JUVE Comment

The patent attorneys at this Munich IP firm are well positioned for all-round patent prosecution, including EPO oppositions and nullity suits. In spite of its broad technical setup, Prinz & Partner is best known for its experience in mechanics and electrical engineering. The firm traditionally represents many clients from the automotive industry, where it boasts a solid network. Examples include Faurecia, Valeo and ZF.

In infringement proceedings, the patent attorneys often work with external lawyers, such as Taylor Wessing in cases for Truma or Schischek. The fact that clients like Valeo or a manufacturer of print machines team them up in lawsuits with firms like Bird & Bird or Hogan Lovells, which have their own patent attorneys, underlines the experience and long-standing client connections of the patent attorneys from Prinz & Partner. But given the trend towards more mixed firms, which will be lent further momentum by the UPC, such advisory set-ups will become more difficult. Prinz & Partner is currently seeking the right constellation for future litigation activity within its international AIPEX firm network – earlier than many of its competitors opting for independence. The realignment would get an additional boost if the younger partners now seized the opportunities offered by the new court and became more present in the market alongside the two best-known partners Jochen Sties and Thomas Kitzhofer.

In addition to many clients from the auto supply industry, further potential is harboured by numerous clients in other industries that face challenges with connected technologies, for instance Rohde & Schwarz, which is a relatively new client for Prinz & Partner but is already one of its strongest filers. Some clients from the life sciences sector also used the past year to invest in filing. The firm’s renowned biotech experts made strides, for example in work for Sartorius.

Strengths

Litigation regarding engineering patents. Patent prosecution regarding automotive, electronics and mechnical engineering.

European set-up

Prinz & Partner is a national IP firm with a strong focus on patent prosecution and litigation on the patent attorney side for German clients. For these clients the firm mainly litigates in EPO oppositions and infringement or nullity suits before German courts. In the latter, the patent attorneys typically cooperate with external lawyers.

When the UPC launches, the patent attorneys are likely to appear alongside lawyers for the most part, as in the German courts. But they will also run UPC proceedings without lawyers in exceptional cases.

Prinz & Partner is connected with comparable patent attorney firms in nine European countries via the AIPEX network, including in France, Italy, Spain, the Netherlands and the UK. With its AIPEX partner firms, Prinz & Partner is currently forging close ties with independent law firms without patent attorneys of their own in the relevant UPC countries. The firm is therefore making sure it has a set-up suitable for the new court earlier than many of its German competitors.

Recommended individuals

Jochen Sties (“never quick to give in, always gets maximum results”, client), Thomas Kitzhofer (“been happy with him for years”, client; both patent attorneys)

Team

12 patent attorneys

Specialties

Patent filing with a broad technical spectrum, especially patents in mechanics, mechanical engineering and electronics. Opposition and nullity suits. Infringement proceedings with external lawyers. Also trademarks and unfair competition with the firm’s own lawyers.

Clients

Litigation: regular litigation for Volvo; Truma (claimant) against GOK in infringement and nullity suits over heating systems for caravans; Schischek (claimant) against Petz over special-drive engineering; Jochen Schweizer (opponent) on EPO opposition over indoor skydiving facility; Faurecia (both opponent and defendant) regarding various EPO oppositions against Tenneco and Eberspächer over exhaust systems. Prosecution: filing for Alfred E. Tiefenbacher, BCS Automotive Interface Solutions, Delo, SPCs for Curiosity Diagnostics. Filing and oppositions (mostly including strategic advice and portfolio management) for Bacteromic, BMW, Boucherie, Bürkert, Faurecia, FlyNow Aviation, Galata Chemicals, Hilti, Hoerbiger Antriebstechnik, Kennametal, L’Oreal, Medac, Metrona, Micro Resist Technology, Nike, Rational, Resinate Materials, Rohde & Schwarz, Sartorius, Schill + Seilacher, SÜSS MicroTec, The Secant Group, THK Rhythm Automotive, Truma, Valeo, ZF Active Safety, ZF Automotive and ZTE (some public knowledge).