With its experienced team and global presence, the powerhouse intellectual property group at Bird & Bird remains a market leader, advising major international corporates on a diverse spectrum of patent issues, across the technology, telecoms, defence and life sciences sectors. Such matters include arbitration, patent infringement, licensing, portfolio management and strategic expansion and patent prosecution. An experienced trio leads the department: patent licensing expert José Miguel Lissén, portfolio management strategist Mariano Santos and patent litigation specialist Antonio Cueto. The group is supported by Manuel Lobato and associate Maria Fernandez. Teresa Mercadal left the firm in 2021.
Intellectual property: patents in Spain
‘A dynamic, very professional team, led by Mariano Santos. Very fast and efficient in the service.’
‘In-depth knowledge of the pharmaceutical industry and the interests at stake that it is important to protect. Great domain of industrial property law. Bird & Bird’s team knows how to combine both to provide the best advice to the industry.’
‘José Miguel Lissén has landed on the Bird & Bird IP team, contributing his great experience as a procedural lawyer and his taste for detail. Tireless worker and great professional. It is a pleasure and a peace of mind to know that a matter is in his hands. If this is combined with the exceptionality of Manuel Lobato, the combination is perfect.’
InsudPharma (formerly, Chemo Group)
Canaan Research & Investment S.L.
Laboratorios Farmacéuticos Rovi (Rovi)
The intellectual property group at Clifford Chance maintains its leading position in the area of patents, where it advises major international life sciences and healthcare companies across a broad range of matters. These include patent infringement, revocation counterclaims, nullity proceedings and patent threat management. Led by multi-jurisdictional IP dispute expert Miquel Montañá in Barcelona, the group’s client base features household names Pfizer, AstraZeneca and Bayer, and spans the life sciences, chemicals, retail, and consumer goods sectors, among others. The team is supported by technology co-head Josep Montefusco and experienced IP counsel Isabel Carulla.
‘Miquel Montana, Isabel Carullo and Manel Santilari were a highly effective team when representing our client. Their knowledge of local procedural rules and the judicial system in Spain is second to none.’
‘Miquel: an incredible oral advocate, able to put legal arguments across in a highly effective manner, and well-versed in adapting to an often difficult local court system. Isabel and Manel are both excellent collaborators who construct effective and persuasive legal briefs based on the available facts, in a logical and coherent manner.’
‘The team has an excellent reputation and command of the specifics of IP litigation in the regulated context of Pharmaceuticals, bringing in perspectives from both the pure Patent perspective, but also regarding commercial and regulatory law.’
‘Miquel Montana certainly is the one “go to person” when it comes to complex international IP litigation matters that have a Spanish part. He is capable of not only understanding the local demands and consequences, but also the international implications that his activities may have.’
‘They are the best lawyers in Spain for patent litigation. Vast and long experience in this type of litigation.’
‘Miquel Montañá -best lawyer in Spain in patent litigation and together with Isabel Carulla make up the best and most qualified team to handle patent litigation in our country. Excellent practice and good connection with all the practice areas of your office.’
‘Miquel Montana is an incredibly sharp mind, very experienced, and a great fighter for his client’s interests in court. You could not wish a better lawyer. Josep Montefusco is extremely knowledgeable in patent matters and excellent counsellor for all Spanish IP matters. Adrian Crespo is a great analytical mind with excellent knowledge of both English and German’
‘One of the strongest teams in Spain with deep knowledge of the Spanish court system and intellectual property.’
AstraZeneca Farmacéutica, S.A.
Love Digital Factory, S.L.
Thermo fisher scientific
edwards lifesciences ltd.
- Representing Illumina in patent infringement proceedings where two patents protecting some technical aspects of sequencing-by-synthesis methods for sequencing and synthetising DNA were asserted.
- Representing Exact Sciences in patent litigation around a diagnosis method that requires measuring the levels of a given gene.
- Representing Amgen in patent litigation against a Spanish company that was planning to market generics of the drug cinacalcet.
With offices in Barcelona, Madrid and Las Palmas, the IP group at boutique firm Grau & Angulo remains a dominant force in the market, advising major IP rights holders on a range of patent matters. The team’s full service covers patent infringement, preliminary injunction proceedings, counterclaims and third-party patents, among other areas. The group is led by veteran patent litigator Javier Huarte, cross-border litigation specialist Alejandro Angulo in Barcelona, and global patent enforcement specialist Jesús Arribas in Madrid. The team’s client portfolio spans the telecoms, healthcare and pharmaceuticals sectors, including Nestlé and Teva. The group is supported in Madrid by associate and pharmaceutical litigation specialist Ignacio Pontijas.
Other key lawyers:
‘The attorneys at Grau & Angulo are among the best in the market. They are real specialists in IP law.’
‘Excellent work. One of the best Spanish law firms in patent litigation with proactive, well-qualified and intelligent counsels.’
‘Thorough and meticulous case analysis, systematic approach to the strategy, excellent coordination of work teams.’
‘Jesus Arribas is a highly skilled lawyer, extremely reactive and able to prioritise matters to best support a strategy. He gathered a talented team around him, inside and also outside of Grau & Angulo, to ensure success. A point where I believe Jesus Arribas stands out, is his ability to propose several legal alternatives, then weigh the pros and cons for the client, also in view of the global situation, and after discussion, identify and promote the most promising route for a successful decision.’
‘They have a team of great legal professionals who work efficiently and rigorously.’
Mylan (now Viatris)
Two Way Media
Insud Pharma (Chemo)
- Representing Xiaomi Technology Spain, Xiaomi Netherlands and Xiaomi HK with regard to a claim brought by Koninklijke Philips for the infringement of its essential patents EP1440525 and 1623511 related to the Technical Standard UMTS (3G).
- Representing US company Two-Way Media against Telefónica Group in a highly complex patent infringement suit related to live streaming of audio and/or video information over communications networks.
- Successfully defending Teva against Bayer in preliminary injunction proceedings for alleged patent infringement.
The intellectual property team at Gómez-Acebo & Pombo remains among the leaders in the market, taking a sector-oriented approach to safeguarding the patents of major corporates across a diverse spectrum of industries such as life sciences, electronics, telecoms, tobacco and education. The group’s full service extends to FRAND litigation, standard essential patents, licensing, patent infringement and preliminary injunctions, among other areas. Led by IP enforcement expert Jesús Muñoz Delgado, the team has recently introduced GA_P Digital, an AI-powered channel to provide webinars and information on current IP topics to clients. The group is supported by senior partner Gonzalo Ulloa.
Other key lawyers:
San Lucar Group
The Regents of the University of California (California Riverside)
- Representing the large genomics group MGI in its litigation against market leader in next generation sequencing Illumina.
- Providing recurring advice on plant varieties to Fall Creek, a USA company based in Oregon.
- Handled five contentious-administrative appeals in Spain on behalf of Royalty Pharma concerning the refusal of several SPCs.
HOYNG ROKH MONEGIER
HOYNG ROKH MONEGIER has established a strong reputation in IP in Spain, where it offers a comprehensive service to advise high-profile multinationals on a wide range of patent portfolio matters. These include patent infringement, unfair competition, preliminary relief proceedings, invalidity and patent revocation. Led by managing partner and IP specialist Luis Fernández-Novoa, the team’s client base features household names such as Huawei, Philips and Janssen (Johnson & Johnson), and spans the telecoms, energy, pharmaceuticals, plastics, tobacco and consumer goods. The group is supported by veteran IP litigator Álvaro Velázquez, media and entertainment industry expert José Antonio Sanmartín and counsel Laura Cantero, who specialises in biotechnology.
‘Hoyng Rokh Monegier is one of the top tier firms for patent litigation in Spain. They benefit from a strong international network.’
‘Ãlvaro Velazquez is knowledgeable, friendly and hard-working.’
‘The team is very responsive and provides an output that is very details oriented, which is very important. They also proved to be able to work under strict time constraints and with multiple parallel cases without affecting work quality.’
‘They are good in interpreting court’s thoughts and concerns, and then prepare a case with the aim to address those concerns. They usually provide a strategic view of the case, also from a business standpoint. Providing a strategic view is something that I consider distinguishes them in the Spanish IP firm context. Also, they dig into deep technical matters (without leaving it completely to technical experts) to fully understand the patented technology and try the case in the best possible way.’
Ceva Santé Animale
Janssen (Johnson & Johnson)
Seiko Epson Corporation
Silvalac – Grupo Armando Alvarez
- Representing the veterinary pharma group Ceva in Spain in large-scale cross-border patent litigation against Bayer in relation to veterinary products.
- Representing Huawei in complex litigation brought by Spanish company Tot Power Control for patent and know-how infringement, unfair competition and breach of contract, involving a claim for damages of over €500m.
- Representing Siemens Gamesa in cross-border patent litigation prompted by General Electric (GE) relating to onshore wind turbines.
The IP and unfair competition team at Uría Menéndez continues to stand out in the practice area, providing a comprehensive service to major international corporates on a diverse range of patent matters. These include patent infringement, nullity proceedings, revocation actions, third-party patent rights, and market strategy and expansion. The team is headed in Barcelona by Montiano Monteagudo, who specialises in healthcare and life sciences. The practice’s client portfolio features household names Amazon, Telefónica and Primark, and spans the technology, retail, automotive, education, telecoms and pharmaceuticals sectors. The group is supported in Barcelona by counsel Núria Porxas, who is experienced in technology transfers, and by Ingrid Pi in Madrid, who specialises in life sciences and plant patents. José Massaguer retired in December 2021.
Other key lawyers:
Nuria Porxas; Ingrid Pi
Gilead Sciences, Inc
Nador Cott Protection
Utilising its global network of offices across 34 countries, the litigation and IP team at Eversheds Sutherland acts for major international corporates on a broad range of patent-related issues. Such matters include patent infringement, patent licensing, unfair competition and data registry protection, patent invalidity, registration proceedings and global patent strategies. Led in Madrid by arbitration specialist Kiko Carrión, IP expert José Mariano Cruz and litigation and life sciences specialist Marta González, the group’s client base features Avis Budget and Johnson Controls, and covers such sectors as food and beverages, pharmaceuticals, retail, sports and e-commerce. The team is supported by legal directors Inmaculada López and Elena García, and life sciences and IP specialist Eduardo Buitrón.
‘Very proactive lawyers.’
‘Legal knowledge is important, but the most important thing is that they have knowledge of the real practice of the sector in order to offer practical and easily implementable solutions. The knowledge of the sector makes their work of great added value.’
‘Magnificent knowledge of patents and pharmaceutical patents in particular.’
Athlon Car Lease Spain
The industrial and intellectual property team at Garrigues takes a multidisciplinary approach to advising local and international corporates on a diverse array of patent matters. These include patent infringement and validity actions, patent drafting and filing, patent prosecution, patent exploitation agreements, transfer pricing and due diligence. Headed by digital business specialist Carolina Pina Sánchez in Madrid and IP prosecution expert João Miranda de Sousa in Lisbon, the team is a popular choice for clients across the food, investment, biotech, telecoms and pharmaceuticals sectors. The team is backed by Pedro Tent, the head of the IP departments in Valencia, Murcia and Alicante, and senior associate and life sciences specialist Cintia Bernhardt in Madrid. Mónica Arizti also receives praise.
‘Professionalism, accessibility, good treatment, ability to mediate conflicts.’
‘The Garrigues team is efficient and has an expert knowledge of the work areas of our company, which allows us to always be in the best position. The international agents that Garrigues works with are also a unique and differential point in its favor. They are efficient and also have the best knowledge and relationships in their countries to provide the best service.’
‘The personal dedication of the Garrigues partner who attends us, Mónica Arizti, at all times accessible and participating in the strategic advice of our company that allows us to make the best decisions in the patent area. For our company, Mónica Arizti is one more person in the company’s strategic management team in the area of patents, which we have outsourced.’
‘The Garrigues team maintains the quality levels that we manage in our company. The collaboration is very close, and the performance times as expected, including accelerating when required.’
Club de Variedades Vegetales
Asociación Española Contra El Cancer
- Assisting Club de Variedades Vegetales Protegidas (CLUB) in civil proceedings against infringers of Community plant variety regarding clementine “Nadorcott”.
- Represents Talladium Group in a patent infringement and validity action brought by one of its competitors.
- Handling Quibim’s international patent, know how, software and trade mark portfolio.
The intellectual property, media, and technology team at Hogan Lovells International LLP is sought by major multinational corporates for advice across a broad spectrum of patent issues. Such matters include patent infringement, invalidity proceedings, preliminary injunctions, patent application licenses, option rights agreements and opposition actions. Spearheaded by IP dispute resolution expert Burkhart Goebel in Madrid and brand protection specialist Imogen Fowler in Alicante, the group’s client portfolio contains household names FIFA, Starbucks and Adidas, and covers the food and beverages, banking, pharmaceuticals, telecoms, sport, energy and medical devices sectors. The team is supported by Ana Castedo, who specialises in cross-border IP infringement matters, and Inmaculada Lorenzo, who was promoted to partner in January 2021.
‘I think that it is an extremely motivated and co-ordinated team. And apart from legal skills, they seem to understand technical aspects unusually well. Also, as they seem to enjoy their work, it is very pleasant to work with them. I really enjoy it. And I have seen how they have produced great results, also in difficult cases.’
‘Ana Castedo and Inmaculada Lorenzo are both very clever, and they really work well together. They have a positive attitude which makes it very pleasant to work with them. I have spent some very long meetings with them discussing complex technological issues, and I don’t mind because they create such a positive atmoshphere. And you see that they understand the stuff. They are certainly one of the very best patent teams in Spain.’
‘Ana Castedo. Excellent legal skills. Very good strategic thinking. Inmuculda Lorenzo. Very good lawyer. Excellent English speaker.’’
Fédération Internationale de Football Association (FIFA)
The patents department at Jacobacci Abril advises major multinationals on a diverse range of matters. These include patent infringement, market strategy, third-party patent rights and IP rights purchases. The group is led by IP litigation authority Ignacio Temiño, TMT expert Jorge Oria and anti-counterfeiting expert Fernando Ortega in Madrid and patent agreement specialist Salvador Diaz in Valencia. The team counts companies in the energy, aviation, education, pharmaceuticals and automotive sectors among its clients.
‘The team is very knowledgeable and has a very practical and efficient approach to matters.’
‘The lawyers are very well prepared and have a clear and efficient communication. I can certainly recommend Ignacio Temiño and Jorge Oria for their availability and dedication to the matters in hand.’
‘Abril’s team has an incredible knowledge of our needs and problems exposed.’
‘Very flexible and reliable team with detailed knowledge in the IP field.’
‘Ignacio Temino is an outstanding specialist in the patent field, very reliable partner and provides accurate advice. Jorge Oria is an outstanding partner in the trademark field, excellent experience in this area.’
Inst. Salud Carlos III
University of Madrid (Complutense)
University of Alicante
Siemens Gamesa Renewable Energy
- Advised Faurecia on the enforcement of two European patents against a European competitor, regarding the manufacturing of automotive parts for one of the automobile market leaders.
- Advising Inneo on the enforcement of Spanish patents of windfarm energy manufacturing facilities against Nordex-Acciona.
- Advising Tewer on an R&D project (protection, contracts and defence) for new hybrid solar and hydrogen energy innovation.
Advising local and international corporations in the biotech, pharmaceuticals, software and tobacco sectors, the IP group at Baylos provides clients with comprehensive solutions for a broad range of patent enforcement and protection issues. Such matters extend to infringement, revocation, invalidity and market strategy. Juan Luis Gracia, who specialises in strategy and defence before the EU courts, and patent expert Pedro Merino Baylos lead the team, with senior associate Ernesto Cebollero bringing to the group a background in new technologies.
Juan Luis Gracia; Pedro Marino Baylos
Other key lawyers:
‘Juan Luis Gracia is our first choice for patent litigation in Spain and likely one of the best attorneys on the globe I have the pleasure to work with.’
‘The team are experts in IP and providing strategic solutions. They provide practical solutions that take into consideration budgets.’
‘Juan Luis Gracia is an outstanding lawyer, he is an expert in providing on the ground enforcement and getting tangible results.’
Japan Tobacco International – JTI
Bubbly Blaster L.L.C.
The industrial and intellectual property and digital business group at CMS Albiñana y Suárez de Lezo specialises in advising national and multinational corporates in the life sciences and healthcare sectors on product launches and patent production. In addition, the team, led by IP authority María González Gordon, and supported in Madrid by senior associate Ricardo Gómez-Barreda, advises on infringement matters, unfair competition and disputes before registration authorities, such as the Spanish Patent and Trademark Office (OEPM) and the European Union Intellectual Property Office (EUIPO). The group’s client base also covers the technology, real estate, manufacturing and e-commerce areas.
Other key lawyers:
Eli Lilly and Company
Closure Systems International
- Providing CBRE with ongoing advice on the protection of all its intangible assets, including on the filing of a broad range of trade marks, patents, copyrights and trade secrets assessment.
- Providing advice to Chargy Technologies in relation to a claim which was filed against its former in-house technology team regarding patent and trade mark infringement, unfair competition and trade secrets protection matters.
- Advising Sygenta on its anti-counterfeiting activity, particularly in customs proceedings.
With multiple offices across several countries, the intellectual and industrial property group at Cuatrecasas leverages the experience of its team and the strength of its global network to advise national and international corporates on patent management and enforcement matters. These include infringement proceedings, counterclaims, patent licenses, trade secret agreements, technology procurements and revocations. Led by intangible assets expert Álvaro Bourkaib in Madrid, the group’s client roster includes companies operating across the life sciences, technology, engineering, manufacturing and healthcare sectors, among others. The team is supported by IP litigation strategist Jorge Llevat in Barcelona and emerging technologies specialist Alejandro Negro in Madrid.
Spanish State Lotteries
- Representing Sener in patent infringement proceedings and in a counter claim requesting the nullity of the plaintiff’s patents for a sun power system.
- Advising Deltalab on patent infringement disputes.
- Advising Faes Farma on several patent licenses and a trade secrets agreement.
The IP and IT law group at Deloitte Legal takes a multidisciplinary approach to assisting clients at the international level on a broad span of patent-related issues. Areas of strength include patent licensing, IP rights tax implications, infringement, counterclaims and trade secrets. The team is led from the Madrid office by IP litigation expert Dulce Mª Miranda Naranjo and is supported by information technologies specialist Rodrigo González Ruiz, also in Madrid. The group’s client base spans the IT, pharmaceuticals, telecoms and banking sectors, among others, and features Telefónica and Mono Films.
Other key lawyers:
Spanish Paralimpic Committee
- Advising Biotecnology Institute on indirect breaches of procedure patents by its competitors.
- Assisting Repsol in the drafting of model contracts for collaborations in research and development projects, as well as in the conditions for the licensing of its patents.
The team at Elzaburu takes a multidisciplinary approach to safeguarding the patent portfolios of major national and international corporations. Balancing a broad practice, the team provides advice on patent prosecutions, third-party oppositions, patent infringements, patentability analysis and preliminary injunctions on the basis of unfair competition. Led by patent head Francisco Saez, litigation head Antonio Castán and head of legal and business Javier Fernández-Lasquetty, the group represents key market players such as Acciona and Airbus, across a client base that spans the retail, pharmaceuticals, technology, chemicals and telecoms sectors. The team is supported by unfair competition expert Enrique Armijo Chávarri and junior associate María Cadarso.
‘Elzaburu has a highly professional IP litigation team.’
‘Enrique Chavarri, Antonio Castan, and Maria Cadarso are very professional and diligent.’
El Corte Inglés
Laboratorios Farmacéuticos Rovi, S.A.
Spanish National Cancer Research Centre (CNIO)
The intellectual property group at PONS IP combines the experience of its team with a network of 300 associated offices worldwide to advise national and international corporates on a wide spectrum of patent issues. Such matters include patent validity, licensing, infringement, nullity claims, patent prosecution, strategic patentability reports and applications. Headed by trade mark litigation expert and the firm’s new international affairs director Isabel Cortés, the team’s portfolio spans the education, food and beverages, media and life sciences sectors, and also features major universities. Head of patent litigation Jean Devaureix brings a skillset that includes presenting complex argument before the Spanish Supreme Court.
Other key lawyers:
Universitat Politècnica de València
Universidad de Sevilla
Universidad de Salamanca
Fundación General de la Universidad de Valladolid
Universidad de Zaragoza
Instituto de Microelectrónica de Sevilla – CSIC
Fundación Centro Nacional de Investigaciones Cardiovasculares (CNIO)
Fundación Vasca de Innovación e Investigación