You manage extensive portfolios of IP rights for national medium-sized companies. What are some of the biggest challenges that you face doing so, and how do you overcome these?
Medium-sized companies often do not have sufficient resources to manage their portfolios strategically. Moreover, they try to avoid time-consuming decision processes. Multiple challenges result from these shortcomings. Therefore, it is important to understand the client’s business model in order to guide them through the IP jungle. Patrons rely on your advice – you must take responsibility for this and, in many cases, decide what is best and is most time and cost-effective for them. It is important to install clear processes on their side (eg, filing a new application, which countries to select and inventor remuneration), while also managing the relationship between the service user and the law firm.
Which aspects of your work do you find most rewarding and why?
Winning! It is thrilling to fight for clients’ rights, in particular where the stakes are high, and to get a result that they are satisfied with. This does not always mean winning the case on a legal basis – it is about getting the best value possible for the patron. I also enjoy building my own law firm and developing better processes to serve clients’ needs at the best value.
How do you measure the success of an IP strategy?
An objective measurement of success is not possible. Success depends on the client’s expectations and goals, which can vary significantly from entity to entity. Some are defensive and only wish to avoid disputes. In this case, a successful strategy means creating a defensive portfolio with a great deal of disclosure and little territorial coverage. Other, more aggressive entities may require a portfolio with a broad scope and territorial coverage.
You serve as a representative before the EPO. Can you tell us more about your work there and why it is important?
My work at the EPO covers both prosecution and oppositions. Being able to offer my patrons an expert take on dealing with the authorities is invaluable. To do this work, it is important to know the law and be clear on technology issues when discussing scope with the EPO. Further, standing firm is key, as many EPO objections are raised in the early stages of an application. Often, a second or third look gives the twist necessary to proceed to grant.
How do you expect FRAND issues to develop in Germany over the coming years?
We are in a situation where there is now reasonable and sufficient FRAND case law in this country. I no longer foresee major developments in FRAND questions, apart from some side issues or rare constellations. On the whole, implementers and SEP owners know their obligations to conform with FRAND rules.
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As a patent attorney at COHAUSZ & FLORACK, Philipe Walter has extensive expertise in the fields of electrical engineering, information technology and mechatronics. He has been involved in numerous proceedings between smartphone manufacturers, as well as court disputes between automotive suppliers and set-top box manufacturers. In addition, Mr Walter deals with patent law issues in connection with international licence pools that involve videocoding standards.