JUVE Comment

This firm is best known for intensive prosecution work across a broad technical spectrum, with specialties in mechanics, electronics and IT. The reluctance of the auto industry – a focal point on the firm’s client list – to file patents during the coronavirus crisis was compensated for by a rise in work from Asian tech corporations, such as Kyocera and Baidu. The patent attorneys also successfully used their offices in Shanghai and Taipei to deepen connections.

For some regular clients, for whom the firm has mainly filed electronics patents before now, artificial intelligence patents are playing a growing role. In contrast, Viering Jentschura’s roots in the life sciences sector are traditionally less pronounced than at similar Munich firms like Maiwald or Vossius & Partner.

The focus on prosecution is also reflected in the mixed firm’s litigation work, which has stagnated recently. The patent attorneys are conducting many opposition and nullity suits, especially for electronics and mechanics patents, and the lawyer team based in Munich has been very active for some of the firm’s Asian clients, such as manufacturers of tools or power plant technology. But since Asian companies on the whole were more reserved filing suits in Europe during the coronavirus pandemic, the litigation team was unable to step up activity in infringement proceedings to any great degree, despite an experienced non-equity partner bolstering the practice two years ago. It is still not present in the major mobile communications proceedings. In its efforts to land higher end litigation work, an experienced lateral in Düsseldorf could be a strategic investment to raise the firm’s appeal for Asian clients, who may be sued in Germany in connection with electronics or mobile communications patents.

Strengths

Prosecution and litigation regarding electronics, IT and engineering patents.

Team

38 patent attorneys, 6 lawyers

Specialties

IP activity focuses on technical protection rights. Large proportion of patent prosecution with a broad technical spectrum. Opposition and nullity suits. Ten US patent attorneys provide advice on US patent filing from the German offices. Own offices in Singapore and Taiwan. Infringement proceedings increasingly with the firm’s own lawyers.

Clients

Litigation: Scia Systems (claimant) against Meyer Burger over coating technology; Aracaria (claimant) against competitor over cooking vessels; Plastex (claimant) over window ventilation; shutter manufacturer against competitor over smart home applications; Asian manufacturer on power station technology; various Asian manufacturers on tools. Prosecution: filing partly including oppositions and strategic portfolio management for Andritz, Baidu, Henkel, Hyundai, Infineon, Intel, Kyocera, Leica Biosystems, LG, Nikon, Osram, NTT Docomo, Solarworld, German pharma corporation.