Patent prosecution in Germany
Bardehle Pagenberg ‘offers an outstanding level of advice due to the enthusiasm and excellence of its lawyers’. The ‘top’ team stands out for its ‘honest and pragmatic legal advice’ and is well versed both in the development of patent prosecution strategies and the associated enforcement of patents as well as in portfolio assessment. The firm’s range of services also include license contract matters and expertise in employee invention law. Hans Wegner, Johannes Lang,Christof Karl, who is qualified both as an attorney at law and patent attorney, and Joachim Mader head the practice, which saw promotion to partner of Axel Berger and Georg Anetsberger in January 2018 and of Patrick Daum and Benjamin Ruckert in January 2019. Highlights included acting for adidas in the registration and enforcement of patents and utility models, advising Apple and representing Memorial Sloan Kettering Cancer Centers in opposition proceedings at the EPO led by the ‘very experienced’ Johannes Heselberger. The broad coverage of sectors is visible in the firm’s client portfolio, which includes, among others, Synbias Pharma, Jaguar Land Rover, Nintendo, Qualcomm and Carl Zeiss SMS.
Boehmert & Boehmert has secured its reputation as one of the firms most active in patent filing with the European patent registration practice accounting for the majority of the team’s workload, followed by PCT-applications and the registration of German patents. A recent highlight is the firm’s advice to Intel on the registration of domestic and European patents; Heinz Goddar, Christian Appelt and Stefan Schohe were the key contacts. Biochemistry expert Markus Engelhard represented Novo Nordisk in EPO opposition proceedings concerning insulin pens and also acted for Samsung Bioepis in several opposition proceedings in the biosimilar field. Mechanical engineering expert Nils Schmid is also recommended and David Kuttenkeuler was promoted to partner. Other clients include Microsoft, Beauty Union Global and Shanghai North Glass.
As ‘one of the best firms’ in the patent prosecution space, Cohausz & Florack stands out for its ‘very modern, optimised workflows with short response times and strong adherence to deadlines’. The firm provides broad advice on mechanical and electronic engineering, chemistry, pharmaceutical and life sciences matters, but also has deep expertise in the technology and mobile communications areas. Jochen Kapfenberger is handling prosecution advice for the Fraunhofer Society with a focus on the energy sector. Philipe Walter demonstrated his ‘very good patent law and technical expertise’ in the establishment and management of innogy’s patent portfolio, including for smarthome and e-mobility products. The ‘outstanding’ Christoph Walke is the key contact for Deutsche Post DHL. The ‘highly motivated’ Fabian Vogelbruch is also noted for his ‘excellent technical knowledge’ and clients recommend Matthias Waters, who was promoted to partner in January 2018, for his ‘technical skills and solution-oriented approach’. Thomas Rox’s ‘quick thinking and ability to process information regarding technical issues in all subject matters is fascinating’. The firm’s clientbase also includes Viega, Vorwerk and SIG Technology.
Clients note the combination of Eisenführ Speiser’s broad sector focus and deep expertise. With the arrival of Peter Wiegeleben from Uexküll & Stolberg in the Hamburg office in January 2018, the firm was able to further strengthen its chemistry practice, while the promotion of Christoph Fehn to salary partner in Munich in January 2018 bolstered its bench strength in the electronic and information technology space. Recent highlights include Uwe Stilkenböhmer’s representation of BASF in opposition proceedings against Novasep regarding a patent on a chromatographic procedure for the manufacture of fatty acids, and Bremen-based Holger Veenhuis’s successful representation of Koninklijke Philips against Princeton University and the University of California in opposition and complaints proceedings at the EPO concerning a patent on an organic light-emitting device. Other key figures include Katrin Winkelmann and Manuel Söldenwagner. Ludger Eckey is the main contact in Berlin. The client portfolio also includes Bego, Big Dutchman and Edwards Lifesciences.
Grünecker has particular bench strength in mechanical engineering and mechanics, but also stands out for its expertise in the various areas of modern physics and information technology. The practice consists of experts in chemistry, healthcare and biotechnology sectors. The processing of EPO registrations make up the bulk of the prosecution practice, but the firm is also highly active at the German Patent and Trade Mark Office (DPMA). The key players in the team include Andreas Kayser, Dietmar Kuhl, Thomas Schuster, Moritz Höffe and Reinhard Knauer.
Hoffmann Eitle stands out in the market due to its high activity in opposition proceedings at the EPO and its comparatively high share of Japanese clients in particular. In addition to the firm’s traditionally strong focus on the US and South Korea, Chinese clients also play an increasingly important role in the firm’s portfolio. The team has a core sector focus on prosecution in the chemistry and biotechnology sectors; James Ogle acts for Moderna Therapeutics on the design and management of its patent portfolio. Another highlight was the successful defence of a Dexcom patent on blood glucose monitoring in opposition proceedings at the EPO against Abbott Diabetes Care. The team also has profound know-how in mechanical and electrical engineering and in the IT area. Morten Garberg, who is one of several patent attorneys in the team who is also admitted in the UK, is also recommended. Jens Gräber, Kathrin Füchsle, Nadja Muncke and Timo Pruß were all promoted to partner in 2018. Other clients include Fujifilm, Dräxlmeier and Mitsubishi Electric.
Vossius & Partner
With the partner promotions of biotechnology expert Florian Grasser in July 2017 and of chemistry expert Katharina Haas in February 2018, Vossius & Partner is continuing to bolster its patent law practice. With numerous clients in the pharmaceutical, chemical, medical products and biotechnology fields, the team confirms its traditionally strong reputation in the life sciences sector. Hans-Rainer Jaenichen and Jürgen Meier recently represented Crispr Therapeutics in several opposition proceedings and Alexa von Uexküll has notable pharmacological expertise. Among other matters, the breath of the practice is visible in Elard Schenck zu Schweinsberg and Raphael Salzer’s advice to Iscar and Rainer Viktor’s representation of SL Corporation in patent application processes at the DPMA and EPO. The client portfolio also includes ResMed, Roche and Boston Scientific. Of counsel Dieter Heunemann remains active in the team.
Jones Day is particularly well positioned in the pharmaceutical, chemistry and biotechnology areas, which following the departure of Bojan Savic to K&L Gates in April 2018 is handled by practice head Martin Weber and Olga Bezzubova at partner level. Dorothée Weber-Bruls and Andreas Holzwarth-Rochford are the key contacts for matters related to physics, mechanical and electrical engineering and technology, including artificial intelligence. The firm advised Akebia Therapeutics on its patent portfolio for erythropoietin substitutes, partially in cooperation with firm colleagues in the US in order to use a US discovery procedure for opposition proceedings. The team advised SMR Patents on freedom-to-operate analyses of camera systems and semi-autonomous vehicles; the team is now also acting for several of the client’s subsidiaries. Other clients include Sunrise Medical, Celgene and Rational.
König . Szynka . Tilmann . von Renesse
König . Szynka . Tilmann . von Renesse’s team is not only known in the market for its strong litigation practice but also for advice on the strategic design of patent portfolios and high activity in administrative proceedings. The team has a considerable breadth of expertise and in addition to its profound experience in the biotechnology and chemistry sectors, it is also strong in mechanical and electronic engineering. The core team in Düsseldorf and Munich includes name partners Gregor König, Dorothea von Renesse, Dirk Szynka and Max Wilhelm Tilmann, as well as Carla Roth.
Maikowski & Ninnemann has an excellent reputation in the telecoms area, where it is known as ‘one of the best patent attorney firms’. The patent law boutique is active in the prosecution and litigation area and provides ‘outstanding advice’ to prominent clients including Garmin and Joyson Safety Systems. The ‘very experienced’ Gunnar Baumgärtel, who is ‘excellent in making a case’, and the ‘technically very strong’ Ralf Emigs provide comprehensive advice to Google on patent, utility model and design matters. The ‘very reactive’ Andreas Tanner, who is known for his ‘excellent written pleadings’, acted for electronics group Vestel. Besides the firm’s head office in Berlin, it is also present in Leipzig and Munich.
MAIWALD PATENTANWALTS- UND RECHTSANWALTSGESELLSCHAFT MBH’s ‘powerful team consisting of patent attorneys, attorneys at law and technical experts’ combines ‘prompt work’ and ‘very deep technical and industry expertise’. The firm’s strength in opposition proceedings was evident in its successful representation of the Trustees of Princeton University and the University of Southern California before the Enlarged Board of Appeal at the EPO regarding the applicability of the general testing standards on patent claims which contain undisclosed disclaimers. The client portfolio includes numerous companies in the biology, chemistry and pharmaceutical sector, such as Alere Technologies, Takeda and Mundipharma, but also includes Intel and Valmet. Two key figures of the practice are Dirk Bühler and Eva Ehlich, who are based in Munich. However, the firm also has an office in Düsseldorf. The team was strengthened by the arrival of Axel Neidlein, who joined from Cohausz & Florack in August 2017, and was further bolstered by the partner promotions of Andrea Lasar and Stefanie Parchmann in January 2018 and of Simon Lud in July 2018.
Manitz, Finsterwald & Partner
Munich-based IP boutique Manitz, Finsterwald & Partner advises domestic and international clients on patent portfolio management and is experienced in the development of individual property right strategies. The team also has deep expertise in opposition and nullity proceedings and particular strength in mechanical and electrical engineering, physics, chemistry and biotechnology. A clear focus in the electrical engineering segment is the firm’s advice to automotive manufacturers.
Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB
Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB stands out for its ‘excellent service level’ and ‘outstanding expertise’. At the beginning of May 2018, the firm expanded its practice both geographically and in terms of team strength: Uwe Fitzner, previously name partner at Fitzner & Frese, joined a new office in Ratingen near Düsseldorf. Other key figures include practice head Jochen Kilchert, Stephan Held, Gernot Schröer and Ole Trinks. Particularly prominent matters recently stemmed predominantly from the process engineering sector, mechanical engineering and the chemical industry, but the firm also advises in the electronic engineering and IT and mobile communications areas. Longstanding clients on the patent portfolio side are Alcoa, Arconic and Brita. Other highlights include representing Facebook in EPO application procedures, comprehensive advice to Electrolux and the firm’s work for Takeda in several application procedures. Other clients include Husqvarna, Illinois Tool Works and Mitsubishi Electric.
Gulde & Partner
Gulde & Partner advises on strategic portfolio management and under the lead of senior partner Henry Schneider, Sönke Lorenz and Jens Glienke the firm, which has its head office in Berlin, covers various sectors with particular highlights in the electronic engineering, automotive and telecoms segments. The team provided comprehensive advice to Samsung Electronics in the prosecution area and acted for Audi in connection with patent registrations and freedom-to-operate research and represented the client in administrative procedures. Marco Scheffler successfully defended Haier in nullity proceedings against Sisvel at the German Federal Patent Court in connection with a large patent regarding standard-essential patents in the telecoms sector. Other clients include Volkswagen, Siemens and Imperial Tobacco Group. Jürgen Hengelhaupt and Dorit Rasch retired and Nicolas Haße and Kyungsoon Nam were promoted to equity partners.
Hauck Patent- und Rechtsanwälte
Hauck Patent- und Rechtsanwälte’s focus lies on mechanical engineering, as well as electronic, process, energy, medical and packaging engineering and chemistry. In addition to the firm’s traditionally strong representation of clients in patent registration matters, including freedom-to-operate research and opposition proceedings, the team increasingly also handles nullity proceedings. The team acts for a number of longtanding clients including Nordex Energy, Illinois Tool Works and Hülsenberg. The firm’s head office is in Hamburg, but it also has an office in Düsseldorf.
Lorenz Seidler Gossel
Clients note the team’s ‘high reliability’ and ‘very good industry knowledge’ at Munich IP boutique Lorenz Seidler Gossel. The practice is frequently active for German patent applicants, but has also been able to expand its international work to Asia. The clientbase ranges across various industries and includes companies in the automotive sector such as Ford-Werke and Mazda, as well as Fresenius Medical Care, Bulthaup and Carl Zeiss Optotechnik. Fibertex, Blizzard Sport and Marantec Antriebs- und Steuerungstechnik are also clients. The team, which is very stable at partner level, saw the retirement of Armin Zinnecker at the end of 2017.
Michalski - Hüttermann & Partner Patentanwälte
Michalski - Hüttermann & Partner Patentanwälte has broad technical expertise and an expanding team, which was recently strengthened by the arrival of Rainer Kasseckert in the Munich office in September 2017; he was previously working in-house. The IP-focused firm handled a number of matters in the mechanical and electronic engineering sectors, but also frequently advises on matters related to mobile communications. Recent highlights include the representation of Acer and Deutsche Post in respective EPO application procedure, including handling an isolated partial objection, and acting for automotive supplier Kiekert in application procedures at the DPMA in connection with the longstanding management of a part of its portfolio. NTT, die P3 Group and Quanta Computer also sought the firm’s advice on prosection matters. The firm’s main office is in Düsseldorf, where name partners Stefan Michalski and Aloys Hüttermann, as well as Guido Quiram and Dirk Schulz are based.
Prüfer & Partner
Prüfer & Partner is among the ‘most commended patent law firms in Germany’, according to one client, and provides ‘an excellent service’. The IP boutique further expanded with the opening of a second Munich office at the end of 2017, which primarily strengthened its litigation practice, and increased its team with the addition of several new associates. The ‘particularly good’ Jürgen Feldmeier, who heads the practice together with Dorothea Hofer and Andreas Oser, handled patent applications and associated opposition proceedings for Knorr-Bremse, while Oser is representing Novartis in several European and international application procedures. In the electronics sector, a highlight was Hofer’s representation of Mitsubishi Electric in a longstanding crossborder matter. In addition to longstanding clients such as Brother Industries, Trumpf Werkzeugmaschinen and Biedermann Technologies, the client portfolio also includes a few new names such as virtual fitness provider Icaros.
Prinz & Partner
Prinz & Partner has a reputation for being ‘very creative in finding solutions and exceptionally approachable’. Led by practice heads Thomas Kitzhofer and Jochen Sties, the firm is particularly well versed in mechincal engineering, but also advises on a range of other sectors. Johannes Trapp was promoted to the partnership in January 2018, which has further cemented firm’s expertise in physics, mechanics and electronic and communciations engineering. Werner Sulzbach acted for Delo in a patent application procedure with associated freedom-to-operate research, while Bernhard Pfleiderer provided strategic advice to Fraport and represented the client in application procedures and employee invention law disputes. The client portfolio includes numerous prominent names including Nike, BMW and Rohde & Schwarz. The firm also has experience in advising start-ups. It has offices in Munich, Hamburg and Berlin.
Zimmermann & Partner Patentanwälte mbB
Patent attorney firm Zimmermann & Partner Patentanwälte mbB has broad expertise and a top-class clientbase, which includes several large US companies. The team handles traditional prosecution advice, where it is notably active for Applied Materials in an impressive volume of application procedures, the firm also regularly handles opposition procedures. Another significant field of activity is the team’s collaboration with law firms in nullity proceedings, such as cooperating with Hoyng Rokh Monegier in defending Samsung Electronics at the German Federal Patent Office and the EPO against France Brevets. Practice heads Frank Steinbach, Benedikt Neuburger, Gerd Zimmermann and Joel Nägerl and also Dominique Gobert make up the core of the team. Other clients include Infineon, Nippon Steel Sumitomo Metal and Quark Pharmaceuticals.