Spain

The new Spanish Patents Act came into force on April 1 2017. The legislation revamps the application procedure by introducing substantive examination. Practitioners hope that this will result in fewer weak patents being granted, and that foreign entities will start to see national patents as a robust alternative to the European patent. However, some commentators express reservations about the competency of certain examiners at the Spanish Patent and Trademark Office (SPTO) and question how smoothly the new process will run in practice. Generally, the economic situation in Spain continues to improve and local businesses appear increasingly keen to protect their inventions. Barcelona’s courts are looking to allocate more resources to intellectual property, but there is still a backlog in the system, as commercial law and bankruptcy cases enjoy higher priority.

Firms: prosecution

Highly recommended
Recommended
H
Abril Abogados
BALDER IP Law SL
Curell Suñol SLP
Durán-Corretjer SLP
Elzaburu SLP
GALBAIAN Intellectual Property
Sugrañes

Firms: transactions

H
Abril Abogados
Amat & Vidal-Quadras
Bird & Bird
Clifford Chance SLP
Cuatrecasas Gonçalves Pereira
Elzaburu SLP
Garrigues
Gómez-Acebo & Pombo Abogados
Rousaud Costas Duran SLP
Uría Menéndez

Firms: litigation

1
Clifford Chance SLP
Gómez-Acebo & Pombo Abogados
Grau & Angulo
Uría Menéndez
2
Amat & Vidal-Quadras
Bird & Bird
Elzaburu SLP
3
Abril Abogados
Baker McKenzie
BALDER IP Law SL
BAYLOS Abogados
Cuatrecasas Gonçalves Pereira
Hogan Lovells International LLP
ABG Patentes
“ABG Patentes is a top prosecution firm with one of the best biotechnology teams in Spain. Its life sciences practice, more broadly, is really strong and it represents a lot of big names in the pharmaceuticals industry. The many ex-examiners in the team are now attorneys who know how to fight for their clients and help them achieve what they desire.” For the last nine years it has been doing just this for Faes Farma; it has processed nearly 400 domestic and European patent and supplementary protection certificate applications for the company in this time, with an impressive hit rate. It is “an excellent option for matters before the European Patent Office (EPO)” and has also been assisting Fábrica Nacional de Moneda y Timbre-Real Casa de la Moneda and BorgWarner in this regard. With 26 years’ experience to his name – including invaluable spells in-house and as an EPO examiner – Francisco Bernardo Noriega adroitly monetises patent portfolios and knows what it takes to procure SPCs. Fellow founding partner and ex-examiner Juan Arias Sanz is a technical whizz with a unique understanding of chemistry issues. With Enric Carbonell on the pharmaceuticals side, too, the firm has an embarrassment of riches to offer players in the sector. Debuting in the IAM Patent 1000 this year, he has “very deep knowledge of patent law and, even more important for clients, the ability to provide focused and legally sound advice with a clear strategy. He explains complicated patent law concepts in simple but precise language, which helps with the decision-making process”. Meanwhile, insight into the mechanical devices, electronic engineering and computer sectors comes in the form of Fernando Prieto.
Abril Abogados

Since its establishment in 2001, Abril Abogados has blazed a trail on the Spanish IP landscape. It was the first firm in the country to offer clients a holistic service, effectively straddling the contentious/non-contentious divide; while other players have now followed suit, it retains its first-mover advantage and has a striking track record both in and out of the courtroom. Recently it helped Fontanalia and Ecomadrifso to successfully oppose and cancel a European patent of US company E-Pipe Restorarion Technologies. It also represented Faurecia, a world-leading supplier of car components, whose patents had been infringed by Benteler; after three years of litigation, the case was settled in Faurecia’s favour and significant damages were awarded. Involved in this matter, Ignacio Temiño Ceniceros safeguards IP rights with a complete command of both the facts at hand and the relevant case law, and finely crafted pleadings. The “hardworking, efficient and obliging” Fernando Ortega uses his impressive transactional nous to sew up licensing contracts that will optimally advance clients’ interests.

Amat & Vidal-Quadras
Amat & Vidal-Quadras is “fantastic” when it comes to protecting patents. The nimble firm knows its clients and their industries inside out and devises cut-to-purpose enforcement strategies that are harmonised with long-term business interests. Thanks to the robust corporate and tax practices in its Barcelona and Madrid offices, it brokers licensing and technology transfer agreements masterfully too. Miguel Vidal-Quadras Trias de Bes and Oriol Ramon Sauri both come recommended for their pharmaceutical prowess; these skilled communicators share generously of their knowledge and lecture extensively on patent issues.
Baker McKenzie
Global titan Baker McKenzie is an unstoppable force on the global legal scene, with offices in some 47 countries worldwide. It is thus the perfect choice for multinationals needing effective, streamlined protection of expansive patent portfolios. The Spanish contingent serves as a bridge into Latin America, proving a vital ally to companies with interests or ambitions in the region. Carles Prat is a contentious star who has a razor-sharp business mind and can serve clients in five languages – Spanish, Catalan, English, French and Italian.
BALDER IP Law SL
“BALDER is a dynamic and enthusiastic firm that has successfully entered the market with the one-stop shop model.” From bases in Madrid and Bilbao, the 23-attorney team offers comprehensive coverage across Spain, Portugal and Latin America. Its offering is A to Z – it secures and then safeguards patents with aplomb and has particular strength in the electro-mechanical field. The “fantastic” Patricia Koch bats it out of the park every time in court; with personal ties to the country and having worked in Hamburg, she understands exactly what German clients expect and exactly which Spanish idiosyncrasies need to be explained to them. She is frequently assisted in litigation by Magnus Stiebe, a “very strong patent attorney with notable experience in prosecution and oppositions”. The first engineer in Madrid to pass the European qualifying examination, he is “famous for his work before the EPO”.
BAYLOS Abogados
The forward-looking and versatile BAYLOS packs a mighty punch in IP enforcement. While the team may be compact, it nonetheless has intimate knowledge of a slew of industries and abundant courtroom experience. It works shoulder to shoulder with clients to ensure that strategies are commercially on-point and swiftly realised. Pedro Merino Baylos is a hands-on, pragmatic litigator who publishes widely and keeps his finger firmly on the IP pulse.
Bird & Bird
Bird & Bird’s Spanish contingent provides the full suite of patent services, with a particular emphasis on cross-border enforcement. Thanks to silky-smooth collaboration with the firm’s 11 other offices across western Europe – not to mention those further afield – the Madrid team makes light work of even the most intricate multi-jurisdictional mandates. Leveraging a deep reservoir of business nous, it also provides incisive guidance on transactional matters. Contentious ace Manuel Lobato is a “fantastic lawyer with a very impressive academic profile. He is someone who doesn’t need to shout in court; his arguments stand up on their own”.
Clifford Chance SLP
“Clifford Chance has built up a really strong practice and is involved in a lot of the biggest cases in Spain. The team is exhaustive and always makes opponents work hard – every litigation against them is extremely tough. They never miss anything – meaning that you can’t either, if you want to have even a chance against them.” It has cracked the Spanish market in a way that no other international firm has managed, and both domestic and international innovators flock to its doors as a result. The tireless Miquel Montañá is the driver of much of its success: “He has a fantastic reputation in the market and a very impressive client portfolio. There is no doubt that he is one of the leading patent professionals in Spain.” Like Montañá, Montserrat Lopez-Bellosta counts pharmaceuticals as a strong suit. “She is an experienced and very skilled patent litigator” with a keen commercial mind and formidable regulatory knowledge. Silver-tongued advocate Isabel Carulla fights tooth and nail for her stable of loyal clients; while Josep Montefusco brings insight into the healthcare, life sciences and automotive sectors to the table.
Cuatrecasas Gonçalves Pereira
Celebrating its centenary in 2017, Cuatrecasas Gonçalves Pereira is a venerable business law firm with blanket coverage of the Iberian Peninsula – plus 10 further offices in key financial hubs across Europe, America, Africa and Asia. One of the first firms to embrace SAP technology, it is committed to furnishing clients with state-of-the-art digital resources and instant file access. Its facility for the fine print of technology transfer agreements results from years of hard graft at the business table and an instinct for what the other side is gunning for. Its practitioners shine bright in the courtroom, too, thanks to their persuasive performances and ironclad argumentation. Jorge Llevat is a commercial dynamo who has overseen myriad outsourcing transactions and acted in ground-breaking litigation; he recently represented Oatly in Spain’s first product by process patent case.
Curell Suñol SLP
Founded in 1946, Curell Suñol is today a cutting-edge prosecution shop. Each attorney is qualified to practise at both the SPTO and the EPO, and the team is ably supported by a number of sworn translators. Proficient on both sides of the contentious/non-contentious divide, Jordi Güell can be relied on for astute counsel at all phases of the patent lifecycle. Colleague Santiago Jordá marries first-rate technical expertise with industry experience, having worked as a research engineer at AMES. “Extremely professional, he knows how to deal with people and has real integrity.”
Durán-Corretjer SLP
The team at Durán-Corretjer combines scholarly rigour with an unfussy, modern ethos to provide cost-effective, easily implementable advice to its national and international clientele. It is headquartered in Barcelona, but has offices in Madrid and Alicante too, and is thus only a skip away from both the SPTO and the EU Intellectual Property Office. Managing partner Luis-Alfonso Durán is a seasoned prosecutor with a gimlet eye, who has previously served as vice president of the European Patent Institute.
Elzaburu SLP
Brimming with prosecution, transactional and enforcement know-how, Elzaburu is a one-stop shop offering a truly comprehensive patent service. Lawyers work hand in hand with engineers, chemists and biotechnologists to obtain patents, exploit their commercial potential and robustly defend them against infringement. Antonio Castán’s impressive courtroom record since 1985 owes much to his erudition and his no-stone-unturned examination of the technical facts in each case. Having spent 10 years in the R&D department of a multinational manufacturer of electrochemical storage batteries, Francisco Sáez has sound technical expertise and a taste for innovation. A trainer on preparatory courses for the European qualifying examination, he knows what makes for a first-rate patent attorney. Licensing maven Javier Fernández-Lasquetty has broad IP knowledge and a trenchant business mind.
GALBAIAN Intellectual Property
Lively boutique GALBAIAN has “a very skilful team that understands high-level engineering issues and solves problems swiftly and successfully. It makes things easy with clear reflection, robust drafting and a flexible, proactive approach. The proposals it brings are often ones that you wouldn’t have thought of. You really feel like you have a close partner when working with the team”. A recent beneficiary of this personalised service is the Basque Innovation Agency, for which the firm drafted an IP framework agreement to promote cooperation with the region’s companies, research institutes and universities. This bore the fingerprints of Ismael Igartua, a “real leader and an extremely reliable professional who has a mastery of technical and procedural patent issues. He is skilled both in the arts and in the sciences, which makes him very special. Plus he has the ability to simply explain complex patent issues to those unfamiliar with the IP world. He is one of the best patent attorneys around”.
Garrigues
Garrigues matches extensive coverage of the domestic market with a cosmopolitan, outward-looking ethos. With a presence in 18 cities throughout the country, it has practitioners on hand to extinguish patent fires at extremely short notice no matter where the client is based; meanwhile, its worldwide footprint spans four continents, making it an able partner for Spanish players seeking to extend their influence overseas. Working side by side with professionals from the firm’s banking and finance practice, the IP team deftly dispatches complex transactional mandates. Head of the firm’s Iberian IP practice, João Miranda de Sousa is dual qualified in Spain and Portugal and a good first port of call.
Gómez-Acebo & Pombo Abogados
When it comes to crack patent enforcement, few firms in Spain can hold a candle to Gómez-Acebo & Pombo. Its 25-strong IP team features four potent patent specialists: Eduardo Castillo, Gonzalo Ulloa Suelves, Jesús Muñoz-Delgado and José Miguel Lissén. Castillo and Gaonzalo have recently been acting for Actelion in a multi-jurisdictional invalidity matter against a US pharmaceuticals giant. “Castillo is a superb lawyer who is extremely effective in achieving his aims. Using the available resources, he will find a way of getting the right result for his clients – whether that means a defensive or offensive strategy, negotiation or litigation.” Support comes from the “very strong and really experienced” Suelves, who has a flair for distilling down the key facts of any case. Muñoz-Delgado has been building up significant expertise in the plant varieties field of late; a key highlight is representing the regents of the University of California and Spanish licensee Eurosemillas in regard to the tango fruit. He has had significant success so far, winning notable protection in Spain; further measures involving the fruit are ongoing in South Africa, Germany and Australia, showcasing his aptitude for handling cross-border matters. The whip-smart Lissén has been helping Graphenano to develop a complex licensing strategy for its technology, which is relevant across multiple industries. Impeccable legal knowledge and first-rate business nous make him the complete package.
Grau & Angulo

"Grau & Angulo understands and effectively litigates the most technically complicated matters – not to mention handling all legal issues expertly.” A firm that eats, sleeps and breathes IP litigation, it is truly formidable in the courtroom. With specialists in a plethora of industries, from pharmaceuticals to telecommunications and food and beverages, there is no technology it cannot handle. Providing inspiring leadership is the firm’s senior partner, Jorge Grau – “a true gentleman with an excellent reputation”. The client magnet has lately been working side by side with computer hardware sage Jesús Arribas on a matter for Asus against Vringo Infrastructure, which is currently pending before the Barcelona Court of Appeal. Javier Huarte has a “robust pharmaceuticals and chemistry background, and really digs deep into the facts. He is one of the most active litigators in Spain – in Europe, even. When you hear he is involved in a matter, you take note. A fantastic operator, he understands the commercial angle as well.” Never fazed by frontline combat, he helped Accord and Sandoz to challenge AstraZeneca’s European patent for its blockbuster drug Seroquel Prolong; in May 2016 the Supreme Court confirmed the patent’s nullity in Spain. Cross-border litigation is no sweat for the “fantastic” Ignacio Marques: “What is most important in an IP lawyer is understanding the technical part of the story and Ignacio always does. He is really passionate and explains things very well.” Polyglot Alejandro Angulo can work in five languages and is always up to speed with the latest developments in European patent law; he has first-class trademark expertise to boot.

Hispanophone and Lusophone contender Herrero & Asociados is headquartered in Madrid, but has eight further bases in Spain – plus outposts in Portugal, Mexico, Brazil and now Argentina. Its expansion is being keenly watched by the market and is making the firm a preferred choice for domestic outfits with their eyes firmly trained on distant horizons. Its sizeable patent practice comprises specialists in multiple disciplines and is home to a wealth of EPO and in-house experience. Responsiveness is a hallmark of the finely oiled team, which has recently been assisting Airbus’s Spanish subsidiary with patent applications in the burgeoning area of carbon fibre technology. “Extremely reliable” mechanical engineering guru Jesús González is “really proactive. He manages large volumes of work while maintaining the quality of the service”.
Hogan Lovells International LLP
The international clout that Hogan Lovells brings to proceedings resonates strongly with multinationals that have valuable patents registered far and wide. Its celebrated Madrid practitioners collaborate seamlessly with their counterparts in other offices abroad; crystal-clear communication lines ensure that team members picking up the baton elsewhere have advanced prior knowledge of the ins and outs of each case. Litigation ace Ana Castedo has diverse technical experience and a flair for finding innovative solutions; she wows before the commercial courts time and time again. Knotty patent cases are meat and drink to HOYNG ROKH MONEGIER. Life sciences, telecommunications and electronics are strongholds, attracting the attentions of household names such as Abbott, Sanofi and Philips. It is currently making the most of its pan-European capabilities, assisting Merck Sharp & Dohme Animal Health and Intervet International in a crucial suit against Bayer; the Spanish squad is working hand in glove with colleagues in France, where the firm is handling related proceedings. Its ability to turn results round at the last minute was showcased by its recent win for Gamesa; after an unfavourable first-instance judgment, the firm was drafted in to handle things in extra time. Remarkably, the Barcelona Court of Appeal reversed and stipulated that the almost €10 million paid out in damages, plus interest, should be returned to Gamesa. Having played a pivotal role in this case, Luis Fernández-Novoa is a man whose star is on the ascendant; clients keep him on speed dial for his perceptive take should the unexpected arise. Álvaro Velázquez is an IP all-rounder who finds pragmatic, clear-sighted solutions to even the most intractable patent problems. As the pair have been working together for years, they riff off each other brilliantly and use each other as sounding boards daily. “PONS IP expertly helps clients to develop and implement patent-related strategies. The team is always eager to assist you and its technical knowledge is invaluable.” The prosecution powerhouse is renowned for its cost effectiveness and ranks as the number one filer of Patent Cooperation Treaty applications in Spain. When Maqui New Life was looking to protect its Delphinol product across Europe, it immediately made a beeline to the firm. ZTE, Lleida Networks and Doñana 1998 are other ardent fans. European patent validation accounts for a significant slice of its workload, although an office in Bogotá serves as a springboard into Latin America and it is also making serious inroads into the Chinese market. The “exceptional” Patricia Ramos is a chemistry doyenne who consistently meets and exceeds the needs of her discerning client base.
Rousaud Costas Duran SLP
For IP transactional briefs, Rousaud Costas Duran is a prime destination. The full-service firm furnishes clients with 360-degree counsel interlaced with ancillary insights from professionals in the firm’s impressive M&A and technology, media and telecommunications practices. Having been intimately involved in the legislative initiatives behind both the Patent Law and the Science, Technology and Innovation Law, it has unique knowledge of key statutes and how to interpret them most favourably. Founding partner Ignasi Costas is a negotiation marvel who has advised countless entrepreneurs and research centres; serving on the board of directors of several technology companies, he has a first-hand appreciation of what is most important for a business and never loses sight of long-term commercial objectives.Mr Ignasi Costas
Sugrañes
Sugrañes brings unstinting professionalism and creativity to each matter that crosses its desk. Its highly respected IP practitioners prosecute with precision and scrutinise portfolios from every angle to ensure their actions reap both short and long-term rewards. Cost conscious, responsive and energetic, its practitioners work assiduously in advancing patrons’ interests. Leading the patent team, Lluís Vilalta is a fine choice for national and international clients.
Uría Menéndez
Setting a high bar for courtroom pyrotechnics and innovation in client care, Uría Menéndez has “an excellent contentious practice and members who have impressive technical talent”. Thanks to complementary know-how in neighbouring fields, such as unfair competition law, it regularly dreams up leftfield solutions to enhance the scope of protection for clients’ crown-jewel assets. Embodying this polyphony, José Massaguer is a business-minded professional who litigates masterfully and has a handle on even the most complex commercial law issues, making him a transactional maestro too; the rainmaker has worked with heavyweights from multiple sectors, although information technology is a forte. Another licensing sage par excellence, Montiano Monteagudo burns the midnight oil until he has found terms that work for his clients. When first-rate regulatory expertise is needed, Ingrid Pi is the person to call; she has a sure command of the protocol surrounding medicines and genetic modification. With 13 European patent attorneys across its Barcelona and Madrid offices – plus three in Copenhagen – ZBM is well equipped to secure pan-continental patent protection for clients. “It’s an extremely impressive firm with some fantastic people and the biotechnology team there is unquestionably one of the best in Spain.” Pharmaceutical titans such as Sandoz and Teva knew exactly where to turn when a preparation process battle loomed with Bayer. Leading on this suit, Bernabé Zea has the tactical nous and tenacity to put the ball in the back of the net no matter how tight the angle. Having designed an online course on patents, comprising 30 short videos, the team understands how to effectively communicate arcane legal concepts to laypeople. Few practitioners are better at this than the influential Anna Barlocci, who has done “fantastic things for intellectual property in Spain, having helped a new generation of attorneys to become qualified European attorneys and educated companies on the importance of their IP rights”. She is one of the only patent professionals in the country to be regularly asked by the commercial courts to act as an independent expert. Electro-mechanics is fast becoming another bastion of strength, with two European patent attorneys au fait with the space recently added to the group. One of its longstanding members, “Mathieu de Rooij is a very strong practitioner who always makes a great impression”. His experience working as an EPO examiner gives him the edge when it comes to complex patent prosecution. Electronics, telecommunications and software issues are bread and butter for Carles Comes, whose opinions on the patentability of computer-implemented inventions are always on point.

Individuals: transactions

Ignasi Costas - Rousaud Costas Duran SLP
Javier Fernández-Lasquetty - Elzaburu SLP
José Miguel Lissén - Gómez-Acebo & Pombo Abogados
Jorge Llevat - Cuatrecasas Gonçalves Pereira
Manuel Lobato - Bird & Bird
José Massaguer - Uría Menéndez
Montiano Monteagudo - Uría Menéndez
Jesús Muñoz-Delgado - Gómez-Acebo & Pombo Abogados
Fernando Ortega - Abril Abogados
Ignacio Temiño Ceniceros - Abril Abogados

Individuals: prosecution

Highly recommended
Anna Barlocci - ZBM Patents & Trademarks
Francisco Bernardo Noriega - ABG Patentes
Ismael Igartua - GALBAIAN Intellectual Property
Magnus Stiebe - BALDER IP Law SL
Recommended
Juan Arias Sanz - ABG Patentes
Enric Carbonell - ABG Patentes
Carles Comes - ZBM Patents & Trademarks
Mathieu de Rooij - ZBM Patents & Trademarks
Luis-Alfonso Durán - Durán-Corretjer SLP
Jesús González - Herrero & Asociados
Jordi Güell - Curell Suñol SLP
Santiago Jordá - Curell Suñol SLP
Fernando Prieto - ABG Patentes
Patricia Ramos - PONS IP
Francisco J Sáez - Elzaburu SLP
Bernabé Zea - ZBM Patents & Trademarks

Individuals: litigation

Jorge Grau - Grau & Angulo
Javier Huarte - Grau & Angulo
Manuel Lobato - Bird & Bird
José Massaguer - Uría Menéndez
Miquel Montañá - Clifford Chance SLP
Ingrid Pi - Uría Menéndez
Miguel Vidal-Quadras Trias de Bes - Amat & Vidal-Quadras
Alejandro Angulo - Grau & Angulo
Antonio Castán - Elzaburu SLP
Eduardo Castillo - Gómez-Acebo & Pombo Abogados
Luis Fernández-Novoa - HOYNG ROKH MONEGIER
Patricia Koch - BALDER IP Law SL
Ignacio Marqués - Grau & Angulo
Josep Montefusco - Clifford Chance SLP
Jesús Muñoz-Delgado - Gómez-Acebo & Pombo Abogados
David Pellisé Urquiza - Pellisé Abogados
Gonzalo Ulloa Suelves - Gómez-Acebo & Pombo Abogados
Jesús Arribas - Grau & Angulo
Isabel Carulla - Clifford Chance SLP
Ana Castedo - Hogan Lovells International LLP
Jordi Güell - Curell Suñol SLP
José Miguel Lissén - Gómez-Acebo & Pombo Abogados
Jorge Llevat - Cuatrecasas Gonçalves Pereira
Montserrat Lopez-Bellosta - Clifford Chance SLP
Pedro Merino Baylos - BAYLOS Abogados
Carles Prat - Baker McKenzie
Oriol Ramon Sauri - Amat & Vidal-Quadras
Ignacio Temiño Ceniceros - Abril Abogados
Álvaro Velázquez - HOYNG ROKH MONEGIER
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Issue 86