Patent prosecution in Germany
Bardehle Pagenberg is noted for its broad sector expertise alongside its in-depth knowledge of the development of application strategies for patents and designs as well as its capabilities representing clients in opposition proceedings before the European Patent Office and the German Patent and Trade Mark Office. In addition to the automotive, electrical engineering and software sectors, the team also covers mechanical engineering, technology and pharmaceutical sector work. Telecommunications and medical technology sector clients also instruct the IP boutique. The team is jointly led by Munich-based Johannes Lang, Hans Wegner, Christof Karl, Joachim Mader and Tobias Kaufmann. Telecommunications and communications engineering specialist Benjamin Ruckert and Patrick Daum, who specialises in telecommunications and electrical engineering, aerospace technology and mechanics, were elevated to the partnership in December 2018.
Johannes Lang; Hans Wegner; Christof Karl; Joachim Mader; Tobias Kaufmann
Other key lawyers:
‘The patent lawyers of Bardehle Pagenberg are technical experts, which is crucial within the patent-prosecution sector. Furthermore, they deal with all mandates, even those concerning dispute resolutions, pragmatically and business-orientated.’
Jaguar Land Rover
Japan Tobacco International
Memorial Sloan Kettering Cancer Center
Synbias Pharma AG
- Legal representation of the adidas AG concerning the application for patents and utility models at the European Patent Office (EPO) and the DPMA (German Patent and Trademark Office), including the representation in appeal procedures at the EPO.
- Supported the Carl Zeiss SMS GmbH on globally executed patent application procedures in the sector of nanotechnology.
- Comprehensive application activity for Jaguar Land Rover as well as advice on the adaptation of the application strategy for German patents.
Boehmert & Boehmert
Boehmert & Boehmert continues to be one of the most active patent application practices in Germany, not only before the German Patent and Trade Mark Office (DPMA) but also before the European Patent Office (EPA) and the World Intellectual Property Organization (WIPO). The integrated patent and law firm counts both German as well as large international companies among its long-standing clients, who receive regular assistance with patent, design and employee invention law matters. Its particular strength lies in the biochemistry, mechanical engineering, pharmaceutical, software and electrical engineering sectors. With offices in Munich, Berlin and Düsseldorf, the practice has extensive geographic reach and includes life sciences, pharmaceutical and biotechnology expert Markus Engelhard, physicist Heinz Goddar, mechanical engineering specialist Nils Schmid and Christian Appelt, who specialises in physics, mechanical engineering, electronics and computer technology. Daniel Herrmann with a specialism in physics and Martin Erbacher with particular expertise in chemistry made partners in January 2019.
Other key lawyers:
‘Extremely professional and thorough with outstanding communication, which ensures, that we were up to date with the current state of proceedings at all times.’
‘Karl-Heinz Metten is extraordinarily professional and a wonderful point of contact. We have complete trust in his understanding of our patents and his abilities to enforce them in an optimum way.’
‘Markus Engelhardt is excellent. He is likeable, straightforward to work with and has a very good understanding of our strategic goals. I trust his advice and judgment.’
SZ DJI Technology Co., Ltd.
Johnson & Johnson
Lohmann & Rauscher
- Long-standing management of a large portfolio of patent applications of the Microsoft Corporation at the EPO and national patent offices.
- Long-standing management of a large portfolio of patent applications of the Intel Corporation at the EPO and national patent offices.
- Comprehensive management of the patent portfolio of Panasonic.
Cohausz & Florack handles the development and management of large patent portfolios from a wide range of technology sectors and has extensive experience in contentious proceedings, most notably opposition and appeal procedures. Much of its non-contentious work pertains to the mechanical and electrical engineering sectors alongside the chemical, life sciences, IT and telecommunications industries. With offices in Munich and Düsseldorf, the team has a strong presence in Germany but also handles international work, particularly in the EU, and, in cooperation with partner firms, in the US, China and Korea. Key individuals include Hendrik Bücker (communications and medical technology, energy technology and software), Arwed Burrichter (chemistry), Jochen Kapfenberger (process and mechanical engineering), Mathias Karlhuber (data security technology, mechanical engineering, micromechanics and medical technology, among others), Henning Sternemann (physics) as well as Christoph Walke (communications technology, data processing and medical technology) and Philipe Walter (electrical engineering, information technology and mechatronics).
Other key lawyers:
‘Good and cooperative collaboration, solution-orientated working method.’
‘Excellent client orientation and excellent business-understanding, as well as very good technical understanding.’
‘Christoph Walke: Outstanding expertise on technical matters, fast response time, always has the ability to understand the client’s needs, talks the language of inventors, understands management-requirements.’
‘I appreciate Hendrik Bücker’s professionalism and know-how, his preparation of patent descriptions, reachability and consulting service, as well as his professional and personally pleasant communication.’
bio-tec Biologische Naturverpackungen GmbH & Co. KG
Carl Zeiss SMT AG
Deutsche Post AG
Exelixis / Genentech / Roche
KAMAT GmbH & Co KG
SIG Technology AG
Vorwerk &Co. Interholding GmbH
- Legal representation of Ascensia Diabetes Care in application procedures at the DPMA (German Patent and Trademark Office) as well as the European Patent Office.
- Comprehensive advice on IP-rights to Auto-Kabel Management GmbH, including the development of a new IP-strategy, the representation in German, European and international patent application procedures and the representation in the associated appeal procedures.
- Advice to Bilfinger Noell on patent applications in the areas of power plant technology, superconductions and plant engineering.
Eisenführ Speiser has a strong profile for opposition proceedings before the DPMA and EPA but is also well versed in providing strategic advice on the development of new products and business modells where the team regularly assists with freedom-to-operate searches as well as with design patent portfolios under development. As an integrated patent and law firm, the practice is well placed to handle contentious matters. Key individuals include technology specialist Ludger Eckey in Berlin, life sciences expert Manuel Söldenwagner in Munich, Bremen-based Uwe Stilkenböhmer, who specialises in chemistry and life sciences, as well as Holger Veenhuis (also Bremen) with a focus on electrical engineering and information technology alongside medical technology and mechanical engineering, and Katrin Winkelmann in Hamburg. She specialises in mechanical engineering, medical technology and civil engineering.
Other key lawyers:
Big Dutchman International GmbH
Edwards Lifesciences Corporation
Fraunhofer-Institut für Digitale Medizin MEVIS
KWS Saat SE
Koninklijke Philips N. V.
Protina Pharmazeutische GmbH
Thyssen Krupp Steel Europe AG
- Legal representation of BASF SE in an EPO-appeal procedure concerning a patent for the protection of the method to extract phytosterols and tocopherols, which is registered by Verbio Vereinigte Bioenergie AG.
- Comprehensive and regular legal representation of the Symrise AG in many appeal proceedings against several competitors.
- Legal representation of the Thyssen Krupp Steel Europe AG in several EPO-appeal proceedings concerning several patents by ArcelorMittal in the area of steel sheets.
For many years, Grünecker has been one of the leading firms for DPMA and EPA applications. As one of the largest firms in the German market, it covers an extremely broad sector spectrum and provides the necessary team size even for complex opposition and nullity proceedings. The team's many international clients include several companies from the US, Japan, Korea, Taiwan and China.
Other key lawyers:
Thomas Eickelkamp; Moritz Höffe; Andreas Kayser; Jens Koch; Reinhard Knauer; Dietmar Kuhl; Christian Meisinger; André Nickel; Anton Pfau
‘The law firm offers a very personal support for years to come.’
‘Our consultants advise us very reliably and comprehensibly. They take time for questions and allow for leeway regarding discussions. No matter what kind of questions, they are always answered patiently and in detail.’
A. Raymond & Cie.
- Long-standing management of the complete patent portfolio of Fuji Corp.
- Long-standing management of the complete patent portfolio of Globalfoundries.
- Long-standing management of a patent portfolio of Samsung Electronics.
Hoffmann Eitle is best known for its strong chemistry and biotechnology practice and has traditionally been advising several Japanese companies alongside clients from the US, South Korea and China. The development and implementation of registration strategies are as much a part of its services as the representation in corresponding opposition proceedings, which is one of the practice's key areas. In addition to German and European patent lawyers, the team also includes several British patent attorneys.
Vossius & Partner
Vossius & Partner advises a diverse mix of clients, including large German and international manufacturing companies alongside German SMEs and renowned science centres. As well as its strong life sciences practice, which leads to regular instructions from pharmaceutical and medical device companies alongside biotechnology and chemical companies, the firm also has an experienced team for physics, mechanical engineering and IT. Geographically, the lion's share of its workload stems from US, Japanese and European clients. Biotechnology and pharmaceutical expert Hans-Rainer Jaenichen, Elard Schenck zu Schweinsberg with a focus on mechanical engineering, physics and biotechnology and Rainer Viktor, expert for medical and health products, software and bioinformatics alongside electrical engineering, are among the team's key figures.
‘Experienced patent rights lawyers with industry knowledge in technology, engineering and physics. Excellent understanding and goal-oriented approach. Very good support in the protection of industrial property. The partners and associates are approachable anytime and provide fast and competent advice. Due to the abundant available resources, it is always possible to work on multiple projects simultaneously. The practice also has a good international network with experienced law firms.‘
Merck Sharp &. Dome Corp.
- Legal representation of CRISPR Thearpeutics AG in appeal procedures at the EPO, among other things in an appeal procedure concerning a patent application submitted by the Broad Institute.
- Strategic advice to Boston Scientific on the management of the patent portfolio.
- Legal representation of Roche in different appeal proceedings as well as comprehensive advice on the patent portfolio.
Berlin-based patent law boutique Maikowski & Ninnemann succeeded in expanding its already top-class client base with several well-known companies. The team is regularly entrusted with complex registration and administrative procedures, which is not least due to its expertise in contentious work, and thus is also able to put its forensic knowledge to use when handling prosecution mandates. Its impressive client base includes a range of sectors such as high tech, electrical engineering, telecommunications, automotive engineering, optics, chemistry and medical technology. Main contacts are physicist Gunnar Baumgärtel, electrical engineering experts Andreas Tanner and Christoph Schröder, biochemist Fabian Sokolowski, process engineering and mechanical engineering expert Felix Gross and mechanical engineering specialist Ralf Emig.
Other key lawyers:
LG Electronics (LGE)
- Comprehensive advice and legal representation of Vestel, in particular in the area of prosecution, but also on the conduct of technical researches.
- Comprehensive advice and legal representation of LG Electronics, both in the area of prosecution as well as in court procedures.
- Advised Biotronik on matters of prosecution, including the conduct of Freedom-to-Operate-analysis’.
MAIWALD PATENTANWALTS- UND RECHTSANWALTSGESELLSCHAFT MBH has carved out a strong practice developing registration strategies and handling opposition and appeal proceedings before the European Patent Office, while also having notable experience in complementary protection certificates. As well as its traditional strength in pharmaceutical and life sciences sector work, the Munich-based boutique is increasingly expanding its engineering sector portfolio, which includes digitalisation and artificial intelligence as well as IT and telecommunications and medical technology mandates. Its international practice showed a significant increase in Japanese and Chinese clients. Key members of the team include Dirk Bühler (biotechnology), Eva Dörner (chemistry, pharmaceuticals and crop protection), Eva Ehlich (chemistry and pharmaceuticals) and Martin Huenges (biotechnology and pharmaceuticals). Simon Lud (telecommunications and communications engineering, automotive, digitalisation, computer-implemented inventions) and Claus Schindele (chemistry, most notably polymer chemistry and thin-layer technology) were elevated to the partnership in July 2018 and November 2018 respectively.
‘Very competent advice and input with good economical understanding. Due to vast experience from patent disputes, the application strategy is already thought through to the end.’
‘The lawfirm Maiwald is characterised by efficiency, client orientation and the very high quality of a patent rights lawyer’s advice and working method.’
‘Eva Dörner offers efficient, structured and solution-oriented cooperation, always with the aim to get the most out of it for the client. Even the urgent assignments are always worked on with the highest quality. Especially to be emphasised are her excellent ability of communication as well as experiences, in particular in the sector of chemical and pharmaceutical patents.’
‘Eva Ehlich stands out due to the rare ability, to combine thoroughness and pragmatism. She delivers excellent results.’
‘Dirk Bühler is a brilliant strategist with the ability, to think innovatively to develop successful strategies.’
LTS Lohmann Therapie-Systeme AG
Massachusetts General Hospital
Purdue Pharma L.P.
The Regents of the University of California
United States Secretary of Health and Human Services
- Management of the patent portfolio for Abbott, including the preparation of applications and worldwide coordination of patent granting procedures.
- Portfolio management for Devicor Medical Products, including the preparation of applications and global coordination of patent granting procedures.
- Legal representation of Intel in patent granting procedures at the EPO, including the representation in the associated appeal and complaints procedures.
Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB assists various international and German companies with the strategic development of their patent portfolios and represents clients in grant procedures and associated opposition proceedings. The team is frequently entrusted with process engineering, electronics and mechanical engineering sector work but is also visible in the chemical and metallurgy space. IT and automotive are other key areas of expertise. Munich-based Jochen Kilchert heads the practice, which includes Matthias Hoener. He has a specialism in physics and made partner in January 2019.
Other key lawyers:
Stephan Held; Ole Trinks; Gernot Schröer; Matthias Hoener
‘The Colleagues at Meissner Bolte in Munich are characterised by excellent law knowledge and a vast practical orientation concerning answers.’
Illinois Tool Works
Johnson Controls Inc.
Mitsubishi Electric Corporation
Villeroy & Boch AG
- Comprehensive prosecution activity for the Brita GmbH as well as advice on national and international disputes. Long-standing management of the complete portfolio.
- Development of an in-house portfolio-management-system for Johnson Controls Interiors Management GmbH in the course of a secondment-contract.
- Comprehensive advice to the ThyssenKrupp AG on patent applications and appeals.
Gulde & Partner
Gulde & Partner's team structure is a good reflection of its strong geographical focus on Asia. With a Korean, two Chinese and one Japanese patent lawyers alongside an Indian patent lawyer and a Chinese lawyer, the practice is well placed to assist Asian clients. Electronics, automotive and telecommunications are significant industry sectors. Jens Glienke, Sönke Lorenz and Henry Schneider jointly head the steadily growing practice.
Jens Glienke; Sönke Lorenz, Henry Schneider
Other key lawyers:
‘Fast reaction, competent and with a focus on the requirements of advising a company. Also cost-efficient.’
Imperial Tobacco Group
Reemtsma Cigarettenfabriken GmbH
Robert Bosch GmbH
Samsung Electronics Co. Ltd.
Samsung SDI Co. Ltd.
Samsung Display Co. Ltd.
- Comprehensive application activity for Samsung Electronics at the Deutsches Patent- und Markenamt (German Patent and Trademark Office) and the European Patent Office.
- Development of new patent applications for the Mando Corporation in Germany as well as representation in appeal proceedings at the European Patent Office.
Jones Day has an experienced life sciences practice alongside notable experience in the segments physics and mechanical engineering with a specialism in automotive, household appliances and renewable energy sector work. With Munich-based Martin Weber heading the practice and Frankfurt-based Dorothée Weber-Bruls heading the physics group, the firm has two firmly established offices in Germany, which regularly work in cooperation with the firm's international offices, particularly its US offices. Sven Rihm was appointed European counsel in January 2019 and is particularly well versed in chemistry, biotechnology and life sciences.
Martin Weber; Dorothée Weber-Bruls
Other key lawyers:
Olga Bezzubova; Andreas Holzwarth-Rochford; Sven Rihm
Akebia Therapeutics und Keryx Biopharmaceuticals
Blickle Räder + Rollen GmbH & Co. KG
Convex Universal Limited
Rational AG/Rational International AG
Samvardhana Motherson Group (SMG)
- Legal representation of Ensyn Renewables in several granting and appeal procedures at the European Patent Office.
- Advised Genentech on patent applications and appeal procedures as well as on contractual matters regarding German and European patents in the course of a collaboration agreement with the German biotech-start-up BioNTech.
- Advice to the Rational AG on more than 500 patents, utility models and registered designs worldwide, including the defence and implementation thereof. In addition advice on cooperation agreements, license agreements and the establishing of a proprietor of the intellectual property rights company.
König . Szynka . Tilmann . von Renesse
With its head office in Düsseldorf, boutique König . Szynka . Tilmann . von Renesse stands out for its extensive litigation experience. In particular, Gregor König is one of the most renowned patent lawyers, who regularly appears in infringement proceedings but the team also manages and develops patent portfolios and represents clients in grant proceedings before the German Patent and Trade Mark Office and the European Patent Office. Handling biology, chemical, electrical and mechanical engineering sector work constitutes a key element of the practice. Lars Hemsath and Claudia Hertzsch were both elevated to the partnership.
Manitz, Finsterwald & Partner
Manitz, Finsterwald & Partner provides assistance with the development and implementation of registration strategies as well as expertise in opposition, appeal and nullity proceedings. The team handles national and international intellectual property rights portfolios in patent, design and employee invention law. The team's traditional strength lies in the automotive sector.
Michalski - Hüttermann & Partner Patentanwälte
Michalski - Hüttermann & Partner Patentanwälte acts for a wide range of clients, from large international companies to individual inventors. It is one of the most experienced firms for patent applications but also handles a steady flow of mandates pertaining to opposition, appeal and nullity proceedings. In patent infringement proceedings, the team regularly cooperates with law firms. Electronics, mechanical engineering and telecommunications are among the key areas of expertise for the practice co-led by Stefan Michalski, Guido Quiram and Ulrich Storz.
Stefan Michalski; Guido Quiram; Ulrich Storz
Other key lawyers:
Aloys Hüttermann; Dirk Schulz
‘Compared to other patent law firms, the team of Michalski Hüttermann is characterised by a clear focus on customer-oriented, as well as agile and innovative solutions. Due to the large team, tasks can be assigned in a reasonable manner, to avoid waiting times.’
‘Guido Quiram delivers results to the point and convinces with an extremely professional and practice-oriented working method. One always feels well advised, because he not only works on cases with the highest technical skill level, but also considers the economical implications of a case in his assessments.’
- Representation of Wilo SE in several appeal procedures on patents of Grundfos with the aim of preserving the Freedom-to-operate. Conduct of several Freedom-to-operate researches.
- Advice to Ecoenergy Patent GmbH in a jointly-led legal dispute with Taylor Wessing at the LG Düsseldorf (Regional Court) concerning a patent in the area of carbon dioxide-neutral energy production.
- Worldwide support to ABB AG on application procedures, including the development of several patent applications, the conduct of several Freedom-to-operate-analysis’ and general advice on patent law.
Prüfer & Partner
Prüfer & Partner is particularly active in patent applications and has experience in opposition and appeal proceedings. Its patent application practice includes both German as well as European patent registrations and has a specialism in patents intended for subsequent filing with the United States Patent and Trade Mark Office. With the establishment of a China Desh and the strengthening of its mechanical engineering, physics, telecommunications, chemical and life sciences sector work, the firm is on a significant growth path. Jürgen Feldmeier, Dorothea Hofer and Andreas Oser jointly head the practice. Friedrich Emmerling moved to Braun-Dullaeus Pannen Emmerling in July 2019.
Jürgen Feldmeier; Dorothea Hofer; Andreas Oser
‘Efficient and close collaboration with inventors and stakeholders in the patent application sector. Broad technical line-up within the team of patent lawyers and technicians. Timely and always impeccable delivery. Great budget compliance and transparent invoicing.’
‘Jürgen Feldmeier is an experienced and superb patent lawyer with an excellent technical understanding, high personal motivation and empathic stakeholder-management in combination with patent law excellency.’
Biedermann Technologies GmbH & Co. KG
Mitsubishi Electric Co.
Novartis – Sandoz
- Advice to the Novartis-Sandoz-Gruppe on European and international patent and utility model applications, including the support during granting procedures and representation in appeal and complaints procedures.
- Advised Brother Industries on European and international patent and utility model application procedures, on the development of utility models and divisional applications and coordination of the validation of granted European patents.
- Preparation and development of German and European patent and utility model applications for Mitsubishi Electric, including the correspondence with the hired foreign patent law firms, as well as representation in granting procedures.
Prinz & Partner
With offices in Munich, Hamburg and Berlin, boutique Prinz & Partner handles a broad spectrum of technology sector work alongside a wide range of prosecution services, which include the preparation of patent applications, the development of tailor-made registration strategies, freedom-to-operate searches and the representation in opposition, appeal and nullity proceedings. The team led by Jochen Sties and Thomas Kitzhöfer also carries out patent law-related due diligence.
Jochen Sties; Thomas Kitzhöfer
Other key lawyers:
Bernhard Pfleiderer; Jürgen Strass; Werner Sulzbach
European Central Bank
Faurecia Emissions Control Technologies
Rohde & Schwarz
- Legal representation of Galata Chemicals in several appeal proceedings.
- Worldwide application activity for the Bürkert Werke and legal representation in appeal proceedings against competitors.
- Support on patent law to the Fraport AG, including the preparation of patent applications, strategic advice, the preparation of legal opinions and the representation in legal disputes concerning inventions by employees.
Zimmermann & Partner Patentanwälte mbB
Zimmermann & Partner Patentanwälte mbB is one of the most forensically active patent law firms in the market and handles an impressive stream of mandates from the telecommunications, semiconductor, LED and LCD technologies as well as the medical product and the consumer goods industries, and frequently cooperates with renowned law firms when handling infringement proceedings. Its offering also includes the assessment of large patent portfolios, both with regards to validity and infringement proceedings, as well as advice on the establishment and development of patent portfolios. For many US clients, the team also acts as an outsourced European patent department.
Other key lawyers:
Dominique Gobert; Joel Nägerl; Benedikt Neuburger; Frank Steinbach
‘The technical understanding and tireless commitment are unique, also with regards to finding solutions in cases which appear to be futile.’
‘Medium-sized law firm, but with a high impact, also in complex proceedings. Very quick, precise, detailed assessments, applications as well as procedural writs at the highest academic level.’
‘Excellent team and very professional colleagues. Technically very good and motivated. Also experienced and skilled during infringement procedures and cancellation procedures.’
‘Joel Nägerl is a very smart person, creative and motivated.’
‘Joel Nägerl is incredibly smart and has very fast reactions. It is always an enrichment to discuss a case with him from various angles and develop a strategy based on this. Furthermore he is a walking encyclopedia with regards to the state-of-the-art in the mobile telecommunications sector.’
‘Dominique Gobert is particularly good, not only due to his abilities and experiences, but also due to his provision of service-mindset.’
Bombardier Transportation GmbH
Bundesanstalt für Materialforschung und -prüfung
Continental Automotive GmbH
Nippon Steel Sumitomo Metal Corp.
- In cooperation with Taylor Wessing legal representation of Samsung Electronics Co. at the Bundespatentgericht (Federal Patent Court), the BGH (Federal Court), the Deutsches Patent- und Markenamt (The German Patent and Trademark Office) and the European Patent Office in proceedings against Thomson. Preparation of the strategy of the proceedings including the conduct of research on the state of the art.
- Advice to Applied Materials Inc. on the preparation of patent applications, including the representation in granting procedures and the development of the global application strategy.
- Legal representation of General Electric Co. in several appeal and opposition appeal proceedings concerning patents in the sector of wind power.