19 Nov

Markus Herzog

Weickmann & Weickmann Patent und Rechtsanwälte PartmbB

You advise clients in all areas of intellectual property. What type of work do you find the most rewarding?

In my view, the most noble task of a patent attorney is to be a service provider supporting your clients in fiercely competitive markets. Only by considering both legal and economic aspects will you achieve the best solution for your client from a commercial perspective. No matter how brilliantly a lawsuit has been won, if it costs more than it yields, then filing suit was the wrong decision. Therefore, it is most rewarding to me if the client and I succeed together in developing a solution that helps them to run their business successfully, even if it might imply only the second-best legal solution.

Can you tell us about your work for the Christiane Herzog Foundation?

The Christiane Herzog Foundation was founded by my mother and still bears her name. We support young people with cystic fibrosis, an incurable hereditary metabolic disease. We pursue two central goals. First, we support cystic fibrosis ambulances, centres and rehabilitation facilities all over Germany. We finance doctors’ and nurses’ positions, physiotherapy or nutritional counselling, and psychosocial care. Second, we focus on promoting research by supporting scientific projects and scholarship programmes and annually award the Christiane Herzog Research Prize to young scientists. After my mother’s death in 2000, I became a member of the foundation’s board of directors. Together with my colleagues on the board, I am doing my best to continue and commemorate my mother’s life work.

What are the key characteristics that clients look for in a top-class patent attorney?

It goes without saying that patent attorneys must know their field of law inside out. In addition, to be a “top-class” patent attorney, you must always take into account the client’s business environment. Patent attorneys must read between the lines of their client’s letters, listen beyond their client’s spoken words and scrutinise the details of the case again and again in order to get a full picture of all a problem’s business implications. It is only through joint analysis by the client and the patent attorney that the latter can develop an individual made-to-measure strategy for the case that most effectively serves the client’s commercial interests. To achieve this, a patent attorney needs flexibility to quickly pick out the specifics of the case and creativity to develop new solution strategies.

All eyes have been on the German Federal Supreme Court for clarity over Sisvel v Haier and FRAND-related cases. What are the main implications of this judgment for SEP owners in Germany and further afield?

In my view, the SEP owner’s position was significantly strengthened by the Sisvel v Haier decision. Although the headnotes seem to imply clarifications relating to the SEP owner’s behaviour, to me, the reasons behind the decision have major practical implications – especially for potential infringers that have been made aware of the infringement by the SEP owner and have been offered a licence agreement on FRAND terms. The infringer must clearly and unambiguously declare its willingness to conclude a licence agreement on FRAND terms in a timely manner. This declaration of willingness must not be subject to any conditions (eg, relating to the patent’s validity). In addition, the willingness must remain apparent until the licence agreement is concluded. What is more, if willingness is not apparent from the very beginning, this cannot be remedied by later actions.

You are a qualified business mediator. What advice would you give to clients considering alternative dispute resolution (ADR) for patent cases?

The main advantage of ADR is that it avoids lengthy court proceedings, which can drag on for years. Legal certainty for economic decisions can be obtained more quickly through an out-of-court agreement. Clients should therefore consider ADR as an option as soon as a conflict arises, rather than only towards the end of second-instance court proceedings. Further, clients should discuss all options to improve their position in the conflict with their patent attorney before approaching the other party. Finally, clients should thoroughly evaluate what form of ADR is the most appropriate for their conflict: negotiations without assistance, negotiations with the support of a moderator or a mediator, or even arbitration.

Markus Herzog

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Markus Herzog is a partner in the engineering group of Weickmann & Weickmann, one of the oldest and best-known IP firms in Germany. The European patent attorney advises his clients in all areas of intellectual property, always keeping their economic interests a central concern when advising and developing IP strategies. Mr Herzog represents worldwide operating companies, as well as SMEs and individual inventors all around the world.

Click here to see his IAM Patent 1000 2020 profile. 

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