Why is Munich the strategic venue of choice? To learn why, click here.
The FR Munich office provides a strategically important venue for our firm to provide clients with global intellectual property protection and enforcement:
Patent Prosecution
Patent Litigation
Trademarks and Design Patents Copyright Unfair Competition/Antitrust Domain Names
I. Patent Prosecution
Patent work is one of our core practices. About 40 percent of the firm's work involves patent preparation and prosecution, patent portfolio planning, and opinion preparation. In 2007, we filed more than 5,400 patent applications, and obtained more than 1,600 issued patents for our clients.
Our patent group comprises more than 250 attorneys and technology specialists, nearly 80 of whom have PhD's spanning a broad range of industries and technologies. Because of the depth, breadth, and variety of technological and legal experience, our attorneys are immediately familiar with virtually any technology. Our attorneys have special competencies in life sciences, clean technologies, pharmaceuticals, nanotechnology, computer hardware and software, and electrical engineering. With offices across the U.S. and Europe, we offer the resources of a global IP powerhouse, the expertise of a boutique, and the personal service that comes with a local presence.
Intellectual property protection is a crucial part of each client's overall business strategy. In addition to patent prosecution, our attorneys provide patent portfolio planning and analysis, advice on strategic planning, and opinions — including freedom-to-use, infringement, validity, and patentability opinions. We also offer patent-related analysis of competitive and other third-party positions, and patent portfolio analysis/due diligence in connection with financing, evaluation, and acquisition of technology.
The Munich office has particular experience in handling EPO opposition cases and German nullity cases and presently handles over 40 EPO opposition cases. One of the most important EPO victories in 2009 was in the field of manufacturing solar cells where European patent EP 871 979 B1 held by the University of Neuchâtel could be completely invalidated, a successes which was widely reported in the media.
As part of our patent practice, we work with our clients to evaluate how their intellectual property assets fit into their business strategy so that investments made in IP protection yield the highest possible return. Investors recognize the importance of a well-managed IP portfolio and that unrecognized or unprotected assets represent lost value for shareholders.
Our patent portfolio strategies and strategic counseling services help our clients avoid potential litigation, capture the full value of intangible assets, and maximize the return on investments in intellectual assets. Our clients draw on the wealth of our experience across industries to find the best strategy to meet their own business goals.
II. Patent Litigation
Often, the best way to enforce patent rights in all of Europe is to begin enforcement proceedings in a single European country before extending to others. Many companies find Germany the forum of choice in Europe to begin multinational patent enforcement activities. In fact, patent litigation in Europe focuses on only a few jurisdictions, including the District Courts of Dusseldorf and Mannheim, which together handle more patent infringement cases than any other jurisdiction in Europe.
Factors making Germany the forum of choice for patent litigation include:
- Quality of Judiciary: German courts have particular expertise in patent matters because of the significant number of cases they handle each year. This expertise is recognized in Europe and throughout the world.
- Fast and Cost-Efficient Proceedings: In most cases, an enforceable ruling can be expected in twelve months in Dusseldorf or in seven to eight months in Mannheim (assuming that no court expert is necessary). The proceedings are very cost-efficient (usually less than 1/10 of the costs for a comparable US litigation). This derives in part from the fact that discovery and jury trials are not part of German proceedings.
- International Effect of Decisions: The strong reputation of German courts generally means that the prevailing party is in a good position to negotiate European-wide license agreements.
- Border Seizure Measures: European border seizure measures may have effects comparable to those of US ITC proceedings. The proceedings are straightforward and cost efficient. International companies are taking advantage of these measures to discourage the importation of infringing goods into Europe.
III. Trademarks and Design Patents
Recent years have seen very positive developments for trademark owners in Europe, in particular for those from the US. The European Community trademark system provides a unique opportunity for fast, efficient and cost-effective cross-border trademark protection and litigation in a market of nearly 500 million people. With fast, efficient and cost-effective courts specializing in trademark matters and the possibility of serving and enforcing German court decisions in other member states of the European Community, Germany is an ideal place to do cross-boarder trademark litigation in Europe. Furthermore, trademark owners can benefit from the efficiency and reliability of the German customs for initiating customs action against product piracy all over the European Community.
Fish & Richardson offers comprehensive advice and expert assistance in all trademark and design related matters both at the German and European level, in particular in the fields of
Trademark Matters
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Design Matters
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-trademark searches;
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-design searches;
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-trademark prosecution;
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-design prosecution;
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-trademark related agreements;
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-design related agreements;
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-trademark litigation;
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-design litigation; and
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-customs actions against product piracy; and
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-customs actions against product piracy.
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-domain names.
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IV. Copyright
Fish & Richardson also has particular expertise in the field of copyright. Copyright protects authors of works of literary, musical or visual art against the unauthorized exploitation of their work by others. It protects the expressions contained in original works of authorship and also plays an important role for the software industries. Our expertise extends to contractual matters related to the works of authors.
V. Unfair Competition/Antitrust
The German Act against Unfair Competition, re-codified in July 2004, is a very strong tool against certain unfair trade practices, such as misleading advertising or aggressive commercial practices. It represents an important catchall element and complements the patent, design and trademark law. German courts are rather generous in granting injunctions and confirming jurisdiction in unfair competition cases.
Unfair competition cases usually concern products for end users involving industries such as consumer healthcare, food and sports equipment. The Act categorizes unfair trade practices into various groups of cases and provides a set of measures to efficiently protect against misrepresentations of origin and exploitations of the reputations of others. The German unfair competition law is unique in Europe for its speedy proceedings that can lead to ex parte injunctions, sometimes within hours. The law is particularly useful when speedy enforcement measures are needed for trade shows.
VI. Domain Names
With almost 15 million domain names registered in 2009 alone, the Internet domain name system remains a constant challenge for every trademark owner. This is not only true for generic top level domains (gTLDs) like .com, .net and .info, but also for country code top level domains (ccTLDs) like the popular domain .de, which accounted for 13 million of the almost 200 million domain names registered world-wide at the end of 2009. Since 1999, more than 16,000 UDRP domain name arbitration proceedings have provided quick and cost effective relief against cybersquatters. Nevertheless, trademark owners fight an ongoing battle against abusive domain name registrations, in particular where no UDRP proceedings are available.
Fish & Richardson offers comprehensive advice and expert assistance in all domain name matters, in particular regarding the use and registration of fraudulent, misleading or otherwise abusive domain names. We focus on developing strategies to get domain name conflicts under control swiftly and cost-efficiently without lengthy and costly litigation. We understand that speed and cost are both a major concern for most trademark owners, given the typically high number of conflicts the owners of well-known marks are faced with). This applies especially to conflicts regarding .de domain names, which often pose a special challenge to trademark owners, as such names are not subject to UDRP proceedings.