JUVE Patent

Baker & McKenzie – Germany 2020

Rankings:

JUVE Comment

The German patent team at this large international firm frequently represents clients in infringement and nullity suits with several dual-qualified lawyers. The firm is especially well connected among Mittelstand and pharma companies and has a heavy workload in licensing negotiations. Jochen Herr’s team, for example, was active for Giesecke & Devrient and Becton Dickinson. The team also acquired Mittelstand auto suppliers as well as pharma and medical product companies from Germany as new clients. Cases for these are often extensive and keep the team busy for a long time. Prosecution is, on the other hand, not part of the firm’s practice. The large firm’s international network harbours many opportunities to continue the practice growth and good business development of recent years. However, the patents practice is partly hindered in building up new client contacts and personnel growth by internal conflicts. Competitors Jones Day or Simmons & Simmons counter this by handling cross-border cases more consistently within their European patents practices than the German Baker team does, especially as regards the London patent practice.

Strengths

Litigation with technical and legal expertise. Also arbitration.

European strategy

The European patents practice has a respectable setup for cross-border disputes with teams in London and Munich. But none of the offices are market leaders and the planned growth in Paris has yet to materialise. Overall, the firm has conducted relatively few pan-European cases compared to its competitors, even though it conducts some US-related cases from Germany. Regarding the potential start of the UPC, Baker would have, in addition to its teams in London and Munich, offices in two additional UPC locations, namely Warsaw and Barcelona, if Poland and Spain were to join the court.

Recommended individuals

Jochen Herr

Team

2 partners, 4 associates

Specialties

IP work focuses more on trademarks and unfair competition. Work in technical protection rights focuses on litigation with a mixed approach and technical specialties in chemicals, electronics and mechanics patents. Patents-related arbitration, transactions, licensing contracts and antitrust.

Clients

Litigation: Giesecke & Devrient (claimant) against US government over passports; RealD (claimant) against Volfoni over 3D cinema projectors; TMG Automotive (defendant) against Benecke Kaliko on infringement and oppositions over faux leather for cars; Rehau (claimant) against Egger Kunststoffe Brilon over polymer chemical patent; Mayer & Cie (claimant) against Terrot over knitting machines. Prosecution: oppositions for Arcelik, Becton Dickinson, E.on, Pelikan. Advice: Curevac on cooperation over cancer vaccine.

Location:

Munich, Frankfurt