Jerome Spaargaren
Partner, European Patent Attorney
London
UPC Representative
he founder of EIP, with over 30 years of international patent prosecution and litigation experience, Jerome is frequently engaged by clients for his expertise in strategic patent prosecution. He has also been involved in numerous litigations in various territories, including the UK, Germany and the US.
As head of the EIP Digital practice group, Jerome works in a wide range of technologies in the electronics sector, including machine learning, computer vision, data processors, graphics, data compression, telecommunications, data storage, cloud computing, computer software, optics, autonomous vehicles and imaging systems. He also works in the mechanical arts including medical devices and packaging machinery.
Jerome has been a member of the Chartered Institute of Patent Attorneys (CIPA) Patent Law Committee and represented CIPA before the Standing Committee on the Law of Patents at the World Intellectual Property Organization in Geneva to negotiate the Patent Law Treaty (2000).
In addition to his work as a patent attorney, Jerome is an inventor of an automated bookmark, the iMark, and various location-based technologies.
Experience
- 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
Education and qualifications
- European Patent Attorney
- UK Chartered Patent Attorney
-
1993 — 1994
Post-Graduate Certificate in Intellectual Property Law, Queen Mary, University of London -
1988 — 1991
MA Physics (First Class), Oxford University -
1983 — 1988
Ysgol Aberconwy, Conwy, North Wales -
1981 — 1983
Hale School, Perth, Western Australia
Career history
- 2000 — present
Founder, EIP: Specialists in high-value and complex patent matters - 1995 — 2000
Partner, RGC Jenkins & Co, London - 1992 — 1995
Associate, Bailey Walsh & Co, Leeds
Languages spoken
- English
- Dutch (Proficient)
- German (Basic)
- French (Basic)
- Hungarian (Basic)
