JUVE Comment

This well-positioned mixed team is best known for prosecution work across a broad technical spectrum but has gained visibility in litigation in recent years as well. Lavoix opts for close cooperation between patent attorneys and lawyers, which is bearing visible fruit: long-time prosecution clients Naval Group and ArcellorMittal are increasingly calling on the firm for patent disputes before the French courts. A mixed team was victorious for Peaccel and the University of Nantes in the patent dispute against US competitor Codexis. The case concerned a method for calculating protein sequences. Besides the French proceedings, Lavoix also handled the associated EPO opposition proceedings. The increased synergies between both professional groups make the firm especially attractive to large SMEs, who benefit from a one-stop shop for litigation before the civil courts and the EPO, as well as the French Patent Office. The proportion of litigation work still lags behind the renowned prosecution practice. One setback in the litigation practice’s development was the move of a partner, experienced as a patent attorney and now dual qualified, to Bird & Bird. To grow its patent litigation activity, the team will have to add new lawyers to its headcount.

In patent filing, Lavoix has long been a top firm in France with such notable names as Thales, L’Oréal and Total Energies on the regular client list. The patent attorneys have technical know-how in a broad range of industries.

Strengths

Mixed team with strong prosecution practice in all fields of technology. Particular expertise in pharma and biotechnology, chemistry, automotive, digital communication and computer technology, electronics, mechanics, process and mechanical engineering.

European set-up

The mixed French firm has small offices in Germany, Italy, Switzerland and Luxembourg with only patent attorneys. The litigation team focuses on the French market. Worldwide, however, Lavoix cooperates with international firms as part of a best-friends network. This is now reflected in pan-European patent-litigation partnerships, as shown by technical advice to Faurecia in the German proceedings against Benteler, together with a team of lawyers from German firm Preu Bohlig. There is still room for growth in this kind of cross-border work, however.

Recommended individuals

Camille Pecnard, Bertrand Domenego (“very good”, competitor; electronics, mechanics, process and mechanical engineering), Jacob Klinkisch (digital communication and computer technology, electronics)

Team

4 lawyers, 47 patent attorneys

Partner moves

Frédéric Portal (to Bird & Bird)

Specialties

All-round advice and litigation in all IP matters. Large prosecution practice in all technical fields.

Clients

Litigation: ArcellorMittal (defendant) against TDI Isolation Antilles over insolation covers; Vitesco (defendant) against Plastic Omnium over diesel technology (settled in 2021); Naval Energies (claimant) against subcontractor over wind turbines; Peaccel/Université de Nantes (claimant) against Codexis over tool for calculating protein sequences; Estée Lauder (defendant) against former subcontractor over ownership of patent for Ambiotis, a treatment of inflammation of the skin; Emitec France/Continental (defendant) against Plastic Omnium over diesel tank; manufacturer of solar modules (defendant) against competitor over solar panels; manufacturer of gaming equipment against competitor over Wii consoles (Court of Appeal); technical advice to Faurecia (claimant) in German litigation against Benteler over dashboard crossmembers (settled in 2021) and representation in parallel EPO opposition. Prosecution: patent filing and oppositions for Alstom, Aperam, ArcellorMittal, CEA, Dassault Aviation, Faurecia, Naval Group, Peaccel, Sanofi, Schneider Electric, Somfy, Thales, Total, Technip France. Patent filing for CNRS, Framatome, L’Oréal (all public knowledge).