in national matters related to the

protection of their trade marks.

We off er our professional assistance in

the procedure for validating granted

European Patents before the Polish Pat-

ent Offi ce. European patents take ef-

fect in designated countries no sooner

than upon validation of granted pat-

ents at national Patent Offi ces.

Our services in this regard specifi cally encom-

pass the:

• evaluation of the registrability, in Poland,

of trade mark applications made under

the Madrid System and the Community

Trade Mark System;

• offering of opinions regarding similarity

and identity with earlier trade marks;

• submission of trade mark applications and

supervision of the proceedings;

• fi ling of appeals should any international

applications be rejected;

• maintenance of the protection of exclusi-

ve rights;

• negotiation of agreements relating to co-

existence;

• supervision of courtroom proceedings re-

lated to industrial property law and com-

petition laws as well as appropriate inter-

national agreements (TRIPS).

Poland is not a party to the London Agreement.

Therefore, in order to validate a European

Patent in Poland a translation of the granted

patent into Polish must be fi led at Polish Pat-

ent Offi ce in the three months from the date

of publication of a Patent in the European

Patent Bulletin.

Moreover, it is possible to obtain provisional

protection before the grant of a European

patent which requires fi ling Polish translation

of claims.

We have highly-qualifi ed translators and consult-

ants having a long practice in making technical

translations. Since accuracy of translation is of

particular importance with regard to ultimate

scope of protection conferred by a granted

patent each translation is checked by our at-

torneys with professional expertise in a particular

technical fi eld and in patent litigation.

Page 6: WTS PATENT ATTORNEYS

Patent searches

The decision to obtain patent protection for

one’s technical solutions or to market them

should be based on the minute knowled-

ge of the state of the art and extant exclu-

sive rights of other parties.

A patent search is performed to determine the

type and scope of technical solutions related to the

solution in question and ascertain the legal status

thereof. The results of such a search may be used

to draft a patent application or in the design of a

novel technology. The conclusions obtained during

patent searches often allow one to avoid unneces-

sary expenditure on research and development,

on imported technologies, or on remuneration for

owners of infringed patents. In a competitive mar-

ket, the common usage of patent protection forces

entrepreneurs to possess extensive and up-to-date

knowledge of protected solutions. Such information is

essential for making informed decisions, particularly

during project design, negotiations with technology

suppliers and market entry.

The scope of research services offered by WTS en-

compasses:

Patent purity searches

• general, relating to the initial framework of

a project, such as the active substance of

a drug composition, its polymorphs, syn-

thesis pathways, initial patent status, and

information on SPC protection in individu-

al countries;

• detailed, relating to a particular techni-

cal solution, i.e. a drug composition, tech-

nology, product, or chemical compound

synthesis pathway;

• updating, for checking on new solutions

since the last general or detailed search;

• monitoring of the competition, supervision

of the activities and development direc-

tions undertaken by the market competi-

tors based on published patent applica-

tions:

◦ general, relating to an area of technol-

ogy, such as an IPC class referring to a

particular fi eld,

◦ detailed, encompassing indicated

market competitors.

Patent searches, performed on the basis of data

supplied by the Client within the confi nes of a

confi dentiality agreement, are performed using

public domain data sources, such as national or

regional intellectual property offi ces, as well as

databases such as Delphion or Chemical Abstract.

The monitoring frequency and scope are deter-

mined ahead of time with the Client.

Page 7: WTS PATENT ATTORNEYS

Often, a serious risk of infringement of

the exclusive rights of a third party is

revealed as a result of a patent search.

An in-depth comparative analysis of

the researched technology vs. that

protected by third party rights often in-

itiates defensive activities against any

possible prohibitions on the commer-

cial use of the client’s research.

Infringement of third party rights is a particu-

lar concern for the pharmaceutical industry,

often deciding on the fate of the market en-

try of a product. This is particularly evident in

the case of generics, where we increasingly

often see infringement risks with patents pro-

tecting particular aspects of manufacturing

medicines (i.e. particular polymorphs, meth-

ods of manufacturing an active substance or

its specifi c salts and crystalline forms, as well

as dosing methods and schemes).

To avoid the often-unjustifi ed charges of in-

fringement and the legal consequences

thereof, i.e. a sales ban as a result of an in-

junction obtained by the rights holder, we

suggest a defensive legal strategy. We pos-

sess an experienced, multi-disciplinary team

of specialists who possess both the necessary

procedural experience, as well as the techni-

cal education required to pursue the subject

matter.

To strengthen and protect our Client’s market

position, we pursue complex legal strategies

(“torpedo strategies”) which include the ini-

tiation of declaratory proceedings to deter-

mine non-infringement of third party rights,

whilst running simulataneous limitation or in-

validation proceedings before the Polish Pat-

ent Offi ce.

In effect, our procedures give our clients le-

gal protection for their marketing activities

against any possible charge of infringement

of their competitors’ intellectual property

rights. Moreover, this process results in an im-

proved negotiating position for the Client for

future licensing or settlement operations.

Page 8: WTS PATENT ATTORNEYS

Support of the investment process

We provide consulting services to enti-

ties who are either planning to invest,

or are already investing in, innovative

enterprises. By carrying out IP due dili-

gence (i.e. comprehensive audits) re-

lating to industrial property rights, we

are able to assist investors in identify-

ing and evaluating the innovativeness

of technologies being reviewed.

As part of the audit, we also determine

the strength of the portfolio of exclu-

sive rights for a project as well as the

possibility of strengthening it further

(patentability). Furthermore, we evalu-

ate the stage of development of com-

peting technologies as well as the risk

level of collision with third-party exclu-

sive rights (freedom-to-operate).

The expertise which we provide makes

it possible to conduct an investment

process successfully.

Sound investment into novel technologies is

impossible without taking into account industrial

property rights. We carry out a complex audit

of intellectual property rights (IP due diligence),

which encompasses two primary aspects:

• evaluation of the strength of the exclusive

property rights portfolio of a given project

and the options for augmenting it (paten-

tability),

• evaluation of the freedom to operate

(patent purity/freedom-to-operate sear-

ches), the goal of which is to identify po-

tential patent barriers which may constitu-

te obstacles to the commercialisation of a

given product or technology.

According to the needs and requirements of

the client, the audit may be enhanced with

the following:

• assistance in the protection of industrial

property rights (drafting and submission of

applications);

• assistance in fi nding extant industrial pro-

perty rights and in negotiations relating to

their purchase and/or licensing;

• assistance in the preparation of a business

plan and determination of the value of IP

rights;

• assistance in fi nding and evaluating in-

novativeness of a given product and/or

technology.

Our services are used by entities at various

stages of the investment process.

In conjunction with Mazovia Patent Centre and

Lower-Silesia Patent centre, as a EU funded

initiative, we helped identify innovations arising

from Polish research units. The documentation

we have created constitutes an offer designed

for potential investors.

Page 9: WTS PATENT ATTORNEYS

We cooperate closely with seed-capital funds

for investment in start-up companies, and pre-

pare pre-investment audits. The partners of WTS

Patent Attorneys are also board members in

several venture capital funds.

We are involved in the generation of exclusive

rights portfolios for several fresh innovative en-

terprises wishing to debut on the New Connect

trade fl oor in Warsaw. We have participated

in the creation of several spin-off companies,

securing their technologies and drafting transfer

documents, as well as building up their legal

status and operating framework.

Our services are also in demand by enterprises

making use of EU funds earmarked for innova-

tive companies. We aid them during both the

application and manufacturing processes. For

this group of clients, we obtain exclusive rights

relating to innovative products, draft technology

transfer contracts and aid them in establishing

contacts with appropriate research institutions.

Our clients include large corporate entities lo-

oking to radically rejuvenate their product lines

and to obtain novel technologies. By regularly

evaluating and opining propositions made to

these clients, we aid them in making benefi cent

business decisions. We also participate in the

search, procurement and verifi cation of novel

technologies, as well as in negotiations with

research institutions. We draft licensing agre-

ements with partners involved in various stages

of R&D; starting with the research phase and

prototyping, through to the construction of a

distribution network and further development

of innovative products and technologies.

Page 10: WTS PATENT ATTORNEYS

Litigation and restitution

Litigation and restitution of lost profi ts

proceedings are conducted by the

Wiński Legal Offi ce, on retainer for

WTS Patent Attorneys. This relationship

is a synergy of the particular talents,

experience and professional skills of

lawyers and patent attorneys. The in-

formation exchange and joint consul-

tations allow us to adopt an individual

strategy for the optimal protection of

our client’s rights.

Our offer in terms of litigation and restitution

of lost profi ts due to IP infringement or unfair

trade practices includes:

• the legal evaluation and estimation of lost

profi ts;

• strategy planning;

• out-of-court due diligence and corre-

spondence calling upon an infringing

party to cease the infringement, restore

a lege legis state, and to reimburse the

rights holder for the infringement;

• notifi cation of the appropriate authorities

of the transgression of rights;

• monitoring of the legal proceedings;

• immediate fi ling of an assertion of protect-

ed rights in Poland and Europe;

• obtainment of a preliminary injunction

banning the infringement;

• drafting of out-of-court and in-court settle-

ment agreements;

• initiation of administrative court proceed-

ings;

• obtainment of court orders;

• execution of the court orders.

The subject of such litigation and/or restitu-

tion may comprise:

• rights to a patent;

• rights to a trade mark;

• rights to a utility model;

• authorship;

• individual rights of a physical or legal per-

son;

• individual rights protected by unfair trade

practice legislation;

• other like rights.

Page 11: WTS PATENT ATTORNEYS

The WTS Patent Attorney partnership

aids its clients in all procedural and

legal matters relating to the broadly

understood concept of intellectual

property protection. First and fore-

most, we provide services related to

the conduct of proceedings before

appropriate national and foreign insti-

tutions which are involved in the pro-

tection and execution of intellectual

property. Furthermore, in matters of

the commercialisation of IP, the part-

nership provides assistance in seeking

out partners, securing the rights of the

negotiating parties and in the prepa-

ration of contractual agreements.

Our activities in this area particularly consist of

the following:

• submission of applications for geographi-

cal delimitations and internet domains in

Poland and abroad;

• preparation of responses to decisions is-

sued by the Polish Patent Offi ce (PPO),

European Patent Offi ce (EPO), and OHIM

(Alicante);

• assistance in the protection of computer

programs;

• drafting, fi ling and processing of appeals

to decisions rendered by the Polish Patent

Offi ce;

Other services

• legal and technical assistance during co-

urt proceedings concerning patent and

trade mark invalidations and infringement

in collaboration with leading Polish attor-

neys;

• translation of patent descriptions, techni-

cal and legal documentation into English,

French, German, Italian, Spanish and Po-

lish;

• monitoring and payment of fees for pro-

longed periods of protection.

Page 12: WTS PATENT ATTORNEYS

He obtained his degree in biotechnology from the Wrocław University of Technology in 1996. In 1996-97 he participated in a postgraduate studies on industrial property protection at Hum-boldt University in Berlin.In 2003 he obtained a Max-Planck Foundation scholarship for a research stay at the Max-Planck Institute of Industrial Property Protection and Tax Law in Munich.Rafał became a certifi ed Polish patent attorney in 1999 and a European patent attorney in 2004. He acquired his initial pro-fessional experience at the Offi ce for Patent Protection of the Wrocław University of Technology and at the largest Polish of-fi ce for industrial property protection, as a patent attorney re-sponsible for biotechnological and pharmaceutical inventions. As a co-founding partner of WTS Patent Attorneys, he has spe-cialised in legal advice relating to the identifi cation of and mini-mizing patent risks inherent in the market entry of pharmaceuti-

Rafał Witek, MSc Rafał is a partner and co-founder of WTS

Patent Attorneys, with an MSc in bio-

technology, as well as a Polish and Eu-

ropean patent attorney specialising in

the protection and commercialisation

of inventions in the fi elds of biotechno-

logy and pharmacy.

Agnieszka Śnieżko, MA Bar.

Agnieszka Śnieżko is a partner and co-fo-

under of WTS Patent Attorneys, a lawyer,

as well as a Polish and European patent

attorney specialising in trade mark law,

competition law and contract law.

cals. He has conducted many court processes before the Polish Patent Offi ce and civil courts, in cases concerning patent invali-dation as well as matters concerning their infringement. Moreo-ver, he is a consultant for the protection and commercialisation of intellectual property for many public and private scientifi c or-ganisations in Poland. He advises and aids in the development of several biotechnological companies.Rafał is also a member of the investment commission of the BIB Seed Capital investment fund in Poland. He was a co-author of the industrial property teaching course of the University of War-saw. Rafał was the initiator of the Lower Silesia Patent Centre as well as the Mazovian Patent Centre (in collaboration with the FIRE foundation). Both these initiatives were fi nanced by EU funds as well as the Foundation for Polish Science. The goal of these centres was to provide free legal aid to scientists interested in the commercialisation of their research. He was a consultant for the team designing the project „PATENT PLUS - support for pat-enting inventions” of the Polish Ministry of Science and Higher Education. He is also the author of many publications relating to this area, addressed to Polish scientists and entrepreneurs, as well as be-ing a frequent speaker at conferences and seminars. Rafał is a member of the Polish Chamber of Patent Attorneys and the Institute of European Patent Attorneys, and a board member of the Licensing Executives Society Poland (LES-Po-land), as well as being a member of AIPPI-Poland. He speaks German, English and Polish and has a basic under-standing of Russian.

She graduated from the Faculty of Law of the Catholic Univer-sity in Lublin. She was employed at the largest Warsaw patent fi rm for industrial property protection, initially as a specialist, then as a patent attorney.In 2001 she began her PhD studies at the Law Institute of the Polish Academy of Sciences in Warsaw. She obtained a scholar-ship from the Max-Planck-Institute and was a scholarship holder

at the Max Planck Institute of Industrial Property Protection and Tax Law in Munich. As the founding partner of WTS Patent Attorneys, she has many years of experience in representing clients in all matters and pro-ceedings related to registered trademarks, i.e. procedures for registering changes in and renewals of trade marks, litigation and expiration proceedings before the Polish Patent Offi ce, pro-ceedings before customs authorities based on WTO regulations, as well as civil and penal court proceedings based on Trade-mark Law and Unfair Competition Law. She is also involved in preparing and fi ling trademark applications and matters con-cerning industrial designs. She is a member of the Polish Chamber of Patent Attorneys, a founding member of the Society of Innovation and Licensing and, since 2002, has been a member of the board of the Licens-ing Executives Society of Poland.She speaks English, Polish and German.

The partners

In 1996 she graduated with honours from the Wrocław University of Technology. Her thesis was prepared at the Department of Microbiology of the Institute of the Polish Academy of Sciences in Wrocław and concerned the molecular and genetic aspects of the identifi cation of new pathogenic bacterial strains. She completed her Honors PhD studies in biotechnology at the Fac-ulty of Food Science of the University of the University of Environ-mental and Life Sciences in Wrocław. During these studies she spent two years on a Government Scholarship at the Faculty of Food Science of the University of Bologna, Italy. Her research interests included molecular biology, microbiology and technol-

ogy of dairy products. She participated in a two-year post-grad-uate diploma course organised by Centre d’Etudes Internation-ales de la Propriété Industrielle (CEIPI) in Rome and is currently preparing to obtain her European Patent Attorney certifi cate. She underwent her patent attorney application and completed the Post-graduate Industrial Property Law course at the Faculty of Law and Administration of the University of Warsaw. In 2009 she underwent a training internship at the Directorate General 1 (Search and Examination) in European Patent Offi ce in Munich. As a Polish patent attorney and partner at WTS Patent Attorneys, Anna deals with the patent protection of biotechnological in-ventions, especially regarding inventions originating from Polish scientifi c organizations. She also manages our scientifi c consult-ant and translator teams.She speaks English, Italian and Polish.

Anna Gdula, PhD

Anna is a Patent Attorney and a partner

at WTS Patent Attorneys, and holds a PhD

in biotechnology. As a Polish patent at-

torney, she specialises in the protection

and commercialisation of inventions in the

fi elds of biotechnology and pharmacy.

Page 13: WTS PATENT ATTORNEYS

Anna Rożkowicz,MSc eng.

Anna is a partner at WTS Patent Attorneys,

and has an MSc in both biotechnology

and IP Management. She is a Polish patent

attorney, and is studying to become a

European Patent Attorney.

In 2002, Anna graduated with honours from Wroclaw University of Technology, Faculty of Chemistry with an MSc engineering degree in Biotechnology. In 2001/2002 she was the recipient of a research grant from the Socrates Program of the European Community for Student Mobility at the University of Ferrara in It-aly, where she completed her master thesis. The research results entitled „Different approaches on rice blast disease in Italy: an in vitro assay for assessing pathogenicity of the Italian Pyricu-laria grisea collection” were published in the “Journal of Plant Physiology” and presented at the VII International Mycological Congress Oslo 2002. In 2004 Anna participated in the CEIPI/EPI training in European Patent Law organized by the University of Strasbourg and held in London. In 2005 she was granted the Brit-ish Joseph Conrad Scholarship funded by The Foreign and Com-monwealth Offi ce, and enrolled in MSc studies in Management of Intellectual Property at Queen Mary College, University of London. Anna took part in the Washington Program, in courses on intellectual property law in the USA. In 2007 she completed a legal apprenticeship at the renowned law fi rm of Boehmert & Boehmert in Munich.As a Polish Patent Attorney and a partner at WTS Patent Attor-neys, Anna deals with the patent protection of biotechnologi-

cal and pharmaceutical inventions. She is involved in the com-mercialization of inventions emerging from this scientifi c fi eld. She also specializes in patent searches and freedom-to-operate analyses.Anna is a member of the Polish Chamber of Patent Attorneys. She is currently preparing to obtain her European Patent Attor-ney qualifi cations. She speaks English, Polish and Italian.

He graduated from the Agricultural University in Wrocław, Fac-ulty of Food Technology, with an MSc in biotechnology. He pre-pared his Master’s thesis on a scholarship from the Italian gov-ernment at the University of Bologna. His thesis concerned the microbiology of meat and the infl uence production and stor-age conditions have on product health safety and the design of production control systems.He has worked as a food technologist and a quality control specialist in food processing plants. He is a qualifi ed supervis-ing auditor of quality control systems. He also dealt with the im-plementation of management systems, and is an auditor in a certifi cation unit.Andrzej participated in a CEIPI training program in patent law organised in London. He then completed a post-graduate course in Industrial Property Law at the Faculty of Law and Ad-ministration of the University of Warsaw as part of his traineeship organised by the Polish Chamber of Patent Attorneys in Warsaw. He is also preparing for certifi cation as a European patent at-torney. In 2007 he took part in a course in “Obtaining, Enforce-ment, and Evaluation of Intellectual Property Rights in Europe” at Boehmert & Boehmert Law Offi ces. As a Polish patent attorney and partner at WTS Patent Attor-

Anna graduated from the Faculty of Biology of the University of Warsaw with a specialisation in Microbiology. She performed her PhD thesis research at the Institute of Genetics of the Univer-sity of Warsaw and obtained her Honours PhD in biology with a specialisation in genetics. Anna obtained a post-graduate diploma in Industrial Property Law at the Faculty of Law and Ad-ministration of the University of Warsaw. She also underwent the attorney course offered by the Polish Chamber of Patent Attor-neys. She is a Polish patent attorney, as well as being licensed to represent clients before the Offi ce for the Harmonisation of the Internal Market (OHIM) in matters relating to Community trade marks and industrial designs.Prior to joining WTS Patent Attorneys, she spent seven years in another large patent agency in Warsaw.As a Polish patent attorney and partner at WTS Patent Attorneysshe services leading global biotechnological, pharmaceutical,veterinary and chemical companies, in matters relating to the protection of inventions.

Andrzej Witek,MSc eng.

Andrzej is a partner at WTS Patent Attorneys

and holds an MSc eng. degree in biotech-

nology. He is a Polish patent attorney spe-

cialising in the protection of biotechnologi-

cal and pharmaceutical inventions as well

as in patent searches.

Anna Grzelak, PhD

Anna is a partner at WTS Patent Attorneys

and a Polish patent attorney specialising in

the solutions in the areas of biotechnology,

pharmacy, human and veterinary medici-

ne and patent searches. She holds a PhD

in biology.

neys, he primarily specialises in patent searches in biotechnol-ogy, chemistry, and pharmacological chemistry, as well as in preparing patent applications. He is also responsible for IP due diligence (freedom-to-operate analyses).Andrzej is a member of the Polish Chamber of Patent Attorneys and LES Poland.He speaks English and Polish.

Anna is a member of the Polish Chamber of Patent Attorneys.She speaks native Polish, fl uent English and has a basic under-standing of Russian.

Page 14: WTS PATENT ATTORNEYS

She graduated in chemistry with excellent grades from the Maria Curie-Skłodowska University in Lublin. Her MSc thesis, prepared at the Laboratory of Fibre Optic Technology of the Department of Chemistry, concerned the mechanical properties of polyure-thane-coated fi bre-optic cables. She then began full-time do-ctoral studies at the Department of Chemistry of the MCSU.

During this time, Joanna received an Erasmus scholarship for research at the University of Limoges, France, on the synthesis of glycosylated porphyrins. After returning to Poland, she de-fended her PhD dissertation, on the synthesis and properties of porphyrin complexes with lanthanides introduced into silica matrices obtained by the „sol-gel” method, at the Department of Inorganic Chemistry of the Faculty of Chemistry, MCSU. For many years now, she has been involved in translating scientifi c articles and patents from the fi elds of chemistry, biochemistry, biotechnology, pharmacy, and medicine as well as in analysing patents and scientifi c articles to gather information about new compounds and chemical substances for international data bases of chemical compounds (Beilstein and MDL).She participated in the Mazowiecki Patent Centre project, whe-re she was involved in evaluating the prior art status of inventions in the natural sciences and in preparing reports on and evalu-ations of the innovative level of proposed solutions.She is currently a scientifi c consultant and applicant at WTS Pa-tent Attorneys. Her tasks include patent searches in the fi elds of chemistry and pharmacy.She speaks English fl uently.

Patent engineers

Marcin Ciuk, MSc

Marcin holds an MSc in Cell and Organism

Biology, and is a specialist in biology and

biotechnology as well as a translator for

WTS. He is currently enrolled in a European

Patent Law course in Warsaw, and is an ap-

plicant for the EQE.

Marcin grew up and received his primary and secondary edu-cation in Canada. He returned to Poland and obtained his MSc degree in Cell and Organism Biology at the Department of Ani-mal Physiology of the University of Warsaw. His Master’s thesis

concerned the temporal regulation of the expression of digesti-ve enzymes in insects. He has recently completed his PhD rese-arch and is preparing his doctoral dissertation at the University of Warsaw. His research was supported by a grant from the State Committee For Scientifi c Research and he spent a 6-month Ma-rie Curie stipend in Finland at the University of Jÿvaskÿlä in 2004. Marcin’s scientifi c interests include cellular physiology, metabo-lism, and the transcriptional and post-transcriptional regulation of gene expression. He has co-authored several publications and conference presentations dealing with metabolism and re-production in insects. At WTS he deals with inventions in the fi elds of biotechnology and biochemistry. He speaks native English and Polish as well as a working level of French.

JoannaDargiewicz-Nowicka, PhD

Joanna Dargiewicz-Nowicka is a scientifi c con-

sultant and a patent attorney applicant at WTS

Patent Attorneys; she holds a PhD in chemistry.

Page 15: WTS PATENT ATTORNEYS

Associates

He graduated from the Faculty of Law of the University of Wro-cław and served a judicial apprenticeship at the Wrocław Ap-pellate Court. He collaborates with a legal practice which advi-ses for both Polish and foreign business entities. Marek completed the training for judges and passed the qu-alifying exam. He specializes in litigation and particularly in civil and administrative procedure.Marek established a permanent collaboration with a prominent legal offi ce and served an attorney apprenticeship at the Di-strict Chamber of Attorneys (OIRP) in Wrocław. He is a Certifi ed Legal Adviser, and is listed in the OIRP database of legal advi-sors in Wrocław. Currently, he runs the Wiński Law Offi ce, which specialises in tra-de and commercial law, with special emphasis on the intellec-tual property law. One of his signifi cant successes was winning a case before the Court of Arbitration in Prague (ADR.eu, an organ authorised to settle disputes on European Internet doma-ins) that resulted in a Polish company acquiring rights to a .eu domain, which had been previously occupied by a Dutch com-pany. This case was one of the fi rst successful cases in respect of a European domain.Marek is especially interested in industrial and intellectual pro-perty law, IT, the modern technology market and dispute reso-lution. As the associate of WTS Patent Attorneys, he has conducted many court processes before the civil courts, in cases concer-

Marek Wiński,MA Bar.

Marek Wiński is an attorney at law and

the founder of the „Wiński Law Offi ce”, a

associate of the WTS Patent Attorneys.

ning patent and trade marks enforcements as well as matters concerning their infringement. His practice mainly involves com-plex litigation with respect to patents, trademarks and designs. He is currently involved in various prosecution, especially decla-ratory actions and infringement proceedings in Poland related to patents covering pharmaceutical product. At the WTS Patent Attorneys he is also involved in legal advising concerning con-tract law. Mr. Wiński has a fl uent command of English and English legal terminology.

His professional activities primarily encompass commercial, em-ployment and tax liability law.Artur was born in Krakow and has been living in Munich since 1985.He graduated from the Department of Law of Ludwig Maximi-lians-Universität in Munich. After completing his legal studies and passing the state licensing exam, he was registered as a Ger-man Attorney.He has worked for some of the largest German banks, including the DZ Bank in Frankfurt am Main and the Hypovereinbank in Munich.He manages his own law offi ce in Munich which started colla-borating with WTS Partners in 2005. He devotes special efforts to representing the interests of Poles residing in Germany. In addition to his wide legal knowledge, he has extensive cour-troom experience, having been involved in several hundred trials. Further, Artur has represented clients successfully before the Federal Labour Court in Erfurt and is qualifi ed to represent parties before the Higher Regional Court (OLG). Moreover, he obtained certifi cation as a sworn translator of German at the

Artur Mohl, MA Bar.

Artur Mohl is a German attorney, the foun-

der of „Rechtsanwaltskanzlei Mohl”, an as-

sociate of the WTS Patent Attorneys.

regional court in Munich. His activities largely comprise commer-cial law, employment and penal revenue law. He is fl uent in Polish, German and English.

Adam Pawłowski, MSc eng.

MSc in Electronic and Telecommunica-

tions; European Patent Attorney, speciali-

zes in protection of electronics and com-

puter-implemented inventions; Founder

of „EUPATENT.PL” and an associate of WTS

Patent Attorneys offi ce.

In 2002 Adam graduated from the Electronics and Telecom-munications faculty at the International Faculty of Engineering of the Technical University of Lodz. In 2003-2004 he took post-graduate studies in intellectual property law at the Warsaw Uni-versity. In 2007 he became a European Patent Attorney, after passing the European Qualifying Examination (EQE) as the fi rst candidate from Poland. In 2000 and 2001 he worked in Denmark at Giga, an Intel com-pany, as an analog integrated circuits programmer. In 2002-2007 he worked at an intellectual property department of Ad-vanced Digital Broadcast, a digital television corporation. He drafted over 100 patent applications related to electronics, software and user interfaces. He was co-responsible for control-ling an international patent portfolio, including PCT applications and Polish, European, US and Taiwan patents.

In 2008 he established his own patent offi ce “EUPATENT.PL”. He is a member of the Institute of Professional Representatives before the European Patent Offi ce (epi).

Page 16: WTS PATENT ATTORNEYS

Honorata is a scientifi c consultant and a translator at WTS Patent

Attorneys, and holds a PhD in biochemistry.

She graduated from the Institute of Biochemistry of the Universi-ty of Wrocław with an MSc in Biotechnology. Both her BSc and MSc theses were written in English and provided the basis for a review article published in the European Journal of Biochemi-stry. She obtained the „Advanced Certifi cate in the Principles of Protein Structure Using the Internet” at the University of London. She was awarded an ERASMUS scholarship, which allowed her to study at the University of Göttingen, Germany. During her PhD studies she again received a stipend, this time in Göttingen and also at the University of Tromsø, Norway. In 2004 she obtained her PhD degree in biochemistry from the Institute of Biochemi-stry, University of Wrocław. Her PhD studies were partially sup-ported by the State Committee for Scientifi c Research. She re-ceived several awards, including the Award of the Foundation

Honorata Czapińska, PhD

for the University of Wrocław (1998), the W. Mozołowski Award during the 36th Meeting of Polish Biochemical Society (2000), and a Young Scientists’ Fellowship of the Foundation for Polish Science (2004). She is the author of several articles published in international journals. Her scientifi c interests involve protein structure analysis, x-ray crystallography, and the mechanisms of protein-protein interactions. At WTS Patent Attorneys she is involved in the preparation of scientifi c opinions and the translation of texts related to molecu-lar biology, biotechnology pharmacy and biochemistry.She is fl uent in English, Polish and German and has a good know-ledge of Russian and French.

Scientifi c consultants and translators

Marcin is a scientifi c consultant and a translator at WTS Patent

Attorneys, and holds a PhD eng. degree in chemistry

He graduated in environmental chemistry from the University of Wrocław.He completed his doctoral studies at the Institute of Organic Chemistry, Biochemistry, and Biotechnology of the University of Technology in Wrocław. His PhD thesis, entitled „The synthesis, properties, and structure of phosphonic inhibitors of leucine aminopeptidase and cathepsin C”, won the Rector of Wro-cław University of Technology Award as well as the prestigious competition for the best PhD dissertation in organic chemistry organised by the Polish Chemical Society and the Sigma-Aldrich company. During his graduate and post-graduate studies he

Rafał is a translator and scientifi c consultant for WTS Patent Attor-

neys, and holds a PhD in chemistry.

He graduated with honours from the Department of Chemistry of the University of Wrocław, and began his doctoral studies at the Wroclaw University of Technology. His research interests inc-lude the correlation between the in-solution conformation and the chemical and biological activity of organic compounds, as well as the application of spectroscopic methods in investi-gations of equilibrium between conformers in solution. He is the co-author of many scientifi c articles published in international journals and of several conference presentations. He received his PhD in chemistry with honours in 2001. In 2003-2004 he was

Marcin Drąg, PhD

Rafał Latajka, PhD

participated in research programs in Italy, Austria, and France. He has served a post-doctoral stay at the Burnham Institute for Medical Research in California, where he researched the role of proteases in the cell cycle. Currently, he is working as an Asso-ciate Professor at the Biochemistry and Medicinal Chemistry Unit of the University of Technology in Wrocław.He is the author of numerous articles in international journals and of several patent applications, and his results have been pre-sented at several domestic and international conferences.At WTS Patent Attorneys he is involved in the preparation of scientifi c opinions and the translation of texts related to bio-or-ganic and organic chemistry, pharmacy, and biochemistry.He speaks fl uent English, Polish and also has good knowledge of Italian and French.

awarded a scholarship from the Marie Curie European Student Exchange Programme and took part in a research project at the Department of Chemistry of the University in Naples. He is currently working as an associate professor at the Faculty of Chemistry of the Wroclaw University of Technology. At WTS Patent Attorneys he is involved in the preparation of scientifi c opinions and the translation of texts related to bio-or-ganic and organic chemistry, pharmacy, and molecular spec-troscopy.He is fl uent in Polish and English and has a good understanding of Russian and Italian.

Page 17: WTS PATENT ATTORNEYS

Jan is a scientifi c consultant and a translator at WTS Patent At-

torneys, and holds a PhD eng. degree in biology, specialising in

biochemistry.

He was born in Mexico City and graduated from the Wroclaw University of Technology with an MSc in biotechnology. He was then accepted into the doctoral programme of the Faculty of Chemistry of Wroclaw University of Technology and obtained his PhD in 2001 for his dissertation on the cloning of and research into the properties hormone carrier proteins. He then accepted a position on the scientifi c staff of the Institute of the German Cancer Research Centre (Deutsches Krebsforschungszentrum) in Heidleberg. Since 2002 he has been a post-doctoral fellow at the Institute of Pharmacology, Polish Academy of Sciences, in

Jan Rodriguez, PhD

Krakow. He is involved in the study of the molecular mecha-nisms of drug addiction and analgesia. He is the author of se-veral articles published in major scientifi c journals and of over a dozen conference communications. His scientifi c interests are now focused on changes in gene expression, particularly in the amygdala under the infl uence of active and passive drug use. At WTS Patent Attorneys he is involved in the preparation of scientifi c opinions and the translation of texts related to bio-chemistry and molecular biology.He speaks fl uent Polish, English, and Spanish and has a good knowledge of French and Catalan.

Scientifi c consultants and translators

Wojciech is a translator at WTS Patent Attorneys, and holds a PhD

in biology, specialising in biotechnology

He was born in London and received his MSc in biotechnolo-gy at the Department of Basic Problems in Technology at the Wroclaw University of Technology. His thesis was prepared at the Department of Medicine of Ludwig Maximilians-Universität in Munich, Germany, and concerned the design of peptide proteinase inhibitors. He received his PhD degree in 2001 with honours from the Agricultural Academy in Wrocław, with his dis-sertation prepared at the Institute of Molecular Medicine and Genetics and at the Department of Gene Regulation of the Me-dical College of Georgia, USA. His research interests include cell biology, in particular heat-shock transcription factors and their role in regulating the expression of heat-shock proteins and in

Marek is IT consultant and a translator for WTS Patent Attorneys,

and holds an MSc eng. degree in information technology.

He graduated with honours in Computer Science from the Department of Electronics of the University of Technology in Wrocław, with a specialisation in microprocessor systems. His Master’s thesis concerned the implementation of a Falk trans-formation algorithm to compress images using the TMS320C6xx family digital signal processors. He began his doctoral studies at the Signal Theory Unit of the Institute of Telecommunications and Acoustics of the University of Technology in Wrocław. His dissertation involves the adaptation of the Falk transformation, extending the subject of his master’s thesis. This concerns topics in the realm of image storage, processing, information theory, and the architecture of microprocessor systems.In 1999 he passed the exam in “Developing Applications with C++ Using the Microsoft Foundation Class Library”, allowing him

Wojciech Freitag, PhD

Marek Znamirowski, MSc eng.

other molecular chaperones involved in cellular processes, from higher order assembly to protein degradation and apoptosis. He is the author of several scientifi c articles published in interna-tional journals (PNAS, JMB). In WTS Patent Attorneys offi ce, Dr. Frejtag is largely involved in translating texts related to molecular and cell biology and bio-technology.He is fl uent in Polish, English, and German and has a basic un-derstanding of French and Russian.

to become a Microsoft Certifi ed Professional.He is now involved in designing and implementing programmes for personal computers and is the author of, among others, a multimedia educational program for School and Educational Publishers (WSiP), a programme for three-dimensional designs of instructions and packaging for sets of blocks for COBI S.A., seve-ral computer games in co-operation with Fancy Bytes in Obe-rhausen, and database systems, e.g. a program which assists in calculating funds from the EU’s ISPA for the administrators of the city of Wrocław. In WTS Patent Attorneys offi ce he is largely involved in the admi-nistration of LANs with Internet connections and issues connec-ted with network security and carries out Internet and intranet servicing. He is also involved in translating texts related to elec-tronics and information technology.He speaks fl uent English, Polish and has a basic knowledge of German.

Page 18: WTS PATENT ATTORNEYS

Credentials

Acting on behalf of a renowned incorporated com-

pany which had been active for several years on

the chemical reagent market and was interested

in purchasing a novel technical product, we iden-

tifi ed a scientifi c partner. By conducting patent

searches we aided in the verifi cation of the de-

velopment eff orts. Research performed jointly with

the scientifi c partner made it possible to produce

an innovative material with high market potential

and a wide range of uses. The patent application

which we prepared facilitated not only the pro-

tection of the exclusive rights do the technology,

but also formed the basis for the initiation of col-

laboration with other companies and trade part-

ners. The licensing agreements which we designed

are currently the foundation for the extension of a

franchising network concerned with further devel-

opment and commercialisation of the technology

produced.

Acting on behalf of a well known pharmaceutical

holding, we provided legal assistance in the intro-

duction of a novel generic drug. By applying a “tor-

pedo strategy”, we protected our client against the

results of an action for an injunction. An invalida-

tion motion fi led against a third party patent at the

PPO further strengthened the market position of the

product.

Acting at the behest of a reputable, stock ex-

change-listed company possessing rights to a

brand well known in Poland, we assisted the issue

of new stocks designed to obtain capital for the de-

velopment of the brand and its marketing network

in Poland. Our activity prior to the release of new

stocks included the prosecution of infringers of the

exclusive rights, conducting of licensing negotia-

tions, as well as strengthening and rejuvenation of

the exclusive rights portfolio held by the company.

This greatly augmented the strength of the brand

held by our client, and the stock issuance was a

complete success.

In collaboration with a team of notable Polish ge-

neticists, we prepared over a dozen Polish and in-

ternational patent applications, and have obtained

the fi rst patents. The portfolio thus created became

the basis for the commercialization of the protected

inventions. The WTS group assisted in the formation

of a start-up company and prepared the licensing

agreements forming the foundation of technology

transfer. The company has acquired its fi rst capital

investors, and will soon debut on the New Connect

exchange.

We assist in the commercialisation of research re-

sults obtained in Polish scientifi c institutions. We

have designed and helped implement IP manage-

ment regulations in several units of the Polish Acad-

emy of Sciences. In collaboration with the Ministry

of Science and Information Technology, we have

participated in the formulation of the principles of

a program for the commercialisation of Polish re-

search results entitled “Patent plus”. In conjunction

with the Centre for Technology Transfer of the Uni-

versity of Wrocław, we have designed a script as

well as lectures for the subject entitled “Protection

and Commercialisation of Research results” held

for the students of Biology. We have also conduct-

ed a series of similar lectures for PhD students at the

Warsaw University of Technology.

Making use of EFS funds and aid from the Founda-

tion for Polish Science, and in collaboration with the

FIRE foundation, we have created patent centres

active in Lower Silesia and Mazovia. Acting on be-

half of a large capital group belonging to a Polish

fi nancial investor we have verifi ed the patent situa-

tion of several potential investment projects (IP due

diligence), protecting our client against investing

into overly risky and unprotected solutions, while

indicating the favourable patent status of off ers

worthy of consideration. The rights to an innovative

technology for the reclamation of by-products of

biodiesel production have been purchased by our

client, and the results of further research and devel-

opment have been submitted for patent protection.

Page 19: WTS PATENT ATTORNEYS

Candidplatz 13 (5. OG)81543 München, GermanyTel.: +49 (089) 624 23 978Fax: +49 (089) 624 23 979e-mail: [email protected]

ul. Tamka 34/2500-355 Warszawa, PolandTel.: (+4822) 82 95 584Fax: (+4822) 82 69 807e-mail: offi [email protected]

ul. Rudolfa Weigla 1253-114 Wrocław, PolandTel.: (+4871) 346 74 30Fax: (+4871) 346 74 32e-mail: [email protected]

WTS RZECZNICY PATENTOWI | WTS PATENT ATTORNEYS