Mathieu de Rooij
M.Sc. Aerospace Engineering
Mathieu de Rooij’s practice is focused on oppositions and appeals before the European Patent Office as well as patent drafting and patent prosecution. He is particularly active in the fields of renewable energy, medical devices, metal forming and automotive technology, but his practice includes a wide range of technologies involving mechanical engineering, aerodynamics, electronics and electrical engineering.
He joined Bardehle as a partner to head the Barcelona office of BARDEHLE PAGENBERG after a career as an EPO Examiner and almost a decade as a partner in private practice in Spain. During his years at the EPO, he gained privileged insights into the EPO, its procedures and particularly the minds of examiners.
Mathieu de Rooij also assists clients in infringement cases and disputes spanning multiple jurisdictions, and regularly acts as a technical expert on the validity and/or infringement of patents in Spanish court proceedings.
He has also been active as speaker explaining EPO practice regarding a variety of topics, in collaboration with the EPO and its Boards of Appeal, and frequently lectures on European patent practice in Spain.
Mathieu de Rooij received the Client Choice Award for Patent Law in Spain in 2015 and 2019 as well as the Client Choice Award for Patent Law in Europe in 2017. He has been highly recommended in IAM Patent 1000 for many years.
Spanish and European Patent Attorney, UPC Representative, Partner
Location: Barcelona
Languages: German, English, French, Spanish, Italian, Dutch, Catalan
As a patent attorney, I am lucky: I get to see the latest developments of different technologies. I study each case from every possible angle, looking at technical, legal, strategic, and economic aspects. This is so interesting that I simply cannot put a case down before reaching the best possible solution for my clients.
Recommended in
Lectures & Seminars
Speaker in Case Law Seminar Roadshow, 2018 – 2019, organized by epi (institute of professional representatives) and supported by the EPO Boards of Appeal, London, Barcelona, Oslo, Warsaw
Tutor in Guidelines2Day & Article 123(2) Roadshow 2014 - 2015, organized by European Patent Academy in collaboration with the EPO and epi. Speaker at events in the Hague, Lisbon, Madrid and Riga
Tutor in Guidelines2Day & Article 84 Roadshow 2015 - 2016, speaker at events in Berlin and Barcelona
Teacher in “Postgraduate in Development of Product Engineering Projects”, 2017 - 2019, in collaboration with Universidad Politècnica de Catalunya, BarcelonaTech
Tutoring, including video tutorials and online exercises for Massive Open Online Course “Patents, Patentability and Patent Infringement” offered by Institute for Sustainable Energy, 2016 - 2019
Tutor in "Advanced Course on Patents, interdisciplinary module”, 2011 – 2013, organized by Spanish Patent and Trademark Office and "Patent Centre" of University of Barcelona in 2011 - 2013
Tutor in “Advanced Course on Patents, module on Computer Implemented Inventions and software”, organized by Spanish Patent and Trademark Office and "Patent Centre" of University of Barcelona in 2011, 2012, 2013, 2015, 2017 and 2019
Regular speaker at "Lunes de Patentes" (“Patent Mondays”) organized by Spanish Patent and Trademark Office and "Patent Centre" of University of Barcelona 2010 - 2017
CEIPI tutor in CEIPI basic course Barcelona 2013, 2015, 2017 and 2019 (patent searching and patent information from registers); Barcelona 2014 (European grant, validation and Unitary Patent and Unified Patent Court; Madrid 2016 and 2018 (Analysis of legal situation, practical exercise)
Publications
IAM Yearbook 2014: "The use and misuse of Spanish Utility models"
IAM Yearbook 2015: "Beyond the Unitary patent: Nothing new under the Sun?"
IAM Yearbook 2016: “Adjusting the pace of patent applications and cutting costs at the EPO”
IAM Yearbook 2017: “Effective use of the Patent Cooperation Treaty”
Europe IP FOCUS 2017: “How the new Spanish Patent Law affects your filings and rights”
Registration as a Representative before the UPC
Partner at BARDEHLE PAGENBERG in Barcelona, Spain
Partner at ZBM Patents & Trademarks, Barcelona, Spain
Diploma on Patent Litigation in Europe from CEIPI
European Patent Attorney at ZBM Patents & Trademarks, Barcelona, Spain
Passed European Qualifying Examination
Patent Examiner at the European Patent Office, in the field of Civil Engineering & Thermodynamics, The Hague, Netherlands
Master of Science in Aerospace Engineering, Delft University of Technology, Delft, Netherlands