Magnus Aspeby

Ranked in Brazil
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.

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One of Brazil’s best rounded and leading IP firms, Montaury Pimenta, Machado & Vieira de Mello offers its patrons comprehensive patent coverage, capitalising on technical expertise encompassing all major technological, engineering and life sciences fields. Increasingly sought after for the most complex and strategically significant matters, including litigation, the professionals here demonstrate tenacity, agility and creativity in overcoming whatever obstacles are put in their path. The patent team is capably led by Roberto Vieira de Mello, a founding partner of the outfit and all-IP expert perfectly placed to support clients in all their endeavours. On the prosecution side, Magnus Aspeby and Gabriela Salerno anchor robust chemical and pharmaceutical practices, respectively. Salerno takes charge of the technical team and has a strong background in innovation management. Taking a “proactive and focused” approach to litigation, Luiz Edgard Montaury Pimenta is the top IP trial lawyer on deck. He has decades of experience and an encyclopaedia of enforcement and defence strategies to draw on. Fellow litigator Ana Paula Affonso Brito is “excellent in terms of teamwork, communication, leadership and perseverance”. One of her patrons comments, “I have been working with her for many years and have been 100% successful in all initiatives.”

Magnus Aspeby's Profile

Magnus Aspeby earned a degree in chemical engineering from the Royal Institute of Technology in Stockholm and is the only person in Brazil to have passed the EPO’s qualifying exam.

Mr Aspeby worked as a patent examiner at the Swedish Patent Office before working for 11 years at the EPO in Munich in gas purification and separation processes, as well as heterocyclic compounds. He has also worked as a consultant expert for WIPO at the Brazilian Industrial Property Office (INPI) in Rio de Janeiro and as a patent attorney in the patent department of Sandvik AB in Sweden, mainly drafting and prosecuting patent applications for metal cutting tools and steel alloys. At Sandvik, Mr Aspeby actively participated in several oral proceedings at the EPO in opposition and appeal proceedings.

Mr Aspeby founded his own IP office in Rio de Janeiro, which he managed for 18 years, during which time he mainly filed and prosecuted Brazilian patent applications. He also drafted and filed several appeals, administrative nullity actions (oppositions) and subsidies to the technical examination (third-party observations). Besides the INPI, he has actively corresponded with the Brazilian National Agency for Sanitary Vigilance for pharmaceutical applications. Further, Mr Aspeby has dealt with freedom-to-operate investigations and infringement cases, as well as design and trademark applications.

Mr Aspeby is an active inventor and the sole inventor or co-inventor of seven priority-based patent applications. In September 2015, Mr Aspeby joined the IP office of Montaury Pimenta, Machado & Vieira de Mello in Rio de Janeiro.

Recent publications

  • “Challenging competitors’ patents in Brazil”, International Law Office, September 2021
  • “Förbättringar I Brasilien”, BrandNews and PatentEye magazine, November 2019
  • “Two major improvements in the industrial property area in Brazil”, Nordic Light Magazine, October 2019
  • “I did it my way – Saving a Brazilian patent application”, Lexology, August 2019
Firm Profile

A specialist in complex IP litigation, IP prosecution and enforcement, Montaury Pimenta, Machado & Vieira de Mello is one of Brazil’s top IP law firms, working across national and international markets. It offers technical expertise in the areas of electrical engineering, electronics, mechanical engineering, physics, life sciences and healthcare, biotechnology, chemicals and pharmaceuticals, software and computer sciences, telecommunications and nanotechnology, with a strong patent litigation practice.

The firm’s services include strategic consulting, legal analysis, searches, filings, filing of oppositions, administrative and legal disputes, as well as franchising agreements and technology transfer. The firm also helps in the process of negotiating agreements and taking actions before national and international arbitration chambers. In addition, the firm has also experienced remarkable growth, confirming its outstanding position in the market, especially regarding strategic and complex patent litigation, patent matters (including patent filing and prosecution), and freedom-to-operate and infringement opinions.

Montaury’s reputation for resolving disputes before the Brazilian IP courts is one of the firm’s distinguishing features. The litigation practice is very active and combative, always focused on efficiency and obtaining results. The firm handles complex domestic and international patent litigation and counselling, with a high rate of successful decisions in federal and state courts.

The firm’s ability to meet its clients’ needs and commitment to the issues brought to it, together with the high success rate in the cases handled, are undoubtedly the firm’s core strengths. The firm has an integrated structure of correspondents throughout Brazil and abroad, providing local support and consequent agility and security to clients that demand services in other regions or countries. Its professionals are members of several national and international IP associations. This engagement ensures that the firm’s professionals are always up to date with the practices adopted not only in Brazil but also abroad and in relation to current jurisprudence on the main issues of intellectual property in Brazil and in the world. This contributes to delivering effective services to clients.

Furthermore, the firm’s life sciences practice has been steadily growing over the past few years. Apart from patent filings, prosecution and litigation work, the team also provides prior art searches and freedom-to-operate reports. The life sciences department also offers consulting services in relation to the protection of plant varieties encompassing all phases of the process, from the request of protection for plant varieties with the Ministry of Agriculture, to the issuance of the plant variety protection certificate, as well as the maintenance of such protection. The head of the life sciences department, Gabriela Salerno, is the current chair of the Patent Committee of the Brazilian Intellectual Property Association.

The firm’s highly trained technical experts provide first-class representation through all stages of the patent process, from the preliminary administrative level to the courtroom. Roberto Vieira de Mello, one of the firm’s founder partners, leads the patent team, which is made up of a large group of engineers, lawyers and pharmacists.

The firm’s reputation was built on its expertise, availability and proactiveness in defending clients’ IP rights in the following areas of practice:

  • patents;
  • utility models;
  • industrial designs;
  • freedom-to-operate opinions;
  • plant varieties;
  • patent litigation;
  • IP litigation;
  • trademark management;
  • geographical indications;
  • copyright and software;
  • anti-piracy programmes;
  • domain name disputes;
  • digital law;
  • fashion law;
  • licensing;
  • trade dress;
  • unfair competition;
  • advertising law; and
  • life sciences.

The patent services include:

  • prior art searches;
  • patent analysis;
  • patent applications;
  • patent prosecution;
  • freedom-to-operate opinions;
  • industrial designs;
  • utility models;
  • complex patent litigation, including patent invalidity proceedings and infringement lawsuits;
  • payment of annuities;
  • patent transactions;
  • patent licensing; and
  • know-how licensing.

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