Karl Barnfather

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.

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Premier prosecution outfit Withers & Rogers arrives in the IAM Patent 1000 this year as “a standout firm that deserves recognition – it is highly capable and respected”. With a base in Munich and numerous multilingual attorneys on deck, it can offer a truly pan-European service; and its business-minded practitioners never fall down technical rabbit holes, but keep client strategy and commercial objectives front and centre on all instructions. Senior attorney and former Chair Karl Barnfather has done much to foster this creative, rewarding approach; he also shares his wisdom through frequent speaking engagements at conferences, including in his capacity as chair of the Licensing Executives Society IP Strategy Committee.

Karl Barnfather's Profile

Karl Barnfather is a senior attorney at Withers & Rogers LLP, a leading firm of IP specialists, and a member of its electronics, computing and physics group - one of the largest specialist groups in Europe. He is the immediate past Chair after 9 years in the role.

The use of intellectual property to help to maximise the commercial value of a business is at the core of Dr Barnfather’s advice to the boards of forward-thinking businesses. In his words, intellectual property “is only a means to an end – namely an enabler for the exploitation of a company’s hard-won innovation”. Dr Barnfather has been at the heart of Withers & Rogers’ development of strategic engagement for companies, recognising that what really counts are commercialisation (in whatever form) and the ability of a company’s IP counsel to use the IP system – from concept to commercialisation – to best meet the company’s objectives.

With his significant technical experience, Dr Barnfather’s practice predominantly focuses on software (especially financial instruments and web-based systems), telecommunications and medical devices, but also includes aerospace, photonics, high-performance automotive components and sports equipment. His creative approach means that he is particularly adept at taking on difficult software and computer-implemented inventions. He acted as a judge for many years in the electronics category of the Institution of Engineering and Technology (IET) Innovation Awards.

Dr Barnfather has represented companies ranging from high-tech university spin-outs to multinational organisations such as Moog Inc, Mitsubishi and WarnerMedia. Across all client sectors, he seeks to ensure that the most appropriate IP protection is obtained to meet clients’ expectations and needs.

Dr Barnfather is frequently invited to speak at international and domestic conferences such as at PraxisUnico and the IET’s inaugural commercialisation and innovation conference. He has chaired panel sessions at American Bar Association and Licensing Executives Society conferences and continues to speak at various meetings – especially on thorny software patent issues and increasingly on AI.

Firm Profile

Withers & Rogers is one of Europe’s largest dedicated IP law firms, with offices in London, Paris and Munich, as well as three other regional offices in the United Kingdom. Established more than 130 years ago, the firm remains as passionate as ever about making intellectual property work to the clients’ best advantage. Today, clients include many renowned, innovative organisations from across Europe, North America and Asia.

Specialist teams

Withers & Rogers has four core practice groups:

  • advanced engineering;
  • electronics, computing and physics;
  • life sciences and chemistry; and
  • trademarks.

The firm has an outstanding breadth and depth of experience and expertise, with over 100 patent and trademark professionals. In addition to the practice groups above, the firm has a number of specialist groups, enabling it to pool industry knowledge and provide added value for its clients.

All of the firm’s patent and trademark attorneys are selected on the basis of excellent academic achievement and industry knowledge. They, along with the firm’s registered design attorneys, advise on the protection and enforcement of IP rights for inventions, brands and designs. Withers & Rogers has extensive commercial and industrial experience, and the team’s technical expertise spans all major technologies.

A comprehensive service

Withers & Rogers offers a comprehensive service that extends to both securing IP rights – such as patents and trademark and design registrations for the United Kingdom, Europe and further afield – and advising on their exploitation and enforcement.

Withers & Rogers is most renowned for its work in strategic IP. The firm builds strategies for clients that embrace critical areas like innovation culture, due diligence, freedom to operate, invention management and patent mapping, to name but a few.

Withers & Rogers Renewals, a sister firm of Withers & Rogers, handles renewals on behalf of its clients, enabling them to devote more time to other parts of their business. The renewals team serves a global client base across a huge variety of industries and the network of local patent attorneys and renewal agents around the world gives it a truly global reach.

Alongside this, the firm provides proactive support functions that help clients keep track of their intellectual property, stay on top of maintenance and stay in control of cost. This ensures clients receive a service that delivers both technical excellence and commercial insight.

Experience

Withers & Rogers is a market leader in the drafting and prosecution of patent applications and in oral proceedings (hearings) in both opposition and appeal procedures at the European Patent Office. The firm acts extensively before both the UK Intellectual Property Office and the European Patent Office. The firm’s contentious practice team has significant experience of conducting litigation in the UK courts and jointly with attorneys in other European jurisdictions.

The firm also has experience of advising clients on implementing working strategies to maximise commercial gain from inventions, while keeping costs to a minimum. A number of its clients require a flexible approach to handling their portfolios, including maintaining their databases for them.

International by nature

A truly international practice, Withers & Rogers maintains an established worldwide network of contacts including both trusted foreign IP law firms and direct clients.

As well as filing and prosecuting applications at the European and UK Patent Offices, the Munich office enables the firm to act before the German Patent Office, so it can act as a single point of contact for three of the key patent granting authorities in Europe.

With attorneys fluent in most of the official European languages, together with the Munich office and recently opened Paris office, Withers & Rogers is ideally positioned to work with any European jurisdiction.

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