Spain’s new Patents Act, which came into force in April 2017, opened up subject-matter eligibility rules – the first medical use of substances or compositions is now patentable, as are chemical product utility models – and also ushered in notable litigation changes, including the introduction of specialised IP courts. These developments will doubtless improve both the quality of patents being granted in Spain and the decisions being made in disputes over them. If there is any negativity, it focuses on the potential economic effect of political events relating to Catalonia and the economy in general which, while improving, is still struggling. While Spain is not participating in the Unified Patent Court (UPC) or unitary patent system, the country’s lawyers are still watching UPC developments with interest.
- Abril Abogados
- Amat & Vidal-Quadras
- Bird & Bird (International) LLP
- Clifford Chance SLP
- Elzaburu SLP
- Gómez-Acebo & Pombo Abogados
- RCD – Rousaud Costas Duran
- Uría Menéndez
“One of the best for patent work in the life sciences", ABG “consistently demonstrates sound business judgement and a resolute focus on quality”. “It also generously invests in educating the collective IP community” in Spain and beyond. The set has an insider’s knowledge of the European IP protection regime, having several former European Patent Office (EPO) examiners on its staff. One of those is “brilliant biotechnology specialist” Agustín Alconada, a “profoundly knowledgeable professional with an open mind and ability to adapt quickly to the changing demands of his field and requirements of his clients”. “The firm boasts a large cadre of experts who excel on complex legal and technical issues”, including chemistry mavens Enric Carbonell and Francisco Bernardo who garner effusive recommendations: “Enric understands his clients’ commercial objectives and shows great concern for them. He is also extremely dedicated.” “Francisco has a complete knowledge of patent law and international prosecution – particularly in Asia and the United states – while being hugely experienced at the EPO. He knows the pharmaceutical sector like the back of his hand too.” Also lighting up the chemistry team is Juan Arias, who is frequently called on as a technical expert in litigations. Over on the high-tech side, and specifically in the electro-mechanical and telecoms spheres, Fernando Prieto is the person to call. His eye for detail is trusted by some influential industry names, including Airbus. Among important developments for the organisation this past year are the formalisation of a centralised service offering for the Latin American region (in which it has practised for some 15 years) and the expansion of the biotech practice to encompass the complex field of plant variety rights protection.
The first Spanish outfit to offer combined prosecution and litigation services (back in 2001), Abril continues to show its innovative streak advising C-suites on creative approaches to the protection of intangible assets and the maximisation of their commercial potential. Up and down the organisation, its staff members are supremely well trained and drilled, and many contribute to academic life in Spain, sharing their exceptional substantive understanding of patent law and the life sciences realm by lecturing students at major universities. Just as the firm invests in the development of its personnel, it also bankrolls continual improvements to its technological infrastructure and, as a result, renders services efficiently and cost-effectively. It also recently opened a branch in the Basque country, taking its total office count to five and putting it within even easier reach of its clients. Partner-in-charge Ignacio Temiño Ceniceros is “an excellent patent litigator” who also demonstrates a deft touch in transactional negotiations. He is backed up by budding associate Fernando Ortega who contributes much to the patent and trademark sides of the firm.
Amat & Vidal-Quadras
Intellectual property is a central plank of the broad corporate and litigation practice maintained by Amat & Vidal-Quadras. In the patent domain, the firm is best known for its pharmaceutical litigation prowess and associated regulatory knowledge; it does a fantastic job litigating on behalf of generic drug manufacturers and is respected by those on the innovator side of the industry as a “top competitor”. “An extremely good and thorough lawyer, an expert on litigation procedure and a creative strategist”, Miguel Vidal-Quadras Trias de Bes is the main draw. However, his partner Oriol Ramon Sauri is also a major magnet for clients. He regularly takes to the podium as a speaker and frequently publishes on life sciences topics, but he also thrives in the cut and thrust of litigation.
Baker McKenzie is uniquely positioned to protect clients’ IP assets globally, and has done a fantastic job encouraging its lawyers throughout its web of offices to maximise the potential of the firm’s international network. That said, it also has strong standalone domestic practices in many jurisdictions, including Spain. Anchoring things locally is Carles Prat, a commercial litigator with a particular faculty for IP and competition law disputes. He is well suited to cases that, whether by dint of technical or legal complexity, are highly challenging; one of his recent cases involved a ground-breaking interpretation of the European Patent Convention’s claim construction guidelines. Invariably, his matters also involve high levels of commercial risk for the parties involved.
In the five or so years since it was established, BALDER has cultivated an ardent following of domestic and foreign companies and virtually tripled in size; the thirst for a dynamic, modern and internationally minded boutique was evidently great and BALDER has quenched it emphatically. Its ability to serve as a one-stop shop for IP protection and enforcement in Spain, Portugal and Latin America is its killer USP, but the cosmopolitan nature of its staff on home turf and concomitant outstanding language skills are further draws; nothing gets lost in translation – Is are dotted and Ts crossed. The set’s quality average is incredibly high, but two individuals who stand out are Magnus Stiebe and Patricia Koch. One of the country’s most experienced professionals before the EPO, Stiebe is of Swedish-German origin but has been in private practice in Spain for nearly 25 years, representing many domestic technology companies on the protection of electro-mechanical innovations. Peers call him “an extremely good and reliable professional who is always a pleasure to cooperate with”. Bringing the heat in adversarial scenarios, co-founding partner and polyglot Koch has been setting litigation benchmarks in Spain for a number of years.
Bird & Bird (International) LLP
Bird & Bird is a byword for quality in intellectual property; its Madrid team combines profound sector expertise with encyclopaedic patent law knowledge, and has the support of a seamlessly integrated international network of offices. Worthy of special mention is the group’s life sciences proficiency and the consistency with which it puts in resonant litigation performances on behalf of pharmaceutical companies. The lodestar for many of these is Manuel Lobato, whose recent highlights include the dismissal of an infringement suit brought by Bayer against Chemo Group, his client, which manufactures and markets generic drospirenone drugs. “Manuel has profound industry knowledge and understands the business needs of his clients. His unrivalled command of the law makes him a go-to professional whenever a complex issue arises. He leaves nothing to improvisation but really studies his cases, taking into consideration all possible angles when addressing matters. He offers solutions that nobody else would imagine, making him an external counsel of reference.” Lobato has also built a “remarkably good team” around him and clients are quick to highlight the quality of José Ángel García-Zapata. The senior associate makes his debut in the IAM Patent 1000 for 2018 thanks to his sterling litigation efforts.
An IP litigation powerhouse in Spain, Clifford Chance has “a near monopoly on innovator-side pharmaceutical litigation”. The firm’s global head of intellectual property Miquel Montañá represents “an amazing portfolio of pharma clients” for whom he has “produced excellent results for many years”. Among his recent victories, he got the High Court of Madrid to revoke a decision of the Spanish patent office which refused to grant his client Janssen Pharmaceutical a supplementary protection certificate (SPC) – a verdict which was confirmed by the Supreme Court in June 2017; he also represented Boehringer Ingelheim in infringement and patent revocation proceedings against Intervet relating to the former’s market-leading porcine vaccine product Circoflex – one of the first biotech patent cases to be tried in Spain and highly complex with many experts involved. A key ingredient in his success is the support he gets from others, including profoundly knowledgeable regulatory expert Montserrat López-Bellosta and counsel Isabel Carulla. No one-trick pony, the firm also works miracles for healthcare and high-tech clients, an ally for many of which is Josep Montefusco, who earned a well-deserved promotion to partner in May 2017.
Although best known for its trademark prowess, Cuatrecasas is no slouch when it comes to patents. It has fomented significant growth in patent litigation and technology transactions this past year, for example in the hiring of specialised new technologies deal broker Álvaro Bourkaib in Madrid. Overseeing the development of the practice and leading the way on much of the team’s patent litigation is Jorge Llevat, a partner since 1989 and one of the country’s most experienced IP professionals. Well accustomed to setting precedents in Spanish courts, he fights the corner of prestigious names in the food and beverage, pharmaceutical and healthcare sectors.
Curell Suñol SLP
Quality is the central narrative at Curell Suñol, an esteemed IP boutique that renders patent services with rare technical precision while keeping an eagle eye on commercial considerations. Prosecution, particularly in the mechanical and electrical arts, is the set’s bread and butter, although litigious and transactional briefs, which are increasing in number, are also dispatched with alacrity. The team caters particularly well to international clients, having within it speakers of English, French and German among other languages. The key contacts are Santiago Jordá, who heads the patent and designs department, and Jordi Güell, who captains the legal wing. Jordá is a former research engineer with a fantastic allowance rate at the Spanish patent office and the EPO. Güell flexes broad IP and unfair competition expertise and resolves difficult disputes with absolute poise.
Having been in operation for over 115 years, Durán-Corretjer is one of the more renowned Iberian IP firms. Throughout its history, the side has got its hands on cutting-edge innovations and protected them with zeal and it is still doing this today. Headquartered in Barcelona, but with branches in Madrid and Alicante, it is within convenient reach of its patrons, who benefit from a quality-oriented, yet cost-effective prosecution service. Luis-Alfonso Durán is responsible for managing the organisation.
Elzaburu has a number of distinctions: it is the oldest IP firm in Spain (established in 1865); it has the largest line-up (17 litigation lawyers, two court agents, and 13 patent attorneys); and it acts for the largest number of Fortune 500 companies. With individuals on each of the IAM Patent 1000 tables – prosecution, litigation and transactions – it can provide legal certainty to technology brands and support their business development in many meaningful ways. When it comes to procurement and portfolio management, Francisco Sáez is the best bet for a successful outcome. The head of the patent department’s innovation team, he drafts meticulously and counsels strategically; having recently earned his patent litigation diploma at the University of Strasbourg, he is well placed to support his clients in infringement scenarios. However, the Elzaburu advocacy kings are Antonio Castán and Enrique Armijo Chávarri. “Castán is an excellent litigator and a gentleman who avoids being unnecessarily aggressive.” That said, he gets it done for his clients, whatever it takes. Armijo Chávarri coordinates the SPC litigation practice. Meanwhile, the outfit’s best negotiator is Javier Fernández-Lasquetty, who heads the legal and business department; he gets signatures on the dotted line of complex technology-centric contracts with ease and is also brilliant deploying alternative dispute resolution methods to bring about settlements.
GALBAIAN Intellectual Property
GALBAIAN has an instinctual feel for the business concerns of its clients and excels at aligning its patent advice accordingly; it also knows all the ingredients that go into excellent customer service. All this is because it was formed by individuals who previously worked in-house together. Traditionally tasked mainly with prosecution duties, it is increasingly called on to form the patent strategies that guide clients and is thriving in this higher-level counselling role. Running the show is Ismael Igartua, “a truly reliable partner whose availability, quick response and professionalism are remarkable”. “Going beyond just writing patents, he helps clients create a stronger IP culture. He provides an excellent service in terms of the identification of IP protection solutions and competitive intelligence analyses and adds value by offering IP training to company staff. Thanks to his excellent network, he can also connect you with the right people so you can protect your products and advance your strategy internationally. He has built a young and highly competitive team around him.”
Muscular international player Garrigues offers the most comprehensive suite of services imaginable. However, the side excels in intellectual property; it has specialist expertise and a dedicated professional group that solves patent conundrums as well as anyone. Transactions and litigation are the twin pillars of its technology-oriented wing, which knows the state of the art in many technical fields; healthcare, food and biotechnology are particular areas of expertise, though. Dual-qualified in Spain and Portugal, João Miranda de Sousa is the main man.
Gómez-Acebo & Pombo Abogados
Gold-rated for patent litigation, Gómez-Acebo & Pombo has the bench depth and talent to concurrently handle a plurality of convoluted multi-jurisdictional infringement suits – and emerge victorious on every one. In pharmaceutical disputes, head of intellectual property and information technology Eduardo Castillo and senior partner Gonzalo Ulloa Suelves really turn up the heat on their opponents. Together, they have lately been representing Bristol-Myers Squibb and Ono Pharmaceutical in a case against Merck relating to anti-cancer drug Keytruda – an important international dispute which settled with a lucrative licensing agreement for their clients. They have also been acting for Actelion Pharmaceuticals against Eli Lilly in a case concerning the generic version of Eli Lilly’s Viagra competitor Cialis. Biotech contentions are the preserve of Jesús Muñoz-Delgado, a rare specialist in the field of plant varieties who has been inundated with new instructions this past year. Muñoz-Delgado has a longstanding relationship with the regents of the University of California and its Spanish licensee Eurosemillas, on behalf of which he has obtained protection for the mandarin variety Tango in Spain, following a long battle. “Outstanding lawyer” José Miguel Lissén has a number of uncommon specialisations too, including appellate, alternative dispute resolution and licensing expertise. He litigates patent cases principally in the medical device, healthcare and telecoms domains, but does a spot-on job on trademarks as well.
Grau & Angulo
Relying on a well-oiled back office machine, Grau & Angulo’s partners are free to concentrate on what they do best – guiding clients strategically and commercially and litigating with verve in all technical fields. Among indigenous firms, it has one of the most refined cross-border litigation skill sets; abundantly experienced in wide-ranging suits, “experienced, reliable and outstanding lawyers” Jorge Grau and Alejandro Angulo are international crusaders who staunchly protect the owners of electronics, mechanical and communications patents. In May 2017 Grau, together with fellow global enforcement ace Jesús Arribas, secured a preliminary injunction from the Barcelona Court of Appeal for Nestlé preventing Fast Eurocafé from importing beverage capsules compatible with Nestlé’s Dolce Gusto system. The firm’s robust generic pharmaceutical litigation and life sciences practice rests on the broad shoulders of Javier Huarte, a litigator who is “thorough in all things and technically exceptional”. “Putting himself in the position of his opponents, he has a talent for foreseeing possible weak points in cases or strategies and dealing with them. He manages his team effectively, so every member of it knows the smallest details of their cases.” His recent highlights include successfully opposing a preliminary injunction on behalf of Mylan and Teva, which were alleged to have infringed SPCs held by Gilead Sciences. In 2017 the team expanded with the arrival of Ignacio Marqués, who was anointed to the partnership in January 2018. Garnering great reviews, his signing was an inspired move: “Ignacio really understands the technical aspects of his cases – he puts the effort in much more so than other lawyers tend to do. He’s a pleasure to work with and though relatively young, is highly experienced, which makes you feel confident going into a case.”
Herrero & Asociados may be best known as a prolific filer but, resource rich in terms of both technical and legal expertise, it can procure, manage, litigate and monetise patent rights with exceptional results. Of particular note is its proficiency in managing portfolios across Latin America: “Many firms touting their regional Latin America abilities merely operate as middle men and don’t truly coordinate the efforts of different foreign associates – not Herrero, which centralises control of filings and client communication. As a result, office actions are reported in a timely manner and filings are completed promptly. Mistakes can cost you big time if you’re not very selective with your outside counsel; Herrero’s work is effective and error-free.” Jesús González has provided strong leadership to the patent practice since 2003. Throughout he has identified clever ways to enhance IP protection for his clients, which include Spanish multinational Telefónica and IBEX 35-listed conglomerate Abertis Infraestructuras.
Hogan Lovells International LLP
Hogan Lovells understands the finer points of international IP strategy and is a staunch ally when patent infringement proceedings threaten clients’ commercial success in Spain and further afield. Ana Castedo is brilliant before domestic commercial and IP courts and is careful that her many victories there do not cause problems on parallel cases in other jurisdictions. When it comes to high-tech and telecoms disputes, “she is one of the smartest lawyers in Spain”. Large institutional clients with sweeping, diverse portfolios benefit from the ability of Hogan Lovells to provide the highest quality guidance on patents, trademarks and copyrights.
Multi-jurisdictional patent litigation is the metier of prestigious European IP powerhouse HOYNG ROKH MONEGIER. Its teams in the Netherlands, Belgium, Germany, Munich and Paris are seamlessly integrated in a set-up which gives technology leaders all the firepower they need when war is declared on their competitors. The Spanish contingent is helmed by Luis Fernández-Novoa, who can be relied on for a resonant performance when only a win will do. “Luis delves deeply into the technical nuances of his cases and gets to grips with them no matter how complex. His arguments focus on the key points that will turn a case and cross-examines experts extremely well, so judges know and appreciate where he stands. His preparation before oral proceedings is exhaustive too.” Of late, he has been displaying these attributes representing Sequenom and Illumina in a complex gene sequencing dispute with parallel proceedings in the United Kingdom, Sweden, Germany and Italy. Another lawyer who garners glowing notices is Álvaro Velázquez, who is “extremely solid in his writs and in court hearings. His communication skills are exemplary and he is technically gifted in a way that makes it hard for opponents to surprise him”.
“Consult PONS IP on any IP issue, and it will reply quickly with efficient and accurate advice. You can put your full trust in it to handle patent and trademark work across Europe and in the United States.” It now also has patrons covered in Latin America, thanks to its recently established presence in Bogota. Traditionally prosecution-focused, the firm is not one to stand still and has, for example, recently launched PONS IP Transfer, a new unit focused on technology-intensive transactions. Always looking to add value for her clients, Patricia Ramos holds the patent department’s reins, overseeing a team of over 30 patent professionals and acting as relationship partner for many large institutions. Her particular fields of expertise are chemistry and biotechnology and she is an authority in both, regularly writing and lecturing to furnish others with her wisdom. Before entering private practice, she was in-house at PharmaMar – experience which grants her a commercial perspective and an understanding of what makes good client service.
RCD – Rousaud Costas Duran
RCD acquits itself with rare distinction in the transactional domain; it expertly blends a fine-grained knowledge of IP law with commercial contracts expertise and, in negotiations, gets clients across the finish line in fine shape. Whether securing worldwide rights to develop and market a biotech product, setting up complex clinical research frameworks or getting financing in place, Ignasi Costas pulls out all the stops. He is the firm’s founding partner and a gifted academician; he also sits on the boards of several technology companies and as a result has a head for both business and legal matters.
Sugrañes possesses a rich history protecting intellectual property in Spain. It puts a multi-faceted team that includes patent attorneys and lawyers at the disposal of its clients’ and is an ever-popular choice as a one-stop shop. Luis Vilalta heads the patent department and is a good first port of call for those interested in a tight prosecution service.
“One of the most sophisticated Spanish commercial firms, Uría Menéndez has a number of outstanding quality IP partners.” These include “incredibly prestigious academic and litigator” José Massaguer, who inspires fervour among cutting-edge pharmaceutical innovators and mould-shattering high-tech companies. Another stand-out is Ingrid Pi, who has cultivated an excellent reputation as an “energetic, dynamic litigator with a lot of stamina”. She crosses technical divides artfully, but has particular experience within the life sciences field, where she excels thanks not only to her advocacy skills but also to her regulatory expertise. In between the two in terms of experience level, Montiano Monteagudo has profound knowledge of IP, unfair competition, contract and corporate law. Therefore, his advice is always well rounded and his support holistic.
Operating with incredible precision, ZBM is best in class when it comes to procuring high-quality, value-adding patents and nothing falls outside of its technical compass. The side’s contentious credentials are strong too, so it often inherits matters from other firms due to its ability to handle opposition proceedings with winning results and set applications on the path to grant; it is also called on for technical support in big-ticket litigations. The client feedback is excellent: “Its practitioners have great team spirit and act decisively with savoir faire. The group stands out for its seriousness, professionalism, timely delivery, exhaustive searches, practical recommendations and network of friends.” Sharing the lead of a line-up which is “as good as can be” are head of mechanics Anna Barlocci, captain of chemistry and life sciences Bernabé Zea and chair of information technology and electronics Carles Comes. As one client effervesces: “Anna and Bernabé have a profound knowledge of the patent system and are incredibly smart at designing strategies to help you better enforce and defend your patent rights. Both are brilliant in court as expert witnesses and their litigation work is excellent and impressive.” “Carles is a supremely capable counsellor who is a pleasure to deal with. He responds rapidly, reliably and efficiently, and is a go-to for anything IP-related, but especially patents.” All three team leaders have superb talent surrounding them. On the life sciences side, Zea is lucky to have Montserrat Jané as a colleague; she is a former pharmaceutical company R&D head and is perfectly attuned to the thinking of her clients. “Montserrat is head and shoulders above others in terms of her technical expertise and industry knowledge. She solves problems with ingenuity, drafts and files Spanish, Patent Cooperation Treaty and US patents with skill and has extensive oppositions experience.” A former examiner at the EPO, Mathieu de Rooij has the inside track on patent prosecution at the office. He plies his trade primarily in the medical device, automotive and renewable energy sectors; in the latter, he takes responsibility for much of General Electric’s patent portfolio.
Other recommended expertsAn ace on issues which sit at the intersection of IP and unfair competition law, Pedro Merino Baylos is the driving engine of esteemed IP and litigation boutique BAYLOS Abogados. He has a high profile in the market, having been appointed president of the Spanish group of the International Association for the Protection of Intellectual Property. Someone who has previously held this position is David Pellisé Urquiza of Pellisé Abogados. A rigorous patent litigator, he has met with success in every forum.
- Jorge Grau - Grau & Angulo
- Javier Huarte - Grau & Angulo
- Manuel Lobato - Bird & Bird (International) LLP
- 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
- Ana Castedo - Hogan Lovells International LLP
- Eduardo Castillo - Gómez-Acebo & Pombo Abogados
- Luis Fernández-Novoa - HOYNG ROKH MONEGIER
- Patricia Koch - BALDER
- 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
- Álvaro Velázquez - HOYNG ROKH MONEGIER
- Enrique Armijo Chávarri - Elzaburu SLP
- Jesús Arribas - Grau & Angulo
- Isabel Carulla - Clifford Chance SLP
- José Ángel García-Zapata - Bird & Bird (International) LLP
- Jordi Güell - Curell Suñol SLP
- José Miguel Lissén - Gómez-Acebo & Pombo Abogados
- Jorge Llevat - Cuatrecasas
- Montserrat López-Bellosta - Clifford Chance SLP
- Pedro Merino Baylos - BAYLOS Abogados
- Carles Prat - Baker McKenzie
- Oriol Ramon Sauri - Amat & Vidal-Quadras
- Ignacio Temiño Ceniceros - Abril Abogados
- Anna Barlocci - ZBM Patents & Trademarks
- Francisco Bernardo - ABG Patentes
- Carles Comes - ZBM Patents & Trademarks
- Ismael Igartua - GALBAIAN Intellectual Property
- Magnus Stiebe - BALDER
- Agustín Alconada - ABG Patentes
- Juan Arias - ABG Patentes
- Enric Carbonell - ABG Patentes
- Mathieu de Rooij - ZBM Patents & Trademarks
- Jesús González - Herrero & Asociados
- Jordi Güell - Curell Suñol SLP
- Montserrat Jané - ZBM Patents & Trademarks
- Santiago Jordá - Curell Suñol SLP
- Fernando Prieto - ABG Patentes
- Patricia Ramos - PONS IP
- Francisco J Sáez - Elzaburu SLP
- Bernabé Zea - ZBM Patents & Trademarks
- Ignasi Costas - RCD – Rousaud Costas Duran
- Javier Fernández-Lasquetty - Elzaburu SLP
- José Miguel Lissén - Gómez-Acebo & Pombo Abogados
- Jorge Llevat - Cuatrecasas
- Manuel Lobato - Bird & Bird (International) LLP
- José Massaguer - Uría Menéndez
- Montiano Monteagudo - Uría Menéndez
- Jesús Muñoz-Delgado - Gómez-Acebo & Pombo Abogados
- Fernando Ortega - Abril Abogados
- Ignacio Temiño Ceniceros - Abril Abogados