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Silver - Individuals: infringement
Highly recommended - Individuals: prosecution and nullity
Zimmermann & Partner is involved in cases across the sector spectrum, but is especially well known for its high-profile work in the telecommunications field: “Within telecommunications, ZimPat’s services reach an unequalled level of expertise, preciseness and dedication. They possess far-reaching databases of prior art in the field, which is very useful for validity evaluations, oppositions and nullity suits. They have the capability of explaining the most complex technical issues to a technical layman so that they will understand what they need to understand in order to decide the case. Their capabilities are absolutely outstanding in the field.” One highlight over the past 12 months is its representation of Samsung in proceedings against Ericsson, which has been handled in part by PhD physicist Joel Nägerl, whose technical and legal expertise have led him to become an appointed Court Expert at the Higher Regional Court of Dusseldorf. Meanwhile, handling a host of oppositions for General Electric are Benedikt Neuburger and Frank Steinbach – Neuburger’s dual academic background in physics and economics means he easily understands both the technical and commercial sides of any issue, while PhD physicist Steinbach’s qualification as both a German and European patent attorney and US patent agent renders him a valuable resource on the international stage. A third physics PhD among the group is Dominique Gobert, who studied across Germany, France and the United States, and applies his hard-earned knowledge to complex portfolio management projects.
Joel Nägerl studied physics and mathematics at the University of Gottingen and physics at the University of California, San Diego. He graduated with a master’s in physics and received his PhD in natural sciences, working in the field of semiconductor optics. During his university studies, Dr Nägerl received a scholarship from the German National Foundation, which sponsors the highly gifted.
In his career as a patent attorney, Dr Nägerl worked at firms Bardehle (Düsseldorf) and KNH (Düsseldorf and Munich), before becoming a partner at Zimmermann & Partner Patentanwälte (Munich). Dr Nägerl specialises in electrical engineering, telecoms and semiconductor technology. His main practice area is patent litigation, and he advises and represents large multinationals in numerous high-profile international disputes before forums such as the Federal Patent Court, the Federal Court of Justice, the EPO, the German Patent and Trademark Office, district courts and the higher regional courts.
Due to his profound technical expertise and keen legal sense, Dr Nägerl’s counselling services are in great demand for the development of technical offensive and defensive strategies – both in Germany and in the context of foreign litigation proceedings. Dr Nägerl also serves as an appointed court expert at the Düsseldorf Higher Regional Court.
Dr Nägerl co-authored Patent Law – A handbook (CH Beck – Hart – Nomos).
Zimmermann & Partner Patentanwälte mbB is a German IP firm 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 100 people. Zimmermann & Partner provides the complete range of IP law-related services, with a particular focus on patent litigation and prosecution.
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.
As a result of Zimmermann & Partner’s extensive litigation experience, the firm develops patent portfolios and devises patent prosecution strategies for both international players and 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.
Zimmermann & Partner has expertise experience 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 seen in 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 & Partner’s 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.
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 with, 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.