Jeremy Lack provides legal advice and services in a broad range of intellectual property fields, ranging from patents to copyrights, trademarks, design rights, database rights, trade secrets, domain names, and utility models. Using his “seven building blocks” approach, he assists his clients in identifying what IP rights they may have, how to obtain them in different jurisdictions, how to protect them and generate value out of them, and how to enforce them. He helps his clients set up and implement their own customized IP strategies, taking into account ownership structures, tax and fiscal optimization processes, and cost-effective ways of managing IP, based on a collective approach to intellectual property that includes all stakeholders. He works with a wide network of IP specialists in North America, Europe and Asia.It is a subject he teaches at the EPFL in Lausanne and for the University of Geneva and on which he has provided several trainings for WIPO and INSME
LEGAL & IP STRATEGIC ADVICE
Services Include:
Identifying IP Assets
- Creation & Recognition of IP assets
- Conducting IP audits
- Regular IP reviews
- Reviewing filings and applications
- Scope analysis
PowerPoint presentations:
Defending and enforcing IP Rights
- Cease and Desist notices
- License Agreements
- Multiple country and cross-border IP litigation
- IP arbitration
- IP conciliation
- IP mediation
- IP Hybrid ADR mechanisms
Managing IP Assets
- Tracking IP assets
- Evaluation of IP assets
- Reviewing search analyses and reports
- Coordinating competitive IP landscape analyses
- IP Teambuilding
- IP budgets and accounting
- Optimal structures for holding and managing IP assets
- Financial and tax planning considerations for IP
- Generating revenues from IP
- Licensing strategies
- Assignment strategies
- Portfolio management
- Brand management
Publications:
- Managing disputes in the life sciences, Nature Biotechnology, Vol. 36., No. 8, August 2018, pp. 697- 700
- The Growing Need for ADR in IP Disputes, Intellectual Property Magazine, December 2010 pp. 19-22
- Maximizing Brand Value: Top Tax Strategies for Brand Owners, article presented at INTA 2010 in Boston, USA, and co-written with B.W.S. Bassett and K. Butcher (Morgan Lewis) & M. Schottle (ExxonMobil)
- Presentation to INTA on “Understanding the Mind in Trademark Disputes: Practical Considerations for INTA’s Panel of Neutrals” in Boston, MA (May 24, 2010).
- National Intellectual Property Rights: the Importance of Mediation in an Increasingly Global and Technological Society, 72 Arbitration 4 (2006) pp. 325-328
- Strategic Use of Intellectual Capital: IP Audits and Leveraging IP Assets in Business Strategy, WIPO-INSME International Training Program (July 2006)
- Using IP as a Tool for Accessing Finance and Harvesting Returns From IP Assets, WIPO-INSME International Training Program (July 2006)
- Management of Intellectual Property in Publicly-Funded Research Organisations: Towards European Guidelines, European Commission, Directorate-General for Research, EUR 20915 EN Working Paper (2004)
- Co-editor of the LES European Technology Transfer Manual (ed. 1999)