JUVE Comment

Best known for its prosecution work, the mixed IP firm has continuously strengthened its team of lawyers in recent years and is now well positioned in the French patent litigation market. The teamwork between the firm’s litigators and patent attorneys is now as well-oiled as at Casalonga and this close cooperation is visibly bearing fruit. Long-time prosecution clients like Naval Group and ArcelorMittal not only rely on the team in EPO oppositions but are increasingly calling on the firm for patent disputes before the French civil courts.

In prosecution, Lavoix is known for its work across a broad technical spectrum, especially in electronics and mechanics, but also pharma and biotechnology. This is reflected in its litigation work, with clients from numerous sectors ranging from automotive and energy to consumer goods and medical devices to vaccine production. SMEs as well as larger midsized enterprises, such as the French manufacturer of tracing technology in the healthcare sector Biolog-ID, benefit especially from the one-stop shop for litigation. But the litigation team lacks experience in complex, high-profile cases in telecommunications or life sciences. Prosecution client Sanofi, for instance, relies on competitors like Gide for litigation in France. Potential to sharpen the firm’s profile in litigation and raise its visibility lies in the patent attorneys’ strong connections to clients in biotechnology and medical devices, two highly competitive sectors increasingly involved in patent disputes.

Strengths

Mixed team with strong prosecution practice, especially regarding pharma and biotechnology, chemistry, automotive, digital communication and computer technology, electronics, mechanics, process and mechanical engineering.

European set-up

In recent years Lavoix has actively promoted the cooperation between litigators and patent attorneys. With a sizeable head count and its mixed approach, the IP firm is now well positioned for combined nullity and infringement proceedings at the UPC.

But the client base of SMEs and some well-known corporations from the mechanical engineering sector rarely conduct lawsuits in different countries simultaneously and will most likely not be among the first users of the UPC. It is therefore no wonder that Lavoix has been seen in the French proceedings of pan-European patent disputes much less often than competitors with a similar headcount, such as Casalonga for instance. That said, for ArcelorMittal the team not only coordinated the EPO opposition, but also the infringement and nullity proceedings in Luxembourg, Brazil, China and Korea. However, there is still room for growth in this kind of cross-border work.

Even though Lavoix cooperates with international firms as part of a best-friends network, to rely on these ties might not be the best option for the UPC. In addition to the mixed team in France, Lavoix already has small offices with only patent attorneys in Germany, Italy, Switzerland and Luxembourg. Expanding the offices and adding lawyers to the teams, especially in Munich and Milan, or establishing more exclusive cooperations with patent litigation firms in these locations might make the firm more attractive for clients who want to bring their cases before the new court.

Recommended individuals

Camille Pecnard; patent attorney: Bertrand Domenego (“precise and quick”, competitor; electronics, mechanics, process and mechanical engineering)

Team

7 lawyers, 38 patent attorneys

Specialties

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

Clients

Litigation: Biolog (claimant) against US competitor over RFID technology; Inserm and University of Nantes (claimants) against former partner over patent ownership; ArcelorMittal (defendant) against Tata Steel in EPO opposition over patent for producing coated steel strips. Prosecution: filing and oppositions for Alstom, ArcelorMittal, CEA, CNRS, Dassault Aviation, Devialet, Faurecia, Framatome, Inserm Transfert, Naval Group, Powidian, Sanofi, Schneider Electric, Somfy, Thales, Total, Technip France. Patent filing for Germitec, JT International, L’Oréal, Panthera Dental, Wright Medical Technology (all public knowledge).