What key skills does a world-class patent litigator need to succeed before the German courts?
I see three key skills that are essential to a world-class litigator. Surprisingly, the first is clear to everyone, yet rarely executed: the patent claims must be read as they are, without any (subconscious) interpretation. This step is most essential for figuring out the claimed subject matter or possible claim flaws enabling rather formal action, based for example on disclosure insufficiency. The smallest detail may have a huge effect on claim interpretation, prior art search and line of argumentation.
We spend a considerable amount of time studying the wording and the logical structure of the claims, and this extra time often pays off. A considerable number of cases have been won by PATENTSHIP because we read the claims without any bias.
A second key skill is a deep understanding of the technical subject matter, in particular in technically complex areas such as coding. In fact, a patent litigator must understand the claimed subject matter on a similar level to the actual inventor in order to derive convincing and sustainable arguments.
Last but not least, plain listening − in particular in video proceedings − is essential for determining appropriate counter arguments. In fact, I cannot over emphasise this. Surprisingly, I often see attorneys who listen to argue rather than listen to learn. This results in losing a substantial amount of information from which to derive counter arguments.
You are experienced in preparing and prosecuting German, European, PCT and US-patent applications in a host of different technical areas. What differences do applicants need to be aware of when drafting?
Perhaps the most significant difference in the practices of different patent offices is the question of the inventive step. The so-called ‘problem-solution’ approach strictly followed by the EPO may have no merits when arguing inventive step before the German Patent Trademark Office and the USPTO. You therefore need good arguments for various jurisdictions clearly expressed in the description.
The EPO is often more formal than the USPTO, for example, with regard to clarity. A US-style patent application should therefore have a clarification of the meaning of the claim features somewhere in the description of the invention.
After years of back and forth the UPC is nearly ready to open for business – how have these preparations affected your practice?
We have been keenly awaiting the appointments of UPC judges in order to adapt our litigation approach accordingly. Finally the UPC has confirmed the appointment of 85 judges, with 34 legally qualified judges and 51 technically qualified judges. The list of names is impressive and we assume the highest level of quality before the UPC. Moreover, we already know many of the legally qualified judges, which greatly simplifies the process of adjusting our proceedings. The technically qualified judges all have a solid technical as well as IP background, so we can assume the highest professional level here as well. We therefore assume that the UPC will soon build up a solid and fundamental consistency behind their judgments. At PATENTSHIP, we will study each decision and also attend as many UPC hearings as possible in order to swiftly adapt to UPC practices.
How are client demands changing, and how has this affected the way that you manage your practice?
We observe growing client demands for valuable patents at reasonable costs. In order to meet these demands, we pay a great deal of attention when drafting patent claims, starting from the actual market need, which in our experience increases the odds for a claimed subject matter to be utilised in a market. Moreover, we offer well organised, reliable and focused patent prosecution at predictable costs.
In addition, we offer our clients invention-harvesting services, including workshops, in order to support their R&D departments to generate inventions that are valuable, particularly in the context of digital transformation. We are more than glad that we have been able to contribute to strengthening the market positions of our clients, which currently have more than 350 inventions purposely harvested by PATENTSHIP in the fields of telecommunications, IoT, coding, security, blockchain, fintech and Big Data.
Robert Klinski is a German and European patent, trademark and design attorney, and the founder of PATENTSHIP. He studied electrical engineering and telecommunications at the Technical University Hamburg-Harburg, and received his PhD with honours from the Technical University of Munich. Dr Klinski has worked in intellectual property since 2002 and has extensive experience in IP prosecution, litigation, harvesting and exploitation in the digital signal processing, 5G, the Internet of Things, AI, blockchain and security.