JUVE Comment

The German patent practice of this international full-service law firm is primarily known for its work in patent litigation for pharmaceutical companies. The Düsseldorf partner Ina vom Feld is particularly well known for this and regularly represents well-known innovators such as Sanofi or Millennium Pharma in infringement proceedings. Herbert Smith Freehills also advises on licences and FTO analyses, with vom Feld regularly contributing her expertise in regulatory matters. The team’s visibility is also increasing outside its traditional life sciences focus, having recently won over well-known automotive suppliers CATL and Johnson Matthey.

The team has a remarkable track record in litigation for its size. The cases are frequently large, such as the damages claim brought by Millennium Pharma against various generics manufacturers over the blockbuster drug Velcade.

The firm’s international network offers potential for referrals, but to exploit this the team needs to grow. A lateral hire with experience in IT and mobile communications could be a useful addition to the practice.

European set-up

An expansion of the team should also pay off for UPC work. Herbert Smith Freehills is representing Sanofi here, one of the first plaintiffs from the pharmaceutical industry, against several generic manufacturers concerning cancer drug capazitaxel. Lawyers from Germany, Italy, the UK and France are working closely together under the leadership of the Paris office. The international cooperation is already well established through the pan-European work for Roche and Millennium Pharmaceuticals, for example. In the past, these cross-border disputes were often coordinated from the London office, but the importance of the continental European patent teams is likely to grow at the UPC. With the German local divisions dominating to date, the Düsseldorf office could play a central role in this respect.

Recommended individuals

Ina vom Feld

Team

4 lawyers

Clients

Litigation: CATL against MU Ionic over battery technology; Millennium Pharmaceuticals against Betapharm, Hexal, Medac, Ratiopharm and Zentiva/Synthon over damages for sales of generic versions of bortezomib; SD BioSensor against Qiagen over tuberculosis test procedure; frequent litigation and advice for Dyson, Genzyme, Johnson Matthey. Advice: Chugai Pharmaceutical, Hoffmann La Roche and Foundation Medicine on FTO analyses.