8 Jan

Tobias Wuttke

What is the biggest career challenge that you have faced and what can others learn from how you overcame it?

The biggest challenge that I faced in my career was to truly understand that patent law is a hybrid subject matter composed of technical and legal aspects. However, for the ultimate success of patent enforcement in most cases, the technical aspects take centre stage. Thus, diligent preparation of the facts of a case is critical. This applies in particular to front-loaded court systems such as those in Europe (eg, Germany). This patent law-based observation is also true for other IP enforcement cases; facts, rather than legal arguments, win cases.

As head of the legal department at Meissner Bolte PartG mbB, what does effective leadership in the field of IP law look like to you?

Effective leadership means sharing know-how. This is not a one-way street but rather a process whereby every individual on the team feels motivated to contribute their know-how to the group. With such an agile mindset, the team then becomes much stronger than each individual.

You have been entrusted with patent work by companies at the top of their industry. What are the crucial skills for a top-level IP professional to hone?

The most important point is to really understand the values and the communication culture of a company. This understanding is the foundation for all legal services that are to be provided to the company.

Which of the cases that you have worked on are you most proud of – and why?

I am most proud of the cases where I can either help clients to obtain a fair value for their investments in intellectual property or defend clients against unwarranted threats. In the past 10 years, I have handled several hundred court cases, many of which fall into one of these two categories.

What are the key characteristics of an excellent IP strategy?

An excellent IP strategy is digital, global and dynamic. ‘Digital’ in the sense that it makes use of all available tools that are based on Big Data (eg, patent landscaping and patent searches). ‘Global’ in the sense that the IP strategy has a global footprint and is customised on the specifics of each national market. However, intellectual property remains a country-by-country project. ‘Dynamic’ describes the need to fine-tune any strategy on a regular basis, as legislation, case law and the behaviour of competitors mandate frequent and constant adjustments.

What are your top three tips for ensuring long-lasting relationships with international clients?

Communication, communication, communication. Of course, communication needs to be continuous, concise and up to date. What is more, it should not only focus on intellectual property, but also on the geo-political relevance of each IP-related topic.

You are known for taking a leading role in litigation proceedings. How do you convey complex technical concepts and arguments in a way that is clear to juries?

The best image to explain this is a children’s book (ie, a lot of images and little text). This sounds simple but preparing concise text for a complex technical fact scheme is a time-consuming task. In Europe we do not have jury trials, but explaining the facts of the case to judges is basically the same as explaining them to a jury.

What are the most common mistakes that US companies tend to make before the EPO?

In my view, the following guidelines are helpful to understand the EPO:

  • The EPO requires a detailed disclosure of the invention in the specification (the focus of the EPO really is on the technical aspects).
  • The test of what is originally disclosed in the application as filed is extremely strict at the EPO (in particular, if compared to the German Patent Office and the UK Patent Office).

Thus, claim amendments are a science in their own right and much less is possible before the EPO in this respect compared to in the United States, Germany and the United Kingdom (eg, no combination of features from independent embodiments). However, there is the potential at the EPO to fully explore the possibility of multiple dependencies in the claims, which is likely under-used by US companies at present.

With the German Federal Constitutional Court upholding the constitutional complaint against the UPC Agreement, how likely is it that we will see the creation of the UPC in the foreseeable future?

Without a crystal ball, this question is difficult to answer. It is very likely that we will see another constitutional complaint (maybe even several others) against the UPC Agreement in Germany. However, it is unclear whether such complaints will really terminate the project, further delay it or have any impact at all.

What do you expect to be the next big tech sectors to take off in Germany – and how can companies and investors best position themselves to capitalise on these?

We will see a lot of innovation in Germany generated in the field of e-mobility, as significant funds are currently invested in this area. It is also likely that such innovation will be made by SMEs (eg, on the application layer side), which will create interesting investment opportunities for such companies.

Tobias Wuttke

Partner, Head of Litigation
[email protected]

Tobias Wuttke heads the litigation department of Meissner Bolte. Each year, he deals with more than 30 in-court IP litigation cases and far more out-of-court disputes. Solving these disputes and obtaining the best possible commercial result for clients is his mission. Dr Wuttke states: “I believe in the importance of intellectual property and IP awareness. Creating such awareness among entrepreneurs, industry and public institutions is my passion.”

Click here to see his IAM 300 2020 profile.