JUVE Comment

The patent attorneys at this Munich firm are strongly positioned for all-round prosecution, including oppositions at the EPO and nullity suits. Despite the firm’s broad technical setup, it is best known for its experience in mechanics and electrical engineering. Prinz & Partner traditionally represents many clients from the auto industry, where it has a good network. Examples include Valeo and ZF.

The cutbacks in this sector caused by coronavirus did not, however, affect Prinz & Partner’s business. Firstly, the firm drew on its excellent experience in this field to land numerous clients in other industries, among them Rhode & Schwarz, which face similar challenges with connected technologies. Secondly, some clients used the past year to invest in filing. The work of the renowned biotech experts made strides, for example for Santorius.

The firm suffered a setback at the end of 2020 with the closure of its Hamburg office, where it lost a partner who trained at the firm. It kept the remaining two patent attorneys with a flexible remote working solution. Given the firm’s cautious approach to growth, focusing on in-house talent, the closure of the north German office was a disappointment.

In infringement proceedings, the firm often works with external lawyers, such as Taylor Wessing. The trend towards mixed firms has, however, made some of the previously regular partners, for example Hogan Lovells, less attractive to work with and the team may now have to rethink its collaborations.

Strengths

Litigation regarding engineering patents.

European strategy

Prinz & Partner is a national IP firm with a strong focus on patent prosecution for German clients. However, it is connected via the AIPEX network with comparable law firms in nine European countries, including France, Italy, Spain, the Netherlands and the UK.

Recommended individuals

Jochen Sties (“very good cooperation through his extensive experience in infringement cases”, competitor), Thomas Kitzhofer (“top expert”, competitor; both patent attorneys)

Partner moves

Johannes Trapp (to Flach Bauer Stahl)

Team

12 patent attorneys

Specialties

IP activity with a strong focus on patents. Filing with a broad technical spectrum, especially patents in mechanics, mechanical engineering and electronics. Opposition and nullity suits. Infringement proceedings with external lawyers. Also trademarks and unfair competition with the firm’s own lawyers.

Clients

Litigation: Schischek (claimant) against Petz over special drive engineering; regular litigation for Volvo; Jochen Schweizer (opponent) on EPO opposition over indoor skydiving facility; Faurecia (both opponent and defendant) regarding various EPO oppositions against Tenneco and Eberspächer over exhaust systems. Prosecution:filing for BCS Automotive Interface Solutions, Delo, European Central Bank; SPCs for Curiosity Diagnostics; filing and oppositions (mostly including strategic advice and portfolio management) for Bacteromic, BMW, Boucherie, Bürkert, Faurecia, Fraport, Galata Chemicals, Hoerbiger Antriebstechnik, Kennametal, L’Oreal, Medac, Metrona, Micro Resist Technology, Nike, Rational, Resinate Materials, Rohde & Schwarz, Sartorius, Schill + Seilacher, SUSS MicroTec, Alfred E. Tiefenbacher, The Secant Group, THK Rhythm Automotive, Truma, Valeo, ZF Active Safety, ZF Automotive and ZTE (some public knowledge).