Expertise
Matheson’s specialist Intellectual Property practice is geared to meet the demands of our diverse domestic and international client base on both contentious and commercial intellectual property matters. We offer a dedicated Intellectual Property team within our Technology and Innovation Group, as well as having Media and Entertainment.
The specialist nature of our Intellectual Property practice groups enables us to offer a focused industry-based expertise while also providing strategic and expert intellectual property law advice and litigation services. The Group comprises dedicated IP lawyers who are committed to delivering pragmatic, commercial and concise advice to our clients.
The Group advises on corporate intellectual property due diligence reviews and strategic portfolio advice, and the acquisition / divestment and licensing of intellectual property rights, as well as preparing and implementing corporate intellectual property protection programmes, the international re-structuring of IP rights, and advising on employee rights and corporate ownership of intellectual property rights.
The Group’s practice includes advising on copyright, designs and databases, including computer game protection advice and licensing, registered and unregistered designs, database rights, Internet based trade mark and copyright infringement, website intellectual property risk management, international domain name protection strategies and domain name disputes. We also advise on strategic patent protection and commercialisation advice, research and development agreements and technology licensing, and patent ownership, infringement and validity disputes. The Group’s expertise in branding and trade mark includes branding and trade mark protection programmes, trade mark filing and prosecution through Matheson trade mark advisors, trade mark and get-up licensing, protection of image and personality rights and business reputation.
In conjunction with our Commercial Litigation and Dispute Resolution Department, the Intellectual Property Group also advises on trade mark infringement and passing-off disputes, and anti-counterfeiting and customs registration.
Lawyers in the Intellectual Property Group take an active role in local and international organisations concerned with the development of intellectual property law. Organisations in which we are involved include the International Trademark Association (INTA), International Association for Protection of Intellectual Property (AIPPI), Licensing Executives Society (LES), MARQUES (The Association of European Trade Mark Owners), Pharmaceutical Trade Marks Group (PTMG), Domain name dispute resolution services administered by the World Intellectual Property Organisation (WIPO) Arbitration and Mediation Centre and by the Czech Arbitration Court, and the Intellectual Property Law Committee of the Law Society of Ireland.
Our Team
Our recent experience in Intellectual Property includes:
- Advising a multi-national medtech company on the transfer of intellectual property within its group structure as part of an overall group restructuring while maintaining existing royalty arrangements with a third party, as well as on the ownership, including registration of ownership, of the intellectual property in a newly discovered and developed intellectual property, and the flow of intellectual property arising in relation to intra-group research and development arrangements and reporting structures on an arms-length basis.
- Advising a financial services provider on mobile and app development contracts, involving complex intellectual property ownership and licensing rights.
- Advising a game developer on intellectual property rights and key contracts with a number of gaming publishers in relation to global deals, including multi-jurisdictional key contracts through which new arrangements and ventures were put in place, involving complex issues associated with legacy intellectual property positions.
- Advising a multinational technology company on the intellectual property issues arising in connection with its streaming services.
- Advising a multi-national company in relation to the reuse by a service provider of trade secrets and intellectual property rights in the provision of services to a potential competitor.
- Advising a global corporate in dealing with a non-performing licensee including in relation to claims and counterclaims disputing ownership of intellectual property and other critical aspects of performance.
- Advising a multi-national semi-conductor producer on a number of intellectual property generating research collaborations with third level institutions in Ireland, covering research and collaboration agreements, Enterprise Ireland grant agreements, and issues associated with the creation of IP, securing patents and securing options over resultant IP.
- Advising a multinational technology company in relation to a number of research and collaboration contracts, including strategic advice in relation to intellectual property contributions and ownership, cloud based services and alignment with the National IP Protocol.
- Strategic advice to a global medical company on the risks of both a preliminary injunction and a permanent injunction being granted to a third party seeking to have our client’s trade mark application cancelled.
- Advising an equipment manufacturer on protections and strategies for dealing with the illegal importation of goods protected by trade marks and other intellectual property rights.
- Advising a biopharmaceutical company focused on the discovery, development, and commercialization of innovative medicine with its Irish operations, including its intellectual property structuring and on key intellectual property research, collaboration and commercialisation documentation used in its worldwide business.
- Undertaking strategic IP due diligence investigations and advising on IP issues in the context of mergers, takeovers, new ventures and investments in the insurance and cable / satellite television sectors, manufacturing, retail, biotechnology and Internet based software sectors.
- Advising and representing an international pharmaceutical company in a patent infringement dispute.
- Advising banks, insurance companies, Ireland's national postal service provider, an international publishing conglomerate, international media company on trade mark and branding strategies and transitional arrangements in the context of mergers, acquisitions and joint ventures.
- Advising Irish national sporting body on exploitation of image rights.
“I used Matheson for a cross-border deal involving certain complex intellectual property issues and contractual rights. They were down-to-earth pragmatic and came up with a number of potential solutions to solve the issue.”
Intellectual Property: European Legal 500 2020
“My experience with them is in the trademark area. They have absolute command of the substance of the trademark laws and also important insights on how Brexit will affect certain Ireland-related trademark matters.”
Intellectual Property: European Legal 500 2020
“They provide pragmatic, commercial advice that is specific to our sector.”
Intellectual Property: European Legal 500 2020
“International rights holders love to work with Matheson’s IP unit as it puts time and effort into understanding their individual objectives and the industry landscape in which they operate.”
IAM Patent 1000 2019
Matheson is “a great co-counsel for US firms to use for their Irish law and EU law trade mark and privacy matters”.
European Legal 500 2019
Matheson provide a "faster service, quicker turnaround and a more personal service".
Chambers Europe 2019
"Matheson has top-class practitioners in all legal areas. Its IP offering is fronted by the fabulous Deirdre Kilroy, a transactional ace who has handled scores of licensing, franchising, collaboration and disposal deals in her time."
World Trademark Review WTR1000 2019
"Excellent legal expertise, a commitment to quality and a deep understanding of clients' needs."
Chambers Europe 2018