Jerome Spaargaren

Partner, UK and European Patent Attorney
London

Jerome Spaargaren

Jerome Spaargaren is a distinguished patent attorney with over three decades of experience in intellectual property law. He is EIP's founder and head of the digital technology group.

At the core of Jerome's approach is a commitment to clear communication and strategic planning. He prides himself on his ability to translate intricate legal concepts into understandable advice, helping clients navigate the patent landscape with confidence. His practice areas include UK, UPC and multinational litigation, patent drafting and prosecution, EPO oppositions, portfolio management and counselling.

Jerome's dedication to excellence in patent law is one that is passed on to younger attorneys at EIP in his everyday practice. He believes in staying ahead of the curve in legal trends and technological advancements to provide the most comprehensive and forward-thinking advice to his clients.

Experience

  • Optis v Apple. Technical litigation counsel in relation to validity and infringement of certain standard essential patents (SEPs) in the UK trials in the High Court and the Court of Appeal (patents concerning 3G and LTE technologies). (link)
  • Unwired Planet. Technical litigation counsel in standard essential patent (SEP) litigation in the UK and Germany against Huawei (patents concerning 3G and LTE technologies), leading up to the landmark UK Supreme Court judgement on FRAND issues. In Unwired Planet vs. Google (District of Nevada), acted for patent owner as global prosecution counsel in relation to post-grant proceedings at the USPTO.
  • Conversant. Technical litigation counsel in relation to validity and infringement of certain standard essential patents (SEPs) as part of representing Conversant in its successful High Court proceedings against Huawei and ZTE.
  • Arm. Leading a prosecution team acting for the leading technology provider of processor IP in the field of AI and machine learning processor architectures.
  • Align Technology v Clearcorrect. Acted for defendant in infringement proceedings in the High Court in the UK and in EPO oppositions, relating to clear orthodontic aligners.
  • Visto v Research in Motion. Acted for patent owner in international litigation relating to email synchronization technology, resulting in a $267.5 million settlement in favour of patent owner Lead prosecution counsel in heavily contested proceedings resulting in the grant of three key European patents relating to email synchronization technology.
  • Orange Personal Communications Services. Global lead prosecution counsel 2005-2007. Appeal from Opposition by Swisscom (European Patent Office.) Lead prosecution counsel for patent owner, standard essential patent relating to SIM card technology, resulting in patent being upheld
  • British Telecommunications. Prosecution counsel, drafting two patents relating to keyword search technology which have subsequently been litigated (BT v Google)
  • Hamamatsu Photonics. Appeal from Examination (European Patent Office.) Lead prosecution counsel for patent owner. Now established case law in relation to maintaining auxiliary requests during first instance proceedings.
  • Nikon. European prosecution counsel for patents relating to various technologies such as camera exposure control and lithography
  • Koninklijke Philips. Prosecution counsel for patents relating to optical discs and medical technologies

Recent work

  • From 2022 has provided pre-action and ongoing technical and legal support in relation to infringement and validity, acting for Nokia Technologies in various patent disputes. (link)

Published articles

  • February 2024
    EIP Updates, Deletion of “claim-like” clauses: an EPO Board of Appeal allows them to remain in the granted patent (T 0438/22) (link)
  • 1998; Volume 20; No 8
    European Intellectual Property Review (EIPR), A Conventional Way to Reduce Costs in the European Patent System

Education and qualifications

  • UPC Representative, 2023
  • European Patent Attorney, 1995
  • UK Chartered Patent Attorney, 1994 (one of the youngest ever to pass the qualifying examinations)
  • 1992 — 1993
    Post-Graduate Certificate in Intellectual Property Law, Queen Mary, University of London
  • 1988 — 1991
    MA Physics , Oxford University
  • 1983 — 1988
    Ysgol Aberconwy, Conwy, North Wales
  • 1981 — 1983
    Hale School, Perth, Western Australia

Career history

  • 2000 — present
    Founder, EIP
  • 1995 — 2000
    Associate/Partner, RGC Jenkins & Co, London

Awards and recognition

  • Recommended in JUVE Patent UK rankings 2024. (link)
  • Legal 500, 2024 (link)
  • IAM Patent 1000, 2023. 'One of its founders, Jerome Spaargaren has 30 years’ experience; he heads the ensemble’s digital practice group and takes on a wide range of technologies. His lengthy experience in the patent world makes him particularly well placed to advise on strategic implications and the enforcement landscape.' (link)
  • Ranked as a 'Patent Star', IP Stars 2023
  • Recommended in JUVE Patent UK rankings 2023. (link)
  • Recognised as IAM Global Leaders 2023 (link)
  • Ranked Lawyers Intellectual Property: Patent Attorneys Band 1, Chambers and Partners, 2023 "Jerome Spaargaren is so sharp. He provides solid advice quickly when time really matters. It is a relief to have someone like Jerome to call upon."
  • Ranked as 'Highly recommended' in Patent prosecution in UK, Leaders League 2022
  • Recommended in Who's Who Legal, IP - Patent Agents & Attorneys 2022 (link)
  • Recommended in IAM Patent 1000, 2022. (link)
  • Ranked as a "Patent Star", IP Stars 2022 (link)
  • Recommended in JUVE Patent UK rankings 2022. (link)
  • Ranked Lawyers Intellectual Property: Patent Attorneys Band 1, Chambers and Partners, 2022
  • Legal 500, 2022. (link)
  • Recommended in Who's Who Legal: IP 2021. (link)
  • Ranked as 'Highly recommended' in Patent prosecution in UK, Leaders League 2021 (link)
  • Recommended in IAM Patent 1000, 2021. (link)
  • Ranked as a "Patent Star", IP Stars 2021 (link)
  • Recommended in JUVE Patent UK rankings 2021. (link)
  • IAM Global Leaders, 2021 (link)
  • Leading Individuals Band 1, Chambers and Partners, 2021, "Jerome is a quick and deep thinker, and his ideas are full of originality."
  • Legal 500, 2020. Jerome ‘is readily available and always provides useful insight into complex matters.’
  • IAM Patent 1000, 2020. Jerome "brings personal skill and insight as an inventor to the table for clients." (link)
  • Recommended in Who's Who Legal Patents, 2020. (link)
  • Ranked as a "Patent Star", IP Stars 2020 (link)
  • Recommended in Juve Patent, 2019 for digital communications, electronics (link)
  • Chambers and Partners, 2020: Jerome “is feted for his expertise in semiconductor science, optics and medical devices”.
  • Legal 500, 2020
  • Ranked as a "Patent Star", IP Stars 2019 (link)
  • IAM Patent 1000, 2019. "Jerome Spaargaren heads up the digital group and is renowned for his outstanding telecoms and medical technology insight." (link)
  • Recommended Patent Attorney, Legal 500, 2018
  • Ranked as "Patent Star", IP Stars 2018
  • IAM Patent 1000, 2018. "Electronics whizz Spaargaren loves working with computer systems, high-tech optics and exciting new software."
  • Chambers & Partners, 2017: Jerome is "noted for his command of hi-tech electronics, medical device and optic technologies" and has an "innovative approach to patent prosecution."
  • Legal 500, 2017: Jerome "attracts praise for his ‘extensive technical capability, which enables him to understand core aspects of technical matters at hand’."
  • Ranked as a "Patent Star" and "highly recommended", IP Stars 2017
  • IAM Patent 1000, 2017. "Multinational semiconductor and software design company ARM is in safe hands under the guidance of digital practice group head Jerome Spaargaren."
  • IAM Patent 1000, 2016. Jerome "is an authority on computer systems, high-tech optics and various medical technologies".
  • Legal 500, 2015. "Jerome Spaargaren is highly recommended"
  • Leading Individuals Band 1, Chambers & Partners, 2015. "Jerome Spaargaren leads the firm's digital practice group and concentrates on work concerning mobile telephony, optics, computer systems and medical technology."
  • IAM Patent 1000, 2015. "Spaargaren shines in the strategic patenting of electronic innovations."
  • Legal 500, 2014.
  • IAM Patent 1000, 2014. "Melding style and substance, Jerome Spaargaren works his strategic magic across the contentious/non-contentious divide."
  • Legal 500, 2013.
  • Chambers & Partners, 2013. "Jerome Spaargaren is renowned for his dynamism and talent, especially with regard to communications, medical technology and software."
  • IAM Patent 1000, 2013. "the "superb" Jerome Spaargaren is a "maverick performer with a strong character" who shines in international prosecution."
  • IAM Patent 1000, 2013. "Jerome Spaargaren wins great acclaim for fostering an innovative and entrepreneurial culture."

Languages spoken

  • English
  • Dutch (Proficient)

Specialisms

Digital

  • AI
  • Audio codecs
  • Automotive electronics
  • Computer hardware
  • Image and signal processing
  • Medical imaging
  • Robotics
  • Telecommunications
  • Video codecs

Dynamics

  • Robotics

HealthTech

  • Medical imaging