ZBM Patents & Trademarks

IAM Research

The Patent 1000 focuses exclusively on patent practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal patent expertise.

Gold - Firms: prosecution

“ZBM Patents & Trademarks is a go-to for all IP instructions, but is particularly adept at managing large numbers of patent filings across the world. It has a remarkably wide network of patent professionals, which helps enormously when it comes to managing patent applications in jurisdictions with different legislation. Its group of technically diverse attorneys are interested in continuing to learn about technical issues in the innovative sector and provide customers with a friendly and personalised service.” Indicative of its strength, the outfit features eight representatives on the prosecution table this year, including Carles Comes, who draws on almost three decades of experience and a breadth of knowledge regarding IT and electronics that is tough to rival. Chemistry aces José Ignacio Bonilla and Natividad Toledo know exactly how to get an application through to successful grant and protect valuable intellectual assets from every conceivable angle. “The reliable and committed Bernabé Zea has great communication skills and a high-level of technical knowledge. He is well-known for his role as a technical expert.” Montserrat Jané also comes highly praised as “an obvious choice for those seeking protection of chemical and pharmaceutical inventions. She is clever, productive and very skilled at drafting clear and concise patent applications to achieve the broadest scope of protection possible. Montserrat is hardworking, kind and an honest advocate for inventors’ interests”. The solution-driven Noemí Daviu brings a big-picture perspective gained from her time in industry and has recently teamed up with Jané to represent Repsol in a patent opposition proceeding against Covestro. Recently promoted to partner, Oscar Rubio Solis is a business-savvy practitioner who crafts forward-thinking filing strategies that secure purposeful protection for his patrons. The “particularly creative” Anna Barlocci heads up the mechanics team and understands the finer points of European patent strategy to adroitly manage large portfolios for several market leaders. 

Firm Profile

ZBM Patents & Trademarks was founded in 2003 with the goal of changing the patent landscape in Spain. ZBM is proud to have reached that goal and is now widely considered to have set the new standard for patent practice in Spain. Along the way, it has dramatically increased IP awareness in the country.

The firm has grown considerably in a short time and currently has 23 patent experts in its team, including 13 qualified European patent attorneys in Spain, as well as a US agent and three Spanish patent and trademark attorneys.

Quality and integrity

ZBM’s patent experts have an in-depth understanding of clients’ technologies and business needs, and the firm is committed to providing services that create value for clients. ZBM distinguishes itself from other patent firms through its unfaltering commitment to quality. Whether patent drafting, patent searches, prosecution work, opposition or just validations, all work products are cross-checked to ensure that they are of consistent quality. The firm’s attorneys believe that something is not worth doing if it is not done well.

ZBM’s commitment to training both staff and clients is unsurpassed: the firm is involved in all main academic activities in Spain. In-house training ensures that every member of the ZBM team is aware of the relevant legal developments in any jurisdiction.

ZBM’s outstanding work has been recognised both nationally and internationally since its creation, in particular in the following publications:

  • IAM Patent 1000, which has listed ZBM in the highly recommended category for patent prosecution in Spain in all its editions; and
  • Managing Intellectual Property, which has listed ZBM in its top tier rankings every year since 2007 – the only Spanish firm to achieve this sustained level of recognition.

Clients also recognise ZBM’s excellent value for money, and client recommendations have become the firm’s major source of growth as small and medium-sized enterprises, multinationals, patent firms and lawyers increasingly find their way to ZBM from the United States, Latin America, Asia and the Middle East.

Areas of expertise

ZBM’s patent attorneys are trained and experienced in a wide range of technical areas, such as pharmacy, chemistry, biotechnology, mechanics, electronics and computer technology. Its patent services include the following:

  • Patentability and freedom-to-operate studies – ZBM’s experts are highly trained in searching, and the firm takes maximum advantage of its experts’ backgrounds as former patent examiners, Chemical Abstracts Service and STN International trainers and managers of scientific information departments of pharmaceutical companies.
  • Patent drafting – ZBM drafts European and Patent Cooperation Treaty (PCT) applications in both English and Spanish, as well as Spanish patent and utility model applications and US patent applications. Further, its experts are familiar with the particular requirements of other major jurisdictions, including China and Japan.
  • Patent prosecution – ZBM files and prosecutes European, PCT and Spanish applications, as well as national phases of PCT applications in both Europe and Spain. Through a network of associates in foreign countries, patents are also prosecuted worldwide.
  • European oppositions and appeals – ZBM provides technical and formal assistance to clients in opposition or appeal proceedings before both the European Patent Office and the Spanish Patent and Trademark Office, including filing notices of opposition and appeal, and drafting the corresponding grounds and arguments.
  • Patent litigation – ZBM’s patent attorneys frequently act as technical experts in Spanish litigation cases.
  • Innovation and technology – The BConnect unit of ZBM provides services in technology transfer (patent commercialisation), licensees search, support in ongoing licensing negotiations, contract draft (consortium agreements, confidentiality, material transfer agreement, licensing), support and collaboration in R&D projects (eg, IP strategy, commercial feasibility, consortium/partnership coordination, H2020) and technology scouting – among other things.

In addition to patents, ZBM provides the full range of services for other IP rights, including trademarks (particularly Spanish, EU and Latin American trademarks), design protection and domain names.

Other services include organising in-house training for companies and research groups, drafting IP agreements and handling negotiations for both individual cases and full portfolios.

 

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