Stellbrink & Partner Patent Attorneys

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Why is my patent attorney based in Munich?

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  • by DJ

In Germany, there are approximately 4 ,400 patent attorneys. Approximately 1 ,600 of those are based in Munich. That is, approximately every third German patent attorney works in Munich. In this article, we would like to shed some light on the reasons for that.

The first likely reason is the large presence of very good technical universities in Munich. To qualify as a German patent attorney, one needs to hold an academic degree in natural sciences or engineering. Munich is home to the Technical University and the Ludwig Maximilian University. These universities have an outstanding reputation for engineering and natural sciences, both nationally in Germany as well as internationally. Thus, there are many candidates in Munich who could potentially qualify as patent attorneys.

In addition, many large companies with a technical focus are based in Munich or in Munich’s vicinity, e.g., BMW, Siemens, and Infineon. These companies do not only employ many patent attorneys, but also engage external patent attorneys for some additional tasks.

Further, and probably most importantly, the European Patent Office, the German Patent and Trademark Office, and the German Federal Patent Court are all based in Munich. The patent offices examine European and German patent applications, respectively, and the Federal Patent Court reviews decisions of the German Patent and Trademark Office. Patent attorneys often need to visit these offices and this court, e.g., for oral proceedings. A home base in Munich is therefore useful be close to these institutions, and to spare the clients costs for travelling and accommodation. Further, the patent offices and the patent court create an excellent “ecosystem” in Munich: Munich is home to numerous patent examiners, patent judges, and patent attorneys. This enormously facilitates the professional exchange, both at conferences and at an informal level.

Due to all these reasons, Munich is a very suitable base for patent attorneys, which is also why we decided to establish our practice in Munich.

Do you have any questions relating to patent law? If so, please feel free to contact us by calling +49-89-41112880 or via email to mail@stellbrink-partner.com. In case you are interested in qualifying as a patent attorney, or in case you are generally interested in working for our firm, please feel free to contact us by calling the above number or via email to careers@stellbrink-partner.com. We are looking forward to hearing from you!

Patent Infringement and Patent Invalidity Proceedings in Germany

 

As regards proceedings relating to patent infringement, Germany is the number 1 jurisdiction in Europe selected by patentees. In addition to moderate costs, the quality of the judges, and the predictability of the outcome, the German court system plays a role in this choice.

Germany has a “bifurcated” system. There are civil courts (most notably Düsseldorf, Mannheim and Munich) that are responsible for patent infringement proceedings (in the following: patent infringement courts), and there is the Federal Patent Court based in Munich that is responsible for patent invalidity proceedings (also known as patent nullity proceedings).

One main difference to other jurisdictions is that the patent infringement courts do not decide on the validity of the asserted patents. This has significant implications for the initially paid court fees. The court fees have to be initially paid by the party starting the proceedings. That is, the patentee has to initially pay the court fees when starting the infringement proceedings. On the other hand, the alleged infringer (or any party seeking to invalidate a patent) has to initially pay the court fees for the patent invalidity proceedings.

Another important consideration relates to the timing of the proceedings. First instance infringement proceedings typically last for about 1 year. First instance patent invalidity proceedings typically last for about 2.5 years. That is, one usually receives a ruling on patent infringement before receiving a ruling on patent validity. This may be most relevant for the cease and desist claim, as it may happen that (subject to a security by the plaintiff) the patent infringement court orders the alleged infringer to cease and desist from using an invention after one year, and that the patent is only found to be invalid 1.5 years later.

In light of this, there is the concept of staying the infringement proceedings. If the patent infringement court arrives at the conclusion that it is likely that the asserted patent will be invalidated in invalidity proceedings, it can stay the infringement proceedings. However, the patent infringement courts are generally reluctant to grant such a stay of proceedings, and the overall statistics is that only about 10% to 20% of the patent infringement proceedings are stayed.

All these aspects have to be taken into consideration when deciding whether or not to start patent infringement proceedings, in which country to start such proceedings, and which court to use for such proceedings.

Corresponding considerations apply for the defendant as well –the alleged infringer also has to take the above timings and probabilities into account when developing a defense strategy.

Stelbrink & Partner LogoWe note that the above article is a general outline of patent infringement and invalidity proceedings in Germany. Such an article can never replace individual legal counselling. If you have any questions relating to patent infringement and patent invalidity proceedings in Germany, please feel free to contact us at mail@stellbrink-partner.com. We are always happy to help you.

From theoretical physicist to patent attorney – my first year as a patent attorney trainee

Whaaaat? Excuse me? Come again? Ohhh… Are the most common reactions when I tell people what I do. Patent attorney trainee or Patentanwaltskandidatin are not job titles that just roll off the tongue – in fact, it took me a lot of practice to master the second one. My elderly Bavarian neighbours have no idea what a patent attorney is, let alone a Kandidatin to become one. My family and friends mostly heard this job mentioned as a specific subset of a lawyer. In light of this, they often ask me: “Isn’t it boring? Don’t you have to do a ton of paperwork and stay up all night to memorize dusty ancient law manuscripts? Don’t you miss the excitement of solving problems and working with other scientists?” The answer to all three of those questions is no. No, it is not boring, the work is dynamic, and provides surprisingly many outlets for self-expression. No, all-nighters were never my thing, the manuscripts are all available online for reference, and no one actually knows them by heart. No, I don’t miss intellectually stimulating work and people, because I never left them behind. Problem-solving is an integral part of a patent attorney’s job – how else would we figure out the details of a complex patent application? Discussing the specifics of patent applications with inventors is not at all unlike the stimulating discussions with fellow scientists so valued in academia.

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Contemplating a most certainly very important case in the office.

So what exactly have I been doing for nearly a year now? The short answer is, a lot. The long answer could fill a book, so here is the shortish one. I read scientific literature on robotics, algorithms, and statistics to better understand the fields our clients are working in. I held technical discussions with inventors to get a better grasp on their ideas. I travelled to visit our clients on site and see how they do their magic. I wrote patent applications, got feedback on them from my bosses, the patent attorneys, as well as from clients, rewrote and improved my work. I did searches: prior art searches, freedom to operate searches – done to provide clients with an overview of what is already known in their field of operation or to determine whether they can bring their product to the market in a particular country. I went to oral proceedings – the most intense, yet the most rewarding part of a patent attorney’s job, where the fate of a granted patent can change, where decisions bearing enormous financial impacts for clients are made, where the goal is to convince the members of the examining, opposition or appeal divisions that your case is logically sound and your client is in the right. I estimated patent portfolio budgets, took part in strategic discussions concerning intellectual property and delivered IP landscape analyses. I learned to use several docketing systems – special programs patent attorneys use to keep track of all the cases, clients and, most importantly, deadlines. I struggled with the online patent application submission system of the European Patent Office, and called them to clarify things without restraint (they were very nice about it).

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Posing with the cutest invention ever.

It was not all work work work though. I had a lot of fun having lunch with my colleagues and discussing our lives or latest vacation plans. I was a fervent Germany supporter during our office football viewing parties (a real rite of passage in Germany). I gave a talk about my area of specialization in physics, cosmology, to my colleagues and friends, and we proceeded to watch Wall-E (our office is famous for its bi-monthly-or-so lecture-and-movie nights). I went to dinner with clients and had a blast talking about politics, recent events, history, technology…

So you see, if I had to describe my job in one word, I would use the opposite of “boring”, I would use “exciting”. It has been an amazing year, and I am very much looking forward to continue my training as I keep moving forward on the long and winding road towards the title of a European Patent Attorney. And maybe a German Patent Attorney as well, if I succeed in an epic fight against Bureaucracy, Rules and Language (German is hard!), but this is a story for another day.

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