Race to the top

Security or a new challenge? When Tobias Hessel was deciding whether or not to accept Clifford Chance’s offer to join its German patent litigation practice, he faced precisely this question. Hessel had spent the last 14 years at Hoyng ROKH Monegier, where he rose through the ranks to partner with work for such clients as Huawei and Oppo.

But, in January, he made a surprising move to Clifford Chance, together with another partner, Stefan Richter. Ironically, the ROKH part of the international IP boutique had originally spun off from Clifford Chance’s own German practice in 2004.

Individual pursuits

“A familiar environment, a secure position, good cases and an international environment – I could happily have stayed at Hoyng ROKH Monegier,” says Tobias Hessel. Nevertheless, he decided against one of the German – and Dutch, and French – patent litigation market leaders in favour of Clifford Chance and a new personal challenge.

Tobias Hessel

Since then, in its IP practice, the international full-service firm has chiefly advised on technical IP rights and know-how-driven deals. It has a particular focus on the life sciences sector. When it came to litigation work, however, Clifford Chance had not managed to catch up with the top German practices.

The firm hopes that this will change with the addition of Hessel and Richter, who should also open the door to clients in the mobile communications sector. Huawei and Oppo have moved with the partners to their new firm.

Growing numbers of lucrative cross-border cases, and now the Unified Patent Court, have brought patent litigation work back on the radar of law firms with a pronounced deal focus, such as Clifford Chance and Linklaters. Especially for the leading firms in the relevant European markets, the arrival of these international firms means more competition for lucrative cross-border work.

Momentum swings back

Only two-and-a-half years ago, when the constitutional complaint in Germany blocked the court’s launch, few still believed the UPC would open. But at the beginning of 2023 – according to countless talks between the JUVE Patent editorial team and patent experts in Europe – the market is firing on all cylinders. Young or old, judge, lawyer or patent attorney, everybody somehow wants to be a part of the UPC. Across Europe, the UPC is unleashing a veritable whirlwind.

One Dutch lawyer says, “It’s a once-in-a-career opportunity. Whether you’re a 30-year-old associate or a 60-year-old judge, you won’t have another chance to witness the creation of a new court and help shape it any time soon.”

For the young generation of litigators like Tobias Hessel, the UPC launch coincides with their own reflections on how to structure the second half of their career. Hessel, who is now 42, has spent the first half of his career at Hoyng ROKH Monegier.

Hessel says, “At Clifford Chance, I can build something of my own and play a key role in building the patent litigation team”. While Richter and Hessel are best known for their mobile communications work, the firm also boasts first-class contacts in the life-sciences industry through its regulatory and healthcare practice. It is now looking to leverage these sector focuses in IP.

However, across Europe, Clifford Chance still needs to fine-tune its patent team set-up. So far, the law firm has no visible patent team in France or the Netherlands.

Building up the pressure

Another litigator, who recently moved to what they view as a better-positioned patent firm, explains, “I just want to make sure I can continue to serve my clients at the highest level after the UPC launches.” As such, the biggest challenge for law firms and their lawyers could be the concentration of cases in Europe brought by the UPC.

In the short term, many companies will pursue a mixed strategy. They might file one or two test cases with the UPC, in parallel to national lawsuits. If the UPC proves a successful model in the medium term, however, it will take many cases away from the national courts. This might lead to fewer, but more complex, proceedings in Europe.

In the case of the large, internationally positioned patent teams, this could lead to internal competition between the national offices.

Large teams get results

The deadlines for UPC proceedings are also tight, with patent lawyers expecting the complexity of cases to be very high. Most patent experts in Europe therefore assume that their firms can only handle UPC suits with large teams – especially if they have to establish the written defence for the defendant in just twelve weeks. Firms will have to quickly assemble several large teams so as to handle multiple cases simultaneously.

“My decision was not against my old firm, but in favour of my professional prospects,” explains another lawyer who also recently moved. “I just feel that my new firm, with a very large litigation team, offers me a better opportunity to serve my clients at the UPC.”

Thus, the strategic efforts of law firms to align themselves with the challenges posed by the new court is driving market movement. However, the personal ambitions of younger lawyers like Hessel in Germany, as well as well-established partners like Gertjan Kuipers in the Netherlands, are the main cause of the current turbulence.

The market is in motion

Gertjan Kuipers is a leading patent litigator in the Netherlands. On 1 April, the 54-year-old will also embark on a new challenge after 27 years at the IP practice of De Brauw Blackstone Westbroek. He will move to Hogan Lovells, whose patent team in Amsterdam lost previous frontman Klaas Bisschop a year earlier when he moved to the city’s Court of Appeal. Furthermore, in January 2023, well-regarded senior litigator Bert Oosting stepped back as partner to become senior counsel.

Gertjan Kuipers

If it had retained just remaining partner Ruud van der Velden and its six other lawyers, the Amsterdam patent team would have been small even in Dutch terms. There is no doubt that, in view of the UPC, the firm’s patent practice needed growth. Thus, Hogan Lovells took the unusual step of hiring a lateral partner.

Until now, the firm’s European patent practice always recruited partners from its own ranks. Kuipers, however, is a remarkable coup for the firm. He will enrich the team with his vast experience in mobile litigation and in the life sciences sector.

Taking the mixed approach

Recently, patent attorneys with litigation experience have joined the patent litigation teams of renowned law firms such as Hogan Lovells and Bird & Bird.

In early 2022, Simmons & Simmons landed perhaps the biggest coup when it took over almost the entire Munich office of Isenbruck Bösl Hörschler. The seven Munich patent attorneys have a strong life sciences speciality. While the firm had already hired patent attorneys in London and Amsterdam prior to this decision, this marked its first foray into Germany. Although Simmons & Simmons also focuses on litigation, the firm has opted for its patent attorneys to conduct patent filing.

Most experts assume that cases which combine nullity and infringement issues will dominate UPC proceedings. In the long term, they expect that the German bifurcation system will probably play only a minor role.

In addition, a growing number of patent attorneys are recognising the economic importance of litigation. This is because companies are pursuing proceedings at the European Patent Office at ever-greater expense. Furthermore, infringement proceedings are becoming hugely economically attractive for law firms.

This means that some firms, such as Simmons & Simmons, no longer want to pass on technical advisory work in such high-volume lawsuits to external patent attorney firms. Instead, they prefer to reap the benefits of keeping all their expertise in-house. However, despite such patent litigation firms investing in patent attorneys, most do not yet offer patent prosecution. Patent filing rarely aligns with a law firm’s business model. It is less economically attractive and also prone to conflicts in high-volume litigation.

Half pushed, half jumped

On the other hand, minds can be changed. A prime example is Hoyng ROKH Monegier, whose German team had long since chosen not to take on patent attorneys due to close ties with renowned patent attorney firms such as Samson & Partner. But its Amsterdam team has had a positive experience with a mixed set-up; here, its patent attorneys operate a flourishing prosecution practice.

In Paris, too, the Hoyng ROKH team began hiring patent attorneys for life sciences litigation. Thus, at the beginning of the year, the German team finally acquiesced and hired two patent attorneys. Both specialise in life sciences patents.

Christine Kanz

Speaking to JUVE Patent, Christine Kanz, partner in Hoyng ROKH’s Düsseldorf office, emphasised that the hires are based on its growth strategy. She says, “We do not intend to file patents or other technical property rights. The background to this strategic decision is our strong growth in the life sciences group. The increasing importance of opposition and revocation cases in the life sciences sector and, last but not least, the launch of the UPC, have also prompted us to take this step.”

In mobile communications and other fields of technology, the firm continues to rely on renowned patent attorney firms. However, for firms like Simmons & Simmons, the growing complexity in patent litigation is the main driver of the trend towards a mixed litigation practice. The UPC has sped up this process markedly.

French market embraces change

In January 2023, French firm Plasseraud also reinforced its mixed approach of patent attorneys and lawyers when litigator Sandrine Bouvier-Ravon moved from Cousin & Associés. Patent attorneys had previously dominated the firm, which hired litigators for the first time in 2021.

Sandrine Bouvier-Ravon

Prior to this, however, Casalonga and August Debouzy had already moved towards a mixed set-up. The latter, which has six patent attorneys, is a leading French patent litigation practice. Five of its patent attorneys, including two central partners Grégoire Desrousseaux and François Pochart, are dual qualified.

Keeping in mind future UPC proceedings, for a law firm a mixed line-up also has the advantage that it can draw on larger teams. This is because patent attorneys admitted to the EPO with an additional litigation certificate, as well as lawyers from the 17 UPC states, are authorised to run UPC proceedings.

Such authorisation also presents Swiss and UK patent attorney firms with the chance to get in on the UPC action. Due to the court’s many special procedural features, however, most experts assume that patent attorneys will only conduct UPC proceedings without lawyers in exceptional cases.

Race to the top

Patent lawyers from most law firms in the UPC states expect the court to create a concentration of the law firm market. Some even believe that it will clearly divide the market in two. At the top, a few firms would be grabbing the high-stakes and lucrative cases, ensuring they keep large teams to be able to manage several such cases.

The remaining suits, however, would be distributed among a large group of smaller, less well-positioned firms. Some market observers say such firms could expect a maximum of one or two UPC suits per year.

Bardehle Pagenberg does not want to belong to the latter group. In the future, it wants to play at the top of the European law firm league. Bardehle Pagenberg has relied on mixed litigation teams since it launched in the 1970s, developing into one of Germany’s market leaders. But with the UPC the firm has higher ambitions.

Thus, at the beginning of the year, Bardehle landed a major coup when it brought well-known patent litigator Tobias Wuttke from Meissner Bolte to its Munich office.

Backdrop to launch

Volkmar Henke

In addition, the renowned Volkmar Henke and Tilman Müller moved to Bardehle from Eisenführ Speiser, setting up a new office in Hamburg. Bardehle also grew its equity partnership internally with Jan Bösing.

With the addition of the four litigators, the Bardehle patent litigation team now counts seven equity partners. But the massive expansion of the litigation team can be viewed in respect of the expansion of Bardehle’s work in mobile communications lawsuits.

The firm is currently involved in one of the largest global lawsuits for Oppo against Nokia. It has also been involved in connected cars patent litigation for several co-defendants of Daimler, as well as for several car brands from the Stellantis group.

However, the new equity partners also represent a marked reinforcement against the backdrop of the UPC’s launch in June. In March, the firm bolstered its litigation team with three additional associates. The firm has more than 30 German litigators and 40 patent attorneys for UPC proceedings. It also has a seven-strong team in the Paris office.

Weakening the competition

Whether intentional or not, Wuttke, Henke and Müller moving to Bardehle means that Eisenführ Speiser’s and Meissner Bolte’s litigation teams have suffered a setback as regards the UPC, after concerted growth efforts.

Tobias Wuttke

Over the past twelve years, Meissner Bolte has evolved from a pure patent attorney firm into a mixed litigation team. It has excellent visibility in the German market, and Tobias Wuttke played a not insignificant role in this development. His move to Bardehle in early 2023 came as a surprise, as Meissner Bolte seemed well on its way to playing a strong role before the UPC.

While the firm reacted quickly by reorganising its litigation team with younger lawyers and bringing in external reinforcements, it will be some time before the team plays at the level it did before Wuttke’s departure.

The danger remains that firms, especially smaller litigation firms, will be forced to strategically pivot if their central partners change their career course. Gertjan Kuipers’ imminent departure from De Brauw Blackstone Westbroek to Hogan Lovells demonstrates this. The firm, which lacked a competitive network for UPC cases, especially internationally, is losing its best-known patent litigator. Now it must rebuild.

Tilman Müller

But Eisenführ and Meissner Bolte are not alone. Future partner moves would put pressure on any leading IP boutique – Arnold Ruess, Rospatt Osten Pross, Krieger Mes and Wildanger in Germany, for example. The loss of one partner would not immediately spell the end, especially since the poaching attempts by British or US firms are currently not aimed at the rainmakers. Rather, such firms generally target the younger partners with a solid client base and a few years of litigation experience. If a firm were to lose two partners, however, its UPC strategy may be at risk.

Strategic alliances

On the other hand, visibility through size alone is not necessarily the strategy of new alliance, Vossius Brinkhof UPC Litigators. The new brand, which emerged from the litigation teams of German firm Vossius & Partner and Dutch IP boutique Brinkhof, is geared towards the joint handling of UPC cases.

In the future, the two firms will bundle all UPC activities under a common umbrella brand. However, the two remain independent law firms in every other aspect. Last September, both law firms signed an agreement to this effect.

Both firms practice a mixed approach to patent litigation. At the time of signing the agreement, Brinkhof had 17 lawyers, one of whom is dual-qualified as a patent attorney. The Vossius patent team counted 55 patent attorneys and 14 lawyers. With offices in Amsterdam, Düsseldorf and Munich, the new brand is present at important UPC locations. Furthermore, the two law firms will open a joint office in Paris especially for UPC proceedings. The office will operate under the brand name and will primarily serve proceedings at the central division in Paris.

One-stop UPC shop

With its completely new approach, the alliance impressed the market as a counter-model to internationally merged IP boutiques such as Hoyng ROKH Monegier or Taliens. Some also view the joint brand as an alternative to the international patent teams at full-service firms like Bird & Bird or Simmons & Simmons, in the race for the top UPC instructions.

Not all market observers are convinced by the Vossius Brinkhof UPC Litigators approach, however. Some competitors doubt whether profit sharing between two independent law firms under one umbrella brand can work. One asset the Vossius-Brinkhof alliance can capitalise on is its very good connections to the UK patent teams of Bristows and Kirkland & Ellis. Both firms play key roles in the pan-European coordination of lawsuits and already involve Vossius and Brinkhof heavily in national cases.

For UPC proceedings, the UK teams will have only one contact in future. This will make it easier for the many US clients, which are used to a one-stop shop model.

Strategic alliance, domino effect

Despite criticism of the new alliance, the bilateral cooperation model has quickly caught on. UK-based EIP and France-based Amar Goussu Staub are joining forces for the UPC, where they will operate as EIP Amar. EIP brings a mixed approach into the cooperation.

Both firms are particularly known for representing clients in mobile communications. With offices in Düsseldorf, Paris and Stockholm, the new outfit is thus based in three important UPC locations. In parallel UK proceedings the London team also contributes a very solid market position at the patent courts.

Meanwhile, mixed patent firms Meissner Bolte and Santarelli announced a formal cooperation prior to the UPC launch. In future, the respective German and French outfits will collaborate under the new European Patent Litigators Network brand. With Meissner Bolte based across eleven offices in Germany, and Santarelli present in ten locations across France, the EPLN aims to share knowledge between the two jurisdictions and enhance client experience before the UPC.

While the two patent firms will operate under the EPLN brand, its lawyers are keen to emphasise that both firms will continue to act independently. But neither EIP and Amar, nor Meissner Bolte and Santarelli, are entering into a relationship as close as Vossius Brinkhof UPC Litigators. The first two cooperations face the challenge of ensuring their litigators are visible enough to compete for high-stakes UPC cases. On the other hand, Vossius and Brinkhof have significantly more renowned partners in the market.

Boutiques must step up

However, with each additional bilateral UPC alliance, Europe’s many IP boutiques, especially in Germany and France, come under pressure. It is becoming increasingly difficult for such firms to find suitable partners to litigate with in other UPC countries. In the Netherlands, for example, the number of IP boutiques going solo is now very low.

Alternatively, boutiques can either open their own offices in key UPC locations or focus on national proceedings in their own country. But the latter option hardly aligns with the self-image of the strong German IP boutiques. It is certainly not in tune with that of many young partners. Many are itching to join in the action in the major UPC cases.

More to come

JUVE Patent analyses the UPC setup of all litigation firms listed in the patent rankings under European set-up’. Read, for example, the latest analysis of French firms.

Read part two of this UPC long-read series next week, where JUVE Patent will examine how UK and US firms are getting into position for the UPC.