Intellectual property: patents in Spain

Bird & Bird

Bird & Bird further strengthened its Madrid office's patent expertise with the hire of litigation and licensing specialist Jose Miguel Lissen in mid-2020. He joins an established team with a strong litigation focus and an impressive international client base in pharmaceuticals, communications and technology, which also benefits from the firm's in-house patent valuation and analysis system, Pattern. Manuel Lobato is an experienced patents and trade secrets practitioner in the life sciences and technology sectors, and Antonio Cueto is an expert litigator. Mariano Santos specialises in internet and IT issues, and Teresa Mercadal is a name to note at the senior associate level.

Practice head(s):

Manuel Lobato; José Miguel Lissén; Antonio Cueto; Mariano Santos

Other key lawyers:

Teresa Mercadal

Testimonials

‘Industry knowledge. Excellence in representing the interests of its clients. Speed. Absolute knowledge of the law.’

‘Manuel Lobato is an authority in the sector. We know we are in good hands when we entrust a matter to you. José Miguel Lissén is a great professional who puts himself in the client’s shoes and attends to their needs as if they were his own.’

‘Extensive experience in industrial property. Full availability. Trust. Advantages of having an international network of offices also specialised in IP. It is undoubtedly one of the most important IP firms.’

‘Full dedication and fluid communication with the client. The work is done with great quality.’

Key clients

InsudPharma (formerly, Chemo Group)

General Equipment for Medical Imaging

Fractus

Crosscall

Canaan Research & Investment

ROVI

Work highlights

  • Defending General Equipment for Medical Imaging in a patent dispute.
  • Advising Fractus on the terms and conditions of the agreements it enters into with certain third parties involving the licensing of IP rights.
  • Representing Crosscall in an ongoing negotiation to obtain a non-exclusive, worldwide license to a portfolio of allegedly standard-essential patents managed by Teletry International.

Clifford Chance

Clifford Chance's Barcelona-based patent team handles the full range of patent-related disputes, including cross-border litigation and arbitration, regional enforcement programmes and licensing. The team has particular strength in patent enforcement for healthcare and life sciences clients, acting for major multinationals in these sectors, as well as household name technology and communications companies such as Nokia. The highly experienced Miquel Montañá leads the team, with an excellent record in cross-border patent disputes, alongside Josep Montefusco, who is strong in both advisory and contentious work. Counsel Isabel Carulla is experienced in multi-jurisdictional patent disputes.

Practice head(s):

Miquel Montañá; Josep Montefusco

Other key lawyers:

Isabel Carulla; Manel Santilari

Testimonials

‘Extreme strength in depth. As one of the world’s largest firms they will always have someone who is expert in a particular area.’

‘I work with Miquel Montana, Isabel Carulla and Manel Santilari. All are excellent lawyers with an in depth knowledge of Spanish patent law and good contacts in (and understanding of) the local legal ecosystem.

‘They are the best team in Spain led by the unrivalled Miquel Montana.’

‘Miquel Montana is the best there is.’

‘They are simply the best Spanish IP litigators, both in counselling and in representation before court. Qualitatively, they are the best.’

‘Josep Monetfusco is very good.’

‘Miquel is an incredibly sharp mind, very experienced, and a great fighter for his client’s interests in court. You could not wish for a better lawyer.’

Key clients

Bayer

Novartis

Ucb Pharma

Astrazeneca

Sanofi

Bial-portela

Merck, Sharp & Dohme

Vivo Communication Technology

F. Hoffman-la Roche

Glaxosmithkline

Pfizer

Janssen

Amgen

Eli Lilly

Samsung

Genomics Health

Nuu Mobile

Henkel

Unilever

Illumina Inc.

Edwards Lifesciences Ltd.

Nokia

Work highlights

  • Represented GlaxoSmithKline in patent infringement proceedings initiated against a Spanish generic company enforcing a patent that protects an anti-inflammatory drug.
  • Advised Portuguese pharmaceutical company Bial-Portela in revocation proceedings brought by two generic companies against a patent protecting an epileptic drug.
  • Represented Belgian pharmaceutical company UCB Pharma in patent revocation and infringement proceedings over a drug to treat epileptic seizures.

Grau & Angulo

Barcelona-based boutique Grau & Angulo specialises in patent litigation, including enforcement proceedings and defence in a range of sectors, with recent instructions coming from clients in the pharmaceuticals, telecoms and renewable energy industries. Notable clients include multinational pharmaceutical companies, and other high-profile names including Nestlé. The sizeable and highly regarded team includes pan-EU litigation specialist Alejandro Angulo, life sciences expert Javier Huarte, and the versatile Madrid-based Jesús Arribas. Senior associate Ignacio Pontijas is noted for his role in major drug brand litigation, while Ignacio Marqués is also recommended for cross-border work.

Practice head(s):

Alejandro Angulo; Javier Huarte

Other key lawyers:

Jesús Arribas; Ignacio Pontijas; Ignacio Marqués

Key clients

Mylan

Nestlé

Grifols

Accord Healthcare

Sandoz

Teva

Neuraxpharm

Insudpharma

Aurobindo

Aristo Pharma

Cinfa

Two Way Media

Ulma

Work highlights

  • Acting for Nestlé in patent enforcement proceedings.
  • Acting for Mylan in successfully opposing a preliminary injunction request for alleged patent infringement.
  • Representing Two Way Media against Telefónica Group in a highly complex case related to live streaming of audio and/or video information over communications networks.

Gómez-Acebo & Pombo

Gómez-Acebo & Pombo balances a varied workload of patent protection, commercialisation and licensing matters. In patent litigation, the firm is particularly strong on standard essential patents and Fair, Reasonable and Non-Discriminatory (FRAND) licensing litigation. Clients come from all areas of technology, life sciences and telecoms, including major international names such as T-Mobile. Gonzalo Ulloa a highly experienced litigator, while Jesús Muñoz-Delgado specialises in the protection, technology transfer and enforcement of rights. Eduardo Castillo and Álvaro de Castro left the firm in September 2021.

Other key lawyers:

Gonzalo Ulloa; Jesús Muñoz-Delgado

Testimonials

‘Top tier Spanish patents team, very high quality, clear and concise advice delivered in a timely manner.’

‘Proactive understanding of our point of view. Anticipating the scenarios. Creativity with regard to sources of information. Knowledge of similar cases.’

Key clients

Bristol-Myers Squibb

San Lucar Group

Eisai Europe

Mundipharma

The Regents of the University of California (California Riverside)

Royalty Pharma

Eurosemillas

Kaneka

T-Mobile

Coexpan

Work highlights

  • Represented Mundipharma Pharmaceuticals in the Spanish part of a pan-European patent litigation against a number of leading global generic drug companies regarding its blockbuster opioid medicine.
  • Represented a client in international arbitration proceedings related to plant breeder rights and the termination of a Custom Growing Agreement.
  • Representing Royalty Pharma Collection Trust in the Spanish part of five contentious-administrative proceedings concerning SPCs, including a landmark case that was referred to the CJEU.

HOYNG ROKH MONEGIER

HOYNG ROKH MONEGIER's Madrid office has a particular focus on pan-European litigation, utilising its network of offices across the continent. Its main sector focuses are life sciences, electronics and telecoms, where it acts for major domestic and international clients. Practice head Luis Fernández-Novoa specialises in patent litigation before commercial, criminal and administrative courts, as well as international arbitration, as does Alvaro Velasquez, who also has experience in contracts. José Antonio Sanmartín is a versatile litigator, and counsel Laura Cantero is regularly involved in major proceedings, with a notable specialism in the biotech sector.

Practice head(s):

Luis Fernández-Novoa

Other key lawyers:

Álvaro Velázquez; Laura Cantero; Jose Antonio Sanmartín

Key clients

BPW

Ceva

Ferring

Fractus

Gamesa

Essity

Huawei

Illumina

Intervet

Janssen (Johnson & Johnson)

Merck Sharp & Dohme (MSD)

Philips

Sanofi

Seiko Epson Corporation

Silvalac

SPG Prints BV

Stübben GmbH

Work highlights

  • Representing the veterinary pharma group CEVA in Spain in large-scale cross-border patent litigation (infringement and invalidity, plus preliminary relief proceedings) against BAYER.
  • Representing HUAWEI in complex litigation brought by Spanish company TOT Power Control for patent and know-how infringement, unfair competition and breach of contract.
  • Representing Fractus in patent litigation matters in Spain, mainly in relation to smartphones and tablets sold by European and Chinese companies.

Uría Menéndez

Uría Menéndez advises across the range of patent matters, including advisory, licensing, M&A-related matters and disputes. The firm has broad sector coverage in chemicals, pharmaceuticals, biotech, sanitary, cosmetics, agriculture and general consumer goods, with particularly notable international clients in life sciences. Madrid-based practice head José Massaguer handles patent disputes and unfair competition proceedings, with strength in pharmaceuticals and electronics. Barcelona's Montiano Monteagudo has a primarily advisory practice, working with national and multinational companies, while Ingrid Pi i Amorós has broad patent litigation experience in the life sciences sector, with niche expertise in plant patents.

Practice head(s):

José Massaguer 

Other key lawyers:

Montiano Monteagudo; Ingrid Pi i Amorós 

Key clients

Sanofi

Gilead Sciences, Inc

Telefónica, S.A

Amazon

Primark

Work highlights

  • Provided litigation advice to Sanofi in proceedings for the infringement of a patent concerning a medical device brought against a US laboratory, including PI and nullity proceedings.
  • Advising Gilead on litigation strategy in connection with potential infringement claims and revocation proceedings. The medicine concerned is a revolutionary treatment for a serious condition.
  • Advising Telefonica on pre-litigation matters concerning patent infringement in pay TV services, including its defence and a patent revocation action.

Abril Abogados, SL

Boutique firm Abril Abogados, SL has expanded its share of work in the education and life sciences sectors, adding to its existing specialisms in manufacturing, energy and consumer goods. The team handles advisory and contentious patent work for prominent domestic clients, including patent agreements, litigation and enforcement. The practice is overseen in Madrid by Ignacio Temiño Ceniceros, a highly experienced patent litigator, and Carlos González, who has strong multi-jurisdictional expertise, particularly in Latin America. Valencia-based partner Salvador Diaz specialises in patent agreements.

Practice head(s):

Ignacio Temiño; Carlos Gonzalez; Salvador Diaz

Key clients

Csic

Inneo Torres

Bioinicia

Irobot (Roomba)

Inst. Salud Carlos Iii

University Of Valencia

University Of Alicante

Agfa

Faurecia

Hospital De La Princesa

Work highlights

  • Advised on the enforcement of two European patents for Faurecia against a European competitor, regarding the manufacturing of automotive parts for one of the automobile market leaders.
  • Advised Bionicia on the preparation of strategy for the company’s licensing policy regarding patent and trade secret rights in the life sciences sector.
  • Advising Hospital la Princesa on an R&D project (protection, contracts and defence) for a new treatment against Covid-19.

Elzaburu

Elzaburu has a full-service patent offering, covering prosecution, litigation and transactional support. Clients include multinationals in several sectors, most notably technology and engineering, as well as a number of domestic life sciences companies. The team is overseen by litigation head Antonio Castán, biotech and social network-focused Javier Fernández-LasquettyFrancisco Javier Sáez, who leads the patent prosecution department, and Juan José Caselles, who is the head of the firm's anti-counterfeiting team and an experienced litigator.

Practice head(s):

Francisco Javier Sáez; Antonio Castán; Javier Fernández-Lasquetty; Juan José Caselles

Key clients

Acciona Infraestructuras

Airbus

Fundación Botín

Laboratorios Farmacéuticos Rovi

Medac Gmbh

Spanish National Cancer Research Centre (Cnio)

Seat

Work highlights

  • Representing a shopping cart technology company in unfair competition proceedings.
  • Defending a genetic research business group against a criminal complaint filed by a competing company against several individuals and companies for alleged violation of personal secrets, violation of business secrets and crimes against public health.
  • Monitors and polices the patent portfolios of several well-known international clients.

Eversheds Sutherland Nicea

Eversheds Sutherland Nicea is best known in the pharmaceutical sector for handling complex and high-value patent disputes for national and multinational high-profile pharmaceutical and chemicals clients. The firm has also recently grown its presence and expertise in the engineering and retail sectors, and regularly provides commercial IP advice relating to licensing and technology transfers. The firm's wider international network allows it to act in multi-jurisdictional cases for a range of clients. The team is led by Kiko Carrión, an expert in the health, transportation and music sectors, and José Mariano Cruz, a specialist in IP, biotech and life sciences. Senior associate Marta González is also praised for her pharmaceutical sector expertise.

Practice head(s):

Kiko Carrión; José Mariano Cruz

Other key lawyers:

Marta González

Testimonials

This team presents an excellent combination between solid technical knowledge and a deep knowledge of the sector. In addition, it stands out for its availability and client service.’

Kiko Carrión is an outstanding lawyer. He brings together all the attributes of a trusted lawyer: technical solidity, business knowledge, customer service and human quality.’

Key clients

Sernauto

Athlon

KERING GROUP

Yokohama

Avis Budget

Room Mate

Tyco Fire Security

CEFI Foundation

Work highlights

  • Working with CEFI Foundation as part of its editorial board, regularly producing articles on IP issues.
  • Advising Kering Group on several contentious and non-contentious matters relating to the protection of IP rights, including licensing, opposition proceedings before Registration Offices and general advice on litigation or pre-litigation matters.

Garrigues

Garrigues's Madrid-based team combines strong litigation capabilities in the technology sector with a well-established patent prosecution offering for life sciences and AI clients. Alongside this, the firm also advises major domestic and international names in retail and sports, among other sectors. The team is led by Carolina Pina, who has notable sports expertise and is active in arbitration and complex IP transactions, alongside João Miranda de Sousa, who divides his time between Madrid and Lisbon and has extensive experience in complex pan-EU infringement actions.

Practice head(s):

Joao Miranda de Sousa; Carolina Pina

Other key lawyers:

Mónica Arizti Acha

Testimonials

‘The IP (patents) team is the best patents team I have had the opportunity to work with in Spain. They are excellent from a technical point of view, creative, and result and client oriented.’

The team at Garrigues specialises in finding the arguments that allow the examiners in each country to approve the patent application. The network of collaborators of Garrigues in each country is highly qualified and effective.

The partner at Garrigues with whom we work, Mónica Arizti, is a very qualified person, with great knowledge of patents in our sector. Very effective in her work and rapid in its execution.’

‘What I personally like about the Garrigues patent department is the creative profile of its team. They have engineers, biologists, and designers who make technical discussions easier. They are decisive.’

Key clients

Club De Variedades Vegetales

Fractus

Talladium

Carrefour

Hero Ag

Riverside

Asociación Española Contra El Cancer

Overture Life

Grupo Cobra

Telefónica

Crown Food

Cosentino

Histocell

Work highlights

  • Representing Club de Variedades Vegetales in all proceedings against infringers of community plant variety rights.
  • Representing Talladium Group in a patent infringement and validity action brought by Universal Ball Head.
  • Advised private equity firm Riverside on its investment in the Spanish pharmaceutical ingredients manufacturer HealthTech Bioactives, a carve-out of Ferrer. The deal included the IP related to the manufacturing of Vitamin B12 derivatives.

Hogan Lovells International LLP

Overseen by Madrid and Alicante office heads Burkhart Goebel and Imogen FowlerHogan Lovells International LLP focuses on patent litigation, particularly multi-jurisdictional proceedings. The Alicante office has a dedicated EU team, which works closely with the European Union Intellectual Property Office (EUIPO). Clients include major names in retail and other consumer industries, and the team stands out for its strength in telecoms and life sciences. Ana Castedo represents international and Spanish companies before the Spanish commercial courts on all contentious IP matters, while Inmaculada Lorenzo, who was promoted to partner in January 2021, focuses on IP litigation, particularly concerning patents, trade marks and unfair competition.

Practice head(s):

Burkhart Goebel; Imogen Fowler

Other key lawyers:

Ana Castedo; Inmaculada Lorenzo

Testimonials

‘I would say that the team made up of Ana Castedo and Inmaculada Lorenzo is unique in Spain. The two lawyers work in a very integrated way, it is really a team. You can tell that they work very well together. Also, they are incredibly hard-working and they pay a lot of attention to detail, it is very difficult for them to miss something. They are also very enthusiastic.’

‘Ana Castedo and Inmaculada Lorenzo are both extraordinary professionals, you can see that they enjoy their work and have an extraordinary ability to understand technical concepts (apart from the fact that they obviously control all legal aspects).’

‘People who are great specialists but who know how to explain the subject of industrial property in an intelligible way.’

‘Apart from the knowledge of industrial property, they know how to advise the client in a practical way.’

Key clients

Adidas

Yum! Brands

Balder

IP boutique Balder's specialisms lie in the pharmaceutical and chemicals sector, where it acts for a number of major international companies. The team has notable cross-border expertise and knowledge across key European jurisdictions. Magnus Stiebe co-heads the team, and has broad expertise across advisory work and litigation, largely acting for domestic clients in areas such as renewable energy, industrial machinery and components. Co-head Patricia Koch is an experienced litigator.

Practice head(s):

Magnus Stiebe; Patricia Koch

Testimonials

‘The experience working with Magnus Stiebe cannot be better and it is also unparalleled. From his thorough work drafting the opinions, to his appearance in court to defend them and answer the court’s and the parties’ questions, Magnus stands out in all he does. He is an excellent professional, who carefully and efficiently analyses the cases and comes up with the best solutions for the clients. He is also extremely collaborative, with counsels and other experts involved in the case. He is innovative, proactive, very hardworking and fully committed to the clients’ success. He treats each case as unique and, despite being extremely busy always, puts the best of himself in all of them. He is also truly outstanding in court.’

Key clients

Dormakaba

Lanxess

Thyssen-Krupp

Etxe-tar

Solvay

JCR Pharmaceuticals

Simon

Cuatrecasas

Cuatrecasas advises on the full range of advisory and contentious patent matters, acting for companies operating in the digital technology, life sciences, food and beverages, manufacturing and automotive industries. The team is led from Madrid by Albert Agustinoy alongside Álvaro Bourkaib, who specialises in protecting and transferring intangible assets, from traditional intellectual property creations to innovation technology.

Practice head(s):

Albert Agustinoy; Álvaro Bourkaib

Key clients

Wavegarden

Bh Bikes

And & Or

Deltalab

Eventbrite

Spanish State Lotteries

Vall D’hebron Institut De Recerca (Vhir)

Nazca Capital

Faes Farma

Work highlights

  • Representing Deltalab in patent dispute proceedings relating to medical devices.
  • Advised VHIR on the exploitation of a patent in the field of mitochondrial diseases; license agreements and on contractual documents regulating co-ownership of patents and know-how in the medical/health field.
  • Proving ongoing advice to Faes Farma on several patent licenses and trade secrets agreements.

Deloitte Legal

Deloitte Legal focuses on the pharmaceutical and biotech sectors, working with a number of major international and domestic names on advisory and contentious patent matters, including litigation and commercial agreements. The team is overseen by IP specialist Dulce María Miranda.

Practice head(s):

Dulce María Miranda

Testimonials

‘Deloitte knows how to work as a team with the client’s technicians, its patent advisors, and external experts who execute expert reports, exercising leadership effectively.’

‘They are super-professional people, with high technical training.’

Key clients

Insudpharma

Banco Santander

Biotechnolgy Institute

Comité Paralímpico Español

Grupo Planeta

Financiera El Corte Inglés

Atresmedia

Amadeus IT Group SA

Work highlights

  • Advised a technology company in a patent and software licence agreement.
  • Assisted in litigation relating to the infringement of a biotechnological patent that protects a very innovative product largely used worldwide.
  • Assisted in litigation related to the rights of a former employee in the results of exploitation of an active principle licensed to Big Pharma.

PONS IP

Boutique firm PONS IP handles Patent Cooperation Treaty (PCT) applications, patent prosecution and litigation, acting for a range of domestic companies in biotech, healthcare and manufacturing. The overall IP team is overseen by Isabel Cortés, while Patricia Ramos leads the patents department, with Jean Devaureix working on patent litigation matters.

Practice head(s):

Isabel Cortés

Other key lawyers:

Patricia Ramos; Jean Devaureix

Key clients

Roncato

Cipla

Work highlights

  • Assisted industrial printing company Maktub with the registration of a new utility model in Spain for the manufacturing of protective face shields.