JUVE Comment

The patent practice of this German full-service law firm is primarily active for the firm’s industrial clients, which includes infringement proceedings. Recently, however, the team has been seen much less frequently in court than similarly positioned competitors such as Hengeler Mueller. Instead, advice in connection with M&A deals and R&D contracts is playing a growing role for CMS, as are licensing negotiations and employee invention rights.

CMS advises clients across a broad spectrum of technologies with a focus on pharma, automotive and solar technology. Great potential lies in IP disputes concerning renewable energies as CMS is one of the leading firms in Germany for advice to the energy sector. Here, the team could make greater use of the firm’s own contacts and move into this promising market. This is already working to some degree in healthcare, where CMS also boasts an excellent German practice.

To fully utilise this potential, however, CMS must strengthen its practice, which is in a state of upheaval following two partner departures last year and a further departure at associate level. By appointing a counsel CMS has taken the first step towards building up new talent from its own ranks, but team expansion is becoming more urgent if the firm wants to play a role at the UPC as well.

European set-up

The broad technical spectrum of the firm’s industrial clients provides the IP team with a good basis for future work at the new court, which is already being used by some SMEs from sectors as diverse as sanitation, mechanical engineering, and consumer goods. Overall, however, SME clients have been reluctant to bring actions before the UPC. At the same time, cross-border cooperation with other CMS offices in advisory work away from the UPC is increasing, particularly with the London office. For example, the German and UK practices are cooperating on several pharmaceutical and biotech instructions, and a German-UK team developed an AI-based analysis tool that simplifies validity and FTO searches for clients’ patent portfolios. The firm is already using this tool to advise on potential UPC claims.

Team

6 lawyers

Clients

Litigation: Shenzhen Mindray against Shenzhen Comen over respiratory machine valves. Advice: Bruker Corporation on R&D cooperation.