JUVE Patent

JP Karsenty has a solid experience in patent law. It is well known for its continuous practice of infringement litigation and its specific proceedings, as well as for its knowledge of specialized jurisdictions.

The firm assists and advises companies of all sizes in their efforts to enhance and protect their inventions and technical innovations.

JP Karsenty works closely with several French and foreign patent attorneys with whom it maintains privileged relationships. This collaboration allows JP Karsenty’s attorneys to master the most technical aspects of its clients’ patents in any field. Thus, the firm is involved in a wide range of fields such as chemistry, pharmaceuticals, biotechnology, cosmetics, food processing, mechanics, cars, telecoms, IT, etc.

JP Karsenty develops contractual, valuation and litigation strategies for its clients in order to meet all their needs and best serve their interests. It assists them in the negotiation and drafting of all legal documents related to the exploitation of patents (assignment agreements, licenses, non-disclosure agreements, communication of know-how, etc.).

The firm also intervenes in discovery proceedings to collect evidence of potential infringement and the seizure of infringing products. In this respect, the firm has developed a national network of bailiffs, familiar with the particularities of patent law and the issues related to the confidentiality of the seized items.

The lawyers have a strong litigation practice before the specialized courts and represent their clients in legal proceedings before the Hight Court and the Court of Appeal of Paris, which have exclusive jurisdiction for patent proceedings.

Ranking Décideurs magazine 2021

Patent litigation – Recommended

Patents : Pharma, biotech, and life sciences litigations – Excellent

Legal works in this area

Contractual – Consultancy 

• Negotiation and drafting of patent assignment agreements
• Negotiation and drafting of patent license and know-how license agreements
• Negotiation and drafting of patent co-ownership agreements
• Negotiation and drafting of non disclosure agreements
• Negotiation and drafting of collaboration and research and development agreements
• Advising and drafting of contracts relating to employees inventions (analysis of the conditions of realization of an invention, in order to determine who is his owner, drafting of assignment of rights on an invention etc.)
• Consultation and analysis of the most appropriate means to protect innovations (patents, know-how etc.)

Pre-litigation – Litigation

Interventions in the context of pre-litigation by:

• drafting advice on the chances of success of an infringement, invalidity or patent claim action, on the appropriateness of patent limitation proceedings with respect to a dispute, on the evaluation of the prejudice and financial risks of proceedings etc.
• drafting of warning letters, notice letters, etc.
• pre-litigation negotiations

Assistance in evidentiary and seizure procedures, in particular by:

• The organization of bailiff’s reports such as purchase reports or internet reports,
• The drafting and presentation of requests, in order to be authorized to carry out a seizure for infringement,
• The assistance of the bailiff and of the industrial property attorneys authorized to assist the bailiff, to prepare the seizure operations,
• The organization of sorting expertise procedures or confidentiality circles to select the items placed under seal that are useful for demonstrating the infringement, etc.

Assistance and representation in claim as well as in defense, in first instance as well as in appeal, in legal proceedings (emergency proceedings or on the merits) before the specialized jurisdictions having exclusive jurisdiction in patent matters:

• Action for patent infringement and unfair and parasitic competition or infringement of business secrets
• Action for patent nullity
• Action to claim a patent
• Action for a declaration of non-infringement

Assistance and representation in emergency proceedings (summary injunction and provisional measures)

Negotiation and drafting of settlement agreements

Recent cases

• Litigation for patent infringement and validity litigation in the field of cosmetic, mechanical, pharmaceutical, tech products (patents including in a standard with FRAND licenses and patent troll issues), etc…
• Summary action, withdrawal and modification of a court order having authorized a counterfeiting seizure at the head office of a third party
• Drafting of a contract for the transfer of an invention made by a temporary employee
• Consultation on the possibility of invoking and benefiting from the exception of Patent prior user rights
• Consulting on the effects of a disclosure during an invitation to tender on the validity of a patent