JUVE Comment

With an established mixed approach, this firm specialises in litigation, with an emphasis on pharma, biotech and medical products. The patent attorneys are among the chasing pack at the top of the market, while the lawyers are well positioned in litigation. Having restructured in recent years, Maiwald is on a clear path towards expansion. The patent litigation team welcomed experienced patent attorney Ulrike Herr from Isenbruck Bösl Hörschler. She has many years of experience in SPC lawsuits and thus complements Maiwald’s well-respected life sciences team nicely.

The firm traditionally has a highly visible specialty in this sector, with extensive filing activity matched by just as many disputes over 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. Of the lawyers, Marco Stief has an especially strong reputation as a distinguished expert for licences and issues surrounding SPCs. He drew attention in the work for Betapharm as one of the defendants in a dispute against Bayer over Nexavar.

But the firm does not always manage to translate its successful prosecution and opposition work to infringement proceedings. CureVac, for instance, entrusts Maiwald’s patent attorneys with EPO oppositions, but turned to Bird & Bird’s lawyers to litigate in an infringement suit against BioNTech. It may be some time before Maiwald’s visibility in infringement cases matches that of competitors with similar setups, such as Vossius or Hoffmann Eitle. The visibility of the lawyer team centres too strongly onStief.

In addition to a pronounced focus on pharma and biotech, Maiwald has raised its presence in sectors such as electronics and mechanics. This is true for the patent attorneys in particular, as shown by prosecution for clients such as the equipment manufacturer Hilti and EPO oppositions for automotive supplier Knorr-Bremse. Maiwald is not yet registered as strongly in the market for this specialty as for life sciences.

Strengths

Litigation and patent prosecution with technical expertise in biotech, pharmaceuticals and chemicals. Licensing contracts. Excellent US contacts.

European set-up

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 while the patent attorneys are already active in nullity suits and EPO oppositions relating to pan-European infringement proceedings – for Illumina over DNA sequencing patents or for Sandoz Hexal over SPCs, for example – national lawsuits dominate the work of the lawyer team.

Compared to other large mixed practices like Bardehle or Grünecker, Maiwald also 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 (“excellent, pragmatic patent lawyer”, “thorough and very dedicated”, competitors); patent attorneys: Regina Neuefeind, Eva Ehlich, Dirk Bühler (“hugely experienced biotech patent prosecutor”, competitor)

Team

71 patent attorneys, 7 lawyers

Partner moves

Ulrike Herr(from Isenbruck Bösl Hörschler), Elke Wurster (to TÜV Süd), Stephan Schneller (to own firm)

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; Betapharm (defendant) against Bayer over Nexavar; Hexal (claimant) in nullity suit against Amgen over cinacalcet; University of California (defendant) against various opponents in EPO opposition over CRISPR/Cas patent; CureVac (defendant) against BioNTech in EPO opposition over mRNA vaccines; Illumina (opponent) against University of Columbia/Qiagen in EPO opposition over DNA sequencing; Powermat (opponent) against IKEA in EPO opposition over wireless power supply; Philip Morris (opponent) against Fontem in EPO opposition over electronic smoking device; Bausch Health (defendant) against Actavis and Fresenius Kabi in EPO opposition over Relistor (settled 2021). Prosecution: filing for Bausch & Lomb, Borealis, LTS Lohmann, Lindt & Sprüngli, Mundipharma, Purdue, Takeda, Volvo. Filing and oppositions for ABB, 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 the takeover of Constellation Pharmaceuticals by Morphosys.