Services

Patent registration begins by a visit from a patent technician and advisor from any of the AB Asesores work centres during which the client provides the technical information relating to the object of their invention. Once the scope of the invention has been identified, the team of professionals from AB Asesores's technical department then analyses and starts drafting the specification, abstract and drawings, if they are necessary. After the client has given their approval, they will be filed before the Spanish Patent and Trademark Office by one of the Official Industrial Property Agents that forms part of AB Asesores's workforce.

The client is given advice beforehand regarding which type of patent processing is most suitable for their particular case. Once the patent application has been filed, the administration team closely monitors its processing, and informs and advises the client with respect to all the incidents that arise until the process is finalised and the patent granting certificate is obtained.

Utility model registration also begins by a visit from a technician from any of the AB Asesores branch offices during which the client provides the technical information relating to the object of their invention. Once the scope of the invention has been clarified, the team of professionals from AB Asesores's technical department then analyses and starts drafting the specification and preparing the drawings, if they are necessary. After the client has given their approval, they will be filed before the Spanish Patent and Trademark Office by one of the Official Industrial Property Agents that forms part of AB Asesores's workforce.

Once the utility model application has been filed, the administration team closely monitors the processing, and informs and advises the client with respect to all the incidents that arise until the process is finalised when the granting certificate of the utility model is obtained.

The application for a European patent can be carried out directly or with the priority of an earlier patent or utility model. In both cases, it is a European Agent who will file the application and represent the European patent application throughout its processing, keeping the client fully informed of the incidents that arise during the processing and advising them on the best way to move forward in the processing.

Similarly to European patents, an international PCT application can be dealt with directly or based on an earlier patent or utility model that is within its year of priority, receiving in the majority of cases an extension of up to 30 months in order to decide in which geographical area the patent application is to be formalised.

• Eurasian patent
• GCC patent
• OAPI patent
• ARIPO patent

At AB Asesores we have an international network of associate industrial property agencies, which allows us to take on any patent process in any country or geographical area in the world. These agencies are prestigious and recognised firms with whom we have been working for many years and trust completely.

Registering trademarks and trade names should start with an analysis of the NICE classification in order to identify the classes for which the trademark is to be registered depending on the goods and/or services for which it is to be used. It is then essential to carry out a study on the registration viability of the distinctive sign chosen depending on the national trademarks, national trade names, European Union trademarks and international trademarks that designate Spain and are in force, which are the 4 types of registration that are legally valid in Spain. After this prior analysis, the registration application is lodged by one of AB Asesores's Official Industrial Property Agents before the Spanish Patent and Trademark Office.

Having received the granting certificate, AB Asesores's work during the 10 years for which the registration is valid is both to represent and monitor the file. It is essential to review trademark application journals on a daily basis, both the Official Industrial Property Journal and the EUIPO Journal, in order to warn the holder of an application by third parties for trademarks that have a high level of similarity and, if it is of interest, file an opposition on their behalf in an attempt to obtain the rejection of the trademark.

European trademark is the current name for what was the community trademark since 1996. It provides coverage in 28 countries, making it a very interesting registration. Similarly to national trademark registrations, the prior steps involve determining the classes in which the trademark must be applied for and an analysis of the current trademarks, both European Union trademarks and national and international trademarks that designate a European Country.

The international trademark according to the Madrid System is a very good tool that enables a trademark to be registered in a large number of countries at a much lower cost than individually registering it in each country. Trademark protection can currently be obtained through this system in more than 100 countries.

The registration of trademarks before the OAPI and ARIPO grants protection over the selected distinctive sign in the African countries that form part of each of the organisations. These offices include more than 30 countries within this continent.

Our network of over 150 associates allows us to undertake the registration of trademarks in any country in the world through a local representative with a long history and recognised prestige.

Registering industrial designs requires a prior in-depth analysis of the variants of the industrial product whose ornamentation or appearance is most significant in order to determine the most appropriate strategy for protection. It is also necessary to assess whether the element must be protected as a whole or whether the object of protection under the modality of industrial designs are specific details of the element.

Industrial designs can be registered up to 12 months after the product has been released to the public, whilst also allowing its publication date to be controlled and benefiting from an international priority of 6 months. These are fundamental aspects to take into account in order to establish a suitable protection strategy. It is important to also take into account that industrial designs are not only product registrations, but they also protect the layout of a shop, the aesthetics of a webpage, clickable icons in computer programs, novel alphabet typefaces, etc

• Industrial design registrations
• Community designs and models registration
• International trademark registration according to the Hague System
• National design registration in any country in the world

When our clients have an industrial property registration, whether these are trademarks, patents or industrial designs, they need three basic services. The first is file maintenance. We send warnings and reminders through all the channels necessary in order for them to have all the information on what paperwork needs to be done, on which date and the cost involved in keeping each of their files in force.

The second is representation before the official bodies. This service involves us receiving, processing and sending any communication issued by any Body in the world in relation to a specific file to the client along with our advice so that they understand its scope and make the most suitable decision for their interests.

The third is monitoring the official journals. In the case of some registrations, such as is the case with trademarks, there are some offices, as is the case with the Spanish Patent and Trademark Office (SPTO) and the European Union Intellectual Property Office (EUIPO), that do not ex oficio reject an application due to the fact that there is an identical or significantly similar trademark in force. The holder of the trademark must lodge an opposition to the trademark application within a very limited period of time in order for the application to be rejected. This means we must review the official industrial property journals of different bodies on a daily basis in order to pass on to our clients the applications that we believe affect their interests.

Our clients sometimes need information about the status of a competitor's file that is being processed. Our file monitoring service keeps track of the administrative situation of these files in order to inform our clients of the steps taken when this file is processed. This service is especially relevant in the case of patents, in which its content, and therefore its scope, can be dramatically changed.

Managing the change of ownership before the official bodies is complementary to the purchase of the registration. It is a necessary administrative procedure that is sometimes complicated by the amount of documents requested by the corresponding office. Our work involves gathering all the necessary documents to make it easier for the client to carry out these procedures and acting as intermediaries with the corresponding office until the transfer is completed.

Registering licences is even more complicated than for transfers since the details of the terms of the licence, as well as the information of the licensor and licensee, regarding the licence of use contact that is signed between the parties must often be provided.

Oppositions to applications for trade names, national trademarks, European Union trademarks, international trademarks, invention patents, utility models, European patents, industrial designs,community models, etc.

In many processes it is possible to file an opposition within the administrative procedure to prevent or nullify the granting of a registration. Our technical office and legal services work together to defend the interests of our clients and prevent third party registrations that do not meet the applicable legal requirements from being granted.

These technical reports consist of identifying, obtaining and analysing publically available patent documents. The private databases with which we work give us access to over 40 patent offices worldwide, providing over 90 million documents. Technical reports are prepared by subject matter, locating all the documents that refer to a specific technical solution, or by people, identifying the patents that are applied for by a specific holder or inventor. Once the most relevant documents have been found, they are analysed in order to provide the client with those closest to the solution sought, preparing a technical opinion on their relevance. They are especially useful when initiating a new project in order to know the state of the art and thus save time and money in obtaining solutions that have perhaps already been found.

Similarity with trademarks in force is the main obstacle to registering trademarks. It is essential to carry out a prior assessment on the registered trademarks that are similar in the same sector or related sectors in order to determine the best trademark registration strategy.

Industrial property, patent, trademark and industrial design registrations as intangible assets have an economic value that is hard to quantify. Knowing the value of proprietary patents, trademarks and designs can be very important, whether for business transfer, interest in assigning a specific asset or requesting a guarantee or credit. Internationally recognised procedures are applied when assessing these assets in order to obtain a figure that can be used as a reference.

Patent infringement reports provide an in-depth and accurate analysis on the scope of a patent in order to determine whether the product or method to be carried out falls within the scope of protection of the patent and whether the marketing or manufacturing of the same can therefore give rise to the holder of the patent lodging an infringement claim.

Freedom to Operate Report (FTO) reports aim to track all patents that affect the implementation of a product in order to determine whether it can be released on the market without the risk of infringing any earlier right.

This service consists of periodically sending reports monitoring the publication of new patents for a specific holder, or of a technical concept such that the client is immediately informed of all new patents that could be of interest to them.