Dr. Beatriz San Martin focuses her intellectual property practice on the life sciences sector and innovative technologies, with niche SPC experience. She effectively manages and resolves disputes, assists clients on challenging technical legal issues and provides strategic IP advice.

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, as well as assisting in multinational arbitrations. Besides her patent and SPC experience, she has also handled disputes and matters covering the full breadth of intellectual property rights including trademarks, database rights, copyright, design rights and trade secrets.

Prior to pursuing a legal career, Dr. San Martin was a scientist with a degree, PhD 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 to insulation products, from fintech services to agrochemicals, from software based platforms to medical instrumentation, from mosquito nets to digital technology.

Dr. San Martin is recognized by a number of 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."

Dr. San Martin is fluent in Spanish.

Experience

  • Sandoz v G.D. Searle and Janssen Sciences Ireland. First-chair counsel in a Supplementary Protection Certificate (SPC) revocation action relating to an antiretroviral used for the treatment of HIV which included a preliminary reference to the Court of Justice of the European Union.
  • Assisting a global agrochemical business on technical aspects of breach of contract and misuse of confidential information proceedings.
  • First-chair counsel on behalf of global IT services company in a copyright infringement proceedings relating to a software product.
  • First-chair counsel on a trade mark dispute on behalf of a global educational company.
  • First-chair counsel in a significant trade mark dispute which turned on whether the relevant trade marks were geographically descriptive.
  • Vestergaard Frandsen v Bestnet Europe Ltd. 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.
  • Eli Lilly v Human Genome Sciences. Representing Eli Lilly in an SPC case seeking declaratory relief preventing HGS from obtaining an SPC by relying on a marketing authorisation for an antibody product developed by Eli Lilly. The case included a preliminary reference to the Court of Justice of the European Union.
  • Kingspan v Xtratherm. First-chair counsel on behalf of Xtratherm in a patent infringement and invalidity action concerning phenolic foam insultation product.
  • Eli Lilly v Biogen. Representing Eli Lilly in a patent revocation action concerning a biologic.
  • Assisting in a patent infringement and invalidity action concerning an autoinjection delivery system.

Perspectives

NHS v Servier: Unlawful Means Tort Claim Fails, But The Long-running Saga Continues
Life Sciences Intellectual Property Review
AI and IP: Implications for Digital Health From Possible Reforms to UK IP Law
BioSlice Blog
Waiving vaccine patents will create more problems than it solves
The Times
Chambers Global Practice Guide: Life Sciences
Chambers and Partners, UK
Business Insight: Cell & Gene Therapy (pdf)
Cell & Gene Therapy Insights, Business Insight: February 2021
More

Recognition

The Legal 500 UK
Intellectual Property: Patents (Contentious and Non-Contentious) (2021-2022)
Life Sciences and Healthcare (2021-2022)
IAM Patent 1000
Litigation (UK) (2021)
Managing Intellectual Property
"IP Star" (United Kingdom) (2019-2021)
More

Credentials

Education
  • PhD, Genetics, Cellular and Molecular Biology, University of Cambridge
  • Post-Graduate Diploma in Law, BPP University Law School
  • MA, University of Cambridge
  • Legal Practice Course, BPP University Law School
  • Diploma, Intellectual Property Law and Practice, Bristol University
Admissions
  • England and Wales
Activities
  • Committee Member, Intellectual Property Lawyers' Association (IPLA)
  • Chartered Institute of Patent Attorneys (CIPA)
  • European Lawyers' Association (EPLAW)
  • Member, Cellular and Gene Therapy Advisory Committee, UK BioIndustry Association
  • Member, Engineering Biology Advisory Committee, UK BioIndustry Association
  • American Intellectual Property Lawyers' Association (AIPLA)
  • Member, The Law Society, England & Wales
  • Member, The Law Society of Ireland
Languages
  • Spanish
Overview

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