JUVE Comment

The structural realignment that this Munich IP firm, which is well positioned in litigation, decided on a good three years ago is making an impact. In keeping with its tried-and-tested mixed approach with patent attorneys and lawyers, the latter are firmly anchored in management. Today, their career paths are organised following the model of large law firms. The strategy has affected all technical fields of the broad-based prosecution practice.

The firm traditionally has a very visible specialty in life sciences patents. Here, the focus is on extensive filing activity and just as many disputes concerning drug, biotech and medical product patents. Patent attorneys such as Regina Neuefeind, Eva Ehlich and Dirk Bühler conduct numerous oppositions at the EPO as well as nullity suits over key ingredients. They are active for patent holders and manufacturers of generics and biosimilars in equal measure. Marco Stief, head of the lawyer team, is known in the market as a distinguished expert for licences and issues surrounding SPCs.

As a further result of Maiwald’s reorganisation, electronics and mechanics have now drawn level in patent prosecution, with work for a south German scaffolding supplier, a robotics corporation and Volvo. Maiwald is also increasingly hired in proceedings like those for Powermed concerning technology for wireless power supply and application patents for AI. But it will take some time until Maiwald has built up a similarly strong visibility for litigation in these technical fields as it enjoys for life sciences patents.

The lawyers could make a breakthrough in the mobile communications sector by tailoring their advisory services more closely to prosecution clients, such as Huawei and Intel. A strategic reinforcement of the litigation team, for example by a lateral in Düsseldorf, could speed up the development.

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 the basis for the patent attorneys’ European patent business, as well as a good starting point to play an important role at the 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 now that the UK has left the European Union. Exclusive connections to a similarly positioned UK law firm are an alternative to this.

Recommended individuals

Marco Stief (“very experienced in pharma litigation, extraordinary knowledge of SPCs”, competitor); patent attorneys: Regina Neuefeind, Eva Ehlich, Dirk Bühler (“valuable input regarding FTOs, prosecution and oppositions”, client)

Team

65 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, Merck, Radiometer, Roche Diagnostics, Royalty Pharma; Hexal (claimants) in nullity suit against Amgen over cinacalcet; Mylan Dura (claimant) in nullity suit against Gilead over Truvada; Dr Reddy’s/Betapharm (defendant) against Gilead over Truvada; Dr Reddy’s/Betapharm (defendant) against AstraZeneca over fulvestrant; Dr Reddy’s/Betapharm (claimant) against ViiV in nullity siut over Kivexa; Klinge Pharma and Hexal (defendants) against MSD over Inegy; Mundipharma (defendant) against various opponents at EPO over Targin; University of California (defendant) against various opponents over CRISPR/Cas patent; Beckman Coulter (claimant) against Sysmex over diagnostics technology; Purdue against EPO (Federal Constitutional Court); Powermat (defendant) against IKEA in EPO opposition over wireless power supply. Prosecution: filing: ABB, Bausch & Lomb, Borealis, Curevec, LTS Lohmann, Mundipharma, Ocular Therapeutics, Purdue, Takeda, Volvo; filing and oppositions for Robert Bosch, Baidu, Huawei, Intel, Massachusetts Institute of Technology, Merck, Regents of the University of California (some public knowledge). Advice: Royalty Pharma on patent law aspects of financing takeover of Constellation Pharmaceuticals by Morphosys.