What led you to a career in intellectual property?
During my university education in engineering, I was constantly looking for a profession in which I could combine my scientific training with something else. This is how I came across the career of a patent attorney, which blends technology and science with law, languages and an international environment. In my opinion, the most fascinating and challenging part is the task of defining legal protection for technical ideas through language. Language is extremely important in two respects: on the one hand, there is a very demanding dispute at the highest level about words and their meaning before IP offices and courts; on the other hand, you have to explain these legal subtleties in a comprehensible and simplified way to a mostly technical/scientifically trained expert on the client’s side to make them understand you and give them security in their decisions.
How have client demands changed over the past 10 years and what effect has this had on your practice?
Client demands have increased. Patrons are now much more focused on the content of their patents. The administration and the international roll-out of their intellectual property is a minimum prerequisite, which they expect to be perfectly carried out by their firm. Quality, cost-awareness and speed are crucial.
How do you measure the success of a world-class IP strategy?
A world-class IP strategy is characterised by its holistic approach. It is not only about protecting individual inventions,
but also about the asset of an IP portfolio for a company, monitoring competitors, identifying and staking out the latest technologies early on and defending innovation leadership, preferably with the protection of entire standards.
What are the biggest challenges facing international clients looking to enforce their patents in Germany right now?
Today, the risk of losing one’s patent in a counter-attack through a nullity action before the Federal Patent Court is relatively high, since the (partial) nullity rate at this court is significantly higher than 50%. The patent in suit must therefore have been thoroughly examined in terms of its legal validity before the start of patent infringement proceedings. However, the framework conditions for infringement procedures in Germany are still one of the best in the world.
If you could make one change to the European patent system what would it be – and do you expect it to happen?
I think that one of the most urgent changes would be to move away from the pronounced formalism that often prompts unnecessary discussions, rather than focusing on the actual examining of the invention. I also consider the new practice of the EPO’s Boards of Appeal to be extremely questionable, since hardly any really substantiated discussions are allowed here. This makes it extremely easy for the Boards of Appeal but compromises the quality of its decisions.
Managing Partner [email protected]
Jürgen Feldmeier has been a patent attorney since 1992 and a managing partner of Prüfer & Partner since 2001. He holds a diploma in mechanical engineering from the Technical University of Munich and has an LLM in European intellectual property. Mr Feldmeier has comprehensive experience in prosecution procedures and frequently served as lead patent counsel in various litigation proceedings, including infringement, nullity and opposition proceedings, before patent offices and the relevant patent courts.
Click here to see his IAM Patent 1000 2021 profile.