PATENTS

We are able to provide and coordinate the following services for to the protection and maintenance of Patents of Invention and Utility Models across 19 Latin American countries:

• Conducting patent searches regarding the uniqueness and/or infringement, including searching at the information centers of the respective local Patent Offices in Latin America;
• Patent drafting, including preparing technical drawings;
• Technical translations from English, French, Italian or German into Spanish or Portuguese.
• Counseling on the patentability of inventions;
• Filing and prosecuting applications (including preparing amendments) claiming Paris Convention priority;
• Filing PCT National Phase applications;
• Filing recordation of changes of names and changes of address of Patent owners for existing Patents or pending applications;
• Patent watch services;
• Preparing or replying to objections, cancellations actions, appeals and nullification actions;
• General counseling regarding agreements involving licensing and/or assignment of patent rights, including preparing and organizing the required documents.

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INDUSTRIAL DESIGNS – DESIGN PATENTS

We are able to provide and coordinate the following services for to the protection and maintenance of Industrial Designs across 19 Latin American countries:

• Search of prior Industrial Design registrations;
• Drafting design specifications, including the preparation of drawings;
• Filing and prosecuting Industrial Design applications;
• Filing of renewals, recording changes of names and changes of address of Industrial Design owners in existing registrations or pending applications;
• Preparing or replying to objections, cancellation actions, appeals and nullification actions;
• Industrial Design watch service;
• Technical translations from English, French, Italian or German into Spanish or Portuguese;
• - General client counseling regarding agreements involving licensing and/or assignment of Industrial Designs, including the draft and organization of the required documents.

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COPYRIGHTS, ENTERTAINMENT LAW, INTERNET AND SOCIAL MEDIA (CEIS)

Our CEIS Division is responsible for providing the following services:

• Organizing, filing and prosecuting copyright applications for the protection of literary, artistic and scientific works, including software and digital applications;
• Providing legal advice regarding the wide variety of Entertainment Law matters relating to the radio, television, film, theater and music industries; including the drafting and evaluation of contracts involving performers, authors, composers, designers, broadcasters, producers and other IP rights owners;
• Providing legal advice to Internet Service Providers and Web developers, in relation to diverse aspects and rights related to any Internet project or activity; including the drafting and evaluation of contracts dealing with programmers, designers, authors and other IP rights owners;
• Preparing, or replying to, objections, oppositions, cancellation actions, appeals and nullification actions;
• - Providing legal advice in relation to the diverse aspects and rights involved in any project or activity related to social media; including the drafting and evaluation of contracts for programmers, designers, authors and other IP rights owners.

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ENFORCEMENT OF IP RIGHTS

One vital aspect of our practice is the Enforcement of Intellectual Property Rights. We adopt a very hand on approach to these operations, which is essential to the high success rate that we achieve. We understand that IP piracy and counterfeiting is one of the greatest challenges to the complex phenomenon of the global economy, where organized crime networks are among the main actors. This means that any IP Enforcement program must take this into account, focusing on more than the legalistic elements, to initiate and develop innovative thinking to promptly react to the adaptability of the counterfeiters. We offer our clients a Regional vision, understanding and approach to our IP Enforcement services/advice and we strongly believe in developing and executing comprehensive campaigns instead of isolated raids or actions, which, in our experience, are substantially less effective. As a result, our services include every aspect of a full enforcement program, starting with our capability to offer investigations at different levels for identifying sources, thus leading to the formulation of an all-encompassing operational plan incorporating all the available actions and measures, such as:

• Serving cease and desist letters;
• Investigating and determining the scope of the forgeries;
• Identifying the perpetrators;
• Conducting raids and seizures at different levels (Retail, Distributors-Wholesalers, Customs);
• Post raid follow up, including deterrent publicity, Court actions and other Police and Customs pressure on shippers;
• Registration of IP rights at the different Customs Offices where the register is available;
• Organizing training seminars at with Customs authorities for the identification of counterfeit goods.

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ONLINE BRAND PROTECTION

Understanding that any IP enforcement program would be just futile if it does not include the monitoring and enforcement of infringements occurring at the Internet, as well as the necessity to provide a local component to any online brand protection program to be developed in Latin America, at GR LEX we have developed a solid alliance with the leading online brand enforcement and content monitoring service in Asia, Strategic IP Information (SIPI), a company headquartered at Singapore, with offices in China and India, counting with the participation of our partner Cástor González-Escobar as its Director for the LATAM Region. Our services on this field include:

• Marketplace surveillance & online enforcement

• Search for infringements on the leading regional marketplaces to identify and takedown infringing activity;
• Identify ‘High Value Targets’ based on past sales, previous offers and reputation score of the sellers;
• Identify a watch list of unauthorized sellers on MercadoLibre and other marketplaces in consultation with the client.
• Monthly unlimited takedowns.

• Social media surveillance & online enforcement

• Search for commercial buy and sell references related to the client’s products on global and local social media and blogs from users located in the Region, in order to detect and identify:

• The unauthorized use of the mark on profiles and page names;
• Users using copyrighted material to sell products;
• Identify social media users using social media to promote infringing products on marketplaces and independent websites.

• Independent website surveillance

• Identification of websites that are dealing in counterfeit products;
• Identification of clusters of websites dealing in counterfeit products;
• Online C&D to site, ISP & registrar;
• Update of our proprietary VERISITE™ database with information, including but not limited to registrant details, payment processors, hosting company, and contact details.

• Adwords/paid search

• Track advertisers that are using the client's brand mark in their ad text on Google, Yahoo and Bing and, upon request, Baidu and other search engines;
• Evaluate whether these advertisers are in compliance with the relevant search engines AdWord and trademark policy;
• Filing of complaints on the relevant search engines for violation of Adword/paid search policies.

• Domain name surveillance

• Search and identify domains that are infringing upon the Client’s brand or marks, covering the ccTLDs of the different countries of the LATAM region;
• Monthly reports highlighting live websites associated with infringing domains;
• Risk based classification of websites identified;
• Service of online C&D notices to the site owner and registrar;
• Upon request, domain name recovery through UDRP proceedings, including when the contract is not in English, as generally occurs with ccTLDs in the LATAM region.

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FOREIGN INVESTMENTS (LEGAL SERVICE ONLY AVAILABLE IN VENEZUELA)

As a natural evolution of our practice and based on our experience resolving complex matters for foreign investors doing business in Venezuela, GR LEX created a Division for attending Foreign Investors, which is responsible for providing the following services:

• Providing legal and practical advice about the complex legal framework and business environment for doing business in Venezuela;
• Incorporating and structuring new legal entities, including, but not limited to, companies, corporations, limited partnerships, local branches and subsidiaries;
• Legal advice for mergers, acquisitions, associations, joint ventures, licensing, outsourcing, technology transfer, import/export and distribution and representation agreements;
• Providing legal advice and representation in connection with public and private bidding processes, including, but not limited to, conducting the required due diligences, preparing and organizing the necessary documents, registration at any public entity as international supplier; drafting bid proposals and participating directly in the bid process.

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