WTS PATENT ATTORNEYS

Page 1

WTS RZECZNICY PATENTOWI

| WTS PATENT ATTORNEYS


The Partnership The WTS Partnership is a patent attor-

Our services include the prepara-

ney practice whose goal is to provide

tion and prosecution of patent appli-

aid in all matters connected with the

cations, utility models and industrial

protection,

models; registration of trade marks in

transfer

and

commercialirights.

Poland and abroad; registration of

The partnership was formed in 2002 by

novel plant varieties; representation

three patent attorneys who combined

of parties before appropriate courts in

their

sev-

all contested matters and in connec-

eral years, from working at other pat-

tion with the infringement of exclusive

ent

attorneys

rights; patent or trade mark invalida-

representing our practice are licensed

tion proceedings as well as evaluat-

to represent clients in matters relating

ing the possibilities of successfully con-

to the protection of intellectual prop-

ducting the above proceedings.

erty rights before Polish administrative

In matters concerning the commer-

sation

of

intellectual

experience, agencies.

property

gathered

The

patent

over

bodies, as well as their counterparts in the European Union, meaning the European Patent Office (EPO) as well as the Office of Harmonisation of the Internal Market (OHIM). Our firm has offices in Wrocław and Warsaw, and the Munich office opened in 2004. Due to the professional qualifications of our partners, since its inception the Munich

partnership has specialised in the protection of intellectual property rights

cialisation of IP, our firm aids compa-

in the biotechnology, chemistry, phar-

nies in finding partners, securing the

macology and medical sectors, as

rights of parties participating in trade

well as in trade mark cases. In 2008,

negotiations as well as in the drafting

as a result of accepting a new associ-

of contracts and agreements.

ate, we also began to specialise in the

In presenting you with this small folder,

protection of computer programs and

we would like to demonstrate select

solutions in electronics.

examples of our services. We would


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 tailored to the particular requirements of each client. We would also like to present our team. The staff of WTS Patent Attorneys has always developed along with the firm’s

Wrocław

growth. In organising and attending

We invite you and your Company to

various courses, we continually aug-

make use of our services in the firm be-

ment our skills and abilities. This is the

lief that your success is our success.

direct result of our conscious choice to focus on the life science and pharmaceutical sectors, and ours is currently the largest specialist team in Poland. We strive to meet the expectations of the ever-growing number of innovative companies in Poland, and to actively participate in their development.

Warsaw


Patents and utility models WTS Patent Attorneys aids its clients in all procedural and legal matters relating to European, international and Polish

patent

applications,

patents,

• assistance in the selection of an optimal patent strategy; • preparation and verification of patent and utility model applications;

we

• filing of patent and utility model appli-

cooperate with numerous foreign at-

cations in Poland and abroad, and su-

torneys to represent our international

pervision of application proceedings. In-

clients

pro-

ternational patent applications may be

ceedings dealing with the protection

submitted directly as international appli-

of intellectual property rights.

cations at the national level, or regionally

and

utility

in

models.

Polish

Furthermore,

and

European

(i.e. European Patent applications), or as Our services include the following:

international applications within the con-

• patent queries in order to determine the

fines of the PCT;

extant state of the art and the legal status of third party applications;

• preparing and filing non-patentability statements/opposition suits as well as ini-

• evaluation of the possibilities of obtaining

tiating invalidation proceedings against

legal protection for a given technical solu-

in-process or granted patents before the

tion or trade mark, examinations for pat-

Polish Patent Office or European Patent

entability;

Office;

• evaluation and rendering of opinions on

• obtaining additional legal protection for

marketability and determination of the

medicinal products and phyto-protect-

scope of any existing exclusive rights of

ants (i.e. Supplementary Protection Certifi-

third parties;

cates (SPCs)).

• legal and technical assistance in matters of licensing, selling and making-available of exclusive rights and know-how, particularly: ◦

aiding in the preparation of offers for investors,

searching for investors,

estimating the value of non-material property,

participating in negotiations;


Validations of European Patents in Poland

Trade marks

We offer our professional assistance in

WTS

the

in

procedure

for

validating

granted

Patent

all

Attorneys

procedural

assists

clients

legal

matters

and

European Patents before the Polish Pat-

involved in the filing, opposition, in-

ent Office. European patents take ef-

validation

fect in designated countries no sooner

pertaining to Polish, European and In-

than upon validation of granted pat-

ternational

ents at national Patent Offices.

we cooperate with many international

and trade

appeal marks.

procedures Furthermore,

agencies to represent our foreign cliPoland is not a party to the London Agreement.

ents in national matters related to the

Therefore, in order to validate a European

protection of their trade marks.

Patent in Poland a translation of the granted patent into Polish must be filed at Polish Pat-

Our services in this regard specifically encom-

ent Office in the three months from the date

pass the:

of publication of a Patent in the European

• evaluation of the registrability, in Poland,

Patent Bulletin.

of trade mark applications made under

Moreover, it is possible to obtain provisional

the Madrid System and the Community

protection before the grant of a European

Trade Mark System;

patent which requires filing Polish translation of claims. We have highly-qualified translators and consultants 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 attorneys with professional expertise in a particular technical field and in patent litigation.

• offering of opinions regarding similarity and identity with earlier trade marks; • submission of trade mark applications and supervision of the proceedings; • filing of appeals should any international applications be rejected; • maintenance of the protection of exclusive rights; • negotiation of agreements relating to coexistence; • supervision of courtroom proceedings related to industrial property law and competition laws as well as appropriate international agreements (TRIPS).


Patent searches The decision to obtain patent protection for

The scope of research services offered by WTS en-

one’s technical solutions or to market them

compasses:

should be based on the minute knowled-

Patent purity searches

ge of the state of the art and extant exclu-

general, relating to the initial framework of a project, such as the active substance of

sive rights of other parties.

a drug composition, its polymorphs, synthesis pathways, initial patent status, and A patent search is performed to determine the

information on SPC protection in individu-

type and scope of technical solutions related to the

al countries;

solution in question and ascertain the legal status

detailed, relating to a particular techni-

thereof. The results of such a search may be used

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

to draft a patent application or in the design of a

nology, product, or chemical compound

novel technology. The conclusions obtained during

synthesis pathway;

patent searches often allow one to avoid unneces-

since the last general or detailed search;

sary expenditure on research and development, on imported technologies, or on remuneration for

updating, for checking on new solutions

monitoring of the competition,

supervision

owners of infringed patents. In a competitive mar-

of the activities and development direc-

ket, the common usage of patent protection forces

tions undertaken by the market competi-

entrepreneurs to possess extensive and up-to-date

tors based on published patent applica-

knowledge of protected solutions. Such information is

tions:

essential for making informed decisions, particularly

general, relating to an area of technol-

during project design, negotiations with technology

ogy, such as an IPC class referring to a

suppliers and market entry.

particular field, ◦

detailed,

encompassing

indicated

market competitors. Patent searches, performed on the basis of data supplied by the Client within the confines of a confidentiality agreement, are performed using public domain data sources, such as national or regional intellectual property offices, as well as databases such as Delphion or Chemical Abstract. The monitoring frequency and scope are determined ahead of time with the Client.


Often, a serious risk of infringement of

To strengthen and protect our Client’s market

the exclusive rights of a third party is

position, we pursue complex legal strategies

revealed as a result of a patent search.

(“torpedo strategies”) which include the ini-

An

of

tiation of declaratory proceedings to deter-

that

mine non-infringement of third party rights,

protected by third party rights often in-

whilst running simulataneous limitation or in-

itiates defensive activities against any

validation proceedings before the Polish Pat-

possible prohibitions on the commer-

ent Office.

the

in-depth

comparative

researched

analysis

technology

vs.

cial use of the client’s research. In effect, our procedures give our clients leInfringement of third party rights is a particu-

gal protection for their marketing activities

lar concern for the pharmaceutical industry,

against any possible charge of infringement

often deciding on the fate of the market en-

of their competitors’ intellectual property

try of a product. This is particularly evident in

rights. Moreover, this process results in an im-

the case of generics, where we increasingly

proved negotiating position for the Client for

often see infringement risks with patents pro-

future licensing or settlement operations.

tecting particular aspects of manufacturing medicines (i.e. particular polymorphs, methods of manufacturing an active substance or its specific salts and crystalline forms, as well as dosing methods and schemes).

To avoid the often-unjustified charges of infringement and the legal consequences thereof, i.e. a sales ban as a result of an injunction obtained by the rights holder, we suggest a defensive legal strategy. We possess an experienced, multi-disciplinary team of specialists who possess both the necessary procedural experience, as well as the technical education required to pursue the subject matter.


Support of the investment process We provide consulting services to enti-

• evaluation of the freedom to operate

ties who are either planning to invest,

(patent purity/freedom-to-operate sear-

or are already investing in, innovative

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

enterprises. By carrying out IP due dili-

tential patent barriers which may constitu-

gence

te obstacles to the commercialisation of a

(i.e.

comprehensive

audits)

re-

lating to industrial property rights, we

given product or technology.

are able to assist investors in identify-

According to the needs and requirements of

ing and evaluating the innovativeness

the client, the audit may be enhanced with

of technologies being reviewed.

the following:

As part of the audit, we also determine

• assistance in the protection of industrial

the strength of the portfolio of exclu-

property rights (drafting and submission of

sive rights for a project as well as the

applications);

possibility of strengthening it further (patentability).

Furthermore,

we

evalu-

ate the stage of development of com-

• assistance in finding extant industrial property rights and in negotiations relating to their purchase and/or licensing;

peting technologies as well as the risk

• assistance in the preparation of a business

level of collision with third-party exclu-

plan and determination of the value of IP

sive rights (freedom-to-operate).

rights;

The expertise which we provide makes

• assistance in finding and evaluating in-

it possible to conduct an investment

novativeness of a given product and/or

process successfully.

technology.

Sound investment into novel technologies is

Our services are used by entities at various

impossible without taking into account industrial

stages of the investment process.

property rights. We carry out a complex audit

In conjunction with Mazovia Patent Centre and

of intellectual property rights (IP due diligence),

Lower-Silesia Patent centre, as a EU funded

which encompasses two primary aspects:

initiative, we helped identify innovations arising

• evaluation of the strength of the exclusive

from Polish research units. The documentation

property rights portfolio of a given project

we have created constitutes an offer designed

and the options for augmenting it (paten-

for potential investors.

tability),


We cooperate closely with seed-capital funds

research institutions. We draft licensing agre-

for investment in start-up companies, and pre-

ements with partners involved in various stages

pare pre-investment audits. The partners of WTS

of R&D; starting with the research phase and

Patent Attorneys are also board members in

prototyping, through to the construction of a

several venture capital funds.

distribution network and further development of innovative products and technologies.

We are involved in the generation of exclusive rights portfolios for several fresh innovative enterprises wishing to debut on the New Connect trade floor 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 innovative 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 looking 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 beneficent business decisions. We also participate in the search, procurement and verification of novel technologies, as well as in negotiations with


Litigation and restitution Litigation and restitution of lost profits proceedings Wiński

are

Legal

conducted

Office,

on

by

retainer

the for

WTS Patent Attorneys. This relationship

• drafting of out-of-court and in-court settlement agreements; • initiation of administrative court proceedings;

is a synergy of the particular talents,

• obtainment of court orders;

experience

• execution of the court orders.

and

professional

skills

of

lawyers and patent attorneys. The information exchange and joint consul-

The subject of such litigation and/or restitu-

tations allow us to adopt an individual

tion may comprise:

strategy for the optimal protection of

• rights to a patent;

our client’s rights.

• rights to a trade mark; • rights to a utility model;

Our offer in terms of litigation and restitution

• authorship;

of lost profits due to IP infringement or unfair

• individual rights of a physical or legal per-

trade practices includes: • the legal evaluation and estimation of lost profits; • strategy planning; • out-of-court due diligence and correspondence calling upon an infringing party to cease the infringement, restore a lege legis state, and to reimburse the rights holder for the infringement; • notification of the appropriate authorities of the transgression of rights; • monitoring of the legal proceedings; • immediate filing of an assertion of protected rights in Poland and Europe; • obtainment of a preliminary injunction banning the infringement;

son; • individual rights protected by unfair trade practice legislation; • other like rights.


Other services The WTS Patent Attorney partnership

• legal and technical assistance during co-

aids its clients in all procedural and

urt proceedings concerning patent and

legal matters relating to the broadly

trade mark invalidations and infringement

understood

intellectual

in collaboration with leading Polish attor-

and

neys;

property

concept

protection.

of First

fore-

most, we provide services related to

• translation of patent descriptions, techni-

before

cal and legal documentation into English,

appropriate national and foreign insti-

French, German, Italian, Spanish and Po-

tutions which are involved in the pro-

lish;

the

conduct

tection property.

and

of

proceedings

execution

Furthermore,

of in

intellectual matters

of

the commercialisation of IP, the partnership provides assistance in seeking out partners, securing the rights of the negotiating parties and in the preparation of contractual agreements. Our activities in this area particularly consist of the following: • submission of applications for geographical delimitations and internet domains in Poland and abroad; • preparation of responses to decisions issued by the Polish Patent Office (PPO), European Patent Office (EPO), and OHIM (Alicante); • assistance in the protection of computer programs; • drafting, filing and processing of appeals to decisions rendered by the Polish Patent Office;

• monitoring and payment of fees for prolonged periods of protection.


The partners Rafał Witek, MSc Rafał is a partner and co-founder of WTS Patent Attorneys, with an MSc in biotechnology, as well as a Polish and European patent attorney specialising in the protection and commercialisation of inventions in the fields of biotechnology and pharmacy.

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 Humboldt 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 certified Polish patent attorney in 1999 and a European patent attorney in 2004. He acquired his initial professional experience at the Office for Patent Protection of the Wrocław University of Technology and at the largest Polish office for industrial property protection, as a patent attorney responsible for biotechnological and pharmaceutical inventions. As a co-founding partner of WTS Patent Attorneys, he has specialised in legal advice relating to the identification of and minimizing patent risks inherent in the market entry of pharmaceuti-

Agnieszka Śnieżko, MA Bar. Agnieszka Śnieżko is a partner and co-founder 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.

She graduated from the Faculty of Law of the Catholic University in Lublin. She was employed at the largest Warsaw patent firm 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 scholarship from the Max-Planck-Institute and was a scholarship holder

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 attorney, she specialises in the protection and commercialisation of inventions in the fields of biotechnology and pharmacy.

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 identification of new pathogenic bacterial strains. She completed her Honors PhD studies in biotechnology at the Faculty of Food Science of the University of the University of Environmental 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-

cals. He has conducted many court processes before the Polish Patent Office and civil courts, in cases concerning patent invalidation as well as matters concerning their infringement. Moreover, he is a consultant for the protection and commercialisation of intellectual property for many public and private scientific organisations 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 Warsaw. 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 financed 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 patenting 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 being 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-Poland), as well as being a member of AIPPI-Poland. He speaks German, English and Polish and has a basic understanding of Russian.

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 proceedings related to registered trademarks, i.e. procedures for registering changes in and renewals of trade marks, litigation and expiration proceedings before the Polish Patent Office, proceedings before customs authorities based on WTO regulations, as well as civil and penal court proceedings based on Trademark Law and Unfair Competition Law. She is also involved in preparing and filing trademark applications and matters concerning 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 Licensing Executives Society of Poland. She speaks English, Polish and German.

ogy of dairy products. She participated in a two-year post-graduate diploma course organised by Centre d’Etudes Internationales de la Propriété Industrielle (CEIPI) in Rome and is currently preparing to obtain her European Patent Attorney certificate. 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 Office in Munich. As a Polish patent attorney and partner at WTS Patent Attorneys, Anna deals with the patent protection of biotechnological inventions, especially regarding inventions originating from Polish scientific organizations. She also manages our scientific consultant and translator teams. She speaks English, Italian and Polish.


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 Italy, 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 Pyricularia 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 British Joseph Conrad Scholarship funded by The Foreign and Commonwealth Office, 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 firm of Boehmert & Boehmert in Munich. As a Polish Patent Attorney and a partner at WTS Patent Attorneys, Anna deals with the patent protection of biotechnologi-

He graduated from the Agricultural University in Wrocław, Faculty of Food Technology, with an MSc in biotechnology. He prepared his Master’s thesis on a scholarship from the Italian government at the University of Bologna. His thesis concerned the microbiology of meat and the influence production and storage 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 qualified supervising auditor of quality control systems. He also dealt with the implementation of management systems, and is an auditor in a certification 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 Administration 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 certification as a European patent attorney. In 2007 he took part in a course in “Obtaining, Enforcement, and Evaluation of Intellectual Property Rights in Europe” at Boehmert & Boehmert Law Offices. 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 University 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 Administration of the University of Warsaw. She also underwent the attorney course offered by the Polish Chamber of Patent Attorneys. She is a Polish patent attorney, as well as being licensed to represent clients before the Office 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 Attorneys she services leading global biotechnological, pharmaceutical, veterinary and chemical companies, in matters relating to the protection of inventions.

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.

cal and pharmaceutical inventions. She is involved in the commercialization of inventions emerging from this scientific field. 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 Attorney qualifications. She speaks English, Polish and Italian.

Andrzej Witek, MSc eng. Andrzej is a partner at WTS Patent Attorneys and holds an MSc eng. degree in biotechnology. He is a Polish patent attorney specialising in the protection of biotechnological and pharmaceutical inventions as well as in patent searches.

neys, he primarily specialises in patent searches in biotechnology, 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

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 medicine and patent searches. She holds a PhD in biology.

Anna is a member of the Polish Chamber of Patent Attorneys. She speaks native Polish, fluent English and has a basic understanding of Russian.


Patent engineers Joanna Dargiewicz-Nowicka, PhD Joanna Dargiewicz-Nowicka is a scientific consultant and a patent attorney applicant at WTS Patent Attorneys; she holds a PhD in chemistry.

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 polyurethane-coated fibre-optic cables. She then began full-time doctoral studies at the Department of Chemistry of the MCSU.

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 applicant for the EQE.

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

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 defended 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 scientific articles and patents from the fields of chemistry, biochemistry, biotechnology, pharmacy, and medicine as well as in analysing patents and scientific 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, where she was involved in evaluating the prior art status of inventions in the natural sciences and in preparing reports on and evaluations of the innovative level of proposed solutions. She is currently a scientific consultant and applicant at WTS Patent Attorneys. Her tasks include patent searches in the fields of chemistry and pharmacy. She speaks English fluently.

concerned the temporal regulation of the expression of digestive enzymes in insects. He has recently completed his PhD research and is preparing his doctoral dissertation at the University of Warsaw. His research was supported by a grant from the State Committee For Scientific Research and he spent a 6-month Marie Curie stipend in Finland at the University of Jÿvaskÿlä in 2004. Marcin’s scientific interests include cellular physiology, metabolism, and the transcriptional and post-transcriptional regulation of gene expression. He has co-authored several publications and conference presentations dealing with metabolism and reproduction in insects. At WTS he deals with inventions in the fields of biotechnology and biochemistry. He speaks native English and Polish as well as a working level of French.


Associates He graduated from the Faculty of Law of the University of Wrocław and served a judicial apprenticeship at the Wrocław Appellate Court. He collaborates with a legal practice which advises for both Polish and foreign business entities. Marek completed the training for judges and passed the qualifying exam. He specializes in litigation and particularly in civil and administrative procedure. Marek established a permanent collaboration with a prominent legal office and served an attorney apprenticeship at the District Chamber of Attorneys (OIRP) in Wrocław. He is a Certified Legal Adviser, and is listed in the OIRP database of legal advisors in Wrocław. Currently, he runs the Wiński Law Office, which specialises in trade and commercial law, with special emphasis on the intellectual property law. One of his significant successes was winning a case before the Court of Arbitration in Prague (ADR.eu, an organ authorised to settle disputes on European Internet domains) that resulted in a Polish company acquiring rights to a .eu domain, which had been previously occupied by a Dutch company. This case was one of the first successful cases in respect of a European domain. Marek is especially interested in industrial and intellectual property law, IT, the modern technology market and dispute resolution. As the associate of WTS Patent Attorneys, he has conducted many court processes before the civil courts, in cases concer-

His professional activities primarily encompass commercial, employment 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 Maximilians-Universität in Munich. After completing his legal studies and passing the state licensing exam, he was registered as a German 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 office in Munich which started collaborating 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 courtroom experience, having been involved in several hundred trials. Further, Artur has represented clients successfully before the Federal Labour Court in Erfurt and is qualified to represent parties before the Higher Regional Court (OLG). Moreover, he obtained certification as a sworn translator of German at the

In 2002 Adam graduated from the Electronics and Telecommunications faculty at the International Faculty of Engineering of the Technical University of Lodz. In 2003-2004 he took postgraduate studies in intellectual property law at the Warsaw University. In 2007 he became a European Patent Attorney, after passing the European Qualifying Examination (EQE) as the first candidate from Poland. In 2000 and 2001 he worked in Denmark at Giga, an Intel company, as an analog integrated circuits programmer. In 20022007 he worked at an intellectual property department of Advanced Digital Broadcast, a digital television corporation. He drafted over 100 patent applications related to electronics, software and user interfaces. He was co-responsible for controlling an international patent portfolio, including PCT applications and Polish, European, US and Taiwan patents.

Marek Wiński, MA Bar. Marek Wiński is an attorney at law and the founder of the „Wiński Law Office”, a associate of the WTS Patent Attorneys.

ning patent and trade marks enforcements as well as matters concerning their infringement. His practice mainly involves complex litigation with respect to patents, trademarks and designs. He is currently involved in various prosecution, especially declaratory 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 contract law. Mr. Wiński has a fluent command of English and English legal terminology.

Artur Mohl, MA Bar. Artur Mohl is a German attorney, the founder of „Rechtsanwaltskanzlei Mohl”, an associate of the WTS Patent Attorneys.

regional court in Munich. His activities largely comprise commercial law, employment and penal revenue law. He is fluent in Polish, German and English.

Adam Pawłowski, MSc eng. MSc in Electronic and Telecommunications; European Patent Attorney, specializes in protection of electronics and computer-implemented inventions; Founder of „EUPATENT.PL” and an associate of WTS Patent Attorneys office.

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


Scientific consultants and translators Marcin Drąg, PhD Marcin is a scientific 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 Wrocław 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

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 Associate 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 presented at several domestic and international conferences. At WTS Patent Attorneys he is involved in the preparation of scientific opinions and the translation of texts related to bio-organic and organic chemistry, pharmacy, and biochemistry. He speaks fluent English, Polish and also has good knowledge of Italian and French.

Rafał Latajka, PhD Rafał is a translator and scientific consultant for WTS Patent Attorneys, 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 include 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 investigations of equilibrium between conformers in solution. He is the co-author of many scientific 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

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 scientific opinions and the translation of texts related to bio-organic and organic chemistry, pharmacy, and molecular spectroscopy. He is fluent in Polish and English and has a good understanding of Russian and Italian.

Honorata Czapińska, PhD Honorata is a scientific consultant and a translator at WTS Patent Attorneys, and holds a PhD in biochemistry. She graduated from the Institute of Biochemistry of the University 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 Biochemistry. She obtained the „Advanced Certificate 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 Biochemistry, University of Wrocław. Her PhD studies were partially supported by the State Committee for Scientific Research. She received several awards, including the Award of the Foundation

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 scientific 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 scientific opinions and the translation of texts related to molecular biology, biotechnology pharmacy and biochemistry. She is fluent in English, Polish and German and has a good knowledge of Russian and French.


Scientific consultants and translators Jan Rodriguez, PhD Jan is a scientific consultant and a translator at WTS Patent Attorneys, 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 scientific 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

Krakow. He is involved in the study of the molecular mechanisms of drug addiction and analgesia. He is the author of several articles published in major scientific journals and of over a dozen conference communications. His scientific interests are now focused on changes in gene expression, particularly in the amygdala under the influence of active and passive drug use. At WTS Patent Attorneys he is involved in the preparation of scientific opinions and the translation of texts related to biochemistry and molecular biology. He speaks fluent Polish, English, and Spanish and has a good knowledge of French and Catalan.

Wojciech Freitag, PhD 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 biotechnology 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 dissertation prepared at the Institute of Molecular Medicine and Genetics and at the Department of Gene Regulation of the Medical 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

other molecular chaperones involved in cellular processes, from higher order assembly to protein degradation and apoptosis. He is the author of several scientific articles published in international journals (PNAS, JMB). In WTS Patent Attorneys office, Dr. Frejtag is largely involved in translating texts related to molecular and cell biology and biotechnology. He is fluent in Polish, English, and German and has a basic understanding of French and Russian.

Marek Znamirowski, MSc eng. 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 transformation 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

to become a Microsoft Certified 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., several computer games in co-operation with Fancy Bytes in Oberhausen, 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 office he is largely involved in the administration of LANs with Internet connections and issues connected with network security and carries out Internet and intranet servicing. He is also involved in translating texts related to electronics and information technology. He speaks fluent English, Polish and has a basic knowledge of German.


Credentials Acting on behalf of a renowned incorporated company which had been active for several years on the chemical reagent market and was interested in purchasing a novel technical product, we identified a scientific partner. By conducting patent searches we aided in the verification of the development efforts. Research performed jointly with the scientific 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 protection of the exclusive rights do the technology, but also formed the basis for the initiation of collaboration with other companies and trade partners. The licensing agreements which we designed are currently the foundation for the extension of a franchising network concerned with further development and commercialisation of the technology produced.

Acting on behalf of a well known pharmaceutical holding, we provided legal assistance in the introduction of a novel generic drug. By applying a “torpedo strategy”, we protected our client against the results of an action for an injunction. An invalidation motion filed against a third party patent at the PPO further strengthened the market position of the product.

Acting at the behest of a reputable, stock exchange-listed company possessing rights to a brand well known in Poland, we assisted the issue of new stocks designed to obtain capital for the development 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 negotiations, 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 geneticists, we prepared over a dozen Polish and international patent applications, and have obtained the first 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 first capital investors, and will soon debut on the New Connect exchange.

We assist in the commercialisation of research results obtained in Polish scientific institutions. We have designed and helped implement IP management regulations in several units of the Polish Academy 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 research results entitled “Patent plus”. In conjunction with the Centre for Technology Transfer of the University 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 conducted a series of similar lectures for PhD students at the Warsaw University of Technology.

Making use of EFS funds and aid from the Foundation for Polish Science, and in collaboration with the FIRE foundation, we have created patent centres active in Lower Silesia and Mazovia. Acting on behalf of a large capital group belonging to a Polish financial investor we have verified the patent situation 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 offers 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 development have been submitted for patent protection.


Candidplatz 13 (5. OG)

ul. Tamka 34/25

ul. Rudolfa Weigla 12

81543 München, Germany

00-355 Warszawa, Poland

53-114 Wrocław, Poland

Tel.: +49 (089) 624 23 978

Tel.: (+4822) 82 95 584

Tel.: (+4871) 346 74 30

Fax: +49 (089) 624 23 979

Fax: (+4822) 82 69 807

Fax: (+4871) 346 74 32

e-mail: patent@wtspatent.pl

e-mail: office@wtspatent.pl

e-mail: wroclaw@wtspatent.pl

WTS RZECZNICY PATENTOWI

| WTS PATENT ATTORNEYS


Issuu converts static files into: digital portfolios, online yearbooks, online catalogs, digital photo albums and more. Sign up and create your flipbook.