Argentina

Practitioners report that, despite the pandemic, patent activity in Argentina remains steady, with an increase in pharmaceutical and medical device filings compensating for shortfalls in other areas. One ongoing issue of note concerns the Knowledge Economy Law, enacted in 2019, which provides various tax incentives to companies engaged in the knowledge economy. At the start of 2020, this new regime was put on hold by the implementing authority, the Ministry of Production, without explanation; though later in the year, an amendment bill was published which capped the benefits that large entities can receive compared to smaller companies. Argentina’s non-PCT member status is another important topic of discussion and something that international innovators and their legal counsel should be aware of.

Firms: litigation and transactions

  • Marval O’Farrell and Mairal
  • G Breuer
  • Hausheer Belgrano & Fernández
  • Mitrani, Caballero & Ruiz Moreno
  • OJAM BULLRICH FLANZBAUM
  • Palacio & Asociados
  • Richelet & Richelet

Firms: prosecution

  • Marval O’Farrell and Mairal
  • Berken IP
  • G Breuer
  • Noetinger & Armando
  • Richelet & Richelet
  • ClarkeModet 
  • FRTB - Ferrer Reyes, Tellechea & Bouché
  • H&A
  • Hausheer Belgrano & Fernández
  • Mitrani, Caballero & Ruiz Moreno
  • Moeller IP Advisors
  • Obligado & Cia
  • OJAM BULLRICH FLANZBAUM
  • Palacio & Asociados

Berken IP

An “efficient, dynamic, collaborative and proactive firm focused on fulfilling clients’ objectives”, Berken IP never fails to impress. The patent, technology and business boutique has a particular affinity for complex life sciences work, fielding an integrated team of technically trained patent attorneys and lawyers that provides major pharmaceutical companies, universities, research institutions and entrepreneurs with sophisticated, commercially attuned patent prosecution, analytics and licensing services. There are options aplenty for those seeking sage counsel. A beacon of light for pharmaceutical players with business in Argentina and Latin America more broadly, Pedro Berkenwald brings decades of experience to bear as a problem solver and deal negotiator. Managing partner Alicia Alvarez Berkenwald prosecutes with exactitude and is a source of insightful opinions on wide-ranging issues, including patentability and infringement. A top transactions specialist, Federico Ulled “digs deep for clients and has deep technical and scientific knowledge, alongside a clear understanding of business”. He displays an aptitude for cross-border work and recently assisted an innovative company in connection with the negotiation of key agreements in Argentina, the United States, India and China. Debuting in the IAM Patent 1000 this year, Emilio Berkenwald has “deep knowledge of local and international laws, and is a dedicated practitioner who provides creative solutions”. A future leader of the practice, he specialises in prosecution and patent intelligence in the chemistry and materials science areas.

ClarkeModet 

ClarkeModet has maintained a presence in Buenos Aires and Cordoba for decades, and understands the local patent and business landscape keenly; the international powerhouse also knows how to navigate complex matters across borders, making it a compelling choice for those with both domestic and foreign patent needs. The astute deployment of technology to accelerate internal processes, drive efficiency and sustain quality enables it to protect patrons’ inventions quickly and effectively. Recent developments for the group in Argentina include the recruitment of Marcos M Santiváñez Vieyra, who joined in March 2020 to serve as technical and legal services director. The highly trained former Bruchou practitioner has broad horizons and delivers percipient advice on prosecution, IP contracts, litigation and more.

FRTB - Ferrer Reyes, Tellechea & Bouché

FRTB marries exceptional professionalism and speed with an encyclopaedic understanding of patent and IP law in Argentina: “It makes complex jobs simple and offers the ideal level of support with respect to rights protection and enforcement.” Praise such as this lands the firm a spot in the IAM Patent 1000 for the first time this year. Equally proficient in prosecution, litigation and transactions, key contact Santiago Ferrer Reyes covers all bases for his followers, including a concentration of energy companies. Julia Tellechea is the first choice for prosecution, portfolio management and transactional due diligence in the pharmaceutical, chemical and agrochemical domains. She is hands-on throughout all phases of the patent protection process and excels at building longstanding relationships.

G Breuer

G Breuer is one of Argentina’s most storied IP players – and certainly one of its best. It has practised at the elite level for 150 years, during which it has always kept pace with its innovative clients. The professionals here are extremely well educated and trained, and work collaboratively to solve difficult IP conundrums and deliver made-to-measure services. “An IP legend in Argentina”, Jorge Otamendi is the ensemble’s pre-eminent practitioner and a thought and practice leader looked up to by all. The top engineer on deck is electronics maven Martín Guerrico.

H&A

An international outfit with 150-plus IP professionals all pulling in the same direction for technology enterprises, H&A is a prime destination for companies for which a consistent approach towards IP strategy across multiple territories is a priority. With boots on the ground in Argentina, Brazil, Colombia and Mexico, it has cultivated rich experience across Latin America – a market which presents unique challenges.  Frequent collaborators Ariel Juan Ibanez and Alejandro María Grande take charge in Buenos Aires. Working within the confines of the national system, they have a gift for satisfying the expectations of foreign companies keen to apply the standards and approaches to which they are accustomed elsewhere, such as in Europe. Supremely well organised and great on the detail and the big picture, they handle broad patent families in diverse markets with skill, while expediting the prosecution process.

Hausheer Belgrano & Fernández

A reputable firm with a long history, Hausheer Belgrano & Fernández puts a seasoned team onto the Argentinian IP playing field. The professionals here have an astonishing hit rate in protecting clients’ most valuable brands and patents, and collectively provide a well-rounded service that inspires confidence. The key touchpoint is Graciela Claudia Pérez de Inzaurraga, a decorated trademark and patent professional who understands the needs of those she represents and how to meet them in a timely and efficient fashion.

Marval O’Farrell and Mairal

“The biggest and by far the best IP firm in the country”, Marval is not just a domestic leader but a dominant force throughout Latin America. It offers a comprehensive suite of services and leverages a well-specced team of chemical, biochemical, electrical and mechanical engineers to assist all comers with patent procurement matters, infringement issues and much more. Its constellation of patent stars comprises Martín Bensadon, Cristian Bittel, Ignacio Sánchez Echagüe and Iván Alfredo Poli, each of whom brings something special to the table. Bensadon is distinguished by his patent specialisation and combination of academic rigour and practical experience; armed with a molecular biology PhD, Bittel has outstanding life sciences credentials; Sánchez Echagüe has cultivated strong international patent law know-how; and Poli is an accomplished litigator.

Mitrani, Caballero & Ruiz Moreno

According to sources, Mitrani’s highly qualified patent experts work harmoniously as a team and communicate smoothly and effectively with clients. Nothing is off limits in patent practice for the firm, which handles the full array of prosecution, licensing and litigation assignments with equal dexterity. On the non-contentious side, the ensemble acquits itself with distinction in coordinating filings in multiple jurisdictions and managing global portfolios; while in disputes, the group excels at resolving matters without recourse to costly litigation, utilising refined negotiation skills which also lend themselves well to success in court proceedings should they become necessary. Lead partner Ignacio Bérèterbide garners stellar reviews: “He has a sophisticated understanding of patent prosecution in Latin America and handles things in an extremely well-organised and efficient manner. He understands intellectual property in its commercial setting, which enhances his strategic advice.” He clicks with inventors, business executives and patent office examiners, and draws on his deep knowledge and sparkling interpersonal skills to get things done. He is joined in the IAM Patent 1000 this year by María Elena Palumbo, a senior engineer and former examiner who knows how to prosecute applications through to grant with the minimum of fuss.

Mitrani, Caballero & Ruiz Moreno

According to sources, Mitrani’s highly qualified patent experts work harmoniously as a team and communicate smoothly and effectively with clients. Nothing is off limits in patent practice for the firm, which handles the full array of prosecution, licensing and litigation assignments with equal dexterity. On the non-contentious side, the ensemble acquits itself with distinction in coordinating filings in multiple jurisdictions and managing global portfolios; while in disputes, the group excels at resolving matters without recourse to costly litigation, utilising refined negotiation skills which also lend themselves well to success in court proceedings should they become necessary. Lead partner Ignacio Bérèterbide garners stellar reviews: “He has a sophisticated understanding of patent prosecution in Latin America and handles things in an extremely well-organised and efficient manner. He understands intellectual property in its commercial setting, which enhances his strategic advice.” He clicks with inventors, business executives and patent office examiners, and draws on his deep knowledge and sparkling interpersonal skills to get things done. He is joined in the IAM Patent 1000 this year by María Elena Palumbo, a senior engineer and former examiner who knows how to prosecute applications through to grant with the minimum of fuss.

Moeller IP Advisors

Moeller IP Advisors fits the bill perfectly for companies seeking the efficiency of a single point of contact for patent protection across the Americas. The firm – which is present in Argentina, Brazil, Uruguay and Germany – is appreciated for its technical know-how, consistent quality, billing transparency and security standards. Taking the reins of the patent department, José Santacroce sets the tone from the top. His authority stems from vast experience, much of it accumulated during a lengthy career at the European Patent Office. Thanks to his superior management skills, the firm capitalises superbly on the talents of its technical, legal and support staff. Industrial chemistry PhD and former National Institute of Intellectual Property (INPI) examiner Vanesa Martinez serves as operational coordinator for the group and supervises a substantial docket of chemical patent filings, alongside work relating to mechanical and electrical innovations. In charge of the legal patent practice, Mariano Municoy provides robust representation in infringement litigation: he astutely marshals all evidence needed to present a winning case and has the advocacy skills to carry the day. He is also an adroit negotiator of licensing and other IP and technology agreements, and a savvy counsellor on regulatory issues.

Noetinger & Armando

Noetinger & Armando elicits warm plaudits: “It is well organised, incredibly supportive and a safe pair of hands for complex cases. Its professionals are masters of their craft, have deep market knowledge and deliver accurate work promptly.” Patent department head Mariana Bullrich and patent drafting leader Martín Ré also score high marks. “Mariana is ultra-responsive and keenly monitors the details and progress of each filing,” reports one satisfied client. “Her subject-matter understanding is complete and entering into technical discussions with her always leads to wonderful ideas and outcomes”. Peers concur: “Her ability to speak about a range of subjects authoritatively is second to none. She is a profound thinker who knows what is happening in the world of IP and has a broad perspective.” Colleague Re “is pragmatic and gives the clearest advice”. Under the watchful eye of these two life sciences sages, the firm files more than 300 patents annually and tends to the management and care of over 3,000 patents in Argentina and regionally, demonstrating a natural facility for problem solving in the process. Partnering with innovators at a strategic level, the ensemble has a much wider focus than the immediate administrative and legal needs of its clients. Helpful in this regard is the big-picture approach of Fernando Noetinger, the firm’s top patent litigator and licensing expert.

Obligado & Cia

Obligado & Cia’s strength lies not only in its rich history, but also in its commercially attuned IP service, which has adapted and evolved in lockstep with the changing innovation landscape in Argentina. With former in-house professionals on deck, alongside ex-INPI examiners and seasoned litigators, it is perfectly positioned to answer any patent-related question going. For precision prosecution, the person to call is Fabián Loyato, a former head examiner at INPI with international training.

OJAM BULLRICH FLANZBAUM

Ojam Bullrich Flanzbaum was launched in October 2020 by a close-knit team of professionals, each of whom has abundant experience at the cutting edge of IP practice in Argentina. Eschewing traditional models and approaches, the boutique is shaking things up – for example, through its special lab designed to support entrepreneurs and start-ups as they protect and develop their intangible assets and forge connections with incubators, accelerators and investment funds. The aim here is to disrupt the market for legal services and positively impact on Argentina’s innovation environment. One of the chief architects of the firm, Juan Carlos Ojam has cultivated a rare strategic appreciation of intellectual property by engaging in all facets of the practice at a global level. He is an essential guide for companies seeking to achieve operational IP excellence. Also central to the patent practice is senior associate Rosario Mauro, who possesses finely honed domestic and cross-border prosecution skills.

Palacio & Asociados

Palacio’s engineers and lawyers manage the entire patent registration process with alacrity and finesse; not just adept at prosecution, they demonstrate agility on contentious and transactional assignments, too, making the firm a persuasive one-stop shop. No matter the nature of the brief, clients enjoy close partner-level attention, which ensures that work is completed to the highest standard and full advantage taken of strategic opportunities. At the forefront of the practice are Diego Palacio and Mingo Palacio, who are roundly praised. “Diego is fast, efficient, dynamic and engaged. He is a high-functioning but reasonably priced partner, and is great on complex matters needing extra muscle. He is easy to work with and has a friendly, open-minded personality, which makes you feel comfortable.” Palacio understands the commercial potential of intellectual property and is committed to realising the business objectives of clients: “He is an extremely well-qualified individual with respect to Latin American IP issues.”

Richelet & Richelet

Ascending to the silver tier, Richelet & Richelet is well established as a high-calibre IP provider. Its service is characterised by rapid response rates, in-depth analyses and creative counsel, and is in hot demand among top pharmaceutical, biotechnology and other innovators. The experts here invest time in learning about the industries in which their clients operate and deliver their advice in plain language, so that it is easy to understand and implement. Helmsman Gastón Richelet is very quick to answer queries from the many European, North American and Asian companies he serves. “He can handle challenging situations involving short deadlines and changing requests,” enthuses one client. “Gastón was available and responsive to inquiries throughout the pandemic, kept us updated regarding the situation and provided solutions that maintained priority rights.”

Other recommended experts

Claudia Serritelli heads the legal and patent departments at Estudio Chaloupka. Extremely well educated, with two IP-focused postgraduate degrees, she draws on a wealth of patent and trademark knowledge to advise clients on all aspects of their intangible asset portfolios. She is currently representing Jeyes Group in litigation against INPI concerning the interpretation of Article 5 of Argentina’s Patent Law – a matter of considerable importance, in which the outcome may change INPI’s examination criteria to become more favourable to rights holders. A recent arrival at Gordó Llobell & Asociados, Marcelo García Sellart is a respected IP professor, litigator and all-round IP counsellor. The managing partner of Ryan-Lussich & Asociados, John Ryan-Lussich is a versatile lawyer with a flair for tackling IP infringement issues; stopping trademark counterfeiting activities while working with Customs is his metier, but he knows a thing or two about pharmaceutical patent law too. Debuting in the rankings this year, Celia Lerman of Lerman & Szlak is endorsed for her “comprehensive IP knowledge and absolute dedication”. Cognisant of clients’ business, budget and technology needs, she designs smart strategic roadmaps: “It is a relief to have her on side when the going gets tough.”

Individuals

  • Alicia Alvarez Berkenwald - Berken IP
  • Martín Bensadon - Marval O’Farrell Mairal
  • Cristian Bittel - Marval O’Farrell Mairal
  • Martín Guerrico - G Breuer
  • Fernando Noetinger - Noetinger & Armando
  • Jorge Otamendi - G Breuer
  • Iván Alfredo Poli - Marval O’Farrell Mairal
  • Ignacio Sánchez Echagüe - Marval O’Farrell Mairal
  • Ignacio Bérèterbide - Mitrani, Caballero & Ruiz Moreno
  • Pedro S Berkenwald - Berken IP
  • Mariana Bullrich - Noetinger & Armando
  • Martín Damián Ré - Noetinger & Armando
  • Santiago Ferrer Reyes - FRTB - Ferrer Reyes, Tellechea & Bouché
  • Ariel J Ibanez - H&A
  • Rosario Mauro - OJAM BULLRICH FLANZBAUM
  • Juan Carlos Ojam - OJAM BULLRICH FLANZBAUM
  • Diego F Palacio - Palacio & Asociados
  • Mingo Palacio - Palacio & Asociados
  • Graciela Claudia Pérez de Inzaurraga - Hausheer Belgrano & Fernández
  • Gastón Richelet - Richelet & Richelet
  • Jose Santacroce - Moeller IP Advisors
  • Claudia Serritelli - Estudio Chaloupka
  • Julia Tellechea - FRTB - Ferrer Reyes, Tellechea & Bouché
  • Federico Ulled - Berken IP
  • Emilio Berkenwald - Berken IP
  • Marcelo García Sellart - Berton Moreno + Ojam
  • Alejandro Grande - H&A
  • Celia Lerman - Lerman & Szlak 
  • Vanessa Martinez - Moeller IP Advisors
  • Mariano Municoy - Moeller IP Advisors
  • María Elena Palumba - Mitrani, Caballero & Ruiz Moreno
  • John Ryan-Lussich - Ryan-Lussich & Asociados
  • Marcos M Santiváñez Vieyra - ClarkeModet