What has been your proudest professional achievement?
There have been many litigation cases that, at first glance, seemed hopeless and bleak – where clients had already given up all hope of a convincing defence position and had been ready to pay high royalties – but with my team’s intervention, took an unexpected turn; a complete surprise to both client and opponent. This includes numerous cases in which the opposing patent owner had already obtained an favourable decision in earlier litigation against another company – before the same court, on the basis of the same patent for the same or almost-identical products. We were able to convince the court to rule differently than before and in favour of our client by uncovering further aspects and facts and bringing forward considerations that had not previously been taken into account.
While all of this is, of course, very satisfying, I am proudest of one particular situation. A client called me to mediate an internal dispute that had arisen between several of its teams under the severe pressure of a patent infringement suit. The dispute’s technical and legal issues were to be discussed in the personal meeting, and the political and emotional issues of the many team members had to be considered. Through intensive listening and an open, unpretentious yet unsparing discussion of the different perspectives, common ground was reached on what was desperately needed: solidarity between all team members and getting everyone on board to fend off an outside attack.
The UPC is officially up and running and has the potential to dramatically alter the European litigation landscape. What effect, if any, is its launch having on clients’ strategies so far?
As all of the infringement complaints that were asserted against my clients since the start of the UPC were filed before German national courts and not before the UPC, my clients’ defence – including validity challenges – remained on the domestic level. However, this will change as soon as litigation is brought before the UPC. Clearly, bringing a case before the UPC means increased pressure on the defendant, which could be hit by an injunction across all UPC member states, and also on the plaintiff that could lose its patent in these jurisdictions. Clients of mine who are thinking about where to file lawsuits deem it critical to weigh these opportunities and risks.
If you could make one change to the German patent litigation system, what would it be – and do you think it’s likely to happen?
It is absolutely essential that working conditions at the German courts remain attractive in order for the patent litigation system to work efficiently and predictably as it has previously done so. This means that the regional courts, higher regional courts and the Federal Court of Justice should be provided with adequate infrastructure, proper staffing and attractive working conditions, and the judges should receive good pay. Achieving this goal is crucial for Germany to stay a key patent venue and will take great and continuous efforts from all sides, including lawmakers and governmental executives.
What are two lessons you have learnt from your time as an appointed court expert at the Dusseldorf Higher Regional Court?
From my experience, I can say that the judges in the German patent litigation system are highly talented, knowledgeable, circumspect and hardworking. They want to explore the core of the disputes and make good decisions. They have a fine sense for when parties play tricks, and a party’s credibility is utterly important. These are lessons that I have learned:
- avoid long submissions with bad or even false arguments;
- stick to the facts; and
- present one’s case in a honest and concise manner.
How do you build trust and understanding with clients to ensure that they make the most informed IP decisions?
In my professional relationship with clients, I try to cultivate open and rigorous discussions in a constructive way that addresses both the strengths and weaknesses of a case. I try to get everybody on board and invite them to contribute to the case to their best ability. This often leads to intense internal discussions, which are enjoyable and usually rewarded with success in the courtroom.
Joel Nägerl is a German and European patent attorney. His main practice area is patent litigation, where he advises and represents large multinationals in high-profile international disputes in the fields of telecoms, electrical engineering, semiconductor technology and optics. Dr Nägerl also serves as an appointed court expert at the Dusseldorf Higher Regional Court and co-authored the Handbook on Patent Law.