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ZBM Patents & Trademarks
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European, US and Spanish Patent and Trademark Attorneys
European, US and Spanish Patent and Trademark Attorneys

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ZBM stands out in the 2018 IAM Patent 1000 rankings for the EPO and Spain

We are delighted to announce that ZBM stands out once again in the 2018 edition of the IAM Patent 1000, both as a firm and through its professionals.
ZBM retains its position in the European Patent Office (EPO) ranking, being the only Spanish firm among the 25 nominated IP firms in this category. Anna Barlocci is again highlighted individually in the short list of recommended attorneys at a European level. We are especially proud to have received this recognition, since ZBM’s aim has always been to be among the best European companies.

Concerning the specific category for patent prosecution in Spain, ZBM has been featured once more in the highest category. According to IAM, our firm achieved the following comments: “Operating with incredible precision, ZBM is best in class when it comes to procuring high-quality, value-adding patents and nothing falls outside of its technical compass. The side’s contentious credentials are strong too, so it often inherits matters from other firms due to its ability to handle opposition proceedings with winning results and set applications on the path to grant; it is also called on for technical support in big-ticket litigations. The client feedback is excellent: “Its practitioners have great team spirit and act decisively with savoir faire. The group stands out for its seriousness, professionalism, timely delivery, exhaustive searches, practical recommendations and network of friends“.

In addition, IAM also recognizes the excellence of the individual work of our partners Anna Barlocci, Bernabé Zea, Carles Comes, Montserrat Jané, and Mathieu de Rooij.

The IAM emphasizes that Anna and Bernabé “have a profound knowledge of the patent system and are incredibly smart at designing strategies to help you better enforce and defend your patent rights. Both are brilliant in court as expert witnesses and their litigation work is excellent and impressive“.

Carles is said to be “a supremely capable counsellor who is a pleasure to deal with. He responds rapidly, reliably and efficiently, and is a go-to for anything IP-related, but especially patents“.

Montserrat is underscored for being “perfectly attuned to the thinking of her clients” and it is also highlighted that “She solves problems with ingenuity, drafts and files Spanish, Patent Cooperation Treaty and US patents with skill and has extensive oppositions experience.” And finally about Mathieu the IAM emphasizes that “A former examiner at the EPO, Mathieu de Rooij has the inside track on patent prosecution at the office“.

In short, the inclusion of ZBM in both rankings demonstrates the recognition and prestige of ZBM not only internationally but also nationally.
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ZBM in the Tier 1 of the Managing Intellectual Property (MIP) ranking “IP Stars” 2018

ZBM has again been listed this year in the top tier of Patent Prosecution in Spain in the IP prestigious survey conducted by Managing Intellectual Property (MIP).

ZBM is delighted to have been the only Spanish firm consistently ranked in this privileged position uninterruptedly since 2007.

MIP’s “IP Stars” is considered one of the world’s leading IP rankings and identifies outstanding intellectual property firms and practitioners from around the world based on an extensive research process that assess the strength of the firm’s IP team, workload, outcomes achieved for clients, and track record.
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Assessment on the application of the rapid action protocol for IP-related infringments during the Mobile World Congress 2018

After the end of the Mobile World Congress (MWC) that was held in Barcelona from February 26 to March 1, 2018, the Barcelona Commercial Courts issued a report about the result of the application of the rapid action protocol to protect the intellectual property rights of attendees and exhibitors at MWC 2018.

This report indicates that a total of 35 cases were admitted and ruled out within the framework of application of the protocol, which represents an increase of 40% of the cases dealt in 2017. The cases were divided this year into: 24 preventive briefs related to patents and trademarks, mostly patents, and involving technological companies such as SAMSUNG, LG, HUAWEI, among others; 3 measures for taking evidence; 7 precautionary measures in audita parte; 1 precautionary measure with hearing contemporary of the main claim with a substitute surety.

The forecast for 2019 is that the number of cases presented will increase. Given this evolution and forecast for the following years, it has been proposed to create an Evaluation and Monitoring Commission for the MWC in which the MWC authorities, magistrates of the specialized sections of the Commercial Courts, lawyers of the Administration of Justice, Police forces, the GSMA Association and the Fira de Barcelona will participate.
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Two new Spanish Patent & Trademark Attorneys at ZBM

ZBM is delighted to announce that Reyes García and Laura Santiago have passed the examination to become Spanish Patent & Trademark Attorneys. Reyes holds a degree in Law and is in charge of the Trademark Department at ZBM. Laura holds a degree in Translation and Interpretation and Audiovisual Communication, she takes care of the filing and prosecution of IP cases abroad. With Reyes and Laura, ZBM now has 5 Spanish Patent & Trademark Attorneys and 15 qualified European patent attorneys.
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The EPO and ZBM jointly participate in the “Patent Mondays”

John Beatty, Director Patent Procedures Management in the EPO and Mathieu de Rooij of ZBM-Patents will give a lecture within “Jornadas de estudio y actualización en materia de patentes” (“Patent Mondays”) on September 18, 2017, organized by the Spanish Patent and Trademark Office and the Patent Center of the University of Barcelona.

The conference entitled “Speed of processing at the EPO. Timely Delivery of Quality Products” will focus on the program followed by the EPO to accelerate both the granting and the opposition procedures in order to minimize the uncertainty of third parties, while at the same time maintaining high quality standards.

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2nd Edition of the ZBM online course on patents, patentability and patent infringement

The second edition of a complete online course on patents, patentability and patent infringement organized by the Institute of Sustainable Energy by KIC InnoEnergy and taught by ZBM Patents & Trademarks will take place on October 2, 2017. It is aimed at anybody working in research & development or innovation, and no prior knowledge of the patent system is required. The course, that will be taught in english, is divided into seven modules that combine theory and practice. Examples and exercises will be used to introduce and illustrate all of the content.

This course is part of the Specialisation on “Competitive Intelligence and Effective Exploitation of Patents” together with other two entitled “Competitive Intelligence and Technology Scouting” and “IP commercialization”, taught by IALE Tecnología and the Universitat Politècnica de Catalunya (UPC), respectivelly.
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2nd Edition of the ZBM online course on patents, patentability and patent infringement

The second edition of a complete online course on patents, patentability and patent infringement organized by the Institute of Sustainable Energy by KIC InnoEnergy and taught by ZBM Patents & Trademarks will take place on October 2, 2017. It is aimed at anybody working in research & development or innovation, and no prior knowledge of the patent system is required. The course, that will be taught in english, is divided into seven modules that combine theory and practice. Examples and exercises will be used to introduce and illustrate all of the content.
This course is part of the Specialisation on “Competitive Intelligence and Effective Exploitation of Patents” together with other two entitled “Competitive Intelligence and Technology Scouting” and “IP commercialization”, taught by IALE Tecnología and the Universitat Politècnica de Catalunya (UPC), respectivelly.
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The EPO and ZBM jointly participate in the “Patent Mondays”

John Beatty, Director Patent Procedures Management in the EPO and Mathieu de Rooij of ZBM-Patents will give a lecture within “Jornadas de estudio y actualización en materia de patentes” (“Patent Mondays”) on September 18, 2017, organized by the Spanish Patent and Trademark Office and the Patent Center of the University of Barcelona.

The conference entitled “Speed of processing at the EPO. Timely Delivery of Quality Products” will focus on the program followed by the EPO to accelerate both the granting and the opposition procedures in order to minimize the uncertainty of third parties, while at the same time maintaining high quality standards.
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ZBM Patents & Trademarks in the awards ceremony of the Cleantech Camp

On 29th June, Mathieu de Rooij, partner of ZBM, participated as a member of the jury that evaluated the 14 projects presented within the framework of the second edition of the Cleantech Camp program that promotes the creation and growth of companies in the energy sector of clean energies and sustainable cities in Spain and Portugal.

The winning companies this year have been EnegIoT, X1Wind and Rated Power. The prizes, valued at 20000 EUR for the winner, and 10000 and 5000 EUR for the finalists, respectively, include, among others, a patentability study offered by ZBM.
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Plants (and animals) obtained by essentially biological processes are not patentable in Europe

The Administrative Council of the European Patent Office (EPO) has just settled the controversy caused by the decisions of the EPO Enlarged Board of Appeal G 2/12 and G 2/13, known as Tomatoes II and Broccoli II, respectively.

These decisions allowed the patentability of plants and animals obtained by essentially biological processes, which seemed to go against the spirit of the Directive on Biotechnological Inventions (98/44/EC) which specifically excluded essentially biological processes from patentability although it did not provide for a clear exclusion of plants or animals obtained from such processes.

These decisions, which clearly conflicted with the more restrictive position taken by the US Supreme Court in relation to the patentability of biotechnological inventions, prompted the European Commission to issue a notice showing its disagreement with the EPO’s interpretation of the Directive and clarifying that it was the European legislator’s intention to exclude not only processes but also products obtained by such processes.

In view of this situation, the Administrative Council has amended Rules 27 and 28 of the European Patent Convention (EPC) which entered into force on 01.07.2017. These modifications now exclude without any ambiguity the protection of plants and animals obtained by essentially biological processes.
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