International Intellectual Property – Germany – Jörg Riemann

During the last 46 years, Ter Meer Steinmeister & Partner Patentanwaelte mbB has collected a long-standing experience in representing and counselling national and international clients, both in prosecution and litigation of patents, utility models, trademarks and designs.

One focus is directed towards prosecution of German and European patent and trademark applications in examination, opposition and appeal proceedings before the European Patent Office, the German Patent and Trademark Office and the German Federal Patent Court and the EUIPO.

Another focus is directed towards counselling our clients in litigation processes before a German Regional Court, providing freedom-to-operate analysis and writing opinions as well as representing clients in invalidity actions before the German Federal Patent Court.

One of the biggest issues that all our international clients seek help with is: How to deal with the formality requirements at the European Patent Office. We develop strategies together with our clients in order to avoid or overcome formal objections, such as clarity, support, a posteriori non-unity, intermediate generalisations, number of independent claims, etc, for obtaining the strongest possible position also in the European market.

Moreover, we provide IP seminars relating to several practical issues for national and international clients. One of the most popular seminars is “Comparison between the German and EPO procedure”.

Additionally, our experts attend international conferences and meetings, IP seminars and trainings on a yearly basis, such as Patent Forum Seminars, GRUR Seminars, jurisdiction seminars, etc, as well as technical forums, such as Ceipi, VPP, Munich Network, etc. Some of our clients are very active in the new technological areas of IoT, AI and Block Chain, and we are purposefully chosen as IP experts in these areas.

First, we visit our long-term international clients on a regular basis and hold IP topic and case-related or procedural related workshops and advanced seminars. We train the members of IP departments of our long-term international clients in-house for some months to improve their knowledge of DE and EP patent procedure.

Second, we provide a portfolio counselling and provide file-based counselling, e.g. whether to file a divisional application, branch-off utility models or to respond to an office action in a profound manner in order to strengthen a client’s position.

Third, we are counselling and educating new clients (e.g. start-ups or small business entities) by providing IP overview seminars, e.g. what is a patent good for, why protection of certain inventions, what kind of protection is possible, and so on.

One major business sector is telecommunications technology, IoT, medical technology and pharmacy followed by physics, mechanical engineering and chemistry.

We see an increased activity in patent applications and patent oppositions directly followed by counselling in litigation actions or nullity actions.

We think that most of our clients seek for a return of investment and would like to achieve licence agreements or would like to operate freely in their markets. Additionally, we see a trend that in-house counselling (e.g. in a patent/licence department) is reduced, and profound expertise from outside counsels (e.g. law firms) is explicitly wanted.

Some of our clients operate in the field of Graphical User Interfaces, and one big issue at the European patent practice is to achieve the hurdle of technicity, in other words, to avoid that inventions are excluded from patentability, e.g. due to a presentation of information.

Another client is working in the software business and often requests our help to identify patentable subject-matter in his software that is not excluded from patentability, e.g. due to describing “computer program per se”.

Nearly all of our clients seek help with the formality requirements at the European Patent Office, and we develop strategies to avoid or overcome these formal objections, such as clarity, a posteriori non-unity, intermediate generalisations.

Multi-jurisdictional proceedings often require an exactly formulated attack in one proceeding (e.g. a patent invalidity action) to avoid that this attack can be used against the same client in other related pending proceedings (e.g. a patent infringement action). This alignment of arguments, e.g. Validity vs Infringement; Obviousness vs. Insufficiency; Obviousness vs Added Matter; Embodiment vs. Scope) is sometimes very challenging to enable squeezing (e.g. escaping infringement; creating traps; narrowing the negotiable ground).

Sometimes, arguments valid in one jurisdiction are not valid in another jurisdiction, and so the exact advice to the client requires precise knowledge.

Yes, we are (FICPI, INTA, AIPPI, VPP, GRUR, VDI, VDE). These networks help to understand the needs of the client, the technical challenges, the political boundaries and how a certain technology is developed, e.g. autonomous driving or renewable energy technics. Additionally, it helps to offer our services and provide/promote our expertise.

Due to the tremendous number of very different associations and purposes for meetings, it seems hard to tell whether there is a high importance or not. We explored that there has to be a balance between participating in such conferences and meetings and the actual work with the client, since from our perspective, most of the topics in such conferences or meetings are highly theoretical and are not applicable to a certain use case at a client’s side.

Of course, there is Brexit with its uncertainty in the fields of European trademarks, European designs for the UK territory.

Additionally, there is the development of the patent with unitary effect and its uncertainty whether it may come or not.

The contributors to these answers include Joerg Riemann, Dr. Julia Matl, and Stefan Manzer, who are, respectively: Patent Attorney, European Patent Attorney, and European Trade Mark and Design Attorney. For any further queries, their email addresses are: riemann@termeer.de, matl@termeer.de, manzer@termeer.de