JUVE Patent

Boehmert & Boehmert – Germany 2019

JUVE Comment

This mixed firm is a market leader in patent filing. B&B advises its clients on a broad technical spectrum and is deeply rooted in computer technologies, mobile telecommunications, chips, software, pharma and biotech. Filing work has strongly increased over the past year, mainly as a result of core clients successfully stepping up their activities or transferring a greater part of their patent portfolio to the firm. B&B expanded its team of patent attorneys accordingly and continues to chart a path for growth. The patent attorneys are also regarded as experienced litigators, but the lawyers are seen as being a step behind and are a smaller team compared to the market leaders. In patent infringement cases, the firm consistently incorporates its lawyer team, which it boosted with another lawyer. While midsized clients and clients from the pharma sector have relied on this full-service approach, international corporates such as Huawei, Intel and LG, have tended call in other firms. Highlights in litigation in infringement cases and before the EPO include comprehensive proceedings for Gabo Systemtechnik concerning a key patent for pipe bundles for laying fibreglass cables. The firm’s strategy of focusing its lawyers in Munich leaves the Düsseldorf market to its rivals in the competition for young lawyers and laterals, which is surprising as Boehmert has an office there.

Strengths

Patent prosecution with renowned technical specialties in electronics, chemicals, pharmaceuticals and biotech. Litigation related to pharmaceuticals.

European strategy

With mixed teams in Munich and Paris the firm is well positioned for the UPC. B&B deliberately focuses its lawyers’ litigation team in Munich, while direct competitors like Vossius are stepping up their Düsseldorf presence. That is surprising since the path to a top position in infringement cases in Germany is through a strong visibility in Düsseldorf. Boehmert is therefore at risk of falling behind its competitors.

Recommended individuals

Heinz Goddar, Jan Krauss, Christian Appelt, Thomas Bittner, Markus Engelhard (all patent attorneys)

Team

70 patent attorneys, 7 lawyers

Specialties

All-round IP activity, incl. trademarks and unfair competition and copyrights. Patent law centers on patent prosecution: large filing practice with broad technical expertise; opposition and nullity suits and infringement proceedings. Licences, R&D contracts and transaction advice.

Clients

Litigation: Aeritas against Turkish Airlines and Air Canada over mobil check-in; Gabo Systemtechnik against Dura-Lineover over laying fibreglass cables; Hörmann against Novoferm over garage doors (public knowledge); Solvay against Leuna-Harze/Kanzler over bio diesel manufacturing; Sparda Bank against Tele Tan over online banking (public knowledge); Sprick over packaging dispenser; Joyetech over e-cigarettes; JVC Kenwood against Logicom over DVDs; Wonderland against Cybex over children’s seats. Prosecution: filing and some oppositions for AiCuris, Beauty Union, German Cancer Research Centre, Eberhard Karls University of Tübingen, Fraunhofer-Gesellschaft, Gennova Biopharmaceuticals, Huawei, Intel, Immatics, Johann Wolfgang Goethe University of Frankfurt, King Faisal Specialist Hospital and Research Centre, Microsoft, LG, Liofilchem, Novartis, Novo Nordisk, Rittal, Tata Consultancy, Viventia Bio (some public knowledge). Advice: Sphingotec on R&D and licensing agreements.

Location

Munich