Patents

Patentability opinions

In light of the prior art—either already known by the client or retrieved in a search—we can provide an opinion regarding the patentability of the invention and the scope of protection that can be expected.

Drafting of patent applications

A patent application is drafted based on the information about the invention supplied by the client —in writing or in a personal interview— and prior art documents supplied by the client or retrieved in a search.

We can draft European or PCT applications, both in English and Spanish, as well as Spanish patent and utility model applications. We are also familiar with US requirements and claims style.

Patent prosecution

We file and handle European, PCT and Spanish patent and utility model applications, as well as national phases of PCT applications and validations of European patents in Spain. We also take care of applications worldwide, through our network of foreign associates.

Throughout prosecution, we provide technical assistance whenever necessary—for example, during substantive examination—in order to ensure that our client obtains the best possible protection.

Deadlines, payments and other formal proceedings are securely monitored by our computerized IP case management system (Patricia, from Patrix AB).

Freedom-to-operate opinions, infringement and validity reports

We evaluate the validity of patent claims, as well as the risk of infringement of third-party rights by a particular product or activity, for example, prior to the launch of a new product on the market, or in case of a suspected copy by a competitor.

We provide reports both for our client’s information and for court actions.

Oppositions and appeals

We provide technical and formal assistance to our clients in opposition or appeal proceedings, both before the European Patent Office and the Spanish Patent and Trademark Office.

We file notices of opposition and appeal and draft the corresponding grounds and arguments. We also draft and file third-party observations on behalf of our clients.

Since the work of oppositions and appeal in the European Patent Office (EPO) is highly specialized and challenging, we have considered it as being a good indicator of the performance of a patent law firm. The attached file includes statistics with the opposition and appeal cases of the Chemistry/Pharma/Biotech ZBM team in the period 2010-2020.

IP agreements and negotiations

ZBM handles all procedures of assignments, mergers, changes of name, licenses and other IP agreements, both for individual cases and full portfolios. This includes negotiating with the parties, drafting and reviewing the required documents, as well as providing our legal advice throughout all the steps of the recordal of the resulting agreements in the corresponding offices.

Training

Due to the wide experience in training of the partners and staff, we are able to offer tailored in-house training for companies or research groups.

Due diligence

We prepare due diligence to evaluate the different IP assets of the firm—mainly patents—analyzing several aspects, such as the ownership, the protection scope, the validity, the geographical extension and the duration of the protection, as well as the freedom to commercialize the inventions.