JUVE Comment

With its tried-and-tested mixed approach, this Munich IP firm is largely geared towards disputes, with pharma, biotech and medical products clearly dominating the firm’s public image. Work for the life sciences sector has always been Maiwald’s great strength. The patent attorneys rigorously conduct oppositions at the EPO and nullity suits involving key active ingredients. They are equally active for patent holders and manufacturers of generics and biosimilars. Marco Stief, head of the lawyer team, is a distinguished expert for licences and patent extensions for drugs (SPCs). A look at the many notable prosecution clients, on the other hand, shows how strongly the firm’s filing work differs from litigation. The firm files electronics and mechanics patents for numerous companies. Like many Munich outfits, Maiwald has a technically broad filing practice. This has not only grown with new portfolios, e.g. from the Massachusetts Institute of Technology, but also with a number of new patent attorneys. Maiwald also appointed lots of patent attorneys to partner or counsel – an expression of how it cultivates a structure similar to large firms. The firm is seen as well-managed. Maiwald is yet to establish itself, however, in litigation involving electronics and mobile communications patents. Prosecution clients like Huawei and Intel would be a good basis for more visibility. But for both clients, Maiwald would have to prevail over well-established house firms. A strategic strengthening of the litigation team – with a lateral visible in the market with their own client contacts – is therefore just as important as bolstering the Düsseldorf office with additional lawyers.

Strengths

Patent prosecution and litigation with technical expertise in biotech, pharmaceuticals and chemicals. Licensing contracts. Excellent US contacts.

European strategy

The efficient mixed approach and international profile for US clients are good starting points for playing a central role in the European patent business as well as at the potential UPC. But compared to other large mixed practices like Bardehle or Grünecker, Maiwald still lacks international visibility through foreign offices of its own. Given its strong pharmaceuticals focus, a London office could make sense, even with the UK outside the UPC.

Recommended individuals

Marco Stief (“commitment to detail, fights hard, but always fair, has put his stamp on Maiwald”, both competitors); patent attorneys: Regina Neuefeind, Eva Ehlich, Dirk Bühler (“very valuable input, very responsive”, client)

Team

70 patent attorneys, 9 lawyers

Specialties

IP activity with a clear focus on patent prosecution. Broad technical spectrum with a large pharmaceuticals and chemicals practice. Opposition and nullity suits. Infringement proceedings with mixed teams. Licensing and R&D contracts.

Clients

Litigation: regularly for Fresenius Kabi; 1a Pharma and Hexal (claimants) in nullity suit against MSD over Inegy; Mylan Dura (claimant) in nullity suit against Gilead over Truvada; Mundipharma (defendant) against various opponents at EPO over Targin; Dr Reddy’s/Betapharm over fulvestrant and Truvada; University of California (defendant) against various opponents over CRISPR/Cas patent; Radiometer (defendant) against Brahms over PCT technology; Beckman Coulter (claimant) against Sysmex over diagnostics technology; Merck (claimant) in EPO opposition against generics over MS drug Mavenclad; Roche Diagnostics (defendant) against Illumina over prenatal diagnostics; Purdue against EPO (Federal Constitutional Court); SPC applications and CGEU proceedings for Royalty Pharma; Nike (claimant) against Puma over sneakers. Prosecution: filing and some oppositions for Abbott, Bausch & Lomb, Robert Bosch, Borealis, Baidu, Huawei, Intel, LTS Lohmann, Massachusetts Institute of Technology, Merck, Purdue, Takeda, Regents of the University of California.