JUVE Comment

There is no doubt that this mixed IP firm is among the market leaders for patent prosecution and litigation on the patent attorney side. It also boasts a well-positioned lawyer practice with an excellent name in pharma litigation. Both the patent attorneys and lawyers are seen in economically important cases, for example for Allergan in the CRISPR/Cas battle, for Sanofi/Regeneron concerning cholesterol-lowering drug Praluent and for Zentiva regarding cancer drug pemetrexed and HIV drug Truvada. But the firm does not always work in such cases with mixed teams: the patent attorneys are often seen on the side of external lawyers, too. As such, law firms like Bird & Bird have demonstrated how to successfully offer clients mixed litigation teams more often. More and more practices of purely lawyers, such as Quinn Emanuel, are also consistently conducting nullity suits and EPO oppositions without external patent attorneys – a frontal attack on Hoffmann Eitle’s original work. A more consistent strategy or further investments in the lawyer team would therefore be advisable. There is one major advantage the firm does have over many of its competitors: its prosecution work gives it direct access to lots of top-flight clients, primarily from Asia. This could help to strengthen the lawyers’ position for mobile communications proceedings. In this segment the patent attorneys are active in numerous nullity suits and EPO oppositions. However, the infringement proceedings for Tinder operator Match Group or the Japanese patent pool IP Bridge are generally conducted alongside external lawyers. The prosecution practice has a broad technical basis overall and has been bolstered in all fields by equity or non-equity partners from the firm’s own young talent. HE is not content with a presence only at the EPO headquarters in Munich and has its own prosecution teams in the Netherlands, Spain and the UK. When expanding into the home countries of key competitors in European prosecution work, Hoffmann Eitle always followed the needs of clients and rarely followed a large-scale expansion strategy, such as that pursued by competitors such as Vossius.

Strengths

Patent prosecution in a broad technical field. Pharma litigation.

European strategy

With offices in Amsterdam, Düsseldorf, London, Madrid, Milan and Munich, Hoffmann Eitle is represented in almost all the key patent courts in Europe. Only Paris is lacking, but establishing a presence there is not a priority for HE at present. But Hoffmann Eitle strengthened its European presence elsewhere: in London it brought in high-profile reinforcements in the shape of a pharma partner from Mathys & Squire. The firm also opened a second Spanish office in Barcelona to focus more on the Catalan biotech scene. To further secure its position, HE is using its excellent name among Japanese clients to put its feelers out towards China and Korea. At most offices, the firm provides patent prosecution for national clients, but it only has a prominent patent litigation team in Munich. With this setup the firm is in excellent shape for the European competition for patent prosecution. In cross-border litigation it cannot yet compete across Europe with leading European practices like Hogan Lovells.

Recommended individuals

Niels Hölder, Dirk Schüssler-Langeheine, Clemens Steins; patent attorneys: Thorsten Bausch (“my favourite opponent, always a challenge”, competitor), Mark Jones, Matthias Kindler, Peter Klusmann, Markus Müller, Leo Polz, Joachim Renken (“excellent knowledge of the pharma sector”, competitor), Georg Siegert, Andreas Stefferl, Peter Schweighart, Joseph Taormino

Team

84 patent attorneys, 10 lawyers

Specialties

All-round IP activity with a strong focus on patent prosecution, with very broad technical expertise. Opposition and nullity suits and infringement proceedings. Renowned trademarks and unfair competition practice.

Clients

Litigation: (partly public knowledge) Allergan (claimant) in EPO opposition against CRISPR/Cas patent of University of California; strawman opposition against patent over gene sequencing of Illumina; Sanofi/Regeneron (defendant) against Amgen over cholesterol-lowering drug Praluent; Eisai on EPO opposition against Alzheimer-drug of Eli Lilly; GSK (defendant) in nullity suit over vaccine for children against various competitors; Zentiva (defendant) against Eli Lilly over cancer drug pemetrexed; Zentiva (defendant) against Gilead over Truvada; Sysmex (defendant) against Beckman Coulter over diagnostics technology for laboratories; Match Group (Tinder; defendant) against Hoccer over communication patents; IP Bridge (claimant) against HTC over mobile communications; Ericsson (claimant) against IPCom on EPO opposition over mobile communication patent; Samsung Bioepis against Genentech over herceptin; regularly for AstraZeneca, Accord, Asus, Boehringer Ingelheim, Lundbeck, NTT DoCoMo, Seiko Epson, Takeda and Toshiba. Prosecution: filing and part oppositions for Alnylam, Allergan, Federal Mogul, Fertin Pharma, Janssen Pharmaceuticals, Moderna Therapeutics. Filing for Astellas, Boeing, Fujitsu, Japan Tobacco, Mitsubishi, NTT Docomo, Oppo Mobile, Seiko Epson, Toshiba (all public knowledge).