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Gold - Individuals: prosecution and nullity
With 19 qualified attorneys and a staff of nearly 50 focused on patent prosecution, the highly credentialled and technically astute team at Maikowski & Ninnemann is a solid choice for international portfolio management and high-value nullity actions in Germany. The firm prides itself on the strategic quality of its applications – every patent it files comes ready for international enforcement – and the involvement of its attorneys in complex contentious proceedings. The team is led from Berlin by physicist Gunnar Baumgärtel. The strategically minded and tenacious Baumgärtel is regularly called upon by some of the world’s biggest companies for high-value prosecution, strategy and representation in nullity proceedings. Google, for example, turns to him for filings and development of its comprehensive strategy to maximise protection in several key international markets. He also delivers prosecution, international filing and opposition work for Joyson Safety Systems, a manufacturer of automotive safety devices. He and electrical engineer Andreas Tanner frequently team up in technically engrossing, multi-faceted work. Tanner is a dedicated and hardworking attorney known for his client-centric ethos. Solar Edge, a rapidly growing company in the solar energy space, turns to the pair for prosecution, oppositions and appeal work, while LG Electronics looks to the duo’s telecoms standards expertise for the filing and management of its patent portfolio. Chemical engineer Felix Gross joins the two to support Xiaomi against IP Bridge in a four-telecom patent dispute likely to involve nullity and infringement components. With his wide-ranging tech expertise and easy grasp of new technologies, Gross makes a stellar addition to contentious teams, and he regularly joins up with Baumgärtel for the firm’s biggest patrons, including Google. He presents top-notch prosecution and advice to Holoplot GmbH, an innovative audio technology company. Gross and Baumgärtel are supported by Frederick Kramer in nullity proceedings for Continental AG against Sharp in the telecommunications and automotive field, while Ralf Emig joins the pair to support Oppo in invalidity action against Nokia. A mechanical engineer by training, Emig is known for his technical acumen and easy-to-understand manner, evident as much in his oral advocacy as in his work as a tutor at the Institute for International Intellectual Property Studies and as a lecturer at the Humboldt University of Berlin. Baumgärtel also works with Kramer and Emig for Vodafone in nullity proceedings against Intellectual Ventures, part of the two companies’ large-scale and wide-ranging dispute. A physicist by training, Kramer heads the Frankfurt office and made partner last year. He supports Baumgärtel for Globe Tools, a highly innovative Chinese company using robotics technology to transform the outdoor power tools business. The two attorneys prosecute patent applications, counsel on strategy and fight invalidity proceedings for the Chinese company. Kramer also joins forces with electrical engineer Christoph Schröder to deliver patent filing and strategic advice to GE Healthcare, one of the world’s leading medical technology companies. A strong, resolute advocate in oral proceedings, Schröder has a keen commercial instinct, making him a compelling choice for licensing work. He takes on invalidity proceedings for Phoenix Contact against Harting, relating to five patents and utility models in the electronics field, and files and secures patents for medical device company Biotronik SE. He also collaborates with Emig and Kramer in prosecution and opposition work for BROSE Fahrzeugteile, a producer of mechanical, electrical and sensor systems for vehicles. Alongside Tanner, Schröder prosecutes patents and fights oppositions for US telecoms company CommScope Inc, a maker of network infrastructure products. Almost all the attorneys mentioned have also been involved in the firm’s representation of Lenovo in nullity proceedings against Nokia. Biologist Matthias Hoffmann heads the Leipzig office. He engages in prosecution for several leading pharmaceutical clients, as well as delivering value-added advice to research institutions. An IP all-rounder, he has significant experience in trademark issues and serves up no-stone-unturned due diligence on licence agreements.
Gunnar Baumgärtel is a physicist and a German and European patent attorney who specialises in patent litigation and patent prosecution – particularly in sophisticated proceedings involving automotive technology, telecommunications, electronics and mechanical engineering.
He studied physics in Berlin and Paris (Technical University and École Normale Supérieure) and obtained his doctorate from the Free University of Berlin in 1993 for research in the field of magnetism, superconductivity and femtosecond-spectroscopy.
Dr Baumgärtel has vast experience in handling patent infringement cases before the district and appeal courts, as well as nullity cases before the Federal Patent Court and the Federal Court of Justice, where he has represented clients in some of the largest patent lawsuits in Germany in recent years.
He was also actively involved in achieving a fundamental decision issued by Germany’s Federal Court of Justice concerning the admissibility of post-grant amendments to claims, an issue which is of pre-eminent importance in opposition and nullity proceedings.
His experience in patent litigation has led to his appointment as an arbitrator in various international arbitration proceedings.
Dr Baumgärtel is a member of the board of the German Association for the Protection of Intellectual Property and treasurer of that association as well as co-editor of GRUR Patent.
Ever since its foundation in 1977 in Berlin, Maikowski & Ninnemann has been a firm of patent attorneys. Today we have around 20 qualified attorneys and four offices in Germany (Berlin, Munich, Frankfurt and Leipzig). The focus of our patent attorneys is patent litigation before the relevant courts in Germany and the EU and patent prosecution before the German Patent Office and the European Patent office in patent prosecution matters. We are especially renowned for our work in the patent litigation sector.
All of our attorneys are fully qualified and competent to represent our clients before the Unified Patent Court (UPC). We can accordingly provide valuable advice regarding both the prosecution of the unitary patent, as well as litigation matters before the UPC. For example, due to our extensive litigation experience before the German courts, we know well many of the judges who have been appointed as judges to the UPC.
Furthermore, as a pure patent attorney firm, Maikowski & Ninnemann often teams up with specialist attorneys at law in law firms to provide clients with a seamless service in patent infringement and invalidity cases before the relevant courts. This litigation experience is unusual among patent attorney firms in Germany, and means we are well positioned to advise on proceedings before the new UPC.
Services
The key services provided by Maikowski & Ninnemann are:
- advising clients on the best strategies to protect inventions, trademarks, designs, plant varieties and topographies;
- advising on the new unitary patent and on UPC opt-out strategies;
- filing patent, utility model, design patent and trademark applications;
- representing clients before the German Patent and Trademark Office, the EPO, the Federal Patent Court, the EU Intellectual Property Office and other international offices regarding IP protection;
- handling litigation, including patent and trademark infringement suits before the civil courts and nullity suits before the Federal Patent Court and the Federal Court of Justice and the new UPC in cooperation with external lawyers;
- representing clients in disputes relating to standard essential patents and FRAND licensing;
- advising clients with regard to licence agreements;
- monitoring and administering IP rights portfolios; and
- conducting patent, trademark and design searches and patent translations.
Areas of technology
Maikowski & Ninnemann’s patent attorneys are experienced in all areas of technology, including:
- mechanical engineering (eg, mechanics and mechatronics, plant engineering, automotive engineering, naval technology and mechanical engineering);
- electrical engineering (eg, electronics, telecoms, semiconductors, measurement and control technology and medical technology);
- physics (eg, optics and light technology – optoelectronics, cameras, telescopes and lasers), medical systems technology, medical imaging and measurement technology);
- software;
- life sciences (eg, chemistry, biochemistry and biotechnology); and
- pharmaceuticals.
Clients
Maikowski & Ninnemann’s clients include many large national and international firms, as well as medium-sized companies and start-ups. In the ongoing patent wars in the telecoms and IT sectors, the firm represents companies including leading mobile phone manufacturers and leading telecoms and IT service providers.
In prosecution matters, the firm represents various international technology companies, as well as a renowned German biopharmaceutical company focused on the development of pioneering therapeutics for common degenerative disorders and various manufacturers of vehicle systems.
Languages
Our working languages include German, English and French. Our attorneys also speak a number of other languages.