Rising Stars

Firms To Watch: Intellectual property

Founding partner Botho Steinvorth Koberg leads the intellectual property practice of LatinAlliance Costa Rica, which is particularly experienced in advising international clients on the management of their regional IP portfolios.
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Intellectual property in Costa Rica

BLP

The powerhouse intellectual property team at BLP advises multinational and regional clients on the full range of matters. These include cross-border trade mark portfolio management, the prosecution and enforcement of IP rights, regulatory advice on sanitary regulations, the transfer of IP assets, and the structuring of data management. Led by Giselle Reuben, and supported by Uri Weinstok, who brings additional expertise in competition law to the team, director León Weinstok, who specialises in data protection, and senior associate Anel Aguilar, the group represents such household names as Unilever, Microsoft, PepsiCo and Bayer, drawn from sectors including telecoms, education, manufacturing, automotive, tech, food and finance.

Practice head(s):

Giselle Reuben

Testimonials

‘Uri Weinstock and León Weinstock are knowledgeable, responsive and practical. They really know IP law in Costa Rica and the region well and they are able to get results.’

Key clients

Earth

AR Holdings (Olive Garden)

Purdy Motor (Toyota & Lexus)

Equifax

Biofarma

ADO Mobility

Edwards

Inter-American Development Bank (IDB)

British American Tobacco

Unilever

BAC San José (Bank of Central America)

HBO Go

La Guacamaya

Grupo Boticário

Microsoft

Arizona State University

Bayer

Pepsico

El Arreo

Numar

Laboratorios Ballerina

Amway

Millicom

Incomex

Sony

Work highlights

  • Assisted Sony with the seizure of 2,000 counterfeit PS4 controllers.
  • Assisted with the IP aspects of the launch of the HBO Go streaming platform.
  • Advised Edwards Lifesciences throughout the importation process of bovine tissue from California and Singapore to make heart valves, including assisting with phytosanitary requirements, permits for registration as importers and the issuance of certificates between countries.

Arias

The intellectual property team at Arias advises regional and multinational clients on a diverse range of matters. Its full service extends to filing trade mark applications, litigation and enforcement, product registration, data privacy, the development of IP strategies, intangible asset due diligence and the promotion of IP investment options for start-ups. In an important July 2021 development, the firm hired María del Pilar López as practice co-head from Zürcher IP (where she held the same position), along with senior associate María José Campos and associate Desirée Barahona. The trio joins a group that includes fellow practice co-heads Luis Diego Castro (an e-commerce and tech licensing expert) and patent litigation authority Simón Valverde. Additional backing comes from senior associate Ariana Lizano, who is primarily trade marks focused; and associate Valeria Grant, a patent registration specialist. The team’s high-profile client base includes pharmaceutical, food and beverage, technology, agrochemical and biotechnology companies and institutions, among them Monsanto, AbbVie and Centro Nacional de Biotecnología (CENIBiot).

Practice head(s):

Luis Diego Castro; Simón Valverde; María del Pilar López

Key clients

Julio Araya

UNED

Monsanto

AbbVie

GloFish

Dechert

Comisión de Innovación de la Cámara de Industrias

Centro Nacional de Biotecnología (CENIBiot)

Laboratorio Nacional de Nanotecnología (Lanotec)

Work highlights

  • Managing the prosecution and handling of Monsanto’s entire patent portfolio in Costa Rica.
  • Represented GloFish and, despite patentability over animals not being allowed in Costa Rica, overcame a first initial rejection over a modified DNA fish, arguing that the protection is on the DNA sequence for industrial purposes.
  • Advising UNED, a local state university which has an R&D department, on the development of a strategy to protect its intellectual property assets.

Eproint

The team at IP boutique Eproint works alongside the firm's offices in Central America and the Caribbean to offer a one-stop shop for intellectual property services, advising on IP strategy, health registrations, IP litigation and regulatory law. Areas of expertise include the fashion, consumer goods and health sectors, including advising on the IP aspects of medical cannabis. The experienced team is led by founding partner Aaron Montero, who acts as the ambassador of intellectual property of the International Chamber of Commerce, and IP rights enforcement expert Gabriela Bodden.

Practice head(s):

Aaron Montero; Gabriela Bodden

Facio & Cañas

Faycamark, the intellectual property division of Facio & Cañas, is highlighted for its 'in-depth knowledge of IP matters', advising clients at the national and international levels on all needs related to copyright, patents, trade marks, trade secrets and regulatory law. Services include strategic portfolio development management, due diligence, complex litigation, and advising domestic and multinational companies on merchandising ventures and product licensing. The group’s client portfolio contains international companies such as Jaguar Land Rover and Huawei Technologies, and covers sectors including telecoms, chemicals, manufacturing, automotive, food and beverages, pharmaceuticals and medical devices. The team is led by 'excellent' IP authority and managing partner Milagro Chaves and associate Laura Valverde, who also specialises in life sciences.

Practice head(s):

Milagro Chaves; Laura Valverde

Testimonials

‘The Facio & Cañas team really stands out from other firms we have worked with in Costa Rica, because of its expertise; the team has in-depth knowledge of intellectual property matters and provides a personalised client service in the cases it handles. In addition, the firm offers agreeable rates.’

‘Laura Valverde and Milagro Chávez are excellent lawyers who give our matters VIP-level treatment, in addition to offering a friendly and professional service that really makes a difference when we work together.’

‘What makes the firm stand out is the organisation with which they handle our large trade mark portfolio, and the close lawyer-client relationships – we always receive fast responses, using all channels of communication.’

‘They explain the criteria of the authorities, rather than giving us a summary of the law. They are very responsive.’

Key clients

Jaguar Land Rover Limited

Huawei Technologies

Ecotanques de Costa Rica

The Trust Project

Lorenz Snack-World Holding

Lubrizol Advanced Materials

Work highlights

  • Aided Huawei Technologies with the seizure of counterfeited goods.
  • Advised Ecotanques de Costa Rica when it received a cease and desist letter on behalf of the owner of the trade mark ECOTANK.
  • Advised Lubrizol Advanced Materials when a patent application was rejected by the Costa Rican IPO for lacking the novelty requirement.

MMonivation

The group at boutique firm MMonivation handles the intellectual property needs of multinational and regional clients, advising on such matters as trade marks, patents, copyrights, sanitary regulations, contracts, registration procedures, contentious matters and due diligence. Ana Catalina Monge, who is praised for her 'broad understanding of the subject', thanks to her past role in Costa Rica's Intellectual Property Office, leads an experienced team, which is supported by senior associate Andrés Hernandez, a former Trade Mark Registry examiner. The group’s expanding client portfolio covers the manufacturing, pharmaceuticals, legal services, tech, gastronomic services and tourism sectors.

Practice head(s):

Ana Catalina Monge

Testimonials

‘This firm is made up of people who know about the subject but who also have an admirable standard of client service. Their strengths are their knowledge of IP matters, prompt responses and fair fees.’

‘Ana Catalina Monge previously worked at the Intellectual Property Office of Costa Rica and so she has a broad understanding of the subject from both the public and private law perspective. She stands out because she knows that clients are her priority, so she provides a quality service and demands quality from her colleagues.’

Key clients

Kao USA

Arabela

Industrias Sintéticas de Centroamérica

Consuhotel

Caribbean Trademarks Services (George C.J. Moore)

Banker & Toro

Flowil International Lighting Holding

Trego, Hines & Ladenheim

Sergio Dobles Castillo

Besne Mark Next

Work highlights

  • Represented Official Pillowtex in an action for the cancellation for non-use of a Canon trade mark.
  • Represented Tecnoquímicas in an action for the cancellation for non-use of the Mejoral, Mejoralito and Cardiomejoral trade marks in Central America and the Dominican Republic.
  • Advised Arabela on the sanitary registration of more than 200 new cosmetics products in Costa Rica.

Zürcher IP

With expertise in advising clients on safeguarding their intellectual property at the international level, Zürcher, Odio & Raven's IP arm, Zürcher IP, remains a leader in the practice area. However, the July 2021 departure of former practice head María del Pilar López to Arias, along with two associates, is a notable loss. Harry Zürcher Blen now leads the group with support from Edgar Zürcher Gurdián, a specialist in IP and business law. The team represents a client roster of household names across such sectors as tech, entertainment, pharmaceuticals, e-commerce, food, beverages and consumer products. Its services extend beyond due diligence, confidentiality agreements, licensing agreements and enforcement to addressing cybersecurity breaches, managing data privacy concerns, and assisting clients in setting up clinical trials.

COLBS Estudio Legal

The intellectual property team of ‘experts‘ at COLBS Estudio Legal advises clients on a wide spectrum of matters, including handling sanitary registrations, data protection protocols and the implementation of confidentiality agreements, as well as trade mark applications and renewals, the protection of image rights, due diligence processes and film distribution agreements. Helmed by data privacy expert Sebastián Jiménez and associate Jessica Ward, who is active in trade mark portfolio management, the group represents local and international clients including SwissCore and LafargeHolcim, across such industries as pharmaceuticals, hospitality, food, sports, entertainment, aviation, fintech and agriculture.

Practice head(s):

Sebastián Jiménez; Jessica Ward

Testimonials

‘They are a credible team of experts offering a complete service with personalised attention and the support of a multi-disciplinary team. They react very quickly and they totally understand our business, making it easy to interact with them at any time. They have significant experience in a range of key areas.’

‘Jessica Ward is a key contact for our company. She has shown a strong defence of our interests and her rigour in studying relevant issues has been outstanding.’

‘The team stand out for their knowledge, experience and communication skills. They respond immediately to enquires.’

‘They have a personal touch, particularly Jessica Ward.’

Key clients

Rafael Azofeifa Espinoza

Redwood International Capital

Swisscore Group Latam

Swisscore Group Latam

Farmagro

Liga Agrícola de la Caña de Azúcar

Al Mercat

Gloriana Villalobos

Rafael Víquez

Carolina Arias

Work highlights

  • Advising Redwood International Capital on processing the sanitary registrations of all of their products throughout the whole Central American and Caribbean region.
  • Advised Swisscore Group Latam on the development of its data protection protocols and the implementation of all necessary confidentiality agreements, as well as advising on trade mark applications and renewals for more than 50 products.
  • Advised a Costa Rican inventor, who developed a particular recipe for a disinfectant ice cube with potential for pandemic-related applications, on protecting his invention as an industrial secret.

Consortium Legal

With its customised trade mark software to assist with daily portfolio management and 'willingness to accommodate clients' different requirements', the group at Consortium Legal advises clients on how to monetise their intellectual property assets from a global perspective. It offers a full service, assisting with regulatory matters, due diligence procedures, patent filings and prosecution, copyright and trade mark infringement assessments. Led by the founder and senior partner of the Costa Rica office Rolando Laclé Castro and 'available and knowledgeable' department director Fabiola Sáenz, the team’s client portfolio includes companies from the banking, food and beverages, and medical device sectors.

Practice head(s):

Rolando Laclé Castro; Fabiola Saenz

Testimonials

‘Fabiola Sáenz is available, knowledgeable about the subject and flexible in accommodating clients’ specific requirements. She is very professional.’

‘They follow-up on cases and don’t leave it up to the client. They have a presence in various countries and reasonable prices.’

‘They stand out for their availability and willingness to accommodate clients’ different requirements, as well as the high quality of the client service.’

Key clients

Arabela

Banco Lafise

Rappi

Republic Technologies

Productos Alimenticios Centroamericanos

Hardell Investments

Cemex Research Group

Ecareyou Innovation

Entrepinares

Grupo BAC San Jose

Work highlights

  • Advised Republic Technologies on criminal actions to prevent the counterfeiting of key products.
  • Advised Rappi on the annulment of a third party’s trade mark, which was infringing the client’s main brand.
  • Advised Industrias Licoreras de Guatemala on protection for its exclusive appellation of Guatemalan rum.

Dentons Muñoz

With 'in-depth knowledge of intellectual property law', the integration of its Direct IP Platform, which allows clients to independently view their portfolios, and the utilisation of its global network, the team at Dentons Muñoz advises multinationals, entrepreneurs and venture capital groups on a wide spectrum of matters. These include regulatory issues, patent prosecution and litigation, and trade mark enforcement. Led by Monserrat Guitart, the regional director of the firm's IP and technology practice, who has expertise in data privacy and IP strategy, and supported by newly arrived of counsel Melissa Mora Martin, who joined the firm from her own practice in September 2020 and is a specialist in portfolio management, the team assists household names in such sectors as toys, food and beverages, life sciences, retail, pharmaceuticals, e-commerce and financial services.

Practice head(s):

Monserrat Guitart

Testimonials

‘They are very professional and efficient, with in-depth knowledge of intellectual property law.’

ECIJA

At ECIJA, the intellectual property team employs its secure Virtual ECIJA meeting platform to provide a secure and legally enforceable virtual space to address the needs of its clients. Led by associate Monserrat Soto Roig, a specialist in IP legislation, it advises on the full range of issues, including regulatory matters, image rights, IP agreements, conflict resolution, trade marks, distinctive signs, copyright, patents, industrial models, interactive advertising and sponsorship. The team assists a mixture of companies on the regional and international level, across a diverse range of industries from sports, fashion and books to marketing services and music.

Practice head(s):

Monserrat Soto Roig

Testimonials

‘They have the ability to pick up on the most topical legal issues.’

‘The team has a high capacity for work and an awareness of current legal matters.’

Key clients

FifPro Commercial Enterprises

Fundes Digital

Agua Dulce

Mulleoni

Costa Rica Fashion Week (CRFW)

Panama Fashion Week (PTYFW)

Findasense

Work highlights

  • Assisted FifPro Commercial Enterprises with the filing of trade marks in Ecuador, Paraguay, Guatemala, Honduras, Panama and Chile in four classes.
  • Assisted Agua Dulce with the drafting of an agreement for the production of leisure wear.
  • Assisted Mulleoni with an IP assessment on its website as well as with the protection of its trade mark.

EY Law Central America

The intellectual property group at EY Law Central America provides a full range of services to a roster of regional and multinational clients. This includes advising on administrative procedures, handling infringement disputes and anti-counterfeiting litigation, protection of trade secrets, the registration, protection and enforcement of IP rights, portfolio maintenance, and unfair competition issues. The experienced team is led by manager Roxana Cordero Pereira, who specialises in trade mark and patent registration, and supported by managing partner and industry expert Hernán Pacheco, senior managers Alexander Salazar, who is a regulatory specialist, and Laura Ulate. The group represents clients from a variety of sectors, ranging from medical devices and manufacturing to pharmaceuticals and food.

Practice head(s):

Roxana Cordero Pereira

Key clients

Govan Project

Amacen Mauro

Work highlights

  • Advising Govan Project on all its intellectual property matters in Costa Rica.
  • Defending a well-known trade mark belonging to Almacen Mauro.

Lexincorp

Led by founding partner and former President of the Chamber of Commerce of Costa Rica Arnoldo André and 'excellent' IP director Gabriela Miranda, the team at Lexincorp advises on administrative, criminal, civil and precautionary measures to protect the intellectual property of clients. The group represents multinationals including Kimberly Clark, Europharma and Millicom, across such industries as pharmaceuticals, telecoms and consumer products. The group’s full service includes registrations and renewals, cancellations, oppositions and nullity actions.

Practice head(s):

Arnoldo André; Gabriela Miranda

Testimonials

‘Lexincorp stood out for the excellent quality of the legal services provided. Furthermore, the team members were always available to help, showing their engagement in clients’ matters. All the team members we dealt with were helpful and respectful, while maintaining a very professional attitude.’

‘Gabriela Miranda should be highlighted for the accuracy of her work, her commitment to clients’ requests and needs, the clarity of her explanations, and her availability and prompt responses to our requests – all of which are essential qualities in a good lawyer.’

‘The firm handles the registration of commercial trade marks in almost every country in Central America and they have good contacts with the other offices. The work of the Costa Rica team is excellent.’

‘Gabriela Miranda is excellent and her communication is quick and direct.’

Key clients

Tilleke & Gibbins

Kimberly Clark

Europharma

Millicom

Work highlights

  • Managing all of Kimberly Clark’s intellectual property requirements.
  • Managing all of Europharma’s intellectual property requirements.
  • Advising on all of Millicom’s intellectual property requirements.

Oller Abogados

The experienced intellectual property group at Oller Abogados takes a 'comprehensive approach' to advising regional and international clients on matters related to the registration and renewal of trade marks, patents and copyright. Anchored by senior partner and litigation practice director Ricardo Vargas Aguilar and associate Yaliam Jaime, the team's client roster includes multinationals such as Huawei Technologies, and spans a diverse range of sectors, including tech, automotive, real estate, aviation and energy. The team was strengthened in September 2021 with the arrival of experienced IP practitioner Luis Pal, who brings notable expertise in the banking and real estate sectors to the practice.

Practice head(s):

Ricardo Vargas; Yaliam Jaime

Testimonials

‘The Oller IP team understands our business entirely.’

‘They have a comprehensive approach. Yaliam Jaime stands out for his experience.’

Key clients

Huawei Technologies

Great Wall Motor Company

Cofra Holding

Compañía Panameña de Aviación (Copa Airlines)

Yuxta

Work highlights

  • Advised Huawei Technologies on the registration of several trade marks.
  • Assisted Compañía Panameña de Aviación (COPA) with the registration process of trade marks upon the opening of new companies.
  • Assisted Yuxta with the registration of its principal trade mark.