JUVE Comment

This Munich IP firm has held its ground among Germany’s very active patent prosecution practices. It also has some well-positioned partners highly renowned for their litigation experience, who generally advise on the technical issues in infringement proceedings and nullity suits for clients strong in the technology sectors, for example Tridonic and Zumtobel. They are often active for regular client Huawei in NPE suits, such as that against the NPE WSOU.

Despite the fact that Huawei works with other patent attorney firms in German proceedings as well, the close connection is increasingly paying dividends for Mitscherlich. For instance, the firm landed new client Honor, which operates Huawei’s former mobile communications business. In cases such as these, the patent attorneys join forces with external lawyers from firms like Preu Bohlig or Bird & Bird. But the firm’s own lawyers are increasingly getting in on the action when it comes to advising smaller technology clients from the firm’s prosecution portfolio on litigation. For example, Mitscherlich’s own lawyers now advise companies from the consumer electronics and nutrient industries very extensively.

On the eve of the UPC launch, however, the firm will have to consider more than ever whether to take a broad IP approach or, like Maikowski & Ninnemann and new Munich firm Thum & Partner, choose a strong litigation focus.

Strengths

Patent prosecution with technical specialties in chemical, electronics and mobile communication patents (the latter also litigation).

Recommended individuals

Martin Körber(“great interaction and integration with clients. Great capacity to co-work with lawyers in patent litigation”, client),Thomas Körfer, Christian Rupp (“great for EPO oppositions”, client; all patent attorneys)

European set-up

Mitscherlich is a national IP firm with a strong focus on patent prosecution and litigation for German clients. For a few clients like Huawei, the patent attorneys also operate in German suits as part of international series of proceedings. This could intensify if this core client asserts more of its own patents against competitors – including before the UPC.

With strong direct connections to clients like Huawei, a successful mixed approach and plenty of patent attorneys experienced in litigation who are qualified to represent clients at the UPC, Mitscherlich is well set for UPC suits, especially for German tech companies. But for larger UPC battles, it will need to grow and forge better international ties with similar firms.

Team

24 patent attorneys, 4 lawyers

Specialties

IP work has a clear focus on technical protection rights. Patent prosecution involving chemicals, electronics, medical products, mechanics and IT/software. Oppositions, nullity suits and infringement proceedings.

Clients

Litigation: Tridonic (claimant) against HTC over LEDs; Tridonic (claimant) against Ikea over retrofit lights; Huawei (defendant) against WSOU over mobile communications; Asahi Glass (defendant) against Saint-Gobain Glass in nullity suit over glass-coating technology; Rowenta (defendant) against Philips over steam irons; Maxtena (defendant) against Huber + Suhner over utility model regarding train wifi antennas. Prosecution: filing and oppositions for Akzo Nobel, Altana, Asahi Glass, Bosch, Cargill, Firmenich, Fujitsu, Gemalto, Glycom, Grundfos, Honda, Honor Device, Huawei, Hytera, Max-Planck-Gesellschaft, Nestlé, Sony, Revlon, Rohde & Schwarz, Tridonic, Zumtobel.