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Legal services in intellectual property
IP contracts
Confidentiality agreement (NDA)
A confidentiality agreement defines that any information exchanged during negotiations or collaboration must not be disclosed to third parties without the explicit consent of the other party.
In many situations, an inventor or company must share sensitive information with potential partners or investors before filing a patent application. In such cases, an NDA is essential: it prevents unauthorized disclosure and protects trade secrets during the early stages of developing an invention or when certain processes are intended to remain confidential indefinitely (e.g., internal manufacturing methods).
While a patent grants an exclusive monopoly, an NDA does not. Instead, it allows the disclosing party to take legal action if confidential information is revealed improperly and to seek compensation for resulting losses. Proving damages can be complex, which is why it is highly recommended to include a penalty clause that ensures automatic financial compensation in the event of a breach.
A downloadable NDA template is provided as an example of a typical confidentiality agreement. It should be adapted to each specific situation — we encourage you to contact us before using it to ensure it suits your needs.
License agreement
A license agreement grants the licensee the right to use or commercially exploit an intellectual property asset in return for compensation, while the licensor retains ownership of the IP.
Unlike an assignment, a license does not transfer ownership—only usage rights.
There are two main types of licenses:
- Exclusive license
The licensor agrees not to grant usage rights to third parties and may also agree not to exploit the invention personally. - Non-exclusive (simple) license
The licensor retains the right to use the invention and may grant similar rights to third parties.
Assignment of IP rights
An assignment agreement transfers ownership of an intellectual property right from the assignor to the assignee.
Under Swiss law (Art. 33 para. 2bis PatA), the transfer of a patent or patent application must be made in writing, although the transfer of the underlying patent right (Art. 3 PatA) does not require written form.
Many non-specialists confuse licensing with assignment. A simple analogy helps clarify the difference:
- A license is like a lease — granting the right to use a property.
- An assignment is like a sale — transferring full ownership.
Research and development (R&D) contracts
A research contract engages a researcher or institution to investigate a scientific or technical problem and deliver the results to the client.
A development contract focuses on creating a product, tool, or technical solution.
In Switzerland, R&D contracts are particularly common in collaborations between universities (such as EPFL or HES-Arc) and industrial partners who fund research projects.
These agreements must clearly define:
- Ownership and transfer of intellectual property rights arising from the project
- Usage rights for pre-existing intellectual property owned by each party
- Conditions governing scientific publications related to the project results
Properly structuring these elements is essential to ensure clear rights, fair collaboration, and effective commercialization of innovations.
Technology transfer
Innovation often emerges at the intersection of different disciplines—and different organizational cultures. For collaborative projects to succeed, it is essential to establish a clear strategic vision, define expectations early, and address legal considerations from the start.
With long-standing international experience in R&D collaborations, LUTIN IP is ideally positioned to design and negotiate the legal frameworks needed to transform research results into market-ready solutions. Our team includes an in-house Technology Transfer specialist who serves as an Innosuisse Special Coach for Tech Transfer and is an active SwiTT business member.
Our reputation among both universities and industry partners allows us to facilitate negotiations in a pragmatic, solution-oriented manner that remains aligned with the relevant legal frameworks.
We assist with partnerships between academia and industry, as well as collaborations between start-ups and their strategic partners.
Collaborations between industry and higher education institutions
In collaborations between companies and research institutions, it is crucial to define ownership and access rights to intellectual property before the project begins.
Negotiating these rights requires evaluating each partner’s contribution—funding, technical input, and expected commercial outcomes.
Depending on the structure of the collaboration, agreements typically fall into one of the following categories:
- Funding or sponsorship agreements
- Research collaboration agreements
- IP agreements
- Service agreements
Every collaboration has its own constraints, so agreements must be tailored to each project’s specific needs.
LUTIN IP drafts the appropriate agreement type and supports clients in negotiating suitable terms.
Our extensive experience on both the industrial and academic sides, and our long-standing relationships with many European and African universities and universities of applied sciences, enable us to effectively bridge differing organizational cultures.
Consortia
Consortia allow multiple partners to pool expertise, and they are strongly supported by national and EU funding programs (e.g., National Thematic Networks administered by Innosuisse).
Funding bodies typically set the baseline legal framework for consortium projects. In addition, partners negotiate a Consortium Agreement that defines:
- Project management rules
- Ownership and access rights
- Conditions for commercialization
- Confidentiality, conduct, and IP terms
Because consortia may involve many partners with different goals and expectations, these negotiations can be challenging. A lead partner often needs to pre-define key regulations, especially when funding guidelines are less strict.
LUTIN IP helps clients establish a robust legal framework and supports the negotiation of Consortium Agreements based on their specific needs.
Spin-off licences
Creating a new company from a research group or university IP brings unique challenges—especially because the individuals involved change roles during the process.
Researchers may need to represent the interests of the new spin-off, while technology transfer staff must negotiate on behalf of the institution.
Although institutions follow general practices, spin-off agreements are typically negotiated on a case-by-case basis.
Reaching a long-term, sustainable agreement requires clear communication about the spin-off’s IP needs, business goals, and realistic financial constraints related to royalties.
LUTIN IP supports clients throughout the entire process, from preparing the initial term sheet to signing the licence agreement and beyond, ensuring both parties can achieve long-term commercial success.
IP and partnering strategy for start-ups
Start-ups need to work with multiple external partners to reach the market and grow. A partnering strategy must always align with the start-up’s IP strategy, as early mistakes can limit the company’s ability to use or commercialize its own IP later.
We help companies build a strong IP portfolio, define an IP strategy aligned with their long-term vision, and ensure all strategically relevant IP is adequately protected—whether developed in-house or created in partnerships.
Negotiation of partnership agreements
In partnership negotiations, we place particular emphasis on IP and confidentiality terms to ensure they support our clients’ long-term business goals.
We help define balanced arrangements that address the interests of both parties—an essential condition for a successful and sustainable partnership.
Other services
If you have specific needs that do not fit into the categories above, feel free to contact us. We evaluate all technology-transfer-related requests and will determine how we can best support you.
Audits
From the outset, LUTIN has combined expertise in patents with deep knowledge of technology analysis. This dual focus places us in an ideal position to conduct thorough IP audits that help companies understand the strength, relevance, and strategic value of their intellectual property.
Our audit reports typically address key questions such as:
- Can the company’s patents or patent applications be defended? What is the risk of invalidation?
- Can competitors easily design around the existing patents?
- Are the patents aligned with the company’s business plan and commercial strategy?
- Do they effectively protect the company’s core technology?
- Has the right selection of countries been chosen for filing?
- Is the company exposed to infringement risks from third-party patents?
These audits are particularly valuable for defining priorities, shaping a long-term IP strategy, and ensuring that resources dedicated to intellectual property are used efficiently.
They are also commonly requested by investors, venture capital firms, and corporate buyers in the context of due diligence, mergers, and acquisitions.
Our audit process generally begins with an inventory of a company’s intellectual assets and existing IP rights. We then examine the quality, scope, and strategic alignment of the portfolio and benchmark it—both quantitatively and qualitatively—against competitors in the same sector.
We also engage with R&D and product managers to:
- identify technologies that could be protected more effectively
- assess the risk of third-party attacks
- uncover inefficiencies or areas where resources are being wasted
Following this analysis, we deliver a clear report outlining risks and offering both short-term and long-term recommendations to improve IP investment efficiency.
IP roadmap
An IP roadmap is a strategic tool that helps define the optimal intellectual property plan for a company or start-up. This process includes:
- Understanding the company’s business plan
- Conducting a panoramic search of patent databases to assess the competitive landscape
- Designing an IP strategy that supports the company’s commercial vision and long-term goals
LUTIN has extensive experience in this area, having produced more than 400 IP roadmaps in the past decade—including work performed as experts for CTI Startup / Innosuisse.
We have met with and evaluated hundreds of companies to design IP strategies tailored to their goals, technology, and constraints.
For start-ups in particular, efficient use of time and financial resources is crucial. A well-structured IP roadmap helps young companies to:
- build a strong and relevant patent portfolio
- convince investors
- avoid freedom-to-operate issues
- enhance visibility and market credibility
By understanding both the technology and the strategy, we help companies establish a solid foundation for growth and competitive advantage.
Oppositions and conflicts
LUTIN plays an active role in patent oppositions and conflict resolution thanks to our extensive experience in technology assessment and patent intelligence. We regularly assist clients in challenging competitors’ patents or defending their own.
Our patent attorneys are authorized to represent clients in all stages of opposition and appeal proceedings before the European Patent Office (EPO) in Munich.
Third-party observations
A simple and cost-effective way to challenge a competitor’s pending European patent application is to file third-party observations under Article 115 EPC.
This mechanism allows any party to:
- present arguments against patentability
- submit relevant prior art or new documents not previously cited
- provide evidence that the application does not meet EPC requirements
There is no official fee, and observations may even be filed anonymously.
However, the third party does not become part of the examination procedure. The exchange of arguments occurs exclusively between the applicant and the examining division, which generally places the applicant in a favorable position.
Despite this limitation, third-party observations are often a practical first step when monitoring competitors’ activities.
Oppositions
Beyond observations, the EPC allows a more formal action: an opposition against a granted European patent.
Key points:
- Must be filed in writing
- Deadline: within 9 months of the patent’s grant
- Requires payment of an official fee
- Must include clearly stated grounds for opposition
Statistics show that:
about 6% of granted European patents face an opposition
of these, roughly
one-third are revoked entirely
one-third are maintained in amended form
one-third are upheld as granted
Opposition procedures typically take at least two years, and an appeal can extend the process by another two years.
LUTIN is especially well qualified to handle complex oppositions thanks to:
- our expertise in prior-art searching
- our deep understanding of internal EPO processes
- decades of hands-on experience managing opposition cases from start to finish
Infringement actions and patent nullity actions
Once the opposition period has expired, revocation of a patent can only be pursued through the national courts. Courts are also the only institutions that can impose penalties or remedies against infringers.
LUTIN supports clients through every stage of litigation:
- evaluating risks, costs, and potential outcomes
- advising on forum selection (country or canton)
- identifying, collecting, and organizing key evidence
- recommending the most effective litigators in each jurisdiction
- acting as technical experts throughout the proceedings
Whenever possible, we also assist clients in achieving amicable settlements, relying on our negotiation experience and licensing expertise to secure practical, strategic solutions without the expense of a full trial.
