JUVE Patent

Baker McKenzie – Germany 2021

JUVE Comment

The German litigation team in this large international firm is well positioned in patent proceedings for Mittelstand companies. Its high number of dual-qualified lawyers/patent attorneys sets it apart from competitors. The firm reinforced this mixed setup with an additional young patent attorney, who gained experience at competitor Bardehle Pagenberg. Combined with the appointment of Alexander Ritter to partner, this is a strong commitment by the full-service firm to expanding its patent practice.

Indeed, the firm has many untapped opportunities to advise its clients on an all-round basis – the preeminent life sciences practice in particular offers numerous synergies for the patent team, which also provides prosecution. It already demonstrated its industry expertise and technical knowledge for regular client Becton Dickinson and is acquiring a steady stream of medical product manufacturers as new clients.

More and more Mittelstand companies are entrusting the team with IoT projects. Experience from such work may be an asset to the team when it comes to the digitalisation and networking of other industries – even though it has not been seen in the major connected cars suits so far.

With three partners and an associate, who is already taking on a leadership role in some technically complex cases, the team is nicely positioned for the future and therefore recommends itself for more comprehensive, complex proceedings involving multiple patents.

Strengths

Litigation with technical and legal expertise. Also arbitration.

European strategy

The European patents practice has a respectable setup for cross-border disputes with teams in London and Munich. But none of the offices are market leaders and the planned growth in Paris has yet to materialise. Overall, the firm has conducted relatively few pan-European cases compared to its competitors, even though it conducts some US-related cases from Germany.

Recommended individuals

Jochen Herr

Team

3 partners, 4 associates (of whom 3 are dual-qualified), 1 patent attorney

Specialties

Strong in trademarks and unfair competition. In patents, a mixed approach and technical specialties in chemicals, electronics and mechanics patents. Patents-related arbitration, transactions, licensing contracts and antitrust.

Clients

Litigation: Giesecke & Devrient (claimant) against US government over passports; RealD (claimant) against Volfoni over 3D cinema projectors; TMG Automotive (defendant) against Benecke Kaliko on infringement and oppositions over faux leather for cars; Rehau (claimant) against Egger over polymer chemical patent; Mayer & Cie (claimant) against Terrot over knitting machines. Prosecution: oppositions for Arcelik, Becton Dickinson, E.on, Pelikan, RealD. Advice: Curevac on cooperation over cancer vaccine.

Location

Munich, Frankfurt