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Latin America Guide 2023

Ranked in 1 Practice Areas
2
Intellectual Property
10 Years Ranked
Ranked in Guides

About

Provided by Simon Valverde

Latin America

Education

University of Costa Rica (UCR)

Law Degree

Universidad Autónoma de Centroamérica

Post-graduate Studies in Notary Law

University of New Hampshire

LL.M in Intellectual Property, Commerce and Technology Degree

Practice Areas

Intellectual Property and Lifesciences Law

Career

- Law Degree from the University of Costa Rica (UCR).

- Post-graduate Studies in Notary Law from the Universidad Autónoma de Centroamérica.

- LLM in Intellectual Property, Commerce and Technology Degree from the University of New Hampshire (formerly Franklin Pierce Law Center).

Professional Memberships

- Member of International Bar Association (IBA)

- Costa Rican Bar Association.

- International Trademark Association (INTA).

- Costa Rican Association of Intellectual Property Professionals (APPICR)

Publications

Co-authored the Costa Rican Chapter of Trademarks, the book of the collection Chambers Global Practice Guides, a 2018 publication by Chambers and Partners

Co-authored the Costa Rican Chapter of Patent Litigation, the book of the collection Chambers Global Practice Guides, a 2018 publication by Chambers and Partners

Co-authored the Costa Rican Chapter of Patents, the book of the collection Getting the Deal Through, a 2017 publication by Law Business Research Ltd

Are you using correctly your mark in Costa Rica Lexology, March 6, 2014

The effectiveness of patent examiner interviews. Lexology, September 12, 2013

Personal

Simon has been a professor at several universities since 2012 as he is passionate about preparing new generations of lawyers to excel at Intellectual Property Law. His current courses include Patents at Universidad Estatal a Distancia de Costa Rica, and Intellectual Property courses at ULead in the Corporate Law Master's Degree and at the National University in the Innovation Management Master's Degree.

Languages Spoken

Spanish and English

Clients

Biotechnology, Pharmaceutical and Retail industries.

Experience

Simón Valverde is a partner. He is commonly identified as one of the leading authorities in Intellectual Property in Costa Rica. He was counsel for the Vice-Dean’s Office of Investigation at the Universidad de Costa Rica, responsible for intellectual property, technology and knowledge transfer of the university. Attorney Valverde is a founding member and past Director of the Costa Rican Association of Intellectual Property Professionals (APPICR). Mr. Valverde has directed prosecution of a large percentage of the patent applications filed by the firm in Costa Rica, attending more than 100 interviews with patent examiners, by far the largest number of any patent professional in Costa Rica.

Attorney Valverde successfully litigated at the judicial courts (Tribunal Contencioso Administrativo), together with attorney Luis Diego Castro, the two cases that set the current standard of what should be included in a patent examiner’s review of a patent application and set the mandatory use of the Patent Examination Guidelines, of discretionary use by examiners before that decision. On behalf of APPICR organized and coordinated, jointly with the Patent Office, two seminars on patent examination guidelines and examination of pharmaceutical patents. Advised the Costa Rican Patent Office during the process to draft the new bylaws to the Costa Rican Patent Law (Reglamento a la Ley de Patentes No. 6867). He also provides advice in trademark, trade secret and copyright matters to Fortune 500 companies as well as to public institutions and individuals.

Since 2011 he is a faculty member of the Intellectual Property course of the Criminal Law Master Degree program at Universidad Latina of Costa Rica (a member of the Laureate International Network) and currently he is faculty member and technical expert in the changes to the curriculum of the Intellectual Property Master Degree program at Universidad Estatal A Distancia de Costa Rica (the only such program in Costa Rica).

Industry Sector Expertise

Intellectual Property

Expert in these Jurisdictions

Costa Rica

Work Highlights

Among lawyers with most successful examination interviews in Patent Applications in Costa Rica

Attorney Valverde successfully litigated at the judicial courts (Tribunal Contencioso Administrativo), together with attorney Luis Diego Castro, the two cases that set the current standard of what should be included in a patent examination review of a patent application and set the mandatory use of the Patent Examination Guidelines, of discretionary use by examiners before that decision. Resolutions 62-2013-VII and 106-2013-IV.

Attorney Valverde successfully litigated at the judicial courts a case of copyright infringement obtaining an important monetary award for his client and set a precedent about use of Internet images in advertisement in Costa Rica. Exp. 11-000235-0181-CI

Chambers Review

Provided by Chambers

Latin America

Intellectual Property - Costa Rica
2
Band 2

Partner and department co-head Simon Valverde is endorsed by commentators of the Costa Rican market, with one interviewee declaring: "He is one of the most reliable, personable and responsive international IP lawyers I have worked with." Another respondent states: "Simon Valverde is prompt, provides clear and accurate counselling, and consistently goes out of his way to provide additional advice to me."

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