JUVE Comment

With its mixed team of patent attorneys and lawyers, Jones Day enjoys a solid reputation in the German market for patent litigation and prosecution in equal measure. Clients from an array of technical fields and sectors entrust the patent attorneys to look after their patents, some to a considerable degree. Strong specialties have formed over the years in the pharma/biotech, automotive and semiconductor sectors. The patent attorneys are very active, for instance, at the German Patent and Trademark Office for a US semiconductor manufacturer.

This prosecution activity is also reflected in the litigation work by the lawyers and patent attorneys, with much advice to a chip manufacturer on potential lawsuits, for example. Solid and NXP are further clients from the high-tech sector who are represented before the German courts, mostly against suits brought by competitors.

In the pharma and biotech sector, on the other hand, the German litigation team is often active in high-stakes cases, for example for originators like Idenix, Puma Biotechnology, Akebia Therapeutics or Toolgen. Jones Day is also helping a major international pharma corporation prepare for generics manufacturers to enter the market with a cancer drug. Such work often includes intensive EPO opposition activity. Advice is frequently provided together with the teams from Paris and London, and almost always with the excellent US patent practice. Because of this outstanding connection, Jones Day is currently in the best position to operate on a par with the German market leaders in the life sciences sector. But in extensive mobile communications battles, the German Jones Day team has not played a significant role lately. The practice, along with the French patent attorneys, could harness more potential from the large US practice in future UPC proceedings. This will also require that the US lawyers consistently pass on potential UPC work to the European partners.

With the launch of the UPC, what the European and US patent practices have been working towards for years is now here. It has always been Jones Day’s goal to use its base in both jurisdictions to put in a strong performance in global patent disputes. Of the German market leaders, only Quinn Emanuel has a foundation in North America and Europe to rival that of Jones Day.

There is also potential for UPC work from another direction: the Motherson Group, which the German patent attorneys already advise intensively on prosecution and licences, is a client from India that is getting set for the new court.

Strengths

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

European set-up

Jones Day is a globally integrated firm with a strong IP practice. Clients from a wide spectrum of technical fields, such as Lufthansa, the Motherson Group or many of its clients from the pharma and biotech sector, rely on the patent team completely for their international cases. The German team has worked particularly closely with the strongly positioned US team for many years. It also conducts a whole host of proceedings for Identix, Lufthansa and Solid in cooperation with the London team. For Deezer the team worked with colleagues in Paris.

The European patents practice is present at some of the key UPC locations such as Munich, Düsseldorf and Paris. In the French capital, Jones Day has an especially strong position. The second pillar of the European practice is the German team, which impresses with a well-coordinated team of lawyers and patent attorneys. The European patent attorney team based in Frankfurt and Munich plays a central role in Jones Day’s international setup. It not only files patents centrally at the EPO, but also runs major lawsuits here – especially in the life sciences sector – regarding the granting of patents, or supporting its clients when attacking competitors’ technologies.

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.

Recommended individuals

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

Team

5 lawyers, 11 patent attorneys (some are 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 CheilJedang (defendant) against Ajinomoto over method for production of amino acids; Idenix Pharmaceuticals (defendant) against Gilead over hepatitis C drugs Sovaldi and Harvoni; Toolgen in EPO opposition over CRISPR/Cas patent (public knowledge); Hope Medical (defendant) against Dr. Franz Köhler Chemie and Naomi Shimamura over sodium thiosulphate; NXP Semiconductors (defendant) against ST Microelectronics over network technology; Solid (defendant) against CommScope over antenna systems, 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, Cylance, Ensyn Renewables, Genentech, Keryx Biopharmaceuticals, Puma Biotechnology, Rational, Motherson Group, Single Temperiertechnik, Sunrise Medical, Tektronix (all public knowledge). Advice: Genentech on R&D cooperations with BioNTech for various drugs; Blickle Räder + Rollen on licences and FTO analyses; SMR Group on licences and employee invention law.