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.
Gold - 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.
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 (Dusseldorf) and KNH (Dusseldorf 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 Dusseldorf Higher Regional Court.
Dr Nägerl co-authored Patent Law – A handbook (CH Beck – Hart – Nomos).
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.