What is your proudest achievement over the past 12 months?
My proudest achievement is that apparently the EU commission (DG GROW) is sincerely considering proposals that I have made to them in relation to handling SEP-related questions.
As the opening date for the long-awaited UPC draws ever closer, what steps are you taking to prepare yourself and your clients?
With the forthcoming UPC, we are helping our clients decide to what extent it will be useful to have a reasonable mixture of national patent applications (only in Germany), European Patent Convention (EPC) applications and parallel patent applications in Germany and at the EPO. Further, we are generally recommending that our clients opt out of EPC patents that have already been granted.
How do you build trust and engagement with clients?
We try not only to do excellent work for our clients but also to be available for general strategic meetings and consultations, regardless of whether these are virtual or personal. We would also never charge for general advice, although this may be different for billable hours in certain cases.
What effect – if any – are you seeing the climate crisis have on the innovation landscape?
As far as the climate crisis is concerned, we are seeing a strong move away from classical petrol-fuelled vehicles, and towards alternatives, in particular, battery technologies. We represent some of the world’s largest battery manufacturers, and our work in this area (as well as with systems that are important for connectivity) is increasing greatly.
You have won international acclaim for your experience of and insight into all aspects of intellectual property. What are your top three recommendations for building a world-class IP strategy?
My recommendation is that IP strategy should follow R&D, not vice versa. Further, whenever patentable innovations come out of R&D, one should seek virtually worldwide patent protection. Lastly, whenever our clients improve on items that have already been patented, we even more strongly recommend patenting in order to be able to rely on legislation to protect the improvement. A good example of this is Article 24(2) of the German Patent Act, which states that somebody who is granted a secondary patent on an important improvement to an already patented item, is (as a matter of law) entitled to a compulsory cross-licence, so that the innovative product developed by the secondary inventor can come to the market.
German patent attorney and European patent and trademark attorney Heinz Goddar is a partner at Boehmert & Boehmert. He teaches at the University of Bremen, Bucerius Law School, Munich Intellectual Property Law Centre and at universities in Asia and the United States. Past president of Licensing Executives Society (LES) International and LES Germany, Dr Goddar received the LES International gold medal in 2005 and was inducted into the IAM IP Hall of Fame in 2014.