Intellectual property in Puerto Rico

Ferraiuoli LLC

With a 13-strong group of seasoned patent, trade mark and copyright professionals, Ferraiuoli LLC's IP and technology department has established a strong position in the Puerto Rican market. With 'absolute command of intellectual property' and an ever-increasing pool of clients not only from Puerto Rico but also the US, the team - led by well-regarded partner Eugenio Torres - assists healthcare, energy, entertainment and telecoms companies in cases of breach of contract, damages, publicity rights and patents. Jean Vidal co-ordinates the patent infringement litigation practice and the IP transactional practice. In recent highlights, Torres and Vidal co-led on matters of patent invalidity and declaratory actions. Victor Rodriguez and associate Rafael Rodriguez are also names to note.

Practice head(s):

Eugenio Torres

Testimonials

‘Always approachable with a very good attitude, respectful and friendly.’

Absolute command of intellectual property.

Key clients

Supermercados Econo

Banco Popular de Puerto Rico

Badillo Saatchi & Saatchi

De la Cruz & Associates

The Coca-Cola Company

Diageo

Toledo & Co.

Editorial Televisa

Triple-S Management

GFR Media

Work highlights

  • Successfully negotiated various trade mark infringement cases for ElMarket concerning unauthorised uses of similar marks to the “Lote 23” trade mark.
  • Acts as managing attorney for all corporate, tax, regulatory, and IP matters of Supermercados Econo.
  • Acting as lead counsel for a client in a copyright infringement case in the District of Puerto Rico.
  • Acts as lead counsel for various trade mark oppositions filed by Bimbo Cookies against client Advanced Total Marketing Systems.

McConnell Valdés LLC

McConnell Valdés LLC has one of the most comprehensive IP practices in Puerto Rico; the team acts in cross-border copyright infringement cases, counterfeiting and false advertisement claims on behalf of clients before federal and state courts. Practice head Dora Peñagarícano has developed strong expertise in issues such as the right of publicity, false advertising and seizure orders, while co-head Roberto Quiñones-Rivera's practice focuses on patent and domain name matters. Significant successes for the team include the representation of artists and record companies in copyright infringement actions, and obtaining withdrawal of an artificial sweetener product on the basis of trade dress arguments.

Pietrantoni Méndez & Alvarez LLP

The IP team at Pietrantoni Méndez & Alvarez LLP assists companies with a combination of contentious and non-contentious work relating to the full range of local and federal IP rights. Out-of-court advice involves anti-infringement campaigns, investigations and seizures of illegal copies of protected products, but the department has litigation at its core, where it handles a wide variety of trade mark and copyright infringement matters. Trade mark prosecution, litigation and arbitration are specialisms of María Trelles-Hernández, who is often involved in complex claims. Edwin Cruz and Karina Camacho-Ojeda are also active and recognised in the space.

Hoglund & Pamias PSC

Representing small to mid-sized firms, entrepreneurs and investors across the globe, Hoglund & Pamias PSC is a renowned IP boutique. Among the team's clients are entertainment companies and educational institutions that seek assistance in trade mark, false advertising, distribution and unfair competition disputes, as well as registration, protection, enforcement and trade mark transfers in Puerto Rico, the US and worldwide. Samuel Pamias is the managing partner and collaborates with patentability and freedom to operate-expert Roberto Rios, who directs the patent division.

Practice head(s):

Samuel Pamias

O'Neill & Borges

Some of O'Neill & Borges' top-class litigators are also experts in IP issues. A key practitioner in this field is Carla García-Benítez, a successful civil litigator who has broad experience in trade marks. Beyond trade marks, the firm is also equipped to advise clients across a wide range of sectors on licence agreements and IP infringement.

Sifre Group

The Sifre Group is a boutique dedicated to the entertainment sector. Clients include major, global media companies, studios and film producers that turn to the team for IP advice, as well as legal services concerning business transactions, taxes and government relations. Antonio Sifre heads the team: his areas of strength include IP protection and licences, rights of publicity, talent agreements and music rights. Maritere Ysern is another key contact.

Practice head(s):

Antonio Sifre

Antonetti Montalvo & Ramírez-Coll

Incorporating trade marks and copyrights, as well as trade secrets and patent law, Antonetti Montalvo & Ramírez-Coll balances a broad IP practice. The team has represented clients in commercial and labour-based trade mark disputes and represented both plaintiffs and defendants. Litigation is at the core of José Ramírez-Coll's practice. José Feliciano-Boada is a US licensed patent and trade mark attorney and has been at the firm since June 2019.

Goldman Antonetti & Córdova

Goldman Antonetti & Córdova's IP team is experienced in both Puerto Rico and US copyright and trade mark law and often acts for clients in disputes; a large number of the lawyers in this department also belong to the firm's litigation group. In this field, trade mark, copyright and patent infringement, as well as trade secret disputes, are the main focus areas. Cross-border work also features. Rossell Barrios, an expert in contentious IP and franchise matters, is a name to note in the multi-disciplinary team.

Toro Colón Mullet, P.S.C.

Trade mark applications and litigation, franchising and distribution are among the areas of strength for the IP department at Toro Colón Mullet, P.S.C.. Principal Analynn López-Córdova is a member of the group and deals with music rights for movies, TV and advertising purposes as well as the right of publicity and entertainment industry transactions; her colleague special counsel Jane Patricia Van Kirk-Ransopher covers trade mark registration and infringement. Thanks to external collaborations, the firm also covers patent registration.