What inspired you to pursue a career in patents?
Physics has always been my passion, but it is not my only one. When I finished my PhD in semiconductor optics, I looked for a job in an interdisciplinary environment which required various skills. I realised that the patent world is such a place as it demands technical expertise, legal knowledge, creativity, linguistic proficiency, management and communication skills and team-building capabilities. I knew that the patent attorney role would be an optimal fit for my personal talents and qualifications. Now, having served as a patent litigator for many years and having handled numerous high-profile international litigation cases, I can say that my belief was not unjustified. I appreciate the versatile challenges of my job and working with a team of highly talented colleagues every day.
What qualities should clients look for in top-class patent attorneys?
Top-class patent attorneys who are active in patent litigation must meet the abovementioned demands, uniting profound technical and legal expertise, a high level of creativity and language abilities and management expertise. But this is not enough. Top-class patent attorneys must also have a quick mind that can analyse complex information and communicate it simply for technical lay people, such as judges. They must be willing to develop unconventional ideas and think outside of seemingly unalterable doctrines, switching swiftly back and forth between a creative mode and a mode of conventional stringent thinking in order to ensure that their unconventional ideas have a solid footing. They need to understand an argument’s quality from the judges’ perspective and think ahead to consider potential counterarguments. Personal integrity and consistency is important to build the perceived credibility of their pleadings in the courts. As even the slightest weakness in a patent litigation case may be exploited by the other party, communication and team-building capabilities are crucial to motivate all team members to contribute to the case as best they can. This requires both cooperative and leadership qualities in the large international teams handling top-profile litigation cases, as well as teams that are composed of people with different cultural and linguistic backgrounds. Top-class patent attorneys must possess the sensitivity, receptiveness and creativity of artists, the sophistication of scholars, the faculty of speech of writers, the exactitude of book keepers and the endurance of steel workers.
What is key to successfully fighting nullity case s in Germany?
The basis for success is preparing for a case carefully and comprehensively, irrespective of the side that you are representing. You should have a strategy to pursue from the outset because how the case is approached in the beginning often determines the later course of the proceedings. Due to Germany’s bifurcated system, patent validity and infringement are dealt with by separate courts. Thus, patentees must maintain a consistent argument across the two proceedings. The courts are aware of the inherent problems with bifurcation and take care to compensate for potentially deviating claim constructions. The nullity plaintiff and defendant in infringement proceedings can rely in the nullity proceedings on the typically broad claim construction of the patentee from the infringement proceedings, while pursuing a narrower claim construction in the infringement proceedings. This aims to offer parties a similar means of defence as in comprehensive proceedings, where they can raise invalidity as a counterclaim. While it is clear how this particularity of the bifurcated system should be dealt with, failure often occurs, particularly regarding miscommunication and the possible divergence of interests of the attorney at law handling the infringement case and the patent attorney in charge of the nullity case. Thus, forming a well-functioning team of attorneys is crucial to maintaining consistency on the patentee’s side and successfully exploiting squeeze situations (eg, where a patent is valid but not infringed or infringed but not valid).
Attorneys with an understanding of how judges think and an intuition for where the counterparty is heading is another key to success. A prerequisite for this is a good understanding of how the various aspects of a case interrelate (ie, the prior art, the technical and legal (in)validity arguments, the technical and legal (non)infringement arguments and other legal aspects, such as exhaustion, licensing aspects, legal practice and case and procedural law).
Can you describe the role of German patent attorneys in infringement cases?
Due to their different educational backgrounds, patent attorneys and attorneys at law look at infringement cases from different perspectives. While patent attorneys tend to have easier access to the technology, attorneys at law share the education and way of thinking of judges, enabling them to act as a filter for the presentation of technical arguments. Therefore, patent attorneys need to not only understand the technology, but also be able to explain it to attorneys at law. Ideally, attorneys at law can then concentrate on how best to bring the case to the appreciation of the decision-making judges, who are technical lay people. Both aspects are important for winning an infringement case. In infringement proceedings, attorneys at law take the lead, but patent attorneys can assist them during the preparation of the pleadings and – with the court’s permission – during oral proceedings by stepping in to present technical details in a succinct way when the situation requires a swift response.
Germany’s bifurcated system often draws criticism from outside the country, do you think that this is fair?
At first glance the bifurcated system often causes headaches. There is always a fear that deviating approaches between the infringement and nullity proceedings may cause disadvantages. But, in my experience, the German infringement and nullity courts are aware of the problem and have made considerable efforts to examine what is happening in parallel proceedings. With a careful claim construction that expresses the decisions of both courts in recent years, the potential risk of the bifurcated system seems to be reasonably controllable for each party, at least as long as a party presents its case making reference to the parallel proceedings. Therefore, the number of cases in which criticism is justified in the end appears to be low. Still, I am not averse to a system such as the UPC, where the best of both worlds is brought together by including a technically qualified judge on the board but allowing comprehensive infringement and nullity proceedings.
How are client demands changing and what impact has that had on the way you manage your practice?
With patent prosecution and litigation increasingly seen as normal business processes, there seems to be an increased wish to finely manage and control costs and budget forecasts through controlling departments. This can promote transparency and is useful as long as it does not lead to excessive micro-management, which burdens attorneys with inefficient bureaucracy and wastes time that could be spent on the case. In the litigation context, bureaucratic and overly tight budget forecasting may be problematic when searching for new lines of argument that may be crucial for a case, but are not foreseeable and can be time consuming. By informing clients of efforts and progress in a transparent way, I put them in full control of the next steps and therefore the costs. For this reason, I am often exempt from bureaucratic micro-management, which increases mine and my team’s impact.
In which technologies are you seeing the most growth in patent interest currently?
With the advent of communication technology and smart data processing in virtually all technological fields, those that have classically been deemed to be separate will become intertwined as we enter the true information era. Therefore, we can expect old and new players to enter this new interdisciplinary area of competition. It will be possible to exert pressure through patents stemming from seemingly remote technological areas. For instance, the automotive industry is now being confronted with patent portfolios from the telecoms industry, with which it has not previously been concerned. The stepping stones to the true information era are computer-implemented inventions and AI, as these technologies will ultimately pervade all technological areas. While the number of patent filings for computer-implemented and AI-related inventions is steadily increasing, we are yet to see major corresponding litigation. But this is going to change soon and we will see the largest growth in patent interest in this area, with the culmination being future legal battles over these technologies.
What are the main differences that you see in the way that the German Patent and Trademark Office and the EPO operate?
As a full-time litigator, I recognise that the Federal Supreme Court of Justice has made many efforts to align the German and European patent systems, and so the difference between how the German and European patent offices operate is not felt strongly in litigation.
If you could make one change to the current patent regime in Germany, what would it be and why?
Companies that are experienced in handling large international patent litigation cases have a good overview of the advantages and disadvantages of the various litigation systems worldwide. While every litigation system has its strengths and weaknesses, companies appreciate how the German system combines a high degree of legal certainty and predictability with high cost efficiency and comparatively quick procedures. One reason for this is the remarkable quality of the individual judges specialised in patent matters at the German courts – they are well trained, sharp minded, profoundly experienced and highly motivated. But we should not take this for granted. In order to preserve this advantage, efforts should be taken to support judges in every aspect so that they can do their job well. The working conditions of judges at the courts must remain attractive and favourable. This includes, among other things, employing enough judges, spending generous resources on training young judges, expanding the administrative body, providing a modern technical infrastructure at the courts and paying judges adequately in relation to what such qualified personnel could earn in private industry.
How do you expect the European patent environment to evolve over the coming years?
It remains to be seen whether the UPC system will become a reality. If so, this will fundamentally change the European patent system. If not, the European patent environment will remain stable as long as Europe’s economic power does not shrink considerably.
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Joel Nägerl has a PhD in physics and is a German and European patent attorney. His main practice area is patent litigation, where he advises and represents large multinationals in numerous high-profile, international disputes covering the telecoms, electrical engineering, semiconductor technology and optics fields. Dr Nägerl also serves as an appointed court expert at the Dusseldorf Higher Regional Court and has co-authored the Handbook on Patent Law (CH Beck Verlag, 2013).
Click here to see his IAM Patent 1000 2019 profile.
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