Andreas Jacob

What led you to pursue a career in intellectual property?

One of the main reasons was curiosity. Besides law, I have always been interested in business, technology and science. These come together in a melting pot when counselling on IP law and corresponding strategies. Every mixture is different, influenced by trends, competition, products and technical progress. Likewise, the legal framework constantly evolves. Approaches that once provided a one-fits-all solution are not necessarily effective today. I am fascinated and motivated by this constant dynamic, which requires openness to change and a permanent willingness to reinvent oneself.

Which of your cases has been the most memorable and why?

The case, which will always stick in my memory, would be the ideal template for a Hollywood production. Undercover investigations with detectives, the establishment of relationships via credible straw men in order to secure large quantities of counterfeit products for evidence purposes, a covert dawn raid and about 50 coordinated individual legal actions in several Western and Asian jurisdictions in order to put a whole counterfeiting network out of business. This would be the material for an exciting screenplay. The case kept my team busy for several years, until finally, thanks to many supporters, helpers and a small army of lawyers in the respective jurisdictions, the counterfeiters were forced to surrender. The case was exciting and both a professional and strategic challenge. During this campaign against the counterfeiting network, I learned a lot about leading a complex operation with many storylines, the well-considered distribution of information, the expectation management towards the stakeholders involved with the client and the effective use of a substantial but limited budget to achieve a goal. In such a project, even minor setbacks are bound to occur. These had to be communicated to all project members, management and project sponsors. Every setback is also an opportunity: lessons-learned workshops were used to analyse the causes and ultimately to adapt the methods and processes used for future situations, so as not to experience déjà vu in similar situations.

How do you use automation tools to assist clients and foster innovation within your practice?

In recent years we have been able to automate a large part of the logistical activities that take place before or after a lawyer begins work on a case, thanks to modern software tools. This has several advantages. In addition to a significant increase in the speed of the work process, it has been possible to automate activities that most employees perceive as tedious and annoying.

The former waste of employee potential and motivation has thus been significantly reduced and we can now make greater use of our highly qualified specialists in operational support. This promotes talent and motivation, counteracts employee churn and thus enables us to deliver results for our clients with high levels of both reliability and quality. In our working environment, which is almost completely digitalised, it is now possible to work without being physically present in the office. In the future, this will make possible completely new models of collaboration, both with colleagues and with clients. Old boundaries drawn by routes, travel, accommodation and logistics will play an increasingly minor role. The new limits are bandwidth, IT security and time zone.

In your experience, what are the key steps to securing a strong patent portfolio?

A patent portfolio is strong if it fits the business and supports the company’s goals. The development of a portfolio should be informed by the technological market, products, services and value chain of the patentee’s business case. Patents are both powerful tools and economic assets. Going through the lifecycle – from invention through the first filing process, subsequent internationalisation and, after grant, the economic exploitation – consumes a lot of time and money. Thus, following business goals is essential.

How have client demands changed over the course of your career, and how has your practice adapted to this?

In the past, it was common practice to formulate creative ideas for innovative new products and then quickly apply for a patent shortly before the first publication. Presumably because of the mental block behind applying for a patent, the subsequent application procedure, which can drag on for years, was then perceived as nothing more than an annoying burden. In the course of internationalisation or, in the case of European patents, validation of the patent in European states, decisions were often made on the basis of a mixture of gut feeling and cash position.

Fortunately, today not only the big companies, but also SMEs, act much more professionally.

We often support development teams as early as the pre-development phase. After training and raising awareness of the rules of the game in patent law, the knowledge gained from Big Data evaluation of the technological environment also plays a role. This makes it possible to define the target window in which the development result should lie, without colliding with existing patents held by competitors. This knowledge can also be used to identify resources that are necessary for or support development, for example qualified individuals or companies whose development inventory can be activated. As a sparring partner, we can uncover possible dangers for the future product’s freedom to operate and defuse them before production starts. Accompanied by the development process, inventions are harvested and - after a selection process - patent applications are initiated. This can often be done in a comparatively lean way, since a large amount of background knowledge is already available from the development history. This often results in several patent applications that cover a product or even occupy a technological niche. Before entering the cost-intensive phase of internationalisation, criteria such as costs, necessary or optimal protection strategy and the requirements of the business are used to select the applications for which further investment is likely to pay off.

This is just one example of how we now support a modern IP organisation through close in-house and on-site networking between our external attorneys and in-house developers, patent department members, business and management.

What, for you, are the most crucial steps of any IP monetisation process?

It is essential to continuously reflect the changing conditions in the respective market environment in the IP portfolio. At the time of filing, it is nearly impossible to predict which patent will be the rainmaker. As a starting point, which can of course vary from industry to industry, if you take an uncontrolled, naturally growing portfolio, it can be assumed that in the medium term, only about 10 to 15% of the company’s own patents will be used directly or indirectly. Less than 2% of the portfolio is made up of actual value drivers. For the most part, this is enough to make up for the costs of the remaining 98%. Nevertheless, there is potential for improvement.

Systematic and regular portfolio maintenance, taking into account the market conditions and prospects prevailing at the time of the review, helps to significantly improve the portfolio’s performance. Which patents did we use in the past? Are there any changes regarding the scope of protection of these patents? Have there been any changes in the product design? If there is no longer a match here, at least an indirect utilisation perspective should be apparent through the blocking effect against substitute products, or renewed utilisation in the context of the next product generation. In parallel, or alternatively, secondary forms of exploitation via sale or licensing should be considered. If no opportunity can be realised, it is usually best to cut down the associated patent family and use the resources that have been released in order to exploit the patents of value. Subsequently, one can enjoy the successes that a properly maintained and managed portfolio has to offer. In an ideal case, the turnaround from a patent cost centre to a self-financing and, depending on scaling, profit-generating business unit is achieved.

How would you characterise the German IP deals market right now?

In older technology fields, work is carried out predominantly through brands. According to my observations, there are a number of investors who are interested in trademarks that are established as known and proven. The image and the associated idea of German quality products is highly attractive, especially for further marketing in China.

In young technology fields - such as autonomous driving or the battery technology market, which has been revitalised by the future need to store electrical grid energy and, not least, the trend towards e-mobility - a dynamic has emerged that can hardly be estimated, especially with regard to patents. In addition to traditional companies that are responding to the megatrends of digitisation, e-mobility and urbanisation by integrating completely new products into their business, many young start-ups are entering the market, some with extremely creative approaches and business models. In the future, this will not only be exciting from the technical side. The consolidation dynamics will follow the stress period here and will result in some highly interesting mergers.

What skills do top-class litigators need to succeed before the German courts?

Top legal knowledge can only be fully exploited if it is complemented by the ability to break down complex technical issues in a way in which the deciding judges can quickly grasp them. The time available to the court’s chambers is limited. It is only appropriate to spend this time by excessive pleading in absolutely exceptional cases. In all other cases, the litigator should understand what their client wants and emphasise it in such a way that convinces the court, or the opponent is manoeuvred into a settlement that serves the interests of the litigator’s client.

How do you stay abreast of the latest technological developments?

The influences of technological development do not stop at our profession. Remaining stuck in yesterday’s status quo is not an option. We have a good overview of the technological possibilities because of the high degree of diversification of our activities in almost all technological fields and the insights this provides into many different industries. By coupling this with the knowledge of our processes, the needs of clients and the question of how further value can be added through appropriate investment in technical resources, we identify the points where progress is worthwhile. We have strong internal resources enabling us to perform our own research and development within our software and hardware environment.

What common mistakes do foreign rights holders make when enforcing their patents in Europe – and how can they avoid them?

Foreign rights holders should be aware that a European patent is not one patent but a bundle of national patents. Consequently, enforcement must be carried out in each European country separately. Since legal practice varies from country to country, the result of a litigation procedure in one country may be very different to that of another. The strategy for territorial extension of a European patent following grant should consider these differences. In case of an infringement, one should choose the most effective arrows from one’s quiver.

I hope that European patents with unitary effect will soon be an option. Then it will be possible to enforce one patent across all the European states that have accepted this kind of unitary IP right before the European Patent Court. The political and legislative procedure is more advanced than ever, and I am optimistic that this option allowing a completely different strategic approach towards patent protection in Europe will enter into force soon.

Andreas Jacob

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Andreas Jacob has been a managing partner at Pruefer & Partner since 2015. He is a specialist in IP law and holds an LLM. Mr Jacob has profound experience in intellectual property and offers strategic consulting to his clients worldwide. He has frequently served as lead legal counsel in complex cases against counterfeits and in litigation proceedings, including patent and trademark infringement disputes.

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