Alexey Darkov

About

Alexey specializes in dispute resolution and intellectual property protection. Alexey has experience in litigating complex disputes in courts as well as representing clients before the Chamber for Patent Disputes of Rospatent, arbitration courts and in unfair competition cases before the Federal Antimonopoly Service (FAS of Russia). Alexey handles cases related to complex copyright, trademark and patent conflicts.

Alexey’s background makes him well placed to help clients on various IP and competition law matters:

• development and implementation of various strategies for protecting intellectual property rights, including inventions, industrial designs, trademarks, software and other copyrights

• comprehensive intellectual property due diligence

• structuring and execution of transactions related to the creation, use, and licensing of intellectual property rights

• modification and creation of derivative works, including software

• royalty and license fees for customs valuation

• compliance with the requirements for the recognition of IP as work for hire, drafting the documents to protect the IP of the company as know-how and works for hire

• Alexey is a member of the following committees:

• IP Committee of the Association of European Businesses in Russia

• IP Committee of ICC Russia

• Election Committee of the Russian Football Union

• Commission on Legal Regulation in Healthcare of the Moscow Branch of the Association of Lawyers of Russia

Alexey participates in conferences and webinars on intellectual property issues and is also the author of publications in this area.

Experience

TMT

• representation of the world’s largest software developer in the transactions on purchase of the software in the augmented reality field from a company undergoing bankruptcy in the EU, including negotiations with the Russian owner in order to clear the rights to the acquired software
• representing a Russian programmer in one of the largest precedent-setting disputes over software infringement and the recovery of compensation with his former employer, one of the largest international software developers

Life Sciences and Healthcare

• advising and representing Bayer on developing and successfully implementing a strategy for the protection of exclusive rights to inventions in connection with the introduction of generic drugs on the market before the expiration of the relevant patents
• developing and successfully implementing a strategy for the protection of rights to an original drug for an Italian pharmaceutical concern, Alfasigma, through litigation in connection with the registration and market launch of a generic drug. Representing Alfasigma pharmaceutical concern in a defamation case upon a complaint made to the Antimonopoly Service by the defendant in a patent infringement case

Consumer and Retail

• representing one of the world's largest furniture and home accessories retailers, in a precedent-setting case challenging Russian customs' decision to include license fees under franchise agreements in the customs price of imported goods
• representing Turakovo LLC in precedent-setting case No. СИП-735/2018 in which the Presidium of the Intellectual Rights Court supported the position of the appellant that Rospatent has no right to independently change the status of the unprotected element of a trademark when considering a challenge to the conferment of legal protection to said trademark

Education

Languages

• English
• Russian

Career