Designs: A Global Guide Contributors
DANIEL Legal & IP Strategy
André Bastos Venturini
André Bastos Venturini has more than a decade of experience working with patents and industrial designs. He is responsible for the patent department of DANIEL Legal & IP Strategy and has in-depth knowledge of drafting patent applications and patentability, nullity, infringement and freedom-to-operate analyses. He has also worked as a technical expert in several lawsuits, including the first disputes concerning software-implemented inventions and standard-essential patents in Brazil.
He graduated in electrical engineering from the Military Institute of Engineering. He is an official Brazilian IP agent and an active member of the Brazilian Intellectual Property Association and the International Association for the Protection of Intellectual Property. He regularly publishes articles and is an invited speaker at many conferences in his area of activity.
Diogo dos Santos Netto
Diogo dos Santos Netto has a broad design and patent practice that includes drafting, prosecution, post-grant proceedings and client pre-litigation counselling. His experience includes drafting and prosecuting applications and portfolios in the areas of design, biotechnology, chemistry, bioinformatics, medical devices, telecommunications and consumer products. He also prepares validity, enforceability, freedom-to-operate and infringement opinions and assists with technical consulting. He has a background in informatics, micro and molecular biology, gained during his undergraduate and master’s degrees at the National Laboratory of Scientific Computing. Before joining DANIEL Legal & IP Strategy, he gained significant research and development experience at the Oswaldo Cruz Foundation. Since 2008 he has worked as a patent agent and he is an authorised professional representative before the INPI.
Rana Gosain is a senior partner at DANIEL Legal & IP Strategy and has worked in the IP field since 1978. His expertise covers patents, designs and litigation, with a focus on life sciences and pharmaceutical issues. He counsels clients on patent filing strategies and obtaining the best patent protection. He has a technical background in civil engineering and completed a law course at the Veiga Almeida University in 2005. He is an IP agent and attorney registered with the National Institute of Industrial Property (INPI). He also holds a postgraduate degree in intellectual property from the PUC University in collaboration with the National Institute of Industrial Property (INPI). He is a member of the standing pharma committee of the International Association for the Protection of Intellectual Property.
Jianhui Zheng is a senior partner at Wanhuida Peksung, a leading Chinese IP service powerhouse formed by the merger of Wan Hui Da Law Firm & IP Agency and Peksung IP Ltd in 2016. She is a veteran practitioner in prosecuting design patent applications, re-examination and invalidation matters, with her technical expertise focusing on general machines, home appliances, hydraulic control systems, cutting tools, mechanical transmission and braking systems. She leads the firm’s mechanics and electronics practice group and has significant experience in patent re-examination and invalidation procedures and patent infringement disputes (both civil and administrative) in China. She holds an LLM from Renmin University of China and has a technical background in mechanical engineering.
Henriette V Rasch
Henriette V Rasch is a trademark and design attorney who has worked with intellectual property since 1998. She has worked with the Danish Patent and Trademark Office handling international matters, legislation, applications, opposition and appeal cases. Her work also involved education and responsibility for matters relating to Danish trademark practice. She has worked at Awapatent since 2002. She specialises in trademark, design, domain name and marketing law, and advises on all issues related to these areas, from drafting IP strategies and selecting trademarks and other rights to prosecution and litigation concerning IP rights and their exploitation.
Laurent & Charras
50 Chemin de la Bruyere
Tel: +33 4 7833 1660
Email: [email protected]
Julien Scicluna is a partner in Laurent & Charras and heads the firm’s trademark and design department. He holds an LLM from the Centre for International IP Studies in Strasbourg and is an alumnus of the London School of Economics. A French and European trademark and design attorney, he advises clients ranging from local small and medium-sized enterprises to major Asian corporations. He travels extensively in Asia and regularly lectures on intellectual property. He also teaches at various universities and business schools in France, particularly in relation to corporate IP strategy. He is a member of the European Communities Trademark Association, the International Association for the Protection of Intellectual Property and the International Trademark Association.
Krieger Mes & Graf v der Groeben
Jens Künzel advises and represents national and international companies with respect to all aspects of IP and competition law. One focus of his IP practice, besides patents, is design infringement, passing off and unfair competition. He regularly acts for and advises manufacturers from various industries with design-intensive products, such as sanitary products, women’s bags, fashion and textiles.
Mr Künzel graduated in law from Trier University. Following his first state examination, he studied at the University of East Anglia in Norwich, United Kingdom, where in 1998 he obtained an LLM with distinction in common law.
Dr Helen G Papaconstantinou and Partners, Law Firm
Maria Athanassiadou is a partner at Dr Helen G Papaconstantinou and Partners, Law Firm. She is an attorney at law with more than 20 years’ experience in a broad spectrum of IP matters. She graduated from the University of Athens with a law degree, is admitted to practise before the Supreme Court and the Council of State and is a member of the Athens Bar.
Ms Athanassiadou focuses her practice on all aspects of patents, supplementary protection certificates, utility models and industrial designs, and provides consultancy and legal representation for major companies. She is an active member of the International Trademark Association and the Pharmaceutical Trademarks Group, and regularly contributes to various trademark, design and patent publications.
GLP Intellectual Property Office
Carmela Barilà is an Italian lawyer working in the trademark and legal departments of GLP. She graduated in law from the prestigious University Luigi Bocconi in Milan and, after spending her legal clerkship in one of Italy’s top law firms, was admitted to the Italian Bar as a qualified lawyer. At GLP she deals with (among other things) legal opinions and agreements and advises clients in proceedings mainly regarding trademark and design infringement.
Davide Luigi Petraz
Davide Luigi Petraz is the managing partner of GLP, a lawyer and a European patent attorney. He started his career at an IP firm in Washington DC, where he also attended a master’s programme in IP law. His excellent academic background – being also a professor at the University of Trieste – is complemented by ample experience in drafting agreements and analysing and managing IP assets. His practice includes litigation advice in proceedings regarding all aspects of intellectual property, from infringement to unfair competition and the disclosure of trade secrets. He has considerable experience representing companies before the European Patent Office, demonstrating strong expertise with a unique mix of technical and legal acumen.
Laura van der Heide
Laura van der Heide is a German lawyer with extensive knowledge and experience of German and Italian law and practice. After a study visit and internship in Belgium, she obtained a degree in law from the University of Regensburg. Following her admission to the German Bar, she worked for an international law firm in Munich.
She later joined the legal department of GLP, where she deals with questions in the fields of intellectual property, unfair competition and commercial contracts. Her expertise spans counterfeiting litigation to trademark infringement cases, with a focus on Italian and German jurisdictions.
Henry Goh & Co Sdn Bhd
VO2-10-06 Lingkaran SV
Sunway Velocity, Jalan Peel
Kuala Lumpur 55100
Tel: +60 397 718 688
Fax: +60 397 718 788
Email: [email protected]
Dave A Wyatt
Dave A Wyatt is an executive director and head of patents and industrial designs at Henry Goh. He is a European patent attorney and a registered Malaysian patent, industrial design and trademark agent.
Mr Wyatt has given presentations on Malaysian IP law and practice to local institutions of higher learning, business councils and industry and professional associations, as well as in public educational seminars. Although his practice has focused on patent and design prosecution, as patent disputes and litigation have been increasing in Malaysia in recent years, he has come to be in demand for his opinions on patent validity and infringement. He has appeared before the high court in several states of Malaysia as a patent attorney expert witness.
Merel Kamp is one of Signify’s founding partners. She is a certified Benelux and European trademark and design attorney and was a member of the board of the Benelux Association of Trademark and Design Law (BMM) from 2007 to 2015. She has been president of the professional accreditation committee of the BMM since 2015. She is also a tutor on the professional training programme for Benelux trademark and design attorneys.
Michiel Haegens joined Signify as a partner in 2016 after heading an international IP firm’s trademarks and designs department for years. He is a certified European and Benelux trademark and design attorney and immediate past president of the BMM, of which he is an acting board member. He is also active in a number of national and international (legislative) IP committees for the BMM, the International Association for the Protection of Intellectual Property and the International Trademark Association.
Peter van der Wees
Peter van der Wees is a founding partner of Signify. He studied law at Leiden University and trained at one of the Netherlands’ largest patent and trademark firms. Having qualified as a Benelux and subsequently a European trademark and design attorney, he became a partner at an Amsterdam-based trademark firm. He is a guest lecturer at the University of Amsterdam. His further teaching experience includes tutorships at the Dutch Bar Association education programme and the professional training programme for Benelux trademark and design attorneys.
Bryn Aarflot AS
Celine Varmann Jørgensen
Celine Varmann Jørgensen graduated with a law degree from the University of Oslo and with an IP specialisation from the University of Copenhagen. She also holds an LLM in information technology and communications law from the London School of Economics and Political Science. She joined Bryn Aarflot in 2005 and has experience in all aspects of IP rights prosecution and enforcement, including design and trademark counselling, filing and prosecution, opposition and infringement matters. Further, Ms Varmann Jørgensen has extensive experience in anti-counterfeiting and customs matters. Her clients range from small Norwegian businesses to large Norwegian and international corporations in several industries.
IP & Law – Kancelaria Rzeczników Patentowych J Markieta, M Zielińska-Łazarowicz Sp p
Kancelaria Rzeczników Patentowych J Markieta M Zielińska-Łazarowicz
Ul Bukowińska 2 Lok 160
Tel: +48 22 254 25 35
Fax: +48 22 254 25 34
Email: [email protected]
Małgorzata Zielińska-Łazarowicz is a lawyer, a Polish patent and trademark attorney and a professional representative before the EU Intellectual Property Office (EUIPO). She obtained her law degree from the University of Warsaw, where she completed further postgraduate studies in IP rights and European law. Ms Zielińska-Łazarowicz’s practice focuses on designs and trademarks, including prosecution, litigation and enforcement as well as unfair competition matters. She represents clients before the Polish Patent Office, the EUIPO and the common and administrative courts. Ms Zielińska-Łazarowicz also has experience in border detention matters.
Gorodissky & Partners (Moscow)
Alexander Vasilets graduated from the People’s Friendship University of Russia as an engineer-linguist and from the law faculty of the Russian State Academy of Intellectual Property. In 1999 he joined Gorodissky & Partners and in 2006 was promoted to partner at the firm.
He heads the design department and his primary focus is design prosecution across a wide range of industries and jurisdictions. He has vast experience and counsels clients on issues relating to proceedings before the Russian Patent and Trademark Office and foreign patent offices, as well as enforcement of design owners’ rights. He is a member of the International Association for the Protection of Intellectual Property.
Nikolay Bogdanov graduated from the Moscow Institute of Electronical Engineering and the Central Institute of Intellectual Property. He started his career in the Russian Patent and Trademark Office, where he served as an examiner, researcher, deputy chief of the legal department, deputy chief of the department for international cooperation and deputy general director.
He contributed to the development of Russian IP legislation and regulations, drafting international agreements on patent
harmonisation and participating in intergovernmental negotiations, including those on Russia joining the World Trade Organisation.
Mr Bogdanov joined Gorodissky & Partners in 2004 and was promoted to partner in 2006.
He advises clients on Russian and foreign IP legislation, including international IP treaties, conventions, agreements and peculiarities of their implementation in Russia.
Ann-Charlotte Järvinen specialises in IP and marketing law, including prosecution and litigation of trademarks, designs and copyright. She also assists clients with drafting and negotiating IP-related agreements, strategies and policies. Ms Järvinen has provided strategic advice on the use of brands for over 10 Years. She is a professional representative before the EUIPO and an authorised IP attorney in Sweden. She previously worked as an in-house IP legal counsel at Sandvik Intellectual Property AB and as a lawyer at the Swedish Patent and Registration Office. Ms Järvinen graduated with an LLM from Lund University, and also studied IP law and obtained a master of law and information technology degree at Stockholm University.
Anne Gustavsson is an attorney at law at Awapatent AB and specialises in trademark and design law. Ms Gustavsson is a professional representative before the EU Intellectual Property Office (EUIPO). She graduated with a master of laws degree from Stockholm University and has studied IP law at Malmo University. She previously worked at the Swedish Patent and Registration Office, where she was head of the trademark legal department and responsible for legal matters regarding trademarks and designs. Before joining Awapatent AB in Stockholm, she worked as a legal attorney at an IP law firm in Uppsala.
Ankara Patent Bureau Limited
Ekin Karakuş Öcal
Ekin Karakuş Öcal joined Ankara Patent Bureau in 2011. She graduated from the Bilkent University Faculty of Law. She is a patent and trademark attorney and a member of the Ankara Bar Association as an attorney at law. She has been the manager of the firm’s law department since January 2014. Ms Karakuş Öcal specialises in trademark, design, domain name and geographical indications, and advises on all legal matters relating to these areas. She is a frequent lecturer and speaker on IP matters, particularly geographical indications.
Hiddleston Trade Marks
Mark Hiddleston is a director and founder of Hiddleston Trade Marks, a new trademark firm established in 2015. He has over 25 years’ experience in the IP field, advising on trademarks and related design matters.
He has substantial experience in relation to the clearance and prosecution of UK and EU trademark applications, international registrations under the Madrid Protocol and national applications worldwide, the negotiation and drafting of settlement agreements in relation to trademarks and the handling of oppositions and cancellation actions before the UK and EU IP offices and disputes worldwide.
McAndrews Held & Malloy
Christopher V Carani
Christopher V Carani is a partner at McAndrews Held & Malloy, Ltd. He practises in all areas of IP law, including patents, designs, trademarks and copyrights. He has significant experience leading litigations and managing global IP portfolios. He is a well-recognised authority in the field of design law, having published and lectured extensively on the topic. He is the editor of Design Rights: Functionality and Scope of Protection (Wolters Kluwer NV, 2017), chair of the International Association for the Protection of Intellectual Property design rights committee and an adjunct professor of IP law at Northwestern University School of Law. He earned a JD from the University of Chicago Law School and a BS in engineering from Marquette University.
Dunstan H Barnes
Dunstan H Barnes is an associate at McAndrews Held & Malloy, Ltd. Although he practises in all areas of IP law – including designs, utility patents, trademarks and copyrights – he specialises in design law, and has considerable experience in drafting and prosecuting design applications and conducting design-focused investigations. He graduated magna cum laude with a JD from IIT Chicago-Kent College of Law. He holds a MEng in materials science and metallurgy from the University of Oxford and a PhD in biomaterials science from the University of Cambridge. He currently serves as vice chair of the American Bar Association’s committee on design rights and chair of the international practice and policy subcommittee of the American Intellectual Property Law Association’s industrial design committee.
Banner & Witcoff, Ltd
Alisa S Abbott
Alisa S Abbott is an associate in the Washington DC office of Banner & Witcoff. She represents clients in all facets of design patent procurement, prosecution and IP counselling. Her practice includes evaluating and securing design patent protection for a broad range of sophisticated technologies, including portable and wearable electronic devices, home appliances and construction materials. She graduated from the University of Virginia with a bachelor of arts degree, double-majoring in American studies and religious studies. She earned her JD from Washington and Lee University School of Law.
Robert S Katz
Robert S Katz is a principal shareholder in the Washington DC office of Banner & Witcoff. He has helped to procure more than 6,000 design patents in the United States and more than 18,000 design patents/registrations outside the country. He is a former US Patent and Trademark Office utility patent examiner and has a mechanical engineering degree from Carnegie Mellon University and a JD from George Washington University School of Law. He is currently a professor of design law at George Washington University School of Law and formerly taught at Georgetown University Law School. At the International Federation of Intellectual Property Attorneys, he serves as treasurer of the US section and is former chairman of the industrial design section. He currently serves as chair of the designs committee of the International Trademark Association.