You have won widespread acclaim for your work as an educator – what is the most important thing that a current student of patent law needs to know to prepare for a successful career?
From my perspective, a current student should not only have a solid knowledge of their country’s own national patent law, but also of the most important international agreements, such as the Paris Convention, the Patent Cooperation Treaty and the Agreement on Trade-Related Aspects of Intellectual Property. Further, being fluent in English, in both oral and written forms, is vital.
What are some of the biggest pressures acting on your clients right now?
How to get access to innovations that are more and more heavily protected by patent thickets is a big issue. Opening clauses, giving, for example, patentees of improvements of patented technologies permission to implement the respective secondary technology, is vital from my viewpoint.
In your years teaching in China at Tsinghua University, what changes have you observed in the Chinese IP system and what untapped opportunities are there for rights holders?
The Chinese IP system has become much more transparent over the years, particularly with the introduction of specialised IP courts, which not only enforce patent rights in China, but also assist in getting access to patented technologies. Also, the manner in which AI and software-related inventions in general, are patented has been greatly improved; even approaching standards you see in Europe, under both the European Patent Convention and national laws and practice. Untapped opportunities exist, as only very few foreign applicants applying for patents in China make use of the possibility of Chinese patent law to protect certain innovations in parallel by using a patent and a utility model, which, like, for instance, in Germany, gives protection to the utility model at a very early stage of the pending patent application, which can later be replaced by the patent after grant.
What key points should companies bear in mind when carrying out a tech transfer deal with a European research institute or university?
Key points to bear in mind, particularly for tech transfers that involve a German research institute or university, would be to ensure that they know about the various sets of agreement templates that have been developed by various institutions and which are used by many universities and other public research institutions for industry-university cooperation. In particular, foreign companies cooperating with European research institutes or universities should make sure that the sometimes very strict rules for acquiring inventions made by university employees have been properly followed by the research institute or university as an employer, including the severe remuneration duties.
Can you tell us about some of the key skills that litigators need to succeed before the German courts?
First of all - speak German fluently. Although most of the judges both in civil courts and at the Federal Patent Court do understand and speak English to a certain extent, the language of the procedure is still German. If a litigator cannot follow what is spoken about in the court room exactly, they run the risk of getting during the trial.
Heinz Goddar is a German patent attorney and European patent and trademark attorney, operating out of the Boehmert & Boehmert Munich office. His technical background is in physics – in which he has a doctorate – and he teaches IP law at the University of Bremen, the Munich Intellectual Property Law Centre, and at several other universities in Asia and the United States. Mr Goddar is a past president of Licensing Executives Society (LES) International and LES Germany.