G&B in Europe
Greenblum & Bernstein’s (G&B’s) history of working in Western Europe is long, and very extensive. Over our long history we have developed and built extremely long term relationships which go beyond the day to day correspondences, and extend to a working knowledge of the background issues facing many of our clients. We have represented a number of clients for decades, and almost all over a number of years. These relationships have provided us with a deep understanding of our clients’ businesses and their IP needs, which enables us to better structure our efforts to assist our clients in attaining their IP goals. The European economy has undergone tremendous change over the life of our firm – the European patent system, the Euro, and now Brexit. Client needs have changed as well and we have been there with our clients as they have needed to adapt.
Representing European Clients at the USPTO
Our efforts on behalf of our European clients include the preparation and prosecution of both patent and trademark applications before the US Patent and Trademark. We work in virtually every area of technology, and often conduct interviews with Examiners together with our clients (both personally and via videoconference when permitted). G&B has represented European companies in many contested proceedings before the USPTO, including IPR’s (both as Requestor and as Patent owner), interferences, reexaminations, and trademark oppositions and cancellations.
Representing European Clients in the US Courts
We have represented European companies in litigations in US district courts throughout the US, on behalf of both patentees and defendants. During such proceedings, we have been able to effectively communicate with clients during discovery and hearings by utilizing the firm’s experienced French and German speaking paralegals and staff on an almost daily basis. This has helped to minimize misunderstandings and allow our clients to efficiently participate in complex US court proceedings.
Negotiations/Licenses/Monetization and General IP Strategies for European Companies
Our attorneys have negotiated many settlements and licenses for European companies, both as patentees and licensees. Our European clients have earned tens of millions of dollars for those with IP to protect, and helped minimize liability for those whose products are being attacked as infringing. We have assisted our clients in selling patent portfolios; and enabled other companies to avoid having to take licenses despite allegations of infringement. We have been asked to help companies devise IP strategies, structure licensing campaigns, sell patents to competitors and other third parties, and establish world class internal IP administration – a number of European companies rely on our combination of IP legal and business advice in that regard. Further, G&B has conducted hundreds if not thousands of validity and infringement studies for our European clients, and issued written opinions relating to the same.
Over the last ten years, we have been frequently requested to provide more strategic and general counselling regarding IP matters. The firm has German and French speakers, amongst our attorneys and staff, and we represent many of Europe’s small and middle size corporations as well as a number of world renowned research institutes in a variety of technical fields, including but not limited to automotive, gaming, biotechnology, software, food, electronics and chemistry.
Meetings with Clients
Our patent professionals typically make more than twenty trips a year to Europe to visit with our clients and have made hundreds of trips to Europe since the firm was founded in 1978. Since then, our attorneys and other professionals have collectively spent years in Europe working with our clients – in fact, one of our attorneys has visited more than 300 times! Our attorneys also conduct seminars and courses for our clients, presenting to corporations, law firms, universities on a variety of topics on an annual basis. Such seminars are directed to timely IP issues of concern to clients, from basic US patent prosecution to trademarks, patent licensing, general strategies, and IP management and IP enforcement. During the Covid crisis, while we have been unable to travel abroad as usual, we have continued to stay connected with our clients by having held hundreds of videoconferences to check-in, discuss individual patent matters, and host webinars on various intellectual property-related topics; and we expect to continue this practice even when we are able to again travel to Europe as we did before the pandemic.
European Trainee and Internship Program
For over the last 25 years the firm has been training European law students who intern at the firm, adding to the firms understanding of the cultural issues that drive how we think and view the problems confronting our clients. The US and European IP systems have much in common, but the way we approach solving problems is often very different. The firm’s general understanding of European practice and procedure makes it possible to address problems with an understanding of how our European clients prefer to resolve IP matters.
Contact G&B European Practice Group
If you ever have any specific or general questions about our European practice group, please feel free to contact us. We will be pleased to respond by email, arrange an in-person meeting in Europe, or have a tele- or videoconference to discuss your questions.