Benedikt Neuburger

Ranked in European Patent Office , Germany
IAM Research

The Patent 1000 focuses exclusively on patent practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal patent expertise.

Recommended - Individuals

Silver - Individuals: prosecution and nullity

Boasting a roster of more than 40 dedicated patent professionals, Zimmermann & Partner is a top choice for patent attorney work in Germany. Referees declare them “a reliable firm. Their communications are always clear, easy to understand and on time, and fully address our requests. Their teams demonstrate good understanding of client needs and commercial objectives. There is never any delay when dealing with Zimmermann.” Physics PhD Joel Nägerl is an expert in contentious patent proceedings for names in telecoms, electrical engineering, optics and semiconductors. A tenacious and strategic mind, Nägerl is in great demand for his skills as a litigation support adviser and in nullity proceedings. “Benedikt Neuburger puts the client at the centre of his work. He is supportive and competent at the highest level.” An expert in green technology and engineering, Neuburger is a smooth and confident advocate in examination, opposition, nullity and appeal proceedings before the German and European patent offices and the German Patent Court. “Dominique Gobert works with his clientele over the long term. He is very friendly, and his communications are easy to understand. Most importantly, he can analyse the facts of a matter correctly and in great detail, rendering well-thought-out judgements. His advice and service are prompt and always carefully considered. He is also flexible and understands clients well. Dominique carefully drafts the claims and specifications, taking the requirements in foreign countries into consideration. That is very helpful not only for European applicants planning to file foreign applications, but also for local agents handling applications from European countries. He is certainly one of the very best patent attorneys.” “Frank Steinbach and his team at Zimmermann & Partner are the preferred European patent law firm for patent prosecution in Europe at the European Patent Office and the German Patent Office. Frank is a strategic partner who deeply understands patrons’ businesses and their competitors, and proactively develops sophisticated prosecution strategies that protects their products and creates leverage over competitors. In addition, the team has been very helpful in analysing competitor products and in providing claim charts and defence arguments in relation to validity attacks.” Joining these expert practitioners in the IAM Patent 1000 this year is Christian Ginzel. Ginzel is a technically astute operator in technology fields including telecoms, semiconductors and micro-electromechanical systems, thanks to his PhD in physics. He and Nägerl advise Samsung in a number of matters, including invalidity proceedings launched by Tagivan relating to video coding patents, proceedings launched by Netlist relating to memory module patents and against Imberatek in relation to the packaging of electronic modules. The team also supports Samsung in a range of matters.

Benedikt Neuburger's Profile

Benedikt Neuburger is a partner at Zimmermann & Partner Patentanwälte mbB, a boutique IP firm with several offices in Germany. Dr Neuburger has a background in physics and holds a master’s and PhD in economics. He is both a European and German patent attorney.

With more than 15 years’ experience in the IP field, Dr Neuburger focuses on patent prosecution, opposition and appeal proceedings. He mainly works in the field of green technologies, power engineering and deposition technology. Over the years, he has conducted a vast number of cases and has represented clients in several hundred oral proceedings. Dr Neuburger is the counsel of choice for several multinational stock-listed companies that have built up a high level of trust in his expertise over many years of cooperation. He provides practical solutions by aligning the economic needs and technical constraints with the tactical and procedural aspects of each case. His clients appreciate the symbiosis of in-depth technical and economic understanding with a pragmatic approach.

Dr Neuburger studied physics in Germany, Italy and Austria. During this time, he worked in the fields of quantum computation and fault-tolerant implementations in solid states and photonic systems. After graduating, he continued his studies by attending the economic postgraduate degree in business research at Ludwig Maximilian University, where he worked on his PhD in the economic valuation of patents. Dr Neuburger’s PhD examined known valuation techniques and presented a new method for an accurate value determination of patents.

Dr Neuburger has authored numerous publications in the IP field, lately focusing on artificial intelligence in the patent system, and is regularly preparing teaching material for the European Patent Academy.

Firm Profile

Zimmermann & Partner Patentanwälte mbB is an IP firm located in Germany, with offices in Munich, Berlin and Bamberg. Zimmermann & Partner has grown steadily since it was founded in 1999; it currently has 30 qualified German and European patent attorneys and an overall staff of approximately 85 people. Zimmermann & Partner provides the complete range of IP law-related services, with a particular focus on patent litigation and prosecution.

Litigation

Zimmermann & Partner has successfully handled numerous high-profile patent litigation cases in the fields of telecoms, semiconductor technology, liquid-crystal display technology, and medical and consumer products. The firm’s reputable patent attorneys are responsible for representing Samsung in numerous German proceedings, most visibly in international disputes in the areas of telecoms and electrical engineering. For medical product manufacturer Medtronic, the firm’s patent attorneys are continually involved in litigation relating to stents, heart valves and catheter technology. In such cases, they work closely with several of Germany’s top law firms. Their technical expertise is requested by global players not only for German cases, but also in the context of cross-border litigation and in foreign jurisdictions.

Zimmermann & Partner has represented clients in nullity proceedings, challenging patent validity before the first and second-instance nullity courts, including the Federal Patent Court in Munich and the Federal Court of Justice in Karlsruhe. Special care is taken to properly balance arguments regarding infringement and validity before the courts.

Prosecution

As a result of Zimmermann & Partners’ extensive litigation experience, the firm develops patent portfolios and devises patent prosecution strategies for both international players and well-reputed national companies. It assists clients from the outset in R&D, the development of IP strategies, the drafting of patent applications, the prosecution of applications before the patent offices through to grant, and the defence of patents in the event that validity is challenged.

Opposition

Zimmermann & Partner has expertise in the preparation and handling of opposition cases before the EPO, the German Patent Office and the German Patent Court, often doing so with future litigation in mind. The firm’s attorneys are involved in a high number of oppositions and take pride in their high success rate, which stands well above the average results as taken from official statistics. The firm is often contracted by other European patent law firms to assist in difficult cases and assume the lead in oral proceedings before the EPO Opposition Divisions and Boards of Appeal, and the Federal Patent Court.

Engagement as court experts

Zimmermann & Partners’ partners are regularly engaged as court experts by various first and second-instance infringement courts in Germany. This is an obvious sign of their expertise and the high regard with which Zimmermann & Partner is held among the judges at the German infringement courts.

Analysis, due diligence and valuation

Zimmermann & Partner handles numerous other types of client consultation, including due diligence, infringement and validity analysis, work-around strategies, drafting and analysis of agreements and German Employee Inventor Law consultations. In addition, one of its partners has a PhD in patent valuation, making Zimmermann & Partner a frequent competent partner to investors, banks and liquidators, assisting with the valuation of patent and trademark portfolios over many years.

Administration support

Zimmermann & Partner takes pride in its administrative exchange with clients being done in a smooth, efficient and cost-effective manner. Thanks to the firm’s expertise and renowned customer service, large US corporations employ its services as their European patent department. Zimmermann & Partner has therefore gathered an abundance of experience with numerous standard external administrative software programs, such as Anaqua, Tymetrix and Serengeti, in order to directly interface with clients’ in-house patent departments. The firm thereby assists, or in some cases takes complete responsibility for, the internal docketing processes for these corporations. In addition, it provides flexible and complex portfolio reporting services, and generates and develops interfaces with clients’ software.

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