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Protecting Intellectual Property Assets Abroad? Choose the Right Team

Sometimes a US patent is only the start. Schwegman’s lead UK attorney, John Collins, is a European patent and trademark attorney who advises many of our clients on foreign filing strategies. He explains, “If a client wants to extend their patent to cover the UK or Europe, they need to use a UK or European attorney.” Schwegman’s UK office and foreign associate network are experienced at helping clients protect their intellectual property assets abroad.

“Each country has its own patent office. Therefore, for representation, you need to be qualified before that office.” As John explains, the law in the UK is quite different from American patent law. “Even the basic principles of what you can patent are different. And the procedure is very different.” Schwegman’s UK attorneys are skilled at receiving requests from U.S. attorneys and guiding them on their next steps. John continues, “Sometimes it’s a matter of readjusting position. We say, ‘Tell us what it is you’re trying to get to. We’ll tell you how to get to it, under our system.’ Or, sometimes clients realize, maybe they can’t get what they have in the US, and need clarity on another direction to try and go for.”

When Schwegman US counsel can call a UK team member instead of a different firm abroad, it can help improve communication. Principal Steve Lundberg explains, “It’s eliminating the middleman. The understanding is better. Traditionally, foreign counsel reports to the U.S. attorney, who reports back to the client. But because we have a UK team, this eliminates a barrier and a level of repetition.” Steve continues, “Having a UK team makes communication about matters so much easier. Our American attorneys can just pick up the phone and talk to a colleague from our firm who happens to be in the UK. They can discuss matters very easily. Having our own UK team brings the service closer – and can reduce the cost, as well.”

Like their US counterparts, Schwegman’s UK team possesses deep scientific knowledge. For example, John Collins has a doctorate in Physics from London University. Annette Flaherty earned a PhD in Mechanical Engineering from the University of Strathclyde, and David Keston has a doctorate in Plasma Physics from the University of Glasgow. UK team members also include attorneys John Gray, Bev Ouzman, and Bryn Williams. They have studied such fields as electronics and physics, biochemistry, and mechanical engineering, respectively.

“Our UK team works closely with our American team,” John Collins describes. “We gain efficiency through team communication. Working together helps avoid repetition, and avoid attorney duplication. Efficient work: That’s the point, really.”

As Steve Lundberg puts it, “We can bring our US customers closer to the UK. It gets rid of the psychological distance between the two countries. We’re able to bring the expertise closer.”

Beyond our UK team, Schwegman also has a network of foreign associates who can help our clients protect their intellectual property in other countries. Our network of foreign associates facilitates filing abroad, as well as handling the drafting and prosecution docket for our clients. Further, Schwegman has a dedicated Director of China Intellectual Property, Aaron Wininger. Aaron counsels both U.S. and Chinese companies on portfolio development and preparation of their patent applications and office action responses.  His knowledge of both the Chinese and American markets allows him to advise his clients as they expand their patent portfolios and look for investors to help the company grow. 

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