JUVE Comment

With its integrated team of patent attorneys and lawyers, Jones Day enjoys a strong market image in Germany. Clients from a multitude of technical fields entrust the patent attorneys with prosecution, some quite extensively. These include start-ups, Mittelstand companies and major corporations from around the world, like Samvardhana Motherson Group from India, as well as companies rooted in the local Frankfurt area.

With their technical expertise, the patent attorneys not only support the lawyers in litigation in Germany, but in other European countries, too. They often work closely with the Paris office, for example for Lufthansa.

Overall, the German team operates within a global team of patent specialists. The team frequently convinces its clients to entrust it fully with international proceedings of great economic importance, such as the ongoing cases for Idenix Pharmaceuticals and Lufthansa.

The practice’s recent achievements include litigation for Puma Biotechnology in a crucial lawsuit for the company against Hexal, Mylan, Boehringer Ingelheim and Generics regarding a cancer treatment procedure.

In prosecution, numerous regular clients count on the firm to restructure their portfolios; the coronavirus pandemic led to much strategic work. In technical terms, clients currently call on Jones Day for renewable energies (e.g. hydrogen), blockchain and AI. This shows that the patent attorney team is well positioned for these future technologies. It can advise its regular auto supplier clients, for example, on AI technologies such as advanced driver assistance systems. Consequently, the firm gave itself a boost with two patent attorneys – one physicist and one renewable energies specialist.

Strengths

Patent prosecution with technical expertise in the pharmaceuticals, biotech and auto sectors. Pharma proceedings. Very strong US practice.

European strategy

The European patents practice is present at some of the key locations for patent disputes in Europe such as Munich, London and Paris. In the French capital, Jones Day has an especially strong position with Thomas Bouvet’s team. The second pillar of the European practice is the German team, which impresses with a well-coordinated team of lawyers and patent attorneys.

Although the firm also has an office in Düsseldorf, Jones Day is not visible here with well-known partners. There is also room for development for the London team. The European team has an especially strong footprint in life sciences disputes. Internationally, close cooperation with the strong US teams is an asset, as is the integrated work with patent attorneys mainly located in the German offices.

Recommended individuals

Gerd Jaekel, Christian Paul; patent attorneys: Dorothée Weber-Bruls

Team

6 partners, 2 counsel, 10 associates (10 of whom are patent attorneys or dual-qualified)

Specialties

All-round IP activity with a focus on technical protection rights. Prosecution practice with broad technical expertise. Oppositions, nullity suits and infringement proceedings. Licensing contracts, transactions and strategic advice.

Clients

Litigation: Puma Biotechnology (claimant) against Hexal, Mylan, Boehringer Ingelheim and generics companies over cancer drug; Akebia Therapeutics (claimant) against FibroGen over EPO drug; BioMarin Pharmaceutical (defendant) against Alfred E. Tiefenbacher, Dipharma, Teva and generics companies over orphan drug Kuvan; CJ Cheil Jedang (defendant) against Ajinomoto over method for production of amino acids; Idenix Pharmaceuticals (defendant) against Gilead over hepatitis C drugs Sovaldi and Harvoni; Dentsply Sirona (claimant) against Kaltenbach & Voigt and J. Morita Manufacturing over computer tomography; Hope Medical (defendant) against Dr. Franz Köhler Chemie and Naomi Shimamura over sodium thiosulphate; Innio (claimant) against various German manufacturers over motors; Lufthansa Technik (claimant) against Astronics, Panasonic and others over aeroplane electronics; Tung Thih Electronic/Valeo (claimant) over distance warning for vehicles; ongoing litigation for Wonderland. Prosecution: patent filing and some oppositions for Akebia Therapeutics, Blickle Räder + Rollen, Convex, Ensyn Renewables, Keryx Biopharmaceuticals, Puma Biotechnology, Rational, Samvardhana Motherson Group (SMR) Automotive, Sunrise Medical, Tektronix (all public knowledge).