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Silver - Individuals: prosecution and nullity
Undoubtedly one of the leading patent attorney firms in Germany, Maiwald impresses all who seek it out, with its hard work and dedication. “Maiwald cultivates excellent team spirit, rendering interactive collaboration between the different teams highly productive and leads to great results. The group easily adapts to urgent, large-volume projects. The intensity and effort they put into their work products is outstanding. They work seamlessly as teams, transparently and cooperatively, and they place a premium on recruiting, training and motivating top-level junior talent.” Alongside the large, technically accomplished patent attorney team the outfit is also home to a number of attorneys at law, headed by the experienced Marco Stief. With robust enforcement experience and deep knowledge of the laws governing tech transfer agreements and patent licensing, Stief is an excellent adviser for patent legal issues. Mobilising patent attorneys and attorneys at law, Maiwald is certainly positioning itself to become a major player at the UPC, offering clientele detailed knowledge of the court’s projected systems, procedures and guidelines. Heading the UPC taskforce is mechanical engineer Sophie Ertl. Armed with reams of portfolio management expertise and technical support at infringement matters, Ertl is a safe bet for companies seeking protection of inventions across the automotive, medical device, process technology and general engineering fields. Her wide-ranging expertise is evident in her work alongside biochemist Andreas Ledl for pharma player CureVac AG, whose patents are in the RNA technology field. Ledl himself is a skilled portfolio manager with a keen instinct for commercialisation strategies. His sector-wide knowledge lends itself well to FTO analyses and due diligence. The outfit’s other engineering experts include Lutz Kietzmann, Alexander Ortlieb, Christian Schäflein and Alexander Schmitz. Mechanical engineer Kietzmann has deep familiarity with hydraulic, pneumatic, automotive and transmission systems, and has also drafted numerous patent applications in the field of industrial automation, including software-implemented inventions. He is also skilled in wind-turbine technology. He and Schäflein support ABB Automotive with patents in the automation space. Physicist Ortlieb is a dab hand with opposition proceedings, while his drafting and prosecution strengths range across medical technologies and diagnostics, computer-implemented inventions and telecommunications. He supports Brainlab AG with prosecution, oppositions and opinion work for their software innovations in the medical field, while he and Schmitz team up for Powermat Technologies’ likely standard patent in the field of wireless mobile device charging. Of Schäflein, referees write, “Christian demonstrates a high level of professionalism and seamlessly cooperates with in-house client teams and his firm colleagues. He is highly motivated and committed, and adheres strictly to agreed schedules. He is absolutely reliable, and his communications are transparent and keyed exactly to what the client needs to know.” Electrical engineer Schmitz serves up top-level European patent prosecution for one of the world’s best-known telecom companies, manging their portfolio with aplomb and pushing through nearly 400 European patent actions a year. The life sciences side is ably staffed by biochemist Dirk Bühler, pharmacist Angela Zumstein and a raft of chemists who range across organic and inorganic work. Bühler has deep sector expertise and can prosecute patents across a spectrum of technological areas with medical applications. His commercial awareness routinely serves patrons on complex SPC matters and FTO strategies. He and chemist Martin Huenges successfully defended CRISPR-Cas9 patentees the Universities of California and Vienna against seven opponents at the EPO. Huenges is a smooth operator at the EPO, with a solid track record of success and extensive experience coordinating parallel proceedings. Zumstein has extensive portfolio management experience and regularly advises on SPC enforcement issues. A diligent and broad-ranging technician, she serves up technically precise and commercially informed prosecution work, including to clients like Borealis AG. Top names on the chemistry bench include Eva Dörner, Eva Ehlich, Naho Fujimoto, Norbert Hansen and Derk Vos. “Eva Dörner is a gifted patent attorney who knows her technical field extremely well. She is very collaborative in her approach with the clients and very open to discussing strategies, which is greatly appreciated. She is enjoyable to work with and can be recommended without hesitation to anyone working in the field of chemistry or pharma, especially on contentious matters. Her support has been instrumental.” “It is always a great pleasure to work with Eva Ehlich. She is a brilliant, highly experienced and dedicated attorney combining an impressive degree of long-sightedness with exceptional attention to the countless details of a case. Besides, she is just a nice person to work with, and when this comes on top of great results – what more could you hope for?” Fujimoto is a fluent Japanese speaker whose familiarity with Japan’s language and culture have helped her to build up a large and sophisticated practice for Japanese pharmaceutical and biotech names seeking protection in Europe. Strategically minded and sharp, she has many years of experience providing high-level portfolio advice, conducting comprehensive searches and preparing FTO analyses. Hansen has developed a wide-ranging practice encompassing chemical engineering, as well as material science and semi-conductor innovations. With an eye for detail, he is an excellent choice for prosecution work but is equally accomplished fighting complex oppositions. Vos is at home in both organic and inorganic chemistry, counselling pharmaceutical clients as well as industrial lubricant manufacturers. Technically astute and commercially focused, Vos has a long track record of getting the most value out of his patrons’ intellectual assets. His skill in high-level oppositions is evident in his work for Sandoz Hexal in various proceedings.
Alexander Ortlieb is a partner, managing director and German and European patent attorney at Maiwald. He studied physics and economics at the Albert Ludwig University of Freiburg and Ludwig Maximilian University of Munich. A large part of his work involves prosecuting international, European and German patent and utility model applications. He has particular expertise in conducting opposition proceedings, in particular before the Boards of Appeal of the EPO. He also has extensive experience in preparing freedom to operate and validity opinions, and represents clients in patent litigation matters.
Mr Ortlieb’s specialist fields are physics, medical technologies and diagnostics, computer-implemented inventions and mechanical engineering. He worked in a specialised IP firm in New York and in the IP department of one of the largest US medical technology innovators in Boston in order to gain insights into US patent law and practice. This experience allowed him to successfully represent a prestigious US university before the EPO’s Enlarged Board of Appeal in the G1/16 case, where the board handed down a landmark decision on the allowability of disclaimers.
Mr Ortlieb has been recognised by The Legal 500, Handelsblatt and MIP.
Important cases
Mr Ortlieb represents Powermat Technologies Ltd, an innovator and developer of wireless power solutions for consumers, original equipment manufacturers and public places in several opposition proceedings before the EPO regarding standard relevant technologies.
Practice areas
His practice areas include:
- communication and information technology;
- medical technology and imaging;
- electrical and mechanical engineering;
- software, digitalisation and artificial intelligence;
- mobility and energy;
- displays and light;
- measuring and process technology;
- patents and utility models; and
- IP consulting.
Services
His services include:
- patent prosecution and portfolio management;
- filing strategies and drafting patent applications;
- opposition and appeal proceedings;
- patent litigation and nullity proceedings; and
- freedom to operate and validity opinions.
- Representative before the UPC
As one of Germany’s largest and best-known firms in the IP field, Maiwald aims to achieve the best possible solution for each client in each particular case. Maiwald employs approximately 250 people in Munich and Düsseldorf. The interdisciplinary teams work closely with one another and with foreign associates, always with an eye to the clients’ particular needs, regardless of their industry and whether they are a start-up, medium-sized firm or large corporation. Maiwald’s team does its utmost to ensure that all IP matters are handled with competence and care, irrespective of where clients are located.
Customised solutions
Client-oriented solutions and personal consultation are at the heart of Maiwald’s professional approach. Approximately 100 highly qualified patent attorneys, attorneys at law and technical experts, an in-house patent search department and numerous client-specific teams of paralegals put their extensive skills and experience at clients’ disposal in order to arrive at the best possible customised IP solutions. Client satisfaction is evidenced by Maiwald’s longstanding business relationships with many prestigious corporations.
Interdisciplinary teams
Maiwald advises and represents domestic and international clients from all technical fields across the entire spectrum of IP law. When appropriate, the interdisciplinary exchange of information and expertise can take place between various teams, ensuring that the optimal solution is achieved in each particular case.
Patent attorneys
Maiwald’s team of patent attorneys combine their expertise across various technical fields and advises and represents clients across a wide range of industries, including:
- pharmaceuticals and biotech;
- organic chemistry and polymers;
- food and agriculture;
- electrical and mechanical engineering;
- inorganic and construction materials
- information and communications technology;
- mobility and energy;
- displays and lights;
- measuring and process technology;
- medical technology and imaging; and
- artificial intelligence and digitalisation.
Maiwald’s patent attorneys have extensive experience in the management of international patent portfolios. Services include drafting and filing patent applications and coordinating worldwide prosecution, as well as defending, enforcing and contesting IP rights. Patent attorneys also prepare freedom-to-operate opinions based on thorough research and analysis to establish whether third-party IP rights could stand in the way of a client’s product or manufacturing process. Clients also benefit from the exceptional expertise in opposition and appeal proceedings before the German and European Patent Offices, as well as in infringement and nullity proceedings before the national courts. Furthermore, they are admitted to practise before the Unified Patent Court.
Attorneys at law
Maiwald’s team of attorneys at law have many years of experience in trademark, design, copyright and contract law, as well as patent infringement litigation. In particular, this includes the conduct and coordination of international litigation proceedings. The firm’s legal expertise covers:
- patents and utility models;
- supplementary protection certificates;
- trademarks and designs;
- competition and antitrust law;
- agreements ;
- copyright;
- compliance;
- employee invention law;
- pharmaceutical law;
- data protection;
- plant variety protection;
- industries patent attorneys; and
- representation before the Unified Patent Court.
Close cooperation between patent attorneys and attorneys at law is especially important in patent infringement litigation since this type of proceeding generally calls for a comprehensive overview of national regulations and a thorough grasp of the relevant technology. The interdisciplinary teams provide a comprehensive package of services to guarantee the successful conduct of legal proceedings in an international arena, as well as in cases where speed is of the essence, such as in preliminary injunction proceedings and border seizure procedures.
However, Maiwald’s attorneys at law would be the first to acknowledge that litigation is not always the best solution. Therefore, they are also skilled advocates in arbitration and mediation proceedings, as well as trusted experts when it comes to negotiating licensing contracts.