Jan Nilsson

SENIOR PARTNER, AUTHORIZED PATENT ATTORNEY, CFO

PROFILE AND FACTS

I am available for my clients’. I have the ability to assess the clients’ situation and provide clear recommendations based on each client’s needs. This applies whether the question relates to patent a new product or service, patent enforcement, suppress patent infringement, or patent license negotiation.

MAIN TITLE

Senior Partner
CFO
Authorized Patent Attorney (SE)
Authorized IP Attorney

APPOINTMENTS

Chairman of the board
Manager Lund Office

PRACTICE AREAS

Software
Business methods
Telecommunications
Computer systems and networks
Internet applications
Artificial Intelligence (AI)
Electronic devices
Encryption technologies
Optics

EDUCATION

M. Sc. In Computer Engineering, Lund Institute of Technology, Sweden
The Business of Intellectual Property, SIMI Copenhagen, Denmark

LANGUAGES

English
German
Swedish

OTHER MERITS

Co-author of the “Handbook of European Intellectual Property Management”

MEMBERSHIPS

The Association of Swedish Patent Attorneys (SPOF)
Swedish Association for the Protection of Industrial Property (SFIR)
The International Association of Intellectual Property (AIPPI)
The International Federation of Intellectual Property Attorneys (FICPI)
Licensing Executives Society International (LESI)
International Trademark Association (INTA)

Patents worth paying for

Patents secure investment in research and development. Patents that support the business also increase the value of the company. A well-considered patent strategy leads to patent protection for commercially important inventions to increase market share, sales and price. Patents increase the ability to obtain venture capital and to establish connections with potential business partners.

Emphasis on value-creating advice

My practice emphasizes client counselling, domestic and international patent preparation and prosecution, preparation of opinions regarding patent infringement and validity. I am experienced in the protection of technology assets to create profits from new and potentially commercial developments supported by patents in a wide range of technologies and business sectors.

I provide expert consultancy to external patent attorney firms, service providers, and applicants regarding restoration and re-establishment proceedings for restoring Swedish and EP patent applications and patents that have lapsed accidentally.

My customers’ focus on profitability is also my focus. Through advice to both individuals and companies, I strive for effective dispute resolution including patent license negotiation. Ultimately, I represent inventors and companies in patent infringement and nullity proceedings in the Patent and Market Court, and the Patent and Market Court of Appeal.

Collaboration is crucial

My goal is to draft enforceable patents that may be subject of licensing worth paying for. The collaboration between the patent attorney and the inventors is crucial to write a good specification. The patent attorney has the legal knowledge of what it takes to be a patentable invention, and the inventors has the technical knowledge of their invention should be actively involved in drafting the document that will define patent rights for up to 20 years.

Before developing and marketing new products and services, ensure that the ideas do not infringe the patents of others. My skills include patent clearance and freedom-to-operate (FTO) for the launch of new products and services. I prepare and prosecute patent applications and perform due diligence studies of intellectual property assets as a basis for investment in research and development, stock listings, mergers and acquisitions in areas of electronics, telecommunications, mechanical, computer software, computer systems and networks, Internet applications, and business methods technologies.

Previous assignments

Preparation and prosecution of complex patent applications for wireless communications, telecommunications, digital communications, Artificiell intelligens (AI), network, information security, encryption, digital signal processing, computer technology, computer software, business methods, financial transactions, logistics, food processing, optics, and hunting equipment.

Freedom-to-operate (FTO) investigation for a multinational company for an already large number of manufactured products ready for delivery. The investigation led the company to make decisions about continued manufacturing and sales despite the warning of patent infringement from a competing company.

Representing a Swedish growth company with strategic patenting of a computer-implemented invention, covering both software and hardware.

Conducted “patent clearance” investigation and evaluated through a freedom-to-operate (FTO) investigation the ability for the customer to operate freely on the market.

A due diligence study of the patent portfolio asset resulted in an infusion of venture capital to the company followed by a merger. Represented a Swedish medium-sized company to create a patent portfolio, in support of their operations. Successful negotiation resulted in a sale of patent rights outside Sweden. The customer was still able to continue to operate and develop the business in the domestic market.