With a sizeable intellectual property team spread across the globe, Bird & Bird‘s presence in the Spanish market is undeniable, as it represents leading pharmaceutical and biotechnology companies as well as cutting edge R&D facilities in a range of matters. Apart from its focus on the life sciences sector, the team is also regularly sought by clients in tech-centric industries, acting for these in patent litigation, licensing, strategic expansions and the management of portfolios. Patent licensing specialist José Miguel Lissén and prosecution expert Mariano Santos spearhead these efforts, accompanied by Manuel Lobato and associate Maria Fernandez. Changes to the team include the departure of Teresa Mercadal in 2021, and the subsequent arrival of associate Marta Arteaga in February 2022, who joined from Baylos.
Intellectual property: patents in Spain
‘It is a very complete team, with very good professionals and extraordinary attention.’
‘Technical knowledge and specialisation. The quality of care and flexibility when taking on a new project.’
Dr. Reddy’s Laboratories
Reddy Pharma Iberia
- Advising ROVI on several contractual and strategic decisions regarding technology transfer agreements and manufacture and supply agreements.
The intellectual property team at Clifford Chance is recognised for its extensive cross-border patent litigation expertise, offering ‘real depth‘ when protecting a range of clients' assets. With a notable focus on the life sciences and healthcare sector, the firm’s client portfolio features a mix of domestic and international clients from the consumer goods, retail, biotechnology, media, pharmaceutical and telecoms industries. As a ‘star player‘ in the market, Miquel Montañá leads the team’s efforts in Barcelona, working alongside the ‘extremely knowledgeable‘ Josep Montefusco, who acts as the co-head of the firm’s tech practice, and associate Adrián Crespo, noted for his ‘great analytical mind‘.
‘They have the best patent litigation lawyer in Spain, which is Miquel Montañá. The technical level of the people that make up the team is excellent, as is their knowledge of the pharmaceutical sector.’
‘They are simply the best Spanish IP litigators, both in counselling and in representation before court.’
‘Miquel Montañá has an incredibly sharp mind, is very experienced and is a great fighter for his client’s interests in court. Couldn’t wish for a better lawyer.’
‘Josep Montefusco is extremely knowledgeable in patent matters and an excellent counsellor for all Spanish IP matters.‘
‘Adrián Crespo is a great analytical mind with excellent knowledge of both English and German.’
‘Miquel Montañá is a star player in Spain. His depth of knowledge of IP law is unrivalled. He is creative, practical and very client friendly.’
‘The team has real depth to its subject matter expertise – i.e. skilled legal professionals who are also completely on top of the business sector. They also work in partnership with the in-house team and understand the commercial realities of any given situation.’
‘Josep Montefusco is an outstanding patent lawyer and patent litigator. Fernando Cerdà Belda, under the tutelage of Josep, looks like a rising star within the patents team.’
F. Hoffman-La Roche
Love Digital Factory
- Representing a provider of genomic-based diagnostic tests for cancer in patent infringement proceedings against competing entities accused of patent infringement.
- Representing Illumina in patent infringement proceedings regarding two patents.
- Representing Nokia in multi-jurisdictional patent enforcement proceedings brought in Europe against two major Chinese mobile manufacturers in relation to telecoms patents.
Considered a ‘benchmark in the sector‘, boutique firm Grau & Angulo excels in a range of IP issues, demonstrating market-leading expertise in relation to injunction proceedings, patent infringement and counterclaims. Apart from a particular focus on pharmaceutical patents, the firm also acts for notable clients in the fashion, automotive, entertainment, telecoms, and food and beverage industries, having seen an increase in electronic and IT patent litigation in recent years. The leadership team includes the Barcelona-based Javier Huarte, one of the ‘best patent attorneys for manufacturers and marketers of generic drugs‘, Alejandro Angulo and Madrid-based partner Jesús Arribas. Recently promoted Ignacio Pontijas supports the team in Madrid, specialising in patent litigation in the life sciences space.
Other key lawyers:
Ignacio Pontijas; Laura Morales; Ignacio Marqués
‘They are very innovative from a strategic point of view, focusing and analysing each case independently.’
‘Without a doubt, they are excellent in terms of detail. Javier Huarte and Ignacio Pontijas are the best patent attorneys for manufacturers and marketers of generic drugs. Javier Huarte has the ability to make the complex easy before the judge. For his part, Ignacio Pontijas, in addition to an extraordinary legal knowledge, has an unusual technical capacity (chemical-pharmaceutical knowledge) in a lawyer’s profile, which translates into a successful strategic approach in most cases.’
‘IP Boutique with a team of lawyers versed in all areas of IP law. Experience in cross-border measures, best in Spain.’
‘Ignacio Marqués and Laura Morales are personable, hard working, persevering.’
‘The Grau & Angulo team’s in-depth knowledge of pharmaceutical patent issues makes it a benchmark in the sector.’
‘Javier Huarte has mastery of patent law and applicable novelties. Always oriented to the business of its clients. Ignacio Pontijas is a thorough and technically very strong lawyer. His seriousness and the depth with which he studies the issues makes clients more than calm knowing that our affairs are in his hands.’
‘Javier Huarte is very diligent, knowledgeable, kind, responsive, and efficient.’
‘Ignacio Marqués is notable for his clear and concise approaches, as well as his technical and legal skills.’
Two Way Media
Fin Control Systems Pty
- Successfully defended Teva against Bayer in preliminary injunction proceedings for alleged patent infringement.
- Representing TWM in patent infringement actions against global telecoms giant Telefónica Group for exploitation of its Movistar + TV service.
- Representing Xiaomi in a case which tackled the infringement of essential patents and FRAND issues related to competition law.
Gómez-Acebo & Pombo‘s intellectual property team continues to consolidate its standing as a leader in the field, distinguished by its ‘excellent knowledge‘ and strong focus on patent litigation in technology-heavy sectors, including the life sciences and telecoms industries. Co-led by biotechnology and plant variety expert Jesús Muñoz-Delgado and litigation specialist Sofía Martínez-Almeida, the practice’s expertise also extends to the protection, commercialisation and licensing of patents. Among its key clients, the team acts for the likes of Acciona, Hermes and Carrefour, and held its first event in the metaverse in 2021. Gonzalo Ulloa is another key contact for litigation.
Other key lawyers:
‘Technical quality and rigour of the team of professionals who assist in the matters, where they stand out.’
‘Excellent knowledge of the subject in the sector, both by the partners and by the associates.’
Bodegas Emilio Moro
Jaguar Land Rover
Master Franchise Salvaje LTD.
Ampere Power Energy
- Provides ongoing advice to Nintendo regarding intellectual property matters in Spain and at an EMEA level.
- Advising Giorgio Armani with regard to trade mark matters in Spain, including global advice on the enforcement of its trade mark rights.
- Representing Interporc and Provacuno against Foods for Tomorrow regarding misleading advertisement.
HOYNG ROKH MONEGIER
A benchmark firm for cross-border patent litigation, HOYNG ROKH MONEGIER is often retained by major clients from the life sciences, electronics and telecoms sectors, including in European IP litigation, a capability that is facilitated by it fostering of strategic alliances with firms in other jurisdictions. Managing partner Luis Fernández Novoa leads the practice, with extensive experience in IP matters, representing the likes of Siemens Gamesa and Philips in patent infringement proceedings. Also noted is Álvaro Velázquez, who showcases broad expertise in proceedings involving patents, trade marks, unfair competition, designs and copyright. Counsel Laura Cantero is another notable practitioner, specialised in multi-jurisdictional patent litigation with a pharmaceutical or biotechnology element.
Ceva Santé Animale
Seiko Epson Corporation
- Representing Siemens Gamesa in its patent matters in Spain, inclusion large-scale, cross-border patent litigation.
- Representing Philips in disputes over its UMTS and LTE essential and non-essential patents, including litigation cases against Oppo and Xiaomi.
- Representing Huawei in patent matters in Spain, including complex litigation cases against Coring Optical Communications and TOT Power Control.
The IP and unfair competition practice at Uría Menéndez is active in a range of advisory and contentious matters, covering patent infringements, revocation actions, market strategies, nullity proceedings and third-party patent rights. The practice covers the chemical, pharmaceutical, biotechnological, sanitary, cosmetic and general consumer goods sectors. Montiano Monteagudo and Ingrid Pi share leadership of the team, heading the practice from Barcelona and Madrid, respectively. Monteagudo has a particular focus on the healthcare and life sciences sector, while Pi, noted for having ‘sound knowledge‘ of relevant matters, is regularly involved in patent litigation applicable to the life sciences and plant patent space. In December 2021, José Massaguer retired from the firm.
Other key lawyers:
‘The IP team has vast and thorough knowledge of the legal framework regarding intellectual property and beyond. They encourage direct close collaboration with the client in order to approach every particular case in detail. Several kinds of technologies are employed: electronic communications, cloud services and many state-of-the-art resources that maximise success.’
‘Ingrid Pi and Marcos Fraile have sound knowledge of the matter at hand in terms of legal framework and applicable sector specific regulations. Outstanding support and engagement with the client.’
Nador Cott Protection
The litigation and IP practice at Eversheds Sutherland benefits from an extensive global network, sourcing expertise from various international offices to advise clients in the pharmaceutical sector on a variety of high-value patent disputes. Apart from its experience acting for national and multinational pharma clients, the firm has recently expanded into the industrial engineering and retail industries, providing contentious and non-contentious advice to major companies. The Madrid-based team is led by Kiko Carrión, whose practice focuses on dispute resolution in the health and life sciences sector, alongside José Mariano Cruz and Marta González. Other notable practitioners include legal director Inmaculada López and Eduardo Buitrón, a key contact from the senior associate ranks.
‘Teamwork. Deep knowledge of the topics of the sector. Excellent communication.’
Athlon Car Lease Spain
With a multidisciplinary approach considered ‘tremendously efficient and effective‘ at the forefront of its offering, the industrial and intellectual property team at Garrigues counts domestic and international corporates among its main clients. Its expertise extends to patent drafting, filing, prosecution, transfer pricing and exploitation agreements. Recently, the practice has also seen growth in the audiovisual, life sciences, software, automotive and fashion industries. Madrid-based partner Carolina Pina and the Lisbon-based João Miranda de Sousa co-head the practice, combining experience in arbitration and complex IP transactions, as well as pan-EU infringement actions. In Bilbao, Mónica Arizti is a standout with ‘great knowledge‘, acting as head of the firm’s technical patent department.
Other key lawyers:
‘They are tremendously efficient and effective. They make the client feel like a VIP client. They have quick responses and adapt to the client’s times.’
‘Mónica Arizti has great knowledge, dedication to issues, but especially closeness and accessibility. Monica makes decisions about IP, also thinking about the profitability of the company and the business development model of the company.’
‘Combination of lawyers and engineers. High scientific and technological knowledge.’
‘Methodical and decisive. They generate high confidence. Their blog Garrigues IP stands out for its freshness and ability to update on patents and industrial property.’
‘They are very professional and the work they do is of high quality.’
‘Total availability and relationship of trust.’
‘Garrigues has incorporated electronic invoicing and data protection systems.’
Club De Variedades Vegetales
Asociación Española Contra el Cancer
- Representing TOT against Huawei for patent infringement relating to a complex 3G technology.
The IP practice at Baylos places its focus on three main pillars encompassing transactions, disputes and strategy, attracting clients from the pharmaceutical, biotechnology, automotive and medical devices sectors. David Gómez, who is used to representing national and international clients in a range of intellectual property matters, leads the practice from Madrid, working alongside patent specialist Pedro Merino Baylos and experienced litigator Juan Luis Gracia.
- Advised Lidl Supermercados in preparing a defence against a complaint in relation to the invalidity counterattack of Vorwerk’s patent.
With a notable intellectual property and digital business offering, CMS Albiñana y Suárez de Lezo exhibits particular expertise in contentious matters surrounding patent and utility model infringements. Among its key clients, the firm is often retained by companies in the healthcare and life sciences sectors, acting for these in e-health, regulatory and advertising matters. The Madrid-based team features María González Gordon at the helm, a seasoned practitioner specialised in dispute resolution in this field. Senior associate Ricardo Gómez-Barreda supports these efforts, acting in a range contentious and non-contentious matters. In November 2021, the firm saw the arrival of counsel Jaime Bello from Gómez-Acebo & Pombo, joining after Sofia Ramos, who left Telefónica to join the firm in September 2021.
Eli Lilly and Company
Closure Systems International
Phi 4 Technology
- Providing ongoing advice to CBRE on the protection of all its intangible assets, including on the filing of a range of trade marks, patents, copyrights and trade secrets assessment.
- Advising Sygenta on its anti-counterfeiting activity, particularly in customs proceedings, where the firm acts as its representative before the Spanish customs authorities.
- Advising Chargy Technologies in relation to a claim filed against its former in-house technology team regarding patent and trade mark infringement, unfair competition and trade secrets protection matters.
Deloitte Legal‘s IP and IT law department is characterised by a multidisciplinary team supported by 13 local offices, offering a broad range of services including in relation to the exploitation of IP rights, legal proceedings concerning the validity and infringement of IP rights (IPRs), the drafting of license agreements, and tax and transfer pricing issues; the practice showcases a further focus in the manufacturing and media sectors. Dulce Miranda, who provides ‘great added value‘, leads the practice from Madrid, spearheading the firm’s representation of clients in the health and life sciences industry. TMT expert Raúl Rubio, an arrival from Baker McKenzie in September 2021, departed the firm in January 2023 to join Pérez-Llorca.
‘The Deloitte legal team has a global vision of contracts with the collaborators, and they know the different implications.’
‘Dulce Miranda is a great added value, because she knows the client’s procedures, needs, knows the way the committees work and adapts perfectly to it and to the established times. She does a commendable job.’
El Corte Ingles
Comite Paralimpico Español
- Assisted the Biotechnology Institute in a legal proceeding in relation to infringement of its IP rights over certain technology.
Elzaburu‘s patent department is linked with the firm’s litigation, legal and business, and anti-counterfeiting and anti-piracy offerings, making up a multidisciplinary practice acting in patent litigation, patent infringement matters, preliminary injunctions, anti-piracy, third-party oppositions, unfair competition and patentability analysis. Based in Madrid, the team is jointly led by Patricia Salama, Antonio Castán and Javier Fernández-Lasquetty, with the practice retained by the likes of Airbus and Xiaomi and other clients in the telecoms, tech, retail and pharmaceutical sectors. The three-partner leadership team is accompanied by litigation specialist Enrique Armijo Chávarri and associate María Cadarso, noted for patent enforcement.
‘Professionalism, knowledge of the company, availability, exquisite attention. Elzaburu is a multidisciplinary office which helps the client find the advice they need.’
‘Professionalism, commitment, availability.’
Spanish National Cancer Research Centre
Universidad Politécnica De Madrid
- Represented Xiaomi in a patent infringement action brought by Tot, later dismissed by the court.
- Advised telephone companies on a total of 30 cases handled before the Barcelona Commercial Courts.
- Advising NTT Data Spain in assessing the current IP and trade secret management model.
PONS IP‘s patents, technological development and innovation department covers litigation procedures in relation to trade marks, patents, utility models, industrial designs, trade secrets, unfair competition and unfair advertising. With collective expertise in national, European and international patent registration sourced from a network of nine main offices, the firm advises notable clients in the apparel, telecoms, life sciences, pharmaceuticals, automotive and media industries. Patricia Ramos leads the practice from Madrid. Jean Devaureix left the firm in November 2022.
‘The team is very professional and very attentive to the client’s needs. Fast and good responses.’
Universitat Politécnica de Valencia
Universidad de Sevilla
Universidad de Salamanca
Consejo Superior de Investigaciones Científicas
Universidad de Zaragoza
Instituto de Microelectrónica de Sevilla-Csic
- Assisted Acciona Energía with the drafting and registration of a patent application for a new bacterium consortium useful for bioremediation of soils contaminated with biphenyl and diphenyl oxide.
- Assisted Sanifit Therapeutics in the sale of its IP portfolio to Swiss pharmaceutical company Vifor Pharma.
- Assisting Abiopep, a spin-off of the Plant Pathology group at CSIC, on the drafting and prosecution of patents for three inventions relating to methods for the detection and diagnosis of plant viruses.
The intellectual property and technology practice at Pérez-Llorca combines expertise in patent litigation and transactional matters, defending the rights of clients with regard to a range of intangible assets. Such matters include patents and trade secrets, advertising, trade marks and software infrastructures. With 2021 arrival Eduardo Castillo at the helm, the team represents multinational technology, pharmaceutical, life sciences and entertainment clients. Further changes to the team included the arrival of infringement specialist counsel Álvaro de Castro in September 2021, and litigation expert Rais Amils in 2022. Raúl Rubio constitutes another significant addition to the team, joining in January 2023 from Deloitte Legal.
- Advised MGI on an ongoing patent litigation against the market leader in next-generation sequencing.
- Advised General Dynamics on all its IP matters.
The intellectual and industrial property and trade secrets practice at Cuatrecasas draws from a network of international offices to advise on the protection of inventions and designs as well as court proceedings surrounding the validity and ownership of patents; a further area of expertise for the team is technology transfer agreements, with a focus on the pharmaceuticals sector. With Albert Agustinoy acting as head of the broader practice and Álvaro Bourkaib leading the Madrid-based team, the firm’s client portfolio consists of domestic and international clients in the digital economies, life sciences, food and beverages, manufacturing, automotive and gaming industries.
Spanish State Lotteries
Spanish State Lotteries
- Represented Sener in patent infringement proceedings and in a counter claim requesting the nullity of the plaintiff’s patents for a sun power system.
- Advised Dragados on a joint patent ownership agreement for an offshore wind energy generation system.
- Advised Iberdrola on industrial property issues (patents, I+D+i).
The result of the merger between Jacobacci and Abril Abogados, finalised in January 2022, Jacobacci Abril is often sought by multinational corporations to advise on third-party patent rights, infringement proceedings, market strategies and IP rights transactions. IP litigation specialist Ignacio Temiño leads the practice from Madrid, acting as co-head of the firm’s offering alongside Salvador Diaz, who is based in Valencia and has expertise in trade mark prosecution, strategy protection, technology transfers and patents agreements.
University Of Valencia
University Of Alicante
- Acted for Inneo Torres in patent enforcement against Nordex.
- Assisting in a transaction of a new R&D agreement and licensing contract in solar technology between Tewer and Acciona Renewables.