Dr. Beatriz San Martin has extensive experience in intellectual property matters with a particular focus on innovative and emerging technologies, particularly within the life sciences sector, as well as technology enabled solutions. She is sought after for her strategic input on the interplay and enforcement of intellectual property rights and trade secrets, her niche SPC experience, and her specialist knowledge of international treaties relating to genomic resources such as the Nagoya Protocol.
Her disputes practice is varied with significant and high-profile experience handling cases before the UK Courts and the Court of Justice of the European Union, coordinating cross-border European litigation and assisting in multinational arbitrations. She robustly manages and resolves disputes relating to the full spectrum of intellectual property rights, assists clients on challenging technical issues and provides strategic IP advice.
Prior to pursuing a legal career, Beatriz was a scientist with a degree, Ph.D. and postdoc specialising in genetics, cellular and molecular biology. This interest and passion in science and technology has broadened during the course of her legal career through her varied work with clients and involvement in trade associations.
She has been privileged to work on matters concerning a wide range of technologies - from pharmaceuticals and biotech to insulation products, from fintech services to agrochemicals, from software based platforms to medical instrumentation, from mosquito nets to digital technology. Most recently she has developed niche expertise in matters relating to gene editing and GMOs, as well as the implementation of the Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from their Utilization.
Beatriz is the current secretary of the UK IPLA and is highly regarded in the IP community. She is recognized by numerous ranking bodies and organisations, including Chambers and The Legal 500, for being "much sought after as a patent litigator for her extensive knowledge of pharmaceutical patents and SPCs" and being someone who "impresses in sophisticated patent and confidential information cases". Clients have described her as "a very creative, thoughtful litigator" who "excels in managing complex, multi-jurisdictional cases."
She is fluent in Spanish.
Experience
- Leading manufacturer of synthetic DNA in patent infringement and confidential information disputes in the USA and in Europe.
- Fortune 500 multinational life sciences conglomerate in arbitration proceedings in which the licensor sought nearly US$100 million dollars by way of outstanding royalty payments from a patent licence.
- Global pharmaceutical company on preliminary injunction applications in multiple jurisdictions relating to the protection of confidential information.
- Multinational technology company in a significant dispute relating to the provision of IT platform services.
- Global manufacturer of ingredients and pharmaceutical excipients in several trade mark oppositions.
- Global pharmaceutical corporation on notification requirements and procedure for parallel relating to imports by parallel traders.
- Fintech company in its global brand management protection and enforcement strategy.
- Global education and travel organization in an IP dispute regarding a collaboration with a UK University.
- Representing various charities and not-for-profit organisations pro bono in branding disputes with third parties and providing advice on trade mark prosecution strategy.
- First-chair counsel in two Supplementary Protection Certificate (SPC) revocation actions, both of which included a preliminary reference to the Court of Justice of the European Union.
- Global agrochemical business on technical aspects of breach of contract and misuse of confidential information proceedings.
- Global IT services company in a copyright infringement proceedings relating to a software product.
- Advising in a significant trade mark dispute which turned on whether the relevant trade marks were geographically descriptive.
- Assisting in long-running confidential information litigation concerning long-lasting insecticidal nets. The liability action went all the way up to the Supreme Court on a discrete point. The case also included an inquiry as to damages.
- Representing a global medical device company on its patent litigation strategy in the UK regarding a product incorporating digital technologies.
- Representing a global pharmaceutical company in several patent revocation actions concerning biologics.
- Advising an insulation company in a patent infringement and invalidity action concerning a phenolic foam insultation product.
- Assisting in a patent infringement and invalidity action concerning an autoinjection delivery system.
Perspectives
Recognition
Intellectual Property: Patent Litigation — London (2019-2022)
Life Sciences and Healthcare (2021-2023)
Life Sciences — Patent Litigation (2021-2023)
Credentials
Education
- Ph.D., Genetics, Cellular and Molecular Biology, University of Cambridge
- Post-Graduate Diploma in Law, BPP University Law School
- M.A., University of Cambridge
- Legal Practice Course, BPP University Law School
- Diploma, Intellectual Property Law and Practice, Bristol University
Admissions
- England and Wales
Activities
- Member, WG 9 & 10 Steering Committee (Patent Litigation), Sedona Conference
- European Lawyers' Association (EPLAW)
- Chartered Institute of Patent Attorneys (CIPA)
- Member, IP Inclusive Advisory Board
- Member, Nagoya Protocol Sub-Committee, UK BioIndustry Association
- Member, Engineering Biology Advisory Committee, UK BioIndustry Association
- Committee Member, Intellectual Property Lawyers' Association (IPLA)
- Member, the International Association for the Protection of Intellectual Property (AIPPI)
- Member, The Law Society, England & Wales
Languages
- Spanish