Jerome Spaargaren

Partner, UK and European Patent Attorney
London, EIP Europe LLP

With 23 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 litigation issues 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 mobile communications, computer systems, high tech optics and various medical technologies.

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 vs. Apple (Northern District of California). Acted for patent owner as global prosecution counsel in relation to post-grant proceedings
  • Unwired Planet vs. Google (District of Nevada). Acted for patent owner as global prosecution counsel in relation to post-grant proceedings
  • Unwired Planet vs. Apple, RIM (International Trade Commission, Washington DC). Acted for patent owner as patent counsel
  • Visto vs. 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
  • Visto, European Patent Office, Examination Proceedings. 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 Ltd. 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
  • Orange Personal Communications Services Ltd. Global lead prosecution counsel 2005-2007
  • British Telecommunications, plc. Prosecution counsel, drafting two patents relating to keyword search technology which have subsequently been litigated (BT vs. Google)
  • Hamamatsu Photonics K.K. Appeal from Examination (European Patent Office.) Lead prosecution counsel for patent owner. Patent owner was held to be entitled to file one or more auxiliary requests in addition to a main request, and to maintain all such requests
  • Nikon Corporation. European prosecution counsel for patents relating to various technologies such as camera exposure control and lithography
  • Koninklijke Philips N.V. Drafting counsel for patents relating to optical discs and medical technologies

Recent work

  • Acting for Unwired Planet International Limited in patent and FRAND litigation against Google, Samsung & Huawei (patents concerning Android, 2G, 3G and LTE technologies).

Published articles

  • 1998; Volume 20; No 8
    European Intellectual Property Review (EIPR), A Conventional Way to Reduce Costs in the European Patent System

Education and qualifications

Jerome was one of the youngest people ever to pass the qualifying examinations for UK patent attorneys.

  • 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
    Partner, EIP, London
  • 1995 — 2000
    Partner, RGC Jenkins & Co, London
  • 1992 — 1995
    Associate, Bailey Walsh & Co, Leeds

Awards and recognition

  • Legal 500, 2018: Recommended Patent Attorney (link)
  • Ranked as "Patent Star", IP Stars 2018 (link)
  • IAM Patent 1000, 2018. "Electronics whizz Spaargaren loves working with computer systems, high-tech optics and exciting new software." (link)
  • 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." (link)
  • 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".
  • Ranked in IP Stars 2016
  • Legal 500, 2015. "Jerome Spaargaren is highly recommended"
  • Chambers & Partners, 2015. Band 1. "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)
  • German (Basic)
  • French (Basic)
  • Hungarian (Basic)