Colombia

A pro-IP milieu continues to take hold in the Colombian patent market. A notable improvement in the performance of the Superintendence of Industry and Commerce (SIC), Colombia’s patent and trademark office, has taken even the country’s most patent-focused practitioners by surprise; invigorated by a rapid decision-making process and a sharp turnaround in the number of patents granted – the rejection rate for foreign applications has fallen from 80% to 40% – firms relish proving to clients that Colombia is a pioneer for rights protection on the continent. A flourishing research scene is driving an increase in the local work available too; traditionally, the patent culture has survived on a large volume of in-bound instructions from international clients, but the country’s universities and industry continue to strengthen their R&D output, creating a strong domestic market for those looking to boost their local client bases. Rights holders, in turn, see Colombia’s entry into the Patent Prosecution Highway as a step towards global access and the SIC’s pilot agreement with the European Patent Office as a major leap forward for a country that not so long ago had no national scene to speak of. A litigation-averse culture – and a bifurcated system that makes using invalidity proceedings as a defensive tactic difficult – ensures that Colombia remains a relatively small market for litigation; most of the contentious work takes place before the SIC, with a trickle of infringement cases appearing before the courts, but the work available is expanding rapidly as rights holders begin to realise that the system does work.

Firms

  • Brigard & Castro
  • Cavelier Abogados
  • Lloreda Camacho & Co
  • OlarteMoure
  • Baker McKenzie SAS
  • Castellanos & Co
  • Clarke Modet & Co
  • Posse Herrera Ruiz
  • Raisbeck & Castro
  • Triana Uribe & Michelsen

Baker McKenzie SAS

IP tycoons Baker McKenzie “lead the way in Colombia – they have been in the patent realm for decades. The enduring IP department is entrenched in the local scene and it remains an excellent choice for rights holders”. Tipping the balance firmly in his clients’ favour, Mauricio Bello Galindo coordinates the group’s prosecution output in Colombia; skilled in contentious and non-contentious work on behalf of multinationals and domestics in an array of fields, he has been entrusted with responsibility for domestic oil and gas giant ECOPETROL’s considerable international patent portfolio. Stepping in to defend clients’ interests in infringement proceedings, Juan Pablo Concha Delgado is an equally dexterous portfolio manager and brings nearly a quarter of a century’s worth of experience to every instruction.

Brigard & Castro

“A rock-solid practice built on firm foundations, Brigard & Castro is a front-runner in the patent world; wielding a commanding presence in the Colombian IP market, it has been in the business for a very long time and is a natural choice.” Peers wax lyrical about the boutique’s “professional approach to patent work and the skill it brings to the table”. Assisted every step of the way, rights holders rest easy knowing that all needs are met by the group’s panoptic offering of interdisciplinary talent. A “highly recommended prosecutor who distinguishes himself through his precision drafting”, Julián Ricardo Díaz provides inspiring leadership to the patent division. He has a refined appreciation for everything relating to life sciences and is highly attuned to the needs of multinational and domestic clients in this area.

Castellanos & Co

Patent prosecution maestros Castellanos & Co have carved out a niche for themselves in the market by offering clients in the pharmaceuticals, life sciences and agro-chemical industries a boutique service. “Cost-efficient and responsive”, the firm is relied upon by foreign associates who value its “comprehensive intelligence and assistance in prosecution work” and are delighted by the support they receive. “Seeing the partners’ open and cordial approach, clients know that any possible need they may have will be met.” Director Ximena Castellanos is a skilled cross-border strategist and portfolio manager; she brings an in-depth knowledge of licensing law and a firmly international outlook to her work, representing clients such as AbbVie and Monsanto before the patent office. Patent team leader Margarita Castellanos is a reassuring adviser to a variety of clients in the biotechnology sector, “who depend on her experience and commitment” as well as her whetted regulatory knowledge to guide them through the country’s patent system. She is a seasoned confidante for foreign clients and has a wealth of experience assisting with applications through the Patent Cooperation Treaty.

Cavelier Abogados

“An icon in IP protection”, home-grown contender for the top spot Cavelier Abogados is a force to be reckoned with in all patent matters. The firm’s 15-strong technical branch is “highly recognised for its expertise in patent prosecution and its commercial approach”, which it exercises on behalf of an array of national and multinational brands. Well versed in all fields, the team has utilised its knowledge of the IT and telecoms sectors to convince the patent office on the patentability of many software innovations; its efforts led to a successful reversal of the SIC’s initial stance on a patent of this nature on behalf of telecoms-giant Qualcomm. Established as a prosecution shop, the outfit has expanded to become a litigation powerhouse; it has expertly provided major pharmaceutical clients – including Bayer and Takeda – with claim construction analyses demonstrating the infringement of their patents. Bridging the contentious/non-contentious divide, “former Olarte Moure man Andres Rincon is a pin-sharp litigator who painstakingly selects the best possible people for any job”. Rincon’s arrival has turned the firm into a national IP dynamo; his skills in infringement and invalidity proceedings have proved to be indispensable to his clients. He is a dab hand at freedom-to-operate searches and licensing work, for which he received glowing peer feedback.

Clarke Modet & Co

The Colombian outpost of Spanish leviathan Clarke Modet “keeps its eye solidly on the local scene, which is rare among the offerings in the country, which have a tendency to cater to primarily in-bound work. Delivering significant volumes of high-quality work in the patent field, it earns its good standing in the market”. Offices in Bogota and Medellin and a wide specialism in an array of technical fields enable the delivery of a comprehensive service to local players. Patent director Norberto Rodríguez Acosta “comes highly regarded for his thorough technical knowledge and specialised approach”; as a former researcher, “he is a renowned prosecutor” for patents in the chemistry, pharmaceuticals and biotechnology sectors.

Lloreda Camacho & Co

“One of the most important players in intellectual property in Latin America, Lloreda Camacho clearly stands out from others doing patent work in the region. It is a hardened and respected competitor, offering resounding skill in prosecution and enforcement to a broad repertoire of international clients. As a rock-solid pharmaceutical practice, it impresses with its set-up; rigid protocols and attention to detail are the essence of first-class portfolio management and the team clearly exhibits these qualities. Together with the use of the latest tools available in the profession, its in-depth knowledge, proactivity and professionalism are worthy of the highest praise.” Expertly delivering a national and regional service to Colombia’s most innovative companies, as well as many of the world’s largest pharmaceutical companies, the group’s sophisticated handling of regional prosecution for two product lines belonging to Gilead Pharmaceuticals incited the drug titan to transfer responsibility for its entire catalogue to the group; it now handles over 500 applications across 18 jurisdictions for the company. The firm excels before the SIC; it recently overturned a number of objections to two applications filed on behalf of F Hoffman La Roche, which had initially been rejected. Lighting the way for her clients in the life sciences industry, Ana Maria Castro brings 20 years of experience, an appreciation for regulatory affairs and her background working at the patent office to the practice. She is “highly respected in biotechnology affairs” and has recently been advising on issues concerning the growing world of biosimilars. Working together with her on all patent matters, technical head honcho Nestor Bejarano Pérez is an accomplished prosecutor. A chemist by training, he has profound knowledge of patent law and “responsively delivers a thorough, detailed and focused service” to Lloreda Camacho’s loyal fans.

OlarteMoure

A 45-strong IP team – unrivalled in scope on the Colombian patent scene – combined with a dedicated drafting department allows OlarteMoure to offer a truly comprehensive service. The firm provides every client with a single point of contact who can advise and recommend the best course of action, effectively utilising the knowledge and intelligence provided by its highly capable technical experts. “Renowned in the prosecution and enforcement of pharmaceutical patents”, OlarteMoure acts as a hub for international clients – capably coordinating the regional filing strategies for various high-profile portfolios, including those of Novartis, Pfizer and Merck – and is a stalwart champion for its local following through a vast network of foreign associates. The firm rolls out the red carpet to clients in the IT sector; its services in the field are so comprehensive that it recently spun-out to form independent consultancy KONEKTIUM. In litigious work, it reigns supreme; it adroitly defended domestic concrete producer CEMEX in infringement proceedings over a patent relating to an autonomous vehicle for concrete preparation. For Novartis, it successfully blocked the imposition of a compulsory licence in proceedings brought against the multinational by Colombia’s Ministry of Health, a case that has had repercussions across the continent. “A reference point in the patent world, Carlos Olarte is a pioneer. When no one in Colombia understood patents, he was the first professional in the field who truly grasped their importance to pharmaceutical clients. His expertise and influence in the field cannot be overstated.” He is a “mentor” to his peers, one of whom confesses: “Everything that I have learned, I learned from him.” Alongside Olarte, Alexander Agudelo stands out; working either as a duo with Olarte or independently, he is in high demand – particularly among Colombia’s thriving research scene. On behalf of a number of local universities, Agudelo has successfully prosecuted patent applications for inventions in the chemical, electronics and life sciences sectors across the region as well as in the United States.

Posse Herrera Ruiz

Foreign associates expound that: “In a sea of frustrating, expensive and inefficient offerings, dealings in the region improve when you switch to Posse Herrera Ruiz.” Doing a roaring trade in application filings, the one-stop patent shop’s practice is thriving, as it expertly handles numerous national phase applications in the life sciences sector on behalf of its considerable network of associates. Receiving a uniquely personal service – the partners are available at any time through WhatsApp – clients come to the company with confidence that they will receive bespoke advice on how to overcome any obstacle. With a vast knowledge of relevant legislation across a host of countries, the team keep its clients constantly informed, delivering a regional service, including tailored communications containing all the details they could require about the work being done on their behalf. The driving force behind the team is “truly brilliant IP attorney” Mónica Bonnett. Foreign associates “trust Monica in any and all patent matters in Colombia, including prosecution and litigious work, and depend heavily on her consultancy skills. The level of service she provides is impressive; an extraordinary response time and the highest quality of advice ensure her work yields excellent results. Above all, she’s pleasant to work with and an expert in filing in the region.” Alongside her, “Helena Camargo is an efficient and responsive prosecutor capable of handling a significant volume of applications. Together they form a line-up of professionals about whom clients have no complaints.”

Raisbeck & Castro

A flexible outfit committed to exceeding client expectations, streamlined boutique Raisbeck & Castro is characterised by the specialised service it provides and the thorough knowledge and abilities brought to it by the impressive Ian Raisbeck. “With a dual legal and technical background, Raisbeck excels in complex litigation and prosecution work; his dedication to retaining a small practice is testament to his hands-on approach.” He shares this outlook with fellow partner and regulatory sage Natalia Castro.

Triana Uribe & Michelsen

Bulldozing through obstacles at the patent office, Triana Uribe & Michelsen’s attorneys are masters of overturning rejections to applications in the pharmaceuticals, food and agriculture sectors. The practice showcases a profound understanding of these industries, enabling it to rectify and respond efficiently; of late it has successfully pushed through applications on behalf of Brazilian forestry magnates Fibria Cellulose and Swedish drug boutique Camarus, clarifying a perceived lack of novelty in the former case and batting away an opposition claim in the latter. Masterminding the prosecution work is the dynamic duo of Fernando Triana and Andrés Medina. Triana is impressive; “known as one of the most aggressive litigators in the IP field”, he is a former president of the Inter-American Association of Intellectual Property and his reputation as a key figure in Colombia’s most high-profile IP offerings stretches back over 30 years. Counsel to one side or the other in most of Colombia’s contentious patent cases, he shares his wealth of expertise as a professor in intellectual property at the prestigious Del Rosario University in Bogota; alongside him, Medina applies his broad-ranging expertise to prosecution work and to supporting the side’s “excellent licensing practice”.

Other recommended experts

“Responsive and knowledgeable”, Luz Helena Adarve is an IP strategist who deftly advises clients on the enforcement of their rights. A seasoned licensing guru, she is the IP torchbearer for full-service outfit Dentons Cardenas & Cardenas. With over a quarter of a century of experience in counselling multinationals, Mauricio Jaramillo Campuzano has an “excellent track record in licensing”, which earns him status as a favourite among pharmaceutical giants. A legal polymath, he channels his impressive grasp of competition law and merger regulations as an IP partner at Gómez-Pinzón Zuleta.

Individuals

  • Ana Maria Castro - Lloreda Camacho & Co
  • Carlos R Olarte - OlarteMoure
  • Andrés Rincón - Cavelier Abogados
  • Luz Helena Adarve - Dentons Cardenas & Cardenas
  • Alexander Agudelo - OlarteMoure
  • Nestor Bejarano Pérez - Lloreda Camacho & Co
  • Mauricio A Bello Galindo - Baker McKenzie SAS
  • Mónica Bonnett - Posse Herrera Ruiz
  • Helena Camargo - Posse Herrera Ruiz
  • Margarita Castellanos - Castellanos & Co
  • Ximena Castellanos - Castellanos & Co
  • Juan Pablo Concha Delgado - Baker McKenzie SAS
  • Julián Ricardo Díaz - Brigard & Castro
  • Mauricio Jaramillo Campuzano - Gómez-Pinzón Zuleta Abogados SA
  • Andrés Medina - Triana Uribe & Michelsen
  • Ian Raisbeck - Raisbeck & Castro
  • Norberto Rodríguez Acosta - Clarke Modet & Co
  • Fernando Triana - Triana Uribe & Michelsen