American multinational technology company

Full-service management of all non-US patent and design matters across an American multinational technology company’s entire life cycle, from patentability advice and searching to renewals.

Background #

This American multinational technology company owns and operates several well-known social media platforms and also has a particular focus on building the metaverse. They have become a market leader in AR and VR technologies following significant investment and innovation and the resultant success of a line of smart products. 

Murgitroyd began its partnership with this company in 2019 and has helped their in-house IP counsel team shape and progress its patent and design portfolio and secure key IP rights internationally to protect their innovations throughout its markets.

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Challenge #

Like any in-house team, their in-house counsel team has many responsibilities, including products, new innovation, and open source. 

They work in a fast-paced, high-tech space with numerous competitors, and this company needs to remain competitive and be a leader in this space. Having a commercially relevant IP portfolio and clear oversight of this portfolio is key to their success.  

As one of Europe's largest IP firms, Murgitroyd had the capacity to assume responsibility for their entire non-US patent and design portfolio. Therefore, they chose Murgitroyd as a strategic partner to provide maximum support in managing and implementing their IP strategy.  

Murgitroyd's expansive team of European Patent Attorneys can provide sophisticated and commercially relevant advice on all office actions, enabling the company to obtain the best possible protection for their intellectual property portfolio. 

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Action #

Portfolio Building and Management#

Murgitroyd has significant experience handling application filings and has a dedicated team—IP Portal—who are experts in all matters related to filings. Thanks to our significant purchasing power, Murgitroyd was able to obtain discounts and preferential rates from foreign associates to reduce overall costs. 

Standard procedures for filing and prosecution were set up, ensuring that each application was handled in a consistent manner. Office Actions are reported to the relevant in-house team member according to a standard template, along with advice and recommendations from a European Patent Attorney. Accordingly, the prosecution of every application is led by a capable and qualified person, and the in-house team are presented with information in a familiar and easily digestible format.

Acquisitions#

Since beginning the partnership, we have worked together to evolve and advance their IP portfolio by focussing the portfolio in only the most commercially relevant jurisdictions and adding thereto with several acquisitions of competitors holding useful IP rights.

In addition, the Murgitroyd paralegal team takes the initiative to carry out all necessary actions to successfully integrate and assimilate the newly acquired rights into the company’s portfolio. The in-house and Murgitroyd attorney and paralegal teams cooperate daily and remain synchronised with a weekly meeting and an integrated paralegal secondment from Murgitroyd.

Competitors#

Murgitroyd’s experienced team of experts assist this company in the ever-competitive high-tech market. In particular, Murgitroyd has worked alongside their product teams, providing competitor analysis and landscaping and enabling and guiding IP in new and upcoming areas. 

Global Business Challenges#

During global business challenges, such as those faced during COVID, Murgitroyd has remained a steadfast strategic partner. Our experienced and dedicated team is able to remain agile and responsive and assist the company in navigating change management. Throughout these times, the Murgitroyd team has constantly met their specific needs. 

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Outcome #

In choosing to work with Murgitroyd for their entire non-US patent and design portfolio, this multinational tech company has consolidated their intellectual property service providers, enabling them to clearly see their IP portfolio globally. In turn, this has opened up resource in-house to allow them to focus on other upcoming and exciting projects. 

With Murgitroyd's help, they have secured commercially relevant rights in their largest markets. Each patent family has a clear focus and prosecution direction, resulting in an overall reduction in costs and a clear strategy to work to. As a result, they have been able to obtain a leading share in each of the markets in which they operate while achieving a fully protected portfolio.

Attorneys Involved #

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Catherine Bonner

Director, Patents, Electronics Patent Practice Group Coordinator

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