JUVE Comment

The lawyers at this highly traditional Hamburg IP boutique are well positioned in patent proceedings. Partner Karsten Königer mainly represents his regular SME clients in actions brought by competitors. His highest profile client is Lidl, which the team frequently represents against attacks from brand manufacturers concerning products from a wide range of technical fields.

But the team has a second pillar in the firm’s strong roots among pharma clients. Its close connections to the generics industry is demonstrated by Königer’s current work for the generic drug manufacturers Heumann Pharma, Puren Pharma and Vivanta in a much-observed fingolimod case against Novartis at the Düsseldorf patent courts. One other partner litigates for pharma clients in cases involving pharma advertising law as well as patents.

However, Harmsen Utescher is having difficulties further developing the practice. The small patent team would benefit from growth to keep up with other German IP boutiques that have positioned themselves much more offensively for the UPC.

European set-up

From time to time the Hamburg boutique is involved in international litigation for its regular clients. Here it counts on excellent relationships with a whole host of selected firms in other countries. Although there are no formal connections in place, they call on Königer time and again for new instructions. The lawyers also regularly appear in EPO proceedings, for example for a pharma company over second medical use patents for a treatment to improve bowel function.

The publicity-shy SMEs and privately owned clients such as Lidl appear to prefer the discreet approach of Harmsen Utescher’s lawyers to an internationally integrated larger firm. This means that the firm is generally well positioned to represent SMEs in UPC proceedings. However, it has not yet been able to implement this to the extent that it has gone beyond advising clients on UPC issues to conducting UPC proceedings. At present, generics manufacturers are still too rarely sued at the UPC but Harmsen Utescher’s other typical clientele, SMEs, are already using the court.

Strengths

Litigation for SMEs and generic drug manufacturers.

Recommended individuals

Karsten Königer (“prudent and eloquent patent litigator with a technical background”, “very good in mechanics and electronics patents”, competitors)

Team

3 lawyers, 1 dual qualified

Clients

Litigation: Lidl against Vorwerk in infringement and nullity actions concerning Thermomix (public knowledge); Heumann Pharma, Puren Pharma and Vivanta against Novartis over MS drug fingolimod/Gilenya.