JUVE Comment

This mixed Munich IP firm has a strong filing practice but is also highly active in patent disputes. Proceedings concerning pharmaceutical and biotech patents dominate. For example, a mixed team around litigator Marco Stief and patent attorney Dirk Bühler assisted Betapharm in the PI proceedings concerning fingolimod. Even stronger than the small lawyer team is the patent attorneys’ market profile. Well-known companies such as CureVac and Hexal regularly rely on them for oppositions and nullity actions. At the same time, the patent attorneys also cooperate with external law firms in infringement proceedings, for example with Mayer Brown for Lindt.

The prosecution practice is also active across a broad technical spectrum. As a result, Maiwald is increasingly raising its profile in technologies beyond life sciences. One example is patent attorney and partner Sophie Ertl, who is leading the cigarette technology oppositions for Philip Morris.

This diversification is also reflected in its team; Maiwald has strengthened the partner level with two patent attorneys – one specialising in physics and the other in medical physics. In addition, three of the four recently appointed partners are not active in life sciences, but in technologies such as mechanics, medical technology, software and digital technologies. Maiwald is thus taking a decisive step towards an even broader range of advisory services, which ought to be reflected in future litigation.

European set-up

While the patent attorneys have been active for years in nullity actions and EPO oppositions in connection with pan-European infringement proceedings, the lawyers have been seen less frequently in pan-European disputes than other mixed competitors such as Hoffmann Eitle. It is above all the firm’s highly active opposition practice that brought the first UPC case, for example for Dr Reddy’s/Betapharm against Sanofi in the dispute over the prostate cancer drug cabazitaxel. Maiwald is also defending Beurer (against Foreo) and SSAB Swedish Steel (against Tiroler Rohre) not only against UPC claims but also in parallel oppositions at the EPO. Clients continue to rely on the proven mix of legal and technical advisors. The mixed approach and sufficient size, combined with the good contacts to international groups (such as Intel and Huawei) and large medium-sized companies (such as Schaeffler and Powermat) provides a good basis for playing a role in more extensive proceedings at the UPC.

Strengths

Litigation with technical expertise in biotech, pharmaceuticals and chemicals. Licensing contracts. Excellent US contacts.

Recommended individuals

Marco Stief (“indisputably high level of competence, we’re happy”, client; “thorough and dedicated”, “expert in patent litigation for biotech and pharma”, competitors); patent attorneys: Dirk Bühler (“outstanding lawyer for biotech”, “very comprehensive analysis and arguments in EPO oppositions”, competitors), Eva Ehlich, Sophie Ertl (“experienced and with a deep knowledge of UPC matters”, “down to earth”, “easy to work with”, competitors); Regina Neuefeind

Team

77 patent attorneys, 5 lawyers

Partner moves

Michaela Weigel-Krusemarck (from Hoffmann Eitle); Isabel Tomerius (from Lang & Tomerius)

Clients

Litigation: Lindt against Katjes over vegan chocolate; SCI against Essity over dispenser part; Formycon against Johnson & Johnson/Janssen Biotech over ustekinumab (settled 2024); Betapharm against Sanofi over Aubagio; Sandoz/Hexal against MSD over Janumet/sitagliptin-metformin. Oppositions for CureVac against BioNTech over mRNA vaccines; Dr. Reddy’s/Betapharm against Sanofi over prostate cancer drug Jevtana/cabazitaxel; Brainlab against General Electric over software for diagnosing liver diseases; Celanese against Cerdia over filter technology; Philip Morris against Fontem over electronic smoking device (public knowledge).