BARDEHLE PAGENBERG Team
Mathieu de Rooij
M.Sc. Aerospace Engineering

Spanish and European Patent Attorney, UPC
Representative, Partner
Location Barcelona
Languages: German, English, French, Spanish, Italian, Dutch,+34 93 4 57 61 94
derooij@bardehle.esMathieu de Rooij’s practice is focused on oppositions and appeals before theEuropean Patent Office as well as patent drafting and patent prosecution. He isparticularly active in the fields of renewable energy, medical devices, metalforming and automotive technology, but his practice includes a wide range oftechnologies 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 partnerin 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 validityand/or infringement of patents in Spanish court proceedings.
He has also been active as speaker explaining EPO practice regarding a variety oftopics, 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.

Legal Areas
Patent Litigation

Patent Prosecution

Oppositions and Nullity

Due Diligence

Unitary PatentUnified Patent Court

Industries

Mechanical Engineering

Electrical Engineering

Medical Devices

Software, IT & Computer Technology

Physics

Automotive

Recommended in

Mathieu de Rooij, a pivotal figure renowned for his profound expertise in EPO oppositions andappeals. Drawing on his prior experience as an EPO examiner, he contributes a uniqueperspective and nuanced understanding of procedures to skilfully navigate pan-European
disputes.
IAM Patent 1000, 2024

Mathieu de Rooij is the key contact for Barcelona – a thoughtful, thorough and zealous
professional. He is regularly sought out for his profound expertise in oppositions and appeals
at the EPO and effectively capitalises on his previous experience as an EPO examiner tosecure total protection for his clients’ inventions.
IAM Patent 1000, 2023

Mathieu de Rooij is a highly sought-after technical adviser with extensive knowledge andexperience, particularly in pan-European disputes. He considers all possible avenues to cometo a solution, and has a keen ability to make prudent strategic decisions that ultimately
benefit his clients’ commercial goals.
IAM Global Leaders 2023

Mathieu de Rooij, a former EPO examiner who knows exactly how to get applications throughto grant, especially in the automotive sector. Those who have worked with him have only
positive things to say: “Every collaboration with Mathieu is seamless – he is clever, pleasantand just a joy to work with.”
IAM Patent 1000, 2021

Super-smart and collaborative, Mathieu de Rooij ›grasps the nuances of the technologies athand and gets patents granted in a quick turnaround‹.
IAM Patent 1000, 2020

Electromechanics maestro de Rooij is described as ›very competent and skilled, great to workwith, challenging and always engaging, an intuitive thinker with a rational, practical mind‹.
IAM Patent 1000, 2019

Mathieu de Rooij is an outstanding professional; he always offers fast and efficient answers
to all requests.
Client Choice: Intellectual Property, Patents

It is extremely easy and efficient to work with him; he has in-depth technical knowledge,experience and ability to understand clients' needs.
Client Choice: Intellectual Property, Patents

He provides well-thought-out strategies for different issues; he is always ready to support hisclients and acts like a true partner.
Client Choice: Intellectual Property, Patents

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 EPOand epi. Speaker at events in the Hague, Lisbon, Madrid and Riga
Tutor in Guidelines2Day & Article 84 Roadshow 2015 - 2016, speaker atevents in Berlin and Barcelona
Teacher in “Postgraduate in Development of Product EngineeringProjects”, 2017 - 2019, in collaboration with Universidad Politècnica deCatalunya, 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 "PatentCentre" of University of Barcelona in 2011 - 2013
Tutor in “Advanced Course on Patents, module on Computer
Implemented Inventions and software”, organized by Spanish Patentand 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”) organizedby Spanish Patent and Trademark Office and "Patent Centre" ofUniversity 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 PatentCourt; Madrid 2016 and 2018 (Analysis of legal situation, practicalexercise)

Publications
IAM Yearbook 2014: "The use and misuse of Spanish Utility models"
IAM Yearbook 2015: "Beyond the Unitary patent: Nothing new under theSun?"
IAM Yearbook 2016: “Adjusting the pace of patent applications andcutting 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 yourfilings and rights”

Curriculum Vitae

2023

Registration as a Representative before the UPC

2019 - today

Partner at BARDEHLE PAGENBERG in Barcelona, Spain

2011 - 2019

Partner at ZBM Patents & Trademarks, Barcelona, Spain

2011

Diploma on Patent Litigation in Europe from CEIPI2008 - 2019

European Patent Attorney at ZBM Patents & Trademarks, Barcelona,Spain

2007

Passed European Qualifying Examination

2002 - 2008

Patent Examiner at the European Patent Office, in the field of Civil
Engineering & Thermodynamics, The Hague, Netherlands

1995 - 2001

Master of Science in Aerospace Engineering, Delft University ofTechnology, Delft, Netherlands