JUVE Comment

The small German patent team of this international full-service firm has carved out a strong position for litigation in the pharma sector in just two years. This is thanks to Düsseldorf partner Ina vom Feld, who is highly experienced in this segment. She landed new clients for infringement litigation, with Foundation Medicine and SD Biosensor among them.

But the small practice is struggling to establish a sturdy team for the long term. Although a young lawyer came on board, Herbert Smith Freehills lost two associates, one of whom was experienced in electronics and IT patents. This was a setback for the practice, which is looking to win over more tech clients and play a greater role in pan-European proceedings and UPC cases. This will call for a larger team and long-term stability, in Germany especially.

Recommended individuals

Ina vom Feld

European set-up

The London team has a good reputation for pharma litigation, which fits in well with the profile of the German practice. The teams from the UK, the Netherlands, Belgium and Italy have already litigated together for Genentech, Hoffmann-La Roche and Roche against Pfizer. Recently, the German practice seamlessly joined this close cooperation, as shown by the representation of Foundation Medicine in a pan-European infringement case.

The firm has been on a drive towards expansion throughout Europe for years, and this is now paying dividends. In particular, Herbert Smith Freehills’ Italian-German axis provides an excellent connection for the London team into continental Europe. It also puts the firm in a better position to compete with Hogan Lovells or Allen & Overy Europe-wide for large pharmaceutical cases and the corresponding coordination work, which may come with the UPC. However, the firm’s Paris office still lacks the visibility and clout of its colleagues in other European jurisdictions.

Team

1 partner, 2 associates

Specialties

Mainly litigation over technical protection rights. Pan-European experience in pharma patents.

Clients

Litigation: SD BioSensor (defendant) against Qiagen over tuberculosis test procedure; Foundation Medicine (defendant) against Guardant Health over liquid biopsy product (settled 2021); Sanofi (defendant) against Ratiopharm on SPC for Aubagio (settled 2021); Millennium Pharmaceuticals (claimant) against Zentiva/Synthon and Betapharm over damages for sales of generic verions of bortezomib; Dyson (claimant) against Beijing Roborock and Dreame on rechargeable vacuum cleaners. Advice: FTO analysis for Roche.