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Practice

Intellectual Property

Intellectual Property

IP is a strong area of focus for the Firm. It is managed by a team of best Russian lawyers, including patent and trademark attorneys who are also professionally acclaimed high-calibre attorneys-at-law with PhD (Law) degree. The section's hallmark is trademark and patent litigation, which lies in the borderland between practice of law and patent management.

AGP provides comprehensive legal support for IP registration, use, assignment and defence against infringements. With their field knowledge of trademarks, inventions and copyright, our lawyers assist clients in competent management of such assets, allowing you to keep your competitive advantage and safeguard your intellectual properties.

AGP's achievements have been recognized by:

  • Managing Intellectual Property magazine in 2017: named Elena Gorodisskaya, head of the section, among the best IP experts
  • Legal500 EMEA: in 2017 named AGP one of the best IP practices
  • Chambers Europe: in 2013 ranked the Firm 2nd in the Intellectual Property category
  • Pravo.Ru-300 a Russian rating: named AGP lawyers among top IP lawyers in Russia
  • Best Lawyers: regularly ranks the Firm's lawyers among top professionals in the field

We provide the following services:

  • Representing clients before commercial courts, IP Court and courts of general jurisdiction in all categories of disputes relating to protection of trademark and other intellectual property rights, including:
    - appealing against decisions of the Russian PTO (Rospatent)
    - patent disputes
    - cancellation of trademark registrations
    - disputes relating to execution, performance or termination of IP license, assignment or pledge agreements
  • Representing clients in unfair competition disputes, in particular before the Federal Antimonopoly Service of Russia (its local offices), Rospatent and IP Court
  • Representing clients before the Federal Customs Service during administrative investigations of shipments of counterfeit products
  • Comprehensive legal support of transactions (including M&A) involving trademark or other IP rights, including:
    - negotiating transaction terms
    - transaction structuring
    - drafting agreements, and
    - recordal of assignment/pledge or licensing of IP rights at Rospatent
  • Comprehensive legal support for registration of rights to trademarks, inventions, utility models, industrial designs or other IP rights in Russia:
    - patent search, patent clearance or trademark search
    - drafting trademark applications or applications for inventions, utility models, industrial designs, computer programs or data bases
    - client support from filing an application up to obtaining a trademark certificate or patent
    - representing clients when appealing against examiner’s opinions at Rospatent or against Rospatent’s decisions in court
    - renewals and maintaining of IP rights (payment of annuities)
    - making changes to a trademark certificate or patent
  • Comprehensive legal support for obtaining international trademark registrations through the World Intellectual Property Organization and national trademark registrations in jurisdictions other than Russia
  • Comprehensive legal support for registration of inventions and utility models in countries other than Russia, including by filing international PCT applications, and support for registration of industrial designs; comprehensive legal support for obtaining Eurasian patents
  • Recordal of trademarks in the Intellectual Property Register of the Federal Customs Service
  • Representing clients in anti-counterfeiting actions, including administrative and criminal proceedings
  • Advice on all matters relating to protection or infringement of trademark or other IP rights
  • Advice on antimonopoly issues arising from trademark registration or use in violation of antimonopoly legislation
  • Preparing expert opinions
  • Due diligence on trademark or other IP rights, risk identification, preparing DD reports and risk minimization
  • Advice on tax issues stemming from acquisition, disposal or use of trademark or other IP rights

Practice Professionals

Elena Gorodisskaya
Elena Gorodisskaya
Partner | Attorney | Trademark Attorney | PhD (Law) | Practice leader Intellectual Property
Alexey Gorodissky
Alexey Gorodissky
Partner | Attorney | Trademark Attorney
Nikolai Popelensky
Nikolai Popelensky
Counsel | RF Patent Attorney, licence No 31 | Eurasian Patent Attorney, licence No 77
Anatoly Sherstin
Anatoly Sherstin
RF Patent Attorney, licence No 1583 | Eurasian Patent Attorney, licence No 338

Practice Representation

General Electric
Successful defense of General Electric and its Russian distributor of electrical equipment. A notorious Russian patent troll holding a number of dubious patents brought a patent infringement action against GE’s distributor and claimed a compensation for each instance of sale of the products which allegedly infringed his patent rights. Thanks to AGP defense team, the claimant’s patent was declared invalid and his claim was dismissed.
Major alcohol beverage producer
Comprehensive due diligence on more than 400 intellectual property assets to be pledged and drafting IP rights pledge agreements.
Pharmaceutical project investor
Development of trademark/IP rights license and sublicense agreements unparalleled in licensing practices in the Russian pharmaceutical sector. The agreements have enabled the owner of the exclusive IP rights and trademark used to manufacture a medicine and the investor (AGP client) to delineate their regions of interest and allow them both to manufacture and sell the medicine using different dosage forms.
Metropol Joint Venture LLC
Successful representation of the client before the Chamber for Patent Disputes in disputes over illegal acquisition of the Metropol trademarks by third parties. The Chamber invalidated the third party trademark registrations.
Forsythe LLC
Successful defense of the client’s ownership rights to a database for monitoring and analysis of government and private pharmaceutical tenders in Russia.
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