Intellectual Property Strategies
Highly specialized staff
Innovation Management advice

In today's market, observing the tip of the iceberg is a simple task. However applying a business strategy that exploits the submerged portion is a much more challeging task. Mertz Perú,
IP Thinking










MERTZ: Intellectual Property strategy and Innovation Management








¿Why Mertz?

At MERTZ we devote ourselves to identifying and protecting the Intellectual capital of our clients. Our added and differentiating value lies in the strategic and multidisciplinary approach to Intellectual capital management of our professionals. We focus in transforming our clients' IP portfolios into a competitive advantage at the economic, legal or technical differential level.

Since MERTZ has been set up until now, we have been ranked by the french agency Leaders Leagues “high recommended firm” in several categories as “IP Litigation” , “Patent Prosecution”, PBR, Trademark prosecution .

We are the only Peruvian provider authorized by Minesoft, global patent information solutions provider, serving more than 40,000 users worldwide.

 

mine

 

Mission

To become a strategic partner for Latin American companies, institutions and universities in the management of R+D+i, offensive and defensive protection of its Intellectual Property and Technology Transfer thereof..

Vission

To be the first peruvian consultancy on Innovation Management, Intellectual Property Rights and Technology Transfer in the country and abroad matters.

 








Staff








Claudia Fernandini Valle Riestra

Founding Partner-CEO

 

 

Attorney licensed at the bar of Peru, graduated from the University of Lima. MBA by the Pacific University, Diploma in Innovation Management by the Cayetano Heredia Peruvian University and Leipzig University, currently studying a Master in Innovation Project Management at the Southern Scientific University (UCSUR).

She has extensive experience in strategy and management of Intangible Assets, IP Management, identification and protection of Trade Secrets, Special Consultant for the implementation of technological intelligence systems, IP litigation, Technology Transfer, among others in Peru and abroad.

With over 22 years’ experience in competition and Intellectual Property, Claudia has represented over 2000 patents applications, over 6000 trademarks matters, and has headed numerous projects on technological intelligence. Intellectual Property consultant for various institutions, her experience includes being a professor at the Master in Science and Technology at the Cayetano Heredia Peruvian University, thesis advisory, consultancy to the National Agricultural Innovation Program (PNIA), to the Direction of Innovation of the Peruvian Patent Office, to the CONCYTEC program named FONDECYT, to the development of the Intellectual Property framework for the country brand (PROMPERU).

Claudia Fernandini was a former General Director at Clarke Modet & C° Perú from the date it was incorporated until December 2014. Previously, she was the founder of Fernandini Abogados (acquired by Clarke Modet & C° Perú).




Stephany Soto Bendezu

Principal Partner- COO

 

 

Geneticist Biotechnology by San Marcos National University and is a member of the Peruvian College of Biologists. She holds a Master degree in Health Management from the University Inca Garcilaso de la Vega. Currently, Stephany is studying her second Master degree in Intellectual Property and Innovation at San Andres University – Argentina (co – organized by WIPO) and a PhD program in Economic Law at Internacional Iberoamericana University of Mexico.

She holds a Diploma in Intellectual Property and Transfer Technology from Licensing Academy of UC Davis – USA and Diploma in IP Law from Universidad del Pacifico - Peru. Also she coursed a specialization Academy - Industry linkage organized by the University of Cambridge and the Catholic University of Chile. Stephany has obtained several certificates in Plant Variety, Access to Genetic Resources, Traditional Knowledge, Patents and Technological Intelligence from The World Intellectual Property Organization (WIPO).

She is a specialist in IP Management on the whole range of IP rights (Patents, Industrial designs, Plant Varieties) on the whole process from application to the offensive-defensive strategies of protection (FTO, Validity, Patentability and Infringement Analysis), Stephany has been responsible for the IP portfolio management of important national and foreign companies.

Stephany Soto was a former Head of the Patent and Plant Variety Department at Clarke, Modet & Co. Perú until 2016. She is a regular speaker at conferences, national scientific meetings regarding Intellectual Property and Technological Innovation.




 

Yahir Delzo Lazo

Senior Associate

 

 

Candidate to Doctor in Industrial Engineering (San Marcos National University), Magister Scientiae in Agribusiness and Agricultural Engineer, both titles from the National Agrarian University of La Molina.

Yahir hold a several diplomas from national and international on innovation management and intellectual property: AENOR (Spain), Maryland University (USA), World Bank, WIPO, INDECOPI (Peru), International Training Center for Innovation (Panama), IPAE Innova (Peru).

He is a specialist in the management of R&D&i, with more than 15 years of professional experience, has been Executive Director of the IDi NETWORK, Head of the Evaluation and Selection Unit of FONDECYT (CONCYTEC), Project Executive in Innovate Peru, has worked in the University Directorate of Research, Science, Technology ( UPCH), assistant of the Research Office (UNALM), has been a consultant for various public and private entities, national and international. He has been a professor at the Master of Science and Technology Management (UPCH), and as a guest professor in the Master in Agribusiness of the UNALM (topics in innovation), he has participated in presentations and conferences on topics of his specialty.

Yajaira Saavedra

Associate

 

 

Professional in Law from the National University of San Marcos and Communicator by Toulouse Lautrec.

Specialist in Intellectual Property in undertakings, has advised scientific researchers in intellectual property and genetic resources; and as well as technological ventures of the 1551 Incubator of innovative companies in the UNMSM. He also participated in Consultancies for CONCYTEC: IP Management Guide and Technology Transfer, consultant; Evaluation and proposal of the legal framework of protection and exploitation of IP rights, published, research collaborator, year 2015; follow-up on the design and preparation of IP management documents and technology transfer for centers of excellence (2014). He has produced audiovisual productions related to research and innovation and collaborated as a communication consultant for the CITBM Center of Excellence in 2016.

Ysa publishes opinion notes for the magazine Actualidad Jurídica He has worked in the public and private sectors such as Indecopi and UNMSM, as well as in legal studies in areas of intellectual property and competition.

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José Mallma

Associate

 

 

Lawyer of Intellectual Property, Innovation and Competition.

Jose has a Maste degree r in Intellectual Property and Innovation by the San Andrés University - Argentina (Master's degree co-organized by the World Intellectual Property Organization - WIPO), and a Master degree in Law with a mention in Human Rights from the National University of San Marcos.

JHe hold a Diploma as Specialist in Intellectual Property Law and a Diploma as a Specialist in Consumer Protection from Universidad del Pacífico.

He has been working for more than 10 years a consultant specialized in Intellectual Property and Regulation.

Carlos Hoyos

Senior Patent Consultant

 

 

Chemical Engineer from Universidad de Los Andes, with over 15 years of experience doing patent searches, drafting and prosecution, has completed the courses on Patent Searching and Patent Drafting from WIPO.

Has worked with some of the larges IP Law firms in Colombia, drafting patent applications for the oil, chemical engineering, mechanical engineering and pharmaceutical sectors. Has experience prosecuting patent applications internationally, before WIPO and other.

Jonathan Valladolid

Patent Ingenieer

 

 

Bachelor in Electronic Engineering by San Luis de Gonzaga University. Jonathan has the following training: Installation of CCTV systems at the business and industrial level. installation of electronic security equipment (access control, master control panels, water, fire protection, detection). Management of service projects for electronic installation, preparation of quality dossier, drawing up plans, marketing, etc.

Router configuration course, Nateo, Forwarding, network course aimed at telecommunications. Also, he has taken patent courses by the World Intellectual Property Organization (WIPO) and now he is an engineering patent consultant at MERTZ.

 

 








Intellectual Property and Unfair Competition








Unfair Competition



Copyright and related rights



Distinctive Signs

Trademarks, trade names and slogans.

Geographical Indications



Inventive Modalities

Patents (FTO, Nullities, Oppositions) Industrial Designs, Utility Models.

Plant Breeder's Rights (prosecution and support for the DUS EXAMN.

Know-How and Trade Secrets.



Sui Generis

Advice on legislation of Genetically Modified Organism

Advice for contracts to Access to Genetic Resources and Licenses of Traditional Knowledge











Innovation and entrepreneurship Managament








We understand innovation as a cyclical process that has to be managed to ensure results that generate value to the organization, its members and society as a whole.

Likewise, the technological entrepreneurship (start-up) that may derive from it is considered part of the process.

At Mertz, we offer specialization and experience to collaborate with our clients in the development and implementation of different tools and services for R&D&i&e.

  • Intelligence and Technological Surveillance

    They are tools used to search, obtain and analyze the most relevant information for our interests in the technological environment, presented in the form of reports whose use facilitates decision making.

    Reports of the State of the Art, a sweeping of all the existing information even the date of a determined technology.

    Technical Opinion Reports, an analysis is carried out regarding whether the new technology meets the patentability requirements.

    Potential Business Development Reports, an analysis of the technological market is carried out.

    Reports and / or bulletins of technological surveillance for “ad-hoc” sectors.

    Technological Assessment.







  • Intangibles Assessment

    Intangible assets represent a broad set of assets of individuals, companies and organizations, among which intellectual property assets can represent the highest percentage of such intangible assets.

    Valuation of patents, trademarks, industrial designs, industrial secrets, etc.

    Royalties report.

    Economic valuation.

    Estimation of the Technology Readiness Level (TRL).







  • Transfer Technology

    Also called transfer of technology (TOT), is the process of transferring technology from the places and groups of its origination to wider distribution among more people and places. Often it occurs by concerted efforts to share skills, knowledge, technologies, methods of manufacturing, samples of manufacturing, and facilities among governments to universities and other institutions to ensure that scientific and technological developments are accessible to a wider range of users who can then further develop and exploit the technology into new products, processes, applications, and material or services.

    Memorandum of Understanding (drafting).

    Accompaniment in negotiations.

    Technological broke.







  • Technology Roadmap

    A technology roadmap is a plan that combines short, medium and long-term objectives with specific technological solutions to help achieve those objectives. This plan that applies to a new product, service or process, or to an emerging technology.









  • IP Due Diligence

    IP Due Diligence itself, will help to identify any gaps, wrinkles or defects, and will facility those gaps, wrinkles or defects being fixed, it is a document that can be presented to the licensee, venture capitalist or IP buyer that will do its own due diligence. The IP map will facility that due diligence, shortens its length, ensures that no defects are discovered and speeds up the time that it takes to do the negotiation.








  • Formulation and Management of R + D + i + e Projects

    We know the transaction costs that the management of innovation projects can mean within an organization. In Mertz we can help in the management of the projects, applying different management tools, progress reports, monitoring, and final reports.

    In addition, we are the ideal profesionals for the formulation of innovation projects and / or ventures, for public funds (Innóvate Peru, Fondecyt, PNIPA, PNIA, etc.) or private.








  • Capacity Formation

    Practical knowledge of the processes of intellectual property and the R&D&i&e management, generate value to be shared and socialized.

    For this, Mertz offers training under different modalities (workshops, courses, talks, sessions, etc.) in all its specialties, both in-house and external.







  • Innovation challenges and open innovation platforms

    One of the most used tools in open innovation is the challenges. Mertz takes care of intellectual property issues in these challenges, from the design.

    Accompaniment in innovation challenges, both in the launch and in the monitoring and participation.

    Development and implementation of intellectual property policies in the challenges, from the application (ideas) to the fulfillment of the challenges (contracts, due diligence, negotiation, etc.).














Creative Industries








Innovation in addition to understanding technological sectors also encompasses the orange economy (or creative), which is "set of activities that in a chained way allow ideas to transform into cultural goods and services, whose value is determined by their intellectual property content”. The orange universe is composed of: i) the Cultural Economy and the Creative Industries, in whose intersection are the Conventional Cultural Industries; and ii) support areas for creativity". marketing).

At Mertz Peru we offer cross-cutting services from the conception of the innovation project to the execution and development.

• Advice and consulting in intellectual property management in the creative industries.

• Identification, valorization and accompaniment in the formulation of artistic-cultural projects.

• Negotiation and drafting of contracts, agreements and other types of agreements.

• Management (strategies), Protection (registers) and Defence (litigation).








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Location



Calle Los Laureles 670, interior 8

San Isidro, Lima, PERÚ

Mail: info@mertzperu.com

Tel: +51 994 322 612


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INTELLECTUAL PROPERTY AND ENVIRONMENTAL LAW