Fernando García

Counsel

fgarcia@carey.cl
+56 2 2928 2665



Counsel of Carey’s Intellectual Property and Information Technology Group. His practice focuses on intellectual property, especially on invention patents, including strategies for protection mechanisms, administrative and contentious registration processes, nullity procedures for granted registrations, technology transfer projects, and trademark and patent infringement litigation.


REPRESENTATIVE EXPERIENCE

  • Novartis on a civil litigation for an invention patent infringement.
  • Otsuka Pharmaceutical on the defense of its invention rights regarding nullity actions of the patent registration filed in relation to an important pharmaceutical product.
  • Hewlett-Packard Development Company (HP) on the protection of its invention patent rights in Chile against potential infringements of such rights.
  • Grünenthal on a nullity remedy before the Supreme Court within the prosecution of a patent of invention for a pharmaceutical product.
  • SW Ingeniería Agrícola y Propiedad Intelectual on its defense regarding nullity actions filed against the registration of patents and on the execution of pre-judicial measures and actions for infringement of patent rights.
  • Automotriz Rosselot on the execution of nullity actions for the registration of trademarks.
  • Roche Chile on a claim before the Public Procurement Court for the illegality of the award of a public tender.
  • Wenco on the protection of its technologies through the defense of its patents against oppositions, nullity claims and actions for infringement of such patents.
  • Monster Energy on the defense of its trademark rights against infringements by third parties.
  • Duratray International on the protection of its patent portfolio both in Chile and abroad.
  • HyB on the defense of an invention patent against the filing of a nullity claim.
  • Algramo (UK) on the protection of its intellectual property with respect to a transactional technology platform.
  • Universidad Católica de Chile on the protection of its portfolio of invention patents and technology transfer projects.

AWARDS AND RECOGNITIONS

  • Named Lawyer of the Year in Advertising, Best Lawyers (2021 and 2023).
  • Recognized in Intellectual Property and in Life Sciences, Chambers Latin America.
  • Recognized in Intellectual Property, The Legal 500.
  • Recognized in Intellectual Property, Latin Lawyer 250.
  • Recognized in Advertising, Entertainment and Intellectual Property, Best Lawyers.
  • Recognized in World Trademark Review (WTR).
  • Recognized in Patents, IAM Patent.
  • Recognized in Intellectual Property and Life Sciences, Top Ranked Legal.

ACTIVITIES AND MEMBERSHIPS

  • Member of the Patents Committee, Inter-American Association of Intelectual Property, ASIPI (2023-2025).
  • Vicepresident, Licensing Executives Society (LES) Chile.
  • Member of the Chilean Intellectual Property Association (ACHIPI).
  • Professor of Intellectual Property, Copyright, Trademarks, Patents and Litigation, Universidad Andrés Bello (since 2017).
  • Professor of the Graduate Program and Master on Law and New Technologies, Universidad de Chile.
  • Professor of the Graduate Program of Intellectual and Industrial Property, Universidad Finis Terrae.
  • Head of the Legal Sub-Department, Chilean Industrial Property Department (1998-2000).
  • Member of the Legal Division of the Comptroller General of the Republic (1995-1996).
  • Member of the Chilean Bar Association.

PUBLICATIONS

  • Co-author of The Pharma Legal Handbook: Chile, Pharma Boardroom (2019).

SEMINARS

  • Frequent lecturer in seminars and conferences in Chile and abroad.

EDUCATION

  • Law, Universidad Central.
  • Degree in Intellectual Property for countries of Latin America and the Caribbean, Industrial Property Office of Brazil (1997).
  • Degree in Administrative Management of Industrial Property, European Patents Office, The Hague, Netherlands (1999).
  • Degree in New Criminal Procedure, Universidad del Desarrollo (2004).
  • Degree in Unfair Competition Law, Instituto de Estudios Judiciales (2007).
  • Academy of American and International Law, Legal Foundation, Dallas, Texas, USA (2008).
  • Degree in Intellectual and Industrial Property, Universidad Finis Terrae (2008).
  • Degree in Economic Administrative Law, Universidad de Chile (2011).
  • Degree in Pharmaceutical Regulatory Affairs in Pharmaceutical, Biological and Cosmetic Products, Universidad de Chile (2013).

ADMISSIONS

  • Chile (1995).

LANGUAGES

  • Spanish.
  • English.

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