Markus Herzog

Can you tell us about some of the biggest obstacles you have faced in your professional life – and how you have overcome them

I have never seen an obstacle as something that prevents me from reaching my goal, but rather as a challenge to find an alternative route. Crucially, I have never doubted that I could reach my objective, and I have never lost sight of it.

When looking for a solution, it has always been important to me to first take a step back and assess my situation as objectively as possible (ie, without personal feelings and animosities) before I act. I have always checked whether I am the only one who has to deal with the specific issue or whether others might be more affected – and, if so, who these others were and how they would act. Often it is better not to grab the bull by its horns right away, but first to leave action to others. Many problems solve themselves if you just give them the time to do so.

What are the biggest challenges facing your clients at present?

Like many companies around the world, my clients are still feeling the economic impact of the covid-19 pandemic. Above all, this concerns supply bottlenecks and delays in the delivery of raw materials that they need to manufacture their products.

In addition, increasing digitalisation is a major challenge. Particularly important is the use of AI, the Internet of Things and fault analysis (Big Data), as well as the related question of how to protect new developments in these areas with patents.

Finally, companies are also dealing with the question of what the now probably imminent introduction of the Unified Patent Court system means for their patent portfolios and their future protection strategies.

When it comes to opposition proceedings before the EPO, what are the most common mistakes that parties make – and how can they avoid them?

Many companies deal too late with potentially dangerous patents belonging to their competitors. Consequently, there is often not enough time for well-founded prior art searches before the opposition period expires and prior art has to be introduced into the proceedings at a later stage. However, doing this always carries the underestimated risk of rejection due to late submission.

To avoid these issues, I recommend competition monitoring. This allows entities to identify potentially dangerous patent applications at the time of publication. The identified applications should then be monitored in order to be aware of their grant, ideally more than a year before the end of the opposition deadline. This year should be used to carefully prepare the opposition down to the last dependent claim.

Some directorate-generals at the European Commission are taking an increasingly close look at FRAND licensing issues and may begin to intervene more actively – how might this affect how German courts deal with such issues?

German courts take the principle of separation of powers very seriously. They consider an independent judicative branch to be indispensable, given the fact that not only in Europe, but also in Germany, the separation between the legislative branch (parliament) and the executive branch (government) is becoming increasingly blurred.

I therefore expect that the German courts will not simply follow a trend discernible in the actions of the European Commission, but will wait to see whether this trend affects the laws on the basis of which they have to make their decisions. As long as these laws do not change, they will decide independently.

What are your top three tips for rights holders managing parallel patent infringement proceedings in several European jurisdictions?

In this situation, I believe that it is essential to appoint a manager responsible for synchronising all proceedings and, in particular, to ensure that the presentations of facts and arguments in various jurisdictions do not contradict each other.

Further, regular phone or video conferences involving all decision makers and attorneys are important in order to synchronise the proceedings and divide the workload equally among all acting persons so as to avoid unnecessary duplication of work and therefore costs.

Finally, for psychological reasons, a serious attempt should be made to achieve a quick first victory, even if it is gained in a country that is of secondary interest in business terms.