Álvaro Velázquez

What makes him stand out is his capacity of following and becoming familiar with the technical issues being discussed.

IAM Patent 1000

Partner

Álvaro is specialised in litigating IP rights and related rights in Spain, including patents (and supplementary protection certificates for medicines) trademarks, unfair competition, designs and copyrights, before the specialized Commercial Courts, but also Civil, Contentious-Administrative and Criminal Courts, in all type of proceedings, including urgent actions for protection at Trade Shows, protective briefs and Customs border seizures. He also has considerable experience providing advice in contractual matters, assisting in drafting and counselling clients in this area of Law and advises and litigates also with regard to advertising and labelling. Álvaro works for national and international clients across a range of sectors including life sciences, mobile and telecoms, energy, engineering, food industry, fashion and entertainment. He also has extensive teaching experience in IP law and related matters. Álvaro is one of the founding members of HOYNG ROKH MONEGIER in Spain.

REPRESENTATIVE MATTERS
- General Electric v. Siemens Gamesa Renewable Energy. Currently representing wind energy Company SIEMENS GAMESA, in patent infringement and invalidity proceedings relating to GE’s patent concerning exploitation of wind turbines.
- Nordex v. Siemens Gamesa Renewable Energy. Currently defending wind energy Company SIEMENS GAMESA, in patent invalidity proceedings relating to SGRE’s patent concerning split of wind turbines blades.
- Philips v. Oppo. Currently representing Philips in the litigation in Spain of several patents relating to essential 3G and 4G mobile telephony technologies.
- MC&F Broadcasting Production & Distribution CV v. ATRESMEDIA / ITV STUDIOS. Represented MC&F, holder of the copyright on the “EL ROSCO” TV game format against main TV broadcasters in the litigation over the most-successful TV quiz show in Spain.
- Philips v. Xiaomi. Represented Philips in the litigation in Spain of several patents relating to essential 3G and 4G mobile telephony technologies.
- Megaplast v. Silvalac. Represented plastics company Silvalac (Grupo Armando Álvarez) in patent infringement and invalidity proceedings brought by Greek Company Megaplast relating to alleged infringement of a European patent covering a macroperforated packaging film.
- Fractus v. Vodafone et al. Advised Spanish tech SME Fractus and its licensing partner Vectis IP in the enforcement in Spain of its patent portfolio covering Antenna Technology against several operators and distributors in Spain of unlicensed mobile telephones manufactured by XIAOMI, OPPO, MEIZU and TP-LINK/NEFFOS, in preliminary injunction and proceedings on the merits.
- Fractus v. several defendants. Represented Fractus in the enforcement of its patent portfolio covering Antenna Technology against several unlicensed brands during the 2017, 2018 and 2019 editions of the Barcelona Mobile World Congress Trade Show, through urgent preliminary injunctions with preliminary verification of facts.
- Ferring v. SPTO. Represented pharmaceutical Company Ferring in Contentious-Administrative litigation against the rejection of an application for Supplementary Protection Certificate for a medicine for the treatment of erectile dysfunction.
- Poly Medicure v. B. Braun. Represented Indian Company manufacturer of medical devices (catheters) and its Spanish distributor in patent infringement and invalidity proceedings with parallel cases in other jurisdictions and before the European Patent Office.
- Intervet v. MSD Boehringer Ingelheim. Represented MSD’s veterinary division Intervet in patent infringement and invalidity proceedings concerning patented vaccines for swine.
- Abbvie. Advised Abbvie in prelitigation and enforcement of patents relating to blockbuster medicine Humira vis-a-vis biosimilar competition.
- Vringo v. ZTE. Represented US telecom Company in the enforcement in Spain of its patent portfolio covering telecom infrastructure and mobile technologies, including Standard-Essential Patents (SEPs).
- Wobben v. GAMESA. Defended Spanish wind energy Company GAMESA, now Siemens Gamesa Renewable Energy, in several patent infringement and invalidity and related unfair competition proceedings relating to Enercon GmBh founder Mr. Wobben’s patented technology concerning exploitation of wind turbines, up to the Supreme Court.
- Hartford v. Divaro. Represented French clothing brand HARTFORD in trademark infrigement and ownership/validity preliminary injunction proceedings and proceedings on the merits before the Spanish Community Trademark Court and parallel Contentious-Administrative litigation.
- Procter & Gamble v. Aberto-Culver International. Represented Procter & Gamble in complaints before the Advertising Jury of Autocontrol and litigation before the Courts (up to the Supreme Court) for illicit advertising and unfair competition activities against Alberto-Culver International and Myrurgia (Puig Group) for the advertising of their TRESemmé hair care products.
PROFESSIONAL AFFILIATIONS
- International Association for the Protection of Intellectual Property (AIPPI)
- European Patent Lawyers Association (EPLAW)
- Licensing Executives Society (LES)
PUBLICATIONS
- ‘Comentarios a la Ley de Secretos Empresariales’. La Ley – Wolters Kluwer, co-authored with Patricia Guillén Monge, Daniel Irigoyen Fujiwara, José Miguel Lissén Arbeloa, Manuel Lobato García-Miján, Miguel Vidal-Quadras Trías De Bes, Marco Yago De Sevilla and Ana Zueco Peña, June 2020.
- ‘Open questions about the application of the requirements for granting Supplementary Protection Certificates: the protection of the product by the basic patent and the first marketing authorization’ (“Cuestiones abiertas sobre la aplicación de los requisitos para la concesión de Certificados Complementarios de Protección: la protección del producto por la patente de base y la primera autorización de comercialización”). Co-authored with Laura Cantero Rangel. CEFI. Instituto de derecho y ética industrial. Comunicaciones en propiedad industrial N.º 86, January-April 2019.
- ‘Speak now or forever hold your peace: Prior art searches to request patent nullity must be exhaustive (Spain Case Law Comment)’, CEFI. Instituto de derecho y ética industrial. Comunicaciones en propiedad industrial N.º 82, January 2018.
- ‘Spain’s fast track procedure for preliminary injunctions’, Intellectual Property Magazine, October 2017.
- ‘On the scope of protection of patents and the relevance of the technical effect. Comment appeal decision Gamesa v. Aloys Wobben’, CEFI. Instituto de derecho y ética industrial. Comunicaciones en propiedad industrial N.º 78, August 2016.
- ‘The rulings of the Jury of Autocontrol in the complaints against advertising of tooth pastes for sensitive teeth’, Vol. 69 Communications on Intellectual Property and Competition Law – Fundación CEFI – Center of Studies for the Promotion, August 2013.
- ‘The Spanish Supreme Court Gets Serious on Patents’, Journal of Intellectual Property Law & Practice (Volume 8, Number 8, August 2013). Co-authored with Luis Fernández-Novoa and José Antonio Sanmartín.
- ‘Clearing the way for no delay’, Intellectual Property Magazine, February 2013, Comment on the Spanish Supreme Court’s decision in Envac vs. Ros Roca, on the start of the effectiveness of European patents in Spain.
- ‘La diferencia entre información y publicidad de medicamentos en la reciente jurisprudencia del Tribunal de Justicia de la Unión Europea’ (The difference between information and advertising of medicines in recent ECJ Case Law) Cuadernos de Derecho Farmacéutico / Pharmaceutic Law Journal, January-March 2012, issue #40, CEFI-CEDEF – Fundación CEFI / Center of Studies for the Promotion of Research.
- Section about Spain in Patent Litigation Smart Charts™ 2011, Kluwer Patent Law, at http://www.kluwerpatentlaw.com.
- Spanish Chapter. Noorda, Catrien and Hanloser, Stefan. E-Discovery and Data Privacy. A Practical Guide. Wolters Kluwer Law & Business, The Netherlands 2011. Co-authored with Laura Cantero.
WHAT OTHERS SAY
- “Álvaro Velázquez is a master of high-stakes IP litigation.” IAM Patent 2024
- “He has a strong reputation in the international IP market. His skills and competence are exceptional.” Legal 500 2024
- “Luis Fernández-Novoa, Laura Cantero and Álvaro Velázquez have an extensive knowledge in different areas of law and working with them is fluid and productive.” Legal 500 2024
- “Comprehensive IP litigator Velázquez can be relied on to resolve disputes in almost any industry. His detailed knowledge of contract and advertising law makes him a stellar choice for drafting agreements and fighting battles in unfair competition and beyond.” World Trademark Review 2024
- “Fernández-Novoa and Velázquez have a pragmatic and hard-working attitude. They persevere and do what is necessary to win the case, and often achieve more favourable results than predicted. They know how to hit the right spot with the judges” IAM Patent 2023
- “Luis, Álvaro and Laura Cantero are highly professional attorneys. They are extremely attentive to detail and highly skilled when it comes to understanding the technical details of the case, which in some cases are rather complex issues spanning many technical fields.” IAM Patent 2023
- “Bringing his own strategic and commercial acumen to the table is Álvaro Velázquez; A diligent and responsive lawyer.” IAM Patent 2022
- “Knowledgeable, friendly and hard-working.” Legal 500 2022
- “Polished performer in both trademark and patent litigation, with useful knowledge of ancillary disciplines such as copyright, designs, unfair competition and criminal law. Velázquez is meticulous at contractual drafting.” World Trademark Review 2022
- “One of Álvaro’s best attributes is his perseverance: he is so full of energy and never stops until he comes to the right conclusion. He is always keen to understand the technical issues of the case from the very beginning and prepares for hearings thoroughly, which means that any unpleasant surprises are avoided.” IAM Patent 1000 2021
- “The legal papers he prepares are excellent. He really cares about the client’s interests and their business.” Chambers & Partners 2021
- “Always thinking about how to do the best for the client in a practical way.” Chambers & Partners 2020
- “Impresses with his impeccable communication skills, attention to detail and excellent customer relationships. Álvaro is always keen to understand the technicalities behind each matter and always keeps clients informed of every development.” IAM Patent 1000 2020
- “Very good lawyer, with a fine knowledge of substantive patent law and court proceedings.” IAM Patent 1000 2019
- “What makes him stand out is his capacity of following and becoming familiar with the technical issues being discussed.” IAM Patent 1000 2019
- “Very good communication skills, both in court pleadings and in correspondence and calls with his clients.” IAM Patent 1000 2019
- “Effective” Legal 500 2018
- “I worked with Álvaro Velázquez in a patent nullity lawsuit filed to invalidate a medical device patent belonging to a client’s competitor. This was a lawsuit that was going on simultaneously in several countries and was also on appeal at the EPO. There was a vast amount of writs, decisions and opinions to take into account. Velázquez was quick to understand the technical issues involved in the patent and prior art being discussed, and in spite of the complexity, he was always spot on in the details of the litigation case.” The colleague further adds: “[Álvaro] is very clear and to the point in his writs to the court and reports to the client. He has very good communication skills, both in Spanish and English.” MIP 2017 Editorial
- “Álvaro Velázquez is an IP all-rounder who finds pragmatic, clear-sighted solutions to even the most intractable patent problems.” IAM Patent 1000 2017
- “Thorough preparation of the case, clear communication flow with the client and the capacity of dealing with the technology in spite of being a lawyer.” Managing Intellectual Property IP Stars 2017
- “Perfect writing and ability to meet complicated deadlines.” Managing Intellectual Property IP Stars 2017
- “He [Álvaro Velázquez] is very clear and to the point in his writs to the court and reports to the client. He has very good communication skills, both in Spanish and English.” Managing Intellectual Property IP Stars 2017
- Álvaro Velázquez and Luis Fernández-Novoa “are great guys. Both are hardworking and diligent, with a particular skill for explaining the intricacies of Spanish patent litigation to foreign counsel. They have excellent communication skills and can draft compelling briefs and engage in persuasive courtroom arguments”. IAM Patent 1000 2016

Assistant(e)

Laura Fernández García

laura.fernandez@hoyngrokh.com

+ 34 915 218 586

Nos bureaux

Adresse:

C/ Príncipe de Vergara, 36, 5.º dcha.
28001 Madrid
Spain

Adresse postale:

C/ Príncipe de Vergara, 36, 5.º dcha.
28001 Madrid
Spain

Faits

Langues

Espagnol, Anglais, Français, Basque

Formations

Preparación de Oposiciones de Acceso a Carrera Judicial y Fiscal (Preparation for Public State Examinations to access Judgeship and State Prosecution Service) (1997-1999)

Universidad de Deusto, Bilbao, Escuela Práctica Jurídica (Legal studies, 1997)

Katholieke Universiteit Leuven (LLM International European Law, 1996)

Universidad de Deusto, Bilbao (Law and Business Administration, 1996)

Expertise

Biotechnologie & Produits biologiques Brevets CJUE & Litiges devant les cours suprêmes Commerce de détail & Biens de consommation Concurrence déloyale & Secrets d’affaires Dispositifs médicaux Droit d’auteur Licences en PI & Transfert de technologies Marques & Modèles Mode & Produits de luxe Produits pharmaceutiques Télécom & Réseaux Électronique, semi-conducteurs, informatique et logiciels Équipements industriels et de fabrication

Admis

1999