JUVE Comment

The patent attorneys at this Munich IP firm still enjoy an excellent reputation for the technical elements of infringement proceedings and nullity suits, as well as EPO oppositions. The firm is also one of the busiest in Germany for patent prosecution for pharma, biotech and electronics patents.

The loss of partner Bernhard Thum and five other patent attorneys in the late summer of 2021 did nothing to change Wuesthoff & Wuesthoff’s strong position in litigation over life sciences and electronics patents. Until then, Thum was one of the best-known litigators at the firm and the figurehead of the prosecution practice for mechanics patents. The team took important litigation clients such as Edwards Lifesciences and SRAM with it. Scania will share its prosecution work between Thum & Partner and Wuesthoff & Wuesthoff from now on. The departures are above all a bitter blow to the firm’s prosecution work in mechanics and engineering.

Although the firm is now weakened in these areas and will need to recruit new staff, the departures do not change the fact that Wuesthoff & Wuesthoff has an extremely strong presence in German mobile communications suits. With such clients as LG, Oppo and Xiaomi, it is highly visible in this segment. The Chinese mobile communications manufacturers are among the most frequently sued companies in Europe at present. Axel Katérle, as the most renowned name among the firm’s patent attorneys, appeared in a prominent role in major proceedings for Ericsson against Apple. In the life sciences field the work of the firm centres on major opposition suits before the EPO regarding ingredients of great economic importance. These oppositions frequently have the character of large infringement proceedings, including Sandoz against Biogen’s multiple sclerosis drug Tysabri and various strawman oppositions against CRISPR patents.

Strengths

Patent prosecution with technical expertise in electronics and life sciences, especially biotech. Mobile communications litigation. Plant variety protection.

European set-up

Wuesthoff & Wuesthoff is a national IP firm with a strong focus on patent prosecution and litigation for international clients both in the life sciences and the mobile technology sector. The patent attorneys work for major pharma manufacturers (e.g. Novozymes) in the German proceedings of pan-European disputes and often as the strawman in EPO oppositions, for instance involving CRISPR/Cas patents. The same goes for cross-border mobile communications battles, where the patent attorneys are active for Chinese implementers such as Oppo or Xiaomi. For Ericsson, they conduct active suits.

The firm’s extensive litigation experience, good direct contacts to clients like Ericsson and numerous pharma companies, as well as its close ties to law firms, offer a good basis for playing a central role in UPC litigation, especially as the patent attorneys can run UPC proceedings themselves. In the early stages, however, they will most likely appear in such cases with external lawyers. The firm will therefore have to keep a close eye on whether its partner firms are switching to a mixed approach with their own patent attorneys.

Recommended individuals

Axel Katérle (“not only good with the technical side, but the legal side, too”, competitor), Bernd Laqua, Rainer Röthinger (“very good expertise, quick and reliable”, competitor), Steffen Schmidt, Hendrik Wichmann (all patent attorneys)

Team

27 patent attorneys

Partner moves

Bernhard Thum (to own firm)

Specialties

All-round IP activity. Patent prosecution with a broad technical spectrum. Nullity and opposition suits, infringement proceedings, generally with external litigators. Mainly active for automotive, biotech, pharma and chemicals companies.

Clients

Litigation: Ericsson (claimant and defendant) against Apple in infringement suits and EPO oppositions over 5G patents; Oppo (defendant) against IP Bridge over LTE patents; Xiaomi (defendant) against Philips over mobile communication technology; LG (defendant) against Fipa and Conversant mobile communication technology; Ericsson (defendant) against Wiko regarding EPO opposition; Novozymes (defendant) against DSM over enzyme in milk products; Polpharma/Sandoz (opponent) against Biogen in EPO opposition over MS drug natalizumab; strawman in EPO opposition against Sanofi over pharma ingredient; strawman in EPO opposition over CRISPR/Cas patents; Alcon (claimant and defendant) against AMO over laser-eye technology; AOC (claimant) against Tridonic in opposition against basic patent for white LEDs. Prosecution: Oppo regarding EPO oppositions (public knowledge). Filing and oppositions for Airbus, Colgate-Palmolive, Fanuc, KT&G Corporation, LG, Olympus, Scania, Shin-Etsu, Stryker, Tencent, Xiaomi.