Licks Attorneys

IAM Research

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“Licks sets a very high standard when it comes to patent work in Brazil. It is a safe pair of hands for the most important assets and has a high rate of success.” A unique selling point is the depth of the firm’s expertise at the intersection of IP, regulatory and healthcare law, which serves it well when dealing with complex issues around compulsory licensing, for example. The ensemble excels in life sciences patent litigation but, during the review period, played a key role in all major information and communication technologies litigations in Brazil, showing that there is no case it cannot handle. At the forefront of the practice is Otto Licks, a beacon of light for pharmaceutical patrons, who masterfully oversees major patent projects and shines as a top litigator. He added a notable highlight to his résumé recently in representing several associations as amicus curiae, in a challenge regarding the constitutionality of an article of Brazilian patent law at the Supreme Court. His other work includes representing Merck Sharp & Dohme in an action against Laboratório Químico Farmacêutico Bergamo regarding infringement of his client’s patent covering the product Temodal. He regularly links up with his fellow founders Eduardo Hallak and Rodrigo Maior, doing so, for example, in connection with the Supreme Court case and on a recent major standard essential patents (SEPs) dispute representing VoiceAge EVS against Finnish mobile device company HMD Global; this collaboration puts major firepower at the fingertips of clients. Another highly experienced litigator is Carlos Aboim, who spearheads important pharmaceutical and high-technology campaigns. He has recently been in action for DivX in a case against Samsung, in which he obtained a preliminary injunction for his client prior to the conclusion of a global patent licensing agreement that settled the case. One highly praised member of the group is Viviane Kunisawa, who specialises in life sciences: “Viviane has vast knowledge of IP-related agricultural issues and easily navigates highly specialised areas, including plant variety protection, biotechnology patents and regulatory data protection. Her ability to communicate and capture businesses’ interests adds an important element to her opinions and recommendations.” Rafael Tögel co-heads the patent department and is the go-to for prosecution; a seasoned engineer, he takes the reins on mechanical matters.

Firm Profile

Licks Attorneys is one of Brazil’s most respected litigation law firms, with unparalleled commitment to local and worldwide clients in the country. The firm focuses on complex litigation and its lawyers boast an outstanding track record in handling the highest-profile IP and regulatory disputes. The firm’s practice shapes the development and direction of IP, technology and regulatory law in Brazil.

With offices in Rio de Janeiro, São Paulo, Brasilia, Curitiba and Tokyo, the team combines industry knowledge with legal expertise to assist a wide variety of clients – from Fortune 500 companies to high-tech start-ups making their debut in the Brazilian market.

The firm’s multidisciplinary attorneys have handled complex commercial and corporate claims over the past 20 years in major sectors, including technology, the internet, telecommunications, life sciences, medical devices and finance.

Licks Attorneys, doesn’t just solve problems; it anticipates and helps clients plan accordingly. This carefully crafted approach is why it is Brazil’s leading firm in litigation and patent matters. The firm puts its client’s interests at the forefront of every operation, always seeking the quickest and most cost-effective solutions. The firm also relies on the strengths of a multicultural team which not only speaks its clients’ language, but also understands their legal and business cultures.

With a litigation practice that combines legal expertise, technical industry knowledge and a pragmatic approach to dispute resolution, the firm has an overall success rate of 82.6% and has been engaged in most of Brazil’s highest-profile IP, life sciences and technology cases.

The firm has the most extensive patent litigation practice in the country. It is involved in almost every high-profile case concerning complex technologies in Brazil. With outstanding results, Licks Attorneys has the most successful telecom practice working for both patent owners and implementers.

Licks Attorneys’ patent prosecution group consists of professionals with a technical background and well-experienced lawyers. This combination has produced a 100% success rate in expediting patent prosecution before federal courts and 88% of allowance before the Brazil Patent and Trademark Office. Challenging established practices and reshaping the boundaries of patentability in Brazil, the firm develops strategies to move Brazilian patent practice to the next level, ensuring high standards of protection for its clients.

Ccommunications technology is another core practice area, with a successful track record for the fastest expedited prosecution, the highest allowance rates, having the ability to engage with members of the government and policymakers at the cabinet level, and the largest and most qualified team of patent litigators. The group has the proven proficiency to maximise the availability, enforcement and monetisation of broad patent rights, backed by the support of the largest investment in information technology and dedicated computer systems in Brazilian patent practice.

Information Security Standards

Protecting client information and ensuring the highest standards of services, the firm’s management system is based on ISO 27001 and ISO 9001.

Main areas of practice

  • Patent litigation
  • Strategic patent prosecution
  • Policy making and government relations
  • Unfair competition
  • Trademark and copyright
  • Food and drugs
  • Life sciences
  • Cyber law, e-commerce and software
  • Cybersecurity and privacy
  • Counselling and transactional
  • Regulatory
  • Complex business litigation

Languages

  • Portuguese
  • English
  • French
  • Japanese
  • Mandarin
  • Italian
  • German
  • Spanish
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