JUVE Comment

This patent attorney practice strongly positioned for litigation is regularly instructed by companies from its technically broad client portfolio for high-stakes EPO oppositions and national nullity proceedings, especially for electronics and mechanics patents. Such work often stems from intensive patent filing within a wide technical spectrum, although the firm is best known for mechanics, electronics and IT. German as well as numerous US and Asian tech corporations, including Intel and Baidu, feature on the client list.

The lawyer team, based in Munich, has been very active for some of the firm’s Asian clients, such as manufacturers of tools or power plant technology. It also conducts infringement proceedings for a whole host of regular German clients and accompanies them during confiscations at trade fairs.

As in the first year of the coronavirus pandemic, Viering Jentschura saw a rise in work for Asian tech companies, with Kyocera and Baidu among them. The patent attorneys successfully capitalised on their Shanghai and Taipei offices to consolidate connections. For some regular clients, on whose behalf the firm has mainly filed electronics patents before now, artificial intelligence patents are playing a growing role. A large German auto supplier is important in this regard. In contrast, Viering Jentschura’s roots in the life sciences sector are traditionally less pronounced than at similar Munich firms like Maiwald or Vossius & Partner.

In terms of the upcoming UPC, the firm is nicely positioned thanks to its mixed approach and excellent connections in the US and Asia – whereby its clients in the early days of the new court are more likely to be on the defendant than the claimant side, with a focus on the firm’s many clients from the electronics and IT sectors as well as the chip industry. In its efforts to land higher end litigation work, an experienced lateral in Düsseldorf on the lawyers’ side could still be a strategic investment to raise the firm’s appeal for Asian clients, which may be sued in Germany and at the UPC in connection with electronics or mobile communications patents.

Strengths

Prosecution and litigation regarding electronics, IT and engineering patents.

Team

35 patent attorneys, 6 lawyers

Specialties

IP activity focuses on technical protection rights. Large proportion of patent prosecution with a broad technical spectrum. Opposition and nullity suits. Seven US patent attorneys advise on US patent filing from the German offices. Own offices in Singapore and Taiwan. Infringement proceedings increasingly with the firm’s own lawyers.

Clients

Litigation: European plant construction company against competitor over water and turbine technology; shutter manufacturer against competitor over smart-home applications; Asian manufacturer on power-station technology; various Asian manufacturers over tools. Prosecution: filing partly including oppositions and strategic portfolio management for Andritz, Baidu, CI Tech, Cloud & Heat, Henkel, Hyundai, Infineon, Intel, Kyocera, Leica Biosystems, LG, Nikon, Osram, NTT Docomo, Scia Systems, Solarworld, Zellkraftwerk, German pharma corporation.