The World’s Leading Patent Professionals 2021
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Contents
Introduction 2 Methodology 3 IAM Patent 1000 bandings explained
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Asia-Pacific 8 Europe, Middle East and Africa
324
Central and Latin America
1104
United States and Canada
1204
Research editor Nicholas Richardson nicholas.richardson@LBResearch.com
Head of content production Simon Busby simon.busby@LBResearch.com
Deputy research editor Asma Abbarova
Production editors Katie Adams, Ellen Desmond, Harry Turner
Researchers analysts Molly Marsh, Abubakar Mehdi, Joyce Ng, Adam Pearce, Ida Pettersson, Sophie Storrs
Distribution coordinator Vishnu Patel vishnu.patel@LBResearch.com
Editor in chief Joff Wild joff.wild@LBResearch.com
IAM marketing Claire Bagnall claire.bagnall@LBResearch.com
IAM editor Jacob Schindler jacob.schindler@LBResearch.com
Senior business development manager (EMEA & Americas) Graham Day graham.day@LBResearch.com
Editorial manager Jonathan Allen Editors Victoria Arnold, Carolyn Boyle, Veronique Musson, Liz RutherfordJohnson, Florence Sutton-Manders Content coordination manager Michael Smallman michael.smallman@LBResearch.com Senior content coordinator Pawel Frydrych pawel.frydrych@LBResearch.com Content coordinator Grace Middleton
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Business development manager (EMEA & Americas) Paul Chapman paul.chapman@LBResearch.com Business development executive (EMEA & Americas) Jack Lawrence jack.lawrence@LBResearch.com
Business development executive (EMEA & Americas) Ellie Thornborough ellie.thornborough@LBResearch.com Business development manager (Asia-Pacific) Bryce Leung bryce.leung@LBResearch.com Business development executive (Asia-Pacific) Sarah Yeung sarah.yeung@LBResearch.com Managing director (Asia-Pacific) Dan Cole daniel.cole@LBResearch.com Commercial director (EMEA & Americas) John Eborall john.eborall@LBResearch.com Chief executive officer Nick Brailey The IAM Patent 1000, a supplement to IAM, is published by Law Business Research.
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Disclaimer
This publication does not purport to provide investment advice. The publishers bear no responsibility for any errors or omissions contained in the guide.
IAM Patent 1000
1
Introduction
It is a pleasure to welcome you to the IAM Patent 1000: The World’s Leading Patent Professionals 2021, the tenth edition of our market-leading guide that identifies and profiles leading private practice patent professionals and firms in the world’s key jurisdictions, as well as expert witnesses in the United States. The IAM Patent 1000 continues to grow and the 2021 edition is the biggest ever, covering more jurisdictions in greater depth than any other publication available anywhere in the world. Over a five-month period, thousands of private practice lawyers and attorneys, based in dozens of countries, as well as the users of their services, shared their thoughts on the market with our dedicated research team working out of IAM’s offices in London and Hong Kong. The detailed, confidential interviews conducted by our researchers were a crucial part of the process to identify the practitioners and practices considered to excel at providing patent-related legal services. On top of this, in the United States we also asked interviewees to name the expert witnesses they turn to for world-class input on both damages and technical issues. In all cases the feedback we received was combined with written submissions and additional investigations so that a full assessment of all potential candidates for inclusion could be made. It is this painstaking work and attention to detail that makes the IAM Patent 1000 unique as a one-stop resource that focuses exclusively on naming best-in-class patent prosecution, licensing and litigation practitioners on a global basis, alongside US expert witnesses. All those who make the final listings in the IAM Patent 1000 are included because we have received substantial positive feedback about them from multiple sources. We do not claim to have found every top name in every jurisdiction covered; but we are confident that the men and women included within these pages make up the vast majority, and that everybody named fully deserves the recognition. For a detailed methodology that explains the research process, as well as how the research team decides who should finally be listed, please see the methodology page. In addition to the listings and editorial, you will find further biographical information on some of the individuals featured at the end of each country section, and on some of the selected firms at the end of each regional chapter. Everyone selected for inclusion in the IAM Patent 1000 is offered the opportunity to publish this information for a fee – some choose to do so, others do not. Either way, it has no effect on listing or ranking decisions; research is always conducted entirely independently of any commercial considerations.
Jacob Schindler Editor IAM
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Methodology
IAM is proud to present the tenth edition of IAM Patent 1000: The World’s Leading Patent Professionals – a unique guide that identifies the top patent professionals in key jurisdictions around the globe. Patents are essential business commodities and knowing how to obtain, enforce and monetise them has become mission critical for companies in all industries. Private practitioners play a key role in developing and implementing patent strategies for clients in both local and global markets, as well as acting to protect clients’ rights in the event of infringement. The IAM Patent 1000 shines a spotlight on the firms and individuals that are deemed outstanding in this pivotal area of practice.
The guide has been compiled following an extensive research process. Over five months, IAM conducted in the region of 1,800 interviews with numerous attorneys at law, patent attorneys and inhouse counsel to gather market intelligence on the leading players in the field. Individuals qualify for a listing in the IAM Patent 1000 when they receive sufficient positive feedback from peers and clients with knowledge of their practice and the market within which they operate. In those markets in which practitioners have narrowed the focus of their work, we have presented tables highlighting the leaders in the respective areas of prosecution, transactions and litigation. Only those individuals identified by market sources for their exceptional skill sets and profound insights into patent matters feature in the IAM Patent 1000. We have also identified the leading firms in the market – similarly listing them, where appropriate, in prosecution, transactions and litigation tables – as it is clear that the depth of expertise that a firm can offer beyond and in support of its star practitioners is an important factor in the decision to instruct. Firms qualify for a listing on the basis of their depth of expertise, market presence and the level of work on which they are typically engaged. Our aim is to ensure that the IAM Patent 1000 is as accurate as possible. We seek to produce the definitive list of the world’s leading patent experts, on the basis of feedback received from those operating in the market. If you disagree with the opinions we have presented, we would like to hear from you. Our guarantee is that we will further research your input and so improve the list in the future. All names and individual positions at firms are correct to the best of our knowledge as of 15 April 2021. In instances where a firm has merged or subsequently dissolved, or individuals have moved, these changes will be reflected in the next edition of the IAM Patent 1000.
Nicholas Richardson Research editor IAM Patent 1000
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IAM Patent 1000
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IAM Patent 1000 bandings explained
IAM Patent 1000: The World’s Leading Patent Professionals recommends those it considers to be the leaders in the field: only those delivering top-quality patent services make the cut. However, even among this elite group, in many markets it is possible to discern a degree of stratification. While all firms and individuals included in the guide have made the winners’ podium, some are considered to have an edge over their competitors in terms of reputation. We have thus devised bandings to reflect this diversity at the top end of the market. For litigation, where appropriate, recommendations in the IAM Patent 1000 are presented in gold, silver and bronze bands. The bands reflect the reputations of teams and professionals relative to their peers in the field, according to the research:
• Gold – firms and individuals in the gold band are those that attract the most positive comments from sources. We have identified them as the crème de la crème; their success hinges on reputations established over lengthy periods of time, something which enables them to secure the most highprofile, big-ticket instructions from the most demanding of clients.
• Silver – these eminent practices and individuals also attract extensive feedback and are renowned for their top-end work. However, the consensus from commentators is that for whatever reason – less specialised, newer to the marketplace, smaller client base and so on – their reputations and their visibility in the patent sphere do not quite match those at the apex.
• Bronze – like their gold and silver peers, those designated bronze are highly praised by sources and are among the most competitive in the field. However, while those included in the bronze band are uniformly strong, their profiles are typically somewhat lower for patent work than those of their competitors in the gold and silver bands.
For prosecution and transactions, the amount of peer interaction – and therefore commentary – is limited. In these areas of practice, firms and individuals are listed alphabetically, not organised by bands. In instances where certain individuals or firms attracted significantly greater positive feedback, they have been listed as “highly recommended”, to distinguish them from their “recommended” peers. We have also included “luminaries” – individuals who have scaled back the extent of their day-to-day work, yet remain important figures in the marketplace. Within the chapters themselves, firm editorial appears in alphabetical order due to the number of tables in many jurisdictions.
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Regions
Asia-Pacific
Europe, Middle East and Africa
Australia
10
Austria
326
Cambodia
22
Belgium
333
China: Domestic
23
Czech Republic
355
China: Foreign
72
Denmark
359
Hong Kong
78
European Patent Office
396
84
Finland
400
Indonesia
108
France
414
Japan: Domestic
111
Germany
436
Japan: Foreign
128
Greece
582
Malaysia
131
Hungary
585
140
Ireland
596
Philippines
144
Israel
609
Singapore
147
Italy
639
154
Netherlands
654
Taiwan
165
Norway
691
Thailand
176
Poland
703
Vietnam
179
Portugal
717
Romania
727
Russia
731
India
New Zealand
South Korea
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IAM Patent 1000
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Regions
Europe, Middle East and Africa
1248
South Africa
750
Arizona
1306
Spain
755
California
1308
Sweden
779
Colorado
1360
Switzerland
811
DC Metro Area
1367
Turkey
836
Delaware
1415
Ukraine
845
Georgia
1421
United Arab Emirates
850
Illinois
1434
United Kingdom: England
852
Massachusetts
1455
United Kingdom: Scotland
908
Michigan
1486
Minnesota
Central and Latin America Argentina
1106
Brazil
1113
Chile
1148
Colombia
1155
Mexico
1161
Peru
1178
United States and Canada Canada
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United States: Expert witnesses
IAM Patent 1000
1206
149
Missouri
1501
New Jersey
1503
New York
1509
North Carolina
1563
Oregon
1567
Pennsylvania
1570
Texas
1578
Utah
1607
Washington
1618
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Regions
United States and Canada Wisconsin United States: National
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1635 1750
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Asia-Pacific
Australia
10
Malaysia
131
Cambodia
22
New Zealand
140
China: Domestic
23
Philippines
144
China: Foreign
72
Singapore
147
Hong Kong
78
South Korea
154
India
84
Taiwan
165
Indonesia
108
Thailand
176
Japan: Domestic
111
Veitnam
179
Japan: Foreign
128
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IAM Patent 1000
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Australia
The patent services landscape in Australia has changed significantly in recent years thanks to a wave of public listings. One firm after another has been scooped up by big listed entities, while others remain fiercely independent. A third group consists of experienced practitioners who have taken the opportunity to set up small practices of their own. On the legal development front, innovation patents are due to be phased out with the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Act 2020 taking effect in February. Innovators are rushing to get their applications in before the 25 August 2021 deadline.
Allens
“One of the aspects of Allens’ service that has set them apart is their ability to provide a multi-faceted overview of an entire complex legal situation. They provide excellent value, particularly dealing with complex issues when protecting our intellectual property in an aggressive business environment.” The talented team of IP lawyers and patent attorneys offers a mix of technical and legal expertise at a level that is hard to match. Keeping clients’ best business interests in mind, they “enable companies to develop complete legal strategies incorporating intellectual property and inter-related corporate and contractual matters and navigate challenging and litigious environments”. A former patent attorney at Pfizer’s European IP department, head of Allens Patent & Trade Mark Attorneys Linda Govenlock “has an excellent technical background in pharmaceuticals” and comes “recommended for PCT national phase patent filings”. Foreign associates rely on the offering for being “an independent Australian firm not part of the large group of merged firms, which minimises conflicts of interest and cost”. “A highly regarded, experienced and respected lawyer, as well as a pleasure to work with,” Sarah Matheson comfortably handles both contentious and non-contentious patent matters. Businesses in the healthcare and life sciences sectors approach Matheson for advice on regulatory and pricing issues. Richard Hamer can frequently be found acting for pharmaceutical companies in high-stakes litigation matters. Recently, he has taken the lead in multiple cases for Pfizer involving some of its most well-known products. Andrew Wiseman “is highly professional and has the ability to break down complex legal situations into everyday language understandable by non-legal business people”. His strengths lie in the pharmaceutical and food and beverage industries. Physics, software and electronics expert Ian Lindsay heads the mechanical and hightech areas, while Joel Barrett’s practice focuses on IP development, commercialisation, protection and enforcement.
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Firms: prosecution Highly recommended Davies Collison Cave FB Rice Griffith Hack Phillips Ormonde Fitzpatrick Shelston IP Pty Ltd Spruson & Ferguson Recommended Allens FPA Patent Attorneys James & Wells Madderns Pearce IP Wrays
Ashurst
The “great team at Ashurst” offers tailor-made patent advice to companies from a diverse range of industries with a particular focus on life sciences. “Street-smart IP litigators Kellech Smith and Anita Cade stay on top of the details of each case but at the same time keep an eye on the big picture to achieve the best commercial outcome for their client.” Smith has represented patent owners before the federal, full federal and high courts of Australia and remains the adviser of choice for Apotex Australia. Life sciences, mining, energy and resources are her areas
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Australia Firms: transactions
Corrs Chambers Westgarth
“very good work”, the group dispenses expert advice on Australian aspects of international patent disputes. A superb reputation has earned it the trust of four of the world’s largest pharmaceutical companies. With more than 30 years’ experience dealing with media and telecoms, pharmaceutical and medical disputes, head of the IP and IT practice John Collins captains the “strong patent litigation team”. Richard Hoad focuses on IP, technology, franchising and competition and consumer law. His expertise attracts well-known names such as Bayer and one of Australia’s leading research universities. Meanwhile, special counsel Natalie Shoolman has taken the lead on several of the firm’s key patent cases over the past year.
Davies Collison Cave
Corrs Chambers Westgarth
Highly recommended Gilbert + Tobin Herbert Smith Freehills LLP King & Wood Mallesons
See p234
Recommended Ashurst
Griffith Hack Shelston IP Pty Ltd
of expertise, while Cade is the go-to person for IP commercialisation advice. An “excellent practitioner”, Stuart D’Aloisio remains “calm and collected in any situation during court proceedings. He meets every challenge head on with a strong sense of purpose that often leads to the best outcome for the client, never losing sight of the way forward.” Nina Fitzgerald’s ability to de-escalate situations quickly makes her “a supportive and valuable source of reason” during complex and often stressful patent disputes. She “shows the utmost respect for both parties and remains impartial and professional”. “Nina does an excellent job in conducting proceedings, formulating case strategy on behalf of clients and instructing others as counsel, and is also hands-on in court work and preparations.”
Bird & Bird LLP
A force to be reckoned with in the pharmaceutical space, Bird & Bird’s Sydney office continues to go from strength to strength. The team, led by IP practice head Jane Owen, handles oppositions and freedom-tooperate mandates effortlessly. Lynne Lewis’ practice covers IP-related consumer and regulatory law. She fearlessly tackles high-stakes litigation while recent addition Kellie O’Flynn offers strong support as a senior associate in the IP group.
Clayton Utz
National law firm Clayton Utz resolves highly complex contentious matters with aplomb. Renowned for its
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“Corrs consistently provides quality commercial legal advice demonstrating a real grasp of its clients’ unique needs” whether they are local non-profits or market-leading global corporations. Start-ups benefit from the Corrs Edge platform – “a tool and fantastic resource developed specifically to help entrepreneurs with legal documents and templates”. Kate Hay leads a team known for being “friendly to work with and keen to understand their clients’ specific requirements while offering reasonable pricing”. Passionate advocates for their customers’ best interests, “Corrs’ lawyers give off a feeling of ‘we are in it together’ – they work in partnership with us, rather than just represent us”. Stephen Stern applies knowledge acquired over a career spanning nearly 40 years in his work alongside Hay on Australia’s longest-running pharmaceutical patent dispute for Danish pharmaceutical company Lundbeck. Topranked litigator Grant Fisher and pharmaceutical, steel and consumer goods patent disputes expert David Fixler come “highly recommended for work in their areas of expertise. Both have considerable experience, including in pharma and biotech patent matters.” Peers refer to Fisher as “an excellent and well-seasoned patent attorney and lawyer who is hardworking, relentless and clever”. Odette Gourley knows the ins and outs of IP, competition, consumer and regulatory and administrative law. She currently represents Merck Sharp & Dohme in a high-stakes matter of great commercial significance to the pharmaceutical giant. Meanwhile, Eddie Scuderi and Frances Wheelahan expertly handle the transactional side.
Davies Collison Cave
One of the most active patent filers in the country, Davies Collison Cave maintains a firm grasp on its top-tier position in the prosecution table. A team of
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Australia Firms: litigation
Individuals: prosecution
Herbert Smith Freehills LLP
Anthony Alder Alder IP
King & Wood Mallesons
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Allens Ashurst Clayton Utz Corrs Chambers Westgarth Davies Collison Cave DLA Piper Gilbert + Tobin MinterEllison Bird & Bird LLP Griffith Hack Jones Day Maddocks Pearce IP Phillips Ormonde Fitzpatrick Shelston IP Pty Ltd Spruson & Ferguson
over 50 patent specialists caters to an impressive clientele including many well-known multinational and domestic corporations and organisations. A “very good, experienced prosecutor”, patent group manager David Webber skilfully drafts patents and handles oppositions, infringement issues, due diligence and freedom-to-operate advice. An authority in his field, he is a long-time lecturer at the University of Melbourne and Monash University. Physics PhD holder Richard Brown advises on a wide range of technologies, including ICT, microelectronics and physics. A guiding light in intellectual property, the “great” organic chemistry and pharmaceutical group leader Michael Caine currently serves as president of the Institute of Patent and Trademark Attorneys of Australia, where he has been a member since 2001.
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IAM Patent 1000
Hayden Barke Argon IP Karen Bentley FPA Patent Attorneys Chris Bird FPA Patent Attorneys Janelle Borham Griffith Hack Richard Brown Davies Collison Cave Michael Caine Davies Collison Cave Peter Caporn Wrays James Cherry FPA Patent Attorneys Michael Christie Shelston IP Pty Ltd Ross Clark Davies Collison Cave Andrew Clarke James & Wells
Paul Dewar and Ian Pascarl belong to an ensemble of “very strong and experienced patent litigators” operating out of Sydney and Melbourne, respectively. Finally, electrical engineer Ross Clark takes a special interest in green technology, although his expertise spans all areas of electrical engineering.
DLA Piper
Favoured by giants such as Pfizer and ResMed, DLA Piper’s Australia team is part of a global collective of 130 patent litigators with an abundance of experience in multi-jurisdictional disputes. Global co-chair of the patent litigation group Robynne Sanders “effectively conducts matters including strategy and overview, as well as hands-on work relating to the preparation and presentation of them in court”. Sanders enjoys
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Australia Michael Cooper Cooper IP
Belinda Hartmann LegalVision
Gary Cox Wrays
Rachel Hooke FB Rice
Daneta Crump FPA Patent Attorneys
David Hughes Griffith Hack
Adam Denley FPA Patent Attorneys
Karin Innes FB Rice
Jeremy Dobbin FB Rice
Stuart Irvine FPA Patent Attorneys
John Dower FPA Patent Attorneys
Saskia Jahn Phillips Ormonde Fitzpatrick
Jennifer Enmon Pearce IP
Madeleine Kelly FB Rice
Ray Evans Phillips Ormonde Fitzpatrick
Linda Kennaugh Wrays
Matthew Ford Phillips Ormonde Fitzpatrick
John Landells FB Rice
Linda Govenlock Allens
Ian Lindsay Allens
Tom Gumley SweatequityIP
Nigel Lokan MinterEllison
Carl Harrap FPA Patent Attorneys
Brett Lunn FB Rice
Paul Harrison Shelston IP Pty Ltd
Paul Mahony Blackwattle IP
a stellar reputation among her peers, who see her as a “very well-regarded and highly proficient patent lawyer”. “Greg Bodulovic forms an important part of the DLA Piper team, along with Nicholas Tyacke” who leads the Australia and Asia-Pacific life sciences practice. Bodulovic joins the rankings this year following a wave of praise from individuals familiar with his work. One refers to him as “an outstanding lawyer with strong legal and technical skills that make him well suited to patent litigation”. “I have found Greg’s input to be on-point, of a very high standard and of considerable assistance to me as a counsel. He is also great to work with. I would recommend him to clients needing patent litigation services in Australia.”
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FB Rice
“Head and shoulders above the rest,” FB Rice impresses patrons with a dynamic group of patent attorneys who place great importance on cultivating and maintaining client relationships. Much of the practice’s success can be attributed to managing partner Brett Lunn, who has now shifted his focus towards advisory work in the corporate space. “Solid technical expertise across a wide range of technical areas” characterises the well-rounded team considered “a pleasure to work with”. Madeleine Kelly’s “high-quality work” in the fields of computing, electrical and electronic engineering, and medical device-related inventions has earned her the trust of individual inventors, universities and multinationals
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Australia Ross McFarlane Phillips Ormonde Fitzpatrick Connie Merlino FB Rice Stephen O’Brien Madderns Edwin Patterson Phillips Ormonde Fitzpatrick Jenny Petering FB Rice Simon Potter Spruson & Ferguson Ian Rourke FB Rice Todd Shand Wrays Grant Shoebridge Pearce IP Mark Teoh Laminar IP Matthew Ward Forward Intellectual Property David Webber Davies Collison Cave Greg Whitehead Shelston IP Pty Ltd Kieran Williams Cotters Patent & Trade Mark Attorneys Mark Williams Phillips Ormonde Fitzpatrick
alike. Jenny Petering has made a name for herself in the biotechnology sphere thanks to her top-class strategic portfolio management. Highly passionate about Australian technological sciences, she is frequently invited to speak to the community on IP and patent-related topics. ”Ian Rourke is very strong in biotech, Rachel Hooke in medtech, and Connie Merlino in electronics and software. FB
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Rice also has a large body of highly motivated and effective associates, including Karin Innes.” The firm has a long-standing working relationship with the Commonwealth Scientific and Industrial Research Organisation (CSIRO); much of this work has been left in the capable hands of Rourke and Merlino. Meanwhile, Hooke steers the medical technology and China teams with a steady hand while simultaneously acting as co-practice group leader of the engineering team. An essential part of the chemistry outfit, John Landells recently left Melbourne to expand the team in Sydney, while colleague Jeremy Dobbin remains in charge of registered designs.
FPA Patent Attorneys
FPA Patent Attorneys recently bolstered its patent practice with three new hires and two promotions, staying on course for steady growth. The patent prosecution firm boasts a high acceptance rate and stands out for making patent oppositions and re-examination proceedings a central part of its business. Managing partner James Cherry “succeeds in patenting the ‘unpatentable’”, especially in the pharmaceutical and life sciences fields. Karen Bentley is highly sought after for her expertise in Southeast Asian patent management. She specialises in bio and food technology, pharmaceuticals, agriculture and life sciences. Biochemistry researcher and patent attorney Adam Denley’s “intimate knowledge of the IP space” helps clients to establish “world-class patent portfolios”. “His and FPA Patent Attorneys’ patent strategy and IP portfolio management is second to none and executed seamlessly.” Carl Harrap, Daneta Crump and John Dower handle the electronics side. Together, they manage the entire Australia and New Zealand patent portfolio for one of the world’s most recognisable companies. Harrap frequently represents clients in contentious proceedings before the Australian Patent Office. Crump, a former Ford Motor Company test engineer, is an innovation advisory member at the University of Sydney’s Warren Centre. Meanwhile, Dower’s background in electrical, electronic and mechanical engineering makes him popular with foreign associates who do not hesitate to entrust him with the work of their “most important clients”. “Besides being a pleasure to work with, John is thoughtful, creative and responsive.” Chris Bird has spent 25 years accumulating a profound knowledge of physics, electronic and electrical engineering, ICT and medical technology briefs. He also advises clients on IP commercialisation. Stuart Irvine makes his first appearance in the IAM Patent 1000 this year. “He has great skill prosecuting patents through the Australian
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Australia Individuals: transactions Highly recommended Scott Bouvier King & Wood Mallesons Robert B McInnes Rob McInnes IP Advisory Pty Ltd Kristin Stammer Herbert Smith Freehills LLP
Tom Gumley FPA Patent Attorneys Jenni Lightowlers FAL Lawyers Nicole Reid MinterEllison Eddie Scuderi Corrs Chambers Westgarth
Recommended
Amalia Stone Herbert Smith Freehills LLP
Jeff Bergmann Solubility Pty Ltd
Frances Wheelahan Corrs Chambers Westgarth
Chris Bevitt Shelston IP Pty Ltd
Chris Williams Gilbert + Tobin
Catherine Boxhall Integra Law Pty Ltd
Andrew Wiseman Allens
Anita Cade Ashurst Kylie Diwell MinterEllison Peter Francis FAL Lawyers
Patent Office, as well as excellent insight into the differences between US and Australian practice (and the similarities) that might lead to similar or dissimilar outcomes in the two countries. This in turn allows Stu to provide expert advice regarding prosecution strategy.” “Irvine’s knowledge of Australian law, attention to detail and quality of communication are all elite.”
Gilbert + Tobin
Gilbert + Tobin has quickly gained wide recognition for its sound patent practice. “Worth noting for sure,” the side comprises 12 lawyers considered to be “at the top for tech litigation” by their peers. Practice leader John Lee “is an experienced IP lawyer with experience in patent transactions and patent litigation”. He has undoubtedly left his mark on Australian patent law. Through important wins, he has helped to the reshape the way in which damages in patent cases are calculated and contributed to
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a review of the law on patent oppositions. “The G+T team, especially Michael Williams and Chris Williams, are outstanding, positive and brave in their approach.” The star duo recently prevailed in a case representing refurbished inkjet printer cartridge distributor Calidad. Their successful appeal at the High Court of Australia resulted in the acceptance of the doctrine of exhaustion in Australia – overturning a 112-year-old precedent in the process.
Griffith Hack
Specialist IP firm Griffith Hack’s reach covers the entire breadth of Australia. In May 2020 the already substantial IP group welcomed several new members as a result of its integration with Watermark. Equipped with a physics PhD from Cambridge University, former national IP law practice leader Derek Baigent is now putting all his effort into his own technology-focused practice, comprising patent litigation and commercialisation. Head of the engineering and ICT practice David Hughes caters to some of the firm’s most well-known clients, including a leading medical devices company. Janelle Borham expertly handles matters in the life sciences and chemistry fields. She is the go-to person for issues relating to organic and inorganic chemistry. Joining from Watermark, Leanne Oitmaa “really gets her teeth into the details of a case, which is particularly comforting for clients who are concerned to know
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Australia Individuals: litigation Grant Fisher Corrs Chambers Westgarth Sue Gilchrist Herbert Smith Freehills LLP Shaun McVicar Herbert Smith Freehills LLP Matthew Swinn King & Wood Mallesons John F Collins Clayton Utz Robert Cooper MinterEllison David Fixler Corrs Chambers Westgarth Rebekah Gay Herbert Smith Freehills LLP Odette M Gourley Corrs Chambers Westgarth Richard Hamer Allens Kate Hay Corrs Chambers Westgarth Richard Hoad Clayton Utz Shyama Jayaswal MinterEllison
that their lawyer understands their technology field. Leanne is always efficient in her dealings with clients; there is no doubt that anything will get forgotten or lost along the way when dealing with her. She is certainly a very safe pair of hands for her cases, consistently delivering pragmatic and sensible strategic advice.”
Herbert Smith Freehills LLP
“Probably the best firm in Australia in terms of reputation,” Herbert Smith Freehills (HSF) is famous for handling high-stakes, commercially important litigious and transactional matters, placing it at the
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Philip Kerr Quinn Emanuel Urquhart & Sullivan LLP John Lee Gilbert + Tobin Sarah Matheson Allens Wayne McMaster MinterEllison Ben Miller Maddocks Anthony Muratore Jones Day Kim O’Connell King & Wood Mallesons Jane Owen Bird & Bird LLP Ian Pascarl Davies Collison Cave Naomi Pearce Pearce IP Robynne Sanders DLA Piper Patrick Sands Herbert Smith Freehills LLP Kellech Smith Ashurst Stephen Stern Corrs Chambers Westgarth top of both tables. One of “Freehills’ exceptional partners”, Shaun McVicar, is a “highly experienced premier patent litigator” and the global co-head of pharmaceuticals. McVicar acted in the only two pharmaceutical patent disputes to reach the High Court in the past 10 years, achieving successful outcomes for his clients on both occasions. Physics degree holder Patrick Sands is often involved in significant patent infringement and validity cases. With a background in biochemistry and genetic engineering, joint global head of intellectual property and Australian co-head of pharmaceuticals Rebekah Gay’s specialty lies in life sciences. Sue Gilchrist is the
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Australia John Swinson King & Wood Mallesons
Lynne Lewis Bird & Bird LLP
Lisa Taliadoros Jones Day
David Longmuir Phillips Ormonde Fitzpatrick
Nicholas Tyacke DLA Piper
Suzy Madar King & Wood Mallesons
Timothy Atkin Maddocks
Glenn McGowan QC Gadens
Derek Baigent Griffith Hack
Melissa McGrath Coleman Greig Lawyers
Joel Barrett Allens
Simone Mitchell MinterEllison
Wayne M Condon Biopharmalex
Leanne Oitmaa Griffith Hack
Gary Cox Wrays
Chris Schlicht Phillips Ormonde Fitzpatrick
Stuart D’Aloisio Ashurst
Natalie Shoolman Clayton Utz
Paul Dewar Davies Collison Cave
Scott Sloan Dentons
John Fairbairn MinterEllison
Chris Williams Gilbert + Tobin
Nina Fitzgerald Ashurst
Michael Williams Gilbert + Tobin
Jonathan Kelp MinterEllison
Gina Wilson Maddocks
Khajaque Kortian Spruson & Ferguson James Lawrence Mills Oakley
“very senior and well-respected” lawyer representing Motorola in Australian proceedings as part of global litigation against Hytera. Kristin Stammer and Amalia Stone effortlessly deal with multiple commercial and transactional briefs on a daily basis.
James & Wells
The only independent IP firm with offices in both countries, New Zealand’s James & Wells established
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itself in Australia in September 2019 following its acquisition of Innofy IP. Andrew Clarke attracts an impressive clientele; universities, research institutes, start-ups and Australian Securities Exchange-listed companies all turn to him for help with their IP portfolio management. Clarke, who leads the regional biotechnology team, has particular flair in the biomedical and health research sectors.
Jones Day
“Great in the pharma space,” Jones Day’s Australian patent practice excels in contentious and transactional matters. Leading practitioners Anthony Muratore and Lisa Taliadoros are well regarded by peers who would “rate them both highly”. Muratore’s
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Australia more than 35 years of experience instil confidence in clients, including innovators in the pharmaceutical and life sciences space, who rely on him for assistance in disputes relating to blockbuster drugs and CRISPR gene-editing technology. Taliadoros specialises in mining, building and construction-related contentious matters. She has several landmark pharmaceutical decisions on her track record as well.
King & Wood Mallesons
“King & Wood Mallesons consistently provides dependable, high-quality advice and assistance with a strong commercial focus.” The firm is recognised for its solid IP teams in Australia and China – where they are exceptionally well regarded by peers and clients alike. Managing partner of the dispute resolution and tax department Matthew Swinn once again defends his spot in the gold tier for litigation. He frequently litigates complex patent matters for corporations in the life sciences and manufacturing sectors. Kim O’Connell specialises in life sciences and pharmaceutical litigation and possesses considerable experience in cross-border dispute resolution and transactions. Suzy Madar is the go-to name for health products companies looking to enforce their patent rights and defend themselves against infringement and opposition claims. A “very well-known, respectable and capable IP practitioner”, Scott Bouvier is an “all-rounder with broad and varied experience in patent commercialisation and disputes”. Brisbane-based John Swinson “takes a pragmatic, commercial approach to negotiation and is well respected by his peers”. “His background as a licensed New York attorney provides a unique perspective and knowledge base for his provision of advice in relation to intellectual property generally and patent law in the United States specifically.” See p234 for firm profile
Madderns
“Strong in its market,” Madderns claims the title of biggest IP firm in South Australia. With patent experts in the chemistry, electronics, engineering, ICT and life sciences fields, the team is guaranteed to cover the full range of technologies. A specialised China group handles outbound and inbound briefs. Stephen O’Brien is the trusted adviser of South Australia-based businesses looking to grow their patent portfolios.
Maddocks
Maddocks is known for its strong healthcare, technology and media and telecoms practices. “Toprated” patent litigator Ben Miller joined the firm in 2019, bringing with him deep life sciences expertise. Miller recently defended Arrow Pharmaceuticals in a
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case against Novartis relating to the drug fingolimod. Gina Wilson and Timothy Atkin are smart commercial litigators who work tirelessly to achieve the best outcomes for their clients, using innovative methods when required.
MinterEllison
MinterEllison runs a formidable, fully integrated patent attorney and patent law practice. John Fairbairn, Simone Mitchell and Nigel Lokan operate out of the Sydney office. Fairbarn takes care of IP and technology, media and telecoms disputes, while Mitchell and Lokan – both of whom joined the team in 2019 – make a powerful duo, handling pharmaceutical and biopharmaceutical patent litigation with ease. Robert Cooper, Shyama Jayaswal, Kylie Diwell, Nicole Reid and Jonathan Kelp can be found in the Melbourne office. Cooper demonstrates “a great combination of experience, technical skill and cost effectiveness. He has a very good ability to narrow down the fundamental issues at play and advise on them.” A registered trans-Tasman patent attorney, Javaswal’s background is in organic chemistry. Diwell and Reid tackle transactional IP matters for clients including Monash University. Newly ranked Jonathan Kelp acts primarily on behalf of companies in the pharmaceutical sector, although his practice covers a wide range of industries.
Pearce IP
“Pearce IP delivers to clients the same quality as top-tier international law firms, but for a fraction of the price.” The life sciences-focused firm offers something special to both patrons and employees, as its impressive growth spurt over the past year can be partly attributed to a range of talent joining from other ranked firms in this chapter. The “fiercely intelligent” Naomi Pearce “combines a unique skill set of being a science qualified lawyer and patent attorney with extensive in-house experience, allowing her to bring to the fore a very client-focused and practical approach. This experience also gives her an edge, as she understands the entire life cycle of matters, ranging from inception through to marketing and disputes. This is, frankly, gold to clients because they have someone who genuinely understands their commercial needs and has combined it with the skills of a strategic litigator.” “Calm and confident,” Pearce manages to keep a cool head even when the pressure is on. Grant Shoebridge comes across as a “punctual individual and deep thinker who always goes the extra mile to strive for a beneficial outcome. He never misses a deadline and is very easy to work with. An excellent communicator and listener who offers commercially relevant options when
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Australia prosecution issues arise.” Jennifer Enmon is another commendable practitioner whose “knowledge and experience of European, as well as US, patent law is a huge asset, as it provides a very special type of consultancy that can be found with none or very few other attorneys in the field”. Producing work “of the highest possible quality”, Enmon takes great care to “go through every detail of a case until she finds the one tiny detail that may make the difference for her client”. Her people skills and perseverance also deserve recognition; she makes patrons feel “valued, never like a burden that’s just a source of income. She never gives up, even when I had given up all hope, and thanks to her tenacity we had several patents granted in the end after nearly two years.”
prosecution. The team has developed a strong reputation for its Asia practice, especially among businesses with their eyes set on the Chinese market. In recent years the side has been handling the lion’s share of Chinese IP work coming into Australia. Paul Harrison specialises in chemical engineering and physical and process chemistry, while Greg Whitehead effortlessly drafts, prosecutes and defends patents for clients in the field of mechanical engineering. Formerly with MinterEllison, highly esteemed Michael Christie joined the group in May 2020 to take charge of the life sciences practice. On the commercial law side, team captain Chris Bevitt handles transactional matters with aplomb.
Phillips Ormonde Fitzpatrick
Praised for being “a leading IP firm in Australia and Asia able to provide the highest level of advice and service to clients”, it is no wonder that Spruson & Ferguson is the go-to firm for many foreign clients filing in Australia. In fact, it has defended its position as the country’s top filer for five years in a row. A team of nearly 50 patent attorneys tends to the needs of numerous market-leading corporations in diverse industries. Chemical and life sciences leader Simon Potter is a recognised expert on HIV antiretroviral drug resistance, while litigator Khajaque Kortian easily wraps his head around even the most complex of technical issues and commercial contexts.
Phillips Ormonde Fitzpatrick’s focus on client relationships and “track record of providing excellent, thoroughly researched advice on technical issues” have resulted in long-standing cooperation between the firm and many of its patrons. The team, spearheaded by Ross McFarlane, manages the portfolios of an enviable customer base. Huawei is only one of the numerous renowned companies that have made MacFarlane their attorney of choice. Chemistry and life sciences team leader Ray Evans’ “ability to engage with scientists, innovators, industry managers and company owners and his keen eye for critical events and paths of management” make him a valuable asset. Special counsel Mark Williams works alongside Evans on strategic advisory work for the CSIRO, while Saskia Jahn expertly prepares patent specification, engages in multi-jurisdictional patent prosecution and provides patentability and freedomto-operate opinions. David Longmuir’s practice focuses on litigation in the biotech, pharmaceutical and plant breeders’ rights sphere. Longmuir and Chris Schlicht represent Meat & Livestock Australia and Dairy Australia in a case where the full court’s decision will constitute the very first consideration of its power under Section 105(1A), introduced by the Raising the Bar Act. Entering the Australia rankings this year are physics, electrical engineering and computer technologies-focused Matthew Ford and engineering team leader Edwin Patterson. Ford “is extremely invested in the development of his clients’ businesses, providing guidance and assistance that is of great value. He takes personal interest in creating value for the client and is always just a phone call away.”
Shelston IP Pty Ltd
A minority among Australian patent attorney firms, Shelston provides the full gamut of IP services, including IP litigation, commercialisation and
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Spruson & Ferguson
Wrays
2020 was a busy year for Wrays. In May the firm merged with Melbourne-based Smoorenburg Patent and Trade Mark Attorneys, enabling it to accommodate the demands of a quickly growing client base. On the patent portfolio front, Wrays now tends to the entire portfolio of BlueScope Steel and was appointed IP strategy provider for Lion Pty Ltd. A former patent examiner at the Australian Patent Office, chair Gary Cox has been working in intellectual property for over 30 years. Todd Shand balances contentious and non-contentious work in the life sciences sector, while biochemistry PhD holder Linda Kennaugh dazzles onlookers with her knowledge of antibody technologies. Heading the chemical patent group, Peter Caporn focuses on mineral processing and chemical engineering technologies, serving happy clients both domestically and abroad.
Other recommended experts
Commercialisation maven Anthony Alder’s 10 years of in-house experience and background in biotechnology appeal greatly to companies in the medical devices sector. Mechanical engineer Hayden Barke operates out of Argon IP in Melbourne. Before
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Australia founding the one-person firm, he was part of the team at Griffith Hack and Davies Collison Cave. Solubility Pty Ltd’s Jeff Bergmann has dedicated his 25-year career to commercialising intellectual property for a diverse group of rights holders. Specialising in electrical engineering, mechatronics, ICT and software engineering, Michael Buck IP namesake Michael Buck’s “attention to detail gives clients the peace of mind that he isn’t rushing anything. He always asks a lot of questions for each patent application. His temperament is perfect for his role – calm, organised, methodical and a good communicator.” Along with the “truly brilliant people he has on his team”, Buck assures patrons that “no other patent attorney could care as much as Michael, or be as committed as him and his firm. They would spend a lot of time with us, really getting to the core of our technology, taking as much delight in it as the people in our organisation who actually made it.” “Probably the best IP licensing and chain title expert in Australia,” Catherine Boxhall is the principal and director of Integra Law. “She is incredibly detailed and knowledgeable, driving our due diligence process for intellectual property and in many cases fixing issues before we invest.” “Excellent strategist” Wayne Condon litigates patents with a commercial mindset at Biopharmalex. Clients “highly recommend” Michael Cooper of eponymous Cooper IP “to any person or firm for his patent work because of his professionalism and ability to get patents granted”. “He has the ability to understand the intricacies of inventions which helps in the application of patent and to articulate the information so the examiner understands it.” In addition, “Michael is approachable, accessible and straightforward”. “His engineering background means we can communicate easily on technical matters and his ability to simplify complex legal issues means we have a better understanding of what is going on and what we need to do to secure our IP rights.” FAL Lawyers’ Peter Francis and Jenni Lightowlers are authorities on technology commercialisation and establishing research entities, respectively. Formerly with FPA Patent Attorneys, Tom Gumley recently took the plunge and established SweatequityIP. Belinda Hartmann heads the patent practice at LegalVision. The former CSIRO postdoctoral fellow wields a PhD in bioengineering and biotechnology. Having spent 47 years at Allens, the illustrious Philip Kerr is now senior patent counsel at Quinn Emanuel. Mills Oakley’s James Lawrence “provides excellent advice for patent transaction and patent litigation work”. Now a partner at Blackwattle IP, Paul Mahony has “a depth of experience and technical acumen which is unmatched in Australia. He adds to those attributes a combination of deep analytical insight and a strategic
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approach that sets him apart in the field of computerrelated inventions.” Beyond that, Mahony’s “attention to detail is tremendous. He picks up the smallest detail and brings it to the client’s attention without being requested to do so. He also makes himself available at all hours of the day.” “Paul truly has the client’s best interest at heart. He never recommends the simplest option to make things easier for himself.” Chief counsel of the Gadens disputes group, Glenn McGowan stands out for being the only private practice senior counsel ranked in the IAM Patent 1000 Australia chapter. The commercially savvy Melissa McGrath of Coleman Greig’s commercial advice team nurtures “fruitful two-way relationships, where she will notify us, the client, when she comes across interesting issues that we should be aware of”. McGrath is known for being “a very experienced and pragmatic IP lawyer and litigator, very good at engaging with clients and quickly getting to the critical issue”. Her “commitment and initiative” are noteworthy. “She is experienced in disputes, as well as strategic advice and commercial deals.” Licensing master Rob McInnes is another fan favourite who “blends a strong technical capability with many years of licence deal making and a strong appreciation for the application of IP law in many jurisdictions, turning it all into commercially practicable IP licensing advice.” “Great value for money,” the skilled negotiator “can spot a shifting landscape and adjust like no one else can”. Innovators say that “Rob is the right person to have in your corner. I have worked with a lot of lawyers and advisers over the years and can honestly say I have learned more from Rob than any of the others. He is extremely sharp – both legally and commercially – and just a great guy whose company I’ve enjoyed.” As well as being able to “take complex IP matters and simplify them into educational advice”, McInnes “understands that some organisations have multiple stakeholders to appease and tailors his approach accordingly”. Wayne McMaster now operates as a solo practitioner. The former Allens lawyer is the ideal choice for high-level strategic IP advice. Dentons’ Scott Sloan has dedicated 30 years of his life to intellectual property, more specifically patent, trademark and copyright litigation, with an interest in IP commercialisation. Over at Laminar IP, dual-qualified Australia and New Zealand patent attorney Mark Teoh “provides invaluable advice and assistance to businesses relating to the establishment of comprehensive patent and design portfolios in Australia and overseas markets”. Teoh’s personal qualities keep clients coming back for more. “In addition to his vast technical knowledge, Mark is dependable, dedicated and the ultimate professional. He shows a keen interest not only in our inventions
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Australia and technologies, but also in our business.” Going above and beyond expectations, “he is very willing to give up his time free of charge to discuss new developments and his attentiveness to detail and ability to simplify legal terminology is invaluable and clearly highlights his quality of service”. Matthew Ward takes an innovative approach to IP protection at Forward Intellectual Property, having fine-tuned his skills over nearly two decades as a patent attorney and lawyer. The highly respected Kieran Williams moved from Shelston IP to Cotters Patent & Trade Mark Attorneys in May 2020.
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Cambodia
Cambodia gets its own chapter in IAM Patent 1000 for the first time, following several government initiatives to promote innovation. Over the past few years, the country has entered into patent cooperation agreements with Japan, Singapore, Europe, China, South Korea and, most recently, signed a memorandum of understanding with the United States. The Cambodian economy was hit hard by the covid-19 pandemic but is expected to recover and continue its path of growth in 2021.
Abacus IP
Abacus IP was founded by IP professionals David Haskel and Thea Pheng in 2015. The pair have represented clients in all kinds of IP matters, including registration, transactions and the enforcement of patents, trademarks and copyrights. Haskel is a member of the State Bar of California and before arriving in Cambodia, acquired valuable legal experience in Silicon Valley, San Francisco and Berlin. Pheng led a respected prosecution team at one of the country’s leading law firms before starting Abacus IP. He was elected chairman of the Intellectual Property Association of Cambodia in 2019.
Rouse
Firms Recommended Abacus IP Rouse Tilleke & Gibbins
Individuals
Rouse opened its Phnom Penh office four years ago in response to increasing demand. South Korea and Cambodia-educated Sreymom Mao offers on-theground advice. Backed by the Thailand and Vietnam teams and boasting more than 20 years of Cambodian IP experience, she has assisted numerous Japanese, Singaporean, European and North American clients seeking to acquire Cambodian patents and protect their rights. The group is also proficient at technical translation, a highly sought-after skill in the region.
Recommended
Tilleke & Gibbins
Sreymom Mao Rouse Legal
A well-known name in the Association of Southeast Asian Nation region, “capable” Tilleke & Gibbins recently established an on-the-ground presence in Cambodia after years of providing support to clients in the country through its head office in Bangkok. The firm runs an internationally renowned IP practice and is a one-stop shop for regional IP services. Vice president of the Asian Patent Attorney Association’s Cambodia group Sokmean Chea has over a decade of experience handling patent matters and is an active member of the local IP community.
Sokmean Chea Tilleke & Gibbins David Haskel Abacus IP Chhim Leakena SokSiphana&associates
Thea Pheng Abacus IP
Other recommended experts
Leakena Chhim is a senior associate at SokSiphana & Associates, a member of the ZICO Law network, where she focuses exclusively on IP law. For eight years, she has assisted clients on domestic and offshore IP issues ranging from registration to compliance.
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China: Domestic
Significant changes could be afoot in China, which has become the third major patent destination after the United States and EPO. A sharp decline in patent filings during the country’s early-2020 covid-19 lockdown was followed by a major rally in application levels throughout the rest of the year, with China remaining largely unaffected while waves of the pandemic reverberated around the world. Towards the end of the year and in early 2021 it became clear that authorities in China were getting serious about their frequent refrains of “quality over quantity”, when the Chinese National Intellectual Property Administration (CNIPA) launched a big crackdown on “abnormal” patent filings and announced plans to scrap all filing subsidies by 2025. Examples have been made of agencies perceived to be churning out low-quality rights in legally murky circumstances as part of a campaign dubbed “Blue Sky”. All this should be a net positive for the Chinese IP scene in the long run, but the evaporation of financial incentives and greater upfront scrutiny of applications could have an impact on the level of domestic work to go around. Retaining a patent firm with a spotless reputation has never been more important. Luckily, there is no shortage of highly recommended agencies and law firms, making this the longest chapter in the Asia-Pacific section of the IAM Patent 1000.
Advance China IP Law Office
Headquartered in Guangzhou, the “very high calibre” Advance China IP Law Office has grown in the space of two decades into one of the nation’s biggest fullservice IP firms, home to almost 900 IP professionals. The patent team consists of 417 patent attorneys and engineers – more than enough to advise across all of the major tech verticals. Client service is a point of pride for the outfit – “ACIP treat each of our cases as though it is their most important matter” – and communication is a strength. One highly ranked US patent firm praises the team’s English language skills, while a major Japanese manufacturer expresses appreciation that members can communicate with their attorney in fluent Japanese. Shanghai-based Chong He manages ACIP’s international patent department: “His team represents several of our most important clients in China, ensuring that we obtain the best possible patent scope through their excellent interactions with CNIPA.” He has few peers, one of just three practitioners ranked as “highly recommended” in a crowded prosecution market. Wenwen Wang wins plaudits for work on life sciences patent prosecution: “She understands the technology involved and provides good guidance on responding to office actions. Her professionalism is excellent.” ACIP’s litigation capabilities also deserve a mention. The firms sees its broad geographic footprint as an advantage. From its home base in Guangzhou, its lawyers can supervise evidence collection across China’s high-tech manufacturing heartland, a key challenge given absence of discovery procedures in the country. Up in Beijing, a specialised patent invalidation group offers both offensive and defensive solutions for parties embroiled in conflict. Minhui Zeng is one of the firm’s go-to contentious experts.
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Firms: transactions Co-effort Law Firm LLP Fangda Partners King & Wood Mallesons
See p234
LexField Law Offices Zhong Lun Law Firm
Based in Guangzhou, his resume includes earning one of China’s biggest patent damages awards for client Gree a few years ago. ACIP recently inaugurated a new office in Wuhan, a major university town and home of several important private sector R&D campuses. International clients should know that the outfit is the first choice of many top Chinese firms. One of the country’s biggest tech firms comments: “They have been a great help to us in terms of patent prosecution and portfolio management. We periodically rank our patent agencies and ACIP attorneys always score highly.” See p182 for firm profile
AFD China Intellectual Property Law Office
This firm’s Chinese-language name evokes the concepts of faith and trust. AFD China Intellectual Property Law Office founder Xia Zheng certainly enjoys the confidence of key overseas clients. “Her service is timely, comprehensive and adapted to our needs; she can go the extra mile and take charge of
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Country China: Domestic substantial work when needed.” While Zheng is the face of the firm, she has an impressive cohort behind her, consisting of more than 130 patent practitioners and over 50 supporting staff. Prosecution patrons run the gamut from large state-owned enterprises to Nasdaq 100 tech firms from overseas. A clientsupport team based in the Washington, DC area makes interactions with Western partners seamless. AFD also offers one-stop solutions through a sister law firm, BHTD Law, which is well placed to handle any contentious matters. See p184 for firm profile
AN, TIAN, ZHANG & PARTNERS
Firms: litigation Fangda Partners King & Wood Mallesons
See p234
LexField Law Offices CCPIT Patent & Trademark Law Office See p198 China Patent Agent (HK) Ltd
See p204
Lifang & Partners
A compact team by market standards, An, Tian, Zhang & Partners operates as an elite squad of professionals, many of whom are both patent attorneys and qualified lawyers. The combination of prosecution and contentious experience helps clients on both ends – claims are drafted and won based on knowledge about what is most effective at the invalidation and infringement stages, while contentious proceedings can be handled by attorneys who know the prosecution history inside and out. David Tian is a seasoned litigator – big names such as Dell (China) and Daimler AG have trusted him to handle patent infringement disputes with local entities. One foreign associate on the litigation side remarks: “David and his colleague Ruifeng Li work seamlessly as part of my own team; our prompt and clear exchange of information and responsiveness makes them very easy to work with on patent instructions.” See p186 for firm profile
Liu, Shen & Associates
See p258
Wanhuida Intellectual Property
See p310
AnJie Law Firm
Leader Patent & Trademark Firm
See p244
Linda Liu & Partners
See p256
AnJie Law Firm remains a strong choice for patent litigation instructions in China, despite the departure of an IAM Patent 1000-ranked partner last year. “Efficient, invested and careful” is how one loyal client characterises the AnJie approach. The well-respected Qinqhui (Nick) Liu headlines the partnership and commands respect from his long years on the bench, handling over 2,000 IP-related cases over a decade at the Beijing Higher People’s Court. He leads the IP department that hosts 50 professionals across three offices, including 10 at the partner level. Life sciences are a particular specialism for the side, which has recently represented innovative brands such as AstraZeneca AB and Novo Nordisk in invalidation matters. “Liu and his team have a deep understanding of the thinking of judges and examiners, providing innovative approaches to arguments.” See p192 for firm profile
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Zhong Lun Law Firm Advance China IP Law Office
See p182
AnJie Law Firm
See p192
Chang Tsi & Partners
See p202
China Science Patent & Trademark Agent Ltd See p206 Han Kun Law Offices
See p220
Jiaquan IP Law Firm
See p228
Kangxin Partners PC
Lung Tin Intellectual Property Agent Ltd See p260 NTD Intellectual Property Attorneys
See p264
PC & Associates
See p276
Scihead Unitalen Attorneys at Law
See p308
Watson & Band Law Offices
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China: Domestic Country Firms: prosecution
Foridom IP Law Firm
See p216
CCPIT Patent & Trademark Law Office See p198
IP March
See p224
China Patent Agent (HK) Ltd
See p204
Jeekai & Partners
King & Wood Mallesons
See p234
Jiaquan IP Law Firm
See p228
Liu, Shen & Associates
See p258
Leader Patent & Trademark Firm
See p244
Advance China IP Law Office
See p182
LexField Law Offices
AFD China Intellectual Property Law Office See p184 Beijing Sanyou Intellectual Property Agency Ltd See p196 Chang Tsi & Partners
See p202
China Science Patent & Trademark Agent Ltd See p206 Han Kun Law Offices
See p220
Kangxin Partners PC Linda Liu & Partners
See p256
Lung Tin Intellectual Property Agent Ltd See p260 NTD Intellectual Property Attorneys
See p264
Scihead Unitalen Attorneys at Law
See p308
Wanhuida Intellectual Property
See p310
Zhongzi Law Office
See p322
AN, TIAN, ZHANG & PARTNERS
See p186
Beijing East IP Ltd China Sinda Intellectual Property Ltd See p208 Co-effort Law Firm LLP DEQI Intellectual Property Law Corporation See p210
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Lifang & Partners Panawell & Partners LLC
See 270
PatentSino IP Firm
See p272
PC & Associates
See p276
Shanghai Patent & Trademark Law Office LLC Tsingyihua Intellectual Property LLC Watson & Band Law Offices Zhong Lun Law Firm
Beijing East IP Ltd
“Beijing East IP is one of the best patent agencies/ law firms I have worked with over the past few years. Their service quality, quick responsiveness and professionalism all prove this.” High praise from a local patent counsel representing one of the biggest names in tech. Founded by Dr Lulin Gao, China’s first patent office director, Beijing East has been a big presence on China’s IP scene ever since. The “deeply impressive” outfit has extended its reach overseas with offices in London, Tokyo and California. “Their staff not only have good IP skills but also think of IP solutions in terms of clients’ business needs, creating a solid basis for our long-term cooperation.” Big global chipmakers, auto brands and their tier one suppliers are among a varied international client base.
Beijing Sanyou Intellectual Property Agency Ltd
“Beijing Sanyou is special to us because of the professional relationships and trust we have developed with their leadership team.” Partner, patent attorney and qualified lawyer Xiaolin Dang is foremost among Beijing Sanyou practitioners, having handled over 1,000 patent applications and almost 100 invalidation cases over the past 13 years.
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China: Country Domestic Jiancheng Jiang Peksung Intellectual Property Ltd
Individuals: prosecution Highly recommended Chong He Advance China IP Law Office
See p41
David Huang LexField Law Offices
Deshan Li Unitalen Attorneys at Law
See p44
Bonan Lin Zhongzi Law Office Heather Lin NTD Intellectual Property Attorneys
See p46
Recommended
Jifu Liu PatentSino IP Firm
See p48
James P Chen Kangxin Partners PC
Wenhan Liu Linda Liu & Partners
Xiaolin Dang Beijing Sanyou Intellectual Property Agency Ltd See p38
Chuanhong Long CCPIT Patent & Trademark Law Office
Maohua Wang King & Wood Mallesons
Xiaoling Duan Wanhuida Intellectual Property
See p40
Amy Feng Wu Feng & Zhang Yan Huang Lung Tin Intellectual Property Agent Ltd
See p42
Zhihua Huang TDIP & Partners
The 180 patent attorneys that make up the crack prosecution team are tasked with steering critical patent applications through the grant process by both foreign and domestic clients. One recent highlight was an important matter for LG Chem, where Beijing Sanyou representatives secured the revocation of an examiner’s rejection based on deep understanding of the underlying technology. “They provide strategic advice on substantive matters, professional quality correspondence, attention to detail, precision in billing and genuine care for the clients’ best interests,” expounds one foreign associate, adding: “The number of important patent cases our firm has entrusted to Beijing Sanyou has increased significantly.” See p196 for firm profile
CCPIT Patent & Trademark Law Office
Few prosecution shops can go toe-to-toe with CCPIT Patent & Trademark Law Office, a giant in the space. One of the oldest and largest IP service providers in
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Shuang Ma Leader Patent & Trademark Firm Yining Nan Innotrack Shenwen Ni WinGuan Patent and Trademark Attorneys Wei Pan Unitalen Attorneys at Law
See p59
Dong Shao Foridom IP Law Firm Nancy Song Linda Liu & Partners
See p54
China, today the gold-ranked group has an impressive 249 individuals involved in patent practice. The “very responsive and effective” team is best known for its work expertly guiding applications through the CNIPA gauntlet and is also a major contender in Patent Cooperation Treaty (PCT) work. Vice president Chuanhong Long counsels clients from within and without China – a highly-sought-after prosecutor for chemistry-related inventions, he is able to dispense advice on invalidation, enforcement and licensing equally well. Though best known for patent office work, CCPIT’s extensive reservoir of institutional technical knowledge make it a potent force in the litigation space as well – it has won mandates from illustrious overseas brands including Canon,
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China: Domestic Country Daz Wang Insight Intellectual Property Co Ltd
Xiaoguang Yang Zhongzi Law Office
June Wang NTD Intellectual Property Attorneys
See p57
Shaohui Yuan China Patent Agent (HK) Ltd
Wenwen Wang Advance China IP Law Office
See p58
Beibing Gary Zhang China Sinda Intellectual Property Ltd
See p65
Chenyan Wu Chang Tsi & Partners
Jacob Siyue Zhang Lung Tin Intellectual Property Agent Ltd
See p66
Dajian Wu Yuhong Intellectual Property Law Firm
Peter (Baoyu) Zhang Linda Liu & Partners
See p67
Lili Wu Han Kun Law Offices
Wei Zhao China Science Patent & Trademark Agent Ltd See p68
Hua Xiao Watson & Band Law Offices
Mingjie Zheng Co-effort Law Firm LLP
Mike Xue East & Concord Partners
Xia Zheng AFD China Intellectual Property Law Office See p71
Junping Yan Linda Liu & Partners Stephen Yang IP March
which asked the firm to handle its first-ever patent infringement case in China. See p198 for firm profile
Patent Bar Exam. “Chenyan is extremely well versed in both US and Chinese patent laws and procedures, and we have found this unique combination very helpful and insightful in advising our clients with issues in China and working with clients of her firm to protect innovations in the United States.” See p202 for firm profile
Chang Tsi & Partners
China Patent Agent (HK) Ltd
See p62
“Chang Tsi & Partners is a very progressive, forwardthinking firm. It provides excellent service and seeks to build very strong personal relationships with counterparts.” The Beijing-based business has a broad footprint, with offices in Shanghai, Guangzhou, Shenzhen and Hong Kong, and is going from strength to strength with the addition of three new partners and 50 new employees during the year prior to IAM’s research. The outfit shines in terms of diversity: 55% of its partners and 64% of its qualified lawyers are women. Key domestic clients include search giant Baidu, which turns to Chang Tsi & Partners for both contentious and non-contentious briefs. Michael Wu is a key fixture on the litigation team, boasting both patent attorney and legal qualifications. Wu has a gift for seeing through conflicts related to mobile telecoms and software. Headlining the prosecution side is Chenyan Wu, a stalwart of telecoms and semiconductor work who has also passed the US
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China Patent Agent (HK) Ltd is one of the pioneering prosecution megafirms in China, with a steady stream of work on the non-contentious side for its “experienced, knowledgeable, polyglot staff” keeping the firm comfortably at the top. Deputy general manager Shaohui Yuan anchors the filing practice, which comprises 230 patent attorneys. A skilful drafter, he was trained in China and Germany and has a background in auto engineering. CPA is also attracting increased notice in disputes thanks to several talented legal minds and a focus on highprofile tech areas. “Yanfeng Xiong is one of the best patent litigators you can find on Chinese soil.” Xiong has developed a reputation for success in invalidation proceedings and is also representing Siemens in Chinese civil litigation. A parade of significant SEP holders have entrusted patent validity work to CPA professionals, who “stand out from the crowd, coming up with impressive arguments in a short time
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Country China: Domestic frame and giving star performances in oral hearings”. Yuhe Wu is another sterling litigator – he brings a background in biotech to bear on business-critical patent clashes. Pfizer is among the pharmaceutical giants that have enlisted CPA’s help in navigating invalidation actions – a top challenge for innovators due to this jurisdiction’s unique legal requirements. See p204 for firm profile
patent attorney, he has practised before both USPTO and CNIPA patent appeal boards. One overseas associate who recommends the firm observes: “Gary and his peers have a strong practice with Chinese clients including universities and other institutes as well as corporates. They collectively help patent a wide range of technologies in China.” See p208 for firm profile
China Science Patent & Trademark Agent Ltd
Co-effort Law Firm LLP
Long acclaimed for its patent prosecution prowess, this year China Science Patent & Trademark Agent Ltd earns itself some well-deserved recognition for its stellar contentious practice, appearing for the first time among our recommended firms for litigation. Wei Zhao is senior partner, vice president and heads the electronics group. He has particular expertise in one of the hottest technologies on the current patent market, serving as an independent evaluator of the H.265 standard for a well-known patent pool. “Zhao and his team are always diligent and willing to take on very urgent cases with a short time frame to prepare the drafting – and at a high standard despite the quick turnaround.” The patent contingent at CSPTAL is capable of stepping beyond routine office work to deliver strategic portfolio advice. “We have conducted close cooperation with them on a project to cultivate higher-value patents, for which they set up a special team. They provide expert opinions on applications strategies, track our competitors’ output, identify gaps in the patent landscape and provide guidance to R&D personnel.” A fresh addition to the IAM Patent 1000, Bin Ni is one of the attorneys bringing notice to the firm’s contentious practice and is a wizard when it comes to CNIPA invalidation proceedings. “Ni is one of only two Chinese agents who can meet my personal requirements. He has a thorough understanding of technology and great attention to detail. Although he’s in high demand and very busy, I still insist on instructing him to draft my patents because he is very difficult to replace.” See p206 for firm profile
China Sinda Intellectual Property Ltd
Patent prosecution is the core business of China Sinda Intellectual Property Ltd, where a cohort of more than 150 experienced professionals assist applicants with all aspects of the registration process. This privately owned Beijing-based firm is led by Beibing Gary Zhang; recommended here for prosecution, he also has ample personal experience arguing patent cases in court. Zhang can make Chinese patent matters instantly comprehensible to those more familiar with the American system – a US-qualified lawyer and
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Shanghai-based Co-effort Law Firm LLP returns to the IAM Patent 1000 for a second year, confirming its reputation for practice before the CNIPA as well as patent transactional work. It is a full-service operation with over 400 lawyers and seven overseas offices, so a smart choice for those looking for comprehensive legal services. The IP department consists of over 60 professionals. Some of the firm’s more notable achievements have come in the software space, and it shows, with a roster of clients that includes Microsoft, Adobe and Tencent. Mingjie Zheng sits atop the patent department – the former examiner handled many cases for CNIPA’s patent reexamination and invalidation department, making her excellently situated to supply guidance on prosecution and search for electronics and information technology.
DEQI Intellectual Property Law Corporation
DEQI Intellectual Property Law Corporation began life as the patent services arm of a top Chinese government ministry – privatised in 2001, it now serves clients from China and overseas while continuing to enjoy prime real estate just a short walk from the CNIPA headquarters in Beijing’s Haidian district. The roster includes 85 attorneys, and the team is fairly stable with 60% of them having worked at DEQI for more than 10 years. There is also a dedicated search team that can help international associates understand the lay of the land in a Chinese patent environment dominated by domestic-only filings. Wei Zhu directs the international department and is a good first port of call. See p210 for firm profile
Fangda Partners
Litigants who need the best of the best to represent them in Chinese courtrooms call on Fangda Partners first. Some of the world’s most valuable tech companies have relied on the firm’s IP litigators for years and with good reason. The 70 lawyers at Fangda are consistently seen arguing China’s most complex and financially impactful patent and competition cases, all the way up to the Supreme People’s Court. Foremost among them is “the most impressive and
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China: Domestic Country formidable IP litigator in China”, Alexandra (Pu) Yang. Satisfied clients cite Yang’s deep understanding of patent law, the technical issues involved in each case as well as the nuances of various courts’ local practices. “Alex is the strongest patent litigator in the country – her ability and level of expertise in helping clients achieve their business goals is simply unmatched.” Apple has engaged Yang in multiple cases, including a long-running dispute over technology related to the Siri voice assistant in which the Cupertino company has had to defend itself against the highest civil patent damages claim in Chinese history. A mainstay of the Chinese litigation rankings over the years, Gordon Gao’s recent highlights include work for Astellas Pharma Inc against Chinese generics manufacturers in an exemplary case related to patent-drug linkage issues. It will come as little surprise that Fangda lawyers are heavily involved in the FRAND space, which has seen a multitude of globally significant disputes take place in Chinese courts in recent years. Fang Qi and Haining Song have each been involved in highstakes SEP disputes of late.
Individuals: litigation
Foridom IP Law Firm
Jing He GEN Law
“Foridom IP Law Firm’s professional, earnest, diligent and responsible work ethic is deeply impressive.” A medium-sized firm with 30 patent attorneys in the fold, Foridom has attracted a particularly loyal client base among the many innovative tech companies from Shanghai, where the firm is headquartered, and the surrounding environs. “Their service quality, and track record of successful cases for well-known customers were what attracted us to work with them,” one local patron comments. Alibaba Group is among the top-flight businesses that tap the “efficient and pragmatic” Dong Shao for crucial patent prosecution tasks. See p216 for firm profile
Han Kun Law Offices
Clients “feel at ease” when they know the capable team at Han Kun Law Offices is looking after their most important IP rights from conception to grant and standing ready to assist with offensive or defensive litigation needs. “We feel that they are fighting in the same trench as us.” It’s the combination of contentious and non-contentious that drives so much of the Beijing-based outfit’s efficiency. “Their litigation team and prosecution team work together closely, which is good because the two practices complement each other very well.” Communication is a real strong suit. “Whenever I have a question, I just pick up the phone and get practical, helpful answers in no time.” So too is international outlook. “Besides China, they have practical experience in
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Wenping Chen King & Wood Mallesons Hongyi Jiang LexField Law Offices Guanbin Xie Lifang & Partners Alexandra (Pu) Yang Fangda Partners
See p61
Helen Cheng Zhong Lun Law Firm
See p37
Wei Dong PC & Associates
See p39
Gordon Gao Fangda Partners
S Sam Li Wanhuida Intellectual Property
See p45
Fang Liu Leader Patent & Trademark Firm
See p47
Rui Luo Han Kun Law Offices Jun Qiu Liu, Shen & Associates Christopher Shaowei NTD Intellectual Property Attorneys
See p53
Tina Tai King & Wood Mallesons Tiejun Tang Wanhuida Intellectual Property Allen F Tao Liu, Shen & Associates
See p56
Maohua Wang King & Wood Mallesons Yan Wang Han Kun Law Offices
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Country China: Domestic Yuhe Wu China Patent Agent (HK) Ltd
Xu Wen Scihead
Yanfeng Xiong China Patent Agent (HK) Ltd
Guiming (Gary) Wu Kangxin Partners PC
William Yang Panawell & Partners LLC
See p63
Haidong Yu Lifang & Partners Ye Zhao Jingtian & Gongcheng
Michael Wu Chang Tsi & Partners Andy Xiang Twelve Tables Law Firm
See p69
See p60
Jing Xu King & Wood Mallesons
Nongfan Zhu King & Wood Mallesons
Minhui Zeng Advance China IP Law Office
See p64
Sai Chen Linda Liu & Partners
Jacob Siyue Zhang Lung Tin Intellectual Property Agent Ltd
See p66
Bob Jin Twelve Tables Law Firm
See p43
Shuhua Zhang Wanhuida Intellectual Property
Qinghui (Nick) Liu AnJie Law Firm
See p49
Yuanyuan Zhang Lifang & Partners
Shuang Ma Leader Patent & Trademark Firm
Feng (Janet) Zheng Wanhuida Intellectual Property
Jin Mao King & Wood Mallesons
Yunchuan Zhou Saelink Law
Bin Ni China Science Patent & Trademark Agent Ltd See p50 Zhenhua (Ben) Ni King & Wood Mallesons Fang Qi Fangda Partners Haining Song Fangda Partners Jacky Yingqiang Tan Jiaquan IP Law Firm David Tian AN, TIAN, ZHANG & PARTNERS Zhaolin (Johnson) Wang JunHe LLP
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See p55
See p70
the United States, Europe, Japan and Korea, which helps to produce enforceable claim construction and patents that meet disclosure and other requirements in multiple jurisdictions.” The firm offers the full suite of services, with more than 100 IP practitioners spread throughout the capital, Shanghai and Shenzhen. Leading light Lili Wu is a true all-rounder – a sage provider of “whole-process patent portfolio management”, she has also acted in administrative and civil cases leading all the way up to the Supreme People’s Court. Dolby, Disney and Oracle all route key patent applications through Wu’s team. Yan Wang leads the IP litigation department and is licensed to practice in China, New York and Washington DC. He has won mandates from some of the leading companies in the consumer electronics space to help steer business-critical litigation efforts. Rui Luo is another notable name from the disputes team and has emerged as a favourite of foreign multinationals. See p220 for firm profile
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China: Domestic Country IP March
“Strict quality control, good foreign language ability and smooth communication” are just a few qualities that clients prize in prosecution boutique IP March. Leading auto manufacturers from around the world find that the firm’s patent services meet their exacting standards. Stephen Yang steers the ship, captaining a team that has grown to encompass 11 partners and 47 fee earners, 85% of whom are women. The group’s most recent initiative has been the hire of two attorneys at law under the aegis of IP March Law Firm, which will see it able to offer expanded services in the litigation space. See p224 for firm profile
his personal practice focuses on semiconductors, material processing and electronics. Kangxin’s huge output of CNIPA-granted patents is complemented by a heavy docket of PCT work – both incoming and outgoing. The Beijing-based department is also tapped to handle critical invalidation and reexamination work. Guiming (Gary) Wu marries prosecution with litigation nous to the benefit of his Fortune 500 clients. Overseas associates appreciate working with foreign-qualified members of the team: “What makes Kangxin special is its ability to understand the big picture and goals of our clients, which is different form the piecemeal legal advice we often received working with other firms.”
Jeekai & Partners
King & Wood Mallesons
Beijing-based stalwart Jeekai & Partners has a stable of 80 patent attorneys who dispense advice covering all stages of the prosecution process. The team also stands ready to support clients in invalidation and reexamination cases, as well as administrative litigation appeals. Managing partner Robin Zhao has several years’ experience practising IP law in the United States with top private practices and is an ideal point of contact for interested clients.
Jiaquan IP Law Firm
“Strategic counselling at competitive prices” make Jiaquan IP Law Firm a top choice for both domestic and cross-border work. Based in Guangzhou, the full-service IP firm has over 400 individuals engaged on the patent side, helping companies obtain and enforce Chinese patent rights. The team is “knowledgeable, diligent and strives to provide clients with the best possible services”. Foreign associates speak highly of the patent prosecution side, which is equipped with enough experts across different industries that work of any type can be sent over without hesitation. “JIL’s service is special because they make it very easy to do business with them, and we know our cases are in safe hands.” CNIPA procedures and time frames are explained with the utmost clarity. On the litigation side, Jacky Yingqiang Tan has reached favourable outcomes in a string of invalidation disputes while arguing parallel infringement matters before the courts. See p228 for firm profile
Kangxin Partners PC
Kangxin Partners PC “delivers consistent results” year after year. Its prosecution practice ascends to the silver tier of this year’s IAM Patent 1000 on the back of its “unrivalled professional competence, high accuracy and strong communication”. James Chen heads the foreign patent department, and
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King & Wood Mallesons continues its reign atop the Chinese IP legal space – the firm again wears the triple crown, as the only entity in the market given the highest ranking possible across prosecution, litigation and transactions tables. “Their individual ability is strong, but their teamwork is better. They really make use of everyone’s specialties to manage cases.” There is no shortage of spectacular individual talents on board, with eight ranked professionals setting the pace for the China chapter once again. IP department head Maohua Wang does it all, as a prosecutor recommended in the top band and a contentious practitioner with a long string of wins behind him. Tina Tai is another well-respected leader who joined KWM two years back, bringing with her a stellar track record as the principal representative of numerous innovative pharmaceutical companies in milestone cases. “She develops innovative litigation strategies and implements them effectively, leveraging her subject-matter expertise and familiarity with case law and patent practice.” Tai’s arrival bolstered a life sciences squad that was already a national champion. One of the cornerstones of pharmaceutical expertise within KWM is Wenping Chen, who has helped innovators including Gilead Sciences, Merck Sharp & Dohme and Bayer fend off threats to the validity of blockbuster rights. Patrons value the international perspective that Nongfan Zhu brings to cross-border deals and disputes, with his experience spanning both the United States and China, in both in-house and external roles. A former patent office examiner who adjudicated validity disputes over Chinese patents, Jin Mao has gone on to represent clients in contentious disputes nationally recognised for their influential nature. Rounding out the stacked litigation department are two lawyers who have taken on major SEP work: Jing Xu is an IP all-rounder who has helped foreign companies navigate wireless disputes and antitrust FRAND matters; Zhenhua (Ben) Ni has
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Country China: Domestic won mandates from major rights holders drawing on competition law knowledge to help design licensing programmes for the China market. See p234 for firm profile
Leader Patent & Trademark Firm
Over the course of two decades, Leader Patent & Trademark Law Firm has grown to become a reliable partner for foreign clients in the Chinese IP space. A crew of over 300 specialists is capable of handling applications in any common technology domain and has amassed a success rate in securing grants that is well above average, with an examination period that is well below it. Founder Fang Liu is a “very well reputed practitioner” who has acted for the likes of Huawei, Sony, Qualcomm and Siemens during her career. “It’s never a surprise to see Leader on the other side of an important patent invalidation argument,” colleagues in China remark. Market chatter also reports that Shuang Ma is “handling quite a few cases” at CNIPA’s Patent Reexamination and Invalidation Department. See p244 for firm profile
LexField Law Offices
With a track record that speaks for itself, LexField Law Offices remains perched comfortably at the apex of the table for patent litigation in China. Blue-chip foreign tech names regularly assign makeor-break Chinese patent cases to a side that makes its living tackling the most technically complex and commercially sensitive disputes that the market has to offer. Managing partner Hongyi Jiang knows just how to play it in front of Chinese judges. Qualcomm’s counsel of choice in its major clash in China with Apple, Jiang more recently represented sovereign patent fund France Brevets, Chemical giant Solvay and a host of industrial companies from Japan. LexField takes particular pride in taking cases the distance and can point to numerous Supreme People’s Court reversals of provincial higher courts it has earned for clients – among the toughest feats in Chinese law. Prosecution whizz David Huang is winning big-name mandates to the non-contentious side of the business. One of only three individuals highly recommended in China, he is often called in to take charge of stalled applications that are considered business-critical, scrutinising an examiner’s analysis and finding creative ways to overcome objections.
Lifang & Partners
Offering one of the most complete all-around patent offerings in China, Lifang & Partners excels by combining legal and technology chops and facilitating knowledge sharing between its contentious and
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non-contentious teams. Clients such as Samsung and Qihoo 360 take advantage by instructing the firm for both prosecution and litigation matters. Some of China’s most innovative businesses – Tencent, BOE and Megvii – outsource patent drafting and filing to Lifang & Partners. “They not only prosecute our patents, but also provide us with in-depth patent early warning analysis services, helping us gauge risks and prepare legal strategies.” Managing partner Guanbin Xie matches wits with the very best litigators in the country and has racked up an impressive record in closely watched cases. The gold-tier counsel recently represented Xiaomi on both the plaintiff’s and defendant’s side and has a loyal client in Samsung, which he has aided against NPE assertions. “Sincere and trustworthy” Haidong Yu wins high praise from courtroom clients. “He is good at getting an overview of the situation and predicting the actions of opponents. He uses extremely skilful litigation strategies to counteract opponents’ actions and gain the upper hand, all while minimising the commercial impact of litigation.” Yuanyuan Zhang is an authority on all things semiconductor and microelectronics who is no stranger to invalidity tussles, having chaired panels hearing blockbuster disputes as a CNIPA lead examiner.
Linda Liu & Partners
An ever-reliable choice for prosecution matters, Linda Liu & Partners is growing its footprint on both sides of the contentious/non-contentious divide. Japan Inc has long flocked to the Beijing partnership to assure sanctuary for its most important inventions at the CNIPA, but the firm’s following spans the globe. “All the partners work to a high standard and are worthy of recommendation – they are incredibly responsive, provide top-tier service and advice, and come in at an eminently reasonable price point.” Tsinghua University PhD Junping Yan is a dab hand when it comes to materials science and inorganic chemistry, relishing the most complicated briefs. Many US-based associates will know Nancy Song best, and they do not hesitate to sing her praises: “One of the reasons why her services are so special is that she understands the needs and objectives of US companies, and achieves those objectives through CNIPA prosecution where other Chinese law firms have tried and been found wanting.” Another favourite of the international crowd is Peter (Baoyu) Zhang, a US-qualified attorney who is equally comfortable getting stuck into a patent application and drafting an opinion for upcoming litigation. Turning his trained eye to all manner of biotech patent work, Wenhan Liu draws on subject-matter expertise and CNIPA experience to spell out how foreign companies can get better grants.
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China: Domestic Country Litigator Sai Chen acquits herself with distinction in contentious disputes, which recently include a pair of big wins in design cases. Women, including founder Linda Liu, hold up more than half the sky at the firm, where they account for 60% of partners. See p256 for firm profile
Liu, Shen & Associates
Liu, Shen & Associates is one of the true giants of CNIPA patent prosecution work, long having been the first port of call for foreign filers seeking safe sanctuary for their rights in China. It has grown into a colossus of the PCT system as well, joining the select club of firms responsible for more than 1,000 filings through the global patent system in 2020. On the litigation side, Liu, Shen is the home base for “skilled and zealous advocates” such as Allen Tao and Jun Qiu. See p258 for firm profile
Lung Tin Intellectual Property Agent Ltd
A “trusted partner for prosecution work”, Lung Tin Intellectual Property Agent Ltd is one of the legacy firms that has represented the interests of foreign filers in China since the inauguration of its young patent system. Now, it is just as adept at shepherding the applications from China’s own innovative upstarts. LG Electronics, BOE, Oppo and Xiaomi are among the patent filers supported by 438 total staff and 180 attorneys. Yan Huang is a tremendous asset to inventors in the mechanical fields, a seasoned veteran at procuring grants: “Her commitment to the company has been great.” Taking his first bow in the IAM Patent 1000 is Jacob Siyue Zhang, a “serious, meticulous, diligent and tireless” practitioner who excels at every stage from application to validity challenge to litigation. “Companies and practitioners in the United States tend to be very results-focused, and are not always equipped to deal with the cultural nuances of enforcing intellectual property in China. Jacob recognises this and provides realistic deliverables at the outset while staying within the confines of our clients’ budgets.” See p260 for firm profile
NTD Intellectual Property Attorneys
“I am always confident that NTD Intellectual Property Attorneys can assemble a professional team with indepth knowledge in a given legal or technical field,” says one long-time collaborator. The Beijing-based outfit provides a one-stop service for rights holders via a team whose low rate of turnover means that patrons know and trust their attorneys. Strong ties with its customers has enabled NTD to grow its base of operations with a new office in Beijing and the addition of over 30 professionals bringing its total
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complement of patent attorneys to 158. Global leaders in chips and computers highlight the list of applicants instructing NTD for CNIPA prosecution work. Senior partner June Wang has spent years earning the support of Big Tech names with her encyclopaedic knowledge of SEPs (both wireless and multimediarelated), semiconductors and software. Senior partner Heather Lin is a safe pair of hands for all aspects of biotech patent protection. On the contentious side, chemicals, materials and pharmaceutical companies rely on the courtroom instincts of NTD’s astute litigators. Christopher Shaowei is a multi-decades veteran of People’s Court practice and headlines a team of more than 50 lawyers. “NTD successfully represented our company in many IP disputes. For example, they overturned a patent invalidation decision unfavourable to us at the Beijing High Court and achieved many other successes in defending our patents before CNIPA. They also assisted us in a patent infringement dispute negotiation with a well-known state-owned company to get a satisfactory outcome.” “Indispensable” colleagues Jonathan Miao and Fei Kou continue to win rave reviews for their “strong business acumen and sophisticated legal skills”. See p264 for firm profile
Panawell & Partners LLC
Panawell & Partners LLC is comfortable counselling on the full spectrum of IP matters, but its facility with securing Chinese patent grants is once again what lands it a spot in the IAM Patent 1000. From both head outpost in Beijing and its outpost in Chengdu, the capital of Sichuan province, dozens of patent attorneys work tirelessly to craft watertight patent applications to the satisfaction of local and overseas inventors. Partner William Yang allows the firm to fly its flag on the litigation tables of this year’s guide too. The backbone of the contentious practice, his US legal training has made him an attractive partner for rights holders including Airbus Operations GmbH and Kimberly-Clark. See p270 for firm profile
PatentSino IP Firm
PatentSino IP Firm is a relative newcomer to the Chinese prosecution space, having opened its doors back in 2012, but patent filers who have thrown in their lot with the Beijing-based service provider give it top marks. “They are highly professional, fast and their cost efficiency is excellent.” The firm is making its biopharma team a strategic priority – it has more than doubled from 15 to 35 professionals, while management says that it is keen to focus on this field because companies focus on quality much more than quantity, playing to PatentSino’s strengths.
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China: Country Domestic Firm president Jifu Liu rolls up his sleeves to tackle important prosecution and transactional tasks in cases where he can leverage his extensive knowledge of materials and chemical science. “We entrust Jifu Liu and his team with matters from our firm’s most important clients and value their superior quality in handling cases.” See p272 for firm profile
PC & Associates
A firm whose star is rising in the Chinese litigation market, PC & Associates offers the full gamut of IP services. It is helping to facilitate the international expansion of all-star drone maker DJI by drafting and filing PCT applications, for which it has received recognition from the client for outstanding work. The side is also reputation as a good firm to know for foreign Big Tech firms targeted by NPE activity in China, having supported Sony in both invalidation procedures and infringement litigation involving a patent assertion entity. Its growing profile in Chinese courtrooms can be chalked up to “outstanding” partner Wei Dong, a sage litigator who is meticulous in his pursuit of the best possible outcomes. Another top Chinese advocate remarks: “I have known Wei Dong for two decades and he has earned my respect fully.” See p276 for firm profile
Scihead
Guangzhou powerhouse Scihead boasts numbers that speak for themselves, being one of only four firms in the world to file more than 2,000 PCT applications during 2020. But associates attest that the southern colossus is about much more than just quantity, which is why it is one of just two members of that 2,000 filings club to merit a firm ranking in the IAM Patent 1000. A steadfast relationship with Shenzhen-based Huawei Technologies, China’s top patentee both at home and abroad, is part of the reason for its success. Founder Xu Wen carries the banner for the firm and commands respect for his long legal track record.
Shanghai Patent & Trademark Law Office LLC Operating from China’s beating commercial heart, Shanghai Patent & Trademark Law Office LLC is one of the oldest and most well-established patent firms outside of the nation’s capital. A staff of 300 is composed mainly of 200 patent and trademark attorneys and lawyers. Invention experts are assembled into three teams: electronics and physics, chemical and biopharma, and mechanical engineering. Life sciences maven Zheng Fan is a key name for the address book.
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Tsingyihua Intellectual Property LLC
Tsingyihua Intellectual Property LLC began as the patent office of Tsinghua University, China’s most prestigious institution of higher learning, so it is well equipped to work with researchers and inventors from an academic background. Its prosecution output is prodigious, as one of China’s top 10 PCT representatives. The group maintains five branches outside of its Beijing home office, including one in tech capital Shenzhen. Chairman Hecheng (Terry) Song is the face of the firm.
Unitalen Attorneys at Law
More than 200 patent attorneys join forces to make Unitalen one of the single biggest sources of Chinese patent applications. The firm churns out grants in every significant technical area, with part of its secret being a network of branches that are able to service local clients from all over the country. “Their processes are finely tuned and always timely, with communication that is second-to-none.” One local practitioner observes that Unitalen has “expanded greatly in China and also become very much an international firm.” A well-populated legal department enables the group to handle dozens of civil litigation cases simultaneously, on top of its heavy administrative docket. Vice president Deshan Li is a superb advisor on patent strategy in the round and a thought leader respected throughout the industry. Wei Pan adroitly handles both incoming and outgoing work related to Europe: automobiles, aircraft, appliances and other mechanical apparatuses are his bread and butter. See p308 for firm profile
Wanhuida Intellectual Property
Operating through both an IP agency and a law firm, Wanhuida Intellectual Property runs a one-stop shop for rights holders of all stripes. The Beijingbased business has been investing in the tech side of its practice and winning plaudits from clients. Wanhuida’s double-gold ranking in our sister guide the WTR Trademark 1000 is evidenced by the high-calibre consumer goods companies that turn to it for both invention patent and design patent matters, including adidas AG, SEB SA and L’Oreal. But the patent practice led by Sam Li is also more than fit to contest disputes in the most complex of high-tech areas, including wireless SEPs. With 10 years of experience as a CNIPA examiner, Tiejun Tang steps up to the plate in tricky biotech litigation. The “trusted” Shuhua Zhang “is a go-to for the cases that matter most in business terms”, with a successful record stretching all the way to the Supreme People’s Court. Feng (Janet) Zheng “does an amazing job” in the courtroom.
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China: Domestic Country “She is very sharp in defining and implementing a strategy and always delivers tailor-made solutions.” Xiaoling Duan coordinates filing programmes to the great satisfaction of applicants. “We receive very quick responses that are always highly professional and well-founded, even when it comes to complex and strategic IP issues. If there are urgent topics that require more capacity, Wanhuida always provided a competent team to handle them.” Clients love the firm’s fair and transparent cost scheme. See p310 for firm profile
Watson & Band Law Offices
“Watson & Band Law Offices offers proficient IP support through fantastic attorneys and seamless teamwork. In tough cases, they deploy a crack team to ensure a positive outcome.” The Shanghai-based fullservice corporate outfit counts intellectual property as one of its top practices. Its internal patent filing numbers clearly demonstrate that demand for its prosecution services are growing at a healthy clip with the addition of several big clients from the United States. The disputes team has recently seen action in contentious matters for Japanese corporates Seiko and Asahi Kasei. Hua Xiao is the general manager and has a mastery of computer-related technologies.
Zhong Lun Law Firm
Zhong Lun Law Firm is one of only two domestic firms in China recommended by the IAM Patent 1000 in all three areas: prosecution, litigation and transactions. This breadth of practice is no surprise given that it is one of China’s largest full-service commercial law groups. Eighteen IP partners and over 100 fee earners cater to the likes of Tencent, Microsoft China and BMW. Besides being a decorated courtroom veteran, Shanghai-based Helen Cheng is one of the first names that comes to mind when multinationals need to structure strategic cross-border IP and technology deals.
Zhongzi Law Office
One of Zhongzi Law Office’s principal strengths is its capability across all facets of patent law. On the prosecution side in particular, it is replete with talented practitioners who have experience to spare getting applications across the finish line at the CNIPA. Revered managing partner Bonan Lin has been in practice since 1982, meaning he has been on the scene for as long as China’s patent law has been in force. Xiaoguang Yang has practised for nearly as long and is still diving deep on matters involving electronics, computers and communications. See p322 for firm profile
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Other recommended experts
Over at Wu Feng & Zhang, name partner Amy Feng makes a terrific choice for the prosecution of biotechrelated patents. Jing He has set up shop with GEN Law after departing Anjie Law Firm last year. “His connections to well-known professors and subject matter experts that can act as expert witnesses is a great value. He is very easy to communicate with and get along with, and his legal and technical analysis has been spot-on from our perspective.” Zhihua Huang runs TDIP & Partners and helps CNIPA applicants find the end zone in computer, electronics and communications cases. Jiancheng Jiang founded Peksung Intellectual Property Ltd back in 2003 and over the years has been engaged by the likes of Bayer, BASF and Allergan to marshal inventions through the CNIPA application process. Bob Jin and Andy Xiang headline at Twelve Tables Law Firm, an IP boutique with nine individuals on the patent side, including a trio of recently added litigators with CNIPA examiner experience. They are kept busy representing some of China’s biggest tech companies in big competitor disputes. IAM Patent 1000 debutante Yining Nan is a founding partner at Innotrack. “We have been working with Yining for many years now. This personal relationship is critical to our workflow and reinforces our own brand promise to our clients that we only entrust our foreign work to those firms with excellent service. They are always available at a moment’s notice, their work product is substantively superior to that of other firms, and their rates are very competitive.” More praise for Innotrack: “a firm that not only has an exceptional grasp of Chinese patent law but also a deep understanding of local laws and procedures in the United States and Europe. This elevates their comments and advice. Grasp of the technology is sometimes an issue with their competitors in the Chinese market, but never with Innotrack.” Over at WinGuan Patent and Trademark Attorneys, Shenwen Ni wins one patent after another for overseas associates: “His profound knowledge and reliability have helped us and our clients obtain a considerable number of rights, and we are looking forward to further years of cooperation.” Clients of the Guangzhou-based outfit are “very impressed by their knowledge of the technology and their English skills, which are superior to many others we have tried in the market”. Prosecution ace Daz Wang plies his trade at Insight Intellectual Property Co Ltd, a boutique he set up back in 2002. The pharmaceutical specialist can converse fluently with German-speaking patrons. At JunHe LLP, a large full-service firm that is part of the Lex Mundi and Multilaw networks, Zhaolin (Johnson) Wang carries the IP torch with his tenacious advocacy in patent litigation disputes. New Patent 1000 member
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Country China: Domestic Dajian Wu is a “pioneer” among Chinese patent attorneys who earns top marks for translations as well as prosecution under the aegis of Yuhong Intellectual Property Law Firm, which the former China Patent Agent (HK) president established in 2010. “I rely on Mike Xue and accept no alternatives.” The “first-class” East & Concord Partners patent attorney boasts “perfect language skills” in Japanese, English and Chinese, commanding fierce loyalty from overseas associates who universally consider him “the best Chinese business partner”. Xue “is a very intelligent person and quickly understands issues whether legal or technical, which enables him to make convincing arguments both in the court and the patent office.” “It’s simple: he is the most reliable among all of the Chinese lawyers I’ve worked with over many years. He provides excellent and detailed advice, he is diligent, punctual, customer-first and, above all, honest. He can say ‘no’ when he believes the answer is ‘no’, a quality that is essential for a lawyer.” Xue is also reported to have a stellar badminton game. Jingtian & Gongcheng litigator Ye Zhao earned big notch on his belt this year, securing China’s first-ever patent anti-suit injunction from the Supreme People’s Court on behalf of Huawei – a decision that continues to reverberate globally. Before entering private practice, Yunchuan Zhou was a judge who had heard IP cases for 14 years, ultimately serving on the Supreme People’s Court. Before joining Saelink Law he was of counsel at Jones Day. His experience gives him enviable perspective on navigating contentious patent disputes in China.
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Cheng, Helen Partner – Zhong Lun Law Firm helencheng@zhonglun.com | www.zhonglun.com
Helen Cheng is a partner in the Shanghai office of Zhong Lun Law Firm. She holds a master’s in science and an LLM from Stanford Law School. In addition to her New York Bar licence, Ms Cheng is admitted to both the Chinese Bar and the Chinese Patent Bar. Ms Cheng has practised Chinese IP law since 2000. Her practice encompasses all aspects of intellectual property, including trade secret and know-how protection, patent and trademark prosecution, licensing and technology transfers, IP due diligence and dispute resolution in a variety of industries. She has 20 years of first-hand Chinese litigation experience and has represented a number of influential and highprofile IP litigation cases in China. She also has extensive experience in assisting multinational companies in structuring and negotiating cross-border IP and technology-related transactions, such as licensing, strategic alliances and joint ventures. She regularly provides IP consultation to multinational companies on acquiring technology and developing IP strategies for R&D activities in China, including advising on IP policies for R&D-related activities, strategies for trade secret protection and IP enforcement strategies in China. Ms Cheng was recognised by Chambers and Partners as an Outstanding Young Partner (2014), a Leading Lawyer for IP Litigation (2014-2021) and a Leading Lawyer for Healthcare (2015-2021). She was also named among the Top 15 IP Lawyers in China (2016) by Asian Legal Business. Chambers and Partners states that she has “deep professional knowledge and very solid methodology”. She is praised by clients for “her business acumen as well as her communication skills and strategic approach” and “her understanding as well as quick and accurate grasp of key points, [which] helped her clients achieve their goals”. Ms Cheng is an adjunct professor at the East China University of Political Science and Law and the Koguan School of Law, Shanghai Jiao Tong University. She has published numerous articles on IP protection in a number of influential periodicals and magazines.
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Zhong Lun Law Firm 6/10/11/16/17F Two IFC 8 Century Avenue Pudong New Area Shanghai 200120 China T +86 21 6061 3058 F +86 21 6061 3555 Professional associations • ACLA • AIPPI • INTA
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Dang, Xiaolin Partner – Beijing Sanyou Intellectual Property Agency Ltd dangxiaolin@sanyouip.com | www.sanyouip.com
Xiaolin Dang is managing partner of Beijing Sanyou Intellectual Property Agency Ltd and a leading IP attorney in China, having received numerous awards from China’s National Intellectual Property Administration and the All-China Patent Agents Association (ACPAA), including receiving titles such as “Leading Role in IP Field” and “Highlevel Talent in Patent Agency Industry”. Mr Dang graduated from Peking University and studied at Kent Law School in Chicago, receiving an LLM in IP law. He is very experienced in IP litigation and prosecution. His practice specialties include drafting of patent documents, application, office action response, invalidation, re-examination, infringement litigation, patent search and legal consultation in the field of mechanical engineering and related fields. He has rich experience in patent-related legal services, especially patent litigation and licensing. Over the past 13 years, Mr Dang has handled over 1,000 patent applications, almost 100 patent invalidation cases and tens of patent litigation cases. He has won many important cases for clients in the court room. Mr Dang is vice president of the ACPAA and a committee member of its Litigation Committee. He is also listed in the first group of High-level Talents in the Patent Agency Industry (litigation area), in the first group of Leading Talents of China.
Beijing Sanyou Intellectual Property Agency Ltd 16th Floor Block A Corporate Square 35 Jinrong Street Beijing 100033 China T +86 10 8809 1921 See firm profile p196
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Dong, Wei Managing Partner – PC & Associates dongwei@pcassociates.cn | www.pcassociates.cn
Since 1991 Dong Wei has represented a number of the world’s most recognisable entities and acted in front of more than 30 Chinese courts, including the Supreme People’s Court (SPC). He has handled over 350 complex civil actions involving intellectual property of all types, as well as over 800 patent invalidation cases and more than 4,000 patent prosecution cases. Mr Dong has extensive experience in resolving IP disputes, particularly those in high-tech fields such as semiconductor, computer science and biotech. Mr Dong has an exceptional track record of handling milestone cases, with several Chinese courts selecting as groundbreaking patent infringement cases that Mr Dong handled. Thus, eight patent infringement dispute suits and administrative cases represented by Mr Dong and his team have been listed as Annual Model Cases on Judicial Protection of Intellectual Property Rights in Chinese Courts by the SPC. In particular, the new concept of ‘usage condition feature’ established in Shimano v Sunrun (2012) was included in the SPC Judicial Interpretation as a principle in patent infringement lawsuits, with deep and broad influence. Mr Dong also obtained the first preliminary injunctive order for foreign-related patent infringement at the Ningbo Intermediate People’s Court in 2004. Mr Dong was received numerous awards and accolades, including: • IAM Asia IP Experts in China, for several years; • 2021 IAM Global Leaders; • 2020 SMD Country Index Gold Partner; • 2021 IAM 1000 Litigation – Individual (Silver); • Capital Intellectual Property Services Association’s Leading Talents in IP Services in Beijing; and • All China Patent Attorneys Association’s (ACPAA) Beijing Outstanding Patent Attorney 2017-2018. Mr Dong was elected as an ACPAA council member at the association’s ninth member conference. In 2016 Mr Dong was invited to join the Expert Advisory Committee of the Supreme People’s Court Intellectual Property Case Guidance Research (Beijing) Base.
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PC & Associates Ninth Floor Scitech Tower 22 Jianguomenwai Avenue Beijing 100022 China T +86 10 6559 4091 F +86 10 6559 4092 See firm profile p276 Professional associations • AIPPI • INTA • LES Sample client list • Amazon • BYD • CIMC • DJI • Essilor • Mindary • Nvidia • Shimano • SMIC • SONY • Supor • Valeo
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Duan, Xiaoling Partner – Wanhuida Intellectual Property duanxiaoling@wanhuida.com | www.wanhuida.com
Duan Xiaoling is a partner at Wanhuida Intellectual Property and one of the most experienced patent attorneys in the firm’s patent team. Her practice focuses on chemicals, chemical engineering, pharmaceuticals, materials science and the food industry. Ms Duan has been practising in the patent field for 30 years. Before joining Wanhuida in 2012, she worked for 12 years at the State Intellectual Property Office (the predecessor of the China National Intellectual Property Administration – CNIPA), where she served as a senior patent examiner and deputy director of an examination division from 1988 to 2000. She later joined private practice as a patent attorney, leading the chemical and bio department of China Patent Agent (HK) Ltd for over 10 years. Ms Duan is well recognised by peers and clients for her expertise and abundant experience in the patent field, including patent filing and prosecution, re-examination, invalidation and litigation. She has been instrumental in reaching successful outcomes in high-calibre cases and has led the firm’s patent team in obtaining many favourable decisions for clients. She remains active in contributing to China’s legislative developments and frequently provides pertinent advice on these topics. She excels in advising clients, both at home and abroad, on patent strategies and in providing comprehensive solutions to complicated cases. Ms Duan is listed as one of the “National Intellectual Property Leading Individuals” by the CNIPA. She has also received accolades from various legal media, including “Notable Practitioner” for intellectual property in China by Asialaw Profiles (2016-2021), “Recommended Individual” in the prosecution field by IAM Patent 1000 (2018-2021) and “Recommended IP Lawyer” by The Legal 500 (2015). Ms Duan is a member of the council of the Chinese National Group of the International Association for the Protection of Intellectual Property (AIPPI). She is also a member of the AIPPI IP Office Practice Committee and the AIPPI Membership Committee.
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Wanhuida Intellectual Property Yiyuan Office Building Friendship Hotel 1 Zhongguancun Street South Haidian District Beijing 100873 China T +86 10 6892 1000 F +86 10 6894 8030 See firm profile p310 Professional associations • ACPAA • AIPPI
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He, Chong Partner – Advance China IP Law Office hc@aciplaw.com | www.aciplaw.com
Chong He is a partner managing the international patent department of Advance China IP Law Office (ACIP), which he joined in 2005. Before starting his IP career, Mr He worked in a foreign high-tech company as an engineer. This gives him a good understanding of the working process of foreign companies. With rich experience in patent prosecution and counselling relating to international patent drafting, infringement analysis, freedom-to-operate investigations, invalidations and patent strategy, Mr He has helped clients to successfully obtain patent rights and win patent re-examinations and invalidations, especially in the field of engineering and electronics. Mr He has extensive experience in patent prosecution in China, the United States, Europe, Japan, Korea and other countries, which enables him to help his clients manage their global patent portfolio more effectively. In addition to prosecution, Mr He’s practice also extends to patent enforcement for international clients. He has participated in many enforcement cases together with ACIP’s enforcement department and helped international clients successfully combat the infringement and counterfeiting of patents and trademarks. Mr He has been recommended in the individual rankings for patent prosecution in the IAM Patent 1000 2019 to 2021, and was elected as a council member of the All-China Patent Attorneys Association in 2020.
Advance China IP Law Office Rm 2304-06 Yongda Int’l Tower No 2277 Longyang Rd Pudong District Shanghai 201204 China T +86 20 8732 3188 EXT 805 F +86 20 8732 0273 See firm profile p182 Professional associations • ACPAA • AIPPI • INTA
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Huang, Yan Partner – Lung Tin Intellectual Property Agent Ltd huangyan@lungtin.com | www.lungtin.com
Yan Huang has expertise in patent drafting, patent prosecution, patent re-examination, patent invalidity, patent litigation, patent due diligence, freedom-to-operate investigation, patent layout and patent analysis. She has handled a large number of cases for domestic and foreign clients. She is very experienced in patent legal services in the fields of mechanical engineering and mechanical automation such as home appliances, engineering mechanics, automation manufacture, semiconductors, printing facilities, paper apparatuses, medical devices, computer equipment, and so forth. Ms Huang joined Lung Tin in February 2002 and has participated in many important and complex cases. Ms Huang has been licensed to practise as a Chinese patent attorney since 2007 and was appointed as a patent litigation attorney by the Supreme People’s Court in 2013. Ms Huang was appointed as a Zhongguancun IP service expert on foreign affairs in April 2018 and as an expert of the Beijing Intellectual Property Expert Database in January 2020. Publications/presentations • “Getting Ahead (Explain the Latest Developments in Chinese Design Patent Prosecution and Enforcement and Offer Some Practical Tips)”, 2011, Managing Intellectual Property—China IP Focus • “Chinese Practice on Design Freedom Degree/Design Room for Design Patents”, 2014, Intellectual Property Publishing House, Attorney’s Perspectives on IP Practice (1) • “Strong Design Patents in China-Power of Similar Designs”, 2016.11, No 117, China Intellectual Property • “GUI Becomes Patentable Subject Matter of Design in China”, 2018, Intellectual Property Publishing House, Attorney’s Perspectives on IP Practice (3) • “Discussion about Grace Period of Novelty under China’s Patent Protection System”, 2019.10, No 152, China Intellectual Property • “Protecting and Enforcing Design Rights: China”, 2019.11, World Trademark Review, Designs: A Global Guide 2020
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Lung Tin Intellectual Property Agent Ltd 18th Floor Tower B Grand Place 5 Huizhong Road Chaoyang District Beijing 100101 China T +86 10 8489 1188 F +86 10 8489 1189 See firm profile p260 Professional associations • ACPAA Sample client list • Ferrari • Gambro • Grundfos • Halliburton • JCB • LG • Metso • Southco • Valmet • Wonderland • Xiaomi
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Jin, Bob Founding Partner – Twelve Tables Law Firm bob.jin@ttllawfirm.com | www.ttllawfirm.com
Bob Jin has rich trial experience in patent litigation. His background in physics, combined with over 10 years of patent litigation experience and many years of patent prosecution experience, means that he is skilled at handling patent cases that involve high-technology elements. Mr Jin has handled over 100 complex patent litigation cases, as well as patent invalidation cases, for clients comprising multinational technical giants and unicorn companies. From 2017 to 2019, he represented Qualcomm against Apple in several patent infringement cases before multiple Chinese courts; among them, one second-instance case was listed among the annual top cases of the Supreme People’s Court in 2018. In 2012 he won a retrial patent infringement case before the Supreme Court that was listed in the “2013 annual IP Report of the Supreme Court”. The decision’s rationale was later codified as one article of the Judicial Interpretation on Several Issues Concerning the Application of Law on Patent Infringement (II) issued by the Supreme Court. Mr Jin has previously practised at King & Wood Mallesons and LexField. In early 2019 he co-founded Twelve Tables Law Firm with other partners specialising in patent, trademark and antitrust litigation. The firm’s clients range from Fortune 500 companies and leading national companies to universities and top-tier foreign law firms. Mr Jin is a member of the China Bar and admitted to practise before the China Intellectual Property Office.
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Twelve Tables Law Firm Suite A606, Nanxincang Tower No 22 Dongsishitiao Dongcheng District Beijing 100007 China T +86 10 8210 1161 F +86 10 8210 1161
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Li, Deshan Vice President – Unitalen Attorneys at Law deshan.li@unitalen.com | www.unitalen.com
Deshan Li is a senior partner of Unitalen Attorneys at Law, which has more than 20 offices throughout China. He is responsible for the management of foreign-related patent business. He obtained a PhD in physics from Frankfurt University in 1996 and an LLM from Peking University in 2001. Dr Li began his patent practice in 1996 as a patent attorney and attorney at law. His legal experience covers all areas of IP law, including patent procurement, re-examination, invalidation, patent infringement litigation, patent licensing and technology transfer. His practice focuses on the technical fields of image processing, telecommunications, computer science and automation. Dr Li has successfully dealt with many complicated patent prosecution and litigation cases and provided professional consultation services to a wide range of clients, including Fortune 500 companies. Dr Li has been actively engaged in patent theory and practice research and has published articles in influential IP magazines, such as Chinese publication Intellectual Property. He is the co-author of Chinese Patent Course. In addition, he has translated Business Patent Strategy. Dr Li speaks frequently on Chinese patent law and practice at international conferences and seminars. He has been invited as a patent law expert by the China National IP Administration (formerly SIPO) to participate in the amendment of the Patent Law of China and its Implementing Regulations. He has led a research group conducting extensive studies on the Patent Law Treaty. Dr Li also serves as director of the Chinese group of the International Association for the Protection of Intellectual Property, a member of the Licensing Executives Society and the Intellectual Property Owners Association, and deputy director of the All-China Patent Attorneys Association Patent Committee.
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Unitalen Attorneys at Law 7th Floor Scitech Place 22 Jian Guo Men Wai Avenue Chao Yang District Beijing 100004 China T +86 10 5920 8888 F +86 10 5920 8588 See firm profile p308 Professional associations • ACPAA • AIPLA • FICPI
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Li, S Sam Partner – Wanhuida Intellectual Property samli@wanhuida.com | www.wanhuida.com
S Sam Li is a partner at Wanhuida Intellectual Property and a member of the firm’s management committee. He practises IP law with a focus on litigating patent, trade secret and other technology-related matters. Dr Li has served as strategic counsel for both multinational and domestic Chinese corporations in patent infringement litigation, patent invalidation proceedings and subsequent administrative litigation, criminal and civil trade secret cases, and disputes over technology agreements before the courts, arbitral tribunals and the Patent Reexamination Board. He advises clients on matters concerning IP rights and competition and provides opinions on freedom to operate (FTO), infringement, validity and patentability. His team often works with clients on complex disputes in multiple jurisdictions. His recent work includes: • representing multinationals in patent litigation in a number of Chinese courts, successfully stopping defendants’ infringement activities, obtaining damages and procuring injunctions and presuit injunctions; • defending or challenging patent validity in the fields of chemistry, biotechnology, pharmaceuticals and electronics, and representing clients in subsequent administrative litigation; • advising and representing clients in several major trade secret matters involving both criminal enforcement and civil litigation, and conducting investigation in a number of cases involving breach of confidentiality and trade secret theft; • representing a major Chinese chemical company in the arbitration of a technology contract dispute and advising clients on the enforcement of arbitral awards; and • advising clients in the chemical, pharmaceutical, biotechnology and energy industries on various FTO, non-infringement and patent validity opinions for launching new products or processes, preparing for initiating or defending infringement actions, and assessing the merits for invalidation actions or litigating decisions of the Patent Re-examination Board.
Wanhuida Intellectual Property Yiyuan Office Building Friendship Hotel 1 Zhongguancun Street South Haidian District Beijing 100873 China
T +86 10 6892 1000 F +86 10 6894 8030 See firm profile p310 Professional associations • District of Columbia Bar
Dr Li has substantial experience practising law in the United States, having in particular clerked at the Maryland Court of Appeals after law school. He also served as chief IP and legal counsel for Asia-Pacific at a major US chemical company. Dr Li has been selected as a recommended lawyer in The Legal 500 (2020-2021) and a recommended individual in IAM Patent 1000 for his contentious work (2019-2021).
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Lin, Heather Senior Partner – NTD Intellectual Property Attorneys heather@chinantd.com | www.chinantd.com
Heather Lin is a patent attorney and senior partner at NTD Intellectual Property Attorneys. She joined the firm in 1994 and became a qualified patent attorney in 1996. She has received extensive IP training in the United States and Japan. With a biotech background, Ms Lin represents a broad spectrum of clients, from start-ups to multinationals. Ms Lin’s practice primarily involves patent drafting and prosecution, patent infringement and validity opinions and litigation, as well as client counselling in IP strategic planning and portfolio management – with an emphasis on biotechnology and pharmaceuticals. She also advises clients in relation to Chinaspecific IP issues such as the utilisation of Chinese genetic resources, inventor remuneration and technology import and export registration and approval. The patents that she has prosecuted and opined on relate to subject matters such as genes and proteins, stem cells, pharmaceuticals, diagnostics and plants – all of which have been the subject of much debate in China. Ms Lin is actively involved in the legislative process regarding Chinese patent law and is a frequent speaker at various IP forums and conferences, both in China and abroad. She was chosen as a National Intellectual Property Leading Talent by the China National IP Administration in 2014. Ms Lin is a member of several IP associations, including the All China Patent Agents Association, the International Association for the Protection of Intellectual Property (AIPPI) and the Licensing Executives Society. She is currently the vice president of AIPPI China.
NTD Intellectual Property Attorneys 10th Floor Tower C Beijing Global Trade Centre 36 North Third Ring Road East Dongcheng District Beijing 100013 China T +86 10 6361 1588 F +86 10 6621 1845 See firm profile p264 Professional associations • ACPAA • AIPPI • LES
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Liu, Fang Founder – Leader Patent & Trademark Firm liuf@infopatent.com.cn | www.infopatent.com.cn
Fang Liu, founder of Leader Patent & Trademark Firm, channels over 25 years’ experience into truly impressive performances in the most complex cases. Her practice covers patent drafting, prosecution, infringement litigation, invalidation action, IP judicial appraisal and IP strategy consultation. With the practical experience gained from handling over 1,000 patent drafting, prosecution and invalidation cases, Ms Liu has a deep insight into the relationship between technological contribution and patent protection. Her opinions and views have led to a number of her cases being recognises a typical or outstanding cases by various courts, and have triggered amendments to the Patent Examination Guidelines. Ms Liu has also conducted extensive research on SEPs and handled a very large number of notable SEP litigations, which play a significant role in promoting the judicial practice of patent protection in China. Ms Liu serves as an executive director of the All China Patent Agent Association and the China Intellectual Property Society, and is the secretary general of the Network Intellectual Property Committee. She has won numerous awards, such as the Outstanding Talent of National Intellectual Property and the China Five-Star Patent Agent awards. Notable cases • Qualcomm v Apple, a series of SEP and non-SEP cases, in which she represented Qualcomm, and which was rated No 1 of 10 Typical Cases of Innovation Protection in 2019, No 1 of 10 Typical Cases of Re-examination and Invalidation in 2018 and among the 10 Hot Cases of Intellectual Property in China in 2018 • Nokia v Huaqin Telecom, a series of SEPs and non-SEPs cases, in which she represented Huaqin Telecom, from which the first judgment for SEP litigation in China originated, and ranked among the Top 10 Cases in 2014 by the China court system • China Battery Industry Association v Canadian Hydropower Corporation, in which she represented the China Battery Industry Association, and which ranked among the Top 10 National IP System Cases • Huawei v Ericsson, a series of SEP cases, in which she represented Huawei, and which was selected as the Guiding Case by the Supreme People’s Court
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Leader Patent & Trademark Firm 8th Floor Room 6 Building A 32 Winland International Center Xizhimen North Street Haidian District Beijing 100082 China T +86 10 62 260 318 (EXT 8501) See firm profile p244 Sample client list • Daimler • DELTA • Haier • Huawei • MTK • Nokia • NXP • Qualcomm • Samsung • Siemens • Sony
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Liu, Jifu President – PatentSino IP Firm jifuliu@patentsino.com | www.patentsino.com
Jifu Liu is the president of PatentSino IP Firm, which he co-founded in 2012. In just eight years, Dr Liu developed the firm from a boutique with four founding partners to a large firm with over 200 employees. This is a reflection of how the firm has earned the trust of numerous clients from both China and overseas. Dr Liu obtained his PhD in materials science from Tsinghua University. He qualified as a Chinese patent attorney in 2002 and has worked in the IP field ever since. His practice focuses mainly on patent drafting, prosecution, re-examination and invalidation in a variety of technical fields, such as new materials, nanomaterials, semiconductors, new energy, pharmaceuticals, electronic elements and devices, both in China and abroad. As an IP expert, Dr Liu also helps many clients devise their patent portfolio management strategy, implement such strategy and make decisions regarding building patent pools worldwide. Over the years, Dr Liu has handled thousands of patent filings in China and abroad for many domestic clients. Dr Liu has been recognised by the Beijing Patent Attorney Association as an outstanding patent attorney and has been invited to join the Beijing Municipal Intellectual Property Office as an IP expert. He has helped train many patent attorneys in China on patent drafting and prosecution skills. Affiliations • Board member of the All China Patent Attorneys Association • Board member of the Beijing Patent Attorneys Association • Board member of the Capital Intellectual Property Service Association • Board member of the China chapter of the International Association for the Protection of Intellectual Property • Expert of the Beijing Municipal Intellectual Property Expert Database
PatentSino IP Firm 4th floor Zhongyuan Technology Building 3 No 53 Xiaoying North Road Chaoyang District Beijing 100101 China T +86 10 8410 9559 F +86 10 8410 9553 See firm profile p272 Professional associations • AIPPI China • All China Patent Attorneys Association • Beijing Patent Attorneys Association
Awards and accolades • “Outstanding patent attorney”, Beijing Patent Attorneys Association • “Recommended patent attorney”, IAM Patent 1000
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Liu, Qinghui (Nick) Partner – AnJie Law Firm liuqinghui@anjielaw.com | www.anjielaw.com
Qinghui (Nick) Liu is a highly experienced and respected lawyer who concentrates his practice on patents, trademarks, copyright, trade secrets, the full range of IP transactions, as well as arbitration and antitrust. Dr Liu has clients in a variety of high-tech industries and Fortune 500 companies, such as Qualcomm, Sharp and AstraZeneca. Prior to joining Anjie Law Firm, Dr Liu gained a reputation as an IP judge in the Beijing High People’s Court. He tried over 2,000 IP cases, including civil cases concerning patents, trademarks, copyright, trade secrets and unfair competition disputes, as well as administrative cases regarding patent re-examination, patent invalidation, trademark re-examination and trademark invalidation, many of which had a profound impact on IP practice. Dr Liu specialised in cases regarding SEPs, pharmaceutical patents, trademarks and trade secrets. In private practice, Dr Liu has handled numerous high-profile patent and other IP litigation cases, such as Sharp v OPPO, Qualcomm v Apple and AstraZeneca v Patent Re-examination Board. His team represented AstraZeneca in patent administrative litigation and successfully persuaded the court of second instance to reverse the first-instance decision. It was a milestone case for chemical compoundrelated inventions and was selected as one of the 50 typical IP cases in the Chinese courts in 2018. Dr Liu has published three IP-related academic monographs: Guideline for Patent Infringement Litigation in China, Application of the Law on Invention/Utility Model Administrative Lawsuits – Rules and Cases and Liability of Internet Service Providers on Indirect Intellectual Property Infringement. These books have received wide acclaim among lawyers in China and are regarded as guidelines for resolving various IP-related issues. Dr Liu has also published many influential IP-related articles and essays in well-known journals and magazines. Dr Liu is often invited as a guest of honour at IP conferences and conventions, where he delivers keynote speeches on patent administrative litigation practices and issues, the rules for determining patent infringement and interpreting patent claims, and the rules for determining trademark infringement – among other topics.
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AnJie Law Firm 19th Floor Tower D1 Liangmaqiao Diplomatic Office Building 19 Dongfangdonglu Chaoyang District Beijing 100600 China T +86 10 8567 2953 F +86 10 8567 5999 See firm profile p192 Professional associations • Beijing Intellectual Property Law Research Association • Chinese Law Society Sample client list • AstraZeneca • Cambiros • Novo Nordisk • Qualcomm • Sharp • Tencent
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Ni, Bin Partner – China Science Patent & Trademark Agent Ltd bin.ni@csptal.com | www.csptal.com
Bin Ni’s technical expertise covers the areas of electronics and electrical engineering, optoelectronics, sensors, and semiconductor devices and manufacturing processes. Mr Ni began his career in intellectual property in 2004 and joined China Science Patent & Trademark Agent Ltd in 2005. With a strong technical background in microelectronics and telecommunications, he has been drafting and prosecuting hundreds of patent applications of high quality. One patent drafted by Mr Ni won the China Patent Award in 2017. Mr Ni drafted and prosecuted most of the patents in the fin field-effect transistor (FinFET) patent portfolio of one of the firm’s clients that was ranked as the best in terms of quality by Lexinnova among multinational companies such as Intel and IBM. Mr Ni was also recognised as “Most Valuable Attorney” (in China) by a leading mobile phone manufacturer in 2013. Mr Ni also provides legal services, such as patent invalidation, infringement analysis and litigation concerning standard-essential patents. Many of his cases involve famous multinational companies, including worldwide communications-standard formulators. Two of the FinFET patents drafted by Mr Ni were relied upon by our client to initiate infringement litigation against the top-most international semiconductor manufacturer, Intel. Mr Ni has been representing our client in the related invalidation and litigation proceedings. Mr Ni qualified as a patent attorney before the State Intellectual Property Office in 2006. He became an authorised patent litigator before the Supreme Court in 2013 and is thus qualified to represent clients in litigation proceedings before the Chinese courts. Mr Ni received his BS in electrical engineering from Tsinghua University in 2001 and an MS in the same discipline from the Graduate School of Tsinghua University in 2004.
China Science Patent & Trademark Agent Ltd 3rd Floor Building D International Finance and Economics Centre No 87 West 3rd Ring North Road Haidian District Beijing 100089 China T +86 106 8619 696 F +86 108 2378 400 See firm profile p206 Professional associations • ACPAA • INTA Sample client list • Chinese Academy of Sciences • Panasonic Corporation • Samsung Electronics Co, Ltd • Sharp Corporation • Tsinghua University
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Papageorgiou, Elliot Head of Intellectual Property Strategy – China – Gowling WLG elliot.papageorgiou@gowlingwlg.com | www.gowlingwlg.com
Elliot Papageorgiou offers strategic advice to international clients on both contentious and non-contentious IP issues, with a special focus on IP value growth and extraction, strategic portfolio development and cross-border IP enforcement and litigation within China and across the Asia-Pacific region. He manages a range of strategic trademark, copyright, but especially patent and trade-secret projects for multinational clients. His client briefs include acting as global IP adviser for one of the world’s leading quantum-computing technology companies; structuring IP licensing and exploitation models for high-tech chemical companies; defending China patent portfolios for leading healthcare companies; developing IP strategies for several funded companies of one of Europe’s largest venture capital funds; and acting for global automotive technology brands, as well as global infrastructure, engineering and manufacturing conglomerates. Mr Papageorgiou’s successes include: • structuring China IP licensing and technology transfer for a global leader in specialist chemicals; • winning patent claw-back litigation for one of Europe’s largest engineering groups and recovering a number of patent families from potential competitors and protecting the client’s trade secrets in the process; • winning patent defence litigation before the Supreme People’s Court for one of Europe’s largest engineering conglomerates; • developing a Chinese freedom-to-operate and technology strategy for one of Europe’s largest automotive parts suppliers, including IP mapping, competitor threat analyses; and • implementing strategic measures to generate competitive advantage for the client.
Gowling WLG Suites 3404 & 3405B Teem Tower 208 Tianhe Road Guangzhou 510620 China T +86 185 0170 0777 F +86 20 381 037 79 Professional associations • INTA • LESI and LES Scandinavia • MARQUES • European Chamber of Commerce in China (EUCCC) • National Chair of IPR Working Group
Mr Papageorgiou is licensed to practise law in England and Wales, New York and Australia; he is also a registered foreign lawyer in Hong Kong. He holds bachelor’s degrees in commerce and economics from Murdoch University and read law at Monash University, before reading for the bachelor of civil law at St Catherine’s College, Oxford. Mr Papageorgiou’s accolades include: • IAM Patent 1000 (2012-2021); • WTR 1000 – Recommended Individual (2011-2021); • WTR 1000 – Global Leaders (2020-2021); • IAM Strategy 300 – World’s Leading IP Strategists (2012-2021); • Managing Intellectual Property – IP Star for Patents and Trademarks (2014-17,19-21); • Chambers and Partners – Global (2013, 2015-2021) and Asia-Pacific (2012-2021); • Legal 500 (2013, 2021); and • Who’s Who Legal – Patents and Trademarks (2015-2021).
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Qiu, Jun Partner – Liu, Shen & Associates junqiu@liu-shen.com | www.liu-shen.com
Jun Qiu joined Liu, Shen & Associates in February 2005. Mr Qiu qualified as a patent attorney in 2008 and as an attorney at law in 2012. His practice includes IP litigation, patent prosecution, invalidation and dispute resolutions before the China National Intellectual Property Administration and the courts, and counselling on IP strategies, patent licensing, IPrelated contracts and patent due diligence exercises. Mr Qiu specialises in semiconductor processing and devices, including memory technology; optical engineering, including microlithography, virtual reality technology and display technology; materials engineering; and mechanical engineering. Mr Qiu also provides patent training and patent mining for R&D personnel of clients, and frequently speaks on various topics relating to patent prosecution and litigation at domestic and international conferences. Mr Qiu graduated from Tsinghua University with a bachelor’s and a master’s in engineer with a major in materials science. Mr Qiu also studied and worked at the University of Michigan and obtained an LLM from the John Marshall Law School. Mr Qiu has authored numerous articles for professional publications, including: Technical inspiration in determining inventive step of a patent, Examination Work Reports, 2011; and Functional Feature in Chinese Patent Infringement Litigation, Managing IP, 2015.
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Liu, Shen & Associates Hanhai Plaza 10th Floor 10 Calhelang Road Haidan District Beijing 100080 China T +86 10 62681616 See firm profile p258
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Shaowei, Christopher Senior Partner – NTD Intellectual Property Attorneys shaowei@chinantd.com | www.chinantd.com
Christopher Shaowei is a litigation attorney and senior partner of NTD Intellectual Property Attorneys. Over his 30 years of practice, he has litigated many complex cases and frequently represented clients before judicial courts and administrative agencies in China. Mr Shaowei also counsels clients and provides legal services in all areas of intellectual property, including enforcement, licensing, dispute resolutions before the administrative and judicial authorities, patent law, trademark law, copyright law, trade secrets, unfair competition, domain name disputes and patent prosecution. Mr Shaowei has been honoured numerous times by Asialaw and Managing Intellectual Property. He is actively involved in the legislative process in China relating to IP laws and regulations, and has participated as an expert in the amendments to the Chinese patent and trademark laws. He is a frequent speaker on IP enforcement, patent and trademark prosecutions, IP management strategy and technology transfer issues. Mr Shaowei has served as vice president of Licensing Executive Society International (LES) and at the same time as vice chair of LES China. He is also a member of the American Intellectual Property Law Association, the International Association for the Protection of Intellectual Property and the International Trademark Association.
NTD Intellectual Property Attorneys 10th Floor Tower C Beijing Global Trade Centre 36 North Third Ring Road East Dongcheng District Beijing 100013 China T +86 10 6361 1599 F +86 10 6621 1845 See firm profile p264 Professional associations • AIPLA • LES China • LESI Sample client list • DuPont • Johnson & Johnson • Nippon Steel • Pfizer • Porsche • Saicmotor • Snap-on • Volkswagen
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Song, Nancy Partner – Linda Liu & Partners nancysong@lindapatent.com | www.lindapatent.com
Nancy Song is a partner and Chinese patent attorney with Linda Liu & Partners. Ms Song obtained her BE in electronic and information engineering from Tsinghua University in 2008 and joined MediaTek as a patent engineer the same year. She was among the first batch of attorneys who became qualified to handle cases independently and was soon promoted to senior patent counsel within the company. After she joined Linda Liu & Partners in 2011, Ms Song was selected by the firm to receive training in US patent law at G&B, a US law firm. In 2017 Ms Song was admitted to the Santa Clara University School of Law (ranked fourth in intellectual property in the United States) as a Silicon Valley Law Fellow. She obtained a master’s degree in American law with a CALI Excellence for the Future Award, and passed the US Patent Bar in 2018. With her knowledge and understanding of US IP law, Ms Song mainly serves US clients and Chinese clients with foreign patent applications. Her practice includes enterprise IP strategy planning, patent mining, patent portfolio establishment, patent prosecution, patent re-examination, patent validity assessment, infringement assessment, patent search and analysis, and IP-related consultation. She won commendations for her quality work, seamless communication and willingness to go the extra mile. Even during the Covid pandemic, her work has been highly praised by clients. One of them wrote: “You certainly helped us manage 2020 far better than we would have without you. We’re constantly pointing to you as the type of outside counsel we need in different business regions.”
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Linda Liu & Partners F16 Tower C Beijing Global Trade Centre 36 North Third Ring East Road Dongcheng District Beijing 100013 China T +86 1861 100 0686 See firm profile p256
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Tan, Jacky Yingqiang Vice President – Jiaquan IP Law mail@jiaquanip.com | www.jiaquanip.com
Jacky Yingqiang Tan is a vice president of Jiaquan IP Law and also head of the firm’s Guangzhou office. Mr Tan was an expert in the electronic and software industry before he started his career in IP law. His experience includes working at a large electronics group as an integrated circuit designer and for an international mobile phone manufacturer in the research and development of operating systems for computer software. This background enables him to easily understand his clients’ inventions. Mr Tan’s main areas of specialisation are electronics, computer software and hardware, and telecommunication engineering. He has handled over 300 patent applications and over 200 IP litigations and invalidations. Some of his patent litigation cases have been listed as provincial classic IP cases. He has been nominated as an IP Infringement Judgment Expert by the Guangdong Intellectual Property Office, and has served as an expert witness in numerous cases. He has substantial experience in judicial identification of IP protection, particularly in the context of trade fairs where expeditious action is vital. Mr Tan has written and lectured on various patent protection topics, such as tips for defendants in patent infringement cases in China and the advantages of invention patents and copyright registrations in protecting computer software. His working languages are Mandarin, Cantonese and English. Representative cases • Mr Tan represented Guangzhou Fekon Motorcycle Co Ltd in response to Company A’s claim of design patent infringement. He and his team initiated a thorough search and analysis of over 20,000 prior arts and eventually submitted 17 critical prior designs. He successfully invalidated the entire patent involved, which ultimately forced the patentee to withdraw the lawsuit. • Mr Tan represented Guangzhou Riton Biomaterial Co Ltd in several patent infringement litigations against Company B concerning an orthodontic product, which led to an amicable settlement between the two parties. • Mr Tan represented Guangzhou Lianrou Machinery & Equipment Co., Ltd. in relating to provisional protection dispute for the client’s published invention patent application and prevailed in the first and second instances as well as the retrial before the Supreme People’s Court. This is a typical case concerning reasonable compensation during the provisional protection period and it was listed as one of the 2018 Top Ten Typical Cases by Shandong Higher People’s Court and Jinan Intermediate People’s Court.
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Jiaquan IP Law Suite 910 Tower A Winner Plaza 100 Huangpu Avenue West Guangzhou 510627 China T +86 20 3803 3421 F +86 20 3806 1201 See firm profile p228 Professional associations • ACPAA • Guangdong Patent Attorneys Association • Guangdong Intellectual Property Judicial Appraiser • Guangzhou Arbitration Commission (GAC)
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Tao, Allen F Partner – Liu, Shen & Associates atao@liu-shen.com | www.liu-shen.com
Allen F Tao specialises in patent invalidation, litigation and dispute resolutions before the Chinese administrative agencies and the courts, as well as in counselling on IP strategies and patent clearance searches. His practice also covers patent prosecution in the fields of material science, semiconductors, displays and mechanical engineering. Since 1998, he has handled dozens of patent-related proceedings before the courts, as well as some cases relating to trademarks, trade secrets and copyright issues. Mr Tao has represented a number of multinational corporations in IP litigation cases in China. He also has extensive experience in contractual issues, licensing and other IP-related issues that foreign companies doing business in China face. Mr Tao received his bachelor’s and master’s degrees in material science and technology from the University of Electronics Science and Technology of China in 1988 and 1991 respectively. He received professional training at a law firm in Germany in 1997 and further obtained an LLM from the John Marshall Law School in the United States in 2001 and a master of law degree from the Huazhong University of Science and Technology in 2004. Mr Tao worked at a research institute for four years before joining Liu, Shen & Associates in 1995. Cases • Esco v Fumei, patent and trademark infringement litigation, Beijing No. 2 Intermediate Court and Beijing High Court, representing the plaintiff. The court decided that the defendant stop infringement and pay damages to the plaintiff. (2008) • Kone v Suzhou Fujia Enke, patent infringement litigation, Suzhou IntermediateCourt, representing the plaintiff. The Court decided that the defendant stop infringement and pay damages. (2008) • Kone v Zhejiang United, patent infringement, Hangzhou Intermediate Court, representing the plaintiff. The Court decided that the defendant stop infringement and pay damages. (2008) • Siemens v Beijing Lida Huaxin, patent infringement litigation, Beijing No. 1 Intermediate Court, representing the plaintiff. The case was mediated before the court and the defendant pay damages RMB 4m. (2008) • Staubli v. Changshu Textile, patent infringement litigation, Suzhou Court and Jiangsu High Court, representing the plaintiff.
Liu, Shen & Associates Hanhai Plaza 10th Floor 10 Calhelang Road Haidan District Beijing 100080 China T +86 10 6268 1616 See firm profile p258
Literature & awards • Author of book Patent Reexamination & Invalidation Practice (2013) • Author of paper Amendment Rules after Grant of Patent (2004) • Author of chapter “Indirect Infringement in China” of book Patent Infringement Worldwide - Claim Interpretation - Infringement Damages Edited by Jan Bushche et al Carl Heymanns Verlag (2010) • Honored as ‘Leading Patent Attorneys in China’ by SIPO in 2014.
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Wang, June Senior Partner – NTD Intellectual Property Attorneys june@chinantd.com | www.chinantd.com
June Wang has a BSc in applied physics and an MSc in optical communication technology. She began practising law in 1997 and was invited to the headquarters of Philips IP & Standards to receive European patent law and drafting training in Eindhoven, Netherlands in 2005 – the first outside counsel from China to do so. She was also the first outside counsel from China to be invited to the headquarters of Intel Corporation in 2008 to learn about the US patent system and US practice, working with IP counsel in Santa Clara. As lead counsel, Ms Wang has in-depth experience in patent prosecution and litigation cooperation with multiple international companies in China. She has also acted as lead patent attorney for Intel, Qualcomm, Maxim Integrated Products and Xiaomi, and has been involved in invalidation cases, patent infringement and administrative litigation cases in China. Ms Wang has a wealth of experience in the IP field, with a particular emphasis on computer engineering, telecommunications, semiconductors, photo-electronics and medical instruments. Ms Wang has been recognised by the All-China Patent Agents Association (ACPAA) as an outstanding patent attorney in the IP field and as an excellent trainer, having trained thousands of patent attorneys in China on patent drafting and prosecution skills. Ms Wang was also recommended by the ACPAA to give a presentation on how to interpret the functional limitation quoted in the claim of an application relating to a computer-implemented invention before the Supreme Court in 2015. She has been selected by the China National Intellectual Property Administration to co-author a book on drafting patent applications in electrical fields and was invited by the Ministry of Industry and Information IP Centre to give a lecture on the protection of software-implemented inventions in China in 2015. At the invitation of the American Intellectual Property Law Association, Ms Wang took part in drafting Patent Application and Judicial Protection of Standard Essential Patent Around the Globe in 2017.
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NTD Intellectual Property Attorneys 10th Floor Tower C Beijing Global Trade Centre 36 North Third Ring Road East Dongcheng District Beijing 100013 China T +86 10 6361 1518 F +86 10 6621 1845 See firm profile p264 Professional associations • ACPAA • AIPPI Sample client list • Intel • Microsoft • Qualcomm
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Wang, Wenwen Partner – Advance China IP Law Office wangww@aciplaw.com | www.aciplaw.com
Wenwen Wang received her PhD in biological sciences from the University of California, Irvine, and joined Advance China IP Law Office in 2013. Before that, she had worked as a university research assistant and as the director of an industrial R&D laboratory, supervising research and IP work. Dr Wang has extensive experience in patent applications in China, the United States, Europe and other countries. She has also been recommended in the individual rankings for patent in the IAM Patent 1000 2019-2021. She provides IP services to various domestic and foreign companies, universities and research institutes in patent drafting, prosecution, analysis and consulting of patentability and infringement in the fields of biotech, pharmaceuticals, chemistry, materials and medical devices. She also has IP experience in products and manufacturing processes of cosmetics, food industry, biofuel and nanofilm, among other industries. Dr Wang is also active in IP conferences and serves on the Intellectual Property in China Committee of the American Intellectual Property Law Association; the Asian Practice Committee of the Intellectual Property Owners Association; and the Bio-Pharma Professional Committee of the Guangdong Division of the All-China Patent Attorney Association. She has participated in a number of IP investigation and research projects funded by China’s National Intellectual Property Administration and WIPO, such as a study of the IP protection status and law developments in Latin America, Mongolia and Chinese industrial cities.
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Advance China IP Law Office 45/F CTF Finance Center No6 Zhujiang East Road Tianhe District Guangzhou 510623 China T +86 20 8732 3188 EXT 208 F +86 20 8732 0273 See firm profile p182 Professional associations • ACPAA • AIPLA • IPO
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Pan, Wei Partner – Unitalen Attorneys at Law wei.pan@unitalen.com | www.unitalen.com
Wei Pan is a partner of Unitalen Attorneys at Law, one of the largest Chinese IP law firms with over 20 offices across the country. Dr Pan is responsible for Unitalen’s inbound and outbound patent business in European countries. He obtained a PhD in engineering geology from the Chinese Academy of Sciences in 2005 and an LLM from Boston University in 2015. Dr Pan became a Chinese patent attorney in 2005 and passed the US Patent Bar exam in 2015. His expertise covers all areas of patent law, including patent procurement, re-examination, invalidation, freedom to operate, patent administrative litigation and patent infringement litigation. His practice focuses on the technical fields of automotive, aircraft, household appliance, refrigeration, medical devices, measuring instruments, automation and other mechanical apparatus. He is very experienced in patent drafting and highly praised by his clients, most of which are multinational companies. With his solid technical and legal background, he has successfully handled a significant number of complicated and difficult patent prosecution and litigation cases, and secured his clients’ IP rights in China and abroad. Dr Pan has been actively engaged in patent theory and practice research and has published articles in Chinese and English influential IP magazines. He is frequently invited to attend international conferences and seminars, and to give presentations on Chinese patent law and practice.
Unitalen Attorneys at Law 7th Floor Scitech Place 22 Jianguomenwai Avenue Beijing 100004 China T +86 10 59 20 8566 See firm profile p308 Professional associations • ACPAA • AIPPI • INTA Sample client list • Airbus • Electrolux • Fresenius • Osram • Siemens
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Xiang, Andy Partner – Twelve Tables Law Firm andy.xiang@ttllawfirm.com | www.ttllawfirm.com
Andy Xiang has over 14 years of experience in handling complex and cross-border patent and technology-related IP lawsuits and counselling in China. He has successfully represented some of the world’s top technology giants in enforcing their patent rights and has also defended them against claims of infringement. He has handled a wide range of patent and trade secret disputes in the technology areas, including telecommunication, electronics, diagnostic and medical devices, industrial robots, electrical equipment and consumer products. Mr Xiang is now also very active in conducting IP due diligence on behalf of several top-tier venture capital firms. From 2017 to 2019, Mr Xiang represented Qualcomm against Apple in several patent infringement cases before multiple Chinese courts, and successfully helped his client to secure two preliminary injunctions – a very rare achievement in China’s patent litigation history. A trade dress retrial case in which he successfully represented a client before the Supreme People’s Court in 2010 has set the standard for dual protection of a product’s configuration through design patent and trade dress. The case was named as one of the annual IP cases of the court for that year and is frequently cited as a guiding case. In early 2019, Mr Xiang co-founded Twelve Tables Law Firm with other partners specialising in IP litigation. The firm’s clients range from Fortune 500 giants and leading national companies to universities and top-tier foreign law firms. The firm is growing very fast and has gained the trust of several tech giants to represent them in more than 10 patent disputes in 2020. Mr Xiang had previously practised at King & Wood Mallesons and LexField. He also worked at ABB China as its IP manager and counsel, as well as Vestas, for seven years combined. Mr Xiang is admitted to the China and California Bars, as well as before China’s National IP Administration. Mr Xiang has also passed the USPTO Bar examination.
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Twelve Tables Law Firm Suite A606, Nanxincang Tower No 22 Dongsishitiao Dongcheng District Beijing 100007 China T +86 10 8210 1161 F +86 10 8210 1161 Professional associations • AIPPI
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Yang, Alexandra (Pu) Partner – Fangda Partners pu.yang@fangdalaw.com | www.fangdalaw.com
Alexandra (Pu) Yang is one of China’s preeminent IP litigators. As a recognised consulting expert to the Supreme People’s Court’s Intellectual Property Research Centre, she has extensive experience in every area of IP law, including patents, copyright, trademarks and trade secrets. Ms Yang represents many Fortune 500 companies and leading technology companies in their most important matters, such as Apple v Qualcomm, Apple v IPCOM, Apple v iRobot, Intel v VLSI, Microsoft v Neodron, Cisco v Dunjun, Facebook v Wireless Wonders, Xperi v Samsung, Eli Lilly v Watson, Power Integrations v Fairchild, Navinfo v Baidu and Telsa v Gao. Many cases led by Ms Yang are groundbreaking in furthering the development of IP and competition laws in China. She has taken more than 20 cases to trial in the Supreme Court, with four recognised as Annual Top Cases or Guidance Cases by the Supreme Court. Landmark patent cases handled by Ms Yang include: • Apple v Qualcomm (one of the most significant trials of the century); • Eli Lilly v Watson (the only invention patent case recognised as a Guidance Case by the Supreme Court between 2010 and 2020); • representing Astellas in patent actions against 10 generic companies (exemplary cases contributed to the formation of patent linkage system in China); • Apple Inc v iRobot (the highest damages claim of patent case in history in China – that is, Rmb10 billion); and • Intel v VSLI (novel and creative litigation strategies were developed to counteract non-practising entities).
Fangda Partners 27/F North Tower Beijing Kerry Centre 1 Guanghua Road Chaoyang District Beijing 100020 China T +86 10 5769 5665
Ms Yang has been ranked among the best IP litigators in China by many professional directories and is recognised as one of the “the country’s most formidable patent litigators”. The most recent awards include: • Tier 1 Patent Litigator, IAM Patent 1000 (2021); • Tier 1 Trademark Litigator, WTR 1000 (2021); • Patent Star, Managing IP (2021); • Litigation Star, Benchmark (2021); and • Leading Practitioner, Chambers (2021). WTR has also recognised Ms Yang as “the crème de la crème of Chinese IP litigators” who has been entrusted by clients with their “most high-prolife and high-stake IP litigations”.
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Yang, Stephen Managing Partner – IP March yyang@ipmarch.cn | www.ipmarch.cn
Stephen Yang is a Chinese patent attorney and managing partner of IP March, a boutique IP law firm in China. His practice covers patent search, drafting, prosecution, invalidation, opinion and litigation in a wide variety of technical fields, particularly mechanics, energy, electronics, software and high-tech areas. Mr Yang also has extensive experience in utility model and design patent practice. Mr Yang began to practise patent law in 1997 and worked at a number of Chinese IP law firms in Beijing where he contributed significantly to these firms’ business growth. In addition to private practice in China, Mr Yang worked in-house in Toronto in a hightech company where he gained an industrial perspective to his IP work. Having spent five years in Canada, Mr Yang has also gained deep insights into western culture and practice; this, combined with superior language skills, makes him stand out from his peers and helps bridge any cultural gap by allowing smooth communication and understanding of his clients’ needs, while advising them in a way they can clearly understand. His clients, many of which are prominent industry leaders around the world, recognise the quality of Mr Yang’s services. Mr Yang’s technical background is in mechanical and industrial engineering. He received two BEngs from Tsinghua University and a master’s from the University of Toronto. Mr Yang is a frequent speaker at international conferences and webinars. He is also a prolific author of articles and books. In particular, Mr Yang is the main author of IP Protection in China, published by ABA Publishing in 2015. He is also a lecturer of the prestigious McGill University IP courses and created the China content for the course. Mr Yang has been recognised multiple times by various sources as one of the leading practitioners in IP law.
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IP March 1506 Satellite Building 63 Zhichun Rd Haidian District Beijing 100190 China T +86 10 62 96 6619 F +86 10 62 98 3448 See firm profile p224 Professional associations • ACPAA • AIPPI • INTA
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Yang, William Partner – Panawell & Partners LLC williamyang@panawell.com | www.panawell.com
William Yang graduated from the Sichuan Normal University Foreign Language Department (1988) and the Law School of Renmin University (1990). Mr Yang served the Chinese Ministry of Supervision from 1990 to 1995. In 1996 he moved to China Patent Agent (Hong Kong) Ltd as an attorney-at-law and deputy director of the legal affairs department, during which time he represented a number of multinational companies from different continents in litigation. Mr Yang joined Panawell & Partners in January 2007. Mr Yang has broad and significant experience in IP licensing and assignment, IP customs protection, anti-unfair competition, anticounterfeiting and anti-piracy, patent and trademark registration and litigation, computer and copyright registration, domain name registration and dispute resolution, and domestic and international trademark clearance and prosecution, for both domestic and overseas clients. In addition, he has handled a wide range of complex infringement litigations for domestic and international corporations, both at trial and on appeal. Mr Yang is a frequent speaker at both local and international IP seminars. Mr Yang was trained in US law firms. He is a member of the Licensing Executives Society China, the International Federation of Intellectual Property Attorneys China, the China Copyright Association, the China Trademark Association, and has been selected as an expert by the Intellectual Property Office (BJIPO) of Beijing Municipal Government in its IP Experts Pool. Mr Yang’s working languages are Chinese and English.
Panawell & Partners LLC 1002-1005 10th Floor China Life Tower 16 Chao Yang Men Wai Street Chaoyang District Beijing 100020 China T +86 10 8525 3778 F +86 10 8525 3671 See firm profile p270 Professional associations • CTA • FICPI • LES Sample client list • Airbus Operations Gmbh • CAS Institutes • E Ink Corporation • Eaton Corporation • Kimberly-Clark • Taikang Group
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Zeng, Minhui Senior Partner – Advance China IP Law Office zmh@aciplaw.com | www.aciplaw.com
In his 24 years’ IP career, Minhui Zeng has handled a large number of patent applications, patent invalidation and litigation cases, especially in the fields of electrical and electronics, mechanics, automobiles and medical devices. He is an expert in China’s IP system and IP-related court and administrative proceedings, and extremely well versed in patent analysis and invalidation. Mr Zeng represents both domestic and foreign clients. He obtained damages of Rmb46 million in a patent infringement case between Gree and Aux, setting a new record for the air conditioning industry and recognised among the Top 10 IP cases of 2018 by the Guangzhou IP Court. Mr Zeng has been recognised among the Top 50 Outstanding IP Lawyers of China by IPR Daily and among the National IP Experts and the National Counselling Experts for Foreign-related IP Disputes by the National Overseas Intellectual Property Dispute Response and Guidance Centre, an official organisation of China specialising in handling overseas IP disputes. He has also been recommended in the individual rankings for patent in the IAM Patent 1000 2019-2021. He serves on the IP Rights Litigation Committee and as an external feedback expert on patent examination quality for the All-China Patent Attorneys Association, and on the IP Rights Committee of the All-China Lawyers Association. Mr Zeng is also a lecturer for the All-China Patent Attorneys Association and a guest professor at the South China University of Technology.
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Advance China IP Law Office 45/F CTF Finance Center No6 Zhujiang East Road Tianhe District Guangzhou 510623 China T +86 20 8732 3188 EXT 806 F +86 20 8732 0273 See firm profile p182 Professional associations • All-China Lawyers Association • All-China Patent Attorneys Association
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Zhang, Beibing Gary President – China Sinda Intellectual Property Ltd beibing.zhang@chinasinda.com | www.chinasinda.com
Beibing Gary Zhang is a partner and the president of China Sinda Intellectual Property, a leading private IP firm in China. Dr Zhang practises in all areas of intellectual property and focuses on patent prosecution, invalidation, litigation and counselling. He is also experienced in administrative proceedings for the protection and enforcement of IP rights. Dr Zhang is an attorney at law and a registered patent attorney in the United States, and practised in major US law firms for many years before joining China Sinda. He has helped clients obtain, leverage and enforce patents around the world, particularly in China and the United States. Dr Zhang also counsels and provides opinions to clients regarding patent validity, freedom to operate, due diligence and licensing, and advises clients on the creation, management and leverage of their patent portfolios on a global basis. Dr Zhang is experienced in patent litigation before the People’s Court and has successfully represented many clients in both enforcing their patents and defending against infringement suits in China. He is also experienced in patent invalidation proceedings before the China National IP Administration and is one of the few individuals who have argued before both the US Board of Patent Appeals and Interferences and the China Patent Re-examination Board. He is also experienced in administrative proceedings at provincial and local agencies for the protection and enforcement of IP rights, and has helped clients to successfully combat counterfeiting and piracy that involve patents, trademarks and copyrights. Dr Zhang obtained his JD from the Georgetown University Law Centre, Washington DC; his PhD in chemical engineering from Northeastern University, Boston; and his BS in chemical engineering from Tsinghua University, Beijing.
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China Sinda Intellectual Property Ltd B11th Floor Focus Place 19 Financial Street Beijing 100033 China T +86 10 6657 6688 See firm profile p208
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Zhang, Jacob Siyue Partner – Lung Tin Intellectual Property Agent Ltd jacobzhang@lungtin.com | www.lungtin.com
Jacob Siyue Zhang has expertise in patent prosecution, invalidity, administrative and civil litigation, strategy design and portfolio development, due diligence and freedom-to-operate investigation and analysis, as well as IP anti-counterfeiting. He is experienced in patent cases in technical areas of computer software and hardware, Internet, e-commerce, electronics, telecommunication, semiconductor, image processing, display and lighting, mechanics and automation, among other areas. Since March 2007, Mr Zhang has represented many Fortune 500 companies in over 1,000 patent prosecution and litigation cases, among which: • a patent invalidity case that was selected as the No 1 case among the Top 10 cases of the Patent Re-examination Board of the China National Intellectual Property Administration in 2016; and • patent civil litigation cases and the related patent invalidity case that were selected by people.cn (a state-run media) as the No 1 case among the Top 10 typical patent cases in 2018. Mr Zhang and his team also manage global patent portfolios comprising thousands of patents and patent applications in various jurisdictions on behalf of their Chinese clients. Mr Zhang is frequently invited to speak at international IP events, such as at European Patent Office, the University of Washington and the World Congress of the International Federation of Intellectual Property Attorneys. Mr Zhang was licensed to practise as a Chinese patent attorney in 2008 and qualified as a Chinese national information engineer (patent information analysis) in 2009. Mr Zhang obtained his master’s in microelectronic design (first-class honours) from the National University of Ireland and his bachelor’s in telecommunication and electronic system from the Beijing Institute of Technology. Mr Zhang was recognised as a Beijing Intellectual Property Expert by the Beijing Intellectual Property Office in 2020 and as a Beijing Outstanding Patent Attorney by the Beijing Patent Attorneys Association in 2021. Mr Zhang is vice chair of the China IP Issues Committee of the American Bar Association for the current term (20192021).
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Lung Tin Intellectual Property Agent Ltd 18th Floor Tower B Grand Place 5 Huizhong Road Chaoyang District Beijing 100101 China T +86 13 8118 66859 F +86 10 8489 1189 See firm profile p260 Professional associations • AIPPI • ABA Sample client list • American Express • Bauerfeind • BOE • Decathlon • Grundfos • LG • nChain • Nexteer • OPPO • Tencent • Xiaomi
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Zhang, Peter (Baoyu) Partner – Linda Liu & Partners peterzhang@lindapatent.com | www.lindapatent.com
Peter (Baoyu) Zhang is a partner and patent attorney with Linda Liu & Partners. He has two decades of experience in IP systems, serving global clients from the United States, Europe, Japan and other countries. He worked as a patent examiner at the China National Intellectual Property Administration (CNIPA) for 12 years before joining Linda Liu & Partners in 2013. Mr Zhang obtained his BE in photo-electrical engineering from Wuhan University and studied civil and commercial economic law at the China University of Political Science and Law. He was selected to attend the high-level IP training course organised by WIPO and CNIPA in Geneva. Mr Zhang stays abreast of the latest developments in IP law worldwide and maintains in close contact with foreign patent attorneys in order to provide his clients with high-quality and reliable services. Mr Zhang is proficient in English, his working language. He provides foreign companies with services covering IP strategy planning, patent mining, patent portfolio building, patent procurement, patent reexamination, patent invalidation and administrative litigation, patent validity assessment, infringement assessment, among others. Mr Zhang has built the domestic department of Linda Liu & Partners, and leads a team serving China’s top-tier innovative enterprises. He also founded a team to protect IP rights online. The team is made up of patent attorneys, trademark attorneys and lawyers who assist clients with infringement complaints and requests to delete infringing links on e-commerce platforms, as well as e-commerce merchants in responding to unfair infringement complaints to safeguard their legitimate rights. He is experienced in managing transnational IP due diligence projects and high-stakes invalidation projects where multiple parties are involved. He often plays a pivotal role in pushing forward these projects and keeping each party working together efficiently so as to deliver a satisfactory result for the clients, in addition to contributing his professional opinions on Chinese patent practice. Mr Zhang has featured in the IAM Patent 1000 since 2017. “As a US attorney who often needs detailed guidance from Chinese associates, I know I can count on Peter Zhang and his colleagues to deliver thorough analysis on matters, as well as concrete suggestions for moving forward,” reports one respondent.
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Linda Liu & Partners F16 Tower C Beijing Global Trade Centre 36 North Third Ring East Road Dongcheng District Beijing 100013 China T +86 1861 232 8236 See firm profile p256
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Zhao, Wei Senior Partner – China Science Patent & Trademark Agent Ltd wei.zhao@csptal.com | www.csptal.com
Wei Zhao’s technical expertise covers the areas of electronics and electrical engineering, telecommunications and semiconductors. Since joining China Science Patent & Trademark Agent Ltd (CSPTAL) in 2003, Mr Zhao has been advising clients on procurement of patent rights, patent searches, opinions on patentability, re-examination and invalidation proceedings, infringement analysis and litigation. In the context of the development of artificial intelligence and the Chinese government’s Internet+ initiative, Mr Zhao has drafted hundreds of patent applications, as well as provided his professional and pertinent legal opinions to both parties involved in IP disputes, especially with regard to the quality of patent documents. Mr Zhao first assessed standard-essential patents in 2006 in relation to 3GPP standards. He is now acting as an independent evaluator for the standard of ITU-T H.265 for a famous patent pool. Mr Zhao qualified as a patent attorney before the State Intellectual Property Office in 2006. He became an authorised patent litigator before the Supreme Court in 2013, and represents clients in litigation proceedings before the Chinese courts. In 2016 Mr Zhao was awarded the Beijing Outstanding Patent Agent of the Year award. He frequently speaks at IP conferences and forums – his April 2017 speech entitled “Discussion on Several Issues of Internet Innovation Patent Application” at the China Intellectual Property HighLevel Protection Forum led to an interview on China Central Television. Before joining CSPTAL, Mr Zhao took part in the Optical Communication Network and Node Research Project of the National 863 Key Project, responsible for the development of cross-nodes of optical networks. He also participated in the Mobile IPv6 Project at Lucent-Bell Laboratory. Mr Zhao obtained a BE from the Electronic Engineering Department of Tsinghua University with a major in physico-electronics and opto-electronics. He also gained an MS from the Information Optoelectronics Research Centre of the Electronic Engineering Department of Tsinghua University.
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China Science Patent & Trademark Agent Ltd 3rd Floor Building D International Finance and Economics Centre No 87 West 3rd Ring North Road Haidian District Beijing 100089 China T +86 10 6861 9696 F +86 10 8237 8400 See firm profile p206 Professional associations • ACPAA • AIPPI • INTA Sample client list • Chinese Academy of Sciences • Ericsson AB • Panasonic Corporation • Samsung Electronics Co, Ltd • Tsinghua University
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Zhao, Ye Partner – Jingtian & Gongcheng zhao.ye@jingtian.com | www.jingtian.com
Ye Zhao is a partner of Jingtian & Gongcheng and head of the firm’s IP practice. He is a leading attorney in IP litigation and IP-related antitrust litigation (SEP-related litigation in particular). He is highly skilled at handling various types of IP and antitrust disputes, particularly in the semiconductor, communications, computer, consumer electronics and internet sectors. He is also highly trusted by his clients. Mr Zhao acted as counsel in a number of landmark IP and antitrust cases in China, including: • the first anti-suit injunction litigation in intellectual property (Huawei v Conversant); • the first antitrust litigation concerning SEPs (Huawei v InterDigital); • the first wireless communication SEP infringement litigation (Huawei v Samsung); • the first internet-related antitrust litigation (Qihoo v Tencent); and • the first Big Data-related unfair competition litigation (Sina Weibo v Maimai). Mr Zhao is recommended as a ranked lawyer by Chambers Asia Pacific 2021. He was recognised as IP Lawyer of the Year by The Asian Lawyer and recommended by The Legal 500 in 2020. Mr Zhao was also recognised among the Top 10 Patent Litigators by the China Intellectual Property Forum in 2018 and the Top 15 IP Litigators by Asian Legal Business in 2018. Mr Zhao has also been awarded an IP Star by Managing Intellectual Property. Mr Zhao obtained his JM degree from Peking University and has a bachelor’s in communications. He is a qualified attorney at law and patent attorney. Prior to joining Jingtian & Gongcheng, he worked for two other leading Chinese law firms as an associate and partner. Mr Zhao was an invited keynote speaker on SEPs by the American Bar Association at the association’s 2018 Seoul conference.
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Jingtian & Gongcheng 34th Floor Tower 3 China Central Place 77 Jianguo Road Chaoyang District Beijing 100025 China T +86 10 5809 1011 Sample client list • Amperex • ByteDance • Huawei • Intel • Oppo • Qihoo • Sina
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Zheng, Feng (Janet) Partner – Wanhuida Intellectual Property zhengfeng@wanhuida.com | www.wanhuida.com
Feng (Janet) Zheng is a partner at Wanhuida Intellectual Property’s Beijing office. Her practice focuses on patent litigation (including invention patents, utility models and designs). She also serves clients in respect of patent licensing, trade secret, trademark, copyright, unfair competition and antitrust matters. She has rich experience in serving foreign corporations. Ms Zheng’s work includes: • representing a foreign standard-essential patent owner in patent protection matters, including infringement litigation and negotiations; • representing a foreign client in the semiconductor area in patent protection matters, including infringement litigation and related patent invalidity matters; • representing a well-known US IT company in various patent protection matters, including preparing a series of patent infringement litigations; • representing an Australian medical device company in defending a series of patent infringement litigations initiated by a Chinese competitor before the Shanghai IP Court, and in filing invalidation proceedings against the related patents; • representing a leading sportswares company in various IP rights protection and associated patent invalidity proceedings; • representing a leading US chemical company in defending patent infringement litigation before the Shanghai IP Court, as well as in filing the related patent invalidity proceedings; • representing a leading US biochemical company in a cluster of litigations against a domestic competitor, including copyright infringement, unfair competition and patent infringement before the courts in Shanghai; • representing a US medical device company in defending against series patent infringement litigations and against an antitrust litigation filed by a Chinese competitor before the courts in Shenzhen; and • defending a leading Swedish home furnishing retailer in a patent infringement litigation before the Guangzhou IP Court and in the associated patent validity dispute.
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Wanhuida Intellectual Property Yiyuan Office Building Friendship Hotel 1 Zhongguancun Street South Haidian District Beijing 100873 China T +86 10 6892 1000 F +86 10 6894 8030 See firm profile p310 Professional associations • China Bar • New York State Bar
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Zheng, Xia President – AFD China Intellectual Property Law Office afdbj@afdip.com | www.afdip.com
Xia Zheng is president and founder of AFD China Intellectual Property, where she is a patent attorney, trademark attorney and attorney at law. She started her IP career in 1987 and has since been actively involved in many areas of IP practice, especially IP strategy, prosecution, postgrant proceedings and IP-related litigation. She has helped clients to successfully obtain IP rights and win patent re-examinations and invalidations, trademark oppositions, cancellations, reviews, domain name disputes and lawsuits. She also counsels rights holders with regard to dispute solutions and legal analysis. Ms Zheng actively participates in the industry and has been: • elected a leading professional in IP services in Beijing in 2020; • an adviser on IP services to the Beijing Innovation and Entrepreneurship Medium in 2018; • named a National IP Talent by the China National Intellectual Property Administration (CNIPA) since 2016; • named Outstanding Patent Attorney of the Year by the Beijing Patent Attorney Association (BPAA) in 2014; • named an excellent legal professional by the Beijing Haidian Judicial Bureau in 2012; • honoured for significant contributions to the Chinese patent and IP industries by the CNIPA in 2010; • named an excellent patent professional by the Chinese Academy of Sciences in 1997; and • elected as director of the All-China Patent Attorneys Association, standing director of the BPAA and director of the Beijing Intellectual Property Association. Before founding AFD, Ms Zheng was a patent engineer and patent attorney. She also advanced from department director to general director assistant to director and partner of an IP firm. Her prior inhouse IP work has included patent management, prosecution, foreign filing and analysis. Her industry experience includes research work at the Research Institute relating to catalytic cracking processes in petroleum processing and work at Human Genome Sciences. Ms Zheng obtained an MSc in organic chemistry and biochemistry from the University of Illinois, an MEn in petroleum processing from SINOPEC Research Institute of Petroleum Processing and a master’s in IP law from Franklin Pierce Law Centre, University of New Hampshire.
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AFD China Intellectual Property Law Office Golden Towers Tower B 21st Floor 38 Xueqing Rd Haidian Beijing 100083 China T +86 10 8273 0790 F +86 10 8273 0820 See firm profile p184 Professional associations • ACPAA • AIPPI • INTA
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China: Foreign
Country Name International firms are waking up to just how crucial it is to have a physical presence in China, which is the main reason behind the expansion of this chapter. More and more organisations are taking advantage of the benefits of joint ventures with domestic law firms, as this allows them to offer local litigation services – early adopters of this structure include Baker McKenzie, Clyde & Co, Hogan Lovells, Rouse and, most recently, Allen & Overy LLP. Amid the uncertainties of the USChina trade war, the Chinese government has identified intellectual property as a core element of the country’s national strategy going forward. The fourth amendment to China’s Patent Law was approved by the Standing Committee of the National People’s Congress on 17 October 2020, 12 years after it was last updated. The new amendment will bring Chinese patent law more into line with international practice, with changes due to take effect on 1 June 2021. Allen & Overy LLP
Magic Circle firm Allen & Overy LLP entered the Patent 1000’s China table last year following the announcement of a joint operation with Shanghai Lang Yue Law Firm, enabling the team to represent clients before mainland courts and to provide seamless services across the region. A high-profile mix of local and international corporations in the technology, media and telecommunications, life sciences and industrial engineering sectors enlist the help of Allen & Overy when it comes to complex litigation, dispute arbitration, transactional issues and advisory work. Committed to playing a leading role in the strive for diversity and inclusion, the outfit has several initiatives to promote racial, gender and LGBTQ+ equality across its network.
AWA Asia
“Responsive and diligent” AWA Asia is “always quick to answer and clearly lay out recommended legal strategies”, making the firm a pleasure to work with according to foreign associates. With a focus on bridging Europe with Asia, the Western-educated, bilingual team has achieved great success under the leadership of trademark expert and client favourite Ai-Leen Lim. On the patent side, a team of six tackles drafting, M&A, enforcement and landscape analysis with flair and a personable touch “unusual amongst ’formal’ patent attorneys and IP lawyers”. A number of Swedish companies have gone so far as to entrust AWA Asia with their whole patent portfolios, while one major future initiative firm is to continue to develop expertise in the life sciences field. One of the first patent litigators to be registered with the Supreme People’s Court, Xiaofan Chen effortlessly straddles the contentious and non-contentious divide. See p928 for firm profile
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Baker McKenzie
Companies searching for a one-stop shop for China IP matters need look no further than the wellrounded team at Baker McKenzie. The group guides clients through IP creation, commercialisation and exploitation from offices in Beijing and Shanghai. Unlike many of their competitors, Baker McKenzie can provide high-end local litigation services through a joint venture with PRC firm FenXun Partners. Two of the side’s leading lights are based in Shanghai: Clement Ngai specialises in pharmaceutical regulatory issues and technology transactions, while Binxin Li has a stellar track record when it comes to patent disputes.
Bird & Bird LLP
Bird & Bird has built up a wealth of experience working in China and Hong Kong over the past two decades, offering its services to multinationals with both specific and broad IP needs. The team is especially renowned for its work in the hightech space and was the only external advisor to the Hong Kong government on the development of the city’s new patent system, which was introduced in December 2019. Department co-head Christine Yiu has proven herself a valuable asset to businesses in cross-border disputes, frequently advising multinationals on patent transfers and licensing transactions.
CMS China
The largest law firm in Europe, CMS has more than 70 offices across the globe. In China, the skilled team is led by Nick Beckett who works closely with colleagues at the newly established Hong Kong IP practice to offer comprehensive patent services throughout the Greater China region. The group’s capacity was recently bolstered with the addition of an internationally experienced qualified Chinese patent attorney. A total of four partners
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China: Foreign DLA Piper
Firms Allen & Overy LLP AWA Asia
See p928
Baker McKenzie Bird & Bird LLP CMS China DLA Piper Finnegan, Henderson, Farabow, Garrett & Dunner, LLP See p1678
DLA Piper’s China enforcement and transactions practices are well regarded on a global level. Businesses from a wide range of industries approach the regional head of patents, William (Skip) Fisher, for help with IP protection and enforcement as well as negotiating and drafting IP licenses. He has a strong legal background with more than two decades of experience practising in the United States, China and internationally. All-round expertise allows him to craft integrated strategies for multinationals that leverage patent, design and trademark rights in concert.
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Morgan, Lewis & Bockius LLP
Finnegan’s small but effective Shanghai-based team works closely with colleagues in Washington to assist Chinese inventors with patent prosecution in the United States. The group also boasts expertise in licensing and tech transfer agreements. A superb strategist, Ningling Wang takes the lead on patent related issues across diverse industries. Familiar with the ins and outs of US IP law, Wang effortlessly handles Chinese invalidation proceedings akin to inter partes reviews. See p1678 for firm profile
Orrick, Herrington & Sutcliffe LLP
Gowling WLG
Gowling WLG Hogan Lovells Jones Day Kilpatrick Townsend & Stockton LLP
Perkins Coie LLP Ropes & Gray LLP Rouse Simmons & Simmons LLP Spruson & Ferguson
and five associates are supported by a technology and innovation centre, which assists on patent analysis, freedom to operate and validity searches. What impresses foreign associates is “Nick and his team’s advice that is consistently clear and always leaves clients satisfied with the scope and the fees”, leading them to “wholeheartedly recommend their services”. Beckett himself is described as “very pragmatic and proactive with an excellent grasp of the science and relevant sector, as well as the patent prosecution process. He has the ability to bring out the key decision points without getting bogged down in the science so that non-scientists can make the best decisions.”
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The first foreign firm to file a patent application in China in 1985, Gowling WLG has developed a strong network in the country. It established an on-theground presence in 2008 with an office in Guangzhou and more recently expanded its reach with an additional outpost in Beijing. A mix of domestic clients and world-leading multinationals take advantage of Gowling’s comprehensive IP services. “An understanding of the needs of international clients, knowledge of the field of law and local conditions, personal partner involvement and a solution-oriented approach” make it stand out from the crowd. Jian Xu instils confidence in foreign associates as leader of the China patent filing and prosecution group: “Jian is not only always very responsive, but succeeds in giving us and our clients a good understanding of the – for Europeans sometimes unusual – specifics of Chinese IP law. With him and his team we successfully pursued the interests of our clients in several difficult situations. He and his team are certainly a key contact to turn to for these matters in China.” Now based in London, Jamie Rowlands continues to provide hands-on support for China-related matters. The firm recently unveiled star practitioner Elliot Papageorgiou as its new signing. He is celebrated for his strategic nous and business acumen.
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China: Foreign Binxin Li Baker McKenzie
Individuals: litigation Highly recommended Ningling Wang Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Xiang Wang Orrick, Herrington & Sutcliffe LLP
Elliot Papageorgiou Gowling WLG
Nick Beckett CMS China
See p77
Tony Chen Jones Day Zhen (Katie) Feng Hogan Lovells William (Skip) Fisher DLA Piper Harold Johnson Brinks Gilson & Lione
Hogan Lovells
Hogan Lovells’ China branch lives up to the high standard clients have come to expect from the global giant. Since 2016, it offers another huge advantage to its enviable clientele; its association with Fujian Fidelity Law Firm makes it one of a select group of foreign outfits with local litigation capabilities. A compact, dedicated team of practitioners boasting technical qualifications works full time on patent matters with the support of numerous other legal professionals. Admitted in China and New York, star litigator Zhen (Katie) Feng does not shy away from even the most complex of patent issues.
Jones Day
US law firm Jones Day’s nearly 20 IP-focused lawyers based in the Greater China region advise domestic clients in US and Chinese patent infringement suits. Although working across a variety of different sectors, life sciences has come to be one of the bilingual team’s specialties. The multi-talented Tony Chen is passionate about spreading IP awareness and does
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Clement Ngai Baker McKenzie Scott J Palmer Perkins Coie LLP
Recommended
Timothy Bickham Steptoe & Johnson LLP
Yufeng (Ethan) Ma Orrick, Herrington & Sutcliffe LLP
See p51
Sharon Qiao Rouse Kristopher L Reed Kilpatrick Townsend & Stockton LLP Christine Yiu Bird & Bird LLP Shaobin Zhu Morgan, Lewis & Bockius LLP
so as a member of the US-China IP Cooperation Dialogue, an initiative of the US Chamber of Commerce and Renmin University. Top-ranked in both the litigation and transactions table, Chen skilfully navigates cross-border issues.
Kilpatrick Townsend & Stockton LLP
Kilpatrick Townsend & Stockton dedicates itself to supporting primarily Chinese companies from a range of industries with an interest in the United States. With an excellent grasp of US laws and regulations in addition to a deep local cultural understanding, the firm offers tailored advice on patent matters such as portfolio strategy, litigation and prosecution. Technology heavyweights Huawei and Oppo are two companies convinced by the immense competence of the team, which operates out of offices in Shanghai and Beijing. Litigator Kristopher Reed is the go-to person for International Trade Commission (ITC) Section 337 matters, while fluent Mandarin speaker Charles Gray focuses on patent counselling and prosecution for Chinese companies.
Morgan, Lewis & Bockius LLP
A team of six at Morgan Lewis & Bockius supports a largely Chinese clientele in US IP matters. No matter
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China: Foreign is too big, as the group is backed by a network of 200 IP professionals and so excels in everything from litigation and prosecution to IP due diligence. Clients in need of US patent dispute advice turn to techfocused Shaobin Zhu who has plenty of experience with Section 337 investigations at the ITC. Meanwhile, Yalei Sun spends equal amounts of time in Silicon Valley and Beijing, helping big-name Chinese companies with patent drafting and filing.
Orrick, Herrington & Sutcliffe LLP
“A relative newcomer to the China market but with a strong reputation in the United States,” Orrick, Herrington & Sutcliffe offers comprehensive patent services but is especially known for its outbound practice. Local clients with patent infringement or trade secret misappropriation issues benefit from the firm’s experience at the ITC and US federal courts. Respected lawyer Xiang Wang heads the IP practice in China and has mastered the area of IP disputes. Educated in the United States and China, Yufeng (Ethan) Ma advises clients on a broad range of IP matters and frequently assists with big-ticket litigation in the United States.
Perkins Coie LLP
Now a sophomore in the IAM Patent 1000, Perkins Coie continues to grow its China practice. Sixteen team members based in Shanghai and Beijing help multinationals to procure, maintain and enforce IP rights in China, while also guiding Chinese clients through patent matters in the United States. Under the leadership of reliable China IP head Scott Palmer, who joined the firm in 2018, the practice has achieved great success. Having spent his nearly two decadelong legal career in the country, the fluent Mandarin speaker has acquired solid local knowledge, which serves him well in his work on in-bound enforcement matters. Yingli Wang’s practice focuses on the biotechnology and polymer/material industry. Wang has led the patent practice since 2019.
Ropes & Gray LLP
Now with an on-the-ground presence across three continents, Ropes & Gray has been tending to clients’ every IP need for more than 150 years. Managing partner Geoffrey Lin oversees the highly regarded Shanghai office. His in-depth life sciences and hightech sector knowledge has earned him deep respect from his peers and he can often be found dispensing effective licensing and negotiations advice in cases involving many millions of dollars. Global companies, as well as famous domestic businesses, enjoy the benefits of his outstanding commercial sense.
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Individuals: prosecution George Chan Simmons & Simmons LLP Tony Chen Jones Day Xiaofan Chen AWA Asia Charles Gray Kilpatrick Townsend & Stockton LLP Oliver Lutze Spruson & Ferguson Yalei Sun Morgan, Lewis & Bockius LLP Ningling Wang Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Xiang Wang Orrick, Herrington & Sutcliffe LLP Yingli Wang Perkins Coie LLP Jian Xu Gowling WLG
Rouse
In 1993, Rouse became the first global IP firm to set up an office in China. It now has a strong presence across the country, with offices in Beijing, Guangzhou, Shanghai and Shenzhen. The side has traditionally catered to a largely international clientele, but in recent years the team of 20 has been strengthening its domestic client base, which now includes numerous high-tech companies. Together with Lusheng Law Firm, Rouse provides the full gamut of IP services, including prosecution, litigation and transactions. Ling Jin is favoured by large international corporations for her nuanced IP portfolio analyses and multi-jurisdicitonal patent landscape searches. A relentless litigator, Sharon Qiao has over 20 years of experience in intellectual property. She tackles complex contentious issues, most recently one for Hansgrohe SE which was selected among the top 10 IP cases of 2019 by courts in China’s commercially important Zhejiang province.
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China: Foreign Individuals: transactions Highly recommended Tony Chen Jones Day Weishi Li Covington & Burling LLP Geoffrey Lin Ropes & Gray LLP Recommended Nick Beckett CMS China George Chan Simmons & Simmons LLP Ling Jin Rouse Ryan McCarthy Fish & Richardson
exclusive alliance partner Beijing Pat SF Intelectual Property Agency. Patent prosecution is where the firm really stands out from the competition. Life sciencesfocused Oliver Lutze spent 15 years working in-house for a large German pharmaceutical company, experience that he now utilises at Spruson & Ferguson where he is the China country manager and an integral part of the chemical and life sciences team.
Other recommended experts
Timothy Bickham oversees Steptoe & Johnson LLP’s China IP and litigation group. Representing some of Asia’s largest companies, he handles high-stakes disputes before the ITC and district courts, navigating cross-border matters with ease. Harold Johnson solves patent disputes at Brinks Gilson & Lione’s Shenzhen office, where he is the managing partner. Splitting her time between San Francisco and Shanghai, Covington & Burling LLP’s Weishi Li is a recognised expert on life sciences and pharmaceutical-related transactional matters. Over at Fish & Richardson, Ryan McCarthy is an invaluable asset to Chinese businesses in need of guidance on US patent issues.
Ningling Wang Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Christine Yiu Bird & Bird LLP
Simmons & Simmons LLP
A physical presence in Shanghai, Beijing, Shenzhen and Hong Kong combined with 40 years of experience in the region makes Simmons & Simmons an obvious choice for foreign clients, including Fortune 500 companies, when it comes to patent services. Design patents are a particular forte. Multinational corporations have no qualms about leaving their valuable intangible assets in the capable hands of George Chan, while clients in the pharmaceutical industry rely on his extensive experience in life sciences and licensing matters.
Spruson & Ferguson
Well known in Asia-Pacific IP circles, Australian firm Spruson & Ferguson is a name synonymous with quality. The Beijing patent team consists of eight highly qualified patent professionals who collaborate closely with colleagues internationally and with
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Bickham, Timothy Partner – Steptoe & Johnson LLP tbickham@steptoe.com | www.steptoe.com
Timothy Bickham is a first-chair litigator who represents companies in US patent infringement and trade secret cases. He focuses on competitor litigation and ‘bet the company’ cases where issues are critical in both the courtroom and the boardroom. For more than 20 years, Mr Bickham has litigated cases in district courts throughout the United States, including in Delaware and Texas. He has also filed and defended Section 337 claims before the US International Trade Commission. Protecting key IP assets often requires litigation in multiple forums and Mr Bickham has experience leading multi-jurisdiction litigation. Through his work in notable cases and his many appearances at distinguished seminars and speaking engagements, Mr Bickham is widely recognised as a leader in complex litigation, even when the issues extend beyond intellectual property. Based in Beijing since 2019, Mr Bickham serves as the firm’s managing director of China intellectual property and litigation. From offices in Beijing and Washington DC, Mr Bickham continues his US litigation practice while deepening his connections with companies, universities and other IP stakeholders in China. Mr Bickham’s commitment to working with Chinese companies is reflected in his prestigious speaking engagements in Beijing, Shenzhen, Guangzhou and Hangzhou. Each year, Mr Bickham is an invited speaker at Tsinghua University Law School and various IP organisations in China. Mr Bickham received his LLM from the George Washington University Law School; his JD from the University of Missouri, Columbia; and a BA (chemistry and philosophy) from William Jewell College. He is a member of the Bar of the District of Columbia and is registered to practise before the USPTO. In China, Mr Bickham can be reached at the firm’s Beijing office: • Address: China Central Place, 29th Floor, Tower 2, 79 Jianguo Road, Chaoyang District, Beijing 100025 • Tel: +86 10 5834 1000
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Steptoe & Johnson LLP 1330 Connecticut Avenue NW , Washington DC 20036, United States T +1 202 429 5517 Professional associations • AIPLA • Federal Circuit Bar Association
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Hong Kong
Country Namereview of Hong Kong’s patent law, new changes to the patent system came Following a five-year into effect in December 2019. The updated system introduces an original grant patent (OGP), allowing for the direct filing of standard patent applications. The previous re-registration system, under which applicants can first file an application with the China National IP Administration, the UK Intellectual Property Office or the EPO, remains in place. The amendments are an attempt by the government to encourage innovation in Hong Kong. However, so far few have taken advantage of the OGP. Time will tell whether it will gain increasing traction or whether applicants will continue to favour the old method. Baker McKenzie
A force to be reckoned with on the international stage, Baker McKenzie maintains a firm hold on its spot in the IAM Patent 1000. The well-rounded Hong Kong team covers a wide variety of industries and work areas, collaborating with colleagues in mainland China through a joint operation with law firm FenXun Partners to offer comprehensive IP services across Greater China. Contentious issues and technology transfers are among the outfit’s areas of specialty. Baker McKenzie has taken on a leading role in the fight for gender equality and LGBT+ issues, participating in several global and regional initiatives. Isabella Liu’s cross-border expertise and negotiation skills make her a valuable asset to well-established multinationals and start-ups alike. Liu leads the AsiaPacific healthcare practice group, as well as the China and Hong Kong group for patent and regulatory work.
Bird & Bird LLP
The success of global heavyweight Bird & Bird’s integrated Hong Kong and China practice is undeniable. A team of over 50 IP professionals offers seamless services to respected local and international clients, including the City University of Hong Kong. The side was also the only external adviser to the Hong Kong government on its project to reform the city’s patent system. Matthew Laight leads a team celebrated for its technically savvy individuals, most of whom are bilingual, with an outstanding track record in high-tech patent matters. Crossborder litigator Ted Chwu’s strengths are his “good knowledge, efficiency and how he always tries to accommodate requests and understands problems”. With a background in IP prosecution, Chwu is also a highly competent portfolio manager, “providing technical advice in a clear and concise manner while simplifying any complex issues. He will always find a way to amend claims so they can be accepted by examiners, foresees potential problems and then offers sounds advice and solutions.” As head of the Asia life sciences and healthcare practice, Alison Wong supports companies in the pharmaceutical,
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Firms: litigation Highly recommended Bird & Bird LLP Deacons Recommended Baker McKenzie Hogan Lovells Norton Rose Fulbright
biotech and medical device industries, handling everything from enforcement in China to transactional issues.
Deacons
Claiming the top spot in all three tables once again, Deacons has cemented its status as a beacon in Hong Kong intellectual property. The expertise of more than 60 “knowledgeable and helpful” patent practitioners covers a wide range of technical areas, attracting the attention of several of the largest household names in the city, as well as leading multinationals. Perfectly situated to advise on matters in the Greater China region, “Deacons does an excellent job prosecuting patent applications and advising on potential infringement matters in Hong Kong and China”, with every piece of work based on “thorough analysis”. Head of the patents and designs group Catherine Zheng commands respect and has been instrumental to the success of numerous landmark mainland China cases. Charmaine Koo coheads the IP department and recently took the lead on a rare patent litigation case for the PCCW Group. Before delving into law, Ian Liu developed in-depth knowledge of IT and fintech, which serves him well in his current role. “Ian Liu is a leader in Hong Kong’s
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Hong Country Kong IP sector and very active in Chinese matters. He is an intelligent, thoughtful litigator with a good instinct for steering cases toward a successful conclusion.” Jeffrey McLean’s background as an examiner at the Australian Patent Office has given him unique insights into the examination process. Foreign associates “routinely utilise Shuwei Tang for patent prosecution in China, as well as dealing with local manufacturers and infringement issues. Shuwei’s expertise and local knowledge have been critical in maintaining client relationships in the region and we would highly recommend him to anyone seeking IP advice in Hong Kong or Asia.” Finally, Daniel Holt “has a wealth of experience in Chinese patent prosecution and a great team at Deacons supporting him”. Holt is praised for his technical know-how, knowledge of diverse fields and ability to “make the patent prosecution process in China a lot easier and more predictable”. “Dan is reliable and always delivers high-quality work,” reports one client. “He also understands how to balance the optimal and the practical considerations, which is a skill many lack.”
Eagle IP Ltd
Focusing on technology-related intellectual property, boutique firm Eagle IP is praised for its “prosecution strategies and options that are very clearly explained through smooth discussions”. Roughly half of the work handled by Chinese and US patent agents and attorneys is original patent drafting and global filing. The group caters to a number of local highprofile clients, protecting their patents in China and elsewhere by working closely with colleagues in Shenzhen and Macau. A “leading expert in the fields of patent filing and prosecution”, Jacqueline Lui impresses all she meets with her “professionalism and expertise”. Lui’s experience in the United States, Hong Kong and Singapore has made her well versed in US IP law and international standards – something that she combines with deep local knowledge to provide “helpful in-depth patent filing strategies in technical areas”. Another US patent attorney, Jennifer Che’s time in-house at Vertex Pharmaceuticals and Axcella has made her acutely “aware of the commercial considerations that are important to a business without us having to articulate them. She always delivers strategic advice to meet these objectives.” As one loyal customer puts it: “Jennifer gives us confidence that the IP portfolio is being managed properly and there is no question that she gives her full focus to the client’s needs.”
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Firms: prosecution Highly recommended Bird & Bird LLP Deacons Eagle IP Ltd Letters & Thoo
See p250
Marks & Clerk Recommended Baker McKenzie Hogan Lovells Norton Rose Fulbright Spruson & Ferguson Wilkinson & Grist
Firms: transactions Highly recommended Bird & Bird LLP Deacons Recommended Baker McKenzie Hogan Lovells Letters & Thoo
See p250
Mayer Brown Norton Rose Fulbright
Hogan Lovells
Hogan Lovells’ Hong Kong office is part of an expansive international network advising multinationals on all areas of intellectual property. Through an association with Chinese firm Fidelity, it offers direct Chinese legal advice and litigation
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Country Hong Kong Luminaries Ella Cheong ELLALAN Henry Wheare Nixon Peabody CWL
Individuals: litigation Highly recommended Andrew Cobden Hogan Lovells Matthew Laight Bird & Bird LLP Catherine Zheng Deacons Recommended Justin Davidson Norton Rose Fulbright Haifeng Huang Jones Day Gabriela Kennedy Mayer Brown Charmaine Koo Deacons Chiang Ling Li Jones Day Ian Liu Deacons Alison Wong Bird & Bird LLP
services. Life sciences and pharmaceuticals are among Hogan Lovell’s specialties, although the group is thoroughly familiar with telecommunications and electronics as well. Relying on 30 years of patent litigation and commercial IP experience, Hong Kongbased Andrew Cobden gets involved in both local and mainland China patent cases. He is currently
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helping Otsuka Pharmaceutical enforce two of its second medical use invention patents relating to valuable pharmaceutical Abilify.
Letters & Thoo
IP boutique Letters & Thoo has a knack not just for protecting intellectual property, but for building lasting client relationships. This is evident from the overwhelming amount of positive feedback that it gains from patent owners with first-hand experience of its work: “To be frank, I learned more about IP strategy in a single meeting with them than dealing with other firms over a 17-year period. You quickly realise that these guys do things differently.” “I have felt genuinely blessed to have formed a strategic alliance with them. I consider them critical partners to my operational activities.” Attuned to rights holders’ changing needs, the team has recently focused on growing its knowledge of AI-related IP issues. “Letters & Thoo stand out among the best of the best due to their resolve to understand the commercial and legal issues facing a business, as well as for their outstanding technical expertise and availability when needed urgently.” “When it comes to intellectual property, the need for a solid grasp of local conditions, laws and culture, and other subtleties as it pertains to the market in which you and the value that a solid IP strategy can give is frankly a huge asset that can change the game. If you are an innovative company which thrives on the constant need to innovate, Timothy Letters and Laurence Thoo are your people. I endorse them without reservation.” The founders are also the chosen advisers of local universities and government entities such as the Hospital Authority. See p250 for firm profile
Marks & Clerk
“A solid professional substantive patent firm,” Marks & Clerk Hong Kong’s success can be attributed to a diverse team of practitioners from eight jurisdictions. Their combined knowledge enables them to draft and prosecute patents in a wide range of technical areas. The group places great importance on working with clients to gain an understanding of how best to utilise IP rights to add value to their business. Mike Flint and life sciences group leader Michael Lin are two “patent attorneys with very good drafting and prosecution skills”. Both are heavily involved in the wider IP community through regional and international IP organisations.
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Hong Country Kong Individuals: prosecution
Recommended
Highly recommended
Ewan Bewley inCompass IP
Ted Chwu Bird & Bird LLP
Jennifer Che Eagle IP Ltd
Mike Flint Marks & Clerk Timothy Letters Letters & Thoo
Andrew Cobden Hogan Lovells See p82
Michael Lin Marks & Clerk Jacqueline C Lui Eagle IP Ltd Jeffrey McLean Deacons Laurence Thoo Letters & Thoo
Mayer Brown
Full-service outfit Mayer Brown is recognised for its expertise in the technology, media and telecommunications (TMT) field. As Chinese businesses increasingly look to expand into foreign markets, Mayer Brown helps them to achieve victory after victory in Section 337 litigations at the US International Trade Commission. Co-chair of the firm’s global IP group and head of the Asia IP and TMT group Gabriella Kennedy is a valued partner of the Hong Kong Science and Technology Park, where she is a panel member providing legal support to the Leading Enterprises Acceleration Programme. Kennedy also serves on the Hong Kong International Arbitration Centre Panel of Arbitrators in IP disputes and was recently appointed as an IP arbitrator.
Norton Rose Fulbright
“Norton Rose Fulbright has a solid and reputable practice, the reputation of which is built upon the commercial know-how of its senior lawyer Justin Davidson.” The Hong Kong team advises on the acquisition, exploitation, use and enforcement of IP rights worldwide, backed by a well-connected network of 20 offices spread across five continents. The firm is an indispensable partner to companies in the life sciences, pharmaceuticals and biotech sectors, including GlaxoSmithKline and Pfizer. City
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Justin Davidson Norton Rose Fulbright Andrea Fong Wilkinson & Grist Charles Ho Barron & Young Intellectual Property Ltd Daniel Holt Deacons Robert Jackson Spruson & Ferguson Cedric Lam Eversheds Sutherland (International) LLP Hans Lee You Yi International Intellectual Property Services Limited Isabella Liu Baker McKenzie Shuwei Tang Deacons
University of Hong Kong and Hong Kong’s Applied Science and Technology Research Institute are two big local names that have recently approached Davidson for his “thorough and considered advice”.
Spruson & Ferguson
“One of very few firms in Hong Kong that can handle a substantial volume of work in-house,” Spruson & Ferguson specialises in offering integrated IP services throughout the Asia-Pacific region. The technically talented patent team in Hong Kong leaves clients “very happy” – practitioners offer expert help to local and international businesses with the support of a wealth of in-house resources, “providing their
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Country Hong Kong expertise across multiple jurisdictions”. Chemical and life science group leader Robert Jackson ensures that “all client matters are taken seriously and the quality of work is above that of their peers”. Jackson is a registered US patent attorney who prepares, drafts and prosecutes patents with flair.
Wilkinson & Grist
Wilkinson & Grist has had over a century to perfect its IP services, with local and foreign business owners alike reaping the benefits. A dedicated patent team based in the firm’s Hong Kong and Beijing offices expertly prosecutes patents, manages portfolios and handles litigation and commercialisation issues. The Hong Kong Polytechnic University and Hong Kong University of Science and Technology are among the side’s local client base. Head of the IP practice group Andrea Fong and experienced IP practitioner Mena Lo are two names to look out for.
Other recommended experts
Over at Hong Kong Science Park, European and chartered UK patent attorney Ewan Bewley and his partner, trans-Tasman patent attorney Owen Gee, lead inCompass IP Ltd – the side specialises in patent drafting for companies of all sizes. Ella Cheong is an icon of the eponymous Ella Cheong & Alan Chiu, Solicitors & Notaries. “She is a legendary person in Hong Kong and one of the best attorneys in Asia.” The firm is led by IT forensics expert Alan Chiu. Jonathan Chu of CMS-associated Lau, Horton & Wise has broad horizons – he practices in multiple IP areas, across the contentious/non-contentious divide and in Hong Kong and China – making him a percipient adviser. Charles Ho, a dependable adviser to local start-ups in the Hong Kong Science Park and a close partner of foreign firms, captains Barron & Young Intellectual Property Ltd. Since he shifted his focus to IP transactions 12 years ago, Lewis Ho of Loeb & Loeb LLP has concentrated on licensing negotiations and IP due diligence for the likes of the Hong Kong Science and Technology Parks Corporation and a number of businesses in the life sciences and technology space. All-round IP expert Haifeng Huang hails from Jones Day, where he handles contentious patent issues and transactions. At the helm of Eversheds Sutherland (International) LLP’s latest IP offering in Hong Kong, Cedric Lam works on a range of patent matters, particularly in the transactional space. Since leaving FitzGerald Lawyers, Hans Lee has been focusing on prosecuting patents at his patent agency, You Yi International Intellectual Property Services Limited. Jones Day’s Chiang Ling Li tackles cross-border, multibillion-dollar acquisitions and
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Individuals: transactions Alan Chiu ELLALAN Jonathan Chu Lau, Horton & Wise LLP, in Association with CMS Hasche Sigle, Hong Kong LLP Ted Chwu Bird & Bird LLP Andrew Cobden Hogan Lovells Justin Davidson Norton Rose Fulbright Lewis Ho Loeb & Loeb LLP Gabriela Kennedy Mayer Brown Cedric Lam Eversheds Sutherland (International) LLP Timothy Letters Letters & Thoo
See p82
Ian Liu Deacons Isabella Liu Baker McKenzie Alison Wong Bird & Bird LLP Catherine Zheng Deacons
negotiations involving pharmaceutical companies. Henry Wheare dispenses sage advice to companies embroiled in patent disputes. He can be found at Nixon Peabody CWL.
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Letters, Timothy Partner – Letters & Thoo timothy.letters@lettersthoo.com | www.lettersthoo.com
Timothy Letters is a partner of Letters & Thoo, a specialist IP practice based in Hong Kong. He has practised in Hong Kong for more than 15 years, and has extensive experience of patent, trademark and design matters in Hong Kong, China and Southeast Asia. Areas of patent and trademark practice Dr Letters acts for local and international clients, including well-known international corporations, the Hong Kong Hospital Authority, Hong Kong universities and research institutes and manufacturing and design companies with operations spanning China and Hong Kong. His practice covers mechanical and manufacturing technologies, electronics and telecommunications technologies, nanotechnology, chemical engineering and pharmaceuticals. In addition to his patent drafting, prosecution and advisory practice, Dr Letters’ practice strongly focuses on: • commercial cross-border patent filing and prosecution strategies for international corporations with manufacturing operations in China and Hong Kong; • pharmaceutical freedom-to-operate patent clearance in Hong Kong; • advice regarding tendering and government procurement in compliance with World Trade Organisation requirements relating to intellectual property; • trade fair IP rights administrative actions in Hong Kong, with particular expertise in strategic enforcement of standard-essential patent rights; • freedom-to-operate issues in Hong Kong, China and Southeast Asia; and • cancellation actions against bad-faith trademark registrations in China and Hong Kong.
Letters & Thoo Suite 1008 Prosperity Millennia Plaza 663 King’s Road Quarry Bay Hong Kong T +852 2488 9602 F +852 2488 9648 See firm profile p250 Professional associations • APAA • FICPI • INTA
Qualifications and memberships Dr Letters is a registered Australian and New Zealand patent attorney and a registered Australian trademark attorney. He holds a master’s degree in IP law, a PhD in biomedical engineering, and bachelor’s and master’s degrees in mechanical and orthopaedic engineering. He is a member of the International Federation of Intellectual Property Attorneys, a fellow of the Institute of Patent and Trademark Attorneys of Australia and a member of the International Trademark Association. He is also a longstanding member of the Asian Patent Attorneys Association Hong Kong, having served on its Patents and Designs Standing Committee, which regularly discusses issues pertaining to international patent law, practice and policy with the Hong Kong government.
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India
The Indian Patent Office and local courts were quick to adapt to new conditions under covid-19 and early on adopted videoconferencing as a tool for conducting hearings in urgent cases. Strengthening international cooperation, the country signed a major memorandum of understanding with the United States, as well as a Patent Prosecution Highway agreement with Japan. Practitioners report that the government’s efforts to streamline Patent Office procedures are beginning to bear fruit as newly hired, well-trained examiners are working aggressively to clear a backlog of applications, giving confidence to local and international stakeholders alike. Somewhat more concerning is the backlog of Patent Office appeals before the Intellectual Property Appellate Board (IPAB). The board, which has often been unable to act due to a lack of staff, resumed functioning in 2020 when the Indian Supreme Court extended the term of its chair. More recently, the government has introduced a bill to abolish the IPAB entirely and hand its functions to the high courts. It remains to be seen whether such a move would constitute a step forward in terms of IP protection, but chaos in the appeals space makes it all the more important that patent filers secure the best help possible when preparing applications.
Altacit Global
With offices in Bangalore, Chennai, Cochin, Coimbatore and Hyderabad, Altacit Global caters to a clientele of mainly local companies. As testament to its excellence, the comparatively young IP and corporate law specialist firm has already acquired ISO 9001:2008 certification. Founder Sudhir Ravindran holds degrees in manufacturing systems engineering and law. He has built a team of technically savvy individuals who guide businesses through every step of the patent process with a steady hand.
Anand and Anand
Considered “one of the best firms in India for IP matters” by rights holders locally and abroad, Anand & Anand is the only outfit to feature at the top of both the litigation and prosecution tables. The practice’s unrivalled reputation derives from the hard work of the patents and design team, whose members have dedicated themselves to perfecting their service offerings over more than four decades. Throughout his illustrious career, “eminent lawyer” Pravin Anand has made invaluable contributions to the Indian IP scene while representing some of the world’s largest corporations in numerous landmark cases. A respected voice in the country when it comes to FRAND matters, Vaishali Mittal is credited with prevailing in India’s first post-trial SEP judgment. Mittal has recently been working alongside Pravin in high-stakes litigation for a leading pharmaceutical company. Dhruv Anand makes his second appearance in the IAM Patent 1000 this year. His dispute resolution and litigation skills are regularly sought out by companies such as Monsanto and Pharmacyclics, as well as several luxury brands. Neeti Wilson is a force to be reckoned with in the non-
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contentious space. A passionate defender of patent rights and the environment alike, she participates in regional and international conferences to spread awareness of IP and biodiversity issues. One of the most successful female practitioners in the market, Archana Shanker leads the patents and design team. See p188 for firm profile
Chadha & Chadha Intellectual Property Law Firm
With most practitioners possessing both technical and legal qualifications, Chadha & Chadha handles patent matters across a wide range of industries and technical areas. As well as being highly capable, its experts are “a pleasure to work with because of their service-oriented mindset, efficiency, professional expertise and understanding of IP law”. “Clear and quick in corresponding, down to earth and reasonably priced,” the firm is an excellent choice for clients – boasting a 98% success rate in obtaining patents grants on their behalf. “The most trustworthy patent attorney in India by far,” says one foreign associate about international practice head Chetan Chadha. Meanwhile, “outstanding” Tarun Gandhi drafts highly complex patent applications with confidence. Gandhi, who oversees the patent prosecution and enforcement practice, can be counted on to “respond promptly if there is something that needs urgent attention”. See p200 for firm profile
De Penning & De Penning
De Penning & De Penning has had plenty of time to fine-tune its IP practice, which statistics show is responsible for the largest number of office actions month after month. Established in 1856, the firm is
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India Firms: litigation Highly recommended Anand and Anand
See p188
Singh & Singh Recommended K&S Partners Krishna & Saurastri Associates LLP
See p236
Lakshmi Kumaran & Sridharan Perfexio Legal
See p278
Remfry & Sagar RK Dewan & Co
See p282
S Majumdar & Co Saikrishna & Associates
known for having filed the first patent, trademark and design in the country. From offices in Chennai, Delhi, Kolkata and Mumbai, its IP practitioners draft patent specifications and applications for multinationals and local clients alike. David Solomon, a key contributor to the outfit’s success, has a background in engineering.
Jupiter Law Partners
“Promptness, honesty and skill” characterise Jupiter Law Partners, which makes its sophomore appearance in the IAM Patent 1000 this year. The Gurgaon-based boutique “way surpasses other firms in India” with its “advanced and technologically qualified attorneys” who attract clients from across the globe, including a famous Japanese electronics company. Founder and Indian Institute of Technology Khargpur graduate Sujit Thakur is “outstanding in performance, extremely responsive, commercially savvy and has very sound legal knowledge”. Thakur, who has experience working at a US law firm as well as another firm ranked in this chapter, has been assisting patent owners for 17 years.
K&S Partners
K&S Partners walks the walk when it comes to running a merit-based, responsible practice, as clients and foreign associates will gladly confirm. “A leader is only
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as good as his team, and the team at K&S Partners provides exemplary, time-sensitive services. Clear, sophisticated reports are provided soon after tasks have been completed, and they are sensitive to the needs of small businesses with limited budgets.” The side has a no-family employment policy and has continuously attracted and attained professionals whose “impressive quality of service and strong procedural know-how” keep clients coming back for more. Hyderabad office head Goutam Bhattacharyya is “unique among Indian attorneys in terms of the level of skill and commercial nous he brings to the table”. Beyond his professional capabilities, Bhattacharyya is regarded as a “highly ethical, caring person”. Biotech and biosciences-focused Ravi Bhola chairs the patent practice while playing an active role in the firm’s corporate social responsibility initiatives. Amrish Tiwari makes light work of both contentious and non-contentious matters in the fields of chemistry and pharmaceuticals. As a patent owner with considerable industry experience herself, life sciences guru Deepa Kachroo Tiku brings a fresh perspective to the team. Before joining K&S Partners, patent and design litigation practice leader Sanjeev Kumar Tiwari worked as an independent commercial and corporate litigator, earning him valuable experience that complements his physics background and technical expertise.
Khaitan & Co
The 16-person patent team at corporate law set Khaitan & Co operates as a boutique firm within a full-service practice. A number of well-known Indian and international companies feature on its client list. In the past year alone, the team has been approached by big names such as Alibaba Group, the Indian Institute of Technology and Sanofi Aventis. Adheesh Nargolkar takes the lead on complex patent matters of all sorts, contributing to Indian IP practice through his involvement in INTA policy initiatives and as a member of the association’s Trademark Office Practices India Subcommittee.
Khurana & Khurana, Advocates and IP Attorneys
IP and commercial firm Khurana & Khurana’s high-quality output has earned it ISO 9001:2005 certification. Clients “feel comfortable assigning work” to the more than 130 practitioners that handle all areas of intellectual property with ease and display outstanding strength in patent prosecution. Tarun Khurana and Swapnil Sanap are prominent experts in their field. A software engineer and head of the Pune office, Sanap enters the rankings this year following an overwhelming amount of positive
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India Firms: prosecution
Krishna & Saurastri Associates LLP
See p236
Highly recommended
Lall & Sethi
See p242
Anand and Anand
See p188
K&S Partners Lakshmikumaran & Sridharan
Legasis LexOrbis
See p240
Remfry & Sagar
See p252
LS Davar & Co Obhan & Associates
See p266
PatentWire
See p274
Recommended
RAHUL CHAUDHRY & PARTNERS
See p280
Altacit Global
S Majumdar & Co
Chadha & Chadha Intellectual Property Law Firm See p200
Sagacious IP
RK Dewan & Co
See p282
De Penning & De Penning Jupiter Law Partners Khaitan & Co Khurana & Khurana, Advocates and IP Attorneys
feedback from happy customers. “Mr Sanap efficiently helps secure IP rights through technical and legal input while going beyond the required level of professional assistance to assist us on a personal level.” “He is always putting his soul into his work,” another collaborator remarks, adding: “He has good social skills and a positive attitude.” Besides regularly working with large corporations such as Huawei, Sanap remains attuned to the unique challenges facing small business owners, one of whom tell us: “He has referred us to different government schemes which reduce the financial burden of drafting a patent application on start-ups like ours.”
Krishna & Saurastri Associates LLP
Over at Krishna & Saurastri, a continuously expanding team of IP and prosecution specialists lend their services to everyone from government agencies to reputable research institutions. With 60 years’ experience, top-of-the-line IT systems and advanced technical understanding, the side is well equipped to handle any challenge coming its way. Business owners with their eyes on India should keep Manish Saurastri in mind when seeking patent advice. See p236 for firm profile
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Saikrishna & Associates Singh & Singh SKS Law Associates
See p292
SS Rana & Co Subramaniam & Associates
Lakshmikumaran & Sridharan
Clients of Lakshmikumaran & Sridharan benefit from the multitalented team’s comprehensive knowledge of IP law, science and engineering. A seasoned litigator with more than 40,000 cases under his belt, Varadachari Lakshmikumaran founded the fullservice firm over three decades ago. A fellow litigator and former civil servant, Parthasarathy R played an instrumental role in building the international trade practice before taking on the role of head of intellectual property. Malathi Lakshmikumaran’s expertise lie in biochemistry and molecular biology – her keen business sense never failing to impress patent owners. Ankur Garg and Prashant Phillips focus on drafting software, telecoms, electronics, electrical engineering and wind energyrelated patents. See p240 for firm profile
Lall & Sethi
Lall & Sethi’s strong presence in South Asian Association for Regional Cooperation countries makes it a solid option for innovators looking to protect their patents in the region. Not only do
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India Varadachari Lakshmikumaran Lakshmikumaran & Sridharan
Individuals: litigation Highly recommended Pravin Anand Anand and Anand
See p93
Pankaj Soni Remfry & Sagar Recommended Dhruv Anand Anand and Anand
See p93
Vaishali Mittal Anand and Anand
See p101
Essenese Obhan Obhan & Associates
See p102
Abhai Pandey LexOrbis
See p103
Parthasarathy R Lakshmikumaran & Sridharan
Samaresh Chakraborty DP Ahuja & Co
Saikrishna Rajagopal Saikrishna & Associates
Sidharth Chopra Saikrishna & Associates
Manish Saurastri Krishna & Saurastri Associates LLP
Saya Choudhary Singh & Singh
Archana Shanker Anand and Anand
Mohan Dewan RK Dewan & Co
See p96
Bitika Sharma Singh & Singh
Rajeshwari Hariharan Rajeshwari & Associates
Amrish Tiwari K&S Partners
Sanjay Kumar Perfexio Legal
Sanjeev Kumar Tiwari K&S Partners
practitioners possess extensive IP knowledge, but all work goes through rigorous quality controls to ensure that it adheres to the high standards that the firm has become known for. Modern IT systems and IP management software developed in-house help to achieve this. Leading the team is managing partner and patent department head Anju Khanna. See p242 for firm profile
Legasis
Legasis Partners takes a commercial approach to IP protection, offering comprehensive patent services from offices in Mumbai, Pune, New Delhi and Hyderabad. Director Suhas Tuljapurkar is the person in charge of overseeing the entire operation.
LexOrbis
One of the fastest growing IP firms in India, the “reliable” LexOrbis draws on the expertise of a wellrounded team of 180 members. This diverse group comprises experts from all of India’s 27 states with
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See p104
legal and technical qualifications to their name. Strategist Manisha Singh has played an important role as an adviser on Indian IP policy. Singh takes on the most complex cases to pass through the firm, while her newly ranked colleague Abhai Pandey focuses his practice on litigation and enforcement. Clients “have no hesitation rating Mr Pandey and his team very highly, as the efficient and productive IP professionals provide quality services in terms of communication, timeliness, drafting claims and patent applications, and more”. See p252 for firm profile
LS Davar & Co
“Diligent, proficient, responsive, easy to approach and entertaining any patent-related query at any time” is how one client of LS Davar describes the well-established, first-generation Indian firm. Since opening its headquarters in Kolkata almost 90 years ago, the outfit has extended its reach to New Delhi and Bangalore. Its 50 patent specialists tackle matters
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India Individuals: prosecution Lalit Ambastha PatentWire
See p92
Goutam Bhattacharyya K&S Partners
Tarun Gandhi Chadha & Chadha Intellectual Property Law Firm See p98 Ankur Garg Lakshmikumaran & Sridharan Ashwin Julka Remfry & Sagar
Ravi Bhola K&S Partners Chetan Chadha Chadha & Chadha Intellectual Property Law Firm See p95 Samaresh Chakraborty DP Ahuja & Co
Shruti Kaushik PatentWire Anju Khanna Lall & Sethi
Malathi Lakshmikumaran Lakshmikumaran & Sridharan
Joshita Davar Khemani LS Davar & Co
Subhatosh Majumdar S Majumdar & Co
Disha Dewan RK Dewan & Co
Ankush Mehta Mehta & Mehta
Mohan Dewan RK Dewan & Co
See p96
Niti Dewan RK Dewan & Co
Ranjna Mehta-Dutt Remfry & Sagar
See p97
Adheesh Nargolkar Khaitan & Co
Ramesh Dhawan RAHUL CHAUDHRY & PARTNERS Calab Gabriel Lex IP Care
related to electronic, mechanical, life sciences and pharmaceutical inventions. The side continues to go from strength to strength under the leadership of Joshita Davar Khemani.
Obhan & Associates understands the importance of building long-lasting client relationships. As a result, multinationals such as Mitsubishi Heavy Industries entrust it with their entire patent portfolio year after year. Indian unicorn Pine Labs is another company won over by the team’s sound legal strategies and commercial advice. Focusing on corporate and IP law, the firm operates out of three offices located in New
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See p100
Tarun Khurana Khurana & Khurana, Advocates and IP Attorneys
Rahul Chaudhry RAHUL CHAUDHRY & PARTNERS
Obhan & Associates
See p99
Essenese Obhan Obhan & Associates
See p102
Prashant Phillips Lakshmikumaran & Sridharan
Delhi, Pune and Bangalore. Managing partner and mechanical engineer Essenese Obhan’s services are highly sought after by Fortune 500 companies and some of India’s most prominent businesses alike. See p266 for firm profile
PatentWire
Patent drafting and prosecution, particularly in the areas of biotechnology, automobile, mechanical engineering, medical devices, electronics, pharmaceuticals and robotics, are PatentWire’s specialties. “Their attention to detail and how they make themselves available and take the time to
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India Satish Rana Prism Intellectual Property
services enriched with quality, punctuality and a deep essence of honest input”. See p275 for firm profile
Sudhir Ravindran Altacit Global
Perfexio Legal
Garima Sahney Saikrishna & Associates Swapnil Sanap Khurana & Khurana, Advocates and IP Attorneys Manish Saurastri Krishna & Saurastri Associates LLP Archana Shanker Anand and Anand
See p104
Manisha Singh LexOrbis
See p105
Vivek Singh Sagacious Advanced Research Center Inc David Solomon De Penning & De Penning Sunita K Sreedharan SKS Law Associates Hariharan Subramaniam Subramaniam & Associates Sujit Thakur Jupiter Law Partners
See p106
Deepa Kachroo Tiku K&S Partners Amrish Tiwari K&S Partners Neeti Wilson Anand and Anand
See p107
understand a client’s wants” keep customers coming back for more. “An expert on patent matters,” founder Lalit Ambastha “has done impressive work in creating IP awareness among researchers, micro and small industrial communities, and young students throughout India”. IP strategist Shruti Kaushik is another valuable member of the “excellent, highly recommended team”, which offers “professional
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Perfexio Legal enjoys a strong reputation in patent oppositions, especially in pharmaceutical matters. The patents and design group, whose legal and technological expertise attracts businesses looking for solid patent protection strategies, comprises more than 20 IP professionals, including attorneys specialising in electronics and software. Before founding Perfexio Legal, Sanjay Kumar was an IP and patent department head at two other firms ranked in the India chapter. See p278 for firm profile
RAHUL CHAUHDRY & PARTNERS
The “highly qualified attorneys” at RAHUL CHAUDHRY & PARTNERS, formerly Lall, Lahiri & Salhotra, are known to achieve outstanding results in terms of obtaining patent grants for clients. Their impressive success rate attracts a client base comprising mainly large Indian corporations, which benefit from the technical skill of practitioners based in Gurgaon and Delhi. The “customised services, detailed opinions on the best way forward and quick turnaround times that make their service approach special” leave rights holders “extremely happy and satisfied”. “An expert in aligning business interests with optimised legal strategies,” Rahul Chaudhry handles both contentious and non-contentious matters with ease. See p280 for firm profile
Remfry & Sagar
Headquartered in Gurgaon with offices in Bangalore and Chennai, Remfry & Sagar has been breaking new ground in intellectual property since 1827. With a top-notch clientele that encompasses a wide range of industries, the side has gained a reputation as “one of the top firms in India”. An ability to retain talent and provide quality services has resulted in up to 20% of inbound IP work passing through the firm on a yearly basis. Pankaj Soni likes to stay busy. As the person in charge of the patent litigation practice, as well as the US desk, he manages a group of patent prosecution attorneys who handle issues related to electrical, computer and mechanical inventions. Soni has accumulated plenty of international experience to boot. Beyond India, he is admitted to practise in New York and New Jersey. Life sciences practice leader Ranjna Mehta-Dutt is a competent all-rounder who has long made a name for herself in the field. Meanwhile, managing partner Ashwin Julka leads
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Country India the team of 250 professionals and more than 115 attorneys effortlessly. He also shares his expertise with the wider IP community as an active member of various international IP organisations.
RK Dewan & Co
The 75-strong team at RK Dewan & Co works diligently to maintain the high standards that clients have come to expect. As well as seven offices across India, the outfit has two liaison offices in China and the United States, allowing for personable services where patent owners have the opportunity to meet with attorneys face to face. Fortune 500 companies come to the firm for everything from prosecution to litigation and transaction work, as do innovative domestic businesses, which make up most of its client base. On top of that, the one-stop shop for IP issues has invested in a sizeable search practice. One of the most experienced individuals in Indian intellectual property, Mohan Dewan has advised more than 5,000 clients and drafted just as many patent specifications during his 50 years in the field. Head of patents Niti Dewan is a medical doctor whose technical expertise extends beyond life sciences to include automobiles, IT, nanotechnology and material sciences. Meanwhile, biotech specialist Disha Dewan confidently litigates complex patent infringement matters before the New Delhi courts. See p282 for firm profile
S Majumdar & Co
“Trustworthy” S Majumdar & Co’s team of 10 engineers, 28 technical staff and 48 lawyers can be found in West Bengal. The full-service IP firm has developed a stellar reputation in biotechnology and pharmaceuticals, earning it a large proportion of Indian patent opposition cases. Subhatosh Majumdar started out 20 years ago focusing on patent searches and drafting specifications. He now concentrates on contentious matters.
Sagacious IP
Clients that approach “professional and technically sound” Sagacious IP with their patent issues are met with practitioners who are “efficient, affordable and knowledgeable” in the field. The firm caters to everything from major multinationals to start-ups hailing from more than 45 countries. This international experience facilitates “good recommendations on future filings in various locations”. Vivek Singh “keeps the customer in mind in all interactions, and is receptive and open to feedback”.
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Saikrishna & Associates
With sharp practitioners described as “having sound legal understanding, as well as relevant experience”, it is no wonder that rights holders flock to Saikrishna & Associates for patent advice. What is more, “it is one of the rare Indian law firms with SEP experience”. A team of patent agents and attorneys with diverse technical backgrounds tends to the client’s every need, including that of Chinese smartphone giants Xiaomi, Oppo and Vivo. Litigation veteran Saikrishna Rajagopal is a respected player in the SEP and pharmaceutical space, while patent head Garima Sahney is known for her commercial sense. Sidharth Chopra is a key member of the dispute resolution and litigation practice.
Singh & Singh
The go-to firm for pharmaceutical and telecoms rights holders, Singh & Singh runs one of India’s most well-regarded contentious practices. In fact, it is one of only two firms to make it into the top tier for litigation in this chapter. The outfit recently added a complementary taxation, data protection and bankruptcy code practice. One of the first practitioners in the country to participate in SEP proceedings, Saya Choudhary helms the patent litigation group. Meanwhile, Bitika Sharma has dedicated herself to biotech and pharmaceutical patent litigation, and is proficient at dealing with competition law matters to boot.
SKS Law Associates
Since its establishment in 2007, strategically minded SKS Law Associates tackles contentious, non-contentious and licensing-related IP issues with aplomb. It is also involved in policy work, having helped draft a law on traditional knowledge protection. Before becoming CEO of the firm, Sunita Sreedharan ran the life sciences group at Anand & Anand. She previously worked at the High Court of Kerala at Ernakulam. See p292 for firm profile
SS Rana & Co
Passionate about spreading IP awareness in India, SS Rana & Co organises educational programmes that target young audiences around the country. IP and corporate law are the firm’s areas of specialty. A largely international client base relies on the patent team for advice on electrical, electronic, ICT and biotech issues. Managing partner Vikrant Rana is a name for the address book.
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Country India Subramaniam & Associates
Hariharan Subramaniam is the managing partner and founding member of “well-established” IP firm Subramaniam & Associates. The side enjoys an excellent reputation in Indian IP circles, which foreign associates attribute to the “formidable leadership of Hari” himself. Having passed on his extensive knowledge to younger generations through his teachings at institutions across the country,. “highquality technical advice, trustworthiness and reliable services” make for a powerful combination.
Other recommended experts
Kolkata-based Samaresh Chakraborty heads DP Ahuja & Co’s patent department and is the litigator of choice for many pharmaceutical companies. After four decades in the industry, Lex IP Care’s Calab Gabriel has countless achievements under his belt – one of which was founding and running K&S Partner’s patent team for over 20 years. Ankush Mehta of Mehta & Mehta possesses “deep knowledge of Indian IP provisions, which helps in overcoming the particularly tricky ones”. In the case of biotechnology and pharmaceuticals, “these areas require special care since Indian patent law is not in favour of pharma or medical technology patents. Ankush is very much up to date on the developments to that end and is really helpful in making reasoned decisions in regard to both national entry and prosecution. Ankush genuinely loves the challenge of getting complex cases through and is very proactive, rather than simply forwarding rejections.” Rajeshwari & Associates’ very own Rajeshwari Hariharan has been litigating pharmaceutical patents for more than 20 years. Over at Prism IP, Satish Rana’s practice focuses on drafting patent specifications holding up to Indian, European and US standards and formats. “Satish and his firm are wonderfully reliable, technically focused, responsive and cost-effective. Their search capabilities are excellent.” Another client raves: “What I particularly like about Satish and his team is the very short response times, direct communication and the overall uncomplicated cooperation. Satish is very interested in advancing IP case law in view of new technologies.”
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Ambastha, Lalit Founder – Patentwire lalit.ambastha@patentwire.co.in | www.patentwire.co.in
Lalit Ambastha is an IP attorney with more than 15 years of rich experience in IP prosecution, licensing, valuation and technology transfer. He has been dealing with patents and technologies across all major fields of invention for Indian and overseas clients. He has serviced applicants such as the Delhi Metro Rail Corporation, Honda, the Indian Institutes of Technology (IITs), Novartis, Viber, the Olympic Association, Indian Railways, Georgia Tech and many more, with a specialised focus on general utility, chemical, medical, immunological, biochemical, herbal, agriculture, biotechnological, pharmaceuticals, mechanicals, IT and electronics patents. Mr Ambastha co-founded Patentwire, a patent and technology consulting firm, in 2008, after gaining rich professional experience at leading IP law firms. His strong commitment to delivering highquality services and his team building capabilities have enabled him to quickly establish Patentwire as a high-end patent and technology services provider. Mr Ambastha holds an LLB and a post-graduate degree in science. He has also earned the prestigious Certified Licensing Professional credential. Mr Ambastha is a speaker and lecturer at the IP Awareness Programmes of the Indian Ministry of Micro, Small and Medium Enterprise and the Ministry of Skill Development and Entrepreneurship. He is also a guest lecturer at the IITs, Jamia Hamdard, the National Institute for Entrepreneurship and Small Business Development, the National Institute of Fashion Technology, the Institute of Company Secretaries of India, the National Institute of Technology, the Reinforce Intellectual Property Association (RIPA) and the Rajiv Gandhi National Institute of Intellectual Property Management, as well as a regular speaker at various conferences organised by public and private institutions. Mr Ambastha is a co-founder of IPBazzaar, a technology transfer company; InkPat, a patent illustration wing; and RIPA, a not-for-profit organisation in the domain of IP rights.
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Patentwire A199 Ground Floor Defence Colony New Delhi 110024 India T +91 98 1136 7838 F +91 11 2433 0039 See firm profile p274 Professional associations • APAA • AUTM • RIPA Sample client list • Dahua • Delhi Metro Rail Corporation • IKEA • Indian Institutes of Technology • Indian Railways • Novartis • Olympic Association • Padmini • Viber
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Anand, Dhruv Partner – Anand and Anand dhruv@anandandanand.com | www.anandandanand.com
Dhruv Anand is an attorney at law specialising in IP litigation and dispute resolution. Called to the Bar in 2006, Mr Anand primarily practises before the Delhi High Court. His work covers a wide array of IP cases, from luxury brands and fast-moving consumer goods trademark protection, to pharmaceuticals and life sciences, as well as copyright enforcement. With a career spanning over 14 years, he has been involved in significant copyright cases such as the DU photocopy case, enforcing the moral rights of a famous sculptor, representing copyright societies and more recently being involved in a dispute concerning singers’ right to receive royalty. Mr Anand has been instrumental in enforcing and upholding the patent rights of many pharmaceutical companies, including Bayer, Merck, Pharmacyclics and Eisai, whose cases have involved a wide spectrum of complex patent law principles. Career highlights Conferring well-known status to unconventional marks such as Christian Louboutin’s RED SOLE colour mark; protecting marks during the COVID-19 pandemic (Tommy Hilfiger Europe BV); establishing intermediary liability of e-commerce platforms for trademark/copyright infringement (Christian Louboutin v Nakul Bajaj); lawsuit enforcing artists’ moral rights (Jatin Das); further strengthening the recognition of the doctrine of transborder reputation (George V Records) Patent lawsuits transforming pharmaceutical and biotechnology enforcement regime in India (Pharmacyclics LLC v UoI, Eisai Co Ltd v Satish Reddy, Monsanto Technology v Nuziveedu Seeds) Mr Anand is the exclusive India contributor for many prestigious multijurisdictional practice area guides, including Copyright Throughout the World edited by Silke von Lewinski and Halsbury’s Laws of India.
Anand and Anand B–41 Nizamuddin East 1 Jaipur Estate New Delhi 110013 India T +91 120 405 9300 F +91 120 424 3056 See firm profile p188
Affiliations • INTA Working Group on Unconventional Trademarks • Standing Committee of the International Association for the Protection of Intellectual Property for IT and Internet • India Working Group of the International Chamber of Commerce Business Action to Stop Counterfeiting and Piracy initiative • Asian Coalition against Counterfeiting and Piracy Awards and accolades • Recognised as Future Legal Leader by India Business Law Journal • Recognised Practitioner in Asian Legal Business 40 under 40 Qualifications Mr Anand studied law at Amity Law School and went on to pursue an LLM in IP law at George Washington University in 2014.
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Anand, Pravin Managing Partner – Anand and Anand pravin@anandandanand.com | www.anandandanand.com
Awarded the Award of Merit of the International Association for the Protection of Intellectual Property (AIPPI) and recognised as the Most Innovative Lawyer by The Financial Times, Pravin Anand is a preeminent IP lawyer with 40 years’ experience. Some recent landmark decisions • Patent lawsuits that transformed pharmaceutical and biotechnology enforcement regime in India, including Merck v Glenmark; Roche v Cipla; the Monsanto case; and a large number of other suits on behalf of Pfizer, BMS and AstraZeneca – among others. • India’s first anti-anti-suit injunction order (InterDigital v Xiaomi); India’s first software patent law suit conferring protection (Ferid Allani case); the development of a damages culture in large number of cases that recognised not only punitive, but also compensatory, exemplary and aggravated damages (Philips v AmazeStore); India’s first post-trial SEP judgment (Philips v Bhagirathi); development of unique remedies such as the “Tree Planting Order” (Merck case); and an order benefitting adolescent girls (Hermes case). He is the co-author of Halsbury’s Laws of India on IP and a large number of chapters in leading IP publications. A former member of the INTA Board of Directors, Mr Anand has also served as the president of Indian groups of AIPPI, the Asian Patent Attorneys Association and the International Federation of Intellectual Property Attorneys. Spreading the message of intellectual property • The Raj Anand Moot Court Competition since 1997 • ‘Anaryst’ – an IP board game • ‘Brainchild’ – first IP-themed play • Adventures of Mr IP – an IP comic • IPONOMICS – a coffee table book
Anand and Anand B–41 Nizamuddin East 1 Jaipur Estate New Delhi 110013 India T +91 120 405 9300 F +91 120 424 3056 See firm profile p188 Professional associations • APAA • FICCI • WIPO
Recent awards and accolades • WTR Gold Band Lawyer – 2015-2021 • IBLJ A – List Lawyers & Icons – 2018-2020 • MIP IP Stars – Patent Star – 2015 2020 • Legal 500 Hall of Fame and Leading Individual – 2020 • IAM Patent 1000 – 2016-2020 • IAM Strategy 300 – 2016-2020 • ALB Top 15 IP Lawyers (India) – 2020 • Legal Era – Leading IP Lawyer of the Decade – 2020
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Chadha, Chetan Managing Partner – Chadha & Chadha Intellectual Property Law Firm chetan.chadha@iprattorneys.com | www.iprattorneys.com
Chetan Chadha is the managing partner of Chadha & Chadha, where he also heads the international practice. Mr Chadha has more than 20 years of experience in all areas of intellectual property, including patent prosecution, litigation, oppositions, licensing and transactions. He is recognised as a Recommended individual for Prosecution and Strategy in World Trademark Review (2021), an IP Star by Managing IP (2020) and a Recommended individual for Patent Prosecution by IAM Patent 1000 (2020). Trained in patent drafting by the International Federation of Intellectual Property Attorneys (FICPI), Mr Chadha has worked on several patent applications across diverse technologies including software and information technology, telecoms and electronics. A large part of his practice is focused on computer-implemented inventions and, more recently, on the advisory and strategic protection and enforcement of patents and applications in the display fields of image processing, Internet of Things, solutions covering smart systems, artificial intelligence, machine learning and cloud computing. He has also been involved in the drafting of standard-essential patents in 5G technology for a major foreign telecoms client. Mr Chadha has been involved in many renowned cases and represents many large corporations in patent prosecution. He is frequently involved in advising his clients on risks and strategies relating to global IP procurement, licensing, due diligence and IP portfolio development. His considerable experience and deep understanding of complex issues, along with his ability to deliver simple solutions, have always prompted clients to rely on him. He has been instrumental in securing numerous favourable orders, including injunction orders before the Indian courts. Mr Chadha is actively involved in several international IP organisations, including INTA, FICPI, the International Association for the Protection of Intellectual Property and the Asian Patent Attorneys Association. He has served as co-chair of the INTA Bulletin-Asia Pacific (Law & Practice) Sub-committee and is currently a member of the INTA Law Firm Committee.
Chadha & Chadha Intellectual Property Law Firm Level 18 One Horizon Centre Golf Course Road, Gurgaon 122002 India T +91 1246688014 F +91 1246688020 See firm profile p200 Professional associations • AIPPI • FICPI • INTA
Specialisations • Patent prosecution • Patent strategy Qualifications • LLB – University of Delhi • Patent drafting certification (SEAD drafting course) – FICPI • Certification in leading professional service firms – Harvard Business School
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Dewan, Mohan Principal – RK Dewan & Co dewan@rkdewanmail.com | www.rkdewan.com
With over 50 years of experience in IP practice, both contentious and non-contentious, Mohan Dewan is a stalwart of the Indian IP arena and the dynamic head of R K Dewan & Co. A registered patent and trademark attorney, Dr Dewan is also an exceptional trial lawyer. As an expert in Indian trademark law, Dr Dewan in particular oversees trademark infringement, passing off and anti-counterfeiting actions for clients across India. Dr Dewan has drafted and obtained over 8,000 patents in nearly every area of technology, from life sciences and molecular material science to engineering, software, electronics and telecommunication, and even space technology. His areas of expertise also include commercialisation of IP assets, including negotiating technology transfers. Frequently invited as a speaker at conferences, Dr Dewan is passionate about teaching and conducts training workshops for IP office examiners, judges, corporates, government entities and academic institutions. Dr Dewan is actively involved in conducting anti-counterfeiting actions and litigating for clients across India in fields including interdisciplinary technologies, fast-moving consumer goods and luxury goods. He is an expert on registration of trademarks though the Madrid Protocol and advises clients on overcoming provisional refusals at the Trademarks Registry, India. His areas of expertise extend to negotiating technology transfers and IP valuation. He was head of the IP law department at Howard College, University of Natal, where he taught private international law between 1988 and 1993. Dr Dewan has published several works. He co-authored Intellectual Property, Innovation and Management in Emerging Economies, which was launched at Warsaw University, Poland. He currently serves on the International Trademark Association (INTA) Bulletin Committee and has published numerous articles for the global IP community. Previously, he served on INTA’s Unreal Campaign Committee, Academic Committee and Emerging Issues Committee. He has been recognised as a leading IP lawyer by various publications, including Chambers & Partners, The Legal 500, WTR 1000, IAM Patent 1000 and AsiaLaw Profiles.
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RK Dewan & Co Mumbai Office Podar Chambers S A Brelvi Road Fort Mumbai 400001 India T +91 22 61775300 F +91 20 6687 1221 M +91 98 2305 7535 See firm profile p282 Professional associations • APAA • AIPPI • INTA Sample client list • Aditya Birla Group • Ecolab • Emerson • Mahindra & Mahindra • SRM University • Thermax • Times Group
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Dewan, Niti Head, Patents and Business Development – RK Dewan & Co niti_dewan@rkdewanmail.com | www.rkdewan.com
Niti Dewan is a medical doctor who found her calling in intellectual property. She qualified as a patent and trademark attorney and is now head of the patents and business development divisions at RK Dewan & Co. With more than 22 years’ experience in the IP field, Dr Dewan is a one-stop source for clients ranging from individuals to Fortune 500 companies that need business-savvy advice on costeffective strategies for patent filing and prosecution in more than 100 jurisdictions worldwide. Dr Dewan also supervises the management of large domestic and international patent portfolios. She is an expert in patent searches and analytics. Although her primary areas of expertise include chemistry and life sciences (eg, pharmaceuticals, biotechnology, bioengineering and medical devices), Dr Dewan has extensive experience carrying out patent searches in all fields of technology, including automobiles, information technology, nanotechnology and materials sciences. Dr Dewan is also a patent valuation analyst and is actively involved in IP commercialisation, including assignments, franchising and technology transfer. She advises clients on creating brands and registering them in India and abroad, and carries out brand valuation. Dr Dewan was co-chair of the International Trademark Association Bulletin Committee (Association News) for the 2018-2019 term. A frequent speaker at conferences, she conducts multiple training workshops every year for leading Indian corporates and government entities. Dr Dewan has been recognised as a leading IP professional by various publications, such as the IAM Patent 1000, Chambers & Partners, Asialaw Profiles and Managing Intellectual Property.
RK Dewan & Co No 1147-B Mohan Villa Shivaji Nagar Pune 411 016 India T +91 20 6687 1200 F +91 20 6687 1221 M +91 98 2307 4514 See firm profile p282 Professional associations • AIPPI • APAA • INTA Sample client list • Bilcare • DRDO • Gelnova Laboratories • Haier • Indofil • Mahindra Group • RIL • Zensar
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Gandhi, Tarun Partner – Chadha & Chadha Intellectual Property Law Firm tarun.gandhi@iprattorneys.com | www.iprattorneys.com
Tarun Gandhi is a senior partner at Chadha & Chadha and head of the firm’s patent prosecution and enforcement practice. With an extensive experience of over 12 years, Mr Gandhi specialises in providing strategic counselling and securing optimal IP protection for his clients. Mr Gandhi’s international training on global patent practices has propelled him as an expert in drafting and prosecuting patent applications with a global perspective. He has been instrumental in the firm’s accomplishment of attaining an exceptionally high patent prosecution success rate. He has been consistently recommended for patent prosecution in India by IAM Patent 1000 since 2019. A considerable part of Mr Gandhi’s practice is devoted to providing patentability, infringement and validity opinions, and devising strategies for prospective contentious or litigation matters. Clients frequently consult him on the interplay of patent law and competition law in India, and he has led the team in attaining favourable orders for his clients in numerous patent oppositions, revocations, appeals and infringement suits. Mr Gandhi is also skilled in using mediation as a means of resolving complex IP rights conflicts, aligning with the end goals and objectives of his clients. Mr Gandhi is a former co-chair of the IP Practice in the Far East Committee of the Indian group of the American Intellectual Property Law Association (AIPLA) and member of several INTA committees. He represents the firm at the AIPLA, the International Association for the Protection of Intellectual Property, the Asian Patent Attorneys Association, the Intellectual Property Owners’ Association, BiO, INTA, the International Federation of Intellectual Property Attorneys (FICPI) and the Licensing Executives Society International (LESI); he is a regular speaker at these organisations’ annual conferences. His latest publication is the Indian chapter in a comparative of international design law for LESI (2020). He enjoys playing golf and cricket, and is a motorbike enthusiast.
Chadha & Chadha Intellectual Property Law Firm Level 18, One Horizon Centre Golf Course Road Gurgaon 122002 India T +91 1246688014 F +91 1246688020 See firm profile p200 Professional associations • AIPPI • FICPI • INTA
Specialisations • Patent drafting • Prosecution • Advisory • Litigation Qualifications • Patent attorney and attorney at law • BSc and LLB – University of Delhi • Patent drafting certification (SEAD drafting course) – FICPI • Certification in leading professional service firms – Indian Institute of Management, Ahmedabad
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Kaushik, Shruti Managing Director – Patentwire k.shruti@patentwire.co.in | www.patentwire.co.in
Shruti Kaushik is an IP attorney with more than 14 years of experience in the field of intellectual property. Ms Kaushik’s rich experience in IP prosecution, licensing, valuation and technology transfer was gained handling patent work across all major fields of invention for Indian and overseas clients. She has serviced applicants such as the Delhi Metro Rail Corporation, the Indian Institutes of Technology (IITs), Novartis, Viber and IKEA, among many others, with a specialised focus on general utility, chemical, medical, immunological, biochemical, herbal, agriculture, biotechnological, pharmaceuticals, mechanicals, IT and electronics patents. Ms Kaushik co-founded Patentwire, a patent and technology consulting firm, in 2008, after gaining invaluable experience working with (or at) leading companies such as IBM, the Council of Scientific and Industrial Research, Amity University and the Federation of Indian Chambers of Commerce & Industry. Ms Kaushik holds post-graduate degrees in science, management and law. Her strong commitment to delivering high-quality services and her team building capabilities have enabled her to quickly establish Patentwire as a high-end patent and technology services provider. Ms Kaushik is a speaker and lecturer at the IP Awareness Programmes organised by the Indian Ministry of Micro, Small and Medium Enterprises and a visiting lecturer in IP law at Jamia Hamdard, New Delhi; she is also a guest lecturer at the IITs, the National Institute for Entrepreneurship and Small Business Development and the Rajiv Gandhi National Institute of Intellectual Property Management, and a regular speaker at various conferences organised by public and private institutions. Specialties • IP advisory • Patent drafting and prosecution • Oppositions • Technology transfer • IP valuation • IP due diligence • IP audits • Commercialisation • Trademarks • Designs
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Patentwire A199 Ground Floor Defence Colony New Delhi 110024 India T +91 98 1033 8816 See firm profile p274 Professional associations • APAA • INTA • RIPA Sample client list • Bactiguard • Chromocell • Coloreel Group • Delhi Metro Rail Corporation • IKEA • Indian Institutes of Technology • Novartis • Viber
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Khanna, Anju Managing Partner – Lall & Sethi akhanna@indiaip.com | www.indiaip.com
Anju Khanna is the managing partner of Lall & Sethi, where she also heads the patent department and is directly in charge of both patent prosecution and litigation. She has more than 21 years of work experience, with 17 years in the field of patents. Dr Khanna oversees and handles work in different technology domains, including chemistry, pharmaceutical, medical devices, electrical and mechanical inventions, and telecommunications. Dr Khanna engages with her clients in strategising protection and enforcement of patent rights in India. She is actively involved in shaping IP law and practice in India through her frequent engagements with the policy decision making of the Patent Office and the Department for Promotion of Industry and Internal Trade (DPIIT), as well as organisations such as the Confederation of Indian Industry (CII) and Invest India. Examples of such engagements include her comments on, and contributions to, the Patent Office’s computerrelated invention guidelines, pharmaceutical inventions’ guidelines and working statement requirements, and the DPIIT paper on standardessential patents. Dr Khanna is a member of the IP Committee of the CII. She is a regular speaker at conferences and avidly supports reform of Indian patent laws to encourage innovation in the country. Dr Khanna is also a member of the Asian Patent Attorneys Association, the International Trademark Association, the International Association for the Protection of Intellectual Property and the Intellectual Property Owners Association.
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Lall & Sethi D17 South Extension – II New Delhi 110 049 India T +91 11 42 89 9999 See firm profile p242 Professional associations • AIPPI • APAA • IPO
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Mittal, Vaishali Partner – Anand and Anand vaishalimittal@anandandanand.com | www.anandandanand.com
Litigation partner and strategist Vaishali Mittal joined Anand and Anand in 2003. She has more than 17 years’ experience in litigation, prosecution, drafting and advisory work for various Fortune 500 companies and other leading organisations worldwide on disputes concerning patents, trademarks, copyright infringement and passing off. Ms Mittal has secured many first-of-their-kind and landmark rulings, including India’s first anti-anti-suit injunction (InterDigital Technologies v Xiaomi); an interpretation of Section 8 of the Patents Act to the benefit of patent holders; the first compulsory licensing order for radio broadcasters under the Copyright Act; India’s first judgment declaring a colour combination a well-known trademark; a landmark judgment on transborder reputation; India’s first final judgment on SEPs; and a landmark judgment on aggravated damages awarding the highest-ever sum in a copyright, trademark and design infringement case. Ms Mittal’s multi-dimensional work has earned her a ranking among the top 15 dispute lawyers in India and a Star Women in Law award from leading national and international publications. Outside court, she showcases her knowledge and ingenuity as a writer in authoring various chapters and articles for renowned publications such as Getting the Deal Through, Asia IP and MIP. Ms Mittal is also the creative mind behind, and co-author of, IPONOMICS, a coffee table book that compiles legendary IP matters; and Origami, an in-house knowledge manual on best practices and procedures in IP practice in India for law firms and companies. She also conceptualised and created IP Thinker, a digital newspaper to celebrate World IP Day 2020. Her work blends creativity and compassion with an outside-the-box approach and frequent pro bono engagements.
Anand and Anand B – 41 Nizamuddin East New Delhi 110013 India T +91 120 405 9300 F +91 120 424 3056 See firm profile p188 Professional associations • AIPPI • APAA • INTA
Awards and recognitions • Legal 500 Asia Pacific Rankings – Leading Individual 2020-2021 • IAM 300 Global Leaders 2020 • IAM 1000 2019 and 2020 • IAM 300 2019 and 2020 • Euromoney’s Women in Business Law – Best Trademark Lawyer 2020 • AsiaIP IP Expert 2020 • Expert Guides Women in Business Law 2020 • Expert Guides Recommended Lawyer – Patents 2019 • ALB’s Super 50 Lawyers in India 2020 • ALB ‘sTop 15 Dispute Lawyers in India 2019 and 2020
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Obhan, Essenese Founding Partner – Obhan & Associates essenese@obhans.com | www.obhanandassociates.com
Essenese Obhan is a managing partner at Obhan & Associates. Mr Obhan is an IP lawyer and patent agent, and has a degree in mechanical engineering. While he has drafted, prosecuted and litigated cases in the mechanical, chemical, pharmaceutical, software, telecommunication and agricultural sectors, he has also been at the forefront of several high-stakes IP licensing and litigation matters in India. In particular, he has represented both the Indian seed industry in a licensing dispute concerning genetically modified seeds, as well as various Indian mobile manufacturers in their SEP discussions with SEP owners. He advises many companies, including some from Fortune 500, and India’s leading businesses on developing and maintaining their patent portfolios and IP strategy and licensing. Mr Obhan has been constantly recognised as leading lawyer for intellectual property by: • Asia Law Leading Lawyers as “Distinguished Practitioner for Intellectual Property 2021”; • IAM Global Leaders in 2020; • IAM Strategy 300 – The World’s Leading IP Strategists since 2019; • Who’s Who Legal – Patents in 2017 and 2018; • The Legal 500 Asia Pacific as a “Leading Lawyer” since 2016; • IAM Patent 1000 – The World’s Leading Patent Practitioners since 2013; • Asia Law Profiles in 2012; • Managing Intellectual Property – IP Stars since 2010; and • Chambers Asia as “Asia’s leading lawyer for business” since 2009.
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Obhan & Associates N 94, Second Floor Panchshila Park New Delhi 110017 India T +91 11 4020 0200 F +91 11 4020 0299 See firm profile p266
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Pandey, Abhai Partner – LexOrbis abhai@lexorbis.com | www.lexorbis.com
Abhai Pandey heads the litigation and enforcement team at LexOrbis. He focuses on IP litigations, criminal enforcement and contested proceedings at the Indian Trademark and Patent Offices. He also advises clients on brand protection strategies for social media, Internet and advertisements and has been successfully running several anticounterfeiting campaigns in India for a variety of clients ranging from Fortune 500 companies to individual entrepreneurs. He has successfully resolved cases in favour of clients and has represented them in multiple forums, including several district and high courts, the Intellectual Property Appellate Board and the Indian Trademark and Patent Offices. He represents a broad range of businesses and industries, including fashion, media and entertainment, publishing, fast-moving consumer goods, pharmaceutical, biotechnology, electronics, automobile and information, communication and technology. Selected awards and recognitions of the past 12 months • Asia IP 2020: recognised among the Top 100 IP Experts in India • Legal Era 2020: recognised among the Distinguished Legal Minds of India • WTR 1000 2020: ranked among the Recommended Individuals • WTR 1000 2021: recognised in the enforcement and litigation category
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LexOrbis 709-710 Tolstoy House 15-17 Tolstoy Marg New Delhi 110 001 India T +91 98 9919 7254 See firm profile p252
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Shanker, Archana Senior Partner – Anand and Anand archana@anandandanand.com | www.anandandanand.com
At the top of her game, Archana Shanker is a zealous patent practitioner setting new patent narratives in Indian IP jurisprudence, while heading the patents and designs department at Anand and Anand, a Tier 1 IP law firm. Legally, scientifically and technologically savvy, Ms Shanker is the go-to person for patent protection, prosecution, pre-grant and postgrant oppositions, appeals, revocations and plant variety protection as she manages an extensive portfolio of patents. She and her team – an ensemble of lawyers-cum-scientists, engineers, biotechnologists, chemists and physicists – also provide straightforward advice in litigation. Ms Shanker has enabled the firm to successfully secure patent protection for Nivolumab after six oppositions; as well as for ertugliflozin, Delgocitinib for Japan Tobacco and Luseogliflozin for Taisho after several pre-grant oppositions. She also successfully defended several SEPs in information, communication and technology and mechanical inventions before the Patent Office; and secured a patent for Pfizer for Tofacitinib while checking delay caused by benami pre-grant oppositions. She has been a lead in cases returning noteworthy judgments, including Monsanto’s Supreme Court order, the Ferid Allani case and rulings involving Pioneer Overseas Corporation, Novo Nordisk, Roche, Merck and Sterlite – among others. Domestic and international clients trust her understanding of the key drivers of the industry and the science behind them. Businessminded, cost-conscious and a thought leader, Ms Shanker is ever-ready to take challenges head-on and shift paradigms.
Anand and Anand B – 41 Nizamuddin East New Delhi 110013 India T +91 120 4059 300 F +91 120 4243 056 See firm profile p188
Professional involvement • Advisory board of IAM’s first-ever Women in Patents event • First woman president of the Federation of Intellectual Property Attorneys, India Section • Vice president, North India for Licensing Executives Society International • Nominated by the International Federation of Intellectual Property Attorneys on the EPO Standing Advisory Committee 2021-23 • Member of the Asian Patent Attorneys Association and International Association for the Protection of Intellectual Property Awards • Recognised Individual – 2020 (IAM Strategy 300) • Recommended Individual – 2015-2020 (IAM Patent 1000) • Euromoney Asia Women in Business Law Award – 2019 • Expert Guides Women in Business Law (Patents) – 2016-20 • MIP Top 250 Women IP Professionals and IP Star – 2016-2020 • Chambers and Partners Spotlight for Life Sciences – 2016-2020
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Singh, Manisha Partner – LexOrbis manisha@lexorbis.com | www.lexorbis.com
Manisha Singh is a leading lawyer in the IP arena in India. Ms Singh started her career at the time when Indian IP laws and practices were undergoing substantial changes linked to India’s obligations to comply with the Agreement on Trade-related Aspects of Intellectual Property Rights; she played an important and crucial role in advising and apprising Indian policy and law makers on global standards associated with IP administrative and enforcement systems. Ms Singh is a true strategist and has acted in several milestone cases. She leads most of LexOrbis’s large and complex cases. She is known and respected for her deep expertise in prosecution and enforcement of all forms of IP rights and for strategising and managing global patent, trademark and design portfolios of large global and domestic companies. She is also known for her sharp litigation and negotiation skills for both IP and non-IP litigations and dispute resolution. She represents the Reserve Bank of India, India’s central banking institution, before the High Court of Delhi and the Supreme Court of India in cases related to banking and non-banking financial companies. Selected awards and recognitions received over the past 12 months • India Business Law Journal – A List 2020: recognised and listed among India’s Top lawyers • Legal Era 2020: listed among the Distinguished Legal Minds of India • Asian Legal Business 2020: recognised among the Top Disputes Lawyers • IAM Strategy 300 2020: recognised as a leading IP strategist • IAM 1000 2020: recognised as a Recommended Individual • Managing IP 2020: named an IP Star for patent litigation, patent strategy and counselling • Legal Era-Legal Media Group 2020: recognised among the Star Women in Law • WTR 1000 2020: ranked among the Recommended Individuals • WTR 1000 2021: recognised in the enforcement and litigation, prosecution and strategy category
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LexOrbis 709-710 Tolstoy House 15-17 Tolstoy Marg New Delhi 110 001 India T +91 11 2371 6565 F +91 11 2371 6556 See firm profile p252 Professional associations • AIPLA • AIPPI • APAA
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Thakur, Sujit Partner – Jupiter Law Partners sujit@jupiterlawpartners.com | www.jupiterlawpartners.com
Sujit Thakur holds a bachelor’s and master’s from the Indian Institute of Technology Kharagpur. He has 18 years of experience in advising clients on patent protection, management and enforcement, including firsthand experience at a leading patent law firm in the United States. At Jupiter Law Partners, Mr Thakur heads a team of patent agents/ attorneys providing services in and across the technology domains of chemistry and materials science, information technology, electronics and electrical, pharmaceutical and biotechnology, mechanical and automobiles, covering: • patentability opinions; • drafting and prosecution of patent applications; • freedom-to-operate and infringement opinions; • validity/invalidity opinions; • filing and prosecution of design applications; and • advisory and related services on patent portfolios. Mr Thakur regularly advises Fortune 500 companies from the United States, Europe, Korea and Japan. Clients frequently praise his attentiveness, responsiveness and overall professionalism. To service his clients, he extensively travels to client locations globally to understand their business goals and counsel them accordingly. Mr Thakur is also involved with mentoring start-ups and rising companies from India, as well as conducting patent training and presentations for individuals and companies. Mr Thakur attends the conferences and meetings held by the Asian Patent Attorneys Association, the International Association for the Protection of Intellectual Property and INTA where he meets patent attorneys from around the world.
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Jupiter Law Partners Office No 123 First Floor Vipul Agora M G Road Gurgaon 122002 India T +91 124 422 2112 Professional associations • AIPPI • APAA • INTA
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Wilson, Neeti Partner – Anand and Anand neeti@anandandanand.com | www.anandandanand.com
Neeti Wilson is enrolled with the Bar Council of India and is a member of the Delhi High Court Bar Association besides being a registered patent agent actively practising before the Indian Patent Office. She leads the biotechnology and bio resources practice at Anand and Anand. She has the expertise to handle technical and legal issues effectively. Dr Wilson’s expertise covers plant variety protection, patent protection, due diligence, portfolio management and strategic opinions for handling IP assets. She is recognised as the leading expert on the issues related to biological diversity regulations in India, and access and benefit sharing arising out of biological resources occurring in India. Prior to joining Anand and Anand in 2005, Dr Wilson was a scientist at the TIFAC, an autonomous organisation set up in 1988 under the Indian Department of Science and Technology to look ahead in technology domain, assess the technology trajectories and support innovation. Dr Wilson also worked at the Patent Facilitating Centre and as the research scientist at TERI, the Energy and Resources Institute, New Delhi. Dr Wilson served as an executive committee member of the India chapter of the Asian Patent Attorneys Association and the India representative of its Emerging IP Rights Committee. She actively participates in national and international conferences and is keen to spread awareness on IP and biological diversity-related issues. She has spoken at several seminars and workshops and is a visiting faculty at various universities. Dr Wilson has a BSc, an LLB, an MSc (biotechnology) and a PhD in applied sciences. Her PhD thesis focused on genome analysis of the populus species.
Anand and Anand B-41 Nizamuddin New Delhi 110 013 India T +91 120 405 9300 F +91 120 424 3056 See firm profile p188 Professional associations • AIPPI • APAA • FICPI
Thought leadership Dr Wilson believes that it is the responsibility of us humans to protect the environment and use the natural resources with the goal of sustainable development in mind. Green innovation along with judicious regulation and utilisation of natural resources are key to achieve commercial and sustainable growth. Awards and recognitions • MIP’s IP Stars 2020 • IAM Strategy 300 2019 and 2020 • IAM Patent 1000 2019 and 2020 • Expert Guides’ Women in Business Law 2020 • Asia IP expert Professional memberships Dr Wilson is a member of the International Association for the Protection of Intellectual Property, the Asian Patent Attorneys Association, the International Federation of Intellectual Property Attorneys, the Licensing Executives Society. She is also a board member of the Zonal Technology Management and Business Planning and Development Unit of the India Agricultural Research Institute.
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Indonesia
After deliberating for eight months, the Indonesian House of Representatives has ratified the Job Creation Bill, also known as the Omnibus Law, which was enacted on 2 November 2020. Intended to support foreign investment, the law also introduced amendments to local patent laws, which includes reducing the time required to prosecute simple patents. Further, it broadened the working requirement for patents – it was previously compulsory for patent holders to work their patented invention in Indonesia within 36 months of grant or risk the patent becoming vulnerable to compulsory licensing or revocation.
Am Badar & Partners
For over half a century, Am Badar & Partners has been processing some 8,300 patent applications annually in an ensemble of 100. Recognised by peers for its strength in portfolio management, the IP boutique has also developed a strong reputation among foreign associates for its well-rounded technical expertise. Annisa Ambadar is a key contact.
AMR Partnership
Fully compliant with the ISO 9001:2000 standards, AMR Partnership is an independent outfit that is dedicated to quality. Not only does the team fully cover domestic IP prosecution needs, its extensive network of more than 1,000 firms in 70 countries provides rights holders with regional and global solutions too. Backed by a PhD in metallurgical and materials engineering, senior counsel for patents Bambang Priyono is as well versed in advising on patent infringement as he is in drafting patents.
Biro Oktroi Roosseno
Recognised by peers for its “strength in IP prosecution”, Biro Oktroi Roosseno has been a mainstay in the Indonesian IP scene since the 1940s. With 30 technical experts on hand, the Jakarta-based family practice capably assists patrons in every phase of the patent lifecycle under the watchful eye of Migni Myriasandra.
Cita Citrawinda Noerhadi & Associates
A dynamic offering greets the clientele of Cita Citrawinda Noerhadi & Associates – from intellectual property, unfair competition to licensing and franchising, the firm can do it all. Supported by highly sophisticated internal systems, the team aims to deliver its services efficiently. A senior patent practitioner relied on for her sage advice, Cita Citrawinda has a strong reputation that puts her in high regard among her peers.
Hadiputranto, Hadinoto & Partners (member firm of Baker McKenzie)
Fully plugged into the firm’s extensive international network, Baker McKenzie’s Indonesia bureau is the
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Firms Am Badar & Partners AMR Partnership Biro Oktroi Roosseno Cita Citrawinda Noerhadi & Associates Hadiputranto, Hadinoto & Partners (member firm of Baker McKenzie) Januar Jahja & Partners Rouse SKC Law Tilleke & Gibbins
trusted partner of multinationals and domestic companies alike. With the recent addition of two lawyers, the well-rounded set now boasts 12 legal practitioners and 25 IP specialists and administrators that manage patent portfolios and advise on IP commercialisation. In the past year they have been busy with search opinion work as well as assisting other practice groups with patent reviews, especially patent advisory related to the covid-19 pandemic. Besides leading the IP group, Daru Lukiantono works closely with successor Wiku Anindito on contentious matters.
Januar Jahja & Partners
For “very prompt and efficient service”, clients need look no further than Januar Jahja & Partners. While the IP firm is increasingly popular with Chinese companies, it is also well-positioned to prosecute patents for patrons across industries, having just added two patent specialists to its substantial team of nine. Although former patent officer director Walter Simandjuntak has bowed out into retirement, foreign
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Indonesia associates and multinationals can continue to depend on New York-qualified attorney Andrew Diamond to handle patent matters in a variety of technical fields “with great competency”.
Rouse
At Rouse’s Jakarta outpost sits “a well-established firm with years of experience in patent prosecution and litigation”. Praised by service users for “offering customer-oriented services as well as giving appropriate advice and work based on their knowledge of technology, patent law and examination standards”, the outfit has earned the trust of multinational corporations for their comprehensive patent capabilities. As testament to that, Halliburton Energy Service recently handed over its Indonesian patent portfolio to the group of 16 IP consultants. Aside from captaining the patent department, Arifia Fajra prosecutes patents for the likes of British American Tobacco and tends to the needs of Unilever with global enforcement head Nicholas Redfearn. A favourite among Japanese companies, Lisa Yong garners high praise. “She acts in our best possible interest all the time, taking our requests seriously to provide win-win solutions. We also highly appreciate her frequent visits to our office to resolve obstacles that exist and presentations on a wide variety of IP topics.” A registered foreign lawyer who actively works with the Directorate General of Intellectual Property to provide feedback on examination guidelines, Kin Wah Chow rounds off the set.
SKC Law
Full-service IP practice SKC Law shines bright in the patent enforcement space, as a client fervently acknowledges: “Well-connected with law enforcement agencies and customs, the outfit organises and carries out enforcement actions in a professional manner, through a well-trained ensemble that can work under pressure and deal with challenging environments. They are also flexible and willing to adopt new strategies to satisfy customers’ requirements.” At the helm of the enforcement department is Purnomo Suryomurcito, who is representing Hensley Industries in patent rights enforcement through criminal infringement proceedings. Nidya Kalangie leads on the prosecution front – she is assisting Yamaha Motor in prosecuting their design patent portfolio. A fluent Bahasa Indonesian and Japanese speaker, foreign advocate Andrew Conduit is thoroughly familiar with the local IP landscape after spending two decades in the country.
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Individuals Wiku Anindito Hadiputranto, Hadinoto & Partners (member firm of Baker McKenzie) Kin Wah Chow Rouse Cita Citrawinda Cita Citrawinda Noerhadi & Associates Andrew Conduit SKC Law Andrew Diamond Januar Jahja & Partners Arifia Fajra Rouse Nidya Kalangie SKC Law Daru Lukiantono Baker McKenzie Migni Myriasandra Biro Oktroi Roosseno Bambang Priyono AMR Partnership Wongrat Ratanaprayul Tilleke & Gibbins Nicholas Redfearn Rouse Purnomo Suryomurcito SKC Law Lisa Yong Rouse
Tilleke & Gibbins
“Very responsive and helpful in assisting us to meet our clients’ IP requirements, Tilleke & Gibbins renders fast and reliable IP solutions.” As one commentator states: “I very much appreciate that their communications are clear, concise and timely.” Foreign associates are not the only ones that depend
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Indonesia on the 12-strong patent team for all their IP needs – companies across sectors such as Medicago Inc and Ping An Technology have also entrusted the firm with sophisticated patent applications, including trailblazing vaccine production technology. With the recent adoption of IP-specific legal technologies and two additions to the patent group, the regional heavyweight is ready to tackle any and every invention. Wongrat Ratanaprayul moved from Bangkok to take charge of the Jakarta office. Chemical engineer Irene Djalim is also one to watch: “Irene has provided us with consistent and timely advice when we had questions or issues for important biotechnology patent applications. She always went beyond just reciting the law or a boilerplate response; instead she worked with us on finding solutions and gave us straightforward answers. We now send all our patent work for Indonesia, Vietnam and Thailand to her.”
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Japan: Domestic
During 2020, Japan felt the effects of the covid-19 pandemic on its patent scene keenly. According to statistics released by the Japan Patent Office (JPO), June 2020 marked the first month when patent applications increased year on year – by just 0.5% – but this figure dropped again by a precipitous 6% in the following month. By November, the JPO had received over 17,000 fewer applications throughout the first 11 months compared to the same period the previous year. In response, JPO Commissioner Toshihide Kasutani advised Japanese companies to reduce their maintenance costs by cutting back on patent renewals so as to free up investment for patent rights to protect new inventions. However, local businesses had other plans. Kasutani later acknowledged in his 2021 new year’s greeting that nearly half of Japanese companies planned to reduce patent filings for the coming year. Consequently, 2021 looks set to be another challenging year for Japanese innovation.
Abe, Ikubo & Katayama
Dominating the litigation table for the 10th year running, Abe, Ikubo & Katayama is a premium contentious outfit for resolving domestic and multi-jurisdictional patent problems. A standout for its specialisation in the life sciences field, the illustrious set has no trouble handling a broad range of technology. “Well known in and outside Japan,” managing partner Eiji Katayama steals the spotlight for his terrific track record in high-stakes cross-border lawsuits. Star litigator Junichi Kitahara has his hands full representing the likes of Radiometer and Apple in patent infringement suits, while collaborating with “healthcare specialist and fluent English speaker” Mami Hino in an invalidation trial for Eli Lilly. Not to be outdone, New York-qualified Makoto Hattori has defended Fujifilm Corporation against Sony in multiple patent infringement cases and obtained a judgement that awarded the second highest damages in the history of such cases in Japan. On the noncontentious front, Hiroshi Kobayashi captains the IP prosecution department, bringing years of in-house experience at Dow Japan and Pfizer Japan to bear, drafting ironclad patent specifications.
Anderson Mori & Tomotsune
Full-service law firm Anderson Mōri & Tomotsune is one of the biggest in Japan, with an equally comprehensive IP practice that counts prosecution, dispute resolution and transactions among its full suite of services. IP practice leader Yasufumi Shiroyama is “the firm’s leading IP lawyer”. While Miki Goto is trained in physics and engineering, his colleagues Yoshikazu Iwase and Masayuki Yamanouchi focus on the fields of life sciences and chemistry respectively. PhD holder in biochemistry Makoto Ono is someone to have on speed dial when it comes to prosecuting agro-chemistry and pharmaceutical patents. See p190 for firm profile
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Firms: transactions Highly recommended Mori Hamada & Matsumoto Nishimura & Asahi TMI Associates
See p300
Recommended Abe, Ikubo & Katayama Anderson Mori & Tomotsune
See p190
Oh-Ebashi LPC & Partners
See p268
OHNO & PARTNERS YUASA and HARA
AOYAMA & PARTNERS
“Aoyama & Partners is a leading full-service patent firm in Osaka. Their advice is practical and service is of very high quality – very responsive, with fast turnaround.” “I have always been of the opinion that they are one of the best, if not the best patent law firm in Japan. What we value most is their dedication, professionalism, kindness and in particular, their language skills.” On the back of such effusive feedback from foreign associates on its “very strong patent practice”, Aoyama & Partners rises to the gold tier of the prosecution table. Home to an ever-growing army of patent attorneys – the side recently added another nine to a total of over 100 – group is kept busy prosecuting a rising volume of Chinese patent applications. Making his way up the prosecution table, Hiroshi Tamura wins accolades for being “a
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CountryDomestic Japan: Firms: litigation
Firms: prosecution
Abe, Ikubo & Katayama
AOYAMA & PARTNERS
Nakamura & Partners
Nakamura & Partners
See p194
TMI Associates
See p300
Shiga International Patent Office
Anderson Mori & Tomotsune
See p190
TMI Associates
See p300
Mori Hamada & Matsumoto
YUASA and HARA
Nishimura & Asahi
Abe, Ikubo & Katayama
OHNO & PARTNERS
Fukami Patent Office
YUASA and HARA
ITOH International Patent Office
See p226
KUBOTA
Saegusa & Partners
See p284
SUGIMURA & Partners
See p296
Anderson Mori & Tomotsune
See p190
Kyowa Patent & Law Office
See p238
Oh-Ebashi LPC & Partners
See p268
Sakurazaka Law Offices
very good strategist” and “an excellent communicator who understands the deepest technical and legal nuances.” He is increasingly involved in advising on multi-jurisdictional oppositions involving medical devices. “Hiroshi is indeed outstanding: his English is almost as good as his Japanese. He is a very good engineer, with excellent technical skills. And he works for his clients with an extremely high level of dedication. In several instances, he has worked until and after the middle of the night to provide highlyvalued contributions that culminated in us winning the case.” “Hiroshi is the best Japanese lawyer I have ever met. Sometimes, he provides ideas that we have not even thought of. He is truly experienced in overseas cases.” Fellow co-CEO Norihito Yamao is another patent expert, especially in the fields of metallurgy, materials science and solid-state chemistry. “Undoubtedly a leading figure in patents in Japan, Norihito provides very sound legal advice and we are highly impressed.” Sanae Genba and Masayuki Okunishi, experts in the fields of chemistry and material processing respectively, deserve a mention too. “An extremely hard working and knowledgeable lawyer, Sanae facilitates productive meetings with Japanese clients, while Masayuki assists in uncovering difficult-to-find Japanese prior art and providing excellent validity analyses.” See p194 for firm profile
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RYUKA IP Law Firm Seiwa Patent & Law Shobayashi International Patent & Trademark Office See p288 SOEI Patent & Law Firm Sonderhoff & Einsel Law and Patent Office Sonoda & Kobayashi Intellectual Property Law See p294
Fukami Patent Office
Fukami Patent Offices is one of the largest patent firms in Osaka, staffed by 88 patent attorneys, including 47 IP infringement litigators, and 10 patent engineers spread across outposts in Tokyo and Nagoya. It offers the full range of patent services, with a prolific patent filing practice – involving over 1,800 foreign clients and associates and filings in over 180 jurisdictions – a particular stand out. Yoshitake Kihara presides over the firm.
ITOH International Patent Office
From its humble beginnings over half a century ago as a specialist destination for electrical and
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Japan: Domestic Country Luminaries Toshiaki Iimura YUASA and HARA Eiji Katayama Abe, Ikubo & Katayama Yoshio Kumakura Nakamura & Partners
Individuals: prosecution Highly recommended Hiroshi Kobayashi Abe, Ikubo & Katayama Yasuhiko Murayama Shiga International Patent Office Hiroshi Tamura AOYAMA & PARTNERS Recommended Tatsuhiko Abe Shiga International Patent Office Toyotaka Abe TMI Associates Satoshi Hashimoto Hiroe & Associates Hironobu Hattori Nakamura & Partners Yusuke Hiraki Hiraki & Associates Masato Iida Shiga International Patent Office Yoshiyuki Inaba TMI Associates Shinya Jitsuhiro Shiga International Patent Office Yoshihiro Kiyohara Kiyohara & Co Patent Attorneys
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Minako Matsuyama YUASA and HARA Masaki Morishima Saegusa & Partners Masashi Moriwaki MORIWAKI IP Law Firm
See p121
Koji Murai Shinjyu Global IP Takeo Nasu Nakamura & Partners Yasunori Ohtsuka Ohtsuka Patent Office Makoto Onda ONDA TECHNO Intl Patent Attys Makoto Ono Anderson Mori & Tomotsune Kan Otani Roppongidori Patent & Trademark Attorney See p122
mechanical patents, ITOH International Patent Office has transformed into a full-service offering covering cutting-edge technologies, from AI to fintech. With an extensive team of 61 patent attorneys, including 14 IP litigation attorneys, along with a handful of patent attorneys qualified in the United States, China and Korea, the Tokyo-based firm is always on standby to meet the IP needs of clients. President Tadashige Itoh is a name for the address book. See p226 for firm profile
KUBOTA
The small but mighty KUBOTA makes its sophomore appearance in the IAM Patent 1000 this year. Since going independent in 2015, the firm has never looked back – recently adding another two lawyers to its agile team of 13. The side is largely preoccupied with sophisticated lawsuits in the pharmaceuticals and telecoms fields. Its impressive track record includes resolving a FRAND litigation for IP Bridge and emerging victorious in a patent dispute on behalf of Honeywell. At the same time, it is representing Broad Institute in a series of patent cases regarding the CRISPR Cas 9 technology, as well as Merck in a high-profile invalidation action against Pfizer. Eiichiro Kubota is the mastermind behind much of this
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CountryDomestic Japan: Mori Hamada & Matsumoto
Akihiro Ryuka RYUKA IP Law Firm Masayuki Shobayashi Shobayashi International Patent & Trademark Office See p123 Yoshitaka Sonoda Sonoda & Kobayashi Intellectual Property Law See p124 Hiroyuki Suda Nakamura & Partners Kenji Sugimura SUGIMURA & Partners
See p125
Hiro Takahori Shobayashi International Patent & Trademark Office Satoshi Watanabe Shobayashi International Patent & Trademark Office Yoichi Watanabe Seiwa Patent & Law Norihito Yamao AOYAMA & PARTNERS
meteoric rise. Peers acknowledge that he is “a good lawyer”, who enjoys “an excellent reputation with both Japanese and foreign companies, especially since he speaks English very well”. One happy client proclaims: “I like Eiichiro and his work a lot and I wanted to keep working with him after he started his own firm. On our multi-jurisdictional cases, he is heavily involved in preparing legal documents and appearing in court. His team joins calls with legal teams in other countries to share advice and strategy, even when the timing of the calls is not very convenient for them.”
Kyowa Patent & Law Office
Established in 1908, Kyowa Patent & Law Office has roots in the JPO – founder Tatsujiro Uchimura was a former examiner. Constantly reinventing itself, the historic outfit prosecutes patents through 60 patent attorneys divided into three broad technical groups in the mechanical, electrical and chemical fields. Not only do they collaborate actively across departments, they even form special teams for every client to ensure that all their IP needs are met. Managing partner Yukitaka Nakamura is the person to keep on speed dial. See p238 for firm profile
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Full-service firm Mori Hamada & Matsumoto’s six outposts across Asia allow it to address a host of patent issues seamlessly. With its multiple licensing deals and agreements spearheaded by Atsushi Okada, the outfit moves into the highly recommended tier this year. The trusted advisor to massive Japanese conglomerates negotiating cross-border licence agreements with multinational corporations, Okada is also the favoured litigator for pharmaceutical patent lawsuits. With “his deep knowledge in the area of life sciences and consideration towards clients”, he often appears before the IP High Court and Supreme Court on behalf of brand name drug manufacturers. Garlanded with heartfelt praise from foreign associates, Yoshifumi Onodera has the ear of marquee clients. “Yoshi is a very entrepreneurial lawyer, which is hard to find in the Japanese market. He understands that Western clients expect clear business advice, not just a thorough legal analysis. He is also an excellent negotiator, and I strongly recommend him when complicated licensing negotiations are stuck.” “Yoshi does a great job of keeping on top of internal and external deadline, making sure that everything is properly reviewed in time for filing. He is also very good at explaining Japanese procedures.”
Nakamura & Partners
Nakamura & Partners is not only gold ranked in both the prosecution and litigation tables, it features the highest number of ranked individuals in the Japan: domestic chapter. “Very experienced” and a titan in all things intellectual property, the leading firm is backed by 59 patent attorneys and 19 attorneys at law spread across three technical departments in the Tokyo office. As a true one-stop shop, the team handles a large volume of incoming patent filing matters on behalf of famous foreign corporations. It is no stranger to resolving egregious patent disputes – Yoshio Kumakura is “very energetic” in the local IP scene, with an impressive track record at the Supreme Court. Leading the way are representative partners Kazuhiko Yoshida and Hiroyuki Suda. While star litigator Yoshida recently represented SIG Technology AG in a patent revocation case before the IP High Court, Suda busies himself with prosecuting patents for polymer materials and semiconductors. Covering all bases, Hironobu Hattori takes the lead on chemical and biotech matters, complementing California-qualified Takeo Nasu who takes the lead for cases in the fields of electronics, computers and telecommunication engineering. International Association for the Protection of Intellectual Property (AIPPI) president Koichi Tsujii rounds off the set.
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Japan: Domestic Country Individuals: transactions Toyotaka Abe TMI Associates Hitomi Iwase Nishimura & Asahi Yoshikazu Iwase Anderson Mori & Tomotsune Yoshiyuki Miyashita Nishimura & Asahi Atsushi Okada Mori Hamada & Matsumoto
Nishimura & Asahi
The largest general law firm in Japan, Nishimura & Asahi is reaching ever greater heights with a new office in Germany and a formal law alliance with a Singapore outfit. Its expansive geographic reach enables the multitalented IP group to easily manage multi-jurisdictional patent issues, especially in the disputes and transactions spaces. Serving as global legal counsel, the set recently conducted IP due diligence and negotiated complex, billion-dollar IP licence agreements for Honda Motor. Besides leading the trademark team, Hitomi Iwase often dispenses advise on IP-related M&A deals. Yoshiyuki Miyashita takes centre stage for patent litigation cases.
Oh-Ebashi LPC & Partners
For its second appearance in the IAM Patent 1000, Oh-Ebashi LPC & Partners remains preoccupied with pharma-related patent disputes on behalf of a largely domestic clientele. Supported by 28 IP lawyers stationed in the Osaka headquarters and Tokyo outpost, IP captain Takamitsu Shigetomi and his right-hand man Toshiya Furusho make a formidable duo. Having successfully obtained a favourable decision from the IP High Court for B Braun against CR Bard, Inc, they continue to represent Genentech in a pioneer case regarding patent infringement litigation that involves biosimilar products. Their patent disputes practice is not limited to Japan either – they advised Ono Pharmaceutical against the DanaFarber Cancer Institute on US proceedings. Shigetomi is a member of the AIPPI standing committee on standards and patents, while Furusho is a new face in the Japan: domestic chapter who currently leads as vice chairman of Osaka Bar Association’s IP committee. See p268 for firm profile
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OHNO & PARTNERS
Founded by gold-ranked litigator Seiji Ohno, the eponymous Tokyo-based OHNO & PARTNERS has set its sights on IP disputes since its inception in 2000. Companies of all stripes will find nine IP lawyers and 17 patent attorneys cooperating closely to ensure that IP rights are defended in the courtroom. Besides lecturing on IP law at the Keio Law School, Ohno is an authoritative figure in the local IP community, revered for his phenomenal track record.
RYUKA IP Law Firm
“Visionary founder Akihiro Ryuka set up Ryuka IP Law Firm in 1998, where he cultivates a professional team of patent attorneys to take on challenges and responsibilities by providing legal and technical insights as well as practical business advice to clients.” With the addition of two US attorneys to its arsenal of 38 Japanese patent attorneys, the IP boutique prosecutes patents in the fields of electronics and mechanics effortlessly, working through an in-house translation team and software to maintain stellar quality. President Ryuka himself is an electrical engineer and a California attorney at law.
Saegusa & Partners
“Saegusa & Partners is responsible, reliable and very experienced, with good advice on difficult cases.” “It is a great advantage to have skilful Japanese patent attorneys communicating directly with local inventors. This has guaranteed efficient patent drafting and highquality applications wherein details are not lost in translation.” Over the past 75 years, the Osaka-based firm and its 24 patent attorneys have been working mostly with Japanese companies – especially those in the chemical, biotech and pharmaceutical fields – but they are quickly gaining ground worldwide. They recently added a German chemical company to their list of clients. Foreign associates wax lyrical about the “personal touch” that chemical division captain Masaki Morishima brings. “The specialty of Masaki’s service is his individual approach. He puts in effort to provide us with an overview of the Japanese IP system that we can use to our business’s benefit. He is familiar with the patent systems in Europe as well, which makes our cooperation easier.” “I’m impressed by Masaki’s knowledge and practical approach. He does not only present Japanese patent law, he provides practical examples and tips on avoiding pitfalls before the JPO. In particular, I truly appreciate that I communicate directly with Masaki and not via paralegals.” Morishima also wins plaudits for communicating well with inventors, contacting them directly to discuss invention details so as to draft watertight applications. See p284 for firm profile
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CountryDomestic Japan: Individuals: litigation Junichi Kitahara Abe, Ikubo & Katayama Seiji Ohno OHNO & PARTNERS Yasufumi Shiroyama Anderson Mori & Tomotsune Kazuhiko Yoshida Nakamura & Partners Mami Hino Abe, Ikubo & Katayama Hitomi Iwase Nishimura & Asahi Yoshikazu Iwase Anderson Mōri & Tomotsune Harumi Kojo Sakurazaka Law Offices Eiichiro Kubota KUBOTA Makoto Okada TMI Associates Takamitsu Shigetomi Oh-Ebashi LPC & Partners Tsuyoshi Sueyoshi YUASA and HARA
Sakurazaka Law Offices
Despite its young age – having been established only in 2015 – Sakurazaka Law Offices comes highly recommended by peers for being “very active and a really good choice, especially with their strengths in the pharmaceutical and electronics fields”. Laserfocused on IP litigation, the compact but mighty set of five founding, seasoned lawyers are no stranger to resolving complex IP disputes. Formerly an IP judge at the Tokyo High Court, the “highly respected” Harumi Kojo is a commanding presence in the local IP community. “She is the firm’s top lawyer, handling a lot of IP cases. She’s also a very nice person!”
Wataru Sueyoshi Sueyoshi & Sato Koichi Tsujii Nakamura & Partners Kozo Yabe YUASA and HARA Masayuki Yamanouchi Anderson Mori & Tomotsune
See p127
Toshiya Furusho Oh-Ebashi LPC & Partners Miki Goto Anderson Mori & Tomotsune Makoto Hattori Abe, Ikubo & Katayama Yukio Nagasawa The Tokyo-Marunouchi Law Offices Hiroshi Nemoto TMI Associates Atsushi Okada Mori Hamada & Matsumoto Yoshifumi Onodera Mori Hamada & Matsumoto Masahiro Samejima Uchida & Samejima Law Firm Hajime Watanabe SHIOMIZAKA
See p126
Seiwa Patent & Law
Focused on the life sciences space, Seiwa Patent & Law provides “responsive and strategy-oriented” advice to companies seeking to protect their IP rights in Japan. Through an impressive 100 patent attorneys and five attorneys at law, as well as an extensive global network, the IP firm habitually achieves excellent filing results. Specialising in chemistry and biology, Yoichi Watanabe helms the life sciences practice.
Shiga International Patent Office
Shiga International Patent Office needs no introduction in the Japan: domestic chapter. The largest patent filing firm in the country garners
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Japan: Domestic Country fervent praise from foreign associates for “always producing solid and reliable work” through its vast ensemble of 144 Japanese patent and trademark attorneys. “A highly trusted partner for our prosecution work, Shiga has a strong reputation in Japan with enviable international clients. They are well-respected throughout the world, particularly the United States, Europe and China.” “Shiga provides professional, high-quality work for a reasonable price, backed by a lot of experience with international clients. They also have the capability to work on German cases and fully adapt to our processes.” “The team demonstrates strong technical skills, whereas the firm is recognised for providing thought leadership in Japan on IP issues.” President Yasuhiko Murayama is often singled out by foreign associates and clients alike for his outstanding leadership, which has placed Shiga firmly on the map. “It is always a pleasure to work with Yasuhiko. Not only is he very patent savvy, he is an extremely hardworking businessman and patent attorney, with a genuine kindness about himself. The firm is reflective of his work ethic and interpersonal style.” “My go-to person for patent prosecution in Japan, Yasuhiko is friendly and trustworthy. I know he will expertly handle my clients’ patent portfolios in Japan and provide timely and accurate information.” He is supported by vice presidents Shinya Jitsuhiro and Masato Iida – the former used to be a JPO examiner specialising in chemistry and biotechnology, while the latter is an expert in the life sciences field. “Masato has a deep understanding of patent prosecution and case law in the immuno-oncology space, especially those related to therapeutic antibodies. I have recommended him to many colleagues and I will continue to do so.” “His work is very impressive. Besides communicating promptly and dealing with cases in good time, he provides professional and applicable advice regarding pharmaceutical and cutting-edge technologies to the satisfaction of our clients. He also offers different options to office actions alongside comments on the consequences, which helps our clients to make a decision.” Trained in engineering, Tatsuhiko Abe brings up the rear with his specialty in materials science.
Shobayashi International Patent & Trademark Office
Thanks to founder Masayuki Shobayashi’s close connections to the JPO, Shobayashi International Patent & Trademark Office boasts the highest number of former JPO personnel – 24 – among local patent firms. Working alongside the team of 67 patent attorneys spread across 11 departments, these seasoned patent practitioners navigate the Japanese
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patent landscape with ease. The patent firm was also recently the first in the country to be welcomed as a WIPO GREEN partner. While Shobayashi has his eye on expanding IP portfolios and asset management, former IBM in-house counsel Satoshi Watanabe and licensing group captain Hiro Takahori advise on IP transactions. Biochemist Yuichi Niiyama deserves a mention too: “Yuichi’s strong expertise in the healthcare industry gave me a very good impression when we worked together on a technical due diligence matter.” See p288 for firm profile
SOEI Patent & Law Firm
Founded in 1988, SOEI Patent & Law Firm has blossomed into a substantial IP practice made up of over 120 Japanese and foreign lawyers and patent attorneys stationed in Japan, Washington DC and Bangkok, who work together seamlessly to prosecute patent applications for both foreign and domestic companies. Former chief justice of the IP High Court Ryuichi Shitara chairs the side.
Sonderhoff & Einsel Law and Patent Office
German roots and strong European ties characterise Sonderhoff & Einsel Law and Patent Office. Not only does the team provide services in English, German, Chinese and Japanese, they know the cultural ins and outs of Europe, the United States, China and Japan. The full-service law firm is also a member of MSI Global Alliance, allowing it to draw upon the advice of more than 250 legal and accounting firms to serve client needs in audit, corporate and IP issues. Managing partner Felix-Reinhard Einsel is a name to have on standby.
Sonoda & Kobayashi Intellectual Property Law
Growing from strength to strength, Sonoda & Kobayashi Intellectual Property Law recently added a former US patent examiner to its ranks and expanded its translation and interpretation services beyond intellectual property. Backed by nearly 40 highly trained patent professionals and a multicultural roster of employees from 13 countries, with nine languages between them, the firm prosecutes patents for a predominantly foreign clientele. Managing partner Yoshitaka Sonoda is most comfortable working in the fields of physics, nuclear technology and fluid mechanics. See p294 for firm profile
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CountryDomestic Japan: SUGIMURA & Partners
IP boutique SUGIMURA & Partners is well known among foreign associates. “The team has a deep knowledge and understanding of automobiles, industrial technology and advanced driverassistance systems. They are well organised and highly flexible in responding to customer requests and requirements too, with very well-structured processes to handle cases professionally.” “Besides being very communicative and working in a very accurate and timely manner, they have an in-depth understanding of complex technology which leads to successful results. Their ideas are useful and they take efficiency into consideration, striking a balance between the two. They’ve also cultivated a very close relationship with our German representatives, facilitating our daily work.” “Through its in-house translation team, the firm can better capture technical accuracy and linguistic nuances to produce high quality patent specifications. Communication with the team is smooth and clear as well – I especially like that most attorneys and administrators are very proficient in English and have strong communication skills.” Kenji Sugimura presides over the ensemble of 79 patent attorneys and six attorneys at law in the Tokyo headquarters, as well as the handful of USqualified patent professionals in the Silicon Valley outpost. An active member of the local IP community, he is the vice president and secretary general of the International Federation of IP Attorneys, Japan. See p296 for firm profile
TMI Associates
For top-notch patent services in prosecution, litigation and transactions at “competitive charges”, clients need look no further than TMI Associates. One of the Big Five law firms in town, it is the only entry in the Japan: domestic chapter to sweep up the top spots in all the tables for its comprehensive patent offering enjoyed by multinational corporations around the world. Satisfied clients cannot help but gush: “TMI has always shown the utmost dedication and professionalism. Their speed and quality of service is excellent too. I highly recommend them.” “Attentive, competent and pleasant to work with, TMI is one of our favourite teams for SEP cases in the telecom field.” The firm just opened its sixth office in Fukuoka to accommodate its arsenal of 200 patent professionals, including 65 patent attorneys and 80 IP lawyers, who file 2,500 patent applications and over 20 IP lawsuits a year. Managing partner Yoshiyuki Inaba is an old hand at all things intellectual property, with “unique insight of Japanese patent law through more than 45 years of experience. It is great to cooperate with him.” Familiar faces in Japanese
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courts, Hiroshi Nemoto and Makoto Okada are occupied with resolving IP disputes for foreign and domestic entities. Where New York-qualified Nemoto shines for his high-profile cases, Okada successfully defended Digi-Key Corporation and RayVio Corporation in a cross-border patent infringement dispute against Nitride Semiconductors. “Makoto may not have an engineering degree but he understands the gist of technology well enough, and with the support of an excellent team, he has represented us to our satisfaction.” On the licensing front, Toyotaka Abe wins plaudits: he is “prompt and very well versed in local patent laws”. Japanese patent attorney Yukio Oishi is singled out as “another notable partner”. See p300 for firm profile
YUASA and HARA
Gold-ranked IP boutique YUASA and HARA excels in the disputes space. “Based on their expertise and extensive experience, the team shares their views on litigation and legal opinions with us in a timely manner.” Despite the ongoing covid-19 pandemic, the contentious practice has hardly slowed down – preeminent litigator Kozo Yabe is representing Sonix in patent infringement and invalidation trials against Gridmark, while on the life sciences front, Tsuyoshi Sueyoshi has raked in wins for Chugai Pharmaceutical Co, Ltd in a high-profile patent infringement suit at the IP High Court. “Tsuyoshi knows many relevant Japanese case laws and decisions, taking into consideration many cases structurally and assuming future decisions. He also has a good understanding of US and European cases. I believe he is one of the best Japanese IP lawyers in the field.” The winning disputes team of 13 IP lawyers is helmed by luminary Toshiaki Iimura, a former chief judge of the IP High Court held in high esteem in the local IP community. In a similar vein, the prosecution practice continues to busy itself with filing and drafting patents for well-known multinational corporations such as Robert Bosch GmbH, Honeywell and Suntory Holdings. Taking her first bow in the IAM Patent 1000 this year, Minako Matsuyama is one of the few women to feature in the Japan: domestic chapter. A chemist by training, she prosecutes patents for the likes of Microsoft and Ebara Corporation, while captaining the patent department with colleagues from the mechanical and electrical divisions after IP veteran Shinjiro Ono retired in 2020.
Other recommended experts
Based in Gifu, the “professional, diligent and responsible” Satoshi Hashimoto leads the patent department at Hiroe & Associates, which often files patent applications on behalf of foreign associates.
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Japan: Domestic Country Clients have nothing but high praise for the IP boutique: “They provide prompt, thorough and high-quality services at very reasonable rates. The attorneys are truly a pleasure to work with.” “The team always replies to our inquiries in more detail and quicker than other firms. Its quality, cost and speed are very good and communication has always been excellent.” Formerly a supervising examiner and appeal examiner-in-chief at the JPO, Yusuke Hiraki now prosecutes life sciences patents out of Hiraki & Associates. Yoshihiro Kiyohara plies his trade from his Osaka office at the 20-strong IP boutique Kiyohara & Co Patent Attorneys. Founder of the eponymous MORIWAKI IP, PC, Masashi Moriwaki is a popular choice among foreign associates for his patent prosecution services and has recently begun handling a patent litigation matters as well. “Masashi did a fabulous job filing a rather difficult patent application. He has a very good knowledge in sophisticated electronic fields, such as communication technology, and I recommend him for high-level electronic patent prosecution work.” “Not only does Masashi always provide onthe-point comments and recommendations for any office actions, he is open to discussing arising issues. Working with him is smooth and frictionless, despite the cultural differences between Japan and Europe.” “He is attentive, responsive and will give candid advice on overcoming citations. Charges are very reasonable too, which individual inventors prefer.” At Osaka-based Shinjyu Global IP, Koji Murai enjoys an excellent reputation among foreign associates: “Very professional and hardworking, Koji replies quickly.” “He is a widely respected, a standout and experienced patent practitioner. I highly recommend him.” After serving as an IP judge at the Tokyo High Court and lecturing at the University of Tokyo, Yukio Nagasawa now resolves international patent disputes at the Tokyo-Marunouchi Law Offices. Trained in electronics, Yasunori Ohtsuka not only leads Ohtsuka Patent Office as managing partner, he specialises in prosecuting patents in the areas of medical equipment and telecommunications. Making his first appearance in the IAM Patent 1000, Makoto Onda prosecutes patents at Gifu-based IP boutique ONDA TECHNO Intl Patent Attys. One foreign associate comments: “Experienced in patent drafting and prosecution, Makoto is an expert participant in IP litigation. He is one of the most dedicated, hardworking and innovative persons we know.” Since setting up Roppongidori Patent & Trademark Attorney in 2017, Kan Otani has carved out a niche for himself in coming up with IP protection strategies for start-ups and companies backed by venture capital. Masahiro Samejima not only founded Uchida
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& Samejima Law Firm, but is also a “very famous IP lawyer with a good reputation” among local IP practitioners, with a penchant for assisting small and medium enterprises with their IP needs. Wataru Sueyoshi is a star litigator and prolific writer on Japanese IP law, who left STW & Partners to set up Sueyoshi & Sato in 2020. With more than 30 years of legal experience and qualifications from the Chicago and New York bar, Shiomizaka’s Hajime Watanabe is well placed to handle IP disputes.
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Hiroe, Takenori Managing partner – Hiroe & Associates takenori@hiroe.co.jp | www.hiroe.co.jp
Takenori Hiroe is the founding partner of Hiroe & Associates and a former member of the Japanese Patent Attorneys Association’s International Activity Committee, Trademark Committee, Copyright Committee, Unfair Competition Prevention Law Committee and IP Enforcement Facilitation Committee. In 2011 he received the Medal of Merit from the emperor of Japan for his longstanding services as a patent attorney. He was an adjunct professor at Gifu University until 2017 and he still regularly gives extracurricular IP seminars at that university. Positions at the firm • Chair, managing partner and patent attorney • Head of all IP practice areas Areas of expertise • Chemistry (textile engineering) Typical work and attributes • IP rights disputes (eg, infringement cases in all areas of intellectual property, including copyright and warning letters), unfair competition cases, consultancy on licensing and joint development agreements • Insightfulness and ability to instantly understand the content of a case, grasp the points of dispute and come up with the best solution
Hiroe & Associates 4-3 Usa 3-Chome Gifu 500-8368 Japan T +81 90 3257 1266 F +81 58 268 7602 Professional associations • AIPPI • APAA • INTA
Memberships • Asian Patent Attorneys Association • International Association for the Protection of Intellectual • Property • International Federation of Intellectual Property Attorneys • International Trademark Association • Japan Intellectual Property Association • Japan Patent Attorneys Association
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Moriwaki, Masashi President – MORIWAKI IP, PC center@moriwakipat.com | www.moriwakipat.com
Masashi Moriwaki has broad experience in all aspects of IP law in Japan, including prosecution, litigation, licensing, opinions and evaluation. Prosecution of patent and trademark applications before the Japan Patent Office (JPO) is a focal point of his practice. He has extensive experience handling IP rights matters related to the high-tech industries, including electronic devices, material science and computer technology based on physics and/or chemistry. Before he set up MORIWAKI IP PC in 2002, Mr Moriwaki had spent time working as an in-house patent attorney for Matsushita Electric Industrial Co Ltd and at Panasonic IP Centre. Mr Moriwaki has lectured in patent, design patent and trademark law at Ritsumeikan University in English for some years. Mr Moriwaki has been a technical adviser at the IP High Court of Japan since 2008. Mr Moriwaki graduated from the Tokyo Institute of Technology with a master’s in electronic devices and from the Nagoya Institute of Technology with a BSc in electric and information technology. He received his qualification as a patent and trademark attorney from the Japan Patent Attorney Association (JPAA). While at the Tokyo Institute of Technology, he worked at the Precision and Intelligence Laboratory. During that time, he routinely gave presentations in Japan and abroad on ferroelectric devices. Mr Moriwaki is a member of the JPAA and is admitted to handle prosecution and litigation matters before the JPO, the Japan Intellectual Property Arbitration Centre, the District Court, the IP High Court and the Supreme Court.
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MORIWAKI IP, PC 600-8411 Fifth Hase Building 637 Suiginya-cho Shimogyo-ku Kyoto Japan T +81 7 5353 7707 Professional associations • JPAA
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Otani, Kan Managing Attorney – Roppongidori Patent & Trademark Attorney contact@roppp.jp | www.roppongidori.jp
As founder and managing attorney of Roppongidori Patent & Trademark Attorney, Kan Otani works mainly with start-ups and venture capital-backed companies, as well as innovative high-growth listed companies. Mr Otani specialises in patent prosecution for start-ups and focuses on the enforceability of patents, drawing on his extensive experience in patent litigation and disputes. He has worked with clients from Japan, Korea, the United States and France in litigation and disputes in a wide range of technical fields, including electronics, semiconductor, communication, software and optics. Mr Otani also has experience in patent due diligence for billiondollar M&A and licensing activities for standard-essential patents. He has dealt with all IP matters relating to the establishment and growth of start-ups. Mr Otani regularly meets with new start-up companies and is well acquainted with the way that start-ups and venture capital companies operate. He endeavours to understand every client’s business fully and utilises his scientific background to grasp the technology at issue in every case. Mr Otani advises on trademark strategy as well as patent strategy, based on his understanding of each client’s business. After studying applied physics at Keio University in Tokyo, Mr Otani studied at Harvard University and received his MSc in applied physics in 2005. His experimental research topic involved nanoscale materials science and condensed matter physics. Mr Otani joined a patent prosecution firm in 2006 and then moved to a large general law firm where he expanded his practice to enforcement. He joined an IP boutique firm in 2012 and then founded Roppongidori Patent & Trademark Attorney in 2017.
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Roppongidori Patent & Trademark Attorney Roppongi Hills North Tower 17F 6-2-31 Roppongi Minato-ku Tokyo 106 0032 Japan T +81 357 862 175 Professional associations • AIPPI Japan • JPAA • JTA
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Shobayashi, Masayuki President – Shobayashi International Patent & Trademark Office ip@shobayashi.com | www.sho-pat.com
Masayuki Shobayashi is the founder and president of eponymous IP law firm Shobayashi International Patent & Trademark Office (SIPTO). Mr Shobayashi has served as a university professor and incumbent deputy chair for the Japan Patent Attorneys Association. He is also an author and academic authority on Japanese intellectual property with numerous publications on IP issues. Mr Shobayashi regularly lectures on law, technology and the Japanese Patent Bar. Due to Mr Shobayashi’s close connection with the Japan Patent Office (JPO), SIPTO currently employs the highest number of former JPO employees (ie, judges, directors and patent examiners) in Japan. This ensures that SIPTO provides the highest level of expertise in IP law, unrivalled by any other IP firm in Japan. SIPTO’s expertise also extends to IP searches, analysis and valuations, and the sale and purchase of IP rights. Mr Shobayashi handles one of Japan’s largest caseloads for IP due diligence on investments and IP valuations for finance (specifically for IP mortgage finance). Mr Shobayashi focuses on expanding IP portfolios and asset management, IP valuation appraisals and the management and consulting practice of SIPTO. In addition to his clientele of national and international companies, he promotes and specialises IP rights for business models, providing routes of monetisation and protection for the next generation of entrepreneurs. With a diverse focus and the highest level of expertise, Mr Shobayashi continually aims to spread this reputation throughout the global market, from sole entrepreneurs to international companies.
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Shobayashi International Patent & Trademark Office Sapia Tower 1-7-12 Marunouchi Chiyoda-ku Tokyo 100-0005 Japan T +81 3 6895 4600 F +81 3 6895 4511 See firm profile p289 Professional associations • AIPPI • INTA • UniFab
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Sonoda, Yoshitaka Managing Partner – Sonoda & Kobayashi Intellectual Property Law ysonoda@patents.jp | www.patents.jp
As Sonoda & Kobayashi Intellectual Property Law’s primary patent litigator, Yoshitaka Sonoda handles appeals, invalidations and infringements before the Tokyo Intellectual Property High Court and the Supreme Court of Japan for companies and organisations in Europe and the United States. He is also the primary negotiator of licensing and trade secret agreements. Dr Sonoda regularly gives seminars abroad on developments in IP practices in Japan at IP organisations and association meetings. Dr Sonoda spent several years in France conducting research for the French Atomic Energy Commission. He has more than 28 years’ experience in intellectual property in Japan, including 10 years as a director of a major Japanese IP firm before founding Sonoda & Kobayashi. Under his leadership, the firm has gained an international reputation of reliability, high-quality work and smooth communication, and handles patent applications for many global companies. Dr Sonoda holds a PhD in structural engineering from the University of Tokyo and a BS in structural engineering from Yokohama National University. He has expertise in nuclear technology, thermodynamics, electrical and mechanical engineering, liquid crystals, fluid mechanics, optics, computing, aeronautical and automotive engineering and electromagnetism. He speaks Japanese, English and French. Dr Sonoda’s publications include: • “Avoiding the Perils of Collaboration” (with Natalie Crick), World Intellectual Property Review, Annual 2017 Edition. • “Japan’s IP High Court Takes a Stand Against Violation of Public Order and Morality for Trademarks” (with Diane Beylier), World IP Review, September/October 2012; • “Amendments to Japanese IP Laws”, World IP Review, September/ October 2011; • “Drastic Changes Made to the Patent Law” (with Diane Beylier), Managing Intellectual Property, Asia-Pacific & Middle East 2010; • “Controversy over Patent Term Extension”, Managing Intellectual Property, Asia-Pacific & Middle East 2009; • “Speeding Up Patent Applications in Japan”, World IP Review, September/October 2009; and • “Coping with the Latest Examination and Appeal Practices”, Managing Intellectual Property, February 2009.
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Sonoda & Kobayashi Intellectual Property Law Shinjuku Mitsui Building Suite 3401 2-1-1 Nishi Shinjuku Shinjuku-ku Tokyo 163-0434 Japan T +81 3 5339 1093 F +81 3 5339 1094 See firm profile p294 Professional associations • AIPLA • JIPA • JPAA
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Sugimura, Kenji Managing Partner – SUGIMURA & Partners jpatent@sugimura.partners | www.sugimura.partners
Kenji Sugimura is a managing partner at SUGIMURA & Partners – a leading Japanese IP firm founded in 1923. Under his leadership, SUGIMURA continues to be recognised for its commitment to quality IP protection, prompt service and competitive rates. As an experienced Japanese patent attorney and litigator specialising in mechanics and architectural engineering, Mr Sugimura is actively involved in various IP organisations, including the International Association for the Protection of Intellectual Property, the Asian Patent Attorneys Association, the International Federation of Intellectual Property Attorneys (FICPI), International Trademark Association and the Japan Patent Attorneys Association (JPAA). He is vice president and secretary general of FICPI Japan. He also served as one of the JPAA’s vice presidents for 2020. Mr Sugimura has authored several articles on Japanese IP practice in international IP magazines. His writings focus on recent changes and trends in Japanese IP practice, general differences between IP practice in Japan and that in the United States and Europe, and industryspecific opportunities within the Japanese IP market. Mr Sugimura’s publications include: • “iPS Cell Technology Spurs Biological Patenting in Japan”, World Intellectual Property Review (2013); • “An Important Market: Software Patenting in Japan”, World Intellectual Property Review (2012); • “Effective Ways to Obtain Japanese Patents”, World Intellectual Property Review (2011); and • “Japan’s New Patent Rules”, Managing Intellectual Property (2010). Before joining SUGIMURA, Mr Sugimura was a professional architect for Lord Norman Foster in London and a senior architect in the construction of HSBC’s Hong Kong headquarters – a leading example of high-tech architecture. He brings the international exposure, bold vision and attention to detail from his architecture background to enrich SUGIMURA’s dedicated attention to its international clients.
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SUGIMURA & Partners Common Gate West Tower 36th Floor Kasumigaseki 3-2-1 Chiyoda-ku Tokyo 100 0013 Japan T +81 3 3581 2241 F +81 3 3502 0031 See firm profile p296 Professional associations • FICPI • IPBC • JPAA
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Watanabe, Hajime Founding Partner – SHIOMIZAKA hajime.watanabe@szlaw.jp | www.szlaw.jp
Hajime Watanabe is a patent litigator at the top of his game, appreciated by peers and clients alike for his commercial mindset. He obtained an LLB from the University of Tokyo in 1985 and was admitted to the Daini-Tokyo Bar Association in 1987. He was also admitted to the New York State Bar Association in 1995 and obtained an LLM from the University of Illinois College of Law in 1993. Mr Watanabe joined Mori Sogo (now Mori Hamada & Matsumoto) in 1987. He worked at Jenner & Block in Chicago from 1993 to 1995 and at the US Federal Trade Commission in Washington DC in 1995. In 1994 he was admitted in Illinois (as a foreign consultant) at the Chicago Bar Association and in New York at the New York Bar Association. He is also a member of the American Bar Association and the American Intellectual Property Law Association. He cofounded STW & Partners (now SHIOMIZAKA) in 2007 with seven other lawyers from Mori Hamada & Matsumoto to form a new cuttingedge law firm. By recruiting new partners and associates who have highly specialised knowledge and experience, the firm can provide innovative legal advice in a flexible and effective manner that is tailored to each case, while maintaining a broad perspective, not limited to any one particular field. All lawyers at SHIOMIZAKA have vast experience in dealing with dispute resolution matters with both domestic and international aspects, including IP, antitrust and contractual disputes. The firm is a relatively recent arrival on the patent litigation scene and has made rapid progress; it is “a sought-after commodity on the Japanese market”, according to IAM. The team has advised myriad of household-name clients from Japan and abroad on matters across various industry sectors.
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SHIOMIZAKA 6F Hibiya Daibiru Building 1-2-2 Uchisaiwai-cho Chiyoda-ku Tokyo 100-0011 Japan T +81 3 3596 7303 F +81 3 3596 7330 Professional associations • ABA • JFBA • NYSBA
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Yamanouchi, Masayuki Partner – Anderson Mori & Tomotsune masayuki.yamanouchi@amt-law.com | www.amt-law.com
Masayuki Yamanouchi holds a master’s in science and has been engaged in a number of patent infringement lawsuits and other IPrelated matters since he became a lawyer. His main focus is on the pharmaceutical industry, patent infringement actions, as well as licensing negotiations, joint development projects and technology transfer projects. He also has expertise and experience in other forms of intellectual property, including trademarks, copyright and trade secrets. In addition, his experience in the United States (both in law school and at a law firm focusing on patent matters) helps him provide advice to clients involved in patent lawsuits in the United States. Background • March 2002: Keio University (BSc) • March 2004: Keio University (MSc) • March 2007: The University of Tokyo School of Law (JD) • 2007-2008: The Legal Training and Research Institute of the Supreme Court of Japan • June 2013: Graduate study, Stanford Law School (LLM) • September 2013-June 2014: Associate with Finnegan, Henderson, Farabow, Garrett & Dunner (Palo Alto office) Recent publications • Legal Matters regarding Life Sciences and Health Care - Navigation regarding Regulations, Intellectual Properties and Corporate Matters (Second Edition), Shojihomu Co Ltd (2020) • Q&As on IP issues (34th), Calculation of damages in the patent infringement cases, Chizai Prism Vol 18 No 211 2020 • “The Effective Scope of Protection of Extended Patent Rights”, Chizai Kanri Vol 70 No 3 2020 (Mar 2020) • “Check Point of Patent License Agreement - Assuming M&A of a manufacturer company”, Business Law Journal, No 137 (June 2019) • Guidebook of English Language Contracts around the World, Shojihomu Co Ltd (April 2019) • “Copyright and Other Legal Protection for Business Involving Artificial Intelligence and Big Data”, NBL No 1129 (September 2018) • Essential Points of Japan M&A Practice (Second Edition), Shoji Homu Co Ltd (June 2018) • “Representations and Warranties in License Agreements”, Business Law Journal, No 124 (May 2018) • “Intellectual Property License Agreement Review Guide - Points of Contract Clause Review”, Business Lawyers’ website (October 2017)
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Anderson Mori & Tomotsune Otemachi Park Building 1-1-1 Otemachi Chiyoda-ku Tokyo 100-8136 Japan T +81 3 6775 1187 F +81 3 6775 2187 See firm profile p190 Professional associations • Daini Tokyo Bar Association
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Japan: Foreign
Baker McKenzie
Backed by nearly 50 years’ experience and one of the largest Tokyo-based IP teams in an international firm, Baker & McKenzie Gaikokuho Joint Enterprise is a learned hand at tackling patent matters. With their “long experience in intellectual property and direct communication capabilities with clients in foreign countries”, 13 specialist attorneys help domestic and foreign companies to navigate the IP landscape in Japan and overseas. The “quick and accurate team” recently saw an influx of transactional IP matters over the past year, including cross-border licensing agreements. A favourite partner of Japanese patent outfits, Kei Matsumoto has seen it all in the patent litigation and transactions space. “Fluent in English, Kei can explain and discuss the strategies for IP cases directly with foreign companies, so he is very good at helping them to realise their plans in Japan.” “Kei is my first choice for cases that may lead to a patent infringement dispute. He is always a gentleman and never unnecessarily stimulates an opposing party, while standing ground as a tough negotiator. He is always able to come up with a win-win strategy for both parties too.”
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
The only practice in this chapter to provide the full spectrum of patent services, Finnegan can handle everything from prosecution to litigation and transactions. Aside from big-ticket patent disputes, the team is especially familiar with pharmaceuticalrelated matters. Central to its local operations is Naoki Yoshida, who often lectures on US patent law in Japan. With his US counterparts, he recently achieved a win for Kaken Pharmaceutical and Bausch Health at the US Court of Appeals. See p1678 for firm profile
Foley & Lardner LLP
Foley & Lardner opened its only Asian office nearly 20 years ago, where it has shored up deep expertise in an array of IP and business issues. Working closely with its US counterparts, the Tokyo-based group acts as a liaison for Japanese clients while assisting US companies in navigating the local landscape. Qualified in New York and Japan, Etsuo Doi dispenses valuable counsel to pharmaceutical corporations.
Hogan Lovells
From its Japanese centre, Hogan Lovells marries technical expertise with legal advisory to solve patent
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Firms: litigation and transactions Highly recommended Hogan Lovells Morrison & Foerster LLP Orrick, Herrington & Sutcliffe LLP Paul Hastings Foreign Law Joint Enterprise Quinn Emanuel Urquhart & Sullivan LLP Recommended Baker McKenzie Finnegan, Henderson, Farabow, Garrett & Dunner, LLP See p1678 Foley & Lardner LLP Jones Day
problems for leading multinational corporations. Its integrated and multicultural ensemble, including seven on the ground and more than 400 worldwide, enables the practice to effortlessly handle IP issues of all stripes. Armed to the teeth with a PhD in medical sciences and legal qualifications in England, Wales and California, Frederick Ch’en specialises in the life sciences space, especially multijurisdictional patent disputes and licence agreements. Alongside his colleagues in other offices, he advised SymBio Pharmaceuticals in its first global licence and is representing Merck in patent litigation cases. “Conscientious and super responsive, Fred responds virtually immediately to any emails. His summary of documents from the Japan Patent Office and the courts is very detailed, and his legal advice – which is very clear and understandable – takes into consideration both the law and Japanese business culture.” “Our go-to attorney for patent matters in Japan, Fred is extremely hardworking. Not only does he have broad experience in Japan, he is conversant in US and Chinese patent law, allowing him to offer perspective from different points of view. He also has a deep understanding of patent litigation and pharmaceuticals in Japan, including regulatory issues. His service is exemplary too – he is completely
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Japan: Foreign Firms: prosecution Finnegan, Henderson, Farabow, Garrett & Dunner, LLP See p1678 Oblon See p1718
Individuals: litigation Highly recommended Ryan S Goldstein Quinn Emanuel Urquhart & Sullivan LLP Hiroyuki Hagiwara Paul Hastings Foreign Law Joint Enterprise Max Olson Morrison & Foerster LLP Recommended Shogo Asaji Jones Day Frederick Ch’en Hogan Lovells Maxwell A Fox Jones Day Hiroto Imai Hogan Lovells Kyotaro Ozawa Paul Hastings Foreign Law Joint Enterprise Chie Yakura Morrison & Foerster LLP Shinsuke Yakura Orrick, Herrington & Sutcliffe LLP Naoki Yoshida Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
fluent in English, Japanese and Mandarin, and delivers results that exceed expectations.” Japanese companies look to Hiroto Imai, a Japanese-qualified lawyer with an engineering background, to negotiate cross-border IP licensing deals in technical fields.
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Jones Day
Through a blend of Japanese and international lawyers, Jones Day serves up comprehensive IP advice that takes cultural differences into consideration. Be it local or foreign clients investing in Japan or elsewhere, they can find their contentious and transactional IP needs met. After practising law in Los Angeles for almost a decade, US litigator Maxwell Fox is putting his fluent Japanese language skills to defending Japanese entities in patent infringement suits. Shogo Asaji brings his experience in US district courts and engineering to counselling on IP disputes and licensing negotiations.
Morrison & Foerster LLP
“A key player in the IP disputes space, Morrison & Foerster LLP has a longstanding reputation in the Japanese market.” For global businesses looking to protect their IP rights from east to west, a full-service offering provided by a massive IP department of 40 lawyers awaits – including eight litigation partners with trial experience and two Japanese patent attorneys. The departure of former IP captain, Robert Hollingshead, is scarcely felt as the team continues to bulldoze its way through US courts on behalf of famous Japanese companies across industries, with an uptick in clients from the automotive sector. Coveted courtroom sharpshooter Max Olson is leading a patent infringement action in the Western District of Texas for JOLED against Samsung Electronics and Samsung Display, while litigation expert Chie Yakura takes charge of highprofile patent disputes in her home ground of Japan. California-qualified lawyer Masato Hayakawa has a keen eye for managing transactions briefs.
Oblon
From its Tokyo office, Oblon provides patent prosecution solutions to Japanese companies seeking to protect their intellectual property in the United States. Drawing on an extensive team of almost 100 lawyers, patent agents and technical experts stationed in the Virginia headquarters, the IP boutique has developed a close relationship to local pharmaceutical corporations. Much of this success can be attributed to the co-head of the chemical practice group Yuki Onoe, who leads the team on the ground. See p1718 for firm profile
Orrick, Herrington & Sutcliffe LLP
The team may be stationed in Japan, but Orrick, Herrington & Sutcliffe LLP has been offering multicultural solutions and advising on US and UK
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Japan: Foreign Individuals: prosecution Yuki Onoe Oblon Naoki Yoshida Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Individuals: transactions Highly recommended Stuart S Beraha Latham & Watkins LLP Recommended Frederick Ch’en Hogan Lovells Etsuo Doi Foley & Lardner LLP Maxwell A Fox Jones Day Hiroyuki Hagiwara Paul Hastings Foreign Law Joint Enterprise Masato Hayakawa Morrison & Foerster LLP Hiroto Imai Hogan Lovells Kei Matsumoto Baker McKenzie
law by collaborating with its counterparts overseas for more than two decades. IAM Patent 1000 sophomore Shinsuke Yakura is a fluent Mandarin speaker, who specialises in patent infringement disputes involving electric devices and industrial machinery.
related contracts and agreements, the team continues to engage in multijurisdictional patent licensing agreements and high-stakes patent disputes. Star litigator Hiroyuki Hagiwara and his sidekick Kyotaro Ozawa make a formidable duo. Teaming up with their US colleagues, they are representing Canon in a patent dispute against TCL Corporation in the Eastern District of Texas, as well as Xtera against Nokia, Alcatel Lucent and NEC in multiple post-verdict and appellate matters.
Quinn Emanuel Urquhart & Sullivan LLP
Quinn Emanuel Urquhart & Sullivan LLP offers “an aggressive approach, well-thought-out strategies and very good communication skills” to resolve any IP dispute. Through “tremendous research, preparation and presentation”, the litigation specialists will do what it takes to emerge victorious, as demonstrated by its impressive track record for blue-chip clients, including Qualcomm, Opticon and Canon. Ryan Goldstein is core to the firm’s success in Japan, especially since he is at the receiving end of increasing litigation funding for domestic giants. “Ryan listens to client demands carefully and suggests strategies accordingly that work for us. He is a standout in the legal field.” “Not only does he manage them well, Ryan can develop a strong and cost-effective team.”
Other recommended experts
Buoyed by fervent client praise, Latham & Watkins LLP’s corporate lawyer Stuart Beraha takes centre stage in the transactions table as the only highly recommended individual. He is currently representing Kioxia Corporation in big-dollar licensing negotiations. “Besides being very familiar with patent licensing and technology transfer, Stuart has detailed understanding of the semiconductor industry and its business and practices. Every matter he was involved in ended with a favourable outcome for us.” “Armed with excellent problem-solving skills, Stuart is highly efficient and relentless in defending our IP interests. He ensures that the best global resources are available to us.” “Stuart knows how to protect intellectual property in multiple jurisdictions, even in developing countries. He is the best in my long experience.”
Paul Hastings Foreign Law Joint Enterprise
Propelled by an eye-boggling track record in resolving sophisticated patent problems for top-tier clients, Paul Hastings Foreign Law Joint Enterprise emerges as a highly recommended firm in this year’s chapter. Alongside a growing portfolio of complex international arbitration cases resulting from IP-
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Malaysia
Malaysia has been doing well on the innovation front – its ranking on the Global Innovation Index 2020 rose two spots to 33 and it is now the second most innovative among 37 upper middleincome economies, trailing behind China. The Malaysian Intellectual Property Office (MyIPO) also continues to record significant success with its patent prosecution highway programmes, which were first introduced in 2014 to expedite prosecution based on favourable examination results from four foreign patent offices (those of Japan, Europe, China and South Korea). The programmes have proved popular with foreign clients, given their ease of use and lower costs. However, local practitioners report that the patent scene has been hit hard by covid-19. Incoming filing volume has fallen and court proceedings have slowed. According to MyIPO’s statistics, foreign patent applications dropped by 20% to a little over 5,200 in 2020, even as there was a slight increase in PCT applications and the number of granted applications exploded by 75% to more than 7,300. Proposed amendments to patent laws have also taken a backseat as all attention is focused on the pandemic.
Adastra Intellectual Property Sdn Bhd
Established in 2004, Adastra Intellectual Property Sdn Bhd has drafted and filed over 2,000 patent applications in Malaysia and India for a largely domestic clientele. Not only does the IP boutique have a Chinese desk to facilitate client service, it is well versed in obtaining IP rights in Singapore and Indonesia. Throughout his two decades of experience in the IP field, founder Mohan K has mastered foreign prosecution procedures.
Adipven Sdn Bhd
For the past 20 years, ISO9001:2015 qualified Adipven Sdn Bhd has acted on behalf of domestic companies, meeting their patent prosecution needs from its office in Kuala Lumpur. Managing director Ramakrishna Damodharan enjoys the distinction of being the first registered Malaysian geographical indications agent.
Advanz Fidelis IP Sdn Bhd
Geared towards an international client base, Advanz Fidelis IP Sdn Bhd offers the full gamut of IP services from prosecution to dispute resolution, as well as IP commercialisation and education. Staffed by 25 IP professionals, the boutique is part of Australian holding company QANTM Intellectual Property Group. Aside from coming up with strategies to integrate intellectual property and business goals, CEO Jern Ern Chuah advises the Sarawak state government on IP issues. “Extremely client-focused and always attentive to client needs,” Debbie David captains the patent team with panache, ably supported by division head and biotech specialist Andrew Yee, who is comes into his own when drafting and prosecuting patents.
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Firms: prosecution Highly recommended Henry Goh & Co Sdn Bhd
See p222
Marks & Clerk Recommended Adastra Intellectual Property Sdn Bhd Adipven Sdn Bhd Advanz Fidelis IP Sdn Bhd KASS International Mirandah Asia Pintas IP Group Rahmat Lim & Partners Shearn Delamore & Co SKRINE
See p290
Tay & Partners TEE IP SDN BHD Wong & Partners (member firm of Baker McKenzie International) ZICO Law
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Individuals: litigation
Shearn Delamore & Co
Highly recommended
SKRINE
See p290
Wong & Partners (member firm of Baker McKenzie International) Shook Lin & Bok LLP Tay & Partners Wong Jin Nee & Teo ZICO Law
Henry Goh & Co Sdn Bhd
Kherk Ying Chew Wong & Partners (member firm of Baker McKenzie International) Guan Huat Khoo SKRINE Timothy Siaw Shearn Delamore & Co Michael Soo Shook Lin & Bok LLP Recommended
The largest patent filing practice in town, Henry Goh & Co Sdn Bhd lays claim to the highest number of ranked individuals in the Malaysia chapter. Acknowledged by peers as “established IP specialists” who are “very good in what they do”, the patent prosecution powerhouse is often called upon by local law firms for its expert patent opinions, while clients increasingly seek it out for advice on contentious matters. Operating seamlessly across Malaysia, Singapore and Brunei, the firm drafts and prosecutes patents for a predominantly foreign clientele, holding steady with a significant market share despite the covid-19 pandemic. It recently added two newly registered patent agents to make a total of 13 in its ranks. Backed by in-house and private practice experience in London and Munich, Dave Wyatt is a regular patent attorney expert witness in Malaysian courts. Patent supervisor Yen Yen Oon excels in the microbiology space, while electronic and electrical engineer Jason Cheah captains the industrial designs group. No stranger to drafting patent specifications, Alvin Boey specialises in mechanical engineering. See p222 for firm profile
Cindy Goh Joo Seong Chooi & Company + Cheang & Ariff
KASS International
Linda CL Wang ZICO Law
KASS International provides a one-stop shop for IP services from offices across Southeast Asia – besides its headquarters in Kuala Lumpur, it has outposts in Singapore, Indonesia, Myanmar, Thailand and Vietnam manned by a diverse group of IP professionals. With over three decades of experience under his belt, founder P Kandiah has unparalleled knowledge of the local IP landscape.
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Pei Yee Kuek SKRINE Lee Lin Li Tay & Partners Gerald Samuel Marks & Clerk Indran Shanmuganathan Shearn Delamore & Co Suaran Singh Sidhu LAW Partnership Ambiga Sreenevasan Sreenevasan Advocates & Solicitors Bong Kwang Teo Wong Jin Nee & Teo
Marks & Clerk
Since opening an outpost in Kuala Lumpur over a decade ago, the Malaysian branch of UK patent firm Marks & Clerk remains “strong in inbound patent filings”. The local team is backed by a wealth of patent drafting expertise – especially in the fields of life sciences, information technology and electronics – nestled in a diverse team that speaks
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Malaysia Country more than 10 languages and dialects. A “hardcore patent prosecution lawyer”, Chris Hemingway is also a chartered UK and European patent attorney, as well as holding a PhD in microbiology. Gerald Samuel takes charge on the IP litigation and transactions front.
Mirandah Asia
Individuals: prosecution Alvin Boey Henry Goh & Co Sdn Bhd
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Jason Cheah Henry Goh & Co Sdn Bhd
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Prosecuting applications for foreign companies across industries is bread and butter for Mirandah Asia. The regional IP firm boasts outposts scattered across Southeast Asia and one in India, with a team of eight on the ground in Malaysia that are receiving a rising number of instructions on patent drafting briefs by local research and academic institutions, particularly those specialising in nanotechnology. A registered patent attorney in Malaysia and Singapore, CEO Patrick Mirandah backs up his considerable experience with training in mechanical engineering.
Jern Ern Chuah Advanz Fidelis IP Sdn Bhd
Pintas IP Group
Chris Hemingway Marks & Clerk
Through five offices dotted around Malaysia and offices overseas – including Singapore, Brunei and Myanmar, as well as outposts in the United States and China – Pintas IP Group makes it a point to work closely with its clients on the ground. Staffed by five patent agents and 10 patent engineers, the patent department is one of the around, drafting over 150 patent specifications annually and training local R&D teams on intellectual property. Since the firm set up a deep tech accelerator with venture capital management firm AIPO Capital LLP in 2020, it has been working closely with government-backed accelerators and university tech transfer offices on IP commercialisation. CEO Choon Hong Lok is the mastermind behind this new direction. Active in angel capital investment, he is also the founder of the Association of Intellectual Property Entrepreneurs and Organisations.
Rahmat Lim & Partners
A full range of IP services greet clients at Rahmat Lim & Partners. Whether it is IP portfolio management, IP commercialization or, more recently, freedomto-operate opinion work, the Malaysian associate firm of Singapore’s Allen & Gledhill is no stranger to the patent needs of multinationals, including the likes of Tencent Technology, LG Chem and Taiho Pharmaceutical. Pauline Khor holds the reins of the IP and technology department. Presiding over a team of 15, she has been advising Sime Darby Plantation Berhad on its patent needs for many years, acting as point of contact for more than 100 patents in a group restructuring exercise.
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Ramakrishna Damodharan Adipven Sdn Bhd Debbie David Advanz Fidelis IP Sdn Bhd Caroline Francis RamRais & Partners
Mohan K Adastra Intellectual Property Sdn Bhd P Kandiah KASS International Pauline Khor Rahmat Lim & Partners Brian Law LAW Partnership Choon Hong Lok Pintas IP Group Patrick Mirandah Mirandah Asia Charmayne Ong Poh Yin SKRINE Yen Yen Oon Henry Goh & Co Sdn Bhd
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Zaraihan Shaari Shearn Delamore & Co Timothy Siaw Shearn Delamore & Co Lin Yik Tee TEE IP SDN BHD
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Country Malaysia Jin Nee Wong Wong Jin Nee & Teo Dave A Wyatt Henry Goh & Co Sdn Bhd
Association and now chairs the Malaysia country group of the Asian Patent Attorneys Association.
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Andrew Yee Advanz Fidelis IP Sdn Bhd
Shearn Delamore & Co
Topping the patent litigation table, Shearn Delamore & Co has the wherewithal to establish, monetise and safeguard patent portfolios with alacrity. “A leading IP firm,” it boasts a cradle-to-grave IP offering, including a large and extensive patent prosecution practice staffed by an extensive IP team, and is known for attracting top pharmaceutical companies to its doors. Ever ready to provide “bespoke advice to a range of Asian clients seeking global IP protection”, Timothy Siaw straddles the contentious and noncontentious divide effortlessly by drawing upon nearly 30 years of experience. Making his debut in the IAM Patent 1000 this year, Indran Shanmuganathan is the person to call for complex patent litigation matters. Not only is he “bright, articulate, flexible and highly knowledgeable in Malaysian law”, the silver-tongued sharpshooter is “experienced and well-known for IP litigation”. A familiar face in local courts, he often acts on behalf of Malaysian entities such as Asia File Products Sdn Bhd and Sinowaja. For companies in the healthcare and life sciences industries, dual-qualified biochemist and lawyer Zaraihan Shaari is someone you want on speed dial. A foreign associate cannot help but sing her praises: “I really appreciate Zaraihan’s work and the final report she provides, which is comprehensive, detailed and pretty suggestive.” “Responsive and experts in their field, Zaraihan and her team played a very important part of a global strategic piece for a major international client.” Shaari recently teamed up with Shanmuganathan in a landmark patent infringement case for Merck Sharp and Dohme Corp against Hovid Bhd – the first time that the Federal Court overruled its own decision for an IP case. Michelle Loi is another “competent litigator who is growing in court experience”.
Shook Lin & Bok LLP
At full-service law firm Shook Lin & Bok LLP, managing partner Michael Soo runs a tight ship, with an IP, information technology and licensing department that focuses on licensing and franchising. Soo has a formidable presence in the local IP scene – he used to preside over the Malaysia Intellectual Property
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SKRINE
Providing the full gamut of patent services to a host of domestic and foreign companies across industries, SKRINE sits comfortably at the apex of the litigation table. The only Malaysian law firm to be part of the Lex Mundi network, it has a well-staffed ensemble of seven IP partners ever ready to tackle all manners of patent problems with Charmayne Ong Poh Yin – a “competent and experienced” wellrounded IP practitioner – taking the wheel of the IP and technology, media and telecommunications departments. A peer cannot help but sing her praises: “Charmayne has been practising in the IP area for many years and has mastered different areas of IP practice, including litigation, IP commercialisation, and all facets of IP registration. She has the uncanny ability to pick out the most intricate transactional issues that come up in a technology project and present it in the most logical and persuasive manner.” Armed with over three decades of experience, an eye-popping track record and “good knowledge of the law”, Guan Huat Khoo enjoys a stellar reputation in the local IP community. “Guan Huat is a very respected litigator for intellectual property and patent matters.” “He is a well-known IP litigator with a very wide and prolific experience in other areas, such as arbitration and commercial litigation. Not only does he have a good grasp of complex issues in an IP dispute, he is well regarded in complicated cases and very pleasant to work with.” With Khoo leading the disputes team, fellow litigators such as Pei Yee Kuek are racking up wins in the courtroom. They are both representing Nuctech and Tsinghua University in a patent infringement dispute, while Kuek is also acting on behalf of Duopharma in a patent dispute against Novartis SA. See p290 for firm profile
Tay & Partners
Commercial law firm Tay & Partners serves up an extensive menu of IP services to clients of all stripes. Foreign associates and multinational corporations – particularly blue-chip companies such as Guangdong Oppo, Suntory and Nuctech – rely on the compact team to prosecute patents, while others look to the firm to protect and enforce their IP rights. As its Chinese client base grows, the IP practice is expanding its life sciences and healthcare practice and attracting more technology clients. Versatile IP operator Lee Lin Li oversees the lively, nearly all-female IP department. Having resolved a patent dispute for Celltrion against F Hoffman La-Roche AG,
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Malaysia Country she continues to represent Kingtime International Limited in a patent infringement suit against Petronas Carigali Sdn Bhd at the High Court.
YKL Engineering Sdn Bhd in a patent and copyright infringement case before the High Court.
TEE IP SDN BHD
“Zico Law has a wide network of professionals, which allows them to assist their clients in their IP requirements in several jurisdictions. They are very responsive and helpful in answering queries and assisting their client’s needs.” Through offices in every Association of Southeast Asian Nation country and a nimble team of 13 patent professionals – including two technically patent attorneys – manning the Kuala Lumpur office, the full-service law firm is a one-stop shop for patent services. It can provide IP litigation support as easily as it drafts and prosecutes patents for a largely foreign clientele. Aside from managing Terumo Corporation’s patent portfolio, IP captain Linda Wang is advising Biocon in a patent invalidation action against Sanofi before the High Court.
A decade since being established, TEE IP SDN BHD has flourished into an IP boutique of six patent professionals stationed at two offices in Malaysia to serve the needs of domestic companies. Much of the firm’s success can be attributed to founder Lin Yik Tee, who is knowledgeable about every facet of intellectual property, from patents and industrial designs to trademarks and copyrights.
Wong & Partners (member firm of Baker McKenzie International)
Baker McKenzie member firm Wong & Partners is a top choice for foreign companies, particularly those in the technology and pharmaceutical industries, saddled with contentious patent problems in Malaysia. From registering patents or enforcing IP rights, the patent team always ensures that clients can find the best solution to meet their business needs. Commercially minded litigator Kherk Ying Chew helms the IP department with aplomb.
Wong Jin Nee & Teo
Compact and nimble best describe Wong Jin Nee & Teo, an IP boutique that thrives on patent dispute resolution and patent licensing. It is also equally adept when it comes to filing and prosecuting patents, working closely with external drafters to prepare specifications. Jin Nee Wong shines on the prosecution front, with Bong Kwang Teo leading the patent and litigation teams. Wong is described by a peer as “a leading light in the Malaysian IP scene and very vocal in IP associations”, while Teo is busy in the courtroom. Currently, he is representing
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ZICO Law
Other recommended experts
“Very well-versed in patent laws,” Cindy Goh Joo Seong is recognised by peers as “a good litigator and very worthy opponent”. She operates out of Chooi & Company + Cheang & Ariff. At LAW Partnership, Brian Law and Suaran Singh Sidhu, together with the recent addition of Ameet Kaur Purba, make a formidable team, which covers all bases in contentious and non-contentious patent matters. While Law negotiates joint venture agreements and prosecutes patents all over the world for Mega Fortris Group, Sidhu protects the IP rights of companies across industries. Making her debut in the IAM Patent 1000 this year, Caroline Francis leads a substantial patent filing practice at Ram Caroline Sha & Syah, formerly known as RamRais & Partners. No list would be complete without Ambiga Sreenevasan of Sreenevasan Advocates & Solicitors, a senior counsel and human rights lawyer held in high regard by the local legal community.
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Boey, Alvin Senior Patent Agent – Henry Goh & Co Sdn Bhd alvin@henrygoh.com | www.henrygoh.com
Alvin Boey graduated in 2004 with an honours degree in mechanical engineering from the University of Monash, Australia. He was involved in the research, development and implementation of heavy machineries at a major manufacturing company in Malaysia before deciding to pursue a career in intellectual property. Mr Boey joined the firm in 2006 and qualified as a registered patent agent, trademark and industrial design agent in 2008. His work involves advising local and foreign clients on IP protection, conducting searches and the drafting and prosecution of applications for patents and industrial designs. His patent drafting experience includes inventions in the fields of electromechanical devices, agricultural machinery and plant, water and wastewater treatment, and medical devices. His experience as a mechanical engineer has provided invaluable technical knowledge in assisting clients in their IP needs related specifically to mechanical inventions. In addition to his extensive prosecution work, Mr Boey has conducted numerous freedom-to-operate searches and provided infringement and validity opinions. He has appeared before the Kuala Lumpur High Court as an expert witness. Mr Boey also serves as a business development strategist at Henry Goh. His role includes identifying, analysing, and strategising with a focus on the implementation and execution of the firm’s strategic plans. Mr Boey is a savvy content creator and puts his creativity to good use for the benefit of the firm’s marketing and advertising activities. Mr Boey is a member of the Asian Patent Attorneys Association (APAA) and the International Trademark Association (INTA).
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Henry Goh & Co Sdn Bhd VO2-10-06 Lingkaran SV Sunway Velocity Jalan Peel Kuala Lumpur 55100 Malaysia T +60 3 9771 8688 See firm profile p222 Professional associations • APAA • INTA
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Cheah, Jason Design Manager – Henry Goh & Co Sdn Bhd jason@henrygoh.com | www.henrygoh.com
Jason Cheah graduated in 1993 with an honours degree in electronic and electrical engineering from the Queen’s University of Belfast, Northern Ireland. He is a registered Malaysian patent, industrial design and trademark agent. Mr Cheah joined Henry Goh in 2002 and has been a manager since 2005. His daily work includes advising clients on IP protection, and drafting and prosecuting patent and industrial design applications in Malaysia and overseas. As design manager, Mr Cheah oversees the firm’s industrial design registration work. His industrial designs experience is extensive, having handled the filing and prosecution of a large portfolio of design applications. He frequently consults officers of the Industrial Designs Registry and is up-to-date with changes in Malaysian industrial design law and practice. His patent drafting experience includes both electrical-related and mechanical-related inventions, as well as internet-related inventions such as e-commerce and internet security solutions. Mr Cheah has successfully prosecuted a substantial number of patent applications directed at internet-related inventions, sanitation fittings, driven pile testing devices and cargo pallets, both in Malaysia and before foreign patent offices in the United States, Australia, China, Indonesia, Japan, Singapore and Vietnam. Mr Cheah is a member of the Asian Patent Attorneys Association and the International Trademark Association.
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Henry Goh & Co Sdn Bhd VO2-10-06 Lingkaran SV Sunway Velocity Jalan Peel Kuala Lumpur 55100 Malaysia T +60 3 9771 8688 F +60 3 9771 8788 See firm profile p222 Professional associations • APAA • INTA
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Oon, Yen Yen Head of Patent and Industrial Design – Henry Goh & Co Sdn Bhd yen@henrygoh.com | www.henrygoh.com
Yen Yen Oon is head of patent and industrial design at Henry Goh Malaysia. She joined the firm in 2002 and qualified as a registered Malaysian patent, industrial design and trademark agent in 2004. Ms Oon was appointed business development manager in 2008. In 2013 she became the patent manager overseeing daily operations, including staff training and education on Malaysian and foreign patent law and practice, prior to being appointed to her current role in January 2021. Ms Oon holds an LLM (with merit) from the University of London and an honours degree in microbiology from University Malaya. She specialises in the fields of biotechnology and chemistry patenting. Her advice on the identification of patentable inventions, and the drafting and prosecution of Malaysian and overseas patents is much sought after. Her opinions on patentability, infringement, freedom to operate and validity have been pivotal for clients’ businesses. She has conducted workshops and regularly speaks on various patent subjects such as practice and prosecution, interpretation of claim scope, searching and plant variety protection. Over the course of her career, she has gained considerable depth of experience in drafting, prosecution and contentious matters, both locally and internationally. Ms Oon is cited as a recommended patent professional in IAM Patent 1000 – The World’s Leading Patent Practitioners. In addition to prosecution, she has been recognised as a “Malaysian IP Star” by MIP for her expertise in the areas of strategy and counselling, opinion, licensing, protection and litigation, and opposition. She is a member of the Malaysian Intellectual Property Association and has served as a co-opted member of its executive committee. She is also a member of the Asian Patent Attorneys Association and INTA. In addition to the patent and industrial design practice, Ms Oon heads business development at Henry Goh. She oversees the marketing activities and implementation of the firm’s business plan. Besides an abiding dedication to patent law and business development, Ms Oon has a deep appreciation of ancient languages and scripture, a mad passion for LEGO building and an irrational obsession with Manchester United.
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Henry Goh & Co Sdn Bhd VO2-10-06 Lingkaran SV Sunway Velocity Jalan Peel Kuala Lumpur 55100 Malaysia
T +60 3 9771 8688 F +60 3 9771 8788 See firm profile p222 Professional associations • APAA • INTA • MIPA
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Wyatt, Dave A Executive Director – Henry Goh & Co Sdn Bhd dave@henrygoh.com | www.henrygoh.com
Dave A Wyatt joined Henry Goh Malaysia in 1996 and was appointed as an executive director in 2002. He has devoted many years at the firm to building up the human capital, expertise and processes of the patent and industrial design department. Mr Wyatt is a European patent attorney and a registered Malaysian patent, industrial design and trademark agent. He began his IP career in the patent department of General Electric Company in the United Kingdom before working in private practice with leading patent attorney firms in London and Munich. Mr Wyatt has lectured and conducted workshops on patent practice and drafting for the Malaysian patent agent examinations. His comprehensive in-house training on technical, legal and procedural aspects of IP protection has led to the successful registration of 14 Malaysian patent agents at Henry Goh. Throughout his career, Mr Wyatt’s practice has focused on patent drafting and prosecution. However, apart from prosecution work, patent disputes and litigation have been increasing in Malaysia in recent years and Mr Wyatt has come to be in demand for his opinions on patent validity and infringement. He has appeared before the high court of several states of Malaysia as a patent attorney expert witness. With over 30 years of IP experience, Mr Wyatt’s advice and opinion are much sought after. They are increasingly leveraged within the firm by Mr Wyatt offering expertise and mentoring to the patent and industrial design teams, as well as global perspective on and insight into developments in IP law and practice. Mr Wyatt is a member of the Malaysian Intellectual Property Association, the Asian Patent Attorneys Association, the International Federation of Industrial Property Attorneys and the International Trademark Association, and an associate member of the United Kingdom’s Chartered Institute of Trademark Attorneys. True to his engineering roots, he is also a member of the United Kingdom’s Institution of Engineering and Technology and a chartered engineer of the Engineering Council UK.
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Henry Goh & Co Sdn Bhd VO2-10-06 Lingkaran SV Sunway Velocity Jalan Peel Kuala Lumpur 55100 Malaysia T +60 3 9771 8688 F +60 3 9771 8788 See firm profile p222 Professional associations • APAA • FICPI • INTA
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New Zealand
In New Zealand, some industries have fared better than others during the covid-19 pandemic. The pharmaceutical and life sciences sectors have remained busy throughout this time and patent attorneys say that some inventors have taken advantage of lockdowns to get creative. The country’s patent landscape continues to change, with a slow but steady decline in patent filings in the past decade. In more positive news, AJ Park’s acquisition of Baldwins became the talk of 2020, continuing the trend of big-ticket mergers along with the emergence of new competitors of all sizes.
AJ Park
An unstoppable force and the country’s largest IP practice by a wide margin, “pre-eminent” AJ Park has expanded even further by acquiring fellow IP firm Baldwins. The two teams will now work as one to offer unbeatable patent services to an impressive client base. Foreign associates know Anton Blijlevens as an “approachable, extremely capable and reliable patent attorney who can deliver professional services which meet clients’ needs and level of expectation”. Another patron comments on the “thorough and detailed” Michael Brown’s ability to “easily identify key novel and inventive aspects of our engineering technologies” due to his “high level of technical understanding”. Besides arguing with patent examiners in the United States, Europe and Asia and achieving successful outcomes, Brown has demonstrated that he is an excellent role model who can “foster entrepreneurial attitudes in young inventors”. In Wellington, Matt Adams helps to protect the rights of patent owners in the computer and information technology fields as a principal in the engineering and IT team. Mark Hargreaves heads AJ Park’s commercial team while Hadleigh Brown has made a great impression with his “strong electrical and engineering understanding and background knowledge, which can be difficult to find in legal circles”. European, Trans-Tasman and UK-qualified patent attorneys Chris Way and Andy Locke join AJ Park along with fellow former Baldwins colleagues Wes Jones and Paul Johns, experts on portfolio management and contentious matters, respectively.
Catalyst Intellectual Property
Catalyst Intellectual Property offers top-notch patent protection services to companies from New Zealand and across the globe. With a background in chemistry and experience in in-house and in private practice work, Greg Lynch provides commercial advice that assists service users in reaching their business goals. Peers view John Mansell as “highly respected and capable in the areas of biotechnology, drafting and prosecution work”.
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Firms: litigation AJ Park Chapman Tripp Ellis Terry
See p212
James & Wells
Firms: prosecution AJ Park Catalyst Intellectual Property CreateIP Davies Collison Cave Dentons Ellis Terry
See p212
Henry Hughes IP James & Wells
Chapman Tripp
Matt Sumpter is an intelligent litigator with an excellent commercial sense. In fact, he is one of the reasons that Chapman Tripp has become known for housing one of the best contentious practices in the country. The outfit is recognised not only for its deep IP knowledge, but also for its dedication to patrons and to understanding their individual requirements.
CreateIP
A firm that prides itself on its service, CreateIP comprises a compact group of IP professionals who display equal amounts of technical skill and ambition.
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New Zealand The practice continues to grow year on year under founder and mechanics and engineering guru Robert Snoep’s leadership. Since the firm’s establishment in 2009, Snoep has focused on guiding businesses every step of the way and assisting with everything from filing to dispute resolution. Further, the group works closely with litigation experts to meet companies’ needs. Shayne Nam holds a doctorate in chemistry and as well as drafting and analysing patents, he prioritises building solid relationships with clientele.
Davies Collison Cave
Australian IP specialist Davies Collison Cave recently extended its reach to New Zealand by opening an office in Wellington. Molecular biology PhD holder Humphrey Foote’s practice is centred around protecting the rights of innovators in the agricultural, horticultural, pastoral, forestry, life science and biotechnology fields. Meanwhile, Scott Sonneman takes care of engineering and IT matters, putting his experience as a software developer and engineer to good use.
Dentons
The perks of being a part of the world’s largest law practice include access to a vast pool of expertise and resources and clients of Dentons’ New Zealand branch – ranging from start-ups to world-renowned multinationals – certainly benefit from this global reach. The patent group was established in 2018 by Andrew Baker, a New Zealand and Australiaqualified patent attorney whose special expertise lies in medical devices, human and animal healthcare and agribusiness.
Ellis Terry
Ellis Terry’s expertise in the software, electrical and mechanical engineering space is hard to match. It is no wonder that it is the preferred firm for numerous New Zealand and Australia-based world-leading enterprises in need of comprehensive IP services. Peers hold Ellis Terry’s patent practice in high praise, commending Blayne Peacock for being a “very practical attorney” and his well-regarded colleague John Terry for his “incomparable experience”. “Both have proven capability in drafting and prosecution work, and the firm is known for being a leader in the ICT field.” See p212 for firm profile
Henry Hughes IP
A firmly established IP outfit with a history that dates back more than 130 years, Henry Hughes is a trustworthy ally for patent owners. Having joined as a director in 1991, Frank Callus ensures that all work
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Individuals: litigation Highly recommended Ian Finch James & Wells Matt Sumpter Chapman Tripp Recommended Gus Hazel James & Wells Paul Johns Baldwins Blayne Peacock Ellis Terry Richard Watts Simpson Grierson
Individuals: prosecution Matt Adams AJ Park Jon Ashen Blue Penguin IP Andrew Baker Dentons Julie Ballance In-Legal Ltd Anton Blijlevens AJ Park Hadleigh Brown AJ Park Michael Brown AJ Park Frank Callus Henry Hughes IP Jane Calvert In-Legal Ltd
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Country New Zealand Humphrey Foote Davies Collison Cave Wes Jones Baldwins Andy Locke Baldwins Jonathan Lucas James & Wells Greg Lynch Catalyst Intellectual Property John Mansell Catalyst Intellectual Property Shayne Nam CreateIP Blayne Peacock Ellis Terry Jim Piper PIPERS Jason Rogers James & Wells Jo Shaw Blue Penguin IP Robert Snoep CreateIP Scott Sonneman Davies Collison Cave John Terry Ellis Terry Chris Way Baldwins
that comes through the firm meets its strict quality standards. Callus is an experienced biophysicist who comfortably navigates mechanical, chemical and life science spaces.
James & Wells
James & Wells has seen significant growth in the past year, and to keep up with demand it opened up a new office in Wellington after acquiring Brisbane-
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Individuals: transactions Allan Bowie Bowie Yorke Mark Hargreaves AJ Park David Macaskill James & Wells Blayne Peacock Ellis Terry Richard Watts Simpson Grierson
based firm Innofy IP. Patent owners can rest assured that their patents will be taken care of by some of the best in the business, as the group “really steps up to ensure that everything clients need is done in a timely manner, while walking us through the different processes so we can agree on the next steps”. Jonathan Lucas does not just have “an amazing technical grasp of complex physics and engineering”, his personal qualities also make him a joy to work with. “He is down to earth, kind and friendly and no question is considered trivia. He takes the time to explain all the options in a way that is easy to understand. I highly recommend Jonathan and his team.” Guz Hazel and Ian Finch have contributed to the litigation team’s reputation as diligent professionals who “give clear and timely advice”. Skilled strategist David Macaskill makes his sophomore appearance in IAM Patent 1000 this year while Jason Rogers – head of the life sciences group – joins the rankings for the first time.
Other recommended experts
Jon Ashen and Jo Shaw at Blue Penguin IP are “very experienced practitioners who make light work of drafting and prosecution matters”. Both hold doctorates, with Ashen specialising in biological patents and Shaw on chemical patent issues. Before joining Bowie Yorke, corporate and commercial lawyer Allan Bowie was responsible for setting up the IP team at MinterEllisonRuddWatts and the commercial team at AJ Park. Former senior director of intellectual property and contracts at Inotek Pharmaceuticals Corporation, Jane Calvert of In-Legal wields a PhD in organic chemistry. Her colleague Julie Balance’s list of clients includes global corporations in the pharmaceutical and chemical industries. Jim Piper,
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New Country Zealand founder of Pipers, is a dedicated IP lawyer who celebrated 50 years in the field in 2020. Richard Watts captains the “top notch intellectual property team” at Simpson Grierson which “focuses on particularly high-quality work. They are excellent for their commerciality and never fail to meet clients’ needs and expectations”.
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Philippines
On 6 February 2020, as the covid-19 pandemic began to rage across the country, the IP Office of the Philippines (IPOPHL) welcomed its new director general, Rowel S Barba. Determined to reach its goal of full digitalisation by the end of 2021, the IPOPHL continued on its digital transformation journey throughout the year. Among various updates, it launched online mediation proceedings and hearings, expanded its e-services offering to enable end-to-end electronic processing of IP registrations and protection, and introduced a mobile app to facilitate such services, including filings, registrations and making complaints against infringers. Filipino citizens are also becoming increasingly informed about intellectual property, especially as schools and researchers upskill their patent search capabilities. In addition, the government is further encouraging domestic innovation through the new Science and Technology Superhighway Project, which aims to fast-track 1,050 IP applications funded by the Department of Science and Technology. This growing thirst for innovation is not going unnoticed; the Philippines jumped four ranks to break into the top 50 in the 2020 Global Innovation Index.
ACCRALAW
Closing in on nearly 50 years of history, ACCRALAW is one of the oldest and largest law firms in the Philippines. Adept in all things patents, contentious or non-contentious – including prosecution and drafting infringement opinions and licensing agreements – the team tends to IP briefs for a diverse range of clients from its offices in Manila, Cebu and Davao. A prolific writer of scholarly works on intellectual property, Alex Ferdinand Fider captains the IP department. Richmond Lee is a dual-qualified engineer and lawyer who takes the lead on patent enforcement, while Jose Eduardo Genilo specialises in drafting mechanical and electrical patents.
Baranda & Associates, an affiliated law firm to Rouse
Size belies strength; with a team of just six patent lawyers and paralegals, Baranda & Associates is a force to be reckoned with. “Their creative mix of lawyers and technical personnel allow them to render quality IP service to their clients, as well as reliable, efficient and practical advice on IP protection matters.” The Manila branch of IP consultancy Rouse powers through patent prosecution matters, although recently it has been particularly busy advising on freedom-to-operate searches. Vouched by peers – “he understands patents and he’s really nice; we truly respect him” – Edmund Baranda is the only highly recommended individual in the Philippines chapter. A specialist in molecular biology and biotechnology, he is well versed in patent drafting and infringement actions in the pharmaceutical field.
Castillo Laman Tan Pantaleon & San Jose Full-service law firm Castillo Laman Tan Pantaleon & San Jose stands out for its expertise in prosecuting patents in the pharmaceutical space. Devoted to
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excellence in client service and armed with effective IP management software, the team has captivated domestic and foreign patrons alike. Much of this can be attributed to founding partner Noel Laman, who has been instrumental in setting up and building the side’s IP practice over the past 30 years.
Cruz Marcelo & Tenefrancia
“Very familiar with the preparation and prosecution of patent applications in the Philippines, Cruz Marcelo & Tenefrancia practitioners give very useful advice based on their experience. I always refer them to colleagues or clients who wish to file there.” The lawyers are not only trained in various technical fields, but also continuously learning and improving their patent skills as a result of the firm’s high investment in professional development. Hence, the full-service outfit is well positioned to render the full spectrum of patent services. As a designated patent agent for the Department of Science and Technology – Technology Application and Promotions Institute, the team drafts and prosecutes patents for governmentfunded inventions. Recently, it has been tasked with providing freedom-to-operate analysis and opinions, as well as conducting IP valuation. A dual-qualified lawyer in applied physics, Rowanie Nakan captains the patent department. Among various achievements, she was involved in representing United Laboratories and Thermapharma in a patent infringement matter against Warner Lambert Co LLC and Pfizer.
EB Astudillo & Associates
Recognised by peers for its long history in intellectual property and reputation for IP litigation in particular, EB Astudillo & Associates makes its way into the silver tier of the firm ranking table. Established as a general practice law firm, the side has evolved into an IP boutique that adds the personal touch to its
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Philippines client service. Working closely with foreign associates, the dedicated team of 20 – including patent agents well versed in a range of technical fields – assists international rights holders in patent applications and enforcement. Founder Enrico Astudillo practised commercial law before focusing solely on intellectual property, extending his business acumen to patent prosecution and litigation.
Firms
Esguerra & Blanco Law Offices
SyCip Salazar Hernandez & Gatmaitan
Esguerra & Blanco Law Offices is a full-service law firm that provides creative yet practical patent solutions to a diverse range of businesses. Committed to delivering top-notch client service and forging long-term relationships, the IP department is laserfocused on producing results by working closely with its patrons. Carlos Villaruz, co-managing partner for litigation, labour and intellectual property, is a name for the address book.
Federis & Associates
Well known for its prolific trademark filing practice, Federis & Associates is busy filing patents too. Staffed by a nimble team of seven, including four patent agents, the IP boutique handles everything from patent searches to prosecuting patent applications for inventions, utility models and industrial designs. A familiar sight at international conferences, managing partner Mila Federis leads the firm with poise.
Quisumbing Torres
A standout in the gold tier of the Philippines chapter for its work on both sides of the contentious/noncontentious divide, Quisumbing Torres draws on the extensive Baker McKenzie global network to provide patent advice to big-name companies and local inventors alike. From its Manila office, the eight-strong team takes to intellectual property like a fish to water. It is also tending to a growing number of data privacy matters. Both IP head Bienvenido Marquez and cohead of the technology, media, and telecoms industry group Divina Pastora Ilas-Panganiban enjoy a high profile in the domestic IP landscape. Where Marquez presides over the Philippine chapter of the Licensing Executives Society (LES Philippines), Ilas-Panganiban chairs the American Chamber of Commerce of the Philippines’ IP rights committee.
Romulo Mabanta Buenaventura Sayoc & De Los Angeles The only Filipino firm with a Lex Mundi membership, Romulo Mabanta Buenaventura Sayoc & De Los Angeles can find a solution to any patent problem – whether by relying on its local ensemble of
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ACCRALAW Baranda & Associates, an affiliated law firm to Rouse Quisumbing Torres
Cruz Marcelo & Tenefrancia EB Astudillo & Associates Esguerra & Blanco Law Offices Sapalo Velez Bundang & Bulilan Villaraza & Angangco Castillo Laman Tan Pantaleon & San Jose Federis & Associates Romulo Mabanta Buenaventura Sayoc & De Los Angeles
14 practitioners or by consulting its expansive international network of over 22,000 lawyers. The full-service IP practice encompasses patent filing, enforcement and litigation. Rogelio Nicandro is the contact to have on speed dial.
Sapalo Velez Bundang & Bulilan
Through its five Filipino offices, Sapalo Velez Bundang & Bulilan tends to the IP needs of both domestic and foreign clients, including JFE Steel Corporation and Dart Industries. It is also works closely with local universities to promote awareness of IP rights among students. A former director of the IPOPHL for nine years, managing partner Ignacio Sapalo boasts an illustrious career in intellectual property. Among numerous achievements, he was involved in writing the Intellectual Property Code of the Philippines 1998.
SyCip Salazar Hernandez & Gatmaitan
Celebrating its 76th anniversary, SyCip Salazar Hernandez & Gatmaitan is the largest full-service firm in the Philippines – with a massive IP department to boot. Among its most prolific practices are patent filing and portfolio management, although the team is no stranger to resolving infringement disputes and
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Philippines Individuals Highly recommended Edmund Baranda Baranda & Associates, an affiliated law firm to Rouse Recommended Enrico Astudillo EB Astudillo & Associates Ma Sophia Editha Cruz-Abrenica Villaraza & Angangco Mila Federis Federis & Associates Alex Ferdinand Fider ACCRALAW Jose Eduardo T Genilo ACCRALAW Divina Pastora V Ilas-Panganiban Quisumbing Torres Richmond K Lee ACCRALAW Bienvenido A Marquez III Quisumbing Torres Rowanie Nakan Cruz Marcelo & Tenefrancia Vida M Panganiban-Alindogan SyCip Salazar Hernandez & Gatmaitan Ignacio S Sapalo Sapalo Velez Bundang & Bulilan Carlos Villaruz Esguerra & Blanco Law Offices
Villaraza & Angangco
Through its impressive in-house technical capabilities and team of nine IP lawyers, Villaraza & Angangco is armed to the teeth and ready to provide the full spectrum of patent services. The firm files Patent Cooperation Treaty national phase entry applications for the likes of Alibaba, Gogoro and Kubota Corporation, as well as a growing Chinese clientele in sectors such as fintech, e-commerce and data security. Recently, it has represented a number of pharmaceutical companies to secure favourable decisions in patent cancellation actions, including Getz Pharma against Astrazeneca AB and Astra Aktiebolag, as well as Innogen Pharmaceuticals against Merck Sharp & Dohme. While bolstering its ranks with the addition of licensed physician Maria Patricia P Cruz, the side gives lectures on intellectual property to start-ups and university students. One happy patron states: “We send all our Philippine patent applications to V&A and in all of them, we have been pleased by their technical understanding of the cases, especially in the semiconductor production field. We are very pleased with their services – we appreciate not only the quality of their work, but also their quick responses and reasonable price.” Another client highlights their long-term working relationship: “When I moved to another company, there was no other firm I had in mind to help us on patentrelated cases but V&A. Because of their professional approach, we have been marketing our products seamlessly without commercial interruptions related to patent cases.” With a background in molecular biology and experience in scientific research, junior partner Ma Sophia Editha Cruz-Abrenica tackles patent matters effortlessly. “Sophie has always been helpful on giving insights on what could be done using the most practical and efficient approach. Every step of the way, she extends her services by giving us relevant information from other countries and being willing to go wherever required, doing so with flying colours every time.” Bienvenido Somera also deserves a mention for his “professional and proactive handling of cases”.
negotiating licensing agreements either. Under the guidance of IP captain Vida Panganiban-Alindogan, the side serves a predominantly foreign clientele, particularly pharmaceutical companies such as F Hoffmann-La Roche AG, Pfizer, AbbVie and Actelion Pharmaceutical. Panganiban-Alindogan is also the assistant treasurer of LES Philippines.
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Singapore
Last year the Intellectual Property Office of Singapore (IPOS) was ranked as the world’s most innovative IP office, an achievement due in large part to the efforts of former chief executive Daren Tang to transform the organisation from an administering registry to an innovation agency. Tang departed in 2020 to become the new director general of WIPO, one of the most high-profile jobs in intellectual property. Under his successor, career Singapore government official Rena Lee, IPOS continues to push boundaries. It recently announced what it claims will be the world’s fastest patent grant process, cutting pendency for new rights to just six months. This fast lane is open to applications that are first filed in Singapore and contain 20 or fewer claims – although for now the office only has the capacity to grant five of these fast-track requests per month and applicants are limited to 10 requests per year. The initiative follows previous trials that focused on specific technology areas such as AI, although the new scheme applies to any technology.
Allen & Gledhill LLP
“Allen & Gledhill live up to their strong reputation in patent litigation. They are leading practitioners with in-depth knowledge of both local Singapore law and global patent legal developments.” The firm’s unmatched standing for handling contentious disputes was largely built by its head of intellectual property, Stanley Lai SC – one of just two senior counsel in Singapore who specialises in trying IP cases. His current brief is acting for industrial giant Nippon Steel in a patent assertion against a key rival – with parallel disputes ongoing in Japan and Taiwan, this will be a closely watched contest throughout the region. It follows a star turn in one of the biggest global patent wars of last year, when Lai led a team on behalf of Taiwan Semiconductor Manufacturing Corporation against Globalfoundries, prior to the two sides agreeing to a licence. Pei Lin Low has established an impressive drafting and prosecution practice over more than 20 years with the firm. Big local innovators like the Agency for Science, Technology and Research and Nanyang Technological University count on Low’s team to procure grants across the wide range of technologies that they both study. Strong Chinese language capability within the group has also made loyal clients of top Chinese firms including Huawei. As head of the technology and corporate IP practice, Tham Kok Leong rounds out Allen & Gledhill’s offering with a more transactional bent – he is often approached to craft licensing and commercial agreements and to advise on matters of data protection, cybersecurity and e-commerce.
Amica Law LLC
IP specialist firm Amica Law LLC provides all-round services to a roster of clients that includes local leaders such as the National University of Singapore alongside Fortune 500s such as ExxonMobil. The group has been in the spotlight recently for its role
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Firms: transactions Allen & Gledhill LLP Amica Law LLC Baker McKenzie Wong & Leow Bird & Bird LLP Dentons Donaldson & Burkinshaw LLP Drew & Napier LLC Lee & Lee WongPartnership LLP
in one of Singapore’s longest running current patent disputes; a team led by litigation practice head Jason Chan is acting for Element Six Technologies, a subsidiary of De Beers Group, in a landmark infringement case involving patents for synthetic diamond production. Young litigator Melvin Pang joins the ranks of the IAM Patent 1000 this year. “Melvin is quick to grasp the issues and pick up his client’s concerns and wishes. He is expert at providing legal advice that evaluates all the options, considers the business as well as the legal aspects, weighs up the pros and cons, and delivers a concise, reasoned recommendation.” From AI to semiconductors to biotech, top names in tech entrust portfolio matters to Amica’s sizable prosecution team. Director Winnie Tham plays a key role on that side of the business, drawing on her own technical background to obtain rights for life sciences innovators. Inventors love
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Bird & Bird LLP
working with Edmund Kok: “It’s refreshing to have an IP attorney that brings a scientific-oriented angle and knows our lingo well.” Kok draws praise for his breadth of knowledge, thoroughness and skilful rebuttals against examiners.
Dentons
Baker McKenzie Wong & Leow
Firms: litigation Allen & Gledhill LLP
Drew & Napier LLC Amica Law LLC Lee & Lee Baker McKenzie Wong & Leow Mirandah Asia
Firms: prosecution Marks & Clerk Spruson & Ferguson Viering, Jentschura & Partner Allen & Gledhill LLP Amica Law LLC Baker McKenzie Wong & Leow Dentons Donaldson & Burkinshaw LLP Drew & Napier LLC McLaughlin IP Pte Ltd Bird & Bird LLP Davies Collison Cave Lee & Lee Mirandah Asia WongPartnership LLP
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Baker McKenzie Wong & Leow represents a key node in the global network of more than 150 patent lawyers and agents. Innovators approach the firm directly for its knowledge of Singapore’s laws, with many relying on it to coordinate filings across the Southeast Asia region. “The team has excellent domain knowledge, is highly responsive and provides thoroughly considered advice on every issue – plus they understand clients’ needs and tailor their legal strategies accordingly.” Andy Leck sits atop the IP practice group, formulating dispute resolution strategies as well as taking on complex transactional briefs related to franchise, pharmaceutical and media partnerships. On the prosecution side, Abe Sun has subject matter expertise across a wide range of technologies including hardware, software, AI and blockchain. Sun also prosecutes applications not just in Singapore but in the United States, Europe and various Asian jurisdictions. Ren Jun Lim dispenses advice on the full range of healthcare matters, possessing expansive knowledge on the overlap of IP and regulatory issues. The side’s valuation capabilities mark it out from the crowd: it is currently the only law firm appointed to the panel of valuers for Singapore’s path-breaking IP Financing Scheme.
Bird & Bird LLP
A mainstay at the top of Singapore’s patent litigation table, Bird & Bird ATMD LLP is “recommended in the strongest possible terms” for work covering the whole of the patent lifecycle. The firm credits its contentious prowess to its across-the-board strength, which lets its lawyers draw on the skills of full-time in-house patent attorneys. Alban Kang is universally recognised as one of Singapore’s most outstanding patent litigators, a reputation hardearned over 30 years of practice. “Knowledgeable, creative and flexible” Anan Sivananthan’s many years of experience as an in-house counsel for a patent-owning company really shine through: “Anan and his team fully understand the business objectives of the client, which is not always the case with other firms.” Senior patent attorney Hui Leng Tan handles prosecution from major clients both foreign and domestic.
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Singapore Country Luminaries Ai Ming Lee Dentons
Individuals: transactions Maurice Cheong Lee & Lee Chung Nian Lam WongPartnership LLP Tham Kok Leong Allen & Gledhill LLP Ren Jun Lim Baker McKenzie Wong & Leow Siau Wen Lim Drew & Napier LLC Jevon Louis Shook Lin & Bok LLP Anan Sivananthan Bird & Bird LLP Abe Sun Baker McKenzie Wong & Leow Yvonne Tang Drew & Napier LLC
Davies Collison Cave
The Singapore outpost of Australia’s leading patent attorney firm continues to make inroads into the market. Original drafting services are especially in-demand, with DCC’s international reputation helping it to attract plenty of work in that area. Thomas Griffiths is managing principal on the ground in Singapore, while the “very well regarded” Ken Simpson continues to contribute after returning to Melbourne. The small team was recently bolstered with two new local hires: PhD holders with expertise in life sciences and communications tech. “They only got a foothold here in the past several years, but they have established a reputation for high-quality work.”
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Dentons
Dentons Rodyk is the Singapore arm of a full-service giant with a terrific reputation in the patent space. By drawing on its global network, the six-partner contingent in the Lion City can provide services across the whole IP lifecycle: creation, commercialisation, assertion, sale or securitisation and finally exit – an approach the firm abbreviates as ‘C-CASE’. Its light shines brightest in the litigation sphere, where courtroom dynamos Ai Ming Lee and Chai Chong Low are called on to contest the jurisdiction’s most important semiconductor and life sciences disputes. Chip firms Towa Corporation and GlobalFoundries, plus pharmaceuticals powerhouse Merck Sharp & Dohme are three contentious clients of particular note. Away from the limelight, the team works on M&A transactions involving significant IP components, leveraging the firm’s strong corporate practice.
Donaldson & Burkinshaw LLP
For more than seven decades, Singapore’s oldest law partnership has been at the forefront of IP practice in the country. Today, Donaldson & Burkinshaw boasts the biggest patent attorney team among local firms, making it a major force in the drafting and prosecution market. “Their dedication, drive, high quality of work and responsiveness are highly commendable.” From 5G to fintech, semiconductors to software, the mechanical and electrical group led by partner Hubert Giam sees applications through to grant with aplomb. Partner Gary Chua brings years of in-house engineering and IP management experience to the group. “The team led by Gary has been exceptional from the get-go, devising strategies, executing them and getting results.” The life sciences and chemical section is helmed by the “sharp and knowledgeable” Teck Yeow Lim – in addition to blue-chip drug companies, the group caters to big names from the food and beverage space. “The quality of the work that comes back from Teck Yeow and his team is always consistently high. They are meticulous, pay attention to details, and often go the extra mile to ensure that the clients’ queries are adequately addressed.” An integral part of that team is Eveline Angstetra, a patent attorney with a focus in immunology, pathology, cellular biology, biochemistry and molecular biology. “She is patient, meticulous and diligent – a very safe pair of hands.” The deep technical expertise within the team makes it well placed not just to secure patent rights, but also to provide invaluable advice on matters such as infringement and freedom to operate that could wind up in court.
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Singapore Country Individuals: litigation Alban Kang Bird & Bird LLP Stanley Lai SC Allen & Gledhill LLP Tee Jim Tan SC Lee & Lee Tony Yeo Drew & Napier LLC Jason Chan Amica Law LLC Meryl Koh Drew & Napier LLC Andy Leck Baker McKenzie Wong & Leow Daniel Lim Joyce A. Tan & Partners LLC Jevon Louis Shook Lin & Bok LLP Chai Chong Low Dentons Anan Sivananthan Bird & Bird LLP Kok-Keng Lau Rajah & Tann, Singapore Suhaimi Bin Lazim Mirandah Asia Melvin Pang Amica Law LLC
Drew & Napier LLC
“They are the best IP lawyers I have ever worked with.” The venerable Drew & Napier LLC pairs a strong patent prosecution practice with a litigation side universally hailed as one of the market’s very best. “I sleep well at night knowing that Tony Yeo and Meryl Koh are at the wheel on Singapore IP matters,” one client says of the Big Four firm’s two leading contentious advocates. Yeo, “a gifted and tenacious litigator”, is the firm’s managing director
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for intellectual property. “He has bags of experience and a great instinct, which allows him to know exactly where to direct his efforts in the litigation process to achieve the best results. Added to that, Tony is an extremely hard worker and is dedicated to his clients. He is my number one go-to counsel in Singapore.” Koh, dual qualified in Australia and Singapore, also wins high praise. “In terms of her approach, she is thorough, details-oriented, and always well prepared. In terms of her advice and work product, it is crisp, pragmatic and commercial – clearly drawing on her years of experience.” The pair clearly make a dynamic duo: “Tony and Meryl provide sage IP advice on complex IP matters which are part of global litigation strategies. I trust their advice and they always bring fresh ideas and strategies to the table.” “You know they are giving 110% to everything they do for you.” Siau Wen Lim takes on both contentious and non-contentious IP briefs, but on the patent side it is her prosecution transactions work that stands out: “Siau Wen is a great business partner.” Another IP all-rounder is Yvonne Tang: “Yvonne’s team possess excellent attention to detail and a consistent approach which helps streamline cost-effective patent prosecution.”
Lee & Lee
Intellectual property is one of five cornerstone departments at full-service law group Lee & Lee. Tee Jim Tan SC put the firm on the map when it comes to patents, as one of only two senior counsel in Singapore with a specialty in trying IP cases. One of Tan’s recent triumphs was a patent infringement matter in which he successfully represented patent owner Rohm and Haas Electronic Materials at the High Court and Court of Appeal – the case continues in assessment of damages proceedings. The “efficient and well-informed” Yee Swan Boo is a key contact for patent prosecution. “We have always received high-quality services in a timely manner,” notes one overseas associate. Tech transfer maven Maurice Cheong maintains a bustling transactional practice.
Marks & Clerk
Only a few can compete with Marks & Clerk when it comes to locking down ironclad patent rights in Singapore. This multitalented and multilingual crew contributes six individuals to the prosecution table for 2021 based on their reputation as “highly professional, knowledgeable and helpful at all times”. Marks & Clerk’s service stands out for several reasons – its practitioners have all the information at hand, provide a thorough explanation of risks, dispense strategic advice, proactively arrange expert consultations and follow up with clients diligently.
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Singapore Country Individuals: prosecution Adam Bogsch Viering, Jentschura & Partner Gianfranco Matteucci Marks & Clerk Michael McLaughlin McLaughlin IP Pte Ltd Daniel Poh Marks & Clerk Yee Swan Boo Lee & Lee Maik Brinkmann Spruson & Ferguson Matthew English Marks & Clerk Hubert Giam Donaldson & Burkinshaw LLP Audrey Goh Viering, Jentschura & Partner Jim Greene-Kelly Marks & Clerk Chong-Yee Khoo Cantab IP Michael Koch Viering, Jentschura & Partner Gerald Koh Viering, Jentschura & Partner Siau Wen Lim Drew & Napier LLC Teck Yeow Lim Donaldson & Burkinshaw LLP Pei Lin Low Allen & Gledhill LLP Kristian Robinson Spruson & Ferguson
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Abe Sun Baker McKenzie Wong & Leow Yvonne Tang Drew & Napier LLC Winnie Tham Amica Law LLC Eveline Angstetra Donaldson & Burkinshaw LLP Ron Awyong Orion IP Gary Chua Donaldson & Burkinshaw LLP Juvelyn Cubilla Mirandah Asia Edmund Kok Amica Law LLC Chung Nian Lam WongPartnership LLP Soo Ee Lin Spruson & Ferguson Magdelene Ong Marks & Clerk Upasana Patel Marks & Clerk Ken Simpson Davies Collison Cave Desmond Tan FPA Patent Attorneys Hui Leng Tan Bird & Bird LLP
Engineering whizz Jim Greene-Kelly, who founded the office in 1995, is dual qualified in Singapore and the United Kingdom. In fact, almost all of the patent attorneys on the team are qualified in two or more jurisdictions. The “reliable” Daniel Poh “really makes our life easier”, say foreign associates. Poh oversees filings for big accounts, including Mastercard and Nitto Denko. Drawing on past practice experience from Europe and Japan, Gianfranco Matteucci
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Singapore Country is highly sought-after, particularly for biotech and chemical related briefs. One grateful client relates: “We initially instructed Gianfranco in Singapore only but now we ask him to initiate nationalisation of our PCT [Patent Cooperation Treaty] applications in all Southeast Asian countries. He has been very easy and convenient to work with.” Matthew English tackles both drafting and prosecution work with aplomb – medical technology is a strong suit for the Trans-Tasman patent attorney. “Upasana Patel is knowledgeable and intelligent. She understands well the technical aspects of inventions and translates that well into patent language. She is solutions-oriented and successful not just in obtaining patents but in revoking third parties’ rights.” Rounding out the roster is Magdelene Ong, “a highly effective attorney with a robust technical background”. “With Marks & Clerk, I feel strongly that I have selected the best legal advice when it comes to patents.”
McLaughlin IP Pte Ltd
Quality over quantity is the mantra at McLaughlin IP Pte Ltd, a small prosecution shop run by founder Michael McLaughlin and senior associate Eric Lee. Working for a select group of clients allows the duo, along with several other associate attorneys, to deliver customised and details-oriented solutions to patent applicants. Colleagues who instruct McLaughlin laud the approach. “His work for my largest client has been excellent. What I really appreciate is the value-add that he provides. He understands that my client has business considerations that guide their patent filing strategy and he provides invaluable advice about how those business interests can be furthered by adapting the PCT applications to Singapore’s legal framework.” The nimble and responsive nature of McLaughlin IP makes it an ideal partner to high-flying start-ups just setting out on the path to patent protection. The firm has been working with Grabtaxi Holdings, Southeast Asia’s first ‘decacorn’, to create and manage a global patent portfolio, a collaboration that has resulted in a significant increase in drafting and filing.
Mirandah Asia
Twin firms Mirandah Asia and Mirandah Law combine to offer top-flight non-contentious and contentious regional IP services respectively. Mirandah Asia is home to a crack team of prosecution specialists composed of life sciences and chemistry PhDs, licensed engineers and ex-examiners. One standout is Juvelyn Cubilla, who takes her first bow in the IAM Patent 1000 this year. “Juvelyn is highly skilled in deciphering sometimes confusing and complex office actions and preparing strong responses with
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consideration to the strengths and weaknesses of the prior art. She is quick to grasp and understand technical details that might be overlooked if not for her strong technical capabilities in engineering and chemistry.” At Mirandah Law, Suhaimi Bin Lazim has built up a big book of business on the generics side of fierce pharmaceutical disputes. “Suhaimi knows the industry in general and our business needs in particular. He is practical and clear with advice and provides strong support during litigation – I know there is also a lot of technical and legal contribution coming from the firm in the background and he leverages that very well for us too.”
Spruson & Ferguson
The Singapore operation of Spruson & Ferguson is far from an outpost, it is a genuine regional hub. A staff of over 100, headlined by more than 30 patent attorneys, patent scientists and engineers, is responsible for more Singapore patent filings than any other firm. Spruson’s, which is part of Australian listed IPH Limited, is also the top agent for PCT filings in Singapore. Kristian Robinson steers the ship for the group’s largest Asian office, which also provides drafting and other services for nearby jurisdictions, including Malaysia and Indonesia. His own forte is in the biology and chemistry sides, and he holds a Trans-Tasman qualification. The firm has a strong practice on the engineering and information and communications technology side, while its chemical and life sciences client list is a who’s who of innovators. Maik Brinkmann and Soo Ee Lin form “probably the best biotech and pharma patent prosecution team in Singapore” in the estimation of one local practitioner. Lin also looks after the firm’s Malaysia practice, while Brinkmann holds European and German patent attorney credentials.
Viering, Jentschura & Partner
“They deliver value.” Colleagues and competitors agree that Viering, Jentschura & Partner LLP is a clear-cut choice for the gold tier of patent prosecution practices in Singapore. It is one of two Asian locations for the Munich-based outfit and Adam Bogsch is the man in charge. The team has a reputation for unparalleled technical and legal rigour. “We work with VJP especially for our most difficult cases.” European patent attorney Bogsch and Australia-qualified Michael Koch exemplifies the side’s ability to cater to patent filers with a global focus. “They are eminently qualified and have the international point of view to work with an international client base across jurisdictions.” Partner and Singapore patent attorney Gerald Koh is feted for his biotech expertise and holds legal qualifications in Singapore and England
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Singapore Country & Wales. Audrey Goh has in-house engineering experience with a major semiconductor company and comes highly recommended for non-contentious work in the sector.
WongPartnership LLP
Full-service juggernaut WongPartnership LLP stands out for its strong commercial focus, making it a natural choice for patent matters with a distinct transactional bent. The top IP lawyer there is the “well-respected” Chung Nian Lam who “provides high quality guidance to clients and is always conscious of their financial circumstance”. A patent attorney whose remit also extends to areas like data protection, cyber security and fintech, Lam knows his way around IP franchising and licensing deals like few others. Operating across various high-tech domains, he is firmly grounded in the patent world, serving as vice chair of the Asian Patent Attorney Association’s Singapore chapter.
Other recommended experts
Orion IP is led by mechanical engineer Ron Awyong, who partners with clients to match their IP strategy with their business goals. PhD holder in DNA replication and a life sciences expert, Chong-Yee Khoo plies his trade at Cantab IP. Leading the IP department at Big Four firm Rajah & Tann Asia is Kok-Keng Lau, a litigator with specialisms in the sports, media and gaming industries. Renowned high-tech litigator Daniel Lim goes toe-to-toe with the best in the business, working out of Joyce A Tan & Partners LLC. Jevon Louis is the partner in charge of intellectual property at Shook Lin & Bok LLP. “They are very cost competitive and accommodate client requests on cost and scope of work as needed. The quality of their service is excellent.” Desmond Tan is the solo Singapore representative of Australia-based FPA Patent Attorneys and president of the Association of Singapore Patent Attorneys. “We deeply appreciate his ability to take very complex technical concepts and craft very strong patents. His turnaround of the patents is extremely quick and he takes the effort to gain his own understanding of the subject matter so that his patent will be stronger. We have recommended him to countless suppliers, clients and partners and it has been a consistent and resounding approval of his good work by everyone.”
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South Korea
While the rest of the world reeled from the covid-19 pandemic, IP applications in South Korea reached an all-time high. Over 231,000 applications for patents and utility models were filed in 2020, a 3.3% increase from the year before, marking three straight years of growth. E-commerce and healthcare were the two fastest-growing tech domains, each posting growth of more than 8%. The country is going out of its way to show that it is a haven for advanced technologies – in early 2021, the Korean Intellectual Property Office (KIPO) introduced new examination guidelines for AI-related, pharmaceutical and biotechnology inventions. It also signed a business agreement with local tech company Kakao Enterprise to apply AI methods to patent similarity searches. KIPO is also setting up a framework to ensure that AI-generated content is protected, while extending support to small and medium-sized venture companies in digital industries by offering technical assistance and advice on patent portfolio strategy. The Supreme Court may even relax the country’s unusually high inventiveness standards for many life sciences innovations. However, other reform efforts, such as the push for a new evidence gathering mechanism known as ‘K-Discovery’, have stalled amid industry opposition.
AIP Patent and Law Offices
Since being established in 2003, AIP Patent and Law Offices has quickly made a name for itself on the patent disputes scene, not least due to its seasoned ensemble of patent professionals, who have accrued deep experience in the IP industry as patent examiners and technical advisors. Over the past year, the 17 patent attorneys and lawyers have been kept busy representing domestic pharmaceutical companies in asserting their patent rights against multinational corporations. Founder Soowan Lee used to be a judge at the Korean Supreme Court and the Patent Court of Korea.
Firms: transactions Bae, Kim & Lee LLC DARAE LAW & IP LLC FirstLaw PC
see p214
Kim & Chang
see p232
Lee & Ko
see p246
Yulchon LLC
see p320
Bae, Kim & Lee LLC
Full-service commercial outfit Bae, Kim & Lee LLC shines brightest when it comes to enforcing patent rights and battling it out in the courtroom. Aside from its sizeable patent litigation practice, the prosecution side is growing steadily with Korean companies flocking to the firm for their patent filing needs. After serving as judge in several Korean courts – including the Patent Court and Seoul High Court – Taeck Soo Kwon captains the IP department. He is also the first president of the Korean Intellectual Property Lawyers Association. Another former IP judge, Myung-Kyu Lee dispenses advice to clients in litigation cases involved IP infringement. On the non-contentious front, vice president of Asian Patent Attorneys Association Korea Catherine Eunkyeong Lee helms the chemical and pharmaceutical group.
DARAE LAW & IP LLC
Clients seek out DARAE LAW & IP LLC for its deep bench expertise – from former judges at the Patent Court and Supreme Court to examiners from the
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Intellectual Property Tribunal and KIPO, the firm has it all. With 20 patent attorneys, the side advises mostly Korean companies on their patent prosecution and litigation needs. After serving as judge in multiple courts, including the Seoul High Court, managing partner Seung-Moon Park now obtains injunctions in patent disputes.
FirstLaw PC
Claiming a top spot for prosecution, FirstLaw PC provide stellar contentious and non-contentious patent services to a largely multinational clientele. Domestic clients – including notable governmentfunded research institutions – also take advantage of the 60 patent and trademark professionals’ extensive cross-industry expertise. A former KIPO patent examiner, Seong Ku Jang has accumulated more than 30 years of IP experience and has been leading the firm’s mechanical practice group since 1988. Seasoned patent attorney Hyoun Ja Park
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South Korea Firms: litigation
Firms: prosecution
Bae, Kim & Lee LLC
FirstLaw PC
See p214
Kim & Chang
See p232
Kim & Chang
See p232
Lee & Ko
See p246
Lee International IP & Law
See p248
FirstLaw PC
See p214
YOU ME Patent & Law Firm
See p318
Shin & Kim
YP Lee, Mock & Partners
See p314
Yoon & Yang IP LLC
Bae, Kim & Lee LLC
Yulchon LLC
See p320
AIP Patent and Law Offices
KBK & Associates
Koreana Patent Firm (Patent Attorneys & Counselors At Law)
DARAE LAW & IP LLC Lee International IP & Law
See p248
YOU ME Patent & Law Firm
See p318
Lee & Ko
See p246
NAM & NAM
See p262
Yoon & Lee International Patent & Law Firm See p316
excels when it comes to electrical, semiconductor and computer patent prosecution and litigation. See p214 for firm profile
DARAE LAW & IP LLC
HanYang International
Muhann Patent & Law Firm
Making its sophomore appearance in the IAM Patent 1000, HanYang International is a “longstanding IP firm that prosecutes patents for a largely Japanese clientele”. Split across two departments in mechanical, electrical and computer technologies, as well as biotech and chemistry, 20 patent attorneys and foreign legal counsel – some of whom bring with them in-house experience – are on standby to ensure that patent rights are always secured. James YeonSoo Kim set up the outfit in 1985.
KBK & Associates
“KBK has a professional team for each specialty area, including patent, utility model, trademark, design, copyright and more, and full experience in business, lawsuit, and negotiations.” A side of 70 talented patent attorneys support clients such as LG Electronics and Facebook on their patent prosecution matters. The firm is also focusing on growing its contentious practice: recently, it hired a Chinese patent expert to work on Chinese litigation and licensing matters. KBK has been consistently ranked as the top Patent Cooperation Treaty filer in South Korea and was involved in the longest-
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See p230
HanYang International
running patent dispute ever before the Supreme Court. Clients appreciate the added value of KBK’s “resident translators, which facilitate translation into English, Chinese and Japanese”. Hyun-Ju Son leads the mobile communication SEP development team and is particularly knowledgeable when it comes to the prosecution of 5G-related technology. Son also advises LG Electronics on patent portfolio expansion strategies. See p230 for firm profile
Kim & Chang
Kim & Chang sits “in a league of its own” – the only firm in South Korea that merits a gold ranking in both litigation and prosecution, with a spot on the transactions table for good measure. The largest player in the market is home to no fewer than 300 litigation attorneys, patent attorneys and foreign counsel, supported by over 240 patent engineers, paralegals and other support specialists. In-house counsel place inordinate value on a firm that “takes
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South Korea Darby Park Dana Patent Law Firm
Individuals: prosecution Hyoun Ja Park FirstLaw PC
Gunhong Park PI IP Law
James Yeon-Soo Kim HanYang International
Hae Sun Park Koreana Patent Firm (Patent Attorneys & Counselors At Law)
Jehyun Kim YP Lee, Mock & Partners
Mee Sung Shim Kim & Chang
Seong-Ki Kim Lee & Ko Sung-wook Kim NAM & NAM
See p163
Terry Taehong Kim Lee International IP & Law Group Seong Ku Jang FirstLaw PC Catherine Eunkyeong Lee Bae, Kim & Lee LLC Chang Hoon Lee Muhann Patent & Law Firm Man-Gi Paik Kim & Chang
the time to know the business environment in general; understand the needs of clients’ businesses specifically; is able to proactively provide guidance on new legal developments that may have an impact; and serves as a strategic partner overall”. Jay (Young-June) Yang steers the ship as head of the firm’s IP practice, applying his 40-plus years of experience to some of his team’s most high-profile contentious briefs. Duck Soon Chang is one of the first calls for Big Tech giants that find themselves dealing with infringement claims in South Korea’s increasingly active litigation environment. One courtroom highlight from the past year was a series of successful Patent Court appeals on behalf of pharmaceutical behemoth Pfizer related to patentterm extensions – both Yu-Seog Won and Young Kim were instrumental in securing favourable outcomes. Senior litigator Youngsun You led a successful appellate team on behalf of US biotech Genentech in its bid to gain patent protection for a new medical use invention. Kim & Chang is well disposed to support its clients in complex disputes that involve US law,
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Yoon Suk Shin Lee International IP & Law Group Hyun-Ju Son KBK & Associates Min Son Hanol Law Offices Byeong-Ok Song Yoon & Lee International Patent & Law Firm Ben (Beyong-ho) Yuu NAM & NAM
See p164
thanks to a roster of foreign counsel highlighted by US attorneys Jay Kim, In Hwan Kim and Chun Yang. Joining them in the rankings this year is Stephen Bang, a foreign legal counsel who practised IP law in the United States after a past career as a start-up founder. “He understood the issues almost immediately but was also very patient and knew how to explain complex concepts in both the patent and legal world very simply so anyone in our business could easily understand,” raves one Silicon Valley client. Electronics and software veteran Man-Gi Paik heads Kim & Chang’s patent prosecution practice, while Mee Sung Shim is another standout patent attorney who operates mainly in the chemical and pharmaceuticals practice.
Koreana Patent Firm (Patent Attorneys & Counselors At Law)
Koreana Patent Firm has a “strong patent prosecution practice” delivered by “highly-qualified patent attorneys who provide top-class services”. While 60 patent attorneys are laser-focused on prosecuting patent applications for foreign companies, the side draws upon its 2011 strategic partnership with fullservice law firm Shin & Kim to resolve disputes as well. Senior managing partner Hae Sun Park is a name
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South Korea for the address book. One peer gives a shout out to Seungho Lee: “A very smart and experienced guy who can understand the gist of the issue quickly, Seungho is the best patent practitioner in Korea for patent prosecution matters. He also has the managing skills to handle his team to ensure work is dealt with.”
Lee & Ko
“Lee & Ko are superb. They are razor-sharp, incisive and work very hard. They deliver excellent work product with Rolls-Royce service, and they are very nice people too.” Long known as one of the top shops for IP litigation in South Korea, Lee & Ko is also growing its team of patent attorneys, with cornerstone prosecution clients including LG Electronics. Managing partner Jae Hoon Kim leads high-profile litigation efforts while captaining a team of more than 100 patent professionals. Overseas associates describe the outfit as a “trusted counsellor”. “They are special because they excel across the board with regard to technical expertise, legal counseling, and communications clarity and timeliness. Many firms only deliver on one or perhaps two of these criteria.” Senior litigator Young Mo Kwon wins praise for his dedication: “He puts client service as a priority, even coming to the United States during the covid pandemic to assist with critical oral arguments before the Federal Circuit.” Un Ho Kim and Choong Jin Oh are both former judges who excel in contentious matters for blue-chip companies such as Novartis. Experienced in both US and Korean litigation, Hwan Sung Park helps devise “novel strategies focused specifically on issues that provide the client with maximum relief in the most efficient manner.” Another US law expert is John Kim, who previously worked as a Silicon Valley-based partner at Quinn Emmanuel and in-house as an associate general counsel for intellectual property at Samsung Electronics. A new entrant this year is life sciences expert Keum Nang Park – one well known pharmaceutical innovator reports that they are “extremely impressed with the work product produced by Keum Nang Park and her team and by the level of technical knowledge acquired in a very short space of time in a complex technical matter”. Eminent partner Seong-Ki Kim is Lee & Ko’s foremost expert on the prosecution side, working across a range of advanced technologies. See p246 for firm profile
Lee International IP & Law
Lee International IP & Law Group’s “strong patent prosecution practice” once again lands it a spot in the top tier. Among the most prolific filers in South Korea, the side offers comprehensive IP services and
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“very sound advice for patent portfolio development as well as litigation and other strategic advice for the Korean market” to a mainly international clientele. “Terry Taehong Kim in particular is extremely knowledgeable about patent matters in the country and is very committed to his clients, always thinking about how best to help them.” Kim’s “expertise in patent matters and understanding of all aspects of Korean prosecution and litigation” impress patent owners, who are beyond satisfied with his “continued support with business guidance in defining patent filing and prosecution strategy. Particularly noteworthy is his readiness to support us in achieving tangible results in striving for optimal IP protection in South Korea.” Meanwhile, Yoon Suk Shin is a trusted ally of biotech, chemistry and pharmaceutical companies, whom she represents before the Korean courts and the KIPO. See p248 for firm profile
Muhann Patent & Law Firm
Taking its second bow in the IAM Patent 1000, Muhann Patent & Law Firm is a voracious “young tiger” that peers have their eye on. Rising quickly with the support of young patent attorneys filing more than 2,000 patent applications annually, the IP boutique dazzles in the fields of electrical, semiconductors and computers, though it also covers mechanical engineering and biotech. A former research scientist at Korea Telecom, managing partner Chang Hoon Lee is most comfortable working with matters in the broadband and wireless communications space.
NAM & NAM
With “extensive experience in handling patent prosecutions in Korea”, NAM & NAM has developed its expertise since the earliest stages of Korean intellectual property. Clients can rest assured that their intangible assets are handled with the utmost professionalism and sensitivity, given the firm’s ISO27001 and ISO9001 certifications. For many large multinational corporations, the team of nearly 50 patent attorneys – many of whom are headquartered in Europe and the United States – is the obvious choice. After 15 years of working for Qualcomm in California and Samsung in South Korea, managing partner Ben (Beyong-ho) Yuu has returned to NAM & NAM to focus on growing its domestic client base. An invaluable member of the IP strategy group, Sungwook Kim specialises in electronics, semiconductor and computer software. See p262 for firm profile
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South Korea Jong Han Kim Paul Hastings LLP
Individuals: litigation Duck Soon Chang Kim & Chang Jeong Yeol Choe Yulchon LLC
Un Ho Kim Lee & Ko See p161
Jae Hoon Kim Lee & Ko Young Mo Kwon Lee & Ko Jay (Young-June) Yang Kim & Chang Tae-Yeon Cho Cho & Partners David Chun Ropes & Gray LLP Chang Sik Kim Covington & Burling LLP In Hwan Kim Kim & Chang Jay J Kim Kim & Chang John Kim Lee & Ko
Shin & Kim
A substantial full-service outfit with an expansive Asian footprint – it has outposts across Asia in China, Indonesia and Vietnam – Shin & Kim brings to the table four decades of experience in resolving IP disputes. From a former Patent Court judge to a former examiner at the Korea Intellectual Property Tribunal, the firm draws upon a wealth of expertise to deal with a broad range of matters. IP captain GhyoSun Park and patent team helmsman Bo Kyung Lim make a formidable duo in the courtroom. Together, they are representing Gilead Sciences as the only Korean counsel in a multi-jurisdictional, high-stakes patent infringement suit against ViiV Healthcare Company. They also successfully obtained an arbitral award for Helixmith Co Ltd and emerged victorious in a six-year patent invalidation battle for Amosense Co, Ltd against 3M Korea.
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See p162
Wonil Kim Yoon & Yang IP LLC Young Kim Kim & Chang Taeck Soo Kwon Bae, Kim & Lee LLC Myung-Kyu Lee Bae, Kim & Lee LLC Samuel SungMok Lee Yulchon LLC Bo Kyung Lim Shin & Kim Choong Jin Oh Lee & Ko Ghyo-Sun Park Shin & Kim Hwan Sung Park Lee & Ko Scott Schrader Covington & Burling LLP
Yoon & Lee International Patent & Law Firm
Major Korean and Japanese companies call on Yoon & Lee International Patent & Law Firm to prosecute some of their most important patent applications in the local market and to direct outbound filings. The side is part of the pool of patent attorney firms engaged by Samsung Electronics, and is active in filing overseas applications for the tech giant. The team warrants especial notice for its work on SEP briefs. In the chemicals space, Yoon & Lee counts top cosmetics brand AmorePacific as a patron. Byeong-Ok Song comes highly recommended for his long experience and international background – recent accounts he has landed include that of local drug maker Boryung Pharmaceutical. See p316 for firm profile
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South Korea Charles H Suh Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Yu-Seog Won Kim & Chang Chun Y Yang Kim & Chang Youngsun You Kim & Chang Stephen T Bang Kim & Chang David Hunjoon Kim YOU ME Patent & Law Firm Jehyun Kim YP Lee, Mock & Partners Soowan Lee AIP Patent and Law Offices
alone, covering another 133 countries for IP filings. Its new branch office in Bundang further caters towards SMEs in the region. Qualified in California and trained in electrical engineering, David Hunjoon Kim has represented clients before Korean courts and the US International Trade Commission (ITC). See p318 for firm profile
YP Lee, Mock & Partners
Patent prosecution powerhouse YP Lee Mock & Partners draws inspiration from its 36 years of history to prevail as “a leading IP firm whose motto is to be proactive and committed to serving its clients, some of which are Fortune 500 companies”. Little wonder then that it is Samsung’s top choice for patent drafting and filing. Its legion of over 205 IP attorneys and attorneys at law also often collaborate with litigation experts at Yulchon to resolve IP disputes. Trained in aerospace engineering, Jehyun Kim is also knowledgeable when it comes to automotive, display, mechatronics and mechanical engineering. See p314 for firm profile
Yulchon LLC
Yoon & Yang IP LLC is the IP department of a fullservice law firm, drawing upon the expertise of former Patent Court judges and prosecutors to bring patent disputes to a close. Since 2015, it was designated as a technology trade agency by the Ministry of Trade, Industry and Energy. Once a professor at the Patent Training Institute of the Seoul Bar Association, Wonil Kim now holds multiple leadership positions in the local IP community, serving as a civil affairs mediator in the Patent Court and a legal advisor for the Korea Drug Development Fund.
The litigators at Yulchon go toe to toe with the very best in the country, acting in some of South Korea’s most make-or-break courtroom disputes. The firm has worked across virtually all industries, but has carved out a name for itself in both the healthcare and semiconductor spaces. A judge for more than 20 years, Jeong Yeol Choe is now one of the market’s most venerable advocates. Samsung Electronics recently turned to Choe to take over on appeal in a high-profile semiconductor dispute with top Korean university KAIST, which eventually settled. Partner Samuel SungMok Lee is a US attorney who previously worked in-house at Samsung and Procter & Gamble – he shines when it comes to counselling foreign clients on Korean IP issues as well as advising Korean clients on cross-border cases. Kyung Ae Yoon makes her IAM 1000 debut this year. With a forte in life sciences, she “identifies a company’s needs proactively and suggests alternatives, making her a highly valuable asset to in-house counsel”. Yulchon also handles a steady stream of transactional work, offering apt guidance on inventor remuneration and licensing arrangements. See p320 for firm profile
YOU ME Patent & Law Firm
Other recommended experts
Keum Nang Park Lee & Ko Seung-Moon Park DARAE LAW & IP LLC Kyung Ae Yoon Yulchon LLC
Yoon & Yang IP LLC
Having served Korean companies for 40 years, YOU ME Patent & Law Firm remains top of its game in patent prosecution. Providing “good analysis” to patent drafting and IP infringement, the “responsive” team filed nearly 5,000 patent applications in Korea in 2020
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At Cho & Partners, anti-counterfeiting maven TaeYeon Cho also dedicates some of his time to enforcing patent rights for foreign companies. When he is not dispensing advice to Korean corporations on their US patent problems, David Chun is travelling between
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Country South Korea the Seoul and Silicon Valley offices of Ropes & Gray LLP. Darby Park is an electrical engineer at Dana Patent Law Firm, which often supports governmentfunded research institutes in their patent protection strategies. The newest addition to the South Korea chapter, Gunhong Park is a founding partner of PI IP Law. Foreign associates shower the “professional, flexible and open-minded” team with praise. “They are very proactive and we can rely on them to think outside the box and deliver an ingenious solution aimed at boosting the client’s business objectives.” From Covington & Burling LLP’s Seoul office, New York and California-qualified Scott Schrader collaborates with DC-based counterparts to advise on International ITC investigations. Drawing upon her biochemistry PhD, Min Son founded Hanol Law Offices, an IP boutique well-known among peers for its expertise in chemistry and biotech, as well as for prosecuting patent applications for Korean pharmaceutical companies. As well as managing Finnegan, Henderson, Farabow, Garrett & Dunner, LLP’s base in Seoul, Charles H Suh is kept busy advising Coupang on its global IP interests.
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Choe, Jeong Yeol Partner – Yulchon LLC jychoe@yulchon.com | www.yulchon.com
Jeong Yeol Choe is a partner at Yulchon LLC and chair of the firm’s IP group. He has successfully represented many multinational corporations in highly contentious and important litigations, including those involving Samsung Electronics, Samsung Display, Hanwha Chemical, Hyundai Motor Company, POSCO and Allergan. One noteworthy case is the dispute between Apple and Samsung Electronics in South Korea, where he successfully represented Samsung Electronics. Another is the dispute between Roche and Celltrion regarding a biosimilar of Herceptin, a treatment for breast cancer. Before joining Yulchon, Mr Choe served as a judge for 21 years at the Patent Court of Korea and several district courts, including the district courts of Seoul, Incheon and Gunsan. During his three-year tenure as a judge at the Korean Patent Court, he gained extensive experience in a wide range of IP cases and technologies. Mr Choe was also a lecturer at various institutions, including the Judicial Research and Training Institute, where he gave lectures on a wide range of IP-related topics to trainees, attorneys and judges. Mr Choe is an active arbitrator in the entertainment law section of the Korean Commercial Arbitration Board and a board member and expert appraiser at the Korean Copyright Commission. In addition to these activities, Mr Choe currently serves as president of the Korean Intellectual Property Lawyers Association. In 2017 he was appointed as a commissioner of the Personal Information Protection Commission, an independent commission under the jurisdiction of the president to establish a national framework for personal data protection. Mr Choe authored the trademark section of the Patent Trial Practice Guidelines and has co-authored books, including New Principles of Patent Law and Entertainment Law. He has also published many articles covering various areas of intellectual property, including IT law and entertainment law. Mr Choe is a graduate of Seoul National University and attended George Washington Law School as a visiting scholar. Having written several dissertations on copyright and patent law, Mr Choe brings invaluable legal knowledge and experience to Yulchon.
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Yulchon LLC Parnas Tower 38F 521 Teheran-ro Gangnam-gu Seoul 06164 South Korea T +82 2 528 5200 F +82 2 528 5228 See firm profile p320 Professional associations • Korean Bar Association • Korea Intellectual Property Lawyers Association Sample client list • Celltrion • CJ E&M • Golfzon • Hanmi • Hanwha • Hyundai • POSCO • Qualcomm • Samsung • SM Ent • Teledyne
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Kim, Un Ho Partner – Lee & Ko unho.kim@leeko.com | www.leeko.com
Un Ho Kim heads Lee & Ko’s IP practice group and is highly reputed as a leading legal analyst and scholar. His expertise in patent infringement and invalidation cases are well known among IP litigators in Korea. He served for 15 years as a judge in the Seoul High Court’s IP Division, and as a research judge in the Supreme Court’s IP Division. He has represented top-tier multinational and domestic companies, including electrical, mechanical, chemical, pharmaceutical, bio and software corporations. His expertise extends to trademark, copyright, trade secret and unfair competition. Mr Kim has thus represented global trademark owners in worldwide trademark disputes and has pioneered legal theories that established several new precedents in unfair competition regime. He is also well known for meeting the goals of his clients by delivering successful results in trade secret litigations. On the bench, Mr Kim wrote a number of theses on IP issues and lectured at the Korea Patent Attorneys Association. He was also a lecturer on IP litigation and damages at the Judicial Research and Training Institute of the Supreme Court of Korea, a training institute for judges and candidates to be commissioned to the bench. Further, Mr Kim lectures at the Yonsei University School of Law in Korea on trademark and patent laws. In addition, he has co-authored several popular publications, including Commentary on Patent Law in 2010, Commentary on Trademark Law in 2018 and two treatises – namely Litigation for Damages and How to Draft Civil Appellate Court Decisions – that are widely used by judges and lawyers. He is serving as an Executive Vice Chairman of Korean Intellectual Property Lawyers Association.
Lee & Ko Hanjin Building 63 Namdaemun-ro Jung-gu Seoul 04532 South Korea T +82 2 772 4000 F +82 2 772 4001/2 See firm profile p246 Professional associations • Advisory Council for Intellectual Property Law of the Ministry of Justice • Korean Commercial Arbitration Board • Korean Intellectual Property Lawyers Association Sample client list • AstraZeneca • Big Hit Entertainment • Broadcom • eBay Korea • LG Household & Health Care
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Kim, Sung-wook Partner – NAM & NAM kimsw@nampat.co.kr | www.nampat.co.kr
Sung-wook Kim, a partner at NAM & NAM, joined the firm in 2011. He is an excellent communicator and this ability led to his being entrusted with IP-related business counselling for clients. His insight and passion for his work is not limited to Korea: he has also gained extensive business experience in the United States, Europe and China. Mr Kim often receives positive feedback for his impressively detailed and wellstructured analyses and highly practical advice. He was admitted to the Korean Patent Bar in 2006 and his practice covers a wide range of IP matters, including patent prosecution, enforcement, technology transfer and litigation. Professional experience His main areas of technological expertise lie in semiconductors, software, augmented and virtual reality, audio/video devices and artificial intelligence. He has been involved in government projects promoting Korean national lab technology overseas, research projects for industry 4.0 technologies and patent litigation before the Korean Intellectual Property Office and the Korean Patent Court. He has experience in handling patent infringement trials regarding automatic parking facilities, semiconductor devices and fintech business models. His clients include a semiconductor equipment company, a global IT company and a multinational electronics company. He also served as a patent adviser for the Korean research centre of a US company and frequently gives lectures on Korean patent prosecution, IP litigation in South Korea and IP commercialisation.
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NAM & NAM 95 Seosomun-Ro Jung-Gu Seoul 04516 South Korea T +82 2 753 5477 F +82 2 753 7315 See firm profile p262 Professional associations • KPAA
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Yuu, Ben (Beyong-ho) Managing Partner – NAM & NAM byuu@nampat.co.kr | www.nampat.co.kr
Ben (Beyong-ho) Yuu understands the value of inventions and dedication behind them. In him, clients find the sincerity, humility and trustworthiness of a true IP service provider. Mr Yuu is an accomplished and experienced patent attorney with a track record of proven results on patent prosecution and postgrant proceedings, infringement and invalidity analyses, litigations and freedom-to-operate searches in the fields of electronic devices, semiconductors, wireless standards (including LTE and 5G), computer and software, and new technologies including artificial intelligence, clouds and robotics. Mr Yuu regularly attends international conventions, including the annual meetings of the Asian Patent Attorneys Association and INTA, as a committee member. He has also long been recognised as a prominent IP practitioner in Korea and has spoken extensively on the topics of patent and design laws both in South Korea and abroad. Mr Yuu has been the managing partner of NAM & NAM since joining the firm in 2016. He also leads the firm’s operational excellence for international clients. Mr Yuu is admitted to the Korean Patent Bar, the California State Bar as a US attorney at law and the USPTO as a US patent attorney. He is that rare breed of attorneys who understands the technology at stake and ambitions of individual clients. He started his career as a patent attorney at NAM & NAM in 1997 until 2000. After his 15-year IP voyage through Qualcomm and Samsung Electronics, he returned to NAM & NAM armoured with greater experience and deeper insights. At Qualcomm (San Diego, United States, 2001-2010), Mr Yuu was vice president and patent counsel working extensively on global patent prosecutions, patent oppositions, trials, strategic IP analyses and a variety of patent litigations with regard to wireless telecommunication and multimedia technologies. At Samsung Electronics (South Korea, 2011-2015), Mr Yuu was vice president and legal counsel leading the patent and technology analysis group, handling patent and design litigations, portfolio management, designing arounds, IP acquisitions and high-profile litigations.
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NAM & NAM 95 Seosomun-Ro Jung-Gu Seoul 04516 South Korea T +82 2 753 5477 F +82 2 753 7315 See firm profile p262 Professional associations • APAA • INTA • KPAA
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Taiwan
Held in awe by other jurisdictions for its handling of the covid-19 pandemic, Taiwan has seen business return to usual. In the first half of 2020, the Taiwan Intellectual Property Office (TIPO) received nearly 34,000 patent applications, a slight 4% decline from the same period the previous year, with TSMC leading the way for domestic applicants for the fourth consecutive year. Local SMEs continue to be the main drivers of innovation, filing 14% more applications than in 2019. TIPO responded by implementing the Positive Patent Examination Pilot Programme for Start-Up Companies at the beginning of 2021, which prioritises invention patent applications filed by newly established entities. It has also introduced a consultation service for SMEs looking to apply for patents overseas.
Baker McKenzie
Plugged into the wider Baker McKenzie network, the Taipei outpost has access to a full range of technical expertise at its fingertips. As well as serving the IP needs of companies across multiple industries, the firm prosecutes patents for the likes of Genius Electronics Optical Co Ltd and resolves patent disputes for a host of rights holders to obtain high damages. IP captain Grace Shao has perfected her craft, especially in enforcing IP rights for pharmaceutical, high-tech and entertainment corporations. Laser-focused on dispute resolution, Da-Fa Feng takes the lead in high-stakes litigation and patent licensing agreements.
Deep & Far
Established in 1992, Deep & Far has served over one-fifth of Taiwan’s top 100 enterprises, as well as global companies such as Motorola and InterDigital. Under the leadership of managing partner CF Tsai, the IP boutique has prosecuted patents for 60% of the high-tech companies in Hsinchu Science Park. A pioneering patent practitioner, Tsai is the first attorney at law in Taiwan to have both technical and legal qualifications.
Eiger
Given its fully fledged patent capabilities, Eiger draws a predominantly foreign clientele seeking patent advice to its doors. Through an expanding and diverse team of IP professionals – qualified in China, Europe, Taiwan and the United States, and stationed in its Taipei headquarters and Shanghai office – the fullservice law firm oversees patent matters in Greater China while simultaneously providing support in US patent cases. Its dedication to advancing diversity is particularly noteworthy, as the firm actively supported Taiwan’s victorious push to legalise samesex unions. Managing partner John Eastwood has contributed vastly to the local business landscape. As chair of the IP Rights Committee of the European Chamber of Commerce Taiwan, he is highly sought
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after by the European Commission and the US and Taiwanese governments on patent policy issues. Having worked with numerous well-known brands on their IP enforcement projects, Eve Chen has gained deep expertise in patent dispute resolution; her stellar track record includes representing Eli Lilly in Taiwan’s first-ever reversal of the burden of proof in process patent litigation.
Formosa Transnational
Formosa Transnational boasts strengths across the contentious/non-contentious divide, capturing the attention of domestic and foreign corporations alike. Dedicated to staying abreast of new technology and the latest patent hotspots, the patent department of nearly 60 professionals has been filing fintech patent applications and advising on cryptocurrency and the Internet of Things of late. Meanwhile, the litigation team continues to add to its impressive track record with new wins before the courts. Managing partner Yulan Kuo has cemented his reputation in the local IP landscape. Not only did he chair the Trademark and Patent Law Committee of the Taipei Bar Association, he also advises on training for IP court judges. Almost two decades into her IP career, Jane Wang has racked up vast experience in a wide range of patent matters, from prosecution and litigation to licensing. As one foreign associate acknowledges: “I think highly of Jane. She provides excellent service based on her superior understanding of both US and Taiwan patent laws, allowing our client to resolve their patent dispute favourably. I have been referring clients and prospective clients to her for matters involving Taiwanese patent laws, IP licensing or crossjurisdictional legal issues, and all of them have been very satisfied with her services and expertise.” Making a formidable duo in court, Kuo and Wang emerged victorious on behalf of Union Group Business in a patent ownership dispute before the Supreme Court. US patent agent Frank Lu is also praised for being “hardworking on cases”. He recently represented Valeo SA in a patent dispute against DEPO Auto Parts
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Taiwan Ind Co Ltd and successfully obtained over $143,000 in damages. See p218 for firm profile
Firms: prosecution
Lee and Li Attorneys at Law
Lee and Li Attorneys at Law
Nestled comfortably at the apex of both the litigation and prosecution tables, Lee and Li Attorneys at Law boasts the highest number of ranked individuals in the Taiwan chapter. A full-service law firm that is also the largest in town, it has carved out an impressive history of excellence in areas ranging from patent prosecution to litigation and transactions. Through its alliance with Beijing-based Lee and Li-Leaven IPR Agency, the team secures patent rights in Mainland China. Daisy Wang and Dennis Huang are no strangers to the IP field; senior counsellor Wang has more than four decades of experience under her belt, while star litigator Huang has secured roughly $7 million in damages for a US chemical company embroiled in patent litigation before the Taipei District Court. The team is not short of dual-qualified attorneys, either – Gloria Lu is proficient in electrical engineering, while Hsiu-Ru Chien has a background in zoology. Adding to the ensemble’s success is courtroom sharpshooter Roger Chang, who has raked in wins for Entegris and Philips.
Li & Cai Intellectual Property Office
“Sincere and punctual,” Li & Cai Intellectual Property Office is relied on by foreign associates from Asia to the United States for its full gamut of IP services. “The firm has technically qualified people with decent groundwork who understand technology. They’re very friendly, easily accessible with very good feedback time and really fast responses at quite a reasonable price. We have a reciprocal relationship too,” states one happy customer. “We’ve had a very good experience working with Li & Cai – their quality is topnotch; the cost is very good with a very reasonable fee schedule; their communication in English is very good and smooth; and we get frequent reminders and timely reports. If there are important items to discuss, they are always available for a video conference. We’ve never had an issue with any subject matter or technology. They act as our hub for patent matters in China, as well.” With an outpost in Washington DC staffed by US-qualified lawyers and patent attorneys, as well as an 80-strong patent team in Taipei, the IP boutique recently added a new Japanese team and legal consulting services to its offerings. On top of drafting patent specifications and advising on patent prosecution strategy, Yves (Yao-Hui) Chang “runs a very good team” that ably assists domestic companies. An electrical engineer by training, he
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Highly recommended
Saint Island International Patent & Law Offices Tai E International Patent & Law Office See p298 TIPLO - Taiwan International Patent & Law Office TOPTEAM International Patent & Trademark Office S ee p302 Tsai Lee & Chen Patent Attorneys & Attorneys at Law S ee p304 Recommended Baker McKenzie Deep & Far Formosa Transnational
Li & Cai Intellectual Property Office
See p218 See p254
Wideband IP Wisdom International Patent & Law Office See p312
has “excellent understanding of legal requirements, communicating timely and providing solutions to different situations”. “Yves is a very positive and proactive professional who always provides practical comments for patent filing. Through his extensive experience in patent prosecution in Taiwan and the United States, he can help to overcome issues raised by different IP offices so that patents can be granted.” See p254 for firm profile
Saint Island International Patent & Law Offices
Gold ranked on both the contentious and noncontentious fronts, Saint Island International Patent & Law Offices is a standout choice for domestic giants and overseas corporations looking to protect their patents in Taiwan. Alongside more than 1,000 foreign associates and collaborations with Beijing Saint Island Intellectual Property Agency and Beijing Tie Chi Patent Firm, the IP boutique counts among its
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Taiwan Firms: litigation Lee and Li Attorneys at Law Saint Island International Patent & Law Offices Tsar & Tsai Law Firm
S ee p306
Baker McKenzie Eiger Formosa Transnational
See p218
Tai E International Patent & Law Office See p298 TOPTEAM International Patent & Trademark Office See 302 Tsai Lee & Chen Patent Attorneys & Attorneys at Law S ee p304
ranks 230 IP professionals, including 60 patent and trademark attorneys. Stationed across a sprawling network of six offices in major local cities, they are ever ready to prosecute upwards of 3,000 patents a year for the likes of Intel, Ford and Panasonic. Not only has the firm recently begun working with TSMC on its global patent filings, it also wrote a Japanese analysis report for the Japan Taiwan Exchange Association on IP protection strategies. Founding partner Patrick Yun has nearly half a century of IP experience behind him, during which he has established a modern information centre. Having perfected his craft in IP litigation and counselling, managing partner Frank Liu is a prolific writer on all things intellectual property. Tony Chang is a familiar face in court – he recently represented Life Fusion Inc in two patent inventorship and infringement suits. After serving as a senior patent examiner at TIPO for four years, Sumin Lai is now enforcing patents for the likes of BenQ Corporation against BASF Taiwan.
Tai E International Patent & Law Office
Tai E International Patent & Law Office commands a glowing reputation as a patent prosecution powerhouse, drafting and filing around 3,500 patent applications annually for multinationals such as Cree and Vishay Dale Electronics. Its 110 patent professionals, including 24 patent attorneys, are not only fluent in English, Japanese and German, they are also qualified across a range of technical fields. Through a compact team of seven lawyers, the general
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law firm makes light work of contentious matters, as well. Fronting this illustrious shop is managing partner Fred Chi-Tai Yen, who played a critical role in founding the Taiwan Patent Attorneys Association. Working well together on patent disputes, Jerry Lin and Henry Guei represent foreign clients such as Alanod-Xxentria Technology Materials Co Ltd and domestic names such as WoShuo Electric Industrial Co Ltd before the Supreme Court. Where CEO Lin has a background in electrical engineering, Guei is a former TIPO examiner who often writes about local IP laws. See p298 for firm profile
TIPLO - Taiwan International Patent & Law Office
For more than 50 years, TIPLO has been fully dedicated to serving the IP needs of its clients. Staffed by more than 70 technical lawyers, 25 lawyers in Taipei and a liaison office in Tokyo, the patent prosecution powerhouse is well placed to draft and file patents in a wide range of technical fields. Japanese-speaking JK Lin deftly oversees the firm’s operations, while HG Chen skilfully captains the legal department.
TOPTEAM International Patent & Trademark Office
Celebrating its 35th anniversary, TOPTEAM International Patent & Trademark Office is “one of the oldest and most comprehensive IP firms in Taiwan that has been unanimously recognised by its peers and partners”. With an “excellent administrative and procedural management team and patent professionals armed with strong technical backgrounds” covering all bases in prosecution, foreign associates speak highly of the side’s patent drafting and filing capability. “We have established a long-term and friendly cooperation with Top Team. With rich professional experience in intellectual property, the team provides a strong guarantee for improving the quality and grant rate of patent cases. They also provide timely feedback and offer special professional and meticulous services, which has earned them our complete trust.” “Top Team is the most highly recommended IP firm in our worldwide network. They are highly professional, reliable and quick. Communications are direct, clear and always well founded. Aside from their extremely well-organised IP processes, the team is a dream to work with given their profound IP and technological expertise.” Founder and owner Henry Hong is an IP veteran, having spent more than three decades in the field. “An outstanding patent attorney and manager,” Peggy Wu is “very professional in handling all aspects of the firm”. “Peggy’s legal opinions are
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Taiwan Individuals: litigation Highly recommended Dennis Huang Lee and Li Attorneys at Law Yulan Kuo Formosa Transnational Attorneys at Law Jennifer Lin Tsar & Tsai Law Firm Frank Liu Saint Island International Patent & Law Offices
John Eastwood Eiger Da-Fa Feng Baker McKenzie Henry Guei Tai E International Patent & Law Office Joyce Ho Tsar & Tsai Law Firm Sumin Lai Saint Island International Patent & Law Offices
Recommended
Jessie Lee Formosan Brothers
Roger Chang Lee and Li Attorneys at Law
JK Lin TIPLO - Taiwan International Patent & Law Office
Tony Chang Saint Island International Patent & Law Offices
Yvonne Lin Formosan Brothers
Alan Chen TALENT Attorneys-at-law
Gloria Lu Lee and Li Attorneys at Law
Che-Hung Chen Chen & Lin Attorneys-at-Law
Gary C Ma Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Crystal J Chen Tsai Lee & Chen Patent Attorneys & Attorneys at Law Eve Chen Eiger HG Chen TIPLO - Taiwan International Patent & Law Office Jason Chen Jones Day Hsiu-Ru Chien Lee and Li Attorneys at Law
always extremely well founded and straight to the point. Driven by results and value, she always puts the interests of clients first, such that we fully rely on her expertise, proficiency and reliability. She also invests in continuously educating her staff, organising regular high-quality internal workshops on IP topics to train them on IP processes in China and Taiwan, as well as other jurisdictions like Japan and the United States,
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Jesse KY Peng Tsai Lee & Chen Patent Attorneys & Attorneys at Law See p173 Grace Shao Baker McKenzie Daisy Wang Lee and Li Attorneys at Law Jane CC Wang Formosa Transnational
so that they can provide a unified IP service unique to their firm.” Japanese-speaking Jonathan Yen is qualified in China and Taiwan, with a specialty in electrical engineering. Also deserving of a mention is patent engineer Yung-Ning Hu: “She is knowledgeable and equipped with advanced technical background in semiconductor manufacturing for patent application, drafting and prosecution.” See p302 for firm profile
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Taiwan Individuals: prosecution Yves (Yao-Hui) Chang Li & Cai Intellectual Property Office Candy KY Chen Tsai Lee & Chen Patent Attorneys & Attorneys at Law See p171 Chao-Cheng Chen Louis International Patent Office Henry Hong TOPTEAM International Patent & Trademark Office George Huang Wisdom International Patent & Law Office
Tsar & Tsai Law Firm
Jerry CY Lin Tai E International Patent & Law Office CF Tsai Deep & Far
See p174
Peggy Wu TOPTEAM International Patent & Trademark Office Fred Chi-Tai Yen Tai E International Patent & Law Office
See p175
Jonathan Yen TOPTEAM International Patent & Trademark Office Patrick Yun Saint Island International Patent & Law Offices
Tsai Lee & Chen Patent Attorneys & Attorneys at Law
Having racked up two decades of experience in intellectual property, it is little wonder that Tsai Lee & Chen Patent Attorneys & Attorneys at Law comes highly recommended by foreign associates and global companies for its prowess in the patent prosecution space. “A very good firm for patent work,” its Taipei headquarters and branch offices in Taichung and Tainan are staffed by over 180 patent engineers, lawyers and IP attorneys, working in English, German, Japanese and Korean to serve the needs of international patent owners. Lately, the firm has seen a rising number of patent applications from domestic entities and responded by expanding to break through 300 firm-wide. “We have cooperated with them for a long time. They have extensive experience
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in handling patent prosecution in Taiwan. Not only do they assist us in developing and implementing best patent filing practices in Taiwan, they provide us with timely updates on local legislation developments.” A US patent agent, Candy Chen oversees the international patent prosecution practice. She is a “strong patent prosecution practitioner” and “a good contact for arranging everything you’ll need”. At the helm of the litigation team, Jesse Peng is busy representing the likes of ATEN International and Enermax in patent disputes and FamilyMart in a contentious matter against 7-11. Qualified in New York and China, Crystal Chen takes charge of the international marketing department. See p304 for firm profile
Clients look to Tsar & Tsai for its top-tier patent litigation capabilities. The Lex Mundi member not only has access to 160 law firms around the world, it also has a substantial patent prosecution team on the ground in Taipei and Hsinchu to provide the full range of patent services. Over the past year, under the direction of IP captain Joyce Ho, the patent department has successfully represented Merck in a patent invalidation case against DIC Corporation. Where Ho directs her attention to advising high-tech companies on protecting their IP rights, managing partner Jennifer Lin is a frequent speaker on dispute resolution and IP law. See p306 for firm profile
Wideband IP
“Wideband IP is a medium-sized patent prosecution firm that covers a wide spectrum of technologies.” Founded in 2005 by a former patent examiner, the IP boutique is now home to 11 patent professionals stationed in three cities across Taiwan. Managing partner Jamie Lu is a name for the address book. According to one peer: “Jamie is a very experienced and diligent patent attorney, well versed in both Taiwan and US patent practices.”
Wisdom International Patent & Law Office
Riding a wave of effusive praise from foreign associates, Wisdom International Patent & Law Office makes its debut in the IAM Patent 1000 this year. “They have an excellent understanding of semiconductor, electrical and computer science technology. We are very impressed by their detailed comments and recommendations for our IP portfolio, and we can easily obtain more detailed information on specific cases via telephone since most of the team is very
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Taiwan confident in the technical aspects of their cases and fluent in English.” “The team is highly professional and responsive in providing opinions and successorientated options. Their advice is strategic and practical from the business perspective, taking into account client objectives.” In just nine years, the IP boutique has grown into a team of 23 that largely handles incoming patent prosecution, filing over 800 national patent applications in 2020 alone. Fluent in English, Japanese and Mandarin, George Huang has nearly three decades of experience in intellectual property under his belt. “George is very responsive, practical and highly efficient. His replies are quick – usually within the same day – and thorough. His team is expanding quickly, which is self-explanatory as to how good they are.” “An enthusiastic leader of the firm, George is very active in the international IP community, too.” He recently published a Japanese book on Taiwanese patent practice with colleague Kai Furihata. See p312 for firm profile
Other recommended experts
Laser-focused on contentious patent matters, Alan Chen operates out of TALENT Attorneys-at-law – formerly known as Rich IP & Co. With the support of his “excellent patent litigation team”, Chen ably represents the likes of Cabot Microelectronics Corporation, AstraZeneca and Oppo in patent disputes. “Alan is very knowledgeable about the electronic and electrical fields, especially
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semiconductor designs and its manufacturing process. Besides assisting clients with formulating litigation strategies in a very effective and productive way, he provides good client service and delivers concise arguments.” “A brilliant and experienced patent attorney, Alan did a really great job of turning the tables for our infringement case and won. He makes complex issues simple and reacts quickly and wittily in court, so he can usually successfully persuade judges and technical examiners. We give him full marks.” Chao-Cheng Chen of Louis International Patent Office is “a very senior IP professional” specialising in chemistry, mechanics, biotechnology and semiconductors. As founder of Chen & Lin Attorneys-at-Law, Che-Hung Chen is not only a certified deal maker at the China Mergers and Acquisition Association, he also has extensive in-house experience as a former general counsel at IBM in Taiwan. After serving as a Taiwan district court judge for almost a decade, and the first IP judge in the country, Jason Chen now plies his trade at Jones Day. Domestic companies look to managing partner Gary Ma and his two technical specialists at Finnegan’s Taipei outpost to resolve US patent disputes quickly and efficiently. Ma was recently involved in obtaining a complete victory on summary determination for REC Solar Holdings AS against Hanwha Q Cells in a high-profile International Trade Commission investigation. Over at Formosan Brothers, managing partners and accredited arbitrators Yvonne Lin and Jessie Lee take charge of IP briefs.
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Chen, Candy KY Partner – Tsai Lee & Chen Patent Attorneys & Attorneys at Law ckchen@tsailee.com.tw | www.tsailee.com
Candy KY Chen is a partner of the international patent department at Tsai Lee & Chen Patent Attorneys & Attorneys at Law. She is a professional engineer, a registered Taiwan patent attorney and a registered US patent agent. Ms Chen specialises in technology-related intellectual property – in particular, patent prosecution and invalidation for mechanical, automation and software-related inventions, as well as industrial designs. She has assisted many Fortune 500 corporations in filing their patent applications and managing their patent portfolios. She also provides legal consultancy on patent validity. She received her bachelor’s in mechanical engineering and her master’s in manufacturing engineering from the University of California, Los Angeles. She also received an LLM in Taiwan. Ms Chen was a member of the Patent Examination Quality Advisory Committee convened by the Taiwan Intellectual Property Office from 2011 to 2017. She was also a member of the Board of Supervisors of the Asian Patent Attorneys Association Taiwan Group from 2012 to 2018, and a board member of the Taiwan Patent Attorneys Association from 2015 to 2018. Ms Chen is currently a co-chair of the Design Committee of both the Asian Patent Attorneys Association Taiwan Group and the Taiwan Patent Attorneys Association. She is also a member of the International Board of Council of the Asian Patent Attorneys Association and an independent member of the International Association for the Protection of Intellectual Property.
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Tsai Lee & Chen Patent Attorneys & Attorneys at Law 11th Floor 148 Songjiang Road Taipei 104 Taiwan T +886 2 2564 2565 F +886 2 2562 7650 See firm profile p304 Professional associations • AIPLA • AIPPI • APAA
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Chen, Che-Hung
Managing Partner – Chen & Lin Attorneys-at-Law chchen@chenandlin.com | www.chenandlin.com
Che-Hung Chen founded Chen & Lin in 1992. He has extensive experience in the various legal issues facing industries such as semiconductors, telecommunications, pharmaceuticals, information technology and high technology. Mr Chen also has experience in international negotiation and dispute resolution, especially in the fields of construction, government procurement and IP infringement and licensing. Before establishing Chen & Lin, Mr Chen worked at the Taipei office of McCutchen, Doyle, Brown & Enersen and was IBM’s general counsel in Taiwan. He is deeply familiar with the operation of multinational corporations and the needs of international clients. He has served clients such as 3M, Celenese, General Electric, General Motors, GTE, IBM, Logitech, Merck, NEC, Oxylane, Sandoz, TECO and UMC. Mr Chen qualified as a certified dealmaker of the China Mergers and Acquisitions Association in 2015. He has served as director of the Taiwan Mergers & Acquisitions and Private Equity Council since 2009 and arbitrator of the Suzhou Arbitration Commission since 2008. Mr Chen attended the National Taiwan University Law Department, obtaining his LLB in 1978 and his LLM in 1983. In 1985 Mr Chen went to the United States where he obtained an LLM from Harvard Law School. He is a member of the Taipei, Hsinchu, Taichung and Kaohsiung Bar Associations.
Chen & Lin Attorneys-at-Law Bank Tower 12th Floor 205 Tun Hwa North Road Taipei 105 Taiwan T +886 2 2715 0270 F +886 2 2514 7510 Professional associations • LES • MAPECT
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Peng, Jesse KY Partner – Tsai Lee & Chen Patent Attorneys & Attorneys at Law legal@tsailee.com.tw | www.tsailee.com
Jesse KY Peng is a partner at Tsai Lee & Chen Patent Attorneys & Attorneys at Law. He is an attorney at law admitted in Taiwan and a patent attorney admitted in both China and Taiwan. Mr Peng has an LLM from Soochow University, Taiwan, as well as a BS and an MS in communications engineering from the National Chiao Tung University, Taiwan. He was previously an electronic engineer. Mr Peng has practised IP law for more than 20 years and has assisted multinational companies with various IP matters, from prosecution to contentious matter. In the early stages of his IP career, Mr Peng focused mainly on patent prosecution and searches. Today, his practice centres on patent invalidation and infringement assessment, IP litigation and administrative proceedings. Mr Peng draws on his deep knowledge and experience of both practice and case law to contribute to each case, making arguments that have proved to be persuasive to the judges and courts at different levels, and consequently won the trust of many clients. Mr Peng is also a prolific writer. He has published many insightful essays in the Journal of the Taiwan Patent Attorneys Association (TWPAA). One of these essays was published by the IP Management Journal of the Japan Patent Attorneys Association in 2017. The IP Office also frequently consults him in relation to the legislation of IP laws. Mr Peng has served as a committee member for the TWPAA and a supervisor of the Asian Patent Attorneys Association’s Taiwan group.
Tsai Lee & Chen Patent Attorneys & Attorneys at Law 11th Floor 148 Songjiang Road Taipei 104 Taiwan T +886 2 2564 2565 F +886 2 2562 7650 See firm profile p304 Professional associations • APAA Taiwan Group • Bar Association in Taipei, Taiwan • TWPAA
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Tsai, CF Managing Partner – Deep & Far cft@deepnfar.com.tw | www.deepnfar.com.tw
Since 1982 CF Tsai has practised in all stages of IP law – from prosecution to litigation of patents, trademarks, copyright, circuit layouts, trade secrets, unfair competition and licences before the courts in Taiwan and abroad. Brain waves, perseverance and stamina are considered to be the most important features of a successful character. Intelligent, dedicated and inexhaustible, Mr Tsai strives to keep pace with all relevant knowledge and practices relating to IP law. Mr Tsai is the first patent practitioner in Taiwan to have a technological and law background and be qualified as a local attorney at law. He has a marine engineering background, having majored in this subject at the National Chiao Tung University. He has been extensively involved in work relating to the mechanical, electric, electronic, civil engineering, chemical, semiconductor and medical fields. In the course of his practice, he completed his law degree at the National Taiwan University and then obtained his master’s in comparative laws from Soo Chow University. Under his leadership, Deep & Far has won services from more than 20% of the top 100 national corporations, in addition to 25% of the high-tech companies in the science-based industrial park located in Hsin Chu. Mr Tsai believes that clients can discover the value and competence of Deep & Far’s IP services by sending it: • a pending or granted patent – the firm will suggest improvements to the claims; • a pending patent specification without claims – Deep & Far will draft claims for comparison with the original ones; or • an initial disclosure, also sent to the firm the client is using – the client can see which firm provides better claims.
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Deep & Far 13th Floor 27 Sec 3 Chung San N Road Taipei 104 Taiwan T +886 2 2585 6688 F +886 2 2598 9900 Professional associations • AIPLA • AIPPI • INTA Sample client list • Armani • Beckhoff • Gleason • InterDigital • Motorola • Piramal • Schott Glas • SeeReal • Sun Pharmaceutical Industries
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Yen, Fred Chi-Tai Managing Partner – Tai E International Patent & Law Office ipdept@taie.com.tw | www.taie.com.tw
Fred Chi-Tai Yen is a managing partner at Tai E International Patent & Law Office. He has been a practising patent attorney, arbitrator and mediator for almost 30 years. Mr Yen actively participates in pro bono work and public affairs. He was honoured as an Outstanding Volunteer from 2017 to 2020 by the Taiwan Intellectual Property Office. In 2017 Mr Yen was inducted as an Outstanding Alumni into the National Chen-Gung University’s Department of Life Sciences. He has been recognised in international rankings, including: • in Asia Business Law Journal, among the Top 100 Lawyers in Taiwan, 2019 and 2020; • in Asia IP Experts, 2013-2021; • in Asia IP, among the 50 Patent Lawyers You Should Know, March 2014; • in AsiaLaw Leading Lawyers, as a Leading Lawyer, 2007-2017; a Market-Leading Lawyer, 2018 and 2019; and an Elite Practitioner, 2020 and 2021; • in Chambers Global, in Band 1, 2018-2021; • in China Law & Practice Annual Review, as a leading practitioner in Taiwan, 2014; • in IAM Patent 1000: The World’s Leading Patent Professionals, 20132021; • in The Legal 500 Asia Pacific, as a Leading individual in Taiwan, 2018-2021; • in Managing Intellectual Property: Guide to the Leading Patent Law Practitioners, 7th-13th, 2007-2019; • in Managing Intellectual Property: IP Stars Handbook Patent, 20142021; • in Managing Intellectual Property: IP Stars Handbook Trade Mark & Copyright, 2014-2021; • in Who’s Who Legal: Patents, 2014-2017; • in WIPR Leaders: Patents, 2017-2021; and • in WTR 1000: The World’s Leading Trademark Professionals, 5th11th, 2015-2021.
Tai E International Patent & Law Office 9Fl No 112 Sec 2 Chang-An E Rd Taipei 10491 Taiwan T +886 2 2506 1023 F +886 2 2506 8147 See firm profile p298 Professional associations • AIPLA • AIPPI • FICPI
Mr Yen is a member of the American Intellectual Property Law Association, the International Association for the Protection of Intellectual Property, the Chinese Arbitration Association, the International Bar Association, the Intellectual Property Owners Association and MARQUES, among others. He is a board member (councillor) of national and international organisations, including the Taiwan Patent Attorneys Association and the Asian Patent Attorneys Association. Mr Yen lectured on biotech and pharma-related intellectual property at Taiwan Shih Hsin University from 2003 to 2005. He has authored numerous articles and papers on IP-related subjects in both English and Chinese. He has co-authored five academic textbooks on medical microbiology and immunology, two of which have been added to the official syllabus for nationwide examinations in Taiwan.
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Thailand
Thailand’s Department of Intellectual Property (DIP) has remained open throughout the pandemic, clearing a sizeable backlog and issuing an increasing number of office actions, thanks to the hiring of additional patent examiners. Although overall filing numbers have decreased over the past year, the country remains an attractive market for international corporations. In September 2020, the DIP published the latest draft amendments to the Patent Act, which include preparations for Thailand’s accession to the Hague Agreement.
Ananda Intellectual Property
Celebrating its 10-year anniversary in 2021, Ananda Intellectual Property has grown into one of Thailand’s most respected IP firms. The litigation practice attracts particular attention, boasting an unblemished track record. In 2018 the outfit won the country’s biggest ever patent litigation case under the guidance of senior litigator Nuttakorn Sorakun. With qualified patent agents making themselves available at any time of day, patrons benefit from having direct access to a group that is “professional, responsive and precise”. Ananda’s “humble and easy to talk to” managing partner and director Franck Fougere is a “true facilitator”, who has worked tirelessly in the country to sort out patent issues for multinational corporations for almost 20 years. Foreign associates appreciate his “honesty and commitment to resolving any problem that may arise”.
Baker McKenzie
One of the country’s “key patent firms”, global heavyweight Baker McKenzie’s regional office lives up to its reputation. Its ambitious patent practice continues to attract big-name clientele locally and abroad as it fearlessly tackles complex issues. Most recently, Say Sujintaya led the outfit to reach a favourable outcome in a high-stakes litigation case for a renowned jewelry manufacturer. Further, her work related to pharmaceutical patents is worthy of notice; she was called on to handle a case involving a compulsory licensing threat – the first of its kind in Thailand – which required long negotiations with the government. Tanakrit Tangburanakij enters the rankings this year as he takes on more responsibility for the firm’s prosecution work. A testament to his abilities, peers elected him president of the Intellectual Property Association of Thailand. Having acquired 20 years of patent prosecution and litigation experience as the in-house manager of PTT Global Chemical Public Company and working at two of the ranked firms in this chapter, Radeemada Mungkarndee’s expertise is broad and deep – she is “equally well versed in patents and trademarks”.
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Chavalit Law Group
After SCL Group became SCL Nishimura in 2019, “efficient and reliable” Chavalit & Associates has continued as its IP, IT and telecoms legal service provider. Managing partner Chavalit Uttasart and Kallayarat Chinsrivongkul have built the entity’s reputation as “a safe pair of hands for anyone wishing to file a patent in Thailand”. Drawing on their “extensive experience in the field”, they provide “excellent and well-thought-out litigation strategies” in addition to their prosecution services. Those who have worked with Kallayarat for years rave about her outstanding work ethic: “She is prompt and professional and goes above and beyond in providing good service;” “Ms Kallayarat and her team worked many nights and weekends to understand a very complicated issue until they became specialists on the matter;” and “she works from very early in the morning until late in the evening and makes herself available any day of the week.” One foreign associate says: “I am glad I got to know her, both for her professionality and her friendship.”
Dej-Udom & Associates
With a diverse and internationally trained team of attorneys, Dej-Udom & Associates appeals to patrons both within and far beyond Thailand’s borders. With a doctorate in computers and engineering management, Poondej Krairit specialises in IP and technology law. Considered an authority in his field, he currently serves on several patentrelated government committees and maintains close relationships with both local and national enforcement authorities.
Domnern Somgiat & Boonma Law Office Ltd
Boasting one of the top-tier IP practices in the region, Domnern Somgiat & Boonma Law Office handles a significant portion of patent applications filed in the country by foreign parties. Six partners and eight patent attorneys are supported by more than 40 technically qualified experts. Prabjote Busdee relies on four decades of experience to advise clients in the life sciences sector. The firm’s go-to litigators, Rutorn
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Thailand S&I International Bangkok Office
Firms Baker McKenzie Domnern Somgiat & Boonma Law Office Ltd Tilleke & Gibbins Ananda Intellectual Property
Satyapon & Partners Ltd
Chavalit Law Group Rouse S&I International Bangkok Office Satyapon & Partners Ltd
See p286
ZICO Law Dej-Udom & Associates LawPlus Ltd
Nopakun and Chakrapat Mongkolsit are both USeducated and dual qualified.
LawPlus Ltd
LawPlus managing director Kowit Somwaiya is a familiar face in Thailand’s IP community. His global engagement and deep expertise have earned him prominent positions within both Thai and international industry associations over the years. Under Kowit’s leadership, the firm has established close working relationships with professionals in more than 160 countries to offer comprehensive protection for clients’ IP rights. The team at LawPlus are specialists at Patent Cooperation Treaty (PCT) applications in both Thailand and Myanmar.
Rouse
Rouse’s Thailand office provides the full gamut of patent services based on decades of experience in Asia. Operating out of Bangkok, Manoon Changchumni is a trusted advisor on contentious matters. He is supported by Fabrice Mattei, who is no stranger to complex litigation. He has been in charge of several landmark cases before the Thai Central Intellectual Property and International Trade Court (IP&IT court) as well as the Supreme Court.
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Supporting a large number of Japanese enterprises, S&I International Bangkok Office was established back in 1996 by a former JPO patent examiner and appeal board examiner. Dual-qualified as a patent agent and attorney at law, Yingluck Krairiksh is a key player at the practice, navigating contentious and non-contentious matters with ease.
Foreign associates of Satyapon & Partners praise it for holding an “unrivalled standard of diligent, ethical and professional services”. They feel confident leaving their “most precious, top-tier clients” in the hands of a “reliable, efficient team which offers first-rate services and advice in every respect”. One comments that what initially drew them in was “Satyapon Sachdecha’s passion for intellectual property”, referring to his significant contributions to the international and local IP communities during his 10 years as the chair of the Intellectual Property Association of Thailand. Possessing qualifications in highly technical fields, the practitioners at Satyapon & Partners are well-equipped to handle highly complex cases. A recent widely publicised patent infringement case for Panasonic resulted in the largest product seizure in Thai history. Working alongside Sachdecha, Verasak Maiwatana is “the most trustworthy patent agent in Thailand by far”. He is a veteran with a level of experience that is hard to beat, for he is the former director of the Thai patent office, has served as a patent examiner, director of the IP management division and head of the PCT receiving office. See p286 for firm profile
Tilleke & Gibbins
An outfit with a stellar reputation and a strong presence in the Association of Southeast Asian Nations, Tilleke & Gibbins boasts the highest number of ranked individuals in this chapter. Over the past year the patent practice has welcomed two new members. What is more, following Thailand’s move as the first country in Asia to legalise cannabis, it currently has the largest team of local cannabis industry legal advisors. Darani Vachanavuttivong is an internationally recognised enforcer of IP rights, while Alan Adcock’s negotiation skills allow him to seal the deal in major patent transactions. Sukontip Jitmongkolthong splits her time between Thailand and Laos and is a popular name among multinationals seeking help in contentious matters. Relentless litigators Nandana Indananda and Suebsiri Taweepon have been known to secure unprecedented compensation before the IP and IT court. Further, the “very
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Thailand Individuals Alan Adcock Tilleke & Gibbins Nuttaphol Arammuang ZICO Law Prabjote Busdee Domnern Somgiat & Boonma Law Office Ltd Manoon Changchumni Rouse Kallayarat Chinsrivongkul Chavalit Law Group Somboon Earterasarun Tilleke & Gibbins Franck Fougere Ananda Intellectual Property Nandana Indananda Tilleke & Gibbins Sukontip Jitmongkolthong Tilleke & Gibbins Yingluck Krairiksh S&I International Bangkok Office Poondej Krairit Dej-Udom & Associates Philip Lyren Spruson & Ferguson Verasak Maiwatana Satyapon & Partners Ltd
knowledgeable” Somboon Earterasarun receives high praise from patrons describe him as “a proactive and client-focused lawyer who adds value to our business”, who “ensures that the client expectations are met in terms of service level, results, and costs.”
ZICO Law
Big-name clients like Hanergy Holding Group, PTT Global Chemical and ZTE approach ZICO Law for its vast ASEAN IP knowledge as the only firm with offices in every country in the region. Litigator and transactional adviser Nuttaphol Arammuang competently leads the patent practice. Titirat
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Fabrice Mattei Rouse Chakrapat Mongkolsit Domnern Somgiat & Boonma Law Office Ltd Radeemada Mungkarndee Baker McKenzie Rutorn Nopakun Domnern Somgiat & Boonma Law Office Ltd Satyapon Sachdecha Satyapon & Partners Ltd Kowit Somwaiya LawPlus Ltd Nuttakorn Sorakun Ananda Intellectual Property Say Sujintaya Baker McKenzie Tanakrit Tangburanakij Baker McKenzie Suebsiri Taweepon Tilleke & Gibbins Ratchapong Thongdeetae International Legal Counsellors Thailand Chavalit Uttasart Chavalit Law Group Darani Vachanavuttivong Tilleke & Gibbins Titirat Wattanachewanopakorn ZICO Law
Wattanachewanopakorn is an expert enforcer who effortlessly takes care of anti-piracy and anticounterfeiting matters.
Other recommended experts
Ratchapong Thongdeetae is a patent specialist is a patent specialist with nearly 15 years of professional experience. He prosecutes patents for large international companies at ILCT Ltd.
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Veitnam
The Vietnamese government has taken steps to make the country an attractive place to do business by signing several major international treaties in recent years. The Comprehensive and Progressive Agreement for Trans-Pacific Partnership came into effect in 2019, followed by the Hague Agreement, the EU-Vietnam Free Trade Agreement and the Regional Comprehensive Economic Partnership in 2020. A draft amendment of the Law on Intellectual Property was published late last year with the aim of complying with the requirements of these treaties and preparing Vietnam for accession to others in future. For manufacturers, the country is becoming an increasingly popular alternative to China and having a solid patent protection strategy is becoming a priority.
Ambys
Thu Anh Nguyen manages a team of 10 technically gifted IP professionals at respected Vietnamese firm Ambys. Nguyen spent seven years as an examiner at the National Office of Intellectual Property of Vietnam (NOIP) and has been a registered patent and trademark attorney for close to 30 years. Clients benefit from a regional network of IP experts as the side works closely with associates in Vietnam, Myanmar, Laos and Cambodia.
Baker McKenzie
Valued for its “high service quality and professionalism”, Baker McKenzie’s Vietnam team offers the full range of patent services from filing to enforcement. The practice boasts an impressive track record and has continued to expand year after year. Manh Hung Tran and Viet Hung Le play an active role in solidifying Vietnam’s status as an increasingly important player on the international IP stage; they recently acquired protection for several Vietnamese patent owners in the United States. A new addition to WTR 1000, Le was involved in drafting Vietnam’s first IP laws and was instrumental in negotiating the IP aspects of the country’s accession to the World Trade Organisation. Another thing that sets the firm apart is the duo’s “great technical understanding”. As well as giving advice, they support companies in reaching their goals and are “very efficient in working with other offices in their network, which is a plus”.
D&N International
A familiar name in local IP circles, D&N International has assisted clients in acquiring and protecting IP rights since 1992. The outfit sets itself apart through its international outlook and technical expertise. Specialising in chemical and biochemical engineering, Thuy Dang founded the firm after seven years of working at the NOIP.
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Firms Pham & Associates Tilleke & Gibbins Vision & Associates Ambys Baker McKenzie D&N International Rouse TRUNG THUC JSC Winco Co Ltd VCCI-IP Co Ltd
Pham & Associates
The oldest IP-focused firm in Vietnam, Pham & Associates once again defends its spot in the gold tier this year. Peers consistently speak highly of the hardworking team led by Vu Khanh Toan Pham. The founder and managing partner is a former NOIP official. Under his leadership the practice has grown to become one of the country’s top filers.
Rouse
With a long history of operating in the ASEAN region, Rouse is a popular choice with prominent multinationals in need of patent services. “They have the skill and experience required” to tackle intricate cases and “achieve great results, going through a lot of effort for their clients”. The multilingual team produces quality technical translations – something that is sure to appeal to key patent owners. Overseeing the practice is Yen Vu, whose international exposure
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Veitnam Individuals Pham Nghiem Xuan Bac Vision & Associates Thuy TH Dang D&N International Nguyet Dzung Nguyen Vision & Associates Loc Xuan Le Tilleke & Gibbins Viet Hung Le Baker McKenzie Hung Tuan Nguyen Tilleke & Gibbins Thu Anh Nguyen Ambys Viet Thang Nguyen TRUNG THUC JSC
and broad IP knowledge ensure that she is perfectly equipped to develop sophisticated IP protection strategies for global corporations. Chemical engineer Dung Vu’s strengths lie in the chemical and pharmaceutical fields, although she can be relied on to prosecute patents in any industry with ease. She is also frequently involved in handling infringement matters.
Tilleke & Gibbins
Now the country’s second largest filer, Tilleke & Gibbins is putting pressure on its competitors. The ambitious firm is on a path of expansion; in August 2020 the Hanoi-based faction moved into a larger office to accommodate 95 largely IP-focused members. Moreover, the outfit has been growing its specialist team dedicated to electronics – an area drawing increasing interest in Vietnam. Tilleke’s IP enforcement practice, headed by Loc Xuan Le, enjoys an outstanding reputation, with seven of the 10 largest global pharmaceutical companies enlisting its services. Managing director Thomas Treutler is another experienced enforcer who has secured landmark victories for numerous clients in the life sciences and technology sectors. Highly regarded in their respective fields, Thanh Phuong Vu heads the biotechnology and chemical division, while colleague Hung Tuan Nguyen oversees the mechanical and electronics division.
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Vu Khanh Toan Pham Pham & Associates Hai Yen Thieu TRUNG THUC JSC Manh Hung Tran Baker McKenzie Thomas J Treutler Tilleke & Gibbins Le Quang Vinh Bross & Partners Dung Vu Rouse Thanh Phuong Vu Tilleke & Gibbins Yen Vu Rouse
TRUNG THUC JSC
TRUNG THUC JSC’s patent attorneys are experienced IP practitioners capable of tackling technical matters in any field. Managing partner Hai Yen Thieu specialises in pharmaceutical, biotechnology and chemical patents, while Viet Thang Nguyen’s practice centres around patent and industrial design cases in the mechanical, telecoms and new material science fields. Nguyen represents world-renowned companies such as Panasonic and AstraZeneca.
VCCI-IP Co Ltd
Vietnam’s first IP agency, VCCI-IP, was established in 1984 following the opening of the National Office of Invention, now known as the NOIP. An affiliate of the Vietnam Chamber of Commerce and Industry, it has become well known for handling high volumes of patent filings.
Vision & Associates
Prolific patent filer Vision & Associates combines deep local knowledge with an excellent grasp of international standards to offer IP services for large global companies. Pham Nghiem Xuan Bac’s practice extends from NOIP proceedings and advisory work to corporate law. IP practice director Nguyet Dzung Nguyen is another prominent practitioner with numerous successes under his belt for some of the world’s most recognisable patent owners.
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Veitnam Winco Co Ltd
One of the youngest firms in the top ranks of Vietnamese patent practice, Winco was established in 2002. Since then, the team has worked hard to grow the outfit into one of the country’s most respected patent practices. Clients turn to Winco for patent advice across the ASEAN region. Phung Chi Cong is head of the patent department and a name to remember.
Other recommended experts
Le Quang Vinh is head of intellectual property at Bross & Partners. His 17 years of experience make him a valuable ally for businesses with patent, industrial design and utility model needs.
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Advance China IP Law Office www.aciplaw.com
Advance China IP Law Office (ACIP) was founded in 1999 by a group of leading Chinese IP law practitioners who wanted to build a firm with the motto “honest, efficient, professional and enterprising”. In 20 years, ACIP has become one of the largest full-service IP law firms in China with over 900 IP professionals helping clients from all over the globe to obtain and protect their IP rights. ACIP’s professionals have kept their promise to clients: • to be a one-stop IP consultancy for the registration, prosecution, litigation and enforcement of their IP rights by competent attorneys who are highly experienced in local practice; • to provide responsive communication and reliable solutions to their urgent problems; • to be flexible and creative when devising and providing customised services that are the most cost/time-effective to clients; and • to offer consistent and transparent quotations and billing. Patent team ACIP is especially proud of its patent prosecution and litigation practice. The firm builds patent portfolios for clients from various industrial sectors with insights, quality and efficiency. In 2020 some 417 patent attorneys and patent engineers specialised in technical fields of three primary technical groups (electrical/electronics, informationa technology and software – 216 professionals; physics and mechanical engineering – 126 professionals; and life sciences and chemistry – 72 professionals) filed over 20,000 domestic applications for invention, utility model and design patents, over 1,200 Patent Cooperation Treaty applications before the China National Intellectual Property Administration (CNIPA, the Chinese Patent Office), and over 3,500 foreign-related applications. Clients trust the firm’s patent attorneys to understand their technology, have comprehensive knowledge of patent-related and general laws and regulations, and plan commercial-oriented strategies. The attorneys’ fluency in numerous languages besides Chinese (eg, English, German, French, Japanese and Korean) ensures responsive and smooth communication with regard to both technical and legal aspects of their work. Patent drafting and prosecution are strictly supervised by
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“One of the nation’s biggest full-service IP firms… Client service is a point of pride... Communication is a strength” senior patent attorneys that include former patent examiners and senior IP rights professionals who have previously worked in famous technologybased companies. Technology analysis, patent mining and training seminars are also frequently provided to clients. ACIP has also built a team of 45 litigators since 2007, assisted by senior professionals including former re-examination board examiners and technical experts with abundant experience in patent litigation, invalidation and enforcement in the local courts and all the way to the Supreme Court, and before the CNIPA and local IP offices. With an experienced in-house investigation team, ACIP attorneys have helped numerous clients conduct pre-filing investigations and administrative actions to overcome the difficulty of evidence collection due to the absence of discovery in China. ACIP has also established a highly experienced team for patent invalidation in its Beijing office for quick action against attack or as defence in a dispute. In case of patent disputes, ACIP effectively helps its clients achieve their commercial goals by customising their strategies, using local investigation, licensing negotiation, patent assignment, filing or response to request of patent invalidation, administrative petitions, initiating lawsuits and actions against unfair competition. ACIP specialises in the following, in particular: • patent prosecution, such as patent drafting and prosecution in China; patent registration in Hong Kong and Macau; patent re-examination and appeal; patent invalidation; patent search and analysis; and patent transactions and licensing; and • patent litigation and enforcement, such as
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investigation, notarisation and evidence collection; administrative enforcement; civil and criminal litigation against infringement and unfair competition; IP-related administrative litigation; and customs IP rights protection. Rankings • IAM Patent 1000, 2019 to 2021 • Tier 1 for Patent Prosecution and Contentious in China Southern Region, MIP, 2014 to 2017 • Top 10 Best Chinese IP Firms for Patent Prosecution, IPR Daily, 2017 • Outstanding IP Service Team of China, China Intellectual Property Magazine, 2016 • Four-Star Patent Agency, China Intellectual Property News, 2016 Affiliations • Vice president of the All-China Patent Attorney Association • Members of the China Intellectual Property Society • Member of the International Association for the Protection of Intellectual Property • Member of the International Federation of Intellectual Property Attorneys • Member of the Intellectual Property Owners Association • Member of the American Intellectual Property Law Association
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Main address 1402-1403 Tower A Truth Plaza 7 Zhichun Road Haidian District Beijing 10019 China T +86 10 8226 3399 F +86 10 8273 7016 E info@aciplaw.com Professional contacts Jie Hu Managing partner E hujie@aciplaw.com Chong He Partner E hc@aciplaw.com Lucy Zheng Partner E zl@aciplaw.com Other offices Guangzhou, Shanghai, Shenzhen, Silicon Valley
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AFD China Intellectual Property Law Office www.afdip.com
AFD China Intellectual Property Law Office is a privately owned leading IP law firm based in Beijing, China, with a client-supporting team in Gig Harbor, Washington State, United States. Since its founding in 2002, AFD has provided premium services to clients around the world in all areas of IP law – including patents, trademarks, copyright and domain names – and other legal areas in China. AFD also works with an established network of leading IP firms in other regions of the world to assist Chinese inventors and entities to file and prosecute patent and trademark applications and enforce their IP rights abroad. AFD provides a broad spectrum of services – including IP strategy, patent mining, patent drafting, IP filing and prosecution, freedom-tooperate analysis, validity or invalidity analysis, investigations, IP due diligence, dispute resolution and IP litigation – to strengthen and protect clients’ IP rights in China. In addition, AFD performs IP strategic analysis and crafts viable solutions to protect clients’ IP assets in China. AFD has been actively involved in domestic and foreign-related matters and instituted a robust and effective governance framework that ensures transparency in organisational functioning, delegation of authorisation and quality assurance. Policies and standards are strictly implemented for quality, efficiency and punctuality of our service. AFD has over 200 employees. Two-thirds of the professional team are patent and trademark practitioners and attorneys at law. Many of the firm’s attorneys studied abroad and have advanced degrees in various technical fields, as well as extensive industry experience. In addition, some of its attorneys have years of experience working as patent examiners in the China National Intellectual Property Administration. Its professionals work seamlessly by leveraging diversified skills and talents to address complex and challenging IP issues in cost-effective ways. Strengths AFD is committed to delivering premium IP services with a high level of professionalism and care. Its practice is distinguished by creative mind sets and effective approaches.
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“More than 130 patent practitioners and over 50 supporting staff… Run the gamut from large state-owned enterprises to Nasdaq 100 tech firms from overseas” Forward-thinking approach AFD offers comprehensive, forward-thinking advice at each step of the prosecution or litigation process. Soon after filing a patent application, it provides recommendations on how to tailor the application to comply with Chinese patent law and pre-empt patentability objections. On receiving examination opinions from the Trademark Office, it provides comprehensive analyses, rather than simply forwarding the original opinions to clients. AFD utilises every possible opportunity during the course of the prosecution process to advance clients’ cases. Up-to-date knowledge The attorneys at AFD stay up to date with the latest changes in their respective areas of IP practice. They promptly communicate with clients in regard to changes to governmental, statutory and regulatory laws and regulations, examination guidelines and specific handlings. AFD informs clients of important new developments through newsletters and alerts. AFD also regularly organises seminars and workshops for clients on the latest developments relevant to their interests. Value-added services AFD offers value-added services such as foreign patent and trademark application support, licensing and exploration, counselling services, right-to-use and validity opinions, due diligence
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and docketing and monitoring. It is willing to go beyond what most patent and trademark attorneys will do. Quality control AFD has maintained a mandatory quality control policy that applies to all filings, opinion letters and litigation filings. A two-step inspection is adopted at every key point to ensure consistency, accuracy, reliability and compliance. Its quality control also includes a complete set of control procedures, such as problem finding, training, watching, auditing, retraining, rewatching and re-auditing. Complex matters AFD has a reputation for tackling difficult cases and defending clients in complex situations. Its practices are not limited to verbatim interpretations of the law or conventional operations; they are rooted in getting to the crux of the problem and creating out-of-the-box, innovative solutions.
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Main address Golden Towers Tower B 21st Floor 38 Xueqing Rd Haidian Beijing 100083 China T +86 10 8273 0790 F +86 10 8273 0820 E info@afdip.com Professional contacts Xia Zheng President E zhengxia@afdip.com Other offices Gig Harbor
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AN, TIAN, ZHANG & PARTNERS www.atzp.com
AN, TIAN, ZHANG & PARTNERS is a leading one-stop IP firm in China that serves mainly overseas clients. Its strong IP team works in a closely connected and task-oriented manner to manage large trademark, patent and copyright portfolios for clients in various fields. The team’s unique standard training system and supervision structure enable it to focus on detailed work. Moreover, the firm’s centralised training and quality supervision system has proven to be a strong help in the remote-working period of the Covid pandemic. The IP team covers all aspects of the prosecution, litigation and enforcement of trademark, patent and copyright rights. The firm also deals with litigation relating to patent infringement, trademark registration and invalidation, copyright and other disputes arising in the IP field. Further, the firm’s close and smart structure enables it to assist clients with IP issues in an economical but exceptional way. In particular, the firm has sound experience enforcing patent rights relating to agriculture, automobile and lubricant products. The firm is also successful at conducting patent analysis to help clients to control the risks of their business investments. To understand clients’ needs, to solve their concerns and to become their reliable IP pillar in China is our constant goal. Trademarks Starting off 20 years ago as a trademark prosecution firm, AN, TIAN, ZHANG & PARTNERS has grown gradually and is now experienced in managing complicated portfolios and solving strategic disputes for international clients. With extensive knowledge of trademark regulation and practice, year after year the firm has helped clients obtain favourable outcomes in numerous opposition and invalidation cases through the administrative procedures and the subsequent litigations. Building on its trademark prosecution and litigation successes, AN, TIAN, ZHANG & PARTNERS set up a patent team that is now also flourishing. Patents The patent team has grown rapidly in recent years and is experienced in handling patent litigation, prosecution and research in various fields. With its precise work and flexible response, the firm
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“An elite squad of professionals… The combination of prosecution and contentious experience helps clients on both ends” has attracted an increasing number of Japanese clients in need of patent prosecution and analysis in the machinery, pharmaceutical and automobile industries. The firm’s investigation team provides fantastic support for evidence collection, which is valuable in patent disputes and litigation. In addition, the firm set up a strong patent translation team to assist international clients. Patent analysis, such as freedom-to-operate reports, is part of the team’s daily work. The team handles more than 300 patent filings and invalidation cases annually. Litigation Litigation is another key practice of the firm. The firm’s litigators are experienced in trademark, patent, copyright, unfair competition and administrative cases before the different courts across China. The firm’s close organisation enables its litigators to access the most up-todate knowledge and provides an effective but economical litigation strategy for clients. Enforcement and evidence collection The firm has a trained team which deals with enforcement and evidence collection issues. It has experience operating across China and its members are knowledgeable in many industry areas. The team – under the supervision of litigators – conducts evidence collection, which is particularly important for patent infringement litigation. The team is also experienced in combating trademark and patent infringement in professional exhibitions, in the online and offline markets.
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Main address 4th Floor Tower C Building B28 Universal Business Park Number 10 Jiuxianqiao Road Beijing 100015 China T +86 10 6597 5210 F +86 10 6597 5202 E info@atzp.com Professional contacts David Tian Managing partner E davidtian@atzp.com
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Anand and Anand www.anandandanand.com
Anand and Anand is a leading Tier 1 IP law firm with a worldwide reputation for its innovative solutions resulting in groundbreaking developments in IP jurisprudence. The firm caters to the widest array of domestic and international big-ticket clients, from leading luxury to consumer goods brands, bio-tech, pharma, telecom and mechanical to tech majors – to name a few. Practice areas • Patents and designs • Litigation and dispute resolution • Trademarks • Copyrights • Plant variety and biodiversity • Media and entertainment • Advertising and product liability • Packaging and labelling • Art and fashion • Essentiality evaluation • Franchising • Sports law • Brand strategy • Geographical indications • Competition law • Contractual and commercial intellectual property • Trade secrets • Licencing • Customs The firm’s litigation arm handles infringement, passing off and counterfeiting disputes, domain name enforcement, and trademark dilution and has decades of experience in dispute resolution. Anand and Anand has a successful track record of patent grant, including defending invalidity challenges before the Indian Patent Office and the Intellectual Property Appellate Board. It recorded 1800-plus successful trademark oppositions recently. With a vision of “360 degrees IP & Beyond”, the firm is credited with transforming the Indian IP enforcement regime by bringing the best jurisprudence from developed common law nations, addressing administrative and procedural bottlenecks and spreading IP awareness. Landmark cases The law books are rife with landmark cases handled by Anand and Anand. The firm has been
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“‘One of the best firms in India for IP matters’… Unrivalled reputation derives from the hard work of the patents and design team” at the top of the game by going beyond the done thing. Recent high points include: • patent law suits that the transformed pharmaceutical and bio-technology enforcement regime in India including Merck v Glenmark, Roche v Cipla, the Monsanto case and a large number of other suits on behalf of Pfizer, BMS, AstraZeneca – among other companies; • India’s first anti-anti-suit injunction order (InterDigital v Xiaomi); • India’s first software patent law suit conferring protection (Ferid Allani case); • development of a damages culture in large number of cases (Philips v AmazeStore); • India’s first post-trial SEP judgment (Philips v Bhagirathi); • development of unique remedies, such as the “Tree Planting Order” (Merck case); and • order benefitting adolescent girls (Hermes case). The firm successfully secured patent protection for Nivolumab after six oppositions, ertugliflozin, Delgocitinib for Japan Tobacco and Luseogliflozin for Taisho after several pre-grant oppositions. It also successfully defended several information and communication technology (SEP) patents and mechanical inventions before the Indian Patent Office. Other firsts • John Richard Brady case – recognised breach of confidentiality as a separate tort • Christian Louboutin case – protected RED SOLE as single-colour trademark
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• Deere & Co v Malkit Singh – India’s first judgment recognising colour combination (John Deere’s green and yellow) as a trademark • HMV Gramophone Co case – first Anton Piller order • Philips case – first Mareva injunction order • Pre-suit mediation litigation involving Nokia • First Norwich Pharmacal order (Hollywood cigarettes) • Amarnath Sehgal v UoI – first order upholding moral right of an author under the Indian Copyright Act • First order under The Hague Convention (Astra Zeneca) for collecting overseas evidence in India • Glenfiddich case (against McDowell) – a great order for protecting trade dress in India • Bandit Queen case – first of its kind where a woman bandit called Phoolan Devi received protection for her right of privacy by deletion of certain objectionable portions in the film Bandit Queen • Najma Heptullah v Orient Longman – brought up interesting questions of joint authorship under copyright law
Main address B - 41 Nizamuddin East New Delhi 110013 India T +91 120 405 9300 F +91 120 424 3058 E email@anandandanand.com Professional contacts Pravin Anand Managing partner E pravin@anandandanand.com Other offices Chennai, Mumbai, Noida
Spreading the message of intellectual property Outside courtrooms, the firm spreads IP awareness through: • The Raj Anand Moot Court Competition since 1997; • ‘Anaryst’ – an IP board game; • ‘Brainchild’ – the first IP-themed play; • Adventures of Mr IP – an IP comic; • IPONOMICS – a coffee table book; • IP Thinker – a digital newspaper celebrating World IP Day 2020; and • Patent Rewind – an annual encapsulation of developments in Indian IP jurisprudence. Recognitions • Managing Intellectual Property (MIP) – IP Stars – Tier 1 across all tables – 2015-2020 • MIP Asia Awards – Firm of the Year (Patent Contentious) – 2018-2020 • IAM Patent 1000 – Gold Band Firm – Enforcement and Litigation, Prosecution and Strategy – 2015-2020 • WTR 1000 – Gold Band Firm – Enforcement and Litigation, Prosecution and Strategy – 20152021
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Anderson Mori & Tomotsune www.amt-law.com
Anderson Mori & Tomotsune (AMT) is a full-service law firm formed by the winning combination of three leading law firms in Japan: Anderson Mori, one of the largest international firms in Japan, which was best known for serving overseas companies doing business in Japan since the early 1950s; Tomotsune & Kimura, particularly wellknown for its expertise in international finance transactions; and Bingham Sakai Mimura Aizawa, a premier international insolvency/restructuring and crisis-management firm. Our combined firm provides an extraordinarily powerful value proposition. Housing all of these synergistic practices under one roof, and further increasing our resource scale, we have the capability to serve a multinational client base on in-bound, out-bound and domestic projects, by providing expert, timely and cost-efficient advice across a full range of legal issues and in the largest, most complex, cross-sector transactions. We are proud of our long tradition of serving the international business and legal communities, and of our reputation as one of the largest fullservice law firms in Japan. Our combined expertise enables us to deliver comprehensive advice on virtually all legal issues that may arise from a corporate transaction, including those related to M&A, finance, capital markets and restructuring/ insolvency, and litigation/arbitration. The majority of our lawyers are bilingual and experienced in communicating, drafting and negotiating across borders and around the globe. We welcome the opportunity to work closely with clients and channel our resources towards our goal of achieving more together. Our lawyers take great professional pride in their work. As a fundamental principle, we continuously strive to deliver premier quality legal services on each and every client assignment. To achieve this, AMT professionals are dedicated to four maxims: the pursuit of excellence, steadfast effort, maintaining quality and constant improvement. AMT’s devotion to providing premier quality legal services has repeatedly been acknowledged. We are deeply honoured and privileged to consistently receive top professional recognition for our work on international and domestic corporate law matters. We sincerely value and appreciate the trust that our clients have placed in us, and will
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“One of the biggest in Japan… Comprehensive IP practice that counts prosecution, dispute resolution and transactions among its full suite of services” continue to deliver high-quality, comprehensive legal services to meet their needs. We are headquartered in Tokyo with branch offices in Osaka and Nagoya. Outside Japan, we have offices in Beijing, Shanghai, Singapore, Ho Chi Minh City and Bangkok. We also have a Japan desk in Jakarta and an associated firm in Hong Kong. IP practice group The firm’s IP practice group comprises attorneys at law (bengoshi) and patent attorneys (benrishi). Our IP attorneys (bengoshi) are veterans in patent litigation and have extensive experience in IP licensing and transactions. They possess deep technical knowledge in the areas of electronics, telecommunications, computers, machinery, chemicals, biotechnology and pharmaceuticals. Our lawyers have extensive experience in the handling of know-how, trademark, copyright and entertainment disputes, as well as IP licensing and transactions. They work closely with the firm’s specialists in other practice areas such as competition law, labour law, corporate law, cross-border transactions, bankruptcy and pharmaceutical regulations, as required by the nature of the cases they handle. Our patent attorneys (benrishi) specialise in the filing of patents, utility models, designs and trademarks. These professionals are qualified to appear before the Japan Patent Office for patent prosecution proceedings and provide our clients with advice and consultations on the various
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aspects of Japanese IP law. The members of our patent prosecution team hail from a variety of professional, technical and academic backgrounds and are at the cutting edge of both technology and IP regulations. AMT’s experts work hand-in-hand to ensure that our IP practice group is, and continues to be, one of the top legal professional IP practices in Japan.
Main address Otemachi Park Building 1-1-1 Otemachi Chiyoda-ku Tokyo 100-8136 Japan T +81 3 6775 1000 E ip_inquiry@amt-law.com Professional contacts Masayuki Yamanouchi Partner E masayuki.yamanouchi@amt-law.com Other offices Bangkok, Beijing, Ho Chi Minh City, Nagoya, Osaka, Shanghai, Singapore
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AnJie Law Firm www.anjielaw.com
AnJie Law Firm is a leading China law firm providing full services to both international and domestic clients, including Fortune 500 companies, large state-owned enterprises, financial institutions, as well as leading private companies. Since its establishment, AnJie has been growing rapidly and currently employs more than 300 professionals. The firm’s lawyers are well-regarded experts in their professional fields. Their deep understanding of the legal and regulatory landscape and strong practical experience have led them to handle numerous high-stakes cases in the Chinese courts. AnJie’s lawyers are often consulted by regulators on leading legal and policy issues, and have built strong work relationships with government agencies; our partners have worked in leading international and domestic law firms, and many are qualified to practise both in China and abroad. AnJie’s lawyers frequently speak at major international legal and business conferences and actively contribute to well-known legal and academic journals. They also regularly lecture at prominent educational institutions and are retained as adjunct professors, graduate supervisors and fellow researchers. Intellectual property is one of the firm’s leading practices. Our IP partners hold law degrees (LLMs and JDs) from universities in China, Europe and the United States, and have a background in engineering and science. They have rich experience in the various fields of intellectual property, including trademarks, copyright, patents, technical secrets, domain names and designations of origin. In addition, they enjoy a good relationship with the Chinese courts, the Copyright Protection Centre, the Trademark Office of the State Administration for Industry and Commerce, the Trademark Review and Adjudication Board and the State Intellectual Property Office. AnJie has an impressive track record in resolving IP disputes. Representing both claimants and defendants, it protects the rights and interests of its customers through litigation, arbitration and negotiation. AnJie guides and helps clients establish and improve their intangible assets by providing copyright, trademark and patent application services. The firm also provides technology transactions, including cross-border IP trade (transfer, licensing, package buy-out), cross-
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“AnJie has an impressive track record in resolving IP disputes” licensing, joint ventures, cooperative institutions, project cooperation and so on to help customers first establish and then expand their market share through their IP rights. AnJie also provides clients with a variety of counselling services, including policy advice, IP acquisition and protection strategy consulting – continually expanding its IP practice to support its clients. Practice areas Patents Our patent team increasingly becomes the top choice for high-stakes patent litigation, for both international and domestic companies. Our members have an exceptional track record, including securing preliminary injunctions for international pharmaceutical and chemical industry clients, and obtaining successful settlement for complex cross-border litigations. Our attorneys have advanced technical degrees in fields such as wireless communication, engineering, chemistry, physics and computers. Our attorneys have prosecuted numerous patent applications in various technology fields in China and in the United States. Trademarks Our team members have years of experience representing leading international and domestic companies in handling clearance searches, trademark applications and commercial brand agreements. We also assist our clients in enforcing and defending their rights through cease-anddesist activities, trademark oppositions and cancellation proceedings, anti-counterfeiting actions, customs claims, and civil and criminal litigation.
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Copyright AnJie’s attorneys have handled some of the highest-profile cases relating to copyright recordation, licensing, enforcement and dispute resolution. Our experience spans a wide range of industries, including computer software, entertainment and media. Trade secrets China has made steady improvement in trade secret protection, even though this remains at the centre of numerous trade disputes. We have developed best practice in enforcing trade secrets and have very valuable, first-hand experience in criminal and civil enforcement in this area.
Main address 19th Floor Tower D1 Liangmaqiao Diplomatic Office Building 19 Dongfangdonglu Chaoyang District Beijing 100600 China T +86 10 8567 5988 F +86 10 8567 5999 E anjie@anjielaw.com Professional contacts Qinghui (Nick) Liu Partner, litigator E liuqinghui@anjielaw.com Allison Duan Marketing assistant E duanxiaoyu@anjielaw.com Other offices Shanghai, Shenzhen Sample client list • AstraZeneca • Cambrios • NICHIA Corporation • Qualcomm • Sharp • Tencent
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AOYAMA & PARTNERS www.aoyamapat.gr.jp
AOYAMA & PARTNERS was founded in 1965. From its early days, the firm has worked on many international cases thanks to its strong capabilities in the pharmaceutical field, and has been involved in numerous IP lawsuits both inside and outside Japan. The AOYAMA of today is a general patent attorneys’ firm whose members are specialists in a range of technical areas, including mechanical, electrical, chemical and life sciences, as well as in the design and trademark fields. This enables us to respond to the diverse needs of our clients. Using our own proprietary computer systems, developed in conjunction with a software company, we engage in painstaking deadline management, earning a great deal of trust from our clients.
“Very reliable and professional team… Always has a fast turnaround for any consultation”
Experience and specialisms We are one of Japan’s largest IP law firms, with a total staff of approximately 300 professionals, including over 100 patent attorneys. We cover all sectors ranging from mechanical, electrical, chemical and life sciences, to designs and trademarks. This give us the capabilities to tackle all manner of IP-related tasks, including applications, trials and litigation, both inside and outside Japan, in partnership with IP law firms in various countries. We also provide comprehensive IP services, including supporting universities and SMEs, doing research and making patent appraisals.
can provide a service that has a personal touch and is consistent. We always back up our contact people with teams that are made up of a flexible mix of personnel so that we can best serve our clients taking account of each case’s particular circumstances. Our team approach enables us to handle urgent tasks and international IP litigations better, and it even allows to provide our clients with support for large-scale projects, such as ventures into new fields of technologies. A particular case may cross over into multiple technological fields, and it is at times like these that AOYAMA’s strength can really make a big difference as we have the capability to form cross-disciplinary teams to handle such cases. As a rule, we form teams with a mix of attorneys from different generations as we find that doing so enables us to build long-term and seamless relationships with our clients.
International experience AOYAMA has a huge wealth of experience through our handling of patent applications in approximately 150 countries and being engaged in numerous lawsuits (several hundred Japanese lawsuits and about 100 international lawsuits). We have been involved in many cutting-edge cases since our firm was established, while expanding our areas of expertise from life sciences technologies (which are prone to international disputes) to chemistry, electro-mechanics and IT technologies. In 2017 our legal department for handling litigation, disputes and IP consultation (among other things) was re-organised and keeps extending its capabilities.
Highly secured docketing system Based on the knowledge and know-how we have built during our 50 years-plus of experience, we have built and introduced a uniquely customised docketing system. All of our procedures, deadlines, progress and more are recorded in the system by formality specialists not only for our Japanese cases, but also for all the countries where we file applications. As all procedures are docketed in the system, they can be listed and printed out in a timely fashion to provide reminders to all members involved in each case. We have a business continuity site at a remote location from our offices, enabling us to quickly and easily recover in the wake of a disaster.
Hand-picked teams We generally assign at least one patent attorney to each client to act as liaison, to ensure that we
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Worldwide network We boast a global network consisting of many general law firms and IP law firms from the world over that we have developed over 50+ years. We have the capability to rapidly obtain IP information from all over the world, and immediately reflect such information in our daily work. We can provide our clients with work that is up to date and top quality with respect to law changes and new procedures both inside and outside Japan.
Main address Umeda Hankyu Building Office Tower, 8-1 Kakuda-cho Kita-ku Osaka 530-0017 Japan T +81 6 6316 1261 F +81 6 6316 2241 E info@aoyamapat.gr.jp Professional contacts Hiroshi Tamura Co-CEO E htamura@aoyamapat.gr.jp Norihito Yamao Co-CEO E yamao@aoyamapat.gr.jp Other offices Tokyo
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Beijing Sanyou Intellectual Property Agency Ltd www.sanyouip.com
Founded in 1986, Beijing Sanyou Intellectual Property Agency Ltd was the first private IP firm in China. Now a leading IP law firm, Sanyou IP helps domestic and international clients to obtain and enforce their IP rights by providing wide-ranging, high-quality services. In 2011, upon the completion of a streamlining management procedure, Sanyou IP obtained the ISO 9001 certification for quality management. By emphasising professionalism and craftsmanship, Sanyou IP has been named an Outstanding Patent Agency and an Outstanding Trademark Agency for several consecutive years. Our team of motivated and professional attorneys represents a combination of the highest technical and legal qualifications and years of practical experience. Many of our attorneys have been practising since the establishment of the Chinese patent and trademark systems, and several are former senior patent examiners for the patent office of the China National Intellectual Property Administration, or former first-rank examiners of the Patent Re-examination Board. Our clients consequently benefit from our unparalleled insight into China’s IP laws and procedures. Our headquarter is located in Beijing and we also have branch offices in Suzhou, Dalian, Hong Kong and Japan. Sanyou IP has approximately 400 staff, including 160 patent attorneys, 50 patent engineers, 20 general lawyers and 30 trademark professionals, all practising under four interrelated entities: • Beijing Sanyou Intellectual Property Agency Ltd; • Beijing Wanrui Law Firm; • Beijing Sanyou Xinbo IP Consulting Co Ltd; and • Sanyou International IP Service Ltd. With such talented people, we offer a one-stop IP service to our clients. We provide a comprehensive range of IP services relating to the prosecution and litigation of patents, trademarks, copyright, domain names, unfair competition and trade secrets. Our expertise encompasses all major technical fields, including biochemistry, biology, chemistry, computer science, physics, optics, materials, electrical, electronics, engineering, mechanics, pharmaceuticals and telecommunications. Our motto is “quality, efficiency and loyalty”. At Sanyou IP, we pride ourselves on the quality of our
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“By emphasising professionalism and craftsmanship, Sanyou IP has been named an Outstanding Patent Agency and an Outstanding Trademark Agency for several consecutive years” work and constantly strive to provide the highest level of service tailored to the individual needs of each client. Our team of top legal professionals, with its wealth of experience and proven success in the full range of IP services, stands ready to protect clients’ IP rights both in China and around the globe. As a standing committee member of the AllChina Patent Agents Association (ACPAA) and the China Trademark Association (CTA), Sanyou IP plays an active and important role in China’s IP industry. Sanyou IP is a member of several international IP organisations, such as the International Trademark Association (INTA), the International Association for the Protection of Intellectual Property (AIPPI) and the Licensing Executives Society (LES). Having been dedicated to intellectual property for over 30 years, Sanyou IP is always looking to improve its services and quality of work. The firm is trusted and supported by businesses across the industry. Firm and team members’ affiliations • Vice president of the ACPAA • President of the Capital Intellectual Property Services Association • Standing committee member of the CTA • Corporate member of the Beijing Patent Agents Association • Executive council member of the Copyright
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Society of China Member of INTA Member of the AIPPI Member of LES Member of the International Federation of Intellectual Property Attorneys • Standing committee member of the China Intellectual Property Society • • • •
The firm acts also as the intern training base for the LLM in IP laws of Peking University.
Main address 16th Floor Block A Corporate Square 35 Jinrong Street Beijing 100033 China T +86 10 8809 1921 F +86 10 8809 1920 E sanyou@sanyouip.com Professional contacts Xiaolin Dang Patent attorney E dangxiaolin@sanyouip.com Shirley Fu Trademark attorney E shirleyfu@sanyouip.com
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CCPIT Patent & Trademark Law Office www.ccpit-patent.com.cn
CCPIT Patent & Trademark Law Office is the oldest and one of the largest full-service IP law firms in China. Our firm has 322 patent and trademark attorneys, among whom 93 are qualified as attorneys at law. We provide consultation, prosecution, mediation, administrative enforcement and litigation services relating to patents, trademarks, copyright, domain names, trade secrets, trade dress, unfair competition and other IPrelated matters. Headquartered in Beijing, we have branch offices in New York, Silicon Valley, Tokyo, Munich, Madrid, Hong Kong, Guangzhou, Shanghai and Shenzhen. Our mission is to render tailored services to clients with high quality, efficiency and reliability, in a cost-effective manner. We strive continually to improve the reliability and flexibility of our portfolio management system and the effectiveness of our quality-control mechanisms. We appoint teams of professionals with complementary expertise and organise brainstorming discussions when necessary. Our professionals are encouraged to be both proactive and creative, providing commentary and guidance and devising value-added solutions for our clients. Our clients represent every sector of industry and commerce, from start-ups to multinational giants. Through decades of practice, we have successfully obtained hundreds of thousands of patents and trademark registrations and enforced thousands of patents and trademarks for our clients. Our extensive legal and technological expertise enables us to satisfy the demands of our clients in all aspects of IP protection. Our professionals are required to undertake continuous professional training and education to keep pace with rapidly changing laws and technologies. We organise in-house academic and experience-sharing activities on a regular basis. We send our professionals to attend training programmes or pursue further education in law. Some of our attorneys are active speakers and participants at IP-related conferences and seminars. History Our history goes back to January 1957, when a trademark agency was established within the China Council for the Promotion of International Trade (CCPIT) – a non-governmental trade promotion organisation – to represent foreign companies
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“Our mission is to render tailored services to clients with high quality, efficiency and reliability, in a costeffective manner” before Chinese authorities. The agency was the sole trademark agency in China until the mid-1980s. A patent agency was organised by CCPIT in the early 1980s, when China began to establish its patent system. The patent agency was authorised as the first Chinese IP law firm to have cross-border representation. In 1993 the two agencies merged to form the CCPIT Patent & Trademark Law Office. Honours Our reputation for professionalism is widely recognised among peer professionals and clients, both domestically and internationally. Since 1999, we have been ranked among the top Chinese IP law firms in the annual surveys conducted by Managing Intellectual Property and have been nominated time and again as a leading Chinese IP firm by publications such as Asia Legal Business, IAM and Chambers & Partners. Core values • Integrity – we follow internationally recognised ethical rules and take social responsibility as legal professionals. • Diligence – we render tailored services to clients with high quality, efficiency and reliability, in a cost-effective manner. • Teamwork – we integrate the expertise of attorneys from different disciplines and incorporate the experience of senior professionals with the vitality of junior professionals. • Proactivity – we actively provide comments and guidelines in light of local law and practice to clients. • Solutions-oriented – we provide practical solutions to clients in response to their demands.
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Practice areas Patent services include: • pre-filing consultation; • patent prosecution and re-examination; • patent administrative litigation; • patent search and analysis; • patent invalidation; • patent infringement search and analysis; • administrative and judicial enforcement; • patent licensing and technology transfer; • annuities payment; and • patent and non-patent document search and surveillance. Trademark services include: • trademark registration consultation; • trademark application and review; • trademark administrative litigation; • disputes concerning trademark registration and use; • trademark opposition and invalidation; • trademark licensing, transfer and contract drafting; • trademark renewal; • due diligence investigation; • trademark search and surveillance; and • administrative and judicial enforcement.
Main address 10th Floor Ocean Plaza 158 Fuxingmennei Street Beijing 100031 China T +86 10 6641 2345 F +86 10 6641 5678 E mail@ccpit-patent.com.cn Professional contacts Chuanhong Long President E mail@ccpit-patent.com.cn Other offices Guangzhou, Hong Kong, Madrid, Munich, New York, Shanghai, Shenzhen, Silicon Valley, Tokyo
Other services include: • copyright and computer software registration; • domain name registration and dispute resolution; • registration of integrated circuit layout design; • recordation of intellectual property with Customs; • consultation and litigation on trade secrets and unfair competition; and • IP financing and transaction.
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Chadha & Chadha Intellectual Property Law Firm www.iprattorneys.com
Chadha & Chadha Intellectual Property Law Firm is headquartered in Gurgaon and has 10 offices across India – in Ahmedabad, Bangalore, Chennai, Cochin, Hyderabad, Kolkata, Mumbai, New Delhi and Pune. Led by 12 partners, the firm’s team comprises 120 people, including 35 attorneys at law and 30 patent attorneys and engineers. Chadha & Chadha is committed to providing high-quality work, being responsive and taking a client-centric and practical approach. The firm traces its history back to 1967; it has evolved over more than five decades to become one of India’s most prominent IP firms. The firm specialises in patent law in various industries and technologies, including automobile and auto components, mechanical and machinery, electronics and electrical, telecom and communications, software and information technology, biotech and life sciences, pharma and healthcare, medical devices, material sciences, metallurgy, food and beverages, and sports equipment. Chadha & Chadha stands for the highest quality of work in all aspects of intellectual property, including trademarks, copyright, design, plant varieties, geographical indications, emerging IP rights, enforcement and anti-counterfeiting, licensing, customs actions and domain names. Our strengths and qualities Our success is attributed to a diverse and skilled team of patent professionals who bring expertise to the key technical areas. Most of our professionals have dual qualifications in technology and law. Our team includes qualified Indian patent agents, advocates registered with their respective State Bar Council and the former assistant controller of patents at the Indian Patent Office. Our professionals’ academic qualifications include bachelor’s and master’s degrees and, in some cases, PhDs. Many of our team members have undertaken international training programmes such as the FICPI-SEAD (the southeast Asian drafting course of the International Federation of Intellectual Property Attorneys) and EURO-SEAD, its European equivalent, which gives them a very good understanding of current international practices.
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“Service-oriented mindset, efficiency, professional expertise and understanding of IP law… 98% success rate in obtaining patents grants” Specialties Much of the firm’s patent work involves cuttingedge technologies and complex legal issues, including in the areas of computer-related inventions, artificial intelligence, Internet of Things, fintech, telecoms, chemicals, pharmaceuticals and medical devices. The firm represents clients before various forums in India, including before the Indian Patent Office, the Intellectual Property Appellate Board and courts at all levels. The firm also provides advisory services on cross-border IP disputes. Clients The firm proudly represents clients among the Fortune 500, Fortune Global 2000, FTSE 100, FTSE 250 and Forbes Global 2000 lists, including a client listed in third position on Forbes’ World’s Most Valuable Brands (patents). The range of clients varies from large companies, mid-sized corporations, academic institutions and research departments to spin-offs and start-ups. Diversity and inclusion Chadha & Chadha’s team is diverse, with a large proportion of women in the leadership. We promote professional management to ensure the best interests of clients and encourage initiatives from staff at all levels. Diversity and inclusion are not one-day issues: they form an integral part of our organisational DNA. Our initiatives such as a gender-neutral
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sexual harassment policy, strong professional development opportunities, on-the-job leadership training and flexible work schedules are aimed at reaffirming our strong commitment to building an inclusive culture in the firm. As a result of continued efforts in the last decade, Chadha & Chadha has seen a 60% increased share of women on the leadership board. It makes us even prouder that most of these women began their careers at the firm and rose through the ranks, benefitting from Chadha & Chadha’s structured mentorship programme and its commitment to supporting women in achieving maximum potential at work. Awards and accolades Chadha & Chadha has been consistently ranked highly in India by various legal directories, including in Tier 1 for patents, trademarks and copyright by Asian Legal Business IP 2020 and Tier 2 for intellectual Property by The Legal 500 2019 and Chambers 2019. We have also been consistently recommended for patent prosecution by the IAM Patent 1000 and for enforcement and litigation, as well as for prosecution and strategy, by the WTR 1000.
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Main address Level 18 One Horizon Centre Golf Course Road Gurgaon 122002 India T +91 124 668 8014 F +91 124 668 8020 E info@iprattorneys.com Professional contacts Sonal Madan Partner E sonal.madan@iprattorneys.com Tarun Gandhi Partner E tarun.gandhi@iprattorneys.com Shivarpita Nailwal Partner E shivarpita@iprattorneys.com Other offices Ahmedabad, Bangalore, Chennai, Cochin, Hyderabad, Kolkata, Mumbai, New Delhi, Pune
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Chang Tsi & Partners www.changtsi.com
Chang Tsi & Partners has been guiding multinational companies with its expertise in Chinese law and business since 2002. Headquartered in Beijing, with branches in finance capital Shanghai and trade capital Guangzhou, other offices in Shenzhen, Hong Kong, Nanning, Taiwan and Korea, and two liaison partners in the United States, Chang Tsi & Partners has over 350 employees, including 210 lawyers in China and teams dedicated to Japan, Korea and Taiwan. The guiding principle of Chang Tsi & Partners is to secure clients’ rights in a changing China. Chang Tsi & Partners is a Tier one law firm with a proven track record in intellectual property and dispute resolution. The firm provides the full scope of services from prosecution to litigation for patents, trademarks, copyrights, trade secrets and domain names. Chang Tsi & Partners has been recommended by the IAM Patent 1000 for both patent prosecution and enforcement for years. Amazon recognised Chang Tsi & Partners as the most “Up to Speed Quickly” outside counsel. Twitter awarded Chang Tsi & Partners as the most “Out of the Box” law firm for our creative legal solutions. Accolades • Chang Tsi & Partners was awarded the title “2020 China Trademark firm of the Year” by Globe Business Media Group’s Intellectual Asset Management and World Trademark Review. • Chang Tsi & Partners has been ranked as a leading firm by Chambers Asia Pacific for several consecutive years and recommended as a “TopTier Intellectual Property Firm” by Legal 500 Asia Pacific, also for several consecutive years. • Founding partner Spring Chang has been recognised by Chambers Asia Pacific as a Band 1 IP lawyer in China and awarded “Elite Practitioner ” in intellectual property by Asialaw Profile. • Managing partner Simon Tsi has been ranked as one of the top 15 litigators and top 15 IP lawyers by Asian Legal Business and listed in “The A-List 2018 China’s Top 100 Lawyers” by China Business Law Journal.
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“The guiding principle of Chang Tsi & Partners is to secure clients’ rights in a changing China” International outlook As a professional law firm with foreign-related intellectual property as its core practice, the firm’s business needs are facing the world. As more and more foreign brands enter China and Chinese corporations begin their expansion into foreign markets, Chang Tsi & Partners has built a large pool of international clients ranging from startups to Fortune 500 companies in industries as diverse as aviation, mining, fashion and beauty, manufacturing (ITW, Ingersoll Rand, Honeywell, Britax), electricity, and food and beverages. Chang Tsi & Partners enjoys longstanding and close cooperation with hundreds of renowned law firms across the Asian-Pacific region, Europe and America. We have established partnerships with local offices in more than130 countries. This has enabled the firm to assist clients around the world in a timely and efficient manner. Intellectual property Intellectual property is a core focus at Chang Tsi & Partners. The firm’s IP practice is distinguished by its significant patent, trademark, copyright and domain name victories in both contentious and non-contentious matters for leading international organisations. The firm provides comprehensive, one-stop, multi-level legal services. Patents Chang Tsi & Partners has a strong and growing patent practice and its skilled attorneys process all aspects of patent prosecution and enforcement, including invention patents, utility model patents, design patents, trade secrets, product packaging and decoration, plant varieties, integrated circuit layouts and patent management and transfers, as well as other patent-related matters, including unfair competition. Our attorneys have
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backgrounds in science, engineering and law. They are well qualified, having passed both the legal and the patent bar exams in China and overseas. Two of our patent practitioners passed the US Patent Bar exam. Chang Tsi & Partners’ services include: • consultation on patent prosecution and enforcement strategies; • drafting, review and amendment of legal documents for patent assignment and licensing; • patent searches and monitoring; • patent applications for inventions, utility models and designs; • re-examinations and invalidations; • administrative litigation; • customs recordal and training services; • investigation of patent infringement, including evidence collection; • patent infringement litigation; • negotiation and other legal services relating to patent licensing and assignment; • patent annuity payment and docketing services; • patent opinions, including invalidity, noninfringement and freedom-to-operate opinions; • legal services and negotiations on licensing and transfers; and • design and implementation of global patent protection and licensing strategies.
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Main address Floor 6-8 Tower A Hundred Island Park Bei Zhan Bei Jie Xicheng District Beijing 100044 China T +86 10 8836 9999 F +86 10 8836 9996 E marketing@changtsi.com Professional contacts Spring Chang Founding partner E springchang@changtsi.com Louisa Cheng Marketing manager E marketing@changtsi.com Other offices Guangzhou, Hainan, Hong Kong, Nanning, Seoul, Shanghai, Shenzhen, Taipei Sample client list • 3M • Air China • Geely Auto • Johnson Controls • Michael Kors • Mondelez International • Twitter
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China Patent Agent (HK) Ltd www.cpahkltd.com
China Patent Agent (HK) Ltd (CPA), incorporated in 1984, is one of the first three pioneer IP firms in China. CPA has offices in Hong Kong, Beijing, Shenzhen and Shanghai, and overseas offices in New York, Tokyo and Munich, forming a global network to provide around-the-clock quality IP services to its clients worldwide. CPA provides comprehensive IP services to its clients in China and abroad, with particular expertise in application preparation, prosecution, litigation, mediation, licensing, assignment and counselling in relation to patents, trademarks, copyright, domain names, antiunfair competition and other IP-related areas. It also prosecutes patent, trademark and design applications for clients in the Hong Kong Special Administrative Region. As a leading IP firm in China, CPA has 560 staff, including 230 patent attorneys, 34 trademark attorneys and 85 attorneys at law. Its strength in IP practice lies in the powerful teamwork of its professionals, stemming from their extensive practical experience, solid technical and academic backgrounds, IP knowledge and industrial experience, and proficiency in various working languages. Guided by the philosophy of total commitment to the protection of clients’ IP rights, CPA strives to achieve the highest standards of professionalism and integrity. All staff members at CPA appreciate the trust put in them by clients and reach out to provide trustworthy and comprehensive services in an efficient manner. It will be CPA’s honour to continue giving clients this assurance of quality service in the future. Patent services • Prior art search and patentability study • Drafting and prosecution of patent applications • Patent re-examination and invalidation • Patent infringement litigation, administrative resolution and customs protection • Patent customs recordal prosecution • Patent search and watch, patent infringement assessment and due diligence investigations for M&A • Comprehensive patent-related management consultation (eg, portfolio and annuity management, patent strategy) • Patent licensing and technology transfer
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“One of the pioneering prosecution megafirms in China… Experienced, knowledgeable, polyglot staff keep the firm comfortably at the top” Trademark services • General trademark-related consultation • Pre-application search and registrability study • Trademark enquiry, monitoring and advertising • Trademark registration and renewal prosecution • Trademark opposition, review/adjudication and administrative litigation • Trademark licensing and assignment • Trademark infringement litigation, administrative investigation and treatment, and related legal services • Trademark customs recordal prosecution • Trademark and brand strategy consultation Enforcement and other legal affairs • Counselling in administrative proceedings, administrative and civil litigation and IP rights affirmation • Mediation of IP disputes • Drafting or review of agreements/contracts in IP trade and licensing • Legal opinions, business negotiation and arbitration representation, corporate IP rights management services and IP strategy preparation • Legal services for interested parties to patent dispute and infringement cases, including counselling, investigation, evidence collection, filing administrative adjudication requests and instituting infringement litigation • Lawsuits directed to patent re-examination and patent invalidation decisions • Trademark opposition, review/
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adjudication, dispute determination and administrative litigation Trademark infringement litigation, administrative investigation/resolution and related legal matters IP due diligence Patent and trademark customs recordal prosecution IP-related counselling, search and watch services
Tech trade services • Counselling on technical, legal and trade matters in tech trade transactions • Negotiation and conclusion of tech trade contracts Copyright and computer software services • Copyright and computer software registration prosecution • Negotiation and conclusion of copyright licence and assignment contracts • Copyright infringement litigation and related legal matters • Copyright customs recordal prosecution
Main address 22/F Great Eagle Centre 23 Harbour Road Wan Chai Hong Kong T +852 2828 4688 F +852 2827 1018 E patent@cpahkltd.com Professional contacts Yuhe Wu General manager E mail@cpahkltd.com Other offices Beijing, Munich, New York, Shanghai, Shenzhen, Tokyo
Anti-unfair competition and trade secret protection • Counselling on unfair competition and trade secret protection • Infringement litigation and related legal matters Miscellaneous legal services • Domain name registration • Registration of integrated circuit layout designs • Other IP-related legal matters
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China Science Patent & Trademark Agent Ltd www.csptal.com
China Science Patent & Trademark Agent Ltd (CSPTAL) is a full-service IP law firm. Established in 1984 and one of the first firms granted a special licence by the State Council to handle foreignrelated IP matters, CSPTAL has actively represented its foreign and domestic clients in their pursuits of IP rights and protection for over 35 years; it has been recognised as a premier IP firm by peers and clients all over the world. With more than 300 employees, including over 160 patent attorneys, CSPTAL has become one of the largest IP firms in China and features among the top five IP firms in terms of quality and quantity of work. CSPTAL is committed to providing high-quality services to meet its clients’ need and maximising the value of their IP assets in China. Technical expertise A sophisticated level of technical knowledge and practical experience enables us to imagine what stems out of an inventor’s ingenuity being used in as many relevant technologies as possible. This approach offers a significant benefit to our clients when it comes to drafting, prosecuting and litigating patents. Each and every one of the firm’s 160-plus professionals has a science or engineering degree, with 80% holding a master’s and 17% a PhD in a wide range of technical disciplines. More than one-third of our professionals have worked in R&D in universities, research institutes and industries before starting their patent law practice. Our technical expertise is further extended and strengthened through continued recruitment of new talents from China’s most prestigious universities. International experience CSPTAL’s attorneys have extensive experience working with overseas companies and organisations. A large portion of our clients are multinational companies from every part of the world, which we support to protect, exploit and litigate their IP rights in China. We also provide a full complement of patent and trademark agency services to associate firms in more than 30 jurisdictions. Many of our attorneys had studied, worked or received professional training in the United States, Japan, Europe and Canada, especially in law firms. We also have a deliberate policy
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“Long acclaimed for its patent prosecution prowess… Stellar contentious practice” of sending our attorneys on secondment to foreign law firms or clients’ sites abroad to keep abreast with developments in IP practice in important jurisdictions and to better understand clients’ needs. Full coverage on IP services Our IP services include a wide range of activities: procurement and enforcement of IP rights, licensing and litigation of these rights, IP portfolio management and corporate IP strategy consultancies. Our patent service covers all technical fields, including electronics and electrical engineering, mechanical engineering, chemistry and chemical engineering, pharmaceutical and biotechnology with regard to: • drafting and prosecution of patent applications; • re-examination, invalidation and appeals; • judicial and administrative litigations; • counselling on corporate IP assets management; • opinions on infringement and/or validity; • patent search and analysis; and • technology licensing and transfer. Our trademark service includes: • registration, renewal, assignment and licensing; • re-examination, cancellation, opposition, disputes and administrative litigations; and • infringement litigations and administrative enforcement. The firm’s services further include: • copyright litigations and registration of software copyright; • enforcement of IP rights with Customs; and • protection of domain names.
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Quality assurance The quality of our work is paramount to us and we therefore invest heavily in quality assurance systems. High-quality work is achieved by using not only a team of excellent attorneys, but also a well-established quality control mechanism. A firmwide quality committee is established to closely monitor daily work quality. The quality committee is made up of senior members of the firm. It sets forth the standards of service and organises mandatory training programmes to ensure that these standards are met.
Main address 3rd Floor Building D International Finance and Economics Centre No 87 West 3rd Ring North Road Haidian District Beijing 100089 China
Memberships We are active in most major IP organisations, including INTA, the International Association for the Protection of Intellectual Property, the AllChina Patent Agents Association and the China Intellectual Property Society. Our attorneys attend and often speak at international and domestic IP conferences and forums, thus contributing to shaping the Chinese IP legal system.
Professional contacts Wei Zhao Vice president E wei.zhao@csptal.com
T +86 10 6861 9696 F +86 10 8237 8400 E csptal@csptal.com
Jingwen Li Deputy manager E jingwen.li@csptal.com Other offices Hong Kong, Osaka, Paris, Shanghai, Tianjing, Tokyo, Washington DC, Wuhan Sample client list • 3M Corporation • Chinese Academy of Sciences • Ericsson AB • Panasonic Corporation • Samsung Electronics Co Ltd • Tsinghua University
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China Sinda Intellectual Property Ltd www.chinasinda.com
China Sinda Intellectual Property is a leading private IP firm in China. As one of the earliest, largest and most prominent Chinese IP firms, China Sinda Intellectual Property, in conjunction with sister law firm China Sinda Law Offices, provides all aspects of IP and related commercial law services to clients both at home and abroad. Since our foundation in 1993, we have not only witnessed, but also actively participated in the unprecedented development of the Chinese patent, trademark and IP legal systems. At the same time, we have earned the trust and support of clients and partners through the quality of our services and the dedication of our professionals. Headquartered in Beijing, we have established branch offices in Hong Kong, Washington DC, Tokyo, Munich and Singapore to meet the needs of our increasing client base. China Sinda has more than 300 staff, including over 200 patent, trademark and legal attorneys and other professionals. Our people include first-generation IP professionals, who have been working in the IP field since the enactment of patent and trademark laws in China in the 1980s, seasoned patent and trademark attorneys and attorneys at law, as well as an experienced and dedicated supporting staff. Many of our attorneys also have overseas educational or professional experience. More than 80% of our patent attorneys hold master or doctorate degrees and some are former patent examiners at the Chinese Patent Office. Our clients include multinational companies, small and medium-sized enterprises, research institutes, universities and individuals. Many of our clients have been working with us since the foundation and early years of our firm and most of our clients have been with us for 10 years or more. As a full-service IP firm, we have expertise in prosecution, litigation and consultation matters relating to patents, trademarks, copyright, unfair competition, anti-counterfeiting and other IP issues. Over the years, we have not only helped our clients build valuable patent, trademark and other IP portfolios in China and abroad, but also effectively protected, enforced and leveraged their IP rights in China and beyond through quality, timely and efficient services. We are one of the first Chinese law firms, of any kind, to adopt an electronic system and
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“Reliable and wellestablished Chinese patent firm… One of the key draws of the IP boutique is its multinational reach” software database to manage our case and client information. Over the years, we have developed a unique electronic system that not only suits the Chinese legal practice perfectly, but also has the ability to adapt to each individual client’s needs. Our goal is to be your first choice for IP services in China.
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Main address B11th Floor Focus Place 19 Financial Street Beijing 100033 China T +86 10 6657 6688 F +86 10 6657 8088 E sinda@chinasinda.com Professional contacts Ning Hu Manager E ning.hu@chinasinda.com Other offices Hong Kong, Munich, Singapore, Tokyo, Washington DC
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DEQI Intellectual Property Law Corporation www.deqi-iplc.com
DEQI is the successor of the Patent Service Centre of China’s Ministry of Industry and Information Technology, which was founded in 1984, and privatised and renamed DEQI in 2001. Now DEQI counts over 140 employees, including 85 attorneys, and processes over 4,000 cases per year. In addition to handling files for domestic clients, DEQI also provides services to many overseas clients, including multinational enterprises. DEQI boasts abundant experience in drafting applications in both Chinese and English. This enables DEQI to provide overseas clients with precise technological and legal interpretations, rather than mere literal translations. Sixty percent of DEQI’s attorneys have worked at the agency for over 10 years. The stability of the workforce means that the services provided by DEQI are of a consistently high standard. In 2013 DEQI was named one of Beijing’s top 10 patent agencies. In 2015, DEQI came second (among patent agencies whose total volume of granted patents exceeded 10,000) in China’s first publicly available ranking of patent agencies according to the number of patents granted. In 2018 DEQI was accredited as an AAAAA patent agency (the highest grade) by the Beijing Patent Attorneys Association. Our understanding As professional attorneys serving domestic clients, we cooperate with local inventors closely to provide the full range of legal services, which may bring to the fore other and new aspects of our inventors’ work to protect. We are proud that our domestic clients choose to rely on us. As Chinese attorneys serving international clients, we not only translate the languages, but also explain the specifics of Chinese laws and convey the thinking of Chinese examiners to help foreign companies and attorneys understand the local context and procedures accurately. To a large extent, we act as facilitators. Whatever the situation, we always emphasise the importance of understanding – understanding the technologies, the language, the reasoning of examiners, the instructions and intentions of the clients – to improve the efficiency and accuracy of our service and communication.
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“Clients from China and overseas… Dedicated search team that can help international associates understand the lay of the land in the Chinese patent environment” What people say about us • “DEQI is a very special agency among more than 30 Chinese agencies we work with. We recommend DEQI to our clients for its stable personnel, reasonable charges, politeness and zero error” (partner at a Japanese associate firm) • “DEQI stands out for its high-quality service and very professional responses” (partner at a European associate firm) • “We have worked with DEQI for many years and we’ve been happy with the quality of DEQI’s work and the responsiveness of the DEQI attorneys, and it would be my preference to continue to work with DEQI on a virtually exclusive basis” (partner at a US associate firm) • “We have cooperated with DEQI for many years, and DEQI is trustworthy and reliable” (partner at a Japanese associate firm) Searches and analyses Many patent applications are deployed in China, and a large proportion of the applications filed in China are exclusive to China and used either to enter the market or to allow the manufacture of a product using the protected technology. This, in addition to the distinctiveness of the Chinese language, makes it a real need for many clients to retain reliable Chinese agents to conduct searches and analyses of the Chinese patent applications. DEQI’s search team is made up of 17 lawyers, patent attorneys and professionals who are
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experienced in conducting technical searches and formulating search strategies and analyses. DEQI also has technical specialists who provide technical support for searches and analyses. The team conducts the following types of search and analysis: • novelty search; • invalidity search; • free-to-operate search; • project search; • granted patent search; • legal status search; • patent family search; • tracking search; and • infringement analysis.
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Main address 7/F Xueyuan International Tower No 1 Zhichun Road Haidian District Beijing 100083 China T +86 10 8233 9088 F +86 10 8233 1881 E mail@deqi-iplc.com Professional contacts Wei Zhu Director of international department E zhuwei@deqi-iplc.com
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Ellis Terry www.ellisterry.com
Ellis Terry is an IP firm of patent attorneys and lawyers. We are based in two offices in New Zealand, and operate across New Zealand and Australia. We deliver results We pride ourselves on exceeding clients’ expectations and making clients’ lives easier. When clients and agents instruct Ellis Terry, they can expect to deal with attorneys who understand their technology and speak their language. Unlike many firms in New Zealand and Australia, we are entirely privately owned and operated by the professionals serving clients. This lets us answer directly to our clients, not to investors and corporate shareholders. Clients and agents frequently remark on how clear and straightforward our advice is. We do not produce academic treatises and meditations on fine legal points: we produce pragmatic advice to help our clients navigate intellectual property. Hard cases Ellis Terry takes on the hard cases – the ones that others cannot. For high-value patents and designs, and in any contentious matters in the engineering arts, clients are served by a team of professionals who deeply understand the technology. We are not afraid to pursue matters through tribunals and courts to achieve the results that our clients need. We have acted for clients on a number of cases where the resulting precedent caused the Intellectual Property Office of New Zealand and IP Australia to review their practice. As a boutique firm, we can flexibly accommodate the needs of clients and agents of all sizes and requirements. • For our larger corporates and blue-chip clients around the world, we interface with their inhouse docketing systems. • For our smaller clients, we offer flexible levels of service to accommodate their needs and budgets. • For our agents, we can offer expertise on local matters without telling them what they already know. Transactions Ellis Terry regularly handles due diligence and commercial agreements for mergers and acquisitions within New Zealand. We have particular
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“Its expertise in the software, electrical and mechanical engineering space is hard to match… Peers hold Ellis Terry’s patent practice in high praise” focus on assisting New Zealand companies in moving abroad through acquisition or expansion. We also have a strong practice in licence negotiations through New Zealand and Australia and have assisted clients in monetising their intellectual property. All the principals at the firm are dually qualified as lawyers and patent attorneys. This enables us to advise across the full lifecycle of a patent application: starting a simple patent application to broad portfolio building, through to licensing and enforcement. Being a one-stop shop for patents simplifies life for clients. Contentious matters Ellis Terry has a robust contentious practice. For clients that wish to enforce their IP rights, or are being targeted for enforcement, we offer advice to help match clients’ risk profiles and preferred outcomes – from quickly and quietly disposing of issues through to litigation as an essential competitive tool. With many of our clients in our software practice having been targeted by patent trolls, we have significant experience in disposing of patent trolls and establishing systems to mitigate future risk. Technology As part of our commitment to exceeding expectations, we have developed multiple bespoke systems to validate data and receive near real-time communications from the Intellectual Property Office of New Zealand and IP Australia.
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Trademarks For those clients that also require trademark advice, we have a well-regarded trademark team. Our patent and trademark teams closely work together to handle any IP matter that our clients and agents require.
Main address 1 Willeston Street Level 11 Wellington 6011 New Zealand T +64 4 498 0833 F +64 4 496 5949 E mail@ellisterry.com Professional contacts Mathew Campbell Director E mathew.campbell@ellisterry.com Godfrey Livingstone Director E godfrey.livingstone@ellisterry.com Blayne Peacock Director E blayne.peacock@ellisterry.com Other offices Auckland
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FirstLaw PC www.firstlaw.co.kr
FirstLaw PC is a leading Korean law firm specialising in all aspects of intellectual property – including patents, utility models, designs, trademarks, domain names, trade secrets, licensing and IP portfolio development and management. Our uncompromising commitment to providing the highest-quality services in a cost-effective manner is reflected in the recognition we receive from our clients, peers and international publications. Established in 1988, FirstLaw has become synonymous with excellence in securing and enforcing IP and related rights in Korea. Our firm is regularly called upon to handle major legal projects and provide expert services in highly specialised areas. Around 80% of our clients are multinational foreign companies and the remaining 20% are domestic clients, including government-sponsored research organisations. Our firm has always strived to offer personalised services befitting each of our clients and has forged strong attorney-client relationships over several decades. At present, FirstLaw has 54 IP professionals, including patent and trademark attorneys and trial lawyers, supported by about 120 engineers and staff members. To provide our clients with solutions from both local and international perspectives, FirstLaw’s professionals stay attuned to global IP trends by constantly studying recent developments in intellectual property worldwide. Our professionals include US attorneys, US patent agents, one Japanese patent attorney and one Chinese patent attorney, as well as attorneys who have completed degrees and secondments in the United States, Germany, Netherlands, France, China and Japan. FirstLaw is organised into four practice groups, and a dedicated litigation group consisting of litigators with technical backgrounds. Chemical practice group The chemical practice group provides various services associated with patent filing, prosecution, trial, litigation, licensing and counselling in chemistry-related areas encompassing organic/ inorganic chemistry, chemical engineering, pharmaceuticals, biotechnology, textiles, agrochemicals, food engineering, new materials and semiconductor manufacturing processes and materials. Its competent professionals efficiently provide outstanding legal services by virtue of
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“Stellar contentious and non-contentious patent services to a largely multinational clientele… Extensive cross-industry expertise” accumulated technical knowledge, information pooling and extensive practice experience. The chemical practice group has specialised teams in charge of US, European, Japanese, Chinese and domestic clients whose appreciation is evident in the many longstanding relationships we enjoy with our clients. Electronics/IT practice group FirstLaw’s electronics/IT practice group focuses on using its diverse experience and in-depth knowledge to enforce and protect clients’ cutting-edge technologies. Members of the group possess expertise and a broad range of experience that enable them to adapt to the rapid technological development in fields including cryptocurrency, the Internet of Things, network security, artificial intelligence, semiconductor devices, display systems, wired/ wireless communications, computer hardware and software, electronic control, electronic components and nanotechnologies. Domestic and international clients, including the world’s largest communication and electronics companies from Japan, China, the United States and Europe, have continued to show support and confidence for the services provided by the electronics/IT group. Mechanical practice group FirstLaw’s mechanical practice group meets the needs of clients in a wide variety of technology areas, embracing general mechanics, electrical vehicles, hydrogen fuel cell vehicles, automotive, aeronautical instruments, mechatronics, control devices, measurement instruments, medical
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equipment and nuclear power generators. The group is proud to have patent attorneys and specialists with many years of practical experience handling patent prosecutions, trials and litigations after earning advanced technical degrees at the nation’s most respected universities and acquiring in-depth field experience in highly reputed companies. Members of the group provide top-quality service and consequently enjoy the continued support and confidence of diverse clients. Trademark/design practice group The trademark/design practice group of FirstLaw provides various trademark and design-related services ranging from trademark and design selection, application, registration, opposition and litigation to counselling regarding domain names and dispute resolution. Members of the group have gained the undivided confidence of the biggest names in apparel, cosmetics, pharmaceuticals, IT, food and beverage, and entertainment, with services often commencing from the early business stages, through advice on advertising and brand management strategies, and leading to trademark and design registration and licensing strategy implementation.
Main address Dongwon F&B Bldg 60 Mabang-Ro Seocho-Gu Seoul 06775 South Korea T +82 2 589 0010 F +82 2 589 0002 E firstlaw@firstlaw.co.kr Professional contacts C Leon Kim President E cleonkim@firstlaw.co.kr Won Joon Kim Co-managing partner E wjkim@firstlaw.co.kr
Litigation group FirstLaw’s litigation group is proud to provide high-quality, cost-effective legal services that are customised for each client, based on its cooperation with the FirstLaw patent groups. Clients benefit from the accumulated knowledge and experience gained by our attorneys while successfully representing numerous multinational clients across a wide range of industries and technologies, as well as the added expertise and fluency of our patent groups, which enables us to truly tailor our advocacy to each client.
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Foridom IP Law Firm www.foridom.com
Foridom is a full-service IP law firm based in Shanghai with more than 15 years of experience in the field of intellectual property. The firm’s six partners lead teams that include attorneys at law,30 professional trademark and copyright agents and 28 patent agents, whose practices focus on trademarks, patents, copyright, business secrets and unfair competition. The Foridom patent team covers numerous industry sectors, from artificial intelligence, computer and software, communication engineering, electrical engineering, mechanical engineering and energy to chemicals, biologicals and pharmaceuticals. The firm also relies on a solid network of IP law firms to provide worldwide services to its clients. Foridom’s high-quality services have been recognised through numerous awards, including the following: • WTR 1000 Recommended Individual 2020 prosecution and strategy to Wang Kuiyu; • WTR 1000 Recommended Individual 2020 enforcement and litigation to Sophia Chen; • IAM 1000 2020; • Top Ten Excellent Team of China’s Intellectual Property Litigation to Sophia Chen and her team; • Top Ten Excellent Attorney of China’s Copyright Litigation to Sophia Chen; • Excellent Trademark Service Agency in China for nine consecutive years (China Trademark Association); • Trademark Golden Agency Service Individual (China Trademark Association) to Wang Kuiyu, Wang Lufeng and Gan Zhangguai; • Credit unit in 2016 and ranked in the top tier for eastern China (MIP); • Top Ten Excellent Trademark Service Agency for two consecutive years; • Top Ten Excellent Trademark Agency of Shanghai 2020; • Top Ten Excellent Trademark Recommended Individual to Wang Kuiyu 2020; • Excellent Intellectual Property Staff 2019-2020; • Intellectual Property International Excellent Service Provider 2019-2020; • Star Agency (All-China Patent Attorneys Association); • Top Ten Excellent Trademark Agency of Shanghai 2020;
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“Professional, earnest, diligent and responsible work ethic is deeply impressive… Track record of successful cases for well-known customers” • Top Ten Excellent Trademark Recommended Individual of Shanghai to Wang Kuiyu 2020; and • MIP’s IP Star to Wang Kuiyu and Sophia Chen. The firm has handled numerous landmark cases, some of which were recognised by the following distinctions: • the China Trademark Association’s National Excellent Trademark Case of 2019-2020 (attorneys: Sophia Chen and Li Xiaoyan); • the Shanghai High People’s Court IP Model Cases (attorney: Sophia Chen); and • Top Ten Excellent Trademark Cases in Shanghai 2020 (attorney: Sophia Chen and Li Xiaoyan). Foridom is a member of INTA, a council member of the China Trademark Association and an executive council member of the Shanghai Trademark Association. The firm maintains excellent relationships with international partners, which enables it to offer comprehensive patent and trademark strategies and solutions to its clients. Practice areas Litigation – trademark administrative litigation, patent/trademark/copyright infringement litigation, business secrets and unfair competition. The firm also boasts a high success rate in trademark administrative proceedings. Patents – pre-filing/filing and prosecution of national patents, Patent Cooperation Treaty (PCT) applications, national phase openings for PCT and patent operation.
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The Foridom patent team covers numerous industry sectors, from artificial intelligence, computer and software, communication engineering, electrical engineering, mechanical engineering and energy to chemicals, biologicals and pharmaceuticals. Trademarks – trademark searches, filings, challenges and response, priority claims, customs registration, monitoring trademark applications and infringement, trademark operation and international applications via the Madrid System. Our trademark expertise is well recognised, with some of our partners being invited to participate in the legislative discussions by the Chinese government. Several members of the trademark team also frequently contribute to specialist publications, such as China IP Newspaper, China Trademark and Shanghai IP. Copyright – copyright registration, licensing, trading, testing, right protection and other comprehensive copyright strategies.
Main address 1st Floor B Building NO 410 Guiping Road Xuhui District Shanghai 200233 China T +86 21 6487 8081 F +86 21 6487 8023 E mail@foridom.com Professional contacts Sophia Chen Senior partner E mail@foridom.com Wiky Wang Senior partner E mail@foridom.com Other offices Taiyuan Sample client list • Alibaba Group Holding Limited • NU SKIN CHINA • Xiaomi Inc
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Formosa Transnational www.taiwanlaw.com
Formosa Transnational (FT) is one of the largest firms in Taiwan. Ever since it was established in 1974, FT has always had a selective approach to recruiting staff and attorneys: not only does FT look for outstanding individuals who are also team players, it also expects attorneys to specialise in key legal areas – be it international arbitration, civil litigation, criminal defence, investment, banking and finance, labour and employment, maritime and insurance, patents, trademarks, copyright, trade secrets, data protection, competition, digital platform or entertainment. FT has thus assembled a team of skilled and experienced attorneys and experts who deliver world-class dispute resolution and transactional services to assist clients in dealing with global market competition and a knowledge-based economy. At FT, we are concerned with the needs of each and every client. They are all considered equally important. Patent practice FT takes a leading role in Taiwan’s IP community. FT’s technology and law department consists of experienced litigators and patent engineers knowledgeable in various areas of law and technology who have multilingual capabilities and multi-jurisdictional experience. Specifically, we have Japanese-speaking attorneys and engineers and are capable of handling cases in either Japanese or English, or both. Since the establishment of Taiwan’s specialised Intellectual Property Court in 2008, our team has been widely recognised as one of the most successful teams in patent litigation. Our team’s recent victories include a case where both parties were Japanese companies competing for their respective business developments in Taiwan. We helped a client in the industry of semiconductor equipment manufacturing to achieve a reasonable solution in a high-profile patent infringement dispute. We also assisted our client in bringing an IP law issue before Taiwan’s Constitutional Court, which granted a decision addressing the organisation and operation of Taiwan’s Intellectual Property Court. Our clients are active in almost every industrial sector: semiconductors, integrated circuit design, packaging, testing, computer software and accessories, the Internet, e-commerce,
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“Strengths across the contentious/noncontentious divide, capturing the attention of domestic and foreign corporations… Stays abreast of new technology and the latest patent hotspots” telecommunications, wireless telecommunications, mobile phones, cloud computing, consumer electronics, mechanical and electrical engineering, photonics, energy, optoelectronics, plasma, business methods, industrial design, pharmaceuticals, chemical companies, biochemistry and medical devices. We believe, therefore, that FT is capable of assisting clients in matters that involve electronic technology. We have a group of experienced trial lawyers and patent engineers closely working together in patent-related cases, which is the key to success for our patent clients. We are experienced in working with law firms in many different countries and in helping clients enforce their patents in many different jurisdictions, such as the United States, China, Korea, Europe and Japan. As such, when assisting clients with the enforcement of their Taiwanese patents, we provide them with a comprehensive plan and analysis that takes into account issues regarding the enforcement of their foreign patents. In addition to our IP dispute resolution practice, we handle a large volume of patent matters including filing and prosecution. We assist clients with the preparation and filing of patent applications in both Taiwan and China. Because Taiwan is not a PCT member, it is of great importance to consider and implement a comprehensive filing strategy in advance.
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Trademark practice We represent many companies and individuals in obtaining, maintaining and enforcing their trademark rights. We work closely with Taiwan IP police and customs officers to help clients to enforce and protect their Taiwanese trademarks. In addition, we advise on and handle all aspects of trademark work, including applications, prosecutions and administrative litigation to protect our clients’ trademark rights. We work with many global IP firms, and assist clients from various jurisdictions in maintaining and managing their trademark rights portfolios. Trade secrets practice FT helped a client obtain from the Intellectual Property Court a favourable judgment in a trade secret misappropriation case, where the court awarded our client enhanced damages of approximately $50.7 million. This high-profile ruling marked a new approach to Taiwan trade secrets law. Previously, Taiwanese companies had been reluctant to protect their know-how with trade secrets. The outcome of this case, however, will demonstrate that a trade secrets holder may enforce its trade secrets and obtain proper remedies. This case is also a good example of this firm’s leading role in Taiwan’s IP community.
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Main address 13th Floor No 136 Jen-Ai Road Section 3 Taipei 106 Taiwan T +886 2 2755 7366 F +886 2 2755 6486 E ftlaw@taiwanlaw.com Professional contacts Josephine Shih Business development specialist E josephine.shih@taiwanlaw.com
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Han Kun Law Offices www.hankunlaw.com
Han Kun is a leader and trendsetter in China’s burgeoning IP legal space. With over 100 seasoned IP lawyers across offices in Beijing, Shanghai, Shenzhen and Hong Kong, Han Kun provides the full range of IP services for both contentious and non-contentious matters in China. Han Kun represents the world’s leading names in the tech industry, helping them navigate China’s most complex IP issues in all venues, including the Supreme People’s Court, the IP courts and tribunals at different levels, and the China National Intellectual Property Administration (CNIPA). Practice areas Han Kun has a full-service IP offering for both contentious and non-contentious IP matters, covering prosecution, litigation and enforcement strategies for patents, trademarks and industrial designs. Han Kun is also in high demand for its experience working with international law firms on matters such as global IP-antitrust actions, unfair competition disputes, cross-border data protection and transactional IP matters. In particular, Han Kun represents various licensees against all major SEP licensors (Qualcomm, Huawei, Ericsson, Nokia, IDC) in the global information, communication and technology space. Professional team Han Kun’s IP team is diverse, multi-dimensional, collaborative and complementary. Team members include holders of PhDs in engineering and other science, technology, engineering and mathematics fields, holders of JDs from the United States, former IP judges and former patent examiners. Many team members have worked outside of China in legal and technical capacities, all team members are fluent in English and some are also fluent in German. Technical backgrounds cover a diverse array of disciplines, including electrical engineering, telecommunications, computer science, machinery, chemicals, pharmaceuticals, and biotechnology. They combine their collective knowledge to solve complex legal and technical problems and provide practical advice. IP litigation Han Kun represents the world’s leading names in their most important contentious matters in China.
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“Clients “feel at ease” when they know Han Kun Law Offices is looking after their most important IP rights… Besides China, they have practical experience in the United States, Europe, Japan and Korea” Our pioneer legal theories and aggressive litigation strategies have repeatedly achieved favourable outcomes for clients. Han Kun focuses on handling the most complex and challenging disputes, including adverse court decisions, cross-border and international litigation, and anti-trust-related preliminary injunctions. Han Kun also provides proactive solutions regarding repeat infringement and evidence collection, which are considered the most difficult issues in the current IP litigation space in China. IP prosecution Han Kun represents the world’s leading names in their IP prosecution matters in China. We work closely with clients to understand their business objectives (both immediate and long-term) and provide tailored prosecution strategies to achieve those objectives. Han Kun assists clients with every step of the prosecution process, including maintaining constant communications with the CNIPA and the National Copyright Administration of the People’s Republic of China. Our careful and tailored drafting results in favourable outcomes and maximises protection for our clients. Han Kun’s prosecution services do not end with the grant of a patent, copyright or trademark
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right. Rather, we are keenly focused on the stability and enforceability of the IP right. We follow the lives of IP rights and track the changing judicial and regulatory terrain as it relates to intellectual property, in order to ensure the security of clients’ intellectual property moving forward. Han Kun’s patent prosecution coverage extends to the entire spectrum of patentable technology, including computer-related patents, especially those involving artificial intelligence and business models. Han Kun’s trademark prosecution coverage includes traditional brand names, distinctive sounds or shapes, and everything in between.
Transactional IP matters Han Kun’s IP team complements the firm’s wellestablished transactional practice, in particular in the technology, media and telecom space. Han Kun’s IP team works hand-in-hand with Han Kun’s transactional team, assisting international and Chinese clients with matters such as IP due diligence, the preparation and negotiation of IP agreements (eg, licensing and technology agreements), transaction structuring and data protection. Our IP due diligence encompasses the full spectrum of needs, including patent suitability analyses and freedom-to-operate analyses.
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Main address 9th Floor Office Tower C1 Oriental Plaza 1 East Chang An Avenue Beijing 100738 China T +86 10 8525 5500 F +86 10 8525 5511 E beijing@hankunlaw.com Professional contacts Yan Wang Partner E yan.wang@hankunlaw.com Lili Wu Partner E lili.wu@hankunlaw.com Other offices Hong Kong, Shanghai, Shenzhen
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Henry Goh & Co Sdn Bhd www.henrygoh.com
Founded in 1977, Henry Goh & Co is a pioneer, trailblazer and market leader in IP protection in Malaysia. Our expertise spans the complete range of IP solutions with regard to patent, trademark, industrial design and copyright matters in various jurisdictions, especially Malaysia, Singapore and Brunei. Our multilingual team of professionals with diverse backgrounds in law, engineering, biotechnology, information technology, sciences and other fields has successfully steered a wide spectrum of clients, from small-medium businesses to multinationals, through various complex IP issues. The potent combination of legal, technical and business experience coupled with in-depth knowledge of relevant local, regional and international laws governing IP practice provides our team with a unique platform to advise clients from inception through to the commercialisation of their IP assets. Our IP professionals have also received global recognition as IP powerhouses and thought leaders in their respective areas of speciality. Patents Although the world’s patent systems were designed for the industrial age, they have evolved and the patenting of inventions remains just as relevant today. Effective drafting, prosecution and exploitation of patents call for a sound aptitude for technology, in-depth knowledge of the applicable law and practice, and excellent communication skills. Henry Goh’s registered patent agents have the necessary technical, legal and linguistic prowess to secure and enhance the business value of patent protection for inventions in many diverse technologies. Their local knowledge, expertise and resources make the firm the natural choice for patent prosecution in Malaysia and Singapore. Trademarks In today’s competitive markets, standing out from the crowd has never been more important. A trademark or service mark is the key link between providers of goods or services and their customers. Henry Goh dedicates a large specialist team to handling delicate matters arising in the area of trademark and service mark registration. Its services include pre-filing registrability advice,
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“Established IP specialists who are very good in what they do… Drafts and prosecutes patents for a predominantly foreign clientele” filing and prosecution, renewals, maintenance and advice on exploitation and enforcement. In addition, its specialist team is fully capable of undertaking high-end prosecution work, including hearings and oppositions before the registrar. Its expertise and great rapport with the local trademark office make it the ideal firm for trademark filings in Malaysia and Singapore. Henry Goh can also file trademark and service mark applications in any country worldwide through its network of foreign associates, as well as international applications via the Madrid Protocol. Industrial designs Industrial designs have acquired much greater significance in recent times. As consumers increasingly take the technical functions of goods for granted, design often becomes the decisive factor in a purchase. Henry Goh routinely assists clients in securing industrial design registrations both at home and abroad. Such a practice demands a sound understanding of both international and local laws covering industrial designs. The firm can assist clients with the necessary actions in the event that their registered industrial designs are infringed by third parties. Copyright In the copyright sphere, Henry Goh’s services extend to filing notifications and advisory work. Malaysia, like many other Berne Convention countries, does not require formal registration of copyright. Nonetheless, for more tangible protection, clients are advised to take advantage of
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the voluntary notification system that has been available in Malaysia since June 2012. Clients can assert ownership and deposit their copyrighted works with MyIPO in exchange for a certificate issued as confirmation. Such prima facie evidence of a copyright claim strengthens the owner’s position in the event of a dispute. The firm is experienced in handling copyright issues in all major fields of creative endeavour. In addition to the conventional IP services, Henry Goh offers other IP-related services, including pre-litigation support, product registration and plant variety protection. With these value-added services, the firm provides a comprehensive one-stop IP centre for business and commercial needs. Brunei Darussalam The Brunei Patents Order 2011 came into force on 1 January 2012. The order establishes an independent patent system for the receipt, processing and grant of patents. Brunei Darussalam also joined the Patent Cooperation Treaty on 24 July 2012. With effect from June 2013, the Brunei Intellectual Property Office (BruIPO) now receives and processes all applications for patents, trademarks and industrial designs. Henry Goh can directly handle the filing and prosecution of patent, trademark and industrial design applications before BruIPO.
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Main address VO2-10-06 Lingkaran SV Sunway Velocity Jalan Peel Kuala Lumpur 55100 Malaysia T +60 3 9771 8688 F +60 3 9771 8788 E patent@henrygoh.com Professional contacts Yen Yen Oon Head of patent and industrial design E yen@henrygoh.com Jason Cheah Design manager E jason@henrygoh.com Dave A Wyatt Executive director E dave@henrygoh.com Other offices Singapore
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IP March www.ipmarch.cn
IP March is a mid-size boutique firm that offers prosecution, litigation and consulting services related to IP law to domestic and overseas clients, which range from start-up companies to prestigious multinationals, many of them leaders in their respective industries. Headquartered in Beijing, the firm employs high-calibre patent attorneys, trademark attorneys and attorneys at law with rich academic, industrial and professional experience. Many of the firm’s professionals have over 10 years of experience and are widely recognised as leading practitioners in IP law. Specifically, IP March currently has 11 partners, 22 patent attorneys, six patent engineers, eight trademark attorneys and five attorneys at law. All of IP March’s attorneys at law are dual qualified as patent attorneys, with technical backgrounds covering mechanical, electronics and biotechnology. In addition to mainland China, IP March’s services also cover the Greater China Region, including Hong Kong, Macau and Taiwan, through local agents. Services Patents • Search, drafting, prosecution and reexamination • Invalidation and administrative litigation • Infringement litigation and administrative enforcement • Assignment and annuities • Technology transfer Trademarks • International and domestic registration, renewal, assignment and licensing • Re-examination, cancellation, opposition, dispute and administrative litigation • Anti-counterfeiting, infringement litigation and administrative enforcement Copyright • Registration and protection Domain names • Registration, renewal, transfer and dispute resolution
“Strict quality control, good foreign language ability and smooth communication… Leading auto manufacturers from around the world find that the firm’s patent services meet their exacting standards” Integrated circuit layout designs • Registration of layout design of integrated circuits Other • Consultation and litigation related to trade secrets, trade dress and unfair competition Technical areas IP March’s patent attorneys work in most technical areas, including agrochemicals, mechanics, biology, pharmaceutics, medical devices, chemistry, chemical engineering, materials, metallurgy, electronics, communications, semiconductors, computer software and hardware, artificial intelligence, fintech and quantum computing. Languages IP March can provide services in multiple languages, including Chinese, English, Japanese, Korean, German and French. In particular, a good portion of IP March’s daily work is patent drafting in either Chinese or English.
Customs protection Recordation and enforcement of rights at Customs
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Why choose IP March • Smooth communication – In addition to in-depth understanding of Chinese laws, IP March attorneys have superior languages skills and knowledge of foreign cultures and practices, which enables them to bridge the cultural gap, precisely understand their clients’ intentions and advise them in a way that the clients can clearly understand. Smooth communication clearly makes IP March stand out from other Chinese IP firms. • Focus on professional advice – IP March focuses on value-added services instead of acting as a mailstop. Providing highquality professional advice is IP March’s core competitive advantage. In addition, IP March takes a proactive approach to advising clients so as to avoid unnecessary costs. • Responsiveness, care and personal attention – IP March’s clients enjoy extremely responsive service. IP March attorneys apply the utmost care and personal attention to their work. Having many attorneys who once worked in-house in the industry, IP March thinks from its clients’ standpoint and understands their needs. Dedicated account managers coordinate the internal resources at the firm. • Most stringent quality control – Quality work is IP March’s paramount consideration. IP March applies the most stringent quality control measures known in the profession. Each and every piece of work is reviewed by a partner of the firm. IP March’s top-notch quality and service are recognised by various awards bestowed by clients.
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Main address 1506 Satellite Building 63 Zhichun Rd Haidian District Beijing 100190 China T +86 10 6296 6619 F +86 10 6298 3448 E mail@ipmarch.cn Professional contacts Stephen Yang Managing partner E yyang@ipmarch.cn Nina Li Partner E nli@ipmarch.cn
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ITOH International Patent Office www.itohpat.co.jp
ITOH International Patent Office, established in 1967, specialises in all IP matters. Located in the centre of Tokyo, ITOH comprises 230 staff members, including 61 Japanese patent attorneys (four of whom have passed the US Patent Bar exam), an attorney at law (of counsel), four US patent attorneys, three Chinese patent attorneys, two Korean patent attorneys, 40 patent engineers and 130 administrative staff members. In recent years, as Japan has been concentrating on strengthening IP rights to increase the country’s prosperity and as the world’s IP systems have become more harmonised, the global protection of intellectual property has become much more important. In the midst of this change, all members of ITOH continue to strive to offer high-quality and prompt services that completely satisfy our international clients’ needs. In 2020, as well as in previous years, ITOH was ranked as one of the top three IP firms in terms of number of Japanese patent filings. Areas of specialism With respect to patents, ITOH has specialised knowledge in all technical fields, with a focus on artificial intelligence (including machine learning), the Internet of Things, quantum computing, information processing, image processing, fintech, materials-informatics, telecommunications (5G, beyond 5G), digital healthcare, biotechnology, automatic control systems, semiconductors, computers, medical, materials, materialinformatics, chemistry and others. ITOH also has great expertise in designs and trademarks. One team at the firm handles design issues exclusively, while another handles trademark cases exclusively. International experience Since its inception, ITOH has handled not only domestic applications, but also numerous applications filed by Japan-based clients in other countries across the globe. ITOH’s policy is to have all foreign specifications in English, Chinese and Korean prepared by its in-house patent attorneys and technical specialists, who have extensive knowledge and experience of international patent practices. ITOH can accurately translate English, Chinese and Korean language specifications into Japanese for filing and prosecuting patent applications in order to secure enforceable patent rights in Japan.
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“Full-service offering covering cutting-edge technologies… Always on standby to meet the IP needs of clients” ITOH’s patent attorneys and technical specialists are fully versed and knowledgeable in Japanese patent prosecution, enforcement procedures and practices. With a team of experts who can handle all technical fields, are always up to date on the latest developments in laws and regulations and can draw on knowledge gained through over 50 years of experience, ITOH is equipped to draft and prosecute effective patent applications in order to ensure enforceable patent rights in Japan. As a rule, ITOH conducts interviews with inventors in order to gain a full understanding of their inventions and accurately determine the objectives of clients. Eight of ITOH’s patent attorneys have previously worked as examiners at the Japanese Patent Office (JPO), giving great insight into the JPO’s practice. In addition, ITOH strategically conducts interviews with JPO examiners so as to avoid file wrapper estoppel issues. Furthermore, 10 of ITOH’s patent attorneys have previously worked in the IP departments of leading Japanese companies such as Sumitomo Heavy Industries, Toshiba, Fujitsu, Hitachi, Ebara and others. This in turn gives ITOH the edge in terms of understanding the IP strategies of companies. Using their extensive experience and thorough legal and technical knowledge gained over the years, the practitioners at ITOH handle not only patent applications, but also trials before the JPO, lawsuits before the IP High Court against JPO appeal decisions, infringement litigation and expert opinions.
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Main address Marunouchi MY PLAZA 16th Floor Marunouchi 2-1-1 Chiyoda-ku Tokyo 100-0005 Japan T +81 3 5223 6011 F +81 3 5223 7123 E itohpat@itohpat.co.jp Professional contacts Tad Itoh President E itohpat@itohpat.co.jp Other offices Washington DC
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Jiaquan IP Law Firm www.jiaquanip.com
Jiaquan IP Law is one of China’s most renowned IP law firms. Founded in 1988, our firm has gradually developed from a patent legal service provider into a full-service IP law firm specialising in the broader fields of IP filing, prosecution and transaction. Our many years of practice have given us an in-depth understanding of the enforceability of patent rights, while our rich experience in patent enforcement guides us through patent claim drafting. Over 30 years, Jiaquan has expanded to a total of 11 offices across China, including in Beijing, Hunan and Guangdong, with our head office in Guangzhou and a team of over 800 professionals covering all technical backgrounds. We have worked with business partners in over 100 countries in the world. We tailor specialised IP strategies to suit our clients’ unique needs and have a solid track record of thousands of successful cases. Patent drafting and prosecution Patent drafting and prosecution is one of our key practice areas. We file over 30,000 patent applications (including invention, utility model and design) every year. Our team of over 420 patent attorneys and patent engineers includes 14 former patent examiners and 15 professionals qualified as both patent attorneys and attorneys at law. Many of our attorneys hold advanced degrees in their technical fields and/or have worked in the industry. The technologies at issue span nearly every industry sector, including electronics, mechanicals, chemicals, pharmaceuticals, medical devices, biotechnology, automation, computer software and information technology. Besides, we set up a quality control board headed by two lead attorneys (former patent examiners) to supervise drafting of important patent specifications. Patent invalidation and litigation Jiaquan is listed as one of the 2019 Top 10 IP Agents for Civil Patent Litigations in China. Our litigation team consists of 30 attorneys at law, one nominated IP infringement judgment expert and one former judge. We handle nearly 300 patent litigations and invalidations every year. Our team has comprehensive experience in invalidation proceedings before the China National Intellectual Property Administration and assists our clients all the way from analysis of target
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“A top choice for both domestic and cross-border work… Knowledgeable, diligent and strives to provide clients with the best possible services” patents to invalidation proceedings. We frequently represent clients before different level of courts or administrative authorities, assisting clients with the effective enforcement of their IP rights or in defending them against third-party claims. Our attorneys have extensive experience representing patentees and defending against patent infringement claims in patent litigation cases. Patent searches Our patent search team consists of three former patent examiners and eight experienced patent attorneys. Our team has technically prevailed in a national patent searching competition in 2018. We provide almost all kinds of patent search and analysis, including patentability, infringement/non infringement, freedom to operate, landscape and validity. We can also provide flexible workflows to meet our clients’ expectation – for example, mid-term report, teleconference before a formal report is issued, brief conclusion instead of a formal report. Our attorneys speak several languages and have extensive knowledge of IP rights prosecution and infringement case law, which enables them to provide comprehensive analysis to different clients in different sectors. In early 2019 we established a law firm in Guangzhou to cover other legal services besides intellectual property. This means that Jiaquan is now a full-service law firm covering the entire legal needs of its clients.
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Main address Suite 910 Tower A Winner Plaza 100 Huangpu Avenue West Guangzhou 510627 China T +86 20 3803 3421 F +86 20 3806 1201 E mail@jiaquanip.com Professional contacts Jacky Yingqiang Tan Vice president E mail@jiaquanip.com Jady Yuchan Xu Manager E xuyuchan@jiaquanip.com Mango Shufang Peng Manager E pengshufang@jiaquanip.com Other offices Beijing, Changsha, Dongguan, Foshan, Jiangmen, Shenzhen, Shunde, Zhaoqing, Zhongshan, Zhuhai Sample client list • Decathlon • Denso • Disney • GM • Johnson & Johnson • Kyocera • Midea • Mindray • Raytheon • Tencent • Zhongsheng Pharma • ZTE
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KBK & Associates www.kbkpat.com
KBK & Associates is a full-service IP law firm that employs more than 150 IP professionals and technical specialists with extensive experience in all aspect of intellectual property. KBK & Associates is widely acknowledged as a leading IP law firm in Korea, as evidenced by its status as number one Patent Cooperation Treaty (PCT) application filer in Korea for many years. Firm history KBK & Associates was established in 1981 as Kims International. The name was changed in 2004 to KBK & Associates to reflect the firm’s widened leadership. A subsidiary company, Patrea, was created in 2005 to offer drawings and annuity services. KBK is continuously growing; the number of partners (now 15) has increased steadily over the years in order to strengthen the leadership in each practice area. In 2020 KBK became a professional corporation to increase management transparency and improve services to clients. Unique features KBK has been the top PCT filer in Korea for 12 years, which shows that KBK is the most trusted Korean patent firm. In addition to its PCT expertise, KBK also has extensive experience handling foreign filings worldwide. This makes KBK the firm of choice for foreign clients seeking to obtain patent rights in Korea. The firm’s close relationship with the Korean Intellectual Property Office (KIPO) and the Intellectual Property Trial and Appeal Board (IPTAB) also places the firm in a position to offer higher probability rate of success in securing rights than other Korean patent firms. The firm has developed specialised practice areas, each dealing with a specific technical sector. This enables the firm to meet client’s needs very quickly and cost-effectively. The firm has also developed a successful litigation practice, as well as a patent monetisation practice. For example, KBK won the Supreme Court case of LG Uplus v Seoho Telecom in 2019, which put an end to the longest running dispute in Korean patent history. The firm also played a key role in helping its client become the owner of the most valuable standard-essential patents (SEPs)
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“Professional team for each specialty area… Consistently ranked as the top Patent Cooperation Treaty filer in South Korea” in the field of mobile communication and digital TV technology. In order to streamline both its patent prosecution and licensing services, KBK has developed its own IT system, and continues to work on developing tools to enhance its capability. International outlook In order to support the firm’s international practice, its professionals are routinely sent abroad to learn different practices and widen the firm’s global network. The firm also operates its own training system to educate young attorneys in specific areas. A large number of the firm’s professionals have dual qualifications as US attorneys and Korean patent attorneys. The firm also employs a Japanese national licensed to practise in Japan. A large number of KBK professionals are native Chinese speakers, which fosters seamless communication with Chinese clients. These features all lead to clear and smooth communication with our foreign clients. Areas of specialism • Patent prosecution before KIPO • Patent dispute before the Korean IPTAB • Patent dispute before the Patent Court of Korea • Patent prosecution before WIPO • Licensing and monetisation dealing with SEPs • Invalidation searches
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Main address 82 Olympic-ro Songpa-gu Hyundae Building 7th Floor Seoul 05556 South Korea T +82 2 3453 6701 F +82 2 557 3404 E webmaster@kbkpat.com Professional contacts JiHun Chang Managing partner E jangjh@kbkpat.com
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Kim & Chang www.ip.kimchang.com
Kim & Chang’s IP practice uniquely combines the top-rated IP-specialised practice in Korea with the resources of Korea’s leading general practice law firm. Our IP practice not only boasts the deepest and most experienced roster of IP attorneys, patent attorneys and other professionals in Korea; its ability to tap into the resources of the largest general law firm in Korea (also one of the largest in Asia) means that Kim & Chang’s IP practice is able to offer comprehensive legal solutions for all IP and IP-related needs, as well as a wealth of knowledge gleaned when handling many of the most important IP cases in Korea in the past 40 years. With over 300 professionals, including IP litigators, patent attorneys and foreign IP attorneys, and over 550 patent engineers, trademark paralegals and support staff, we cover the full scope of IP rights. Our patent professionals have specialised technical backgrounds in numerous fields, including biotech, pharmaceuticals, chemistry, mechanical engineering, electrical engineering and computer science. Many of our professionals also have extensive experience as judges, prosecutors or Korean Intellectual Property Office (KIPO) examiners, and their experience and know-how are invaluable in obtaining positive results for our clients. We work closely with other practice groups within the firm, including general corporate law, M&As, competition law and customs, in order to advise our clients on any IP-related legal issue they may encounter in Korea. Kim & Chang’s IP practice covers the following services, among others: • Patent prosecution and enforcement – preparation, filing and prosecution of patents in all technical areas, including national filing of foreign applications, and the filing of applications in foreign jurisdictions; training for local Korean companies and subsidiaries on IP development and filing; and all types of patent litigation in Korea, including patent actions at KIPO, infringement actions in the district courts, all levels of patent-related appeals (including Supreme Court cases), as well as agency IP-related enforcement (Korean Trade Commission, Korean Customs, etc). • Trademark prosecution and enforcement – prosecution of trademark applications and management of global portfolios; registration
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“In a league of its own… Largest player in the market”
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of domain names; availability searches and strategic counselling from the product design stage to launch and enforcement; registration of trademarks with the Korea Customs Service and coordination with agencies, police and prosecutors to enforce trademarks against counterfeits and infringing products. Design prosecution and enforcement – prosecution of design applications; infringement/validity analyses and prior art searches; administrative, civil and criminal litigation proceedings; settlement, licensing and transfer agreements; portfolio management, M&A due diligence and audit work. Copyright registration and enforcement – preparation and filing of applications in all areas, including electronic and online content; copyright transactions such as chain-of-title searches, licensing and sale, derivative works and neighbouring rights; copyright litigation and enforcement against copyright piracy or infringement. IP counselling and strategy – IP development and management; IP and technology field analysis, including big data analysis; asset valuation and monetisation; employee invention issues; and regulatory compliance. Licensing and IP transactions – licences, transfers and assignments of intellectual property; intellectual property as collateral for financing; consulting and negotiations in M&A transactions, distributorships, franchise agreements, and R&D and licensing agreements. Trade secret litigation and corporate information protection – civil and criminal disputes; administrative proceedings at the Korea Trade Commission; digital forensics and evidence analysis; alternative dispute resolution; training and advice on procedures for managing trade secrets and confidential information; managing export control issues;
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drafting and advising on trade secret licensing and development agreements. • Multinational/regional support – native language capability in Korean, English, Japanese, Chinese, French and German; extensive experience in handling multinational litigations, as well as transactions; international litigation support including prior art searches, assistance with discovery including depositions, and nonEnglish native language document review and analysis.
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Main address 39 Sajik-Ro 8 Gil Jongno-Gu Seoul 03170 South Korea T +82 2 2122 3900 F +82 2 2122 3800 E ip-group@kimchang.com Professional contacts Jay (Young-June) Yang Managing partner E yjyang@kimchang.com
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King & Wood Mallesons www.kwm.com
King & Wood Mallesons (KWM) is an international law firm headquartered in China. We have more than 1,800 lawyers in 14 offices across China and more than 2,700 lawyers in 29 offices globally spanning the United States, Australia, Europe, the Middle East and Japan. We are a global law firm that provides a one-stop legal service covering laws in (among others) the People’s Republic of China, the United Kingdom, the United States, Australia, Germany, Italy, Spain and the Middle East. With a large legal talent pool equipped with local in-depth and legal practice, we provide legal services in multiple languages. Our IP practice, especially patent practice, is uniquely situated against this rich international backdrop. We have provided services to multinational and domestic clients in profound legal experience and technical expertise. KWM’s high regard for clients’ intellectual property is the foundation of our business and our core practice. We aim to provide solutions to clients in their variety of IP-related issues. In that effort, we seek to break down old barriers and create new and innovative models to protect clients’ interests. We have been recognised as one of the leading IP practices in China by clients, peers and trade associations. As one of the five large practice groups at the firm, our IP group provides full service in IP areas ranging from patents, trademarks and IP transactions to IP litigations. All the practices are spearheaded by 59 partners in different practice areas. The patent prosecution team has more than 130 patent attorneys, patent agents and patent engineers covering all major technical fields including telecommunication, computer science, semiconductors, internet technology, electronics/ electricity, pharmaceuticals, medical devices, biotechnology, chemicals, materials, automobiles, mechanicals and designs. The team provides our clients with high-quality patent searches/watch, patent application drafting and prosecutions. Our patent team is highly experienced in patent re-examinations, patent invalidations, opinions on patent validity and non-infringement, patent administrative lawsuits and advice on strategies for patent protection. KWM’s patent litigation team has an authoritative presence in the highly competitive
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“Continues its reign atop the Chinese IP legal space… Only entity in the market given the highest ranking possible across prosecution, litigation and transactions tables” Chinese market. We have successfully represented many leading and influential patent litigations in China and set many new precedents. Many of our cases have been selected as annual representative IP cases by the Supreme People’s Court and other courts. Our team has a wealth of experience in trial and appeal courts. Our winning recipe is the combination of technical competency and in-depth legal understanding. Nearly 90% of our patent attorneys have graduate degrees in technical areas and their ability in comparing patent claim features and targets can substantively aid our clients’ cases. Our colleagues with previous behind-the-bench experiences also add helpful guides by focusing arguments on key issues. Our patent litigators have worked full time on patent infringement and invalidation cases for many years. We have developed special litigation capabilities and capacities in telecommunications, semiconductors, computer software, pharmaceutical and life sciences, artificial intelligence and robotics.
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Main address 18th Floor East Tower World Financial Center 1 Dongsanhuan Zhonglu Chaoyang District Beijing 100020 China T +86 10 5878 5588 F +86 10 5878 5533 E patent@cn.kwm.com Professional contacts Maohua Wang Head of IP practice group E wangmaohua@cn.kwm.com Nongfan Zhu International partner E zhunongfan@cn.kwm.com Wei He Head of IP litigation E hewei@cn.kwm.com Other offices Chengdu, Dubai, Frankfurt, Guangzhou, Hong Kong, Jinan, London, Madrid, Milan, New York, Shanghai, Shenzhen, Silicon Valley, Singapore, Sydney, Tokyo Sample client list • ABB • Bayer • Dell • IBM • Johnson & Johnson • Microsoft • Nokia • Novartis • Philips • Siemens • STMicroelectronics
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Krishna & Saurastri Associates LLP www.krishnaandsaurastri.com
Krishna & Saurastri Associates LLP is a full-service IP and technology law firm, focused on rendering business-friendly legal advice. The firm was formed in 1992 and merged with a law practice set up in 1956. Ever since, the firm has been navigating complex IP and techno-legal issues for its diverse client base. To keep pace with the growth of its business and be ever present for its clients, the firm has 200 people spread across offices in the major economic centres of Mumbai, New Delhi, Bengaluru, Pune, Ahmedabad and Chennai. The firm represents clients from all major industries and sectors. The firm’s team includes specialists with niche expertise and industry experience, which is leveraged to provide clients with maximum value from legal counselling. Additionally, most of the firm’s professionals gained formative degrees in natural sciences, engineering, arts or business prior to qualifying as lawyers, which is useful while navigating complex IP and techno-legal issues. Over the years, the firm has been ranked among the top-tier Indian IP and technology law firms consistently by leading domestic and international publications.
“Continuously expanding team of IP and prosecution specialists… Top-ofthe-line IT systems and advanced technical understanding”
Practice areas • Patents • Trademarks and geographical indications • Designs • Copyright • Mergers and acquisitions, technology transfers, licensing, franchising, joint ventures • Litigation and arbitration • Plant varieties • Biodiversity • Competition laws • International trade laws • Regulatory issues • Food, drug and medical device laws • Media, advertising, broadcasting and entertainment laws • Trade secrets, data protection and IT laws • Anti-counterfeiting • Customs and border enforcement
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Main address New Excelsior Buildin 7th Floor Wallace Street AK Nayak Marg Fort Mumbai 400001 India T +91 22 2200 6322 F +91 22 2200 6326 E info@krishnaandsaurastri.com Professional contacts Anshul Sunil Saurastri Partner E anshul@krishnaandsaurastri.com Manish Saurastri Partner E manish@krishnaandsaurastri.com Other offices Ahmedabad, Bengaluru, Chennai, New Delhi, Pune
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Kyowa Patent & Law Office www.kyowapatent.co.jp
Kyowa Patent & Law Office is a full-service IP firm with more than 100 years of history. Kyowa – a term that means ‘harmony’ and ‘balance’ – was established on 1 September 1908 by Tatsujiro Uchimura, a patent attorney and former examiner with the Japan Patent Office (JPO). Faithful to the firm’s name, Kyowa’s 60 patent attorneys, including five attorneys at law and one Chinese registered foreign lawyer, all cooperate to provide services tailored to each of our clients. Organisation Kyowa is a partnership of 10 patent attorneys, one of whom is an attorney at law. It has six dedicated departments: mechanical, electrical, chemical, designs and trademarks, litigation and Chinese intellectual property. The partners represent each technical field and our patent attorneys and attorneys at law range from highly experienced senior attorneys to motivated young attorneys. Highly qualified attorneys Kyowa’s attorneys are graduates of highranking universities and specialists with rich knowledge in their field. Most of them have previous experience working in the R&D or patent section of large Japanese manufacturers. Some have worked as examiners for the JPO. With a wide range of technical backgrounds, we propose the best strategy for the protection of our clients’ innovations in view of the Japanese patent practice. One of our attorneys at law is admitted to both the State Bar of California and the Bar of Japan. Our newest partner, Ruoling Du, is Chinese-licensed lawyer who handles all Chinese cases with the expedience and efficiency resulting from directly communicating in Chinese. Century-long history and large scale Ranging from large, global corporations to small, domestic entities, our clients are equally motivated to create cutting-edge technologies in various fields. The know-how that the firm has accumulated over more than a century of cases translates into consistently high-quality services. The large scale of the firm enables Kyowa to retain a balanced team of senior, mid-career and young attorneys. Our senior attorneys contribute
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“Three broad technical groups in the mechanical, electrical and chemical fields… Form special teams for every client” their wisdom and experience, while our younger attorneys bring their knowledge and understanding of the latest technology and IP law. This cycle makes Kyowa both a contemporary and historic firm today. Collaboration between specialised departments While Kyowa has efficiently accumulated knowhow and experience in each IP field by establishing specialised departments, the firm’s culture encourages departments to collaborate actively when it is desirable to do so for our clients. Such collaboration is fundamental to Kyowa’s ability to act successfully as a one-stop shop for IP services such as: • advising on effective patent applications in interdisciplinary technologies; • strategising on applying for patents; and • responding to office actions in view of exercising future rights. Original team system Our team system is an original client management system. A team is formed for each client and the most capable attorney among the team is assigned as the team leader. The team leader checks and manages the quality of the team’s output, while ensuring that the clients’ requests are known to all team members. As a result, our clients receive invariably high-quality services. Similarly, litigation cases are handled by dedicated temporary teams of patent attorneys, for their technical expertise, headed by an attorney at law. This structure allows the teams to provide performant comprehensive services thanks to efficient communication and cost-conscious teamwork.
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Attorneys at law with technical background An attorney’s deep understanding of the technology is highly beneficial in making persuasive arguments in patent disputes. While it is uncommon in Japan for attorneys at law to have technical backgrounds, most of Kyowa’s attorneys at law have master’s or bachelor’s degrees in engineering, pharmaceutics or other sciences. With science and engineering backgrounds, Kyowa’s attorneys at law are fully capable of preparing detailed technical arguments to persuade the courts. Kyowa’s goal Over its 110-year history, Kyowa has been providing superior customised service in a wide range of technical fields. Having introduced the partnership management in 2015, we will continue to challenge ourselves for the benefit of our clients, while providing consistent, dependable legal services for the protection and utilisation of your IP rights well after acquisition.
Main address Nippon Life Marunouchi Building 22nd Floor 1-6-6 Marunouchi Chiyoda-ku Tokyo 100-0005 Japan T +81 3 3211 2321 F +81 3 3211 1710 E mailbox@kyowapatent.co.jp Professional contacts Manabu Miyajima Managing partner E miyajima-manabu@kyowapatent.co.jp Takeshi Sekine Partner E sekine-takeshi@kyowapatent.co.jp Ruoling Du Foreign law partner E du-ruoling@kyowapatent.co.jp
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Lakshmikumaran & Sridharan www.lakshmisri.com
Lakshmikumaran & Sridharan (L&S) is a full-service Indian law firm specialising in IP, tax, corporate, commercial, competition, environmental and international trade law. Over its 35-year history, the firm has grown globally through its 51 partners and more than 400 professionals across 11 offices in India and abroad. The firm is well known for its high ethical standards, the quality of its work and its transparency in all business dealings. Recent accolades • Chambers & Partners Asia Pacific, Band 1, Life Sciences (2017-2019) • Chambers & Partners Asia Pacific, Band 2, Intellectual Property (2018-2021) • Chambers & Partners Global, Band 1, Life Sciences (2018-2019) • Asia Law, Recommended law firm for Intellectual Property Rights (2018-2020) • Asia Law, Distinguished Practitioner (IPR), Malathi Lakshmikumaran (2020) • IP Stars, Tier 2 for Patent Prosecution and Contention (2016-2019) • IP Stars, Patent Star (Patent office proceedings, Patent filing and prosecution, Patent strategy and counselling), Dr Malathi Lakshmikumaran (2016-2020) • IP Stars, Patent Star, Mr Prashant Phillips (20182019) • Legal Era, Best Patent Law Firm of the Year (2019) • Asian Legal Business, Tier 1 for Patent (2020) IP practice L&S stands for knowledge, integrity and passion, and the firm’s IP team reflects the same ethos. L&S has more than 85 specialist IP professionals offering clients end-to-end assistance in seeking, securing and enforcing IP rights in India. The core focus of the firm lies in handling all types of IP litigation, preparation and prosecution of patent, trademark, design and plant variety protection applications. The dedicated IP team also collaborates with the firm’s other practice areas in M&A transactions, competition law matters and issues relating to taxation of intangibles.
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“Clients benefit from the multitalented team’s comprehensive knowledge of IP law, science and engineering” Patent preparation and prosecution The firm’s IP team of patent agents, technical professionals and lawyers provides a seamless service – from initial consultation and the preparation and prosecution of patent applications to enforcement. The team’s diverse industry and scientific background means that it can handle all areas of technology, including software, electronics and telecommunications, mechanical engineering, chemistry and life sciences. L&S also assists clients in the unique and challenging aspects of patent and trade secret law in India. IP litigation The firm’s IP litigation team has handled several high-profile patent litigations. It specialises in handling complex IP disputes that require deep knowledge of technology, or where there are simultaneous proceedings across different forums or across different jurisdictions within India, or where the disputes have a cross-border aspect. Trademarks, domain names and unfair competition L&S provides comprehensive, cost-effective services to protect trademark rights, with an emphasis on enforcement against infringement, passing off and unfair competition. The firm has a reputation for building and managing the trademark portfolios of several clients. The firm’s experience in preventing counterfeiting and the expertise of its professionals in IT, internet and privacy law are drawn on when protecting domain names; engaging in internet monitoring services to identify trademark infringements, cybersquatting and counterfeiting activities; and
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assisting with specific measures, such as issuing takedown notices. Copyright, designs, related rights and open source L&S offers services in the securitisation and enforcement of copyright and design protection in India. Civil and criminal enforcement for infringement – particularly in the digital context – forms the core capability of the firm’s litigation team. The firm advises on the preparation of software and website development agreements and website hosting agreements, and consults on collectively administered rights, including through copyright societies. The firm also specialises in assessing opensource software, advising clients on managing associated legal risks to comply with opensource-related obligations. Plant variety protection L&S has unparalleled technical and legal expertise in the protection and enforcement of plant variety protection rights in India. With years of experience working with clients that are active in the crops, seed and horticultural fields, the firm’s team handles the preparation and prosecution of plant variety protection applications, opposition proceedings, infringement suits and the negotiation and drafting of R&D contracts.
Main address B-6/10 Safdarjung Enclave New Delhi 110029 India T +91 11 4129 9811 F +91 11 4129 9899 E iprdel@lakshmisri.com Professional contacts L Badri Narayanan Executive partner E badri.n@lakshmisri.com Malathi Lakshmikumaran Executive director E malathi.l@lakshmisri.com DP Vaidya Executive partner E damodar.vaidya@lakshmisri.com Other offices Ahmedabad, Allahabad, Bengaluru, Chandigarh, Chennai, Gurugram, Hyderabad, Jaipur, Kochi, Kolkata, Mumbai, Nagpur, Pune
Regulatory law and intellectual property L&S is unique in having the expertise and experience to ensure that the development and exploitation of intellectual property comply with various regulatory laws, including biodiversity laws, export controls and industrial licensing requirements.
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Lall & Sethi www.indiaip.com
Lall & Sethi was founded in 1994 by Chander M Lall and Sandeep Sethi, both of whom are designated senior advocates. An IP boutique with a focus on IP law, including trademarks, copyright, designs, patents, confidential information and trade secrets, L&S provides a complete range of services ranging from filing and prosecution of applications, oppositions and cancellation proceedings, searching and watching services, renewals, licensing and registered users to franchising, IP audits and enforcement of rights through civil, criminal or administrative measures. Lall & Sethi ensures that its attorneys and staff stay abreast of the best practices from across the globe, and understand and respect client needs. Training is also imparted on local practices of courts and IP offices in the region. This training and knowledge have resulted in some of the groundbreaking decisions in the region, with IP legislation starting life on the desks of Lall & Sethi offices – be it decisions on well-known and famous marks, version recordings in music, or unique regionspecific John Doe and Anton Pillar-type search and seizure orders. All litigation, including drafting and court appearances, are handled by in-house experienced litigators. The firm prides itself on having one of the best IT systems in the world. The firm’s IP management software, developed in-house, ensures that timely responses are sent and deadlines are strictly adhered to. The docketing systems have minimal manual interface, virtually eliminating human errors. An assembly-line approach ensures that each task is undertaken by a member of staff who is thoroughly familiar with it, having undertaken it multiple times after receiving thorough training. On client reporting, it is possible for a client to monitor the work on a real-time basis by requesting password-protected access to the database where all files are completely digital. An optional fixed-fee schedule ensures that the cost benefits of repetitive services on bulk files and use of efficient systems are passed on to the client. The client has full knowledge of, and access to, the administrative staff, often communicating with them on a firstname basis.
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“Solid option for innovators looking to protect their patents in the region… Work goes through rigorous quality controls to ensure that it adheres to the firm’s high standards” Areas of practice Patents The patent practice at Lall & Sethi encompasses a complete package offering the services of watching and searching, including opinions on validity, enforceability and infringement; filing and prosecution of patent applications; pre-grant and post-grant proceedings; dispute resolution; strategising and advising; portfolio management; and enforcement of patents. The patent professionals of the firm have wide experience in drafting applications of various technologies and liaising with inventors, technical experts and in-house patent counsels in the preparation of specifications. The firm also helps its clients devise a patent strategy across various jurisdictions. The firm is capable of handling patents from varied fields which include chemistry, polymers, biochemistry, biotechnology, pharmaceutics and related subject matter, mechanical, electrical and electronics, telecommunication, IT and software, medical devices, packaging and related subject matter. Trademarks Lall & Sethi provides the full range of services in the field of trademarks, ranging from filing and prosecution of applications, including applications under the Madrid Protocol; oppositions and cancellation proceedings; searching and watching services; renewals; drafting of licences,
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assignments, registered user agreements, franchise agreements; to IP audits and initiating and pursuing civil, criminal and administrative enforcement actions.
Main address D17 South Extension – II New Delhi 110 049 India
Copyright Lall & Sethi provides the complete range of services in the field of copyright, including filing and prosecution of applications and pursuing civil, criminal and administrative enforcement actions. In its erstwhile avatar, Lall & Sethi was responsible for the anti-piracy operations in India of the Motion Picture Association, a consortium of the seven leading Hollywood studios. By strategically using a combination of criminal, civil and administrative enforcement procedures film piracy levels were brought down throughout India by several percentage points.
T +91 11 4289 9999 E info@indiaip.com Professional contacts Anju Khanna Managing partner E akhanna@indiaip.com
Designs Lall & Sethi provides the complete range of services in the field of designs, including filing and prosecution of applications; cancellation proceedings; searching services; drafting of licences and assignments; IP audits and pursuing civil and administrative enforcement actions. Geographical indications Lall & Sethi provides the complete range of services in the field of geographical indications, including filing and prosecution of applications and pursuing civil and administrative enforcement actions.
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Firm Leader Patent & Trademark Firm www.xxx www.infopatent.com.cn
Since its creation in 2001, Leader Patent & Trademark Firm (Leader IP) has been delivering premium IP services to domestic and international companies across the full spectrum of IP matters – including patent mining, patent drafting, patent filing and prosecution, IP analysis and strategy, patent validity action, IP litigation, negotiation and dispute resolution. The team is made up of more than 400 professionals with solid technical backgrounds in various technologies including communication, integrated circuit, automotive industry, machinery Industry, material and chemistry; some 95% of them hold a master’s or doctorate degree, a considerable proportion has overseas work/study experience, and some hail from abroad. Patent drafting and prosecution Leader IP has significant experience in representing foreign clients in patent filings and prosecution in China. The firm’s strengths lie not only in preparing high-quality applications and response to office actions, but also – drawing from a forwardthinking approach and up-to-date knowledge – in streamlining procedures, saving time and controlling costs effectively. The grant-rate of invention patent applications represented by Leader IP is far higher than the national average. Taking the statistics for 2020 as an example, Leader IP’s grant-rate is around 75%, while the national average is only around 40%. Similarly, the average rounds of office actions for a patent handled by Leader IP are lower than 1.6 and the average examination period is shorter than 18 months. Such strengths also stem from the firm’ professionals extensive experience in drafting domestic and PCT patent applications in Chinese/ English and handling patent applications abroad, as well as from the lessons learned from invalidation and litigation cases. Taking advantage of its wealth of experience in drafting patents, its rich experience in handling outgoing cases, its in-depth mastery of scientific expertise and its thorough study of Chinese patent regulations, Leader IP offers unique and deep insights into the best way to secure high-quality patents in China for foreign clients. The team is fully aware of the differences between China’s patentrelated regulations and those in other countries; it is also familiar with various problems encountered
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“Quote” “Reliable partner for foreign clients in the Chinese IP space… A success rate in securing grants that is well above average, with an examination period that is well below it” by and targets of foreign patent applications entering China and can therefore provide valuable comments on document amendments and the use of appropriate procedures to optimise patent documents, thereby helping foreign clients to improve the efficiency and quality of their patents in China under controlled time and cost. Patent validity action and infringement litigation Moreover, Leader IP’s patent invalidation and litigation team has rich experience before the China National Intellectual Property Administration (CNIPA) and courts. In a series of more than 20 patent invalidation cases petitioned by Apple against Qualcomm, Leader IP managed, on behalf of Qualcomm, to uphold the validity of a high number of patents at issue – at a much higher than CNIPA’s historical data for such proceedings. In addition, many invalidation cases represented by Leader IP have been listed in each year’s Top 10 Patent Invalidation Cases. For instance, among the 2018 Top 10 Patent Invalidation Cases announced by the CNIPA, two cases handled by Leader IP were ranked as joint number one. Leader IP successfully represented clients in several other leading and influential patent infringement litigations that were later selected as representative IP cases or typical cases by the Supreme People’s Court and/or the IP Courts, such as the series of patent disputes between Ericsson and Huawei and the series of SEP and non-SEP infringement litigations
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initiated by Nokia against Shanghai Huaqin. Thanks to its deep experience in patent-related disputes, Leader IP also provides outstanding prior art searches, patent searches, infringement analyses, freedom-to-operate analyses, and litigation and/or invalidation strategies.
Main address Xxxx 32 Winland International Center Xizhimen North Street T + Haidian District F Beijing + 100082 E xxx China Professional T +86 10 6226contacts 0318 Name F +86 10 6227 0318 Partner E international@infopatent.com.cn E xxx Professional contacts Name Shuang Ma Partner E xxx E mashuang@infopatent.com.cn Name Other offices Partner Changsha, Hangzhou, Los Angeles, Qingdao, Seoul, E xxx Shanghai, Shijiazhuang, Xi’an Other Sample offices client list xxx • Airbus • Amorepacific Sample • Huawei client list • xxx Hyundai MOBIS Qualcomm • xxx Samsung • xxx • Siemens • Sony
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Lee & Ko www.leeko.com
Lee & Ko was founded in 1977 and is consistently ranked among the largest and most respected law firms in Korea. With 750 professionals organised into 40 specialist teams, Lee & Ko is a premier fullservice law firm. Lee & Ko’s foreign and domestic clients benefit from its unequalled depth of resources, experience and professionalism. With more than 100 seasoned attorneys and foreign legal counsels, Lee & Ko’s IP group delivers superior legal services focused on helping clients to navigate the complex legal landscape, while meeting their specialised requirements with practical and effective solutions. The IP group is dedicated to the protection, transfer, counselling and enforcement of IP rights. With unrivalled experience in advising and representing clients in cross-border IP matters, the IP group has a global reach and is consistently ranked in top-tier categories for intellectual property by numerous global law firm evaluators, including the Legal 500, Chambers & Partners and Managing Intellectual Property. Patent prosecution and patent office trials The IP group assists clients in multiple industry sectors, including biotechnology, specialty chemicals, semiconductors, materials science, electronics, mechanical, pharmaceuticals, telecoms and computer software. The IP group’s patent attorneys have significant experience litigating before the Korean Intellectual Property Office (KIPO) in invalidity and scope confirmation actions and freedom-to-operate analyses. The breadth and scope of their experience allow the IP group’s patent attorneys to create robust patents by evaluating patent applications during preparation, filing and prosecution with a critical eye towards enforcement. The combined prosecution, transactional and litigation experience enables the IP group’s patent attorneys to ensure that clients develop valuable patent portfolios which offer the broadest protection while ensuring patent validity and enforceability. Patent litigation, enforcement and dispute resolution Success in any litigious matter can mean many things. However success is defined, the IP group produces results for its clients. The IP group understands that clients need a trial team with
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“Razor-sharp, incisive and work very hard… One of the top shops for IP litigation in South Korea” substantial technical and scientific knowledge, but also substantive knowledge of the law and the rules and procedures governing legal proceedings. Many of the IP group’s litigators have strong technologyrelated backgrounds and skills which cover a wide range of technical fields. The IP group also includes litigators who were former judges specialising in IP law and IP cases while serving on the Supreme Court, the Patent Court or the Seoul High Court, as well as former examiners and administrative law judges from KIPO. When criminal issues arise, the IP group works closely with attorneys in Lee & Ko’s white collar crime group who formerly served as public prosecutors. Complemented by insight received from senior lead litigators, many of whom have 20 to 30 years’ trial experience, and seasoned foreign legal counsels, the IP group is in a unique position to create an effective trial team that can provide comprehensive legal services framed by technical, strategic, judicial, administrative and international perspectives. Patent development and counselling The IP group assists clients in developing and deploying a portfolio of strategic IP assets. Beyond the knowledge of IP matters and underlying technology, the IP group is fully aware that a key component to the success of any client includes the strategic use and licensing of its IP portfolio. The IP group has unrivalled experience in negotiating licensing, distribution and joint venture agreements covering all areas of intellectual property. Besides licence negotiation and drafting, the IP group provides counselling for clients on licensing strategies, IP-related competition law issues and strategic product development and distribution.
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Patent strategy and management A particular strength of the IP group lies in patent strategy and patent portfolio management. Strengthened by the broad scope of its scientific and technological expertise, the IP group works with clients to formulate patent strategies – relating to patent prosecution, enforcement, transaction and litigation – that align with their business objectives, while providing additional services such as risk assessment, patent due diligence, technology mapping and regulatory guidance.
Main address Hanjin Building 63 Namdaemun-ro Jung-gu Seoul 04532 South Korea T +82 2 772 4000 F +82 2 772 4001 E mail@leeko.com Professional contacts Jae Hoon Kim Managing partner E jaehoon.kim@leeko.com John Kim Senior foreign attorney E john.kim@leeko.com Hyeon Gil Ryoo Co-head, intellectual property E hyeongil.ryoo@leeko.com Other offices Beijing, Hanoi, Ho Chi Minh City
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Lee International IP & Law www.leeinternational.com
Lee International is one of the largest, internationally recognised IP law firms in Korea. Since its establishment in 1961, Lee International has been devoted to providing clients with a broad range of IP services whose quality match the firm’s core values of integrity and competence. Lee International is an unfailingly reliable partner when it comes to meet clients’ global IP needs thanks to its deep understanding of clients’ concerns and its capacity to support clients to meet their busines goals. Relationships Lee International is renowned for providing costefficient solutions in relation to the protection and enforcement of IP rights of clients through exceptional services provided by highly qualified IP professionals and technical experts. Lee International works to promote innovation and enhance the value of clients’ IP rights by closely cooperating with clients in all sectors. The firm’s established attorneys routinely cooperate with trusted colleagues across the world to manage clients’ intellectual assets in order to maximise these assets’ value. Staff The firm’s team of attorneys has strong technical and scientific backgrounds. Many of the attorneys hold advanced degrees in specified scientific areas and had industry experience prior to becoming attorneys. The team also includes in-house subject matter experts who prepare and deliver high-quality Korean language translations of foreign-language specifications. The attorneys are knowledgeable in the relevant technological areas and skilled in assessing clients’ most complex patents and the value of the patent portfolios to protect their technology. Lee International’s patent practice has 60 patent attorneys supported by 150 technical engineers and administrative staff members. Patent practice Lee International’s patent practice is divided into three main groups: • Electronics and information technology – Lee International protects clients’ innovations in the fields of electronics and information technology. Our attorneys have extensive
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“Strong patent prosecution practice… Sound advice for patent portfolio development as well as litigation and other strategic advice for the Korean market to a mainly international clientele” experience in representing clients in the technical fields of semiconductors, storage solutions, displays, electric and electronic circuits, software, wireless telecommunications, artificial intelligence, blockchain and fintech. Many of our attorneys have deep technical understanding of the electronic and IT industry with years of industry experience prior to becoming attorneys. Our electronics and IT group provides clients with strategic advice to manage and license patent portfolios. • Machinery – Lee International’s experience serving clients in the fields of transportation, energy and semiconductor manufacturing devices is wide ranging. The firm’s attorneys are also deeply familiar with home appliances, footwear and sports equipment, medical devices, alloy and metallurgy. Many of the attorneys have worked for corporations or the government and have been actively involved in all phases of product development. This gives them an understanding of clients’ technologies that helps them safeguard the value of the clients’ IP assets. • Chemistry and life sciences – Lee International assists client in safeguarding chemical and materials science-based innovations, which frequently requires a cross-disciplinary approach with other technologies. The attorneys in the chemistry and life sciences
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group have vast experience and expertise in all chemistry-related technical areas, including organic and inorganic chemistry, physical chemistry, electrochemistry, analytical chemistry, agricultural chemistry, chemical engineering, environmental engineering and food engineering, and provide legal services to clients in various chemical industries. Lee International offers extensive expertise in the life sciences industries, which comprehensively covers the increase of productivity in the agriculture and livestock fields, the development of new drugs and the establishment of a defence system that can cope with new diseases or aging by realising individually customised medical solutions based on genomics, from both legal and scientific perspectives. Lee International advises clients in the life sciences industries in relation to pharmaceuticals, biotechnology, food and agriculture, and medical implants. The group’s attorneys leverage their diverse technical knowledge and industry experience to provide the highest-quality professional IP services.
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Main address Poongsan Building 23 Chungjeong-ro Seodaemun-gu Seoul 03737 South Korea T +82 2 2279 3631 F +82 2 2273 4605 E info@leeinternational.com Professional contacts Terry Taehong Kim Managing partner E thkim@leeinternational.com Jin-Hoe Kim Senior partner E jhkim@leeinternational.com Yoon Suk Shin Senior partner E yshin@leeinternational.com
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Letters & Thoo www.lettersthoo.com
Letters & Thoo is a specialist IP practice based in Hong Kong, with internationally recognised expertise in the procurement, management and protection of patent, trademark and industrial design rights on behalf of both domestic and international clients. The firm’s patent attorneys have established a proud and longstanding track record of excellence in the IP field, having been consistently recognised in peer review industry benchmark publications, including the IAM Patent 1000 since 2012. Throughout the years, clients have come to know us not only for the uncompromising quality of our professional services, but also for our commitment to providing accessible and responsive client care at all times. Letters & Thoo constantly strives to maintain these high standards by providing client-focused IP services to clients of all sizes and from all sectors. Patent services Letters & Thoo assists clients in all aspects of substantive patent prosecution and practice, including patent filing services in Hong Kong, China and internationally, patent drafting, patent validity and infringement analysis, freedom-to-operate opinions and exploitation of patent rights, as well as the management of patent portfolios. Letters & Thoo’s attorneys handle a diverse range of technologies, including mechanical and electro-mechanical devices and systems, materials sciences, manufacturing technologies, analogue and digital electronics, consumer electronics and consumer products, telecommunications and data processing systems, computer hardware and software, e-commerce business systems, and pharmaceutical and chemistry-based technologies. Today, international companies face uncertainty in assessing their freedom to operate in relation to commercial activities in Hong Kong, China and Southeast Asia. The firm has extensive experience advising clients on such multi-jurisdictional patent clearance matters, including those pertaining to commercial use of non-traditional pharmaceutical and agrochemical technologies. Trademark and industrial design services Letters & Thoo provides trademark and industrial design rights services covering both Hong Kong and China, including:
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“A knack not just for protecting intellectual property, but for building lasting client relationships… Overwhelming amount of positive feedback ” • preparation, filing and prosecution of trademark applications; • advice on registration and use requirements for trademarks; • trademark opposition proceedings; • cancellation actions against bad-faith trademark registrations in China and Hong Kong; • non-use cancellations against registations in China and Hong Kong; • trademark availability searches; • trade fair enforcement actions; and • commercial transactions involving trademark rights. Letters & Thoo acts for a diverse range of clients in relation to trademark and design matters, including leading luxury goods designers and manufacturing companies covering jewellery, footwear, garments, aspects of product packaging, toys, industrial components, foodstuffs, beverages and household consumer products, as well as computer-related devices, telecommunications devices, graphics and interfaces. Specialist IP services Letters & Thoo also provides a range of specialist IP services for clients, including: • pharmaceutical freedom-to-operate patent clearance in Hong Kong and compliance with government and domestic supply requirements; • advising on tendering and government procurement in compliance with World Trade
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Organisation requirements relating to IP and government procurement agreements; trade fair IP rights administrative actions in Hong Kong – with particular expertise in the strategic enforcement of standard-essential patent rights, trademark infringement and anti-counterfeiting actions; commercial cross-border patent filing and prosecution strategies for international corporations with manufacturing operations in China and Hong Kong; bad-faith trademark cancellations and recovery of hijacked IP rights by shadow companies; and commercial transactions involving the assignment and licensing of patent rights and underlying technologies.
Main address Suite 1008 Prosperity Millennia Plaza 663 King’s Road Quarry Bay Hong Kong T +852 2488 9602 F +852 2488 9648 E mail@lettersthoo.com Professional contacts Timothy Letters Partner E timothy.letters@lettersthoo.com
Attorneys The firm’s patent attorneys are technically qualified in diverse science and engineering disciplines and have specialist postgraduate qualifications in IP law and practice and many years’ professional experience securing and enforcing IP rights for a wide range of technology, trademark and industrial design owners in Hong Kong, China and internationally. Letters & Thoo’s patent attorneys have proudly served on the Council of the Asian Patent Attorneys Association Hong Kong Group and on the group’s Patents and Designs Standing Committees; are members of the International Federation of Intellectual Property Attorneys, the International Trademark Association and the Hong Kong Institute of Trademark Practitioners; and are recognised as fellows of the Institute of Patent and Trademark Attorneys of Australia.
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LexOrbis www.lexorbis.com
LexOrbis is a highly specialised, market-leading IP boutique fielding a sizable team of 200 people, including nine partners and 90 attorneys. With offices in three strategic locations (Delhi, Mumbai and Bengaluru), LexOrbis is also among the fastest-growing IP firms in India. The firm acts as a one-stop shop and provides practical solutions and services relating to all IP and legal issues faced by technology companies, research institutions, universities, broadcasters, content developers and brand owners. LexOrbis’s dedicated patent department offers expert advice on patent work, covering drafting, filing, prosecution and litigation. The firm enhanced the strength of its patent prosecution practice group in the past two years by hiring 30 experienced patent attorneys in its engineering and life science groups. In 2019-2020, our patent attorneys drafted over 1,300 new patent cases for inventions originating from India and filed 2,557 patent applications. The firm is also the exclusive IP service provider to India’s biggest public sector oil company Indian Oil Corporation Limited, and we handle foreign filing and prosecution of patent applications for the Council of Scientific and Industrial Research, India’s nodal agency for public funded innovation. We also represent the Defence Research and Development Organisation of the government of India, the Department of Biotechnology, the Technology Information Forecasting and Assessment Council, the National Research Development Corporation and many other government institutions. LexOrbis’s dedicated trademarks team is fully equipped to advise on trademark matters, including strategic advice on trademark applications and protection. Its thorough and comprehensive advice on trademark mandates is widely recognised. LexOrbis stands out for its broad industry expertise. The team has developed particularly strong expertise and experience in the pharmaceutical, chemical, electronic, electrical, mechanic, biotech and IT sectors. LexOrbis is highly recommended by other IP firms around the world. LexOrbis combines a high level of technical and legal expertise with tailored services, carefully adapted to each client’s specific needs.
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“Well-rounded team… Experts from all of India’s 27 states with legal and technical qualifications to their name” LexOrbis is renowned for its expertise in negotiating and closing settlement agreements on behalf of its clients, thereby avoiding long and potentially costly litigation. The clients LexOrbis’s client portfolio encompasses leading global, international and local corporations, including key players in the US, European and Asian markets and a number of Fortune 500 companies. LexOrbis draws its clients from a variety of sectors and the firm stands out for its impressive client roster in the pharmaceuticals, healthcare, fashion and luxury goods, consumer products, electronics, food and beverages, tobacco, software, biotechnology, electrical and engineering industries. Selection of recent awards and recognitions • India Business Law Journal – A List 2020: Manisha Singh listed among India’s Top Lawyers • Asia IP 2020: LexOrbis recognised as India Patents Firm of the Year • ALB Rising Stars India 2021: Joginder Singh named a Rising Star • WTR 1000 – The World’s Leading Trademark Professionals 2021: LexOrbis recognised in the enforcement and litigation and prosecution and strategy categories • Asia IP: Ms Singh and Abhai Pandey recognised among the Top 100 IP Experts in India • IAM Patent 1000 2020: LexOrbis named a Recommended Firm • IAM Patent 1000 2020: Ms Singh named a Recommended Individual
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• Managing IP 2020: Ms Singh recognised as an IP Star for patent litigation, patent strategy and counselling • India Business Law Journal’s Indian Law Firm Awards 2020: LexOrbis won the Intellectual Property Protection Award • Legal Era-Legal Media Group 2020: LexOrbis recognised as Indian Patent Law Firm of the Year
Main address 709/710 Tolstoy House 15-17 Tolstoy Marg New Delhi 110 001 India T +91 112 371 6565 F +91 112 371 6556 E mail@lexorbis.com Professional contacts Manisha Singh Managing partner E manisha@lexorbis.com Abhai Pandey Partner E abhai@lexorbis.com Joginder Singh Partner E joginder@lexorbis.com Other offices Bangalore, Mumbai
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Li & Cai Intellectual Property Office www.li-cai.com.tw
Li & Cai Intellectual Property Office, founded in 1985, is grouped into IP and legal departments. The IP department, teamed by experienced professionals and patent attorneys, is specialised in patent, trademark, copyright and IC related fields. Li & Cai is a top ten IP law firm in Taiwan and has been awarded top five in domestic service satisfaction by the APIPA survey, and provides the most reliable protection with its core values of shared professionalism, a passion for service, faith in quality, an intention to make clients feel secure. In order to provide smarter and more direct IP rights services, Li & Cai serves Taiwanese businesses face-to-face in various cities in China, and organises seminars and exchange activities with relevant Chinese IP rights organisations to provide the most effective solutions to protect Taiwanese interests. Therefore, Li & Cai has also become the Taiwan firm with the most practical experience in IP rights in China. Strengthening our professionalism and accurately understanding your requirements Li & Cai provides comprehensive and professional domestic and international IP rights services, and Li & Cai’s professional services are divided into the following four domains: • Patents: representation for patent application, analysis, reexamination, invalidation action and other business, contractual agreements and registration of patent rights licensing and assignment • Trademarks: representation for trademark registration, transfer of documents for review, opposition, invalidation, etc., and extension, transfer, authorisation, and change of registered trademarks • Copyright: copyright infringement investigation and protection of computer software and other works • Protection of IP rights: Customs seizure applications and investigations, and bans against counterfeiting in cases of IP rights infringement cases In addition, Li & Cai also provides consulting services on patents, trademarks, copyrights, IP rights and various business legal issues, and is
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“Relied on by foreign associates from Asia to the United States for its full gamut of IP services… Quality is top-notch” the best partner for clients wishing to enhance their competitiveness. Transnational service and comprehensive protection of IP rights Li & Cai provides IP rights services in various countries. • Taiwan applications: organising regular education and training courses, and providing preliminary searches for cases or participation in research and development inquiry services, utilising patent rights to establish business strategy alliances with peers to enhance market shares • China applications: arranging for participation in China patent attorney training and other relevant training; there are strategic alliance partners throughout China to assist Taiwanese businessmen in IP rights case services • US applications: Li & Cai has a branch office in Washington DC and applications are translated, drafted, edited and proofread by American lawyers/certified patent attorneys, and the follow-up responses are provided by Li & Cai’s professionals in the United States to facilitate discussion and communication with US patent examiners on applications, which protects customer rights by virtue of a one-stop service • Other IP rights services: various IP rights consulting services, patent and trademark application matters, follow-up procedures, infringement assessment, and continuous improvement in services, such as organising seminars to enhance exchanges of IP rights and knowledge among different countries
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All-round VIP exclusive service Li & Cai has a team of professional IP rights services and technical consultants, specialising in patent and trademark law of various countries and providing professional and all-round VIP exclusive services to help clients solve problems in IP rights, and it delivers the latest and most complete IP rights messages through the media, such as exclusive websites and electronic newsletters, etc. The exclusive services provided by Li & Cai include: • division of labour, professional focus and single contact for service; • strong patent attorney line-up and rich experience in patent drafting; • professional agent consultation and professional practice courses; • organising China and US patent practice seminars; and • analysing and planning patent infringement, litigation and defence, enhancing Li & Cai’s levels of service and depth of quality. Organisation Li & Cai currently employs nearly 130 employees, including Taiwan patent attorneys, US patent agents/attorneys, China patent attorneys, Taiwan trademark agents and more than 60 patent engineers/specialists.
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Main address 9th Floor No 69 Sector 2 DunHua South Road Da’an District Taipei City 10682 Taiwan T +886 2 2703 6633 F +886 2 2784 9922 E lcmail@li-cai.com.tw Professional contacts Feng-Sheng (Kenny) Cai Founder E tsai@li-cai.com.tw Yao-Hui (Yves) Chang Senior manager E lc700@li-cai.com.tw Other offices Fairfax, Virginia Sample client list • Hilti • LITE-ON • Nan Ya Plastics • Nh Theraguix • Pegatron • Razer • Realtek • Screen Holdings • Toyobo • Xiaomi
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Linda Liu & Partners www.lindapatent.com
Linda Liu & Partners is an all-rounded Chinese intellectual property law firm. Since our founding in 2003 by Dr. Linda Liu, we have adhered to the principles of honesty and trustworthiness, respecting our clients, valuing people and encouraging teamwork, as well as guaranteeing the quality of our work and ceaselessly improving the skills of our team members. Driven by our values, Linda Liu & Partners has achieved outstanding reputation in the IP filed. We have 351 members, including 127 patent attorneys, 31 patent engineers, 25 trademark attorneys, 24 attorneys-at-law and 11 trainee attorneys. Many members have PhD degrees in science and engineering, or have been educated overseas. Our patent experts work in four languages – English, German, Japanese, and Chinese. We headquarter in Beijing, and have three branch offices in Shanghai, Suzhou, and Dalian respectively. Linda Liu boasts 60% of the partners being female, among the highest of all Chinese law firms. We attach great importance on offering various opportunities to young employees, e.g. participating in in-person meeting with clients, and on board the team for high-stake cases such as invalidation proceedings and litigation. Moreover, we give full attention and care to female employees. Training the younger generation and supporting the female colleagues of the firm have been part of our philosophy ever since our founding. We provide a full line of services relating to IP, and have established fully feathered departments for patent prosecution, covering all technical disciplines concerned in IP. The team enjoys a unique combination of international education background and CNIPA’s insider experience, serving both Fortune 500 companies and startups. Linda Liu is recognized as one of the most responsive IP firms in China. In patent prosecution, we proactively seek reasonable scope of protection in the most efficient fashion, by routinely conducting telephone interviews, having face to face meetings with examiners, etc., making us a popular choice for foreign companies when they are reconsidering their Chinese associate and looking for quality prosecution counsel. We are always willing to go the extra mile for our clients, e. g. we handle each step carefully from the beginning
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“An ever-reliable choice for prosecution matters… Incredibly responsive, provide top-tier service and advice” of every new application, initiatively avoid the unnecessary Office Actions, and provide flexible translation options to help clients control cost. Numerous precise working procedures have been laid down to ensure our service quality. We implement a strict and precise system in docketing, and establish multi-check system to guarantee quality. In the process of patent prosecution, docketing management plays an important role. Our docketing department has 46 team members in charge of case setup, deadline monitoring, and annual fee management. Our responsible and conscientious docketing personnel as well as the ever-improving docketing system are the best security. Moreover, our partners, seasoned attorneys and former examiners formed a quality check group. In addition to patent prosecution, we have extensive experience in IP litigation. A couple of our litigation cases have been selected as typical cases by the Supreme People’s Court of China. Effusive foreign associate recommendations led to our inclusion in the IAM Patent 1000 in 2020: “I am extremely satisfied with their work and highly confident that they will handle and prosecute my cases in China with optimal results.” reports one client. A US client commented to IAM that“Aside from paying a lot of attention to detail, they always provide excellent and thorough advice and analysis. I direct all my China patent work to Linda Liu and I encourage my US clients to instruct them too, especially for matters related to computer software and hardware. I’m a big fan!”. Another glowing comment from the clients is “acting as an extension of our team’s approach to client service, with expertise in their local
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jurisdiction. They provide honest assessments, offer suggestions that may not be apparent to us, and proactively provides thoughtful, clientspecific advice that takes into account both legal and business needs.”
Main address F16 Tower C Beijing Global Trade Centre 36 North Third Ring East Road Dongcheng District Beijing 100013 China T +86 10 5825 6366 F +86 10 5957 5201 E office@lindapatent.com Professional contacts Linda Liu President E linda@lindapatent.com Peter (Baoyu) Zhang Partner E peterzhang@lindapatent.com Nancy Song Partner E nancysong@lindapatent.com Other offices Dalian, Shanghai, Suzhou
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Liu, Shen & Associates www.liu-shen.com
Liu, Shen & Associates is a leading IP law firm established in 1993 by 10 founding partners known as pioneers for their role in the enactment of (and being the first to practise under) the Patent Law and the Trademark Law in China in the 1980s. Liu Shen & Associates is committed to always providing superior services in relation to patents, trademarks, copyright, trade secrets and other IP matters. Liu Shen & Associates is experienced in providing comprehensive and integrated IP solutions covering patent prosecution, litigation, invalidation and various kinds of research and analysis, including freedom-to-operate and prelitigation patent portfolio analyses. In a rapidly changing technological and IP landscape, Liu Shen & Associates prides itself on its ability to adapt swiftly to cover the full spectrum of our clients’ needs by delivering a tailored, farsighted and deeply integrated approach to intellectual property. The strengths of Liu Shen & Associates lie upon the quality and expertise of its staff. Multiple litigation cases handled by the firm are ranked as Top 10 IP Cases by local high courts and the Supreme Court. With more than 200 multi-dimensional and multitalented professionals of whom 40% hold PhDs, the firm’s high-quality services have won long-lasting trust from a large number of multinational corporations. Carrying forward our respected ethos “client interest first, case quality first, integrity and honesty first”, Liu Shen & Associates will keep up dedicating ourselves to providing the highest quality of legal service to clients.
“One of the true giants of CNIPA patent prosecution work… More than 1,000 filings through the global patent system in 2020”
Recent awards
Cases • Qualcomm v Apple: Represented Qualcomm in group software patent infringement cases and related patent invalidation cases in China. We were successful in defending validity of most patents to make a solid basis for the final settlement in China. • Samsung v Huawei: Represented Samsung in multiple-patent infringement cases and related patent invalidation cases in China, involving technologies in telecommunication, user interface operation and software. FRAND issues in this case directly contributed to the formulation of court guidelines on SEP infringement cases. • LEGO A/S v Shanghai Deguang: Represented LEGO A/S to file opposition against the
• IAM Patent 1000, The World’s Leading Patent Professionals 2019 – Litigation & Non-Litigation: Highly Recommended Law Firm • Chambers Partners Asia-Pacific 2019 and 2020 – Litigation: Recognised Practitioner, NonLitigation: Band 1 • Corporate INTL 2017-2019 – Design law: Law firm of year in China • Asialaw Profile 2018 and 2020 – Intellectual Property – Outstanding IP Law Firm • Managing Intellectual Property 2018 – Patent Prosecution and Litigation: Tier 1 Firm • China Business Law Journal 2018 and 2019 – Outstanding Law Firm
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Our services • Patent mining, application, layout and strategy making • Patent re-examination, invalidation and litigation • Analysis of patent maps in specialised fields • Monitoring and analysis on patents from competitors • Patentability/validity, freedom-to-operate/ infringement search and analysis • Due diligence on intellectual property in investment, M&As • Negotiations in patent licensing and transferring, contract drafting and reviewing • Trade secret consulting, negotiation and litigation • Consultation on registration regulations related to drugs and medical devices
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trademark LEGO and finally won the administrative litigations, with the court recognising the trademark of LEGO as a wellknown mark on goods of “toys”. • Dow Chemical v The TRAB: Represented Dow Chemical in a trademark refusal review case to overturn the TRAB decision. The court held that the reputation of the precedent registered trademarks should be taken into consideration in the trademark refusal review case.
Main address 10th Floor Building 1 10 Caihefang Road Haidian District Beijing 100080 China T +86 10 6268 1616 F +86 10 6268 1818 E mail@liu-shen.com Professional contacts Michelle Ma Managing partner E mail@liu-shen.com Other offices Chengdu, Shanghai
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Lung Tin Intellectual Property Agent Ltd www.lungtin.com
Founded in 1994, Lung Tin Intellectual Property Agent Ltd – one of the first IP firms approved by the government to represent international clients in China – is headquartered in Beijing, with branch offices in Hong Kong, Shanghai, Shenzhen, Xi’ an, Shenyang, Xiamen, Osaka and New York. Since its establishment, Lung Tin has grown into a prominent full-service IP firm, with a network of strategic alliances worldwide to provide clients with global IP services. The firm has more than 226 attorneys out of 445 staff members. About one-third of its staff members have advanced degrees and about twothirds use English as their working language. In addition, many are fluent in Japanese, Korean, German and French. What makes Lung Tin different? Commitment and dedication – Lung Tin is a quality-focused IP firm and is distinct from other firms and agencies: • Lung Tin has experienced and confident professionals. Its key professionals have been with Lung Tin for more than 10 years, helping it to deliver consistent and top-quality IP services – both legal and technical. The firm’s professionals have the technical skills to interpret complex facts and the law with scientific expertise, and are committed to providing tailored services of the highest standard with efficiency and effectiveness. • Lung Tin has responsive and efficient paralegals and assistants. Its professionals are supported by its well-trained paralegals and assistants who ensure prompt, precise and cost-effective delivery of work by using state-of-the-art equipment and a detail-oriented system for communication, product processing, docketing and billing. How does Lung Tin earn clients’ trust? • Reliability and success – this is what Lung Tin delivers to clients. Specifically, delivering value to clients with accuracy, consistency, speed, and reliability is of primary importance at Lung Tin, because Lung Tin’s success depends on its clients’ success. From individual inventors to multinational companies, its clients trust it to handle some of their most important assets: their intellectual property.
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“Trusted partner for prosecution work… Has represented the interests of foreign filers in China since the inauguration of its young patent system” • Skillful and well prepared – this has helped the firm to win a high damages award under the current judicial practice in China in Bauerfeind AG v Zhejiang Steriger Sports Safety Co Ltd, in which client Bauerfeind AG won an important victory in the Beijing Second Intermediate People’s Court for design patent infringement. • Strategic and technical – this ensures that the firm’s attorneys deliver satisfying results to clients. In In re Hong Kong Polytechnic University, Lung Tin’s client Hong Kong Polytechnic University prevailed on validity challenges in a series of invalidation proceedings against international and domestic companies. • Persistent and sharp-minded – this ensures that the firm’s efforts are recognised. In Macy’s PLC v Trademark Review and Adjudication Board, the Beijing Intellectual Property Court upheld Lung Tin’s client Macy’s CHARTER CLUB mark, deemed its original equipment manufacturer (OEM) use as effective and actual in China, and rejected the Trademark Review and Adjudication Board’s decision. The IP Court’s decision is a rare and important one because it recognises that OEM use can prove actual use of a trademark in China in the context of non-use cancellations. • Pioneering and talented – this helps the firm to achieve significant results. In Balanced Body Inc v Yongkang Elina Sports Equipment Co Ltd, Lung Tin represents Balanced Bode Inc as the plaintiff. The court affirmed that the defendant’s behaviour constituted a trademark infringement and ruled that it bore
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the responsibility for compensation of Rmb3 million, including reasonable expenses. This case was selected among the Supreme Court’s 2019 Top 10 Intellectual Property Cases by Chinese Courts. Rankings and awards • China Leading Law Firm by Chambers AsiaPacific, 2020 • Recommended Firm for Patent Prosecution by the IAM Patent 1000, 2014 to 2020 • A Top Tier Firm for Patent Prosecution, Patent Litigation, Trademark Prosecution by Managing Intellectual Property, 2010 to 2020 • Trademark Prosecution Firm, Bronze by the WTR 1000, 2015 to 2020 • Four-star Patent Firm in China in 2016 by China IP News • Outstanding IP Service Team in China by China Intellectual Property Magazine and China Daily, 2015 to 2019 • Top 10 Chinese Patent Firm by IPRdaily, 2016 and 2019 • Top 10 Chinese IP Firm by the Chief Legal Officer of the Chinese Academy of Sciences, 2018 • Top 10 Intellectual Property Litigation Law Firms for 2019-2020 • Top 10 Firm for China Patent Administrative Litigation in 2019 since 2017
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Main address 18th Floor Tower B Grand Place No 5 Huizhong Road Chaoyang District Beijing 100101 China T +86 10 8489 1188 F +86 10 8489 1189 E ltbj@lungtin.com Professional contacts Qinghong Xu Partner E qinghongxu@lungtin.com Siyue (Jacob) Zhang Partner E jacobzhang@lungtin.com Other offices Hong Kong, New York, Osaka, Shanghai, Shenyang, Shenzhen, Xi’ an, Xiamen Sample client list • Baxter • BOE • Decathlon • Ferrari • Grundfos • Koch Industries • KUKA • Kyocera • LG • Lundbeck • Metso • Nexteer • Omron • OPPO • Panasonic • Sanofi • Sinopec • Sumitomo • TSMC • Xiaomi
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NAM & NAM www.nampat.co.kr
As a pioneer in the field and the country’s oldest IP law firm, NAM & NAM is synonymous with intellectual property in South Korea. The hallmarks of our success have been a relentless pursuit of excellence and a refusal to compromise on quality since the day the firm was established in 1952. NAM & NAM has been trusted by both domestic and multinational clients for almost 70 years. This trust stems from the quality of our services, provided by outstanding professionals who deliver effective solutions drawing on their considerable experience and know-how. Our professionals have backgrounds in key technologies and are trained with the specific needs of global clients in mind. With a focus solely on IP-related matters in South Korea, we are constantly expanding our practice and can be relied upon for effective and clear advice, no matter the issue.
“Extensive experience in handling patent prosecutions in Korea… Clients’ intangible assets are handled with the utmost professionalism and sensitivity”
Certifications and processes To ensure a consistently high quality of work output and information protection, the firm has established and operates systemised work procedures to adhere to strict quality management standards. The firm is ISO 9001 and 27001 certified.
Practice areas NAM & NAM has expertise in all aspects of the protection of intellectual property, as detailed below.
Response to office actions • A pre-report is produced within one business day of receipt of any office action. • Full comments on the office action are provided within three weeks of receipt of the office action.
Preparation and prosecution at the Korean Intellectual Property Office • Availability searches, clearance searches, prior art searches and assessment • Searches for prior-registered designs and for trademark availability and analyses • Drafting, preparing drawings, filing, reviewing and amending claims and descriptions • Reviewing and responding to office actions • Requesting re-examination following final rejections • Freedom-to-operate investigations and analyses of technology trends • Provision of information on third-party pending patent applications • Evaluation of technology and IP assets, technology transfer • IP licensing
Specialties NAM & NAM has one of the largest and most complete IP practices in South Korea, covering all forms of intellectual property and all major areas of technology, with a particular focus on the fields of electronics, artificial intelligence, biology, mechanics, branding protection, trademarks and designs.
Appeals/trials before the Intellectual Property Trial and Appeal Board • Appeals against decisions of refusal • Appeals against final rejections • Appeals against decisions of dismissed amendments • Administrative cancellation trials • Correction and invalidation trials
Pre-filing application review • A pre-filing review system is applied to adapt patent applications prepared in other countries to best fit Korean patent practices. • This includes a review of the claims, alternative forms of IP protection, the possibility of expedited examination and subject matter suitability. • Amendments to the claims are recommended to conform to local practices.
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• Confirmation of scope of right trials • Invalidation of correction trials Customs • Visiting Customs and providing IP rights holders with useful information, including appraisal results, photos and identity of consignors/consignees • Devising strategies to combat infringers and/ or counterfeit goods based on statistics and other information • Sending cease and desist letters and/or taking legal action, including civil suits and criminal accusations • Conducting training sessions for customs officers to improve their knowledge and skills in discerning genuine and counterfeit goods Court proceedings • IP dispute arbitration, litigation and criminal accusations • IP trials, invalidations, cancellations actions and oppositions • Trade secret disputes, copyright disputes, domain name disputes • IP enforcement, injunctions
Main address 95 Seosomun-Ro Jung-Gu Seoul, 04516 South Korea T +82 2 753 5477 F +82 2 753 7315 E clients@nampat.co.kr Professional contacts Ben (Beyong-ho) Yuu Managing partner E byuu@nampat.co.kr Sung-wook Kim Partner E kimsw@nampat.co.kr
NAM & NAM always strives for excellence in line with the firm’s motto: “PAVE the way for client success,” where PAVE stands for prestigious, accessible, value-adding and effective. Acting as a bridge between our clients and their IP success in South Korea, we encourage you to experience our specialised, innovative and high-quality services.
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NTD Intellectual Property Attorneys www.chinantd.com
Established in 1987 in Hong Kong, NTD is the only private one of the earliest four Chinese IP firms licensed by government to provide IP services for foreign clients. As one of the leading IP firms in China, NTD has • 500+ Professionals and support staff • 184 Patent Attorneys • 63 Trademark Attorneys • 51 Lawyers • 3 offices in China - Beijing, Shanghai and Hong Kong • 3 liaison offices Silicon Valley, Tokyo and Munich Last year, we handled • Patent: 9,000+ new filings and 14,000+ OAs per year • Trademark: 20,000+ per year (opposition, invalidation and review cases over 5000) • Investigation and AIC actions: 200+ per year IP Lawsuits: 400+ per year Our services We are a full-service IP law firm that can meet all of our clients’ diverse needs in the field of intellectual property. Our services include patent prosecution and invalidation; trademark registration, opposition and cancellation; copyright and domain name registration; anti-counterfeiting investigation; administrative raid action; IP litigation; customs protection; IP searches and analysis; watch services; IP consultation; IP licensing and assignment; and contract dispute arbitration. We provide services in Chinese, English, Japanese, German and French. Our patent attorneys cover a broad range of technical fields, including computer science, networks, telecoms, electrical engineering, semiconductors, optics, mechanical engineering, automotive technics, machinery, environment engineering, material science, biotech, pharmaceuticals, chemistry, etc. Among them, there are 73 litigation patent attorneys, who can represent clients before the courts in patentrelated litigations. Our competitive edge • One-stop IP service – we can provide services in all areas of IP related matters.
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“Low rate of turnover means that patrons know and trust their attorneys… Global leaders in chips and computers highlight the list of applicants instructing NTD” • Stable team of professionals – over half of our attorneys and paralegals have worked at NTD for more than 15 years. The same team continually works for the same client. • Teamwork based on strategic thinking – attorneys in patent, trademark and legal teams work closely, always standing in clients’ shoes and targeting clients’ core value. • Wide coverage of technical areas and deep comprehension of complicated technologies – our attorneys keep on learning new technologies and can fully understand the technical difficulties in patent prosecution, invalidation and litigation. • Reliable management system – the IP management system developed from our years of practice help to avoid human errors. • NTD IP Institute – we have an internal institute for training and academic research updating our people on the latest legal developments. Our philosophy Our goal is to be a reliable service provider in the area of IP law, enabling clients to handle their IP affairs in China efficiently and simply, while simultaneously maximising clients’ legal interests and minimising their costs. Awards and honours • Patent Firm of the Year (Asia IP) • Licensing & Franchising Firm of the Year (Asia IP) • Ranked Tier 1 for trademark prosecution and strategy (WTR 1000 2021)
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• Recommended firm for Chinese patent prosecution in (IAM Patent 1000 2020) • Ranked Tier 1 for trademark prosecution and strategy (WTR 1000 2020) • Chinese Trademark Administrative Litigation Agency Top 10 (IP HOUSE 2020) • Chinese Patent Administrative Litigation Agency Top 10 (IP HOUSE 2019) • Chinese Trademark Administrative Litigation Agency Top 10 (IP HOUSE 2019) • Ranked gold for trademark prosecution and strategy (WTR 1000 2019) • Recommended firm for Chinese patent prosecution in (IAM Patent 1000 2019) Commitment to the public NTD is also committed to public services and our staff members are actively involved in various public service activities. We have made donations to help those affected by serious disasters – not only in China, but also in other countries. Legal services are provided free of charge to some institutes, the disabled, students and other individuals.
Main address 10th Floor Tower C Beijing Global Trade Centre 36 North Third Ring Road East Dongcheng District Beijing 100013 China T +86 10 6361 1666 F +86 10 6621 1845 E mailbox@chinantd.com Professional contacts June Wang Senior partner E june@chinantd.com Christopher Shaowei Senior partner E Shaowei@chinantd.com Heather Lin Senior partner E heather@chinantd.com Other offices Hong Kong, Munich, Shanghai, Silicon Valley, Tokyo Sample client list • Bosch • DuPont • Henkel • Intel • Microsoft • Panasonic • Pfizer • Philips • Porsche • Qualcomm
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Obhan & Associates www.obhanandassociates.com
Obhan & Associates is a reputed, skilled and professionally managed law firm with expertise in IP and corporate law. With a team of highly qualified and experienced legal professionals, the Obhan team offers a one-stop solution for services pertaining to IP and corporate law. The firm stands out for its approach towards understanding the requirements of a client and providing unique solutions with a quick turn-around time. With offices at New Delhi, Pune and Bangalore, the Obhan team advises numerous domestic and international clients, including some of India’s leading business houses and several Fortune 500 companies that have entrusted their entire patent portfolio to the firm. The team provides its expertise to these clients on IP strategy, prosecution, enforcement and portfolio management. The synergies between the IP and corporate law teams have been a key strength of Obhan, enabling the firm to advise clients on all aspects of their transactions and enhance the value of their businesses. The Obhan team is recognised for delivering excellent legal strategies and commercially viable advice within prescribed timelines. Awards The firm has regularly been recognised as a leading IP practice in India by several international legal publications, as illustrated below. 2021 • Asialaw Profiles– Asia’s leading lawyer for business • The Legal 500 – Asia Pacific • Chambers Asia 2020 • Benchmark Litigation Asia-Pacific Awards – Impact case of the year • Chambers Asia – Asia’s leading lawyer for business • IAM Patent 1000 – The World’s Leading Patent Practitioners • Managing Intellectual Property – IP Stars • The Legal 500 – Asia Pacific 2019 • Chambers Asia – Asia’s leading lawyer for business
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“Multinationals entrust it with their entire patent portfolio year after year… Sound legal strategies and commercial advice” • IAM Patent 1000 – The World’s Leading Patent Practitioners • Managing Intellectual Property – IP Stars • The Legal 500 – Asia Pacific 2018 • Chambers Asia – Asia’s leading lawyer for business • IAM Patent 1000 – The World’s Leading Patent Practitioners • Managing Intellectual Property – IP Stars • The Legal 500 – Asia Pacific • Best Law Firm for Women by Vahura – Best Law Firms to Work Rankings • Recognised as one of the best workplaces in the Vahura Best Law Firms to Work Ranking 2018, in the Boutique Law Firms category • Featured in the Top 5 Best Law Firms in India for Culture, Firm Leadership, Satisfaction, Pride, Rewards & Recognition and Work-Life Balance by Vahura 2017 • Chambers Asia – Asia’s leading lawyer for business • IAM Patent 1000 – The World’s Leading Patent Practitioners • Managing Intellectual Property – IP Stars • The Legal 500 – Asia Pacific 2016 • Chambers Asia – Asia’s leading lawyer for business • IAM Patent 1000 – The World’s Leading Patent Practitioners • The Legal 500 – Asia Pacific
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2015 • Chambers Asia – Asia’s leading lawyer for business • IAM Patent 1000 – The World’s Leading Patent Practitioners • Managing Intellectual Property – IP Stars
Main address N – 94 Second Floor Panchshila Park New Delhi 110017 India
2014 • Chambers Asia – Asia’s leading lawyer for business • IAM Patent 1000 – The World’s Leading Patent Practitioners • Managing Intellectual Property – IP Stars
T +91 11 4020 0200 F +91 11 4020 0299 E email@obhans.com
2013 • Chambers Asia – Asia’s leading lawyer for business • IAM Patent 1000 – The World’s Leading Patent Practitioners • Managing Intellectual Property 2012 • Asialaw Profiles • Chambers Asia – Asia’s leading lawyer for business • Managing Intellectual Property
Professional contacts Essenese Obhan Managing partner E essenese@obhans.com Sample client list • Aditya Birla Group • Agfa Group • G4S Plc and G4S Security Solutions Pvt Ltd • Mitsubishi Heavy Industries Ltd • Pine Labs • Steer Group • Tata Chemicals Ltd • The Doon school
2011 • Chambers Asia – Asia’s leading lawyer for business • Managing Intellectual Property 2010 • Chambers Asia Pacific • Managing Intellectual Property
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Oh-Ebashi LPC & Partners www.ohebashi.com
Oh-Ebashi LPC & Partners is a full-service law firm with over 150 attorneys. It was originally established in Osaka in 1981 and now has an equivalent-sized operation in Tokyo. Oh-Ebashi was the first Japanese law firm to open an office in China. With its Nagoya office, Oh-Ebashi currently has offices in four locations. Oh-Ebashi has been providing its clients with the best legal advice and solutions for decades and is committed to consistently exceed its clients’ expectations and be their ideal legal partner. IP practice group Oh-Ebashi strategically supports its clients, from planning/executing contracts to filing or defending against lawsuits. It also assists in drafting and negotiating contracts relating to licensing of copyright, trademarks, patents, know-how and other IP rights. Oh-Ebashi has extensive experience in handling many types of transaction, both internationally and domestically, in various fields of business. Our highly specialized lawyers are able to provide quality legal services and competently assist clients in achieving their objectives. IP transactions Oh-Ebashi has extensive experience in various fields of business, including chemistry, pharmacy, biotechnology, electrical machinery and other machinery, IT, sports and entertainment. In addition, Oh-Ebashi has substantial experience in handling IP transactions such as M&A and finance projects, in disputes involving antitrust laws or the Companies Act, or in tax matters. Unfair competition The Unfair Competition Prevention Act aims to protect credibility, trade secrets and other such commercial assets by regulating acts of unfair competition and should be complied with regardless of industry or business type. OhEbashi has handled a large number of counselling activities, negotiations and lawsuits where unfair competition was an issue and has a track record of handling noteworthy cases. In addition, OhEbashi is engaged not only in disputes concerning unfair competition, but also in providing advice on internal information management to properly protect trade secrets.
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“Pharma-related patent disputes on behalf of a largely domestic clientele… Practice is not limited to Japan ” Licence and franchise Licence agreements cover various matters, including patents, utility models, design rights, trademarks, copyright, publicity rights and knowhow. In franchisee agreements, various elements are organically integrated such as the purchase of goods or materials, licensing of trademarks and know-how, and managing consultations provided by the franchisor. These matters relate to the Civil Code, the Commercial Code, the Trademark Act, the Unfair Competition Prevention Act, the Anti-trust Act and the Act on Specified Commercial Transactions. We have advised well-known franchisors in many projects and have extensive experience in drafting and reviewing legal documents on franchise and supply agreements, and in providing advice on the franchising business. Oh-Ebashi also has expertise in dispute resolution relating to franchise agreements, including disputes on the management consultations provided by the franchisor to the franchisee, and the termination of franchise agreements. We have achieved considerable success advising on licence agreements in M&A transactions and in other corporate transactions. These licence agreements cover domestic as well as cross-border matters. Oh-Ebashi is capable of providing legal support to its clients in the execution of contracts or resolution of disputes, according to their needs, both domestically and abroad, through our extensive network of law firms all over the world. IP dispute resolution For domestic IP disputes, various types of proceedings, such as infringement lawsuits, trials
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before the Japan Patent Office, litigation rescinding trial decisions and injunctions on importations at customs, may occur. In addition to our accomplishments in infringement lawsuits, we have also achieved considerable success in handling disputes on inventions developed by employees, disputes over who the inventor is and litigation relating to extensions in the duration of the registration of pharmaceutical products, litigation or arbitration arising from licence agreements, and litigation under unfair competition prevention laws. For international IP disputes, we provide comprehensive legal support to companies involved in various cases, such as patent lawsuits that are simultaneously filed overseas (including in the United States and Europe), as well as IP enforcement actions (litigation/administrative enforcement) and trademark invalidation litigation in Asia. In handling cross-border disputes over intellectual property, which occur in the global business developments of companies, we assist in resolving such disputes effectively and strategically, making use of our strong network of law firms all over the world.
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Main address Nakanoshima Festival Tower 27F 2-3-18 Nakanoshima Kita-ku Osaka 530-0005 Japan T +81 6 6208 1500 F +81 6 6226 3055 E general_toiawase@ohebashi.com Professional contacts Takamitsu Shigetomi Partner E general_toiawase@ohebashi.com Other offices Tokyo, Nagoya, Shanghai
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Panawell & Partners LLC www.panawell.com
Panawell Intellectual Property – which combines IP firm Panawell & Partners LLC and law firm Panawell & Partners – is committed to providing efficient, quality and professional IP services to local and international clients. Panawell’s services cover IP counselling, patent and trademark filing and prosecution, anti-unfair competition, trade secrets protection, freedomto-operate analyses, IP transactions, enforcement and litigation. Panawell has a strong, professional team of IP attorneys who have graduated from famous Chinese universities with master’s or doctoral degrees in science, technology and law. The firm’s professionals have been trained in China, the United States, Germany and the United Kingdom, and have significant expertise in IP practice, particularly with regard to patent and trademark prosecution and litigation, in which most of the firm’s partners have over 20 years’ experience. Panawell has been providing tailored services and best solutions to different clients to achieve well-established and better-enforced IP rights in China and internationally, satisfying clients’ diverse business needs and increasing their investments’ value. Panawell and its attorneys are the members of the All-China Patent Attorneys Association, China Trademark Association, Beijing Patent Attorneys Association, Capital Intellectual Property Services Association, the International Association for the Protection of Intellectual Property China, Licensing Executives Society China, the International Federation of Intellectual Property Attorneys China and the British Chamber of Commerce in China.
“Comfortable counselling on the full spectrum of IP matters… Crafts watertight patent applications to the satisfaction of local and overseas inventors”
Our commitments • We respond swiftly to your diverse needs with optimal solutions. • We leverage our team’s talents to provide comprehensive and top-quality legal services. • We boost your interests by tailoring our services. • We maximise cost reduction to provide the best value services.
Trademark services • Filing for registration (including domestic filing, overseas national filing and international filing) • Re-examination and court appeals against rejections • Opposition proceedings and court appeals against official decisions • Cancellation proceedings and court appeals against official decisions • Advice, drafting, negotiation and filing of assignments of trademark applications and registrations • Advice, drafting, negotiation and recordal of licensing agreements
Patent services • Drafting, filing and prosecuting • Re-examination proceedings and court appeals against rejections
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• Invalidation proceedings and court appeals against official decisions • Patent Cooperation Treaty application filing and prosecution • Advice, drafting and negation of licences and assignments • Administrative proceedings against infringement or other disputes • Infringement litigation • Patent annuities payment • Patent search and opinion • Patent watch • Infringement analysis • Market clearance search, investigation and analysis • Patent protection and strategy advice • Hong Kong and Macau patent and design registration
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• Renewals, change of applicants’ or registrants’ names and addresses • Administrative actions against infringement • Civil and criminal actions against infringement • Watch service • Trademark protection and strategy advice • Hong Kong and Macau trademark registration Litigation services • Invalidation proceedings and court appeals against official decisions • Re-examination proceedings and court appeals against rejections • Infringement litigation • Re-examination and court appeals against rejections • Opposition proceedings and court appeals against official decisions • Cancellation proceedings and court appeals against official decisions • Copyright litigation in courts at different levels • Computer software litigation in courts at different levels Other services • IP rights customs protection • IP rights due diligence investigation and legal opinion • Domain name registration, dispute resolution and enforcement • Registration and protection for integrated circuits topography • Counselling on IP rights protection for domestic and overseas companies • Trade secrets and trade dress protection • Anti-unfair competition • IP rights training • IP assets management
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Main address 1002 -1005 10th Floor China Life Tower, 16 Chao Yang Men Wai Street Chaoyang District Beijing 100020 China T +86 10 8525 3778 F +86 10 8525 3671 E mail@panawell.com Professional contacts William Wenquan Yang Partner E williamyang@panawell.com Shute Shu Xu Partner E shuxu@panawell.com Other offices Chengdu Sample client list • E Ink Corporation • Eaton Corporation • Institutes of CAS • Kimberly-Clark Worldwide • Taikang Group
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PatentSino IP Firm www.patentsino.com
Established in 2012, PatentSino is a full-service IP law firm based in Beijing, with branch offices in Hefei, Xi’an and Dalian. The firm has more than 200 staff members in total, including 124 patent attorneys and patent engineers, and nine trademark attorneys. All of our partners have been working in the IP field for more than 15 years and have extensive experience in patent prosecution and related professional services in China and abroad. The majority of our patent attorneys hold doctorate or master’s degrees and have overseas education experience. Our team can also work in numerous languages, including English, Japanese, German, French and Korean. Our aim is to provide high-quality IP services to our domestic and international clients. We provide the full spectrum of IP services relating to the prosecution and litigation of patents, freedom-to-operate analysis, trademarks, copyright and domain names. Our professional team covers all technical fields, such as chemicals, biotechnology, pharmaceuticals, materials, mechanical, medical devices, automotive, semiconductors, optics, aviation, electrical and telecommunications. We serve a diverse range of domestic and international corporations and individuals, including start-ups, well-known domestic entities, universities and Fortune 500 multinationals. Over the years, we have successfully assisted our clients in filing a large number of patent applications in China and abroad. We are one of the few Chinese law firms to have created their own IP electronic system and software database. Our system is designed to manage our cases and record clients’ information and needs. What’s more, the system is connected with the e-filing system of the China Patent Office, which makes capturing information and downloading documents from the patent office seamless. Teamwork, technical and interdisciplinary exchange, as well as constant training of our staff, guarantee the quality of our services and the success of our clients. Our motto: “High quality is the key factor for the success of the firm and our clients.” Practice areas • Drafting and prosecution of Chinese and Patent Cooperation Treaty applications
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“Highly professional, fast and their cost efficiency is excellent… Is making its biopharma team a strategic priority ” • Filing and prosecution of patent applications worldwide • Re-examination, invalidation and appeals • Legal opinions • Patent litigation • Patent searches • Freedom-to-operate searches • Patent transactions • IP portfolio management • IP consulting • Trademarks • Domain names • Copyright Strengths and qualities We have strict quality control systems in place – for example, a double due date monitoring system, an attorney workload control system, a doublechecking system, expert teams for complex cases and translation control. We focus on clients’ interests, offering them high-quality services. Our grant rate for invention application is over 80%, which is much higher than the average rate. Our collaboration with IP firms all over the world has helped us to establish a solid network, enabling us to ensure international representation for our domestics clients. Honours and awards • “AAAAA Agency”, Beijing Patent Attorneys Association • “Leading IP Firm”, Beijing Patent Attorneys Association, 2019-2020 • “National Famous IP Firm”, China Central Television • Recommended firm, IAM Patent 1000, 2020
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Affiliations of team members • Board member of the Beijing Patent Attorneys Association • Board member of the All China Patent Attorneys Association • Board member of the Capital Intellectual Property Services Association • Board member of the China chapter of the International Association for the Protection of Intellectual Property
Main address 4th floor Zhongyuan Technology Building 3 No 53 Xiaoying North Road Chaoyang District Beijing 100101 China T +86 10 8410 9559 F +86 10 8410 9553 E patentsino@patentsino.com Professional contacts Jifu Liu President E jifuliu@patentsino.com Chunwei Wang Vice president E chunweiwang@patentsino.com Other offices Dalian, Hefei, Xi’an
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Patentwire Intellectual Property Attorneys www.patentwire.co.in
Patentwire is an IP firm based in New Delhi, India, with a focus on IP generation, protection, enforcement and commercialisation. The firm is dedicated to providing expert advice and 360-degree support in all areas of intellectual property and business. The firm’s expertise covers a wide range of technical fields, including pharmaceuticals, chemistry, mechanics, electrics, life sciences, biotechnology, electronics, telecommunication, software and information technology. Patentwire is part of a structured group of in-house subsidiary firms – Patentwire covers IP filing and prosecution, Newtons Law LLP handles litigation, dispute resolution and advisory, IPBazzaar deals with technology transfer and commercialisation and Inkpat provides prototyping and 3D modelling services. Thus, Patentwire can accompany its clients all the way on the journey from innovation to successful commercialisation. As it acts for a large number of technology-driven companies and R&D institutes, the firm puts particular emphasis on technology transfer, M&As, valuation, research collaboration, due diligence, audit and IP training – among other services. The firm helps the R&D departments of various institutions to formalise their IP policies, research strategies and self-sustenance. Patentwire’s services also focus on the latest technology developments, strategic protection and management of intellectual property, technology marketplace searches, identifying and analysing new opportunity areas, technology transfers and commercialisation. The firm believes in a mind-to-market approach and provides efficient and effective solutions. About the team Founded in 2008, Patentwire is headed and managed by its founders in tandem. Lalit Ambastha and Shruti Kaushik complement each other in a manner where one holds command under the supervision of the other to ensure a single point of power in any given area of management. Mr Ambastha is also a consultant with the Ministry of Micro, Small and Medium Size Enterprises and the Ministry of Skill Development and Entrepreneurs. Both Mr Ambastha and Ms Kaushik are guest lecturers at the Indian Institutes of Technology (IITs), the Indian Institute of Foreign Trade, Jamia Hamdard, the National Institute
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“Patent drafting and prosecution are PatentWire’s specialties… They make themselves available and take the time to understand a client’s wants” for Entrepreneurship and Small Business Development, the Institute of Company Secretaries of India and the Rajiv Gandhi National Institute of Intellectual Property Management, as well as regular speakers at various conferences organised by public and private institutions. In addition to its founding partners, Patentwire has four strategic senior partners, six patent attorneys and 15 IP professionals. The team is made up of the best mix of technology experts with years of experience in patent prosecution and support. The team’s backgrounds cover fields as varied as electronics and communication, mechanical engineering, very large-scale integration design, pharmaceuticals, life sciences, chemistry, biotechnology, automobiles, metallurgy and applied sciences. Existing client sectors The firm is honoured to represent a variety of clients. In the domestic market, Patentwire acts for premier academic institutions such as the IITs and Hamdard University. In the mid-level enterprises sector, the firm deals in sectors including auto-components, green technology, electric vehicles, e-waste recycling, pharmaceuticals, neutraceuticals, cosmetics, medical devices, the Internet of Things, automation, textiles and authentication solutions – to name a few. The firm is proud to serve a large urban transport corporation in the Delhi region, as well as some venture capitalist firms. Overseas clients operate in sectors such as aviation, mobility solutions,
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defence, utility products, petroleum and refinery, industrial chemistry, drug and cosmetics, diagnostic and medical devices, among others. The present domestic-to-overseas clients ratio at Patentwire is 70:30. The firm is active in over 65 countries for its Indian clients and has association with more than 100 foreign associates. It represents many government and non-government bodies and institutions. Practice areas • Patent drafting, filing and prosecution • Trademark filing and prosecution • Design filing and prosecution • IP advisory • Opposition and appeals (patent and trademark) • Copyright • IP litigation • Technology transfer • IP valuation • IP due diligence and audit • Commercialisation
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Main address A-199 Ground Floor Defence Colony New Delhi 110024 India T +91 11 4036 6109 F +91 11 2433 0039 E desk@patentwire.co.in Professional contacts Lalit Ambastha Founder E lalit.ambastha@patentwire.co.in Shruti Kaushik Managing director E k.shruti@patentwire.co.in Other offices Bangalore, Indore Sample client list • BIRAC • Delhi Metro Rail Corporation • IKEA • Indian Institute of Technology • Northern Railways • Novartis • Viber
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PC & Associates www.pcassociates.cn
PC & Associates (PCA), together with its members, is a distinctly integrated service provider for IP rigths with patents and trademarks at its core. It provides clients with comprehensive and multidimensional quality services in IP agency, litigation and operation. Practice areas • IP clearance searches – we conduct pre-filing patent and trademark clearance searches and portfolio searches, and report search results with advice promptly. In recent years, we have produced more and more freedom-tooperate searches and analyses in response to increasing demand. • Filing and prosecution of patents and utility models – we prepare and file national patent and utility model filings before the China National Intellectual Property Administration (CNIPA) and national phase entries for Patent Cooperation Treaty patent validations in China. Also, we draft patent description and claims and provide technical translations in Chinese, English, Japanese and German. • Filing and prosecution of designs – we prepare and file national designs before the CNIPA and monitor prosecution progress up until issuance of the registration certificate. • Filing and prosecution of trademarks – we prepare and file national trademark filings before the CNIPA and Madrid international trademark filings to WIPO with designated member countries. We draft lists of goods and services, suggest amendments according to local standard, suggest Chinese translation and/ or transliteration of Latin marks, and monitor prosecution progress up until issuance of the registration certificate. Also, we file oppositions, cancellations or invalidations; handle trademark renewals; record assignments, licences and changes of name and address. • Filing responses to office actions or appeals against rejections – we report official notifications from the CNIPA with comments promptly, and timely file responses or appeals upon instructions. • IP enforcement – we draft and send cease and desist letters, conduct investigation to collect evidence, or file complaints with the Chinese administrative organisations such as the
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“A firm whose star is rising in the Chinese litigation market… Offers the full gamut of IP services” administrations for industry and commerce and Customs. • IP litigation – our legal department has extensive expertise in handling administrative and civil lawsuits in China relating to patent, trademark and anti-unfair competition issues. We have in particular gained an excellent reputation for dealing with patent infringement matters. • IP operation – we provide complete services relating to consultation, navigation, standard compliance, licensing, trusteeship, evaluation and securitisation of intellectual property. Specialised IP team Headquartered in Beijing, the firm has offices in Shanghai and Shenzhen, and representative offices in Hong Kong and San Francisco. The firm has also set up an operation centre in Hefei, Anhui Province, and a branch in Yichang, Hubei Province. The total staff of PC & Associates is about 100, including 36 patent attorneys, 12 trademark attorneys and 24 attorneys at law, 16 of whom have two or more qualifications. In addition to excellent educational backgrounds and professional skills, senior attorneys have also worked in top-tier law firms or IP agencies, or in government departments before joining PC & Associates; they have also accumulated abundant experience during their many years of practice. Some have also studied and worked overseas. Besides their native Chinese, they also speak English, Japanese and German.
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Outstanding IP litigation The firm’s IP litigation practice is well established. Since 2008, at least eight patent litigation cases represented by the firm have been selected as annual typical cases by the Supreme People’s Court and the ‘use environment feature’ proposed by PCA in these cases has been adopted and written into judicial interpretation.
Main address 9th Floor Scitech Tower 22 Jian Guo Men Wai Avenue Beijing 100022 China T +86 10 6559 4091 F +86 10 6559 4092 E mail@pcassociates.cn Professional contacts Wei Dong Managing partner E mail@pcassociates.cn Zhao Yan Senior partner E zhaoyan@pcassociates.cn Other offices Hong Kong, Shanghai Sample client list • Amazon • BYD • CIMC • DJI • Essilor • Mindary • Nvidia • Shimano • SMIC • SONY • Supor • Valeo
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Perfexio Legal www.perfexiolegal.com
Established in 2011, Perfexio Legal is a full-service IP law firm based in New Delhi and Noida. The firm was conceived with a vision to deliver high-quality IP services. True to its vision, Perfexio Legal has developed a commendable practice and is actively involved in advising clients in every aspect of IP rights, including patents, trademarks, copyright and designs. The firm’s customised, ethical, wellresearched and time-critical services have secured several high-profile clients along the way. Into its tenth year of excellence, Perfexio Legal – with rich experience and expertise – has handled some of the country’s highest-stakes patent litigations in the fields of pharmaceuticals and agro-chemicals, including unprecedented and contentious issues pertaining to compulsory licence, equivalent Bolar provision and regulation pertaining to similar biologics in India. The primary focus of the IP litigation group is counselling, support and strategy in all kinds of IP litigation before all fora. The group also has extensive experience in handling enforcement of IP rights under the Customs Law before the customs authority. The transparency in business handling is reflected in the fact that the firm has restricted its patents services to only innovation-based companies. As a result, Perfexio Legal is able to handle any issue relating to conflict of interest with ease. The firm embodies and lives by its motto – “Changing side is no good for either of the sides”. The firm has a strong and highly experienced team of qualified attorneys, engineers, patent agents, trademark agents and paralegals. The firm’s competent patent attorneys/agents equipped with advanced degrees in science and engineering drive the patent practice, from patent prosecution right up to litigation, with thorough precision. The firm’s attorneys are fluent in English and Hindi. The firm’s skilled patents and designs groups provide comprehensive services including counselling, technical support and strategy making. The patents group is fully equipped to handle patent applications in all major fields of innovation and technology – namely, pharmaceuticals, biotechnology, software, electronics and telecommunication, automobiles, mechanical engineering, power sector, specialty chemicals, biomedical devices, food packaging technology and many more.
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“Strong reputation in patent oppositions, especially in pharmaceutical matters… Legal and technological expertise attracts businesses looking for solid patent protection strategies” The firm also has a well-established trademarks practice, which provides comprehensive services that include search and watch, filing and prosecution of applications and oppositions, postregistration maintenance, assignment, licensing, franchising, infringement and passing off action. The dedicated copyright group extends its services to litigation, counselling and strategy to fully secure its clients’ IP rights. The firm also offers patent drafting to its exclusive and selected clientele to ensure protection to some of their most challenging and path-breaking innovations. The firm further offers IP licensing services and advises its clients in relation to FRAND licensing issues in India. The firm’s various practice groups work in harmony to deliver customised and personalised IP solutions to its clients. The firm offers in-house associates a variety of challenging and interesting work assignments, a first-class training experience consisting of formal and informal training programmes, constructive feedback and evaluations to help with career development, and a supportive culture with mentoring and guidance. The firm is socially aware and proud to be given the chance to contribute through its small efforts as it believes in investing in the future to create a better tomorrow. The firm is sympathetic towards
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those who cannot afford legal services. For such cases, the firm provides pro bono services on an actual-need basis. Services • IP litigation and dispute resolution • IP licensing • Patents • Designs • Copyright • Trademarks and service marks • Plant variety protection law • Protection of geographical indications • Anti-counterfeiting • IP valuation • Antitrust/competition law • Customs enforcement • Patent analytics • Employment law • Labour law • Technology transfer • Technology maps • Investigations • Regulatory law
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Main address Advant Navis Business Park Tower B, B-203 2nd Floor Plot 7 Sector 142 Expressway Noida 201 305 India T +91 12 04343600 F +91 12 04343643 E mail@perfexiolegal.com Professional contacts Sanjay Kumar Managing partner E sanjay.kumar@perfexiolegal.com Other offices New Delhi
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RAHUL CHAUDHRY & PARTNERS www.rahulchaudhry.com
With a rich legacy of more than 37 years, Rahul Chaudhry & Partners is a leading full-service law firm. Having an experienced and proficient team of approximately 70 lawyers, including 10 partners and a support staff of around 115 personnel at two locations, Rahul Chaudhry & Partners is swiftly expanding to become one of the foremost legal advisory practices in India. The firm has a dynamic business solution practice aimed at providing clients with comprehensive legal advisory services and solutions in multiple practice areas, across all industrial sectors. The firm was established in 1983 as Lall Lahiri Salhotra (LLS). In July 2007 the management was taken over by Rahul Chaudhry, who is among the most preeminent names in IP law in India. Mr Chaudhry acquired 100% ownership rights in LLS on 31 March 2013 and, as part of the said transition, the name of the firm was changed to Rahul Chaudhry & Partners on 1 July 2018. The team (its composition and structure — including the partners and support staff) is the same as that of LLS. Rahul Chaudhry & Partners has a reputation for providing exceptional legal services and is renowned for its commitment to excellence. The firm offers detailed and individual advice for protecting its clients’ ideas, innovations, complex developments and know-how. The firm supports its clients in obtaining such protection by handling all facets of IP-related work, including creation, management and protection of largescale IP portfolios, enforcement, transactions including licensing, assignments and acquisitions, monetisation, strategy and planning for long-term IP optimisation. The firm’s comprehensive range of legal services is custom designed to meet clients’ needs and exceeds their expectations. The firm has a young team of fervent and erudite lawyers skilled and experienced in all fields of law. In addition to being proficient in tackling all kinds of complex legal problems, the team has extensive experience in navigating trademark, patent, copyright and design law in India and internationally, as well as a widespread network of associates, which enables them to protect the IP rights of Indian clients across the world. Further, the firm provides the entire range of IP services to international clients in
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“Outstanding results in terms of obtaining patent grants for clients… Customised services, detailed opinions on the best way forward and quick turnaround times” Pakistan, Nepal, Bhutan, Bangladesh, Myanmar, Sri Lanka and the Maldives. Over the years the firm has developed a unique skillset, specialising in the prosecution, enforcement and litigation of IP rights in India, as well as several other jurisdictions, offering reliable legal counsel to both national and international clients. The firm has been responsible for IP portfolios of some of the most prominent names among Fortune 500 companies and has assisted a large number of clients before the courts, as well as in quasi and non-judicial forums. The firm’s commitment to providing legally and strategically sound advice to clients is what sets it apart. Mr Chaudhry, the firm’s managing partner, has a comprehensive repertoire of skills and experience in the management and enforcement of IP rights; extensive experience in assessing strategic innovation and legal implications enables him to advise his clients (Indian and overseas) on a range of issues and transactions relating to IP prosecution; enforcement; litigation strategies; portfolio audits; due diligence for acquisitions/ divestitures; developing strategies for acquiring, enforcing, maintaining and assigning intellectual property; international trademark registrations under the Madrid Protocol; design patent; copyright; unfair competition; investigations; negotiations vis-a-vis prior third-party rights; implementing global filing strategies; and corporate IP transactions agreements. Mr Chaudhry considers business sensitivities and
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goals, while crafting comprehensive IP protection and enforcement strategies, both short and long term, so that clients can secure and maximise the value of their critical IP assets. This has earned him and the firm immense trust of global industry giants in assisting them in protecting and furthering their business goals.
Main address RCY House Plot No B-28 Sector 32 Institutional Area Gurgaon 122001 India T +91 124 403 6821 F +91 124 403 6823 E mail@rahulchaudhry.com Professional contacts Rahul Chaudhry Managing partner E rahul@rahulchaudhry.com Other offices New Delhi
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RK Dewan & Co www.rkdewan.com
RK Dewan & Co (RKD) is an Indian IP powerhouse that delivers innovative and practical solutions to actively support the business goals of more than 4,000 clients in all industry verticals, from individuals to Fortune 500 companies. With seven offices in India, RKD’s results-driven litigation teams ensure effective pan-India protection and enforcement of clients’ rights. RKD’s responsive searching, prosecution and commercial divisions are active in India and more than 125 other countries through carefully screened associate networks. Sector expertise RKD serves clients across all industry sectors, including: • software, information technology, electronics and telecommunications; • automobiles; • heavy engineering; • chemical engineering; • building and construction; • defence equipment; • power and alternative energy; • petrochemicals and specialty chemicals; • pharmaceuticals and biomedical devices; • biotechnology and biochemistry; • nanotechnology; • garments and textiles; • food packaging technology; • agriculture; • process equipment; • fast-moving consumer goods; • travel and hospitality; • education; • health, fitness and wellness; • sports, entertainment and media; • fashion and luxury goods; and • finance and banking. RKD routinely handles complex IP matters relating to inter-disciplinary subjects. People RKD has a first-class team of more than 170 highly trained and dedicated lawyers, patent attorneys, trademark attorneys, engineers, scientists, paralegals and administrative staff equipped to deliver promptly and efficiently.
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“Works diligently to maintain high standards… Fortune 500 companies come to the firm for everything from prosecution to litigation and transaction work” The RKD team is led by Mohan Dewan, a visionary with an extraordinary passion for intellectual property and 50 years’ experience in prosecution and litigation. Niti Dewan is the dynamic head of patents and Disha Dewan represents the third generation in this family firm. The RKD team also includes a number of former senior patent controllers and trademark examiners who offer a wealth of insight about the work of the Indian IP offices. Values RKD is unique for its large number of domestic clients, including top Indian companies that have thoroughly vetted us and continue to entrust us with their matters – some for many decades. We believe that this is the best testament to the superlative quality of our work. Serving a large domestic clientele means that we are well versed in the nuances of Indian IP law and practice. We have a seamless infrastructure and are ISO 9001:2015 certified in our quest to ensure quality control. We are highly responsive and transparent in our dealings. We are creative and enjoy thinking outside the box to provide innovative solutions tailored to suit specific client requirements. We are also proactive in providing clients with timely and honest advice.
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Key service offerings RKD advises clients in all verticals of intellectual property, including patents, trademarks, copyright, designs, geographical indications, plant varieties and traditional knowledge. On the patent side, RKD is one of the largest filers of domestic Indian patent applications and the top Patent Cooperation Treaty filer in India (Managing Intellectual Property Patent Cooperation Treaty Rankings 2016 to 2018). RKD has a robust in-house patent search team that undertakes prior art, patentability, invalidation and freedom-to-operate searches for all jurisdictions, and provides comprehensive, well-presented reports accompanied by succinct legal opinion. RKD also works with clients on technology maps and white space analysis to inform the direction of R&D teams. RKD drafts more than 800 new patent specifications each year covering myriad technology areas. On the trademark side, RKD is a pioneer of trademark anti-counterfeiting activity in India. RKD has a network of diligent investigators and local lawyers across the country to unearth counterfeiting and take timely and efficient action in any Indian court (including all 645 district courts). RKD handles a large number of Madrid Protocol provisional refusals and provides a quick turnaround time for substantive responses. Regarding pan-India litigation, RKD consistently formulates and executes winning India-centric strategies for infringement and anti-counterfeiting actions. RKD is equipped to litigate at the IP Registries, tribunals, and at all tiers of the Indian judiciary. RKD has been instrumental in assisting clients in exploiting their IP assets to the maximum through IP commercialisation including licensing, assignment, franchising and technology transfer. RKD has assisted clients with IP valuation, auditing and due diligence in order to raise funding and facilitate mergers and acquisitions or joint ventures. RKD has been recognised as a top-tier law firm by various organisations, including The Legal 500, Chambers & Partners – IP and Life Sciences, Asialaw profiles, WTR 1000 and IAM Patent 1000.
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Main address 5th Floor Podar Chambers S A Brelvi Road Fort Mumbai 400001 India T +91 22 6177 5300 F +91 22 2265 0159 E dewan@rkdewanmail.com Professional contacts Mohan Dewan Principal E dewan@rkdewanmail.com Niti Dewan Head of patents and business development E niti_dewan@rkdewanmail.com Disha Dewan Head of global business operations E disha@rkdewanmail.com Other offices Bengaluru, Chennai, Indore, Kolkata, New Delhi, Pune Sample client list • Emerson • Gharda Chemicals • RIL – Reliance Industries Limited • Tata Consultancy Services • VFS Global
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Saegusa & Partners www.saegusa-pat.co.jp
Founded in 1946, Saegusa & Partners is considered a leader among professionals and in-house counsels in Japan. Developing alongside Japan’s current patent system, the firm has grown from its beginnings in Kitahama, Osaka – one of the largest chemical and life sciences business clusters in Japan – to become one of the most renowned IP firms in the country. Saegusa, which also has offices in Tokyo steps away from the Japan Patent Office, boasts a team of 130 dedicated individuals (including around 50 IP attorneys), and can provide comprehensive coverage in technical fields ranging from stem cells to artificial intelligence. Although the majority of Saegusa’s clients are domestic, in recent years the firm has been increasingly recognised in the international market. For example, a partner leading the chemical and biotech department has been recognised in the 2019 and 2020 editions of Who’s Who Legal as a leading Japanese patent attorney due to his outstanding service and legal expertise. Saegusa thus works with a diverse array of international clients from various countries. These clients include many of the world’s leading companies, as well as highly active start-ups and prestigious universities. The firm assists its international clients in a variety of aspects, including conducting proceedings before the Japan Patent Office and the patent courts; providing validity and infringement opinions; and drafting English-language patent applications on the basis of inventor interviews. With nearly 30 skilled attorneys in its patent group led by nine highly experienced partners, Saegusa strives to provide its international clients with a new experience in IP service, based on the values outlined below. In their clients’ shoes No borders – no attorney in Saegusa focuses only on international clients; they also assist the firm’s domestic clients with prosecution, oppositions and litigation abroad (in the United States, Europe, China and Korea in particular). In addition, the firm frequently sends hand-picked attorneys to overseas IP firms for year-long, on-the-job training programmes in order to learn the local IP practice. These invaluable, broad-ranging experiences enable Saegusa’s attorneys to provide advice on Japanese patent matters, while also putting
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“Responsible, reliable and very experienced, with good advice on difficult cases… Quickly gaining ground worldwide” themselves in the shoes of their international clients. A deep understanding of the differences between Japanese practice and other local practices enables the firm’s attorneys to ensure better service and thus satisfaction for all clients. Trust based on shared values Not merely a service provider – every attorney at Saegusa strongly believes that trust from clients enables them to provide better solutions, based on a better understanding of needs and seamless communication. Moreover, the firm’s attorneys believe that trust is built on shared values and, therefore, frequently travel abroad to meet with clients worldwide and nurture relationships. Saegusa’s core value – quality – is of utmost importance. Communication is key Nothing is lost in translation – international clients’ experience of patent services in Japan is often reported as frustrating because of communication problems stemming from differences in language and culture. It is for this reason that Saegusa – including the paralegals who communicate the most frequently with the firm’s international clients – strives to provide close communication while ensuring availability, friendliness, dependability, empathy and a willingness to do what’s necessary to please their international clients; every member of the firm always goes the extra mile. Saegusa combines close communication and thorough knowledge of Japanese practice to make a difference for all of the firm’s clients.
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Main address Kitahama Konishi Building 7-1 Dosho-machi 1-chome Chuo-ku Osaka-shi Osaka 541-0045 Japan T +81 6 6203 0941 F +81 6 6222 1068 E mail@saegusa-pat.co.jp Professional contacts Masaki Morishima Partner E m-morishima@saegusa-pat.co.jp Other offices Tokyo
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Satyapon & Partners Ltd www.satyapon.com
Satyapon & Partners is a full-service IP law firm based in Bangkok, Thailand. It offers services in all areas of IP law, including application and prosecution of patents, trademarks and designs, as well as IP searches, assignments, licensing, franchising, recordations, renewals, investigations, litigation and enforcement. The firm was founded by George Washington Law School graduate Satyapon Sachdecha in 1995. Over the years, the firm has developed into one of Thailand’s leading IP firms. It has a strong team of patent agents, technical associates and translators in all fields of technology. In October 2016 the patent team was strengthened further by the arrival of Verasak Maiwatana, who has over 35 years of invaluable experience gained at the Thailand Patent Office, first as an examiner and ultimately as its director. Satyapon & Partners endeavours to serve the best interests of its clients throughout the world by providing excellent quality services and highly customised solutions. Our team would be delighted to answer any inquiries regarding trademarks, patents, national phase PCT entries, design or any other IP matter in Thailand. Satyapon & Partners is pleased to serve all your needs and looks forward to being your trusted partner in IP protection in Thailand. The team Our team consists of three partners with over 75 years of combined experience in IP law, and over 20 attorneys, including five patent agents. Areas of practice The firm is among the top filers of trademark and patent applications in Thailand. It also handles numerous trademark, patent and design searches. As an example, the firm handles over 400 incoming PCT applications a year. It is one of the most active Thai firms involved in the enforcement of IP rights. It handles numerous police raids and customs seizures every year, mostly concerning trademark infringement. It also conducts investigations, makes traps purchases, sends cease and desist letters, participates in negotiations and meditations, and assists clients with publicity releases, warning advertisements and all other IP-related matters.
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“Unrivalled standard of diligent, ethical and professional services… First-rate services and advice in every respect” As the firm practises exclusively in the area of IP law, its members are highly experienced and boast an unrivalled depth of knowledge in the field. The firm understands the importance of intellectual property as one of its clients’ most valuable assets and aims to provide the highest standard of diligent, ethical and professional services in the best interest of its clients. Accolades In recent years, the firm has had the honour of being recognised as a Tier 1 firm by many legal ranking publications around the world, including World Trademark Review and The Legal 500. In addition, our managing partner was recently inducted into The Legal 500’s Asia Pacific Hall of Fame. The firm earned Patent Firm of the Year Thailand 2019 from AsiaIP Magazine for its record shattering patent seizure on behalf of Global Fortune 500 Japanese client Panasonic. The seizure made the headlines in Thailand, prompting secondary infringers which distributed the products to voluntarily remove all suspect inventory from their sales showrooms. Key clients Key clients include Aston Martin, Inditex (Zara), Pernod Ricard, Panasonic, Twitter, NFL Properties, Juventus Football Club, World Wildlife Fund, Anglo American (De Beers), the government of Chile, the government of Japan and Yamaha Motors. We represent many other global innovation leaders in many scientific fields for their patent work in Thailand, however under strict confidentiality agreements, particularly those in biotechnology and pharmaceuticals.
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International In the past four years the firm has moved aggressively into regional IP portfolio management, particularly into the surrounding developing countries of Cambodia, Laos, Myanmar and Vietnam. This rapidly growing practice area has been very well received by multinational clients, both foreign and domestic. In fact, in addition to new and existing foreign clients retaining us to manage their portfolio, this approach has also led to many new domestic multinational companies turning to the firm for all their IP needs, which in turn has led to an increase in outgoing filings.
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Main address One Pacific Place 9th Floor 140 Sukhumvit Road Bangkok 10110 Thailand T +66 2 254 8858 F +66 2 254 2550 E satyapon@satyapon.com Professional contacts Satyapon Sachdecha Managing partner E satyapon@satyapon.com
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Shobayashi International Patent & Trademark Office www.sho-pat.com
Established in 1998 by Masayuki Shobayashi, Shobayashi International Patent & Trademark Office is one of the fastest-growing IP law firms in Japan. With approximately 300 employees – including 70 patent attorneys and 24 former Japan Patent Office deputy commissioners, administrative judges, executive chiefs, directors of examination and patent examiners – Shobayashi employs more former Japanese IP judiciary staff than any other IP firm in Japan, enabling it to provide the highest level of expertise in prosecution, research, litigation and legal advice. With 11 specialised departments in chemistry, biotechnology, pharmaceuticals, mechanics, optics, electrical engineering, information technology, trademarks, designs, litigation and consulting on international IP protection, Shobayashi aims to provide tailored IP services for clients ranging from individual inventors to multinational companies seeking to create a commercial presence in the Japanese market. Aiming to provide comprehensive services, Shobayashi has two offices in east Japan (Marunouchi and Ueno, Tokyo) and one in west Japan (Osaka), with the first international office in Nanjing, China. In addition, Shobayashi continues to expand its services with an experienced Chinese patent attorney and US and UK attorneys to provide legal advice on global expansion into Asia, North America or Europe. In 2011 Shobayashi further expanded its services with a specialised research department to provide IP analysis services for companies and financial institutions. The firm’s IP judiciary expertise helps determine the most efficient path to patent grant, including conducting patent landscape analyses for technical trends and assessing the commercial strength of a client’s IP portfolio, running freedom-to-operate searches to determine the existence of potential infringing technology and patent invalidation searches for the potential existence of any technology or intellectual property that may invalidate a client’s intellectual property. In 2012 Shobayashi established a licensing, valuation and IP transactions department, including a diverse team of IP analysts certified by the Association of IP Education (AIPE), tax accountants, chartered financial analysts (CFAs), foreign attorneys and former leaders of industry.
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“Highest number of former JPO personnel – 24 – among local patent firms… Seasoned patent practitioners navigate the Japanese patent landscape with ease” A former licensing executive leads the licensing team with experience in generating over $200 million in annual royalties for electronic patents and the sale of an electronics IP portfolio at auction for $6.6 million. Employing most of the very few AIPE-certified IP analysts in Japan, Shobayashi is also one of only a few IP firms in Japan with the in-depth expertise to value individual intellectual property or entire IP portfolios by evaluating Big Data for technological trends, the market situation of competitors and the overall business environment. The consulting division combines the industry and market expertise of former general counsel of multinational corporations and the financial expertise of CFAs and accountants to detect problems and obstacles; provide countermeasures; identify mechanisms for business growth and monetisation; and propose IP strategies for global development and expansion, along with the utilisation of intellectual property to the client’s long-term advantage. Further, Shobayashi has successfully completed more than 200 IP due diligence exercises for licensing and M&A transactions, and IP advisory services in open innovation for entrepreneurs, as well as IP strategies for established companies. Shobayashi’s distinct capabilities have led to acquiring an equally diverse clientele of automakers and auto-parts manufacturers, research companies, chemical manufacturers, private and national universities, food
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manufacturers, IT providers, communication providers and measurement device manufacturers. As one of the few growing firms in Japan, Shobayashi continually seeks to deepen and broaden its expertise in order to become one of the top IP firms in Japan.
Main address Sapia Tower 1-7-12 Marunouchi Chiyoda-ku Tokyo 100-0005 Japan T +81 3 6895 4600 F +81 3 6895 4611 E shobayashi@sho-pat.com Professional contacts Hiro Takahori Director, licensing E hiroyuki.takahori@sho-pat.com Other offices Nanjing, Osaka
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SKRINE www.skrine.com
SKRINE is one of the largest legal firms in Malaysia, with a sterling global reputation, and a wide range of highly-regarded practice groups. The firm is led by 46 partners and has over 100 lawyers. Our lawyers are all qualified advocates and solicitors, as well as registered trademark, patent and design agents who have rights of audience before various IP registries, the Registry of Courts and courts in West Malaysia. Clients report that our service is “very efficient and proactive” and another source enthuses: “They have distinguished themselves with excellent service” (Chambers Asia-Pacific). Our IP team advises clients on protecting, licensing and enforcing their patents, trademarks, designs, copyright, trade secrets and know-how. We act for clients in trademark infringement and passing off claims, as well as in patent, design and copyright litigation. The practice has a wide range of clients in all areas of commercial and industrial activity, including pharmaceutical, luxury goods, technology and telecommunications, international airlines and manufacturers of industrial and consumer products. The IP division is led by 10 partners and advises on all aspects of intellectual property. Trademarks • Preparation and prosecution of applications in Malaysia and internationally • Availability searches • Advice on registrability and selection • Watch services • Renewals • Cancellations and oppositions • Licensing • Acquisitions and assignments • Due diligence and audits • Market investigations to detect counterfeits and piracy • Recordals, including changes of name and address Patents, utility innovations and designs • Preparation and prosecution of patent, utility innovation and design applications in Malaysia and through associates in other countries • Patentability and availability searches • Advice on patentability of inventions
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“Full gamut of patent services to a host of domestic and foreign companies across industries… Ever ready to tackle all manners of patent problems” • • • • •
Patent, utility innovation and design renewals Patent invalidations Licensing Patent acquisition and assignments Due diligence
Copyright • Advice on protection and enforcement • Transfers • Licensing • Preparation of statutory declarations for copyright ownership • Preparation of voluntary notification applications • Liaison with the Ministry of Domestic Trade and Consumer Affairs on criminal enforcement of copyright Trade secrets and confidential information We offer advice on and drafting of confidential agreements. Licensing and technology transfers • Trademark, patent, copyright and trade secret licensing • Drafting and advising on licence, franchise, distributorship, agency and contract manufacturing agreements • Drafting and advising on technology transfer agreements • Liaising with relevant government and regulatory bodies for registration of franchises and other related matters
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IP litigation • General advice on all aspects of IP litigation • Applications for trade description orders • Litigation involving infringement of trademarks, copyright, patents and designs including injunctions, Anton Piller orders, Mareva injunctions and other interim relief • Criminal enforcement of trademarks and copyright • Passing off actions • Licensing and franchising disputes • Domain name disputes Awards and accolades • Malaysia Law Firm of the Year – Who’s Who Legal (2013-2020) • Malaysia Law Firm of the Year – Asian Legal Business (2017) • Malaysia Law Firm of the Year – Chambers Asia Pacific (2015 and 2020) • Malaysia Intellectual Property Law Firm of the Year – Asian Legal Business (2017) • Malaysian Intellectual Property Firm of the Year – Managing Intellectual Property Global Awards (2014-2016) • Tier 1 for intellectual property – Chambers Asia Pacific (2011-2021) • Tier 1 for intellectual property, telecommunications, media and telecommunications – Legal 500 Asia Pacific (2014-2021) • Recognised as leading international arbitration firm by Global Arbitration Review 100 (20122021)
Main address Level 8 Wisma UOA Damansara 50 Jalan Dungun Damansara Heights Kuala Lumpur 50490 Malaysia T +60 3 2081 3999 F +60 3 2094 3211 E skrine@skrine.com Professional contacts Charmayne Ong Poh Yin Partner E co@skrine.com Khoo Guan Huat Partner E kgh@skrine.com
Skrine is the exclusive Malaysian member of Lex Mundi, a network of leading independent law firms in over 160 jurisdictions around the world and the Pacific Rim Advisory Council, a network of 30 toptier independent law firms.
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SKS Law Associates www.skslaw.org
SKS Law Associates is a professional organisation of lawyers and patent agents providing services in the area of IP law to Indian and foreign clients. We specialise in contentious and non-contentious work relating to patents, trademarks, copyright, industrial designs, geographical indications and plant variety protection.Additionally, we provide advice on licensing and technology transfer, protection of trade secrets and biodiversity-related issues. For a select clientele, we conduct IP audits and carry out competitive intelligence. SKS Law Associates offers services in a number of specialised fields, including pharmaceuticals, phytotherapeutics, agrichemicals, plant breeding and crop genetics, medical technologies, electronics and telecommunication, and alternate energy systems. In order to provide our clients with a single window interaction when they have overseas matters, we have associates in all major countries, including the United States, Europe, Japan, China, Canada, Australia, Brazil, Russia and South Africa to ensure smooth handling of all matters. The SKS law team has a substantial practice in the matters pertaining to obtaining regulatory compliances under the Biological Diversity Act 2002 and the Regulations of Access and Benefit Sharing. In its relatively brief innings, the SKS Law Associates team has worked on a number of projects, including preparing and filing patent oppositions, preparing and filing patent revocation matters at the Intellectual Property Appellate Board (IPAB), drafting and vetting assignment and licence agreements, drafting and filing patent and trademark applications in India and abroad, drafting and filing design, copyright and geographical indication applications in India, advising the Protection of Plant Varieties and Farmers’ Rights Authority, preparing documents for patent prosecution at the EPO, USPTO, IP Australia and the China Patent Office – among others – and preparing draft law for the regulatory and safety aspects of genetically engineered products. As members of a core team, we have drafted the proposed law on the protection of traditional knowledge relating to genetic resources under Section 36(5) of the Biological Diversity Act 2002, presently pending approval.
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“Strategically minded… Tackles contentious, noncontentious and licensing-related IP issues with aplomb” We are active in the public sphere, having worked on drafting the legal framework for the regulation of access to traditional knowledge relating to genetic resources and benefit sharing for the Ministry of Environment. Our members have prepared course work for the Master’s Programme on Intellectual Property Law for the Indira Gandhi National Open University, Delhi, and are active in conducting training for the Department of Industrial Policy and Promotion. Best IP Managed Bio Start-Up sponsors In order to incentivise start-ups, in February 2021 SKS Law Associates sponsored two awards, with citation and cash prizes, for the best IP managed start-ups in the bio and med tech sectors, in line with the Start-Up Initiative of the government of India. New office premises SKS Law Associates moved to a larger and more spacious office in June 2020 to facilitate safe distancing and a secure work environment for the team members coming to office. This has proved beneficial to those who have to come to the office to maintain documents/files. The physical office is currently open twice a week (eight days a month) with the bulk of the work being done remotely. It is likely that this combination of work-from-home and occasional physical office attendance will be in place for the coming months.
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Recent awards In March 2021 Sunita K Sreedharan of SKS Law Associates received the Indian National Bar Association Award for The Phenomenal She and SKS Law Associates was listed among the Forbes Legal PowerList Top 50 Law Firms for its work in biodiversity law (environment).
Main address A-98 Ground Floor CR Park New Delhi 110019 India T +91 11 4050 7125 F +91 11 4050 7124 E info@skslaw.org Professional contacts Sunita K Sreedharan Advocate E sunita@skslaw.org
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Sonoda & Kobayashi Intellectual Property Law www.patents.jp
Sonoda & Kobayashi Intellectual Property Law is a leading Japanese IP firm, which was established in 1998 and is located in central Tokyo. The firm was founded with the specific intention of creating a Japanese IP law firm with a global mindset, to foster stress-free communication and provide exceptional services. Since then, Sonoda & Kobayashi has stayed true to this goal. A unique philosophy and high standards have allowed the firm to exclusively represent leading global and domestic companies in a wide spectrum of cases, and to become one of the most trustworthy firms in Asia for the prosecution and enforcement of IP rights. In 2021 Sonoda & Kobayashi opened its new office in Beijing, from where Chinese IP-related matters are handled. Sonoda & Kobayashi understands the importance of protecting clients’ IP rights, and the impact that these rights have on international business. They offer one-stop services for the full range of IP matters, including patent drafting and prosecution, patent litigation, utility model application, design and trademark prosecution, as well as prior art searches and strategic patent portfolio analysis. Sonoda & Kobayashi’s high patent grant rate and litigation success rate highlight the firm’s dependability for IP protection in Japan. Further, the firm is committed to obtaining the strongest protection possible during prosecution, not merely settling for a grant. Sonoda & Kobayashi specialises in electronics, physics, mechanical engineering, software and artificial intelligence, as well as chemistry, biology and pharmaceutical sciences. With clients spanning from individual inventors and start-ups to Fortune 500 companies, Sonoda & Kobayashi represents some of the most recognisable brands across the telecoms, industrial manufacturing and pharmaceutical industries. Team Sonoda & Kobayashi believes that reliable and excellent legal services in intellectual property can be provided only by having a deep understanding of complex technologies and legal issues, and this is reflected in the firm’s staff. Sonoda & Kobayashi employs more than 100 staff, including 20 patent attorneys, 17 patent engineers, US and Chinese patent attorneys, former US patent examiners, US
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“Highly trained patent professionals and a multicultural roster of employees… Prosecutes patents for a predominantly foreign clientele” and Australian attorneys at law, as well as many other specialised translators and support staff. The majority of patent attorneys, engineers and technical staff at Sonoda & Kobayashi have advanced degrees in a wide range of technical fields, including 16 PhDs from prominent Japanese, Chinese and international universities. They possess technical expertise obtained from a range of backgrounds and sectors, in roles as researchers, engineers and in-house counsel at large international corporations or as staff at the Japan Patent Office. Many patent attorneys and engineers also have hands-on experience, often gained directly on factory floors, which can make a crucial difference in difficult cases. Sonoda & Kobayashi has a dedicated in-house translation team, including 23 technical translators, many of whom have specialist backgrounds. They provide swift and thorough translations between Japanese and English, French, German and Chinese and have implemented checking systems to ensure consistency with the high quality of the firm’s original work. Further, Sonoda & Kobayashi’s team hails from 13 different countries and can offer communication in nine languages, including Japanese, English, Chinese, French, German, Italian, Dutch, Russian and Uzbek. International perspective Foreign clients face significant legal and linguistic barriers when prosecuting and enforcing IP rights in Japan and in China. In order to help clients overcome these barriers, Sonoda & Kobayashi encourages an open-minded, non-culturally or
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linguistically biased approach and provides a thorough knowledge of international patent law and technology. In response to the issues encountered by international companies that choose to protect their intellectual property in Japan and in China, Sonoda & Kobayashi has formed a dedicated international affairs department, which comprises international attorneys and businesspeople who bridge the gap between Asian and Western cultures and practices. The international affairs department ensures that international clients benefit from clear communication and transparency, fostering mutual understanding through a client-focused and adaptable service. Sonoda & Kobayashi is committed to continually ensuring that clients understand their IP protection situations in Japan as well as in China and benefit from the best possible patent strategy. With this in mind, the firm provides an annual patent portfolio analysis for each client, comparing their patents with those of competitors and offering valuable business insights.
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Main address Shinjuku Mitsui Building Suite 3401 2-1-1 Nishi Shinjuku Shinjuku-ku Tokyo 163 0434 Japan T +81 3 5339 1093 F +81 3 5339 1094 E info@patents.jp Professional contacts Yoshitaka Sonoda Managing partner E info@patents.jp Other offices Beijing
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SUGIMURA & Partners www.sugimura.partners
SUGIMURA & Partners is a leading Japanese IP law firm founded in 1923. With offices in Japan and the United States, SUGIMURA provides convenient IP services to both domestic and international clients. In 2017 SUGIMURA expanded its services to include legal matters encompassing litigation and dispute resolution. Customised IP solutions SUGIMURA delivers results-oriented solutions and offers customised services tailored to its clients’ needs. SUGIMURA understands the importance of branding in an organisation’s corporate strategy and provides comprehensive trademark-related services. The firm has extensive experience representing clients in trademark and design matters, including clearance, registration, negotiation, litigation and border enforcement. SUGIMURA has distinguished itself through its quality work and has been listed as a leading Japanese trademark prosecution law firm. SUGIMURA attorneys also provide a full range of patent prosecution, licensing and counselling services. Similarly to its trademark practice, SUGIMURA has distinguished itself for its quality patent drafting and continues to be ranked among the top patent prosecution law firms in Japan. Its attorneys combine legal insight, technical expertise and business acumen to deliver practical solutions and strategies for IP protection in Japan. Reputation for quality SUGIMURA has earned an international reputation for quality in Japanese IP prosecution. SUGIMURA attorneys are not only skilled in the nuances of IP law and regulation, they also possess technical and practical expertise across every technology and business sector. SUGIMURA attorneys have years of experience working in major corporations as researchers, engineers, IP professionals and in-house counsel. Some have also served for decades at the Japan Patent Office (JPO). This combination of expertise allows SUGIMURA to understand the perspectives of corporations and patent and trademark owners, as well as that of the JPO, enabling it to deliver practical and effective solutions to further clients’ business objectives. While most Japanese IP firms outsource translation work, SUGIMURA retains in-house translators to strengthen the quality of cross-
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“Well known among foreign associates… Can “capture technical accuracy and linguistic nuances to produce high quality patent specifications” border prosecution and ensure the technical accuracy and legal appropriateness of translated documents. The translation department is skilled in Japanese, English, German and Chinese. In addition to in-house translators, SUGIMURA has in-house IP draftspersons. The inclusion of in-house translators and draftspersons increases quality, ensures congruency and avoids time delays in IP prosecution. Diverse clientele SUGIMURA represents both Japanese and international clients pursuing patent, design and trademark protection in Japan. This clientele ranges from individual inventors and start-ups to well-established academic institutions and multinationals from all sectors of the global economy, including automotive, aviation, transportation, food and beverages, consumer goods, fashion, sports and recreation, chemical, software and hardware, electronics, e-commerce, biotechnology, pharmaceuticals, medical, energy, agriculture, entertainment and media, construction, semiconductors, optics, telecommunications and manufacturing. International capabilities SUGIMURA has significant experience providing legal advice to international clients concerning patent and trademark prosecution and enforcement in Japan. SUGIMURA attorneys are often sought to consult on the important differences between Japanese IP practices and clients’ domestic IP practices. SUGIMURA’s high
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level of technical expertise, extensive knowledge of Japanese IP practice and experience in cross-border trademark and design prosecution enable it to provide succinct advice regarding Japanese IP matters in a manner that is understandable and actionable. In order to better serve international clients, SUGIMURA established an affiliate office in San Jose, California – in the heart of Silicon Valley. With the Silicon Valley office, SUGIMURA offers clients convenient accessibility and around-theclock responsiveness. Community involvement SUGIMURA attorneys are active in their community, presenting on topics relating to Japanese IP practice to in-house teams, at patent and trademark seminars and to law school classes. The firm’s attorneys also publish articles on Japanese IP practice in magazines distributed worldwide.
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Main address Common Gate West Tower 36th Floor Kasumigaseki 3-2-1 Chiyoda-ku Tokyo 100 0013 Japan T +81 3 3581 2241 F +81 3 3580 0506 E jpatent@sugimura.partners Professional contacts Kenji Sugimura Managing partner E jpatent@sugimura.partners Koji Sugimura Managing partner E legal@sugimura.partners Other offices San Jose
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Tai E International Patent & Law Office tinyurl.com/TaiE-IAMPatent
Over the past 60-plus years, Tai E International Patent & Law Office has matured into a major international IP law firm in Taiwan. Today we provide the highest level of quality legal service to our valuable clients from every corner of the world. With their support and trust, Tai E takes great pride in being referred to as one of the pioneering IP law firms in Taiwan. We are encouraged by the success and recognition that we have achieved so far, and our goal is to increase our efforts in order to meet the strictest professional standards and our clients’ every request in the future. Our legal and technical professionals We employ more than 280 professionals, including attorneys at law, patent attorneys, trademark agents, technical specialists and legal consultants, in four Taiwan offices. These professionals are experienced in providing customised solutions on a cost-effective basis. Many of them hold postgraduate degrees, including PhDs, in either legal or technical fields from top institutions in Taiwan or overseas. Their outstanding academic credentials are enhanced by active engagement in advanced professional activities, from writing IP textbooks and articles to delivering lectures for IP courses run by the government and academic institutions. Every professional of the firm is proficient in at least one foreign language, including English, German and Japanese. Tai E’s professionals are trained in various categories of law and specialise in a wide range of technical fields, including pharmacology, chemistry, biotechnology, immunology, computers and software, electronics, semiconductors, physics, mechanical engineering and industrial design. Depending on the nature of a case, our professionals collaborate with one another to ensure that the best result is achieved for each client. Tai E also offers a wide range of consulting and educational programmes to local enterprises and is frequently consulted by government agencies. A number of our professionals have been invited to participate in public hearings regarding amendments to IP laws or regulations, such as the Trademark Act, the Patent Act and the Examination Guidelines. In addition, Tai E has played an active role in a number of professional organisations and
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“Glowing reputation as a patent prosecution powerhouse… Makes light work of contentious matters” has provided pro bono legal services at the Taiwan Intellectual Property Office. Simple philosophies, solid commitments We vow to provide services that exceed our clients’ expectations, catering to all requests. Our reasonable fees guarantee the value of our services and we ensure that the best staff with the right expertise is appointed to the task. We believe that a stable operation benefits our clients and that this can be achieved only by recognising the outstanding performances of all our team members. Everyone at Tai E is encouraged to take part in advanced education and to create a comfortable working environment. These simple philosophies encourage our staff to progress in their careers at Tai E and to provide an unequalled excellence of service to each and every client. The firm has faced many challenges over the past decades, yet one thing has remained the same: our unwavering pursuit of professionalism, excellence and faithful service to our clients. These are values that we have cherished since the firm’s creation. We are determined to continue to preserve and uphold these values in the future. Notable case We recently convinced a court in civil proceedings that the disputed invention patent could not be proven invalid for lack of novelty and inventive step based on the prior art cited by the defendants. Moreover, we persuaded the court that the elements recited in the claims of the patent could be read on the allegedly infringing product. The lawsuit in this case lasted for more than seven years. The defendant had made persistent efforts and filed multiple appeals; however, the court’s four decisions were in our favour. The
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court ultimately ordered the defendants to pay US$101,900 to our client as compensation for the damages caused by their infringement. Recent developments We have strengthened our IP management service. From offering strategic analyses to clients before the research and development phase, and providing related financial planning advice to developing marketing strategies based on the client’s research as well as maintenance and management of IP rights, Tai E can provide comprehensive and complete solutions to assist customers in smart innovation.
Main address 9 Fl No 112, Sec 2 Chang-An E Rd Taipei 10491 Taiwan T +886 2 2506 1023 F +886 2 2506 8147 E ipdept@taie.com.tw Professional contacts Henry Chi-Heng Guei President E lawoffice@taie.com.tw Fred Chi-Tai Yen Managing partner E ipdept@taie.com.tw Jerry Ching-Yu Lin CEO E ipdept@taie.com.tw Other offices Kaohsiung, Taichung, Tainan Sample client list • Bulgari • Hilti • Kyocera • Mattel • Robert Bosch • Scania • Superdry • Syngenta • Volkswagen • Xilinx
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TMI Associates www.tmi.gr.jp
TMI Associates has 85 patent and trademark attorneys (benrishi) in addition to 493 attorneys at law (bengoshi). These professionals – together with over 90 paralegals and other support staff members – form a unique organisational structure that enables the firm to respond in a highly effective and efficient manner to the needs of clients across a wide variety of businesses and technologies from all around the globe. History Since its establishment in 1990, TMI has grown rapidly and achieved its goal of becoming a full-service law firm that offers valuable and comprehensive legal services of the highest calibre at all times, while placing great importance on exercising unparalleled legal judgement in areas including intellectual property, litigation, general corporate, corporate finance, antitrust and bankruptcy law. Intellectual property – including patents, designs and trademarks – has been an integral part of the firm’s practice since its establishment, and TMI boasts an unrivalled level of experience and achievements in this area. IP team • 85 patent and trademark attorneys (benrishi), 45 electronical and mechanical attorneys, 19 chemical, biotechnology and pharmaceutical attorneys and 21 trademark and design attorneys; and • 80 IP lawyers (bengoshi). Out of the ‘Big Five’ law firms in Japan, TMI has currently the largest benrishi group by far, which supports the reputation of its strong IP practice in all technical fields. IP practice TMI’s practice covers all aspects of intellectual property, including patent and trademark prosecution, transactions (eg, patent sales, acquisitions and licensing), litigation, pre-litigation analysis, invalidation trials and oppositions, freedom-to-operate analysis, due diligence and import suspension at Customs. The firm files approximately 2,500 patent, 2,600 trademark and 400 design applications each year, as well as over 20 IP lawsuits.
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“Top-notch patent services in prosecution, litigation and transactions… Comprehensive patent offering enjoyed by multinational corporations around the world” Prosecution Among the firm’s comprehensive patent practice, TMI’s patent attorneys are most experienced in patent prosecution and have been so since the firm’s establishment. The patent team covers all technical fields, including electronics, computer hardware and software, telecommunications, semiconductors, chemicals, biotechnology, pharmaceuticals and mechanics. Key features of the prosecution practice include: • prosecutions handled by patent attorneys with years of experience in drafting patent applications; • prosecution strategies provided from a business and corporate perspective; • high-quality translations provided by staff members with relevant patent drafting experience; and • successful prosecution of patents suitable for both transactions and litigation.
Transactions The IP transactional practice, which includes patent sales, acquisitions and licensing, has grown rapidly in recent years as the number of deals between corporations continues to increase globally. Key features of the transactional practice include: • team members including professionals with not only legal experience, but also business
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experience or in-house experience at global corporations; provision of services at all stages of transactions, including identification and approach of potential partner companies, patent analysis, evaluation of patents, patent and business negotiations and drafting of agreements; pursuit of transactions based on both Japanese and foreign patents; representation of both Japanese and foreign corporations; and creative, proactive and seamless work that transcends borders.
Litigation TMI has become globally known for its highly skilled IP litigation practice over the past decade. In Japanese patent litigation, bengoshi are responsible for litigation strategies and benrishi are responsible for the patent and technical aspects that are central to these strategies. The patent litigation team is very experienced in serving both foreign and domestic clients. At any given time, the firm has at least 10 pending patent cases. Key features of the litigation practice include: • patent litigation handled by teams of bengoshi and benrishi working seamlessly together; • a litigation team supported by experts in the field, including a former IP High Court judge, former Japan Patent Office examiners and former Supreme Court justices; • representation of both plaintiffs and defendants; and • experience in handling over 100 patent litigation cases in the past 10 years.
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Main address 23rd Floor Roppongi Hills Mori Tower 6-10-1 Roppongi Minato-ku Tokyo 106-6123 Japan T +81 3 6438 5611 F +81 3 6438 5622 E pat_tm@tmi.gr.jp Professional contacts Yoshiyuki Inaba Senior partner E yinaba@tmi.gr.jp Atsushi Sato Partner E asato@tmi.gr.jp Toyotaka Abe Partner E tabe@tmi.gr.jp Other offices Bangkok, Beijing, Fukuoka, Hanoi, Ho Chi Minh City, Kobe, Kyoto, London, Nagoya, Osaka, Phnom Penh, Shanghai, Silicon Valley, Singapore, Yangon
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TOPTEAM International Patent & Trademark Office www.top-team.com.tw
The TOPTEAM International Patent & Trademark Office has been providing a full range of legal services for IP rights protection since it was established in 1985 and has assisted clients in securing tens of thousands of IP rights and intangible assets and with research breakthroughs in Taiwan, the United States, Europe and Japan, in addition to other foreign countries. As one of the largest and most reputable specialty IP law firms in Taiwan, the firm is best known for its capabilities in patent drafting, crossborder prosecution, strategies planning and IP portfolio management. TOPTEAM’s services comprise patent, trademark and integrated-circuit layout prosecution; legal opinions and counselling services; domestic and international IP rights planning and strategy; trade secret and unfair competition consulting; dispute resolution and litigation; licensing; technical transfer; and overseas litigation support. Fields of technical expertise With a staff of over 200, including 29 patent attorneys, three attorneys at law and 70 technical professionals (mostly with an advanced graduate degree) from diverse technical backgrounds, we at TOPTEAM are able to offer clients personalised, professional, timely and cost-effective solutions, serving a host of industries and institutions in Taiwan and overseas. We cover semiconductors, displays, mechanical engineering, biotech, pharmaceuticals, life sciences, chemistry, material science, electronics, circuit design, electrical engineering, consumer and medical devices, communication, software, computer science, and integrated-circuit layout and business methods. TOPTEAM takes great pride in its longstanding client relationships and continuous positive word-of-mouth referrals. New clients mostly are referred by our existing clients. The firm has been representing domestic and international businesses and organisations, including worldleading high-tech companies, major manufacturers, key players in diverse businesses, prominent academic institutions, public sectors, media, entertainment companies, sports entities, retailers, start-ups and customer service companies.
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“Unanimously recognised by its peers and partners… Rich professional experience in intellectual property” Reliable quality control system To adequately support its personnel in striving for excellence in all they do, TOPTEAM broadly invests in staff development programmes and IT systems, and continuously optimises its quality control mechanisms. We also carefully select and regularly assess foreign associate law firms with stringent criteria to ensure that our cross-border IP services are delivered based on the most recent developments in the jurisdictions of interest. Commitment and philosophy To order to stay true to our concrete commitment to top-quality professional services, we work closely with clients in every aspect by sticking to our service philosophy “Explore the future blueprint together in all sincerity”, as well as its five-pillar approach: • We truly listen to your needs and support you wholeheartedly; • Our competency building framework aims to cultivate specialty talents and a professional mindset; • Our ongoing diversified development is fuelled by self-motivated innovation; • The communication with our partners encourages frankness with mutual respect; and • A caring heart for the society pushes us to do more. Memberships • Taiwan Patent Attorneys Association • International Association for the Protection of Intellectual Property • International Trademark Association • Asian Patent Attorneys Association
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Recognition Our commitment to excellence and high-quality service is well recognised by our clients and peers worldwide, as well as leading legal media. Below are some accolades and awards we have received over the recent years. The Legal 500 (Asia Pacific) • Intellectual Property (Prosecution): Tier 1, since 2013 • Intellectual Property: Tier 2, since 2019 Chambers and Partners (Asia-Pacific and Global) • Intellectual Property: Patent & Trade Mark Agents –Taiwan: Band 1, since 2012 Managing Intellectual Property’s IP Stars • Patent prosecution: Tier 1, since 2014 IAM Patent 1000 • Firms prosecution: Top ranked, since 2017 • Firm litigation: Bronze band, since 2020
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Main address 3F-2 Number 3-2 Park Street Nankang District Taipei City 115 Taiwan T +886 2 2655 1616 F +886 2 2655 2929 E english@top-team.com.tw Professional contacts Peggy Wu Executive director, patent administration department E peggy@top-team.com.tw Lydia Wong Principal attorney at law, legal and trademark department E lydiawong@top-team.com.tw Mei-Chun Wang Executive senior manager, patent administration, Japan and China E japanese@top-team.com.tw
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Tsai Lee & Chen Patent Attorneys & Attorneys at Law www.tsailee.com
Tsai Lee & Chen Patent Attorneys & Attorneys at Law is a top-tier IP firm with a 26-year history. Headquartered in Taipei, the firm employs more than 180 IP professionals and lawyers representing clients from all over the world. Our practice covers all aspects of intellectual property, including patent and trademark preparation, prosecution, portfolio management, licensing and IP litigation. The professionals at Tsai Lee & Chen provide reliable and comprehensive legal and patent services in the greater China region, while adhering to a strict code of professional ethics. Firm history Founded in 1995 by Thomas QT Tsai, the firm developed at pace and quickly emerged among the industry’s giants. Mr Tsai founded Tsai Lee & Chen with a group of patent professionals who were specialised in various cutting-edge areas of technology. The firm’s managing partner Victor SC Lee continues to lead Tsai Lee & Chen partners to represent Taiwanese and foreign companies in full scope of IP procurement and enforcement. Areas of specialisation The firm specialises in patent, design and trademark prosecution, as well as copyright registration. The legal team excels in handling IP contentious matters and disputes of unregistered rights under unfair competition law, as well as laws related to pharmaceutical patent linkage. The firm’s patent expertise encompasses all fields of technology, including semiconductors, consumer electronics, thin-film-transistor liquidcrystal display technology, light-emitting diode technology, computer hardware and software, telecoms, biochemistry, pharmaceuticals, mechanical and electrical engineering, business methods and information technology. International experience Tsai Lee & Chen enjoys more than 1,300 connections with global IP law firms and associates and has accumulated valuable experience and established networks in China since the firm was founded. The firm proactively contributes to the legislation of the IP-related laws and examination guidelines in Taiwan. The firm also stays up to date with the most recent IP law developments and challenges worldwide by actively participating in
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“Highly recommended by foreign associates and global companies for its prowess in the patent prosecution space… Extensive experience in handling patent prosecution in Taiwan” international IP groups, including the American Intellectual Property Law Association, the International Association for the Protection of Intellectual Property, the Asian Patent Attorneys Association, the Japan Intellectual Property Association, INTA, the International Federation of Intellectual Property Attorneys, the Pharmaceutical Trademarks Group, the European Communities Trademark Association, the Licensing Executives Society, the Intellectual Property Owners Association and MARQUES. Such a global vision enables the firm to advise companies with cogency and conviction – to save time and reduce costs for clients. The firm assists both domestic and international corporations in diverse industries, as well as universities and research institutions. Professional diversity The firm’s talented leading professionals possess diverse technical and legal backgrounds, including qualified lawyers, patent attorneys and patent agents in Taiwan, China and the United States. The litigation team has a record of handling landmark cases. It enjoys a remarkable winning rate, from the IP Court to the Supreme Court. The types of litigation cases range from trademark, patent, copyright and unfair competition to breach of contracts, while the industrial sectors cover fashion, food and drinks, as well as electronics and
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chemicals. Integrating the efforts of an elite team, Tsai Lee & Chen provides cost-effective patent preparation with quality work products, and has demonstrated sophistication in both offensive and defensive IP strategies in resolving IP disputes. The firm has successfully helped many Fortune 500 companies, as well as many small and mediumsized enterprises, to bridge the patent protection gap between their home jurisdiction and the greater China region. Efficiency and quality Supported by an in-house customised automation system, the firm can accommodate various demands from clients with minimal effort. The automation system has helped to put electronic filing into daily practice, generate e-billing codes as per clients’ preferences and reduce human error. The firm’s smooth automation management has significantly enhanced working efficiency and quality reliability.
Main address 11th Floor 148 Songjiang Road Taipei 104 Taiwan T +886 2 2564 2565 F +886 2 2562 7650 E info@tsailee.com.tw Professional contacts Candy KY Chen Partner E ckchen@tsailee.com.tw Crystal J Chen Partner E cjchen@tsailee.com.tw Other offices Taichung, Tainan
Awards In recognition of the firm’s excellence, Tsai Lee & Chen has been selected as a leading firm by Chambers Asia-Pacific, a top-tier patent prosecution and a leading firm in Asia-Pacific by The Legal 500, and highly recommended by the IAM Patent 1000. With a personal focus, the firm’s partners – Jesse KY Peng, Candy KY Chen and Crystal J Chen – hold various individual honours and are included among Managing Intellectual Property’s IP Stars and Top 250 Women in Intellectual Property, Asialaw’s leading lawyers and Chambers Asia-Pacific’s notable practitioners. Working languages The firms principal working language is Chinese. Additional working languages include English, German, Japanese and Korean.
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Tsar & Tsai Law Firm www.tsartsai.com.tw
Tsar & Tsai Law Firm is a top-tier full-service law firm in Taiwan. The firm has more than 80 professionals specialising in various legal fields. The firm has a long history of international practice and is known for its superior-quality work. It has maintained a diverse international character and prides itself on providing creative problem solving and strategic advice to clients. The firm has been broadly recognised in publications and by various international institutions – including Chambers Asia, Chambers Global, the Legal 500, the International Financial Law Review, Asia Legal Business, Asialaw Profiles and China Law Profiles – as one of the best law firms in Taiwan. Tsar & Tsai is a full-service law firm and has decades of experience handling matters relating to foreign investment, general corporate, M&A, intellectual property, antitrust law, merger control filing, employment, criminal defence and dispute resolution. International experience Tsar & Tsai maintains close working relationships with leading law firms in most key jurisdictions around the world. It is also a member of Lex Mundi – the world’s leading association of independent law firms, with 160 members globally. Clients are assured that they are in good hands whenever cross-border legal services are required. Specialty areas Based in Taiwan for more than 50 years, Tsar & Tsai is a commanding presence in the Taiwanese patent litigation scene; it is a top choice for complex and high-stake disputes. With a bursting bench of dedicated IP professionals, it cuts no corners to secure the best results for clients. Although best known for its contentious work, it also boasts a large cadre of technically proficient engineers and is a smart option for those seeking to both procure new rights and enforce existing rights. Managing partner Jennifer Lin has more than three decades’ experience under her belt; she has amassed broad knowledge of IP, antitrust and corporate law, which she leverages to great effect around the negotiating table and in the courtroom. Joyce Ho and Jeanne Wang steer the IP group with confidence and poise. Both counsels are touchstone lawyers for key players in the high-tech world and assist in a diverse range of endeavours.
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“One of the most revered outfits for contentious patent work… Has a well-formed prosecution unit” Ms Lin, Ms Ho and Ms Wang are thought leaders who are regularly called on to represent government agencies. Notable cases Notable recent cases handled by the firm includes successfully defending NexPlanar against Rohm and Haas’s patent suits relating to chemical mechanical polishing pads; successfully defending Chang-Chun Petrochemical against Nippon Synthetic Chemical Industry’s patent suit relating to chemical powders for packaging material; successfully defending Giga Solar Materials against Heraeus Precious Metals North America Conshohocken’s patent suit relating to front side silver conductive paste for solar cell electrode; successfully defending Trendscend against a patent suit relating to USB; and successfully representing Micron Technology in obtaining a guilty plea from former employees with respect to misappropriation of its trade secrets. Competitive edge Tsar & Tsai’s IP practice has been broadly recognised by organisations as one of the best in Taiwan. With decades of experience handling matters relating to patents, trademarks, copyright, unfair competition and trade secrets on behalf of foreign and local clients, the comprehensive scope of the firm’s IP practice includes litigation of infringement claims, administrative prosecution relating to trademark and patent applications and anti-counterfeiting actions. In the firm’s patent group, most patent attorneys and engineers have more than 10 years’ experience, and many patent attorneys and engineers possess both legal and technical backgrounds.
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Main address 11F 100 Songren Road Xinyi District Taipei 11073 Taiwan T +886 2 2781 4111 F +886 2 2721 3834 E law@tsartsai.com.tw Professional contacts Jennifer Lin Managing partner E jenniferlin@tsartsai.com.tw Joyce Ho Partner E joyceho@tsartsai.com.tw Jeanne Wang Partner E jeannewang@tsartsai.com.tw Other offices Hsinchu
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Unitalen Attorneys at Law www.unitalen.com
Unitalen Attorneys at Law is one of the largest IP law firms in China. Established in 1994, Unitalen has grown to become a firm of more than 700 professionals practising in all areas of IP law. The firm is widely recognised as one of the leading IP firms in China. Headquartered in Beijing, we have 20 other offices in Shanghai, Guangzhou, Shenzhen and other major technology and business centres. Our strategically positioned locations give us great accessibility to our clients and ensure a seamless and unified approach at all times. Our firm has 263 patent attorneys, 66 trademark attorneys and 82 attorneys at law, including former patent examiners and former in-house counsel. The majority of our patent attorneys hold scientific degrees and are proficient in foreign languages including English, German, French and Spanish, and some of them have overseas study and work experience. Our attorneys have the expertise and experience to handle any IP matter. Practice areas We practise and advise clients in matters including IP litigation, patent prosecution, patent reexamination, trademark registration, copyright, opposition, invalidation, licensing, validity and infringement opinions, patent transactions and IP due diligence. We serve clients of all sizes and from a wide range of industries and technologies, including chemicals, biotechnology, pharmaceuticals, energy, food, materials, mechanical, medical devices, automotive, semiconductors, optics, aviation, electronics, telecommunications, finance, transportation and e-commerce. As one of the nation’s most experienced firms in IP enforcement, we have achieved a remarkable record of litigation success in matters including patent infringement, trademark infringement, trade dress, trade secrets, anti-counterfeiting, unfair competition, copyright and cybersquatting. Successful litigation includes the following: • We successfully represented a Fortune 500 chemical company against a Chinese company in a patent infringement and trade secret case. • We defended a US company in a patent infringement suit brought by a major Chinese state-owned enterprise. • We successfully represented a major Chinese
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“Churns out grants in every significant technical area… Has expanded greatly in China and also become very much an international firm” internet company in an unfair competition case against another major internet company. • We have assisted many international companies in obtaining well-known status for their trademarks before the Trademark Review and Adjudication Board and the courts. • Several of the litigation cases that we handled were selected by the Chinese Supreme Court as Top 10 IP Cases of the Year, and our litigation team was named by China Intellectual Property as the Outstanding IP Litigation Team in China. We also have substantial experience in technology transfer and licensing. The firm has successfully handled many matters of IP transactional work and portfolio management. The firm has provided IP counselling services to many clients regarding transfer and licensing in proceedings for mergers of domestic and international enterprises. National projects Our partners are invited as IP experts to engage in and advise on certain national research projects, such as amendments to the patent law and trademark law. In addition, some senior partners are routinely invited by international organisations to speak about patent and trademark practice in China. Partners serve as guest lecturers in universities, including Peking University, Tongji University and Shanghai Jiaoda University. We are committed to delivering the highestquality legal services to help clients to achieve
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their goals. No matter the need, we take a costeffective approach to finding the solution best suited to the client’s business.
Main address Seventh Floor Scitech Place 22 Jian Guo Men Wai Avenue Chao Yang District Beijing 100004 China Professional contacts Deshan Li Vice president E deshan.li@unitalen.com Wei Pan Partner E wei.pan@unitalen.com T +86 10 8511 5588 F +86 10 8511 0966 E mail@unitalen.com
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Wanhuida Intellectual Property www.wanhuida.com
Wanhuida Intellectual Property is a leading IP service provider in China. It has two main legal entities, Wanhuida IP Agency and Wanhuida Law Firm. Wanhuida now houses some 450 employees working exclusively in the field of intellectual property, with a presence in all major IP hubs in China. It is home to more than 120 litigation lawyers, 70 patent attorneys, 90 trademark attorneys and other professionals, including investigators and supporting staff. Many of them are recognised leaders in their respective fields. Wanhuida is a leading provider of a full range of IP law services in China, from registration of patents and trademarks to litigation of patents, technology disputes, trademarks, unfair competition and other IP-related matters. Over the years, our prosecution team has helped clients to prosecute numerous patent and trademark applications and obtain enforceable patent and trademark rights with a high rate of success. We have litigated hundreds of cases concerning patent infringement and validity, trademark registration, ownership and infringement, unfair competition, trade secrets infringement, patent ownership and other disputes relating to technology and intellectual property, protecting and defending our clients’ interests and helping to expand China’s legal frontiers. We also advise our clients on IP strategy, patent clearance and validity assessment, due diligence and counselling of all IP matters. In the patent area, we have over 120 professionals with experience in patent litigation, prosecution and counselling. Many have over 10 years of experience. Some have experience working for Chinese courts, the China National Intellectual Property Administration and the Patent Reexamination and Invalidation Department, while some also worked in the industry or for research institutions before joining private practice. These diverse backgrounds strengthen our understanding of clients and the Chinese system, enabling us to deliver services to our clients effectively. Our patent attorneys cover substantially all technical fields, including chemistry, biochemistry, pharmaceutics, materials science, medical devices, metallurgy, physics, electronics, software, telecommunication and mechanical engineering. Most of them have advanced technical educations and obtained their
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“High-calibre consumer goods companies turn to it for both invention patent and design patent matters… Clients love the firm’s fair and transparent cost scheme” doctorate and master’s degrees from the best universities in China. We are at the leading edge of patent litigation. We have abundant experience in litigating patent and technology matters at all levels of court up to the Supreme People’s Court. Our patent litigation service also covers validity and re-examination disputes before the Patent Re-examination and Invalidation Department and their subsequent administrative litigation. Some of our cases involve parallel litigation in China and in other jurisdictions. Many of our cases are recognised as groundbreaking, as we not only creatively protect the interests of our clients, but also help to expand the IP legal frontiers. Some of our patent cases are selected by courts or agencies as exemplary cases. They include cases selected as “Guiding Cases of the Supreme People’s Court on IPR Trial”, “Annual Report of the Supreme People’s Court on Intellectual Property Cases”, “Top 10/50 IPR Cases of the Chinese Courts” (released annually by the Supreme People’s Court), or “10 Exemplary Cases of the Patent Re-examination and Invalidation Department”. These cases have contributed to patent law development in subjects such as claim construction, claim amendment, inventiveness determination and sufficient disclosure. Besides judicial remedial approach, we are also experienced in administrative enforcement, working with government bodies such as local IP offices, the Administration for Market
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Regulation, Customs and the food and drug regulatory authorities. Besides working on client matters, Wanhuida also participates in China’s development of patent and technology laws. We have been closely associated with the legislative progress of Chinese IP rights laws and regulations and continue to play an active advisory role in the improvement of the Chinese legal and regulatory environment. Our contribution to the initial drafting and subsequent amendments to China’s major IP laws and the interpretation of court decisions has given us outstanding recognition from government bodies and the judiciary. It has put Wanhuida in a privileged position to anticipate changes in the legislation and the enforcement of IP laws for the benefit of our clients.
Main address Yiyuan Office Building Friendship Hotel 1 Zhongguancun Street South Haidian District Beijing 100873 China T +86 10 6892 1000 F +86 10 6894 8030 E whd@wanhuida.com Professional contacts S Sam Li Partner E samli@wanhuida.com Xiaoling Duan Partner E duanxiaoling@wanhuida.com Other offices Chongqing, Guangzhou, Hangzhou, Hong Kong, Kunming, Ningbo, Shanghai, Shenzhen, Suzhou, Tianjin
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Wisdom International Patent & Law Office www.wisdomlaw.com.tw
Wisdom International Patent & Law Office is one of the leading IP law firms in Taiwan. We advise and facilitate local and international clients on all aspects of IP protection and enforcement, including patents, designs, trademarks and copyright across diverse commercial sectors and technological fields. We provide an insightful as well as commercial approach to the protection and management of your innovations and brands. Our professionals are multilingual, multicultural and have many years of experience in the field of IP rights. We work closely with our clients and provide pragmatic and commercially focused solutions to meet our clients’ needs. We strive for excellence – and often achieve perfection. Patents The Wisdom patent team is dedicated to protecting your innovations. We assist clients with the full spectrum of issues: patent drafting and prosecution, disputes, invalidation and litigation, patent portfolio management and enforcement. Our patent attorneys are admitted to practise in Taiwan and Japan and you can rely on us to represent you in any patent matters. Educated at the top graduate schools, our patent attorneys and patent engineers have deep knowledge and extensive professional experience in a broad range of technical areas, including biotechnology, chemical engineering, polymer chemistry, inorganic and organic chemistry, pharmaceutical sciences, electronics, optoelectronics, precision machinery, mechanics and design. Communication is the key to effective patent protection. All our patent team members are proficient in English, Japanese and Chinese and have obtained the highest level of English and Japanese language qualifications. At Wisdom we understand our clients’ businesses and advise clients strategically for the long term. Trademarks With the extensive experience and resourcefulness of our trademark team, Wisdom handles trademark searching, prosecution, enforcement, opposition, cancellation and litigation matters on behalf of a diverse client base, including world-renowned brands from the luxury goods, fast-moving consumer goods, fashion and cosmetics,
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“Rides a wave of effusive praise from foreign associates… Highly professional and responsive” pharmaceuticals, chemical, technology and energy sectors. The Wisdom trademark team has deep knowledge and extensive experience of trademark laws and practices. Our strong team includes skilled attorneys, trademark professionals that have trademark qualifications from the Taiwan Intellectual Property Training Academy and Taiwan Intellectual Property Office, and experienced trademark paralegals. Our trademark experts will take our clients’ businesses to the next level through the effective use and filing of trademarks. Anti-counterfeiting and border protection Wisdom routinely assists clients in fighting counterfeits and preventing the production, import and sale of infringing goods. We help record trademarks and copyright with Taiwan Customs for border protection, and take legal actions against infringers for serious infringement of trademark and other IP rights. Litigation and disputes resolution Led by experienced IP attorneys, Wisdom handles not only IP-related litigations and disputes in Taiwan and other jurisdictions, but also patent and trademark third-party observations, infringement, invalidation, patent invalidation opinion, trademark opposition and revocation, appeals, copyright protection and Taiwan Fair Trade Act issues. Wisdom represents clients in disputes proceedings frequently and enjoys a remarkable success rate.
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Publications and seminar speakers Wisdom attorneys are regular guest speakers at IP conferences and seminars in Taiwan and abroad, and lecturers in IP courses at universities. Wisdom attorneys also frequently publish IP law books and articles. For instance, George JH Huang (director) and Kai Furihata (head of patent department) co-authored Taiwan Patent Practice Guide, which was published by the Japan Institute for Promoting Invention and Innovation in 2020. The book, written in Japanese, provides concise and practical guidance on Taiwan patents, and was recommended by the Japan Intellectual Property Association (JIPA) in October 2020. Our articles regarding artificial intelligencerelated patent applications, analysis of trends and strategies in Taiwan and changes to the new Taiwan Patent Act have been published by the American Intellectual Property Law Association’s (AIPLA) Innovate Magazine, the International Federation of Intellectual Property Attorneys’ (FICPI) IP Blog and the JIPA Journal.
Main address 11F-1 Kuo Yang Wan Shang Building No 206 Sec 2 Nanjing East Road Taipei 104 Taiwan T +886 2 2508 2466 F +886 2 2508 2376 E info@wisdomlaw.com.tw Professional contacts George JH Huang Director E info@wisdomlaw.com.tw Kai Furihata Head of patent department E wisdom@wisdomlaw.com.tw (for Japanese clients)
International affiliations Wisdom actively participates in international IP organisations, including FICPI, AIPLA, Asian Patent Attorneys Association (APAA), MARQUES, Japan Trademark Association, JIPA and International Trademark Association (INTA). Mr Huang is a devoted member of the INTA Enforcement Committee and APAA Trademarks Committee.
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YP Lee, Mock & Partners www.leemock.com
YP Lee, Mock & Partners is a law firm providing a variety of services in all fields relating to intellectual property. The firm comprises approximately 410 working professionals, including more than 205 IP attorneys and attorneys at law, working together to provide the full range of services to the complete satisfaction of domestic and overseas clients. YP Lee, Mock & Partners is often referred to as the largest IP law firm in Korea; however, this is only one of many ways to describe the firm. We strive to provide quality services to our clients. Since our inception in 1985, we have evolved and grown in size, but our motto of “the best service to the full satisfaction of the clients” remains the same. Comments from our foreign clients such as “the applications prepared by your firm are better than any other ones from Korea” and “we have no reservation in recommending your services to our clients” are among the many honourable accolades that we have received. International experience and network YP Lee, Mock & Partners annually handles over 8,000 overseas patent and trademark applications worldwide through hundreds of foreign associates. Our significant experience in foreign prosecution and in-depth understanding of various foreign IP systems enable us to provide effective and reliable services to our numerous domestic and foreign clients. Understanding clients YP Lee, Mock & Partners is dedicated to fully understanding the needs and concerns of our foreign clients, including many Fortune 500 companies. Providing a high-quality prosecution service in order to obtain strong and effective IP protection for our foreign clients requires more than simply overcoming language barriers. Our IP attorneys possess a wide range of legal expertise in various IP legal systems, as well as in-depth knowledge of various technical fields, and they offer a dedicated service to meet the demanding challenges faced by each of our clients. Full coverage of IP matters Our service covers all aspects of intellectual property and technology. Our professionals’ knowledge and experience cover a wide range
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“Patent prosecution powerhouse… Leading IP firm whose motto is to be proactive and committed to serving its clients” of technologies, including biotechnology, pharmaceuticals, materials, chemistry, electrical engineering, mobile communications, nanotechnology, computer hardware and software, semiconductors, mechanical engineering, mechatronics and healthcare-related technology. Highly experienced trademark attorneys also provide quality services for trademark cases. In addition to our strong prosecution practice, for which we have been ranked as a top-tier firm in Korea by several IP survey institutions, we are also active in technology and IP rights analysis, performing due diligence, IP consulting, licensing, IP portfolio management and more. Strength in IP disputes YP Lee, Mock & Partners provides a well-reputed service in IP dispute matters. In collaboration with Yulchon, a top-tier litigation firm that our firm formed a strategic alliance with in 2008, our litigation team has handled a number of highprofile IP disputes, including the ongoing cases of Apple v Samsung Electronics. Our vision The attorneys at YP Lee, Mock & Partners share a unified vision and values. One of our principal objectives is to serve our clients by establishing stable, reliable and long-term relationships. Another is to understand and anticipate our clients’ needs and interests by fostering collaboration, collegiality and mutual support among our members, as well as foreign associate firms, in proactive and mutually beneficial ways. Our services are continuously enhanced and developed to fully satisfy the needs of every one of our clients.
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Main address 12F Daelim Acrotel 13 Eonju-ro 30-gil Gangnam-gu Seoul 06292 South Korea T +82 2 588 8585 F +82 2 588 8586 E iplaw@leemock.com Professional contacts Youngpil Lee Managing partner E yplee@leemock.com Jordan Y Kim Senior partner E yskim@leemock.com Jay Jehyun Kim Senior partner E jhk@leemock.com
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Yoon & Lee International Patent & Law Firm www.yoonpat.com
Yoon & Lee International Patent & Law Firm provides a comprehensive range of services for IP rights, including patents and trademarks, as well as consultation services for the management and enforcement of IP rights. The firm was founded in 1989 and became a limited liability company in 2017. Yoon & Lee offers optimised IP services for the benefit of its clients through close cooperation and teamwork that maximise the high levels of expertise and experience of its staff of 89, which includes more than 35 foreign and domestic patent attorneys and lawyers. The firm is particularly well known for its patent technical expertise and long-term relationships with its clients in that practice area. Patents The firm’s main specialisation is in patent prosecution, especially in the electronics and software, chemistry and biotech, and mechanical and mechatronics sectors. One of the firm’s major strengths in the patent sector is its technical knowledge and expertise; it employs a high percentage of patent attorneys and technical specialists in comparison with general law firms and other patent law firms in Korea (33 patent attorneys and 23 patent engineers). In particular, the firm offers an efficient and effective combination of patent attorneys (including a partner patent attorney with an LLM from the United States) with extensive experience, including substantial experience appearing before district courts and high courts, as well as the patent court. The firm also has technical advisers with advanced degrees (PhDs and other postgraduate qualifications) in their specialist subjects, including electrical engineering, electronics, communications, computer science, mechanical engineering, chemistry, biotechnology, pharmaceuticals, cosmetics and life sciences. Based on their strong technical knowledge, the firm’s specialists are often called to testify as expert witnesses in court cases. Areas of expertise Yoon & Lee has four patent teams, as follows: • electronics/telecommunications – including electric, electronics, image processing, software, the Internet of Things and artificial intelligence; • standard – communications standards
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“Major Korean and Japanese companies call on Yoon & Lee … Team warrants especial notice for its work on SEP briefs” (including 5G standard patents); • mechanics – including mechanical and mechatronics, optics, software-related inventions, semiconductors, 3D printing, electrical vehicles and vehicles; and • chemistry/biotech – including pharmaceuticals, cosmetics, biotechnology, chemical and biochemical. Services Yoon & Lee provides the following services: • worldwide patent application and registration services (Patent Cooperation Treaty applications), worldwide utility model application and registration services, prior art searches, patentability searches and patent mapping; • watching services for foreign patents and publications, patent infringement analysis, patent invalidation analysis, patent invalidation trial and litigation, patent infringement trial and settlement negotiations; • licence agreements, assignments and other agreements involving all forms of IP rights, technology valuation, technology transfer and contract assistance; and • invention mining, providing diverse strategies for planning applications for patent and utility model rights, know-how management and translation services. Trademarks and designs Yoon & Lee has a tight-knit trademark and design group that is able to provide excellent and individualised services to all clients. The team is headed by a former trademark examiner at
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the Korea Intellectual Patent Office and also includes a US attorney who is able to provide an international perspective and meet the requirements and expectations of international clients. The team delivers a wide range of trademark and design services and acts for businesses, both Korean and from overseas, in all market sectors. Clients Yoon & Lee’s clients span the globe and most industry sectors; they range from major international companies with established global operations to small and medium-sized enterprises. Unlike in some larger practices, at Yoon & Lee the most experienced professionals, rather than junior staff, handle all cases – all the partner patent attorneys continue to be involved in case work. The firm is able to work in Korean, English and Japanese and provides translation services for these languages, as well as for all languages into/from Korean for both domestic and international clients. Yoon & Lee places great emphasis on client satisfaction by providing quick, accurate and specialised services to meet the individual requirements of clients and to build trust over the long term; this is reflected in the over 25-year long relationships the firm enjoys with major Korean and foreign companies.
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Main address Floor 3 Ace Highend Tower-5 226 Gasan Digital 1-ro Geumcheon-gu Seoul 08502 South Korea T +82 2 6344 1656 F +82 2 6344 1657 E yoon@yoonpat.com Professional contacts Ji-man Park Partner E parkjm@yoonpat.com Byeong-ok Song Partner E boslaw@yoonpat.com Jae-won Yoon US attorney E jwyoon@yoonpat.com Sample client list • AmorePacific • Boryung Pharm • Korea Electronics Tech Institute • Samsung Electronics • Sony Interactive Ent
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YOU ME Patent & Law Firm www.youme.com
YOU ME Patent & Law Firm was established in 1981 and over four decades has grown to become one of the largest IP boutique firms in Seoul, Korea. With over 260 employees (patent and trademark attorneys, attorneys at law with technical backgrounds, engineers, specialists and paralegals) from Korea, Australia, China, Japan, the United Kingdom, the United States and New Zealand, the firm provides conventional and non-conventional IP services to both domestic and international clients. Such diversity also means that the primary languages fluently used in the firm are Korean, Chinese, English and Japanese. Unique set-up YOU ME has an unusually high employee retention rate of 86%, which reflects the balanced and nurturing working environment it provides. Employees are actively encouraged to regularly update their IP knowledge, improve their communication skills and deepen their cultural awareness through educational seminars, programmes and overseas work experience. As a consequence, they feel heavily invested in the success of the firm and in achieving client objectives. This in turn means that the quality of services provided remains consistently high and employees can handle IP matters effectively across different jurisdictions. Currently, the firm has one of the highest filing rates at the Korean Intellectual Property Office; it oversees patent applications in more than 30 countries and trademark applications in more than 50 countries for domestic and international clients. State-of-the-art technology YOU ME has invested significant time and resources in developing highly advanced management software. The firm uses a comprehensive IT system to manage IP portfolios and due dates for prosecuting applications. This fully digitised system creates a flexible working environment and guarantees that client deadlines are met without delay. To keep pace with working trends, the firm has also recently begun using robotic process automation and artificial intelligence. By working intelligently, the firm provides sophisticated services that remain uninterrupted even if external challenges arise. In addition, due to a mutual agreement with the Korean Intellectual Property
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“Top of its game in patent prosecution… Good analysis to patent drafting and IP infringement” Office, comparisons of recorded data are conducted periodically, which prevents data discrepancies between offices and ensures the highest level of IP protection and client care. IP services and practice areas YOU ME provides IP services relating to patent, trademark, design and copyright prosecution; trade secrets; infringement and validity opinions; licensing and IP transactions; IP counselling and strategic advice; and China, Japan and US-focused IP matters, in fields and technologies across the board, including aerospace, aviation and drones; automotive, robotics and mechanics; biotechnology and pharmaceuticals; e-commerce and software; chemicals; clean energy and renewables; consumer products; electronics, telecommunications and computers; electrical engineering; Internet of Things; materials science; metallurgy; medical devices; and semiconductors and integrated circuits – for domestic and international clients, large and small. In addition to these conventional services, the firm also provides translation and drafting services of specifications and documents required by the Korean Intellectual Property Office, inventor interviews and IP consultations for international clients that have acquired or set up R&D companies in Korea. Further, as the firm houses attorneys at law with technical backgrounds, which is quite a rare combination, around 20-30 rejection appeals, invalidation actions, trials to confirm scopes of claims, cancellation actions and other disputes are skilfully litigated before the Korean Intellectual Property Trial and Board of Appeal each year. As the firm continues to see an increase in demand for more non-conventional IP services, it is constantly developing new ways to evolve into an IP service provider that can readily accommodate ever-changing business needs.
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Main address Seolim Building 115 Teheran-ro Gangnam-gu Seoul 06134 South Korea T +82 2 3458 0101 F +82 2 553 5254 E email@youme.com Professional contacts David Kim International IP consultant E davidkim@youme.com Other offices Bundang Sample client list • 3M • AkzoNobel • ASML • Bae Systems • Dyson • etc. • Hitachi • HP • Huawei • Hyundai Motors • L’OREAL • LG Chem
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Yulchon LLC www.yulchon.com
Yulchon LLC is one of Korea’s leading full-service law firms with the distinction of having the highest success rate before the Korean Supreme Court. Yulchon employs over 550 professionals, including more than 60 foreign-licensed professionals. The firm’s perspective is international and its reach is global. Yulchon has represented many international clients and helped companies to expand around the globe. Yulchon has been consistently recognised as a top-tier law firm in multiple areas, including tax, competition, corporate and M&A, and intellectual property. For example: • the IAM Patent 1000 ranked the firm’s IP litigation and transaction practices as Tier 1 for six consecutive years; • Managing Intellectual Property ranked Yulchon as Tier 1 in its IP patent contentious category for eight consecutive years; and • Asian Legal Business ranked Yulchon as Tier 1 for patents for seven consecutive years. To further strengthen capabilities in outbound investments, Yulchon has offices in Jakarta, Moscow, Ho Chi Minh City, Hanoi, Shanghai and Yangon. IP practice group Yulchon’s IP professionals listen to clients’ needs and focus on their business strategies to provide tailored legal services relating to litigation, arbitration, licensing, negotiations, strategic counselling and compliance. The IP group is experienced in all aspects of intellectual property, including patents and utility models, trademarks, designs, copyright, trade secrets, unfair competition, entertainment, privacy, Customs and international trade. The group is also experienced in implementing IP-related corporate programmes, including trade secrets compliance, employee inventions remuneration compliance, internal investigations for trade secrets misappropriation and forensic analysis to obtain tangible evidence. Further, the group is experienced in international IP dispute resolution management, including IP litigation, licensing and transactions, and freedomto-operate opinions. Working in cooperation with Yulchon’s antitrust group, the IP group also provides clear guidance to clients on issues arising from the intersection of IP and antitrust law.
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“Goes toe to toe with the very best in the country… Has carved out a name for itself in both the healthcare and semiconductor spaces” The IP group consists of legal professionals with experience and knowledge in all aspects of intellectual property, technology and various industries. These professionals include former judges, examiners and directors of the Korean Intellectual Property Office, government attorneys, in-house counsel and engineers. The former judges served at the Patent Court, various district courts (including the Seoul Central District Court) and the IP division of the Seoul High Court and Supreme Court. The group’s professionals have degrees in many technical fields. They work closely as a cohesive unit, focusing on communication within the group and with clients in order to gain an accurate understanding of clients’ needs and concerns. Jeong Yeol Choe heads the firm’s IP practice group and Hyeong Joo Lim co-heads the new industry IP team – a sub-practice of the IP practice group. Mr Choe, a former Patent Court judge, represented Samsung Electronics in its epic battle against Apple, and Mr Lim is experienced in implementing IP compliance programmes and conducting trade secrets misappropriation investigations. Da Woo Lee, a former Patent Court judge, has a chemistry background and further strengthens the IP group’s litigation expertise and experience. Min Seung Ku is also a former judge, including serving as a chief judicial researcher for the IP Law Division of the Supreme Court. Samuel Lee, a US-licensed partner, is experienced in patent licensing and international IP disputes, including US district court litigations and US International Trade Commission investigations. Kyung Ae
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Yoon has a PhD in pharmaceutical formations and is a former patent administrative law judge adjudicating invalidity litigations at the Korean Intellectual Property Trial and Appeal Board for pharmaceutical patents. IP services The IP group offers services in the following areas: • patents and utility models; • copyright (including computer programs); • trade secrets; • unfair competition; • entertainment (eg, celebrities, sports and movies); • IP risk management (eg, IP compliance and forensic analysis); • IP surveys and evaluation; • IP licensing and transactions; • international dispute management; and • protection of personal information.
Strategic alliance Since February 2008, the IP group has formed a strategic alliance with YP Lee, Mock & Partners, one of the largest patent law firms in Korea. This enables Yulchon’s IP practice to utilise additional resources to efficiently and effectively handle litigation in all technical fields. Languages Korean, English, German, Chinese, Russian, Vietnamese, French, Japanese, Spanish, Cambodian, Portuguese and Burmese.
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Main address Parnas Tower 38F 521 Teheran-ro Gangnam-gu Seoul 06164 South Korea T +82 2 528 5200 F +82 2 528 5228 E mail@yulchon.com Professional contacts Jeong Yeol Choe Partner E jychoe@yulchon.com Min Seung Ku Partner E msku@yulchon.com Hyeong Joo Lim Partner E hjlim@yulchon.com Samuel Lee Partner E samuellee@yulchon.com Other offices Hanoi, Ho Chi Minh City, Jakarta, Moscow, Shanghai, Yangon Sample client list • AmorePacific • Celltrion • Facebook • Golfzon • GSK • Hanmi • Hanwha • Hyundai • POSCO • Samsung • Teledyne
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Zhongzi Law Office www.zhongzi.com.cn
At Zhongzi Law Office, we have built the largest IP practice of any general commercial firms in China. The IP practice group provides the full range of services in all aspects of IP law, including counselling, prosecution, enforcement and litigation. The group’s practice encompasses patents, trademarks, copyright, unfair competition, trade secrets, trade dress, breeders’ rights, integrated circuit layout design, franchising, licensing, IP management and transactions. Our service further extends to other IP and technologyrelated matters, including advertising, consumer rights, product liability, technical document research and translation and administrative procedures relating to the pipeline product protection of pharmaceuticals and agrochemicals. The patent team comprises highly experienced and specialised attorneys with degrees from the country’s leading universities and institutes in practically all fields of science and technology, including pharmaceuticals, biotech, chemistry, chemical engineering, telecommunications, computer science, electronics, material science, physics, machinery and mechanical engineering. While actively representing clients in traditional industries, we place an emphasis on high-tech areas: life sciences and healthcare, telecommunications and computer science. The team’s attorneys have practised for more than 20 years and have represented both domestic and foreign clients, including worldleading corporations and research institutions. They have experience in providing patentability counselling, infringement analysis and validity studies and opinions. Senior attorneys of the team are leading experts in patent matters in China and six of them are members of the All China Patent Attorneys Association Expert Committee. They have frequently provided consultation on patent law and practice, as well as the examination guidelines for competent authorities. The trademark team consists of attorneys at law and trademark attorneys who have received education and training both in China and abroad, and have experience in representing clients in various industries, including automotive, computer/telecommunications, food and drink, pharmaceuticals, advertising and entertainment. They are responsible for trademark and trade name
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“Capability across all facets of patent law… Talented practitioners who have experience to spare getting applications across the finish line at the CNIPA” clearance, registration, maintenance, transfer, licensing and enforcement. Attorneys in the team have handled trademark, domain name and related matters for leading domestic, international and multinational corporations, and are proactive in assisting clients in enforcing their rights. They have provided expert opinions regarding the revision of trademark laws and regulations, and have frequently provided opinions for competent authorities or submitted statements on complex trademark matters. The litigation team provides proactive representation for clients that wish to enforce their rights through administrative and court proceedings. The team’s combined knowledge of legal procedures and technologies is particularly notable. The team includes both technical and legal experts with knowledge and mastery of litigation tactics and strategies and an understanding of key technical issues. Its attorneys have successfully assisted many clients in enforcing and defending their rights. Over the years, they have accumulated the experience, knowledge, expertise and skills needed to successfully guide clients – even in an uncertain enforcement environment. We are truly proud of their winning capabilities both in and out of court. While emphasising the experience, expertise and knowledge of our attorneys, we do not underestimate how modern technologies can assist us in perfecting our service to clients. Our customised and reliable computer system has payments and IP portfolio management.
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Members of the firm sit on the board of the China Intellectual Property Society and are directors of the Chinese group of the International Association for the Protection of Intellectual Property (AIPPI). The firm’s attorneys are active members of many international IP organisations, including the International Trademark Association, the AIPPI and the Licensing Executives Society. They are frequently invited to give talks or presentations on laws and practices in China. Their articles have been published in numerous publications both at home and abroad.
Main address 7F New Era Building 26 Pinganli Xidajie Beijing 100034 China T +86 10 6609 1188 F +86 10 6609 1199 E mail@zhongziip.com Professional contacts Bonan Lin Managing partner E bonanlin@zhongziip.com Xiaoguang Yang Partner E xgyang@zhongziip.com Zheng Li Partner E lz@zhongziip.com Other offices Shanghai, Tianjin
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Europe, Middle East and Africa
Austria
326
Norway
691
Belgium
333
Poland
703
Czech Republic
355
Portugal
717
Denmark
359
Romania
727
European Patent Office
396
Russia
731
Finland
400
South Africa
750
France
414
Spain
755
Germany
436
Sweden
779
Greece
582
Switzerland
811
Hungary
585
Turkey
836
Ireland
596
Ukraine
845
Israel
609
United Arab Emirates
850
Italy
639
United Kingdom: England
852
Netherlands
654
United Kingdom: Scotland
908
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Austria
It’s business as usual on the Austrian patent scene: filing activity remains healthy and practitioners enjoy a steady stream of work from domestic and international businesses across the contentious/non-contentious divide. Innovation in traditional sectors such as pharmaceuticals continues to boom and there has also been an uptick in the computerimplemented inventions space of late, leading to an increase in instructions for local prosecution firms. Meanwhile, the indications suggest that the Austrian government plans to do away with the traditional prosecution/litigation divide with a view to allowing patent attorneys and litigators to work together under one roof. While this initiative is by no means a certainty, the mere prospect has certainly created a buzz in the Austrian patent community.
Baker McKenzie
A highly respected name on the domestic IP scene and further afield, Baker McKenzie’s Austrian patent contingent works hand in glove with its counterparts across the globe to deliver results seamlessly. The team is intimately familiar with the ins and outs of regional and international legal practices, making it an ideal partner for innovators looking to protect their assets both at home and abroad. Spearheading the group is the seasoned Lukas Feiler, whose meticulous attention to detail in enforcement and licensing matters is of great benefit to multinational software entities. Adroitly blending IP and unfair competition law know-how, Martina Grama grasps matters from every angle.
Beer & Partner Patentanwälte
Precision prosecution gives Beer & Partner an edge in the Austrian market. Clients appreciate its pragmatic, no-nonsense approach to patent protection and its ability to shepherd files through to grant with minimum fuss. With a flair for all things mechanical and almost three decades in the game, Reinhard Hehenberger has everything needed to navigate inventors through tricky patent office scenarios.
CERHA HEMPEL
Compact, well-run firm CERHA HEMPEL offers an all-inclusive service with a boutique feel. Although it is best known for its trademark expertise, it has significantly bolstered its patent capabilities and has also started making waves in the transactions space. One example of this is its integral role advising gbtec Holding on the high-profile cross-border acquisition of software solutions company avedos GRC. The firm’s practitioners stand out for their strategic oversight in commercial settings – and none more so than Katharina Majchrzak, who has spent over a decade focusing on employee inventions. She regularly counsels in the biotechnology and life sciences spheres, and recently advised San Pacific Investments and Austrian entrepreneur Erich
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Firms: prosecution Highly recommended Puchberger & Partner Patentanwälte Schwarz & Partner SONN & PARTNER Patentanwälte Wildhack & Jellinek Recommended Beer & Partner Patentanwälte Patentanwalt Kliment & Henhapel REDL Life Science Patent Attorneys
Erber on a shareholding sale of the ERBER group to Royal DSM.
CMS Reich-Rohrwig Hainz
A new entrant in the IAM Patent 1000 this year, the Austrian outpost of CMS is a vital cog in the firm’s extensive network spanning 43 countries worldwide; this enviable reach proves particularly expedient on multi-jurisdictional mandates. In Vienna, the practice is a discerning choice for patent infringement litigation and licensing briefs, courtesy of its granular understanding of SPC, SEP and FRAND issues. Leading the troop is Egon Engin-Deniz, who showcases his creative, commercially savvy instincts in cross-border disputes in the agro-pharma and electronics sectors. See p956 for firm profile
DORDA
“The entire DORDA team is extremely responsive: they treat every client as a top priority and take the time needed before acting swiftly.” Housing
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Austria one of the largest IP squads in Austria, the firm has further enhanced its offering by establishing an interdisciplinary digital industries group that combines talents from diverse departments to best serve the needs of digital and technology heavyweights. Managing partner and all-rounder Axel Anderl guarantees smooth sailing from the get-go. “I love his industry knowledge and ability to make things happen,” enthuses one client. “Axel always ensures that the most skilled professionals are involved in each matter and that the case is handled efficiently.” He recently linked up with Bernhard Heinzl to assist Kriesel Electric – one of the world’s most innovative battery development companies – in licensing negotiations. Of Heinzl, a patron reports: “He is an approachable and hardworking patent attorney who you want on your side in cross-border cases.” The duo are also co-contributors to the first comprehensive commentary on Austrian patent law.
Firms: litigation and transactions
Gassauer-Fleissner Rechtsanwälte GmbH
CMS Reich-Rohrwig Hainz
The redoubtable Gassauer-Fleissner adopts a fearless approach to make-or-break pharmaceutical disputes and has become a prime destination for myriad originator companies as a result. It regularly joins forces with the best firms in Germany and the United Kingdom to design and coordinate the tightest of litigation strategies. A trusted partner to research institutes, Dominik Göbel “is well versed not only in patent law, but also in regulatory issues, and provides in-depth analyses of any given situation. He offers creative, well-thought-through solutions”. “As humble as he is brilliant, Dominik is the one to call when a case crops up in Austria.” Colleague Manuel Wegrostek likewise “delivers fantastic solutions. Some lawyers may worry too much about ruffling feathers, but Manuel’s ability to politely challenge has always been impressive – he is an essential tool in any effective litigation team”. Overseeing things with a hawkish eye is the eminent Christian Gassauer-Fleissner who garners effusive praise from peers: “Christian is a man who needs no introduction – everyone knows he is simply the best. He holds a very prominent position and is one of the most experienced patent litigators in the country.”
GEISTWERT Rechtsanwälte
Trailblazer GEISTWERT is hailed as “a ground-breaking firm that has changed the face of the market. There is no other comparable set-up, where five innovative partners are all stars in the IP field”. “The firm works on a partner level, which gives clients utmost confidence in its super-clear results. Its response times are ultra-quick and its entrepreneurship
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Gassauer-Fleissner Rechtsanwälte GmbH GEISTWERT Rechtsanwälte Schwarz Schönherr Rechtsanwälte KG DORDA Schoenherr Wiltschek Plasser Rechtsanwälte Wolf Theiss Baker McKenzie CERHA HEMPEL See p956
Salomonowitz Rechtsanwälte Attorneys at Law Schmidtmayr Sorgo & Wanke
allows the team to fully see and understand each company’s commercial goals.” Contentious firepower is provided in abundance by Alexander Schnider, Rainer Schultes and Constantin Kletzer. A “master strategist and logical thinker”, Schnider is “the ace up your sleeve when you need legal advice that is crucial to your business operations. The great thing about Alex is that there are no problems for him – only solutions. He sees right through the white noise and cuts to heart of any issue”. The “top-tier” Schultes has “profound knowledge of case law and very good technical understanding, and is extremely well prepared for each case – he dives straight to the point and never strays away from the subject matter”. Kletzer is also highly recommended: “Quick, sharp and efficient, he is a top choice.” Commercialisation specialist Juliane Messner “is an outstanding negotiator, an extraordinary practitioner and a great team player. Her business knowledge is incredible and she provides advice that hits core issues in a quick turnaround time”. Another active member in the transactional setting is Max Mosing, “one of Austria’s best deal makers. He is tough and has extremely broad legal knowledge, but stays gracious and calm, even in the most difficult situations”.
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Austria Luminaries Albin Schwarz Schwarz & Partner
her belt. She works wonders on non-contentious briefs; while IAM Patent 1000 debutante and molecular biologist Manuela Loidl manages portfolios with a deft touch.
Helmut Sonn SONN & PARTNER Patentanwälte
Salomonowitz Rechtsanwälte Attorneys at Law
Lothar Wiltschek Wiltschek Plasser Rechtsanwälte
Patentanwalt Kliment & Henhapel
For over 80 years, Kliment & Henhapel has been resolutely focused on providing cost-effective IP protection and comprehensive guidance that is easily applied in a business context. The outfit exhibits remarkable range in tailoring its services to companies of all shapes and sizes across the industry spectrum. Austrian and European patent attorney Bernhard Henhapel has a rare affinity for all things mechanical. He is in high demand at the Austrian courts, where he provides concise yet thorough opinions that often contribute to national practice.
Puchberger & Partner Patentanwälte
Puchberger & Partner “delivers exceptional IP services at a consistently high quality”. The firm has spent more than a century turning domestic patent protection into a fine art; and having lately trained its attention on international horizons, it is fast becoming a trusted adviser to foreign clients too. Fuelling this momentum is Peter Puchberger, whose gravitas shines through in his position as a court-appointed expert and lay judge. “He provides quality commercial advice when formulating filing strategies and dealing with any objections from the patent office.” Colleague Georg Puchberger “quickly acquaints himself with the complex and legal aspects of a case, demonstrating unmatched expertise in patent infringement and cancellation proceedings”. An authority on computer-implemented inventions, Andreas Gehring recently contributed to a textbook on procedural law at the Austrian Patent Office along with Georg.
REDL Life Science Patent Attorneys
“One of the best firms in the biotechnology field, REDL Life Science Patent Attorneys is simply excellent.” Its superb strategic counsellors prove their worth time and time again on all manner of pharmaceutical instructions. The squad takes its cue from firm founder Gerda Redl, a prominent industry name with 20 years of both in-house and private practice under
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Boutique Salomonowitz Rechtsanwälte Attorneys at Law may be smaller than some of its peers, but this has proved no obstacle to success. It forges deep and lasting relationships with patrons, has an intimate understanding of their needs at both a legal and business level, and comes up with creative ways to defend their interests. Namesake Sascha Salomonowitz is an “exceptional lawyer” who draws on two decades of experience to conjure up durable litigation strategies.
Schmidtmayr Sorgo & Wanke
A new addition to the Austrian listings this year is commercial outfit Schmidtmayr Sorgo & Wanke, which makes its debut in no small part due to the enthusiastic feedback garnered by IP division lead Alexander Koller. The shrewd adviser is a driver of dialogue among the IP sector and a sage counsellor to A-listers in the electronic, pharmaceutical and mechanical engineering sectors. “Alexander gives valuable advice and practical contributions in a way that makes for effective and enjoyable cooperation. He communicates clearly and has a fantastic ability to embrace a case, even in the most advanced stages – all while keeping existing case law at the forefront of his mind. This allows him to provide precise, specific and well-reasoned suggestions and an exceptional service.”
Schoenherr
‘Innovation’ and ‘quality’ are the watchwords at Schoenherr, a firm which is in particularly hot demand for its contentious capabilities. It recently strengthened its offering by uniting its IP and technology groups and increasing overall headcount – moves which should further benefit its cutting-edge clientele. Guido Kucsko and Michael Woller run a tight ship and never lose sight of the bigger picture. The distinguished Kucsko – a veteran of some 30 years’ standing – has a poised courtroom demeanour that sets him apart from his adversaries. Woller is a sparkling communicator whose comprehensive technical knowledge translates into easily implementable guidance. Rounding off the team, the “detail-oriented” Dominik Hofmarcher is a rising star whose fine-tuned understanding of trade secrets has earned him a place in the IAM Patent 1000 this year.
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Austria Manuela Loidl REDL Life Science Patent Attorneys
Individuals: prosecution Highly recommended
Herwig Margotti Schwarz & Partner
Daniel Alge SONN & PARTNER Patentanwälte
Harald Nemec Schwarz & Partner
Andreas Gehring Puchberger & Partner Patentanwälte
Peter Pawloy SONN & PARTNER Patentanwälte
Michael Stadler Wildhack & Jellinek Andreas Wildhack Wildhack & Jellinek
See p332
Andreas Pföstl Schwarz & Partner
Recommended
Georg Puchberger Puchberger & Partner Patentanwälte
Rainer Beetz SONN & PARTNER Patentanwälte
Peter Puchberger Puchberger & Partner Patentanwälte
Reinhard Hehenberger Beer & Partner Patentanwälte
Gerda Redl REDL Life Science Patent Attorneys
Bernhard P Henhapel Patentanwalt Kliment & Henhapel
Johannes Strobl SONN & PARTNER Patentanwälte
Stephan Hofinger Torggler & Hoffinger
Andreas Weiser Weiser & Voith Patentanwälte Partnerschaft
Marc Keschmann Haffner & Keschmann
Schwarz & Partner
Ascending to the highly recommended tier for 2021, Schwarz & Partner comes warmly endorsed for its prosecution proficiency, carefully thought-out filing programmes and judicious advice across the industry spectrum – although biotechnology and pharmaceuticals are fortes. Founder Albin Schwarz provides outstanding leadership to the team; while certified court expert Andreas Pföstl is a font of insight. Holding things down on the electrical engineering front is Herwig Margotti, a favourite of players in the automotive sector. Armed with a degree in chemistry, Harald Nemec can quickly get to grips with even the most complex portfolios.
Schwarz Schönherr Rechtsanwälte KG
A firm fixture on the Austrian market, Schwarz Schönherr “is one of the few boutiques that has accessible partners who deliver exceptional quality and have unmatched expertise in contentious
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patent, trademark and design matters”. It has carved a particular niche in the pharmaceuticals space, although no technology is off limits: as an example, the outfit recently successfully defended A1 Telekom, Austria’s biggest telecommunications provider, in preliminary injunction proceedings against TeleTan. Head of the IP team Georg Schönherr is “a court veteran who knows the system inside out. You can always rely on him for the right advice”. Pharmaceutical maven Thomas Adocker has “enormous know-how in substantive patent law. He is one of the few lawyers who really understands the legal and the technical aspects, delivering very thorough work, great advice and lightning-fast replies”.
SONN & PARTNER Patentanwälte
SONN & PARTNER is “a well-established office that has made the leap into the modern age. With its own tools, it closes the gap between companies and the IP world, and has long understood how to speak the language of its clients”. Coupling strategic nous with refined management skills is department head Rainer Beetz. The mechanics whizz “has a deep
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Austria Individuals: litigation and transactions Thomas Adocker Schwarz Schönherr Rechtsanwälte KG Christian Gassauer-Fleissner Gassauer-Fleissner Rechtsanwälte GmbH Dominik Göbel Gassauer-Fleissner Rechtsanwälte GmbH Constantin Kletzer GEISTWERT Rechtsanwälte Georg Kresbach Wolf Theiss Alexander Schnider GEISTWERT Rechtsanwälte Georg Schönherr Schwarz Schönherr Rechtsanwälte KG Rainer Schultes GEISTWERT Rechtsanwälte Alexander Koller Schmidtmayr Sorgo & Wanke Guido Kucsko Schoenherr Juliane Messner GEISTWERT Rechtsanwälte Max W Mosing GEISTWERT Rechtsanwälte David Plasser Wiltschek Plasser Rechtsanwälte Michael Woller Schoenherr
understanding of patent law, is open minded when it comes to critical discussions and provides creative advice”. Working alongside him in the mechanical arena is IAM Patent 1000 newcomer Johannes Strobl, a “highly ambitious attorney” who receives high praise from patrons. “I greatly appreciate his insight, kind personality and ability to act in the interest of our firm as if it were his own,” reports one. Peter Pawloy and Daniel Alge take the lead on the life
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Axel Anderl DORDA Alexander Cizek CIZEK | IP Claudia Csáky Graf & Pitkowitz Rechtsanwalte GmbH Egon Engin-Deniz CMS Reich-Rohrwig Hainz Lukas Feiler Baker McKenzie Martina Grama Baker McKenzie Klaus Haslinger Haslinger/Nagele & Partner Bernhard Heinzl DORDA Karina Hellbert Polak & Partners Dominik Hofmarcher Schoenherr Barbara Kuchar KWR Karasek Wietrzyk Rechtsanwälte GmbH Katharina Majchrzak CERHA HEMPEL Sascha Salomonowitz Salomonowitz Rechtsanwälte Attorneys at Law Bernhard Tonninger Tonninger Schermaier & Partner Manuel Wegrostek Gassauer-Fleissner Rechtsanwälte GmbH
sciences side; frequently going up against some of the biggest names in the industry, they make the firm “number one when it comes to prosecution”.
Wildhack & Jellinek
Earning rave reviews from peers and clients alike, Wildhack & Jellinek acquits itself with distinction in prosecution and handles litigation with finesse,
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Austria all while providing a bespoke, attentive service. Chemistry ace Andreas Wildhack is a brilliant strategist who meets and exceed the demands of even the most exacting clients: “He is a versatile expert with a responsive, easy-going nature.” Focused on electrical engineering and computer technology, Michael Stadler has a keen eye for detail and an astute business sense; having previously served as a judge, he also has first-hand insight into the inner workings of the courts.
Wiltschek Plasser Rechtsanwälte
Highly specialised litigation boutique Wiltschek Plasser is deeply embedded in the Austrian legal landscape. Although it runs lean, it punches well above its weight and has all the contentious smarts needed to bring even the most heated of life sciences disputes to a successful close. The “extremely bright” David Plasser can quickly tease out the trickiest technical knots; patents, designs, unfair competition and pharmaceutical law are all within his wheelhouse. Senior statesman Lothar Wiltschek has played a hand in all the major infringement cases that have come before the courts over the last 20 years and is a guiding light at the firm.
Wolf Theiss
Full-service giant Wolf Theiss understands the business of patents on a global scale, and the sheer depth and strength of its team ensure that most complex mandates are dispatched with utmost efficiency. Although it receives instructions from a myriad of industries, the outfit really makes its presence felt in the pharmaceutical sphere, tending to the needs of some of its top players. Heading up the IP and IT team is Georg Kresbach, a “fantastic lawyer whose ability to handle international instructions from industry heavyweights is one of his most precious assets”. He puts in resonant performances both in the courtroom and at the negotiating table.
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Other recommended experts
Admitted to the New York and Austrian Bars, CIZEK IP founder Alexander Cizek is an IP renaissance man with a cosmopolitan outlook. “Up-and-coming” Claudia Csáky of Graf & Pitkowitz Rechtsanwalte GmbH is “ambitious and technically skilled. She expertly handles international briefs and is doing an excellent job of growing Graf’s patent practice”. Haslinger/Nagele & Partner co-founder Klaus Haslinger showcases his polished advocacy skills in solving challenging disputes at the intersection of competition, patent and design law. When life sciences aficionado Karina Hellbert is not duking it out in court, she spends her time training the future generation of patent lawyers as a lecturer; she operates out of Fiebinger Polak & Partners. At Torggler & Hofinger, Stephan Hofinger is a “brilliant and diligent patent attorney”. The IAM Patent 1000 newcomer has a broad practice encompassing both patents and trademarks. Haffner & Keschmann’s Marc Keschmann is meticulous in his approach and speaks the language of inventors, which makes for fruitful cooperation and gets patent applications through to grant in no time. “One of the best and most experienced lawyers in the country”, Barbara Kuchar of KWR Karasek Wietrzyk Rechtsanwälte GmbH is an “essential partner” who “provides invaluable assistance. Her superiority lies in her deep business understanding and ability to sense the direction which a judge is leaning in”. At Tonninger Schermaier & Partner, Bernhard Tonninger makes it his mission to secure the wins that clients need in make-or-break cases. He dives deep into the nitty-gritty of each case to work out how best to present it in court. Many precedent-setting Austrian decisions bear the fingerprints of the “truly excellent” Andreas Weiser, who has also contributed to the most comprehensive commentary on Austrian patent law. He can be found at Weiser & Voith Patentwälte Partnerschaft.
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Wildhack, Andreas Senior Partner – Wildhack & Jellinek office@wildhack.at | www.wildhack.at
Andreas Wildhack (Dr techn, Dipl-Ing) is admitted as an Austrian and European patent, trademark and design attorney. He graduated from the Technical University of Vienna, Austria and Lunds Tekniska Högskola in Lund, Sweden with a degree in technical chemistry. He is a senior partner at Wildhack & Jellinek Patent Attorneys and advises on all aspects of IP matters, including prosecution and litigation proceedings before the EPO, the Austrian Patent and Trademark Office, the EU Intellectual Property Office (EUIPO) and WIPO. Mr Wildhack’s practice focuses on both prosecution and litigation involving patents, utility models, supplementary protection certificates, trademarks and designs. This includes opposition and appeal proceedings before the EPO, and national nullity and opposition proceedings before the Austrian Patent Office and the Austrian Higher Regional Court in Vienna. Mr Wildhack is trained and experienced in the fields of chemistry, chemical engineering, pharmaceutical chemistry and life sciences. He is regularly involved in patent infringement proceedings – especially regarding pharmaceuticals – and has acted as international coordinator in pharmaceutical cross-border patent litigation. Mr Wildhack is a board member of the Austrian Patent Attorney’s Chamber and also acts as a technical expert judge before the Vienna Commercial Court, the Higher Regional Court and the Austrian Supreme Court in patent litigation cases.
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Wildhack & Jellinek Landstrasser Hauptstrasse 50 Eingang Sechskrügelgasse 2 Vienna 1030 Austria T +43 1 712 1001 F +43 1 712 1001 20 Professional associations • AIPPI • epi • FICPI
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Belgium
Belgium’s IP scene has seen some recent legislative changes, with the amendment of the Benelux Convention on Intellectual Property and the implementation of the EU Trademarks Directive, the latter of which involved some revisions to the national patent legislation. Further anticipated developments include the potential establishment of a local division of the Unified Patent Court in Belgium; but as the court’s fate hangs in the balance, question marks remain over how this might ultimately play out. On the contentious front, activity remains relatively stable, with life sciences skirmishes dominating the caseload and high-tech issues – particularly in artificial intelligence (AI) – gaining increased traction. Although the legal landscape has not changed dramatically, the prevalence of smaller boutique firms is growing, as evidenced by the addition of several such outfits to this year’s rankings.
Allen & Overy LLP
Allen & Overy’s Belgian contingent has enjoyed a redletter year thanks to a series of headline-grabbing new hires. The group operates adroitly on both sides of the contentious/non-contentious divide, with a robust litigation division sitting alongside an equally powerful standalone transactions practice. Peter Van Dyck, Geert Glas, and Filip Van Elsen are the names to note when it comes to closing deals. When he is not providing holistic IP support to his A-list clientele, practice head Van Dyck shares his wisdom by lecturing at KU Leuven University. Glas has spent more than three decades in the game and is a certified arbitrator, giving him a keen sense of when to litigate and when to push for out-of-court settlements. Van Elsen is in charge of the global TMT department and is intimately familiar with both the telecommunications and life sciences spaces.
ALTIUS
Leading independent full-service firm ALTIUS has a well-established patent practice, with a proven track record in pharmaceutical litigation for industry giants such as Eli Lilly and Gilead. Department head Christophe Ronse and his right hand man, Kirian Claeyé, run point on these matters: “Christophe and Kirian are a fantastic team, always forcing their opponents to do their utmost without being unnecessarily aggressive.” The “intelligent and astute” Ronse is a first port of call for pharmaceutical originators faced with must-win suits; while IAM Patent 1000 newcomer Claeyé is “a highly respected lawyer with a commanding, tough approach, but a gentlemanly demeanour”. Philippe de Jong also has a penchant for the life sciences and is highly regarded in the agri-food business. He recently represented Heineken in a cross-border patent dispute involving the alleged infringement of a beer dispensing device. “His in-depth knowledge of patent law and eagerness to fully comprehend the invention help him win cases.”
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Arnold & Siedsma
Arnold & Siedsma has made “developing longstanding and fruitful client relationships” its overarching priority, to the delight of patrons. Based across three Belgian offices, the group recently added Hasseltbased independent patent attorney firm LC Patents to its practice – a move which brings extensive chemistry expertise to the table and should boost its profile in the life sciences, pharmaceutical and biotechnology sectors. It already enjoys an elevated reputation in the high-technology field, with Samsung a key client; the needs of the chaebol are tended to by staunch leader and well-known figure Nele D’Halleweyn and colleague Yannick Philippaerts, who together stand out for the “consistency of their guidance and their technical knowledge”. Nele has played a key role in the creation of prosecution strategies and patent portfolios all around the world, and wins plaudits for her “critical mind, courtroom skills and keen eye for detail”. Philippaerts is a seasoned patent attorney and business-minded strategist who can be relied on for all this and more – particularly by SMEs. See p924 for firm profile
AWA
Since joining forces with Pronovem a year ago, AWA has been flexing its strengthened muscle across five offices to further cement its position in Europe. Bolstered by the former firm’s four decades of experience and impressive filing capabilities, the newly minted powerhouse continues to assist innovators through smart prosecution and portfolio management, forward-thinking strategy, a keen eye for emerging threats and decisive input on market plans. A broad bench of talent includes life sciences specialist Eric Van Malderen and material scientist Dieter Heck, who have jointly been assisting Galactic and its engineering subsidiary Futerro in strategy work for several of their patent applications, as well as offering freedom-to-operate analyses. Van Malderen has a background in molecular biology, while Heck
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Belgium “manages files with professionalism and consistency”. A meticulous EPO advocate and a newcomer to the IAM Patent 1000 this year, Marc Lerho draws on his PhD in biophysical chemistry in overseeing strategy and handling oppositions for international research centre CRM Group, whose strategy he oversees and oppositions he handles. See p928 for firm profile
Baker McKenzie
Global legal titan Baker McKenzie is a potent IP player across the whole of Europe, the Middle East and Africa, with a battalion of industry experts serving as trusted guides to the world’s innovators. Its Belgian contingent – which it has been investing in of late – is a vital cog in this slick machine, drawing judiciously on the wider firm’s resources to go above and beyond for clients and find total solutions to their complex issues. It thrives in the consumer goods, retail and healthcare industries, under the command of Koen De Winter. Having spent more than 38 years at the IP coalface, he is a font of knowledge for both domestic and multinational companies; on the latter point, he has recently been busy filing patent applications on behalf of Australian furniture manufacturer Elbee Pty. De Winter regularly teams up with noted trade secrets authority Michaël De Vroey, who makes his debut in the guide this year and is lauded for his invaluable assistance in even the most challenging scenarios. Together the pair collaborated on the Belgian contribution to the Study on Trade Secrets and Confidential Business Information commissioned by the European Commission in the preparation of the Trade Secrets Directive.
Bird & Bird LLP
As members of “a first-rate firm for cross-border patent litigation in Europe”, Bird & Bird’s Belgian practitioners provide stout defence in multijurisdictional disputes and see high-rolling deals through to close, working hand in glove with their counterparts across the firm’s global network. JeanChristophe Troussel is “the glue that keeps the team together” in Brussels; he has “a fantastic track record in patent cases”. He recently linked up with Domien Op de Beeck to represent Proximus NV, Belgium’s largest telecommunications provider and part of the Nokia group, in multifaceted proceedings regarding alleged SEP infringements and FRAND offers – the first case of its kind in Belgium. Op de Beeck is “a superb litigator – one of the best of his generation. He is quiet but effective, with an energetic, methodical approach that is ideal for presenting the case to the judge in court”.
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Firms: prosecution Highly recommended Arnold & Siedsma
See p924
De Clercq & Partners
See p966
GEVERS Recommended AWA
See p928
Brantsandpatents Bureau MFJ Bockstael NV Calysta IPLodge
See p1002
Kirkpatrick NLO
See p1028
VO Patents & Trademarks
See p1082
Brantsandpatents
Steadily steering clients through the patenting process since 2011, Brantsandpatents is benefiting from a “growing reputation” thanks to the hard graft of leading partners Johan Brants and Ellen Crabbe. The pair are both “deserving of recognition” and are “valuable assets to have on your side, while also being enjoyable to work with”. Founder and namesake Brants is a patent veteran of more than 25 years’ standing who takes “a very commercial and innovative approach” to his work in the Benelux, strategically transforming patents into useful tools for all businesses. Crabbe’s practice is informed by a PhD in biotechnology; she is hailed as “knowledgeable in her field and a pleasure to be around”.
Bureau MFJ Bockstael NV
For over 85 years, Bureau MFJ Bockstael NV has provided precision prosecution services to a broad and varied clientele. It has the technical chops to tackle innovations in a wide variety of sectors, but especially excels in civil, electromechanical and chemical engineering. Drawing on his experience in these fields, department head Patrick Van Varenberg
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Belgium “not only gives sound legal advice, but also offers helpful tips for completing patent applications, devising strategies to expand portfolios”. Former aerospace engineer Lieven Van Hunsel joins him in the IAM Patent 1000 this year: his commercially focused approach and deft drafting skills yield strategic solutions and ironclad protection.
Calysta
Young, dynamic firm Calysta is growing rapidly thanks to the “high quality, reliability and availability of its team, company network and services – all of which are provided at a low cost, with no unnecessary administrative steps”. It has a complete mastery of the pharmaceutical, biotechnology and chemistry spaces; while recent hires have also bolstered its mechanical and electronic capabilities. Through the arrival of Johannes Wohlmuth – a qualified attorney in four European countries – the group has gained access to a wealth of international knowledge; the physicist is an indispensable resource for everyone from start-ups to multinationals. Meanwhile, CEO Ludivine Coulon “conducts in-depth analysis and quickly grasps the technical issues at hand”. “She provides advice that is tailored to the client’s level of understanding and the severity of the case, is experienced at contesting patents and takes good care of filings to ensure a stronger defence.”
CAPE IP Law
The patent group at CAPE IP Law has an impressive history in patent litigation and an unstinting dedication to client service, providing fulsome commercial support and nurturing fruitful relationships to the benefit of patrons such as Europlasma NV, which the firm recently represented in nanotechnology litigation against P2. Running point on this matter was practice head Véronique Pede, who earns acclaim for her “tenacity and determination”, as well as her “expertise and experience in dealing with the full breadth of IP issues”. “Véronique is an amiable, sharp and straightforward lawyer who fights for her clients,” reports one peer. “She quickly understands their needs and can explain difficult issues in a simple manner. Working with her is a pleasure.”
Crowell & Moring LLP
Crowell & Moring is a “fantastic firm” whose remit stretches from intellectual property to competition law and regulatory concerns: “It excels at addressing and supporting these issues, particularly when the three are intertwined. Its approach is very client focused and its team are outstanding strategic
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thinkers – a solid 10 out of 10.” It has recently been handling several disputes on behalf of pharmaceutical giants Sandoz and Mylan – briefs that have kept each ranked professional busy. Kristof Roox has earned the utmost respect of peers: “He and his team quickly understand and support clients with difficult matters. Their advice is always excellent – pragmatic and business orientated. Kristof is passionate about his cases and obtaining the best outcome for clients; he is a formidable foe.” Also receiving positive feedback are Jurgen Figys and Jan-Diederik Lindemans. “We’ve been collaborating with them for quite some time and have never had a reason to stop,” reports one client. “They are first-rate, responsive lawyers who deliver excellent results.” Figys is “very detailed in his guidance”; while Lindemans showcases “impressive skills” in the courtroom. Gunther Meyer rounds out the team as a consummate litigator and a smooth negotiator and drafter of licensing agreements.
De Clercq & Partners
One of Belgium’s most prestigious patent prosecution shops, De Clercq & Partners is home to a “solid team of highly qualified experts” that keeps it at the forefront, especially in the biotechnology sphere. Setting the tone from the top is namesake and molecular biology PhD Ann De Clercq, who was previously an examiner at the EPO. She regularly teams up with fellow former EPO examiner Koen Vanhalst, former Bayer Cropscience patent counsel Liesbet Paemen and molecular genetics PhD Andrej Michalík on biotechnology instructions, providing technically astute, commercially minded guidance. Specialised in the field of chemistry are native English-speaker Jeffrey Gyi; IAM Patent 1000 newcomer Caroline Hennin; and Sakina Bounaga, who has spent time as a senior scientist at leading Belgian biotechnology company Cropdesign NV. The trio handle matters with exactitude and have been assisting TOTAL Research & Technology in an ongoing matter since its granted patent was opposed. See p966 for firm profile
Eubelius
Belgium’s largest independent law firm enters the IAM Patent 1000 this year thanks to the overwhelmingly positive reviews garnered by IP head Pieter Callens, a “hardworking, enthusiastic lawyer who follows developments in patent law very closely”. The outfit has curated an extensive network of associates throughout other jurisdictions, which it calls on in tending to the needs of a diverse clientele encompassing everything from fledgling businesses to multinationals. It recently represented the Belgian
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Belgium Office for Intellectual Property in two separate suits involving the loss of patent rights in Belgium as a result of the late deposit of the European patents translation, which were handled by Callens. “Pieter has a solid understanding of the business interests at stake and knows how to best serve his clients.” “He isn’t afraid to challenge people’s ideas and always comes up with creative strategies that are in line with the company’s goals.”
Firms: litigation and transactions
Fieldfisher LLP
Allen & Overy LLP
With “a wealth of IP experience and a clear understanding of patent procedure worldwide”, the Belgian outpost of major European player Fieldfisher is a persuasive contender on the national and regional patent scene – not least due to the insight and reputability of practice pillars Hakim Haouideg and Stijn Debaene. The high-technology aces have recently been busy defending Telenet in patent infringement proceedings regarding remote controls. Haouideg is regularly involved in mustwin cases, working closely with both start-ups and multinationals, and also has a flair for the fine print of licensing agreements; while department head Debaene provides shrewd counsel to telecommunications giants in contentious scenarios and has carved out a further niche in sports law.
Fox IP Law
While only established in October 2020, Zottegembased IP boutique FOX IP Law is already making waves on the market, with former CAPE IP lawyer Patricia Cappuyns at the helm. She has spent over 20 years litigating patents at the highest level and knows the pharmaceutical industry like the back of her hand, as she recently demonstrated in a complex validity and infringement dispute on behalf of Teva. “Patricia is one of Belgium’s top patent litigators. She is very approachable, responsive, knowledgeable and creative – not only in patents, but in the pharmaceutical sector in general.” Her strategies result in “positive outcomes and stronger market positions for clients”.
GEVERS
The storied GEVERS has provided premier IP services for over 120 years and today has 300 highly trained professionals on hand to continue this tradition. Its clients benefit from a wide European reach, with its attorneys able to file patents in countries across the EU, and two French offices supporting its six in Belgium. Its “experienced and organised” strategic advisers provide straightforward guidance that consistently exceeds clients’ expectations. Chemist
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ALTIUS Bird & Bird LLP Crowell & Moring LLP HOYNG ROKH MONEGIER
See p998
Fieldfisher LLP Linklaters LLP NautaDutilh Simont Braun Stibbe Baker McKenzie Bureau MFJ Bockstael NV CAPE IP Law Eubelius Fox IP Law Inteo Janson Baugniet Taylor Wessing Wiggin LLP
See p1090
Ingrid Luyten draws on a PhD in organic chemistry and many years of practising in-house to assist big names in the pharmaceutical and agricultural science industries. Also highly capable in this space are IAM Patent 1000 debutants Stijn Lagaert and Raf Caers. Lagaert dazzles with his know-how on patentability and freedom-to-operate issues, as well as medical and agricultural SPCs; while Caers is “passionate about his work”: “He has a professional demeanour and his openness and ingenuity are highly alued.” Samuel Denis and Frank Van Coppenolle hold things down on the high-technology side. Dennis is “extremely knowledgeable about all aspects of the
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Belgium patent application process, from an administrative, strategic and technical standpoint. He has proven himself on many occasions and his partnerships have been excellent from day one”. The EPO is like a second home to Van Coppenolle, who shines in oppositions and appeals. Physicist Jurgen Duyver is a fan favourite in both the C-suite and the lab: “He understand the client’s needs, as well as the technology.”
HOYNG ROKH MONEGIER
Despite some recent personnel losses, the Belgian contingent of global behemoth HOYNG ROKH MONEGIER continues to flourish and has maintained its prominence, especially when it comes to life sciences litigation. Cross-border instructions are a breeze, thanks to seamless cooperation between its office network. Under the stewardship of Liesbeth Weynants, it has been assisting Teva in an EUwide infringement dispute over its most lucrative innovation. “Liesbeth gives excellent advice that is both clear and practical, showing her thorough knowledge of local procedure and pharmaceutical regulatory issues. Anyone seeking advice or assistance in Belgium should contact her.” Together with Benoît Strowel, she also recently defended one of Boehringer Ingelheim’s blockbuster drugs. Strowel puts in polished performances at the French and Belgian courts, and combines insight on patent and regulatory law for the benefit of leading biopharmaceutical companies. Sharing this specialisation is Steven Cattoor, whose “excellent writing skills” are put to good use in both patent and trade secret litigation. See p998 for firm profile
Inteo
Robust contentious capabilities, deep knowledge of substantive patent law and outside-the-box solutions are the USPs of Inteo. “Despite its small scale, the outfit competes with larger firms at a lower rate.” The boutique recently went out to bat for pioneering DNA sequencing company Illumina Cambridge Limited in a major dispute which is currently pending in multiple jurisdictions; the Belgian infringement proceedings are running concurrently with the UK proceedings, handled by Powell Gilbert. Taking care of this brief locally is Kristof Neefs, an “intelligent, fast thinker” who has “really made a name for himself”: “Kristof is always determined to achieve the best results. He has a deep understanding of IP and a very open-minded attitude, making him the ideal lawyer for clients to have on their side.” Co-founder Sofie Cubitt is trusted counsel to biotechnology company Galapagos,
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advising it on licensing initiatives with academic institutions and business partners; she is a “tough but realistic negotiator” who “knows clients’ needs and speaks their language”.
IPLodge
IPLodge makes it its mission to go above and beyond for patrons, dispensing vital strategic support throughout the patenting process. Its highly qualified attorneys leave no stone unturned to secure the strongest, most comprehensive protection for clients’ inventions. Key among them is Michaël Beck, a former research engineer at Alcatel-Lucent Bell Lab whose insider’s perspective on the industry proves invaluable. He integrates his professional and legal backgrounds to superb effect. See p1002 for firm profile
Janson Baugniet
Janson Baugniet marries a complete command of Belgian and French IP law with a knack for getting licensing agreements inked and fraught disputes resolved. Clients – ranging from pharmaceutical companies to energy players – also enjoy access to a new in-house platform which allows them to manage their portfolios digitally. Mireille Buydens never wavers in the toughest of contentious circumstances and is “unafraid of complex inventions”: “Her briefs are as convincing as her courtroom appearances, which is reflected in her success rate. Mireille’s understanding of IP, as well as business and technology, makes her a very effective lawyer.” IP department co-head Hans Dhondt is a smooth operator both in the courtroom and at the deal table; he is a natural fit for fashion, engineering and food concerns.
Kirkpatrick
Venerable boutique Kirkpatrick – which has been dedicated to IP excellence for some 165 years – is bursting at the seams with multilingual lawyers who have deep reserves when it comes to the protection of patents, trademarks and designs. Its guidance is tailored to the individual needs of customers, whether they be private inventors or multinationals; and it drafts and negotiates IP contracts, and conducts due diligence, with a hawkish eye for detail. Head of patents Emilie Blanche is a name for the address book.
Linklaters LLP
Well-oiled machine Linklaters provides a businessminded patent service with a global touch. While the Belgian contingent is best known for its transactional
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Belgium Jeffrey Gyi De Clercq & Partners
Individuals: prosecution Highly recommended
See p348
Dieter Heck AWA
Johan Brants Brantsandpatents Ann De Clercq De Clercq & Partners
See p345
Nele D’Halleweyn Arnold & Siedsma
See p344
Liesbet Paemen De Clercq & Partners
See p352
Recommended
Caroline Hennin De Clercq & Partners
See p349
Annemie Jaeken VO Patents & Trademarks
See p350
Stijn Lagaert GEVERS Marc Lerho AWA
Michaël Beck IPLodge
See p342
Ingrid Luyten GEVERS
Sakina Bounaga De Clercq & Partners
See p343
Andrej Michalík De Clercq & Partners
See p351
Marco Box VO Patents & Trademarks
See p666
Marco Molling VO Patents & Trademarks
See p681
Raf Caers GEVERS
Frans Ostyn KOB nv
Ludivine Coulon Calysta
Yannick Philippaerts Arnold & Siedsma
Ellen Crabbe Brantsandpatents
Axel Plas IP Hills
Christophe De Groote Abyoo
Stephanie Sarlet NLO
Samuel Denis GEVERS
Frank Van Coppenolle GEVERS
Jurgen Duyver GEVERS
Lieven Van Hunsel Bureau MFJ Bockstael NV
skills, a dedicated cross-practice team of highly trained lawyers handles both contentious and noncontentious matters with verve. It has lately been advising Kaneka Europe Holding Company on IP co-ownership concerns, under the stewardship of seasoned IP head Pieter Van Den Broecke and IAM Patent 1000 newcomer Tom De Coster. A commercially savvy lawyer with a measured
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See p353
Eric Van Malderen AWA Koen Vanhalst De Clercq & Partners
See p354
Johannes Wohlmuth Calysta
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Belgium approach, Van Den Broecke co-leads the firm’s global consumer sector group. De Coster is fascinated by technology and the processes that underpin it, and is an active member of the IP Committee of the American Chamber of Commerce to the European Union.
NautaDutilh
Individuals: litigation and transactions Mireille Buydens Janson Baugniet Carl De Meyer Wiggin LLP
Premium patent support that considers all angles is the calling card of NautaDutilh. The firm – which is a heavyweight of the patent scene both in Benelux and beyond – “acquaints itself with the technology and is there for clients every step of the way”. Practice cohead Tanguy de Haan regularly acts as lead partner in pan-European litigation, adopting a meticulous approach which leaves no stone unturned. Leading alongside him, Florence Verhoestraete is another crack litigator who earns plaudits for her “candid input and effective defence strategies”. “She is direct and to the point, quickly getting to the heart of the matter, and a cool, impartial adviser. She is always well prepared in court, where she appears to be equally calm and confident.” Philippe Péters draws on his encyclopaedic understanding of IP law to lend insight on both patent disputes and licensing matters.
Christophe Ronse ALTIUS
NLO
Patricia Cappuyns Fox IP Law
Building on its impressive presence in the Netherlands, NLO continues to consolidate its foothold in the Belgian market. Committed to staying ahead of the curve, it recently established an AI taskforce to assist clients in this burgeoning sector. Other highlights include the management of Samsung’s patent portfolio, the Belgian component of which is entrusted to the capable hands of Stephanie Sarlet. Making her debut in the guide this year, Sarlet has a keen nose for guiding patent strategy and takes a solutions-oriented approach to European and global disputes; computer-implemented inventions are a forte. See p1028 for firm profile
Simont Braun
Many landmark cases bear the fingerprints of Simont Braun, which relishes the intricacies of complicated cross-border patent matters. No industry is off limits, thanks to the versatility of its adaptable, highly trained practitioners. Eric De Gryse, Fernand de Visscher and IAM Patent 1000 debutant Emmanuel Cornu all have an intuitive grasp of FRAND and SEP issues, which they have recently been demonstrating for the benefit of high-technology company Assia. The trio work well together, pooling their expertise to develop strong, thorough defences. Spearheading
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See p346
Kristof Roox Crowell & Moring LLP Benoît Strowel HOYNG ROKH MONEGIER Florence Verhoestraete NautaDutilh Liesbeth Weynants HOYNG ROKH MONEGIER Philippe Campolini Stibbe
Steven Cattoor HOYNG ROKH MONEGIER Emmanuel Cornu Simont Braun Domien Op de Beeck Bird & Bird LLP Eric De Gryse Simont Braun Tanguy de Haan NautaDutilh
the practice, De Gryse custom-builds IP strategy to clients’ individual needs and is a familiar face at the EPO. A renowned name on the Belgian litigation scene, de Visscher has been appointed co-president of the Council for Intellectual Property by the Belgian Federal Public Service for Economy. Cornu’s multijurisdictional know-how is brought into play in both patent disputes and arbitration briefs.
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Belgium Philippe de Jong ALTIUS
Pieter Callens Eubelius
Valentin De Le Court Daldewolf
Kirian Claeyé ALTIUS
Fernand de Visscher Simont Braun
Sofie Cubitt Inteo
Stijn Debaene Fieldfisher LLP
Tom De Coster Linklaters LLP
Christian Dekoninck Taylor Wessing
Michaël De Vroey Baker McKenzie
Geert V Glas Allen & Overy LLP
Koen De Winter Baker McKenzie
Carina Gommers Wiggin LLP
See p347
Hans Dhondt Janson Baugniet
Jan-Diederik Lindemans Crowell & Moring LLP
Jurgen Figys Crowell & Moring LLP
Kristof Neefs Inteo
Hakim Haouideg Fieldfisher LLP
Véronique Pede CAPE IP Law
Gunther Meyer Crowell & Moring LLP
Philippe Péters NautaDutilh
Karin Ottelohe ADVOCANT
Jean-Christophe Troussel Bird & Bird LLP
Pieter Van Den Broecke Linklaters LLP
Peter Van Dyck Allen & Overy LLP
Filip Van Elsen Allen & Overy LLP
Ignace Vernimme Stibbe
Patrick Van Varenberg Bureau MFJ Bockstael NV
Christel Brion Deloitte Touche Tohmatsu Ltd
Stibbe
The full-service Stibbe is tipped as “one of the best firms on the Belgian market”: its “technical and very smart” lawyers “always do an outstanding job”. Practitioners are encouraged to be creative through internal training and enhanced office digitalisation – all of which helps to fuel client success. They have every industry on lock, although the life sciences has
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become a particularly happy hunting ground since the 2019 arrival of Philippe Campolini, a “rising star” who is “extremely dependable, attentive and a very professional litigator”. “Philippe is not only a wonderful person, but also a trustworthy, down-toearth lawyer who prioritises the needs of his clients.” Colleague Ignace Vernimme has been assisting Mylan in a protracted merits case against Novartis since 2007; depending on the outcome, the decision could break new ground by significantly shifting the balance of power between generics and originators.
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Belgium Taylor Wessing
Hailed as “one of Europe’s top IP litigation firms”, global outfit Taylor Wessing is a relatively fresh face on the Belgian market, but has been making a splash thanks to the tireless efforts of Christian Dekoninck. An intelligent and astute partner, he receives spirited praise from those who work with him: “I found Christian to be a truly exceptional lawyer. He can assess the situation from various perspectives, provides practical guidance and always has the ear of the court. His diplomatic, respectful approach allows him to understand and balance opposing parties’ interests and deliver very clear and concise explanations. He astounds me.”
VO Patents & Trademarks
Dutch firm VO is an elite player on the regional IP scene and the Belgian contingent has done much to help it achieve this status. With a history dating back over a century, the outfit has amassed a vast trove of institutional knowledge that it puts to good use in assisting clients all over the world through its deep technical expertise and flawless filings. Captaining the Belgian ship is trained aerospace engineer Annemie Jaeken, an “astute attorney” who combines legal and technical ability with sparkling commination skills to distil complex technical principles into layman’s terms. Fellow engineer Marco Box is kept busy in all technical fields, including software, fine mechanical design and optics; EPO oppositions are a further string to his bow. Marco Molling loves building strategies from the ground up, in particular for SMEs, and thrives at the intersection of chemistry and other technologies. See p1082 for firm profile
Other recommended experts
Director of the commercial team at Deloitte Legal, Christel Brion is an “enthusiastic, conscientious thinker”. She frequently represents life sciences start-ups and SMEs in European disputes, and also handles licensing and regulatory issues as part of her varied practice. Abyoo is a “very good firm with highly reliable professionals”, including IAM Patent 1000 newcomer Christophe De Groote, a European patent attorney who provides hands-on, commercially focused assistance with IP and patent strategies. Daldewolf’s Valentin De Le Court is an IP allrounder with a particular facility for patent litigation: “He approaches cases smartly, always looking for favourable outcomes, and is a trustworthy individual who considers the best interests of all parties. His understanding of IP in China is also a huge plus.” KOB NV’s managing director, Frans Ostyn, makes his debut in the guide this year. “A technically very strong attorney, with interesting clients”, he provides gamechanging assistance to electrical and mechanical inventors in EPO oppositions. “Hardworking and dedicated” litigation and licensing doyenne Karin Ottelohe spends time delving into the technology of cases, to great effect; she operates out of ADVOCANT. At IP Hills, Ghent-based co-founder Axel Plas provides first-rate prosecution and “excellent insights” that peers can rely on.
Wiggin LLP
The name of UK-headquartered Wiggin has fast become synonymous with outstanding IP services. It Belgium, it recently reinforced its local offering with the shrewd hire of former HOYNG ROKH MONEGIER professionals Carl De Meyer and Carina Gommers. Renaissance man De Meyer is a go-to for all IP-related issues: “He excels for his communication, reliability and emotional intelligence, and always manages to steer a straight line in the midst of chaos. Working with Carl is an exclusively positive encounter.” “Carina excels at leading teams of IP lawyers working on complex technical and scientific issues. Her courtroom pleading is also simply brilliant: she is very straightforward, to the point and persuasive.” See p1090 for firm profile
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Beck, Michaël Partner – IPLodge michael.beck@iplodge.be | www.iplodge.be
Michaël Beck is a partner at IPLodge, where he practises as a European, Belgian and Dutch patent attorney. As a physical engineer with several years’ industry experience, he maintains a patent practice covering the physical and mathematical sciences. His preferred technological domains include physics and thermodynamics, automotive, electronics, data communications, cryptography and authentication. Mr Beck holds a master’s in law from Antwerp University, where he continues to be involved in academic research. With this legal background and his considerable experience in post-grant proceedings, including opposition cases before the Opposition Divisions and Boards of Appeal of the European Patent Office, Mr Beck likes to look beyond the patent prosecution phase from the start. This involves identifying relevant legal and economic elements that may affect the valorisation of clients’ ideas, and often includes finding additional ways to protect inventions by creating synergies with other types of IP right. This proactive attitude dovetails with IPLodge’s mission to provide legal and IP services in all stages of the innovation lifecycle and leave clients with a stronger IP portfolio. Besides proceedings before various patent offices, Mr Beck’s experience covers due diligence, licence negotiations, start-up creation, descriptive seizures, infringement opinions and international litigation support. Mr Beck has published numerous articles on technology and law, and is a co-author of the first comprehensive book on the new Belgian patent law. He routinely teaches courses for prospective patent attorneys.
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IPLodge Technologielaan 9 Heverlee 3001 Belgium T +32 16 409810 F +32 16 200621 See firm profile p1002 Professional associations • AIPPI • LES
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Bounaga, Sakina Partner – De Clercq & Partners sakina.bounaga@dcp-ip.com | www.dcp-ip.com
Sakina Bounaga is a partner at De Clercq & Partners, an established firm of experienced IP professionals in Belgium. Ms Bounaga holds a PhD in Bioorganic Chemistry from the University of Huddersfield (United Kingdom). She has a Master of Advanced Studies in Chemistry of Biomolecules from the University of Montpellier (France) and also holds a Master in Plant Chemistry and Biology from the University of Perpignan (France). Prior to joining De Clercq & Partners, Ms Bounaga worked as a senior scientist and project leader at Cropdesign NV, a leading Belgian biotech company. Ms Bounaga is a qualified European patent attorney with extensive patent practice experience in various fields of technology including chemistry, life sciences and material sciences, and in particular in organic chemistry, polymer chemistry, pharmaceutical chemistry, biology, biochemistry and biotechnology. Her areas of practice include: • Drafting, filing and prosecution of European and PCT patent applications • Drafting and prosecution of national patent applications • Oppositions and appeal proceedings before the EPO • Oral proceedings before the EPO in examination and opposition • Opinions regarding patentability, freedom-to-operate, infringement and validity of IP rights • IP due diligence and advice on licences and IP acquisitions • Portfolio management, advice and strategy • General strategic and legal advice in IP matters
De Clercq & Partners Edgard Gevaertdreef 10A Sint-Martens-Latem 9830 Belgium T +32 9 280 23 40 F +32 9 280 23 45 See firm profile p966 Professional associations • AIPPI • LES
Ms Bounaga often lectures at conferences and is a member of LES and AIPPI.
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D’Halleweyn, Nele Partner – Arnold & Siedsma ndhalleweyn@arnold-siedsma.com | www.arnold-siedsma.com
Nele D’Halleweyn is a European attorney and partner at Arnold & Siedsma. She studied electrical engineering at Leuven University, specialising in telecommunications and micro-electronics, and obtained a PhD degree at the University of Southampton (United Kingdom). At Arnold & Siedsma, Ms D’Halleweyn specialises in European patent work, including drafting and prosecuting patent applications, conducting opposition proceedings at the European Patent Office and advising in patent litigation in various European countries. The main technology areas that drive her practice are electronics, telecommunications, information computer technology, printing technology, semiconductors, material science, medical technology and mechanics. Ms D’Halleweyn derives satisfaction from the combination of keeping up with technical innovations together with the legal and commercial implications of inventions. In addition, developing winning arguments in complex oppositions or litigation is a challenging task of which she never gets bored. Further, Ms D’Halleweyn is experienced in determining a company’s IP and related business strategies, and enjoys playing a part in making a business successful using a good IP strategy. Ms D’Halleweyn is a board member of the International Association for the Protection of Intellectual Property. She is also a tutor teaching Belgian patent law and is co-author of Octrooien in België: een praktische leidraad, ISBN 9789048626601, edited by Die Keure. Previous testimonials for Ms D’Halleweyn include the following: • “Nele D’Halleweyn is a quick problem solver and patent strategy mastermind with a talent for ringfencing her clients in advantageous positions in highly competitive markets. She is a quick study on electrical and mechanical technologies, and possesses an agile commercial mind.” (IAM 2020) • “Some of the most praiseworthy feedback is reserved for Nele D’Halleweyn, who conducts sterling European patent work across many high-tech fields.” “Nele quickly understands the nature of her clients’ problems and identifies appropriate solutions.” “Having her on side adds tremendous value to a company.” “She comes up with new technical ideas that are often broader than the initial ideas that clients want to patent.” (IAM Patent 1000)
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Arnold & Siedsma Meir 24 Antwerp B-2000 Belgium T +32 3 213 59 60 See firm profile p924
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De Clercq, Ann Founding Partner – De Clercq & Partners ann.declercq@dcp-ip.com | www.dcp-ip.com
Ann De Clercq is managing partner at De Clercq & Partners, a Belgian IP firm that she founded in 1998. Ms De Clercq holds a licentiate in biology (zoology) and a PhD in plant molecular biology from the University of Ghent (Belgium). Before founding De Clercq & Partners, Ms De Clercq worked as a substantive examiner at the European Patent Office (EPO) in Munich, Germany. She afterwards headed the patent department of Innogenetics NV, a Belgian biotech company active in human healthcare. Ms De Clercq is a qualified Belgian and European patent attorney with extensive patent practice experience in all fields of biotechnology and related life sciences, as well as in mechanical engineering. Her areas of practice include: • drafting, filing and prosecution of Belgian, European and Patent Cooperation Treaty patent applications; • drafting and prosecution of national patent applications; • oppositions and appeal proceedings before the EPO; • conducting oral proceedings before the EPO in examination and opposition; • validations of European patents in Belgium as a qualified Belgian patent attorney; • filing and prosecuting supplementary protection certificates (SPCs) in Belgium and advising on SPCs in general; • legal IP advice on Belgian patents; • acting as an expert for the Belgian courts in descriptive seizure proceedings; • acting as an expert in litigation before Belgian civil courts in IP matters; • IP litigation experience in Belgium, the Netherlands, the United Kingdom and Japan; • opinions regarding patentability, freedom to operate, infringement and validity of IP rights; • IP due diligence; • portfolio management, advice and strategy; and • general strategic and legal advice in IP matters.
De Clercq & Partners Edgard Gevaertdreef 10A Sint-Martens-Latem 9830 Belgium T +32 9 280 23 40 F +32 9 280 23 45 See firm profile p966 Professional associations • AIPPI • epi • LES
Ms De Clercq is chair of the Biotech Committee of the Institute of Professional Representatives before the European Patent Office (epi), as well as the epi council member for Belgium. In addition, Ms De Clercq is a member of the Licensing Executives Society, the International Association for the Protection of Intellectual Property and the Society for Intellectual Property in Flanders. Ms De Clercq has lectured on several IP-related topics at conferences, the Vlerick Leuven Gent Management School, the University of Antwerp and the Free University of Brussels.
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De Meyer, Carl Senior Counsel – Wiggin LLP carl.demeyer@wiggin.eu | www.wiggin.co.uk
Carl De Meyer is senior counsel at Wiggin’s Brussels office. Mr De Meyer has extensive experience in patent law, all aspects of trademarks and copyright, customs counterfeit matters, as well as unfair competition and competition law. Mr De Meyer’s experience covers national and international IP litigation.mHe represents clients in all major industry sectors, including automotive, biotech, chemical, electronics, entertainment, food and drinks, pharma, publishers, telecom and toys. Mr De Meyer has also experience in green technologies and breeders’ rights. Mr De Meyer obtained a landmark decision before the Court of Justice of the European Union (CJEU) in connection with Lego’s wellknown 3D trademark covering the basic eight-stud brick. This case was a widely followed, high-profile case that clarified EU trademark law on the question of whether it is possible to secure trademark protection for functional shapes (2008). He also represented Philips in the case that led to the famous CJEU Philips v Nokia judgment regarding the manufacturing fiction of the EU Customs Counterfeit Regulation (2011). On the national scene, he was involved in several cases that have become precedents on variety of matters, such as contributory patent infringement and the scope of copyright protection for software. Mr De Meyer has also gained considerable experience in several high-profile cross-border patent infringement cases. Mr De Meyer has written extensively on IP issues and regularly contributes to leading journals in Europe. His most recent contribution is a comprehensive treatise on patent litigation in Belgium. He is also regularly invited to speak at conferences. He is a member of the International Trademark Association and the International Association for the Protection of Intellectual Property. He is highly recommended by the most important legal directories such as Chambers, IAM Patent 1000, World Trademark Review and The Legal 500. Mr De Meyer earned an LLM from Georgetown University and a Dr Jur from the Catholic University of Leuven. He was assistant professor at the same university from 1981 to 1984.
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Wiggin LLP Rue de Namur 72-74 Brussels 1000 Belgium T +32 2 892 1100 See firm profile p1090
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Gommers, Carina Partner – Wiggin LLP carina.gommers@wiggin.eu | www.wiggin.co.uk
Carina Gommers is a partner at the Brussels office of Wiggin LLP. Over her years of practice in the field of IP rights, she has accumulated a wealth of experience in different types of IP matters. She has always worked in private practice with a focus on IP rights and has gained cross-border experience while working for several well-known international law firms. Her practice covers litigation of IP rights, including in the patent field. Ms Gommers also has extensive experience in customs counterfeit seizures and was co-counsel for Philips in the well-known Philips v Nokia referral to the Court of Justice of the European Union. Ms Gommers has worked for clients from across a range of sectors, from technology to manufacturing, pharma and medical devices, to name a few. Most recently, she represented Solvay in a groundbreaking trade secret litigation, applying for the first time the new provisions of the Belgian law implementing the EU Trade Secrets’ Directive. Other recent representative matters include successfully representing the Dutch innovative wallet maker Secrid in relation to its patent and design rights for its pocket-size wallets and co-representing Boehringer Ingelheim in a patent dispute relating to one of its blockbuster products. Clients praise her for being “extremely proactive” and dedicated to their case, while peers consider her “a tough litigator”. Ms Gommers is a thought leader in the field of IP rights and is currently the second vice president of the European Communities Trademark Association. She is often invited as a speaker to conferences and webinars. She also regularly teaches at the University of Brussels and in the advanced master of IP and information and communication technology law at the Catholic University of Leuven. Ms Gommers is the Belgian editor of Oxford University Press’s Journal of Intellectual Property Law & Practice, the BMM Bulletin and IEForum.be. She has also published numerous case notes and articles in leading IP journals on key IP rights issues. She is an approved arbitrator of the Belgian Centre for Arbitration and Mediation for domain name disputes.
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Wiggin LLP Rue de Namur 72-74 Brussels 1000 Belgium T +32 2 892 1100 See firm profile p1090 Professional associations • BMM • ECTA • PTMG
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Gyi, Jeffrey European Patent Attorney – De Clercq & Partners jeff.gyi@dcp-ip.com | www.dcp-ip.com
Jeffrey (Jeff) Gyi works as a Patent Attorney at De Clercq & Partners, an established firm of experienced IP professionals in Belgium. Mr Gyi holds a degree in Biochemistry and Chemistry from the University of Sheffield (United Kingdom), and a PhD in Pharmacy (Biophysics) from the University of Manchester (United Kingdom). Prior to joining De Clercq & Partners, he gained postdoctoral experience in molecular modelling from the Division of Molecular Structure at the MRC National Institute of Medical Research, London (United Kingdom). Mr Gyi is a qualified European patent attorney with extensive patent practice experience in various technologies covering mechanical engineering, software and chemistry. Mr Gyi’s practice covers areas including medical technologies, software, machine learning, wearables, packaging, metrological equipment, compositions, wireless connected devices, gearboxes and transmissions, general mechanical devices. Clients are drawn from many sectors including engineering, healthcare, chemistry, consumer goods and products, diagnostics, transport and electronics. His areas of practice include: • Drafting, filing and prosecution of European and PCT patent applications • Drafting and prosecution of national patent applications • Oppositions and appeal proceedings before the EPO • Oral proceedings before the EPO in examination and opposition • Searching, landscaping, competitor profiling • Opinions regarding patentability, freedom-to-operate, infringement and validity of IP rights • IP due diligence and advice on licences and IP acquisitions • Portfolio management, advice and strategy • General strategic and legal advice in IP matters
De Clercq & Partners Edgard Gevaertdreef 10A Sint-Martens-Latem 9830 Belgium T +32 9 280 23 40 F +32 9 280 23 45 See firm profile p966 Professional associations • AIPPI • LES
Mr Gyi regularly lectures on aspects of intellectual property and has written several published articles. He is a member of LES and AIPPI.
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Hennin, Caroline European and Belgian Patent Attorney – De Clercq & Partners caroline.hennin@dcp-ip.com | www.dcp-ip.com
Caroline Hennin works as a patent attorney at De Clercq & Partners, an established firm of experienced IP professionals in Belgium. Ms Hennin holds a master’s in bio-engineering sciences from the University of Ghent (Belgium) and obtained her PhD in applied biological sciences from the same university. Ms Hennin is a qualified European and Belgian patent attorney with extensive patent practice experience in various fields of life sciences, chemistry and engineering sciences. This includes biotechnology, plant variety protection and plant breeding, crop protection, phytopathology, agrochemicals and biologicals, enabling technologies, molecular biology, feed and food technology, polymer chemistry, pharmaceutical and cosmetic applications, and engineering technologies. Her areas of practice include: • drafting, filing and prosecution of European and international (Patent Cooperatin Treaty) patent applications; • drafting, filing and prosecution of national patent applications worldwide; • opposition and appeal proceedings before the EPO; • oral proceedings before the EPO in examination and opposition; • opinions regarding patentability, freedom to operate, infringement and validity of IP rights; • IP due diligence and advice on licences and IP acquisitions; • portfolio management, advice and strategy; • patent literature searching and analysis; and • general strategic advice in IP matters.
www.IAM-media.com
De Clercq & Partners Edgard Gevaertdreef 10A Sint-Martens-Latem 9830 Belgium T +32 92 802 340 F +32 92 802 345 See firm profile p966 Professional associations • LES
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Jaeken, Annemie Partner – VO Patents & Trademarks a.jaeken@vo.eu | www.vo.eu
Annemie Jaeken is head of VO Patents & Trademarks’ Leuven office, where she has worked since 2012. She joined VO as a patent attorney in 2005, working on many aspects of the broad mechanical field. Ms Jaeken trained as an aerospace engineer and in business administration. After graduating in the field of helicopters at Eurocopter Germany, Ms Jaeken worked in an aerospace research organisation for several years. She then worked on offshore engineering and installation projects. Ms Jaeken’s practice involves various aspects of protecting and enforcing intellectual property. Today, she works with clients to build and tailor their IP portfolio to their business strategies and assists them in IP negotiations. Ms Jaeken’s specialisms include aerospace, agriculture, appliances, automotive technology, biomechanics, building industry, civil engineering, constructions, consumer products, electronics, energy and sustainability, engineering, ergonomics, health products, industrial design, IP due diligence, legal scans, licensing, litigation, mechanical technology, mechanics, mechatronics, offshore, optics, shipbuilding, tech starters and valorisation. Previous testimonials for Ms Jaeken include the following: • “Annemie Jaeken is in her element when advising start-ups and small and medium-sized enterprises (SMEs), and handles business strategy and IP negotiations with assurance” (IAM Patent 1000, 2019). • “Annemie Jaeken makes her IAM Patent 1000 debut, garnering praise from foreign associates who value her ‘technical expertise and quick thinking’. ‘Combining efficiency with a profound understanding of client technology, she assists in offering a clearer picture of novelty and scope of protection’” (IAM Patent 1000, 2018).
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VO Patents & Trademarks Science Park Arenberg Gaston Geenslaan 11 B4 Leuven 3001 Belgium T +32 1624 0853 See firm profile p1082 Professional associations • Flanders Innovation & Entrepreneurship • Netherlands Institute of Patent Attorneys
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Michalík, Andrej Partner – De Clercq & Partners andrej.michalik@dcp-ip.com | www.dcp-ip.com
Andrej Michalík is a partner at De Clercq & Partners, an established firm of experienced IP professionals in Belgium. He heads the firm’s branch office in Hasselt. Mr Michalík holds a Master of Science degree in Chemistry and Biochemistry from Comenius University in Bratislava (Slovak Republic), and a PhD in Molecular Genetics from the University of Antwerp (Belgium). He also obtained CEIPI’s Diploma on Patent Litigation in Europe at the University of Strasbourg (France). Mr Michalík is a qualified European patent attorney with extensive patent practice experience in all areas of life sciences including biotechnology, chemistry, pharmaceuticals and biology. He has particular knowledge and expertise in the area of recombinant microorganisms, genetically modified plants and animals, stem cells, regenerative cell therapy, in vitro cell-based assays, proteomics, peptides, glycoproteins, biomarkers, genome editing, diagnostics including nucleic acid- and protein-based diagnostic and screening assays, immune cell therapy, vaccines, organic chemistry and pharmaceuticals, food processing and personal care products. His areas of practice include: • Drafting, filing and prosecution of European and PCT patent applications • Drafting and prosecution of national patent applications • Oppositions and appeal proceedings before the EPO • Oral proceedings before the EPO in examination and opposition • Opinions regarding patentability, freedom-to-operate, infringement and validity of IP rights • IP due diligence and advice on licences and IP acquisitions • Portfolio management, advice and strategy • General strategic and legal advice in IP matters
De Clercq & Partners Edgard Gevaertdreef 10A Sint-Martens-Latem 9830 Belgium T +32 9 280 23 40 F +32 9 280 23 45 See firm profile p966 Professional associations • AIPPI • LES
Mr Michalík is a member of LES and AIPPI. He often lectures at conferences and also teaches at the CEIPI courses (ie-net in Antwerp, Belgium) for patent attorney trainees.
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Paemen, Liesbet Partner – De Clercq & Partners liesbet.paemen@dcp-ip.com | www.dcp-ip.com
Liesbet Paemen is Partner at De Clercq & Partners, an established firm of experienced IP professionals in Belgium. She is heading the firm’s branch office in Leuven. Ms Paemen holds a PhD in Animal Biology from the University of Leuven, Belgium. She has several years of post-doctoral experience at the Department of Neuroimmunology at the State University of New York and at the Department of Molecular Immunology of the REGA Institute (University of Leuven, Belgium). Prior to joining De Clercq & Partners in 2008, Ms Paemen worked as a patent counsel in the IP Department of Bayer Cropscience NV and headed the biotech IP department in the firm Bird Goën & Co. Ms Paemen is a qualified European Patent Attorney with extensive patent practice experience in all fields of biotechnology and related life sciences. Her areas of practice include: • Drafting, filing and prosecution of European and PCT patent applications • Drafting and prosecution of national patent applications • Oppositions and appeal proceedings before the EPO • Oral proceedings before the EPO in examination and opposition • Opinions regarding freedom to operate, infringement and validity of IP rights. • Acting as an expert for the Belgian courts in descriptive seizure proceedings • Acting as an expert in litigation before Belgian civil courts in IP matters • Portfolio management, advice and strategy • General strategic and legal advice in IP matters
De Clercq & Partners Edgard Gevaertdreef 10A Sint-Martens-Latem 9830 Belgium T +32 9 280 23 40 F +32 9 280 23 45 See firm profile p966
Ms Paemen is a member of LES and AIPPI. Furthermore, she often lectures on IP-related topics at conferences, the Catholic University of Leuven, the Vlerick Leuven Gent Management School, the University of Antwerp and the Free University of Brussels (PharmEd programme).
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Philippaerts, Yannick Associate Partner – Arnold & Siedsma yphilippaerts@arnold-siedsma.com | www.arnold-siedsma.com
Yannick Philippaerts is a European and Belgian patent attorney and associate partner at Arnold & Siedsma. He entered the patent profession straight after school in 2007. Over the years he has become an experienced patent attorney with an entrepreneurial spirit. During the early years of his career, Mr Philippaerts worked mainly with local inventors and small and medium-sized enterprises. In the past five years, however, he has shifted his focus towards opposition and appeal proceedings, as well as national disputes. Mr Philippaerts excels in thinking along with the client, he communicates clearly and he provides no-nonsense advice. Since 2013, Mr Philippaerts has been a guest lecturer at the Catholic University of Leuven and the University of Hasselt, teaching the basics of patent law to master’s students. He is also actively involved in the training and coaching of trainee patent attorneys at Arnold & Siedsma. Mr Philippaerts has extensive experience in drafting and prosecuting patents. He also gained a lot of experience in conflict situations both before the national courts of Belgium and before the European Patent Office. It is in these types of situation that his ability to think outside the box is particularly prominent. In every case, Mr Philippaerts is willing to go the extra mile for the benefit of the client.
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Arnold & Siedsma Meir 24 Antwerp B-2000 Belgium T +32 3 213 5960 See firm profile p924
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Vanhalst, Koen Partner – De Clercq & Partners koen.vanhalst@dcp-ip.com | www.dcp-ip.com
Koen Vanhalst is a partner at De Clercq & Partners, an established firm of experienced IP professionals in Belgium. Mr Vanhalst holds a PhD in Biotechnology from the University of Ghent (Belgium). Prior to joining De Clercq & Partners, Mr Vanhalst worked as an examiner in the European Patent Office (The Hague branch), involved in both search and substantive examination of patent applications in the field of Biotechnology in general and Medical Diagnostics in particular. Mr Vanhalst is a qualified European and Belgian patent attorney with extensive patent practice experience in all areas of life sciences including biotechnology, chemistry and pharmaceuticals. His areas of practice include: • Drafting, filing and prosecution of Belgian, European and PCT patent applications • Drafting and prosecution of national patent applications • Oppositions and appeal proceedings before the EPO • Oral proceedings before the EPO in examination and opposition • Validations of European patents in Belgium • Filing and prosecuting SPC’s in Belgium and advising on SPC’s in general • Legal IP advice on Belgian patents • Acting as an expert for the Belgian courts in descriptive seizure proceedings • Acting as an expert in litigation before Belgian civil courts in IP matters • Opinions regarding patentability, freedom to operate, infringement and validity of IP rights • IP due diligence Portfolio management, advice and strategy • General strategic and legal advice in IP matters
De Clercq & Partners Edgard Gevaertdreef 10A Sint-Martens-Latem 9830 Belgium T +32 9 280 23 40 F +32 9 280 23 45 See firm profile p966 Professional associations • Council member within the Belgian group of AIPPI • Member of the Belgian Council for Intellectual Property • appointed by the Federal Government EPI
Mr Vanhalst often lectures at conferences and is a member of epi, LES and AIPPI. He is a member of the Belgian Council for Intellectual Property, appointed by the Federal Government. Within the Belgian group of AIPPI, Mr Vanhalst is a council member. Since 2015, Mr Vanhalst is a guest professor at Ghent University, where he lectures Intellectual Property to Masters students in (Plant) Biotechnology.
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Czech Republic
The Czech patent landscape remains relatively constant and practitioners are enjoying a steady stream of work from the life sciences, technology and automotive industries. The latter in particular has seen a notable uptick in activity, with major player ŠKODA AUTO filing more patent applications than any other local company. Innovation also looks healthy: the country is steadily climbing the global innovation index and government initiatives such as the Innovation Strategy of the Czech Republic are in place to support budding entrepreneurs.
Bird & Bird LLP
Bird & Bird’s Czech contingent marries international and cross-border expertise with refined local knowhow, to wonderful effect. The team – led by one of the country’s finest lawyers, Vojtěch Chloupek – does a terrific job executing on technically dense briefs in the life sciences, electronics and automotive sectors. Charismatic litigator Chloupek “readily makes himself available and has a superfriendly attitude. His skills are undoubtedly superb, as is his ability to coordinate matters in foreign jurisdictions. It is always a pleasure to work with him”. He recently linked up with Jiří Malý to validate the European patents of Celanese International Corporation, a Fortune 500 company operating in the Czech Republic and Slovakia. Malý can be relied upon to find well-rounded solutions to tricky technology instructions.
PatentEnter
Innovation is a central pillar at PatentEnter: the dynamic boutique appreciates the business value behind strong patent protection and designs strategies that are perfectly aligned with patrons’ commercial goals. The technically diverse squad shines bright on freedom to operate analyses; and while software patents are a speciality, it can navigate virtually any field with ease. Taking the reins are dynamic co-founders Ivan Lukšiček and Michal Jordán. Blending keen technical aptitude with a finely honed business sense, Lukšiček is a safe pair of hands in the IT sphere; while Jordán taps into his industry insight as an innovation and IP manager to get companies maximum return on their investments. “The pair have incredible drive, give great advice at a reasonable price and are loved by their clients.”
Rott, Růžička & Guttmann
“An exceptionally experienced and longstanding boutique”, Rott, Růžička & Guttmann has its roots deeply embedded in the Czech patent landscape. Home to a team of five lawyers and 11 patent attorneys, who can serve clients in English, German, French, Russian and Slovak, the side is ideally placed
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Firms Bird & Bird LLP PatentEnter Rott, Růžička & Guttmann TRAPLOVÁ – HAKR – KUBÁT Law and Patent Offices
See p1072
Všetečka Zelený Švorčík and Partner, Law and Patent Office
to protect, defend and procure assets both at home and abroad. Formerly a patent examiner at the Patent Office in Prague, Jiří Andera is the first port of call for potential mandates.
TRAPLOVÁ – HAKR – KUBÁT Law and Patent Offices
Making its debut in the IAM Patent 1000 this year is Traplová - Hakr - Kubát, a traditional set-up with a contemporary approach and three decades of experience to its name. Its technical experts have the filing of meticulous applications down to a T; while its lawyers present persuasive, well-formulated arguments before the courts and administrative bodies on the regular. On the prosecution front, Tomáš Pavlica and Ivana Beranová bring tremendous value to the practice. Not limited to patent searches and drafting, Pavlica is a shrewd tactician who devises ironclad patent protection programmes on a national and global scale; while Beranová makes clever use of a vast network of translators to coordinate massive panEuropean validation briefs. When it comes to litigation, recent arrival Jan Seidel is also worthy of special mention: his hands-on approach to disputes involving IP rights and SPCs brings skirmishes to a quick and successful end. See p1072 for firm profile
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Czech Republic Všetečka Zelený Švorčík and Partner, Law and Patent Office
Stacked commercial law outfit Všetečka Zelený Švorčík and Partners assists clients in many meaningful ways: adept at prosecution, a force to be reckoned with in litigation and savvy in licensing negotiations, the outfit has cemented its status as “one of the country’s leading firms”. The driving force behind the practice is Michal Havlík, an all-rounder who writes extensively, provides valuable legal commentary and is considered “an outstanding IP specialist” by peers. He also sits as president of the Czech chapter of the International Association for the Protection of Intellectual Property – a testament to his standing in the community.
Other recommended experts
At Korejzová & Spol, Petra de Brantes is on hand to offer support to budding entrepreneurs and international conglomerates, eloquently defending their interests in court and adroitly negotiating licensing agreements. A “big name in the patent scene”, Kateřina Hartvichová is “super-friendly and great to collaborate with. She works extremely hard and has an incredibly extensive understanding of the law”. The avid chemist can be found at HARBER IP.
Individuals Ivana Beranová TRAPLOVÁ – HAKR – KUBÁT Law and Patent Offices Vojtěch Chloupek Bird & Bird LLP Petra de Brantes Korejzová & Spol Kateřina Hartvichová HARBER IP sro Michal Havlík Všetečka Zelený Švorčík and Partner, Law and Patent Office Michal Jordán PatentEnter Ivan Lukšiček PatentEnter Jiří Malý Bird & Bird LLP Tomáš Pavlica TRAPLOVÁ – HAKR – KUBÁT Law and Patent Offices
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See p1072
See p1072
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Beranová, Ivana European Patent Attorney – TRAPLOVÁ – HAKR – KUBÁT Law and Patent Offices beranova@thk.cz | www.thk.cz
Ivana Beranová is an experienced patent attorney, as well as an expert in the areas of organic and inorganic chemistry, biochemistry and pharmaco-chemistry, and related disciplines. She also specialises in supplementary protection certificates. A longstanding member of the Traplová - Hakr – Kubát team, Ms Beranová has established a strong and reliable network of translators and coordinates the entire validation and translation process for the firm’s clients. Ms Beranová graduated from the Faculty of Chemical Technology of the Institute of Chemical Technology in Prague, where she studied organic chemistry. She also completed a post-graduate course of studies in organic chemistry at the Institue of Chemical Technology, Prague. In addition, Ms Beranová successfully completed a two-year specialisation course run by the Institute of Industrial Law Training of the Office of Industriual Property. As well as her native Czech, she is fluent in English.
TRAPLOVÁ – HAKR – KUBÁT Law and Patent Offices Pristavni 24 Prague 7 17000 Czech Republic T +420 266 772 103 See firm profile p1072
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Pavlica, Tomáš Patent Attorney – TRAPLOVÁ – HAKR – KUBÁT Law and Patent Offices pavlica@thk.cz | www.thk.cz
Tomáš Pavlica has been a member of the Traplová - Hakr - Kubát (THK) team for two decades and his strength lies in drafting patent and utility model applications, as well as conducting patent searches and providing consultancy on patent protection and enforcement strategy on a national and worldwide basis, which makes him one of the key contacts in the firm’s patent department. Mr Pavlica specialises in the field of electrical engineering, including power engineering, and mechanical engineering. He is a graduate of the Faculty of Electrical Engineering of the Czech Technical University in Prague. He has also completed a programme of postgraduate studies at the University of London – Queen Mary and Westfield College. The programme was designed for young lawyers from Eastern Europe, focusing on industrial property rights. Mr Pavlica also completed a two-year specialisation course at the Institute for Industrial Law Training of the Industrial Property Office. In addition, Mr Pavlica undertook an internship at Marks & Clerk, the largest British firm in the field of industrial property rights. He also took part in a basic course in European patent law organised by the Robert Schuman University in Strasbourg. Mr Pavlica is a European patent attorney, a member of the Chamber of Patent Attorneys and of epi. In addition to Czech, he speaks fluent English and German.
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TRAPLOVÁ – HAKR – KUBÁT Law and Patent Offices Pristavni 24 Prague 7 17000 Czech Republic T +420 2 667 72101 See firm profile p1072 Professional associations • epi
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Denmark
When it comes to innovation, Denmark is in pole position: its robust infrastructure, abundant government-sponsored funding opportunities and thriving start-up scene have all lent themselves to healthy patenting activity across 2020 and 2021. One area enjoying a major boom right now is renewable energy – especially the offshore wind sector, where the nation leads the way with its pioneering technologies. The pharmaceutical and life sciences industries are also generating a significant portion of the workloads of local practitioners; and a reported increase in the number of biotechnology companies looking to enter the market has additionally sparked excitement. Another point of note is the rate at which entrepreneurs and SMEs are seeking strategic protection for their innovations and engaging patent attorneys and lawyers to develop future-focused business plans with them. Overall, Denmark remains a favourable jurisdiction for innovators and its legal practitioners are optimistic about the year to come.
Accura Advokatpartnerselskab
Rigorously commercial in its approach to intellectual property, full-service outfit Accura is a discerning choice when it comes to procuring, protecting and monetising the crown-jewel assets of major life sciences and pharmaceutical companies. During the review period alone, the set assisted Royal DSM in its acquisition of Danish-based biotechnology company Glycom; guided LEO Pharma through the sale of four pharmaceutical products to Cheplapharm Arzneimittel in a €300 million deal; and played a key role in Roche’s acquisition of OBI Medical. Leading on all three was Morten Bruus, who also tackles and coordinates major disputes with verve. “Morton is an intelligent and dedicated litigator with a strong understanding of the regulated industries. He is always well prepared, proactive and great to work with.”
Aera
Time and again, Aera proves itself willing and able to nip the challenges that arise for clients in the bud quickly and effectively. Its “approachable, extremely skilled” practitioners come up with solutions that are aligned with clients’ aims and the industries in which they operate: “They are service-minded, act resourcefully and understand the needs and wants of smaller businesses too.” The boutique continues to go from strength to strength, increasing head count, expanding its geographical reach and bolstering its capabilities. In late 2020, it brought on US patent attorney and former Knobbe Martens partner Dan Fischer in a move that has not only boosted its knowledge of semiconductors and USPTO proceedings, but also added to its international contacts. Managing partner Nicka Kirstejn is “one of a kind when it comes to biotech patents. He is extremely bright and his excellent industry network makes him a great choice”. In a similar vein, Per Larsen appreciates the business value behind
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Firms: litigation and transactions Bech-Bruun Kromann Reumert Plesner Advokatpartnerselskab Accura Advokatpartnerselskab Gorrissen Federspiel Bugge Valentin Horten Law Firm Lundgrens
solid patent protection and has an entrepreneurial spirit that resonates with multinationals looking to capitalise on their assets. Biomedical ace Ylva Skoglösa “has saved the day on numerous occasions. Her input and strategic insight are instrumental”, whether devising strategies or entering into negotiations with major industrial partners and competitors. A life sciences star with rock-solid technical foundations, Marianne Johansen has spent over three decades in the game and adroitly navigates the interface between IP protections and market exclusivity. “Creative and solutions oriented” are the words used to describe former Novartis principal patent attorney Henrik Skødt: “He has a great grasp of many technologies, quickly gets acquainted with new inventions and patent families, and provides great suggestions.” Counsel of choice to Sony Corporation, Hanane Fathi Roswall and Anders Sandgaard are “fantastic in the field of software”. Fathi Roswall is “a first-class attorney who can work to tight deadlines”; while Anders has a complete
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Denmark command of individual components. “There are few attorneys who stand out like they do.” See p918 for firm profile
Firms: prosecution AWA
See p928
AWA
COPA Copenhagen Patents
See p962
Rave reviews come pouring in for AWA: “There are few, if any firms, that can look beyond the patent, understand the legal concepts behind business decisions and see the bigger picture to the extent that AWA can; and its attorneys have what it takes to really dig deep.” The group has also extensive international reach: a new office in Norway has further cemented its presence in Scandinavia and complements further outposts in Belgium, China, Hong Kong, Switzerland and the Netherlands. Overseeing operations in Denmark is Sidsel Hauge, an astute manager who fosters a collaborative culture. She has an intuitive appreciation of complex technical issues and how best to turn them into easily digestible arguments for legal judges. In the mechanical sector, Eva Carlsson, Mikkel Roed Trier and Vibeke Warberg Rohde form a trio that is tough to beat. “Intelligent and responsive”, Carlsson is a prosecution pro who has been filing around the clock for some of the world’s largest building and construction companies. Roed Trier can “see the different angles of IP protection and factor in all the minute details at the same time. He is great at building relationships too”, and often consults with CEOs on strategic business decisions. IAM Patent 1000 newcomer Warberg Rohde is a familiar face before the EPO and regularly handles large volumes of applications from leading Chinese entities. Electronics briefs are deftly executed by Kim Garsdal Nielsen, a former search examiner at the EPO with a knack for developing evergreen protection. Life sciences and pharmaceutical companies rely on Helle Friis Svenstrup and Michael Bech Sommer respectively. The “responsive and experienced” Friis Svenstrup “always comes up with good solutions”; while Bech Sommer “has deep technical insights and always delivers on time, without exception”. See p928 for firm profile
Bech-Bruun
A premier destination for major pharmaceutical companies embroiled in hard-hitting disputes, Bech-Bruun is committed to winning and has all the firepower needed to prevail when everything is on the line. Recent storylines include assisting Samsung Bioepis in novel biosimilar preliminary injunction proceedings; and acting for Sandoz in spats against AstraZeneca and Eli Lilly. Taking centre stage on all three is Klaus Ewald Madsen, who has earned the utmost respect of peers. “This is prime time for Klaus,”
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Inspicos P/S Plougmann Vingtoft Aera
See p1042 See p918
Guardian IP Consulting I/S Zacco
See p1098
Budde Schou A/S HØIBERG
Luminaries Ole Damsbo Bugge Valentin Peter-Ulrik Plesner Plesner Advokatpartnerselskab
enthuses one peer. “He is absolutely brilliant and rightfully attracts an immense workload.” Co-head of the life sciences group is the “brilliant and widely renowned” Martin Draebye Gantzhorn. He adds tremendous value with his rich regulatory knowledge and can see through convoluted healthcare cases with crystalline clarity. Johnny Petersen is another seasoned trial hand whose compelling arguments and strategic insight frequently make the difference. The firm has an exceptionally potent renewable energy practice courtesy of Dan Bjerg Geary, who successfully defended KK Wind Solutions in infringement proceedings brought by GLX Power Systems. His negotiation skills are silky smooth and have sealed many a lucrative deal too. Søren Chr Søborg Andersen has a flair for the fine print of contracts at the confluence of IP, competition and regulatory law. He is the name to note for heavy-duty M&A transactions.
Budde Schou A/S
A stalwart of the Danish legal landscape, Budde Schou has had its roots embedded in the national IP scene since 1901. It excels at forging deep relationships
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Denmark with patrons, intimately understands their needs and provides a commercially driven, error-free prosecution service. Steen Wadskov-Hansen and Henriette Damsgaard are two of its best assets. As a former research fellow and R&D specialist at Chr Hansen Holding, biotechnology ace Wadskov-Hansen knows the industry uniquely well and is lauded as an “amazingly strong attorney”. Life sciences whizz Damsgaard has a firm grasp of SPCs and is great at developing strategies that universities can use as a business tool. The side recently welcomed Jesper Mark Wenzel from Chas Hude, who brings an exciting software spin to the practice.
Bugge Valentin
Exclusively focused on intellectual property, technology and marketing law, Bugge Valentin is the country’s first specialised boutique and has made a real splash among major life sciences and electronics corporations since it was established in 2020. The wins are already coming thick and fast: for example, it recently lifted a preliminary injunction while under appeal and secured a landmark ruling on costs on behalf of Sandoz; and represented Illumina in its battle with BGI. “One of the top litigators in the country”, Anders Valentin is “extremely knowledgeable – not just when it comes to patents, but in the pharmaceutical sector as a whole. He is responsive, approachable and gives outstanding advice”. He and Ole Damsbo make a formidable duo in high-stakes contentious scenarios. Damsbo has been an eminent figure on the market for more than three decades now and is an invaluable sounding board for colleagues, clients and peers.
COPA Copenhagen Patents
Young, nimble and dynamic prosecution shop COPA operates at the cutting edge of the life sciences, clean technologies, mechanics and electronics industries. Its forward-thinking attorneys place importance on building partnerships with patrons based on mutual trust and consistency, which means that files very rarely change hands. Heading up the life sciences team, the “really skilled” Mikkel Bender “has great synergy with litigators and knows exactly how to support them in proceedings”. The boutique also has an exceptional track record at the EPO, due in no small part to the hard graft put in by Steven Richard Kitchen and Axel Heimann. Richard Kitchen capitalises on more than 15 years of private practice and industry experience to perform flawlessly in oppositions; while Heimann’s innate grasp of inventions regularly lands him a spot on expert panels. A technical judge at the Danish Eastern
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Individuals: prosecution Highly recommended Louise Aagaard HØIBERG Mikkel Bender COPA Copenhagen Patents
See p368
Jakob Pade Frederiksen Inspicos P/S Michael Friis Sørensen Plougmann Vingtoft
See p372
Sidsel Hauge AWA Ulla Klinge Inspicos P/S Mikkel Roed Trier AWA Jens Jørgen Schmidt Zacco
See p386
Holm Schwarze Guardian IP Consulting I/S Katja Sørensen Plougmann Vingtoft
See p390
Casper Struve Zacco
See p392
Pernille Thorsboe Zacco
See p394
Kim Wagner Plougmann Vingtoft
See p395
High Court and at the Maritime and Commercial High Court, Peter Kim Jensen dives into the details to find answers when it seems that all hope is lost. Wellrounded strategic counsellor Jacob Karstad Meyland gives deeply practical advice, drafts watertight applications and produces thorough analyses for start-ups and multinationals. See p962 for firm profile
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Denmark Recommended Henrik Bagger Olsen Guardian IP Consulting I/S Peter Borg Gaarde HØIBERG Eva Carlsson AWA Christian Christiansen Plougmann Vingtoft
Marianne Johansen Aera
See p374
Nicka Kirstejn Aera
See p375
Steven Richard Kitchen COPA Copenhagen Patents
See p376
Peter Koefoed Inspicos P/S See p369
Henriette Damsgaard Budde Schou A/S
Per Larsen Aera
See p377
Anna Lövqvist Inspicos P/S
Claus Elmeros Plougmann Vingtoft
See p370
Dan Fischer Aera
Steen Madsen Inspicos P/S
See p371
Jacob Karstad Meyland COPA Copenhagen Patents
See p378
Camilla Rendal Nielsen Zacco
See p382
Hans Christian Nielsen Zacco
See p379
Helle Friis Svenstrup AWA Kim Garsdal Nielsen AWA Axel Heimann COPA Copenhagen Patents
See p373
Peter Hertling Inspicos P/S Susanne Høiberg HØIBERG Peter Indahl Indahls ApS Peter Kim Jensen COPA Copenhagen Patents
Gorrissen Federspiel
Commercial law firm Gorrssen Federspiel is a towering presence on the legal landscape, with over 70 practitioners dedicated to the protection of intellectual property. Steeped in regulatory knowhow, the sophisticated team has long made the life sciences its own; it has also been investing heavily in its renewable energy practice of late, which is now a first port of call for many prominent companies in
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Jens Viktor Nørgaard HØIBERG Johan Nyander Zacco Per Jørgen Nygreen Plougmann Vingtoft
See p380
Jan Mondrup Pedersen Plougmann Vingtoft
See p381
Hanane Fathi Roswall Aera
See p383
that area. Holding down the fort on the contentious side are Kenneth Kvistgaard-Aaholm and Jacob Ørndrup. “Kenneth is hands-on and easy to work with, and impresses with his sharp legal thinking and fantastic strategic planning. He is a great litigator with a remarkable understanding of technology and always considers business implications when providing advice.” Ørndrup handles high-stakes
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Denmark Anders Sandgaard Aera
See p384
Michael Schandorf Sørensen Zacco
See p385
Jakob Schwalbe Lohmann Plougmann Vingtoft
See p387
Jan Simonsen Inspicos P/S Henrik Skødt Aera
See p388
Ylva Skoglösa Aera
See p389
Michael Bech Sommer AWA Peter Sørensen Plougmann Vingtoft
See p391
Pia Marianne Stahr Inspicos P/S Bo Stenhus Chas Hude A/S Thomas Sundien Zacco
See p393
Christa Larsen Theil Inspicos P/S Steen Wadskov-Hansen Budde Schou A/S Vibeke Warberg Rohde AWA Jesper Mark Wenzel Budde Schou A/S
pharmaceutical disputes with poise, delivering arguments that come underpinned by decades’ worth of insight. Anchoring the transactions division is Søren Høgh Thomsen, who makes light work of large-scale deals and technology transfers with complex IP issues orbiting them.
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Guardian IP Consulting I/S
The “hardworking and skilled patent attorneys” at Guardian IP Consulting provide targeted prosecution services and thoughtful commercial analyses with a view to elevating clients’ competitive market positions. Fluent in an array of technical disciplines, the group truly shines in the technology and software sectors, which is where Henrik Bagger Olsen and Holm Schwarze come to the fore. “Incredibly smart and constructive to work with”, Bagger Olsen has held several managerial positions in-house, which means that he knows exactly what businesses want and need to generate value. “Brilliant, highly regarded and personable” physicist Schwarze is a former R&D specialist with an insider’s view of the railway and food industries.
HØIBERG
“For prosecution work and litigation support, HØIBERG is absolutely brilliant and definitely one to highlight.” Innovators and multinationals benefit from a joined-up Scandinavian offering thanks to two Danish outposts and further bases in Swedish city Malmö and the Karolinksa Institut in Stockholm. Founding partner and former medical doctor Susanne Høiberg is an exceptional attorney with a rare faculty for languages – she speaks seven, including Chinese – which makes her a perfect choice for international assignments. Spearheading the biotechnology and plant sciences unit, Jens Viktor Nørgaard “files applications efficiently, gives practical advice and provides an A+ service at a reasonable price point”. In the life sciences and high-tech realms respectively, “Louise Aagaard and Peter Borg Gaarde are highly knowledgeable and really commercially minded. It is extremely rare to come across attorneys who are so technically brilliant and business savvy, and who have such a modern approach to their work”.
Horten Law Firm
Though hit by some notable departures in 2020, full-service outfit Horten is still very much a front runner when it comes to high-stakes patent litigation – especially since bringing Jakob Krag Nielsen on board that same year. It has both the legal know-how and the technical versatility to handle the toughest cases going across an array of industries, as evidenced by its caseload during the review period. For example, Nielsen went out to bat for Centrica Energy Trading in a preliminary injunction case against Norlys Energy Trading that also involved a trade secret element; and successfully defended Mylan Group in preliminary injunction proceedings which were part of a wider multi-jurisdictional patent and SPC suit with Gilead
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Denmark Sciences. The well-rounded practitioner has also been advising the Danish Cancer Society on the commercialisation of ground-breaking technologies around cancer diagnosis. In the words of one devotee: “Jakob is incredibly skilled, understands difficult and technologically heavy industries, and can bring that knowledge into a legal setting. Pragmatic and solutions-oriented, he has a strategic approach and handles every matter with clients’ best interests in mind.”
Individuals: transactions
Inspicos P/S
Dan Bjerg Geary Bech-Bruun
On everything from drafting to worldwide filing, Inspicos “bridges the gap between patent attorneys, R&D engineers and IP professionals”, preparing iron-clad applications while also building up robust defence and business strategies for clients. On the physics and computer science side of the practice, Jakob Pade Frederiksen, Jan Simonsen, Peter Hertling, Steen Madsen and Christa Larsen Theil have enjoyed a red-letter year. “Second to none among Danish patent attorneys”, Pade Frederiksen is intimately familiar with the workings of the EPO and “handles oral proceedings very skilfully. He has a broad and deep understanding of technology and IP litigation, both within and outside of Denmark, which means he always finds new and fruitful angles for clients. Jakob is kind, funny and completely focused on what is best for the companies he assists”. Highly motivated and full of energy, Simonsen is a great match for creative start-ups. Hertling “readily makes himself available and takes the time to talk through any issues that may arise. He is detail oriented and always comes up with creative solutions to help us meet our goals”. Making his debut in the IAM Patent 1000, Madsen has a unique background in the power electronics sector and is a prime pick for mandates from the country’s burgeoning renewable energy sector. Another newcomer to the guide, Larsen Theil “gets pen to paper really quickly and drafts applications that are pretty much perfect straight off the bat. She has great technical capabilities, works quickly without compromising on quality and has the creativity to make patents as strong as possible”. On the biotechnology and chemistry front, meanwhile, Ulla Klinge, Peter Koefoed, Anna Lövqvist and Pia Marianne Stahr are making waves. An authority on pharmaceuticals of some three decades’ standing, Klinge recently enhanced her practice by obtaining a law doctorate focused on SPC eligibility. In the field of medical technology, Koefed takes “an innovative approach to patent strategy. He provides excellent services, executes instructions quickly and has an incredibly high understanding of new inventions”.
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Jeppe Brinck-Jensen Plesner Advokatpartnerselskab Morten Bruus Accura Advokatpartnerselskab Martin Draebye Gantzhorn Bech-Bruun
Kenneth Kvistgaard-Aaholm Gorrissen Federspiel Per Larsen Aera
See p377
Nicolai Lindgreen Kromann Reumert Klaus Ewald Madsen Bech-Bruun Jacob Ørndrup Gorrissen Federspiel Søren Høgh Thomsen Gorrissen Federspiel Anders Valentin Bugge Valentin Mikkel Vittrup Plesner Advokatpartnerselskab
Lövqvist and Stahr are two further new names in the guide who attract effusive praise. “Experienced and detail oriented”, Lövqvist effortlessly teases out the idiosyncrasies of EPO prosecution, but her expertise goes far beyond that: “Her technical knowledge and ability to fully analyse prior art documents ensure that she produces the best possible arguments.” “You can fully count on Pia to provide advice in urgent situations quickly and thoroughly. She also consistently improves her knowledge of US patent law and is always open to new ideas and jurisdictional considerations before making a decision.”
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Denmark Individuals: litigation Nicolai Lindgreen Kromann Reumert Klaus Ewald Madsen Bech-Bruun Sture Rygaard Plesner Advokatpartnerselskab Anders Valentin Bugge Valentin Jeppe Brinck-Jensen Plesner Advokatpartnerselskab Morten Bruus Accura Advokatpartnerselskab Martin Draebye Gantzhorn Bech-Bruun Dan Bjerg Geary Bech-Bruun Kenneth Kvistgaard-Aaholm Gorrissen Federspiel
Kromann Reumert
“Impeccable and absolutely fantastic”, Kromann Reumert is “incredibly strong on the law and continuously impresses”. Committed to the highest levels of client care, it recently established a new team dedicated exclusively to the protection of trade secrets, to complement its elite contentious offering. It has been busy racking up the wins of late, having successfully defended Biogen against alleged infringement claims brought by Fresenius Kabi and prevailed for Danisco at the Maritime and Commercial High Court against Novozymes. Nicolai Lindgreen and Nicolaj Bording are the cornerstones of the practice. “Always one to think ahead, Nicolai is very thoughtful, measured and excellent at legal analysis”; while “pinpoint cross-examinations and case summaries” are the calling card of “future superstar” Bording. “Well-prepared, open and attentive, the pair are superb and sharp litigators who shine in court.”
Lundgrens
On instructing Lundgrens, patrons enjoy instant access to a wealth of knowledge in the life sciences and high technology sectors, and the support of tried-
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Jakob Krag Nielsen Horten Law Firm Jacob Ørndrup Gorrissen Federspiel Mikkel Vittrup Plesner Advokatpartnerselskab Søren Chr Søborg Andersen Bech-Bruun Nicolaj Bording Kromann Reumert Mette Hygum Clausen Plesner Advokatpartnerselskab Kasper Frahm Plesner Advokatpartnerselskab Johnny Petersen Bech-Bruun Rasmus Vang Lundgrens
and-tested advocates who address each mandate with surgical precision to carry the day both in court and at the negotiating table. One such practitioner is Rasmus Vang, who has recently been assisting an innovative biotechnology company with contracts regarding a Phase 3 study project concerning a patented human injectable iron product. “Serviceminded and pragmatic”, Vang is a smooth broker of “agreements that are fit for cross-border collaboration and significantly reduce overall costs. He is a top adviser with a great understanding of business needs and a fantastic network of foreign contacts. He is also a really cool guy who replies to enquiries quickly and makes you feel safe”. Also worthy of praise is rising star Emilie Lerstrøm, who is highlighted by clients for her “diligence and concise guidance. She is a friendly team player who acts swiftly and always checks in, even after a matter is concluded”.
Plesner Advokatpartnerselskab
“Undoubtedly a top-tier firm”, Plesner is home to “one of the best litigation teams in the business”: “Its exceptionally skilled and diligent lawyers research and analyse complex technical cases thoroughly and can break them down into understandable pieces, which they successfully argue before the courts.”
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Denmark Led by Mikkel Vittrup, the group puts in polished performances in the vast majority of pharmaceutical cases heard in the country, most often for originator companies. “An excellent litigator and an absolute pleasure to work with”, Vittrup has “a fantastic rapport with experts. He covers all the bases in his submissions, is fully prepared for any eventuality and makes time to answer any questions beforehand”. Adding to the firm’s contentious firepower are Jeppe Brinck-Jensen and Sture Rygaard, each of whom earns warm plaudits. “Jeppe has an exceptional legal mind and a strong presence in court, and can present complex issues through simplified examples and visual aids which are easily understood by judges and laypeople. He is also always available.” The “gold-class” Rygaard “knows exactly which technical expert is best suited to each case – which is something of an art – and prepares impressive briefs”. Fellow courtroom dynamo Kasper Frahm is a “hard worker and skilled lawyer” who “is always on top of every detail and does a brilliant job preparing his cases”. Joining the battalion in the guide this year is Mette Hygum Clausen, an “excellent and diligent litigator” whose star is definitely on the ascendant; while luminary and trailblazer Peter-Ulrik Plesner remains a strategic pathfinder and vital sounding board for the troop.
Plougmann Vingtoft
A powerhouse on the Danish IP landscape, Plougmann Vingtoft has a lot to offer innovative companies in need of futureproofed patent protection. The award-winning consultancy firm leverages its in-house commercialisation and technology transfer team and a strategic partnership with PV Legal to ensure that each stage of the patent lifecycle receives the attention it deserves. “It continuously educates its attorneys in best practices, and produces fantastic applications and a high-quality service.” Heading up the oppositions division is health science maven Kim Wagner, “the number one choice for post-grant work. His experience and knowledge are invaluable, and he achieves an outstanding number of successful results”. Katja Sørensen, Jakob Schwalbe Lohmann, Jan Mondrup Pedersen and Christian Christiansen are also all masters of the life sciences. A member of the Standing Advisory Committee before the EPO and an authority in the food and agriculture industries, as well as a trained chemist, Sørensen is “brilliant on both a technical and strategic level”. “A natural part of our in-house team when it comes to sensitive IP decisions, Jakob is incredibly skilled,” enthuses one client. “His insight into our business
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processes and market understanding ensure that his advice is always tailored and up to date.” He has recently been helping FertilityPro to safeguard its ground-breaking technology in the treatment of male fertility in Europe and the United States. Freedomto-operate analyses and SPCs are fortes of Pedersen; the pharmaceutical ace is intimately familiar with the field, having authored or co-authored 13 papers on the subject. “Bright, talented and easy-going”, Christiansen makes his debut this year as someone who “is really constructive to collaborate with”. Heading the technology and software groups out of Copenhagen and Aarhus respectively are Per Jørgen Nygreen and Peter Sørensen. A former researcher at the Von Karman Institute for Fluid Dynamics in Belgium, Nygreen understands that careful planning and impeccable drafting are vital to success; while Sørensen has been blazing a trail in novel technical areas such as artificial intelligence. Acoustics expert Michael Friis Sørensen “takes the time to learn about products and inventions first-hand”, which leads to flawless applications. The squad struck gold when it brought on Claus Elmeros from HØIBERG: he serves as a technical judge at the Maritime and Commercial High Court and at the Western and Eastern Danish High Courts, and knows everything there is to know about evaluating patentability. See p1042 for firm profile
Zacco
Innovation is the lifeblood of full-service consultancy Zacco, which makes it its mission to find the most creative, cost-effective solutions for its entrepreneurial client base. With some 500-plus professionals stationed in 32 countries across six countries, it is ideally placed to handle sprawling mandates that cross geographical borders. The depth and diversity of its bench are reflected in the inclusion of eight practitioners in the guide this year: Michael Schandorf Sørensen, Casper Struve, Pernille Thorsboe, Camilla Rendal Nielsen, Thomas Sundien, Jens Jørgen Schmidt, Johan Nyander and Hans Christian Nielsen. “Amazing attorney” Schandorf is “super-creative, dependable and efficient”. Pharmaceutical sages Thorsboe and Rendal Nielsen know all the ins and outs of EPO applications and are highly sought after for litigation support. International filing campaigns are deftly handled by Rendal Nielsen, who has been honing her European, Chinese and US patent prosecution skills for over two decades. A font of wisdom on oppositions and appeals before the EPO, Sundien has carved a niche in oil drilling technologies and sits as a technical judge at the Maritime and Commercial High Court
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Denmark and the Eastern Appeal Court. Another EPO specialist, Jørgen Schmidt also plays a vital support role for thermal energy companies. “Exceptionally skilled in the art of filing strategies”, Nyander gained valuable industry insight from director positions at the Volvo Group and AkzoNobel. Game-changing licensing and deal support is provided with dexterity by Zacco’s chief operating officer and regional director, Christian Nielsen. See p1098 for firm profile
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Other recommended experts
Taking on a new R&D role at Indahls, Peter Indahl is a fine choice for complex electronics and mechanics instructions. Attentive and intuitive, he produces forward-thinking litigation strategies. At Chas Hude, Bo Stenhus is “a delight to work with. He strikes the right balance between paying great attention to detail in the drafting process and taking a pragmatic approach to the whole process”.
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Bender, Mikkel Founding Partner – COPA Copenhagen Patents mb@copenhagenpatents.com | www.copenhagenpatents.com
Mikkel Bender is partner and founder of COPA Copenhagen Patents, a specialist patent firm based in the heart of Copenhagen. Mr Bender has exceptional experience as a patent litigation adviser and is highly recommended and recognised in this capacity. He has served and is currently serving as patent adviser in numerous court cases on preliminary injunctions, infringement and validity in both Denmark and Sweden. Mr Bender has represented several major international pharmaceutical companies before the Danish city courts, the High Court of Eastern Denmark, the Maritime and Commercial High Court and the Danish Supreme Court. Mr Bender is especially experienced in life sciences and has indepth knowledge of patent prosecution in the fields of diagnostics, microbiology and pharmaceuticals. Further, Mr Bender is an expert in prosecuting applications for supplementary protection certificates. Mr Bender has completed a diploma course on patent litigation in Europe at the University of Strasbourg and is also qualified to act as court-appointed expert in Denmark. Mr Bender also represents clients in opposition and appeal proceedings before the Boards of Appeal of the Danish Patent and Trademark Office and before the European Patent Office. Mr Bender also frequently gives talks at IP rights conferences and conventions in Denmark and abroad.
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COPA Copenhagen Patents Rosenorns Allé 1 Frederiksberg DK-1970 Denmark T +45 4018 0041 F +45 3324 0081 See firm profile p962 Professional associations • ADIPA • epi
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Christiansen, Christian L Head of Life Sciences and Chemistry – Plougmann Vingtoft clc@pv.eu | www.pv.eu
Christian L Christiansen heads the life sciences and chemistry department at Plougmann Vingtoft and is involved in educating new patent professionals. In addition to his biotech background, Mr Christiansen has several years of experience within the pharmaceutical field. His IP practice focuses on the following industries: molecular biology, biotechnology, nanotechnology, food technology, pharma and chemistry. Mr Christiansen has experience prosecuting patent and utility model applications, performing freedom-to-operate analyses and due diligence analyses and, in particular, providing infringement and validity opinions. Furthermore, he has extensive experience with filing and prosecution of supplementary protection certificates within the pharmaceutical and agricultural fields in the Nordic countries. Mr Christiansen has been involved in numerous court cases in Denmark and the other Nordic countries as strategic adviser and coordinator of complex patent cases. This role has also involved advice and assistance in relation to re-examination and limitation procedures before the Danish Patent and Trademark Office, as well as opposition and appeal proceedings before the EPO. Mr Christiansen has successfully completed the course on patent litigation in Europe at the Centre for International Intellectual Property Studies of the University of Strasbourg and he will therefore receive the European Patent Litigation Certificate under the Unified Patent Court when the latter starts operating. Mr Christiansen has worked with IP rights since 2002. He joined Plougmann Vingtoft in 2012 and was appointed partner in 2019.
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Plougmann Vingtoft Strandvejen 70 Hellerup Copenhagen 2900 Denmark T +45 33 63 93 00 See firm profile p1042 Professional associations • ADIPA • epi • Medicon Valley Alliance
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Elmeros, Claus Senior Patent Attorney – Plougmann Vingtoft cel@pv.eu | www.pv.eu
Claus Elmeros has been working in intellectual property since 1990, initially as a patent examiner at the European Patent Office and since 1995 as a patent attorney in private practice. Mr Elmeros has technical expertise in the fields of mechanical engineering, medical devices/healthcare, building technologies, manufacturing technology, cleantech, logistics, robotics, measuring techniques and software. He works with clients ranging from start-ups to large international corporations, as well as universities. He is experienced in evaluating patentability, as well as drafting and prosecuting patent applications, and performing freedom-tooperate and due diligence analyses. Further, Mr Elmeros is specialised in advising clients on patents and registered design protection. He offers consultancy services in connection with licensing agreements, patent infringement, opposition and appeal proceedings before the European Patent Office and the Danish Patent and Trademark Office, and provides litigation support in patent infringement cases before the courts. In fact, Mr Elmeros has extensive experience representing clients in oral proceedings before the Opposition Division and the Boards of Appeal at the European Patent Office. He is a court-appointed expert in patent and design-related IP rights court cases in Denmark and is an appointed technical judge at the Maritime and Commercial High Court, as well as a technical judge at the Western and Eastern High Courts in Denmark. Mr Elmeros holds an MSc in mechanical engineering and is a qualified European patent attorney. Further, he has completed the course on patent litigation in Europe at the Centre for International Intellectual Property Studies at the University of Strasbourg and he will therefore receive the European Patent Litigation Certificate under the Unified Patent Court when the latter starts operating. Besides Danish as his native language, Mr Elmeros speaks English, German, French, Dutch, Swedish and Norwegian.
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Plougmann Vingtoft Aaboulevarden 23 Aarhus C 8000 Denmark T +45 87 32 18 00 Professional associations • ADIPA
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Fischer, Dan US Patent Attorney – Aera daf@aera-ip.com | www.aera-ip.com
Dan Fischer is a former partner at one of the largest IP law firms in the United States, and is the point attorney for clients, large and small, in various technological fields that seek to become players in their respective fields through the development of their IP portfolios. Mr Fischer joined Aera as a patent attorney in late 2020 in order to expand his knowledge of European law for his clients. Mr Fischer received his JD from the University of Southern California where he worked in the USC IP and Tech Clinic. Before attending law school, he obtained a BS in materials science and engineering with concentrations in biomaterials and polymers from the University of Illinois. He is currently working towards qualifying as a European patent attorney. Mr Fischer has worked in a number of fields, including metals/ alloys, semiconductors and circuits, polymers, computer procedures, thermal spray coatings, composites, medical devices, oil pipes, catalytic converters, building construction, truck, car and other vehicle accessories/components, and drug delivery nanoparticles, giving him a well-rounded practice and experience.
Aera Niels Hemmingsens Gade 10 Copenhagen K 1153 Denmark T +45 3131 9936 See firm profile p918 Professional associations • California Bar • New York Bar • USPTO Sample client list • A P Møller Maersk • Biograil • GN Audio • GN Hearing • Knobbe Martens • Sony Corporation
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Friis Sørensen, Michael Senior Patent Attorney – Plougmann Vingtoft mfs@pv.eu | www.pv.eu
Michael Friis Sørensen has technical expertise in the areas of audio processing, loudspeakers, communication systems, medical devices, miniature mechanical devices and computer implemented inventions. He has 18 years of experience in evaluating patentability and in drafting and prosecuting patent applications. He has represented various clients in IP rights disputes, including litigation, and has successfully argued oral proceedings before the examining and opposition divisions at the EPO. Mr Friis Sørensen has worked with all kinds of clients, including large companies with in-house patent professionals, small to mediumsized enterprises and start-ups, as well as tech transfer offices at different universities. Prior to his debut as a patent attorney, Mr Friis Sørensen gained professional experience within the acoustics, noise and vibration sector from his four years of research at Aalborg University. He has worked with human sound perception, 3D audio and binaural technique and he is a co-inventor of two patents. Further, Mr Friis Sørensen worked for six years as a specialised consulting engineer for the acoustics, noise and vibration field. Here, he solved problems such as reduction of low frequency noise and vibration from power plants, reduction of interior noise in high-speed trains, low noise machinery development, and improvement of room acoustics. He keeps his technical skills up to date by participating in various seminars, such as the Danish Acoustical Society and Audio Engineering Society. Further, he is active as an external examiner for engineering student exams at Aalborg University and Aarhus University School of Engineering.
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Plougmann Vingtoft Aaboulevarden 23 Aarhus 8000 Denmark T +45 33 63 93 00 See firm profile p1042 Professional associations • ADIPA • Danish Sound Network
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Heimann, Axel European Patent Attorney – COPA Copenhagen Patents ah@copenhagenpatents.com | www.copenhagenpatents.com
Axel Heimann has gained vast IP experience working in both private practice and in-house. His technical expertise includes pharmaceuticals, medical devices, microbiology, general chemistry and environmental engineering. In addition to his native German, Mr Heimann also speaks fluent Danish and English. Mr Heimann is extraordinarily experienced in opposition and appeal cases before the European Patent Office (EPO); he also acts as a technical and patent law adviser in court cases pertaining to infringement and invalidity in Denmark. He holds a MSc in geoecology from the University of Bayreuth, Germany, and a PhD in environmental engineering from the Technical University of Denmark. Mr Heimann worked at two Danish law firms between 2007 and 2011, before relocating to Germany. Following a position as in-house counsel with a German pharmaceutical company, he joined COPA in 2018. Aside from practising European patent law, Mr Heimann also holds a German patent assessor degree and is a certified Danish patent agent. Mr Heimann heads COPA’s recently established German office. Supporting a growing international client base, the office is situated in the heart of Munich, close to the EPO and the Boards of Appeal, providing meeting opportunities for clients in advance of oral proceedings at the EPO.
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COPA Copenhagen Patents Werinherstraße 3 Munich 81541 Germany T +49 152 5570 939 See firm profile p962 Professional associations • epi
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Johansen, Marianne European Patent and Design Attorney – Aera mj@aera-ip.com | www.aera-ip.com
Marianne Johansen entered the IP profession in 1989 after working as an associate professor at the University of Copenhagen for several years. She holds a PhD in drug delivery systems and has a profound knowledge of life sciences, including pharmaceutical chemistry, pharmaceutical formulation, drug delivery systems, diagnostics, biomarkers, medicine, pharmacology, biochemistry, biotechnology, stem cell technology, immunotherapy, immunology and cell therapy. In addition, she has extensive knowledge and experience in all IP aspects of these technical fields. Besides the traditional aspects of intellectual property (eg, managing IP portfolios, pre-evaluation of possible IP protection of new projects, establishment of IP rights, oppositions and appeals, litigation of IP rights), Ms Johansen’s practice focuses on the interface between IP protection and market/data exclusivity, especially within the pharmaceutical field. The strategic aspects of IP rights are of key importance to her and she has successfully advised many clients on IP strategy focused on their business strategy. During her IP career she has held several CEO positions, while always maintaining a close relationship with her clients and carrying on handling IP work personally for them – a challenging task that requires skills in science, languages and communication, legal matters, business and creativity. Ms Johansen is a highly esteemed adviser for large, medium and small-sized companies, as well as for university-based clients, both globally and locally. She has been lead IP adviser for several companies, involved in public offering, mergers and acquisitions, and licensing, as well as in due diligence processes. Besides her IP work, Ms Johansen is an external lecturer at the University of Copenhagen and a technical judge at the Maritime and Commercial High Court and the Western High Court.
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Aera Niels Hemmingsens Gade 10 Copenhagen K 1153 Denmark T +45 5370 0599 See firm profile p918 Professional associations • ADIPA • DIFI • epi Sample client list • Abliva AB • AcuCort AB • Empros Pharma AB • Laccure AB • Lantmännen Unibake
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Kirstejn, Nicka Managing Partner – Aera nkj@aera-ip.com | www.aera-ip.com
Nicka Kirstejn is a European patent attorney and the managing partner of Aera. He entered the patent profession in early 2001, when he joined a large Scandinavian IP firm that had handled the intellectual property of his own biotech start-up company up until that time. In his early career Mr Kirstejn specialised in advising universities and early stage companies on technology transfers. He has helped several companies through IP due diligence in successful private and public financing rounds and advised firms on licence negotiations. Over the years Mr Kirstejn developed an interest in management and in 2012 he became CEO in one of Europe’s largest IP firms, but his entrepreneurial drive led to the founding of Aera in early 2018. At Aera, Mr Kirstejn can satisfy his desire to serve his clients, which fully appreciate and value his devotion to solve complicated technical and legal issues before the EPO in both prosecution and opposition proceedings. Mr Kirstejn understands the value of intellectual property as a business tool, and clients appreciate his pragmatic commercial approach and experience of patent prosecution and strategy working with small, medium and large companies and academic institutions – ranging from spin-outs to multinationals.
Aera Niels Hemmingsens Gade 10 Copenhagen K 1153 Denmark T +45 2616 6900 See firm profile p918 Professional associations • ADIPA • epi Sample client list • DSM/Glycom • Evolva • HGF • Knobbe Martens • Qiagen GMBH • The University Hospital of Copenhagen
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Kitchen, Steven Richard Partner – COPA Copenhagen Patents srk@copenhagenpatents.com | www.copenhagenpatents.com
Steven Richard Kitchen has more than 15 years of experience in patent protection of inventions in the fields of mechanics, electronics and software, and draws on his experience working in both patent firms and the industry. Mr Kitchen is involved in working with large international technology and manufacturing companies, as well as a number of local small and mid-sized enterprises and universities. He handles all aspects of the patent life cycle and portfolio management, including patent strategy, patent clearances and freedom-to-operate analyses, and he is often consulted in the early stages in R&D projects to align patent strategies and business plans. Mr Kitchen has tremendous experience in opposition cases, including in oral proceedings before the European Patent Office – having represented both the opponent and patentee sides. He is currently lead on dozens of ongoing opposition and appeal cases. Mr Kitchen has completed the diploma course on patent litigation in Europe at the University of Strasbourg and is also qualified to act as a court-appointed expert in Denmark. Mr Kitchen received an industrial PhD in a collaboration project between Kamstrup A/S, the Technical University of Denmark and Risø National Laboratory. During his PhD project, he worked on optical metrology systems for, among other things, flow and pressure measurements. Several of the developed systems were patented.
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COPA Copenhagen Patents Rosenorns Allé 1 Frederiksberg DK-1970 Denmark T +45 4018 2058 F +45 3324 0081 See firm profile p962 Professional associations • ADIPA • epi
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Larsen, Per Partner – Aera pla@aera-ip.com | www.aera-ip.com
Per Larsen is a European patent attorney and a European trademark and design attorney; he has completed the European patent litigation course at the Centre for International Intellectual Property Studies at the University of Strasbourg, France. He holds an MSc in molecular biology and chemistry, a PhD in molecular biology from Aarhus University and subsequently also completed a postdoc. After his postdoc, Dr Larsen joined one of the largest IP firms in Scandinavia, where he worked for nearly a decade. There he specialised in advising universities and early stage companies, particularly with regard to technology transfers. He was also part of the team that handled international relations and he became head of biotechnology. Dr Larsen’s entrepreneurial drive led to his founding of Aera together with three colleagues in early 2018. At Aera, Dr Larsen continues to serve his clients with passion and commitment. Clients appreciate his ability to understand and communicate clearly complex technical and legal issues. Dr Larsen has helped several companies through IP due diligence in successful private and public financing rounds and advised firms on licence negotiations. He understands the value of intellectual property as a business tool, and clients appreciate his pragmatic approach and extensive experience in handling cases before the EPO and other major and minor patent jurisdictions.
Aera Niels Hemmingsens Gade 10 Copenhagen K 1153 Denmark T +45 2763 2777 See firm profile p918 Professional associations • ADIPA • epi Sample client list • Danish Technical University • Nordic Nanovector ASA • Oncoinvent AS
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Meyland, Jacob Karstad Partner – COPA Copenhagen Patents jme@copenhagenpatents.com | www.copenhagenpatents.com
Jacob Karstad Meyland specialises in mechanics, electronics and software and has extensive knowledge of physiological measurements and medical devices. Mr Meyland started his patent career in 2012, qualified as a European patent attorney in 2016 and was made partner at boutique patent firm COPA Copenhagen Patents in 2018. He is highly respected among both colleagues and clients for his patent insight and advice. In collaboration with highly experienced European patent attorneys Peter Kim Jensen and Steven Richard Kitchen, Mr Meyland is now shaping the mechanics and electronics team at COPA Copenhagen Patents – a team which, with the support of several associate patent attorneys, is assisting an increasing number of Danish and international clients in ascertaining their freedom to operate, as well as in patenting their own inventions. Mr Meyland handles the drafting and prosecution of patent families and is particularly involved in opposition cases and freedom-to-operate analyses. He has helped numerous clients to successfully revoke or restrict important patent rights. Mr Meyland is continuously developing extensive experience in oral proceedings before the EPO in both opposition and examination procedures. In addition, Mr Meyland has been involved in preparations for court proceedings in Denmark and is, in collaboration with his colleague Mr Jensen in particular, continuously building solid experience in supporting Danish national and cross-border litigation.
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COPA Copenhagen Patents Rosenorns Allé 1 Frederiksberg DK-1970 Denmark T +45 2855 4234 F +45 3324 0081 See firm profile p962 Professional associations • ADIPA • epi
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Nielsen, Hans Christian COO Zacco Group – Zacco hans.nielsen@zacco.com | www.zacco.com
Hans Christian Nielsen is chief operation officer (COO) of the Zacco group and regional director of Zacco Denmark and Sweden South. He started his career in the IP industry in the early 1990s and joined Zacco as a patent attorney in 2007. He advanced to team manager in 2011, patent director in 2016, and regional director of Zacco Denmark and Sweden South and COO of the Zacco group in 2019. Mr Nielsen is a senior patent attorney with vast experience in all fields within the IP industry. He excels in handling complex challenges and he is known as a master of ‘the art of the impossible’ among his clients – meaning that he is likely to give unique advice in response to his clients’ opportunities and challenges. Today, Mr Nielsen primarily focuses on M&A activities for clients, as well as key account management of domestic and large international clients. He takes a 360 view on intellectual asset management, from drafting and prosecuting patent applications to developing and implementing IP strategies, mitigating risk, managing oppositions, litigation, infringement evaluations and due diligences, to handling software developments and matters relating to digital trust and cyber security. Prior to joining Zacco, Mr Nielsen held several positions at the Danish Patent and Trademark Office. He also has extensive experience operating a naval architecture consultancy. Mr Nielsen works in most technical fields, including all aspects of mechanics and software with particular skills in the information, communication and technolgoy/software, maritime and automotive areas.
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Zacco Arne Jacobsens Allé 15 Copenhagen 2300 Denmark T +45 40 92 03 17 See firm profile p1098
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Nygreen, Per Jørgen Head of Technology and Software – Plougmann Vingtoft pjn@pv.eu | www.pv.eu
Per Jørgen Nygreen heads Plougmann Vingtoft’s technology and software department in Hellerup (Copenhagen). He has worked at Plougmann Vingtoft for more than 20 years and was made partner in January 2005. Mr Nygreen’s technical expertise spans a wide range of fields, including fluid mechanics, nanotechnology, thermodynamics, software, robotics and materials technology. Mr Nygreen has vast experience in patentability assessments, drafting and prosecution of patent applications, infringement cases, licence negotiation, as well as the commercialisation of IP rights. In connection to the latter, he is also involved with tto, the firm’s offshoot dedicated to creating value from new technologies and IP rights. Before his career in IP consulting, Mr Nygreen worked as a researcher at the Von Karman Institute for Fluid Dynamics in Belgium and at the Technical University of Denmark (Department of Fluid Mechanics), where he did his PhD. He also holds a diploma from the Aarhus School of Business in the commercial aspects of IP rights, which has made him even better equipped to assist clients with business development based on wellthought-out IP strategies. Mr Nygreen is known as an experienced strategic adviser and his clients range from start-up businesses to large multinational corporations. Besides his daily work as an IP rights consultant, Mr Nygreen mentors new IP rights talents and teaches entrepreneurs, investors and business partners about the extraordinary potential of the IP rights system.
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Plougmann Vingtoft Strandvejen 70 Hellerup Copenhagen 2900 Denmark T +45 33 63 93 27 See firm profile p1042 Professional associations • ADIPA
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Pedersen, Jan Mondrup Head of SPC Filing and Prosecution – Plougmann Vingtoft jmp@pv.eu | www.pv.eu
Jan Mondrup Pedersen has technical expertise in the areas of chemistry and biotechnology, including pharmaceuticals, cosmetics, diagnostics, organic synthesis and modified surfaces. He works as a patent attorney within these areas in collaboration with international pharmaceutical companies, biotech companies, universities and hospitals. He is experienced in patentability assessments, drafting and prosecution of patent applications, freedom-to-operate analyses, oppositions and appeals at the EPO and litigation support. In addition, Mr Mondrup Pedersen specialises in the filing and prosecution of supplementary protection certificate applications in Europe and Denmark in particular. During his years in research, he authored or co-authored 13 research papers in renowned international chemistry journals, and undertook studies of the synthesis and modifications of heterocyclic anti-cancer compounds and antibacterial peptides – among other subjects. Presently, he is a guest lecturer in a patent course at the Danish Technical University. In addition to his qualification as a European patent attorney, Mr Mondrup Pedersen has successfully completed the course on patent litigation in Europe at the Centre for International Intellectual Property Studies of the University of Strasbourg, and will therefore receive the European Patent Litigation Certificate under the Unified Patent Court when the latter starts operating. He is also a qualified patent information professional. Mr Mondrup Pedersen joined Plougmann Vingtoft in 2008 and was made a partner in 2017.
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Plougmann Vingtoft Strandvejen 70 Hellerup Copenhagen 2900 Denmark T +45 33 63 93 43 See firm profile p1042 Professional associations • ADIPA • epi • QPIP
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Nielsen, Camilla Rendal Senior Partner – Zacco camilla.rendal.nielsen@zacco.com | www.zacco.com
Camilla Rendal Nielsen joined Zacco in 2010 and is the patent director for Denmark and South Sweden. She is based out of the firm’s Copenhagen office. Ms Nielsen has been working in intellectual property since 1997, focusing in particular on European, US and Chinese patent prosecution matters. She handles the drafting and prosecution of patent applications, patent oppositions and appeals, as well as infringement and validity opinions. She also advises clients on their general IP strategy and has extensive experience with the Chinese patent and litigation system. Before joining Zacco in 2010, she worked in private practice in Denmark and Canada, and as an in-house patent attorney for a premium German car manufacturer, gaining valuable practical industry insights. Ms Nielsen is active in the Association of Danish Intellectual Property Attorneys (ADIPA), where she serves as a treasurer on the board. She is also a valued lecturer, regularly lecturing at the Danish Institute of Intellectual Property. As Zacco’s patent director for the Denmark and South Sweden region, Ms Nielsen continues to provide patent counselling, acting as a trusted adviser to many of her clients. Ms Nielsen has special technical knowledge in the fields of electronics, telecommunications, medical devices, automotive, software, photonics, mechatronics, clean tech and micro technology. She has been selected as one of the world’s leading patent professionals, included in the IAM Patent 1000 by IAM magazine and ranked by Managing IP as an IP Star since 2018. Ms Nielsen graduated from the Technical University of Denmark in 1995 with a master of science in engineering (applied physics); she qualified as a European patent attorney in 2003 and in 2015 she completed the Centre for International Intellectual Property Studies (CEIPI) course on patent litigation in Europe allowing for representation of clients before the European Unified Patent Court. She is a member of the Institute of Professional Representatives before the European Patent Office, ADIPA and the International Federation of Intellectual Property Attorneys.
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Zacco Arne Jacobsens Allé 15 Copenhagen 2300 Denmark T +45 39 48 82 31 F +45 39 48 80 80 See firm profile p1098 Professional associations • ADIPA • epi • LES
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Roswall, Hanane Fathi Partner – Aera hro@aera-ip.com | www.aera-ip.com
Hanane Fathi Roswall is a European patent attorney. She holds a PhD in wireless communications and security and an MScEE from Aalborg University, Denmark, and an MSc in telecoms engineering from the Ecole Centrale d’ Electronique, Paris. Dr Roswall is a certified Danish patent attorney. She entered the patent profession in early 2009 with more than 10 years’ experience in research and development in telecoms and cyber security. She has worked in both industry and academia in Europe and Japan. Dr Roswall applies her prior experience as a scientist to advise clients on all aspects of intellectual property, including patent drafting, prosecution, oppositions, acquisitions and competitive analysis. She collaborates with a variety of clients ranging from multinationals to small and medium-sized high-tech companies with regard to medical devices, consumer electronics, software, telecoms, cryptography and machine-learning techniques. Clients appreciate Dr Roswall’s ability to grasp complex techniques and her legal expertise in patent drafting, prosecution and strategy. Her drive towards continuous improvement led to the founding of Aera in early 2018, where she serves clients with wit and passion.
Aera Niels Hemmingsens Gade 10 Copenhagen K 1153 Denmark T +45 2926 1166 See firm profile p918 Professional associations • ADIPA • epi Sample client list • A P Møller Maersk • Coloplast A/S • GN Hearing A/S • Motional • Sony Corporation
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Sandgaard, Anders Partner – Aera as@aera-ip.com | www.aera-ip.com
Anders Sandgaard has a MSc in engineering with a heavy focus on electronics and mathematics from the Danish Technical University, where he worked with nonlinear dynamic systems and time series analysis. He entered the patent profession in 2003 at one of Europe’s largest IP firms. From day one, Mr Sandgaard has been heavily involved with a major hearing aid client and provided legal advice to protect all four cornerstones of smart hearing technology – that is, audiology, connectivity, apps and design. Mr Sandgaard has a profound understanding of the problematic issue of computer-implemented inventions in Europe and – as software patents have the highest growth rate among all patent categories presented before the EPO – his skills are in high demand. His clients range from the world’s largest software and hardware developer to the smallest start-up company with a vision to change the world. With the explosion of the Internet of Things (IoT), Mr Sandgaard has been committed to provide invention harvesting for clients that traditionally did not use IoT interaction. He has filed numerous applications on the network of physical devices, vehicles, home appliances and other items embedded with electronics, software, sensors, actuators and network connectivity that enable these objects to connect and exchange data. Mr Sandgaard has extensive experience prosecuting patent applications before numerous patent offices and frequently represents clients at hearings before the EPO. His work has been used in successful global patent licensing and litigation discussions. He also conducts opinion work. Mr Sandgaard has been a tutor at the Centre for International Intellectual Property Studies since 2008 and continues to lecture prospective European patent attorneys in their preparation for the European qualifying examination, which tests candidates’ knowledge and aptitude to represent applicants in EPO proceedings and is widely regarded as one of the most demanding professional examinations.
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Aera Niels Hemmingsens Gade 10 Copenhagen K 1153 Denmark T +45 6065 2760 See firm profile p918 Professional associations • ADIPA • epi Sample client list • Biograil • Coloplast • GN Audio • GN Hearing • Maersk • Motional • Sony Corporation • TracInnovations
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Schandorf Sørensen, Michael Partner – Zacco michael.schandorf.sorensen@zacco.com | www.zacco.com
Michael Schandorf Sørensen has an MSc and a PhD in molecular biology from the University of Aarhus. Mr Schandorf Sørensen has worked in IP counselling since 2006. Before entering the IP field, he worked as a scientist and senior scientist in the biotechnology industry for approximately a decade in the field of target discovery and validation. He is the co-inventor of a combinatorial library screening technology. Mr Schandorf Sørensen has solid scientific knowledge in a wide range of technical disciplines, including recombinant protein expression, vector technology, combinatorial libraries, gene transfer, retrovirology, assay development, compound screening and flow cytometry. Mr Schandorf Sørensen’s technical experience is within the fields of biochemistry, molecular biology, genetics, epigenetics and cell biology. He has considerable experience in drafting and prosecuting patent applications, particularly in the field of diagnostics, medical uses in general, immunotherapy, biologics and stem cell applications. He is also experienced in drafting opinions on patentability, freedomto-operate analyses and advising clients in the strategic use of intellectual property. Mr Schandorf Sørensen advises clients in oppositions and appeals before the EPO. He further advises clients in pharma litigation cases in Denmark and Scandinavia. Mr Schandorf Sørensen is on the list of court-appointed experts for Danish patent cases. In 2017 he completed the Centre for International Intellectual Property Studies course on patent litigation in Europe, allowing him to represent clients before the forthcoming UPC. Previously, Mr Schandorf Sørensen was the key accounts manager for life sciences for one of Scandinavia’s largest research institutions. He joined Zacco in 2012 and re-joined after a short period at Novozymes in 2015.
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Zacco Arne Jacobsens Allé 15 Copenhagen 2300 Denmark T +45 39 48 82 35 F +45 39 48 80 80 See firm profile p1098
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385
Schmidt, Jens Jørgen Senior Partner – Zacco jens.jorgen.schmidt@zacco.com | www.zacco.com
Jens Jørgen Schmidt joined Zacco in 2014 and has worked as a patent attorney in private practice since 1997. He holds a PhD in fluid mechanics from the Technical University of Denmark, a diploma (obtained with honours) from the Von Karman Institute of Fluid Dynamics and a master’s in mechanical engineering specialising in thermal energy. His professional experience as a patent attorney, however, spans a wide range of other technical areas. In addition to the drafting and prosecution of patent applications and providing opinions on patent infringement and freedom to operate, Mr Schmidt has extensive experience in opposition and appeal proceedings before the Danish Patent Office, as well as the European Patent Office and in patent litigation, mainly before the Danish Maritime and Commercial Court and the Danish high courts. Mr Schmidt also acts as a court-appointed specialist in patent matters before the Danish Maritime and Commercial Court. Mr Schmidt was a tutor of the Centre for International Intellectual Property Studies in Copenhagen from 2002 to 2020. He is a member of epi and the Association of Danish Patent Attorneys. He is fluent in English and Danish and has a basic knowledge of German.
Zacco Europaplads 2 6 sal Aarhus 8000 Denmark T +45 40 14 00 20 See firm profile p1098
386
IAM Patent 1000
www.IAM-media.com
Schwalbe Lohmann, Jakob European Patent Attorney – Plougmann Vingtoft jal@pv.eu | www.pv.eu
Jakob Schwalbe Lohmann is part of the life sciences and chemistry department at Plougmann Vingtoft and works out of the Aarhus office. Mr Lohmann’s technical expertise covers molecular biology, biotechnology, medicine, food technology, agriculture and protein technology. He is highly experienced in patent search analyses, patentability assessments, freedom-to-operate analyses, patent surveillances and due diligence analyses. He also has vast experience in the drafting and international prosecution of patent applications. Mr Lohmann works with international companies, small to medium-sized enterprises, hospitals, as well as universities. His clients highlight his ability to understand their perspectives on new technology and figure out ways for them to commercialise their new IP rights. Before becoming a patent attorney, Mr Lohmann worked on research projects relating to single-molecule detection tools at the Institute of Health Sciences at the University of Aarhus, specifically with DNA, RNA and protein technology. He is a named co-inventor on several patent applications and patents. Mr Lohmann has completed the course on patent litigation in Europe at the Centre for International Intellectual Property Studies of the University of Strasbourg and he will therefore receive the European Patent Litigation Certificate under the Unified Patent Court when the latter starts operating. Besides his work as a patent attorney, Mr Lohmann has carried out research to provide insights into the effectiveness of third-party observations at the EPO and the Danish Patent and Trademark Office. He joined Plougmann Vingtoft in 2008.
www.IAM-media.com
Plougmann Vingtoft Strandvejen 70 Hellerup Copenhagen 2900 Denmark T +45 87 32 18 49 See firm profile p1042 Professional associations • ADIPA • epi
IAM Patent 1000
387
Skødt, Henrik Partner – Aera hes@aera-ip.com | www.aera-ip.com
Henrik Skødt has extensive experience advising clients on all patentrelated matters, most recently with a major German IP law firm and in-house at a leading pharmaceutical company prior to joining Aera. Mr Skødt has worked with all aspects of intellectual property concerning pharmaceutical inventions, including supplementary protection certificates. While working in-house, he was responsible for EPO oppositions and therefore has substantial experience in arguing cases before the opposition divisions and boards of appeal of the EPO, as well as working with the commercial aspects of pharmaceutical patenting. Mr Skødt also has experience with patent litigation in Denmark supporting attorneys at law in arguing patent cases before the Danish courts, primarily in pharmaceutical patent litigation. He has acted as a court-appointed expert (skønsmand), which assists the court in determining the facts of the case. In addition to working in contentious proceedings, he maintains his drafting and prosecution skills when assisting clients in protecting their innovations. He believes strongly in working closely with each individual client to arrive at the best filing strategy for the client, since the client’s business should take centre stage in determining the strategy. In addition to his expertise in pharmaceutical portfolios, Mr Skødt has experience with chemical patents in general, in particular polymerrelated inventions such as coatings and hydrogels.
Aera Niels Hemmingsens Gade 10 Copenhagen K 1153 Denmark T +34 671 448 553 See firm profile p918 Professional associations • ADIPA • epi Sample client list • Chemo • Galderma • Hempel • Novartis • Polpharma
388
IAM Patent 1000
www.IAM-media.com
Skoglösa, Ylva Partner – Aera yms@aera-ip.com | www.aera-ip.com
Ylva Skoglösa entered the patent profession in 1999. After finishing her PhD at the Biomedical Centre at Uppsala University, she specialised in strategic advising, worldwide patent portfolio prosecution, lifecycle management and litigation. Dr Skoglösa has a solid understanding of the value of intellectual property as a business tool, and clients appreciate her pragmatic approach and extensive experience in handling cases before the EPO and other major and minor patent jurisdictions. Clients also appreciate Dr Skoglösa’s commitment and her ability to understand and communicate complicated technical and legal issues. She has helped several companies through IP due diligence procedures in successful private and public financing rounds and advises clients on licence negotiations and acquisitions. Dr Skoglösa spent more than a decade at one of the largest IP firms in Scandinavia as a sought-after adviser for multinationals, universities and early-stage companies, particularly with regard to technology transfers. She is currently a member of Aera’s management and a board member, and is involved in handling international relations, such as with Aera’s preferred partners and international clients.
Aera Niels Hemmingsens Gade 10 Copenhagen K 1153 Denmark T +45 3139 2096 See firm profile p918 Professional associations • epi • Patentombundsnämnden Sample client list • Corticalis AS • DSM • FMC • Glycom • Karolinska Instituttet • Lantmannen AB • Straumann Holding
www.IAM-media.com
IAM Patent 1000
389
Sørensen, Katja Head of Food, Agriculture and Chemistry – Plougmann Vingtoft ksn@pv.eu | www.pv.eu
Katja Sørensen heads Plougmann Vingtoft’s team of IP attorneys specialising in food, agriculture and chemistry. Her technical expertise covers chemistry, biotechnology, biochemistry, food science and technology, food ingredients and immunochemistry/immunology. Ms Sørensen has worked in intellectual property since 2000 and joined Plougmann Vingtoft in 2006. Ever since, her clients have benefited greatly from her deep expertise and experience in the food, agriculture and chemistry area. As an acknowledgement of her business flair, high performance and deep insight into market and customer needs, she was appointed partner in 2014. Ms Sørensen has experience in identifying inventions, drafting and handling patent applications, conducting freedom-to-operate analyses and litigations, and has solid knowledge of handling re-establishment of rights cases before the European Patent Office and the Danish Patent Office. In addition, she is specialised in performing searches in patent and scientific databases and is highly skilled in developing and using IP rights analyses as a tool for risk assessment and idea generation in processes of development. Ms Sørensen is an experienced lecturer on issues relating to patent and IP protection, as well as database searches, and has worked as a senior examiner at the Danish Patent Office. She has successfully completed the course on patent litigation in Europe at the Centre for International Intellectual Property Studies of the University of Strasbourg, and she will therefore receive the European Patent Litigation Certificate under the Unified Patent Court when the latter starts operating. She is a member of the Standing Advisory Committee before the European Patent Office, Subgroup Patent Documentation and Information.
390
IAM Patent 1000
Plougmann Vingtoft Strandvejen 70 Hellerup Copenhagen 2900 Denmark T +45 33 63 93 45 See firm profile p1042 Professional associations • ADIPA • epi • QPIP
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Sørensen, Peter Head of Technology and Software – Plougmann Vingtoft psn@pv.eu | www.pv.eu
Peter Sørensen heads the technology and software department at Plougmann Vingtoft in Aarhus. He has technical expertise in the fields of mechanics, electronics, physics, optics, process chemistry, nanotechnology, medico-technology and computer-implemented inventions (software). More specifically, he assists clients with IP rights matters concerning wind turbines, imaging/microscopy, optical recording/ printing, medical imaging (eg, catheters, ultrasonic), decision-support systems, surgical equipment/implants, micro/nanolithography and biofuel plants, among other things. Mr Sørensen specialises in identifying, generating and prosecuting patent rights, with a special focus on post-grant patent-related work – namely, infringement/freedom-to-operate analyses, oppositions, reexaminations, litigation support and appeals. Furthermore, he is experienced in oral proceedings before the European Patent Office and the Danish patent office. Mr Sørensen participates in Plougmann Vingtoft’s programme of teaching new patent professionals about the IP rights system and he regularly gives presentations on patent law. A certified European patent attorney, he has also successfully completed the course on patent litigation in Europe at the Centre for International Intellectual Property Studies of the University of Strasbourg and he will therefore receive the European Patent Litigation Certificate under the Unified Patent Court when the latter starts operating. In addition to Danish and English, Mr Sørensen speaks some German, Latvian and French. He joined Plougmann Vingtoft in 2002 and he was appointed partner in 2012.
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Plougmann Vingtoft Strandvejen 70 Hellerup Copenhagen 2900 Denmark T +45 87 32 18 04 See firm profile p1042 Professional associations • ADIPA • epi
IAM Patent 1000
391
Struve, Casper Senior Partner – Zacco casper.struve@zacco.com | www.zacco.com
After obtaining an MSc in synthetic organic chemistry in 2003, Casper Struve worked with blood-glucose sensor chemistry for a couple of years before entering the patent profession in 2006. He spent several years as a technical assistant to the late Ejvind Christiansen in pharma patent litigation proceedings, while learning the art of patent drafting and prosecution. Since qualifying as a European patent attorney in 2011, Mr Struve has continued to advise clients in complex pharma litigation cases in Denmark and Scandinavia. He has been able to apply experience from these litigation cases to an increasing number of oppositions and appeals before the EPO, which together with litigation proceedings form a substantial part of his daily work. Since 2010 Mr Struve has been included in the pool of courtappointed experts for Danish patent cases; his experience with patent litigation led to his appointment as a technically qualified judge at the Danish Maritime and Commercial High Court in 2013, where he serves on an ad hoc basis on the panel of judges when he is not advising the parties involved. Mr Struve is also an experienced tutor on European patent law, having helped candidates to pass the European qualifying exam since 2011, primarily through involvement in the EPO Candidates Support Programme and the Online Pre-Examination Training Course arranged by the EPO. In 2016 he completed the Centre for International Intellectual Property Studies course on patent litigation in Europe, allowing him to represent clients before the forthcoming UPC. Since 2017 Mr Struve has been a member of the Danish national group leadership of the International Association for the Protection of Intellectual Property (AIPPI), as well as serving as a delegate to AIPPI’s executive committee. Mr Struve has substantial experience with supplementary protection certificates (SPC), having successfully prosecuted over 40 applications, including filing the first SPC extension application based on the Paediatric Regulation in Denmark in 2009.
392
IAM Patent 1000
Zacco Arne Jacobsens Allé 15 Copenhagen 2300 Denmark T +45 39 48 82 32 See firm profile p1098 Professional associations • AIPPI • Association of Danish Intellectual Property Attorneys • epi Sample client list • AstraZeneca • Eli Lilly • Glycom/DSM • Neste
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Sundien, Thomas Partner – Zacco Denmark A/S thomas.sundien@zacco.com | www.zacco.com
Thomas Sundien is a European patent and design attorney with strong expertise in the fields of mechanical and structural engineering. Mr Sundien also frequently acts as a judge in patent-related matters for the Danish Maritime and Commercial Court and as a court-appointed technical expert in patent infringement and validity matters. Mr Sundien has a strong focus on creating customised product protection strategies in the cross-fields of patents, utility models and design rights. He is widely known and respected for his meticulous and high-quality work and for his ability to understand clients’ business needs. His extensive experience has made him a popular choice for mechanical engineering assignments, and he has represented a long line of prestigious domestic and international clients. His long IP career started in 1988, when he first worked as a patent examiner at the Danish Patent and Trademark Office. In 1993 he became in-house patent counsel of a major industrial corporation. In 1994 he moved to private practice, qualifying shortly after as a European patent attorney and then as a European design attorney. He also has a university diploma in patent litigation from the University of Strasbourg. With more than 33 years working with IP matters, Mr Sundien has gained extensive experience drafting robust applications for patents and for design registrations. At the same time, he has become especially skilled in EPO and USPTO patent prosecution matters, including the prosecution of cases before the EPO’s opposition and appeal boards. Mr Sundien is regularly involved in domestic and foreign patent infringement litigation, as well as in patent licensing matters. In his home country of Denmark, he has represented the winning party in several high-profile Supreme Court cases – notably PowerStow v RASN A/S, in which the strategic potential of Danish utility models was affirmed. Mr Sundien’s areas of special technical knowledge include packaging, conveyors, medical devices, shipbuilding, agricultural implements, household appliances and building materials.
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Zacco Denmark A/S Arne Jacobsens Allé 15 Copenhagen 2300 Denmark T +45 24 25 52 99 F +45 39 48 80 80 See firm profile p1098 Professional associations • ADIPA • epi • FICPI
IAM Patent 1000
393
Thorsboe, Pernille Senior Partner – Zacco pernille.thorsboe@zacco.com | www.zacco.com
Pernille Thorsboe has 40 years of experience dealing with patentrelated issues. Her IP expertise includes European patent practice, Danish patent and utility model practice, supplementary protection certificates, restoration of rights, infringement and validity opinions, EU legislation on bio patents, the International Union for the Protection of New Varieties of Plants Convention and Scandinavian patent litigation. Ms Thorsboe’s current work at Zacco includes counselling, prosecution and litigation within the chemical and food technology, biochemistry, organic chemistry and pharmaceutical fields. Before joining Zacco in 2000, Ms Thorsboe worked for eight years as an examiner and 12 years as an office manager at the Danish Patent and Trademark Office. Ms Thorsboe holds an MSc in chemical engineering from the Technical University of Denmark (1980) and qualified as a European patent attorney in 2013. In 2016 she completed the Centre for International Intellectual Property Studies course on patent litigation in Europe, allowing her to represent clients before the European Unified Patent Court. She is also a member of the Danish Society of Engineers, the Association of Danish Patent Agents, the Danish Association of Intellectual Property Rights and the International Association for the Protection of Intellectual Property.
394
IAM Patent 1000
Zacco Arne Jacobsens Allé 15 Copenhagen 2300 Denmark T +45 39 48 80 62 F +45 39 48 80 80 See firm profile p1098
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Wagner, Kim Head of Opposition and Litigation – Plougmann Vingtoft kiw@pv.eu | www.pv.eu
Kim Wagner’s technical expertise spans the fields of chemistry, in particular medicinal chemistry, pharmaceuticals and medicinal biotechnology. He heads the opposition and litigation business unit at Plougmann Vingtoft and has extensive experience in oppositions, freedom-tooperate and due diligence analyses, and infringement actions. Furthermore, he has an outstanding track record in representing clients in oral proceedings before the Opposition Division and the Boards of Appeal at the European Patent Office. Mr Wagner is a certified European patent attorney. He has also successfully completed the course on patent litigation in Europe at the Centre of International Intellectual Property Studies of the University of Strasbourg and he will therefore receive the European Patent Litigation Certificate under the Unified Patent Court when the latter starts operating. Mr Wagner has been a patent attorney since 1997, first working inhouse at Novozymes and Maxygen. Mr Wagner enjoys a reputation as an inspiring teacher and he has been tutoring Danish and Norwegian candidates preparing for the European qualifying examination. He has also lectured on IP law at the Technical University of Denmark. In addition, Mr Wagner serves as a court-appointed expert at the Maritime and Commercial High Court in Copenhagen, assisting the court with technical issues in patent cases.
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Plougmann Vingtoft Strandvejen 70 Hellerup Copenhagen 2900 Denmark T +45 33 63 93 00 See firm profile p1042 Professional associations • ADIPA • epi
IAM Patent 1000
395
European Patent Office
Thanks to the covid-19 pandemic, the European Patent Office – like every other organisation on the planet – has had to adapt its working practices over the past 12 months. Although inperson hearings have faced unprecedented levels of postponement, dramatic increases in online filings and virtual hearings tell a more positive story. Despite the global challenges, patent filings dropped by just 0.7%, with 180,250 applications filed in total. From a geographical perspective, China, France, Korea and Italy are among those countries which ramped up their output; while the number of applications filed from the United States, Germany, Japan and the United Kingdom fell by varying degrees. When it comes to technologies, meanwhile, applications increased by 2.6% in the medical technology field, 6.3% in the biotechnology field and an astonishing 10.2% in the pharmaceutical field; while filings in the areas of transport and measurement dropped by about 5% apiece. Samsung is the most prolific EPO filer, having filed 3,276 patents in 2020; Huawei and LG followed hot on its heels, with 3,113 and 2,909 respectively. Qualcomm came a distant fourth, submitting 1,711 applications. BASF – the 10th highest filer – is the only life sciences entity to make the top 10. While innovation is unlikely to slow down – and indeed, has been forced to accelerate in some areas thanks to covid-19 – the events of 2020 are unlikely to be fully reflected in the EPO statistics for last year. As the pandemic continues, the 2021 stats should be a better barometer for measuring its effects. COHAUSZ & FLORACK
Firms Boult Wade Tennant LLP
See p938
Dehns
Carpmaels & Ransford LLP
See p950
J A Kemp
D Young & Co LLP
See p964
Ter Meer Steinmeister & Partner
Gill Jennings & Every LLP Grünecker Patent Attorneys and Attorneys-at-Law
Venner Shipley LLP See p988
HOFFMANN EITLE
Appleyard Lees AWA Sweden AB
Dompatent von Kreisler Selting Werner See p1022
Eisenführ Speiser
Marks & Clerk
Haseltine Lake Kempner LLP
Mewburn Ellis LLP
HOYNG ROKH MONEGIER
Vossius & Partner Patentanwälte Rechtsanwälte mbB
See p1084
See p998
Meissner Bolte
See p930
NLO
BOEHMERT & BOEHMERT
See p934
Potter Clarkson
IAM Patent 1000
See p980
Kransell & Wennborg AB
BARDEHLE PAGENBERG Partnerschaft mbB
396
See p922
Cabinet Beau de Loménie
Kilburn & Strode LLP Maiwald Patentanwaltsund Rechtsanwalts-GmbH
See p958
See p1028
www.IAM-media.com
European Patent Office Ström & Gulliksson AB
Zacco
See p1098
Uexküll & Stolberg
See p1074
ZBM Patents & Trademarks
See p1100
VO Patents & Trademarks
See p1082
Zimmermann & Partner Patentanwälte mbB
See p1102
Wuesthoff & Wuesthoff
Eva Carlsson AWA Denmark A/S
Individuals Harvey Adams Carpmaels & Ransford LLP
Mark Chapman Carpmaels & Ransford LLP
Bernd Aechter Ter Meer Steinmeister & Partner
Arnie Clarke Gill Jennings & Every LLP
Anthony Albutt D Young & Co LLP
Paul Clarkson NLO
Agustín Alconada ABG Intellectual Property Law SL
Kristina Cornish Kilburn & Strode LLP
Juan Arias ABG Intellectual Property Law SL
Philip Cupitt Marks & Clerk
Peter Arrowsmith Gill Jennings & Every LLP Anna Barlocci ZBM Patents & Trademarks
Christopher Davies Dehns See p766
Nick Bassil Kilburn & Strode LLP
Grégoire Desrousseaux August Debouzy See p665
John Brunner Carpmaels & Ransford LLP
Peter Finnie Potter Clarkson Kirk Gallagher D Young & Co LLP
Dirk Buhler Maiwald Patentanwaltsund Rechtsanwalts-GmbH
See p478
Morten Garberg HOFFMANN EITLE
Arwed A Burrichter COHAUSZ & FLORACK
See p479
Siân Gill Venner Shipley LLP
www.IAM-media.com
See p345
Paul Derry Venner Shipley LLP
Thorsten Bausch HOFFMANN EITLE Koen Bijvank Brinkhof
Ann De Clercq De Clercq & Partners
IAM Patent 1000
397
European Patent Office Hugh Goodfellow Carpmaels & Ransford LLP
Stefan Manzer Ter Meer Steinmeister & Partner
Peter Hale Haley Guiliano LLP
Cameron Marshall Carpmaels & Ransford LLP
Norbert Hansen Maiwald Patentanwaltsund Rechtsanwalts-GmbH
Niklas Mattsson AWA
See p496
Charles T Harding D Young & Co LLP
Nick McLeish Boult Wade Tennant LLP Heinz-Peter Muth Uexküll & Stolberg
Adrian Hayes Boult Wade Tennant LLP
Neil Nachshen D Young & Co LLP
Johannes Heselberger BARDEHLE PAGENBERG Partnerschaft mbB
See p502
Moritz Hoeffe Grünecker Patent Attorneys and Attorneys-at-Law
See p507
Benedikt Maria Neuburger Zimmermann & Partner Patentanwälte mbB Will Nieuwenhuys Marks & Clerk
Christian Hollatz Ter Meer Steinmeister & Partner
Pawel Piotrowicz Venner Shipley LLP
Willem A Hoyng HOYNG ROKH MONEGIER
François Pochart August Debouzy
Hans-Rainer Jaenichen Vossius & Partner Patentanwälte Rechtsanwälte mbB
Leo Polz HOFFMANN EITLE
Reinhard Knauer Grünecker Patent Attorneys and Attorneys-at-Law
Nigel Price J A Kemp See p521
Jordi Kox EP&C BV
Mark Peter Roberts J A Kemp
Simon Kremer Mewburn Ellis LLP Johannes Lang BARDEHLE PAGENBERG Partnerschaft mbB
Gwilym Roberts Kilburn & Strode LLP
Sarah Elizabeth Roques J A Kemp
See p525
Rainer Rothinger Wuesthoff & Wuesthoff
John Leeming J A Kemp
Kay Rupprecht Meissner Bolte
Joe Lenthall Haseltine Lake Kempner LLP
Lucy Samuels Gill Jennings & Every LLP
398
IAM Patent 1000
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European Patent Office Frits Schut VO Patents & Trademarks
See p685
Heather Scott Gill Jennings & Every LLP Rohan P Setna Boult Wade Tennant LLP Manuel Soldenwagner Eisenführ Speiser
See p560
Magnus Stiebe BALDER Joseph P Taormino HOFFMANN EITLE Hein van den Heuvel Patentwerk BV Rainer Viktor Vossius & Partner Patentanwälte Rechtsanwälte mbB Derk Vos Maiwald Patentanwaltsund Rechtsanwalts-GmbH
See p574
James Ward Haseltine Lake Kempner LLP Jeremy Webster Mewburn Ellis LLP Nina White Boult Wade Tennant LLP Simon Mark Wright J A Kemp
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IAM Patent 1000
399
Finland
According to WIPO, Finland sits comfortably among the top 10 innovative countries in the world. It is home to a vibrant start-up community and continues to foster innovation and growth through government initiatives and funding. For instance, Business Finland and Tekes, the Finnish Funding Agency for Innovation, offer services for early-stage companies across different phases of their business development. It thus comes as no surprise that patenting activity is currently the healthiest it has ever been; the low cost of filing and fast-track options at the Finnish Patent and Registration Office have much to do with that. On the litigation front, pharmaceutical, technology and energy skirmishes still account for a significant portion of the caseload, which has also remained steady of late. Meanwhile, Finland will shortly be conducting a review of its national IP strategy with a view to making processes even more efficient and enhancing general awareness of the importance of intangible assets.
Backström & Co
A highly regarded boutique with a specialisation in patent litigation, Backström & Co makes astute use of its contentious capabilities and strong international ties to navigate challenging cross-border disputes with ease. It is regularly sought out by pharmaceutical companies: as an example, practice leader Petri Eskola has recently been assisting Sandoz before the Market Court in two separate proceedings against AstraZeneca and Roche, as well acting for Krka in an infringement matter brought by Gilead. The “skilled and professional attorney” produces “excellent results without any unnecessary bells and whistles”.
Berggren Oy
At Berggren, innovators receive wraparound support courtesy of its dedicated patent, design, legal and brokerage teams. One of the largest firms on the market, it has 170 experts on deck to tend to the needs of some 4,000 clients; and it continues to refine its offering by developing its own in-house software, such as IP management tool Greip. Standout patent attorney Sakari Värilä has “an excellent understanding of difficult technologies, especially software. He is skilled in the art of patenting the impossible and has a gift for relaying complex issues in a simple way”. Biotechnology ace Pirta Tiiro is “absolutely brilliant and really knows her stuff”. She capitalises on knowledge gained from in-house positions at pharmaceutical and food companies when conducting patentability analyses. Joining them in the guide this year is Fu-Chia Aspelin, a qualified European, Chinese and Finnish patent attorney with a flair for the life sciences. She plays an active role in China-Finland dialogues, heads up Berggren’s China desk and cultivates fruitful relationships with international clients.
400
IAM Patent 1000
Bird & Bird LLP
The market at large is unanimous in its praise for Bird & Bird, a global titan with 300 full-time IP lawyers operating across 29 offices. In Helsinki, the side benefits from deep local know-how, sweeping geographical reach and the technical chops to handle even the trickiest briefs for some of the world’s leading technology companies. Captaining its IP and life sciences groups, Ella Mikkola “approaches cases thoroughly and holistically. She gets right into the detail, analyses every argument and finds creative solutions to the problems at hand. It is always a pleasure to work with her”. Employee inventions are a specialist subject of this “distinguished legal expert”, who has “excellent business skills and an in-depth understanding of the issues from a legislative and academic standpoint”.
Boco IP
“The number one firm in Finland for prosecution work”, Boco IP “consistently delivers top-quality work and excellent customer service”. The past 12 months have seen new clients come on board, an increase in opposition and appeal work at both the local and European level, and a slew of new instructions from attorneys at law seeking the assistance of technical experts in court proceedings. The diversity of its talent base is reflected in the inclusion in the listings this year of chemists Karri Leskinen and Jonna Sahlin; life sciences sage Jaana Hämäläinen; mechanical engineer Christian Westerholm; and telecommunications and computer-implemented inventions maestros Marja Liisa Autti and Anu Keinänen. “A brilliant practitioner”, Leskinen is “extremely well regarded” for pharmaceutical instructions and regularly provides astute strategic advice in contentious proceedings. “Jonna’s excellent technical knowledge, precision and problem-solving attitude are highly appreciated”; while Hämäläinen’s flexible, client-centric approach resonates with top
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Finland Firms: litigation
Firms: prosecution
Borenius Attorneys Ltd
Berggren Oy
Roschier, Attorneys Ltd
Boco IP
Castrén & Snellman
Heinonen & Co Attorneys-at-Law Ltd
Hannes Snellman Attorneys Ltd
Kolster Oy Ab
Heinonen & Co Attorneys-at-Law Ltd
Papula-Nevinpat
Backström & Co
Espatent Oy
Krogerus
Laine IP Oy
Merilampi Attorneys Ltd
Primrose OY
Waselius & Wist
names in the food process industry. An authority on plant variety rights, she is also highly sought after as a technical expert in litigation proceedings. Oppositions are the metier of Westerholm: “His efficiency and timeliness ensure that nothing gets missed. He also has the ability to find a way forward in seemingly difficult situations.” Formerly a senior IP manager at Nokia, IAM Patent 1000 newcomer Liisa Autti is a discerning choice for strategic R&D matters. Keinänen is “exceptionally talented at drafting applications. She understands the core technical ideas, formulates a well-planned claim and is always extremely diligent and insightful in her work”. She comes recommended for demanding instructions in the high-tech industry. See p932 for firm profile
Borenius Attorneys Ltd
A prime destination for major generic pharmaceutical companies and industry leaders generally, Borenius Attorneys is home to technology specialists and crack litigators who regularly prevail in commercially consequential cases. It has lately been representing Mylan in revocation, infringement and preliminary injunction proceedings against Gilead relating to the interpretation of the SPC Regulation – a matter that is being widely considered by several European courts. Another highlight is its work for Teva, which saw stalwart Ben Rapinoja team up with Dutch and German colleagues in cross-border litigation against InterMune, a biotechnology company acquired by Roche. “One of the most experienced and talented litigators in Finland, Ben comes out on top even when faced with formidable opponents.” Fellow contentious
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See p932
star Lasse Laaksonen also attracts warm plaudits from patrons: “He is practical and shrewd, but also a strong-minded fighter. Lasse has never let me down in the decade I have worked with him.” At the helm of the technology, media and telecommunications team, Samuli Simojoki brings impressive transactional capabilities to the mix; complex ICT licensing deals are a forte.
Castrén & Snellman
“Castrén & Snellman is a brilliant firm: it builds relationships based on mutual trust and is great to collaborate with,” enthuses one peer. Its IP practitioners make light work of complex instructions and draw judiciously on colleagues’ expertise in commercial, competition and regulatory law to deliver stellar results in litigation and licensing scenarios. Sakari Salonen and Hanna Paloheimo drive the practice forward. The pair recently linked up to carry the day for leading cement manufacturer Finnsementti in multifaceted proceedings before the Market Court. “Well on his way to the forefront of the Finnish patent scene, Sakari has more than earned his place among the country’s top litigators.” Another joint highlight includes involved advising iLOQ – a developer and manufacturer of high-security locking solutions – on the sale of its shares to funds managed by Nordic Capital. Paloheimo’s combination of legal qualifications with a masters in genetics is of utmost value to heavy hitters in the life sciences: she regularly assists Merck, Boehringer Ingelheim and Johnson & Johnson with their contractual matters.
IAM Patent 1000
401
Finland Firms: transactions
Individuals: prosecution
Borenius Attorneys Ltd
Highly recommended
Roschier, Attorneys Ltd
Kirsikka Etuaho Espatent Oy
Castrén & Snellman Hannes Snellman Attorneys Ltd Heinonen & Co Attorneys-at-Law Ltd Bird & Bird LLP Inventio Attorneys Ltd Krogerus
Espatent Oy
A technically dextrous and dynamic partner to startups and multinationals alike, Espatent provides a meticulous prosecution and counselling service. It takes a strategic approach to patent procurement, analyses competitive landscapes with a hawkish eye and identifies commercialisation opportunities along the way. Founding partner Sanna Kalliola, Sampsa Söderholm and Samu Lamberg have a complete command of the high-tech, computer and mechanics fields. CEO Kalliola is rigorous on quality control – whether leading the firm, assisting clients or translating technologies into perfectly drafted applications. Asset protection, exploitation and litigation support all come naturally to Söderholm, who “prepares well-argued statements, manages tight schedules and consciously considers budgetary limits”. The passion of former Nokia man Lamberg for innovation and commercial thinking translates into superb results at the patent office. The life sciences industry is the happy hunting ground of Kirsikka Etuaho, who works wonders across an array of technical fields.
Hannes Snellman Attorneys Ltd
One of the premier transactional outfits in the Nordics, Hannes Snellman is the architect behind myriad high-value patent-rich deals. For example, the firm recently assisted YIT with the multimillion-euro sale of its paving and mineral aggregates businesses in Finland, Sweden, Norway and Denmark to Peab. The group has also had a red-letter year in litigation, playing a lead role in several local and international high-profile matters in the pharmaceutical sector. Department captain Panu Siitonen sets the tone
402
IAM Patent 1000
Folke Johansson Papula-Nevinpat Krister Karlsson Kolster Oy Ab Toni Korelin Primrose OY Karri Leskinen Boco IP
See p411
Jonna Sahlin Boco IP
See p412
Sampsa Söderholm Espatent Oy Pirta Tiiro Berggren Oy Sakari Värilä Berggren Oy
from the top. A seasoned negotiator and eloquent orator, he puts in polished performances both in the courtroom and at the deal table. By his side, IAM Patent 1000 newcomer Sarita Schröder brings comfort to telecommunications companies thanks to her industry insight, proficiency in major disputes and ability to pack commercial value into the agreements she brokers.
Heinonen & Co Attorneys-at-Law Ltd
Companies seeking on-point IP advice and access to the vast commercial resources of an international firm should look no further than Eversheds subsidiary Heinonen, an outfit that assists companies in virtually any sector across the patent lifecycle. Zooming in on its non-contentious practice, Sampo Ylätalo, Juhani Kupiainen, Regina Pudas and Akseli Von Koch acquit themselves with distinction on all manner of prosecution instructions. Distinguished physicist Ylätalo has several stints at prestigious research institutions on his CV; he has a knack for translating ideas into well-drafted claims with a broad scope
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Finland Kati Leinonen Kolster Oy Ab
Recommended Tapio Äkräs Kolster Oy Ab
Sini-Maaria Mikkila Kolster Oy Ab
Fu-Chia Aspelin Berggren Oy Marja Liisa Autti Boco IP
Marjukka Nuppola Primrose OY See p408
Matti Brax Papula-Nevinpat Jaana Hämäläinen Boco IP
Oli Pekonen Primrose OY See p409
Marjut Honkasalo Kolster Oy Ab
Regina Pudas Heinonen & Co Attorneys-at-Law Ltd Markku Simmelvuo Papula-Nevinpat
Sanna Kalliola Espatent Oy Anu Keinänen Boco IP
Ari Parta Kolster Oy Ab
Christoffer Sundman Laine IP Oy See p410
Tomi Konkonen Papula-Nevinpat Juhani Kupiainen Heinonen & Co Attorneys-at-Law Ltd Samu Lamberg Espatent Oy Satu Lehesranta Papula-Nevinpat
Jarkko Tiilikainen Laine IP Oy Akseli Von Koch Heinonen & Co Attorneys-at-Law Ltd Christian Westerholm Boco IP
See p413
Sampo Ylätalo Heinonen & Co Attorneys-at-Law Ltd
advocate, he always keeps clients’ commercial interests front and centre. of protection. “Effective communicator” Kupiainen “makes the patenting process absolutely effortless” for clients such as listed power system producer Enedo Plc. Pudas – a veritable encyclopaedia of European patent law and chemistry ace – regularly assists pioneering entities such as Picosun, which developed the atomic layer deposition film coating method. For players in the fields of emerging digital technologies such as Internet of Things and artificial intelligence, Von Koch is a crucial business partner. He also has a keen strategic eye and has recently been helping local healthcare company Icare Finland to maintain its competitive edge. The ensemble’s contentious offering is anchored by Petteri Häkkänen. A brilliant legal mind and persuasive
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Inventio Attorneys Ltd
Highly attuned to the diverse needs of its discerning clientele, Inventio Attorneys makes understanding business rationales a priority and offers a service aligned with the impeccable standards it sets for itself. Its transactional talents are relied upon by hightech companies such as Gasera and Spectral Engines, which both received strategic, hands-on guidance on their technology licensing and R&D agreements. At the helm is results-driven negotiator Topi Lusenius, whose extraordinary technical faculties were sharpened during his time as senior legal counsel with Tieto Corporation, the largest ICT service supplier in the Nordics.
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Finland Individuals: transactions Henrik af Ursin Merilampi Attorneys Ltd Johanna Flythström Roschier, Attorneys Ltd Kalle Hynönen Krogerus Bernt Juthström Waselius & Wist Henri Kaikkonen Krogerus Hannes Kankaanpää Kolster Oy Ab Åsa Krook Waselius & Wist Jan Lindberg Attorneys-at-Law TRUST Ltd Arto Linnervuo Roschier, Attorneys Ltd
Kolster Oy Ab
The experience that Kolster has gained over its 146year history is “a massive confidence boost – clients know that matters will be handled in an excellent manner. It is a valuable partner and the service is always professional, yet friendly”. “It is full of experts from different technical fields and their combined knowledge enhances the results obtained. The firm also stands out for the transparency of its reporting and invoicing practices.” Its strength in depth is reflected in seven individual listings in the IAM Patent 1000 – more than any other firm ranked in the prosecution table. Robust leadership is supplied in abundance by power electronics applications whizz Ari Parta, “a technically savvy attorney with a warm and customer-oriented approach, which makes him easily approachable and a delight to work with”. He is joined by Kati Leinonen, the ICT and electrical engineering head and a former senior IP specialist at Nokia. She knows how to draft and identify patents that generate business value. The “superexperienced” Tapio Äkräs “can be counted on for solid advice” in the high-tech realm. He has over three decades in the game and understands how to get
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Tomas Lodenius Vestra Group Topi Lusenius Inventio Attorneys Ltd Mikko Manner Roschier, Attorneys Ltd Ella Mikkola Bird & Bird LLP Niklas Östman Roschier, Attorneys Ltd Hanna Paloheimo Castrén & Snellman Sakari Salonen Castrén & Snellman Panu Siitonen Hannes Snellman Samuli Simojoki Borenius Attorneys Ltd Akseli Von Koch Heinonen & Co Attorneys-at-Law Ltd
rights on the register on a domestic and global level. Telecommunications specialist Marjut Honkasalo has her finger on the pulse of emerging technologies and is actively involved in international associations to develop EPO practices. Licensing is one of the many fortes of Hannes Kankaanpää, whose stint as legal counsel at the VTT Technical Research Centre of Finland stands him in good stead when doing heavy lifting on R&D agreements. Previously an in-house counsel and IP rights manager in the oil refining industry, Krister Karlsson takes the lead on all things biotech and chemistry; his holistic view of patent protection ensures that IP strategies are embedded in clients’ business models. Ensuring that everything runs smoothly in Tampere is industrial machinery specialist Sini-Maaria Mikkila: “She defines complex technical concepts clearly and concisely, resulting in solid patent protection and the potential for strong arguments in opposition proceedings. Sini-Maaria is a big-picture thinker and her honest opinions keep businesses on track.”
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Finland Krogerus
Intellectual property is a central focus at commercial firm Krogerus, and its patent practice has been going from strength as dynamic innovators queue up to enlist its litigation and transactional services. It enjoys a terrific reputation in the media and telecommunications sectors, where it has lately been representing cable compensation solutions provider KKM Power in proceedings involving one of its key products against a leading global technology company. Taking the reins on this matter were Kalle Hynönen and Henri Kaikkonen, both of whom receive effusive praise. “A true professional, Kalle always tries to find a solution, even in the most trying of circumstances. His advice is practical, mitigates risk and takes into consideration the various challenges posed by different jurisdictions, which is highly appreciated. He communicates clearly, replies promptly and never beats around the bush.” In the words of one peer: “Henri is on track to become one of Finland’s leading practitioners. He works efficiently, is great with clients and translates complex legal issues into actionable business advice.”
Laine IP Oy
At Laine IP, instructions are handled “with utmost professionalism by attorneys with an exceptionally high level of knowledge”. The prosecution dynamo assists inventors in the life sciences, medical technology and electronics industries in many meaningful ways. For example, it has an exceptionally strong EPO practice, with 17 European patent attorneys on deck; and when mandates take them across the pond, its in-house team of US patent attorneys stands ready to take the lead. Electrical engineer Jarkko Tiilikainen “readily makes himself available and is enjoyable to work with. Collaborative and effective, he always makes you feel at ease”. Senior partner and chemistry maven Christoffer Sundman prosecutes with dexterity, devises madeto-measure strategies and effortlessly handles the pressure when sitting as a court-appointed expert.
Merilampi Attorneys Ltd
Merilampi Attorneys struck gold when it brought “highly skilled lawyer” Henrik af Ursin into the fold in 2018; since then, its IP practice has been on an upwards trajectory and instructions are flying in. “Henrik manages cases with a personal touch. He is always available and provides updates on any new developments along with detailed and clear opinions, as well as efficient and strategic recommendations.” The side has lately been representing multinationals such as packaging company DS Smith, as well as
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top local players such as Suominen Corporation and Katko. It brings added value through its Merilampi Diagnostics tool, which provides clients with recommendations on how best to develop their portfolios.
Papula-Nevinpat
The extensive reach of Papula-Nevinpat is a real USP: alongside its Helsinki headquarters, it maintains a longstanding presence in Russia and has additional outposts in Belarus, Ukraine, Kazakhstan, Uzbekistan and Munich. Start-ups and Fortune 500 companies alike enjoy instant access to a comprehensive patent toolkit that encompasses everything from prosecution to enforcement. Managing director Markku Simmelvuo has a finely cultivated international network and can adroitly navigate procedures at Eurasian patent offices. He also makes regular contributions to the development of Finnish law through his work in various industry associations. The “super-experienced and personable” Folke Johansson heads the patent department: “Folke is great at explaining complex technologies to lawyers and a pleasure to collaborate with. He is highly sought after.” Fellow ex-Nokia patent attorney, Tomi Konkonen leads the ICT and electrical engineering squad. One peer reports: “He continues to excel at technology-related prosecution work, and you can truly rely on both his legal and technical knowledge.” Joining the trio in the guide this year are electronics and 5G specialist Matti Brax and chemistry maven Satu Lehesranta. “Matti is an experienced attorney with excellent skills in the art of dispute strategy and tactics. His service quality and turnaround times are also excellent.” Lehesranta is hailed as “brilliant, super-responsive and amazing to team up with. Satu can translate long, complex pages into easily digestible information and is an absolute superstar”.
Primrose OY
While Primrose may be a relative newcomer to the Finnish legal market, its “enthusiastic professionals and exceptional standards” have already made its presence known. The outfit is lean in size and keeps overheads low and pricing transparent to provide a cost-conscious, streamlined service – an approach valued by the likes of Beneq, one of Finland’s most active patent applicants. The engines of this tight-knit team are Toni Korelin, Marjukka Nuppola and Oli Pekonen. “Highly recommended as co-counsel in any patent dispute”, Korelin has “a superb strategic mind. Through his well-reasoned technical arguments, he can muddle an adversary’s case and get favourable results for his clients”. Extensive industry insight
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Finland Individuals: litigation Rainer Hilli Roschier, Attorneys Ltd Ben Rapinoja Borenius Attorneys Ltd Petteri Häkkänen Heinonen & Co Attorneys-at-Law Ltd Lasse Laaksonen Borenius Attorneys Ltd Johanna Lilja Roschier, Attorneys Ltd Mikko Manner Roschier, Attorneys Ltd Hanna Paloheimo Castrén & Snellman Sakari Salonen Castrén & Snellman Mikael Segercrantz Roschier, Attorneys Ltd Panu Siitonen Hannes Snellman Attorneys Ltd Petri Eskola Backström & Co Kalle Hynönen Krogerus Henri Kaikkonen Krogerus Ella Mikkola Bird & Bird LLP Sarita Schröder Hannes Snellman Attorneys Ltd
allows Nuppola to slot easily into in-house teams and deliver advice that gets right to the heart of business. Former research engineer and in-houser Pekonen is the resident licensing whizz: “He is as sharp as they come and has a terrific sense of humour.”
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IAM Patent 1000
Roschier, Attorneys Ltd
“Roschier is the number one service provider in Finland. Its industry knowledge – especially in pharmaceuticals – is unparalleled and in enforcement, few, if any firms can match up. It does a phenomenal job across the board and the lawyers really get to know their clients from a business and personal perspective, which brings value that simply cannot be measured.” High-powered litigator Rainer Hilli leads the charge. “He is someone I look up to”, enthuses one client. “His experience, wisdom and legal knowledge are things you cannot deny”. Hilli and Mikael Segercrantz recently combined to superb effect to represented Gilead Sciences in two invalidation actions against Teva/Actavis and Mylan in relation to its SPCs, while also taking on three parallel infringement and preliminary injunction proceedings at the same time. Segercrantz’s regulatory nous gives the contentious practice a boost; as does Johanna Lilja’s fine-grained understanding of the telecommunications industry. “You can put all your faith and trust in Rainer, Mikael and Johanna. They know exactly what to do, with minimum instruction, and exceed expectations every time. They are incredibly intelligent and great fun to work with too.” On the transactional side of the practice, Mikko Manner, Niklas Östman and Johanna Flythström are “thorough and systematic, and handle each matter with utmost professionalism and to an exceptional standard”. One peer dubs Östman “the most experienced patent professional on the planet”. He recently advised Autoliv Inc on several global licensing deals and numerous R&D collaboration projects. Heading up the digitalisation, TMT and outsourcing practices, Arto Linnervuo is a safe pair of hands for tech companies looking to hit the ground running and an adept coordinator of cross-border business process development projects.
Waselius & Wist
Waselius & Wist took its patent offering to the next level in 2020 with the recruitment of former Borenius star Åsa Krook. The move has enhanced its already robust practice, while giving it an edge in handling sophisticated commercialisation agreements. An authority on licensing deals and distribution agreements, Krook also showcases sparkling advocacy skills. Division spearhead and contentious ace Bernt Juthström “acts with speed and accuracy. He is supportive and reliable, and communicates in a way that is inclusive and gets everyone on the same page”.
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Finland Other recommended experts
At TRUST, Jan Lindberg partners with telecommunications, high-tech and pharmaceutical players to drive business value through meticulously drafted and negotiated contractual agreements. Transactional maven Tomas Lodenius instils developers of technology-driven businesses with confidence; he recently departed Inventio to set up Vestra Advisors.
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Autti, Marja Liisa Partner – Boco IP marjaliisa.autti@bocoip.com | www.bocoip.com
Marja Liisa Autti is a partner at Boco IP. She has worked in the IP field for over 30 years and has an MSc in electrical engineering. Ms Autti is an authorised patent attorney in Finland. Ms Autti has extensive experience working with patent attorneys all over the world. She is known for her capacity to draft patent applications in a broad variety of technologies even at short notice and is well versed in nullity actions concerning Finnish national patents, representing both plaintiffs and proprietors. She has also served as an IP expert in lawsuits in Finland relating to invalidity matters. She has been praised for her ability to explain complex technical matters in layman terms. Her long experience as a patent engineer and IP rights manager in the telecom industry has taught her numerous skills beyond the standard prosecution of patent applications – not least evaluating the patentability of inventions, performing competitor follow-up to ensure freedom to operate and patent portfolio management skills. Ms Autti has also gained broad experience in developing a patent portfolio of standard essential patents. Ms Autti is fluent in Finnish and English.
Boco IP Itämerenkatu 5 00180 Helsinki Finland T +358 9 6866 8495 See firm profile p932 Professional associations • AIPPI
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IAM Patent 1000
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Hämäläinen, Jaana Partner – Boco IP jaana.hamalainen@bocoip.com | www.bocoip.com
Jaana Hämäläinen joined Boco IP in 2000 and became a partner in 2010. She has an MSc in biotechnology and a PhD in plant pathology. Ms Hämäläinen is a European patent attorney and an authorised patent attorney in Finland. She has been involved in various biology and chemistry-related patent matters both in Finland and internationally. She handles IP cases and counsels clients in the fields of biotechnology, biochemistry, molecular biology, pharmaceuticals, diagnostics, food industry, process technology, microbiology and plant biology. In addition to conventional drafting and prosecution, she handles oppositions and appeals, conducts freedom-to-operate analyses and novelty searches, gives statements on the interpretation of patents and advises on patent matters in general. Ms Hämäläinen also acts as a technical expert in patent litigations. She has handled cases related to plant variety rights in both Finland and the European Union. Ms Hämäläinen frequently gives lectures and delivers training for clients and public audiences. She is an expert member of the Finnish Market Court. Moreover, she is a member of the Association of Finnish Patent Attorneys, where she was secretary of the chemistry group from 2005 to 2008. Ms Hämäläinen was an intern at the European Patent Office (Directorate 2.4.01, cluster Biotechnology). She has worked at universities and research institutions in Finland, Sweden and the United States.
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Boco IP Itämerenkatu 5 Helsinki 00180 Finland T +358 9 686 6840 F +358 9 686 6844 4 See firm profile p932 Professional associations • AIPPI • epi
IAM Patent 1000
409
Keinänen, Anu Partner – Boco IP anu.keinanen@bocoip.com | www.bocoip.com
A partner at Boco IP, Anu Keinänen has been working in the field of patents since 1996. Prior to her extensive career in private practice, she had also gained substantial experience working as a corporate in-house patent attorney. Ms Keinänen holds an MSc engineering degree in physics. She is a European patent attorney and an authorised patent attorney in Finland, and has successfully completed the CEIPI (Centre for International Intellectual Property Studies) course on patent litigation in Europe. Ms Keinänen’s practice focuses on patenting inventions in the fields of information and communications technology, semiconductors and sensors – both in Finland and internationally. Clients have recognised her understanding of technical details as an essential asset that enables straightforward interaction with inventors. In addition, she prepares statements regarding patent landscape mappings and handles infringement matters. Part of her time is also dedicated to in-house counselling, where she acts in close cooperation with inventors, as well as the IP management of the client organisation. As one of Boco IP’s most experienced patent attorneys, she handles the firm’s top international customer assignments. Ms Keinänen is an expert member of the Finnish Market Court. Moreover, she is an alternate delegate of Finland in the executive committee of the International Federation of Intellectual Property Attorneys and a board member of the Association of Finnish Patent Attorneys. She is also a member of the Licensing Executives Society Scandinavia.
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IAM Patent 1000
Boco IP Itämerenkatu 5 Helsinki 00180 Finland T +358 9 686 68 40 F +358 9 686 68444 See firm profile p932 Professional associations • epi • FICPI • LES
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Leskinen, Karri Managing Director – Boco IP karri.leskinen@bocoip.com | www.bocoip.com
Karri Leskinen joined Boco IP in 2005 and has been a partner at the firm and its managing director since 2007. He has worked in the patent field since 1999 and holds an MSc in chemistry. Over the years, he has handled IP cases primarily in the fields of pharmaceuticals, food and process industries, and polymer technologies. Mr Leskinen has been involved in numerous litigation cases, especially in relation to pharmaceuticals, and for the past decade has worked mainly for manufacturers of generic drugs. Mr Leskinen is a European patent attorney and an authorised patent attorney in Finland. He is actively involved in the planning and implementation of clients’ IP strategies, with an increasing focus on consultation and providing training in IP management-related issues. Portfolio management, freedom-to-operate analyses, IP due diligence and commercialisation are tasks he routinely undertakes. He also prepares opinions on the interpretation of patents and handles opposition cases at both the European and Finnish patent offices for opponents and proprietors. Mr Leskinen also frequently speaks on IP issues. In addition to his enthusiasm for patents, Mr Leskinen is passionate about creating new management and leadership practices. He has carried out strategic work with the aim of making Boco IP the best IP firm in Finland. Mr Leskinen is a member of the Association of Finnish Patent Attorneys, the International Association for the Protection of Intellectual Property (AIPPI) and the International Federation of Intellectual Property Attorneys. In addition, he is currently acting as an expert member of the Finnish Market Court and a board member for the Finnish AIPPI Group.
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Boco IP Itämerenkatu 5 Helsinki 00180 Finland T +358 9 686 68410 F +358 9 686 68444 See firm profile p932 Professional associations • AIPPI • epi • FICPI
IAM Patent 1000
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Sahlin, Jonna Partner – Boco IP jonna.sahlin@bocoip.com | www.bocoip.com
Jonna Sahlin is a partner and chair of the executive board at Boco IP. She has worked in the patent field since 1998 and holds an MSc in chemical technology. Ms Sahlin is a European patent attorney and an authorised patent attorney in Finland. She has also successfully completed the CEIPI (the Centre for International Intellectual Property Studies) course on patent litigation in Europe. She counsels clients on matters relating to intellectual property and IP strategy, and prosecutes Finnish and European patents in the fields of chemistry, biochemistry, pharmaceuticals, diagnostics, food industry, process technology and biofuels. Her clients praise her ability to combine collaboration with solid, well-founded advice. Ms Sahlin has been involved in patent litigation cases, as well as Finnish national utility model nullity actions. She also conducts freedom-to-operate analyses and prepares opinions on the interpretation of patents. Ms Sahlin is a council member of epi, the professional body for European patent attorneys, as well as a member of epi’s Professional Conduct Committee. In addition, she has actively contributed to the patent field in Finland, especially during her term as chair of the Association of Finnish Patent Attorneys (of which she remains a member) in 2010-2013. She is also an expert member of the Finnish Market Court, a member of the European IP practitioners’ organisation UNION, the International Association for the Protection of Intellectual Property and the International Federation of Intellectual Property Attorneys.
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IAM Patent 1000
Boco IP Itämerenkatu 5 Helsinki 00180 Finland T +358 9 686 6840 F +358 9 686 6844 4 See firm profile p932 Professional associations • AIPPI • epi • FICPI
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Westerholm, Christian Partner – Boco IP christian.westerholm@bocoip.com | www.bocoip.com
Christian Westerholm is a partner at Boco IP. He has worked in the IP field for over 20 years and has an MSc in mechanical engineering. Mr Westerholm is an authorised patent and design attorney in Finland, and a European design and patent attorney. Mr Westerholm is often regarded as a “patent application drafting machine”, with extensive experience in collaboration with patent attorneys all over the world. Mr Westerholm also has experience of oral proceedings before examining divisions, opposition divisions and the Boards of Appeal of the European Patent Office. He regularly handles opposition proceedings both for opponents and proprietors. In addition, Mr Westerholm is well versed in nullity actions concerning Finnish national utility model registrations, representing plaintiffs and proprietors. He has also served as a technical expert in lawsuits in Finland relating to both infringement and invalidity matters. His experience as in-house patent attorney has taught him numerous skills beyond the standard prosecution of patent applications, not least evaluating inventions and performing competitor follow-up to ensure freedom to operate. Mr Westerholm is a member of the Disciplinary Committee of epi, the professional body for European patent attorneys. He is fluent in Swedish, Finnish and English.
Boco IP Itämerenkatu 5 Helsinki 00180 Finland T +358 9 686 6840 F +358 9 686 68444 See firm profile p932 Professional associations • AIPPI • epi • FICPI
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IAM Patent 1000
413
France
France is increasingly seen as an attractive venue for pharmaceutical multinationals to assert their patent rights: many have interpreted a significant victory for Eli Lilly against generics producer Fresenius Kabi at the Paris Court of First Instance in 2020 as a sign that the tide has turned in originators’ favour. It’s not all good news, however: some commentators suggest that the country may become a hotspot for SPC nullity actions following Merck’s recent defeat in a long-running SPC dispute. Reforms to the prosecution process introduced in 2019 via President Macron’s Action Plan for Business Growth and Transformation continue to bed down; while the IP community awaits clarification on the fate of the UPC, especially with regard to the division that was previously destined to be in London.
abello IP
Amar Goussu Staub
Allen & Overy LLP
Armengaud Guerlain
Having blazed a trail on the French legal landscape by integrating the talents of patent attorneys and lawyers almost 20 years ago, Abello IP has long since perfected the art of A-to-Z patent protection. While telecommunications and mechanics are traditional fortes, the group has lately been bolstering its pharmaceutical practice, as evidenced by its recent defence of GSK subsidiary ViiV Healthcare in relation to its HIV therapy products. On the telecommunications side, FRAND negotiations and SEP litigation are an inevitable focus, with French mobile giant SFR one notable recent client. Dual-qualified Michel Abello began his legal career after a 12-year stint as a patent attorney and thus has “a valuable combination of great technical and judicial expertise”. He is joined in the rankings by patents head and physics PhD JeanBaptiste Thibaud, who brings insight gained from his time in-house at Alcatel-Lucent to his thriving telecommunications practice.
Allen & Overy’s French IP team serves an impressive roster of multinational clients across the life sciences and high-technology sectors, and has featured in a diverse range of pan-European disputes over the last year. Preliminary injunction matters are something of a specialty: the group played a role in 75% of such actions between 2018 and 2019. In the pharmaceutical space, it continues to represent Merck Sharpe & Dohme in a series of actions against generics companies under the watchful guidance of IP head and life sciences co-head Laëtitia Bénard. She has appeared in myriad game-changing multijurisdictional patent suits and thrives at the crossroads of intellectual property and pharmaceutical regulatory law. For high-technology disputes, the person to call is David Por: he recently defended Archos against patent infringement actions brought by Philips in one of the first cases in which the precedent set by the CJEU in Huawei v ZTE was applied by the courts.
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While best known for its facility for FRAND-related disputes in the telecommunications sphere, Amar Goussu Staub’s remit is reassuringly broad, encompassing patent litigation and advisory work in almost every sector. Leading the charge is FRAND licensing ace Cyrille Amar, who co-founded the firm in 2017 and operates with poise on both sides of the contentious/non-contentious divide. His varied practice extends beyond patent law to include distribution and IT services disputes, unfair competition actions and international arbitration. Fellow all-rounder Jean-François Guillot can tease out the knots of complex IP disputes of all kinds, including infringement and interim injunction proceedings, as well as employee invention matters. He is equally persuasive at the deal table, brokering lucrative licence and technology transfer agreements and shepherding IP-rich M&A transactions to successful close.
Armengaud Guerlain has been a fixture of the French patent market for more than 25 years and prides itself on a collaborative approach that prioritises optimal results and cost-effectiveness over the accumulation of fees. An extensive network of foreign associates makes the coordination of cross-border litigation a breeze, not just across Europe, but also in the United States and Asia; as one recent example, it has been defending WIKO against a series of patent infringement actions initiated by Philips in France, the Netherlands and Germany. Leading on this case is Catherine Mateu, who has also gone out to bat for pharmaceutical company Estar Medical and milk packaging innovator Novapet. Whether dispensing strategic advice, litigating or negotiating contracts, the versatile practitioner is cosmopolitan in outlook; fluent in French, English and Spanish, she also shares her knowledge by speaking at conferences and teaching law to students at the University of San Francisco. At her side is founder and IP veteran
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France Stéphane Guerlain, who continues to keep busy for Telecom Design in an employee invention dispute that has been playing out for over a decade.
Firms: prosecution
August Debouzy
Cabinet Beau de Loménie
Home to one of the foremost patent litigation divisions in France, August Debouzy has also cultivated a small but perfectly formed prosecution offering. Heavyweight players which have recently benefited from its robust representation in high-stakes proceedings include Teva, in a complex crossborder patent infringement matter against Novartis; agricultural machinery manufacturer Pellenc, in parallel infringement and nullity proceedings; and L’Oréal and Fapagau, in a packaging-related patent and trade secret dispute. The star names are litigators Grégoire Desrousseaux and François Pochart – both dual-qualified European patent attorneys and lawyers with a bird’s-eye view of each instruction. “Grégoire is by far one of the best lawyers we have ever encountered across a period of several decades,” reports one source. “He has excellent pleading skills and a high level of IP expertise, which is highly recognised beyond his own company. He combines incredible knowledge of clients’ businesses with a practical approach and an in-depth understanding of not only the French legal environment, but also the European patent system. His technical background and his unique ability to interact efficiently with the different national teams in cross-border cases complete an outstanding professional profile.” Pochart is likewise hailed by one patron as “the smartest and best IP practitioner I have worked with”: “François can envisage and manifest the best business outcome for the client, and has a Zen-like ability to ditch weaker arguments in favour of those strongest and most likely to succeed. His scientific background, knowledge of European patent procedure and familiarity with French law make him an excellent advocate in oppositions and appeals, and in the courts. He is quick on his feet, experienced in the pharmaceutical area and, most importantly, rigorous and infectiously enthusiastic.”
Bandpay & Greuter
A glittering client roster and pristine track record before the EPO earn Bandpay & Greuter its debut appearance in the IAM Patent 1000 this year. The likes of Toshiba Tec and Total call on the firm for astute portfolio management; while on the contentious front it has been masterminding oppositions for Japan Tobacco International and providing technical assistance to law firms in a range of patent infringement disputes. It is particularly dedicated to meeting the diverse needs of overseas clients:
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Highly recommended
Plasseraud IP Santarelli
See p1060
Recommended abello IP August Debouzy Bandpay & Greuter CASALONGA Germain & Maureau GEVERS IPSide LAVOIX Marks & Clerk NONY
See p1030
REGIMBEAU
Japanese companies are served by a dedicated team of Japanese natives; Chinese clients can call on Greater China manager Anchi Tsai; and the group is also home to professionals from Greece, Iran and Mexico. Thanks to a PhD at the interface of physics and biology, Renaud Fulconis takes to any technical subject matter like a fish to water: “He makes sense of the blurriest of situations, is very experienced and provides sharp, practical advice every time. His strong technical background means he can easily understand varied and complex technologies; and he can handle complex cases while maintaining an intelligible customer interface.” On hand to assist with patent prosecution across Europe, the United States and Asia is co-founder Aujain Eghbali, who gained valuable experience through training at the University of Tokyo and a research placement at Toshiba in Yokohama. He is a familiar face at the EPO, especially on behalf of medical devices companies,
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France Firms: transactions
Firms: litigation
Allen & Overy LLP
Allen & Overy LLP
August Debouzy
August Debouzy
Bird & Bird LLP
Bird & Bird LLP
De Gaulle Fleurance & Associés
HOYNG ROKH MONEGIER
See p998
Dentons
BARDEHLE PAGENBERG SAS SPE
See p930
Gide Loyette Nouel
Gide Loyette Nouel
Gowling WLG
Hogan Lovells
Jones Day
Jones Day
Marks & Clerk
Pinsent Masons
Pinsent Masons
abello IP
Simmons & Simmons LLP
Amar Goussu Staub
TALIENS
Armengaud Guerlain
and receives warm plaudits from patrons: “Aujain can handle the most complex inventions, especially those requiring excellent skills in applied mathematics. He is adaptable, shows rare technical understanding and delivers efficient work.”
BARDEHLE PAGENBERG SAS SPE
Although best known for its dominance of the German patent space, Bardehle Pagenberg is also an imposing presence in Paris, where it operates with precision and care on both sides of the contentious/non-contentious divide; matters involving NPEs are a specialty. First among equals is Julien Fréneaux, who impresses for his SEP-related work in the telecommunications field. He regularly handles cases with a crossborder element, coordinating parallel infringement proceedings in multiple countries, and has a flair for the fine print of technology transfer agreements and other IP-related contracts. Also intimately familiar with the dynamics of the telecommunications space is Dominique Dupuis-Latour, whose talents stretch from filing and prosecution to infringement and nullity proceedings and licensing mandates. Dual-qualified as a patent attorney and attorney at law, he leaves no stone unturned in French discovery proceedings. See p930 for firm profile
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CASALONGA Cousin & Associés De Gaulle Fleurance & Associés Dentons Duclos, Thorne, Mollet-Viéville & Associés Gowling WLG LAVOIX Reed Smith LLP Simmons & Simmons LLP
Bird & Bird LLP
Bird & Bird is a colossus of the global IP world and the Paris contingent is no exception, combining local knowledge with the vast resources of the firm’s sprawling network to superb effect. Its 19 IP practitioners regularly feature in some of the highestprofile patent suits in Europe: this year alone, they acted in an infringement dispute and conducted seizures on behalf of Edwards Lifesciences; defended
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France Broadcom in a complex multi-jurisdictional battle against an NPE; and hammered out a favourable result in a preliminary injunction matter on behalf of Amgen. Taking the lead on the latter, Yves Bizollon enjoys the respect of peers as “a smart and formidable opponent”; many headline-grabbing IP decisions in recent years bear his fingerprints. Leadership also comes from Anne-Charlotte Le Bihan, who has been handling the Edwards Lifesciences and Broadcom briefs; she brings a shrewd, commercially minded approach to the coordination of complex cross-border litigation and deal negotiation in the pharmaceutical, telecommunications and electronics sectors.
Cabinet Beau de Loménie
“Perhaps the foremost French firm that appears before the EPO”, according to competitors, prosecution shop Cabinet Beau de Loménie remains at the very top of its game. Four offices across France, complemented by additional bases in Germany and the United Kingdom, and close alliances with affiliated contacts across the continent ensure it can deliver a truly pan-continental service. Heading up the mechanics arm is Didier Intes, who devises prosecution strategies, supports litigation, drafts contracts and conducts patent portfolio due diligence with a hawkish eye. He has previous industry experience in the fluid mechanics field, which resonates with players in the area to this day. On the engineering side is Pierre Balesta, who holds a range of technical and legal qualifications and specialises in contentious matters and due diligence. Technical polymath Philippe Hubert heads up the chemistry, pharmacy, biology and new plant varieties group, and has provided futureproofed advice on patent strategy for almost 40 years; while on the electronics front, computer scientist François Delumeau speaks the language of inventors after a decade working on the development of onboard computing systems in telecommunications products.
CASALONGA
For a holistic, solutions-oriented service at every stage of the patent lifecycle, CASALONGA has it covered. Home to both patent attorneys and attorneys at law, the group provides commercially on-point advice that takes in the big picture from both a technical and legal standpoint – a formula that chimes with innovators of all stripes. Contentious firepower is supplied in abundance by Arnaud Casalonga, who has spent more than 25 years battling it out in crossborder patent disputes. While no industry is off limits, he has lately been carving a niche in the SPC space and maintains a thriving unfair competition practice
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Luminaries Thierry Mollet-Viéville Duclos, Thorne, Mollet-Viéville & Associés
to boot. Patent attorney Gérard Dossmann is also active on the contentious side, coordinating panEuropean litigation campaigns and advocating in EPO opposition proceedings. Chemistry, pharmaceuticals and biotechnology all fall within his wheelhouse. For meticulous, forward-focused prosecution, look no further than Francis Zapalowicz, an electronics specialist who previously helped to design automatic control systems for aircraft; today, he advises on sweeping patent filing programmes, appears in opposition and appeal proceedings, and dispenses infringement advice.
Cousin & Associés
“A high-quality firm with longstanding IP experience and a deep understanding of litigation”, Cousin & Associés remains a potent contentious force despite its founder’s departure in 2019, and has also been building up its advisory practice of late. Leading the line are the redoubtable Myriam Moatty, Jean-Martin Chevalier and Sandrine Bouvier-Ravon. Moatty has spent 30 years at the IP coalface and is currently a protagonist in several must-win pharmaceutical and chemical patent suits; Chevalier’s recent wins include the successful filing of a nullification action on behalf of cancer and immunology leader Celgene International; and Bouvier-Ravon is orchestrating an ongoing patent infringement dispute for coffee machine manufacturer Facotec which comes interwoven with trademark, unfair competition and parasitism threads. All three are enthusiastic contributors to the IP discussion, writing regularly for publications and journals, and speaking at national and international conferences.
De Gaulle Fleurance & Associés
“Well known and highly regarded”, De Gaulle Fleurance is “sharp, straight to the point and pleasant to work with. It excels at coordinating large teams in parallel litigations in different countries and its technical skills are outstanding. Its advice is comprehensive, reliable and accurate, which breeds confidence in clients”. At the vanguard is software expert Julien Horn, who “stands out for his patent litigation skills and strategic thinking; he always manages to reach a suitable solution”. On top of his contentious workload, he gets myriad IP- and ITrelated deals across the line with minimum hassle.
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France Litigation and transactions likewise fall within the bailiwick of Francine Le Péchon-Joubert, who is hailed as “reactive, proactive, creative and sympathetic”: “She has a thorough knowledge of French law and exceptional language skills, and offers an uncomplicated service which puts her head and shoulders above many of her peers.” Giving the group its name is Louis de Gaulle, another versatile practitioner who practises with agility across the contentious/non-contentious divide. A worthy adversary in court, he earns particularly warm acclaim for his strategic case management, with patrons praising his “responsiveness and commerciality”.
Dentons
As part of one of the largest law firms on the planet and one of the elite global IP players, Dentons’ Paris contingent has limitless horizons, and close collaboration with its counterparts worldwide is a hallmark of its service. To illustrate, recent representation of tissue manufacturer ICT saw the French practitioners team up with colleagues in Germany and Spain to sew up parallel litigations without a hitch. Running point on this matter was David Masson, who is “attentive and provides valuable and pragmatic advice” whatever the technology – although telecommunications is a forte. Isabelle Leroux, whose practice is similarly diverse, coordinates IP litigation across Europe and the Middle East with a deft touch; she recently represented the National Centre for Scientific Research in a sprawling preliminary injunction matter and in a coownership dispute.
Duclos, Thorne, Mollet-Viéville & Associés
“A high-quality firm” whose experts “have strong knowledge of IP matters and put a clear focus on client needs”, Duclos, Thorne, Mollet-Viéville & Associés has carved itself an enviable reputation over the last 50 years. Whether bringing the heat in litigation or providing cool-headed strategic advice, the group proves itself a vital ally to its loyal clientele time and time again. Name partner Thierry Mollet-Viéville is an elder statesman of the Paris IP scene who has seen and done it all since he began protecting intangible assets in 1968. Colleague Thomas Cuche shares Mollet-Viéville’s interest in the pharmaceutical sector and knows all the angles to play to arrive at win-win solutions in court and at the negotiating table.
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Individuals: prosecution Highly recommended Philippe Blot LAVOIX Recommended Stéphane Agasse Germain & Maureau Pierre Balesta Cabinet Beau de Loménie Laurent Barbe GEVERS Mark Bell Marks & Clerk Claire Bernstein GEVERS Eric Burbaud Plasseraud IP Thierry Caen Santarelli Olivier Dagès NONY
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Ghislain de Trémiolles Santarelli Nicolas Delorme Germain & Maureau François Delumeau Cabinet Beau de Loménie Anne Desaix Plasseraud IP Samuel Deschamps IPSide Sonia Dias GEVERS Bertrand Domenego LAVOIX
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France Gérard Dossmann CASALONGA Dominique Dupuis-Latour BARDEHLE PAGENBERG SAS SPE
Stéphanie Michiels LAVOIX
See p428
Gérard Myon LAVOIX
Aujain Eghbali Bandpay & Greuter
Cyra Nargolwalla Plasseraud IP
Frédérique Faivre Petit REGIMBEAU
François Pochart August Debouzy
Renaud Fulconis Bandpay & Greuter
Enrico Priori Marks & Clerk
Hervé Gicquiaux NONY
See p430
Nadine Rocaboy Plasseraud IP
Albert Hassine Plasseraud IP
Jean-Christophe Rolland GEVERS
Philippe Hubert Cabinet Beau de Loménie
Luc Santarelli Santarelli
Didier Intes Cabinet Beau de Loménie
Jérôme Sartorius NONY
Claude Jupin NONY
See p431
Thierry Lautier Reed Smith LLP Pascale Le Coupanec NONY
Ina Schreiber Plasseraud IP Hélène Stankoff Santarelli
See p432
François Tanty NONY
François Lepelletier-Beaufond Santarelli
Jean-Baptiste Thibaud abello IP
Emmanuelle Levy REGIMBEAU
Philippe Verriest Germain & Maureau
Bertrand Loisel Plasseraud IP
Francis Zapalowicz CASALONGA
Germain & Maureau
Venerable prosecution shop Germain & Maureau has been honing its craft for more than 170 years and today has some 30,000 patents, in fields from electronics to pharmaceuticals, under its stewardship. One of the top 10 French PCT filers, it also has a percipient take on portfolio management and defends patents to the hilt in opposition and
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appeal proceedings at a national and European level. Nicolas Delorme is an astute builder and manager of portfolios with an international perspective, having previously worked in London; while Stéphane Agasse brings invaluable in-house insight from a stint in the patent department of a major agrichemical company. Philippe Verriest also has in-house experience from his time at a software publishing company, which he
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France draws on judiciously in processing electronics, IT and AI patents. “Philippe quickly understands complex technological subjects, is open to working adaptively in the best interests of his clients and knows how to explain the framework of his profession simply in order to facilitate collaboration.”
GEVERS
Another storied outfit with roots dating back to the 19th century, GEVERS remains resolutely forwardlooking, as most recently reflected by its merger with ORES. From bases in Paris and industrial hub Toulouse, and a wider network of European offices and foreign alliances, it offers total prosecution support to legions of happy clients. “Thanks to the valuable advice provided by GEVERS & ORES, we have developed a successful IP strategy and our technological innovations are protected,” reports one. Sonia Dias and Laurent Barbe co-head the patent group. Dias’s wraparound prosecution practice is informed by her knowledge of agricultural sciences, inorganic chemistry and material science; while Barbe is a mechanics expert who has spent more than 15 years devising bespoke strategic solutions for corporations and SMEs. On the life sciences side, the firm is equipped with Claire Bernstein, who brings experience from her time working inhouse at a biotechnology start-up and for six years at L’Oreal, is an expert on SPCs, and is a skilled EPO advocate and conductor of patentability audits Another key name is Jean-Christophe Rolland, who invests considerable time and attention in forging close relationships with patrons as he crafts tailored, cost-effective patenting strategies, manages portfolios and assists with IPrelated agreements.
Gide Loyette Nouel
Gide Loyette Nouel is “among the best firms in Paris” for patent litigation: “All of the partners are impressive and are very focused and involved in their cases, offering innovative solutions and providing in-depth advice on both the technical and legal sides.” Handling both contentious and transactional issues with finesse, the full-service firm enjoys a place among the upper echelons of the market, thanks to the sterling efforts of its all-star team. Leading lights include Grégoire Triet and Raphaëlle Dequiré-Portier, both of whom have a rare facility for SPC-related disputes. Also on deck are life sciences sage Emmanuel Larere and the influential and internationally minded Arnaud Michel, who previously headed the firm’s Brussels office.
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Gowling WLG
Gowling WLG’s modest-but-mighty IP division is fast cementing its foothold in Paris, as evidenced by the flood of new mandates that have poured in over the last 12 months, in fields from animal health and biotechnology to consumer goods. Its practitioners boast an encyclopaedic understanding of French litigation procedure; while seamless support from London, Munich and further afield ensures it can make light work of even the most expansive litigation. Leading from the front is Céline Bey, whose assured performances both in court and at the negotiating table frequently move the needle for clients.
Hogan Lovells
The IP team at Hogan Lovells offers the best of both worlds: the bespoke, attentive service of a boutique, underpinned by the reach and efficiencies of a fullservice juggernaut. Structured by sector specialism, it has every industry on lock, although pharmaceuticals is a particular stronghold – in recent months it has been busy defending Eli Lilly against attacks from generics and representing Icos Corporation in crossborder infringement and validity litigation relating to its Cialis drug. Both matters were spearheaded by Stanislas Roux-Vaillard, who captains the Paris patent litigation and trade secrets group. He tailors his approach according to clients’ commercial needs, devising devastatingly effective multi-jurisdictional strategies and exploiting evidence-gathering tools such as saisie-contrefaçon to the fullest.
HOYNG ROKH MONEGIER
Thanks to a recent merger with Véron & Associés, the patent litigation offering at HOYNG ROKH MONEGIER is stronger than ever, with 22 dedicated practitioners – seven of whom are partners – duking it out in some of the highest-stakes battles on the European market. “The whole team is highly knowledgeable of French patent law and applies this knowledge effectively and creatively. Complex technical issues are no problem and the group is very persuasive in court hearings.” One recent highlight was its staunch defence of Lenovo against IP licensor IPComm, coordinated by Sabine Agé and Amandine Métier. SEP disputes in the electronics and communications field are the specialty of Agé, who “instils trust in clients by providing solid advice every time. She is a stellar patent litigator – perhaps the best in France”. Métier also relishes the cut and thrust of cross-border SEP and FRAND licensing disputes, as well as SPC-related actions in the pharmaceutical field. Another reliable ally to pharmaceutical companies is Benoît Strowel, a “daring and innovative litigator who often finds
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France Antoine Gautier-Sauvagnac FTPA Avocats
Individuals: transactions Emmanuel Baud Jones Day
Emmanuel Gougé Pinsent Masons
Mark Bell Marks & Clerk
Julien Horn De Gaulle Fleurance & Associés
Céline Bey Gowling WLG
Anne-Charlotte Le Bihan Bird & Bird LLP
Yves Bizollon Bird & Bird LLP
Bertrand Liard White & Case LLP
Louis de Gaulle De Gaulle Fleurance & Associés
David Masson Dentons
Grégoire Desrousseaux August Debouzy Dominique Dupuis-Latour BARDEHLE PAGENBERG SAS SPE
Arnaud Michel Gide Loyette Nouel See p428
Jean-Frédéric Gaultier TALIENS
completely new ways of handling traditional issues before the French courts”. He has a cosmopolitan outlook as a member of both the Paris and Brussels bars and a qualified solicitor in England and Wales. In addition to his life sciences work, he has recently been acting for materials technology company Umicore alongside fellow litigator Florence Jacquand. Jacquand has a broad compass, handling not only patent litigation, but also disputes in tangential areas such as unfair competition, trade secrets and employee invention law. Bridging the gap between the life sciences and mechanics sides is Caroline Levesque, who is as comfortable dealing with plant breeders rights issues as she is handling computer science cases, and is also a deft handler of customs measures both at home and abroad. The practice of name partner Denis Monégier du Sorbier is equally diverse; he draws on a wealth of procedural knowhow to carry the day in infringement, invalidity and preliminary injunction proceedings at both a national and pan-European scale. See p998 for firm profile
IPSide
The seasoned multi-disciplinary team at IPSide has the technical and legal chops to dispatch any patent issue going on both sides of the contentious/non-
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François Pochart August Debouzy Marianne Schaffner Reed Smith LLP
contentious divide. With a diverse client base ranging from dynamic start-ups to industry leaders from the United States and China, it stands out in particular for its shrewd evaluation of patent essentiality within the telecommunications and electronics fields. Its technically proficient practitioners – many of whom hold PhDs – also have an affinity for the intricacies of cutting-edge advancements such as 5G technology. One such professional is Samuel Deschamps – combining expertise in telecommunications, computer science and physics, he is a committed and meticulous advocate in administrative proceedings before the EPO.
Jones Day
Commercial outfit Jones Day enjoys elevated standing among its peers in the French IP community, who highlight its prowess in patent litigation and A-list client base. Almost telepathic communication between the members of its global IP team and with their colleagues in other departments translates into joined-up counsel which addresses all ancillary threads of a brief. The fulcrum of the practice is Thomas Bouvet, “a consummate professional in patent litigation with unmatched expertise in the area of plant patents”, who knows how to get favourable
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France outcomes both in court and in deal negotiations. Overseeing the IP team is Emmanuel Baud, another skilled drafter of IP and IT-related agreements who additionally litigates across the IP spectrum while also handling related issues in areas such as software, trade secrets and competition law.
LAVOIX
With boots on the ground in four countries across Europe, LAVOIX has all the resources needed to wrap up pan-continental patent issues swiftly and effectively. Traditionally a patent attorney firm, it has lately integrated a contingent of attorneys at law into its offering to provide a full-bore service that meets and exceeds all expectations of its discerning clientele. Engineers Gérard Myon and Bertrand Domenego are both intimately familiar with the inner workings of the EPO – Myon is a former patent examiner – and regularly appear in oral proceedings before its opposition and appeal boards. Myon also manages LAVOIX’s Lyon office, while Domenego helps to nurture the IP practitioners of tomorrow at the Centre for International Intellectual Property Studies (CEIPI). Stéphanie Michiels is likewise a regular at the EPO and has a glittering CV: she has technical acumen from her training as a chemical engineer, in-house experience from a previous role at a multinational pharmaceutical company, and qualifications as not only a French and European patent attorney, but also a UK chartered patent attorney. At the helm is CEO Philippe Blot, a favourite of major players in the telecommunications field. He was among the first European attorneys to be accredited as a patent attorney litigator and has changed the game in numerous infringement suits and seizure procedures.
Marks & Clerk
Based in Arcueil on the outskirts of Paris, Marks & Clerk’s French contingent began life as an independent firm founded by the former heads of a major electronics group. Their commercial nous is reflected in an approach which takes in all the finer details while never losing sight of the bigger picture. Co-managing the group is Enrico Priori, who holds a PhD in laser physics and trained in electronics and engineering both in France and in his native Italy. “Enrico works efficiently in any situation and has a straightforward style whereby he is able to streamline the work without compromising good results, which puts him among the best patent attorneys based in France.” Alongside him is UK-qualified patent attorney Mark Bell, who has done just about everything there is to do in his profession – as well as having worked in private practice in both London and Munich, he spent
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Individuals: litigation Sabine Agé HOYNG ROKH MONEGIER Laëtitia Bénard Allen & Overy LLP Yves Bizollon Bird & Bird LLP Thomas Bouvet Jones Day Grégoire Desrousseaux August Debouzy Anne-Charlotte Le Bihan Bird & Bird LLP Denis Monégier du Sorbier HOYNG ROKH MONEGIER François Pochart August Debouzy David Por Allen & Overy LLP Stanislas Roux-Vaillard Hogan Lovells Denis Schertenleib Schertenleib Avocats Grégoire Triet Gide Loyette Nouel
time in-house as a senior IP strategist at IBM. Recent work highlights include advising medical devices company Cardiawave on software licensing issues.
NONY
Founded in 1964 and now operating out of six offices throughout France, Nony & Partners provides robust support on everything from portfolio evaluation and filing to assistance with litigation. Meanwhile, a wide network of foreign associates ensures that the crown-jewel assets of its international client base enjoy watertight protection in all corners of the globe. “The group shows excellent understanding of the science at hand, provides efficient and precise advice to tight deadlines, and files applications that avoid
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France Michel Abello abello IP
Marianne Schaffner Reed Smith LLP
Céline Bey Gowling WLG
Benoît Strowel HOYNG ROKH MONEGIER
Sandrine Bouvier-Ravon Cousin & Associés
Cyrille Amar Amar Goussu Staub
Marina Cousté Simmons & Simmons LLP
Emmanuel Baud Jones Day
Thomas Cuche Duclos, Thorne, Mollet-Viéville & Associés
Philippe Blot LAVOIX
Pauline Debré Linklaters LLP
Arnaud Casalonga CASALONGA
Julien Fréneaux BARDEHLE PAGENBERG SAS SPE
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Jean-Martin Chevalier Cousin & Associés
Emmanuel Gougé Pinsent Masons
Emmanuel de Marcellus Cabinet de Marcellus & Disser
Julien Horn De Gaulle Fleurance & Associés
Raphaëlle Dequiré-Portier Gide Loyette Nouel
François Jonquères Simmons & Simmons LLP
Dominique Dupuis-Latour BARDEHLE PAGENBERG SAS SPE
David Masson Dentons
Jules Fabre Pinsent Masons
Catherine Mateu Armengaud Guerlain
Jean-Frédéric Gaultier TALIENS
Luc Santarelli Santarelli
Antoine Gautier-Sauvagnac FTPA Avocats
opposition or obstruction.” Overseeing this welloiled machine is mechanics and electronics expert François Tanty, who has spent more than 30 years prosecuting and defending patents for national and international players. He heads up the Paris office alongside managing partners Pascale Le Coupanec, Jérôme Sartorius and Claude Jupin. Chemistry head Le Coupanec has an insider’s perspective from stints at a range of French chemical and pharmaceutical companies; while mechanics and process engineering maven Sartotius is a valued adviser to innovators in the automotive, packaging and medical equipment fields. Jupin leads the biology group and previously worked in the patent departments at the Pasteur Insitute
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as well as for a leading French gene sequencing company. On the biotechnology side, Hervé Gicquiaux recently returned to the firm after five years in the IP department of a leading vaccine developer. In Grenoble, the main man is Olivier Dagès, a mechanics, electronics and computer science boffin who has been prosecuting patents and appearing in oppositions for over 25 years. See p1030 for firm profile
Pinsent Masons
“Pinsent Masons is competent, reactive and a pleasure to work with, providing intelligent, precise and indepth advice, and collaborating with the client to
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France Stéphane Guerlain Armengaud Guerlain Jean-François Guillot Amar Goussu Staub Florence Jacquand HOYNG ROKH MONEGIER Emmanuel Larere Gide Loyette Nouel Thierry Lautier Reed Smith LLP Francine Le Péchon-Joubert De Gaulle Fleurance & Associés Loïc Lemercier Dentons Isabelle Leroux Dentons Caroline Levesque HOYNG ROKH MONEGIER Amandine Métier HOYNG ROKH MONEGIER Myriam Moatty Cousin & Associés Stefan Naumann Hughes Hubbard & Reed LLP Dariusz Szleper SZLEPER | HENRY Avocats AARPI Frank Valentin DLA Piper
achieve the best results. Its attention to detail and client care are first class, and the whole team is quick to understand the technical details of a case.” With a network of offices across the globe, the group is ideally placed to coordinate cross-border battles and shapes its strategies through the judicious use of bespoke AI tools. The Paris contingent was recently boosted by the arrival of Jules Fabre, a former senior counsel in the IP and regulatory team at Teva Pharmaceuticals. He has extensive experience of cross-border SPC litigation and comes highly recommended by clients: “Committed,
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approachable and hands-on, Jules provides prompt and detailed instructions every step of the way. He is highly knowledgeable, has a great head for litigation strategy and brings creative ideas to the table. His deep understanding of French patent litigation puts the Paris team in a great position to represent pharmaceutical clients on both a domestic and European level.” It does so under the watchful eye of department head Emmanuel Gougé, who is qualified in England and Wales as well as France, and was recently appointed director of the university diploma on patent litigation at CEIPI.
Plasseraud IP
As the country’s largest patent prosecution shop, Plasseraud IP has myriad household names from the automotive, pharmaceutical, consumer goods and telecommunications industries on its roster. Continued ambitions of expansion were most recently realised through the acquisition of long-established French patent attorney outfit EGYP, and as such the group is now home to an impressive team of 117 multilingual professionals. For innovators in the life sciences, Nadine Rocaboy, Cyra Nargolwalla, and Ina Schreiber are the star attractions. Qualified both in Europe and in the United States, Rocaboy is “proactive and closely involved in all of her work, and communicates with fluidity and simplicity”. Captain of the life sciences group Nargolwalla likewise earns glowing reports: “Intelligent, knowledgeable and well organised, Cyra has proven herself to be a diligent and passionate advocate at the EPO. She is business minded and solutions oriented, and prepared for every eventuality.” The feedback on chemistry and life sciences group co-head Schreiber is similarly effusive: “With Ina involved, the task of obtaining European patent protection is always easier. She is proficient, knowledgeable and reliable, and always keeps on top of IP trends and case law, adjusting her advice accordingly.” Continuing to manage the EGYP side of the firm is the life sciences-focused Anne Desaix, who has “abundant expertise in the IP domain and a valuable and specific understanding of the challenges and complexities of the biotechnology field”. “She has a smart way of addressing questions and the ability to take patents to grant across a wide range of territories.” The mechanics and electronics group is co-headed by Bertrand Loisel and Eric Burbaud, both hailed as “among the best patent practitioners in their field”. PhD Loisel is an IT, computer science and electrical engineering wizard who previously worked as a researcher at the French Atomic Energy Commission; while Burbaud splits his time between Paris and Prague and recently shaped the patent strategy of
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France French unicorn and connected watch leader Withings. When software protection conundrums arise in fields ranging from telecommunications to bioinformatics, Albert Hassine is the one to call: “Albert explains European law in a nuanced manner, makes himself available quickly and proactively, and makes time for face-to-face discussions. His track record is excellent and he knows his clients’ businesses inside out.”
Reed Smith LLP
The formidable worldwide IP team at Reed Smith is neatly dovetailed within the firm’s wider commercial offering, providing 360-degree counsel in contentious and transactional scenarios that keeps clients’ commercial goals front and centre. The French contingent received a shot in the arm in 2019 with the arrival of department head Marianne Schaffner; in 2020, further firepower was added when dualqualified patent attorney and attorney at law Thierry Lautier made the move from August Debouzy. The “sharp, tenacious and talented” Schaffner is as confident directing SEP and FRAND disputes in the telecommunications field as she is assisting across the pharmaceutical product lifecycle; she “is particularly attentive to clients’ needs and is a pleasure to work with”. Lautier similarly switches effortlessly between multiple sectors and technologies; while cross-border patent litigation is his metier, he also adroitly handles prosecution briefs and is sought after for his trade secrets expertise.
REGIMBEAU
Showcasing “extensive knowledge of French and European patent procedure”, REGIMBEAU is a go-to for all manner of prosecution instructions in all key sectors. Its 50-strong team of patent attorneys – which includes a number of PhDs – is divided into a life sciences and chemistry arm and an IT and mechanical engineering arm to better meet the needs of its varied clientele. A commitment to strategic innovation is also a hallmark, as evidenced by its development of SIM’UP – an online scenario simulation tool which compares the post-grant costs of European patents. Managing partner Frédérique Faivre Petit previously served as head of European patent litigation at a major pharmaceutical group and leverages her fine-grained understanding of various European legal systems when advising on contentious matters and appearing in opposition and appeal proceedings. IAM Patent 1000 debutante Emmanuelle Levy marries insight on US patent law with technical expertise in chemistry – a blend that proves particularly appealing to cosmetics, food products and pharmaceuticals players.
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Santarelli
Rave reviews come thick and fast for eminent prosecution shop Santarelli: “As its services cover a large variety of technical areas, it is easy to find a suitable attorney who understands the case and its substantive points at a deep level. The practitioners are friendly and easy to communicate and cooperate with, and provide timely responses to tight deadlines.” Its seven partners receive fulsome support from a supremely capable administrative department; while dynamic online software gives clients round-theclock access to their patent portfolios. In the driving seat is telecommunications ace Luc Santarelli: “A reliable attorney who can always be relied upon when challenges arise, Luc offers outstanding advice at a reasonable cost. Diligent and responsive, he has rich experience not only in case handling, but also in industry, which makes him quickly understand key points and invent a clear strategy.” Heading up the life sciences division is pharmacy PhD Thierry Caen, who has made the field of SPCs his own. “Thierry is an excellent patent attorney with longstanding experience in the pharmaceutical space. He is very easy to work with, good at explaining complex topics and a highly appreciated partner in contentious matters. His knowledge of EPO practice is also appreciated.” Technical renaissance man François Lepelletier-Beaufond is well versed in disciplines including aeronautics, electronics, and optics; his former role as an energy management consultant within a government agency gives him a unique perspective in private practice. Making their debut in the IAM Patent 1000 this year are computer science PhD Ghislain de Trémiolles and trained engineer Hélène Stankoff; both tenaciously advance clients’ interests before the EPO and provide sage advice on portfolio management. See p1060 for firm profile
Simmons & Simmons LLP
Simmons & Simmons’ Paris patent group is a central cog in a slick international IP machine comprising some 90-plus lawyers stationed across Europe and Asia. Adept at resolving disputes of every flavour and getting IP-rich deals inked, the set is hailed as “trustworthy and committed to providing strategic legal advice in an accessible way”. It has lately represented Merck KGaA in a patent validity action relating to its Levothyrox drug; defended United Orthopedic Corporation in a patent infringement suit; and done battle for telecommunications monitor Sigos in a case before the Paris Court of Appeal. The first name on the team sheet is the “highly committed, responsive and flexible” Marina Cousté; the litigator
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France provides “best-in-class support at every level” in complex IP disputes and is also a seasoned mediator and arbitrator. Another worthy advocate, François Jonquères draws on the technical insight gained from a PhD in pharmacy to devise clever tactics in cross-border disputes and advise on licensing and transactional matters.
TALIENS
Negotiating, drafting and closing deals is all in a day’s work for transactional powerhouse Taliens; the firm also turns up the dial in patent litigation and provides astute counsel on pan-European patent enforcement programmes. Close collaboration between its Paris and Munich bases ensure optimal outcomes on cross-border mandates, whatever the subject matter. Co-founder Jean-Frédéric Gaultier is fluent in technologies in sectors as diverse as telecommunications, pharmaceuticals, medical devices and mechanics; the accomplished litigator also handles unfair competition and media disputes with a deft touch.
Other recommended experts
Based at Cabinet de Marcellus & Disser, the eponymous Emmanuel de Marcellus frequently makes the difference in must-win IP disputes and leaves no stone unturned when conducting patent portfolio audits within the context of corporate collaborations, especially in the biotechnology and pharmaceutical fields. He has a valuable international perspective, having previously spent time at Linklaters in the United Kingdom. Polished litigator Pauline Debré heads Linklaters’ patent group in Paris and is a favourite of pharmaceuticals and telecommunications heavyweights: she recently represented Intel Corporation in an SEP and FRANDrelated infringement spat with Intellectual Ventures
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and Orange. At FTPA Avocats, Antoine GautierSauvagnac adroitly coordinates multi-jurisdictional infringement campaigns and is a trusted guide to companies from the United States and the United Kingdom; his diverse practice also encompasses all manner of business law issues in the media and retail sectors. Newly appointed to lead the French IP group at Dentons, Loïc Lemercier has already hit the ground running on behalf of some major pharmaceutical players; he focuses on litigation and transactions, with niche know-how in areas such as SPCs and trade secrets. Bertrand Liard carries out complex cross-border mandates for a long sector-diverse list of household name clients, and combines his IP work with a rich data privacy practice. He is Paris IP head at White & Case. Dual qualified in both France and California, the cosmopolitan Stefan Naumann matches patent litigation work with a thriving media practice; he can be found at Hughes, Hubbard & Reed. Denis Schertenleib of the eponymous Schertenleib Avocats holds impeccable credentials, as a solicitor of England and Wales and a molecular biology PhD: “Denis is innovative, creative, pragmatic and commercially focused, with the ability to break down complex arguments and communicate them effectively in court. He has a strategic mindset and quickly grasps the technical details of a case as well as the underpinning legal complexities.” Consummate litigator Dariusz Szleper has been racking up the wins in IP disputes for over 35 years, and since 2013 has run his practice out of his own firm, Szleper Henry Avocats. Patents, trademarks, designs and unfair competition all fall within his remit; he is also noted for his facility for temporary injunction proceedings. Newly based at DLA Piper, Frank Valentin litigates across the IP spectrum and has won many fans for his robust representation of IT and life sciences players.
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Dagès, Olivier Managing Partner – NONY olivier.dages@nony.fr | www.nony.fr
Olivier Dagès joined NONY in 2012, became a partner in 2012 and has been a member of the firm’s executive committee since 2017. With more than 25 years of experience, Mr Dagès has wide expertise in patent prosecution, litigation and opposition matters. He gained significant experience as in-house counsel at Saint Gobain and the PSA Group. Mr Dagès’s practice focuses on patents in the fields of mechanics, physics, electronics, computer science, optics and telecoms. Specifically, he has acquired in-depth knowledge in the fields of energy (batteries, biomass, hydrogen, nuclear, exchangers, thermal solar), automotive (engines, gearboxes, interiors), interconnect products, medical devices, NEMS and MEMS systems, nanoparticles, semiconductors, the high and medium voltage production and distribution, and 4G and 5G. Mr Dagès’s expertise extends to contracts, litigation and opposition, IP due diligence and consulting. In particular, he is in charge of sensitive freedom-to-operate opinions and of negotiating IP contracts for start-ups and small to medium-sized entities. He is a member of the International Association for the Protection of Intellectual Property and the Licensing Executives Society International. He regularly gives lectures on topics related to industrial property and run training courses, notably in several engineering schools (Grenoble Institute of Technology, Grenoble Alps University, Ecole Centrale Lyon, INSA Lyon).
NONY 7 Avenue Félix Viallet Grenoble 38000 France T +33 4 76 26 76 05 F +33 1 43 12 84 70 See firm profile p936 Professional associations • AIPPI • epi • LES Sample client list • Commissariat à l’Energie Atomique et aux Energies Alternatives • Electroducer • Institut Mines-Télécom • Radiall
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Dupuis-Latour, Dominique Partner – BARDEHLE PAGENBERG SAS SPE dupuis@bardehle.fr | www.bardehle.com
Dominique Dupuis-Latour’s main practice area is IP law, including patent prosecution, IP rights enforcement, licensing, patent portfolio audits, patent infringement and nullity proceedings before the courts and opposition and appeal proceedings before the EPO and the French Patent Office. Mr Dupuis-Latour’s technical fields of expertise include telecoms, wireless appliances, software, medical devices and health products, as well as automotive, aerospace and weapons technology. As a dual-qualified French attorney at law and patent attorney, Mr Dupuis-Latour also has extensive experience in specific French proceedings, particularly in French discovery proceedings. He frequently cooperates with attorneys abroad and coordinates complex parallel litigation proceedings in various European countries. Mr Dupuis-Latour regularly publishes articles for various engineering journals.
BARDEHLE PAGENBERG SAS SPE SO Square Opéra 5 rue Boudreau Paris 75009 France T +33 1 53 05 15 00 F +33 1 53 05 15 05 See firm profile p930
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Fréneaux, Julien Partner – BARDEHLE PAGENBERG SAS SPE freneaux@bardehle.fr | www.bardehle.com
Julien Fréneaux represents clients before the French courts in all IP matters, including patents, trademarks, designs, copyright and unfair competition. His practice focuses on patent infringement and validity litigation, including appeal proceedings before the French courts competent to hear IP matters. Mr Fréneaux frequently handles cases that involve coordinating with teams of lawyers from other jurisdictions, as well as parallel litigation proceedings in different countries under a complex international litigation framework. He has handled many multinational patent conflicts concerning technologies such as medical devices and sports equipment, as well as technologies in the field of mechanical engineering. He also handles a number of fashion design infringement cases. Mr Fréneaux also deals with licensing matters, technology transfer agreements and IP-related contracts. He has led and supervised teams of auditors conducting IP due diligence during large M&A transactions. Mr Fréneaux graduated from the Centre for International Intellectual Property Studies at the University of Strasbourg with a professional degree in patent law. He also has a postgraduate degree in IP law from the University of Paris. He was admitted to the Paris Bar as a specialist in intellectual property and is a member of several IP professional associations, including the International Association for the Protection of Intellectual Property, the Licensing Executives Society and the European Patent Lawyers Association. He is also the co-author of the French chapter of Interpretation of patents in Europe: applications of Article 69 EPC.
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BARDEHLE PAGENBERG SAS SPE SO Square Opéra 5 rue Boudreau Paris 75009 France T +33 1 53 05 15 00 F +33 1 53 05 15 05 See firm profile p930
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Gicquiaux, Hervé Partner – NONY hgicquiaux@nony.fr | www.nony.fr
French and European patent attorney Hervé Gicquiaux is a partner at NONY based in Lyon. He started his career as an in-house patent counsel in a biotech company before joining NONY in 2004. There, he managed a diversified portfolio of clients, from startups to large entities, in various technical fields in biotechnology and pharmaceuticals. In 2014 he moved to the IP department of Sanofi Pasteur and in 2017 became the head of its French vaccine patent department before returning to private practice at NONY in 2019. Mr Gicquiaux represents a vast array of clients, from multinationals to universities and innovative biotech companies. He has developed his IP practice in the complex and highly competitive fields of cellular and molecular biology, vaccines, biotechnology and pharmaceutical chemistry. Mr Gicquiaux’s in-house experience gives him an invaluable commercial perspective from which he delivers clear and concise advice to his clients. He assists his clients with every aspect of patents acquisition and defence, with a focus on prosecution, client counselling, and patent portfolio growth and utilisation. Mr Gicquiaux is a member of GRAPI (the Rhône-Alpes Regional Group of the International Association for the Protection of Intellectual Property), the Licensing Executives Society, as well as the CNCPI and epi (the French and European associations for patent attorneys). In 2015 he completed the diploma in patent litigation in Europe from the Centre for International Intellectual Property Studies in Strasbourg. He holds a PharmD and a PhD in cell and molecular pharmacology.
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NONY 57 bd Marius Vivier Merle Lyon 69003 France T +33 1 43 12 84 60 F +33 1 43 12 84 70 See firm profile p1030 Professional associations • epi • GRAPI • LES Sample client list • Inserm Transfert • Mars Inc • Sanofi/Sanofi Pasteur • Teoxane
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Jupin, Claude Managing Partner – NONY cjupin@nony.fr | www.nony.fr
Claude Jupin joined NONY in March 2011 and became a partner in July 2012. He has been a member of the firm’s executive committee since 2017. He heads NONY’s biology department. Before joining NONY, and after being involved in the drafting of an EU directive and two EU regulations in the industrial property field, Mr Jupin worked as in-house patent counsel at the Paris Pasteur Institute, as well as for a leading biotechnology company in the field of gene sequencing and human genome cartography. Mr Jupin was also a partner for 13 years at one of the leading French IP firms. Clients benefit from Mr Jupin’s extensive experience, spanning over 30 years, in prosecution in many jurisdictions, including EPO opposition and appeal proceedings. Mr Jupin principally advises clients in the biotechnology and pharmacy sectors that are active in the fields of molecular and cellular biology, genetics, chemistry, biology and biochemistry. He brings together solid and coherent IP strategy in line with business objectives and demands, in order to assist clients in coordinating and managing the protection of intellectual property from R&D up to marketing. Mr Jupin is routinely involved in the preparation of validity and patentability opinions and analyses of patent portfolios and potential infringement in the context of financings or acquisitions. Mr Jupin is a member of the International Association for the Protection of Intellectual Property and president of the French group of the Union of European Practitioners in Intellectual Property. He also regularly gives lectures on topics related to industrial property and conducts training courses. Mr Jupin has a PhD in immunology.
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NONY 11 rue Saint Georges Paris 75009 France T +33 1 43 12 84 60 F +33 1 43 12 84 70 See firm profile p1030 Professional associations • AIPPI • CNCPI • UNION-IP Sample client list • Institut National de la Recherche Agronomique • Institut National de la Santé et de la Recherche Médicale • Mars • Sanofi
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Le Coupanec, Pascale Managing Partner – NONY plecoupanec@nony.fr | www.nony.fr
Pascale Le Coupanec joined NONY in April 2002, became a partner in 2005 and has been a member of the firm’s executive committee since 2015. Before joining NONY, Ms Le Coupanec worked as a patent engineer in the patent department of several major French chemical and pharmaceutical groups, and in two other major Parisian IP firms for eight years. In 2005 she obtained the European patent litigation diploma from the Centre for International Intellectual Property Studies (CEIPI). Ms Le Coupanec heads NONY’s chemistry department, with her practice focusing mainly on chemistry, material, pharmacy and cosmetics, as well as life sciences such as biochemistry and biotechnology. With 30 years’ experience, Ms Le Coupanec has wide expertise in patent prosecution, litigation and opposition matters, contracts and consulting. She advises a broad selection of national and international clients with all aspects of patent acquisition, enforcement and defence. She regularly represents her clients in oral proceedings before the EPO in opposition and appeal proceedings and routinely collaborates with attorneys at law on patent litigation matters for French or foreign clients. She also frequently lectures on topics related to industrial property and runs training prpgrammes. Ms Le Coupanec is a fully qualified French and European patent attorney and a CEIPI graduate in patent litigation in Europe. She holds a PhD in organic chemistry.
NONY 11 rue Saint Georges Paris 75009 France T +33 1 43 12 84 60 F +33 1 43 12 84 70 See firm profile p1030 Professional associations • AIPPI • APEB • epi Sample client list • Arkema • CEA • INSERM • Institut Curie • L’Oréal • Oberthur • Sanofi • Solvay • Teoxane • Total • Vinci
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Liard, Bertrand Partner – White & Case LLP bliard@whitecase.com | www.whitecase.com
Bertrand Liard heads White & Case’s IP and IP practice in Paris. His client list is extensive, varied and truly international, spanning sectors such as transportation, social media, luxury brands, pharmaceuticals, mining and industry. He also represents clients from the financial sector, including financial technology (fintech) companies. His corporate clients are often multinational and face complex crossborder concerns. Mr Liard applies his vast experience in supporting clients with issues relating to their intellectual property and information technology, as well as in the field of privacy and data protection, especially in litigation and international contexts. His work includes protection, use and development of IP rights, as well as enforcement actions against IP infringement and breach of piracy. He supports clients with both contentious and non-contentious matters. Mr Liard helps to unravel the complexities of doing business over the Internet, providing cutting-edge high-tech transaction and project advice. Moreover, with regulators increasingly inclined to clamp down on lapses in IT security and breaches of personal data and privacy protection laws, he delivers know-how and client comfort on data and tech matters and disputes. Mr Liard also advises clients on their complex contractual arrangements, including strategic innovation sourcing, outsourcing, alliances and partnerships. Mr Liard is a frequent speaker, author and commentator on privacy, technology and fintech issues. He has a detailed knowledge of the European Union’s General Data Protection Regulation (GDPR) and contributed to White & Case’s Handbook on that legislation. He also participated in the creation of a series of 10 workshops to present each step towards compliance to GDPR titled “GDPR countdown” and currently co-facilitate a series of monthly workshops called “Data & Tech Lab”. He was recently appointed member of the Strategic Orientation Committee of CashWay, a fintech company. He is also a board member of the Forum for Innovative Technology and Transformation (FITT France).
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White & Case LLP 19 Place Vendome Paris 75001 France T +33 1 55 04 15 15
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Sartorius, Jérôme Partner – NONY jsartorius@nony.fr | www.nony.fr
Jérôme Sartorius joined NONY in 2006 and became a partner and member of the firm’s executive committee in 2010. He has over 20 years of IP experience, as well as significant industry experience partly gained at a major chemical company in Germany, in software specification, as a quality manager and business manager. Mr Sartorius specialises in information engineering – in particular, image processing, artificial intelligence (AI), mechanics and materials – focusing on the fields of medicine, ceramics, automotive, security and micromechanics. Mr Sartorius is a registered European and French patent attorney. He is one of only four experts in France accredited before the Court of Appeal of Paris; he is also an accredited expert before the Administrative Courts of Appeals of Paris and Versailles, as well as a mediator in IP disputes for WIPO. He is also frequently engaged as a private expert in litigations. Mr Sartorius has extensive experience in prosecution, litigation, opposition and due diligence. He has written articles on expertise in intellectual property and the protection of trade secrets. He was a member of the jury for the French patent attorney examination and has taught intellectual property at various French universities and engineering schools. Mr Sartorius studied engineering in France, computer science and AI in England and numerical modelling in Spain and in Belgium. He also holds a court expert diploma and a business management diploma.
NONY 11 rue Saint Georges Paris 75009 France T +33 1 43 12 84 60 F +33 1 43 12 84 70 See firm profile p1030 Professional associations • APEB • CIECAP • CECAAPV Sample client list • CEAEA • Dental Monitoring • Laboratoires Innothera • Saint-Gobain
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Tanty, François General Managing Partner – NONY ftanty@nony.fr | www.nony.fr
François Tanty started his career at the patent department of the French Defence Ministry. He then worked in a large IP firm for a few years before joining NONY in 1995. He became a member of the executive team in 2000 and has been general managing partner since 2015. With more than 30 years of professional experience in the field of intellectual property, Mr Tanty offers wide expertise in patent drafting and prosecution, as well in patent litigation and opposition matters. He advises a broad selection of domestic and international clients. He has written more than 1,500 patents and successfully defended most of those that were challenged in court or before the Appeal Board of the European Patent Office. Mr Tanty specialises in mechanics (packaging, cosmetic applicators, medical devices, specialty papers industry, machining, robotics, security documents, civil engineering), physics (optics, nuclear industry, sensors, lasers) and electronics (sensors, artificial intelligence, encoding, inverters, drivers, electrical motors) and supervises activities of associates of the firm in these areas, as well as activities of the legal team. He routinely collaborates with attorneys at law on patent litigation matters. He is a lecturer at the Panthéon Assas Law University, with a focus on US patent law.
NONY 11 rue Saint Georges Paris 75009 France T +33 1 43 12 84 60 F +33 1 43 12 84 70 See firm profile p1030 Professional associations • ACPI • APEB • Centrale SupElec Sample client list • Institut Mines Telecom • L’Oréal • Moteurs Leroy Somer • Oberthur Fiduciaire • Vinci
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Germany
In November 2020 the Bundestag reconfirmed Germany’s involvement in the Unified Patent Court (UPC) through an overwhelming vote in favour, marking 2022 as a possible target date for the establishment of the new court; however, details remain sparse and its future is still unclear. In the meantime, most practitioners remain optimistic about Germany’s continued status as a patent litigation hub – although the market is split on whether Brexit’s long-term effects (and in turn, the effects of the United Kingdom’s exclusion from the UPC) will give a boost to the European IP scene or render the continent weaker as a whole. SEP and FRAND issues continue to dominate the courts: the seminal dispute between Nokia, Daimler and a range of intervenors on both the automotive and telecommunications sides is still attracting headlines; while the Federal Court of Justice’s ruling in Sisvel v Haier points to a positive future for SEP owners. Meanwhile, the patent office has been typically busy despite having pivoted to a virtual model; and the volume of patents filed in Germany by both domestic and international players confirms that, whatever the global challenges, innovation in the country is not slowing down.
Allen & Overy LLP
Allen & Overy’s German IP group is a vital part of its indomitable European offering. Despite its relative youth, the tightly knit team – based in Munich and Dusseldorf – has already earned a glowing reputation for its poised performances in high-profile disputes at the cutting edge of patent law and practice, including those interwoven with SEP and FRAND or SPC and second medical use threads. Its clientele features industry giants from both life sciences and high technology: as an example, the firm is acting for Samsung Electronics – including in a set of preliminary injunction proceedings – under the watchful eye of Jan Ebersohl. He litigates across the technical spectrum, but is especially well known in the car connectivity and Internet of Things fields, and also takes charge of the firm’s global automotive sector group. With a wealth of unfair competition knowhow, he has a percipient take on issues that straddle patent and antitrust law. Heading the German life sciences group is 30-year veteran Joachim Feldges, who has lately been advising Bayer on the German components of two cross-border litigations in relation to veterinary products. He coordinates international patent strategies for pharmaceutical, biotechnology and medical devices players, and is also a qualified arbitrator and mediator. Completing the line-up is all-rounder Jens Matthes, whose remit covers the full range of IP rights, as well as unfair competition and employee invention law, and whose contentious caseload is complemented by a steady contract negotiation and corporate transactions practice. “Jens is a very dedicated adviser and one of the very best German commercial IP lawyers. He displays a profound understanding of business requirements and his proposals are always very helpful.” “He assists with some of the most critical projects through his tremendous expertise, smart contract interpretation
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skills and a highly efficient negotiation style that never is intimidating, but always leads to great solutions.”
ARNOLD RUESS Rechtsanwälte Partnerschaft mbB
Competitors single out Arnold Ruess as one of the premier IP boutiques on the German stage. Many landmark cases bear its fingerprints: recent examples include representation in a cross-border infringement suit for Sanofi; a ground-breaking FRAND action for Sisvel – one of the first cases of its kind since the landmark Huawei/ZTE judgment was handed down; and a boundary-crossing connected cars dispute for Nokia, which involved the first instance of an anti-antisuit injunction in Germany. Leading on the latter two precedent-setting matters is Cordula Schumacher, a “top-rate litigator” whose advice is “clear, pragmatic and realistic”: “She never promises anything that cannot be delivered, but goes above and beyond to get the best possible outcome for her clients. She also understands the client’s commercial goals and adjusts her approach based on feedback.” Spearheading the Sanofi campaign and giving the firm its name is “IP litigation star” Bernhard Arnold: “He is a great counsel to have on your side and manages an efficient team. He is not afraid to come up with creative solutions and is internationally well connected.” A third gladiator in the mix is Arno Riße, whose metier is high-technology litigation; he recently defended US software and hardware player Adtran against a patent infringement claim. “Arno is one of the most outstanding attorneys in his field,” reports one source. “He knows all the tricks of the trade of modern patent litigation. There is hardly a notable patent matter in the German courts which does not name Arnold Ruess on one side of the docket sheet, and most often Arno is one of the attorneys in the trenches.” See p926 for firm profile
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Germany Firms: infringement
BOEHMERT & BOEHMERT
BARDEHLE PAGENBERG Partnerschaft mbB Partnerschaft mbB See p930
Clifford Chance
Bird & Bird LLP Hogan Lovells HOYNG ROKH MONEGIER
See p998
Quinn Emanuel Urquhart & Sullivan LLP rospatt osten pross
See p1054
Allen & Overy LLP ARNOLD RUESS Rechtsanwälte Partnerschaft mbB
DLA Piper EIP
See p978
Eisenführ Speiser
See p980
Gleiss Lutz Hengeler Mueller Heuking Kühn Lüer Wojtek HOFFMANN EITLE
See p926
Freshfields Bruckhaus Deringer LLP Grünecker Patent Attorneys and Attorneys-at-Law
Jones Day KLAKA Rechtsanwälte
See p988
Klinkert Rechtsanwälte PartGmbB Linklaters LLP
Kather Augenstein Rechtsanwälte PartGmbB
See p1010
Mayer Brown
Krieger Mes & Graf v der Groeben
See p1014
McDermott Will & Emery
Meissner Bolte
Osborne Clarke
Preu Bohlig & Partner
Pinsent Masons
Taylor Wessing
Simmons & Simmons LLP
Wildanger Kehrwald Graf von Schwerin & Partner mbB
See p1092
Baker McKenzie
Baker McKenzie
The German contingent of global juggernaut Baker McKenzie is modest but mighty. Its patent litigation group was put firmly on the map in 2013 when dualqualified attorney at law and patent attorney Jochen Herr came on board; since then, he has done a superb job in building out the practice, which is now engaged on a wide range of both infringement and validity disputes. Key clients include fintech leader Giescke & Devrient, which it recently represented in a high-profile patent infringement spat against the US government; and Real-D, whose 3D cinema
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See p934
See p1036
TALIENS Vossius & Partner Patentanwälte Rechtsanwälte mbB
See p1084
technology it has defended in a patent infringement suit and in parallel opposition proceedings. Herr has a technical background in mechanical and process engineering, and an affinity for issues at the intersection of patent and antitrust law. Anchoring the non-contentious side is Constanze Ulmer-Eilfort, who was previously managing partner across both the German and Austrian offices. She has a flair for the fine print of collaboration, licensing and R&D agreements, especially within the life sciences.
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Germany BARDEHLE PAGENBERG Partnerschaft mbB
Bardehle Pagenberg set the precedent for the hybrid model in Germany, having played host to both patent attorneys and attorneys at law since as early as the 1980s, and it continues to enjoy first-mover advantage today: “Bardehle Pagenberg is one of the top patent litigation firms in Europe. Its lawyers are extremely knowledgeable and capable, and their grasp of both the legal and technical issues is extraordinary. The good business sense they bring to the table is invaluable; their communications are consistently timely; and they are open to discussing new ideas and impress with their strategic thinking.” On the prosecution side, Joachim Mader is the resident mechanical engineering and automotive maven. He is a worthy advocate in oppositions; regularly collaborates with attorneys at law to resolve infringement and nullity proceedings; and manages hefty portfolios – such as that of global auto parts company Aptiv – with a deft touch. For electronics, the names to note are Tobias Kaufmann and Johannes Lang. A stint in-house at a leading electronics company means that Kaufmann speaks the language of innovators such as Samsung Electronics and Qualcomm, which he recently represented in EPO opposition proceedings. Co-managing partner Lang is a prolific filer across the electronics, IT and telecommunications fields whose recent credits include representing adidas and Apple at the EPO. Assisting him on the former mandate was Christian Haupt; whereas his partner on the latter was Christof Karl. Haupt is highly sought after for his infringement and validity opinions – in particular, in the mechanical engineering, computer-implemented inventions and electronics spaces. Telecommunications expert Karl – who has also been representing Japan Tobacco and Nintendo in administrative proceedings – is truly multi-talented: dual qualified as a patent attorney and attorney at law, he is also licensed to practise law in both Germany and New York and speaks four languages fluently. Similarly dual-qualified is comanaging partner Johannes Heselberger, who has recently gone out to bat for Amgen in a high-profile cross-border patent battle alongside colleague Tilman Müller-Stoy. Heselberger brings keen technical insight gained through his academic training as a physicist to his diverse patent litigation practice; while MüllerStoy’s broad wheelhouse encompasses everything from cross-border patent disputes to patent-related antitrust law and the creation and enforcement of licensing programmes – especially where SEPs and FRAND issues are concerned. Working across the hightechnology, automotive and pharmaceutical sectors
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is elder statesman Peter Chrocziel, who excels in cross-border proceedings and provides unparalleled guidance on US matters, thanks to his qualification to practise in New York. He juggles his contentious work with a thriving IP transactional practice and is currently putting his entire skillset to good use in counselling semiconductor solutions company SK Hynix through a cross-border infringement dispute, while also advising it on related licensing and antitrust concerns. Equally capable in cross-border contexts is Alexander Haertel, who recently made the switch from Kather Augenstein and has an enviable track record in high-profile litigation across all key European venues. Finally, firm namesake Jochen Pagenberg is an illustrious figure who has litigated in the electronics, telecommunications and automotive fields for more than three decades and is an adroit coordinator of multi-disciplinary international teams. See p930 for firm profile
Bird & Bird LLP
As a central cog in the firm’s global IP machine, Bird & Bird’s German practice provides an A-to-Z patent service – from EPO oppositions and Patent Cooperation Treaty filings to representation in patent infringement proceedings – to the likes of Edwards Lifesciences, Sandoz, Nokia and healthcare company B Braun Melsungen. Acting for Edwards Lifesciences are Anna Wolters-Höhne and Boris Kreye, who relish the cut and thrust of cross-border litigation. The pharma-focused Wolters-Höhne has appeared in numerous headline-grabbing preliminary injunction proceedings; while Kreye’s broad practice sees him involved in everything from pharmaceutical battles to SEP and FRAND disputes. Colleague Felix Rödiger has also featured in a number of FRAND firsts in Germany and is a smooth broker of litigation, arbitration and licensing agreements across Europe and the United States. Acting for Sandoz, as well as for Broadcom in a series of infringement, opposition and nullity proceedings, is Oliver Jan Jüngst, a “clear and concise communicator” with “a pragmatic approach to litigation”: “He is clearly well respected by judges and opposing counsel, and is an impressive advocate.” Nokia turns to German department head and international IP co-head Christian Harmsen, whose “valuable, business-minded advice” leads to “insightful strategic decision making”; while B Braun Melsungen has both Matthias Meyer and Daniela Kinkeldey on its side. Equally at home at the deal table as in the courtroom, Meyer also serves as head of the China desk in Germany; while Kinkeldey draws on a doctorate in chemistry in her pharmaceutical disputes work. Meanwhile, patent attorneys Felix
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Germany Firms: prosecution and nullity Highly recommended
KUHNEN & WACKER Intellectual Property Law Firm
See p1016
Maikowski & Ninnemann
See p1020
See p1022
BOEHMERT & BOEHMERT
See p934
COHAUSZ & FLORACK
See p954
Maiwald Patentanwalts- und Rechtsanwalts-GmbH
df-mp
See p970
Meissner Bolte
Grünecker Patent Attorneys and Attorneys-at-Law
See p988
HOFFMANN EITLE KÖNIG . SZYNKA . TILMANN . VON RENESSE Patentanwälte . Partnerschaft mbB Vossius & Partner Patentanwälte Rechtsanwälte mbB
See p1084
Recommended
Michalski Hüttermann Patent Attorneys Patentanwälte Isenbruck Bösl Hörschler PartG mbB Prüfer & Partner mbB
See p1050
Samson & Partner Patentanwälte mbB
See p1056
Schaumburg und Partner Patentanwalte mbB Ter Meer Steinmeister & Partner
BARDEHLE PAGENBERG Partnerschaft mbB
See p930
Uexküll & Stolberg
Braun-Dullaeus Pannen Emmerling
See p942
Wallinger Ricker Schlotter Tostmann, Patentund Rechtsanwälte Partnerschaft mbB S ee p1086
Dompatent von Kreisler Selting Werner DREISS Patentanwälte PartG mbB
See p974
Eisenführ Speiser
See p980
Hannke Bittner & Partner karo IP Patentanwälte Kahlhöfer Rößler Kreuels PartG mbB
See p1008
Landry and Michael Alt are on hand for prosecution briefs. PhD physicist Landry is a telecommunications and IT specialist who has lately carried out EPO filings and oppositions for the likes of Garmin and Airbus. The contentious experience of PhD biochemist Alt stretches to acting in nullity proceedings in court and consulting on cross-border infringement actions; he also recently appeared in cancer therapy-related opposition proceedings on behalf of Zentiva.
BOEHMERT & BOEHMERT
“One of the best-established and most prominent IP outfits in Germany”, according to competitors, BOEHMERT & BOEHMERT is home to some 70
www.IAM-media.com
See p1074
Weickmann & Weickmann PartmbB
See p1088
Wuesthoff & Wuesthoff Zacco
See p1098
Zimmermann & Partner Patentanwälte mbB
See p1102
dedicated professionals – including both patent attorneys and attorneys at law – who can meet and exceed every patent need of its discerning clientele. Key patrons on the prosecution side include blockchain innovator Black Gold Coin, biotechnology company Gennova Biopharmaceuticals and research institution King Faisal Specialist Hospital & Research Centre. Assisting Black Gold Coin is physicist and portfolio manager Dennis Kretschmann, whose glittering academic career saw him study in Germany, the United States, the United Kingdom and Italy. The latter two clients are safe under the wing of PhD biochemist Markus Engelhard, a farsighted strategist and EPO advocate who comes highly recommended by the market. Their fellow patent attorneys are
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Germany physicists Heinz Goddar and Christian Appelt. Elder statesman and IP strategist Goddar shares his wisdom by teaching patent and licensing law at the University of Bremen and the Munich Intellectual Property Law Centre; while Appelt has a contentious focus, regularly acting in opposition and nullity proceedings and supporting on infringement suits. He is a trusted adviser to Chinese, US and especially Japanese clients, having spent time in the IP department of Sony Corporation in Tokyo, as well as in private practice in Osaka. Attorneys at law Michael Rüberg and Carl-Richard Haarmann have it all covered on the contentious front. Rüberg is a law PhD whose recent credits include an ongoing set of disputes on behalf of Aeritas relating to mobile boarding and location-based services within the aviation industry; while Haarmann is a savvy portfolio manager who also appears in infringement battles for the likes of JVC. See p934 for firm profile
Braun-Dullaeus Pannen Emmerling
Commercially focused boutique Braun-Dullaeus Pannen Emmerling arrives in the IAM Patent 1000 this year on a wave of client commendations: “Its advice is clear, well thought out and applicable across multiple jurisdictions; and the team is detail oriented, sensible and shows great judgement.” With legal and technical expertise in abundance, it has made annulment actions something of a specialty: it is currently involved in 5% of all such pending proceedings in Germany. In the spotlight is physicist Friedrich Emmerling, who has been appearing in oppositions and drafting applications for Huawei, while also representing adidas at the EPO. “Friedrich’s attention to detail is immaculate and he recalls all of the issues straight away, so you can discuss any point with him instantly. He is one of the best German patent attorneys out there and has a good feel for what will work before the courts.” Fellow namesake and physicist Karl-Ulrich Braun-Dullaeus is “an impressive analyst” with “broad knowledge of SEP procedure” and the ability to handle a challenging number of cases in parallel. See p942 for firm profile
Clifford Chance
The small but perfectly formed German IP group at Clifford Chance draws judiciously on the wider firm’s sweeping global network and complete command of law to hammer out the rights results on consequential cross-border mandates. Patent infringement, nullity and unfair competition proceedings; IP-rich M&A deals – it has seen and done it all for its loyal following of pharmaceutical, high-technology
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and telecommunications multinationals and dynamic domestic concerns. “Efficient cooperation, responsiveness and time and cost-effective recommendations” are hallmarks of its service. Running the show is Claudia Milbradt, who leads both the German IP group and the German tech group. Having dispensed globally minded IP advice across the contentious/non-contentious divide for more than two decades, she has developed “an increasingly respected patent litigation practice”, according to peers.
COHAUSZ & FLORACK
With both patent attorneys and attorneys at law on deck, and a total headcount of 22 partners, COHAUSZ & FLORACK stands as one of Germany’s elite patent firms. “I have never encountered a smarter, more effective, more versatile, more cost-efficient group of lawyers,” marvels one client. “They are sensitive to every issue and thoughtful in addressing them, and maintain the highest ethical standards. Their evaluation of patents holds up without failure; and they are great in enforcement actions as well.” It is currently assisting leading European paint and varnish manufacturer Brillux with a sprawling set of EPO oppositions – a matter orchestrated by chemist Arwed Burrichter. A PhD earned in California and a stint in the IP litigation group of a New York law firm have given him keen insight into US patent procedure. Gottfried Schüll, Philipe Walter and Christoph Walke have electronics on lock. Communications and video compression technology ace Schüll “created the gold standard for patent pool licensing” and has acted in upwards of 750 contentious patent matters. Electrical engineer Walter has won many fans among Germany’s Mittelstand for his canny portfolio development and regularly plays a role in battles between smartphone companies, settop-box manufacturers and automotive suppliers. Walke has lately been assisting Sharp Corporation in infringement proceedings at the Mannheim and Munich Regional Courts, and receives rave reviews: “Christophe is clearly in Germany’s top patent attorney league. He makes life as easy as possible for in-house teams, with his clear strategic recommendations and well-prepared drafts. His technical expertise is outstanding and he puts himself into the shoes of clients in order to understand their business needs.” Mechanical engineering and mining technology are fortes for Andreas Thielmann, who has spent almost 30 years in the game and holds a post as an honorary judge in the Senate for Patent Attorney Matters at the Federal Court of Justice in Karlsruhe. See p958 for firm profile
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Germany df-mp
df-mp enjoys a stellar reputation as a prosecution shop par excellence, with special proficiency in life sciences and electrical and mechanical technology. “A relationship with df-mp is built on mutual trust and respect, high professional standards and ethical conduct,” reports one client. “They listen actively; bring curiosity, entrepreneurship and creativity to the table; and always communicate clearly and concisely.” Teva recently engaged the firm on SPCrelated nullity proceedings; while Biogen has enlisted it for a set of EPO oppositions. Acting on the former brief is biotechnologist and firm co-founder Ulrich Dörries, whose varied diet includes drafting and prosecution, EPO advocacy and SPC advice. Fellow co-founder Sandra Pohlman is looking after Biogen; she heads up the biotechnology and pharmaceutical group, has a flourishing DNA and CRISPR practice, and is qualified to act before the USPTO. Also active on the life sciences side is chemistry head Elisabeth Greiner, a “proactive and strategic thinker” and “a diligent and pleasant person to work with”. For electronics and mechanics, dial up physicists Dominik Ho and David Molnia, who recently acted for Unwired Planet in a series of infringement and nullity actions as part of its seminal dispute with Huawei, LG, Samsung, HTC and Google. Ho is a dual-qualified patent attorney and attorney at law who lately represented Sonos in a spat with Google over smart speakers; while firm cofounder Molnia is a qualified US patent agent whose other recent highlights include acting for Nokia in an infringement battle against Daimler. See p970 for firm profile
DLA Piper
Growth is the central narrative at DLA Piper, which has picked up a slew of new instructions over the last 12 months, including infringement proceedings on behalf of Dell, Microsoft and HP. Audio electronics company Harman is another pioneering client which the firm is representing in a series of suits, including its intervention in the ground-breaking Broadcom v BMW case. Leading on this is practice head Markus Gampp, who “provides consistent, creative and effective counsel”: “He is proactive in considering upcoming issues and is very knowledgeable on the substantive legal issues, while also considering the business realities.” Life sciences don Philipp Cepl has been busy advising medical devices leader Medtronic on patent enforcement and preliminary injunctions. “He is a standout patent litigator with immense procedural experience and sound judgement”; “His advice is practical and he never loses sight of clients’ economic interests and goals.”
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Firms: transactions Highly recommended Allen & Overy LLP Hogan Lovells Recommended Baker McKenzie BARDEHLE PAGENBERG Partnerschaft mbB
See p930
BOEHMERT & BOEHMERT
See p934
Clifford Chance Freshfields Bruckhaus Deringer LLP Gleiss Lutz HOFFMANN EITLE HOYNG ROKH MONEGIER
See p998
Jones Day karo IP Patentanwälte Kahlhöfer Rößler Kreuels PartG mbB
See p1008
McDermott Will & Emery Meissner Bolte Osborne Clarke
See p1036
Preu Bohlig & Partner Taylor Wessing UNIT4 IP
See p1076
Dompatent von Kreisler Selting Werner
Arriving in the IAM Patent 1000 thanks to effusive peer feedback, this “reliable stalwart” provides a holistic offering to a legion of multinationals across the chemistry, biotechnology, electronics and telecommunications fields. It plays host to both patent attorneys and attorneys at law, filed more than 1,000 European patents in 2019, has around 320 EPO oppositions on its plate at present and regularly
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Germany Luminaries Thomas Bopp Gleiss Lutz Heinz J Goddar BOEHMERT & BOEHMERT Hermann Kahlhofer karo IP Patentanwälte Kahlhöfer Rößler Kreuels PartG mbB Peter Mes Krieger Mes & Graf v der Groeben
See p530
Michael Nieder KLAKA Rechtsanwälte Jochen Pagenberg BARDEHLE PAGENBERG Partnerschaft mbB Thomas W Reimann HOYNG ROKH MONEGIER Sabine Rojahn Taylor Wessing
features in must-win litigation. The twin pillars of its practice are Christoph Schreiber and Alexander von Kirschbaum, whose tenures with the firm are both approaching the 25-year mark. Chemistry PhD and seasoned portfolio manager Schreiber has the life sciences down cold; while mechanical engineer von Kirschbaum effortlessly gets to grips with the tech in fields as varied as medical technology and automotive.
DREISS Patentanwälte PartG mbB
Domestic SMEs and multinationals from the United States, Korea and China flock to the doors of patent attorney outfit DREISS for its precision prosecution. Through smart collaborations with other legal teams, it also tackles major disputes for the likes of illustrious Japanese innovator Pioneer and packaging leader Storopack. First among equals is process engineering ace David Sinz, who “shows high technical expertise, maintains a good overview of matters and provides fast support in litigation”. Alongside his portfolio management workload, he recently represented Philip Morris International in opposition proceedings alongside colleagues Thomas Knapp and Andreas Pfund. The former has valuable industry experience from his time as an aerospace
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engineer and a wide knowledge base encompassing everything from medical technology to machine tools; the latter is a semiconductor nanophysics PhD who is similarly fluent in myriad technical disciplines, having worked as a solid-state physics research associate in Switzerland. This broad technical acumen is shared by electrical engineer and Spanish speaker Michael Krohnert, who is steadily growing his AI practice. See p974 for firm profile
EIP
While perhaps best known for its hybrid practice in the United Kingdom, EIP’s German IP litigation squad is a formidable force. This year it has continued to act for Conversant – both on the German component of its sprawling pan-European litigation against Huawei, ZTE and LG, and in a brace of hotly contested connected cars disputes with Daimler and Tesla. Avago has also engaged it in litigation against Daimler; while Broadcom has sought it out for outof-court portfolio analysis and infringement advice. Providing input on all of these briefs is Florian Schmidt-Bogatzky, an “extremely creative and hardworking attorney who can quickly master new technologies”. Leading on the Conversant matter and heading up the Dusseldorf office, Christof Höhne litigates across the electronics, pharmaceuticals and mechanical engineering industry and regularly pairs up with patent attorneys to defend clients in EPO oppositions. See p978 for firm profile
Eisenführ Speiser
The patent attorneys and attorneys at law at Eisenführ Speiser draw on “in-depth knowledge of both technical and legal matters” to provide an inter-disciplinary, commercially focused service. One recent highlight was its representation of NPE Sisvel in patent infringement proceedings against Xiaomi – a high-profile matter to which attorneys at law Volkmar Henke and Tilman Müller and patent attorney Jochen Ehlers made vital contributions. “Amiable and well respected” among major communications players, Henke skilfully handles both infringement disputes and licensing mandates, with “a notably high success rate”. Müller’s remit encompasses patent infringement and nullity proceedings, SEP and antitrust-related issues, IP-related arbitrations and contract negotiation. Prosecution, litigation and transactions all fall within the purview of telecommunications and semiconductor expert Ehlers, who also comes equipped with FRAND and SEP know-how. Other esteemed patent attorneys on deck include
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Germany electrical and telecommunications engineer Klaus Göken – an IP strategist and litigation sage with rich industry experience from his previous career in the semiconductor field at Siemens and IBM; and life sciences whizz Manuel Söldenwagner, who recently represented fragrance and flavours company Symrise in a series of oppositions. “Manuel is efficient, organised and sensitive to client needs,” reports one happy patron of 10 years’ standing. “I have nothing but praise for his work, responsiveness and quality advice.” See p980 for firm profile
Freshfields Bruckhaus Deringer LLP
Competitors observe that Freshfields’ German patent group is “a collaborative and close-knit team which is involved in many of the biggest cases on the market, working day and night to reach winning solutions”. From five bases across the country – and with robust support from the firm’s global network – its practitioners coordinate multi-jurisdictional litigation and negotiate IP-rich transactions with finesse. Tenacious litigator Frank-Erich Hufnagel heads up the Dusseldorf office and has been with the firm for over two decades – his highlight reel includes acting for the likes of Ericsson and Lenovo in SEP disputes and advising Novartis on pharmaceutical and biologics patents. Fellow courtroom warrior Wolrad Prinz zu Waldeck und Pyrmont also has a diverse practice and often works at the intersection of patent and competition law. His linguistic capabilities in English, French and Russian make communication a breeze for international clients. Captaining the Hamburg IP practice is Jochen Dieselhorst, a transactional maven whose stomping grounds are the IT and life sciences sectors. Notable briefs include shepherding M&A deals over the line for the likes of Merck KgaA and Boehringer Ingelheim; and counselling BioNTech SE on covid-19 vaccine-related licensing and collaboration agreements with Pfizer.
Gleiss Lutz
Gleiss Lutz provides a reassuringly holistic patent offering: cross-border litigation, strategic advice and IP-related transactions and licensing are all dispatched with alacrity and poise. As one of Germany’s largest corporate law firms, it has an edge on multi-faceted mandates, making it a persuasive one-stop shop for its multinational clientele. Versatile litigator Matthias Sonntag acts in disputes across the industry spectrum, although telecommunications is a stronghold. He also assists on IP-related M&A projects, bringing international insight from time spent on secondment at an IP law firm in New York.
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He is joined on the disputes side by elder statesman Thomas Bopp, who has been with the firm for almost three decades and specialises in healthcare battles. Pure-play transactions lawyer Herwig Lux changes the game for life sciences and automotive titans through the licensing agreements and M&A deals he gets inked for them.
Grünecker Patent Attorneys and Attorneys-at-Law
Hybrid firm Grünecker “continues to dominate” in prosecution, while steadily growing its reputation in the contentious space through its involvement in a range of automotive and electronics disputes. “It shows sound judgement and a deep understanding of the technology, and delivers exceptional results while billing very efficiently,” report clients; while competitors attest that it is “very professional, rigorous and well prepared, and has great experience in oral proceedings at the EPO”. Its SEP know-how is another USP; as is its sensitivity to the specific needs of companies from the United States and China. The group’s electronics and software experts – who act for the likes of Microsoft and Samsung – include patent attorneys Anton Pfau, Moritz Höffe, Reinhard Knauer, Thomas Eickelkamp and Peter Miltényi. The “efficient and capable” Pfau has impeccable academic credentials: he holds a doctorate in physics and studied semiconductor technology at the University of Berkeley, California. Höffe is fluent in disciplines ranging from physics and software to medical devices and mechanical engineering; oppositions and infringement and licensing opinions are his bread and butter. Computer scientist Knauer devises futureproofed IP strategies for some of the world’s leading high-technology companies; electrical engineer Eickelkamp has an intuitive grasp of the essence of inventions in spaces as diverse as nanotechnology and renewable energy; and physicist Miltényi has a unique perspective as a dual-qualified German patent attorney and Spanish patent agent. For life sciences instructions, look no further than microbiology PhD Heike Vogelsang-Wenke, a trusted ally of major biotechnology and pharmaceutical companies for the last 25 years. The litigation division is jointly led by attorneys at law Ulrich Blumenröder and Bernd Allekotte, both of whom shine in the heat of cross-border litigation. Blumenröder is a law PhD and a UPC expertwho has spent almost 30 years at the patent coalface; and SEP and automotive sector specialist Allekotte has a flair for matters at the intersection of patent and antitrust law. See p988 for firm profile
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Germany Individuals: prosecution and nullity Highly recommended Gunnar Baumgärtel Maikowski & Ninnemann
See p475
Claus Thomas Becher HOFFMANN EITLE
Joel Nägerl Zimmermann & Partner Patentanwälte mbB
See p535
Leo Polz HOFFMANN EITLE David Sinz DREISS Patentanwälte PartG mbB
See p559
Christoph Walke COHAUSZ & FLORACK
See p575
H Ulrich Dörries df-mp
Philipe Walter COHAUSZ & FLORACK
See p577
Friedrich Emmerling Braun-Dullaeus Pannen Emmerling
Recommended
Arwed A Burrichter COHAUSZ & FLORACK
See p479
Jürgen Feldmeier Prüfer & Partner mbB
See p487
Markus Herzog Weickmann & Weickmann PartmbB
See p501
Johannes Heselberger BARDEHLE PAGENBERG Partnerschaft mbB
See p502
Gregor Sebastian König KÖNIG . SZYNKA . TILMANN . VON RENESSE Patentanwälte . Partnerschaft mbB David Molnia df-mp
Hannke Bittner & Partner
With offices in Regensburg, Koblenz, Trier and Kassel, IP boutique Hannke Bittner & Partners offers a cradle-to-grave patent service to a varied group of innovators, including the likes of Volkswagen. Its “trustworthy and efficient” practitioners “communicate well to ensure clients have all the information they need to make the best decisions”; “their patent applications are always well drafted and thorough”. Name partner Bernhard Bittner is a dual-qualified patent attorney and attorney at law and “a relentless fighter in opposition proceedings – he is always well prepared and presents convincing arguments”. He shares his physics specialism with patent attorney Melanie Pfeuffer, a prolific prosecutor and EPO representative who can instantly parse the complexities of everything
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Bernd Aechter Ter Meer Steinmeister & Partner Michael Alt Bird & Bird LLP Christian W Appelt BOEHMERT & BOEHMERT
See p471
Matthew Thomas Barton Forresters Thorsten Bausch HOFFMANN EITLE Michael Best Lederer & Keller
from computer-implemented inventions to automotive technologies.
Hengeler Mueller
Hengeler Mueller’s patent division delights and reassures with its “consistently high-quality work”, “proactive guidance” and total mastery of even the most challenging patent infringement suits. SEP issues and cutting-edge technologies are increasingly a focus: in the last year alone, it has intervened in Germany’s most hotly discussed dispute (Nokia v Daimler) on behalf of Renault; duked it out for France Brevets and IPCom in a set of infringement actions against Apple; and represented General Electric subsidiary Concept Laser in a series of 3D-printingrelated matters. Acting on all these cases is the “smart, practical and results-oriented” Wolfgang
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Germany Bernhard Bittner Hannke Bittner & Partner
See p476
Karl Ulrich Braun Dullaeus Braun-Dullaeus Pannen Emmerling
Dominique Gobert Zimmermann & Partner Patentanwälte mbB
See p489
Klaus G Göken Eisenführ Speiser
See p490
Dirk Bühler Maiwald Patentanwalts- und Rechtsanwalts-GmbH
See p478
Elisabeth Greiner df-mp
Jochen Ehlers Eisenführ Speiser
See p482
Felix Gross Maikowski & Ninnemann
Eva Ehlich Maiwald Patentanwalts- und Rechtsanwalts-GmbH
See p483
Thomas Eickelkamp Grünecker Patent Attorneys and Attorneys-at-Law
See p484
Ralf Emig Maikowski & Ninnemann
See p485
Markus Engelhard BOEHMERT & BOEHMERT
See p486
See p492
André Guder Uexküll & Stolberg Rainer Gunzelmann Wuesthoff & Wuesthoff Norbert Hansen Maiwald Patentanwalts- und Rechtsanwalts-GmbH
See p496
Robert Harrison SONNENBERG HARRISON
See p497
Stefan Feaux de Lacroix Patentanwälte Isenbruck Bösl Hörschler PartG mbB
Christian Haupt BARDEHLE PAGENBERG Partnerschaft mbB
See p498
Veit Peter Frank HOFFMANN EITLE
Bettina Hermann VO Patents & Trademarks
See p500
Morten Garberg HOFFMANN EITLE
Christian Heubeck Weickmann & Weickmann PartmbB
See p504
Kellenter. Whether in litigation or licensing scenarios, the patent infringement group head “quickly grasps the facts, asks intelligent questions and delivers solutions promptly. He puts himself in his clients’ shoes and sees their problems before they even see them themselves”.
Heuking Kühn Lüer Wojtek
The thriving patent litigation practice at full-service firm Heuking – which handles both infringement and nullity proceedings in all venues at home and in Europe – is bolstered by abundant ancillary knowhow in other relevant areas, such as trade secrets, antitrust and wider commercial law. Its international profile has recently expanded, with increasing numbers of instructions pouring in from across the continent and beyond to complement its domestic
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caseload. Clients which have lately benefited from its staunch representation include telecommunications company Swissphone, in infringement proceedings; French medical technology company ECHOSENS, in a dispute which has seen parallel proceedings take place in Austria and India; and Dutch lawn sport surfaces leader Sisgrass, in both infringement proceedings and parallel EPO oppositions. Running point on these is department head Anton Horn, who has a cosmopolitan outlook from a stint at a corporate law firm in Mexico City; life sciences and high technology are his happy hunting grounds. Alongside him on the latter two mandates is Sabine Dethof, an enforcement ace who knows both the medical devices and mechanical engineering fields like the back of her hand.
IAM Patent 1000
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Germany Dominik Ho df-mp
See p506
Moritz Höffe Grünecker Patent Attorneys and Attorneys-at-Law
See p507
Dorothea Hofer Prüfer & Partner mbB
See p508
Christian Hollatz Ter Meer Steinmeister & Partner Stefan Rolf Huebner SR Huebner
See p509
Aloys Hüttermann Michalski Hüttermann Patent Attorneys Olav Jaeger Zacco
See p510
Stephan Keck WITTEWELLER Robin Keulertz Olbricht Patentanwälte Daniela Kinkeldey Bird & Bird LLP Alexander Klicznik Hogan Lovells Peter Klusmann HOFFMANN EITLE Thomas Knapp DREISS Patentanwälte PartG mbB
See p520
Reinhard Knauer Grünecker Patent Attorneys and Attorneys-at-Law
See p521
Hans-Rainer Jaenichen Vossius & Partner Patentanwälte Rechtsanwälte mbB
Andreas Kramer Vossius & Partner Patentanwälte Rechtsanwälte mbB
Bernd Christian Janssen Uexküll & Stolberg
Justus Kreuels karo IP Patentanwälte Kahlhöfer Rößler Kreuels PartG mbB
Christof Karl BARDEHLE PAGENBERG Partnerschaft mbB Tobias Kaufmann BARDEHLE PAGENBERG Partnerschaft mbB
HOFFMANN EITLE
See p512
See p515
Established in 1892 and with more than 150 professionals on deck today, HOFFMANN EITLE stands as one of the continent’s largest, most storied IP firms. With offices in three German cities and additional outposts in the United Kingdom, the Netherlands, Italy and Spain, it is within easy reach of its international clients, which appreciate its holistic patent service and special expertise in EPO oppositions. “The team is meticulous, focuses on understanding clients’ needs and provides constructive suggestions in difficult situations. The attorneys are relaxed to work with and concentrate on the work product, and not on prestige.” For mechanical engineering issues, Claus Thomas Becher and Frank van Bouwelen are the first port
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IAM Patent 1000
See p518
Michael Krohnert DREISS Patentanwälte PartG mbB
See p523
Fritz Lahrtz Patentanwälte Isenbruck Bösl Hörschler PartG mbB Felix Landry Bird & Bird LLP
of call; while Veit Peter Frank has it all covered on the electrical engineering side. Becher recently put in the hours in EPO oppositions for Novo Nordisk in relation to its medical devices and for PopSockets in relation to its innovative mobile phone accessories. Dual qualified as a German and Dutch patent attorney, van Bouwelen is the architect of fruitful prosecution programmes across Europe, the United States and the Far East; while Frank is a tenacious EPO advocate with a focus on telecommunications. The sizeable life sciences team includes Joachim Renken, Morten Garberg, Joseph Taormino, Peter Klusmann, Thorsten Bausch, Leo Polz and Andreas Stefferl. Biotechnologist Renken
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Germany Jürgen Landskron Schaumburg und Partner Patentanwalte mbB Johannes Lang BARDEHLE PAGENBERG Partnerschaft mbB Andreas Ledl Maiwald Patentanwalts- und Rechtsanwalts-GmbH
See p525
See p526
Edgar Lins Gramm, Lins & Partner Wolfgang Lippich Samson & Partner Patentanwälte mbB Joachim Mader BARDEHLE PAGENBERG Partnerschaft mbB
Peter Miltényi Grünecker Patent Attorneys and Attorneys-at-Law
See p531
Heinz-Peter Muth Uexküll & Stolberg Jan Robert Naefe HGF Ltd Benedikt Neuburger Zimmermann & Partner Patentanwälte mbB
See p536
See p527
Stephanie Nottrott Patentanwälte Isenbruck Bösl Hörschler PartG mbB
See p528
Cornelia Oetke Wallinger Ricker Schlotter Tostmann, Patent- und Rechtsanwälte Partnerschaft mbB See p537
Stefan Manzer Ter Meer Steinmeister & Partner
Andreas Oser Prüfer & Partner mbB
See p539
Christiane Maxien Wallinger Ricker Schlotter Tostmann, Patent- und Rechtsanwälte Partnerschaft mbB See p529
Anton K Pfau Grünecker Patent Attorneys and Attorneys-at-Law
See p542
Jürgen Meier Vossius & Partner Patentanwälte Rechtsanwälte mbB
Melanie Pfeuffer Hannke Bittner & Partner
Tim Meyer-Dulheuer Meyer-Dulheuer MD Legal Patentanwälte PartG mbB Stefan Michalski Michalski Hüttermann Patent Attorneys
recently appeared in EPO oppositions on behalf of the University of Tokyo; while Garberg’s diverse pan-European chemistry practice is enhanced by his dual qualification as a British and German patent attorney and fluency in English and Danish. Microbiologist Taormino co-heads the biotechnology group and brings deep technical acumen gained through a PhD from the John Hopkins University in the United States. Chemistry group co-head Klusmann has an intuitive grasp of everything from pharmaceuticals to polymers; while fellow co-head Bausch is hailed as “a widely experienced technical expert and one of Germany’s go-to patent attorneys”. Biochemist and seasoned EPO representative Polz earns plaudits as a “trustworthy global adviser”.
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Andreas Pfund DREISS Patentanwälte PartG mbB
See p543
Michael Platzoeder Wallinger Ricker Schlotter Tostmann, Patent- und Rechtsanwälte Partnerschaft mbB See p544
Neurobiologist Stefferl is a valuable resource for start-ups, thanks to time spent nurturing earlystage biotechnology companies as an investment manager. The attorneys at law to note are Dirk Schuessler-Langeheine and Clemens Tobias Steins, each of whom beats a path through the European patent jungle for Japanese clients and regularly delivers advice in Japanese. SchuesslerLangheine puts in resonant performances in proceedings on home soil and coordinates them worldwide; while Steins concentrates on high-rolling IP transactions and licensing.
IAM Patent 1000
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Germany Sandra M Pohlman df-mp Carsten Prusko Zacco
Christian Schäflein Maiwald Patentanwalts- und Rechtsanwalts-GmbH See p545
Guido Quiram Michalski Hüttermann Patent Attorneys Joachim Renken HOFFMANN EITLE Mathias Ricker Wallinger Ricker Schlotter Tostmann, Patent- und Rechtsanwälte Partnerschaft mbB See p549 Jörg Riemann Ter Meer Steinmeister & Partner Matthias Rößler karo IP Patentanwälte Kahlhöfer Rößler Kreuels PartG mbB Carla Roth KÖNIG . SZYNKA . TILMANN . VON RENESSE Patentanwälte . Partnerschaft mbB
See p552
Elard Schenck zu Schweinsberg Vossius & Partner Patentanwälte Rechtsanwälte mbB Christian Schmidt Manitz, Finsterwald & Partner Josef Schmidt Vossius & Partner Patentanwälte Rechtsanwälte mbB Christoph Schreiber Dompatent von Kreisler Selting Werner Christoph Schröder Maikowski & Ninnemann
See p556
Gernot H Schroer Meissner Bolte Gottfried Schüll COHAUSZ & FLORACK
See p557
Rainer Röthinger Wuesthoff & Wuesthoff
Dirk Schulz Michalski Hüttermann Patent Attorneys
Kay Rupprecht Meissner Bolte
Manuel Söldenwagner Eisenführ Speiser
Hogan Lovells
Hogan Lovells’ German patent group ranks firmly among Europe’s crème de la crème, as reflected in the glowing client feedback it attracts: “They fully grasp new ideas and have great attention to detail. The lawyers are technically sharp and highly skilled, and their arguments persuasive and clear.” Must-win multi-jurisdictional litigation is a forte: as an example, Stephan Neuhaus and Andreas von Falck are currently fighting the corner of F Hoffmann-La Roche in cross-border patent infringement and revocation proceedings. Both have an affinity for pharmaceutical disputes, but are also known for their involvement in telecommunications and high-technology battles respectively. Von Falck’s other recent credits include a semiconductor-related dispute on behalf of Ford alongside colleague Steffen Steininger, who has litigated upwards of 250 cases throughout his career; he is “careful to present a full and accurate picture of every case and always listens to the needs
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IAM Patent 1000
See p560
of clients”. He recently collaborated with Martin Fähndrich in a series of proceedings for Koch Group subsidiary Molex; with dual academic qualifications in engineering and law, Fähndrich makes light work of technically dense cases and is singled out by the competition as a standout practitioner. Miriam Gundt is likewise acclaimed by clients as “friendly, legally astute, technically adept and one of Germany’s top IP litigators”; she has a wide remit, but focuses on pharmaceutical – and especially SPC-related – disputes. Clemens Plassmann showcases similar dexterity in his practice: his recent credits range from acting for healthcare company Medinol in a major nullity action to representing HTC in both a FRAND-related dispute and a patent validity suit. Alongside him on the latter mandate is Henrik Lehment, an authority in the telecommunications, consumer electronics and automotive fields who is “experienced, hardworking, responsive and skilled at developing winning strategies”. Also handling
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Germany Fred Sonnenberg SONNENBERG HARRISON
See p561
Tobias KW Stammberger Samson & Partner Patentanwälte mbB
See p562
Andreas Stefferl HOFFMANN EITLE Andreas Tanner Maikowski & Ninnemann
See p569
Alexander von Kirschbaum Dompatent von Kreisler Selting Werner Albrecht von Menges Uexküll & Stolberg
See p564
Joseph P Taormino HOFFMANN EITLE Andreas Thielmann COHAUSZ & FLORACK
Heike Vogelsang-Wenke Grünecker Patent Attorneys and Attorneys-at-Law
See p565
Dorothea von Renesse KÖNIG . SZYNKA . TILMANN . VON RENESSE Patentanwälte . Partnerschaft mbB Friedrich R von Samson-Himmelstjerna Samson & Partner Patentanwälte mbB See p572
Bernhard Thum Wuesthoff & Wuesthoff
Derk Vos Maiwald Patentanwaltsund Rechtsanwalts-GmbH
Max Wilhelm Tilmann KÖNIG . SZYNKA . TILMANN . VON RENESSE Patentanwälte . Partnerschaft mbB
Joachim Wachenfeld Vossius & Partner Patentanwälte Rechtsanwälte mbB
Holger Tostmann Wallinger Ricker Schlotter Tostmann, Patent- und Rechtsanwälte Partnerschaft mbB See p567
James Ward Haseltine Lake Kempner LLP
Ole Trinks Meissner Bolte Frank van Bouwelen HOFFMANN EITLE Rainer Viktor Vossius & Partner Patentanwälte Rechtsanwälte mbB telecommunications cases – including those with FRAND components – as well as automotive and life sciences disputes is the “client-oriented and reliable” Benjamin Schröer: “His deep knowledge of SEPs, patent litigation and patent licensing enables him to give high-quality, up-to-date advice in ever-changing areas of law.” Dual qualified as a European patent attorney and attorney at law, fellow all-rounder Alexander Klicznik knows all the right moves both in court litigation and in EPO opposition proceedings. For licensing and technology transfer issues, meanwhile, no IP-related agreement or transaction is beyond the capabilities of Hamburg managing partner Christian Stoll.
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See p574
Dorothée Weber-Bruls Jones Day Wolfgang Weiß Weickmann & Weickmann PartmbB
See p580
Hendrik Wichmann Wuesthoff & Wuesthoff Markus Zoller HGF Ltd
HOYNG ROKH MONEGIER
As the largest IP litigation boutique in mainland Europe – and one of the most successful outfits of its kind anywhere in the world – HOYNG ROKH MONEGIER has won the loyalty of a slew of household names in the life sciences and high-technology sectors. Clients and competition agree that it sits at the apex of the German patent litigation scene. “The team is responsive, does not over-engineer cases and streamlines litigation efforts. The range of scientific expertise on show is unique.” Leading the charge is Martin Köhler, who has spent more than 20 years defending the interests of his sector-diverse
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Germany clientele to the hilt in court; he is responsible for the firm’s ongoing representation of Samsung in both infringement and nullity proceedings. Teaming up with him on this are Tobias Hahn and Mirko Weinert. Hahn’s fine-grained understanding of FRAND and unfair competition law proves invaluable for numerous telecommunications, high-technology and automotive companies; while Weinert is called on by the likes of Huawei and Gilead for his “excellent knowledge of European patent law, technology and the German legal system”. Leading on matters for Huawei, Tobias Hessel is intimately familiar with US patent law and “provides clear guidance, is willing to take educated risks and puts the interests of clients first, second and third”. The Gilead mandate was run by Christine Kanz, an adroit coordinator of cross-border pharmaceutical and biotechnology disputes across Europe and beyond. For telecommunications battles, FRAND and SEP expert Kay Kasper is “one of the best to turn to”: he recently represented Telekom Deutschland in a set of sprawling infringement proceedings, with support from a group of hotshot attorneys at law including Stefan Richter and Klaus Haft. Richter also focuses on telecommunications and earns praise for his “solid and well-tested litigation style”. Qualified physicist Haft has been busy advising Airbus on patent protection and enforcement, and representing Intel in globe-spanning litigation proceedings: “He is intimately familiar with worldwide legal systems and commands the attention and respect of judges. He is an excellent strategist, is very personable and can quickly grasp the technology.” Two luminaries who continue to guide the firm and devise astute global litigation strategies are Christian Osterrieth and Thomas Reimann. The former has been litigating for 35 years and knows French patent procedure inside out; while the latter is an eminent figure of almost 50 years’ standing who manages global disputes with a sure touch, while also taking part in German and EPO opposition and nullity proceedings. See p998 for firm profile
Jones Day
US player Jones Day has its flag firmly planted in the German market and provides the full spectrum of patent services to a high standard, although competitors highlight the litigation group as deserving of special mention this year. Its bench of redoubtable practitioners reflects this versatility: crack litigator Christian Paul draws on academic qualifications in chemistry to advance sophisticated arguments in complex life sciences disputes; while Dorothée Weber-Bruls holds things down on the prosecution side and heads up the firm’s physics patent team
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Europe-wide. IP-related transactions are the metier of fellow physicist Gerd Jaekel, who also plays a strong hand in contentious issues and dispense shrewd strategic advice.
karo IP Patentanwälte Kahlhöfer Rößler Kreuels PartG mbB
When clients enlist karo IP Patentanwälte Kahlhöfer Rößler Kreuels PartG mbB, they gain access to a deep well of scientific and legal acumen, first-class strategic counsel and a fine-spun web of industry contacts across Europe, the United States, China and Japan. Automotive and telecommunications companies are especially well served by the team, which is distinguished by its “proactive, creative and serviceminded attitude”, its “circumferential knowledge of European patent law”, and its “short response times and high-quality work”. Matthias Rößler and Justus Kreuels have been filing prolifically on behalf of Volkswagen. Rößler manages large patent portfolios with finesse; his “strong technical know-how and ability to see the world through the eyes of his clients” translate into “clear and practical advice”. “Unafraid to dive into the detail”, fellow co-founder and mechanical engineer Kreuels conducts “unprecedented levels of research” to produce “reassuringly precise applications”. The practice is guided by august figure Hermann Kahlhofer, a physicist, patent attorney and qualified patent assessor who continues to advise on portfolio management across Europe, the United States and Asia. See p1008 for firm profile
Kather Augenstein Rechtsanwälte PartGmbB
Despite being founded just five years ago, German boutique Kather Augenstein has already developed a potent offering which rivals that of its international competitors and is attracting some of the highestprofile contentious instructions on the market. The 12-strong team delivers “precise, creative and prompt work of the highest quality” to industry icons such as Volkswagen, BASF, B Braun, Ericsson and HTC. Giving the group its name are Peter Kather and Christof Augenstein. Kather has spent more than three decades deftly coordinating sector-diverse cross-border disputes and has almost unparalleled procedural knowledge as a result. Augenstein “anticipates opponents’ moves – and even the judges’ thinking and decision making – effectively communicates technical arguments to the court, dismantles the opponent’s arguments and argues his client’s case brilliantly, and with the necessary vigour”. Co-founder and managing partner Miriam Kiefer has
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Germany Matthias F Meyer Bird & Bird LLP
Individuals: transactions Christian W Appelt BOEHMERT & BOEHMERT
See p471
Peter Chrocziel BARDEHLE PAGENBERG Partnerschaft mbB
See p480
Claudia Milbradt Clifford Chance Tilman Müller Eisenführ Speiser
See p532
Christoph De Coster Taylor Wessing
Ralph Nack Noerr LLP
Jochen Dieselhorst Freshfields Bruckhaus Deringer LLP
Elisabeth Opie Office of Elisabeth Opie
See p538
Joachim Feldges Allen & Overy LLP
Christian Osterrieth HOYNG ROKH MONEGIER
See p540
Arno Grohmann UNIT4 IP
See p491
Thomas Pattloch Taylor Wessing
Jochen Herr Baker McKenzie
Tim Reinhard Osborne Clarke
See p547
Henrik Holzapfel McDermott Will & Emery
Oliver Scherenberg SCHERENBERG LEGAL & LICENSING
See p553
Frank-Erich Hufnagel Freshfields Bruckhaus Deringer LLP
Andrea Schmoll Osborne Clarke
See p555
Gerd Jaekel Jones Day
Michael Schneider Pinsent Masons
Kay N Kasper HOYNG ROKH MONEGIER
See p513
Dennis Kretschmann BOEHMERT & BOEHMERT Herwig Lux Gleiss Lutz Jens Matthes Allen & Overy LLP
appeared in more than 100 patent suits and comes recommended for her “legal and strategic acumen, her pleasant demeanour and her availability”. Christopher Weber is another consummate litigator and SEP maven who “is well organised, and reliable, facilitates productive collaboration and works tirelessly for his clients”. Debuting in the IAM Patent 1000 this year due to stellar market feedback, Sören
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Marco Stief Maiwald Patentanwalts- und Rechtsanwalts-GmbH
See p563
Clemens Tobias Steins HOFFMANN EITLE Constanze Ulmer-Eilfort Baker McKenzie Ina Vom Feld Herbert Smith Freehills LLP Andreas von Falck Hogan Lovells Tobias Wuttke Meissner Bolte
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Germany Dahm recently spent time on secondment at a leading UK IP litigation boutique and thus has “an excellent grasp of the particularities of both English and German patent law”. See p1010 for firm profile
KLAKA Rechtsanwälte
“A solid patent firm with a longstanding reputation”, KLAKA thrives on the rough-and-tumble of crucial contentious briefs – including not only infringement battles, but also nullity, opposition and cancellation proceedings. Its multi-talented professionals have the electronics, telecommunications, life sciences and mechanics sectors on lock and are committed to finding workable solutions no matter how challenging the matter. Dusseldorf office head Olaf Giebe has spent more than three decades racking up the wins in complex patent disputes of every flavour; while law PhD Constantin Kurtz acts across the IP spectrum, but focuses his patent practice on SEP-related telecommunications suits. Also with a law doctorate is Stefan Eck, whose contentious nous is complemented by a facility for licensing arrangements and employee invention issues. The venerable Michael Nieder founded the firm seven years after his admission to the bar in 1972; not only intellectual property, but also unfair competition, food and drug law fall within his wheelhouse.
Klinkert Rechtsanwälte PartGmbB
Longstanding client relationships, a collaborative working style and impeccable work product characterise the service at boutique Klinkert. “Its lawyers have sharp strategic thinking and excellent language skills – and they are all fun to work with.” The trio of litigators at the heart of the operation are Friedrich Klinkert, Philipp Ess and Nora Keßler, who recently joined forces to represent Japanese light-emitting diode (LED) technology leader Nichia Corp in a series of battles against HTC over patent infringement and licensing issues. Namesake and master strategist Klinkert keeps pace with the latest advancements in patent law worldwide and draws on this knowledge in coordinating multi-jurisdictional litigation; while trade secrets expert Ess performs with brio both in the courtroom and at the deal table. The pair are “dedicated, commercially minded, pragmatic professionals who do outstanding work”. Fluent Italian speaker Keßler, meanwhile, is “a reliable partner who spontaneously comes up with constructive suggestions in novel scenarios. “Her expertise in the pharmaceutical sector has been crucial to overcoming deadlock situations, and her advice is tailored, practical and incisive.”
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KÖNIG . SZYNKA . TILMANN . VON RENESSE Patentanwälte . Partnerschaft mbB
This flourishing prosecution shop has made the pharmaceutical sector its own: Abbvie, Eli Lilly and Bayer are just a handful of the industry heavyweights it has lately represented before the EPO Opposition Division and Boards of Appeal; and it has also carved a niche in the area of cutting-edge antibody patents. Firm namesakes Gregor Sebastian König, Max Wilhelm Tilmann, and Dorothea von Renesse enjoy elevated standing on the market. König marries “substantial legal knowledge” with “both a technical and strategic mind”; while “meticulous” engineer Tilmann has valuable industry insight from his time working in the wind turbine department of a large British electrical group and in a German chemical group. Meanwhile, microbiologist and SPC sage von Renesse earns respect from competitors as “a formidable opponent in oppositions”. Fellow microbiologist and IAM Patent 1000 debutant Carla Roth hails from a genetics and biochemistry research background; she is “deeply engaged in the science and extremely responsive”.
Krieger Mes & Graf v der Groeben
Almost 100 years after its establishment in 1929, Krieger Mes & Graf v der Groeben remains a “leading patent litigation firm that deserves to be ranked highly”. Contentious might, strategic portfolio advice, productive contract negotiation and accurate IP rights evaluation are all available in spades. In the spotlight is “standout litigator” Axel Verhauwen, a trusted adviser to electronics multinationals – especially regarding SEPs – whose packed global contact book facilitates seamless coordination of cross-border disputes. Other stars on the team sheet include Jens Michael Künzel, Jochen Bühling and Peter Mes. Künzel combines deep patent know-how with a keen appreciation of competition law; Bühling splits his time pursuing clients’ interests both in and out of court and in licensing negotiations; while firm cofounder Mes has penned many seminal works during his 40-year career, including a renowned commentary on the Patent and Utility Model Act. See p1014 for firm profile
KUHNEN & WACKER Intellectual Property Law Firm Founded more than four decades ago, KUHNEN & WACKER offers a bespoke prosecution service – encompassing portfolio management, freedomto-operate analyses and due diligence work – to a diverse clientele of start-ups, SMEs and automotive
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Germany Individuals: infringement Joachim Feldges Allen & Overy LLP Marcus Grosch Quinn Emanuel Urquhart & Sullivan LLP Klaus Haft HOYNG ROKH MONEGIER Christian Harmsen Bird & Bird LLP
Thomas Musmann rospatt osten pross
See p534
Cordula Schumacher ARNOLD RUESS Rechtsanwälte Partnerschaft mbB
See p558
Henrik Timmann rospatt osten pross
See p566
Axel Verhauwen Krieger Mes & Graf v der Groeben
See p568
Andreas von Falck Hogan Lovells
Frank-Erich Hufnagel Freshfields Bruckhaus Deringer LLP
Max von Rospatt rospatt osten pross
See p571
See p511
Wolf Graf von Schwerin Wildanger Kehrwald Graf von Schwerin & Partner mbB
See p573
Peter Kather Kather Augenstein Rechtsanwälte PartGmbB
See p514
Peter-Michael Weisse Wildanger Kehrwald Graf von Schwerin & Partner mbB
See p581
Wolfgang Kellenter Hengeler Mueller
See p517
Anna Wolters-Höhne Bird & Bird LLP
See p533
Bernd Allekotte Grünecker Patent Attorneys and Attorneys-at-Law
See p470
Bernhard Arnold ARNOLD RUESS Rechtsanwälte Partnerschaft mbB
See p472
Oliver Jan Jüngst Bird & Bird LLP Christine Kanz HOYNG ROKH MONEGIER
Tilman Müller-Stoy BARDEHLE PAGENBERG Partnerschaft mbB
and electronics multinationals. Its 20-strong cadre of patent attorneys and attorneys at law is backed up by a crack squad of specialists and patent engineers, cutting-edge IT tools and an enviable international network of foreign associates. Senior partners Stephan Kopp and Rainer Kuhnen are both key names to note. See p1016 for firm profile
Linklaters LLP
Linklaters’ German contingent is a vital cog in its slick machine, which stands out for its “strong strategic advice, solid technical understanding and passionate approach”. Its practitioners work hand in glove with their counterparts in foreign offices – especially those in the United Kingdom, France and Belgium – to secure optimum results for clients. This frequently makes the difference in high-profile cross-border disputes, including battles for pharmaceutical originators and SEP and FRAND-related matters
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in the telecommunications space, with additional support often coming from the antitrust division. Highlights of its recent caseload include assisting GlaxoSmithKline in a pan-European enforcement action; spearheading a global enforcement campaign for Seoul Semiconductor; and representing Sanofi and Regeneron in cross-border patent infringement proceedings. All three matters were handled by Julia Schönbohm and Bolko Ehlgen. Schönbohm is also a US-qualified lawyer, whose “strategic acumen always leads her to a solution – she always provides sound and valuable input”. Admitted to practise in New York, Ehlgen has “a deep understanding of the technical side, especially for an attorney at law”. Working together with them for Seoul Semiconductor
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Germany Christof Augenstein Kather Augenstein Rechtsanwälte PartGmbB
See p473
Eva Geschke Wildanger Kehrwald Graf von Schwerin & Partner mbB
Jochen Bühling Krieger Mes & Graf v der Groeben
Olaf Giebe KLAKA Rechtsanwälte
Johannes W Bukow Quinn Emanuel Urquhart & Sullivan LLP
Miriam Gundt Hogan Lovells
Philipp Cepl DLA Piper
Hosea Haag AMPERSAND Rechtsanwaelte LLP
Peter Chrocziel BARDEHLE PAGENBERG Partnerschaft mbB
Andreas Haberl Preu Bohlig & Partner
See p480
Christoph De Coster Taylor Wessing
Jochen Herr Baker McKenzie
Christian Donle Preu Bohlig & Partner
Johannes Heselberger BARDEHLE PAGENBERG Partnerschaft mbB
Martin Fähndrich Hogan Lovells
Gisbert Hohagen Taylor Wessing
Jürgen Feldmeier Prüfer & Partner mbB
See p487
Markus Gampp DLA Piper
piece, and well versed in SEP and FRAND matters, is Atif Wolfgang Bhatti, who brings “unusually high technical expertise” to the mix: “He is a reliable and responsive lawyer who always incorporates the business context into his advice.”
Maikowski & Ninnemann
With four offices in Berlin, Munich, Leipzig and Frankfurt, well-specced prosecution outfit Maikowski & Ninnemann impresses for its “highly qualified attorneys, commercial focus, reliability and ability to facilitate productive working relationships”. It has lately been busy processing a significant volume of applications for LG Electronics and Google; and undertaking drafting and oppositions work on behalf of Fresenius, Rolls Royce, automotive manufacturer Joyson Safety Systems and Chinese robotics company Globe Tools. Meanwhile, on the contentious front, it has assisted Freshfields in defending Lenovo and Continental against Nokia and acting for Broadcom in a set of disputes against Nintendo; and teamed
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See p488
See p502
Henrik Holzapfel McDermott Will & Emery Anton Horn Heuking Kühn Lüer Wojtek
up with Hogan Lovells for Israeli high-technology company Solar Edge in nullity proceedings against Huawei. Playing a part in all these contentious matters are physics PhD Gunnar Baumgärtel and chemistry PhD Felix Gross; and Andreas Tanner, an electrical engineer with an insider’s perspective on the innovation process thanks to experience working in R&D at ABB Sécheron. Working alongside this trio to file Google’s patent applications are Christoph Schröder and Ralf Emig. Electrical engineer Schröder holds a PhD from the Georgia Institute of Technology and has spent time as a research scientist working on medical imaging systems; while mechanical engineer Emig’s fluency in English, Spanish and French makes for flawless communication. See p1020 for firm profile
Maiwald Patentanwalts- und Rechtsanwalts-GmbH
Maiwald is not only one of Germany’s leading patent prosecution outfits, but also one of its strongest
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Germany Kay N Kasper HOYNG ROKH MONEGIER
See p513
Ralph Nack Noerr LLP
See p516
Joel Nägerl Zimmermann & Partner Patentanwälte mbB
See p535
Nora Keßler Klinkert Rechtsanwälte PartGmbB
Christian Osterrieth HOYNG ROKH MONEGIER
See p540
Miriam Kiefer Kather Augenstein Rechtsanwälte PartGmbB
Christian Paul Jones Day
Roland Kehrwald Wildanger Kehrwald Graf von Schwerin & Partner mbB
See p519
Friedrich W Klinkert Klinkert Rechtsanwälte PartGmbB Martin Köhler HOYNG ROKH MONEGIER
See p522
Karsten Königer Harmsen Utescher Boris Kreye Bird & Bird LLP Constantin Kurtz KLAKA Rechtsanwälte Peter Meyer Simmons & Simmons LLP
IP firms overall, thanks to the talented attorneys at law who support its 80-plus scientifically adept patent attorneys. “It is extremely service oriented and works closely with its clients, developing a strong understanding of their needs.” Growth in the life sciences is a central narrative, with Abbott, Merck, Mundipharma and Takeda instructing it for prosecution work over the past 12 months, and generics leader Dr Reddy’s seeking out its assistance in infringement proceedings. Leading lights include patent attorneys Eva Ehlich, Andreas Ledl, Dirk Bühler, Derk Vos and Norbert Hansen. The small molecule and biologics know-how of chemist Ehlich is highly prized by pharmaceutical companies across Europe, the United States and Japan. “Attentive to detail, passionate, driven and determined”, Ledl is a polished EPO advocate. Biochemist Bühler is singled out for his “gravitas and clarity”; while Vos is a master portfolio strategist and international coordinator with in-depth knowledge of chemical processes relating to everything from medicinal products to
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Alexander Reetz Wildanger Kehrwald Graf von Schwerin & Partner mbB
See p546
Arno Riße ARNOLD RUESS Rechtsanwälte Partnerschaft mbB
See p550
Felix Rödiger Bird & Bird LLP Julia Schönbohm Linklaters LLP Matthias Sonntag Gleiss Lutz Marco Stief Maiwald Patentanwalts- und Rechtsanwalts-GmbH
See p563
plant protection agents and lubricants. Contentious sage and IP portfolio manager Hansen has stacked up more than 15 years in the game and holds a doctorate in organometallic chemistry. On the electronics side, digitalisation and data security head Christian Schäflein is a veritable encyclopaedia of US patent law; he “is service oriented and always up to date on the technical side in fields like AI and neural networks”, and wins further plaudits for his “collaborative working style”. Heading up the legal department is seasoned attorney at law Marco Stief, who is equally proficient in litigation and licensing scenarios. Recent credits include acting in preliminary injunction proceedings on behalf of Fresenius against Eli Lilly. See p1022 for firm profile
Mayer Brown
US player Mayer Brown has some 100-plus dedicated IP practitioners stationed across North America, Europe
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Germany Tobias Wuttke Meissner Bolte Johannes Ballestrem Osborne Clarke
Philipp Ess Klinkert Rechtsanwälte PartGmbB
See p474
Anette Gärtner Reed Smith LLP
Atif Wolfgang Bhatti Linklaters LLP
Thomas Gniadek Simmons & Simmons LLP
Ulrich Blumenröder Grünecker Patent Attorneys and Attorneys-at-Law
Arno Grohmann UNIT4 IP
See p477
Christoph J Crützen Mayer Brown Sören Dahm Kather Augenstein Rechtsanwälte PartGmbB
See p481
Jan Ebersohl Allen & Overy LLP Stefan Eck KLAKA Rechtsanwälte Bolko Ehlgen Linklaters LLP
and Asia, many of whom hold both legal and scientific qualifications. This versatility is also characteristic of both the German team and the instructions it attracts: it has lately gone out to bat for Maxell Europe in cross-border patent infringement proceedings against Apple; enforced Nautilus’s patents against a legion of infringers; and represented Chinese chemical company Anhui Jonhe Industrial Co in infringement proceedings and parallel EPO opposition proceedings against Celanese Sales Germany. Leading on the Maxell Europe brief is Christoph Crützen; while the latter two matters were deftly handled by Ulrich Worm. Litigation and licensing are the specialist subjects of Crützen, whom peers hail as a “gem of the German patent space that deserves recognition”. German IP head Worm likewise traverses the contentious/non-contentious divide with ease and benefits from his scientific background in chemistry.
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Carl-Richard Haarmann BOEHMERT & BOEHMERT Andreas Haberl Preu Bohlig & Partner
Sabine Dethof Heuking Kühn Lüer Wojtek
456
See p491
Alexander Haertel BARDEHLE PAGENBERG Partnerschaft mbB
See p493
Tobias Hahn HOYNG ROKH MONEGIER
See p495
Alexander Harguth Preu Bohlig & Partner Volkmar Henke Eisenführ Speiser
See p499
Tobias J Hessel HOYNG ROKH MONEGIER
See p503
McDermott Will & Emery
“On the ball” and with “top-notch legal knowledge”, McDermott Will & Emery’s German patent practitioners love nothing more than to sink their teeth into high-stakes litigation for innovators of all stripes, both domestic and multinational. As the firm’s headquarters are in Chicago, both German and US patent law are all sewn up; although with more than 160 IP lawyers located around the world, no regime – or technology – is off limits. Dusseldorf head Henrik Holzapfel operates with dexterity across the industry spectrum: as examples, he recently handled an electronics dispute for Scolmore International and a set of nullity, SPC and border seizure proceedings for Huvepharma. Taking charge in Munich is Boris Uphoff, a veteran of myriad crossborder patent battles across Europe, the United States, China and Japan who also regularly tackles unfair competition matters. Both have also brokered
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Germany Hetti Hilge rospatt osten pross
See p505
Jens Michael Künzel Krieger Mes & Graf v der Groeben
Christof Höhne EIP
Roland Küppers Taylor Wessing
Marc Holtorf Pinsent Masons
Henrik Lehment Hogan Lovells
Andreas Jacob Prüfer & Partner mbB
Anja Lunze Taylor Wessing
Dietrich Kamlah Taylor Wessing
Thomas Lynker TALIENS
Christian Kau Preu Bohlig & Partner
Matthias F Meyer Bird & Bird LLP
Daniela Kinkeldey Bird & Bird LLP
Claudia Milbradt Clifford Chance
Alexander Klicznik Hogan Lovells
Tilman Müller Eisenführ Speiser
Michael Knospe Simmons & Simmons LLP
Michael Munsch Meissner Bolte
Jérôme Kommer Quinn Emanuel Urquhart & Sullivan LLP
Stephan Neuhaus Hogan Lovells
their fair share of SEP-related licensing deals within the automotive field.
Meissner Bolte
The abundant resources at Meissner Bolte – which is home to a cohesive group of 60-plus patent attorneys and 15 attorneys at law – mean that its output is nothing short of prodigious: it processes some 2,000 applications annually and appears in countless contentious proceedings before both the EPO and the courts. Nine German offices and one in England make it readily accessible to clients; while the fluent English, Chinese and Japanese speakers on deck prove a further boon on international instructions. Making his debut in the IAM Patent 1000 this year is patent attorney and doctor of physics Ole Trinks, who has been busy filing patents for Mitsubishi Electric Corporation and security equipment company Johnson Controls Inc. He joins colleagues Kay Rupprecht, Gernot Schröer, Michael Munsch, and Tobias Wuttke. A patent attorney litigator with academic qualifications in both electrical engineering and law, Rupprecht has been
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See p524
See p532
appointed as an honorary judge of the Senate for patent attorney matters. Schröer on the other hand is a patent attorney and skilled portfolio manager who holds technical knowhow in mechanics and electrical engineering and plays a role in managing the firm’s Nuremberg office. Attorney at law Munsch joined the firm in 2020 and brings with him a wealth of SEP and FRAND know-how; while fellow legal eagle Wuttke heads up the litigation group and “performs outstandingly, guiding clients through international disputes with professionalism and a high level of tactical skill”. Recent highlights include acting for Deutsche Telekom in a set of cross-border infringement and nullity proceedings.
Michalski Hüttermann Patent Attorneys Michalski Hüttermann’s rising profile in the German patent prosecution space can be attributed to the strength, dedication and ambition of its leading practitioners: competitors observe that the firm has “assembled a team with impressive expertise, generating high growth in a short space of time”. Led by namesakes Stefan Michalski and Aloys
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Germany Rudiger Pansch rospatt osten pross
See p541
Michael Rüberg BOEHMERT & BOEHMERT
Johann Pitz Vossius & Partner Patentanwälte Rechtsanwälte mbB
Kai Rüting Vossius & Partner Patentanwälte Rechtsanwälte mbB
Clemens Plassmann Hogan Lovells
Thomas Schachl Wallinger Ricker Schlotter Tostmann, Patent- und Rechtsanwälte Partnerschaft mbB See p551
Wolrad Prinz zu Waldeck und Pyrmont Freshfields Bruckhaus Deringer LLP
Joerg Schmidt Wildanger Kehrwald Graf von Schwerin & Partner mbB
Martin Quodbach CBH Rechtsanwälte
Florian Schmidt-Bogatzky EIP
Georg Rauh Vossius & Partner Patentanwälte Rechtsanwälte mbB
Michael Schneider Pinsent Masons
Tim Reinhard Osborne Clarke
See p547
Stefan Richter HOYNG ROKH MONEGIER
See p548
Hüttermann, it assists clients in sectors as diverse as chemistry, mechanical engineering, consumer goods and electronics, processing huge volumes of patent filings, managing large patent portfolios and putting in winning appearances in EPO hearings. Master strategist Michalski has a wealth of both chemistry and biochemistry knowledge, while Hüttermann holds a doctorate in synthetic organic chemistry; the pair have been lately tending to the prosecution and opposition needs of Lotte Advanced Materials & Lotte Chemical Corporation. They are joined by electrical engineer Guido Quiram and physicist Dirk Schulz, who both receive rave recommendations from clients. Quiram is an “out-ofthe-box thinker who can grasp the economic context of all legal decisions” – qualities valued by the likes of ABB AG/Hitachi Power Grids and pump systems innovator WILO SE. The “pragmatic and efficient” Schulz primarily provides technical support to law firms on infringement actions; he “manages his team effectively, is dynamic in coming up with creative arguments and quickly becomes familiar with every technical aspect of not just the patent at hand, but also the relevant prior art”.
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See p554
Michael Schramm 2s-ip Schramm Schneider Bertagnoll Patent- und Rechtsanwälte Part mbB Benjamin Schröer Hogan Lovells
Osborne Clarke
Germany is a bastion of strength for Osborne Clark, a formidable foe in IP litigation across the whole of Europe. From four bases in Berlin, Hamburg, Munich and Cologne, its practitioners provide total support in litigation and licensing scenarios. Its courtroom sharpshooters include the likes of Johannes Ballestrem and Tim Reinhard. Ballestrem regularly features in international patent and unfair competition disputes and has just published a book on the legal issues surrounding artificial intelligence and machine learning. Reinhard is an astute patent litigator and commercial mediator whose broad horizons – he previously spent time in an international law firm in New York – chime with global players in the medical devices, biotechnology and consumer electronics industries. IP commercialisation maven Andrea Schmoll has a flair for the fine print of licensing deals, technology transfer arrangements and R&D projects in the life sciences and consumer goods sectors. See p1036 for firm profile
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Germany Thure Schubert Vossius & Partner Patentanwälte Rechtsanwälte mbB
Stephan von Petersdorff-Campen rospatt osten pross
Michael Wallinger Wallinger Ricker Schlotter Tostmann, Patent- und Rechtsanwälte Partnerschaft mbB See p576
Dirk Schuessler-Langeheine HOFFMANN EITLE Gottfried Schüll COHAUSZ & FLORACK
See p557
Steffen Steininger Hogan Lovells Christian Stoll Hogan Lovells Boris Uphoff McDermott Will & Emery Ina Vom Feld Herbert Smith Freehills LLP
Patentanwälte Isenbruck Bösl Hörschler PartG mbB
Patentanwälte Isenbruck Bösl Hörschler lands its first spot in the rankings this year as “a reliable group of professionals characterised by profound knowledge of patent issues and excellent strategic insight”. Its thriving EPO oppositions practice is in particularly hot demand among biotechnology and pharmaceutical multinationals. Many of these are catered to by the “outstanding” Fritz Lahrtz, who has been with the firm since its establishment in 2003; he is highlighted for his “tough but fair approach” and “remarkable technical expertise”. At his side are fellow pharmaceutical aces Stephanie Nottrott and Stefan Feaux de Lacroix. Nottrott’s post-doctoral achievements in the biochemical and molecular biology fields underpin the “deep scientific understanding” she displays in commercially crucial office actions. Founding partner Feaux de Lacroix holds a PhD in polymer chemistry; he not only acts in a broad range of EPO oppositions, but also provides valuable support in court litigation.
Pinsent Masons
The German IP contingent of international outfit Pinsent Masons makes its debut in the IAM Patent 1000 this year, joining its UK and French counterparts as further testament to the firm’s rapid growth in the European patent space, despite the current global challenges. Active across all IP-heavy industries, it is at the cutting edge when it comes to digitisation issues and draws judiciously on a close network
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See p570
Christopher Weber Kather Augenstein Rechtsanwälte PartGmbB
See p578
Nils Weber JONAS Rechtsanwaltsgesellschaft mbH Mirko Weinert HOYNG ROKH MONEGIER
See p579
Ulrich Worm Mayer Brown
of alliances across Europe, the Middle East and Asia. Leading both the local IP team and the life sciences team is Marc Holtorf, whose recent highlights including advising molecular diagnostics company GNA Biosolutions on the IP aspects of its PCR covid-19 test; and representing a Canadian healthcare company in a case which set a precedent on where lines are drawn between pharmaceuticals and medical devices. His counterpart on the high-technology side is SEP and FRAND wizard Michael Schneider, who combines a PhD in patent litigation with 20 years of courtroom experience; he matches abundant IP disputes know-how with keen transactional acumen.
Preu Bohlig & Partner
A mainstay of the German patent space for the past six decades, Preu Bohlig & Partner operates with finesse across all industries, with IT and data protection an increasing focus. Healthcare disputes are also swiftly and favourably resolved, thanks to close collaboration between the IP team and the firm’s parallel pharmaceutical practice group. Clients report that the group is characterised by “strategic thinking, deep knowledge of court procedure and strong commercial focus”. “It seeks extra-judicial solutions and takes a realistic view of legal proceedings; and all of its practitioners are highly personable and professionally capable.” In the spotlight in Berlin is barrister Christian Donle, who has carved a niche defending telecommunications companies against NPEs and recently intervened in the seminal Nokia v Daimler battles on behalf of
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Germany Huawei. The electronics and telecommunications fields – and especially network technologies – are likewise fortes for Munich’s Alexander Harguth, whose recent credits include acting for Girard Sudron in a dispute over LED bulbs at both the Regional Court of Mannheim and the EPO. Also in Munich is Andreas Haberl, who acts on both the contentious and noncontentious sides; he is “precise in his arguments, quick to grasp technically complex subject matter and open minded in suggesting low-escalation, costeffective solutions, while rising to the challenge in court litigation”. Over in Dusseldorf, the key figure is IP and IT doyen Christian Kau: “He keeps the atmosphere friendly and constructive without ever losing focus, and responds to issues comprehensively and straightforwardly at short notice.”
been stronger, thanks to its recent involvement in a raft of must-win disputes in the electronics and telecommunications fields. These include the largestever telecommunications/automotive crossover litigation of its kind, pitting client Daimler against the likes of Nokia, Sharp and Broadcom; it has also managed a patent litigation campaign on behalf of BlackBerry against Facebook, and defended Google against patent infringement claims from Philips. Key to all three matters is Marcus Grosch, who has chalked up 20 years of courtroom experience in highstakes, multi-jurisdictional battles. Working alongside him on the Daimler piece are Johannes Bukow and Jérôme Kommer, who both share a wealth of FRAND knowledge and a flair for coordinating cross-border litigation and parallel EPO proceedings.
Prüfer & Partner mbB
rospatt osten pross
“Prüfer & Partner provides results-oriented solutions, responds to clients’ needs quickly and appropriately, and demonstrates a strong ability to understand and analyse both legal and technical issues – overall, an excellent service.” Over the past 12 months it has continued to provide longstanding client Novartis and baking oven innovator Wachtel with on-point strategic advice; and processed a high volume of patent applications across multiple jurisdictions for Knorr-Bremse Systeme für Schienenfahrzeuge in relation to truck and rail braking and maintenance systems. Leading on the Novartis brief is Andreas Oser, who holds a PhD from the Max Planck Institute for Biochemistry; while the latter two mandates are handled by Jürgen Feldmeier a mechanical engineer who has participated in more than 100 contentious actions during almost 30 years at the patent coalface. Both serve as managing partners of the firm, alongside Dorothea Hofer and Andreas Jacob. Responsible for the group’s ongoing relationship with medical implants leader SME Biederman Technologies, physicist Hofer “has a broad understanding of complicated technical matters and always puts together the most appropriate team for the job”. Attorney at law Jacob earns praise for his “agile project management, strong leadership and timely derivation of effective measures”. See p1050 for firm profile
Quinn Emanuel Urquhart & Sullivan LLP
“Quinn Emanuel has a brilliant ability to make itself fully available at the most critical stages. It provides quick, straightforward, relevant and grounded recommendations – all within a friendly but professional working atmosphere.” The reputation of its German patent litigation group has never
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Established more than 70 years ago, storied IP boutique rospatt osten pross has established itself as a potent force for patent litigation. It has carved a solid foothold in the telecommunications sector – especially in relation to FRAND issues – and has also been building up its pharmaceutical and biotechnology practice, with Amgen, Biogen, Samsung Bioepsis, and Dr Falk Pharma all seeking out its representation in the last 12 months. Acting for Amgen in preliminary injunction proceedings is firm namesake Max von Rospatt, a passionate yet strategic litigator whom competitors hail as “unquestionably esteemed”; he also recently went out to bat for LG on the electronics side. Thomas Musmann is fighting the corner of Biogen and Samsung Bioepsis in biosimilars disputes; his litigation strategies consistently yield results and his counsel is highly sought by both medical and mechanical technology SMEs in need of guidance. Defending Dr Falk Pharma against a series of infringement claims is Henrik Timmann, another master strategist and “extraordinary attorney”: “He has the finest mind – his pleadings are crystal-clear; his briefs are succinct, persuasive and to the point; and he thinks the case through to its end while others are still struggling to get acquainted with the issues. He is incredibly smart and belongs in the very top group of German patent lawyers.” Further contentious firepower comes from Stephan von PetersdorffCampen, Rudiger Pansch and Hetti Hilge. von Petersdorff-Campen “is passionate about his work and makes clients feel confident that there could be no better partner on their side”. Pansch knows the mechanical engineering and automotive sectors like the back of his hand stands out for his “outstanding technical understanding, well-thought-out strategy
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Germany Wolfgang Kellenter Hengeler Mueller
See p517
Tilman Müller-Stoy BARDEHLE PAGENBERG Partnerschaft mbB
See p533
Thomas Musmann rospatt osten pross
See p534
Christian Harmsen Bird & Bird LLP
Cordula Schumacher ARNOLD RUESS Rechtsanwälte Partnerschaft mbB
See p558
Frank-Erich Hufnagel Freshfields Bruckhaus Deringer LLP
Henrik Timmann rospatt osten pross
See p566
Oliver Jan Jüngst Bird & Bird LLP
Axel Verhauwen Krieger Mes & Graf v der Groeben
See p568
Individuals: infringement Joachim Feldges Allen & Overy LLP Marcus Grosch Quinn Emanuel Urquhart & Sullivan LLP Klaus Haft HOYNG ROKH MONEGIER
Christine Kanz HOYNG ROKH MONEGIER Peter Kather Kather Augenstein Rechtsanwälte PartGmbB
See p450
See p481
and strong performances in oral proceedings”. SEP maven Hilge “devotes herself to her cases, always putting the client’s interests first”. “A fierce fighter with a fast mind, she is friendly in tone but tough in substance, and looks at the details while never losing sight of the big picture.” See p1054 for firm profile
Samson & Partner Patentanwälte mbB
A firm distinguished by continued growth and an affinity for the specific requirements and interests of NPEs, Samson & Partner is running hot on the radar right now. Lauded by clients for its flexible, agile approach to opposition proceedings and for the breadth of technical acumen on show, the Munichbased patent attorney outfit has been processing a prodigious volume of patents on behalf of Intel and Amadeus, and supporting law firms in representing industry giants such as Apple, Facebook and Nokia in infringement proceedings. Founder Friedrich von Samson-Himmelstjerna is a physicist and patent attorney of 30 years’ standing who crafts winning patent strategies and serves as a court expert at the Munich Court of Appeal. At his side are fellow physicists Tobias Stammberger and Wolfgang Lippich. The former has walked in his clients’
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Andreas von Falck Hogan Lovells Max von Rospatt rospatt osten pross
See p571
Wolf Graf von Schwerin Wildanger Kehrwald Graf von Schwerin & Partner mbB
See p573
shoes, having previously worked at a multinational electrical engineering group; while computer scientist and enforcement ace Lippich holds a doctorate in experimental particle physics from world-renowned research organisation CERN. See p1056 for firm profile
Schaumburg und Partner Patentanwalte mbB
Schaumburg und Partner makes its IAM Patent 1000 debut this year thanks to impeccable patent prosecution work for the likes of Canon. “The firm provides a superior service at a fair price; it is reliable, consistent and precise, and efficiently accommodates clients’ differing needs.” Its growing profile is in large part due to the efforts of physics PhD Jürgen Landskron, who garners rave reviews from clients: “Dr Landskron is intelligent, capable, patient and a clear communicator; and the briefs he drafts are precise and digestible.”
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Germany Peter-Michael Weisse Wildanger Kehrwald Graf von Schwerin & Partner mbB
See p581
Anna Wolters-Höhne Bird & Bird LLP
Christoph De Coster Taylor Wessing Christian Donle Preu Bohlig & Partner Martin Fähndrich Hogan Lovells
Bernd Allekotte Grünecker Patent Attorneys and Attorneys-at-Law
See p443
Bernhard Arnold ARNOLD RUESS Rechtsanwälte Partnerschaft mbB
See p453
Markus Gampp DLA Piper UK LLP
See p473
Eva Geschke Wildanger Kehrwald Graf von Schwerin & Partner mbB
Christof Augenstein Kather Augenstein Rechtsanwälte PartGmbB
Jürgen Feldmeier Prüfer & Partner mbB
Jochen Bühling Krieger Mes & Graf v der Groeben
Olaf Giebe KLAKA Rechtsanwälte
Johannes W Bukow Quinn Emanuel Urquhart & Sullivan LLP
Miriam Gundt Hogan Lovells
Philipp Cepl DLA Piper
Hosea Haag AMPERSAND Rechtsanwaelte LLP
Peter Chrocziel BARDEHLE PAGENBERG Partnerschaft mbB
Jochen Herr Baker McKenzie
Simmons & Simmons LLP
See p480
The patent litigators at Simmons & Simmons rank among the continent’s most formidable and regularly feature in some of the hardest-fought cases around: over the last 12 months, they have defended HTC against infringement claims from NPE IPCom; acted for Match Group – the owner of dating app Tinder – in a commercially consequential patent dispute; and represented patent licensor WiLAN in FRANDrelated proceedings against Sony Mobile. Running point on the HTC case is Michael Knospe; while the latter two matters were orchestrated by Thomas Gniadek. Knospe is “one of the best lawyers out there for complex IP matters and software contracts”, and provides “excellent legal advice informed by commercial understanding”. IAM Patent 1000 newcomer and “passionate advocate” Gniadek knows the score when it comes to SEP and FRAND issues and has handled more than 30 high-technology suits for US and Chinese multinationals. A-listers in the telecommunications and life sciences spaces
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See p487
See p488
have Peter Meyer on speed dial: “Peter has a keen intellect and a solid command of the technology, and collaborates closely with patent attorneys to ensure that his arguments are concise, accurate and technically sound.” His recent credits include acting for Gemalto in a series of four patent disputes in relation to SIM card technologies.
TALIENS
Since spinning off from corporate law firm Olswang four years ago, boutique TALIENS has established a thriving cross-border practice, operating out bases in Munich, Paris and Madrid. The “dynamic, highly responsive and patent-savvy” German contingent makes its first appearance in the IAM Patent 1000 this year, impressing for its “no-nonsense working approach which prioritises commercial objectives”. The firm has fast become a fan favourite of telecommunications players, especially for FRAND litigation: in the last year it has acted for ZTE in its seminal dispute against Conversant and represented TCT Mobile Europe in a major FRAND suit against
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Germany Johannes Heselberger BARDEHLE PAGENBERG Partnerschaft mbB
See p502
Gisbert Hohagen Taylor Wessing
Kay N Kasper HOYNG ROKH MONEGIER
See p513
Roland Kehrwald Wildanger Kehrwald Graf von Schwerin & Partner mbB
See p516
Nora Keßler Klinkert Rechtsanwälte PartGmbB
See p519
Friedrich W Klinkert Klinkert Rechtsanwälte PartGmbB
Siemens AG. Leading on both matters and heading up the practice is co-founder Thomas Lynker, a technical renaissance man who has also brought home the wins in pharmaceutical, mechanics and medical technology disputes; he has valuable insider insight from a stint as in-house counsel at Infineon Technologies.
Life sciences and high technology are strongholds for European IP litigation powerhouse Taylor Wessing, which tirelessly protects the crown-jewel assets of a slew of US, Chinese, Japanese, Taiwanese and Korean innovators. On the life sciences side, Anja Lunze has been assisting US research organisation Dana-Faber Cancer Institute with a hotly contested ownership battle; and Dietrich Kamlah has been representing Abbott in a heart valve-related patent infringement dispute. Lunze is “direct and to the point in her arguments, and diligent and thorough in her working style”; while Kamlah stands out for his “close and consistent attention to detail”. He has also been working on the SEP cases that form part of ASUS’s ongoing litigation against Philips,
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Karsten Königer Harmsen Utescher
Constantin Kurtz KLAKA Rechtsanwälte
Anton Horn Heuking Kühn Lüer Wojtek
Taylor Wessing
See p522
Boris Kreye Bird & Bird LLP
Henrik Holzapfel McDermott Will & Emery
Miriam Kiefer Kather Augenstein Rechtsanwälte PartGmbB
Martin Köhler HOYNG ROKH MONEGIER
Peter Meyer Simmons & Simmons LLP Ralph Nack Noerr LLP Joel Nägerl Zimmermann & Partner Patentanwälte mbB
See p535
Christian Osterrieth HOYNG ROKH MONEGIER
See p540
Christian Paul Jones Day Alexander Reetz Wildanger Kehrwald Graf von Schwerin & Partner mbB
See p546
with Roland Küppers tackling the non-SEP cases. Like Kamlah, Küppers has a broad compass in terms of sector focus, but the common thread to his caseload is its cross-border nature. Other master tacticians in multi-jurisdictional cases include the technically adept Gisbert Hohagen, who has “wide knowledge of the relevant case law and the secrets of the different German courts”; pharmaceuticals and medical devices sage Christoph De Coster, who has been busy with pan-European SPC-related litigation for Mylan; and fellow pharmaceutical and biotechnology expert Sabine Rojahn, the architect of numerous precedents over her 30-year career. Heading up the IP department of the firm’s China group is transactions ace Thomas Pattloch, whose thick address book of Chinese contacts makes him a trusted guide for US and European business seeking to assert their patent rights in the world’s second largest economy.
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Germany Arno Riße ARNOLD RUESS Rechtsanwälte Partnerschaft mbB
See p550
Christoph J Crützen Mayer Brown
Felix Rödiger Bird & Bird LLP
Sören Dahm Kather Augenstein Rechtsanwälte PartGmbB
Julia Schönbohm Linklaters LLP
Sabine Dethof Heuking Kühn Lüer Wojtek
Matthias Sonntag Gleiss Lutz
Jan Ebersohl Allen & Overy LLP
Marco Stief Maiwald Patentanwaltsund Rechtsanwalts-GmbH
Stefan Eck KLAKA Rechtsanwälte
See p563
Tobias Wuttke Meissner Bolte Johannes Ballestrem Osborne Clarke
See p474
Atif Wolfgang Bhatti Linklaters LLP Ulrich Blumenröder Grünecker Patent Attorneys and Attorneys-at-Law
See p477
Premier prosecution outfit and IAM Patent 1000 newcomer Ter Meer Steinmeister has crunched through a dizzying number of filings over the last year, with pharmaceuticals a particular area of focus. Its hotshot team includes Bernd Aechter, Jörg Riemann, Christian Hollatz and Stefan Manzer. Chemist and portfolio manager Aechter and electrical engineer and video conferencing guru Reimann both boast valuable in-house experience: the former was previously global patent counsel for BASF, while the latter worked at Philips. Chemist Hollatz has “tremendous technical expertise and an astonishing ability to streamline difficult cases down to the core issues”. Communications technologies boffin Manzer “quickly gets to grips with the key facts, rendering opinions swiftly to the court and demonstrating thorough preparation”.
Established in 1958, Uexküll & Stolberg fields a deep bench of 18 patent attorneys across twin offices in Munich and Hamburg. Its diverse clientele
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Bolko Ehlgen Linklaters LLP Philipp Ess Klinkert Rechtsanwälte PartGmbB Anette Gärtner Reed Smith LLP Thomas Gniadek Simmons & Simmons LLP
Ter Meer Steinmeister & Partner
Uexküll & Stolberg
See p481
includes Danish biotechnology company Chr Hansen, $255 billion petroleum titan ExxonMobil and pharmaceutical originators Amgen and Bristol MyersSquibb, which have variously engaged the firm for patent filings, international portfolio management and representation in EPO opposition proceedings. Leading on a significant chunk of this work is biotechnology head and immunology PhD Albrecht von Menges, who has stacked up 20 years of EPO advocacy experience. His team includes the likes of “flexible, amiable and technically capable” André Guder, a molecular biology PhD who previously worked at a patent law firm in Chicago. Chemistry know-how is supplied by Bernd Christian Janssen – who also served time at a Chicago law firm – and Heinz-Peter Muth, who holds a doctorate in nucleic acid chemistry and undertook post-doctoral research at the Salk Institue for Biological Studies in San Diego. See p1074 for firm profile
UNIT4 IP
Executing flawlessly on both sides of the contentious/ non-contentious divide, boutique UNIT4 derives its name from its unified working approach, which separates it from the competition. Its clients hail
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Germany Arno Grohmann UNIT4 IP
See p491
Dietrich Kamlah Taylor Wessing
Carl-Richard Haarmann BOEHMERT & BOEHMERT
Christian Kau Preu Bohlig & Partner
Alexander Haertel Bardehle Pagenberg
Daniela Kinkeldey Bird & Bird LLP
Tobias Hahn HOYNG ROKH MONEGIER
See p495
Alexander Harguth Preu Bohlig & Partner
Alexander Klicznik Hogan Lovells Michael Knospe Simmons & Simmons LLP
Volkmar Henke Eisenführ Speiser
See p499
Jerome Kommer Quinn Emanuel Urquhart & Sullivan LLP
Tobias J Hessel HOYNG ROKH MONEGIER
See p503
Jens Michael Künzel Krieger Mes & Graf v der Groeben
Hetti Hilge rospatt osten pross
See p505
Roland Küppers Taylor Wessing
Christof Höhne EIP Europe LLP
Henrik Lehment Hogan Lovells
Marc Holtorf Pinsent Masons
Anja Lunze Taylor Wessing
from across the industry spectrum, although it has enjoyed great success of late on behalf of a series of mechanical engineering players and a householdname consumer goods group. Leading the charge is Arno Grohmann, a shrewd patent litigator and contract negotiator for whom trade secrets are a growing additional focus. See p1076 for firm profile
Vossius & Partner Patentanwälte Rechtsanwälte mbB
With a presence on the market for the last six decades, Vossius & Partner is increasingly turning heads for its cradle-to-grave patent offering: “It is becoming one of the most highly reputable patent firms on the market. The group is outstanding in prosecution and oppositions, and facilitates positive and constructive relationships.” Pharmaceutical work is a central focus, although it is also increasingly attracting SEP and FRAND-related mandates: most recently for WIKO against the likes of Philips, Ericsson and Intellectual Ventures in a matter that showcased its ability to assemble tailored multi-disciplinary teams, made
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See p524
possible by the firm’s hybrid model. Taking charge here is attorney at law Andreas Kramer, who arrived at the firm in 2018 and enters the IAM Patent 1000 this year. Other eminent attorneys at law include Kai Rüting, Georg Rauh (with whom Kramer collaborated on the WIKO brief), Thure Schubert and Johann Pitz. Rüting recently partnered with Rauh to defend ZTE in a set of litigation proceedings and provide comprehensive advice to Orion Pharma; and with Schubert to represent Boston Scientific in a significant entitlement action. Pitz, meanwhile, was behind the establishment of the firm’s legal department and is acclaimed for his “great litigation experience and strong technical and legal skills”. On the patent attorney side, resident life sciences experts include Jürgen Meier and Hans-Rainer Jaenichen, who recently teamed up to manage the patent filings of cutting-edge gene therapy leader CRISPR Therapeutics AG. Biochemist Meier brings insight from his time working at the Centre of Neuroscience Research at Montreal’s McGill University and serves as chair of the AIPPI Biotech Committee; while molecular biology Jaenichen is one of the country’s foremost
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Germany Thomas Lynker TALIENS
Wolrad Prinz zu Waldeck und Pyrmont Freshfields Bruckhaus Deringer LLP
Matthias F Meyer Bird & Bird LLP
Martin Quodbach CBH Rechtsanwälte
Claudia Milbradt Clifford Chance
Georg Rauh Vossius & Partner Patentanwälte Rechtsanwälte mbB
Tilman Müller Eisenführ Speiser
See p532
Michael Munsch Meissner Bolte Stephan Neuhaus Hogan Lovells Rudiger Pansch rospatt osten pross
See p541
Clemens Plassmann Hogan Lovells
authorities on CRISPR. Fellow life sciences maven Joachim Wachenfeld has a PhD in immunology and builds patent portfolios with a deft touch. For mechanical engineering questions, Elard Schenck zu Schweinsberg has all the right answers across the entire patent lifecycle, and has carved out a niche at the interface of mechanics and biology which sees him regularly collaborate with the firm’s biotechnology group. Electrical engineer Rainer Viktor is a favourite of medical devices, bioinformatics, software and electronics companies, and excels at guiding start-ups and university spin-outs through the patenting process. Fellow electrical engineer Josef Schmidt joined the firm in 1984 after a stint in the manufacturing industry and knows everything there is to know about software-related inventions. See p1084 for firm profile
Wallinger Ricker Schlotter Tostmann, Patent- und Rechtsanwälte Partnerschaft mbB
Munich-based IP firm WALLINGER RICKER SCHLOTTER TOSTMANN combines the talents of patent attorneys and attorneys at law to offer a wraparound service which never leaves clients wanting. Its 20-strong
IAM Patent 1000
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Stefan Richter HOYNG ROKH MONEGIER
See p548
Michael Rüberg BOEHMERT & BOEHMERT
Johann Pitz Vossius & Partner Patentanwälte Rechtsanwälte mbB
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Kai Rüting Vossius & Partner Patentanwälte Rechtsanwälte mbB Thomas Schachl Wallinger Ricker Schlotter Tostmann, Patent- und Rechtsanwälte Partnerschaft mbB See p551 Joerg Schmidt Wildanger Kehrwald Graf von Schwerin & Partner mbB
See p554
team has earned the loyalty of myriad leading innovators such as BMW, Fresenius Medical Care, Boehringer Ingelheim and Immunolight, which provides energy conversion technology for the medical and commercial industries. Taking care of BMW’s prosecution needs are Michael Wallinger and Michael Platzoeder; while attorney at law Thomas Schachl – a seasoned patent litigator and orchestrator of parallel proceedings – has been counselling the auto manufacturer in litigation. Namesake Wallinger has been in the game since the 1980s and is lauded as “one of the true greats in the German patent space”; while high-technology group Platzoeder is a physicist who previously worked in the IP department of global semiconductor supplier Infineon Technologies. Heading up the chemistry and pharmaceutical group are co-founders and doctors of chemistry Mathias Ricker and Holger Tostmann. Ricker joined forces with Platzoeder on the Fresenius work, which involves strategic advice, opposition proceedings and the drafting of AI-related patent applications; while IAM Patent 1000 newcomer
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Germany Florian Schmidt-Bogatzky EIP
Boris Uphoff McDermott Will & Emery
Michael Schneider Pinsent Masons
Ina Vom Feld Herbert Smith Freehills LLP
Michael Schramm 2s-ip Schramm Schneider Bertagnoll Patent- und Rechtsanwälte Part mbB
Stephan von Petersdorff-Campen rospatt osten pross
See p570
Benjamin Schröer Hogan Lovells
Michael Wallinger Wallinger Ricker Schlotter Tostmann, Patent- und Rechtsanwälte Partnerschaft mbB See p576
Thure Schubert Vossius & Partner Patentanwälte Rechtsanwälte mbB
Christopher Weber Kather Augenstein Rechtsanwälte PartGmbB
Dirk Schuessler-Langeheine HOFFMANN EITLE
Nils Weber JONAS Rechtsanwaltsgesellschaft mbH
Gottfried Schüll COHAUSZ & FLORACK
See p557
Steffen Steininger Hogan Lovells Christian Stoll Hogan Lovells
Tostmann has an enviable success rate in oppositions and is managing Immunolight’s portfolio. Also appearing in the rankings for the first time are chemist Christiane Maxien, who joined the partnership in 2018; and biotechnology doyenne Cornelia Oetke, who has a flair for advancements such as small molecules and antibodies, and recently assisted Boehringer Ingelheim with patent prosecution and opposition proceedings. See p1086 for firm profile
Weickmann & Weickmann PartmbB
For almost 140 years, Weickmann & Weickmann has offered a technically proficient, strategically minded service from its base in Munich, the patent prosecution capital of Europe. Its 40-plus patent attorneys speak the language of inventors and have an intuitive understanding of the commercial needs of modern businesses. Anchoring the mechanical engineering and electronics sides is Markus Herzog, who has spent more than 25 years prosecuting and defending patents; before which he spent time in academia, imparting his solid-state physics knowledge and developing semiconductor technologies. His counterparts on the life sciences
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Mirko Weinert HOYNG ROKH MONEGIER
See p578
See p579
Ulrich Worm Mayer Brown
front are biochemists Wolfgang Weiß and Christian Heubeck. Weiß has been practising for almost three decades and splits his time between dispensing strategic advice and masterminding EPO oppositions; while the technically and commercially adept Heubeck lends his hand to everything from routine filings to freedom-to-operate analyses and licensing advice. See p1088 for firm profile
Wildanger Kehrwald Graf von Schwerin & Partner mbB
Competitors speak highly of Wildanger as a “strong firm which makes a good impression in court hearings”. It has carved a notable niche representing SEP owners, but disputes of every flavour are handled with finesse by its supremely capable, diversely qualified team of 13 lawyers. Spearheading the group’s SEP efforts is Peter-Michael Weisse, who was behind some of the first post-Huawei v ZTE judgments and played a key role obtaining the first German anti-anti-suit injunction against a Chinese anti-suit injunction. Also working in this space is Alexander Reetz, who joined the partnership in 2019 and regularly appears in cross-border disputes with FRAND licensing implications; and Joerg Schmidt, an IP all-rounder who is especially noted for his facility
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Germany for SEP-related telecommunications suits and thriving medical technology practice. Roland Kehrwald and Eva Geschke are similarly versatile: 30-year veteran Kehrwald advises and litigates across the IT, genetic engineering and medical technology sectors; while Geschke has a wealth of scientific know-how and is hailed by peers as “a strong litigator who knows what she’s doing”. Also with broad horizons, but with a focus on the biotechnology and pharmaceutical spheres, is Wolf Graf von Schwerin, who has litigated countless consequential cross-border cases throughout his career, including many which have resulted in landmark decisions. See p1092 for firm profile
Wuesthoff & Wuesthoff
Established in 1927, Wuesthoff is the longstanding partner of ground-breaking innovators in spaces including consumer goods, electronics and medical technology; software has also become a growing focus of its practice, not least thanks to the efforts of Rainer Röthinger and Rainer Gunzelmann. Physicist Röthinger draws on a breadth of experience which includes time spent in the semiconductor research department of Daimler-Benz and at a US law firm; while electrical engineer Gunzelmann’s pre-Wuesthoff career included a period as a software engineer for MAN Technologie and a stint at Siemens, whose Beijing patent licensing centre he established. Fellow Siemens alumnus Bernhard Thum formerly headed up its patents and standards department; today he is a prolific drafter and prosecutor of patents in the mechanical and biomedical engineering spheres. For biotechnology, chemistry and pharmaceuticals issues, Hendrik Wichmann is the one to call. As comfortable managing sprawling portfolios as he is appearing before the EPO’s Opposition Division and Boards of Appeal, he has also intervened in cross-border litigation within the food chemistry and therapeutic antibody fields; plant varieties are a further specialism.
Zacco
Following in the footsteps of its counterparts in countries including Sweden, Denmark and Norway, Zacco’s German arm makes its debut in the guide this year for its forward-thinking approach to IP consultancy, deep industry knowledge and prestigious and expanding client base. The firm has enviable geographical reach, thanks not only to an unparalleled pan-Scandinavian offering, but also to a base in the United Kingdom and an Indian office which serves as a gateway to the sub-continent’s booming economy. Its rainmakers are PhD biochemist Carsten Prusko
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and former Tetra Pak patent director Olav Jaeger. The “client-oriented” Prusko is praised for his “interpersonal skills and concise and coherent writing skills, deep scientific knowledge and flexible approach to portfolio management and oppositions”. Jaeger has “a great understanding of client needs, an unflinching ability to negotiate and settle problems before they become overwhelming, and excellent knowledge of both European and US patent procedure”. See p1098 for firm profile
Zimmermann & Partner Patentanwälte mbB
Business minded and creative, patent prosecution group Zimmermann & Partner keeps clients’ interests firmly front and centre on all instructions. Its flexible, non-hierarchical team – which includes representatives of 13 different nationalities – is distinguished by a collaborative style that ensures each brief is optimally resourced. Over the last year, General Electric sought out its support in oppositions – ably provided by Benedikt Neuburger; and Samsung Electronics enlisted it for assistance with both nullity proceedings and infringement proceedings, which came courtesy of Joel Nägerl. Neuburger is an oppositions ace whose physics qualifications are complemented by a PhD in patent valuation – the perfect balance between the technical and the commercial. Nägerl holds a PhD in semiconductor optics and has acted for innovative multinationals in a litany of multi-jurisdictional litigations of every sort. Fellow physics PhD Dominique Gobert excels at largescale patent portfolio management and optimisation, teaches at the EPO Patent Academy and has made numerous appearances as a technical expert in the country’s courtrooms. See p1102 for firm profile
Other recommended experts
UK-headquartered Forresters’ representative in Munich is Matthew Thomas Barton, who draws on a PhD in inorganic chemistry in his thriving EPO prosecution and oppositions practice. Based at Lederer & Keller since 1998, Michael Best is known for his involvement in oppositions relating to blockbuster pharmaceutical products – competitors call him “a formidable but respectful adversary who is never easy to come up against”. At AMPERSAND, the technically versatile Hosea Haag maintains a busy patent litigation and commercial contracts practice underpinned by razor-sharp business insight. Global juggernaut Reed Smith has a patent litigator par excellence in the form of “talented analyst” Anette Gärtner, who is qualified to practise in Germany,
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Germany England and Wales and Ireland; she “aims to settle disputes without the need for time-consuming and costly court proceedings”. Computer-implemented inventions expert and German, French and European patent attorney Robert Harrison receives praise for his “exhaustive attention to detail”; fluency in seven languages makes communication a breeze for international patrons. He is based at Sonnenberg Harrison alongside colleague and fellow namesake Fred Sonnenberg, who pairs extensive physics knowledge with an acute awareness of the business cultures of both Germany and France. For dynamic emerging and established biotechnology companies, VO Munich office head Bettina Hermann is just the ticket with her highly cultivated drafting skills and strategic wisdom. She stays the course in lengthy examination proceedings and emerges with ironclad protections for her clients’ cornerstone innovations. SR Huebner’s titular founder Stefan Rolf Huebner enters the IAM Patent 1000 this year thanks to his burnished industry reputation and pioneering work in the field of nanotechnology – a subject on which he is a recognised authority. The communications engineering and high-frequency technology knowhow of WITTEWELLER’s Stephan Keck translates into meticulous patent applications for computer science and electronics inventions. Robin Keulertz has significantly elevated Olbricht’s profile, offering “robust analysis and validity opinions which always demonstrate an understanding of the big picture”. Based at Harmsen Utescher, attorney at law Karsten Königer deploys his academic qualifications in physics to superb effect in his busy and varied patent litigation practice. Gramm, Lins & Partner is home to electronics and physics maven Edgar Lins, whose precise approach sees him cover all bases and leaves no stone unturned. Patent attorney Tim Meyer-Dulheuer is managing partner and founder of hybrid firm Meyer-Dulheuer; a trusted guide through the patenting process, he comes equipped with a doctorate in chemical engineering. At Noerr, Ralph Nack is a polished litigator and effective contract negotiator with specialist knowledge of Chinese patent law. HGF recently bolstered its German offering by merging with Patronus; leading lights at the firm include Jan Robert Naefe and Markus Zoller. Naefe is an EPO oppositions ace and materials science
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sage who “drafts patent applications with litigation in mind”, while biotechnology expert Zoller offers litigation strategy and portfolio management advice to clients on every scale, and brings experience working in a New York patent firm. Elisabeth Opie runs a busy IP transactions practice out of her eponymous firm; a qualified solicitor not only in her native Australia, but also in England and Wales, she has a cosmopolitan outlook which is valued by her German and European clientele. CBH’s Martin Quodbach appears in the IAM Patent 1000 as a “prolific litigator who is always worth recommending”. The bulk of Oliver Scherenberg’s IP transactions and licensing instructions come from NPE Sisvel: “Oliver is trustworthy, approachable and even handed, and always ensures that each party understands the matter at hand, irrespective of their native language. He is a smart, efficient and creative lawyer who is very adept at closing agreements in complex and unique settings.” Christian Schmidt – who has called Manitz Finsterwald home since 1996 – is a mechanics and electronics expert for whom sensors and lasers are a specific focus. Based at the eponymous 2s-ip Schramm, Scheider Bertagnoll, dual-qualified patent attorney and attorney at law Michael Schramm tackles technically dense cases on behalf of major innovators in the automotive, telecommunications and energy fields, and also lends a hand to the drafting of licensing, software and R&D contracts. Herbert Smith Freehills’ Ina vom Feld coordinates complex cross-border patent and pharmaceutical regulatory disputes with a deft touch and has a pristine record in preliminary injunction proceedings. She is also no stranger to SPC matters and provides her loyal clientele with invaluable contractual advice. UK, Irish and European patent attorney James Ward anchors Haseltine Lake Kempner’s Munich office and is a familiar face at the EPO; his broad physics know-how ensures he can quickly get to grips with everything from 3D printing to sensors for deepsea fishing gear, injection moulding machines and telephone routing and recording systems. At JONAS, Nils Weber has an encyclopaedic understanding of both IP and competition law, and is hailed for his poised performances in preliminary injunction proceedings and game-changing contractual work.
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Allekotte, Bernd Partner – Grünecker Patent Attorneys and Attorneys-at-Law allekotte@grunecker.de | www.grunecker.de
Bernd Allekotte has been a partner at Grünecker since 2003 and is admitted to both the German and New York Bars. He obtained a JD from the Munich University School of Law in 1995 and an LLM from the Columbia University School of Law in 1996. Dr Allekotte provides counsel in all fields of intellectual property, with a special focus on patent litigation. He has handled numerous patent infringement disputes for domestic and foreign clients. While he specialises in telecommunications and life sciences patents, Dr Allekotte has also extensive knowledge of IP-related EU and German antitrust issues. Over the past few years, he and his team have often been involved in complex cross-border cases, in particular in the automotive industry over connected cars patents. In addition to his legal work, Dr Allekotte regularly lectures and publishes on patent enforcement issues. Grünecker was founded in 1924 and is among the largest IP law firms in Europe. The firm employs more than 100 attorneys and provides the full range of IP services in all technical and legal areas. The firm has its headquarters in Munich and branch offices in Berlin, Cologne and Paris.
Grünecker Patent Attorneys and Attorneys-at-Law Leopoldstrasse 4 Munich 80802 Germany T +49 89 21 23 50 F +49 89 22 02 87 See firm profile p988 Professional associations • AIPPI • GRUR • VPP
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Appelt, Christian W Partner – BOEHMERT & BOEHMERT appelt@boehmert.de | www.boehmert.com
Christian W Appelt studied physics, with a major in solid state physics (Dipl Phys), at the University of Erlangen-Nuremberg, Germany. He has worked as a patent attorney at BOEHMERT & BOEHMERT since 1995. In addition to his professional career in Europe, he lived in Japan for two years and has worked at a patent law firm in Osaka and in the patent department of Ebara Corporation and the IP department of Sony Corporation in Tokyo. His practice focuses on the registration and examination procedures, enforcement, litigation and licensing of technical IP rights (patents and utility models). He advises and represents clients in opposition and nullity proceedings before the German authorities and courts, as well as before the EPO. He has been heavily involved in litigation and invalidation procedures in the smartphone patent wars in Germany, representing a major US client in both defensive and offensive cases, and he regularly represents European, US and Japanese clients in dispute proceedings. Mr Appelt advises companies on setting up internal IP processes and departments, and devising IP strategies – especially for small and mid-sized enterprises. He regularly teaches on various aspects of IP law, particularly at WIPO, the EPO and the Association of German Engineers. He has been a visiting lecturer at the University of Applied Sciences, Kiel, since 2004 and at Tokai University and the Tokyo University of Science since 2005. Mr Appelt is a member of the German Association for the Protection of Intellectual Property and the Licensing Executives Society (LES). He has been a member of the executive board of LES Germany since 2010, acting as president from 2018 to 2020 and currently as immediate past president. He is also member of the German Association for the Protection of Intellectual Property. Together with his partner Heinz Goddar, Mr Appelt wrote the EPC Handbook – Guide for Practitioner, which is in its fourth edition in Japan and has also been published in China, Taiwan and India, as well as in Arabic.
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BOEHMERT & BOEHMERT Pettenkoferstrasse 22 Munich 80336 Germany T +49 89 55 96 80 F +49 89 55 96 85 090 See firm profile p934 Professional associations • GRUR • LES • LESI
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Arnold, Bernhard Attorney at law – ARNOLD RUESS Rechtsanwälte Partnerschaft mbB arnold@arnold-ruess.com | www.arnold-ruess.com
Bernhard Arnold is a partner of ARNOLD RUESS, a boutique IP firm in Dusseldorf, Germany. He is a lecturer on the LLM in IP law course at Heinrich Heine University. Before founding ARNOLD RUESS, Dr Arnold worked with Freshfields Bruckhaus Deringer for several years. Dr Arnold has experience in patent litigation in various technology sectors (electronics, pharmaceuticals, software, medical devices, chemistry, telecommunications and others), and coordinates international teams to develop and implement the optimal strategy for his clients. He regularly acts as counsel for a global consumer electronics group on all IP matters in Germany. Dr Arnold further advises on licensing and IP-driven transactions in his areas of expertise, which also extend to copyright law. Dr Arnold holds a law degree from Passau University and a German SJD (Dr jur) from Cologne University. He has published widely in his field of expertise, including a book on the circumvention of technical copyright measures that was highly regarded by copyright owners. The Dusseldorf Bar Association has awarded him the title of Fachanwalt (bar-certified specialist) for IP law, and he is regularly recommended in his area of expertise by The Legal 500 and Chambers Europe. Dr Arnold is an active member of several professional organisations, including the German Association for the Protection of Intellectual Property, the European Patent Lawyers Association and the International Association for the Protection of Intellectual Property. He is a much sought-after speaker and has given presentations on IP law issues in several countries. Dr Arnold speaks German, English and French.
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ARNOLD RUESS Rechtsanwälte Partnerschaft mbB Königsallee 59a Dusseldorf 40215 Germany T +49 211 5424 4050 F +49 211 5424 4044 See firm profile p926 Professional associations • AIPPI • EPLAW • GRUR
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Augenstein, Christof Partner – Kather Augenstein Rechtsanwälte PartGmbB augenstein@katheraugenstein.com | www.katheraugenstein.com
Christof Augenstein is a co-founder of Kather Augenstein and has been active as a litigator for over 15 years. He became a certified specialist in intellectual property in 2007, enforcing IP rights such as patents, trademarks and designs in litigation. His advice, in particular in extensive, technically complex patent infringement litigation, is valued by clients around the world. He has been widely recommended in directories such as IAM Patent 1000, Chambers & Partners, Handelsblatt’s Best Lawyers, Managing Intellectual Property’s IP Stars and JUVE for his legal advice in the field of IP rights. His awards confirm not just his technical expertise, but also his relentless dedication to the interest of his clients. Mr Augenstein is a member of various specialised committees. Among other engagements, he is chair of the Standing Committee on Unitary Patent Q 243 at the International Association for the Protection of Intellectual Property, as well as a member of the Standing Committee on Enforcement Q 224. He regularly holds seminars at the German Association of Intellectual Property Experts and is a member of the German Association for Intellectual Property and Copyright, and the European Patent Lawyers Association. Mr Augenstein is active as an author and editor of scientific publications. He publishes regularly on IP law-related topics in various professional journals. He is also one of three co-editors of an international commentary project on the Unified Patent Court to which experienced litigators from the United Kingdom, France and Germany will contribute. This underlines his international approach in this field.
Kather Augenstein Rechtsanwälte PartGmbB Bahnstraße 16 Dusseldorf 40212 Germany T +49 211 513 5360 See firm profile p1010 Professional associations • AIPPI • GRUR • VPP Sample client list • BASF • Dematic • Ericsson • HTC • Innogy
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Ballestrem, Johannes Partner – Osborne Clarke johannes.ballestrem@osborneclarke.com | www.osborneclarke.com
Johannes Graf Ballestrem litigates cases involving mechanics, electronics, information technology and ‘access to data’ claims. He has outstanding experience in litigation concerning printer consumables, automotive spare parts, remanufacturing and software implemented inventions. He has particularly deep experience in the automotive and energy sector. Dr Ballestrem has specialised in patent law for over 15 years. After working in the patent litigation department of a leading international law firm in Dusseldorf, he joined Osborne Clarke and became partner in 2019. During his career, he has taken part in a wide range of patent litigation cases in the field of telecommunications, mechanics and software. Dr Ballestrem represents clients before the civil courts and participates in parallel validity proceedings before the European Patent Office, the Federal Patent Court and the Federal Supreme Court. Clients appreciate his sector focus and understanding of technology, as well as his forensic and negotiation skills. Dr Ballestrem also regularly advises in M&A transactions and licensing. Dr Ballestrem is a member of the German Association for the Protection of Intellectual Property, the Association of Intellectual Property Experts and the Licensing Executives Society. He publishes frequently on patent and procedural law. In particular, he is author of The assignment of patent and utility model rights by way of security and co-author of Artificial Intelligence (AI) on the legal implications of AI and machine learning. His clients include international automotive suppliers, producers of printers and consumables, producers of industrial minerals and service providers for wind energy turbines.
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Osborne Clarke Innere Kanalstrasse 15 Cologne 50823 Germany T +49 221 5108 4246 See firm profile p1036 Professional associations • GRUR • VPP • LES
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Baumgärtel, Gunnar Partner – Maikowski & Ninnemann baumgaertel@maikowski-ninnemann.com | www.maikowski-ninnemann.com
Gunnar Baumgärtel is a physicist and a German and European patent attorney who specialises in patent litigation and patent prosecution – particularly in sophisticated proceedings involving automotive technology, telecommunications, electronics and mechanical engineering. He studied physics in Berlin and Paris (Technical University and École Normale Supérieure) and obtained his doctorate from the Free University of Berlin in 1993 for research in the field of magnetism, superconductivity and femtosecond-spectroscopy. Dr Baumgärtel has vast experience in handling patent infringement cases before the district and appeal courts, as well as nullity cases before the Federal Patent Court, where he has represented clients in some of the largest patent lawsuits in Germany in recent years. He was also actively involved in achieving a fundamental decision issued by Germany’s Federal Court of Justice concerning the admissibility of post-grant amendments to claims, an issue which is of pre-eminent importance in opposition and nullity proceedings. His experience in patent litigation has led to his appointment as an arbitrator in various international arbitration proceedings. Dr Baumgärtel is a member of the board of the German Association for the Protection of Intellectual Property and treasurer of that association.
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Maikowski & Ninnemann Kurfurstendamm 54-55 Berlin 10707 Germany T +49 30 881 81 81 See firm profile p1020
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Bittner, Bernhard Co-founder – Hannke Bittner & Partner mail@hbp-ip.de | www.hbp-ip.de
Co-founder of Hannke Bittner & Partner, Bernhard Bittner is a patent attorney and an attorney at law and, therefore, one of the few attorneys in Germany with both a science and a law degree. His practice focuses on IP prosecution and litigation matters in Germany and Europe, especially patent opposition proceedings. Dr Bittner studied physics at the University of Regensburg and Wesleyan College, United States. He also studied law concurrently with his physics doctorate and completed both in 2000. From 2000 until 2004 he clerked at numerous courts, including the chambers of patent disputes at the Munich Regional Court. During that period, he also undertook studies to become a patent attorney through a renowned Munich IP law firm. In 2003 Dr Bittner passed the second Bar exam; in 2004 he passed the German patent attorney exam and in 2005 the European patent attorney qualification exam. In 2004 he set up Hannke Bittner & Partner in Regensburg with Dr Christian Hannke. The growing firm now has four offices in Germany. In 2008 Dr Bittner obtained an LLM in IP law from the University of Dusseldorf, becoming a ‘specialised attorney for IP rights’ (Fachanwalt für gewerblichen Rechtsschutz). Dr Bittner has taught IP law at the University of Regensburg since 2009 and at the University of Applied Sciences, Amberg–Weiden, since 2014. In 2009 Dr Bittner became a member of the examining board for specialised attorneys for IP rigths of the Bar Association of Nuremberg. Between 2009 and 2018 Dr Bittner and his team handled numerous proceedings in trademark cases in Germany and Europe concerning the question of whether the names of famous sites can be protected as trademarks (the Neuschwanstein cases). These proceedings ultimately reached the German Supreme Court and the Court of Justice of the European Union. Dr Bittner represents national and international clients in all fields of intellectual property.
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Hannke Bittner & Partner Prufeninger Street 1 Regensburg 93047 Germany T +49 941 58 62 09 0 F +49 941 58 62 09 20 Professional associations • AIPPI • FICPI • GRUR
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Blumenröder, Ulrich Partner – Grünecker Patent Attorneys and Attorneys-at-Law blumenroeder@grunecker.de | www.grunecker.de
Ulrich Blumenröder was admitted to the Bar in Germany in 1992. He received a PhD from the University of Salzburg and an LLM from the Dickinson School of Law of Pennsylvania State University. He became a partner at Grünecker in 1995. Mr Blumenröder provides counsel in all fields of intellectual property, with a special focus on patent litigation. Among his clients are small and medium-sized companies, as well as multinational groups mainly from Europe, Japan, the United States and China. As these cases often result in multi-jurisdictional litigation procedures, Mr Blumenröder has become familiar and comfortable with the needs that arise in the course of depositions for his US clients, the speed of International Trade Commission proceedings and the features of less confrontational procedures, such as mediation in both Germany and the United States. The many years of working with Japanese clients have taught Mr Blumenröder the importance not only of knowing the case and its strategic aspects inside out, but also of understanding the background of any consideration made by him and his team. Besides his engagement in litigious proceedings, Mr Blumenröder has also negotiated licence agreements all over the world. Lectures on problems and questions regarding the German and European patent system supplement Mr Blumenröder’s work. The forthcoming UPC system is currently a key issue. Recent patent cases in which Mr Blumenröder has been involved include Yamaha v Piaggio, Hytera v Motorola, Rehau v Bulthaup, Vögele v Caterpillar, Vestel v Access Advance, Intellectual Ventures II v ECI, Hanwha v LONGi and Alfa Laval v GEA. Grünecker was founded in 1924 and is among the largest IP law firms in Europe. The firm employs more than 100 attorneys and provides the full range of IP services in all technical and legal areas. The firm has its headquarters in Munich and branch offices in Berlin, Cologne and Paris.
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Grünecker Patent Attorneys and Attorneys-at-Law Leopoldstrasse 4 Munich 80802 Germany T +49 89 21 23 50 F +49 89 22 02 87 See firm profile p988 Professional associations • AIPPI • GRUR • LES
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Bühler, Dirk Partner – Maiwald Patentanwalts- und Rechtsanwalts-GmbH buehler@maiwald.eu | www.maiwald.eu
Dirk Bühler specialises in the management of product-related patent portfolios worldwide, as well as the associated opposition, nullity and infringement proceedings in the fields of pharmaceuticals, biotechnology, personalised therapy and diagnostics. He regularly advises clients on complex SPC matters and freedom-to-operate strategies in these areas. His extensive experience enables him to bring strategic IP consultancy and patent portfolio creation/management into alignment with the economic interests of his clients in a rapidly changing market environment. Clients value his interdisciplinary approach of combining questions relating to patent law with regulatory requirements for marketing authorisation of medicinal products in order to achieve the fullest protection possible. Dr Bühler has received numerous recognitions for his professional activities as patent attorney and regularly publishes articles on various aspects of patent law. Important cases • Representation of patentee in opposition appeal proceedings leading to the BGH X ZB 8/12 Dipeptidyl-Peptidase-Inhibitors decision • Representation of patentee in SPC application proceedings before the ECJ in case C-650/17 (Royalty Pharma/Sitagliptin) • Representation in nullity and opposition proceedings and litigation support concerning non-invasive prenatal diagnostics • Representation of patentees in opposition proceedings relating to basic CRISPR/Cas9 patents
Maiwald Patentanwalts- und Rechtsanwalts-GmbH Elisenhof Elisenstrasse 3 Munich 80335 Germany T +49 89 747 266 0 F +49 89 776 424 See firm profile p1022 Professional associations • GBM • GRUR
Practice areas • Pharma, biotech and diagnostics • Patents and utility models • Supplementary protection certificates • IP consulting Services • Complex patent portfolio management and patent prosecution • Opposition, appeal and nullity proceedings • Patent infringement proceedings • Supplementary protection certificates proceedings • Freedom-to-operate and validity analysis • Strategic consulting for biotech start-up companies
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Burrichter, Arwed Equity Partner – COHAUSZ & FLORACK aburrichter@cohausz-florack.de | www.cohausz-florack.de
Arwed Burrichter is a registered European and German patent attorney. He prosecutes and litigates European patents and provides strategic advice on patents and supplementary protection certificates (SPCs) in the fields of pharmaceuticals, biochemistry, organic chemistry and polymer chemistry. Dr Burrichter has frequently served as lead patent counsel in various important pan-European pharmaceutical and chemistry-related cases. As such, he has a substantial track record in EPO opposition and national nullity proceedings. Besides his litigation and EPO opposition work, Dr Burrichter maintains an extensive patent prosecution docket for his clients. Dr Burrichter is known for his perceptive counselling of US clients, which frequently rely on his advice for important strategic decisions in European patent prosecution and litigation matters. He developed an affinity for the United States and a keen sense of the particularities associated with the US legal system through more than five combined years of scientific and professional experience there, including a period as a foreign associate at Ropes & Gray LLP, New York (formerly Fish & Neave LLP). Dr Burrichter’s capacity for advocating and devising effective winning strategies makes him one of the most sought-after chemistry patent counsel in Germany. He has been consistently recognised in JUVE’s patent category as one of Germany’s most frequently recommended patent attorneys for chemistry-related matters. A frequent author and speaker, Dr Burrichter has recently addressed topics such as the upcoming Unified Patent Court, reform of the German patent nullification trial system and pharma patent term extensions via SPCs. Dr Burrichter studied organic chemistry at the University of Bonn, Germany and obtained his PhD from the University of Southern California, Los Angeles, working on hydrocarbon chemistry under the guidance of Nobel laureate George A Olah.
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COHAUSZ & FLORACK Bleichstrasse 14 Dusseldorf 40211 Germany T +49 211 904 900 F +49 211 904 9049 See firm profile p958 Professional associations • AIPLA • epi • FICPI
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Chrocziel, Peter Partner – BARDEHLE PAGENBERG Partnerschaft mbB chrocziel@bardehle.de | www.bardehle.com
With over 30 years’ experience in all aspects of IP and IT law, Peter Chrocziel counsels large international companies, especially in the technology, automotive and pharma industries, and help them enforce their IP rights. Mr Chrocziel acts for clients typically in cross-border patent infringement procedures. His clients value his experience and knowledge of US law. He is also an expert on arbitration proceedings in intellectual property and has published in that area. Mr Chrocziel is also focused on antitrust counselling, whether licensing or court proceedings. He has also advised on fair, reasonable and non-discriminatory licensing issues and represented clients in such proceedings. Further, he acts for several clients in their worldwide IP transactional activities. This includes corporate transactions with a focus on intellectual property and information technology, as well as R&D agreements and counselling in complex corporate transactions. Recommended by legal guides as a ‘go-to guy’ for both intellectual property and information technology, Mr Chrocziel is recognised as “a high-calibre practitioner” and is regularly listed as a recommended expert for litigation and licensing. He has recently authored books on IP arbitration and IP and competition law. Mr Chrocziel is a professor at the University of Erlangen-Nurnberg, Bavaria, where he teaches patent, trademark and competition law. He was admitted to the German Bar in 1983 and is also admitted to practise before the New York courts, the US Court of Appeals for the Federal Circuit and the US Court of International Trade. He was president of the Licensing Executives Society (LES) Germany for five years and president of LES International from 2005 to 2006. He is also a certified licensing professional.
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BARDEHLE PAGENBERG Partnerschaft mbB Prinzregentenplatz 7 Munich 81675 Germany T +49 89 928 050 F +49 89 928 054 44 See firm profile p930 Professional associations • ABA • AIPPI • LES
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Dahm, Sören Partner – Kather Augenstein Rechtsanwälte PartGmbB dahm@katheraugenstein.com | www.katheraugenstein.com
Sören Dahm joined the team around Peter Kather and Christof Augenstein in 2012 and he stayed with the team when Kather Augenstein was founded in 2016. Mr Dahm has already been involved in hundreds of IP infringement proceedings since he was admitted to the Bar in 2012. Mr Dahm specialises in patent infringement litigation. He advises and represents national and international clients before national courts of all instances, the Federal Patent Court and the European Patent Office. In addition, he has also accompanied and coordinated crossborder series of lawsuits with various national teams. Mr Dahm has practical experience from his work in numerous technical fields – for example, in telecommunications, mechanical engineering, automotive and medical technology. His passion and the core of its expertise is, however, chemistry. In addition to patent law, Mr Dahm also represents clients in relation to trademark law, design law and unfair competition law issues, especially in infringement proceedings. Since his appointment as partner in mid-2018, Mr Dahm has gradually established himself in the field of IP litigation in Germany. Besides The Legal 500, Best Lawyers also mentions him in its current edition.
Kather Augenstein Rechtsanwälte PartGmbB Bahnstraße 16 Duesseldorf 40212 Germany T +49 211 5135360 See firm profile p1010 Professional associations • GRUR • VPP Sample client list • BASF • Knorr-Bremse
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Ehlers, Jochen Partner – Eisenführ Speiser jehlers@eisenfuhr.com | www.eisenfuhr.com
Jochen Ehlers mainly works on patent infringement cases and on the prosecution and defence of intellectual property, where his litigation experience stands him in very good stead. Mr Ehlers also has special experience in writing and defending national, European and international patent applications. He also advises clients on all national and European licensing matters. His technical focus is on the fields of telecommunications engineering, semiconductor technology, computer software, image processing, as well as artificial intelligence. Mr Ehlers represented the winning plaintiffs in the Orange Book Standard case and also in the recent Sisvel v Haier case before the Federal Court of Justice, which both attracted considerable attention as landmark decisions on the antitrust defence (‘FRAND defence’) for avoiding injunctions in SEP patent infringement proceedings. Mr Ehlers is the publisher and co-author of the Beck’scher Kommentar on the European Patent Convention. In addition, he chairs the Special Committee Q176 of the International Association for the Protection of Intellectual Property for drafting Implementing Regulations for the revised European Patent Convention 2000 and lectures on the strategic deployment of patents at the German Lawyers’ Academy. Mr Ehlers is recommended every year by several well-known specialist media as one of Germany’s best lawyers in the field of IP rights. He studied mathematics and physics at the University of Hamburg.
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Eisenführ Speiser Johannes-Brahms-Platz 1 Hamburg 20355 Germany T +49 4030 9744 0 F +49 4030 9744 44 See firm profile p980 Professional associations • AIPPI • LES • PAK
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Ehlich, Eva Partner – Maiwald Patentanwalts- und Rechtsanwalts-GmbH ehlich@maiwald.eu | www.maiwald.eu
Eva Ehlich represents European, US and Japanese companies from the chemical, pharmaceutical and industrial chemicals sectors, whom she advises and assists in prosecuting, defending, enforcing and challenging IP rights in Germany, Europe and worldwide. In addition to preparing freedom-to-operate and validity analyses, she has profound experience in patent litigation and strategic patent filing, especially in the area of drug delivery, pharmaceutics and medical uses (small molecules and biologics). She has particular expertise in the conduct of complex appeal proceedings before the Appeal Boards of the European Patent Office, as well as petitions for review in accordance with Article 112a of the Enlarged Board of Appeal of the European Patent Office, and in advising in corresponding constitutional complaints at the German Federal constitutional Court. Dr Ehlich has received numerous recognitions for her professional activities as a patent attorney. Important cases Dr Ehlich has attended to and represented crucial patent portfolios with respect to small molecules and vaccines in opposition and appeal proceedings as well as petition for review proceedings before the European Patent Office. She was also involved in various infringement proceedings and proceedings before the German Constitutional Court concerning, among other drugs, Oxygesic and Butrans/Norspan. Practice areas • Pharmaceuticals and biotech • Organic chemistry and polymers • Inorganic and construction materials • Patents and utility models • IP consulting
Maiwald Patentanwalts- und Rechtsanwalts-GmbH Elisenhof Elisenstrasse 3 Munich 80335 Germany T +49 89 747 266 0 F +49 89 776 424 See firm profile p1022 Professional associations • AIPPI • FICPI • GRUR
Services • Patent prosecution and portfolio management • Filing strategies and drafting patent applications • Freedom-to-operate and validity opinions • Opposition and nullity proceedings • Patent litigation
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Eickelkamp, Thomas Partner – Grünecker Patent Attorneys and Attorneys-at-Law eickelkamp@grunecker.de | www.grunecker.de
Thomas Eickelkamp has been a partner at Grünecker since 2004. He joined the firm in the late 1990s and has been a European and German patent attorney since 2001. His practice is primarily focused on patent prosecution matters, including appeal and opposition procedures and opinion work. Together with his team of patent attorneys and patent professionals, Mr Eickelkamp represents international and domestic large-scale companies, as well as small and medium-sized companies, in all fields of information and communications technology. Mr Eickelkamp has a diploma in electrical engineering from the Technical University of Berlin and a PhD in physics from the Max Planck Institute and University of Stuttgart. Following his studies, he secured a year-long postdoctoral position at the Centre for Material Development and Structural Studies in Toulouse. Passionate about software technologies, Mr Eickelkamp’s main areas of practice are computer science, software, business methods and allegedly non-technical inventions. He also has broad expertise in communication technologies, telecoms, automation and electronics. Grünecker was founded in 1924 and is among the largest IP law firms in Europe. The firm employs more than 100 attorneys and provides the full range of IP services in all technical and legal areas. The firm has its headquarters in Munich and branch offices in Berlin, Cologne and Paris.
Grünecker Patent Attorneys and Attorneys-at-Law Leopoldstrasse 4 Munich 80802 Germany T +49 89 21 23 50 F +49 89 22 02 87 See firm profile p988 Professional associations • FICPI • German Physical Society
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Emig, Ralf Partner – Maikowski & Ninnemann emig@maikowski-ninnemann.com | www.maikowski-ninnemann.com
Ralf Emig, an engineer by training and a German and European patent attorney, specialises in mechanical engineering, telecommunications and software – particularly in automotive engineering, automation technology and standard related inventions. Mr Emig has vast experience in patent prosecution, including drafting of German, European and international patent applications and the handling and coordination of procedures throughout the world. He is also regularly involved in high-profile litigation cases – for instance, in the field of telecommunications. Mr Emig studied mechanical engineering at the University of Karlsruhe (now Karlsruhe Institute of Technology) and the Escuela Técnica Superior del Universidad del País Vasco - Bilbao, Spain with a focus on fluid dynamics and combustion engines. He joined Maikowski & Ninnemann in 2007 and has been a partner at the firm since 2016. Mr Emig is a member of the German Association for the Protection of Intellectual Property, the Licensing Executives Society and the German Association of Intellectual Property Experts. He is a tutor at the Centre for International Intellectual Property Studies and regularly lectures at the Humboldt-Universität zu Berlin for the master’s in IP and media law.
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Maikowski & Ninnemann Kurfuerstendamm 54-55 Berlin 10707 Germany T +49 3088 1818 1 See firm profile p1020
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Engelhard, Markus Partner – BOEHMERT & BOEHMERT engelhard@boehmert.de | www.boehmert.com
Markus Engelhard is active in all fields of life sciences, pharmacology and biotechnology, having a particular focus on therapeutic biomolecules and pharmaceutically active agents. His clients include start-up companies, small and medium-sized enterprises, multinational corporations, universities and academic research institutions. He supports them in acquiring and enforcing IP rights, building up patent portfolios and representing them in opposition, invalidation and infringement proceedings. Moreover, he provides professional advice to international organisations, government agencies and technology transfer agencies. For a number of pharmaceuticals clients, he continues to be active in obtaining patent term extensions and supplementary protection certificates. After obtaining his PhD from the University of Cambridge, Mr Engelhard joined BOEHMERT & BOEHMERT in 1998 and has been with the firm since then. As part of his professional activities, he has lectured on behalf of WIPO at its Regional Capacity Building Workshops on Patent Drafting for developing countries and has trained patent agents from nearly 30 countries. He also lectures regularly on patent law issues both in Germany and abroad, with much of his work focusing on Asia. Mr Engelhard is a member of the Licensing Executives Society, the International Federation of Intellectual Property Attorneys, the International Association for the Protection of Intellectual Property, the German Association for the Protection of Intellectual Property and the Association of Intellectual Property Experts.
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BOEHMERT & BOEHMERT Pettenkoferstrasse 22 Munich 80336 Germany T +49 89 55 96 80 F +49 89 55 96 85 090 See firm profile p934 Professional associations • FICPI • LES • VPP
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Feldmeier, Jürgen Managing Partner – Prüfer & Partner mbB feldmeier@pruefer.eu | www.pruefer.eu
Jürgen Feldmeier is a German and European patent attorney with comprehensive experience in prosecution procedures for patents, trademarks and designs before the German Patent and Trademark Office, the EPO and the EU Intellectual Property Office. He has frequently served as lead patent counsel in various litigation proceedings, including infringement, nullity and opposition proceedings, before the patent offices and the courts of Munich, Dusseldorf and Mannheim, as well as the higher regional courts. Due to his technical background in mechanical engineering, he possesses extensive knowledge and experience in the fields of automotive industry, machine tools and components, precision engineering, mechanical components, medical technology, sports equipment, mechatronic components, control and regulation technology, and process engineering, especially in the food industry. Mr Feldmeier holds a diploma in mechanical engineering with a focus on design and development from the Technical University of Munich. He also has an LLM in European intellectual property. Mr Feldmeier has been a patent attorney for 25 years and for more than 20 years he has been a managing partner at Prüfer & Partner, an IP boutique which has grown to a renowned IP law firm, comprising four equity partners, more than 23 patent attorneys and attorneys at law, and almost 70 staff members.
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Prüfer & Partner mbB Sohnckestrasse 12 Munich 81479 Germany T +49 89 69 39 210 F +49 89 64 22 238 See firm profile p1050 Professional associations • EPLIT • FICPI • INTA
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Geschke, Eva Partner – Wildanger Kehrwald Graf von Schwerin & Partner mbB geschke@wildanger.eu | www.wildanger.eu
Eva Geschke is a partner at Wildanger Kehrwald Graf von Schwerin & Partners mbB, one of the remaining specialised Dusseldorf boutiques focused solely on IP work. The firm is prominent in shaping Germany’s patent litigation landscape. With more than 20 years’ experience in the IP field, Ms Geschke has handled hundreds of patent cases. This wealth of courtroom experience is reflected in her in-depth understanding of not only case law, but also the characteristics of the different German courts handling patent cases. Ms Geschke primarily handles patent litigation matters before the various patent litigation courts throughout Germany. She advises a broad selection of national and international clients. She is also widely known for representing a host of German innovative medium-sized businesses. Her work covers a wide range of technical fields, including mechanical and electrical engineering, biotechnology and chemicals. Ms Geschke regularly handles EPO opposition and nullity proceedings at the Federal Patent Court and the Federal Supreme Court. She is one of the original co-authors of the leading patent law handbook, The Enforcement of Patents in Practice. She regularly speaks at seminars and teaches specialised courses on IP law. The latest JUVE German Commercial Law Firms Handbook lists Ms Geschke as one of the top eight leading partners in patent litigation aged 50 or under (“when you stop thinking about it, she pulls another ace out of her sleeve”, competitor). She has been listed as a leading individual by both Chambers Europe 2020 (“Interviewees describe her as ‘very talented” and ‘very straightforward and a good thinker’”) and The Legal 500 2020 for patent litigation. Ms Geschke is a member of major IP associations, including the German Association for the Protection of Intellectual Property, the International Association for the Protection of Intellectual Property, the European Patent Lawyers Association, the Association of Intellectual Property Experts, the Intellectual Property Owners Association and the American Intellectual Property Law Association.
488
IAM Patent 1000
Wildanger Kehrwald Graf von Schwerin & Partner mbB Couvenstrasse 8 Dusseldorf 40211 Germany T +49 211 497 67 83 0 F +49 211 493 0265 See firm profile p1092 Professional associations • GRUR • IPO • VPP
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Gobert, Dominique Partner – Zimmermann & Partner Patentanwälte mbB gobert@zimpat.com | www.zimpat.com
Dominique Gobert is a partner at Zimmermann & Partner Patentanwälte mbB, a medium-size IP firm with several offices in Germany. Dr Gobert’s technical background is in physics, with his work focusing mainly on the fields of materials engineering, process and automation technology, sensors for medical and industrial applications, and power transmission. Dr Gobert is a qualified German and European patent attorney and has worked in the IP field since 2005. He represents large multinationals and helps clients develop and optimise their patent portfolios. This includes analysis and consulting services regarding portfolio and prosecution strategy, as well as representation before the German Patent Office and the EPO. Dr Gobert’s clients appreciate not only his deep knowledge of the technology, but also his commitment to give pragmatic advice based on his understanding of their business model and of the competitive landscape. In addition, Dr Gobert regularly helps his clients enforce their patents and defend their businesses against competitors’ IP rights. Dr Gobert has represented a vast number of opposition, nullity and appeal proceedings before the German Patent Office, the EPO and the German Patent Court, and has supported infringement actions before the German civil courts. Dr Gobert has also experience as a court-appointed technical expert in patent litigation proceedings and is a tutor at the EPO European Patent Academy. Dr Gobert studied physics in Regensburg and Munich (Germany), Montpellier (France) and Urbana-Champaign (United States), and received a Bavarian scholarship for especially talented students. He has a PhD from the Technical University Aachen in the field of superconducting and magnetic effects in solids and was awarded the Borchers Medal for his thesis. For Dr Gobert, the key to successful patent proceedings is a wellfounded understanding of not only his clients’ technology, but also their business goals and strategy.
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Zimmermann & Partner Patentanwälte mbB Josephspitalstrasse 15 Munich 80331 Germany T +49 89 23269 0 F +49 89 23269 232 See firm profile p1102 Sample client list • ABB • DynaEnergetics • NGK Spark Plug • Nippon Steel • Schindler AG
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Göken, Klaus G Partner – Eisenführ Speiser kgoken@eisenfuhr.com | www.eisenfuhr.com
Klaus G Göken specialises in patent infringement proceedings and licensing negotiations. Another focus of his work is the development of corporate strategies for successful IP exploitation. In this respect, he is particularly familiar with the IP approach of ‘hidden champion’ companies. With a background in electrical engineering, Mr Göken has special expertise in the fields of renewable energies, electronics, TV and telecoms. On behalf of well-known market leaders in these fields, he has been involved in several landmark EPO decisions. Since the start of his career, Mr Göken has represented clients in more than 750 oral proceedings at the EPO – particularly in opposition proceedings – and at the German Patent and Trademark Office and the Federal Supreme Court, particularly in nullity actions. He has advised clients in more than 50 different licensing campaigns and assisted with the finalisation of over 300 licensing agreements. Mr Göken’s extensive prosecution and enforcement work has found its way into the development of several IP management programmes – for example, programmes for filing patent applications and managing patents which have become standard relevant, as well as programmes for avoiding oppositions and for product-oriented prosecution in various technical fields. Mr Göken is director of the University of Strasbourg’s Centre for International Intellectual Property Studies seminar on European patent law for north Germany. He also teaches IP law at the City University of Applied Sciences in Bremen.
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IAM Patent 1000
Eisenführ Speiser Am Kaffee-Quartier 3 Bremen 28217 Germany T +49 4213 6350 F +49 4213 3787 88 See firm profile p980 Professional associations • AIPPI • LES • PAK
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Grohmann, Arno Partner – UNIT4 IP info@unit4ip.de | www.unit4ip.de
Arno Grohmann is an attorney at law, a certified specialist for IP law and a founding partner of UNIT4 IP, an IP boutique law firm located in Stuttgart. Dr Grohmann has significant expertise in IP law and 14 years of experience in litigation. He advises and represents companies of all kinds in IP matters, from start-ups to small and medium-sized enterprises, to multinationals. Through his years of practice, Dr Grohmann has gained specific experience in the automotive industry and worked in a variety of innovative technology sectors such as sensors, semiconductors, e-mobility, pharma, logistics, scaffolding systems, washing/deburring machines, 3D printing, artificial intelligence and energy storage systems. His practice focuses primarily on patent law, trade secrets and unfair competition law, as well as trademark, design and copyright law. He routinely represents his clients in technically advanced legal disputes. He handles patent infringement and nullity cases in close cooperation with external patent attorneys and also handles comprehensive and complex matters in close cooperation with the client’s in-house team. A further emphasis of his work is on drafting and negotiating IP-related agreements – in particular, licensing, know-how and R&D agreements. Such agreements often involve international aspects and unique business models. Dr Grohmann studied law in Jena, Germany, and spent a part of his legal clerkship in a law firm in Helsinki, Finland. He received his PhD in law from Friedrich Schiller University in Jena. Before founding UNIT4 IP together with three partners, he was an attorney at law between 2007 and 2015 with Lichtenstein, Körner & Partners in Stuttgart. His remarkable list of publications includes various book contributions, essays and comments on court rulings. He also gives speeches and professional seminars at recognised training institutes on relevant IP topics. Dr Grohmann is member of the German Association for Intellectual Property and Copyright, the German Association of Intellectual Property Professionals and the Licensing Executives Society.
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UNIT4 IP Stolz Stelzenmüller Weiser Grohmann Partnerschaft mbB Rechtsanwälte Jagerstrasse 40 Stuttgart 70174 Germany T +49 711 7223690 See firm profile p1076 Professional associations • GRUR • LES • VPP
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Gross, Felix Partner – Maikowski & Ninnemann gross@maikowski-ninnemann.com | www.maikowski-ninnemann.com
Felix Gross is a chemical engineer by training and a German and European patent attorney. He specialises in mechanical and process engineering as well as in telecommunication and software patents. Dr Gross is regularly involved in major series of patent disputes related to telecommunication and software-related patents, including infringement procedures before the district and appeal courts, and nullity procedures before the Federal Patent Court. In addition, he has vast experience in patent prosecution, including the drafting of German and European patent applications, and the handling and coordination of procedures throughout the world. He studied mechanical engineering and process engineering at RWTH Aachen and Imperial College London. He obtained his doctoral degree at ETH Zürich in the field of computer simulation of chemical processes (1991-95). He also holds an LLM in European IP law (2014). He has been a partner at the firm since 2000. Dr Gross has been lecturing at the Technische Universität Berlin since 2002 and was appointed as honorary professor for patent law in 2009. Since 2012 Dr Gross has also been a regular lecturer in patent law at ETH Zürich.
Maikowski & Ninnemann Kurfuerstendamm 54-55 Berlin 10707 Germany T +49 3088 1818 1 See firm profile p1020
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Haertel, Alexander Partner – BARDEHLE PAGENBERG Partnerschaft mbB alexander.haertel@bardehle.de | ww.bardehle.com
Alexander Haertel specialises in patent litigation in all technical areas. His expertise also covers unfair competition law, as well as design and trade secrets. As a litigator, Mr Haertel has successfully handled hundreds of cases for his clients, always aiming to combine high-quality and relevant advice. Mr Haertel has expert knowledge with a broad technological background, particularly in the automotive and telecommunications industry, life sciences, glass manufacturing, mechanical engineering, 3D printing and many more. He represents clients in patent infringement proceedings and in nullity, opposition and cancellation proceedings before the various German infringement courts, the German Federal Patent Court, the German Federal Court of Justice, the European Patent Office and the German Patent and Trademark Office. His vast experience in coordinating and conducting cross-border patent litigation proceedings makes him a sought-after partner of his clients who operate on an international scale.
BARDEHLE PAGENBERG Partnerschaft mbB Breite Str 27 Dusseldorf 40213 Germany T +49 211 478 13 0 F +49 211 478 13 31 See firm profile p930 Professional associations • EPLAW • GRUR • LESI
www.IAM-media.com
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Haft, Klaus Partner – HOYNG ROKH MONEGIER klaus.haft@hoyngrokh.com | www.hoyngrokhmonegier.com
A German-qualified attorney (Rechtsanwalt) and physicist (master’s), Klaus Haft is a trial lawyer in the field of IP law with a particular emphasis on patent litigation. In addition, he advises clients on licence agreements, research and development agreements, employee inventions and trade secrets. His background in physics and the indepth understanding of complex technology that follows have led to a particularly impressive track record in litigating high-tech patents and patents on medical devices. Mr Haft represents clients before the national German courts, collaborates on opposition proceedings, and plans and coordinates multinational litigation cases. Mr Haft studied in Würzburg and Munich. He wrote his diploma thesis at the European Laboratory for Particle Physics, CERN, in Geneva. In parallel to his studies, he worked as a freelancer for a Munich-based patent attorney firm for more than 10 years. Mr Haft has been a board member of the European Patent Lawyers Association for seven years, the last two as president, and currently serves as a member of the advisory board. In addition, he is president elect of the Licensing Executives Society Germany and a member of the executive board of the Munich IP Dispute Resolution Forum. He regularly publishes on questions of IP law and speaks on patent law issues at conferences.
HOYNG ROKH MONEGIER Steinstrasse 20 Dusseldorf 40212 Germany T +49 211 550 220 F +49 211 550 22 550 See firm profile p998 Professional associations • EPLAW • German Physics Society • LES
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IAM Patent 1000
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Hahn, Tobias Partner – HOYNG ROKH MONEGIER tobias.hahn@hoyngrokh.com | www.hoyngrokhmonegier.com
Tobias Hahn was admitted to the Bar in 2004 and advises German and international clients in all matters of intellectual property. He specialises in national and international patent litigation, as well as subsequent proceedings for damages. He also has longstanding experience in unfair competition and design rights. He mainly litigates in the areas of telecommunications, electronics, medical devices, pharmaceuticals, chemicals, automotive and mechanics, and has extensive experience in coordinating parallel US and European litigation. A significant part of his practice focuses on litigation involving standard-relevant patents. He advises and represents several international companies on FRAND and antitrust defences. He further represents clients in opposition, revocation and nullity proceedings before the German and European Patent Offices, the German Patent Court and the German Federal Court of Justice and advises clients in arbitration proceedings. Moreover, he has extensive experience in drafting and negotiating licence agreements, R&D contracts, software agreements and know-how agreements. His PhD, which he obtained from the Free University Berlin, deals with the liability of companies for acts of unfair competition by third parties. Mr Hahn regularly publishes on current issues of IP and procedural law and has written a procedural commentary on inspection proceedings. He is a co-author of the e-learning module on patent litigation of the European Patent Academy of the European Patent Office for the Judicial Training of, among others, future judges of the Unified Patent Court. He is also a frequent speaker at conferences on patent law and licensing.
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HOYNG ROKH MONEGIER Steinstrasse 20 Dusseldorf 40212 Germany T +49 0211 550 220 F +49 211 550 22 550 See firm profile p998 Professional associations • EPLAW • IPO • LES
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Hansen, Norbert Partner – Maiwald Patentanwalts- und Rechtsanwalts-GmbH hansen@maiwald.eu | www.maiwald.eu
Norbert Hansen advises and represents major multinational clients on matters relating to national and international patent protection. His professional activities include securing, maintaining, enforcing and challenging patents and utility models, IP portfolio management and employee invention law. A large part of his work is concerned with opposition and appeal proceedings before the European Patent Office. His specialist fields are chemistry, chemical engineering, material sciences and semi-conductors. Mr Hansen is co-author of several scientific publications in the field of homogeneous and heterogeneous catalysis and solidstate chemistry. He is also a lecturer in IP law at the Faculty for Chemistry and Pharmaceutics of the Ludwig Maximilian University of Munich and a member of the International Association for the Protection of Intellectual Property, the International Federation of Intellectual Property Attorneys, the Licensing Executives Society, the American Intellectual Property Law Association and the German Chemical Society. Important cases • Representation of patentees before the EPO’s Enlarged Board of Appeal in the G1/16 case, where the board handed down a landmark decision on the allowability of disclaimers in patent claims Practice areas • Organic chemistry and polymers • Inorganic and construction materials • Food and agriculture • Displays and light • Patents and utility models • Employee invention law • IP consulting
Maiwald Patentanwalts- und Rechtsanwalts-GmbH Elisenhof Elisenstrasse 3 Munich 80335 Germany T +49 89 747 266 0 F +49 89 776 424 See firm profile p1022 Professional associations • AIPLA • AIPPI • FICPI
Services • Patent prosecution and portfolio management • Filing strategies and drafting patent applications • Freedom-to-operate and validity analyses • Opposition and appeal proceedings • Nullity and patent litigation proceedings
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IAM Patent 1000
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Harrison, Robert Founding Partner – SONNENBERG HARRISON robert.harrison@shp.law | www.sonnenbergharrison.law
Robert Harrison holds a physics degree from Oxford University, an MSc in solid state physics from Sheffield University and a PhD in semiconductor physics and engineering also from Sheffield University. He is a one of the founding partners of SONNENBERG HARRISON. Dr Harrison has been working in the field of intellectual property since 1987 when he started work as a patent examiner at the European Patent Office before joining the in-house team of IBM in Stuttgart, Germany, in 1990. He joined WL Gore and Associates in 1995 as European IP counsel before leaving to join a law firm in 2001. Dr Harrison is a registered German, French and European patent and trademark attorney. His background in the corporate world means that he is businessfocused on his clients and he is a member of several advisory boards. He is a graduate of the accredited Financial Times Non-Executive Director Diploma programme. With his strong Australian connections, Dr Harrison has served on the board of the German Australian Business Council for many years. He has also served as chair of the American Chamber in Europe’s IP Subcommittee and the High-tech Committee of the Executive Licensing Society International. Dr Harrison lectures extensively on IP rights, technology transfer, artificial intelligence and data science. He speaks English, French and German, and has a good knowledge of Spanish, Italian, Dutch and Portuguese.
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SONNENBERG HARRISON Herzogspitalstraße 10a Munich 80331 Germany T + 49 89 23 23 00 F +49 89 23 230 230 Professional associations • epi • German Chamber of Patent Attorneys • Institute of Electronic and Electrical Engineers
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Haupt, Christian Partner – BARDEHLE PAGENBERG Partnerschaft mbB christian.haupt@bardehle.de | www.bardehle.com
Christian Haupt’s professional activities focus on the prosecution of both patents and utility models before the German and European patent offices, as well as on defending and attacking patents and utility models in opposition proceedings before the competent patent offices, in particular in the fields of mechanical engineering (eg, sports equipment and medical engineering), telecommunications (eg, LTE mobile radio communication standards and mobile terminals), IT and computer-implemented inventions, electrical engineering and navigation technology. Another focus of his is the enforcement of IP rights in patent infringement and (parallel) nullity proceedings before the Federal Patent Court, as well as in the context of expert opinions on infringement and validity.
BARDEHLE PAGENBERG Partnerschaft mbB Prinzregentenplatz 7 Munich 81675 Germany T +49 89 928 05 0 F +49 89 9280 5 444 See firm profile p930
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Henke, Volkmar Partner – Eisenführ Speiser vhenke@eisenfuhr.com | www.eisenfuhr.com
Volkmar Henke is a litigator with outstanding professional experience in patent infringement cases and in patent licensing negotiations, especially in the fields of telecoms, semiconductors and circuit design, electrical engineering, image processing and audio coding. In addition to holding a JD and having years of professional legal experience, Mr Henke also has a full scientific background from his studies at Hamburg University and the University of Paris-Sud (Orsay), from which he gained a master’s in physics. This double qualification enables Mr Henke to be particularly involved in both the legal and the technical aspects of cases. He is therefore used to working with clients’ technical experts and technically skilled patent attorneys. Mr Henke provides legal advice in complex patent litigation cases to major multinational groups, innovative medium-sized companies and patent pool administrators. He not only continuously represents his clients before the German patent litigation chambers, in particular Mannheim and Dusseldorf, and nullity senates of the Federal Patent Court and the Federal Court of Justice, but he also coordinates substantial cross-border campaigns in multiple jurisdictions. In recent years, he has been one of the busiest German attorneys in the field of standard-essential patent litigation. Mr Henke regularly publishes articles and has authored a textbook on co-owned inventions.
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Eisenführ Speiser Johannes-Brahms-Platz 1 Hamburg 20355 Germany T +49 40 309 744 0 F +49 40 309 744 44 See firm profile p980 Professional associations • AIPPI • GRUR
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Hermann, Bettina Partner – VO Patents & Trademarks b.hermann@vo.eu | www.vo.eu
Bettina Hermann began her career in IP protection in 2001 at a German IP boutique. She studied biology at the Technical University of Munich, with an emphasis on microbiology, genetics, biochemistry and clinical chemistry; she received her PhD in biology from the same university, including practical work at the Max Planck Institute of Psychiatry, Munich, following which she undertook postdoctoral research at the Institute of Genetics and Molecular and Cellular Biology in Illkirch, France. Ms Hermann has experience in advising small to medium-sized biotech companies, particularly in the field of cancer therapies, and providing patentability, validity and freedom-to-operate analyses for investors. She represents nullity cases before the German Federal Patent Court and is involved in infringement cases before German district courts. Ms Hermann has been a patent and trademark attorney at VO since 2008, and is head of the firm’s Munich office. She has also been a European litigator at the Centre for International Intellectual Property Studies since 2010. Ms Hermann is a member of the editorial board of VO’s newsletter and was a member of the steering committee of women in ip eV. Previous testimonials for Ms Hermann include the following: • Bettina Hermann “provides excellent and timely advice, always with a kind and helpful manner” in her preferred fields of microbiology, genetics and chemistry (IAM Patent 1000, 2019); and • “Biotechnology authority Bettina Hermann at VO is assiduous in her drafting of applications; nothing escapes her gimlet eye” (IAM Patent 1000, 2018).
VO Patents & Trademarks Rindermarkt 5 Fourth floor Munich 80331 Germany T +49 89 890 63 69 36 See firm profile p1082 Professional associations • AIPPI • FICPI • LES
She has also been recognised as an IP Star (2018, 2019) by Managing Intellectual Property.
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IAM Patent 1000
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Herzog, Markus Partner – Weickmann & Weickmann PartmbB mherzog@weickmann.de | www.weickmann.de
Markus Herzog is a patent attorney and partner in the engineering group of Weickmann & Weickmann in Munich. With over 20 years of experience, Dr Herzog advises his clients in all areas of intellectual property, including patent drafting, filing and prosecution, oppositions (defending and attacking), validity and infringement (opinions and litigation) and freedom-to-operate opinions, among others. He represents worldwide operating companies, as well as small and medium-sized companies and individual inventors in Germany, Europe, the United States and Japan. Dr Herzog’s areas of expertise include opposition and appeal proceedings before the European Patent Office and national German nullity proceedings before the German Patent Court and the German Federal High Court. In patent infringement proceedings he cooperates with specialised German attorneys at law in representing clients before German civil courts. The clients’ economic interests are always a central concern for Dr Herzog when advising and developing strategies for his clients. As he is convinced that, in many cases, out-of-court settlements serve clients’ interests better than lengthy and cost-intensive court proceedings, he has worked intensively with alternative dispute resolution and earned a qualification as a business mediator from the Munich Centre for Dispute Resolution. Dr Herzog is a member of the managing board of the Christiane Herzog Foundation, a non-profit, non-governmental organisation supporting children and adults suffering from cystic fibrosis.
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Weickmann & Weickmann PartmbB Richard-Strauss-Strasse 80 Munich 81679 Germany T +49 8945 5630 F +49 8945 5639 99 See firm profile p1088 Professional associations • FICPI
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Heselberger, Johannes Managing Partner – BARDEHLE PAGENBERG Partnerschaft mbB heselberger@bardehle.de | www.bardehle.com
Johannes Heselberger represents clients in patent infringement proceedings before German courts at first and second instance, and gives advice and support to clients in appeal proceedings and complaints against denial of leave to appeal before the German Federal Court of Justice. In addition, Mr Heselberger plays a leading and coordinating role in patent nullity proceedings before the German Federal Patent Court and in appeal proceedings before the German Federal Court of Justice, as well as in opposition proceedings before the European Patent Office and the German Patent and Trademark Office. A physics graduate, Mr Heselberger has comprehensive technical experience in the field of telecommunications, medical devices and the automotive industry. Pharmaceutical and biotech cases, including extremely rare proceedings for a compulsory licence, are also part of his field of practice. He also has extensive experience in standard-essential patent and fair, reasonable and non-discriminatory litigations, as well as in enforcement of and defence against licence programmes. Mr Heselberger successfully attended to a number of important, often transnational, patent infringement proceedings for German and international large-scale companies, as well as for owner-operated medium-sized enterprises. Depending on the size and complexity of a case, he heads compact teams of attorneys at law and patent attorneys or larger working groups in cooperation with his partners at the firm. His dual qualification as an attorney at law (1994) and European patent attorney (1999) combined with his technical background enables him to understand both the legal and technical aspects of a case comprehensively and to coordinate infringement proceedings and proceedings on legal validity effectively. Mr Heselberger frequently speaks on topics in the patent infringement and valuation fields. He teaches patent law at the Munich Intellectual Property Law Centre.
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BARDEHLE PAGENBERG Partnerschaft mbB Prinzregentenplatz 7 Munich 81675 Germany T +49 89 928 050 F +49 89 928 054 44 See firm profile p930 Professional associations • GRUR
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Hessel, Tobias J Partner – HOYNG ROKH MONEGIER tobias.hessel@hoyngrokh.com | www.hoyngrokhmonegier.com
Tobias J Hessel was admitted to the Bar in 2009. He advises and represents clients in all IP-related matters, with a strong focus on patent litigation. Mr Hessel works for national and international clients in various industries (automotive, pharma, semiconductors and telecommunications), which oftentimes makes the coordination of lawsuits in multiple jurisdictions necessary. His expertise is not limited to the coordination of patent cases pending in different jurisdictions: he also advises clients on the interface between patent and antitrust law (eg, relating to FRAND defences and licensing of SEP portfolios). Over the recent years, Mr Hessel has represented client in numerous infringement cases before German regional courts (mostly Mannheim/Karlsruhe and Dusseldorf, both at first and second instance). In parallel, he handled nullity actions before the Federal Patent Court and the corresponding appeal proceedings before the Federal Court of Justice. Mr Hessel studied law at the University of Osnabrück with a focus on antitrust and IP law. He also holds a PhD in criminal law from the University in Osnabrück. Mr Hessel is a visiting lecturer in patent law at the law faculty of the Johann Wolfgang Goethe University, Frankfurt am Main, and at the law faculty of the University of Osnabrück.
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HOYNG ROKH MONEGIER Steinstrasse 20 Dusseldorf 40212 Germany T +49 211 550 220 F +49 211 550 22 550 See firm profile p998
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Heubeck, Christian Partner – Weickmann & Weickmann PartmbB cheubeck@weickmann.de | www.weickmann.de
Christian Heubeck joined Weickmann & Weickmann in 2004 as a trainee and became a partner in 2011. He graduated in chemistry from Julius Maximilian University Würzburg and obtained his PhD in biochemistry, in particular protein chemistry, isolation and purification, from the same institution. Dr Heubeck has gained extensive experience in the preparation of and advice on IP strategies and patent portfolios, including – in particular – the preparation of patent applications and patent grant proceedings, as well as defending IP rights and attacking third parties’ rights before the European Patent Office (EPO). He appears frequently before the EPO Opposition and Appeal Boards. Dr Heubeck’s practice focuses on the fields of organic and inorganic chemistry, pharmacy and life sciences, in particular molecular biology, biochemistry, immunology and physiological chemistry, as well as medical devices. He writes regularly on the latest issues in the field of industrial property rights, as well as topics such as patenting stem cells and genes in Europe, artificial intelligence and pharmaceutical development and patenting personalised medicines in Europe. He is also a regular juror for and contributor to Evobis’s Bavarian Business Plan Competition, as well as to the Science4Life Business Plan Competition in Germany.
Weickmann & Weickmann PartmbB Richard-Strauss Strasse 80 Munich 81679 Germany T +49 89 455 63 0 See firm profile p1088 Professional associations • FICPI • GDCh
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Hilge, Hetti Partner – rospatt osten pross hilge@rospatt.de | www.rospatt.de
Hetti Hilge’s focus is on patent infringement proceedings for German and international clients. She is experienced in all technical fields, especially telecommunications, mechanics, electronics, medical technology and mechanical engineering. Ms Hilge is team member and lead counsel in numerous patent litigation cases. She advises international market leaders, as well as small and medium-sized corporations, in the fields of mobile telecommunications, construction, pharma, medical engineering, mechanics, etc. Ms Hilge is particularly experienced in patent litigation cases concerning standard-essential patents, including antitrust and FRAND limitations. She is also familiar with patent and utility model law, as well as trademarks, copyright, domain name law and unfair competition. Her work also involves developing trademark strategies and drafting licence agreements and trademark delimitation agreements.
rospatt osten pross Emanuel-Leutze-Straße 11 Dusseldorf 40547 Germany T +49 211 5772450 F +49 211 57724555 See firm profile p1054
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Ho, Dominik Partner – df-mp dominik.ho@df-mp.com | www.df-mp.com
Dominik Ho is a European patent attorney, attorney at law and partner at df-mp. His practice focuses on contentious proceedings that involve complex information technology such as mobile communications. He is known for having pled prominent SEP cases before the German patent infringement courts at trial and appellate level, in opposition proceedings before the EPO, and in nullity actions before the German Patent Court and the Federal Supreme Court. With his experience in contentious proceedings, Mr Ho assists his clients in drafting, prosecuting and assessing patent applications in various fields such as database technology, video coding, cryptography and nanobiotechnology. Mr Ho studied physics at Heidelberg University and at Cornell University. He is a Heidelberg-Cornell Exchange Scholar, a Fulbright Scholar and an alumnus of the Bavarian Elite Network. He received his doctorate degree from Ludwig Maximilian University in Munich for his work in the field of nanobiotechnology.
df-mp Funf Hofe Theatinerstrasse 16 Munich 80333 Germany T +49892102960 See firm profile p970
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Höffe, Moritz Partner – Grünecker Patent Attorneys and Attorneys-at-Law hoeffe@grunecker.de | www.grunecker.de
Moritz Höffe is a partner at Grünecker whose practice focuses on patent litigation and prosecution. His expertise covers a variety of technical fields, including physics, information technology, consumer electronics, medical devices and mechanical engineering. In addition to his longstanding prosecution practice, Dr Höffe’s clients benefit from his extensive experience in EPO opposition and appeal proceedings and patent invalidation actions before the German Federal Patent Court and the German Federal Court of Justice. He is also frequently involved in litigation proceedings before the competent German courts. Dr Höffe studied physics and mathematics at the Universities of Fribourg (Switzerland) and Tübingen (Germany) where he also obtained his PhD. Since joining Grünecker in 2001, he has qualified as both a German and European patent attorney. He is a member of the German Association for the Protection of Intellectual Property, the International Federation of Intellectual Property Attorneys and the German Physical Society. Dr Höffe was named a recommended individual by Managing Intellectual Property, IAM Patent 1000 and JUVE. Grünecker was founded in 1924 and is among the largest IP law firms in Europe. The firm employs more than 100 attorneys and provides the full range of IP services in all technical and legal areas. The firm has its headquarters in Munich and branch offices in Berlin, Cologne and Paris.
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Grünecker Patent Attorneys and Attorneys-at-Law Leopoldstrasse 4 Munich 80802 Germany T +49 89 21 23 50 F +49 89 22 02 87 See firm profile p988 Professional associations • DPG • FICPI • GRUR
IAM Patent 1000
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Hofer, Dorothea Managing Partner – Prüfer & Partner mbB hofer@pruefer.eu | www.pruefer.eu
Dorothea Hofer joined Prüfer & Partner in 1993 and has been a managing partner since 1998. After gaining her PhD in physics from the Ludwig Maximilian University in Munich, she worked for Siemens in the area of semiconductor physics. Dr Hofer’s practice includes: • patent and utility model infringement proceedings before the Regional Courts of Munich, Dusseldorf, Mannheim and Hamburg, and before the competent higher regional courts; • opposition proceedings before the European Patent Office and before the German Patent and Trademark Office; and • nullity proceedings before the Federal Patent Court and the Federal Supreme Court. She also prepares patent applications and licence agreements, and advises on employee inventions, trademarks and designs. Dr Hofer represents multinational corporations and small and medium-sized enterprises in diverse areas, in particular in the fields of physics, medical technology, 2D and 3D printing and semiconductor technology. She frequently speaks at conferences and seminars on IP law both in Germany and abroad, and often travels to Japan where she has a strong client base.
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Prüfer & Partner mbB Sohnckestrasse 12 Munich 81479 Germany T +49 89 69 39 21 0 F +49 89 64 22 238 See firm profile p1050 Professional associations • AIPPI • epi • INTA
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Huebner, Stefan Rolf Partner – SR Huebner srhuebner@srhuebner.com | srhuebner.com
Stefan Rolf Huebner is a Munich-based German and European patent and trademark attorney with more than 20 years of experience. One focus of his work is the multi-jurisdictional prosecution and litigation of IP rights. The other is the legal protection of emerging technologies, where the practice of the patent offices and the courts is still in development and there is a lack of established case law. Dr Huebner is one of the few acknowledged European experts in the field of nanotechnology patents. Through publications and lectures, often jointly with the nanotechnology experts from patent offices, he has been playing an active role in the development of this new field of law. Dr Huebner also has extensive experience in the patenting of computer-implemented inventions, in particular in the field of artificial intelligence (AI). His past work has covered a wide range of AI technologies, including applications of AI in robotics, the Internet of Things, biometrics, and medical diagnostics and therapy. Handelsblatt, Germany’s leading business newspaper, ranked Dr Huebner as one of the 10 best patent attorneys in Germany (“Deutschlands Beste Anwälte”, Handelsblatt, 2020). He is a guest lecturer at the University of Hohenheim and a specialist adviser to the European Patent Office. Dr Huebner studied physics and biophysics at Harvard University, the University of Oxford and at the Technical University of Munich. He obtained his doctorate with work in the field of nanobiotechnology. Prior to specialising in intellectual property, he was a management consultant at McKinsey & Co in the high-tech practice, a research assistant at Munich’s university hospital Klinikum rechts der Isar and a research fellow at Harvard Medical School. Dr Huebner received his legal training at the University of Munich and at the Max Planck Institute for Foreign and International Patent, Copyright and Competition Law. He worked for patent law firms in Germany and Japan before setting up SR Huebner.
www.IAM-media.com
SR Huebner Theresienstrasse 1 Munich 80333 Germany T +49 89 9 545 898 0 F +49 89 9 545 898 11 Professional associations • FICPI • GRUR • LES
IAM Patent 1000
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Jaeger, Olav Senior Partner – Zacco olav.jaeger@zacco.com | www.zacco.com
Olav Jaeger’s patent expertise extend across a range of technologies in the technical fields of electronics and physics. These include image processing, sensors, artificial intelligence and neural networks, as well as measurement technology, medical devices, telecommunication and mechanics. He is experienced in the drafting and prosecution of patent applications, and has represented clients in numerous opposition and appeal cases before the national courts and the EPO. Furthermore, Mr Jaeger routinely negotiates licensing agreements and offers strategic IP advice particularly to small and medium enterprises in Germany and the Scandinavian region. Prior to joining Zacco, Mr Jaeger was a partner at a well-reputed German patent attorney firm and the patent director at Tetra Pak in Lund, Sweden, advising the business management in compliance and general legal matters. In his role he implemented a revised global IP rights strategy to meet the challenges in the market and reflect new business environments. He also advised the company’s top management on licensing, litigation and IP-related strategic matters. Mr Jaeger has a background in physics with a focus on semiconductor physics and holds an LLM. He started his IP career in 2003 and became a German and European patent attorney in 2006. He is qualified to represent clients before the Scandinavian patent offices.
510
IAM Patent 1000
Zacco Bayerstr 83 Munich 80335 Germany T +49 89 53 886 0910 See firm profile p1098
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Kanz, Christine Partner – HOYNG ROKH MONEGIER christine.kanz@hoyngrokh.com | www.hoyngrokhmonegier.com
Christine Kanz started her career as a patent litigator in 1998 and has been a partner of the firm since 2006. Her primary focus is international patent litigation, including supplementary protection certificates (SPC) litigation, in the areas of pharmaceuticals, biotechnology and chemistry, where she has been representing multinational corporations as well as mid-size family-owned businesses. She has also handled numerous cases in the areas of medical devices, mechanics and consumer products. One of her recent highlights was representing a leading pharmaceutical company in an SPC-related matter that included a leading judgment from the Court of Justice of the European Union. Much of her work involves cross-border litigation – with the result that she is highly experienced in planning and coordinating such cases, building appropriate teams and efficient communication channels. Ms Kanz is also experienced in negotiating and drafting licensing agreements, research and development agreements and other agreements for the pharma and biotech industry. After attending the Max Planck Institute for Intellectual Property, Competition and Tax Law in Munich as an auditing student, she obtained her PhD in trademark law in 2002 at the University of Dusseldorf. Ms Kanz regularly publishes on patent law matters and speaks at conferences on patent law issues. She is also involved in many diversity projects with the aim of advancing especially female roles in patent law.
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HOYNG ROKH MONEGIER Steinstrasse 20 Dusseldorf 40212 Germany T +49 211 550 220 F +49 211 550 22 550 See firm profile p998 Professional associations • AIPPI • IPO • GRUR
IAM Patent 1000
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Karl, Christof Partner – BARDEHLE PAGENBERG Partnerschaft mbB karl@bardehle.de | www.bardehle.com
Christof Karl specialises in litigation and prosecution of patents, particularly in the technical fields of computer hardware and software. He has extensive experience in multi-jurisdictional cases in the field of telecommunications, including with regard to all aspects of patentrelated antitrust law. He also advises clients on issues of licensing, employee invention law, copyright law and internet law. Dr Karl represents clients in patent infringement proceedings before the German regional courts and the courts of appeal, and in patent invalidity proceedings before the European Patent Office, the German Patent and Trademark Office, the German Federal Patent Court and the German Federal Court of Justice. One of the main areas of his patent prosecution practice relates to the patentability of software and other computer-implemented inventions. His clients include leading US companies in the computer, computer-network, telecommunications and financial services sectors; a major Japanese computer game manufacturer; a world market leader in tobacco articles and e-cigarettes; as well as small and medium-sized German and international companies operating in industries relating to software, electronics, laboratory equipment, car parts, sports articles, hygiene products and food. With his unique multiple qualifications as an attorney at law licensed to practise in Germany and New York, a computer scientist, and a German and European patent attorney, he is able to handle both the legal and technical aspects of a case. His technical knowledge is particularly valuable in patent infringement proceedings, when the technical facts need to be precisely defined and communicated. In turn, his litigation experience and international focus enable him to draft patent claims that are both valid and powerful in the case of enforcement, and to give strategic advice in developing and exploiting cost-effective international patent portfolios. Dr Karl teaches patent law at the Munich Intellectual Property Law Centre, at the Université de Liège and at the Centre for Advanced Study and Research on Intellectual Property of the George Washington School of Law.
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BARDEHLE PAGENBERG Partnerschaft mbB Prinzregentenplatz 7 Munich 81675 Germany T +49 89 928 05 0 F +49 89 928 05 444 See firm profile p930 Professional associations • AIPPI
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Kasper, Kay N Partner – HOYNG ROKH MONEGIER kay.kasper@hoyngrokh.com | www.hoyngrokhmonegier.com
Kay N Kasper passed the German Bar exam in 2002 and has primarily been acting in patent litigation cases since. In the past few years, he has supplemented this established practice with representation of clients in arbitration and he increasingly acts as a professional consultant in out-of-court negotiations and as a negotiator, in particular in licence negotiations concerning standard-essential patents (SEP). In this capacity he assisted BMW in the negotiations with the licensing platform Avanci. Mr Kasper is a certified global negotiator, certified by the University St Gallen, and a trained commercial mediator. In court he focuses on the coordination of large SEP-portfolio litigation, especially in the telecoms area. Proceedings abroad, as well as preparatory strategic consulting in the case of such multinational conflicts, form an important part of his practice. Litigation in the field of SEP and consulting on the FRAND criteria are the areas on which he currently focuses. Mr Kasper has gained considerable experience in technical areas such as telecommunications, information technology, automotive and medical devices, as well as in the fields of mechanics, coating and packaging technologies and, most recently, in litigation of risk-reduced tobacco products. Mr Kasper has specialised in intellectual property, and patent law in particular, since starting his studies in 1994. During that time he has received practical training from the German Patent and Trademark Office, as well as various German and US patent attorney and law firms in Frankfurt, Munich and New York. During his legal clerkship at the Regional Court of Frankfurt, he worked for a chamber which specialised in copyright and trademark law.
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HOYNG ROKH MONEGIER Steinstrasse 20 Dusseldorf 40212 Germany T +49 211 550 220 F +49 211 550 22 550 See firm profile p998 Professional associations • IPO • LES • VPP
IAM Patent 1000
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Kather, Peter Senior Partner – Kather Augenstein Rechtsanwälte PartGmbB kather@katheraugenstein.com | www.katheraugenstein.com
With more than 30 years of experience in the field of IP law, Peter Kather has handled hundreds of IP infringement cases. Clients benefit from his expertise in the areas of engineering, telecommunications, chemistry, automotive and biotechnology. Mr Kather specialises in cross-border proceedings, having taken a leading role in many of them in Germany and coordinated them at international level. Mr Kather started his professional career in Munich in 1983. Fifteen years later, he established an office in Dusseldorf for his previous law firm, which he led until December 2015. In 2016 Mr Kather and his partners established a high-quality boutique IP litigation firm, Kather Augenstein, with Mr Kather as cofounder and senior partner. Mr Kather regards his principal task as identifying the best arguments in conjunction with clients. In this context, the close cooperation with in-house and external patent lawyers is an important piece of the puzzle in building an understanding of the various technical issues so as to be able to convey them in court. Mr Kather sees himself as a link between the scientists and technicians and judges who, as legal professionals, have the same tools at their disposal as he does. Mr Kather has acted several times as an arbitrator at the International Criminal Court. He is a member of the German Association for Intellectual Property and Copyright, the European Patent Lawyers Association, the German Association for Computer Technology, the Association of Intellectual Property Experts and the German-British Jurists’ Association. Mr Kather is listed in various rankings as one of the leading IP litigators in Germany.
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Kather Augenstein Rechtsanwälte PartGmbB Bahnstraße 16 Dusseldorf 40212 Germany T +49 211 513536 0 See firm profile p1010 Professional associations • GRUR • Union IP • VPP Sample client list • Audi/VW • Boston Scientific • Coloplast • Knorr-Bremse • Lamborghini • Lufthansa • Vodafone
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Kaufmann, Tobias Partner – BARDEHLE PAGENBERG Partnerschaft mbB tobias.kaufmann@bardehle.de | www.bardehle.com
Tobias Kaufmann specialises in the fields of electrical engineering, computer science, medical engineering and medical devices and methods, with a particular focus on telecommunications and mobile radio technology (usually in relation to standards – GSM, 3GPP, LTE, LTE-A), computer and network technology (including hardware and software for smart phones and tablets), signal processing (speech, image and voice coding) and cryptography. In addition, his work as a patent attorney frequently involves areas of mechanical engineering, particularly in the manufacturing and packaging industries. Besides patent prosecution, he is also involved in opposition, appeal, nullity and infringement proceedings. A further area of his practice includes advising clients on issues relating to validity and infringement of technical IP rights and preparing relevant opinions. Mr Kaufmann’s practice is boosted by his ability to draw on many years of commercial and legal experience gained in his previous career as an in-house IP rights manager for a leading electronics company and as a patent engineer for a prestigious international law firm. Mr Kaufmann joined Bardehle Pagenberg in 2012 and has since qualified as a German and European patent attorney. He became a partner in 2016.
BARDEHLE PAGENBERG Partnerschaft mbB Prinzregentenplatz 7 Munich 81675 Germany T +49 89 928 05 0 F +49 89 928 05 444 See firm profile p930
www.IAM-media.com
IAM Patent 1000
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Kehrwald, Roland Partner – Wildanger Kehrwald Graf von Schwerin & Partner mbB kehrwald@wildanger.eu | www.wildanger.eu
Roland Kehrwald specialises in the areas of patent, trademark, utility model and unfair competition law, providing advice and conducting litigation for clients. He has many years of experience in numerous infringement proceedings in all major technical fields of patent law – in particular information technology, genetic and electrical engineering and medical technologies. Dr Kehrwald represents a substantial number of international clients and is heavily involved in a series of major international patent disputes with parallel proceedings around the world. In addition to patent infringement cases, he collaborates on proceedings before the Federal Patent Court, the Federal Supreme Court and the EPO. Dr Kehrwald is listed as one of the top 12 leading senior partners among trial attorneys in patent law in JUVE 2018/2019 and 2019/2020, where a competitor praised him for being “excellent both in writing and at the hearing”. Dr Kehrwald is one of only five lawyers inducted into the Hall of Fame for patent litigation in Germany in the recent edition of The Legal 500. After completing his German and French high school diploma in Saarbrucken, Dr Kehrwald studied law in Munich and Geneva and conducted research in Moscow from 1987 to 1988 in connection with his doctorate, which he earned in Munich in 1989. He joined Günther Wildanger’s firm in 1991, starting there his specialisation in patent, trademark, utility model and unfair competition law. Dr Kehrwald is a member of the German Association for Intellectual Property and Copyright, the German group of the International Association for the Protection of Intellectual Property Rights, the European Patent Litigation Lawyers Association, the German Association of Intellectual Property Professionals, the Intellectual Property Owners Association and the American Intellectual Property Law Association.
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Wildanger Kehrwald Graf von Schwerin & Partner mbB Couvenstrasse 8 Dusseldorf 40211 Germany T +49 211 497 67 83 0 F +49 211 493 0265 See firm profile p1092 Professional associations • AIPLA • AIPPI • EPLAW
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Kellenter, Wolfgang Partner – Hengeler Mueller wolfgang.kellenter@hengeler.com | www.hengeler.com
Wolfgang Kellenter works from Hengeler Mueller’s Dusseldorf office and is head of the firm’s patent litigation group. He was admitted to the German Bar in 1990 and as a solicitor in England and Wales in 1992. He joined Hengeler Mueller in 1995 and became a partner in 1997. Dr Kellenter’s main practice area is patent litigation. He advises and represents companies across sectors including pharmaceuticals, medical devices, telecommunications, information technology, data encryption technologies and consumer electronics. His work has included the enforcement of patents of a leading research-based pharmaceutical manufacturer against generic companies as well as patent litigation regarding mobile phone standards such as LTE and UMTS. Dr Kellenter is a graduate of Bayreuth Law School, holds a doctorate (Dr jur) from Bayreuth University and obtained an LLM from the London School of Economics and Political Science. He has authored several articles on patent law and regularly lectures on international patent law topics. Dr Kellenter is a member of the European Patent Lawyers Association (EPLAW), the German Association for the Protection of Intellectual Property (GRUR), the International Association for the Protection of Intellectual Property (AIPPI), the Licensing Executives Society and the Association of Intellectual Property Experts (VPP).
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Hengeler Mueller Benrather Strasse 18-20 Dusseldorf 40213 Germany T +49 211 830 4198 F +49 211 830 4170 Professional associations • AIPPI • EPLAW • GRUR
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Keulertz, Robin Partner – Olbricht Patentanwälte keulertz@olbrichtpatent.de | www.olbrichtpatent.de
Robin Keulertz is one of the managing partners of Olbricht Patentanwälte, a well-established German patent law firm with a wide range of capabilities within IP law. The firm’s headquarters are in Frankfurt, Germany’s business and financial hub, with branches in Hamburg and Memmingen covering northern and southern Germany. Mr Keulertz guides his clients from the initial application process all the way through to the grant and registration of rights. He is dually qualified as a German and European patent attorney and is well versed in representing clients before national and European authorities. He regularly works with leading trial lawyers in the litigation of patents and other IP rights before the German regional courts. Additionally, he helps his clients monetise their IP rights by developing cooperation and licensing agreements. Mr Keulertz has extensive experience in drafting, opposing and defending national, European and international patent applications. He works on behalf of national and international clients and advises them also on complex patent portfolio strategies. His main technical areas of expertise are the automotive sector, mechanical engineering, image processing and artificial intelligence. He holds a master’s in engineering from RWTH Aachen University and is a certified patent litigator from the Centre for International Intellectual Property Studies of the University of Strasbourg. Mr Keulertz is recommended by leading publications for his extensive knowledge in nullity actions and oppositions every year. He is a member of the International Association for the Protection of Intellectual Property, the International Federation of Intellectual Property Attorneys and the Asian Patent Attorneys Association.
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IAM Patent 1000
Olbricht Patentanwälte 53-55 Bettinastrasse Frankfurt 60325 Germany T +49 69 789 040 10 T +49 69 789 040 110 Professional associations • AIPPI • APAA • FICPI
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Kiefer, Miriam Managing Partner – Kather Augenstein Rechtsanwälte PartGmbB kiefer@katheraugenstein.com | www.katheraugenstein.com
Miriam Kiefer is a founding partner and, since January 2019, managing partner of Kather Augenstein. She has been active as a lawyer for 15 years. Ms Kiefer began to specialise in industrial property during her studies and obtained an LLM in industrial property rights from the Centre for Industrial Property Rights at Heinrich Heine University Dusseldorf. She is also a certified IP specialist. Ms Kiefer’s expertise has been recognised in various rankings (IAM Patent 1000, The Legal 500, and IP Stars). Ms Kiefer has conducted more than 100 infringement proceedings, primarily for patents and utility models. Many of these disputes were cross-border proceedings; she is thus familiar with the coordination of multinational disputes. Although one of her passions is medical technology, her enthusiasm and love of detail are also engaged in many other technical areas. In addition to the enforcement of technical property rights, she represents German and international clients in design, trademark infringement and unfair competition proceedings. Ms Kiefer has co-authored two commentaries on patent law and the Unified Patent Court. She is also a regular speaker on patent law issues and provides training for patent lawyers within the context of the working group in North Rhine-Westphalia. M Kiefer assisted with the 2018 study question on joint liability for IP infringement for the International Association for the Protection of Intellectual Property. She is also a member of the German Association for Intellectual Property and Copyright, the Association of Intellectual Property Experts and the European Patent Lawyers Association. Ms Kiefer is also engaged in supporting female professionals in their career and was appointed in June 2019 as a member of the board of Women in IP eV, a non-profit organisation promoting and supporting women who are active in the field of intellectual property.
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Kather Augenstein Rechtsanwälte PartGmbB Bahnstrasse 16 Dusseldorf 40212 Germany T +49 211 513536 0 See firm profile p1010 Professional associations • Union IP • VPP • Women in IP Sample client list • B Braun • Boston Scientific • Coloplast • Ericsson
IAM Patent 1000
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Knapp, Thomas Patent Attorney – DREISS Patentanwaelte PartG mbB pa-knapp@dreiss.de | www.dreiss.de
Thomas Knapp has been a partner at DREISS Patentanwälte since 2000. He is a European and German patent and trademark attorney and holds a diploma in aerospace engineering from the University of Stuttgart, Germany, as well as a doctoral degree from ISAE/SupAéro in Toulouse, France. Mr Knapp started his career as a development manager in a small aircraft development company and later in a large aerospace test company. He became a patent attorney in 1999. His areas of technical expertise include automotive, civil engineering, medical technology, surgery instruments, packaging, hydraulics, aerospace engineering, molding, thermal protection, house climate control, wood machining, handheld machine tools, weapons and weapon simulation, satellite navigation, radar detection, textile – all of these both in the mechanical field and in the field of control and sensor technics. He can advise not only on patents, but also on trademarks and design patents. His clients range from small and medium-sized regional companies up to large multinational companies. To date, Mr Knapp has drafted and prosecuted over 1,000 patent applications. He has many years of experience in nullity and infringement cases before the German Federal Patent Court, the German regional courts, the German higher regional courts and the German Federal Court of Justice; he also provides second opinions in such cases. He is a member of the multinational nullity and litigation teams, and frequently represents clients in opposition and appeal proceedings before the German Patent and Trademark Office and the European Patent Office. Mr Knapp lived in France for several years and is therefore fluent in French, as well as in English. He has held a private pilot licence and instrument rating for over 40 years. He is the author of the section relating to the use of intellectual property as loan security in the German finance textbook FCH-Sicherheitskompendium.
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IAM Patent 1000
DREISS Patentanwaelte PartG mbB Friedrichstraße 6 Stuttgart 70174 Germany T +49 71 1248 9380 F +49 71 1248 9389 9 See firm profile p974
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Knauer, Reinhard Partner – Grünecker Patent Attorneys and Attorneys-at-Law knauer@grunecker.de | www.grunecker.de
Reinhard Knauer is a German and European patent attorney with extensive expertise in patent litigation and patent prosecution. He is particularly experienced with EPO opposition and appeal procedures, as well as patent invalidation proceedings before the German Federal Patent Court and the German Supreme Court. He specialises in IT and telecommunications-related technology, consumer electronics and automation technology, and represents major global companies in these fields. Mr Knauer is routinely involved in complex patent litigation, frequently involving SEPs. With his large team, Mr Knauer has obtained over 1,000 European patents related to software and telecommunications, including SEPs. He has been a partner of Munich-based law firm Grünecker since 1996. He holds a master’s in electrical engineering and information technologies from the Technical University of Munich. He is a member of the Institute of Electrical and Electronics Engineers, the International Federation of Intellectual Property Attorneys, the German Association for the Protection of Intellectual Property and the American Intellectual Property Law Association. Mr Knauer has been named as a recommended individual by the following: • Managing Intellectual Property’s IP Stars 2020; • IAM Patent 1000 2020; and • JUVE 2020. Grünecker was founded in 1924 and is among the largest IP law firms in Europe. The firm employs more than 100 attorneys and provides the full range of IP services in all technical and legal areas. The firm has its headquarters in Munich and branch offices in Berlin, Cologne and Paris.
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Grünecker Patent Attorneys and Attorneys-at-Law Leopoldstrasse 4 Munich 80802 Germany T +49 89 21 23 50 F +49 89 22 02 87 See firm profile p988 Professional associations • AIPPI • INTA • GRUR
IAM Patent 1000
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Köhler, Martin Partner – HOYNG ROKH MONEGIER martin.koehler@hoyngrokh.com | www.hoyngrokhmonegier.com
Martin Köhler has more than 20 years’ experience in IP litigation and counselling, with a special focus on patent litigation. He is also active in design rights enforcement and unfair competition litigation, in particular related to technology-driven industries. Outside court, his work includes providing advice on licensing, research and development agreements, as well as on employee invention matters. Mr Köhler’s extensive litigation experience encompasses successful enforcement of IP rights, as well as defence work against infringement claims, including proceedings involving standard essential patents and antitrust based-FRAND defence. Mr Köhler has represented clients in a number of different technical areas, including electronics, telecoms, LEDs, solar cells, mechanical and chemical engineering, automotive technology, pharmaceuticals and medical devices. He has been lead counsel in numerous litigation proceedings involving parallel proceedings in other European jurisdictions, as well as in the United States and Asia. In addition to his legal studies at the Universities of Saarbrucken/ Nancy and Trinity College Dublin, he completed a diploma (DEUG) and postgraduate studies (DESS) in French law. Mr Köhler regularly writes on IP matters and speaks at conferences on patent law issues. He is also a lecturer at the Hagen Law School. Mr Köhler is an active member of the International Association for the Protection of Intellectual Property, the European Patent Lawyers Association, the Licensing Executives Society, the German Association for the Protection of Intellectual Property and the Association of Trademark and Design Law Practitioners.
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HOYNG ROKH MONEGIER Steinstrasse 20 Dusseldorf 40212 Germany T +49 211 550 220 F +49 211 550 225 50 See firm profile p998 Professional associations • AIPLA • EPLAW • APRAM
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Kröhnert, Michael Patent Attorney – DREISS Patentanwälte PartG mbB kroehnert@dreiss.de | www.dreiss.de
Michael Kröhnert is a partner at DREISS Patentanwälte. He is a European and German patent and trademark attorney. He holds a diploma in electrical engineering from the University of Karlsruhe. Mr Kröhnert has a profound knowledge in the technical fields of artificial intelligence systems, telecommunications, automotive systems, general electronics and control systems. He is experienced in patent application drafting, patent prosecution, opposition proceedings, appeal proceedings and patent nullity proceedings. He represents his clients before the European Patent Office, the German Patent and Trademark Office and the German Federal Patent Court. He frequently teams up with experienced litigators in patent litigations in Germany. His clients range from small and medium-sized enterprises to international corporations. They are active in various technical fields, including automotive, telecommunications, image processing and automation. During his professional career in Germany and the United States, Mr Kröhnert has held positions as a development engineer and in-house counsel. This has enabled him to develop a deep understanding of the needs and requirements of internationally operating enterprises – an understanding that is at the core of the advice he gives clients on their patent portfolio and strategy in Europe and beyond.
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DREISS Patentanwälte PartG mbB Friedrichstraße 6 Stuttgart 70174 Germany T +49 711 24 89 380 See firm profile p974 Professional associations • FICPI • VDE
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Künzel, Jens Michael Partner – Krieger Mes & Graf v der Groeben jens.kuenzel@krieger-mes.de | www.krieger-mes.de
In 1996 and 1997, after completing his first state examination, Jens Michael Künzel studied at the University of East Anglia where he was awarded an LLM with distinction in common law. In 1998 and 1999 Mr Künzel began focusing on industrial property rights during his legal clerkship, which included several months at Krieger Mes & Graf v der Groeben and the civil chamber of the Dusseldorf District Court (competent in copyright and competition law). In March 2000 Mr Künzel started his professional career at Krieger Mes & Graf v der Groeben, where he has been a partner since 2006. Mr Künzel has acted for large and medium-sized national and international companies in all matters relating to IP rights, particularly patent and design infringement and unfair competition litigation. His IP experience extends to many diverse technological fields, including mechanical engineering (particularly packaging and printing machines), telecoms, medical devices, adhesives and tape technology and chemistry, and antivirus software and hardware. Mr Künzel also has considerable experience enforcing design rights and trademarks. For instance, since 2001 he has been acting for a prominent German manufacturer of luxury sanitary fittings in connection with design infringement and counterfeiting. Besides his litigation work, Mr Künzel regularly advises clients on IP infringement matters and the drafting of licence agreements.
Krieger Mes & Graf v der Groeben Bennigsen Platz 1 Dusseldorf 40474 Germany T +49 21 14 40 33 70 See firm profile p1014 Professional associations • AIPPI • BGJA • GRUR Sample client list • Bette • Dornbracht • Dürr • Finjan • Melitta • Stanley Black & Decker • Tetra Pak
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Lang, Johannes Co-Managing Partner – BARDEHLE PAGENBERG Partnerschaft mbB johannes.lang@bardehle.de | www.bardehle.com
Johannes Lang’s main areas of practice involve conducting patent litigation in Germany and France, German and European patent opposition and appeal proceedings, patent nullity proceedings before the German Federal Patent Court and the German Federal Court of Justice, and prosecuting patents before the patent offices. Mr Lang’s particular technical fields include software and computer-related inventions, electronics, information technology and telecoms, semiconductor memories, digital image and audio processing, audio-video devices, smartcards and medical devices. Mr Lang is frequently the lead patent attorney in complex international patent litigation in Germany and Europe, particularly in cases requiring coordination with parallel US litigation or litigation in other European countries. Mr Lang represents major global companies in patent litigation in the fields of computer technology, data compression, GSM and 3G telecoms standards and smartcards. As a qualified French patent attorney, Mr Lang is also experienced in French patent litigation procedure, particularly in the saisiecontrefaçon (French proceedings to establish an infringement). Mr Lang is chair of the Software Patent Committee of the German Patent Bar Association and a member of the Intellectual Property Owners Association’s Software and Business Methods Committee. He is also a member of the German Association for the Protection of Intellectual Property, the German Intellectual Property Association, the Association of German Patent Engineers, the Chamber of Patent Attorneys and the European Patent Institute. Mr Lang co-authored Concise European Patent Law, a commentary on European IP legislation. He gives lectures on patent infringement law at the Kurt Härtel Institute of the University of Hagen, Germany, and regularly lectures and publishes works in the field of software patents in particular.
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BARDEHLE PAGENBERG Partnerschaft mbB Prinzregentenplatz 7 Munich 8167 Germany T +49 89 928 050 F +49 89 928 054 44 See firm profile p930 Professional associations • GRUR • LES • VPP
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Ledl, Andreas Partner – Maiwald Patentanwalts- und Rechtsanwalts-GmbH ledl@maiwald.eu | www.maiwald.eu
Andreas Ledl’s expertise extends to all aspects of IP protection in the fields of pharmaceuticals, biotechnology and biochemistry. He has extensive experience in patent prosecution and advises on strategy and management of patent portfolios in the most important jurisdictions worldwide. He has particular experience in grant, opposition and appeal proceedings before the European Patent Office. He regularly prepares freedom-to-operate, validity and due diligence analyses for clients. Important cases • Creation of an extensive patent portfolio in Europe and outside of Europe for a successful/leading opioid-based analgesic; defending key patents covering the analgesic against 10 or more opponents at the EPO; supporting ongoing European litigation by assisting the national teams • Handling the majority of the European patent applications on behalf of PepsiCo Inc and applicants affiliated with PepsiCo, including initiating regional phases before the EPO; defending patents in the name of PepsiCo in opposition and appeal proceedings; representing new design applications on behalf of PepsiCo before the EUIPO • In 2019, Dr Ledl successfully handled an appeal against Coca-Cola on behalf of patent proprietor PepsiCo at the EPO.
Maiwald Patentanwalts- und Rechtsanwalts-GmbH Elisenhof Elisenstrasse 3 Munich 80335 Germany T +49 89 747 266 0 F +49 89 776 424 See firm profile p1022
Practice areas • Pharma and biotech • Food and agriculture • Patents and utility models • IP consulting Services • Patent prosecution and portfolio management • Filing strategies and drafting patent applications • Freedom-to-operate and validity opinions • Opposition and nullity proceedings
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Lippich, Wolfgang Partner – Samson & Partner Patentanwälte mbB lippich@samson-partner.de | www.samson-partner.de
Wolfgang Lippich is a German patent attorney, as well as a European patent, trademark and design attorney. He studied physics (with honours) in Munich and Geneva and attained a doctorate in experimental particle physics at CERN (where the World Wide Web was invented). Dr Lippich also studied computer science at the Trier University of Applied Science and is a master of computer science with a thesis on quantum computing. Topics covered in depth in his computer science studies include IT networks, databases, IT security, embedded systems, Android programming, data structures and algorithms, parallel and distributed processes, image processing, deep learning, software engineering and theoretical computer science. As a patent attorney, he has gained extensive experience in obtaining, defending and enforcing patents, including the elimination of wrongfully granted patents in the fields of information technology and telecommunications, electrical engineering and mechanical engineering. In many inter partes opposition, nullity and patent infringement proceedings, Dr Lippich has successfully represented various internationally important companies. Dr Lippich is the author of the textbook German and European Patent Law and is a visiting lecturer at the Hagen Law School. Dr Lippich has been recommended in Juve 2012 to 2020, Managing Intellectual Property’s IP Stars 2013 and 2020, the IAM Patent 1000 2014 to 2020 and Who’s Who Legal Germany 2021.
www.IAM-media.com
Samson & Partner Patentanwälte mbB Widenmayerstrasse 6 Munich 80538 Germany T +49 89 291 982 0 F +49 89 299 465 See firm profile p1056 Professional associations • DPG • epi • GRUR
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Mader, Joachim Partner – BARDEHLE PAGENBERG Partnerschaft mbB mader@bardehle.de | www.bardehle.com
Joachim Mader’s main areas of practice include the prosecution of patents, invalidity proceedings and infringement proceedings in the various technical fields of mechanical engineering and processing technology. His core technical areas include float glass and fabricated glass products, robotics, automotive technology, process control and hydraulics. Mr Mader’s work particularly focuses on opposition and appeal proceedings before the EPO. He cooperates closely with the firm’s attorneys at law in (parallel) nullity and infringement proceedings before the regional courts, the German Federal Court of Justice and the German Federal Patent Court, which enables him to provide practice-oriented advice relating to filing patents at the EPO and the German Patent and Trademark Office. Mr Mader’s clients include one of the world’s largest manufacturers of float glass and fabricated glass products, a German world leader in the field of industrial robots and a major Japanese heavy industry company.
BARDEHLE PAGENBERG Partnerschaft mbB Prinzregentenplatz 7 Munich 81675 Germany T +49 89 9280 50 F +49 89 9280 5444 See firm profile p930 Professional associations • FICPI • German Patent Lawyers Bar • GRUR
528
IAM Patent 1000
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Maxien, Christiane Partner – Wallinger Ricker Schlotter Tostmann, Patent- und Rechtsanwälte Partnerschaft mbB cmaxien@wallinger.com | www.wallinger.de
Christiane Maxien is a partner of Wallinger Ricker Schlotter Tostmann. Holder of a PhD in chemistry, she specialises in the technical fields of chemistry, green technologies, material sciences and biochemistry. In her work as a patent attorney, she has particular expertise in advising on, granting and enforcing IP portfolios with an international focus. Dr Maxien completed her doctorate summa cum laude at the Chair of Inorganic Chemistry at Ludwig Maximilian University of Munich in 2009. Her doctoral thesis focused on the development of new chalcogenophosphates and the investigation of their chemical properties, particularly with regard to the application of these compounds in modern, highly efficient lithium-ion rechargeable batteries. Dr Maxien specialises in assisting clients with and advising them on international operations, particularly with regard to commercially viable patent portfolio management. Her practice areas include patent prosecution in Germany and Europe, coordination of patent prosecution in countries outside Europe, and enforcement and defence of IP rights, in particular in opposition and appeal proceedings before the European Patent Office, as well as the preparation of freedom-tooperate opinions. Located in Munich, Wallinger Ricker Schlotter Tostmann started with five attorneys in 2007 and has grown to include over 20 patent attorneys and attorneys at law, representing clients from all over the world and across the full spectrum of industries. In 2018 Dr Maxien became the first woman and youngest partner to join the partnership at Wallinger Ricker Schlotter Tostmann.
Wallinger Ricker Schlotter Tostmann, Patent- und Rechtsanwälte Partnerschaft mbB Zweibrueckenstrasse 5-7 Munich 80331 Germany T +49 892 102 320 F +49 892 194 940 8 See firm profile p1086 Professional associations • epi • PAK Sample client list • Archroma IP GmbH • Bridgestone/Firestone • Eastman Chemicals • Nippon Shokubai
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Mes, Peter Partner – Krieger Mes & Graf v der Groeben mes@krieger-mes.de | www.krieger-mes.de
Peter Mes joined Krieger Mes & Graf v der Groeben directly after being admitted to the Bar. As the name and senior partner of the firm, he is one of the most respected German lawyers in the field of patent law and IP law in general. He has been a board member of the German Association for the Protection of Intellectual Property (GRUR) and was president of the German group of the International Association for the Protection of Intellectual Property from 2001 to 2013. In addition, he became co-editor of the journals GRUR and GRUR Int in 1996, taking on the essay section as his special responsibility. Dr Mes was a lecturer in industrial property at Westphalian University in Munster for many years, where he also received the title of honorary professor of law. Since 2014, he has been an honorary member of GRUR. Dr Mes has published many articles on topics relating to civil law, particularly IP rights. Noteworthy publications of which he has been editor and co-author include Commentary on Patent and Utility Model Act (currently in its fourth edition, 2015), Beck’s Form Book for Legal Proceedings (published in cooperation with Horst Locher, 12th edition, 2012) and Munich Form Book for Legal Proceedings on Industrial Property Rights, Copyright and Press Law (fourth edition, 2014).
Krieger Mes & Graf v der Groeben Bennigsen-Platz 1 Dusseldorf 40474 Germany T +49 211 4403 370 F +49 211 4403 3760 See firm profile p1014 Professional associations • AIPPI • GRUR Sample client list • 3M • Boehringer Ingelheim • Novartis • Tetra Pak
530
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Miltényi, Peter Patent Attorney – Grünecker Patent Attorneys and Attorneys-at-Law miltenyi@grunecker.de | www.grunecker.de
Peter Miltényi studied physics in Germany and the United Kingdom, and obtained his PhD in physics from RWTH Aachen University. He has received various prizes for his research, including the RWTH Aachen University Department of Physics Prize for the best PhD thesis in 2000. Having joined Grünecker in 2000, he became a German, European and Spanish patent attorney. As a patent attorney, Dr Miltényi soon dealt with prosecution matters for international and national clients and complex patent litigation cases, including various cross-border proceedings. At the same time, he started working for different high-tech start-up companies and long-standing Grünecker clients. Dr Miltényi has developed strong expertise in opposition proceedings before the European Patent Office and appears regularly before the German Federal Patent Court and the German Federal Supreme Court in nullity proceedings. Being fluent in German, English and Spanish enables him to work with clients from across Europe and throughout the world. Dr Miltényi works mainly in the technical fields of physics, software and mechanics, as well as medical devices. His background’s broad technical spectrum enables him to work in areas that overlap or combine several of these fields. Grünecker was founded in 1924 and is among the largest IP law firms in Europe. The firm employs more than 100 attorneys and provides the full range of IP services in all technical and legal areas. The firm has its headquarters in Munich and branch offices in Berlin, Cologne and Paris.
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Grünecker Patent Attorneys and Attorneys-at-Law Leopoldstrasse 4 Munich 80802 Germany T +49 89 21 23 50 F +49 89 22 02 87 See firm profile p988 Professional associations • COAPI • DPG • epi
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Müller, Tilman Partner – Eisenführ Speiser tmuller@eisenfuhr.com | www.eisenfuhr.com
Tilman Müller specialises in patent infringement proceedings and parallel nullity proceedings. He has particular expertise in complex international infringement proceedings involving more than two parties, as well as SEP and related antitrust issues. Mr Müller also has extensive experience in IP-related arbitration proceedings, as well as in the judicial enforcement of licence agreements. Another focus of his work is IP contracts, in particular conception and implementation of licence programmes and R&D agreements. Mr Müller also advises several international standardisation organisations on contract law issues and is an expert in the field of patent pool and joint venture arrangements. Mr Müller’s clients include companies from various sectors and industries, such as consumer electronics, lighting, medical and communications technology, as well as chemicals. He regularly publishes articles, for instance on SEP and FRAND licensing in Europe or patent protection in networked medicine, in various specialist media. He also co-authored the textbook The European Patent Application, published by Eisenführ Speiser and Chizai Corporation. Mr Müller studied law at the Bucerius Law School in Hamburg and the National University of Singapore, focusing on European law.
Eisenführ Speiser Johannes-Brahms-Platz 1 Hamburg 20355 Germany T +49 403 097 440 F +49 40 309 744 44 See firm profile p980 Professional associations • GRUR • LES
532
IAM Patent 1000
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Müller-Stoy, Tilman Partner – BARDEHLE PAGENBERG Partnerschaft mbB mueller-stoy@bardehle.de | www.bardehle.com
Tilman Müller-Stoy’s main areas of practice include providing advice and conducting patent litigation (including entitlement proceedings) in all technical fields, as well as handling cases relating to utility models, trade secrets, unfair competition and patent-related antitrust law. He has extensive experience in not only defending against, but also creating, evaluating and enforcing extensive licensing programmes, particularly in the area of standard-essential patents, including issues relating to fair, reasonable and non-discriminatory terms. His further areas of practice include IP-related contractual matters, particularly technology transfer/licensing, employee invention law and IP-related mediation and arbitration proceedings. Having handled several hundreds of adversarial patent disputes in courts and patent offices, Mr Müller-Stoy has experience in numerous sectors, including telecommunications, information technology (hardware and software), consumer electronics, medical devices, automotive engineering, sports equipment, machinery and engineering, glass coating, brewing and food processing technology, packaging and abrasive engineering, chemistry, biotechnology and pharmaceuticals, also relating to compulsory licence proceedings. He represents clients in patent infringement suits and in nullity, opposition and cancellation proceedings before the various infringement courts, the German Federal Patent Court, the German Federal Court of Justice, the European Patent Office and the German Patent and Trademark Office. He has extensive experience in conducting and coordinating cross-border patent litigation (frequently in relation to the United States, Japan and the core European markets – the United Kingdom, France, Italy, Spain and the Netherlands). His clients are major multinational corporations, but also include highly innovative small and mid-sized enterprises. Mr Müller-Stoy has been a visiting lecturer in IP law at the Technical University of Munich since 2009 and was a docent for trainee lawyers at the Higher Regional Court of Munich for many years. He teaches patent law at the Centre for Advanced Study and Research on Intellectual Property of the University of Washington School of Law and as part of Dresden University of Technology’s LLM programme “International Studies in Intellectual Property Law”. He regularly gives presentations at German and international IP conferences. Mr Müller-Stoy is also a qualified commercial mediator.
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BARDEHLE PAGENBERG Partnerschaft mbB Prinzregentenplatz 7 Munich 81675 Germany T +49 89 928 050 F +49 89 928 054 44 See firm profile p930 Professional associations • EPLAW • LES
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Musmann, Thomas Partner – rospatt osten pross musmann@rospatt.de | www.rospatt.de
Thomas Musmann’s focus is on the field of patent and utility model law litigation. With many years of experience, he appears for and advises companies with an international reputation in the automotive industry and their suppliers, as well as in the chemical, pharmaceutical and biotechnology industries, medical engineering, computer technology, consumer electronics and electrical engineering. Mr Musmann appears before all German courts that are competent for patent-related matters and takes part in proceedings before the German Patent Office, the Federal Patent Court and the European Patent Office. In addition to his main focus on patent law, he also works on cases concerning the law of unfair competition, trademarks and registered design law, as well as licence agreements. Mr Musmann currently represents clients in several multi-millioneuro disputes before the German courts. He has also worked as counsel in high-profile arbitration proceedings. Mr Musmann frequently lectures on patent law.
rospatt osten pross Emanuel-Leutze-Straße 11 Dusseldorf 40547 Germany T +49 211 5772450 F +49 211 57724555 See firm profile p1054
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IAM Patent 1000
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Nägerl, Joel Partner – Zimmermann & Partner Patentanwälte mbB naegerl@zimpat.com | www.zimpat.com
Joel Nägerl studied physics and mathematics at the University of Gottingen and physics at the University of California, San Diego. He graduated with a master’s in physics and received his PhD in natural sciences, working in the field of semiconductor optics. During his university studies, Dr Nägerl received a scholarship from the German National Foundation, which sponsors the highly gifted. In his career as a patent attorney, Dr Nägerl worked at firms Bardehle (Dusseldorf) and KNH (Dusseldorf and Munich), before becoming a partner at Zimmermann & Partner Patentanwälte (Munich). Dr Nägerl specialises in electrical engineering, telecoms and semiconductor technology. His main practice area is patent litigation, and he advises and represents large multinationals in numerous highprofile international disputes before forums such as the Federal Patent Court, the Federal Court of Justice, the EPO, the German Patent and Trademark Office, district courts and the higher regional courts. Due to his profound technical expertise and keen legal sense, Dr Nägerl’s counselling services are in great demand for the development of technical offensive and defensive strategies – both in Germany and in the context of foreign litigation proceedings. Dr Nägerl also serves as an appointed court expert at the Dusseldorf Higher Regional Court. Dr Nägerl co-authored Patent Law – A handbook (CH Beck – Hart – Nomos).
Zimmermann & Partner Patentanwälte mbB Josephspitalstrasse 15 Munich 80331 Germany T +49 89 23269 0 F +49 89 23269 232 See firm profile p1102 Sample client list • Motorola • Samsung
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Neuburger, Benedikt Partner – Zimmermann & Partner Patentanwälte mbB neuburger@zimpat.com | www.zimpat.com
Benedikt Neuburger is a partner at Zimmermann & Partner Patentanwälte mbB, a boutique IP firm with several offices in Germany. Dr Neuburger has a background in physics and holds a master’s and PhD in economics. He is both a European and a German patent attorney. With more than 15 years’ experience in the IP field, Dr Neuburger focuses on patent prosecution, opposition and appeal proceedings. He mainly works in the field of green technologies, power engineering and deposition technology. Over the years, he has conducted a vast number of cases and represented clients in several hundred oral proceedings. Dr Neuburger is the counsel of choice for several multinational stocklisted companies that have built up a high level of trust in his expertise over many years of cooperation. He provides practical solutions by aligning the economic needs and technical constraints with the tactical and procedural aspects of each case. His clients appreciate the symbiosis of in-depth technical and economic understanding with a pragmatic approach. Dr Neuburger studied physics in Germany, Italy and Austria. During this time, he worked in the fields of quantum computation and fault-tolerant implementations in solid states and photonic systems. After graduating, he continued his studies by attending the economic postgraduate degree in business research at Ludwig Maximilian University, where he worked on his PhD in the economic valuation of patents. Dr Neuburger’s PhD examined known valuation techniques and presented a new method for an accurate value determination of patents. Dr Neuburger has authored numerous publications in the IP field, lately focusing on artificial intelligence in the patent system, and is regularly preparing teaching material for the European Patent Academy.
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IAM Patent 1000
Zimmermann & Partner Patentanwälte mbB Josephspitalstr 15 Munich 80331 Germany T +49 89 23269 0 F +49 89 23269 232 See firm profile p1102
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Oetke, Cornelia Partner – Wallinger Ricker Schlotter Tostmann, Patent- und Rechtsanwälte Partnerschaft mbB coetke@wallinger.com | www.wallinger.de
Cornelia Oetke is a German and European patent attorney and partner at Wallinger Ricker Schlotter Tostmann. She is part of the firm’s biology/biotechnolgy and pharma practice group. Dr Oetke represents international and national clients in all areas of patent law in the fields of life sciences and pharmaceuticals. A main part of her practice is to defend or oppose patents in opposition proceedings before the European Patent Office or in national invalidity proceedings before the German Federal Patent Court. Her services also cover drafting, prosecuting and assessing patent applications, as well as filing and advising clients on supplementary protection certificates. Dr Oetke further provides freedom-to-operate, patent infringement and validity opinions in her areas of specialisation. Dr Oetke obtained her PhD in biology from the University of Heidelberg in the field of glycobiology and continued research in immunology. Before joining Wallinger Ricker Schlotter Tostmann in 2017, Dr Oetke practised in another German IP firm with a focus on defending and attacking patents in opposition and nullity proceedings in the pharma field, including several blockbuster drugs. Located in Munich, Wallinger Ricker Schlotter Tostmann started with five attorneys in 2007 and has grown to include over 20 patent attorneys and attorneys at law, representing clients from all over the world and across the full spectrum of industries.
Wallinger Ricker Schlotter Tostmann, Patent- und Rechtsanwälte Partnerschaft mbB Zweibrueckenstrasse 5-7 Munich 80331 Germany T +49 89 210 2320 F +49 89 2194 9408 See firm profile p1086 Professional associations • AIPPI • GRUR • LES
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Opie, Elisabeth Principal Solicitor – Office of Elisabeth Opie office@elisabethopie.com | www.elisabethopie.com
Elisabeth Opie opened a boutique IP law firm in Munich in 2014, drawing on 20 years of international experience in the global innovation system. Her work has specialised in dealing with international technology from various sectors, with practice areas in international IP law, international trade law, commercialisation of technology, competition law and dispute resolution. She has appeared in the IAM Global 300 and IAM Patent 1000 since 2020, and is named an IAM Strategy 300 Global Leader for 2021. Ms Opie has gained deep experience working with industry, spinoffs, research organisations and government. Her expertise enables her to convert concept into desired business outcome on an efficient and sustainable basis. Ms Opie provides strategic, operational and tactical advice across a broad range of issues facing technology-centric companies. Her legal and executive experience spans across sectors such as information technology, automotive, aerospace, health and energy. Most recently, she has prepared and executed a negotiation strategy for the implementation of various advanced audio technologies. Ms Opie is a qualified practising solicitor in Australia, and England and Wales. She is also a foreign-registered lawyer with the Munich Bar Association (qualified solicitor, Ireland) and practises German law. Ms Opie has received a number of awards in the field of international science cooperation and technology transfer, including a Business Award for outstanding commercial performance as part of a global team, relating to groundbreaking extended wear contact lens technology; and a Strategy Excellence Award in her role as lead counsel for the restructure of a major international joint venture – resulting in reduced complexities of joint governance while retaining strong scientific cooperation, and the re-integration of capability (staff, assets and intellectual property). In 2013 Ms Opie became the inaugural Global Research Alliance Fellow. She holds a BA, an LLB (Hons) and is a master of law and commercial law. Ms Opie is a graduate of the Australian Institute of Company Directors.
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IAM Patent 1000
Office of Elisabeth Opie Barer Strasse 1 Munich 80333 Germany T +49 89 2155 8098 Professional associations • AICD • AIPPI • LES
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Oser, Andreas Managing Partner – Prüfer & Partner mbB oser@pruefer.eu | www.pruefer.eu
Andreas Oser has been working in the IP field since 1991; he became a German and European patent attorney in 1995 and has been managing partner at Prüfer & Partner since 2002. Prior to working in intellectual property, he studied chemistry at the University of Freiburg in Breisgau, and then conducted his PhD and postdoc studies at the Max Planck Institute for Biochemistry in Munich. He also holds an LLM degree in international IP laws from the University of Hagen. Dr Oser’s primary areas of expertise are chemistry, pharmaceuticals, life sciences and biotechnology – in particular, biological materials, DNA-related inventions and vaccines; therapeutic and diagnostic methods; medical products and devices, and targeted drug delivery; polymers and fibre materials; semiconductors, LEDs, OLEDs and other optical materials and optoelectronic devices; and batteries and their components. His activities include patent prosecution (drafting, examination); a high number of opposition and appeal proceedings at the European Patent Office; patent litigation (patent infringement proceedings before German courts; nullity proceedings up to the highest instance, the Federal Supreme Court; also covering coordinated and complex EU-wide litigation activities); infringement and validity opinions; freedom-to-operate analyses; and due diligence. Dr Oser is heavily involved in numerous litigation cases, among others related to medical devices and important drug products.
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Prüfer & Partner mbB Sohnckestrasse 12 Munich 81479 Germany T +49 89 69 39 21 0 F +49 89 64 22 238 See firm profile p1050 Professional associations • AIPPI • epi • FICPI
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Osterrieth, Christian Partner – HOYNG ROKH MONEGIER christian.osterrieth@hoyngrokh.com | www.hoyngrokhmonegier.com
Christian Osterrieth has worked as an attorney at law since 1984, focusing exclusively on national, European and international IP law (technology law, trademark law and unfair competition law) since 1986, with a further specialisation for many years in patent litigation and licensing. Mr Osterrieth represents major and global clients in many technology-driven industries, including electronics, automotive, medical devices and pharmaceuticals. His work is particularly focused on the development and implementation of litigation strategies in multinational patent litigation. Mr Osterrieth studied law at the University of Konstanz. After passing his Bar exam, he studied French and international IP law at the University of Paris II (Université de Droit, d’Economie et des Sciences Sociales). Mr Osterrieth is the author and co-author of various books and articles on patent law and is a frequent speaker at international conferences relating to patent law. He is honorary professor of patent law at the University of Konstanz and guest professor at the Universities of Strasbourg (Centre for International Intellectual Property Studies), France and Haifa, Israel. From 2002 to 2004 he was president of the Licensing Executives Society in Germany and acted as vice president of LES International from 2012 to 2014. He is a member of the Patent Committee of the German Intellectual Property Association, chair of the IP Committee of the German Bar Association and a member of the Patent Committee of the Council of Bars and Law Societies of Europe.
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IAM Patent 1000
HOYNG ROKH MONEGIER Steinstrasse 20 Dusseldorf 40212 Germany T +49 211 550 220 F +49 211 550 22 550 See firm profile p998 Professional associations • APRAM • CCBE • LES
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Pansch, Rüdiger Partner – rospatt osten pross pansch@rospatt.de | www.rospatt.de
Rüdiger Pansch works in the fields of patent law, trademark and registered design law. He appears for German and international companies in infringement trials before all German courts. Mr Pansch is engaged in over 50 patent litigation, trademark, design right and unfair competition cases each year. He currently represents clients in several high-profile cases before the German courts and the Court of Justice of the European Union. In addition to his technical experience in different fields, Mr Pansch combats product piracy. His clients are world-famous luxury brands, as well as small and medium-size companies. Mr Pansch is the author of Die einstweilige Verfügung zum Schutz des geistigen Eigentums im grenzüberschreitenden Verkehr (The provisional injunction for the protection of intellectual property in crossborder transactions, Carl Heymanns Verlag, 2003).
rospatt osten pross Emanuel-Leutze-Straße 11,Dusseldorf 40547 Germany T +49 211 5772450 F +49 211 57724555 See firm profile p1054
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Pfau, Anton European Patent Attorney – Grünecker Patent Attorneys and Attorneys-at-Law pfau@grunecker.de | www.grunecker.de
Anton Pfau is a partner at Grünecker whose practice focuses on patent prosecution and litigation. He specialises in semiconductors, photolithography and laser technology, as well as wind turbines and medical devices. He is particularly experienced with EPO opposition and appeal procedures, as well as patent invalidation proceedings before the German Federal Patent Court. He studied physics at the Technical University of Munich and obtained his PhD in physics from the Ludwig Maximilian University of Munich, after which he completed a two-year research fellowship for advanced studies in semiconductor process technology and photolithography at the University of Berkeley. Dr Pfau is qualified as both a German and European patent attorney, as well as a European trademark and design attorney. He is a member of the German Association for the Protection of Intellectual Property, the International Federation of Intellectual Property Attorneys, the International Association for the Protection of Intellectual Property and the Optical Society of America. Grünecker was founded in 1924 and is among the largest IP law firms in Europe. The firm employs more than 100 attorneys and provides the full range of IP services in all technical and legal areas. The firm has its headquarters in Munich and branch offices in Berlin, Cologne and Paris.
Grünecker Patent Attorneys and Attorneys-at-Law Leopoldstrasse 4 Munich 80802 Germany T +49 89 21 23 50 F +49 89 22 02 87 See firm profile p988 Professional associations • AIPPI • FICPI • GRUR
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IAM Patent 1000
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Pfund, Andreas Partner – DREISS Patentanwälte PartG mbB pfund@dreiss.de | www.dreiss.de
Andreas Pfund is a partner at DREISS Patentanwälte and a European and German patent and trademark attorney. He holds a university diploma in physics and a doctoral degree in physics from ETH Zurich. His areas of practice include patent prosecution, including opposition and appeal proceedings before the European Patent Office, the German Patent and Trademark Office and the German Federal Patent Court. Mr Pfund has put particular focus on his work in patent litigation and patent nullity proceedings, where he collaborates with Germany’s top-tier attorneys at law in a variety of cases. Another focus of his work is the strategic planning and handling of multinational patent portfolios, including the coordination of cross-border patent prosecution proceedings, where Mr Pfund can rely on his wide-ranging network of patent practitioners around the globe. His clients are active in a variety of technical fields, including medical technology, consumer products, nanotechnology, semiconductor technology, microelectronics, computer technology, display technology, solar technology, photovoltaics, optics, technical physics, automation technology, handling technology, hydraulics and pneumatics; they range from small and medium-sized technology leaders to multinational corporations. Mr Pfund strongly believes that the key to providing useful advice is a thorough understanding of the client’s field of technology combined with the ability to integrate seamlessly in diversified legal and business teams in order to work together towards a common goal.
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DREISS Patentanwälte PartG mbB Friedrichstraße 6 Stuttgart 70174 Germany T +49 711 24 89 380 See firm profile p974 Professional associations • AIPPI • FICPI • INTA
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Platzoeder, Michael Partner – Wallinger Ricker Schlotter Tostmann, Patent- und Rechtsanwälte Partnerschaft mbB mplatzoeder@wallinger.com | www.wallinger.de
Michael Platzoeder is a partner at Wallinger Ricker Schlotter Tostmann – a renowned German law firm that covers all fields of IP law – and chair of the firm’s high-tech practice group. He is qualified as a European and German patent attorney and a European trademark and design attorney. Mr Platzoeder represents international and national clients in all areas of patent law, particularly prosecution, litigation, oppositions and legal opinions. He also represents clients in IP-related transactions, such as patent and technology licensing and transfers, R&D cooperations and intellectual property in mergers and acquisitions, predominantly in the fields of information and communication technology, electronics, software, security solutions, semiconductor technology, physics and medical devices. His services also cover comprehensive consulting relating to strategic IP management, such as innovation and patent portfolio management, IP exploitation, risk management, internal company IP processes and structures, and employee invention law. Mr Platzoeder has a master’s in physics and extensive international hands-on experience both as a long-time head of an IP department in the IT, telecoms and semiconductor industries and as outside counsel. He started his IP career in 1995 as a patent engineer at Siemens AG in the fields of telecoms and computer technology. Between 1999 and 2008 he served as the head of the IP department of the telecoms business group at Infineon Technologies AG – a leading global semiconductor supplier – and senior director of intellectual property and standards. Before joining Wallinger Ricker Schlotter Tostmann, between 2008 and 2012 Mr Platzoeder practised law at another German IP firm with a focus on building and defending several high-tech patent portfolios and on patent litigation, including several high-profile disputes during the ‘smartphone patent wars’ and multiple cases involving SEPs in the field of wireless technologies. Located in Munich, Wallinger Ricker Schlotter Tostmann started with five attorneys in 2007 and has grown to include over 20 patent attorneys and attorneys at law, representing clients from all over the world and across the full spectrum of industries.
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IAM Patent 1000
Wallinger Ricker Schlotter Tostmann, Patent- und Rechtsanwälte Partnerschaft mbB Zweibrueckenstrasse 5-7 Munich 80331 Germany T +49 89 210 2320 F +49 89 2194 9408 See firm profile p1086 Professional associations • IEEE • LES • VPP Sample client list • Axell Wireless • BMW • Cobham • Fresenius Med Care • KUKA • Merck • Valeo Schalter u Sensoren • Volkswagen
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Prusko, Carsten Partner – Zacco carsten.prusko@zacco.com | www.zacco.com
Carsten Prusko joined Zacco in 2011. He is a qualified German and European patent attorney, as well as a European trademark and design attorney. His practice focuses on the preparation and prosecution of patent applications in the fields of life sciences, especially in the fields of biochemistry, molecular biology, genetics, immunology and pharmaceuticals. Mr Prusko also represents clients in opposition and appeal procedures before the European Patent Office. In addition to European and international patent prosecution, Mr Prusko assists clients in developing IP strategies and managing their patent portfolios. Mr Prusko obtained his master’s in biology from Julius Maximilian University in Wurzburg, Germany, in 2002. He received his doctorate in biochemistry from the same university in 2006. During his doctoral studies he worked for more than two years at the prestigious Massachusetts Institute of Technology in Cambridge, United States. Mr Prusko trained as a patent attorney candidate at the IP firm Hoffmann Eitle in Munich from 2006 until 2010. He then received further training at the German Patent and Trademark Office and at the Federal Patent Court in Munich. He passed the German patent bar exam in November 2010 and the European qualifying exam in 2011.
Zacco 3rd Floor Bayerstrasse 83 Munich D-80335 Germany T +49 89 53 88 60 910 See firm profile p1098
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Reetz, Alexander Partner – Wildanger Kehrwald Graf von Schwerin & Partner mbB reetz@wildanger.eu | www.wildanger.eu
Alexander Reetz specialises in all aspects of patent law and technical copyright law. He has specific expertise in all aspects of IP litigation – namely, representation in infringement and nullity/opposition/ cancellation proceedings, coordination of patent disputes and crossborder work, evidentiary seizures, border seizures and enforcement counter-measures. Dr Reetz has represented and advised numerous clients in highly litigious matters relating to SEPs and non-SEPs over the past decade (mobile networks, connected cars) and advises on SEP strategy in the field of smart grids. His litigation experience extends to various other fields of technology and includes litigation involving mobile dating and gaming platforms, activity tracking, medical devices and wearables, semiconductors and electronics, robotics and mechanical engineering. JUVE German Commercial Law Firms Handbook (2020) lists Dr Reetz as “often recommended” (with competitors describing him as “firstrate”, “an excellent addition to the firm” and “a lawyer you can rely on”); he is recognised as a “Patent star” in MIP’s IP Stars (2020-2021) and as a leading patent professional in IAM Patent 1000 (2020-2021); he has also been listed as a recommended attorney for intellectual property in Handelsblatt/Best Lawyers for several years (2015-2021). IAM Patent 1000 Top Professionals 2019 states: “Alexander Reetz brings a wealth of FRAND knowledge to the table and looks set to be a client magnet for years to come”. WirtschaftsWoche (2019) lists Dr Reetz as a “highly recommended attorney for patent litigation”. Dr Reetz studied law in Cologne (Germany), Aberdeen (United Kingdom) and Stellenbosch (South Africa). He received his doctorate degree from the University of Cologne for a fundamental rights dogmatic study of the law and history governing university inventors and earned a master’s from the University of Aberdeen. He was admitted to the Bar in 2008. Dr Reetz was a senior member (counsel) of the Dusseldorf patent litigation practice of Hogan Lovells before he joined Wildanger in January 2019 as a partner. Dr Reetz is a member of the German Association for Intellectual Property and Copyright and the German group of the International Association for the Protection of Intellectual Property Rights.
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Wildanger Kehrwald Graf von Schwerin & Partner mbB Couvenstrasse 8 Dusseldorf 40211 Germany T +49 211 497 67 83 0 F +49 211 4 93 02 66 See firm profile p1092 Professional associations • AIPPI • GRUR • VPP
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Reinhard, Tim Partner – Osborne Clarke tim.reinhard@osborneclarke.com | www.osborneclarke.com
Tim Reinhard focuses mainly on clients in the life sciences sector, including pharma, biotech and medtech companies. He also works with technology companies with a focus in digitalisation. He advises clients on strategic patent and product lifecycle matters and on patent litigation cases, including nullity proceedings. He represents clients before the specialised patent courts in Munich, Mannheim, Dusseldorf and Hamburg, as well as before the Federal Patent Court. Dr Reinhard is very experienced in coordinating and supporting cross-border litigation cases. In connection with strategic patent advice, he supports clients with the negotiation and drafting of licence agreements and R&D projects, including clinical trial agreements. Dr Reinhard further advises clients in connection with the development and implementation of employee invention remuneration systems. As a trained commercial mediator, he supports his clients in mediation proceedings and is regularly called upon as a commercial mediator in technology and IP-related cases. Dr Reinhard studied in Würzburg and obtained a doctorate there in the area of intellectual property. He qualified as a lawyer in 1996. He worked for an international law firm in New York in 2000-2001 and joined Osborne Clarke in 2005. He is the author of several legal publications and also lectures on a regular basis.
www.IAM-media.com
Osborne Clarke Nymphenburger 1 Munich 80335 Germany T +49 89 5434 8000 See firm profile p1036 Professional associations • AIPPI • GRUR • LES
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Richter, Stefan Partner – HOYNG ROKH MONEGIER stefan.richter@hoyngrokh.com | www.hoyngrokhmonegier.com
Stefan Richter was admitted to the Bar in 2010. He advises and represents national and international clients in all fields of IP law. The focus of his work is on national and cross-border patent infringement litigation and parallel opposition and nullity proceedings before the European and German Patent Offices and the German Federal Patent Court. Mr Richter advises clients in various technical fields, in particular telecommunications and information technology, electronics, software, optics, semiconductors, automotive, mechanical engineering, material science and medical devices. He uses his special expertise in the field of software not only in his patent law forensic and advisory work, but also in his work counselling clients on software copyright law and data protection law. Mr Richter studied law at the University of Osnabrück, also earning an LLM from the University of Michigan Law School focusing mainly on US patent, copyright and trademark law, as well as on tort law. Mr Richter worked as a research fellow at the University of Osnabrück’s Institute for Commercial and Business Law (department of Hans-Jürgen Ahrens). He earned his PhD with a thesis on tort liability and attribution of damages. During his legal clerkship in the jurisdiction of the Higher Regional Court Dusseldorf, he continued to focus on patent law, working for German and international law firms in Dusseldorf and Chicago. Mr Richter is a regular visiting lecturer for patent law at the University of Osnabrück.
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HOYNG ROKH MONEGIER Steinstrasse 20 Dusseldorf 40212 Germany T +49 211 550 220 F +49 211 550 22 550 See firm profile p998 Professional associations • AIPPI • GRUR • VPP
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Ricker, Mathias Partner – Wallinger Ricker Schlotter Tostmann, Patent- und Rechtsanwälte Partnerschaft mbB mricker@wallinger.com | www.wallinger.de
Mathias Ricker is one of the founding partners of law firm Wallinger Ricker Schlotter Tostmann. He is part of the chemistry/pharmaceutical IP practice group, which has five partners. Before co-founding Wallinger Ricker Schlotter Tostmann, Dr Ricker was a partner with Jones Day, also acting as European IP coordinator. He holds a PhD in chemistry and was admitted as a German patent attorney in 1994 and as a European patent attorney in 1995. Dr Ricker has been active in the IP field since 1991. His activities have focused, and still do, on the areas of chemistry, pharmaceuticals and medical devices. He is active in counselling domestic and foreign clients in all areas of patent matters. In the past couple of years, his activities have concentrated on the representation of clients in opposition and nullity proceedings before the European Patent Office and the Federal Patent Court, as well as in infringement proceedings – in many instances, together with Wallinger Ricker Schlotter Tostmann’s attorneys at law. Dr Ricker recently represented Merz Pharma GmbH in various oppositions and appeals with Allergan in the area of dermal fillers and muscle relaxants/BOTOX, as well as Eastman Chemicals in the area of ‘green’ polycarbocylic acids for the preparation of polyesters against Synvina/Avantium. Other significant representations include Archroma IP GmbH (the former paper and textile business of Clariant), Autoneum, Bridgestone/Firestone, Eastman Chemicals, Fresenius Medical Care AG, Gate Group, International Paper, Merck AG Darmstadt, Nippon Shokubai and Verbio AG. Located in Munich, Wallinger Ricker Schlotter Tostmann started with five attorneys in 2007 and has grown to include over 20 patent attorneys and attorneys at law, representing clients from all over the world and across the full spectrum of industries.
Wallinger Ricker Schlotter Tostmann, Patent- und Rechtsanwälte Partnerschaft mbB Zweibrueckenstrasse 5-7 Munich 80331 Germany T +49 892 102 320 F +49 892 194 940 8 See firm profile p1086 Professional associations • epi • GRUR • PAK Sample client list • Archroma IP GmbH • Bridgestone/Firestone • Eastman Chemicals • Fresenius Medical Care • Merz Pharma GmbH • Nippon Shokubai
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Riße, Arno Attorney at law – ARNOLD RUESS Rechtsanwälte Partnerschaft mbB risse@arnold-ruess.com | www.arnold-ruess.com
Arno Riße is a partner of ARNOLD RUESS, a boutique IP firm in Dusseldorf, Germany. He specialises in IP law, with a focus on national and international patent litigation. He advises clients from four different continents on all technical fields, including telecommunications, pharmaceuticals, medical devices, chemistry and consumer goods. He has, in particular, broad experience in the high-tech sector (eg, in common technology standards – GSM, UMTS, LTE, WiFi, Bluetooth, GDDR, LPDDR and ERPS – and in semiconductor design), and the pharmaceutical and medical device sector (eg, osteoporosis and anticancer drugs, human genome nucleic acid probes, knee prosthesis and NIPT), including associated regulatory issues and FRAND. Before joining ARNOLD RUESS, Dr Riße worked at Freshfields Bruckhaus Deringer for several years. The Legal 500 praises the “very meticulous” Dr Riße as an “outstanding team player” and “future star”. He is also continuously recommended in the JUVE Handbook. Dr Riße studied law and philosophy. He holds a law degree and a German SJD (Dr jur) from Munster University, Germany, and an LLM from Auckland University, New Zealand. He gave lectures on European patent law at the International Summer University, Giessen, and was a speaker at the Honourable William C Conner Inn of Court Global Patent Trial, New York, in April 2019; he contributed a chapter on injunctions in Germany to the book Patent Law Injunctions published in late 2018. Dr Riße speaks German and English.
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ARNOLD RUESS Rechtsanwälte Partnerschaft mbB Königsallee 59a Dusseldorf 40215 Germany T +49 211 5424 4064 F +49 211 5424 4044 See firm profile p926 Professional associations • GRUR • LES
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Schachl, Thomas Partner – Wallinger Ricker Schlotter Tostmann, Patent- und Rechtsanwälte Partnerschaft mbB tschachl@wallinger.com | www.wallinger.de
Thomas Schachl has been a litigator in the IP field for more than 15 years. A partner with Wallinger Ricker Schlotter Tostmann since 2014, he heads the firm’s legal and trademark department. The main focus of his work is the enforcement and defence of IP rights in the areas of mechanical engineering (automotive), medical devices, information technology, biotech and pharma. He represents clients in patent infringement trials before the German courts, as well as provides strategic counselling and coordination of international pending parallel patent infringement and nullity proceedings. Mr Schachl routinely advises his clients on IP-related transactions, drafting and evaluation of all types of IP contract, including licensing, confidentiality and R&D agreements. He has also handled extensive IP damages suits, patent entitlement actions, inspections and evidence gathering, trade fair seizures, as well as preliminary injunction matters; he has also conducted several mediation hearings. He provides legal advice in patent infringement matters, IPrelated transactions and IP due diligence and know-how transfer, IP contracts, licensing, confidentiality and R&D agreements, as well as know-how protection and employee invention matters (remuneration and entitlement matters). He is further counselling on inspection and evidence taking matters, border seizures, trade fair disputes and IPrelated unfair competition disputes; he also advises on out-of-court negotiations, including mediation proceedings. He represents clients before German courts and the upcoming Unified Patent Court. Mr Schachl is an attorney at law and a certified German IP specialist (Fachanwalt für gewerblichen Rechtsschutz); he holds an LLM in international IP law focusing on international and national aspects of patent and trademark law. He acts for a wide range of national and international corporations and small and mid-sized enterprises, and is also a frequent speaker on various IP-related matters at Licensing Executives Society conferences and the Intellectual Property Owners Association. Located in Munich, Wallinger Ricker Schlotter Tostmann started with five attorneys in 2007 and has grown to include over 20 patent attorneys and attorneys at law, representing clients from all over the world and across the full spectrum of industries.
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Wallinger Ricker Schlotter Tostmann, Patent- und Rechtsanwälte Partnerschaft mbB Zweibrueckenstrasse 5-7 Munich 80331 Germany T +49 892 102 320 F +49 892 194 940 8 See firm profile p1086 Professional associations • AIPPI • EPLAW • LES
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Schäflein, Christian Partner – Maiwald Patentanwalts- und Rechtsanwalts-GmbH schaeflein@maiwald.eu | www.maiwald.eu
As one of Maiwald’s senior partners, Christian Schäflein has counselled clients on all phases of the life cycle of IP assets. His international clients rely on his expertise in handling disputes across the full spectrum of IP law worldwide. His professional competence in looking after the IP interests of internationally operating corporations derives from, among other things, his detailed knowledge of US patent law. As head of the digitalisation and data security group at Maiwald, his areas of focus include artificial intelligence, Internet of Things, data security and autonomous driving. Dr Schäflein believes that the diversity of his team is a major factor in the firm’s success as people of varied cultural and religious backgrounds, ages, lifestyles and genders approach a problem from different perspectives, often arriving at better, more creative and valuable solutions than a homogeneous team. He has prosecuted and advised on patents relating to electronic circuits and sensor systems, including computer processors and semiconductor devices, computer-based inventions such as graphics processing, computer algorithms and data transfer, and consumer electronics such as navigation devices and mobile phones. Dr Schäflein holds a PhD in the field of experimental semiconductor physics and conducted research on carbon nanotubes prior to becoming a German and European patent attorney. Focus of work • Artificial intelligence • Data security • Communication technology • Computer-implemented inventions • Designs • IP consulting
Maiwald Patentanwalts- und Rechtsanwalts-GmbH Elisenhof Elisenstrasse 3 Munich 80335 Germany T +49 89 747 266 0 F +49 89 776 424 See firm profile p1022 Professional associations • AIPLA • AIPPI • GRUR
Services • Patent litigation • Patent prosecution and portfolio management • Filing strategies and drafting patent applications • Freedom-to-operate and validity analyses • Opposition and nullity proceedings
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Scherenberg, Oliver Founder – SCHERENBERG LEGAL & LICENSING ols@scherenberg-ll.com | www.scherenberg-ll.com
Oliver Scherenberg founded SCHERENBERG LEGAL & LICENSING in 2015 as a specialised boutique law firm focused on the monetisation of IP rights. Previously, Mr Scherenberg was a partner at leading German IP litigation firms and held senior management positions at a service provider for Deutsche Bank patent funds. Since 2015, Mr Scherenberg has also been the outsourced general counsel for international patent licensing company Sisvel. Through these positions, he has gained deep experience across various industries and the models for re-financing investments in innovation and the creation of other intangible assets. Mr Scherenberg’s legal experience spans sectors such as telecommunications, wireless technology, audio/video coding, automotive, media and entertainment. He provides clients with strategic, operational and tactical advice across a broad range of legal and economic issues related to the monetisation of IP rights. Further fields of expertise are reputation management and crisis communication. In his capacity as general counsel for the Sisvel Group, Mr Scherenberg has been involved in numerous international headline deals regarding the licensing and enforcement of standard essential patents in the telecommunications and wireless industry, as well as the facilitation of patent licensing programmes/patent pools. He is involved as an expert in the consultations to reform the German Patent Code, which are considering – among other things – whether or not to apply a proportionality check in infringement proceedings. Mr Scherenberg is a qualified German attorney at law. He holds a law degree from Heidelberg University and a JD from the Technical University of Dresden.
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SCHERENBERG LEGAL & LICENSING Luruper Chaussee 125 (Haus 6 rechts) Hamburg 22761 Germany T +49 40 40 113 193 0 F +49 40 40 113 193 1 Professional associations • GRUR • LES
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Schmidt, Joerg Partner – Wildanger Kehrwald Graf v Schwerin & Partner mbB schmidt@wildanger.eu | www.wildanger.eu
For many years, Joerg Schmidt has represented and advised clients in the areas of patent and utility model law, as well as design patent, trademark, copyright and unfair competition law. He has extensive experience in litigation, especially in preliminary injunction proceedings and independent proceedings for taking evidence before major national courts, as well as proceedings before the European Court of Justice in cases relating to EU trademarks and Community designs. He is also an expert on border detention and product piracy cases. Mr Schmidt advises numerous domestic and foreign clients. His work covers cases relating to mechanical and electrical engineering, telecoms (especially SEPs) and chemistry. Mr Schmidt studied law in Münster and completed additional training in IP law. Having passed his first state examination, he joined the IP and press law department of a renowned Cologne-based firm. He then completed internships in Münster, Cologne and San Francisco. In 2002 he was admitted to the Bar in Dusseldorf and joined Wildanger Kehrwald Graf von Schwerin & Partner mbB. He became a partner of the firm in 2008. In the Juve Handbook of Commercial Law Firms 2014/2015 he was praised for “having a deep knowledge of procedural matters and a pragmatic approach” and was recommended again in the following editions for trademark and design litigation. Mr Schmidt is a member of the German Association for Intellectual Property and Copyright and the German group of the International Association for the Protection of Intellectual Property Rights, as well as the European Communities Trademark Association and the International Trademark Association.
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Wildanger Kehrwald Graf v Schwerin & Partner mbB Couvenstrasse 8 Dusseldorf 40211 Germany T +49 211 497 67 83 0 F +49 211 493 0265 See firm profile p1092 Professional associations • AIPPI • GRUR • INTA
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Schmoll, Andrea Partner – Osborne Clarke andrea.schmoll@osborneclarke.com | www.osborneclarke.com
With a legal education gained in Germany and Hong Kong and almost 20 years of experience as a dedicated IP lawyer at international law firms, Andrea Schmoll combines outstanding expertise in intellectual property with a truly international mindset. She is recognised as one of Germany’s top licensing and IP transactions experts, specialising in the commercialisation of IP rights, along with technology transfer, employee invention law and research and development projects. In the life sciences and healthcare sector, Dr Schmoll works as a trusted adviser and central point of contact for clients that include new biotech entrants, universities and big pharma companies, guiding them through the full spectrum of legal issues, from IP rights and regulatory matters through to clinical trials and R&D agreements. Dr Schmoll was admitted to the Bar in Germany in 2002 and gained a PhD from the University of Jena in 2000. Prior to joing Osborne Clarke in 2014, she was a partner at Baker & McKenzie. Dr Schmoll is regularly recommended in her area of expertise by JUVE and The Legal 500. She is an active member of several professional organisations, including the German Association for the Protection of Intellectual Property, the Licensing Executives Society and the Pharma Licensing Club Germany. An influential lobbyist, Dr Schmoll regularly speaks at IP and life sciences conferences and has authored and co-authored several books on IP licensing and technology transfer.
www.IAM-media.com
Osborne Clarke Innere Kanalstrasse 15 Cologne 50823 Germany T +49 221 5108 4260 See firm profile p1036 Professional associations • GRUR • LES • PCLD
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Schröder, Christoph Partner – Maikowski & Ninnemann schroeder@maikowski-ninnemann.com | www.maikowski-ninnemann.com
Christoph Schröder specialises in patent prosecution and patent litigation, as well as providing client advice in the medical technology, automotive technology, telecommunications, electronics and mechanical engineering fields. Dr Schröder is routinely involved in various major series of patent disputes, including infringement procedures before the district and appeal courts and nullity procedures before the Federal Patent Court. In addition, he has vast experience in patent prosecution, including the drafting of German, European and international patent applications and the handling and coordination of procedures throughout the world. He has represented his clients in a large number of opposition procedures before the German Patent and Trademark Office, the Federal Patent Court and the European Patent Office. Dr Schröder studied electrical engineering at the Braunschweig Institute of Technology and received his doctorate from the Georgia Institute of Technology in 2001. In 2005, having spent time working within the medical technology sector conducting research concerned with MRI devices, he joined Maikowski & Ninnemann. He has been a partner at the firm since 2010. Dr Schröder is a member of the German Association for the Protection of Intellectual Property, the International Association for the Protection of Intellectual Property, the Licensing Executives Society and the German Association of Intellectual Property Experts.
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Maikowski & Ninnemann Kurfuerstendamm 54-55 Berlin 10707 Germany T +49 30 881 818 See firm profile p1020 Professional associations • AIPPI • GRUR • LES
www.IAM-media.com
Schüll, Gottfried Equity Partner – COHAUSZ & FLORACK gschuell@cohausz-florack.de | www.cohausz-florack.de
Gottfried Schüll has managed the successful enforcement and monetisation of SEP patent portfolios with worldwide coverage. He is currently representing owners of patents essential for the AVC/H.264 video compression technology against TV manufacturers. Prior successful enforcement campaigns against the largest Chinese smartphone manufacturers based on AVC/H.264 SEPs have contributed to the status of the MPEG LAs corresponding licensing programme as the gold standard in SEP licensing. In these proceedings, the first instance and the appeals courts confirmed infringement of the standardised technology, as well the FRAND character of the pool licence. These cases are in continuance of his work for the patent owners of 3G, NFC, internet protocol, ADSL and MPEG-2 essential patents in complex proceedings against world market leaders in the fields of video compression, digital payment and communication technology in the past two decades. As a patent attorney and longstanding partner of COHAUSZ & FLORACK, Mr Schüll has already acted as lead counsel in well over 750 patent disputes and nullity proceedings. He is active before the Federal Court of Justice, the Federal Patent Court and before German regional and higher regional courts. The Federal Court of Justice’s fundamental MPEG-2 video signal coding decision, which introduced the independent protection of digital data generated by a patented process, is due to his efforts. Mr Schüll was chair of the IT working group of the Licensing Executives Society Germany for 10 years and, due to his reputation in litigation matters, is also an independent court expert appointed by the Dusseldorf Higher Regional Court and an arbitrator. He frequently speaks at specialist events and is the author of numerous articles on the German and European SEP sector.
www.IAM-media.com
COHAUSZ & FLORACK Bleichstrasse 14 Dusseldorf 40211 Germany T +49 211 9049 0118 F +49 211 9049 049 See firm profile p958 Professional associations • epi • GRUR • LES
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Schumacher, Cordula Attorney at law – ARNOLD RUESS Rechtsanwälte Partnerschaft mbB schumacher@arnold-ruess.com | www.arnold-ruess.com
Cordula Schumacher is a partner of boutique IP firm ARNOLD RUESS, based in Dusseldorf, Germany. She specialises in intellectual property, with a focus on national and international patent litigation covering all technical fields. In addition, Ms Schumacher has been involved in various cases with a strong competition law focus (eg, the European Commission’s pharmaceutical sector inquiry and standard-essential patent litigation in the telecommunications sector with fair, reasonable and non-discriminatory defences). The JUVE Handbook of German Commercial Law Firms has selected her as one of 13 “Leading Partners under 50 years” in patent law for the whole of Germany. The Legal 500 praises her as an “excellent communicator” and “vigorous specialist”, as well as a “top patent litigator” (“very good trial preparation”) whose “performance amazes clients”. As a “strategic thinker identifying the key issues” and an “accessible, expert in her field”, she offers a “prompt and reliable service”. Other listings have recognised her expertise – such as IAM Patent 1000, which describes her as “an impressive lawyer with a sharp mind and excellent technical understanding” (as well as a “polyglot and pharma ace” whose “star continues to rise”), Chambers and Partners and Leaders League, which highly recommends her. Chambers reports a client as saying: “She is great at coordinating cases and actions. She is prudent and really sees the essential, where others get lost in the woods.” She also features in the Best Lawyers ranking. Before joining ARNOLD RUESS, Ms Schumacher worked at Freshfields Bruckhaus Deringer for six years (Dusseldorf and Hong Kong). The Dusseldorf Bar Association awarded her the title of Fachanwalt (bar-certified specialist) for IP law. Ms Schumacher studied law and business administration at the Universities of Bayreuth and Cologne, Hawaii Pacific University and Sorbonne-Panthéon, Paris I. She holds a law degree from Cologne University, a master’s in IP law from Heinrich Heine University, Dusseldorf and a French law degree from Sorbonne-Panthéon, Paris I. Ms Schumacher speaks German, English, Spanish and French.
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ARNOLD RUESS Rechtsanwälte Partnerschaft mbB Königsallee 59a Dusseldorf 40215 Germany T +49 211 54 24 40 45 F +49 211 54 24 40 44 See firm profile p926 Professional associations • EPLAW • GRUR • LES
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Sinz, David Partner – DREISS Patentanwälte PartG mbB pa-sinz@dreiss.de | www.dreiss.de
David Sinz is a partner at DREISS Patentanwälte and a European and German patent and trademark attorney. His areas of practice include the prosecution of patents, opposition and invalidity proceedings, and infringement proceedings in various fields of technology. A particular focus of Mr Sinz’s work is on opposition and appeal proceedings before the EPO. In infringement cases he collaborates with Germany’s top-tier attorneys at law on a regular basis. His clients come from a variety of technological backgrounds, including medical technology and hygienic products, consumer products, 3D printing technology and other additive manufacturing techniques, general mechanical and apparatus engineering, automotive technology including electrified mobility, as well as packaging technology. Mr Sinz’s clients are German and international large-scale companies, as well as local owner-operated mediumsized enterprises. He advises numerous small and medium-sized enterprises on cost-effective strategies for developing their IP portfolios, particularly with regard to entering new foreign markets and technology fields. Mr Sinz obtained his master’s in process engineering from the University of Stuttgart. He also holds a PhD in experimental physics from Eindhoven University of Technology. Besides the Netherlands, he also lived in the United States for an extended period of time.
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DREISS Patentanwälte PartG mbB Friedrichstraße 6 Stuttgart 70174 Germany T +49 711 248 938 0 See firm profile p974
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Söldenwagner, Manuel Partner – Eisenführ Speiser msoldenwagner@eisenfuhr.com | www.eisenfuhr.com
Manuel Söldenwagner is one of Germany’s leading patent attorneys in the life sciences field, with a particular focus on biotechnology, biochemistry, microbiology, scents and aromatics, food chemistry and pharmacy. He also advises clients in the chemistry, process engineering, medical engineering, dental technology and coating technology fields. His work is particularly focused on complex freedom-to-operate analyses and IP consultation for various venture capital funds. Mr Söldenwagner’s international academic background in molecular biotechnology is based on studies at the Technical University of Munich, the University of Queensland and research work in Hamburg, Munich and Cambridge. As a European and German patent attorney, Mr Söldenwagner advises multinational corporations, universities and academic research institutions, as well as start-up companies and several small and medium-sized enterprises, with a particular focus on ‘hidden champions’. Mr Söldenwagner has professional experience in supporting clients in building up and managing national and international IP portfolios. Besides daily prosecution work, he supports and represents clients in licensing negotiations and opposition, invalidation and infringement proceedings in Germany, Europe and abroad (eg, China). Mr Söldenwagner lectures regularly on patent law both in Germany and abroad (eg, Japan). He conducts workshops and seminars and coauthored the textbook The European Patent Application, published by Eisenführ Speiser and Chizai Corporation. He also co-authored the third edition of the renowned commentary Beck’scher Kommentar on the European Patent Convention.
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Eisenführ Speiser Arnulfstrasse 27 Munich 80335 Germany T +49 89 5490 750 F +49 89 5502 755 5 See firm profile p980 Professional associations • FICPI • PAK
www.IAM-media.com
Sonnenberg, Fred Founding Partner – SONNENBERG HARRISON fred.sonnenberg@shp.law | www.sonnenbergharrison.law
Fred Sonnenberg has been working in the field of IP law since 1996. He is a founding partner of patent and IP law firm SONNENBERG HARRISON, of French law firm Sonnenberg Harrison Partners France (formerly 24IP Law Group France), as well as of former patent and law firm of Sonnenberg Fortmann (part of the 24IP Law Group). Mr Sonnenberg has leadership qualities and entrepreneurial understanding. He studied electrical engineering and physics at the Technical University of Munich and received his undergraduate diploma in physics in 1995. He wrote his diploma thesis on evaporation losses in LH2 driven vehicles at the development department of BMW AG in Munich. After his training at a patent law firm in Munich, including a onemonth internship at a French patent law firm and clerking at the German Patent and Trademark Office, the German Federal Patent Court and the District Court in Munich, he passed the examination to become a German patent and trademark attorney and subsequently became a patent attorney before the European Patent Office and the French Institute for Industrial Property. Mr Sonneberg speaks German, French and English.
SONNENBERG HARRISON Herzogspitalstraße 10a Munich 80331 Germany T +49 89 23 23 00 F +49 89 23 230 230 Professional associations • CNCPI • epi • German Chamber of Patent Attorneys
www.IAM-media.com
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Stammberger, Tobias KW Partner – Samson & Patentanwälte mbB stammberger@samson-partner.de | www.samson-partner.de
Tobias KW Stammberger is a German patent attorney, a European patent attorney and a European trademark and design attorney. Dr Stammberger gained a physics diploma with honours from Munich Technical University and a master’s in physics from the University of Bordeaux. He completed his studies with a doctorate summa cum laude from the Ludwig Maximilian University of Munich. His research centred on nuclear magnetic resonance imaging and computer tomography, as well as image signal analysis and signal post processing. For his work, he received the GSF postgraduate prize. He is the author of several scientific publications and lectures. Dr Stammberger worked for a major multinational electrical engineering group before he turned to the protection of intellectual property by joining Samson & Partner Patentanwälte in 2000. Besides his prosecution practice, Dr Stammberger focuses on the representation of clients in opposition and appeal proceedings before the German Patent Office and the EPO, and nullity proceedings before the Federal Patent Court and the Federal Supreme Court of Justice. He is frequently involved in litigation – often in an intensive cross-border, multi-patent context – on both the offensive and defensive sides. Dr Stammberger advises global players and medium-sized companies in the information and communication technology fields, including software and multimedia, medical technology, electronics, mechanics and automotive. Dr Stammberger authored the textbook German and European Patent Law and is a visiting lecturer at Hagen Law School. Dr Stammberger has been repeatedly recommended in Managing Intellectual Property’s IP Stars and Juve and recognised in the IAM Patent 1000 from 2014 to 2020 and Who’s Who Legal Germany 2021.
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Samson & Patentanwälte mbB Widenmayerstrasse 6 Munich 80538 Germany T +49 89 29 19 82 0 F +49 89 29 94 65 See firm profile p1056 Professional associations • epi
www.IAM-media.com
Stief, Marco Partner – Maiwald Patentanwalts- und Rechtsanwalts-GmbH stief@maiwald.eu | www.maiwald.eu
Marco Stief is a partner of Maiwald and head of the legal department. Dr Stief has gained many years of experience in international and national patent infringement cases. He also regularly advises companies on complex national and international IP transactions, licensing, partnership and facilities and equipment agreements, as well as on trademark issues, competition law, employee invention law and unfair competition law. Dr Stief is a former Fulbright scholar; he lectures on intellectual property at the Universities of Marburg and Dresden, and is the publisher and author of numerous titles, including Patent Law - A Handbook published in German and English, Vertragshandbuch Pharma und Life Sciences (Handbook of Pharmaceutical Contracts) and Supplementary Protection Certificates. Prior to joining Maiwald, Dr Stief practised as an attorney at law at the Dusseldorf office of Clifford Chance, the Dusseldorf, London and Munich offices of Freshfields Bruckhaus Deringer, and was legal director of Fresenius SE & Co KGaA in Bad Homburg. Intellectual Asset Management (IAM) magazine nominated Dr Stief as one of the top 300 world’s leading IP strategists. He is listed in the German JUVE Handbook as one of the top 8 patent litigators under 50 in Germany. According to JUVE, clients particularly esteem Dr Stief for his pragmatic approach. The Legal 500 recommends him as “pragmatic, fast, results-oriented and always with the highest professional standards”. Focus of work • Patent infringement litigation • Patents and utility models • Supplementary protection certificates • Competition and antitrust law • Compliance • Contract law • Employee invention law • Pharmaceutical law
www.IAM-media.com
Maiwald Patentanwalts- und Rechtsanwalts-GmbH Elisenhof Elisenstrasse 3 Munich 80335 Germany T +49 89 747 266 0 F +49 89 776 424 See firm profile p1022 Professional associations • DAJV • DAV • GRUR
IAM Patent 1000
563
Tanner, Andreas Partner – Maikowski & Ninnemann tanner@maikowski-ninnemann.com | www.maikowski-ninnemann.com
Andreas Tanner is a German and European patent attorney, trained in electrical engineering. With his technical focus on telecommunications, electronics and semiconductors, he is active in both patent prosecution and patent litigation matters. He is regularly involved in various major series of patent disputes, including infringement procedures before the district and appeal courts and nullity procedures before the Federal Patent Court in these technical fields. In addition, Mr Tanner gives client advice in the field of preparation of licence and cooperation agreements and counselling on employees’ invention law. He studied electrical engineering at RWTH Aachen where he specialised in power electronics before starting his career as a patent attorney in 2008. In 2013 he gained his master’s in IP law from the Dusseldorf Law School. Mr Tanner joined Maikowski & Ninnemann as an associate in 2012 and has been a partner and the head of its Munich office since 2016. Mr Tanner is a member of the German Association for the Protection of Intellectual Property and is an internal auditor at the Institute of Professional Representatives before the European Patent Office.
Maikowski & Ninnemann Isartorplatz 5 Munich 80331 Germany T +49 89 23 888 30 0 See firm profile p1020
564
IAM Patent 1000
www.IAM-media.com
Thielmann, Andreas Equity Partner – COHAUSZ & FLORACK athielmann@cohausz-florack.de | www.cohausz-florack.de
Andreas Thielmann has been a registered German and European patent attorney since 1991 and a partner with COHAUSZ & FLORACK since 1993. He has carried out patent and trademark prosecution since the beginning of his career and is routinely involved in patent litigation for both domestic and international clients. Mr Thielmann is experienced in handling patent infringement cases before the German district and higher regional courts, as well as nullity proceedings before the Federal Patent Court and the Federal Court of Justice. He is also active in opposition and appeal proceedings before the European Patent Office. Having regularly attended international conferences over the past 25 years, he relies on many personal business acquaintances in his worldwide IP network. Mr Thielmann also serves as an honorary judge in the senate for patent attorney matters at the Federal Court of Justice, Karlsruhe. Mr Thielmann’s technical background is in the mining technology and general mechanical engineering fields. His current practice focuses mainly on packaging technology, ceramics and refractory materials, as well as environmental, power plant and processing technologies. He obtained his graduate degree in mining engineering from RWTH Aachen University in 1987.
COHAUSZ & FLORACK Bleichstrasse 14 Dusseldorf 40211 Germany T +49 211 904 900 F +49 211 904 9049 See firm profile p958 Professional associations • AIPPI • FICPI • LES
www.IAM-media.com
IAM Patent 1000
565
Timmann, Henrik Partner – rospatt osten pross timmann@rospatt.de | www.rospatt.de
Henrik Timmann has worked in the field of IP law from the beginning of his legal career. The focus of his practice is patent disputes, in particular infringement cases, and licensing. Mr Timmann has been strategical adviser and lead counsel in multimillion patent infringement proceedings relating to technical fields such as mobile telecommunications (2G-5G), biotechnology, chemistry, computer hardware and software, electronics, pharmaceuticals, genetic engineering and optics. His clients are mainly large and medium-sized Asian, US and European companies. With regard to patent law, Mr Timmann’s focus is on litigation of infringement proceedings. Other major fields of activity are trademark law, design law and unfair competition law. In addition to litigation, Mr Timmann also has many years of experience in licence agreements and the remuneration of employee inventions. He is joint editor and co-author of Handbuch des Patentrechts (Patent Law Handbook), 2nd edition 2020, CH Beck-Verlag, as well as its English counterpart Patent Law – A Handbook, 1st edition 2014, CH Beck, Hart, Nomos. Mr Timmann regularly lectures on topics related to IP law.
rospatt osten pross Emanuel-Leutze-Straße 11 Dusseldorf 40547 Germany T +49 211 5772450 F +49 211 57724555 See firm profile p1054
566
IAM Patent 1000
www.IAM-media.com
Tostmann, Holger Partner – Wallinger Ricker Schlotter Tostmann, Patent- und Rechtsanwälte Partnerschaft mbB htostmann@wallinger.com | www.wallinger.de
Holger Tostmann has been a partner at Wallinger Ricker Schlotter Tostmann since 2008. Dr Tostmann holds a doctorate in chemistry and was admitted as a German patent attorney in 2004 and as a European patent attorney in 2005. Dr Tostmann specialises in patent prosecution with an international focus, as well as in opposition (appeal) proceedings, in which Dr Tostmann has deep experience and enjoys high success rates. Dr Tostmann provides overarching advice with regard to sensible patent portfolio management, which maps technical expertise and legal experience to the clients’ business interests. Dr Tostmann’s technical expertise, based on a long research career, five years of which were spent at top-notch US research facilities, includes physical, technical and polymer chemistry; new materials; solid state physics; soft condensed matter; biophysical chemistry; and pharmaceuticals (‘small molecules’). Dr Tostmann is active in various committees of the American Intellectual Property Law Association in the United States, particularly in the areas of chemistry and biotechnology. He also regularly lectures on patent law topics at the annual conferences of the American Chemical Society. Located in Munich, Wallinger Ricker Schlotter Tostmann started with five attorneys in 2007 and has grown to include over 20 patent attorneys and attorneys at law, representing clients from all over the world and across the full spectrum of industries.
Wallinger Ricker Schlotter Tostmann, Patent- und Rechtsanwälte Partnerschaft mbB Zweibrueckenstrasse 5-7 Munich 80331 Germany T +49 892 102 320 F +49 892 194 940 8 See firm profile p1086 Professional associations • AIPLA • ACS • AIPPI Sample client list • Borregaard • Celgene • Grupo Petrotemex • Immunolight • Mölnlycke Healthcare AB • Novomer
www.IAM-media.com
IAM Patent 1000
567
Verhauwen, Axel Partner – Krieger Mes & Graf v der Groeben axel.verhauwen@krieger-mes.de | www.krieger-mes.de
Axel Verhauwen has dealt exclusively with IP litigation for 20 years. He initiated the first standard-related infringement cases in Germany before the Dusseldorf District Court on behalf of the MPEG-2 pool, which became the first landmark decisions with respect to standard-related infringement and fair, reasonable and non-discriminatory issues. In the last 10 years he has managed hundreds of standards-related cases with respect to MPEG-2 video, MPEG-4 audio, 3G and 2G. He also deals with a wide variety of technical fields, including power plants, wind energy, automobile technology, stents, software and general mechanics. He belongs to a small group of leading IP litigators in Germany who are under 50 years old. His experience also extends to litigation relating to trademarks, unfair competition, drug advertising and pharmaceutical law. Following his studies in Germany and abroad, and immediately after he was admitted to the Bar in 1996, Dr Verhauwen started to focus on patent law at Krieger Mes. He became a partner of the firm in 2003. He is the author of a chapter on Section 14 of the Patent and Utility Model Act in Commentary on Patent and Utility Model Act by Peter Mes.
Krieger Mes & Graf v der Groeben Bennigsen-Platz 1 Dusseldorf 40474 Germany T +49 211 4403 370 F +49 211 4403 3760 See firm profile p1014 Professional associations • AIPPI • EPLAW • GRUR Sample client list • France Brevets • KPN • Melitta • MPEG-LA-Pool • Saint-Gobain • tesa • VW
568
IAM Patent 1000
www.IAM-media.com
Vogelsang-Wenke, Heike Partner – Grünecker Patent Attorneys and Attorneys-at-Law vogelsang-wenke@grunecker.de | www.grunecker.de
Heike Vogelsang-Wenke joined Grünecker in 1987 and co-heads its biotech department. Ms Vogelsang-Wenke has a strong background in biotechnology, with diplomas in both chemistry and biology, and holds a PhD in molecular biology. She has gained extensive experience drafting and prosecuting patent applications before the European and German Patent Offices. Her practice focuses on opposition and appeal proceedings and she routinely represents patentees and opponents in multi-party proceedings. Her practice also includes representing clients in invalidation proceedings before the German Federal Patent Court and the Supreme Court, as well as in infringement proceedings before the competent German district and appellate courts. Ms Vogelsang-Wenke’s main technical expertise is in pharmaceutical chemistry, biochemistry, immunology, virology and general recombinant DNA technology. Ms Vogelsang-Wenke is a member of the German Association for the Protection of Intellectual Property, the Licensing Executives Society, the International Federation of Intellectual Property Attorneys and the German Society for Biochemistry and Molecular Biology. She has been a board member of the Association of German Patent Attorneys since 2004 and a council member of the European Patent Institute since 2011. She has been elected epi vice president in 2017 and 2020. In 2020 she was named an IP Star by Managing Intellectual Property and a recommended individual by both the IAM Patent 1000 and JUVE. Grünecker was founded in 1924 and is among the largest IP law firms in Europe. The firm employs more than 100 attorneys and provides the full range of IP services in all technical and legal areas. The firm has its headquarters in Munich and branch offices in Berlin, Cologne and Paris.
www.IAM-media.com
Grünecker Patent Attorneys and Attorneys-at-Law Leopoldstrasse 4 Munich 80802 Germany T +49 89 21 23 50 F +49 89 22 02 87 See firm profile p988 Professional associations • epi • FICPI • GRUR
IAM Patent 1000
569
von Petersdorff-Campen, Stephan Partner – rospatt osten pross petersdorff@rospatt.de | www.rospatt.de
Stephan von Petersdorff-Campen can look back on more than 30 years of extensive experience as a trial lawyer and has worked in all fields of industrial property rights and competition law. He is a specialist in trademark and design law. He appears for companies from the sectors of mechanical and plant engineering, automotive technology, domestic appliances, textiles, building materials and building technology before all German courts with jurisdiction over industrial property rights and before the European Court of Justice. In addition, Mr von Petersdorff-Campen also advises companies in the luxury goods industry and in commerce on developing and implementing protection or defensive strategies. He recently handled a number of high-profile patent entitlement litigations. His major activities in the area of competition law are focused on work for agencies and special aspects of competition law, such as protecting company secrets and cases involving technical and scientific issues. Mr von Petersdorff-Campen has given lectures to the textile industry and is a co-author of Handbuch Mode-Marketing (Manual of Fashion Marketing), published by Deutscher Fachverlag.
rospatt osten pross Emanuel-Leutze-Straße 11 Dusseldorf 40547 Germany T +49 211 5772450 F +49 211 57724555 See firm profile p1054
570
IAM Patent 1000
www.IAM-media.com
von Rospatt, Max Partner – rospatt osten pross max@rospatt.de | www.rospatt.de
Max von Rospatt is a trial attorney in the field of patent and utility model law. His mainly international clients are active in the fields of mechanics, electronics and mechanical engineering, pharmaceuticals, genetic engineering, chemistry and fine chemicals, digital entertainment electronics and medical engineering. He is a fierce litigator with a strategical approach. Mr von Rospatt has many years of experience appearing before all German courts that are competent for patent-related matters. Furthermore, he frequently takes part in proceedings before the European Patent Office, the German Patent Office and the Federal Patent Court. In addition to his focus on patent law, Mr von Rospatt works on cases concerning other fields of law such a trademarks, designs and unfair competition, as well as drafting licence agreements. Mr von Rospatt frequently lectures on German patent law.
rospatt osten pross Emanuel-Leutze-Straße 11 Dusseldorf 40547 Germany T +49 211 577 2450 F +49 211 577 24555 See firm profile p1054
www.IAM-media.com
IAM Patent 1000
571
von Samson-Himmelstjerna, Friedrich R Partner – Samson & Partner Patentanwälte mbB samson@samson-partner.de | www.samson-partner.de
Friedrich R von Samson-Himmelstjerna is the founder of Samson & Partner. Mr von Samson-Himmelstjerna has been a German patent and trademark attorney for over 35 years. He has also been a European patent and an EU trademark attorney since the launch of the related rights and authorities. Further, he has extensive experience in strategies for the acquisition and enforcement of national and international patents and trademarks, as well as in litigation, arbitration and licensing. Mr von Samson-Himmelstjerna studied physics, microbiology and mining at the Universities of Marburg, Berlin and Munich, and holds a diploma in physics with first-class honours from Munich University. His diploma thesis related to a problem in the field of information theory in optics. His main fields of technical expertise are applied physics, biophysics, optics, information and communication technology, electronic control systems, semiconductor elements and mechanics. He regularly lectures on IP law at various national and international seminars for professionals and is active as a court expert at the Appeal Court of Munich. Further, he is the co-author of a manual on mediation and a textbook on patent law. Mr von Samson-Himmelstjerna has been recommended in Juve 2011 and 2016/2017, Managing Intellectual Property’s IP Stars 2013 and 2014 and the IAM Patent 1000 2014 to 2020 and Who’s Who Legal Germany 2021.
572
IAM Patent 1000
Samson & Partner Patentanwälte mbB Widenmayerstrasse 6 Munich 80538 Germany T +49 89 29 19 82 0 F +49 89 29 94 65 See firm profile p1056 Professional associations • AIPPI • GRUR • LES
www.IAM-media.com
von Schwerin, Wolf Graf Partner – Wildanger Kehrwald Graf von Schwerin & Partner mbB schwerin@wildanger.eu | www.wildanger.eu
Wolf Graf von Schwerin has covered a wide range of IP issues throughout his career. In the more than 30 years that he has been practising law, he has worked on a remarkable variety of cases in patent and utility model, trademark, design and unfair competition and copyright law – particularly in forensic issues. He has also been frequently involved in published decisions, including some of fundamental significance. Mr Graf von Schwerin’s experience in technical property rights extends to practically all fields, including biochemistry, pharmaceuticals, medical technologies and data communication. He specialises in cross-border litigation and proceedings on SEPs. He has also been a lecturer at the University of Dusseldorf for many years. Mr Graf von Schwerin has been praised by IAM Patent 1000 Top Professionals 2019 as “’a great patent litigator’, an all-around technical juggernaut with ‘fantastic case management skills’”. Chambers Europe 2019 lists Mr Graf von Schwerin in Band 1 of “Leading Individuals” for Patent Litigation in Germany. JUVE German Commercial Law Firms 20182019 has considered him as a leading senior partner among trial attorneys in patent law. Mr Graf von Schwerin is a member of the German Association for Intellectual Property and Copyright, where he is a member of the Specialist Committee for Patent Law, the German group of the International Association for the Protection of Intellectual Property Rights, the European Patent Litigation Lawyers Association, the German Association of Intellectual Property Professionals, the Intellectual Property Owners Association and the American Intellectual Property Law Association.
www.IAM-media.com
Wildanger Kehrwald Graf von Schwerin & Partner mbB Couvenstrasse 8 Dusseldorf 40211 Germany T +49 211 497 67 83 0 F +49 211 493 0265 See firm profile p1092 Professional associations • EPLAW • GRUR • IPO
IAM Patent 1000
573
Vos, Derk Partner – Maiwald Patentanwalts- und Rechtsanwalts-GmbH vos@maiwald.eu | www.maiwald.eu
Derk Vos’ work focuses on patents in the chemical and pharmaceutical fields, in particular opposition and appeal proceedings before the European Patent Office and nullity proceedings before the German Federal Patent Court, including various cases where there is a copending litigation. Dr Vos provides counselling on patent portfolio strategies and portfolio management across a wide range of industries. Further, he advises his clients on IP-related matters including validity, infringement and nullity proceedings, supplementary protection certificates, due diligence and freedom to operate. Dr Vos has extensive expertise in litigating (both national and cross-border) in several technical fields, including polymers, diagnostics and pharmaceuticals (eg, oxycodone, tenofovir/emtricitabine, latanoprost, ezetimibe/ simvastatin, sitagliptin/metformin or diclofenac). Dr Vos studied chemistry at the University of Bielefeld and the University of Utah, Salt Lake City. He completed his doctoral thesis at the University of Bielefeld in the field of organometallic chemistry. He received scholarships from the German Academic Scholarship Foundation (Studienstiftung des Deutschen Volkes) and the German Chemical Industry Fund (Fonds der chemischen Industrie). Before joining Maiwald in 2004, Dr Vos worked for several years as a management consultant at an international strategy consulting company with projects covering different technical fields in Germany, the United States and Sweden. Dr Vos qualified as a German and European patent attorney in 2007. In addition to this case-related work, Dr Vos frequently lectures on patent law-related topics in Europe, the United States and Japan. Thus, Dr Vos has twice been an invited speaker at the Basel Intellectual Property Lecture. He has contributed to several international symposia in Japan and the United States. He frequently travels to the United States and Japan, where several of his clients are based. Dr Vos speaks German and English.
574
IAM Patent 1000
Maiwald Patentanwalts- und Rechtsanwalts-GmbH Elisenhof Elisenstrasse 3 Munich 80335 Germany T +49 89 747 266 0 F +49 89 776 424 See firm profile p1022 Professional associations • GDCh
www.IAM-media.com
Walke, Christoph Equity Partner – COHAUSZ & FLORACK cwalke@cohausz-florack.de | www.cohausz-florack.de
Christoph Walke studied electrical engineering, specialising in communications technology, at RWTH Aachen University, graduating with distinction in 1999. He then joined the Institute for High-Frequency Technology at RWTH Aachen University, working on the subject of space, code and time division multiple access radio systems, and obtained his doctorate with distinction in 2002. Dr Walke’s education in IP law started at COHAUSZ & FLORACK in 2002. After further training at the District Court of Dusseldorf, the German Patent and Trademark Office and the Federal Patent Court, he was accredited as a German and European patent attorney in 2006. Dr Walke joined COHAUSZ & FLORACK as a patent attorney in August 2006 and became a partner in 2009. Dr Walke has particular expertise in attacking and defending patents in invalidity proceedings – primarily those concerning technically complex and standard-related patents, as well as in drafting and prosecuting patent applications. He has also extensive experience supporting companies in their expansion of existing business fields and the acquisition of new business units through freedom-to-operate searches and due diligence evaluations. However, his main focus now lies in patent litigation between multinational companies, including pre-litigation infringement and validity analysis of patents for case selection, and on standard essentiality opinions for patent pools. Dr Walke’s technical areas of expertise include information and communications technology, audio and video processing, data processing and software, cryptography and medical technology.
www.IAM-media.com
COHAUSZ & FLORACK Bleichstrasse 14 Dusseldorf 40211 Germany T +49 211 904 900 F +49 211 904 9049 See firm profile p958 Professional associations • FICPI • GRUR • VPP
IAM Patent 1000
575
Wallinger, Michael Founding Partner – Wallinger Ricker Schlotter Tostmann, Patent- und Rechtsanwälte Partnerschaft mbB mwallinger@wallinger.com | www.wallinger.de
Michael Wallinger is one of the founding partners of the German law firm Wallinger Ricker Schlotter Tostmann and an important member of the firm’s mechanical engineering, electrical engineering and physics IP practice group. Dr Wallinger holds a PhD in mechanical engineering and is admitted as a German and European patent attorney. Dr Wallinger has been involved in high-profile patent litigation since 1983; he has handled hundreds of patent infringement, patent nullity and patent opposition cases, as well as IP arbitration. A considerable number of these cases were landmark decisions decided by the German Federal Supreme Court, including: • Diving Computer on the patentability of software programs; • Radio Controlled Clock I, II on international jurisdiction; • Torque Transmission Device and Time Telegram, which are landmark decisions on claim amendments during prosecution; • Chain Wheel Assembly and Multi Speed Hub, which set the legal precedent in regard to the interpretation of patent claims; • Orange Book Standard on the interrelation of patents and standards; and • Communication Device, concerning the interpretation of claims referring to a preferred purpose. Dr Wallinger was successful with a challenge on the grounds of bias – due to the missing separation between patent prosecution and legal checks and balances, in terms of personnel – in a review case against the chair of the Enlarged Board of Appeal of the EPO’s interlocutory decision of 25 April 2014 in Case R 19/12, with far-reaching effects on readjustments in the structure of the Boards of Appeal. Dr Wallinger has represented blue-chip corporations – including in the automotive industry, where he enjoys a particularly strong reputation – as well as medium-sized technology-savvy companies. Significant recent representations include BMW, Bosch, Fein, Dürr, Schaeffler, AVL Austria, Piezocryst, Zimmer Medizintechnik GmbH, Kohlhage, Algatek AAA and Byk-Gardner. Located in Munich, Wallinger Ricker Schlotter Tostmann started with five attorneys in 2007 and has grown to include over 20 patent attorneys and attorneys at law, representing clients from all over the world and across the full spectrum of industries.
576
IAM Patent 1000
Wallinger Ricker Schlotter Tostmann, Patent- und Rechtsanwälte Partnerschaft mbB Zweibrueckenstrasse 5-7 Munich 80331 Germany T +49 89 210 2320 F +49 89 2194 9408 See firm profile p1086 Professional associations • GRUR • LES • VPP Sample client list • AVL • BMW • Bosch • Dürr, Fein • Hilotherm • Merida&Centurion • Niehoff • Schaeffler • Zimmer
www.IAM-media.com
Walter, Philipe Equity Partner – COHAUSZ & FLORACK pwalter@cohausz-florack.de | www.cohausz-florack.de
Philipe Walter is a qualified electrical engineer who specialises in communication technology, green technology and e-mobility patent law. He also focuses on disruptive technologies, the Internet of Things (IoT) and blockchain, helping clients to establish and monetise patent portfolios, as well as create defensive strategies in these areas. His background as an engineer for a mobile operator gives him great awareness of the challenges that arise from software inventions and innovations in the IoT field. Mr Walter is a German patent attorney and representative before the EPO. He represents national and international clients in all matters relating to IP law. His clients range from international utility companies and automotive suppliers to high-tech start-ups. His LLM in European patent litigation enables him to assist clients in international disputes spanning various jurisdictions throughout Europe and beyond. In addition to advising clients on the management of international patent portfolios, Mr Walter has a positive track record representing clients in oppositions, infringement actions and validity proceedings. In this role, he has acted in various contentious matters between smartphone manufacturers and in legal disputes between automotive suppliers and medtech companies. He also deals with patent law issues concerning technical standards in Blu-ray technology and video encoding in connection with international licensing pools.
COHAUSZ & FLORACK Bleichstrasse 14 Dusseldorf 40211 Germany T +49 211 904 900 F +49 211 904 9049 See firm profile p958 Professional associations • AIPLA • epi • GRUR Sample client list • Auto-Kabel Managementgesellschaft mbH • E.ON SE • Nokia • RWE AG
www.IAM-media.com
IAM Patent 1000
577
Weber, Christopher Partner – Kather Augenstein Rechtsanwälte PartGmbB weber@katheraugenstein.com | www.katheraugenstein.com
After numerous years working in the patent litigation department of a leading international law firm, Christopher Weber joined Kather Augenstein as a partner when the firm was established in 2016. As of that date, he had contributed to over 100 patent litigation cases in the field of telecommunications, pharmaceuticals and medical devices, appliances, plastics manufacturing and other fields. Mr Weber represents clients before the civil courts and participates in parallel validity proceedings before the European Patent Office, the Federal Patent Court and the Federal Supreme Court. Clients appreciate his high level of technical expertise as well as his negotiating skills, both inside and outside the courtroom. Mr Weber also advises in competition law proceedings with a technical focus. Mr Weber is a member of the German Association for the Protection of Intellectual Property and the Licensing Executives Society, and publishes multiple articles each year in the fields of IP and procedural law. In particular, he is the German correspondent of the Intellectual Property Society of Australia and New Zealand and writes in their quarterly journal Intellectual Property Forum. Mr Weber is highly recommended and named in numerous rankings by publications such as JUVE, The Legal 500, Best Lawyers and Managing IP.
Kather Augenstein Rechtsanwälte PartGmbB Bahnstraße 16 Dusseldorf 40212 Germany T +49 211 513536 0 See firm profile p1010 Professional associations • GRUR • LES Sample client list • Audi/VW • HTC • Merck • tesa
578
IAM Patent 1000
www.IAM-media.com
Weinert, Mirko Partner – HOYNG ROKH MONEGIER mirko.weinert@hoyngrokh.com | www.hoyngrokhmonegier.com
Mirko Weinert (admitted to the Bar in 2007) specialises in national and multinational patent litigation and trade secret litigation. The range of his activities covers infringement proceedings, nullity proceedings, enforcement proceedings and subsequent damages proceedings, as well as coordination work in portfolio litigation. He has gained extensive experience in all matters relating to IP rights with a technical background, as well as other areas of IP law. Mr Weinert is frequently retained to represent clients in court in the technical areas of telecommunications, information technology, pharmaceuticals, medical devices and mechanics. Developing and negotiating technology transfer agreements forms a further focus of his work. In addition, the spectrum of his advisory expertise encompasses the field of IP and trade secret compliance. Before becoming an attorney, Mr Weinert worked as a research fellow at the Johann Wolfgang Goethe University in Frankfurt, where he extended his expertise in procedural law and earned his PhD in 2006. Mr Weinert is a visiting lecturer for patent law at the law faculty of the Johann Wolfgang Goethe University and a visiting lecturer for the law on licence contracts at the Heinrich Heine University Dusseldorf. He also frequently speaks at conferences on patent law and has coauthored a handbook on licence contracts.
HOYNG ROKH MONEGIER Steinstrasse 20 Dusseldorf 40212 Germany T +49 211 550 220 F +49 211 550 22 550 See firm profile p998 Professional associations • GRUR • IPO • VPP
www.IAM-media.com
IAM Patent 1000
579
Weiß, Wolfgang Partner – Weickmann & Weickmann PartmbB wweiss@weickmann.de | www.weickmann.de
Wolfgang Weiß is a patent attorney and partner in the chemistry and life sciences group of Weickmann & Weickmann, Munich. With over 20 years’ experience in the patent field, he has a track record of providing strategic advice to clients in IP matters such as patent prosecution, validity/infringement litigation and validity or freedom-to-operate opinions. He represents leading companies in the fields of chemistry, biotechnology and pharmaceuticals, as well as scientists, start-ups, university departments and other research institutions across Germany, Europe, the United States and Japan. His special areas of expertise include opposition and appeal proceedings before the European Patent Office, as well as nullity proceedings before the German Patent Court and the Federal High Court. In patent infringement proceedings he cooperates with specialised German lawyers in representing clients before German civil courts. Dr Weiß earned a degree in chemistry from Ludwig Maximilian University in Munich in 1985. Within the framework of his PhD, completed in 1989, he gained experience in the field of molecular biology. He is competent in advising clients in various technical fields, including inorganic chemistry, organic chemistry, physical chemistry, biochemistry, immunology, pharmaceuticals, food chemistry and medical devices. In the 2012 edition of the IAM Patent 1000, Dr Weiß was recommended as “a leading name in pharmaceuticals”.
580
IAM Patent 1000
Weickmann & Weickmann PartmbB Richard-Strauss-Strasse 80 Munich 81679 Germany T +49 8945 5630 F +49 8945 5639 99 See firm profile p1088 Professional associations • FICPI
www.IAM-media.com
Weisse, Peter-Michael Partner – Wildanger Kehrwald Graf von Schwerin & Partner mbB weisse@wildanger.eu | www.wildanger.eu
Peter-Michael Weisse primarily focuses on patent law, but also advises and represents national and international companies in the areas of trademark, unfair competition and utility model law. He mostly handles patent infringement cases before national courts throughout Germany, often with parallel proceedings around the world. He is frequently involved in opposition and nullity proceedings before the EPO and national patent courts. Since 1996, he has handled a remarkable number of complex patent infringement proceedings in the areas of telecoms, electronics, medical devices, biotechnology, chemicals and pharmaceuticals, mechanical engineering and automotive. Mr Weisse has handled many prominent proceedings and legal disputes that led to landmark decisions by the German Federal Supreme Court – for example, regarding SEPs and indirect patent infringement. He is highly experienced in the litigation of SEPs and all aspects of the fair, reasonable and non-discriminatory terms defence, as he represented various parties in several of the first SEP-related proceedings tried in Germany after the European Court of Justice’s decision in Huawei v ZTE. Mr Weisse has been acknowledged as a recommended litigator by various legal publications (eg, The Legal 500 Europe, Who’s Who Legal, IAM Global Leaders, Chambers, Managing Intellectual Property’s IP Stars, Handelsblatt). In JUVE German Commercial Law Firms Handbook 20192020, Mr Weisse was again listed as one of the top 12 senior partners in patent litigation in Germany. Mr Weisse studied law in Bochum and Berlin and received his LLM from the Tulane University School of Law, New Orleans. He practised patent law at Pünder Volhard Weber & Axster (Clifford Chance) before joining Wildanger Kehrwald Graf von Schwerin & Partners mbB in 2001.
www.IAM-media.com
Wildanger Kehrwald Graf von Schwerin & Partner mbB Couvenstrasse 8 Dusseldorf 40211 Germany T +49 211 497 67 83 0 F +49 211 493 0265 See firm profile p1092 Professional associations • AIPLA • AIPPI • IPO
IAM Patent 1000
581
Greece
Although the Greek economy remains fragile, patent activity continues to tick over despite the many hurdles that have cropped up. The hot news among the IP community is Microsoft’s plan to build a data centre hub in the country to accommodate pan-European data processing needs, which should give the economy a shot in the arm while also boosting domestic IT activity. On the non-contentious front, filing numbers remain high, largely due to the number of Greek inventors that have settled abroad: under national law, patent applications for inventions made by Greek citizens must first be filed in their own country, a requirement which has brought in work for practitioners and created new opportunities for collaboration with international entities. Turning to litigation, pharmaceutical and life sciences disputes continue to dominate and generate the bulk of instructions for local advocates.
A & K Metaxopoulos & Partners Law Firm
The dynamic lawyers at media, technology and IP firm A & K Metaxopoulos have a keen appreciation for strategy, face each brief head on and always seek to find innovative solutions in complex cases. In the past year, this approach has attracted the attentions of several new and prominent names in the entertainment sector, and brought home sterling results in the regulated industries. Driving the practice forward are savvy litigators Kriton Metaxopoulos and Irini Daroussou. Metaxopoulos has a wealth of experience in multinational disputes, while Daroussou excels both in court and in licensing negotiations. The two are “responsive, great to work with and provide timely advice that is both easily digestible and commercially sensitive”. Also deserving special mention for her superb IP enforcement work is Marilena Nikolaraki, a rising star on the Greek patent landscape.
Ballas, Pelecanos & Associates LPC
The pharmaceutical space is a happy hunting ground for the patent division at esteemed full-service outfit Ballas, Pelecanos & Associates. “It is one of the strongest firms in Greece for dispute resolution, especially in relation to generics”, and is thus counsel of choice to leading players such as Pharmathen and Sandoz. Taking the lead for both is the preeminent George Ballas, who can be counted on for his “responsiveness and practical advice”. He has also been representing Teva Europe Pharmaceuticals in proceedings brought by Novartis concerning the production and distribution of a new product. Ballas is a leading authority in the life sciences, but his skills are also highly sought out by top telecommunications companies such as Ericsson, which look to him for European patent validations. Coordinating the litigation division is George Moukas, a poised performer before the civil and criminal courts whose shrewd enforcement plans bring about swift and successful outcomes.
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Firms Ballas, Pelecanos & Associates LPC Patrinos & Kilimiris A & K Metaxopoulos & Partners Law Firm Dr Helen G Papaconstantinou and Partners Law Firm
See p972
KLC Law Firm Prentoulis Gerakini Law Partnership Voelkel Kataliakos Roussou Law Office
Dr Helen G Papaconstantinou and Partners Law Firm
The sheer breadth of know-how on offer at the venerable Dr Helen G Papaconstantinou and Partners distinguishes it from its competitors. The team has talented patent attorneys, lawyers and translators on deck to ensure that every brief is executed in the optimal way. From prosecution to litigation, the side assists myriad entities with multifaceted needs. Department lynchpin Maria Athanassiadou has spent over two decades defending the interests of heavy hitters in the pharmaceutical and mechanical sectors. She stands out for her efficient and businesssensitive strategies. See p972 for firm profile
KLC Law Firm
Commercial firm KLC understands the value of a solid patent and undertakes instructions in a manner that creates momentum for clients – all while ensuring that their IP assets are protected to the hilt. Providing guidance in eight languages and operating in 33 countries, it is entrusted with crucial litigation
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Greece and licensing mandates by some 5,200 companies worldwide. Deputy managing partner Theodore Loukopoulos shines in the life sciences and is currently representing a German pharmaceuticals group in a multimillion-euro dispute against a local entity. His knowledge of ancillary disciplines such as mergers and acquisitions as well as corporate and business law gives him a bird’s-eye view of complex problems with multiple threads.
Patrinos & Kilimiris
There is no shortage of high-profile work at Patrinos & Kilimiris, from filing applications and handling hundreds of validations at home and abroad to battling it out in court for 80% of the country’s innovators. Robust leadership comes from Constantinos Kilimiris and Manolis Metaxakis, who have spent almost five decades in the game between them. Renowned litigator Kilimiris is a force to be reckoned with and an expert on SPCs: “He is highly knowledgeable, superpersonable and incredibly successful in preliminary injunction proceedings – a true pleasure to work with.” Of Metaxakis, one peer enthuses: “He is a fantastic advocate who presents his arguments in a really great way. He and Constantinos are really detail oriented and never give up on a case. Their clients love them.”
Prentoulis Gerakini Law Partnership
Bespoke solutions, a modern, business-oriented mindset and abundant experience are hallmarks of the service at Prentoulis Gerakini Law Partnership. The boutique offers total support across the patent lifecycle for local start-ups and multinationals alike; and when mandates ascend to the global stage, it has an extensive network of allies to call on. For example, it is currently helping a prominent Greek food industry to diversify its products and expand geographically through well-calculated strategies and immaculate filings. Co-founders Nikos Prentoulis and Nancy Gerakini run a tight ship and keep the practice firmly on course. Prentoulis has impressive commercial acumen and a commanding courtroom presence; while Gerakini’s legal and regulatory background is a great asset for those seeking wraparound solutions that encompass IP, competition and corporate law.
Voelkel Kataliakos Roussou Law Office
“Voelkel Kataliakos Roussou Law Office has the professionalism, depth of knowledge and vast network of IP contacts that an international company needs,” reports one happy client. While the team may be lean, it punches well above its weight: its “personalised service provided by friendly, helpful and polite attorneys” resonates in particular with major
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Individuals George A Ballas Ballas, Pelecanos & Associates LPC Constantinos Kilimiris Patrinos & Kilimiris Maria Athanassiadou Dr Helen G Papaconstantinou and Partners Law Firm
See p584
Irini Daroussou A & K Metaxopoulos & Partners Law Firm Nancy Gerakini Prentoulis Gerakini Law Partnership Theodore Loukopoulos KLC Law Firm Nikolaos Lyberis Vayanos Kostopoulos Manolis Metaxakis Patrinos & Kilimiris Kriton Metaxopoulos A & K Metaxopoulos & Partners Law Firm George Ch Moukas Ballas, Pelecanos & Associates LPC Nikos Prentoulis Prentoulis Gerakini Law Partnership Henning Voelkel Voelkel Kataliakos Roussou Law Office
pharmaceutical players. Epitomising this and more is name partner Henning Voelkel, a phenomenal litigator who tackles the trickiest of high-technology and life sciences cases with utmost composure. Fluent in Greek, German and English, he is a first port of call for disputes with international ramifications.
Other recommended experts
At Vayanos Kostopoulos, Nikolaos Lyberis is an eloquent advocate whose pleadings always hit the right notes with judges. He is well versed in numerous industries and advises across the spectrum of intellectual property, ensuring that his solutions take every angle into consideration.
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Athanassiadou, Maria Partner – Dr Helen G Papaconstantinou and Partners Law Firm m_athanasiadou@hplaw.biz | www.hplawfirm.com
Maria Athanassiadou is an attorney at law and one of the founding partners of Dr Helen G Papaconstantinou and Partners law firm (HP&P), where she also heads the patents and industrial designs department. Ms Athanassiadou holds a law degree from the University of Athens and a master’s in Spanish studies from the University of Barcelona. She has been a member of the Athens Bar since 1996 and is admitted to practise before the Supreme Court and the Council of State. With more than 25 years’ experience in all IP fields, she focuses her practice on IP litigation, prosecution and counselling, with a particular emphasis on patents, utility models, supplementary protection certificates, industrial designs and trademarks. Ms Athanassiadou advises major international as well as local clients especially in the pharmaceutical sector, assisting them in building and developing effective strategies that suit their business objectives and purposes. Ms Athanassiadou is an active member of the International Federation of Intellectual Property Attorneys, the Pharmaceutical Trademarks Group and the International Trademark Association. She has been ranked as a Leading Individual in Legal 500 EMEA 2021-Intellectual Property as well as a Recommended Individual in IAM 1000 – World’s Leading Patent Professionals 2021 and 2020. She has also been awarded the 2020 Certificate of Excellence as a leading expert for patents law advice in Greece by Advisory Excellence as well as ranked as “Trade mark star 2020 in Intellectual Property” in IP STARS 2020 and a “Recommended Lawyer” in The Legal 500 EMEA 2020-Intellectual Property. She is a regular contributor to Wolters Kluwer Manual IP, Katzarov’s Manual on Industrial Property and several INTA resources, as well as various significant patent, trademark and designs publications. Recent contributions include: • Global Patent Litigation, Helping businesses navigate the new normal 2021, Greece chapter, supplement to IAM, October 2020; • Designs 2021, Lexology/Getting the Deal Through, Greece chapter, December 2020; • Patents 2020, Lexology/Getting the Deal Through, Greece chapter, May 2020; • “General Court confirms lack of likelihood of confusion between DECATHLON and ATHLON”, World Trademark Review Daily, November 2020; • “Success for Cypriot halloumi producers as CJEU sends BBQLOUMI case back to General Court”, World Trademark Review Daily, March 2020; • “Greece: Intellectual Property – Comparative Guide”, The Legal 500, June 2020 (co-author) • “Greece: Patent Litigation – Comparative Guide”, The Legal 500 and The In-House Lawyer, October 2020; • “Patents in Greece”, Lexology/Getting the Deal Through, May 2019; and • Patents in Europe: Helping business compete in the global economy 2019/2020, supplement to IAM, April 2019.
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Dr Helen G Papaconstantinou and Partners Law Firm 2 Coumbari Street Kolonaki Athens 10674 Greece T +30 210 362 6624 F +30 210 362 6742 See firm profile p Professional associations • FICPI • INTA • PTMG
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Hungary
Patent activity in Hungary remains healthy, with the life sciences and particularly pharmaceuticals generating the bulk of the instructions handled by local practitioners. The hot conversation point is the government’s push to revamp the research and innovation system – a move which seems to have led to an uptick in filings this year. Due in no small part to the efforts of Minister of Innovation and Technology László Palkovics, there has also been a concerted effort to strengthen cooperation between Hungary and international institutes, companies and local universities such as the Massachusetts Institute of Technology, General Electric and the University of Debrecen . This should help to cement Hungary’s position as a regional innovative hub, promote entrepreneurship and keep the local IP scene flourishing. The Hungarian Intellectual Property Office (HIPO) is also making its services more accessible to private individuals and SMEs in a bid to enhance IP awareness.
Baker McKenzie
Thanks to the wider firm’s unparalleled geographical reach, the Budapest branch of this international titan is perfectly positioned to assist both domestic and multinational clients seeking to protect and commercialise their inventions. The tight-knit IP group, led by Zsófia Lendvai, regularly assists major pharmaceutical companies in enforcement scenarios and comes through for non-governmental organisations in their R&D endeavours. “Zsófia is simply fantastic,” enthuses one peer. “Her licensing and transactional work is brilliant, and she creates really strong enforcement plans too.” Lendvai’s broad practice encompasses trademarks, copyright, patents and know-how, which makes for precise, holistic advice.
Bird & Bird LLP
In Hungary – as elsewhere in the world – Bird & Bird is “a top-notch and highly reputable firm with an exceptionally strong IP group and a tough patent litigation team”. Since the local group merged with Weil, Gotshal & Manges’ Budapest contingent a few years ago, it has been on an unstoppable upwards trajectory, executing flawlessly on instructions from the world’s leading pharmaceutical, life sciences and electronics companies. A crucial cog in these operations is division captain Bálint Halász, a superb litigator and astute strategist. The percipient counsellor can find the optimum solution to any patent conundrum, courtesy of his broad IP, IT and data protection expertise.
Danubia Patent and Law Office LLC
“One of the best and biggest in the country”, Danubia has stood at the vanguard of the national patent scene for over seven decades. From strategic consulting and European and Hungarian patent prosecution to dispute resolution and licensing, there is nothing this eminent stalwart cannot do. On the
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Firms: prosecution Danubia Patent and Law Office LLC Gödölle, Kékes, Mészáros & Szabó SBGK Attorneys at Law and Patent Attorneys
See p1062
contentious front, József Tálas and Eszter Szakács form a dynamic duo. Accomplished litigator Tálas has published widely on the subject of patents, while also maintaining a vibrant technology transfer practice for local start-ups and investment companies. Pharmaceutical giants and innovative SMEs alike love working with Szakács, whose refined regulatory knowledge and encyclopaedic understanding of patent law make her a critical ally in must-win cases. Danubia’s star-studded prosecution line-up is comprised of Imre Molnár, Árpád Pethő and Gábor Harangozó. Having honed his craft for 40-plus years, Molnár works wonders when patenting inventions and has received several awards in recognition of his work. Fellow life sciences ace Pethő is equally adept at complex filings and litigation support. He speaks the language of inventors and is every inhouse counsel’s dream, having worked as a research scientist himself. Those in need of thorough yet digestible patent novelty and purity searches should look no further than mechanical and electrical engineering department head Harangozó. The master prosecutor is at home before the HIPO, the EPO and the USPTO. Joining them in the guide this year is IP all-rounder Miklós Sóvári; a regular speaker and author, he holds prominent positions in numerous international associations and has his finger on the pulse of evolving market trends.
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Hungary Firms: litigation and transactions
Individuals: prosecution
Danubia Patent and Law Office LLC
Katalin Mészárosné Dónusz SBGK Attorneys at Law and Patent Attorneys
See p589
Szabolcs Farkas SBGK Attorneys at Law and Patent Attorneys
See p590
SBGK Attorneys at Law and Patent Attorneys
See p1062
Szecskay Attorneys at Law Baker McKenzie Bird & Bird LLP Oppenheim
Gödölle, Kékes, Mészáros & Szabó
One of Hungary’s elite prosecution outfits, Gödölle, Kékes, Mészáros & Szabó impresses with its storied history, impeccable filing track record and steadfast commitment to quality. Its professionals ensure that each application is meticulously drafted and offers watertight protection, while remaining budget friendly. Firm founder István Gödölle has “amazing technical knowledge” from over 45 years in the game and has cultivated in-depth insight into European legal systems through positions at highprofile academic institutions. “For pharmaceutical work, Daisy Machytka-Frank is one of the best: she is fantastic and highly experienced in all things technical. She and Marcell Kereszty explain complex matters really well and their skills perfectly complement those of a litigator’s, making them great to collaborate with.” “Marcell is super-knowledgeable on both the technical and legal sides; he is well connected internationally and very pleasant to work with. Simply, he is my first choice.”
Oppenheim
Full-service outfit Oppenheim prides itself on supporting innovators – from start-ups to household names – in many meaningful ways. Home to a crack squad of litigators, it knocks it out of the park on contentious mandates, while its technical experts make light work of prosecution. Its patent practitioners also work shoulder to shoulder with their colleagues in the M&A department to ensure that every commercial opportunity is explored and patrons get maximum reward on their investments; in one recent example, it assisted the Research Centre for National Sciences of the Hungarian Academy of Sciences with its IP agreements. Robust leadership is provided in abundance by Áron László, a shrewd litigator who dives into the nitty-gritty
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István Gödölle Gödölle, Kékes, Mészáros & Szabó Gábor Harangozó Danubia Patent and Law Office LLC Sophia Kacsuk Kacsuk Patent Marcell Kereszty Gödölle, Kékes, Mészáros & Szabó Zoltán Kovári Kovári and Partners Patent and Trademark Attorneys’ LLC Daisy Machytka-Frank Gödölle, Kékes, Mészáros & Szabó Imre Molnár Danubia Patent and Law Office LLC Árpád Pethő Danubia Patent and Law Office LLC Miklós Sóvári Danubia Patent and Law Office LLC Zsolt Szentpéteri SBGK Attorneys at Law and Patent Attorneys
See p595
of each case in pursuit of the optimal solution. He recently represented Slovak atomic energy company IVS Trnava before the HIPO, the Budapest Metropolitan Court and the Supreme Court. Working alongside him on this matter was rising star András Cserny, who receives effusive praise: “He has an extremely strong legal and technical understanding of each case and brilliant communication skills; and his results-oriented yet cost-efficient mindset is a massive plus.”
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Hungary Individuals: litigation and transactions Gusztáv Bacher Szecskay Attorneys at Law Eszter Szakács Danubia Patent and Law Office LLC Katalin Szamosi SBGK Attorneys at Law and Patent Attorneys
See p594
András Szecskay Szecskay Attorneys at Law József Tálas Danubia Patent and Law Office LLC Gábor Faludi Szecskay Attorneys at Law Ádám György SBGK Attorneys at Law and Patent Attorneys
See p591
Bálint Halász Bird & Bird LLP Áron László Oppenheim
Szecskay Attorneys at Law
Zsófia Lendvai Baker McKenzie Péter Lukácsi SBGK Attorneys at Law and Patent Attorneys
See p592
Gabriella Sasvári SBGK Attorneys at Law and Patent Attorneys
See p593
SBGK Attorneys at Law and Patent Attorneys
Seamless symbiosis between SBGK’s prosecution and litigation practices has propelled the firm into the upper echelons of the Hungarian IP scene. The diverse skillsets of its talented technical experts appeal to an array of industry heavyweights; while its litigators keep clients’ commercial goals front and centre at all stages of a brief. On the non-contentious side, chemical engineer Zsolt Szentpéteri lends a practised eye to dispute proceedings alongside his
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regular prosecution work – most recently for Sumi Agro Hungary, where a critical patent went straight through to grant as a result of his efforts. He also serves as vice president of the Hungarian Chamber of Patent Attorneys. The mechanical domain is overseen by Katalin Mészárosné Dónusz, whose preparation of national, European and PCT applications is never less than immaculate. Her international know-how proves invaluable to local clients with ambitions to break into far-flung markets. Joining them on the prosecution table this year is Szabolcs Farkas. Having spent 20 years at the HIPO as vice president for technical affairs, he brings unique and profound insight to the table – much to the delight of his life sciences clients; he recently assisted Novartis before the HIPO. “One of the country’s best and most experienced lawyers”, Katalin Szamosi enjoys a sterling profile both at home and abroad. She is frequently found battling it out for world-renowned pharmaceutical companies at the Supreme Court, presenting eloquent, cleverly formulated arguments. SBGK is also home to tenacious advocates Péter Lukácsi and Ádám György, who never falter under pressure. The pair have been busy representing Exeltis in proceedings initially brought by Bayer, which have now been referred to the Court of Justice of the European Union. Rounding off the stellar troop is Gabriella Sasvári, who has a knack for getting signatures on the bottom line of IP-rich deals. See p1062 for firm profile
Szecskay Attorneys at Law is a colossus of Hungarian patent litigation and a destination of choice for the crème de la crème of the pharmaceutical industry. While the esteemed boutique is a formidable force in the contentious space, it is also sought out for its shrewd counsel on pre-product launches and inventor remuneration. Managing partner András Szecskay and IP division lead Gusztáv Bacher regularly advise Egis Pharmaceuticals on these matters. The illustrious Szecskay has held numerous prominent industry positions and is an authoritative voice on the legal landscape; while Bacher’s pleadings are always well-reasoned, beautifully presented and often drive precedential change. Together with IAM Patent 1000 newcomer Gábor Faludi, the pair recently went out to bat for multinational listed pharmaceutical company Gedeon Richter in the Supreme Court.
Other recommended experts
“A brilliant and cutting-edge practitioner, Sophia Kacsuk is someone literally everyone wants to work with.” Fluent in English, German and French, she is
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Hungary the perfect choice for cast-iron patent protection and can be found at Kacsuk Patent. “For biotech matters, Zoltán Kovári is exceptional; he knows all the technicalities, has perfect communication skills and a great personality too – truly a pleasure to work with.” He practises at Kovári and Partners.
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Dónusz, Katalin Mészárosné Patent Attorney – SBGK Attorneys at Law and Patent Attorneys donusz@sbgk.hu | www.sbgk.hu
Katalin Mészárosné Dónusz is a senior partner at SBGK and a member of the board. She holds an MSc in mechanical engineering from the Technical University of Budapest and completed the course for European patent attorneys at the Centre for International Intellectual Property Studies of the University of Strasbourg, WIPO trainings related to international trademarks and designs, trainings at the EU Intellectual Property Office (EUIPO) in connections with EU trademarks and Community designs, and other courses in communication and computer technology. She qualified as a Hungarian patent attorney in 1982 and as a European patent attorney in 2003. Her practice areas include preparing national, European and PCT patent applications covering the automotive, construction and toy industries; and representing clients in trademark and industrial design prosecution matters before the Hungarian Intellectual Property Office and the EUIPO. Ms Mészárosné Dónusz represents Hungarian clients abroad, including Hungarian state-owned oil refinery company MOL Nyrt. She also handles the EU IP portfolio for international clients, such as Qianjuang-KEEWAY (Europe Ltd) and Rastaclat LLC. Professional experience • 1972-1982: patent administrator at SBGK • 1982-to date: patent attorney • 2003-to date: member of the SBGK’s board • 2003-to date: registered European patent attorney
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SBGK Attorneys at Law and Patent Attorneys Andrássy út 113 Budapest 1062 Hungary T +36 1 461 1000 F +36 1 461 1099 Professional associations • AIPPI • Hungarian Chamber of Patent Attorneys • Hungarian Council of Copyright Experts
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Farkas, Szabolcs Patent Counsel – SBGK Attorneys at Law and Patent Attorneys farkas@sbgk.hu | www.sbgk.hu
Szabolcs Farkas graduated in bioengineering and biomedical engineering from the Technical University of Budapest. During his 20-year career at the Hungarian Intellectual Property Office (HIPO), he gained experience first as a patent examiner and later as head of the chemistry and biotech section, then as head of the whole patent department. By the time he moved to private practice he had become vice president for technical affairs. Mr Farkas’s practice at SBGK covers innovation and IP counselling, with a special focus on chemical and biotech IP solutions and R&D projects. Leveraging his expertise in prosecution procedures, he prepares national, European and PCT patent applications covering biotech, chemical and biomedical device solutions, plant variety protection and utility model prosecution matters before the HIPO. Professional experience • 1996-1998: Central Food Research Institute, research fellow • 1998-2001: HIPO, patent examiner • 2001-2010: HIPO, head of chemistry and biotechnology section • 2010-2014: HIPO, head of patent department • 2014-2017: HIPO, vice president for technical affairs • 2018 – to date: SBGK Attorneys at Law and Patent Attorneys
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SBGK Attorneys at Law and Patent Attorneys Andrássy út 113 Budapest 1062 Hungary T +36 1 461 1000 F +36 1 461 1099 Professional associations • Hungarian Association for the Protection of Intellectual Property and Copyright • Hungarian Chamber of Patent Attorneys
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György, Ádám Partner – SBGK Attorneys at Law and Patent Attorneys adam.gyorgy@sbgk.hu | www.sbgk.hu
Ádám György holds a law degree from Eötvös Loránd University and an LLM in IP and competition law from the Munich Intellectual Property Law Centre. After gaining professional experience in several firms abroad, he returned to Budapest and started his Hungarian legal career as an attorney. He is currently a PhD candidate at ELTE University. Mr György has been involved in complex IP contentious cases and has represented a client before the Court of Justice of the European Union. He has acquired unique expertise in designs and trademarks. Mr György writes abundantly on IP issues and is a regular speaker at national and international conferences, from Munich to Alicante and Lima. He contributed to the business development plan of the firm and played a significant role in the success of SBGK’s 50th anniversary year. He is also an active member of the legal professional and mentors young designers and start-uppers. In 2018 he was elected to the New Membership Committee of the Budapest Bar Association. He is also a mentor of the Hungarian Fashion and Design Agency and the leader of the Legal Committee of Young Entrepreneurs Association Hungary. Mr György was made a partner of SBGK in March 2020. In the same year WTR 1000 and The Legal 500 recognised him as a rising star in the market, while IAM Patent 1000 ranked him a leading individual in patent litigation.
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SBGK Attorneys at Law and Patent Attorneys Andrássy út 113 Budapest 1062 Hungary T +36 1 461 1000 F +36 1 461 1099 Professional associations • AIJA • ECTA • INTA
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Lukácsi, Péter Partner – SBGK Attorneys at Law and Patent Attorneys lukacsi@sbgk.hu | www.sbgk.hu
Péter Lukácsi, PhD, is a partner at SBGK Attorneys at Law and Patent Attorneys. Mr Lukácsi’s main area of practice is advising, prosecution and litigation in various fields of intellectual property law (trademarks, copyrights and designs) and advising and litigation in the field of unfair competition law and advertising law. He also has extensive experience negotiating and drafting distribution and franchising agreements. Mr Lukácsi handles high-profile dispute resolution matters, regularly represents clients before courts, judicial bodies and other official bodies. In particular, he frequently represents clients before the Hungarian courts, including the Supreme Court, and has appeared twice in preliminary ruling proceedings before the Court of Justice of the European Union. Mr Lukácsi is a regular speaker at conferences and the author of several publications in the field of dispute resolution and intellectual property. He is a member of the Council of the European Communities Trademark Association and one of the presidents of the Hungarian Association for the Protection of Industrial Property and Copyright. In 2018 he completed a PhD at the Faculty of Law at Eötvös Loránd University, where he is also a senior lecturer.
SBGK Attorneys at Law and Patent Attorneys Andrássy út 113 Budapest 1062 Hungary T +36 1 461 1000 F +36 1 461 1099 Professional associations • ECTA • INTA • LNI
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Sasvári, Gabriella Senior Partner – SBGK Attorneys at Law and Patent Attorneys sasvari@sbgk.hu | www.sbgk.hu
Gabriella Sasvári is a senior partner and board member of SBGK Attorneys at Law and Patent Attorneys. Dr Sasvári’s practice focuses on trademark prosecution matters before the Hungarian Intellectual Property Office, the EU Intellectual Property Office, WIPO and the Metropolitan Court. Her practice includes managing IP portfolios, preparing trademark-related contracts (eg, licence agreements, assignments and franchise contracts), trademark screening, watching and advising and undertaking trademark infringement and enforcement matters (eg, oppositions, border measures and domain name disputes). She also handles copyright and unfair competition matters and civil law cases. Since 2006 she has been a mediator registered with the Ministry of Public Administration and Justice. Dr Sasvári is a former vice president of the Professional Section of Trademark Law, Competition Law, and Industrial Designs of the Hungarian Association for the Protection of Industrial Property and Copyright and she is a current member of the most prominent Hungarian and international organisations, such as the Hungarian Trademark Association, INTA, the Pharmaceutical Trademarks Group, the European Communities Trademark Association, MARQUES, the International Association for the Protection of Intellectual Property, the Licensing Executives Society and the International League of Competition Law. In 2019 Dr Sasvári was awarded the Jedlik Ányos Prize in recognition of her outstanding professional legal performance. She has also been ranked by WTR 1000 for a number of years as a leading trademark practitioner.
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SBGK Attorneys at Law and Patent Attorneys Andrássy út 113 Budapest 1062 Hungary T +36 1 461 1000 F +36 1 461 1099 Professional associations • ECTA • INTA • PTMG
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Szamosi, Katalin Managing Partner – SBGK Attorneys at Law and Patent Attorneys szamosi@sbgk.hu | www.sbgk.hu
Katalin Szamosi is the managing partner and president of SBGK Attorneys at Law and Patent Attorneys. Dr Szamosi is an outstanding representative of the Hungarian legal community with 40 years’ experience. She has led numerous M&A transactions and has further expertise in employment law, competition law and consumer protection law. Her practice areas also include advice and contract drafting in technology transfer matters; contentious patent, trademark, industrial design and copyright-related matters; representation before the European Court of Justice; and arbitration in domain disputes and mediation. Dr Szamosi has been the member of the Permanent Arbitration Court attached to the Hungarian Chamber of Commerce and Industry since 1 February 2018. She was elected president of the Committee for Hungarikum Trademark in 2020. She also lectures postgraduate students at the Pázmány Péter University and the Academy of Budapest Bar Association in intellectual property. Dr Szamosi contributes to the work of FORUM, a US organisation based in Minneapolis that provides arbitration and mediation services to businesses, and WIPO in domain name disputes. She is ranked as a leading individual by the most prestigious publishers and received the following awards for her highly successful and quality work in IP rights protection and her contribution to the Hungarian legal profession: • Eötvös Károly Award from the Budapest Bar Association (2002); • Award for Competition Culture from the president of the Hungarian Competition Authority (2008); and • Jedlik Ányos Prize from the Hungarian Intellectual Property Office (2014).
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SBGK Attorneys at Law and Patent Attorneys Andrássy út 113 Budapest 1062 Hungary T +36 1 461 1000 F +36 1 461 1099 Professional associations • ECTA • INTA • LIDC
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Szentpéteri, Zsolt Managing Partner – SBGK Attorneys at Law and Patent Attorneys szentpeteri_zs@sbgk.hu | www.sbgk.hu
Zsolt Szentpéteri is the managing partner of SBGK Attorneys at Law and Patent Attorneys. He graduated as a chemical engineer (MSc) from the Technical University of Budapest and as a special IP engineer in 1998. For several years he also attended special courses for patent attorneys at the Academy of the International Federation of Intellectual Property Attorneys (FICPI). He qualified as a Hungarian patent attorney in 2000 and a European patent attorney in 2003. Mr Szentpéteri’s practice areas cover patent prosecution and validation, litigation and technology transfer. Mr Szentpéteri has gained substantial experience in inorganic and organic chemistry, polymer chemistry, food chemistry, pharmaceutical chemistry and biotechnology. He is vice president of the Hungarian Chamber of Patent Attorneys, vice president of the Hungarian Group of the International Association for the Protection of Intellectual Property (AIPPI) and a member of the Hungarian Association for the Protection of Industrial Property and Copyright, the AIPPI, FICPI and the European Patent Practice Committee. In 2020 the Institute of Professional Representatives before the European Patent Office elected him deputy treasurer; in this board member position he is partly responsible for the financial matters of the organisation. Professional experience • 1988-1997: employee of SBGK • 1997-2000: patent attorney candidate • 2000-: patent attorney, member of the Hungarian Chamber of Patent Attorneys • 2003-: European patent attorney • 2008-: partner of SBGK
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SBGK Attorneys at Law and Patent Attorneys Andrássy út 113 Budapest 1062 Hungary T +36 1 461 1000 F +36 1 461 1099 Professional associations • AIPPI • epi • Hungarian Chamber of Patent Attorneys
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Ireland
Having recently become the largest English-speaking country in the European Union, Ireland looks set to cement its position as a central IP hub in the region. Many UK patent firms continue to expand their foothold in the country and sources suggest that players from the United States and beyond may now be more likely to turn to Irish firms for EU representation. This potential interest from overseas is merely a bonus, however, as domestic innovation is also thriving. Medical technology remains a hotspot, although start-up funding is also pouring into new areas such as pure electronics, generating ever more challenging work for the country’s patent professionals.
A&L Goodbody
Full-service commercial law firm A&L Goodbody counts intellectual property among its key strengths and has represented marquee clients in many headline-grabbing patent cases over the last decade. The firm’s patent experts have also played a part in shepherding numerous major M&A and other transactions across the line – work they undertake in close collaboration with their colleagues in the tax, competition and other departments. Meanwhile, recent contentious highlights include advising Abbott, Boston Scientific and Amgen in High Court patent proceedings. The broad knowledge base of commercial and technology group head John Whelan extends far beyond patents to encompass regulatory and data privacy matters. He also has an international outlook, having previously established and managed two of the firm’s US offices.
Acuatus
Though modestly sized, Acuatus is a well-respected boutique thanks to the efforts and reputation of founder Alistair Payne, who established the firm five years ago after more than a decade heading up another leading practice. His clients largely hail from the manufacturing and life sciences spheres: as an example, Mylan Pharmaceuticals recently enlisted him to act on its behalf in major SPC-related patent infringement proceedings against Gilead. The personalised service he provides and the stellar results he secures in consequential multi-jurisdictional matters make for a winning combination.
ByrneWallace LLP
Patent and technology transactions are the metier of ByrneWallace, a corporate law firm which has been a fixture on the Irish market for more than four decades. The group is increasingly teaming up with universitybased technology incubation centres to assist them in commercialising their research, to superb effect. Colin Sainsbury has the magic touch when it comes to IP-driven international transactions and equity
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investments. He enjoys immense credibility in the life sciences industry, having previously served as senior vice president and general counsel of Elan Pharmaceutical Technologies.
DFMG Solicitors
Innovators of all stripes in sectors as diverse as food technology, farm machinery and medical devices flock to DFMG for game-changing answers to their contentious and transactional questions. Ready partner access and hawkish attention to detail are hallmarks of its attentive, solutions-oriented approach. IP head and solicitor Patricia McGovern is a veritable Swiss Army knife of a practitioner, having spent more than three decades advising on IP strategy, acting in patent infringement proceedings and handling complex transactions.
FRKelly
Boasting a 90-plus year pedigree, FRKelly ranks among Ireland’s most venerable patent prosecution shops. With an affinity for the nuts and bolts of drafting and registering patents with the Irish, UK and European patent offices, it also shines on the design and implementation of overarching patent strategies. Three bases in Dublin, Cork and Belfast grant it ample coverage on both sides of the border, to the benefit of a clientele ranging from domestic start-ups to heavyweight US corporations. Managing partner and biochemistry PhD Maura O’Connell is one of the eminent life sciences experts on deck; she works alongside cell biology PhD Donal Kelly, a confident representative in EPO administrative proceedings and a regular speaker at conferences. Physicist David Brophy is an anchor on the high-technology side.
Hanna Moore + Curley
Precision patent drafting and persuasive performances in EPO oppositions and appeals are the USPs of prosecution powerhouse Hanna Moore + Curley. Its “high-quality strategic advice, efficient service and excellent value proposition” have earned it the loyalty of household names such as Microsoft
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Ireland and BlackBerry. Founding partner and chartered physicist Barry Moore is a seasoned prosecutor with a keen strategic mind and abundant contentious nous. Fellow namesake Donnacha Curley is a trusted guide for agritech, software and electronics players, from inception right through to acquisition. He enjoys an elevated profile on the patent scene, serving as president of the Irish Association of Patent and Trade Mark Attorneys. Electronics and software are strongholds for Anthony Kavanagh and Conor Boyce: Kavanagh is a PhD in atomic physics who is known for his ability to patent the unpatentable, especially within the AI space; while Boyce has an insider’s perspective from his time as a senior patent attorney at IBM. On the life sciences front, industrial chemist and polyglot Marie Walsh manages the firm’s activities in China: “Marie is an efficient, effective, creative problem solver who has solid technical understanding and knows how to deal with patent examiners. Her business acumen and proficiency in the area of freedom-to-operate client counselling are especially notable.” Also working in the life sciences, on everything from SPCs to plant variety rights, is genetics specialist Anna Hally: “Anna is extremely technically knowledgeable and her approach is pragmatic; she understands the nuances and challenges of pharmaceutical development and product commercialisation. Her professionalism is second to none; she is always flexible; and she finds solutions to what are often complex and difficult issues.” Optoelectronics expert Catherine Hanratty adds an invaluable extra dimension as a former EPO examiner: “Catherine is a patient and polite person who keeps abreast of changes in the EPO’s procedures and practices and adjusts her advice accordingly, suggesting a course of action that gels with the client’s goals.” See p990 for firm profile
HGF Ltd
With 21 bases in six countries across the continent, HGF has outstanding European reach, giving its Irish practitioners – based in Dublin and Westport – an incredibly deep pool of resources to draw upon in supporting their clients. With Craig Thomson at the helm, it makes light work of complex prosecution, advisory and transactional briefs in the life sciences. Garnering rave reviews, Thomson “brings a rare level of commercial and strategic insight to managing intellectual assets. He’s available 24/7 and is a hands-on partner who forms an essential part of client teams. He understands broader business strategy and the role of intellectual property within it, and ensures that portfolios only comprise patents
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Firms: litigation and transactions Mason Hayes & Curran LLP McCann FitzGerald Whitney Moore William Fry Acuatus A&L Goodbody ByrneWallace LLP DFMG Solicitors Pinsent Masons
Firms: prosecution FRKelly Hanna Moore + Curley
See p990
PurdyLucey HGF Ltd Keltie LLP
See p994 See p1012
Tomkins & Co
that have value.” Recent highlights include helping to develop two principal patent portfolios for Novabiotics; supporting Queen’s University Belfast on patenting in the medicine, health and life sciences spaces; and conducting a full IP strategy review for Capri Medical. See p994 for firm profile
Keltie LLP
Keltie has extended its sphere of influence in the Irish IP market and its Galway-based team has been picking up increasingly sophisticated instructions as a result. By way of example, it recently coordinated a sweeping international filing programme spanning multiple continents and regional filing systems on behalf of Priority Drilling. Maintaining a strong focus on the medical device and life sciences sectors, it has also undertaken tasks of commercial and strategic
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Ireland Naoise Gordon PurdyLucey
Individuals: prosecution Highly recommended Conor Boyce Hanna Moore + Curley
See p602
David Brophy FRKelly Michael Lucey PurdyLucey Barry Moore Hanna Moore + Curley
See p607
Barry Purdy PurdyLucey
Anna Hally Hanna Moore + Curley
See p604
Catherine Hanratty Hanna Moore + Curley
See p605
Anthony Kavanagh Hanna Moore + Curley
See p606
Donal Kelly FRKelly Cathal Lane Tomkins & Co
Recommended
Denis McCarthy MacLachlan & Donaldson
Mark Carmody PurdyLucey
Maura O’Connell FRKelly
Olivia Catesby Tomkins & Co
Donal O’Connor Cruickshank
Sean Cummings Keltie LLP
Anne Ryan Anne Ryan & Co
Donnacha Curley Hanna Moore + Curley
See p603
Christina Gates Tomkins & Co
significance for the likes of Versono Medical, which is innovating in the endovascular therapy domain. Taking the reins is Sean Cummings, a patent, designs and brands expert with an agile technical mind and a flair for dispute resolution. See p1012 for firm profile
Mason Hayes & Curran LLP
Mason Hayes & Curran’s dedicated IP team has featured in many of the most significant patent battles on Irish soil in recent years, as well as in actions taking place within the pan-European context. It recently defended Celltrion in patent infringement proceedings brought by Biogen, F Hoffmann-La Roche and Genentech – one of the first cases in Ireland to deal with the infringement and invalidity of biosimilars. The firm also maintains a vibrant IP
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Craig Thomson HGF Ltd Marie Walsh Hanna Moore + Curley
See p608
structuring, licensing and transactional practice and has cemented its position as a go-to for commercial IP matters. A high-profile illustration of this is its representation of the minister for communications, climate action and environment on the IP and technology aspects of the rollout of Ireland’s National Broadband Plan – one of the largest, most expensive and complex contracts ever entered into by the Irish state. Gerard Kelly and Brian McElligott call the shots on this matter. IP head Kelly regularly appears before the Irish courts and is on speed-dial for many pharmaceutical heavyweights; while non-contentious whizz McElligott is admired for his commercial awareness and vision within the AI space.
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Ireland McCann FitzGerald
“McCann FitzGerald is one of the top firms in Ireland for high-value patent disputes. The team is very responsive, provides excellent advice and takes commercial and regulatory concerns into account when formulating litigation strategy.” The firm casts its net impressively wide: recent instructions include a significant SCP matter on behalf of Gilead and a high-stakes FRAND licensing dispute involving Vodafone. Heading up the practice is the esteemed Fiona O’Beirne, who puts in resonant performances in multi-jurisdictional patent disputes. Her righthand man is Shane O’Brien, who is well versed in the specifics of Irish patent law across both pharmaceuticals and technology. Together the pair co-authored the Ireland chapter of the second edition of International Patent Litigation: Developing an Effective Strategy.
Pinsent Masons
Since it was established just two years ago, Pinsent Masons’ Dublin base has gone from strength to strength, garnering acclaim from established competitors as “one of the key new ventures to have recently emerged on the market”. The life sciences is a happy hunting ground: the firm acts for numerous big names in the space, including Teva Pharmaceuticals, for which it has been handling a set of patent revocation proceedings. Litigation head and office founder Ann Henry leads on this work and has been involved in several IP policy submissions at a national and European level. She was recently joined by new co-leader Michael Finn, who was previously IP disputes head at Matheson and has expertise in related areas such as trade secrets, data protection and competition law.
PurdyLucey
PurdyLucey’s seven technically skilled European patent attorneys are adept at building bespoke, comprehensive strategies for the prosecution, enforcement and defence of clients’ patents. Highly qualified in areas such as medical technology, high technology and engineering, they have helped countless Irish start-ups to achieve global success; competitors confirm that “the firm has heavily invested in its client base”. Giving the group its name are Barry Purdy and Michael Lucey. Purdy has spent more than 25 years crafting IP strategies on behalf of material science, biotechnology and medical technology companies; while electronics and software maven Lucey is a favourite of US high-technology corporations and frequently appears in oppositions before the EPO. Both are also valued advisers to many
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of Ireland’s leading universities and their spin-outs. Steering the life sciences side alongside Purdy is Mark Carmody, who has a PhD in biochemistry and a cosmopolitan perspective from a stint at an IP firm in Japan. Alongside his drafting and prosecution work, he provides infringement, validity and freedom-tooperate opinions to clients from as far afield as South Africa, Korea and Canada. Also on board is senior associate Naoise Gordon, whose former role within the patent department of Unilever gives him valuable in-house insight.
Tomkins & Co
Prosecution outfit Tomkins & Co has been a fixture of the Irish IP community since 1930, but has always moved with the times: today, its dynamic service includes unique web portal BELLAMY, through which clients can monitor their IP portfolios round the clock. FTSE 100 companies and other innovators depend on it not only for watertight patent applications, but also for holistic IP advice that is strategic, commercially inclined and creative. Managing the operation is “safe pair of hands” Cathal Lane, who takes a multidisciplinary approach and forges close relationships with clients’ in-house lawyers and tax advisers. His academic background in chemistry, combined with agricultural experience and a period spent at Bristol Myers Squibb, makes him a technical renaissance man. Also adept in the life sciences is molecular biology PhD Christina Gates; she ably assists biotechnology companies, but also has a facility for software and digital patents. On the engineering side, physicist Olivia Catesby has expanded her scope to support high-technology clients in areas such as wireless technology and imaging systems; her pristine track record before the EPO, meticulous due diligence and astute business sense have won her many fans both at home and abroad.
Whitney Moore
Having appeared in more patent suits in Ireland’s Commercial Court than any other firm over the past three years, Whitney Moore has high-stakes litigation on lock. This year alone, it acted in infringement proceedings on behalf of Merck, Sharpe & Dohme, Edwards Lifesciences and Amgen; and secured a preliminary injunction for Novartis. Leading on all these briefs is Aoife Murphy, who relishes the cut and thrust of multi-jurisdictional disputes and is particularly at home in the life sciences, having litigated numerous biosimilar and medical device patents. All of the patent-related preliminary injunction applications on the Commercial Court list
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Ireland Individuals: litigation and transactions Ann Henry Pinsent Masons Gerard Kelly Mason Hayes & Curran LLP Patricia McGovern DFMG Solicitors Leo Moore William Fry Aoife Murphy Whitney Moore Fiona O’Beirne McCann FitzGerald Laura Scott William Fry John Whelan A&L Goodbody Colette Brady William Fry
since 2018 bear her fingerprints. Working alongside her on the infringement matters is fellow life sciences specialist Robin Hayes, who also regularly steps in to advise on technology licensing issues.
William Fry
“Clear, concise forward thinking and strategic advice and solutions” are the order of the day at William Fry. The “responsive, professional and reliable” IP team – the largest of its kind in an Irish full-service firm – consistently brings the heat in major crossborder patent disputes, particularly within the pharmaceutical and medical device sectors. Recent highlights include acting in SPC-related infringement proceedings on behalf of Genentech; defending Boehringer Ingleheim in revocation proceedings brought by Teva; and representing Viiv Healthcare Company in the High Court. All three cases were masterminded by Laura Scott, whose 360-degree understanding of the pharmaceutical, medical device and biotechnology spheres is complemented by regulatory and commercial insight. Back-up comes from IAM Patent 1000 newcomers Charleen O’Keeffe and Colette Brady, who both made partner in 2020
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David Cullen William Fry Robin Hayes Whitney Moore Michael Finn Pinsent Masons Deirdre Kilroy Matheson Brian McElligott Mason Hayes & Curran LLP Shane O’Brien McCann FitzGerald Alistair Payne Acuatus Charleen O’Keeffe William Fry Colin Sainsbury ByrneWallace LLP
and are similarly well equipped to tackle IP and regulatory disputes at all stages of the pharmaceutical product lifecycle. On the transactional front, the names to know are David Cullen and Leo Moore, who have lately been coordinating licensing arrangements for headphone manufacturer Exertis and micro-LED leader X-Celeprint respectively. Cullen heads the technology group and knows his way around the online and digital markets. Moore receives high praise for his balanced approach to multi-jurisdictional deals: “Leo is good to work with and personable, but he means business and goes after solutions and results, which is what clients want from a legal adviser. He takes time to fully understand the issues, is very responsive and finds creative ways to make things happen.”
Other recommended experts
Matheson’s IP head Deirdre Kilroy is a patent licensing ace and a guiding light for businesses across the industry spectrum, from pharmaceuticals to data and technology. Her multi-disciplinary practice also sees her advise on confidentiality, trade secrets and data privacy issues. Engineering, materials science and computer technology are the specialist subjects of Denis McCarthy, a polished representative in oral
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Ireland proceedings at the EPO who has called MacLachlan & Donaldson home for more than 40 years. Based at Cruickshank, Donal O’Connor brings knowledge of mechanical processes, electronics and software to his European patent prosecution practice. He holds the
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distinction of being a fellow of the Chartered Institute of Arbitrators. Biochemist Anne Ryan established the eponymous Anne Ryan & Co in 1989 and over the years has built a reputation for stellar patent prosecution, particularly within the life sciences field.
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Boyce, Conor Patent Attorney – Hanna Moore + Curley cboyce@hmc-ip.com | www.hmc-ip.com
Conor Boyce is a European patent attorney, an Irish patent attorney and a Community design attorney with nearly 30 years’ experience. His university education was in the field of electronic engineering and his work with Hanna Moore + Curley primarily entails the preparation and prosecution of electronics and software-related cases for both local and larger multinational clients. Prior to joining private practice, Mr Boyce worked in-house at IBM in the United Kingdom as a senior patent attorney for a number of years. There, as well as directly supporting product groups, he was involved in IP-related contract support and licensing matters. Mr Boyce is also the inventor for IBM patent US 6459986. Mr Boyce is a member of the Irish Association of Patent and Trademark Attorneys and a council member of the European Patent Institute (epi). As Irish representative on the Patent Practice Committee, he has contributed to a number of updates to the EPO Guidelines for Examination, as well as being a member of the Information, Communication and Technology (ICT) Thematic Group responsible for liaising with directors of the EPO ICT Cluster and contributing to epi amicus curiae briefs for EPO Enlarged Board of Appeal decisions in the ICT space, most recently in the G1/19 which confirmed that a claim to a computer-implemented simulation can satisfy the European criteria for inventive step, even if the claim does not recite features that interact directly with a physical entity.
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Hanna Moore + Curley Garryard House 25/26 Earlsfort Terrace Dublin 2 Ireland T +353 1 6613930 See firm profile p990 Professional associations • APTMA • epi
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Curley, Donnacha Patent Attorney – Hanna Moore + Curley dcurley@hmc-ip.com | www.hmc-ip.com
Donnacha Curley is a European patent attorney, an Irish patent and trademark attorney and a Community design attorney with more than 20 years’ experience in private practice. Mr Curley focuses his attention on technologies in the agritech, software and electronics fields and represents a number of awardwinning companies in these sectors. He has shared the journey with clients from start-up phase through rounds of investor due diligence and fundraising, to ultimate acquisition by multinational entities. In addition to his local client base, Mr Curley also represents a number of large multinationals before the EPO. Prior to establishing Hanna Moore + Curley, Mr Curley worked with another firm of patent attorneys and, before that, as an applications engineer for a US electronics company. In addition to this professional qualifications as a patent and trademark attorney, Mr Curley holds a diploma in legal studies, an honours diploma in electronic engineering and a master’s in electrical engineering. While qualifying as a patent attorney, Mr Curley was awarded the Drafting Prize for the highest mark in the United Kingdom Joint Examination Board Finals Examination for drafting specifications. Mr Curley is the current president of the Irish Association of Patent and Trademark Attorneys and previous chair of its Patent Law Committee. In this capacity, he represents the Irish profession internationally and liaises with the Irish government on matters relating to intellectual property.
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Hanna Moore + Curley Garryard House 25/26 Earlsfort Terrace Dublin 2 Ireland T +353 1 6613930 See firm profile p990 Professional associations • APTMA • epi
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Hally, Anna Patent Attorney – Hanna Moore + Curley ahally@hmc-ip.com | www.hmc-ip.com
Anna Hally is a European patent attorney, a UK chartered patent attorney, an Irish patent attorney and a Community design attorney and has over 20 years’ experience in private practice. Ms Hally’s career path has been varied and interesting, giving her a wide range of experiences to draw on. She graduated from Trinity College, Dublin, with an honour’s degree in natural sciences, specialising in genetics. This gave her a broad expertise in the field of natural science, with detailed experience and knowledge of a range of fields from biotechnology and molecular biology to plant science and biochemistry. In her final year, she carried out an extensive laboratory project at the Wellcome Ocular Genetics laboratory, attempting to localise a gene for age-related macular degeneration. She added to her academic qualifications with an MSc in the management of intellectual property from the University of London. Ms Hally spent almost a decade in London working in private practice before returning to Ireland. She joined Hanna Moore + Curley in 2017. Ms Hally has experience dealing with clients ranging in size from university spin-out companies to major multinational companies. She practises in technologies in the general life sciences sector, including healthcare and pharmaceuticals, agritech, medtech and food technology on issues including drafting and prosecution of patent applications, supplementary protection certificates and plant variety rights, worldwide IP portfolio management/strategy, due diligence and opinion work. During her career, Ms Hally has been directly responsible for the patent portfolios of several major multinational companies. This unique insight into the workings of multinational corporations has added much to the breadth of her experience and expertise. Ms Hally is a fellow of the UK Chartered Institute of Patent Attorneys and a member of the Irish Association of Patent and Trademark Attorneys. She is the Irish representative on the European Patent Institute Biotechnology Committee and a regular attendee of the Biotechnology Innovation Organisation Convention. She has been regularly listed in IAM Patent 1000 and is a co-leader of the Irish Chapter of ChIPs.
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Hanna Moore + Curley Garryard House 25/26 Earlsfort Terrace Dublin 2 Ireland T +353 1 6613930 See firm profile p990 Professional associations • APTMA • CIPA • epi
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Hanratty, Catherine Patent Attorney – Hanna Moore + Curley chanratty@hmc-ip.com | www.hmc-ip.com
Catherine Hanratty is a European patent attorney, an Irish patent and trademark agent, and an EU trademark and Community design attorney with more than 20 years’ experience in IP matters. Ms Hanratty graduated from Queen’s University Belfast with a BSc (Hons) and a master’s in physics, with a specialisation in optics and optoelectronics. Her research work focused on magnetooptical systems. At the start of her career, Ms Hanratty spent several years as a patent examiner at the European Patent Office (EPO) working in the technical area of imaging systems, mainly in the Cooperative Patent Classification fields of H04N (pictorial communication), G06F and G06K. In addition, during her time at the EPO Ms Hanratty gained wide experience of patent data and information systems, patent landscaping and opinion matters. Ms Hanratty’s work in private practice primarily entails the preparation and prosecution of patent applications, IP strategy and patent portfolio management for clients, from local small and midsized businesses to larger multinational companies. Ms Hanratty works across several areas of technology, but with a particular focus on inventions in the fields of medical devices, health technology and digital health, optics, telecommunications, software and mechanical devices. Ms Hanratty also has significant experience of examination, opposition and appeal proceedings before the EPO. Ms Hanratty is a member of the Irish Association of Patent and Trademark Attorneys and epi.
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Hanna Moore + Curley Garryard House 25/26 Earlsfort Terrace Dublin 2 Ireland T +353 1 6613930 See firm profile p990 Professional associations • APTMA • epi
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Kavanagh, Anthony Patent Attorney – Hanna Moore + Curley akavanagh@hmc-ip.com | www.hmc-ip.com
Anthony Kavanagh is a patent attorney who has represented several multinational companies before the European Patent Office. Mr Kavanagh is known for obtaining protecting on technology that is challenging to patent and saving European patent applications that have run into trouble. Mr Kavanagh was an academic for over a decade working at Queen’s University Belfast, the University of Electro-Communications in Tokyo, the Institute of Cancer Research in London and the University of Oxford. He has a PhD in atomic physics, a BSc in material science and a certificate in IP law. While in academia, Mr Kavanagh designed scientific and clinical devices, and control and analysis software for research and industrial partners. More than 25 peer-reviewed articles list Mr Kavanagh as an author and he is a named inventor on EP2436424A1 and US2012083681A1. Mr Kavanagh switched to patent law in 2014 and worked in a large London patent firm before moving to Hanna, Moore + Curley in 2019. He is a European patent attorney and a UK chartered patent attorney. Mr Kavanagh works across many fields, but focuses on the protection of software such as artificial intelligence, display technology and medical devices. He is also experienced in European opposition and appeal proceedings, and other contentious proceedings.
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Hanna Moore + Curley Garryard House 25/26 Earlsfort Terrace Dublin D02 PX51 Ireland T +353 1 661 3930 See firm profile p990 Professional associations • CIPA • epi
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Moore, Barry Patent Attorney – Hanna Moore + Curley bmoore@hmc-ip.com | www.hmc-ip.com
Barry Moore is a European patent attorney, a UK chartered patent attorney and a fellow of the UK Chartered institute of Patent Attorneys. He is an Irish patent and trademark attorney, and also a EU trademark and Community design attorney. He has more than 20 years’ experience in private practice, firstly working with another firm of patent attorneys and, since 2003, with Hanna Moore + Curley. As a physicist, Mr Moore has been responsible for prosecuting thousands of patent applications in the fields of telecommunications, mobile devices, security and software. He has drafted hundreds of applications both in these technology areas, but also in the mechanical, electronic and medical device fields. His expertise in conducting oral hearings before the EPO Examination and Opposition Divisions, and the Appeal Boards is frequently called upon by his international clients. His non-EPO specific activities include all aspects of advisory services relating to IP strategy, due diligence and opinion work and, in recent years, international litigation. Mr Moore recently coordinated the successful revocation of two competitors’ patents at the United Kingdom’s Intellectual Property Enterprise Court, a decision that was upheld by the UK Court of Appeal. Mr Moore has been regularly named an IP Star by MIP and recognised by the IAM Patent 1000. He has been listed in IAM Global Leaders in both 2020 and 2021.
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Hanna Moore + Curley Garryard House 25/26 Earlsfort Terrace Dublin 2 Ireland T +353 1 6613930 See firm profile p990 Professional associations • APTMA • CIPA • epi
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Walsh, Marie Patent Attorney – Hanna Moore + Curley mwalsh@hmc-ip.com | www.hmc-ip.com
Marie Walsh is a European patent attorney, a UK chartered patent attorney, an Irish patent attorney, and a Community design and EU trademark attorney. She has over 25 years’ experience in private practice. Ms Walsh graduated from the University of Limerick with a BSc (Hons), with a specialisation in industrial chemistry. She went on to work in the research department of a multinational pharmaceutical company in the United Kingdom, where her experience placed her at the fulcrum of exploratory research in polymer synthetic routes. Ms Walsh joined the patent profession in 1989 and qualified as a UK chartered patent attorney and European patent attorney. She studied with the Open University and obtained an MBA with a focus on strategic management and management of innovation. Ms Walsh’s work involves devising IP strategies for patent portfolios, including preparation and prosecution of patent applications primarily at the EPO and UK Intellectual Property Office for entrepreneurs, small and mid-sized enterprises and other organisations. Ms Walsh joined Hanna Moore + Curley in 2014 and works with US clients, local Irish clients, as well as a growing number of Chinese clients. Ms Walsh leads the firm’s China team and was appointed chief representative of Hanna Moore + Curley’s China office in 2018. Ms Walsh practises in technologies across a number of sectors – in particular, in the chemistry and life sciences sector, including healthcare and pharmaceuticals, medtech and food technology – in relation to IP portfolio management and strategy; drafting and prosecution of patent applications, supplementary protection certificates, due diligence and freedom-to-operate opinions. During her career, Ms Walsh has been directly responsible for the patent portfolios of several major multinational companies. Ms Walsh is a fellow of the Chartered Institute of Patent Attorneys and a member of the Irish Association of Patent and Trademark Attorneys.
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Hanna Moore + Curley Garryard House 25/26 Earlsfort Terrace Dublin D02 PX51 Ireland T +353 161 819 17 See firm profile p990 Professional associations • APTMA • CIPA
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Israel
Israel is a hotbed of technological entrepreneurship and the site of many exciting developments in the high-technology, life sciences, medical device and software fields. Consequently, the country’s patent practitioners have long been handling interesting, high-value instructions, which has shaped many of them into leading international strategists – ones who know which way the winds of innovation are blowing. Notable recent developments include the Israel Patent Office’s announcement of plans to introduce a new provisional patent application filing procedure which would give applicants an earlier filing date (that of the provisional application) should a full application be filed within one year. This will create an advantage by allowing applicants to hone an invention and work on commercialisation initiatives while still enjoying protection against third parties.
Adin Liss Pyernik IP Group
Adin Liss Pyernik provides “a thorough and customeroriented service, with close attention from partners and a focus on results”. Equal parts law office and prosecution shop, the boutique procures, defends and enforces patent rights with the same dexterity. Prosecution guru Moshe Pyernik does a first-class job of reviewing prior art and tailoring patent applications in a way that avoids conflict and ensures smooth passage through the patent office: “His thoroughness in preparing the basis for patent oppositions and finding ways to invalidate fictitious claims is quite unparalleled.” Pyernik has a longstanding relationship with prestigious academic institutions including the Hebrew University of Jerusalem and Ben Gurion University, which he has assisted with numerous prosecution projects. He also provides valuable litigation support to Eran Liss and Dan Adin, who take the lead on contentious matters. Liss benefits from prior in-house experience and has a broad perspective which helps him to effortlessly navigate the most complex cases. With the deftness of a chess master, he stays one step ahead of opponents. Adin impresses with his tenacity and grit in complex litigation. Recent highlights include representing companies such as Südzucker AG and Bromine Compounds in opposition matters, and successfully defending generic pharmaceutical company KS Kim International in a patent infringement proceeding in which an award of attorneys’ fees was given.
Cohn, de Vries, Stadler & Co
In a significant development for the market, December 2020 saw the arrival of a new force in Israeli patent practice with the establishment of Cohn, de Vries, Stadler & Co. Formed by ex-Reinhold Cohn practitioners Ilan Cohn, David de Vries and Svetlana Stadler, the boutique has been built from the ground up to provide a business-focused, agile service to innovators. Cohn is a keen strategist with a flair for helping entrepreneurs and companies to get
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the most out of their intellectual assets. Trained as a mechanical engineer, de Vries knows how to procure ironclad patent rights and build valuable portfolios, and is also a sought-after opinion giver. Stadler is a top-notch physicist with an instant recall of the finest details of her matters.
Dr Shlomo Cohen & Co
An enduring fixture on the Israeli patent landscape, Dr Shlomo Cohen & Co has the technical nous and industry knowledge to handle just about any patent matter going. Domestic companies and multinationals alike find its service to be efficient and cost effective, and its approach creative. Setting the pace, Shlomo Cohen has spent decades duking it out in high-stakes patent litigation. Having held prestigious positions in major national IP organisations, he has had a significant influence on Israeli IP policy and practice. Anchoring the prosecution team, Gail Volman is an expert in biological chemistry and dispenses crucial counsel to life sciences patrons.
Ehrlich Group
Ehrlich Group’s 140 seasoned and collaborative IP professionals provide fulsome support to major high-technology and life sciences entities, leading domestic universities and medical centres, and dynamic start-ups. The only Israeli firm to be highly recommended in the IAM Patent 1000 prosecution rankings for 2021, it files prolifically both at home and abroad – it processes an impressive 1,000 US patent filings each year, for example – and protects clients to the hilt. The firm’s individual rankings further underscore the technical capabilities of the group, as they include the heads of the chemistry, biotechnology, medical devices, physics, hightechnology and software groups – Revital Green, Hadassa Waterman, Maier Fenster, Eran Naftali, Geoffrey Melnick and Roy Melzer respectively. Prosecution and IP commercialisation are the metiers
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Israel Firms: prosecution
Firms: transactions
Highly recommended
Highly recommended
Ehrlich Group
See p976
Herzog Fox & Neeman
Recommended
H-F & Co
Adin Liss Pyernik IP Group
Horn & Co Law Offices
Cohn, de Vries, Stadler & Co
Meitar | Law Offices
Fisher Friedman IP Group
Recommended
G&A Glazberg, Applebaum & Co Advocates & Patent Attorneys
Dr Shlomo Cohen & Co
Liad Whatstein & Co
Pearl Cohen Zedek Latzer Baratz
Luthi+Webb The Luzzatto Group
See p1018
Pearl Cohen Zedek Latzer Baratz Reinhold Cohn Group
See p1052
Sanford T Colb & Co Soroker Agmon Nordman
of Green, who helps clients to extract optimum value from their intangible assets. He has recently been supporting Pfizer in an opposition against Israeli generic Dexcel Pharma Technologies. Waterman furnishes tailor-made IP strategies and well-thoughtout solutions that “address specific IP needs with great accuracy”. Fenster builds strong IP platforms for those with new products to launch and knows how to leverage intellectual property for bottom-line growth. He has gone above and beyond in the past year to support those whose business has been impacted by covid-19. Naftali is the first choice for complex work: he has been busy assisting Cheetah Medical – a pioneer in the field of non-invasive fluid management and monitoring systems –with prosecution and with sensitive negotiations. Melnick has an innate ability to “get high-quality results in the tightest timeframes” and is a “high-end practitioner who quickly grasps complicated data and gets broad protection”. With “deep technical and legal knowledge”, Melzer does top-level work on strategic global portfolio matters and is cited as an “extremely responsive contact”.
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Liad Whatstein & Co
Reinhold Cohn Group
See p1052
S Horowitz & Co Luminary Paul Fenster must also be highlighted; he is hard to beat in terms of engineering and private practice experience, industry knowledge and allround IP sagacity. The storied practitioner is a must for high-level strategic advice in prosecution, litigation and licensing scenarios. The listings also showcase the firm’s versatility through the inclusion of Yehuda Neubauer, who captains the IP litigation practice; and Amit Ehrlich, who takes charge of IP monetisation. Neubauer often takes over cases from other firms when the pressure gets too much for them; under these circumstances, he is currently representing Boeing against Israel Aerospace Industries. Ehrlich acquits himself with distinction in touch-and-go cross-border licensing negotiations. Everyone on the team takes inspiration from Gal Ehrlich, an astute IP tactician who is brilliant at getting the best out of the talent around him. See p976 for firm profile
Fisher Friedman IP Group
Fisher-Friedman IP Group debuts in the IAM Patent 1000 for 2021 in recognition of its preparation and prosecution proficiency and strategic IP counselling expertise. The ensemble is approached by patrons from around the globe for pragmatic advice that allows them to reap commercial rewards from innovation. The power duo at the helm comprises Nathalie Friedman and Michal Fisher, both of
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Israel Firms: litigation
Luminaries
Liad Whatstein & Co
Paul Fenster Ehrlich Group
Luthi+Webb Reinhold Cohn Group
See p1052
S Horowitz & Co Adin Liss Pyernik IP Group Ehrlich Group
See p976
Meitar | Law Offices Pearl Cohen Zedek Latzer Baratz Dr Shlomo Cohen & Co G&A Glazberg, Applebaum & Co Advocates & Patent Attorneys Herzog Fox & Neeman The Luzzatto Group
See p1018
Soroker Agmon Nordman
whom find creative pathways to the strongest protections while steering clients clear of conflicts; whether working together or independently, they get outstanding results at a price that won’t break the bank. With a background in molecular biology – she has a PhD in the subject from the Hebrew University of Jerusalem – Friedman is a talented linguist with great international connections. Taking charge of the firm’s patent portfolio activities, she sets the highest standards and leads by example in her own practice. She represents French medical imaging company Guerbet, which in 2018 acquired Accurate Medical Therapeutics, whose portfolio she built; recent activities for Guerbet include assisting with invention harvesting and extensive prosecution. Fisher practises at the cutting edge of development in medical devices and health technology, and does sterling work for Accelmed, a global group of funds investing in these industries; pioneering medical device robotics start-up XACT Robotics; and 270Surgical, whose patents and trademarks he protects. Both partners love to get hands on with their work, which enhances the quality of the firm’s offering and the personal nature of its service.
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See p624
G&A Glazberg, Applebaum & Co Advocates & Patent Attorneys
The discerning choice of blue-chip technology companies and Israeli unicorns, G&A keeps a laser focus on quality that has given it significant momentum as a prosecution provider and global portfolio developer. Innovative thinking, a clientfirst mentality and sophisticated know-how in cybersecurity, machine learning, big data and the Internet of Things are its calling cards. Coming in for particular praise is Haifa-based leader of the practice Ziv Glazberg, a named inventor on eight US patents with a first-hand understanding of the innovative process: “Ziv is an extremely bright individual who quickly understands the most delicate technical details of complex subject matter.” One source comments: “I have convinced two different companies to transition their patent work to Ziv, such is his quality.” Major clients include IBM, for which he undertakes a substantial portion of its patent work in Israel, demonstrating impressive creativity in an area of patenting (software) that has become more challenging. His start-up clients include WalkMe, which provides a platform for guided walkthroughs for websites and apps. The other leading light of the practice is Nadav Applebaum, a tenacious litigator with a remarkable ability to identify and capitalise on opportunities that are overlooked by opponents. He is the leading expert on issues relating to service inventions and inventor compensation.
Herzog Fox & Neeman
When it comes to patent and technology transactions, few competitors, if any, have as mature and refined an offering as Herzog Fox & Neeman. The firm has mastered the art of deal negotiating and closing, as many industry-leading technology and life sciences companies and start-ups know well. Recent developments for the group include the rollout of a new digital asset management programme, which facilitates the efficient auditing of clients’ intellectual property in a way that will support seamless due diligence work. Though best known for its commercial IP capabilities, the firm is also well equipped for contentious tasks and particularly disputes associated with commercial relationships. Karen Elburg brings strong leadership to the IP group and ensures that a value-adding interdisciplinary approach is adopted
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Israel by the transactional and litigation sides of the team. She and Jenia Melkhior form a dynamic pairing that charts optimal paths forward in complex cross-border deals. Dan Sharot has an affinity for licensing along with special expertise in the area of university and hospital spin-off transactions; he also stands out for his international connectedness.
H-F & Co
Patent transactions are meat and drink to H-F & Co, an acclaimed firm that lights up the market with its superb stewardship of sector-transforming deals. Since its establishment in 2014, its narrative has been one of constant growth: industry leaders, domestic unicorns and others flock to its doors for its flair for the fine print of licensing agreements and complementary proficiency in data privacy and regulatory law. Key representations include Moovit App, which the firm has supported in connection with all its IP and commercial matters for several years. Most notably, H-F & Co handled its $1 billion acquisition by Intel; this was one of the largest recent deals in the Israeli hightechnology sector and required great commitment and focus, given the working conditions imposed by the pandemic. A doyenne of transactional IP in Israel, Adi Gillat is a tireless practitioner with a can-do attitude who puts shoulder to the wheel to get complex deals done to the satisfaction of all parties: “Adi understands her clients’ legal and business needs and formulates smart strategies accordingly. Collaborative and personable, she is a delight to partner with.”
Horn & Co Law Offices
A leading ensemble when it comes to licensing and other strategic IP, technology and data transactions, Horn & Co brings keen industry insight to the negotiating table that helps it get big-ticket deals inked in the life sciences, internet, software and cleantech spaces. Key areas of recent growth for this highly specialised firm include medical data licensing, at the forefront of which stands Keren Kanir, who acts for a number of innovators of AIbased digital health solutions. An expert in corporate and IP transactions, Kanir has shown herself to be a dynamic deal broker with a rare faculty for complex cross-border matters. She, Yuval Horn and Ohad Mamann form the backbone of a team that, though leanly structured, can complete dizzying numbers of sizeable and sophisticated assignments at speed. Founding partner Horn is uniquely attuned to the needs and desires of in-house counsel and the C-suite, and an influential voice in the domestic and international legal and business community who regularly takes to the podium as a speaker.
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Mamann excels at assisting pharmaceutical and other companies in deals with academic and research institutions; together with Horn, he recently advised Neovii Biopharmaceuticals on an exclusive licence agreement with Tel Aviv University concerning an innovative platform – including a vaccine design for coronaviruses – developed by Professor Jonathan Gershoni of the university’s School of Molecular Cell Biology and Biotechnology.
Liad Whatstein & Co
Boutique Liad Whatstein & Co is a force to be reckoned with in Israel, thanks to founding partner Liad Whatstein, whose IP litigation achievements are the stuff of legend. “Liad is a name to be respected and is definitely the top litigator in Israel for patent-related disputes. His dedication to clients, his knowledge and experience in litigating complex issues, and his ability to see the bigger picture are second to none.” When Novartis faced opposition action with respect to its patents covering the dosing regimen via its Exelon transdermal patch for the treatment of Alzheimer’s disease and dementia, Whatstein’s forensic crossexamination of the other side’s experts resulted in withdrawal of the opposition. Pharmaceutical giants such as Pfizer, Merck, Sanofi and Takeda entrust him with their most fraught disputes, confident that “his understanding of the complex Israeli system is unmatched”. “Liad is extremely adept at predicting what the aims and objectives of the opposing party are, and how to best handle them in a tactful manner. He is a quick and strategic thinker, with the ability to take decisive action when the occasion presents itself.” His confidante Amira Mangelus has gained mastery over the elaborate system for obtaining patent term extension in Israel – a service that she and her team provide to a host of leading pharmaceutical companies.
Luthi+Webb
As a combination of litigation firm (Luthi+Co) and prosecution boutique (Webb+Co), Luthi+Webb can support innovative companies in many meaningful ways. The technical aptitude of its litigators means that no case is too complex – a diverse range of instructions are sent here, giving the group ample opportunity to hone its advocacy skills. Spearheading the most important actions, Richard Luthi is the trusted guide of many multinationals with pressing contentious issues both in Israel and in foreign jurisdictions. When faced with an opposition threatening one of its most valuable drugs, schizophrenia treatment Trevicta, Johnson & Johnson recently dialled his number to defend it
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Israel
Highly recommended
Yonatan Drori Drori-Werzansky-Orland, Advocates and Patent Attorneys
Ronnie Benshafrut Seligsohn Gabrieli Benshafrut
Maier Fenster Ehrlich Group
Ilan Cohn Cohn, de Vries, Stadler & Co
Michal Fisher Fisher Friedman IP Group
Individuals: prosecution
Gal Ehrlich Ehrlich Group
See p631
Ziv Glazberg G&A Glazberg, Applebaum & Co Advocates & Patent Attorneys
See p632
Nathalie Friedman Fisher Friedman IP Group Revital Green Ehrlich Group
See p627
Ehud Hausman Reinhold Cohn Group
See p628
Kfir Luzzatto The Luzzatto Group
See p629
Geoffrey L Melnick Ehrlich Group
See p631
Tamar Morag-Sela Reinhold Cohn Group
See p633
Eran Naftali Ehrlich Group
See p634
Recommended
Ena Pugatsch Reinhold Cohn Group
See p636
Eyal Bressler Dr Eyal Bressler & Co
Gail Volman Dr Shlomo Cohen & Co
Roy S Melzer Ehrlich Group
See p632
Zeev Pearl Pearl Cohen Zedek Latzer Baratz Moshe Pyernik Adin Liss Pyernik IP Group Svetlana Stadler Cohn, de Vries, Stadler & Co
See p637
Cynthia A Webb Luthi+Webb
David de Vries Cohn de Vries Stadler & Co
See p620
against Teva; Gilead Sciences has also retained him on similarly consequential matters. Daniel Lerner and Martin Binnes are the firm’s other crack litigators; the former is especially appreciated for his leadership abilities and the latter for his outstanding scientific fundamentals and industry experience – he spent over two decades as a senior manager in an Israeli pharmaceutical company. A beacon of light on a prosecution team specced for high performance in the life sciences and medical device arenas, Cynthia Webb is a brilliant team captain, eminent scientist and gifted patent strategist and portfolio manager. She maintains frictionless cooperation with in-house
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Hadassa Waterman Ehrlich Group
See p638
Joseph Wyse Dr Eyal Bressler & Co
teams throughout all phases of the prosecution process and beyond.
The Luzzatto Group
Rights holders have high praise for The Luzzatto Group, a storied firm with a legacy of excellence spanning 150 years: “The team is a pleasure to work with in light of its utmost professionalism, constant availability and readiness, collaborative approach, service mindedness and results focus.” One source
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Israel adds: “With it, we have achieved rapid progress and development with respect to our patent protection and IP strategy – following the group’s advice is always fruitful.” The firm puts a well-integrated team of patent attorneys and lawyers onto the playing field and can advise clients comprehensively and holistically; for example, foresighted prosecution approaches are mapped out that account for potential future litigation. As president of the organisation, Kfir Luzzatto is the driving force. He gets 10 out of 10 from clients for his unrelenting focus on quality and ability to navigate the most delicate matters, for which he often assembles well-configured teams drawn from the prosecution and litigation departments. The top litigator on deck, Oren Mandler is equipped to tackle infringement and other contentious matters across the IP spectrum. Particularly noteworthy is his knack for reversing technical rulings of the Registrar of Patents on appeal. See p1018 for firm profile
Individuals: transactions
Meitar | Law Offices
Anthony Bloch S Horowitz & Co
A muscular full-service firm with a global reputation, Meitar is a rising power in the IP domain, in which it showcases hard-hitting patent litigation abilities and a deft touch on IP commercialisation tasks. Technologically advanced, the firm has been undaunted by the communication and representation challenges presented by covid-19 and maintained its service at the highest levels throughout the pandemic, just as it has always done. Consistency and reliability are vital to its success and a key draw for patrons such as GlaxoSmithKline, which it has been representing in an appeal to the Supreme Court following a successful defence in a claim by Israeli generic Unipharm alleging misuse of patent law and illegal filing of patent applications to monopolise the market for a psychiatric drug. Taking the lead on this matter, head of IP, technology and privacy litigation Yoav Oestreicher serenely handles highstakes cases with strategies informed by abundant litigation, prosecution and commercial IP experience. On the transactional side, David Mirchin and Boaz Mizrahi run an equally mature practice. Mirchin understands the business of intellectual property and is an authority on data privacy issues; he has lately added a number of notable software company deals to his CV. Mizrahi is in his element negotiating agreements arising from the commercialisation of life sciences innovations, though demonstrates impressive range on a broad array of medical device, software and semiconductor assignments. Whatever he turns his hand to, he shows an incredible awareness of business risk.
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Highly recommended Karen Elburg Herzog Fox & Neeman Adi Gillat H-F & Co Yuval Horn Horn & Co Law Offices David Mirchin Meitar | Law Offices Recommended Yael Baratz Pearl Cohen Zedek Latzer Baratz
Amit Ehrlich Ehrlich Group
See p621
Daphna Gilat Reinhold Cohn Group
See p625
Keren Kanir Horn & Co Law Offices Barry P Levenfeld Yigal Arnon & Co Ohad Mamann Horn & Co Law Offices Jenia Melkhior Herzog Fox & Neeman Roy S Melzer Ehrlich Group
See p632
Boaz Mizrahi Meitar | Law Offices Dan Sharot Herzog Fox & Neeman Nadav Shichor Nadav Shichor & Associates
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Israel Daniel Lerner Luthi+Webb
Individuals: litigation Tal Band S Horowitz & Co
Adi Levit Adi Levit Law Firm
Eran Bareket Reinhold Cohn Group David Gilat Reinhold Cohn Group
Eran Liss Adin Liss Pyernik IP Group See p626
Richard Luthi Luthi+Webb Liad Whatstein Liad Whatstein & Co Dan Adin Adin Liss Pyernik IP Group Dovev Apel S Horowitz & Co Nadav Applebaum G&A Glazberg, Applebaum & Co Advocates & Patent Attorneys
Kfir Luzzatto The Luzzatto Group
See p629
Oren Mandler The Luzzatto Group
See p630
Amira Mangelus Liad Whatstein & Co Yossi Markovich Pearl Cohen Zedek Latzer Baratz Yehuda Neubauer Ehrlich Group Yoav Oestreicher Meitar | Law Offices
Martin Binnes Luthi+Webb
Avi Ordo S Horowitz & Co
Shlomo Cohen Dr Shlomo Cohen & Co
Michael Rosen Kobre & Kim LLP
Yonatan Drori Drori-Werzansky-Orland, Advocates and Patent Attorneys
Eran Soroker Soroker Agmon Nordman
Ziv Glazberg G&A Glazberg, Applebaum & Co Advocates & Patent Attorneys
Pearl Cohen Zedek Latzer Baratz
Pearl Cohen is in pole position to assist in connection with worldwide filing and prosecution: it has experts in Israel, the United States and the United Kingdom who pull in the same direction for household names in the high-technology, defence, medical device and life sciences sectors. The esteemed firm is also prized for its litigation and dispute resolution nous and transactional prowess and – as testament to its well-roundedness – has a representative on each of the prosecution, litigation and transactions tables in the Israel rankings of the IAM Patent 1000: Zeev
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See p635
Ran Vogel S Horowitz & Co
Pearl, Yossi Markovich and Yael Baratz respectively. Coming in for special praise, Pearl – who advises on everything from US litigation to licensing, patent strategy and portfolio management – is “an excellent IP attorney: highly professional, thorough, flexible and bright, and excellent at converting IP assets into business opportunities”. He represents BAE Systems, doing global work for its Israeli subsidiary and Israeli work for the global corporation; he also acts for longstanding client Sanofi, as well as Bayer, serving as patent counsel in Israel with responsibility for highvalue prosecution, among other things. Litigation sharpshooter Markovich, meanwhile, is representing High Sec Labs in an unusual lawsuit relating to the
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Israel infringement of three different registered Israeli patents, along with other causes of action; many of his cases are firsts, rarities or exceptionally complex, but he navigates their issues effortlessly and advocates with skill. Baratz chairs the life sciences group and is a consummate negotiator of crossborder corporate and IP transactions. He recently advised Hadasit, the technology transfer office of Hadassah Medical Organisation, on agreements with Surgeon AI and its founders in a deal requiring the tactful handling of important privacy issues.
Reinhold Cohn Group
A stalwart of the Israeli patent landscape, the Reinhold Cohn Group – a synergistic combination of law firm (Gilat, Bareket & Co) and patent attorney firm (Reinhold Cohn & Partners) – is an elite IP player with the talent and resources to handle the most demanding patent matters. Zooming in on the litigation practice, the outfit has a lengthy and confidence-giving track record of success in benchmark cases. Responsible for many of its most momentous wins, David Gilat and Eran Bareket both litigate across the IP spectrum with poise and are hailed for their adept handling of multi-jurisdictional cases. Gilat maintains a vibrant life sciences practice and is currently representing Allergan in an opposition filed by Teva Pharmaceuticals. Bareket’s recent work includes acting for Amgen in defending an opposition filed by Sanofi against Amgen’s patent protecting its hyperlipidemia drug Repatha – an intricate matter in connection with which US infringement litigation and EPO oppositions are taking place in parallel, and one that was transferred to the firm from another counsel. He has also been selected to represent the Civil Enforcement Unit of Israel’s Ministry of Justice in service inventions disputes. Always looking to add value, the firm maintains a partnership with Woodsford, a global leader in litigation and arbitration funding, which is a boon to clients needing extra financial support for infringement matters. Turning to prosecution, the names to know are senior partners Ena Pugatsch, Tamar Morag-Sela and Ehud Hausman. Co-head of the technology department Pugatsch produces meticulous work and is intimately involved with her clients at a global strategic level. With a niche in food technology, “extremely committed” life sciences and chemistry leader Morag-Sela i stands out for “the exceptional quality of her work and the excellent outcomes she achieves. She takes care to align her IP approaches with clients’ business plans” and, as a measure of her value, participates in client board meetings and strategic decision-making processes. Captain of the high-technology department
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Hausman acts for Israel Aerospace Industries and subsidiary Elta Systems – two of the largest employers in Israel and key players in the development of military and commercial defence technologies. For transactional assignments, Daphna Gilat is the go-to: the clever negotiator has got signatures on the bottom line of all kinds of technology and IP-driven deals. See p1052 for firm profile
S Horowitz & Co
A large commercial firm for which intellectual property is a central strategic focus, S Horowitz stands out for the depth of its patent litigation bench. “One of the most innovative practices in the country”, the gold-ranked outfit deploys state-of-the-art technologies tailored to enhance and improve the client experience, enabling patrons to stay right up to the minute with their cases. In representing Teva against a host of pharmaceutical giants, Tal Band and Ran Vogel have consistently demonstrated professionalism and adroitness in finding viable solutions and paving the way for positive outcomes. “Band has a deep appreciation of complex issues. His creativity and experience set him apart and make him a highly sought-after patent expert.” With a profound understanding of pharmaceutical regulations, Vogel is “a highly intelligent, client-oriented lawyer who conducts himself superbly in the courtroom.” They regularly team up with Dovev Apel, a lawyer who gets straight to the core of the matter at hand and never gets bogged down in irrelevant conflicts. “He is also involved in each and every legislation process relevant to the generic drug industry.” Another star in the firm’s constellation is Avi Ordo, whose measured, well-thought-out advice reflects the many years he has spent as a problem solver and strategist for patent owners and as a litigator with pioneering decisions to his name: “Avi is exceptional for his knowledge, creativity, availability, dedication and thoroughness.” Colleague Anthony Bloch is an authority on university technology transfer.
Sanford T Colb & Co
Recommended in the IAM Patent 1000 for prosecution, Sanford T Colb & Co combines a hawkish eye for detail with tremendous writing prowess and an intuitive understanding of patent quality to procure valuable rights for its clients. The firm was founded by USeducated Sanford Colb, who is registered to practise before the Israeli and US patent offices. He has a finely cultivated knowledge of patent law and dispenses unerringly reliable counsel on prosecution, licensing and enforcement matters.
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Israel Soroker Agmon Nordman
Soroker Agmon Nordman is “a dynamic, wellorganised firm with a brilliant line-up of practitioners who have experience across the board”. A Singapore outpost facilitates effective collaboration with Asian clients and serves the interests of domestic patrons in that region, giving it a real USP among Israeli firms. Spearheading the practice is Eran Soroker, a skilled attorney and gifted strategist with sterling people skills and the ability to see the bigger picture without overlooking minute details: “He handles highly complex matters in a methodical way and treats everything with the utmost care and diligence.” His work helps clients to gain a competitive advantage in their industries and get new products and innovations out into the market quickly. Of late, he has successfully prosecuted a voice recognition patent for NICE Systems at the USPTO and an electro-optical combat night-sight device at the EPO for Meprolight.
Other recommended experts
For patent prosecution, local and international pharmaceutical companies view Eyal Bressler at Dr Eyal Bressler & Co as a safe pair of hands. Bressler
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has a sharp business-minded perspective on patent protection – something he shares with colleague Joseph Wyse, who has has a doctorate in genetics and a real affinity for the medical devices industry. At Drori-Stav & Co, founding partner Yonatan Drori is a noted legal scholar and author who has influenced the drafting of IP legislation and the formation of policy. He is also a proficient litigator. Debuting in the IAM Patent 1000 for 2021 is former Fish & Richardson lawyer Michael Rosen, now based at Kobre & Kim; he understands how litigation plays out in the United States and has an extensive network of associates at his beck and call, making him an indispensable guide for anyone facing cross-border conflicts. “He has the ability to filter out all the noise and cut to the chase.” Transactions maven Nadav Shichor is a pragmatic negotiator with in-house experience who deftly bridges gaps and locks in deals. He operates out of Nadav Shichor & Associates. Yigal Arnon’s Barry Levenfeld enjoys an elevated profile in the patent space; his transactional work never fails to impress. November 2020 saw Ronnie Benshafrut make the move from Reinhold Cohn Group to Seligsohn Gabrieli Benshafrut. He is an excellent prosecutor and all-round strategist.
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Bareket, Eran Managing Partner – Gilat, Bareket & Co, Reinhold Cohn Group eranb@gilatadv.co.il | gilat-bareket.rcip.co.il
Eran Bareket’s main field of expertise is the litigation of IP rights (patents, patent term extensions, plant breeders’ rights, copyright, trade secrets, trademarks and designs), unjust enrichment and competition law, as well as complex litigations – particularly those involving issues of technology and management of multi-jurisdiction IP litigations. Mr Bareket has vast experience appearing before Israeli courts at all levels and before the Patents, Designs and Trademarks Registrar. He is well versed in the fields of intellectual property, high technology, technology transfer and licensing, digital health, big data licensing, competition law, agency and distributorships, regulatory law (pharmaceuticals and medical devices), defence and homeland security industry and governmental companies. Among his other activities, Mr Bareket was involved in the legislative process in the Israeli Parliament (Knesset) relating to his expertise (Patents Law and Regulations, Pharmacists Ordinance, Copyright Law), acting on behalf of various entities. He represented the Israeli Bar Association at a special forum of professional members of the patents industry established by the Israeli Patents Office. Mr Bareket serves as a consultant for IP matters to the Accountant General’s Division of the Ministry of Finance of the State of Israel. He was selected to represent the Civil Enforcement Unit of Israel’s Ministry of Justice, which is in charge of enforcing the state civil rights, among other things. Mr Bareket’s appointment concerns disputes surrounding invention made by state employees (service inventions). In late 2016 Mr Bareket was elected secretary of the Israel group of the International Association for the Protection of Intellectual Property in a vote open to most IP professionals in Israel.
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Gilat, Bareket & Co, Reinhold Cohn Group Reinhold Cohn House 26A Habarzel Street Tel Aviv 6971037 Israel T +972 3 567 2000 See firm profile p1052 Professional associations • AIPPI • INTA • LES
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Cohn, Ilan Founding Partner – Cohn, de Vries, Stadler & Co ilanc@cds-ip.co.il | www.cds-ip.co.il
Ilan Cohn has extensive experience in the field of intellectual property gained over more than three decades, most of which as a senior partner in the Reinhold Cohn Group, one of the leading IP firms in Israel, where, among others, he led the life sciences and chemistry department. Dr Cohn advises all IP stakeholders, including innovators, investors, technology incubators and small and large corporations, on how to build value in intellectual property and how to use it as a strategic asset. Dr Cohn also has extensive expertise in managing in-depth processes of IP due diligence, IP-based transactions and IP monetisation. He has been involved in and has often led IP monetisation activities, including licensing, selling and enforcing IP assets. Dr Cohn’s practice is multidisciplinary in nature, servicing clients across a very wide range of technology disciplines, including life sciences, agricultural technologies, food technologies, consumer products, renewable energy and water technologies. Dr Cohn has been involved in the founding of IP-based companies, while building their intellectual property into assets that yielded handsome returns to investors and shareholders. He is a member of the boards of directors of several companies, including chair of two companies (one of them public). Dr Cohn has taught and coached generations of patent attorneys and has often served as an examiner in examinations for patent attorneys. He has authored many articles published in the Israeli press and professional journals. Dr Cohn taught in the past IP courses at Bar-Ilan University in Israel and has been teaching an IP strategy course at The Hebrew University of Jerusalem for several years. He has organised and chaired professional international conferences in Israel that were held under the auspices of the International Association for the Protection of Intellectual Property and has lectured at many conferences in Israel and abroad. Dr Cohn continuously receives top-tier ranking in all leading international and local directories, including IAM 300 Strategy and IAM 300 Global Leaders. Dr Cohn holds a PhD from The Hebrew University of Jerusalem (1989).
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Cohn, de Vries, Stadler & Co Ziv Towers Tower D 24 Raoul Wallenberg St Tel Aviv 6971924 Israel T +972 73 398 9000 F +972 73 398 9049 See firm profile p960 Professional associations • AIPPI • FICPI • INTA Sample client list • Can-Fight BioPharma Ltd • RedDress Ltd • Strauss Coffee Israel Ltd • Strauss Water Ltd
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de Vries, David Founding Partner – Cohn, de Vries, Stadler & Co david@cds-ip.co.il | www.cds-ip.co.il
David de Vries holds a BSc in mechanical engineering (cum laude) from Ben Gurion University of the Negev (1986). He has three decades of experience as a patent attorney and was involved in the drafting of patent applications in a variety of technological and mechanical engineering fields, and in handling patent application prosecution procedures in Israel and abroad. Mr de Vries has extensive experience in providing opinion on patentability and freedom to operate over third parties’ rights. In addition, he advises private and business entities in all stages of decision-making related to the development and management of their intellectual property, including strategic planning of industrial and business needs. In his previous position as a senior partner in the Reinhold Cohn Group, he co-headed the technology department, leading the work of many patent attorneys. Mr de Vries is ranked in international directories as a leading patent attorney in Israel. Mr de Vries has coached and taught generations of patent attorneys who passed the qualification exams under his ongoing supervision and guidance. He has also taught IP courses at institutions of higher education in Israel, including the Bezalel Academy of Arts and Design in Jerusalem, the Technion and HIT Holon Institute of Technology. He gives voluntary lectures to members of the Meitzar Academy for Leadership and Social Responsibility.
Cohn, de Vries, Stadler & Co Ziv Towers Tower D 24 Raoul Wallenberg St Tel Aviv 6971924 Israel T +972 73 398 9000 F +972 73 398 9049 See firm profile p960 Professional associations • AIPPI • FICPI • Israel Patent Attorneys Association Sample client list • Keter Plastic Ltd • Rollink Clever Solutions Ltd • Wheelchairs of Hope • Y Stern Engineering
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Ehrlich, Amit Legal Counsel – IPTrade (part of Ehrlich Group) amit@iptrade.co.il | www.ipatent.co.il
Amit Ehrlich is a field-proven attorney with extensive experience in commercial litigation, as well as IP, corporate, commercial and banking law. An honours graduate from the Academic College of Law in Ramat-Gan, he has maintained a diverse civil practice for several years, covering a variety of legal domains. Mr Ehrlich’s affiliation with Ehrlich & Partners (now Ehrlich Group) began in 2002 and he now serves as the firm’s chief legal counsel and head of transactions. Since 2006, Mr Ehrlich has focused on assisting patent holders to monetise their patents, including developing and implementing licensing programmes and conducting patent sales negotiations for clients ranging from individual inventors to large corporations. Mr Ehrlich founded IPTrade, an Ehrlich initiative for patent monetisation, where he serves as the CEO. IPTrade is Israel’s leading business platform for selling unexploited high-tech patents to multinational corporations seeking to grow and diversify their IP portfolios. IPTrade provides its clients with a bestvalue monetisation service for their valuable patents, employing a comprehensive ‘A-to-Z’ commercialisation approach. Since 2018, Mr Ehrlich has been acknowledged by IAM as one of the world’s 300 leading IP strategists for the sixth successive year.
IPTrade (part of Ehrlich Group) The Rogovin-Tidhar Tower 15th Floor 11 Menachem Begin Road Ramat Gan 5268104 Israel T +972 737 919 199 See firm profile p976
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Ehrlich, Gal Managing Director – Ehrlich Group gal@ipatent.co.il | www.ipatent.co.il
Gal Ehrlich is the founder and managing director of the Ehrlich Group, a firm that specialises in the IP field. Dr Ehrlich has a BSc degree in biology and a PhD degree in genetic engineering received from the Hebrew University of Jerusalem. Gal also has an LLB degree received from the Tel Aviv University Law School. Since 1994, Dr Ehrlich has been involved in preparing and prosecuting patent applications in all high-technology fields, including biotechnology, agro technology, medicine, pharmaceuticals, computers, communications, physics, chemistry, medical devices and more. In 2000 Dr Ehrlich founded Ehrlich & Partners. In 2006 the firm merged with Fenster & Co to become Ehrlich & Fenster, which soon after become Israel’s leading patent attorneys firm. In 2017 Dr Ehrlich formed the Ehrlich Group, which includes, in addition to Ehrlich & Fenster, an IP boutique law firm (Ehrlich, Neubauer & Melzer, attorneys at law) and IP monetisation firm (IPTrade Ltd). The group employs around 150 individuals and serves thousands of clients, including Israel’s leading universities and academic institutions and many well-known international companies, start-ups and private clients. The Ehrlich Group has been recognised as a leading patent attorney firm in Israel and has been ranked as a Tier 1 firm for many consecutive years by Managing Intellectual Property’s World IP Survey and IAM Patent 1000. The group is ranked Tier 1 for both patent prosecution and trademark and copyright prosecution in the Legal 500 2020. Dr Ehrlich himself has also been ranked individually as a Tier 1 professional by all IP major ranking entities.
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Ehrlich Group The Rogovin-Tidhar Tower 15th Floor 11 Menachem Begin Road Ramat Gan 5268104 Israel T +972 73 791 9199 See firm profile p976
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Fenster, Maier Head, Medical Devices Department – Ehrlich Group maier@ipatent.co.il | www.ipatent.co.il
Maier Fenster is head of Ehrlich & Fenster’s medical devices department, which focuses on drafting and prosecuting bioengineering, medical devices and medical imaging patent applications. As the firm’s lead patent attorney, he specialises in groundbreaking and interdisciplinary inventions, as well as in helping build IP portfolios that add value to companies – in particular, start-ups in the fields of medical devices, image processing, physics, electronic systems, computer science, the Internet and bioinformatics. Mr Fenster believes in applying creativity in obtaining IP protection. He has a unique way of extracting the essence of inventions and deriving consequences for drafting patent applications and, more generally, supporting and informing company business strategy. He has been involved in the drafting and prosecution of thousands of patent applications and in oppositions and litigation support worldwide. He has also been involved in drafting patentability opinions, freedom-to-operate opinions and infringement opinions. Mr Fenster is also an inventor in more than 40 granted US patents in the fields of software and medical devices (mechanics and electronics). Mr Fenster lectures in academic and professional forums and was a mentor in Talpiot courses and involved in the selection of students for the Talpiot programme. He holds an MSc in computer science and a BSc in mathematics and physics. Mr Fenster has been recommended by Chambers and Partners for nine consecutive years, and by the IAM Patent 1000 for several years.
www.IAM-media.com
Ehrlich Group The Rogovin-Tidhar Tower 15th Floor 11 Menachem Begin Road Ramat Gan 5268104 Israel T +972 73 791 9199 See firm profile p976
IAM Patent 1000
623
Fenster, Paul Senior Litigation and Prosecution Consultant – Ehrlich Group paulf@ipatent.co.il | www.ipatent.co.il
Paul Fenster is a senior patent attorney and litigation consultant at Ehrlich & Fenster Patent & Trademark Attorneys. He brings to the firm a unique combination of high-level industrial R&D experience, preparation and prosecution of patent applications and substantial litigation experience. Dr Fenster was a full-time professor of electrical engineering at the City College of New York for five years, and has taught courses at Tel Aviv University, the Technion Institute of Technology in Haifa, the Weizmann Institute of Science and was also a visiting professor of physics in medicine at Cornell University Medical School. Dr Fenster performed R&D and consulted in the fields of microwave tubes while working for Varian Associates and Elta Electronics Industries, Ltd. During that time, he spent three years as the general manager of the microwave tube plant at Elta. He performed research in high-power short-pulse generation and measurement at Sperry Rand Research Centre. He was manager of R&D at ECI Telecom and later founded and headed the Microelectronics Technology Centre at Tadiran. Dr Fenster holds a BEE and PhD in electrophysics and is a specialist in engineering, electronics, physics and mechanics. His broad and outstanding R&D background, academic qualifications and experience as an inventor – he has issued 29 US patents – have made him a revolutionist and instrumental in changing how patents are written in Israel. Dr Fenster pioneered invention analysis and works with inventors to identify what the essence of an invention is and where an invention might go. This type of analysis, together with the ‘homework’ of the inventor and the uncompromising quality standards, increases the chance that the patent will be relevant when granted. Dr Fenster has been named senior statesman in the Chambers Global Israel IP prosecution rankings for several years.
624
IAM Patent 1000
Ehrlich Group The Rogovin-Tidhar Tower 15th Floor 11 Menachem Begin Road Ramat Gan 5268104 Israel T +972 73 791 9199 See firm profile p976
www.IAM-media.com
Gilat, Daphna Head of Legal Practice – Reinhold Cohn Group daphnag@gilatadv.co.il | gilat-bareket.rcip.co.il
Daphna Gilat is a co-founder and senior partner of Gilat, Bareket & Co. With over 15 years of extensive experience in the field of intellectual property, Ms Gilat represents and advises prominent international and Israeli companies, including multinational, industrial and start-up companies, as well as government institutions, in a variety of matters. She specialises in managing transactions, including licensing and commercial agreements, transactions related to start-up companies, venture capital, international transactions and additional commercial agreements related to technology. Ms Gilat has been recognised and commended for several years in the prestigious international Intellectual Asset Management – The World’s Leading Patent Practitioners 1000 (IAM Patent 1000).
Reinhold Cohn Group Reinhold Cohn House 26A Habarzel Street Tel Aviv 6971037 Israel T +972 3 567 2000 F +972 3 567 2030 See firm profile p1052 Professional associations • AIPPI • INTA
www.IAM-media.com
IAM Patent 1000
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Gilat, David Partner – Reinhold Cohn Group davidg@gilatadv.co.il | www.rcip.co.il/en
David Gilat is an attorney at law and a patent attorney , and a senior partner in the Reinhold Cohn Group. Mr Gilat has extensive professional experience in the various fields of intellectual property – in particular patents, trademarks, designs, copyright, plant breeders’ rights, distribution agreements and competition law, including litigation, transactions and general consulting on IP issues. His main fields of expertise include technology (particularly chemistry, pharmaceuticals, physics, high technology) and branding. He has extensive professional experience in patent and trademark litigation and has been involved in landmark cases. Mr Gilat also teaches patent law at the Tel Aviv University Law Faculty, as well as at the Inter-Disciplinary Centre, Herzlia, and occasionally lectures at international conferences, Israeli academic and professional institutions and other forums. He is the author of “Experimental Use and Patents”, IIC Studies (Vol 16 1995), and served as a research fellow at the Max Planck Institute for Foreign and International Patent, Copyright and Competition Laws in 1992-1993. Throughout the years, Mr Gilat has authored various chapters on Israel and has been contributing to the World Trademark Review on a regular basis ever since its launch. Mr Gilat is also a co-author of Intellectual property Law in Israel. The book derives from the chapter on IP law in Israel in the Encyclopaedia of Laws published by the internationally renowned Kluwer Law International. Mr Gilat has thus authored – among other chapters: • the chapter on Israel in Brown Book; • the chapter on Israel in past and present Trademark Cancellation International Practice and Procedures Guide (International Trademark Association, 2019); and • the chapter on Israel in Antibody Patenting: A Practitioner’s Guide to Drafting, Prosecution and Enforcement (Wolters Kluwer, 2019).
Reinhold Cohn Group Reinhold Cohn House 26A Habarzel Street Tel Aviv 6971037 Israel T +972 3 710 9333 See firm profile p1052 Professional associations • AIPPI • INTA • FICPI
Mr Gilat has been recommended for several years in leading international guides, such as Chambers & Partners, The Legal 500 (Hall of Fame), WTR 1000, IAM Patent 1000, Managing Intellectual Property and more. In 2020 he was awarded the Lexology Client Choice Award in the patents category.
626
IAM Patent 1000
www.IAM-media.com
Green, Revital Head of Chemistry and Pharmacology Department – Ehrlich Group revital@ipatent.co.il | www.ipatent.co.il
Revital Green heads the chemistry and pharmacology department at Ehrlich & Fenster – Ehrlich Group. With over 20 years of hands-on experience, Dr Green handles IP matters of dozens of clients, including leading universities and academic institutions in Israel, as well as wellknown pharmaceutical companies, start-ups and private clientele, and is involved in drafting and prosecuting patent applications, including opposition procedures, rendering opinions, conducting IP due diligence processes and devising IP and commercialisation strategies. Dr Green has been involved in the drafting and prosecution of thousands of patent applications and in oppositions and litigation support worldwide, and has also been involved in drafting patentability opinions, freedom-to-operate opinions and infringement opinions. Dr Green brings her special knowledge in active pharmaceuticals, pharmaceutical formulations, 3D printing, bio-inks, bio-sensing, energy storage, energy production, chemical sensing, drug delivery, polymer science, plastics, cosmetics, agrochemicals, agricultural products, semiconductors, solar cells, material science, homeland security, chemical engineering, biotechnology, tissue engineering, peptide assemblies, food technology, odoriferous substances, waste management and waste recycling.
Ehrlich Group The Rogovin-Tidhar Tower 15th Floor 11 Menachem Begin Road Ramat Gan 52681 Israel T +972 073 7919199 See firm profile p976
www.IAM-media.com
IAM Patent 1000
627
Hausman, Ehud Head of Hi-Tech Practice – Reinhold Cohn Group ehhausman@rcip.co.il | www.rcip.co.il/en
Ehud Hausman manages the hi-tech practice of Reinhold Cohn & Partners – a department that covers a wide range of technologies, including physics, software, hardware, electronics and medical devices. Mr Hausman has extensive experience in various aspects of intellectual property, including strategic consultation on the management of IP assets for multinational companies, leading industrial companies and start-up companies. He has gained professional experience as a software engineer in various capacities in the hi-tech industry. Mr Hausman’s practice focuses on protecting inventions in the fields of computer science, physics and electronics, specialising, in particular, in communications and telecommunications, Internet, cellular technology, databases, multi-media and other software, hardware, and integrated systems and processes; semiconductor devices and semiconductor related processes; medical devices and methods of doing business. Mr Hausman has been recommended for several years in leading international guides, such as Chambers & Partners, The Legal 500, IAM Patent 1000 and IP Stars.
Reinhold Cohn Group Reinhold Cohn House 26A Habarzel Street Tel Aviv 6971037 Israel T +972 3 710 9333 See firm profile p1052 Professional associations • AIPPI • FICPI • INTA
628
IAM Patent 1000
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Luzzatto, Kfir President – The Luzzatto Group kfir@luzzatto.com | www.luzzatto.co.il
Kfir Luzzatto is the president of The Luzzatto Group and his family’s fourth generation to work in intellectual property. His practice covers patents and trademark matters. The Luzzatto Group was founded by Mr Luzzatto’s greatgrandfather in Milan, Italy, in 1869 and moved to Israel more than 50 years ago. Mr Luzzatto earned a PhD in chemical engineering from the Ben Gurion University of the Negev and continues his relationship with his alma mater as a guest lecturer, in addition to speaking at other academic institutions on the subject of intellectual property and technology. Mr Luzzatto has handled many important cases involving Prozac, Viagra and other breakthrough pharmaceutical products, as well as sophisticated high-tech subjects such as cyber protection and defence systems. Mr Luzzatto has vast experience in drafting and prosecuting patent applications in different fields, but nowadays he mainly directs and participates in IP litigation and oversees complex portfolios requiring sophisticated strategy planning. His extensive experience in litigation gives him a unique perspective on the development of strong IP protection for start-ups and multinational companies alike. Mr Luzzatto is the recipient of the Landau Award for research and the author of many articles on intellectual property. His book, The World of Patents, was published in Hebrew by Globes Press in 2003. His international book, Fun with Patents, was released in early 2016. Mr Luzzatto often serves as an examiner for the Israeli Patent and Trademark Office for applicants for a patent attorney licence in Israel.
The Luzzatto Group The Luzzatto Building 9 HaGat St Omer 8496500 Israel T +972 73 226 2626 F +972 73 226 2627 See firm profile p1018 Professional associations • AIPPI • FICPI • INTA Sample client list • BGU • Eli Lilly • GSK • Hoffmann-La Roche • LYFT • Novartis • Pfizer • Rafael • SONY • Syngenta • Tadiran
www.IAM-media.com
IAM Patent 1000
629
Mandler, Oren Head of IP litigation – The Luzzatto Group orenm@luzzattolaw.co.il | www.luzzatto.co.il
Oren Mandler is a partner in the Luzzatto Law Firm of The Luzzatto Group and a certified mediator. His practice includes copyright, patents, trademarks, designs and commercial litigation. Mr Mandler graduated from Haifa University with a law degree and a BA in economics and law. Mr Mandler specialises in all aspects of intellectual property, including enforcement and litigation, manages domestic and foreign patent office opposition cases, and has vast experience in IP and knowledge management. Mr Mandler advises international companies in the pharmaceutical industry and other multinational companies from different industrial sectors, as well as local companies of all sizes and start-ups. Mr Mandler is also a senior member of the group’s patent term extension (PTE) team. The PTE legal framework in Israel is complex and has been amended several times in the past decade. For that reason, The Luzzatto Group established a dedicated PTE team of patent attorneys and lawyers with substantial IP litigation experience, such as Mr Mandler, to ensure that PTE applications are submitted in a form that will best address litigation, if and when it happens. Mr Mandler joined The Luzzatto Group in 2003. He is best known for his participation in many important litigations across the IP field, including patent, trademarks and designs.
The Luzzatto Group The Luzzatto Building 9 HaGat St Omer 8496500 Israel T +972 73 226 2626 F +972 73 226 2627 See firm profile p1018 Professional associations • AIPPI • INTA • Israel Bar Association Sample client list • BGU University • Eli Lilly • GSK • Hoffmann-La Roche • Kennametal • Nilit • Novartis • Rafael • Syngenta
630
IAM Patent 1000
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Melnick, Geoffrey L Head of Hi-Tech Department – Ehrlich Group geoff@ipatent.co.il | www.ipatent.co.il
Geoffrey L Melnick heads the hi-tech department at Ehrlich & Fenster – Ehrlich Group. He began his IP career in 1990 working with Haseltine Lake, one of the United Kingdom’s most prestigious IP firms, handling an international client list that included such multinational companies as Fujitsu, Sharp and Siemens. He moved to Israel in 1997 and joined Gal Ehrlich at the establishment of his firm in 2000. Since then Mr Melnick has been involved with an exciting mixture of mature companies and big and small start-ups – seeing some of the start-ups from their first patent application through investment rounds to successful multi-million dollar exits. Mr Melnick’s practice involves the preparation of patent applications in hardware, software, communications, physics and medical devices, with a special focus on radio-frequency engineering, microwave antennae, satellite communications, sound and image processing, data compression, pattern recognition, control and measurement engineering, computer modelling, communications protocols, cellular and roaming infrastructures, ultrasound, firewalls, cryptography, semiconductors, computer architecture, memories, computer input devices and interfaces, smart cards, semiconductor lasers, fibre optics, computer numerical control devices and robotics, seismic imaging and electrical machines. He also conducts due diligence assessments, opposition and appeal proceedings before the European Patent Office and litigation support. In addition, he provides strategy and portfolio management advice and handles hearings at the USPTO.
www.IAM-media.com
Ehrlich Group The Rogovin-Tidhar Tower 15th Floor 11 Menachem Begin Road Ramat Gan 52681 Israel T +972 73 79 19 199 See firm profile p976
IAM Patent 1000
631
Melzer, Roy S Head, Computing Technologies Department – Ehrlich Group roy@ipatent.co.il | www.ipatent.co.il
Roy S Melzer (BSc and LLB), advocate and patent attorney, manages the activity of the Ehrlich Group’s computing technologies department. His department focuses on drafting and prosecuting patent applications for various computer-related inventions, including cybersecurity, machine learning, blockchain, image processing, wireless communication, cloud computing, database management, ad systems, image processingbased inventions such as image compression (decoders and protocols), digital health and medical imaging, parallel and distributed processing, telecoms and internet-related patent applications. The department serves R&D centres of international companies and many Israeli startups and entrepreneurs. The department also handles hardware and technical implementations of business processes. Mr Melzer is an expert in patent prosecution in Israel and the United States. He has substantial expertise in the development of IP portfolios for start-ups, as well as due diligence analyses and freedom-to-operate opinions. His practice also includes the use of up-to-date LegalTech and statistical analytic tools, including examiner decision data. The department’s clients include IBM, Salesforce, Huawei, Zebra Medical Vision Ltd, NEC Corporation of America and the technology transfer organisations of all major universities and medical centres in Israel, including Ramot (Tel Aviv University), T3 (Technion Israel Institute of Technology) and Yeda (Weizmann Institute of Science). Mr Melzer is also a partner at boutique IP firm Ehrlich, Neubauer & Melzer (part of the Ehrlich Group). Mr Melzer has been recommended for his expertise in patent matters in several international ranking guides, such as the IAM Patent 1000 2019 and The Legal 500 2020. In 2018 The Legal 500 lauded his professional achievements on behalf of Mobile Technologies with regard to one of the most valuable patent applications in Israeli history. Mr Melzer was also recommended in Managing Intellectual Property’s IP Stars.
632
IAM Patent 1000
Ehrlich Group The Rogovin-Tidhar Tower 15th Floor 11 Menachem Begin Road Ramat Gan 5268104 Israel T +972 52 876 8517 F +972 73 791 9100 See firm profile p976
www.IAM-media.com
Morag-Sela, Tamar Head of Life Science and Chemistry Practice – Reinhold Cohn Group tamorag@rcip.co.il | www.rcip.co.il/en
A patent attorney since 1998, Tamar Morag-Sela has vast experience in handling patent portfolios for Israeli and foreign clients that range from private entrepreneurs and small start-up companies to large multinational corporations. The services she provides include patent strategy guidance and assistance with screening processes, drafting and prosecution of patent applications internationally; opinions on patentability and freedom to operate; and general management of IP matters. Through the years of practising IP law, Ms Morag-Sela has gained experience in numerous technological areas, with her main expertise in the fields of drug delivery, in particular lipid, liposome and polymerbased delivery systems; food tech; agro-tech including, water and soil treatment; plant development and protection and plant breeders’ rights; and other environmental-related technologies. Ms Morag-Sela is also the partner heading the firm’s plant breeders’ rights department and is therefore well versed in the various aspects of, and procedures relating to, the protection of new plant varieties and other plant-related innovations. In addition, she has significant experience in managing IP matters for technological incubators, making use of the extensive and professional team at the Reinhold Cohn Group to handle the intellectual property of the incubator’s companies in all technological fields. Among her other activities, Ms Morag-Sela also heads the firm’s records and information systems department. She is a member the IP and Green Technology Committee of the International Association for the Protection of Intellectual Property. She has been recommended for several years in leading international guides such as The Legal 500, IAM Patent 1000 and IP Stars.
www.IAM-media.com
Reinhold Cohn Group Reinhold Cohn House 26A Habarzel Street Tel Aviv 6971037 Israel T +972 3 710 9365 See firm profile p1052 Professional associations • AIPPI • INTA
IAM Patent 1000
633
Naftali, Eran Head of Physics Department – Ehrlich Group eran@ipatent.co.il | www.ipatent.co.il
Eran Naftali is the head of the physics department at the Ehrlich Group, which he joined in 2000 after obtaining his PhD in physics from Tel Aviv University; he also holds a BSc and an MSc in physics from the same university. Dr Naftali’s practice focuses on the preparation and prosecution of patent applications in relation to all high-tech fields, including physics, computers, communications, optics, medical devices and medicine. Dr Naftali has published over 20 papers in the field of high-energy physics that are widely recognised and are referred to by more than 400 works of leading high-energy physicists over the world. He has been involved in the drafting and prosecution of thousands of patent applications and in oppositions and litigation support worldwide. He has also been involved in drafting patentability opinions, freedom-to-operate opinions and infringement opinions. His particular areas of expertise are algorithms, imaging, image processing, medical devices, machine learning, nanotechnology, optics, physics, printing and solid-state devices. He received the Prize for Excellency in Teaching from Tel Aviv University in 1998 and the Prize for Excellency in Scientific Research from the same university in 2000.
Ehrlich Group The Rogovin-Tidhar Tower 15th Floor 11 Menachem Begin Road Ramat Gan 52681 Israel T +972 73 791 9199 See firm profile p976
634
IAM Patent 1000
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Neubauer, Yehuda Partner – Ehrlich, Neubauer & Melzer (part of Ehrlich Group) yehuda@ipatent.co.il | www.ipatent.co.il
Yehuda Neubauer is head of IP litigation for the Ehrlich Group, as the founding partner of IP law firm Ehrlich, Neubauer & Melzer. Mr Neubauer is also head of the trademark and design department at Ehrlich & Fenster, which is responsible for the filing and prosecution of trademark and design applications by the Ehrlich Group. A seasoned IP litigator, Mr Neubauer has built up an extraordinary wealth of domestic and cross-border IP litigation experience. His breadth of IP and industry experience, as well as his extensive experience in prosecuting trademark and design portfolios throughout the world, make him the first port of call for multinational and Israeli companies in the pharmaceutical, high-tech, life sciences, telecoms and consumer products industries. With a comprehensive grasp of science and technology, Mr Neubauer has successfully litigated a wide range of IP cases, including patents, trademarks, trade secrets, know-how and copyrights, both in civil actions before the courts, as well as in opposition proceedings before the USPTO. He has also provided legal consultation in patent post-issuance proceedings conducted by the PTAB. In addition, Mr Neubauer provides consultation related to business and legal strategies in the process of naming and branding. He also regularly drafts and negotiates contracts and routinely advises clients in relation to their IP protection and enforcement strategy, risk evaluation, investment due diligence and product clearance. Mr Neubauer has been commended in the WTR 1000 and IAM Patent 1000 rankings since 2018.
www.IAM-media.com
Ehrlich, Neubauer & Melzer (part of Ehrlich Group) The Rogovin-Tidhar Tower 15th Floor 11 Menachem Begin Road Ramat Gan 5268104 Israel T +972 737 919 199 See firm profile p976
IAM Patent 1000
635
Pugatsch, Ena Head of Mechanics, Technology and Designs Practice – Reinhold Cohn Group enpugatsch@rcip.co.il | www.rcip.co.il/en
A senior partner of Reinhold Cohn & Partners, Ena Pugatsch manages the firm’s mechanics and technology department, which handles matters pertaining to a wide range of aspects of mechanics and mechanical engineering, as well as industrial and agricultural equipment and processes, military technology, consumer products and medical devices – among other sectors. Ms Pugatsch has extensive experience in all areas of patent activities in Israel and worldwide, including drafting and prosecuting patent applications; providing opinions on different issues connected to patents including patentability, validity and freedom to operate; consulting with clients on IP decision-making processes and strategies, as well as patent portfolio building and management; providing opposition and litigation support in Israel and abroad; and conducting due diligence. Ms Pugatsch has reputable clients from diverse industries, such as defence, aerospace, irrigation, cutting tools and diamond industry. Ms Pugatsch has a worldwide reputation as a patent expert and is routinely invited to speak at prestigious IP events around the globe. She is a member of the Working Party on Quality of the Standing Advisory Committee before the EPO. She has been recommended for several years in leading international guides, such as The Legal 500, IAM Patent 1000 and IP Stars.
636
IAM Patent 1000
Reinhold Cohn Group Reinhold Cohn House 26A Habarzel Street Tel Aviv 6971037 Israel T +972 3 710 9300 See firm profile p1052 Professional associations • AIPPI • FICPI • INTA
www.IAM-media.com
Stadler, Svetlana Founding Partner – Cohn, de Vries, Stadler & Co svetlanas@cds-ip.co.il | www.cds-ip.co.il
Svetlana Stadler holds a MSc in physics from Chisinau University, Moldova (1984). She is also a graduate of the Central College of Patent Studies, Moscow (1987). Ms Stadler has extensive experience gained through serving several years as an in-house IP counsel in the semiconductor industry, and from more than two decades as a patent attorney, mostly as a senior partner in the Reinhold Cohn Group, where she headed the physics department made up of seven patent attorneys. Ms Stadler has gained very broad experience in drafting and prosecuting patent applications in the fields of physics, optics, medical devices, semiconductors, computing, satellite communications, digital printing, energy, laser systems and nanotechnology – among others. She is considered the most senior patent attorney in the field of physics in Israel. She has also mentored and coached many who have become leading patent attorneys in this field, in Israel, under her guidance. Ms Stadler focuses on providing strategic advice to her clients, conducting IP due diligence and IP audits, providing opinions, preparing patent applications and managing prosecution of patent applications around the world. She also advises her clients in decision-making processes regarding intellectual property. Among her clients are international and Israeli innovators, academic institutes, start-up companies and large companies, entrepreneurs and venture capital funds. Ms Stadler is highly ranked in local and international directories as one of Israel’s leading patent attorneys. She was ranked among the 250 leading women in the world in the field of intellectual property.
Cohn, de Vries, Stadler & Co Ziv Towers Tower D 24 Raoul Wallenberg St Tel Aviv 6971924 Israel T +972 73 398 9000 F +972 73 398 9049 See firm profile p960 Professional associations • AIPPI • Israel Patent Attorneys Association Sample client list • ContinUse Biometrics Ltd • Shamir Optics Industries Ltd
www.IAM-media.com
IAM Patent 1000
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Waterman, Hadassa Head of Biotech Department – Ehrlich Group hadassa@ipatent.co.il | www.ipatent.co.il
Hadassa Waterman is the head of the biotech department at Ehrlich & Fenster – Ehrlich Group. Since 2001 Dr Waterman has been involved in the preparation and prosecution of patent applications, specialising in cell biology, bio-informatics, immunology, biochemistry, nanotechnology, medical devices, agrotech and nutrition. Dr Waterman is involved in drafting and prosecuting patent applications, including opposition procedures, in rendering opinions regarding IP matters in IP due diligence processes, and in devising IP and commercialisation strategies. Dr Waterman has been involved in the drafting and prosecution of thousands of patent applications and in oppositions and litigation support worldwide. She has also been involved in drafting patentability opinions, freedom-to-operate opinions and infringement opinions. Dr Waterman continues to be recognised by the world’s leading ranking guides, including as one of the leading women IP practitioners in the Global Top 250 Women in IP 2019 ranking of Managing Intellectual Property. She was also named a Patent Star for the fifth consecutive year in their IP Stars 2019 ranking and was recommended in the Legal 500 ranking of intellectual property: filing and prosecution: patents practitioners. Dr Waterman holds a BSc in biology from the Hebrew University of Jerusalem and a PhD in molecular biology from the Weizmann Institute of Science. During her academic career, Dr Waterman authored over 15 papers and reviews in the fields of cell biology, biochemistry and molecular biology.
638
IAM Patent 1000
Ehrlich Group 11 Menachem Begin Street Ramat Gan 52521 Israel T +972 73 791 9199 See firm profile p976
www.IAM-media.com
Italy
Despite the significant hurdles that Italy has encountered as a result of the covid-19 pandemic, the IP landscape remains vibrant. One dominant storyline concerns the rollercoaster that is the Unified Patent Court (UPC): following a meeting of the UPC Preparatory Committee in late 2020 concerning the effects of the United Kingdom’s withdrawal from the system, Italy has formally submitted its proposal for Milan to take London’s place and host the life sciences seat of the Central Division Court on a permanent basis. If the proposal is approved, the country’s status as a patent hub will be cemented and new opportunities will open up for clients and lawyers alike. On a general level, litigation is becoming increasingly sophisticated, with FRAND and biosimilar disputes generating a significant share of the overall caseload. Meanwhile, on the non-contentious front, practitioners report healthy patenting activity across a diverse range of industries. The main conversation piece here is that innovators looking to protect their creations in Italy can now obtain protection directly through an international Patent Cooperation Treaty application, rather than going through the European system first. This will save them time and costs, which should correlate to an uptick in applications going forward.
Avvocati Associati Franzosi Dal Negro Setti
Sparkling advocacy skills, robust technical knowhow and a nimble approach give Avvocati Associati Franzosi Dal Negro Setti an edge in complex crossborder disputes. The firm has been a fixture of the Italian legal market since in 1963, while its Spain, Poland and China desks are a boon to companies looking to extend their influence further afield. Founding partner and luminary Mario Franzosi has paved the way forward for many of the country’s practitioners and has masterminded many wellknown litigation strategies – such as the ‘Italian torpedo’ – during his tenure. Senior partners Vincenzo Jandoli and Federica Santonocito oversee the IP division. An “excellent, hands-on lawyer”, Jandoli is a go-to in the life sciences: “He is superexperienced and reliable, and takes a pragmatic yet creative approach to cases and strategies.” IAM Patent 1000 newcomer Santonocito also receives effusive praise: “She always aims to find the most effective way to protect her clients’ interests. She is passionate, meticulous and the quality of her work is consistently great.”
Barzanò & Zanardo
Distinguished boutique Barzanò & Zanardo fields a seasoned line-up of patent attorneys and attorneys at law, who work together from seven local offices to cover all bases for innovators. Whether prosecution, enforcement or commercialisation is the order of the day, more than 85,000 entities have entrusted the group with their intangible assets. Giovanni Zanardo is the first port of call for prospective clients.
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Firms: prosecution Highly recommended Buzzi Notaro & Antonielli d’Oulx GLP Intellectual Property Office
See p982
Società Italiana Brevetti SpA Studio Torta SpA Recommended Barzanò & Zanardo Botti & Ferrari SpA
See p936
Bugnion SpA
See p948
Jacobacci & Partners Modiano & Partners Notarbartolo & Gervasi
Bird & Bird LLP
Already regarded as one of Italy’s elite firms, global leader Bird & Bird continues to go from strength to strength. It recently added to its arsenal of innovative in-house legal solutions with twobirds Pattern, an in-house valuation and analysis tool that analyses, values and landscapes patent portfolios. With lawyers and patent agents working hand in glove, it proves itself a trusted ally across all stages of the patent lifecycle. The lynchpins of the practice are
IAM Patent 1000
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Italy Firms: transactions
Firms: litigation
Bird & Bird LLP
Bird & Bird LLP
BonelliErede
Hogan Lovells
DLA Piper
IP LAW GALLI Srl
Herbert Smith Freehills LLP
Trevisan & Cuonzo
Hogan Lovells
BonelliErede
IP LAW GALLI Srl
See p1000
DLA Piper
Nunziante Magrone
Herbert Smith Freehills LLP
Simmons & Simmons LLP
Simmons & Simmons LLP
“highly regarded litigators” Giovanni Galimberti and Massimiliano Mostardini. The “bright and wellprepared” Galimberti relishes the cut and thrust of cross-border cases and recently coordinated global SEP-related litigation on behalf of NPE Sisvel. “An excellent consultant with great analytical skills”, Mostardini is “reliable, pragmatic and handles every matter in a business-oriented manner”; he is a favourite of luxury clothing companies such as Loro Piana. With a refined understanding of the mechanical and electronics sectors, rising star Elisabetta Bandera also puts in polished performances in court. Meanwhile, Antonella De Gregori has done a brilliant job at building up the firm’s prosecution practice. The chemist manages portfolios with flair and can plan for all eventualities in EPO opposition proceedings. Joining them in the rankings this year is transactions specialist Claudia Ricciardi: “She understands both the client and the counterparty’s viewpoints, and envisages practical solutions that drive negotiations. Her expertise, skill and profound legal knowledge also bring about new research agreements and licensing opportunities.”
BonelliErede
“Fantastic” commercial firm BonelliErede is on speed dial for some of Italy’s leading innovators, especially in the pharmaceutical, software and automotive sectors. By assembling bespoke teams for each patron, drawing judiciously on resources from its three local offices and further outposts across Europe and the Middle East, it makes light work of even the trickiest international instructions. The driving force is Giovanni Guglielmetti, “a renowned and excellent litigator”. His prowess also extends to contractual
640
IAM Patent 1000
See p1000
Avvocati Associati Franzosi Dal Negro Setti Dentons Martini Manna Avvocati Nunziante Magrone Studio Legale Jacobacci & Associati
scenarios – as he recently demonstrated in getting licensing and R&D agreements across the line for client Sofinnova.
Botti & Ferrari SpA
When it comes to patenting in the electronics, software and life sciences industries, Botti & Ferrari “sets the benchmark for quality”. Over its 22 years of existence, the agile consultancy has become synonymous with technical dexterity, impeccable drafting skills and robust litigation support. The central pillars are Mario Botti and Rinaldo Ferreccio, who are regularly engaged as court-appointed technical experts. The passionate and driven Botti is an authority on medical devices. “One of the best and brightest patent attorneys in Italy”, Ferreccio is appreciated for his diligence, detailed opinions and measured approach. See p936 for firm profile
Bugnion SpA
Having recently celebrated its 50th birthday, Bugnion is a potent presence on the Italian market. The firm has impressively broad horizons: it maintains 16 offices across Europe and the United States, as well as
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Italy Luminaries Mario Franzosi Avvocati Associati Franzosi Dal Negro Setti
a Japan desk established through close cooperation with an Osaka-based firm. With some 70 practitioners tending to more than 27,000 patents, it regularly hits the top of the filing charts. In Milan, the “authoritative and promising” Cristina Biggi is “an incredibly reliable attorney, especially for pharmaceutical work”. See p948 for firm profile
Buzzi Notaro & Antonielli d’Oulx
The attorneys at Buzzi Notaro & Antonielli d’Oulx are “smart and precise, and make vital contributions to any company’s success”. “One of the best prosecution firms in Italy”, it stands out for its command of all things electronics and technology, due in no small part to the hard graft put in by Luciano Bosotti and Tassilo Meindl. The “simply brilliant” Bosotti enjoys a glowing reputation among peers; while Meindl is likewise hailed as “super-proactive, extremely helpful and really friendly”. Heavy hitters in the automotive sector rely on Giancarlo Notaro to devise filing strategies that drive business value in pursuit of their long-term objectives. Holding down the fort in the life sciences is chemistry and biotech maven Cristina Freyria Fava, who has valuable insider insight from previous stints at a biomed company as a researcher and licensing manager.
Dentons
Making its debut in the Italian listings this year is international powerhouse Dentons. With enviable global reach and a glittering client roster comprised of high-flying technology companies and mechanical patent-driven entities, it has cultivated a formidable contentious offering that can tackle any mandate on any scale. Co-heading the European patent litigation practice, crack litigator Giovanni Francesco Casucci knows everything there is to know about the country’s legislative framework and court systems. He is currently representing leading steel and metal manufacturing company Danieli before the courts of Venice and Trieste; and assisting LSE and Chinese aviation player Hankge before the court of Milan.
DLA Piper
DLA Piper’s Italian contingent has seen a flurry of multi-jurisdictional activity lately. For example, it has taken the lead in a dispute between Alpinestars and Dainese over motorcycle airbags in proceedings
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that have extended to Germany, France and the United Kingdom; as well as handling a skirmish between SPM and Liski over the innovative base for ski poles playing out across Italy, Sweden and the United States. The ensemble an inspiring leader in Gualtiero Dragotti, a “diligent and well-prepared lawyer” who shines in complex life sciences litigation. Another prominent player in this technical arena is Roberto Valenti, who operates flawlessly across the contentious/non-contentious divide. He recently showcased his versatility on behalf of Elantas Europe in a trade secret dispute against Cancilleri, which saw the defendant’s former CEO pay out €4.5 million in compensation. Bringing abundant regulatory knowhow to the mix is global life sciences practice co-chair Marco de Morpurgo. He guides clients through the complexities of cross-border litigation with a sure hand and always produces winning strategies.
GLP Intellectual Property Office
“The service quality at GLP is consistently top notch and its highly skilled practitioners are extraordinarily responsive,” reports one happy customer. “They are personable, easy to work with, always look to help out where possible and reply to requests incredibly promptly – even across several time zones.” Its commitment to quality and precision are epitomised by managing partners Daniele Giovanni Petraz and Davide Luigi Petraz. The former is a portfolio management superstar who wins plaudit for his “international outlook, business skills and analytical mindset”; while strong international links, deep expertise and dual qualifications underpin the service of the latter. See p982 for firm profile
Herbert Smith Freehills LLP
With “a unique ability to advise on the interplay of IP and regulatory law”, Herbert Smith Freehills is a prime destination for pharmaceutical instructions in particular. Taking a holistic approach to intellectual property, its practitioners “are efficient and fair, think strategically and are always transparent on pricing”. Recent highlights include representing Millennium Pharmaceuticals, Janssen and the US government in a patent dispute before the IP Court of Milan; acting for Gilead Sciences in a matter that is currently pending before the Supreme Court; and advising Roche/Genentech on its pan-European enforcement strategy. Playing an integral role on all three matters is “outstanding litigator” Laura Orlando: “She is extremely knowledgeable, understands the technical issues and defends the rights of clients to the end – Laura is one of the best lawyers to assign a life
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Italy Luigi Franzolin Studio Torta SpA
Individuals: prosecution Gaetano Barbaro Società Italiana Brevetti SpA
Claudio Germinario Società Italiana Brevetti SpA
Marco Benedetto HOFFMANN EITLE Cristina Biggi Bugnion SpA
Tassilo Meindl Buzzi Notaro & Antonielli d’Oulx See p648
Simone Bongiovanni Studio Torta SpA
Micaela N Modiano Modiano & Partners
Luciano Bosotti Buzzi Notaro & Antonielli d’Oulx Mario Botti Botti & Ferrari SpA
Giancarlo Notaro Buzzi Notaro & Antonielli d’Oulx See p649
Stefano Cantaluppi Cantaluppi & Partners
Elisabetta Papa Società Italiana Brevetti SpA
Lidia Casciano Studio Torta SpA
Daniele Giovanni Petraz GLP Intellectual Property Office
Emanuele Concone Società Italiana Brevetti SpA
Roberto Pistolesi Dragotti & Associati srl
Antonella De Gregori Bird & Bird LLP
Antonio Mario Pizzoli Notarbartolo & Gervasi
Antonio Di Bernardo THINX
Giuseppe Romano Società Italiana Brevetti SpA
Mauro Eccetto Studio Torta SpA
Alessandro Sanchini Modiano & Partners
Cristina Freyria Fava Buzzi Notaro & Antonielli d’Oulx
Elisabetta Zaccaro Notarbartolo & Gervasi See p650
sciences lawsuit to.” She regularly links up with Sara Balice, whose contentious capabilities have been shaped by insight gained at the San Raffaele
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Davide Luigi Petraz GLP Intellectual Property Office
Fabio D’Angelo Studio Torta SpA
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Massimo Palladino Notarbartolo & Gervasi Diego Pallini Gervasi Notarbartolo & Gervasi
Olga Capasso De Simone & Partners
Rinaldo Ferreccio Botti & Ferrari SpA
Fabrizio Minoja Bianchetti Bracco Minoja
hospital in Milan. She garners warm feedback along with Pietro Pouché: “They are knowledgeable and responsive; and in litigation, they are an absolute safe harbour. Sara and Pietro also know how best to protect assets that are under development,
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Italy IP LAW GALLI Srl
Individuals: transactions Daniela Ampollini Trevisan & Cuonzo Gianluca De Cristofaro LCA Studio Legale Giovanni Galimberti Bird & Bird LLP Cesare Galli IP LAW GALLI Srl
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Giovanni Guglielmetti BonelliErede Massimiliano Mostardini Bird & Bird LLP Pietro Pouché Herbert Smith Freehills LLP Claudia Ricciardi Bird & Bird LLP
Specialised boutique IP Law Galli has cemented its reputation as one of the most fearsome patent litigation outfits in the country. While it may be lean in size, it packs a fierce punch in heavy-duty pharmaceutical and technology disputes, where its sophisticated advocacy often leads to landmark decisions. For example, it recently acted for medical device manufacturer Tecnimed in a case in which the Supreme Court clarified a rule of law on the limitation of patents and retrospective validity. “Tough but fantastic litigator” Cesare Galli and Mariangela Bogni joined forces on this matter. Distinguished professor Galli is revered in the IP community and has done much to shape the legal landscape, including through advising the governmental commission in charge of revising the country’s IP legislation. Bogni effortlessly cuts through the intricacies of innovations in the mechanical and life sciences spaces to produce resonant arguments in court. See p1000 for firm profile
Jacobacci & Partners
and understand business priorities and work to promote commercial collaborations between business partners”.
A “top-quality choice” for filing and prosecution in Europe and beyond, Jacobacci & Partners has been meeting and exceeding the demands of a technically diverse clientele since 1872. Operating from 13 bases across Italy, Spain and France, its 90 practitioners serve as custodians of some 80,000plus patents without breaking a sweat. Those keen to instruct it for filings, prior art searches and postgrant representation should get in touch with Paolo Ernesto Crippa.
Hogan Lovells
Martini Manna Avvocati
Roberto Valenti DLA Piper
Hogan Lovells assembles tailored strike forces from its 400-strong global bench of lawyers to carry the day in even the most fraught cross-border disputes. It is a premier choice for large-scale life sciences and high-technology proceedings, courtesy of its enviable international reach and complete command of intellectual property, encompassing patents, trademarks, designs and everything in between. In Milan, Luigi Mansani and Giovanni Ghirardi are on hand to deliver exquisite results. “They are the best lawyers in Italy,” enthuses one patron. “Luigi and Giovanni understand complex technical issues, define the most effective strategies and provide objective opinions on the strengths and weaknesses of a case. They are also great when communicating with judges, and present their arguments clearly and effectively”.
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“Martini Manna Avvocati is a super-qualified and professional firm – we are extremely pleased to have brought it on board as our partner for every IP matter,” reports one satisfied patron. The commercially savvy group prides itself on its well-rounded, forward-thinking advice, intimate understanding of clients’ businesses and ability to get right down to the nub of each matter. Elena Martini and Luigi Manna are discerning choices for high-stakes litigation. “Elena’s profound legal knowledge is evident from your first meeting with her. She is responsive, technically brilliant and always prepared to go the extra mile. Working with her is an absolute pleasure.” Fellow co-founder Manna thrives in the IT sector, where he has designed and executed a dizzying number of enforcement strategies to superb effect.
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Italy Giovanni Francesco Casucci Dentons
Individuals: litigation Gabriel Cuonzo Trevisan & Cuonzo
Vittorio Cerulli Irelli Trevisan & Cuonzo
Gualtiero Dragotti DLA Piper
Giovanni Ghirardi Hogan Lovells
Giovanni Galimberti Bird & Bird LLP Cesare Galli IP LAW GALLI Srl
Laura Orlando Herbert Smith Freehills LLP See p651
Giovanni Guglielmetti BonelliErede Luigi Mansani Hogan Lovells Massimiliano Mostardini Bird & Bird LLP Luca Trevisan Trevisan & Cuonzo Daniela Ampollini Trevisan & Cuonzo Mariangela Bogni IP LAW GALLI Srl Donatella Capelli Trevisan & Cuonzo
Modiano & Partners
Modiano & Partners is hailed as “a top gun” of the Italian scene and “a great ally to cooperate with”. The boutique houses over 50 patent attorneys – most of whom have doctorates in their specialist fields and speak several languages – in offices throughout Italy, Germany and Switzerland. The key figures here are “phenomenal” electronic engineer Alessandro Sanchini, who is “brilliant and fantastic to work with”; and Micaela Modiano, a “knowledgeable and tough expert in the life sciences”.
Notarbartolo & Gervasi
The “super-skilled and powerful” team at Notarbartolo & Gervasi makes it its mission to optimise and defend clients’ crown-jewel assets, while also coming up with effective patenting strategies and on-point technical evaluations.
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Giulio Enrico Sironi Simmons & Simmons LLP Roberto Valenti DLA Piper Sara Balice Herbert Smith Freehills LLP Elisabetta Bandera Bird & Bird LLP Stefania Bergia Simmons & Simmons LLP Gianluca De Cristofaro LCA Studio Legale Niccolò Ferretti Nunziante Magrone Paola Gelato Studio Legale Jacobacci & Associati
It combines the talents of patent attorneys and attorneys at law to provide a truly integrated service, covering everything from prosecution to asset commercialisation. Chemistry and the life sciences are strongholds, as reflected in a client roster featuring the likes of Saudi Aramco, Herbolea and Sintal Dietetics. Managing partner Diego Pallini Gervasi has authored two books, presented at 150-plus seminars and spent more than three decades partnering with prestigious public research institutions; no surprise, then, that he is in hot demand as a court-appointed expert. Electronic engineering sage Antonio Mario Pizzoli is another regular at the courts. His thoughtful arguments and collected approach stand him in good stead before judges and at the EPO. Making their IAM Patent 1000 debuts this year are biologist Elisabetta Zaccaro
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Italy Fabrizio Jacobacci Studio Legale Jacobacci & Associati Vincenzo Jandoli Avvocati Associati Franzosi Dal Negro Setti Barbara La Tella Studio Legale Jacobacci & Associati
Simmons & Simmons LLP
Luigi Manna Martini Manna Avvocati Elena Martini Martini Manna Avvocati Marco de Morpurgo DLA Piper Pietro Pouché Herbert Smith Freehills LLP Monica Riva Legance - Avvocati Associati
See p653
Federica Santonocito Avvocati Associati Franzosi Dal Negro Setti Claudia Scapicchio Studio Legale Jacobacci & Associati Tankred Thiem LGV Avvocati
and chemist Massimo Palladino. The “talented and customer-focused” Zaccaro “understands clients’ doubts, clarifies them quickly and finds a way to reach their end goals. She evaluates inventions thoroughly and gets the maximum scope of protection possible, saving businesses time and money”. “A pleasure to work with”, Palladino is au fait with the nuances and procedures of different patent offices and regimes across the world: “He is reliable, great at explaining everything in layman’s terms and readily makes himself available.”
Nunziante Magrone
A full-service firm with the management style of a boutique, Nunziante Magrone is ideally situated for cases that come interwoven with complex patent, competition and commercial threads. The IP squad also collaborates seamlessly with the M&A department to drive fruitful outcomes in the transactional space. Under the leadership of
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Niccolò Ferretti, the group has gone out to bat for Cressoni in infringement proceedings that are currently pending before the Supreme Court. “A true professional with a first-class, no-nonsense approach, Niccolò consistently impresses and instils a level of confidence that is earned not by chance, but by hard work and attention to detail. His standards are outstanding and something to behold.”
Under the direction of Giulio Enrico Sironi and Stefania Bergia, the Italian arm of global giant Simmons & Simmons has ascended to an elevated position on the local legal landscape and become a hub for must-win life sciences and pharmaceutical patent litigation. Sironi “thinks up the best defence strategies, keeps clients’ interests at the forefront and provides an accurate, reliable and timely service”. These are all traits he shares with the “exceptionally knowledgeable” Bergia: “She is an excellent writer too, and sets out her arguments clearly and convincingly.”
Società Italiana Brevetti SpA
Società Italiana Brevetti comes highly recommended for its “precise and detailed service, technical abilities and impressive knowledge of the patenting process. It replies quickly, explains procedures clearly and explores different paths to grant – and has a high success rate too”. A font of wisdom on European legislation, Claudio Germinario spent two decades at the EPO as a biotechnology examiner and appeal board member; he provides invaluable litigation support to industry heavyweights such as Laboratorios Menarini SA Barcelona. Also on the pharmaceutical side, the “personable” Elisabetta Papa “produces excellent work that is always organised and well-thought-out”. She never shies away from a challenge and regularly prosecutes applications for emerging technologies in the biomedical field. Mechanical maven Emanuele Concone knows all the right moves in opposition proceedings; while instructions in the electronics and software sectors are deftly handled by Gaetano Barbaro and Giuseppe Romano. Precision is key for Barbaro, whose applications are never less than perfect; while Romano’s previous industry experience informs his incisive counsel.
Studio Legale Jacobacci & Associati
Game-changing representation in IP disputes and commercial negotiations is the calling card of Studio Legale Jacobacci & Associati, as illustrated by its recent instructions: among other highlights, it did
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Italy battle for Mylan in a pan-European suit against Teva Pharmaceutical Industries and Yeda Research & Development Co; and put a two-year long dispute to bed on behalf of Abott Cardiovascular Systems. The latter achievement was orchestrated by Fabrizio Jacobacci and Claudia Scapicchio. “Resourceful, thorough and creative, Fabrizio is a master of patent litigation” who provides outstanding leadership to the firm. The strategic vision of IAM Patent 1000 newcomer Scapicchio is pivotal to successful outcomes: “She grasps issues quickly and finds a way to solve them without overlooking business needs. Claudia’s pragmatism, dynamic approach and positive attitude, coupled with her punctuality and responsiveness, are key to overcoming any hurdles.” Another “passionate and driven litigator”, Barbara La Tella has an exceptional facility for SEPs: “She finds the best solutions, suggests brilliant strategies and is always willing to explain things every step of the way.” Lucrative licensing deals and IP-rich transactions are brokered smoothly by Paola Gelato, whose “ability to find real-life solutions to complex legal issues, practicality and business-minded approach set her apart from other counsel”.
Studio Torta SpA
“Studio Torta always has the right patent attorney for the job.” Regularly topping the European filing charts, it is home to a diverse team of professionals with a broad mix of technical and legal backgrounds: “They understand complex technologies and provide advice in a way that clients appreciate and understand. They never view patents in a vacuum, but work together with companies to help them reach their full potential.” An A-star prosecution line-up consists of Simone Bongiovanni, Luigi Franzolin, Fabio D’Angelo, Mauro Eccetto and Lidia Casciano. Electrical engineer Bongiovanni has patent procurement down to a fine art, as he recently demonstrated for multinational corporation CNH Industrial. In the mechanical arena, Franzolin consistently secures positive results at the EPO; while portfolio management ace D’Angelo has been entrusted with protecting Ferrari’s designs worldwide. The technically versatile Eccetto advises across the energy, food and beverage sectors and knows how to get applications through to grant thanks to a former stint as an EPO examiner. Joining them in the guide for the first time is Casciano, who is hailed by one prominent litigator as “the life sciences attorney in Italy and a great choice for litigation support”.
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Trevisan & Cuonzo
High-stakes patent disputes are meat and drink to Trevisan & Cuonzo, which combines accuracy with creativity to meet clients’ every need. The firm is passionate about innovation and recently launched a new service, 4Agrinnovation, to support agribusinesses in protecting and commercialising new plant varieties and obtaining plant breeders’ rights. With fluency in the life sciences and pharmaceuticals, Luca Trevisan and Gabriel Cuonzo have been instrumental to the firm’s success. “Luca is one of the best lawyers in Italy – his assistance is outstanding. He thinks outside of the box, understands the mentality of his opponents, fights hard and achieves excellent results.” “Tough litigator” Cuonzo has “great insight into the approach of the Italian courts. He knows the best strategic options to get a successful outcome”. A repository of trust for major German, US and Spanish pharmaceutical players, “brilliant lawyer” Donatella Capelli is a crucial asset in SPC validity and infringement proceedings. Spearheading operations in Rome is Vittorio Cerulli Irelli, another seasoned litigator who tackles SEP disputes with verve. He has an encyclopaedic understanding of Italian law and regularly provides expert opinions to the High Court of England and Wales. In Parma, Daniela Ampollini plays lead counsel roles and elegantly negotiates commercial agreements across a range of industries.
Other recommended experts
“One of the most reliable experts for pharmaceutical patent litigation”, Fabrizio Minoja is “an absolute superstar”. He can be found at Bianchetti Bracco Minoja. Flying the flag of Cantaluppi & Partners, Stefano Cantaluppi has “an efficient, businessminded approach that proves valuable in many cases”. The mechanical engineer speaks four languages and leverages four decades of experience in finding favourable outcomes. “For biotechnology matters, there is no one better than Olga Capasso. She is one of the very best in the business and has a modern approach too.” The former molecular and cellular biology scientist plies her trade at De Simone & Partners. Technically adept and business savvy, Dragtotti & Associatis’s Roberto Pistolesi is a crackerjack life sciences patent specialist with a niche in SPCs. At HOFFMAN EITLE, Marco Benedetto’s drafting skills are unerringly on point. The chemistry whizz also produces top-notch legal and technical opinions. “An emerging and active lawyer with a dynamic approach”, Gianluca De Cristofaro is making his mark on the country’s patent scene. The versatile litigator and transactions ace operates out of LCA Studio Legale. A fresh face in the guide, Antonio
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Italy Di Bernardo “works at an extremely high level and is one of the few patent attorneys out there who can handle software litigation”. He receives instructions at THINX. Co-heading the IP department at Legance Avvocati Associati, Monica Riva acquits herself with distinction in multifaceted and commercially
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consequential disputes. Her negotiation skills are also put to good use in seeing complex technology transfers through to close. LGV Avvocati’s Tankred Thiem is a discerning choice for pan-European litigation, having qualified at the German and Italian Bars.
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Biggi, Cristina Patent Attorney – Bugnion SpA cristina.biggi@bugnion.eu | www.bugnion.eu
Cristina Biggi graduated in chemistry (MSc) from the University of Pavia (Italy) in 1999 and completed her PhD studies at the University of Milan in 2002, including one year spent as visiting student at the University of Southampton (United Kingdom). During her PhD, Ms Biggi worked on the synthesis of novel organic compounds with pesticide activity and, in Southampton, on the solid phase synthesis of antiparasitic peptides. Prior to joining Bugnion in 2008, she was a trainee in patent law at a major IP law firm in Milan for almost five years. Ms Biggi is a qualified European and Italian patent and design attorney and a qualified litigator for the upcoming Unified Patent Court. In nearly 20 years of practice, she has drafted, filed and prosecuted hundreds of patent applications before the EPO, WIPO and the Italian Patent and Trademark Office; she also deals with freedom-to-operate, infringement and patentability opinions, and opposition and appeal proceedings before the EPO and in national litigations. Ms Biggi’s technical expertise is in the field of chemistry, with extensive experience in technological areas such as organic compounds, cheminal processes, compositions, formulations, polymer fibres for non-woven fabrics, kits for analysis, natural extracts, medical uses and methods, non-medical uses and methods, polymers, paintings, coatings, nanotechnology, fertilizers, bio-stimulants, crystallography, catalysts, pharmaceutical compounds and their use, cosmetic and pharmaceutical formulations, biomaterials for medical use, diagnostic and therapeutic methods, electrochemical cells, food chemistry, microorganisms, peptides, probiotics. She has also filed and prosecuted plant variety applications. She has been leading the chemistry and life sciences patent group of Bugnion since 2011. Ms Biggi has been listed by Who’s Who Legal among the world’s leading patents lawyers, attorneys and agents. She has also been nominated as an “IP Start for Patent” by Managing IP and recognised by IAM Patent 1000 for her expertise in the life sciences space as the holder of a PhD in organic chemistry.
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Bugnion SpA Viale Lancetti 17 Milan 20158 Italy T +39 02 693 031 F +39 02 6930 3501 See firm profile p948 Professional associations • AIPLA • AIPPI • epi
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Botti, Mario Partner – Botti & Ferrari SpA mario@botti-ferrari.com | www.botti-ferrari.com
Mario Botti is a partner at Botti & Ferrari, a specialist IP firm based in Milan. He has a degree in electronic engineering from the Polytechnic University of Milan. He is a qualified European patent attorney, industrial property counsel and Italian patent and trademark attorney. He is admitted to practise before the EU Intellectual Property Office and the Patent and Trademark Office of San Marino. Mr Botti obtained a patent litigation in Europe diploma from the University of Strasbourg and was then a tutor on the course for three years. Before establishing Botti & Ferrari in 1999, he worked at a top Italian patent firm and was co-founder and partner of another renowned patent firm. He speaks fluent English and has a sound knowledge of French. Mr Botti primarily focuses on offering assistance to directors of important industrial groups in defining strategies to protect their companies’ innovations. His background also includes: • preparing and prosecuting Italian, European and US patent applications; • performing prior art searches in order to provide validity opinions on patents or patent applications; and • infringement opinions.
Botti & Ferrari SpA Via Cappellini 11 Milan 20124 Italy T +39 02 67 04 275 F +39 02 67 03 250 See firm profile p936
In recent years, Mr Botti has developed his skills in providing technical assistance to lawyers in patent litigations. He has handled dozens of litigations on behalf of Italian and foreign clients and has been appointed as private and technical counsel by the Court of Milan. He has assisted US, German, Japanese and Korean clients involved in patent litigations in Italy.
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Ferreccio, Rinaldo Partner – Botti & Ferrari SpA rinaldo@botti-ferrari.com | www.botti-ferrari.com
Rinaldo Ferreccio is a partner at Botti & Ferrari, a specialist IP law firm based in Milan. Dr Ferreccio holds a degree in medicinal chemistry and a PhD in pharmaceutical sciences, both from the University of Genoa. Dr Ferreccio is a qualified European patent attorney and industrial property counsel, and Italian patent and trademark attorney. He is also admitted to practise as a trademark attorney before the EU Intellectual Property Office and is a member of the International Association for the Protection of Intellectual Property Italy. He has also obtained a diploma in patent litigation in Europe from the University of Strasbourg. Before joining Botti & Ferrari as a partner in 1999, Dr Ferreccio was a chemical researcher at Farmitalia-Carlo Erba (Milan), a substantive examiner at the European Patent Office (Munich) and a patent attorney at renowned Italian patent practices. Dr Ferreccio speaks fluent English and has a sound knowledge of German and French. Dr Ferreccio’s practice focuses mainly on the technical fields of medicinal chemistry, pharmaceutical technologies, organic chemistry, biochemistry, industrial chemistry, food chemistry, food technologies and biotechnology. His professional experience includes preparing and prosecuting European, international and foreign patent applications, carrying out prior art searches and providing technical opinions on patent validity and infringement. He has also acquired considerable experience as a court-appointed technical expert for patent litigation, in particular at the Milan Court. Dr Ferreccio frequently provides technical assistance to attorneys at law in patent lawsuits and acts as a technical expert on behalf of his clients in Italian patent lawsuits. Dr Ferreccio is frequently involved in nullity and infringement lawsuits concerning pharmaceutical substances and compositions involving prominent, often multinational, companies.
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Botti & Ferrari SpA Via Cappellini 11 Milan 20124 Italy T +39 02 67 04 275 F +39 02 67 03 250 See firm profile p936
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Galli, Cesare Founding Partner – IP LAW GALLI Srl galli.mi@iplawgalli.it | www.iplawgalli.it
Since 1986 Cesare Galli has been involved in a huge number of important litigations in Europe concerning all branches of IP law (in particular patents and trademarks), often tackling cross-border problems, and has authored various essays on the issue. In 1999 he obtained the first Italian decision with regard to biotech patents and in 2004 he obtained the first Italian ruling assessing the validity of a computer-implemented invention patent. In 2005 the firm enforced successfully the first ex parte orders ever granted in Italy for the seizure of secret documents and computer files stolen by former employees. Similarly, between 2004 and 2021 Professor Galli secured one of the most relevant decisions concerning the protection of strategic patents in both the pharmaceutical and technology, media and telecoms fields. Since 2005 Professor Galli has been a member of all of the government commissions for revising the Italian IP Code. He lent decisive influence to the 2010 reform of the code and was involved in the process that led to Italy joining the UPC and the unitary patent system. Since 2009 he has been a member of the Sub-group on Legal Framework of the European Commission Counterfeiting and Piracy Observatory. Since 1998 Professor Galli has been a full professor of IP law at the Faculty of Law of the University of Parma. He co-edited the 4,000-page Commentary of Italian Intellectual Property Rights Code (UTET-Wolters Kluwer, 2011). In 2011 he was invited by the Italian Ministry of Economic Development to take part in the panel of legal experts of the National Anti-counterfeiting Council.
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IP LAW GALLI Srl Via Lamarmora 40 Milan I-20122 Italy T +39 02 5412 3094 F +39 02 5412 4344 See firm profile p1000
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Petraz, Daniele Giovanni Co-managing Partner – GLP Intellectual Property Office daniele.petraz@glp.eu | www.glp.eu
Daniele Giovanni Petraz joined GLP in 1997 after working as a patent engineer in one of Vienna’s main IP firms. In 1999 he took charge of the opening of the GLP office in Milan and has since then played an important role in the development of the firm. He graduated in industrial engineering from the University Politecnico of Milan. Mr Petraz provides strategic consultancy on IP matters related to the development of new products and on prosecution strategies. Clients appreciate Mr Petraz’s international outlook and the combination of business skills and IP knowledge, which translate into high competence and effectiveness. As head of the firm’s international department, he regularly attends conferences and seminars all over the world. He also has strong skills in analysis and evaluation of intangible IP assets. Mr Petraz became a partner in 2004 and is in charge of the financial management of the firm. Mr Petraz acts as director of various companies in Italy and abroad. He is the author of numerous publications related to intellectual property and is a lecturer on IP-related topics. He is a member of the board and technical committee of the Italian-Brazilian Chamber of Commerce, as well as a member of the International Association for the Protection of Intellectual Property, INTA and AIDB – the Italian Association on Patent Documentation and Analysis.
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GLP Intellectual Property Office Viale Europa Unita 171 Udine 33100 Italy T +39 0432 506388 F +39 0432 507735 See firm profile p982
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Riva, Monica Senior Counsel – Legance – Avvocati Associati mriva@legance.it | www.legance.com
Monica Riva is co-head of Legance - Avvocati Associati’s IP department and is based in Milan. Over a period of 20 years, Ms Riva has garnered experience in all areas of intellectual property, including patents, trademarks and other distinctive marks, supplementary protection certificates, copyright and related rights, designs, software, geographical indications, know-how and trade secrets, unfair competition, defamation in the press, image rights, name rights and portrait rights, misleading advertising and improper commercial practices, information technology, e-commerce and selective distribution, and franchise and licensing agreements. She has advised Italian and international clients in a wide range of sectors, including fashion and luxury goods, finance and insurance, industry, food and beverages, software, publishing, life sciences and pharmaceuticals. Among her particular specialisms is advice to clients on the full range of litigation matters (at interim and substantive hearings, and in arbitrations), including matters with international and cross-border implications and where the issues impinge upon multiple practice areas. In addition to her litigation work, Ms Riva also advises on transactional matters, in connection with joint ventures, mergers and acquisitions, the drafting and negotiation of licensing agreements, technology transfers, distribution and franchising, the development of new IT platforms, and software development and maintenance. Ms Riva graduated cum laude in industrial law from the Catholic University of the Sacred Heart in Milan and subsequently gained a research doctorate at the University of Parma, her thesis receiving first prize from the Lewis Gaze Memorial Scholarship established by MARQUES, the European brand owners’ association. She is a member of the International Association for the Protection of Intellectual Property and she has since 2004 been a member of the editorial team for Giurisprudenza Annotata di Diritto Industriale, a leading Italian IP law review. Ms Riva has authored a large number of publications and commentaries in the IP field, and regularly speaks at seminars, conferences and conventions.
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Legance – Avvocati Associati Via Broletto 20 Milan 20121 Italy T +39 02 89 63 071 F +39 02 89 63 07 810
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Netherlands
The rollercoaster that is the Unified Patent Court (UPC) has practitioners in the Netherlands on the edge of their seats. While significant legal challenges remain, the country is an important jurisdiction for patent litigation and the introduction of the UPC would likely result in amendments to current disputes being heard across all participating countries. That said, practitioners have been busy with an increase in disputes coming in from the telecommunications sector as global giants place more of an importance on key European countries. In the life sciences, new risks have come to light as IP owners are now liable to be sued by third parties if they assert rights that are subsequently invalidated according to a recent ruling by the District Court of The Hague. Moving away from litigation, R&D activity is healthy, investments and government expenditure remain steady and the Netherlands has once again been ranked favourably by WIPO in its global innovation index.
Allen & Overy LLP
Allen & Overy’s Dutch outpost plays a vital role in the firm’s larger network, providing well-informed commercial strategies to its international clientele and assisting them with critical pan-European disputes. It has the legal and technical chops to prevail in must-win litigation across a range of sectors: thanks to its facility for SEP and FRAND-related issues, for example, it was recently called on to represent Dutch telecommunications company KPN in an infringement and licensing matter relating to the same. Running point on this is department head Frits Gerritzen, an “esteemed and truly terrific lawyer” who is also “an industry leader in the world of hightech”: “Frits is attuned to developments in other jurisdictions and their impact on local advocacy. He is a brilliant, thoughtful and calming presence.”
AOMB Intellectual Property
Going from strength to strength each year, AOMB is a preferred choice for life sciences concerns. Based in four offices across the Netherlands and Poland, its practitioners marry rich academic backgrounds with keen technical savvy. Biotechnology superstar René Raggers’ incisive advice is backed by a PhD in research medicine and insight from several years as a senior scientist in industry. He is always willing to dive into the nitty-gritty, which is why patent procurement comes so easily him; while regular involvement in litigation proceedings gives him an edge when devising strategies. Joining Raggers in the guide this year is the “fair and open” Rutger Valkonet: “He always finds a healthy balance between a company’s profits and risks; and his understanding of cultural and historical differences makes him a valuable adviser to foreign clients too.”
Arnold & Siedsma
Through seamless collaboration between bases in the Netherlands, Belgium, Germany and
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Switzerland, boutique Arnold & Siedsma provides a joined-up patent service to its illustrious clientele. For example, it is the only firm to assist Samsung across five of its business units, filing 300 European patent applications a year on behalf of the chaebol. Managing partners Joost Grootscholten and Petri van Someren run a tight ship. “Truly outstanding attorney” Grootscholten takes a measured approach and analyses a situation from all angles to come up with win-wins solutions for all parties. He specialises in software-related inventions; while van Someren has carved out a niche in the burgeoning plant breeding sector and works hand in glove with contacts around the world to secure clients castiron protection wherever it is needed. Alongside her in the biotechnology space is the efficient and pragmatic Marcel van Kooij, another crucial resource for start-ups and multinationals alike. The electrical, mechanical and computer engineering fields are further strongholds, thanks to the efforts of Paul Hylarides, Arjen Hooiveld and IAM Patent 1000 newcomer Bart Jacobs. “Paul’s advice is clear and honest, and provides true guidance.” A go-to for electronics briefs, he recently assisted Technical University Delft and The Boeing Company with their applications, and Fuji Seal International with patent strategy. Major league players from Japan seeking to safeguard their inventions in Europe have Hooiveld’s number on speed dial; while Jacobs has been busy managing Ampleon Netherlads’ portfolio and drafting patents for Teledyne Dalsa. “Bart is incredibly sharp, grasps complex technical concepts quickly and always does a great job. He is a pleasure to work with.” Medical technology matters are deftly handled by Rogier Brouwer and Martin Luten. Brouwer is a material science ace whose R&D know-how is underpinned by former in-house experience; while Luten “has a flexible approach and rapidly adapts to and understands foreign legal systems”. On the contentious front, Michiel Rijsdijk knocks it out of the
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Netherlands park. An adroit coordinator of cross-border disputes, he maintains a vibrant trademark and patent practice which guarantees a holistic approach to multifaceted proceedings. See p924 for firm profile
Firms: litigation and transactions
BarentsKrans
HOYNG ROKH MONEGIER
Since its inception, BarentsKrans has provided gamechanging support in complex disputes for global pioneers in the life sciences and telecommunications industries. For example, it has been working with Mylan for over 25 years on SPC and invalidation proceedings, while also advising on product launches and contractual matters. Playing an integral role on these briefs are Jaap Bremer and Marleen van den Horst. “They collaborate with external patent attorneys and in-house teams really well, and give everyone sufficient room to contribute and come up with valuable solutions.” Department head Bremer’s personable approach, eye for detail and deep patent knowledge are appreciated by those seeking to defend intricate inventions. Van den Horst has a similar penchant for advanced technologies and complicated cases, particularly in the life sciences. “In addition to the expertise she brings, I am also very impressed by the quality of Marleen’s efforts and her motivation to continuously support us in realising our dream,” reports one client. “We fought our case in multiple jurisdictions and Marleen’s defence was tried, tested and true.”
Biopatents IP Consultancy
Joining the Dutch rankings in the IAM Patent 1000 this year is Delft-based outfit Biopatents IP Consultancy. Located a stone’s throw from Delft University of Technology, and between the innovation hotspots of Rotterdam and The Hague, it is ideally situated to cater to the needs of both established high-tech companies and fledgling start-ups. Although the firm is relatively young, having set up shop in 2018, its founder and leading light Tom Wittop Koning supplies experience and insight in abundance. He is a seasoned European and Dutch patent attorney who manages patent portfolios, represents clients in critical patent infringement cases and coordinates cross-border litigation with equal finesse.
Bird & Bird LLP
Bird & Bird’s lofty profile on the European patent scene is likewise maintained by its Dutch contingent: the team “is brilliant at what it does” and combines “technical excellence” with “great commercial sense”. Fraught disputes in the high-tech and telecommunications industries are meat and drink
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Brinkhof
See p944
Hogan Lovells See p998
BarentsKrans Bird & Bird LLP De Brauw Blackstone Westbroek DLA Piper Freshfields Bruckhaus Deringer LLP Simmons & Simmons LLP Vondst Advocaten NV Allen & Overy LLP Houthoff NautaDutilh Taylor Wessing
to the firm: in recent highlights, “impressive litigator” Armand Killan has been battling it out for Qualcomm in international proceedings against Apple, as well as tackling SEP matters for Nokia. “He has great authority and brings great legal and technical knowledge to every case.” The life sciences practice has also been humming since the European Medicines Agency’s post-Brexit relocation to Amsterdam, with Bird & Bird quickly increasing its market share as a result. The firm is currently assisting leading biopharmaceutical company Ablynx in infringement proceedings under the watchful eye of IP division lead Wouter Pors. The tenacious advocate coordinates international litigation with a sure touch, as further borne out by his fine work for Bicycle Therapeutics in litigation which is being heard in Germany and the United States. Life sciences group head Marc van Wijngaarden and new hire Tjibbe Douma add further contentious firepower. Highly sought after for his agile handling of pan-European disputes and meticulous case preparation, Van Wijngaarden is in hot demand in other sectors too: he has been representing three entities from the Neo Materials Group and acted for
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Netherlands De Brauw Blackstone Westbroek
Firms: prosecution Arnold & Siedsma
See p924
De Vries & Metman
See p968
NLO
See p1028
VO Patents & Trademarks
See p1082
AOMB Intellectual Property EP&C BV HOYNG ROKH MONEGIER
See p998
Patentwerk BV Biopatents IP Consultancy Dentons HGF Ltd
See p994
Anheuser-Busch InBev in a global dispute against Heineken. Former Dentons lawyer Douma has “astonishing knowledge of foreign legislation and a great technical understanding that results in solid legal arguments. He is dedicated and has a can-do attitude that makes him a pleasure to work with”.
Brinkhof
“Top IP firm” is tipped as “one of the strongest players in the Netherlands” thanks to the polished performances of its “fantastic litigators”. “When it comes to legal and technical content, they are real experts. They are quick on their feet, street-smart and have a no-nonsense approach.” A familiar face before the Supreme Court, biotechnology specialist Daan de Lange is “a brilliant patent lawyer with a talent for winning practically impossible cases”. The firm’s capabilities in the chemistry and pharmaceutical arenas are bolstered by Koen Bijvank and Mark van Gardingen. The technical background of “great advocate” Bijvank is “an asset to the team”; while van Gardingen is hailed as “intelligent, tenacious and the best patent lawyer in the Netherlands. He has the strategic foresight, advocacy skills and flair you need to get the ear of the court”. Rounding off the troop is Richard Ebbink, “one of Europe’s leading professionals” and a go-to for opposition work before the EPO. See p944 for firm profile
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A potent presence on the Dutch market, De Brauw Blackstone Westbroek adopts a hands-on, pragmatic approach to hammer out optimal outcomes in contentious and transactional settings. Its local practitioners join forces with colleagues in Belgium, Germany, the United Kingdom, China and Singapore to provide internationally scoped assistance on the large-scale matters that are their bread and butter. The rainmaker in Amsterdam is the “attentive” Gertjan Kuipers, a “strong and dedicated litigator who gets right into the details of every case”.
De Vries & Metman
De Vries & Metman sets the bar for prosecution work in the Netherlands as a passionate and forward-thinking partner to cutting-edge innovators, whatever their discipline. The team showcases incredible versatility in securing total protection for the inventions of startups, SMEs and multinationals across the technical spectrum. Armed with a doctorate in applied physics, Louw Feenstra tackles tricky mechanical engineering matters with verve. He shares this specialism with Arnt Aalbers, whose vast industry knowledge proves a boon for medical technology, civil engineering and energy concerns. Holding the fort on the hightechnology side is nanotechnology PhD Erik Visscher; he has an affinity for AI inventions and was formerly a researcher at the EPO. For contentious support in the electronics space, look no further than Ferry van Looijengoed, a patent attorney whose “contributions to litigation are extremely valuable”. In the life sciences, Lilian Hesselink capitalises on over 25 years in the game to generate IP value for her clients. See p968 for firm profile
Dentons
Full-service giant Dentons maintains a presence in 78 countries, has a phalanx of 10,000 lawyers on deck and is recognised worldwide for its superior contentious capabilities. The Dutch contingent is a central cog in this mighty international machine and frequently moves the needle for those embroiled in complex disputes. For example, the 14-strong unit recently assisted disruptive toy company Zuru in multi-jurisdictional proceedings; the firm acts for this dynamic player in 11 countries. In Amsterdam, Alexander Odle is the key contact for prospective clients.
DLA Piper
DLA Piper’s formidable Dutch strike force has captured the attention of numerous industry titans, as its current caseload attests. It recently scored a
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Netherlands favourable outcome for Fresenius Kabi in a spat with Eli Lilly; and it continues to support leading companies such as Euro-Caps, the world’s second-largest producer of coffee capsules, in opposition proceedings. The marquee name is Paul Reeskamp “a top-quality lawyer who can be trusted with any case for any client regardless of how complex it is”. “Paul’s practical advice allows companies to make quick decisions. He is friendly and honest, and does not hesitate to tell it like it is.” When technology-driven disputes arise, legal director Alexander Tsoutsanis comes to the fore: “He is super-bright and generous with his time and knowledge, and evaluates all potential solutions in coming up with a plan. In-house lawyers can move forward without delay thanks to his quick replies.”
EP&C BV
The USPs of EP&C include astute deployment of sophisticated internal tools and systems, a commitment to understanding the technology behind the inventions it protects and the ability to see the wider business picture. Managing partner and “excellent patent attorney” Hendrik Jan Brookhuis keeps the firm firing on all cylinders. The “friendly, thorough” Jordi Kox is a “critical, detail-oriented thinker” who produces “exceptionally strong analyses” and has a fantastic track record at the EPO. Completing the line-up is the nimble and perceptive Walter Hart, who finds commercially viable answers to the most complex questions. The civil engineer leverages his industry insight to obtain patents that enhance patrons’ market position.
Freshfields Bruckhaus Deringer LLP
In the words of one foreign associate: “We have worked with Freshfields’ Amsterdam IP team in many highly complicated patent disputes and their level of know-how and customer service are unparalleled.” “It is always a pleasure to work with them,” enthuses another. “They are some of the best and are recommended without hesitation.” Star quarterbacks Rutger Kleemans and Jelle Drok “achieve results that others can only dream of. They have the ear of the court in oral hearings and know how to captivate an audience”. Lately, Kleemans has been representing Novartis in three separate actions against Teva and in preliminary injunction proceedings against Mylan, while also acting for Roche alongside Drok. “Rutger gets to the core of a case instantly, sees what the main arguments are and knows just how to present them.” Drok “gets into the details, sees the full picture and narrows it all down into convincing arguments”. Rising star and “charismatic litigator” Ruben Laddé “really knows his stuff and remembers absolutely
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Luminaries Peter Hendrick Freshfields Bruckhaus Deringer LLP
everything”. He has lately been assisting Drok in HP in class action litigation. Leading the international patent litigation group, Peter Hendrick has encyclopaedic IP knowledge that frequently makes the difference in pan-European matters.
HGF Ltd
European outfit HGF debuts in the Dutch rankings of the IAM Patent 1000 this year courtesy of its technically diverse bench, extensive geographical reach – it has 21 bases across the continent and a finely cultivated network of associates – and precision prosecution. In one recent highlight, it is tending to the drafting, global prosecution and strategic counselling needs of anti-microbial technology trailblazer Chemical Intelligence Ltd. With a PhD in chemistry and in-house experience at an oil and gas multinational under his belt, Achim Krebs is a favourite for bespoke, businessminded advice; he also provides farsighted assistance with IP strategy to companies in Asia. A go-to for complex post-grant proceedings, Leythem Wall has “exceptional analytical skills”: “His strong knowledge of case law and excellent communication skills make him effective in oral proceedings. Leythem is an invaluable resource and a pleasure to work with, and is highly recommended.” See p994 for firm profile
Hogan Lovells
Home to “one of the finest IP litigation teams in Europe”, Hogan Lovells’ Dutch arm also draws judiciously on resources from across the wider firm to carry the day in high-stakes disputes. Many precedentsetting wins bear the fingerprints of department lead Ruud van der Velden, including the successful enforcement of a second medical use patent that was revoked in several jurisdictions. Standing shoulder to shoulder with him are Bert Oosting, Klaas Bisschop and IAM Patent 1000 newcomer Rik Zagers, who all garner rave reviews: “They are my first choice for litigation – their arguments are well written, finely presented and show great attention to detail. They are hardworking and proactive, and they interact with scientific experts exceptionally well.” Oosting is “a great litigator, especially for originators”; Bisschop “is full of ideas and an inspiration to work alongside”; and the star of up-and-comer Zagers is firmly in the ascendant.
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Netherlands Joost Grootscholten Arnold & Siedsma
Individuals: prosecution Arnt Aalbers De Vries & Metman
See p664
David Bot NLO
Arjen Hooiveld Arnold & Siedsma See p667
Paul Clarkson NLO Michiel de Baat HOYNG ROKH MONEGIER Jeroen den Hartog HOYNG ROKH MONEGIER Wilbert Derks HOYNG ROKH MONEGIER Louw Feenstra De Vries & Metman
See p670
Frodo Nunes Ferro HOFFMANN EITLE
Houthoff
The tight-knit patent team at full-service outfit Houthoff thrives on the cut and thrust of hard-fought life sciences and technology disputes that make it all the way to the Supreme Court. Pace setter Thijs van Aerde alone has litigated more than 100 cases before the country’s highest judicial authority; of late he has been duking it out for Fresenius Kabi in a ground-breaking suit against Eli Lilly. The firm has also carved out a niche in plant variety rights – the metier of “truly great and intelligent lawyer” Fleur Tuinzing-Westerhuis. Transactional work is another forte for the group, with Tuinzing-Westerhuis recently advising on the acquisition of 100% shares in Applikon Biotechnology by Getinge. Asset commercialisation and technology transfers fall within the wheelhouse of fellow deal maven Thomas de Weerd; he focuses
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See p672
Jelle Hoekstra DeltaPatents BV
Hendrik Jan Brookhuis EP&C BV Rogier Brouwer Arnold & Siedsma
Walter Hart EP&C BV Lilian Hesselink De Vries & Metman
Hans J Bottema NLO
See p671
See p673
Hans Hutter NLO Paul Hylarides Arnold & Siedsma
See p674
Bart Jacobs Arnold & Siedsma
See p675
Cees Jansen VO Patents & Trademarks
See p676
Leo Jessen VO Patents & Trademarks
See p677
Maarten FJM Ketelaars NLO Mari Korsten NLO
on the IT sector, which he knows intimately thanks to time spent in-house.
HOYNG ROKH MONEGIER
“The first choice for litigation in the Netherlands”, HOYNG ROKH MONEGIER “is effective in court and delivers extremely good results”. The powerhouse enjoys a glittering reputation for its A-to-Z patent offering, as reflected in its fine showing in the rankings. Bart van den Broek provides inspired leadership to the litigation division; the “renowned figure and outstanding lawyer” has “dedicated his whole life to intellectual property and is always on top of every detail”. He and Geert Theuws recently enforced three SEPs relating to 4G on behalf of Philips against several defendants, including ASUS and Wiko. “Geert thinks both strategically and creatively; he is an excellent
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Netherlands Jordi Kox EP&C BV Hajo Kraak VO Patents & Trademarks
Daan Settels Patentwerk BV
See p678
Catherine A Shultz NLO
Achim Krebs HGF Ltd
Bart W Swinkels NLO
Bas WH Langenhuijsen Patentwerk BV
Rutger Valkonet AOMB Intellectual Property
Bernard Ledeboer VO Patents & Trademarks
See p679
Jacques van Breda Los & Stigter Co
Martin Luten Arnold & Siedsma
See p680
Hein van den Heuvel Patentwerk BV
Arthur Meekel NLO Otto Oudshoorn VO Patents & Trademarks
See p682
David Owen HOYNG ROKH MONEGIER Pete Pollard Fireball Patents
See p683
See p685
communicator and a pleasure to work with.” The life sciences is another happy hunting ground for the firm, with the pre-eminent Willem Hoyng and technical all-rounder Theo Blomme bringing home a positive outcome for AstraZeneca in infringement and invalidity proceedings against Sandoz. “Extremely experienced”, Hoyng “understands the court system like the back of his hand and knows everybody worth knowing in the Netherlands”. “First-class advocate” Blomme “is extremely bright, grasps complex technical issues quickly and is very knowledgeable on local laws around pharmaceuticals. Both Theo and Willem are extremely pleasant and are always available”. Meanwhile, biotech superstar Peter van Schijndel and the dextrous, dualqualified Simon Dack have been defending global veterinary health company Ceva Santé Animale in proceedings against Bayer, in which they have thus
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See p687
Ferry van Looijengoed De Vries & Metman
See p688
Bram van Oeffelt Patentwerk BV
René Raggers AOMB Intellectual Property Frits Schut VO Patents & Trademarks
Marcel van Kooij Arnold & Siedsma
Petri van Someren Arnold & Siedsma
See p689
Erik Visscher De Vries & Metman
See p690
Leythem Wall HGF Ltd Tom H Wittop Koning Biopatents IP Consultancy
far succeeded in having Bayer’s infringement claims dismissed. The “exact and detailed” Frank Eijsvogels is “very successful at winning”, particularly when litigation looms in heavily regulated industries: “He is great to collaborate with, listens to suggestions and has great legal and business knowledge.” Zooming in on the firm’s prosecution service brings Wilbert Derks into focus: “He is always available to answer questions, provide honest opinions and guide clients through the patent jungle. His technical knowledge is extensive and he gives practical, objective advice that considers individual business models and purposes.” In the electrical and mechanical engineering sectors, David Owen and Michiel de Baat have been working
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Netherlands Individuals: transactions Bas Berghuis van Woortman Simmons & Simmons LLP Jeroen Boelens NautaDutilh Jaap Bremer BarentsKrans Thomas de Weerd Houthoff Ricardo Dijkstra Vondst Advocaten NV Frits Gerritzen Allen & Overy LLP Judith Krens Taylor Wessing Gertjan Kuipers De Brauw Blackstone Westbroek Oscar Lamme Simmons & Simmons LLP Wim Maas Taylor Wessing Bert Oosting Hogan Lovells Fleur Tuinzing-Westerhuis Houthoff Marleen HJ van den Horst BarentsKrans
on briefs for Intel and Hologic respectively. A US patent attorney and a solicitor of England and Wales, Owen has a cosmopolitan outlook that is hard to come by; while de Baat assists companies in many meaningful ways, from drafting to litigation support. Organic chemist Jeroen den Hartog excels at building, defending and leveraging assets with business goals in mind, providing clear, strategic guidance informed by a deep knowledge of jurisprudence: “He takes a pragmatic, business-centric approach to every matter.” See p998 for firm profile
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NautaDutilh
Recent headline-grabbing instructions prove that the IP team at NautaDutilh is as dynamic as the life sciences and telecommunications concerns whose expectations it consistently meets and exceeds. For instance, it is currently acting for French mobile telephone manufacturer Wiko and parent company Tinno Mobile in the largest set of patent cases to be heard in the Netherlands in this sector. Taking the lead here is Anne Marie Verschuur, who “belongs in the top tier of Dutch litigators. She has a great strategic grip on the cases she runs and has a great eye for detail”. She is assisted by IAM Patent 1000 newcomer Jeroen Boelens, who has an intuitive affinity for the tech and has also been producing great work for medical technology company Heraeus at the District Court of Rotterdam.
NLO
A stalwart of the Dutch patent prosecution scene, NLO is “an excellent firm with a team that is always up for a challenge”. Headquartered in Amsterdam, with a further three offices in the Netherlands and two additional outposts in Belgium, it is a trusted ally for ambitious medium-sized local companies and multinationals looking to enter the Dutch market or expand into surrounding territories. It has all disciplines on lock, with Mari Korsten, Bart Swinkels, Arthur Meekel and David Bot holding things down in the life sciences. Having previously worked in-house at Novartis, Korsten “is superexperienced in the biotech field and has great skills in contentious matters”. Drawing on over 25 years at the patent coalface, Swinkels is a strategically creative, commercially aware attorney with a rare aptitude for genetics. Organic chemistry and biochemistry are the specialist subjects of Meekel, a familiar face before the EPO who attends 15 to 20 oppositions and appeals a year. A key partner for start-ups, Bot always puts clients’ ultimate business goals front and centre. Mechanical and electrical engineers Paul Clarkson, Hans Hutter and Maarten Ketelaars also bring something unique to the table. Having served as an examiner at the EPO, Clarkson has a wealth of knowledge on patent office procedures, which gives him an edge on his competitors. Hutter has been assisting Nokia with an infringement action regarding ADSL technology; while Ketelaars’s mechanical, electronic and physics background makes him favourite of innovative players in the medical devices and alternative energy arenas. The in-house insight that fellow physicist Hans Bottema gained at industry-leading companies translates into resolutely business-minded counsel. Companies with overseas
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Netherlands Theo Blomme HOYNG ROKH MONEGIER
Individuals: litigation Bas Berghuis van Woortman Simmons & Simmons LLP
Jaap Bremer BarentsKrans
Klaas AJ Bisschop Hogan Lovells
Ricardo Dijkstra Vondst Advocaten NV
Simon Dack HOYNG ROKH MONEGIER
Jelle Drok Freshfields Bruckhaus Deringer LLP
Daan de Lange Brinkhof
See p668
Richard Ebbink Brinkhof
Frank Eijsvogels HOYNG ROKH MONEGIER
See p669
Armand Killan Bird & Bird LLP
Willem A Hoyng HOYNG ROKH MONEGIER
Judith Krens Taylor Wessing
Rutger Kleemans Freshfields Bruckhaus Deringer LLP
András Kupecz Kupecz Intellectual Property
Gertjan Kuipers De Brauw Blackstone Westbroek
Oscar Lamme Simmons & Simmons LLP
Bert Oosting Hogan Lovells
Wim Maas Taylor Wessing
Bart van den Broek HOYNG ROKH MONEGIER
Wouter E Pors Bird & Bird LLP
Mark van Gardingen Brinkhof
See p686
Koen Bijvank Brinkhof
Paul Reeskamp DLA Piper
See p665
Otto Swens Vondst Advocaten NV
interests flock to Catherine Shultz. Her diverse experience – she has spent time as an oil and gas field engineer and at a US law firm – and European training give her a 360-degree perspective. See p1028 for firm profile
Patentwerk BV
Impregnable patent protection and bespoke strategies that further the ambitions of domestic and international clients are the order of the day at nimble boutique Patentwerk. Double ISO certified, the firm is stacked with talented Dutch, Belgian and European patent attorneys hailing from varied technical backgrounds. Founding partner Hein van den Heuvel sets the tone from the top and has
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mastered the intricacies of niches such as agricultural mechanisation and the food industry. Mechanical engineer Bas Langenhuijsen is “a personable attorney with a great technical, analytical and strategic mindset. He understands a company’s business needs, drafts excellently – and his attention to detail is the icing on the cake”. He has lately been assisting I4F Licensing NV with the development of an extensive patent family relating to floor panels. The team is rounded off by Daan Settels, a biomedical specialist who knows his stuff when it comes to medical technology; and Bram van Oeffelt, who generates value for patrons through smart strategic advice and shrewd portfolio management.
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Netherlands Geert Theuws HOYNG ROKH MONEGIER
Frits Gerritzen Allen & Overy LLP
Alexander Tsoutsanis DLA Piper
Martin Hemmer AKD NV
Marleen HJ van den Horst BarentsKrans
Ruben Laddé Freshfields Bruckhaus Deringer LLP
Ruud van der Velden Hogan Lovells
JC Sebastian Pinckaers Van Doorne
Arvid van Oorschot Vondst Advocaten NV
Michiel Rijsdijk Arnold & Siedsma
Marc van Wijngaarden Bird & Bird LLP
Moïra Truijens Hoogenraad & Haak, Advertising + IP Advocaten
Anne Marie Verschuur NautaDutilh
Fleur Tuinzing-Westerhuis Houthoff
Peter Claassen AKD NV
Thijs van Aerde Houthoff
Tjibbe Douma Bird & Bird LLP
Peter van Schijndel HOYNG ROKH MONEGIER
Charlotte Garnitsch Taylor Wessing
Rik Zagers Hogan Lovells
Simmons & Simmons LLP
Simmons & Simmons is “an excellent firm for multinational litigation – its ability to coordinate work across several jurisdictions is most impressive”. Indeed, with 21 offices located throughout Europe, Asia and the Middle East, it has the bandwidth to tackle even the most sprawling suits, to great effect. Its success locally is due in no small part to Bas Berghuis van Woortman, who has spearheaded the Dutch team for over a decade. Highly sought after by corporations such as Gilead, HP and Samsung for his deep well of patent knowledge and trial seasoning, and he “never gets fazed by pressure, no matter how tough the situation – he has seen and done it all before”. Former De Brauw lawyer Oscar Lamme marries robust contentious capabilities with refined technical understanding; he knows exactly what businesses need and how best to deliver it.
Taylor Wessing
“One of the leading litigation firms in Europe”, Taylor Wessing consistently outworks, outwits and generally outlawyers the opposition whenever
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See p684
trouble brews for clients. Its disciplines of choice in the Netherlands are electronics, telecommunications and the life sciences; in the latter space, Judith Krens has been busy representing Pfizer in four proceedings against Hoffmann La Roche in one of the largest biosimilar cases to be heard in recent years. Krens draws on her advanced chemical training and insight from a stint at a US multinational to deliver persuasive, technically sound pleadings. Fellow department co-head Wim Maas has also had a redletter year, going out to bat for the likes of listed Belgian technology company Barco in numerous infringement proceedings and local construction concern Heijmans Wegen. Together with him on the that matter is IAM Patent 1000 debutante Charlotte Garnitsch, who keeps a cool head in even the most complex cross-border patent suits. “Both Wim and Charlotte are very knowledgeable, super-driven and excellent communicators.”
VO Patents & Trademarks
“Quality patent assistance and litigation support” is the name of the game at VO Patents & Trademarks,
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Netherlands one of the country’s top prosecution shops. With offices in the Netherlands, Belgium and Germany, it has a wide regional footprint; and no technology is off limits to its highly qualified, technically adept practitioners. Anchoring the life sciences division is the multi-talented Otto Oudshoorn, whose broad bailiwick also encompasses chemicals and food technology. He has a knack both for obtaining SPCs and for patent restoration. Fellow chemist Hajo Kraak speaks the language of inventors, thanks to his background in industry, and works seamlessly with in-house teams at the likes of Janssen Pharmaceutica to craft strategies and streamline internal processes. Biology ace Frits Schut is a trusted guide of biotechnology companies and an experienced advocate before the EPO on matters of plant protection. Bernard Ledeboer shines on engineering, high-tech and electronics briefs; the mechanical engineer “has amazing analytical ability, gets to grips with matters down to the last detail” and is great at distilling complex problems into easily digestible solutions. Leo Jessen is the man to call for no-stone-unturned freedom-to-operate analyses and futureproofed protection strategies. Finally, as the former head of patents at two large technology companies, Cees Jansen is intimately familiar with the pressure facing innovators and how best to ease it for them. See p1082w for firm profile
Vondst Advocaten NV
A relative newcomer to the Dutch patent scene, Vondst Advocaten has quickly become a repository of trust for major generic pharmaceutical companies in particular. The contemporary boutique has been making waves on the legal landscape for its commercially attuned counsel and redoubtable representation in litigation. Practice co-founder Otto Swens is a “strong patent litigator” who offers “high-quality, cost-conscious support”. His blend of regulatory and patent know-how is appreciated by the firm’s life sciences patrons. Further contentious clout comes from Ricardo Dijkstra and Arvid van Oorschot. “Personable, bright and hands-on”, Dijkstra specialises in medical devices and is celebrated for his
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flawless coordination of cross-border disputes; while Van Oorschot is pragmatic and results-driven in his approach to pan-European litigation.
Other recommended experts
Transactional aficionado Peter Claassen of AKD operates across the IP spectrum and has the art of commercialisation down to a T. Colleague Martin Hemmer is “a highly talented lawyer with impressive knowledge of foreign legislation and excellent oral skills”. Garnering spirited praise from patrons is HOFFMANN EITLE’s Frodo Nunes Ferro: “He is the ideal sparring partner, challenging everyone’s thoughts and adding value on both a technical and strategic side. Frodo is excellent and the attorney you want by your side.” DeltaPatents BV co-founder Jelle Hoekstra has a cracking electronics-focused practice and knows everything there is to know about process and procedure at the EPO. He also devotes time to training future attorneys for the European Qualifying Examination. Kupecz Intellectual Property’s namesake András Kupecz combines a background in molecular biology with dual qualification as a lawyer and European patent attorney; he is kept busy on multi-jurisdictional litigations and is trusted counsel to many major pharmaceutical companies. At Van Doorne, UPC visionary Sebastian Pinckaers is in his element advising on licensing strategy or immersed in the thrill of cross-border litigation. He has recently been defending the interests of Enermax and Coolergient, the leading manufacturer of cooling systems for computers. The designer of a dynamic, flexible, cost-effective and personal service at Fireball Patents, Pete Pollard is an easy recommendation for patent prosecution. He procures valuable rights with great efficiency, giving his clients the benefit of strong and quick protection. Sources appreciate his “friendly and open-minded approach”. Moïra Truijens of Hoogenraad & Haak devises effective strategies with a deft touch: “She is very efficient and, as a deputy judge at the Court of Appeal in Den Bosch, she knows exactly how to present a case before the court.” Jacques van Breda is an electrical engineer who draws on a deep prosecution playbook to secure watertight protection across the Benelux.
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Aalbers, Arnt Dutch and European Patent Attorney – De Vries & Metman a.aalbers@dvme.nl | www.dvme.nl
Arnt Aalbers studied mechanical engineering at the Delft University of Technology and graduated in the field of process equipment. In December 1993 he started work at the patent department of AkzoNobel, where he became a Dutch and a European patent attorney in 1997. Mr Aalbers joined De Vries & Metman in 1999 and became a partner in January 2001. In addition to extensive litigation in the Netherlands and Germany, Mr Aalbers’s work includes patent applications (drafting, filing, foreign filing, prosecution), oppositions (oral proceedings and appeal), legal opinions on patentability, validity or infringement, clearance studies, due diligence, assistance during licensing, acquisition or divestment, and educating trainees. His practice cover technical fields that include industrial non-wovens and geosynthetics, solar cells, fuel cells, aramid products (fibres, pulp), composite materials for aircraft, loop reactors, process/energy engineering, hydraulics, heavy machines (eg, cocoa presses, ball mills, flow forming, dies for aluminium extruders), electronic products (eg, OLED, shielded connectors, optical switches), offshore equipment, dispensers, packaging, kegs, explosive cleaning, consumer products and medical devices. Over the years, Mr Aalbers has served as a tutor on a course run by Professor Kayton in Los Angeles and Washington DC, a member of the European Qualifying Examination Committee III (D paper), a board member of the Dutch group of the International Association for the Protection of Intellectual Property, treasurer of the 75th anniversary committee of the Dutch Institute of Patent Attorneys, an elected member of the epi council and a tutor at the Centre for Post-academic Legal Education at Radboud University. Mr Aalbers is also currently a member of the board of the Netherlands Institute of Patent Attorneys.
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De Vries & Metman Overschiestraat 180 Amsterdam 1062 Netherlands T +31 20 51 10 930 See firm profile p968 Professional associations • AIPPI • Dutch Institute of Patent Attorneys
www.IAM-media.com
Bijvank, Koen Partner – Brinkhof koen.bijvank@brinkhof.com | www.brinkhof.com
Koen Bijvank is a lawyer and Dutch and European patent attorney. He specialises in international patent litigation and oppositions, and regularly appears both in the courts and before the European Patent Office. His practice involves patents mainly in the areas of chemistry, pharmaceuticals and life sciences. His high-profile clients include The Broad Institute, Cargill and Eli Lilly. Mr Bijvank is recommended in the IAM Patent 1000 ranking of the world’s leading patent professionals, in the Netherlands and European Patent Office categories. Managing Intellectual Property also recognises him as an IP Star. Mr Bijvank is the past president of the Dutch Group of the International Association for the Protection of Intellectual Property (AIPPI). He is also the chair of the AIPPI Standing Committee on Patents, and president and co-founder of EPLIT, an association of European patent litigators. In addition, he is a member of the editorial board of BIE, a leading Dutch journal on intellectual property, and a tutor at the Centre for International Intellectual Property Studies in Strasbourg, where he teaches candidates for the qualifying examination for European patent attorneys. Mr Bijvank has led cases for numerous prestigious clients and is a well-known litigator on the national and international scenes and is, as such, recommended in the leading legal directories.
www.IAM-media.com
Brinkhof Grote Bickersstraat 74-78 Amsterdam 1013 KS Netherlands T +31 20 30 53 257 See firm profile p944 Professional associations • AIPPI • EPLIT
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Box, Marco Partner – VO Patents & Trademarks m.box@vo.eu | www.vo.eu
Marco Box has been a patent attorney at VO Patents & Trademarks since 2003. He began his career as an instrument designer at Optel in 1997, before becoming an engineer at Frencken Mechatronics in 2000. With a background in physics and instrument design and engineering, Mr Box has a broad understanding of all aspects of mechanics, electronics and information technology. Mr Box is experienced in the fields of optics, software, general mechanics and fine-mechanical constructions. In addition, he has specialised in physical and electrical systems and computer systems. He has been involved in a number of infringement cases, including in digital sound/image processing and telecommunications, as well as oppositions. He conducts IP due diligence, as well as litigation proceedings. Mr Box graduated in technological design from the Stan Ackermans Institute in 1997, having obtained his MSc in applied physics from the Eindhoven University of Technology in 1994. Previous testimonials for Mr Box include the following: • “Marco Box draws on his engineering background to quickly get to grips with his clients’ technologies and always puts himself in their position, thinking strategically and globally about IP value creation” (IAM Patent 1000, 2019). • “Marco Box’s encyclopaedic knowledge of mechanics and IT ‘earned him a well-deserved promotion to partner last year and prestige as a go-to guy in these fields’. Box is currently educating inventors on the potential for patenting software to rapidly increase the number of filings in this sector” (IAM Patent 1000, 2018).
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VO Patents & Trademarks Winthontlaan 6/G (4th floor) Utrecht 3526 KV Netherlands T +31 30 785 63 71 See firm profile p1082 Professional associations • Flanders Innovation and Entrepreneurship • Netherlands Institute of Patent Attorneys
www.IAM-media.com
Brouwer, Rogier Partner – Arnold & Siedsma rbrouwer@arnold-siedsma.com | www.arnold-siedsma.com
Rogier Brouwer is a European patent attorney and partner at Arnold & Siedsma. He is a civil engineer and graduated in applied sciences from the Vrije Universiteit Brussel. The service he offers to customers is based on extensive experience acquired in industrial and academic surroundings. Until recently, Mr Brouwer lectured in material science at the Vrije Universiteit Brussel. Over a period of 20 years, he combined his teaching role with various R&D-related management positions at chemicals group DSM, where he also completed his studies as a patent attorney. Before becoming a partner at Arnold & Siedsma, Mr Brouwer worked as an independent patent attorney for patent offices in Belgium and the Netherlands. Mr Brouwer knows the ins and outs of the industrial sector, is able to consider customer needs and can approach issues from a variety of angles. As industrial attorney, he has considerable experience defending patents in opposition and appeal proceedings at the European Patent Office, and is very well versed in the strategic issues surrounding intellectual property. As an independent attorney, he is able to realise tangible results for his clients by listening, reacting quickly and effectively, and using his extensive technical and conceptual knowledge to propose solutions.
www.IAM-media.com
Arnold & Siedsma Emmasingel 23 Eindhoven AZ 5611 Netherlands T +31 40 2329 050 See firm profile p924
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de Lange, Daan Partner – Brinkhof daan.delange@brinkhof.com | www.brinkhof.com
Daan de Lange specialises in international patent litigation with a focus on life sciences and tech and telecom litigation. His prestigious clients include Sandoz, Amgen and smartphone manufacturers Xiaomi and OPPO. He is a true litigator and at his best in technically complex proceedings. Mr de Lange has been involved in several landmark Supreme Court patent cases and is praised by his clients for his litigation skills and in-depth understanding of complex technology. Clients praise him as a “brilliant and thorough lawyer who has earned his place and who is able to win practically impossible lawsuits”. Mr de Lange is editor of the Dutch IP journal BIE and regularly writes on international patent litigation. He teaches at the academy for the professional education of patent attorneys and the EPO judges training centre. He is a regular speaker at IP conferences and an active member of the European Patent Lawyers Association and the International Association for the Protection of Intellectual Property. Mr de Lange is recognised as a leading individual in international patent litigation in the leading legal directories.
Brinkhof Grote Bickersstraat 74-78 Amsterdam 1013 KS Netherlands T +31 20 30 53 247 See firm profile p944 Professional associations • AIPPI • EPLAW
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www.IAM-media.com
Ebbink, Richard Partner – Brinkhof richard.ebbink@brinkhof.com | www.brinkhof.com
Richard Ebbink concentrates on European patent litigation representing international companies before the Courts of The Hague. He is internationally respected for his experience in coordinating parallel national proceedings and EPO oppositions. His language skills (fluency in English, French, German and Italian) and his strong strategical thinking particularly recommend him in an international context. Mr Ebbink’s clients include household names such as Unilever, Boston Scientific and Dow Chemical. Mr Ebbink is past president of EPLAW, the Association of European Patent Lawyers. More recently his practice has concentrated on standard-essential patent (SEP) litigation and the determination of FRAND licences. Mr Ebbink is a regular speaker at conferences on international patent litigation. As EPLAW’s past president he is pre-eminently placed to comment on the most recent European patent litigation developments. He has been active in the EPO prospective UPC judges training programme. Mr Ebbink is ranked as a Band 1 lawyer in the leading legal directories – a recognition he undoubtedly deserves as one of the foremost patent lawyers in the Netherlands.
Brinkhof Grote Bickersstraat 74-78 Amsterdam 1013 KS Netherlands T +31 20 20 53 220 See firm profile p944 Professional associations • AIPPI • EPLAW
www.IAM-media.com
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Feenstra, Louw Dutch and European Patent Attorney – De Vries & Metman l.feenstra@dvme.nl | www.dvme.nl
Louw Feenstra studied physics at the University of Leiden, obtained a PhD from the University of Twente and worked as a post-doc researcher at the Free University of Amsterdam and the University of Heidelberg. During this phase of his career he performed experimental research in very diverse fields of physics. His graduate work concerned lowtemperature superconductivity and magnetic field sensing (SQUIDS), his PhD work concerned high-power electrical engineering and gas discharge dynamics for operation of excimer lasers – the present-day workhorses of lithography machines. His post-doc work focused on optics and atomic physics (ie, quantum optics). In 2005 Mr Feenstra changed careers and joined De Vries & Metman to exploit his technical expertise and broad interests in the field of patent law. As a patent attorney he mainly deals with the drafting and prosecuting of patent applications in the fields of physics, mechanical and electrical engineering, including optics, medical devices, consumer products, measurement and control technology, and connectors. His client portfolio includes mainly universities, start-ups and SMEs. Mr Feenstra also takes part in patent litigation for SMEs and multinationals alike, in both domestic and international disputes. His clients praise his technical insight and thorough approach. Mr Feenstra is chair of the Dutch Association of Private Practice Patent Attorneys.
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IAM Patent 1000
De Vries & Metman Overschiestraat 180 Amsterdam 1062 Netherlands T +31 20 511 0932 See firm profile p968 Professional associations • AIPPI • Dutch Institute of Patent Attorneys
www.IAM-media.com
Grootscholten, Joost Partner – Arnold & Siedsma jgrootscholten@arnold-siedsma.com | www.arnold-siedsma.com
Joost Grootscholten is a European patent attorney and member of the executive board at Arnold & Siedsma. Since he started as a patent attorney in 1993, Joost has gained extensive experience in various technical fields. He has drafted, prosecuted and litigated thousands of patent applications in many fields, among which nanotechnology, MEMS technology, semiconductor technology, RF-ID, smart cards, digital media, mechanical configurations, simulated fireplaces, telecommunications, navigation systems, telecommunications, bicycle components and umbrellas. He specialises in patenting in the field of electrical engineering and in particular software-related inventions. He has been involved in large, complex legal and advisory matters relating to CD, DVD, BluRay, MP3, GSM (including phone tapping) and many other technologies, often based on standards and technical specifications for compatibility, where often FAIR licences are involved. In those cases, the specifications serve to ensure public access to the techniques, while the manufacturers actually divide the market – a problem where cartel law also comes into play. The business interest of the client is always a priority for Mr Grootscholten. Litigation is a means and not an end in itself. He will always draw on all his expertise and creativity to look for win-win solutions to disputes, with the interests of his client foremost in mind. He searches for creative means to defuse threatening escalations between parties, but – naturally – without allowing any concessions and will tenaciously defend the interests of the client.
www.IAM-media.com
Arnold & Siedsma Sophiastraat 42 Breda 4811 EM Netherlands T +31 76 521 49 36 See firm profile p924
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Hesselink, Lilian Dutch and European Patent Attorney – De Vries & Metman l.hesselink@dvme.nl | www.dvme.nl
Lilian Hesselink heads the chemistry and life sciences group at De Vries & Metman. She has a degree in molecular sciences from the University of Wageningen and a law degree from the University of Amsterdam. Her LLM thesis was on supplementary protection certificates. Ms Hesselink started her career as an in-house patent attorney and after 14 year at AkzoNobel she joined De Vries & Metman in 2007. Ms Hesselink operates in the field of chemistry in the broadest sense, working on matters ranging from process technology to pharmaceuticals. She represents her clients, which range from universities and start-ups to large Dutch companies and multinationals, before the Dutch Patent Office and European Patent Office, in writing and in oral proceedings, in examination, opposition and appeal. She has extensive experience in providing litigation support in high-profile cases before the Dutch courts. Her background in industry has given her ample experience in due diligence operations for acquisitions and divestment, in portfolio management and in the provision of strategic advice to her clients in wording that matches their business needs. Ms Hesselink is known for her can-do mentality and the clarity of her communication. Ms Hesselink is treasurer of the board for the Dutch group of the International Association for the Protection of Intellectual Property and has been active in the examination committee for the qualifying exam for European patent attorneys.
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IAM Patent 1000
De Vries & Metman Overschiestraat 180 Amsterdam 1062 Netherlands T +31 20 51 10 930 See firm profile p968 Professional associations • AIPPI • Dutch Institute of Patent Attorneys
www.IAM-media.com
Hooiveld, Arjen Partner – Arnold & Siedsma ahooiveld@arnold-siedsma.com | www.arnold-siedsma.com
Arjen Hooiveld is a Dutch and European patent attorney and has been a partner at Arnold & Siedsma since 1997. He is based at the firm’s Amsterdam office. Mr Hooiveld specialises in patents, including grant procedures, infringement advice and conducting opposition and appeal proceedings at the Dutch and European Patent Offices. His practice also consists of litigating in the field of patents, together with attorneys at law, both in the Netherlands (at first instance and on appeal) and abroad. Mr Hooiveld advises foreign multinationals on European patent disputes, such as Nikon v ASML, Trico/Tenneco v Valeo and Kawasaki v ThyssenKrupp. As head of the Japan desk at Arnold & Siedsma, he advises and assists Japanese companies with their European patent applications. Mr Hooiveld also assists Dutch and Belgian companies with granting procedures and patent litigation, in particular in the fields of automotive, biomedical devices, food, agriculture, packaging, optics and concrete products. Mr Hooiveld is a member of epi, the International Association for the Protection of Intellectual Property, the Union of European Practitioners in Intellectual Property, the Licensing Executives Society and the International Federation of Intellectual Property Attorneys. Further, Mr Hooiveld is a member of the Dutch Disciplinary Committee deciding on Dutch disciplinary matters, as well as a member of the Disciplinary Board deciding on appeals in cases relating to the European qualifying examination for professional representatives before the EPO and in cases concerning breaches of their Rules of Professional Conduct.
www.IAM-media.com
Arnold & Siedsma Amstelplein 1 Amsterdam HA 1096 Netherlands T +31 20 644 40 00 See firm profile p924
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Hylarides, Paul Partner – Arnold & Siedsma phylarides@arnold-siedsma.com | www.arnold-siedsma.com
Paul Hylarides is a European patent attorney and partner at Arnold & Siedsma. Working in the firm’s physics and electronics department, Mr Hylarides is involved mainly in the protection of inventions. He has specific expertise in the fields of information and communication technology, software, medical applications, optics, seismic data processing, nanotechnology (including semiconductors) and mechanics. In addition, Mr Hylarides has a great deal of experience in conducting opposition procedures at the European Patent Office, and in the Dutch courts in patent nullity and infringement proceedings. He is extremely talented in conducting oral proceedings – his vast powers of persuasion have ensured his success in numerous national and international litigation cases. Mr Hylarides believes that not only should advice be excellent from a technical and legal point of view, but economic considerations should also not be forgotten. Clearly, advice ought to be commercially useful to the client too. Mr Hylarides began his career as a patent attorney at Arnold & Siedsma in 1996, where he worked as a European patent attorney until 2007. Between 2007 and 2010 he was a partner at another international patent office, before returning to Arnold & Siedsma as a partner. That year, Mr Hylarides opened a new branch in Eindhoven – traditionally the centre of Dutch manufacturing and now also known as a European high-tech region – in order to serve the growing numbers of clients in the south of the Netherlands in the best possible way. He was a member of the executive committee at Arnold & Siedsma from 2012 until 2019, the last five years as chair.
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Arnold & Siedsma Emmasingel 23 Eindhoven AZ 5611 Netherlands T +31 40 232 9050 F +31 40 232 9059 See firm profile p924
www.IAM-media.com
Jacobs, Bart Partner – Arnold & Siedsma bjacobs@arnold-siedsma.com | www.arnold-siedsma.com
Bart Jacobs is a Dutch and European patent attorney and a partner at Arnold & Siedsma. Before joining the firm, Mr Jacob first gained substantial research experience in the laboratories of major technical companies. He worked, for example, for Philips Semiconductors/NXP Semiconductors on the subject of radio frequency front-end modules for mobile phones. His industrial experience has given Mr Jacob an outstanding ability to translate the theory of technical inventions into something tangible, and to act as an expert sounding-board for questions in this area. Furthermore, Mr Jacob understands the particular requirements associated with portfolio management for larger high-tech companies. At Arnold & Siedsma, Mr Jacob is responsible for prosecuting patents in the fields of electrical engineering, physics and mechanical engineering. He specialises in the patenting of inventions in radio frequency electronics, semiconductor physics, semiconductor manufacturing processes, imaging technologies and telecommunications. He also has substantial experience in the drafting of mechanical engineering applications. For Mr Jacob, the challenge for the patent attorney lies in the combination of technology, law and language. Logic plays a major role here, but the key is to be able to grasp the essence of the invention in order to protect the idea in the best possible way. Mr Jacob enjoys a good argument and discussion, and likes to be questioned about the work he delivers.
www.IAM-media.com
Arnold & Siedsma Emmasingel 23 5611AZ Eindhoven Netherlands T +31 40 232 9050 See firm profile p924
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Jansen, Cees Of Counsel – VO Patents & Trademarks c.jansen@vo.eu | www.vo.eu
Cees Jansen was the chair of VO from July 2007 to September 2019. Since then, he has been associated with the firm as an of counsel. He graduated in physics from the Delft University of Technology and was head of the patent department at two large technology-driven companies before he joined VO in 1993. His private practice focuses on similar technology-driven companies. Mr Jansen has extensive expertise in high-tech systems such as radar, sonar, computer and telecommunication systems, as well as mechanical and physical systems. In addition, he specialises in developing patent strategies to effectively protect systems, products, replacement products, parts of systems and semi products. He gained vast experience in opposition proceedings and litigation, in particular infringement and nullification suits, both nationally and abroad, including the United States. Previous testimonials for Mr Jansen include the following: • “The highest of high-tech companies make a beeline to Cees Jansen; he knows exactly what they are after, having served as head of patents in-house at two companies – unstintingly dedicated to quality, he always delivers” (IAM Patent 1000, 2019). • “Chair of the partnership Cees Jansen calls on his in-house experience when developing patent strategies for major companies. A technical all-rounder, he can be formidable when disputes heat up” (IAM Patent 1000, 2018).
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VO Patents & Trademarks Winthontlaan 6/G 4th floor Utrecht 3526 KV Netherlands T +31 30 785 63 71 See firm profile p1082 Professional associations • AIPPI • Commission for Patent Attorneys in Private Practice • FICPI
www.IAM-media.com
Jessen, Leo Partner – VO Patents & Trademarks l.jessen@vo.eu | www.vo.eu
Leo Jessen started his career as a patent attorney in 1992 with VO Patents & Trademarks. He studied industrial design engineering and later law, after passing his patent attorney exams. Mr Jessen’s clients operate mainly in the field of mechanical engineering. He specialises in consumer products, medical appliances and ergonomics. Mr Jessen helps clients to define their IP strategy and, where appropriate, file, prosecute and defend their IP rights worldwide. This also includes challenging third-party rights, licensing and conducting freedom-to-operate analysis. Mr Jessen has wide experience in patent cases before the Court in The Hague and the EPO. Mr Jessen is actively involved in the training of new patent attorneys in Dutch, European and international patent practice. Further, he is chair of the IP enforcement and litigation group of the International Federation of Intellectual Property Attorneys. Previous testimonials for Mr Jessen include the following: • “‘Gifted in both prosecution and litigation’, Leo Jessen is ‘extremely good at building a case’” (IAM Patent 1000, 2019). • “Peers praise Leo Jessen as ‘a really excellent, strong attorney who’s been around for many years’. Jessen prosecutes applications for a wide segment of devotees, who depend on his aptitude in filing, oppositions and appeals to keep their stress levels low throughout the patent lifecycle” (IAM Patent 1000, 2018).
www.IAM-media.com
VO Patents & Trademarks Carnegieplein 5 The Hague 2517 KJ Netherlands T +31 70 416 6711 See firm profile p1082 Professional associations • AIPLA • AIPPI • FICPI
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Kraak, Hajo Partner – VO Patents & Trademarks h.kraak@vo.eu | www.vo.eu
Hajo Kraak has been a patent attorney at VO since 2007. He had previously worked as in-house patent counsel in the chemical industry (including fibres, electronic materials, chemicals and coatings) and in research-based pharmaceuticals. Mr Kraak continues to work for chemical as well as pharmaceutical companies. He graduated in organic and polymer chemistry from Leiden University in 1987 and has been active in patents ever since. As a Dutch and European patent attorney Mr Kraak has dealt with a broad range of chemical, pharmaceutical and nutritional sciences and technologies. He gained considerable experience in obtaining patents and conducting opposition proceedings before the European Patent Office, including oral proceedings and in international patent litigation. He has also been active in conducting patent due diligence investigations and in developing patent strategies for various businesses, including lifecycle management in pharmaceuticals. Mr Kraak is a member of the Dutch delegation for the European Patent Institute Council and a tutor for the Dutch qualifying examination. Testimonials for Mr Kraak include the following: • “Otto Oudshoorn, Hajo Kraak and Frits Schut are mainstays of the life sciences and chemistry practice. Kraak is [one] of the firm’s experienced former in-house patent counsels and can be relied on for a commercially tuned-up service on chemical and pharmaceutical matters” (IAM Patent 1000, 2019). • “A former in-house counsel at AkzoNobel, Kraak is a legal and scientific polymath who is a heavyweight in the Dutch IP scene” (IAM Patent 1000, 2018).
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VO Patents & Trademarks WTC Arnhem 11th floor Nieuwe Stationsstraat 10 Arnhem 6811 KS Netherlands T +31 26 368 75 25 See firm profile p1082 Professional associations • epi • Netherlands Institute of Patent Attorneys
www.IAM-media.com
Ledeboer, Bernard Partner – VO Patents & Trademarks b.ledeboer@vo.eu | www.vo.eu
Bernard Ledeboer began his career as a patent attorney with VO in 1997, having previously worked at a large law firm in Amsterdam. He holds an MSc in mechanical engineering and an LLM in IP litigation. Mr Ledeboer’s general expertise lies in the field of mechanical and civil engineering. He has specialised in machine construction, flexible manufacturing systems, conveyor systems, offshore techniques, surgical instruments and consumer products. His clients are of all sizes, with a focus on medium-sized industrial supply companies. Mr Ledeboer has a pragmatic approach to IP protection and enjoys direct communication with his clients. His practice is divided between patent prosecution and patent litigation. He has broad experience in patent litigation cases before the court in The Hague, and opposition and appeal cases before the European Patent Office. He applies his litigation experience to build strong patent portfolios for his clients. Mr Ledeboer is head of VO’s engineering and high-tech and electronics departments. He is also a member of the board of directors. Mr Ledeboer has received the following recent testimonials: • “Bernard Ledeboer ‘has tremendous experience in dealing with the courts and has a knack for presenting cases clearly and effectively’” (IAM Patent 1000, 2019). • “Bernard Ledeboer ‘particularly impresses’, and he is frequently singled out by peers as an example of what a prosecutor should be. The engineering aficionado also boasts qualifications and experience in litigation. He stands out for his recent efforts in conjunction with colleagues in the Belgian office, excelling in opposition proceedings on behalf of plastics giants, and for his instrumental technical contribution to infringement proceedings between medical devices supremo B Braun Melsungen and its arch-rival Beckton Dickinson. ‘He has a pragmatic approach to IP protection, and is a wordsmith who enjoys direct communication with his clients’” (IAM Patent 1000, 2018).
www.IAM-media.com
VO Patents & Trademarks Carnegieplein 5 The Hague 2517 KJ Netherlands T +31 70 416 67 84 See firm profile p1082 Professional associations • AIPPI • CEIPI • epi
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Luten, Martin Partner – Arnold & Siedsma mluten@arnod-siedsma.com | www.arnold-siedsma.com
Martin Luten is a European patent attorney and partner in Arnold & Siedsma’s Hague office. Within Arnold & Siedsma, Mr Luten handles patent applications and represents clients in opposition and appeal proceedings before the Dutch and European patent offices. Mr Luten is experienced in litigating patents before the national courts, in particular in larger patent portfolios in international patent disputes, such as Nikon v ASML. Mr Luten uses this experience to advise multinational corporations on these international patent disputes. As a member of the Arnold & Siedsma Japan desk, Mr Luten has ample experience with advising and servicing Japanese companies with their European patent applications and litigation strategies. Mr Luten is an active member of the Dutch Patent Institute, epi and the International Association for the Protection of Intellectual Property. He frequently chairs and lectures at international gatherings on software patent protection before the EPO. Within Arnold & Siedsma, Mr Luten is also involved in training and guiding young engineers wishing to become European patent attorneys. Previous testimonials for Mr Luten include the following, published in the IAM Patent 1000: Martin Luten is another go-to when infringement headaches loom: “He has a unique ability to understand the needs of his clients and masterminds effective enforcement strategies that produce optimal results.” “His eye for detail is impressive and he understands new technologies very quickly.”
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Arnold & Siedsma Bezuidenhoutseweg 57 The Hague AC 2594 Netherlands T +31 70 3654 833 See firm profile p924
www.IAM-media.com
Molling, Marco Partner – VO Patents & Trademarks m.molling@vo.eu | www.vo.eu
Marco Molling worked for small laboratory equipment company Prince Technologies (part of Helena BioSciences Europe) for five years, where he was involved in product development, international marketing and project management. Thanks to this experience, he can empathise with small to medium-sized enterprises and their specific challenges, although he also serves the interests of scientific institutes and multinationals. Mr Molling joined VO Patents & Trademarks in 2000. Mr Molling’s IP expertise lies in the general field of chemical patents, with an emphasis on food technology, process technology and industrial biotechnology. Further, he is particularly interested in the fields where chemistry and other disciplines meet (eg, medical technology and laboratory technology). His work mainly focuses on drafting patent applications and undertaking prosecution in various jurisdictions, as well as European oppositions and (occasionally) litigation. Mr Molling received his MSc in chemical technology from Eindhoven University of Technology in 1994. Previous testimonials for Mr Molling include the following: • “Working closely with SMEs, Marco Molling brings vast chemical patent expertise to the table, as well as carving out a niche for himself in food technology and health food products” (IAM Patent 1000, 2019). • “With his extensive experience in research and development, chemical aficionado Marco Molling is cognisant of the importance of securing impervious protection for intellectual assets. A schooled prosecutor, he excels in oppositions before the Belgian, Dutch and European patent offices” (IAM Patent 1000, 2018).
www.IAM-media.com
VO Patents & Trademarks Carnegieplein 5 The Hague 2517 KJ Netherlands T +31 70 416 67 06 See firm profile p1082 Professional associations • Netherlands Institute of Patent Attorneys
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Oudshoorn, Otto Partner – VO Patents & Trademarks o.oudshoorn@vo.eu | www.vo.eu
Otto Oudshoorn joined VO in 1998. He studied chemical engineering and obtained his PhD in the field of catalysis. Mr Oudshoorn’s expertise is in the field of chemical patents, with an emphasis on process and food technology. Mr Oudshoorn’s practice further includes the handling of supplementary protection certificates (SPCs) and restoration requests. He has extensive experience in oral opposition proceedings and litigation before the Dutch Patent Court. His portfolio contains the full spectrum of innovative clients, ranging from start-ups to multinationals and universities to research institutions. Mr Oudshoorn is a member of the board of directors of VO, as well as head of the chemistry and life sciences department. Mr Oudshoorn’s recent testimonials include the following: • “Otto Oudshoorn, Hajo Kraak and Frits Schut are mainstays of the life sciences and chemistry practice. Heading this up, Oudshoorn is an authority on food technology” (IAM Patent 1000, 2019). • “Leading the chemistry and life sciences division, Otto Oudshoorn spends much of his time immersed in the world of pharmaceutical litigation. He adroitly juggles thorny questions relating to supplementary protection certificates for an assortment of industry leaders” (IAM Patent 1000, 2018).
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VO Patents & Trademarks Weteringschans 28/3 Amsterdam 1017 SG Netherlands T +31 20 530 79 90 See firm profile p1082 Professional associations • Netherlands Institute of Patent Attorneys
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Pollard, Pete Founder – Fireball Patents firstcontact@ip.design | www.fireballpatents.com
Originally from the United Kingdom, Pete Pollard moved to the Netherlands after qualifying as an engineer. Later becoming a Dutch and European patent attorney, he spent five years in-house and 10 years in private practice. In 2017 he founded Fireball Patents in Eindhoven, an innovators hub, to better serve start-ups with a lean and dynamic structure that matches that of his clients. Fireball Patents is virtual, using automation and external specialists to limit overhead, while close collaboration with clients allows more predictable billing. Mr Pollard is also part of IP.DESIGN, a German-Swiss IP boutique offering one-stop solutions to innovative SMEs. Since 2018, his European and PCT know-how has enriched the firm’s patent and design expertise. The passion and creativity of his clients is reflected in Mr Pollard’s drive to find pragmatic routes to protection, such as pursuing European patents in ‘no translation’ jurisdictions, filing national applications, concentrating on US filings, treating innovations as trade secrets, or pursuing utility models and designs. He specialises in physics, software and mechanics, with experience in data and image processing, medical devices, materials and optics. He has many years’ experience in Dutch and European prosecution, oral hearings, oppositions and appeals. Mr Pollard has taught European patent law since 2009, specialising in PCT and European Bar (EQE) preparation. He has given lectures at Maastricht University (Netherlands) and EQELIBRIUM (Poland). He occasionally speaks on patent matters at EPO events and the INTA Annual Meeting. He was an original tutor for the Dutch IP administrator training and passed the first exam in 2011 to become a Dutch certified formalities officer. He frequently runs courses through the German/Dutch FORUM Institute in English for IP administrators. Mr Pollard is an author and contributor for the PCT.App and EPC. App legal reference books. IP.appify’s ingenious online platform also allows users to navigate their up-to-date legal texts and to fully customise comments. Mr Pollard is also an EU design and trademark attorney. In addition to his native English, he is fluent in Dutch and has a working knowledge of German.
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Fireball Patents De Verver 54 Veldhoven 5506BG Eindhoven Netherlands T +31 618 171 087 Professional associations • AIPPI • epi • Order of Dutch Patent Attorneys
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Rijsdijk, Michiel Partner – Arnold & Siedsma mrijsdijk@arnold-siedsma.com | www.arnold-siedsma.com
Michiel Rijsdijk is an attorney at law and partner at Arnold & Siedsma specialising in intellectual property. Mr Rijsdijk has an excellent reputation in the field of trademark and patent matters. He has conducted major national and international patent proceedings and has been involved as a litigator in well-known trademark law cases. Mr Rijsdijk’s practice mainly consists of litigation in the field of IP law, which includes coordinating international disputes and advising clients on IP strategies. In addition to his litigation practice, Mr Rijsdijk is engaged in drafting contracts to protect and exploit IP rights. He is an active member of the European Patent Litigators Association and the European Patent Lawyers Association. He is a member of the International Association for the Protection of Intellectual Property, the Licensing Executive Society and the Benelux Association for Trademark and Design Law. He is an active member of the regulatory team of the Association of European Trademark Owners and the INTA Bulletin Committee of the International Trademark Association. He also lectures and publishes on a regular basis. Mr Rijsdijk began his career in the IP and the litigation department of Arnold & Siedsma. He then worked for five years with a boutique law firm as an IP litigator, before setting up his own boutique IP law firm with three colleagues in 2007. In 2010 this firm merged with Arnold & Siedsma, to which he returned as a partner.
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Arnold & Siedsma Amstelplein 1 Amsterdam 1096 HA Netherlands T +31 20 333 14 33 See firm profile p924 Professional associations • AIPPI • EPLAW • LES
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Schut, Frits Partner – VO Patents & Trademarks f.schut@vo.eu | www.vo.eu
Frits Schut’s involvement in patenting started in 1995 when he was codirector of start-up Microscreen, where he exploited the patents of his co-inventions. Mr Schut studied biology at the Universities of Utrecht and Amsterdam and obtained his MSc in biology from the University of Groningen (1988), majoring in microbiology. He obtained his PhD in microbiology from the University of Groningen in 1994. While performing part of his PhD work at the University of Alaska Fairbanks in 1988, Mr Schut came into contact with molecular genetics and DNA diagnostics. He was able to develop these techniques for medical and veterinary application with the medical faculty in Groningen; these developments were commercially implemented in a start-up diagnostic company, of which Mr Schut was a co-director. Mr Schut joined VO Patents & Trademarks as a patent attorney in 2001. He has extensive expertise and is particularly involved in therapeutic and diagnostic (medical) biotechnology, microbiology and plant protection. Through his background and portfolio, Mr Schut has experience protecting the essential technologies of life sciences companies. He also has broad experience in patent cases before the European Patent Office and the Court of the Hague, as well as with plant protection before the Dutch and Community Plant Variety Office. Mr Schut received the following recent testimonial: “Otto Oudshoorn, Hajo Kraak and Frits Schut are mainstays of the life sciences and chemistry practice. As co-director of a start-up, Schut has first-hand commercial experience; another ‘brilliant life sciences sage who is extremely talented and technically astute’” (IAM Patent 1000, 2019).
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VO Patents & Trademarks Weteringschans 28/3 Amsterdam 1017 SG Netherlands T +31 20 530 79 91 See firm profile p1082 Professional associations • AIPLA • FICPI • UNION
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van Gardingen, Mark Partner – Brinkhof mark.vangardingen@brinkhof.com | www.brinkhof.com
Mark van Gardingen specialises in coordinating and conducting national and international litigation about patents and trade secrets. His expertise includes litigating pharmaceutical/chemical inventions, biotech and mechanical engineering. He is a prominent trial lawyer and appears regularly before the specialised patent courts of The Hague, the Supreme Court, and the Dutch and European Patent Offices. His high-profile clients include Heineken, Dow, Synthon, Novozymes and Accord. Mr van Gardingen is a regular speaker at international conferences and an active member of the European Patent Lawyers Association. He is also a member of AIPPI’s International Standing Committee on the UPC, and he is actively involved in the EPO-organised training programme for future UPC judges. According to sources referenced in practice guides, Mr van Gardingen has “a reputation as an ardent and highly successful litigator” and is praised as a “leading litigator in one of the nation’s best boutique firms”. His clients describe him as someone with “eagerness, hunger and solid litigation skills”. Mr van Gardingen is ranked as a Band and Tier 1 lawyer in the leading directories – an accurate reflection of his pre-eminence in this area.
Brinkhof Grote Bickersstraat 74-78 Amsterdam 1013 KS Netherlands T +31 20 305 3212 See firm profile p944 Professional associations • AIPPI • EPLAW
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van Kooij, Marcel Patent Attorney – Arnold & Siedsma avankooij@arnold-siedsma.com | www.arnold-siedsma.com
Marcel van Kooij is a European patent attorney and partner at Arnold & Siedsma. Mr van Kooij is skilled in the many aspects of providing patent services, such as writing and prosecuting patent applications, defending patent applications before the European Patent Office (opposition and appeal), seeking the nullification of patents of possible competitors before the European Patent Office, the Patent Centre and in court, advising clients on the development or strengthening of their IP position, negotiating licence or transfer agreements, producing second opinions and advising on additional IP protection, such as supplementary protection certificates and plant breeders’ rights. Mr van Kooij advises and supports many large national and international clients on their IP and innovation policy, but is also involved with start-ups, particularly in the field of biotechnology. In addition to his patent law expertise, Mr van Kooij has become a specialised, proactive adviser whose main concerns are tailored service, cost control and creativity combined with a long-term vision. Mr van Kooij approaches a case with a pragmatic attitude that gives priority to clarity and transparency for the client. The starting point in a case has to be that one (the client’s expertise) plus one (Mr van Kooij’s expertise) equals three. In addition to providing patent services, Mr van Kooij derives great satisfaction from sharing his knowledge. He teaches at the University of Strasbourg (Centre for International Intellectual Property Studies) and is an epi tutor. He is also actively involved in increasing IP awareness.
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Arnold & Siedsma Bezuidenhoutseweg 57 The Hague AC 2594 Netherlands T +31 70 3654 833 See firm profile p924
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van Looijengoed, Ferry Dutch and European Patent Attorney – De Vries & Metman ferry.vanlooijengoed@dvme.nl | www.dvme.nl
Ferry van Looijengoed studied applied physics at the University of Groningen, specialising in semiconductor and superconductor physics. In addition to applied physics, he also has a degree in materials science, as well as a law degree from the University of Leiden. Mr van Looijengoed joined De Vries & Metman in 2002. Before that, he worked at the Dutch Patent Office as an examiner and for the patent department of KPN focusing on telecommunication patent application drafting and prosecution. Mr van Looijengoed’s field of expertise includes electronics and information and communication technology, including telecommunications, computer-implemented inventions, computer hardware, user interfaces and business methods. In particular, he has been involved in most patent litigation cases in these fields in the Netherlands over the past decade. These litigation cases often relate to standard-essential patents requiring detailed analysis of often highly complex telecommunications standards. Mr van Looijengoed is the chair of the Disciplinary Council for the Dutch Institute of Patent Attorneys, the body that oversees the professional behaviour of Dutch patent attorneys. In addition, he is a member of the Disciplinary Committee of the European Patent Institute, the body that oversees the professional behaviour of European patent attorneys. Mr van Looijengoed is the only patent attorney in the list of IAM Global Leaders for the Netherlands.
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De Vries & Metman Overschiestraat 180 Amsterdam 1062 Netherlands T +31 20 51 10 930 See firm profile p968 Professional associations • AIPPI • Dutch Institute of Patent Attorneys
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van Someren, Petri Partner – Arnold & Siedsma pvansomeren@arnold-siedsma.com | www.arnold-siedsma.com
Petri van Someren is a European patent attorney and partner at Arnold & Siedsma. Ms van Someren enjoys the challenge of working closely with clients not only to deal with the technical aspects of an invention, but also to consider strategically the further development and expansion of their patent portfolio. She has been involved in a number of complex international infringement cases, in international disputes and in opposition and appeal cases before the European Patent Office (EPO), up to the Enlarged Board of Appeal (G2/04). Ms van Someren studied biology at Radboud University Nijmegen, specialising in molecular biology, biochemistry and internal medicine. Since joining Arnold & Siedsma in 1989, she has acquired substantial experience in grant procedures, oppositions and appeal procedures at the EPO in the fields of biotechnology, pharmacy, food technology, environmental technology, medical sciences, diagnostics and contraceptives, and has become a specialist in patenting inventions in the field of plant breeding. She works closely with patent attorneys in countries all over the world to prosecute and defend her clients’ patent portfolios. Ms van Someren has been counselling a number of clients from the very start, setting up, building and managing their patent portfolio. She maintains close contact with R&D departments and management to help define a company’s patent strategy. Ms van Someren is also involved in the training of patent attorneys in the Netherlands as a tutor and examiner. She is also an experienced tutor for the Centre for International Intellectual Property Studies of the University of Strasbourg.
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Arnold & Siedsma Oranjesingel 47 Nijmegen NN 6511 Netherlands T +31 24 397 85 38 See firm profile p924
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Visscher, Erik European Patent Attorney – De Vries & Metman e.visscher@dvme.nl | www.dvme.nl
Erik Visscher obtained his PhD in physics from the Delft University of Technology and studied law at the University of Leiden (cum laude). His PhD research included quantum transport in single-electron tunnelling devices. His former research group is now part of QuTech, a research organisation in Delft that focuses on the development of quantum technology. Before joining De Vries & Metman, Mr Visscher worked as a patent examiner at the European Patent Office in the field of sold-state imagers and displays, photovoltaics, LEDs and general semiconductor technologies. As a patent lawyer at a large international-operating law firm, he was involved in patent litigation on coronary stents and pharmaceutical compounds. Mr Visscher’s technical field of expertise now includes physics, electronics and computer-implemented inventions. He has developed a particular interest in image processing, machine learning, deep learning, video coding, cryptography, privacy-preserving protocols, big-data and clustering algorithms, quantum computing, quantum simulations, quantum communication and semiconductor technology. His client portfolio includes universities, research organisations, start-ups and spin-offs, SMEs, large international corporations and law firms. He is regularly involved in international patent litigation disputes that involve standard-essential patents on multimedia and videocoding standards. Mr Visscher teaches patent law at the Delft University of Technology, is a member of the legal commission of the Dutch Institute of Patent Attorneys and regularly gives presentations on patent protection for algorithms and artificial intelligence-based inventions.
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De Vries & Metman Overschiestraat 180 Amsterdam 1062 Netherlands T +31 20 511 0930 See firm profile p968 Professional associations • AIPPI • Dutch Bar Association • EPLIT
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Norway
Although the oil and gas industry still plays a prominent role both in the Norwegian economy and in the workload of the country’s IP practitioners, its key players are steadily shifting towards alternative energy sources, resulting in an uptick in instructions in that area. The global movement to go green has had a significant impact in Norway, with offshore wind power and hydropower gaining more traction than ever; but interestingly, fish farming and aquaculture were two of the trending industries of 2021. Pharmaceuticals still generate a significant proportion of the cases heard before the courts as innovators and generics continue to battle it out; and overall, there is no shortage of diverse and high-profile work for the country’s lawyers and patent attorneys. The Norwegian legal system, with its specialised court and expert lay judges, makes this a favourable jurisdiction for rights holders to enforce their rights and shore up their market positions.
Acapo AS
“Time and time again, Acapo proves it is top of the line. It houses a team of experts who are brilliant at what they do: they look at clients’ companies as a whole, rather than just their assets, and guide them through prosecution processes while avoiding expensive and time-consuming conflicts.” The side enjoys a sterling reputation for its deft handling of biotechnology, aquaculture and electronics instructions, due in no small part to the hard graft of Bodil Sollie Hjelsvold and Stein Roar Gjøen. Sollie Hjelsvold acquits herself with distinction whether drafting applications or conducting freedom-tooperate analyses; while Roar Gjøen shines brightly in his capacity as an expert lay judge in infringement proceedings and when providing valuable litigation support. “He is always several steps ahead of the competition and outmanoeuvres any incoming threats in a smart and non-aggressive way.”
Advokatfirmaet BAHR AS
Mr Gunnar Sørlie “An outstanding firm with a formidable litigation practice”, BAHR tackles some of the biggest, most commercially consequential cases that come before the Norwegian courts. It recently assisted energy technology company Baker Hughes and GE Oil & Gas in proceedings that raised important questions regarding the scope of protection and validity of patents in the area of subsea technologies. The matter was spearheaded by Are Stenvik and Gunnar Sørlie. Department head Stenvik earns praise as “one of the strongest in Norway when it comes to patents. He is a tough and highly effective litigator with an immense knowledge base, as well as a leading academic author”. Tenacious advocate Sørlie is in his element tackling hotly contested pharmaceutical skirmishes, but is equally proficient across the industry spectrum. He and Stenvik recently went to the Supreme Court for Aker BioMarine, a biotechnology innovator and Antarctic krill-harvesting
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Firms: prosecution Highly recommended Håmsø Patentbyrå AS Onsagers AS
See p1034
Protector IP AS Recommended Acapo AS Bryn Aarflot AS Zacco
See p946 See p1098
company. Also worthy of special mention is Eirik Basmo Ellingsen, a rising star on the Norwegian patent landscape. In the words of one client: “Eirik won our utmost appreciation and trust due to his thoroughness, knowledgeable assessments and creative advice. He is well prepared, sharp and communicative, making for a seamless workflow.”
Advokatfirmaet GjessingReimers AS
“An absolutely fantastic firm and one of the best in Norway, GjessingReimers is full of excellent litigators.” The boutique has been on an upwards trajectory since setting up shop in 2019 and there are no signs of it slowing down; it dispatches intricate mandates for major industry players, puts in polished performances in court and has a keen eye for lucrative licensing opportunities. Co-founder Ida Gjessing leaves peers and clients alike nothing short of impressed: “Ida is tremendously respected and the way she handles her cases is remarkable – she is calm, thorough and really gets her message across. Without a doubt, Ida
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Norway is one of the best.” Sigrid Toft Fløystad is a force to be reckoned with in the life sciences. She brings deep regulatory knowledge to the mix, gained through a stint as general counsel for Norway’s largest dairy product cooperative TINE. The “super-experienced” Amund Brede Svendsen is “a highly skilled lawyer who is a pleasure to have on the opposite side”; oil and gas and biotechnology are his metiers.
Advokatfirmaet Haavind AS
Haavind is the first port of call for leaders in the life sciences, IT and marine industries, particularly when complex disputes are looming. For example, it recently prevailed for fish farming player STIM in proceedings concerning the validity of patents relating to its blockbuster product. Lead counsel on the matter, Vebjørn Iversen litigates with poise and is unfazed by the pressure of acting for heavyweights such as pharmaceutical company Orifarm – he and Håkon Bleken are duking it out in a cross-border dispute against Neurim Pharmaceuticals, which will also be heard in Denmark and Sweden. Supreme Court-admitted lawyer Bleken can be counted on to produce compelling arguments that carry the day.
Advokatfirmaet Thommessen AS
Norway’s booming business sectors – pharmaceuticals, aquaculture and energy – are finely tended to by cracking commercial outfit Thommessen; its sophisticated project management tools, refined use of technology and ongoing processing and operation improvements give it an edge on large-scale instructions. Recently, Camilla Vislie and Magnus Hauge Greaker went out to bat for Teva and Yeda in proceedings against one of the world’s largest generic companies, Mylan. “An incredibly experienced lawyer, Camilla takes an active interest in her client’s businesses”; while Hauge Greaker “has a great ability to get technical arguments across to the court. The pair are efficient and responsive, quickly understand the technology at hand and coordinate with teams in different jurisdictions very well”. Effusive feedback is also garnered by Eirik Raanes who “argues the most important and complex legal issues without getting bogged down or side-tracked. He is quick to respond and a pleasure to work with, and is not afraid to challenge others in the pursuit of getting an even better outcome”. He and Greaker successfully represented Enhanced Drilling, ensuring that its two patents were found valid in their entirety.
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Firms: litigation and transactions Advokatfirmaet BAHR AS Advokatfirmaet GjessingReimers AS Advokatfirmaet Thommessen AS Kvale Advokatfirma Advokatfirmaet Haavind AS Schjødt Wikborg Rein Arntzen de Besche Advokatfirma AS
Luminaries Gunnar Sørlie Advokatfirmaet BAHR AS
Arntzen de Besche Advokatfirma AS
Arntzen de Besche’s technology and innovation group has been in fine fettle of late: the commercially savvy guidance it provides to innovators in the oil and gas, life sciences and IT industries proves vital in helping companies to grow their market share. Its transactional capabilities are especially noteworthy, as illustrated by Andreas Nordby’s recent role assisting Shearwater Geoservices with the establishment of a new streamer technology joint venture. Counsellor to the stars, Nordby is the deputy chair of the dispute resolution committee at the Norwegian Directorate of Health; his deep playbook ensures that he has all the moves to triumph in make-or-break situations. Fellow department co-captain Tommy Dahlen is “a valuable adviser, due to his understanding of technology and ability to simplify complex processes to drive momentum and secure a successful outcome. He excels at devising strategies that ultimately lead to creative solutions that meet clients’ commercial needs. Tommy has a positive attitude and a customer-oriented approach, and delivers results swiftly and efficiently”.
Bryn Aarflot AS
Storied boutique Bryn Aarflot has all the technical expertise you could wish for: its practitioners often serve as expert judges and witnesses, and the one-stop shop assembles multi-disciplinary teams of lawyers and patent attorneys who work hand in glove to tackle
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Norway Kjell Arne Hoff Håmsø Patentbyrå AS
Individuals: prosecution Highly recommended
Edmund Andre Høydahl Onsagers AS
Kim Livgard Onsagers AS
Dorte Lajer Onsagers AS
Krister Mangersnes Håmsø Patentbyrå AS Kristine Rekdal Bryn Aarflot AS
See p700
Kari Simonsen Onsagers AS
Rikard Mikalsen Zacco
See p702
Per Reiner Onsagers AS
Recommended
Bodil Sollie Hjelsvold Acapo AS
Anne-Gro Bildoe Imset Protector IP AS
Anne Sønstevold Zacco
Bjarne G Coward Protector IP AS
Dag Thrane Protector IP AS
Stein Roar Gjøen Acapo AS
Steven Van Dijk Håmsø Patentbyrå AS
Jon D Heggstad Bryn Aarflot AS
See p697
Richard Weaver Håmsø Patentbyrå AS
Cécile Hermansen Bryn Aarflot AS
See p698
Endre Woldsted Onsagers AS
high-stakes briefs across every industry. First among equals is Kristine Rekdal, who leads the patent division. She has a flair for fostering innovation within the start-up community and a magnificent success rate before the EPO. Those faced with conundrums in the chemistry arena would be hard pressed to find better counsel than Marianne Weiby Wulff: “She is incredibly bright and diligent, and her advice is both clear and thorough.” Joining the pair in the IAM Patent 1000 this year are Cécile Hermansen and Jon Heggstad, who both attract glowing reports. “Cecile’s deep biotechnology insight and brilliant communication have been crucial to our operations,” enthuses one client. “She has a tactical approach, and assesses
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See p699
Krister Mindrebøe Protector IP AS
Arild Tofting Protector IP AS Marianne Weiby Wulff Bryn Aarflot AS
Hans Langan Zacco
See p701
any weak points in a patent and any discrepancies to ensure a successful outcome in each case.” Mechanical engineer Heggstad “makes life very easy for busy companies – he takes care of any changes and deadlines that may arise with utmost professionalism, and stakeholders feel comfortable leaving matters in his hands”. See p946 for firm profile
Håmsø Patentbyrå AS
“A go-to firm in Europe”, Håmsø is a tremendous resource for Fortune 50 and 500 companies with large-scale research and development programmes: “Its highly skilled and thoughtful attorneys are
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Norway responsive, technically brilliant and provide excellent counsel in a cost-effective manner, all while navigating the intricacies of regional legislation.” The outfit operates effortlessly across the technical spectrum, but is especially famed for its capabilities in the oil and gas sector – a particular forte for area squad captain Krister Mangersnes. From strategic advice to prosecution before the EPO and assistance in contentious proceedings, “Krister is a stellar practitioner and one of the best advisers in Norway by a long shot. He is clear, concise, legally and technically brilliant, and can see the big commercial picture too. Krister and his team are super-impressive and continue to stay ahead of the competition.” Ex-Phillips man Steven Van Dijk knows exactly what in-house counsel and C-suite execs are looking for, which means that “his feedback and guidance is excellent. He has a fantastic attitude, is easy to talk to and always fights for his clients’ best interests”. IAM Patent 1000 newcomers Richard Weaver and Kjell Arne Hoff boast refined skillsets in software-based modelling and aquaculture respectively. “Responsive and well informed, Richard understands business needs perfectly and has excellent technical knowledge. He is an efficient and insightful strategic adviser, as well as an excellent drafter.” Of Arne Hoff, one patron reports: “He is thorough, service minded and utterly devoted to his craft. Kjell produces excellent results, even in time-sensitive matters, and is a great team player”.
Kvale Advokatfirma
When life sciences titans clash with key competitors, Kvale can frequently be found in their corner. For example, it recently brought home a victory for Mylan and Sython against Teva and Yeda Research and Development Company after a six-day hearing at the court of first instance. The architects behind the win were Anne Marie Sejersted and Ingvild Hanssen-Bauer, who form a formidable duo in dispute proceedings. “Quick and proactive, Anne Marie knows how to get the desired results and meaningfully supports clients through issues that are unique to Norway.” The highly sought-after HanssenBauer is “one of the most appreciated litigators in the country, with an incredible ability to grasp complex technical issues. As a result, she elegantly counters questions from expert witnesses in crossexaminations and brings new angles of attack to each case”. Further contentious firepower is provided by Marie Vaale-Hallberg, “whose strong market status comes from her in-depth expertise, knowledge and in-house background. She presents her arguments most impressively and her knack for strategies only strengthens clients’ positions”.
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Individuals: transactions Tommy Dahlen Arntzen de Besche Advokatfirma AS Tord Fondevik Schjødt Ida Gjessing Advokatfirmaet GjessingReimers AS Halvor Manshaus Schjødt Gunnar Meyer Wikborg Rein Andreas Nordby Arntzen de Besche Advokatfirma AS Anne Marie Sejersted Kvale Advokatfirma Are Stenvik Advokatfirmaet BAHR AS Marie Vaale-Hallberg Kvale Advokatfirma
Onsagers AS
“Top-tier IP firm” Onsagers is “highly recommended on every level – it has excellent attorneys with strong scientific backgrounds across a range of industries, who all have a genuine interest in understanding the businesses they work with and provide advice tailored to match”. The life sciences provide a happy hunting ground, in which Kari Simonsen, Kim Livgard, Dorte Lajer and Edmund Andre Høydahl have earned glittering reputations. “An encyclopaedia of EPO case law and one of the best patent attorneys in the country, Kari gives creative, straightforward advice. She knows the best arguments to put forward from a technical standpoint and is, beyond comparison, the finest choice for litigation support in the pharmaceutical sector.” Also hailed as one of Norway’s best, Livgard is “super-intelligent and a great listener. He has deep technical understanding and can explain complex matters to legal judges in a pedagogical way”. Chemical engineer Lajer positions herself as a true business partner, finding ways to bring added value to clients’ internal infrastructure, and has all the answers to tricky questions on European practices – all of which makes her a fan favourite among small
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Norway Individuals: litigation Ida Gjessing Advokatfirmaet GjessingReimers AS Ingvild Hanssen-Bauer Kvale Advokatfirma Halvor Manshaus Schjødt Gunnar Meyer Wikborg Rein Are Stenvik Advokatfirmaet BAHR AS Magnus Hauge Greaker Advokatfirmaet Thommessen AS Eirik W Raanes Advokatfirmaet Thommessen AS Anne Marie Sejersted Kvale Advokatfirma Amund Brede Svendsen Advokatfirmaet GjessingReimers AS
entrepreneurs and giant multinationals alike. A new face in the guide this year, Andre Høydahl brings a rare skillset to the table as a trained pharmacist. His wisdom and experience gained as senior engineer at the Norwegian Industrial Property Office (NIPO) stands him in good stead to handle any instruction that comes his way. Physics, energy generation and power electronics are strongholds for Per Reiner and Endre Woldsted. A former R&D engineer at ABB, Reiner is a familiar face before the EPO, with a pristine track record in opposition and appeal proceedings; while the “skilled and hands-on” Woldsted is in his element coordinating worldwide portfolios and devising shrewd strategies. See p1034 for firm profile
Protector IP AS
Sharp, succinct, commercially informed guidance that is easy on the pocketbook is the name of the game at Protector IP. The compact boutique has mastered the art of prosecution and has a technically diverse team of seasoned pros who go the extra mile as a matter of course. Robust leadership is provided in abundance by Arild Tofting, who previously served as an
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Camilla Vislie Advokatfirmaet Thommessen AS Kyrre Andersen Kluge Advokatfirma AS Håkon Bleken Advokatfirmaet Haavind AS Thomas Hagen Schjødt Sigurd Holter Torp Schjødt Vebjørn K Iversen Advokatfirmaet Haavind AS Andreas Nordby Arntzen de Besche Advokatfirma AS Knut Sverre Skurdal Andresen Schjødt Sigrid Toft Fløystad Advokatfirmaet GjessingReimers AS
examiner at NIPO and knows all the tips and tricks of getting patents through to grant. Inventors appreciate his patience and willingness to get to grips with the technology in order to create the most watertight application possible. For complex searches and freedom-to-operate analyses, Bjarne Coward is the one to call. The mechanical engineer knows how to crunch the numbers quickly and efficiently, producing comprehensive, but not overwhelming, reports on a company’s market position. Resident EPO guru Anne-Gro Bildoe Imset knows the patent system like the back of her hand, ensuring that the applications she drafts in the mechanical field pass through unimpeded. Joining them in the guide this year are Krister Mindrebøe and Dag Thrane, who bring vast experience in the offshore and sensor technology sectors to the table. “From cost-effective strategies to complex drafting and strategic filing, you can always trust Krister to do a fantastic job.” Thrane has “a tremendous passion for the work he does. He has a great understanding of the subject matter, writes claims that are to the point and makes clients’ lives that much easier”.
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Norway Schjødt
The dynamic, forward-thinking troop at commercial outfit Schjødt consistently shines in high-stakes litigation with significant commercial ramifications and has the transactional wherewithal to get lucrative deals across the line. As an example, Halvor Manshaus recently assisted Subsea Smart Solutions in taking on industry giant GE Oil & Gas in a series of disputes that have caught the attention of the oil and offshore industry. “Halvor is hands down the best lawyer I have ever worked with,” enthuses one patron. “His understanding of business strategy and complex technologies, as well as his legal acumen, distinguishes him from the crowd.” Joining him on this matter was Thomas Hagen, a rising star on the Norwegian patent litigation scene. “Thomas and Halvor’s precision, experience and preparedness make the difference. It is rare to encounter this level of winning experience, professionalism and commitment to success.” Fellow courtroom whizz Sigurd Holter Torp is a versatile advocate who is well suited to those embroiled in diverse IP, commercial and even criminal disputes. Pharmaceutical players are well taken care of by Knut Sverre Skurdal Andresen, who recently acted for Merck Sharp Dohme against Sandoz in sprawling preliminary injunction proceedings across 13 European countries. He is lauded for “his deep knowledge, dedication, technical understanding and willingness to do the utmost for clients”. On the non-contentious front, Tord Fondevik makes his debut in the guide this year as “one of the finest and most brilliant transactions specialists”.
Wikborg Rein
With a network of outposts across Oslo, Bergen, London and Singapore, and a representative branch in Shanghai, Wikborg Rein makes light work of complex, high-value global disputes – which is why
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multinationals in the pharmaceutical and offshore sectors frequently enlist it to fight their battles. The market is unanimous in its praise for Gunnar Meyer, who recently assisted Teva Pharmaceuticals in contentious proceedings: “He is one of the best litigators in Norway – extremely skilled, super-personable and just a joy to work with. A true gentleman.”
Zacco
Unrivalled in its geographical reach, full-service consultancy Zacco operates out of 30 bases in six countries and has a pan-European presence like no other firm on the Norwegian patent market. It consistently seeks to develop its offering and has lately been focusing on emerging trends such as artificial intelligence and digitalisation. Anne Sønstevold, Hans Langan and Rikard Mikalsen form an A-star line-up. As a former research scientist at GE Healthcare and the Norwegian Defence Research Establishment, Sønstevold prosecutes with finesse in the chemistry, life sciences and healthcare sectors. With over two decades in the game, Langan has carved a niche in mechanical engineering, where his strategic planning really shines through. IAM Patent 1000 newcomer Mikalsen “stands out for his ability to grasp new technical concepts and ability to identify crucial claims. He is a genuinely trustworthy professional, his responsiveness is stellar and he comes highly recommended as the go-to attorney in Europe”. See p1098 for firm profile
Other recommended experts
Over at Kluge Advokatfirma, Kyrre Andersen has a broad range of contentious experience and never lets patrons down; he sees matters from a bird’s-eye view to come up with holistic solutions to their problems.
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Heggstad, Jon D Senior Partner – Bryn Aarflot AS jh@baa.no | www.baa.no
Jon D Heggstad started out as an examiner at the Norwegian Intellectual Property Office (NIPO) in 1993 and worked as an IP coordinator at start-up Alvern ASA from 1996 to 1998. There he was responsible for quickly expanding the IP portfolio, including international patents and designs, for plastic products and displays used for marketing purposes. He joined Bryn Aarflot in 1998. Mr Heggstad provides advice on strategic patenting issues, patent drafting and prosecution, IP analyses and freedom-to-operate opinions, as well as patent oppositions, infringement analyses and proceedings. He is also experienced in strategic IP planning and patent portfolio management. In addition, he performs different searches – for instance, to identify prior art or third-party rights. He represents clients before the NIPO, the EPO and the Patent Cooperation Treaty authorities, and acts as primary agent for patent families including other national counterparts. Mr Heggstad has experience as a lay assessor with specialist knowledge in patent cases before the Norwegian courts, has represented clients in several cases in Norwegian courts and before the NIPO Board of Appeal. He is a member of the Norwegian mediation committee for employee inventions. Mr Heggstad’s practice involves mechanical engineering, typically representing clients within the subsea fluid production, including oil, gas and desalinated water; fishing and fish farming equipment; offshore decommissioning; marine equipment; energy production; aluminium production; and domestic appliances. Mr Heggstad holds a BEng (Hons) from Glasgow University and the Oslo College of Engineering, specialising in mechanical engineering. He has been a European patent attorney since 2008. Mr Heggstad is a member of the European Patent Institute, the International Federation of Intellectual Property Attorneys, the Association of Norwegian Patent Agents and the Norwegian Society of Graduate Technical and Scientific Professionals (known as Tekna).
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Bryn Aarflot AS Stortingsgata 8 Oslo 0161 Norway T +47 9262 8206 See firm profile p946 Professional associations • epi • FICPI • FONIP
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Hermansen, Cécile Senior Partner – Bryn Aarflot AS ch@baa.no | www.baa.no
Cécile Hermansen is a European patent attorney and senior partner at Bryn Aarflot. She graduated from the Norwegian Institute of Technology in 1983 with a MSc in chemistry (industrial/process chemistry). She started work as a scientific assistant at the Norwegian Radium Hospital, with a main focus on immunehistochemistry. In 1985 she started to gain industry experience when joining Alcatel Cable AS, later Nexans AS, in the department for cable technology and development in Oslo. Her responsibilities were within material technology, production assistance and research and development. From 2000 to 2003, she acted as a part-time country adviser for Nexans AS in China. Her IP career started when she joined Bryn Aarflot as a patent attorney in 2004. She became a European patent attorney in 2009. Ms Hermansen’s work includes general and strategic patents counselling, patents drafting and prosecution, clearance and IP analysis – including due diligence and freedom-to-operate opinions – as well as patent oppositions, administrative limitation and revocation proceedings, infringement analyses and proceedings, and providing advisory services in patent litigation, generally and during court proceedings. Ms Hermansen’s practice covers industrial chemistry, chemical engineering, petro-chemistry, pulp and paper technology, polymer science, agro-chemistry, and water and gas purification. Ms Hermansen is a member of the European Patent Institute, the International Federation of Intellectual Property Attorneys, the Association of Norwegian Patent Agents, the Norwegian Association for the Protection of Industrial Property and he Norwegian Society of Graduate Technical and Scientific Professionals.
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Bryn Aarflot AS Stortingsgata 8 Oslo 0161 Norway T +47 91 861 986 See firm profile p946 Professional associations • epi • FICPI • FONIP
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Langan, Hans Senior Partner – Zacco hans.langan@zacco.com | www.zacco.com
Hans Langan has been working in the patent profession since 1999. He provides advice on strategic patenting issues and deals with all matters related to patenting, such as prior art searches, patent drafting, prosecution, validity assessments, infringement analyses and oppositions. He has served as an expert judge in patent-related proceedings at the Oslo District Court and is a member of the Norwegian Board of Appeal for Industrial Property Rights. He also has extensive experience as an expert witness in court proceedings on patent validity and infringement. Mr Langan’s technical expertise lies specifically within the field of mechanical engineering, and he has substantial patentrelated experience from the oil and gas exploration and production industries. He graduated with a degree in aeronautical and astronautical engineering from the Ohio State University in 1985. He was subsequently granted the Norwegian sivilingeniør degree by the Norwegian Institute of Technology. Mr Langan started his career in 1986 as a project engineer in the development department at Kongsberg, performing aerodynamic analysis work on tactical missiles. Between 1988 and 1999, he held various positions in the Norwegian oil and gas exploration industry, focusing progressively on contracts management within large field development projects. His employers and clients in this period included Aker, Kværner, Saga Petroleum and Shell. He was employed by Bryns Patentkontor (now a part of Zacco) between 1999 and 2008 as a patent attorney and subsequently as head of the patent department.
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Zacco Haakon Vll’s gate 2 PO Box 2003 Vika Oslo 0125 Norway T +47 934 22 441 See firm profile p1098
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Rekdal, Kristine Senior Partner – Bryn Aarflot AS kr@baa.no | www.baa.no
Kristine Rekdal has extensive experience in general and strategic patents counselling, patent drafting and prosecution, clearance and IP analysis – including due diligence and freedom-to -operate opinions – as well as in patent oppositions, administrative limitation and revocation proceedings, infringement analyses and proceedings, and advising on patent litigation. Ms Rekdal also conducts patent searches and patent landscape analyses. She is also experienced in advising on design issues. She represents clients before the Norwegian Industrial Property Office, the EPO and the Patent Cooperation Treaty authorities. Ms Rekdal has acted as patent expert judge at the Oslo Appeal Court and Oslo District Court. Further, she has been a patent expert witness in court, and she works closely with our litigators in patent cases before the courts. She also represents clients in EPO oral proceedings in examination and in oppositions before the Opposition Division and Boards of Appeal. Ms Rekdal advises national and international clients within the oil and gas, IT and artificial intelligence, physics, electronics, marine technology and general mechanics industries. She has extensive experience in advising start-up businesses and research organisations. Ms Rekdal obtained her MSc in physics in 1994; she joined the Norwegian Industrial Property Office the following year as an examiner and later became head of electronics/constructions in the Patent Department. Ms Rekdal became a patent attorney in 1998 and a European patent attorney in 2008. She joined Bryn Aarflot in 1998 and has been a partner at the firm since 2005. Ms Rekdal is a member of the European Patent Institute (epi), the epi Council and epi European Patent Practice Committee, the International Federation of Intellectual Property Attorneys, the Association of Norwegian Patent Agents, the Norwegian Association for the Protection of Industrial Property and the Norwegian Society of Graduate Technical and Scientific Professionals.
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Bryn Aarflot AS Stortingsgata 8 Oslo 0161 Norway T +47 99 35 71 54 F +47 22 00 31 31 See firm profile p946 Professional associations • epi • FICPI • FONIP
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Sønstevold, Anne Senior Partner – Zacco anne.sonstevold@zacco.com | www.zacco.com
Anne Sønstevold has worked as a patent attorney since 1997, including three years in the patent department of GE Healthcare. She joined Zacco in 2001. Ms Sønstevold provides advice on strategic patenting issues and deals with all matters related to patenting, such as prior art searches, drafting and prosecuting patent applications, oppositions and appeals, infringement and validity opinions, and litigation support. A key area of expertise is in supplementary protection certificates for approved medicinal products, as well as plant breeders’ rights. Her practice focuses on the biotechnology, pharmaceuticals, chemistry, life sciences and healthcare sectors. Ms Sønstevold graduated with a MSc in biology (physiology) from the University of Oslo in 1983 and has been on the list of European patent attorneys since Norway became a member of the EPO in 2008. From 1983 to 1997, Ms Sønstevold worked as a research scientist: first as a research fellow at the Norwegian Radium Hospital from 1983 to 1984, working within the field of haematology and cell biology; then, from 1985 to 1986, as a research scientist at the Norwegian Defence Research Establishment, studying physiological processes with soldiers under severe physical and mental stress; lastly, from 1986 to 1997, as a research scientist and later as manager of Nycomed Imaging AS (later Amersham Health and GE Healthcare), working on in vivo and in vitro studies, particularly in the areas of immunology and toxicology. Ms Sønstevold is a member of the European Patent Institute, the International Federation of Intellectual Property Attorneys, the Association of Norwegian Patent Agents, the Norwegian Society of Chartered Engineers, the Norwegian Association for the Protection of Intellectual Property, the International Association for the Protection of Intellectual Property and the Association of Norwegian Physiologists.
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Zacco Askekroken 11 PO Box 488 Skøyen Oslo 0213 Norway T +47 928 27 791 F +47 22 91 05 00 See firm profile p1098 Professional associations • Association of Norwegian Patent Attorneys • epi • FICPI
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Wulff, Marianne Weiby European Patent Attorney – Bryn Aarflot AS mww@baa.no | www.baa.no
Marianne Weiby Wulff has worked as a patent attorney since 1998, including 16 years in the patent department of GE Healthcare and three years as patent counsel at BASF AS. She joined Bryn Aarflot in 2017. Ms Wulff provides advice on strategic patenting issues, patent drafting and prosecution, IP analyses and freedom-to-operate opinions, as well as patent oppositions, infringement analyses and proceedings. She is also experienced in strategic IP planning and patent portfolio management. In addition, she performs different searches, including identifying prior art or third-party rights. She represents clients before the Norwegian Industrial Property Office, the EPO and Patent Cooperation Treaty authorities, and acts as primary agent for patent families including other national counterparts. Ms Wulff’s practice involves life sciences broadly, chemistry, healthcare, biotechnology, pharmaceuticals and nutraceuticals. Ms Wulff obtained her MSc in chemistry from the Norwegian University of Science and Technology in 1995, specialising in organic chemistry. She became a European patent attorney in 2008. Her career started in BASF Norge in 1996 as environmental health and safety officer before she moved in 1998 to the pharmaceutical industry and GE Healthcare, where she was responsible for IP portfolios related to diagnostic agents, formulations and manufacturing, particularly for ultrasound, MRI and x-ray contrast agents. In 2014 she moved to Pronova BioPharma Norge AS (BASF AS), where she was responsible for IP portfolios related to fatty acids for use as pharmaceuticals, supplements or nutrients. From her years working in the industry, she has gained extensive knowledge of, and experience in, strategy building and linking intellectual property to business strategies. Ms Wulff is a member of the European Patent Institute, the International Federation of Intellectual Property Attorneys, the Association of Norwegian Patent Agents, the Norwegian Association for the Protection of Industrial Property and The Norwegian Society of Graduate Technical and Scientific Professionals.
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Bryn Aarflot AS Stortingsgata 8 Oslo 0161 Norway T +47 9323 0270 See firm profile p946 Professional associations • epi • FICPI • FONIP
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Poland
On 1 July 2020, the eagerly anticipated reorganisation of the Polish court system took effect, establishing new specialised IP courts and introducing new types of IP-related court actions. The long-awaited changes should enhance the predictability and consistency of civil judgments in IP matters, which have also been affected by legislative changes to the Civil Procedure Code. The new specialist divisions have been set up in five district courts – Warsaw, Poznan, Gdasnk, Lublin and Katowice – with two appellate courts in Warsaw and Poznań. While practitioners anticipate that the reforms should present abundant new opportunities, they are also readying themselves for the process of ironing out any initial kinks.
Allen & Overy LLP
Renowned worldwide for its proficient and reliable IP offering, global firm Allen & Overy maintains a sterling reputation in Poland as a “modern and dynamic team”. It collaborates smoothly with its counterparts around the world to deliver a first-rate service to companies across the industry spectrum. Lately, it has been advising Bayer on the protection, defence and enforcement of SPCs in a matter that could result in a new interpretation of the products that are protected by this type of IP right. Running point on this matter is Krystyna Szczepanowska-Kozłowska: “She is the queen of patents, with a strong academic background, and knows absolutely everything there is to know about the law.”
AOMB Intellectual Property
“One of Poland’s leading patent firms, with an exceptionally strong prosecution practice”, AOMB distinguishes itself through the breadth of its expertise and an impressive roster of clients. The local contingent of this Dutch-headquartered firm has been growing quickly, thanks in no small part to the efforts of leading lights Jakub Sielewiesiuk, Jan Dobrzański and Damian Krężel. “Jakub and Jan combine thorough technical and scientific knowledge with great procedural expertise”, and are a go-to for non-contentious instructions. Department lead Sielewiesiuk comes in for extra praise for his “valuable and cost-effective services” in all fields of technology. Krężel keeps patrons and their interests at the forefront of his mind when obtaining castiron protection for players in the mechanics and electronics industries.
Baker McKenzie
Famed for its commercial acuity and crisp results, international outfit Baker McKenzie has been on an upwards trajectory in Poland and shows no signs of slowing down. Marek Rosinski has lately been busy advising local start-up ATS WorldWide on its patent strategy and in R&D agreement negotiations with Oklahoma University; a “skilled expert with a
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strong client-oriented attitude”, he tackles some of the largest IT and R&D mandates going. IAM Patent 1000 newcomer Marcin Fijałkowski further bolsters the transactional practice and guides clients through tricky acquisitions pragmatically and efficiently; he has also been acting for Magellan Life Sciences before the EPO. The pair regularly link up with European patent attorney Katarzyna Tobiasz-Dumania, whose worldwide patenting strategies are always shrewd, meticulous and well organised. Geo-Poland is one client which has reaped the benefits of this approach in the form of PCT filings in 11 jurisdictions.
Bird & Bird LLP
Bird & Bird is an established reference for intellectual property, thanks to its exceptional global reach and multi-sector capabilities. The Polish squad is ideally placed to assist players in the country’s burgeoning technology market, while handling litigation in a responsive, insightful and attentive way. Blazing a trail is Piotr Dynowski, a telecoms and media ace who also has a keen understanding of regulatory issues. His strategic acumen and commercial nous are appreciated by companies embroiled in complex disputes or seeking to get lucrative deals across the line.
Bury & Bury European and Polish Patent and Trademark Attorneys
Boutique Bury & Bury combines refined technical expertise with legal know-how to support entrepreneurs and rights holders in many meaningful ways, from patent procurement to monetisation. Its tailored approach proves a major draw in the high-tech sector, in which the firm has carved a deep niche. Seasoned patent attorney Lech Bury has a unique understanding of electronics and a keen business sense, thanks to his extensive industry experience; he recently validated European patents for Atlas Copco Airpower. Meanwhile, Marek Bury has been drafting and prosecuting applications for the Warsaw University of Technology and Genicore. He matches encyclopaedic knowledge of national and
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Poland international patent procedures with an affinity for the most complex electronics and ICT technologies, to superb effect: “Proceedings run as he predicts and unfavourable decisions are successfully challenged – he is simply excellent.”
Firms: prosecution
CMS Cameron McKenna Nabarro Olswang LLP
JWP Patent & Trademark Attorneys
“We chose CMS for its comprehensive approach and expertise within tax, competition and IP law,” enthuses one satisfied client. The holistic, joined-up counsel dispensed by the Polish arm of this eminent multinational firm has attracted the attentions of a glittering clientele, featuring the likes of Chanel, Bayer and Microsoft. The team has also been acting for HP of late in multiple enforcement proceedings against a seller of ink cartridges in a heavy-duty matter relating to the protection of eight of its patents. Tomasz Koryzma and Aleksandra Kuźnicka-Cholewa took the lead on this brief. Department head Koryzma “works practically and efficiently, with a view to keeping costs low. He responds to questions promptly and produces results that put him at the very top of his profession”. IAM Patent 1000 debutante KuźnickaCholewa “is a sharp and knowledgeable lawyer who focuses her efforts on client relationships and tirelessly defends their interests”. See p956 for firm profile
Dentons
With 180-plus offices in 78 countries and more than 10,000 lawyers on its team sheet, international giant Dentons makes its debut in the Polish rankings of the IAM Patent 1000 this year. In Warsaw, the side provides a wall-to-wall service that is as impressive as the clients it serves; and with Aleksandra PolitańskaKunicka at the helm, that roster keeps growing. “She has excellent knowledge of her cases and always comes prepared. Aleksandra is committed and open minded, and her communication skills are also excellent.” Media, food and retail companies are in very safe hands with her.
DLA Piper
The influence of full-service juggernaut DLA Piper is felt worldwide and the local office is a vital cog in its well-oiled machine. It serves as a trusted guide for both domestic and international innovators seeking to protect and defend their crown-jewel assets across multiple jurisdictions. Its technical versatility knows no bounds, and its tenacious litigators painstakingly tease out the knots of even the most complex energy, pharmaceuticals and electronics disputes. Those
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Highly recommended AOMB Intellectual Property
PATPOL – European and Polish Patent and Trademark Attorneys
See p1040
POLSERVICE Patent and Trademark Attorneys Office
See p1044
WTS Patent Attorneys Witek, Sniezko & Partners
See p1096
Recommended Bury & Bury European and Polish Patent and Trademark Attorneys Fert Jakubiak Wróblewski Patent & Trademark Attorneys IP & Law Kancelaria Rzeczników Patentowych J Markieta, M Zielińska-Łazarowicz Sp p Kaminski & Partners Kancelaria EUPATENT.PL KONDRAT & Partners Kulikowska & Kulikowski spj LDS Łazewski Depo & Partners Sulima-Grabowska-Sierzputowska Patent & Trademark Attorneys
See p1068
seeking commercially attuned advice should call on Ewa Kurowska-Tober and Krystian Maciaszek.
Fert Jakubiak Wróblewski Patent & Trademark Attorneys
The percipient practitioners at Fert Jakubiak Wróblewski Patent & Trademark Attorneys “use top-of-the-line software, prepare applications at the highest level and are truly dedicated to their craft”. Recent highlights include processing applications for metrology company Apator Metrix; assisting on a technology transfer agreement relating to shop
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Poland Firms: litigation and transactions
Individuals: prosecution
LDS Łazewski Depo & Partners
Highly recommended
Sołtysiński Kawecki & Szlęzak
Grażyna Padée ZRPat
Allen & Overy LLP
Adam Pawłowski Kancelaria EUPATENT.PL
JWP Patent & Trademark Attorneys Traple Konarski Podrecki & Partners
Jakub Sielewiesiuk AOMB Intellectual Property
Wardyński & Partners
Andrzej Witek WTS Patent Attorneys - Witek, Sniezko & Partners
Baker McKenzie Bird & Bird LLP CMS Cameron McKenna Nabarro Olswang LLP
Rafał Witek WTS Patent Attorneys - Witek, Sniezko & Partners See p956
Dentons DLA Piper Hasik Rheims & Partners Kulikowska & Kulikowski spj Winski Law Firm
automation technology between Polish and Japanese entities; and clearing the local market of infringing goods on behalf of retailer 4Kraft. This latter brief was masterminded by Marcin Wróblewski and Bartosz Fert. Wróblewski “is extremely detail orientated and presents his findings in a way that is easy to understand. He is an unquestionable professional who always does his work to an exemplary standard”. Fert also garners glowing notices: “The assistance he provided was absolutely crucial in securing the desired results. He communicated clearly and directly in a way that is most appreciated; there is no beating around the bush with Bartosz.” Rounding off the team, Iwona Jakubiak Vel Wojtczak “covers the whole scope of patent protection really well. Her business approach and honesty – and her insightful IP newsletter – are truly valued”.
Hasik Rheims & Partners
As Poland becomes increasingly innovative and dynamic, its entrepreneurs rely on their patent counsel not only to protect their inventions, but also
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Recommended Joanna Bocheńska ZRPat Sławomir Budziński JWP Patent & Trademark Attorneys Lech Bury Bury & Bury European and Polish Patent and Trademark Attorneys Marek Bury Bury & Bury European and Polish Patent and Trademark Attorneys Oliwia Czarnocka JWP Patent & Trademark Attorneys Krzysztof Czub Czub & Czub
to act as true partners when launching products and devising strategies. Fortunately, Hasik Rheims & Partners can deliver on all fronts. “Bringing the team on board was one of the best business decisions we made,” reports one client. “The lawyers are business savvy and have a fantastic reputation as experts within their field. The work produced is top-notch and really gave us an edge over our competitors.” Founder Daniel Hasik is “very proactive in his communication and strategic in his defences; and his legal knowledge is always spot-on”. Working alongside him is Joanna Woźniak and Norbert Walasek. Woźniak brings a
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Poland Jan Dobrzański AOMB Intellectual Property
Ewa Niesiobędzka-Krause KONDRAT & Partners
Bartosz Fert Fert Jakubiak Wróblewski Patent & Trademark Attorneys
Alicja Piotrowicz Kulikowska & Kulikowski spj
Anna Gdula WTS Patent Attorneys - Witek, Sniezko & Partners Piotr Godlewski JWP Patent & Trademark Attorneys Iwona Jakubiak Vel Wojtczak Fert Jakubiak Wróblewski Patent & Trademark Attorneys Magdalena Jezierska-Zięba KONDRAT & Partners
See p711
Mariusz Kondrat KONDRAT & Partners Magdalena Krekora Kancelaria Prawno-Patentowa Magdalena Krekora Damian Krężel AOMB Intellectual Property Marek Łazewski LDS Łazewski Depo & Partners Jarosław Markieta IP & Law Kancelaria Rzeczników Patentowych J Markieta, M Zielińska-Łazarowicz Sp p
holistic approach to her work for a range of domestic start-ups; while Walasek is a “real star” in the electronics and machinery arena.
IP & Law Kancelaria Rzeczników Patentowych J Markieta, M ZielińskaŁazarowicz Sp p
IP & Law runs its operations with rare effectiveness, turning out meticulously drafted applications while never compromising on quality and keeping clients’
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See p712
Andrzej Rosa POLSERVICE Patent and Trademark Attorneys Office
See p713
Iwona Sierzputowska Sulima-Grabowska-Sierzputowska Patent & Trademark Attorneys Rafał Sikorski Sójka Maciak Mataczyński Adwokaci sp k
Piotr Kaminski Kaminski & Partners Marta Joanna Kawczyńska POLSERVICE Patent and Trademark Attorneys Office
Alicja Rogozińska POLSERVICE Patent and Trademark Attorneys Office
Dariusz Świerczyński PATPOL – European and Polish Patent and Trademark Attorneys
See p714
Magdalena Tagowska PATPOL – European and Polish Patent and Trademark Attorneys
See p715
Aleksandra Twardowska-Czerwińska Kulikowska & Kulikowski spj Marcin Wróblewski Fert Jakubiak Wróblewski Patent & Trademark Attorneys Agnieszka Żebrowska-Kucharzyk PATPOL – European and Polish Patent and Trademark Attorneys
See p716
long-term goals front and centre. Much more than just a filing shop, it can also be counted on for valueadditive representation in enforcement and litigation scenarios too. The pragmatic Jarosław Markieta is a discerning choice for instructions involving computerimplemented inventions and has a flair for the fine print of licensing deals.
JWP Patent & Trademark Attorneys
The praise comes thick and fast for JWP Patent & Trademark Attorneys: “JWP is incredibly efficient: its correspondence is always clear, its knowledge of different scientific fields is vast – and the
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Poland service is budget friendly too”. Department head and pharmaceutical specialist Piotr Godlewski “is responsive, highly skilled and one of the best European patent attorneys around”. He has lately been assisting SensDx with international patent applications for a rapid covid-19 test, as well as conducting freedom-to-operate searches for the Polish Stem Cell Bank. The firm also has an impressive electronics and mechanics team, led by Oliwia Czarnocka. “Oliwia has impeccable experience in preparing and filing international and European patents, and handles all matters diligently.” Working closely with her is Sławomir Budziński, a mechanical engineer who has honed his craft for four decades. Holding down the fort on the contentious front is Dorota Rzążewska and Helena Gajek. Rzążewska is “one of the best lawyers in Poland –a truly reliable, experienced and client-orientated expert”; while Gajek is “a rising star with a deep knowledge base and an open but cost-conscious approach”.
Kaminski & Partners
Steeped in biotechnology know-how, Kaminski & Partners excels at securing wraparound protection for small and medium-sized enterprises and major multinationals alike. Acquitting itself with distinction in the pharmaceutical space, the practice also brings home stellar results across a range of other sectors. Founding partner Piotr Kaminski leverages previous experience in academia and clinical research to create impactful strategies underpinned by scientific understanding and business nous.
Kancelaria EUPATENT.PL
Boutique Kancelaria EUPATENT.PL continues to go from strength to strength, especially in the software industry, which is its primary focus. The set relishes working with start-ups and universities, artfully navigating inventors through the patenting process and building solid foundations from which they can grow. The first Polish practitioner to have passed the European qualifying examination, managing partner Adam Pawłowski has “a positive attitude, admirable technical expertise and a conscientious approach. He is always keen to share his knowledge of European and local law, which is much appreciated”.
KONDRAT & Partners
The talented patent attorneys, lawyers and engineers at KONDRAT & Partners provide comprehensive, forward-thinking advice that helps inventors turn their ideas into protected assets in the most optimal way. They have recently been assisting the Institute of Fundamental Technological Research (Polish
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Individuals: litigation Piotr Dynowski Bird & Bird LLP Marek Łazewski LDS Łazewski Depo & Partners Justyna Rasiewicz ROA Rasiewicz Oleksyn & Associates Ewa Skrzydło-Tefelska Sołtysiński Kawecki & Szlęzak Krystyna Szczepanowska-Kozłowska Allen & Overy LLP Monika Chimiak Kulikowska & Kulikowski spj Szymon Gogulski Sołtysiński Kawecki & Szlęzak Mariusz Kondrat KONDRAT & Partners Tomasz Koryzma CMS Cameron McKenna Nabarro Olswang LLP Dorota Rzążewska JWP Patent & Trademark Attorneys Anna Sokołowska-Ławniczak Traple Konarski Podrecki & Partners
Academy of Sciences) with the protection of 20 key patents. Mandates of this scale and with such promising commercialisation opportunities demand a team with deep scientific knowledge and extensive experience – and together Mariusz Kondrat and Magdalena Jezierska-Zięba are that and more. Kondrat is a European patent attorney who has spent many years coordinating productive international filing strategies; while doctor of technical science Jezierska-Zięba has extensive insight in the research field. Working alongside them is the versatile Ewa Niesiobędzka-Krause, who handles every brief with a distinctly personal touch. The trio have lately been representing the University of Wroclaw in registering 100 patents before the Polish Patent Office, the EPO and WIPO.
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Poland Włodzimierz Szoszuk Wardyński & Partners Elżbieta Traple Traple Konarski Podrecki & Partners Justyna Wilczyńska-Baraniak Ernst & Young Klaudia Błach-Morysińska Zaborski Morysiński Marcin Fijałkowski Baker McKenzie Helena Gajek JWP Patent & Trademark Attorneys Daniel Hasik Hasik Rheims & Partners Bartosz Jozwiak Kolegial Kancelaria Prawna Aleksandra Kuźnicka-Cholewa CMS Cameron McKenna Nabarro Olswang LLP Jacek Myszko Sołtysiński Kawecki & Szlęzak Aurelia Nowicka Sołtysiński Kawecki & Szlęzak Marek Oleksyn ROA Rasiewicz Oleksyn & Associates
Kulikowska & Kulikowski spj
Celebrating its 30th anniversary in 2021, Kulikowska & Kulikowski is a highly regarded outfit on the Polish legal market. Continuously developing its services and infrastructure, it secures outstanding results in a cost-efficient manner for myriad dynamic companies. Life sciences guru Aleksandra TwardowskaCzerwińska has been busy prosecuting patents on behalf of top biotechnology players; while Alicja Piotrowicz plies her trade in the mechanical arts. Effortlessly matters on both sides of the contentious/ non-contentious divide is Monika Chimiak, who brings a forward-thinking approach to disputes.
LDS Łazewski Depo & Partners
Complex patent matters are meat and drink to the team at LDS Łazewski Depo & Partners. “It truly
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Dariusz Piróg PATPOL – European and Polish Patent and Trademark Attorneys Aleksandra Politańska-Kunicka Dentons Anna Pompe Wardyński & Partners Marek Rosinski Baker McKenzie Agnieszka Sztoldman Taylor Wessing Tomasz Targosz Traple Konarski Podrecki & Partners Katarzyna Tobiasz-Dumania Baker McKenzie Norbert Walasek Hasik Rheims & Partners Marek Winski Winski Law Firm Joanna Woźniak Hasik Rheims & Partners
stands out for its willingness to cooperate with academic teams, where it creates cost-efficient plans to facilitate such relationships.” Its gold-standard service is reflected not only in glowing reviews, but also in decades-long partnerships with prestigious universities and leading pharmaceutical innovators. Setting the tone from the top is Marek Łazewski, an esteemed figure who is currently secretary general of the International Association for the Protection of Intellectual Property (AIPPI). He has lately assisted the Medical University of Warsaw in drafting a patent specification for the worldwide protection of a pharmaceutical invention. His commercially minded approach, sage legal guidance and technical understanding guarantee success across the board.
PATPOL – European and Polish Patent and Trademark Attorneys
One of the country’s most venerable firms, PATPOL houses first-rate Polish and European patent attorneys and top-drawer lawyers under one roof, who provide total support in procuring and utilising
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Poland patents to their full potential. Magdalena Tagowska, Agnieszka Żebrowska-Kucharzyk and Dariusz Piróg form “a proactive team – very enthusiastic, technically skilled and highly knowledgeable about the minutiae of Polish procedural law”. Department head Tagowska covers all angles to obtain impregnable protection for pharmaceutical innovations. Working alongside her in the life sciences, Żebrowska-Kucharzyk comes equipped with a PhD in chemistry and has recently been helping a chemical company with the transfer of its rights. On the contentious front, Piróg is the managing partner of Patpol Legal and has the unerring ability to hammer out the right results in high-stakes litigation. The work of deputy department head Dariusz Świerczyński “is executed not only with the highest level of proficiency, but also in a very efficient manner”. See p1040 for firm profile
POLSERVICE Patent and Trademark Attorneys Office
POLSERVICE has cemented its standing as a potent force on the Polish legal landscape since its inception in 1964. The group guides inventors from the early stages of ideation through to creation, monetisation and beyond, ensuring that the patents it drafts are fully aligned with their ultimate commercial objectives. As testament to its up-to-the-minute legal knowledge, it played a key role in the recent reform of the nation’s IP laws and the introduction of specialised IP courts. Co-heading the patent teams are Alicja Rogozińska and Andrzej Rosa. Rogozińska thrives in the material sciences and mechanical space, where she excels in the art of strategy; while electrical engineering pro Rosa is a familiar face at the EPO. Vice president of the AIPPI’s Polish branch and talented attorney Marta Joanna Kawczyńska provides incisive counsel to pharmaceutical and biotechnology companies. See p1044 for firm profile
Sołtysiński Kawecki & Szlęzak
“A leading and client-oriented firm”, Sołtysiński Kawecki & Szlęzak is home to “a superb litigation team full of highly qualified lawyers”; one of the largest in the country, it has mastered a winning formula that keeps clients coming back for more. Szymon Gogulski and Ewa Skrzydło-Tefelska take the lead here. Dexterous litigator Gogulski is “a broadminded strategic adviser with exhaustive know-how in patent enforcement cases”; while Skrzydło-Tefelska adopts an academic approach to instructions and wins plaudits for her “top-quality services”, especially in complex litigation and regulatory life sciences
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matters. An authority on software protection, Aurelia Nowicka always considers the bigger picture when assisting clients. Recently promoted to partner, Jacek Myszko joins the IAM Patent 1000 this year and provides holistic guidance across a wide range of industries, from pharmaceuticals to oil and gas.
Sulima-Grabowska-Sierzputowska Patent & Trademark Attorneys
For more than 25 years, Sulima-GrabowskaSierzputowska Patent & Trademark Attorneys has provided a full-bore IP offering that resonates with rights holders of all stripes. The team is home to a talented squad of patent attorneys and patent specialists which includes some of the country’s most renowned SPC experts, and can deftly navigate the intricacies of the Polish legal system. Leading by example, Iwona Sierzputowska stands out for her work in the chemical and biotech arenas, and for her drive and proactivity, which are highly prized by industry leaders. See p1068 for firm profile
Traple Konarski Podrecki & Partners
“One of the biggest names in Poland”, Traple Konarski Podrecki & Partners consistently meets and exceeds the demands of its high-flying clientele. With professors, scholars and lawyers all on deck, its advice is always reassuringly well-rounded and far-sighted. Co-founder Elżbieta Traple is a font of wisdom, especially in pharmaceutical law – a subject on which she has written prolifically. Traple frequently links up with Anna Sokołowska-Ławniczak, “a very smart, highly competent partner who handles complicated matters with ease”. A true lifeline in stormy disputes with significant commercial implications, Tomasz Targosz completes the strike force.
Wardyński & Partners
Full-service titan Wardyński & Partners is counsel of choice to many key players in the life sciences, thanks to its impeccable performances in complex multijurisdictional litigation. Internationally oriented and patent focused, it leverages its abundant internal resources and a carefully cultivated network of foreign associates to carry the day in any forum. It has recently been busy in pan-European litigation proceedings relating to biosimilar products, medical device infringements and commercialisation projects for promising start-ups. The twin pillars are Włodzimierz Szoszuk and Anna Pompe. Department head Szoszuk is an eminent practitioner and a critical ally in both contentious and non-contentious scenarios; while clear-eyed strategist Pompe has a
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Poland broad view of the patent landscape, covering both litigation and transactional matters.
Winski Law Firm
Having recently celebrated its 15th anniversary, boutique Winski Law Firm has established itself as a contentious powerhouse through the wins it racks up for both generic and originator pharmaceutical companies. It has lately been broadening its horizons and turned its attentions to other industries, to great effect: as an example, artificial intelligence start-up Neurosoft and fast-moving consumer goods company Tarczynski SA are just two clients which are benefiting from its input on IP protection programmes. Name and founding partner Marek Winski is spearheading both initiatives. The eloquent advocate has numerous precedent-setting courtroom victories under his belt and is equally assured at the deal negotiating table.
WTS Patent Attorneys - Witek, Sniezko & Partners
“A high-quality service, reasonable costs and excellent administration” are the hallmarks at boutique WTS Patent Attorneys. “It has a great team of precise, service-oriented and well-organised professionals who deliver desired results.” Biotechnology is a forte for the patent division, which is led by pharmaceutical sage Rafał Witek: “He and his team are reliable partners thanks to their skill not only in prosecution, but also in litigation, where Rafal’s deep knowledge paves the way for creative strategies.” Also in the life sciences, Andrzej Witek is “one of the best patent attorneys in Poland. He is meticulous, inspired and truly understands the subject matter. You can count on him in every setting”. Completing the line-up is IAM Patent 1000 debutante and “all-round professional” Anna Gdula, whose finely honed analytical skills and astute evaluation of intangible assets translate into cost-effective, outcome-based counsel. See p1096 for firm profile
Other recommended experts
“Trusted adviser and litigator” Klaudia BłachMorysińska is the leading light at Zaborski
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Morysiński, earning plaudits for her client-focused approach and commercial nous. Operating out of ZRPat, Joanna Bocheńska and Grażyna Padée are “experienced patent attorneys with a vast portfolio of granted patents”. The vice president of the Polish Chamber of Patent Attorneys, Bocheńska has a flair for chemistry matters; while Padée has been an ally to the country’s universities for more than 30 years and is now helping to educate the next generation of patent professionals. Krzysztof Czub of eponymous firm Czub & Czub has a hawkish eye for detail and flourishes in the field of computer science. At Kolegial Kancelaria Prawna, Bartosz Jozwiak “has great practical knowledge”, which he brings to bear in complicated high-tech patent disputes: “As a lawyer with a background in competition law, he offers a broad perspective on every case.” Kancelaria Prawno-Patentowa Magdalena Krekora’s founder, Magdalena Krekora, draws on in-house experience at an international pharmaceutical company to provide a pragmatic, business-centric service to patrons in the life sciences. Joining forces to form their own boutique, ROA Rasiewicz Oleksyn & Associates, Marek Oleksyn and Justyna Rasiewicz are well-respected practitioners on the Polish IP scene. Oleksyn cultivated his keen contentious expertise at CMS; while Rasiewicz “has deep knowledge of local law and provides detailed, commercial advice. She develops creative solutions to achieve clients’ aims and is unafraid to push the boundaries of the law”. Heading the IP department at Sójka Maciak Mataczyński Adwokaci, Rafał Sikorski has a broad technical compass and “is one of the few Polish academics who truly understands the complexity of patents”. Heading the life science division at Taylor Wessing, Agnieszka Sztoldman relishes the challenge of working with cutting-edge biotechnology innovators. Ernst & Young’s Justyna Wilczyńska-Baraniak “is a brilliant litigator and is instrumental in developing IP enforcement strategies in the European Union. She is always focused on the details of the case and her clients’ goals”.
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Kawczyńska, Marta Joanna European Patent Attorney – POLSERVICE Patent and Trademark Attorneys Office marta.kawczynska@polservice.com.pl | www.polservice.com.pl
Marta Joanna Kawczyńska is a Polish patent and trademark attorney. She is also a qualified European patent attorney and professional representative before the EU Intellectual Property Office. She joined POLSERVICE Patent and Trademark Attorneys Office in 2002 and has been a member of the firm’s supervisory board since 2015. Ms Kawczyńska specialises in the protection and enforcement of biotechnology, life sciences and pharmaceutical inventions, including the drafting and prosecution of patent applications and supplementary protection certificate applications for medicinal products and plant protection products. She is also experienced in patent litigation matters. She represents clients before different Polish and international authorities, including the Polish Patent Office, EPO, WIPO and various administrative courts. She advises both global companies from the pharmaceutical and biotechnology industries, and domestic clients, including universities, start-ups and small and mediumsized enterprises. Ms Kawczyńska is a member of the Council of the European Patent Institute, vice president of the Polish National Group of the Association for the Protection of Intellectual Property and a member of the Union of European Practitioners in Intellectual Property. From 2009 to 2017 she was a member of the Regional Council of the Mazovian Region of the Polish Chamber of Patent Attorneys. Ms Kawczyńska graduated from the Intercollegiate Faculty of the Medical University of Gdansk and the University of Gdansk, where she specialised in molecular medicine and genetics. She conducted research on the molecular background of different cancers and the development of molecular diagnostic and prognostics tests for some viral and cancer diseases. Ms Kawczyńska completed postgraduate studies in industrial property law at the University of Warsaw, as well as a European patent law course organised by the Centre for International Intellectual Property Studies at the University of Strasbourg. She also participated in different internships at the EPO in Munich, including an internship at the EPO Technical Boards of Appeal.
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POLSERVICE Patent and Trademark Attorneys Office 73 Bluszczanska Street Warsaw 00-712 Poland T +48 22 44 74 600 See firm profile p1044 Professional associations • AIPPI • epi • UNION-IP
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Rogozińska, Alicja Co-head, Patents – POLSERVICE Patent and Trademark Attorneys Office alicja.rogozinska@polservice.com.pl | www.polservice.com.pl
Alicja Rogozińska is a Polish patent attorney, as well as a European patent attorney and a professional representative before the EUIPO. She joined POLSERVICE Patent and Trademark Attorneys Office in 1997 after an extended period working with the firm on patent translations. At the end of 2019, she was appointed head of the firm’s patent team. With her background in material engineering, Ms Rogozińska specialises in the prosecution and maintenance of patents for inventions in the field of mechanical construction and technology and relative areas. Her work also covers rights of protection for utility models and registration of industrial designs, as well as litigation procedures, especially in patent matters. Ms Rogozińska graduated with a master’s from the faculty of material engineering at the Warsaw University of Technology. She completed postgraduate studies in intellectual property at the Jagiellonian University in Krakow and at the European School of Law and Administration in Warsaw. Since 1983 she has been a certified German translator with the Polish Supreme Technical Organisation. Ms Rogozińska is active in a number of professional organisations. She is a member of the Polish Chapter of the Licensing Executives Society (LES) International and currently acts as treasurer of LES Poland. Since 2006 she has been a member of the Disciplinary Committee of the Institute of Professional Representatives before the EPO.
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POLSERVICE Patent and Trademark Attorneys Office 73 Bluszczanska Street Warsaw 00712 Poland T +48 22 44 74 600 See firm profile p1044
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Rosa, Andrzej Head of Team – POLSERVICE Patent and Trademark Attorneys Office andrzej.rosa@polservice.com.pl | www.polservice.com.pl
Andrzej Rosa is a Polish patent and trademark attorney. He is also a professional attorney before the EU Intellectual Property Office. He joined POLSERVICE Patent and Trademark Attorneys Office in 2007 and has been a head of team (Patent Team II) since 2019. Mr Rosa specialises in comprehensive services related to the prosecution of inventions in the field of electronics, electrical engineering and information technology, including computer engineering in its broad sense, in national procedures before the Polish Patent Office, international (Patent Cooperation Treaty) procedures and before patent offices in other countries. Mr Rosa also represents clients in litigation proceedings before the Polish Patent Office, the Polish administrative courts and the common courts. He prepares opinions and carries out patent searches, including freedom-to-operate searches. He also advises clients on building a company strategy for the creation and management of patent portfolios. Mr Rosa graduated from the Faculty of Cybernetics at the Military University of Technology in Warsaw, where he specialised in computer engineering. He was involved in projects carried out by the Institute of Automatic Control and Robotics of the Military University of Technology in Warsaw, where he gained experience in voice-controlled microcomputer systems and telecommunication systems with voice and data transmission. Mr Rosa completed postgraduate studies at the Industrial Property Law Department of the University of Warsaw, as well as a studies in new technologies law at the Institute of Law Studies of the Polish Academy of Sciences.
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POLSERVICE Patent and Trademark Attorneys Office 73 Bluszczanska Street Warsaw 00-712 Poland T +48 22 44 74 600 F +48 22 44 74 646
See firm profile p1044
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Świerczyński, Dariusz Deputy Head, Patent Department – Patpol – European and Polish Patent and Trademark Attorneys dariusz.swierczynski@patpol.pl | www.patpol.pl
Dariusz Świerczyński, PhD Eng, is deputy head of the patent department and a patent attorney at Patpol. He specialises in technical solutions mainly in the fields of mining (in particular, mining systems and machines), aviation (in particular, jet engines), cosmonautics (in particular, space landers) and chemical engineering (in particular, crude oil processing). Mr Świerczyński prepares and prosecutes applications for inventions and utility models, including conducting research and patent searches. He leads cases and represent clients in inter partes proceedings before the Polish Patent Office and the courts, and prepares legal opinions relating to patent rights and protection rights. Mr Świerczyński joined Patpol in 2008. He is a Polish patent attorney and is preparing to qualify as a European patent attorney. A graduate of the Rzeszow University of Technology, Mr Mr Świerczyński obtained the title of ‘doctor of chemical sciences’ from the Institute of Physical Chemistry of the Polish Academy of Sciences. He completed his postdoctoral fellowship at the University of Osaka in Japan. He is a member of the Polish Chamber of Patent and Trademark Attorneys. Main practice areas • Aviation • Chemical engineering • Cosmonautics • Mining Languages • English • German • Polish
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Patpol – European and Polish Patent and Trademark Attorneys 162J Nowoursynowska Street Warsaw 02-776 Poland T +48 22 5469154 See firm profile p1040 Professional associations • Polish Chamber of Patent and Trademark Attorneys
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Tagowska, Magdalena Head, Patent Department – Patpol – European and Polish Patent and Trademark Attorneys magdalena.tagowska@patpol.com.pl | www.patpol.pl
Magdalena Tagowska, PhD, is the head of patent department and a Polish patent attorney at Patpol with almost 20 years of experience in the field of intellectual property. She specialises in the prosecution of patents in the chemistry, pharmacy and biotechnology sectors, as well as in obtaining supplementary protection certificates and conducting inter partes proceedings before the Patent Office and administrative courts. She also prepares legal opinions, including analyses of freedom to operate and IP audits. Ms Tagowska successfully represents clients in patent litigation cases before the Patent Office and in court. She also supports Patpol Legal’s lawyers in court proceedings. Ms Tagowska became a Polish patent and trademark attorney in 2009. She has co-authored several scientific publications relating to electrochemistry and nanostructures. She also contributes to specialist IP publications such as The Patent Lawyer and frequently speaks on IP issues at events. She holds a PhD in chemistry, and is a graduate of Warsaw University and of the American Studies Centre at Warsaw University. She is a member of several industry organisations, including the Polish Chamber of Patent Attorneys, the International Association for the Protection of Intellectual Property and epi. Main practice areas • Biotechnology • Nanotechnology • Chemistry • Electrochemistry • Pharmacy
Patpol – European and Polish Patent and Trademark Attorneys 162J Nowoursynowska Street Warsaw 02-776 Poland T +48 22 5469109 F +48 22 6449 600 See firm profile p1040 Professional associations • AIPPI • PIRP
Languages • English • Polish
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Żebrowska-Kucharzyk, Agnieszka European Patent Attorney – Patpol – European and Polish Patent and Trademark Attorneys agnieszka.zebrowska@patpol.pl | www.patpol.pl
Agnieszka Żebrowska-Kucharzyk, PhD, specialises in the prosecution of patents in the fields of chemistry, pharmacy and biotechnology, as well as in supplementary protection certificates and inter partes proceedings before the Polish and European Patent Offices and the administrative courts. She also prepares legal opinions, including analyses of freedom to operate and IP audits. Ms Żebrowska-Kucharzyk successfully represents clients in patent litigation cases before patent offices and in court. She also supports Patpol Legal’s lawyers in court proceedings. She qualified as a Polish patent and trademark attorney in 2008 and as a European patent attorney in 2015. Ms Żebrowska-Kucharzyk is the co-author of scientific publications in the field of bio-electrochemistry and biophysics, as well as publications related to industrial property. She holds a PhD in chemistry from Warsaw University and the American Studies Centre at Warsaw University. She also studied at the Max Planck Institute in Frankfurt am Main. In 2020 she graduated in European patent litigation from Strasbourg University. At Patpol, Ms Żebrowska-Kucharzyk specialises in patent contentious and prosecution in the following industries: biotechnology, biophysics, chemistry, electrochemistry, spectroscopy and pharmacy. An IP practitioner for almost 20 years, Ms Żebrowska-Kucharzyk is a member of several industry organisations, including PIRP – the Polish Chamber of Patent and Trademark Attorneys, the International Association for the Protection of Intellectual Property and epi.
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Patpol – European and Polish Patent and Trademark Attorneys 162J Nowoursynowska Street Warsaw 02-776 Poland T +48 22 546 9100 See firm profile p1040 Professional associations • AIPPI • epi • PIRP
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Portugal
Pharmaceutical patent litigation is a key area of practice for many of Portugal’s leading IP firms. The system within which they work has evolved significantly, with the removal of the mandatory arbitration regime at the start of 2019 being the most notable recent change. This has increased the burden on the country’s IP court, which has a limited number of judges relative to the volume of cases brought before it.
Abreu Advogados
Newly featured in the IAM Patent 1000 for 2021, Abreu is not only a prime destination for dynamic brands in need of trademark support, but also a discerning choice for technology and life sciences innovators seeking premier patent services. Infringement litigation in the pharmaceutical sector is its metier, but there’s diversity to be seen in its hard IP work, which encompasses prosecution and general counselling. The practice got a shot in the arm in December 2019 when António Andrade joined from VdA. His advice on enforcement tactics always hits the mark; as do his presentations in court and arbitral proceedings. The most experienced professional in the fold is IP and IT group co-head Manuel Durães Rocha, whose insight in the health and pharmaceutical industries runs deep.
BMA
“Simply the best” is the resounding verdict on BMA – a firm known for its IP litigation firepower and outstanding track record both in court and at the negotiating table. Recommendations come thick and fast for its “professional and approachable” team, which “focuses on what’s important and provides fast support at a very competitive price point”. First among equals is Paulo Monteverde, a “deeply knowledgeable lawyer and clever strategist who understands his clients from a commercial, technology and regulatory perspective”. “Paulo has great short, medium and long-term vision, and demonstrates total dedication and commitment. His knowledge goes beyond local laws and he coordinates smoothly with his contacts worldwide.” Colleague Filipe Baptista is a “pragmatic and commercial lawyer who provides excellent support in complex, high-stakes IP litigation and arbitration matters”. “He is quick to act and provides accurate advice along with viable solutions.” Baptista partners closely with Petra Fernandes, who is fast emerging as a pharmaceutical patent litigation star in Portugal.
ClarkeModet
With a well-trained, highly qualified squad of nearly 30 professionals, including lawyers and engineers, ClarkeModet Portugal is ideally placed to provide
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comprehensive legal advice and technical support on patent matters, of which it manages many thousands. As part of the ClarkeModet Group, one of the Spanish and Portuguese-speaking world’s top IP boutiques, the local contingent offers patrons instant access to rich international resources, the firm’s central management of which ensures a seamless service. Quick to read market trends and design solutions with them in mind, the team – fronted by Ricardo Abrantes – offers immense value. Technical and legal director Abrantes has made quality and timely, cost-effective delivery his mission. Having frequently served as a court-appointed technical expert in patent litigation, he has a fine-tuned sense of the strengths and weaknesses of patents, which informs his approach to protecting them. He was joined in January 2020 by senior global account manager Maria Cruz Garcia, who brings with her a treasure trove of knowledge and an international perspective on patent protection and enforcement. See p954 for firm profile
Garrigues
Garrigues fields IP practitioners in Portugal, Spain and China, who pool resources and collaborate to assist clients on all aspects of the protection, enforcement and commercialisation of patents in those jurisdictions and beyond. The firm adopts an innovative mindset and deploys advanced technologies to drive efficiencies in the practice and reduce client costs, reflecting its resolutely customer-focused approach. Recent work highlights on the non-contentious side include advising Portuguese pharmaceutical group Tecnimede on the filing of patents in 30-plus countries and acting for the Portuguese Institute for Molecular and Cell Biology on prosecution in areas such as oncology and neurobiology. Contentious activities of note, meanwhile, include successfully representing Ceva Animal Health in a patent infringement dispute with Bayer over a veterinarian vaccine. Running point on these matters, João Miranda de Sousa provides inspiring leadership to the group: “He is a meticulous and very clever thinker who has a gift for anticipating the strategies of opposing parties. He provides detailed and accurate legal opinions and is extremely
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Portugal results oriented. A confident lawyer who keeps his feet on the ground, he also commands huge respect in the IP community and has a long list of professional contacts who are always ready to assist.” He draws on first-rate support from principal associate Francisca Ferreira Pinto, an enforcement specialist who also manages prosecution and licensing mandates with dexterity.
J Pereira da Cruz SA
A “longstanding, highly respected firm with a rich tradition”, J Pereira da Cruz is a destination of choice for patent prosecution. Its line-up of high-calibre agents and consultants can be relied on to dot the Is and cross the Ts when filing applications and securing registrations that afford cast-iron protection. The key contacts for interested parties are smart legal and strategic counsellor Cláudia Freixinho Serrano and Patricia Marques, who makes her debut in the IAM Patent 1000 for 2021 following peer recommendations for the quality of her output. A former examiner at the Portuguese Institute of Industrial Property, Marques knows what levers to pull through all phases of the prosecution process. See p1006 for firm profile
Morais Leitão, Galvão Teles, Soares da Silva & Associados
When it comes to intellectual property, patent litigation is the forte of Morais Leitão, which represents numerous Big Pharma players in battles over blockbuster drugs. Its internationally trained contingent of patent agents and lawyers undertakes extremely thorough work in the preparation phase, putting itself in pole position to execute on strategy as cases develop. This early diligence has contributed to the success of Vasco Stilwell d’Andrade and Ricardo do Nascimento Ferreira – two seasoned lawyers who never buckle when the pressure mounts. Together they represent Teva, Dipharma, Fucoli-Somepal, Ericsson and many others.
PATENTREE
Competitors award full marks to PATENTREE, a “modern, high-quality boutique led by two of the very few qualified European patent attorneys in Portugal”. “The team handles its clients and work with exceptional care, while also showing commitment to raising IP awareness in the country.” Anabela Carvalho earns credit for her “ability to deliver complex information with great concision and clarity”. She comes from a bioengineering background and has lab and project management experience that stands her in good stead. Luís Ferreira anchors
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Firms BMA Garrigues VdA Abreu Advogados ClarkeModet J Pereira da Cruz SA
See p954 See p1006
Morais Leitão, Galvão Teles, Soares da Silva & Associados PATENTREE
See p1038
Sérvulo & Associados Simões, Garcia, Corte-Real & Associados
the high-technology practice and capitalises on his training in electrical and computer engineering. Both practitioners excel at the nuts and bolts of patent prosecution, but are also big-picture thinkers on strategy. See p1038 for firm profile
Sérvulo & Associados
Prestigious pharmaceutical, biotechnology and other clients look to SÉRVULO to implement smart patent protection programmes and evaluate product launch risk, but also gravitate towards it when the patent litigation threat level rises: its blend of legal, regulatory and advocacy skills inspires total confidence. The firm is also enviably well connected among high-ranking foreign associates, which further reflects its status as an unerringly reliable service provider. Head of the practice Ana Rita Painho has spent two decades teasing out the knots of cuttingedge, often multi-jurisdictional IP matters for the likes of Teva, among others. She draws invaluable support from Mariana Costa Pinto, a senior associate who is taking on increasing responsibilities in all areas of IP practice.
Simões, Garcia, Corte-Real & Associados
Esteemed boutique Simões, Garcia, Corte-Real & Associados leverages on its all-encompassing patent prosecution and litigation skillset to deliver a flexible, cost-effective, high-quality service. Meeting and
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Portugal Ricardo do Nascimento Ferreira Morais Leitão, Galvão Teles, Soares da Silva & Associados
Individuals António Andrade Abreu Advogados
Manuel Durães Rocha Abreu Advogados
Filipe Baptista BMA
Petra Fernandes BMA
António de Magalhães Cardoso VdA
Luís Ferreira PATENTREE
João Miranda de Sousa Garrigues
See p724
Francisca Ferreira Pinto Garrigues
Paulo Monteverde BMA Vasco Stilwell d’Andrade Morais Leitão, Galvão Teles, Soares da Silva & Associados
Cláudia Freixinho Serrano J Pereira da Cruz SA
See p726
Raquel Galvão Silva Linklaters LLP
Ricardo Abrantes ClarkeModet
See p721
Anabela Carvalho PATENTREE
João Luís Garcia Simões, Garcia, Corte-Real & Associados
See p722
Patricia Marques J Pereira da Cruz SA
António Corte-Real Simões, Garcia, Corte-Real & Associados
Sara Nazaré VdA
Mariana Costa Pinto Sérvulo & Associados
Ana Rita Painho Sérvulo & Associados
Eduardo Cruz Gastão da Cunha Ferreira Maria Cruz Garcia ClarkeModet
Sónia Queiroz Vaz Cuatrecasas See p723
Hugo Monteiro de Queirós PLMJ Gonçalo de Sampaio JE Dias Costa Lda
anticipating the needs of a discerning clientele, including many major European patent holders, is a well-specced group of legal and technical professionals fronted by partners João Luís Garcia and António Corte-Real. Coming in for special praise, Garcia is “extremely approachable, prompt and practical”, providing “thoughtful, thorough counsel that enables you to proceed with your
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See p725
Marta Alves Vieira VdA Vitor Moreira Inventa International
plans efficiently and economically”. He handles prosecution and litigation assignments with equal dexterity and works across the IP spectrum. CorteReal thrives in the cut and thrust of litigation and any scenario in which he can showcase his potent powers of persuasion.
VdA
Gold-ranked VdA garners superlative feedback from the market, which speaks to its high-level
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Portugal understanding of the life sciences sector and incredible hit rate in patent litigation. “The firm has a rare depth of knowledge regarding the idiosyncrasies of Portuguese pharmaceutical regulatory law and practice, and is diligent and agile in navigating an ever-changing landscape.” “The team has handled a great many cases over the years and offers smart, experienced-based advice that is instrumental in strengthening clients’ market positions.” Taking the reins, António de Magalhães Cardoso advocates with poise for the likes of Novartis and Bayer: “António is a leader in his field and the go-to for anyone needing a life sciences litigator in Portugal.” Sources also hail the quality of the associates he manages so effectively and appreciate their skills and know-how, as well as lower billing rates. One of the best among them is managing associate Sara Nazaré, who is becoming a leader in her own right and spearheading important campaigns for Gilead Sciences, among others. “Sara never fails to impress with her professionalism, dedication and responsiveness. As well as being technically excellent, she has a strategic and international mindset that makes her a very safe pair of hands for multi-jurisdictional litigation.” Joining her colleagues in the IAM Patent 1000 for the first time this year, Marta Alves Vieira is another highfunctioning managing associate; she plays a vital role in enforcing the patent rights of Merck Sharp & Dohme.
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Other recommended experts
Patent practice in Portugal is largely dominated by life sciences professionals, but one of the best in the IT realm is Eduardo Cruz of Gastão da Cunha Ferreira. Hugo Monteiro de Queirós recently took on the mantle of IP group captain at PLMJ following a four-year stint at Baptista Monteverde & Associados. Focused on litigation, he acquits himself with distinction in cases arising in all categories of IP rights. A lawyer and European trademark attorney, Gonçalo de Sampaio has the qualifications and insight to handle wide-ranging patent matters and give well-considered legal and technical advice. He is based at J E Dias Costa. A managing associate at Linklaters in Lisbon, Raquel Galvão Silva deftly handles patent matters as part of a broader dispute resolution practice, including crucial infringement cases for Pfizer. Vitor Moreira coordinates the patent department at Inventa International. Applying his chemical engineering expertise and drawing on his background as a patent examiner, he undertakes prosecution with rare precision. He extensively represents the Faculty of Sciences of the University of Lisbon. The Lisbon office of Cuatrecasas is home to Sónia Queiróz Vaz, who manages the local IP, media and IT practices. She has an affinity for transactional IP work and is currently acting for Champalimaud Foundation in licensing negotiations, as well as in connection with the filing of patents.
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Abrantes, Ricardo Technical and Legal Services Manager – ClarkeModet rabrantes@clarkemodet.com.pt | www.clarkemodet.com
Ricardo Abrantes is the technical and legal services manager of ClarkeModet in Portugal where he coordinates the team of consultants responsible for the preparation of all types of technical and legal consultancy services in connection with patent, trademark and design rights. Prior to this, he was a patent consultant at ClarkeModet Portugal for non-chemical technologies. Mr Abrantes has assisted clients with the development of IP portfolios, the implementation of strategies and the prosecution of patents – in particular, European, Patent Cooperation Treaty and Portuguese patent applications – for energy, telecoms, mould technologies and software companies. He also helped with the strategy and prosecution worldwide of such IP portfolios. Mr Abrantes has extensive experience in patentability analysis, patent drafting with a view on grant and enforcement, as well as prosecution and due diligence – especially in the technical fields of materials, metallurgy, mechanics, production technologies, nanotechnology and optics. His daily work also involves writing legal opinions as a judicial patent expert for infringement cases and analysing freedom to operate and patentability. Mr Abrantes is a patent, trademark and design attorney in Portugal and a European trademark and design agent. He is also partly qualified as a European patent agent. Mr Abrantes has a degree in materials engineering from the Superior Technical Institute.
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ClarkeModet Avenida Casal Ribeiro nº 50, 3º Lisbon 1000-093 Portugal T +351 213 815 050 See firm profile p954
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Carvalho, Anabela Partner – PATENTREE anabela.carvalho@patents.pt | www.patentree.eu
Anabela Carvalho is a qualified European patent attorney, a Portuguese patent and trademark attorney, a Portuguese industrial property agent and a European trademark and design attorney. She is also a patent arbitrator. In 2013 Ms Carvalho was one of the first few professionals in Portugal to pass the European qualifying exam. Ms Carvalho holds a bioengineering degree from the University of Minho, Portugal. She is a partner at PATENTREE (also known as PATENTS.PT). Ms Carvalho has interned with the EPO Examining Division. She is a tutor for the Lisbon branch of the Centre for International Intellectual Property Studies and a tutor for the Institute of Professional Representatives of the EPO. Ms Carvalho has helped clients extensively in the development of strategies and solutions for patent and IP management (advanced and defensive patent filings). She has comprehensive patent prosecution experience in European, Patent Cooperation Treaty and Portuguese patent applications, including providing opinions and analyses on patentability, freedom-to-operate and infringement matters. She also has experience as a judicial patent expert appointed both by the courts and by the parties.
PATENTREE Rua de Salazares 842 – Edf NET Porto 4149-002 Portugal T +351 220 028 916 F +351 225 322 066 See firm profile p1038 Professional associations • CEIPI • epi
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Cruz Garcia, Maria Senior Global Account Manager – ClarkeModet mcruzgarcia@clarkemodet.com.pt | www.clarkemodet.com
Maria Cruz Garcia joined the international team at ClarkeModet on 1 January 2020 with the goal of strengthening the management of clients and foreign partners, as well as providing assessment on intellectual property. Prior to that, Ms Cruz Garcia had practised as an attorney at law and a patent and trademark attorney in prestigious Portuguese law firms, having become a partner at one of them. She has led several departments in her previous firms and was head of the litigation department and the marketing and communication department in her last firm. Her technical and legal expertise is extensively recognised – she has held leading positions in numerous IP associations, such as serving as the general secretary of the Portuguese Group of the International Association for the Protection of Intellectual Property since 2013 and being a past member of the board of directors of the Portuguese Association of IP Professionals. She is active in other major international organisations including INTA, the International Federation of Intellectual Property Attorneys, the European Communities Trademark Association and the Pharmaceutical Trademarks Group. Ms Cruz Garcia graduated from the Catholic University of Portugal in 2004 and has completed two postgraduate courses in intellectual property. She joined the Portuguese Bar Association in 2006 and became a certified patent and trademark attorney before the Portuguese IP Office in 2012. She is a regular speaker at conferences and a lecturer on training programmes and postgraduate courses in the IP field. In 2019 Ms Cruz Garcia was ranked among the Top 250 Women in IP by Managing Intellectual Property, which has been awarding her the IP Star status since 2015. In addition, IAM has recognised her in the IAM Patent 1000 since 2016 and she has been honoured as a World IP Review leader, while Acquisition International has recognised her as “the only spotlighted ‘Woman in IP’ from Portugal”.
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ClarkeModet Av Casal Ribeiro 50 – 3º andar Lisbon 1000-093 Portugal T +351 933 087 375 See firm profile p954 Professional associations • AIPPI • FICPI • INTA
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Ferreira, Luís Partner – PATENTREE luis.ferreira@patents.pt | www.patentree.eu
Luís Ferreira is a qualified European patent attorney, a Portuguese patent and trademark attorney and a European patent litigator (holding a Centre for International Intellectual Property Studies (CEIPI) patent litigation certificate). He has been a Portuguese industrial property agent and a European trademark and design attorney since 2012 – among the first professionals in Portugal to pass the European qualifying examination. Mr Ferreira holds a degree in electrical and computer engineering from Porto University. He is a partner at PATENTREE (also known as PATENTS.PT). Mr Ferreira has interned with the EPO Examining Division. He is a tutor for the CEIPI Lisbon European patent law course and a tutor for epi, the Institute of Professional Representatives before the EPO. He has assisted clients extensively with the development of management of IP strategy and prosecution of patent applications (advanced and defensive patent filings). He has comprehensive patent prosecution experience in European, Patent Cooperation Treaty and Portuguese patent applications, including providing opinions on and analyses of patentability, freedom-to-operate and infringement matters. He also has experience as a judicial patent expert appointed both by the courts and by the parties.
PATENTREE Rua de Salazares 842 – Edf NET Porto 4149-002 Portugal T +351 220 028 916 F +351 225 322 066 See firm profile p1038 Professional associations • CEIPI • epi
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Marques, Patricia Patent and Trademark Attorney – J Pereira da Cruz SA patriciamarques@jpcruz.pt | www.jpereiradacruz.pt
Patrícia Marques has a degree in geographical engineering from the Faculty of Science and Technology of the University of Coimbra and a postgraduate diploma in industrial property economics and management from the Lisbon School of Economics and Management. She has also completed the basic training in European patent law course of the Centre for International Intellectual Property Studies of the University of Strasbourg. Ms Marques started her career as a researcher in the field of laser scanning, multispectral imagery and geographic information system in C&R documentation practices. She entered the IP area in 2008 as a patent examiner at the Portuguese Industrial Property Office and a trainer at the office’s IP Academy, where she also received extensive training from the European Patent Office. Ms Marques moved to an in-house position in 2011 to manage the intellectual property of the Polytechnic Institute of Leiria and in 2013 she accepted the challenge of joining J Pereira da Cruz as head of the firm’s Leiria office. Ms Marques is a Portuguese official industrial property agent/ Portuguese patent and trademark attorney, specialising in patents and utility models in the fields of mechanics, structures, geodesy and navigations systems. She is currently preparing for the European patent attorney qualification. Ms Marques has vast experience in patent drafting and prosecution, as well as freedom-to-operate, infringement and patentability analyses. She provides strategic consultancy on IP portfolio development, acquisition and enforcement. Ms Marques is a regular speaker at conferences, seminars and training sessions in the field of patents and is actively involved in workshops and other events in the IP area.
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J Pereira da Cruz SA Rua Victor Cordon 10A Lisbon 1249-103 Portugal T +351 21 347 5020 F +351 21 342 4583 See firm profile p1006 Professional associations • ACPI • UNION-IP
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Freixinho Serrano, Cláudia Lawyer – J Pereira da Cruz SA claudiaserrano@jpcruz.pt | www.jpereiradacruz.pt
Cláudia Freixinho Serrano was admitted to the Portuguese Bar Association in 2005 and became a certified patent and trademark attorney with the Portuguese Industrial Property Office in 2015. Ms Freixinho Serrano graduated from the Faculty of Law of the University of Lisbon in 2003. She later obtained a postgraduate diploma in corporate law from the Faculty of Law of the University of Coimbra, as well as a postgraduate diploma in intellectual property and postgraduate studies in medicinal products law, both from the Faculty of Law of the University of Lisbon. Ms Freixinho Serrano joined J Pereira da Cruz in 2011 and has since been providing legal and strategic advice in all areas of intellectual property. She also handles important litigation in all areas of IP law, particularly patents (including in the pharmaceutical and technology fields). She currently focuses her practice on biotechnology and pharmaceuticals and has been entrusted with the defence of important patents for best-selling drugs. Ms Freixinho Serrano is a frequent speaker at seminars and conferences on subjects related to intellectual property and a lecturer on courses in civil procedural law and intellectual property. She is the author of several articles in the IP field.
J Pereira da Cruz SA Rua Victor Cordon 10-A Lisbon 1249-103 Portugal T +351 21 347 50 20 See firm profile p1006 Professional associations • ACPI • UNION-IP
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Romania
The consistency that characterises the Romanian patent market can be a double-edged sword for some local practitioners: while it ensures stability and predictability, it can also sometimes impede progress and cause frustrations. The hot talking point among the IP community is artificial intelligence and its protection; another source of excitement is increased investment in Romania’s burgeoning software industry, from both domestic and international entities. As a result, patent activity is healthy and IAM has identified several new names in the Romania listings this year as a result.
Cabinet Enpora
Founded 25 years ago, Cabinet Enpora serves as a reliable partner to more than 2,000 entities seeking watertight patent protection. Its technically diverse team of registered Romanian and European patent attorneys provides insightful, commercial and strategic advice which yields maximum rewards with minimum fuss. The name to note is Virginia-Daisy Pop, a gifted chemist and a leader in the field.
Cabinet M Oproiu Patent & Trademark Attorneys
“One of the most prominent prosecution firms on the market”, Cabinet M Oproiu shines bright in the chemical, mechanical and pharmaceutical fields. The longstanding boutique has also cultivated an impressive network of foreign associates to call upon for international matters. Epitomising the firm’s meticulous approach is founder Margareta Oproiu, a favourite among biotechnologists and physicists. As a patent holder and former researcher in the National Research Institute for Technological Research, she knows exactly what type of advice and assistance inventors need. Flanking her is Raluca Vasilescu, who prosecutes electrical engineering patents and coordinates multi-jurisdictional filings with aplomb.
Mihaela Teodorescu & Partners – Intellectual Property Office SRL
A new inclusion in the IAM Patent 1000 for 2021, Mihaela Teodorescu & Partners – Intellectual Property Office SRL proves that its compact size is no obstacle when registering and safeguarding the rights of the country’s elite companies and entrepreneurs. Steering the ship is namesake Mihaela Teodorescu, whose prior experience as a chemical engineer resonates with top chemical research institutes, among others.
MILCEV BURBEA Intellectual Property & Law Office Home to both lawyers and patent attorneys, MILCEV BURBEA is perfectly positioned to procure, defend and monetise intangible assets seamlessly. With four decades in the game between them, Gabriela
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Milcev and Iulia Burbea make for great team leaders. Perceptive strategist Milcev is a fantastic ally to those in the pharmaceutical domain; and when complex litigation at the intersection of consumer protection and regulatory law looms, Burbea is the one for the job.
Mușat & Asociaţii
The IP department at full-service giant Mușat & Asociaţii houses a technically versatile patent team that supports patrons on both sides of the contentious/non-contentious divide. The set takes its cue from managing partner Paul George Buta, an astute prosecutor who thrives in the field of cuttingedge innovation. The sage strategic counsellor is a popular choice for companies keen to establish a foothold in Europe. Back-up comes from life sciences whizz Dan Minoiu, whose keen insight into regulatory law is an invaluable asset to the ensemble.
Nestor Nestor Diculescu Kingston Petersen
Nestor Nestor Diculescu Kingston Petersen has made a name for itself on the Romanian patent scene as a go-to for premium, all-inclusive IP services. A winning combination of sophisticated legal skills and technical nous has attracted the attentions of players in the software and pharmaceutical industries, among others. In the latter sphere, the side recently showcased its expertise representing Teva Pharmaceutical Industries in preliminary injunction proceedings against Alvogen. The “highly professional and sharp” Sorina Olaru called the shots in this matter. Always keeping sight of the bigger picture, she deftly handles complex matters and delivers crisp results. Working alongside her is IAM Patent 1000 newcomer Daniela Savin, a litigation ace who co-authored the Romanian chapter of the book Enforcement of Intellectual Property Rights in the EU Member States along with Olaru.
PETOŠEVIĆ
Staffed with more than 130 professionals across 16 offices and operating in some 30-plus jurisdictions,
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Romania PETOŠEVIĆ is a major player in the Commonwealth of Independent States region. Much like its sister offices, the Romanian outpost is a superb choice for prior art searches, prosecution and robust litigation advice across Europe. Leading light Aura Campeanu operates comfortably across the contentious/noncontentious divide and exceeds the expectations of multinationals from virtually any sector without breaking sweat. Joining her in the guide this year is Florina Firaru, who maintains a cracking trademark practice, but is equally adept at quashing infringements on the patent side.
Firms: litigation and transactions
Răzvan Dincă & Asociaţii
Mușat & Asociaţii
Contemporary boutique Răzvan Dincă & Asociaţii is steeped in pharmaceutical know-how and continues to deliver first-rate results. It distinguishes itself from competitors through its unparalleled affinity for the life sciences; as an example, it recently went out to bat for Novartis in a patent infringement dispute. “Enthusiastic and impressive” managing partner Răzvan Dincă draws on his “rich academic experience and well-developed practical sense” to find “out-ofthe-box solutions”. He was recently appointed dean of Bucharest University’s Faculty of Law. Making her IAM Patent 1000 debut in 2021 is department co-head Irina Speciac. The pharmaceutical whizz acts for some of the industry’s biggest companies and complements her patent practice with a refined understanding of competition and regulatory law.
Rominvent SA
For more than six decades, Rominvent SA has been a highly respected presence in Romania, with peers hailing it as “one of the leading IP firms in the country”. Its accomplished practitioners dispense tailored advice that not only protects clients’ inventions over the long term, but also furthers their business goals. Chemistry specialists Oana Boncea and Adina Badarau provide stellar leadership to the troop. Boncea’s in-depth knowledge of her craft allows her to draft, file and prosecute effortlessly; while Badarau is a well-versed patent attorney whose dual qualification in chemistry and law guarantees advice that is both efficient and personalised.
STOICA & Asociații
The IP specialists at STOICA & Asociații readily dispatch effective and valuable litigation assistance at a domestic and regional level. Captaining the ship is firm founder Valeriu Stoica, a seasoned and commercially informed lawyer whose enviable global connections benefit innovators with international ambitions. Able support comes from former judge
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Highly recommended Răzvan Dincă & Asociaţii Zamfirescu Racoți Vasile & Partners Recommended MILCEV BURBEA Intellectual Property & Law Office
Nestor Nestor Diculescu Kingston Petersen STOICA & Asociații Turcu & Turcu VILAU | ASSOCIATES
Firms: prosecution Highly recommended Cabinet M Oproiu Patent & Trademark Attorneys PETOŠEVIĆ Recommended Cabinet Enpora Mihaela Teodorescu & Partners – Intellectual Property Office SRL Nestor Nestor Diculescu Kingston Petersen Rominvent SA Dragoş Bogdan, whose hands-on approach and extraordinary eloquence are eagerly sought out by those in contentious pickles.
Turcu & Turcu
Operating out of Romania, Bulgaria and Moldova, nimble boutique Turcu & Turcu has been steadily establishing itself as a daunting adversary in patent disputes across Eastern Europe. Its streamlined service and knack for settling skirmishes in the life
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Romania Individuals Highly recommended Oana Boncea Rominvent SA Iulia Burbea MILCEV BURBEA Intellectual Property & Law Office
Florina Firaru PETOŠEVIĆ Ionut Lupsa Lupsa & Associates Emilia Manea Turcu & Turcu
Răzvan Dincă Răzvan Dincă & Asociaţii
Lucian Mihai Radu Tărăcilă Pădurari Retevoescu SCA in association with Allen & Overy LLP
Gabriela Milcev MILCEV BURBEA Intellectual Property & Law Office
Dan Minoiu Mușat & Asociaţii
Sorina Olaru Nestor Nestor Diculescu Kingston Petersen
Margareta Oproiu Cabinet M Oproiu Patent & Trademark Attorneys
Valeriu Stoica STOICA & Asociații
Daniela Savin Nestor Nestor Diculescu Kingston Petersen
Mihaela Teodorescu Mihaela Teodorescu & Partners – Intellectual Property Office SRL
Irina Speciac Răzvan Dincă & Asociaţii
Alina Tugearu Zamfirescu Racoți Vasile & Partners
Gabriel Nicolae Turcu Turcu & Turcu
Recommended
Cosmin Vasile Zamfirescu Racoți Vasile & Partners
Adina Badarau Rominvent SA
Raluca Vasilescu Cabinet M Oproiu Patent & Trademark Attorneys
Dragoş Bogdan STOICA & Asociații
Dragos M Vilau VILAU | ASSOCIATES
Paul George Buta Mușat & Asociaţii
Calin-Andrei Zamfirescu Zamfirescu Racoți Vasile & Partners
Aura Campeanu PETOŠEVIĆ
sciences have earned it the loyalty of numerous European heavyweights. Managing partner Gabriel Nicolae Turcu has a “superb understanding of a patent’s practical implications and excels at finding ingenious solutions that benefit his clients’ commercial interests”. His colleague and IAM Patent 1000 newcomer Emilia Manea is a “dedicated and thorough attorney with broad experience before the Romanian courts”.
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VILAU | ASSOCIATES
Finding creative ways to defend patent rights to the hilt while simultaneously maximising their business value is the bread and butter of Bucharest-based law firm VILAU | ASSOCIATES. Working across an array of sectors, the progressive outfit designs and implements dynamic global strategies, but truly thrives when getting to grips with the intricacies of advanced technologies. Dragos Vilau has become intimately familiar with the inner workings of regional laws over his 20-plus year career and can adroitly navigate clients around any pitfalls that may arise.
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Romania Zamfirescu Racoți Vasile & Partners
When it comes to complex patent matters, Zamfirescu Racoți Vasile & never falters; as one client comments: “It is always comforting to have them by my side and I trust them to provide the best advice possible.” Its skilled and flexible advisers attract glowing praise from the market. “Calin-Andrei Zamfirescu is the most prominent and talented lawyer in Romania; he always finds the most appropriate way to defend IP rights. When Calin is on your side, success is assured.” For sensitive cases, Cosmin Vasile is the person to call: “He is a true strategic expert, incredibly passionate, spectacular in court and determined to obtain the best results.” Rounding off the troop, Alina Tugearu is “dedicated, hands-on and has excellent
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advocacy”, reports one client. “Our positive results are a direct result of the team’s strategic vision and firm grasp of procedural law”.
Other recommended experts
At Lupsa & Associates, Ionut Lupsa leverages two decades of experience to deftly coordinate complex patent litigation and get commercially critical deals inked. Operating out of Radu Tărăcilă Pădurari Retevoescu, IP veteran and professor Lucian Mihai provides clear and succinct counsel that sits well with partners and clients alike.
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Russia
Thanks to a combination of the COVID-19 pandemic, ongoing US sanctions, the 2020 oil price war with Saudi Arabia and other economic factors, Russian industry has had a torrid year. Investment remains low and patent filings appear to be on the decline as a result. However, several positive changes should have lasting effects well beyond this challenging period – most notably, electronic filings are now possible, enhancing the efficiency of the IP system. Additionally, due to the pandemic, 30% of administrative proceedings before the Chamber of Patent Disputes were conducted via video conference in 2020, and it is now expected that video hearings will become a permanent fixture rather than a temporary workaround. Further changes in the pipeline include a new initiative that will allow Rospatent to outsource patent searches and substantive examination to accredited scientific organisations and universities.
A Zalesov & Partners Patent & Law Firm
Since it was established three years ago, A Zalesov & Partners has cemented its reputation as one of the most renowned IP boutiques in Russia. “Everything is handled with a high level of speed and efficiency, and the team shows initiative and facilitates communication,” report clients. “The experts intimately understand Russian patent law and know the pitfalls to avoid, examining different angles and leaving no stone unturned.” The outfit has recently acted in a string of patent invalidation cases on behalf of industry titans such as Philip Morris, Novartis and R-Pharm, the Russian distributor of Bristol Myers Squibb-produced cancer treatments. Founding partner Alexey Zalesov has made patent invalidation his specialism, having successfully invalidated more than 40 Russian and Eurasian patents since 1993. Educated at the Moscow Engineering Physics Institute, the engineering and physics don is described as a “superb litigator, experienced IP specialist and excellent team leader who handles all cases to a high standard”. The firm has also been chalking up the wins in patent infringement cases, going out to bat for Teva Pharmaceuticals against Hungarian company Geedeon Richter and bringing a two-year battle to close for AO Pharmasynthez. Leading on both matters was Irina Ozolina, who has appeared in more than 150 court and administrative IP disputes throughout her 18-year career and is also a safe pair of hands for transactional briefs. The similarly multi-talented Maria Makhlina combines patent litigation prowess with a keen nose for patent searching. She drafts watertight patent and industrial design applications for companies and inventors from Europe, the United States and Japan. See p914 for firm profile
ARS-Patent
The bespoke, A-to-Z offering at ARS-Patent makes it one of Russia’s premium patent firms, attracting the attentions of heavyweights such as Philips and
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Firms: prosecution Highly recommended Gorodissky & Partners
See p984
Gowling WLG Sojuzpatent
See p1066
Vakhnina and Partners Recommended Baker McKenzie Euromarkpat Hogan Lovells Patent & Law Firm YUS LLC PATENTUS PETOŠEVIĆ Skolkovo Intellectual Property Center
Xiaomi. Thorough and efficient filings – both in Russia and throughout the Eurasian Patent Convention region of seven other former Soviet republics – are a specialty. Ticking all boxes is managing partner and patent practice head Mikail Khmara, whose academic background in physics and fine-grained understanding of IP law make him ideally placed for briefs at every stage of the patent lifecycle. Kirill Osipov heads up the legal department and has the magic touch for life sciences players such as F Hoffmann-La Roche, having previously been a scientific researcher at the Institute of Experimental
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Russia Medicine in St Petersburg. Another mover and shaker in the life sciences space is genetic engineering specialist Ilyana Lipatova, who files and defends biotechnology, pharmaceutical, genetics and organic chemistry patents across Russia and Eurasia. Founding partner Vladimir Rybakov has seen and done it all throughout 30 years in the game, putting in polished performances at the Russian and Eurasian patent offices, before the courts and at the deal negotiating table.
Baker McKenzie
Global juggernaut Baker McKenzie provides the gamut of patent services from offices in Moscow and St Petersburg. Its airtight patent applications ensure that costly and time-consuming office actions are avoided; and should litigation arise, the team offers robust, well-informed representation. The decisions it has secured in the Russian IP Court have often influenced the approach of Rospatent; and it also has a flair for the fine print of complex technology transactions. Commonwealth of Independent States (CIS) IP head Eugene Arievich is hailed as “the grandfather of intellectual property in Russia”; peers report that he “provides effective and comprehensive responses to even the most complex patent litigation issues”. Leading on the litigation and enforcement side is the “talented” Denis Khabarov, a particular favourite of US pharmaceutical giants. His counterpart on the prosecution side, Yuri Pylnev, has had an illustrious career, having served as deputy director of Rospatent’s patent examination department and as IP head of the Russian Atomic Energy Agency. He draws on this experience to secure protection for inventions in fields as varied as telecommunications, pharmaceuticals and oil and gas. Working alongside him is fellow patent attorney Vladimir Belkov, whose practice has a biotechnology focus. For transactional issues, software and technology expert Margarita Divina is the one to call – she also has useful ancillary unfair competition knowledge and has made appearances before the Russian Antimonopoly Committee.
Euromarkpat
With eight bases located across Europe and Asia, Euromarkpat has enviable geographic reach, which it leverages astutely to provide a precision prosecution service. The Moscow contingent has been diligently and prolifically filing Russian and Eurasian patents and providing comprehensive support to innovators across the region since 1993. Today it is home to a technically proficient team of patent and
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trademark attorneys, several whom come equipped with doctorates.
Gorodissky & Partners
Gorodissky & Partners is feted as “the clear leader” in the Russian patent prosecution market: its stratospheric filing numbers eclipse those of the competition year after year. In 2019, for example, the firm processed a massive 43% of all patent applications that crossed the desks at Rospatent. Dedicated sub-departments for disciplines such as chemistry, biotechnology, electronics and physics, a specialist patent search department and advanced software platform Gorodissky IP Management make for a sophisticated service tailored to the individual needs of each client. Heading up the patent practice is electronics, computer systems and audio and video engineering maven Yury Kuznetsov, who covers all angles of oppositions and appeals before the Russian and Eurasian patent offices and undertakes meticulous IP due diligence work. Other star patent attorneys include Natalia Nikolaeva, Evgeny Alexandrov and Sergey Dorofeev. Nikolaeva is a font of wisdom for international players, advising on contentious matters across Russia and beyond; while PhD Alexandrov is an IP renaissance man whose practice encompasses patents, trademarks, software protection and trade secrets. Mechanics head Dorofeev has carved a niche in the oil and gas industry, where he undertakes administrative actions, litigation support and technology transfer briefs with verve. Also well versed in mechanics, as well as electronic engineering, is managing partner Valery Medvedev, who steers the ship with a steady hand while making light work of patent prosecution, infringement and technology transfer instructions. Spearheading the life sciences division, Elena Nazina devises future-proofed patenting programmes in the pharmaceutical, veterinary, and crop protection spaces, and puts in frequent appearances at Rospatent and in the commercial courts. For transactional matters, look no further than Sergey Medvedev, who recently advised Huawei on a significant cross-border deal: “Sergey provides the full scope of services, has deep knowledge of the Russian market and is available round the clock, adapting to changes in circumstance on a same-day basis.” See p984 for firm profile
Gowling WLG
For support at every stage of the patent lifecycle, Gowling WLG is a persuasive option – it is as confident handling sweeping worldwide portfolios as it is duking it out in court at a domestic and international
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Russia level. Prestigious recent instructions include taking care of prosecution for Russian state nuclear agency Rosatom at home and abroad; and filing several patent applications for Honeywell International in relation to refrigerant fluids and insulation materials. Responsible for both briefs is David Aylen, who has spent the last 12 years of his three-decade career as managing partner of the firm’s Russia/CIS office. He operates flawlessly on both sides of the contentious/ non-contentious divide, and since arriving in Russia has made a significant contribution towards improving the country’s IP legal landscape. Fulsome support comes from fellow all-rounders Vladislav Ugryumov and Alexander Christophoroff. Disputes, IP due diligence and licensing are all in a day’s work for life sciences sage Ugryumov; while Christophoroff is a dual-qualified patent attorney and attorney at law who has set precedents both in the general and commercial courts and at Rospatent. On the pure prosecution side is electronics, software and mechanics ace Vitaliy V Lebedev, who gained crucial insight from a stint as a patent examiner at Rospatent and from his work as a patent specialist for a Russian aircraft manufacturer.
Hogan Lovells
The IP practice at Hogan Lovells enjoys a stellar reputation across Europe and beyond, and the Moscow team is no exception. Its A-to-Z offering encompasses the astute development and protection of patent portfolios, the formulation of multijurisdictional enforcement strategies and potent contentious capabilities – its tenacious litigators frequently defend high-multinationals against attacks from Russian non-practising entities. In recent months, the firm has been doing battle for healthcare titans Bristol Myers-Squibb, Novartis, Astellas Pharma and Johnson & Johnson in commercially critical patent infringement disputes against generics producers – a campaign masterminded by Natalia Gulyaeva and Vironika Pilyugina. Qualified in both Russian and English law, managing partner Gulyaeva stands out for her seamless coordination of crossborder disputes and incisive guidance across sectors from life sciences to telecommunications. Righthand-woman Pilyugina enters the IAM Patent 1000 on a wave of praise for her portfolio management prowess and her staunch representation of pharmaceutical, automotive and consumer goods clients before Rospatent, the commercial courts, the customs authorities and the Russian Antimonopoly Committee.
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Firms: litigation and transactions Baker McKenzie Gowling WLG Hogan Lovells A Zalesov & Partners Patent & Law Firm
See p914
ARS-Patent Gorodissky & Partners
See p984
Patent & Law Firm YUS LLC PATENTUS Vakhnina and Partners
Firms: prosecution ARS-Patent Papula-Nevinpat
Papula-Nevinpat
Finnish headquartered Papula-Nevinpat has had boots on the ground in Russia for the last 30 years, during which time it has turned prosecution into an art form for the benefit of corporations from Europe and further afield. Tobacco, energy and pharmaceutical multinationals have the firm on speed dial for its meticulous approach and technical insight in disciplines ranging from mechanics to electronics and life sciences. At the vanguard is veteran patent attorney Alexander Polikarpov, a familiar face at Rospatent who has perfected the drafting of Russian (and previously Soviet) patent applications during a career which began back in 1965.
Patent & Law Firm YUS LLC
Home to eight Eurasian patent attorneys and an impressive 25 Russian patent and trademark attorneys, Patent & Law Firm YUS provides a full-bodied patent prosecution service to a glittering international clientele. Samsung Electronics, Nestlé, Xiaomi and Airbus are among those which call on the firm for Russian patent filings; while German bottlecap manufacturer Alcopack and Russian food supplement business Biokor have also enlisted it to defend their
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Russia Mark Chizhenok Ivanov, Makarov & Partners
Individuals: litigation Highly recommended
Denis I Khabarov Baker McKenzie
Eugene A Arievich Baker McKenzie
Dmitry Markanov PATENTUS
Alexander Christophoroff Gowling WLG
Alexey Mikhailov PATENTUS
Natalia Gulyaeva Hogan Lovells
Irina Ozolina A Zalesov & Partners Patent & Law Firm See p748
Vladislav M Ugryumov Gowling WLG Aleksey Zalesov A Zalesov & Partners Patent & Law Firm See p749 Recommended Evgeny Alexandrov Gorodissky & Partners
See p738
David Aylen Gowling WLG Alexander Baranchikov Baranchikov IP & IT Attorneys
patents and industrial designs at Rospatent. Head of inventions Denis Levchuk garners rave reviews: “Denis and his team have a personal approach and a modern way of thinking, which make it very easy to communicate. He has good social skills, his work is of a high quality and he has an extensive international network.” On the transactional side, Andrei Svistov has recently helped to get lucrative licensing deals inked on behalf of Nestlé, Bristol Myers Squibb and S7 Airlines.
PATENTUS
Litigation is a central pillar at PATENTUS, which earns kudos from competitors for its formidable contentious capabilities. However, its offering is reassuringly well rounded: this year it has also been busy filing patents for players such as oil and gas firm Blackjack Production Tools, seafood producer Dalpromryba and medicinal chemical manufacturer Severnaya Zvezda ZAO. Handling all of these matters is head of patents and life sciences whizz Alexey Mikhailov, who is praised by peers as a “standout practitioner”; he draws on his enforcement nous to devise bulletproof patenting strategies. He recently teamed
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Vironika Pilyugina Hogan Lovells Yuri Pylnev Baker McKenzie Konstantin Suvorov Kosenkov & Suvorov Tatyana Vakhnina Vakhnina and Partners
up with Dmitry Markanov to defend Northern Star Pharmaceutical company in an IP Court case which hit the headlines when the Eurasian Patent Office stepped in as a third party on the opposing side. Managing partner Markanov previously led the in-house IP department of a Russian automotive company and has acted in hundreds of IP Court cases over his storied career.
PETOŠEVIĆ
PETOŠEVIĆ has a total of 30 patent attorneys, agents and consultants on deck across its network of 16 Eastern European bases, the newest of which was set up in Kazakhstan in May 2020. This reach is further extended by close affiliations with top firms in jurisdictions such as Armenia, the Czech Republic, Moldova and Turkmenistan. In Moscow, 10 lawyers and paralegals provide commercially focused patent prosecution services in fields as varied as food and drink, machinery, chemistry and agriculture. Making the magic happen is Ivan Nagornykh, a former Rospatent examiner who handles national and Eurasian patent applications on behalf of many European IP firms, as well as innovators in the mechanics, medical equipment, IT and electronics spaces.
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Russia Individuals: prosecution Highly recommended Yury Kuznetsov Gorodissky & Partners
See p742
Denis Levchuk Patent & Law Firm YUS LLC
Sergey Dorofeev Gorodissky & Partners
See p740
Tamara S Fomicheva Sojuzpatent
See p741
Natalia Gulyaeva Hogan Lovells Mikhail Khmara ARS-Patent
Vladislav M Ugryumov Gowling WLG
Dmitry Kotlov Skolkovo Intellectual Property Center
Alexey Vakhnin Vakhnina and Partners Recommended
Vitaliy V Lebedev Gowling WLG
Oleg Abramenko Baranchikov IP & IT Attorneys
Ilyana Lipatova ARS-Patent
David Aylen Gowling WLG
Maria Makhlina A Zalesov & Partners Patent & Law Firm See p743
Vladimir Belkov Baker McKenzie
Valery Medvedev Gorodissky & Partners
Olga Dolgikh Zuykov and partners
See p739
Skolkovo Intellectual Property Center
Located in the Skolkovo Innovation Centre, Russia’s answer to Silicon Valley, IP Centre Skolkovo is ideally placed to nurture the home-grown unicorns of tomorrow, while also tending to the needs of myriad international players. One of the top 10 filers at Rospatent, the outfit has lately handled applications for the likes of electronics giant ZTE, food manufacturer Orion and Russian pharmaceutical company FusionPharma; while on the contentious front, it represented biotechnology group JSC Bioamid in a patent invalidation action. For almost two decades, managing partner Anton Pushkov has helped clients to maximise the value of their intangible assets, from conception and registration all the way through to enforcement and licensing. At his side is patent practice head Dmitry Kotlov, who brings an extra dimension to the practice as a former state expert at Rospatent. He processes patent applications and conducts patent landscape analysis with a hawkish eye for detail, while also appearing in administrative proceedings.
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See p744
Alexey Mikhailov PATENTUS
Sojuzpatent
Established after the dissolution of the Soviet Union, Sojuzpatent is the oldest IP firm in Russia and today remains one of the country’s elite prosecution players, processing more than 2,000 national patents over a 12-month period. Its deep bench of practitioners has all technical bases covered for a high-profile client base: the group has recently undertaken patent filings for household names such as Sony, Honeywell, Huawei and Renault; and orchestrated infringement actions for Russian mobile network operator TELE-2 and home heating device company ATM. Captaining the patent department is deputy managing partner Tamara Fomicheva, who holds a PhD in chemistry and was previously head of the organic compounds department at Rospatent. See p1066 for firm profile
Vakhnina and Partners
“A dependable and diligent firm whose service is prompt and customised, Vakhnina and Partners demonstrates a high level of patent drafting and prosecution expertise, provides detailed advice on
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Russia Mikhail Mozhaisky Mozhaisky IP
Individuals: transactions Highly recommended
Ivan Nagornykh PETOŠEVIĆ Elena Nazina Gorodissky & Partners
Margarita Divina Baker McKenzie See p746
Recommended
Kirill Osipov ARS-Patent
Alexander Christophoroff Gowling WLG
Vironika Pilyugina Hogan Lovells
Sergey Dorofeev Gorodissky & Partners
Alexander Polikarpov Papula-Nevinpat
Natalia Gulyaeva Hogan Lovells
Anton Pushkov Skolkovo Intellectual Property Center
Sergey Medvedev Gorodissky & Partners
See p745
Yuri Pylnev Baker McKenzie
Natalia Nikolaeva Gorodissky & Partners
See p747
Vladimir Rybakov ARS-Patent
Vladimir Rybakov ARS-Patent
Elena Utkina Vakhnina and Partners
Andrey S Svistov Patent & Law Firm YUS LLC
litigation and always considers the particularities of Russian law. It is impossible to overemphasise the high quality of its work.” Colgate Palmolive, Xiaomi and Asian healthcare company UNICHARM all appreciate its support with patent applications and oppositions; while on the contentious front, its advocates have been bringing the heat in a range of invalidation suits. Giving the group its name is founding partner and law PhD Tatyana Vakhnina: “She is accurate and helpful, always performs in the best interests of her clients and will always find a solution for any problem or challenge.” Co-founder Alexey Vakhnin also holds a PhD – this time in medicine and biochemistry – and is hailed as “one of the best in Russia, especially for pharmaceutical and herbicide patents”. “Alexey is an extremely dynamic professional, who is zealous about his work and profession – an excellent patent attorney with outstanding client-facing skills. His ability to generate options and manage client expectations is also outstanding. He is always well informed and has a deep understanding of IP law in Russia and the surrounding region. His energy, enthusiasm
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Alexey Vakhnin Vakhnina and Partners
and die-hard attitude make him a winner.” He has recently been dealing with Colgate’s prosecution and opposition needs alongside patent department head and chemistry PhD Elena Utkina, who earlier in her career was a deputy director of the Russian Patent Office, and acted as a major developer of the Patent Prosecution Highway between the Russian and Japanese PTOs.
Other recommended experts
Based at Baranchikov IP & IT Attorneys, Oleg Abramenko is a software expert and talented mathematician who gets optimum results on prosecution and licensing briefs in the IT field. Also at Baranchikov, the eponymous Alexander Baranchikov puts in resonant performances in IPrelated administrative proceedings and litigation; his linguistic command of Spanish and Chinese is an added bonus for international clients. Ivanov, Makarov & Partners co-founder Mark Chizhenok
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Russia has played a role in many precedent-setting patent disputes in the chemistry space and comes highly recommended by UK colleagues. At Zuykov & Partners, mechanical engineer Olga Dolgikh is as confident prosecuting patents as she is defending them, especially in the software field. She also boasts valuable industry experience from a stint at an automotive and tractor electrical equipment company. Formerly a mechanical engineer, Mikhail Mozhaisky is a Swiss Army knife of a patent
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lawyer who files patents in areas from aerospace to telecommunications, acts in infringement revocation actions and advises on licence and technology transfer agreements; he is founder and managing partner of Mozhaisky IP. Kosenkov & Suvorov’s Konstantin Suvorov is a trusted adviser to pharmaceutical, high-technology and oil and gas companies, at both a domestic and international level; IP litigation and unfair competition matters both fall within his bailiwick.
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Alexandrov, Evgeny Partner – Gorodissky & Partners alexandrove@gorodissky.com | www.gorodissky.com
Evgeny Alexandrov (PhD) is a partner, trademark attorney and head of the legal, trademark and design practice at Gorodissky & Partners. He graduated from the Russian State Academy of Intellectual Property. Mr Alexandrov has extensive experience in representing large Russian and international companies in courts in cases connected with the illegal registration of trademarks, against parallel import, the illegal use of trademarks and domain names on the Internet, patent infringement cases and others. He serves clients from various industries such as fast-moving consumer goods, automotive production, consumer goods, information technology, pharmaceutics, electronics, toys and watchmaking. He is a frequent speaker at IP conferences and seminars in Russia and abroad, and author of a number of publications. He is listed among the best IP lawyers in the world’s most respected legal rankings. Specialties • Patents • Trademarks • Copyright and neighbouring rights • Software protection • IP contracts • Legal representation and dispute resolution • Advertising and unfair competition • Anti-counterfeiting Professional associations • INTA • International Association for the Protection of Intellectual Property • Licensing Executives Society International • American Intellectual Property Law Association (AIPLA) • Pharmaceutical Trademarks Group • Russian Chamber of Patent Attorneys
Gorodissky & Partners B Spasskaya Str 25 bldg 3 Moscow 129090 Russia T +7 495 937 6116 F +7 495 937 6104 See firm profile p984 Professional associations • AIPPI • INTA • PTMG
Nominations • Member of INTA Internet Committee since 2015 • Member of AIPLA International and Foreign Law Committee since 2015 • Specialist in the Field of IP Disputes at Russian Arbitration Centre since 2018
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Dolgikh, Olga Head of Patents – Zuykov and partners LLC dolgikh@zuykov.com | www.zuykov.com
Olga Dolgikh graduated from the Donbass State Engineering Academy as a mechanical engineer in 2000. In 2003 she graduated from the Russian State Academy of Intellectual property, entitling her to work in the field of legal protection and use of intellectual property. In 2010 she qualified as a Russian patent attorney. In addition to her native Russian, Ms Dolgikh speaks fluent English and Ukrainian. Ms Dolgikh joined Zuykov and partners in 2016 and in 2017 was appointed head of the firm’s patent department. In that role, she manages the work of the patent team, enforces deadlines, proofreads documents, counsels clients, participates in meetings with clients and on clients’ behalf; and represents clients in disputes. Her practice specialises in: • conducting various kinds of patent search on inventions and utility models, such as searches on patentability, prior art and freedom to operate; • drafting, preparing and filing patent applications for inventions, utility models, software and database at the Russian Trademark and Patent Office (RuPTO); • drafting, preparing and filing patent applications for inventions at the Eurasian Patent Office (EAPO); • handling the national/regional phases of PCT applications at the RuPTO/EAPO; • preparing responses to office actions and notifications for inventions, utility models, software and database applications; • filing PCT applications; • paying patent annual maintenance fees; • handling any changes in patent holders’ information (eg, name/ address); and • conducting patent dispute and cancellation proceedings.
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Zuykov and partners LLC Grokholskiy per 28 Moscow 129090 Russia T +7 495 775 16 37
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Dorofeev, Sergey Partner – Gorodissky & Partners dorofeevs@gorodissky.com | www.gorodissky.com
Sergey Dorofeev is a partner, a Russian and Eurasian patent attorney, a Russian trademark attorney and the head of the mechanics department at Gorodissky & Partners. He graduated from Moscow Power Engineering University as an electromechanical engineer and later from the Central Institute of Intellectual Property in Moscow. Mr Dorofeev has extensive experience in patenting related to oil and gas mining, chemical industries, manufacture of machinery and equipment, light and food industries, printing equipment, electromechanics and technology transfer. He counsels leading Russian companies on patent portfolio development and patent strategy in Europe, the United States, Canada, Japan and China. He also represents clients in appeal proceedings before the European Patent Office and the Russian Patent and Trademark Office, advises on and assists with IP rights infringement, and participates as a court expert in patent infringement cases. He is a frequent speaker at IP conferences and seminars in Russia and abroad, and the author of a number of publications. Mr Dorofeev is listed among the best patent practitioners in the world’s most respected legal rankings. Areas of patent expertise • Crude oil and natural gas • Extraction of oil from shale • Drilling for oil, gas and shale • Manufacture of pulp, paper and paperboard • Manufacture of petrochemicals • Chemical industries • Production of basic chemical products • Production of industrial gases • Production of dyes and pigments • Manufacture of elevators and lifts • Manufacture of industrial cooling and ventilation equipment • Automatic vending machines and automatic banking machines • Manufacture of machinery and equipment for agriculture and forestry • Manufacture of tractors and farming equipment • Manufacture of machinery used in the cultivation of plants • Manufacture of motor vehicles, trailers and semi-trailers • Manufacture of internal combustion engines for motorised vehicles • Manufacture of passenger cars • Manufacture of buses and trolley buses • Manufacture of trucks • Manufacture of special-purpose motorised vehicles
Gorodissky & Partners B Spasskaya Str 25 bldg 3 Moscow 129090 Russia T +7 495 937 1156 F +7 495 937 6104/23 See firm profile p984
Professional associations • Licensing Executives Society (LES) International • International Association for the Protection of Intellectual Property • Council of Eurasian Patent Attorneys • President of LES Russia
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Fomicheva, Tamara S Deputy Managing Partner – Sojuzpatent fomitcheva@sojuzpatent.com | www.sojuzpatent.com
A Russian patent attorney (covering inventions and utility models) and an Eurasian patent attorney, Tamara Fomicheva holds a PhD in chemistry, a master’s from the DI Mendeleev Institute of Chemical Technology in Moscow (engineer-chemist), a diploma from the Russian State Institute of Intellectual Property Protection (patent expert) and a diploma from the High School of Foreign Languages of the Ministry of the Foreign Economic Relations of the Russian Federation. Dr Fomicheva’s previous experience includes the position of deputy head of the Organic Compounds Department of the Russian Patent Office and member of the Supreme Patent Chamber of the Russian Patent Office. Prior to that, Dr Fomicheva had worked as a research assistant at the Scientific and Research Institute ChimPolymer and IREA. Dr Fomicheva has authored more than 10 publications in the field of chemistry, including legal aspects. Dr Fomicheva has vast experience in patenting inventions and utility models in Russia and abroad, representing clients’ interests before both courts and administrative bodies. Dr Fomicheva joined Sojuzpatent in 1999 and was quickly promoted to partner and later deputy managing partner – head of the patent department.
Sojuzpatent Myasnitskaya Street 13 Building 5 Moscow 101000 Russia T +7 495 221 8880 See firm profile p1066 Professional associations • Russian Patent Attorneys Association Sample client list • Arkema • DSM • Honeywell UOP • Nestlé • PPG Industries • Sabic • Shell
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Kuznetsov, Yury Partner – Gorodissky & Partners kuznetsovy@gorodissky.com | www.gorodissky.com
Yury Kuznetsov is a partner, a Russian and Eurasian patent attorney, and the head of Gorodissky & Partners’ patent practice. He holds an engineer diploma from the Moscow State Technical University and a diploma in law from the Moscow State Legal Academy. He obtained further qualifications from the Centres of Scientific Technical and Patent Information of the Engineering Universities of Merzeburg and Ilmenau (Germany), completed a course on patent search and examination procedure at the European Patent Office in The Hague and Vienna, and studied IP law at John Marshall Law School, Chicago. Mr Kuznetsov specialises in patenting in the fields of electronics, communications, computer systems, audio and video engineering. He counsels on IP rights protection and intellectual asset management, provides technical and legal due diligence, and advises on licensing and technology transfer. Mr Kuznetsov is listed among the best patent lawyer practitioners in the world’s most respected legal rankings. Areas of patent expertise • Computer terminal and other computer peripheral equipment manufacturing • Electricity distribution and control apparatus • Semi-conductor components • Piezo-electrical crystals • Integrated circuits, micro-assembles and micro-modules • TV and radio transmission equipment, telecommunications apparatus • Radar, radio navigation apparatus and remotely control radio equipment • Instruments and apparatus for the automated regulation and control • Apparatus and instruments for measuring, monitoring, navigating, testing, controlling and other purposes • Manufacture of weapons and ammunition • Manufacture of aircraft and spacecraft • Manufacture of flight simulators for the training of crew members along with related components and replacement parts
Gorodissky & Partners B Spasskaya Str 25 bldg 3 Moscow 129090 Russia T +7 495 937 6116 See firm profile p984
Professional associations • International Federation of Intellectual Property Attorneys • Licensing Executives Society International • International Association for the Protection of Intellectual Property • Chamber of Patent Attorneys • Council of Eurasian Patent Attorneys
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Makhlina, Maria Partner – A Zalesov & Partners Patent & Law Firm makhlina@azalesov.com | www.azalesov.com
Maria Makhlina joined A Zalesov & Partners Patent & Law Firm as a partner in 2017. She had previously worked for one of Russia’s major IP law firms for over 10 years, during which she specialised in patent searches, freedom-to-operate and validity opinions, as well as IP litigation and consulting. Her extensive experience conducting patent litigation before the Russian Chamber for Patent Disputes and the courts of Russia, Ukraine and Kazakhstan in different fields of art and technology led to her appointment as head of patents at A Zalesov & Partners. Ms Makhlina always acts strategically in the interests of her clients offering various arguments in favour of patenting abroad, as well as with the Russian Patent and Trademark Office (RUPTO) and the Eurasian Patent Office. Ms Makhlina extensive experience extends to industrial designs including protection under the Hague Agreement for Russian and foreign clients. She has helped establish the RUPTO practice in this area by devising solutions with RUPTO experts in the most complex cases. As a Russian and Eurasian patent attorney, Ms Makhlina is qualified to handle all specialisations available under Russian legislation. She also deals with applications for plant varieties and computer programs – meaning that her team of patent attorneys covers all fields of science and technology, including registration of plant varieties and software programs. She also represents and assists foreign clients, in particular Japanese and European companies, with patent litigation. Ms Makhlina graduated from the Moscow Engineering and Physics Institute as a specialist in international scientific and technological cooperation and holds a lawyer’s diploma from the Russian Academy of Intellectual Property. She is a member of the International Association for the Protection of Intellectual Property, INTA, and the Russian Chamber of Patent Attorneys.
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A Zalesov & Partners Patent & Law Firm Marshala Rybalko str, 2 bld 9, office 535 Moscow 123060 Russia T +7 495 781 6080 See firm profile p914 Professional associations • AIPPI • INTA • Russian Chamber of Patent Attorneys
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Medvedev, Valery Managing Partner – Gorodissky & Partners pat@gorodissky.com | www.gorodissky.com
Valery Medvedev is the managing partner of Gorodissky & Partners. A Russian and Eurasian patent attorney and a trademark attorney, he started his career in the IP field in 1981 after graduating in engineering from the Moscow Aviation Institute. Mr Medvedev has extensive international patent experience, with one of his primary focuses being the prosecution and enforcement of patent rights in mechanics and electrical engineering. He is also skilled in trademark proceedings and IP rights infringement cases, supervising the most sophisticated and important cases and clients personally. In addition, he is actively involved in intellectual asset management, technology transfer and licensing. Mr Medvedev counsels clients from the following business areas: fast-moving consumer goods, food and beverages, pharmaceuticals, electronics, manufacture of pumps, compressors and hydraulic systems, lifting and handling equipment, machine tools, electricpowered machines and equipment, and many others. He is a frequent speaker at international conferences and seminars, and a regular contributor to Russian and international IP publications. Mr Medvedev has repeatedly been listed as a leading IP lawyer in the world’s most respected legal rankings. Specialties • Patents in the field of mechanical and electrical engineering • Trademarks • IP rights protection • Intellectual asset management • Licensing and technology transfer
Gorodissky & Partners B Spasskaya Str 25 bldg 3 Moscow 129090 Russia T +7 495 937 6116 See firm profile p984
Nominations • Member of the editorial board of The Patent Lawyer • Collegium (executive body) of the Russian Patent and Trademark Office Memberships • International Association for the Protection of Intellectual Property • International Federation of Intellectual Property Attorneys Russia • Licensing Executives Society Russia • INTA • Chamber of Patent Attorneys • Council of the Eurasian Patent Attorneys
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Medvedev, Sergey Partner – Gorodissky & Partners medvedevs@gorodissky.ru | www.gorodissky.com
Sergey Medvedev is a partner, a trademark and design attorney, and the deputy head of the legal department at Gorodissky & Partners. Mr Medvedev graduated in 2006 from MGIMO University. He obtained an LLM from the John Marshall Law School in 2007 and a PhD from the Russian State Academy of Intellectual Property in 2012. He joined Gorodissky & Partners in 2007 and in 2019 was promoted to partner. Mr Medvedev has extensive experience in representing clients in various courts of the Russian Federation. He has represented large German, Japanese, Russian, US and UK companies from such business sectors as finance, plastic production, food industry, sports and entertainment, hotel and restaurant business and many others, in cases concerning the protection of trademark rights, against counterfeiting, parallel import, illegal use on the Internet, on the protection of patent rights, software rights, in disputes regarding the recovery of debts under patent license agreements and franchising agreements. Nominations • Guest speaker at M-Logos Law University since 2011 • Guest speaker at the Higher School of Economic,s National Research University since 2012 • Guest speaker at the Institute of Modern Educational Technology since 2014 • Guest speaker at the Russian School of Management since 2017 • Guest speaker at the LF Academy since 2019 • Data protection contributor (Russia) with DataGuidance (by One Trust) since 2016 • Uniform Rapid Suspension domain name resolution expert (arbitrator) with Italian alternative dispute resolution centre MFSD since 2017 • Member of the Board of Directors of the Russian Franchise Association since 2018 • Deputy chair of the IP Committee at the Franco-Russian Chamber of Commerce and Industry since 2019
Gorodissky & Partners 25 B Spasskaya Str Building 3 Moscow 129090 Russia T +7 495 937 1165 F +7 495 937 6104 See firm profile p984 Professional associations • ABA • IFA • LES International
Specialties • Intellectual property and information technologies • Trademarks, industrial designs, software, databases and domain names • Internet, e-commerce and data protection • Advertising, unfair competition and media law • IP and IT transactions • Franchising, distribution and outsourcing • IP and IT due diligence • Litigation and dispute resolution • Customs law and anti-counterfeiting • Copyright, related rights and anti-piracy
www.IAM-media.com
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Nazina, Elena Partner – Gorodissky & Partners nazinae@gorodissky.com | www.gorodissky.com
Elena Nazina is a partner, a Russian and Eurasian patent attorney and the head of the chemical and life sciences department at Gorodissky & Partners. She graduated from D Mendeleyev University of Chemical Technology of Russia and later from the Franklin Pierce Law Center. Ms Nazina specialises in patenting low-molecular organic compounds, biologically active substances (in particular intermediates and dyes), pharmaceuticals (including preparations for animal use), pesticides, agrochemicals, detergents, disinfectants, cosmetics and perfumes, products of oil and gas refining, methods, technologies of their acquisition, separation, analysis and application. Ms Nazina counsels Russian and international companies on forming a patent strategy in Russia and abroad. She represents clients in objection proceedings before the Russian Patent and Trademark Office and the courts, and in patent infringement proceedings; she provides technical and legal evaluation for large Russian, US, European and Japanese companies and advises on patent infringement and potential third party’s rights infringement. Areas of patent expertise • Crude oil and natural gas • Drilling for crude oil, gas and shale • Manufacture of petrochemicals • Chemical manufacturing • Production of basic chemical products • Production of dyes and pigments • Manufacture of basic organic chemical products • Manufacture of fertilisers and nitrogen compounds • Chemical pesticides and related agrochemical products • Manufacture of paint and other surface coatings • Manufacture of pharmaceutical preparations and related materials • Manufacture of medicines • Detergents, cleaning and polishing preparations • Manufacture of cosmetics, perfumes and related toiletries • Manufacture of lubricants, additives for lubricants and anti-freeze
Gorodissky & Partners B Spasskaya Str 25 bldg 3 Moscow 129090 Russia T +7 495 937 6116 F +7 495 937 6104/23 See firm profile p984
Professional associations • Chamber of Patent Attorneys • Council of Eurasian Patent Attorneys • International Association for the Protection of Intellectual Property
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Nikolaeva, Natalia Partner – Gorodissky & Partners nikolaevan@gorodissky.com | www.gorodissky.com
Natalia Nikolaeva is a partner, trademark attorney and lead lawyer at Gorodissky & Partners. She graduated from Lomonosov Moscow State University in 1999 and joined Gorodissky & Partners the same year; she became a partner in 2010. Ms Nikolaeva counsels on all aspects of intellectual property, including patents, know-how and trademarks. She also advises clients on IP rights transfer issues (licences, assignments), and due diligence and enforcement throughout Russia and the Commonwealth of Independent States. In addition, she assists with IP enforcement and anti-piracy and handles all types of IP infringement cases before the courts and administrative bodies. She counsels clients from the following business areas, among others: agriculture, automotive production, e-commerce system, fast-moving consumer goods, finance and investment, electronics, exploration and extraction of minerals, food production, construction, media and e-communications, pharmaceuticals, information technology, real estate, transportation, tobacco products and equipment, and textiles. Ms Nikolaeva is a regular speaker at conferences and seminars on the enforcement of IP rights in Russia and abroad, as well as a frequent contributor to Russian and international magazines. She has been repeatedly recognised as a leading IP lawyer by the world’s most respected legal rankings.
Gorodissky & Partners 46, Deputatskaya Str office 1204 Business Center Citicenter Novosibirsk 630099 Russia T +7 383 209 3045 See firm profile p984
Specialties • Patents • Trademarks • Copyright and neighbouring rights • Software • IP contracts • IP audits • Legal representation and dispute resolution • Advertising and unfair competition • Anti-counterfeiting Membership • International Federation of Intellectual Property Attorneys
www.IAM-media.com
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Ozolina, Irina Senior Partner – A Zalesov & Partners Patent & Law Firm ozolina@azalesov.com | www.azalesov.com
Irina Ozolina is one of the founders and the senior partner of A Zalesov & Partners Patent & Law Firm, with extensive experience as an IP litigator. Ms Ozolina has represented clients in numerous court and administrative patent, trademark and copyright disputes on enforcement and validity issues. She has supported major foreign and local clients in forming and implementing their IP enforcement strategy in Russia for many years. She has also acted as litigation counsel in numerous proceedings before the Federal Antimonopoly Service in unfair competition disputes and represented clients before the Supreme Court of the Russian Federation. Ms Ozolina’s professional achievements include: • being part of Aleksey Zalesov’s team that obtained substantial moral damages for the first time before a Russian court for their inventor client in a pharmaceutical patent infringement case in 2004; • being deeply involved in the first telecoms patent infringement case in Russia from 2012 to 2014, where FRAND (fair, reasonable and non-discriminatory) issues were first discussed before the Russian courts; • receiving a special award from a client (major local manufacturer of specialised machinery) in 2014 for her assistance in ending a 10-year dispute over an employee’s inventorship – in this case, the presidium of the IP Court first thoroughly established the circumstances to be proven in this type of dispute; and • successfully defending patent infringement disputes in which a doctrine of equivalents was construed by a court. Ms Ozolina graduated from the Moscow State Academy of Law with distinction and later from the Russian Intellectual Property Academy. She is a registered Russian patent, trademark and design attorney, and a registered attorney at law (Moscow Bar Association). Ms Ozolina is a frequent contributor to Russian and foreign IP publications, and a speaker at national IP events; she has vast experience in running educational seminars on IP matters for Russian scientific and industrial entities. She also helped prepare a monograph for the Austrian Chamber for Commerce and Industry on IP protection in Brazil, Russia, India and China.
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A Zalesov & Partners Patent & Law Firm Marshala Rybalko Street 2 Building 9 Office 535 Moscow 123060 Russia T +7 495 781 6080 See firm profile p914 Professional associations • AIPPI • INTA • Russian Chamber of Patent Attorneys
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Zalesov, Aleksey Managing Partner – A Zalesov & Partners Patent & Law Firm zalesov@azalesov.com | www.azalesov.com
Aleksey Zalesov is the managing partner of A Zalesov & Partners and a Russian patent, trademark and design attorney, as well as a Eurasian patent attorney and attorney at law. In addition to an LLM from the Moscow Academy of Law and a JD from the Russian Institute of Intellectual Property, Dr Zalesov holds a master’s in physics from the Moscow Physics Engineering Institute. Dr Zalesov is a member of the Council on Intellectual Property of the Council of the Federation, one of the key contributors to the amendments to the Federal Law on Patent Attorneys, and an expert of the Quality Council of Rospatent. Dr Zalesov has practised IP law since 1993 and has dealt with more than 480 judicial and administrative disputes protecting the rights and interests of key players in the IP field, as well as protecting them against unfair competition. Dr Zalesov has extensive experience in patent litigation, including infringement and validity trials. Dr Zalesov supervises the firm’s entire practice, concentrating his professional efforts in patent litigation and invalidation disputes, especially in the life sciences. He also takes an active part in the most important trademark invalidation and litigation cases for the firm’s key clients. Dr Zalesov has prevailed in many precedent-setting cases, including: • Russia’s first successful online trademark enforcement action and recovery of damages; • Russia’s first successful database copyright enforcement, with significant damages recovered; • Russia’s first successful recovery of moral damages in a patent infringement case; and • Russia’s first successful enforcement of an appellation of origin.
A Zalesov & Partners Patent & Law Firm Marshala Rybalko Street 2 Building 9, Office 535 Moscow 123060 Russia T +7 495 781 6080 See firm profile p914 Professional associations • AIPPI • FICPI • Russian Chamber of Patent Attorneys
He is the vice president of the Russian national group of the International Association for the Protection of Intellectual Property – after serving as president of the group for many years before 2020 – and vice president of the Russian Chamber of Patent Attorneys, after serving as the chamber’s president between 2012 and 2018.
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South Africa
The hot news in South Africa is the Intellectual Property Policy (Phase 1), which was presented to Parliament on 3 November 2020 by the deputy director general of the Department of Trade, Industry and Competition. Among other things, the policy aims to encourage innovation and empower domestic stakeholders to take advantage of the country’s IP system. The downside, however, is that although the progression of legislation has been outlined and a Draft Patents Amendment Bill has been drawn up, it still needs to be submitted to the cabinet for approval and there is no indication of when this is expected to take place. In the meantime, practitioners have a lot to sink their teeth into, courtesy of the country’s thriving life sciences and technology industries, as they keep a watchful eye out for further updates regarding the IP Policy.
Adams & Adams
A “well-organised and effective firm”, Adams & Adams “works efficiently and responds quickly and with clarity, while making complex matters easy to digest – collaborating with the team is an absolute pleasure”. The side has 22 associate offices, enviable geographical reach and the technical nous to support industry leaders and Fortune 500 companies on everything from protection to enforcement and strategic management of IP risks. With Russell Bagnall, Dario Tanziani, Alexis Apostolidis and Danie Dohmen leading the line, complex infringement action is a forte. “Russell’s technical skill is magnificent and his arguments are super-focused as a result”; his business network also facilitates strategic global partnerships, which brings about successful outcomes in the United States and Europe. Tanziani is in his element assisting multinational pharmaceutical companies and setting litigation benchmarks; while Apostolidis puts together structured and succinct pleadings for life sciences companies and automotive giants. “Dohmen’s expertise is invaluable,” enthuses one rights holder. “He is a conscientious legal adviser and a versatile lawyer who generates great value for our company. The way he handles matters is exemplary and always to a high standard.” On the non-contentious side, Janice Galvad and Wilhelm Prozesky co-head the overseas filing section, which effortlessly dispatches briefs from international clients thanks to its streamlined internal processes. Patent department chair Galvad is a vital sounding board to both colleagues and patrons; while Prozesky always looks for ways to enhance the customer experience. For foreign entities seeking to file impeccably drafted applications across the continent, the person to call is Nicky Garnett, who heads up the Africa patents section and leverages her extensive regional connections to obtain optimum protection. A safe pair of hands for multinationals in the nuclear energy and radiochemistry industries, Pieter Visagie partners up with clients to build future-proofed
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Firms Adams & Adams
See p916
Spoor & Fisher Von Seidels ENSafrica KISCH IP Webber Wentzel Brian Bacon Inc De Beer Attorneys Hahn & Hahn Inc Smit & Van Wyk Inc
portfolio management strategies that consider their long-term business goals. “Proactive, efficient and personable”, Louis van der Walt interlaces his advice with insight gleaned from his previous position as a senior technical officer at a listed chemicals group; while seasoned mechanical engineer Colin MacKenzie is on hand for adroit, commercially focused portfolio management. With an affinity for electrical engineering, Johnny Fiandeiro, James Davies and Vishen Pillay have their fingers on the pulse of new technologies. Fiandeiro is a computerimplemented invention aficionado; while Davies has a flair for software creations. Pillay comes in for particular praise: “He is an excellent, if not the best, patent attorney in South Africa. Vishen’s advice is honest and business savvy, and he understands technically difficult inventions and translates them into world-class patent specifications.” See p916 for firm profile
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South Africa Brian Bacon Inc
Agile boutique Brian Bacon attracts a diverse range of patrons – including numerous generic drug manufacturers – from all over the world, thanks to the efficiency with which it secures and maintains IP rights. Its track record is nothing short of brilliant, with cast-iron patent protection procured for customers in over 140 jurisdictions. Further bolstering its capabilities, the group has forged a fruitful alliance with Themis Legal Advisors and Hayes Inc to boost its commercial law offering. Directors Vanessa Crease and Colin Truter form a dream team. Biotechnology ace Crease swiftly gets to grips with the nuances of complicated portfolios and dispenses on-point strategic guidance. Truter’s mechanical engineering nous shines through in the applications he drafts, while his industry experience gives him an intuitive grasp of customers’ inventions.
De Beer Attorneys
Individuals: prosecution Lance Abramson Spoor & Fisher Ursula Baravalle KISCH IP Elaine Bergenthuin De Beer Attorneys Lodewyk Cilliers Spoor & Fisher Sandra Clelland Von Seidels David Cochrane Spoor & Fisher
The IP department at full-service law firm De Beer Attorneys has a long list of high-flying clients that have been flourishing under the care of managing director Elaine Bergenthuin. The practice has been growing on both the contentious/noncontentious fronts, and a new online filing system is in development to accommodate independent applications and further refine its prosecution offering. Electronic engineer Bergenthuin brings valuable in-house insight to the table, having spent several years at a multinational information and communications technology company; coupled with a stint at a prominent London patent attorney firm, this guarantees a cosmopolitan, big-picture approach.
Vanessa Crease Brian Bacon Inc
ENSafrica
Rowan Forster ENSafrica
“ENSafrica resolves technical and commercial issues in highly complex and very sensitive matters in the most sophisticated manner. The team is one of the most competent and highly recommended in the country.” The firm has worked tirelessly to build up a fully integrated network of offices throughout Africa, all of which provide the full range of IP services. In Durban, Rowan Forster leads by example. Combining technical knowledge with a hands-on attitude, he distils complex technologies into meticulous patent applications for mining and agricultural players such as Omnia Holding and devises shrewd enforcement strategies for Investec Bank. Over in Cape Town, Joanne van Harmelen heads the biotechnology team: “Diligent and efficient, Joanne has a unique drafting style and an incredible capacity to grasp new concepts and propose clear strategies on what is patentable and what is not.” One of ENSafrica’s
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James Davies Adams & Adams Deon De Beer Deon de Beer & Assoc Inc Antony Dessington Dessington IP Johnny Fiandeiro Adams & Adams
Janice Galvad Adams & Adams Nicky Garnett Adams & Adams David Gilson Spoor & Fisher Tyron Grant Spoor & Fisher Chantal Hoffelner Smit & Van Wyk Inc
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South Africa Mark Kemp Spoor & Fisher Bastiaan Koster Von Seidels Adelhart Krüger KISCH IP Janusz Luterek Hahn & Hahn Inc Colin MacKenzie Adams & Adams Vishen Pillay Adams & Adams Wilhelm Prozesky Adams & Adams Gunther Roland Von Seidels Jaco Theunissen KISCH IP Colin Truter Brian Bacon Inc Érik van der Vyver Von Seidels Louis van der Walt Adams & Adams Joanne van Harmelen ENSafrica Ralph van Niekerk Von Seidels Wessel van Wyk Smit & Van Wyk Inc Pieter Visagie Adams & Adams
strengths is the seamless collaboration between the patent team and the firm’s commercial IP unit and its two stars, Waldo Steyn and André Maré. Steyn is lauded for his deep understanding of the business landscape, which he leverages to create
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added value for clients; while Maré has cultivated a diverse practice that encompasses domain name management and antitrust law, and brings a different dimension to the various agreements on which he advises.
Hahn & Hahn Inc
For 70 years, Hahn & Hahn Attorneys has been a prime destination for clear, straightforward, value-added IP services. The dynamic boutique is characterised by a robust prosecution offering, both nationally and internationally, but it also assists in litigation and has thus become a single point of contact for many prolific innovators. Janusz Luterek has carved out a niche in the food sector and spent several years in-house as a senior process engineer at APV International. His measured counsel is informed by this first-hand industry experience and inventors really appreciate his ability to get on their level.
KISCH IP
A fixture on the South African IP scene for more than 145 years, KISCH IP maintains a stellar reputation both locally and internationally for its potent prosecution and litigation capabilities. The side is lauded by peers as “a team of highly knowledgeable practitioners who are always collegial in negotiations and a joy to work with or against”. Under the command of chairman Adelhart Krüger, it has been busy locking down patents for chemical and engineering multinationals and defending the rights of clients of a similar calibre in tricky disputes. A lawyer and a patent attorney, executive committee chair At van Rooy utilises both qualifications to superb effect, particularly in the life sciences. The deep bench of talent at the firm also includes patent department head Ursula Baravalle and financial director Jaco Theunissen. Baravalle is trusted counsel to the country’s leading petrochemical company; while the “truly first-rate” Theunissen is “always on top of his game”.
Smit & Van Wyk Inc
Contemporary prosecution shop Smit & Van Wyk is dedicated to providing faultless IP support: “It stands out for its excellent service, accommodating practitioners and honest approach.” In this vein, the boutique has been implementing several new internal business intelligence systems that will further streamline its slick offering. Department head Chantal Hoffelner is a biotechnology guru who receives glowing praise from patrons: “What really sets Chantal apart, and what speeds up the process significantly, is her scientific background. She quickly
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South Africa Individuals: transactions
Individuals: litigation
Dina Biagio Spoor & Fisher
Russell Bagnall Adams & Adams
Llewellyn du Toit Von Seidels
Tim Ball Webber Wentzel
André Maré ENSafrica
Danie Dohmen Adams & Adams
John McKnight Spoor & Fisher
Hugh Moubray Spoor & Fisher
Leanne Mostert Webber Wentzel
Jonathan Whittaker Spoor & Fisher
Waldo Steyn ENSafrica
Alexis Apostolidis Adams & Adams
Jaco Theunissen KISCH IP
Rowan Joseph Von Seidels
Joanne van Harmelen ENSafrica
Dario Tanziani Adams & Adams
Bernadette Versfeld Webber Wentzel
At van Rooy KISCH IP
understands technical aspects and outlines the legal processes clearly. I truly wish all my interactions could be like this – she is outstanding.” This is a trait she shares with co-founder and electrical engineer Wessel van Wyk, “a very intelligent and reliable business partner. His professional knowledge is very accurate and his personal approach to every case makes him stand out”.
Spoor & Fisher
Celebrating its centenary in 2020, IP set-up Spoor & Fisher delivers a wall-to-wall patent service throughout Africa and further afield, through a fine-spun web of offices and alliances. It continually invests in technology to pursue greater efficiencies and has established a cross-practice technology team to pilot new tools and systems across the firm. For innovative nanotechnology companies, Mark Kemp and Lance Abramson are the main attraction. Kemp “delivers outstanding work on patent prosecution matters and is an excellent attorney whom clients can rely on”; while Abramson knows how best to help businesses extract maximum value from their assets. David Gilson also draws on almost three decades of
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experience to get applications through to grant; and Lodewyk Cilliers is a repository of trust for inventors in the mechanical field. The team also has expertise in the life sciences, with David Cochrane and IAM Patent 1000 newcomer Tyron Grant both authorities on the plant breeders’ rights and biological fields more broadly. Cochrane “is rated highly for his pharmaceutical patent knowledge”, while Grant specialises in biotech inventions. On the equally impressive contentious front, the “personable” Jonathan Whittaker “is a driving force of the litigation practice alongside the evergreen and bright Hugh Moubray”. The pair often link up on matters across a multitude of industries and are familiar faces before the Supreme Court of Appeal, where they have chalked up numerous victories during their illustrious careers. The firm also brings out the big guns in transactions in the form of John McKnight and Dina Biagio. McKnight “is excellent and knows how to challenge his opponents”; and Biagio “is an extremely diligent professional with a very commercial and practical approach that incorporates the strategic vision of the whole company.”
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South Africa Von Seidels
Ascending to the gold tier this year, Von Siedels is “an admirable practice with a team of top-notch, innovative and dynamic practitioners who have made waves on the market”. In 2020, the firm opened new offices in Nigeria and the Republic of Cameroon, and it remains a key contact for national and international clients seeking a springboard to the wider region. Leading the “energetic and hardworking” troop is consummate patent practitioner Érik van der Vyver: “He has excellent IP insight and builds excellent client relationships; he is someone you always hear good things about.” Between them, Bastiaan Koster, Ralph van Niekerk and Gunther Roland have a wealth of knowledge in the telecommunications and electrical industries. Koster recognises the value of intellectual assets and works to ensure that patrons have strong portfolios and even stronger market positions. van Niekerk is “a thought leader who takes real ownership of his work and provides one of the most professional yet cost-effective services on the market. He is highly qualified in both patent law and technology, which is not easy to find, and is everything one could ever want in a lawyer”. Head of Africa patents Roland meticulously drafts and timely files across multiple jurisdictions. In the life sciences, Llewellyn du Toit and Sandra Clelland are the names to note. Du Toit acquits himself with distinction when dealing with medical patents; while foresighted adviser Clelland is the point person for the nation’s universities; together they have a deep playbook to protect inventions and are keen problem solvers who dispense concise, coherent advice. On the contentious front, Rowan Joseph “is highly sought after and the name to note for litigation in the pharmaceutical space”. He marries industry insight with an affinity for global litigation.
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Webber Wentzel
The IP department at commercial outfit Webber Wentzel has cemented its position in the upper echelons of the African legal scene over four decades and is a go-to for transactional briefs of all stripes. In 2017, it rolled out a legal incubation programme for start-ups, through which it provides up-to-the-minute advice on legal policy and innovation, procures solid patent protection and approaches the monetisation of IP assets from a holistic perspective. Its journey with pioneering South African outfit DataProphet began here and department head Leanne Mostert is now the AI company’s counsel of choice. In the words of one patron: “Leanne and her team are instrumental in ensuring that businesses are structured in the optimal way to ensure agility and scalability. Her skilful, out-of-the-box thinking makes her one of the leading commercial IP practitioners in South Africa”. Technology and media doyenne Bernadette Versfeld has also been reaping transactional triumphs. She has a rich background assisting multinationals and is a wise choice for both contentious and noncontentious instructions. Boosting the practice further with his contentious nous is former Brian Bacon lawyer Tim Ball. He shines in the life sciences and his sage counsel is in hot demand from pharmaceutical companies.
Other recommended experts
Trustworthy and versatile practitioner Deon De Beer relishes the opportunity to get to grips with cuttingedge technologies, specifically within the material sciences sector. The precision drafter can be found at eponymous firm Deon De Beer & Assoc Inc. Excelling on both sides of the contentious/non-contentious divide, Antony Dessington of Dessington IP is a mining engineer and chemical processes maven who melds comprehensive knowledge of IP law with a resolutely commercial outlook.
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Spain
Although there have been no significant legislative changes in Spain since the introduction of the new Patent Act in 2017, the country and its practitioners have been busy transitioning to the new regime. Among other things, all Spanish patents granted by the Spanish Patent and Trademark Office now undergo substantive examination – a process that was optional before the new legislation came into force. This has undoubtedly enhanced the quality of Spanish patents and simultaneously boosted confidence in the system as a whole. On the contentious front, while pharmaceutical and life sciences disputes feature prominently on court dockets, activity in the telecommunications industry has also picked up substantially. One positive takeaway is that although Spain sees far less litigation than its European counterparts, the consistency of decisions has improved and there has been a concerted effort to have more specialised judges and courts hear patent cases.
ABG Intellectual Property Law SL
ABG Intellectual Property is more than just a consultancy firm; it is a strategic partner with a cosmopolitan, business-minded approach that helps clients to achieve optimum results in any scenario. Home to a “top-class” squad of patent attorneys and lawyers, it provides a cradle-to-grave patent service across the industry spectrum; although chemistry, pharmaceuticals and biotechnology are particular fortes. Founding partner Juan Arias has “outstanding industry experience, great business sense and analytical skills, and is a great communicator too. He understands inventors on their level”, and earns further plaudits for his “professionalism and commitment to his clients”. Fellow founder Francisco Bernardo manages global IP portfolios for advanced clinical development projects with a sure touch and has a complete mastery of prosecution procedures in different jurisdictions; his guidance is always made to measure. Also practising within the pharmaceutical sector, the “diligent and bright” Enric Carbonell likewise receives glowing testimony: “He quickly identifies what needs to be protected, creates a strategy and writes strong claims accordingly, making for a very smooth process. He is one of the best attorneys I have ever worked with, and he knows how the law works in almost every country.” Making her debut in the IAM Patent 1000 this year is chemist Almudena Fernández, who stands out for her “attention to detail and superior technical knowledge”: “She is thorough in her analysis and in her approach, always providing solutions that suit the client’s business needs. She is truly exceptional at what she does.” One of Spain’s most knowledgeable specialists when it comes to pharmaceutical and biotechnology patents, Agustín Alconada is a sage counsellor to clients and a persuasive expert witness in court: “He is cool, methodical and capable of handling large volumes of data in short periods of time. He is simply the best patent partner in the life
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sciences.” Bolstering the practice with his electromechanics and telecommunications know-how is Fernando Prieto: “Fernando quickly analyses complex problems, articulates complex engineering concepts clearly and comes up with smart tactical solutions.” Leading the recently established litigation department is Laura Montoya, who excels both in contentious settings and in the drafting and negotiation of commercial agreements. She embraces the firm’s technological specialties and plays a critical role in delivering policy and infringement advice.
Abril Abogados
Celebrating its 20th anniversary in 2021, Abril Abogados is a well-regarded name on the market, thanks to its “brilliant and exceptionally technically skilled professionals”. The boutique maintains six offices across the country which provide convenient access for Spanish companies, while also acting as a springboard to Europe for Latin American concerns. Under the stewardship of Ignacio Temiño Ceniceros, it has forged a strong presence in the life science and telecommunications sectors. As one client enthuses: “We have a lot of faith in Ignacio – he does an excellent job of evaluating our proposals and then explaining whether the idea makes sense and what may be lacking, which is crucial when moving business decisions forward”. Working alongside him are the “outstanding” Fernando Ortega Sánchez and Jorge Oria Sousa-Montes, who “handle some of the country’s most important cases”. On the pharmaceutical side, Ortega Sánchez has recently been advising one of Spain’s largest hospitals on issues relating to a covid-19 research project; while Oria Sousa-Montes has been tending to the needs of Magnum Capital, which develops charging stations for electric cars.
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Spain Firms: transactions
Firms: litigation
Abril Abogados
Clifford Chance
Bird & Bird LLP
Gómez Acebo & Pombo Abogados SLP
Clifford Chance
Grau & Angulo
Cuatrecasas
HOYNG ROKH MONEGIER
DWF-RCD
BAYLOS Abogados
Elzaburu SLP
Bird & Bird LLP
Garrigues
Elzaburu SLP
Gómez-Acebo & Pombo Abogados
Hogan Lovells
Uría Menéndez
Uría Menéndez
BALDER
“Pragmatic, efficient and quick”, is the market consensus on the service at BALDER: “They understand the technology, identify possible conflicts, produce reliable solutions and build relationships based on mutual trust.” Working from across four offices in Spain, the firm’s patent practitioners move heaven and earth to meet and exceed the demands of its dynamic clientele. First among equals is the “bright and hardworking” Isabel Pato Cour. “She is the most knowledgeable patent attorney I’ve ever met,” enthuses one patron. “Isabel has a great understanding of our inventions and gets good patents granted.” Working beside her is IAM Patent 1000 newcomer Olof Fickert, who “produces valuable opinions and suggestions that have been vital to the successful acquisition of IP rights”. He is also hailed for his “promptness, reliability and responsiveness”; and for his familiarity with procedural issues in Latin America. Magnus Stiebe brings a valuable extra dimension to the practice as a former examiner at the Swedish Patent Office: “Whether he is drafting opinions or appearing in court, Magnus stands out in everything he does. He carefully analyses each case, works proactively and innovatively, and is fully committed to clients. He is an outstanding and collaborative professional; it is simply great to work with him.” Holding down the fort on the contentious side is Patricia Koch, “a terrific litigator with a fantastic reputation”. Her fluency in German and experience working in the country are an added bonus on cross-border briefs.
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See p998
Vidal-Quadras & Ramon ABG Intellectual Property Law SL Abril Abogados BALDER CMS Albiñana & Suárez de Lezo
See p956
Cuatrecasas Pellisé Abogados
Ballester IP
Ballester IP makes its debut in the IAM Patent 1000 this year courtesy of its “superior management of patent applications”: the firm’s precision prosecution offering is reportedly “nothing short of excellent”. In one recent highlight, it successfully overcame office actions issued by the EPO on behalf of Laboratorios Forenqui. Leading light Rosalía Ballester provides incisive, tailored guidance across both sides of the contentious/non-contentious divide to players from a wide range of industries. “She communicates swiftly, accurately and eloquently. You can really count on her to do the job.”
Bardehle Pagenberg
IP powerhouse Bardehle Pagenberg has complex technologies on lock in any patenting scenario. It is a favourite among multinationals, thanks to its geographical reach and impressive bench strength: it
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Spain Firms: prosecution ABG Intellectual Property Law SL BALDER ZBM Patents & Trademarks
See p1100
Elzaburu SLP GALBAIAN Intellectual Property H&A PONS IP
See p1046
Ungria Patentes y Marcas SA Abril Abogados
have the legal and technical dexterity to come out on top in litigation involving virtually any industry, devising astute strategies that are always driven by careful commercial considerations. “The number one choice for patent disputes in Spain”, Pedro Merino Baylos has a flair for coordinating cross-border disputes, especially in the telecommunications and life sciences sectors. “Pedro is intelligent and thoughtful, and always takes account of clients’ circumstances and budget. He is also an excellent communicator and great fun to work with.” Juan Luis Gracia and Fabrizio Miazzetto are likewise “fantastic litigators” who “understand the technology behind the invention and will turn every stone to ensure they can present the best possible arguments”. The biotech and automotive sectors are happy hunting grounds for Luis Gracia; while Miazetto maintains a vibrant IP practice encompassing both patents and trademarks.
Bird & Bird LLP
Ballester IP
plays host to more than 220 “reliable and responsive” professionals across four European countries, and adopts a holistic approach to patent protection. Taking the lead in Barcelona is Mathieu de Rooij, a former EPO examiner who knows exactly how to get applications through to grant, especially in the automotive sector. Those who have worked with him have only positive things to say: “Every collaboration with Mathieu is seamless – he is clever, pleasant and just a joy to work with.” See p930 for firm profile
Famed worldwide for its fearsome contentious capabilities, Bird & Bird is an indomitable opponent in high-stakes litigation. Close collaboration between practitioners across its extensive international network ensures that it can cut through the complexity of technically dense cross-border proceedings with ease. Heading up operations in Madrid is Manuel Lobato, a “great litigator with deep expertise that stretches way beyond IP law”. “He has an outstanding reputation on the market and I rate him very highly,” reports one peer. He recently defended Oncovision, a leading provider of innovative medical imaging devices, in a spat with competitor Sociedad Española de Electromedicina y Calidad. Adding further firepower is new recruit José Miguel Lissén, who joined the ranks from ABG Intellectual Property Law. Detail oriented and dynamic, he brings disputes to a swift and successful close for top life sciences and telecommunications companies. Making her debut in the IAM Patent 1000 this year is Teresa Mercadal, a “bright lawyer with great procedural experience” who “makes sophisticated and creative assessments based on crucial legal doctrines”. On the non-contentious front, Mariano Santos “is a sharp, proactive and responsive professional who is always on top of matters and ready to solve any problems that arise. His knowledge and service level go above and beyond”.
BAYLOS Abogados
ClarkeModet
Bardehle Pagenberg
See p930
ClarkeModet
See p954
Curell Suñol SLP Esquivel & Martin Santos HOFFMANN EITLE Ponti Sugrañes
Availability and transparency are hallmarks of the service at BAYLOS Abogados, an “excellent partner” which “fills its clients with confidence throughout the whole process”. The firm’s courtroom sharpshooters
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Bridging the gap between Latin America and Europe, ClarkeModet is a dominant force in Spanish and Portuguese-speaking countries. It has built a deep reservoir of institutional knowledge over its 140-year
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Spain history, and today its 500-plus practitioners manage some 350,000 case files on behalf of domestic and international pioneers. In the words of one client: “Obtaining IP rights is a time-consuming process that requires an up-to-date understanding of legal, technological and administrative standards; and the experts at ClarkeModet excel on all fronts.” Technical services director and seasoned chemist Paola Rúa identifies all the best strategic plays for European concerns seeking to branch out into Latin America. Another key asset is Miguel Rigueiro, who has a percipient take on portfolio management and a keen eye for coordinating multi-jurisdictional mass filings. See p954 for firm profile
Clifford Chance
“A leader on the Spanish market”, Clifford Chance has turned pharmaceutical patent litigation into an art form – as borne out by its recent caseload. Top gun Miquel Montañá has been taking the lead on an infringement and validity case for AstraZeneca, while also representing Bayer against Ceva Santé Animale and Ceva Salud Animal in a pan-European dispute. Montañá is feted as “one of the country’s finest lawyers – he always presents the most sophisticated arguments”. His right hand on both matters is Isabel Carulla, who invariably sticks the landing in patent disputes that come interlaced with unfair competition threads – and in deal negotiations too. She also teams up with “sophisticated litigator” Josep Montefusco, who recently went out to bat for F Hoffman-La-Roche in infringement proceedings against Kern Pharma concerning biosimilars. Rounding off the troop is Rais Arnal Amils, a “brilliant lawyer” who “presents complex ideas in a simple and understandable manner”.
CMS Albiñana & Suárez de Lezo
A new entrant to the IAM Patent 1000 this year, CMS Albiñana & Suárez de Lezo has been making waves on the legal market since it brought former Gómez Acebo & Pombo lawyer María González Gordon on board in late 2019. Thanks to this smart move, the firm has significantly bolstered its contentious offering and carved itself a foothold in the life sciences; it is now a premier destination for those seeking holistic counsel. “In complex cases, the CMS team analyses every shred of evidence and prepares detailed reports,” observes one client, who goes on to praise its practitioners for their “quality, agility and empathy”. Eli Lilly and Company is one company which has enjoyed the full benefit of this combination of late: González has been assisting it with the launch of its new medical products and applications. See p956 for firm profile
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Luminaries Gonzalo Ulloa Suelves Gómez-Acebo & Pombo Abogados
Cuatrecasas
Full-service Cautrecasas has expansive domestic reach through 14 bases across the country; and with a further 14 additional outposts strategically located throughout Europe, Asia, South America and the United States, its international wingspan is just as impressive. This makes cross-border mandates a breeze and ensures that both local and foreign innovators can easily avail of its 360-degree service. On the prosecution front, the side has been assisting the Spanish state lotteries and counselling Madrid Polytechnic University on the design, preparation and drafting of technology transfers. On the contentious side, Jorge Llevat has been busy representing labware manufacturer Deltalab in a medical devices dispute and AND&OR in a trade secrets infringement case. “Jorge is a reference on patents and industrial property rights; and is diligent and measured in his advice.”
Curell Suñol SLP
Curell Suñol has spent more than 70 years drafting and filing watertight applications for innovators in the telecommunications, electrical and mechanical industries, and getting them through to grant. Its European patent attorneys and lawyers are fully committed to the cause and keep up to date with the latest technological advancements, which makes for a well-rounded, future-focused offering. Division spearhead Santiago Jordá blends a complete command of engineering and material sciences with valuable in-house insight from stints as a research engineer at a metallurgical company and a product manager at SEAT to deliver advice that goes right to the heart of each matter.
DWF-RCD
Having now slotted together all the pieces from DWF’s 2019 acquisition of Rousaud Costas Duran, successor firm DWF-RCD has significantly enhanced its contentious capabilities and is also riding high in the transactional space. The commercialisation of cutting-edge technologies is meat and drink to the entrepreneurially minded outfit, which has shepherded more than 30 technology transfers for new spin-off companies engaged in R&D to completion in the past 12 to 18 months. RCD’s founding partner Ignasi Costas has a rich academic
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Spain Francisco Bernardo ABG Intellectual Property Law SL
Individuals: prosecution Highly recommended
Silvia Bertran Valls HOFFMANN EITLE
Juan Arias ABG Intellectual Property Law SL Anna Barlocci ZBM Patents & Trademarks
See p766
Carles Comes ZBM Patents & Trademarks
See p768
Mathieu de Rooij Bardehle Pagenberg
Gabriel Castilla PONS IP
See p767
Isabel Cortés Martínez PONS IP
See p769
Isabel Pato Cour BALDER
Ismael Igartua GALBAIAN Intellectual Property
Asier Cueva Ungria Patentes y Marcas SA
Fernando Prieto ABG Intellectual Property Law SL
Noemí Daviu ZBM Patents & Trademarks
Magnus Stiebe BALDER Bernabé Zea ZBM Patents & Trademarks
Enric Carbonell ABG Intellectual Property Law SL
See p778
Luis-Alfonso Durán Durán-Corretjer SLP
Recommended
Guillaume Durville Plasseraud IP
Agustín Alconada ABG Intellectual Property Law SL
Sergio Escorza Ungria Patentes y Marcas SA
Rosalía Ballester Ballester IP
Adrian Esquivel Esquivel & Martin Santos
background and an intimate familiarity with the rhythms of technology-based companies (he is a board member of several), which inform his dynamic, business-oriented approach.
Elzaburu SLP
“Elzaburu provides a feeling of security that is hard to find in the legal world,” enthuses one happy patron. “Its practitioners think ahead, which helps us to minimise risks and ensure that we are prepared for any situation that may arise.” The firm provides fulsome support at all stages of the patent lifecycle and have multiple disciplines down cold, from pharmaceuticals to electronics and telecommunications. In the latter space, Enrique Armijo Chávarri has been coordinating Xiaomi’s defence in infringement proceedings brought by
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See p770
Fractus and in another suit brought by TOT Power Control. He and litigation department captain Antonio Castán receive effusive praise: “They are extremely farsighted – a skill which allows in-house teams to prepare without feeling rushed – and are excellent at communicating complex matters in simpler terms. Enrique and Antonio are superpersonable, give a fantastic personalised service and are always there whenever you need them.” Qualified as both an engineer and a lawyer, Colm Ahern combines his technical and legal expertise to provide big-picture guidance that helps to identify the best course of action and how best to pursue it. The prosecution division is thriving under the leadership of chemist Francisco Sáez: recent briefs include monitoring, managing and policing the portfolios of high-flying entities such as Laboratorios
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Spain Almudena Fernández ABG Intellectual Property Law SL
Miguel Rigueiro ClarkeModet
See p774
Olof Fickert BALDER
Paola Rúa ClarkeModet
See p775
Eduardo González GALBAIAN Intellectual Property
Oscar Rubio Solis ZBM Patents & Trademarks
See p776
Jesús González H&A
Francisco J Sáez Elzaburu SLP
Jordi Güell Guell IP
Mariano Santos Bird & Bird LLP
Manuel Illescas Manuel Illescas Asociados
Amaia Sarasola GALBAIAN Intellectual Property
Montserrat Jané ZBM Patents & Trademarks
See p772
Natividad Toledo ZBM Patents & Trademarks
Santiago Jordá Curell Suñol SLP
Maria Mercè Vidal Ponti
Gustavo Fúster Olaguibel HOFFMANN EITLE
Lluís Vilalta Sugrañes
Manuel Pérez H&A Patricia Ramos PONS IP
See p773
Farmacéuticos Rovi and SEAT, as well as the Spanish National Cancer Research Centre. A stand-out drafter, Sáez was one of the first practitioners in Spain to pass the European Qualifying Examination and is thus a master of local and regional prosecution. Transactions guru Javier Fernández-Lasquetty is celebrated for his fine-grained understanding of the business landscape and superb commercial vision.
Esquivel & Martin Santos
Since setting up shop 10 years ago, agile boutique Esquivel & Martin Santos has cultivated a premier patent offering that is particularly attuned to the specific needs of start-ups and SMEs seeking robust protection in the pharmaceutical and agribusiness sectors. Innovation is likewise a watchword at the firm itself: it is in the process of launching a pilot fixed-fee freedom to operate service to ensure even greater accessibility and transparency, and recently established a China desk as a further USP. Founding
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partner Adrian Esquivel is a sharp and businesssavvy practitioner whose diligent, constructive approach has done much to develop the firm into the flourishing boutique it is today.
GALBAIAN Intellectual Property
“A rising star in Spanish IP”, GALBAIAN is in hot demand for its value-added strategic advice and prosecution services. Its highly qualified, responsive team takes a resolutely practical approach to each mandate, which translates into comprehensive, easily implementable counsel. “They dedicate themselves to patents with rigour and passion; their experience, know-how and approachability are just some of the reasons we continue to work with them,” reports one client. Director and telecommunications engineer Ismael Igartua is “a quick and deep thinker who can see what other attorneys cannot. He really gets to know the specifics of every case, never limits his advice and suggests the best strategies according to each circumstance. Ismael is super-bright, has that level of gravitas and really makes himself heard before the courts and patent offices”. Working alongside him are Eduardo González and Amaia Sarasola. A highly skilled patent attorney with in-depth mechanical engineering expertise, González has “great scientific
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Spain and practical knowledge”. Sarasola makes her IAM Patent 1000 debut thanks to glowing client feedback: “Amaia is talented, thorough and an excellent communicator. Her attention to detail is second to none; she is also really resourceful and can assimilate sector-specific technical concepts, come up with pragmatic solutions and then present them clearly.”
Garrigues
The full-service Garrigues is a mighty force on the patent market, both in Iberia and beyond: it has 32 offices spread out across Europe, the Americas and Asia, and more than 2,000 professionals on deck to provide total support to innovators wherever they are based. Headquartered in Madrid, the firm knows the lie of the land at home like the back of its hand, and has all the legal insight needed to provide gamechanging assistance at an international level too. Companies of every shape and size flock to its doors for the wall-to-wall services on offer.
Gómez Acebo & Pombo Abogados SLP
Long regarded as one of Spain’s leading patent litigation firms, Gómez Acebo & Pombo Abogados features prominently in many of the life sciences disputes that come before the Spanish courts. Its battle-hardened lawyers are routinely entrusted with ground-breaking cases: for example, department head Eduardo Castillo and senior partner Gonzalo Ulloa Suelves have been busy representing Mundipharma Pharmaceuticals in pan-European litigation against several leading generic companies over its blockbuster opioid drug – a case that takes the courts into uncharted legal terrain concerning ‘added matter’ as a ground for patent revocation. Castillo and Ulloa frequently bring the heat in crossborder pharmaceutical skirmishes; while Jesús Muñoz-Delgado provides strategic advice in the biotechnology arena and is an authority on plant variety rights. However, Castillo and Muñoz-Delgado cannot be pigeonholed and also represent a slew of household names in the telecommunications and electronics fields, thanks to their extensive knowledge of FRAND and SEP issues.
Grau & Angulo
One of Spain’s most illustrious firms and a go-to for generic pharmaceutical companies, Grau & Angulo is home to a deep bench of legally and technically adept lawyers who “always go the extra mile”. Namesake Alejandro Angulo sets the tone from the top: with a command of five languages and a gift for weaving compelling arguments, he hits all the right notes in cross-border disputes. He has recently been
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representing American company Two Way Media against Telefónica in multifaceted enforcement, infringement, nullity and revocation proceedings concerning a live streaming programme. Working alongside him on this matter are Jesús Arribas and Ana-Laura Morales. Arribas is a technical renaissance man who has also been busy of late designing effective global enforcement plans for audio technologies; while Morales is a fine choice for clever pre-litigation strategies. The “friendly and collaborative” Ignacio Marqués is “incredibly helpful in pan-European disputes – he explains legal issues to non-lawyers perfectly and communicates extremely well”. Javier Huarte and Ignacio Pontijas are the stars of the life sciences division. Polished litigator Huarte “always finds reliable and inventive solutions, regardless of how difficult the problem is. He knows the patent legislation inside out, never gets lost in the detail and performs outstandingly in court. He is business oriented too, and provides strategic recommendations that are totally in line with a company’s commercial goals”. IAM Patent 1000 newcomer Pontijas is “an exceptional lawyer with an incredible understanding of issues in the pharmaceutical industry. He digs into the detail and never leaves a single element of a case unobserved”.
H&A
The soup-to-nuts patent service at H&A makes it a fantastic choice for one-stop shopping: from startups to industry heavyweights, companies can find everything they need to protect their crown-jewel assets under one roof. Additional bases in Latin America ensure that inventors with intercontinental ambitions on either side of the Atlantic are well catered for. The firm is characterised by its “proactivity and professionalism” – qualities which are embodied in department head Jesús González. The mechanical engineer has chalked up 35 years in the game and is lauded for his entrepreneurial mentality. Former EPO examiner Manuel Pérez is a repository of trust for major software entities, thanks to his unerring instincts on patentability and extensive in-house insight gleaned from roles at major global telecommunications companies.
HOFFMANN EITLE
HOFFMANN EITLE enjoys a phenomenal reputation in Germany and has become a preferred destination in Europe for robust patent protection in the life sciences. The group’s Spanish contingent carries on this tradition of excellence, producing impeccable work product – and just as efficiently, too. Taking the team to great heights is Gustavo Fúster Olaguibel,
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Spain one of the country’s pre-eminent patent attorneys and biotechnology specialists: “He has brilliant strategic ideas when clients present him with complicated issues. He is reliable, conscientious and has an almost inexhaustible capacity to work.” Joining him in the guide this year is pharmacist Silvia Bertran Valls, whose diverse private practice and industry experience gives her a great perspective. Global portfolio management and international prosecution are her metiers.
Individuals: transactions
Hogan Lovells
Manuel Lobato Bird & Bird LLP
International powerhouse Hogan Lovells is counsel of choice to industry leaders worldwide, not least thanks to its adroit handling of high-stakes conflicts. The full-service outfit is always seeking to enhance its offering, and has developed its own in-house technologies and platforms to promote knowledge sharing and streamline its service. The practice is helmed by Ana Castedo, a “remarkable litigator” who is “fully devoted to her clients”. She has a real affinity for issues in the life sciences and telecommunication sectors, especially SEPs.
HOYNG ROKH MONEGIER
The “responsive, dynamic and creative” lawyers at HOYNG ROKH MONEGIER “approach each case with the necessary sense of urgency and ownership. They are proactive, reply quickly and build strong strategies, which they can explain in simple terms to non-lawyers”. Clients highlight close collaboration between its offices as key to achieving “optimal and harmonised results”. The IP titan provides an A-to-Z patent service to a litany of life sciences and technology heavyweights, including CEVA, Ferring, Fractus and Seiko Epson Corporation. The twin pillars of the practice are Luis Fernández-Novoa and Álvaro Velázquez, who score a solid 10 out of 10 with clients. “Luis is extremely dedicated and open-minded. He will guide you through procedural specifics and suggest alternative options and strategies, along with a recommendation on what he thinks is the best route. These discussions are truly valuable – you can really come up with a solution that will achieve the desired outcome from a business perspective.” “One of Álvaro’s best attributes is his perseverance: he is so full of energy and never stops until he comes to the right conclusion.” “He is always keen to understand the technical issues of the case from the very beginning and prepares for hearings thoroughly, which means that any unpleasant surprises are avoided.” Rounding off the team is José Antonio Sanmartín, whose technical dexterity allows him to dispense difference-making advice in almost any
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Ignasi Costas DWF-RCD Javier Fernández-Lasquetty Elzaburu SLP Jorge Llevat Cuatrecasas
José Massaguer Uría Menéndez Montiano Monteagudo Uría Menéndez Jesús Muñoz-Delgado Gómez-Acebo & Pombo Abogados Fernando Ortega Sánchez Abril Abogados Ignacio Temiño Ceniceros Abril Abogados
industry. Alongside Fernández-Novoa, he recently represented Huawei in proceedings against TOT Power Control and Corning Optical Communications. See p998 for firm profile
Pellisé Abogados
Pellisé Abogados adopts a reassuringly comprehensive approach to patent protection, offering realistic, business-oriented guidance to inventors that are seeking to shore up their position in Spain. The names to note are David Pellisé Urquiza and Juan Carlos Quero, who are both held in high esteem by peers. Pellisé Urquiza is a scrupulous attorney who has made the nanotechnology and biotechnology spaces his own; while Carlos Quero provides invaluable strategic counsel that is resolutely commercial in focus.
PONS IP
“You can consistently rely on PONS IP,” report clients of this prolific prosecution shop, whose practitioners are hailed as “open, honest and approachable”. With 130-plus experts operating from five regional Spanish bases and further offices in Brussels, Bogota, Medellin and Guangzhou, it makes light work of international
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Spain Individuals: litigation Eduardo Castillo Gómez-Acebo & Pombo Abogados Luis Fernández-Novoa HOYNG ROKH MONEGIER Javier Huarte Grau & Angulo Manuel Lobato Bird & Bird LLP José Massaguer Uría Menéndez Miquel Montañá Clifford Chance Álvaro Velázquez HOYNG ROKH MONEGIER Miguel Vidal-Quadras Vidal-Quadras & Ramon Alejandro Angulo Grau & Angulo Jesús Arribas Grau & Angulo Isabel Carulla Clifford Chance Antonio Castán Elzaburu SLP Ana Castedo Hogan Lovells Patricia Koch BALDER
instructions; no surprise, then, that it is one of the top Patent Cooperation Treaty filers in the country. Overseeing all of this with a watchful eye is chemistry ace Patricia Ramos, who leverages her past industry experience at leading biotech company PharMar to provide counsel that comes laced with business insights. She recently helped industrial printing company Maktub to obtain relevant IP rights for its protective face shields. On the engineering side of the
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José Miguel Lissén Bird & Bird LLP Ignacio Marqués Grau & Angulo Pedro Merino Baylos BAYLOS Abogados Josep Montefusco Clifford Chance Jesús Muñoz-Delgado Gómez-Acebo & Pombo Abogados David Pellisé Urquiza Pellisé Abogados Ingrid Pi Uría Menéndez Oriol Ramon Vidal-Quadras & Ramon José Antonio Sanmartín HOYNG ROKH MONEGIER Colm Ahern Elzaburu SLP Enrique Armijo Chávarri Elzaburu SLP Rais Arnal Amils Clifford Chance Francisco J Carrión Eversheds Sutherland (International) LLP Jean Devaureix PONS IP
See p771
María González Gordon CMS Albiñana & Suárez de Lezo
practice, IAM Patent 1000 newcomer Gabriel Castilla takes charge. He excels in oppositions and appeals proceedings at the EPO, and can drive business gains too. Portfolios are meticulously handled by Isabel Cortés Martínez; while deputy director of the legal department Jean Devaureix is “a highly skilled litigator and strategic decision maker”. See p1046 for firm profile
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Spain Juan Luis Gracia BAYLOS Abogados Jordi Güell Guell IP Jorge Llevat Cuatrecasas Teresa Mercadal Bird & Bird LLP Fabrizio Miazzetto BAYLOS Abogados Sergio Miralles Intangibles Laura Montoya ABG Intellectual Property Law SL Ana-Laura Morales Grau & Angulo Jorge Oria Sousa-Montes Abril Abogados Ignacio Pontijas Grau & Angulo Carles Prat Baker McKenzie Juan Carlos Quero Pellisé Abogados Ignacio Temiño Ceniceros Abril Abogados
Ponti
On the frontlines of patent practice in Spain for eight decades, Ponti & Partners has won a loyal following of start-ups, international concerns and educational institutions seeking a trusted guide through the patenting and monetisation maze. Department head and European patent attorney Maria Mercè Vidal is an authority in the burgeoning agri-food sector and a safe pair of hands for EPO work.
Sugrañes
of their respective fields. Stacked with experts from every technical background imaginable, the boutique assembles custom-built teams to ensure that all briefs are optimally resourced. Industrial engineer and patent director Lluís Vilalta “pays close attention to the technical details of each case, explains the complexities in a simplified manner and always provides the best possible advice”.
Ungria Patentes y Marcas SA
Consistency characterises the service of topflight prosecution firm Ungria Patentes y Marcas: remarkably low team turnover ensures that matters rarely change hands and that fruitful long-term relationships can be nurtured with clients. Its 15 Spanish offices are complemented by a further four in the Americas, giving it ready accessibility. The linchpin of the practice is Sergio Escorza, whose glittering CV is adorned with academic positions and industry experience, all of which informs his business-driven counsel. Joining him in the guide this year on a wave of praise is Asier Cueva. “He is more of a business partner than a supplier of legal services,” enthuses one client. “He has an excellent understanding of engineering technologies and grasps new concepts quickly. Asier manages our patents across several countries with ease, and solves any issues with maximum efficiency and in a quick turnaround time.”
Uría Menéndez
The IP practitioners at commercial firm Uría Menéndez makes full use of their commercial nous and refined legal knowledge in tending to the patent needs of the firm’s discerning corporate clientele. They are regularly entrusted with critical instructions: for example, the firm has recently been advising Gilead Sciences on its litigation strategy in connection with potential infringement claims. Sanofi Aventis is another beneficiary of its shrewd advice; as are Amazon and Telefónica. Key counsel for all four is José Massaguer, who provides inspiring leadership to the squad. The consummate litigator delivers impactful arguments with authority and is completely dedicated to his life sciences patrons. Fellow litigator Ingrid Pi combines deep technical expertise with a strong grasp of IP regulatory matters, to great effect. She has recently been assisting Nador Cott Protection with an important plant variety brief. In Barcelona, Montiano Monteagudo has shepherded many deals in the electronics and food sectors to close, thanks to his silky-smooth negotiating skills.
Innovation is the central narrative at Barcelona-based Sugrañes, whose patent practitioners love diving into the nitty-gritty of novel inventions at the cutting edge
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Spain Vidal-Quadras & Ramon
Although Vidal-Quadras & Ramon is a relatively new name on the legal landscape, having commenced operations in 2019, the agile boutique is backed by years of experience in the form of co-founders Miguel Vidal-Quadras and Oriol Ramon. The pair are renowned for their impeccable courtroom performances and the outstanding results they secure on behalf of leading pharmaceutical generics companies. Accomplished litigator Vidal-Quadras “presents complicated arguments effectively” and also publishes widely on the latest developments in the life sciences. So too does fellow contentious ace Ramon, who is “super-personable and extremely active in the field”; his pleadings are always to the highest standard – structured, succinct and crystal clear.
ZBM Patents & Trademarks
“One of the best patent firms in Europe”, ZBM produces “work of excellent quality”: “All of its professionals are technically brilliant. If you want to be sure that you have instructed the best experts possible, then ZBM is the first choice.” Heading up the chemistry and life sciences division, Bernabé Zea is “a straightforward attorney who can be trusted with the most complicated cases”. He is in hot demand for his expert testimony in litigation; while as a licensing specialist, he also oversees ZBM BConnect, the firm’s technology transfer unit. Working alongside him are fellow chemistry maestros Noemí Daviu, Montserrat Jané and Natividad Toledo. In providing freedom to operate analyses and validity opinions, Daviu carefully considers all relevant legal and commercial issues while keeping clients’ interests front and centre. “Creative and clear in her advice”, Jané has a high success rate in oppositions and appeals; while Toledo has a rare facility for “the interpretation of documents. She pays exceptional attention to detail, has superior writing skills and gives practical tips too”. In IT and electronics, Carles Comes is one of the best in the business when it comes to software patents and is a highly sought-after technical expert on the same. Meanwhile, Anna Barlocci and Oscar Rubio Solis shine bright on the mechanical side of the practice. “Anna’s technical knowledge and understanding of
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patent procedures are outstanding. She is proactive, approaches different arguments creatively and is great at answering complex questions.” “Fantastic team player” Rubio Solis is “great at capturing inventions and improving them too. He is fearless and always looks to understand more about the technology, which makes him a great partner for inventors”. See p1100 for firm profile
Other recommended experts
Francisco Carrión of Eversheds Sutherland knows exactly when to enforce his clients’ rights and when to push for out-of-court settlements. He also leverages his “vast legal knowledge and immense expertise in procedural matters” in his capacity as co-chair of the firm’s health and life sciences division. Anyone with even a passing knowledge of Spanish patent law knows who Luis-Alfonso Durán is, thanks to his roles as managing partner of Durán Corretjer and president of the Intellectual Property Committee of the Spanish Industry Association. Debuting in the IAM Patent 1000 this year is Guillaume Durville, who has been busy building up the Spanish branch of Plasseraud IP. “Guillaume is a joy to work with – he knows exactly what to do in any situation and he understands how to balance patent drafting and prosecution in Europe, while being mindful of international procedures.” As a patent attorney, lawyer and prominent IP lecturer, Jordi Güell is the full package; he can be found at eponymous boutique Guell IP. A biomedical sciences PhD and a former examiner at the Spanish Patent and Trademark Office, Manuel Illescas is the ideal guide for inventors seeking to get applications through to grant. He operates out of his base at Manuel Illescas Asociados. “Highly regarded patent litigator” Sergio Miralles makes his first appearance in the guide this year. The founder of Intangibles has spent two decades at the patent coalface, including a stint as head of IP at a major multinational law firm. Baker McKenzie’s Carles Prat is a seasoned litigator with extensive experience in all aspects of intellectual property. He also teaches at ESADE law school, where he is helping to shape the next generation of patent lawyers.
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Barlocci, Anna Partner – ZBM Patents & Trademarks abarlocci@zbm-patents.eu | www.zbm-patents.eu
Anna Barlocci holds an MSc in mechanical engineering. Her career in patents started in 1990 at a patent firm in Barcelona. As part of her training, she also completed an internship at a renowned UK patent firm. She was the first Spanish candidate to pass the European qualifying examination in 1999. In 2003 she founded ZBM Patents & Trademarks with two other partners. She now co-heads the firm’s electro-mechanical practice and is responsible for prosecution matters before the EPO. Ms Barlocci’s professional experience includes drafting and prosecuting European, Patent Cooperation Treaty and national phase patent applications in a wide range of engineering fields, such as medical devices, printing technology and robotics. She also handles strategic counselling for clients and foreign associates, as well as freedom to operate and due diligence. A significant part of Ms Barlocci’s work relates to patent enforcement before the Spanish courts and she has acted as a technical expert regarding infringement and validity in the Spanish leg of several pan-European litigations. Together with the University of Barcelona and the Spanish Patent and Trademark Office, Ms Barlocci started a course to prepare Spanish candidates for the European qualifying examination and coordinated this course for many years. She is a European Patent Institute tutor and participates in lectures, seminars and courses on patent matters in Spain.
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ZBM Patents & Trademarks Rambla de Catalunya 123 Barcelona 08008 Spain T +34 933 426 472 F +34 933 427 970 See firm profile p1100 Professional associations • AIPPI • epi
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Castilla, Gabriel Head of Engineering Patent Department – PONS IP gabriel.castilla@ponsip.com | www.ponspatentesymarcas.es
Gabriel Castilla is head of the design and engineering area of the patent department at PONS IP. He holds an MSc in industrial engineering from the Polytechnic University of Madrid. Mr Castilla has more than 20 years’ experience providing IP consultancy services. He leads the team of engineers whose main duties are to write patentability and infringement reports, as well as draft and prosecute patent applications in the field of mechanics, electronics, electricity, telecommunications and software. Mr Castilla also advises national and international clients on all aspects of European Community designs. He also leads a team of paralegals in charge of filing and prosecuting national, European and international designs. Mr Castilla’s practice includes design infringement proceedings and invalidity proceedings before the EUIPO and the Spanish Patent and Trademark Office. Mr Castilla has also vast experience in court matters concerning patents, utility models and industrial designs rights. Before his career in IP law, he had been involved in I+D projects in engineering companies in the aeronautical, locomotive and automotive sectors. This multidisciplinary experience enables him to readily understand the needs of his wide range of clients. Mr Castilla delivers courses and workshops, and runs in-house seminars for clients related to different IP subjects. He is member of the Spanish Industrial Engineers Association. Mr Castilla speaks Spanish, English and French.
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PONS IP Glorieta de Ruben Dario 4 Madrid 28010 Spain T +34 91 700 7600 F +34 91 308 6103 See firm profile p1046
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Comes, Carles Partner – ZBM Patents & Trademarks ccomes@zbm-patents.eu | www.zbm-patents.eu
Carles Comes holds a degree in electronic engineering and is a specialist in both information technology and patents. Since he started his career in patents back in 1994, Mr Comes’s work has focused on electronics, telecoms, IT and computer-implemented inventions. He joined ZBM Patents & Trademarks in 2003, became a partner in 2005 and is currently the head of the practice in the above-mentioned technical fields. Many of Mr Comes’s clients are first-class research centres, as well as spin-offs from universities and innovative start-ups. In particular, Mr Comes deals with computer-implemented inventions in a broad range of technical fields, from medical devices to computer vision and artificial intelligence, especially neural networks. Mr Comes regularly lectures in Spain on matters such as: • the patentability of computer-implemented inventions; • patent claim drafting; and • the assessment of infringement. He frequently teaches in courses or gives seminars for universities, research centres and companies, and has spoken at sessions raising awareness of the patent system organised in cooperation with examiners from the EPO. Mr Comes’s work includes drafting European, Spanish, Patent Cooperation Treaty and US patent applications, and dealing with prosecution worldwide. He advises clients on patent validity, risk of infringement and other strategic matters. Mr Comes often acts as a technical expert before Spanish courts in infringement actions of major importance, including on behalf of a number of electronics and telecoms multinationals. He has also taken part in customs intervention cases dealing with the infringement of standard-essential patents, particularly in audio technologies.
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ZBM Patents & Trademarks Rambla de Catalunya 123 Barcelona 08008 Spain T +34 933 426 472 F +34 933 427 970 See firm profile p1100
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Cortés Martínez, Isabel Partner – PONS IP isabel.cortes@ponsip.com | www.ponsip.com
Isabel Cortés Martínez is an experienced trademark practitioner who manages PONS IP’s International Legal Affairs Department. She has a degree in law from CEU San Pablo University, specialising in EU law, and a PhD (honours). She also has a master’s in intellectual property from Comillas Pontifical University and a European master’s in law and economics from the Universities of Hamburg and Ghent. At PONS IP, Ms Cortés Martínez’s practice focuses on managing large multinational trademark portfolios for a variety of clients across a broad range of industries, including energy, pharmaceuticals, beverages, finance and apparel. Her vast prior experience in patent filing strategies, prosecution and portfolio management means that she has 360º expertise to achieve her clients’ business commercial goals. Ms Cortés Martínez is very active in academia as director and faculty member of the IP and new technologies master’s run by ISDE and PONS Escuela de Negocios, the IP course run by the Bar Association of Madrid, and a master’s in international advocacy, among others. She is chair of an INTA committee and a frequent participant in overseas conferences. She travels regularly to strengthen the firm’s relationships with clients and colleagues. Languages Spanish, English, French and German.
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PONS IP Glorieta de Ruben Dario 4 Madrid 28010 Spain T +34 91 700 7600 F +34 91 308 6103 See firm profile p1046 Professional associations • ECTA • INTA • MARQUES
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Daviu, Noemí Partner – ZBM Patents & Trademarks ndaviu@zbm-patents.eu | www.zbm-patents.eu
Noemí Daviu holds an MSc in chemistry. She started her professional career working as a researcher in the medicinal chemistry laboratory of a multinational pharmaceutical company in Germany. After three and a half years, she returned to Barcelona in 2002 to join the patent profession, working as a patent adviser in the patent departments of two outstanding Spanish pharmaceutical companies for five years. In 2007 she joined ZBM Patents & Trademarks. She passed the European Qualifying Examination in 2009 and became a partner in 2010. Her practice at ZBM includes scientific and patent information retrieval, preparing patentability analysis, patent drafting and prosecution, in particular of European and Patent Cooperation Treaty patent applications. Ms Daviu’s strength also lies in the preparation of validity reports and opposition proceedings before the European Patent Office. She also has extensive experience in preparing validity and freedom-to-operate reports, including opinions to be used for subsequent national court actions, especially in the fields of chemistry and pharmacy. In 2015 she obtained the European Patent Litigation Certificate, which will enable her to represent clients before the Unified Patent Court.
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ZBM Patents & Trademarks Rambla de Catalunya 123 Barcelona 08008 Spain T +34 933 426 472 F +34 933 427 970 See firm profile p1100
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Devaureix, Jean Head of Patent Litigation – PONS IP jean.devaureix@ponsip.com | www.ponsip.com
Jean Devaureix has over 18 years’ experience as a lawyer specialising in the protection of intellectual property, including working in major law firms and managing teams of IP lawyers. He holds a law degree and an LLM in intellectual property from the University of Alicante. Mr Devaureix is proficient in managing civil, criminal and contentious administrative IP proceedings at all levels, with particular expertise in litigation before the General Court of the European Union, including attending multiple hearings before the court. As deputy director of PONS IP’s legal department, he is in charge of the management of legal proceedings, especially with regard to patents, and of coordinating the teams of lawyers under his responsibility. He stands out for his expertise handling complex IP proceedings for the firm before the Spanish Supreme Court and excels in developing comprehensive strategies to defend the interests of his clients. He approaches all aspects of his work with professionalism and creativity, and delivers it with a high degree of efficiency and quality. He is a member of the Spanish group of the International Association for the Protection of Intellectual Property. He has published extensively on intellectual property and participates in all leading IP conferences. He speaks Spanish, French, English and Catalan.
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PONS IP Glorieta de Ruben Dario 4 Madrid 28010 Spain T +34 91 700 76 00 See firm profile p1046
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Jané, Montserrat Partner – ZBM Patents & Trademarks mjane@zbm-patents.eu | www.zbm-patents.eu
Montserrat Jané holds an MSc in chemistry. She has a strong background in organic chemistry and a deep practical understanding of the field, having spent 10 years as head of the R&D department in a pharmaceutical company where she was also responsible for the company’s patent issues. In 2002 she took up the patent profession full time at the Patent Centre of the University of Barcelona. Ms Jané joined ZBM Patents & Trademarks in 2004 and became a partner in 2005. Ms Jané passed the European Qualifying Examination (EQE) in 2008. In 2015 she obtained the European Patent Litigation Certificate, which allows her to represent clients before the Unified Patent Court. Ms Jané has extensive experience in searching, patent drafting and prosecution, opposition and appeal before the EPO, and in preparing risk of infringement and validity opinions – especially in the fields of organic chemistry, pharmacy and medical devices. Since 2002 Ms Jané has lectured regularly on patent matters. She has been a tutor on the EQE training course organised by the Patent Centre of the University of Barcelona, where she is also a professor. She is also a tutor in the Barcelona CEIPI (Centre for International Intellectual Property Studies) course in European patent law.
ZBM Patents & Trademarks Rambla de Catalunya 123 Barcelona 08008 Spain T +34 933 426 472 F +34 933 427 970 See firm profile p1100 Professional associations • AIPPI • epi
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Ramos, Patricia Head of Patent Department – PONS IP patricia.ramos@ponsip.com | www.ponsip.com
Patricia Ramos is the PONS IP patent director, with over 20 years of experience helping clients seeking patent advice and developing IP strategies. She oversees the drafting of patents; the prosecution of applications at national patent offices, EPO and WIPO; freedom-tooperate analyses; patent valorisations and tech watch reports. Ms Ramos leads the largest team of patent experts in Spain, made up of 40 patent professionals with backgrounds in biotechnology and chemistry, engineering and software, among others, and holding national and European qualifications; and paralegals with extensive technical and legal patent knowledge. This makes the PONS IP patent team the main reference in this field in Spain and the leader in both national applications and Patent Cooperation Treaty applications in recent years. Committed to the promotion of intellectual property in our society, Ms Ramos is a regular contributor to prestigious publications and seminars. She has also lectured on IP issues at top academic institutions, including business schools. Before joining PONS IP, she acquired substantial knowledge and experience in the industry by handling patent prosecution cases at leading biotech company PharmaMar, which focuses on the development of new cancer treatments. Ms Ramos obtained a bachelor’s of organic chemistry with honours from the Autonomous University of Madrid; she also undertook postgraduate physical chemistry studies at the Paul Sabatier University (France). A native Spanish speaker, Ms Ramos is also fluent in English and French.
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PONS IP Glorieta de Ruben Dario 4 Madrid 28010 Spain T +34 917 007 600 See firm profile p1046
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Rigueiro, Miguel Prosecution Manager – ClarkeModet mrigueiro@clarkemodet.com | www.clarkemodet.com
Miguel Rigueiro is the IP prosecution manager at ClarkeModet Spain. He holds a degree in political sciences and administration from the Complutense University of Madrid (Spain) and a master’s in marketing and commercial management from the European Institute of Communication and Marketing (Spain). He also has further diplomas in industrial property law from CEU San Pablo University (Spain) and industrial property management from Carlos III University of Madrid (Spain), and has attended other professional and specialisation courses such as the China IP Protection Training Programme from Shanghai Patent & Trademark Law (China). With over 20 years of professional experience in intellectual property, Mr Rigueiro specialises in portfolio management and in coordinating the prosecution of patents abroad. Mr Rigueiro has a strong specialisation in patent prosecution, in particular for Spain and Latin American countries, with a focus on coordinating filing applications in several countries in parallel in reduce costs and shorten timescales. Mr Rigueiro leads a team of over 15 highly qualified patent specialists who manage patent portfolios for some of the biggest companies in Europe, Asia and the United States. He offers his clients comprehensive advice on their patent internationalisation strategy and multi-jurisdictional patent prosecution. Mr Rigueiro is a frequent speaker at internal training courses and client in-house seminars. He is accredited by the Spanish Ministry of Defence as a security director. He is fluent in Spanish and English.
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ClarkeModet Suero de Quinones 34-36 Madrid 28002 Spain T +34 91 806 56 00 See firm profile p954 Professional associations • APAA
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Rúa, Paola Technical Services Manager – ClarkeModet prua@clarkemodet.com | www.clarkemodet.com
Paola Rúa is the patent technical services manager at ClarkeModet Spain. She leads a team of highly qualified patent professionals providing proactive, strategic and personalised advisory services. Ms Rúa holds a degree in chemical engineering from the National University of Colombia and a PhD in natural sciences from the Goethe University of Frankfurt (Germany). She specialises in the fields of chemistry, pharmacy and engineering, with extensive experience in determining strategies for protecting innovations in several jurisdictions and supporting clients at all stages of innovation, from the R&D initial phase to IP rights enforcement. Her experience includes patentability assessments of new inventions, drafting descriptive reports, conducting technological searches and consulting. Before joining ClarkeModet, Ms Rúa gained substantial experience in the scientific research and R&D sectors, which contributed to her developping the necesary knowledge and skills to handle patent technical issues in her areas of expertise. Her IP training started in Andean Community patent law at a subsidiary of the ClarkeModet Group in Latin America, where her excellent client care and the quality of her service made her stand out. This was recognised by the prestigious award Client Choice in 2016. She is a frequent speaker on IP issues at client seminars. Ms Rúa is fluent in Spanish, English and German.
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ClarkeModet C/ Suero de Quiñones 34-36 Madrid 28002 Spain T +34 91 806 56 00 See firm profile p954
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Rubio Solis, Oscar European Patent Attorney – ZBM Patents & Trademarks orubio@zbm-patents.eu | www.zbm-patents.eu
Oscar Rubio Solis holds an MSc in mechanical engineering and during his professional career he has gained experience in several engineering fields, especially in renewable energy, automotive engineering, metallurgy, printing technology, manufacturing processes and mechanics in general. After a brief stay in the R&D department of photovoltaic solar energy of a large multinational company operating in power generation and railway systems, Mr Rubio moved to the patent department of the wind energy business within the same company, where he worked as a patent engineer for four years. Mr Rubio then joined an international manufacturer of metal automotive components, where he worked as a patent engineer and patent manager for three years. In 2016 Mr Rubio passed the European Qualifying Examination and joined ZBM Patents & Trademarks. In all these positions, Mr Rubio has been involved in matters such as drafting and prosecuting patent applications before the EPO, oppositions, validity and freedom-to-operate analysis, patent strategy and patent management. He also acts as a technical expert in Spanish court cases and lectures on patent matters in Spain.
ZBM Patents & Trademarks Rambla de Catalunya 123 Barcelona 08008 Spain T +34 933 426 472 F +34 933 427 970 See firm profile p1100 Professional associations • epi
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Toledo, Natividad Partner – ZBM Patents & Trademarks ntoledo@zbm-patents.eu | www.zbm-patents.eu
Natividad Toledo holds an MSc in chemistry from the University of Barcelona. She has a deep knowledge of patents and patent searching after having been responsible for the scientific information of several pharmaceutical companies and the Polytechnic University of Catalonia and, later, for the IP department of other pharmaceutical companies. She holds a master’s in online documentation from the University of Barcelona. Her knowledge of the patent system was strengthened by collaborating with the Patent Centre of the University of Barcelona for several years, until joining ZBM Patents & Trademarks in 2005. Ms Toledo passed the European Qualifying Examination (EQE) in 2009 and became a partner of ZBM in 2010. She took part in the courses of the University of Barcelona for the Spanish EQE candidates. At ZBM her practice focuses on retrieving scientific and patent information, drawing up patentability analysis reports, drafting and prosecuting patent applications (in particular for European and Patent Cooperation Treaty patent applications) in a wide range of chemistry fields. Ms Toledo is also strong on the preparation of freedom-tooperate opinions and of validity reports, particularly in the fields of chemistry and pharmacy.
ZBM Patents & Trademarks Rambla de Catalunya 123 Barcelona 08008 Spain T +34 933 426 472 F +34 933 427 970 See firm profile p1100
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Zea, Bernabé Partner – ZBM Patents & Trademarks bzea@zbm-patents.eu | www.zbm-patents.eu
Bernabé Zea founded ZBM Patents & Trademarks with Anna Barlocci and Peter Markvardsen in 2003. He has extensive experience in preparing patentability, infringement and freedom-to-operate opinions, negotiating patent licences, conducting due diligence and drafting patents. His practice focuses on organic chemistry and pharmacy, but also includes biotechnology and biochemistry. Mr Zea frequently acts as an expert in patent court actions before Spanish courts. He has acted as a technical expert both within and outside Spain in cases involving blockbuster drugs such as atorvastatin, escitalopram, alendronate, tamsulosine, venlafaxine and the most recent cases of fulvestrant and pemetrexed. Mr Zea is CEO and the driving force behind ZBM BConnect, a consultancy firm that assists private companies and public research institutions in optimising their technology transfer activities. His main duties in ZBM BConnect are the management of the company, obtaining technology from companies and other institutions, and conducting technology transfer negotiations. Mr Zea started teaching at the Patent Centre of the University of Barcelona in 1988. He is an expert in searching patent and scientific literature, as he was a representative of both STN International and Chemical Abstracts Service in Spain for over 10 years. Before this, he worked for Questel-Orbit. Since 1988 he has lectured regularly on patent matters on courses organised by the Spanish Patent and Trademark Office and the Patent Centre of the University of Barcelona, as well as on the main Spanish master’s programmes on intellectual property. He has authored several articles on patent matters and patent documentation in Spanish newspapers and specialised journals. He currently combines his position as partner at ZBM with his position as professor at the University of Barcelona.
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ZBM Patents & Trademarks Rambla de Catalunya 123 Barcelona 08008 Spain T +34 933 426 472 F +34 933 427 970 See firm profile p1100 Professional associations • AIPPI • COAPI
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Sweden
Sweden has a lengthy tradition of promoting innovation and supporting entrepreneurship; as a result, the country regularly ranks highly in global innovation indices and is one of the top filers at the EPO. The government plays a key role in sponsoring local talent – for example, innovation agency Vinnova promotes and funds research projects across a wide range of fields. Lately, the pharmaceutical and automotive industries have been hotbeds of activity, especially as biosimilar products and digitalised offerings start to enter the market. Practitioners also report an uptick in software patenting, as high-tech companies increasingly avail of the patenting systems available to them. On the contentious front, the country’s specialised IP courts celebrate their fifth anniversary this year, and lawyers have nothing but praise for their efficiency and quick turnaround times. Overall, activity looks healthy and Sweden remains a favourable jurisdiction for those seeking to protect and enforce their assets.
Advokatbyrån Gulliksson
Gulliksson is “a top-notch firm for patent litigation”: “The level of service is excellent, as are its legal knowledge and business understanding. Replies are speedy, accurate and focused, and its lawyers take an informal approach, which makes the group easy to work with.” The main draws for pharmaceutical, life sciences and technology companies include Mattias Malmstedt, Magnus Dahlman and Jens Olsson. Malmstedt earns plaudits for his creative capabilities, critical analyses of both the technical and legal aspects of a case, and speedy response times: “He is vital to successful outcomes.” He recently represented Bosch Siemens in proceedings against Electrolux and, along with Dahlman, prevailed for Sandoz in a litigation concerning three patent families. “Outstanding litigator and skilled advocate” Dahlman has both the law and the technology on lock: “He is efficient, responsive and really understands his clients’ business.” Managing partner Olsson is an ambidextrous lawyer who contributes significantly to Gulliksson’s wins in contentious and transactional settings.
AWA
“An excellent firm with gifted practitioners”, AWA is scarcely rivalled when it comes to technical versatility, strength in depth and geographical reach. It operates in every corner of the world and recently set up shop in Norway, further cementing its Scandinavian presence and bringing its total office count to 19. In the high-tech, electrical and mechanical disciplines, you would be hard pressed to find better counsel than Sören Giver, Julia Mannesson, Charlotta Vink, Urban Lind, Mattias Pierrou and Joacim Lydén. Courtesy of his broad IP skillset, Giver assists major domestic and international corporations in many meaningful ways, from freedom-to-operate analyses to oppositions and appeals. He also plays a crucial role in furthering the progress of AWA’s
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future leaders, serving as an in-house European Qualifying Examination coach and lecturer. Cut from the same cloth, the “extremely well-organised and service-minded” Mannesson is “quick to help out and cater to her clients’ needs”. Capitalising on over 20 years of experience, Vink wows with her commercial eye, technical acumen and attention to detail; while versatile operator Lind covers a lot of ground for telecommunications companies. “Seasoned and appreciated prosecutor” Pierrou is “a fantastic choice for software patents”; he has recently been helping leading Chinese technology corporation BOE Technology to protect its inventions in Europe by filing and maintaining over 100 European patent applications. IAM Patent 1000 debutant Lydén has a keen sense of the broader picture and thinks long term, working alongside inventors to develop solid protection plans and then executing on them flawlessly. Turning to the life science, Mikael Henriksson, Niklas Mattsson and IngaLill Andersson make up a dynamic trio. Medical biochemistry PhD and SPC guru Henriksson knows all the right moves in opposition proceedings before the Swedish Patent and Registration Office (PRV) and the EPO. An authority on biotechnology matters, Mattson is regularly sought out as a technical expert and has appeared in US patent litigation proceedings to share his ample knowledge of European patent law. Chemical engineer Andersson provides percipient guidance on R&D agreements, having held a post as an analytical chemist in AstraZeneca’s R&D division. AWA is a significant player on the contentious side too, with Peter Kenamets and Fredrik Lüning anchoring the litigation division. “Thorough and hardworking advocate” Kenamets “brings insightful views to every case”; while Lüning delivers arguments with clarity and conviction. The pair are currently assisting high-tech company IRnova in multi-faceted proceedings against US-based FLIR Systems. See p928 for firm profile
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Sweden Firms: prosecution
Firms: transactions
Highly recommended
Mannheimer Swartling
AWA
See p928
Roschier, Attorneys Ltd
Kransell & Wennborg AB
Setterwalls Advokatbyrå AB
Ström & Gulliksson AB
Synch Advokat AB
Valea AB
See p1078
Vinge
Zacco
See p1098
Westerberg & Partners Advokatbyrå Ab
Recommended BRANN AB
See p940
Groth & Co Hynell Intellectual Property AB Noréns Patentbyrå AB
BRANN AB
Specialised IP firm BRANN is resolute in its mission to provide far-sighted, cost-efficient, value-added services. It is home to a 50-strong diverse team of European and Swedish patent and trademark attorneys, lawyers and other IP administrators, which renders a holistic service to innovative patrons. Biotechnology and pharmaceuticals are a forte, courtesy of Annika Kilander, who takes a meticulous and commercial approach to prosecution and transactions instructions, having spent over a decade as a leader in the IP department of GE Healthcare’s life sciences division. See p940 for firm profile
Groth & Co
Sweden’s longest-serving IP outfit, Groth & Co was founded in 1869 and has historically advised inventors and corporations at the cutting edge of their respective fields – including, in its infancy, the likes of Alfred Nobel and Thomas Edison. And that trend continues today: for example, managing partner Mathias Loqvist is assisting Swedish MedTech company Elekta – a pioneering manufacturer of equipment and software used to prolong and save the lives of cancer patients – with all its IP matters and astutely handles its immense patent portfolio. Meanwhile, in the burgeoning area of 5G and telecommunications, Nabil Sebaa takes the lead:
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See p1080
“He has a great eye for technical detail and drafts strong applications with broad scopes of protection. Nabil also produces top-quality reports on office actions and comes up with great replies too.” One of Groth & Co’s strengths is that many of its attorneys have held in-house positions. Sebaa previously worked at Ericsson, while Tommy Vikholm and Dag Stålhandske were positioned at AkzoNobel and Electrolux respectively. Chemical engineer Vikholm has profound opposition and licensing know-how; while engineering physicist Stålhandske has great strategic vision and conducts thorough landscape analyses.
Hynell Intellectual Property AB
A prosecution boutique with “highly skilled and tremendously experienced practitioners”, Hynell Intellectual Property sets itself apart through its creative approach and the collective insight of its senior attorneys. The set is a fine choice for EPO instructions – especially as most of the group have previously worked as EPO examiners and have also held prominent industry roles. Two such stalwarts are Peter Kylin and Barry Franks. SMEs in need of business-oriented strategies have an ally in mechanical engineer Kylin, who used to be a patent manager at Aker Solutions. Resident oppositions expert Franks “always does what he promises, meets deadlines and delivers work to the highest standard. He is customer-focused, super-friendly and a pleasure to collaborate with”.
Kransell & Wennborg AB
“Without a doubt, Kransell & Wennbord [K&W] is one of the best patent prosecution firms in Sweden. If you want to spend less time explaining and more time doing, then K&W is the firm for you.” The popular outfit receives praise from all corners of the market, with both peers and clients quick to extol leading
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Sweden lights Anders Wirén and Johan Wennborg. “Anders is an extraordinary practitioner with exceptional drafting skills; he is great at understanding the invention and spotting the key patentable features. His first drafts are so good they could even be the final application.” “He delivers clear and constructive advice in litigation support, and his insight in negotiating and structuring commercial collaborations is super-valuable.” He recently handled opposition proceedings for BillerudKorsnäs alongside Wennborg. “Hands down the country’s best attorney”, Wennborg is “super-talented. He has excellent analytical skills, thorough knowledge of many technological fields and a great ability to grasp and explain all the crucial details”. His adroit navigation of prior art, precision drafting, creativity, linguistic talents and background as an EPO examiner all give him an edge. Other stars in the K&W firmament include Daniel Fritsche, Magnus Nilsson, Roland Mezöfi, Martin Holmberg-Schwindt, Oscar Sewerin and Karin Hillsten – a testament to its bench strength. “Daniel really understands the needs of clients and the importance of practical advice. He is energetic, creative, ready to take initiative and always delivers to a high standard.” Lately, he and Nilsson have been assisting Mölnlycke Health Care and successfully maintained one of its most crucial patents in the area of negative-pressure wound therapy. Nilsson has deep engineering knowledge in electronics, software and mechanics, and in the interactions between the three: “He quickly understands the core ideas behind an invention, narrows them down to logical claims and puts them in writing. He is friendly, approachable and a great teacher too.” With extensive experience prosecuting applications in Europe and the United States, electrical engineer Mezöfi earns plaudits for his “dedication, excellent skills and ability to put himself in clients’ shoes. Roland is customer oriented, technically savvy and a fantastic listener”. Chemical and mechanical engineers Holmberg-Schwindt and Sewerin bring further technical versatility to the table. “Martin is forthcoming, and honest; he is easy to talk to and is always willing to explain complex technical concepts to people outside of the patenting world. He projects calmness, replies promptly and goes above and beyond.” “Open-minded and an excellent communicator”, Sewerin is “really talented at what he does and keeps on top of every single matter”. IAM Patent 1000 newcomer Hillsten also garners praise: “She is strategically sharp and an excellent drafter, and is great to work with”. As the former IP manager at a prominent healthcare company, she amplifies the crew’s life sciences and pharmaceutical expertise.
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Firms: litigation Sandart & Partners Advokatbyrå KB
See p1058
Vinge
See p1080
Advokatbyrån Gulliksson Setterwalls Advokatbyrå AB Westerberg & Partners Advokatbyrå Ab AWA
See p928
Mannheimer Swartling Roschier, Attorneys Ltd
Mannheimer Swartling
Premier commercial outfit Mannheimer Swartling has bases all over Sweden and boots on the ground in China, Belgium, Russia, Singapore and the United States, making it a persuasive option for cross-border IP and technology transactions work. As an example, the side recently helped Scandinavian Enviro Systems to complete a direct share issue to Michelin as part of a long-term strategic partnership between the two. Instrumental to the deal was Oscar Björkman Possne, who is unfazed by the pressure of high-value disputes and transactions. An eloquent advocate, he also regularly represents major pharmaceutical players in pan-European litigation.
Noréns Patentbyrå AB
“Noréns is outstanding at understanding and describing complicated technical solutions, such as artificial intelligence, algorithms and advanced software; and has the skills to structure those claims into successful applications. You can fully trust Noréns to take care of every step in the patenting process and have the confidence it will deliver.” At the heart of the practice are European patent attorneys Johan Örtenblad, Anders Bratt and Helene Strandin. “Absolutely top class”, Örtenblad is “extremely knowledgeable and possibly one of the brightest agents in the country. He sees key points quickly, explains complex technologies to lawyers really well and is always available to answer questions”. In the life sciences, Bratt is a transactional ace who is “really skilled at evaluating patents; he understands the business behind patent portfolios and has the commercial perspective that corporate counsel love”. Joining them in the guide this year is resident
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Sweden Linda Egeröd Sidot Valea AB
Individuals: prosecution Highly recommended
Peter Ekwall Ström & Gulliksson AB
Björn E Andersson Ström & Gulliksson AB
Thomas Ernby Valea AB
Christian Arkelius Ström & Gulliksson AB
See p793
Daniel Fritsche Kransell & Wennborg AB
Barry Franks Hynell Intellectual Property AB Andrew Hammond Valea AB
See p791
See p795
Johan Örtenblad Noréns Patentbyrå AB
Marcus Gentzel Valea AB
See p794
Sören Giver AWA Mikael Henriksson AWA
Rikard Roos Ström & Gulliksson AB
Karin Hillsten Kransell & Wennborg AB
Johan Wennborg Kransell & Wennborg AB
Martin Holmberg-Schwindt Kransell & Wennborg AB
Anders Wirén Kransell & Wennborg AB Recommended
Ulf Juhlin-Dannfelt Zacco
See p796
Inga-Lill Andersson AWA
Annika Kilander BRANN AB
See p797
Magnus Berglund Ström & Gulliksson AB
Peter Kylin Hynell Intellectual Property AB
Malin Boström Groth & Co
Sofia Larsson Zacco
Anders Bratt Noréns Patentbyrå AB
Urban Lind AWA
Michael Byström Zacco
See p790
mechanical engineering guru Strandin: she is “lovely to collaborate with, thanks to her simplified and clear explanations of complex inventions”.
Roschier, Attorneys Ltd
Roschier’s dynamic Swedish IP team works harmoniously with its Finnish counterparts to provide a joined-up Nordic service that stays true
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Jörgen Linde Zacco
See p799
See p800
to its phenomenal reputation. In litigation, it is well equipped to tackle commercially consequential disputes, as evidenced by its recent representation of Autoliv against Volvo in the Supreme Court – a case that marks the first time the jurisdiction of the country’s specialised IP courts has been challenged. It also tackles high-value deals on the regular, having just acted for Volkswagen in Northvolt’s $1 billion
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Sweden Mathias Loqvist Groth & Co
Nabil Sebaa Groth & Co
Joacim Lydén AWA
Oscar Sewerin Kransell & Wennborg AB
Julia Mannesson AWA
Tommy Somlo Zacco
Niklas Mattsson AWA
Dag Stålhandske Groth & Co
Linda Melin Granberg Megra IPR
See p801
Helene Strandin Noréns Patentbyrå AB
Roland Mezöfi Kransell & Wennborg AB
Annika Unge Bergenstråhle & Partners
Magnus Nilsson Kransell & Wennborg AB
Tommy Vikholm Groth & Co
Mattias Pierrou AWA
Charlotta Vink AWA
Anette Romare Valea AB
See p802
Hampus Rystedt Zacco
See p803
capital raise. A key player in both matters, Erik Ficks delivers “convincing and winning arguments. His sharp mind, precise approach and ability to discuss technical concepts and quickly get to the critical points are most impressive”.
Sandart & Partners Advokatbyrå KB
“Distinguished and highly renowned”, Sandart & Partners is a prime pick for complex patent litigation. “Its lawyers work with in-house counsel and each other exceptionally well”; and when it comes to quality, client service and proactivity, “they are definitely in the top tier”. The side absolutely dominates in cutting-edge pharmaceutical disputes, where Peter Sande and Dag Sandart are the marquee names. “If there is even a sniff of a dispute in the air, your first choice should be Peter,” insists one market commentator. “He is undoubtedly the best patent litigator in Sweden, with the ability to recognise the most important details in complicated disputes. He may be softly spoken, but he is razor sharp; you definitely want him on your side in the courtroom.” “Dag is a major competitor who can
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See p806
Paul Winblad Zacco
See p810
answer the toughest patent questions in contractual and contentious matters with ease.” He comes in for additional praise alongside Julia Ericsson: “They are both super-dynamic and have an impressive ability to understand the technical data and general information, despite the complex nature of the cases they handle. They have an excellent work ethic and their legal opinions are outstanding.” Ericsson’s pharmaceutical, medical technology and software clients also benefit from her extensive regulatory know-how. Another dyed-in-the-wool litigator, Anders Kylhammar has a vibrant and versatile contentious practice, which means that he solves legal problems holistically and handles multi-faceted disputes with flair. Rounding off the troop is Karin Westerberg, a tenacious advocate whose “diligence, excellent care for details and flexibility exceed all expectations”. See p1058 for firm profile
Setterwalls Advokatbyrå AB
When it comes to representing generic pharmaceutical companies in patent litigation, Setterwalls “is among the very best and always does a spectacular job.” It regularly goes out to bat for some of the world’s leading entities – in one recent highlight, it acted for Sandoz in multi-jurisdictional infringement and
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Sweden revocation proceedings against Eli Lilly, with Martin Levinsohn bringing home a favourable first instance decision. The work of “extremely skilled litigator” Levinsohn is “always very thorough. His advice considers the business goals of his clients and the industries in which they operate”; he also stands out for his “quick replies, personable nature and great collaboration with expert witnesses”. Levinsohn also linked up with Per Lidman to assist Fresenius Kabi in a cross-border dispute; although the Swedish proceedings were initiated later than several of their European counterparts, the pair came up with creative and novel arguments to shore up the pharmaceutical giant’s position. The dedicated and passionate Lidman has additionally been lighting up the life sciences space by brokering major R&D and licensing deals.
Individuals: transactions
Ström & Gulliksson AB
Jonas Löfgren Westerberg & Partners Advokatbyrå Ab
The “super-successful” Ström & Gulliksson is “a modern and dynamic boutique full of wonderful talent”. Its artful management of massive portfolios containing thousands of patent families has earned it a sterling reputation among A-listers such as IKEA, Rolls-Royce, ARJO and Atos Medical. The allstar line-up in Malmo includes Rikard Roos, Björn Andersson and Magnus Berglund. “Dedicated, clever and an excellent communicator”, Roos “explains complex technical matters in layman’s terms, which makes life super-easy for litigators. He is a brilliant strategist with a great business understanding”, which translates into persuasive arguments in inter partes cases and oral proceedings. “He has a winning attitude and is the attorney you definitely want on your side of the table.” Electronics and Internet of Things whizz Andersson also receives glowing praise: “When it comes to litigation, Björn is psychic – he is absolutely brilliant, focuses on all the right questions and issues, and ends up giving the opposing party a run for their money. He combines extreme brilliance with a commercial approach, and gives clear and understandable advice.” IAM Patent 1000 newcomer Berglund heads up the chemistry squad and is counsel of choice for start-ups and SMEs looking to make their mark in Sweden, thanks to his insightful early stage opinion work. Over in Stockholm, Christian Arkelius is “one of the most trustworthy European patent attorneys around. He has a deep understanding of European and Chinese patent practices, and is always eager to learn about the latest legal developments. He is a true team player and his diligent approach is vital to clearing business obstacles”. Heading up the firm’s Gothenburg operations is Peter Ekwall, a go-to for complex assignments who “can be counted on for fresh perspectives and solutions”.
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Stojan Arnerstål Vinge
See p788
Oscar Björkman Possne Mannheimer Swartling Erik Ficks Roschier, Attorneys Ltd Kristian Fredrikson Advokatfirman Delphi Per Lidman Setterwalls Advokatbyrå AB
Ia Modin Westerberg & Partners Advokatbyrå Ab Peder Oxhammar Baker McKenzie Dag Sandart Sandart & Partners Advokatbyrå KB
See p804
Sara Sparring Synch Advokat AB Johan Tydén Synch Advokat AB
Synch Advokat AB
“Innovative and unique”, Synch has adapted its offering to accommodate the evolving needs of Sweden’s high-tech sectors and is the first firm in the Nordics to introduce its very own sandbox to support early-stage legal tech start-ups and entrepreneurs. It is a favourite among software companies and has recently been advising Albacross on the potential protections available for its one-of-a-kind algorithm – a brief on which Mathilda Nordmark played an integral role. The department head also maintains a sophisticated litigation practice, where her intuitive understanding of complex technical matters and the essence of patent infringement arguments yields business-oriented solutions; trademark and brand management expertise is a further string to her bow. Holding down the fort in transactions are Sara Sparring and Johan Tydén. Sparring is a
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Sweden Mattias Malmstedt Advokatbyrån Gulliksson
Individuals: litigation Håkan Borgenhäll Vinge
See p789
Martin Levinsohn Setterwalls Advokatbyrå AB
Karin Westerberg Sandart & Partners Advokatbyrå KB Wendela Hårdemark MAQS Law Firm
Dag Sandart Sandart & Partners Advokatbyrå KB
See p804
Peter Sande Sandart & Partners Advokatbyrå KB
Peter Kenamets AWA
See p805
Fredrik Lüning AWA
Jonas Westerberg Westerberg & Partners Advokatbyrå Ab
Mathilda Nordmark Synch Advokat AB
Magnus Dahlman Advokatbyrån Gulliksson Julia Ericsson Sandart & Partners Advokatbyrå KB
Jens Olsson Advokatbyrån Gulliksson See p792
Erik Ficks Roschier, Attorneys Ltd
See p798
Per Lidman Setterwalls Advokatbyrå AB
proven performer in the life sciences: she has lately been assisting Immedica Pharma with a range of commercial contracts and provided strategic advice to Region Västerbotten in relation to its business models for new advanced therapies. Tydén is “one of the most respected and experienced lawyers in the telecommunications industry”, as the former head of legal services at Ericsson; with a career that has spanned the journey from 2G to 5G, he is intimately familiar with the tech.
Valea AB
Valea’s patent attorneys have mastered all patentable technical areas and have everything covered, from filing and prior art searches to due diligence work, oppositions and litigation support. CEO Andrew Hammond has played a major role in driving the firm’s success and is a widely respected member
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Björn Rundblom Andersson Westerberg & Partners Advokatbyrå Ab Christopher Tehrani Cirio Advokatbyrå AB
Ludvig Holm Westerberg & Partners Advokatbyrå Ab Anders Kylhammar Sandart & Partners Advokatbyrå KB
See p809
Martin Tranälv Zacco
See p807
Malin Malm Waerme Vinge
See p808
of the IP community. “Exceptionally skilled at oppositions and oral proceedings”, he recently represented Primozone Production before the PRV along with Anette Romare, who “consistently shows high personal engagement and truly fights to defend her clients. She is technically brilliant and creatively identifies new patentable subject matter as well as good lines of argumentation in proceedings. Anette has a pragmatic approach and delivers high-quality work quickly and cost effectively”. In the mechanical field, Thomas Ernby, Linda Egeröd Sidot and Marcus Gentzel play the adviser role to perfection. Ernby’s passion for innovation takes him right to the heart of the automotive and energy industries. Egeröd Sidot thrives in total strategic support roles; in one recent highlight, she successfully represented Swedish Match North Europe in opposition proceedings. “Great at understanding complex inventions”, Gentzel is “attentive to details, finds solutions in tricky situations and gives excellent
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Sweden advice”. Recently moving over from Groth & Co to head up Valea’s life-tech and chemistry team, Malin Boström builds commercially valuable portfolios within the life sciences. See p1078 for firm profile
Vinge
Full-service Vinge is one of the most prominent players on the Swedish legal market and houses “an exceptionally strong patent litigation team. You know for a fact that if its lawyers are on the other side of a case, you will be in for a ride”. Its client base is equally striking and the set regularly acts for industry leaders in high-profile cases and lucrative transactions. “The country’s number one litigator”, Håkan Borgenhäll is “meticulous, detail oriented and manages an impressively large caseload. He has a wealth of legal knowledge and a lovely collaborative approach, even with opposing counsel”. This year he is joined by Malin Malm Waerme, a rising star with extensive life sciences experience: “She is super-dedicated, great fun to work with and gracefully handles complex pharmaceutical cases.” On the transactions front, the “brilliant” Stojan Arnerstål also makes his debut. No stranger to high-rolling deals, he recently advised Main Capital and Alfa eCare on their strategic acquisition of Joliv. See p1080 for firm profile
Westerberg & Partners Advokatbyrå Ab
“Top-class” litigation and IP boutique Westerberg & Partners is “full of talented lawyers who are simply excellent at what they do”. Although it only opened its doors two years ago, the firm has quickly cemented its position among the patent elite; its esteemed practitioners have been working together for the better part of a decade and routinely act on landscape-shifting mandates. Robust leadership is supplied in abundance by Jonas Westerberg, “a stand-out litigator with profound legal knowledge”. Quick-witted and immensely skilled, he has been acting for genetic sequencing company Illumina along with Ludvig Holm, who “produces great work and gives solid, clear and practical advice” at every turn. The pair have already asserted two patents against three different entities – BGI Hong Kong, MGI Latvia and MGI International Sales – and are geared up for a month-long trial this year. Multijurisdictional disputes are a forte for Björn Rundblom Andersson. He has superb coordination skills and a keen eye for litigation strategy, which he deployed for Electrolux in infringement proceedings brought by BSH Hausgeräte, a home appliance company seeking pan-European relief from the local courts for
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the alleged infringement of 10 national designations of a European patent. The case is believed to be a Swedish first and raises questions on the availability of such relief in Sweden. A further testament to the trio’s prowess is their latest victory for Finansiell ID-Teknik BID, the country’s main e-identification service, in a trade secrets action which resulted in the award of approximately £1 million in litigation costs and the bankruptcy of the opponent. Westerberg clients can also mine a rich seam of licensing and R&D expertise courtesy of Jonas Löfgren and Ia Modin. Löfgren pairs his encyclopaedic knowledge of regulatory law with a resolutely commercial outlook to draft contracts that transform the sectors in which his patrons operate. Lately, he supported Karo Pharma in acquiring the Rx Pevaryl branded products portfolio of Johnson & Johnson group company Janssen. “When a matter concerns Swedish law and goes beyond standard patent legislation, I turn with confidence to Ia,” enthuses one peer. “She stays calm, takes in all the facts and provides excellent opinions.” She is assisting Tiki Safety, an innovative company developing personal protection equipment, with the growth of its business and exploitation of its patent rights on an international level.
Zacco
Zacco’s USP is its uniquely personal touch: “Its attorneys are genuinely interested in clients’ inventions and make them feel confident in their knowledge and dedication from the outset.” With a 500-strong team operating out of 32 offices in six countries, the group is ideally placed to manage large-scale portfolios and prosecute applications globally. As a reflection of its diverse talent and strength in depth, eight of its practitioners in Sweden feature in the IAM Patent 1000 this year: Jörgen Linde, Michael Byström, Sofia Larsson, Paul Winblad, Ulf Juhlin-Dannfelt, Tommy Somlo, Hampus Rystedt and Martin Tranälv. Former DNA analysis research engineer and oppositions ace Linde holds down the chemistry and life sciences division together with Byström, “one of the best European attorneys for multi-jurisdictional filing and coordination”, who was recently made director of international business. Medical device whizz Larsson is “detail oriented, fantastic with technology and very skilled in the mechanical and electrical areas”. “Quality and speed” characterise the service of former PRV examiner Winblad: “He is easy to collaborate with and flexible in his approach.” For meticulous applications in the mechanics and automotive sectors, Juhlin-Dannfelt has it locked down. Also in mechanics, Somlo is another former examiner who knows the optimum
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Sweden route through to grant – something he shares with life sciences maestro Rystedt. “Hampus is superknowledgeable, awesome to work with and one of the best attorneys in Sweden.” Those in search of holistic protection need look no further than Tranälv, a dual-qualified attorney who navigates complex technologies with consummate ease. See p1098 for firm profile
Other recommended experts
A go-to for trade secret litigation, Kristian Fredrikson “gets to grips with essential technical issues quickly and gives clear, constructive recommendations. He is super-service minded and always finds a way to get things done in the quickest, most cost-effective way. To top it off, he’s a lovely person too”. Fredrikson takes instructions at Delphi. Recently departing Zacco to set up Megra IPR, Linda Melin Granberg does a terrific job diving into diverse technologies and presents compelling arguments in oral proceedings before the
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EPO. Over at MAQS Law Firm, Wendela Hårdemark is “an excellent litigator with a deep understanding of the law” who can “pick up complicated technical concepts quickly. She has a lot of integrity and makes sure that things get done to the highest standard”. Baker McKenzie’s Peder Oxhammar is “a fantastic choice for litigation, with great industry experience. He is highly skilled, asks all the right questions and is great to work with”. At Cirio, Christopher Tehrani receives glowing praise: “Chris is a devoted lawyer and big-picture thinker who is always one step ahead. He has great knowledge of international patent regulations, understands tricky legal and technical issues, and considers how the characteristics of certain industries might impact on his litigation strategies.” Heading up the patent division at Bergenstråhle & Partners, Annika Unge is a favourite among the university and start-up community for her innovative approach, practical strategies and facility for developing and strengthening portfolios.
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Arnerstål, Stojan Specialist, IP Expert – Vinge stojan.arnerstal@vinge.se | www.vinge.se
Stojan Arnerstål (LLD) joined Vinge’s IP group in early 2019. In addition to previous positions in courts and at commercial law firms, Dr Arnerstål is one of the leading IP law academics in Sweden and was until recently the director of the Institute of Intellectual Property, Marketing and Competition Law at Uppsala University where he is also associate professor. He regularly teaches law at Uppsala, Stockholm and Lund Universities and frequently speaks and publishes articles on IP and contracting issues. He is the Swedish country editor of the Nordic Intellectual Property Law Review and the acting chair for the trademark group of the Swedish Association for the Protection of Intellectual Property Law. Dr Arnerstål specialises in transactional intellectual property and focuses on legal and strategic advice in matters concerning IP law and contract law. His services primarily focus on IP issues and risk assessments in transactions (M&As), technology transfers, licensing structures and development agreements, including negotiations and drafting. He is in particular experienced in media, technology and life sciences‑related agreements. Dr Arnerstål is the author of The Anatomy of a License Agreement (Licensavtalets anatomi) (2019), Trademark Use (Varumärkesanvändning) (2018), and Trademarks as Objects of Contractual Arrangements (Varumärket som kontraktsföremål) (2014). He won the European Communities Trademark Association Award 2017 and the von Bahr Premium 2014.
Vinge Smålandsgatan 20 Box 1703 Stockholm SE-111 87 Sweden T +46 10 614 3056 See firm profile p1080 Professional associations • INTA • LES • SFIR Sample client list • Net Insight AB • Star Stable Entertainment • Vivino
788
IAM Patent 1000
www.IAM-media.com
Borgenhäll, Håkan Partner – Vinge hakan.borgenhall@vinge.se | www.vinge.se
Håkan Borgenhäll is a partner of Vinge, one of the largest full-service law firms in Sweden. He is a top-ranked IP lawyer and an inductee in The Legal 500 Hall of Fame. Mr Borgenhäll’s practice focuses on contentious matters concerning patents, trademarks, copyright and registered designs, commercial IP agreements and marketing law. He also gives advice in relation to IP strategies and the establishment of IP rights. Clients have commented that Mr Borgenhäll is a “very good pick for the bigger litigation matters”, while the IAM Patent 1000 described him as “the number one patent litigator in Sweden”. Mr Borgenhäll represents clients in varied technical fields, including supplementary protection certificate matters, and has been involved in several crossborder disputes including block-buster pharmaceuticals. Mr Borgenhäll is an appointed expert for governmental investigations into the amendments to the Swedish Patents Act needed in relation to the Unified Patent Protection and the Unified Patent Court, as well as the drafting of a new Swedish Patent Act. He also frequently writes opinions for the Swedish Bar Association on new proposals for IP legislation. Mr Borgenhäll has also recently been appointed by the Swedish government as a member of the Swedish Patent Attorneys Board, which manages the authorisation and supervision of patent attorneys. Mr Borgenhäll lectures at universities and IP organisations and has written several articles concerning intellectual property, such as damages in trademark law.
Vinge Smålandsgatan 20 Box 1703 Stockholm SE-111 87 Sweden T +46 10 614 3030 See firm profile p1080 Professional associations • EPLAW • FICPI • Swedish Patent Attorneys Board Sample client list • Alfa Laval • Eli Lilly and Company • MSD (Merck) • Swedish Match North Europe
www.IAM-media.com
IAM Patent 1000
789
Byström, Michael Director, International Business – Zacco michael.bystrom@zacco.com | www.zacco.com
Michael Byström is director of international business and a senior partner at Zacco, which he joined in 2001. He has experience in all aspects of patent prosecution within the technical fields of pharmaceutical chemistry, biochemistry, biofuels, bio-informatics, pulp and paper, and medical technology and devices. He frequently works with both local and international clients on IP strategies, freedom-tooperate and IP due diligence projects. Mr Byström graduated in 1996 with a MSc in chemistry from Umea University. From 1996 to 2001 he held various positions in Sweden and Norway – first at Pharmacia & Upjohn and then at the Swedish Institute for Food and Biotechnology. He later worked as a business development manager at CAMO Software in Oslo, focusing on project management, licensing and M&A processes. He has co-authored two scientific publications in the technical area of chemometrics. Mr Byström has been instrumental in establishing Zacco’s international business. He has been a key figure in the development of the Zacco supplementary protection certificates (SPC) team and has comprehensive experience of SPC prosecution in Europe. Mr Byström has held various management positions within Zacco. He is currently a member of the board, in addition to his positions as director of international business and senior patent attorney and partner. His clients recognise him as an account manager who devotes significant time to strategic consulting as well as business advice. Mr Byström is a member of the Zacco specialist group for SPC applications, US law and IP due diligence. He is an authorised patent attorney in Sweden and a member of the International Association for the Protection of Intellectual Property, the Association of Intellectual Property Professionals in Swedish Industry, SwedenBio and the Association of Swedish Patent Attorneys.
790
IAM Patent 1000
Zacco Valhallavägen 117 N PO Box 5581 Stockholm 11485 Sweden T +46 8 59 88 7240 See firm profile p1098 Professional associations • AIPPI • SIPF
www.IAM-media.com
Egeröd Sidot, Linda European Patent Attorney – Valea AB linda.egerod.sidot@valea.eu | www.valea.se
Linda Egeröd Sidot specialises in patent matters in relation to general mechanical and chemical engineering. She has detailed knowledge and experience of patent matters in the areas of packaging and packaging technology, absorbent materials, non-woven materials, hygienic absorbent products, paper and fibre technology, and polymer chemistry. She also works in the areas of diagnostic devices and the automotive industry. She holds a MSc in pharmaceutical bioscience from the University of Gothenburg, and is a European patent attorney and a Swedish authorised patent attorney. Ms Egeröd Sidot started her IP career in 2004 as an in-house patent attorney at SCA Hygiene Products AB (now Essity Hygiene and Health AB). She passed the European qualifying examination in 2009 and she joined Valea AB in 2014. During her time at SCA Hygiene Products she was responsible for the IP strategy and work within the research department, and was active as a lecturer in the internal educational IP programme. She is currently involved in the mentoring programme at Valea AB. Ms Egeröd Sidot works with all types of patent matter, such as patentability opinions, patent drafting and prosecution. She works closely with her clients on identifying inventions and providing strategic IP counselling. She has extensive experience in freedom-to-operate analyses and opinions, as well as opposition proceedings before the European Patent Office.
www.IAM-media.com
Valea AB Lilla Bommen 3A PO Box 1098 Gothenburg SE-405 23 Sweden T +46 733 811566 See firm profile p1078
IAM Patent 1000
791
Ericsson, Julia Partner – Sandart & Partners Advokatbyrå KB julia.ericsson@sandart.se | www.sandart.se
Julia Ericsson is a partner of Sandart & Partners who specialises in litigation relating to IP rights and market law, with a strong focus on patent litigation. Ms Ericsson is an experienced litigator and regularly represents Swedish and international clients in patent infringement and validity proceedings in Sweden. Her experience covers, among other things, cross-border patent litigation covering several jurisdictions, and complex copyright and trade secret litigation involving multiple infringement investigations and interim proceedings. Ms Ericsson also provides general strategic advice on IP matters and advises on regulatory matters (eg, regarding pharmaceuticals and medical devices). Ms Ericsson represents clients in all fields of technology (eg, pharmaceuticals, biotechnology, medical devices, mechanical, electronical, telecom and software). Ms Ericsson is a board member and treasurer of the European Patent Lawyers Association (EPLAW). EPLAW is a non-profit association of experienced patent lawyers in the European Union whose aim is to promote the equitable and efficacious handling of patent disputes across Europe. Since 2012, Ms Ericsson has co-authored the Swedish chapter of Kluwer Law International - Software Patent Worldwide (together with Magnus Nordin of Kransell & Wennborg). After graduating from Uppsala University in 2004, Ms Ericsson joined Mannheimer Swartling Advokatbyrå as an associate before serving as a law clerk at the District Court of Solna in 2005-2006. She joined Sandart & Partners Advokatbyrå in 2006 and has been a member of the Swedish Bar Association since 2009. She became a board member of EPLAW in 2019. Ms Ericsson was born in 1979. She speaks English, German and Swedish. Sandart & Partners is a business law firm with expertise in intellectual property, litigation, dispute resolution and contracts. Many of the firm’s clients are companies in industries where intellectual property and knowledge are in focus. The firm also provides advice and represent clients in marketing law matters, competition law matters and regulatory matters.
792
IAM Patent 1000
Sandart & Partners Advokatbyrå KB PO Box 7131 Stockholm SE-103 87 Sweden T +46 8 440 68 00 See firm profile p1058 Professional associations • AIPPI • ALAI • EPLAW
www.IAM-media.com
Ernby, Thomas Senior Partner – Valea AB thomas.ernby@valea.eu | www.valea.eu
Thomas Ernby’s expertise lies in the field of mechanics. After obtaining an MSc from Chalmers University of Technology, Gothenburg, he worked as a consultant in the field of technical analysis, mostly for the vehicle and energy industries, prior to joining Valea in August 2005. Mr Ernby’s practice covers the full range of patent-related assignments, including pre and post-grant proceedings, as well as validity and infringement analyses. In regard to post-grant proceedings, he has conducted numerous oral proceedings before first instance bodies and the EPO Boards of Appeal, as well as before the Swedish Intellectual Property Office. Mr Ernby has also served as a technically qualified judge for a patent infringement dispute before the Oslo District Court. In his role as patent attorney, Mr Ernby has been involved in projects relating to a plurality of different fields of technology, including the vehicle industry, the offshore industry, medical devices and consumer products. In 2020 Mr Ernby completed the patent litigation in Europe course at the Centre for International Intellectual Property Studies of the University of Strasbourg, with distinction.
Valea AB Lilla Bommen 3A PO Box 1098 Gothenburg SE-405 23 Sweden T +46 31 507 702 See firm profile p1078
www.IAM-media.com
IAM Patent 1000
793
Gentzel, Marcus European Patent Attorney – Valea AB marcus.gentzel@valea.eu | www.valea.eu
Marcus Gentzel has detailed knowledge and experience of patent matters, mainly within the mechanical field – including general mechanics, mechatronics, bearing technology, manufacturing technology, renewable energy and continuous casting. He holds a MSc in mechanical engineering from Chalmers University and is a European patent attorney and a Swedish authorized patent attorney. Before joining Valea, Mr Gentzel worked at SKF’s patent department for about 13 years where, for the last six years, he was responsible for the patent operations for the Nordic countries and for a time period also managed SKF’s patent department in Bangalore, India. He has experience of patent drafting, prosecution, oppositions and appeal proceedings, and has also worked extensively with strategic IP counselling and managing large patent portfolios. In addition to the detailed knowledge of patent matters in the mechanical field, Mr Gentzel has also gained extensive knowledge and experience of patent matters in other technical fields such as information and automotive technology, including autonomous vehicle technology. Mr Gentzel has also been involved in more strategic IP work, including intellectual asset management, which consists of mapping and evaluating technology portfolios with the aim of giving advice on how to increase value by controlling unique knowledge in the best way.
794
IAM Patent 1000
Valea AB Lilla Bommen 3A PO Box 1098 Gothenburg SE-405 23 Sweden T +46 31 507 700 See firm profile p1078
www.IAM-media.com
Hammond, Andrew Chief Executive Officer – Valea AB andrew.hammond@valea.eu | www.valea.eu
Andrew Hammond is a founding partner of Valea. He has an honours degree in mechanical engineering from the University of Liverpool. Mr Hammond’s IP career began in 1983 when he joined the EPO in Rijswijk, the Netherlands, as a search examiner. In 1986 he transferred to the EPO’s Munich office, where he worked as a substantive examiner in examination and opposition proceedings. He left the EPO in 1990 to enter private practice in Sweden and qualified as a European patent attorney in 1993. Mr Hammond joined his present firm as managing director in 1998. His practice is primarily focused on contentious post-grant patent proceedings. He is engaged by numerous domestic and foreign clients to represent them in opposition and appeal proceedings before the EPO, where he enjoys an enviable track record. He is also experienced in national and international patent litigation. Mr Hammond’s clients are spread across many technical fields, including vehicle technology, medical devices, hygiene products, flooring, printing and mining. Mr Hammond is a tutor at the Centre for International Intellectual Property Studies and regularly gives lectures and seminars on all aspects of European patent procedures. He ran a two-year training programme for Finnish patent attorneys before Finland’s accession to the European Patent Convention in the 1990s, and a similar course for Norwegian attorneys in 2007.
www.IAM-media.com
Valea AB Lilla Bommen 3 A PO Box 1098 Gothenburg SE-405 23 Sweden T +46 31 507 700 See firm profile p1078
IAM Patent 1000
795
Juhlin-Dannfelt, Ulf Partner – Zacco ulf.juhlin-dannfelt@zacco.com | www.zacco.com
Ulf Juhlin-Dannfelt is an authorised European patent attorney and joined Zacco in 2008. Mr Juhlin-Dannfelt graduated in 2004 with an MSc from the engineering physics programme at Umeå University, where he specialised in measurement techniques. He completed his master’s thesis on satellite data analyses at The Royal Netherlands Meteorological Institute in Utrecht. From 2005 to 2008 he worked as a process instrumentation designer at Södra Cell Värö, a pulp mill located on the west coast of Sweden. Mr Juhlin-Dannfelt’s practice focuses on matters relating to all aspects of patent prosecution and enforcement, including prepatenting investigations, patent drafting and prosecution, oppositions, infringement and freedom-to-operate issues. He also advises clients on strategic patenting matters. Mr Juhlin-Dannfelt held a position as a team manager for one of Zacco’s patent teams from 2012 to 2016, focusing on strengthening the patent business within the region. While he works mainly in the fields of renewable energy, mechanics and automotive, his practice also covers other technical fields. His clients include companies of various sizes, ranging from small and medium-sized companies to multinationals, based in Sweden and abroad. Mr Juhlin-Dannfelt became a partner in 2018. He is a member of the European Patent Institute.
796
IAM Patent 1000
Zacco Theres Svenssons gata 13 Gothenburg 417 55 Sweden T +46 31 725 81 00 See firm profile p1098 Professional associations • epi
www.IAM-media.com
Kilander, Annika European Patent Attorney – BRANN AB annika.kilander@brann.se | www.brann.se
Annika Kilander started her career in private practice working with innovations in the fields of biotechnology and medicine before spending more than a decade at the global IP department of GE Healthcare’s life sciences division. There she gained deep experience not only in the crafts of due diligence, patent litigation and licensing of intellectual property, but also of communicating results and complex legal issues to leaders with little IP experience. A highly-regarded professional, Ms Kilander works not only with the general aspects of patent drafting and prosecution, she is also a true spokesman for the business-driven use of intellectual property, leveraging her experience working with large multinationals to assist smaller players. Ms Kilander also successfully and proactively drives the generation of new intellectual property through joint efforts from market representatives and R&D, often with a clear monetisation in view. BRANN has had the privilege to enjoy Ms Kilander’s broad skills since early 2013. She is now in charge of the firm’s Uppsala office, where she leads a team supporting a wide variety of clients, including universities, start-up companies and small to mediumsized enterprises. Wherever there is a need for IP support, Ms Kilander and her team present a solution that meets the client’s business targets.
www.IAM-media.com
BRANN AB PO Box 3690 Stockholm SE-103 59 Sweden T +46 8 429 10 00 F +46 8 429 10 70 See firm profile p940
IAM Patent 1000
797
Kylhammar, Anders Partner – Sandart & Partners Advokatbyrå KB anders.kylhammar@sandart.se | www.sandart.se
Anders Kylhammar specialises in commercial dispute resolution, intellectual property, marketing law and the protection of trade secrets. He has extensive experience giving strategic advice and handling litigation concerning trademarks, patents, copyright and designs. He frequently represents clients in court proceedings, including before the Swedish Supreme Court, and in arbitration proceedings. Further, Mr Kylhammar lectures at Lund University, Faculty of Law, and has published several books and articles on IP law. He joined Sandart & Partners in 2000 and has been a partner of the firm since 2001. Before joining Sandart & Partners, Mr Kylhammar was an associate judge at Svea Court of Appeal in Stockholm. In addition, he was a legal adviser at the Swedish Ministry of Justice, Division for IP law. Mr Kylhammar has served as an expert in several legislative committees, including the Swedish Legislative Committee on Trademarks. Mr Kylhammar is a member of the International Trademark Association, the European Patent Lawyers Association, the International Association for the Protection of Intellectual Property, the International Literary and Artistic Association, the European Communities Trademark Association and the corresponding Swedish national organisations. Mr Kylhammar graduated from Stockholm University, Sweden (LLM, 1990). He also holds a law degree in EU business law from the University of Amsterdam, The Netherlands (LLM, 1992). Mr Kylhammar was born in 1962. He speaks English and Swedish. Sandart & Partners is a business law firm with expertise in intellectual property, litigation, dispute resolution and contracts. Many of the firm’s clients are companies in industries where intellectual property and knowledge are in focus. The firm also provides advice and represent clients in marketing law matters, competition law matters and regulatory matters.
798
IAM Patent 1000
Sandart & Partners Advokatbyrå KB PO Box 7131 Stockholm SE-103 87 Sweden T +46 8 440 68 00 See firm profile p1058 Professional associations • AIPPI • ALAI • EPLAW
www.IAM-media.com
Larsson, Sofia Senior Partner – Zacco sofia.larsson@zacco.com | www.zacco.com
Sofia Larsson is a European patent attorney and an authorized patent attorney (Sweden); she joined Zacco in 2017, having worked in intellectual property since 2006. She has continued to establish her credibility as a ‘go to’ attorney for Swedish clients seeking to protect their inventions in international jurisdictions, as well as assisting international clients with their prosecution of European patent applications, in the field of medical devices and systems. Her prior experience as an in-house patent manager in a medical device company has provided her with valuable insight into aligning product development with protection of IP rights and IP strategy development. She has extensive knowledge of novelty and freedom-tooperate searches, and drafting and prosecution, and often contributes to legal disputes involving patents or due diligence investigations. Dr Larsson also advises clients on invention evaluation and patent strategies, and assists with legal processes involving patents. She works mainly in the fields of medical devices and systems, which includes medical technology, biomaterials and healthcare products, but also has experience working with mechanics, manufacturing and biotechnology. Dr Larsson graduated with a master of science in molecular biology from Stockholm University in 1994 and obtained a PhD in cell biology from the same university in 2001. She thereafter worked as a postdoctoral researcher at the Karolinska Institute for five years, within the field of molecular biology and lipid metabolism. In 2006 she started as a patent engineer at Radi Medical Systems AB in Uppsala and following the company’s acquisition by St Jude Medical, advanced to the position of patent manager. Before joining Zacco, she worked for five years at another IP firm as a patent attorney and a team manager. Dr Larsson has been ranked as a recommended individual in the IAM Patent 1000 since 2019. Her pragmatic and insightful attitude, extensive expertise and adaptive approach place her at the centre of many of her clients IP strategies. She is a member of the Institute of Professional Representatives before the European Patent Office, the International Federation of Intellectual Property Attorneys, the Association of Intellectual Property Professionals in Swedish Industry and the Association of Swedish Patent Attorneys.
www.IAM-media.com
Zacco Valhallavägen 117 N Box 5581 Stockholm 114 85 Sweden T +46 8 59 88 73 27 See firm profile p1098 Professional associations • Association of IP Professionals in Swedish Industry • Association of Swedish Patent Attorneys • epi
IAM Patent 1000
799
Linde, Jörgen Senior Partner – Zacco jorgen.linde@zacco.com | www.zacco.com
Jörgen Linde joined Zacco in 1998 and works primarily with patent prosecution, IP investigations and strategic advice, particularly in the area of life sciences. Mr Linde graduated in 1997 with an MSc in molecular biotechnology from the Uppsala University School of Engineering. Between 1997 and 1998 he was a research engineer in the field of biopolymer separation and DNA analysis at Amersham Pharmacia Biotech (now Cytiva) in Uppsala. At Zacco, Mr Linde has gained experience in many aspects of IP law, including prosecution for university-based inventors, start-ups, small and medium-sized companies and multinational industrial corporations. His technical fields include biotech, life sciences, pharmaceuticals, consumer care products, chemistry, green tech, medtech and mechanics. He has also acquired specific expertise in due diligence projects and freedom-to-operate (FTO) analyses, as well as opposition and litigation work. In addition, he has been active as a lecturer on various IP topics. Mr Linde was head (regional director) of Zacco and Albihns for Stockholm from 2008 to 2015 (Albihns and Zacco merged in 2009), where he acquired in-depth experiences of management and operational matters. Thereafter, he had a position as team manager until 2020. Since becoming a team manager in 2015, he has been able to strengthen his focus on client work, including strategic advice for start-up companies within the life sciences field, due diligence and FTO work, as well as drafting and prosecution work before the European Patent Office for domestic and overseas clients. His current work also includes dealing with managerial tasks related to the patent business within the region. Mr Linde has been a European patent attorney since 2004 and is also a Swedish patent attorney.
800
IAM Patent 1000
Zacco Valhallavägen 117 N PO Box 5581 Stockholm 11485 Sweden T +46 8 59 88 73 36 See firm profile p1098
www.IAM-media.com
Melin Granberg, Linda Founder – Megra IPR AB linda@megraipr.com | megraipr.com
Linda Melin Granberg advises clients on strategic patenting issues and handles all matters relating to patents, including drafting and prosecution of patent applications, oppositions, appeals, freedom-tooperate investigations, infringement analyses and IP strategy. Although Ms Melin Granberg’s technical background is in materials technology, she works in a broad range of other technical fields, including metallurgy, deposition techniques, nanotechnology, electrochemistry, process technology and mechanics. She graduated from the Royal Institute of Technology, Stockholm, with a MSc in materials technology. She also holds a diploma from the University of Strasbourg in patent litigation in Europe. Ms Melin Granberg started her career in the IP field in 2001. First as a patent examiner at the Swedish Patent and Registration Office and later as an in-house patent attorney responsible for one of the business areas of a multinational company, she gained a thorough understanding of the considerations, opportunities and challenges faced on both sides of the fence. With this understanding, she entered private practice in 2007 as deputy head of the patent department of one of Sweden’s oldest IP firms. In 2012 she joined one of Europe’s largest IP firms and in 2020 she founded Megra IPR. Ms Melin Granberg has extensive experience in oral proceedings – particularly inter partes proceedings – before the EPO. She is also an experienced lecturer and mentor. She is a member of the Institute of Professional Representatives before the European Patent Office, the Swedish Association for the Protection of Intellectual Property and the Association of Intellectual Property Professionals in Swedish Industry.
www.IAM-media.com
Megra IPR AB Oxundavägen 130 Upplands Väsby SE-194 44 Sweden T +46 73 261 35 93 Professional associations • epi • SFIR • SIPF
IAM Patent 1000
801
Romare, Anette European Patent Attorney – Valea AB anette.romare@valea.eu | www.valea.eu
Anette Romare has an MSc in chemical engineering and biotechnology and takes on assignments within a range of different technological fields, including absorbent materials, hygienic absorbent products, paper, fibre technology, polymers, adhesives, general chemistry, medicine, medical technology, packaging and the automotive industry. She started her IP career in 1985 as an in-house patent engineer at Mölnlycke AB (now Essity Hygiene and Health AB). She passed the European qualifying exam in 1994 and shortly thereafter moved to private practice, joining Valea AB in 2010. Ms Romare has vast experience in opposition and appeal proceedings at the European Patent Office, as well as at the Swedish Patent Office, working for different clients and in different technical areas. As a client account manager, she works closely with the clients, spending time on freedom-to-operate analyses and opinions, competitor monitoring, patent mining, drafting and prosecution of patent applications, and providing general and strategic advice and support in IP matters. Throughout her professional career Ms Romare has been involved as a lecturer and mentor, in both in-house and external educational programmes such as that of the Centre for International Intellectual Property Studies. Currently, she is deeply involved in the mentoring programme at Valea, focusing mainly on training colleagues in opposition and appeal proceedings.
802
IAM Patent 1000
Valea AB Lilla Bommen 3A PO Box 1098 Gothenburg SE-405 23 Sweden T +46 31 507 700 See firm profile p918
www.IAM-media.com
Rystedt, Hampus Senior Partner – Zacco hampus.rystedt@zacco.com | www.zacco.com
Hampus Rystedt advises clients on all aspects of IP rights, with a focus on patents in the pharma and biotech sectors. His daily practice involves creation of IP strategies and strong portfolios for local clients from the highly innovative biotech community in Sweden, prosecuting European patent cases for overseas clients, prosecuting supplementary protection certificates for medicinal and plant protection products, as well as supporting pharma companies in Scandinavian patent litigation. Mr Rystedt is also frequently involved in IP-centred transactions to provide opinions and due diligence work. Mr Rystedt started his IP career at the Swedish Patent Office as an examiner and later as the director of pharmaceuticals, organic chemistry and biotechnology, before going into private practice in 2003. He holds a MSc in biotechnology from Uppsala University and an LLM in IP law and management from the University of Strasbourg. He serves as a technical member of the Swedish patent courts and as co-chair of the patent focus group of the Swedish group of the International Association for the Protection of Intellectual Property, which works to bring the knowledge of both legally and technically qualified patent professionals together for the benefit of the profession.
Zacco Valhallavägen 117 N Box 5581 114 85 Stockholm Stockholm 115 31 Sweden T +46 8 59 88 73 34 See firm profile p1098 Professional associations • AIPPI • epi • I3PM
www.IAM-media.com
IAM Patent 1000
803
Sandart, Dag Partner – Sandart & Partners Advokatbyrå KB dag.sandart@sandart.se | www.sandart.se
Dag Sandart specialises in IP law, in particular patent, copyright and trademark law, acting as counsel for clients before courts and arbitral tribunals. On several occasions, Mr Sandart has acted as coordinating counsel for clients whose patent and copyright disputes were taking place across a number of European jurisdictions. Since 1980 Mr Sandart has acquired comprehensive experience in assisting Swedish and foreign clients in negotiating and drafting contracts, and handling disputes concerning contractual IP rights. These contract negotiations often concern licensing, acquisitions or joint ownership of IP rights, and research collaborations. The patent litigations that Mr Sandart handles concern the pharmaceutical and biotech fields, as well as mechanical and electronic patents or other technical fields. With regard to copyright, he handles disputes involving image rights and rights in works of applied art. The trademark matters he takes on typically concern the infringement of Swedish and European trademarks and, to a limited degree, trademark applications for unconventional marks. Mr Sandart is also active in the regulatory field for foodstuff and pharmaceuticals, and in mergers and acquisitions between small and medium-sized enterprises. These clients are mainly found within the manufacturing industry, advertising and media agencies. Mr Sandart frequently speaks on IP rights issues at seminars and conferences. Mr Sandart graduated from the University of Stockholm in early 1980 (LLM). Before that, he studied at Linkoping Technical University (1975). He has been a member of the Swedish Bar Association since 1985 and became partner at Sandart & Partners in 1986. Mr Sandart is a member of the European Patent Lawyers Association, the International Association for the Protection of Intellectual Property, the International Literary and Artistic Association and the corresponding Swedish national organisations. Mr Sandart was born in 1955. In addition to Swedish, he speaks English and German. Sandart & Partners is a business law firm with expertise in intellectual property, litigation, dispute resolution and contracts. Many of the firm’s clients are companies in industries where intellectual property and knowledge are in focus. The firm also provides advice and represent clients in marketing law matters, competition law matters and regulatory matters.
804
IAM Patent 1000
Sandart & Partners Advokatbyrå KB PO Box 7131 Stockholm SE-103 87 Sweden T +46 8 440 68 00 See firm profile p1058 Professional associations • AIPPI • EPLAW • LES
www.IAM-media.com
Sande, Peter Partner – Sandart & Partners Advokatbyrå KB peter.sande@sandart.se | www.sandart.se
Peter Sande specialises in IP law and dispute resolution. He has vast experience in patent litigations relating to various technical fields, as well as in litigations concerning copyright, trademarks and licence agreements. Mr Sande frequently participates in large-scale panEuropean litigations. Furthermore, Mr Sande advises research-intense companies on regulatory and strategic matters and assists several clients in the entertainment industry. Mr Sande graduated from the University of Stockholm in 1992 (LLM). After serving at the Stockholm District Court (1992-1994), Mr Sande joined Sandart & Partners. He has been a member of the Swedish Bar Association and a partner at Sandart & Partners since 1999. Mr Sande was an expert in the Government Commission on Professional Secrecy in 2006-2007. He was also head of the Patent Group of the Swedish Association for the Protection of Intellectual Property between 2007 and 2016. Mr Sande is frequently engaged as a speaker by Stockholm University and at different seminars. He has published several articles on IP rights issues. Mr Sande is a member of the European Patent Lawyers Association, the International Association for the Protection of Intellectual Property, the International Literary and Artistic Association and the International Trademark Association, as well as the corresponding Swedish national organisations. Mr Sande was born in 1965. He speaks English, German and Swedish. Sandart & Partners is a business law firm with expertise in intellectual property, litigation, dispute resolution and contracts. Many of the firm’s clients are companies in industries where intellectual property and knowledge are in focus. The firm also provides advice and represent clients in marketing law matters, competition law matters and regulatory matters.
www.IAM-media.com
Sandart & Partners Advokatbyrå KB PO Box 7131 Stockholm SE-103 87 Sweden T +46 8 440 68 00 See firm profile p1058 Professional associations • AIPPI • ALAI • EPLAW
IAM Patent 1000
805
Somlo, Tommy Senior Partner – Zacco tommy.somlo@zacco.com | www.zacco.com
From the moment he met representatives of the Swedish Patent Office at a student fair, Tommy Somlo was determined to work in the field of intellectual property. He started his career as a patent examiner in 1996, but his reputation for efficiency and dedication soon led to being recruited by a private practice firm. Mr Somlo was early on given the trust and responsibility to develop the relationship with one of the firm’s largest clients, which he did successfully, building a lasting association from which the firm still benefits. In 2004 Mr Somlo moved to a big pharmaceuticals company where, as a senior patent attorney, he was responsible for the medical devices’ intellectual property. In addition to handling the company’s largest set of IP rights, including worldwide patent and design rights, he was involved in a plurality of due diligence exercises in connection with mergers and acquisitions. It was during that time that Mr Somlo became fascinated by the excitement and challenges of oral proceedings before the EPO. After four years in the pharma industry, Mr Somlo returned to private practice, where he expanded his experience and skills in opposition and appeal cases, as well as oral proceedings, and was repeatedly asked to support attorneys of other offices of the firm. In parallel with cases before the EPO, Mr Somlo was frequently involved in numerous third-party issues, including infringement and validity analyses, and litigation support. Besides his qualifications as a European patent attorney and a Swedish patent attorney, Mr Somlo is appointed as a technical expert in patent matters before the courts of first and second instance in Stockholm, and acted as technical judge of the court of second instance in EveryMed AB v Roche Diagnostics GmbH. Mr Somlo is a recurrent lecturer for various parts of the course titled “Patent and Innovation Engineering” at the University of Gothenburg and Chalmers University of Technology.
806
IAM Patent 1000
Zacco Valhallavägen 117 N Box 5581 114 85 Stockholm Stockholm 115 31 Sweden T +46 31 725 8113 See firm profile p1098
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Tranälv, Martin Senior Partner – Zacco martin.tranalv@zacco.com | www.zacco.com
Martin Tranälv joined Zacco in December 2018 as a senior partner, having worked for more than 20 years as an attorney at law focusing on IP law. Mr Tranälv’s practice covers, among other areas, commercial contracts, marketing law, trade secrets and IP law, including IP litigation (eg, a design patent case tried by the Supreme Court); drafting and reviewing IP contracts; IP portfolio management; prosecution of trademark and design applications; general advice on IP law and related matters; and oppositions. He also has extensive experience in non-Swedish and cross-border litigation, as well as oppositions from a significant number of jurisdictions. Mr Tranälv works with clients from many different industries, including food; medical equipment; clothing and fashion; automotive and vehicles; equipment for disabled persons; gaming and betting; and shipping and ship construction. Before joining Zacco, Mr Tranälv had worked as a partner for over 17 years at one of Sweden’s large IP law firms, where he was a board and advisory board member. He also previously worked as a law clerk at a Swedish district court and as an attorney with two other law firms. He regularly lectures on patent litigation and patent claim interpretation at the local university in Gothenburg for master’s students and is an author of the Swedish chapter of Trademark Litigation (Sweet and Maxwell). Mr Tranälv obtained his law degree from the Uppsala University in 1994 (including studies in the United Kingdom) and in 1997 he obtained his master’s in European and comparative law from Maastricht University, graduating top of his class. He is also an authorised Swedish patent attorney. A member of the International Association for the Protection of Intellectual Property, the West Swedish Intellectual Property Rights Club, the Union of European Practitioners in Intellectual Property and the European Communities Trademark Association, and having worked extensively on foreign cases, Mr Tranälv has broad experience of nonSwedish IP matters and can rely on an international network of foreign IP attorneys.
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Zacco Theres Svenssons gata 13 Gothenburg 41755 Sweden T +46 31 725 8124 See firm profile p1098 Professional associations • AIPPI • ECTA • UNION-IP Sample client list • Axjo Plastic AB • Easy-Laser AB • IMI Group • KappAhl Group • Liseberg AB • MicVac AB
IAM Patent 1000
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Malm Waerme, Malin Associate – Vinge malin.malmwaerme@vinge.se | www.vinge.se
Malin Malm Waerme is a senior manager at Vinge with extensive and, for her age, unparalleled experience in a very broad range of IP rightsrelated matters, representing both national and international clients in a wide range of industries. Her deep experience in all aspects of IP law has been gained managing both commercial (eg, complex transactional IP issues, M&As, IP portfolio management and IP-related agreements) and contentious high-profile mandates. Ms Malm Waerme has developed a particular focus on litigation and enforcement of IP rights and is frequently retained as counsel for multinational enterprises in the most prestigious patent litigations, including invalidity and infringements disputes, as well as supplementary protection certificate proceedings. Clients praise her dedication, analytical skills and broad knowledge across the entire IP area. Her work highlights include patent litigations concerning infringement of patents in the areas of pharmaceuticals, chemistry, chemical and mechanical engineering, as well as licensing of patents and other IP rights in the same industries. Furthermore, Ms Malm Waerme is frequently appointed by national and international clients in commercial IP matters including contractual work, as well as strategic advice in relation to transaction and portfolio management.
Vinge Smålandsgatan 20 Box 1703 Stockholm SE-111 87 Sweden T +46 10 614 30 38 See firm profile p1080 Professional associations • Swedish Bar Association Sample client list • Allergan Inc • Eli Lilly and Company (longstanding) • Swedish Match North Europe AB
808
IAM Patent 1000
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Westerberg, Karin Partner – Sandart & Partners Advokatbyrå KB karin.westerberg@sandart.se | www.sandart.se
Karin Westerberg specialises in dispute resolution, intellectual property (mainly patent, copyright and trademark law), marketing law and protection of trade secrets. Ms Westerberg is a skilled litigator with extensive experience in IP disputes. Ms Westerberg frequently represents Swedish and international clients in all fields of technology (eg, pharmaceuticals, biotechnology and mechanical engineering) in patent infringement and revocation proceedings in Sweden (including pan-European litigations). She also represents clients in the pharmaceutical industry with regulatory issues and represents clients in complex copyright and trade secrets litigations involving multiple infringement investigations and interim proceedings. In relation to copyright, Ms Westerberg has a particular interest in works of applied art and is the chair of the Svensk Form Copyright Panel, which is an impartial expert body within the Swedish Society of Crafts and Design, with the task to express an opinion on copyright protection for works of applied art and whether a copyrightprotected work of applied art has been plagiarised. Ms Westerberg was born in 1978 and speaks English and Swedish. Sandart & Partners is a business law firm with expertise in intellectual property, litigation, dispute resolution and contracts. Many of the firm’s clients are companies in industries where intellectual property and knowledge are in focus. The firm also provides advice and represent clients in marketing law matters, competition law matters and regulatory matters.
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Sandart & Partners Advokatbyrå KB PO Box 7131 Stockholm SE-103 87 Sweden T +46 8 440 68 00 See firm profile p1058 Professional associations • AIPPI • ALAI • Swedish Bar Association
IAM Patent 1000
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Winblad, Paul Senior Partner – Zacco paul.winblad@zacco.com | www.zacco.com
Paul Winblad is a Swedish and European patent attorney and joined Zacco in 2015. He has an MSc in mechanical engineering and started his IP career at the Swedish Patent Office in 1995, where he worked as an examiner and a team leader. In 1999, Mr Winblad joined SCA, a global hygiene and forest company, where he worked as a patent attorney and patent manager for five years. In 2004 he became patent director of the same company and was also a member of the R&D management team, with involvement in matters related to research and product development. In his current position at Zacco, Mr Winblad works with IP-related cases in different technical fields, such as material technology, absorption technology, energy technology, fluid handling, process and production technologies, and vehicle-related technologies. He deals with a wide range of IP-related matters for clients, including patent portfolio management, strategic IP work, IP enforcement and litigation work, licensing of IP rights and general IP advice.
Zacco Ostra Hamngatan 5 PO Box 142 Gothenberg 401 22 Sweden T +46 31 725 81 28 See firm profile p1098
810
IAM Patent 1000
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Switzerland
The Swiss patent landscape is abuzz with several threads of conversation, and one in particular has really got the country’s practitioners talking. The Swiss Federal Council is taking steps to modernise its patent examination procedure; and while this initiative is still in its early stages – the consultation period only closed in February 2021 – the potential amendments should transform the filing process. At the moment, the Swiss Federal Institute of Intellectual Property does not examine whether inventions are novel and inventive, which weakens the validity of Swiss patents on the international stage. The proposed changes would see applications examined for all patentability requirements, aligning the process with global practices and enhancing legal certainty. While it is already possible to apply for a fully examined European patent at the EPO and extend the protection to Switzerland, the new system should be less costly and time consuming, and thus more attractive for local SMEs and individual inventors. Alongside these changes, a cheaper alternative will be introduced by way of a utility model, which will be granted without substantive examination, will have a lifespan of 10 years and will also qualify for the newly introduced ‘patent box’ regime. It is clear that Switzerland is making significant efforts to nurture its local start-up community and foster innovation – as evidenced by its 10th year in the number one spot on WIPO’s Global Innovation Index.
Bär & Karrer
One of Switzerland’s premier transactional outfits, Bär & Karrer provides services in the country’s three main languages and is the preferred choice for multinationals anxious to get high-value deals across the line. For example, it recently advised listed chemicals and biotechnology corporation Lonza Group on the Sfr4.2 billion sale of its speciality ingredients business to Bain Capital and Cinven. IP division lead and life sciences group co-captain Markus Wang played a crucial role in that matter; he also advised Syngenta Crop Protection on its acquisition of a production facility from Novartis Pharma Schweizerhalle. In the words of one peer: “Markus is just a charm to work with – he is responsive, constructive, comes up with pragmatic solutions and always keeps budgets and business perspectives in mind.”
E Blum & Co AG
Market-leading patent prosecution firm E Blum & Co is “full of fantastic and pragmatic attorneys who know how to handle complex cases and form great partnerships with lawyers. If you want the best, you go to E Blum”. Established in 1878, it has its roots deeply embedded in the legal landscape and possesses a wealth of technical know-how. Electronics and software ace Kurt Sutter is “detail oriented, tactically astute and definitely one of the most prominent practitioners in the field”. He serves as a part-time judge at the Swiss Federal Patent Court along with Regula Rüedi, who is regularly sought out for expert opinions and litigation support. “Her pleadings are extremely persuasive and she explains complex technologies really well,” comments one associate.
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“She is super-client focused too, and always strives to find cost-effective solutions.” Joining them in the guide this year is pharmaceutical specialist Claudia Bibus: “Claudia is wonderful to work with – extremely sharp, with all the expertise you could wish for.”
FMP Fuhrer Marbach & Partners
Bern-based commercial set-up FMP Fuhrer Marbach & Partners enjoys a superb reputation thanks to the resonant performances it puts in in heated disputes. Its business-savvy lawyers think long term and act efficiently to bring about positive outcomes for clients. “A household name for litigation matters” and “an excellent lawyer”, Peter Widmer has decades of experience and is a vital asset in any contentious scenario.
Hepp Wenger Ryffel AG
“Hands down the best patent attorney firm in Switzerland”, Hepp Wenger Ryffel is home to some of the most distinguished practitioners in the country: “They are reliable, precise and follow every legal development, both at home and across Europe, which means you can bounce ideas off them; the collaboration is exceptional.” A stand-out for his work in the medical technology field, Christoph Müller “has an incredibly sharp understanding of the technical issues, thinks strategically and never loses sight of the bigger picture. He communicates complex technical issues in a way that is easy to understand, even for those unfamiliar with the field”. With an affinity for biochemistry and the life sciences, Martin Wilming is “quick, responsive and a creative thinker, with an outstanding feel for clients’ commercial interests. He is also an influential member
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Switzerland Firms: prosecution
Firms: transactions
Highly recommended
Bär & Karrer
E Blum & Co AG
Homburger AG
Hepp Wenger Ryffel AG
See p992
Lenz & Staehelin
Isler & Pedrazzini AG
Meyerlustenberger Lachenal
Recommended
Niederer Kraft Frey
IPrime Rentsch Kaelin AG
See p1004
Schellenberg Wittmer
Schaad Balass Menzl & Partner AG
Walder Wyss See p1070
of the community – his IP blog is highly regarded by everyone you meet”. He and Andreas Welch recently coordinated the worldwide patent applications for a listed biotechnology company. “Highly skilled, efficient and a great team player, Andreas is also my first choice for litigation support,” enthuses one peer. The praise continues to flow in for mechanical engineering ace Susanna Ruder: “She impresses with her legal skills and provides excellent services when drafting and filing vital applications. Her empathy, professionalism and attention to detail make her a fantastic asset. She is not only a nice person, but also a reliable, down-to-earth attorney.” See p992 for firm profile
Homburger AG
Paid-up members of the Swiss patent litigation elite, Homburger’s lawyers have been putting in dazzling performances in major life sciences disputes of late. Highlights include enforcing Illumina’s sequencingby-synthesis patents before the Federal Patent Court against the BGI/MGI Group and representing the same in multi-patent enforcement proceedings in a transborder context. It also secured a landmark judgment in defending Sandoz against an enforcement action brought by AstraZeneca. Taking the lead on all three is “first-class litigator” Andri Hess: “He has an immense understanding of the law, always looks into the details and presents well-founded solutions and fantastic arguments.” IP and IT practice head Georg Rauber keeps a cool head in high-stakes disputes and artfully shepherds complex deals over the finish line. See p996 for firm profile
812
IAM Patent 1000
See p1026
Pestalozzi Attorneys at Law
Rentsch Partner Ltd
ThomannFischer
See p996
IPrime Rentsch Kaelin AG
A newcomer to the IAM Patent 1000 this year, IPrime Legal is a nimble boutique with a lot to offer. Its technically diverse patent attorneys and technology experts work hand in glove with a seasoned troop of business lawyers and litigators to provide a topnotch service that not only protects innovations, but defends and commercialises them too. With Rudolf Rentsch leading the line, the side is ideally placed to handle complex infringement proceedings that transcend borders, especially in the United States, China and Japan. Computers, telecommunications and software are his metiers. Fellow ICT specialist Thomas Kretschmer brings abundant experience to the table, having previously spent almost two decades at leading multinational corporations. He understands the pressures faced by in-house counsel, translates their needs into finely drafted applications and sees them through to grant. See p1004 for firm profile
Isler & Pedrazzini AG
Isler & Pedrazzini’s finely tuned commercial service gives start-ups and industry heavyweights alike the confidence they need to innovate, safe in the knowledge that their creations will receive the best possible protection and that a dedicated squadron is on hand to enforce those rights when necessary. Tobias Bremi, Michael Liebetanz and Natalia Clerc support businesses flawlessly. “Absolutely perfect for chemistry instructions”, Bremi is “one of the best in the business. He knows how to predict whether an argument will win in court” – which comes as no surprise, given that he sits as second ordinary judge at the Federal Patent Court. Physics maestro Liebtanz
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Switzerland Firms: litigation Homburger AG
See p996
Lenz & Staehelin Meyerlustenberger Lachenal
See p1026
Rentsch Partner Ltd TIMES Attorneys FMP Fuhrer Marbach & Partners Kasser Schlosser Attorneys at Law Pestalozzi Attorneys at Law Schellenberg Wittmer Walder Wyss
has a hawkish eye for detail and drafts beautifully. Clerc leverages a unique understanding of internal systems and processes, gained through a stint in Haas Laser Systems’ R&D department, when advising clients on their long-term goals.
Kasser Schlosser Attorneys at Law
With Ralph Schlosser on deck, Lausanne-based commercial outfit Kasser Schlosser Avocats is a fantastic choice for complex disputes. The firm’s linguistic capabilities are also a major plus, as fluency in German and French means that its practitioners can appear in all forums across the country. A “brilliant lawyer” with expertise across the IP spectrum and an encyclopaedic knowledge of the law, Schlosser frequently makes the difference in must-win litigation: “He has a business-oriented mindset, a hands-on approach and an ability to communicate complicated processes in a structured manner, which benefits the patent attorneys he works with, as well as his clients.”
Lenz & Staehelin
“Super-experienced, great to team up with and extremely well organised”, Lenz & Staehelin is hailed as “among the best of the best”. The full-service firm is active in almost every technical sector, but really hits its stride on headline-grabbing pharmaceutical patent disputes. For example, two of its leading lights – Thierry Calame and Lara Dorigo – recently acted for Mepha/Teva against AstraZeneca in nullity proceedings concerning multiple patents which went
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all the way to the Federal Supreme Court. Highly regarded both domestically and globally, Calame is “an excellent lawyer with a great understanding of underlying technologies. Everything he does is delivered to an outstanding quality and is always on time, even with tight deadlines”. Dorigo also receives high praise: “When you see Lara work and the arguments she presents, you can tell that she really understands the technology. She is responsive and thorough in her approach, thinks quickly and is a lovely person too.” Recently elected to the partnership, Peter Ling is another vital contributor to the set’s booming contentious practice and recently represented Abbott Laboratories alongside Calame in patent infringement proceedings against Edwards Lifesciences. “Something that sets Peter apart is his empathy and ability to assess where each party stands, its interests and needs, and fit all this into a legal strategy. He is sharp in his analyses, grasps technicalities really quickly and is always focused on providing value to clients and the team as a whole. Overall, Peter is just really impressive.”
Meyerlustenberger Lachenal
A go-to for patent disputes in Switzerland, Meyerlustenberger Lachenal has “an extremely strong team which makes valuable contributions to technical analyses and takes a creative approach to litigation strategy. They do a fantastic job in the pharmaceutical industry, especially for innovator companies, as they understand the local regulatory environment and its interface with the law exceptionally well”. Testament to this is its recent representation of Gilead in a widely publicised, multi-jurisdictional dispute against Mepha concerning Gilead’s SPC. Here, the innovative and compelling arguments presented by Simon Holzer and Michael Ritscher resulted in the successful defence and enforcement of the SPC, making Switzerland the only country in which this has been achieved. “One of the country’s finest”, Holzer is a first choice for life sciences cases: “He is client driven, committed and thoughtful, gets longlasting and reliable results and is great to work with.” Consummate litigator Ritscher “knows everyone worth knowing on the local and European markets. He is accessible, easy to collaborate with and his guidance is always carefully considered”. The pair also link up with Kilian Schärli and Ulrike Ciesla to represent AstraZeneca across all of its Swiss patent matters. “Young, dynamic and bright” lawyer Schärli is “one of the best team mates you could think of. He is a focused and clear-cut adviser who always keeps clients’ business goals in mind”. Patent attorney Ciesla brings extra strength and depth to the firm’s
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Switzerland Fabian Leimgruber ThomannFischer
Individuals: prosecution Claudia Bibus E Blum & Co AG
Michael Liebetanz Isler & Pedrazzini AG
Tobias Bremi Isler & Pedrazzini AG
Bruno Meyer prins Patent & Trademark Attorneys
Andrea Carreira Rentsch Partner Ltd Theodore Choi Schaad Balass Menzl & Partner AG Ulrike Ciesla Meyerlustenberger Lachenal
See p819
Natalia Clerc Isler & Pedrazzini AG
Susanna Ruder Hepp Wenger Ryffel AG
See p830
Regula Rüedi E Blum & Co AG
See p831
Martin Sperrle Latscha Schöllhorn Partner AG
Tarik Kapić BOVARD LTD
Kurt Sutter E Blum & Co AG
Alfred Köpf Rentsch Partner Ltd
Dany Vogel Rentsch Partner Ltd See p824
Louis Lagler Rentsch Partner Ltd
offering: “She rapidly gets an insight into each case she works on, researches comprehensively and provides thorough advice on the best route forward, along with its pros and cons. She gives businesses the confidence and motivation to succeed.” The firm also recently welcomed Christian Fischer to the fold. An authority in the telecommunications sector, he was previously head of patents at Swisscom: “He is great at pinpointing weaknesses and inaccuracies when analysing technical arguments, presents arguments in a way that is easy to follow and does not shy away from challenging opinions that are not backed by clear facts.” See p1026 for firm profile
IAM Patent 1000
See p826
Christophe Saam P&TS SA
Cornelia Hoffmann Schaad Balass Menzl & Partner AG
814
Christoph Müller Hepp Wenger Ryffel AG
Philipp Rüfenacht Keller & Partner Patentanwälte AG
Christoph Fraefel Schaad Balass Menzl & Partner AG
Thomas Kretschmer IPrime Rentsch Kaelin AG
See p825
Andreas Welch Hepp Wenger Ryffel AG
See p833
Martin Wilming Hepp Wenger Ryffel AG
See p824
Marco Zardi M Zardi & Co
See p835
Niederer Kraft Frey
The polished professionals at Zurich-based Niederer Kraft Frey have an intuitive grasp of the business of patents and know what levers to pull to get companies superb returns on the investments they put into realising and protecting their inventions. It is currently advising Partners Group – one of the largest private market investment managers in the world – and recently helped Capvis to acquire a majority stake in Xovis, a leading producer of 3D sensors. Instrumental to both matters is Nicolas Birkhäuser,
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Switzerland Individuals: transactions
practice and regularly gets deals across the line for pharmaceutical, biotech, medical devices companies. It also enjoys a sterling reputation in the IT and telecommunications industries, thanks to the efforts of Thomas Legler and Michèle Burnier. Legler heads up the arbitration team, sits as a deputy judge at the Federal Patent Court and knows all the right plays to bring contentious proceedings to a swift and successful close, both domestically and internationally. Also based in Geneva, Burnier is the resident distribution, licensing and R&D guru, with valuable ancillary expertise in e-commerce, data protection and unfair competition law.
Nicolas Birkhäuser Niederer Kraft Frey Thierry Calame Lenz & Staehelin Stefano Codoni Walder Wyss Lorenza Ferrari Hofer Schellenberg Wittmer Christian Fischer Meyerlustenberger Lachenal
See p820
Peter Georg Picht Schellenberg Wittmer Philipp Groz Schellenberg Wittmer Andri Hess Homburger AG
See p822
Stefan Kohler VISCHER AG Thomas Legler Pestalozzi Attorneys at Law Georg Rauber Homburger AG
See p827
Kilian Schärli Meyerlustenberger Lachenal
See p832
Roger Staub Walder Wyss Markus Wang Bär & Karrer
whose creative take on structuring deals sits well with C-suite executives in need of smart licensing approaches. Key clients include Procter & Gamble and Navistar International Corporation.
Pestalozzi Attorneys at Law
Leading players in the regulated industries flock to Pestalozzi in their droves: the agile commercial law firm is home to a cracking dispute resolution
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Rentsch Partner Ltd
Pioneering boutique Rentsch Partner stands out from the crowd for its comprehensive approach to intellectual property. Combining the talents of both patent attorneys and lawyers under one roof, it can cover all bases for its high-flying technology and pharmaceutical clientele. The hardest hitters include Christian Hilti and Demian Stauber, who bring the heat in big-ticket litigation. A calm but commanding presence in the courtroom, Hilti has over three decades of experience and the market recognition to show for it, having chalked up many a landmark victory along the way. Stauber is lauded for his versatility: his sweet spot is at the confluence of IP, IT and contract law, where he crafts persuasive arguments for leading technology companies embroiled in disputes and assists small start-ups with their software agreements. On the prosecution front, Dany Vogel, Alfred Köpf, Louis Lagler and Andrea Carreira set the standard of excellence. Software instructions and computer-implemented inventions are meat and drink to the “super-sharp” Vogel; while Köpf devises “long-lasting and reliable strategies” in the life sciences and mechanical industries. An authority in the electrical and optical fields, Lagler “drafts patents efficiently and with a fantastic technical understanding, all while targeting a broad claim. He is responsive, reliable and great at coordinating multi-jurisdictional filings”. Joining them in the guide this year is Carreira, a prime choice for litigation support. The trained chemist relishes the nitty-gritty of complex matters and has the determination to take her cases all the way.
Schaad Balass Menzl & Partner AG
A dynamic firm with a passion for new technologies, Schaad Balass Menzl & Partner makes it its mission to partner up with the businesses it serves: its attorneys keep clients looped in on all developments and act as an extension to in-house teams. The life
IAM Patent 1000
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Switzerland Rudolf A Rentsch IPrime Rentsch Kaelin AG
Individuals: litigation Thierry Calame Lenz & Staehelin
Roger Staub Walder Wyss
Lara Dorigo Lenz & Staehelin Andri Hess Homburger AG
Demian Stauber Rentsch Partner Ltd See p822
Christian Hilti Rentsch Partner Ltd Simon Holzer Meyerlustenberger Lachenal
See p823
See p829
Stefano Codoni Walder Wyss
See p821
Philipp Groz Schellenberg Wittmer Thomas Legler Pestalozzi Attorneys at Law Peter Ling Lenz & Staehelin
sciences is a happy hunting ground: pre-eminent organic chemist Cornelia Hoffmann has worked in the field for two decades and is regularly sought out by the country’s top litigators for technical support. “A brilliant and collaborative attorney”, Christoph Fraefel is the resident biochemist on deck and was recently appointed as president of the Association of Freelance European and Swiss Patent Attorneys. Making his debut in the guide this year is Theodore Choi, who brings ample physics, semiconductor and EPO expertise to the mix.
816
IAM Patent 1000
Lorenza Ferrari Hofer Schellenberg Wittmer Christian Fischer Meyerlustenberger Lachenal
Ralph Schlosser Kasser Schlosser Attorneys at Law
Christoph Gasser BianchiSchwald LLC
Peter Widmer FMP Fuhrer Marbach & Partners Michèle Burnier Pestalozzi Attorneys at Law
Andrea Mondini TIMES Attorneys Michael Ritscher Meyerlustenberger Lachenal
See p828
See p820
Markus Frick Walder Wyss Georg Rauber Homburger AG
See p827
Kilian Schärli Meyerlustenberger Lachenal
See p832
Andreas Wildi Walder Wyss Christoph Willi Streichenberg Attorneys at Law
Schellenberg Wittmer
“An impressive firm with equally outstanding practitioners”, Schellenberg Wittmer gives “concise, clear and timely legal advice without breaking the bank”. The side regularly receives instructions from high-calibre companies in need of robust representation in fraught contentious scenarios and licensing negotiations. For example, it is currently representing Hetronic International – a leading manufacturer of industrial-use remote controls – in several disputes; regularly assists Philip Morris with its R&D agreements; and advised WorldConnect on the sale of 80% of its shares to Cellularline for Sfr15.8 million. All three matters have been masterminded by Philipp Groz, whose down-to-earth style and straightforward arguments frequently carry the day. Of counsel Peter Georg Picht utilises an expansive
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Switzerland toolkit to resolve disputes; with a rich academic background, he draws on a wealth of IP and competition law knowledge to bring about successful outcomes. The side also strengthened its life sciences capabilities in late 2020 when it brought Lorenza Ferrari Hofer on board from Pestalozzi. Qualified in England, Wales and Switzerland, she is a fine choice for litigation and transactions mandates involving international elements.
ThomannFischer
Commercial law outfit ThomannFischer is a premier destination for wall-to-wall IP support, thanks to its A-to-Z prosecution, litigation and transactional offering. In the words of one client: “They fulfil their brief to the highest possible standard. They quickly derive the central points of the invention at hand and skilfully implement any comments to finalise the work product in short turnaround times.” Department captain Fabian Leimgruber has a pristine track record at the EPO: “His deep legal and technical understanding of emerging technologies fills clients with comfort; he has rightfully earned his reputation as a first-rate prosecutor.” See p1070 for firm profile
TIMES Attorneys
The darling of generic pharmaceutical companies, TIMES Attorneys combines sophisticated industry insight with exceptional trial skills and a commitment to results to come out on top in commercially consequential cases. It recently prevailed for Develco Pharma in complex patent litigation proceedings against Mundipharma – a decision which is considered a leading assessment of the ‘gold standard’ for added matter under Swiss patent law. Vital to this success was Andrea Mondini, one of the most popular and respected litigators in the country: “He is absolutely brilliant and puts up a tough fight in court. Andrea stands out for the quality of his work; opponents need to take care of even the smallest details when he is on the other side.” “Andrea is really personable and extremely professional; he has a calm demeanour and is lovely to work with too. Each collaboration is fluent and effective.”
Walder Wyss
Full-service Walder Wyss draws on a treasure trove of resources to superb effect: with more than 220 experts on hand and a finely cultivated international network, it has a unique ability to build tailored multi-disciplinary teams for every instruction. Clients appreciate its holistic approach in tending to their every dispute resolution and licensing need.
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Leading the charge, Markus Frick is no stranger to heavy-duty litigation: he has lately been advising Bysotronic Laser before the Federal Patent Court in a matter which is now pending before the Swiss Supreme Court, the EPO and the South Korean courts. “Fantastic litigator” Frick comes highly recommended for his “outstanding skillset, efficiency and success rate”: “His written submissions are brilliant and extremely convincing, and his communication skills are flawless.” Another highly regarded practitioner, Roger Staub acquits himself with distinction in challenging contentious scenarios and negotiations on IP-intensive agreements. He is a favourite among global pharmaceutical companies, not least thanks to fluency in English, French, German and Spanish. Medical doctor and attorney at law Andreas Wildi has been integral to the firm’s life sciences success stories and brings useful regulatory know-how to the table. Over in Lugano, Stefano Codoni has a vibrant transactions practice and can be counted on for crisp results in the technology arena.
Other recommended experts
“An experienced lawyer and a phenomenal litigator with great work ethic”, BianchiScwald’s Christoph Gasser makes his debut in the IAM Patent 1000. He has a phenomenal eye for detail and constructs meticulous arguments – just some of the reasons why he has been chosen to sit as an adjunct judge at the Federal Patent Court. At BOVARD, Tarik Kapić is a fine choice for information and communication technology companies in need of watertight patent applications and thorough landscape analyses. “Skilled, open minded and easy to work with”, VISCHER’s Stefan Kohler resolves thorny disputes and negotiates lucrative licensing deals with finesse. prins Patent & Trademark Attorneys’ Bruno Meyer understands the value of patents as business assets, drafts applications accordingly and supports inventors from start to finish. “A brilliant and super-friendly attorney”, Philipp Rüfenacht is “super-knowledgeable, results driven and extremely thorough in his approach”. The physics pro can be found at Keller Schneider. “An experienced attorney who knows exactly what clients want and works hard to deliver”, Martin Sperrle of Latscha Schöllhorn Partner joins the IAM Patent 1000 this year. He knows a thing or two about building up patent portfolios and managing them on a global scale. Christophe Saam is “highly skilled and quick on his feet”, and brings a valuable added dimension to the mix as a part-time judge. The electronic engineer operates out of P&TS. Flying the flag of Streichenberg Attorneys at Law, Christoph Willi is a favourite among generic
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Switzerland pharmaceutical companies for his crystalline advice and measured counsel in heated disputes. A master strategist and prosecutor par excellence, Marco Zardi of M Zardi & Co is technically and legally accomplished and tackles the toughest briefs with flair.
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IAM Patent 1000
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Ciesla, Ulrike Partner – Meyerlustenberger Lachenal ulrike.ciesla@mll-legal.com | www.mll-legal.com
Ulrike Ciesla is a member of Meyerlustenberger Lachenal’s IP team, which ranks among the leaders in intellectual property in Switzerland. In particular, she complements the patent litigation team with her expertise in technical matters and patent law. Ms Ciesla studied chemistry at the University of Erlangen and the University of Mainz. After her doctoral thesis in the field of inorganic solid state chemistry and catalysis at the University of Frankfurt, she was a postdoctoral researcher at the University of California, Santa Barbara, and scholar of the German Research Foundation. She is coauthor of several publications, including frequently cited papers in high-impact journals such as Angewandte Chemie and Nature. Ms Ciesla began her patent attorney career at Hoffmann Eitle, one of the largest patent law firms in Europe. In 2004 she qualified as a European patent attorney and German patent attorney and later became a partner at Hoffmann Eitle. During her almost 20 years with Hoffmann Eitle, she gained extensive experience and knowledge in patent prosecution and opposition and appeal proceedings before the German and European Patent Offices, as well as in patent litigation proceedings before courts in Germany and Switzerland. Before joining Meyerlustenberger Lachenal as partner, Ms Ciesla was already working with the firm’s IP team on the Faslodex litigation proceedings.
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Meyerlustenberger Lachenal Schiffbaustrasse 2 Postfach Zurich 8031 Switzerland T +41 44 396 91 91 See firm profile p1026 Professional associations • epi • GRUR • Healthcare Business Women
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Fischer, Christian Associate – Meyerlustenberger Lachenal christian.fischer@mll-legal.com | www.mll-legal.com
Christian Fischer is a US attorney of the Illinois Bar and an electronics engineer, specialising in patent law, technology and international arbitration. Before joining Meyerlustenberger Lachenal’s patent team, Mr Fischer was head of patents at Swisscom, Switzerland’s largest telecommunications provider, responsible for all patent matters including licensing, monetising, patent prosecution and patent litigation. At McAndrews, Held & Malloy Ltd, a Chicago IP law firm, Mr Fischer drafted and prosecuted over 200 patent applications on a wide range of electronics and telecommunication inventions. Previously, he held positions as an adjunct professor of electrical engineering at the University of Illinois at Chicago, as a technology consultant and as a researcher. His work focused on signal processing for 3G cellular communication systems, but also included multiple antenna/MIMO technology, ultra-wideband radio, GSM, WiFi, CDMA, UMTS and other wireless systems. As a former in-house patent counsel, Mr Fischer appreciates corporate needs and client focus. Both a lawyer and a technology expert, having worked and studied in the United States, France, the United Kingdom and Switzerland, Mr Fischer thrives on complex, international issues and disputes. He is also a member of the Swiss Arbitration Association and received a certificate of advanced studies in international arbitration. He is a listed arbitrator at WIPO and the Institution for IT and Data Dispute Resolution. Mr Fischer holds a JD from Chicago-Kent Illinois Institute of Technology, College of Law in Chicago, an MAS in intellectual property from ETH Zurich, Switzerland, a PhD in signal processing for mobile communications from Institute Eurecom/Telecom Paris, France, and a MEng in Electronic Engineering from the University of Southampton, United Kingdom.
820
IAM Patent 1000
Meyerlustenberger Lachenal Schiffbaustrasse 2 Zurich 8031 Switzerland T +41 44 396 91 91 See firm profile p1026 Professional associations • ASA • Illinois State Bar Association • Institute of Electrical and Electronics Engineers
www.IAM-media.com
Gasser, Christoph Partner – BianchiSchwald LLC christoph.gasser@bianchischwald.ch | www.bianchischwald.ch/en
Christoph Gasser (Dr iur, summa cum laude, Bern and LLM, Michigan) is a partner in the Zurich office of BianchiSchwald LLC and head of the firm’s IP department. His practice includes dispute resolution and advice in all fields of intellectual property, including patent litigation and arbitration, in particular in the mechanical and pharmaceutical areas, as well as the prosecution and enforcement of trademark, design, copyright, domain name and unfair competition matters. He also advises on commercial contracts such as technology transfer, licensing and distribution agreements, R&D cooperation and franchising. Dr Gasser has acted as trial counsel and litigated IP cases before numerous cantonal courts and arbitration panels, including the Swiss Federal Patent Court, the Swiss Federal Administrative Court and the Swiss Federal Supreme Court, as well as Uniform Domain Name Dispute Resolution Policy proceedings. Dr Gasser’s clients include international and domestic corporations, such as leading providers of medical devices, supplies and pharmaceuticals, software providers, toy manufacturers, companies in the railway, motorcycle, furniture and building industries, and multinational manufacturers and service providers active in healthcare, flow control, security, electronics, telecommunications and tourism. He also advises and represents advertising agencies and major producers and retailers in the food, clothing and consumer electronics sectors. Dr Gasser is the executive secretary of the Institute for Intellectual Property (INGRES), the Swiss IP association, which organises several major annual IP law conferences on Swiss and European law. INGRES publishes a monthly periodical on IP law and advises the Swiss government on legislative projects. Dr Gasser has published substantial contributions to leading Swiss and international treatises on patent, trademark, copyright and design law. Dr Gasser is an adjunct judge of the Swiss Federal Patent Court. He has also lectured on trademark and copyright law at the Swiss Federal Institute of Technology, Zurich. He serves as an expert examiner for the Swiss Patent Bar examination and teaches IP and unfair competition law at the Swiss Federal Institute of Intellectual Property, Bern.
www.IAM-media.com
BianchiSchwald LLC St Annagasse 9 PO Box 1162 Zurich CH-8027 Switzerland T +41 58 220 37 00 F +41 58 220 37 01 Professional associations • AIPPI • INTA • INGRES
IAM Patent 1000
821
Hess, Andri Partner – Homburger AG andri.hess@homburger.ch | www.homburger.ch
Andri Hess is a partner and a member of Homburger’s IP/IT, litigation/ arbitration, and competition/regulatory practice teams. He has extensive experience in representing clients in patent and other IP rights-related litigation and arbitration in a broad range of technical and industrial fields and within international contexts, as well as in negotiating and drafting IP rights-related contracts. Mr Hess also represents clients in regulatory matters before the Swiss Agency for Therapeutic Products and the Federal Office of Public Health. Mr Hess is a board member of the Swiss group of the International Association for the Protection of Intellectual Property (AIPPI) and a member of the Programme Committee of AIPPI International. He is also a member of the Swiss Arbitration Association, the German Association for the Protection of Intellectual Property, the Swiss Association for Intellectual Property Law, as well as of the Zurich and Swiss Bar Associations. Mr Hess is the editor of Life Science Recht – a law journal for the pharmaceuticals, biotech and medtech industries, as well as of the only commentary of the Swiss Federal Act on the Federal Patent Court. In addition, he has published numerous articles on various IP topics, especially patent rights; he regularly gives talks before Swiss and international professional associations, and teaches at the University of Stockholm (IP rights in arbitration proceedings) and at the Federal Institute of Intellectual Property (training course for the Swiss Patent Bar exam). Mr Hess is elected associate judge at the Swiss Federal Patent Court. He is fluent in German and English.
822
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Homburger AG Prime Tower Hardstrasse 201 Zurich 8005 Switzerland T +41 43 222 1000 F +41 43 222 1500 Professional associations • AIPPI • GRUR • INGRES
www.IAM-media.com
Holzer, Simon Partner – Meyerlustenberger Lachenal simon.holzer@mll-legal.com | www.mll-legal.com
Simon Holzer is a partner in Meyerlustenberger Lachenal’s IP team and head of the firm’s patent and life sciences practice group. Dr Holzer’s practice focuses on patent litigation and advice. He has special expertise in the pharmaceutical and telecoms sectors. In particular, he has extensive experience in litigating major patent disputes, including strategic advice (eg, as part of cross-border litigation). He also advises and represents clients in other IP litigation and arbitration, particularly in the area of geographical indications. Dr Holzer is also active in the area of life sciences regulatory law. Dr Holzer is a part-time judge with the Swiss Federal Patent Court. He graduated from the University of Bern Law School and wrote his doctoral thesis on the protection of geographical indications at the Max Planck Institute for Innovation and Competition in Munich. From 2008 to 2009 Dr Holzer worked as a foreign associate in a specialised trademark and copyright law firm in Chicago. Dr Holzer is also ranked and recommended for his work in Chambers Europe, The Legal 500, Who’s Who Legal: Switzerland (patents and life sciences) and the WTR 1000. Dr Holzer has been praised by clients and peers as a “skilled and driven individual” and “a leader in the contentious sphere” who is “topranked by peers” within the “excellent” and “high-flying” IP team of Meyerlustenberger Lachenal. Clients highlight his “in-depth technical understanding” and describe him as a “patent and GI expert” and an “excellent litigator”.
www.IAM-media.com
Meyerlustenberger Lachenal Schiffbaustrasse 2 PO Box Zurich 8031 Switzerland T +41 44 396 91 91 F +41 44 396 91 92 See firm profile p1026 Professional associations • AIPPI • EPLAW • LES
IAM Patent 1000
823
Kretschmer, Thomas Partner – IPrime Rentsch Kaelin AG zurich@iprime.law | www.iprime.law
Thomas Kretschmer has extensive experience in the field of IP protection in various areas of the information, communication and technology (ICT) industry. His career as a patent attorney draws on his many years of experience in the IP departments of large software and computer companies. His particular technical specialties include modern technologies in the ICT environment, such as cryptography, the Internet of Things, blockchain and artificial intelligence, but also building and energy technology, as well as system control. For many years Mr Kretschmer managed the global patent portfolios of international companies. He holds a master’s in IP law and management, an LLM from the Centre for International Intellectual Property Studies in Strasbourg and a postgraduate diploma in copyright law from King’s College in London. As vice chair of the Standing Committee for Information Technology and Internet of the International Association for the Protection of Intellectual Property, Mr Kretschmer focuses on new ICT technologies, including computer hardware and software, networking, cryptography, databases and big data, digital electronics and devices, blockchain and artificial intelligence. He joined IPrime, a boutique firm for IP law, technology law and dispute resolution, in February 2019 as a specialist in computerimplemented inventions and ICT technologies. Relying on a unique combination of experienced business lawyers and litigators, patent attorneys and technology experts, IPrime offers high-end legal and strategic advice in connection with the protection and commercialisation of innovations, investments into technology, as well as complex IP and commercial disputes.
824
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IPrime Rentsch Kaelin AG Hirschengraben 1 8001 Zurich Switzerland T +41 44 229 60 60 F +41 44 229 60 50 See firm profile p1004 Professional associations • AIPPI • epi • I3PM
www.IAM-media.com
Leimgruber, Fabian Senior Partner – ThomannFischer leimgruber@thomannfischer.ch | www.thomannfischer.ch
Fabian Leimgruber is a senior partner and head of ThomannFischer’s IP prosecution and litigation team. He is a registered European and Swiss patent attorney and admitted lawyer before the Swiss Federal Patent Court. He has over 20 years’ experience helping leading international companies build up their IP portfolios and resolve their IP and technology-focused disputes before trial and appellate courts, domestic and international arbitration tribunals and the European Patent Office (EPO). Dr Leimgruber holds an LLM and a JD, and a PhD in physics. His particular area of expertise is implementing and leading international and national patent infringement litigation and nullity actions, handling complex cases before all the Swiss and German courts and the EPO. He and his team have run several large cases involving patents and standards. He has a substantial track record in EPO opposition and appeal actions, and in national nullity and infringement proceedings. In particular, he was involved in several cases that led to key decisions of the EPO Board of Appeal relating the patentability of emerging technologies. Besides his procedural work, Dr Leimgruber maintains a large patent prosecution portfolio for international and national clients. He has many years’ experience in various large law firms in Bern, Basel and Zurich, with a focus on mobile communication and information technology, emerging technologies, nanotechnology, business methods and software patenting – particularly in the emerging field of insurance and financial technology patenting, as well as simulation technology, big data and the Internet of Things. Dr Leimgruber provides strategic advice and expertise (IP due diligence, tax-related matters) and represents clients in European and Swiss arbitration and Asia Pacific cases. His long-term experience in Singapore and Shanghai gives him a deep insight into the particularities of various Asian legal systems. As an author and speaker, Dr Leimgruber has recently addressed topics such as reverse payment agreements, developments in software and business model patenting (Europe, the United States and Asia-Pacific), emerging technologies, artificial intelligence and antitrust issues.
www.IAM-media.com
ThomannFischer Elisabethenstrasse 30 Basel 4010 Switzerland T +41 61 226 24 24 F +41 61 226 24 25 Professional associations • ASA • epi • FICPI
IAM Patent 1000
825
Müller, Christoph Partner – Hepp Wenger Ryffel AG christoph.mueller@hepp.ch | www.hepp.ch
Christoph Müller is a Swiss and European patent attorney. He graduated with a degree in physics from the Swiss Federal Institute of Technology in Lausanne in 1993 and has been a partner with Hepp Wenger Ryffel since 2003. Mr Müller’s technical focus is on medical devices, computer-related inventions and mechanical engineering. He advises domestic and international clients on all aspects of IP-related matters and is regularly involved in opposition and appeal proceedings at the European Patent Office. In addition, he has extensive experience in managing litigation on behalf of his clients in numerous jurisdictions. Mr Müller has been a tutor for the basic training course on European patent law organised by the Centre for International Intellectual Property Studies Strasbourg and frequently lectures on various topics of IP law, in particular in the field of computerimplemented inventions. He authored several articles in the commentary on German and European patent law edited by Fitzner, Bodewig and Lutz. Mr Müller has been elected as a non-permanent technically qualified judge with the Swiss Federal Patent Court, which has been operative since 1 January 2012. Mr Müller is fluent in German, English and French, and is a member of the Licensing Executives Society, the International Federation of Intellectual Property Attorneys, the Institut für den gewerblichen Rechtsschutz, the Verband Schweizerischer Patentanwälte and the Verband der freiberuflichen Europäischen und Schweizer Patentanwälte.
826
IAM Patent 1000
Hepp Wenger Ryffel AG Friedtalweg 5 Wil 9500 Switzerland T +41 71 913 95 55 F +41 71 913 95 56 See firm profile p992 Professional associations • FICPI • INGRES • LES
www.IAM-media.com
Rauber, Georg Partner – Homburger AG georg.rauber@homburger.ch | www.homburger.ch
Georg Rauber was the head of Homburger’s IP and IT practice for over 15 years (until 2020) and still leads the TMT practice. Further, he is the sponsor partner of the Homburger TechGroup and member of the firm’s litigation and arbitration as well as its competition and regulatory practice. Mr Rauber has extensive and longstanding experience in all of these practice areas. He mainly supports transactions and represents clients in litigation and arbitration proceedings in: • patent, trademark and copyright enforcement and licensing; • research and development; • IT projects and outsourcing; • telecoms; • sports and entertainment; and • international distribution. Mr Rauber regularly publishes and lectures in his areas of specialisation. He is a member of the most important national and international associations in the IP and IT fields, was a board member of the Zurich Bar Association from 2007 until 2012 and acted as its president in 2011 and 2012. Mr Rauber serves as a member of the Zurich Bar Supervisory Board. Since 2019, he has been a member of the board of the Swiss Bar Association.
www.IAM-media.com
Homburger AG Prime Tower Hardstrasse 201 Zurich 8005 Switzerland T +41 43 222 1000 F +41 43 222 1500 Professional associations • AIPPI • INGRES • LES
IAM Patent 1000
827
Rentsch, Rudolf A Partner – IPrime Rentsch Kaelin AG zurich@iprime.law | www.iprime.law
Rudolf A Rentsch is the founding partner of IPrime, the first SwissEuropean boutique group specialised in providing sophisticated services in complex matters of technology law, intellectual property and compliance to high-profile clients. IPrime has offices in Zurich, Switzerland, as well as in Dusseldorf, Germany, where one of Europe’s leading patent courts is located. For the past 25-plus years, Mr Rentsch has been acting as a consultant and litigator in all areas of IP law, with a predominant focus on patent, trademark and copyright law, as well as competition law. He relies on vast experience in managing complex litigations and coordinating international lawsuits. Further areas of expertise include information, communication and technology law, licensing law, as well as legal and technical consultancy in the field of computers, software and telecommunications. He has frequently been involved in crossborder litigations and contract matters in Asia, the United States and all over Europe. Mr Rentsch holds a master’s in law from the University of St Gallen (magna cum laude) and one in electrical engineering from the Swiss Federal Institute of Technology in Zurich (Dipl Ing ETH). He did his doctorate in jurisprudence at the University of Zurich (summa cum laude). He served for 14 years as an elected member of the Swiss Federal Arbitration Commission for the exploitation of copyright and related rights. Since 2010, he has been a part-time judge at the Swiss Federal Patent Court, elected by the United Federal Assembly of the Swiss Parliament. In 2017 he was appointed as a member of the Advisory Board of the Swiss Innovation Valley.
828
IAM Patent 1000
IPrime Rentsch Kaelin AG Hirschengraben 1 Zurich 8001 Switzerland T +41 44 229 60 60 F +41 44 229 60 50 See firm profile p1004 Professional associations • LES • Swiss Bar Association • Zurich Bar Association
www.IAM-media.com
Ritscher, Michael Partner – Meyerlustenberger Lachenal Ltd michael.ritscher@mll-legal.com | www.mll-legal.com
Michael Ritscher is recognised as one of the most experienced and esteemed patent litigators and arbitrators in Switzerland and beyond. He has an extensive practice which focuses on advising and representing clients from a broad variety of sectors, including life sciences, luxury goods, advertising and retail. Mr Ritscher heads the IP team of Meyerlustenberger Lachenal, an exceptional group of professionals involved in a full range of IP legal matters and known for their outstanding team spirit. Over the course of several years, Mr Ritscher has advised and represented an industry-leading manufacturing company in all its worldwide IP matters. He is a reference for companies that regularly seek his support to handle their contentious cross-border affairs involving Swiss, EU and international law. In patent law, Mr Ritscher is often at the forefront of precedentsetting cases. He is frequently retained by innovative Swiss-based companies to support them in all of their worldwide IP matters, has numerous longstanding client relationships and appears as a leader in his field in client and peer feedback ratings. Mr Ritscher is president of the Institute of Intellectual Property and Copyright Law, the most active Swiss IP association, and a special judge at the Zurich Court of Commerce.
Meyerlustenberger Lachenal Ltd Schiffbaustrasse 2 PO Box Zurich 8031 Switzerland T +41 44 396 91 91 F +41 44 396 91 92 See firm profile p1026 Professional associations • AIPPI • GRUR • INGRES
www.IAM-media.com
IAM Patent 1000
829
Ruder, Susanna Partner – Hepp Wenger Ryffel AG susanna.ruder@hepp.ch | www.hepp.ch
Susanna Ruder is a European and Swiss patent attorney. She has been a partner at Hepp Wenger Ryffel since 2016. Her main areas of activity are the management of international patent grant procedures, opposition and appeal proceedings before the European Patent Office, and the preparation of opinions relating to patent infringement and validity. Additionally, she consults and represents clients in patent infringement and validity proceedings, in particular in Switzerland, and consults clients regarding distribution, licence and R&D contracts. She is also active in the area of trademark and design law. Her industrial experience enables her to always focus her consultancy on businesseconomical aspects. The technological focus of Ms Ruder is in mechanical engineering, in particular the transportation industry, optical industry, construction industry, medical technology and medical consumer goods. Her broad studies mean that she is also active in electrical engineering and software-related patents. Ms Ruder has passed the Centre for International Intellectual Property Studies course on patent litigation in Europe and will thus be able to represent clients at the upcoming Unitary Patent Court. Ms Ruder is fluent in German, English and Swedish, and is regularly involved in oppositions and appeals involving European patents filed in French. Additionally, she is active in the leadership of the Licensing Executives Society International Young Members Congress. Ms Ruder studied mechanical engineering at the Technical University of Hamburg and graduated with a MSc in 2006. She subsequently worked as a product manager in a large Swiss industrial company until 2009.
830
IAM Patent 1000
Hepp Wenger Ryffel AG Friedtalweg 5 Wil 9500 Switzerland T +41 71 913 9555 F +41 71 913 9556 See firm profile p992 Professional associations • epi • INGRES • LES
www.IAM-media.com
Saam, Christophe CEO – P&TS SA saam@patentattorneys.ch | www.patentattorneys.ch
Christophe Saam has a degree in electronic engineering and a degree in European patent litigation. He is a Swiss and European patent attorney. After completing his studies in 1990, Mr Saam worked for a start-up that develops photolithographic machines, where he was in charge of research. He then joined the European Patent Office (EPO) in Berlin, where he worked for four years as a patent examiner. His main field of research was control circuits for flat-screens, signal coding, error coding and compression of digital data. In 1994 he left the EPO to join an IP firm in Bern as a patent attorney. He then set up the patent attorney firm P&TS in Neuchatel of which he is still the chief executive officer. P&TS experienced dramatic growth and quickly became an important player on the IP scene in Switzerland. Mr Saam’s main areas of expertise within P&TS are all the procedures linked to obtaining patents in various fields, in particular electronics, software, microtechnics and watch-making; oppositions and appeals before the EPO; negotiation of licences; complex freedomto-operate and patentability studies; and patent litigation. Mr Saam was appointed by the Swiss Federal Assembly as deputy judge to the Swiss Federal Patent Court.
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P&TS SA Av J-J Rousseau 4 PO Box 2848 Neuchâtel 2001 Switzerland T +41 327271427 Professional associations • Aropi • FICPI • VESPA
IAM Patent 1000
831
Schärli, Kilian Partner – Meyerlustenberger Lachenal kilian.schaerli@mll-legal.com | www.mll-legal.com
Kilian Schärli is a partner and notary public of Meyerlustenberger Lachenal’s IP team and co-head of the firm’s distributed ledger technology/blockchain team, which are consistently ranked as one of the top Swiss teams by peers and clients. Mr Schärli works with domestic and international clients in the technology, industrial and internet sectors. He specialises in the fields of intellectual property, blockchain, unfair competition, licensing and distribution. He has particular expertise in commercial and transactional work relating to these fields. Mr Schärli is a skilled IP litigator and has experience in both advising and representing clients from the pharmaceutical, fintech, engineering, advertising/media and consumer goods industries in complex national and international disputes. Mr Schärli is also ranked and recommended for his work in Chambers and The Legal 500. He has been praised by clients and peers as “someone who feels at home in the role of sparring partner, but also in supporting and delivering cutting-edge legal advice”. He is a “key contact” in blockchain pharmaceutical use matters and for supplementary protection certificates with “excellent legal know-how” and a “highly appreciated can-do approach”. Mr Schärli has been appointed as incoming chair for the Licensing Executives Society International’s Young Members Congress for 2022.
Meyerlustenberger Lachenal Schiffbaustrasse 2 Postfach Zurich 8031 Switzerland T +41 44 396 91 91 F +41 44 396 91 92 See firm profile p1026 Professional associations • AIPPI • EPLAW • LES
832
IAM Patent 1000
www.IAM-media.com
Welch, Andreas European Patent Attorney – Hepp Wenger Ryffel AG andreas.welch@hepp.ch | www.hepp.ch
Andreas Welch is a Swiss and European patent attorney and has also obtained the European litigation diploma (European Patent Institute/ Centre for International Intellectual Property Studies). Dr Welch is a chemist with additional expertise in the medicinal chemistry and biochemistry area. He completed a doctorate in organic chemistry (summa cum laude) and has worked for Hepp Wenger Ryffel since 2001. Dr Welch has also gained experience as in-house counsel of a large pharmaceutical company, where he was involved in managing worldwide patent disputes, among other things. Dr Welch’s technical focus is on chemistry-related inventions and in particular on the pharmaceutical area. He advises domestic and international clients on all aspects of IP-related matters and is regularly involved in opposition and appeal proceedings at the European Patent Office, as well as in revocation and infringement proceedings at the Swiss Federal Patent Court. In addition, he has extensive experience in managing litigation in numerous jurisdictions. Dr Welch wrote the chapter on Switzerland in the manual International Pharmaceutical Law and Practice (LexisNexis). He is fluent in German and English and has a good understanding of French. He is a member of the Institut für den gewerblichen Rechtsschutz and the Verband der freiberuflichen Europäischen und Schweizer Patentanwälte.
Hepp Wenger Ryffel AG Friedtalweg 5 Wil 9500 Switzerland T +41 71 913 95 55 F +41 71 913 95 56 See firm profile p992 Professional associations • epi • INGRES • VESPA
www.IAM-media.com
IAM Patent 1000
833
Wilming, Martin Partner – Hepp Wenger Ryffel AG martin.wilming@hepp.ch | www.hepp.ch
Martin Wilming is a European and Swiss patent attorney and has been a partner at Hepp Wenger Ryffel since 2008. He has a doctorate in bioorganic chemistry. He specialises in the management of IP rights with an LLM in IP law and management from the Centre for International Intellectual Property Studies (CEIPI) at the University of Strasbourg. Dr Wilming’s main areas of activity are international prosecution, opposition and appeal proceedings before the European Patent Office (EPO) and the enforcement of IP rights. He also advises and represents clients in proceedings before the Swiss Federal Patent Court. Dr Wilming is also active in trademark and design law. He has extensive experience in analysing questions of infringement and the validity of IP rights, and provides clients with practical recommendations from a commercial perspective. He frequently advises and represents clients in complex disputes, coordinates multinational IP litigation and drafts and negotiates technologyrelated agreements, in particular licensing, cooperation and technology transfer agreements. Dr Wilming mainly focuses in the areas of chemistry, pharmaceuticals, adhesives and coatings, dental technology, food technology and mechanical engineering. Dr Wilming is fluent in German and English and has a good understanding of French. He is a member of the Licensing Executives Society, the Institute of Intellectual Property and Copyright Law and a board member of the Association of European and Swiss Patent Attorneys in Private Practice. He is also active in the European Patent Practice Committee of the Institute of Professional Representatives before the European Patent Office and has been appointed to the EPO’s Standing Advisory Committee (specifically, the Working Party on Rules and the Working Party on Guidelines). Further, Dr Wilming is a tutor for the basic training course on European patent law organised by CEIPI and has authored several chapters in German and European patent law edited by Fitzner, Bodewig and Lutz. Dr Wilming runs a blog (www.patentlitigation.ch) on Swiss Federal Patent Court case law.
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IAM Patent 1000
Hepp Wenger Ryffel AG Friedtalweg 5 Wil 9500 Switzerland T +41 71 913 95 55 F +41 71 913 95 56 See firm profile p992 Professional associations • INGRES • LES • VESPA
www.IAM-media.com
Zardi, Marco Partner – M Zardi & Co mzardi@zardi.ch | www.zardi.ch
Marco Zardi is the founder and managing director of M Zardi & Co SA, a specialised IP firm based in Lugano, Switzerland. The firm includes Swiss and European patent attorneys, trademark attorneys and IP legal consultants. Mr Zardi’s technical expertise lies in the chemical and mechanical engineering fields. Mr Zardi has been working in intellectual property for over 30 years, gaining expertise in all proceedings before the EPO and the Swiss Patent Office. As a former substantive examiner at the EPO, he is intimately familiar with the EPO’s practice. In private practice, Mr Zardi provides services to a world-leading company in industrial chemistry. As that company’s main port of call in all IP matters, he has managed its worldwide IP portfolio for many years. Several international companies in different technological areas have also requested Mr Zardi to design strategies to help shape their IP portfolios in alignment with their economic targets and constraints. Mr Zardi is experienced in advising overseas clients (especially Far Eastern companies) and local companies. He is also adept at the management of cross-border IP litigation, where he is frequently asked to provide freedom-to-operate, technical and infringement opinions in connection with out-of-court and court proceedings. Mr Zardi additionally has expertise in the commercial evaluation of IP rights and the negotiation of IP licences and assignments. Since 1999 Mr Zardi has been one of the most active contributors to M Zardi & Co’s well-established and renowned IP practice. The firm currently has about 20 employees, including IP specialists in all technical fields and IP law. Mr Zardi has also been a part-time judge of the Swiss Federal Patent Court since it was established in 2012. He is frequently involved in processing complex patent matters, including court decisions and alternative settlements.
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M Zardi & Co Via Pioda 6 Lugano 6900 Switzerland T +41 91 910 6500 F +41 91 910 6509 Professional associations • AIPPI • FICPI • INTA
IAM Patent 1000
835
Turkey
Although the Turkish economy has experienced turbulence of late, there are signs of recovery on the horizon, with a new economic programme focused on strengthening innovation, among other things, unveiled for 2021. The local start-up scene is thriving and a large-scale technology complex has been set up in Istanbul to serve as a regional hub for innovative research – all of which has contributed to healthy patent filing numbers and furthered a sense of optimism among the IP community. On the contentious front, while constant changes in the judiciary and a lack of technical specialisation in the courts are causing some frustration, the past 12 months have also seen some legislative clarity. For instance, the Code on the Amendment of the Code of Civil Procedure and Some Other Laws entered into force in late 2020, which should have a positive impact on patent proceedings. One amendment allows judges to grant parties an additional two weeks in which to submit statements that challenge court expert reports, which significantly influence the outcome of a decision. In other news, a landmark ruling from the IP courts has broken new ground in the nationwide battle for the European Patent Convention (EPC) to be applied to patents in Turkey.
ALFA PATENT STAN ADVOKA Ltd Co
Nimble boutique Alfa Patent Stan Advoka is a discerning choice for non-contentious briefs in the electronics, chemistry and microbiology fields. The set communicates in all three official EPO languages, drafts meticulous applications and has the magic touch to see them through to grant. Its high profile is due in no small part to Selda Arkan and Baris Atalay, Turkey’s first-ever qualified European patent attorneys. Fluent in eight languages, Arkan is a repository of trust for life sciences companies with international ambitions. A prolific author, registered court expert and drafter extraordinaire, Atalay is a favourite among research institutes. The pair are hailed by peers for their professionalism, quality service and can-do attitude. See p920 for firm profile
Ankara Patent Bureau
Firms: prosecution Highly recommended Deriş Patents and Trademarks Agency Gün + Partners Recommended ALFA PATENT STAN ADVOKA Ltd Co
See p920
Ankara Patent Bureau INVOKAT Intellectual Property Services Ltd Stock Intellectual Property Services AS
Since setting up shop in 1964, Ankara Patent Bureau has played a crucial role in the development of Turkey’s IP scene and clients take great comfort from its profound institutional knowledge. Home to an impressive 100 engineers, lawyers and business sages, it can deftly navigate the rapids of all technical fields; while ongoing investment in its IT structures ensures that practitioners can be true partners to the businesses they serve. Dynamic duo Korcan Dericioğlu and Ekin Karakuş Öcal are the first port of call for potential instructions.
Firms: litigation and transactions
Deriş Patents and Trademarks Agency
OFO VENTURA
One of Turkey’s major IP players, Deriş excels at procuring strong, broad and enforceable patents, while keeping a close eye out for potential commercialisation opportunities. “The team is highly recommended for its efficiency and comprehensive
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Deriş Patents and Trademarks Agency Gün + Partners Kenaroğlu Avukatlik Burosu NSN Law Firm
See p1032
Moroğlu Arseven
Suluk Intellectual Property Law Firm
www.IAM-media.com
Turkey as well as cost-effective recommendations, which come with a high probability of success.” Strength in depth is a massive draw: its bench comprises 30 lawyers, 29 registered trademark and patent attorneys and six European patent attorneys, all of whom are as innovative in their thinking as their patrons; for example, the group recently developed and patented its own searching technology as a computer-implemented invention. Managing partner and division captain Serra Coral is renowned for her futureproofed litigation strategies; while Emre Kerim Yardımcı’s creative approach to complex disputes has not only helped to push Deriş to the top of the leader board, but also cemented his own position among the country’s elite. Fellow heavyweight Okan Can has a sterling reputation in the local and international community, thanks to his “immense knowledge and precise way of working”. “Okan is one of the best lawyers for patent infringement cases: he is reliable, operates on a high level and never fails to meet the needs of clients.” All-rounder Muazzez Korutürk was recently elected to the partnership: “She is friendly, readily makes herself available and provides superb advice, thanks to her brilliant knowledge of the subject matter. Muazzez is a pleasure to work with.” European patent attorney Oya Yalvaç shines bright in opposition proceedings and conducts thorough yet easily digestible freedom to operate searches that sit well with in-house counsel, courtesy of her own background in the pharmaceutical industry. A leading light on the Turkish legal landscape, Mehmet Nazim Aydin Deriş has made a significant contribution to the national IP regime and regularly shares his profound wisdom with colleagues and peers.
Individuals: prosecution
Gün + Partners
Burcu Sucuka Gün + Partners
“Gün + Partners is the first choice for IP instructions in Turkey: it works systematically, investigates each matter in depth and provides fantastic advice at a great price point, all while building positive personal relationships.” The storied outfit has blazed a trail for domestic patent practitioners to follow, participates enthusiastically in the international IP dialogue and dispenses a comprehensive service that few can match. An unstoppable force and one of the finest litigators in town, Mehmet Gün has multiple landslide victories to his name – many of which have helped to shape the Turkish patent landscape. For example, he and Özge Atılgan Karakulak initiated the first-ever pharmaceutical data protection and exclusivity actions in the country. Multinational life sciences corporations rely on the IP group co-chair to achieve positive outcomes in complex litigation with minimum fuss. Pharmaceutical giants and technology conglomerates
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Uğur Aktekin Gün + Partners Pinar Arikan Gün + Partners Selda Arkan ALFA PATENT STAN ADVOKA Ltd Co
See p840
Baris Atalay ALFA PATENT STAN ADVOKA Ltd Co
See p841
Pinar Bulut FarmaPatent Serra Coral Deriş Patents and Trademarks Agency Kazim Dündar Stock Intellectual Property Services AS Bahadir Gursoy Stock Intellectual Property Services AS Aydin Mutlu INVOKAT Intellectual Property Services Ltd Pinar Sen Stock Intellectual Property Services AS Erkan Sevinç Istanbul Patent AS
Oya Yalvaç Deriş Patents and Trademarks Agency
are in safe hands with Selin Sinem Erciyas and Aysel Korkmaz Yatkın respectively. Often found assisting research bodies and foreign embassies, Sinem Erciyas understands the need for efficiency and delivers on the money in time-sensitive matters; while Korkmaz Yatkın is lauded by peers for her persuasive advocacy skills. On the non-contentious front, Uğur Aktekin, Pinar Arikan and Burcu Sucuka form a star-studded line-up. Department co-lead Aktekin enjoys a broad practice encompassing trademarks, designs, patents and unfair competition, among other things, making him ideally placed to advise on multifaceted issues in the
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Turkey Individuals: litigation and transactions Okan Can Deriş Patents and Trademarks Agency
Yasemin Aktaş OFO VENTURA
Özge Atılgan Karakulak Gün + Partners
Ezgi Baklacı Gülkokar Moroğlu Arseven
Mehmet Nazim Aydin Deriş Deriş Patents and Trademarks Agency
Bahattin Çarkacı Suluk Intellectual Property Law Firm
Selin Sinem Erciyas Gün + Partners
Serra Coral Deriş Patents and Trademarks Agency
Mehmet Gün Gün + Partners Selma Ünlü NSN Law Firm
Samiye Eyuboğlu Eyuboğlu Law Firm See p844
Özlem Fütman OFO VENTURA Yasemin Kenaroğlu Kenaroğlu Avukatlik Burosu
See p843
Işık Özdoğan Moroğlu Arseven
technology and fast-moving consumer goods sectors. Arikan patents and counsels across a wide spectrum of industries, devises commercially sound strategies and restructures portfolios to drive business value. Technically adept and armed with an MSc in genetics and cellular pathology, Sucuka looks out for clients’ best interests, conducts regular training sessions and always gives helpful tips along the way.
INVOKAT Intellectual Property Services Ltd
Time and time again, global companies and local entrepreneurs turn to INVOKAT to protect their crownjewel assets. Its bespoke, technically brilliant patent offering has earned it a loyal following in the chemical and pharmaceutical sectors in particular – areas which are also strongholds for managing director and firm founder Aydin Mutlu. A qualified European patent attorney and chemical engineering whizz, he is highly sought after both by industry leaders and by peers to act as counsel on highly intricate matters.
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Gülay Göksu NSN Law Firm
See p842
Gökçe İzgi Moroğlu Arseven
Aysel Korkmaz Yatkın Gün + Partners
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Emre Kerim Yardımcı Deriş Patents and Trademarks Agency
Muazzez Korutürk Deriş Patents and Trademarks Agency Cahit Suluk Suluk Intellectual Property Law Firm
Kenaroğlu Avukatlik Burosu
“The service at Kenaroğlu Avukatlik Burosu is of the highest calibre – the reliability, professionalism and precision with which instructions are handled are nothing short of impressive. The responsiveness is also outstanding and the advice is both clear and thorough.” Founder Yasemin Kenaroğlu puts heart and soul into her work and has stellar results to show for it: “Yasemin cannot be praised enough for her exceptional litigation capabilities. She is exceptionally experienced, tackles sensitive matters with care and is not afraid to act. If anyone needs to defend their rights in Turkey, Yasemin is the one to call.”
Moroğlu Arseven
Full-service firm Moroğlu Arseven takes a holistic approach to intellectual property, providing seamless support across the technical spectrum. In the patent world, the savvy troop looks for ways to enhance and maximise the business value of clients’ inventions through lucrative licensing deals and technology transfers in the R&D space. Led by star litigator Işık Özdoğan, it has also been coming up trumps in
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Turkey dispute proceedings of late. Özdoğan works closely with enforcement ace Ezgi Baklacı Gülkokar and commercialisation guru Gökçe İzgi to deliver hands-on, considered counsel that accounts for longterm goals.
NSN Law Firm
Headquartered in Istanbul and working hand in glove with associate offices in a further three key locations – Antalya, Ankara and Izmir – NSN is in prime position to secure and maintain cast-iron patent protection across the country. The commercial law firm has earned a glittering reputation for its textbook performances in ground-breaking disputes, particularly in the pharmaceutical sector, and has several precedent-setting wins to its name. Toughas-nails litigator Selma Ünlü brings gravitas to the courtroom and delivers arguments with authority and poise. She co-chairs the patent and life sciences department alongside Gülay Göksu, a qualified trademark patent attorney and lawyer. The pair “approach matters professionally and report on developments in a clear, concise and timely manner”. See p1032 for firm profile
OFO VENTURA
A fine choice for one-stop shoppers, OFO VENTURA acquits itself with distinction in patent procurement and litigation, especially in the regulated industries. Globally renowned firms, many of which are part of its longstanding network, send through a steady stream of non-contentious instructions; but the team’s true meat and drink is big-ticket litigation, where it combines local know-how and outside-thebox thinking to carry the day. Between them, Özlem Fütman and Yasemin Aktaş form a formidable duo. European patent attorney and staunch litigator Fütman is “an excellent communicator with a proactive approach. She is great to work with and offers suggestions that will bring about the most successful outcome for clients”. Aktaş likewise shepherds patrons through each stage of the brief with a practised hand, providing clear-sighted guidance that instils them with confidence.
Stock Intellectual Property Services AS One of the most venerable IP firms in the country, Stock Intellectual Property Services is highly acclaimed for its premier prosecution practice.
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Established in 1887, the outfit is steeped in history, but its approach to drafting and filing remains creative and detail-oriented. It has lately seen more instructions from the local outposts of the top 20 global filers – a trend which has further diversified its largely international client base. Entering prime time are Bahadir Gursoy and Pinar Sen, who assist companies in many meaningful ways. Formerly a project engineer with a leading automotive lighting systems supplier, Gursoy speaks the language of inventors and distils this into immaculate applications; while Sen provides invaluable litigation support informed by past experience as a senior patent and trademark attorney at a top pharmaceutical company. Veteran Kazim Dündar is a trusted sounding board for clients and colleagues, and remains an influential figure on the IP scene.
Suluk Intellectual Property Law Firm
When it comes to quality and client service, Suluk Intellectual Property Law Firm surpasses expectations at every turn. The renowned boutique is really firing on all cylinders now, maintaining a thriving prosecution practice and making the difference in complex pharmaceutical, software and electronics disputes. Robust leadership is supplied in spades by Cahit Suluk, whose first-rate industry knowledge and refined business sense translate into sophisticated strategic advice. Fellow litigator Bahattin Çarkacı leverages his trademark, design and unfair competition law knowledge to prevail in tricky disputes with multiple threads.
Other recommended experts
At Eyuboğlu Law Firm, Samiye Eyuboğlu is the confidante of major generic pharmaceutical companies. She is intimately familiar with the local landscape, thanks to a stint as a lawyer at the Turkish Patent Institute Administration. FarmaPatent founder Pinar Bulut knows the life sciences industry inside out; as a former analyst and laboratory chief with extensive industry experience, he can swiftly identify the best patenting strategies and is a dab hand at licensing agreements too. Schooled in the arts of aeronautical and mechanical engineering, Istanbul Patent’s Erkan Sevinç performs with verve before the EPO and is a thoughtful choice for prosecution instructions.
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Arkan, Selda Senior partner – ALFA PATENT STAN ADVOKA Ltd Co selda.arkan@alfapatent.com | www.alfapatent-stanadvoka.com
Born in Istanbul to a diplomat father, Selda Arkan grew up in Cyprus, Mexico and Germany, becoming fluent in Turkish, English, French, German and Spanish, as well as acquiring a good level of Italian, Dutch and Portuguese, and some knowledge of Japanese. Ms Arkan obtained her BSc in chemistry from the Middle East Technical University in Ankara, conducted postgraduate studies on polymers at the Brussels Free University and entered the IP world in 1985 in a Belgian private practice firm, where she worked until 1992. She then joined an IP firm in Istanbul in 1993 and qualified as a Turkish chartered patent and trademark agent in 1996, with the first-ever examination before the Turkish Office. In 1997 Ms Arkan became the first-ever qualified European patent attorney in Turkey and founded ALFA PATENT, a dynamic firm specialised in obtaining, maintaining and enforcing patents, trademarks and registered designs. ALFA PATENT grew under her management continuously for 20 years and, with a view to cover an even wider range of technical domains, merged with STAN ADVOKA in 2018 to form ALFA PATENT STAN ADVOKA, where Ms Arkan is senior partner. Upon the accession of Turkey to the European Patent Convention in 2000, Ms Arkan served at epi on many committees and as a council member (2000-), board member (2000-2017) and vice president (20082011). She is also serving on the Disciplinary Board of Appeals of the EPO Administration Council for a five-year term (2018-2023). Ms Arkan is also a member of the Disciplinary Committee of the Turkish chapter of the International Association for the Protection of Intellectual Property, a board member of the International Federation of Intellectual Property Attorneys Turkey and a member of the Association of Intellectual Property Experts. She coordinates the basic courses of the Centre for International Intellectual Property Studies in Istanbul. Ms Arkan’s daily practice revolves around litigations, freedom-tooperate analyses and preparing legal and technical advice, as well as some drafting and prosecution work.
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ALFA PATENT STAN ADVOKA Ltd Co Dumen Sokak No 11 Gumussuyu Is Merkezi Kat 4 Istanbul 34427 Turkey T +90 212 293 3242 F +90 212 244 5121 See firm profile p920 Professional associations • AIPPI • epi • FICPI
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Atalay, Baris European Patent Attorney – ALFA PATENT STAN ADVOKA Ltd Co atalay@stanadvoka.com | www.alfapatent-stanadvoka.com
Baris Atalay became a Turkish patent agent in 2003 and a European patent attorney in 2011. He is one of the first people to become a European patent attorney in Turkey following the country’s accession to the European Patent Convention. Mr Atalay holds a BSc in electrical engineering from the Technical University of Istanbul and an MA in European studies of science, technology and society from Maastricht University. He obtained the certificate in patent litigation in Europe from the Centre for International Intellectual Property Studies (CEIPI) of Strasbourg University. Mr Atalay has been a member of the epi Council since 2014 and the epi Professional Education Committee since 2017; he became a member of International Association for the Protection of Intellectual Property in 2011, sitting on the Turkey Board since 2017 and the Programme Committee between 2014 and 2018. Mr Atalay is also a member of the International Federation of Intellectual Property Attorneys and of the European Patent Litigators Association. Mr Atalay is registered as a court expert in the Specialized IP Courts of Istanbul. His academic engagements include teaching at epi and the CEIPI, and lecturing in IP law at the Biomedical Engineering Faculty of Bahcesehir University, Istanbul. Mr Atalay has authored the following books in Turkish: • Essential Guidelines for Patent Attorneys, Legal Publication, October 2013; • Introduction to Patent Law, Legal Publication, November 2014; and • Claim Drafting Techniques, Legal Publication, March 2017. He authored the patent part of Turkish Patent Attorneys Examination Questions & Answers (Aristo Publication, September 2019). Mr Atalay is involved in patent drafting for international teams of researchers active in Turkish universities in the fields of electrical engineering, electronics, software engineering and optics. He is also involved in the prosecution of inventions in the field of electrical household appliances. He deals with litigation cases in electronics and software engineering. In addition to in-office trainees, he has provided European Qualifying Examination tutoring to about 10 candidates in recent years for the pre-exam and main papers. He is fluent in English and French and has a working knowledge of German.
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ALFA PATENT STAN ADVOKA Ltd Co Dümen Sokak No 11 Gümüssuyu Is Merkezi Kat 4 Istanbul 34427 Turkey T +90 212 293 3242 F +90 212 244 5121 See firm profile p920 Professional associations • AIPPI • epi • FICPI
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Göksu, Gülay Partner – NSN Law Firm gulay.goksu@nsn-law.com | www.unlukuruselek.com
Gülay Göksu is a partner at NSN Law Firm and co-chair of both the trademark and the patent departments of the firm. An attorney at law and a Turkish trademark and patent attorney, she has been practising IP law for over 10 years. She provides consultancy and litigation services in IP and industrial property law to her local and international clients in various industries including pharmaceutical, food and beverages, textile, home appliances and broadcasting. Her practice primarily focuses on patent portfolio management and litigation. With her extensive experience in litigation, she manages the trademark, patent and design portfolios of multinational companies by devising bespoke strategies. She has been involved in various dispute resolution files related to complex pharmaceutical patents and transactions before both the Turkish Patent and Trademark Office and the Turkish courts. Ms Göksu is listed in the IAM Patent 1000 and WTR 1000 as a leading patent and trademark professional. She is a member of the International Trademark Association, the International Association for the Protection of Intellectual Property (AIPPI) and the International Property Owners Association. She sits on several of these organisations’ committees and is particularly active as a member of the Legislation Working Group of AIPPI Turkey focused on improving IP law.
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NSN Law Firm Burhaniye Mah Atilla Sok, No 6 Altunizade, Üsküdar Istanbul 34676 Turkey T +90 542 593 6363 See firm profile p1032 Professional associations • AIPPI • INTA • IPO
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Kenaroğlu, Yasemin Founding Partner – Kenaroğlu Avukatlik Burosu yasemin@kenaroglu.av.tr | www.kenaroglu.av.tr
Yasemin Kenaroğlu is the founding partner of Kenaroğlu Avukatlık Bürosu. She is a registered attorney at law with the Istanbul Bar Association and a patent and trademark attorney with the Turkish Patent and Trademark Office. She completed her LLM at Istanbul Bilgi University with a thesis on compulsory licensing in Turkish patent law. Ms Kenaroğlu has been working in the field of intellectual property since 2003 and represents major domestic and international clients from various sectors such as pharmaceuticals, biotechnology, automotive, software, machinery, cosmetics, electronics, telecommunications, retail chains, media and entertainment, and food and beverages in patent, trademark, design, domain name, copyright and unfair competition matters. She is widely experienced in patent litigation and has been representing rights holders in patent infringement and unfair competition actions, invalidation actions, declaratory and nondeclaratory actions and compensation actions since 2008. Her experience in the field covers obtaining and executing ex parte and in parte preliminary injunctions; she also handles all stages of settlement negotiations in patent disputes and provides legal assistance with the preparation, negotiation, revision and execution of legal contracts. Ms Kenaroğlu has been recommended as a top-tier IP practitioner by IAM 1000, The Legal 500, Chambers & Partners, WTR 1000, MIP IP Stars, WTR Global Leaders and Top 250 Women in IP. She is an active member of international IP organisations including the International Association for the Protection of Intellectual Property, the International Federation of Intellectual Property Attorneys, INTA and MARQUES, and regularly writes for domestic and international platforms in her fields of expertise.
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Kenaroğlu Avukatlik Burosu Levent Mahallesi Çamlık Caddesi Manolyalı Sk No 3 Istanbul 34330 Turkey T +90 212 211 7755 F +90 212 211 7767
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Ünlü, Selma Senior Partner – NSN Law Firm selma.unlu@nsn-law.com | www.nsn-law.com
Selma Ünlü is a senior partner with NSN Law Firm. She graduated from the Marmara University Faculty of Law in 1989 and obtained her diploma in private international law from Wolverhampton University in the United Kingdom. Ms Ünlü has special expertise in life sciences and IP litigation and transactions. She is a qualified patent and trademark attorney; an accredited, court-appointed expert before the specialised IP courts and commercial courts of Istanbul for IP and IT-related disputes; and a panellist for WIPO and the Czech Arbitration Centre for Uniform Domain Name Dispute Resolution Policy proceedings. Her extensive legal experience developed over 30 years has led to her recognition by WTR 100, The Legal 500, IAM 1000, Managing Intellectual Property, Who’s Who Legal, UK Monthly Lawyer and Chambers & Partners as being among the world’s best IP practitioners with special expertise in life sciences law. Since 2017 she has repeatedly been chosen among the Top 250 Women IP Lawyers by Managing Intellectual Property. Ms Ünlü has significant experience in advising major local and international clients on cross-border IP matters including both transactional consultancy and litigation. She has handled the IP and life sciences portfolios of multinational companies for almost three decades, and obtained precedential decisions in countless cuttingedge court cases. She acts in a wide range of contentious matters, particularly those involving complex regulation. She advises companies on content and technology development and licensing, e-commerce, advertising and distribution. She also advises advertising agencies, television and radio broadcasters, social network operators, online retailers and consumer electronics manufacturers on legal clearance of advertisements, online gambling, labelling and packaging. Ms Ünlü frequently speaks at domestic and international conferences on the topics of IP and life sciences regulations. She has published extensively on various areas of IP law and helped to shape the protection of pharmaceutical trademarks in Turkey.
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NSN Law Firm Altunizade Burhaniye Mah Atilla Sok 6 Üsküdar Istanbul 34676 Turkey T +90 216 321 47 47 See firm profile p1032
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Ukraine
Notwithstanding the setbacks caused by the covid-19 pandemic, the Ukrainian IP community still has its sights set on the establishment of a specialist IP court, with a 2020 report from the Centre for Commercial Law Studies at London’s Queen Mary University setting out recommendations and a legal framework for the potential forum. The report is the result of a project which has also delivered training online to more than 100 Ukrainian IP judges and other professionals in preparation for the future. Commentators suggest that the benchmark of quality for patent providers has risen markedly in recent years and the country is becoming an ever-more attractive venue for those seeking patent protection across Eastern Europe; fees appear to be on the increase as a result. Major changes were recently introduced by new laws on bureaucratic barriers and corruption in the healthcare sector, and on patent reforms more generally, which came into effect in July and August 2020 respectively. The new legislation has had a dramatic impact in the pharmaceutical space and beyond, making it possible for Ukrainian patent holders to obtain SPCs, expanding the definition of non-patentability and introducing the option of post-grant opposition procedures.
AEQUO
Despite some high-profile personnel departures, AEQUO remains a potent force on the Ukrainian patent market. Newly headed up by Nataliya Dryuk, it tackles the full range of contentious and non-contentious patent work, from Supreme Court litigation to the development and implementation of prosecution and filing strategies and the negotiation of IP-related deals and joint ventures. The team of eight patent attorneys and lawyers executes flawlessly across the industry spectrum, and prides itself on its international standards of client care. Dryuk combines knowledge of chemistry and biology to assist pharmaceutical clients around the globe in resolving all patent snags that they encounter. Under her watch, the firm has recently been dispensing clearance advice to Dutch pharmaceutical company Synthon BV; conducting patent searches and appearing in a precedent-setting patent cancellation action on behalf of HIV patient association CO 100% Life; and representing chemical multinational DuPont in a major invalidity dispute.
Arzinger Law Office
The full-service Arzinger has made intellectual property a central pillar of its all-encompassing corporate practice. Its patent offering is equally comprehensive, with portfolio management, litigation and contract negotiation all within its wheelhouse; and it has impressive geographical reach, thanks to a network of contacts throughout the Commonwealth of Independent States (CIS) region. Its clientele – which includes major biotechnology and pharmaceutical players, as well as a range of manufacturing companies – appreciates its smart utilisation of innovative software products for the monitoring and assessment of IP portfolios, data and
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other documents. The co-captains of the practice are Kateryna Oliinyk and Taras Kyslyy. Dual-qualified patent attorney and attorney at law Oliinyk has been busy advising energy start-up SolarGaps on its patent strategy in Ukraine, the European Union and the United States. Meanwhile, Kyslyy is a formidable ally in patent disputes of all flavours – he recently fought the corner of Teva Pharmaceuticals and Defense Technologies LLC in commercially crucial battles – while also assisting with projects in the media and telecommunications fields.
Baker McKenzie
Baker McKenzie is a titan of the IP scene, with the Kyiv office a vital cog in its slick global machine. A glittering clientele comprising both domestic companies and players from Europe and further afield receive an A-to-Z patent service from a crack team led by IP head Ruslan Drobyazko. Drobyazko is a master of patent prosecution, enforcement and IP-rich transactions, who has published widely on IP legislation and practice. Joining him in the IAM Patent 1000 this year is Oleksiy Stolyarenko, who brings the heat in patent invalidation and infringement disputes involving everything from pharmaceuticals to consumer goods, and also has a flair for the fine print of technology transfer agreements.
Doubinsky & Osharova
Founded around the same time as Ukraine’s postSoviet IP system was established, Doubinsky & Osharova is one of the most venerable boutiques in the country. Effortlessly dispatching everything from basic filings and prosecution to complex litigation, “it tackles a lot of work, is very visible in the market and is rightly placed at the top of the rankings”. On the contentious front, it recently acted for AbbVie
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Ukraine in a major infringement dispute relating to HIV treatments; defended multinational liquid packaging leader Guala Closures in an invalidity suit; and guided a well-known global healthcare company through a series of pre-litigation measures. Giving the firm its name are distinguished figures Michael Doubinsky and Irina Osharova. Managing partner Doubinsky has a PhD in law and has been a fixture on the IP scene for more than quarter of a century; while Osharova was among the first 10 experts to be certified as a Ukrainian patent attorney almost 30 years ago. Robust support comes from legal department head Victoria Sopilnyak, a pharmaceutical and life sciences maven who played a key role in the AbbVie litigation; and patent and trademark department Tatiana Shpakovich, who devises futureproofed IP strategies and helps get transformative transactions over the line.v
Gorodissky & Partners (Ukraine)
By a long stretch the pre-eminent prosecution shop across the border in Russia, Gorodissky & Partners also has a supremely capable contingent stationed in Kiev. Since it was established 20 years ago, the Ukrainian branch has registered more than 6,500 patents and utility models, with its meticulous drafting and sage portfolio management advice delighting its discerning clientele. “Based on many years of cooperation, we can say that Gorodissky & Partners is a reliable business partner,” reports one satisfied patron. “Its work is always clear and timely, and all advice is always carefully considered. The professionalism of its patent attorneys and other specialists ensures that its service is at a high level.” At the helm is chemist Maksym Bocharov, who is intimately familiar with process and procedure across Ukraine, the CIS region and the whole of Europe. A regular advocate before Ukrpatent, he stands out for his “high professionalism, experience and efficiency of work”. See p986 for firm profile
IPStyle
Established 13 years ago, IPStyle matches a wealth of experience on both sides of the contentious/noncontentious divide with a fresh, dynamic outlook that resonates with innovators of all stripes: new converts to the cause include The Climate Corporation and Australian Nuclear Science Organisation. Managing partner and founder Mariya Ortynska attracts glowing feedback: “Mariya is approachable and results oriented, and dives into projects as deeply as she possibly can. She has also assembled a team of responsive, client-focused IP specialists.”
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Firms Doubinsky & Osharova Mamunya IP Pakharenko & Partners AEQUO Arzinger Law Office Baker McKenzie Gorodissky & Partners (Ukraine)
See p986
IPStyle Mikhailyuk Sorokolat & Partners PETOŠEVIĆ They include Iryna Ortynska, who holds academic qualifications in both intellectual property and physics. She receives similarly high praise from her electronics, software and telecommunications clients: “Iryna constantly keeps in contact, asking technical questions and providing proficient recommendations on the patenting process. She is thorough and cares about her work.”
Mamunya IP
Following his well-publicised 2020 departure from AEQUO, dual-qualified patent attorney and attorney at law Oleksandr Mamunya set up eponymous firm Mamunya IP, which has been making a real splash on the Ukrainian market. With most of Mamunya’s existing clients moving with him and new instructions also flooding in, the firm already boasts an impressively diverse roster, featuring everything from major agrichemical players to energy companies and pharmaceutical multinationals. On the latter point, one recent beneficiary of its cradle-to-grave patent service is Abbvie, which enjoyed staunch representation in a complex and precedent-setting cancellation action. All-rounder Ganna Prokhorova ably handles suits across the IP spectrum, both in and out of court, while also assisting with portfolio management and getting all manner of technology transfer agreements inked.
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Ukraine Julia N Semeniy Asters
Individuals Michael I Doubinsky Doubinsky & Osharova
Daniel Benatov Patent Bureau “Dr Emil Benatov & Partners”
Oleksandr Mamunya Mamunya IP
Nataliya Dryuk AEQUO
Irina O Osharova Doubinsky & Osharova
Nataliia Gavrylenko LEX Intels
Antonina Pakharenko-Anderson Pakharenko & Partners Maksym Bocharov Gorodissky & Partners (Ukraine)
Natalya Lemeshchuk LEX Intels See p849
Ruslan V Drobyazko Baker McKenzie Taras Kyslyy Arzinger Law Office Valentin Mikhailyuk Mikhailyuk Sorokolat & Partners Mariya Ortynska IPStyle Alexander Pakharenko Pakharenko & Partners Dina Petošević PETOŠEVIĆ Anton Polikarpov Avellum Partners
Mikhailyuk Sorokolat & Partners
Competitors hold Mikhailyuk, Sorokolat & Partners in the highest regard: “The firm files in large numbers at both a national and international level, and maintains a good presence both locally and across the Russian-speaking region.” Its 200-plus IP professionals – stationed throughout Ukraine, Russia, Belarus, Georgia, Kazakhstan, Moldova and Uzbekistan – work hand in glove to ensure that clients’ crown-jewel assets enjoy impregnable protection whatever the relevant territory. The group was founded in 1992, at the dawn of the national IP system, by Valentin Mikhailyuk – the first Ukrainian patent and trademark attorney to be registered in the country, who remains CEO to this day. A trailblazer
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Taras Manolov PETOŠEVIĆ Vadim Mikhailyuk Mikhailyuk Sorokolat & Partners Kateryna Oliinyk Arzinger Law Office Iryna Ortynska IPStyle Ganna Prokhorova Mamunya IP Tatiana Shpakovich Doubinsky & Osharova Victoria Sopilnyak Doubinsky & Osharova Oleksiy Stolyarenko Baker McKenzie
who has helped to shape the Ukrainian IP regime, he handles filings, infringement and licensing briefs with equal dexterity. Heading up the patent department is fellow engineer Vadim Mikhailyuk, who has called the firm his home for more than 25 years; he provides commercially attuned assistance with patent prosecution and IP and unfair competition litigation across the CIS region.
Pakharenko & Partners
Pakharenko & Partners ranks among the crème de la crème of the national patent scene and shines particularly brightly in prosecution – although its wraparound service extends to all aspects of
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Ukraine the patent lifecycle, including wider corporate and regulatory matters. Its clientele largely hails from the life sciences: some of the world’s leading pharmaceutical companies seek out its support and plant varieties have become something of a forte. Leading the charge is law PhD Antonina Pakharenko-Anderson, who manages filing programmes with a steady hand and puts in polished performances in the courtroom. She is joined by enforcement ace Alexander Pakharenko, a worthy advocate in both administrative and judicial proceedings and a scourge of infringers.
PETOŠEVIĆ
With 120 dedicated practitioners working out of 16 offices across Eastern Europe, PETOŠEVIĆ is a regional powerhouse and its Ukrainian outpost is key to its continued success. It provides the full suite of patent services to a technically and geographically varied client base, which benefits not only from its own extensive presence, but also from a carefully cultivated network of affiliated contacts worldwide. Heading the Ukraine office and acting as manager for the entire Russian-speaking region is Dina Petošević, who provides value-additive assistance with patent prosecution and enforcement. Recent highlights include portfolio management for major players in the construction, pharmaceutical and tobacco sectors. Patent attorney Taras Manolov joined the firm in 2020, following a stint at Gorodissky & Partners as a patent expert. He has a stellar academic record in the field of biology – including time spent as a researcher at the Max Planck Institute in Berlin and at Lund University in Sweden – which he draws upon judiciously to meet the prosecution needs of a range of pharmaceutical and biotechnology companies.
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Other recommended experts
Daniel Benatov of Dr Emil Benatov & Partners is a chemical engineer with sparkling credentials: he holds a PhD in hydroelectric power plant security and has spent time as a senior lecturer at the Kiev Polytechnic Institute. A polyglot with fluency in Ukrainian, Russian, Bulgarian, English and Polish, he has provided precision prosecution services for over 15 years. At LEX INTELS, Natalya Lemeshchuk is a prolific patent filer, a poised performer in oppositions and appeals, and a tenacious advocate in litigation; she earns plaudits as “an empathetic and service-oriented professional who approaches issues creatively, considering each client’s individual needs”. The technical know-how of colleague Nataliia Gavrylenko is boundless: she has filed patent applications across myriad scientific disciplines throughout her 30-year career. Working “quickly, smoothly, constructively and productively”, she stands apart for her “commitment, independence and exceptional attention to detail”. Anton Polikarpov, IP head at the full-service Avellum, is a dual-qualified patent attorney and attorney at law with an insider’s perspective, thanks to prior roles in-house at Global Spirits and Roshen Confectionery Corporation. His thick address book of international contacts proves invaluable for global players such as US biotechnology company Tizona Therapeutics and Indian agrochemical leader Sulphur Mills. Based out of Asters, Julia Semeniy is an IP, data protection and anti-corruption specialist who is a familiar face at the country’s courts and Ukrpatent. Her contentious caseload is complemented by a thriving licensing and transactional practice.
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Bocharov, Maksym Head of Patent Practice – Gorodissky & Partners Ukraine bocharovM@gorodissky.ua | www.gorodissky.com
Maksym Bocharov is head of the patent practice at Gorodissky and Partners Ukraine and vice president of the All-Ukrainian Association of Patent Attorneys. He advises clients on modern patent strategies for the most effective protection of intellectual rights in Ukraine, the Community of Independent States and Europe. He has extensive experience in prosecution and enforcement of IP rights and represents the interests of clients before the Ukrainian Patent Office. His particular professional interest is in the field of chemistry, including production of basic organic and inorganic chemicals, industrial gases, plastics and resins, pharmaceutical preparations and medicines. Mr Bocharov graduated in organic chemistry from the National Technical University of Ukraine, Kiev Polytechnic Institute (2008), in IP law from the Institute of Intellectual Property of Odessa National Academy of Law (2010) and in law from the Academy of Advocacy of Ukraine (2020). In addition, Mr Bocharov attended professional training at Boehmert & Boehmert in Germany in 2009 and the WIPO Summer School on Intellectual Property also 2009 in Ukraine. Mr Bocharov is vice president of Ukrainian Association of Patent Attorneys. He has been recognised in the IAM Patent 1000, Best Lawyers and WIPR Leaders. He speaks Ukrainian, English and Russian. Publications and talks • “Exhibition of Young Inventors (IEYI) – a new opportunity for talented children” (Intellectual Property in Ukraine, No 10, 2020) • Ukraine chapter (The International Comparative Legal Guide: Patent Laws and Regulations 2021, Global Legal Group Ltd, September 2020) • “Complex protection of IP rights to plant varieties in Russia and Ukraine” (The Patent Lawyer by CTC Legal Media, March / April 2020) • Ukraine chapter (Patent Claim Interpretation - Global Edition 2016/2017, Thomson-Reuters, 2017) • “Patents and utility models in Ukraine” (WIPR Leaders to: Patents 2016, Newton Media Ltd, United Kingdom, 2016) • “All you need to know about functioning of Eurasian, Russian and Ukrainian Patent Offices and Judiciary Systems during Coronavirus Pandemic” (Gorodissky Webinar, Moscow, Kiev, April 2020)”
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Gorodissky & Partners Ukraine 25 V Chornovola Str Office 227 Kiev 01135 Ukraine T +380 44 501 18 71 F +380 44 279 68 96 See firm profile p986 Professional associations • Ukrainian Association of Patent Attorneys
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United Arab Emirates
As the United Arab Emirates approaches its golden jubilee this year, it has also reached the UAE Vision 2021 milestone. Launched in 2010, the Vision aims to promote domestic innovation and the transition to an entrepreneurial, knowledge-based economy. Traditionally, local practitioners have been heavily invested in inbound patent work; however, times are changing and outbound work is now more prevalent as Emirati inventors become more prolific. This has had a positive impact on filing numbers and led to sophisticated prosecution instructions for the country’s attorneys. From a legislative standpoint, the Gulf Cooperation Council (GCC) Patent Office no longer receives new filings for GCC patent applications as of 6 January 2021, following a GCC Supreme Council meeting the previous day. With the help of IAM listed practitioners, those looking to protect their rights must now file their applications directly with the respective GCC state’s patent office.
Al Tamimi & Company
A force to be reckoned with, Al Tamimi & Company dispenses technically sound, business-savvy legal advice across the patent lifecycle from 17 offices across nine jurisdictions in the Middle East and North Africa. The side has continued on its stellar growth trajectory over the past 12 months, with the dynamic Ahmad Saleh leading by example. “One of the country’s foremost IP experts and a highly skilled attorney”, Saleh not only is a trained engineer, but is also admitted to the Quebec bar and has rights of audience before the local courts, ensuring that he can provide 360-degree counsel to the private and government entities he assists. For domestic companies looking to establish a presence in Europe and China, and vice versa, Xiaodi Wang is the perfect fit; the Chinese, European and German patent attorney and tech whizz has a keen eye for worldwide filing strategies.
Cedar White Bradley
From ideation to creation and in enforcement and monetisation, Cedar White Bradley acquits itself with distinction. The regional outfit utilises everything in its IP toolkit to drive the right results for clients and does so in a straightforward, yet budgetfriendly manner that appeals to in-house counsel. Forming the A-team are David Harper, Richard Gaugeler and Tamara El-Shibib. Department head Harper draws judiciously on over a decade of local experience in managing large portfolios and devising multi-jurisdictional enforcement strategies. One of Gaugeler’s key strengths is his flair for drafting and prosecuting patents at the EPO and the USPTO; he is always looks to enhance the value of patrons’ assets in both the short and long term. “The combination of El-Shibib’s legal knowledge, business sense and understanding is impressive. She is the ideal partner for start-ups and innovators,” enthuses one happy client. The technology transfer specialist has a
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Firms Al Tamimi & Company Cedar White Bradley
See p952
Clyde & Co LLP Gowling WLG Rouse
unique background as the former IP portfolio lead at the Qatar Foundation, which she leverages superbly to get lucrative licensing deals over the line. See p952 for firm profile
Clyde & Co LLP
Globally recognised firm Clyde & Co maintains a pristine reputation in the United Arab Emirates thanks to its holistic IP practice. The group takes pride in its creative approach and intimate understanding of clients’ businesses – it recently developed its own innovation strategy and has an innovation board to assist the companies it serves with the specific challenges they face in their respective industries. Its extensive office network, both regionally and further afield, is a major boon to those with cross-border interests – for example, the Dubai, Dar es Salaam and Shanghai outposts recently collaborated to assist Kopa Technologies in the sale of its technology assets in one of the largest-ever pure private equity investment deals in the clean cooking sector. Department captain Joycia Young took the lead on this matter; the strategic counsellor and transactions lawyer has razor-sharp negotiation skills which create the IP value that companies seek.
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United Arab Emirates Individuals Highly recommended Sara Holder Rouse Jon Parker Gowling WLG Ahmad Saleh Al Tamimi & Company Recommended Rachel Armstrong Gowling WLG Rob Deans Deans IP Tamara El-Shibib Cedar White Bradley Rami Filfil Rouse Richard Gaugeler Cedar White Bradley David Harper Cedar White Bradley Paul Muscat Rouse Xiaodi Wang Al Tamimi & Company Joycia Young Clyde & Co LLP
Gowling WLG
When it comes to quality and client service, Gowling WLG exceeds expectations on all fronts; and with support from the teams in Canada, China, Russia and Singapore, it can offer perfectly tailored advice in cross-border scenarios. On the ground, the patent team is in fine fettle: the squad is as busy as ever with prosecution, while sophisticated instructions on the contentious side are pouring in too. Recent highlights include assisting a North American oil and
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gas company with its filings in Kuwait and partnering with a European vehicle manufacturer on a significant filing programme covering the United Arab Emirates and Europe. Jon Parker was instrumental to those operations. “Knowledgeable, reliable and super helpful”, Parker needs no introduction as one of the brightest, most personable advocates in the jurisdiction. Joining him in the guide this year is Rachel Armstrong, an efficient practitioner who puts clients’ commercial needs front and centre. Armstrong is quickly making her mark on the local patent scene: one notable success this year was licensing patented technology and know-how for IT related applications on behalf of a North American tech company.
Rouse
“The attention to detail and personal touch that clients receive from Rouse make the firm stand out from its competitors.” Its commitment to excellence is apparent in every brief it takes on and its internal infrastructure is designed to help realise the ambitions of corporations looking to cement their position throughout the region. “One of the top patent experts in the Middle East and an exceptional strategist”, Sara Holder takes the reins of the patent and technology division. Qualified in New Zealand and armed with a degree in biochemistry, Holder provides sage advice that is both technically brilliant and commercially on-point to several household names. For cutting-edge players across the industry spectrum, Paul Muscat has got all bases covered; he has a knack for understanding complex technologies and guides clients effortlessly through tricky practicalities. Working alongside him is Rami Filfil, who impresses with his friendly approach, strong scientific background and ability to translate technical data into a successful patent application in record time. Rami presents insightful recommendations informed by a refined understanding of international patent legislation and is adept at securing cast-iron protection on a global scale.
Other recommended experts
Having departed Clyde & Co to set up his own boutique, Deans IP, Rob Deans is a courtroom powerhouse and companies from around the world have tasted victory under his command. With a mind firmly aligned with business objectives, Clyde & Co’s Joycia Young consistently develops first-class commercialisation and monetisation strategies for companies’ crown-jewel assets..
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United Kingdom: England
Still reeling from last year’s revelation that it will not play a role in the Unified Patent Court, the United Kingdom is waiting to see what its place will be in the post-Brexit European patent landscape. Despite the setbacks caused by the covid-19 pandemic, innovation continues to thrive and the patent profession has thus remained busy on both the contentious and noncontentious fronts. Artificial intelligence (AI) continues to be a focus, with more and more questions around the patentability of computer-implemented and AI-generated inventions arising as the technology advances. As elsewhere, national lockdowns have necessitated new working mechanisms and practitioners have adapted valiantly and creatively, with online hearings running smoothly and many commentators suggesting that they may continue postpandemic. In August 2020 the Supreme Court issued its decision in the seminal Unwired Planet and Conversant cases; the ruling represented a major victory for SEP owners, although the longterm effects for SEP and FRAND-related disputes on a wider scale remain to be seen.
Alembia Intellectual Property Ltd
Cheshire-based Alembia IP devises robust patent prosecution strategies, largely – though not exclusively – for pharmaceutical companies. Lead partners Lucy Padget and Nonny Jones have invaluable first-hand experience of the innovation process from their time in-house at AstraZeneca, and since founding the firm have become trusted guides for everyone from solo inventors to corporations from the United States and China. “They have a highlevel command of the science, a deep understanding of patent law and strong commercial awareness.” Padget “is smart and pragmatic, with a good sense of the bigger picture; while Jones “is extremely knowledgeable, works quickly and efficiently, and keeps a close eye on all procedural aspects in the relevant territories”.
Allen & Overy LLP
Despite some significant personnel losses over the last two years, Allen & Overy remains on top of its game. It has been representing Huawei in its hotly debated dispute with Conversant under the watchful eyes of Mark Heaney, Neville Cordell and Mark Ridgway. “Skilled operator” Heaney is “exceptionally intelligent and knowledgeable”; while the “diligent and detail-oriented” Cordell likewise “has excellent knowledge of the law – you can count on Neville to make sure any errors are picked up on”. Ridgway is hailed as “one of the best patent litigation tacticians in London”: “If Mark were not featured in the IAM Patent 1000, his omission would be startling.” With a facility for both telecommunications and life sciences disputes, he “maintains a partner-level overview of cases while rolling up his sleeves and getting to grips with client needs”. Anchoring the life sciences side is Marjan Noor, who has been busy acting for Bayer in patent infringement and revocation proceedings relating to a veterinary injection product. Her degree
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in medical sciences and pharmacology grants her keen technical insight. On the transactional front, Jim Ford and Nigel Parker have all the answers – global life sciences co-head Ford recently advised on a commercially crucial agreement between Grünenthal and Mesoblast relating to cell therapy technology; while Parker’s highlights include assisting GlaxoSmithKline with a collaboration agreement in the cutting-edge area of mRNA vaccines.
Anderson Law LLP
When it comes to getting high-rolling, IP-rich transactions across the line, few firms do it better than Anderson Law. The last year saw it broker a range of technology transfer agreements for world-leading academic institutions, including City, University of London; and a set of R&D agreements for university spin-out Zoe Global in relation to its covid-19 symptom study app. Universities and technology-driven enterprises look to Lisa Allebone for crisp, finely drafted contracts that effectively commercialise their patents. The physics PhD has a wealth of biotechnology and pharmaceutical insight. Also covering the life sciences is managing partner and namesake Mark Anderson, who is distinguished not just for his stellar work record, but also for the award-winning course he runs annually for IP transactional lawyers at University College London. Making his debut in the IAM Patent 1000, IT specialist Paul MacLennan is a fan favourite of multinationals and leading UK universities, and “brings credibility, capability and competence to any team, spending time briefing on the various possible approaches”.
Appleyard Lees
Appleyard Lees is “a professional, reliable and highly competent firm, which leads clients to make good decisions about their patent applications. The quality of its work is of a high standard, requests are turned
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United Kingdom: England around very quickly and there is always somebody on the other end of the phone to coach you through complications”. With a network of strategically located bases in Cambridge, Manchester, Leeds, Halifax and the Biohub at Alderley Park, Cheshire, it has positioned itself at the heart of industry and innovation. Its overall share of granted EPO patents currently stands at an impressive 2.9% and it is known for the longstanding relationships it forges with its household-name clients such as Walmart. Geneticist Simon Bradbury recently provided comprehensive patent support to BenevolentAI, Europe’s largest privately owned AI company. “Simon has a solid strategic approach and his in-house experience in large companies gives him a good understanding of business requirements. He can step in at a very early stage, facilitating open discussion in order to get things done.” Also on board is Bobby Smithson, who comes with academic credentials in both chemistry and law; he heads up the firm’s medical devices practice and assists companies such as PPG Industries and Smith & Nephew. “Bobby not only demonstrates a deep understanding of the legal and procedural aspects, but also an uncanny grasp of the technology. He provides indispensable guidance at every juncture and does so in a characteristically personable and approachable manner.” See p922 for firm profile
Firms: transactions
Arnold & Porter Kaye Scholer LLP
Carpmaels & Ransford LLP
Complex transactions involving state-of-the-art technologies are meat and drink to the IP group at Arnold & Porter Kaye Scholer: as examples, in 2020 it advised both AstraZeneca and Pfizer on their covid-19 vaccines. Running point for both was Ewan Townsend, who made partner in January 2020 and is a walking encyclopaedia of pharmaceutical regulatory knowhow. “Ewan’s work is always outstanding and his commercial acumen is excellent. He is a pleasure to work with and extremely responsive.” His counterpart on the disputes side is Beatriz San Martin, another life sciences expert who has been tasked with building out the firm’s contentious IP offering. She recently acted for Sandoz in a protracted, high-profile SPC invalidity case.
Barker Brettell LLP
Established in Birmingham in 1850, the venerable Barker Brettell dispenses sophisticated prosecution counsel and patent strategy, especially within the high-technology, automotive and aerospace sectors. It has an intuitive grasp of the needs of universities and their spin-outs, and complements its domestic workload with a slew of overseas instructions, particularly from the United States. With over 30 years
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Highly recommended Allen & Overy LLP Anderson Law LLP Bird & Bird LLP Bristows LLP Covington & Burling LLP Gowling WLG Linklaters LLP Simmons & Simmons LLP Stephenson Harwood LLP Recommended Arnold & Porter Kaye Scholer LLP Browne Jacobson LLP See p950
Charles Russell Speechlys LLP Cooley LLP DLA Piper Freshfields Bruckhaus Deringer LLP Herbert Smith Freehills LLP Hogan Lovells Marks & Clerk Penningtons Manches Cooper LLP Pinsent Masons Potter Clarkson Reed Smith LLP Wiggin LLP
See p1090
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United Kingdom: England in the game, John Lawrence heads the automotive and aerospace sector groups; computer-implemented inventions and electronics briefs for major players such as HP and Ericsson are further strings to his bow. On the life sciences side, Jennifer Atkinson captains both the biotechnology group and the university sector team. The astute IP strategist and EPO representative has been busy managing portfolios for the universities of Nottingham and Oxford; helping an academic start-up which went on to secure £1.5 million in funding; and advising various universities on covid-19 technologies.
Beck Greener
Despite the trials of the pandemic, IAM Patent 1000 debutant Beck Greener enjoyed a red-letter year in 2020. An ever-growing litany of global industry leaders seek it out for smart patent portfolio management that can withstand the test of time: indeed, several of its client relationships have now passed the 40year mark. On the oppositions and appeals front, the group has enjoyed an enviable success rate of over 85% for two consecutive years and is regularly entrusted with some of the most complex issues on the market. Leading the practice is Avi Freeman, who also heads up the electronics, physics and mechanical engineering teams. He speaks the language of software clients and is a percipient adviser on unregistered designs issues. Chemistry ace Anna Hatt matches portfolio management acumen with skill in oppositions before the EPO; she is especially valued by clients from the Nordic region.
Bird & Bird LLP
While Bird & Bird’s English contingent is a vital cog in the firm’s global machine, it is also mightily impressive in its own right. With 32 of its lawyers boasting scientific qualifications, the group can easily parse the most technically challenging matters. It “has a great understanding of client needs and expectations, and the ability to communicate simply and effectively”; and it “provides prompt support even when under time constraints”. Co-heading the IP group are Katharine Stephens and Robert Williams. Stephens has a flair for cross-border litigation and the development of pan-European patent enforcement programmes, and increasingly applies her robotics knowledge to advise on electronics and AI issues. Williams is an adroit handler of multi-jurisdictional disputes whose managerial prowess has led to his involvement in the creation of project management tools. Meanwhile, Jennifer Jones, Neil Jenkins, Mark Hilton and Eleanor Root have the life sciences on lock. Qualified in molecular biology and genetics,
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Jones knows all the right plays when it comes to global patent litigation strategy; while consummate cross-border litigator Jenkins is an expert in regulatory data exclusivity and SPC issues. Hilton coheads the international life sciences and healthcare group, comprised of over 130 Bird & Bird lawyers across the globe; and IAM Patent 1000 newcomer Root brings valuable insight from recent secondments at two pharmaceutical multinationals. Patrick Kelleher is a vital ally for Israeli biotechnology start-ups that find themselves embroiled in European patent litigation; while Morag Macdonald is “not only a very seasoned litigator, but also exceptionally strong at developing and executing international litigation strategies”. She recently acted for AB InBev in a commercially crucial High Court patent revocation case against Heineken in relation to polymer packaging technology. On the telecommunications side, the group is equipped with Richard Vary and Jane Mutimear. Vairy was previously vice president and litigation head at Nokia, and recently represented the telecommunications giant in mediation against Daimler and in litigation against IPCom. “Few people have Richard’s level of knowledge of the most pressing issues. He has worked on many of the major cases in Germany, the Netherlands, Italy and the UK, as well as the US and China, so he understands how the major jurisdictions fit together and how to coordinate litigation around the world.” Mutimear litigates across the IP spectrum and also assisted in the development of Pattern, Bird & Bird’s patent portfolio intelligence product. Transactional nous is supplied in abundance by Sally Shorthose and Tom Snaith. Shorthose is a life sciences specialist whose licensing advice is informed by her time as legal director of Novartis UK; while Snaith has a technical background in chemistry and guides private equity firms and major corporations through IP-heavy M&A deals, spin-outs, restructurings and joint ventures. “Tom is responsive, pragmatic, commercially minded and highly regarded by his in-house colleagues.”
Boult Wade Tennant LLP
Boult Wade Tennant is one of the country’s foremost prosecution shops, having filed more than 2,000 patent applications and attended some 100-plus EPO hearings in 2019. With 66 patent practitioners on deck, 27 of whom hold PhDs, it has the technical dexterity to handle instructions across all industries: in the past year alone, it assisted contract development and manufacturing organisation the Almac Group with global patent strategy; dispensed strategic advice to Caterpillar Inc; and appeared in oppositions on behalf of medical technology
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United Kingdom: England Firms: litigation
Taylor Wessing
Allen & Overy LLP
Wilmer Cutler Pickering Hale and Dorr LLP
Bird & Bird LLP
Browne Jacobson LLP
Bristows LLP
Charles Russell Speechlys LLP
Hogan Lovells
CMS Cameron McKenna Nabarro Olswang LLP
Powell Gilbert LLP
See p1048
Carpmaels & Ransford LLP
See p950
EIP
See p978
Freshfields Bruckhaus Deringer LLP
DLA Piper Haseltine Lake Kempner LLP
Mishcon de Reya LLP
Herbert Smith Freehills LLP
Potter Clarkson
Kirkland & Ellis LLP
Reed Smith LLP
Marks & Clerk See p1036
Pinsent Masons Simmons & Simmons LLP and healthcare giant Abbott. Oliver Rutt, Edward Ronan, Simon Kahn, Daryl Penny, Tessa Bucks, and James Short are among those making their debuts in the IAM Patent 1000 this year. Rutt is “client focused and conscientious, but also has a strong grasp of technology”. “His understanding of assembly materials, alloys and sintering powders sets him apart from his peers. He works with a sense of urgency, is very prompt when it comes to deadlines and is extremely meticulous.” Vaccinology PhD Ronan likewise earns warm plaudits: “His work is thorough, strategic and timely, and he works closely with clients in assessing different strategic approaches and offering valuable suggestions.” Another PhD, this time in electrical and electronic engineering, Kahn “has strong, adaptable technical skills in drafting, is highly knowledgeable on the law and provides solid strategic thinking on prosecution”. Working alongside him in the high-technology and electrical group, Penny is an experienced physicist who “displays the highest calibre of professionalism – he handles
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Dentons
Linklaters LLP
Gowling WLG
Osborne Clarke
See p956
Stephenson Harwood LLP Venner Shipley LLP Wiggin LLP
See p1090
matters with the utmost care and competence, and performs technically complex work in a timely way”. Bucks heads the engineering and designs group and provides “outstanding patent drafting, EPO representation and advisory services”: “She has a deep understanding of the patent technology and presents ideas and arguments in a clear, coherent manner.” Computer science PhD Short on the other hand is “always attentive and explains all routes of action in great detail”: “Responsive, prompt and hospitable, he provides proactive feedback, allowing rights holders to further refine their approach and extract added value from their patents.” The above practitioners join a cadre of Boult Wade Tennant attorneys who make their return to the rankings for 2021. On the biotechnology and life sciences side, Nina White and Matthew Spencer are the names to note. White has a doctorate in molecular biology and focuses on therapeutic antibodies. Heading up the Cambridge biotechnology and life sciences group, Spencer is “extremely quick and thorough in familiarising himself with the patents in question
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United Kingdom: England and the prior prosecution details”: “His strategy, technical competence, diligence and eye for detail are exemplary.” At the helm of the high-technology and electrical group is chartered physicist Nick McLeish, who covers all angles both when acting before the EPO and when supporting in litigation: “Even in the most difficult situations he finds a solution, thanks to his creativity and technological understanding.” He is joined on the electronics side by physics PhD Jonathan Palmer, whose analysis of research programmes and advice on patentability are unerringly on point. Chemical and materials group head Adrian Hayes is a tireless advocate in oppositions and appeals, appearing in more than 20 in an average year. Working alongside him is materials science PhD Rohan Setna, who also knocks it out of the park in contentious scenarios: he recently prevailed for Koninklijke Dowe Egberts in a coffee-machine-related opposition against Nestlé. IP all-rounder Tony Pluckrose dives into the nittygritty of medical device, aerospace and oil industry engineering patents, while maintaining an equally successful trademark practice. See p938 for firm profile
Bristows LLP
Bristows has made UK patent litigation its own: as of September 2020, it featured in some 26 of the 91 pending cases at the Patents Court. It consistently hammers out the right results in fraught disputes in virtually every industry, which often involve parallel proceedings across Europe and the United States. Highlights in the past 12 months include a headlinegrabbing FRAND suit for ZTE and global patent litigation over beer dispensing systems for Heineken. Involved in both is patent litigation co-head and “strategic guru” Andrew Bowler, an “experienced patent litigator who makes life difficult for the other side”: “He is outstanding at picking up on the decisive issues and presenting sharp solutions.” Leading the group alongside Bowler is Myles Jelf, who has also been busy on the ZTE piece, as well as with another crucial FRAND case on behalf of IPCom against companies including Lenovo, HTC, Xiaomi and Vodafone. Working alongside him on the latter mandate is electronics and mechanics litigator Richard Pinckney: “He is sharp, focused and has a real feel for how best to direct a case, achieving excellent results in difficult and demanding time constraints.” Also technically proficient is solicitor-advocate James Boon, who holds a PhD in optoelectronics and handles disputes in fields from 3G to oil and gas. Together with Pinckney, he recently tackled a set of FRAND and SEP-related actions on
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behalf of Philips. On the life sciences front, the group has dispatched multiple briefs for Novartis in recent months, including a paediatric extension dispute led by Brian Cordery and a patent revocation action led by Gemma Barrett. A favourite of pharmaceutical innovators, Cordery is described by overseas colleagues as “definitely one of the guiding lights of the English patent litigation space”. Barrett – who has an academic background in molecular and cellular biochemistry – “takes a pragmatic and highly effective strategic approach, keeps on top of the science and is a strong team manager”. Further contentious firepower in the life sciences comes from of Dominic Adair, Gregory Bacon, Robert Burrows and Liz Cohen. With a technical background in biology, Adair is “responsive, highly motivated and invests significant time and effort in order to understand the technology”. Bacon is a “great patent litigator who is confident with the technical side of a case, but also has a good tactical legal brain”. “Particularly adept at the science”, Burrows has additionally “mastered the strategic aspects of UK and multi-jurisdictional patent disputes”. Cohen also has a technical background and has been assisting Italian pharmaceutical originator Chiesi Farmaceutici with its patent enforcement strategy: “Once a client works with Liz, they don’t tend to go anywhere else. She has a clear strategic overview of a case, steers litigation in a direction consistent with commercial objectives, and strikes exactly the right balance between pragmatism and aggression.” After a 35-year career during which he appeared in more than 100 patent cases, senior statesman Edward Nodder now manages the group’s relationships with Japanese clients and contacts. The patent transactions team includes Matthew Warren, Claire Smith and Richard Dickinson. Commercial IP head and physicist Warren is great at getting deals involving new technologies inked in all industries. The life sciences is a forte for Smith: “Claire understands the practicalities and legalities of licence, M&A and collaboration agreements, picks up on international issues quickly and is a pragmatic counsellor.” With an academic background in biochemistry, Dickinson understands both the technical and legal sides of the deals he shepherds to close.
Browne Jacobson LLP
A “dynamic firm with a young, talented team” Browne Jacobson is “already disrupting the wellestablished IP litigation firms in the UK”. Providing cost-effective, commercially savvy counsel across all areas of corporate law, the firm has been steadily enhancing its patent profile through a fine showing in high-stakes disputes. Mark Daniels has made his
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United Kingdom: England Firms: prosecution
Keltie LLP
See p1012 See p1024
Boult Wade Tennant LLP
See p938
Mathys & Squire LLP
Carpmaels & Ransford LLP
See p950
Venner Shipley LLP
D Young & Co LLP
See p964
Withers & Rogers LLP
See p1094
J A Kemp
Alembia Intellectual Property Ltd
Kilburn & Strode LLP
Barker Brettell LLP
Mewburn Ellis LLP
Beck Greener
Potter Clarkson
Cleveland Scott York
Appleyard Lees
See p922
CMS Cameron McKenna Nabarro Olswang LLP
See p956
Dehns EIP
See p978
Gill Jennings & Every LLP
See p994
team a “formidable IP litigation force”: “He handles complicated matters effortlessly, has a practical and diligent approach, and coordinates resources effectively.” Litigation is also the metier of Giles Parsons, who has “a great intellect and knowledge of case law, as well as the ability to grapple with the most complex matters, rapidly absorbing the information and providing clients with a reasoned way forward”. “There is no technology he cannot understand and advise on.” Transactions are deftly sewn up by Selina Hinchliffe, who comes highly recommended by her university clients and has also carved a niche in the utilities and energy sectors.
Carpmaels & Ransford LLP
With an A-to-Z patent offering, Carpmaels is the full package for market-leading innovators. Close collaboration between its patent attorneys, solicitors and barristers is a hallmark – and one which leads to satisfyingly well-rounded representation. The firm’s EPO oppositions practice is worthy of special mention as one of the best around. Credit in this regard is
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Lewis Silkin Reddie & Grose LLP Schlich Ltd Secerna LLP
See p1064
Simmons & Simmons LLP
Haseltine Lake Kempner LLP HGF Ltd
Forresters
Slingsby Partners LLP UDL Intellectual Property due to many, including Hugh Goodfellow, James Warner, Cameron Marshall, Edward Oates and Harvey Adams and Daniel Wise who – together with Mark Chapman – form the backbone of a world-class life sciences practice. Goodfellow gives “clear and precise advice” and has a “talent for resolving matters without recourse to expensive litigation”. Warner provides strong leadership to the pharmaceutical team and to clients such as Johnson & Johnson, whose Zytiga prostate cancer treatment he has protected in Europe for the past decade. Hailed for his forward-thinking approach, Marshall has been putting in a sterling performance for Jazz Pharmaceuticals of late; while Oates is a foremost authority on SPC law. A fierce advocate whose strategies are perfectly suited to complex litigation with parallel proceedings, Adams was recently instructed by Biogen to represent it in the neuroscience field. Wise on the other hand is a protein therapeutics, vaccine technology, and medicinal chemistry ace who has recently been called upon by LEO Pharma to act in a range of oppositions
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United Kingdom: England and draft complex filing strategies in relation to its “Picato” product. The ensemble’s top pure-play biotechnology expert, Chapman recently linked up with transactions ace Jake Marshall to help Harbour BioMed execute a patent and know-how licensing agreement with Abbvie to commercialise an antibody for the treatment of covid-19 – a great example of the inter-practice cooperation that is so essential to the firm’s success. Marshall “communicates with crystal clarity and focuses on the key issues. His work is extremely thorough”. Portfolio curator Paul Bettridge steps in when companies need to protect innovations in crossover areas such as electrochemical molecular diagnostics and bioelectronics; while Christopher Tunstall’s 30 years at the patent coalface inform his strategic management of vast portfolios for the likes of Johnson & Johnson. Chemist Susan Kirsch maintains a busy and diverse EPO oppositions practice and recently appeared in several proceedings on behalf of Ethicon in relation to its portfolio of medical device patents; while John Brunner focuses on IT and telecommunications, and recently took on the guardianship of Barclays Bank’s burgeoning fintech portfolio. On the litigation side, Ian Kirby has been racking up the wins for over 25 years and stands out for his inspiring team management and big-picture thinking both in and out of the courtroom. The similarly experienced David Wilson knows both the life sciences and telecommunications fields like the back of his hand; his practice is further enhanced by an academic and industrial background in chemistry. Also litigating within the life sciences realm are Camilla Balleny and Jennifer Antcliff: Balleny has been leading on the UK component of a pan-European patent dispute on behalf of Ceva Santé Animal Health; while molecular biology PhD Antcliff is a newcomer to both the IAM Patent 1000 and the Carpmaels partnership, with valuable in-house insight from a stint at Allergan. See p950 for firm profile
Charles Russell Speechlys LLP
The flourishing IP group at full-service commercial firm Charles Russell Speechlys continues to make an impression, thanks to the results it secures in big-ticket litigation and transactional negotiations. It cultivates longstanding relationships with clients – which move in fields from pharmaceuticals to engineering and construction – and gets to know every aspect of their business, which translates into bespoke, commercially optimised solutions. Dealmaker par excellence Caroline Young recently advised on the sale of Veriton to European entity SERB Speciality Pharmaceuticals.
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Cleveland Scott York
Whether prosecuting UK and European patent applications for its legion of direct clients or advising on infringement and validity issues, the team at Cleveland Scott York has both the technical and legal chops to get the job done quickly and to the highest standard. While widely capable, it has a real affinity for the needs of the technology transfer arms of academic institutions. Having previously worked in-house at Pfizer, pharmaceuticals don Adrian Bradley “operates in a highly collaborative manner and has good insight into the value of the technology he is handling”; he is “a valued adviser not only in the UK, but also in challenging jurisdictions overseas”. Also receiving high praise is materials science and engineering maven Fraser Brown: “Fraser is incredibly knowledgeable in his field, which instils great confidence in clients, and has an affable, thoughtful manner. He is highly responsive, can unpick knotty issues and advises with a real-world commercial view.” “Outstanding” patent attorney Tom Faulkner is “always responsive and attentive”, attests one client of 10 years’ standing. On the automotive side, Andrew Mackenzie communicates almost telepathically with R&D teams as a former design engineer for Jaguar Cars; he recently helped Federal-Mogul Powertrain to protect its cleantech systems for hybrid and battery vehicles.
CMS Cameron McKenna Nabarro Olswang LLP
Since its head-turning merger in 2017, CMS has gone from strength to strength on both sides of the contentious/non-contentious divide. The calibre of its clientele bears this out: for example, Microsoft has enlisted it for a significant volume of its original drafting work; while Microsoft-owned LinkedIn also looks to it for smart portfolio management. Taking care of both instructions are Helen Wallis and Rachel Free. Wallis is a computer hardware and software and telecommunications specialist who is “responsive, generous with her time and good at communicating with US counsel”; while AI sage Free is “efficient and precise in pinpointing issues at the heart of complex IP matters”. In the life sciences, the group has appeared in a series of EPO oppositions for Kymab under the hawkish eyes of Robert Stephen and Jane Hollywood. Leading the patent attorney group, molecular genetics PhD Stephen provides prescient counsel relating to vaccines, antibodies and antibody protection, and SPCs. Also holding a PhD – this time in plant sciences – Hollywood “has a huge amount of technical expertise. She always explains everything extremely thoroughly and gives a good overview
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United Kingdom: England of all the key factors”. Fellow life sciences ace Jane Evenson “comes up to speed quickly and thoroughly on the technology, and can always be counted on to be prepared and offer insightful, commercially relevant guidance”. On the contentious front, the firm recently secured a remarkable damages award in the tens of millions for Sandoz in litigation against Napp Pharmaceutical Holdings. The win was orchestrated by patent litigation head Gareth Morgan, together with Sarah Innes and Caitlin Heard. Morgan – who is as comfortable in the courtroom as at the deal table – is intimately familiar with the healthcare sector, with a fine-grained appreciation of SPC issues and pharmaceutical regulatory law. Innes previously worked in-house at a major pharmaceutical company and has a “great understanding of the generics market”; while Heard splits her time across the pharmaceutical and high-technology sectors, and acted in one of the first SEP and FRAND disputes ever heard in the English courts. See p956 for firm profile
Cooley LLP
Intellectual property is a central plank at full-service US outfit Cooley, whose 110 patent professionals work hand in glove with colleagues in other departments to provide a reassuringly holistic service. While disputes are not beyond its remit, the London team garners particular acclaim on the transactional side – not least thanks to the efforts of life sciences specialists John Wilkinson and Nicola Maguire. Wilkinson’s knowledge of IP, regulatory and antitrust law knows no bounds – “he finds imaginative solutions and has a deep understanding of the science”; while Maguire makes light work of IP-heavy deals with international components. The main draw for prosecution instructions is Colm Murphy, who has spent more than two decades crafting futureproofed IP portfolio strategies and acting in EPO oppositions and appeals for major biochemical, pharmaceutical and medical device companies.
Covington & Burling LLP
Covington & Burling is home to an elite transactional patent offering: competitors note that it “jumps out of the list as one of the best in the market”. Making their mark are Lucinda Osborne, Daniel Pavin and Morag Peberdy, all of whom have life sciences acumen in spades. Osborne is a smooth broker of technology transactions and collaboration agreements within a cross-border context. Pavin focuses on digital innovation in the life sciences space, having previously worked in industry as a computer programmer. Meanwhile, ambidextrous
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Luminaries Gregor Grant Marks & Clerk Kevin Mooney Simmons & Simmons LLP Edward J Nodder Bristows LLP
solicitor-advocate Perbedy draws on her background as a biologist to cover all bases on both the noncontentious and contentious sides.
D Young & Co LLP
D-Young & Co’s 50-strong team of patent attorneys and solicitors meets and exceeds the needs of a slew of household-name clients: Boehringer Ingelheim Animal Health USA and Sony have lately looked to it for filing strategies; while Teva Pharmaceuticals and Nestlé are among those it is representing in EPO oppositions. Leading on the Boehringer Ingelheim matter are Garreth Duncan and Zöe Clyde-Watson. Duncan has broad horizons, having previously worked in Pfizer’s European and US patent departments, and a knack for obtaining SPCs. Organic chemistry PhD Clyde-Watson “provides reliable advice and strategy, is very knowledgeable on EPO patent law and practice, and produces work product of a quality rarely seen”. Other pharmaceutical mavens at the firm include Tamara Milton, Charles Harding and Neil Nachshen. The “proactive” Milton has “in-depth knowledge of worldwide patent prosecution, which she communicates effectively”; while oppositions ace Harding “is always on top of developments and his ideas for patent strategy are always creative”. “Excellent EPO advocate” Nachshen is assisting Teva and has also supported a host of pharmaceutical companies both in private practice and in-house during his 20-year career. Likewise acclaimed in the life sciences is Simon O’Brien, who blends “comprehensive knowledge of scientific matters” with “the ability to mesh patent prosecution strategy with technological developments”. His technical specialism in pharmaceutical chemistry is shared by Kit Wong, who holds a PhD in the subject: “Kit provides highly timely support, with deep technical insight and a clever eye for the nuances of European patent prosecution. She is among the best of the best.” Also with a PhD – this time in organic chemistry – is patent attorney litigator and EPO oppositions sharpshooter Kirk Gallagher, a skilled coordinator of contentious
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United Kingdom: England Individuals: prosecution Highly recommended Harvey Adams Carpmaels & Ransford LLP Richard Bassett Potter Clarkson Kristina Cornish Kilburn & Strode LLP Devanand Crease Keltie LLP Peter Finnie Potter Clarkson Hugh Goodfellow Carpmaels & Ransford LLP Richard Howson Kilburn & Strode LLP Ilya Kazi IK-IP
proceedings across Europe and the United States. Fellow patent attorney litigator Anthony Albutt heads up the mechanical group and is handling the set of Nestlé oppositions. Playing point for Sony is “solid and reliable” electronics expert Jonathan Jackson, who previously worked in the multinational’s IP department. With a background in electronics and a PhD in high-energy physics, Nicholas Malden is a valued adviser to companies across Europe, the United States and the Far East in fields such as processor design and computer-implemented technologies. See p946 for firm profile
Dehns
Dehns is a potent player in the European patent prosecution space: “It handles all technologies, is particularly good in EPO oppositions and demonstrates timeliness, responsiveness and value for money.” The storied group has been a fixture on the scene for over a century and now has eight offices across the United Kingdom , Germany, and Norway; its counsel comes underpinned with advanced technical know-how, as 30% of the team hold PhDs. Physicists and patent attorney litigators Christopher Davies and Robert Jackson are the stars of the engineering
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Alexander Korenberg Kilburn & Strode LLP Fiona Law Potter Clarkson Cameron Marshall Carpmaels & Ransford LLP Nick McLeish Boult Wade Tennant LLP Jim Miller Kilburn & Strode LLP Gwilym Roberts Kilburn & Strode LLP Rohan P Setna Boult Wade Tennant LLP Bobby Smithson Appleyard Lees
See p903
Jerome Spaargaren EIP
group. Davies has been with the firm for more than 40 years and has a level of experience in EPO oppositions that few can match. Jackson heads up the litigation practice, while also undertaking original drafting for a diverse range of clients across the United Kingdom, the United States and Scandinavia. Life sciences concerns have molecular biologist Philip Webber on speed dial: he plays a crucial role in shaping the IP strategies of pharmaceutical and biotechnology startups, SMEs and university spin-outs. In recent years, CRISPR-based inventions and recombinant vaccines have become an increasing focus of his practice.
Dentons
With 850 dedicated professionals on deck, full-service Dentons has all aspects of IP law down cold and the UK contingent reflects this in microcosm: a cradleto-grave patent service ensures that it can tackle almost any mandate thrown its way. Captaining the European patent prosecution and opposition practice is Justin Hill, who has recently been busy managing Raytheon’s patent portfolio; devising filing strategy for new client Tesla; and appearing in oppositions and appeals for medical devices leader Dexcom. Clients value “his strategic and commercial opinions in the patent process, as well as his technical strength”.
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United Kingdom: England Ravi Srinivasan J A Kemp
Karl Barnfather Withers & Rogers LLP
Simon Wright J A Kemp
Nick Bassil Kilburn & Strode LLP
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Paul Bettridge Carpmaels & Ransford LLP
Graham Ablett Lewis Silkin LLP Shakeel Ahmad Keltie LLP Anthony Albutt D Young & Co LLP Christopher Aldridge Mohun Intellectual Property Ltd Andrew Alton UDL Intellectual Property Peter Arrowsmith Gill Jennings & Every LLP Jennifer Atkinson Barker Brettell LLP
Running the show on the contentious front is global IP co-head and deputy district judge Campbell Forsyth, who has lately gone out to bat for Czech generic drug manufacturer Zentiva in an SPC-related dispute against Gilead; and for world-leading fintech company Eckoh plc in a battle against Syntec.
DLA Piper
High-stakes litigation and high-rolling transactions are all in a day’s work for the energetic patent practitioners at DLA Piper. As part of a phalanx of 130-plus patent litigators worldwide, its courtroom dynamos shine in the cut and thrust of complex crossborder disputes. The firm scored a coup in 2019 by bringing Deborah Bould on board: “Deborah listens to and cares about what her clients want to achieve, and is great at networking with the right people from across (or even outside of) her firm.” Combining “a great eye for detail with admirable brevity and practicality”, she puts in winning performances in SEP actions, especially within the Internet of Things field. Holding things down in the life sciences is Richard Taylor, who has defended myriad pharmaceutical giants to the hilt during his 20-year career.
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Jason Boakes Secerna LLP
See p887
See p888
Juliette Boynton Schlich Ltd Simon Bradbury Appleyard Lees
See p889
Adrian Bradley Cleveland Scott York Paul Brady Abel & Imray Alex Brown Venner Shipley LLP Fraser Brown Cleveland Scott York
EIP
Traditionally a go-to for precision prosecution, EIP is increasingly making incursions in the contentious space – and the landmark victory it recently secured in the Unwired Planet/Conversant litigation will only serve to further elevate its standing on the market. The architect of this win was litigation head and “huge name” Gary Moss – a “terrific litigator” and “leading light who really knows his stuff”. Working alongside him on the brief was Andrew Sharples, a dual-qualified solicitor and European patent attorney whose FRAND expertise is matched by prowess in the life sciences: he heads the group dedicated to this discipline. The firm is also acting for Conversant in complex litigation against Apple, spearheaded by solicitor-advocate Robert Lundie Smith. With a PhD in chemistry/chemical physics, he is ideally qualified to handle technically challenging cases. Also making their mark on the solicitors’ side are Kathleen Fox Murphy, who has a complete command of issues as varied as SPCs and FRAND licensing; and Matthew Jones, an equally dexterous practitioner with unparalleled pharmaceutical insight
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United Kingdom: England Laurence Brown EIP
Kevin Cordina Simmons & Simmons LLP
Craig Brownlie Potter Clarkson
Paul D Cozens Mathys & Squire LLP
John Brunner Carpmaels & Ransford LLP
Elizabeth Crooks Kilburn & Strode LLP
Tessa Bucks Boult Wade Tennant LLP
Charlotte Crowhurst Potter Clarkson
Judith Caldwell Keltie LLP
Philip Cupitt Marks & Clerk
Patrick Campbell J A Kemp
Christopher Davies Dehns
Matthew Cassie HGF Ltd
Ian Dee Potter Clarkson
Mark Chapman Carpmaels & Ransford LLP
Christopher Denison Mewburn Ellis LLP
Ray Charig Potter Clarkson
Paul Derry Venner Shipley LLP
Hsu Min Chung HGF Ltd
Garreth Duncan D Young & Co LLP
Jane Clark Mathys & Squire LLP
See p891
See p892
Allie Elend Venner Shipley LLP
Arnie Clarke Gill Jennings & Every LLP
Jane Evenson CMS Cameron McKenna Nabarro Olswang LLP
Zöe Clyde-Watson D Young & Co LLP
Tom Faulkner Cleveland Scott York
from a biotechnology PhD and a stint as senior counsel at Teva. Meanwhile, the firm maintains its burnished reputation for prosecution: “EIP gets the details right and interacts efficiently with inventors, forming a collaborative working team with them to consider, build or reject ideas. It presents patent law and its implications clearly, helping clients to make well-informed commercial and strategic decisions.” Heading up the digital practice group is founder Jerome Spaargaren, a shrewd coordinator of global patent prosecution and enforcement programmes in fields as diverse as machine learning, data processing, cloud computing and unmanned vehicles. Other electronics and software mavens include Matt
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IAM Patent 1000
Lawman, Laurence Brown and Heather McCann. Roles in-house at BT and Hewlett-Packard have given Lawman a bird’s-eye view of the innovation process; while Brown is an adroit portfolio curator whose illustrious clientele includes the likes of Sony, Sonos Inc and Morphy Richards. McCann previously served time at a major telecommunications group and has lately been filing a stack of patent applications on behalf of VISA. In the life sciences, synthetic organic chemistry experts Gareth Probert and Darren Smyth are the names to note. Probert has appeared in more than 250 opposition and appeal proceedings, and has prevailed against the odds in many; while Smyth likewise has a pristine contentious track record and is
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United Kingdom: England James Ford Abel & Imray
Peter Hale Haley Guiliano LLP
Campbell Forsyth Dentons
Christopher Hamer Mathys & Squire LLP
Sullivan Fountain Keltie LLP
David Hammond Haseltine Lake Kempner LLP
Karen Fraser UDL Intellectual Property
Charles T Harding D Young & Co LLP
Rachel Free CMS Cameron McKenna Nabarro Olswang LLP
Jennifer Harris Kilburn & Strode LLP
Avi Freeman Beck Greener
Anna Hatt Beck Greener
Kirk Gallagher D Young & Co LLP
Adrian Hayes Boult Wade Tennant LLP
Tom Gaunt Lewis Silkin
Justin Hill Dentons
Siân Gill Venner Shipley LLP
Jane Hollywood CMS Cameron McKenna Nabarro Olswang LLP
Stephen Gill Mewburn Ellis LLP
Joanne Hopley Keltie LLP
Jonathan Goodacre Keltie LLP
Harry Hutchinson HGF Ltd
Jonathan Gowshall Forresters
Claire Irvine HGF Ltd
Emma Graham Mewburn Ellis LLP
Jonathan Jackson D Young & Co LLP
Anna Gregson Mathys & Squire LLP
See p893
“intelligent, detail oriented and articulate, while also being affable and an absolute pleasure to work with”. See p978 for firm profile
Forresters
The venerable Forresters has provided a premier prep and pros service since 1884 and today maintains laser-focused on growth, as reflected in the arrival of new partners and the establishment of new UK branch offices in recent years. A thriving Munich outpost, manned by Matt Barton, ensures that it can
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See p894
See p896
Robert Jackson Dehns
offer a truly European service, advising companies from across the continent on filing strategy as well as niche issues such as SPCs and plant variety rights. The group’s technically savvy attorneys have long walked the halls of the EPO and make frequent appearances before its Opposition Division and Boards of Appeal. One especially esteemed EPO representative is Jonathan Gowshall, a “pragmatic advocate who achieves remarkable successes for clients”.
IAM Patent 1000
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United Kingdom: England John Jappy Gill Jennings & Every LLP
Simon Kremer Mewburn Ellis LLP
Lucy Johnson HGF Ltd
Matt Lawman EIP
Stephen Johnson Venner Shipley LLP
John Lawrence Barker Brettell LLP
Nonny Jones Alembia Intellectual Property Ltd
Richard Lawrence Keltie LLP
Simon Kahn Boult Wade Tennant LLP
Nick Lee Kilburn & Strode LLP
Richard E Kennedy Venner Shipley LLP
John Leeming J A Kemp
Saiful Khan Potter Clarkson
Joseph Lenthall Haseltine Lake Kempner LLP
Simon Kiddle Mewburn Ellis LLP
Tom Leonard Kilburn & Strode LLP
David King Slingsby Partners LLP
Robert Lind Marks & Clerk
Susan E Kirsch Carpmaels & Ransford LLP
Paul Loustalan Reddie & Grose LLP
Dani Kramer Mathys & Squire LLP
See p898
Freshfields Bruckhaus Deringer LLP
Since bringing on board former Arnold & Porter partner Christopher Stothers two years ago, the patent group at Freshfields has seen its profile skyrocket. Litigations and transactions are its bread and butter, particularly in the high-technology and life sciences industries. Stothers is a consummate tactician in cross-border patent disputes and EPO oppositions, and teaches on IP and competition law at University College London. Colleague Laura Whiting made the move with him from Arnold & Porter. A qualified solicitor-advocate with a background in chemistry, she relishes the complexities of technically dense patent and SPC suits; she also has a facility for disputes at the intersection between IP and competition law, especially those with a FRAND angle. “Laura is a top-quality solicitor with excellent advocacy skills, technical understanding, drive and passion for her work.” Anchoring the transactional end are David Brooks and Giles Pratt – IP commercialisation maven Brooks is well-placed
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IAM Patent 1000
Alan MacDougall Mathys & Squire LLP
See p900
to tackle complex M&A briefs and has experience working in London, New York and Singapore, while Pratt heads up the transactions group and is one of the brains behind the firm’s cutting-edge Freshfields Digital platform.
Gill Jennings & Every LLP
One of the pre-eminent prosecution outfits not just the United Kingdom, but in Europe, Gill Jennings & Every has featured in over 1,100 EPO oppositions since it was established. “It perfectly combines the technical and legal sides. All its people are easy and pleasant to work with – they quickly grasp the subtleties of new inventions and they come with a huge network of worldwide associates.” Its client roster includes De La Rue, for which Heather Scott and Robert Skone James have both been acting in a set of oppositions over the last 12 months relating to the transparent windows on polymer banknotes. Physicist and engineer Scott “understands the unique requirements
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United Kingdom: England Andrew Mackenzie Cleveland Scott York Martin MacLean Mathys & Squire LLP
Michael Moore Keltie LLP
See p901
Colm Murphy Cooley LLP
Nicholas Malden D Young & Co LLP
Neil Nachshen D Young & Co LLP
Caroline Marshall Potter Clarkson
Frederick Nicolle Simmons & Simmons LLP
Philip Martin Marks & Clerk
Will Nieuwenhuys Marks & Clerk
Heather McCann EIP
Edward Oates Carpmaels & Ransford LLP
Stephen McNeeney Potter Clarkson
Simon O’Brien D Young & Co LLP
Tamara Milton D Young & Co LLP
Rachel Oxley Mewburn Ellis LLP
Simon Mitchell UDL Intellectual Property
Lucy Padget Alembia Intellectual Property Ltd
Chris Moore HGF Ltd
Jonathan Palmer Boult Wade Tennant LLP
Graeme Moore Mewburn Ellis LLP
Simon Parry Mewburn Ellis LLP
of clients’ businesses, presents arguments clearly and concisely, and is always prepared for any scenario”. Skone James’s career recently reached the 42-year mark and he serves as the incumbent chair of the firm: “He provides superb technical insight, advice and support at every stage of the process.” Filing and defending the patents of insulation manufacturer Rockwool – a client of the firm for more than half a century – is Lucy Samuels, who has appeared in a staggering 580 opposition and appeal hearings during her 27-year career; her deep chemical engineering knowledge and fine-tuned commercial sense make for a winning combination. The sprawling patent portfolio of software giant Oracle is safe hands with Peter Arrowsmith, a computer-implemented inventions expert who also understands who best to nurture start-ups. Tending to the needs of Mylan is chemist Arnie Clarke, who has also handled countless highprofile briefs for the likes of Procter & Gamble, , Teva and AstraZeneca. Pharmaceutical players are also ably
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catered to by John Jappy, a “deep thinker and analytic problem solver with a strong grasp of IP strategy and a commitment to getting things done”. “He is sensitive to the problems encountered by emerging companies, and his approachable and friendly demeanour makes for a productive working rapport.”
Gowling WLG
The UK contingent of global force Gowling WLG continues to forge ahead on both sides of the contentious/non-contentious divide, with competitors singling out its “strong and remarkably businessfriendly team”. Many precedent-setting decisions across the industry spectrum bear its fingerprints, particularly in relation to FRAND licensing. Alexandra Brodie is “an impressive and efficient professional and a worthy courtroom opponent who is doing a lot of strong work, especially in the FRAND space”. Similarly active in this sphere is Huw Evans, who joined the firm two years ago together with the commercially minded,
IAM Patent 1000
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United Kingdom: England Daryl Penny Boult Wade Tennant LLP
Nick Reeve Reddie & Grose LLP
Stephanie Pilkington Potter Clarkson
Mark Roberts J A Kemp
Pawel Piotrowicz Venner Shipley LLP
Michael Roberts Reddie & Grose LLP
Tony Pluckrose Boult Wade Tennant LLP
Paul Roberts Slingsby Partners LLP
William Ponder Reddie & Grose LLP
Alex Rogers Haseltine Lake Kempner LLP
Nigel Price J A Kemp
Edward Ronan Boult Wade Tennant LLP
Gareth Probert EIP
Sarah Roques J A Kemp
Thomas Prock Marks & Clerk
Tim Russell Venner Shipley LLP
Rob Pugh Potter Clarkson
Oliver Rutt Boult Wade Tennant LLP
Simon Rees Haseltine Lake Kempner LLP
Lucy Samuels Gill Jennings & Every LLP
no-nonsense Jonathan Ball; the versatile pair have the high-technology and life sciences sectors locked down. Collaborative and pragmatic, Evans has built up a thick address book of international contacts; while forensic biochemist Ball is cultivating a growing fintech specialism. Another technical renaissance man is Jamie Rowlands; he previously headed the firm’s China office and today puts in polished performances in cross-border disputes for players from as far afield as the United States, Japan and Africa. Molecular biologist Paul Inman also has an international outlook from the many high-profile pharmaceutical disputes he has handled globally. A “leading light” and “senior statesman of the profession”, Gordon Harris is hailed by one European colleague as “the best patent litigator in the world”; he is known for his ground-breaking methods, which have inspired major changes to the law throughout his 30-year career. Transactional whizz Patrick Duxbury captains the life sciences practice group and regularly negotiates transformative global deals: he recently advised AstraZeneca on its landmark collaboration agreement for the development and distribution of the Oxford covid-19 vaccine.
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IAM Patent 1000
Haseltine Lake Kempner LLP
Since the headline-grabbing merger between Haseltine Lake and Kempner & Partners in 2019, the resulting powerhouse has been earning rave reviews for its comprehensive patent offering. “Rarely does a firm put out such high-quality work product so consistently for such good value,” reports one client. “Haseltine Lake Kempner is creative, responsive and demonstrates the utmost professionalism, legal knowledge and attention to detail. In addition, the practitioners are wizards when working with specifications written for the US.” Global head of client services and former EPO examiner Simon Rees makes it his mission to build enduring relationships with clients and boasts wide-ranging technical capabilities spanning telecommunications, electronics and computer architecture. He has lately been serving the IP protection needs of new client UK Atomic Energy Authority alongside his colleague David Hammond, a versatile and client-focused attorney who spends the majority of his time handling innovative medical patents. His dual academic qualifications in chemistry and DNA technology mean
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United Kingdom: England George Schlich Schlich Ltd
Nick Sutcliffe Mewburn Ellis LLP
Heather Scott Gill Jennings & Every LLP
Neil Thornton Reddie & Grose LLP
James Short Boult Wade Tennant LLP
Craig Titmus Mathys & Squire LLP
Robert Skone James Gill Jennings & Every LLP
Anthony C Tridico Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Nick Shipp Kilburn & Strode LLP Philip Slingsby Slingsby Partners LLP Darren Smyth EIP Matthew Spencer Boult Wade Tennant LLP Jonathan Stafford Marks & Clerk Robert Stephen CMS Cameron McKenna Nabarro Olswang LLP
he is always on top of the details in even the most complex cases. Other life sciences stars include Alex Rogers – a favourite of Chinese clients, thanks to his in-depth market knowledge and Chinese language skills; and the “dynamic and driven” Joseph Lenthall, a judicious manager of chemical and pharmaceutical portfolios and a familiar face at the EPO. Meanwhile, “brilliant and focused litigator” Richard Kempner routinely brings home the wins in court and provides bespoke, highly specialised advice.
Herbert Smith Freehills LLP
Business-minded solutions to complex commercial problems that ensure maximum impact with minimum fuss are the calling card of Herbert Smith Freehills. The patent group has acted in some of the most hotly contested disputes around for a litany of leaders in IP-heavy industries. As an example, it recently represented Genentech, F Hoffmann La-Roche and Roche Products in multijurisdictional patent litigation against Pfizer relating to blockbuster cancer drug Avastin. Taking the lead on this were SPC expert Sebastian Moore
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See p905
Christopher S Tunstall Carpmaels & Ransford LLP Craig Turner AA Thornton Stephen Turner Slingsby Partners LLP Jennifer Uno HGF Ltd Jan Walaski Venner Shipley LLP Sheila Wallace Marks & Clerk
and qualified biologist Sophie Rich, who are both known for their “client-oriented thinking, wellthought-through legal advice and sense of urgency”: “They proactively coordinate with local counsel, providing an easily digestible overview so that the client can concentrate on strategic decisions.” Also operating in the pharmaceutical space is fellow SPC maven and solicitor-advocate Jonathan Turnbull, a biochemistry PhD who has directed cross-border litigation programmes across 40 jurisdictions. Other solicitor-advocates at the firm include Andrew Moir and Mark Shillito. FRAND licensing is a forte for Moir, whose high-technology patent litigation practice is underpinned by qualifications in physics; while Shillito is a trusted guide for titans such as Apple, Vodafone and Eisai. Heading up the UK IP group is litigator and deal negotiator par excellence Joel Smith; a specialist in plant variety rights, he was called upon by the UK government to advise on this area in relation to Brexit.
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United Kingdom: England Helen Wallis CMS Cameron McKenna Nabarro Olswang LLP
Jeremy Webster Mewburn Ellis LLP
Seán Walton Mewburn Ellis LLP
Andrew Wells HGF Ltd
James Warner Carpmaels & Ransford LLP
Andrew John White Mathys & Squire LLP
Charlotte Watkins Secerna LLP
See p906
Nina White Boult Wade Tennant LLP
Robert Watson Mewburn Ellis LLP
Paul Williams Lewis Silkin
Philip Webber Dehns
Daniel Wise Carpmaels & Ransford LLP
HGF Ltd
New office openings and acquisitions taking place across Europe at dizzying pace reflect HGF’s lofty ambitions – as do the statistics: it was the 15th largest filer at WIPO in 2019. From 21 bases across Europe, it tends to all non-contentious needs of its diverse clientele, with emerging areas such as AI and CRISPR technology an increasing focus. EPO oppositions are the metier of chemist and oppositions and appeals head Chris Moore; he recently acted for Philip Morris International in a series of e-cigarette related oppositions alongside fellow chemist Hsu Min Chung. Chung’s scientific acumen is easily applied in a vast range of fields and is matched with valuable insight from time spent in-house at a world-leading oil and gas company. Another persuasive EPO advocate is engineer Jennifer Uno, who can get her head around almost any mechanical or medical device; a stint at a patent attorney firm in Osaka gives her an edge when collaborating with Japanese clients. Fellow engineer Lucy Johnson is “pragmatic, capable, knowledgeable and fosters enjoyable working relationships”. “Thanks to her advice and expertise, clients’ IP strategies are a living thing – constantly under review and revision as businesses evolve. She works to understand not only the technology, but also the commercial goals at the centre of it all.” The twin pillars on the life sciences side are Andrew Wells and Claire Irvine. Chemistry head Wells holds a PhD in vaccinology and also worked inhouse at a multinational pharmaceutical giant; while “fearless warrior” Irvine lately played a vital role in securing patents for the use of Synairgen’s Interferonbeta drug to combat the respiratory symptoms of covid-19. “Claire pays meticulous attention to detail and has superb technical and scientific knowledge.
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See p907
Kit Wong D Young & Co LLP
Clients can concentrate on their own growth, knowing their IP is in safe hands.” When it comes to transactions, 30-year-experienced solicitor Janet Knowles “combines strong technical ability with a friendly manner” and recently sewed up a patent-related deal between Extruded Pharmaceuticals and a leading university. Bridging the gap between the prosecution and transactional divisions is astrophysicist Matthew Cassie, who crafts technically complex filing strategies and advises on IP-related M&A. The whole operation is overseen by senior partner and former radiofrequency engineer Harry Hutchinson, whose broad remit encompasses everything from telecommunications to 3D printing. His commercial outlook and strategic mind separate him from the competition. See p994 for firm profile
Hogan Lovells
High-stakes patent litigation is in Hogan Lovells’ DNA, as the UK team’s caseload bears out: over the past 12 months it has handled a series of validity actions on behalf of Merck Sharp & Dohme; intervened in a sprawling multi-jurisdictional suit on behalf of HTC against Philips; acted for Olaplex in infringement proceedings against L’Oréal; and taken on a panEuropean FRAND licensing case on behalf of Vodafone. Leading on the HTC and Vodafone mandates is litigation head Paul Brown, who has unparalleled insight in the electronics and telecommunications field, especially where FRAND issues are concerned: “He is somewhat unusual among senior partners, in that he is still willing to get into the detail of a case and
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United Kingdom: England really understand what it is all about. That, combined with a great nose for the best arguments, makes him a terrific litigator.” Also playing a hand on the HTC and Vodafone briefs is “amiable and technically adept” solicitor-advocate Katie McConnell. She litigates with poise in both the telecommunications and pharmaceutical spaces, and also has an eye for commercialisation opportunities – she recently advised Novartis on its AI-related collaborations with Microsoft. The Olaplex piece is spearheaded by Stephen Bennett, who has taken a record-breaking number of SPC matters to the Court of Justice of the European Union (CJEU). “Stephen has been there and seen it all before. He is unflappable, down to earth and urbane – as cool as a cucumber, even when the pressure comes on. He is pragmatic, straight-talking and legally astute – one of the finest UK solicitors in the life sciences field.” Working alongside Bennett on the Merck Sharp & Dohme case are Daniel Brook and Emma Fulton. The former is a skilled coordinator of cross-border litigation who brought home the ground-breaking Schutz v Werit Supreme Court victory; while the latter represents major players in both the healthcare and electronics fields. Both attract rave reviews: “Daniel Brook is one of the brainiest solicitors in England. His legal acumen is flawless, his knowledge is unending and his ability to calm nervous witnesses is a panacea.” “Emma Fulton is precise, intelligent, lively, engaging and able to handle complex patent and SPC issues with ease. If you need a job done well, she’s your woman.”
J A Kemp
“Outstandingly good tactically, strategically and operationally”, is the market consensus on dynamic patent attorney firm J A Kemp. From three UK offices and additional bases in Paris and Munich, it has turned filing into an art form: its already staggering patent application numbers recently saw a 9% increase, with European patent filings now standing at 1,745 across a 12-month period. It consistently gets the right results in oppositions too, and currently has circa 320 active cases on the go, including a series of actions for AbbVie. Handling these is pharmaceuticals head Ravi Srinivasan, who has also been managing the patent strategy of Sanofi in relation to its Plerixaflor cancer drug. “His insights and attention to detail are second to none; and he is efficient, organised and highly effective.” Biotechnology and life sciences group head Patrick Campbell has appeared in more than 70 oppositions before the EPO and regularly advises on cross-border litigation. He is joined by Simon Wright and Sarah Roques, each of whom has chalked up 30 years in the game. Wright has made loyal fans of everyone from small academic institutions to major
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multinationals such as Hoffman-La Roche; while his role as secretary of the epi Biotech Committee puts him front and centre of European policymaking. Biotechnology is the specialist subject of Roques, a regular advocate in antibody-related EPO oppositions and a vital ally for US clients seeking to navigate the European patent system. Medical devices maven Nigel Price also builds relationships across the pond, collaborating regularly with US patent attorney firms based in Silicon Valley and serving as the key contact point for the firm’s US and China-based IT clients. Captaining the medical devices practice group is Mark Roberts, a veteran of more than 100 oppositions and appeals. “Mark has one of the sharpest legal minds I’ve had the opportunity to work with,” reports one client. “He is an excellent communicator – he can unwind complex issues with an elegant simplicity. He is easy to work with and never misses a beat.” John Leeming knows everything there is to know about computerimplemented inventions; he focuses on semiconductor device manufacturing and AI issues, and “finds clients a path to success even in cases when other attorneys would advise giving up”.
Keltie LLP
“Keltie is home to some of the best patent attorneys on the UK market. Their advice is thoughtful and strategic, and they can see around corners to save time and cost down the road while obtaining commercially valuable patents. The team is very amenable, proactive, friendly and well suited to modern ways of working.” Anchoring the life sciences side is molecular biologist Devanand Crease, who has carved a niche advising university spin-outs and start-ups: “Dev is proactive in developing a strategy that is creative and goal oriented, and is a great team player – consistently collaborative and overall solid and reliable.” PhD biochemist Michael Moore spent time working at a gene therapy start-up, where his cutting-edge research saw him named as an inventor on numerous patents. Jonathan Goodacre likewise holds a PhD, this time in organic chemistry; everything from CRISPR to oil and gas technologies falls within his broad wheelhouse. This technical diversity is shared by former UKIPO examiner Judith Caldwell, who is fluent in disciplines including pharmaceuticals, cosmetics, veterinary science and medical devices. She devises sophisticated patenting strategies and conducts hawkish IP due diligence. On the engineering side, the firm is armed with Joanne Hopley and Sullivan Fountain. Hopley can quickly parse almost any engineering invention thanks to her impeccable credentials and training (including a PhD in nuclear structure physics), and manages the worldwide patent portfolios of various global automotive
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United Kingdom: England companies. The interface of engineering and software is the sweet spot of mechatronics expert Fountain, who previously worked as an avionics systems engineer and also in-house at Dyson. Further software know-how comes from Shakeel Ahmad and Richard Lawrence. Ahmad leads the IT, telecommunications and electronics teams and has a diverse practice which includes growing specialisms in fintech and 4G. Lawrence works well with emerging technologies and makes his debut in the IAM Patent 1000 thanks to glowing reviews from clients: “Richard has excellent people skills, responds well to feedback and is adept at communicating with inventors no matter what their needs or requirements.” See p1012 for firm profile
Kilburn & Strode LLP
Home to 100-plus multi-talented patent attorneys, mighty prosecution shop Kilburn & Strode continues to expand, adding four partners in the last year and investing further in its young Dutch office. Superior technical ability and client care are hallmarks of its service: “It has an understanding of the commercial aims, a complete grasp of the relevant patent law and a creative flair for seeing where opportunities lie.” It has several new arrivals in the IAM Patent 1000 this year, in the form of Nick Shipp, Jennifer Harris and Elizabeth Crooks. Shipp recently assumed leadership of the firm’s large tech group and coordinates its activities across London, Amsterdam and San Francisco, while also counselling innovators of all stripes in fields from consumer goods to aeronautics. Harris and Crooks both sit within the chemistry group: Harris is hailed as “technically knowledgeable and astute, and able to quickly formulate strong strategies and arguments”; while Crooks – who recently acted in a range of oppositions for Honeywell – “knows her chemistry as well as the inventors she works alongside, and is diligent and responsive. Her work is methodical and strategic, always conducted with a keen eye towards the client’s commercial and business interests”. They join an existing group of star professionals which includes life sciences experts Nick Bassil, Nick Lee, Tom Leonard and Kristina Cornish. Cancer immunotherapy, stem cell technology and cloning feature prominently in the practice of biotechnology ace Bassil, who is never less than meticulous in conducting IP due diligence and obtaining SPCs. Lee’s recent highlights include representing Immunocore in a major multi-party opposition hearing. With a niche in antibody technology, Leonard is “at the top of his game in terms of both technical ability and client service, providing fantastic strategic advice for almost any project”. Cornish chairs the life sciences
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and chemistry group and likewise garners high acclaim: “She is professional, efficient and comes up with imaginative solutions in challenging scenarios.” On the software side, Alexander Korenberg builds futureproofed patent strategies in cutting-edge areas such as AI, virtual and augmented reality, and cloud services. All manner of engineering briefs land on the desks of Jim Miller and managing partner Richard Howson, although both are especially adept when it comes to automotive technologies. Miller’s CV includes stints on the metalworking shop floor of an automotive transmission component supplier and at BAE Systems; while Howson currently dedicates time to marking the European Qualifying Examination for new patent attorneys. No discussion of Kilburn & Strode would be complete without a mention of chairperson and “rock star” Gwilym Roberts, who has become “the most famous patent attorney in Europe” thanks to his popular podcast, Two IPs in a Pod.
Kirkland & Ellis LLP
When US-headquartered juggernaut Kirkland & Ellis recruited crack litigator Nicola Dagg to build out its London patent team in 2018, the move was a hot topic among the UK IP community. Almost three years on, the practice is positively humming as it continues to pick up some of the highest-profile disputes on the market. On the pharmaceutical side, Dagg recently did battle in the Supreme Court for Pfizer and represented Regeneron in a major infringement and validity dispute which is cited as one of the most important biotechnology cases of the last 20 years. Dagg is not the only rainmaker at the firm, however: her growing squad also includes the likes of Steven Baldwin and Katie Coltart. Baldwin’s cases tend to have a cross-border angle – as illustrated by the globespanning, precedent-setting FRAND dispute he has lately handled for Xiaomi. Coltart is likewise an adroit coordinator of multi-jurisdictional litigation whose recent highlights include acting for Meril Life Sciences in a pan-European heart valve dispute with Edwards Lifesciences. Working with her on this is Daniel Lim, whose frequently weaves together the threads of parallel proceedings across countries and continents in his pharmaceutically focused practice. Working across both pharmaceuticals – where he concentrates on advancements in small molecules and vaccines – and consumer goods is Jin Ooi, who can swiftly resolve even the most complex damages enquiries. He assisted Dagg on the Pfizer piece and, alongside Lim, directed patent infringement and revocation proceedings on behalf of British American Tobacco across 25 jurisdictions worldwide.
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United Kingdom: England Individuals: transactions Highly recommended Mark Anderson Anderson Law LLP Malcolm Bates Goodwin Procter LLP Richard Dickinson Bristows LLP Patrick Duxbury Gowling WLG Jim Ford Allen & Overy LLP Michael Gavey Simmons & Simmons LLP Daniel Pavin Covington & Burling LLP Jennifer Pierce McCarthy Denning Ltd Alexandra Pygall Stephenson Harwood LLP Chris Shelley Penningtons Manches Cooper LLP
Lewis Silkin
Lewis Silkin threw its hat into the patent prosecution ring in 2019 by acquiring and integrating former patent attorney outfit Ablett & Stebbing into its offering. With this experienced, technically capable team undertaking everything from basic filings to complex freedom-to-operate and IP strategy, the firm now provides a 360-degree patent service. On the prosecution front, it has been busy processing international patent filings for power supply manufacturer TDK Lambda; assisting soft drinks company Britvic with patent strategy; and tending to the patent needs of automotive supplier Aptiv. Playing a part on all of these matters is agile portfolio manager and engineering and software expert Tom Gaunt, who is “quick to understand new concepts and communicates easily with inventors”. “He is one
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Sally Shorthose Bird & Bird LLP Joel Smith Herbert Smith Freehills LLP Matthew Warren Bristows LLP John Wilkinson Cooley LLP Recommended Lisa Allebone Anderson Law LLP Allistair Booth Pinsent Masons Rachel Bradley Penningtons Manches Cooper LLP David Brooks Freshfields Bruckhaus Deringer LLP Michael Browne Wiggin LLP
See p890
Simon Chalkley Keystone Law Nemone Franks Linklaters LLP
of the best-networked patent attorneys in the game and his presence ensures that, despite the small size of its team, Lewis Silkin punches well above its weight.” Working alongside him for Aptiv and TDK Lambda is physicist Graham Ablett, a founder of Ablett & Stebbing whose aptitude extends from mechanics to electronics, telecommunications and software. Chemist Paul Williams is similarly versatile: he ably dispatches both mechanics and life sciences instructions, and assisted on the Britvic portfolio as well as on a series of opposition and appeal proceedings for Belgian pharmaceutical giant Janssen Pharmaceutica. On the litigation side, the firm recently recruited Antony Craggs, who has moved his sector-diverse practice from D Young & Co. He is known for his creative management of disputes across Europe and the United States.
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United Kingdom: England Linklaters LLP
The tungsten-sharp practitioners at Linklaters have been putting on a show both in court and at the deal table for their A-list clientele. On the disputes front, they have been representing GlaxoSmithKline in pan-European infringement proceedings; Sanofi and Regeneron in a high-profile global dispute; and Takeda in commercially consequential litigation. And on the transactional side, they advised Bayer AG on its acquisition of UK start-up KaNDy Therapeutics; counselled BP International through the IP-heavy sale of its global aromatics and acetyls petrochemicals business to INEOS; and assisted Novartis with its subsidiary Sandoz’s purchase of Aspen Japan. The ambidextrous Ian Karet acted on both the GlaxoSmithKline and Novartis briefs. During more than 30 years at the firm, he has made innumerable appearances in the High Court and was recently appointed as a part-time deputy High Court judge in England and Wales. Another nimble operator on both sides of the contentious/non-contentious divide, pharmaceutical ace Yohan Liyanage drew on his biotechnology PhD to provide crucial input on the Sanofi/Regeneron dispute. Pure-play transactional lawyer Nemone Franks gets right into the nitty-gritty of IP-related cross-border M&A, complex IP and IT separation projects and high-value commercial contracts, with fintech a growing forte.
Marks & Clerk
Marks & Clerk is perhaps one of the most successful attempts at a hybrid outfit in Europe: its prosecution division lights a path to patent protection for innovators in new and emerging technological areas; while its litigators go in all guns blazing for the likes of pharmaceutical giants Pfizer, F Hoffmann-La Roche and Genentech. On the life sciences side, notable patent attorneys include Sheila Wallace, Will Nieuwenhuys and Jonathan Stafford. Wallace casts her net wide, focusing on pharmaceuticals but covering everything from agrochemicals to polymers – she has made her fair share of appearances in EPO oppositions and is also a dab hand at obtaining SPCs at patent term extensions. Small molecules are the metier of Nieuwenhuys and Stafford. Niewenhuys “provides clear advice in complex situations, allowing clients to make confident, wellinformed decisions”. Stafford – who holds an organic chemistry PhD and gained industry insight through a stint at a multinational pharmaceutical company – is “the quintessential full-service practitioner, with the perfect balance of acumen, command and reliability”: “He understands a wide variety of complex technologies and is astute at identifying
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the opposition’s weaknesses and turning them in the client’s favour.” Bridging the gap between the life sciences and high-technology spheres is Robert Lind, a bioelectronics PhD who also has deep telecommunications know-how: having worked with 3G and 4G technologies at Nokia, he now advises on issues that touch on 5G and other advanced wireless communication systems. “Robert always goes the extra mile to fully understand the technology and the client’s long-term business strategy.” Heading the electronics group is physicist Philip Martin, who has led more than 70 EPO oppositions across his career, with an enviable success rate of circa 90%. Sharing this strength is electronic engineer Philip Cupitt, a veritable encyclopaedia of US patent procedure thanks to his time at the London outpost of a major US law firm. The resident 3D printing and additive manufacturing expert is German, UK and European patent attorney Thomas Prock, who is frequently engaged to speak on his topic of choice at EPO conferences. Captaining the Marks & Clerk Law practice is Mike Gilbert– the aforementioned Pfizer, Genentech and F Hoffmann-La Roche cases all bear his fingerprints, and he has an intuitive grasp of SPC and paediatric extension issues. “Mike is a very experienced and excellent patent litigator who knows all the IP and regulatory law surrounding the pharmaceutical industry – it is almost impossible to imagine a situation that would be new to him.” Life sciences and high technology both fall within the bailiwick of Graham Burnett-Hall, who provides “excellent advice and recommendations for all types of UK patent litigation questions”. Also with a wide remit is Gregor Grant, a veteran litigator who has brought the heat for companies in fields from automotive engineering to pharmaceuticals and therapeutic antibodies during his 50-year career; he remains an illustrious figure at the firm today. For SEP and FRAND-related disputes, as well as the surrounding licensing issues, Dafydd Bevan is prime pick – he regularly appears in the High Court, he is adept at advising on the interplay between UK litigation and parallel EPO opposition proceedings. Michael Moore likewise has a facility for SEP and FRAND cases, though his sweeping technical knowhow has seen him involved in multi-jurisdictional biotechnology battles too. He also heads the firm’s transactional IP practice and dispenses on-point guidance on freedom-to-operate issues. Fellow transactional and contractual expert Simon Portman counsels companies of every scale on all kinds of licence agreements and R&D collaborations, and brings a wealth of regulatory insight to the mix.
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United Kingdom: England Selina Hinchliffe Browne Jacobson LLP
Jake Marshall Carpmaels & Ransford LLP
Ian Karet Linklaters LLP
Colin McCall Taylor Wessing
Mike Knapper Norton Rose Fulbright
Katie McConnell Hogan Lovells
Janet Knowles HGF Ltd
Angus Mclean Simmons & Simmons LLP
Oliver Laing Potter Clarkson
Michael Moore Marks & Clerk
Naomi Leach Stephenson Harwood LLP
Eifion Morris Stephenson Harwood LLP
Yohan Liyanage Linklaters LLP
Fiona Nicolson Keystone Law
Mark A Lubbock Brown Rudnick LLP
Lucinda Osborne Covington & Burling LLP
Paul MacLennan Anderson Law LLP
Nigel Parker Allen & Overy LLP
Nicola Maguire Cooley LLP
Morag Peberdy Covington & Burling LLP
Mathys & Squire LLP
“Mathys & Squire is dynamic and exceptional in its service. The team helps clients to adapt their strategies in line with business developments and proactively responds to changing external circumstances. Communication is clear and concise, even in relation to the most highly specialised and technical patent applications.” Much of its work takes place in a cross-border context, thanks to its extensive geographical footprint: a 10-office network across the United Kingdom and Europe is complemented by further outposts in China and Japan. Making their debuts in the IAM Patent 1000 for 2021 are electronics wizards Alan MacDougall and Paul Cozens. Cambridge office head MacDougall takes the lead in managing the firm’s Japanese business development; while Cozens is an intelligent builder of patent portfolios with an affinity for the cutting-edge fields of AI and cryptocurrency. “Paul has a winning combination of technical ability and commerciality, and is a pleasure to work with. He has dealt with some challenging projects and maintains a positive attitude even when faced with admittedly difficult
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tasks.” Other IAM Patent 1000 newcomers are Dani Kramer and Andrew John White – the former a prolific patent filer and smooth broker of technologybased agreements who is responsible for growing the firm’s Israeli practice; the latter a physicist who mentors start-ups in the medtech, software, telecommunications and automotive fields. “Dani practically unfolds his knowledge in simple terms, providing highly targeted and tactical advice, and painting a clear strategic map.” “Andrew shows great technical understanding, ensures that the core IP is well defined at an early stage, facilitates joint creative thinking and is always available for a productive discussion.” The final fresh face in the rankings is biotechnology and life sciences ace Anna Gregson, who is especially at home working with university technology transfer organisations: she is currently conducting patent searches for the London School of Hygiene and Tropical Medicine in relation to small molecule therapeutics. Returning to the IAM Patent 1000 this year are Jane Clark, Martin MacLean, Craig Titmus and Christopher Hamer. Clark has been delighting high-technology concerns and
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United Kingdom: England universities alike for more than 30 years with the sage global strategy and lucrative IP-related agreements she masterminds. MacLean exhibits a deft touch in managing the portfolios of both corporations and governmental organisations – especially in the biotechnology sphere – and has conducted more than 100 EPO opposition hearings, with a 90%-plus success rate. Titmus also excels in administrative proceedings and shares MacLean’s proficiency for working with players in the vaccine and therapeutic antibody fields; while chemistry boffin Hamer leads the firm’s efforts in China and is “a pragmatic and proactive professional who frames legal issues in a commercial context”. Recent successes include helping Acell Industries to patent its cutting-edge covid-19 related air filtration technology. See p1024 for firm profile
Mewburn Ellis LLP
A venerable presence on the market for over 150 years, leading European patent prosecution shop Mewburn Ellis refuses to stand still, as the stats bear out: it enjoyed an astonishing 40% growth in turnover over the last three years. Its 130-plus patent professionals cover all technical niches in chemistry, IT, engineering and the life sciences, and have partnered with eight of the top 10 UK universities. Leading on the life sciences side is the 30-years’ seasoned Simon Kiddle: “His work is of a notably high quality, his strategic advice is clear and effective, and his judgement is sound.” He leads a robust practice group which includes the likes of Seán Walton, Christopher Denison, Simon Kremer and Nick Sutcliffe. Antibody and vaccine expert Walton has spent the last three decades making the difference in EPO oppositions and appeals, and intervening in USPTO interference proceedings. Antibodies are likewise the metier of Denison, an agile manager of weighty biotechnology portfolios and a persuasive performer in oppositions: “Chris is second to none, by far, in finding necessary support documents and coming up with creative and truly science-based arguments. He never disappoints in producing robust briefs and beating multiple opponents at the oral proceedings.” Biochemist Kremer’s clients include innovative pharmaceutical company WisTa Laboratories, which he recently assisted in inter partes review proceedings before the US Patent Trial and Appeal Board. Sutcliffe also holds a biochemistry PhD and handles everything from pre-drafting advice to global portfolio management and advocacy in oppositions: “Nick is the agent to go to for an accurate, unbiased opinion. He has an impressive ability to digest written material and draft claims
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with pertinent questions for the inventors without the need for hours of meetings.” The engineering group plays host to Rachel Oxley, Simon Parry and Emma Graham, who all receive effusive praise from patrons. London engineering head Oxley “has an unprecedented ability to put complex inventions on paper and an exemplary approach which is logical and underscored by a high level of understanding”. The “personable and client-focused” Parry is an automotive and marine engineering specialist; while optics and photonics maven Graham is a valuable resource for start-ups who “provides high-quality advice and always goes the extra mile”. Stephen Gill has aeronautics, rail transport and power generation down cold; he has been furnishing holistic strategic guidance to Hitachi Ltd alongside “proactive and accurate” engineering and ICT practice group head Graeme Moore. Moore also linked up with chemistry group head Jeremy Webster to provide full-bodied IP support to Mitsubishi Electric Corporation and e-cigarette manufacturer Nerudia; Webster’s other recent credits include managing the portfolio of worldwide chemical industry group Toray Industries and handling a series of successful oppositions for Unilever. Working alongside him in the chemistry group is Robert Watson, who balances a wealth of prosecution and oppositions work in the pharmaceutical and industrial chemistry sectors with a thriving designs practice. Bolstering the firm’s offering having joined the team from Charles Russell Speechlys in February 2021 is David Fyfield – the multitalented litigator, strategist, and contract negotiator is used to dealing with multijurisdictional issues across Europe, the US, and China.
Mishcon de Reya LLP
Perhaps best known for its prowess on the trademark side, Mishcon de Reya is also home to a potent patent practice which has all disciplines on lock – although its track record for generic pharmaceutical companies is particularly impressive. This year it brought a hardfought battle between Lupin and Gilead over HIV drug PrEP to successful close; the case went all the way to the Court of Appeal and then the CJEU, and the judgment that Mishcon secured will have a seismic impact on the generics industry. Playing point on this matter was patent practice head David Rose, an authority on everything from SPCs to FRAND licensing. “David is an extremely accomplished litigator with significant experience of high-value patent litigation. He brings a wealth of experience and maturity to any patent dispute, engenders the trust of his clients and is a pleasure to work with.” Another versatile IP litigator is Martyn Hann, who
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United Kingdom: England Simon Portman Marks & Clerk
Richard Taylor DLA Piper
Giles Pratt Freshfields Bruckhaus Deringer LLP
Philip Thomas Reed Smith LLP
Jonathan Radcliffe Reed Smith LLP
Lydia Torne Simmons & Simmons LLP
Claire Smith Bristows LLP
Ewan Townsend Arnold & Porter Kaye Scholer LLP
Tom Snaith Bird & Bird LLP
David Wilkinson Ashurst LLP
Mark Snelgrove Potter Clarkson
Caroline Young Charles Russell Speechlys LLP
also advises on all manner of licensing, R&D and collaboration agreements. In the words of one happy client: “Martyn continues to be one of our most trusted legal advisers. He delivers clear, decisive advice, putting the legal concerns in commercial context and always ensuring that his guidance is of practical use.”
Osborne Clarke
The IP group at Osborne Clarke received serious shots in the arm over the past 18 months – first with the arrival of new life sciences and healthcare head Will James in 2019, and then through the recruitment of former Bird & Bird pharmaceutical and biotechnology litigator Tim Harris in 2020. “Clear communicator and superb strategic leader” James has carried the day in court for the likes of Amgen, Genentech and AstraZeneca, and is “brilliant” at coordinating multi-jurisdictional patent litigation. Harris puts his Oxford chemistry qualifications to great use in assisting biotechnology players with their IP monetisation strategies; a facility for electronics inventions is another string to his bow. The pair join polished litigator Arty Rajendra, who concentrates on high technology and telecommunications; she made an indelible mark on the scene through her representation of Unwired Planet in its landmark Supreme Court FRAND licensing dispute against Huawei. See p1036 for firm profile
Penningtons Manches Cooper LLP
A flair for the fine print of IP-rich transactions lands Penningtons Manches Cooper its first spot in the IAM Patent 1000 this year. No patent-related agreement
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is beyond its capabilities – universities and their spin-outs are a clear focus, but biotechnology and industrial chemical concerns of all shapes and sizes have been seeking out its support over the past 12 months. Driving the practice forward is Chris Shelley, who negotiates lucrative deals involving engineering and life sciences technologies and shares his wisdom by teaching on the IP Transactions: Law and Practice Course at the UCL Institute of Brand & Innovation Law. “Chris provides clear and professional advice in a responsive and prompt manner.” At his side is fellow life sciences aficionado Rachel Bradley, who gained an insider’s perspective on IP transactions in her former role of corporate counsel at AstraZeneca. She “offers thorough and timely support and demonstrates strong market knowledge and experience”.
Pinsent Masons
“Thorough, organised, commercially sound and great at developing relationships with foreign counsel”, Pinsent Masons “acts as an extension of an in-house legal team”. The patent professionals across its European office network work hand in glove to meet and exceed the demands of its discerning clientele. Pharmaceuticals and biotechnology industries are happy hunting grounds, and generics leader Teva is a key client of note: cases which look set to make a splash include a Supreme Court spat with Eli Lilly/ ICOS Corp; an SPC-related revocation dispute against Gilead and three other defendants in the CJEU; and a high-stakes damages claim against WarnerLambert and Pfizer alongside a league of other claimants. Acting on all three is Charlotte Weekes, an internationally minded warrior with keen commercial
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United Kingdom: England acumen. IP and life sciences head Clare Tunstall – dubbed “the queen of the generic revocation case” – leads the charge against Gilead: “Her experience in the field is unparalleled and she is fantastic to work with.” Teva also receives vital support from Christopher Sharp, who has elsewhere prevailed for Accord Healthcare in revocation proceedings against Allergan Inc; he is “an excellent leader who is clear and decisive in his advice”. Another hotshot life sciences litigator is Nicole Jadeja, who gave the group a boost when she came on board in late 2019. She can walk in her clients’ shoes, having previously worked at a pharmaceutical multinational in a scientific capacity. On the transactional end, Allistair Booth has been getting a wide range of licensing and R&D agreements inked for the likes of RedX Pharma, 4D Pharma, and Evgen Pharma.
Potter Clarkson
The star of Potter Clarkson remains firmly on the ascendant, despite the travails that have beset the market in the pandemic age. Home to both patent attorneys and solicitors, the hybrid outfit tackles contentious and non-contentious mandates of all flavours with verve, though EPO oppositions are a particular forte. In 2020 it landed two big names in the form of Peter Finnie and Fiona Law, who have both since played crucial roles in establishing the firm’s newly minted IP consultancy division and recently assisted German medtech venture capital company Earlybird with IP due diligence. Telecommunications, software and AI expert Finnie builds commercially oriented patent strategies for European start-ups; while the “diligent, professional and perseverant” Law is a chemistry and pharmaceuticals specialist with an affinity for SPC and second medical use issues. Joining her in the life sciences division are patent attorneys Charlotte Crowhurst, Stephen McNeeney, Ian Dee, Richard Bassett, Rob Pugh and Stephanie Pilkington. Crowhurst is a percipient IP strategist and EPO advocate who has done much to advance the firm’s Asian business development, acting for corporate titans from China and Korea. Organic chemist McNeeney is a trusted guide to pharmaceutical clients based overseas, especially in Sweden, and also advises on US court proceedings. Dee has wrapped up more than 150 EPO hearings during his tenure and brings research experience at a chemical multinational to his broad practice; while Bassett has appeared in some 200-plus oppositions on behalf of major leaguers such as Baxter Healthcare, Eli Lilly and AstraZeneca. Pugh is “consistently responsive, paints a clear strategic picture for clients and quickly understands both the technical
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Individuals: litigation Dominic Adair Bristows LLP Stephen Bennett Hogan Lovells Daniel Brook Hogan Lovells Neville Cordell Allen & Overy LLP Brian Cordery Bristows LLP Nicola Dagg Kirkland & Ellis LLP Huw Evans Gowling WLG Mike Gilbert Marks & Clerk Penny Gilbert Powell Gilbert LLP Mark Heaney Allen & Overy LLP Mark Hilton Bird & Bird LLP
and business aims”; while PhD molecular biologist Pilkington is hailed as “amenable, scientifically astute, flexible, prompt and conscientious”. On the electronics side, Craig Brownlie and Saiful Khan recently advised Douglas Scientific on its worldwide patent strategy. Brownlie’s solid-state physics PhD informs his “reliable commercial advice” in the nanotechnology sector; while the “responsive, sharp and honest” Khan’s stint in-house at Nokia proves invaluable to his broad multinational electronics and computing practice. “Dedicated, strategic and commercially minded” textiles specialist Caroline Marshall can be found in the engineering and designs group – her knowledge base is as broad as it is wide, and she acts as a European IP adviser to renewable electricity group UK Grid Solutions. Contentious nous is supplied in abundance by Richard Roberts, Mark Snelgrove and Oliver Laing. With impeccable
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United Kingdom: England Myles Jelf Bristows LLP
Andrew Bowler Bristows LLP
Morag Macdonald Bird & Bird LLP
Alexandra Brodie Gowling WLG
Sebastian Moore Herbert Smith Freehills LLP
Paul Brown Hogan Lovells
Gary Moss EIP
Zoë Butler Powell Gilbert LLP
Marjan Noor Allen & Overy LLP
Peter Damerell Powell Gilbert LLP
Sophie Rich Herbert Smith Freehills LLP
Mark Daniels Browne Jacobson LLP
Justin Watts Wilmer Cutler Pickering Hale and Dorr LLP
Gordon Harris Gowling WLG
Alex Wilson Powell Gilbert LLP
Bethan Hopewell Powell Gilbert LLP
Sara Ashby Wiggin LLP
See p886
Paul Inman Gowling WLG
Simon Ayrton Powell Gilbert LLP
Will James Osborne Clarke
Camilla Balleny Carpmaels & Ransford LLP
Neil J Jenkins Bird & Bird LLP
James Boon Bristows LLP
Ian Karet Linklaters LLP
academic credentials in chemistry, Roberts shines in particular at the interface between civil and criminal IP enforcement. Snelgrove and Laing both have silky transactional skills: ensures means he always keeps the potential contentious angle in mind; while Laing has multi-jurisdictional collaboration and licensing agreements within the life sciences realm sewn up. He is also an engine of the firm’s thriving Scandinavian business and brings insight from a secondment at a world-leading health and beauty group. Guiding the firm’s activities in a consultancy role is Ray Charig, a talented physicist who draws on 25 years of experience working with successful start-ups to build multi-dimensional patent strategies that tick every box.
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See p897
Powell Gilbert LLP
The plaudits come thick and fast for patent litigation powerhouse Powell Gilbert: one client calls it “the top set of solicitors in the UK”, while another reports: “It is a well-regarded firm with excellent partners and excellent associates, all with scientific expertise.” No stranger to landmark lawsuits, it valiantly fought the corner of Huawei in its headline-grabbing battle with Unwired Planet – a case which came interlaced with hotly debated FRAND licensing implications. Leading on this were Simon Ayrton, Zoë Butler and Peter Damerell. Ayrton and Butler recently put their advanced FRAND know-how to further use in representing patent licensor Access Advance in the first UK FRAND suit without an associated patent infringement claim. “Simon and Zoe are creative thinkers with a strong understanding of a complicated
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United Kingdom: England and fluid area of law. The combination of their business mindset, legal fundamentals and creative thinking results in high-quality, focused counsel.” Like Damerell, Butler also moves the needle for life sciences players: she has been acting for Biogen for the last five years, while cellular physiology PhD Damerell regularly features in high-value SPC disputes. Similarly dividing his time and attention between FRAND/SEP battles and complex healthcare device disputes is Tom Oliver, whose academic background in biochemistry proves invaluable on the latter side of his practice. He has lately gone out to bat for Actavis in a high-value damages claim against Pfizer, alongside colleague Bethan Hopewell. “Extremely bright and a big-picture thinker, Bethan is sharp on the science as well as the law and stays on top of all the detail. She is exceptional in every aspect – experience, strategy, execution and responsiveness.” Also active in the life sciences are Timothy Powell and Siddharth Kusumakar. Powell recently teamed up with Hopewell on a commercially significant second medical use and vaccine-related matter for GlaxoSmithKline; and with Kusumakar in multi-jurisdictional proceedings on behalf of Edwards Lifesciences. “Tim has a huge amount of experience and just ‘gets it’. He is a calm and knowledgeable presence who can immediately get to the nub of any tricky issue.” Academically qualified in microbiology and immunology, Kusumakar “thinks strategically and knows the important points to push and those to keep in reserve”. “He is unflappable, dependable and gives sound legal advice that helps to advance our business needs.” He recently defended Kymab in a major Supreme Court dispute against Regeneron alongside founding partner and solicitor-advocate Penny Gilbert, whose practice – which regularly sees her visit the Supreme Court and the CJEU – is informed by a doctorate in molecular biology. Chemist Tim Whitfield combines his patent work with a focus on pharmaceutical regulatory and SPC issues. “Incredibly calm and collected under pressure, he never loses sight of clients’ commercial objectives. Tim looks 10 steps ahead and manages large teams effectively while keeping on top of the details and regularly making insightful observations.” For electronics, IT and telecommunications matters, strategist and FRAND licensing ace Ari Laakkonen is “simply brilliant at developing winning strategies, and thorough and detail oriented when preparing a case for trial”. His fellow global strategist is Alex Wilson; fluency in French and German, a spell spent practising in Australia and experience as a former examiner at the EPO all give him a uniquely cosmopolitan perspective. See p1048 for firm profile
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Ian Kirby Carpmaels & Ransford LLP Ari Laakkonen Powell Gilbert LLP Daniel Lim Kirkland & Ellis LLP
See p899
Yohan Liyanage Linklaters LLP Andrew Moir Herbert Smith Freehills LLP Gareth E Morgan CMS Cameron McKenna Nabarro Olswang LLP Eifion Morris Stephenson Harwood LLP Jane M Mutimear Bird & Bird LLP Scott Parker Simmons & Simmons LLP Timothy D Powell Powell Gilbert LLP Arty Rajendra Osborne Clarke
See p902
Mark Ridgway Allen & Overy LLP
Reddie & Grose LLP
The formidable team at Reddie & Grose partners closely with patrons to obtain cast-iron patent protection in the most business-focused, costeffective way. Its diverse clientele includes everything from AI and high-technology start-ups to biotechnology multinationals, US financial services players and Chinese giants such as air conditioning leader Gree Electrical Appliances. “The granting rate is very good with Reddie & Grose – it is crafty in the way it formulates patents, providing plenty of fallback positions during the examination process.” Michael Roberts and Neil Thornton anchor the life sciences division. Roberts holds a PhD in molecular genetics and conducted postdoctoral research in plant molecular biology and genomics, all of which feeds into his diverse practice; while biochemistry
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United Kingdom: England David Rose Mishcon de Reya LLP
Steven Baldwin Kirkland & Ellis LLP
Hiroshi J Sheraton Baker McKenzie
Jonathan Ball Gowling WLG
Katharine Stephens Bird & Bird LLP
Gemma Barrett Bristows LLP
Nigel Stoate Taylor Wessing
Dafydd Bevan Marks & Clerk
Christopher Stothers Freshfields Bruckhaus Deringer LLP
Deborah Bould DLA Piper
James R Tumbridge Venner Shipley LLP
Michael Browne Wiggin LLP
Clare Tunstall Pinsent Masons
Michael Burdon Simmons & Simmons LLP
Richard Vary Bird & Bird LLP
Graham Burnett-Hall Marks & Clerk
Tim Whitfield Powell Gilbert LLP
Robert Burrows Bristows LLP
David Wilson Carpmaels & Ransford LLP
Tom Carver Gunnercooke Llp
Jennifer Antcliff Carpmaels & Ransford LLP
Liz Cohen Bristows LLP
Gregory Bacon Bristows LLP
Simon Cohen Taylor Wessing
PhD Thornton speaks the language of SMEs. On the engineering front, the key names are William Ponder and Paul Loustalan. Physicist Ponder is a deft coordinator of global patent filings and a worthy EPO advocate whose broad remit encompasses medical devices, e-cigarettes, wireless network technology and aerospace technology; while mechanical engineer Loustalan is a favourite among automotive companies and holds an engine-related PhD. Innovations in the electronics and computer-implemented inventions are parsed with ease by fluent Japanese speaker Nick Reeve, who has spent time living in the Nagasaki Prefecture and lectures on Japanese Patent law at Queen Mary University.
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See p890
Reed Smith LLP
As one of only a handful of commercial law firms with a vibrant IP practice on both sides of the Atlantic, Reed Smith is ideally positioned to provide a joined-up global service to its prestigious multinational clientele. Its specialists worldwide consider themselves part of a single team and work hand in glove across borders to secure the right results, wherever and however they may be needed. New client wins on the contentious front include petroleum storage tank manufacturer Dover Corporation and pharmaceutical company BSPG Laboratories, both of which are represented by London patent practice head Jonathan Radcliffe. Radcliffe is a seasoned litigator of some 30 years’ standing and an eminent figure on the market: he was recently engaged to advise the Kazakhstan
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United Kingdom: England administration on the reform and redrafting of its entire IP regime. When not in court, he guides industry leaders through the negotiation and closing of lucrative IP-related deals, such as Microsoft’s recent acquisition of Metaswitch Networks. Assisting him on the latter was savvy transactional lawyer Philip Thomas, who combines IP and data protection expertise with in-house insight from stints at Nortel Networks and Virgin Media predecessor ntl.
Schlich Ltd
Based in Littlehampton, West Sussex, patent attorney outfit Schlich Ltd is a preferred choice for both UK and Chinese clients in need of efficient filing, adept portfolio management and staunch defence of their rights before the EPO. It operates at the cutting edge of biotechnology, chemistry and mechanics, and has lately been handling a significant volume of CRISPRrelated actions. In the hotseat is namesake George Schlich, whose academic background in natural sciences translates into deep technical understanding: “He is extremely skilled at opposition procedure and practice, and always keeps clients informed on developments in clear language.” This collaborative approach is shared by biochemistry PhD Juliette Boynton, who manages international portfolios with a sure hand and provides unerringly pragmatic advice: “Her strategies are clear and robust; she can get up to speed on complex technologies quickly; and she navigates challenging examinations with finesse.”
Secerna LLP
“The expertise at Secerna is very high and the quality of the drafting is first rate,” report commentators of this York-based prosecution shop. “Its strength is its ability to take ideas from inventors, quickly grasp and understand the concept, and turn it into a patent application with cleverly structured language.” The group is led by co-founders Jason Boakes and Charlotte Watkins. Engineering, telecommunications and medical devices are fortes for Boakes, a “very astute and knowledgeable patent practitioner who takes great care to ensure the work he produces is well thought through and accurate, and who explains concepts easily and clearly”. “He is very sensitive to cost pressure and works efficiently to maximise value for his clients.” With a focus on the life sciences, Watkins “goes above and beyond the call of duty for her clients, doing more for them than many other European practitioners. She becomes an essential part of their patent teams, puts in the effort to make herself indispensable, grasps the science easily, and is extremely knowledgeable about European practice and case law”. See p1064 for firm profile
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Katie Coltart Kirkland & Ellis LLP Neil Coulson Baker Botts LLP Ralph Cox Clyde & Co LLP Antony Craggs Lewis Silkin Duncan Curley Innovate Legal Kathleen Fox Murphy EIP Emma Fulton Hogan Lovells David Fyfield Mewburn Ellis LLP Martyn Hann Mishcon de Reya LLP Paul A Harris Venner Shipley LLP Tim Harris Osborne Clarke
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Caitlin Heard CMS Cameron McKenna Nabarro Olswang LLP Andrew Hutchinson Simmons & Simmons LLP
Simmons & Simmons LLP
Having made the leap in 2018 to add prosecution capabilities to its offering, Simmons & Simmons is now one of those rare breeds in the UK that provide a wall-to-wall patent service. Electronics specialist Kevin Cordina heads the pan-European prosecution unit, which tends to the needs of A-list innovators such as Apple, 5G network pioneer TCL and medical devices leader 3M Wound Care. Cordina himself “is not only a procedural expert, but also takes the time to understand both the technology and business concerns”. Filings in the life sciences are ably dispatched by Frederick Nicolle, who acted on behalf of Serenity Pharmaceuticals and Natura Cosmeticos
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United Kingdom: England Sarah Innes CMS Cameron McKenna Nabarro Olswang LLP
Alastair McCulloch Jones Day
Rob Jacob Stephenson Harwood LLP
Michael Moore Marks & Clerk
Nicole Jadeja Pinsent Masons
Priya Nagpal Simmons & Simmons LLP
Jennifer Jones Bird & Bird LLP
Tom Oliver Powell Gilbert LLP
Matthew Jones EIP
Jin Ooi Kirkland & Ellis LLP
Patrick Kelleher Bird & Bird LLP
Giles Parsons Browne Jacobson LLP
Richard Kempner Haseltine Lake Kempner LLP
Richard Pinckney Bristows LLP
Siddharth Kusumakar Powell Gilbert LLP
Jonathan Radcliffe Reed Smith LLP
Oliver Laing Potter Clarkson
Richard Roberts Potter Clarkson
Robert Lundie Smith EIP
Eleanor Root Bird & Bird LLP
James Marshall Taylor Wessing
Jamie Rowlands Gowling WLG
Don McCombie Ashurst LLP
Matthew Royle Taylor Wessing
Katie McConnell Hogan Lovells
Beatriz San Martin Arnold & Porter Kaye Scholer LLP
before the EPO this year; patrons appreciate his “highly valuable strategic advice, accurate approach and cooperative spirit”. The firm remains a go-to for highstakes litigation and continues to play a role in some of the most prominent biotechnology cases going: it recently represented new client UCB in High Court patent revocation proceedings against Genentech and Novartis; Gilead in a major SPC-related suit; and Samsung Bioepsis in multi-jurisdictional biosimilar patent litigation. Taking the lead on all three pieces is Scott Parker, who draws judiciously on his technical background in biochemistry and molecular biology to defend the interests of pharmaceutical innovators to the hilt. Alongside him are Kevin Mooney and
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Andrew Hutchinson – Mooney is an elder statesman of the IP world who regularly helps to shape policy and legislation, and advises the EPO on judicial training; while Hutchinson recently fought the corner of Bayer HealthCare in patent revocation proceedings brought by Teva. Priya Nagpal and Michael Burdon likewise relish the rough-and-tumble of sector-diverse, multijurisdictional disputes. No technology is off limits for versatile chemist Nagpal, although she has carved a growing niche in cutting-edge areas such as AI, blockchain and fintech; while Burdon is a gladiator in SEP and FRAND battles who recently provided gamechanging representation to high-technology company AIXTRON in an ownership dispute. Meanwhile, Angus
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United Kingdom: England McLean, Michael Gavey and Lydia Torne excel at getting signatures on the dotted line of IP-rich deals. McLean is a smooth negotiator of transactions in the fintech field for the likes of blockchain consortium Contour, which counts HSBC, NatWest and Bangkok Bank among its members. Heading up the London IP group, Gavey “applies his vast legal knowledge and thoroughly analyses all facets of a case to secure the best outcomes”. Impeccable contractual drafting is the calling card of Torne: “She has an in-depth understanding of the biotechnology industry and is a true expert in the field of patent law.”
Slingsby Partners LLP
Founded in 2013, patent prosecution outfit Slingsby Partners is on a stellar upwards trajectory, with headcount growing fivefold in the last eight years and year-on-year turnover rising by an average of 30% for the last six. It has its gaze squarely trained on faraway horizons, and China and Japan are becoming increasingly significant markets for the firm. Engineering, electronics and physical sciences are strongholds, as reflected in its client roster: for example, it manages the portfolio of chip designer Imagination Technologies and directs global patent strategy for surgical robot manufacturer CMR Surgical. Founder and software maven Philip Slingsby marries a fine-grained appreciation of US patent law with insider insight from his time at Nokia. At his side is David King, who also advises on US procedure and recently counselled Sirus Minerals on the IP elements of the $2.9 billion mining facility it is developing in Yorkshire. Also on board are poised EPO advocates Paul Roberts and Stephen Turner, who both move in the high-technology field. Roberts has a burgeoning machine learning practice and stands out for his “enthusiasm, sharpness of mind and exemplary communication skills”; while Turner regularly lectures in Japan on European IP regimes and “has an invaluable ability to grasp technical concepts and get to the core value of an invention quickly”.
Stephenson Harwood LLP
Household-name multinationals – particularly in the life sciences – flock to the doors of Stephenson Harwood. It has its boots on the ground in almost every continent and by coordinating with its sister offices and collaborating with its high-profile clients, the team finds pragmatic solutions to complex multi-jurisdictional skirmishes. For example, one of its most recent and notable highlights includes its recent implementation of a worldwide litigation programme for GlaxoSmithKline against Sandoz and Glenmark Pharmaceuticals. Its IP transactions
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practice is especially potent – not least thanks to the efforts of chemist Alexandra Pygall, who is also a polished litigator. She “never fails to deliver extremely high-quality work product and is utterly brilliant with clients, navigating the sometimes difficult line of providing practical, no-nonsense advice while addressing business-sensitive topics”. Pygall has lately been assisting Oxford Biomedica with a range of IP-related contracts, licensing agreements and other arrangements in relation to the AstraZeneca covid-19 vaccine, for which her client is a key manufacturing partner. Working alongside her on this is fellow life sciences expert Naomi Leach, who consistently gets transformative collaboration and patent licensing agreements, as well as IP-related M&A deals, across the line. Litigation and transactions are the twin focuses of Rob Jacob, “one of the most effective IP lawyers out there”; he recently acted for Eureka Shipping in a High Court dispute which led to changes in licensing laws around the sale of damaged products. Guiding the whole operation is chief executive Eifion Morris, who built the IP group from the ground up and now steers the global strategy of the firm’s entire corporate offering.
Taylor Wessing
A “top-quality European IP firm” that adeptly navigates the vicissitudes of multi-jurisdictional disputes, Taylor Wessing has been hitting the headlines in the UK patent litigation space of late. Highlights include defending ASUS in a FRAND and SEP-related dispute against Philips; representing medical device leader Abbott in commercially significant patent infringement and preliminary injunction proceedings; and intervening on behalf of Ericsson in the ground-breaking Unwired Planet v Huawei suit. Taking the lead for ASUS are James Marshall and Christopher Thornham. Marshall has a complete command of both telecommunications and pharmaceuticals, and is dubbed a “master of his field” by peers. With an academic background in experimental physics, Thornham has spent time advising on patent law in the United States and has “an unpretentious, down-to-earth attitude and the ability to easily discuss complicated legal and technical arguments”. Abbott is under the care of medical devices sage Nigel Stoate – a deft coordinator of sprawling disputes across Europe, the United States and Asia – and international patent group and UK life sciences groups head Simon Cohen, who comes armed with biochemistry and genetics expertise and a wealth of pharmaceutical regulatory know-how. Also with pharmaceutical knowledge is molecular immunology PhD Matthew Royle, who
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United Kingdom: England Matthew Shade Wilmer Cutler Pickering Hale and Dorr LLP
Christopher Thornham Taylor Wessing
Christopher Sharp Pinsent Masons
Anthony Trenton Wilmer Cutler Pickering Hale and Dorr LLP
Andrew Sharples EIP
Jonathan Turnbull Herbert Smith Freehills LLP
Mark Shillito Herbert Smith Freehills LLP
Charlotte Weekes Pinsent Masons
Joel Smith Herbert Smith Freehills LLP
Laura Whiting Freshfields Bruckhaus Deringer LLP
Calum Smyth Wiggin LLP
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Richard Taylor DLA Piper
recently prevailed for Mylan in preliminary injunction proceedings brought by its generic competitors. With niche insight in areas such as SPCs and paediatric extensions, he is a valuable adviser to all life sciences players. Meanwhile, transactions in the life sciences are routinely brought to successful close by Colin McCall, who “shows fantastic attention to detail and skill in working through sticking points in a contract discussion. He is diligent, insightful, attentive and very pleasant to work with”.
UDL Intellectual Property
Storied patent attorney outfit UDL has a 125-year history and is recognised for its enduring client relationships, technical dexterity and 360-degree counsel interlaced with rich legal, scientific and commercial threads. At the fore on the life sciences side is PhD biophysicist Simon Mitchell, who has been busy managing the international patent portfolio of Benchmark Holdings and defending its rights in inter partes opposition and appeal proceedings. Software and telecommunications are fortes for the “pragmatic, commercially oriented and dependable” Karen Fraser, who is increasingly making forays into cutting-edge fields such as AI, Internet of Things and blockchain; dual qualification as an Indian patent agent and UK chartered patent attorney is a further distinction. “There is never a case left in free-fall with Karen; instead, it is as if every case has its own parachute and team of paratroopers in tow. She has a knack for fleshing out the minutiae of novelty from seemingly impenetrable technical specs
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David Wilkinson Ashurst LLP Robert Williams Bird & Bird LLP
and producing claims that are technically accurate, but still commercially useful.” Former UKIPO examiner and qualified US patent agent Andrew Alton is a software and electronics expert whose heavyweight clients have included both Microsoft and Apple.
Venner Shipley LLP
With both patent attorneys and solicitors stationed in four offices across the country and a fifth in Munich, Venner Shipley is a persuasive one-stop shop for innovators of all sizes from all corners of the globe. It knows all the right plays in administrative proceedings and currently has 458 ongoing oppositions and appeals in train; it has also become an elite player in the AI space, processing more patent applications in the field than any other European firm. The group has been filing for the Samsung Group for the best part of 40 years; today, this account is entrusted to the capable hands of managing partner and electronics and software head Jan Walaski. A dual-qualified patent attorney and solicitor, he works across a broad base of technologies and increasingly appears in contentious proceedings both before the EPO and in the UK courts. Another key client is British American Tobacco, which the firm has represented since 2007; Siân Gill plays a key role in directing its global patent programme. She heads up the chemical and life sciences team and also puts in resonant performances in oppositions and appeals. Building the portfolio of pharmaceutical start-up Inflazome – and guiding the company through its acquisition by Roche – are Allie Elend and Stephen Johnson, who
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United Kingdom: England both hold doctorates in organic chemistry from the University of Oxford and receive glowing feedback: “Allie and Stephen are incredibly knowledgeable, diligent, dedicated and also personable and fun to work with.” Another notable life sciences client is Sanofi, which has engaged software don Paul Derry and mechanical engineer Alex Brown to handle a huge volume of patent applications in relation to injector pen technology. Derry brings insight both from time spent in-house at an electronics and defence company and as a former UKIPO examiner; while Brown’s broad technical acumen covers everything from automotive and aerospace technology to manufacturing and industrial machinery. Also with electronics and engineering know-how are PhD physicists Richard Kennedy – who has a solid understanding of AI and deep learningbased technology – and Pawel Piotrowicz, who “provides thoughtful, practical advice for good value”. He recently represented Douglas Connor (now Bentley Systems) in the first EPO appeal to be livestreamed to the general public. EPO oppositions are likewise the metier of Tim Russell, who stands out for his “wide technical experience and strategic business advice”, and often assists on parallel administrative proceedings across continents. Anchoring the litigation side are solicitor Paul Harris and barrister James Tumbridge. Harris has been in the game for over 35 years and has developed a thriving confidential information practice alongside his IP work; while versatile commercial lawyer Tumbridge “can get up to speed on any patent matter, has a solid knowledge of UK and European patent law, and is skilled at settling cases in a cost-effective way”.
Wiggin LLP
Media, technology and IP boutique Wiggin may be best known for its copyright and trademark expertise, but it also packs a punch on the patent side, particularly when it comes to engineering and electronics innovations. The practice received a boost in July 2020 with the arrival of former Barclays global IP head and fintech oracle Calum Smyth, who has abundant software and high-technology knowhow, having counselled Barclays through its digital transformation in recent years. “Calum has unrivalled breadth of knowledge in law and client management, shows technical flair and can embrace new and complex technical areas. He is a truly original thinker with great commercial acumen.” He joins IP head Sara Ashby, another all-rounder who makes light work of briefs where patents intersect with other IP rights and fraught contractual disputes. “She has a razorsharp legal brain, but is still very commercial and
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client focused, and determined to get the best results for her clients. This all equates to a great success record.” Matters across the IP spectrum and extending into competition law are effortlessly dispatched by Michael Browne, who can quickly tease out the knots in cross-border disputes and joint development and licensing negotiations. He recently represented construction companies Permavent and Greenhill Industrial Holdings in a patent entitlement battle. See p1090 for firm profile
Wilmer Cutler Pickering Hale and Dorr LLP Since consummate litigator Justin Watts came on board in 2017, the London outpost of this USheadquartered firm has been running hot on the radar: major high-technology, consumer goods and life sciences multinationals are increasingly seeking it out when must-win litigation looms. Watts enjoys a burnished reputation on the market thanks to his achievements over the years for the likes of HP, Sony Computer Entertainment and Johnson & Johnson. Alongside him is chemist Matthew Shade, a redoubtable ally in complex cross-border proceedings in fields as diverse as consumer electronics, medical devices and oil and gas. Another Swiss Army knife of a practitioner, though with a focus on pharmaceutical disputes, is solicitor-advocate Anthony Trenton, who has fought the corner of his clients in the country’s highest courts.
Withers & Rogers LLP
Premier prosecution outfit Withers & Rogers arrives in the IAM Patent 1000 this year as “a standout firm that deserves recognition – it is highly capable and respected”. With a base in Munich and numerous multilingual attorneys on deck, it can offer a truly pan-European service; and its business-minded practitioners never fall down technical rabbit holes, but keep client strategy and commercial objectives front and centre on all instructions. Chairman Karl Barnfather has done much to foster this creative, rewarding approach; he also shares his wisdom through frequent speaking engagements at conferences, including in his capacity as chair of the Licensing Executives Society IP Strategy Committee. See p1094 for firm profile
Other recommended experts
Based at Mohun Aldridge Sykes, meticulous patent attorney Christopher Aldridge is “reliable, friendly and feels like an extension of an in-house patent team”. “He leaves no stone unturned in his research and his extensive knowledge of the worldwide patent industry ensures clients can confidently sell their
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United Kingdom: England products around the globe.” Armed with a PhD in microbiology, Goodwin Procter’s Malcolm Bates has a flair for the fine print of life sciences transactions. Precision prosecutor and SPC expert Paul Brady of Abel & Imray is a biotechnology and pharmaceutical maven whose fluency in German proves immensely helpful to his European practice. Colleague James Ford – formerly a research scientist at QinentiQ – specialises in the automotive and aerospace fields, and excels at coordinating matters across Asia-Pacific and the Middle East. Former JA Kemp litigator Tom Carver has found a new home at Gunnercooke – he “provides practical, client-tailored, astute advice in all circumstances, and coordinates efficiently across overseas territories”, with China a particular specialty. Simon Chalkley draws on almost three decades’ experience in his innovative IP transactional practice, which he recently took to Keystone Law; franchising and technology transfer agreements and IP contract disputes of every flavour fall within his remit. Also at Keystone Law, English and Scottish-qualified Fiona Nicolson has similarly chalked up some 30 years in the game; she is an adroit negotiator of international licensing transactions for players ranging from startups to multinationals. The technically versatile Neil Coulson heads the global patent practice at Baker Botts; he provides incisive counsel on both IP strategy and cross-border licensing and transactions, and additionally brings advertising and sponsorship know-how to the mix. Clyde & Co’s Ralph Cox is a fan favourite among pharmaceutical generics, though no technology is off limits: his recent credits include acting for Oxford Nanoimaging Ltd in an inventorship and ownership dispute. Duncan Curley – the founder of IP litigation boutique Innovate Legal – combines legal nous with keen technical acumen, thanks to his PhD in medicinal chemistry. At Haley Guiliano, naval engineering expert Peter Hale is an all-rounder who is equally adept at portfolio management as he is in litigation and licensing scenarios. Former Mathys
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& Squire strategist Ilya Kazi recently established his own practice, IK-IP, in a move that made waves in the industry at large. He offers commercially tailored, cost-effective advice to innovators of all stripes. Mike Knapper heads Norton Rose Fulbright’s IP department and assists on all aspects of patentrich commercial arrangements, including portfolio structuring, licensing and collaboration agreements, and M&A deals. At Brown Rudnick, Mark Lubbock provides future-focused IP and data privacy counsel across the contentious/non-contentious divide in wide range of sectors, with biotechnology a forte. Ashurst’s David Wilkinson is a formidable advocate for clients in disputes before the English courts and an astute representative in deal negotiations. Litigation and transactions are likewise the metiers of his colleague Don McCombie, who has an intuitive grasp of inventions in the oil and gas, software, life sciences and consumer goods spheres. Jones Day’s Alastair McCulloch loves diving deep into technically complex, multi-jurisdictional patent litigation; IP-related arbitration and trade secrets know-how are further strings to his bow. McCarthy Denning’s resident IP transactions ace is Jennifer Pierce: she “provides incisive and concise advice, can rapidly identify the crux of an issue and explains complex legal issues in an understandable and easily digestible way”. Anchoring Baker McKenzie’s international IP practice in the United Kingdom, Hiroshi Sheraton is a skilled coordinator of cross-border patent litigation whose biochemistry and molecular biology credentials grant him added technical insight. US-headquartered Finnegan’s patent star across the Atlantic is Anthony Tridico: his instant recall of both European and US case law and PhD in physical chemistry give him the tools to deal with the most technically and legally challenging patent briefs. AA Thornton’s Craig Turner has a PhD in neurophysiology and turns out precision patent applications for heavyweights in the oil and gas, biotechnology and pharmaceutical sectors.
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Ashby, Sara Partner – Wiggin LLP sara.ashby@wiggin.co.uk | www.wiggin.co.uk
Sara Ashby is an IP litigator and head of the firm’s IP practice. Strategic and tenacious, she advises on patent enforcement and strategy, and has more than 20 years’ experience litigating patents and other IP rights. She is particularly adept at the ‘non-standard’, her broad experience coming to bear in complex patent cases that involve other IP rights and contractual disputes. As well as litigating in the English Patents Court and the Court of Appeal, Ms Ashby has considerable experience in the Shorter Trials Scheme and Intellectual Property Enterprise Court, which have streamlined procedures and different costs regimes. Ms Ashby is equally comfortable acting for claimants and defendants – whether multinationals or owner-managed businesses – no matter where they are based, in standalone litigation or matters involving parallel proceedings in other jurisdictions. Her clients hail from diverse sectors, including medical devices, automotive, optics and general engineering. Recent wins include invalidating a patent with a certificate of contested validity, relying on the same prior art (Emson v Hozelock (expandable hoses)); invalidating the patent relying on the inventor as expert to prove obviousness and insufficiency (Coloplast v MacGregor (catheters)); and obtaining indemnity costs and novel compensation for currency exchange losses resulting from Brexit (Saint Gobain v Elkamet (automotive)). Ms Ashby is president of AIPPI UK, the national group of the International Association for the Protection of Intellectual Property – a cross-profession international leading non-government organisation for research into, and formulation of policy for, the law relating to the protection of intellectual property. Ms Ashby was an assessor to Lord Justice Jackson in his review of fixed recoverable litigation costs, a contentious area of law reform, and involved in writing the capped costs pilot scheme rules for the business and property courts. She is heavily involved in Oxford University’s postgraduate diploma in IP law and practice, lecturing on IP litigation, and tutoring and examining on designs law. She has served on the Diploma Management Committee for many years. She is a research fellow at Oxford University’s IP Research Centre.
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Wiggin LLP 9th Floor Met Building 22 Percy Street London W1T 2BU United Kingdom T +44 20 7612 7736 F +44 12 4222 4223 See firm profile p1090 Professional associations • AIPPI • EPLAW • UNION-IP
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Barnfather, Karl Partner – Withers & Rogers LLP kbarnfather@withersrogers.com | www.withersrogers.com
Karl Barnfather is a senior attorney at Withers & Rogers LLP, a leading firm of IP specialists, and a member of its electronics, computing and physics group – one of the largest specialist groups in Europe. He is the immediate past Chair after 9 years in the role. The use of intellectual property to help to maximise the commercial value of a business is at the core of Dr Barnfather’s advice to the boards of forward-thinking businesses. In his words, intellectual property “is only a means to an end – namely an enabler for the exploitation of a company’s hard-won innovation”. Dr Barnfather has been at the heart of Withers & Rogers’ development of strategic engagement for companies, recognising that what really counts are commercialisation (in whatever form) and the ability of a company’s IP counsel to use the IP system – from concept to commercialisation – to best meet the company’s objectives. With his significant technical experience, Dr Barnfather’s practice predominantly focuses on software (especially financial instruments and web-based systems), telecommunications and medical devices, but also includes aerospace, photonics, high-performance automotive components and sports equipment. His creative approach means that he is particularly adept at taking on difficult software and computerimplemented inventions. He acted as a judge for many years in the electronics category of the Institution of Engineering and Technology (IET) Innovation Awards. Dr Barnfather has represented companies ranging from high-tech university spin-outs to multinational organisations such as Moog Inc, Mitsubishi and WarnerMedia. Across all client sectors, he seeks to ensure that the most appropriate IP protection is obtained to meet clients’ expectations and needs. Dr Barnfather is frequently invited to speak at international and domestic conferences such as at PraxisUnico and the IET’s inaugural commercialisation and innovation conference. He has chaired panel sessions at American Bar Association and Licensing Executives Society conferences and continues to speak at various meetings – especially on thorny software patent issues and increasingly on AI.
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Withers & Rogers LLP 4 More London Riverside London SE1 2AU United Kingdom T +44 20 7940 3600 See firm profile p1094 Professional associations • CPA • EIP • LES
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Boakes, Jason Partner – Secerna LLP jboakes@secerna.co.uk | www.secerna.co.uk
Jason Boakes has practised in the field of intellectual property for nearly 30 years, working primarily in the advanced engineering, electronics and information and communication technology sectors. He co-founded Secerna LLP in May 2011 and in his position as chair, he helps the company continue to build on its impressive track record and reputation for excellence. He advises highly innovative companies, including many industry-leading global corporations and researchled organisations, on how best to protect their intellectual assets and mitigate competitor threat. Mr Boakes provides proven expertise in both scientific and legal fields. He is client focused and develops a deep understanding of the technical fields of those he helps. This, coupled with his formidable understanding of patent law in multiple jurisdictions, means he is able to manage IP assets effectively. He has many years’ experience advising on the preparation, filing and defence of oppositions and appeals at the EPO, as well as more general UK and EPO-focused patent drafting and prosecution. Working closely with the in-house patent teams of many of his clients, Mr Boakes has developed a significant litigation support practice, including providing opinions on the validity of third-party patents, infringement advice and strategic advice concerning future product development. His practice also specialises on the early generation of commercially valuable patent portfolios for start-ups. Much of his work focuses on IP portfolio management, including advising on filing strategies, competitor analysis and patent landscaping. He has a track record in coordinating large global patent portfolios and conducting large-scale due diligence exercises in cluttered IP landscapes. His industry expertise spans: • telehealth; • wireless connectivity; • electro-mechanical devices; • medical devices; • subsea energy products and services; • renewable energy; and • quantum computing
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Secerna LLP The Old Fire Station 18 Clifford Street York YO1 9RD United Kingdom T +44 1904 202900 See firm profile p1064 Professional associations • CIPA • epi
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Bradbury, Simon Partner – Appleyard Lees simon.bradbury@appleyardlees.com | www.appleyardlees.com
Simon Bradbury’s practice encompasses a wide range of technologies within life sciences, biotechnology and medical devices; he represents clients that range from multinationals to universities and innovative spin-out companies. Mr Bradbury can advise on patent strategy and has been involved in multi-jurisdictional litigation in Europe, the United States and Asia Pacific. He also advises on IP-related agreements and helps clients negotiate and structure research and licensing deals and open innovation programmes. He is particularly experienced in formulating IP strategies for start-ups, spin-outs and small and mid-sized enterprises. He enjoys undertaking an in-depth analysis of business plans, budgets, exit strategies and current IP position, and then clearly sets out patent filing programmes to maximise and extend patent protection, while also ensuring trouble-free product launch or licensing by undertaking freedom-to-operate analysis. He handles due diligence for investors and has been involved with a number of company listings on the London Stock Exchange. With previous in-house experience, Mr Bradbury is able to provide an invaluable commercial perspective from which to deliver clear and concise advice to his clients. Indeed, he acts as ‘in-house’ attorney for many of his clients, and often attends board meetings and is involved as a key member of the team during commercial discussions.
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Appleyard Lees The Lexicon Mount Street Manchester M2 5NT United Kingdom T +44 161 835 9655 F +44 161 835 9654 See firm profile p922
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Browne, Michael Partner – Wiggin LLP michael.browne@wiggin.co.uk | www.wiggin.co.uk
Michael Browne is a partner in Wiggin’s IP practice. Mr Browne has a broad practice, advising on the enforcement and exploitation of all forms of IP rights, with a particular focus on patents, trademarks and design rights. He also has experience advising on competition law issues arising in the context of IP matters. Mr Browne litigates across the English courts, with recent cases including patent entitlement proceedings in the High Court, patent infringement proceedings in the Intellectual Property Enterprise Court and trademark and passing off disputes in the High Court (including cases under the Shorter Trials Scheme procedure). He also has international arbitration experience. Mr Browne regularly advises clients on the commercial exploitation of their IP rights, with a particular focus on drafting and negotiating joint development, licensing and franchise agreements, as well as advising on the establishment and operation of selective distribution networks. His clients hail from a variety of industry sectors – from multinational technology companies and industrial and diversified product manufacturers to international fashion brands, high-end interior furnishing retailers, computer games publishers and sports goods suppliers. He is also a visiting lecturer on the Oxford University postgraduate diploma in IP law and practice, teaching IP litigation and design law. He is honorary secretary of the UK group of UNION-IP, a patentcentric professional organisation of European practitioners, and an associate member of the Chartered Institute of Patent Attorneys. He is also a member of the Scientific Committee of the International League of Competition Law – the international parent organisation of the UK Competition Law Association (of which he was the national reporter general for a number of years). Prior to joining Wiggin, Mr Browne was a partner at London-based IP boutique Redd.
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Wiggin LLP 9th Floor Met Building 22 Percy Street London W1T 2BU United Kingdom T +44 20 7776 4760 See firm profile p1090 Professional associations • AIPPI • CIPA • UNION-IP
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Clark, Jane Partner – Mathys & Squire LLP jaclark@mathys-squire.com | www.mathys-squire.com
Jane Clark has over 30 years’ experience in drafting, prosecution, infringement, validity, commercialisation of intellectual property and global IP strategy advice, including freedom to operate, licensing advice, entitlement disputes and competitor monitoring. She has extensive experience in many technical areas, including metrological devices, medical devices, network and communications technology, semiconductor process and integrated circuit technologies, and consumer products – particularly domestic appliances and personal care. With significant experience in negotiating multinational IP agreements and collaboration agreements with high-tech companies and universities, she also has many years’ experience of EPO hearings and recently successfully defended a patent considered of very high value by the client during opposition proceedings. While she has spent much of her career in private practice, she also has substantial experience as an in-house patent attorney, where, in addition to the drafting, filing and prosecution of patent applications, her role included advising on licence and collaboration agreement negotiations with third parties, including a number of universities. From this, she gained valuable insight and experience in optimising IP strategy to add value commensurate with specific commercial business needs and in responding extremely quickly to IP issues – for example ahead of an important product launch. She has applied this experience and insight to her dealings with direct large and medium-scale UK clients and with foreign IP firms, as well as overseas direct clients, providing them with practical advice matching their business needs. She is recommended for her expertise in the latest edition of The Legal 500, in which sources describe her as “a pre-eminent prosecutor” and a “first choice” lawyer; in Managing IP’s IP Stars; and in JUVE Patent’s UK Rankings for the category of patent filing. She has a master’s degree in natural sciences from the University of Cambridge, specialising in physics.
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Mathys & Squire LLP The Shard 32 London Bridge Street London SE1 9SG United Kingdom T +44 2078 300 000 See firm profile p1024 Professional associations • CIPA • epi
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Cozens, Paul D Partner – Mathys & Squire LLP pdcozens@mathys-squire.com | www.mathys-squire.com
Paul Cozens has 30 years of experience in the IP profession. A UK and European parent attorney, a UK trademark and design attorney and a higher courts litigator, he has a wealth of experience and knowledge in the mechanical, electrical and software engineering fields, and leverages his expertise at the forefront of developing techniques for procuring patent protection to assist clients in generating, protecting and exploiting IP portfolios of considerable value. Dr Cozens has a number of major clients across the engineering sector, for whom his significant experience as a practising engineer combined with his legal acumen is an invaluable asset. He has achieved significant success for clients, ranging from small start-ups to multinationals, in building strong and commercially valuable IP portfolios in the mechanical, electrical and software engineering fields. Dr Cozens’s professional experience includes a wide technical and commercial spectrum, from nuclear physics, advanced materials, fibre optics and semiconductor devices, through automotive engineering, environmental engineering, medical devices, fluid mechanics, acoustics, broadcasting, radar, telecoms, to software and advanced business process inventions – including the fast-moving and highly competitive fin-tech sector. Responsible for developing and maintaining strategic patent portfolios, Dr Cozens often works from the ground up alongside senior management to ensure a clear commercial focus in all IP matters. He has been instrumental in helping clients to secure the successful sale and/or licensing of IP assets and has also undertaken a number of critical infringement risk assessment assignments over a wide range of technical areas. Dr Cozens is recommended in the latest edition of The Legal 500, in which sources comment that he “produces work of a consistently high quality and is very commercial. He is especially adept at dealing with software in the context of engineering”. He is also ranked as a Patent Star in the most recent of Managing IP’s IP Stars directories.
892
IAM Patent 1000
Mathys & Squire LLP The Shard 32 London Bridge Street London SE1 9SG United Kingdom T +44 20 7830 0000 See firm profile p1024 Professional associations • CIPA • epi
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Gregson, Anna Partner – Mathys & Squire LLP algregson@mathys-squire.com | www.mathys-squire.com
Anna Gregson has more than 10 years’ experience in providing strategic IP advice. The “commercially savvy” Dr Gregson is recommended as a leading IP strategist in the inaugural IAM Strategy 300 Global Leaders guide. She is noted as a key lawyer in The Legal 500, in which she is praised for being “accessible, knowledgeable” and for her “really outstanding, can-do attitude”. Dr Gregson specialises in strategic patent management, including the drafting and prosecuting applications, as well as coordinating worldwide patent families. As part of devising comprehensive, multilayered protection around her clients’ innovations, she is an expert in patent landscape searching, monitoring of third-party patents and freedom-to-operate analysis. She is renowned for her ability to immerse herself in clients’ businesses, working with them to identify opportunities to add value through new intellectual property, and to provide creative solutions to strengthen their existing portfolios. With her keen commercial focus, Dr Gregson has been instrumental in developing IP portfolios that are the foundation of high-value spin-outs and university-industry partnerships. With a formidable background in biochemistry and biotechnology, Dr Gregson obtained a first-class natural sciences degree, specialising in pathology, from Cambridge University. She also holds a PhD in biochemistry from the University of Manchester for research into the control of angiogenesis in the eye. This technical expertise enables her to provide specialist IP advice in all areas of biotechnology, including technologies such as cell and gene therapies, vaccine technologies, antibodies, viruses and virus-like particles, siRNA technology, biomarkers and diagnostics, expression systems, recombinant protein technology and therapeutics. She also has significant expertise in the fields of plant biotechnology, biopesticides and plant variety rights. Dr Gregson is equally happy working with experienced in-house professionals and start-ups and spin-outs with limited previous IP experience. She has significant expertise in working with university and public sector clients, and is adept at balancing technical excellence, budget control, transparency and predictability to develop bespoke IP strategies to match her clients’ needs.
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Mathys & Squire LLP Abbey House 32 Booth Street Manchester M2 4AB United Kingdom T +44 161 8705900 See firm profile p1024 Professional associations • CIPA • epi
IAM Patent 1000
893
Hamer, Christopher Partner – Mathys & Squire LLP ckhamer@mathys-squire.com | www.mathys-squire.com
Christopher Hamer is one of the world’s leading chemistry attorneys and widely considered as an expert in the field of ionic liquids and related technologies. His expertise extends to numerous chemistryrelated technology areas – in particular food chemistry, natural food supplements, biochemicals, polymers, materials sciences, absorbent articles, catalytic processes and petrochemical technologies. Mr Hamer has many years’ experience of drafting, prosecution, infringement and validity, and commercialisation of university intellectual property and global IP strategy advice, including freedom to operate, licensing advice, entitlement disputes and competitor monitoring. Mr Hamer is also highly experienced in opposition and appeal procedures before the EPO and represents companies and institutions such as BP, Petronas, AAK, D3O, Queen’s University Belfast, QUILL and Smiths Group PLC. He is also experienced in High Court proceedings, having worked on matters including QinetiQ v GEODynamics, Tech 21 v Design Blue Limited and DynaEnergetics GmbH v GEODynamics. Mr Hamer is highly regarded for his pragmatic commercial expertise, which has helped his clients to grow from small and mediumsized enterprises to valuations in excess of £300 million. He is also actively involved in advising on international strategy for Petronas’s highly acclaimed mercury removal processes. Clients have praised Mr Hamer for his “high-quality advice on patents involving a chemistry angle” and “outstanding business acumen”, describing him as “an outstanding lawyer” thanks to his “combination of industry knowledge and attention to detail”. He has been applauded for being “an anchor in the toughest negotiations, he is consistent and concise with his advice. Chris is a truly remarkable combination of technical talent and client care”. Mr Hamer has been recommended in The Legal 500 and the IAM Patent 1000 for a number of years. He has been ranked as a Leading Individual for his technical speciality in the field of chemistry in JUVE Patent’s UK Rankings since the guide was launched in 2019. Mr Hamer heads up Mathys & Squire’s China team.
894
IAM Patent 1000
Mathys & Squire LLP The Shard 32 London Bridge Street London SE1 9SG United Kingdom T +44 20 7830 0000 F +44 20 7830 0001 See firm profile p1024 Professional associations • AIPLA • LES
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Harris, Tim Partner – Osborne Clarke tim.harris@osborneclarke.com | www.osborneclarke.com
Tim Harris is a partner in Osborne Clarke’s IP disputes team in the United Kingdom. He has extensive experience advising on IP strategy, and enforcing and defending IP rights. He also helps clients to understand their IP risks, and to exploit and monetise their IP assets. Mr Harris’s practice is focused on the life sciences and healthcare sector. He has advised on numerous blockbuster pharmaceuticals and biotech treatments, including a number of monoclonal antibody therapies. As well as being involved with UK patent litigation, Mr Harris works frequently on IP disputes that require a multi-jurisdictional team and enjoys the challenge of designing and deploying creative legal and commercial strategies. Mr Harris has a first-class degree in chemistry from Oxford University and has been recognised as a ‘next generation’ lawyer in pharma and biotech by The Legal 500. He is a member of the European Patent Lawyers Association and the International Association for the Protection of Intellectual Property, and co-chairs the Biotech Litigation Subcommittee of the American Intellectual Property Lawyers Association. Mr Harris often speaks about IP issues to an international audience, including at the Technology Transfer Summit, Life Sciences IP Minds Conference and London IP Summit. He has also taught IP topics at The Oxford Said Business School, at a Cambridge University IP summer school and for Oxford University’s postgraduate IP diploma.
Osborne Clarke One London Wall Barbican London EC2Y 5EB United Kingdom T +44 207 105 7144 See firm profile p1036 Professional associations • AIPLA • AIPPI • EPLAW Sample client list • Amgen • Allergan • Santen • Takeda
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IAM Patent 1000
895
Hill, Justin Partner – Dentons justin.hill@dentons.com | www.dentons.com
Justin Hill is a partner at Dentons and head of the firm’s patent prosecution and opposition practices across Europe. All of the leading independent legal directories have consistently recognised Dr Hill as a leader in the IP field. He is based between Munich and London and provides global IP services with a platform covering 174 Dentons offices in 78 countries. Dr Hill is a European patent attorney and patent attorney litigator. Before his law degree, he spent time in research and industry; now in private practice for over 20 years, his work includes advising on IP policy, strategy, efficient portfolio management and commercialisation. Dr Hill’s track record includes working with worldclass technologies and generating portfolios of strategic importance. He is known for his successes in EPO oppositions and appeals and is instructed by many of the world’s leading tech companies. Dr Hill has a first-class honours degree and a PhD from Imperial College London. He and his team can handle any area of technology, with particular technology specialisms in medical devices, digital health, quantum technologies, computer-implemented inventions, software, artificial intelligence and machine learning, autonomous systems, robotics, computer vision, control systems, radars, sensors, semiconductors, cloud and edge computing technologies, user interfaces, machine-to-machine technology, the Internet of Things, renewables and energy, batteries, propulsion, autotech, aerospace and space systems (including satellite applications) smart systems and test and measurement technologies. Dr Hill is well known among tech and investor communities. He sits on the advisory boards of companies and venture capital funds. Dr Hill also hosts Seraphim Space Camp – a global accelerator for space tech businesses – which provides commercial acceleration, advice, individual mentoring, workshops, co-working space and access to corporate partners such as Airbus, Rolls-Royce, Inmarsat and the European Space Agency.
896
IAM Patent 1000
Dentons Jungfernturmstraße Munich 280333 Germany T +49 89 2444 0821 2 F +44 78 8473 8659
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James, Will Partner – Osborne Clarke will.james@osborneclarke.com | www.osborneclarke.com
Will James advises in a wide range of technical industries: biotech, pharmaceutical, medical device, high-tech and electronics sectors. He has a special interest in artificial intelligence (AI) and in particular its applications in the technology and life sciences sectors. Mr James’s practice covers three areas: • strategic life sciences patent and product lifecycle advice; • patent litigation in the UK courts and coordinating multijurisdictional teams in pan-EU enforcement and defence actions; and • tech cases involving SEPs and FRAND issues. The patents on which he has advised include core biotechnologies, particularly therapeutic antibodies, while on the tech side he has advised on electronic and GPS tagging patents, electronic program guides, RFID technology and air traffic control systems – involving SEPs, computer-implemented inventions and software issues. Mr James advised the inventors on the first-ever successful employee inventor compensation claim in the UK courts and he continues to advise clients, both employer companies and employee inventors, in this area. Mr James leads Osborne Clarke’s UK life sciences and healthcare sector; he sits on the IP Advisory Committee of the BioIndustry Association (BIA) and co-leads the BIA Subcommittee on AI. IAM and clients say of him: “The practice kicked up a gear recently with the arrival of Will James, a dynamic litigator who can regularly be tracked down to the High Court.” “His advice is always pragmatic and commercially relevant, he is very responsive and he strives to provide the best service possible.”
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Osborne Clarke One London Wall Barbican London EC2Y 5EB United Kingdom T + 44 20 7105 7774 See firm profile p1036 Professional associations • AIPPI • BIA • EPLAW
IAM Patent 1000
897
Kramer, Dani Partner – Mathys & Squire LLP dkramer@mathys-squire.com | www.mathys-squire.com
Dani Kramer acts for large corporations, small and medium-sized enterprises and start-ups, drafting and prosecuting patent applications, advising on technology-based agreements and handling contentious infringement and validity matters. The advice he provides is pragmatic and commercially relevant to his clients’ businesses, and his many longstanding clients value his strategic, down-to-earth approach. Recommended in the latest edition of the IAM Strategy 300 and featured in the IAM 300 Global Leaders guide, the “highly intelligent” and “vastly knowledgeable” Mr Kramer, who is “committed to excellence in client service”, is described as “a discerning choice of partner when dealing with complicated and sensitive matters”. His practice focuses on the fields of internet television, software, microprocessors, semiconductor devices, artificial intelligence (AI) and machine learning, networking communication technologies and electrical and electronic engineering. In addition, Mr Kramer works on cases relating to mechanical and structural engineering, fuel cells and other environmental technologies, as well as business process inventions. He has secured a number of fundamental patents in the internet television space and handles a portfolio of standard-essential HEVC MPEG patents. Mr Kramer heads up Mathys & Squire’s specialist Israel practice after spending many years working closely with Israeli hightech clients and attorney firms. Mr Kramer has an honours degree and a master’s degree in electrical engineering from the University of the Witwatersrand in Johannesburg. His broad-spectrum undergraduate degree covered a diverse range of subjects, from software, IT and signal processing to power systems, electrical machines and control systems. During his postgraduate degree, Mr Kramer developed AI and machine learning software for the analysis of medical images. As well as being a chartered and European patent attorney, Mr Kramer is a UK design attorney, having filed and prosecuted hundreds of designs in the United Kingdom, via the EUIPO and globally.
898
IAM Patent 1000
Mathys & Squire LLP The Shard 32 London Bridge Street London SE1 9SG United Kingdom T +44 20 7830 0000 See firm profile p1024 Professional associations • CIPA • epi • MIET
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Lim, Daniel Partner – Kirkland & Ellis LLP daniel.lim@kirkland.com | www.kirkland.com
Daniel Lim is a partner in Kirkland’s IP litigation team in London. Mr Lim has a broad practice that covers a wide range of technical fields, but is particularly noted for his expertise in life sciences patent litigation, particularly in the pharmaceutical industry, diagnostics and the emerging fields of precision medicine and cell and gene therapy. He is also experienced in representing clients involved in complex standardessential patent and FRAND licensing disputes. In addition to UK litigation, Mr Lim is frequently called upon to assist clients in devising, coordinating and executing patent strategies for complex multi-jurisdictional disputes on a pan-European and global scale. With dual qualifications in law and biochemistry, and experience litigating in multiple jurisdictions around the world, Mr Lim is readily able to grasp highly technical material and the international dimensions of disputes which are often at the heart of effective strategies in blockbuster litigation for the most sophisticated clients. A strong believer in the power of scientific innovation in healthcare and medicine to improve clinical outcomes and quality of life, and the role of intellectual property in incentivising and protecting innovation, Mr Lim often represents leading companies for whom such innovation is core to their business. Mr Lim is recognised as a thought leader and frequent writer, speaker and commentator on a wide range of topics relating to the life sciences industry and intellectual property generally, notably including the rising gene-editing technology CRISPR. Testament to his standing and leadership in the IP community, Mr Lim currently serves as vice chair of two standing committees of the International Association for the Protection of Intellectual Property – namely, the Biotechnology Standing Committee, and the IP and Genetic Resources/Traditional Knowledge Standing Committee. Mr Lim is listed in IAM Patent 1000, IAM Strategy 300 and WIPR Leaders (2020), and has been recognised as a “Rising Star in IP” by Managing Intellectual Property (2017 and 2018), “Rising Star in Life Sciences” by Expert Guides (2019) and “Rising Star” in the life sciences and UK categories at Euromoney LMG’s Europe Rising Stars Awards 2019.
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Kirkland & Ellis LLP 30 St Mary Axe London EC3A 8AF United Kingdom T +44 20 7469 2214
IAM Patent 1000
899
MacDougall, Alan Partner – Mathys & Squire LLP ajmacdougall@mathys-squire.com | www.mathys-squire.com
Alan MacDougall is a UK and European patent attorney with nearly 30 years’ experience acting for clients of all sizes, including small and midsized enterprises and large multinational companies, advising them on their IP strategies and managing their IP portfolios. He has significant experience in electrical, electronic, acoustics, communications and computing technologies. Mr MacDougall is recommended in the latest edition of The Legal 500. Mr MacDougall’s principal practice areas include strategic IP advice, portfolio management and patent drafting and prosecution. He also has expertise in both opposition and appeal proceedings before the European Patent Office. Mr MacDougall has detailed knowledge of networking and communications technologies, including specialist knowledge of mobile telecommunications standards, and advises on essentiality and licensing activity in this area. He also has extensive knowledge of robotics, control systems, navigation and routing systems, and sensing devices, such as inductive and capacitive sensors used in the automotive and computer fields. He advises extensively on software and business method-related inventions, particularly in the financial services sector. Mr MacDougall has a first-class honours degree in electrical and electronic engineering, as well as a master’s degree in communications, digital signal processing and control from Strathclyde University. Mr MacDougall is a member of the International Association for the Protection of Intellectual Property and regularly attends the Asian Patent Attorneys Association meetings as an observer.
900
IAM Patent 1000
Mathys & Squire LLP The Platinum Building St John’s Innovation Park Cowley Road Cambridge CB4 0DS T +44 1223 851820 See firm profile p1024 Professional associations • AIPPI • APAA
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MacLean, Martin Partner – Mathys & Squire LLP mrmaclean@mathys-squire.com | www.mathys-squire.com
Martin MacLean has over 20 years of IP experience, with particular expertise in patent portfolio management for corporates and government. He is top ranked in Band 1 of Chambers UK, where sources describe him as a “charming and highly capable lawyer with extensive sector-specific experience” and he is praised for his “great scientific knowledge”. Dr MacLean is also recommended in The Legal 500, where he is praised for being “accessible”, “knowledgeable” and for his “outstanding, can-do attitude”. He has been ranked as a World Leading IP Strategist in the IAM Strategy 300 for the past four years, and recognised in the inaugural IAM Strategy 300 Global Leaders list, with sources commenting that Dr MacLean is “an outstanding technology attorney” and “one of the top guns of the UK life sciences patent scene with superb international connections”. Dr MacLean has conducted over 100 European Patent Office hearings, with a success rate of approximately 90%. He has a strong biotech background (PhD in microbial engineering from Warwick University), and specialises in technologies such as protein therapeutics, antibodies, vaccines, expression systems, diagnostic assays and ‘green’ agrochemicals. With extensive high-value (over £10 million) M&A due diligence experience, which he is able to combine with the above core aspects of IP management, Dr MacLean provides valuable advice to his clients that is both informed and balanced. Dr MacLean’s principal practice areas include drafting and global prosecution, defence and opposition, freedom-to-operate and strategic advice. Dr MacLean is a co-author of “Intellectual Property Issues for Bacteriophages”, in Bacteriophages, Springer (2020), pp1-19. This article was written in combination with David Harper and addresses the key challenges (and myths) associated with securing patent rights in this tech space.
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Mathys & Squire LLP The Shard 32 London Bridge Street London SE1 9SG United Kingdom T +44 20 7830 0000 F +44 20 7830 0001 See firm profile p1024 Professional associations • CIPA • epi
IAM Patent 1000
901
Rajendra, Arty Partner – Osborne Clarke arty.rajendra@osborneclarke.com | www.osborneclarke.com
Arty Rajendra is a partner and head of IP disputes in the United Kingdom. She focuses on litigation and has acted in several leading cases in the UK Supreme Court, Court of Appeal, High Court and Court of Justice of the European Union. Ms Rajendra advises on all IP rights. In relation to patents, she acted for Unwired Planet in its landmark UK Supreme Court SEP and FRAND licensing dispute against Huawei. This is the leading case worldwide on how SEPs for 2G/3G/4G telecommunication standards should be licensed to implementers. Other patent cases have involved motion sensing, location tracking, virtual reality, wind turbine technology, monoclonal antibodies and high-tech mechanical inventions. Key cases • Optis v Apple • Unwired Planet v Huawei • Wobben v Siemens • Philips v Nintendo • Glaxo v Genentech
Osborne Clarke One London Wall London EC2Y 5EB United Kingdom
Other practice areas As well as SEP and FRAND issues, Ms Rajendra’s cases have involved all types of validity issues, joint tort-feasorship, indirect infringement (means essential), interplay between national patent revocation proceedings and EPO proceedings, invalid claims left on the register and double patenting. Ms Rajendra has particular experience of urgent relief such as interim injunctions, search orders (executing and supervising), freezing injunctions, Norwich Pharmacal orders and anti-suit injunctions.
See firm profile p1036
T +44 207 105 7850
Professional associations • EPLAW Sample client list • PanOptis • PopSockets • Unwired Planet
Affiliations Ms Rajendra is secretary of the Intellectual Property Lawyers’ Association and sits on the Intellectual Property Enterprise Court Users’ Committee.
902
IAM Patent 1000
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Smithson, Bobby Partner – Appleyard Lees bobby.smithson@appleyardlees.com | www.appleyardlees.com
Bobby Smithson, partner at Appleyard Lees, works closely with inhouse patent departments of large companies in the United Kingdom and overseas. His management of diverse, international patent portfolios includes identification of new inventions, assessment of their patentability, as well as drafting and filing resulting patent applications. Mr Smithson has specialist experience in polymers, coatings and healthcare apparatuses. His practice includes patent work related to product inventions, novel polymers, compositions comprising existing polymers, and new operating processes. He has also drafted and successfully prosecuted patents for various complex mechanical inventions including engines and gearboxes. Mr Smithson frequently handles opposition and appeal matters before the EPO and has been involved in a large number of high-profile cases in the chemical and medical device fields.
Appleyard Lees 1 East Parade Leeds LS1 2AD United Kingdom T +44 113 246 5353 F +44 113 246 5472 See firm profile p922
www.IAM-media.com
IAM Patent 1000
903
Smyth, Calum Partner – Wiggin LLP calum.smyth@wiggin.co.uk | www.wiggin.co.uk
Calum Smyth advises clients on a wide range of IP issues, with a focus on technology, patent and software disputes. In addition to his expertise in contentious matters, Mr Smyth has significant experience in software patentability, technology transactions, brand protection and M&A and structuring issues, and has developed effective IP strategies for a number of businesses. Mr Smyth has worked extensively with start-ups and digital technology companies operating in a variety of industries, including financial services. Mr Smyth sits on the UK Council of the International Association for the Protection of Intellectual Property and has a particular interest in artificial intelligence (AI), distributed ledger and quantum computing. Mr Smyth is regularly approached to share his expertise and insight in various industry publications and is recognised for his ability to “design strategies to add value’’ and his “rare gift of being able to think like a client’’ (IAM Strategy 300 Global Leaders guide 2021). He has recently been involved in a number of AI-related matters, including leading submissions for the UK Intellectual Property Office’s Open Consultation on Artificial Intelligence and Intellectual Property. Mr Smyth joined Wiggin in July 2020, in a move that was widely covered by the legal and industry press. Prior to joining Wiggin, Mr Smyth led the IP function at Barclays Bank and was a legal director at Kraft Foods/Mondelez. Mr Smyth’s experience includes: • managing technology disputes in respect of software and cybersecurity; • advising on multi-jurisdictional patent litigation (including nonpractising entities disputes); • work relating to patentability and enforcement of software patents and specifically relating to cryptography, blockchain and AI; • working on commercial software transactions, including the complex cross-licensing of rights relating to mobile and online platform-based propositions; • advising on the IP aspects of mid-market M&A technology transactions, including IP and patent due diligence; • restructuring institution-wide IP assets, including creating intragroup ownership and licensing regimes; • managing patent prosecution; and • coordinating global freedom-to-operate projects.
904
IAM Patent 1000
Wiggin LLP 9th Floor Met Building 22 Percy Street London W1T 2BU United Kingdom T +44 782 679 1037 See firm profile p1090 Professional associations • AIPPI
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Titmus, Craig Partner – Mathys & Squire LLP cetitmus@mathys-squire.com | www.mathys-squire.com
Craig Titmus is a partner in the life sciences team at Mathys & Squire. Dr Titmus has an extensive European and international patent prosecution practice and coordinates global IP portfolios for a range of clients including start-ups, small and medium-sized enterprises (SMEs), universities, large corporations and the UK government. Dr Titmus has considerable experience within the life sciences sector and is recognised for his ability to work with technologically diverse subject matter. He has a strong track record in identifying and obtaining valuable patent protection for vaccines, diagnostics, therapeutic antibodies, viral vector-based therapies and biofuels, as well as for clients working on interdisciplinary technologies. Dr Titmus is renowned for his pragmatic advice and takes great pleasure in collaborating with clients to identify creative and commercially relevant IP filing strategies. Throughout his career, Dr Titmus has been responsible for establishing and developing IP portfolios that underpin a number of successful UK start-ups and SMEs. Before entering the profession, Dr Titmus gained a first-class bachelor’s degree in molecular biology and biochemistry at the University of Durham where he ranked top in his year. He then went on to the University of Cambridge to undertake a PhD in collaboration with a multinational crop research company, during which time he was awarded various PhD prizes within the Institute of Biotechnology. Dr Titmus was also recommended in the 2019 and 2020 editions of the IAM Patent 1000 guide, where he was described by clients as a “lifesaver” and a “true strategic partner”. He also features regularly in The Legal 500, with the latest edition highlighting Dr Titmus as “an exceptional lawyer” who “presents the commentary and issues with such clarity”.
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Mathys & Squire LLP St John’s Innovation Park Cowley Road Cambridge CB4 0DS United Kingdom T +44 1223 851820 See firm profile p1024 Professional associations • CIPA • epi • IP Mentor for One Nucleus
IAM Patent 1000
905
Watkins, Charlotte Partner – Secerna LLP cwatkins@secerna.co.uk | www.secerna.co.uk
Charlotte Watkins is a chartered and European patent attorney with over 20 years’ experience in the IP industry. She is a co-founding partner of Secerna LLP, a boutique UK-based IP firm, where she heads up the life sciences team. Ms Watkins’s practice encompasses a wide range of technical areas in the life sciences field, with particular focus on the areas of immunology, cancer diagnostics, novel nucleic acids and antibodybased therapeutics. Outside the life sciences field, Ms Watkins has considerable experience prosecuting patents relating to medical devices, wound healing products and 3D printed biological materials, as well as managing global design portfolios. Ms Watkins works for a diverse range of clients, including worldrenowned research organisations, spin-outs, late-stage life sciences companies and blue-chip international companies. A number of these relationships have been in place since Secerna’s inception in 2011. Ms Watkins has extensive knowledge of many aspects of patent procurement and defence worldwide, including the drafting and filing of patent applications, the prosecution of patent applications, the management of global patent portfolios and the devising of IP strategies. She has significant experience in the provision of due diligence services in support of high-value transactions, including mergers, acquisitions and licensing deals, and has prepared numerous freedom-to-operate, infringement and validity opinions in a number of technical fields. She also provides ongoing competitor analysis for her clients and has a growing opposition and appeal practice at the European Patent Office, which includes representing patentees and opponents in complex multi-party proceedings.
906
IAM Patent 1000
Secerna LLP The Old Fire Station 18 Clifford Street York YO1 9RD United Kingdom T +44 1904 202900 See firm profile p1064 Professional associations • CIPA • epi
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White, Andrew John Patent Attorney – Mathys & Squire LLP ajwhite@mathys-squire.com | www.mathys-squire.com
Andrew John White has extensive experience managing international portfolios in the medtech, software, telecoms, and automotive sectors, with a specific focus on electric vehicle and artificial intelligence-based technologies. Very active in the start-up and scale-up community, Dr White is an expert at devising IP strategies for start-up and scale-up businesses, using intellectual property as a lever to help the business grow and add value. Dr White works with a number of accelerators and incubators, providing regular IP workshops and one-to-one IP clinics for start-up businesses covering all aspects of intellectual property ranging from ownership and licensing to patent filing strategies. He frequently presents at and attends tech and start-up-focused events, and his writing on technical subjects is regularly published in both IP and industry publications. Dr White’s PhD in physics had a commercial focus, sponsored by a major pharmaceutical company, resulting in both contributions to various highly regarded peer-reviewed journals and attendance at numerous international conferences. Commended by clients for his proactive approach and understanding of business strategy, he likes to develop long-term relationships with his clients and their technical teams to really understand where a business is going and how IP can be used as a tool to complement those drivers and help the business grow. Dr White has experience handling oppositions and appeals at the European Patent Office, and in obtaining opinions from the UK Intellectual Property Office (UKIPO). In particular, he has experience in using an opinion from the UKIPO to guide the conduct of future litigation in the United Kingdom. In recent years, Dr White’s practice has developed in advising clients on the patentability of computerimplemented inventions (in fields such as bioinformatics, artificial intelligence and blockchain inventions) and how to successfully navigate the patentability exceptions in these areas, both in Europe and abroad, to obtain patents of commercially valuable scope. Dr White is recognised in the latest edition of Managing IP’s IP Stars directory, where he has been ranked as a notable practitioner.
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Mathys & Squire LLP The Shard 32 London Bridge Street London SE1 9SG United Kingdom T +44 20 7830 0000 See firm profile p1024 Professional associations • CIPA • epi • North East Automotive Alliance Sample client list • Dolphin-N2 Limited • DW Windsor Ltd • EarLens Corporation • Foundation Medicine • Ricardo • Wootzano
IAM Patent 1000
907
United Kingdom: Scotland
Despite the ongoing uncertainty caused by the Covid-19 pandemic, innovation in Scotland is still booming – much to the relief of the country’s practitioners. Glasgow is a fertile breeding ground for high-technology start-ups, while Aberdeen maintains its status as an oil and gas hotspot. As the UK patent community as a whole strives to divine what its future will look like now that the jurisdiction has been definitively excluded from the Unified Patent Court plans, Scotland is seeking to forge a new path in the wider patent litigation landscape. As part of this, leading IP practitioners have been engaged in lobbying efforts to establish a Scottish equivalent of the IPEC.
Brodies LLP
Scotland’s largest law firm is home to a vast squad of commercial specialists, including a dedicated IP division that executes flawlessly on both contentious and transactional instructions. Despite some significant personnel departures in recent years, it remains at the top of its game, featuring prominently in much of the IP litigation taking place at the Court of Session and attending to the needs of a glittering roster of life sciences and energy clients. Meanwhile, longstanding relationships with local and international patent attorney firms ensure that patent prosecution briefs are efficiently dispatched. Iain Rutherford and Grant Campbell jointly lead the group. Heading up the IP dispute resolution unit, Rutherford has encyclopaedic knowledge of IT and telecommunications law, and puts in polished performances in patent, domain name and online defamation disputes. Campbell captains the IP technology and outsourcing unit, and has spent more than 25 years parsing the fine print of IP-related transactions in industries ranging from engineering to aviation and finance. Also working on the transactional side are Martin Sloan and David Gallagher. Sloan advises some of the world’s largest private equity firms on pan-European technology transfer agreements and M&A issues; while recent arrival Gallagher was previously commercial director and legal counsel at cell therapy company TC BioPharm, for which he negotiated countless highrolling cross-border deals. As a result, multinationals, SMEs and universities alike all benefit from his “responsiveness and commercially astute advice”.
Burness Paull LLP
Unquestionably the top contentious IP practice in Scotland, Burness Paull continued to burnish its glowing reputation over the last year, appearing in more than half of all actions before the Court of Session. “The firm knows the Scottish court system like the back of its hand and collaborates effectively with in-house teams, concocting sophisticated legal strategies while also becoming rapidly familiar with
908
IAM Patent 1000
Firms: transactions Brodies LLP Burness Paull LLP CMS Cameron McKenna Nabarro Olswang LLP
p956
Dentons
Firms: litigation Burness Paull LLP Brodies LLP CMS Cameron McKenna Nabarro Olswang LLP
p956
Pinsent Masons
the technical aspects.” In a recent highlight, the firm went out to bat for AstraZeneca in a series of infringement and revocation actions against Teva; the matter was masterminded by star litigator and IP head Colin Hulme, whose on-point advice and courtroom prowess have done much to elevate the firm’s profile. His impressive client list includes major players in the life sciences, energy and consumer goods fields, and he holds the distinction of IP specialist accreditation from the Law Society of Scotland. Heading up the non-contentious practice are David Goodbrand and Colin Miller. Goodbrand’s 20-year career has seen him advise extensively on IP commercialisation and strategy, as well as negotiating all manner of technology and data transfer agreements and sponsorship deals, and he also finds time to front the data privacy team and the fintech practice. Meanwhile, IAM Patent 1000 debutant Miller joined the firm in 2019 – qualified in both Scotland
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United Kingdom: Scotland and England, he is a deft negotiator of licensing, franchising, and R&D agreements of every flavour.
CMS Cameron McKenna Nabarro Olswang LLP
Long esteemed for its transactional nous, the Scottish IP team of global juggernaut CMS has been ramping up its contentious capabilities since the 2019 arrival of litigator Neeraj Thomas and can now claim to be a true one-stop shop. Accredited as an IP specialist by the Law Society of Scotland, Thomas has been racking up the wins in high-stakes patent suits at the Court of Session on behalf of a legion of energy, transport and biotechnology players. For IP-rich deals, look no further than Scottish and English-qualified Carina Healy, who has spent more than two decades sewing up strategic IP licensing and commercialisation projects. She recently assisted renewables pioneer MacRebur on a range of collaboration and licensing agreements, and also has many fans in the life sciences. See p956 for firm profile
Creation IP Ltd
Making its sophomore outing in the IAM Patent 1000 for 2021, patent preparation and prosecution outfit Creation IP earns plaudits from competitors for its “commercial and pragmatic attitude”. Engineering is a particular forte for the group, which files with alacrity and crafts forward-thinking portfolio strategies for companies of all stripes, from the youngest start-ups to multinational titans. Leading the charge is cofounder and mechanical engineer Bryn Williams, who knows how best to help burgeoning companies build IP commercialisation strategies from the ground up.
Dentons
A dominant player in the global IP space, Dentons has cultivated a refined non-contentious IP and data offering in Scotland. No transaction is too challenging or negotiation too fraught for the patent group to negotiate; while the abundant resources of the wider firm mean that cross-border and multi-disciplinary instructions can be seamlessly handled. The set has also positioned itself as a trusted ally for myriad university spin-outs. Its twin figureheads are Alison Bryce and Ross Nicol: Bryce combines her IP-related commercial contracts work with a thriving practice encompassing data protection, e-commerce and outsourcing; while the “superb commercial advice” of transactional don Nicol likewise comes interlaced with ancillary e-commerce and data protection knowhow.
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Firms: prosecution HGF Ltd
See p994
Marks & Clerk Murgitroyd Creation IP Ltd Hindles Lawrie IP Lincoln IP Limited Scintilla IP
HGF Ltd
HGF’s vast web of UK and European offices includes three Scottish bases, in Aberdeen, Edinburgh and Glasgow. It has turned patent prosecution into an art form, dispensing strategic advice, assisting with oppositions and filing meticulous patent applications with minimum fuss. Life sciences and electronics are strongholds, while its Aberdeen base has also attracted the attentions of numerous energy companies, including major oil and gas players and renewables outfit Sunamp Ltd, which recently engaged it to manage its portfolio of 200-plus patents. Leading on this matter is managing partner Gary Wilson, who has held the reins since the firm set up shop in Scotland in 2007. “Knowledgeable and responsive, Gary is a strong advocate in oppositions and a guiding light through the European opposition process.” Working alongside him on the Sunamp brief are Jamie Thomson and Jeremy Bretherton. Thomson matches a sparkling track record in oppositions with a discerning approach to the management of global IP portfolios. Bretherton has deep technical expertise – including a PhD from the University of British Columbia in the field of solidstate nuclear magnetic resonance spectroscopy – and garners rave reviews: “At each stage of progressing an application, he can explain the options in a comprehensible manner, providing both options for how to proceed and clear advice on those options. When drafting patent specifications, Jerry absorbs and understand the technical material very quickly; and his first draft of the specification invariably does an excellent job of establishing the protection being sought.” Leading on the electronics side is Susan Elizabeth Keston, a PhD in computational
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United Kingdom: Scotland Individuals: transactions
Individuals: litigation
Alison Bryce Dentons
James Cormack Pinsent Masons
Grant S Campbell Brodies LLP
Colin Hulme Burness Paull LLP
David Gallagher Brodies LLP
Iain Rutherford Brodies LLP
David Goodbrand Burness Paull LLP
Neeraj Thomas CMS Cameron McKenna Nabarro Olswang LLP
Carina Healy CMS Cameron McKenna Nabarro Olswang LLP
David Woods Pinsent Masons
Alistair Lang Thorntons Law Donald Lawrie Lawrie IP Colin Miller Burness Paull LLP Ross Nicol Dentons Iain Rutherford Brodies LLP Martin Sloan Brodies LLP
particle physics who has complex technologies on lock; she has carved a niche advising on computerimplemented inventions at the borderline of patentability. Her fellow electronics maven is Andrew McGettrick, whose PhD is in tunable diode laser spectroscopy; multinationals from as far afield as the United States and Japan, as well as university spinouts, rely on his high-level filing skills and sage advice. A recent highlight is his management of the global patent portfolio strategy of Raptor Oil in relation to its downhole communications technologies. See p994 for firm profile
Hindles
Priding itself on its commercially focused, solutionsoriented service, prosecution shop Hindles has made both the life sciences and the electronics industry its own. Its group of European patent attorneys
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combines limitless procedural knowledge with a diversity of specialisms, ensuring it can quickly get to grips with even the knottiest technical subject matter. Giving the set its name is Alistair Hindle, who began work as a patent attorney in 2002 after a stint as a research scientist. His wheelhouse is broad, covering engineering, electronics, software and medical devices; and he is on speed dial for start-ups and SMEs looking to develop smart patent portfolio strategies. Similarly versatile is his fellow director Robert Gregory, a prolific prosecutor and reliable EPO advocate whose strategically-minded advice in areas from pharmaceuticals to oil and gas is informed by a PhD in chemistry.
Lawrie IP
“Knowledgeable on both the technical and legal sides, Lawrie IP makes it easy for clients to understand all aspects of IP protection. It ensures that patents are maintained and up to date, and considers every factor when assembling arguments and documentation.” The prosecution shop has enjoyed continued growth despite the pandemic, taking on new mandates and adding seven new members of staff in 2020. Its varied clientele comprises heavy hitters from fields such as life sciences, electronics, oil and gas and construction. The group is jointly led by Craig Hutchison and name partner Donald Lawrie. Physicist and electrical/ mechanical engineer Hutchinson is a filer and manager of global patent portfolios par excellence, and a staunch advocate before the EPO; his technical insight encompasses cutting-edge areas such as retinal imaging and robotics. Lawrie is “a pleasure to work with, providing high-quality analysis and
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United Kingdom: Scotland Individuals: prosecution Paul Chapman Marks & Clerk Andrew Docherty Marks & Clerk Richard Gibbs Marks & Clerk Robert Gregory Hindles Alistair Hindle Hindles Craig Hutchison Lawrie IP Anders Jensen Lawrie IP Matthew Lincoln Lincoln IP Limited Peter McBride Scintilla IP Gary Wilson HGF Ltd
work product. A reliable and accountable adviser, he can always be reached and responds quickly to any queries”. Alongside them is electrical engineer Anders Jensen, an authority on software and webbased inventions who regularly advises on global filing strategy in relation to software patents.
Lincoln IP Limited
Oil and gas companies in particular flock to the doors of Lincoln IP in Glasgow and Aberdeen for its precision prosecution service – although the firm’s technically adept, procedurally astute practitioners are fluent in many disciplines, so no technology is off limits. Chief among them is namesake and founder Matthew Lincoln, who draws judiciously on his academic background in physics and mathematics to advise across all areas of engineering, building enduring portfolio strategies, conducting comprehensive IP due diligence and providing fulsome support in litigation. Running the Glasgow office is fellow physicist David Fulton, who holds
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Jeremy Bretherton HGF Ltd Stewart Cameron Cameron IP David Fulton Lincoln IP Limited Timothy Edward Hargreaves Marks & Clerk Susan Elizabeth Keston HGF Ltd Iain McCrindle Scintilla IP Andrew McGettrick HGF Ltd Graham McGlashan Marks & Clerk Graham Murnane Murgitroyd Jamie Thomson HGF Ltd Bryn Williams Creation IP Ltd
a PhD in quantum optics and is on hand to assist private corporations as well as universities and their spin-outs with international filing programmes.
Marks & Clerk
As one of the UK’s largest and best boutiques, and the most prolific filer of PCT patents in the jurisdiction, Marks & Clerk is a force to be reckoned with in Scotland. From offices in Edinburgh, Glasgow and Aberdeen, it provides a wraparound patent prosecution service to clients across the industry spectrum, including many leading universities and A-list food and drink players, which are ably served by the firm’s dedicated practice group. Biologist Paul Chapman manages the Edinburgh office and specialises in cell therapies and antibody and vaccine technologies. A poised performer in EPO oppositions, he also has a flair for obtaining SPCs. Likewise armed with antibody, vaccine and molecular biology knowhow is immunology and microbiology PhD Richard
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United Kingdom: Scotland Gibbs; he previously worked as a research scientist and university lecturer, and leverages this experience to assist universities across the country with their patent protection needs. Meanwhile, energy and environment lead Andrew Docherty is intimately familiar with the dynamics of the oil and gas industry, which made him the perfect person to establish the Aberdeen office; other areas of expertise include medical devices, aerospace and vaping. When it comes to artificial intelligence (AI) and computerimplemented technologies, the practitioners to call are Timothy Edward Hargreaves and Graham McGlashan. Physicist and electronics ace Hargreaves has a cosmopolitan outlook, thanks to time spent in Marks & Clerk’s London and Paris offices, and is as confident appearing in EPO oppositions as he is conducting cross-border due diligence and product clearance projects. Fellow physicist McGlashan is in his element at the interface of different technological fields, such as when AI interacts with technologies; he can quickly decipher the complexities of inventions covering everything from software and video games to defence and renewables.
Murgitroyd
Murgitroyd is a colossus of the Scottish prosecution scene, with a large-scale IP renewal and filing practice comprised of a stellar group of high-quality attorneys. The group has enviable international reach thanks to a network of offices across Europe and Central America; but the story all began in Glasgow, which remains its central base of operations to this day. The lynchpin is Graham Murnane, who is “highly regarded for conducting EPO oppositions” and has been developing this side of the firm’s practice since coming on board 25 years ago, collaborating closely with his colleagues in Munich in the process. Formerly a substantive examiner at the EPO, he knows European patenting procedure like the back of his hand, and also has the technical side down pat thanks to his training as an engineer.
Pinsent Masons
A potent IP player both in England and in Ireland, Pinsent Masons is likewise celebrated for its sophisticated Scottish patent offering. Infringement, revocation, invalidity and licensing disputes all fall within its remit; it is especially adept at handling cases with cross-border threads. The names to note are the “well-regarded” James Cormack and David Woods. Solicitor-advocate Cormack is an all-rounder who handles banking and IT disputes in addition to
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IP litigation; peers observe that he has lately been “nailing his flag to the fintech mast”. IP and IT suits are the bread and butter of Woods, who recently took on AstraZeneca for Teva Pharmaceuticals in highprofile patent revocation proceedings.
Scintilla IP
One of Scotland’s most dynamic and creative independent patent attorney firms, Scintilla continues to burnish its reputation through its flawless work product for electronics, software and telecommunications companies; it has lately been filing bulletproof applications for the likes of Dialog Semiconductor, Internet of Things innovator R3-IoT and the University of the West of Scotland. “Patent applications are always straightforward with Scintilla, even when faced with objections from examiners,” report clients. “Instructions are dealt with promptly and accurately, and their approach on the technical side is thorough and well informed. The team is a pleasure to work with – friendly, personable and understanding – which helps significantly when working on challenging matters.” Front and centre of the operation is managing director and founder Peter McBride, whose no-nonsense approach ensures that he can explain convoluted concepts in a clear, commercially focused way. “Peter is good with detail and is also an excellent listener, which means he takes in the specifics of the technical side quickly and easily,” elaborates one satisfied patron. “He’s never pushy and is always willing to run at our pace.” Also on deck is electrical engineering PhD and former nanofabrication engineer Iain McCrindle: “When Iain is briefed, he grasps the content and depth of the task immediately. He works in close collaboration with inventors, providing valuable updates along the way at an appropriate pace. His input is intelligent, well researched and delivered on time.”
Other recommended experts
Making his debut in the IAM Patent 1000 this year thanks to effusive commendations from peers, Stewart Cameron of the eponymous Cameron IP provides percipient counsel that is always tailored to clients’ commercial goals. Competitors observe that he is “expanding his business rapidly, with some major client wins, especially on the engineering side”. Based at Thorntons Law, Alistair Lang practises across the spectrum of commercial law, but has a special affinity for developing worldwide IP licensing regimes for companies with large global patent portfolios.
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A Zalesov & Partners Patent & Law Firm www.azalesov.com
A Zalesov & Partners Patent & Law Firm is a fullservice IP law firm that gives IP advice, handles litigation (patents, trademarks and designs) and provides services in patent, design and trademark prosecution before the Russian Patent and Trademark Office and the Eurasian Patent Office. The firm’s partners have been working as a team in the IP field in Russia for more than 15 years. In 2017 they set up A Zalesov & Partners and strengthened their position in 2018-2020. Founding partners Aleksey Zalesov and Irina Ozolina have over 20 years of IP protection experience, including representing major international firms in the most sophisticated patent and trademark litigation cases in Russia. The team is known for its very high success rate in patent invalidation and infringement trials (as representatives of both plaintiffs and defendants). Mr Zalesov, who is also the firm’s managing partner, is a seasoned litigator with great experience in high-stake cases. The firm’s professionals have vast experience in IP law, combining IP litigation and prosecution services into one seamless package that always gives the opportunity to go one step further. The partners believe that close cooperation between patent and trademark prosecutors and litigators in all stages of the IP work ensures the maximum benefits to their clients and helps secure stable IP rights with the largest possible scope of protection. The team members are keen to give a balanced and verified view in prosecution, always keeping in mind that the main goal of IP prosecution is the ability to enforce the IP rights effectively. The partners’ and other key individuals’ experience enables the team to view all aspects of their clients’ commercial needs and devise the most suitable strategy accordingly. The firm deals with IP enforcement and anti-counterfeiting, having successfully handled numerous court cases in different regions of the Russian Federation; the firm also frequently applies for customs border measures and has significant experience in representing clients before unfair competition bodies. Years of experience conducting IP disputes between leading players in Russia and abroad enable the team to provide clients with the best practical advice on IP protection and enforcement strategy.
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“One of the most renowned IP boutiques in Russia… High level of speed and efficiency” The confidentiality of client-attorney information is protected by all possible legal and technical means – not least the fact that all partners are attorneys at law. Team The dynamically growing team is formed by known and recommended IP litigators, as well as esteemed and experienced patent prosecutors. To give the clients all-inclusive services in IP protection, the firm can draw on its team members’ qualifications in different fields, with particular expertise in the life sciences, mechanics and applied science. The team’s expertise in invalidation and infringement disputes, along with deep knowledge and skills in different kinds of search, makes A Zalesov & Partners highly qualified to prepare freedom-to-operate and validity opinions – an activity in which the team has deep experience. Clients The firm handles both international clients’ patent and trademark portfolios (including Madrid System registrations) in Russia and neighbouring countries, including member states of the Eurasian Custom and Economic Union, as well as local clients’ IP portfolios in Russia and abroad. Most of the firm’s clients are well-known multinational companies working in the field of pharmaceuticals, biotech, electronics and food technologies. The firm has been protecting many of these clients’ IP rights for years.
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Main address Marshala Rybalko Street 2 Building 9 Office 535 Moscow 123060 Russia T +7 495 781 6080 E office@azalesov.com Professional contacts Aleksey Zalesov Managing partner E zalesov@azalesov.com Irina Ozolina Senior partner E ozolina@azalesov.com Maria Makhlina Partner E makhlina@azalesov.com
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Adams & Adams www.adams.africa
Adams & Adams is an internationally recognised and leading African law firm that specialises in providing IP, corporate and commercial services. As the largest IP law practice in Africa, and a leading corporate, property, and commercial law firm in South Africa, the firm prides itself on the groundbreaking work it does and the valuable client relationships it has built with many of the world’s largest corporations and innovative small and medium-sized enterprises. Based in South Africa with branches and associate offices throughout Africa, the firm works with clients around the globe and across industries to protect, enforce and commercialise their valuable intellectual property. Boasting a range of legal services, from acquisition to enforcement and commercialisation of IP rights, Adams & Adams also offers counsel and the handling of transactions in cases involving patents, copyright, trademarks, designs, licensing and data security. Its expert IP team also litigates these issues in courts across Africa, helping clients achieve success. Likewise, the Adams & Adams general commercial and litigation legal services practices boast competent and powerful teams that are purposed to represent clients in expertise areas such as commercial and contract law, commercial litigation, property services, public procurement, banking and finance, mergers and acquisitions, tax, exchange control, franchising, competition, labour, personal injury, arbitration and dispute resolution, among others. The transactional and litigation experience of its attorneys, the breadth of its practice and the geographical reach of its offices in Africa have enabled the firm to maintain its leading position among law firms involved in commercial services and other corporate transactions, representing a broad array of public and private companies, private equity firms and financial institutions, governmental entities, and other institutions and individuals in almost every type of commercial law situation. The Adams & Adams patent attorneys are all qualified attorneys and patent agents, and have engineering or science degrees. In addition, our professional assistants are fully qualified attorneys with technical degrees and are in the process of qualifying as patent agents. Our highly experienced team of experts and litigators is responsible for local patent and design filing; patent and design
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“Well-organised and effective firm… Works efficiently and responds quickly and with clarity” filings from abroad; patent and design filings in Africa; patent and design litigation; and patent and design recordal and renewals. The team is also able to assist inventors with the licensing of patents. We proudly render a full range of patent legal services in a wide variety of technical fields such as biotechnology, chemical engineering, chemistry and pharmaceuticals, electrical and electronic engineering, mechanical engineering, plastics and polymer technology, computer technology and civil engineering. Adams & Adams is firmly rooted in Africa – with a tenacious belief in the economic growth potential and spirit of the continent. Its head office in Pretoria, the capital of South Africa, provides the perfect gateway through which its partners, supported by some 500 professionals and staff, render a broad range of legal services to clients in Africa and the rest of the world. Through its associate offices and longestablished networks, Adams & Adams serves its global client base throughout the African continent – in matters of intellectual property, commercial law, property and litigation. Hosting regular network meetings with its partners from across Africa, the firm successfully maintains relationships, builds capacity and shares recent updates on IP, corporate and commercial developments taking place across the continent. Branches and associate offices in Africa Adams & Adams has branch offices in Johannesburg, Cape Town, and Durban, and 22 associate offices across Africa – namely, in Angola, Botswana, Burundi, Cameroon, Cape Verde, Egypt, Ethiopia, Gambia, Ghana, Kenya, Lesotho, Liberia, Libya, Mozambique, Namibia, Nigeria, Sierra Leone, Sao Tome and Principe, Swaziland, Tanzania (including Zanzibar), and Zimbabwe.
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Key data • Number of partners: 65 • Number of patent experts: 23 • Languages: English, Dutch, French, German, Italian, Portuguese, and various African languages including Sotho, Tswana, Zulu, Xhosa, Ndebele, SiSwati, Venda, Afrikaans, Tsonga
Main address Lynnwood Bridge 4 Daventry Street Lynnwood Manor Pretoria 0001 South Africa T +27 12 432 6000 F +27 12 432 6599 E mail@adams.africa Professional contacts Natalie Stephan Head of marketing E natalie.stephan@adams.africa Other offices Cape Town, Durban, Johannesburg
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Aera www.aera-ip.com
Aera is a European IP consultancy firm, built on Nordic values but with an international outlook. Founded in Copenhagen in January 2018, the firm now has patent attorneys in Stockholm, Berlin and Madrid and has expanded its operations to cover all aspects of IP protection. The name Aera is derived from the Latin word for ‘era’ (‘æra’ in Danish). The firm’s mission derives from its name – the firm wishes to create a new era in the IP community and become one of the market leaders in IP consultancy. Aera continues to recruit highly experienced patent attorneys to help the firm to become one of the most sought-after IP firms in the region. In 2020 Dan Fischer, former partner at Knobbe Martens in New York, joined Aera, which attracted serious attention from the local community. The recruitment of Monika Colak, former partner at Valea AB, further advanced Aera’s reputation. Through Ms Colak and Mr Fischer, Aera has not only strengthened its position in the Nordic countries, but also extended its portfolio with esteemed new clients such as DSM, Tetra Pak, Yggdrasil, MAERSK and Haldor Topsoe A/S – to name a few. The firm strives to offer high-quality services to clients that use intellectual property strategically and link these strategies to their business needs. The engagement of the firm’s patent attorneys often makes them deeply involved in the innovation process of their clients’ R&D. The creation of successful business results is a common goal between the firm and its clients. Aera offers a vast array of services, from basic prosecution to strategic projects such as invention harvesting, fast-track prosecution through the Patent Prosecution Highway, Unified Patent Court collaborations and IP management. The firm seeks proactively to optimise its clients’ IP handling by creating and maintaining a strong and close relationship to them. Aera’s clients come in all sizes – from the largest global companies to local entrepreneurs and research institutions. What its clients all have in common is that they think big and are or wishes to become market leaders in their respective technology fields. Aera considers the legal aspects of any issue just as clearly and carefully as it does its commercial and technical considerations. This is why clients
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“Nip the challenges that arise for clients in the bud quickly and effectively… Service-minded, act resourcefully and understand the needs and wants of smaller businesses too” make Aera their first choice when they require services such as IP counselling, prosecution, litigation and strategy, or simply need to discuss important business decisions. Aera has the drive of an entrepreneur backed up by experience. The partners had all practised for 10 to 20 years in high-end firms in the region prior to establishing Aera, adding to the success of the firm. Aera has grown from four people in January 2018 to 24 people in February 2021. The opening of the office in Stockholm within two years of the firm’s creation reflects its rapid growth. The firm has invested in a cloud-controlled Mac OS IT system that enables efficient work processes anywhere. This system delivers both cost savings and flexibility to better meet clients’ needs. Flexibility and adaption are keywords in Aera’s approach to its clients, and with a flat hierarchical structure and a one-team-spirit, solving issues is never held back by historical structures or ingrown habits. Aera is a high-end speedboat in a sea of old supertankers. Aera’s patent attorneys are credited for having played a significant role in the creation and protection of landmark portfolios in the life sciences, clean tech, mechanics and electronics industries.
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Main address Niels Hemmingsens Gade 10 Copenhagen K 1153 Denmark T +45 2616 6900 E info@aera-ip.com Professional contacts Nicka Kirstejn Managing partner E nkj@aera-ip.com Anders Sandgaard Partner E as@aera-ip.com Ylva Skoglösa Partner E yms@aera-ip.com Other offices Stockholm Sample client list • Coloplast • DSM • Galderma • GN Hearing • Hempel • Maersk • Motional • Novartis • Qiagen • Sony • University of Copenhagen
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ALFA PATENT STAN ADVOKA Ltd Co www.alfapatent-stanadvoka.com
We believe that quality means reliability and consistency, as well as constantly updated knowledge. ALFA PATENT STAN ADVOKA represents and advises Turkish and international clients in all fields of IP protection. The firm is the result of the merger in 2018 of Alfa Patent, founded in 1997 to help clients obtain, maintain and enforce patents, trademarks and registered designs, and Stan Advoka, which had been very active in the patent field since its creation in 2014. Both historical firms had grown steadily over the years and retained a diverse roster of clients since their inception. Combined, they have become a leading IP firm in Turkey, with its IP professionals offering expertise in numerous fields thanks to their varied backgrounds. The merger has also enabled the firm to broaden its practice and offer comprehensive patent consulting services in almost all technical fields. The life sciences, chemistry and biotechnology group is managed by Selda Arkan, the first-ever qualified European patent attorney in Turkey (1997), while the electrical engineering, electronics and computer-implemented inventions group is managed by Baris Atalay, the secondever qualified European patent attorney in Turkey (2011). The firm’s partners and IP attorneys regularly travel to visit their clients. They are aware of both the risks and prospects that intellectual property poses and offers. They do not lose sight of business considerations. They stay focused on which part of the invention makes financial sense. ALFA PATENT STAN ADVOKA communicates in all three official languages of the European Patent Office. Although it files patent applications
“Nimble boutique… A discerning choice for non-contentious briefs in the electronics, chemistry and microbiology fields” 920
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most frequently in English, its professionals are competent in prosecuting patent applications in French and German as well. ALFA PATENT STAN ADVOKA is involved not only in prosecution; it cooperates with a case-specific selection of litigation professionals in Turkey depending on the preferred language/country of the claimant/defendant to defend their intellectual property in court. At ALFA PATENT STAN ADVOKA, it’s not only the IP professionals who are deeply committed to their work; clients can also rely on a fully dedicated support staff. The firm keeps both digital and physical archives, which are stored in a fireresistant room, thus guaranteeing the safeguard of clients’ records. The team includes the first-ever qualified European patent attorneys in Turkey, currently forming around one-third of all qualified European patent attorneys in private practice in the country. The firm’s daily patent practice revolves around drafting, litigations, freedom-to-operate analyses and preparing legal and technical advice. The team members are active in epi, the International Association for the Protection of Intellectual Property, the International Federation of Intellectual Property Attorneys, the European Patent Litigators Association and the Association of Intellectual Property Experts. They also coordinate courses for the Centre for International Intellectual Property Studies (CEIPI), and are actively involved in the CEIPI tutoring activities. The firm’s professionals have been involved in some notable litigation cases in the past 10 years, including complex cases relating to chemicals and pharmaceuticals, as well as mechanics. In addition to tutoring on behalf of epi and the CEIPI, the firm’s professionals also lecture on IP law at engineering faculties in a number of universities in Istanbul. The firm’s partners have published four books and several articles were made on IP law.
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Main address Dumen Sokak No 11 Gumussuyu Is Merkezi Kat 4 Istanbul 34427 Turkey T +90 212 293 32 42 F +90 212 244 51 21 E alfa@alfapatent.com Professional contacts Selda Arkan European patent attorney E selda.arkan@alfapatent.com Baris Atalay European patent attorney E atalay@stanadvoka.com
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Appleyard Lees www.appleyardlees.com
Appleyard Lees is a leading IP law firm, with over 50 patent attorneys, trademark attorneys and specialist solicitors. The firm offers a commercially intelligent approach to client service, incorporating flexibility and adaptability. Appleyard Lees responds to specific client requirements in an agile way, providing a service tailored to clients’ needs. With a global reach and local knowledge, Appleyard Lees are specialists in patents, trademarks, IP strategy, designs, copyright, contentious proceedings and disputes. Appleyard Lees is positioned to give clients strategic IP advice in the United Kingdom and across the globe, from offices in UK innovation hotspots. Strong client relationships The firm has a fantastic track record of working with some of the world’s most exciting innovators, largest companies and household names, with a number of clients belonging to elite groups including the Fortune 500, Fortune Global 2000, FTSE 100, FTSE 250 and Forbes Global 2000. Appleyard Lees’ clients operate across a diverse collection of industries, including chemicals, retail, consumer goods, electronics, software, bio and life sciences, pharmaceuticals, metals and heavy industry, higher education and hospitality, leisure and tourism. Appleyard Lees is equally proud of the role it has played in the development of high-growth start-up businesses. Appleyard Lees supports a broad range of IP owners and creators, including in-house teams, R&D specialists, owner-managers and branding professionals. Appleyard Lees helps clients protect and monetise their IP assets and manage pre and post-grant challenges, should they arise. Appleyard Lees firm has a collegiate ethos. It strives to fully understand its clients’ IP goals specifically, as well as their commercial goals generally. Appleyard Lees is recognised for fostering and maintaining close-knit, longstanding client relationships, particularly with large multinational organisations.
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Highly specialised and commercial legal team Appleyard Lees is a market-leading firm with an impressive roster of professionals that include patent attorneys, trademark attorneys and specialist IP solicitors, some of whom are dualqualified. Appleyard Lees has great credibility within the market as attorneys are able to assess and anticipate clients’ comprehensive needs across the full spectrum of IP matters, including prosecution, litigation and transactional work. The Appleyard Lees patent team comprises professionals with hybrid academic backgrounds, PhDs and industry experience. Attorneys’ specialisms cover a range of the latest technologies. Appleyard Lees’ team of accomplished trademark attorneys serves one of the most diverse client rosters in the market. The firm’s clients operate across a broad range of industries, including chemical, retail, consumer goods, electronics, software, life sciences, pharmaceuticals, medical, metals and heavy industry. Driving and supporting innovation As a firm, Appleyard Lees is proud to drive innovation and to give back through the Appleyard Lees Growth Fund. The fund has been created to allow high-potential start-ups to grow commercially and allow their products and ideas to reach the market. Grants from the Appleyard Lees Growth Fund are awarded on a case-by-case basis to companies with winning ideas, a track record of innovation and a sound strategic approach. Firm culture The firm recruits the very best professionals who have a passion for their individual areas of specialism. All of Appleyard Lees’ people are supported to develop in their roles with the objective of continuously improving client service.
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“Professional, reliable, and highly competent firm… Quality of its work – particularly in the life sciences field – is of a high standard”
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Main address 15 Clare Rd Halifax HX1 2HY United Kingdom T +44 1422 330 110 F +44 1422 330 090 E ip@appleyardlees.com Professional contacts Dick Waddington Managing partner E dick.waddington@appleyardlees.com Other offices Alderley Edge, Cambridge, Leeds, Manchester
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Arnold & Siedsma www.arnold-siedsma.com
Arnold & Siedsma is an all-round service provider for the protection of intellectual property. Since 1920 your creations have been our motivation. We have 100 years of experience in the legal protection of intellectual property of inventions, trademarks and designs for individuals as well as for large multinationals, in the Netherlands and abroad. In addition to our offices in the Netherlands, Germany, Belgium and Switzerland, Arnold & Siedsma has an extensive global network of agents so that we can protect your rights anywhere in the world. Arnold & Siedsma has more than 60 in-house technical and legal experts with knowledge of all the key innovative sectors, from biotechnology and pharmaceuticals to semiconductors and software. Each client is assigned a patent attorney who specialises in the relevant, specific discipline. Our trademark and design attorneys are the best partners for all issues related to your trademarks or protecting the unique design of your products. Our IP attorneys at law can help you with anything related to legal procedures, such as enforcing your rights. ISO 9001 certified For the past 100 years, we have been a reliable partner for our clients with regard to all IP issues. In 2015 we became the first large Dutch IP agency with foreign offices to be ISO 9001 certified. This certification is valid for all our offices in the Netherlands and abroad. We are proud of our ISO 9001 certification because it represents what our firm stands for: say what you do, do what you say, prove it.
that they will be able to give you the correct advice for your business, in line with your multi-annual planning. Your account manager will maintain regular contact with you. The protection of your innovation is of great economic value, but can also be costly. This is why, at Arnold & Siedsma, we attach great importance to clear communication before, during and after each procedure. Because we are a full-service provider, we have in-house specialists from all IP disciplines. Our patent attorneys, trademark and design attorneys and lawyers work closely together. We can pull together a team from several disciplines for our clients so that problems and issues are communicated between the different disciplines quickly, seamlessly and without unnecessary costs. Arnold & Siedsma is uniquely positioned as a service provider in the Netherlands thanks to this team-based approach. Sectors Our patent attorneys have years of experience in supporting companies in various sectors and are therefore up to date with developments in your discipline. This technical knowledge and experience guarantee the optimisation of your rights. The main sectors in which Arnold & Siedsma is active are chemistry and pharmacy, electrical engineering and physics, mechanical engineering, biotechnology and food, materials and software. Our experienced specialists can assist you with the protection of your intellectual property in these sectors.
Methodology At Arnold & Siedsma we believe in customised work and this can be seen in the way we operate. You can count on our personal attention, a fixed account manager and a regional office in your area. The lines of communication with our specialists are short and personal. Service is our top priority. We stay in close touch with our clients so that we can provide you with a fast and responsive service. With offices throughout the Netherlands and Belgium, our specialists are always within proximity. At Arnold & Siedsma you will be assigned one or two dedicated account manager(s). The long-term relationship ensures that they know your business and strategy, which in turn means
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“Seamless collaboration between bases… Joined-up patent service to its illustrious clientele”
Main address Bezuidenhoutseweg 57 The Hague 2594 AC Netherlands T +31 70 365 48 33 F +31 70 345 21 40 E info@arnold-siedsma.com Professional contacts Joost Grootscholten Managing partner E jgrootscholten@arnold-siedsma.com Other offices Amsterdam, Antwerp, Breda, Brussels, Eindhoven, Enschede, Hasselt, Leeuwarden, Munich, Nijmegen, The Hague, Zug
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ARNOLD RUESS Rechtsanwälte Partnerschaft mbB www.arnold-ruess.com
ARNOLD RUESS is a boutique law firm that specialises in the entire field of intellectual property and has extensive experience in patent litigation. For our clients, we combine the legal excellence developed through many years of experience as IP attorneys working at one of the world’s leading international firms with the personal touch, availability and commitment that a smaller firm can offer. In our view, producing the highest quality legal work and having fun are not mutually exclusive – they are interdependent. We advise clients, ranging from international corporations and mid-sized companies to innovative start-ups, from all around the world in all IP matters. Our area of expertise covers complex and multi-jurisdictional IP litigation, development of comprehensive IP and advertising strategies, licensing negotiations, M&A support, trademark portfolio management and the like. We have a strong client base in the high-tech, pharmaceutical, medical device, consumer goods and chemical industry sectors. Our team of dedicated specialists has worked on a multitude of cases, including several groundbreaking decisions which have been widely reported. Our patent litigation experience includes the following: • Representing a leading pharmaceutical corporation in patent litigation in Germany and coordinating proceedings with 15 other countries. Our global network enables us to provide a onestop-shop solution with IP specialists individually hand-picked for our every client’s unique needs; • Shaping FRAND case law by, among other things, obtaining the first two FRAND judgments from the German Federal Court of Justice following the decision of the Court of Justice of the European Union (CJEU) in Huawei v ZTE (Sisvel/Haier); we contributed to shaping the courts’ awareness of hold-out tactics by only purportedly willing licensees;
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• Being the tip of the spear in the ‘connected car wars’ by representing a global telecommunications client in multiple trial and appeals court cases including a CJEU referral against a global car manufacturer; we gained in-depth knowledge of the automotive industry, its self-image and common negotiation tactics of car original equipment manufacturers and suppliers; • Levelling the international playing field by obtaining the first-ever German anti-anti suit injunction (AASI) against an attempted foreign anti-suit injunction; this AASI, which was copied in several other jurisdictions within a couple of months, helps to prevent forum-shopping by implementers; • Establishing pioneering German case law on biosimilars; by representing clients in the first biosimilar patent cases in Germany, we helped ensure that complex biosimilar development is not mistakenly perceived as a ‘common’ generic drug by the German courts; • Representing the first alternative capsule coffee producer in successful proceedings against Nespresso (trial court and appeals court). We were able to convince the appeal court to change is previous case law, which paved the way for opening the capsule market to competition; and • Being the exclusive IP counsel for Sony Interactive Entertainment, coordinating patent, trademark, design and copyright issues in Germany. Notable clients include Sanofi, Nokia, Alcon, Novartis (Hexal), Gruenenthal and Varta. We are grateful for our clients’ trust and proud of our achievements to serve our clients throughout the past decade. ARNOLD RUESS features in all leading rankings and has won numerous awards for its work in the IP field. What others say about us • “Strongly recommended for decisive litigious actions” • “In particular for difficult patent proceedings where the team meets highest standards in timing and quality” • “They are creative and go the extra mile” • “High-quality, successful firm with a very good track record”
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• “Team with strength and depth” • “Extremely able people – there is some excellent young talent at this firm”
Main address Königsallee 59a Dusseldorf 40215 Germany T +49 211 54 24 40 40 F +49 211 54 24 40 44 E info@arnold-ruess.com Professional contacts Bernhard Arnold Partner E arnold@arnold-ruess.com
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AWA www.awa.com
AWA is a leading IP firm with over 350 employees across 18 offices in Belgium, China, Denmark, Hong Kong, the Netherlands, Sweden and Switzerland. We believe tomorrow is today’s emerging business – rising up from untapped potential within established industries and start-ups. No matter the size or industry, we help our clients create business out of their ideas and innovations. AWA was founded in 1897 by Swedish engineer Anders Wilhelm Anderson. His initials form our company name and remind us of our proud history. We supply the full spectrum of IP law services in prosecution, dispute litigation, aftermarket services, legal advice, strategy and commercialisation. Our IP professionals are experts in patents, trademarks, designs, copyright and domain names. AWA has close to 200 IP specialists (including 70 European patent attorneys and 35 European trademark and design attorneys) helping over 4,300 clients in almost 60 countries with all aspects of their IP needs. Our management team is 55% women, 45% men. What sets us apart • Global – AWA has a presence in Europe and Asia with an extensive network of qualified preferred partners all over the world. We can handle your IP needs globally and follow up in real time. • Diversity and collaboration – our people come from diverse backgrounds with practical industry knowledge. Their technical capability means they understand the small details and how this differentiates you in the marketplace. Our teams comprise engineers and attorneys at law working closely together. This seamless collaboration ensures that the right skillset and legal knowledge is available and utilised for our clients’ innovations. We pride ourselves on our comprehensive trainee programme for future IP leaders. • Strategy – we focus on the long term as building a business is a journey that requires a wellthought-out plan. We support companies throughout the corporate cycle to protect and enforce IP rights, but to also identity and capture the value of intellectual assets. • Digital innovation – we live in the digital era and are constantly looking at tools that reduce workload and save time. From the AWA Client Portal to our domain management services and
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“Rave reviews come pouring in for AWA… Extensive international reach” PatAlert, we are innovating the IP tools of the future. • Employee-owned – AWA is 100% owned by the employees with more than 50% of us choosing to invest or hold shares in the group. This reflects our personal and long-term commitment to both our firm and our clients. AWA Asia Part of the AWA Group, AWA Asia supports and manages international clients’ IP needs throughout the region with a head office in Hong Kong – a location known for its successful business environment, world-class infrastructure and effective legal system. Our Beijing office is our wholly owned licensed trademark agency, enabling us to file and enforce trademarks directly before the China Trademark Office and the administrative authorities, without the need to use local third-party agents. Today China is one of the largest IP markets in the world and is increasingly selected as a key venue for IP litigation by foreign and local entities alike. AWA Asia has a strong value proposition that consists of an East-meets-West approach, with a bilingual and bicultural team of IP professionals (trademark lawyers, patent attorneys and IP strategists). Our international-level service delivery comes with deep local knowledge and is business minded, pragmatic and tailored. Award-winning practice We pride ourselves on our continuous rankings and awards for our work from leading industry publications such as Managing Intellectual Property, World Trademark Review, Intellectual Asset Management, The Legal 500, Chambers and Partners, World Intellectual Property Review, Expert Guides, Who’s Who Legal, Asia IP Experts and Asian Legal Business.
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Our promise AWA’s promise to you, as a client or partner, stems from our mission. You can feel confident that we will deliver on our promise: “we create intellectual prosperity”.
Main address Matrosgatan 1 Malmö 211 18 Sweden T +46 40 98 51 00 F +46 40 26 05 16 E mail@awa.com Professional contacts Thor Mosaker Chief executive officer E thor.mosaker@awa.com Sidsel Hauge Chief executive officer, AWA Denmark E sidsel.hauge@awa.com Ai-Leen Lim Chief executive officer, AWA Asia E ai-leen.lim@awa.com Other offices Beijing, Brussels, Copenhagen, Delémont, Geneva, Gothenburg, Hong Kong, Liège, Linköping, Lund, Maastricht, Oslo, Stockholm Sample client list • ABB • ADB Safegate • Bang & Olufsen • GEA • Mölnlycke • Novartis • Pandora • Signify • Toshiba
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BARDEHLE PAGENBERG Partnerschaft mbB www.bardehle.com
As one of Europe’s leading IP law firms, BARDEHLE PAGENBERG has pooled the strengths and competences of patent attorneys and attorneys at law for more than 40 years, clearly setting itself apart from the competition. The firm’s diverse client base appreciates the intense cooperation between, on the one hand, attorneys at law handling infringement cases before German civil courts through all instances and, on the other hand, patent attorneys representing the client in proceedings before the patent offices and the Federal Patent Court. We are also in a position to offer the invaluable input of our senior consultants who in their previous careers were leading German IP judges or members of the Boards of Appeal of the European Patent Office. BARDEHLE PAGENBERG provides its clients with excellent services in all fields of intellectual property – from the first idea through to the launch, exploitation, enforcement and strategic management, particularly in the areas of patent law, trademark and design law, unfair competition law, antitrust law, as well as licensing and technology transfer. To ensure processes of the highest standard, BAREDEHLE PAGENBERG operates according to a quality management system compliant with ISO 9001 and regularly submits itself to audits for recertification purposes. The full-service IP firm is regularly chosen by global companies which value BARDEHLE PAGENBERG’s international availability and diverse team. Additionally, various German blue-chip companies, small and medium sized businesses and market leaders in niche technologies entrust the firm with their IP business. Industry sector strengths Thanks to its vast experience in various industries, BARDEHLE PAGENBERG covers a very broad spectrum of services. For example, it is well known for its expertise in the automotive industry, telecommunications, software and electronics. Moreover, BARDEHLE PAGENBERG focuses on technical sectors such as mechanical engineering or medical devices, as well as on sports equipment and the pharmaceutical sector. International presence and alliances BARDEHLE PAGENBERG stands out as a law firm with strong cross-national ties between its offices
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in Munich, Dusseldorf, Paris and Barcelona. Furthermore, its reliable global network, includes longstanding relationships with numerous highend IP law firms in the United States and the fast-growing Asian markets. Thus, BARDEHLE PAGENBERG has a global reach with excellent capabilities in cross-border IP disputes. In 2015 BARDEHLE PAGENBERG demonstrated its role as a pioneer once more, forming a partnership with the Singaporean law firm YUSARN AUDREY in the fields of IP law and technology transfer. Between them, the two boutiques provide clients with skilful support in the fields of technology licensing, business-to-business cooperation, and joint venture and merger and acquisition projects. Corporate social and environmental responsibility BARDEHLE PAGENBERG allocates part of its manpower to support social organisations having legal disputes in order to help them safeguard their rights despite tight financial constraints. BARDEHLE PAGENBERG attaches great value to sustainability, which is why the distinct highlevel role of a sustainability officer was created in April 2020. Under his stewardship, the firm has been optimising its every-day green measures, which had already been top-notch. From tangible measures for avoiding waste and paper through to information technology and electronics and policies on making our mobility even more sustainable – the entire team of BARDEHLE PAGENBERG is committed to protecting our planet. BARDEHLE PAGENBERG contributes to making professional life greener – for example, by providing its employees with free tickets for public transport, by offsetting its business flights funding sustainability projects throughout the world via the German non-profit organisation atmosfair. Furthermore, BARDEHLE PAGENBERG continuously strives to become a paperless and carbonneutral office. Team experience and size BARDEHLE PAGENBERG employs people from more than 15 different countries on three continents. With more than 40 years of experience in the IP world, a considerable international clientele and over 240 specialists, BARDEHLE
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“Set the precedent for the hybrid model in Germany… Special strength in the automotive and electronics fields” PAGENBERG is able to simultaneously conduct numerous major infringement, opposition and nullity proceedings. BARDEHLE PAGENBERG boasts an impressive pool of highly skilled attorneys, many of whom play an active role in international professional associations and committees or serve in government expert groups, advisory boards and boards of bar associations, regularly publish books and expert articles on a broad range of topical IP issues.
Main address Prinzregentenplatz 7 Munich 81675 Germany T +49 89 9280 50 F +49 89 9280 5444 E info@bardehle.de Professional contacts Johannes Heselberger Managing partner E heselberger@bardehle.de Other offices Barcelona, Dusseldorf, Paris
Highly regarded worldwide BARDEHLE PAGENBERG and its lawyers regularly rank at the top of the most renowned IP publications.
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Boco IP www.bocoip.com
Established in 1928, Boco IP is an award-winning, internationally operating IP firm that has offered confidential, personal and flexible service for more than 90 years. The firm employs approximately 35 attorneys and IP specialists with deep technological expertise across a diverse range of technical fields. Clients include companies working in medicine, the chemical industry, information and communications technology and the metal, mining and paper industries. Boco IP’s clients have regular contact with an attorney at the firm who understands both the technical aspects of clients’ inventions and the commercial aspects of clients’ businesses. The firm’s 360 IP rights concept provides a comprehensive range of IP services designed to support every aspect of clients’ businesses, from drawing up IP strategies to assisting with innovation capture, protecting technologies or brands, defending existing IP rights or educating the client’s organisation. As one of the longest-established IP firms in the Nordic countries, Boco IP has a long tradition of international collaboration and has created an extensive and trusted international network of patent attorneys. The firm’s innovative atmosphere and care for its personnel have been key factors in its success. A good reputation as an employer continues to attract new experts to the team. Boco IP has also been nominated six years in a row by the Great Place to Work Institute as one of the best places to work in Finland. The firm’s core values influence its daily work: • People-oriented – our work involves close contact with people; we genuinely care about our customers and their individual needs. The
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same of course also holds true for our own personnel. We are open and our operation is based on the respect of each person as an individual. • Reliable – reliability is the cornerstone of all our activities. To us, reliability means commitment to our customers and ethical operation in all circumstances. We have longstanding relationships with many of our customers and we have been operating in the IP field for over 90 years. • Versatility – Boco IP is a versatile expert in the IP field. Our extensive experience has provided us with a profound insight into the field. We also invest in the continuous training of our personnel. • Customer-focused – all of our operations are based on our clients’ needs; listening to the customer is the starting point for everything we do. We actively communicate with our customers and are also capable of great flexibility as the need arises. Boco IP has a wide range of technological expertise in the following sectors and industries: • agriculture; • automotive; • biochemistry and biotech; • biology; • chemistry; • computer science; • construction; • cybersecurity; • diagnostic; • electronics; • energy (eg, wind and solar); • food science; • gaming; • life sciences; • marine; • mechanical engineering; • medical devices; • mining; • nanotech; • oil and gas; • optical science; • pharmaceuticals; • physics; • pulp and paper; • recycling and waste management;
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• • • • • • •
robotics; semi-conductors; sensors; software; sports equipment; telecoms; and water purification.
Our trademark professionals’ solid knowhow of the EU trademark system, among others, enables us to offer assistance and services for trademark matters in the European Union. As professional representatives before the EU Intellectual Property Office, we can assist with the prosecution of all EU trademark applications, as well as with oppositions, renewals and other EU trademark matters. We assist our customers with both threatening and active IP rights disputes in Finland and other countries. We have longstanding and thorough experience in IP litigation and all related matters. Boco IP offers other types of legal services, such as due diligence services and licensing. We also help our customers with cooperation agreements and subcontracting agreements. In addition, we assist our customers with company and technology acquisitions using our technical and legal know-how.
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Main address Itämerenkatu 5 Helsinki 00180 Finland T +358 9 686 6840 F +358 9 686 6844 4 E mail@bocoip.com Professional contacts Karri Leskinen Managing director E karri.leskinen@bocoip.com
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BOEHMERT & BOEHMERT www.boehmert.com
BOEHMERT & BOEHMERT is one of the largest legal practices in Germany specialising in intellectual property. Patent attorneys and attorneys at law work together in the fields of industrial property law, copyright and related fields. Patent attorneys at BOEHMERT & BOEHMERT deal with obtaining, defending and enforcing patents, utility models and design patents, as well as advising on the composition and conclusion of licensing and cooperation agreements. They have expertise in all natural and engineering sciences, including mechanical and electrical engineering, material science, pharmaceutical and polymer chemistry, biochemistry, nanotechnology, semiconductors and software technology. BOEHMERT & BOEHMERT’s client portfolio includes worldwide corporations and leading companies in Germany and abroad. BOEHMERT & BOEHMERT is internationally oriented and has at its disposal a network of tried and tested patent attorneys and IP lawyers across the whole world. Main areas of practice Patent law has been one of the key areas of activity for BOEHMERT & BOEHMERT for more than 85 years – ever since the firm’s establishment. Patent attorneys with a broad range of experience assist clients in the preparation of patent applications and design patent applications, and offer advice and consultation services in infringement cases and the creation of licensing agreements. Our benchmark for success in our patent law work is the provision of solutions that meet our clients’ specific requirements while embracing their economic interests. BOEHMERT & BOEHMERT’s patent lawyers are active in all classic scientific and engineering disciplines. We also have specialists in many more modern disciplines, such as information technology, bio-information technology, biotechnology, environmental technology and news technology. We focus on the acquisition, defence and assertion of patents, utility models and industrial designs, as well as on consulting services in relation to the drafting and conclusion of licence and cooperation agreements. We support companies in building up their patent administration processes and departments, as well as in questions of employee invention rights.
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“One of the best established and most prominent IP outfits in Germany… Continued to act for an enviable clientele over the last 12 months” We represent our clients before the German Patent and Trademark Office, the EPO, the German Federal Patent Court and the Federal Court of Justice. Our client portfolio includes large national and international companies, but also small and medium-sized enterprises that do not have their own patent department and therefore have specific requirements which need to be addressed. Our patent law services cover all matters of patent and utility model law: • We advise our clients in advance of any patent or utility model applications, devise patent strategies and conduct and evaluate prior art research. • We assume responsibility for the preparation and submission of patent applications and steer these through the relevant official examination procedures nationally and abroad. • We represent our clients in opposition proceedings, cancellation proceedings and patent infringement proceedings. • We draw up expert reports on validity and infringement. • We advise on any contractual matters, in particular licensing contracts, and generate, for example, non-disclosure agreements, cooperation agreements and licensing agreements – in each case taking into account antitrust regulations. • We offer consultation to start-ups. • We monitor and administer patents and patent applications. • We offer all the services of an outsourced patent department, including comprehensive
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advice on matters relating to employee inventions. • We assess patents. Trademark law is also part of the firm’s core business. Our attorneys at law are involved in national and international organisations and are proven experts in the field. BOEHMERT & BOEHMERT continuously ranks among the German law firms with the most German and EU trademark applications. BOEHMERT & BOEHMERT’s advisory services cover the whole spectrum of trademark-related matters, with a specific emphasis on anti-counterfeiting measures and enforcement activities for a very broad client base. BOEHMERT & BOEHMERT has a long tradition of practising copyright law. Our attorneys possess extensive experience and a high level of expertise in all advisory matters across diverse creative areas. The firm advises clients on all aspects of copyright, publishing and media law. Further areas of specialisation include: • patent litigation; • IP licensing; • design patents, utility models and employee inventions; • press and personal rights law; • competition and antitrust law; and • IT, domain name and data protection law.
Main address Pettenkoferstrasse 22 Munich 80336 Germany T +49 89 55 96 80 F +49 89 55 96 85 090 E info@boehmert.de Professional contacts Heinz Goddar Partner E goddar@boehmert.de Markus Engelhard Partner E engelhard@boehmert.de Christian W Appelt Partner E appelt@boehmert.de Other offices Alicante, Berlin, Bielefeld, Bremen, Dusseldorf, Frankfurt am Main, Paris, Shanghai
The firm has more than 85 patent attorneys and attorneys at law in total.
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Botti & Ferrari SpA www.botti-ferrari.com
Botti & Ferrari SpA is ranked as one of the top IP boutique firms in Italy. Its professional team includes eight European and Italian patent attorneys, four Italian patent agents and one Chinese patent attorney whose different technical skills cover practically all technical domains. Three trademark specialists – an attorney at law and two EU trademark attorneys – complete the professional team of Botti & Ferrari. Most of Botti & Ferrari’s European patent attorneys have obtained the patent litigation in Europe diploma from the University of Strasbourg. Moreover, two have been substantive examiners at the EPO. Services Botti & Ferrari’s aim is to offer a high-quality service in patent, trademark, industrial design, copyright, licensing and industrial property litigation counselling. This service is provided to a diverse clientele, including small and medium-sized enterprises, multinationals, start-ups, universities and other public research entities. The firm’s professional staff are experienced in drafting and prosecuting European and US patent applications, drafting licence agreements and litigation counselling. The presence of experts in technical fields including electronics, mechanics, chemistry, pharmaceutical chemistry, polymers, food science and biotechnology, as well as in the legal field, enables Botti & Ferrari to offer its clients assistance in all technical and legal areas. Services include: • state of the art, validity and infringementrelated patent searches; • preparation of legal opinions on patent validity and infringement; • drafting, filing and prosecuting national and international patents; • trademark availability searches; • trademark-related legal opinions (validity and infringement); • preparing, filing and prosecuting national and international trademark applications; • representation in proceedings before the Italian Patent and Trademark Office, the EPO and the EU Intellectual Property Office (EUIPO); • preparing, filing and prosecuting oppositions and appeals before the EUIPO and the EPO; • industrial property portfolio audits and
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assistance in due diligence proceedings; and • drafting licence agreements and assistance in related negotiations and litigation. Specialist areas In addition to these activities, Botti & Ferrari’s professionals focus on patent litigation, providing technical assistance and cooperating with the most renowned Italian attorneys at law in the IP field. In addition to acting as ex parte experts, some of them – in particular, Mario Botti, Rinaldo Ferreccio, Paolo Gerli and Umberto Zambardino – often act as technical experts appointed by the courts. Botti & Ferrari’s professionals have been involved in many important litigation proceedings in Italy on behalf of major companies from the United States, Japan, South Korea and Germany, particularly in the fields of electronics, mechanics, chemistry and pharmaceutical chemistry. Often such proceedings have been carried out in parallel with corresponding litigation in other countries, particularly in Germany; therefore, Botti & Ferrari’s professionals are used to interacting with foreign colleagues conducting parallel litigation. This skill, coupled with the qualification achieved through the patent litigation in Europe diploma, makes Botti & Ferrari’s professionals particularly well prepared for facing litigation in the forthcoming Unified Patent Court (UPC). Moreover, the presence of former EPO examiners among Botti & Ferrari’s professionals has favoured the development of a high level of skills in prosecuting European patent applications and
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handling oppositions and appeals before the EPO. This level of competence is shared by all of the firm’s professionals, who consistently work according to the set standard.
Main address Via Cappellini 11 Milan 20124 Italy
International experience Botti & Ferrari has many foreign clients which entrust the firm with filing, prosecution and litigation tasks. Foreign clients value Botti & Ferrari for its technical skills and the linguistic competence of its professionals. All the firm’s professionals are fluent in English and many are also fluent in or have a sound knowledge of German and French. Botti & Ferrari is a founding member of Eurattorneys EEIG, together with a German and a Swiss IP firm. All member firms’ work in or received from Japan, South Korea and China is handled through Eurattorneys EEIG. Botti & Ferrari is also one of the founding members of the UPC Lawyers and Attorneys network, together with IP firms and law firms from other European countries (eg, France, Germany, Switzerland, Belgium, Luxembourg and the Netherlands).
T +39 02 6704 275 F +39 02 6703 250 E info@botti-ferrari.com
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Professional contacts Mario Botti Partner E mario@botti-ferrari.com Other offices Bologna, Brescia, Varese
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Boult Wade Tennant LLP www.boult.com
Boult Wade Tennant LLP is a European IP, patent and trademark firm. It exists to help individuals and businesses protect, manage and enforce their IP rights on a global scale. It is a forward-thinking, dynamic and innovative firm that is considered by its peers and clients as being at the forefront of its practice areas. Who we work with Boult Wade Tennant looks after the multijurisdictional IP issues of major industrial and commercial companies worldwide, as well as portfolio management for a wide range of small and medium-sized enterprises, academic institutions, and independent research and development organisations. The firm is known internationally for its quality of communication, proactivity, creativity and high standards in all matters. The attorneys have broad-based technical knowledge and well-developed commercial acumen, and are creative in their approach. What we do The firm has 48 patent experts, including partners, and patent professionals spread across our UK and European offices. The patent groups are divided by technologies: biotechnology and life sciences; chemical and materials; engineering and designs; and hi-tech and electrical. The groups provide legal advice, technical expertise and subject knowledge, to help protect and enforce IP rights in markets across the world. The firm has handles European Patent Office oppositions and appeals with a high success rate. All technical groups have extensive experience in drafting original patent specifications, prosecution, IP portfolio management, handling oppositions and advising on infringement. Boult Wade Tennant also offers a range of additional services, including providing freedom-to-operate opinions, carrying out IP due diligence exercises, recording assignments and licences worldwide, managing the transfer of large incoming portfolios, patent searching services, competitor watching services and in-house renewals.
“One of the foremost patent prosecution groups in the UK… Breadth of talent means that it can assist clients from any technical field” Spain. Being one of the largest European attorney firms means that we have the breadth and depth of expertise to enable us to handle any sector or scientific field. It also means we can draw upon a wide pool of resources, giving us the ability to match the most economical and appropriate level of experience to a job. Having large teams means we can be flexible in our approach and work to clients’ deadlines, often at short notice. Our teams find unexpected solutions to our clients’ most challenging problems by thinking creatively, and we can help to design global patent strategies that will maximise the value of your IP across borders. A responsible business We are committed to running our business is an ethical and socially responsible way. We want to make a positive contribution to the communities we operate in. We recognise that our activities impact on the environment and we work hard to ensure our actions and buying process minimise waste and are as environmentally friendly as we can be. We have partnered with the Sutton Trust, an organisation that advocates social mobility through summer and university lead programmes in order to open up the profession to all. Our diversity and inclusion committee has enabled these topics to become part of our culture, and we aim to create a positive working environment where everyone feels included and appreciated.
A European firm In addition to our four offices in the United Kingdom, we have offices in Berlin and Frankfurt in Germany, as well as Boult Wade SL in Madrid,
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Main address Salisbury Square House 8 Salisbury Square London EC4Y 8AP United Kingdom T +44 20 7430 7500 F +44 20 7430 7600 E boult@boult.com Professional contacts Rachel Mitting Head of business development and marketing E rmitting@boult.com Other offices Berlin, Cambridge, Frankfurt, Madrid, Oxford, Reading
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BRANN AB www.brann.se
BRANN AB is a full-service law firm specialising in IP rights and commercial law. BRANN provides a full range of professional services and consultancy relating to patents, trademarks, designs, domain names, commercial law and IP management. It performs searches and writes, files and prosecutes applications. BRANN also monitors IP rights and litigates any IP court case in the Swedish and European courts, including the Court of Justice of the European Union and the EPO. Founded in 1949, BRANN has about 50 very skilled and hardworking employees at its service. It hosts European patent and trademark attorneys, attorneys at law, paralegals and IP assistants in four offices in Sweden. The firm also maintains an extensive and productive network of contacts worldwide. BRANN’s IP experts ensure the optimisation of the protection of their clients’ patents, registered designs and trademarks, in Sweden and abroad. The firm is also in good standing to represent clients before the future European Unitary Patent and Unified Patent Court, once it starts operating, by employing attorneys who have already acquired the necessary legal authorisation. Clients and work areas BRANN’s clients range from Swedish companies and individuals to foreign multinationals operating in a broad range of industries, as well as foreign patent and trademark attorneys. BRANN is the essence of the modern IP firm – it boasts experience, knowledge and leading-edge competence, which it uses to continuously help its clients to succeed. BRANN’s mission is to add value to any business by providing optimised, cost-efficient and intelligent solutions for all their clients’ patent, trademark, copyright, design, domain name and dispute resolution needs. BRANN conducts investigations, prepares applications, monitors IP rights and defends against infringement and piracy. BRANN has a good balance of domestic and international clients for patent prosecution, trademark prosecution and legal services, including litigation. The firm’s employees are well educated, not only in law and intellectual property, but also in a variety of technical fields such as molecular biology, electrical engineering, telecommunication, mechanics, nanotechnology
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and chemical engineering. This enables BRANN to maintain full technical competence to successfully represent clients in all technical fields. The firm works with some of the world’s most recognised companies within the life sciences, telecom and automotive industries. Notable cases Board of Appeal decision T 1833/13 – Microwaveassisted peptide synthesis After tough first-instance proceedings, BRANN obtained the complete invalidation of a patent having unduly broad claims before the Board of Appeal. By removing the competitor’s exclusivity, BRANN substantially increased the open market for its client. Stockholm District Court, T19754-10 and T338811, InCoax Networks Europe AB v Quiqom AB Patent litigation – alledged patent infringement claim by Quiqom. Patent invalidation claim by InCoax. The patent was declared invalid and the infringement claim withdrawn. Attunda District Court, Puma AG v Arctic Cat Inc Trademark litigation – infringement by Arctic Cat of Puma’s well-known figurative mark representing a leaping cat. The district court had awarded a preliminary injunction against Arctic Cat, which was later upheld. The Market Court, GlaxoSmithKline Consumer Healthcare AB v Colgate- Palmolive AB Misleading marketing claim – Colgate claimed that their toothpaste was the only one for which it was clinically proven to have immediate effect on dentine hypersensitivity. The claim was found misleading. Working with BRANN BRANN is specialised in IP rights and commercial law. It builds complete IP safety nets made of patents, trademarks, designs, domain names and agreements – all of which can also be the first important steps towards the commercialisation of clients’ ideas. BRANN’s experts give relevant advice, through either an individually selected IP attorney or technical groups with the right expertise for each client’s needs. BRANN carefully crafts solutions, based on deep knowledge, that are time and cost-
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“Mission to provide far-sighted, cost-efficient, valueadded services… Biotechnology and pharmaceuticals are a forte” effective. BRANN’s experts get their inspiration from their clients’ and colleagues’ creativity and their own ability to find high quality, and sometimes unconventional, solutions. Apart from proudly representing clients in court, winning cases globally and protecting their clients’ values, BRANN’s professionals are also fun people. Calling itself “the nicest firm in Sweden”, BRANN is a firm with a heart that actually cares.
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Main address PO Box 3690 Stockholm SE-103 59 Sweden T +46 8 429 10 00 F +46 8 429 10 70 E brann@brann.se Professional contacts Annika Kilander European patent attorney E annika.kilander@brann.se Camilla Mörch European patent attorney E camilla.morch@brann.se Omar Baki Managing partner E omar.baki@brann.se Other offices Gothenburg, Malmö, Uppsala
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Braun-Dullaeus Pannen Emmerling www.bdpe.de
Braun-Dullaeus Pannen Emmerling (BDPE) is a genuine service boutique dedicated to serve clients with the explicit promise to guarantee exclusive, personal advice in the long term. Especially when it comes to IP litigation, BDPE ensures that any risk of a conflict of interest is kept as low as possible. The firm The lawyers at BDPE specialise in litigation and prosecution in the field of intellectual property and combine branch-specific and technical expertise with legal competence. The firm’s partners have been well known in their fields for over 20 years and are among the few established experts in their clients’ industries. This means we can support you not only in an advisory capacity, but also as real business partners who understand your business. The firm’s expertise is focused on patent and utility model law, on trademark, design and copyright law, as well as on competition, domain and employee invention law. BDPE’s client portfolio includes worldwide corporations and leading companies in Germany and abroad. The firm works with an international network of contacts with other law firms and patent attorneys. Competence BDPE’s competence lies in legal representation in patent, trademark and design litigation, as well as in copyright and competition proceedings, protecting innovations, new technologies and products, brands and new designs, and handling the corresponding grant, appeal and opposition proceedings. The firm provides strategic advice on patent portfolios and in all areas of IP law. BDPE advises and represents its clients across a broad range of technical areas: automotive, computer technology, electrical engineering, electronics, food and beverage production, LED technology, mechanical engineering, medical technology, optical technology, photovoltaic technology, physics, semiconductor technology, software, telecommunications and video/audio encoding. BDPE further specialises in the following industries and sectors: consumer goods, energy suppliers and providers, fashion, furniture and household retailers and media and communication agencies. As a matter of principle, we do not exclude any business sector or field of technology.
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“Rave recommendations from clients… A wealth of international contacts” Team Our team is currently composed of nine patent attorneys and three attorneys at law based in offices in Dusseldorf and Munich, Germany. The firm and its patent attorneys are frequently recommended by renowned publications and ranking organisations, and have garnered a truly remarkable amount of praise since the founding of the firm in 2019. The firm is already one of the most active in patent litigation before the German courts, especially in connection with mobile communications and electrical engineering patents. Our lawyers have been involved in various high-profile patent litigation proceedings, many of which have concerned standardessential patents and have had international implications. Partners Friedrich Emmerling and Karl-Ulrich Braun-Dullaeus are highly regarded in Germany, particularly for their work in the telecommunications field and for their activities in German nullity proceedings before the German Federal Patent Court. Diversity BDPE promotes diversity! Our attorneys and office staff represent a multitude of nationalities from Europe, Asia and the Americas, and speak as many as 10 different languages. This makes it possible, for example, for our firm to interact directly with a broad client base across the globe and understand cultural differences. We are committed in our hiring practices to seek out diverse lawyers and office staff and to ensure that they are strategically invested in and advanced. We are further dedicated to nondiscriminatory hiring practices and believe that a diverse staff is essential to our practice and success.
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Main address Ottostrasse 4 Munich 80333 Germany T +49 89 21 53 819 0 F +49 89 21 53 819 19 E mail@bdpe.de Professional contacts Karl-Ulrich Braun-Dullaeus Equity partner E braun-dullaeus@bdpe.de Heinrich Pannen Equity partner E heinrich.pannen@bdpe.de Friedrich Emmerling Equity partner E friedrich.emmerling@bdpe.de Other offices Dusseldorf Sample client list • Adidas • Continental • Deutsche Telekom • Huawei Technologies • Philip Morris • XXXLutz Marken
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Brinkhof www.brinkhof.com
Brinkhof was established as an independent Dutch law firm in 2005. Its lawyers are dedicated, experienced litigators, advisers, drafters and negotiators. They serve clients from innovative industries, including high-tech, pharma, medical devices, media, telecoms, retail, food, fashion and financial services. The breadth of knowledge and depth of specialist experience of its professionals makes Brinkhof a centre of legal expertise for modern markets. Brinkhof’s IP practice is one of the broadest in the Netherlands. Brinkhof’s is recognised as one of the leading patent law firms in the Dutch market. We have an impressive track record of success in international patent litigation and our patent lawyers are among the best and most experienced in the country. Our experts are particularly skilled at fitting seamlessly into any international litigation team and can efficiently coordinate the European aspects of the most complex cases. As a leading independent firm, we are free to pick the best foreign counsel in each jurisdiction for each case. Moreover, we have excellent fluent foreign language capacities – not just in English, but also German, French and Italian. A recent example of our high-profile coordination work in parallel European (and global) patent litigation is representing Heineken in the worldwide patent dispute against Anheuser-Busch Inbev, which required leading the coordination of cases pending in the United States, the Netherlands, the United Kingdom, Germany and Belgium Brinkhof distinguishes itself also by its critical mass in all aspects of patent work. With four fulltime patent litigation partners and 11 associates, we are one of the biggest patent litigation teams in the market. Brinkhof often is the first port of call for big cases. In the pharma and biotech fields, Brinkhof works both for originators and generics. In the telecom field, Brinkhof represents some of the world’s largest handset manufacturers, as well as proprietors of standard-essential patents. Brinkhof is also known for its close ties with academia, which helps us to stay constantly abreast of the latest developments. Our people train future UPC judges, lecture at universities and/ or train patent attorneys. As a board member and former president of the European Patent Lawyers Association, Richard Ebbink is very active in the organisation of the EPO’s European Patent Judges
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“One of the strongest players in the Netherlands… Quick on their feet, street-smart and a no-nonsense approach” Conference that takes place in Venice every year. In addition, Koen Bijvank and Daan de Lange are on the editorial board of the leading Dutch IP journal BIE. Mark van Gardingen is a member (and secretary) of the international Standing Committee of the International Association for the Protection of Intellectual Property on the UPC. Mr de Lange and Mr van Gardingen teach at the academy for Dutch patent attorneys and Mr Bijvank teaches a course to candidates training for the legal qualification examination to become European patent attorneys at the Centre for International Intellectual Property Studies of Robert Schuman University in Strasbourg. Brinkhof partners and associates are also much sought after as speakers at conferences and other key industry events. Brinkhof’s solid position in the market is confirmed by top rankings in all the major directories.
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Main address Grote Bickersstraat 74-78 Amsterdam 1013 KS Netherlands T +31 20 30 53 200 F +31 20 30 53 201 E info@brinkhof.com Professional contacts Richard Ebbink Partner E richard.ebbink@brinkhof.com Mark van Gardingen Partner E mark.vangardingen@brinkhof.com Daan de Lange Partner E daan.delange@brinkhof.com Sample client list • Accord Healthcare • Boston Scientific • Celtrion • Dow • Novozymes • OPPO • Sandoz • Synthon • The Broad Institute • Xiaomi
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Bryn Aarflot AS www.baa.no
Bryn Aarflot is a full-service IP boutique and one of Norway’s leading IP firms. It provides services at all levels and across all disciplines of intellectual property and related areas of law, including patent, design and trademark clearance/freedom to operate, filing and prosecution services, as well as legal assistance, enforcement and litigation services within said fields, copyright, unfair competition and more. From its office in Oslo, Norway, the firm assists a number of foreign clients of all sizes in clearing, protecting, licensing and enforcing their intellectual property in Norway, as well as Norwegian companies with similar interests in Norway and abroad. Established in 1947, Bryn Aarflot has strong roots and a long history in the IP environment. Over the years, the firm has built solid and valuable professional relationships with a large network of highly qualified attorneys, law firms and IP agents across the globe, enabling swift and adequate handling of virtually any IP-related challenge its clients may meet, without territorial boundaries. With a strong foothold in traditional patent and trademark prosecution services, Bryn Aarflot has expanded its scope of services into the contentious arena and other aspects of IP-related services, while constantly looking to evolve and adapt according to market trends and demands. Today, the firm stands out as one of Norway’s most successful full-service IP firms. By offering clients a full range of high-quality IP services, Bryn Aarflot assists clients throughout the lifecycle of any intangible asset or IP right. The firm is one of Norway’s largest of its kind, with a strong team of highly experienced lawyers and European patent attorneys covering all fields of technology, intellectual property and related areas of law. It also has a highly experienced administrative staff, ensuring diligent monitoring and handling of deadlines and formal requirements. During the past years, the firm’s litigation work has sharply increased, with several court hearings before both lower and higher courts in matters concerning patents, trademarks, designs, copyright, domain names and unfair competition. A small team of the firm’s lawyers is now working primarily on contentious matters across all disciplines of intellectual property, with a
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“All the technical expertise you could wish for… Tackles highstakes briefs across every industry” particular focus on patents, trademarks, design and unfair competition. The firm currently counts 24 attorneys, including 15 European patent attorneys, of which nine are partners. Of the nine attorneys at law, eight are also partners. In addition, the firm’s chief executive officer, Kristine Aarflot – also a senior partner at the firm – has approximately 20 years of experience as a trademark attorney. Bryn Aarflot is regularly recognised as a top-tier IP firm in Norway by a number of legal publications. The company was named “IP Firm of the Year” by Managing Intellectual Property in 2016, 2017 and 2020, and has been shortlisted for this award, and ranked as a top-tier firm in both trademark and patent prosecution each year for at least the past decade. In 2015-2020, Bryn Aarflot was also ranked in the contentious categories for trademarks/copyright and patents. Several of the firm’s attorneys are regularly named among the top professionals within their respective fields of expertise for different IP awards by other renowned publications, such as the IAM Patent 1000, WTR 1000, Who’s Who Legal, ILO Client Choice Awards (wins throughout 2013-2019) and Legal Media Group’s Expert Guides. Bryn Aarflot made the top rankings in the WTR 1000 for the years 2011 to 2020 and several of its partners were listed in the individual rankings for each of these years. In the 2018, 2019 and 2020 editions of the WTR 1000, the firm had more individuals listed than any other Norwegian firm.
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Main address Stortingsgata 8 Oslo 0161 Norway T +47 46 90 30 00 F +47 22 00 31 31 E mail@baa.no Professional contacts Kristine Aarflot CEO E kaa@baa.no Kristine Rekdal Head of patents E kr@baa.no Anne Wildeng Head of legal E awi@baa.no
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Bugnion SpA www.bugnion.eu
Over its 50 years’ history, Bugnion has grown and expanded to become one of the foremost European and Italian partners in the industrial property market. With a total of almost 250 staff, Bugnion’s network includes 15 offices in Europe and the United States. Leveraging the skills of its 70 qualified attorneys, Bugnion manages a portfolio of more than 9,000 clients worldwide and handles almost 40,000 patents, models and designs, as well as more than 62,000 trademarks – placing the firm among the top three Italian and European patent filers and the top five EU trademark filers in Europe. Sustained by their legal, technical, scientific and linguistic skills and wide-ranging professional expertise both nationwide and worldwide, Bugnion’s professionals are certified attorneys before the international and national authorities relevant to serve their clients – namely, the EUIPO, WIPO, EPO and the Italian patent and trademark offices, UIBM and SIAE. The firm’s professionals’ skills are furthered through in-house training aimed at junior associates and on-going updating programmes for senior associates and partners. Bugnion is a member of the leading associations dealing with industrial and intellectual property worldwide, such as INTA, the International Association for the Protection of Intellectual Property, the European Communities Trademark Association, the Los Angeles Intellectual Property Law Association, MARQUES, the Pharmaceutical Trademarks Group, the American Intellectual Property Law Association, the International Federation of Intellectual Property Attorneys, UNION-IP and the American Bar Association. Today’s businesses operating in the global market are faced with growingly keen competition and changes taking place at an increasingly faster pace. The success of companies is closely linked to their flair, planning and innovating strategy, as well as responsiveness to the market evolution. Bugnion’s network of experienced professionals and consultants actively operates on a national and international scale with a view to enabling clients to develop the best strategies for protecting and making the most of their intangible assets, ideas and investments. Core business The primary goal resides in creating and managing a portfolio of IP and industrial property rights:
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“Potent presence on the Italian market… Regularly hits the top of the filing charts” trademarks, patents, models, designs, copyright, know-how, domain names, plant varieties. Appropriately protected and valued, such exclusive rights and valuable intangible assets generate new resources and help gain major market shares. Checking pre-requisites • Preliminary check-up • Searches and preliminary advice • Regulating relationship between parties Obtaining rights • Registration strategies • Set-up, filing and territorial extension • Prosecution Defence and maintenance • Oppositions • Watch service • Enforcement • Legal and contractual advice • Renewal and yearly fees • Customs surveillance • Trade investigations • Reassignment procedures Client support • Set-up and handling of database • Access to and online reference of client’s IP rights • Training and tutoring, also at client’s head office • Continued supervision and revision of portfolio • Budget estimate Integrated consultancy Committed to ensuring integrated services and thorough consultancy, Bugnion’s team of professionals and consultants partner with companies, associations and bodies. Relying on cutting-edge technologies, the implementation of most effective strategies, great specialisation alongside integrated expertise result into wide-
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ranging advice across all domains of industrial property and IP rights, as well as of science, technology and art. Legal advice • Judicial • Out of court • Industrial property and IP law • Competition law • Advertising law • Commercial law • Corporations law Going international • Market penetration strategies • Sales network (distribution) • Point of sale network (retail) • Partnership strategies • Specialised focus on single countries Research and development • Application for innovation-focused funding • Brand naming • Systematic innovation (TRIZ) Intangible asset valuation • Estimation of economic value and assessment • Licensing and assignment of rights • Due diligence • Technology transfer • Licensing and merchandising • Sponsoring • Brand intelligence
Main address Viale Lancetti 17 Milan 20158 Italy T +39 02 693 031 F +39 02 6930 3501 E fordep-patent@bugnion.eu Professional contacts Cristina Biggi Patent attorney E cristina.biggi@bugnion.eu Marco Conti Patent attorney E marco.conti@bugnion.eu Marco Lissandrini Patent attorney E marco.lissandrini@bugnion.eu Other offices Alicante, Ancona, Arezzo, Bologna, Brescia, Florence, Los Angeles, Milano, Modena, Munich, Parma, Reggio Calabria, Reggio Emilia, Rome, Udine, Verona,
Protection of IP rights online • Web watch • Registration of domain names • Surveillance of domain names • Reassignment procedure and negotiation aimed at the acquisition of domain names
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Carpmaels & Ransford LLP www.carpmaels.com
Carpmaels & Ransford LLP is a leader in the European IP market, having driven innovation in the industry for over 200 years. The firm advises clients on all aspects of intellectual property, including drafting, filing and prosecuting patent and trademark applications; drafting and negotiating licence agreements and other commercial IP agreements; advising on the transfer of property rights; assisting clients with patent restoration matters; and conducting enforcement and revocation litigation. The firm has one of Europe’s largest IP teams serving blue-chip clients across the globe, including Johnson & Johnson, Celgene, Novartis, Ionis Pharmaceuticals, Mars, Micron, Gilead, Raytheon, Regeneron, Takeda, Allergan and Xeros. The firm’s attorneys have considerable technical knowledge, bringing together experience from industry-leading companies, academic research at leading universities and extensive patent expertise in the areas of engineering and tech, chemistry and materials, pharmaceuticals, biotechnology, supplementary protection certificates and information and communication technologies and standards. Through the firm’s fully integrated dispute resolution and transactions teams, the firm is able to provide a holistic service for clients which supports their IP needs from inception to commercialisation. The dispute resolution team, made up of experienced solicitors, barristers and patent attorney litigators, represents clients at all levels of the European Patent Office. The team is also adept at conducting enforcement litigation and revocation actions before the UK Intellectual Property Office and patent, copyright, trademark and other IP litigation in the English courts and the Court of Justice of the European Union, often advising in cases where parallel or related litigation is ongoing in courts across Europe or in the United States. The transactions team is another key part of the firm’s integrated IP offering. As well as advising on the acquisition and licensing of IP rights and other IP-focused agreements (eg, development and collaboration agreements), the team manages multijurisdictional patent/trademark assignment recordal projects, provides specialist advice on the transfer of priority rights and assists clients with the restoration of registered IP rights around the world.
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“A model of excellence when it comes to blended patent prosecution and litigation services… EPO oppositions practice is worthy of special mention”
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Main address One Southampton Row London WC1B 5HA United Kingdom T +44 20 7242 8692 F +44 20 7405 4166 E email@carpmaels.com Professional contacts Hugh Goodfellow Managing partner E hugh.goodfellow@carpmaels.com Other offices Dublin, Munich Sample client list • Allergan • Celgene • Gilead • Ionis Pharmaceuticals • Johnson & Johnson • Mars • Micron • Novartis • Raytheon • Regeneron • Takeda • Xeros
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Cedar White Bradley www.cwblegal.com
Cedar White Bradley (CWB) is a leading regional IP firm that specialises in protecting and enforcing IP rights throughout the Middle East and North African (MENA) region. The breadth of international level services on offer distinguishes the firm’s patents group from that of other firms in the region. Through its combination of technical skills, legal expertise and regional experience, CWB’s patent group excels in: • advising clients on building and managing international patent portfolios and assisting international clients with their Patent Cooperation Treaty (PCT) national phase entry in the jurisdictions that we cover; • preparing opinions, and assessing patent infringement and validity risks to provide product clearance, obtain competitive intelligence and prepare for patent litigation; • conducting prior art searches and preparing patentability and freedom-to-operate opinions; • conducting patent portfolio audits to help R&D organisations make informed decisions about cultivating intellectual property and enable them to effectively transfer and commercialise strategically valuable IP; • establishing IP and technology transfer policies; • developing technology transfer procedures, guidelines, forms and agreements; • assisting in invention reviews and patent committees; and • advising clients on commercialisation of inventions and IP licensing transactions. Patent drafting, filing and prosecution CWB has a team of patent attorneys, consultants and paralegals that work together to draft, file and prosecute international patent applications under the PCT and national patent applications at the various national patent offices across the MENA region. CWB’s patent team devises filing strategies for obtaining optimal patent protection throughout the MENA region, which often includes a combination of: • national patent applications; • PCT applications; and • entering PCT applications into the national phase.
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“Acquits itself with distinction… Results for clients in a straightforward, yet budget-friendly manner” CWB’s regional infrastructure, streamlined processes and experienced staff means that it is able to execute multi-jurisdictional filing programmes in a cost-effective and timely manner. In addition, CWB covers all major markets – including the United States and Europe – through its own attorneys or its global network of trusted agents. CWB’s professionals work in and offer translation services for patent documentation in English, Arabic, French and Farsi. Patent portfolio management CWB offers patent portfolio management services to clients designed to help them identify low value intellectual property (weak, non-strategic, non-commercial patents) that should be divested or abandoned and enable portfolio managers to reallocate their resources and focus on intellectual assets with the greatest potential for successful commercialisation and returns on investment. Technology transfer CWB’s patents group supports research institutions with their technology transfer and commercialisation efforts by identifying and procuring invention management systems; developing procedures and guidelines for evaluating invention disclosures based on ownership, patentability and marketability; analysing the patentability and marketability of inventions and determining ownership and access rights to any resulting patents; identifying and contracting vendors for specialised market reports; reviewing market reports and making recommendations on patent protection, proof of concept, incubation and commercialisation;
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establishing internal committees to review all invention disclosures received by technology transfer offices and make decisions on patenting and commercialisation; establishing programmes to support technology maturation and implementation; and conducting due diligence on potential licensees. Full-service offering CWB offers its clients a full range of IP services. In addition to our patent services, we also offer the full spectrum of trademark portfolio management and maintenance services – everything from brand creation, full availability searches, trademark filings and prosecution, oppositions and cancellation actions, border protection measures, enforcement (administrative and criminal) and civil litigation through all levels of the courts.
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Main address Floor 47, Burj Al Salam Sheikh Zayed Road PO Box 66300 Dubai United Arab Emirates T +971 4 329 7588 F +971 4 329 7571 E dubai@cwblegal.com Professional contacts David Harper Partner E david.harper@cwblegal.com Other offices Amman, Beirut, Cairo, Doha, Manama, Riyadh
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ClarkeModet www.clarkemodet.com
ClarkeModet is the largest IP group across all Spanish and Portuguese-speaking countries, with 10 companies in Europe and Latin America and a multidisciplinary team of over 500 experts. In addition to providing prosecution and enforcement IP services (registration, maintenance, defence and monitoring of IP rights), ClarkeModet offers highly specialised advice to help clients to create impact on the market. The firm’s professionals do so through the transfer, use and profitability of IP assets and by implementing in its clients’ work systems and policies aimed at generating a competitive advantage. The firm’s international presence and local knowledge enable it to offer a unified service of management of patents portfolios, based on integrated work processes across all the countries the firm has a presence in and with the same quality standards and corporate policies. ClarkeModet was founded in Spain in 1879, with the current structure dating back to 1892 following the merger of Clarke y Cia and Agencia General de Patentes y Marcas. The firm started its international expansion in 1940, establishing new IP firms in Portugal and Latin America. The group is currently present in Argentina, Brazil, Colombia, Chile, Mexico, Peru, Portugal, Spain, Uruguay and Venezuela with three international desks (Asia Pacific, Europe and North America). This large infrastructure allows centralised management of large IP portfolios. The company has recently incorporated new technologies in both customer services and internal processes to guarantee quality and speed. ClarkeModet is a pioneer in the use of technologies such as artificial intelligence or blockchain to increase the protection of its clients’ assets in order to face new challenges on digital markets. Patents The firm’s patent professionals excel in handling all aspects of patent work, including prosecution and enforcement. More specifically, they are experts in the protection of patents and knowhow (or trade secret), utility models, industrial designs and plant varieties for both domestic and international clients, as well as in patent portfolio and risk management. The services include prior art search, application drafting and filing before national and international IP offices; protection
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strategy in different countries; filing and answering oppositions; administrative nullity proceedings; freedom-to-operate analysis; infringement and nullity analysis; and licensing and technology transfer. Patent services cover a variety of industries including: • life sciences, chemistry and pharmaceuticals; • retail, education and entertainment; • automotive and mechanical engineering; and • telecommunications, software and electronics. The technical team comprises 97 professionals, including European patent attorneys and PhD holders. ClarkeModet Group is one of the largest filers in volume of patent and trademark applications in all the markets in which its companies are present: • It is the largest filer of patent applications in Spanish and Portuguese-speaking countries; • It is the second largest filer of trademark applications in Spanish and Portuguesespeaking countries; and • The firm currently manages one out of every 10 patents across all Spanish and Portuguesespeaking countries. CSR Through its internal regulations and corporate culture, ClarkeModet supports different social interest initiatives, as well as inclusion and sustainability policies. The main lines of action for its corporate social responsibility (CRS) programme are focused on the promotion of diversity in its teams through its inclusive recruitment policies. ClarkeModet minimises environmental impact through policies such as electronic invoicing and file digitisation, as well as following programmes such as Ecoembes for recycling. CSR initiatives also include sponsoring IP and innovation fostering programmes led by non-profit organisations and universities.
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“Dominant force in Spanish and Portuguese-speaking countries… Excels on all fronts”
Main address Suero de Quiñones 34-36 Madrid 28002 Spain T +34 91 806 5600 F +34 91 806 5607 E info@clarkemodet.com Professional contacts Fernando Strubing Gomes Corporate director of international business development E fgomes@clarkemodet.com Other offices A Coruña, Alicante, Barcelona, Bilbao, Bogota, Buenos Aires, Caracas, Cordoba, Lima, Lisbon, Madrid, Malaga, Mexico City, Montevideo, Murcia, Palma de Majorca, Porto, Rio de Janeiro, Santiago de Chile, São José dos Campos, São Paulo, Seville, Valencia, Vigo
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CMS www.cms.law
The pandemic that will define 2020 and 2021 has put many types of intellectual property in the spotlight – particularly in the life sciences. Who will develop an effective vaccine or vaccines for Covid-19, and how will their IP rights be balanced against the world’s urgent need to exploit those rights? The same question will be asked in relation to any drugs that appear to be effective against the virus. But 2020 has highlighted many other aspects of intellectual property. New systems are being developed for tracking and tracing not only infections, but also the movements of individuals. Remote working on an unprecedented scale is boosting a host of related technologies. Broadcasters are finding new ways of creating content, and businesses are discovering new techniques for remote engagement with their customers. Some IP owners that has traditionally been based in the ‘old’ world are striving to find ways to monetise it online. The development of dozens of technologies has been boosted – the CEO of Microsoft believes we have seen two years of digital transformation in two months. At the other extreme, some distressed businesses, ranging from retailers to publishers, are focusing on their IP rights because those rights are among their few remaining assets with any real value. The crisis will likely see some well-known businesses fail, but some of their brands will re-emerge under new ownership. Some franchise agreements and other contracts that include IP will unexpectedly come up for renegotiation. If lockdown or other restrictions have slowed your R&D or design development, are you at risk of losing out in a first-to-file system? Or perhaps you are running a platform that suddenly has insufficient content? Have you made the necessary technical, environmental restrictions to qualify for protection? Whatever your opportunities or challenges may be in our strange new world, an effective IP strategy will include both commercialisation and enforcement. CMS can help you devise and execute that strategy. Our dedicated team of over 450 specialist lawyers, scientists and patent attorneys can draw on a wealth of experience and deep understanding to meet your business needs – experience gained in acting for some of the world’s best-known
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“Has gone from strength-to-strength… Profile growing on both the litigation and prosecution sides” brands, from banks to tech and media companies, and life science businesses to major fast-moving consumer goods manufacturers. We handle the full lifecycle of IP assets, in both contentious and non-contentious work. Whether you own intellectual property or license it, we can help you maximise the value of the assets in your portfolio, even in such difficult times as these. Brand builders Trademarks play an essential role for both businesses and their consumers. CMS advises on all elements of trademarks and has conducted the second largest number of UK trademark hearings over the past three years. This extensive experience enables us to advise on trademark registrations, oppositions and portfolio management, globally and locally. If disputes arise, we are there to guide you through the litigation process, whether you are pressing or defending a claim locally or across national borders. Innovation protectors The CMS patent attorney practice disrupts the traditional boutique approach to provide a service that meets the needs of modern business practice. High-profile and global life sciences and hitech companies trust us to manage their patent portfolios. Their portfolios are under constant scrutiny – our clients know their assets are in the very best hands. Our attorneys have long-held passions for the sectors we work in, with many having PhDs and/or industry experience in their chosen area. Portfolios are actively managed using a CMSbuilt database that gives clients direct access to their data while enabling us to proactively manage every case.
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Creativity defenders Creativity comes in all forms. It may be a new manufacturing process, an innovative piece of code or how an existing piece of tech can be repurposed for improved usability. This creativity deserves the best defence. Whether it is dealing with trade secrets or applying the latest copyright legislation, the CMS team can handle all matters relating to the copyright and infringements. We establish ownership of copyrighted works and register copyright, we police potential infringements and have substantial experience in copyright litigation..
Main address Neue Mainzer Straße 2-4 Frankfurt am Main 60311 Germany T +49 69 71 7010 E hans.scholten@cms-dsb.com Professional contacts Tom Scourfield Global co-head IP group E tom.scourfield@cms-cmno.com Carsten Menebröcker Global co-head IP group E carsten.menebroecker@cms-hs.com Hans Scholten Intenational business development manager for intellectual property E hans.scholten@cms-dsb.com
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COHAUSZ & FLORACK www.cohausz-florack.de
COHAUSZ & FLORACK was founded in 1954 and now comprises 28 patent attorneys and attorneys at law, as well as approximately 110 support staff. This multidisciplinary law firm has offices in Dusseldorf and Munich. The firm supports clients – both international companies and mediumsized companies in Germany – in all matters relating to IP rights and unfair competition. This includes, among other services, drafting and filing, administration and licensing of extensive property rights portfolios, undertaking searches for third-party IP rights and the associated freedom-to-operate expert opinions, as well as cooperation agreements. COHAUSZ & FLORACK also represents clients in proceedings concerning the infringement and validity of IP rights. The firm sees itself as a strong partner and advises clients proactively, individually and holistically on all IP-relevant issues. To this end, the firm’s 24 patent attorneys and four attorneys at law possess particular expertise in their respective fields and work together as an interdisciplinary, efficient and trusting team. Technical fields COHAUSZ & FLORACK combines the know-how of all technical fields under one roof – from mechanical engineering, electrical engineering and information and communications technology to chemistry and life sciences. In addition, COHAUSZ & FLORACK has extensive experience in IP proceedings in other countries (not only EU member states, but also the United States, China and South Korea) and can rely on its strong network of partner law firms across the world. Internally, COHAUSZ & FLORACK focuses on the long-term development and high-quality training and further education of its employees, all of whom approach the protection of innovations
“One of Germany’s foremost patent firms… Illustrious feedback from its loyal client base” 958
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with unparalleled interest and openness. As a result, COHAUSZ & FLORACK can make a decisive contribution to ensuring that companies invest in developments and remain competitive while enriching society with their ideas. Prosecution of high-tech patent applications The law firm has special expertise in the preparation and prosecution of high-tech patent applications and in the field of inventions that are relevant to technical standards. It also has decades of experience in the prosecution of patent portfolios comprising large international patent families. Patent litigation and nullification proceedings Located in Dusseldorf, the top venue for patent litigation actions in the European Union, the firm’s multidisciplinary team represents blue-chips, as well as small and medium-sized companies – many of the latter being world market leaders in technology. Whenever intellectual property is at stake, COHAUSZ & FLORACK is available to support its clients with the relevant expertise. Patent litigation actions usually go hand in hand with nullification proceedings. Taking place before a separate court and dealt with in separate proceedings in Germany, nullification proceedings represent one of the firm’s main areas of expertise. COHAUSZ & FLORACK has handled over 1,500 nullification proceedings before the German Federal Supreme Court, the German Federal Patent Court, the European Patent Office and the German Patent and Trademark Office. The scope of cases handled ranges from patent infringement actions for pharmaceutical clients involving blockbuster drugs through multinational, multi-patent, standards-related cases in the fields of video compression and other forms of communication to niche market cases for ‘hidden champions’. COHAUSZ & FLORACK believes that collaboration with other law firms helps to generate excellent service for the client’s benefit, rather than a loss of revenue. Throughout COHAUSZ & FLORACK’s history, the firm has played a significant role in the success of the Dusseldorf Higher Regional Court as the leading patent court in Germany. This goes back to its founding years, when the firm accompanied the relocation of the court from Berlin to Dusseldorf in
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the 1950s. Recently, the firm acted as German lead counsel in the AVC/H.264 patent litigation cases, thereby further contributing to the globally renowned Dusseldorf court’s expertise in the field of information technology and electronics. The firm’s reputation is underscored by its attorneys being repeatedly appointed by the Dusseldorf Appeals Court as court experts.
Main address Bleichstrasse 14 Dusseldorf 40211 Germany
Expert opinions Over the past 25 years, COHAUSZ & FLORACK has prepared nearly 4,000 independent expert opinions on the use of patentprotected inventions in the implementation of standardised technologies.
Professional contacts Andreas Thielmann Equity partner E athielmann@cohausz-florack.de
T +49 211 90 490 0 F +49 211 90 490 49 E mail@cohausz-florack.de
Gottfried Schüll Equity partner E gschuell@cohausz-florack.de Arwed Burrichter Equity partner E aburrichter@cohausz-florack.de Other offices Munich
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Cohn, de Vries, Stadler & Co www.cds-ip.co.il
Cohn, de Vries, Stadler & Co is a modern and dynamic firm that was recently established by eight former leading partners from the Reinhold Cohn Group, including partners with international renown and ranking in the most highly regarded professional directories – among them IAM 1000, IAM 300 Strategy and IAM 300 Global Leaders. These partners, together with the other attorneys who joined them in forming the firm, bring together, under one roof, many decades of professional experience in providing high-quality IP services, in a state-of-the-art set-up. The professional team includes 10 patent attorneys, four attorneys at law and eight paralegals. Expertise The firm’s professional IP expertise, technical knowledge and business vision spans a wide range of IP disciplines, markets, industries and technologies. The professionals include patent attorneys with a broad range of technological backgrounds, attorneys at law and others. The technology backgrounds of the patent attorneys include physics, mechanical engineering, electrical and electronic engineering, chemistry, chemical engineering, biotechnology, computer sciences and others. In addition to patents, the firm’s professional team has proven expertise in other IP disciplines, including designs and trademarks. The firm serves clients from a range of industries, including agritech, foodtech, life sciences, digital health, medical devices and equipment, pharmaceuticals, chemistry, cleantech, consumer products, processes manufacturing, water technologies, renewable energy, military technologies, mechanical engineering, automotive, aviation, space, construction and engineering, manufacturing technologies, packaging, electronic devices, semiconductors, optics, electrooptics, laser systems, imaging, digital printing, communications, computer science, electronics, telecommunications, information storage, information security, artificial intelligence and machine learning, big data, material sciences, electrical and electronic engineering, MEMS, and more. The firm also assists clients in monetising their IP assets in licensing, selling and/or enforcing their IP rights.
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“New force in Israeli patent practice… Business-focused, agile service to innovators” Holistic approach With such expertise, Cohn, de Vries, Stadler & Co is equipped to provide its clients with a holistic approach to IP services that is tailored to meet the clients’ business and business development strategy, taking into consideration the competitive landscape, state of technological development, business model and other factors to maximise value. Cohn, de Vries, Stadler & Co is a one-stop professional service provider to knowledge and IP-based enterprises for building and growing value and revenue-generating IP assets. The firm combines many decades of expertise in leading IP professionals from a very wide range of IP disciplines to offer a full gamut of IP services, from in-depth analysis of a patent landscape, expert advice on how to better protect knowledge and ideas, through to the build-up of high-tier valuegenerating portfolios of patents and other IP assets. The firm strives to foster a true partnership with its clients and, through its flexible and creative approach to intellectual property, enable them to achieve their goals, expand their business, and protect and profit from their IP assets. Services The firm offers a wide range of services that includes IP strategy consulting, IP due diligence, patentability studies, freedom-to-operate studies, invention mining, M&A consulting, commercialisation and IP licensing. These professional services are on top of servicing clients in drafting, filing and prosecution of patent applications worldwide, filing and prosecuting design and trademark applications, as well as maintenance of IP rights. The firm’s staff is highly experienced in assisting clients in procuring and maintaining IP rights throughout the world and in representing foreign clients before the Israeli Patent Office.
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Main address Ziv Towers Tower D 24 Raoul Wallenberg St Tel Aviv 6971924 Israel T +972 73 398 9000 F +972 73 398 9049 E info@cds-ip.co.il Professional contacts Ilan Cohn Founding partner E ilanc@cds-ip.co.il David de Vries Founding partner E david@cds-ip.co.il Svetlana Stadler Founding partner E svetlanas@cds-ip.co.il Sample client list • Keter Plastic • Lydos Medical • Strauss Group • Yissum Research Development Company
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COPA Copenhagen Patents www.copenhagenpatents.com
With European patent attorneys highly experienced in European and Danish patent matters, COPA Copenhagen Patents is one of Denmark’s leading IP firms and has received several international awards for its services’ outstanding quality. Who we are We are qualified European patent attorneys with many years of experience in drafting and prosecuting patent applications with a global perspective to ease prosecution in the most popular international markets. COPA Copenhagen Patents is proud of combining individual skills into a team effort and is home to some of the most-esteemed individual patent attorneys in Denmark. Our patent attorneys are backed by a qualified and very experienced patent administrator team working closely with both attorneys and clients to ensure the end goal of providing tailored and qualified service. We cover most areas of technology, but our main focus areas are biotechnology, pharmaceuticals, mechanics and electronics. Clint testimonial: “The COPA team is a forwardlooking, experienced and valuable team. Their understanding of the right patent strategy, their ability to immediately comprehend technical matters in detail and their ability to plan our next move mean that they have led us to many victories and ensured a strong patent position for us. Our cooperation with COPA through many years has been a pleasure, as have their fine service and always efficient effort.” The patent attorney team is made up of European patent attorneys Mikkel Bender, Peter Kim Jensen, Steven Richard Kitchen, Jacob Karstad Meyland and Axel Heimann, as well as Danish patent attorneys Sune Højfeldt, Sylvia Yang, Rune Risgaard, Christian Espersen, Thea Louise Glejbøl and Morten Sode – all of whom are on track to become European patent attorneys. What we do best COPA Copenhagen Patents consistently aims at providing quality advice. We consider our combination of expertise and years of experience, our genuine interest in entrepreneurship and an approach not bound by convention to be unique in the Danish and European market.
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“Young, nimble and dynamic prosecution shop… Cutting edge of the life sciences, clean technologies, mechanics and electronics industries” COPA Copenhagen Patents is highly experienced in handling oppositions and appeals, and team members frequently appear in proceedings before the European Patent Office on behalf of clients in the wind turbine industry and the pharmaceutical industry. Our key opposition and appeal specialists within mechanics and cleantech are Mr Kitchen and Mr Meyland, who regularly appear before these bodies – Mr Kitchen leveraging his previous experience as patent director for a large Danish corporation. Further, our team has experience in assisting clients in opposition cases in other major territories such as China, Japan and the United States. In addition, we have advised client companies in several infringement and validity dispute cases before the Danish and Swedish courts, and Scandinavian litigation work has become something of a speciality for the firm. Mr Bender and Mr Heimann are highly recognised for their tactical skills and frequently advise on highprofile pharmaceutical cases in the Danish and Swedish courts. Likewise, Mr Jensen specialises in Scandinavian patent litigation in the mechanical field. Mr Jensen is a member of the standing panel of expert judges of the Copenhagen Maritime and Commercial Court and chair of the Committee for the Appointment of Court-Appointed Experts.
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Main address Rosenorns Allé 1 Frederiksberg DK-1970 Denmark T +45 3324 0080 F +45 3324 0081 E copa@copenhagenpatents.com Professional contacts Mikkel Bender Partner E mb@copenhagenpatents.com Steven Richard Kitchen Partner E srk@copenhagenpatents.com Jacob Karstad Meyland Partner E jme@copenhagenpatents.com Other offices Munich
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D Young & Co LLP www.dyoung.com
Clients choose D Young & Co for IP services, confident in the knowledge, experience and dedication that has characterised our work throughout our firm’s history. We are proud of our heritage, built through supporting innovative organisations of every shape, size and type. Established by David Young in 1891, we have grown to become one of the United Kingdom’s largest IP firms, serving clients throughout Europe, America, Asia and all global markets. D Young & Co has its finger very much on the pulse of mainstream European patent prosecution. Clients looking for legal, technical and procedural excellence will find it in spades here; D Young & Co is a mixed firm of attorneys at law and patent attorneys, which pays attention to process as well as outcome. More than 200 members of staff are based at offices in London, Munich and Southampton. We remain committed to providing only the best IP advice available – whether working with small and medium-sized enterprises (SME) or global businesses, and whatever the invention, technology or brand. Our client base is diverse and international, including academic institutions, blue-chip and global organisations, research institutes, start-up companies and SMEs, and spans all industry sectors and technologies. We offer a streamlined, cost-effective service to our clients, under one roof, with patent and trademark attorneys working alongside solicitors. We advise and assist not only on UK and EU rights, but also on global portfolio management and enforcement. Patent services D Young & Co has one of the most respected patent teams in Europe, providing the full range of patent services, including: • patent drafting in all relevant jurisdictions; • filing and prosecuting patent applications directly at the UK Intellectual Property Office, the EPO or the International Bureau of WIPO – worldwide prosecution is handled by our network of trusted overseas agents; • representing clients at all levels within the EPO, including oppositions and appeals; • portfolio audit and strategic advice;
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• infringement (freedom to operate) and validity opinions on third-party intellectual property; • litigation in the United Kingdom, Germany and coordination internationally; • due diligence work for funding, stock market flotation, business or project acquisition; • search and watching; • drafting and advising on IP agreements, and on non-disclosure agreements, R&D agreements, licences and assignments; • the exploitation of IP rights for revenue opportunities; and • supplementary protection certificates/patent term extensions. Our attorneys have extensive experience in drafting and prosecuting international patent portfolios through to grant in worldwide jurisdictions. Our patent practice has an enviable track record in EPO opposition and appeal hearings and our attorneys are active in steering legislation and policy in the United Kingdom, Germany and at the EPO, where partners are members of various influential committees. Clients benefit from always working with specialist attorneys and solicitors. Many have either worked in industry or with inhouse legal departments and so have a truly commercial perspective. We are experts in technical areas such as: • biotechnology; • immunology; • molecular biology; • chemistry; • pharmaceuticals; • computer technology; • mobile telephony; • electronic and electrical engineering; • mechanical and manufacturing engineering; and • physics. D Young & Co is able to offer a broad choice and availability of representation. Our patent attorneys, solicitors (in the United Kingdom) and attorneys at law (in Germany) have a significant amount of experience of contentious patent work in the courts of Europe and the EPO, and in working together to create a seamless patent dispute resolution service.
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“Team of more than 50 patent attorneys and solicitors… Tackled a wide range of mandates for an enviable list of household name clients over the last year”
Main address 120 Holborn London EC1N 2DY United Kingdom T +44 20 7269 8550 F +44 20 7269 8555 E mail@dyoung.com Professional contacts Jo Hodson Head of business development E jrh@dyoung.com Other offices Munich, Southampton
The IAM Patent 1000 comments: • “You can’t fault the fantastic quality of the work D Young & Co puts in. It collaborates efficiently to find the best solutions.” • “The group is composed of strong, consistent performers.” • “D Young & Co has its finger very much on the pulse of mainstream European patent prosecution. Clients looking for legal, technical and procedural excellence will find it in spades here; D Young & Co is a mixed firm of attorneys at law and patent attorneys, which pays attention to process as well as outcome.”
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De Clercq & Partners www.dcp-ip.com
De Clercq & Partners is your partner for personalised intellectual property protection and enforcement. We have extensive experience in assisting clients in building up, evaluating and maintaining a relevant intellectual property portfolio which will both maximise your company’s competitive advantage as well as ensuring optimal use of intellectual property assets. Based on the concrete needs of each client, our services may extend from assisting in addressing specific intellectual property issues, to ensuring the complete development of an intellectual property strategy. Where necessary, we help our clients to understand and feel comfortable with all aspects of intellectual property processes and their requirements. We aim to give our clients complete peace of mind in relation to all intellectual property issues and strive to provide advice tailored to clients’ specific requirements.
“One of Belgium’s most prestigious patent prosecution shops… At the forefront, especially in the biotechnology sphere”
Who we are De Clercq & Partners is an established firm of experienced and highly motivated patent attorneys and trademark and design attorneys. We currently have offices in Sint-Martens-Latem, Leuven and Hasselt in Belgium, all very close to Europe’s capital city of Brussels. Our attorneys have strong academic and technological credentials with PhD degrees in science and/or LLM degrees in intellectual property law. The combination of high-level scientific skills and strong expertise in IP law enables us to provide you with the highest standards of service in all aspects of IP practice in Belgium, Europe and across the globe. It is also important to be able to rely on the same quality for the prosecution of your IP abroad, while maintaining a handle on the costs involved. De Clercq & Partners has a strong link with carefully selected and trusted IP firms all over the world, who also rely on our firm for their IP prosecution. This reciprocity ensures that both quality and costs are very closely controlled. Thanks to the international diversity of our professionals, we can offer our services in at least seven different languages.
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Customised IP protection • De Clercq & Partners offers expertise in determining a tailor-made IP strategy and also
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provides strategic advice in that regard. Such services include, among other things: Identifying optimal protection strategy Developing an appropriate IP portfolio, tailored to the product and market Management of IP portfolios with a clear view on costs involved Advising on tax benefits related to innovation income in Belgium Providing strategic advice on the acquisition, maintenance, exploitation and valuation of IP as part of the company’s overall business strategy
Patents De Clercq & Partners provides services in all areas of technology, encompassing among others drafting, filing and prosecution of PCT, European and national patent applications, and representation of parties in examination, oppositions and appeals. We can directly file and validate EP patents in Belgium, and provide worldwide IP services via our extensive network of trusted foreign associates. In order to obtain adequate patent protection for technological developments made in different specialised fields, it is important to know how to bring out aspects of the invention which can be protected and to be aware of the recent developments on these issues. Through its extensive experience in these specific areas of patent protection, De Clercq & Partners is able to provide guidance to clients on how to obtain optimal protection for inventions in these fields as our patent attorneys closely follow both national and international case law.
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Trademarks and designs Our team of experienced trademark and design attorneys offers expertise and services such as the drafting and filing of trademark and design applications. We advise on validity, infringement and the enforcement of our client’s portfolio. To that end, De Clercq & Partners can initiate and conduct opposition, cancellation and/or revocation proceedings before the competent administrations, help clients negotiate friendly settlements, draft co-existence agreements, and so on. We represent our clients directly before the Benelux Office, the European Intellectual Property Office, the World Intellectual Property Office, the French Institute for the Intellectual Property, the United Kingdom Intellectual Property Office, and through a network of trusted foreign associates in all other countries worldwide.
Main address Edgard Gevaertdreef 10A Sint-Martens-Latem 9830 Belgium T +32 9 280 2340 F +32 9 280 2345 E info@dcp-ip.com Professional contacts Ann De Clercq Founding partner E info@dcp-ip.com Other offices Hasselt, Leuven
Awards and recognition We pride ourselves on our continuous rankings and awards from leading industry publications such as Managing Intellectual Property (MIP), the World Trademark Review (WTR), Intellectual Asset Management (IAM), Leaders League and the Financial Times.
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De Vries & Metman www.dvme.nl
De Vries & Metman (DVME) is a Dutch patent attorney firm that is internationally recognised for its high-quality patent services. DVME has offices in Amsterdam, Arnhem and Eindhoven. The firm prosecutes and litigates patent rights for its national and international clients, which range from global players to small and medium-sized companies and start-ups that share a drive for innovation and a passion for technology. Most of our attorneys previously worked in industry, patent offices or law firms. As such, we understand clients’ needs and provide practical and commercially relevant advice. We work proactively and are committed both to building business-relevant patent portfolios for clients and helping to defend clients against the patents of others by, for example, filing oppositions and appeals or advising on circumvention routes. We advise a range of clients from start-ups at the team level to internationally operating companies at the board room level on implementing a patent policy that fits the overall strategy of the business and creating patent awareness throughout the organisation. To that end, we liaise with other experts – for example, tax advisers on using patents as a business tool in international tax schemes. DVME delivers high-quality hands-on services in patent matters in all fields of technology. Our chemistry and life sciences group handles inventions in all areas of chemistry and chemical technology, biotechnology and molecular biology. For example, we are involved in work relating to coatings, adhesives and sealants; biodegradable and renewable polymers; pharmaceuticals, including vaccines, antibodies and drug discovery and formulation technology; fermentation processes and products; food products, food additives and neutraceuticals; and personal and household care products. Our information and communications technology group handles computer-implemented inventions and electronics. For example, we are involved in work relating to telecoms; multimedia and coding standards; wireless sensors and sensor networks imaging and display techniques; algorithms; graphical user interfaces; the Internet of Things; cryptography; artificial intelligence, including deep learning; augmented and virtual reality technology; blockchain; secure multiparty
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computations; fintech; photonics; quantum computation and communication; semiconductor technology; and green technologies, including solar and smart metering. Our engineering group handles inventions in all areas of mechanical and civil engineering. For example, we are involved in work relating to naval construction and offshore technology; energy technologies (eg, wind and solar); greenhouses and horticultural equipment; chemical and pharmaceutical process equipment; food industry; packaging technology and materials; consumer products; medical equipment and devices; light, optics and photonics; and semiconductor manufacturing technology. Beside patent prosecution work, we have a strong expertise in technically and legally complex patent litigation cases. Our attorneys are therefore frequently asked to assist law firms in patent litigation proceedings. We have been involved in many high-profile international patent disputes. Further services include freedom-to-operate analyses, product clearances, due diligence work, assisting clients in domestic and foreign patent issues and licensing matters. We actively participate in different IP organisations and educational bodies, including the Dutch Institute of Patent Attorneys, the Dutch Bar Association, the Institute of Professional Representatives before the EPO, the International Association for the Protection of Intellectual Property Dutch Group, the Examination Committee of the European Qualifying Exam, Delft University of Technology and Leiden University. DVME won the Managing Intellectual Property award for patent prosecution in the Netherlands in 2011, 2012 and 2018, and has been ranked as a top-tier patent prosecution firm in the Netherlands since 2011. It has also been highly recommended as a patent prosecution firm in the IAM Patent 1000 since 2014.
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“Passionate and forward-thinking… Incredible versatility”
Main address Overschiestraat 180 Amsterdam 1062 XK Netherlands T +31 20 511 0930 F +31 20 511 0931 E mail@dvme.nl Professional contacts Erik Visscher European patent attorney E e.visscher@dvme.nl Other offices Arnhem, Eindhoven Sample client list • AkzoNobel • Balterio • Corbion • Damen • FedEx • IHC • Inalfa • KPN • MYLAPS • Signify • Teijin
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df-mp www.df-mp.com
Located in Munich, one of Europe’s IP hotspots, df-mp is one of Germany’s top IP law firms, with a broad scope of specialised expertise. Globally oriented companies – from small and mediumsized entities to major international corporations in biotechnology, pharmaceuticals, chemistry, physics, medical devices, mobile telecoms and mechanical and electrical engineering – trust the competent advice that the firm’s highly rated team offers. Founded in 2000, df-mp has experienced steady growth ever since. The firm is thus well positioned to offer expert advice on all issues arising from patent procurement and enforcement proceedings in all areas of technology; it can handle large patent portfolios as well as major patent litigation matters. df-mp also advises on utility models and the German Inventors’ Remuneration Law, and has a reputable trademark practice. It also assists clients in monetising their intellectual property via licensing to third parties or gaining access to the proprietary technology of others via in-licensing. df-mp has developed a reputation for successfully obtaining and defending key patents for its clients in proceedings before the EPO and the German Patent Office. Another major practice area for the firm is defending clients’ patents in opposition proceedings before these offices, as well as challenging the patents of third parties in these forums. df-mp’s attorneys have been involved in various high-profile patent litigation proceedings, many of which have had international implications and required df-mp to carry out a coordinating role. For example, df-mp’s biotech/pharmaceutical patents group has handled a number of newsworthy litigation matters, including patent nullity actions before the German Federal Patent Court and the Federal Supreme Court in the area of product, formulation and use patents concerning blockbuster small molecule drugs and biologics. The firm’s mechanical engineering and IT patents group also handles and coordinates a number of patent litigation proceedings (eg, in the medical device and mobile phone communications fields) involving household names. The involvement of df-mp’s attorneys in this practice area has seen them become recommended patent attorneys for patent infringement and nullity litigation in Germany, and notably, they were awarded the
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“One of the top providers of patent prosecution services in Germany… Technically capable and legally astute specialists” Firm of the Year Award for Germany in the “Patent Contentious (Patent & Trade Mark Attorney Firms)” category at the 2020 Managing IP EMEA Awards in London. Additionally, df-mp was shortlisted for the European regional award for “Patent Prosecution”. df-mp also offers expertise in advising on and coordinating the filing of supplementary protection certificates (SPCs) in Europe, an area where ambiguities in the law, differences in national practice and contradictions in court decisions – including those of the European Court of Justice – require detailed knowledge of case law and strategic thinking in order to secure the optimal position for SPC applicants. The firm has an international outlook. Its attorneys are highly knowledgeable and skilled, not only in the law in their home jurisdictions, but also in terms of US litigation issues. Two of the founding partners are admitted to practise before the USPTO and one of them has hands-on litigation experience in the United States. df-mp and its individual attorneys have been repeatedly recommended as one of the top firms and recommended patent attorneys in Germany for patent litigation, patent nullity proceedings and patent prosecution by the IAM Patent 1000 (2011 to 2020). Partners of the firm were also named as IP Stars in Managing IP magazine (2014 to 2020). In addition, df-mp is among the most recommended patent experts in JUVE Patent Germany ranking 2020. Df-mp is highlighted as having a leading reputation in the German patent law market in several categories, including patent litigation by patent attorneys and patent filing (including oppositions).
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Main address Fünf Höfe Theatinerstrasse 16 Munich 80333 Germany T +49 89 210 29 60 F +49 89 210 29 633 E info@df-mp.com Professional contacts H Ulrich Dörries Partner E ulrich.doerries@df-mp.com David Molnia Partner E david.molnia@df-mp.com Sandra Pohlman Partner E sandra.pohlman@df-mp.com
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Dr Helen G Papaconstantinou and Partners Law Firm www.hplawfirm.com
Dr Helen G Papaconstantinou and Partners Law Firm (HP&P) is a leading full-service IP law firm, with a history that spans over a century. As one of the oldest and largest IP law firms in Greece, HP&P combines a deep knowledge of all aspects of the IP field with a thorough understanding of its clients’ needs within the ever-evolving and challenging innovation environment of international markets. The firm’s partners are Eva Yazitzoglou (managing partner), Miranda Theodoridou, Maria Athanassiadou and Fotini Kardiopoulis. HP&P is registered with the Athens Bar Association and is a member of the Greek Association of Law Firms. With 11 fully qualified lawyers and 21 paralegals and support staff, HP&P provides legal and administrative services of excellent quality. All of the firm’s attorneys are members of the Athens Bar Association and most of them are admitted to practise before the Supreme Court and the Council of State. Two of them are European patent attorneys. They are all active members of key international associations, including the European Patent Institute, the International Federation of Intellectual Property Attorneys, the International Association for the Protection of Intellectual Property, the International Trademark Association (INTA), the European Communities Trademark Association, the Pharmaceutical Trademarks Group, MARQUES and the International Community of Breeders of Asexually Reproduced Ornamental and Fruit Varieties; they are regular contributors to important and internationally recognised IP resources such as the World Trademark Review, IAM, Wolters Kluwer Manual IP, Katzarov’s Manual on Industrial Property and several INTA resources. The firm closely collaborates with 40 highly experienced technical counsellors covering all scientific fields (eg, physics, chemistry, biochemistry, biology and electrical, electronic, chemical and mechanical engineering), who not only provide translator services of the highest standard, but also regularly offer consulting services of excellent quality, based on their significant experience and technical expertise in all IP sectors. Throughout the firm’s many years of activity, longstanding invaluable collaborations with hundreds of highly reputable firms around the world have been established, enabling HP&P to represent some of the most important companies worldwide.
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The HP&P client base covers a broad spectrum of businesses in all industries and sectors. Our clients range from large international companies and market leaders to small local businesses and startups, represented either directly by us or indirectly through trademark and patent agents and practices all over the world. HP&P serves its foreign clients in English, French, German, Spanish and Italian. The firm’s services cover the following: • national, EU and international trademarks; • national, European and Patent Cooperation Treaty patents; • European patent validations; • utility models; • supplementary protection certificates; • plant variety rights; • national, Community and international designs; • geographical indications and designations of origin; • copyright and protection of artistic works; • exploitation of IP rights; • licensing and franchising; • due diligence searches and related consultancy and monitoring; • litigation involving all aspects of IP law; • IP consultancy; • anti-piracy, anti-counterfeiting, customs monitoring and border measures; • trade secrets; • domain names; • alternative dispute resolution and mediation; • internet law, electronic forms of payment, online contracts and services; and • competition, advertising and consumer protection law.
“Sheer breadth of know-how on offer distinguishes it from its competitors… Assists myriad entities with multifaceted needs” www.IAM-media.com
HP&P is consistently ranked among the top IP law firms in Greece by international legal directories and associations. Indicatively, the most recent accolades include: • Corporate INTL – IP Law Firm of the Year in Greece, 2021; • Corporate INTL – IP Litigation Law Firm of the Year in Greece, 2016 to 2021; • Corporate INTL – Plant Breeders’ Rights Attorneys of the Year in Greece, 2020; • Global Law Experts – IP Litigation Law Firm of the Year in Greece, 2020 and 2021; • Global Law Experts – IP Law Firm of the Year in Greece, 2020; • IAM Patent 1000 – Recommended Firm (Gold), 2016 to 2021; • IP STARS – EMEA - Greece – Intellectual Property – Highly Recommended, 2016 to 2020; • Legal 500 EMEA – Top-tier rankings in intellectual property, 2016 to 2021; • The Trademark Lawyer Magazine – Top 10 Trademark Law Firms 2020 to 2021 – Greece; • The Patent Lawyer Magazine – Top 10 Patent Law Firms 2020 – Greece; and • WTR 1000 – Recommended Firm (Gold), 2016 to 2021.
Main address 2 Coumbari Street Athens 10674 Greece T +30 210 362 6624 F +30 210 362 6742 E mail@hplaw.biz Professional contacts Maria Athanassiadou Partner E m_athanasiadou@hplaw.biz Eva Yazitzoglou Managing partner E e_yazitzoglou@hplaw.biz Miranda Theodoridou Partner E m_theodoridou@hplaw.biz
HP&P is one of the very few Greek law firms certified by the International Organisation for Standardisation (ISO 9001:2015).
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DREISS Patentanwälte PartG mbB www.dreiss.de
DREISS Patentanwälte PartG mbB is one of the largest IP law firms in the highly innovative and dynamic industrial region of Stuttgart, southwest Germany. The DREISS team, which comprises about 20 IP attorneys, has been growing rapidly in the past few years, illustrating the success of the firm. Clients value the tailored advice they receive. Expertise DREISS provides the full spectrum of IP services in Germany and Europe. Its clients range from large multinationals (mainly from Germany, the United States, Korea and China) to small and medium-sized enterprises. DREISS also advises a number of highly specialised enterprises that are world leaders in their respective technical niche. All IP professionals at DREISS are experts in their specific fields from both an IP and a technology perspective. High staff retention enables the firm to develop and grow with its clients. DREISS attorneys are supported by a highly trained and specialised team of about 50 multilingual and responsive paralegals. This strong back office helps the DREISS team not only in prosecution work, but also in the national and international litigation cases that the DREISS attorneys are frequently engaged in. Instead of basing its capacities on expensive overheads, DREISS employs a strategy of competence within the firm, in combination with excellent international connections to top-tier firms around the globe. This is Swabian IP management: quality and efficiency at a good cost-to-value ratio without unnecessary frills. Philosophy DREISS is structured to foster close cooperation and the sharing of expertise and experience between its attorneys. This enables the firm to easily tackle large-scale projects across disciplines. At daily roundtable meetings DREISS professionals address their clients’ most challenging questions and needs. Every client is assigned at least one dedicated attorney who is familiar with the client’s individual needs and is an expert in the relevant field of technology. DREISS clients value this comprehensive approach. Specific projects (eg, large litigation and nullity proceedings) are managed by teams of professionals best suited to the task through both technical background and legal experience. The experienced litigation teams
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Domestic SMEs and multinationals from the US, Korea and China enjoy its full range of prosecution services… Tackle major litigation” cooperate closely with Germany’s top attorneys at law to successfully enforce the interests of DREISS’ clients in nullity and infringement actions. While the firm’s attorneys do not shy away from conflict, they have an impressive track record of brokering beneficial settlement and licence agreements for clients. DREISS also prides itself in its commitment to rapidly answer any queries clients may have, taking to heart the saying ‘the worst advice is advice given too late’. Practices and services DREISS specialises in: • patent prosecution; • patent invalidation; • patent litigation; • trademark prosecution; • trademark invalidation; • trademark litigation; • design right prosecution; • design right invalidation; • design right litigation; • domain rights; • counterfeiting and piracy; • IP portfolio management and optimisation; • searches and monitoring; • licensing; • validity and infringement opinions; • freedom-to-operate opinions; and • employee inventors’ law (from a company perspective). DREISS covers the following key technical areas: • mechanical engineering; • control technology; • electrical engineering;
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• • • • • • •
computer and software sciences; information and telecoms; material sciences; process engineering; medical devices and technology; optical technologies; and nanotechnology.
DREISS works with clients in the following industries, among others: • automotive; • machine tools; • laser; • fluid technology; • communication; • automation; • artificial intelligence; • semi-conductors; • nanotechnology; • handling; • optical technologies; • construction; • medical; • material; • sanitary engineering; • aerospace; • consumer products; • commerce; • fashion; and • food.
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Main address Friedrichstrasse 6 Stuttgart 70174 Germany T +49 711 248 938 0 F +49 711 248 938 99 E email@dreiss.de Professional contacts Thomas Knapp Partner E pa-knapp@dreiss.de Andreas Pfund Partner E pa-pfund@dreiss.de David Sinz Partner E pa-sinz@dreiss.de
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Ehrlich Group www.ipatent.co.il
Ehrlich Group was founded in 1995 by Gal Ehrlich and houses over 150 professionals in the field of intellectual property. The group is a leading Israeli full-service IP organisation that comprises three pillars: • Ehrlich & Fenster (GE Ehrlich (1995) Ltd), a patent and trademark attorney firm; • Ehrlich, Neubauer & Melzer (EN&M), a boutique IP litigation firm; and • IPTrade, an IP monetisation initiative. Ehrlich & Fenster consists of highly experienced IP professionals whose expertise spans all scientific and technological fields and who are qualified to practise before the trademark and patent offices of key jurisdictions, including Israel, the United States, Europe, East Asia and South America. EN&M consists of attorneys and legal assistants with extensive legal experience in all areas of intellectual property, including patents, copyright, trademarks, designs and trade secrets. The firm’s staff has enriched experience in conducting litigation proceedings before the Israel Patent and Trademark Registrar and the Israeli courts, as well as providing litigation support in foreign countries including the United States, South America, various countries in Europe and East Asia. The firm is diligent in creating strategies and managing the registration of trademarks and designs, producing analyses and legal opinions, as well as drafting agreements including licence agreements, development services agreements and more, related to all aspects of intellectual property. In managing IP portfolios, the group ensures that clients receive an optimal service taking into consideration a wide spectrum of business needs, with proper utilisation of time and budget restraints. The synergy between the group’s branches (patent attorneys, lawyers and commercialisation company) harnesses the cumulative experience of the professionals to create a unique first-class protection and enforcement strategy. We work as a collective unit, collegially and professionally, to protect clients’ ideas, ensure their intangible assets and maximise their value, and bring about the best results in any legal proceeding locally and overseas. The group’s exceptional reputation, as reflected – individually and as a group – in local and international official IP rankings, extends from our
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“Fulsome support… Files prolifically both at home and abroad” broad experience and worldwide operations, which are based on our comprehensive technological and scientific know-how and the good relationships we have established with professional peers in leading offices across the world. Our group drafts and submits new patent applications and manages their prosecution in Israel and directly in the United States for leading multinational corporations and Fortune 500 companies such as IBM, Samsung, Huawei, Monsanto, Salesforce, Pfizer, Philips, and Boeing, as well as universities and medical and research institutions in Israel and around the world such as the Technion, Weizmann Institute, Ariel University, Tel Aviv University, Ministry of Agriculture & Rural Development (Volcani Center), Tel Hashomer Hospital, Ichilov Hospital, Hadasit Medical Research Services and Development, Mor Research Applications, Columbia University, universities and research institutes from China and the Philippines, as well as security industries and offices such as Rafael, Elbit Systems, Israel Electric Company, Israel Police and many others. The group also represents joint ventures established by leading entities in Israel and abroad, numerous profile companies from the high-tech domain, biotech and pharmaceutical sectors, start-ups, technological incubators, and private individuals, some of whom are Nobel Prize and Wolf Prize laureates. Additionally, in what may be considered our group’s crowning achievement, we provide patent drafting, filing and prosecution services directly with the USPTO on behalf of our international clientele, as well as represent foreign associates across the globe for IP services in the United States, including for their most-respected clients and wellknown companies in all scientific and technological fields. In this sense, our highly successful US practice competes directly with our colleagues from the United States. The group’s law firm represents a wide range of domestic and international leading entities in various sectors, such as pharmaceuticals,
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communications, high-tech, biotechnology, medical devices, agriculture and consumer products. The law firm’s clients include wellknown companies, such as AstraZeneca, Pfizer, Inovamed, Boeing, Skoda, Hyundai, Kia, Volkswagen, Huawei, Playtech, Plasson, Metzer, Nikon, LG, Ralph Lauren, Armani, Barcelona and Real Madrid football teams, many start-ups and many more.
Main address The Rogovin-Tidhar Tower 15th Floor 11 Menachem Begin Road Ramat Gan 5268104 Israel T +972 73 791 9199 F +972 73 791 9100 E info@ipatent.co.il Professional contacts Marina Doron Head of marketing and business development E marina@ipatent.co.il
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EIP www.eip.com
EIP is a leading IP law firm advising on high-value patent matters. EIP’s combination of patent attorneys with specialist IP litigators presents its clients with significant advantages, being able to give advice on all stages of patent protection around the world, and patent litigation in the United Kingdom and Germany. The benefit of this combination is well illustrated by EIP’s successful representation of clients in high-stakes patent litigation before the UK High Court, Court of Appeal and Supreme Court, and before the German district and federal courts. Aside from the more mainstream drafting and prosecution practices, EIP’s patent attorneys work closely with the litigation team in the United Kingdom and Germany, providing additional technical expertise on large-scale international patent litigation matters. EIP is increasingly involved in advisory and strategic project work in relation to the enforcement of patent rights, including portfolio analyses, infringement and validity analyses and claim charting, as well as strategic IP advice such as due diligence related to acquisitions and joint ventures. Team members often counsel clients on strategic patent portfolio management and development matters, and EIP has been retained to assist in developing high-level IP strategies for some of the world’s largest companies. EIP has represented clients in hundreds of oppositions before the EPO over the past two decades and represent clients in person at hearings at the EPO in Munich, The Hague and Berlin, as well as via videoconference hearings.
“Long-renowned for its patent prosecution group… Has in recent years made a significant impression with its litigation practice” 978
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The firm’s integrated team of patent attorneys, litigators and paralegals can act in national court litigation alongside EPO opposition proceedings for a seamless, consistent and effective service. EIP’s litigation team has built a strong reputation for quality and success among its competitors and clients. During 2020 the team had success before the UK Supreme Court for clients Conversant and Unwired Planet along with three further successes before the High Court in technical trials, which represents yet another exceptional year for EIP and yet further proof of the abilities of its team. Clients EIP has a diverse international client base advising blue-chip companies through to small and midsized enterprises. Clients include VISA, Airbus, AP Moller-Maersk, Conversant Wireless Licensing, Sonos, Broadcom and PanOptis. Clients choose EIP for its commercial outlook, in-house experience, honest opinions and pioneering approach to dealing with patents. Our attorneys and lawyers have considerable technical knowledge in the areas of high tech, advanced engineering, chemistry, life sciences, biotechnology, pharmaceuticals, healthcare, medical technology and energy. Firm overview EIP was established in 2000 and has rapidly grown to be a leading IP firm with 24 partners and more than 170 staff practising from its four UK offices in Bath, Cardiff, Leeds and London, its US office in Denver, Colorado and its German office in Dusseldorf. In 2021 EIP was named “Firm of the Year for Patent Litigation” for the fourth year in a row by Managing Intellectual Property. EIP is a Legal 500, Chambers & Partners, IAM Patent 1000, IP Stars, and JUVE recommended firm as well as being recognised in the FT list of Europe’s Leading Patent Law Firms. Notable cases EIP has built an enviable reputation in patent litigation and in 2020 alone won the following highprofile cases for clients: • EIP secured a landmark victory in the UK Supreme Court for its clients Unwired Planet
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and Conversant Wireless, in Unwired Planet v Huawei and Conversant Wireless v Huawei & ZTE – the most eagerly anticipated telecoms cases in years. The Supreme Court’s combined ruling defines the licensing of patented technology considered essential to the international standards for previous and future generations of wireless telecommunications technology. • EIP secured a significant victory for client Conversant Wireless in Germany. EIP successfully asserted a standard essential patent (SEP) for Conversant against Stuttgart carmaker Daimler in a dispute that will have repercussions across the sector. • EIP obtained a victory in the Dusseldorf District Court for its client Conversant Wireless in two patent infringement decisions against Huawei and ZTE. The Court affirmed infringement of two 3G-related SEPs by Huawei and ZTE products. Subject to enforcement, the ruling awarded, among other things, an injunction against both companies, confirming a previous but nonaccepted licence offer by Conversant as fair, reasonable and non-discriminatory.
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Main address Fairfax House 15 Fulwood Place London WC1V 6HU United Kingdom T +44 20 7440 9510 F +44 20 7440 9511 E mail@eip.com Professional contacts Jerome Spaargaren Partner E jspaargaren@eip.com Magnus Hallin Chief executive E mhallin@eip.com Charlotte Noon Head of marketing & business development E cnoon@eip.com Other offices Bath, Cardiff, Denver, Dusseldorf, Leeds
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Eisenführ Speiser www.eisenfuhr.com
Eisenführ Speiser is an IP law firm with a mixed team of specialists, including both patent attorneys and attorneys at law. Founded in 1966 in Bremen by Günther Eisenführ, the firm has become a renowned IP luminary and undergone substantial and continuous growth. Across its four offices in Bremen, Munich, Berlin and Hamburg, more than 50 patent attorneys and attorneys at law serve a broad national and international client base. Recent highlights Recent highlights of Eisenführ Speiser’s team encompass several successful patent litigation campaigns in the area of mobile communication and audio coding (including standard-essential patents), as well as patent enforcement during trade fairs. Further, the firm is increasingly involved in litigation relating to trademark and design matters and serves a growing demand for its IP strategy counselling, especially as regards extensive freedom-to-operate and IP landscape analyses. IP innovator Eisenführ Speiser was the first IP law firm in Germany to introduce an electronic filing system using fully electronic IP office processes. Since 2011, the firm’s clients have been offered innovative electronic support for their internal procedures via remote access to their files, thereby considerably reducing their office expenditure for documenting IP activities. Prosecutors – litigators – strategists Eisenführ Speiser is a full-service IP law firm. Traditionally strong in IP prosecution, the firm has gained a strong reputation in IP litigation over the past two decades and is routinely visible in international patent litigation campaigns for major
“In-depth knowledge of both technical and legal matters… Covers the patent prosecution and litigation sides with equal aplomb” 980
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national and international corporations. The firm represents clients before German and European courts and coordinates parallel court actions and licensing negotiations across multiple jurisdictions. Eisenführ Speiser’s litigation teams of legal and patent attorneys have been involved in numerous litigations with multinational scope which led to landmark decisions, including the German Federal Court of Justice decision in Orange-Book-Standard and the first post-Huawei infringement decision of the Dusseldorf and Mannheim District Courts. The firm’s attorneys are also regularly engaged as independent IP evaluators. Eisenführ Speiser’s approach to IP counselling is strongly business minded and considers intellectual property as an integral part of companies’ assets, to be strategically used within the framework of attaining corporate objectives. The firm’s spectrum ranges from individual IP services – including IP-related analyses and expertise – to long-term strategic counselling and tailored strategic IP counselling. Inter-office practice groups Eisenführ Speiser’s attorneys organise and coordinate their work in practice groups, which are formed across multiple office locations. There are legal practice groups comprising highly specialised and renowned attorneys in the fields of: • patent prosecution and litigation; • trademark prosecution and litigation; • design prosecution and litigation; • IP contracts and licensing; • IP portfolio analysis and consulting; • IP freedom-to-operate analysis; • IP due diligence; • IP strategy development and implementation; • competition law; • copyright law; • antitrust law; and • employee invention law. Further, Eisenführ Speiser has industry groups comprising attorneys with unique experience in certain industries and technical fields, including: • electrical engineering; • renewable energy; • physics and materials science; • computer-implemented inventions and software;
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• mechanical engineering; • civil engineering; • chemistry and life sciences; • medical technology; and • Internet of Things. The interdisciplinary and inter-office cooperation between the firm’s patent attorneys and attorneys at law generates significant clout in handling complex IP matters. Interdisciplinary short-term and long-term project teams led by one or more experienced partners are formed according to clients’ individual requirements or the specific task at hand.
Main address Am Kaffee-Quartier 3 Bremen 28217 Germany T +49 4213 6350 F +49 4213 3787 88 E mail@eisenfuhr.com Professional contacts Julian Eberhardt Managing partner E jeberhardt@eisenfuhr.com Ludger Eckey Managing partner E leckey@eisenfuhr.com Other offices Berlin, Hamburg, Munich
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GLP Intellectual Property Office www.glp.eu
GLP Intellectual Property Office is both an IP law firm and a highly organised IP agency and that has been providing the complete range of services for the structured protection of IP rights for over 50 years. It specialises in protecting inventive ideas, developing and prosecuting IP rights at a European, national and international level, and assisting national and international clients worldwide by analysing, managing and enforcing their IP assets. Since 1967 GLP has grown thanks to word-ofmouth recommendations among satisfied clients that recognise the firm’s commitment to delivering high-quality services, understanding client needs, industries and markets, and counselling clients on the most practical and efficient solutions that afford the widest range of opportunities. Fields of expertise • Analysing, drafting, filing and prosecuting IP rights such as patents, trademarks and designs at an international, European and national level • Legal actions in the IP field • Economic valuations of IP rights • Portfolio maintenance and renewal • Review of competitors’ patent and trademark portfolios and analysis of their scope of protection • Development of technology, know-how and patent protection programmes, licensing and assignment agreements, trade secret agreements, contracts and legal and technical opinions • Assistance with the transfer or acquisition of IP portfolios • Company training courses in IP matters Team organisation The firm is divided into departments (patent, trademark, design, legal, renewal and internet services). All departments, in synergy with the legal department, are structured as a heterogeneous group of attorneys and lawyers with decades of experience in the IP field. The patent department handles multi-disciplinary fields, including mechanics, medical devices, material science, biotechnology, chemistry, electrical equipment, electronics, semiconductors, computer software and hardware and telecoms. The team is highly
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knowledgeable and keeps abreast of local and European IP legislative developments. Client-focused approach Clients of all sizes and from all industries worldwide trust GLP to design strategies to defend their IP rights in the most complex cases. Our staff ensure that every client receives the best advice and are updated, based on the targets that have been discussed, shared and defined. In the IP field, clients can verify the quality of the consultancy that they have received only when involved in a lawsuit, which occurs in only 5% of cases. GLP acts as if this verification were applied in all cases. For this reason, it is committed to the highest quality, both in consultancy and drawing up patent documents and in filing trademarks and designs. Some of GLP’s patent texts have been recognised as examples of best practice in national and international publications. Growth and development tool GLP believes that intellectual property is a fundamental tool for the growth and development first of a company and second of a national economic system. For this reason, GLP has – for more than 50 years – written publications that are distributed free of charge. It also continues to organise and promote events, courses and seminars. The firm maintains a private, in-house library of nearly 10,000 volumes. International organisations The team is registered to practise before the European Patent Office (EPO), the EU Intellectual Property Office (EUIPO), the World Intellectual Property Organisation, the Italian Patent and Trademark Office and the Republic of San Marino’s Patent and Trademark Office. For years, GLP has
“Service quality at GLP is consistently topnotch… Commitment to quality and precision” www.IAM-media.com
been part of the EPO Big Clients programme, which aims to strengthen collaboration and strategic partnership. It is also one of the few key user offices for the EUIPO.
Main address Via Luciano Manara 13 Milan 20122 Italy
Excellent references GLP has been consistently recommended by the most authoritative international directories, including the IAM Patent 1000, the WTR 1000, IP Stars, Corporate INTL, Global Law Experts, the Global IP Directory and China IP’s International IP Law Firms. The firm has been awarded the title of Italian Trademark Prosecution Firm of the Year 2019 and ranked by the Financial Times in Europe’s Leading Patent Law Firms 2020 list.
T +39 02 5412 0878 F +39 02 5412 1214 E glp@glp.eu
Firm memberships GLP’s professionals are active members of the Institute of Professional Representatives before the EPO, the International Association for the Protection of Intellectual Property, MARQUES, INTA, the Licensing Executives Society, the European Trademarks Association, the International League of Competition Law, the International Federation of Intellectual Property Attorneys, the Centromarca Institute for the Fight against Counterfeiting and the Italian Patent Information Users Group.
Professional contacts Davide Luigi Petraz Co-managing partner E dpetraz@glp.eu Daniele Giovanni Petraz Co-managing partner E daniele.petraz@glp.eu Other offices Bologna, Perugia, San Marino, Udine, Zurich
Languages GLP professionals are fluent in English, Italian, German, Chinese, French, Spanish and Portuguese.
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Gorodissky & Partners www.gorodissky.com
With headquarters in Moscow and 12 branch offices in Russia and one in Ukraine, Gorodissky & Partner is a home-grown Russian IP boutique and a leading player in every aspect of the protection, disposal and enforcement of IP rights. Our main jurisdictions are Russia and Ukraine, but through our trusted network of firms, we represent clients across Eurasia too. Gorodissky & Partners is the largest IP practice in Russia, originally founded by patent and trademark attorneys and lawyers whose professional careers started in 1959. Gorodissky & Partners is the only IP law firm in Russia to have been certified by the international standard ISO 9001: 2015, which guarantees the high quality of services provided and confirms compliance with international quality management standards. Today’s team of 140 IP professionals provides domestic and foreign clients and associates with comprehensive, professional and cost-effective legal services in respect of all intellectual property, including inventions, trademarks, designs, utility models, copyright, software and domain names. The services we render include prosecution, searches, freedom-to-operate opinions, enforcement (including litigation and mediation), disposal, taxation, accounting, due diligence, M&A deals and translation. We are the regional provider for annuities, renewals and recordals in Eurasia. Our team is known for its unique combination of expertise in numerous sectors, which enables us to handle even the most sophisticated cases successfully. We have a deep insight into our clients’ needs and are able to suggest the most efficient IP solutions. Our principal industries sectors include information technology, electronics, mechanics, physics, chemistry, biotech, pharma, medicine and nanotech. The firm’s IT department has created a bespoke e-system that enables electronic correspondence exchanges, billing and deadline control, under tight security. Major Russian and international companies, small and medium-sized enterprises, state organisations, academic and scientific entities, universities, financial institutions and individuals are among our clients. In addition to considerable experience and profound knowledge of Russian and international IP law and practice, our professionals have prestigious educational backgrounds in practically all science
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“Clear leader in the Russian patent prosecution market… Sophisticated service tailored to individual needs” disciplines, 30 academic degrees and skills in the art. They upgrade their professional qualification by regular training with law firms in the United States, Germany, the United Kingdom, France and Sweden and get further IP education at universities and law schools in the United States, France, the United Kingdom and the Netherlands. They are regular speakers at international IP conferences and authors of many professional publications. Our patent/trademark attorneys and lawyers are members of the International Association for the Protection of Intellectual Property, the International Federation of Intellectual Property Attorneys, the Licensing Executives Society International, the International Franchising Organisation, INTA, MARQUES, the European Communities Trademark Association, the Pharmaceutical Trademarks Group, the American Intellectual Property Law Association, European Franchising Federation, the International Distribution Institute, the International Chamber of Commerce, the French-Russian Chamber of Commerce and Industry, the Russian Franchise Association, the Russian Chamber of Patent Attorneys, the Council of Eurasian Patent Attorneys, the International Association of Privacy Professionals and Global Alliance PrivacyRules. We create modern strategies of IP management for companies that seek to manufacture new products and offer new services. We have mastered the art of IP consulting in every business sector, including information technology, media and telecommunications, pharmacy and biotechnology, mechanics and industrial manufacturing, consumer goods and retail, entertainment and sports.
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Our services priorities • Quality • Professionalism • Reliability • Efficiency • Proactivity • Integrity Main industries and business sectors • Agro-chemistry • Agriculture • Animal feed • Automotive production • Biotechnology • Computer • Construction • Consumer goods • E-commerce system • Electronics • Energy and natural resources • Exploration and extraction of minerals • Finance and investment • Food production • Genetic engineering • Glass and ceramic production • Hotel and catering • Household chemicals and home care • Information technology • Instrument engineering • Iron and nonferrous metallurgy • Machine building • Media and e-communications • Medicine • Nano technology • Oil and gas extraction and processing • Perfumery and cosmetics • Personal care products • Pharmaceuticals • Polymers • Printing machinery • Real estate • Space and aircraft production • Sports and leisure • Textiles • Tobacco products and equipment • Transportation • Veterinary • Watchmaking
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Main address 25, B Spasskaya Str bldg 3 Moscow 129090 Russia T +7 495 937 6116 F +7 495 937 6104 E pat@gorodissky.com Professional contacts Valery Medvedev Managing partner E pat@gorodissky.com Other offices Dubna, Ekaterinburg, Kazan, Kiev, Krasnodar, N Novgorod, Novosibirsk, Perm, Samara, Sarov, St Petersburg, Ufa, Vladivostok
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Gorodissky & Partners Ukraine www.gorodissky.ua
Gorodissky & Partners Ukraine is the largest and one of the leading firms in the field of intellectual property in Ukraine. Established in 2000, Gorodissky & Partners Ukraine brings together a team of highly professional patent and trademark attorneys and IP lawyers with profound knowledge in various fields of science, technology and law, and considerable experience in – and practice of – successful representation of clients’ interests before the Ukrainian Patent and Trademark Office, courts and administrative bodies. Forty professionals cover the whole spectrum of intellectual property, including filing and prosecution of patent and trademark applications, disposal of patents and trademarks and – when necessary – enforcement of IP rights. We find an effective solution to protect and enforce various IP subject matters, including inventions, trademarks, industrial designs, utility models, computer programs, databases, trade secrets, commercial names, works of science, literature and art. Our services cover the preparation of licensing, franchising and pledge agreements. Our attorneys and lawyers help our clients to conduct IP due diligence and represent them before commercial courts and courts of general jurisdiction, national and international arbitration forums and the Ukrainian Patent and Trademark Office. We help our clients to create a solid legal base for their IP portfolio by registering key rights and removing all unnecessary assets; we also assist our clients in maintaining their rights in registered intellectual property by, for instance, renewing registrations. We offer all our clients creative approaches and unique strategies for acquiring,
“Supremely capable contingent stationed in Kiev… Meticulous drafting and sage portfolio management advice delights its discerning clientele” 986
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maintaining, implementing, transferring and protecting their IP rights. Among our clients are large national and international companies, representatives of small and medium-sized enterprises, government organisations, academic and scientific institutions, universities, financial organisations and individuals. Thanks to our trustworthy network of associate firms, we can provide high-quality services in almost any country of the world. Our service priorities • Quality • Professionalism • Reliability • Efficiency • Proactivity • Integrity Our team • Maksym Bocharov, Ukrainian patent attorney, head of patent practice • Olga Opanasenko, Ukrainian patent attorney, head of patent department • Natalia Breus, Ukrainian patent attorney, senior counsel • Oleg Zhukhevych, Ukrainian trademark and design attorney, attorney at law, head of legal practice, trademark and design practice • Maksym Kravchenko, Ukrainian trademark and design attorney, attorney at law, head of trademark and design department • Olga Kotsyubalska, senior counsel • Olena Biloshuk, LLM, attorney at law, head of legal department • Alla Bocharova, Ukrainian trademark and design attorney • Liudmyla Skoryk, Ukrainian patent and trademark attorney, senior lawyer • Maryna Trastenok, Ukrainian trademark and design attorney • Olga Danish, trademark agent • Olga Kovalenko, attorney at law, senior lawyer • Yevgenia Solomenko, head of IP renewals and recordals department In addition to their considerable experience and profound knowledge of Ukrainian and international IP legislation, the firm’s professionals have prestigious educational backgrounds in
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most science disciplines, academic degrees and skills in the art. They keep their professional qualifications up to date by regularly training at partner law firms in Germany, the United Kingdom, Sweden and the Netherlands. The firm’s IP professionals are also authors of many IP specialist articles and books. They have repeatedly been recognised among the best IP lawyers by the world’s most respected legal rankings. Our patent and trademark attorneys and lawyers are members of the International Association for the Protection of Industrial Property, the International Trademark Association, the International Licensing Society, MARQUES, the All-Ukrainian Association of Patent Attorneys, the Lawyers of Ukraine, the National Association of Lawyers of Ukraine, the Union of Lawyers of Ukraine, the Chamber of Commerce and Industry of Ukraine and the Seed Association of Ukraine.
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Main address 25 V Chornovola Str Office 227 Kiev 01135 Ukraine T +380 44 501 18 71 49 58/278 49 58 F +380 44 503 37 99 E office@gorodissky.ua Professional contacts Maksym Bocharov Head of patent practice E bocharovm@gorodissky.ua Oleg Zhukhevych Head of legal practice, trademark and design practice E zhukhevychO@gorodissky.ua
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Grünecker Patent Attorneys and Attorneys-at-Law www.grunecker.de
Grünecker is a leading IP firm covering the full range of IP services in all technical and legal fields. Founded in 1924, Grünecker quickly became one of the largest IP firms in Europe and today is home to 85 patent attorneys, more than 50 patent engineers and 33 attorneys at law. The firm is headquartered in Munich and maintains branch offices in Berlin, Cologne and Paris. Focusing solely on IP law, Grünecker is highly specialised and is consistently one of the most active firms in patent and trademark prosecution, with thousands of new IP rights filed every year. The firm represents clients before the German and European courts, the European Patent Office (EPO) and the patent and trademark offices in Germany and France. Given the variety of technical backgrounds of its patent attorneys and engineers, Grünecker covers all technical areas, including mechanical engineering, information technology, telecommunications, software, electronics, physics and life sciences. In each area, Grünecker files hundreds of new patent applications every year, making it one of the top filing firms in Europe. Many of those applications are drafted by Grünecker attorneys. Opposition proceedings make up a significant part of the firm’s prosecution work. The firm handles numerous EPO oppositions and appeals and regularly attends hearings in Munich and The Hague. Grünecker also handles nullity actions before the German Federal Patent Court in Munich. Another focus area is patent litigation. The firm’s teams, litigators and patent attorneys alike handle disputes in all technical areas, including telecommunications, software, mechanical engineering, electronics, physics, medical devices and life sciences. Over the years, Grünecker has participated in many litigation suits involving antitrust issues, in particular when dealing with standard-essential patents and the ‘fair, reasonable and non-discriminatory’ defence. The team also handles litigation cases involving cross-border issues throughout Europe, the United States and Asia. Through many years of working for international clients, the team understands complex multi-jurisdictional proceedings and is able to fulfil the needs of the clients – no matter where they are located. The team is aware not only of the importance of having full knowledge
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of the case and its strategic aspects, but also of understanding its background. The firm’s expertise in the area of patent litigation is complemented by its experience in less contentious proceedings such as mediation. Grünecker is also a leader in the field of soft intellectual property, representing renowned trademark and design owners. The firm asserts clients’ rights throughout the German and European courts and trademark offices. It draws on vast experience gained in countless trademark, design, unfair competition and copyright proceedings. Grünecker’s attorneys at law also assist in negotiating licence agreements, handling border seizures and advising on IT and data protection-related issues. The firm not only provides first-class legal advice, but is also a strategic partner for its clients ranging from global corporations to renowned mid-sized companies and innovative start-ups. In order to serve its clients wherever needed, the firm has established a global network of IP specialists. Grünecker’s attorneys include professionals admitted in the UK, France and Spain. The firm is therefore in a position to advise on IP issues in those countries as well. From its Paris office, the firm serves the French market. It also employs Chinese and Japanese patent attorneys who not only know the European IP system, but also the legal systems, cultures and languages of their home jurisdictions. Grünecker consistently ranks as a top-tier firm in legal directories and is highly recommended by clients and peers alike.
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“Continues to dominate on the prosecution side… Professional, rigorous, well prepared, and has an enormous experience in oral proceedings at the EPO”
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Main address Leopoldstrasse 4 Munich 80802 Germany T +49 89 21 23 50 F +49 89 22 02 87 E info@grunecker.de Professional contacts Bernd Allekotte Partner E allekotte@grunecker.de Other offices Berlin, Cologne, Munich, Paris
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Hanna Moore + Curley www.hmc-ip.com
Founded in 2003, Hanna Moore + Curley (HMC) is acknowledged as delivering robust, commercially sound advice and innovative solutions for IP owners. Originally focused on providing European patent prosecution services to North American clients, its client base is now global and ranges from start-ups and universities to the world’s most valuable companies. Key to this success is an experienced team of attorneys whose reputation for pragmatic, personalised business advice based on deep industry knowledge and experience has allowed HMC to extend its reach across a wide range of technology sectors, collectively protecting progress. Headquartered in Dublin, HMC benchmarks itself against the best in Europe. With native French, Italian and Chinese speakers, it is truly an international firm. In core technical specialist areas, its grant rate is in the top five of all European patent firms. Analytical exercises identify HMC as securing the grant of patents with fewer engagements with examiners than other firms working on the same portfolio. Its attention to detail and focus on excellence are provided with personality and friendliness. HMC believes in continuous improvement, with an in-house programme of ongoing professional development and process evolvement for our attorneys and paralegal teams. In addition to qualified Irish, UK and European patent, trademark and design attorneys, members of HMC’s paralegal team have completed the Certificate in Patent Administration of the Chartered Institute of Patent Attorneys. Nikos Minas is on the EPO’s Examination Committee for qualifying attorneys. HMC is an ISO 27001:2013-certified company – another demonstration of its commitment to compliance with the best of international standards. Peer-acknowledged for its expertise in EPO prosecution, opposition and appeal work, HMC represents many significant North American companies in securing valuable European patent rights. One of the few European firms to have a permanent office in China, HMC’s representation of Chinese clients is spearheaded by its chief representative in China, Marie Walsh. HMC’s attorneys draw on post-graduate expertise across all areas of technology. In European patent matters it benefits from Catherine Hanratty’s former life as an EPO examiner. In
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“Precision patent drafting and persuasive performances… Highquality strategic advice, efficient service and excellent value proposition” Conor Boyce and Anna Hally, HMC has active participants on the European Patent Institute’s Information and Communication Technology and Biotechnology Committees, ensuring that it is up to date on changes in law and practice in these key prosecution areas of the firm. Within Ireland, HMC has an active supplementary protection certificate practice and its acknowledged leadership in domestic matters is attested to by Donnacha Curley’s presidency of the Irish Association of Patent and Trademark Attorneys. The firm’s non-EPO-specific activities include all aspects of advisory services relating to IP strategy, due diligence and opinion work, and in recent years international litigation. Barry Moore led its most recent success in the revocation of two competitors’ patents at the United Kingdom’s Intellectual Property Enterprise Court – a decision that was upheld by the UK Court of Appeal. With this strength and depth of experience, HMC is identified as a go-to firm for intellectual property in Europe. As acknowledged by IAM in its Patent 1000 review of 2019: When you work with the people at Hanna Moore + Curley it is just like magic. You give them an original idea, they understand it immediately and get you a high-quality draft with exceptional efficiency. They get straight to the point, which saves time and money, and really take ownership of the matters they handle.
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Main address Garryard House 25-26 Earlsfort Terrace Dublin 2 D02 PX51 Ireland T +353 1 661 3930 F +353 1 661 3453 E mail@hmc-ip.com Professional contacts Barry Moore Patent and trademark attorney E bmoore@hmc-ip.com Anna Hally Patent attorney E ahally@hmc-ip.com Other offices Belfast, Dalian
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Hepp Wenger Ryffel AG www.hepp.ch
Hepp Wenger Ryffel has two historical roots: the IP firm founded by Dieter Hepp in 1974 and Kirchhofer & Ryffel, one of the very first IP firms in Switzerland, established in 1880 in Zurich. Most recently, after some collaboration on a case-by-case basis over the past few years, Hepp Wenger Ryffel took over the patent attorney firm Dr Graf & Partner. Today, Hepp Wenger Ryffel is one of the largest IP firms in Switzerland, but still maintains its client-focused boutique character. Susanna Ruder joined the partnership in 2016. Ever since Hepp Wenger Ryffel was founded, its aim has been to assist clients in actively creating and exploiting intellectual property as part of its overall business concept. Hepp Wenger Ryffel is conveniently situated in Wil, halfway between Zurich and St Gallen, the seat of the newly established Swiss Federal Patent Court (FPC). Wil is only 30 minutes from Zurich airport by train, and the European Patent Office (EPO) in Munich is not far away. Hepp Wenger Ryffel previously had offices in Zurich, but felt that it could serve its clients just as well but in a more cost-effective manner from Wil. Hepp Wenger Ryffel offers the full spectrum of IP services in all fields of technology, focusing on patents, trademarks and designs, as well as negotiation of any IP-related contractual matters. Hepp Wenger Ryffel also counsels and represents clients in complex, often multi-jurisdictional, IP litigation. Patent professionals at Hepp Wenger Ryffel have a technical background in physics, mechanical engineering, electrical engineering, chemistry, biotechnology or microbiology. We are experts in drafting, filing and prosecuting patent applications before the Swiss Federal Institute of Intellectual Property (IPI), the EPO and the World Intellectual Property Organisation (WIPO). Throughout the world, we prosecute applications and handle oppositions, revocation actions and infringement suits via our excellent network of local attorneys acting under our instruction. Professionals at Hepp Wenger Ryffel also have an outstanding track record in opposition and appeal proceedings at the EPO. Moreover, we represent and assist clients in nullity and infringement actions before the FPC. Partner Martin Wilming runs a blog reviewing all case law of the FPC (www. patentlitigation.ch) and Christoph Müller has been elected as a non-permanent technically qualified
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“Hands down the best patent attorney firm in Switzerland… Some of the most distinguished practitioners in the country” judge at the FPC. In IP litigation, Hepp Wenger Ryffel deliberately chooses to work with highprofile external attorneys at law on a case-by-case basis, rather than handling both technical and legal issues completely internally. This allows us to put together the ideal team for each specific case, irrespective of internal revenue considerations. Our trademark practice includes applications and oppositions before the IPI and registrations using the Madrid Agreement and Protocol via WIPO. Many of Hepp Wenger Ryffel’s clients are highly specialised small and medium-sized enterprises which stand at the forefront of their respective technology sector, and we also counsel and represent multinational market-listed companies. We are proud of our long-term relationships with clients, allowing us to offer sound advice on the risks and opportunities inherent to their particular business strategies. Our overall goal is businessdriven intellectual property. At Hepp Wenger Ryffel, we always aim to understand the client’s business model thoroughly before taking any action. We delve into the peculiarities of each case in order to find the ideal intellectual property for each client in the specific business context – we answer not only the questions posed to us, but also those that clients may not have considered. It is our firm opinion that the era of the one-size-fits-all approach is over; we do not believe in all-purpose intellectual property. Based on a thorough understanding of clients’ situations and needs, Hepp Wenger Ryffel does not simply give clients a set of alternative recommendations to choose from. Rather, our professionals offer opinions on the reasonable course of action to take and comprehensibly advise clients accordingly.
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Main address Friedtalweg 5 Wil 9500 Switzerland T +41 71 913 95 55 F +41 71 913 95 56 E mail@hepp.ch Professional contacts Christoph Müller Partner E christoph.mueller@hepp.ch Martin Wilming Partner E martin.wilming@hepp.ch Susanna Ruder Partner E susanna.ruder@hepp.ch
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HGF Ltd www.hgf.com
HGF Ltd is one of Europe’s largest firms of IP specialists. It is one of only a few to offer clients a fully integrated IP solution, bringing together over 200 patent attorneys, trademark attorneys and IP solicitors. The firm has 21 offices throughout the United Kingdom, Ireland, the Netherlands, Germany, Switzerland and Austria. HGF has an ambitious growth strategy and is already one of the leading firms in the United Kingdom and throughout Europe in terms of its national reach, volume of Patent Cooperation Treaty and EU trademark filings and position in major legal directories. Its growth has been secured organically and through a combination of acquisition and strategic lateral hires from both private practice and in-house counsel, and has been reflected in accolades including a listing in the Financial Times Europe’s Leading Law Firm. HGF has a proven track record in forging successful long-term relationships with clients across a spectrum of business sectors and technologies. The firm’s highly experienced attorneys, commitment to client service and geographical profile ensure that it is uniquely placed to attend to high-value and complex IP issues. Specialist teams HGF offers everything you would expect of a world-class IP firm, including patent drafting, filing and prosecution, trademarks, design rights, copyright, oppositions and appeals, IP litigation, IP strategy, IP due diligence, freedom to operate, supplementary protection certificates and IP contracts, and licensing. The firm has dedicated teams of experts working across key industry sectors with relevant experience who fully understand their clients’ businesses and appreciate the significance of their brands, innovations and other IP assets. Patent team Our patent team comprises 38 partners, 66 patent attorneys and over 50 trainee patent attorneys. Many of our patent attorneys have years of experience working with or for some of the world’s leading technology companies. The team’s expertise and experience cover the whole range of technical fields.
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The chemistry group at HGF is one of the leading multidisciplinary chemical IP practices in Europe. Combining world-class expertise from patent and trademark attorneys and IP solicitors, the team provides advice to a wide range of clients on complex issues. It is specifically sought out by clients to secure and protect their most valuable technology in the chemical arena. HGF provides expert, commercially oriented patent advice and services to a range of organisations working in the electronics and advanced technology sector. As well as offering patent registration worldwide, it can help shape a business’s IP strategy, enabling it to make best use of its portfolio and to identify new opportunities for the future. Core technology areas include telecommunications, computer software, semiconductor technology, 3D printing, artificial intelligence, drone and autonomous vehicles and flexible electronics. When it comes to engineering, HGF maintains a talented and specialised engineering team, who have individual expertise in areas including automotive, aerospace, cleantech, energy, medical devices and packaging. Our experience helps our clients to realise the full commercial potential of their inventions and innovations. With one of the United Kingdom’s largest teams of specialist life sciences attorneys, HGF has a wealth of experience providing clients with practical, legal and strategic advice on managing their life sciences intellectual property. From protecting new research from the United Kingdom’s most prestigious universities, to high-profile oppositions and court proceedings on marketleading products, our attorneys’ practices cover the full range of life sciences innovations. International HGF is one of a few firms to have mapped out reciprocity across the globe and to have a clear strategy for growing international work, targeting the United States, Japan, India, Korea and China with focused activities.
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“Dynamic patent prosecution practice… Technically adept team is well-equipped to tackle issues in emerging areas like AI and CRISPR technology”
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Main address 1 City Walk Leeds West Yorkshire LS11 9DX United Kingdom T +44 113 233 0100 F +44 113 233 0101 E marketing@hgf.com Professional contacts Jacqui Weston Marketing director E jweston@hgf.com Other offices Aberdeen, Amsterdam, Basel, Bern, Birmingham, Dublin, Edinburgh, Glasgow, Heidelberg, London, Manchester, Munich, Newcastle, Nottingham, Oxford, Salzburg, Sheffield, The Hague, Westport, York
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Homburger AG www.homburger.ch
Established in 1957 in Zurich, Homburger is one of the largest law firms in Switzerland. The firm advises and represents companies and executives in all aspects of commercial law. The Homburger team includes over 160 lawyers who are registered with the Bar of the Canton of Zurich or in their respective jurisdictions, as well as tax experts. Most of the firm’s lawyers have additional qualifications and have studied and worked abroad. Homburger’s founder Eric Homburger was one of the first lawyers in Switzerland to combine his academic activities with a commercial legal practice. The firm remains loyal to this model: the majority of its professionals are active in academia and regularly contribute, whether in education or publications, to the development of the law. Homburger is a truly independent law firm. It works with leading firms in all major jurisdictions and areas of commercial law on a case-by-case basis. This enables it to offer the best legal advice to clients. Organisation All Homburger professionals are members of at least one of the firm’s main practices (corporate/ M&A, litigation/arbitration, intellectual property/ information technology, financial services, competition/regulatory and tax). Each practice is responsible for keeping its professionals at the highest level of education and experience and for contributing to the firm’s legal business development. As a result of this organisation, the firm can meet the requirements of clients – including in highly complex and interdisciplinary constellations – and it is driving solutions involving all key areas of commercial law. Homburger further maintains a number of working groups with a particular focus on certain fields of the law or client segments – including, without limitation, life sciences, employment, insolvency and restructuring, technology and digitalisation (TechGroup), private clients, white collar crimes and investigations, real estate and insurance. IP/IT practice Homburger’s IP/IT practice encompasses four main areas of specialisation, namely (i) patent
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“Members of the Swiss patent litigation elite… Dazzling performances in major life sciences disputes” and technology, (ii) general IP, (iii) TMT, and (iv) data protection and privacy. Its professionals advise and represent clients in all such areas.. The IP/IT practice consists of four partners, one senior counsel, nine associates and two junior associates. It combines many decades of practice and experience in all of the IP and IT fields and constitutes one of the largest IP/IT practices in Switzerland. Our IP/IT practice professionals have represented clients in many landmark IP and IT cases in Switzerland and have advised clients on major IP and IT transactions, including the sale and transfer of IP portfolios, important licensing deals, and IT and business process outsourcing transactions. Further, a growing number of IP transactions in the fields of life sciences and health industry has been supported. In general, the IP/IT practice both represents clients in state court litigation, arbitration and administrative proceedings and renders cutting-edge advice on IP and IT transactions and projects. Many of the assignments have an international dimension, and the firm is particularly experienced in guiding clients in international litigation and arbitration cases, as well as in multi-jurisdictional IP and IT transactions. The IP/IT practice has a strong focus on patent and technology law. Its patent work covers a broad range of technical fields and a majority of the cases relate to the life sciences, food, micromechanical, electronical, telecommunications and machine industries. Permanent exposure to complex legal and technical problems relating to all aspects of intellectual property, including issues of infringement and validity of IP rights, ensures that team members remain at the forefront of IP law in Switzerland.
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The IP/IT practice’s other fields of expertise include: • trademark, design and copyright law; • trade and unfair competition law and the protection of know-how and trade secrets; • life sciences, nutrition, toys, telecoms, radio and TV broadcasting and other industry regulatory frameworks; • IT projects (eg, software development, integration and migration), software licensing and distribution, outsourcing (IT and business processes) and IP and IT carve-outs; • IP licensing, technology transfer, distribution, franchising and merchandising transactions; • data protection; • media law, including representing private persons, executives and undertakings in cases of electronic and print media exposure; • exploitation of sports content, including corporate organisation and comprehensive contract management of sports agencies and rights-in and rights-out transactions; • e-commerce and internet law; and • general support of corporate and M&A practices in the IP and IT areas.
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Main address Prime Tower Hardstrasse 201 Zurich 8005 Switzerland T +41 43 222 1000 F +41 43 222 1500 E lawyers@homburger.ch Professional contacts Georg Rauber Partner E georg.rauber@homburger.ch Andri Hess Partner E andri.hess@homburger.ch Werner Stieger Senior counsel E werner.stieger@homburger.ch
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HOYNG ROKH MONEGIER www.hoyngrokhmonegier.com
HOYNG ROKH MONEGIER is a specialised European IP law boutique, which was created in 2015 when the well-established top-tier IP firms Hoyng Monegier and Reimann Osterrieth Köhler Haft (ROKH) joined forces. In 2019 the firm teamed up with French patent litigation boutique, Véron & Associés. Today, HOYNG ROKH MONEGIER has more than 100 passionate IP professionals and offices in Amsterdam, Brussels, Dusseldorf, Lyon, Madrid, Mannheim (branch office), Munich and Paris. In all of its locations, HOYNG ROKH MONEGIER services the needs of clients in the field of IP law – including patent and trade secret, trademark, copyright and design right law – as well as in related fields, such as pharmaceutical regulatory law, unfair competition, media and advertising law and all IP-related contracts. In patent law, HOYNG ROKH MONEGIER focuses on the technical areas of electronics, telecoms, pharmaceuticals, biotechnology, automotive and optics, in which it has decades of proven expertise. The firm also serves all other technical fields, including mechanics, electrical engineering and chemicals. In addition, in the fields of trademark, copyright and design right law, HOYNG ROKH MONEGIER offers a complete range of services relating to the enforcement, exploitation, assessment and protection of these rights and is always at the forefront of new developments. Given the full harmonisation of European trademark and design right law, HOYNG ROKH MONEGIER is ideally placed to serve clients’ needs. HOYNG ROKH MONEGIER advises and represents its clients across a broad range of sectors, including food and beverages, pharmaceuticals, industrial design, media, entertainment and publishing.
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“Dukes it out in some of the highest-stakes battles on the European market… Complex technical issues are no problem”
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Main address Steinstraße 20 Dusseldorf 40212 Germany T +49 211 550 220 F +49 211 550 22 550 E duesseldorf@hoyngrokhmonegier.com Professional contacts Martin Köhler Managing partner E martin.koehler@hoyngrokh.com Other offices Amsterdam, Brussels, Lyon, Madrid, Mannheim, Munich, Paris
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IP LAW GALLI Srl www.iplawgalli.it/en
Founded in 2004 by Cesare Galli (full professor of IP law at the Parma University Law Faculty), IP LAW GALLI operates mainly in the field of IP law, with specific experience in pharmaceutical and biotech patents, technology, media and telecoms and cross-border litigation. With its main office in Milan and branch offices in Brescia, Parma and Verona, IP LAW GALLI was established as a boutique firm that specialises in IP law and is characterised by the personal imprint of its founder, Professor Galli. The firm has constantly maintained its strong reputation thanks to its highly professional, closely coordinated team. The firm has extensive know-how in patent litigation, strategies and transactional matters (eg, licence agreements and international technology transfer). The firm’s lawyers have been involved in a number of important patent litigations in Europe, often dealing with cross-border problems (Professor Galli has also authored key essays on this issue). Professor Galli obtained the first Italian final ruling on biotech patents in 1999 and the first Italian ruling on the validity of a computerimplemented invention patent in 2004. Between 2009 and 2020 Professor Galli and Mariangela Bogni obtained landmark decisions in the patent field, particularly regarding biotech and pharmaceutical patents and patents in the chemical and electronics field. In 2015 the firm obtained two of the highest assessments of damages ever issued in Italy for design and geographical indication infringement. In addition, the firm advises major companies on the implementation of the new Italian IP tax regime (the so-called ‘Patent Box’). Professor Galli and his team were heavily involved in the process that led to Italy taking part in the UPC Agreement in 2013 and the enhanced cooperation on the unitary patent in 2015. Further, Professor Galli assisted the Italian delegates in drafting the Rules of Procedure for the Workings of the Unified Court and has coordinated leading conferences on this issue. The expertise of the firm and Professor Galli has been widely recognised at both the domestic and international level. In 2004 Professor Galli was invited by the Parliamentary Commission of Productive Activities of the Italian Chamber of Deputies to participate in the revision of the Italian IP Code and since 2005 he has been a member of the governmental commission in charge of revising
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the Italian IP rules, including the implementation of the new EU Trademark Directive in Italy. Acting in this role, he played a decisive part in the 2010 reform of the code and in Italy’s participation in the UPC and the unitary patent. He has been a member of the Permanent Advisory Board of the High Commissioner for the Fight against Counterfeiting since 2006 and is now a member of the Italian Governmental National Anti-counterfeiting Council (which replaced the board). In 2009 he was appointed as a member of the sub-group on the legal framework of the European Commission Counterfeiting and Piracy Observatory (now the EU Intellectual Property Office European Observatory on Infringements of Intellectual Property Rights). He also cooperates with Indicam, Confindustria and the Anti-counterfeiting Research Centre of Milan in their activities relating to IP rights protection. Professor Galli and Dr Bogni regularly contribute to Italian and international IP law reviews. Professor Galli also writes for leading Italian financial newspapers, such as Il Sole 24 Ore and Italia Oggi. The firm also issues a newsletter twice a year (in Italian and English), which includes complete updates on developments in IP legislation and relevant case law. Professor Galli is also the author of numerous publications in the IP law field, including the most well-known commentary on IP rules in force in Italy, published by UTET-Wolters Kluwer in 2011. The firm’s clients include large multinational and domestic industrial groups working in the pharmaceutical, food and chemical sectors and Italian firms operating in cutting-edge new technologies, as well as the technology,
“One of the most fearsome patent litigation outfits in Italy… Packs a fierce punch in heavy-duty pharmaceutical and technology disputes” www.IAM-media.com
media and telecoms, mechanics and electromechanics fields. The firm specialises in both patent litigation and out-of-court field strategy, including licence agreements and international technology transfers.
Main address Via Lamarmora 40 Milan I-20122 Italy T +39 02 5412 3094 F +39 02 5412 4344 E galli.mi@iplawgalli.it Professional contacts Cesare Galli Founding partner E galli.mi@iplawgalli.it Mariangela Bogni Executive partner E m.bogni@iplawgalli.it Other offices Brescia, Parma, Verona
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IPLodge www.iplodge.be
Belgian patent firm IPLodge has established a strong reputation as a reliable firm that provides its clients with efficient and cost-effective legal protection for their innovations, while striving to meet the highest professional quality standards. Taking the wider view, IPLodge goes beyond mere protection, offering legal and strategic support before, during and after the patenting process. Guided by its clients’ interests without missing an opportunity when it presents itself, the team of experienced attorneys and paralegals will identify the most adequate way to protect each asset, define exploitation strategies, and negotiate and draft secure agreements. Areas of expertise Operating primarily in the technical areas of physics, electronics and information and communication technology, IPLodge advises and represents corporations, universities and innovative spin-offs and start-ups from around the world. IPLodge’s patent services include searches, drafting and filing of patent applications, opposition proceedings, litigation support, agreements and transactions. Drafting and filing of patent applications IPLodge’s focus on a few well-defined technical areas enables it to get to the bottom of the technical aspects of every case it handles. At every step of the way, IPLodge helps clients understand the technical and legal issues, while keeping in mind their business interests. IPLodge helps clients take advantage of the various regional and international agreements to streamline the procedures to obtain parallel protection in multiple jurisdictions, and points out when clients could benefit from filing divisional applications and continuations, for example. IPLodge’s patent attorneys are qualified to represent applicants before the European Patent Office and the national offices of the Benelux countries. For filing needs in other jurisdictions, the firm relies on its vast network of trusted foreign agents, while remaining the clients’ single point of contact. As part of the European economic interest grouping EURIPTA (www.euripta.com), IPLodge has particularly close ties with sister firms in Germany (Michalski · Hüttermann & Partner), Italy (Studio
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Corradini) and Poland (Kaminski & Partners). The firms in this network, which share IPLodge’s core values of quality, integrity, flexibility and personal service, can be relied on whenever the scale, international character or special nature of a case requires it. In this way, the client can be supported by an integrated multi-site team under the lead of an experienced IPLodge attorney. Oppositions IPLodge has an exceptional track record in oppositions and opposition appeals before the European Patent Office. Whether the client is the opponent or the patent proprietor, it will benefit from IPLodge’s technical understanding, and legal knowledge and experience, to ensure the best possible outcome for the proceedings. Litigation IPLodge will not blindly send clients into costly litigation, but openly discusses the strengths and weaknesses of each case to help clients choose the best course of action. IPLodge will help its clients negotiate a beneficial settlement if possible, and help them get through litigation if necessary. When the Unified Patent Court (UPC) finally opens for business, IPLodge will have a UPC litigation team ready, consisting of European patent attorneys with the necessary additional legal qualifications to represent parties before the UPC. By combining legal and technical skills under one roof, IPLodge can help clients avoid, where possible, the costlier option of retaining attorneys
“Goes above and beyond for patrons… Leaves no stone unturned to secure the strongest, most comprehensive protection for clients’ inventions” www.IAM-media.com
at law for their representation and nonrepresenting patent attorneys to assist them with technical matters. Agreements and transactions As a one-stop shop for innovative organisations, IPLodge supplements excellence in the protection of intellectual property, with the legal expertise required to allow clients to reap the benefits from their innovation by creating the right contractual relationships. Depending on each client’s needs, IPLodge can provide model contracts or negotiate the agreement that best fits the situation. In close cooperation with Bracquené Legal Consulting, IPLodge ensures that clients get the most out of their intellectual property and take maximum advantage of the various government research programmes.
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Main address Technologielaan 9 Heverlee 3001 Belgium T +32 16 40 98 10 F +32 16 20 06 21 E info@iplodge.be Professional contacts Michaël Beck Partner E michael.beck@iplodge.be Wim Van den Boeck Partner E wim.van.den.boeck@iplodge.be Hans Bracquené Partner E hans.bracquene@iplodge.be
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IPrime Rentsch Kaelin AG www.iprime.law
IPrime is the first Swiss-European boutique group providing highly specialised services in complex matters of technology law, intellectual propety and compliance to high-profile clients. With offices in Zurich, Switzerland and Dusseldorf, Germany, where one of Europe’s leading patent courts is located, IPrime is ideally placed to provide quality IP services in Europe and worldwide. Relying on a unique combination of experienced business lawyers and litigators, patent attorneys and technology experts with backgrounds in engineering, chemistry, microbiology and information technology, IPrime is able to offer high-end legal and strategic advice and advocacy services in connection with the protection and commercialisation of innovations, investments into technology, as well as complex IP and commercial disputes. Key strengths of the team are its independence and close collaboration between Swiss and European patent attorneys with a profound understanding of technology and science (including artificial intelligence, robotics, big data, cyberphysical systems and block chain, pharmaceuticals, chemicals and biotechnology, as well as medical technology), and highly experienced dispute resolution specialists, who routinely represent parties in legal proceedings before courts, authorities and arbitral tribunals. IPrime has for years handled a significant share of all patent litigation matters before the Swiss Federal Patent Court. Additionally, IPrime benefits from broad experience in the IP and technology transfer segments also in the United States and Asia, especially China and Japan, both in the prosecution and litigation of patents and trademarks. As a part-time judge at the Federal Patent Court and experienced patent litigator, Rudolf A Rentsch is involved in many high-stake patent cases in various technology sectors, while Anne-Catherine Hahn, who joined IPrime as partner in 2019, brings a wealth of experience in commercial litigation, arbitration and compliance. This interdisciplinarity, as well as the many years of experience which its lawyers gained in other firms and in-house roles in the technology sector, enables IPrime to provide cutting-edge legal and strategic support to domestic and international clients at the crossroads of technology and law.
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Other key differentiators are the boutique structure and the discretion and substantially reduced risk of conflicts of interest, thanks to which IPrime can provide a broad range of services in contentious matters, from counsel mandates in litigation and arbitration, over arbitrator appointments to acting as mediator or settlement facilitator in situations requiring not only legal knowledge, but also a thorough understanding of the underlying technical and commercial issues. IPrime’s IP department covers both patent prosecution and patent litigation cases at Swiss, European and international level, providing strategic and legal advice with respect to the protection of intellectual property, whether under patent, trademark, copyright, trade secret, design or unfair competition laws. In particular, IPrime frequently advises IP departments of large leading global high-tech companies, as well as small and medium-sized enterprises, universities and start-ups in all areas of intellectual property, including licensing and distribution agreements. IPrime also offers comprehensive services for the registration and administration of patent and trademark portfolios throughout Europe and overseas. In addition, IPrime’s patent attorneys and lawyers are frequently involved in complex IP disputes, particularly in the patent area, and have accompanied a number of companies in patent cases in the United States, China and Japan, as well as many countries within Europe, in particular Germany and England. IPrime also routinely advises on the commercialisation of intellectual property and related financing and structuring considerations, and has recently set up a partnership with a large Swiss tax and accountancy firm to assist companies in the tax-optimal structuring of patent portfolios, in accordance with the recent introduction of so-called ‘patent boxes’ into Swiss law.
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“Nimble boutique with a lot to offer… Top-notch service that not only protects innovations, but defends and commercialises them too”
Main address Hirschengraben 1 Zurich 8001 Switzerland T +41 44 229 60 60 F +41 44 229 60 50 E zurich@iprime.law Professional contacts Rudolf A Rentsch Partner E zurich@iprime.law Moritz Kälin Partner E zurich@iprime.law Thomas Kretschmer Partner E zurich@iprime.law Other offices Dusseldorf
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J Pereira da Cruz SA www.jpereiradacruz.pt
We started our activity in 1949 as a family company. Today we enjoy a solid reputation at both national and international level, always striving to build a close relationship with our clients and delivering specialist legal advice based on the principles of quality, excellence and attention to detail. With more than 70 years of experience managing and protecting IP rights, J Pereira da Cruz is a top firm of creators, inventors and innovators. Recognised nationally and internationally, J Pereira da Cruz prides itself on working closely with clients to provide a highly specialised service and expert technical and legal advice. J Pereira da Cruz has a large team of highly experienced IP attorneys, expert consultants and lawyers who seek the best and most innovative solutions to protect clients’ interests. We strive to be at the forefront of the most recent technologies in order to ensure the best protection of our clients’ interests in the industrial property field. We go beyond the traditional services of registration, surveillance and maintenance of IP rights. We are committed to a proactive approach of consultation at all stages of the creative process to meet clients’ requirements. Our team of approximately 80 professionals is affiliated, as a company or through our individual members, with the main national and international associations in the sector and with a network of partners all over the world. We defend the interests of our international clients through partnerships with the most highly reputed local companies in our field. These partnerships have developed over many years and provide us with solid guarantees of quality in the protection of our clients’ interests. J Pereira da Cruz understands that the need to educate both young and older entrepreneurs on the importance of protecting their creations is one of the key challenges of our industry. Creators face the possibility of their work losing value due to poorly protected intellectual property. The costs of the loss of creative value exceed the costs of protecting creative work, and it is up to companies like J Pereira da Cruz, alongside government policy makers, to support creators all over the world. As well as the traditional services of registration, surveillance and maintenance of IP rights, J Pereira
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“Longstanding, highly respected firm with a rich tradition… Destination of choice for patent prosecution” da Cruz also takes a proactive approach by offering consultancy at every stage of the creative process. We believe that competitive advantage is a result of capability in the field, fed by intangible resources such as patents, licences and know-how. Our strategic approach is based on the belief that these resources are the cornerstone of successful operations and they play a significant role in every client interaction. That has been our main strategy since the firm’s creation and will remain so. As a company specialising in intellectual property, we provide a full range of services covering all areas of industrial property, copyright and related matters. Our areas of activity include: • industrial property (patents and utility models, designs, trademarks and logos; designations of origin); • copyright; • domain names; • company names; • arbitration; • franchising; and • technology transfer. We provide the following services: patent consultancy and advice; patent drafting; translations; specialist searches; freedom-to-operate analyses; patent validations; patent internationalisation; strategic analysis for the protection of rights; portfolio management; prior rights searches; national, European, international and worldwide trademark filings; • recordals, assignments and licensing; • • • • • • • • • • •
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• maintenance and monitoring of registered rights; • support for start-ups and internationalisation; and • IP audits. J Pereira da Cruz – more than 70 years of protecting innovation and creativity.
Main address Rua Victor Cordon 10A Lisbon 1249-103 Portugal T +351 21 347 5020 F +351 21 342 4583 E info@jpcruz.pt Professional contacts João Pereira da Cruz Managing partner E joaopcruz@jpcruz.pt Nuno Cruz Partner E nunocruz@jpcruz.pt Marta Pereira da Cruz Chief financial officer E martapcruz@jpcruz.pt Other offices Leiria, Luanda, Macau, Maputo, Porto, Praia, Sao Tome
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IAM Patent 1000 1007
karo IP Patentanwälte Kahlhöfer Rößler Kreuels PartG mbB www.karo-ip.de
With more than 20 years of experience in the world of intellectual property, the experts of karo IP combine technical and scientific competence and practical know-how in all areas of IP law. The range of the firm’s activities include the prosecution, enforcement and litigation of all types of IP rights (patents, utility models, trademarks, designs), as well as employee invention law and licensing. The internationally experienced patent attorneys advise companies especially in the automotive and telecommunication sector, with emphasis on futuristic technologies in these fields, such as industry 4.0, smart devices, Internet of Things, medical devices, autonomous driving and communicating cars/vehicles. karo IP The firm, based in Dusseldorf and Munich, aims to develop and implement innovative ideas for providing clients with efficient, in-depth and proactive advice. The core IP team has been successfully working together for over 15 years. All attorneys are well experienced German and European patent attorneys covering all fields of technology – with a special focus on physics, engineering, information technology and medical technology. Some 11 highly adaptable attorneys with a wide-ranging and complementary set of skills make the core of the practice, with teams put together on a case-by-case basis. Supported by highly qualified patent engineers and paralegals, the patent attorneys ensure that the best possible protection in both technological and economic terms is afforded. Expertise karo IP has profound knowledge in patent prosecution. The firm manages contradictory proceedings before patent offices and patent courts, as well as multinational infringement matters worldwide. The practice focuses increasingly on the enforcement of IP rights in the field of mobile communications and the Internet of Things, among others, in Germany. IP rights also play a progressively important role in mergers and acquisitions. karo IP gives attention to the rising demand of freedom-to-operate analyses (eg, for product launches in Europe) and the management of large patent portfolios.
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The firm’s patent attorneys analyse IP portfolios for potential legal risks and support its clients’ corporate management through due diligences such as during M&A procedures. Patent litigation work is also an increasingly busy practice area, with the firm frequently participating in major patent disputes in Germany. Industry sectors karo IP advise and represent clients across a wide range of industries such as automotive, electrical and mechanical engineering, computerimplemented inventions and software, Internet of Things, medical technology, biotechnology, electronics and physics. Our clients range from small and medium-sized firms to start-ups and global companies. The firm has been working successfully and trustfully with many of its national and international clients and with numerous companies’ IP departments for many years. Network karo IP is cooperating with a well-proven and time-tested nationwide network of pre-eminent Tier 1 law firms and lawyers specialising in the judicial enforcement of IP rights. The firm advises clients in depth and recommends the specialists who are appropriately qualified for their cases. Our ‘best friends’ are well-known litigation specialists and available on demand. However, karo IP has no binding commitments to specific colleagues or firms. Thanks to its international network of cooperating firms and close industry contacts in various countries in Europe, the United States, China and Japan, karo IP can assist clients operating internationally and at short notice ensure that they are represented at international level by specialised lawyers.
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“Copious scientific and legal acumen… Circumferential knowledge of European patent law, and short response times and high-quality work product”
Main address Platz der Ideen 2 Dusseldorf 40476 Germany T +49 211 976 356 0 F +49 211 976 356 10 E mail@karo-ip.de Professional contacts Matthias Rößler Partner E roessler@karo-ip.de Justus Kreuels Partner E kreuels@karo-ip.de Hermann Kahlhöfer Senior IP counsel E kahlhoefer@karo-ip.de Other offices Munich
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IAM Patent 1000 1009
Kather Augenstein Rechtsanwälte PartGmbB www.katheraugenstein.com
Kather Augenstein is a boutique law firm with a team of 11 specialised lawyers based in Dusseldorf, Germany. The firm was established in 2016 as a spin-off from Preu Bohlig as Kather Augenstein’s members wanted to focus on what they know best: IP litigation. They relish the challenging cases. Their passion is to disentangle complex situations, make sense of apparently contradictory facts and get to the root of a problem. They latch onto the matter and never give up. The team has been working together for many years and combines its experience and knowledge in IP litigation. The Kather Augenstein team comprises five partners, five associates and one of counsel lawyer, and communicates with clients in German, English, French, Italian and Spanish. Our lawyers bring together the experience of a boutique law firm and that of large international law firms, pooling the best of both worlds into one team. For each mandate we form a tailor-made team that advises and represents our clients in the field of patent law at the highest level. All our partners have a great deal of expertise in all areas of intellectual property. Kather Augenstein’s work focuses on patents, trademarks, designs and unfair competition. Our lawyers enforce IP rights in all technical areas, including telecommunications, electrical engineering, automotive, pharmaceuticals, medical technology, biotechnology, nanotechnology, engineering and chemistry. One of our core competences is to prepare complex technical issues in a way that is comprehensible for the technical layman. Our profession also faces the challenge of the future Unified Patent Court, a completely new system with no established legal principles or precedents. Together with associate foreign law firms, we have considered the subject thoroughly and examined the new law from different national sides. Since the role of judges will be even more decisive at the Unified Patent Court than it is in any existing system, our role as translators of technical facts will also become even more important. Our organisation structure means that the team is extremely flexible and gives full attention to each mandate – something all clients can rely on. Kather Augenstein works exclusively in litigation as the team’s area of expertise is contentious disputes and overarching coordination – national
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and international. Further, the team has extensive experience with arbitration. Our lawyers are frequently appointed as arbitrators and are thus familiar with the other side of the bench. The team can handle comprehensive and complex litigation cases by joining forces and knowledge. For example, in 2018 Kather Augenstein represented Audi AG and Volkswagen AG in a major dispute in the context of connected cars against Avago and Broadcom, and handled the coordination of a total of 13 proceedings. In parallel, Kather Augenstein represented Ericsson in a litigation about eight SEPs and two implementation patents against Wiko. This is the kind of work at which Kather Augenstein excels. Thanks to the size of our firm, we are more flexible than many large international law firms because, among other things, the decision-making processes are much shorter. Nevertheless, with 11 IP lawyers our team is larger than many litigation teams of international law firms in Germany. For international legal disputes, our lawyers work seamlessly with similarly experienced firms around the world and have vast experience in coordinating international legal disputes for their clients. Since its inception, Kather Augenstein has been listed as a recommended firm in national and international rankings such as the IAM Patent 1000, JUVE Patent, The Legal 500, Chambers & Partners, IP Stars, Who’s Who Legal and Leaders League Group, among others. Further, our lawyers regularly speak at conferences, take part in panel discussions and have their work published in law journals. In 2019 Kather Augenstein moved to new premises in the centre of Dusseldorf to accommodate the steady growth in personnel.
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“Holistic service which rivals that of international law firms… Precise, creative, and prompt work of the highest quality”
Main address Bahnstrasse 16 Dusseldorf 40212 Germany T +49 211 513536 0 F +49 211 513536 22 E info@katheraugenstein.com Professional contacts Miriam Kiefer Managing partner E kiefer@katheraugenstein.com Sören Dahm Partner E dahm@katheraugenstein.com Sample client list • Audi • BASF • Boston Scientific • Coloplast • Continental • Ericsson • HTC • Knorr-Bremse • Merck • tesa • VW
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IAM Patent 1000 1011
Keltie LLP www.keltie.com
Keltie is all about people and our personality is built on the character of outstanding individuals, working together in a collaborative environment. Over three decades the firm has sought to break the mould of traditional IP firms and create an environment where talented individuals can enjoy building great relationships with exceptional clients. In that time, we have grown to 18 partners across the patent and trademark practice, but we continue to advance the ideals that founded the firm. Our patent team offers world-class professional experience built on experience as engineers and scientists in industry and research. The group covers every technical field in clientfocused groups, including: • automotive, aerospace and marine technologies; • bioscience and medical technologies; • chemistry and materials science; • environmental technologies; • information technology, telecoms and electronics; and • physics and electromechanical engineering. European and UK-qualified, our patent attorneys spend much of their time handling our flourishing practice before the European Patent Office (EPO). They appear frequently in opposition and appeal proceedings and enjoy a remarkable rate of success in contentious matters. Keltie attorneys are amongst the very few in Europe to have represented clients successfully at the EPO Enlarged Board of Appeal. Our patent attorneys speak English, German, Dutch and Spanish – with a range of other European and some Asian languages also represented within the firm as a whole. We take pride in the quality of our patent drafting – as we take satisfaction in exploiting the weaknesses of bad patents. Our wealth of direct clients means that we draft often and that we draft well. We know how to catch the spirit of an idea and to transform it into an asset. We bring inventions to life. Keltie attorneys work on the full spectrum of clients, from start-ups to multinational corporations. We value the relationships with our clients and work hard to build a level of
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understanding that allows us to anticipate challenges, as well as see opportunities. Decades of experience in building global IP portfolios enable us to offer IP consulting services independently from filing, prosecution and contentious work; we can be engaged without necessarily taking over a client’s IP portfolio. Keltie can also help clients in various ways, from ad hoc advice targeted to specific projects to providing resources on an ongoing basis through our corporate support group. In many cases, this involves secondment of professionals and support staff to in-house departments. Other projects lend themselves to outsourcing, such as IP management advice, due diligence, data cleansing, litigation support and the integration or division of IP portfolios. Some may be discrete matters that can be handled by our IP consulting group; others involve an ongoing partnership with a client, such as ad hoc overflow work or outsourcing of entire portfolio management functions. Working with clients ranging from academic institutions to law firms to multinationals, our approach is resolutely practical – not just talking, but doing. The United Kingdom and Ireland are hubs for start-up activity and Keltie has specialist teams dedicated to helping early stage companies navigate their first steps in IP creation and due diligence. We know that today’s start-ups are tomorrow’s unicorns because we have supported so many clients through the rapid growth associated with the emerging technology space. Using patent analytics, we appreciate that technology scanning is key to Keltie’s success in winning and developing intellectual property for our clients.
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“Highly competent team and serves an impressive roster of industry players… Some of the best patent attorneys on the UK market”
Main address 1 London Bridge London SE1 9BA United Kingdom T +44 20 7329 8888 F +44 20 7329 1111 E marketing@keltie.com Professional contacts Dev Crease Partner E dev.crease@keltie.com Sean Cummings Partner E sean.cummings@keltie.com Shakeel Ahmad Partner E shakeel.ahmed@keltie.com Other offices Cambridge, Cirencester, Galway, Manningtree
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IAM Patent 1000 1013
Krieger Mes & Graf v der Groeben www.krieger-mes.de
Founded in 1929, Krieger Mes & Graf v der Groeben is widely regarded as one of Germany’s leading law firms in the field of intellectual property. It focuses on litigation and advice/counselling. The firm has in particular earned a reputation for its outstanding patent litigation work. While well-practised in a wide range of IP and unfair competition litigation, all the firm’s lawyers have undergone specific training and gained experience in patent litigation. One of the firm’s strengths is its ability to acquire an in-depth understanding of the most complex technical matters and then convey the relevant technical facts and their legal implications to the courts and other bodies. The firm’s lawyers represent their clients before all German district courts and courts of appeal, the Federal Patent Court and the Federal Supreme Court (in nullity action appeals), the European Court of Justice and the EU General Court, and other authorities concerned with intellectual property and product piracy, as well as in arbitration proceedings. The firm’s clients include national and international corporations of every size and business sector, with a focus on technology-based companies. Krieger Mes & Graf v der Groeben regularly acts for international corporations from Europe, the United States and Asia – particularly in the context of large, concerted patent litigation campaigns involving multiple jurisdictions. The firm has excellent contacts with foreign law and patent attorney firms also specialising in patent litigation and advice/counselling in Europe and the United States, and these contacts are utilised in the course of such coordinated actions. The firm represents large and mediumsized European, US and Asian companies in all industry and technology sectors, in particular in the engineering, chemical, biotechnology, pharmaceutical, automotive, telecommunications, electrical, electronics, consumer electronics and medical devices sectors. All the firm’s lawyers provide comprehensive legal advice regarding the enforcement of IP rights in Germany, above all with respect to patent (or utility model) infringement litigation. This involves out-of-court advice on potential patent infringement, IP strategy and (licence) negotiations with opponents, as well as comprehensive activity and advice relating to patent infringement lawsuits before German courts.
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“Leading patent litigation firm… Renowned for its strategic portfolio advice, its expert contract negotiation, and its astute IP rights evaluation” Mostly in connection with infringement litigation, the firm also advises and represents clients in nullity actions before the Federal Patent Court and the Federal Supreme Court (together with patent attorneys). The firm represents employee inventors and employer companies in disputes regarding employees’ inventions remuneration. The firm is also highly experienced in conducting litigation and providing advice concerning other IP rights (eg, designs, trademarks and copyright) and unfair competition and antitrust laws. In addition, the firm has considerable experience in drafting and negotiating licence agreements regarding intellectual property and know-how, both in connection with and independently of pending infringement litigation. The firm further provides comprehensive legal advice to companies with regard to shaping their advertising and marketing campaigns in Germany. Krieger Mes & Graf v der Groeben is an international firm. All the firm’s partners and most associates have studied or worked abroad. They manage international and cross-border litigation for renowned worldwide companies in various industries. In this context, Krieger Mes & Graf v der Groeben relies on an established network of leading law firms in order to guarantee the best possible representation in corresponding countries. The firm’s excellent reputation has also been confirmed by third parties: • “The Düsseldorf IP law firm is one of the most active litigation units in the German market.” (JUVE 2019)
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• “Highly regarded boutique firm with substantial expertise in patent litigation and patent enforcement cases. Represents clients from the technology, electronics, engineering and life sciences sectors in high-profile infringement cases.” (Chambers Europe 2019)
Main address Bennigsen-Platz 1 Dusseldorf 40474 Germany T +49 211 440 337 0 F +49 211 440 337 60 E info@krieger-mes.de Professional contacts Axel Verhauwen Partner E axel.verhauwen@krieger-mes.de Jens Michael Künzel Partner E jens.kuenzel@krieger-mes.de Jochen Bühling Partner E jochen.buehling@krieger-mes.de Sample client list • Classen • Dürr • Finjan • Fipa • Fresenius Kabi • Melitta • MPEG-LA-Pool • Saint Gobain • tesa • VW
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IAM Patent 1000 1015
KUHNEN & WACKER Intellectual Property Law Firm www.kuhnen-wacker.com
KUHNEN & WACKER (K&W) is a full-service IP law firm that was established more than 40 years ago in Freising, close to Munich airport. The firm represents small and medium-sized enterprises, as well as major corporate and global technical innovators. K&W’s professionals is a fine blend of senior attorneys who have gained sophisticated experience over time, and younger, proactive attorneys who may, where needed, rely on the experience of their more senior colleagues and join various interdisciplinary teams.
intermediary platforms. Some components of this added value arise from our internal teamwork, external networking, internal technical and IT staff, and frequent seminar presentations in Japan, the United States, China and Europe. Certification In order to document the high-quality standards that the firm has upheld for years, K&W obtained the official ISO 9001 certification.
Added value K&W has earned a worldwide reputation through its handling of sophisticated litigation matters. Our long record of success includes recent litigation relating to cardiac stents, ink cartridges for printers and in the automotive field. K&W adds value for its clients in many areas, such as licensing, portfolio analysis and management, arbitration and mediation, antitrust, due diligence, competitive benchmarking and
Patent and trademark expertise K&W is specialised in IP-related litigation and prosecution and offers the full spectrum of services in connection thereto (eg, patents, trademarks and oppositions, applying and enforcing preliminary injunctions, handling court procedures and border seizures). The firm is an active member of many trademark organisations, such as the International Trademark Association, the European Communities Trademark Association and the German Association for the Protection of Intellectual Property. The attorneys at K&W are actively involved in several committees in order to develop, improve and harmonise trademark law worldwide. K&W is growing steadily – both in size and volume of work handled. The firm manages thousands of files worldwide. The trademark department moved to a new additional building some years ago. The new building offers fully equipped conference and seminar rooms in order to provide clients with top-quality service and topquality facilities. The annual IP seminar that K&W hosts always includes one day of current trademark and design topics. The technical background of K&W’s patent attorneys – most of whom are also well versed in the trademark fields – makes them valuable experts when it comes to assessing identity and similarity of goods and services in opposition cases.
“Offers a wraparound patent prosecution service... A global reach despite its modest size”
Legal fields K&W is a specialised law firm which has been offering comprehensive legal counsel through its competent team of patent attorneys and attorneys at law for more than four decades. In order to provide the best support for its clients in the context of global competition, K&W has a comprehensive network of colleagues and
The K&W philosophy Continuity, quality and strategy have been the three pillars and principles of this nationally and internationally regarded IP firm for more than 40 years. Based on these principles, K&W offers highquality proactive services at competitive rates. Team K&W consists of a diverse team of about 90, 20 of whom are specialised attorneys and attorneys at law. These attorneys are supported by expert patent engineers and specialists, as well as by a highly qualified and multilingual administrative team. The firm’s experienced and professional staff – as well as its state-of-the-art IT department – guarantee prompt responses to the needs of clients. K&W boasts an excellent track record of handling complex cases successfully.
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associates in more than 150 countries, with which it has longstanding relationships. K&W’s services include the following: • trademarks; • designs; • patents; • utility models; • semiconductor topology; • plant variety protection; • variety denomination; • employee inventions; • university inventions; • national infringement proceedings; • international infringement proceedings; • licence agreements; • international patent cooperation (Patent Cooperation Treaty, European Patent Convention); • international trademark cooperation (Madrid Agreement, EU trademarks); • international design cooperation (Hague Agreement, EU designs); • Japanese patent law and Japanese industrial property rights; • copyright; • competition law; • domain name law; • counterfeiting; • software, computer-implemented inventions; • topography protection; • IP evaluation and assessment; • defence and enforcement of IP rights; • portfolio analysis; • due diligence; • benchmarking; and • consultation services regarding the development of IP strategies.
Main address Prinz-Ludwig-Strasse 40A Freising 85354 Germany T +49 81 61 608 0 F +49 81 61 608 100 E info@kuhnen-wacker.com Professional contacts Rainer K Kuhnen Partner E rainer-k.kuhnen@kuhnen-wacker.com Stephan Kopp Partner E stephan.kopp@kuhnen-wacker.com Christian Thomas Partner E christian.thomas@kuhnen-wacker.com Other offices Munich
“KUHNEN & WACKER IP Made in Germany”
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IAM Patent 1000 1017
The Luzzatto Group www.luzzatto.co.il
The Luzzatto Group is one of Israel’s leading IP groups, celebrating more than 150 years of practice. The Luzzatto Group’s unwavering dedication to clients has carried it into its second century and fifth generation. Family tradition alongside innovative work environment The group combines a family tradition of legal practice with an innovative work environment to serve a wide range of clients. It provides topof-the-line services in patent, trademark and design protection in diverse industries, including pharmaceuticals, medical devices, life sciences, software, cyber, fashion and sports. The Luzzatto Group includes patent law firm Luzzatto & Luzzatto and Luzzatto Law Firm, which specialises in IP and commercial law, along with other companies that provide essential solutions to the community that the group serves. Entrepreneurs, inventors, start-up companies, scientists, artists, and developers seek out The Luzzatto Group’s services to enjoy a personalised approach with a global outlook that helps clients protect intellectual property and commercialise research, inventions and products. The group’s philosophy is of uncompromising professional excellence, personal service and a long tradition that meets constant innovation. Luzzatto & Luzzatto Patent Attorneys – prosecution, strategy and brand protection Luzzatto & Luzzatto Patent Attorneys (L&L) is one of the leading IP firms in Israel, serving a wide range of clients in diverse industries. Its teams specialise in all fields of technology, including high-tech, heavy industry, life sciences and medicine (biotechnology, pharmaceutical chemistry, molecular biology, medical equipment and products), electronics and software, telecommunications, information technology, environment, agro-tech, food-tech, energy and cyber. L&L’s patent department is well known for its team’s in-depth understanding of IP strategic issues, time after time achieving optimal protection, thanks to a combination of professional knowledge and creativity, with flexibility. The firm’s prosecution teams work closely with the litigation teams to build together a comprehensive
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“Storied firm with a legacy of excellence spanning 150 years… Utmost professionalism, constant availability and readiness, collaborative approach, service mindedness and results focus” IP strategy with future developments and litigation in mind. The professional and interdisciplinary teams consist of patent attorneys, lawyers and support staff, all holding advanced degrees in their fields of specialisation, many of whom hold a PhD. Luzzatto Law Firm – enforcement, litigation, licensing and more The Luzzatto Law Firm (LLF) is naturally involved in all aspects of intellectual property. The firm also assists its clients in other fields of commercial law and provides comprehensive services, including building IP strategies and creating economic value for IP assets. The firm fully cooperates with the patent law firm, including in patent litigation, licensing and other patent-related commercial needs and cases. LLF and L&L are at the forefront of today’s legal, business and technology sectors both in Israel and internationally. LLF’s IP department is well known as a destination firm for entrepreneurs, app developers, inventors, artists, high-tech professionals, for-profit businesses, government and public institutions, and international corporations and entities abroad, as well as early-stage start-up companies. Leaders in the pharmaceuticals, fashion, luxury items, automobile and food industries represent a substantial portion of the firm’s activity.
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Working efficiently, quickly and transparently with clients One of The Luzzatto Group’s companies, Elandel Softelecom, is a software house that develops technological solutions specifically for the group’s needs, enabling its teams to work efficiently, quickly and transparently with clients and associates at all times and from every location. Elandel Softelecom developed an in-house trademark management software, an online brand enforcement solution and a new status report system. Transparency is essential to the group, which prides itself on being the first Israeli firm to allow its clients to check their files’ status in real time, any time. The group’s software house developed a new status report system that allows its clients to see an up-to-date status report at a click of a button.
Main address The Luzzatto Building 9 HaGat St. Omer 8496500 Israel T +972 73 226 2626 F +972 73 226 2627 E mail@luzzatto.co.il Professional contacts Kfir Luzzatto President of the Luzzatto Group E kfir@luzzatto.com Michal Luzzatto Managing partner of the Luzzatto Law Firm of The Luzzatto Group E michal@luzzattolaw.co.il Amir Palmery Head of national filing department E amirp@luzzatto.co.il Other offices Tel Aviv Sample client list • Deutsche Telekom • Eli Lilly • GSK • Kennametal • LYFT • Novartis • Rafael • Sony • Syngenta • Tadiran
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IAM Patent 1000 1019
Maikowski & Ninnemann www.maikowski-ninnemann.com
Maikowski & Ninnemann is a highly specialised patent attorney firm with offices in Berlin, Leipzig, Frankfurt and Munich and decades-long experience in IP law. Founded in 1977, Maikowski & Ninnemann now has 18 German and European patent attorneys (of whom six are partners) covering the various fields of technology – from physics, mechanical engineering, electrical engineering and information technology to medical technology, chemistry, biochemistry and biotechnology. Maikowski & Ninnemann’s clients are regional medium-sized firms, as well as large global companies and start-ups. Although patent prosecution is its traditional core area of business, in recent years the firm has also become well known for its expertise in patent litigation and has successfully taken part in some of the major patent disputes recently fought in Germany. Due to their specialisation in intellectual property, Maikowski & Ninnemann’s patent attorneys have strong expertise in all areas of IP protection. They deal with clients’ projects and concerns relating to industrial property rights and develop strategic plans for the best protection of inventions, trademarks and designs, as well as the enforcement and exploitation of clients’ rights. Taking personal care of clients’ interests lies at the centre of the firm’s strategic thinking and operation. Whether large or small, companies will find a personal counsel at Maikowski & Ninnemann. There is a strong belief within the firm that a trusting relationship between client and attorney is fundamental to achieving the best solutions for protecting and enforcing clients’ IP rights. Maikowski & Ninnemann is a ‘pure’ patent attorney firm. In cases that require representation by attorneys at law (eg, patent infringement cases), the firm teams up with specialised external attorneys at law firms with expertise specific to the case at hand. Services The key services provided by Maikowski & Ninnemann are: • advising clients on the best strategies to protect inventions, trademarks, designs, plant varieties and topographies; • filing patent, utility model, design patent and trademark applications; • representing clients before the German Patent and Trademark Office, the EPO, the Federal
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Patent Court, the EU Intellectual Property Office and other international offices regarding IP protection; handling litigation, including patent and trademark infringement suits before the civil courts and nullity suits before the Federal Patent Court and the Federal Court of Justice in cooperation with external lawyers; counselling clients with regard to licence agreements; monitoring and administering IP rights portfolios; and conducting patent, trademark and design searches and patent translations.
Areas of technology The patent attorneys of Maikowski & Ninnemann are experienced in all areas of technology, including: • mechanical engineering (eg, mechanics and mechatronics, plant engineering, automotive engineering, naval technology and mechanical engineering); • electrical engineering (eg, electronics, telecoms, semiconductors, measurement and control technology and medical technology); • physics (eg, optics and light technology (ie, optoelectronics, cameras, telescopes and lasers), medical systems technology, medical imaging and measurement technology); • software; • life sciences (eg, chemistry, biochemistry and biotechnology); and • pharmaceuticals.
“Praised by clients for its “highly qualified attorneys, its commercial focus, its reliability, and its ability to facilitate productive working relationships” www.IAM-media.com
Clients Maikowski & Ninnemann’s clients include many large national and international firms, as well as medium-sized companies and start-ups. In the ongoing patent wars in the telecoms and IT sectors, the firm represents, among others, leading mobile phone manufacturers and leading telecoms and IT service providers. Concerning prosecution, the firm represents various international technology companies, as well as a renowned German biopharmaceutical company focused on the development of pioneering therapeutics for common degenerative disorders and various manufacturers of vehicle systems. Languages Our working languages include German, English and French.
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Main address Kurfürstendamm 54-55 Berlin 10707 Germany T +49 30 881 81 81 F +49 30 882 58 23 E office@maikowski-ninnemann.com Professional contacts Gunnar Baumgärtel Partner E baumgaertel@maikowski-ninnemann.com Other offices Frankfurt, Leipzig, Munich
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Maiwald Patentanwalts- und Rechtsanwalts-GmbH www.maiwald.eu
As one of Germany’s largest and best-known firms in the IP field, Maiwald aims to achieve the best possible solution for each client in each particular case. Maiwald employs approximately 220 people in Munich and Dusseldorf. The interdisciplinary teams work closely with one another and with foreign associates, always with an eye to the clients’ particular needs – regardless of their industry and whether they are a start-up, mediumsized firm or large corporation. Maiwald’s team does its utmost to ensure that all IP matters are handled with competence and care, irrespective of where clients are located. Customised solutions Client-oriented solutions and personal consultation are at the heart of Maiwald’s professional approach. Approximately 90 highly qualified patent attorneys, attorneys at law and technical experts, an in-house patent search department and numerous client-specific teams of paralegals put their extensive skills and experience at clients’ disposal in order to arrive at the best possible customised IP solutions. Client satisfaction is evidenced by Maiwald’s longstanding business relationships with many prestigious corporations. Interdisciplinary teams Maiwald advises and represents domestic and international clients from all technical fields across the entire spectrum of IP law. When appropriate, the interdisciplinary exchange of information and expertise can take place between various teams, ensuring that the optimal solution is achieved in each particular case. Patent attorneys Maiwald’s team of patent attorneys combine their expertise across various technical fields and advise and represent clients across a wide range of industries, including: • pharmaceuticals and biotech; • organic chemistry and polymers; • food and agriculture; • electrical and mechanical engineering; • inorganic and construction materials • information and communications technology; • mobility and energy; • displays and lights;
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• measuring and process technology; and • medical technology and imaging. Maiwald’s patent attorneys have extensive experience in the management of international patent portfolios. Services include drafting and filing patent applications and coordinating worldwide prosecution, as well as defending, enforcing and contesting IP rights. Patent attorneys also prepare freedom-to-operate opinions based on thorough research and analysis to establish whether third-party IP rights could stand in the way of a client’s product or manufacturing process. Clients also benefit from the exceptional expertise in opposition and appeal proceedings before the German and European Patent Offices, as well as in infringement and nullity proceedings before the national courts. Attorneys at law Maiwald’s team of attorneys at law have many years of experience in trademark, design, copyright and contract law, as well as patent infringement litigation. In particular, this includes the conduct and coordination of international litigation proceedings. The firm’s legal expertise covers: • patents and utility models; • supplementary protection certificates; • trademarks and designs; • competition and antitrust law; • contract law; • copyright; • compliance;
“Not only one of the leading patent prosecution outfits in Germany, but also one of its strongest overall IP firms… Circa 80 scientifically capable patent attorneys” www.IAM-media.com
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employee invention law; pharmaceutical law; data protection; and plant variety protection.
Close cooperation between patent attorneys and attorneys at law is especially important in patent infringement litigation, since this type of proceeding generally calls for a comprehensive overview of national regulations and a thorough grasp of the relevant technology. The interdisciplinary teams provide a comprehensive package of services to guarantee the successful conduct of legal proceedings in an international arena, as well as in cases where speed is of the essence, such as in preliminary injunction proceedings and border seizure procedures. However, Maiwald’s attorneys at law would be the first to acknowledge that litigation is not always the best solution. Therefore, they are also skilled advocates in arbitration and mediation proceedings, as well as trusted experts when it comes to negotiating licensing contracts.
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Main address Elisenhof Elisenstrasse 3 Munich 80335 Germany T +49 89 74 72 66 0 F +49 89 77 64 24 E info@maiwald.eu Professional contacts Eva Dörner Partner E doerner.marketing@maiwald.eu Franziska Wiedemann Head of marketing E wiedemann@maiwald.eu Other offices Dusseldorf
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Mathys & Squire LLP www.mathys-squire.com
The premier European IP firm, Mathys & Squire has unrivalled expertise in patents, trademarks, design protection and litigation. The firm is ranked across all prominent legal publications, in acknowledgement of our over 100 years of experience in the protection and commercialisation of IP rights, leading the field with insight, innovation and quality. The firm has over 60 qualified attorneys based in offices across the United Kingdom (London, Birmingham, Brighton, Cambridge, Manchester, Oxford and York) and Europe (Luxembourg, Munich and Paris), as well as teams based in China and Japan. Mathys & Squire’s technical experts have a mix of scientific degrees covering chemistry, biochemistry, pharmacology, genetics, microbiology, plant sciences, electronics, telecommunications and engineering. Most of the attorneys hold further degrees and many have PhDs. A number of our attorneys have worked in-house within IP departments of large international organisations and use this experience to enhance the firm’s ability to assist in the strategic, commercial and active management of IP portfolios. Mathys & Squire works with its clients to maximise the value of their IP assets. The firm’s breadth of technical expertise and depth of professional experience are coupled with a determination to add real commercial value, which drives significant revenue growth through the effective use of clients’ intellectual property. The firm has a broad spread of clients, ranging from start-ups to major UK and global corporations, many of whom are household names. Clients of the firm value its commitment to professional excellence and technical expertise. Through its creative approach, the firm has a successful record of securing the grant of key patents and settling disputes. Client companies without in-house patent departments value the firm’s understanding of their business issues and the importance and commercial value of their intellectual property. Mathys & Squire enjoys excellent relationships with like-minded firms of associates from all over the world. Mathys & Squire’s core areas of expertise are: • identifying intellectual property capable of protection by understanding the client’s technology and business objectives;
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“Dynamic and exceptional in its service… Vast proportion of its work takes place in a crossborder context” • obtaining valuable patent, trademark and design registrations through skilful drafting and powerful advocacy before the world’s patent and trademark offices; • representing clients in disputes and contentious proceedings (especially those of the EPO), drawing wherever necessary upon the expertise of fellow professionals; • facilitating the commercial exploitation of a client’s intellectual property by way of sale, licence or joint venture; and • advising clients in relation to their IP strategy and management of their IP portfolios. Mathys & Squire offers a full range of services across patents, trademarks, designs, litigation and related IP rights, both contentious and non-contentious, working across a spectrum of industries: • strategic management of global patent and trademark portfolios for major corporations; • advising start-ups in relation to the creation and ownership of IP rights and their commercial exploitation; • patent and trademark prosecution, including oppositions and appeals, for major corporations; • providing specialist European (EPO and the EU Intellectual Property Office) expertise to fellow professionals; • working alongside solicitors and counsel in the United Kingdom, bringing to bear the firm’s complementary skills and experience; • advising at CEO level on the role of IP rights in revenue generation and asset creation; • finding paths through third-party patent, trademark or other IP rights, including
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challenges to validity where appropriate; • valuation of intellectual assets to assist businesses with a potential sale or initial public offering; • resolving disputes through various forms of alternative dispute resolution to litigation, whether as the lead firm or as part of a team; and • bringing specialist IP skills to corporate finance, including due diligence and IP strategy. Mathys & Squire believes that effective systems for protecting intellectual property are essential so that innovators can be properly rewarded. Clients become successful by recognising the opportunities and risks of intellectual property and following a well-thought-out IP strategy; the Mathys & Squire team becomes part of that success by developing excellence, instilling a culture of creativity and innovation and adding value for all our clients.
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Main address The Shard 32 London Bridge Street London SE1 9SG United Kingdom T +44 20 7830 0000 F +44 20 7830 0001 E mail@mathys-squire.com Professional contacts Christopher Hamer Partner E ckhamer@mathys-squire.com Martin MacLean Partner E mrmaclean@mathys-squire.com Jane Clark Partner E jaclark@mathys-squire.com Other offices Birmingham, Brighton, Cambridge, Luxembourg, Manchester, Munich, Oxford, Paris, York
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Meyerlustenberger Lachenal Ltd www.mll-legal.com
Meyerlustenberger Lachenal Ltd (MLL) is one of the most reputable international business law firms in Switzerland. Its over 110 experienced and dynamic lawyers form a strong team of specialists that stand for innovative and solution-focused services. With offices in Zurich, Geneva, Zug and Lausanne, the firm is present in the key Swiss economic centres. MLL also has a China desk, a Latin American desk and a Turkey desk for clients with interests involving these regions. The firm advises discerning clients on all issues relating to national and international commercial law and represents their interests before all Swiss courts and authorities, as well as in arbitration proceedings.
“A go-to for patent disputes in Switzerland… Does a fantastic job in the pharmaceutical industry, especially for innovator companies”
Dedicated full-service IP practice MLL brings talent, expertise and solution-based teamwork to all IP issues. The members of the IP team rank among the leaders in IP law and have vast experience, primarily in Swiss but also in EU and German law. The firm’s IP specialists have extensive and wide-ranging experience in enforcing trademarks, copyright, designs and patents. The team also offers prosecution services for trademarks, designs and domain names, together with strategic advice and consultation on contracts, including antitrust matters. MLL is a one-stop shop for all IP-related matters (excluding patent applications).
• with unfair competition, design, trade dress and counterfeiting disputes; • with the support of creative and designfocused companies, in particular advertising agencies, manufacturers of design products and photographers; and • in providing sophisticated advice in the growing field of geographical indications.
Trademarks, designs and unfair competition MLL performs the full range of trademark, design and domain name-related services in Switzerland and abroad, including registering, enforcing, opposing and defending these rights. MLL has broad experience in the management of large portfolios and in counterfeiting cases. The firm can also assist: • in finding solutions under the new Swissness legislation (legal criteria regulating the use of Swiss goods and services); • in developing and implementing trademark and design protection strategies; • with litigation before all Swiss courts and authorities and coordination of international disputes; • with IP-related arbitration (including domain name dispute arbitration); • with the comprehensive management of entire IP portfolios;
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Patents and the health industry MLL’s patent litigation team has outstanding expertise and experience in managing complex patent matters nationally, as well as in multiple jurisdictions, litigating before all Swiss courts and coordinating cross-border patent litigation. Advising and representing pharmaceutical companies in regulatory issues is also a primary team focus. Copyright, technology, media and telecommunications MLL has been providing support and advice to technology companies and enterprises in the media and telecommunication industries for many years. The team at MLL is also recognised by clients and peers as leading specialists in the area of privacy and data protection in Switzerland. The firm’s clients benefit from the team’s understanding of data protection laws in combination with their knowledge on the digitalisation of business activities and its legal and operative impacts. The firm’s services comprise the following: • consulting software developers and IT service providers, as well as the users of such products and services (eg, outsourcing and IT security);
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• data protection topics in connection with software and mobile applications and cloud computing; • consulting media companies active in the classic media sector (eg, print, radio and television) and the new online media sector; • supporting telecommunications companies in solving problems and exploiting the opportunities offered by the convergence of fixed-line networks, mobile radio communications and the Internet; • compliance with relevant data protection rules of internet businesses, communities and ventures (eg, data protection guidelines, general terms and conditions and privacy policy); • reviewing technology-focused due diligence; • assisting with the financing, marketing and sale of technology-based solutions, technology-centric media and telecommunications companies; and • assisting with the exchange of technology, in particular through licences and R&D agreements.
Main address Schiffbaustrasse 2 PO Box Zurich 8031 Switzerland T +41 44 396 91 91 F +41 44 396 91 92 E zurich@mll-legal.com Professional contacts Simon Holzer Partner E simon.holzer@mll-legal.com Michael Ritscher Partner E michael.ritscher@mll-legal.com Other offices Geneva, Lausanne, Zug
Languages MLL’s working languages include German, English, French and Spanish. Some of the firm’s professionals are also fluent in Italian and Portuguese.
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IAM Patent 1000 1027
NLO www.nlo.eu
NLO protects and reinforces clients’ ideas, innovations and trademarks to perfection, bearing in mind the markets in which they are actively involved. How we proceed and work together with clients is governed by the key values on which our organisation is based: • Fortified with innovation – we are always in search of new solutions and possibilities. We invest significant time and effort in developing new ways to make our services even better. • Fortified with expertise – our 200 dedicated professionals have extensive knowledge and experience in many fields, which is how we can offer different services at the highest quality. We also have a worldwide network of agents at our disposal. • Fortified with passion – passion is what all of our professionals have in common. Every attorney is prepared to go the extra mile in their field of expertise. • Fortified with teamwork – we make sure to combine individual expertise in teams, and we think ahead and design solutions beyond the original task. • Fortified with creativity – protecting innovations, trademarks and ideas is key to our services, but creativity is also pivotal. It helps us to handle processes more efficiently and generate solutions that make a difference. • Fortified with experience – we are over 130 years old but, despite this rich history, we always focus on the future, for in it lies growth. These have been the key elements of our services for more than 130 years and will continue to be vital in the future. About NLO NLO is one of the largest full-service European IP consultancy firms with locations in the Netherlands and Belgium. We offer a unique combination of technical and legal expertise with insight into the business environment in which clients operate. This distinguishes the 70 European patent attorneys at NLO and 15 European trademark and design attorneys at NLO Shieldmark. By combining our expertise, NLO is able to provide clients with the most comprehensive advice possible. The specialists of NLO and NLO Shieldmark also have the most up-to-date knowledge of the IP market at
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“Stalwart of the Dutch patent prosecution scene… Has all disciplines on lock” their disposal, which they use in order to provide optimum management for clients’ IP portfolios. Products and services Our client list includes multinationals, small and medium-sized enterprises, universities and R&D and governmental organisations. We offer a broad range of IP services. Our patent services include: • drafting and filing national and international patent applications; • patent prosecution; • in-house US practice; • opposition and appeal patent proceedings before the EPO; • patent validity and infringement advice; • patent portfolio management and advice; • patent renewal payment and administration; • patent litigation advice; • services and advice in the fields of trademarks, designs, copyright, licences and agreements, and domain names; • IP training; and • drafting, negotiating and advising on IP-related agreements. NLO Shieldmark The European trademark and design attorneys at NLO Shieldmark offer availability searches, registration, oppositions, infringement advice, cancellations, watch services, renewals, in-use searches and mutations. Strategic teams In an innovative, knowledge-intensive market, the value of an organisation largely depends on IP rights. An effective patent, trademark or design strategy saves and can even make money. For strategic choices involving their IP portfolios, clients naturally wish to receive advice from different perspectives – and we provide comprehensive, tailor-made advice. Our
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industry-driven teams combine complementary knowledge and expertise, so that every type of issue can be addressed and we can guarantee the continuity and quality of our services so that clients receive prompt, efficient service. We also have cross-industry expert teams for specific areas of interest, such as our focus groups for health, artificial intelligence and our in-house US practice team. Locations NLO has four offices in the Netherlands (The Hague, Amsterdam, Ede-Wageningen and Eindhoven) and two offices in Belgium (Ghent and Mechelen). For more information visit www.nlo.eu.
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Main address PO Box 29720 The Hague 2502 LS Netherlands T +31 70 331 25 00 E info@nlo.eu Professional contacts René van Duijvenbode Managing partner E vanduijvenbode@nlo.eu Other offices Amsterdam, Ede-Wageningen, Eindhoven, Ghent, Mechelen
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NONY www.nony.fr
NONY is a well-established IP law firm founded in 1964. Since then, the firm has continuously offered the highest quality services in relation to patents, trademarks, copyright, trade secrets and other IP matters. The firm’s clients particularly value its professionals’ responsiveness, commitment and skills. With headquarters in Paris and branch offices in Lyon, Grenoble, Toulouse, Nantes and Nice, NONY offers a broad geographical coverage in France. The firm is involved in all areas of intellectual property. Its team of experts offers comprehensive and integrated IP solutions covering patent prosecution, litigation, invalidation and various kinds of research and analysis, including freedom-to-operate and pre-litigation patent portfolio analyses.
“Robust support… Crown-jewel assets of its international client base enjoy watertight protection in all corners of the globe”
NONY’s experts NONY’s team includes more than 35 seasoned professionals holding engineering degrees, PhDs and law degrees, able to cover the full spectrum of the firm’s clients’ needs and deliver tailored, integrated and cutting-edge IP solutions transparently and on budget. Many of these professionals have in-house experience, in various industries and research institutes. Their expertise is further acknowledged by their regular intervention as speakers or experts before the French Courts. NONY’s patent attorneys are specialists in a range of technical areas, including mechanical, electrical, chemical and life sciences; they work side-by-side with the firm’s design and trademark attorneys to satisfy clients’ diverse needs. Typically, one patent attorney is assigned to each client to act as referee and ensure a personalised and consistent service. In a continuously changing and evolving technological world, the firm’s experts work transversally to form cross-disciplinary teams and to ensure that all facets of complex IP matters are covered, and that all clients’ needs are identified and met. The partners and associates of the firm are members of the main French and international professional organisations including the National Company of Industrial Property Attorneys, the International Association for the Protection of Intellectual Property, the International Federation of Intellectual Property Attorneys, the Association
International network and clients NONY’s multi-disciplinary experts rely on a strong network of specialised and well-proven foreign associates, with whom NONY has established privileged relationships to represent businesses and clients around the world in various jurisdictions, in connection with patent, trademark, trade secret, copyright and technology matters. NONY assists a wide array of national and international clients covering a diverse typology of businesses, including small and large companies, public and private research laboratories or institutes, value-add organisations, such as technology transfer accelerator companies, and universities. NONY works with its clients to assist them in identifying their IP assets and capturing and protecting their innovations resulting from research and development efforts, from invention to commercialisation. NONY also helps its clients to maximise and to defend the value of their IP assets portfolio in negotiating strategic relationships or in litigation.
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of Industrial Property Attorneys, the Association of Practitioners of European Patents, the Association of Trademark and Design Rights Practitioners, INTA and the Licensing Executives Society.
Full-service boutique NONY assists its clients with all aspects of intellectual property. In particular, the firm provides the following services: • patentability opinions, drafting and filing of patent applications and supplementary protection certificates, in France and abroad; • availability searches, trademark and design
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filings in France and abroad; • examination proceedings before patent or trademark offices in France and abroad, opposition procedures at the EPO or EUIPO; • freedom-to-operate analyses in France and abroad; • due diligence on intellectual property in investment and M&As; • counterfeiting and unfair competition litigation in France and abroad; • financial evaluation of IP rights; • negotiation and drafting of contracts, in particular non-disclosure agreements, licensing, assignments for patents, trademarks and designs; • proactive coordination of maintenance and annuities management for large patent portfolios, as well as trademark and design renewals, legal status updates; • drafting and recordation of assignments, licences and changes of name and address; and • training programmes (for private companies, but also at the National Institute of Industrial Property and universities).
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Main address 11 rue Saint Georges Paris 75009 France T +33 1 43 12 84 60 F +33 1 43 12 84 70 E nony@nony.fr Professional contacts François Tanty General managing partner E ftanty@nony.fr Pascale Le Coupanec Managing partner E plecoupanec@nony.fr Olivier Dagès Managing partner E olivier.dages@nony.fr Other offices Grenoble, Lyon, Nantes, Nice, Toulouse Sample client list • L’Oréal • Mars Inc • Oberthur Fiduciaire • Radiall • Saint-Gobain • Sanofi • Vinci
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NSN Law Firm www.nsn-law.com
The core practice area focus of NSN Law Firm is intellectual property, and our nine partners and nearly 30 lawyers allow us to provide comprehensive IP law services in both contentious and non-contentious matters, including a wide range of IP matters involving complex regulations, licensing, technology transfers, freedom-tooperate issues and data exclusivity, in addition to conducting litigation proceedings for patent infringement, invalidity, unfair competition and negative clearance actions. Located in Turkey’s largest city, Istanbul, our firm also cooperates with associates in the capital Ankara, as well as the major cities of Izmir and Antalya, enabling us to represent clients before the IP courts, enforcement offices and customs agencies throughout Turkey. Internationally, our longstanding relationships with foreign law offices provide us with a global reach to assist clients in cross-border disputes in multiple jurisdictions around the world. Providing innovative and tailor-made legal solutions is our primary objective. Our lawyers have IP expertise in various sectors including pharmaceuticals, biotechnology, medical devices, telecommunications, electronics, mechanics, chemicals and engineering, and we have a reputation for excellence in addressing the diverse needs of clients operating in these various sectors. We have earned this reputation by developing an in-depth knowledge of each relevant industry and this approach has resulted in wins for our clients in cutting-edge patent litigations that resulted
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in landmark decisions. We are also helping to shape the future of Turkish patent law by assisting industry associations with commentary on draft legislation. Our firm’s long-established practice in the field of life sciences regulations enables us to blend patent litigation strategy with sectoral knowledge. We advise national and multinational life sciences companies on a wide range of matters, including licensing agreements, pricing regulations, reimbursement regulations, marketing authorisation procedures, clinical trials, observational study projects, and promotion and compliance practices. This broad regulatory experience allows us to evaluate patent disputes from a wider perspective and resolve disputes by using both patent law and regulatory tools. This also enables our teams to provide more costeffective solutions by anticipating problems before they arise, as regulatory solutions are often less costly than patent litigation. The patent practice is handled by a combined team consisting of legal practitioners and scientific experts with different technical and academic backgrounds. As cross-border patent litigation involves complex technical issues, the technical team comprise European patent attorneys, regulatory experts and competition experts. The technical team members support our legal experts when drafting claims, filing applications, making patentability assessments and conducting infringement and validity analyses. Our firm’s sub-teams dedicated to specific clients have comprehensive knowledge of our clients’ needs, as they know their clients and their history very well and understand their unique requirements. The teams also use technological online data systems to improve collaboration, provide clarity and achieve better results. In addition to Turkish, our lawyers are fluent in English, French and German, allowing us to provide services in different languages as required. NSN Law Firm is a member of various international organisations such as the International Association for the Protection of Intellectual Property, Union-IP, the Intellectual Property Owners Association, INTA, the European Communities Trademark Association, the Pharmaceutical Trademarks Group, MARQUES and the Chartered Institute of Trademark Attorneys.
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Our firm and its individual partners are routinely ranked in the top tiers of the rankings published by The Legal 500, Managing IP and Chambers & Partners. IAM Patent 1000 has repeatedly selected the firm as a Leading Law Firm for Patent Litigation and Transactions. The senior IP partner, Selma Ünlü, has been regularly listed among the patent stars by Managing IP’s IP Stars and Top 250 Women in IP, and in The Legal 500’s Hall of Fame.
Main address Atilla Sok No 6 Altunizade Burhaniye Mah Istanbul 34676 Turkey T +90 216 321 47 47 F +90 216 321 47 67 E ipteam@nsn-law.com Professional contacts Selma Ünlü Senior partner E selma.unlu@nsn-law.com
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Onsagers AS www.onsagers.no
Onsagers AS is a leading full-service IP firm and IP strategy adviser in Norway, acting globally with a dedicated international team. Team of international IP experts in Norway Onsagers’ dedicated international IP team offers a one-stop-shop approach where attorneys at law and European patent attorneys with extensive international experience work in close collaboration. Our international team has comprehensive experience in trademark and patent prosecution and enforcement, including customs seizures, passing off and unfair competition cases, as well as trademark and patent infringement and validity cases – some of which have attracted international attention. We will give you the best professional and cost-efficient advice for your intellectual property in Norway. Our team members have vast experience representing clients before the Norwegian Industrial Property Office (NIPO), as well as at WIPO, the EPO and the Nordic Baltic IP Committees. Our experience ensures up-to-date insight into Norwegian IP practice and efficient advice and best strategy for your IP rights. Your Norwegian IP partner • Onsagers is one of the largest, leading and longest-established IP firms in Norway, with over 70 years of practice. • Onsagers promises to give professional, clear-cut advice with a practical, no-nonsense approach; we dare to say “GO”/“NO GO”. Our objective is to be your privileged partner for the protection, management and exploitation of your intellectual property. Through open dialogue and unambiguous advice, combined with modern technology, up-to-date services and a cost-conscious approach, Onsagers offers premium quality IP advice. Clients Onsagers has a strong position within the Norwegian exports industry and is their preferred choice when it comes to portfolio management. The firm also works with many of the stock exchange-listed companies.
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Teams The firm employs more technical PhD graduates than any other IP law firm in Norway, lending the team in-depth knowledge of the life sciences, pharmaceuticals, oil and gas, and shipping industries. The life sciences pharma team is headed by Kari Helen Simonsen and consists of both in-house legal pharmaceuticals experts and strong biochemistry patent prosecutors. The firm also offers strong competence in prosecution before NIPO, employing as it does more former NIPO examiners than any other Norwegian IP firm. Onsagers also excels in litigation and was part of the team that won the Apple trademark infringement case before the Supreme Court after leading the litigation in the previous court instances. The Onsagers experts typically work in combined legal and technical teams wherever relevant and especially in infringement matters to ensure that all the strategic sides of the case are covered. The highly respected and very competent legaltechnical team headed by Ulrikke Asbøll and Henrik Rode are special IP advisers to the unicorn and tech company AutoStore, handling and coordinating all IP matters from due diligence investigations to IP strategy, as well as handling and prosecuting patent and trademark applications. Diversity and corporate social responsibility Onsagers has a strong focus on diversity and gender equality. The firm has a 50-50 employment rate of women and men. We actively and continuously work to promote and recruit more female partners, with already more than 30% of partners being female – an unusually high percentage in Norway. Some 65% of the board members are female. More than 10% of Onsagers employees are from non-Norwegian origin.
“Top-tier IP firm… highly recommended on every level” www.IAM-media.com
Professional memberships • Association of IP Professionals in Swedish Industry • epi • European Communities Trademark Association • INTA • International Association for the Protection of Intellectual Property and its Norwegian group NIR • International Federation of Intellectual Property Attorneys • International Institute for IP Management • Licensing Executives Society • MARQUES • Norwegian Patent Attorneys Association • Norwegian Society of Graduate Technical and Scientific Professionals • Swedish Association for the Protection of Intellectual Property
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Main address Munkedamveien 35 PO Box 1813 Vika Oslo 0250 Norway T +47 23 32 7700 F +47 23 32 7701 E post@onsagers.no Professional contacts Ann-Cathrin Hoel Director legal department E ach@onsagers.no Lars-Fredrik Urang CEO E lfu@onsagers.no Other offices Bergen, Tromsø
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Osborne Clarke www.osborneclarke.com
Osborne Clarke is a future-focused international legal practice: across our well-connected network, we have over 900 talented lawyers and more than 270 expert partners based in 26 international locations* around the world. Our expertise in eight core sectors is focused on helping our clients to succeed in tomorrow’s world. Through our collaborative culture and sector-led approach, we have a robust understanding of the local business environment and in-depth legal expertise in each jurisdiction. We’re listeners, innovators and problem solvers, finding new ways to join the dots between our clients’ challenges today and the opportunities being created in an ever-evolving, ever-developing global society. Our core sectors: life sciences and healthcare; media and comms tech; energy and utilities; financial services; real estate and infrastructure; workforce solutions; retail and consumer; and transport and automotive. Osborne Clarke is the business name for an international legal practice and its associated businesses. Full details at www.osborneclarke.com/ verein. *Services in India are provided by a relationship firm. Our IP practice We pride ourselves in acting for clients for whom intellectual property is an important and valuable part of their business. Our all-round experience means we can help clients protect, manage, enforce and exploit their intellectual property. Many of the world’s leading companies come to us for IP advice, whether that’s litigation to enforce their intellectual property or defend them against third parties, freedom to operate or protecting their portfolio of brands. We always advise in the context of our clients’ business and our sector experience underpins that. We regularly work with global companies to devise the most effective pan-European IP strategies, and with offices in the six key European jurisdictions we can act locally to help you implement, exploit and enforce IP rights wherever appropriate. Our patent specialists cover the full range of technologies with particular expertise in pharmaceuticals, biotechnology, medical devices, mobile telephony, electrical
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engineering, semiconductors and computerimplemented inventions. We have helped leading technology companies manage and enforce their patent rights in the European Union. With specialists in the strategically important jurisdictions of the United Kingdom and Germany, we are on the spot in the cities where patent disputes are most likely to be fought. In all cases, we draw upon the technical and legal knowledge our lawyers have built up in this specialist area. We also advise on the registrability of inventions in Europe, including appropriate and cost-effective strategies in the European Patent Office (EPO). We can also assist if you wish to license, acquire or dispose of patent rights, and assess a market opportunity. We have particular experience of FRAND licensing issues relating to standardessential patents. The practice is comprehensive in scope but is particularly known for acting in high-profile, high-value patent litigation, routinely involving an international element, as well as handling portfolio management matters for internationally recognised brands. We have acted in patent disputes in the English High Court, Court of Appeal, UK Supreme Court, EPO and UK Intellectual Property Office and the patent chambers of the courts in Dusseldorf, Munich, Hamburg, Manheim and Braunschweig, as well as the EPO and Federal Patent Court in cooperation with specialist external patent attorneys from the firm’s network. We have extensive experience in a number of sectors including life sciences (eg, Amgen, Morphosys and the German Cancer Research Institute), telecoms/FRAND (eg, Unwired Planet and PanOptis), mechanical (eg, PopSockets, ARMOR, Deutsche Windtechnik) and electronics/media and communications (eg, Infobip), in part reflecting our
“Dominant IP litigation force across the whole of Europe… Intervenes in cross-border mandates with ease” www.IAM-media.com
sector strengths as a whole and underpinning how we can bring to bear a range of ancillary services to support our clients. With high-profile cases such as advising on Unwired Planet v Huawei and acting in the Olanzapine and PCSK9 litigation, Osborne Clarke has demonstrated clearly its ability to operate at the highest level of the German, UK and international patent field. We do so through a team which has outgrown the scale of some of the firms already ranked by IAM Patent 1000. Osborne Clarke is also advising on patent licensing and IP-related matters in high-profile transactions such as the acquisition of Flender from Siemens AG.
Main address One London Wall London EC2Y 5EB United Kingdom T +44 207 105 7000 Professional contacts Arty Rajendra Head of IP disputes, United Kingdom E arty.rajendra@osborneclarke.com Andrea Schmoll Partner, Germany E andrea.schmoll@osborneclarke.com Sample client list • Amgen • ARMOR • Deutsche Windtechnik • Infobip • Morphosys • PanOptis • PopSockets • Unwired Planet
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PATENTREE www.patentree.eu
Founded in 2013 PATENTREE provides specialised IP services. The firm’s partners and associates have extensive experience in IP prosecution in all fields of intellectual property. PATENTREE’s professionals are highly qualified and have in-depth experience in drafting, prosecuting and enforcing patents in Europe, the United States and other jurisdictions. Our firm is characterised by our unfailing commitment to excellence and strong IP strategies. Whether the work entrusted to us is patent drafting, patent searches, prosecution, oppositions, freedom-to-operate reports or patent validation, it is quality checked to ensure that it meets the highest standards. We are a ground-breaking firm in Portugal and currently the only patent firm employing several qualified European patent attorneys. We specialise in both electromechanical and chemical technology fields. For the fifth consecutive year, PATENTREE has been recognised by the IAM Patent 1000 as a leading patent firm in Portugal employing leading patent individuals. In 2019 a Financial Times and Statista special report on leading European patent law firms listed PATENTREE among Europe’s top 150, awarded with Gold and Silver status. We are known for our team of responsive advisers, our ability to communicate effectively with scientists and investors, as well as for our success rate in prosecution, opposition, intervention and appeal cases. We strive to do our best to help our client protect their IP rights. We work closely with clients in order to fully understand their technology and to provide solutions specifically tailored to their needs. We are a dynamic team of molecular biologists, bioengineers, mechanical and electrotechnical engineers. Among our team of professionals, some are former scientists, patent and trademark examiners, as well as IP consultants. They are dedicated to raising IP awareness in Portugal and to continuously be involved in providing patent law training courses in Portugal and abroad. We have been involved in providing tutoring for the University of Strasbourg Centre for International Intellectual Property Studies, as well as for the Institute of Professional Representatives before the EPO.
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“Competitors award full marks… Handles its clients and work with exceptional care” PATENTREE’s professionals have extensive experience before the patent and arbitration courts – in particular, as experts and technical assistants who have received the European patent litigation certification. Our professionals also have extensive experience and in-depth skills in patent searching. We use multiple world-class databases and tools when preparing reports in relation to patentability, freedom to operate and infringement. Speciality areas PATENTREE is committed to helping clients obtain effective and adequate IP protection. We are involved in all fields, including industrial and pure chemistry, molecular biology, biotechnology, pharmaceuticals, food technology, mechanics, software, optics, nanotech, medical devices, renewable energies, electronics and telecommunications – both in Portugal and abroad. Services Our firm offers the full range of IP services and is committed to providing comprehensive and innovative expertise, creating value to benefit our clients. Our list of services includes: preparing, drafting and submitting patent applications; • filing and prosecuting patents in key jurisdictions, including before the EPO, WIPO and the US Patent and Trademark Office; • preparing and filing of oppositions and appeals at the EPO; • advising on patent and utility model applications and complex protection strategies; • patentability assessments and prior art evaluations; • preparing freedom-to-operate and patent landscape reports; • providing expert opinions for infringement and validity court actions; • conducting due diligence;
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• managing and enforcing IP portfolios; • IP department outsourcing, including comprehensive advice on matters relating to employee inventions; • providing in-house training; and • providing other trademark, design and IP rights services. Languages Portuguese, English, French, German, Spanish, Mandarin Chinese, Polish
Main address Rua de Salazares 842 - Edf NET Porto 4149-002 Portugal T +351 220 028 916 F +351 225 322 066 E info@patents.pt Professional contacts Luís Ferreira Partner E luis.ferreira@patents.pt Anabela Carvalho Partner E anabela.carvalho@patents.pt Other offices Lisbon
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IAM Patent 1000 1039
Patpol – European and Polish Patent and Trademark Attorneys www.patpol.pl
Patpol is one of the leading IP law firms in Poland. It was founded in 1966 and is one of only two Polish IP firms with such a long history and tradition. Over the past 55 years Patpol has built a national and international reputation based on the knowledge, professionalism and experience of its team members. Patpol is widely considered a leading IP firm for the comprehensive protection of inventions, utility models, industrial designs, trademarks and copyright. Patent team – quality focus and wealth of experience Members of the firm’s patent department have specialised expertise and experience to advise their clients on the sophisticated strategies needed to protect their inventions, as well as prepare all necessary documents and representation for the filing, maintenance and defence of patents before the Polish Patent Office, the EPO, WIPO and abroad under the Patent Cooperation Treaty. With the assistance of the firm’s extensive network of international professional associates, we can also provide the full range of services for our clients’ patents worldwide, including: • advisory services on IP portfolio strategy; • patent opposition and invalidation procedures before the Polish Patent Office and EPO; • preparation of documentation, including patent description and claims; • opinions on the scope of patent protection; • preparation of IP licensing, assignment and transfer agreements; • professional translation of documents; • extensive patent searches through publicly available and propriety databases; • validation of European patent applications and registrations in Poland by translation of European patent claims and submission to the Polish Patent Office; • adherence to deadlines, renewals and payment of official fees; • monitoring and payment of patent annuities to the Polish Patent Office and EPO; • recordation of changes in the official registers; • preparation of responses to cease and desist letters; • negotiations and settlement agreements; • development of IP protection training programmes; and
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• customs seizures related to patent infringement. Industry sector strengths Patpol’s patent attorneys are qualified practitioners with scientific expertise in particular industry sectors, such as information technology, telecommunication, electronics, mechanics, chemistry, pharmacy, medicine and biology. The team provides patent services to educational institutions, research bodies, blue-chip companies, Fortune 500 businesses, as well as local and international companies that actively undertake research and development projects or introduce new inventions worldwide. Strategic advice for brand owners In order to meet its clients’ wider IP needs, Patpol’s trademark and design team has introduced tailored in-house training programmes for its clients covering all aspect of trademark and design protection. The trademark and design team has a wealth of experience, having registered over 20,300 trademark and industrial designs. The team is made up of experienced and qualified Polish and European trademark attorneys with extensive experience in providing trademark and design prosecution services, as well as IP due diligence, availability searches, IP portfolio management, IP strategy, IP audits, IP transactions, oppositions, cancellations and revocations, IP litigation and IP enforcement. Patpol Legal Patpol Legal is a leading law firm in Poland specialising in IP law and offering a range of legal services, including economic, corporate, tax and
“One of the country’s most venerable firms… First-rate Polish and European patent attorneys and topdrawer lawyers” www.IAM-media.com
labour law. The firm was set up in October 2018 and has already earned a reputation for its IP law expertise. Patpol Legal is an offshoot of Patpol Patent and Trademark Attorneys firm (Patpol Ltd) – a leading Polish IP advisory firm providing leading services for the comprehensive protection of inventions, utility models, industrial designs, trademarks and copyright, both in Poland and abroad. Before October 2018 the professionals at Patpol Legal formed the legal department of Patpol Ltd.
Main address 162J Nowoursynowska Street Warsaw 02-776 Poland T +48 22 546 91 00 F +48 22 644 96 00 E patpol@patpol.pl Professional contacts Magdalena Tagowska Head of patent department E magdalena.tagowska@patpol.pl Dariusz Świerczyński Deputy head of patent department E dariusz.swierczynski@patpol.pl Dariusz Piróg Managing partner, Patpol Legal E dariusz.pirog@patpol.pl
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IAM Patent 1000 1041
Plougmann Vingtoft www.pv.eu
Plougmann Vingtoft is an award-winning IP consulting firm that specialises in handling, protecting and commercialising all types of intellectual property, including patents, trademarks and designs. Plougmann Vingtoft has a large team of dedicated employees working out of its headquarters in Hellerup (Copenhagen) and four additional offices in Aarhus, Oslo, Munich and Madrid. The firm also boasts a comprehensive network of business partners and agents around the globe, which enables it to provide services to clients in any part of the world, both directly and through international agents. Full-service IP consultancy Plougmann Vingtoft is a full-service IP consultancy that employs some of the best patent, trademark and design attorneys in Denmark, including 15 European patent attorneys and six European trademark and design attorneys. In addition, the firm employs a team of experienced paralegals to support the attorneys and handle all IP administration, which ensures a cost-efficient, well-operated and highly professional service to all clients. The firm also set up an in-house commercialisation and tech-transfer team, marketed under the separate brand ‘tto’. tto specialises in generating value from new technologies in combination with IP rights. The tto experts assist clients facing challenges in a transition phase from early-stage development to commercialisation or exit. Selected services Plougmann Vingtoft’s IP attorneys conduct searches and analyses, prepare IP strategies and evaluations in addition to drafting and prosecuting IP applications. Also, the firm has extensive experience representing clients in complex opposition and litigation cases before the European Patent Office and national courts in Denmark and Norway. Since the firm’s creation in 1967, the core competence of Plougmann Vingtoft’s attorneys has been to assess clients’ IP rights and find the most advantageous way to protect them. The firm’s IP experts thus specialise in assisting clients in turning
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their intellectual property into a driving force behind their general business strategy. Social responsibility Since 2008 Plougmann Vingtoft has taken part in the United Nations (UN) Global Compact, a voluntary initiative based on a commitment to implement universal sustainability principles and to take steps to support the UN global goals. Consequently, Plougmann Vingtoft focuses on implementing socially responsible business practices in its interaction with clients, employees and communities. First, the firm works with industry leaders within the fields of renewable energy, new technologies, pharma and healthcare. Second, the firm assists small and mediumsized enterprises and universities in pursuing potentially groundbreaking ideas. Plougmann Vingtoft makes sure that innovative thinking pays off. Third, the firm is committed to helping startups to make a success of their sustainable ideas. Every year, Plougmann Vingtoft donates expert consulting worth of Dkr50,000 to a start-up with a solution that impacts on one or several of the UN global goals directly. This initiative is marketed under the name IP Matters. Memberships • European Patent Institue • International Federation of Intellectual Property Attorneys • International Association for the Protection of Intellectual Property • Association of Danish Intellectual Property Attorneys • Norwegian Patent Attorney Association • Licensing Executives Society • Asian Patent Attorneys Association • International Trademark Association • European Communities Trademark Association • Danish Institute for Intellectual Property Rights History Plougmann Vingtoft was founded in 1967 by Knud Erik Vingtoft and Ole Plougmann. Mr Plougmann was a chemical engineer with plans to revolutionise the patent world; Mr Vingtoft was a mechanical engineer whose attention
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“Powerhouse on the Danish IP landscape... Award-winning consultancy firm”
Main address Strandvejen 70 2900 Hellerup Copenhagen Denmark
was caught by the patent industry in 1959. Together they created a firm that has, ever since, influenced the way people approach IP rights. The two engineers’ pioneering work in biotechnology and information technology led to strong IP positions for their clients and made the name Plougmann Vingtoft well known in the business. In addition, the two founders’ interest in the commercialisation of research results made the firm one of the main players in building collaborations between private companies, universities and scientists in Denmark, as well as internationally. The founders’ work and values are still a big part of Plougmann Vingtoft today.
Professional contacts Kim Wagner Head of opposition and litigation E kiw@pv.eu
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T +45 33 639 300 E pv@pv.eu
Peter Sørensen Head of technology and software E psn@pv.eu Christian L Christiansen Head of life sciences and chemistry E clc@pv.eu Other offices Aarhus, Madrid, Munich, Oslo
IAM Patent 1000 1043
POLSERVICE Patent and Trademark Attorneys Office www.polservice.com.pl
POLSERVICE Patent and Trademark Attorneys Office is one of the most reputable patent and trademark attorneys firms in Poland. The firm has been operating since 1964 and currently employs 35 patent and trademark attorneys (including 22 European patent attorneys) specialised in various areas of technology, law and economy, as well as teams of experienced lawyers and professional translators. Areas of practice POLSERVICE provides a variety of services in all fields of industrial and intellectual property protection for companies and individual clients worldwide. The firm’s main fields of activity are: • patents, utility models and industrial designs; • trademarks, trade names and geographical indications; • domain names; • patent and trademark searches; • new plant varieties; • copyright and unfair competition; • licence agreements and exclusive rights transfer; • litigation, enforcement and dispute resolution; • anti-counterfeiting and anti-piracy actions; and • monitoring and payment of renewal fees. POLSERVICE attorneys represent clients before the Polish Patent Office, the EPO and the EUIPO, as well as before civil, administrative and arbitration courts. They also cooperate with customs and prosecution authorities. International experience POLSERVICE is proud of representing over 2,650 clients – both multinational corporations and small and medium-sized enterprises – from more than 70 countries. Additionally, POLSERVICE has been cooperating with the most renowned patent and trademark firms in Europe, the United States, Canada, South and Central America, Asia, Australia and Africa, in order to provide efficient legal protection for its clients worldwide. In each case the firm looks for the best solution to meet its clients’ needs. A unique and creative approach to all tasks, supported by profound legal and technical knowledge, has earned POLSERVICE the trust of its clients.
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POLSERVICE and its attorneys are members of many international organisations that bring together companies and individuals dealing with IP protection, including: • the International Association for the Protection of Intellectual Property; • the International Trademark Association; • the European Communities Trademark Association; • the Licensing Executives Society International; • UNION; • MARQUES; and • the Institute of Professional Representatives before the EPO. Aside from their everyday duties, the firm’s attorneys attend numerous meetings, conferences and trainings held in Poland and abroad; they also routinely lecture and moderate talks on intellectual property. As a result, many of the firm’s attorneys serve as leaders of these organisations or their committees. Both Polish and international IP magazines rank POLSERVICE as one of the top trademark and patent firms in Poland. Awards and distinctions • Granted the IP Firm of the Year title by Managing Intellectual Property • Named as a recommended firm by the IAM Patent 1000 2020 • Named as a recommended firm by the World Trademark Review 1000 2020 • Named as an IP Stars top-tier firm 2020 • Named as a recommended firm by Global Law Experts • Listed among the best Polish companies from 2006 to 2020 by Managing Intellectual Property • Received gratitude from the Polish Patent Office for joint efforts to protect industrial property and the development of innovation
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“Potent force on the Polish legal landscape… Up-tothe-minute legal knowledge”
Main address 73 Bluszczanska Street Warsaw 00-712 Poland T +48 22 44 74 600 F +48 22 44 74 646 E ip@polservice.com.pl Professional contacts Wojciech Marciniak Board member E wojciech.marciniak@polservice.com.pl Andrzej Rosa Head of patent team II E andrzej.rosa@polservice.com.pl Marta Joanna Kawczyńska Polish and European patent attorney E marta.kawczynska@polservice.com.pl
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IAM Patent 1000 1045
PONS IP www.ponsip.com
PONS IP is a global IP firm founded in 1945 and headquartered in Madrid. Our team consists of 130 qualified professionals focused on designing and implementing effective solutions to meet the particular needs of each organisation, in any country in the world. Only a committed, innovative, client-oriented team can meet clients’ targets in a competitive and changing market. Our domestic network is extensive, with six regional offices in key locations across Spain. We have an international presence in prominent economic hubs (Bogota, Guangzhou and Brussels) where we represent the interests of over 27,000 clients in 150 countries. The integration of local knowledge and experience of our professionals, together with PONS IP’s global spirit, enables us to effectively provide services from our Colombian office to the whole Latin America region. As specialists in the sector, backed by our experience and international presence, PONS IP offers comprehensive advice and ongoing dialogue with our clients, helping them choose the best strategy for the protection of their intangible assets. Diverse, high-profile client base We are experts in the definition of strategies and management and defence of IP rights anywhere in the world. We take a personalised approach to clients’ needs, with a focus on excellence to create value through a tailored service. IP consulting At PONS IP we know that each company is different, even though they may operate in the same market; the consultancy services we provide are therefore designed to understand, support and provide the necessary tools for each company, and to ensure the correct definition of its IP strategy, the appropriate implementation of its processes and the creation of an IP culture. Protection The implementation of a targeted strategy for the protection, defence and internationalisation of patents is essential to succeed in the market. We offer a comprehensive service, including previous research and analysis, as well as management of IP portfolios worldwide.
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“Open, honest and approachable… Makes light work of international instructions” Defence We also provide a comprehensive legal advice service in matters of IP and entertainment law, defending the exclusive rights of our clients through the provision of initial advice to representation in courts. Social responsibility We are aware of the vital role played by companies in the well-being of society and are committed to increasing the positive impact that our firm may have on improving the quality of life in our environment. PONS IP is also committed to adopting sustainable and socially responsible policies by undertaking initiatives that promote greater environmental responsibility. We are a part of the UN Global Compact, a global corporate sustainability movement inspired by UN principles, that gives a human face to the global market. PONS Foundation PONS IP has established the PONS Foundation – a non-profit organisation whose main objective is to raise awareness of the importance of the defence, investment and development of intellectual property for economic and social development. PONS Foundation, together with ISDE Law Business School, launched the 14th edition of its master’s in intellectual property, competition and new technologies. It is one of the most prestigious IP master’s degrees in Spain. We are members of numerous international IP organisations (eg, the Inter-American Association of Intellectual Property, the International Association for the Protection of Intellectual Property, INTA, the Licensing Executives Society, epi), actively collaborating in their events, publications and projects.
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Main address Glorieta de Rubén Darío 4 Madrid 28010 Spain T +34 91 700 7600 F +34 91 308 6103 E info@ponsip.com Professional contacts Isabel Cortés Head of international affairs E isabel.cortes@ponsip.com Patricia García Köthenbürger International affairs E patricia.kothenburger@ponsip.com Other offices Alicante, Barcelona, Bogota, Brussels, Guangzhou, Medellin, Seville, Valencia, Vitoria
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IAM Patent 1000 1047
Powell Gilbert LLP www.powellgilbert.com
Powell Gilbert LLP is a specialist, London-based IP law firm dedicated to serving clients across the full spectrum of knowledge-driven industries, from cutting-edge tech and life sciences companies to creative and brand-driven businesses. The firm is one of the largest, most innovative and most highly regarded IP teams in the United Kingdom, with unrivalled patent litigation experience and a bluechip brands practice. The firm advises clients across all technologies and all IP rights, including advising on IP licence disputes and providing freedom-tooperate assessments. Powell Gilbert’s IP litigation team includes 11 partners, 20 associates and a highly experienced litigation support team. The firm includes some of Europe’s leading patent litigators and the technical expertise at Powell Gilbert is second to none. Almost all lawyers have technical backgrounds, including many with PhDs or master’s degrees in relevant scientific disciplines. The team routinely represents clients before the UK patents courts at all levels, including on appeal before the UK Supreme Court, where it has appeared in a number of precedent-setting cases in recent years. With a wealth of experience gained from acting in multinational disputes, Powell Gilbert is frequently involved in devising European patent litigation strategies, acting as coordinating counsel and working with local teams to ensure consistency. Practice areas The firm advises across the full spectrum of IP rights, including brands, design rights, copyright, passing off, confidential information and plant variety rights. Its experience in patent litigation ranges across all technical fields, from acting in the earliest biotechnology patent cases to involvement in the smartphone wars and leading cases on FRAND licensing disputes. It has appeared in many of the most technically complex and legally challenging cases in the UK patent courts and has also represented clients in referrals to the European Court of Justice and the European Free Trade Area Court in relation the requirements for the grant of supplementary protection certificates (SPC). The firm also represents clients in smaller claims before the UK IP Enterprise Court.
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Although focused on litigation, the firm is also experienced in alternative dispute resolution, including mediation and arbitration, particularly in relation to patent and technology licences. International experience A distinguishing feature of Powell Gilbert is the expertise and experience of its lawyers in coordinating complex cases and successfully guiding clients through multinational patent litigation, and devising and coordinating panEuropean strategies. The firm has played a central role in cases before many overseas courts, including in continental Europe, Scandinavia, the United States (district court and International Trade Commission proceedings), Australia, China, Korea and Japan. The firm also frequently represents clients in European Patent Office opposition proceedings and in other registry proceedings, including representing clients before the UK Intellectual Property Office. With an eye for coordination strategies, Powell Gilbert’s lawyers are familiar with the opportunities, and the potential threats for the unwary, that litigation in the Unified Patents Court (UPC) may offer, should it come into effect. Members of the firm were actively involved in commenting on the rules of procedure of the UPC and have contributed to training materials for UPC judges, including participation in mock trials. Languages English, Finnish, French, German, Cantonese and Mandarin.
“Among the upper echelons of UK patent litigation firms… Excellent partners and excellent associates, all with scientific expertise” www.IAM-media.com
Key cases • Warner Lambert v Actavis (pregabalin) • Regeneron v Kymab (antibodies/transgenic mice) • Unwired Planet v Huawei (smartphones/ FRAND) • Eli Lilly v Human Genome Sciences (neutrokine alpha/SPC) • lllumina v MGI (gene sequencing technology) • Edwards Lifesciences v Meril / Abbott v Edwards (transcatheter heart valves) • Philip Morris v Nicoventures (heat-not-burn tobacco) • Garmin v Philips; PulseOn Oy v Garmin (wearable tech) • IPCom v Xiaomi (telecoms/FRAND) • Biogen v AbbVie (adalimumab) • GSK v Fibrogen (anti-anaemia drugs) • Merck v GSK (pneumococcal vaccines) • Chugai v UCB (patent licence dispute, antibody technology) • Illumina v Ariosa (non-invasive pre-natal testing) • Vestel v HEVC Advance (HEVC codec/FRAND) • Boston v Edwards (heart valves) • Coloplast v Salts (ostomy devices) • Rovi v Virgin Media (cable television) • Apple v Nokia; HTC v Apple (smartphones) • LG v Sony (Blu-ray disc technology) • Nuance v Vlingo (voice recognition) • Mölnlycke v BSN medical (wound dressings) • Philips v Alba (MPEG-2 digital compression) • Nichia v SSCL (LEDs) • Monsanto v Cargill (genetically modified soy beans) • Aerotel v Wavecrest (computer programs) • Dr Reddy’s v Eli Lilly (olanzapine) • Yeda v ImClone (Erbitux – entitlement; SPCs)
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Main address 85 Fleet Street London EC4Y 1AE United Kingdom T +44 20 3040 8000 F +44 20 3040 8001 E info@powellgilbert.com Professional contacts Penny Gilbert Intellectual property (life sciences) E penny.gilbert@powellgilbert.com Tim Powell Intellectual property (patents) E tim.powell@powellgilbert.com Simon Ayrton Intellectual property (general) E simon.ayrton@powellgilbert.com
IAM Patent 1000 1049
Prüfer & Partner mbB www.pruefer.eu
Prüfer & Partner mbB is one of Germany’s most renowned IP law firms. It protects clients’ ideas, inventions and product developments around the world and enforces their claims in court – whether technical inventions or other IP rights. Today, nearly 70 employees – including 23 patent attorneys, attorneys at law and patent specialists – work for this IP boutique. Prüfer & Partner was founded in 1972 by patent attorney, physicist and master optician Lutz H Prüfer as a pure patent attorneys’ office, which quickly developed into an internationally focused medium-sized law firm specialising in IP law. A successful generation change took place between 1998 and 2002 when Prüfer & Partner was taken over by patent attorneys Dorothea Hofer, Jürgen Feldmeier and Andreas Oser. Since then, Prüfer & Partner has grown into a firm of nearly 100 employees. A further milestone was reached in 2015 with the addition of attorney at law Andreas Jacob as an equity partner; the firm has since fully absorbed his legal know-how by developing the patent and legal service and thus ensuring its continuity. As a result, Prüfer & Partner is an established and highly respected medium-sized law firm with a stable global network of partners, which advises clients on IP rights registration; supports clients in all issues relating to IP rights protection; and defends and enforces clients’ IP rights in court. With Prüfer & Partner, you can expect a strong and carefully selected community of patent attorneys, lawyers and technical specialists. The firm represents its clients’ interests at the highest level. Prüfer & Partner is familiar with complex and demanding mandates and works with great commitment. Diligence and expertise play an important role in industrial property law protection. Prüfer & Partner patent attorneys and lawyers work strictly to German quality standards: thorough, punctual and cost-efficient. Over the past 10 years, Prüfer & Partner has continuously expanded its expertise in patent and trademark litigation. Dr Hofer and Mr Feldmeier have been advising their client Brother Industries for years in a complex patent dispute concerning ink cartridges. Dr Oser supports the pharmaceutical industry, including assisting Novartis with building up its patent portfolio. Mr Jacob is active not only
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“Strong ability to understand and analyse both legal and technical issues… Excellent overall service” in patent and trademark litigation before the German courts, but also in international disputes, particularly in China-related cases. Other Prüfer & Partner attorneys, including Christian Einsel, also regularly litigate both active and passive patent lawsuits. In addition, Marion Ziliox works for French and Asian clients, among others, in customs actions at the EU borders. As a result, Prüfer & Partner has extensive expertise across the entire IP field. In addition, Prüfer & Partner has a wellestablished desk in China and continuously cultivates its business in China and other Asian countries – in particular Japan. Looking to the future, Prüfer & Partner plans to both consolidate and broaden its activities in Germany to serve German and European clients, in particular small and medium-sized enterprises and start-ups, helping them protect their innovations and strengthen their position in an increasingly competitive market. Located in Munich, the German heart of intellectual property, Prüfer & Partner is dedicated to serving its clients as a one-stop-shop IP boutique.
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Main address Sohnckestrasse 12 Munich 81479 Germany T +49 89 69 39 21 0 F +49 89 64 22 23 8 E office@pruefer.eu Professional contacts Jürgen Feldmeier Managing partner E feldmeier@pruefer.eu
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IAM Patent 1000 1051
Reinhold Cohn Group www.rcip.co.il/en
Reinhold Cohn Group (RCG) is the oldest and leading IP consulting firm in Israel. RCG offers a full breadth of IP-related services and expertise, including protection, asset management, due diligence, litigation and legal services. The firm operates in all areas of intellectual property such as patents, trademarks, designs, copyright, open source and plant breeders’ rights. The group includes the patent attorneys firm Reinhold Cohn & Partners and the law firm Gilat, Bareket & Co. The synergy of patent attorneys experienced in a diverse range of technological and scientific disciplines working alongside legal professionals creates a unique and effective platform for maximising the value of a client’s IP assets by securing optimal protection. RCG employs over 200 professionals, out of which over 50 are patent attorneys and attorneys at law. RCG and its team are internationally renowned for excellence and are continually ranked in the top tiers in leading international and local guides such as Managing Intellectual Property, Chambers & Partners, The Legal 500, WTR 1000, IAM 300, IAM 1000, Who’s Who Legal, Expert Guides, D&B Israel and BDI. The law firm of Gilat, Bareket & Co is a leading IP firm in Israel, specialising in litigation and legal protection of rights in patents, technology, brands, designs, creative works and inventions. With years of professional experience, Gilat, Bareket & Co garners recognition for successfully litigating landmark cases and representing domestic and international clients. The firm’s
“Stalwart of the Israeli patent landscape… Elite IP player with the talent and resources to handle the most demanding patent matters” 1052 IAM Patent 1000
areas of expertise include patent and trademark litigation, protection of designs and copyright, and structuring and negotiating IP-related contracts and transactions. The firm helps its customers with R&D and licence agreements, knowledge acquisition and technology transfer agreements and agreements vis-à-vis collective rights management societies. The firm also provides a service of enforcement of brand owners’ rights to prevent import and distribution of counterfeits and imitations. Other areas of expertise include investment agreements, obtaining financing from the governmental Office of the Chief Scientist and other institutional investors, non-disclosure agreements, distribution agreements, internet law and strategic cooperation with foreign companies. In addition, the firm provides general legal assistance in other fields – for example, company law, competition law, antitrust and property law – and successfully represents clients before the courts in Israel and before the Patents, Designs and Trademarks Registrar. Gilat, Bareket & Co employs 17 attorneys at law, several of whom also hold academic degrees in sciences. Extensive legal knowledge and experience, as well as technological and scientific insight, enable Gilat, Bareket & Co to offer an effective and optimal legal protection strategy which considers each client’s IP assets in light of its business strategy in general. Professional departments • Life sciences and chemistry handles inventions in a wide spectrum of fields: biotechnology, pharmaceuticals, medical compositions and equipment, molecular biology, organic and inorganic chemistry, agriculture, nanotechnology, biochemistry, pharmacology, food technology, diagnostics and green-tech and related fields. • Hi-tech operates in a wide range of technologies including computers (hardware and software) and computer-based inventions, electrical engineering and electronics, electro-optics, cellular technology, databases, multi and digital media, integrated systems and processes, semiconductor devices and related processes, communications and telecommunications, Internet, computer-based business methods and storage.
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• Mechanics and technology handles inventions in the fields of mechanics and engineering. The departments specialises in various engineering domains such as mechanical engineering, automotive, aerospace, maritime, materials and agriculture. Other areas of expertise are optics, medical devices and equipment, agricultural and water technologies, consumer products, packaging and handling of merchandise and materials, military technologies and dentistry. • Physics handles inventions in the fields of optics, electro-optics, acoustics, electrical engineering, optical communication, optical and electronic information storage, semiconductor-based technologies, medical devices and nanotechnology, among others. • Trademarks provides strategic and legal counselling relating to selection of trademarks and their proper use, planning, implementation and management of international trademark portfolios for local and international clients. The department conducts searches to ascertain the degree of freedom to operate, provides opinions regarding availability for use and inherent registrability. It handles trademark filing, prosecution and registration, as well as domain name registration, drafts trademarkrelated agreements and maintains worldwide trademark watches.
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Main address Reinhold Cohn House 26A Habarzel Street Tel Aviv 6971037 Israel T +972 3 710 9333 F +972 3 560 6405 E info@rcip.co.il Professional contacts Ehud Husman Head of hi-tech practice E ehhausman@rcip.co.il Ena Pugatsch Head of mechanics, technology and designs practice E enpugatsch@rcip.co.il Eran Bareket Head of legal practice E eranb@gilatadv.co.il
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rospatt osten pross www.rospatt.de
For more than 70 years, rospatt osten pross has specialised in the fields of industrial property rights (patents, supplementary protection certificates, trademarks and designs), copyright and competition law, as well as related fields such as media law and product liability. We aim to offer advice targeted to the needs of our clients and to act as tireless and effective counsel both in court and in negotiations. The firm combines tradition and competence with imaginative ideas for legal advice in the IP field. The spirit of intellectual property is what drives us. Client base We are proud of the trust placed in us by our international clients, which are active in industries as varied as aeronautics, aircraft manufacturing, audio and video processing, chemistry, computer technology, electronics, fashion, furniture, genetic engineering, machine tools and mechanical engineering, materials, medical engineering, optics, pharmaceuticals, process engineering, satellite technology, semiconductors and telecoms. Our clients range from the biggest groups to small and medium-sized enterprises. Our independence, together with our position as a compact and highly specialised law firm, relieves us to a great extent from conflicts of interest. Work focus One focus of our work is litigation. We secure the entrepreneurial basis of clients’ businesses by defending and enforcing their IP rights or by warding off attacks from competitors. We appear before all German and European courts and the German and international offices for trademark and design protection. We are frequently assisted in our work by independent patent attorneys. Our experience with multinational trial series and our good contacts with firms in other countries enable us to provide clients with the best strategies and concepts on short notice whenever the need arises.
• Unfair competition law • Antitrust law • Product liability At home in • The UPC • All German district courts • All German regional appeals courts • The Federal Patent Court • The Federal Supreme Court (for nullity suits) • The General Court of the European Union • The Court of Justice of the European Union • The German Patent and Trademark Office • The EPO (including the Opposition Divisions and Boards of Appeal) • The EU Intellectual Property Office (for trademarks and designs) • Criminal prosecution, customs and finance authorities (for product piracy) • Arbitral tribunals Lawyers • Stephan von Petersdorff-Campen (partner) • Bernward Zollner (partner) • Max von Rospatt (partner) • Thomas Musmann (partner) • Henrik Timmann (partner) • Rüdiger Pansch (partner) • Hetti Hilge (partner) • Markus Lenßen (partner) • Eike Schaper (associate) • Miriam Büttner (associate) • Simon Klopschinski (associate) • André Sabellek (associate) • Sebastian Vautz (associate) Languages Our working languages include German, English, French and Italian.
Areas of specialisation • Industrial property rights (patents, utility models, standard-essential patents etc) • Trademark law • Design protection • Copyright law • Product piracy
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“Strong reputation for patent litigation… Looked to for its work in the telecommunications field”
Main address Emanuel-Leutze-Straße 11 Dusseldorf 40547 Germany T +49 211 5772 45 0 F +49 211 5772 45 55 E mail@rospatt.de Professional contacts Henrik Timmann Partner E timmann@rospatt.de Other offices Mannheim
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IAM Patent 1000 1055
Samson & Partner Patentanwälte mbB www.samson-partner.de
Samson & Partner Patentanwälte mbB was founded by Friedrich R von Samson-Himmelstjerna in 1983 and has since grown into a patent law firm of 10 partners supported by 12 associate attorneys and five patent engineers and trainees. The firm’s head office is situated in Munich, close to the EPO and the German Patent and Trademark Office. The firm also has its own representation in Alicante, Spain. Each of the firm’s patent attorney has a wealth of expertise gained through technical university studies, special training in patent law and professional work experience. In addition, the firm provides ongoing training to its professionals – a reflection that what drives the firm is its future achievements rather than its past ones. The firm’s professionals have numerous teaching roles, as assistant professors at the Hagen Law School, in technical seminars and in the training of new talent – all of which shows that the firm is always happy to go that extra mile, which naturally also benefits clients. Successful patent attorneys must have more than just a good grasp of the law. They must be able to understand, evaluate and define what is to be protected, down to the smallest detail. This is an accurate description of the patent attorneys at Samson & Partner, where physicists, computer
“Perpetual growth and high-profile representation of nonpractising entities… Lauded by clients for its flexible and agile approach to opposition proceedings and for the breadth of technical acumen” 1056 IAM Patent 1000
scientists, electrical and mechanical engineers and chemists work together under one roof. The firm’s recipe for success has always been anticipating outcomes. The firm’s extensive experience in implementing and litigating patents benefits clients right from the outset (ie, the procurement of IP rights) until enforcement. Samson & Partner has represented and continues to represent clients on both the offensive and defensive sides of major global patent battles between big international players in a range of technological fields. In such disputes, a number of patents are typically litigated in several jurisdictions, often in parallel in Europe and the United States. Thanks to its structure and professionals’ expertise, the firm has proven to be well positioned to establish strong teams of patent attorneys to support clients in these multinational litigations. Work areas and services The firm works in all areas of IP law – both nationally and internationally. Its services range from the assessment of protectability and the drafting of patent and utility model applications to the procurement of protection rights through the relevant authorities. The firm also defends clients’ patents against attacks by third parties (eg, oppositions, nullity and cancellation actions). Samson & Partner has a strong focus on patent litigation, in which the firm supports clients in the enforcement of their patents against infringers through infringement analysis, warning and infringement actions. The firm also supports companies concerned with the patent rights of competitors – for example, through clearance and violation analyses, the removal of questionable patent rights through prior art searches, representation in opposition proceedings or nullity and cancellation actions, and defence in infringement proceedings. The firm also advises on licensing, transmission, cooperation and nondisclosure agreements; carries out due diligence; advises on patent strategies; and evaluates the patent portfolios of clients and their competitors. Technical focus The world of inventions and patents is as varied as the technical areas that Samson & Partner covers, which include:
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• applied physics (eg, semiconductors, supraconductors, laser technology, optics, opto-electronics, sensors and biophysics); • information and communication technology (eg, software, multimedia, networks, telecoms, business processes and hardware); • electro-technology (eg, electronics, integrated circuits, control engineering, feedback technology, electric drives and electro-communication technology); • mechanics and process engineering (eg, vehicles, aircraft, machines, medical technology, weapons, construction and printing); and • chemistry and biochemistry (eg, inorganic chemistry, physical chemistry, organic chemistry, pharmaceutics, immunology, protein chemistry, molecular biology and genetic engineering). Awards Samson & Partner is frequently recommended for both patent prosecution and litigation – for instance, in the Juve handbook 2011. In 2012 the firm received the Managing Intellectual Property award for Patent Prosecution Firm of the Year in Germany, while Managing Intellectual Property’s IP Stars handbook has ranked the firm for Germany since 2013. The IAM Patent 1000 has recommended the firm for prosecution and nullity since its 2014 edition.
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Main address Widenmayerstrasse 6 Munich 80538 Germany T +49 89 29 19 820 F +49 89 29 94 65 E email@samson-partner.de Professional contacts Friedrich R von Samson-Himmelstjerna Partner E samson@samson-partner.de Wolfgang Lippich Partner E lippich@samson-partner.de Tobias KW Stammberger Partner E stammberger@samson-partner.de Other offices Alicante
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Sandart & Partners Advokatbyrå KB www.sandart.se
Sandart & Partners is a business law firm with expertise in litigation, dispute resolution and contracts. Many of the firm’s clients are companies in industries where intellectual property and knowledge are in focus. The firm also provides advice and represents clients in marketing law matters, competition law matters and regulatory matters. • Number of partners: 8 • Number of lawyers: 11 • Languages: English, Swedish and German Intellectual property Sandart & Partners works in all fields of intellectual property: patents, copyright, designs, trademarks and company names. It is one of the few law firms in Sweden that regularly handles disputes across the entire IP field. In addition, the firm has extensive experience in dealing with IP contracts. This edge means that the firm is consistently recognised as one of Sweden’s leading law firms when it comes to intellectual property. The firm’s clients are large and medium-sized companies in the fields of medicine, biotechnology, telecommunications and other high-end technology, as well as companies in retail business. The firm also represents rights holders from the music, arts and literature industries. Patent litigation Sandart & Partners is continuously ranked as one of Sweden’s leading law firms in patent law. Clients are mainly large and medium-sized national and international companies. The firm represents clients in all fields of technology, in particular in the fields of pharmaceuticals, biotechnology, telecommunications, mechanical and automotive engineering. Several of the companies are world leaders in their respective areas. The firm assists in enforcing patent rights in court infringement proceedings, as well as represents clients in nullity proceedings. Furthermore, the firm defends clients that are alleged to infringe patent rights. The firms patent law specialists have many years of experience of Swedish and pan-European patent disputes. Through a well-established network of patent engineers, the firm’s specialists have
1058 IAM Patent 1000
“Prime pick for complex patent litigation… Absolutely dominates in cuttingedge pharmaceutical disputes” the opportunity to successfully assist with legal proceedings relating to all complex technologies. The firm also provides advice in ownership, strategic and regulatory matters. Furthermore, it possesses expert knowledge in competition law issues relating to patents, including in relation to the application of industry specific standards. Litigation and dispute resolution Sandart & Partners represents clients in courts of law and in arbitration and alternative dispute resolution procedures such as mediation. The firm has extensive experience in handling complex commercial disputes on a national and international scale. The firm also represents clients in other business disputes, such as contractual and claims disputes. Many of the firm’s lawyers have previously served as law clerks and held other positions in Swedish courts. Marketing law Sandart & Partners represents clients in a variety of industries – including pharmaceutical and food industries – in regulatory matters and marketing law litigation. Several of the firm’s lawyers have long experience of marketing law issues. The firm is often engaged at the planning stages of new advertising campaigns and product launches, to constructively contribute to the adherence to relevant regulations. Transactions and contracts Sandart & Partners assists clients with business transactions, by drafting, reviewing and negotiating agreements. The firm advises technology and innovation-intensive companies and organisations, in transactions entailing IP considerations.
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Further, Sandart & Partners often participates in the preparation and negotiation of licensing, distribution, cooperation, research and development agreements, as well as agreements in the field of information technology and telecom. Agreements and business transactions often involve company law in one way or another – for instance, when a new company is formed, or new partners join an existing company. Regulatory issues Sandart & Partners advises clients on regulated products and services such as pharmaceuticals and food stuff. In these contexts, the firm also represents clients before the authorities and courts. The issues may concern marketing authorisations and permits, market access, parallel imports or product regulations. The firm’s lawyers have solid experience in providing other regulatory advice, including privacy and protection of personal data.
Main address PO Box 7131 Stockholm SE-103 87 Sweden T +46 8 440 68 00 E info@sandart.se Professional contacts Karin Westerberg Partner E karin.westerberg@sandart.se Julia Ericsson Partner E julia.ericsson@sandart.se Anders Kylhammar Partner E anders.kylhammar@sandart.se
Competition law Sandart & Partners focuses on competition law issues relating to IP rights and has successfully represented clients in several litigations where these issues have been addressed. In addition, the firm’s lawyers assist with competition law analysis of contracts and business strategies and represent clients in disputes concerning claims of abuse of dominant position and anticompetitive agreements.
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IAM Patent 1000 1059
Santarelli www.santarelli.com
Santarelli was created by the merger of the practices of Rinuy, Santarelli and Cabinet Bonnet- Thirion in 2003, and has become a leader in IP law. Its primary mission is to establish and protect the IP rights of its clients. Professionalism, responsibility towards clients and close interaction with them are the goals of its teams of IP practitioners. Santarelli’s patent department brings together, around the same values, seven partners who are all also patent attorneys: Luc Santarelli, Hélène Stankoff, Ghislain de Trémiolles, François Lepelletier-Beaufond, Thierry Caen, Augustin Le Tourneau et Laurent Kurtz. A multi-disciplinary approach Santarelli’s reputation is grounded in its expertise in defending clients’ IP rights and its multi-disciplinary approach to the defence of: • patent rights – including drafting and prosecution of patent applications, filing and defence of oppositions, patent and related unfair competition litigation, validity/infringement opinion work, licensing and assignments; • trademark rights – including clearance searches and opinions, drafting and prosecution of applications, filing and defence of oppositions, trademark and related copyright and unfair competition litigation, licensing and assignments; and • other areas, such as industrial designs, copyright, domain names and related computer and internet law. A diversified clientele Santarelli provides services to all public and private sectors, from the most traditional fields to cutting-edge technologies. Santarelli has a diverse clientele, ranging from small and medium-sized enterprises to multinationals and including startups, venture capital initiatives and research and other public entities. Personalised service Santarelli’s attorneys place particular importance on their availability and a proactive approach to IP legal services in the development of clients’ projects. Their skill sets are grounded in extensive personal and collective experience. Their professionalism, interaction with clients and strong sense of responsibility are especially appreciated.
1060 IAM Patent 1000
Santarelli’s professionals have broad individual and collective experience underpinning the conduct of their mission: to develop the intellectual property of their clients not only in France, but also internationally, using a network of foreign associates throughout the world. Patents: a complete range of skills Santarelli’s patent attorneys review inventions and draft and prosecute patent applications in French and English. All started their careers as scientists and engineers and thus have solid technical backgrounds. They assist and advise clients, regardless of size or field of activity, in securing and exploiting patent rights. Its patent attorneys are fully qualified and experienced in preparing validity, freedom-tooperate and infringement opinions tailored to meet the needs of corporate decision makers. Most of Santarelli’s patent attorneys have had training in patent litigation, and many have close ongoing involvement in such litigation and in opposition proceedings before the European Patent Office. Many are also experienced in analysing patent portfolios for potential investors, as well as for initial public offerings and mergers and acquisitions. Diversity of technical fields Santarelli’s patent attorneys handle cases in all fields of technology, including: • biology and biotechnology; • chemistry; • electricity; • electronics; • materials science; • mechanical engineering; • pharmaceuticals; • physical sciences; • semiconductors; and
“Rave reviews come thick and fast… Services cover a large variety of technical areas” www.IAM-media.com
• information science and technology, communications and software. Trademark defence and protection against infringement Santarelli has a strong reputation for the effective defence of clients’ trademarks through oppositions and litigation. To defend the rights of clients throughout the world, Santarelli has a network of world-class trademark attorneys and trial counsel. Trademark monitoring services are available at national, regional and international level. Regarding infringement and counterfeiting, Santarelli’s trademark attorneys have considerable experience in customs surveillance and subsequent judicial procedures. Full range of trademark and design law services The services provided by Santarelli’s practitioners include: • trademark clearance searching and analysis for France, Europe and worldwide; • preparation and prosecution of French trademark applications (and renewals) at the French Patent and Trademark Office (INPI), EU trademarks at the EU Intellectual Property Office (EUIPO), international trademark registrations through the World Intellectual Property Organisation or the African Industrial Property Organisation and national trademark applications through their network of worldclass associates; • preparation of trademark protection strategies and domestic, European and worldwide watch services, including monitoring and reporting; • litigation; • filing and defence of oppositions before the INPI and EUIPO, and before national trademark offices through its worldwide network of associates; • advice on decision making and corporate strategies, aided by knowledge and experience of national and regional opposition procedures around the world; • preparation of all types of IP agreement, including coexistence agreements, licence agreements and assignment deeds; and • trademark portfolio audits for corporate asset valuations or for M&A purposes.
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Main address 49 Avenue des Champs-Elysées Paris 75008 France T +33 1 40 55 43 43 F +33 1 42 67 56 29 E contact@santarelli.com Professional contacts Luc Santarelli Managing partner E luc.santarelli@santarelli.com Thierry Caen Partner E thierry.caen@santarelli.com François Lepelletier-Beaufond Partner E francois.lepelletier@santarelli.com Other offices Marseille, Nantes, Toulouse
IAM Patent 1000 1061
SBGK Attorneys at Law and Patent Attorneys www.sbgk.hu
With more than 50 years of professional experience, SBGK Attorneys at Law and Patent Attorneys provides outstanding services in all commercial law areas, and especially IP law, to both domestic and international clients active in over 20 different industry sectors. Our lawyers and patent attorneys have decades of experience in all aspects of the defence and enforcement of IP rights. SBGK’s clients can rely on the expertise of our attorneys and patent attorneys in the area of legal proceedings required both to secure IP rights and to utilise the acquired rights. SBGK’s team of paralegals perform routine jobs associated with our clients’ IP rights quickly and with precision, under the supervision of our attorneys and patent attorneys. These tasks include IP rights portfolio management, patent annuities payment, preparing trademark searches and patent freedom-to-operate searches, as well as the completion of trademark, domain name and customs monitoring-related work. SBGK’s IP department is a well-known, reliable partner and an innovative, constantly available legal service provider that keeps abreast of law and practice developments. SBGK’s attorneys at law are qualified to represent clients before the EU Intellectual Property Office (EUIPO), the EU General Court and the Court of Justice (ECJ). Similarly, SBGK’s patent attorneys are all registered as European patent attorneys and can represent clients before the European Patent Office and the EUIPO. For example, SBGK has represented Unilever NV before the ECJ in the first-ever preliminary ruling referral to the ECJ from a Hungarian court in a trademark matter. Similarly, our firm also represented Rubik’s Ltd, one of the best-known brands in the toy industry, before the General Court and the ECJ in a landmark trademark case that received high media and press publicity. Furthermore, SBGK provided legal advice to its client in a case referred to the ECJ in relation to the interpretation of Article 9(7) of the EU Enforcement Directive. The interpretation of that provision has an important effect on patent litigation and in particular on compensation claims resulting from unjustified preliminary injunctions. In addition to SBGK’s strong IP practice, the firm helps foreign investors set up their business in Europe and provides them with all the necessary legal services in company establishment,
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“In the upper echelons of the Hungarian IP scene… Diverse skillsets of its talented technical experts appeal to an array of industry heavyweights” mergers and acquisitions, competition law, employment law matters and various other commercial transactions. Network As the leading IP law firm in Hungary, SBGK offers not only professional services, but also access to a broad network of international contacts that include well-known national and international firms of attorneys at law and patent attorneys, thus guaranteeing high-quality services. SBGK’s attorneys at law and patent attorneys are members of and hold various positions in international IP organisations such as the International Association for the Protection of Intellectual Property, the International Trademark Association, the International Federation of Intellectual Property Attorneys, the European Communities Trademark Association, MARQUES, UNION, the Pharmaceutical Trademarks Group, the Licensing Executives Society International and the Institute of Professional Representatives before the EPO. Gateway to Europe SBGK is looking to broaden its professional network and form partnerships with foreign patent and trademark attorneys, to represent clients from Europe and further afield in international IP matters. SBGK can provide a one-stop shop for European patent, Patent Cooperation Treaty, EU trademark and registered Community design applications.
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Main address Andrássy út 113 Budapest 1062 Hungary T +36 1 461 1000 F +36 1 461 1099 E mailbox@sbgk.hu Professional contacts Katalin Szamosi Managing partner E szamosi@sbgk.hu Zsolt Szentpéteri Co-managing partner E szentpeteri_zs@sbgk.hu Katalin Mészárosné Dónusz Deputy managing partner E donusz@sbgk.hu
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IAM Patent 1000 1063
Secerna LLP www.secerna.co.uk
Secerna LLP is a rapidly growing boutique IP firm based in the United Kingdom, with proven expertise across a broad remit of technical fields and professional services. The firm has a global reach, representing and protecting the interests of multinational corporations, FTSE and NYSElisted companies, research organisations, spin-out companies, small and mid-sized enterprises (SMEs) and innovators worldwide. Secerna was established in 2011 and has offices in York and Newcastle upon Tyne. Its continued growth can be attributed to a combination of the recruitment of highly experienced qualified attorneys with deep industry and academic experience alongside a dedicated graduate recruitment and development scheme. Secerna continues to build on an established track record to recruit and retain high-quality attorneys and nurture a culture of professionalism and pride in every aspect of the work it conducts. The firm’s attorneys combine robust legal experience with technical expertise and commercial insight to deliver trusted advice. They have diverse professional backgrounds drawing from extensive private practice experience, as well as significant industry experience. The firm strives to create a working environment where all colleagues feel supported and valued. Secerna represents clients in many aspects of IP-related matters, including drafting and prosecution of patent applications both before the European Patent Office and the UK Intellectual Property Office, and coordination of worldwide patent prosecution via close collaboration with a network of trusted attorneys in overseas territories. The firm has a reputation for excellence in coordinating large global patent portfolios and significant experience in design filing and enforcement strategies. Another area of particular focus is the delivery of in-house prosecution support for blue-chip companies. The firm is heavily involved in the enforcement and defence of granted patent rights with a growing focus on representing clients in opposition and appeal proceedings at the European Patent Office, often in highly complex, multi-party proceedings. A key area of expertise is the provision of due diligence services, including freedom-tooperate and product clearance advice, validity opinions and support for merger, acquisition
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“Expertise at Secerna is very high… A group of top-class and approachable attorneys” and initial public offering activities. Through its experience in exploiting weaknesses in the rights of competitors to the firm’s clients, the Secerna team can mitigate competitor risk and maximise opportunity for clients. Lessons learned at the more contentious end of its advisory work also help the firm to quickly build commercially valuable patent portfolios for start-up and early stage clients when needed. Within the company, there is a forward-thinking approach to IP protection and enforcement, while maintaining a high-quality, client-focused outlook. The firm offers a tailored approach for clients which is continually adapted to their needs and requirements. In short, Secerna aims to offer an alternative offering to the large IP firms without any compromise. The firm aims to build long-term business relationships with clients, based on exceptional trust, teamwork and value for money. Advice is pragmatic and commercially focused, with each attorney working with clients to create and extract the maximum value from their intellectual property. These credentials make the firm a first port of call for many clients when a complex issue arises. The firm has an international roster of clients, with world leaders in technology sectors such as green technologies, digital banking solutions, renewable energy technologies, immunotherapies, and infectious disease diagnostics featuring on its client list. The team also represents worldrenowned research organisations, universities and progressive SMEs based in the United Kingdom and overseas. Secerna is proud to support UK innovation and is actively involved in providing IP advice in the form of IP clinics, presentations and mentoring for inventors and start-up companies within the Yorkshire and North East regions.
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The attorneys at Secerna have deep knowledge in a number of technology sectors including: • electronics and information and communication technology – particularly, augmented reality, robotic surgical systems, digital banking and retail services, financial services and business systems, digital health solutions; • advanced engineering, including oil and gas delivery solutions, renewable energy technologies; • pharmaceuticals, including conjugate technology and infectious disease therapies; and • biotechnology, including immunotherapies, nucleic acid diagnostics, antibody-based biologic therapies, three-dimensional printing and plant sciences.
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Main address The Old Fire Station 18 Clifford Street York YO1 9RD United Kingdom T +44 1904 202900 F +44 1904 500217 E docketing@secerna.co.uk Professional contacts Jason Boakes Partner E jboakes@secerna.co.uk Other offices Newcastle upon Tyne
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Sojuzpatent www.sojuzpatent.com
Sojuzpatent is the longest established IP law firm in Russia and is recognised as a leader in all areas of IP protection. Sojuzpatent’s team of over 160 qualified specialists includes 50 registered Russian and Eurasian patent and trademark attorneys and litigation lawyers who offer incisive and highly practical expertise in all disciplines of science and technology. Sojuzpatent represents thousands of companies in 90 countries worldwide, including: • six of the 12 largest corporations in the Fortune Global 500 list; • five of the 10 leading global innovators (Patent Cooperation Treaty filers); • four of the world’s 10 most valuable brands. The firm was first established as the Patent Bureau – a structure of the Soviet Chamber of Commerce and Industry which for a long time was the only organisation of patent attorneys in the country and the only entity authorised to deal with foreign entities on IP protection matters. After the dissolution of the Soviet Union, the firm became a limited liability partnership owned by its attorneys. The name Sojuzpatent comes from the word ‘sojuz’ or ‘soyuz’, meaning ‘union’ (as in Sovetsky Sojuz, Soviet Union) – the word was included only in the names of organisations of nationwide importance. ‘Sojuz’ is also traditionally associated with cooperation and friendship. Sojuzpatent has forged long-lasting relationships with many famous companies – thus, for instance, continuing to renew trademarks that were first registered in the 1920s. Throughout its almost 100-year history, Sojuzpatent’s main goal has always been the provision of IP rights protection in Russia and other states – for both domestic and foreign applicants. Its decades of cooperation with the Russian Trademark and Patent Office, the All-Union Centre of Patent Services, international trade organisations and industrial enterprises have given Sojuzpatent a unique depth of experience in trademark and patent prosecution services and in litigation before courts and administrative bodies. It has also established its reputation within the international IP community, developing trusted connections with leading law firms around the world.
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“One of Russia’s elite prosecution players… Deep bench of practitioners has all technical bases covered” Sojuzpatent is proud of its history. Our team members consistently bring the successes of the past into their daily work routines, while confidently preparing for the future. Sojuzpatent provides client services within and outside the Russian Federation on patenting inventions, utility models, industrial designs, selection achievements, trademark registration (service marks), appeals (origin of goods), selection achievements, domain names, software, databases and integrated circuits. During its long history, Sojuzpatent has accumulated unique expertise in working on the territory of former Soviet republics and now independent states. Today, Sojuzpatent operates as a one-stop shop for every entity that wishes to ensure protection of its intellectual property in Armenia, Azerbaijan, Belarus, Estonia, Georgia, Kazakhstan, Kyrgyzstan, Latvia, Lithuania, Moldova, Tajikistan, Turkmenistan, Ukraine and Uzbekistan. Sojuzpatent attorneys file between 2,000 and 3,000 patent applications and between 1,000 and 2,000 trademark and design applications each year. It pays annuities for more than 50,000 patents and renews about 1,500 trademarks each year. Sojuzpatent’s lawyers successfully represent their clients before the Russian Chamber for Patent Disputes and all Russian courts, as well as before some foreign courts. The firm’s professionals have extensive experience in trademark, patent and design prosecution and enforcement, including opposition proceedings, cancellations, infringement, anticounterfeiting and parallel import cases, and advise on IP commercialisation, including drafting licences and other IP agreements.
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Main address 13 Building 5 Myasnitskaya Street Moscow 101000 Russia T +7 495 221 8880 F +7 495 221 8885 E info@sojuzpatent.com Professional contacts Tatiana Petrova Head of trademark department E petrova@sojuzpatent.com Other offices Astrakhan, Kirov, Kostroma, Togliatti, Vologda Sample client list • Airbus • Caterpillar • Dyson • Honeywell • Nestlé • Renault • Safran • Shell • Siemens • Sony • Unilever
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IAM Patent 1000 1067
Sulima-Grabowska-Sierzputowska Patent & Trademark Attorneys www.sulima.com.pl
Sulima, Grabowska, Sierzputowska Patent and Trademark Attorneys was founded in 1995 and over 26 years of steady growth has become one of the most successful IP offices in Poland. Our large team of IP professionals offers the whole spectrum of IP services before the Polish Patent Office (PPO) and the Polish administrative and civil courts, as well as before the EPO, the EUIPO and WIPO. We hold a leading position in filing validations of European patents in Poland. We work with a large group of translators that we trained ourselves; this, combined with our unique two-step verification system of technical translations, leads to the outstanding quality of the translated texts that our firm produces. We are also renowned for the quality of our prosecution work and efficiency in obtaining exclusive rights for our clients. We have extensive experience in handling supplementary protection certificates. We can handle any types of IP case, in any conceivable field of technology, including: • chemical technology and engineering; • pharmaceuticals, medicinal and sanitary chemistry and technology; • biotechnology; • medical devices; • agriculture and food technology; • environmental protection; • nanotechnology; • oil and gas technology and engineering; • automatic, mechanical and civil engineering; • structural and material engineering; • steel and mining engineering; • textile industry; • paper industry; • automotive, aeronautical and aerospace engineering; • electrical, electronic and informatics engineering; and • telecommunication.
“Full-bore IP offering… Talented squad of patent attorneys and patent specialists” 1068 IAM Patent 1000
We are highly effective in handling opposition, appeal, invalidation, infringement and declaratory proceedings. We strongly believe in alternative dispute resolution and accordingly offer deep professional analysis of the technical and legal aspects of potential disputes aimed at settling them outside of the courtrooms. We also successfully handle cases connected with customs matters and help develop IP protection strategies and manage IP portfolios. We provide comprehensive advice on formal requirements and on complex procedural and legal issues. We have the capacity, experience and infrastructure to smoothly and quickly tend to our clients’ needs and meet their expectations, including processing high volume filing and/or recordal orders. Our patent department is made up of three divisions: chemical/biotech, mechanical/electrical and electronic/information technology. Our patent team consists of 15 registered Polish and European patent attorneys and 15 patent specialists, supported by a group of 16 paralegals highly qualified and experienced in patent formalities, transfers of rights and annuity payments. We work with attorneys at law and Polish experts ready to provide legal or technical expertise in litigation cases. We are members of INTA, the European Communities Trademark Association, the International Federation of Intellectual Property Attorneys and the International Association for the Protection of Intellectual Property. Our patent team members Małgorzata Kaczmarczyk and Grażyna Wójcik have written a chapter on the formal requirements and practice in Poland for the second edition of European SPCs Unravelled: A Practitioner’s Guide to Supplementary Protection Certificates in Europe, published by Wolters Kluwer. Strengths and qualities • Team made up of highly qualified, skilled and experienced patent attorneys, patent specialists and well-trained paralegals • Sound experience in validating European patents – over 22,000 European patent validations so far
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• Top quality of patent translations guaranteed by the use of our unique two-step verification system of technical translations • Effective handling of opposition and invalidation cases before the PPO and of appeals against PPO decisions before the administrative courts • Excellent results in patent litigation cases before the civil courts • Responsiveness and comprehensive advice on formal requirements and complex procedural or legal issues • Flexibility in adjusting services to clients’ individual needs and expectations • Capacity and experience to smoothly and quickly process high-volume filing, recordal or annuity payment orders
Main address ul Puławska 182 Warsaw 02-670 Poland T +48 22 825 82 41 F +48 22 825 77 82 E sulima@sulima-patent.pl Professional contacts Marta Skrobot Patent attorney E sulima@sulima-patent.pl Iwona Sierzputowska Managing partner E sulima@sulima-patent.pl Sample client list • BASF SE • F Hoffman-LaRoche • LG Electronics Inc • Pfizer • Thyssenkrupp AG • VKR Holding
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IAM Patent 1000 1069
ThomannFischer www.thomannfischer.ch
ThomannFischer is a leading commercial law boutique firm for all IP and business sectors relating to technology, with a strong emphasis on IP, technology, pharma and media law. Founded in 1998, the firm provides reliable support on all aspects of commercial, IP and IT law to national and international clients. One of the firm’s defining characteristics is its commitment to the highest level of quality and client service. All of the firm’s partners have a long history of professional experience and comprehensive knowledge in their areas of practice, combining exceptional legal expertise across all business sectors where technology, commercial and legal considerations are key. The firm’s affinity to IP and IT law is enhanced by its location in Basel, home to Switzerland’s life sciences cluster, which hosts international events such as ART Basel and the Baselworld Watch and Jewellery Fair. Practice areas The firm provides comprehensive expertise in litigation, IP prosecution and client counselling work across all fields of IP, IT and commercial law. This includes advising on patents encompassing numerous technologies, as well as on all aspects of trademarks, domain names, copyright, design rights, unfair competition, confidential information and related areas. The firm’s patent practice focuses on telecoms, insurance and banking technologies, life sciences, bio and nanotechnology, computer-supported inventions, data transfers, business model and services patenting, and covering all fields of the emerging technologies and industry 4.0. ThomannFischer has considerable experience in drafting and negotiating licences and other commercial IP agreements, as well as offering IP due diligence services. The firm regularly advises
“Premier destination for wall-to-wall IP support… Fulfil their brief to the highest possible standard” 1070 IAM Patent 1000
clients on the worldwide strategic development and management of their IP portfolios. Our approach ThomannFischer is one of the rare law firms that has a combination of highly experienced attorneys at law and patent attorneys working in the same firm. This makes ThomannFischer a one-stop shop for all IP-related matters, including drafting, filing, prosecuting, enforcing, litigating and arbitrating patent, trademark and design rights in Switzerland, Europe and the rest of the world. Specifically, ThomannFischer operates one of the broadest patent prosecution practices in Europe. The firm’s patent attorneys offer a unique combination of technical and legal expertise and are trained in various technical and legal disciplines. ThomannFischer has earned a reputation for being both tenacious and flexible before the EPO, WIPO and the Swiss Federal Institute of Intellectual Property. The firm provides the best possible protection, while always keeping clients’ business objectives and needs in mind. It is also known for being able to provide efficient IP protection in border areas of patentability as business model and services protection to emerging technological fields. In terms of IP litigation, ThomannFischer’s experienced and skilled litigators are known for achieving outstanding results in a cost-efficient manner – something which can be achieved only through the firm’s unique combination of experienced attorneys at law and patent attorneys. ThomannFischer pursues national and international litigation strategies that deliver desired outcomes while focusing on the key elements of the litigation in order to provide positive results. ThomannFischer’s efficient approach to litigation helps to avoid expensive and wasteful approaches and ensure the best possible outcome. ThomannFischer represents clients before all Swiss courts and authorities and the EPO. The firm’s experience also covers alternative dispute resolution, including mediation and international arbitration. International reach Where a client’s assignment has international dimensions, ThomannFischer liaises with many renowned IP law firms throughout the world. The firm’s expertise and experience
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enable it to coordinate complex transactions and successfully guide clients through multinational litigation. Languages Each of the firm’s professionals works in at least English, German, French, Italian and Russian.
Main address Elisabethenstrasse 30 Basel 4010 Switzerland T +41 61 226 24 24 F +41 61 226 24 25 E info@thomannfischer.ch Professional contacts Fabian Leimgruber Senior partner E leimgruber@thomannfischer.ch Christian Hochstrasser Partner E hochstrasser@thomannfischer.ch
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TRAPLOVÁ – HAKR – KUBÁT Law and Patent Offices www.thk.cz
TRAPLOVÁ – HAKR – KUBÁT Law and Patent Offices (THK) is a boutique law firm specialised in intellectual property and related matters. THK’s experienced professionals think globally and provide clients with legal support related to a broad range of IP matters, including domain names, company names, e-commerce and social media portals and products. THK also recognises the necessity to look at its client’s products and services from the perspective of mass media and advertising. THK was established in 1990 with the main goal of putting together a unique team with significant knowledge and experience that would provide professional and qualified services to clients not only in the Czech Republic, but also globally, and in particular with regards to IP law. For over 30 years THK has been regarded as a leading provider of high-quality, professional IP law services in the Czech Republic. Indeed, THK’s wellbalanced team of highly qualified and experienced attorneys at law, lawyers and patent attorneys is routinely ranked among the leading providers of IP and related business law in the country. THK’s professionals are members of numerous organisations, such as the International Trademark Association, the European Communities Trademark Association, MARQUES, the International Association for the Protection of Intellectual Property and the International League of Competition Law, of which international workshops, seminars and conferences they regularly attend to keep up to date with trends and developments in IP law, and to build and maintain connections with colleagues from all over the world. This enables THK to offer services not only in the Czech and Slovak Republics, but also in Europe and further afield through its international network of law and patent offices specialising in intellectual property. The close cooperation between attorneys at law and patent attorneys enables THK to provide its clients with complex services in the field of intellectual property, including IP protection and enforcement strategy advice, IP portfolio management spanning the entire life cycle of IP rights (searches, application filings, renewals, watch services) and legal services including, but not limited to, co-existence agreements, unfair competition cases, litigations and legal
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representation in disputes before courts or other administrative authorities in the Czech and Slovak Republics, taking a business-oriented approach to legal advice. THK’s team gained its wide and deep experience providing professional legal services and support to clients of various sizes, including start-ups, from a vast array of industries ranging from retail and distribution, health, cosmetics and life sciences, fashion, art and design, to chemicals and pharmaceuticals, agriculture and food, banking and finance, consumer products, nuclear industry and construction.
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“Traditional set-up with a contemporary approach… Persuasive, wellformulated arguments before the courts and administrative bodies on the regular”
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Main address Pristavni 24 Prague 7 17000 Czech Republic T +420 266 772 100 F +420 266 710 174 E thk@thk.cz Professional contacts Jana Traplová Managing partner E traplova.jana@thk.cz
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Uexküll & Stolberg www.uex.de
Uexküll & Stolberg has been a full-service IP law firm representing global companies as well as individual entrepreneurs for over 50 years. Initially founded in Hamburg, the firm has become one of the largest IP boutiques in Northern Germany. Today, Uexküll & Stolberg is home to 16 patent attorneys who are admitted to practise before the European Patent Office (EPO), the German Patent and Trademark Office, Germany’s Federal Patent Court and/or the EU Intellectual Property Office. Uexküll & Stolberg’s legal team further includes two attorneys at law who are specialised in trademark and design matters, as well as unfair competition law. The firm employs over 30 full-time staff at its offices in Hamburg and Munich, including highly trained legal personnel, as well as specialists for different languages and patent systems. The attorneys of Uexküll & Stolberg possess relevant backgrounds in a variety of technical fields and their experience of proceedings and general court practice enables them to handle even the most complicated legal issues with mastery. Furthermore, the firm conscientiously keeps up to date with German and European law developments and takes these into consideration when it helps clients devise their filing and prosecution strategy. The firm offers the full range of legal services in the field of intellectual property, including patent, utility model, trademark and industrial design prosecution before the German and European authorities. In connection with patents, Uexküll & Stolberg offers services relating to the drafting and prosecution of patent applications. The firm also represents clients in opposition proceedings before the EPO and the German Patent and Trademark Office, as well as in nullity actions before the German Federal Patent Court. Patent infringement proceedings are handled by the patent attorneys of the firm in close cooperation with attorneys at law who are specialised in patent litigation. Uexküll & Stolberg also frequently conducts freedomto-operate analyses for the German and the European marketplace. Trademark infringement cases are handled by the firm’s experienced attorneys at law. Uexküll & Stolberg’s services also include trademark availability and validity searches, and opinions and consultancy in licensing matters. The trademark team is not only active in the area of trademark prosecution, but has also a passion for litigation,
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“Deep bench of 18 patent attorneys… Broad clientele” including out-of-court litigation. The firm opposes infringing trademark applications where necessary, initiates cancellation actions and pursues trademark infringements occurring in Germany before the German civil courts. Another strong focus lies in combating product piracy by acting against unlawful imports of infringing items. The firm represents a variety of clients, including multinational companies, aspirational start-ups, research institutions and universities, and offers tailor-made and commercially effective IP solutions. Clients of Uexküll & Stolberg include ExxonMobil, Amgen, Pfizer, Bristol-Myers Squibb, Johnson & Johnson, Janssen Pharmaceutica, WR Grace, Sealed Air, KRKA, Ivoclar and Monsanto. Because of the large number of clients with worldwide operations, the firm has established an extensive network with foreign associates that closely cooperate with the firm. All of the partners are fluent in German and English. Individual partners of the firm also speak additional languages such as French, Spanish and Portuguese.
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Main address Beselerstrasse 4 Hamburg 22607 Germany T +49 40 899 654 0 F +49 40 899 654 88 E postmaster@uex.de Professional contacts Albrecht von Menges Head of biotechnology and life sciences group E menges@uex.de Bernd Janssen Head of electronics and engineering group E janssen@uex.de Peter Franck Head of chemistry and pharmacology group E franck@uex.de Other offices Munich Sample client list • Amgen • Bristol-Myers Squibb • Chr Hansen • ExxonMobil • Kongsberg • KRKA • Pfizer • WR Grace
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IAM Patent 1000 1075
UNIT4 IP www.unit4ip.de
A specialised IP boutique based in Stuttgart, Germany, UNIT4 IP advises and represents all kinds of company, from start-ups to small and medium-sized enterprises to world-renowned entities, in all kinds of IP matter. UNIT4 IP’s clients trust the firm’s attorneys’ experience and concentrated know-how, as well as their close cooperative relationships and hand-picked international network. From its successful start in 2016 as a spin-off firm, UNIT4 IP has grown continuously and is regularly listed in renowned rankings. Specialised IP team UNIT4 IP has a team of nine specialised attorneys at law, supported by highly qualified personnel. The attorneys have extensive experience in advising clients across various sectors, including automotive, mechanical engineering, computing, pharmaceuticals, fashion, cosmetics and fragrance, retail and publishing. The firm’s professionals are active in national and international professional associations and committees, and frequently publish articles on various aspects of intellectual property. Based on profound legal expertise, the team follows a pragmatic and thoughtful approach. It always gives crystal-clear recommendations and complete complex tasks in a short time.
“Comprehensive knowhow and experience on both the contentious and non-contentious sides… Special success lately working on behalf of a series of mechanical engineering players”
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Patent law and trade secrets UNIT4 IP represents its clients in patent infringement proceedings primarily before the well-known patent law chambers of the courts in Mannheim/Karlsruhe, Dusseldorf and Munich, as well as in nullity proceedings before the Federal Patent Court, cooperating with renowned external patent attorneys. Clients trust UNIT4 IP to handle complex IP cases, including trade secret cases. Moreover, UNIT4 IP advises and assists its clients comprehensively in drafting different kinds of IP agreement, often with international aspects – in particular, licence agreements, development agreements, technology transfers (eg, licensing and asset deals) and non-disclosure agreements. The firm advises on the implementation of the EU Trade Secret Directive in companies. UNIT4 IP also assists with issues in the field of employees’ inventions. Trademark law UNIT4 IP is a one-stop source for advice on trademarks, whether filing, prosecution or litigation. The firm handles all aspects of trademark law, both national and international, from strategic overall consulting, performing availability searches and filing trademark applications, to surveillance, defence and enforcement of its clients’ trademark rights. The firm enforces its clients’ trademark rights before the German and European courts. Further, it represents its clients in the fight against counterfeiting by cooperating with Customs and handling border seizure proceedings. UNIT4 IP files applications for German trademarks, EU trademarks and international registrations and coordinates international filling campaigns, relying on the close relationships that it has with specialised attorneys worldwide. UNIT4 IP manages trademark portfolios of any size and represents its clients in proceedings before the German Patent and Trademark Office, the EU Intellectual Property Office and WIPO. Design law Designs are in safe hands with UNIT4 IP. Together with clients, the firm develops individual application strategies and applies for German designs, Community designs and international designs. The firm enforces its clients’ design rights before the German and European courts.
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Further, UNIT4 IP coordinates national design applications internationally. It manages design portfolios and represents its clients before the relevant offices.
Main address Jägerstrasse 40 Stuttgart 70174 Germany
Unfair competition UNIT4 IP provides advice in all unfair competition matters, with particular expertise in the overlap and interdependence between unfair competition and intellectual property, including taking action against imitations under unfair competition aspects, the protection of company and operational secrets, as well as misleading and comparative advertising.
T +49 711 722 369 0 F +49 711 722 369 29 E info@unit4ip.de
Copyright law UNIT4 IP advises on all aspects of copyright law, including publishing law and the law of collecting societies. Its activities cover the review and drafting of copyright licence agreements in particular. Its attorneys also enforce copyright and ancillary rights before the courts. One main focus of the firm’s practice is the protection of works of applied art, relying not only on copyright, but also on design, trademark and unfair competition law. UNIT4 IP also has particular expertise in musical works, music publishing rights and the Society for Musical Performing and Mechanical Reproduction Rights. Further, the firm advises on issues relating to software, including open-source software.
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Professional contacts Arno Grohmann Partner E arno.grohmann@unit4ip.de Antonia Bognár E antonia.bognar@unit4ip.de Matthias Lehr E matthias.lehr@unit4ip.de Sample client list • Bosch • Bugatti • easyGroup • Gap • Gilead Sciences • Intel • Porsche
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Valea AB www.valea.eu
Valea AB specialises in the establishment, defence and commercialisation of IP assets such as patents, trademarks, designs and domain names. We also provide legal counselling in matters of copyright law, marketing law and IT law. Through long-term, close cooperation with many of Scandinavia’s and Europe’s most successful and strongly innovative companies, the services we offer are continuously developed to meet our clients’ needs. Valea’s services cover the entire IP rights lifecycle, from concept to commercialisation. We focus on providing businessoriented support with cutting-edge expertise and an understanding of the effects of legislation in a commercial context; we view technology and law as tools to create success for our clients. Our approach Valea is one of Sweden’s most highly recommended firms for patent prosecution – acknowledgement being given to the robust team spirit that is Valea’s hallmark – with clients getting the knowledge and expertise not just of the relationship partner, but of the whole organisation. Valea is driven by a strong partnership that works across departments, both within Valea and together with our clients. We strive for the highest possible quality in all that we do and for continuous renewal to drive development. We work in client teams without geographical boundaries in order to offer our clients the best possible skills and expertise in an efficient manner. In each client team, an account manager is appointed to be the client’s primary contact, responsible for ensuring quality at every stage. Our work is conducted both from our offices and, when required, on site at client locations. With highly motivated and committed employees, we serve as our clients’ right hand and as a sounding
“The firm’s patent attorneys have mastered all patentable technical areas and have everything covered” 1078 IAM Patent 1000
board from concept to commercialisation. This dedication to our clients is reflected in Valea’s continuously increasing market share and sustained growth over the past decade. Protection for IP rights What is worth protecting is not simply a technical or legal question, but primarily a business decision. Together with the client, we develop strategies for IP rights based on each client’s unique business environment and establish rights such as patents, trademarks, designs and domain names. Defence of business-critical assets IP rights are violated both intentionally and unintentionally, and effective measures must be taken to protect the value of a company’s exclusive rights. Technical developments, designs and identity must be protected from idea theft, replication and forgery. We help with general counselling, as well as representing our clients in negotiations and evaluating and preparing agreements. We represent our clients before administrative authorities, including the EPO, the EU Intellectual Property Office and national courts, and internationally through our network of local lawyers. Transactions and commercialisation Managed properly, IP rights are a fantastic competitive tool and an enormous strategic asset. In almost all cases, mergers and corporate acquisitions involve IP considerations. We provide services in the field of IP transactions, such as identification and valuation of existing rights, portfolio analyses and freedom-to-operate analyses. With our combination of in-depth technical knowledge, legal expertise and business aptitude, we can interpret and present complex technical and legal information that can be of crucial significance to a transaction in a clear and comprehensible manner. We also help our clients to commercialise their IP rights and act in negotiations and prepare, for example, licensing, distribution and cooperation agreements, as well as R&D agreements. In brief • Valea has a history that stretches back over 100 years, as Dahls Patentbyrå and Göteborgs Patentbyrå.
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• In December 2004 our staff acquired the business through a management buy-out from Arator A/S. • Valea is entirely owned by its employees through Valea Holding AB. • Valea has offices in Gothenburg, Malmo and Stockholm. • Our name originates from the Latin words valens and valea: strong, powerful and healthy. Patent services • Electronics, information technology and telecoms • Green technology • Life sciences and chemistry • Mechanics • Medtech • Supplementary protection certificates Legal services • Designs • Domain names • Licensing and agreements • Marketing law • Disputes and litigation • Copyright • Trademarks • Post-grant actions and enforcement Commercialisation services • Due diligence • Valuations • IP strategy • Risk management • Annuities and renewals
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Main address Lilla Bommen 3 A PO Box 1098 Gothenburg SE-405 2 Sweden T +46 31 50 77 00 F +46 31 779 06 40 E got@valea.eu Professional contacts Andrew Hammond Chief executive officer E andrew.hammond@valea.eu Other offices Malmo, Stockholm Sample client list • AB Volvo • ABB Power Grids • AR Packaging • Axis • Brink • Catena Media • Epiroc • Ericsson • Essity • SSAB • Swedish Match • Volvo Cars
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Vinge www.vinge.se
Vinge was born from the merger of four law firms in 1983, which resulted in the creation of the first business law firm in Sweden with a full-service offering. Thus, Vinge builds on years of collective experience and provides legal advice and leading expertise in all legal and practice areas of business law and is today one of the largest firms in Sweden. In contrast to many Swedish firms, Vinge has senior IP specialists in all its Swedish offices. Vinge employs English, German, Chinese, Finnish, Norwegian and Russian lawyers who know not only the law in their countries but also the language and business culture. Together with the firm’s Swedish lawyers, or local advisers, they form teams that do more than give legal advice – they build cultural bridges. In all practice areas, Vinge handles projects on a cross-border basis. The firm advises on matters ranging from international transactions to arbitration involving parties from different countries. By combining the experience of global deals with expertise in local practice and law, Vinge can advise clients quickly and comprehensively. Vinge’s IP team plays a leading role in the most important matters in the market: Vinge’s highlights this year once again showcase a broad range of work including trademark, patent and copyright disputes, and IP portfolio management. Many of the matters have involved extensive cross-border coordination challenges. Several of the matters that Vinge’s IP specialists were involved in this year were among the highest-profile, most innovative cases in the market. Vinge’s IP law experts currently comprise three partners and six patent experts. Unique full-service offer with specialist competence With a full-service, standalone IP practice in three key areas, Vinge offers seamless assistance across contentious intellectual property, noncontentious intellectual property and trademark/ design prosecution. Vinge has particular strength in IP disputes, with the number of disputes it has handled over the past few years growing markedly. Vinge’s IP specialists act in some of the most complex and important IP disputes before the Swedish courts – an indication of the firm’s premier position in the contentious IP market. Disputes concerning title to patents and compensation to inventors also constitute
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frequently recurring cases for the group, as well as R&D agreements in major arbitral proceedings. Many of the firm’s clients are major European or US companies, which have identified Vinge as a leading firm in patents. Vinge works with several patent agent firms in all technical fields, in particular software patents, med tech and pharmaceuticals. Vinge’s leading position in M&As and capital markets means that the IP group is frequently involved in transactional IP-related issues, including transactional-related agreements and negotiations and initial public offerings for technology and patent-intensive clients in the Swedish market. The firm frequently advises both national and international clients on matters concerning marketing and regulatory law, and has extensive experience in sectors such as life sciences, alcoholic beverages and tobacco, sports and gambling. Vinge’s IP group has a strong ability to draw on the firm’s other areas of expertise, working closely, as it does, with several other prominent groups and practice areas within Vinge, including the EU, competition and regulatory, dispute resolution, tax and commercial agreements departments, and the China desk. This cooperation enables the IP group to deliver premier advice in relation to complicated legal issues while maintaining a business focus highly appreciated by clients. Vinge’s IP law specialists focus on providing commercially targeted support by combining thorough legal knowledge with a great understanding of the functioning of the regulatory regime in a commercial context. Notable patent cases • Eli Lilly and Company v Fresenius Kabi • Eli Lilly and Company v Actavis • Alfa Laval v SWEP • Seamless v Accumulate • MSD v Teva • Crane v ArjoWiggins
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“One of the most prominent players on the Swedish legal market… Regularly acts for industry leaders in high-profile cases and lucrative transactions”
Main address Smålandsgatan 20 Box 1703 Stockholm SE-111 87 Sweden T +46 10 614 3000 F +46 8 614 3190 E contact@vinge.se Professional contacts Mika Hägerström Assistant E mika.hagerstrom@vinge.se Håkan Borgenhäll Partner E hakan.borgenhall@vinge.se Other offices Brussels, Gothenburg, Helsingborg, Malmo Sample client list • Alfa Laval • Allergan Inc • Apple Inc • Eli Lilly and Company • Pernod Ricard • Swedish Match North Europe
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VO Patents & Trademarks www.vo.eu
VO Patents & Trademarks is a specialist firm of more than 60 patent attorneys, trademark attorneys and attorneys at law, backed by 140 qualified and experienced support staff. It has nine offices across the Netherlands, Belgium and Germany, including in The Hague and Munich. VO is the largest and leading IP firm in the Netherlands and among the top 10 European IP firms. Serving its clients worldwide since 1916, it supports them in maximising the value of their intellectual property. Over the years, the firm’s consistent growth in volume and client base has led to an expansion of its workforce and office network. Indeed, VO is a European firm with strong Dutch roots, combining native entrepreneurial attitude with a strong drive to explore new territories. Experienced professionals VO’s professionals include European, Dutch, Belgian and German patent attorneys and a US patent agent, as well as European and Benelux trademark and design attorneys, and attorneys at law. European patent attorneys can represent clients before the European Patent Office (EPO), which has a branch office in The Hague. Professional pride Rigorous training programmes, both in-house and externally, ensure that both attorneys and back office staff are qualified to the highest standards. This is illustrated by the excellent results of VO candidates at the European patent attorney qualifying exam. Partners and associates of the firm are active in professional organisations, both nationally and internationally, in governmental committees, and in education and professional training. They also actively participated in the establishment of the European Patent Convention.
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Your full-service IP partner As a full-service firm, VO also has in-house specialists providing top-quality search, annuity and translation services. In addition, it has an extensive referral network throughout Europe. This means that, for instance, in complex cases and cross-border litigation it can form a team of different specialists from different firms. How VO works It is the firm’s standard procedure to draw up a plan of approach based on each client’s specific needs. The best IP strategies are chosen together with the client. Its schedule of charges is based on a simplified costing system. For standard agency services relating to patent filing and granting procedures, an all-in amount is charged. This is simple, predictable and cost-effective. Clients The firm fosters strong relationships with its extensive national and international client base, covering all sectors of industry and all sizes – from multinationals to small and medium-sized companies, including spin-offs. Among its clients are universities and research institutions. VO also regularly works with numerous law firms and patent attorneys worldwide in litigation. Close to the action VO’s main offices in The Hague and Munich are located close to the EPO, making attending interviews and oral proceedings in connection with European patent applications examined in both cities more efficient. The court in The Hague, which hears all Dutch patent disputes, and the Benelux Office for Intellectual Property are also in close proximity. Similarly, Munich is home not only to the EPO but also to the German Patent and Trademark Office, the German Patent Court and two of 13 German district courts dealing with IP matters. In addition, the German Federal Supreme Court, which decides on nullity appeal proceedings, is easily reachable from Munich. VO is ideally placed to help clients worldwide protect and exploit their intellectual property. It has the expertise to represent their IP interests on a European and a global basis. VO also helps bring companies together to make and sell third-party products under licence.
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Services • IP prosecution • Due diligence • Prior art searches • IP audits • Portfolio management • IP strategy • Management consultancy • IP literature searches • Litigation • IP landscaping • R&D support • Patent restoration • Outsourcing
Main address Carnegieplein 5 The Hague 2517 KJ Netherlands T +31 70 416 67 11 F +31 70 416 67 99 E info@vo.eu Professional contacts Otto Oudshoorn Partner E o.oudshoorn@vo.eu Bernard Ledeboer Partner E b.ledeboer@vo.eu Other offices Amsterdam, Arnhem, Eindhoven, Groningen, Leuven, Liège, Munich, The Hague, Utrecht Sample client list • Boskalis • Comcast • DAF Trucks • Dow • FLEX-MCi • Heineken • JDE • Nedap • Rexnord
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IAM Patent 1000 1083
VOSSIUS & Partner Patentanwälte Rechtsanwälte mbB vossius.eu
VOSSIUS is a partnership of patent attorneys and attorneys at law with offices in Munich, Dusseldorf, Berlin and Basel. Established in Munich in 1961, it is today one of Europe‘s leading IP firms with clients from all over the world. The firm focuses on highend advice for innovative companies concerning all questions associated with the protection and the enforcement of IP rights. As a full-service IP law firm, VOSSIUS offers its clients the technological and scientific know-how of experienced patent attorneys in combination with the knowledge and competence of highly specialised attorneys at law. Based on decades of experience, the firm can provide a comprehensive range of services. This translates into the best possible client counselling and the greatest possible protection of IP assets during all phases of legal disputes and litigation. The basis of our success is above all our genuine understanding of your technology and our passion to advise on the implementation of forwardthinking innovations. We always operate on an equal footing and maintain an intensive dialogue with our clients. With intelligence, diligence and strength of character, VOSSIUS reliably protects your ideas on their way to implementation. We have established a global network of partner firms, particularly in North America, Asia and Europe, facilitating reliable and efficient cooperation in transnational issues. One stop, full service At VOSSIUS, this means comprehensive IP advice from a single source, which we can offer our clients given the size of our firm, even for major projects. The interdisciplinary composition of our integrated teams enables us to provide individual and personal service for your intellectual property. In contentious proceedings, we form integrated litigation teams consisting of highly specialised and well-versed attorneys at law and patent attorneys with litigation experience, who will defend or enforce your interests with passion, efficiency and excellent professional expertise before the relevant German and EU courts and authorities. This gives us a clear competitive advantage over firms that do not follow this integrated approach, with benefits for our clients as a ‘one-stop shop’ solution: we are in a position to address all aspects of the case directly and offer advice from a single source. At
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“Strong reputation... One of the most highly reputable patent firms on the market” the same time, our litigation experience provides important insights into the development of protection strategies for intellectual property and the prosecution of protective rights, making them stronger and more efficient. However, we do not believe that one size fits all, as far as our advisory services are concerned. In putting together our teams, we ensure that the teams’ composition is perfectly tailored to meet the needs of each client or mandate. As a result, our individually assembled national or international teams are always as big as necessary to meet your needs. Asia Desk As business activities between Asia and Europe are constantly increasing, so does also the number of patent applications from Asia and cross-border proceedings in the fields of IP law. As one of Europe’s preeminent IP law firms coordinating and handling also the most complex multinational matters and proceedings for international clients, we have developed a strong focus on Asia over the past decades. For Asian – especially Chinese, Japanese, Korean and Taiwanese – clients, as well as for clients doing business in Asia, VOSSIUS has therefore established an integrated Asia Desk consisting of attorneys and consultants from Japan, China, Korea and Taiwan, some of whom are qualified not only in their respective country, but also as European patent attorneys or lawyers. They form highly skilled teams together with our European experts to address market-specific issues, as well as language requirements, and are always up to date with the latest developments in a rapidly evolving economic market area. VOSSIUS has been repeatedly recognised by national and international legal directories and reviewers for the quality of its services. We are very honoured by the recognition of our work, which is
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underlined by these awards and rankings. What others say about our competence and expertise motivates us as a firm and makes our attorneys strive even more to produce excellent results for our clients.
Main address Siebertstrasse 3 Munich 81675 Germany T +49 89 41304 0 F +49 89 41304 111 E info@vossius.eu Professional contacts Hans-Rainer Jaenichen Partner E jaenichen@vossius.eu Rainer Viktor Partner E viktor@vossius.eu Other offices Basel, Berlin, Dusseldorf
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Wallinger Ricker Schlotter Tostmann, Patent- und Rechtsanwälte Partnerschaft mbB www.wallinger.de
Wallinger Ricker Schlotter Tostmann is an internationally active, well-established and consistently top-tier ranking IP law firm located at the heart of Europe’s IP capital, Munich, beside the headquarters of both the EPO and the German Patent and Trademark Office, as well as close to the Federal Patent Court, the Munich IP litigation courts and the future Unified Patent Court. The firm’s European and German patent attorneys and attorneys at law represent clients from all over the world and across the full spectrum of industries. Wallinger Ricker Schlotter Tostmann engages in all matters of intellectual property, including: • prosecution, enforcement, defence and licensing of patents, trademarks and design rights; • copyright and unfair competition matters; • IP-related transactions; • freedom-to-operate analyses; • intellectual property in M&A, including IP due diligence and IP agreements; and • alternative dispute resolution. Wallinger Ricker Schlotter Tostmann is particularly active in contentious matters, with a focus on patent and trademark litigation before German courts, including the German Supreme Court, oppositions and appeals before the EPO and nullity proceedings before the German Federal Patent Court and the German Supreme Court. History Wallinger Ricker Schlotter Tostmann was founded in 2007 following the merger of the leading automotive and mechanical engineering IP firm Wallinger and Partners, founded by Michael Wallinger in 1989, and the chemistry/ pharmaceutical IP practice group of an international US-based law firm, led by Mathias Ricker – the firm’s European IP coordinator and cofounder of the Munich IP group. Since 2007 Wallinger Ricker Schlotter Tostmann has continued to expand and now includes more than 25 lawyers and technical experts. The firm relies on experienced patent attorneys and attorneys at law to serve its clients, most of whom have significant IP experience, while many also have a strong industry background, having worked in R&D and management positions before joining Wallinger Ricker Schlotter Tostmann.
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“Wraparound service that never leaves clients wanting… Over the last year served a whole range of household names” While some of these attorneys joined from different law firms, Wallinger Ricker Schlotter Tostmann has also established a successful patent attorney trainee programme that consistently adds home-grown talent to the team. Practice areas and industries Wallinger Ricker Schlotter Tostmann counsels clients on IP matters in all areas of technology. When necessary, teams of patent attorneys or technical experts with complementary technical experience or teams of both patent attorneys and attorneys at law are formed. Wallinger Ricker Schlotter Tostmann ensures that partners or experienced attorneys are actively involved in all aspects of each case to guarantee continuity and the highest quality. The firm’s focus is on providing strategic and comprehensive solutions in line with clients’ corporate goals instead of just ‘managing cases’. Wallinger Ricker Schlotter Tostmann covers a broad range of technical and scientific fields, including: • mechanical engineering; • chemistry; • pharmaceuticals; • biotechnology; • electrical engineering, electronics and semiconductors; • information and communication technology; • physics; • green technologies; • new digital technologies; • automation and robotics; • medical engineering; • materials science.
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At Wallinger Ricker Schlotter Tostmann, clients worldwide are supported by a strong network and engaged, quality-based, longlasting cooperation with distinct partner firms in all relevant jurisdictions. The firm’s client base spans the full range of small, medium-sized and large national and international companies, as well as start-ups and universities. This mixed client base is relevant to all technical areas served by Wallinger Ricker Schlotter Tostmann. The firm efficiently supports in-house counsel for some clients, while it essentially acts as the IP department for others (including a client with a patent portfolio of more than 500 active patent applications and more than 1,500 active trademarks). For years, Wallinger Ricker Schlotter Tostmann has been ranked among the top IP law firms in Germany, including by the JUVE law firm ranking, which each year has placed it among the top 5% of all IP firms (over 400) in Germany, particularly in regard to contentious matters.
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Main address Zweibrueckenstrasse 5-7 Munich 80331 Germany T +49 89 210 2320 F +49 89 2194 9408 E post@wallinger.de Professional contacts Mathias Ricker Partner E mricker@wallinger.com Michael Platzoeder Partner E mplatzoeder@wallinger.com Holger Tostmann Partner E htostmann@wallinger.com Sample client list • Archroma • AVL • BMW • Boehringer • Bosch • Eastman • Eppendorf • FMC • KUKA • Merck • Merz • MTU • Schaeffler
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Weickmann & Weickmann PartmbB www.weickmann.de
Weickmann & Weickmann PartmbB was founded in 1882 in Munich, where its offices are still located. It is one of Germany’s oldest patent law firms. Weickmann & Weickmann is engaged in all areas of intellectual property, including patents and utility models, design patents, trademarks and domain names. Weickmann & Weickmann’s aim is to provide the best protection for its clients’ knowledge and know-how in the field of intellectual property on a national and international level, and to support its clients’ business priorities by ensuring the competitiveness of their property rights. Weickmann & Weickmann has 13 partners, five of whom work in the technical fields of physics, mechanics, engineering and electronics; six partners are specialised in chemistry and life sciences, while two are experts in design patents and trademarks. The partners are supported by over 40 attorneys and technically trained patent experts. The firm’s expertise covers all technical and legal aspects of intellectual property and enables it to apply an interdisciplinary team approach to all relevant issues. Weickmann & Weickmann can advise clients in numerous technical fields, including physics, mechanical engineering, electrical engineering, electronics, inorganic and organic chemistry, biochemistry, immunology, pharmaceuticals, food chemistry and agriculture. Thanks to the quality and diversity of its team’s education and experience, Weickmann & Weickmann can quickly identify and resolve problems and provide clients with a team of highly qualified attorneys. In particular, it is part of Weickmann & Weickmann’s corporate philosophy to work out patent and trademark-related challenges and opportunities for each of its clients on an individual basis and, consequently, to develop IP strategies tailored to the need of each individual client. Detailed advice regarding the prospects and cost of any action to be taken, as well as means of achieving cost efficiency and staggering expected costs, are part of the services the clients of Weickmann & Weickmann can always rely on. In particular, Weickmann & Weickmann provides services to clients in all fields of intellectual property, especially the drafting and prosecution of patent applications and litigation – including opposition, appeal, nullity and infringement proceedings. In addition, the firm provides clients
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“Reliable, professional, technically astute, and strategically-minded service… Sits at the coalface of innovation” with opinions – for example, on freedom to operate or validity of third-party protective rights. Weickmann & Weickmann further assists clients in securing supplementary protection certificates on pharmaceuticals and agricultural agents for which marketing authorisations have been obtained. Weickmann & Weickmann represents clients among leading companies in the chemical, pharmaceutical and automotive fields in Germany, Sweden, Switzerland, Denmark, Norway, the United States, China, Japan and Korea. Moreover, it also serves start-ups, scientists, university departments and other research institutions. For more than eight years Weickmann & Weickmann has been a sponsor of the Munich Business Competition, supporting founders and start-ups within its areas of expertise. All Weickmann & Weickmann attorneys are fluent in German and English, and some patent experts speak Italian, French, Spanish, Chinese and Korean. Weickmann & Weickmann offers expertise on legal requirements, legislation and jurisprudence in Europe and abroad. The firm represents clients directly before the German Patent and Trademark Office, the European Patent Office and the German patent courts, and cooperates with German lawyers in infringement proceedings. Further, it can ensure worldwide protection for its clients by cooperating with a network of foreign law firms. This network has been continuously developed and strengthened, with its success spanning several decades.
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Main address Richard-Strauss-Strasse 80 Munich 81679 Germany T +49 89 45 56 30 F +49 89 45 56 39 99 E email@weickmann.de Professional contacts Christian Heubeck Partner E email@weickmann.de
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IAM Patent 1000 1089
Wiggin LLP www.wiggin.co.uk
Wiggin advises creative and technology-driven businesses, well-known brands, organisations and trade associations in the United Kingdom, Europe and worldwide, providing thought leadership and cutting-edge strategic IP advice. The breadth and depth of knowledge and expertise of its team extend across all IP rights and it assists clients in generating, preserving, exploiting and expanding the value of IP assets and anticipating developments in IP policy. Wiggin’s IP team “does fantastic patent work … the firm is composed of specialists with razor-sharp focus” (IAM Patent 1000). Patent practice – a powerful blend of practical experience and technical expertise Sara Ashby and Michael Browne originally come from IP-boutique Redd, which merged with Wiggin in 2017. In 2020 they were joined by Calum Smyth in the London office and Carl De Meyer and Carina Gommers in the Brussels office. Ms Ashby is a “phenomenal lawyer” (IAM Patent 1000) with a broad focus. Her extracurricular roles include being president of the UK group of the International Association for the Protection of Intellectual Property and teaching for Oxford University. Mr Browne works with clients from a range of IP-rich industries and is considered “a veteran of patent entitlement proceedings in the High Court and patent infringement proceedings in the [Intellectual Property Enterprise Court]” (IAM Patent 1000). Mr Smyth, recognised for his ability to “design strategies to add value”, has over 20 years’ experience in intellectual property and technology. He previously led the IP department at Barclays Bank and is consistently listed in the IAM Strategy 300 Global Leaders guide. Mr De Meyer and Ms Gommers are both leading IP practitioners, renowned in the Belgian capital and internationally. They act for some of the best known and most innovative companies. Mr De Meyer is lauded for being “technically brilliant …. From a tactical point of view, he is one of the best there is” (IAM Patent 1000) and Ms Gommers is praised for her “pro-active strategic thinking and excellent project management and case mapping skills”(IAM Patent 1000).
1090 IAM Patent 1000
“Known for its copyright and trademark work… Also excels on the patent side, particularly on the engineering and electronics sides” Wiggin is flexible and dynamic, running cases and transactions efficiently, cost-effectively and tailored to suit each individual client’s needs. Spearheaded by practitioners with decades of practical experience litigating IP disputes and assisting with commercial agreements for clients across a diverse range of industries and technologies, the team also draws on the technical knowledge of lawyers with backgrounds in several scientific disciplines. Wiggin’s contentious patent practice is broad and clients hail from sectors as diverse as medical devices, pharma, tech, automotive, optics and general engineering. Notable cases run by the Wiggin team include Pozzoli v BDMO, the leading UK Court of Appeal case on obviousness. A client’s commercial interests and objectives are at the heart of all the team does, taking advantage of the full range of dispute resolution options offered by the court system when creating strategies for clients. In the United Kingdom, Wiggin’s team was one of the first to bring a patent claim using the High Court’s Shorter Trials Scheme, and has significant experience litigating in the Intellectual Property Enterprise Court, as well as the High Court. Wiggin’s IP transaction practice deals with all aspects of the exploitation of patents, know-how and related rights. Market-leading brand protection capability A leader in brand protection, Wiggin is a onestop-shop for litigation, portfolio and strategy services, for EU, UK and Belgium rights. WTR 1000 has acknowledged its “cutting-edge expertise in
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non-traditional marks, designs, international brand strategy, portfolio management, litigation, alternative dispute resolution and transactions”. Designs Wiggin boasts true specialists in the oftenneglected and under-utilised area of design protection, teaching and examining on designs for Oxford University’s IP Diploma. Online content protection Renowned for its online content, anti-piracy and anti-counterfeiting work, Wiggin has been at the forefront of the leading cases – for instance, acting for the claimants in Warner v TuneIn and in Cartier v BT Plc – establishing important precedents to enable enforcement action against intermediaries, such as internet service providers. Innovation Wiggin recognises that to truly understand and service innovation-driven businesses, innovation and technology have to be at the heart of the practice. Wiggin’s legal expertise is supported by award-winning software and leading technologies in global brand protection, anti-piracy intelligence and site-blocking via INCOPRO, a business co-founded by Wiggin and recognised as a true innovator in the field of IP protection.
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Main address 9th Floor Met Building 22 Percy Street London W1T 2BU United Kingdom T +44 20 7612 9612 F +44 12 4222 4223 E law@wiggin.co.uk Professional contacts Sara Ashby Partner E sara.ashby@wiggin.co.uk Michael Browne Partner E michael.browne@wiggin.co.uk Calum Smyth Partner E calum.smyth@wiggin.co.uk Other offices Brussels, Cheltenham
IAM Patent 1000 1091
Wildanger Kehrwald Graf von Schwerin & Partner mbB www.wildanger.eu
Wildanger Kehrwald Graf von Schwerin & Partners mbB is one of the oldest and most prominent German IP litigation firms in Germany and can rely on decades of experience. Wildanger has an outstanding position in the field of patent litigation and is well known for its drive and extraordinarily high standards. Wildanger has 13 truly specialised attorneys in IP litigation – among them nine partners. The firm’s international and national clients always receive the same level of dedication and individual attention. Wildanger has a remarkable and most successful track record in SEP enforcement and licensing, as well as in handling any sort of IP litigation across industries at any level of complexity. The firm was already focused on IP law when it was taken over in 1967 by Günther Wildanger, one of Germany’s best-known patent litigation attorneys. This take-over played a decisive role in establishing Dusseldorf as a leading jurisdiction for patent and utility model litigation. A very high number of leading German decisions in the field of IP law, in particular patent law, involved cases handled by Wildanger. All partners have set themselves apart in their own personal ways through their outstanding work, expertise and experience. They hold themselves to extremely high standards, making the firm the first choice for IP litigation and advice among national and international clients of any size. The close-knit team of internationally experienced attorneys works closely together, sharing their knowledge and expertise – with effective results. The firm’s team is freely scalable to also handle large and complex litigation. Services • Patents and utility models – infringement proceedings, nullity and opposition proceedings; freedom-to-operate analyses; collecting evidence: inspection proceedings; SEPs and FRAND; disputes on inventor’s rights; licence agreements, R&D contracts, transfer of intellectual property • Employee inventions – assignments, remuneration, incentive systems, university inventions, in-house trainings • Trademarks – enforcement and exploitation of trademarks, company names and indications of geographical origin; representation in
1092 IAM Patent 1000
“Competitors continue to speak highly of Wildanger… Capable of handling disputes of every flavour” infringement and cancellation proceedings; border seizures; preservation of evidence orders; licensing • Designs – infringement proceedings; revocation/ deletion proceedings; border seizures; preservation of evidence; licensing • Unfair competition law –passing off; reputation exploitation; reputation damage/degradation; unfair advertising; preliminary injunctions • Trade secret protection – infringement proceedings; protective measures Clients Wildanger’s national and international clients come from a wide range of industries, among them global players, small and medium-sized enterprises and start-up companies. Wildanger serves companies in new technology fields, such as biochemistry, software, information technology, semiconductor technology and telecoms, as well as in classic areas, including pharmaceuticals, chemicals, engineering, automotive, medical technologies, consumables, electronics and electrical engineering. Recommendations • JUVE German Commercial Law Firms frequently lists Wildanger as top-tier law firm for patent litigation in Germany. • JUVE German Commercial Law Firms (2020/2021) lists Roland Kehrwald and Peter-Michael Weisse among the top 14 senior advisers in patent litigation in Germany and Eva Geschke among the top nine leading advisers under 50. • Chambers Europe 2021 writes about the firm “Clients regard the team as ‘one of the best patent litigation teams in Germany.’”. • IAM Global Leaders recommands two Wildanger partners from Germany (Wolf Graf von Schwerin and Mr Weisse).
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• Managing Intellectual Property recognises five partners as “Patent stars 2020/2021”. • Dr Kehrwald is one of only five lawyers inducted into The Legal 500 Hall of Fame for patent litigation in Germany. Languages Working languages include English, French and German.
Main address Couvenstrasse 8 Dusseldorf 40211 Germany T +49 211 497 67 83 0 F +49 211 493 02 65 E mail@wildanger.eu Professional contacts Peter-Michael Weisse Partner E weisse@wildanger.eu Alexander Reetz Partner E reetz@wildanger.eu Soenke Forck Partner E fock@wildanger.eu
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IAM Patent 1000 1093
Withers & Rogers LLP www.withersrogers.com
Withers & Rogers is one of Europe’s largest dedicated IP law firms, with offices in London, Paris and Munich, as well as three other regional offices in the United Kingdom. Established more than 130 years ago, the firm remains as passionate as ever about making intellectual property work to the clients’ best advantage. Today, clients include many renowned, innovative organisations from across Europe, North America and Asia. Specialist teams Withers & Rogers has four core practice groups: • advanced engineering; • electronics, computing and physics; • life sciences and chemistry; and • trademarks. The firm has an outstanding breadth and depth of experience and expertise, with over 100 patent and trademark professionals. In addition to the practice groups above, the firm has a number of specialist groups, enabling it to pool industry knowledge and provide added value for its clients. All of the firm’s patent and trademark attorneys are selected on the basis of excellent academic achievement and industry knowledge. They, along with the firm’s registered design attorneys, advise on the protection and enforcement of IP rights for inventions, brands and designs. Withers & Rogers has extensive commercial and industrial experience, and the team’s technical expertise spans all major technologies. A comprehensive service Withers & Rogers offers a comprehensive service that extends to both securing IP rights – such as patents and trademark and design registrations for the United Kingdom, Europe and further afield – and advising on their exploitation and enforcement. Withers & Rogers is most renowned for its work in strategic IP. The firm builds strategies for clients that embrace critical areas like innovation culture, due diligence, freedom to operate, invention management and patent mapping, to name but a few. Withers & Rogers Renewals, a sister firm of Withers & Rogers, handles renewals on behalf of its clients, enabling them to devote more time to other parts of their business. The renewals team
1094 IAM Patent 1000
serves a global client base across a huge variety of industries and the network of local patent attorneys and renewal agents around the world gives it a truly global reach. Alongside this, the firm provides proactive support functions that help clients keep track of their intellectual property, stay on top of maintenance and stay in control of cost. This ensures clients receive a service that delivers both technical excellence and commercial insight. Experience Withers & Rogers is a market leader in the drafting and prosecution of patent applications and in oral proceedings (hearings) in both opposition and appeal procedures at the European Patent Office. The firm acts extensively before both the UK Intellectual Property Office and the European Patent Office. The firm’s contentious practice team has significant experience of conducting litigation in the UK courts and jointly with attorneys in other European jurisdictions. The firm also has experience of advising clients on implementing working strategies to maximise commercial gain from inventions, while keeping costs to a minimum. A number of its clients require a flexible approach to handling their portfolios, including maintaining their databases for them. International by nature A truly international practice, Withers & Rogers maintains an established worldwide network of contacts including both trusted foreign IP law firms and direct clients. As well as filing and prosecuting applications at the European and UK Patent Offices, the Munich office enables the firm to act before the German Patent Office, so it can act as a single point of contact for three of the key patent granting authorities in Europe. With attorneys fluent in most of the official European languages, together with the Munich office and recently opened Paris office, Withers & Rogers is ideally positioned to work with any European jurisdiction.
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“Glowing feedback from the market… Highly capable and respected, especially in the biotechnology field”
Main address 4 More London Riverside London SE1 2AU United Kingdom T +44 20 7940 3600 F +44 20 7378 9680 E enquiries@withersrogers.com Professional contacts Philip Corbett Head of marketing & business development E pcorbett@withersrogers.com Other offices Bristol, Leamington Spa, Munich, Paris, Sheffield
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IAM Patent 1000 1095
WTS Patent Attorneys - Witek, Sniezko & Partners www.wtspatent.pl
WTS Patent Attorneys is a full-service European IP firm with a strong focus on patent work in all fields of technology. Its 18 years of experience place WTS in the unique position in Poland to be able to provide top-quality patent prosecution, litigation and IP strategy consultancy services to clients in both the public and private sectors. While WTS earned its reputition primarily as the leading life sciences patent expert in Poland, over years the firm has expanded its area of expertise to cover other fields of technology, such as nanotechnology, electrical engineering, electronics and mechanics. Firm history The partnership was formed in 2002 by individuals who wanted to combine their skills and experience gained over several years at renowned patent agencies. The firm has offices in Wroclaw and Warsaw, and a representative office in Munich. Since its establishment, WTS Patent Attorneys has gained a reputation for representing high-profile clients ranging from academic institutions and start-up companies to international corporations acting in the Polish market. WTS specialists WTS is run by 11 patent attorneys of whom eight focus exclusively on patents and three on trademarks and designs. The firm’s patent attorneys are licensed to conduct all manner of cases concerning IP protection before the Polish administrative bodies and civil courts and international IP offices – namely, the EPO, WIPO and the EU Intellectual Property Office. WTS attorneys have deep technical knowledge, bringing together experience from academic research and extensive patent expertise in different fields of science and technology. The WTS team of qualified paralegal assistants have backgrounds in civil and administrative law (masters and PhDs), economics, English, linguistics and Slavonic studies. WTS works with an established network of more than 20 scientific translators representing a number of disciplines in all fields of technology. Scientific experts cooperating with WTS on a daily basis hold PhDs in life sciences, chemistry and biotechnology. Expertise WTS Patent Attorneys specialises in all matters relating to European and Polish patents and utility
1096 IAM Patent 1000
models, providing domestic and foreign clients with comprehensive and professional assistance. The firm’s services include drafting, filing and prosecuting applications for patents and utility models; filing and prosecuting supplementary protection certificates; drafting and filing nonpatentability statements; conducting patent searches; monitoring patents; and drafting patentability opinions. WTS Patent Attorneys has significant experience in IP rights enforcement and litigation conducting patent nullity and infringement proceedings. WTS assists its clients with the commercialisation of intellectual property by offering opinions on marketability, finding business partners, securing the rights of parties participating in trade negotiations and drafting contracts and agreements. Supported by highly skilled and experienced consultants and translators, WTS provides professional services in the validation of granted European patents in Poland. The firm also offers services related to trademarks and designs, acting as representatives in application, opposition, litigation and appeal proceedings before Polish, international and EU institutions granting trademark and design protection. Pharmaceuticals disputes Among WTS numerous notable achievements, one can mention litigation and nullity disputes involving pharmaceuticals, including Alendronate Venlafaxine, Quetiapine, Repaglinide, Oxaliplatine, Montelukast, Dorzolamide, Esomeprazole, Docetaxel, Drospirenone-Ethynyloestradiol, Herceptin, Tiotropium, Clopidogrel-
“High-quality service, reasonable costs and excellent administration… Biotechnology is a forte” www.IAM-media.com
Acetylsalicylic acid, Capecitabine, Tropenole, Budesonide-Formeterol, Rituximab and Valsartan-Amlodipine. Worldwide recognition For several years WTS Patent Attorneys has been recommended in the IAM Patent 1000 - the World’s Leading Patent Professionals ranking (2019, 2020 and 2021 editions). The firm was recognised at the Global IP Awards presented by IAM and WTR as the Polish Patent Prosecution Firm of the Year 2020. And WTS was the only firm for Poland to be included in Europe’s Leading Patent Law Firms ranking published by the Financial Times (2019 and 2020 editions). The firm’s patent attorneys boast an impressive collection of individual distinctions too: in recent years, various partners have featured in the IAM Global Leaders ranking (2020 and 2021 editions), Who’s Who Legal: Patents 2020 and IP STARS rankings.
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Main address ul. Rudolfa Weigla 12 Wroclaw 53-114 Poland T +48 71 346 74 30 F +48 71 346 74 32 E wroclaw@wtspatent.pl Professional contacts Rafal Witek Partner E witek@wtspatent.pl Andrzej Witek Partner E andrzej@wtspatent.pl Other offices Munich, Warsaw
IAM Patent 1000 1097
Zacco www.zacco.com
Zacco is a true European full-service consultancy with a 360-degree approach to intellectual property. With more than 500 IP professionals, including over 125 authorised patent attorneys and over 75 authorised trademark and design attorneys and attorneys at law, we cover seven European jurisdictions – EUIPO/EPO, the United Kingdom, Germany, Norway, Sweden, Denmark and Switzerland. Zacco as a firm and many of our attorneys have achieved top-tier rankings and recommendations from Managing Intellectual Property, World Trademark Review, Intellectual Asset Management and The Legal 500 that vouch for the outstanding quality of our services. We are the leading one-stop shop for handling European cases. Patent, trademark and design prosecution Zacco’s offices serving the EPO, EUIPO, Norway, the United Kingdom, Germany, Switzerland, Sweden and Denmark mean that clients need only a single point of contact to handle all their IP prosecution in seven European jurisdictions. Zacco is ranked as a Tier 1 firm in several of the countries mentioned above, and a considerable number of the firm’s attorneys have achieved individual recommendations in well-established IP rankings too. Thanks to our impressive number of patent attorneys, many of them authorised European patent attorneys, Zacco has an expert ready to serve clients in most technology fields. Clients will find a great match for their needs, no matter whether their invention relates to chemistry, mechanics or biotech, or in the areas of digitalisation, software and artificial intelligence. Our trademark and design practice assists all industries with filing and prosecution, availability and infringement opinions and has a special focus on EU trademark and Community design practice, including oppositions, cancellations and appeals before the EUIPO. Litigation and disputes When in need of experts in IP litigation and dispute matters, clients can rely on Zacco to represent them across seven jurisdictions. Unlike a traditional law firm, we are renowned experts in intellectual property, meaning that we have both the legal and the technical expertise in-house to successfully represent your interests. Our experts can represent
1098 IAM Patent 1000
“Unrivalled in its geographical reach… Pan-European presence like no other firm on the Norwegian patent market” you directly or provide litigation support to another legal counsel that acts as your trusted representative before the authorities. In contrast to many other IP firms in Scandinavia, Zacco also provides the full range of IP legal services cross border. These services are offered through cooperation with law firms and lawyers working and sharing offices with Zacco throughout Scandinavia and in Germany. The legal practice serves all industries with legal advice and assistance in connection with the drafting and negotiation of contracts relating to intellectual property, the EU General Data Protection Regulation and other compliance matters, advertising and e-commerce, litigation, domain name conflict resolution, establishment of customs surveillance and other measures for the prevention or combat of counterfeiting. Zacco’s lawyers have successfully represented international clients in proceedings before the national courts and the European Court of Justice. Our vision – IP 360: the future of intellectual property Zacco takes care of its clients’ innovation, identity and digital assets – everything that you literally cannot put your finger on. We protect these assets, we give our clients ownership and make them theirs to keep – now and in the future. Due to its size, Zacco has specialists in almost all areas of intellectual property. Our service offerings cover the whole range of patent, trademark and design protection and litigation, as well as secure software development, digital brand protection, cybersecurity and portfolio management. The world changes, and so do we. Zacco is constantly evolving and adjusting to its
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surroundings. With a recent broadening of its scope of services, Zacco is focused on meeting the implications and possibilities of digitalisation. This broadening involves applying a 360-degree perspective on intellectual property, including cybersecurity and software. The overall purpose is to guard all intangible assets of Zacco’s clients.
Main address Arne Jacobsens Alle 15 Copenhagen DK-2300 Denmark
150 years’ experience in innovative thinking We have a long history as an international IP consultancy dating back to 1870. Through continuous focus on developing and expanding our services and our long-term growth strategy, Zacco has become one of Europe’s largest and most experienced IP consulting firms.
Professional contacts Hans Christian Nielsen Regional director, Denmark E hans.nielsen@zacco.com
T +45 3948 8000 F +45 3948 8080 E info@zacco.com
Erik Treskog Regional director, Sweden East and North E erik.treskog@zacco.com Thomas Rukin Regional director, Norway and United Kingdom E thomas.rukin@zacco.com Other offices Aarhus, Bangalore, Bergen, Birmingham, Bremen, Gothenburg, Kolding, Linkoping, Lund, Malmo, Munich, Oslo, Skelleftea, Stockholm, Uppsala
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IAM Patent 1000 1099
ZBM Patents & Trademarks www.zbm-patents.eu
ZBM Patents & Trademarks was founded in 2003 with the goal of changing the patent landscape in Spain. ZBM is proud to have reached that goal and is now widely considered to have set the new standard for patent practice in Spain. Along the way, it has dramatically increased IP awareness in the country. The firm has grown considerably in a short time and currently has 23 patent experts in its team, including 13 qualified European patent attorneys in Spain, as well as a US agent and three Spanish patent and trademark attorneys. Quality and integrity ZBM’s patent experts have an in-depth understanding of clients’ technologies and business needs, and the firm is committed to providing services that create value for clients. ZBM distinguishes itself from other patent firms through its unfaltering commitment to quality. Whether patent drafting, patent searches, prosecution work, opposition or just validations, all work products are cross-checked to ensure that they are of consistent quality. The firm’s attorneys believe that something is not worth doing if it is not done well. ZBM’s commitment to training both staff and clients is unsurpassed: the firm is involved in all main academic activities in Spain. In-house training ensures that every member of the ZBM team is aware of the relevant legal developments in any jurisdiction. ZBM’s outstanding work has been recognised both nationally and internationally from the beginning: • In all editions of the IAM Patent 1000, ZBM has been listed in the highly recommended category for patent prosecution in Spain. • ZBM is the only Spanish firm to have been listed in the top tier of Managing Intellectual Property magazine’s rankings every year since 2007. Clients also recognise ZBM’s excellent value for money, and client recommendations have become its major source of growth as small and medium-sized enterprises, multinationals, patent firms and lawyers increasingly find their way to ZBM from the United States, Latin America, Asia and the Middle East.
1100 IAM Patent 1000
Areas of expertise ZBM’s patent attorneys are trained and experienced in a wide range of technical areas, such as pharmacy, chemistry, biotechnology, mechanics, electronics and computer technology. Its patent services include the following: • Patentability and freedom-to-operate studies – ZBM’s experts are highly trained in searching, and the company takes maximum advantage of its experts’ backgrounds as former patent examiners, Chemical Abstracts Service and STN International trainers and managers of scientific information departments of pharmaceutical companies. • Patent drafting – ZBM drafts European and Patent Cooperation Treaty (PCT) applications in both English and Spanish, as well as Spanish patent and utility model applications and US patent applications. Further, its experts are familiar with the particular requirements of other major jurisdictions, including China and Japan. • Patent prosecution – ZBM files and prosecutes European, PCT and Spanish applications, as well as national phases of PCT applications in both Europe and Spain. Through a network of associates in foreign countries, patents are also prosecuted worldwide. • European oppositions and appeals – ZBM provides technical and formal assistance to clients in opposition or appeal proceedings before both the European Patent Office and the Spanish Patent and Trademark Office, including filing notices of opposition and appeal and drafting the corresponding grounds and arguments.
“One of the best patent firms in Europe… If you want to be sure that you have instructed the best experts possible, then ZBM is the first choice” www.IAM-media.com
• Patent litigation – ZBM’s patent attorneys frequently act as technical experts in Spanish litigation cases. • Innovation and technology – The BConnect unit of ZBM provides services in technology transfer (patent commercialisation), licensees search, support in ongoing licensing negotiations, contract draft (consortium agreements, confidentiality, material transfer agreement, licensing), support and collaboration in R&D projects (IP strategy, commercial feasibility, consortium/ partnership coordination, H2020...), technology scouting, etc. In addition to patents, ZBM provides the full range of services for other IP rights, including trademarks (particularly Spanish, EU and Latin American trademarks), design protection and domain names. Other services include organising inhouse training for companies and research groups, drafting IP agreements and handling negotiations for both individual cases and full portfolios.
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Main address Rambla de Catalunya 123 Barcelona 08008 Spain T +34 933 426 472 F +34 933 427 970 E zbm@zbm-patents.eu Professional contacts Anna Barlocci Founding partner E abarlocci@zbm-patents.eu Bernabé Zea Founding partner E bzea@zbm-patents.eu Carles Comes Partner E ccomes@zbm-patents.eu Other offices Copenhagen, Madrid
IAM Patent 1000 1101
Zimmermann & Partner Patentanwälte mbB www.zimpat.com
Zimmermann & Partner Patentanwälte mbB is a German IP firm with offices in Munich, Berlin and Bamberg. Zimmermann & Partner has grown steadily since it was founded in 1999; it currently has 30 qualified German and European patent attorneys and an overall staff of approximately 90 people. Zimmermann & Partner provides the complete range of IP law-related services, with a particular focus on patent litigation and prosecution. Litigation Zimmermann & Partner has successfully handled numerous high-profile patent litigation cases in the fields of telecoms, semiconductor technology, liquid-crystal display technology, and medical and consumer products. The firm’s reputable patent attorneys are responsible for representing Samsung in numerous German proceedings, most visibly in international disputes in the areas of telecoms and electrical engineering. For medical product manufacturer Medtronic, the firm’s patent attorneys are continually involved in litigation relating to stents, heart valves and catheter technology. In such cases, they work closely with several of Germany’s top law firms. Their technical expertise is requested by global players not only for German cases, but also in the context of crossborder litigation and in foreign jurisdictions. Zimmermann & Partner has represented clients in nullity proceedings, challenging patent validity before the first and second-instance nullity courts, including the Federal Patent Court in Munich and the Federal Court of Justice in Karlsruhe. Special care is taken to properly balance arguments regarding infringement and validity before the courts.
“Dynamic patent prosecution group… Collaborative working approach which sees it pool resources to reach the best solution” 1102 IAM Patent 1000
Prosecution As a result of Zimmermann & Partner’s extensive litigation experience, the firm develops patent portfolios and devises patent prosecution strategies for both international players and reputed national companies. It assists clients from the outset in R&D, the development of IP strategies, the drafting of patent applications, the prosecution of applications before the patent offices through to grant, and the defence of patents in the event that validity is challenged. Opposition Zimmermann & Partner has expertise experience in the preparation and handling of opposition cases before the EPO, the German Patent Office and the German Patent Court, often doing so with future litigation in mind. The firm’s attorneys are involved in a high number of oppositions and take pride in their high success rate, which stands well above the average results as seen in official statistics. The firm is often contracted by other European patent law firms to assist in difficult cases and assume the lead in oral proceedings before the EPO Opposition Divisions and Boards of Appeal, and the Federal Patent Court. Engagement as court experts Zimmermann & Partner’s partners are regularly engaged as court experts by various first and secondinstance infringement courts in Germany. This is an obvious sign of their expertise and the high regard with which Zimmermann & Partner is held among the judges at the German infringement courts. Analysis, due diligence and valuation Zimmermann & Partner handles numerous other types of client consultation, including due diligence, infringement and validity analysis, work-around strategies, drafting and analysis of agreements and German Employee Inventor Law consultations. In addition, one of its partners has a PhD in patent valuation, making Zimmermann & Partner a frequent competent partner to investors, banks and liquidators, assisting with the valuation of patent and trademark portfolios over many years. Administration support Zimmermann & Partner takes pride in its administrative exchange with clients being done
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in a smooth, efficient and cost-effective manner. Thanks to the firm’s expertise and renowned customer service, large US corporations employ its services as their European patent department. Zimmermann & Partner has therefore gathered an abundance of experience with numerous standard external administrative software programs, such as Anaqua, Tymetrix and Serengeti, in order to directly interface with clients’ in-house patent departments. The firm thereby assists with, or in some cases takes complete responsibility for, the internal docketing processes for these corporations. In addition, it provides flexible and complex portfolio reporting services, and generates and develops interfaces with clients’ software.
Main address Josephspitalstrasse 15 Munich 80331 Germany T +49 89 23269 0 F +49 89 23269 232 E mail@zimpat.com Professional contacts Benedikt Neuburger Partner E neuburger@zimpat.com Frank Steinbach Partner E steinbach@zimpat.com Gerd Zimmermann Partner E zimmermann@zimpat.com Other offices Bamberg, Berlin
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IAM Patent 1000 1103
1104 IAM Patent 1000
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Central and Latin America
Argentina
1106
Colombia
1155
Brazil
1113
Mexico
1161
Chile
1148
Peru
1178
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IAM Patent 1000 1105
Argentina
Practitioners report that, despite the pandemic, patent activity in Argentina remains steady, with an increase in pharmaceutical and medical device filings compensating for shortfalls in other areas. One ongoing issue of note concerns the Knowledge Economy Law, enacted in 2019, which provides various tax incentives to companies engaged in the knowledge economy. At the start of 2020, this new regime was put on hold by the implementing authority, the Ministry of Production, without explanation; though later in the year, an amendment bill was published which capped the benefits that large entities can receive compared to smaller companies. Argentina’s non-PCT member status is another important topic of discussion and something that international innovators and their legal counsel should be aware of.
Berken IP
An “efficient, dynamic, collaborative and proactive firm focused on fulfilling clients’ objectives”, Berken IP never fails to impress. The patent, technology and business boutique has a particular affinity for complex life sciences work, fielding an integrated team of technically trained patent attorneys and lawyers that provides major pharmaceutical companies, universities, research institutions and entrepreneurs with sophisticated, commercially attuned patent prosecution, analytics and licensing services. There are options aplenty for those seeking sage counsel. A beacon of light for pharmaceutical players with business in Argentina and Latin America more broadly, Pedro Berkenwald brings decades of experience to bear as a problem solver and deal negotiator. Managing partner Alicia Alvarez Berkenwald prosecutes with exactitude and is a source of insightful opinions on wide-ranging issues, including patentability and infringement. A top transactions specialist, Federico Ulled “digs deep for clients and has deep technical and scientific knowledge, alongside a clear understanding of business”. He displays an aptitude for cross-border work and recently assisted an innovative company in connection with the negotiation of key agreements in Argentina, the United States, India and China. Debuting in the IAM Patent 1000 this year, Emilio Berkenwald has “deep knowledge of local and international laws, and is a dedicated practitioner who provides creative solutions”. A future leader of the practice, he specialises in prosecution and patent intelligence in the chemistry and materials science areas.
ClarkeModet
ClarkeModet has maintained a presence in Buenos Aires and Cordoba for decades, and understands the local patent and business landscape keenly; the international powerhouse also knows how to navigate complex matters across borders, making it a compelling choice for those with both domestic
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and foreign patent needs. The astute deployment of technology to accelerate internal processes, drive efficiency and sustain quality enables it to protect patrons’ inventions quickly and effectively. Recent developments for the group in Argentina include the recruitment of Marcos Santivañez Vieyra, who joined in March 2020 to serve as technical and legal services director. The highly trained former Bruchou practitioner has broad horizons and delivers percipient advice on prosecution, IP contracts, litigation and more. See p954 for firm profile
FRTB - Ferrer Reyes, Tellechea & Bouché
FRTB marries exceptional professionalism and speed with an encyclopaedic understanding of patent and IP law in Argentina: “It makes complex jobs simple and offers the ideal level of support with respect to rights protection and enforcement.” Praise such as this lands the firm a spot in the IAM Patent 1000 for the first time this year. Equally proficient in prosecution, litigation and transactions, key contact Santiago Ferrer Reyes covers all bases for his followers, including a concentration of energy companies. Julia Tellechea is the first choice for prosecution, portfolio management and transactional due diligence in the pharmaceutical, chemical and agrochemical domains. She is hands-on throughout all phases of the patent protection process and excels at building longstanding relationships.
G Breuer
G Breuer is one of Argentina’s most storied IP players – and certainly one of its best. It has practised at the elite level for 150 years, during which it has always kept pace with its innovative clients. The professionals here are extremely well educated and trained, and work collaboratively to solve difficult IP conundrums and deliver made-to-measure services. “An IP legend in Argentina”, Jorge Otamendi is the ensemble’s pre-eminent practitioner and a thought and practice leader looked up to by all. The top engineer on deck is electronics maven Martín Guerrico.
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Argentina Firms: litigation and transactions
Firms: prosecution
Marval O’Farrell and Mairal
Marval O’Farrell and Mairal
G Breuer
Berken IP
Hausheer Belgrano & Fernández
G Breuer
Mitrani, Caballero & Ruiz Moreno
Noetinger & Armando
OJAM BULLRICH FLANZBAUM
Richelet & Richelet
Palacio & Asociados
ClarkeModet
Richelet & Richelet
FRTB - Ferrer Reyes, Tellechea & Bouché
H&A
An international outfit with 150-plus IP professionals all pulling in the same direction for technology enterprises, H&A is a prime destination for companies for which a consistent approach towards IP strategy across multiple territories is a priority. With boots on the ground in Argentina, Brazil, Colombia and Mexico, it has cultivated rich experience across Latin America – a market which presents unique challenges. Frequent collaborators Ariel Juan Ibanez and Alejandro María Grande take charge in Buenos Aires. Working within the confines of the national system, they have a gift for satisfying the expectations of foreign companies keen to apply the standards and approaches to which they are accustomed elsewhere, such as in Europe. Supremely well organised and great on the detail and the big picture, they handle broad patent families in diverse markets with skill, while expediting the prosecution process.
Hausheer Belgrano & Fernández
A reputable firm with a long history, Hausheer Belgrano & Fernández puts a seasoned team onto the Argentinian IP playing field. The professionals here have an astonishing hit rate in protecting clients’ most valuable brands and patents, and collectively provide a well-rounded service that inspires confidence. The key touchpoint is Graciela Claudia Pérez de Inzaurraga, a decorated trademark and patent professional who understands the needs of those she represents and how to meet them in a timely and efficient fashion.
Marval O’Farrell and Mairal
“The biggest and by far the best IP firm in the country”, Marval is not just a domestic leader but a dominant force throughout Latin America. It offers a
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See p954
H&A Hausheer Belgrano & Fernández Mitrani, Caballero & Ruiz Moreno Moeller IP Advisors Obligado & Cia OJAM BULLRICH FLANZBAUM Palacio & Asociados
comprehensive suite of services and leverages a wellspecced team of chemical, biochemical, electrical and mechanical engineers to assist all comers with patent procurement matters, infringement issues and much more. Its constellation of patent stars comprises Martín Bensadon, Cristian Bittel, Ignacio Sánchez Echagüe and Iván Alfredo Poli, each of whom brings something special to the table. Bensadon is distinguished by his patent specialisation and combination of academic rigour and practical experience; armed with a molecular biology PhD, Bittel has outstanding life sciences credentials; Sánchez Echagüe has cultivated strong international patent law know-how; and Poli is an accomplished litigator.
Mitrani, Caballero & Ruiz Moreno
According to sources, Mitrani’s highly qualified patent experts work harmoniously as a team and communicate smoothly and effectively with clients. Nothing is off limits in patent practice for the firm, which handles the full array of prosecution, licensing and litigation assignments with equal dexterity. On
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Argentina the non-contentious side, the ensemble acquits itself with distinction in coordinating filings in multiple jurisdictions and managing global portfolios; while in disputes, the group excels at resolving matters without recourse to costly litigation, utilising refined negotiation skills which also lend themselves well to success in court proceedings should they become necessary. Lead partner Ignacio Bérèterbide garners stellar reviews: “He has a sophisticated understanding of patent prosecution in Latin America and handles things in an extremely well-organised and efficient manner. He understands intellectual property in its commercial setting, which enhances his strategic advice.” He clicks with inventors, business executives and patent office examiners, and draws on his deep knowledge and sparkling interpersonal skills to get things done. He is joined in the IAM Patent 1000 this year by María Elena Palumbo, a senior engineer and former examiner who knows how to prosecute applications through to grant with the minimum of fuss.
Moeller IP Advisors
Moeller IP Advisors fits the bill perfectly for companies seeking the efficiency of a single point of contact for patent protection across the Americas. The firm – which is present in Argentina, Brazil, Uruguay and Germany – is appreciated for its technical know-how, consistent quality, billing transparency and security standards. Taking the reins of the patent department, José Santacroce sets the tone from the top. His authority stems from vast experience, much of it accumulated during a lengthy career at the European Patent Office. Thanks to his superior management skills, the firm capitalises superbly on the talents of its technical, legal and support staff. Industrial chemistry PhD and former National Institute of Intellectual Property (INPI) examiner Vanesa Martinez serves as operational coordinator for the group and supervises a substantial docket of chemical patent filings, alongside work relating to mechanical and electrical innovations. In charge of the legal patent practice, Mariano Municoy provides robust representation in infringement litigation: he astutely marshals all evidence needed to present a winning case and has the advocacy skills to carry the day. He is also an adroit negotiator of licensing and other IP and technology agreements, and a savvy counsellor on regulatory issues.
Noetinger & Armando
Individuals Alicia Alvarez Berkenwald Berken IP Martín Bensadon Marval O’Farrell Mairal Cristian Bittel Marval O’Farrell Mairal Martín Guerrico G Breuer Fernando Noetinger Noetinger & Armando Jorge Otamendi G Breuer Iván Alfredo Poli Marval O’Farrell Mairal Ignacio Sánchez Echagüe Marval O’Farrell Mairal Ignacio Bérèterbide Mitrani, Caballero & Ruiz Moreno Pedro S Berkenwald Berken IP Mariana Bullrich Noetinger & Armando Martín Damián Ré Noetinger & Armando Santiago Ferrer Reyes FRTB - Ferrer Reyes, Tellechea & Bouché Juan Carlos Ojam OJAM BULLRICH FLANZBAUM Ariel Juan Ibanez H&A María del Rosario Mauro OJAM BULLRICH FLANZBAUM Diego F Palacio Palacio & Asociados
Noetinger & Armando elicits warm plaudits: “It is well organised, incredibly supportive and a safe pair
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Argentina Mingo Palacio Palacio & Asociados
Marcelo García Sellart Gordó Llobell & Asociados
Graciela Claudia Pérez de Inzaurraga Hausheer Belgrano & Fernández
Alejandro María Grande H&A
Gastón Richelet Richelet & Richelet
Celia Lerman Lerman & Szlak
José Santacroce Moeller IP Advisors
Vanesa Martinez Moeller IP Advisors
Claudia Serritelli Estudio Chaloupka
Mariano Municoy Moeller IP Advisors
Julia Tellechea FRTB - Ferrer Reyes, Tellechea & Bouché
María Elena Palumbo Mitrani, Caballero & Ruiz Moreno
Federico Ulled Berken IP
John Ryan-Lussich Ryan-Lussich & Asociados
Emilio Berkenwald Berken IP
Marcos M Santivañez Vieyra ClarkeModet
of hands for complex cases. Its professionals are masters of their craft, have deep market knowledge and deliver accurate work promptly.” Patent department head Mariana Bullrich and patent drafting leader Martín Ré also score high marks. “Mariana is ultra-responsive and keenly monitors the details and progress of each filing,” reports one satisfied client. “Her subject-matter understanding is complete and entering into technical discussions with her always leads to wonderful ideas and outcomes”. Peers concur: “Her ability to speak about a range of subjects authoritatively is second to none. She is a profound thinker who knows what is happening in the world of IP and has a broad perspective.” Colleague Re “is pragmatic and gives the clearest advice”. Under the watchful eye of these two life sciences sages, the firm files more than 300 patents annually and tends to the management and care of over 3,000 patents in Argentina and regionally, demonstrating a natural facility for problem solving in the process. Partnering with innovators at a strategic level, the ensemble has a much wider focus than the immediate administrative and legal needs of its clients. Helpful in this regard is the big-picture approach of Fernando Noetinger, the firm’s top patent litigator and licensing expert.
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See p1111
See p1112
Obligado & Cia
Obligado & Cia’s strength lies not only in its rich history, but also in its commercially attuned IP service, which has adapted and evolved in lockstep with the changing innovation landscape in Argentina. With former in-house professionals on deck, alongside exINPI examiners and seasoned litigators, it is perfectly positioned to answer any patent-related question going. For precision prosecution, the person to call is Fabián Loyato, a former head examiner at INPI with international training.
OJAM BULLRICH FLANZBAUM
Ojam Bullrich Flanzbaum was launched in October 2020 by a close-knit team of professionals, each of whom has abundant experience at the cutting edge of IP practice in Argentina. Eschewing traditional models and approaches, the boutique is shaking things up – for example, through its special lab designed to support entrepreneurs and start-ups as they protect and develop their intangible assets and forge connections with incubators, accelerators and investment funds. The aim here is to disrupt the market for legal services and positively impact on Argentina’s innovation environment. One of the chief architects of the firm, Juan Carlos Ojam has cultivated a rare strategic appreciation of intellectual property by engaging in all facets of the practice at a global level. He is an essential guide for companies
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Argentina seeking to achieve operational IP excellence. Also central to the patent practice is senior associate Rosario María del Mauro, who possesses finely honed domestic and cross-border prosecution skills.
Palacio & Asociados
Palacio’s engineers and lawyers manage the entire patent registration process with alacrity and finesse; not just adept at prosecution, they demonstrate agility on contentious and transactional assignments, too, making the firm a persuasive one-stop shop. No matter the nature of the brief, clients enjoy close partner-level attention, which ensures that work is completed to the highest standard and full advantage taken of strategic opportunities. At the forefront of the practice are Diego Palacio and Mingo Palacio, who are roundly praised. “Diego is fast, efficient, dynamic and engaged. He is a high-functioning but reasonably priced partner, and is great on complex matters needing extra muscle. He is easy to work with and has a friendly, open-minded personality, which makes you feel comfortable.” Palacio understands the commercial potential of intellectual property and is committed to realising the business objectives of clients: “He is an extremely well-qualified individual with respect to Latin American IP issues.”
Richelet & Richelet
Ascending to the silver tier, Richelet & Richelet is well established as a high-calibre IP provider. Its service is characterised by rapid response rates, in-depth analyses and creative counsel, and is in hot demand among top pharmaceutical, biotechnology and other innovators. The experts here invest time in learning about the industries in which their clients operate and deliver their advice in plain language, so that it is easy to understand and implement. Helmsman
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Gastón Richelet is very quick to answer queries from the many European, North American and Asian companies he serves. “He can handle challenging situations involving short deadlines and changing requests,” enthuses one client. “Gastón was available and responsive to inquiries throughout the pandemic, kept us updated regarding the situation and provided solutions that maintained priority rights.”
Other recommended experts
Claudia Serritelli heads the legal and patent departments at Estudio Chaloupka. Extremely well educated, with two IP-focused postgraduate degrees, she draws on a wealth of patent and trademark knowledge to advise clients on all aspects of their intangible asset portfolios. She is currently representing Jeyes Group in litigation against INPI concerning the interpretation of Article 5 of Argentina’s Patent Law – a matter of considerable importance, in which the outcome may change INPI’s examination criteria to become more favourable to rights holders. A recent arrival at Gordó Llobell & Asociados, Marcelo García Sellart is a respected IP professor, litigator and all-round IP counsellor. The managing partner of Ryan-Lussich & Asociados, John Ryan-Lussich is a versatile lawyer with a flair for tackling IP infringement issues; stopping trademark counterfeiting activities while working with Customs is his metier, but he knows a thing or two about pharmaceutical patent law too. Debuting in the rankings this year, Celia Lerman of Lerman & Szlak is endorsed for her “comprehensive IP knowledge and absolute dedication”. Cognisant of clients’ business, budget and technology needs, she designs smart strategic roadmaps: “It is a relief to have her on side when the going gets tough.”
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Lerman, Celia
Partner – Lerman & Szlak celia@lermanszlak.com | lermanszlak.com
Celia Lerman graduated in law from Torcuato Di Tella University (UTDT, valedictorian) and earned her LLM in intellectual property at the Austral University (honours), her master in the science of law from Stanford University and her bachelor’s degree in computer science from ORT. A registered IP agent, Ms Lerman specialises in designing and executing transnational IP protection strategies; leading complex patent prosecution and litigation; drafting and revising contracts, licences and confidentiality agreements; and conducting domain name disputes in Argentina and before WIPO. Ms Lerman has excelled in research and legal consulting in intellectual property internationally, as both a WIPO/WTO selected professor and as a visiting IP scholar at Columbia University. She received a Fulbright scholarship to pursue her studies at Stanford, where she wrote her empirical thesis on patent strategies of technology start-ups (obtained with distinction), supervised by Mark Lemley. She is currently a lecturer at UTDT, where she teaches new technology law and directs the Diploma in Law, Technology and Business in executive legal education. Ms Lerman is a member of the California Bar Association and the Buenos Aires Bar Association. She is also a member of the Bulletin Committee at the International Trademark Association. She is also a founding member of the Latin American Privacy Association and a member of the International Privacy Professionals Association. She leads the patent department at Lerman Szlak, combining academic leadership with specialised professional practice.
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Lerman & Szlak José Hernández 2458 6ºB Buenos Aires 1426 Argentina T +54 11 4786 4273 Professional associations • Buenos Aires City Bar Association • California Bar Association
IAM Patent 1000 1111
Santiváñez Vieyra, Marcos M
Legal and Technical Services Manager – ClarkeModet msantivanez@clarkemodet.com.ar | www.clarkemodet.com
Marcos M Santiváñez Vieyra is manager of the technical and legal services department of ClarkeModet Argentina and has more than 15 years of experience in the IP field gained mainly in top-tier law firms assisting clients in the private and public sectors. Mr Santiváñez Vieyra has proven experience in delivering highquality legal services covering corporate and contractual counselling and litigation, including the provision of legal opinions, expert reports, litigation and contractual matters related to trademarks and trade names; patents; models and industrial designs; transfer of technology; copyright; the publishing and literary industry; the production and licensing of multimedia contents (including films and TV); entertainment and sports; software and new technologies; cybersecurity and robotics; privacy and data protection; e-commerce, Big Data and Cloud-based services; domain names and the Internet; electronic and digital signature; know-how, trade and industrial secrets; R&D; consumer protection and commercial loyalty; brand reputation; advertising; right to honour and self-image; and auditing, compliance and due diligence processes. Before joining ClarkeModet, he served at Argentina’s Ministry of Economy and at some of the country’s major law firms – Llerena & Asociados; G Breuer; Zang, Bergel & Viñes – and, more recently, as the leader of the IP, privacy and new technologies law department at Bruchou, Fernández Madero & Lombardi, where he worked for 12 years. Mr Santiváñez Vieyra obtained a law degree from the School of Law of the Pontifical Catholic University of Argentina Santa María de los Buenos Aires. He also holds a master’s from the same university, specialising in high-tech law, and took part in the International Programme of Hispanic, Latin American and European Studies at the Centre for International Studies of the Ortega y Gasset Foundation (Toledo, Spain). He actively participates in various professional associations and committees in the IP and technology law fields, and frequently speaks at specialised conferences on these matters.
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ClarkeModet Lavalle 190, 3rd Floor Buenos Aires 1047 Argentina T +54 11 4312 0594 See firm profile p954 Professional associations • AAAPI • Buenos Aires Bar Association • INTA
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Brazil
In 2020, the Patent Backlog Combat Plan was launched as the Brazilian Patent and Trademark Office (INPI) makes a concerted effort to chip away at a mountain of pending applications. With the waiting list stretching to some 100,000-plus applications, the average time for processing has risen to 11 years, deterring many innovators from filing in Brazil. The plan aims to shift 80% of the backlog to reduce the timeframe for a decision to a more respectable two years. As a result of this official initiative, most patent prosecutors have been spending considerable amounts of time responding to office actions. As well as incentivising foreign rights holders to file in Brazil, the uptick in INPI activity is expected to lead to an increase in patent litigation. Later in 2020, the government published its comprehensive national strategy for IP policy, heralding a 10-year reform plan which includes a comprehensive review of pharmaceutical and life science patent regulations. The government initiated a consultation on the proposed reforms with stakeholders and the general public, in a move which has been welcomed by patent holders and patent practitioners alike.
Bhering Advogados
With offices in Rio de Janeiro, Sao Paulo and Curitiba, Bhering Advogados has Brazil’s major commercial hubs covered, placing it within easy reach of the nation’s innovators. Meanwhile, a German desk, an in-house translation unit and an extensive network of contacts worldwide give a pleasingly international flavour to its practice, which is reflected in its client roster: multinationals from the United States, Europe and Asia all look to it to shore up their positions in Brazil. It provides an A-to-Z patent offering, with the line-up of Philippe Bhering, Alice Rayol Ramos Sandes and Pedro Bhering specialising in litigation, prosecution and transactions respectively. Extremely effective in handling infringement proceedings and nullity actions, Bhering is hailed as “a very responsive, professional and collegial practitioner who can resolve conflicts in the bud”. Prosecution ace Sandes captains a multi-disciplinary team of experts and has an affinity for advancements in the life sciences: “When a straightforward approach isn’t the best way to go, she is quick to find new ways to bring clients closer to their objectives.” Founding partner and German desk head Pedro Bhering deftly sews up IP-rich deals and technology transfer agreements.
BMA - Barbosa Müssnich Aragão
A repository of trust for high-flying multinationals, Barbosa Müssnich Aragão is a premier destination for creative, business-oriented portfolio management, patent litigation and transactional briefs. Though it works across the sector spectrum, it shows special strength in the pharmaceutical sphere and is highly regarded by the market for its strategic insight on generic drug manufacturing and the wider regulatory framework. IP practice head Antonella Carminatti and patent and design head Ana Cristina Müller are the brains behind the operation: Carminatti
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has a razor-sharp understanding of the rhythms of the market and pulls all the right levers to get deals done for clients; while Müller sets the bar high for patent prosecution, keeping both short and longterm commercial goals in mind when developing strategies for clients. Working alongside her is Lilian Ghitnick Arcalji, a chemical engineer who secures cast-iron protection for patrons in the chemical, pharmaceutical and consumer goods fields. See p1186 for firm profile
ClarkeModet
Founded in 1879, ClarkeModet is the largest IP group in Spanish and Portuguese-speaking countries, with 34 offices across 10 jurisdictions. Though it makes its debut in the Brazilian rankings this year, it has had a presence in the country since 1965; today, some 100-plus practitioners based in Rio de Janeiro, São Paulo and São José dos Campos provide a precision prosecution service domestically, regionally and beyond. Rafael Freire and Ricardo Boclin are both influential figures on the international patent scene. Freire draws on nearly two decades in the game to produce bespoke patentability analysis and impeccable patent applications in the electronics, telecommunications and mechanics fields. Likewise almost 20 years seasoned, Boclin recently joined the firm as its legal and technical services director, bringing with him deep knowledge of Brazilian patent procedure and broad experience of working with A-list companies. See p954 for firm profile
Daniel Law
As one of Brazil’s top five patent filers, Daniel Law ranks among the elite patent practices in Latin America. Its dynamic, forward-thinking approach is reflected in ongoing investment in state-of-the-art
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Brazil tools such as work flow management systems and data-mining software, resulting in reduced costs and increased efficiency. Setting the tone from the top are Gustavo Sartori, Rana Gosain, Kene Gallois and Diogo dos Santos Netto, who collaborate seamlessly to protect and monitor thousands of patents. Mechanics head Sartori has the mechatronics, electronics and telecommunications sectors on lock, and dispenses tailored counsel on both patents and industrial designs. The firm’s key contact point for Asian clients, senior partner Gosain constructs bulletproof prosecution strategies informed by his 30 years at the patent coalface; biotechnology and pharmaceuticals are fortes. Chemical and life sciences group head Gallois is a pragmatic counsellor who provides invaluable strategic input throughout the entire patent lifecycle; his guidance comes interlaced with insight gained during an academic career working on research projects in the fields of pathology, immunology and pharmacology. Fellow molecular biologist Netto takes care of pre and postgrant proceedings and provides incisive infringement and freedom-to-operate advice. The firm also has a vibrant litigation department, led by Ricardo Dutra Nunes, an “energetic litigator who is wise beyond his years”. “Prompt, yet profound in his guidance, Ricardo thinks outside the box and strategises with a clear perception of the intended objectives in mind.”
Dannemann Siemsen
With offices in three Brazilian state capitals and a mighty team of more than 240 technically proficient lawyers and industrial property agents on deck, the storied Dannemann Siemsen is a towering force on the regional patent landscape. Its gold-rated litigation division is led by Joaquim Eugenio Goulart, Gustavo de Freitas Morais, Cláudio França Loureiro and Eduardo da Gama Camara Junior, each of whom has “a long history of wins” to his name. Goulart “is among the very best litigators, not just in Brazil, but in all of Latin America”: “He has deep knowledge of IP law and procedure in Brazil, which makes his advice balanced and actionable.” Morais has a background in electrical engineering, with advanced degrees from Franklin Pierce Law Center and Massachusetts Institute of Technology lending depth and sophistication to his practice. Polished litigator and mediator Loureiro excels at both extinguishing infringement issues and advising on IP strategy: “Whether it is a legal or technical issue, he responds quickly and comes up with creative solutions for any problem we may be facing,” reports one client. Camara puts his training as a mechanical engineer to good use on a variety of contentious mandates involving complex
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Individuals: litigation Joaquim Eugenio Goulart Dannemann Siemsen José Roberto Gusmão Gusmão & Labrunie Jacques Labrunie Gusmão & Labrunie Gabriel Francisco Leonardos Kasznar Leonardos
See p1138
Otto Licks Licks Attorneys Cláudio França Loureiro Dannemann Siemsen Gustavo de Freitas Morais Dannemann Siemsen Carlos Aboim Licks Attorneys Ana Paula Affonso Brito Montaury Pimenta, Machado & Vieira de Mello
See p1124
Claudio Roberto Barbosa Kasznar Leonardos
See p1128
Philippe Bhering Bhering Advogados Eduardo da Gama Camara Dannemann Siemsen Gabriel Di Blasi Di Blasi, Parente & Associados Alberto Guerra Guerra IP Eduardo Hallak Licks Attorneys José Mauro Machado Pinheiro Neto Advogados Rodrigo Maior Licks Attorneys
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Brazil Nathalia Mazzonetto Müller Mazzonetto
Ricardo Pinho Guerra IP
Luiz Edgard Montaury Pimenta Montaury Pimenta, Machado & Vieira de Mello
Valdir Rocha Veirano Advogados
See p1141
Karina Haidar Müller Müller Mazzonetto Antonio Murta Filho Murta Goyanes Advogados Ricardo Dutra Nunes Daniel Law scientific concepts; he recently prevailed for Volvo in a hard-fought infringement battle. Frank Fischer, Ana Claudia Mamede Carneiro and Ivan Ahlert are the frontrunners on the prosecution side. “Very knowledgeable and experienced patent attorney” Fischer has “a firm grasp of not just the Brazilian IP law, but also European IP law and practice, despite this not being his home jurisdiction”. Chemistry, pharmacy and biotechnology are the disciplines of choice of Carneiro, an exceptionally skilled director of patent strategy who handles all briefs with a sure touch. Ahlert can quickly parse the intricacies of mechanical patents and continually expands his knowledge base through active participation in IP conferences both at home and abroad. Joining them on the prosecution table this year is Bruno Lopes Holfinger, whose client list reads like a who’s who of the telecommunications industry; he cuts through the thickets of highly technical issues to beat a path to protection. Transactional briefs land on the desk of Cândida Ribeiro Caffé, who opens doors for clients through his smart negotiation of technology transfer and licensing agreements.
David do Nascimento Advogados Associados
In the five decades since its founding, David do Nascimento Advogados Associados has distinguished itself on the market for its holistic patent service and professional yet personal approach. Home to both patent attorneys and attorneys at law, it executes with poise on both sides of the contentious/ non-contentious divide; and its 90-strong team is committed to building enduring relationships with clients. The embodiment of this is helmsman Marcello do Nascimento, who partners closely with patrons each step of the way and provides swift and detailed responses to all queries – from patent
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Marcela Trigo de Souza Trench Rossi Watanabe João Vieira da Cunha Gusmão & Labrunie
prosecution to validity, infringement and clearance analysis, “he brings a practical, ‘in the trenches’ perspective to the table”. With a thick address book of contacts throughout Europe and Asia, he is always up to speed on the latest developments in the world’s major markets.
Demarest Advogados
Hailed by competitors as “one of the best full-service law firms in Brazil”, Demarest Advogados enjoys a burnished reputation for robust patent protection, shrewd portfolio management, redoubtable performances in high-stakes litigation and smooth negotiation of licensing agreements. From twin offices in Sao Paulo and Rio de Janeiro, it provides a reassuringly comprehensive service to major players in fields from high technology to pharmaceuticals, with more than 50% of its instructions coming directly from clients. IP head Tatiana Campello has a flair for the finer details of both expansive patent portfolios and dense technology transfer and licensing agreements. She frequently links up with the business-friendly and versatile Julia Davet Pazos, an IP all-rounder with a thriving digital and data protection practice, and one of the country’s leading authorities on blockchain issues.
Di Blasi, Parente & Associados
Di Blasi, Parente & Associados is a trusted ally across the patent lifecycle, tirelessly advancing and defending the interests of patrons at the patent office, in court and at the deal table. Its legal prowess is matched by unparalleled technical know-how; on the latter front, its stellar team of in-house engineers recently received a boost through the addition of five new practitioners with specialisms in mechanics, telecommunications, chemistry and biology. Managing the group is 30-year veteran Gabriel Di Blasi, whose broad-based practice encompasses prosecution, litigation and transactional mandates; recent highlights include a crucial victory for oil and
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Brazil gas player Belov Engenharia in an infringement suit. Overcoming rejections is also a matter of routine for Di Blasi and his team, who leave no stone unturned to get patents through to grant.
Gaiarsa, Ferreira & Meyer Propriedade Intelectual
The wall-to-wall patent offering at Gaiarsa, Ferreira & Meyer makes the firm a persuasive one-stop shop for everything from burgeoning start-ups and prestigious academic institutions to multinationals in virtually every sector. Its multi-talented, multidisciplinary legal and technical experts work hand in glove to cover all bases, making maximum impact with minimum fuss. The driving force behind the practice is namesake Katia Jane Ferreira, whose watertight patent protection and defence strategies are informed by a wealth of technical insight: “Her grasp of chemistry is extraordinary, making her advice extremely clear and accurate.” Joining her in the IAM Patent 1000 this year are Paola Mattioli and Maria Beatriz Correa da Silva Meyer Gaiarsa, who both offer a highly personalised service and keep a close eye on the long-term consequences of each strategic decision. A chemical engineer by training, Mattioli is adept at handling chemical, pharmaceutical and cosmetics patents; while Gaiarsa heads up the mechanical and industrial design departments and has spent two decades turning out immaculate patent applications, especially in the mechanics, construction and transport fields.
Guerra IP
“Guerra IP should be held in the highest regard for its exceptional patent work. Its highly skilled team provides fast and comprehensive responses, and the practitioners are very knowledgeable – especially in pharmaceuticals.” Playing host to both lawyers and patent attorneys, the nimble boutique takes the time to understand clients’ businesses and industries before laying out a winning game plan. It operates out of offices in Porto Alegre and Rio de Janeiro, with the latter home to Ricardo Pinho and Flavio Leonardos The former effortlessly navigates the labyrinths of IP regulations and licensing negotiations, while also handling a range of nullity actions. Patents head and transactional guru Leonardos is a founder of the Brazilian Association of IT Law and has made the high-technology sector his own; as a result, he is a highly sought broker of technology transfer agreements. Heading up the Porto Alegre branch, Alberto Guerra has “tremendous business sense, which is clear both in the drafting and filing of patents and in his day-to-day advice to clients”.
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Individuals: prosecution Highly recommended Ivan B Ahlert Dannemann Siemsen Gustavo José Ferreira Barbosa Kasznar Leonardos
See p1126
Gabriel Di Blasi Di Blasi, Parente & Associados Frank Fischer Dannemann Siemsen Rana Gosain Daniel Law Tatiana Almeida Silveira Kasznar Leonardos
See p1145
João Luis D’Orey Facco Vianna Kasznar Leonardos
See p1147
Recommended Magnus Aspeby Montaury Pimenta, Machado & Vieira de Mello
See p1125
Ricardo Boclin ClarkeModet Fernando Braune Abrantes Bellingall & Otero IP Saulo Calazan Carioca IP Vinícius Casciano Murta Goyanes Advogados Ana-Paula Celidonio Lobo de Rizzo Advogados
See p1130
Leonardo Cordeiro Gruenbaum, Possinhas & Teixeira Maria Beatriz Correa da Silva Meyer Gaiarsa Gaiarsa, Ferreira & Meyer Propriedade Intelectual
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Brazil Barbara Cattete Dias Soerensen Garcia Advogados Associados
Juliano Murakami Gusmão & Labrunie
Marcello do Nascimento David do Nascimento Advogados Associados
Carolina Nakata Gusmão & Labrunie
Luiza Duarte Pereira Murta Goyanes Advogados
Diogo dos Santos Netto Daniel Law
Katia Jane Ferreira Gaiarsa, Ferreira & Meyer Propriedade Intelectual
Julia Davet Pazos Demarest Advogados
Rafael Freire ClarkeModet
Alice Rayol Ramos Sandes Bhering Advogados
See p1131
Alexandre Fukuda Yamashita Müller Mazzonetto
Eduardo Ribeiro Squeira Castro
Kene Gallois Daniel Law
Caio Rodrigues da Silva magellan IP
See p1143
Gabriela Salerno Montaury Pimenta, Machado & Vieira de Mello
See p1144
Lilian Ghitnick Arcalji BMA - Barbosa Müssnich Aragão
See p1132
Bruno Lopes Holfinger Dannemann Siemsen
Gustavo Sartori Daniel Law
Ana Paula Jardim Luiz Leonardos & Advogados
See p1133
Priscila Kashiwabara Kasznar Leonardos
Priscila de Barros Thereza Yamashita Gusmão & Labrunie
See p1134
Mariana Valverde Moreau Valverde
Ari Magalhaes MNIP Leonor Magalhães Galvão Magellan IP
André Venturini Venturini IP See p1139
Ana Claudia Mamede Carneiro Dannemann Siemsen Paola Mattioli Gaiarsa, Ferreira & Meyer Propriedade Intelectual Rafaela Mattos H&A Pierre Moreau Moreau Valverde Ana Cristina Müller BMA - Barbosa Müssnich Aragão
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See p1142
See p1146
Gusmão & Labrunie
A mainstay on the Brazilian market for the past 30 years, top-tier firm Gusmão & Labrunie is a discerning choice for high-stakes disputes, highvalue transactions and high-quality filings, thanks to its distinguished line-up of lawyers and patent specialists. In the last year it has handled patent applications for household appliance leader Electrolux; represented Brazilian pharmaceutical Libbs in a nullity action against competitor Celgene; and acted in a major patent dispute between two of the world’s biggest consumer goods companies. The triumvirate leading the litigation division comprises José Roberto Gusmão, João Vieira da Cunha and Jacques Labrunie. Firm co-founder Gusmão views intangible assets through a business lens and is
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Brazil deeply involved in training the next generation of IP lawyers at Brazilian and international academic institutes. Da Cunha is resolutely results-oriented in tackling contentious briefs, seeking to minimise conflicts in a bid to open up a passage to commercial growth. He recently teamed up with Labrunie to defend steel and mining titan ArcelorMittal in a spat with competitor Usiminas. About Labrunie, one patron attests: “He always has a great assessment of the situation, taking a low-risk, high-reward approach. Clients adore him, as he always puts their interests before anything else.” Meanwhile, the firm’s deep bench on the prosecution side has all IP-heavy industries down cold. Making their debut in the IAM Patent 1000 this year are Carolina Nakata and Juliano Murakami, longstanding experts in molecular biology and electrical engineering respectively. Prosecution head Nakata guides pharmaceutical companies and other life sciences players surely through the Patent Cooperation Treaty (PCT) application process and dispenses sage strategic advice; while Murakami’s incisive freedomto-operate, infringement and validity opinions keep patrons well informed and ensure they can exploit their assets to the fullest while avoiding future legal snags. The pair join Priscila de Barros Thereza Yamashita, who holds academic credentials in both biology and law and gets cutting-edge biotechnology patents on the register without demur.
Kasznar Leonardos
With a century-long legacy of protecting and enforcing IP rights, Kasznar Leonardos is a go-to for patent prosecution, litigation and transactions. Combining regulatory and IP know-how to superb effect, the side performs exceptionally well in the courtroom: star quarterbacks Gabriel Francisco Leonardos and Claudio Roberto Barbosa neatly side-step potential pitfalls and present cogent, coherent arguments to carry the day. Leonardos’ additional facility for getting IP-rich deals inked feeds into his contentious practice; while Barbosa is “ingenious in coming up with strategies to solve legal and technical puzzles”: “Even in the most trying situations, he never loses his cool and gives logical and balanced advice.” Further transactional strength comes from former president of the Brazilian Association of Intellectual Property (ABPI) and senior stateswoman Elisabeth Kasznar Fekete, who marries IP knowledge with a refined commercial sensibility. She speaks seven languages and understands the numbers game better than anyone, thanks to a career spent matchmaking between high-flying patent owners. The prosecution wing is in the safe hands of João Luis D’Orey Facco
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Vianna, Gustavo José Ferreira Barbosa, Tatiana Almeida Silveira and Priscila Kashiwabara. Medical doctor Vianna is a fan favourite in the life science and biotechnology sectors: “His academic background, and his ability to listen and learn who the client is and what it wants, make his input worth its weight in gold.” Barbosa heads the electronics, computer sciences, aeronautics and industrial designs division, and is a precision prosecutor with an enviable track record of reversing rejections before INPI. Silveira’s specialises is chemistry; her combination of technical nous and regulatory know-how is a boon for foreign clients entering the Brazilian market. Making her first appearance in the IAM Patent 1000, Kashiwabara is a “fantastic strategist and provides exactly the sort of advice in-house counsels are looking for: quick, direct to the point and practicable”. See p1188 for firm profile
Licks Attorneys
With a 75% success rate in patent litigation, Licks Attorneys is a true contentious powerhouse: “They are excellent thought partners when discussing complex issues and devising creative ways to achieve business objectives. Their extraordinary commercial awareness and mastery of regulatory approval processes are invaluable.” Its three Brazilian offices are supported by a fourth in Tokyo and it stands as the only South American law firm member of the International Patent Evaluation Consortium, giving it valuable international insight. The firm recently secured injunctive relief on behalf of both Genentech and Novartis, thanks to the efforts of co-founders Otto Licks and Rodrigo Maior. The venerable Licks is an “outstanding litigator” who has masterminded many precedential wins in the life sciences and telecommunications spaces. Making his debut in the IAM Patent 1000 this year, Maior has an affinity for tricky cases involving issues of non-obviousness; well versed in fields from IT and telecommunications to metallurgy, he is also increasingly sought out by pharmaceutical companies. Fellow founding partners Eduardo Hallak and Carlos Aboim are likewise on speed dial for life sciences players. Gilead called in Hallak when its Remdesivir drug needed extra protection against infringement after shooting to prominence as a treatment for covid-19. He is “a creative strategist who is always educating himself and adding more weapons to his intellectual arsenal”. “No matter what the technology, he goes deep to identify the main gist of each issue and shows amazing ability in finding solutions.” Aboim has extensive first-chair trial and appellate experience in the pharmaceutical field and fights tenaciously for
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Brazil clients: “He knows the Brazilian judicial system very well and has a great appreciation for which avenues to select to get the desired outcome.” See p1190 for firm profile
Luiz Leonardos & Advogados
Growth is a central narrative at Luiz Leonardos & Advogados, which recently opened a new office in the heart of Sao Paulo to complement its home base in Rio de Janeiro. The cradle-to-grave patent offering it has cultivated is designed to meet and exceed the needs of innovators of all stripes. The firm has an impressive pedigree: namesake Luiz Leonardos is a revered thought leader who qualified as an industrial property agent in 1955 and has since done much to shape the national IP landscape, not leas during his time as president of the ABPI; he also served a stint as vice president of the International Association for the Protection of Intellectual Property. A practitioner of equal calibre, Gustavo Starling Leonardos ably dispatches all manner of patent protection, enforcement and transactions briefs. “Gustavo reacts quickly and efficiently to official letters from INPI and is great at coordinating parallel prosecution before the EPO.” Ana Paula Jardim is unerringly astute in managing portfolios and pursuing judicial and administrative prosecution: “She shows exceptional dedication and commitment to achieving commercial goals and gives personal attention to every issue, as if it is the only matter under her purview and we are her only client. Her advice is outstanding – always clear and never mired with jargon.” See p1192 for firm profile
magellan IP
Prep and pros shop magellan IP has been making waves on the Brazilian IP scene thanks to its dynamic approach to filing and portfolio management: “The firm is a breath of fresh air – it can be trusted to provide the best, most concise and forward-thinking advice, all in a timely and client-centric manner.” The life sciences is a stronghold for the young boutique, which has lately been tending to the portfolios of clinical-stage Brazilian biotech company Recepta Biopharma, the Broad Institute (in relation to CRISPR technology) and stem-cell innovator Avita International; however, its innovative approach also resonates with other ground-breaking disruptors, such as Uber Technologies, which recently enlisted it to protect its assets in Brazil. Linking up on the Broad Institute piece are Leonor Magalhães Galvão and Caio Rodrigues da Silva. “The cream of the crop”, Galvão has “a very detailed understanding of IP issues and complete devotion to her clients”. Her legal and
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technical prowess is complemented by fluency in Portuguese, Spanish, English and French, making communication with her international client base a breeze. da Silva acquits himself with distinction in the medical devices, diagnostics and pharmaceutical fields, and also heads up the firm’s design practice. See p1194 for firm profile
Montaury Pimenta, Machado & Vieira de Mello
Montaury Pimenta, Machado & Vieira de Mello has all bases covered for innovators seeking to safeguard, enforce and monetise their intangible assets: “Even against the biggest law firms in Brazil, it stands its ground and secures sweeping triumphs without breaking the bank.” It continually refines its offering and recently went fully paper-free, digitising and streamlining internal processes to make them swifter and more efficient. The twin pillars of its litigation division are Luiz Edgard Montaury Pimenta and Ana Paula Affonso Brito, two gifted advocates who fight zealously in the courtroom while persistently pursuing possibilities for favourable settlement. Pimenta is the current president of the ABPI and consistently hammers out the right results for clients before the federal and state courts. Brito receives rave reviews: “The competence, strategic insight and expertise she demonstrates inspire real confidence,” reports one; while another cites her as “the best IP professional we have ever worked with”. Recent successes include digging windscreen wiper manufacturer Dyna out of a tricky infringement hole. Meanwhile, Gabriela Salerno and Magnus Aspeby call the shots in the prosecution department. Salerno speaks the language of clients, having previously worked in-house at a cosmetics company; pharmaceutical, cosmetic and biotechnology patents all fall within her bailiwick. Former EPO examiner Aspeby is a gatekeeper to Brazil for European companies and to Europe for domestic concerns: “He is easy to deal with, approachable and always gives suitable advice.” Rounding out the team is transactional maven Eduardo Magalhães Machado, shrewd negotiator who provides pin-sharp counsel on licensing agreements. See p1196 for firm profile
Moreau Valverde
Moreau Valverde Advogados celebrates both its 30th anniversary and its IAM Patent 1000 debut this year, not least thanks to the unstinting dedication to client care that characterises its service. It sees round corners to anticipate problems before they arise and spot opportunities that others might miss – a foresightedness that plays well with its
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Brazil José Mauro Machado Pinheiro Neto Advogados
Individuals: transactions Claudio Roberto Barbosa Kasznar Leonardos
See p1128
Pedro Bhering Bhering Advogados
Ana Cristina Müller BMA - Barbosa Müssnich Aragão
Tatiana Campello Demarest Advogados
See p1129
Marcela Waksman Ejnisman TozziniFreire Advogados Elisabeth Kasznar Fekete Kasznar Leonardos
See p1135
Jacques Labrunie Gusmão & Labrunie
Gabriel Francisco Leonardos Kasznar Leonardos
See p1138
Gustavo Starling Leonardos Luiz Leonardos & Advogados
See p1136
diverse clientele of both domestic and international innovators. The engines of the practice are founders Mariana Valverde and Pierre Moreau, who together provide crystal-clear counsel on the management of global portfolios and the structuring of major licensing programmes. Valverde balances her IP work with a thriving fashion law practice; while law PhD Moreau shares his wisdom through his prolific writings and by teaching at Universitat St Gallen.
Müller Mazzonetto “does outstanding work – the professional and clear way in which it leads clients through the whole patenting process leaves them with zero complaints. It respects deadlines, is very responsive and is transparent and fair on costs”. A formidable opponent in patent litigation – especially in the pharmaceutical space – it also adroitly handles
1120 IAM Patent 1000
See p1142
Karina Haidar Müller Müller Mazzonetto Fábio Pereira Veirano Advogados Ricardo Pinho Guerra IP Flavia Rebello Trench Rossi Watanabe Valdir Rocha Veirano Advogados
Flavio Leonardos Guerra IP
Müller Mazzonetto
See p1140
Nathalia Mazzonetto Müller Mazzonetto
Cândida Ribeiro Caffé Dannemann Siemsen
Antonella Carminatti BMA - Barbosa Müssnich Aragão
Eduardo Magalhães Machado Montaury Pimenta, Machado & Vieira de Mello
Benny Spiewak SP Law Marcela Trigo de Souza Trench Rossi Watanabe
prosecution and transactional instructions, ensuring that clients benefit from total support. Figureheads Nathalia Mazzonetto and Karina Haidar Müller are two highly accomplished lawyers with a glittering clientele to match. Mazzonetto is a fierce courtroom advocate, but never just fights for the sake of it: she also has a knack for securing optimal outcomes through arbitration and mediation. A busy licensing practice is a further string to her bow. Müller is likewise a seasoned negotiator of transformative patent transactions and was recently elected as the president of the Licensing Executives Society International’s Brazilian chapter; her commercially attuned counsel is always in hot demand. On the prosecution side, Alexandre Fukuda Yamashita is a first-class mechanical engineer whose thoroughness leaves no room for slip-ups when drafting and filing patents and industrial designs.
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Brazil Firms
Luminaries
Dannemann Siemsen
Luiz Leonardos Luiz Leonardos & Advogados
Gusmão & Labrunie Kasznar Leonardos
See p1188
See p1137
Murta Goyanes Advogados
Luiz Leonardos & Advogados
See p1192
Close partner attention, a bespoke approach to each brief and prompt delivery of results are all baked into the philosophy of Murta Goyanes. Founded in 2008, the flourishing boutique is home to a team of firstclass patent experts who are intimately familiar with the inner workings of INPI and provide vital assistance at each stage of the drafting and filing process. And when conflicts loom, they bring the heat in court for industry leaders – including, most recently, oil and gas giant Noble Corporation. Leading the charge on this was Antonio Murta Filho, who has a deep playbook to draw upon in invalidity actions and infringement suits; the versatile practitioner also has a percipient take on the management of large-scale IP portfolios. This is likewise the metier of prosecution ace and pharmacologist Vinícius Casciano, who brings a wealth of regulatory and plant variety know-how to the mix and effortlessly sews up office actions, patentability opinions, portfolio management and freedom-to-operate analysis for myriad chemistry and bioscience concerns. Bringing an internationally minded approach to the negotiation and drafting of technology transfer and licensing agreements is Luiza Duarte Pereira; qualified to practise in both New York and Brazil, she is a touchstone for both domestic and international clients. See p1198 for firm profile
magellan IP
See p1194
Pinheiro Neto Advogados
Bhering Advogados BMA - Barbosa Müssnich Aragão
See p1186
Daniel Law Di Blasi, Parente & Associados Licks Attorneys
See p1190
Montaury Pimenta, Machado & Vieira de Mello See p1196 Murta Goyanes Advogados ClarkeModet
See p1198 See p954
David do Nascimento Advogados Associados Demarest Advogados Gaiarsa, Ferreira & Meyer Propriedade Intelectual Guerra IP
Moreau Valverde Müller Mazzonetto Pinheiro Neto Advogados SP Law Trench Rossi Watanabe Veirano Advogados Venturini IP
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See p1202
With boots on the ground in Tokyo and Silicon Valley, Pinheiro Neto has uniquely broad horizons among its Brazilian competitors. A stalwart of the market for the past 40 years, the firm has cultivated strong relationships with leading universities and multinationals, thanks to its comprehensive patent offering and expertise in ancillary areas such as privacy, data protection and media and entertainment law. Patrons in the high-technology space look to José Mauro Machado for strategic guidance on PCT filings both in Brazil and across the continent: “His advice is customised and effectively delivered, along with detailed analysis to help clients achieve their goals. He is a reliable and competent professional who provides a service that is excellent in all respects and of a high ethical standard.”
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Brazil SP Law
Pioneers in the pharmaceutical, biotechnology and medical device fields rely on SP Law to untangle the knots of the IP and regulatory challenges they face. Its diversely qualified practitioners understand the dynamics and dimensions of the sectors in which they operate; both responsive and proactive, they act promptly, decisively and cost effectively to resolve problems and identify and exploit new opportunities. They focus on providing prescient patent strategy and coordinating lucrative licensing deals – both sweet spots for Benny Spiewak. He calls on a tight network of regional and foreign associates to help clients maximise the value of their crown-jewel assets both in the Brazilian market and beyond: as head of the firm’s Israel desk, he has won many fans among the country’s vibrant community of innovators, including the likes of Teva Pharmaceuticals.
Trench Rossi Watanabe
An alliance with global titan Baker McKenzie gives full-service outfit Trench Rossi Watanabe enviable geographical reach and instant access to an abundance of complementary resources across the legal spectrum. Combined with its fine-grained understanding of Brazilian legal and business practices and procedures, this proves an irresistible lure for industry heavyweights: Gillette, Procter & Gamble and Allergan all enlisted its support on the prosecution side in the past year; while it has also been representing both AstraZeneca and Pfizer in infringement disputes. Leading on the latter mandates is Marcela Trigo de Souza, who has pulled innumerable high-calibre clients out of tricky contentious scenarios during her 16-year career. She is joined by transactional specialist Flavia Rebello, who currently chairs Baker McKenzie’s Latin America IPTech group, having previously worked in the firm’s US IP practice. She has a knack distilling technical complexities into simple language that can be presented straight to the C-suite with full confidence.
Veirano Advogados
The legal and technical dexterity on show at the fullservice Veirano Advogados lands it a spot in the IAM Patent 1000 for the first time this year. Playing host to a set of professionals with extensive experience in areas from pharmaceuticals to electrical engineering – many of whom are European and US qualified – it can offer a global service that ticks every box for clients. They include Valdir Rocha, a true renaissance man who has touched on all aspects of patent practice during his 30-plus years as an IP lawyer, from registration to licensing. His intimate familiarity with
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the telecommunications and mechanical sectors ensures that he sees the wider business context behind clients’ patent issues. Fábio Pereira has turned the negotiation and drafting of technology transfer and licensing agreements into an art form, much to the delight of patrons.
Venturini IP
Although founded just three years ago, boutique Venturini IP has already made a splash on the Brazilian patent scene, thanks to its client-focused, results-driven approach to everything from prosecution to support in complex litigation and contract negotiation. No technical discipline is off limits for its young, dynamic team, which tailors strategies and solutions to the specific needs and ambitions of each individual client. An exclusive partnership with the Brazilian division of the ABGI Group – an innovation funding consultancy with a presence in 13 countries – ensures it can help patrons to maximise the effectiveness of R&D investments. Namesake André Venturini provides a start-to-end patent service that is characteristic of the firm itself, which he has grown from a single-person practice to the innovative five-specialist team it is today. With in-depth knowledge of INPI’s practices and keen technical know-how in electrical engineering, he is an adept filer and manager of worldwide portfolios for major players across the industry spectrum. See p1202 for firm profile
Other recommended experts
At ABO IP, Fernando Braune “responds to queries very quickly and gives detailed answers that address all of the client’s concerns. His prosecution work is excellent and fairly priced”. Showing creativity in finding unconventional solutions to knotty problems, Saulo Calazans of Carioca IP is a precision prosecutor at INPI: “His service is marked by clarity and responsiveness, which is much appreciated by clients. The quality of his writing and his translations is second to none.” Having spent almost two decades getting patents on the register, Leonardo Cordeiro of Gruenbaum, Possinhas & Teixeira knows how Brazilian examiners think and drafts applications that get the green light without any pushback. H&A’s Rafaela Mattos is a walking encyclopaedia of prosecution procedure who secures impregnable protection for household names in fields from telecommunications to mechanics. Skilled portfolio manager and qualified biologist Ana-Paula Celidonio assists companies on every scale with highly technical matters and leaves no stone unturned in safeguarding their inventions. She plies her trade at Lobo de
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Brazil Rizzo. MNIP founding partner Ari Magalhaes is a mechanical engineer and lawyer who has perfected the art of flawless applications and provides sage counsel on infringement and nullity actions: “Ari has an analytical mind and a tireless drive to get the best results for clients.” Boutique Soerensen Garcia has an ace up its sleeve in the form of Barbara Cattete Dias, a biomedical maven who produces piercing due diligence reviews and insightful freedom-tooperate analysis. Making his debut in this year’s IAM
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Patent 1000, Eduardo Ribeiro of Siqueira Castro Advogados specialises in border seizures and portfolio management for industry titans, which also benefit from his expertise in trademark law. Heading up the IP team at TozziniFreire, Marcela Waksman Ejnisman brokers all manner of licensing and technology transfer agreements as part of her broad-based transactional practice. She has a gift for finding common ground in order to foster future collaboration and commercialisation.
IAM Patent 1000 1123
Affonso Brito, Ana Paula
Partner – Montaury Pimenta, Machado & Vieira de Mello anapaula.brito@montaury.com.br | www.montaury.com.br
Ana Paula Affonso Brito is an experienced trial lawyer and litigator who has worked in intellectual property since 2001. A partner at Montaury Pimenta, Machado & Vieira de Mello since 2011, Ms Affonso Brito has extensive experience in handling complex IP litigation matters before the Brazilian federal and state courts for domestic and international clients, and has been leading one of the firm’s litigation teams since 2018. She focuses her practice on IP litigation, with an emphasis on patents, trademarks, copyright, domain names, designs and unfair competition law, assisting clients in different fields of activity and technology, such as pharmaceuticals, telecom, house appliances, crop science, cosmetics, fashion, food, mechanical, oil and gas, machinery and software. Ms Affonso Brito’s practice includes: • evaluating potential litigation risks; • collaborating with corporate departments to review and advise on litigation strategies; • developing solutions and litigation strategies; • handling and monitoring a variety of complex litigation matters; and • representing plaintiffs and defendants in IP litigation across the country.
Montaury Pimenta, Machado & Vieira de Mello Av Almirante Barroso 139 7th Floor Rio de Janeiro 20031-005 Brazil T +55 21 2524 0510 See firm profile p1196
Ms Affonso Brito holds a master’s in intellectual property and innovation from the Brazilian Patent and Trademark Office Academy (2010), a postgraduate degree in intellectual property from the Rio de Janeiro State University School of Law (2006), a postgraduate degree in e-law (digital law) from the Getúlio Vargas Foundation (2002) and a law degree from the Rio de Janeiro State University School of Law (2000). Ms Affonso Brito actively participates in several national and international IP associations and is the author of numerous articles in her area of expertise. Recent publications • “Brazil: a discussion more current than ever on patent validity terms”, Patent Lawyer Annual 2021, December 2020 • “Damages for IP infringement – a true deterrent?”, Lexology, March 2020 • “Trade Dress Protection in Brazil – A Glimpse at the Beverage Market”, AIPPI News, October 2019 • “Combating excessive delay in the examination of patent and trademark applications with the Brazilian Patent Office”, RT online (in Economic Crisis and Legal Solutions section, issue 7/2015, DTR201515909), November 2015
1124 IAM Patent 1000
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Aspeby, Magnus
Partner – Montaury Pimenta, Machado & Vieira de Mello magnus.aspeby@montaury.com.br | www.montaury.com.br
Magnus Aspeby earned a degree in chemical engineering from the Royal Institute of Technology in Stockholm and is the only person in Brazil to have passed the EPO’s qualifying exam. Mr Aspeby worked as a patent examiner at the Swedish Patent Office before working for 11 years at the EPO in Munich in gas purification and separation processes, as well as heterocyclic compounds. He has also worked as a consultant-expert for WIPO at the Brazilian Industrial Property Office (INPI) in Rio de Janeiro and as a patent attorney in the patent department of Sandvik AB in Sweden, mainly drafting and prosecuting patent applications for metal cutting tools and steel alloys. At Sandvik, Mr Aspeby actively participated in several oral proceedings at the EPO, in both opposition and appeal proceedings. Mr Aspeby founded his own IP office in Rio de Janeiro which he managed for 18 years, during which time he mainly filed and prosecuted Brazilian patent applications. He also drafted and filed several appeals, administrative nullity actions (oppositions) and subsidies to the technical examination (third-party observations). Besides the INPI, he has actively corresponded with the Brazilian National Agency for Sanitary Vigilance for pharmaceutical applications. Further, Mr Aspeby has dealt with freedom-to-operate investigations and infringement cases, as well as design and trademark applications. Mr Aspeby is an active inventor himself and the sole inventor or coinventor of seven priority-based patent applications. In September 2015 Mr Aspeby joined the IP office of Montaury Pimenta, Machado & Vieira de Mello in Rio de Janeiro. Recent publications • “Förbättringar I Brasilien”, BrandNews e PatentEye Magazine, November 2019. • “Two major improvements in the industrial property area in Brazil”, Nordic Light Magazine, October 2019. • “As estratégias do INPI para solucionar o backlog de patentes”, AmCham News, 7 June 2019 • “Brazil on its way to eliminate the existing patent backlog”, Lexology, 11 July 2019
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Montaury Pimenta, Machado & Vieira de Mello Av Almirante Barroso 139 7th Floor Rio de Janeiro 20031-005 Brazil T +55 21 2524 0510 F +55 21 2240 1524 See firm profile p1196 Professional associations • ABPI • AIPPI Sample client list • Husqvarna AB • Outotec Oy • Sandvik AB • Volvo Trucks
IAM Patent 1000 1125
Barbosa, Gustavo José Ferreira
Senior Partner – Kasznar Leonardos gustavo.barbosa@kasznarleonardos.com | www.kasznarleonardos.com
An expert in administrative and judicial patent litigation in Brazil, Gustavo José Ferreira Barbosa is a senior partner at Kasznar Leonardos with almost 30 years of experience in intellectual property. He is head of the electronics, computer sciences, aeronautics and industrial designs division of the firm’s patent department. Mr Barbosa is a member of the Brazilian Association of Intellectual Property (ABPI), the Brazilian Association of Industrial Property Agents, the International Association for the Protection of Intellectual Property and the International Federation of Intellectual Property Attorneys (FICPI). He is co-delegate for Brazil at FICPI and a former reporter for the study group on international patents and an official observer at several of the meetings held at the World Intellectual Property Organisation for the reform of the Patent Cooperation Treaty. He is also a former chair of the ABPI Patent Studies Commission. Mr Barbosa has degrees in civil engineering (1981) and law (1996) from the Pontifical Catholic University of Rio de Janeiro, where he also studied systems programming and analysis and obtained a postgraduate degree in finance (1982). Mr Barbosa speaks Portuguese, English, French and Spanish.
Kasznar Leonardos Rua Teófilo Otoni 63 Fifth to Seventh Floors Rio de Janeiro 20090-080 Brazil T +55 21 2113 1919 F +55 21 2113 1920 See firm profile p1188
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Boclin, Ricardo
Technical and Legal Services Manager– ClarkeModet rboclin@clarkemodet.com.mx | www.clarkemodet.com
Ricardo Boclin was appointed as the technical and legal services manager at ClarkeModet Brasil in the second semester of 2020, leading a multidisciplinary team of over 30 professionals that includes trademark attorneys and specialised technical consultants. Mr Boclin is a seasoned and renowned expert in intellectual property, with over 20 years of experience assisting clients with patent and industrial design prosecution and consultancy, devising strategies for protecting and enforcing IP rights, as well as for managing their portfolios in Brazil. Mr Boclin has vast experience in assisting both small and large domestic and international corporations, providing precise and detailed responses to his clients’ inquiries, swiftly. He also proactively analyses the portfolio of his clients to identify opportunities in light of the current Brazilian legal framework. His client-oriented approach is well known. Mr Boclin holds a mechanical engineering degree and a law degree, and was admitted to the Brazilian Bar in 2009. He holds also an MBA in business management. He is very active in local and international IP associations.
ClarkeModet Rua do Passeio 38 Setor 1 – 14º andar, Centro Rio de Janeiro RJ 20021-290 Brazil T +55 21 3223 9500 See firm profile p954
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IAM Patent 1000 1127
Barbosa, Claudio Roberto
Senior Partner – Kasznar Leonardos claudio.barbosa@kasznarleonardos.com | www.kasznarleonardos.com
Claudio Roberto Barbosa is a senior partner at Kasznar Leonardos and a renowned expert in IP litigation and licensing agreements. He has been working in intellectual property since he graduated. Having dedicated many years to his practice, he has deep knowledge of and experience in litigation, trademark and consulting services regarding licensing agreements, patents, trademarks, copyright and unfair competition, trademark prosecution and internet copyright licensing. Mr Barbosa is currently in charge of privacy and data protection compliance with the new Brazilian legislation regarding the Internet, is the former national reporter for the International Association for the Protection of Intellectual Property (AIPPI) and has been a member of the board of the Brazilian Association of Intellectual Property. He is one of the members that created the Intellectual Property Alternative Dispute Resolution Centre Council, an institution controlled by the Brazilian Association of Intellectual Property (ABPI), which encompasses an arbitration court, a mediation centre and a domain name dispute resolution centre in Brazil. He is also a member of the ABPI, the American Intellectual Property Law Association and the AIPPI. Mr Barbosa graduated in law from the University of Sao Paulo in 1994. He has also completed two LLMs – one in IP law, from George Washington University in 2000, and the other in international law from the University of Sao Paulo in 2001. He has an SJD in commercial law from the University of Sao Paulo (2007) and a technical degree in computer programs and digital electronics (1988). He speaks Portuguese and English.
1128 IAM Patent 1000
Kasznar Leonardos Av Nove de Julho 3147 Seventh Floor Sao Paulo 01407-000 Brazil T +55 11 2122 6604 F +55 11 2122 6633 See firm profile p1188 Professional associations • ABAPI • ABPI • ITECHLAW
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Carminatti, Antonella
Partner – BMA - Barbosa Müssnich Aragão ani@bmalaw.com.br | www.bmalaw.com.br
Antonella Carminatti is a partner at BMA and head of the IP practice. Her work covers all aspects of intellectual property, especially portfolio management, transactional intellectual property, licensing, litigation and counselling – both domestically and abroad. She is admitted to practise law in Brazil and is also licensed by the District of Columbia Court of Appeals as a special legal consultant. Her experience includes developing IP strategy, management of IP assets and transactions involving intellectual property, including trademarks, patents, copyright, industrial designs and trade dress. She works on anticounterfeiting programmes and litigation of IP and related rights, such as unfair competition, domain names and trade dress cases, before the Brazilian federal and state courts, and has earned a reputation as a successful litigator in IP matters. Ms Carminatti is also known for her skills in drafting and reviewing domestic and foreign licence agreements involving patents, trademarks and copyright, as well as franchise, technology and software agreements. Ms Carminatti regularly counsels clients on the selection and adoption of trademarks, on how to build and enhance rights in brands and on enforcement strategies. She has assisted clients in multimilliondollar transactions involving acquisition and divestiture of IP portfolios. A frequent participant and speaker at IP seminars and meetings in Brazil and abroad, Ms Carminatti is a member of the board of directors of the Brazilian Intellectual Property Association and of the INTA Editorial Committee and Trade Dress Taskforce. Ms Carminatti is frequently recommended in publications such as Chambers Latin America, Chambers Global, The Legal 500, Latin Lawyer, IAM, Who’s Who Legal, LACCA Approved, Leaders League, Best Lawyers, World Trademark Review, IAM Patent 1000, Expert Guides and World Intellectual Property Review. Recent highlights include being recognised as a top lawyer in intellectual property in: • Chambers Latin America 2020 and Chambers Global 2020, published by Chambers and Partners; and • WTR 1000, published by World Trademark Review, from 2015 to 2020.
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BMA - Barbosa Müssnich Aragão BMA Corporate - Largo do Ibam 1 4th floor Humaitá Rio de Janeiro 22271-070 Brazil T +55 21 3824 5757/98 117 0800 See firm profile p1186 Professional associations • ABPI • AIPPI • INTA
IAM Patent 1000 1129
Celidonio, Ana-Paula
Partner – Lobo de Rizzo Advogados ana.celidonio@ldr.com.br | www.loboderizzo.com.br
Ana-Paula Celidonio is a partner and head of the IP practice. Her deep experience comes from 20 years of elaborating opinions for strategic decision-making, protection, enforcement and consulting services related to intellectual property for local and foreign companies. A biologist and a lawyer, Ms Celidonio is particularly active in life sciences-related patents, advising clients of various sizes on all aspects of their IP rights lifecycle, from the development of technology through the drafting of applications and protection worldwide. Ms Celidonio is an active member of several professional associations, including the Brazilian Intellectual Property Association and the International Federation of Intellectual Property Attorneys. Education Ms Celidonio graduated in biology from Sao Paulo University (1991) and in law from FADISP (2007); she specialised in administration at the Getulio Vargas Foundation (2001) and the Harvard School of Law (2012), and in intellectual property at the Franklin Pierce Law Center (2006).
Lobo de Rizzo Advogados Av Brigadeiro Faria Limia 3900 12 Andar Itaim Bibi Sao Paulo 04538-132 Brazil
Lobo de Rizzo Lobo de Rizzo is a law firm frequently involved in IP transactions and disputes, representing companies from various business sectors, whether operating in Brazil or exploring opportunities in the country. The continuing praise received in the most renowned legal publications reflects the opinion of the market on the excellence of its service, the quality of its lawyers and their close relationship with clients.
T +55 11 11 3702 7019
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Professional associations • ABPI • FICPI
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Freire, Rafael
Technical Services Manager – ClarkeModet rfreire@clarkemodet.com.br | www.clarkemodet.com
Rafael Freire is a Brazilian industrial property agent who graduated in electrical and electronic engineering from the Federal Centre of Technological Education in 2004. He began his professional career at ClarkeModet Brasil in 2001, carrying out technical activities related to patents, utility models and industrial designs. Over the years he has acquired extensive experience in conducting prior art searches, freedom-to-operate searches, infringement/patentability analyses, drafting patent and industrial design applications, among other technical activities. Mr Freire moved to Daniel Advogados (now Daniel Legal IP) in 2012, where he also performed technical activities related to patents, utility models and industrial designs. In 2015 he became the coordinator of the technical team for patents and industrial designs, heading a team made up of engineers, biologists and pharmacists. In 2016 he returned to ClarkeModet Brasil to lead the technical team for patents and industrial designs, as well as the legal and trademark teams. Since 2020 he has also been working with the firm’s committee responsible for client experience, performing an essential role in respect of meeting clients’ needs when doing IP business in Brazil. His main areas of expertise are electronics, mechanical, software and industrial designs. He is also a faculty member of the Brazilian Industrial Property Agents Association. Publications • International Comparative Legal Guide to Patents 2016 (6th edition), Brazil chapter • World Trademark Review’s Designs 2016 — A global guide, Brazil chapter • Industrial Design Rights — An International Perspective (2nd edition), Brazil chapter
ClarkeModet Passeio st number 38 14st floor, Centro Rio de Janeiro Brazil T +55 21 984 917 985/322 395 06 See firm profile p954 Professional associations • ABAPI • CREA-RJ
Languages • Portuguese • Spanish • English
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IAM Patent 1000 1131
Ghitnick Arcalji, Lilian
Senior Patent Specialist – BMA - Barbosa Müssnich Aragão lil@bmapi.com.br| www.bmapi.com.br
Lilian Ghitnick Arcalji is a chemical engineer with over 20 years’ experience in industrial chemistry, biosciences, pharmaceuticals, fast-moving consumer goods, biology, software, clean energy and renewables, and biotechnology. She focuses her IP practice on advisory work for a range of clients – including large international corporations – planning and implementing effective strategies to provide IP protection in Brazil and abroad. She is also involved in filing and prosecuting patent and design applications, conducting prior art searches, drafting patent applications, and preparing landscape and freedom-to-operate analyses, third-party observations and infringement opinions. In addition, clients can rely on her assistance in post-grant actions. Her significant experience in the industry gained at one of the largest beverage companies in the world offers a unique perspective to her work. Recent accolades • Named a “Rising Star” by Managing Intellectual Property’s IP Stars 2018 • Recognised as leader in her field in the IAM Patent 1000 2019 and 2020 Education • MBA in marketing, Getúlio Vargas Foundation, 2000 • Chemical engineering, Federal University of Rio de Janeiro, 1995
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BMA - Barbosa Müssnich Aragão BMA Corporate - Largo do Ibam 1 4th floor, Humaitá Rio de Janeiro 22271-070 Brazil T +55 21 3824 5757 See firm profile p1186 Professional associations • ABPI • AIPPI • CRQ
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Jardim, Ana Paula Senior Partner – Luiz Leonardos & Advogados apjardim@llip.com | www.llip.com
Ana Paula Jardim is a senior partner at Luiz Leonardos & Advogados and head of the firm’s patent department, with more than 20 years of experience in patent law. Ms Jardim is an electrical engineer and an attorney at law, a skilled professional admitted to both the Regional Council of Engineering, Architecture and Agronomy of the State of Rio de Janeiro and to the Brazilian Bar Association. In addition, she holds a post-graduate degree in IP law. Ms Jardim is an active member of the Brazilian Association of Intellectual Property, the International Association for the Protection of Intellectual Property, the International Federation of Intellectual Property Attorneys and the Asian Patent Attorneys Association. Ms Jardim’s practice focuses on the administrative and judicial prosecution of industrial designs and patents. She has solid experience in intellectual property – specifically, patent portfolio management, strategic counselling, patentability, validity and infringement analysis, patent drafting and prosecution. She works with clients ranging from sole inventors and small technology companies operating in Brazil to large multinational corporations based in Brazil and abroad, providing clients at national and international level engaged in multiple industries with strategic advice on patent issues. She is experienced in giving lectures on patent matters to IP audiences. Ms Jardim is praised for her knowledge of and practical approach to patent-related matters, as well as for her proactivity. She is fluent in Portuguese, English and French.
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Luiz Leonardos & Advogados Avenida Rio Branco 80 6th Floor, Centro Rio de Janeiro RJ CEP 20040-070 Brazil T +55 21 3514 0445 F +55 21 3514 0401 See firm profile p1192
IAM Patent 1000 1133
Kashiwabara, Priscila
Partner – Kasznar Leonardos priscila.kashiwabara@kasznarleonardos.com | www.kasznarleonardos.com
Priscila Kashiwabara became partner at Kasznar Leonardos in 2019. With hands-on experience as a biotechnologist and over 15 years of IP experience, she focuses her practice on patent prosecution, heading the life sciences division in the patent department, supporting national and international clients in protecting and enforcing inventions in the agriculture, biotechnology and pharmaceutical fields. She is routinely involved in patent drafting, as well as in preparing and counselling clients on patentability, infringement and non-infringement, freedom to operate and validities/invalidities. She also advises clients on matters related to access to Brazilian genetic resources, registration and regularisation before the Ministry of the Environment and she has expertise in filing and prosecution of plant varieties applications before the Ministry of Agriculture, Feedstock and Supply. Ms Kashiwabara graduated in biology from the prestigious University of Sao Paulo (2000), where she earned a prize for excellence in biology; she also has a master’s in biotechnology (2003) from the same institution. She is a registered industrial property agent in Brazil. Ms Kashiwabara regularly publishes on topics concerning life sciences patents and biodiversity and is a member of the Brazilian Association of Intellectual Property, where she co-heads the Plant Variety Study Committee. She is also a member of the Intellectual Property Commission from the Sao Paulo division of Brazilian Bar Association. Ms Kashiwabara speaks Portuguese and English.
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Kasznar Leonardos Rua Teófilo Otoni 63 5th to 7th Floors Rio de Janeiro 20090-080 Brazil T +55 11 2122 6600 See firm profile p1188 Professional associations • APBI
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Kasznar Fekete, Elisabeth
Senior Partner – Kasznar Leonardos elisabeth.kasznar@kasznarleonardos.com | www.kasznarleonardos.com
A senior partner and co-founder of Kasznar Leonardos, Elisabeth Kasznar Fekete is frequently ranked among the most admired IP professionals by legal guides. Author of Brazil’s leading treatise on trade secrets, Ms Kasznar Fekete has over 38 years’ practice in intellectual property, covering both litigation and counselling in the areas of trademarks, anticounterfeiting, unfair competition, copyright, IP contracts, innovation law and trade secrets. She excels in the strategic planning of IP-related litigation and in the establishment of anti-counterfeiting programmes. Ms Kasznar Fekete is a permanent council member and arbiter of the Arbitration Board of the Brazilian Intellectual Property Association (ABPI) and is past president of both ABPI and the International Association for the Protection of Intellectual Property Brazilian Group (2014-2015). She is a member of the International Trademark Association board of directors, the Global Advisory Council and the Adjunct Professor Interest Group. She is a senior editor and co-chair of the Article Solicitation and Development Subcommittee of the Trademark Reporter Committee, as well as a member of the InterAmerican Association of Intellectual Property, the Brazilian Association of Industrial Property Agents and the Sao Paulo Association of Intellectual Property. Ms Kasznar Fekete is a lecturer, examining professor of master’s and doctoral theses, and a coordinator of IP courses. She has an honours degree in law from the State University of Rio de Janeiro (1981) and a doctorate in commercial law from the University of Sao Paulo (1999). In 1984 Ms Kasznar Fekete was a guest research fellow at the Max Planck Institute, Germany. Ms Kasznar Fekete speaks Portuguese, English, French, German, Spanish, Hungarian and Italian.
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Kasznar Leonardos Av Nove de Julho 3 147, 7th floor Sao Paulo 01407-000 Brazil T +55 11 2122 6600 F +55 11 2122 6633 See firm profile p1188 Professional associations • ABPI • INTA • LESI
IAM Patent 1000 1135
Leonardos, Gustavo Starling Managing Partner – Luiz Leonardos & Advogados gleonardos@llip.com | www.llip.com
Gustavo Starling Leonardos is a founding partner of Luiz Leonardos & Advogados and active in all areas of intellectual property. Mr Leonardos received his bachelor’s degree from the State University of Rio de Janeiro in 1985 and was admitted to the Brazilian Bar in the same year. In 1987 he earned his master’s in comparative law from the George Washington University Law School. In 1989 he worked for WIPO in Geneva as a consultant for the industrial property division until March 1990. Mr Leonardos is an active member of the main IP associations in Brazil and internationally. He was thus president of the Brazilian Intellectual Property Association for two subsequent terms (2004/2005 and 2006/2007). During that time, he was also a member of the Brazilian National Council against Piracy and IP Infringements of the Brazilian Ministry of Justice. He is currently a member of the Intellectual Property Committee of the Brazilian Attorneys Institute, as well as a member of the Inter-American Association of Intellectual Property (where he also served on the executive committee) and an active member of INTA, where he has been engaged in committees for numerous years. He is an active participant of the International Association for the Protection of Intellectual Property, having been the president of the Brazilian group from 2004 until 2007, as well as a member of other committees in the association, such as the programme committee and now the special committee Q94 for the WTO. He is the author of a number of articles on IP law and a frequent speaker at national and international conferences. In 2007 Mr Leonardos was awarded the EMERJ Medal from the School of Magistrates of Rio de Janeiro for the relevancy of his services to the Brazilian legal culture. Mr Leonardos is engaged in all areas of intellectual property and directly involved in all aspects of trademark prosecution and litigation related to IP matters, as well as contracts, transfer of technology and copyright. Mr Leonardos is the managing partner of Luiz Leonardos & Advogados. He specialises in trademarks, licensing and litigation.
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Luiz Leonardos & Advogados Avenida Rio Branco 80 6th Floor Centro Rio de Janeiro RJ CEP 20040-070 Brazil T +55 21 3514 0400 See firm profile p1192
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Leonardos, Luiz
Senior Partner – Luiz Leonardos & Advogados lleonardos@llip.com.br | www.llip.com
Luiz Leonardos, founder of Luiz Leonardos & Advogados, has helped shape Brazil’s modern IP legal landscape. He has distinguished himself in the IP arena and was part of the Brazilian delegation to the Stockholm Conference of the Paris and Berne Conventions, where the World Intellectual Property Organisation was created. Mr Leonardos has served in numerous positions at the Brazilian Intellectual Property Association since its creation in 1963 – first as general reporter, then president and member of the directors’ board, and finally honorary president. He also served as executive vice president of the International Association for the Protection of Intellectual Property from 1992 until 1995, then as executive president until 1998, before being nominated as an honorary member. He is also an honorary member of the International Federation of Intellectual Property Attorneys. Mr Leonardos’s distinguished career in IP law is widely recognised among Brazilian and foreign specialists and publications. He is the author of several articles and has lectured extensively over the years. Mr Leonardos provides clients at national and international level engaged in multiple industries with strategic advice on IP complex issues, including litigation. Legal excellence and solid ethical conduct are the main components guiding his practice and made him one of the most respected IP practitioners of his generation. He specialises in licensing and litigation.
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Luiz Leonardos & Advogados Avenida Rio Branco 80 6th Floor Centro Rio de Janeiro RJ CEP 20040-070 Brazil T +55 21 3514 0400 F +55 21 3514 0401 See firm profile p1192
IAM Patent 1000 1137
Leonardos, Gabriel Francisco
Senior Partner – Kasznar Leonardos gabriel.leonardos@kasznarleonardos.com | www.kasznarleonardos.com
Gabriel Francisco Leonardos is a senior partner at Kasznar Leonardos and head of the licensing and litigation departments of the firm’s Sao Paulo office. He has 30 years’ experience in intellectual property and is widely recognised by international law and IP guides as one of the best IP lawyers in Brazil. He acts in IP litigation, consulting services on licensing agreements, patents, trademarks, copyright and unfair competition, trademark prosecution, arbitration and mediation in IP and contract law. Mr Leonardos is a member of the Ethics Court of the Inter-American Association of Intellectual Property (ASIPI) and of the Federal Board of the Brazilian Bar Association, as well as being chair of the latter’s Intellectual Property Committee. In addition, Mr Leonardos is the honorary president of the Brazilian-German Chamber of Commerce of Rio de Janeiro, a former president of the Brazilian Chapter of the Licensing Executives Society and vice president of the Brazilian Association of Intellectual Property. Mr Leonardos has a law degree (1986) from the prestigious State University of Rio de Janeiro, a post-graduate degree in German law (1989) from Ludwig Maximilian University (Germany) and an LLM in financial law (1996) from the University of Sao Paulo. In 2015 he received the German Cross of Merit (Bundesverdienstkreuz) and in 2018 he obtained an MBA from Fundacao Getulio Vargas in Rio de Janeiro. He was a guest research fellow at the Max Planck Institute (Germany) in 1988/1989. Mr Leonardos is a frequent speaker at IP conferences worldwide and the author of dozens of articles on IP law published in specialised journals in Portuguese, English, German and Spanish. He is the author of an acclaimed book on the tax law of technology transfer, published in 1997. He speaks Portuguese, English and German.
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Kasznar Leonardos Av Nove de Julho 3147 Seventh Floor Sao Paulo 01407-000 Brazil T +55 11 2122 6600 F +55 11 2122 6633 See firm profile p1188 Professional associations • AHK • FICPI • LES
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Magalhães Galvão, Leonor
Founding Partner – magellan IP leonor.galvao@magellan-ip.com | www.magellan-ip.com
Leonor Magalhães Galvão is one of the founding partners of magellan IP and head of the firm’s patent practice. Dr Galvão has nearly 20 years of experience in the field of intellectual property. Prior to founding magellan IP, she was an associate and a partner at renowned Brazilian IP firms. Dr Galvão represents important national and international clients that range from academic institutions to multinational corporations. Her practice covers the drafting and prosecution of patents before the Brazilian Patent and Trademark Office, patentability analyses, technology transfers, freedom-to-operate analyses, legal opinions, oppositions, appeal proceedings and general consultancy services in intellectual property. She specialises in chemistry, biotechnology, molecular biology, immunology, medical devices and diagnostics, as well as pharmaceutical products. Dr Galvão is also actively involved in biodiversity matters and access to the Brazilian genetic patrimony, including acting on behalf of clients before the Genetic Patrimony Management Council. Dr Galvão frequently presents to audiences worldwide on a variety of topics relating to Brazilian patent law and practice. She has gained much respect in the profession as chair and co-chair the Biotechnology Committee of the Brazilian Intellectual Property Association (ABPI) for over 12 years. She is an active member of the Biotech & Pharma and Greentech Committees of AIPPI. She is also a volunteer mentor for IP matters at Endeavor, a non-governmental organisation that promotes entrepreneurship around the world. Key facts • BSc in biochemistry (First Class Honours), Imperial College London • PhD in biochemistry, University of Sao Paulo • Qualified Brazilian patent and trademark attorney • Nearly 20 years of experience at well-known Brazilian IP firms • Founded magellan IP in Rio de Janeiro in 2015; the firm now has a 25-plus strong team • Helped launch the firm’s liaison office in Lisbon in 2019 for Brazil and Portuguese-speaking Africa (Angola, Mozambique, Cape Verde, Guiné-Bissau, São Tomé) • Co-chair, Biotechnology Committee, ABPI (2004-2009 and 20122017) • Brazilian delegate before the International Association for the Protection of Intellectual Property • Member of the Biotech & Pharma and Greentech Committees of AIPPI • Member of the Brazilian Association of Industrial Property Agents • Recognitions in IAM Patent 1000, IAM Patent 300 and Who’s Who Legal, Leaders’ League
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magellan IP Rua da Assembleia 10 - sala 3215 Rio de Janeiro 20011-901 Brazil T +55 21 4063 3297 See firm profile p1194 Professional associations • ABPI • AIPLA • AIPPI Sample client list • The Broad Institute • Cipla • Avita International • LFB France
IAM Patent 1000 1139
Magalhães Machado, Eduardo
Senior Partner – Montaury Pimenta, Machado & Vieira de Mello eduardo@montaury.com.br | www.montaury.com.br
Eduardo Magalhães Machado’s practice focuses on strategic advice regarding the development, maintenance and enforcement of trademark portfolios for a wide range of clients, helping them achieve their objectives in an efficient and cost-conscious manner. Mr Magalhães Machado actively participates in a wide number of IP associations, such as the International Trademark Association, MARQUES and the German Association for the Protection of Intellectual Property, promoting the exchange of experience and improving the capacity to understand the dynamics of the global business environment. Mr Magalhães Machado studied law at Candido Mendes University, where he graduated in 1982. He obtained his LLM from the Munich Intellectual Property Law Centre in 2009. Mr Magalhães Machado is also an arbiter at both WIPO and the National Arbitration Forum’s domain names dispute resolution centres and, as such, has been responsible for several landmark decisions. Recent publications • “Madrid protocol: Brazil almost there”, Trademark Lawyer, June 2019 • “The importance of Intellectual Property to ALAE” (Brazilian aw firms alliance), ALAE, July 2019, • “The IP environment has evolved in harmony with Brazil’s development”, Lexology, October 2019 • “Protocolo de Madrid - Perspectivas sobre a implementação”, Revista ASPI, nº 4, November 2019
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Montaury Pimenta, Machado & Vieira de Mello Av Almirante Barroso 139 7th Floor Rio de Janeiro 20031-005 Brazil T +55 21 2524 0510 See firm profile p1196
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Montaury Pimenta, Luiz Edgard
Senior Partner – Montaury Pimenta, Machado & Vieira de Mello luiz@montaury.com.br | www.montaury.com.br
Luiz Edgard Montaury Pimenta is a trial lawyer and the president of the Brazilian Association of Intellectual Property (ABPI) for the 2018-2019 and 2020-2021 terms. With more than 30 years’ experience in the IP field, he heads Montaury Pimenta, Machado & Vieira de Mello’s litigation team and coordinates the different departments within the firm. He has litigated a diverse range of complex IP cases before the Brazilian federal and state courts, including patent infringement and patent invalidity lawsuits, among other IP cases, at trial court level and in the superior courts. Mr Montaury Pimenta advises and represents domestic and international clients in different industry and technology sectors. He has conducted numerous trials before the Brazilian appellate and superior courts, presenting oral arguments and attending in-chambers hearings and meetings. He has been recognised by numerous international ranking agencies as a leading individual who maintains a respected IP practice due to his significant track record representing clients in complex patent disputes before the Brazilian courts. Mr Montaury Pimenta is a panellist for the domain name disputes resolution centres of WIPO, the National Arbitration Forum and the ABPI, and has been responsible for several important decisions involving cross-border IP disputes. He is also an accomplished speaker in Brazil, Latin America, the United States and Europe, and the author of several articles on Brazilian IP law and issues ranging from procedural rules in Brazil to court decisions on IP cases.
www.IAM-media.com
Montaury Pimenta, Machado & Vieira de Mello Av Almirante Barroso 139 7th Floor Rio de Janeiro 20031-005 Brazil T +55 21 2524 0510 See firm profile p1196
IAM Patent 1000 1141
Müller, Ana Cristina
Partner – BMA - Barbosa Müssnich Aragão ana.muller@bmapi.com.br | www.bmapi.com.br
Ana Cristina Müller is a partner at BMA and head of the patent and design practice with over 25 years of experience. She specialises in developing and executing worldwide patent, industrial design and plant variety protection strategies for a wide range of clients – from start-ups to multinational corporations – and does significant work in complex patent litigation, including discussions on standard-essential patents. She has significant knowledge in the fields of chemistry, biotechnology, pharmaceuticals, digital health, clean energy and renewables, and media industry. Ms Müller advises clients on landscape and freedom-to-operate analyses, prepares validity and infringement opinions, drafts thirdparty observations and assists clients in post-allowance actions. She also has significant experience in prosecuting patent and industrial design applications, assisting clients to maximise protection for their developments. She conducts due diligence in investment and acquisition contexts, helping clients to decide on the best IP strategy to pursue. Ms Müller is co-chair of the Patent Committee of the Brazilian Association of Intellectual Property, has written several articles on the scope of patents and the Doctrine of Equivalents, and is co-author of Patents in Biotechnology – Practical Guide for Drafters of Patent Applications, published by the Brazilian Corporation of Agricultural Research. She was previously the head of the patent department at the Oswaldo Cruz Foundation (Fiocruz). Fiocruz is a prestigious institution linked to the Brazilian Ministry of Health and which develops technologies in health science, including vaccines production. Ms Müller is frequently recommended for her accomplishments in intellectual property, technology, patents, designs, portfolio management, transactional work and life sciences in publications such as Intellectual Asset Management (IAM), Managing Intellectual Property (MIP), Leaders League, Best Lawyers and the International Law Office. Her recent accolades include: • being the winner of the prestigious International Law Office’s Client Choice Award in the patent category in 2015 and 2017; • being recognised as one of the best patent professionals in the IAM Patent 1000 from 2014 to 2020; and • being recognised as an IP Star by MIP.
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BMA - Barbosa Müssnich Aragão BMA Corporate - Largo do Ibam 1 4th floor Humaitá Rio de Janeiro 22271-070 Brazil T +55 21 3824 5757 F +55 21 3824 5740 See firm profile p1186 Professional associations • ABPI • AIPPI • FICPI
www.IAM-media.com
Rodrigues da Silva, Caio
Founding Partner – magellan IP caio.rodrigues@magellan-ip.com | www.magellan-ip.com
Caio Rodrigues da Silva is one of the founding partners of magellan IP where he also heads the design practice and is an active member of the patent practice team. Mr Rodrigues da Silva has over 12 years of professional experience in the field of intellectual property. Prior to founding magellan IP, he was an associate at renowned Brazilian IP firms, specialising in patents and designs. Mr Rodrigues da Silva’s work includes the drafting and prosecution of patents and industrial designs before the Brazilian Patent and Trademark Office, patentability analysis, technology transfers, freedomto-operate analyses, legal opinions, oppositions, appeal proceedings and general consultancy services in intellectual property for domestic and international clients of all sizes. Mr Rodrigues da Silva specialises in designs, medical devices and diagnostics, as well as chemistry and pharmaceutical inventions. He is also particularly active in matters involving the previous approval by the regulatory agency ANVISA for pharmaceutical patents.
Key facts • Industrial pharmacy degree from the Fluminense Federal University • Master’s degree in Development of Healthcare products from the Fluminense Federal University • Patent drafting course by the International Federation of Intellectual Property Attorneys (FICPI) Academy • Over 12 years of experience at well-known Brazilian IP firms • Founded magellan IP in Rio de Janeiro in 2015; the firm now has a 25-plus strong team • Member of the Brazilian Association of Industrial Property Agents • Recognitions in IAM Patent 1000
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magellan IP Rua da Assembleia 10 - sala 3215 Rio de Janeiro 20011-901 Brazil T +55 21 4063 3297 See firm profile p1194 Professional associations • ABPI • AIPPI • AIPLA Sample client list • The Broad Institute • Cipla • Fundação Butantan • TIVO
IAM Patent 1000 1143
Salerno, Gabriela
Partner – Montaury Pimenta, Machado & Vieira de Mello gabriela.salerno@montaury.com.br | www.montaury.com.br
Gabriela Salerno is a partner at Montaury Pimenta, Machado & Vieira de Mello and head of the technical team of Montaury’s patent department. Ms Salerno graduated with a BSc in chemical engineering from the Federal University of Rio de Janeiro. She advises her clients on a wide range of technical issues regarding patent prosecution, particularly in the pharmaceutical and biotechnology fields. She is the current chair of the Biotechnology Committee of the Brazilian Association of Intellectual Property. She has a background in innovation management, coordinating projects related to competitive intelligence. Areas of expertise • Freedom-to-operate reports • Industrial designs • Life sciences • Patents and utility models • Plant variety protection Recent publications • “New chemical and pharmaceutical guidelines – a year on: what has changed?”, IAM Life Sciences, May 2019 (co-author) • “Brazil on its way to eliminate the existing patent backlog”, Lexology, 11 July 2019 • The COVID-19 pandemic: are drug patents at risk?”, Lexology, March 2020 • “A guide for second medical use claims in Brazil”, IAM Life Sciences: Key issues for senior life sciences executives 2020 (co-author), June 2020 • “Do ANVISA’s new guidelines jeopardise the patentability of patent applications?”, International Law Office (co-author), March 2021
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Montaury Pimenta, Machado & Vieira de Mello Av Almirante Barroso 139 7th Floor Rio de Janeiro 20031-005 Brazil T +55 21 2524 0510 See firm profile p1196
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Silveira, Tatiana Almeida
Senior Partner – Kasznar Leonardos tatiana.silveira@kasznarleonardos.com | www.kasznarleonardos.com
A senior partner at Kasznar Leonardos, Tatiana Almeida Silveira has more than 20 years of experience in IP practice. She leads the chemical division in the patent department, supporting national and international clients in patent prosecution, consulting services on patent rights and in the drafting of new patent applications and technical reports. Ms Silveira also provides support and technical supervision in the filing and processing of patent applications before the Brazilian National Institute of Industrial Property. Ms Silveira graduated in chemical engineering from the Federal University of Rio de Janeiro in 1995 and received an MSc in technology of chemical and biochemical processes from the same university in 1998. She has taught chemical engineering at Gama Filho University, and IP courses at the Brazilian Association of Industrial Property Agents (ABAPI) and the State University of Rio de Janeiro. Ms Tatiana Silveira sits on the ABAPI Direction Board and the Intellectual Property Committee of the National Association of Research and Development of Innovative Companies. She is also a member of the American Intellectual Property Law Association. She speaks Portuguese and English.
Kasznar Leonardos Rua Teófilo Otoni 63 5fth to 7th floors Rio de Janeiro 20090-080 Brazil T +55 21 2113 1919 F +55 21 2113 1920 See firm profile p1188 Professional associations • ABAPI • ABPI • IPO
www.IAM-media.com
IAM Patent 1000 1145
Venturini, André
Partner – Venturini IP andre.venturini@venturini-ip.com | www.venturini-ip.com
André Venturini is a Brazilian IP specialist and founder of Venturini IP, a firm focused on the handling of patents in Brazil. Mr Venturini holds an MSc in electrical engineering from the Military Institute of Engineering, Rio de Janeiro; an MSc in engineering from the École Centrale de Lyon; a BSc in electrical engineering from the Catholic University of Rio de Janeiro; and a BSc in engineering from École Centrale de Lyon. He has worked with patents for over 16 years, including as partner and head of patents at leading Brazilian IP firms – namely, Kaznar Leonardos, Licks Attorneys and, most recently, Daniel Advogados. In these positions, Mr Venturini handled the prosecution of the entire patent portfolios of some of the largest companies in the IT, telecom and oil & gas sectors, such as Philips, Ericsson, Sony, Technip and Schlumberger. Mr Venturini also acted as technical expert in some of the most important Brazilian patent litigation to date, including the very first dispute concerning patentability of software-implemented inventions and leading cases regarding the enforcement of standard-essential patents in Brazil. In 2018 Mr Venturini founded Venturini IP, bringing together a team of industry experts focused on Brazilian patents and helping national and international clients navigate the Brazilian patent system at all stages (portfolio and risk management, patent filing and prosecution, expert litigation support and technology licencing). His team is multilingual, communicating in Portuguese, English, German, French and Spanish. At Venturini IP, Mr Venturini offers his clients patent expertise across diverse technology industries, among them information technology, telecom, oil & gas, pharmaceuticals, biotechnology, chemicals and petrochemicals, and R&D matters. He has also represented clients in pro bono cases. In 2018, for example, he assisted the Public Interest Intellectual Property Advisers (PIIPA) as technical adviser for Saint Lucia’s United Nations Development Program (UNDP) – the Global Environment Facility (GEF) Knowledge Fair. Mr Venturini is frequently recognised in publications such as Leaders League and the IAM Patent 1000 (every year since 2017).
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Venturini IP Praça Pio X, 89 Suite 202 Rio de Janeiro 20040-020 Brazil T +55 21 2081 6990
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Vianna, João Luis D’Orey Facco
Senior Partner – Kasznar Leonardos joao.vianna@kasznarleonardos.com | www.kasznarleonardos.com
João Luis D’Orey Facco Vianna is a senior partner at Kasznar Leonardos and leads the firm’s patent prosecution department. He is an expert in the medical, pharma and biotech fields, and acts in patent applications (involving technical and administrative aspects), patent drafting, foreign filing and prosecution abroad. Mr Vianna graduated in medicine from the Federal University of Rio de Janeiro (1985) and in law from Candido Mendes University (1998). He also has a postgraduate qualification in immunopathology from the Pontifical Catholic University of Rio de Janeiro (1988) and a master’s in immunology from King’s College London (1991). From 1989 to 1991 he was a research fellow at the Lupus Research Unit at The Rayne Institute in St Thomas’ Hospital, London. He was admitted to the Brazilian Bar in 1999. Mr Vianna is a member of the International Association for the Protection of Intellectual Property, the Brazilian Association of Industrial Property Agents, one of the board directors of the Brazilian Association of Intellectual Property and counsel of the Portuguese Chamber of Rio de Janeiro. Mr Vianna speaks English, Portuguese and French.
Kasznar Leonardos Rua Teófilo Otoni 63 5th to 7th floors Rio de Janeiro 20090-080 Brazil T +55 21 2113 1919 F +55 21 2113 1920 See firm profile p1188 Professional associations • ABAPI • ABPI • AIPPI
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IAM Patent 1000 1147
Chile
There’s a lot in the pipeline that could significantly impact on patent and other laws in Chile. Negotiations on the modernisation of the trade component of the EU-Chile Association Agreement continue to make progress, with multiple rounds of talks taking place over the past two years. Efforts to amend the IP Code and introduce provisional applications, for example, also continue – although they have slowed down of late as a result of the pandemic diverting attention to more immediate issues. In October 2020, an overwhelming majority of Chileans voted for the creation of a new constitution which will have significant implications for the country’s socio-economic and legal framework.
Albagli Zaliasnik SpA
Distinguished by its deep life sciences industry knowledge and facility for patent litigation, Albagli Zaliasnik provides essential support to pharmaceutical, biotechnology, food and beverage and agro-chemical companies as they navigate complex infringement issues and matters before the Chilean health and drug and competition authorities. Also adept at prosecution and crossborder transactions, the set offers a sophisticated, well-rounded service. Notable recent highlights include defending Abbott Laboratories in a battle with Bayer over two of the world’s most common oral contraceptives – Abbott’s Femelle and Bayer’s Yasmin. Joining forces to secure a crucial first-instance win for their client, Ariela Agosin, Daniel López and Eugenio Gormáz form the backbone of the patent practice. The group’s senior partner, Agosin capitalises on blended IP, competition and regulatory know-how and litigation experience to make the difference: “She is a quick study on technology and a practical, clearsighted adviser.” López has similarly broad horizons, making him an asset to companies in any regulated industry; while his contributions as a member of litigation teams always add tremendous value. Well deserving of his promotion to the partnership in May 2020, IP group director Gormáz oversees filing activities and manages portfolios with acute attention to detail, and dispenses thoughtful strategic counsel to his many life sciences followers.
Alessandri
As elite IP firms around the world, Fortune 500s and Chilean innovators all know well, Alessandri produces high-quality patent work and outcomes. Fielding a multi-disciplinary team, it helps clients to procure robust, commercially valuable rights; exploit them for business purposes; and enforce or defend them in infringement scenarios. Sources appreciate its “thorough technical expertise, open lines of communication and global view”, and have particularly good things to say about Santiago Ortúzar, who presides over the practice. “Santiago
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is incredibly responsive and knowledgeable, and presents options where other Chilean firms don’t seem able to. He isn’t impulsive, but gives calculated advice; and he makes difficult patent processes clean and easy for clients.” One source reflects: “With his support, we have developed a number of patent applications, all of which have been granted worldwide without any rejection. He’s a key partner to us and fundamental to the success of our portfolio.” He has a superb hit rate in patent litigation, too, and even has a victory at the US International Trade Commission to his name. He frequently collaborates with Rodrigo Velasco Alessandri, who also brings vital leadership as managing partner. Velasco Alessandri has a refined understanding of business risk, which he applies to great effect in transactional and contentious scenarios. Recommended for the first time this year, Fernando López is a seasoned engineer and former Chilean patent office examiner who gives the group technical muscle. Highlighted as a future leader of the practice, Rodrigo Valenzuela is another name to keep on the radar for those seeking a good IP and data privacy generalist.
Baker McKenzie
Baker McKenzie may be defined by its global capabilities, but its local offices are no less deserving of credit when judged on their own merits. When instructing the firm in Chile, for example, clients enjoy a sterling service from Valentina Venturelli with respect to the filing of both patents and trademarks. Venturelli is intimately familiar with every nuance of prosecution at the National Institute of Industrial Property (INAPI) and orchestrates successful registrations with impressive efficiency. Protecting rights internationally is also a daily feature of her practice, which she carries out with aplomb.
Beuchat, Barros & Pfenniger
Engaged in patenting activity in the mining, life sciences, agrochemical and high-technology domains for more than five decades, Beuchat, Barros & Pfenniger supplies mature advice on prosecution,
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Chile Firms Carey Sargent & Krahn Albagli Zaliasnik SpA Alessandri ClarkeModet
See p954
Claro & Cia Johansson & Langlois Silva Villaseca Abogados Baker McKenzie Beuchat, Barros & Pfenniger Covarrubias & Cía Porzio Ríos García
FOSFOQUIM; and in representing a prestigious Chilean university and a top global research-driven pharmaceutical company. Whether in prosecution or litigation – another area of proficiency – Carey showcases an affinity for cross-border strategising in Latin America and beyond. Partners Francisco Carey and Guillermo Carey form the dynamic pairing at the epicentre of this practice. Francisco makes light work of complex contentious and transactional briefs, and is among the most commercially minded practitioners in the country; so too Guillermo, a life sciences authority, IP all-rounder and data privacy star. Next up in terms of seniority, Fernando García shines as a big-picture thinker with an intuitive grasp of the pharmaceutical sector and the role that intangible assets play within it. Jorge Fuentes is the group’s senior patent specialist and is a repository of trust when it comes to technical matters and prosecution; his background is in mechanical engineering. Rising star Tabata Santelices – who makes her debut in the rankings alongside Fuentes – is smartly cultivating a broad licensing, litigation and prosecution skillset in all aspects of intellectual property, setting herself up for future success whichever way the IP winds blow.
ClarkeModet
tenacious support in litigation, and insightful opinions and analyses on freedom to operate and myriad other issues. Through its representations and extracurricular activities, the team has made an indelible contribution to the advancement of the Chilean IP ecosystem. Critical in sustaining its lofty reputation is Andrés Melossi Jiménez, an internationally wellconnected partner and a go-to for foreign companies and referring law firms. One overseas source comments: “If we have something in Chile, we send it directly to Andrés – he’s a great and reliable IP expert whose service is extremely high quality.”
ClarkeModet excels on everything from prior art searches to strategic counselling, application drafting and patent prosecution and maintenance. It deploys well-configured systems to obtain patents both in Chile and abroad, and fulfils its role “with exceptional timeliness and responsiveness”. The local managing director is Ignacio Mattar, who has standout credentials in industrial civil engineering, chemical engineering and technological innovation and entrepreneurship. He reads the patent landscape with unerring accuracy. Technical and legal services manager Danica Mardesic has played a key role in developing the firm’s consulting, data protection and plant varieties practices. See p954 for firm profile
Carey
Claro & Cia
Unrivalled in terms of bench depth in intellectual property, Carey has the largest number of individual representatives in the IAM Patent 1000 Chile rankings for 2021. The first choice of leading multinationals and domestic businesses, the team overlays its knowledge of patent law with a strategic approach that generates a lot of repeat business. Responsible for roughly 20% of the market’s patent applications, the firm is richly experienced in prosecution and has recently put its learnings to good use in successfully registering an important patent for Chilean chemical concern
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The commercial touch that Claro brings to intellectual property lends itself well to patent transactional work – one of several fortes for this eminent fullservice player. With a flair for complex problem solving, the ensemble also performs admirably on patent procurement and oppositions matters, drawing strength from the efficiency of its cuttingedge software and case management tools. Another advantage is conferred by the leadership of Felipe Claro, whose illustrious career has encompassed myriad matters of first impression and cases with
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Chile Individuals Ariela Agosin Albagli Zaliasnik SpA Francisco Carey Carey Guillermo Carey Carey Felipe Claro Claro & Cia Juan Pablo Egaña Sargent & Krahn Felipe Langlois Johansson & Langlois Rodrigo Velasco Alessandri Alessandri Sebastian Alvarado Silva Cristián Barros Sargent & Krahn Jorge Fuentes Carey Fernando García Carey Eugenio Gormáz Albagli Zaliasnik SpA Rodrigo León Silva Daniel López Albagli Zaliasnik SpA Fernando López Alessandri Andrés Melossi Jiménez Beuchat, Barros & Pfenniger Eduardo Molina V Villaseca Abogados
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Santiago Ortúzar Alessandri Marcela Ramírez Johansson & Langlois Juan Francisco Reyes SCR Abogados Trinidad Rojas Claro & Cia Francisco Silva Silva Rodrigo Valenzuela Alessandri Valentina Venturelli Baker McKenzie (Chile) Loreto Vera C Villaseca Abogados Arturo Covarrubias Covarrubias & Cía Juan Alberto Diaz Wiechers Diaz Wiechers SA Andrés Grunewaldt Cabrera Silva Claus Krebs Claro & Cia Danica Mardesic ClarkeModet
See p1153
Ignacio Mattar ClarkeModet
See p1154
Tabata Santelices Carey
significant implications for the business concerns of the parties involved. His name resonates internationally. He has instilled a collaborative approach in the group and regularly teams up with Claus Krebs and Trinidad Rojas – as he did recently on behalf of Synthon to successfully cancel a Novartis patent in a result that ended more than five years of litigation. Krebs has chalked up two decades of
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Chile high-level patent and trademark practice, during which he has developed niche expertise in software. Effective cooperation with other departments in the firm is a hallmark of his approach: he’s always joining the dots to give complete advice. Much credit for the smooth management of the patent practice is owed to Trinidad Rojas, who has cracked the code when it comes to keeping household-name international clients happy.
Covarrubias & Cía
Maintaining its acuity in its strongholds of life sciences, mining and minerals, pulp and paper, chemicals and food and drink, Covarrubias & Cia has lately shown increased specialisation in regulatory law, plant varieties, energy innovation, artificial intelligence and robotics. This is a young, forwardthinking and proactive boutique that is constantly and conscientiously expanding its horizons. The integrative set-up of its team – comprised of seasoned lawyers, scientists, engineers, designers and paralegals – facilitates a well-rounded, dynamic service and encourages innovative thinking; together with its zippy speed and responsiveness, this has earned it a loyal following in the market. Managing partner Arturo Covarrubias supervises the group’s diverse activities, but emphasises litigation and enforcement in his client work. That said, he has also enjoyed some major wins in prosecution recently, such as a plant recombinant DNA patent obtained on behalf of Monsanto. Showcasing his regional knowhow, he also assisted CMPC Tissue – the largest paper company in Latin America – with the registration of a paper-dispensing patent in eight jurisdictions, which involved extensive freedom-to-operate reporting.
Johansson & Langlois
Foreign associates describe storied outfit Johansson & Langlois as a brilliant collaborator on patent matters in Chile: “We have always had a good relationship with the firm – it is quick to respond and its processes for prosecution work are smooth, so we never have any problems with our cases. When we require additional input, the team is always there for us to provide what we need. It has been our first port of call for patent filing in Chile for decades.” Another highlights the set’s professional approach and timely, informative replies. Keeping patrons satisfied in this way is a highly qualified group of professionals with expertise spanning the mechanical, chemical and electrical arts. They capitalise on finely calibrated workflow systems and technological tools to carry out their primary function efficiently, saving time for added-value strategic thinking and higher-level
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counselling. The group takes its cue from managing partner and head of patents Felipe Langlois, whose name is a byword for quality. Former patent office examiner Marcela Ramírez is the leading technical mind in the mechanical engineering and industrial designs space.
Porzio Ríos García
Porzio Ríos García’s IP offering is a sophisticated one: its lawyers have superb academic credentials, extensive practical experience and refined language and communication skills; while its technical staff collectively cover many scientific and engineering disciplines. Putting the focus on quality, the group takes to diverse patent prosecution, contractual and contentious tasks with equal finesse, while also providing insight on IP-adjacent areas such as e-commerce and data privacy. Cristóbal Porzio is a key contact for IP litigation and technology transactions.
Sargent & Krahn
“Sargent & Krahn has a rare depth of knowledge in intellectual property, especially patent law. The quality of its work is outstanding; as are its energy, enthusiasm and round-the-clock availability. Its professionals also have a thorough understanding of clients’ industry needs.” The latter point is all the more impressive considering the technical and sector diversity within the practice – the group spreads itself widely, though not thinly. Forming an incredibly effective pairing, Juan Pablo Egaña and Cristián Barros have lately reversed adverse decisions by INAPI on behalf of Syngenta and numerous other companies, proving their dexterity in Industrial Property Court proceedings. They have also prosecuted applications through to successful grant for the likes of Tencent and Dow Agrosciences, here again utilising their finely honed advocacy skills to overcome examiner objections. Egaña captains the side and is a veritable encyclopaedia of patent and regulatory law, with a dedicated following of pharmaceutical and agrochemical clients. Sources describe him as “amazing in court and one of the best in Chile”. Benefiting greatly from Egaña’s tutelage, senior associate Barros has proved himself indispensable since joining Sargent & Krahn a decade ago.
Silva
Silva runs one of the busiest and best patent filing services in the country, but doesn’t stop there: its cohesive team of lawyers and engineers supports clients across the patent lifecycle, with an inclination
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Chile for complex litigation and transactional assignments. The firm has a sterling reputation among Chilean universities, but is also popular with domestic innovators, from which it garners effusive reviews. One referee comments: “Working closely with us as a team, Silva’s professionals write the best patents and protect what matters most in the strongest way possible. They understand the commercial value of our new ideas and help us to make better decisions on protecting and using them. Thanks to Silva, we have IP policies and processes that are better suited to our growing innovation efforts.” The key contacts here are partners Rodrigo León, Francisco Silva and Andrés Grunewaldt Cabrera, and associate Sebastian Alvarado. Demonstrating keen strategic vision, León custom designs IP approaches that have a hugely positive impact on the academic institutions and companies that he represents; these include Gilead Sciences, which he is assisting with its HIV and HCV patent portfolios. Silva blends rigorous regulatory knowledge into the practice; while Grunewaldt stands out as the squad’s leading litigator. Alvarado serves as patent director, while also executing flawlessly on prosecution and portfolio management instructions.
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Villaseca Abogados
Reputable IP and corporate outfit Villaseca has a rich tradition protecting the cornerstone innovations of homegrown commercial enterprises and academic institutions, as well as high-flying international companies. Well-equipped for challenging prosecution and dispute resolution mandates, Villaseca is a fitting destination for one-stop IP shopping. A high-level strategist with vast experience, Eduardo Molina is the first name on the team sheet. Also recommended is Loreto Vera, an astute portfolio developer with a focus on the life sciences.
Other recommended experts
Juan Alberto Diaz Wiechers is an international IP thinker who has lived and been educated in multiple countries. He is sought after for on-point counsel on a wide range of patent, trademark and other IP matters, as well as his special expertise in plant varieties. He is the founder of DiazWiechers. “Juan Francisco Reyes gives helpful, clear and reliable advice and a swift and friendly service. He is a brilliant patent lawyer, but also an expert in numerous other fields such as tax and employment law.” SCR Abogados is his base of operations.
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Mardesic, Danica
Technical and Legal Services Manager – ClarkeModet dmardesic@clarkemodet.cl | www.clarkemodet.com
An attorney at law with over 15 years of experience in both the public and private sectors, Danica Mardesic specialises in intellectual property, innovation, entrepreneurship and venture capital. She is the technical and legal services manager at ClarkeModet Chile and a mentor for entrepreneurs at ADN Mentores and the Founder Institute, as well as a member of the expert panel of Madri+d Foundation. Ms Mardesic was the consulting manager and business angels network manager at Administradora de Fondos de Inversión Dadneo SA and senior IP adviser at Jarry IP Law Firm (2016-2019). She was a founding partner of Intangible Ltda, an IP and technology transfer consulting company (2011-2016). Between 2006 and 2010, she worked at Chile’s National Institute of Industrial Property as deputy director of patents (senior public management), curator of patents and patent legal secretary. Ms Mardesic was assembly president of the Paris Union of WIPO’s Paris Convention for the Protection of Intellectual Property in 20092010. In 2009 she was responsible for the deposit in Geneva and implementation in Chile of the Patent Cooperation Treaty (PCT). Ms Mardesic has attended specialist IP courses at the EPO, the Mexican Institute of Industrial Property, the Peruvian National Institute for the Defence of Free Competition and the Protection of Intellectual Property, Sweden’s CBM-SEI and International Development Cooperation Agency, WIPO and Brazil’s National Institute of Industrial Property. She has also taken part in international forums, such as the WIPO PCT Working Group, the General Assembly of the WIPO Member States and the Asia-Pacific Economic Cooperation Forum. Ms Mardesic has written on intellectual property for the Foundation for Agrarian Innovation (FIA), within the framework of the FIA-PIPRA Programme (2012 and 2013) and on angel investment for the Chilean government’s economic development agency CORFO (2018). Ms Mardesic teaches intellectual property at different universities and entrepreneurship centres. She is a member of the Chilean Association of Intellectual Property and the Network of Technological Managers of Chile.
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ClarkeModet Apoquindo 3669, Of 901 9th floor, Las Condes 7550190 Santiago Chile T +56 2 2433 6830 F +56 2 243 36831 See firm profile p954 Professional associations • ACHIPI • Founder Institute • Red GT
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Mattar, Ignacio
General Manager, ClarkeModet Chile – ClarkeModet imattar@clarkemodet.cl | www.clarkemodet.com
Ignacio Mattar is the general manager of ClarkeModet Chile. He has 15 years of experience in intellectual property. Mr Mattar first entered the world of patents in Madrid in 2007, carrying out patent analysis as a patent technician, later specialising in the area of technological surveillance. At ClarkeModet Chile, he had the difficult task as manager of the technology consulting and surveillance department of introducing technology surveillance and intelligence to the local market, conducting seminars in both the private and public sectors. Mr Mattar has extensive knowledge in matters regarding technological intelligence, specifically market and IP assessment, evaluation and screening of technologies for their subsequent transfer to the market. His broad business vision has enabled him to specialise in the development of protection strategies that take into account the complete innovation process and are always focused on the client’s business goals. Mr Mattar has lectured at various universities and been an adviser on industrial property and commercial strategy to projects at BootCamp-Brain Chile. As a member of the Licensing Executives Society Chile, he has given talks on topics related to blockchain and trade secret. Mr Mattar is an industrial civil engineer with a degree in chemical engineering from the University of Chile; he holds a master’s in technological innovation from the Federico Santa María Technical University and another in service economy from the Autonomous University of Madrid.
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ClarkeModet Apoquindo 3669, Of 901 9th floor, Las Condes 7550190 Santiago Chile T +562 2433 6830 F +56 224336831 See firm profile p954
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Colombia
Prior to the global pandemic, which has caused a severe recession in Colombia as in other markets, strong economic development gave rise to new ambitions and fuelled desire to turn Colombia into the Silicon Valley of Latin America. The “Orange Economy” incentivised domestic entrepreneurialism and creativity, presenting new opportunities for overseas investors, prompting a general uptick in patenting activity. Added to that, the country’s IP and enforceability systems have improved greatly, particularly in comparison with those in nearby jurisdictions. As is clear in the accompanying lists and descriptions, there are plenty of high-quality firms to partner with, including many that have successfully styled themselves as regional hubs.
Baker McKenzie
A prestige name globally and throughout Latin America, Baker McKenzie is the go-to for complex patent and IP matters that need to be sewn up across borders. Its team in Colombia has excellent technical credentials and acute business-sense, making it a compelling proposition for dynamic companies as they evolve, navigate diverse patent regimes and keep competitors at arm’s length. Juan Pablo Concha Delgado, an advisory and enforcement ace whose regional coordination of matters is seamless, provides excellent leadership. He is a repository of trust for several top pharmaceutical and biotechnology companies, as is María Ximena Guavita, a chemical engineer with precision prosecution skills.
Brigard Castro
An IP reference in Colombia for decades, Brigard Castro is unwavering in its commitment to quality, manifested in armoured patent protection for clients’ crown-jewel assets, and a thorough and responsive service. Recent developments for the set include increased international filing activity and the addition of Juan Pablo Cadena to the IAM Patent 1000 rankings for 2021. Recommended by overseas associates for his hands-on support throughout all phases of patent prosecution, Cadena is also an expert litigator across the IP rights spectrum. He forms an excellent pairing with patent agent and pharmacist Julián Ricardo Diaz, a distinguished prosecutor, opinion giver and strategist. Together they have handled important matters for Rhizen Pharmaceuticals and Nippon Soda, persuasively overcoming examiner objections at the Superintendence of Industry and Commerce.
Castellanos & Co
Boasting an incredible success rate in prosecuting patent applications through to grant, multilingual Castellanos & Co is the first choice of prestigious companies and law firms from all over the world. It’s not just the results that are appreciated – so, too, is the service, which is characterised by close senior-
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level attention, efficiency and cost-effectiveness. Practice growth has been the big story in recent years – the percentage of patent applications it files in Colombia is steadily increasing. Notably, the team’s mastery of the life sciences has attracted new instructions from biotechnology innovators, for whom Margarita Castellanos has shown great proficiency in securing patents that are broad in scope and enforceable. Margarita heads the patent and legal departments and is a deft prosecutor and portfolio manager with a global view. Managing partner Ximena Castellanos focuses predominantly on brands but takes advantage of broad IP expertise to help those with diverse portfolios.
Cavelier Abogados
When it comes to substantive patent expertise and its timely, consistent and innovative delivery, Cavelier knocks it out of the park. A well-specced team of in-house technical experts prepares and prosecutes patents across a kaleidoscopic range of technologies. The set acts for a diverse clientele consisting of domestic businesses – both start-ups or established outfits – academic institutions and elite international companies. Clients benefit from the cultivated regional know-how built up by Andrés Rincón and his colleagues, and look to the firm to guide strategy in and outside Colombia. Rincón has strived to refine Cavelier’s patent practice and been immensely successful. A superb all-rounder, he prosecutes, litigates and advises with alacrity and is endorsed by contemporaries as “a pragmatic, clear-sighted partner with great experience”. Senior associate Carolina Vargas supervises the technical team. She comes from a chemistry background and does a flawless job managing portfolios in multiple jurisdictions, many of which present unique challenges.
ClarkeModet
ClarkeModet Colombia is ideally situated to assist rights holders with intangible asset protection and management across multiple territories – the whole
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Colombia Spanish and Portuguese-speaking world, in fact. The firm’s capacity to handle the largest portfolios is hard to match. The local team gives meticulous advice to the healthcare sector but works across many industries for international companies and Colombian innovators, academic and commercial, with a knack for drafting clear, concise claims and responding to office actions with all the right detail. The team also goes the extra mile conducting IP training for clients and placing new technical tools at their disposal. Key contacts include prosecution manager Juliana González and technical lead Norberto Rodríguez Acosta. See p954 for firm profile
Cuesta & Asociados Ltd
Intellectual property is a central plank of Cuesta & Asociados’ well-rounded business legal service – it launched its patent practice when it set up shop nearly 35 years ago. The team lends vital expertise and produces error-free work through all phases of the prosecution process, taking care of pharmaceutical, chemical, mechanical engineering and communications briefs with the minimum of fuss. Diana Romero captains the IP department and sets a high standard for her team of patent attorneys and engineers.
Gómez-Pinzón Zuleta Abogados Sa
Gómez-Pinzón drafts and prosecutes national patents in Colombia with precision and efficiently and successfully shepherding PCT applications to a close domestically and internationally. Its support of domestic innovators stands out; the group draws entrepreneurial clients not only from Bogotá and Medellín but also from a host of other Colombian cities, which gives a vibrant look to its practice. Gómez-Pinzón also impresses with its pro bono work and has teamed up with WIPO’s Inventor Assistance Progam to assist those with limited means to protect their intellectual property. Recent high notes include securing instruction from Ecopetrol, Colombia’s largest petroleum company, to manage its international portfolio, prompting the firm to expand its already far-reaching network of high-calibre foreign associates. In charge of this is Juanita Pérez, a newly-minted partner who debuts in the listings this year in recognition of her prosecution and litigation expertise and client commitment. She oversees the patent practice with formal group head Maurico Jaramillo Campuzano, an experienced partner with a deft touch procuring and commercialising patents.
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Firms Cavelier Abogados Lloreda Camacho & Co OlarteMoure Brigard Castro Castellanos & Co ClarkeModet
See p954
Posse Herrera Ruiz Baker McKenzie Cuesta & Asociados Ltd Gómez-Pinzón Zuleta Abogados Sa Pons Colombia Raisbeck & Castro Triana Uribe & Michelsen
Lloreda Camacho & Co
Lloreda Camacho has perfected the art of managing, developing and optimising patent portfolios on a regional basis in Latin America and the Caribbean. This is hugely appreciated by prestigious international patrons such as Gilead Sciences, for whom the team – drawing on its expert knowledge of patent legislation and policy in 18 jurisdictions – manages around 1000 patent applications. For this key client – one of many who seek out its exacting services – 2020 was a vintage year successfully obtaining critical patent protection for blockbuster HIV and HCV drugs in Colombia and elsewhere. Taking the lead for Gilead and others are head of the patent and life sciences department Ana Maria Castro and technical director Nestor Bejarano Pérez, who both bring special qualities to the practice. Castro blends prosecution and litigation expertise and has an exceptional command of life sciences industry issues. Pérez knows how to press his case effectively at patent offices across the region. Putting some focus on the litigation offering, Lloreda Camacho has an enviable hit rate obtaining preliminary injunctions and doing so timeously.
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Colombia Maria Ximena Guavita Baker McKenzie
Individuals Ana Maria Castro Lloreda Camacho & Co
Mauricio Jaramillo Campuzano Gómez-Pinzón Zuleta Abogados Sa
Carlos R Olarte OlarteMoure
Andres Marquez Contexto Legal
Andrés Rincón Cavelier Abogados
Andrés Medina Triana Uribe & Michelsen
Luz Helena Adarve Dentons Cardenas & Cardenas
Carlos A Parra OlarteMoure
Alexander Agudelo OlarteMoure
Adriana Peñaranda H&A
Nestor Bejarano Pérez Lloreda Camacho & Co
Juanita Pérez Gómez-Pinzón Zuleta Abogados Sa
Mónica Bonnett Posse Herrera Ruiz
Ian Raisbeck Raisbeck & Castro
Juan Pablo Cadena Brigard Castro
Norberto Rodríguez Acosta ClarkeModet
Helena Camargo Posse Herrera Ruiz
Diana Romero Cuesta & Asociados Ltd
Margarita Castellanos Castellanos & Co
Andrea Tobos Tobos Abogados
Ximena Castellanos Castellanos & Co
Fernando Triana Triana Uribe & Michelsen
Juan Pablo Concha Delgado Baker McKenzie
Carolina Vargas Cavelier Abogados
Julián Ricardo Díaz Brigard Castro Juliana González ClarkeModet
OlarteMoure
See p1159
Equally adept at obtaining, litigating and monetising patents, OlarteMoure is an essential ally throughout the business lifecycle. At the partner and associate level, it has professionals with dual legal and scientific backgrounds, giving it an ideal toolkit for holistic problem solving. It engages in this throughout Latin America and is entrusted with regional portfolios by major players in the pharmaceutical industry
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See p1160
such as Novartis, for which it has been successful in accelerating prosecution in the region using Patent Prosecution Highways. Spearheading campaigns and initiatives for Novartis, alongside Merck & Co, GlaxoSmithKline, Pfizer and Bristol Myers Squibb are Alexander Agudelo and Carlos Olarte, two partners around whom the practice revolves. As patent director, Agudelo keeps a cross-disciplinary team of 40 legal and technical professionals and paralegals well drilled. Cross-border patent protection and enforcement work is his forte. Olarte is the director of innovation, protection and technology transfer and has developed an excellent international reputation as a strategist. Before attending law school in the
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Colombia United States, he obtained a degree in biomedical and mechanical engineering. Joining his colleagues in the listings this year, Carlos Parra produces sterling results across the contentious/non-contentious divide for Colombian companies, universities, and research and development institutions. His unique selling points include concentrated licensing and IP commercialisation expertise and excellent connections in Japan, where he has worked previously – he leads the firm’s office in Tokyo.
Pons Colombia
Headquartered in Spain, PONS IP is now wellestablished in Colombia, having cut the ribbon on its Bogotá office seven years ago. Its team supervises the local patent activities of a cosmopolitan client base that includes technology companies from Europe, Asia, North America and Latin America while steadily making inroads with Colombian commercial entities and important universities. Making all the right plays at the Superintendence of Industry and Commerce, it unassumingly and successfully prosecutes applications while giving clients the benefit of astute strategic advice. Claudia Caro Ramirez is the office director and Nicolas Carvajal Reyes is head of the technical department.
Posse Herrera Ruiz
Garnering enthusiastic reviews from the market, Posse Herrera Ruiz is “unrivalled in its mastery of Colombian IP law and highly qualified to take care of all kinds of patent work”. “Prioritising its clients’ needs, it does an exceptional job protecting patents in a way that delivers a competitive edge.” Its service is “highly flexible”, too. “Diligent, reliable and focused”, Helena Camargo chairs an IP department that is highly prized for its one-stop regional patent and IP service. She and the team maintain close relationships with top-tier providers across Latin America – and further afield – enabling the swift and fruitful completion of assignments. This includes cross-border patent infringement briefs, such as a recent one for a software company grappling with problems in the United States, Mexico and Colombia. She and Monica Bonnett, the senior attorney in charge of the patent practice, collaborate constantly to support prominent US law firms (Bozicevic, Field & Francis being a notable one in the biotechnology space) and direct clients in the most meaningful way. The passion they have for their craft is plainly evident, not least in the quality of their work.
1158 IAM Patent 1000
Raisbeck & Castro
The practitioners at Raisbeck & Castro relish digging into the smallest technical details of inventions but also see the bigger commercial picture; in this way, they provide robust protection that addresses clients’ needs in competitive markets. The firm’s strong litigation practice accurately gauges chances of success and honestly presents opportunities and risks so that clients can choose the right path. Hands-on lead partner Ian Raisbeck impresses with his technical fluency – he has an electrical engineering and biomedical engineering background – and experienced-based practical counsel. His patrons include Syngenta, for which he undertakes complex prosecution.
Triana Uribe & Michelsen
Triana Uribe & Michelsen is a respected boutique with a well-integrated, multidisciplinary team that conducts thorough analyses of patent issues and designs and promptly implements well thoughtout solutions. Au fait with innovation in the pharmaceutical, biotechnology, and mechanical engineering domains, its team of seven patent lawyers is capably led by top strategist and litigator Fernando Triana and patent prosecution specialist Andrés Medina.
Other recommended experts
Luz Helena Adarve anchors the IP and technology and privacy and cybersecurity groups at Dentons in Bogotá. One of the country’s most seasoned IP experts, she puts her refined portfolio management and transactional skills to good use in satisfying clients’ business needs. Andres Marquez is an expert on matters at the intersection of intellectual property and competition law and leads Contexto’s practices in each area. He’s an excellent manager of high-value intellectual assets and a deft negotiator. Flying the flag of Spanish firm H&A, Adriana Peñaranda is a valued on-the-ground contact for clients engaged in IP matters in Latin America. She has a mature understanding of the innovation process and expertise on technology transfer that make her a hot commodity for universities. Andrea Tobos debuts in the IAM Patent 1000 for 2021 following endorsement by foreign associates for biotechnology patent prosecution. The former Cavelier and Baker McKenzie practitioner runs Tobos Intellectual Property, a quality-focused boutique whose business has grown through constant referrals through word of mouth.
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González, Juliana
Prosecution Manager – ClarkeModet jgonzalez@clarkemodet.com.co | www.clarkemodet.com
Juliana González is the prosecution manager at ClarkeModet Colombia. Her professional practice focuses on patent inventions, utility models, industrial designs and plant varieties prosecution in Colombia, including legal advice to national and foreign companies on the protection of their intangible assets in different fields of technology, strategic planning for the protection of these rights and legal actions related to these rights. Ms González is in charge of the filing, prosecution, monitoring and maintenance of rights in the fields mentioned above, as well as of oppositions and defence of applications, and judicial and administrative actions against unfavourable decisions (legal remedies, nullity actions). Ms González began her professional career as a lawyer examining and defending trademarks, designing and implementing strategies for the protection of rights in distinctive signs, conducting opposition proceedings and prosecuting defence applications, as well as supporting amicable resolution of disputes arising in the context of the registration of rights. Her experience includes: • managing national and international trademark and patent portfolios, including updating registers with any assignment agreements, changes of name and domicile, licence agreements, etc; and • training clients in industrial property rights and new technologies.
ClarkeModet Carrera 11 No. 86- 53 Piso 3, Edificio Segovia Bogotá Colombia T +571 618 108 F +571 635 0824 See firm profile p954
She has a JD from Universidad Externado de Colombia. Before joining ClarkeModet, Ms González was an associate at a well-known law firm in Bogotá, Colombia, where she advised clients on industrial property-related matters for 26 years.
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IAM Patent 1000 1159
Rodríguez Acosta, Norberto
Technical Services Consultant – ClarkeModet nrodriguez@clarkemodet.com.co | www.clarkemodet.com
Norberto Rodríguez Acosta is a senior consultant at ClarkeModet with more than 20 years of experience in intellectual property. He has extensive experience in patent processing and specialises in the fields of chemistry, pharmacy and biotechnology. His experience in pharmaceutical patents includes cases related to new chemical entities, antibodies, polymorphs and pharmaceutical formulation. He also has experience in advising educational entities, mainly Colombian universities, on the best way to protect their knowledge and technological developments. He has been advising Colombian companies in the food and petrochemical sectors, among others, in order to determine technologies susceptible to patent protection in Colombia and worldwide. Mr Rodríguez Acosta holds a degree in chemistry and a postgraduate degree in copyright, industrial property and new technologies from Externado de Colombia University. Prior to joining ClarkeModet, he was a researcher in the field of immunology at a prestigious centre for scientific research, working on the development of vaccine candidates against malaria under the direction of Manuel Elkin Patarroyo, a highly regarded researcher in the production of synthetic vaccines. In addition, Mr Rodríguez Acosta worked as laboratory and quality leader at the Environmental Laboratory of the Corporación Autónoma de Cundinamarca, which is one of the leading Colombian institutions in terms of environmental chemistry research.
1160 IAM Patent 1000
ClarkeModet Cra 11 No. 86 - 53 Piso 3 Edificio Segovio Bogotá Colombia T +571 618 1088 F +571 635 0824 See firm profile p954
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Mexico
The Federal Law on the Protection of Industrial Property came into force on 5 November 2020, replacing the former Industrial Property Law. The new law ushers in a host of changes with respect to patents – for example, it clarifies what is non-patentable; impedes the possibility of double patenting; affords new opportunities for obtaining supplementary protection certificates; and includes a Bolar exemption allowing for the import by third parties of patented active drug ingredients for the purpose of conducting tests in the final three years of patent protection. The reform is an important step towards harmonising Mexican IP law with international standards and gives those protecting their inventions in Mexico greater confidence.
Arochi & Lindner SC
Famed around the world for its enforcement prowess, Arochi brings the heat in patent and IP litigation. It tackles multi-layered cases in style, assembling the right combination of technical expertise, trial ability and commercial thinking for each brief. Its mastery of the art of persuasion is also on show on prosecution instructions: it has a knack for convincing examiners and overcoming objections. Taking the reins of the patent and copyright practice, Jorge Mier y Concha is a sought-after opinion giver, litigator and deal lawyer who is much appreciated for his clear-sighted strategies. Valuable leadership is also provided by senior partner Heidi Lindner, an elite pharmaceutical litigator and all-round life sciences industry expert; and mechanical engineer Juan Rodrigo Pimentel, who captains the prosecution division.
AVA
AVA provides a satisfyingly complete domestic and cross-border patent and IP service, and is thus a reliable one-stop shop for rights holders. Firmly embedded in the nation’s innovation scene, the firm established the Mexican Institute of Science and Technology, through which it promotes entrepreneurialism and inventorship. Clients enjoy hands-on support from high-calibre individuals such as Tomás Arankowsky, “an excellent lawyer with an unmatched ability to manage complex patent matters”.
Axkati Legal SC
Intellectual property is the focal practice of Axkati Legal, a pragmatic and creative boutique that understands not just how to obtain strong, enforceable patents, but also how to leverage them for commercial purposes. The group also litigates with poise and, while always ready for judicial action, has a flair for facilitating early resolutions. The patent practice is led by Martín Pereyra, whose all-round dexterity makes him a savvy problem solver. Alfredo Pineda Nieto is the other sure bet here and a crack litigator for any complex patent or trademark dispute.
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Baker McKenzie
Baker McKenzie’s Mexico contingent forms a vital component of a robust and well-integrated regional patent practice, which is staffed by 25 attorneys and technical experts. Taking advantage of the firm’s international reach and proprietary docketing systems and other technologies, the group provides an efficient service that always hits the spot. Local leadership falls on the shoulders of Marina HurtadoCruz, an astute manager of pharmaceutical patent portfolios. Overcoming objections and speedily securing much-needed rights, she helps innovative companies to explore new markets and make smart business moves. Clients hail her communication skills, affinity for detail, technical aptitude and strategic nous.
Basham, Ringe y Correa SC
Proficient in all areas of technology and adept at guiding optimal choices at every point in the patent lifecycle, Basham, Ringe y Correa makes light work of any patent instruction. The team also has an intuitive grasp of trade secret issues and can put in place multilayered protection that gives patrons confidence in pursuing their business goals. Partner-in-chief Claudio Ulloa capitalises on his mechanical and electrical engineering background to produce precise technical reports and percipient opinions. Colleague and celebrated thought leader Martín Michaus is another essential ally, particularly to those in need of high-level strategic counsel.
Becerril, Coca & Becerril, SC
“Tremendously strong in the patent area” and “an amazing firm with a highly qualified team”, is the verdict on time-tested international legal and business consultancy Becerril, Coca & Becerril. The firm works closely with clients to fine-tune their innovation approaches and IP strategies, giving them the tools to take their creativity to the next level. Primed and ready for litigation, the set is counted on by companies that find themselves in conflict with competitors. A well-configured team is anchored by
IAM Patent 1000 1161
Mexico Héctor Elias Chagoya, Fernando Becerril, Mariana González-Vargas and Juan Carlos Amaro, who each brings something special to the table. At the helm of the patent group, Chagoya is a meticulous practitioner with a mastery of all aspects of patent protection and commercialisation. Senior partner Becerril is admired for his relationship-building skills and telecommunications, software and business methods patents expertise. New to the listings this year, Vargas is endorsed for her life sciences proficiency; while Amaro is the top litigator on deck. See p1184 for firm profile
C&L Attorneys SC
Despite its relatively compact (though growing) size, dynamic boutique C&L covers all bases for clients and is thus a great one-stop IP shop. Zooming in on the patent side, the group displays finely honed technical insight in the life sciences and high-technology domains, giving a diverse feel to its client base and caseload. Brilliant at tailoring the ensemble’s service to fit the needs of patrons and carrying out assignments with a strong personal touch, Ana Castañeda takes the lead on patent matters. Her enthusiasm for deep-diving into the technology is illustrated by an outstanding track record in getting patent applications through to grant in Mexico and elsewhere. She has recently been managing prosecution for ZTE, among other technology heavy hitters. In his element on complex pharmaceutical disputes, Jorge Léon supervises the litigation practice with a hawkish eye.
Calderón & De La Sierra
Sophisticated outfit Calderón & De La Sierra stays sharp and ready for anything in intellectual property – one of several key practice areas alongside corporate, regulatory, litigation, and data privacy and cybersecurity. Its highly trained, scientifically knowledgeable squad of high-calibre professionals shines in all phases of the patent lifecycle. The team takes its cue from founding and managing partner Carlos Pérez De La Sierra, an “amazing pharmaceutical litigator” and “market-leading IP lawyer”. César Ramos and Alberto Huerta Bleck also help set the standard of excellence – Ramos as head of the patent practice and chief prosecution expert, and Huerta Bleck as another seasoned litigator.
ClarkeModet
ClarkeModet earns significant expanded coverage in the IAM Patent 1000 for 2021, courtesy of its inaugural inclusion in the Mexico rankings, in which no less than four of leading representatives also make the cut. “Committed, consistent and in full control of the
1162 IAM Patent 1000
Firms: litigation Arochi & Lindner SC OLIVARES Basham, Ringe y Correa SC Calderón & De La Sierra Uhthoff, Gómez Vega & Uhthoff, SC
See p1200
AVA Becerril, Coca & Becerril, SC
See p1184
Müggenburg, Gorches y Peñalosa, SC
matters under its care”, the local group impresses with its efficient, quality-controlled representation of industry-leading innovators. The broader firm is clearly distinguished by its international reach and capability, which the practitioners in Mexico lean heavily into in supporting clients with their every need. The top names on the team sheet are technical and legal services director Tanya Escamilla; Nahanny Canal, who takes the lead on prosecution; forward-thinking cross-border IP strategist and counsellor Jorge Carpinteyro; and technical services manager Tania Lopez. See p954 for firm profile
Dumont Bergman Bider & Co SC
Specialised IP outfit Dumont garners glowing reports from the market: “Its lawyers are responsive, proactive, experienced, hands-on and responsive, and provide great support on a timely basis.” Unerring attention to detail is a hallmark of its service, reflected in its fine-grained understanding of both the technical complexities and the commercial potential of clients’ inventions, and in the strength of the protections it puts in place. A mastermind in this regard is patent practice head Victor Garrido: “Victor consistently proves himself to be extremely knowledgeable about all aspects of Mexican patent law and great at implementing effective strategies.” Since joining the firm over a decade ago, he has developed its patent client portfolio tremendously in the life sciences and numerous other industry sectors. The team around him is a large one and puts its resources to good use on behalf of prestigious companies such as Boehringer Ingelheim and Samsung Electronics.
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Mexico Firms: prosecution
Arochi & Lindner SC
realise them in a time and cost-effective manner. This quality is instilled by founding partner Diego Rossi, an abundantly experienced, internationally wellconnected professional who takes a personal interest in clients’ concerns. For life sciences patent prosecution expertise, the key contact is Marcelo Blanco, who has an exceptional ability to navigate matters through the Mexican Patent and Trademark Office, as well as many of its foreign counterparts. Like Rossi in his general manager role, Blanco brings staunch leadership to the firm, which he serves as patent director.
Calderón & De La Sierra
Müggenburg, Gorches y Peñalosa, SC
Basham, Ringe y Correa SC Becerril, Coca & Becerril, SC
See p1184
OLIVARESX Uhthoff, Gómez Vega & Uhthoff, SC
See p1200
IBERBRAND SC Panamericana de Patentes y Marcas SC AVA Axkati Legal SC Baker McKenzie C&L Attorneys SC ClarkeModet
See p954
Dumont Bergman Bider & Co SC H&A
H&A
With a solid footprint in Europe and Latin America, H&A is ideally situated to handle cross-border patent protection in the Spanish and Portuguese-speaking worlds. “It uses its network very effectively and does a fantastic job dealing with challenging logistics and tight deadlines.” Keeping things running smoothly in Mexico is local director Eric Alávez, a chemical engineer with valuable industry insight in the energy sector. Burning brightly as a responsive, deeply committed practitioner, Karla Islas has a strong technical background in food chemistry, coupled with well-developed commercial nous.
IBERBRAND SC
Agile at procuring, enforcing and monetising rights, and demonstrating a complete command of the entire IP spectrum, IBERBRAND provides a satisfyingly holistic service to innovative companies. Creativity characterises its approach – the lawyers here see solutions that others don’t and design new ways to
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Müggenburg, Gorches y Peñalosa offers a comprehensive suite of corporate and litigation services, but is especially prized for its prowess in the field of intellectual property, which is a central pillar at the firm. It deftly dispatches prosecution, licensing and contentious briefs for a diverse range of clients, including major pharmaceutical companies. Overseeing the practice at the partner level, Esteban Gorches Guerrero has wisdom distilled from nearly three decades on the frontlines of IP development in Mexico. Seasoning also sets senior attorney Ana Esther Urquizo apart: she has engaged in prosecution matters for 25-plus years and is appreciated for her strategic insight.
OLIVARES
A market leader on the Mexican IP scene and a perennial IAM Patent 1000 gold-tier member, OLIVARES has a rich tradition of excellence in the patent space. Its well-integrated team of attorneys and technical specialists consistently obtains broad and enforceable patents without any wasted time or effort, and is skilled at managing and developing large patent portfolios both in Mexico and internationally. Sergio Olivares Jr, Daniel Sanchez, Armando Arenas and Alejandro Luna Fandiño enjoy eminent standing and form one of the strongest partner teams in the country. Olivares never lets the standard slip, as illustrated by his continued expansion of the firm’s horizons during the past three decades: over the years he has launched numerous specialised groups – including in regulatory and administrative law – which are complementary to the patent practice. Sánchez, Arenas and Luna have a flair for litigation and an enviable hit rate in all kinds of IP cases, making OLIVARES a go-to for the most complex disputes.
Panamericana de Patentes y Marcas SC Testament to the quality it offers, boutique Panamericana has lasting connections with many of its clients, some of which extend back more
IAM Patent 1000 1163
Mexico Enrique A Díaz Goodrich, Riquelme y Asociados AC
Individuals: litigation Heidi Lindner Arochi & Lindner SC
Luis Enrique Donnadieu Macías ELS - Peñalosa + Donnadieu
Alejandro Luna Fandiño OLIVARES Martín Michaus Basham, Ringe y Correa SC
Xavier Hadad-Rojas Uhthoff, Gómez Vega & Uhthoff, SC See p1173
Carlos Pérez De La Sierra Calderón & De La Sierra
Bernardo Herrerías Franco Hogan Lovells Jorge León C&L Attorneys SC
Esteban Gorches Guerrero Müggenburg, Gorches y Peñalosa, SC
José Juan Mendez MÉNDEZ + CORTÉS
Alberto Huerta Bleck Calderón & De La Sierra
Alfredo Pineda Nieto Axkati Legal SC
Elías Ríos Vila Abogados
Diego G Rossi IBERBRAND SC
Saúl Santoyo-Orozco Uhthoff, Gómez Vega & Uhthoff, SC
See p1175
Juan Carlos Amaro Becerril, Coca & Becerril, SC
See p1166
Armando Arenas OLIVARES
than five decades. All comers are treated to a seamless, cost-sensitive service that meets the most stringent requirements in terms of quality. The team maps out its approaches in line with the latest developments in intellectual property not just in Mexico, but internationally. Andres Esteva is the fulcrum round which the patent practice turns. The ambidextrous practitioner handles both prosecution and litigation briefs, giving him a keen understanding of the business value of intellectual property and how to position clients for maximum advantage in competitive markets.
Uhthoff, Gómez Vega & Uhthoff, SC
Venerable outfit Uhthoff, Gómez Vega & Uhthoff has been pacing the field of Mexican patent and IP practice for more than 115 years, giving it unmatched institutional knowledge of the market. Blending technical, legal and commercial expertise in a compelling way, its team – helmed by eminent senior partner and strategist Javier Uhthoff-Orive
1164 IAM Patent 1000
See p1171
Daniel Sanchez OLIVARES
– always finds ways to add value on strategically important rights acquisition, monetisation and enforcement assignments. Several team members receive special praise from research sources this year. Prosecution lead Eugenio Pérez is “extremely responsive” and an “outstanding patent agent with vast experience”. Contentious ace Xavier HadadRojas earns commendations as a “proactive and talented lawyer who drives superb results”. Another consummate litigator, Saúl Santoyo-Orozco “knows Mexican and international patent law, and provides practical, solutions-oriented advice that demonstrates excellent judgement”. See p1200 for firm profile
Other recommended experts
A “fantastic lawyer at an excellent firm”, Enrique Díaz of Goodrich, Riquelme y Asociados is a popular choice among peers for conflict of interest referrals. He has a ton of Mexican and Latin American IP know-how encompassing all facets of the protection, maintenance and enforcement of intellectual assets. At ELS – Peñalosa + Donnadieu, Luis Enrique Donnadieu Macías has smart patent strategies at his fingertips for any contentious or non-contentious situation. Well prepared in the brands and copyright
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Mexico Rafael Heres Legarreta y Asociados SC
Individuals: prosecution Eric Alávez H&A
Bernardo Herrerías Franco Hogan Lovells
Tomás Arankowsky AVA Fernando Becerril Becerril, Coca & Becerril, SC
Karla Islas H&A See p1167
Marcelo Blanco IBERBRAND SC
Sergio L Olivares Jr OLIVARES
Jorge Carpinteyro ClarkeModet
Martin Pereyra Axkati Legal SC
Ana Castaneda C&L Attorneys SC
Eugenio Pérez Uhthoff, Gómez Vega & Uhthoff, SC
Héctor Elias Chagoya Becerril, Coca & Becerril, SC
See p1174
Juan Rodrigo Pimentel Arochi & Lindner SC
Andrés Esteva Panamericana de Patentes y Marcas SC
Cesar Ramos Calderón & De La Sierra
Ana Esther Urquizo Müggenburg, Gorches y Peñalosa, SC Victor Garrido Dumont Bergman Bider & Co SC
See p1170
area, too, he is a walking one-stop IP shop. Bernardo Herrerías Franco is “among the most capable and knowledgeable attorneys in Mexico. A great pleasure to work with, he is always available to discuss things and provides timely, well-developed answers to all questions”. He leads the Mexican IP practice at Hogan Lovells. Rafael Heres of Legarreta y Asociados is brilliant on the service aspects of his craft – he responds promptly, gives personal attention to matters and is competitive on fees. With 20-plus years of patent prosecution and transactions experience to draw upon, he also delivers on quality. An invaluable support on patent procurement and licensing instructions, José Juan Mendez of MÉNDEZ + CORTÉS has an enviable international
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See p1172
Jorge Mier y Concha Arochi & Lindner SC
Nahanny Canal ClarkeModet
Mariana González-Vargas Becerril, Coca & Becerril, SC
Tania Lopez ClarkeModet
Javier Uhthoff-Orive Uhthoff, Gómez Vega & Uhthoff, SC
See p1176
Claudio Ulloa Basham, Ringe y Correa SC
See p1177
following and is called on by a host of top companies and leading foreign law firms. Recent highlights include filings for Volkswagen and Glenmark Pharmaceuticals. Elías Ríos is “an extremely diligent lawyer whose responses are immediate, direct, clear, concise and easy to understand. He pays great attention to detail and is quick to understand his clients’ needs”. He undertakes a mix of prosecution and litigation work at VILA Abogados. TMI Abogados thrives at the intersection of different practice areas and is a great pick for complex multi-layered matters involving intellectual property, regulatory issues, data concerns and more. Leading the firm’s interdisciplinary team, Kiyoshi Tsuru has a passion for technology which pervades the entire group in a way that helps drive favourable outcomes.
IAM Patent 1000 1165
Amaro, Juan Carlos
Partner – Becerril Coca & Becerril, SC camaro@bcb.com.mx | www.bcb.com.mx
Juan Carlos Amaro is an attorney at law (graduated cum laude in 2002), with a post-graduate degree in constitutional law from the PanAmerican University and a certificate in international legal English from Cambridge University (2006). Mr Amaro joined Becerril Coca & Becerril (BC&B) in 2004 and became a partner in 2010. With close to 20 years of experience, his practice focuses on intellectual property, administrative litigation, constitutional law and international trade. Areas of practice • IP litigation • Constitutional law • Administrative litigation • Corporate and commercial law • IP due diligence • Commercial contracts • International trade • Privacy and data protection Mr Amaro has been leading the IP litigation group, the trademark and copyright group, and the corporate and commercial law group at BC&B since 2010. He counsels clients on their IP and commercial global strategies and has represented domestic and international clients in more than 500 litigation cases. Memberships • Mexican Association for the Protection of Intellectual Property (AMPPI) • International Chamber of Commerce • Mexican Bar Association • Intellectual Property Owners • INTA
Becerril Coca & Becerril, SC Leibnitz 117 PH1 Col Anzures, Alcaldía Miguel Hidalgo Mexico City ZC 11590 Mexico T +52 55 5263 8730 F +52 55 5263 8731 See firm profile p1184 Professional associations • ICC • INTA • IPO
Awards and publications • Recognised as an “IP Star” by Managing Intellectual Property for several years including 2017 • Collaborated to the first edition of La Propiedad Intelectual y la Investigación Farmacéutica • Collaborated to the first edition of La Ley de la Propiedad Industrial comentada por AMPPI • Collaborated to the first edition of La Ley Federal del Derecho de Autor comentada por AMPPI Other relevant activities Mr Amaro has been invited to participate in several national and international forums on IP and administrative matters and has contributed to numerous domestic and foreign associations with opinions relating to the legal IP framework. He has also been invited by the Japan External Trade Organisation and the Japan Patent Attorneys Association to speak at various seminars in Tokyo and Osaka on the subject of the Mexican litigation practice.
1166 IAM Patent 1000
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Becerril, Fernando
Partner – Becerril, Coca & Becerril, SC fbecerril@bcb.com.mx | www.bcb.com.mx
Fernando Becerril is a mechanical and electrical engineer who specialises in electronics and digital systems. He graduated from the Universidad Nacional Autónoma de México. He joined Becerril, Coca & Becerril in 1990 and became director of IP management in 2000. In May 2010 he was invited to become a partner and is currently senior partner. His patent practice focuses on telecommunications, business methods and software; in addition, he is deeply involved in the business development of the firm and responsible for the institutional relations with national and international authorities and associations. He has received numerous accolades, including being named a Patent IP Star (2014-2020) and a Trademark IP Star (2017-2020) by Managing Intellectual Property as well as IAM Patent 1000: The World’s Leading Patent Professionals 2020 by Intellectual Asset Management. He was recognised as a World Business Leader in 2018 by the World Confederation of Businesses. Mr Becerril frequently participates as a speaker and moderator in IP forums in Mexico and abroad. He has published several articles relating to domain names, business methods and software patents on several media platforms. He also regularly contributes to well-known publications such as Entrepreneur and Mexican magazine Alto Nivel. Mr Becerril is a member of the International Association for the Protection of Intellectual Property, the International Trademark Association, the Inter-American Association of Intellectual Property and the Mexican Association for Protection of Intellectual Property of which he was President from 2017 to 2018.
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Becerril, Coca & Becerril, SC Leibnitz 117 PH1 Col Anzures Alcaldía Miguel Hidalgo Mexico City ZC 11590 Mexico T +52 55 5263 8730 F +52 55 5263 8731 See firm profile p1184 Professional associations • AIPPI • ASIPI • INTA
IAM Patent 1000 1167
Canal, Nahanny
Prosecution Manager – ClarkeModet ncanal@clarkemodet.com.mx | www.clarkemodet.com
Nahanny Canal is the prosecution director of ClarkeModet in Mexico, with more than 20 years of experience in the fields of inventions (patents, utility models, industrial designs and integrated circuit layout designs) and plant varieties, management, consultancy, promotion and relations with national and foreign clients. From 2013 to 2019, Ms Canal was patent director at the Mexican Patent and Trademark Office. She had previously been in charge of the patent department of several well-known IP firms. Ms Canal participated in the negotiations of the IP chapters in various international treaties, such as the Comprehensive and Progressive Agreement for Trans-Pacific Partnership, the USMexico-Canada Agreement and the European Union-Mexico Free Trade Agreement. During 2015 and 2016, she was vice president of the Standing Committee on the Law of Patents before the World Intellectual Property Organisation. Ms Canal has represented Mexico in national and international forums, such as the World Trade Organisation and the World Health Organisation. She also has wide experience as an educator, having lectured on IP and innovation at the most prestigious universities in Mexico, before federal and local authorities, chambers of commerce, and well-known associations in diverse sectors (eg, pharmaceuticals, medical devices, lawyers’ bars, sanitary regulation). She is an active member of the Mexican Association for the Protection of Intellectual Property and of the American Chamber of Commerce of Mexico, sitting in its Intellectual Property Committee.
ClarkeModet Av Insurgentes Sur 1647, Piso 15 Of 1502 San José Insurgentes Mexico City 03900 Mexico T +52 55 5340 2300 See firm profile p954
Education • Bachelor in chemical pharmaceutical biology
1168 IAM Patent 1000
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Carpinteyro, Jorge
Consulting Director – ClarkeModet jcarpinteyro@clarkemodet.com.mx | www.clarkemodet.com
Jorge Carpinteyro has 25 years of experience as a consultant in innovation, technology transfer and entrepreneurship. He develops projects in Europe, Africa and Latin America for organisations such as the Inter-American Development Bank, the European Commission, Innpulsa, Corfo, Senacyt, REDNACECYT, Colciencias, Conicyt and other multilaterals. Mr Carpinteyro is a specialist in the definition, implementation and evaluation of policies and projects for the development and promotion of innovation, technology transfer and entrepreneurship. His work has focused on strengthening the ability to innovate of several actors of the innovation (entrepreneurship, scientific and technological system), creating synergies between them and structuring triple-helix projects. He has developed various methodologies, such as: • the MAT technology appropriation matrix, to ensure the success of technology transfer processes; and • the IP Thinking methodology, which establishes as a context the knowledge generated by society and gathered in scientific and technological information on industrial property, which uses IP analysis mechanisms to solve problems. In the past two years, he has worked as consulting director at ClarkeModet México, developing projects focused on the monetisation of IP assets, design strategies to promote innovation through technological intelligence and building models of strategic management for intellectual property, as well as implementing strategies aimed at modernising the legal department of organisations by developing technological solutions for intellectual property (‘IPtech’).
ClarkeModet Av Insurgentes Sur 1647, Piso 15 Of 1502 San José Insurgentes Mexico City 03900 Mexico T +52 55 5340 2300 See firm profile p954
Education • Bachelor of industrial design, Autonomous Metropolitan University, Mexico • Master’s in management, design and development of new products, Polytechnic University of Valencia, Spain
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IAM Patent 1000 1169
Gonzalez-Vargas, Mariana Partner – Becerril, Coca & Becerril, SC mgonzalezv@bcb.com.mx | www.bcb.com.mx
Mariana Gonzalez-Vargas graduated from the National Autonomous University of Mexico (UNAM) in chemistry and law. She also holds a master’s in top management from UNAM and is a certified licensing professional. Ms Gonzalez-Vargas has experience in science research, including a research stay at Ohio State University in the field of characterisation of DNA bases by ultra-fast laser spectroscopy, as well as experience teaching chemistry. Ms Gonzalez-Vargas has more than 13 years of experience in intellectual property. She joined Becerril, Coca & Becerril in 2008 and has had a balanced practice covering patent prosecution, IP transactional matters and litigation, both locally and abroad. More specifically, her practice focuses on the areas of substantive issues relating to patent litigation, technology transfer, sanitary regulation (linkage system) and strategic knowledge management. She is also in charge of the firm’s technology transfer office. Ms Gonzalez-Vargas has taught several courses at universities and professional associations. She is a frequent participant in local and international IP forums and frequently publishes articles in different IP specialised media. She is secretary of the Mexican chapter of the Licensing Executives Society International, Latin America liaison of the Women in IP Committee of the American Intellectual Property Law Association, a member of the Patent Committee and Pro Bono Commission of the Mexican Association for the Protection of Intellectual Property (AMPPI) and a member of the Standing Committees on Commercialisation of IP and Biotechnology of the International Association for the Protection of Intellectual Property. In 2016 she won the Competition for Research Works on Intellectual Property organised by AMPPI with her thesis titled “Protection of Clinical Data of Biologics in Mexico”.
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Becerril, Coca & Becerril, SC Leibnitz 117 PH1 Col Anzures Del Miguel Hidalgo Mexico City 11590 Mexico T +52 5 55 263 8730 See firm profile p1184 Professional associations • AIPLA • AIPPI • LESI
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Hadad-Rojas, Xavier
Partner – Uhthoff, Gómez Vega & Uhthoff, SC xhadad@uhthoff.com.mx | www.uhthoff.com.mx
Xavier Hadad-Rojas has more than 17 years of experience in different areas of intellectual property, with a strong focus on litigation as he leads activities related to contentious matters for Uhthoff, Gomez Vega & Uhthoff. He also focuses on IP advisory and counselling, patent and trademark litigation, domain name disputes and anti-counterfeiting. Mr Hadad-Rojas is actively involved in relevant patent cases. He is an effective litigator with a unique attention to detail in matters related to both administrative appeals and judicial recourses. He began practising law at Uhthoff, Gomez Vega & Uhthoff in 2003 and became a partner in 2015. He holds a law degree from La Salle University (Mexico City) and a postgraduate degree in IP law from the Mexican Autonomous Institute of Technology. He is an active member of national and international organisations such as the Mexican Association for the Protection of Intellectual Property, where he is the current president of the Litigation Committee; the Mexican Bar Association; the International Anti-Counterfeiting Coalition; the International Trademark Association; the International Chamber of Commerce, leading as cochair of the Litigation Committee; and the European Communities Trademark Association, where he is an active member of the Anticounterfeiting Committee.
Uhthoff, Gómez Vega & Uhthoff, SC Hamburgo 260 Col Juarez Mexico City 06600 Mexico T +52 55 5533 5060 F +52 55 5208 8387 See firm profile p1200 Professional associations • AMPPI • ECTA • INTA
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IAM Patent 1000 1171
Lopez, Tania
Technical Services Manager – ClarkeModet tlopez@clarkemodet.com.mx | www.clarkemodet.com
Tania Lopez is an expert in inventions and creations protection in Mexico and the rest of Latin America, with thorough experience in technologies related to chemistry, bionics and life sciences. She has worked closely with multinational pharmaceutical and biological companies, as well as with start-ups, to design their patent strategy for optimal protection, defence and monetisation. Ms Lopez has considerable experience working in technology intelligence, focusing deeply on the analysis of patenting activity, patent landscaping, issuing technical opinions in infringement and nullity procedures, patentability analysis and, in general, the construction of strategies using patent information. Ms Lopez is the technical services manager and director of the technology transfer office at ClarkeModet México. She coordinates the technical projects around patents of a skilled team of consultants delivering effective strategies for a wide range of industries, including pharma, biotech, oil and gas, electronics, automotive and industry 4.0. Ms Lopez is a frequent lecturer at national and international forums organised by both private and public organisations. Furthermore, for over five years she has been co-author of the Mexico chapter in the Manual for the Handling of Applications for Patents, Designs and Trade Marks Throughout the World, also known as the Brown Book. She is also an active member of the Mexican Association for the Protection of Intellectual Property, the International Association for the Protection of Intellectual Property, the Mexican Network of Professionals in Innovation and Technology Transfer and the American Chamber of Commerce in Mexico, working in the Intellectual Property Committee.
ClarkeModet Av Insurgentes Sur 1647 Piso 15 Of 1502 San José Insurgentes Mexico City 03900 Mexico T +52 55 5340 2300 See firm profile p954 Professional associations • AMCHAM • AMPPI • Red OTT
Education • Biochemical engineering, specialising in food technology • Master’s in biotechnological sciences
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www.IAM-media.com
Michaus, Martín
Partner – Basham, Ringe y Correa SC mmichaus@basham.com.mx | www.basham.com.mx
Martín Michaus is a senior partner of Basham, Ringe y Correa SC. His practice is oriented towards consultancy and litigation in IP and unfair competition matters. He advises entrepreneurs, as well as national and international companies in different sectors of industry and services, on the development of strategies to protect their technology and on the enforcement of their rights, including patents, licences and industrial secrets. Mr Michaus also participates in the design, acquisition and protection of IP portfolios, including trademarks, copyright and new technologies, as well as in the negotiation and resolution of conflicts. He is a panellist of the WIPO Arbitration and Mediation Centre for trademark and domain name disputes, and an arbitrator of the Independent Film and TV Association. Mr Michaus is a former president of the Mexican Association for the Protection of Intellectual Property, the Mexican Group of the International Association for the Protection of Intellectual Property and the Inter-American Association of Intellectual Property. He is a member of the International Association for the Advancement of Teaching and Research in Intellectual Property, a former member of the Executive Committee of the Office and of the Board of Directors of the National Association of Lawyers of the Bar Association. He is an active member of the Mexican Bar Association and of various international associations such as the American Intellectual Property Law Association, the European Communities Trademark Association, the International Federation of Intellectual Property Attorneys and INTA. Mr Michaus is a regular contributor to various national and international IP publications and a lecturer and speaker on intellectual property at various national and foreign universities. He has been recognised in Chambers Global’s The World’s Leading Business Lawyers as a Leading Lawyer for the past five years and was awarded the title Thought Leader in the field of trademarks by Who’s Who Legal in 2017.
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Basham, Ringe y Correa SC Paseo De Los Tamarindos 400 A 9th Floor Bosques De Las Lomas Mexico City 05120 Mexico T +52 55 5261 0453 F +52 55 5261 0538 Professional associations • AIPLA • ASIPI • INTA
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Pérez, Eugenio
Partner – Uhthoff, Gómez Vega & Uhthoff, SC eugenioperez@uhthoff.com.mx | www.uhthoff.com.mx
Eugenio Pérez is a partner at Uhthoff in Mexico, where he leads the patent technical department. His main areas of expertise are mechanics, electronics, industrial designs, telecommunications and information technology. He oversees all matters related to technical advice for national and multinational companies regarding the protection of their patent portfolio in Mexico and abroad. Mr Pérez is an active member in several industry associations, including the Mexican Association for the Protection of Intellectual Property, as past chair of the Patent Committee (2008-2014) and current commissioner of the Educational Committee. He is also a member of the American Intellectual Property Law Association, participating as a regular speaker on patent matters in Mexico and abroad and deeply involved in the Latin America Committee, as co-chair (2016-2019) and previously responsible for the Mexican and the Central American regions (2011-2015). Mr Pérez holds an engineering degree from the Monterrey Institute of Technology and Higher Education and an industrial and intellectual property law diploma from the Pan-American University.
Uhthoff, Gómez Vega & Uhthoff SC Hamburgo 260 Col Juarez Mexico City 06600 Mexico T +52 55 5533 5060 See firm profile p1200 Professional associations • AIPLA • AMPPI
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Santoyo-Orozco, Saúl
Senior Partner – Uhthoff, Gómez Vega & Uhthoff, SC saulso@uhthoff.com.mx | www.uhthoff.com.mx
Saúl Santoyo-Orozco is a senior partner and the head of the litigation department at Uhthoff, Gomez Vega & Uhthoff. His practice focuses on IP litigation and enforcement, anti-piracy and anti-counterfeiting issues, domain names disputes and counselling. With extensive experience handling complex IP litigation, he has particular expertise in transcendental disputes involving patents. Mr Santoyo-Orozco is routinely involved in multidisciplinary cases, where he can advise clients on all the legal and technical aspects of their industrial, commercial, institutional or government litigious matters. Mr Santoyo provides his clients with well-thought-out, practical and efficient solutions to all their IP issues. He also designs and implements anti-counterfeiting programmes. Mr Santoyo-Orozco holds a law degree from the La Salle University Faculty of Law, Mexico City, and has completed postgraduate studies in IP, international commerce and internet law. He is the author of Well-Known Trademarks (1997) and co-author of the Mexican chapter in Global Patent Litigation: How and Where to Win, published by Bloomberg Press and now in its third edition. He is also the author of several articles on IP-related topics and has spoken publicly on these issues and lectured at several universities and associations. Mr Santoyo-Orozco holds leadership positions in several professional and industry associations and is a member of numerous others; he also regularly attends the meetings of the International Anti-counterfeiting Coalition, the International Trademark Association, the Mexican Association for the Protection of Intellectual Property, the Brazilian Association of Intellectual Property and MARQUES. He cochairs the firm’s Entertainment and Sports Law Committee.
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Uhthoff, Gómez Vega & Uhthoff, SC Hamburgo 260 Col Juarez Mexico City 06600 Mexico T +52 55 5533 5060 F +52 55 5208 8387 See firm profile p1200 Professional associations • IACC • INTA • MARQUES
IAM Patent 1000 1175
Uhthoff-Orive, Javier
Senior Partner – Uhthoff, Gómez Vega & Uhthoff, SC j.uhthoff@uhthoff.com.mx | www.uhthoff.com.mx
Javier Uhthoff-Orive is a senior partner at Uhthoff in Mexico, where he leads the patent department. He has vast experience in the representation of mostly multinational clients, protecting different types of innovations across a spectrum of industries. Mr Uhthoff-Orive has a distinguished international reputation in intellectual property – he is known not only for his patent expertise in Mexico, but also for providing global business solutions to some of the most innovative companies in the world. Mr Uhthoff-Orive began his practice at Uhthoff in 1984 and was appointed partner of the firm in 1989. He holds a degree in industrial property, transfer of technology, patents and trademarks, foreign investments and copyright from Anáhuac University in Mexico City. Mr Uhthoff-Orive also studied at the Japanese Institute of Invention and Innovation in Tokyo, obtaining a certification in foreign investment and industrial property rights. Mr Uhthoff-Orive is one of the most prominent patent experts in Mexico whose competencies and creative solutions are widely known and respected, and enable clients – whether large corporations, universities, governments, institutions or individuals – to successfully exploit and defend their rights fully in Mexico and abroad. Mr Uhthoff-Orive and his team represent pioneers in every area, from biotechnology and pharmaceuticals, agribusiness and plant varieties, to transportation and telecommunications – and almost everything in between. Mr Uhthoff-Orive is fluent in Spanish and English.
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Uhthoff, Gómez Vega & Uhthoff SC Hamburgo 260 Col Juarez Mexico City 06600 Mexico T +52 55 5533 5060 See firm profile p1200 Professional associations • AIPPI • AMPPI • FICPI
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Ulloa, Claudio
Partner – Basham, Ringe y Correa SC culloa@basham.com.mx | www.basham.com.mx
Claudio Ulloa is an Attorney / Engineer (patent attorney) specialised in intellectual property, particularly in patents, utility models and industrial designs. He is also experienced in patent litigation and producing technical reports and expert opinions in mechanical, electrical, and electronic engineering contexts. Mr Ulloa is also involved in Basham, Ringe y Correa’s aerospace practice group, and is certified in AS9100 and NADCAP. Mr Ulloa is a member of various associations, including the Mexican Association for the Protection of Intellectual Property (AMPPI), the American Intellectual Property Law Association (AIPLA) and the International Trademark Association. Currently he is the president of the Licensing Executives Society (LES) Mexican chapter and is member of the LESI High-Tech Blockchain Subcommittee. Mr Ulloa has more than 20 years of professional experience in intellectual property and litigation. He has participated as speaker in Mexico and international IP events. Mr Ulloa has authored and co-authored various articles and publications, including the Mexico chapter of the Patent Litigation Guide published by Thomson Reuters (2016 edition). He has also lectured at several national and international institutions. Mr Ulloa has been recognised by Leaders League in its innovation, technology and IP publication as a leading lawyer and engineer in industrial property litigation, as well as an excellent lawyer in IP rights prosecution. He was also recognised together with Basham as the Firm of the Year in patents by Managing Intellectual Property. Further, Mr Ulloa was named as one of the leading IP lawyers in Mexico by the magazine Lideres Mexicanos. He was also recognised in 2020 by Best Lawyers for his Intellectual Property practice, and in 2021, by WIPR in the areas of Patents and Trademarks, as well as by IP Stars also in Patents. Mr Ulloa has a JD and a BEng in mechanical and electrical engineering from the Iberoamericana University and an MSc in automotive engineering from Coventry University, where he received an honourable mention.
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Basham, Ringe y Correa SC Paseo de los Tamarindos 400 A 9th Floor Bosques de Las Lomas Mexico City DF 05120 Mexico T +52 55 5261 0520 See firm profile p980
IAM Patent 1000 1177
Peru
Peru is one of Latin America’s leading emerging markets and is increasingly seen as a hub for international trade. For several years, investment in technology has been high on the agenda, adding greater sophistication to an economy built on natural resources. Also bringing patent matters into the limelight and advancing the IP ecosystem are various initiatives undertaken by the National Institute for the Defence of Competition and Protection of Intellectual Property (INDECOPI) which, in conjunction with WIPO, recently launched an Inventor Assistance Programme to support inventors in protecting their innovations through the patent system. The emergence of dynamic new IP boutiques in recent years is also helping to push the IP conversation forward.
Allende & Garcia Abogados
“Working with Allende & Garcia is always a good experience: its docketing system is efficient and timely, and accurate responses are given to all questions and requests. Its proactive team is aware of market trends, developments regarding the criteria of the Peruvian patent office and IP court decisions.” It is cited as a reference in Peru for thorough technical analysis of patent matters and an agile, effective service. The chief designer of the ensemble’s personalised approach is Jorge Allende, a highly experienced attorney and strategist who “always ensures successful outcomes”. He primarily concentrates on patent transactions. The practice of Dafne Ramos Samanez encompasses prosecution, litigation and freedom to operate counselling: “Dafne is an outstanding professional whose name is almost a synonym for granted applications.”
BARLAW – Barrera & Asociados
Market sources line up to sing the praises of BARLAW: “It is extremely prompt, does incredibly accurate work and is reasonably priced.” Characterised by 24-7 availability, receptiveness to feedback and a laser focus on legal and business solutions, its service is hailed as “truly excellent”. The boutique owes its outstanding reputation to the leadership of Adriana Barrera, a practitioner who adds value to any IP discussion and makes quality an absolute priority. She is always seeking to broaden the firm’s horizons and in 2020 launched a regulatory affairs practice to complement its patent and other IP activities. She and patent and trademark prosecution specialist Medalith Albarracin recently teamed up to fulfil the filing needs of a diverse coterie of clients, including Pieriplast, part of a Latin American packaging group; Sennics Co, a global polymer additive supplier; and Korean food company CJ CheilJedang.
Barreda Moller
Gold-ranked Barreda Moller has long paced the IP field in Peru and, though the market is more competitive
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Firms Barreda Moller Estudio Colmenares & Asociados Allende & Garcia Abogados BARLAW – Barrera & Asociados ClarkeModet
See p954
Estudio Echecopar Fernández-Dávila & Bueno Abogados Muñiz, Olaya, Meléndez, Castro, Ono & Herrera
now than ever before, still stands as a byword for quality, precision, rich knowledge and bench depth. The esteemed boutique offers a comprehensive menu of patent services to innovators that lean on it for support in adjacent areas such as unfair competition law and data protection. A domestic and international IP heavyweight, Fernando Barreda is the first port of call for perspicacious advice at the strategic level.
ClarkeModet
ClarkeModet has maintained a presence in Peru for nearly two decades and understands all the nuances of protecting patent rights in the country. It adapts to the evolving needs of clients with agility and is constantly finessing its processes and systems to ensure a reliable service, delivered by an integrated and well-managed team of lawyers, scientific and engineering experts and IP agents. Those who enlist ClarkeModet benefit not just from its local expertise, but also from its international know-how and cavernous chest of resources. Silvana López serves as general manager in Peru. See p954 for firm profile
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Peru Individuals Fernando Barreda Barreda Moller Maria Del Carmen Arana Estudio Colmenares & Asociados Medalith Albarracin BARLAW – Barrera & Asociados Jorge Allende Allende & Garcia Abogados Adriana Barrera BARLAW – Barrera & Asociados Carlos Fernández-Dávila Winkler Fernández-Dávila & Bueno Abogados Luis Alonso García Muñoz-Nájar Estudio Echecopar Oscar Mago OMC Abogados & Consultores Bruno Mérchor Muñiz, Olaya, Meléndez, Castro, Ono & Herrera Dafne Ramos Samanez Allende & Garcia Abogados Ana Teresa Barreto DLA Piper
Estudio Colmenares & Asociados
An award-winning patent and trademark firm with a 117-year history, Colmenares is a go-to for sophisticated IP advice. Effortlessly overcoming obstacles in the prosecution process, the set sees applications through to successful grant with impressive efficiency, often acting on behalf of major pharmaceutical companies as well as Peruvian universities. Contentious mandates are also a forte and a daily feature of practice for the ensemble’s 40-plus professionals. Managing partner Maria Del Carmen Arana provides staunch leadership to a group that includes lawyers, physical and chemical biologists, translators and others.
Estudio Echecopar
“Estudio Echecopar has a great team of lawyers with huge experience and knowledge in the patent field.
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They are always available, respond to all queries quickly and give excellent advice on challenging matters.” Deploying 360-degree patent expertise and taking advantage of refined industry knowledge to customise solutions, the group gives all the right support to clients as they procure, manage, commercialise, enforce and defend their intangible assets. Worthy of special mention is its affinity for pharmaceutical and biotechnology briefs and transactional assignments in the life sciences. Luis Alonso García Muñoz-Nájar has a striking CV, with highlights including stints as a senior foreign trade minister, a leader of INDECOPI and an IP lecturer at multiple universities. The seasoned patent, trademark and regulatory lawyer gives a first-class service to pharmaceutical, healthcare and food industry concerns.
Fernández-Dávila & Bueno Abogados
When discussing the elite IP players in Peru, sources do not hesitate to endorse Fernández-Dávila & Bueno as a “highly respected and extremely capable” outfit. The registry and litigation functions of this full-service firm dovetail neatly with its IP, competition and other practices, thanks to a resolutely holistic approach. As a result, the team understands the business criticality of patents and solves patent problems not in isolation, but with the bigger commercial picture in mind. This is particularly true in the life sciences, for which the firm has established a special industry group – comprising attorneys and scientists – dedicated to advising on patent protection and regulatory matters. The fulcrum around which the practice turns is Carlos Fernández-Dávila Winkler, a versatile competition, regulatory and IP lawyer.
Muñiz, Olaya, Meléndez, Castro, Ono & Herrera
A discerning choice for prosecution, Muñiz Olaya Melendez Castro Ono & Herrera is a leader when it comes to PCT patent filing, being responsible for approximately 65% of all applications filed by Peruvian inventors. No one-trick pony, it has broad-ranging capabilities and can assist with negotiations, provide valuable strategic advice on IP asset management and more: “The service is comprehensive and the results always satisfying.” Supervising the practice, senior partner Bruno Mérchor makes full use of his advanced degree in business law, specialised IP training, public and private sector work experience, free trade agreement negotiation skills and insight gained as a director of the Inventions and New Technologies Directorate of INDECOPI. His advice is rich and futurefocused, and inspires confidence.
IAM Patent 1000 1179
Peru Other recommended experts
Ana Teresa Barreto has a total command of all aspects of intellectual property and provides astute strategic counsel on patents, trademarks and copyright. She operates artfully across the contentious/non-contentious divide and works in multiple industry sectors, further enhancing her well-roundedness. She recently joined DLA Piper,
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having made the switch from ClarkeModet. Oscar Mago of OMC is enthusiastically endorsed as an accomplished attorney who provides actionable guidance and tangibly beneficial solutions. He builds longstanding relationships on the foundations of trust, dedication, quality and great results, and has a loyal international following.
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Basham, Ringe y Correa SC www.basham.com.mx
Basham, Ringe y Correa SC is recommended in Chambers Latin America – Clients Guide, 2018 as a leading firm in intellectual property, competition and antitrust, corporate mergers and acquisitions, energy and natural resources, labour and employment, real estate and tax. Basham is proud to be considered one of the largest, leading, international full-service law firms in Latin America. Established in Mexico in 1912, Basham draws on more than 100 years’ experience in assisting its clients to conduct business throughout Mexico. The firm’s clients include financial institutions, individuals, medium-sized companies and prominent international corporations, such as the Ericsson, Nissan, Sony, Nippon Steel, The Coca-Cola Company, Canon, Volvo, Celgene and Macrogenics. The firm’s large group of lawyers and support staff are committed to maintaining the highest professional and ethical standards. Deep knowledge of the international legal system stems not only from regular cross-border work, but also from the fact that many of Basham’s lawyers and other professionals have completed graduate studies at foreign universities and have worked at companies and law firms abroad. Basham’s preventive and strategic consulting in all types of law allows the firm to offer its clients effective, complete and timely solutions to their concerns The firm’s in-depth knowledge and insight into international and domestic markets – including economic trends and current affairs – give the firm a solid base and perspective to offer fully integrated and tailored solutions to every client. It is because of these qualities and values that its clients have continued to entrust their legal affairs to Basham over the years. The firm’s lawyers actively participate in worldwide associations and international transactions, something which has promoted the exchange of information and experience. This in turn improves the firm’s growing capacity to serve its clients by constantly adjusting to the dynamics of the global business environment. Basham is aware that each client requires objective counselling, experience, professionalism and trustworthy people. The firm’s lawyers are well-known leaders in their respective specialist fields and are committed to providing legal services with the highest standards of quality.
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“Rich legacy… IP team ‘one of the best in the country’.” The firm’s IP practice is represented by the following partners: Martín Michaus (litigation, trademarks, domain names and arbitration disputes), Eduardo Kleinberg (trademarks, licensing practices and franchising), Adolfo Athié (patent and trademark litigation and privacy and data protection, including litigation), Claudio Ulloa as a patent attorney (patents, utility models, industrial designs prosecution, aerospace, technology transfer and innovation capital), Jorge Vega (trademarks and copyright), Juan Carlos Hernández (trademarks, copyright, domain names and new technologies) and Eduardo Castañeda (intellectual and industrial property, entertainment law and administrative litigation). The firm actively encourages the participation of all its lawyers and encourages entrepreneurs, innovators and incubators to achieve their creation and training, in pro bono work for charities and non-profit organisations, among others. For this, the firm has created the Basham, Ringe and Correa Foundation. Basham’s recent recognitions include: • Silver award for Best Latin American Law Firm, in the corporate category, at the International Legal Alliance Summit awards (2018 and 2019); • Silver award (2019) and gold award (2018) for Best Latin American IP Firm at the International Legal Alliance Summit awards; • Firm of the Year in Mexico, Who’s Who Legal (2007–2019); • Intellectual Property Law Firm of the Year, Best Lawyers (2018); • Tier-one ranking for tax controversy in International Tax Review; • Client Service Award, Chambers Latin America (2014); • Gold award (2010, 2012 and 2015–2017) and silver award (2008, 2010, 2011, 2013, 2014, 2016 and 2017) for Best Mexican Firm at the International Legal Alliance Summit awards; • Silver award for Best Mexican IP Firm, Leaders League (2016 and 2017);
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• Mexico Tax Disputes Firm of the Year, International Tax Review (2010–2013); • Mexico Patent Firm of the Year, Managing Intellectual Property (2016); and • Pro Bono Leading Light Award from Latin Lawyer magazine three times between 2013 and 2019. Languages Spanish, English, French, Portuguese and Chinese.
Main address Paseo de los Tamarindos 400 A 9th Floor, Bosques de Las Lomas Mexico City DF 05120 Mexico T +52 55 5261 0400 F +52 55 5261 0496 E basham@basham.com.mx Professional contacts Martín Michaus Partner E mmichaus@basham.com.mx Claudio Ulloa Partner E culloa@basham.com.mx Other offices Monterrey, Queretaro, Leon Sample client list • Canon • Celgene • Ericsson • Macrogenics • Nippon Steel • Nissan • Sony • The Coca-Cola Company • Volvo
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IAM Patent 1000 1183
Becerril, Coca & Becerril, SC www.bcb.com.mx
Becerril, Coca & Becerril (BC&B) is an international law firm specialised in legal and business consultancy. Fifty years of experience and a series of transformations – both technological and organisational – have unified the way in which BC&B offers its services, positioning the organisation as the first law and business firm in Mexico. BC&B offers a wide range of legal services designed to boost, safeguard, optimise and defend its clients’ businesses and their valuable assets, as well as to give them support and assistance in addressing the contingencies that naturally occur in the day-to-day running of any company. Advice is delivered in an integrated and timely manner. As one of the firm’s core practice areas, BC&B’s IP department is well established in Mexico. This is reflected in the fact that the BC&B IP partners and associates are recognised experts in their area of practice and routinely win awards from leading IP publications worldwide. In addition, the firm has been expanding its range of IP services in order to satisfy clients’ needs. As part of its solutions portfolio, BC&B runs a litigation group that covers a great variety of legal services, including corporate, civil, business, family and commercial arbitration law. The firm also has a business transformation practice, where specialists provide solutions for strategic and business transformation and systematic innovation of any business, regardless of its dimension and/or industry sector. The firm’s technology transfer office is the result of the synergy between knowledge and skills, focused on supporting emergent and well-established companies with the economic exploitation of intangible assets and implementation of related business strategies. BC&B provides tools that enable clients to take care of their technological creations in a fully integrated manner. As a result of its continual quest to strengthen solutions and scope, in 2019 BC&B became part of Velae Legal Group, an Ibero-American group of multinational firms with representation in many countries, committed to offering clients diverse services and solutions with the highest quality standards and professionalism. Through all these actions, BC&B will continue to evolve its service offering to meet its clients’ needs in an era of constant change and transformation.
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“Wide-ranging patent expertise meets wellworn commercial awareness… Excels in patent prosecution”
Main address Leibnitz 117 PH1 Col Anzures, Alcaldía Miguel Hidalgo Mexico City ZC 11590 Mexico T +52 55 5263 8730 F +52 55 5263 8731 E main@bcb.com.mx Professional contacts Juan Carlos Amaro Partner E camaro@bcb.com.mx Octavio Espejo Partner E vespejo@bcb.com.mx Fernando Becerril Partner E fbecerril@bcb.com.mx
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IAM Patent 1000 1185
BMA - Barbosa Müssnich Aragão www.bmalaw.com.br
The combination of our scientists’ and engineers’ technical skills and the legal expertise of our lawyers means that BMA provides clients with a high-quality multidisciplinary service that is unmatched in the Brazilian market. We provide a full range of professional services in the protection, management and enforcement of all types of IP rights — patents, trademarks, copyright, trade secrets, industrial designs, domain names and plant varieties, as well as related fields such as advertising, franchising, e-commerce, entertainment, geographical indications and appellations of origin. Our range of experience covers every industry and technology – from electrical and computer technology to luxury goods, industrial manufacturing, consumer products, biotechnology, pharmaceuticals and chemicals. BMA IP’s team has won an international reputation for its ability to provide personalised services aimed at achieving our clients’ objectives through the highest standards of quality and efficiency. Our practice is worldwide through a carefully tested global network of firms. As a result, we are able to direct and coordinate the international IP portfolios of our clients, assuring them of the same strategic focus and technical capabilities that we provide in Brazil. Likewise, foreign law firms are confident that their clients will find uncompromising excellence when they call on BMA for assistance in prosecution, litigation and consultation matters in Brazil. What they say about us IAM “‘The patent practitioners at Barbosa Müssnich Aragão are a pleasure to work with. Their advanced technical knowledge and strong ability to anticipate market opportunities mean they provide advice aligned with business interests. The icing on the cake is the competitive rates that their advisory packages come at.’ Antonella Carminatti and Ana Cristina Müller fill positions of leadership at the firm and stand out for their high level of strategic oversight in transactional scenarios. IP head Carminatti is superb from a commercial perspective when reviewing and drafting licensing agreements and negotiating portfolio acquisitions. As patent practice chief, chemical engineer Müller
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coordinates a deep bench of engineers and scientists to ensure that every instruction receives the closest possible attention. Fellow chemical engineer Lilian Ghitnick is another master of prosecution: bringing creative flair to the practice, she knows how to avoid obstacles on the path to successful grant.” Chambers and Partners “What the team is known for: Much-admired department within a well-reputed full-service firm boasting a notable track record in judicial disputes involving trade mark, trade dress, industrial design and patent matters. Often retained by major companies from the pharmaceutical, retail and consumer goods sectors due to its expertise in IP rights protection and management. Additionally known for the strength of its advice on related areas, such as competition, e-commerce and franchising.” Chambers Latin America “Strong track record advising a prominent domestic and international clientele on all their IP requirements including counterfeiting, trade mark infringement and nullity actions. Full-service capabilities enable the team to provide integrated advice.” The Legal 500 “Full-service firm BMA - Barbosa, Müssnich, Aragão fields a specialised intellectual property department, which advises on the protection, management and enforcement of IP rights. Leading the practice is Antonella Carminatti, whose
“A repository of trust for highflying international companies… Shows special strength in the pharmaceutical sphere” www.IAM-media.com
expertise covers IP litigation and prosecution, as well as transactional matters and anticounterfeiting programmes. Franchising matters are a particular area of activity for Claudia Schulz, who often advises clients operating in the retail sector. Ana Müller coordinates the patent team, while Pedro Frankovsky Barroso oversees the IP litigation Works, with a particular emphasis on patent litigation.” MIP “Barbosa Müssnich Aragão has established a robust patent practice behind the efforts of industrial property agent and chemical engineer Ana Cristina Müller. Müller dedicates her practice to patent and design matters ranging from infringement disputes and nullity actions to prosecution and consultancy work. Lilian Arcalji is recognised as a rising star who advises on enforcement and prosecution strategies.” Testimonials “The team led by Antonella Carminatti is very reactive, and provides straightforward advice. They are experts in the field of luxury products.” “Antonella is one of the best lawyers in Brazil in the field of trademarks. She is always available and gives strategic advice.” According to MIP IP Stars, IP litigation practice leader Pedro Barroso represents companies in trademark and trade dress litigation matters, as well representing clients in copyright-related matters in the entertainmen tindustry. “Ana Müller is business-oriented; she understands the needs of the company and she provides an outstanding legal service.”
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Main address BMA Corporate - Largo do Ibam 1 4th floor Humaitá Rio de Janeiro 22271-070 Brazil T +55 21 3824 5757 F +55 21 3824 5740 E antonella.carminatti@bmapi.com.br Professional contacts Antonella Carminatti Partner E antonella.carminatti@bmapi.com.br Ana Cristina Müller Partner E ana.muller@bmapi.com.br Lilian Ghitnick Arcalji Senior patent specialist E lil@bmapi.com.br Other offices Brasilia, Sao Paulo
IAM Patent 1000 1187
Kasznar Leonardos www.kasznarleonardos.com
The firm was first established in 1919 as Momsen, Leonardos & Cia and became Kasznar Leonardos in 2012 – after the names of senior partners and IP experts Elisabeth Kasznar Fekete, Filipe Leonardos and Gabriel Leonardos. With a century of experience in protecting and enforcing the patents, trademarks and copyright of some of the world’s largest companies, Kasznar holds a leading position in intellectual property in Brazil due to the expertise of its partners and team. The firm has offices in Rio de Janeiro and Sao Paulo, and its 25 partners and more than 260 employees are distributed across four main departments: • trademarks; • patents and industrial designs; • IP litigation; and • licensing. Considered a reference for IP law in Brazil and abroad, Ms Kasznar Fekete has 35 years’ experience in intellectual property. She excels in the strategic planning of IP-related litigation and in the establishment of anti-counterfeiting programmes. Filipe Leonardos, reputed trademark lawyer, and Gabriel F Leonardos, celebrated IP litigation and licensing lawyer, each have over 30 years of experience in intellectual property. The other three senior partners of the firm – Eduardo Colonna Rosman, Gustavo Barbosa and João Luis Vianna – also have decades of IP experience and run the prestigious patent department, together with Tatiana Silveira. The patent team – experts in a variety of fields, such as aeronautics, mining, automotive, biotechnology, electronics, oil and gas, chemistry, information technology, telecoms, pharmaceuticals and steel – drafts, files and prosecutes patent applications from local and foreign companies. The litigation department is another strong team, led by Gabriel Leonardos. Among the firm’s partners, leading lawyers have shaped and continue to shape Brazilian IP case law, with a great record of accomplishments for our clients. Today, with partners, employees and associates in all Brazilian states, Kasznar provides Brazilian and foreign companies with a wide range of technical and judicial services in IP areas such as trademarks, domain names, patents, copyright, geographical indications, computer and software rights, unfair competition, trade secrets and
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confidential data, litigation and dispute resolution, marketing law and entertainment, licence compliance and anti-piracy, anti-counterfeiting, industrial designs, technology transfer, franchising and licensing, regulatory healthcare law, life sciences and the protection of plant varieties. In these areas, Kasznar’s team acts as: • attorneys in the prosecution of applications; • legal advisers in licensing and other contract matters; • lawyers in litigation and arbitration; and • neutrals in arbitration and mediation. Kasznar’s patent department is prepared and qualified to provide consultancy, especially reports on patentability, freedom to operate and validity of patents and industrial design registrations, as well as all services necessary for preparing, monitoring and obtaining patents and industrial design registrations in Brazil and abroad, for different knowledge areas. The department is made up of specialists in electronic, mechanical, chemical, aerospace and mines engineering, pharmacy, medicine, biotechnology and information technology, among others. Around 70% of Kasznar’s clients are multinationals from industries such as oil and gas, energy, chemicals, food, pharmaceuticals, biotech, steel, aeronautics, auto, electronics, telecommunications and information technology. Kasznar is fully able to meet the needs of these clients because it can count on a highly qualified team of professionals with diverse and complementary academic backgrounds. The vast majority of experts who make up the firm’s patent, trademark and litigation teams have a postgraduate or master’s degree and some also have doctorate degrees. Many of the firm’s professionals have been educated abroad, including the United States, the United Kingdom, Germany, France, Argentina and Spain. The firm’s multilingual staff speak Portuguese, English, German, French, Spanish, Hungarian and Italian – among other languages. Kasznar was created with a team of highly qualified professionals with decades of experience in protecting and enforcing the patents, trademarks and copyright of some of the largest companies in the world. To these strengths, Kasznar has added agility, efficiency and the motivation to expand.
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“Century-long legacy of protecting and enforcing IP rights… Prosecution powerhouse and a centre of excellence for patent litigation and transactions”
Main address Rua Teófilo Otoni 63 Fifth to Seventh Floors Rio de Janeiro 20090-080 Brazil T +55 21 2113 1919 F +55 21 2113 1920 E mail@kasznarleonardos.com Professional contacts João Luis D’Orey Facco Vianna Senior partner E joao.vianna@kasznarleonardos.com Gustavo José Ferreira Barbosa Senior partner E gustavo.barbosa@kasznarleonardos.com Tatiana Almeida Silveira Senior partner E tatiana.silveira@kasznarleonardos.com Other offices Sao Paulo
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IAM Patent 1000 1189
Licks Attorneys www.lickslegal.com
Licks Attorneys is one of Brazil’s most respected litigation law firms. Our commitment to our clients is unparalleled in the country. We focus on complex litigation and our lawyers have an outstanding track record handling the highestprofile IP and regulatory disputes. Our practice shapes the development and direction of IP, technology and regulatory law. With offices in Rio de Janeiro, Sao Paulo, Brasilia, Curitiba and Tokyo, our team combines industry knowledge with legal expertise to assist a wide variety of clients – from Fortune 500 companies to high-tech start-ups just entering the Brazilian market. Our multidisciplinary attorneys have handled complex commercial and corporate claims over the past 20 years in major sectors, including technology, the Internet, telecommunications, life sciences, medical devices and finance. At Licks Attorneys, we don’t just solve problems; we anticipate and help clients plan accordingly. This carefully crafted approach is why we are Brazil’s leading firm in litigation and patent matters. Our clients’ interests are the foundation of everything we do, and we will always seek the quickest and most cost-effective solutions for them. Our multicultural team not only speaks our clients’ language, it also understands our clients’ legal and business cultures. Our litigation practice combines legal expertise, technical industry knowledge and a pragmatic approach to dispute resolution. The firm has an overall success rate of 82.7% and has been engaged in most of Brazil’s highest-profile IP, life sciences and technology cases. We have the most extensive patent litigation practice in the country. It is involved in almost every single high-profile case concerning complex technologies in Brazil. With outstanding results, Licks has the most successful telecom practice working for both patent owners and implementers. Licks Attorneys’ patent prosecution group consists of professionals with a technical background and well-experienced lawyers. This combination has produced a 100% success rate in expediting patent prosecution before federal courts and 88% of allowance before the Brazil Patent and Trademark Office. Challenging established practices and shaping
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“One of the foremost firms of its kind in Brazil… Deep bench of lawyers able to handle cases of all shapes and sizes” the boundaries of patentability in Brazil, our firm develops strategies to move Brazilian patent practice to the next level, ensuring high standards of protection for our clients. Our communications technology group is one of our core practice areas, with a successful track record for the fastest expedited prosecution, the highest allowance rates, with the ability to engage with members of the government and policymakers at the cabinet level, and the largest and most qualified team of patent litigators. The group has the proven proficiency to maximise the availability, enforcement and monetisation of broad patent rights, backed by the support of the largest investment in information technology and dedicated computer systems in Brazilian patent practice. Client testimonial (2021): “Licks Attorneys stands out for its expertise in patents and technology-related matters. The firm has a strong track record in assisting national and global companies, particularly in the telecoms and life sciences industries, with IP matters.” Diversity and inclusion At Licks Attorneys, we understand the importance of diversity and inclusion, and the urgency to take appropriate and considerate action. For this reason, in 2020 we structured our Diversity and Inclusion Committee to align our internal processes and make our employees aware that we are setting a standard and addressing such issues within the office. Although the process is in its early stages, our committee has already started an impactful dialogue that has led to the implementation of positive change.
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ISO certifications and security ratings Protecting client information and ensuring the highest standards of services, our management system is based on ISO 27001 and ISO 9001. We are rated “A98” by Secure ScoreCard and rank 98.39% at the Microsoft Secure Score Center.
Main address Via Binário do Porto 299 Aqwa Corporate - 9º Andar Rio de Janeiro RJ 20220-364 Brazil
About our work • 2,600+cases litigated since 2011 • 82.7% overall litigation success • 100% success rate in expediting patent prosecution before federal courts • Largest patent prosecution practice in Brazil • 88% allowance rate of patent applications prosecuted
T +55 21 3550 3700 F +55 21 3550 3777 E info@lickslegal.com Professional contacts Otto Licks Partner E otto.licks@lickslegal.com Other offices Brasilia, Curitiba, Sao Paulo, Tokyo
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IAM Patent 1000 1191
Luiz Leonardos & Advogados www.llip.com
Luiz Leonardos & Advogados is an IP boutique with over a century of tradition, being one of the successors of Momsen Leonardos & Cia founded in 1919. The firm combines the expertise and resourcefulness gained over 100 years of work devoted to intellectual property in Brazil with the advantages of a newly created framework – one that fosters more effective and personal interaction with clients. Luiz Leonardos & Advogados has 14 partners and over 60 experienced professionals dedicated to all areas of intellectual property. The firm counts with highly specialised attorneys at law, engineers, biologists and pharmacists who can provide all the necessary assistance to protect IP rights before the Brazilian Patent and Trademark Office and the courts. The team works continuously to provide clients with outstanding IP services in a world that is constantly changing. The firm’s professionals are always alert to the innovations and updates implemented by the Brazilian Patent and Trademark Office in order to provide clients with the best advice, effectively fulfilling their needs. Luiz Leonardos & Advogados cherishes transparency in its relationship with clients, third parties, service providers and all its peers as they are the firm’s most valuable assets. In 2019 Luiz Leonardos & Advogados opened a branch office in Sao Paulo, strategically located in the Itaim Bibi neighbourhood – the financial centre of the city – within walking distance of the regional branch of the Brazilian Patent and Trademark Office. The branch’s team of experienced engineers and lawyers is fully prepared to serve the national market and to meet the growing needs of international clients. The firm’s practice areas encompass antitrust and competition law, contracts, transfer of technology, licensing and franchising, copyright, designs, entertainment and advertising law, food and drug law, geographic indications, litigation, patents, plant varieties, privacy and data protection, software, integrated circuit topography, trade secrets and confidential data, trademarks, trade names and domain names, unfair competition and anti-counterfeiting measures. The firm’s patent department is made up of highly specialised professionals with extensive
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experience in the prosecution of patents in the technical fields of chemistry, life sciences, biotechnology, biochemistry, pharmaceuticals, metallurgy, medical devices, electrical engineering, electronics, systems, telecommunications, mechanical and other non-chemical sciences, as well as in the prosecution of industrial designs, software, plant variety protection and National Health Surveillance Agency issues. The department services cover the entire patent prosecution process, both in Brazil and abroad. The professionals are skilled in performing patent searches, including freedom-to-operate, prior art and other searches, as well as drafting patent applications, prosecuting patent applications before the Brazilian Patent and Trademark Office and providing patent consultancy. In summary, the team’s expertise enables Luiz Leonardos & Advogados to take all measures necessary to maintain and protect its clients’ rights. The firm’s trademark and litigation departments are skilled to act on the whole spectrum of work in areas including administrative prosecution and litigation. Luiz Leonardos & Advogados has deep experience handling all kinds of litigation related to IP rights. The firm stands as a reference in the management of trademark portfolios, in Brazil and abroad, both for small and large companies. Luiz Leonardos & Advogados performs all the prosecution work, as well as conflict searches and renewals, in addition to filing oppositions, appeals and administrative invalidity procedures. The firm also advises clients on the registration and prosecution of trade names and domain names.
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“Comprehensive service… Fine-grained experience in intricate and strategic patent work”
Main address Avenida Rio Branco 80 6th floor Centro Rio de Janeiro RJ CEP 20040-070 Brazil T +55 21 3514 0400 F +55 21 3514 0401 E llip@llip.com Professional contacts Gustavo Leonardos Managing partner E gleonardos@llip.com Ana Paula Jardim Senior partner E apjardim@llip.com Luiz Leonardos lleonardos@llip.com E Senior partner Other offices Sao Paulo
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magellan IP www.magellan-ip.com
magellan IP provides a wide range of IP services in the main Portuguese speaking countries: Brazil, Portugal Angola and Mozambique. The services range from prosecution and administrative litigation before the local patent and trademark offices, to general consulting services and litigation support in partnership with renowned law firms. The firm’s name was inspired by the Portuguese born navigator Ferdinand Magellan, who one the founding partners descend from. Magellan was one of the great explorers of his era – the first European to cross the Pacific Ocean and to launch the expedition that first circumnavigated the world. Many believed then that Earth was flat and that his mission was an impossible one. But he saw things differently and his voyage was clear proof that Earth is indeed round. And just like Magellan did with Earth, magellan IP sees the world of intellectual property differently. Combining traditional values with a modern approach to managing and addressing IP problems, magellan IP helps its clients navigate the world of intellectual property and demystify the protection of intellectual property in Portuguese- speaking countries. It advises a wide range of clients, from the smallest start-ups and university technology transfer centres to the largest multinational corporations, such as The Broad Institute (with its CRISPR portfolio), Uber Technologies, Guangdong Oppo Mobile Telecommunications Corp, Laboratoire Français du Fractionnement et des Biotechnologies (LFB), Invista Technologies, Avita International, Recepta Biopharma, Orygen Biotecnologia and Angelus Odontologia. Companies such as CIPLA and Pfizer also use the firm’s services for opinion work. The firm’s team has extensive experience and very broad knowledge of intellectual property. The founding partners have advanced degrees from prestigious universities in Brazil and aboard, have previously worked in top-ranking Brazilian and Portuguese IP and law firms and have established reputations as experts in their field. They also bring the cultural benefits of having several nationalities and having collectively lived on three continents and in several countries. Their team of 25 collaborators includes five partners and 12 patent experts who share their fluency in Portuguese, English, French and Spanish.
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The firm’s philosophy centres on six main areas: • Client focus – the firm strives to maintain a close and personal relationship with each client. By focusing on clients’ goals, the firm is able to provide them with customised, highquality services that bring added value to their businesses; • Efficiency – by using a world-renowned cloud-based encrypted project and matter management system, and having an 100% paper-free practice, magellan IP team members are able to safely access files anytime, anywhere, and are therefore able to provide more reliable and efficient results. Productivity is not obstructed by bureaucracy and conflicting internal issues that often affect established IP and law firms; • Ethics – honesty and integrity are the foundations upon which the team’s conduct is built, following the highest ethical standards, and in compliance with all applicable laws. Conflicts are taken seriously, and the firm represents only businesses whose standards of conduct are aligned with its own; • Quality – providing the best results is at the core of magellan IP’s professional DNA. The firm is known for advising its clients of their realistic chances of success and potential pitfalls before embracing a new project. Clients are never sold unnecessary services, or services that the firm may not be fully equipped to provide; • Fair pricing – obtaining superior results and controlling the cost of acquiring and managing IP portfolios are often competing priorities. Thus, the founding partners devoted time and thought to structuring the firm in a way that avoids costly and unnecessary overheads. Most services carry a fixed fee and where this is not the case, costs are informed on a project-byproject basis; • Equality – diversity and individual contributions are highly valued, with a trusting and inclusive environment that reflects the values of magellan IP. The founding partners are proud of the very positive feedback received from everyone at the firm. Fostering an engaging and creative place to work where every individual matters is one of their main goals.
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“A great choice for international entities seeking a unique perspective… Dispenses with the cookie-cutter approach in favour of a tailor-made service”
Main address Rua da Assembleia, 10 - sala 3215 Rio de Janeiro 20011-901 Brazil T +55 21 4063 3297 F E magellan@magellan-ip.com Professional contacts Leonor Magalhães Galvão Founding partner E leonor.galvao@magellan-ip.com Caio Rodrigues da Silva Founding partner E caio.rodrigues@magellan-ip.com Other offices Portugal Sample client list • Uber Technologies • Oppo Electronics • The Broad Institute • Invista technologies • LFB France • CIPLA
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IAM Patent 1000 1195
Montaury Pimenta, Machado & Vieira de Mello www.montaury.com.br
Montaury Pimenta, Machado & Vieira de Mello is a leading Brazilian IP law firm, formed in 2010 when two of the leading Brazilian IP firms joined forces: Montaury Pimenta, founded in 1939, and Vieira de Mello, founded in 1929. With its main office located at the Brazilian Jockey Club building in the heart of Rio de Janeiro and a satellite office in Sao Paulo, Montaury Pimenta, Machado & Vieira de Mello assists national and international clients across the private and public sectors. Our team handles both contentious and non-contentious IP matters and is engaged in a variety of industry sectors, including telecom, electrical engineering, electronics, mechanical engineering, physics, life sciences and healthcare, biotechnology, chemicals and pharmaceuticals, software and computer sciences, nanotechnology, fashion, food services, cosmetics, footwear and sports. Our commitment to delivering results, expert knowledge of our chosen industries and our multi-disciplinary approach make our team one of the best choices to protect and enforce IP assets in Brazil. The firm has a team of 35 partners and over 150 employees who offer expert support that is tailored to each individual case. Our clients have regular contact with the specialist in charge of their case, who is always ready to discuss the best course of action and possible constructive solutions. Besides protecting IP assets and related businesses, the firm is particularly involved in patent matters, including patent preparation and prosecution, freedom-to-operate and infringement opinions, and both domestic and international complex litigation, including patent infringement and patent invalidity lawsuits, as well as related counselling.
“Fields experts in each area… Even against the biggest law firms in Brazil, it stands its ground and secures sweeping triumphs”
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Furthermore, our life sciences practice has been steadily growing over the past few years. Apart from patent filings, prosecution and litigation work, our team also provides prior art searches and freedomto-operate reports. The life sciences department also offers consulting services in the protection of plant varieties encompassing all phases of the process, from the request of protection for plant varieties with the Ministry of Agriculture, to the issuance of the plant variety protection certificate, as well as the maintenance of such protection. The head of the life sciences department, Gabriela Salerno, is the current chair of the Biotechnology Committee of the Brazilian Intellectual Property Association (ABPI). The firm’s litigation practice, well known for its high rate of success, handles complex patent disputes. Through our network of carefully selected associate firms across Brazil and worldwide, we are in the ideal position to offer high-quality, fast and reliable support. Further, the head of the litigation department, senior partner Luiz Edgard Montaury Pimenta, is the president of the ABPI for the 20182021 term. Our firm’s highly trained technical experts provide first-class representation through all stages of the patent process, from the preliminary administrative level to the courtroom. Roberto Vieira de Mello, one of the firm’s founder partners, leads the patent team, which is made up of a large group of engineers, lawyers and pharmacists. Our firm’s reputation was built on its expertise, availability and proactiveness in defending clients’ IP rights, as well as its multi-disciplinary approach in the following areas of practice: • patents; • utility models; • industrial designs; • freedom-to-operate opinions; • plant varieties; • patent litigation; • IP litigation; • trademark management; • geographical indications; • copyright and software; • anti-piracy programmes; • domain name disputes; • digital law; • fashion law; • licensing;
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trade dress; unfair competition; advertising law; and life sciences. Our patent services include: prior art searches; patent analysis; patent applications; patent prosecution; freedom-to-operate opinions; industrial designs; utility models; complex patent litigation, including patent invalidity proceedings and infringement lawsuits; payment of annuities; patent transactions; patent licensing; and know-how licensing.
Our firm has been committed to providing our professionals with an open and inclusive working environment. We are proud to share that our workforce reflects a range of diverse and multicultural backgrounds. We work as one team regardless of any difference of religion, sexual orientation or gender.
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Main address Av Almirante Barroso 139 7th Floor Rio de Janeiro 20031-005 Brazil T +55 21 2524 0510 F +55 21 2240 1524 E montaury@montaury.com.br Professional contacts Eduardo Machado Senior partner E eduardo@montaury.com.br Luiz Edgard Montaury Pimenta Senior partner E luiz@montaury.com.br Roberto Vieira de Mello Senior partner E roberto.mello@montaury.com.br Other offices Sao Paulo Sample client list • CISCO • F Hoffmann-La Roche • Procter & Gamble • Qualcomm • Samsung • VISA • Volvo
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Murta Goyanes Advogados www.murtagoyanes.com.br
Murta Goyanes Advogados is a full-service IP law firm that assists clients in a personalised fashion, having regard for their own history, needs and expectations. With over 30 years of combined experience, the partners are committed to overseeing every case at the firm, and their work style yields exceptional results. The office strives to deliver efficient and tailored services at a reasonable price to all clients entrusting their intangible assets to the firm. Murta Goyanes’s practice is distinguished by a philosophy in which every case is unique. This translates into better client handling and on-time delivery of services with outstanding technical excellence. Murta Goyanes built a reputation in developing and securing such vital intangible assets in all fields of IP law. The firm’s attorneys, patent agents and other professionals combine IP legal and technical knowledge and advanced degrees, and most team members have previous professional experience in large companies. This spread of expertise creates a work environment that fosters cooperation, growth and results to meet any challenge. The firm’s clients span a broad spectrum of industries and range from start-ups to global corporations. Coordinating international IP portfolios and enforcement with well-known foreign law firms, the firm can deliver advice and assistance with any IP issue worldwide to Brazilian companies doing business abroad. Similarly, foreign companies can rely on the firm’s expertise to assist them in Brazil and other countries, in particular across Latin America. Patents and designs Murta Goyanes’s multidisciplinary team provides uniquely insightful technical advice and unmatched IP services, ranging from prosecution and legal support to innovation strategy services, in several technical fields. The firm renders consultancy services; reviews, consolidates, audits and assesses patent and industrial design portfolios; conducts prior art searches using specific search tool and provides freedom-to-operate, patentability and validity opinions; provides watching services of patent and design applications filed by third parties; and assesses conflicts and enforces patent and design rights in Brazil and internationally.
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“Client care, a bespoke approach, and prompt delivery of results are all baked into its philosophy… First-grade patent experts” IP licensing, franchise and technology transfer agreements Our experienced lawyers provide assistance with all aspects of a transaction, including evaluation, negotiation, drafting and execution of any IP rights agreements, as well as recordal and registration before the Brazilian Patent and Trademark Office (PTO) and other competent authorities. Regulatory Introducing new products and services in the market requires a comprehensive knowledge of the regulatory environment. In addition to our experience, our team suggests a creative approach to solving problems of a regulatory nature. We help our clients with regulatory and administrative procedures in Brazil and abroad, working with relevant agencies to obtain authorisation for operations, such as import and export licences, project approval and product registration. We also offer consultancy services on products, labels and packaging rules. Trademarks The trademark team handles over 10,000 trademarks and domain names worldwide, including the portfolio of major international companies in the fields of food and beverage, clothing, marketplace, cosmetics and entertainment. Our team also has vast experience in obtaining well-known status for marks before the Brazilian PTO.
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Copyright and entertainment law The firm assists clients in securing global copyright protection and ownership of copyright assets, having extensive practice in reviewing and drafting copyright licence and assignment agreements, as well as other contracts relating to audiovisual, advertisement, musical and artistic productions. Dispute resolution and litigation Murta Goyanes has broad experience in all forms of IP enforcement, particularly alternative dispute resolution and litigation. The firm’s litigation team relies on the assistance of local correspondents in other Brazilian cities, and is able to provide outstanding litigation services throughout Brazil. The firm also provides assistance in foreign litigation through a network of carefully selected and trusted associates. Recent accolades • The Global IP Awards 2019 (Trademark Firm of the Year in 2018) • Client’s Choice Awards 2019 (Copyright) • Ranked in WTR 1000 – The World’s Leading Trademark Professionals 2020 • Ranked in IAM Patent 1000 – The World’s Leading Patent Professionals 2020 • Ranked in Chamber’s Global 2020 (Intellectual Property; Media and Entertainment) • Ranked in Chamber’s Latin America 2021 (Intellectual Property; Media and Entertainment) • Ranked in Who’s Who Legal 2020 (Trademarks and Entertainment) • Ranked in The Legal 500 Latin America 2021 (Intellectual Property) • Ranked in the Leaders’ League 2020 (Trademark, Media and Entertainment and Copyrights Law)
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Main address Rua Dezenove de Fevereiro 30 5th Floor Botafogo Rio de Janeiro RJ 22280 030 Brazil T +55 21 3553 6575 F +55 21 3553 6576 E contato@murtagoyanes.com.br Professional contacts Luiza Duarte Pereira Partner E luiza.duarte@murtagoyanes.com.br Antonio Murta Partner E antonio.murta@murtagoyanes.com.br Marcelo Goyanes Partner E marcelo.goyanes@murtagoyanes.com.br Sample client list • Alpargatas • Boldrini • Canon • Estacio • GE Oil & Gas • Lenovo • Leonardo SRL • NuCana plc • Trevena
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Uhthoff, Gómez Vega & Uhthoff, SC www.uhthoff.com.mx
Uhthoff is a clear leader among IP firms in Mexico. For over a century the firm has been providing legal services to clients both domestically and around the globe. The firm is one of the most prestigious and recognised law firms in the country, with an undeniable track record of success across a spectrum of services in an array of different industries. The combined expertise at the firm in delivering the legal services clients expect and in doing so with the insight and awareness of what drives clients’ passion for innovation is what sets the firm apart. Uhthoff’s main practice areas are outlined below. Intellectual property • New creations (patents, utility models, industrial designs, integrated circuits and plant varieties) – the new creations department comprises not only lawyers who are experts in the area, but also engineers specialised in different industries. • Patent applications – the firm has filed the largest number of patent applications in Mexico every year for the past 20 years. • Plant breeder’s rights – newly developed plant varieties are eligible for exclusivity IP rights in Mexico in the form of plant breeder’s rights. The firm has ample experience in the filing, prosecution and enforcement of such rights. With a staff of qualified life sciences specialists and experienced attorneys, the firm provides a high-quality, full-scope service in this area. • Distinctive signs (trademarks, denominations of origin, trade names and commercial slogans) – this department handles services relating to all aspects of the registration and maintenance of trade and service marks in accordance with Mexican and international policy and law. The firm also holds the number one spot for the total number of trademark applications filed every year in Mexico. • Copyright – the department provides protection of artistic and intellectual works and registration with the National Institute of Copyright. It also counsels clients in the defence and enforcement of their copyright against infringers, corporate and commercial law. Although the firm’s core practice is in intellectual property, over the years it has incorporated other areas of
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“A name synonymous with top-quality IP services in Mexico… A wealth of technical expertise and legal firepower” law and now offers services in corporate and transactional matters in Mexico: from the inception of a business to all general legal affairs relating to daily commercial and business operations. Corporate and business law • Legal advice for business solutions. • Franchising – the firm’s franchise practice combines knowledge and experience in different areas, including trademarks, litigation and corporate law. With this synergy, it provides clients with integral franchising services, from conducting due diligence and drafting disclosure documents to comprehensive regulatory and compliances services on behalf of both franchisees and franchisors. • Licensing – the licensing department provides expert advice on the negotiation, design, elaboration, administration and analysis of licensing contracts for IP rights, franchises and technology transfers. • Regulatory – this department provides information on the regulations that must be complied with and the permits that must be obtained by manufacturers and importers, for the preparation and sale of food, alcoholic and non-alcoholic beverages, tobacco, cleansers, cosmetics and medicines. Further, it provides regulatory solutions in connection with both day-to-day and complex environmental regulatory issues and projects in different sectors.
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Entertainment, media and sport • Entertainment law – with its combination of copyright, corporate and litigation expertise, the firm provides clients with day-to-day counselling on legal challenges and issues faced within a variety of industries, including film, TV, radio, music recording, publishing, theatre and sports. • Sports law – the firm’s practice within this area combines the necessary knowledge and expertise in different areas of law, including copyright, contracts and litigation. The firm’s excellent services are supported by a deep knowledge of all of the major sporting disciplines and international sports cultures in different regions and countries. Enforcement • Litigation – this team protects and enforces clients’ IP rights. It has extensive expertise in handling general litigation, enforcement actions, customs and international trade issues, and administrative, civil and criminal matters. It also develops tailored anticounterfeiting programmes. The firm handles the largest percentage of IP litigation in Mexico, both before the Mexican Institute of Intellectual Property and in the federal courts. Further, we are prepared to offer and conduct general commercial and civil litigation with our allied litigation firms.
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Main address Hamburgo 260 Mexico City Col Juarez 06600 Mexico T +52 55 5533 5060 F +52 55 5208 8387 E mailbox@uhthoff.com.mx Professional contacts Javier Uhthoff Orive Senior partner E j.uhthoff@uhthoff.com.mx Eugenio Pérez Partner E eugenioperez@uhthoff.com.mx
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Venturini IP www.venturini-ip.com
Venturini IP is a young firm that was founded in 2018 by patent expert Andre Venturini to address the need in the Brazilian market for a new approach to IP work. Despite being a young firm, our partners combine decades of IP-related experience and offer expertise across diverse technology industries, among them information technology, telecommunications, oil and gas, life sciences, pharmaceuticals, biotechnology, chemicals and petrochemicals, and mechanics. One of the core strengths of Venturini IP’s is its patent practice. We prioritise work in the patent field, meaning that we can provide our clients with strategic and attentive assistance across the whole patent process. Out of our office in Rio de Janeiro, our multilingual team offers local and international clients the following services: • Portfolio and risk management – we work with our clients to structure a portfolio of R&D projects and technologies in line with the objective of putting in place efficient IP protection. In addition to carrying out prior searches, drafting patent applications, conducting patent landscapes and freedomto-operate analyses and monitoring competitor cases, we also assess enforcement opportunities and infringement risks; • Patent filing and prosecution – patent filing and prosecution in Brazil need not be complicated. We help our clients throughout this process, making sure to avoid the pitfalls of the Brazilian Patent Office and make the most of its rules to obtain stronger and faster protection; • Post-grant proceedings – our patent prosecution experience extends to post-grant review of granted patents. We assist our clients in challenging the validity of granted patents either before the Brazilian Patent Office or the federal courts; • Monetisation and transactions – we help our clients to realise the full value of their patent portfolio by leveraging their assets to generate revenue through licensing and other transactions. We have the necessary resources to carry out the valuation of patents, to identify third parties interested in transfer of technology/licensing, as well as to draft and negotiate the corresponding contracts; • Expert litigation support – if litigation is required, we can brief and manage the right
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law firm for our clients, based on personal preferences and budget. Our IP team will also act as technical experts in validity and infringement law suits; • Tax incentives and R&D funding – through our exclusive partnership with ABGI Brazil, a consulting company specialised in managing financial resources and processes to foster innovation, we provide our clients with a broader scope of solutions to increase the effectiveness of R&D investments. In addition to our patent-related solutions, we are able to support our clients with the funding, grant and management of tax incentives for innovation; fundraising; the management of innovation projects; and structuring R&D centres aiming to optimise R&D activities. We believe that our strength lies in pragmatism, clarity in communication and in establishing and maintaining a closer relationship with our clients. We embrace any opportunity to visit clients to truly understand their business and see how their IP strategy could be adapted to meet their needs. As a young and growing firm, we are not bound by past practices and always aim to find workable solutions for clients based on their specific goals and requirements. We know where we add value and we do not overcharge our clients for simple administrative tasks. We are sharp, client focused, cost effective and results oriented. Simply put: we do patents. And we are good at it.
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“Making waves in the Brazilian patent space… Expert support in complex litigation and topnotch contract negotiation”
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Main address Praça Pio X 89 Suite 202 Rio de Janeiro 20040-020 Brazil T +55 21 2081 6990 E info@venturini-ip.com Professional contacts André Venturini Partner E andre.venturini@venturini-ip.com
IAM Patent 1000 1203
1204 IAM Patent 1000
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United States and Canada
Canada
1206
United States: Expert witnesses 1248
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Missouri
1501
New Jersey
1503
Arizona
1306
New York
1509
California
1308
North Carolina
1563
Colorado
1360
Oregon
1567
DC Metro Area
1367
Pennsylvania
1570
Delaware
1415
Texas
1578
Georgia
1421
Utah
1607
Illinois
1434
Washington
1618
Massachusetts
1455
Wisconsin
1635
Michigan
1486
Minnesota
1490
United States: National
1750
IAM Patent 1000 1205
Canada
Since the Patent Act was revised and the new Patent Rules were introduced in October 2019, Canada’s IP scene has been looking vibrant. Although the bulk of the instructions that cross the desks of practitioners concern the life sciences, technology briefs are also flying in – a trend which has much to do with the reshaping and fine-tuning of the IP regime. For instance, after the Federal Court rejected the Canadian Patent Office’s original ‘problem-solution approach’ in Yves Choueifaty v Attorney General of Canada, it issued new guidance, outlining a three-step method for determining patentable subject matter. The new method focuses on defining the claim’s true invention and determining whether that qualifies as patentable subject matter. As a result, Canadian applicants seeking patent protection for computer-implemented inventions should now emphasise how the invention enhances function or solves problems. On another note, the new trade agreement between Canada, the United States and Mexico, which took effect on 1 July 2020, will affect all IP rights in Canada, including patent rights. One significant modification will be patent term adjustment to compensate for unnecessary delays caused by the Canadian Intellectual Property Office (CIPO) during the review of an application. This is expected to be introduced within the next four years and will be of great interest to patent holders, especially in the pharmaceutical industry. Aside from legislative changes, the country has remained stable and has seen a steady rise in work, which has allowed new players to make their mark on the legal landscape and is evidenced by new entries to the firm and individual tables.
Aird & Berlis LLP | Aird & McBurney LP
Dynamic outfit Aird & Berlis | Aird & McBurney has been going from strength to strength lately: its prosecution practice is widely respected and its contentious division has started turning heads too. The group has an affinity for the life sciences and many members – including Kimberly McManus and Lola Bartoszewicz – come equipped with PhDs, reflecting the firm’s scientific expertise. McManus drafts applications with a view to generating business value and strengthening clients’ portfolios; while Bartoszewicz showcases exceptional range and has recently been venturing into the field of environmental technologies. Companies looking to launch their products and gain a favourable market position have a great partner in Erica Lowthers; while Kitt Sinden acquits himself with distinction when representing pharmaceutical heavyweights before the Canadian Patent Appeal Board, as well as the Patent Reissue Board and the Patented Medicines Prices Review Board. Companies embroiled in heavy-duty disputes are also in safe hands with Timothy Lowman and Trent Horne on board. Lowman has handled a wide spectrum of commercial and IP skirmishes during his four decades of practice, giving him superb advocacy skills. Horne is a frequent contributor to two leading publications on Federal Court practice and procedure, whose technical knowledge is “second to none”.
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Aitken Klee LLP
Elite litigation firm Aitken Klee is home to a crew of seasoned trial lawyers who are resolutely focused on securing the best results for their life sciences and high-tech following, whether at home or abroad. Lately, Marcus Klee and Jonathan Stainsby have been staunchly defending Pharmascience against Eli Lilly in an infringement claim. Managing partner Klee has several landmark judgments to his name; while Stainsby’s contentious prowess extends to employment and other commercial disagreements too. IAM Patent 1000 newcomer Scott Beeser has rare experience as the first biopharmaceutical patent attorney at an international generic drug manufacturer, which he has leveraged to chalk up an enviable track record in litigation under the Patented Medicines (Notice of Compliance) (PM(NOC)) Regulations. He recently teamed up with Stainsby to successfully defend Taro Pharmaceuticals against an infringement claim, the result of which allowed Taro to enter the market five years before the expiry of its patent. All-rounder Bill Mayo executes a variety of instructions with finesse, from validity opinions to strategic advice; his deep understanding of regulatory issues is a major plus for his life sciences patrons. Neuroscience and biomedical engineering maestro Bryan Norrie has “carved out a real presence at the Bar”. A “brilliant and persuasive litigator”, Michael Crinson has been representing Maoz Betser-Zilevitch in a patent infringement case relating to oil and gas technology. See p1646 for firm profile
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Canada Michael D Crinson Aitken Klee LLP
Individuals: litigation Andrew Brodkin Goodmans LLP
Mark Davis Norton Rose Fulbright
Anthony G Creber Gowling WLG
Vincent M de Grandpré Osler, Hoskin & Harcourt LLP
Ronald E Dimock Gowling WLG
Julie Desrosiers Fasken
François Guay Smart & Biggar
Steven Garland Smart & Biggar
Steven Mason McCarthy Tétrault LLP
Ben Hackett Goodmans LLP
Harry B Radomski Goodmans LLP
Sana Halwani Lenczner Slaght
Judith M Robinson Norton Rose Fulbright
Sheldon Hamilton Smart & Biggar
Andrew M Shaughnessy Torys LLP
Trent Horne Aird & Berlis LLP | Aird & McBurney LP See p1244
Bruce Stratton DLA Piper J Bradley White Osler, Hoskin & Harcourt LLP Peter R Wilcox Belmore Neidrauer LLP Melanie Baird Blake Cassels & Graydon LLP Andrew Bernstein Torys LLP Donald M Cameron Bereskin & Parr LLP Dino Clarizio Goodmans LLP
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See p1231
Douglas N Deeth Deeth Williams Wall LLP
Gunars Gaikis Smart & Biggar
Jonathan Stainsby Aitken Klee LLP
See p1230
Dominique T Hussey Bennett Jones LLP Yoon Kang Smart & Biggar
See p1246
Marcus Klee Aitken Klee LLP
See p1235
Nathaniel Lipkus Osler, Hoskin & Harcourt LLP
See p1238
Alan Macek DLA Piper Robert HC MacFarlane Bereskin & Parr LLP R Scott MacKendrick Bereskin & Parr LLP Jason Markwell Fasken
IAM Patent 1000 1207
Canada Bill Mayo Aitken Klee LLP
See p1239
Brian R Daley Norton Rose Fulbright
Andrew McIntosh Bereskin & Parr LLP
Carina De Pellegrin Borden Ladner Gervais LLP
Jamie Mills Borden Ladner Gervais LLP
Timothy St John Ellam McCarthy Tétrault LLP
Marek Nitoslawski Fasken
Ryan Evans Smart & Biggar
Nancy Pei Smart & Biggar
Neil Fineberg Fineberg Ramamoorthy
Anthony M Prenol CPST Intellectual Property
Tim Gilbert Gilbert’s LLP
Jordana Sanft Norton Rose Fulbright
Nelson Godfrey Gowling WLG
Jordan Scopa Goodmans LLP
Brian W Gray Brian Gray Law
Andrew Skodyn Blake Cassels & Graydon LLP
Amy Grenon Norton Rose Fulbright
David Tait McCarthy Tétrault LLP
Marie Lafleur Fasken
Christopher C Van Barr Gowling WLG
Geoffrey Langen Osler, Hoskin & Harcourt LLP
Allyson Whyte Nowak Norton Rose Fulbright
Kevin L LaRoche Borden Ladner Gervais LLP
Nisha Anand Gilbert’s LLP
See p1226
Fiona Legere McCarthy Tétrault LLP
Scott Beeser Aitken Klee LLP
See p1228
Beverley Moore Borden Ladner Gervais LLP
Yael Bienenstock Torys LLP
Geoffrey Mowatt DLA Piper
Adam Bobker Bereskin & Parr LLP
Richard Naiberg Goodmans LLP
Rebecca Crane McCarthy Tétrault LLP
Kamleh J Nicola Baker McKenzie
Michael Crichton Gowling WLG
John Norman Gowling WLG
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See p1232
See p1237
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Canada Bryan Norrie Aitken Klee LLP
See p1241
Bob Sotiriadis ROBIC LLP
Evan Nuttall Smart & Biggar
Joshua Spicer Bereskin & Parr LLP
Kavita Ramamoorthy Fineberg Ramamoorthy
Steven Tanner McCarthy Tétrault LLP
William H Richardson Baker McKenzie
Cynthia Tape Lenczner Slaght
Chantal Saunders Borden Ladner Gervais LLP
David Turgeon Fasken
Sandon Shogilev Goodmans LLP
Kristin Wall Norton Rose Fulbright
Amrita V Singh Marks & Clerk
Jeremy Want Smart & Biggar
Patrick Stewart Smith Gowling WLG
Marian Wolanski Belmore Neidrauer LLP
Baker McKenzie
International powerhouse Baker McKenzie is a household name when it comes to intellectual property and its Toronto arm makes astute use of the firm’s sweeping geographical coverage and treasure trove of resources to bring home the wins in commercially consequential cases. It has continued to represent Burlington Northern and Santa Fe Railway Company in an infringement suit of utmost significance, as the adverse party’s patents threaten to monopolise the use of web-based e-commerce tools for the pricing and ordering of goods by rail between Canada and the United States. Running point on this case are William Richardson and Kamleh Nicola. Highly regarded by peers, Richardson has a steady hand when battling it out in complex disputes, but his client-centricity means he also looks to settle out of court where possible. “A phenomenal mentor with a high profile in the IP community”, Nicola works diligently to reduce the risks that her patrons may face. One of her specialities is navigating the intricacies of the country’s dynamic health regulatory regime.
BCF Business Law
BCF Business Law earns plaudits for its “exceptional client focus, responsiveness and personalised but cost-effective service – it really feels like an extension of an in-house team”. Its diversely talented attorneys
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cooperate in a collegiate style and “can handle a vast range of complex technologies with ease”; “extensive knowledge of Canadian, US and European patent law” is another draw. On the biotechnology side, Andréanne Auger works closely with developers and their early-stage inventions to provide cogent advice that adds value to their creations. Tuba Yamaç holds a PhD in biomedical materials and fluidly guides startups and multinationals throughout the patenting process. Software and telecommunications ace Julien Lachere thrives when tackling ground-breaking technologies and has been vital to the development of the BCF Imagine programme, which provides vital support to Quebec-based start-ups. Ilya Kalnish and Dominic Goudreault shine in the mechanical arena. Kalnish is “an outstanding patent attorney with strong business skills and a high level of professionalism. He has a remarkable capacity to comprehend complex inventions, draft excellent applications and help his clients in making strategic decisions. He is a total team player”. “Dominic is extremely well organised and structured when drafting applications. He gets straight to the point and omits verbiage; and you can count on him to deliver as promised.”
Belmore Neidrauer LLP
Belmore Neidrauer is an invaluable partner in complex litigation, thanks to its eloquent, strategic and technically savvy advocates. The side tackles
IAM Patent 1000 1209
Canada disputes for some of the leading names in the pharmaceutical industry and recently prevailed for Janssen in a patent infringement action against Teva under the new PM(NOC) Regulations involving Janssen’s schizophrenia medication. Taking the lead on this matter were Peter Wilcox and Marian Wolanski. Litigator par excellence Wilcox heads up the group and is a repository of trust for the likes of Pfizer, Bayer and National Oilwell Varco. With a refined understanding of biotechnology, Wolanski adds great depth to the practice and is a compelling performer before the courts.
Individuals: prosecution
Bennett Jones LLP
Edward Fan Torys LLP
Equally as impressive in prosecution, litigation and transactions, Bennett Jones’ patent agents and lawyers work in tandem to produce exemplary results. With offices in Canada, the United States and China, the side serves clients all over the world and has developed an extensive network to call on for back-up as needed. The prosecution unit can handle matters in a variety of fields, but flourishes in the life sciences, where Irene Bridger and Edward Yoo capitalise on their backgrounds in microbiology to advise major players. Adding to its dexterity is chemistry ace Roseann Caldwell, who brings a strategic eye to the management of large portfolios. Dominique Hussey is “a delightful and very well-known lawyer who is extremely active in the profession”; her mastery of regulatory issues also comes in handy when executing licensing agreements. At the heart of the transactional practice are Stephen Burns and Michael Whitt, who both bring longstanding experience to the table. Burns is at home leading large multi-vendor outsourcing transactions, and Whitt is always on hand to provide commercially on-point advice.
Bereskin & Parr LLP
“Bereskin & Parr is the type of firm you can entrust with absolutely anything – it will always deliver excellent quality and added value to its clients, while keeping costs reasonable. The team is extremely responsive to client needs and innovative in suggesting effective strategies. Unsurprisingly, it is at the top of any list for IP representation in Canada.” Leading the litigation group is Andrew McIntosh, whose chemistry background and smooth advocacy skills make him well suited to technically intricate disputes. Lately, he has been defending Nova Chemicals alongside Robert MacFarlane and Adam Bobker in a claim for the disgorgement of its profits relating to a patent infringement suit brought by Dow Chemical Corporation. Courtroom supremo MacFarlane has been stacking up the wins for more
1210 IAM Patent 1000
Highly recommended Santosh Chari CPST Intellectual Property Yuri Chumak Dickinson Wright Brandon Evenson Borden Ladner Gervais LLP
John Knox Smart & Biggar Daphne Lainson Smart & Biggar Alfred A Macchione McCarthy Tétrault LLP David Nauman Borden Ladner Gervais LLP Natalie Raffoul Brion Raffoul LLP
See p1242
Fraser Rowand Rowand LLP Konrad A Sechley Gowling WLG Andrew Sojonky Borden Ladner Gervais LLP Susan Tandan Gowling WLG Edward Yoo Bennett Jones LLP Matthew Zischka Smart & Biggar Recommended Alexandre Abecassis Fasken
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Canada Michael Adams Riches McKenzie & Herbert LLP
See p1225
Ian Clark Marks & Clerk
Louis Allard Borden Ladner Gervais LLP
Sébastien Clark Norton Rose Fulbright
MaryAnne Arnoldo Torys LLP
France Côté Benoît & Côté
Jonathan Auerbach Stikeman Elliott LLP
T Andrew Currier PCK Perry + Currier Inc
Andréanne Auger BCF Business Law
See p1227
Geoffrey de Kleine Borden Ladner Gervais LLP
Lola Bartoszewicz Aird & Berlis LLP | Aird & McBurney LP
Carmela DeLuca Bereskin & Parr LLP
Leah Begleiter Rodin CPST Intellectual Property
Peter Elyjiw Adapt IP Law
Curtis Behmann Borden Ladner Gervais LLP
David Enciso ROBIC LLP
Armand Benitah Fasken
Patricia Folkins Bereskin & Parr LLP
Marc Benoît Benoît & Côté
Eduardo Fonseca Moffat & Co Patent & Trademark Agents
Graeme Boocock Borden Ladner Gervais LLP
Stephan Georgiev Smart & Biggar
Ken Bousfield Ridout & Maybee LLP
Johann Gest Fasken
Allan Brett Smart & Biggar
Isabelle Girard ROBIC LLP
Irene T Bridger Bennett Jones LLP
Dominic Goudreault BCF Business Law
Art Brion Brion Raffoul LLP
See p1229
Louis-Pierre Gravelle ROBIC LLP
Roseann Caldwell Bennett Jones LLP
Micheline Gravelle Bereskin & Parr LLP
Alaka Chatterjee Vanguard IP LLP
Jean-Charles Grégoire Marks & Clerk
Jung-Kay Chiu Norton Rose Fulbright
Christopher D Heer Heer Law
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See p1233
IAM Patent 1000 1211
Canada Neil Henderson Gowling WLG
Maya Medeiros Norton Rose Fulbright
Jason Hynes Bereskin & Parr LLP
Lisa Melanson McCarthy Tétrault LLP
Nathalie Jodoin ROBIC LLP
Philip C Mendes da Costa Bereskin & Parr LLP
Ilya Kalnish BCF Business Law
See p1234
André Merizzi Merizzi Ramsbottom & Forster
Selena Kim Gowling WLG
Gabrielle Moisan ROBIC LLP
Brian Kingwell Gowling WLG
Jason Mueller-Neuhaus Borden Ladner Gervais LLP
Hetal Kushwaha Marks & Clerk
Omar A Nassif Gowling WLG
Julien Lachere BCF Business Law
See p1236
Mark D Penner Fasken
Serge Lapointe Fasken
Stephen Perry PCK Perry + Currier Inc
Alain M Leclerc Fasken
Mark Pidkowich Smart & Biggar
Brian Lee Gowling WLG
Daniel R Polonenko Gowling WLG
James E Longwell Gowling WLG
Dominique Pomerleau ROBIC LLP
Erica Lowthers Aird & Berlis LLP | Aird & McBurney LP
Matthew D Powell Dickinson Wright
Gavin N Manning Oyen Wiggs Green & Mutala LLP
Scott Pundsack Borden Ladner Gervais LLP
Kathleen E Marsman Borden Ladner Gervais LLP
James Ramsbottom Merizzi Ramsbottom & Forster
Brigide Mattar Smart & Biggar
Bhupinder Randhawa Bereskin & Parr LLP
Eileen M McMahon Torys LLP
Jennifer Raoul Borden Ladner Gervais LLP
Kimberly McManus Aird & Berlis LLP | Aird & McBurney LP
Teresa Reguly Torys LLP
1212 IAM Patent 1000
See p1240
See p1243
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Canada Roch Ripley Gowling WLG (Canada) LLP
Melanie Szweras Bereskin & Parr LLP
David A Ruston Marks & Clerk
Grant Tisdall Gowling WLG
David Schwartz Smart & Biggar
Jeff Tracey Rowand LLP
Serge Shahinian Lavery Lawyers
Mark Vickers Borden Ladner Gervais LLP
Kevin Shipley Fogler, Rubinoff LLP
J Bradley White Osler, Hoskin & Harcourt LLP
Elliott Simcoe Smart & Biggar
Jennifer Wilkie Gowling WLG
Kitt Sinden Aird & Berlis LLP | Aird & McBurney LP
Jenna L Wilson Wilson Lue LLP
Brett Slaney CPST Intellectual Property
Tuba Yamaç BCF Business Law
Robert Storey Bereskin & Parr LLP
Vincent Kam-Sun Yip McCarthy Tétrault LLP
than 40 years; Bobker is “a bright lawyer who thinks on his feet and provides clear guidance in disputes and smart strategies in injunction proceedings”. The pair recently linked up with IAM Patent 1000 debutant Joshua Spicer to represent Packers Plus Energy Services in infringement actions for damages and accounting of profits. Spicer is acclaimed as “an excellent litigator who strikes a balance between what is required from a business standpoint and ensuring patent rights are identified and protected to the full extent of the law. His advocacy, work ethic and attention to detail are exceptional”. Coming through for GlaxoSmithKline are Donald Cameron, Scott MacKendrick and Melanie Szweras, who have been meticulously handling two proceedings against Sandoz and Gilead relating to its HIV medication. Cameron is a trusted ally of innovators in the courtroom, having served as senior trial counsel in Canada’s first-ever DNA patent trial; and the esteemed MacKendrick is likewise at home when acting in hefty disputes. Versatile multi-tasker Melanie Szweras combines litigation and prosecution capabilities to provide detailed guidance that considers the entire patent lifecycle. Also new to the guide this year and bolstering the firm’s prosecution offering are Carmela DeLuca and Jason Hynes. A co-founder of the
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See p1246
See p1247
Greater Montreal Chapter of Women in Bio, DeLuca advises start-ups and universities on biotechnology and pharmaceutical applications, as well as plant breeders’ rights. Those who have collaborated with Hynes have nothing but good things to say: “Jason’s technical knowledge and ability to quickly understand inventions are fantastic. From the beginning, he made it clear that he was there to do the heavy lifting and make the process as painless as possible.” Life sciences division spearhead and co-leader of the cannabis practice Micheline Gravelle is not afraid to stray off the beaten path in search of innovative solutions to protecting patents. She is key counsel to Autolus Therapeutics and has seen through many of its applications relating to the use of CAR-T cells in the treatment of cancer. Similarly, Patricia Folkins relishes working with emerging technologies and has recently been filing for OICIR in relation to its first-in-class pre-clinical therapeutic targeting the WDR5 protein for the treatment of blood cancers. She speaks the language of inventors thanks to time spent in-house at a leading biopharmaceutical company. On the mechanical side, Philip Mendes da Costa and Robert Storey are the names to note. When it comes to the strategic development of patent portfolios, Mendes da Costa is the go-to; while Storey
IAM Patent 1000 1213
Canada has cultivated deep reserves of knowledge over his 40 years of practice and is a font of wisdom for a highflying clientele. The firm’s patent offering is completed by a razor-sharp transactional practice, which is home to Bhupinder Randhawa, Victor Krichker and Noel Courage. Electrical and computer technology group leader Randhawa knows how to locate critical IP rights and monetise them to maximum effect. An authority on technology, Kirchker is a safe pair of hands for software licences; while Courage is the resident medical inventions connoisseur, who counts the University Health Network among his clients.
Blake Cassels & Graydon LLP
Despite a number of departures in 2020, Blake Cassels & Graydon remains firmly on the radar as a potent IP player in which total trust can be placed by companies looking to procure, enforce and monetise their assets. It has been locking down patent protection for Brookhaven Science Associates; Mirametrix, a developer of consumer electronics integrated with attention sensing technology; and global building materials company James Hardie. The heart and soul of the litigation practice are Melanie Baird and Andrew Skodyn. Dynamic lawyer Baird has made her mark tackling disputes relating to emerging technologies and has notched up several firsts, including presiding as counsel on Canada’s first biosimilar patent case. A tenacious advocate, Skodyn has a cracking pharmaceutical practice and commands the attention of the courtroom. The pair make a great team, having spent most of their careers working together, and have been busy representing Genentech, Biogen, F Hoffman-La Roche and Hoffman-La Roche Limited in an infringement and validity action concerning an innovative biologic treatment. Other highlights include acting for Facebook and Instagram. New recruit Christopher Hunter has settled into his role perfectly as captain of the commercial IP group. The mechanical engineer views intangible assets through a commercial lens and has been advising GlaxoSmithKline in connection with its collaboration with Medicago to develop, evaluate and manufacture an adjuvanted covid-19 vaccine candidate. Lululemon is another key client: Hunter shrewdly advised it on its acquisition of Mirror, a home fitness start-up.
Borden Ladner Gervais LLP
A prolific patent filer, Borden Ladner Gervais (BLG) is a trusted adviser to industry leaders and innovators across a range of sectors. Its bench strength and technical prowess are simply undeniable, especially with 12 individuals recommended for prosecution
1214 IAM Patent 1000
this year. The life sciences are a forte here, especially with eminent experts Mark Vickers, David Nauman, Scott Pundsack, Jennifer Raoul, Kathleen Marsman and Graeme Boocock on deck. National life sciences group leader Vickers is a hands-on, big-picture thinker with a percipient approach to developing portfolios; while Nauman is a favourite among entrepreneurs, academic research institutions and government organisations for his astute strategic counselling. As a lawyer and a patent agent, senior counsel Pundsack is an excellent choice for litigation and opposition support. Biotechnology ace Raoul slots in perfectly with in-house teams and guides them effortlessly through the country’s regulatory regimes. Superstars Marsman and Boocock recently linked up to provide The Hospital for Sick Children with clear, succinct and practical patentability advice in the molecular biology, diagnostics and personalised medicine fields. The high-tech realm is home to Curtis Behmann, Louis Allard and Brandon Evenson, each of whom brings a unique skillset to the table. Former senior patent examiner at the CIPO and master strategist Behmann comes up with business-driven plans that guarantee his patrons a solid foothold in their respective markets. Named as inventor on four US patents and the author of more than 25 scientific articles, Allard understands first-hand the needs of innovators looking to protect their most valuable assets. The versatile Evenson has been prosecuting applications for Mobility View in over 80 countries, commercialising assets for Cryptomill Technologies and closing deals worth US$31 million on behalf of Titan Medical. The polished negotiator is also BLG’s resident fintech guru. On the mechanical front, Geoffrey de Kleine, Andrew Sojonky and Jason Mueller-Neuhaus acquit themselves with distinction. Vancouver’s regional manager de Kleine always keeps costs in mind when looking to grow portfolios; Sojonky conducts incisive patent procurement for Fortune Global 500 companies; and MuellerNeuhaus is a widely respected authority on computer information processing systems and business methods. When things heat up, BLG assembles a litigation strike force in the form of Kevin LaRoche, Chantal Saunders, Beverley Moore, Jamie Mills and Carina De Pellegrin. High-tech and cybersecurity disputes are easily resolved by LaRoche. Moore, Mills and IAM Patent 1000 newcomer Pellegrin have been tackling heavy-duty pharmaceutical battles lately: among other things, the trio represented Millennium Pharmaceuticals against Teva in a countersuit relating to the infringement of three patents. See p1660 for firm profile
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Canada Christine Ing McCarthy Tétrault LLP
Individuals: transactions Highly recommended
Victor Krichker Bereskin & Parr LLP
Jean-Nicolas Delage Fasken
Timothy M Lowman Aird & Berlis LLP | Aird & McBurney LP
Alfred A Macchione McCarthy Tétrault LLP
Gavin N Manning Oyen Wiggs Green & Mutala LLP
Eileen M McMahon Torys LLP W Lee Webster Osler, Hoskin & Harcourt LLP
See p1245
Lisa Melanson McCarthy Tétrault LLP
Recommended
Anita E Nador Gowling WLG
Stephen D Burns Bennett Jones LLP
François Painchaud ROBIC LLP
Jung-Kay Chiu Norton Rose Fulbright
Bhupinder Randhawa Bereskin & Parr LLP
Noel A Courage Bereskin & Parr LLP
Alistair Simpson Smart & Biggar
Brandon Evenson Borden Ladner Gervais LLP
Theodore W Sum Smart & Biggar
Edward Fan Torys LLP
Grant Tisdall Gowling WLG
Stephan Georgiev Smart & Biggar
Gervas W Wall Deeth Williams Wall LLP
Sanjay Goorachurn Smart & Biggar
Michael R Whitt QC Bennett Jones LLP
James P Hatton QC Farris, Vaughan, Wills & Murphy LLP
Nicholas Wong Blaney McMurtry LLP
Christopher Hunter Blake Cassels & Graydon LLP
Vincent Kam-Sun Yip McCarthy Tétrault LLP
Brion Raffoul LLP
Driven by innovation, Ottawa-based boutique Brion Raffoul is home to a set of technology-focused practitioners who stay true to their entrepreneurial spirit. One major draw is its ability to counsel in English, French, Spanish and Chinese, which is a boon to local clients keen to expand and cement their presence abroad, and vice versa. Cornerstones of the
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practice Art Brion and Natalie Raffoul intuitively grasp the complexities of novel technologies in various technical domains. Brion is closely involved in Canada’s start-up community; his friendly manner and strategic vision have helped a multitude of fledgling inventors to transform their ideas into thriving businesses. Raffoul carefully shepherds companies through the rocky terrain of software
IAM Patent 1000 1215
Canada Blake Cassels & Graydon LLP
Firms: litigation Aitken Klee LLP
See p1646
Borden Ladner Gervais LLP
Goodmans LLP
DLA Piper
Gowling WLG
Fasken
McCarthy Tétrault LLP
Baker McKenzie
Norton Rose Fulbright
Bennett Jones LLP
Osler, Hoskin & Harcourt LLP
See p1720
CPST Intellectual Property
Smart & Biggar
See p1730
Fineberg Ramamoorthy
Torys LLP
Gilbert’s LLP
Belmore Neidrauer LLP
Lenczner Slaght
Bereskin & Parr LLP
ROBIC LLP
patenting, has a refined understanding of business methods, artificial intelligence (AI) and machine learning, and knows how to carve out a route to optimum protection. See p1662 for firm profile
CPST Intellectual Property
Since opening its doors in 2020, CPST Intellectual Property has been making waves on the legal landscape. While the outfit may be young, the collective experience of the team is nothing short of impressive and over half of its prosecution pros feature in the guide this year. Life sciences whizz Santosh Chari brings more than three decades of wisdom to the mix and is a great port of call for international applications. Having started out as a researcher at a major biotechnology company, IAM Patent 1000 newcomer Leah Begleiter Rodin understands the business value behind strong patent protection and develops portfolios efficiently. Novel technologies never faze Brett Slaney, who comfortably navigates tricky AI, quantum computing and blockchain matters. The dual-qualified Anthony Prenol solves complex problems from an interdisciplinary perspective, given his comprehensive prosecution and litigation know-how.
Dickinson Wright
Headquartered in the United States, Dickinson Wright operates out of 19 bases in North America and has some 475-plus practitioners on hand to dispense
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See p1660
See p1686
pragmatic solutions and sound guidance. It recently drafted superstars Yuri Chumak and Matthew Powell into its ranks and as a result, the firm makes its debut in the Canada rankings this year. Chumak counsels diverse clients in the computer and software space as they make strategic moves both at home and further afield. He also showcases his versatility through his extensive experience in complex trial and appellate proceedings. “A great guy to work with”, Powell “is responsive, understands complex technologies and has a strategic mindset that helps shape a company’s entire patent strategy. He knows that inventions are pursued as a means to create revenue and goes out of his way to help his clients, even leveraging his own personal network in the technology space to make introductions and connections”.
DLA Piper
An integral part of one of the largest European and international patent groups, the Canadian contingent of DLA Piper works with its counterparts all over the world to provide joined-up support to a discerning client base. For example, Bruce Stratton and Alan Macek have been representing Videotron, one of the country’s largest telecommunications providers, in infringement proceedings brought by Rovi and Tivo; and enforcing patents for Canadian Energy Services to ensure that it retains its competitive market position. Stratton is hailed by peers as “an excellent and thoughtful litigator”; while Macek is always up to date on the latest developments in the field and receives
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Canada praise for his “client-focused approach”. Joining them this year is Geoffrey Mowatt, a superb litigator with an intimate understanding of regulatory and compliance practices. He and Stratton have recently been acting for Pfizer in Canada’s first biosimilar patent infringement action, brought by Janssen.
Fasken
Canadian titan Fasken has more than 750 lawyers and agents stationed across seven bases in the country and in Beijing, Johannesburg and London. Its prosecution, litigation and transactional experts work hand in glove to provide practical, businessdriven solutions to clients of all shapes and sizes. Pharmaceutical and biotechnology companies embroiled in high-stakes disputes can sleep soundly with Julie Desrosiers and Marie Lafleur on board: Desrosiers tackles complex proceedings with poise, while Lafleur is a fine choice for biologicals and skirmishes under the PM(NOC) Regulations. When flagship products are at stake, David Turgeon steps up to the plate: the global IP group chair thinks strategically and designs results-driven enforcement plans that are easy on the bank balance too. “A brilliant pharmaceutical patent litigator with fantastic client service skills and a dedication to excellence”, Jason Markwell is “an all-round great advocate”. High-tech ace Marek Nitoslawski brings the heat in transnational disputes and knows how best to ensure that counsel across the world are all on the same page. President of the Intellectual Property Institute of Canada and versatile counsellor Alain Leclerc advises holistically across the patent lifecycle. On the non-contentious front, the firm has a stellar line-up in the form of Serge Lapointe, Mark Penner, Alexandre Abecassis, Johann Gest and Armand Benitah. The business-minded and technically skilled Lapointe has in-depth industry and private practice experience, which informs his validity and infringement opinions. Also in the life sciences, fellow biotechnology maven Penner has the commercialisation of assets down to a T. Electrical engineering instructions are impeccably executed by Abecassis and Gest, who between them have spent over three decades at the patent coalface. Dual-qualified Benitah has a dynamic practice encompassing everything from patents, trademarks and copyrights to industrial designs and trade secrets. As a result, he advises holistically and get companies maximum return on their investments with minimum fuss. Contributing much to the deal side of the practice is Jean-Nicolas Delage, who flexes deep licensing and technology transfer expertise.
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Firms: prosecution Bereskin & Parr LLP Borden Ladner Gervais LLP
See p1660
Gowling WLG Smart & Biggar
See p1730
Brion Raffoul LLP
See p1662
CPST Intellectual Property Fasken Marks & Clerk McCarthy Tétrault LLP Norton Rose Fulbright Osler, Hoskin & Harcourt LLP
See p1720
PCK Perry + Currier Inc ROBIC LLP Torys LLP Aird & Berlis LLP | Aird & McBurney LP BCF Business Law
See p1654
Bennett Jones LLP Blake Cassels & Graydon LLP Dickinson Wright Merizzi Ramsbottom & Forster
See p1710
Ridout & Maybee LLP Rowand LLP Stikeman Elliott LLP
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Canada Fineberg Ramamoorthy
Demonstrating great composure in complex cases, Neil Fineberg and Kavita Ramamoorthy are cornerstones of vibrant IP litigation boutique Fineberg Ramamoorthy. “Intelligent and strategic”, the pair are “outstanding at what they do and a real pleasure to work with or even against”. Fineberg’s chemistry background and Ramamoorthy’s toxicology doctorate ensure that every argument they present is underpinned by a solid technical understanding.
Gilbert’s LLP
The “thoughtful and imaginative” group at Gilbert’s is “not afraid to take risks and take on cases where the boundaries of the law need to be pushed. If you need a firm that will invest its all into a case, it is among the best – if not the best”. Namesake and leader of the practice Tim Gilbert bears “the hallmark of creativity”. His complete command of pharmaceutical matters has earned him a prominent position on the Canadian IP scene and he garners glowing notices as a result: “If I know a case needs some strategic manoeuvring, I refer to Tim. He is also very clever and impressive in bringing parties together, guiding them through tough negotiations and bringing about successful conclusions”. “Skilled and pleasant to deal with”, Nisha Anand “also shows a little tooth when necessary, but always in an appropriate way. She is a worthy adversary and a role model to men and women alike”. See p1686 for firm profile
Goodmans LLP
“There is absolutely no doubt that the Goodmans team are premier litigators by a long shot.” “It is one of the best firms to come up against in a dispute: its lawyers are always well prepared and their written and oral advocacy is second to none.” Leading the charge are Harry Radomski and Andrew Brodkin, who have unparalleled drug patent trial experience and are “extremely savvy” in managing complex litigation. “Harry is an absolute trailblazer, while Andrew is one of the best orators in Canada. He is a great cross-examiner too, but his real skill is assembling arguments alongside his team.” The praise continues to flow in: “The pair have built up a new generation of leading advocates, including Sandon Shogilev, Jordan Scopa and Ben Hackett. They have a collaborative approach, are gracious when coordinating among counsel and try to minimise disagreements wherever possible.” Radomski, Brodkin and Shogilev have recently been acting for Apotex in an infringement action brought under the PM(NOC) Regulations; while Scopa and Hackett teamed up with
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the division spearheads to take on Eli Lilly on behalf of Apotex under the same regime. Further contentious firepower comes in the form of Dino Clarizio and Richard Naiberg, who also make light work of prosecution instructions. Clarizio has co-authored two of Canada’s leading patent textbooks and has solid foundations to draw upon; while Naiberg recently went out to bat for Google in an infringement action against Sonos in relation to its beam speaker products.
Gowling WLG
A member of the patent elite, Gowling WLG has a lot to offer patrons, from a wealth of international resources – courtesy of its expansive global network – to a crew of seasoned professionals who can handle the toughest prosecution, litigation and transactional mandates. Life sciences companies seeking watertight patent protection have an abundance of options, including Brian Kingwell, Konrad Sechley, Selena Kim, Susan Tandan, Daniel Polonenko, Omar Nassif and Jennifer Wilkie. Based out of Vancouver, Kingwell has a patented medical device to his name and channels that same creativity in managing Genentech’s international portfolio. Sechley provides easily executable advice to biotech start-ups; while Kim is highly sought after for her keen strategic eye and dexterity. Tandan has been on a roll lately, having helped Autom River Inc to obtain extensive patent protection across every continent for its biodegradable insect trap. Polonenko taps into deep reserves of biotechnology wisdom to provide advice that gets right to the heart of business; he has co-authored 20 scientific publications, co-invented six patent families and spent seven years at executive levels of two biotechnology companies. With over three decades of experience behind him, Nassif is one of the savviest agents in Canada and drafts applications in a way that judges and juries instantly get. Of Wilkie, one client enthuses: “She works with wildly different inventions and really understands what makes each one unique. She has a 100% success rate and her arguments are always clear, concise and well conceived. She has even managed to overturn decisions to get patents granted and cannot be recommended enough.” On the hightech side, James Longwell, Neil Henderson, Brian Lee, Grant Tisdall and Roch Ripley are all equally as distinguished as their life sciences colleagues. The technically brilliant Longwell has been prosecuting multiple applications for Geeq Corporation relating to its cutting-edge blockchain technology, securing patent protection in the United States and internationally. Henderson “always provides pragmatic advice and really understands the need to leverage intangible assets to grow a business and
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Canada Firms: transactions Highly recommended Blake Cassels & Graydon LLP McCarthy Tétrault LLP Torys LLP Recommended Bennett Jones LLP Bereskin & Parr LLP Borden Ladner Gervais LLP
See p1660
Fasken Gowling WLG Norton Rose Fulbright Osler, Hoskin & Harcourt LLP
See p1720
ROBIC LLP Smart & Biggar
See p1730
turn it into a financial win. His ability to think outside of the box, come up with creative solutions and stay on top of portfolios is most impressive”. Colleague Lee likewise garners positive feedback: “He is one of the very rare patent attorneys who can identify patentable opportunities and effectively compile and submit applications that have a high success rate. Brian also has an excellent ability to capture the essence of a patent in way that makes sense to non-technical executive management.” An exemplary agent with the versatility to handle a wide range of technologies, Tisdall is a fine choice for strategic advice, international filings and the ironing out of R&D agreements. IT and software companies in search of a practitioner who “excels at filing applications and managing international portfolios, and provides practical, timely and cost-competitive services that differentiate him from a sea of other service providers”, should turn to Ripley. There is also no shortage of courtroom muscle at Gowling WLG, and Michael Crichton and Christopher Van Barr are two of the top names on the fight card. The pair recently represented LG Electronics in an infringement action involving
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mobile phone handover technology and SEPs – one of the only SEP cases ever litigated in Canada. Crichton also linked up with IAM Patent 1000 newcomer Nelson Godfrey to counsel BC Hydro in an infringement suit relating to methods for detecting atypical electricity consumption and the theft of electricity. A prominent figure in the pharmaceutical world, Anthony Creber is a trial wizard who has recently been acting for Astrellas Pharma in enforcing three of its patents against Sandoz. Colleague Ronald Dimock also sets the gold standard and has been pulling all the right levers to carry the day for Henkel Corporation against GEMAK Trust. He also appeared as an expert witness for Sanofi-Aventis. Patrick Stewart Smith has “a level of expertise and understanding of complex chemistry that go beyond the norm. He responds to issues with clarity and conviction, anticipates any hiccups and acts proactively to ensure his clients’ positions are well supported”. Joining them in the guide this year is John Norman, whose “robust combination of skill, experience and dedication is most reassuring. His temperament and demeanour are finely tuned to the needs of the litigation lifecycle, and he has a great disposition when honing strategies too”. Transactions ace Anita Nador understands the business value of intellectual property and puts commercially onpoint strategies in place to help clients maximise their investments.
Lenczner Slaght
Litigation boutique Lenczner Slaght is home to a cadre of lawyers who have acted for some of the biggest names in the life science and technology sectors. Key clients include JAMP Pharma Corp and TiVo Solutions, as well as its subsidiary Rovi Guides. Department lead Sana Halwani has been supporting the former throughout a series of actions under the PM(NOC) Regulations. A tenacious advocate who puts in eloquent performances, she has proven her mettle in technically complex proceedings time and time again. Joining her in the guide this year is Cynthia Tape, whose pathology PhD and commercial nous make her a valuable resource for universities and industry heavyweights alike.
Marks & Clerk
“Marks & Clerk has top-quality prosecution services and delivers legal advice that fits in with our organisation and its infrastructure,” enthuses one patron. “It is difficult to find foreign representatives who can provide a really seamless service when it comes to international filings, but you can count on Marks & Clerk to take care of it all.” Operating out of the Ottawa branch, Ian Clark, Hetal Kushwaha
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Canada and Jean-Charles Grégoire coordinate with clients, examiners and other counsel to ensure that largescale mandates are executed with finesse. A former research associate at the Institute for Biological Sciences at the National Research Council of Canada, Clark is the first point of call for life sciences matters; while Kushwaha is lauded for her “quick response times, customer-centricity and undivided attention to clients’ needs”. Astute in his approach to complex legal issues that have not yet been tested in Canada, Grégoire “is practical, deciphers the law and presents it in a way that makes the path forward very clear. He is excellent to work with”. Over in Toronto, David Ruston navigates a variety of engineering disciplines, including oil and gas technologies, medical imaging and even the aerospace industry. Freedom-to-operate searches and validity opinions are his fortes. The outfit’s contentious offering is heating up too, with the arrival of Bereskin & Parr’s Amrita Singh. “Industrious and hardworking, Amrita is a go-getter who is always moving the ball forward.” The “practical, thoughtful problem solver and sharp litigator” is “a natural leader who is well respected by her peers.”
McCarthy Tétrault LLP
The McCarthy Tétrault team “is fantastic and does truly wonderful work; they are smart, write incredibly well and produce excellent arguments before the judges; and most importantly, they get results. They have a solid grasp of the technologies and patents they work with, and excel at balancing cases that take place in multiple jurisdictions”. Providing a wraparound patent service, the outfit is a premier destination for life sciences, telecommunications and oil and gas entities looking to procure, enforce or monetise their assets. National IP litigation group chair Steven Mason is “the model of integrity, attention to detail and client dedication”. He and David Tait recently took the lead on multiple actions under the PM(NOC) Regulations for Merck concerning generic versions of three of its products. In the words of one patron: “David is a great litigator who really listens to us and gives tailored advice that is adapted to our business needs; his strategies really go a long way. I think the world of him and his team.” Flanking them is IAM Patent 1000 newcomer and “fantastic lawyer” Rebecca Crane, who stands out for her “scientific knowledge and ability to work effectively with in-house experts”. Bell, TELUS and Rogers Communications have the ear of Fiona Legere, who “conducts some of the most concise and impressive cross-examinations anyone has seen”, according to one peer. Within the petroleum industry, Timothy St John Ellam and Steven Tanner have been doing some great stuff,
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including representing MEG Energy in a dispute against Crude Solutions that has received nationwide attention. Recommended on both the prosecution and transactions tables, Lisa Melanson, Vincent KamSun Yip and Alfred Macchione are the perfect fit for all things non-contentious. Melanson is a go-to for effective cross-border strategies and global portfolios advice; and Kam-Sun Yip flawlessly navigates complex deals, such as Morningstar Inc’s acquisition of financial-planning and risk-profiling software firm PlanPlus Global. “Bright and up to date on the latest regulatory developments within AI and machine learning”, Macchione “has mastered writing patent claims that get maximum coverage and is extremely skilled at dealing with counterclaims too”. Overseeing the national technology law unit and co-leading the fintech group, Christine Ing has a flair for strategic IP development, licensing and technology transfers.
Merizzi Ramsbottom & Forster
A go-to for any prosecution needs, Merizzi Ramsbottom & Forster “has the expertise and genuine creativity to prepare patent applications in emerging and novel disciplines such as biotechnology. Its practitioners know how to translate inventions into well-drafted claims and have the foresight to incorporate details that can be used down the line when filing other applications in similar fields”. In Ottawa, André Merizzi is “a master at what he does. He has a constructive approach to drafting, covering subject matter as broadly as possible while focusing in on claims that are commercially useful. He is friendly, skilled at handling complex technologies, provides valuable insight and recommendations and keeps communication lines open. Simply, Andre is one of the best”. Making his IAM Patent 1000 debut this year, the “responsive and highly organised” James Ramsbottom operates out of Victoria: “James thinks critically and his combination of scientific knowledge and artful patent construction is rare to find.” See p1710 for firm profile
Norton Rose Fulbright
A comprehensive offering, widespread domestic coverage – it has outposts in Calgary, Montreal, Ottawa, Quebec, Toronto and Vancouver – and a mighty international network make Norton Rose Fulbright more than just an able running mate to some of the world’s most prominent life sciences and pharmaceutical companies. This year has seen it battle it out in some headline-grabbing cases – for instance, it acted for Pfizer in the first action to go to trial under the PM(NOC) Regulations and represented Novo Nordisk in the first patent infringement action
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Canada commenced under Section 8.2 of the regulations. Taking the lead on the former was Mark Davis, a “sharp, first-class litigator who is relentless in advocating for his clients. He is personable, easy to work with and gives practical advice”. Another major contributor to the firm’s success rates is Jordana Sanft, whose “extensive experience litigating pharmaceutical disputes is clearly reflected in her solid legal advice. She is super-knowledgeable, gives excellent strategic guidance and always thinks of the big picture and the business implications behind her suggestions. Jordana masters complicated technologies and works really well with expert witnesses, while showing a willingness to take the time to explain tricky procedural issues too”. Allyson Whyte Nowak and Amy Grenon also receive glowing feedback: “Allyson provides excellent advice, strategic counsel and solutions that are very thoughtful and aligned with a company’s overall objectives, while maintaining an outstanding level of client service.” “Amy is a fantastic litigator – she effectively and persuasively communicates the essence of complex technologies to the court. Her presentations are smooth and exude confidence, and she remains steady and focused during objections too. To top it off, she can answer any question at a moment’s notice, thanks to her instant recall of every case she works on.” Judith Robinson has also had a busy year, representing Adir and Servier Canada in cross-border proceedings against Apotex which went all the way to the Supreme Court. She brings great regulatory insight to the table; as does Brian Daley, who prevailed for I-MED Pharma against TearLab Corporation. IAM Patent 1000 newcomer Kristin Wall makes her debut in the guide on the back of stellar work for GlaxoSmithKline: she fought the corner of the pharmaceutical giant in the first court challenge under Canada’s newly enacted Certificate of Supplementary Protection Regulations. Over on the prosecution wing, Sébastien Clark and Maya Medeiros are the main attractions. A highly regarded scientific adviser in contentious proceedings, Clark is also a superb drafter and strategic counsellor – as evidenced by his work for Bombardier, which covers its entire global portfolio. Of Medeiros, one patron enthuses: “She truly goes above and beyond to support us in research and collaboration products. Her legal talent and client-centricity are exceptional: she is committed to understanding our business, technology and objectives, and always bears them in mind when giving advice.” National IP chair JungKay Chiu is an extremely versatile operator who has recently been working with Johnson & Johnson on its patent strategy.
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Osler, Hoskin & Harcourt LLP
Ascending to the gold tier this year, Osler Hoskin & Harcourt is going gangbusters in the life sciences right now, securing dozens of client wins and acting on some super-impressive mandates. It recently brought home several victories for Teva and has also been representing Samsung Bioepis against Fresenius Kabi. These success stories were due in no small part to Bradley White, who “runs a top-flight and successful shop. He is one of Canada’s leading and most respected litigators, and deserves only the highest praise”. He regularly pairs up with Nathaniel Lipkus to form an unstoppable duo. An “accomplished trial lawyer with a keen intellect and a strong team player in complex multi-party proceedings”, Lipkis “is always well prepared and super-courteous too”. Vincent de Grandpré and IAM Patent 1000 newcomer Geoffrey Langen make up the rest of the litigation strike force. All four have been coordinating seamlessly to represent Mylan Pharmaceuticals against Eli Lilly, AstraZeneca, Amgen and Takeda. De Grandpré earns further plaudits as “counsel of choice for complex cases and a smart, strategic lawyer who is very comfortable thinking on his feet”. The strengths of transactions whizz Lee Webster include “his technical expertise, clear and articulate communication, and attention to detail. In negotiations, he is persuasive, knows how to read the room and asserts himself in a way that gets the conversation back on track. Lee really protects his clients’ best interests and ensures they are protected in both the short and long term”. See p1720 for firm profile
PCK Perry + Currier Inc
A wall-to-wall service, technically diverse attorneys, advanced in-house AI technology and a transparent flat-fee structure are just some of the ways in which PCK Intellectual Property differentiates itself from its competitors. The innovative, technologically savvy outfit is always seeking to maximise efficiency without compromising on quality, to ensure that patrons have the best possible experience when they engage it. Co-founders Stephen Perry and Andrew Currier drive the practice forward. Perry acquits himself with distinction when devising strategies that enhance the portfolios of high-tech companies; while Currier understands the commercial side of intellectual property and gives business-minded advice that ensures companies reap maximum rewards on their investments. The pair have an intimate understanding of the law too, as the co-authors of one of Canada’s leading patent law textbooks.
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Canada Ridout & Maybee LLP
Having retained its stronghold on the Canadian IP scene for more than 120 years, Ridout & Maybee has intimate institutional knowledge of how the country’s laws and policies have evolved and the foresight to spot where potential changes may arise. This all translates into incisive advice that considers the long term as a matter of course. Mechanical engineer Ken Bousfield is one of its shining stars and can be counted on for astute validity and freedom-tooperate opinions.
ROBIC LLP
Founded in 1892, ROBIC has its roots deeply embedded in the country’s legal landscape; but rather than stagnating, it has kept its offering fresh and vibrant with new services – the latest one focusing on cybersecurity in light of the constantly evolving technological scene. Collectively, the team covers a lot of ground to provide “creative and pragmatic solutions to complex prosecution problems”; but the high-tech, engineering and material sciences arenas are where it truly shines. “Clear and timely advice” is dispensed by molecular biologist Gabrielle Moisan; while physicist Isabelle Girard is a natural choice for those looking to develop their portfolios. Metallurgy maestros Nathalie Jodoin and Dominique Pomerleau are meticulous in drafting applications and can identify the optimum route to grant. In the high-tech realm, strategic counsellor Louis-Pierre Gravelle is a safe pair of hands for companies keen to strengthen their market positions; while mechanical engineer David Enciso is highly sought after for his perspicacious patentability and validity opinions. Montreal is also home to a cracking litigation and licensing practice, courtesy of tenacious advocate Bob Sotiriadis and smooth negotiator François Painchaud.
Rowand LLP
Rowand’s USPs include an innovation-driven service, a refined understanding of the high-tech industry and the ability to cater to clients at the cutting edge of their respective fields. For instance, more than 80% of the applications it sees through to grant are for software-implemented inventions; and its latest highlights have been on behalf of A-listers such as BlackBerry, Rogers Communications and Trading Technologies International. For entrepreneurs that wish to leverage their creations and gain a solid foothold in the market, Fraser Rowand is an outstanding choice. He manages portfolios effectively, drives business value and obtains robust patent protection not only in Canada, but internationally
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too. Fellow partner and electrical engineer Jeff Tracey is not one to shy away from pushing legal boundaries and has a rare facility for the protection of blockchain inventions.
Smart & Biggar
Unanimously hailed by the market as “a first-class firm that excels at the technical aspects of patent prosecution”, Smart & Bigger is one of Canada’s most prolific filers on behalf of industry giants from all over the world. It is also a formidable force in enforcement scenarios and has chalked up several significant wins over the past year; while its transactions crew is regularly called upon to broker lucrative global licensing deals. On the non-contentious side, managing partner Matthew Zischka sets the tone from the top. The electronic engineer is comfortable acting across a range of technologies and really hits his stride when advising companies on how to make best use of their assets through business-driven strategies. Operating within the same field, John Knox and Allan Brett bring valuable industry experience to the mix. Knox has prosecuted applications in almost every country in the world and has international procedures on lock; while Brett has seen hundreds of originating patent applications through to grant and is a vital resource for those looking to protect electronic or computer-related inventions. Joining them in the guide this year are Elliott Simcoe and Brigide Mattar. Electrical and mechanical practice group leader Simcoe is a repository of trust for blue-chip innovators keen to maximise the return on their investments; while trained computer engineer Mattar is a font of wisdom when it comes to AI. In the life sciences, Daphne Lainson, David Schwartz and Mark Pidkowich are a cut above. Firm chair Lainson impresses with her regulatory know-how and ability to distil legal complexities into readable reports; Schwartz is a known thought leader who has the PM(NOC) Regulations down pat; and Pidkowich brings added value by designing strategies that meet clients’ immediate, mid and long-term goals. The litigation squad also sees some new additions to the rankings this year, in the form of Sheldon Hamilton and Jeremy Want. A compelling advocate, Hamilton has over 25 years of experience and a down-to-earth style which make him highly effective. Immensely seasoned in trials concerning the quantification of damages, Want recently secured a C$650 million damages settlement for Dow Chemical – the largest reported award in a Canadian infringement case. For this, he teamed up with Steven Garland, an “exceptionally strong litigator” who knows how to turn around
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Canada the trickiest of cases. He recently obtained a rare interlocutory injunction from the Federal Court on behalf of Exaltexx. Similarly, François Guay also comes in for praise as a “dynamic lawyer” – as his fine work for Canadian National Railway bears out, that comes as no surprise. The case was of utmost importance, and the company’s successful appeal reaffirmed the long-established practice of granting protective orders to parties involved in IP litigation before the Federal Court in Canada and reinforced an important feature of the discovery process. Yoon Kang, Nancy Pei and Gunars Gaikis are the names to note for skirmishes in the pharmaceutical sector. The “highly esteemed” Kang and Pei are among the best in the business when it comes to bringing PM(NOC) disputes to a swift and successful close; while the pre-eminent Gaikis has seen and done it all in highstakes proceedings and thinks up strategies that get life sciences companies out of tricky situations without a hitch. The energy and petroleum industries are happy hunting grounds for Evan Nuttall and Ryan Evans, who dish out sophisticated advice and always have the end game in mind. The same is true of the ensemble’s transactions unit – home to Alistair Simpson, Sanjay Goorachurn, Stephan Georgiev and Theodore Sum. Simpson and Goorachurn are innovative in their approach to structuring deals and work closely with the C-suite to draft licensing agreements that fit like a glove. Georgiev is hailed as a “renowned and super-experienced strategist”; while Sum comes in for praise as a “top-notch practitioner with an unsurpassed legal mind. He is also extremely diligent and ensures every client – big or small – receives the best advice”. See p1730 for firm profile
Stikeman Elliott LLP
A new name in the IAM Patent 1000 this year, Stikeman Elliott makes its debut on the back of stellar work examples and an offering that covers all bases to help companies innovate, enforce their rights or carve out market share. As an example, the group prosecutes applications for Edward Lifesciences Corporation, Accuweather and Lyft. Spearheading the practice is Jonathan Auerbach, an elevated strategic thinker who understands that intellectual property does not operate in a vacuum and is always alive to the commercial interests of his patrons.
Torys LLP
“It is always a pleasure to come up against Torys,” enthuses one peer. “Its lawyers are always well prepared and present comprehensive and refined arguments in court.” The side is also lauded for its
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precision prosecution practice; unique insight into the pharmaceutical, biotechnology and cannabis industries; and ample regulatory expertise. More recently, it has been venturing further into the technology space, having just launched an emerging technologies and venture capital practice group. Stand-out litigators Andrew Bernstein and Andrew Shaughnessy are “exceptional” and are counsel of choice to leading players such as Eisai Co and Catalyst Pharmaceuticals. Shaunghnessy in particular is hailed as “shrewd, practical and highly knowledgeable in all areas of patent disputes. He is instrumental when assessing risks, devising strategies and figuring out the best course of action”. Teaming up with them to represent Amgen in two actions under the PM(NOC) Regulations against Mylan is Yael Bienenstock, a “fair and effective advocate” who makes his IAM Patent 1000 debut this year. On the prosecution side, Teresa Reguly and MaryAnne Arnoldo also make their first appearance in the guide. “Teresa is an invaluable resource – no one can compare to her thoughtfulness, level of strategic thinking and timely execution of instructions.” Arnolodo also garners plaudits: “MaryAnne is very knowledgeable about the agricultural and biotechnology industries, and provides meaningful strategic guidance that considers business needs and is cost effective too. She has also shown an excellent command of the laws and rules, and – importantly – the ability to use that to solve complicated challenges through insightful analysis.” For Procter & Gamble, no one else can prosecute quite as well as their preferred counsel, Eileen McMahon and Edward Fan. A superior strategist, McMahon provides first-class guidance on the development and monetisation of portfolios; while Fan is “superprofessional, quick to respond, and produces work of a consistently high quality”.
Other recommended experts
Blending great technical skill with deep substantive patent law knowledge and superb advocacy skills, the dual-qualified Michael Adams is the full package. He operates out of Riches McKenzie & Herbert LLP. In Montreal, Benoît & Côté’s Marc Benoît “has established a powerful practice and is someone I am always eager to refer to,” reports one peer. He and co-founder France Côté are dedicated to clients and offer strategic, commercial advice that protects intellectual property and mitigates risk. Alaka Chatterjee, a chemistry expert at Vanguard IP LLP, astutely manages worldwide portfolios for research institutes and global giants, and forges long-term relationships with patrons. A founding member of Deeth Williams Wall, technology ace Douglas Deeth
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Canada comes equipped with over four decades of experience and has a gravitas that is hard to find. He and fellow founder Gervas Wall know all the best plays to get high-rolling licensing deals inked. Adapt IP Law’s Peter Elyjiw receives spirited praise: “The value Peter provides with his services is tremendous – you can completely trust him to do the job at the same level you would get at larger law firms, but without the pomp and the price tag. He is mindful of time, explains timelines clearly and translates the details and nuances of inventions extremely well. Basically, Peter is unreservedly recommended to start-ups, large corporations and anything in between.” Eduardo Fonseca of Moffat & Co Patent & Trademark Agents leverages insight gained at a Brazilian firm to serve as a key point of contact for Latin American life sciences concerns which have trained their attention on Canadian horizons, and vice versa. Based at his eponymous boutique, Brian Gray stands out for the breadth of his expertise and his willingness to go the distance, whether that be in court or at the negotiating table. At Farris, Vaughan, Wills & Murphy LLP, James Hatton is a widely respected biotech lawyer who does much outside of his practice to support the life sciences community. Heer Law’s Christopher Heer is a repository of trust to software companies and academic institutions seeking to protect their computer-implemented inventions.
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One of his highlights includes successfully drafting, prosecuting and obtaining two US patents relating to deep neural networks and computer vision for the Governing Council of the University of Toronto. Flying the flag of Oyen Wiggs Green & Mutala, Gavin Manning has spent over two decades obtaining robust patent protection and commercialising assets for technology start-ups and international corporations. Life science sage Serge Shahinian provides inspiring leadership to Lavery Lawyers’ IP group and has a flair for bringing added value to the portfolios of biotechnology companies. Kevin Shipley is “a fantastic IP professional with a thorough knowledge of patent law and practice in both Canada and the United States. He is a very effective communicator, and his framing of the relevant issues for discussion and analysis thereof is highly developed and ideal for solving complex issues”. He practises at Folger, Rubinoff LLP. A preferred choice for prosecution, Jenna Wilson of Wilson Lue enjoys working in areas that push the limits of existing patent law – in particular, within the biotechnology and IT sectors. At Blaney McMurtry, Nicholas Wong knows how to build strong portfolios from the ground up, but maintains a cracking litigation practice too. In the words of one peer: “Even when we were up against each other, Nick just made life easier for everyone involved, which is a fantastic quality to have.”
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Adams, Michael
Partner – Riches McKenzie & Herbert LLP michael.adams@patents-toronto.com | www.patents-toronto.com
Michael Adams is a partner with Riches, McKenzie & Herbert LLP (RMH). Founded in 1887, RMH is one of Canada’s oldest law firms whose practice is restricted to IP matters. Based in Toronto, RMH provides assistance to clients in all aspects of intellectual property, including the filing and prosecution of patent, trademark, copyright and industrial design applications, and in related litigation and licensing matters. Mr Adams is a registered patent agent and barrister and solicitor qualified to practise law in Ontario. In addition to a JD from Queen’s University, Mr Adams also has degrees in mechanical engineering and mathematical science from McMaster University in Canada. Mr Adams is part of a team of attorneys who are registered patent agents and attorneys at law, and have university degrees in technical fields such as engineering, biochemistry and geology, enabling RMH to handle patent matters across all technical fields and with patent applications tasked to professionals with the relevant expertise. Other partners of the firm include Brant Latham, Gary M Travis, Jeffrey Pervanas and Michael Yun. Mr Latham and Mr Travis have more than 30 years’ experience in drafting and prosecuting patent applications and negotiating licensing and IP development agreements. Mr Pervanas has extensive experience in drafting and prosecuting applications in the computer/software/aerospace fields, and in negotiating technology agreements. Mr Yun focuses on the preparation, filing and prosecution of patent applications related to the areas of chemistry, biotechnology, and life and pharmaceutical sciences. RMH provides legal services to clients, ranging from Fortune 100 companies to individual inventors, before the Canadian Intellectual Property Office, the Canadian federal and provincial courts and various administrative tribunals. The professionals at RMH are aided by a team of technical assistants and support staff dedicated to the securement and enforcement of client IP matters in Canada.
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Riches McKenzie & Herbert LLP 2 Bloor Street East Suite 1800 Toronto ON M4W 3J5 Canada T +1 416 961 5000 F +1 416 961 5081 Professional associations • Intellectual Property Institute of Canada • Law Society of Ontario • Toronto Intellectual Property Group
IAM Patent 1000 1225
Anand, Nisha
Partner – Gilbert’s LLP nisha@gilbertslaw.ca | www.gilbertslaw.ca
Nisha Anand is a partner at Gilbert’s LLP, a Toronto-based IP litigation boutique firm. Ms Anand has represented clients before the Ontario Superior Court and Federal Court of Canada in matters related to all aspects of intellectual property. Her practice focuses primarily on patent litigation related to various areas of technology, including pharmaceuticals, telecommunications and mechanical inventions. Ms Anand is a strategic, creative and fearless advocate who offers her clients comprehensive advice on Canadian and multi-jurisdictional litigation. A scientist-turned-litigator, Ms Anand completed a PhD in molecular biology, genetics and cancer at McMaster University prior to obtaining her law degree at the University of Toronto. She has since taken a particular interest in biologic drugs and the pharmaceutical industry as a lawyer. In addition to patent litigation in the pharmaceutical space, she has also advised pharmaceutical clients on IP and litigation strategy, and on regulatory matters with Health Canada. Ms Anand is also active in the local legal community. She is co-chair of the Canadian Bar Association’s diversity and inclusion committee, a board member of Neighbourhood Legal Services, a local community legal clinic, and a frequent volunteer in the legal community judging moots, where she coaches mooters and mentors young lawyers.
Gilbert’s LLP The Toronto Dominion Centre 77 King Street West Suite 2010 Toronto ON M5K 1K2 Canada T +1 416 703 1100 See firm profile p1686
1226 IAM Patent 1000
www.IAM-media.com
Auger, Andréanne
Partner – BCF Business Law andreanne.auger@bcf.ca | www.bcf.ca
For the past 15 years, Andréanne Auger has been helping her clients manage their IP assets. Her client base includes many mediumsized and established Canadian, French and US companies seeking to protect and market their inventions in North America, in Europe and internationally. Ms Auger principally advises clients in the biotechnology and medical devices areas that are active in the fields of molecular and cellular biology, genetics, chemistry, biology and biochemistry. She provides them with a solid, coherent IP programme that brings value to their business objectives. She has vast experience in assisting clients with growing patent assets from their creation to monetisation. Her expertise lies particularly in helping companies coordinate and manage the protection of intellectual property emerging from R&D activities occurring in multiple jurisdictions; and in creating IP rights around technologies targeted for the European and North American markets. She is routinely involved in the preparation of validity and patentability opinions and analyses of patent portfolios and potential infringement in the context of financings or acquisitions. Ms Auger holds a PhD in cellular and molecular biology. She is involved in many national and international projects on this subject. She sits on BCF’s board of directors and succession plan committee.
BCF Business Law 1100 Rene-Levesque Boulevard West Montreal QC H3B 5C9 Canada T +1 514 397 2261 F +1 514 397 8515 See firm profile p1654 Professional associations • IPIC
www.IAM-media.com
IAM Patent 1000 1227
Beeser, Scott
Partner – Aitken Klee LLP sbeeser@aitkenklee.com | www.aitkenklee.com
Scott Beeser is a partner in Aitken Klee’s Toronto office with deep experience and a proven track record in litigation under the Patented Medicines (Notice of Compliance) (PM (NOC)) Regulations, representing pharmaceutical clients in the Federal Court, the Federal Court of Appeal and the Supreme Court of Canada. He has represented both generic and branded pharmaceutical companies. He successfully represented a client in a seminal case that clarified the proper approach for assessing obviousness in Canada. He also successfully represented a client in a matter that redefined which types of claims need to be addressed under the then existing PM (NOC) Regulations. More recently, Mr Beeser successfully represented two generic manufacturers in the first ‘common issues’ validity trial under the new PM (NOC) Regulations and was counsel in the first decision considering whether litigation under these regulations is limited by the initial allegations made by the generic pharmaceutical company. He also has experience representing patentees in the information technology, medical device and transportation sectors. Mr Beeser frequently speaks at national conferences on patent issues related to pharmaceutical and biosimilar patent law. He is a regular contributor to Aitken Klee’s blog covering recent developments in IP law. Mr Beeser has a doctoral degree in biology and is a registered Canadian patent and trademark agent.
Aitken Klee LLP 36 Lombard Street Suite 500 Toronto ON M5C 2X3 Canada T +1 647 317 6869 F +1 613 695 5854 See firm profile p1646 Professional associations • CBA Sample client list • Paid Search Engine Tools • Pharmascience • Taro Pharmaceuticals • Teva Canada
1228 IAM Patent 1000
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Brion, Art
Founding Partner – Brion Raffoul LLP abrion@bripgroup.com | www.bripgroup.com
Art Brion is the founding partner of Brion Raffoul LLP. In 2020 Mr Brion was appointed to ORFAB – the Ontario Research Fund Advisory Board. In addition to being a computer engineering graduate, Mr Brion is also a lawyer, patent agent and trademark agent. Since 2014 he has been ranked as a leading patent practitioner in Canada in the IAM Patent 1000. Mr Brion assists clients ranging from multinational corporations to high-tech start-up companies to lone inventors. Specialising in the drafting and prosecution of patent applications worldwide, he also provides advice regarding portfolio management and worldwide patent filing strategies. In addition to this, he also provides expertise on IP mining and licensing strategies. Involved in the Canadian start-up community since the late 1990s, he has helped past and present clients successfully grow their patent portfolios. A frequent speaker and participant at start-up-oriented gatherings, Mr Brion is routinely consulted by start-up companies and entrepreneurs prior to launching new ventures or prior to the initiation of new avenues of research and development. As such, Mr Brion is involved in activities such as invention mining, freedom-to-operate searches and defining business strategies for his clients. Mr Brion is a globally renowned expert and frequent speaker. He has spoken at Nanjing University in China on worldwide patent filing strategies for start-ups. With many years of experience in dealing with a widespread associate international practice, as well as in dealing with inventors and in-house counsel, Mr Brion is well placed to handle most IP matters. His technical specialisations include software/internet-based technologies, artificial intelligence and machine learning, wireless technologies, telecommunications, computer and networking and related systems, optics/electro-optic communication systems, cryptography/encryptionbased technologies, semiconductors and business method systems.
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Brion Raffoul LLP 329 Churchill Ave N Ottawa ON K1Z 5B8 Canada T +1 613 521 8844 F +1 613 249 7207 See firm profile p1662 Professional associations • Law Society of Ontario Sample client list • Element AI Inc • Husqvarna AB • Natural Resources Canada
IAM Patent 1000 1229
Crinson, Michael D
Partner – Aitken Klee LLP mcrinson@aitkenklee.com | www.aitkenklee.com
Michael D Crinson has been described as “a persuasive orator and excellent litigator who comes up with uniquely creative solutions”. He is one of Canada’s most experienced IP law trial counsel, having been counsel on numerous contentious IP matters – including patent, copyright, trademark, trade secret, and ownership and inventorship disputes. Mr Crinson has also been described as a “versatile IP expert” with experience in a wide variety of technical areas, including medical devices, forestry equipment, pharmaceuticals, the food industry, electrical engineering, polymer chemistry and biotechnology – particularly genetically modified plant material. He has appeared as both trial and appellate counsel before the federal, Ontario and Alberta courts in a variety of proceedings often in parallel with proceedings in jurisdictions such as the United States, Europe, Australia and China, and “is renowned for his cross-border coordination skills”. Mr Crinson has received accolades from his clients and peers alike in respected publications and contributes to, and actively participates in, community organisations and legal associations, including the International Association for the Protection of Intellectual Property, the Canadian Bar Association and the Intellectual Property Institute of Canada.
Aitken Klee LLP 36 Lombard Street Suite 500 Toronto ON M5C 2X3 Canada T +1 647 317 6612 See firm profile p1646 Professional associations • AIPPI Canada • CBA • IPIC
1230 IAM Patent 1000
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de Grandpré, Vincent M Partner – Osler, Hoskin & Harcourt LLP vdegrandpre@osler.com | www.osler.com
Vincent M de Grandpré is a partner in Osler, Hoskin & Harcourt LLP’s national IP department. Mr de Grandpré’s litigation practice focuses on IP matters, including complex pharmaceutical patent litigation. Mr de Grandpré also advises and represents clients in the life sciences and pharmaceutical industries on regulatory and privacy issues. Mr de Grandpré has appeared as counsel in both French and English before several Canadian courts, including the Federal Court, the Federal Court of Appeal, the Ontario Superior Court of Justice and Divisional Court, and the Quebec Superior Court and Court of Appeal. From 2000 to 2003, Mr de Grandpré practised IP and commercial litigation at a New York firm. After graduating from law school, Mr de Grandpré served as a law clerk to Chief Justice Antonio Lamer of the Supreme Court of Canada. In recent years, Mr de Grandpré has received international recognition as a leading patent litigator and IP lawyer, including in The Best Lawyers in Canada (IP law), Chambers Canada: Canada’s Leading Lawyers for Business (intellectual property – litigation), Chambers Global: The World’s Leading Business Lawyers (intellectual property – litigation), Acritas Stars and the IAM Patent 1000. Mr de Grandpré is also admitted to practise in New York and Quebec. He has successfully represented international clients, including world-leading pharmaceutical companies, in notable IP and litigation matters.
Osler, Hoskin & Harcourt LLP 100 King Street West 1 First Canadian Place Suite 6200 Toronto ON M5X 1B8 Canada T +1 416 862 6570 F +1 416 862 6666 See firm profile p1720 Professional associations • ABA • CBA • IPIC Sample client list • Awesense Wireless • Munchkin Baby Canada • Mylan Pharmaceuticals • Pharmascience
www.IAM-media.com
IAM Patent 1000 1231
Gilbert, Tim
Managing Partner – Gilbert’s LLP tim@gilbertslaw.ca | www.gilbertslaw.ca
Gilbert’s founder, firm mentor and intrepid leader, Tim Gilbert has acted as lead counsel on some of Canada’s largest disputes in the pharmaceutical and technology industries and acts as a trusted adviser to major companies and investment funds across Canada. Mr Gilbert is known for his creative approach to complex legal problems. While a litigator by training, he constantly seeks to create value by monetising IP assets through licensing, joint ventures or, where necessary, litigation. When in litigation, Mr Gilbert is constantly looking for innovative ways to fund matters, whether that’s by having skin in the game or by coming up with unique funding models. The respect Mr Gilbert has earned extends to regulatory work, where he has successfully advocated for his clients’ interests before Canadian and US legislators, the US Food and Drug Administration, Health Canada, the Competition Bureau and the US Federal Trade Commission. The respect also extends across the border: while a Canadian at heart, Mr Gilbert has acted and continues to act on major cross-border litigation. Always a fellow with a keen eye for entrepreneurship, persuasion, leadership and design, Mr Gilbert is the former chair of the Design Exchange, Canada’s national design museum, and teaches at OCAD University.
Gilbert’s LLP The Toronto Dominion Centre 77 King Street West Suite 2010 Toronto ON M5K 1K2 Canada T +1 416 703 1100 F +1 416 703 7422 See firm profile p1686 Professional associations • ABA • The Advocates’ Society
1232 IAM Patent 1000
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Goudreault, Dominic
Partner, Patent Agent – BCF Business Law dominic.goudreault@bcf.ca | www.bcf.ca
Recognised for his global vision and solid track record, Dominic Goudreault is a major asset to BCF’s patents group. He has a background in mechanical engineering and has worked as a patent agent in-house before joining private practice. He assists companies of various sizes worldwide, including many in the manufacturing and energy sectors, in determining their IP needs, obtaining protection for their inventions and managing their intellectual property. He has particular expertise in the areas of land and marine vehicles, aeronautics, engines, hydraulics and batteries. His extensive experience as a patent agent, particularly for Bombardier Recreational Products, enables him to fully understand the reality, needs and constraints of our clients and to offer them an adapted strategy that takes their unique ecosystem into account. His detailed knowledge of mechanical engineering means that he quickly grasps the nature and scope of our clients’ inventions. From preparing Canadian, US and foreign patent applications, prosecuting patent applications and presenting industrial designs, to establishing IP strategies, evaluating new technologies and managing patent portfolios, Mr Goudreault is a leading expert in his profession. A member of the Ordre des Ingénieurs du Québec and the Intellectual Property Institute of Canada, Mr Goudreault is a certified patent agent in Canada and the United States.
BCF Business Law 25th Floor 1100 Rene Levesque Boulevard West Montreal QC H3B 5C9 Canada T +1 514 397 8500 F +1 514 397 8515 See firm profile p1654 Professional associations • Intellectual Property Institute of Canada • Ordre des Ingénieurs du Québec Sample client list • Blue Solutions Canada Inc • Bombardier Recreational Products
www.IAM-media.com
IAM Patent 1000 1233
Kalnish, Ilya
Partner, Patent Agent, Trademark Agent – BCF Business Law ilya.kalnish@bcf.ca | www.bcf.ca
Ilya Kalnish supports both large international corporations and smaller start-ups/scale-ups in developing complex IP strategies. A patent agent in Canada and a trademark agent in both Canada and the United States, he specialises in artificial intelligence, information technology and mechanics. Mr Kalnish’s practice focuses on patent procurement process, from identification of patentable invention to drafting patent applications and prosecuting them in front of various patent offices. He has mastered expertise in reconciling legal regime differences between Europe and North America, especially when it comes to protecting software inventions in the wake of case law changes in North America and technicality requirements of the European Patent Convention. Mr Kalnish also advises his clients on global IP management, both in terms of new product introduction process and due diligence in the context of M&A transactions. Mr Kalnish is particularly effective in obtaining watertight legal protection for inventions in several countries around the world, while optimising the cost-benefits ratio associated with such procedures. He represents the multinational corporation Yandex, which owns Russia’s most popular search engine, as well as a number of additional electronic services. Before joining BCF, he held key IP management positions in large corporations in Toronto, such as Bell Canada and Husky Injection Molding Systems Ltd, the world’s largest supplier of industrial solutions in the injection moulding industry. Mr Kalnish’s time in-house provided valuable insights into how legal departments operate, as well as pressures inside counsel face day to day. Since migrating to private practice, Mr Kalnish has always made sure that he remembers his lessons learnt by delivering to his clients business-focused advice, while keeping an eye on budget and expense management. In 2017, 2018 and 2019 Mr Kalnish received the Client Choice Awards, a prestigious award that honours the best professionals in the legal sector, selected by clients. A native of Russia, Mr Kalnish speaks English, Russian and Bulgarian fluently. He also chairs the Committee for the Patent Agents Training Course for the Intellectual Property Institute of Canada.
1234 IAM Patent 1000
BCF Business Law 25th Floor 1100 Rene Levesque Boulevard West Montreal QC H3B 5C9 Canada T +1 514 787 2789 F +1 514 397 8515 Professional associations • IPIC Sample client list • Group-IB • Husky IMS • Yandex Group
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Klee, Marcus
Managing Partner – Aitken Klee LLP mklee@aitkenklee.com | www.aitkenklee.com
Marcus Klee is a seasoned trial and appellate lawyer representing clients in complex IP litigation matter in all areas, including pharmaceuticals, medical devices, webcasting, environmental remediation, aviation, infrastructure and prepared foods. He was counsel on the “Milestone Case 2013” awarded by Managing Intellectual Property, and is ranked in Lexpert, Chambers Global, Benchmark Canada, MIP and the IAM Patent 1000. He represented WL Gore & Associates Inc in a patent infringement and validity case involving artificial arteries. The corresponding litigation in the United States was described by the court as the most complicated case the court had presided over. Dr Klee has appeared before the Supreme Court of Canada, the Federal Court of Appeal, the Court of Appeal for Ontario, the Federal Court of Canada, the Ontario Divisional Court, the Ontario Superior Court of Justice, the Copyright Board of Canada, administrative bodies and arbitration tribunals. He received his PhD from Queen’s University and his law degree from Osgoode Hall. He was the recipient of numerous scholarships and academic awards. Dr Klee was called to the Ontario Bar in 2002 after clerking at the Court of Appeal for Ontario.
Aitken Klee LLP 100 Murray Street Suite 300 Ottawa ON K1N 0A1 Canada T +1 613 903 5100 F +1 613 695 5854 See firm profile p1646 Professional associations • Advocates Society • Canadian Bar Association • Osgoode Society
www.IAM-media.com
IAM Patent 1000 1235
Lachere, Julien
Partner, Patent Agent – BCF Business Law julien.lachere@bcf.ca | www.bcf.ca
Julien Lachere stands out for his excellent sense of duty, his pioneering spirit and his ability to develop close and enduring relationships with clients. With this singular client focus and extensive patent experience, gained both in-house and in private practice, Mr Lachere advises companies of various sizes, from early-stage ventures to multinational organisations. Mr Lachere counsels his clients at every development stage to devise and deploy comprehensive IP strategies supporting companies’ business objectives and corporate strategies. Mr Lachere specialises in the building of patent portfolios, including drafting and prosecuting patent applications properly calibrated for the US, European and Chinese patent systems, while optimising the cost-benefits ratio. He is regularly involved in the preparation of market clearance, validity and patentability opinions, and analyses of patent portfolios and potential infringement in the context of financings or acquisitions. Mr Lachere also supports IP enforcement issues in the pre-litigation context. With an engineering degree in software and telecommunications and a master of research in data science, Mr Lachere has renowned expertise in the patenting of software, artificial intelligence (AI) and machine learning. His technology expertise includes aerospace, fintech, audio tech, communications and networking, operation of data centres and cloud services, as well as core AI and applied AI technologies. Mr Lachere was instrumental in setting up the BCF Imagine programme, which aims to promote start-ups in Quebec, as well as BCF Global, the IP arm of BCF in Europe. Mr Lachere was involved in the Intellectual Property Institute of Canada/McGill Understanding Patents Course and still regularly lectures in numerous start-up incubators and acceleration programmes.
1236 IAM Patent 1000
BCF Business Law 25th Floor 1100 Rene Levesque Boulevard West Montreal QC H3B 5C9 Canada T +1 514 397 2633 F +1 514 397 8515 Professional associations • IPIC • Ordre des ingénieurs du Québec Sample client list • Alcatel-Lucent Enterprise • Bombardier • Flinks • Mobeewave • OVHcloud
www.IAM-media.com
Langen, Geoffrey
Counsel – Osler, Hoskin & Harcourt LLP glangen@osler.com | www.osler.com
Geoffrey Langen is based in Osler’s Ottawa office and practises IP law with a focus on pharmaceutical patent litigation, including pharmaceutical proceedings under the Patented Medicines (Notice of Compliance) Regulations. He also has experience in trademark litigation and matters related to data protection under the Food and Drug Regulations. He also regularly prepares infringement and invalidity opinions for pharmaceutical and mechanical device patents. He has appeared as counsel before the Federal Court and the Federal Court of Appeal. Mr Langen’s practice focuses on helping clients in innovationintensive industries, including the pharmaceutical, life sciences and biotechnology sectors. He assists clients in bringing new products and services to market, or in preserving their market position, by strategically obtaining or litigating IP rights. In addition to his legal training, Mr Langen has a BSc in biochemistry and a MSc in molecular biology. His graduate work in molecular biology, microbiology and genetics has been published in several peer-reviewed journals. Mr Langen was a member of the Osler team that represented the successful appellant in Yves Choueifaty v Attorney General of Canada, 2020. This decision provides important insight into how the Canadian Intellectual Property Office will determine patentable subject-matter for computer-implemented inventions. Before joining the firm, Mr Langen practised at a boutique firm that specialises in IP law. He has been recognised as a Rising Star by Managing Intellectual Property magazine.
Osler, Hoskin & Harcourt LLP 340 Albert Street Suite 1900 Ottawa ON K1R 7Y6 Canada T +1 613 787 1015 See firm profile p1720 Professional associations • Law Society of Ontario • Ontario Bar Association Sample client list • CGPA • Mylan Pharmaceuticals • Samsung Bioepis • Teva Canada
www.IAM-media.com
IAM Patent 1000 1237
Lipkus, Nathaniel
Partner – Osler, Hoskin & Harcourt LLP nlipkus@osler.com | www.osler.com
Nathaniel Lipkus is an IP litigator and strategist in Osler, Hoskin & Harcourt LLP’s national IP department. His practice focuses on contentious legal issues confronting innovation-intensive industries, with an emphasis on patent and regulatory issues facing pharmaceutical and biotechnology companies. He also provides IP advice to start-ups and other emerging companies. Mr Lipkus has represented numerous companies in the life sciences, technology, energy and gaming industries in patent proceedings across Canada and pro hac vice in the United States. He has also litigated trademark, copyright, trade secret and other commercial matters. Mr Lipkus was lead counsel for the Children’s Hospital of Eastern Ontario in Canada’s only patent litigation involving claims to human genes, representing the hospital in good faith. He has also advocated on behalf of life sciences clients before numerous regulatory agencies in Canada and the United States on IP, regulatory approval, pricing and reimbursement, and antitrust matters. Mr Lipkus is a registered patent and trademark agent. In addition to his role as advocate, he provides strategic advice on IP portfolio and risk management. He regularly assists companies in a wide variety of innovation-intensive industries by coordinating IP, regulatory and commercial strategies. Mr Lipkus has been recognised by leading industry publications, including Chambers Canada (intellectual property litigation), the Legal Media Group as a Life Sciences Star, Acritas as a Star Lawyer, The Best Lawyers in Canada (intellectual property), the Canadian Legal Lexpert Directory (intellectual property) and the IAM Patent 1000.
Osler, Hoskin & Harcourt LLP 100 King Street West 1 First Canadian Place Suite 6200 Toronto ON M5X 1B8 Canada T +1 416 862 6787 F +1 416 862 6666 See firm profile p1720 Professional associations • Advocates’ Society • CBA • IPIC Sample client list • CGPA • Mylan Pharmaceuticals • Teva Canada • VMware
1238 IAM Patent 1000
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Mayo, Bill
Partner – Aitken Klee LLP bmayo@aitkenklee.com | www.aitkenklee.com
Bill Mayo has been practising IP law for over 25 years. He has worked in private practice as a partner in both national and boutique law firms, as well as in-house IP counsel for a manufacturer in the telecommunications field. He was called to the Bar in Ontario and is registered in Canada as both a trademark agent and a patent agent. Mr Mayo has extensive experience in all aspects of IP law, including patent and trademark prosecution, litigation and licensing, and he has advised large and small companies in all areas with respect to their IP strategies. He has been involved in precedent-setting patent litigation before the Federal Court of Canada, as well as trademark opposition proceedings. Mr Mayo has been recognised as a leader in intellectual property in Intellectual Asset Management’s IAM Patent 1000, Chambers, Who’s Who Legal and The Best Lawyers in Canada. He is the past president of AIPPI Canada, a member organisation of the International Association for the Protection of Intellectual Property. Mr Mayo received his law degree from the University of British Columbia after obtaining his BSc and MSc in biology from Queen’s University in Kingston, Ontario.
Aitken Klee LLP 36 Lombard Street Suite 500 Toronto ON M5C 2X3 Canada T +1 64 73 17 6870 See firm profile p1646 Professional associations • AIPPI Canada • Intellectual Property Institute of Canada • Law Society of Ontario
www.IAM-media.com
IAM Patent 1000 1239
Merizzi, André
Partner – Merizzi Ramsbottom & Forster andre@mrfip.com | www.mrfip.com
André Merizzi relies on over 15 years of IP experience to provide insightful and comprehensive advice on the development of marketrelevant IP portfolios, with a focus on high-tech patent procurement. Indeed, Mr Merizzi predominantly focuses on the crafting and prosecution of commercially viable and targeted patent applications, with demonstrated success in overcoming challenging objections while securing market-relevant claims for his clients at the Canadian Intellectual Property Office (CIPO), the US Patent and Trademark Office (USPTO) and abroad. To do so, Mr Merizzi seeks and relies on a solid understanding of the technical innovation at hand and, more importantly, its commercial relevance in the marketplace not only today, but as the technology and marketplace evolve over time. This has also served him well in successfully navigating ongoing progress and pitfalls of the US patent subject-matter eligibility (35 USC 101) debate post-Alice, and maximising returns through effective and elaborate continuation practices in the United States. Mr Merizzi holds a graduate degree in physics from the University of Ottawa, focusing on semiconductors, optics, solid state and laser physics. His aptitude for all-things science and drive to secure marketrelevant claims for his clients has led him to advise clients in a gamut of highly technical fields, from growing information and communication technology and software firms to universities, government and medical research agencies and established high-tech companies. An esteemed expert in Canadian patents, Mr Merizzi advises foreign associates in the prosecution of Canadian patent applications. He is an active participant and committee member of the American Intellectual Property Law Association, the Intellectual Property Institute of Canada and the International Federation of Intellectual Property Attorneys, and was an instructor for the Patent Agent Training Course and member of the Patent Agent Examination Board in Canada. Mr Merizzi is fluent, and actively services clients, in both English and French.
1240 IAM Patent 1000
Merizzi Ramsbottom & Forster 201C-889 Bank Street Ottawa ON K1S 3W4 Canada T +1 613 618 2417 Professional associations • AIPLA • FICPI • IPIC
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Norrie, Bryan
Partner – Aitken Klee LLP bnorrie@aitkenklee.com | www.aitkenklee.com
Bryan Norrie is a partner at Aitken Klee LLP in the Ottawa office. Mr Norrie specialises in the litigation of pharmaceutical and biotechnology patents. He has a law degree from McGill University and an MSc in neuroscience and biomedical engineering from the University of Alberta. He is also a registered Canadian patent agent. Mr Norrie enjoys combining his technical and legal expertise to identify creative approaches to complex issues, and he has been ranked or recognised in many leading industry publications, where he has been hailed as a “strong litigator” and “exceptional lawyer” who “has tremendous experience”. Mr Norrie has extensive experience and success, both in assisting clients in protecting and asserting patent rights, and assisting clients in defending against allegations of patent infringement. Mr Norrie also has considerable experience in regulatory and commercial aspects of patent litigation, including proceedings for judicial review of regulatory administrative decisions, as well as litigation to determine remedies such as damages quantification. Mr Norrie represented clients in consecutive trials that were conducted by videoconference in late 2020. He obtained successful judgments in both: Teva v Pharmascience, 2020 FC 1158 (representing Teva) and Janssen v Dr Reddy’s, 2021 FC 4 (representing Dr Reddy’s). Mr Norrie frequently appears in the Federal Court of Canada and Federal Court of Appeal in trials, application hearings, motions and appeals.
www.IAM-media.com
Aitken Klee LLP Suite 300 100 Murray Street Ottawa ON K1N 0A1 Canada T +1 613 903 5107 See firm profile p1646 Sample client list • Dr Reddy’s • Natco • Teva
IAM Patent 1000 1241
Raffoul, Natalie
Managing Partner – Brion Raffoul LLP nraffoul@bripgroup.com | www.bripgroup.com
The managing partner of Brion Raffoul LLP, Natalie Raffoul is a worldrenowned expert in the patenting of software, business methods, artificial intelligence and machine learning, and in the legal issues surrounding such subject matter. Ms Raffoul has been ranked among the world’s leading patent practitioners by IAM Patent 1000 annually since 2014. In 2017 and 2019, she was shortlisted as one of the most highly recommended patent prosecutors in Canada. In 2018 she was recognised in Who’s Who Legal as a world leading expert for patents in Canada. Ms Raffoul works closely with companies to develop and refine IP procurement strategies globally. She chairs the McGill IPIC Summer Courses on Intellectual Property and previously was the director of the Patent Course. In 2019 she was appointed to the Ontario government’s only Expert Panel on Commercialising Intellectual Property in Ontario, which culminated in an Expert Report being published in 2020. In 2020 Ms Raffoul was appointed as a member to the Ontario Joint Ministers’ Roundtable on the COVID-19 Health Data Platform. Ms Raffoul is an expert to the Global Partnership on Artificial Intelligence established in June 2020. She is also the chair of the Green Technology and IP Committee of the International Association for the Protection of Intellectual Property and the co-chair of the IP Licensing Education Committee of the Licensing Executives Society International (LESI), as well as the 2021 annual LESI meeting. As a patent agent, Ms Raffoul specialises in filing and prosecuting patent and design applications for her Canadian clients worldwide. She provides advice to her clients, in English and in French, on worldwide patent filing strategies and portfolio management that includes trade secret considerations. Her technology expertise includes electronics, communications and networking, manufacturing, consumer products, artificial intelligence, cybersecurity and mobile applications. As a lawyer, Ms Raffoul also works with her clients on IP enforcement issues in the pre-litigation context. She has negotiated numerous successful agreements for her clients that cover IP rights in Canada and globally. She is also experienced in drafting customised IP ownership agreements, software licence and service agreements, end-user licence agreements, material transfer agreements and nondisclosure agreements.
1242 IAM Patent 1000
Brion Raffoul LLP 329 Churchill Ave N Ottawa ON K1Z 5B8 Canada T +1 613 521 8844 F +1 613 249 7207 See firm profile p1662 Professional associations • AIPPI • IPIC • LES Sample client list • Element AI Inc • Husqvarna AB • Natural Resources Canada
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Ramsbottom, James
Partner – Merizzi Ramsbottom & Forster james@mrfip.com | www.mrfip.com
James Ramsbottom has worked with scientists and engineers of all disciplines – from biofuels to medical research, devices and pharmaceuticals, to automotive manufacturing and production, and to mechanical devices and systems – in the public and private sectors. He is the inventor of several Canadian and US patents, as well as author of numerous peer-reviewed scientific publications. He has acted as scientific adviser to the Canadian Spinal Research Organisation and the International Institute for Spinal Regeneration. Mr Ramsbottom has also been active in and sat on committees of the Intellectual Property Institute of Canada. As a partner of Merizzi Ramsbottom & Forster, Mr Ramsbottom’s practice focuses on foreign practice development, as well as building commercially viable patent portfolios for Canadian clients. To do so, Mr Ramsbottom draws on his experience as an in-house patent practitioner for a biotech company where he led a team to build a commercially viable and enforceable patent portfolio. In addition, being mechanically inclined, Mr Ramsbottom has helped to build and curate the Canadian patent portfolio for a major Japanese car manufacturer. Mr Ramsbottom’s biotechnology and natural science practice stems from his educational background. He holds two bachelor of science degrees in life sciences and honours biology, and was a doctoral graduate student in molecular pharmacology at the University of Trieste in Italy. He is a registered patent agent before both the Canadian Intellectual Property Office and the US Patent and Trademark Office. In his patent drafting and prosecution practice, Mr Ramsbottom seeks to develop a solid understanding of both the technology at hand and the client’s objectives in engaging the patent system. He strives to understand the commercial relevance of the technology today and how a patent may be utilised in the future. This approach has helped him to assist clients in developing cross-discipline applicable patents that are commercially relevant to the client’s business and offer future licensing potential.
www.IAM-media.com
Merizzi Ramsbottom & Forster 1325 Bear Mountain Parkway Suite 105 Victoria BC V9B 6T8 Canada T +1 416 931 4504 See firm profile p1710
IAM Patent 1000 1243
Stainsby, Jonathan
Partner – Aitken Klee LLP jstainsby@aitkenklee.com | www.aitkenklee.com
Jonathan Stainsby is a partner in Aitken Klee’s Toronto office. Called to the Bar in 1990, he has considerable trial experience and appears regularly before the Ontario and federal courts and the Supreme Court of Canada. He represents clients in complex patent, trademark and copyright matters, in a wide variety of industries and technical fields. While Mr Stainsby most frequently acts in IP disputes, he also acts in corporate/commercial and shareholder’s disputes for both public and private companies and their shareholders, business disputes (contract and tort claims), fraud claims (including multi-jurisdictional fraud claims), share valuations, bankruptcy and insolvency proceedings, receiverships, tax and labour-related litigation, product liability claims (including defending class actions) and defamation actions. He appears frequently on appeals and applications for judicial review. Mr Stainsby’s expertise is reflected in his inclusion in numerous rankings, including Chambers, Lexpert, Benchmark and in IAM Patent Litigation. Mr Stainsby is listed in The Best Lawyers in Canada and by Who’s Who Legal. He is a past director of The Advocates’ Society and has taught advocacy at the University of Toronto Faculty of Law, The Law Society of Ontario and Osgoode’s Intensive Trial Advocacy Workshop, and has appeared as a guest lecturer on numerous occasions. He is a frequent speaker on intellectual property and advocacy.
1244 IAM Patent 1000
Aitken Klee LLP 36 Lombard Street Suite 500 Toronto ON M5C 2X3 Canada T +1 647 317 6868 See firm profile p1646
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Webster, W Lee
Partner – Osler, Hoskin & Harcourt LLP lwebster@osler.com | www.osler.com
W Lee Webster is a partner in Osler, Hoskin & Harcourt LLP’s national IP department. Mr Webster’s practice encompasses a full range of IP services, including counselling, acquisition, clearance and infringement opinions, enforcement, commercial and litigation support and IP portfolio strategies. He has deep expertise in structuring comprehensive technology and IP licensing, joint venture, R&D and other related commercial arrangements involving the development and commercialisation of IP-intensive technology and assets for early stage ventures. He also has extensive experience with domestic and foreign filing and prosecution, the commercialisation of intellectual property and IP rights enforcement. Mr Webster is a founding member of the Canadian Intellectual Property Council and is chair of the Intellectual Property Committee of the Canadian Chamber of Commerce. Mr Webster has been recognised internationally as a leading lawyer in intellectual property, including in The Best Lawyers in Canada (IP law), the IAM Patent 1000 and the WTR 1000 (trademark prosecution and strategy). Mr Webster has acted on behalf of many Canadian, US and international clients on strategic licensing matters. Recent notable matters include structuring a technology-sharing arrangement for the development and commercialisation of a novel oncolytic virus; advising on licensing and distribution arrangements for medical devices; advising on technology and IP arrangements for the refurbishment of nuclear reactors; structuring and advising on hardware and software-intensive business management systems; acting on behalf of a consortium of major oil production companies in structuring and implementing a technology-sharing arrangement for sharing oil sands technology; structuring technology licensing and related patent matters for a natural gas transmission consortium; and advising a New York-based investment bank on IP matters relating to the acquisition of a prominent Canadian patent aggregator in, among other things, mobile phone technology. Mr Webster is a registered patent agent and a registered trademark agent. He has written and spoken extensively on intellectual property and related issues.
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Osler, Hoskin & Harcourt LLP 100 King Street West 1 First Canadian Place Suite 6200 Toronto ON M5X 1B8 Canada T +1 416 862 6707 F +1 416 862 6666 See firm profile p1720 Professional associations • Canadian Chamber of Commerce • CIPC • INTA Sample client list • American Eagle Outfitters • Bruce Power • Treasury Wine Estates • Turnstone Biologics
IAM Patent 1000 1245
White, J Bradley
Partner – Osler, Hoskin & Harcourt LLP bwhite@osler.com | www.osler.com
J Bradley White is a partner at Osler, Hoskin & Harcourt LLP’s Ottawa office and immediate past chair of Osler’s national IP department. He practises IP law with an emphasis on complex patent litigation and patent prosecution. He provides clients with strategic advice on the enforcement of their patent rights, including the management of litigation strategies throughout multiple jurisdictions, instructing foreign counsel in litigation and managing worldwide IP portfolios. Mr White has appeared as lead counsel before the Federal Court of Appeal, the Federal Court and the Ontario Superior Court, and has appeared before the US International Trade Commission in the role of coordinating worldwide litigation and IP counsel. He is also a registered patent agent and specialises in Canadian and foreign patent and industrial design prosecution, strategic reviews of IP portfolios, patentability, patent infringement and validity opinions, and worldwide patent portfolio management and enforcement. Over the past decade, Mr White has been recognised internationally as a leading patent litigator and IP practitioner, including as a Band 1 practitioner by Chambers Canada for Intellectual Property Litigation in 2020 and 2021. Mr White is also recognised by the IAM Patent 1000, The Best Lawyers in Canada (IP law – patent and litigation), Chambers Global (IP litigation and intellectual property), the Canadian Legal Lexpert Directory (intellectual property, IP litigation and biotechnology), the Lexpert Guide to the Leading US/Canada Cross-Border Litigation Lawyers, Benchmark Litigation Canada (Ontario Litigation Star – Intellectual Property), Managing Intellectual Property (Patent Star – Canada), Acritas (Star Lawyer) and the Expert Guide (patents). Mr White is also registered to practise before the USPTO. He has been involved in notable matters for some of the world’s leading corporations, including as lead counsel to Mylan Pharmaceuticals ULC and Teva Canada in connection with patent and numerous pharmaceutical and general litigation matters.
1246 IAM Patent 1000
Osler, Hoskin & Harcourt LLP 340 Albert Street Suite 1900 Ottawa ON K1R 7Y6 Canada T +1 613 787 1101 F +1 613 235 2867 See firm profile p1720 Professional associations • AIPLA • AIPPI • IPIC Sample client list • Celltrion • Munchkin Baby Canada • Mylan Pharmaceuticals • Teva Canada • WOW Tech Canada
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Yamaç, Tuba Partner, Patent Agent – BCF Business Law tuba.yamac@bcf.ca | www.bcf.ca
Tuba Yamaç has a particularly international outlook, having begun her career as a UK and European patent attorney in the United Kingdom, before moving to Canada and practising as a registered Canadian patent agent. Her understanding of patent law and practice in these different patent jurisdictions provide her with a strategic edge and make her a highly valued adviser to many businesses as they grow locally and expand internationally. Dr Yamaç provides sound, pragmatic advice to her clients, which range from start-ups to mid-size corporations. Having guided IP operations, as director of intellectual property in a scale-up medical device company, she draws on her experience to help clients build IP portfolios strategically, consider freedom-to-operate positions, support investment and/or partnering activities and negotiate IP provisions in commercial transactions. Aligning IP strategies with regulatory approval pathways is a niche area of interest for Dr Yamaç. Dr Yamaç holds a PhD in biomedical materials and specialises in the technology areas of medical devices, software/artificial intelligence technologies as they pertain to life sciences and medical technologies, biomaterials, as well as construction and cleantech. She is trilingual (English, French and Turkish), and has represented the Québec life sciences business ecosystem in the United Kingdom, the United States, France and Scandinavia. She also enjoys teaching patent law and is an invited speaker at the McGill University/Intellectual Property Institute of Canada patent course in Montreal, as well as past appearances at the Life Sciences UK patent attorney conference. She is a co-author in Life Sciences Law in Canada (Carswell), as well as a number of articles.
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BCF Business Law 25th Floor 1100 Rene Levesque Boulevard West Montreal QC H3B 5C9 Canada T +1 514 397 6724 F +1 514 397 8515 Professional associations • CIPA • IPIC
IAM Patent 1000 1247
United States: Expert witnesses
Analysis Group
Of Analysis Group, one IAM Patent 1000 gold-ranked litigator comments: “I frequently use its economic experts for substantial, high-profile cases and have been doing so for more than 20 years. I find them to be thorough, reliable and efficient.” Another top trial lawyer adds: “I recommend it without hesitation to clients, especially when analysis is required in extremely complex settings. Its opinions in patent damages and antitrust matters can be relied on completely.” A powerhouse consultancy – it has more than 1,000 professionals on deck across North America, Europe and Asia – it has outstanding IP credentials and a superlative track record across district courts, the ITC and arbitral forums. The firm is distinguished not only by the depth of its bench – including the high-quality affiliated experts with which it works – but also by its collaborative approach: the lack of hierarchy in the IP group gives everyone a voice, which improves the flow of ideas and leads to better results. Leading lights include John Jarosz, described as “simply the best” by the individual whose comments open this write-up; senior adviser Keith Ugone, who has testified extensively across many industries and in challenging matters involving SEPs; and Carla Mulhern, who is prized for her ITC know-how, blend of litigation and valuation skills, and complete composure. They make their return to the rankings this year alongside Laura Stamm, a Boston-based affiliated expert who speaks with authority on the subject of lost profits; Jeffrey Kinrich, who is distinguished by his trans-IP experience and well-roundedness as an economic expert; Robert Vigil, a go-to for pharmaceutical cases (and many others) with a flair for damages assessment, IP valuation and licensing; Christopher Borek, who has a gift for giving relatable testimony that dispels doubt and resonates in court; and Justin McLean, who is brilliant at trial and a valuable partner – and inspiring team leader – from start to finish of litigation. Joining them in the guide are Lauren Kindler and Minh Doan, both vice presidents with wide-ranging IP, commercial and antitrust experience. Kindler, who has niche insight on FRAND royalty rates, recently took point on damages in a trial involving media streaming technology. Doan “grasps the details of the most convoluted matters quickly and conducts creative analyses that are grounded in a strong understanding of the law on patent damages. Calm, poised, pleasant and professional – and firm without being disagreeable – she is delightful to work with”. See p1648 for firm profile
1248 IAM Patent 1000
Ankura Consulting Group, LLC
This premier business advisory firm has significantly bolstered its IP disputes and consulting practice in recent years, giving it great momentum. Those it has recruited embody the testifying expertise, team-oriented approach and creativity for which Ankura is known and admired. The addition of Michael Lasinski, Kevin Arst and Philip Kline at the start of 2020 brought top-tier proficiency in FRAND matters to the group, giving it a valuable advantage in a market in which increased inter-operability of technology is giving rise to more frequent and complex standardisation issues. Lasinski navigates these masterfully on a global basis; as do Arst and Kline, both excellent testifiers, licensing sages and all-round IP strategists. The latter description is also perfectly fitting for senior managing director David Yurkerwich: he has given expert testimony in high-exposure patent infringement and business disputes on dozens of occasions, but also deploys as a deal negotiator and portfolio adviser. Walter Vandaele – with whom Yurkerwich practised at Navigant Consulting prior to joining Ankura – is the resident pharmaceutical and biotechnology whizz, though has broad industry horizons. Patent litigation is an important component of his extremely diverse practice and an area in which he has developed several specialist subjects, such as the analysis of issues related to the granting of preliminary injunctions. See p1650 for firm profile
Berkeley Research Group, LLC
Founded by one of the pre-eminent economics and business minds in the United States, David Teece, Berkeley Research Group is a repository of trust for many. Its experts seamlessly collaborate with trial counsel, but approach their damages and economic analysis work with scrupulous independence in a way that significantly enhances their credibility in the courtroom; the group’s policy agnosticism elevates this further. Extensive behind-the-scenes teamwork means that each expert comes to the stand well prepared and with a 360-degree understanding of the issues; the instruction might go to Jeffrey Stec, William Kerr, Catharine Lawton or Joshua Lathrop, for example, but each will informally seek the others’ input to broaden their perspective. Stec helps to instil this beneficial approach as captain of the IP practice and co-head of economics and damages. He has addressed the widest range of economic issues in the context of IP infringements; as has Kerr, a
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United States: Expert witnesses Walt Bratic Whitley Penn
Economic experts Kevin Arst Ankura Consulting Group LLC
See p1256
Christopher Bakewell Duff & Phelps LLC, a Kroll business
Thomas Britven ASQ Consulting
See p1257
Gregory Bell Charles River Associates
Andrew Carter Ocean Tomo LLC
See p1258
Elvir Causevic Tech+IP Capital
Melissa A Bennis Davis & Hosfield Consulting LLC
Michael J Dansky Intellectual Property Strategies
Justin Blok Whitley Penn Christopher J Bokhart Charles River Associates
Julie L Davis Davis & Hosfield Consulting LLC See p1259
John R Bone Stout Christopher Borek Analysis Group
See p1260
Richard Brady Intensity, LLC
See p1336
thought leader whose writings on IP damages have illuminated pathways for many grappling with this complex subject. One of the ensemble’s elite testifying experts – and one of the best on the market – Lawton is never less than utterly impressive, given her command of the industries in which she works, her commercial acumen and her thoroughness. Lathrop is a great fit for ITC matters, having addressed the economic issues arising in Section 337 investigations on numerous occasions; he’s also a great match for any IP case anywhere. See p1656 for firm profile
Charles River Associates
Among consulting firms, CRA is virtually unrivalled in terms of its depth in intellectual property: those looking to it for expert testimony and analysis in patent and other IP suits have their choice of some 100-plus professionals who have done themselves and their clients proud in complex and high-stakes infringement disputes. They bring industry knowledge along with comprehensive economics, finance, accounting and business strategy know-how to each courtroom engagement, drawing judiciously
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See p1261
Stephen E Dell Novum Consulting Group
See p1262
Carrie Distler FTI Consulting Inc
See p1263
Minh P Doan Analysis Group
See p1264
on their transactions and valuation experience. The organisation also derives strength from close integration of its IP, competition, finance and transfer pricing practices, which helps it to address intersectional issues with maturity. Front and centre is Daniel McGavock, whose vast experience in litigation and non-litigation contexts gives him highlevel strategic and business insight. As a testifying expert, he works with exceptional efficiency. Two of the best-known CRA experts alongside McGavock are Michael Tate and Raymond Sims, who have chalked up nearly seven decades in the game between them. Tate analyses the densest financial data with crystal clarity to emerge with accurate damages calculations. A veteran of more than 70 trials, the tried-and-tested Sims always come through with flying colours. Christopher Gerardi and Gregory Leonard are likewise heavyweights with sterling reputations. Gerardi can pinpoint exactly where the law stands on patent damages at any time, so his theories never lag the market. Leonard is steeped in antitrust and IP law and a leading authority on their intersection; as is Anne Layne-Farrar, who is further distinguished by her global perspective. The organisation is well placed for life sciences mandates, the main draw here being Gregory Bell. He regularly appears as an
IAM Patent 1000 1249
United States: Expert witnesses James J Donohue Charles River Associates
See p1265
Jeffrey H Kinrich Analysis Group
See p1275
David Duski BDO
See p1266
Philip W Kline Ankura Consulting Group LCC
See p1276
Michael Lasinski Ankura Consulting Group LLC
See p1277
Cate Elsten Ocean Tomo LLC Mickey Ferri Insight Economics
See p1267
Joshua Lathrop Berkeley Research Group, LLC
See p1278
Christopher Gerardi Charles River Associates
See p1268
Catharine M Lawton Berkeley Research Group, LLC
See p1279
Philip Green Hoffman Alvary & Company
See p1269
Anne Layne-Farrar Charles River Associates
See p1280
Lance E Gunderson Echelon Analytics
See p1270
Gregory K Leonard Charles River Associates
See p1281
Daniel Lindsay IPFC Corp
See p1282
David A Haas Stout Dawn Hall FTI Consulting Inc
See p1271
Matthew R Lynde Cornerstone Research
John L Hansen TM Financial Forensics LLC
See p1340
James E Malackowski Ocean Tomo LLC
Creighton Hoffman Hoffman Alvary & Company
Robert Maness Charles River Associates
See p1283
Stephen Holzen Stout
DeForest McDuff Insight Economics
See p1284
Mark Hosfield Davis & Hosfield Consulting LLC
Daniel M McGavock Charles River Associates
See p1285
Justin McLean Analysis Group
See p1286
Paul K Meyer TM Financial Forensics LLC
See p1347
Michael Milani Ocean Tomo LLC
See p1287
Carla S Mulhern Analysis Group
See p1288
John Jarosz Analysis Group
See p1272
Michael Jeffords Davis & Hosfield Consulting LLC William Kerr Berkeley ResearchGroup, LLC
See p1273
Doug Kidder OSKR Lauren Kindler Analysis Group
1250 IAM Patent 1000
See p1274
James Nawrocki IPFC Corp
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United States: Expert witnesses Mark A Peterson Robinwood Consulting LLC
Laura B Stamm Analysis Group
See p1297
Stephen D Prowse FTI Consulting Inc
See p1289
Jeffery Stec Berkeley Research Group, LLC
See p1298
Jon Putnam Competition Dynamics Inc
See p1290
Ryan Sullivan Intensity, LLC
See p1353
Aminta Raffalovich Intensity, LLC
See p1351
Michael Tate Charles River Associates
See p1299
Mohan Rao Epsilon Economics
David J Teece Berkeley Research Group, LLC
See p1300
Alan Ratliff StoneTurn Group LLP
Vincent Thomas FTI Consulting Inc
See p1301
Brett L Reed Competition Economics LLC
Dana Trexler Stout
Michele Riley Stout
Keith R Ugone Analysis Group
See p1302
Sara Rinke Davis & Hosfield Consulting LLC
Bryan Van Uden IPFC Corp
See p1303
Mitch Rosenfeld Stout
Walter Vandaele Ankura Consulting Group LLC
Julia Rowe Duff & Phelps LLC, a Kroll business
See p1291
Ambreen Salters StoneTurn Group LLP
Thomas Vander Veen Epsilon Economics Chris Vellturo Quantitative Economic Solutions llc
Kimberly J Schenk Charles River Associates
See p1292
Robert Vigil Analysis Group
Todd Schoettelkotte IPFC Corp
See p1293
Michael Wagner LitiNomics
Steven Schwartz Intensity, LLC
See p1354
Shirley Webster Ocean Tomo LLC
Sean Sheridan Charles River Associates
See p1294
Scott Weingust Stout
Raymond Sims Charles River Associates
See p1295
David Yurkerwich Ankura Consulting Group LLC
Daniel J Slottje FTI Consulting Inc
See p1296
www.IAM-media.com
See p1304
See p1305
IAM Patent 1000 1251
United States: Expert witnesses expert witness in US and international proceedings, but plays a much wider role for clients as a business strategist. Robert Maness has a pharmaceutical research background and knows the industry inside out, too. Like their colleagues, Kimberly Schenk and Sean Sheridan aren’t limited by sector, but have also handled weighty pharmaceutical and biotechnology cases. They both have a flair for IP valuation; as do James Donohue and transactional ace Christopher Bokhart. See p1666 for firm profile
Davis & Hosfield Consulting LLC
Intellectual property is a central pillar of Chicagobased Davis & Hosfield’s wider litigation and dispute resolution-focused consulting practice. The team submits thorough expert reports and provides testimony encompassing all kinds of financial and economic analyses in all kinds of IP claims, so nothing can throw it off its game. The marquee name is Julie Davis, an absolute master of her craft who has achieved great things throughout her long and illustrious career. Her IP knowledge is incredibly rich, making her ideally placed not only for contentious work, but also for consulting around portfolio optimisation. Her fellow principals are Mark Hosfield and Melissa Bennis, both of whom have broad business and IP disputes practices. Directors Sara Rinke and Michael Jeffords also come highly recommended.
Duff & Phelps LLC, a Kroll business
A leading global advisory firm with a loyal following of Fortune 100 companies, Duff & Phelps – which is in the process of transitioning the company name to Kroll – conducts razor-sharp IP analyses, demonstrates acute awareness of technology industry trends and developments, and presents with polish. These attributes serve it well on all manner of patent assignments, but especially the provision of expert testimony. Outstanding leadership is supplied by Christopher Bakewell, a Houston-based managing director and the global head of intellectual property. Top trial firms hold him in the highest esteem and call on him in cases marked by deep complexities. Chicago’s Julia Rowe is another font of wisdom on patent damages but, like Bakewell, is so much more; her valuation and licensing skills are unerringly on point. See p1676 for firm profile
FTI Consulting Inc
You won’t find a weak spot in FTI’s business advisory practice, which is especially impressive considering
1252 IAM Patent 1000
its globality and diversity. In intellectual property, it fields high-calibre professionals in North America, Europe, Africa and Asia-Pacific, who collectively provide a comprehensive suite of services across all phases of the innovation process. Zooming in on its contingent of US experts, the team does a tremendous job in litigation with respect to its focused damages and economic analysis role, while also helping to guide strategy from the start of a case to its finish. Co-leader of the IP group Dawn Hall is highly appreciated by attorneys for this; as is Carrie Distler, a pharmaceutical doyenne who leverages licensing and case management expertise to add value. Both shine at trial; as do colleagues Vincent Thomas, Daniel Slottje and Stephen Prowse. Called on in district courts nationwide and in the ITC, Thomas provides testimony that is never less than accurate and compelling. He has exceptional credentials and is a certified licensing professional and valuation analyst. A prolific author on economics, PhD Slottje brings sophisticated knowledge to every engagement. Prowse also has a PhD and speaks with authority on damages arising in IP, antitrust and securities disputes. See p1682 for firm profile
Intensity, LLC
High-stakes commercial and patent litigation is meat and drink to Intensity, which is distinguished by its incredible work ethic, responsiveness, timely delivery and quality of output. There’s no shortage of exciting developments at the firm, which reflect its dynamism in the market: one notable item on the newsreel in early 2021 was the addition of former CRA vice president Steven Schwartz, who joined as a managing director, based in Dallas. A touchstone economic consultant for nearly four decades, Schwartz has testified extensively and in many forums, with a concentration on intellectual property. Intensity is executing superbly on its growth vision, with Schwartz’s arrival one of several which have given the firm an enhanced national presence. March 2021 also saw it announce the acquisition of Eurekanomics, bringing more PhD professionals into the fold and giving it a presence in the Bay Area. In terms of case highlights, meanwhile, they don’t get better than providing testimony on behalf VLSI Technology in its March 2021 patent litigation victory over Intel, resulting in a jury award of $2.175 billion. Ryan Sullivan worked with formidable trial firm Irell & Manella to secure this monumental outcome. Sullivan is the president of Intensity and the man behind its rapid ascent: as his results record attests, he is also a dynamite testifier. With
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United States: Expert witnesses him at the firm since its beginnings in 2014, Aminta Raffalovich also undertakes her expert analysis work with perfect exactitude. She has profound knowledge of the economics of technology and applies this to great effect in patent cases arising in many theatres of innovation. Richard Brady is in his element in disputes involving cutting-edge life sciences developments. See p1698 for firm profile
Consultancies
IPFC Corp
Davis & Hosfield Consulting LLC
IPFC’s experts are in the thick of US patent litigation and are regularly selected to provide opinions and testimony in high-profile cases arising in all technology-intensive industries. Not only recommended for their resonant performances in court, they also provide fulsome support to lawyers in developing case strategies and preparing for trial. They also stand out for the depth of their experience and the gravitas that comes with it – particularly firm president Todd Schoettelkotte, who is undoubtedly one of the most respected names in the business. A go-to for district court litigation and ITC matters, he sets the standard not just for the group, but for the entire market in terms of dedication, attention to detail and client service. Fellow managing directors Bryan Van Uden and Daniel Lindsay put in their all, too. Armed with a well-rounded litigation, licensing and valuation skillset, Van Uden is a rock for clients. Hands-on throughout the litigation process, he can also be counted on to deliver on the stand. In modelling damages, Lindsay does a more precise job than many, thanks to a keen eye for relevant information that others often miss. Senior adviser James Nawrocki dispenses worldly wisdom from a high vantage point that a career spanning nearly 40 years has given him.
Ocean Tomo LLC
A reference for innovative companies, law firms, governments and investors, the “trend-setting” Ocean Tomo lives and breathes intellectual property, and is perfectly adapted to assist with IP valuation, strategic planning, risk management, transactional and litigation assignments. For expert testimony in bigticket cases, you’d be hard pressed to find better than CEO James Malackowski. Sources call him a “worldclass strategist with many IP firsts on his résumé” and a “fantastic damages expert, from case assessment and strategy to expert reporting and trial testimony”. “Brilliant in cross-examination and incredibly quick on his feet, Jim has a complete understanding not just of damages aspects, but of his cases in their entirety. He always delivers the best possible results based
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Analysis Group
See p1648
Ankura Consulting Group, LLC
See p1650
Berkeley Research Group, LLC
See p1656
Charles River Associates
See p1666
Duff & Phelps LLC, a Kroll business
See p1676
FTI Consulting Inc
See p1682
Intensity, LLC
See p1698
IPFC Corp Ocean Tomo LLC Stout
See p1736
on the facts of the case – results which are often better than you ever expected.” He founded the firm with fellow Chicagoan Andrew Carter, who leads the expert services group. He has supported some of the largest damages awards in patent litigation and testified a great many times the length and breadth of the country. Like Malackowski, he has a cultivated knowledge of IP licensing, strategy and litigation. Making his debut in the guide this year, Michael Milani is enthusiastically praised: “Mike is an integral part of trial teams and far more than just a numbers guy. He’s an exceptional problem solver who can brainstorm solutions where it seems data doesn’t exist to answer a question. He predicts criticisms from opposing parties and creates smart theories to proactively address them.” He earns commendation for his understanding of the domestic industry requirement at the ITC – a forum in which Shirley Webster also shines. A willing leader, Cate Elsten flies the firm’s flag high on the West Coast. She’s a wellrounded accounting, marketing and finance expert whose mind is highly attuned to business.
Stout
Stout’s integration of valuation, damages and compliance professionals with investment bankers and technical experts underpins its 360-degree proficiency in intellectual property, which is its defining edge. Central to its practice is the provision
IAM Patent 1000 1253
United States: Expert witnesses of testimony in IP litigation, with its multi-disciplinary setup enabling it to provide all-embracing support to trial teams as needed. The group has grown in significant ways in the past year, with the addition of Dana Trexler in June 2020 and of Mitch Rosenfeld one month later. Philadelphia-based Trexler emphasises disputes in his practice, and has engaged in complex patent and other IP infringement matters and provided testimony in court on many occasions. Rosenfeld has a more transactions and advisory-focused role and understands all aspects of patenting, which serves him well when he is called on for litigation. They are members of a collaborative, well-resourced team that includes David Haas, John Bone and Scott Weingust in Chicago; and Michele Riley and Stephen Holzen in DC. Haas captains the IP practice with aplomb and draws from a deep well of knowledge accumulated over the course of 30-plus years; he has the trial lawyer’s ability of being able to simplify the complex for the benefit of laypeople. At the same level in terms of experience, Bone is masterful in the context of conflicts involving SEPs. Weingust takes the reins of the valuation practice and, as a seasoned testifier, is also integral in the success of the disputes, compliance and investigations group. Riley is an innovator, educator and damages expert par excellence; while Holzen has brought his insight to bear in the ITC and PTAB, along with many federal and state courts, and is one of the few, if not the only individual recommended in this section with a patent examining background at the USPTO. See p1736 for firm profile
Other recommended experts
Justin Blok and Walt Bratic are eminent names at Whitley Penn. Laser focused on quality, they deliver with a consistency that engenders trust – law firms know what they will get from the pair and appreciate their availability and involvement in the lead-up to trial and at trial. Their mission is to make life easier for those instructing them. Blok heads the firm’s forensic, litigation and valuation practice. A veteran of 50 trials – including many patent infringement and trade secret misappropriation cases – Thomas Britven has perfected the art of providing credible expert testimony. The ASQ Consulting president is a licensing authority and assured all-round strategic business adviser. Elvir Causevic is the founder of Tech+IP Capital, a boutique investment bank with a focus on IP transactions. He’s a polished financial expert witness with some big wins to his name and an influential figure in the technology world with a reputation as an innovator. Michael Dansky cut the ribbon on Intellectual Property Strategies in
1254 IAM Patent 1000
January 2021, making it the new destination for first-class licensing, transactions and litigation knowhow. Respected the world over for his corporate experience, IP problem-solving abilities, mentorship, strategic nous and results record, Dansky shoulders a huge load for clients, which he never lets down when the stakes are at their highest. Stephen Dell of Novum Consulting Group maintains up-to-the-minute knowledge of developments in patent damages law, giving his valuations and theories added impact when he presents them in court – something he does in assured fashion. His facility for licensing and IP monetisation enhances his understanding of patent value. BDO has a compact IP litigation group, but with David Duski on deck, it’s a super one. He stays true to the facts of his cases while working within the framework provided by the latest damagesspecific legal authorities, and partners closely with clients and their counsel to get to the right answers. He has recently provided consulting and expert witness services in actions in the consumer products, pharmaceutical and agricultural equipment sectors. One of the market’s rising stars, Mickey Ferri of Insight Economics earns his debut in the IAM Patent 1000 for 2021. An academic high achiever with realworld business insight and multiple litigations under his belt, he never fails to impress. He and DeForest McDuff have been retained by top firm Fish & Richardson on several occasions, including recently in proceedings for Finjan involving allegations of infringement of patents relating to cybersecurity technologies. McDuff has helped to shape patent law with respect to blocking patents, his testimony having proved instrumental in the Acorda case decided at the Federal Circuit in 2018. He continues to handle numerous pharmaceutical suits and has conducted economic analysis of alleged patent infringement relating to drugs for opioid treatment on behalf of Actavis Pharma and others, under instruction from Winston & Strawn; he linked up with Ferri on this one, too. Philip Green is a go-to for expert testimony in life sciences, computer hardware and software and consumer products disputes. He’s not someone who parachutes in at the last minute, but a vital partner throughout all phases of a case; at trial, he brings his economic analysis to life in persuasive ways. He consults at Hoffman Alvary, which was founded by IP doyen Creighton Hoffman. A marquee name in Texas, Lance Gunderson of Echelon Analytics assists in licensing negotiations, market opportunity spotting, patent valuations and infringement litigation, creating value for clients in so many ways. His broad strategic IP and industry knowledge underpins his confident performances at trial. For innovators in the high-
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United States: Expert witnesses technology and medical industries, Doug Kidder of OSKR is a discerning choice. He testifies on damages from a position of authority, given his rich business and industry experience. Cornerstone Research senior vice president Matthew Lynde has given testimony in many forums in the US and overseas on important patent matters with significant industry ramifications, and has an excellent track record to show for it. He is noted for his command of FRAND royalties. TM Financial Forensics puts equal emphasis on rigour and quality both in its business and disputes consulting work and in its client service, the hallmarks of which are speed, responsiveness and collaboration. The firm was co-founded by Paul Meyer, an esteemed professor with over 35 years of consulting experience. He knows his role at trial perfectly and has delivered on the money in high-value cases. Colleague John Hansen is a preferred choice for ITC matters, having addressed the economic prong of the domestic industry requirement, among other Section 337 issues, on numerous occasions. Wherever he is needed, he comes up trumps. Utterly dependable, Mark Peterson acquits himself with distinction as an economic expert in litigation contexts, particularly those which call for high-calibre licensing skills. He is the CEO of Chicago-based Robinwood Consulting, a well-established and highly specialised IP valuation, licensing and damages firm. Eminent academic and professional Jon Putnam is recognised as a leading light on SEP issues and on IP damages more broadly. Having handled numerous cases valued at over $1 billion, he is in his element when the stakes are high, the analysis complex and the requisite presentation persuasive. He founded Competition Dynamics.
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Mohan Rao and Thomas Vander Veen have key specialisms that put them at the centre of US patent litigation: Rao has a profound understanding of the biotechnology industry and performs adroitly in life sciences cases; while Vander Veen is a familiar face at the ITC. Alan Ratliff assembles and leads bespoke groups of professionals at StoneTurn to carry out IP assignments, including disputes and transactions; he delegates appropriately while also remaining hands-on. The client service of this team player and ‘people person’ is never less than fully satisfying; so too the results he achieves. Another contact point in the firm’s Houston office is Ambreen Salters, who has extensive experience in commercial disputes and IP cases of all kinds. Her testimony, underpinned by sophisticated and thorough analysis, always gets the job done. Patents have been a key emphasis for Competition Economics consultant Brett Reed throughout his long career. Attorneys turn to him when there are brain benders to untangle – he deals with complexity well and can cut through it quickly and efficiently, which helps with budgets, too. He always strikes the right tone on the stand. Litinomics senior adviser Michael Wagner may be the most trial-seasoned expert witness in the IAM Patent 1000, having testified on 130 occasions in a wide variety of cases, including many relating to patent infringement. Chris Vellturo is a big name in the expert consulting profession and an authority on matters at the intersection of intellectual property and competition law. He is the president of Quantitative Economic Solutions.
IAM Patent 1000 1255
Arst, Kevin
Senior Managing Director – Ankura Consulting Group, LLC kevin.arst@ankura.com | www.ankura.com
Kevin Arst is a senior managing director at Ankura Consulting Group, a leading business advisory and expert consulting firm with more than 1,400 professionals and 35 offices around the world. Mr Arst’s consulting practice is primarily focused on the val uation of intellectual property and the determination of damages in IP infringement litigation. He has performed hundreds of IP valuations in the context of financial reporting imperatives, tax-related initiatives, fair market value analyses, transactions support, restructurings and IP infringement/misappropriation litigation. Mr Arst has also provided analytical and corporate finance support to clients engaged in IP licensing negotiations and IP-centric business transactions. Mr Arst’s clients have included both individual inventors and multinational corporations. His consulting experience extends beyond patents and technology rights and includes other forms of intellectual property, such as trade secrets, trademarks and copyright. Mr Arst’s consulting experience also spans a range of industries, including aerospace, medical devices, pharmaceuticals, computer hardware and software, semiconductors, mobile devices and consumer products. Mr Arst has provided expert testimony on IP infringement damages and valuation issues in US federal and state court proceedings. He served on the board of trustees of the Licensing Executives Society (LES) USA and Canada. He also served as the chair of LES’s Valuation and Taxation Committee. Mr Arst is a certified public accountant and a certified licensing professional; he is also certified in financial forensics.
1256 IAM Patent 1000
Ankura Consulting Group, LLC 215 E Washington Street Suite 201 Ann Arbor MI 48104 United States T +1 734 369 8724 See firm profile p1650
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Bakewell, Christopher
Managing Director – Duff & Phelps LLC, a Kroll business chris.bakewell@duffandphelps.com | www.duffandphelps.com
Christopher Bakewell specialises in helping clients to navigate complex economic issues by providing them with financial and valuation analyses, licensing-related consulting services and expert testimony in the context of business disputes. Mr Bakewell’s client assignments have included valuation and strategic management of businesses and IP rights, valuation of companies and intangible assets in connection with business transactions, licensing, transaction-related advice and due diligence, as well as audits and investigations. Mr Bakewell also has deep experience in matters involving patent infringement, breach of contract, theft of trade secrets, diminution of business value, trademark and copyright infringement, injunctive relief, international trade issues, antitrust and unfair competition, as well as other matters. Mr Bakewell has been qualified and testified as an expert witness in various forums, including federal courts, state courts, domestic and international arbitration, the International Trade Commission and the US Patent Trial and Appeals Board. Mr Bakewell has a unique background in that his career has been split between consulting and industry. This enables him to bring a pragmatic and experienced approach to solving complex financial problems. His clients range from inventors and start-ups to many of the world’s leading companies. Mr Bakewell is the author or co-author of several publications on the subjects of valuation and licensing, and often speaks on these subjects. For example, he co-authored a chapter on IP damages in The Cost of Capital, a leading valuation textbook. Mr Bakewell earned an MBA in finance from the Robert H Smith School of Business at the University of Maryland at College Park, where he was a graduate fellow, and a BS with high honours from Bradley University. He also holds the designations of accredited senior appraiser from the American Society of Appraisers and certified licensing professional from the Licensing Executives Society. At Duff & Phelps (now a Kroll business) Mr Bakewell is a managing director. He leads the firm’s IP advisory services practice and is the service line leader for expert services (Americas).
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Duff & Phelps LLC, a Kroll business 1111 Bagby, Suite 1900 Houston TX 77002 United States T +1 713 237 5336 F +1 713 454 7340 See firm profile p1676 Professional associations • ASA • LES • Sedona Conference
IAM Patent 1000 1257
Bell, Gregory
Group Vice President – Charles River Associates gbell@crai.com | www.crai.com
Gregory Bell frequently testifies as an expert witness on damages in IP, finance and antitrust litigation in courts and arbitration proceedings in North America, Europe, Asia and Australia. He has considerable experience regarding lost profits, price erosion and reasonable royalty issues in IP disputes. His business consulting engagements focus on the economics of business strategy, working with firms to develop sustainable competitive advantages in their product markets. This business perspective informs the accounting, economics and finance analyses of his damages opinions. He leads the global life sciences practice at Charles River Associates. Dr Bell has an MBA and a PhD in business economics from Harvard University. He is also a chartered accountant in Canada. His testifying experience includes cases involving consumer products, diagnostics, financial instruments, medical devices, natural resources and pharmaceuticals.
Charles River Associates 200 Clarendon Street Boston MA 02116 5092 United States T +1 617 425 3357 See firm profile p1666 Professional associations • AEA • CICA
1258 IAM Patent 1000
www.IAM-media.com
Bokhart, Christopher J Vice President – Charles River Associates cbokhart@crai.com | www.crai.com
Christopher J Bokhart is vice president at Charles River Associates (CRA), a global business, financial and economic consulting firm. He has over 35 years’ experience in valuation matters, where he has assisted companies and counsel in transactional, strategy, litigation and financial reporting matters involving patents, trademarks, trade secrets, copyrights and other business interests. Mr Bokhart’s expertise in such engagements has been applied in a broad array of manufacturing, services and retail industries, for clients ranging from Fortune 500 companies to individuals, and governmental and non-profit entities. Through the application of accounting, finance and economics techniques, Mr Bokhart has provided expert witness testimony in federal, state and arbitration settings on subjects including the valuation of intellectual property. In the transactional setting, Mr Bokhart has advised companies on valuation and pricing issues in the context of acquisitions, joint ventures, bankruptcy, corporate restructuring and investment holding companies. He also has experience in licensing, including the analysis of royalty rates. Mr Bokhart has a BSc from the Krannert School of Management at Purdue University. He was one of the co-founders of Chicago-based IPC Group (a predecessor company of InteCap, which was acquired by CRA in 1988). He is also a certified public accountant, certified in financial forensics and a certified fraud examiner.
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Charles River Associates One South Wacker Drive 34th Floor, Suite 3400 Chicago IL 60606 United States T +1 312 377 9225 See firm profile p1666
IAM Patent 1000 1259
Borek, Christopher
Managing Principal – Analysis Group christopher.borek@analysisgroup.com | www.analysisgroup.com
Christopher Borek specialises in applying advanced economic and marketing tools to examine consumer demand and competition, with a particular focus on IP, antitrust, contracting and corporate governance issues in the high-tech and consumer product sectors. He has managed numerous economic analyses in litigation relating to IP misappropriation, competition, false advertising and other matters involving technological innovation and the adoption of new products. A hallmark of Dr Borek’s trial work is his ability to present complex and rigorous analyses in jury-friendly ways. He has deep experience working with leading academics in preparing testimony and expert reports, often incorporating advanced econometric regression and survey analyses. Among the notable successes in Dr Borek’s IP work across industries are several high-profile matters involving some of the world’s largest technology companies. His patent experience consists of sophisticated analyses of consumer electronics, streaming media, health care (pharmaceuticals, medical devices, insurance) and consumer products. Dr Borek has presented and written about a variety of IP-related topics, including the enforcement of IP rights, damages in Lanham Act false advertising cases, copyright misappropriation, brand and reputation harm and terms and structures for software technology transfers. In other consulting projects and research, he has focused on contract theory and implementation, innovation, industrial organisation, international trade and corporate governance. He also serves as a senior policy scholar at the Center for Business and Public Policy in Georgetown University’s McDonough School of Business, and has held positions with Ernst & Young’s corporate finance practice and Chernivtsi State University in Ukraine, where he taught international trade and international finance. Dr Borek holds a PhD and an MA in economics from Cornell University and a BA in economics from the University of Arizona.
1260 IAM Patent 1000
Analysis Group 800 17th Street NW Suite 400 Washington DC 20006 United States T +1 202 530 3985 F +1 202 530 0436 See firm profile p1648 Professional associations • ABA • AEA
www.IAM-media.com
Britven, Thomas
President – ASQ Consulting thomas.britven@asqconsulting.com | www.asqconsulting.com
Thomas Britven is president of ASQ Consulting Group. With more than 30 years’ experience as an economic consultant and trusted adviser, Mr Britven has served some of the world’s largest clients in hundreds of financial damages claim and business consulting matters. His extensive expertise includes complex financial damages analysis in intellectual property, breach of contract, business interruption, unfair competition, forensic accounting and business valuation disputes. Mr Britven has provided expert testimony at over 50 trials, arbitrations and mediations involving lost profits, reasonable royalties and unjust enrichment, among other things. Mr Britven’s IP experience includes patents, trade secrets, trademarks, trade dress and copyright. In addition to his extensive patent practice, Mr Britven is regularly called upon to apply his expertise in large trade secret misappropriation matters. This work typically includes assessment of both remedies and damages with a focus on the causal connection to the alleged wrongful conduct. Mr Britven has applied his IP damages, valuation, licensing and strategy skills in numerous complex matters in diverse areas, including aerospace, automotive, banking, biotechnology, computers, consumer products, healthcare, industrial products, manufacturing, medical devices, oil and gas, pharmaceuticals, semiconductors, software, telecommunications and wireless technologies, among many others. He has also served as president of the Licensing Executives Society Foundation. Mr Britven is a certified licensing professional, public accountant, valuation analyst, fraud examiner and a chartered global management accountant. Mr Britven received his bachelor’s degree in business administration in accounting from the University of Iowa. He is also a graduate of the owner/president management programme at Harvard Business School.
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ASQ Consulting 720 Rusk Street Suite 425 Houston TX 77002 United States T +1 713 299 6756 Professional associations • AICPA • LES • NACVA
IAM Patent 1000 1261
Dell, Stephen E
President – NOVUM Consulting Group LLC sdell@novumconsultinggroup.com | www.novumconsultinggroup.com
Stephen E Dell is the founder and president of NOVUM Consulting Group LLC. With 20 years of professional experience in financial consulting and valuation services, Mr Dell has assisted clients in hundreds of financial damages claims and business consulting matters. The focus of Mr Dell’s experience has been on assisting clients with complex IP damage analysis, commercial disputes, valuations, and strategic advisory services and negotiations related to IP assets. Mr Dell has significant involvement in litigation matters involving patent infringement, trademark and copyright infringement, trade secret theft, business valuation, breach of contract, shareholder disputes, as well as other complex business matters. Mr Dell has testified as an expert witness on IP and business damages in various forums, including federal and state courts in the United States, the International Trade Commission, as well as mediation and arbitration proceedings. In addition to the litigation engagements in which Mr Dell has been involved, he has also assisted corporate clients in the valuation and analysis of their IP portfolios. Mr Dell’s experience includes market assessments, royalty rate assessments, as well as valuation and financial analyses that have been used to determine monetisation programmes and strategies best suited for his clients. Mr Dell also routinely advises his clients on patent licence agreement negotiations, patent acquisitions/dispositions, buy/sell transactions and financing/ funding arrangements related to various technologies. To date Mr Dell has advised on IP transactions that exceed $2 billion in aggregate value. Mr Dell has applied his expertise and skills in IP valuation, damages and licensing across multiple industries, including semiconductors, telecommunications, wireless and cellular standards, Internet and e-commerce, consumer electronics, banking and electronic payments, software, automotive, medical products, airlines, oil and gas, electronics, real estate and healthcare. Mr Dell received a BA in economics (finance and banking emphasis) and a minor in business administration from the University of Texas at Austin. He is also a certified valuation analyst, credentialed by the National Association of Certified Valuators and Analysts.
1262 IAM Patent 1000
NOVUM Consulting Group LLC 2829 Technology Forest Blvd Suite 330 The Woodlands TX 77381 United States T +1 832 631 9108 Professional associations • LES • NACVA
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Distler, Carrie
Senior Managing Director – FTI Consulting Inc carrie.distler@fticonsulting.com | www.fticonsulting.com
Carrie Distler is a senior managing director at FTI Consulting and is based in Chicago. Ms Distler specialises in IP disputes and management involving patents, trademarks, copyright and trade secrets, and has provided expert testimony relating to damages, including design patent and trademark damages. Ms Distler has performed numerous reasonable royalty and lost profits calculations and valued technology across biopharmaceutical, telematics, telecommunications, agribusiness, automotive and heavy equipment and consumer product industries. She also provides market research for use in licensing deals, conducts royalty audits and offers preliminary damage assessments. Ms Distler has worked extensively in life sciences matters. She possesses in-depth knowledge of the biopharmaceutical market from her experience in providing liability and damage analyses in average wholesale price litigation across multiple jurisdictions, including the roles and policies of generic and branded manufacturers, wholesalers, pharmacies and third-party payers. Her work in this area also includes analysis of licence agreements, pricing and discounts. She has testified in Paragraph IV challenges regarding secondary considerations of nonobviousness. In the medical device area, Ms Distler has worked for the leading medical device companies for products in the endovascular, orthopaedic, spinal and cardiac areas. Analyses included determining reasonable royalties and lost profits for patent infringement matters, as well as valuing technology for licensing and venture capital raising purposes. Her reasonable royalty assessments have included complex financial and cost analyses to derive measures of value for patented features, use of comparable licences to determine royalty rates (including fair, reasonable and non-discriminatory agreements in standard-setting industries) and competitive market evaluations to ascertain the impact of patented features. Ms Distler has performed lost profits analyses addressing damage issues pertaining to price erosion, market definition and share allocation and convoyed sales. Lastly, she has also managed large patent enforcement actions involving multiple defendants. Ms Distler graduated magna cum laude from the University of Missouri with a BA in economics. She also earned an MA in economics from the University of Missouri.
www.IAM-media.com
FTI Consulting Inc 227 West Monroe Street Suite 900 Chicago IL 60606 United States T +1 312 252 9335 F +1 312 759 8119 See firm profile p1682 Professional associations • LES
IAM Patent 1000 1263
Doan, Minh P
Vice President – Analysis Group minh.doan@analysisgroup.com | www.analysisgroup.com
Minh P Doan specialises in the evaluation of economic damages in complex commercial disputes, including IP, class certification, antitrust and breach of contract matters. In IP matters, she has evaluated claims of irreparable economic injury and other economic criteria relevant to obtaining an injunction in patent infringement matters. In a recent patent infringement litigation matter, Innovation Sciences LLC v Amazon.com Inc, Ms Doan supported the testifying expert. The case was successfully resolved when a jury found for Analysis Group’s client. Ms Doan also has extensive experience in developing damages models and determining claimed lost profits and reasonable royalties in various IP cases in the medical device, smartphone, computer hardware and software, automotive technology, internet advertising and other industries. She has managed case teams in numerous joint defence patent infringement engagements. Ms Doan has supported counsel in all phases of the litigation process, including discovery, expert reports, deposition and trial preparation. She holds an MA in economics (Northwestern University), an MS in actuarial science (The University of Iowa) and a BA in mathematics and economics (Berea College). Ms Doan is an associate in the Society of Actuaries
Analysis Group Park Place Center 2911 Turtle Creek Boulevard Suite 600 Dallas TX 75219 United States T +1 214 523 1445 F +1 214 523 1401 See firm profile p1648
1264 IAM Patent 1000
www.IAM-media.com
Donohue, James J
Vice President – Charles River Associates jdonohue@crai.com | www.crai.com
James J Donohue is vice president of Charles River Associates (CRA) in its New York office. CRA is a global business, financial and economics consulting firm. Mr Donohue has served as a financial consultant for more than 25 years in a wide range of areas, including damages, valuation and forensic accounting. He has extensive experience in IP valuation, transactions and litigation. He has provided expert damages testimony in federal, state and bankruptcy courts, as well as in various arbitration venues, including the International Chamber of Commerce and the American Arbitration Association. In addition to his IP litigationrelated experience, Mr Donohue has also provided IP-focused fairness opinions, and transaction and valuation services in a broad range of industries. Mr Donohue’s experience in IP litigation matters has included assessing the appropriate economic measure of damages in patent, trademark, trade secret and copyright disputes. He has advised clients on various IP strategy and licensing engagements, including valuation and strategic consulting for tax, financial reporting, transactions and bankruptcy proceedings. He has managed licensing and other IP monetisation engagements, including private auction patent portfolio sales. Mr Donohue’s experience in intangible asset and business valuation has included valuation engagements for transactional, litigation, tax, bankruptcy and financial reporting purposes. His expertise includes a wide variety of industries, ownership interests and asset classes. He has also advised clients on financial reporting valuation and impairment analysis. Mr Donohue’s forensic accounting experience has included accounting and financial investigations in connection with estates, fraud, professional malpractice and bankruptcy. Mr Donohue is a certified public accountant and has a BS in accountancy from Villanova University. He is also a certified valuation analyst and is accredited in business valuation.
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Charles River Associates 1411 Broadway 35th Floor New York NY 10018 United States T +1 212 520 7116 F +1 212 520 7254 See firm profile p1666 Professional associations • AICPA • LES • NACVA
IAM Patent 1000 1265
Duski, David
Director – BDO dduski@bdo.com | www.bdo.com
David Duski is a director in BDO’s forensic investigation and litigation services group and leads its national IP consulting practice. Throughout his career, Mr Duski has offered dispute resolution services in various IP matters, including those involving patent infringement, trademark and trade dress infringement, copyright infringement and trade secret misappropriation. He has also provided various non-dispute-related IP consulting services to entities including the evaluation of global patent licensing strategies and a portfolio analysis of existing patent licence agreements. Mr Duski has conducted complex financial analyses involving lost sales, lost profits, incremental profits, manufacturing and marketing capacity, fixed and variable costs, product line profitability, price erosion, reasonable royalties, unjust enrichment, commercial success and pre-judgment and post-verdict interest for both plaintiffs and defendants. He has also served as an expert witness in matters filed in a US district court, state court and before the American Arbitration Association. In addition, he has lectured on the topic of IP damages at John Marshall Law School, Loyola University Chicago School of Law, the Chicago Bar Association and the IP Law Association of Chicago. Mr Duski’s case experience encompasses a broad array of industries, including automotive, aviation, biotech, cellular, chemicals, consumer products, energy, financial securities, healthcare, heating, ventilation and air conditioning, information technology, internet, medical products, military, network security, online learning, optical, pharmaceuticals, semiconductors, sporting goods, supercomputers and telecommunications. Mr Duski received a BSC in accounting and finance, with high honours, from DePaul University. He is a certified public accountant licensed in Illinois and Wisconsin, a certified licensing professional and a certified fraud examiner.
1266 IAM Patent 1000
BDO 330 North Wabash Avenue Suite 3200 Chicago IL 60611 United States T +1 312 730 1428 F +1 312 856 1379 Professional associations • ABA • AIPLA • LES
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Ferri, Mickey
Economist – Insight Economics mickey@insighteconomics.com | www.insighteconomics.com
Mickey Ferri is an expert in applied business economics. He provides expert witness testimony and economic consulting in a variety of areas, including economic damages, lost profits, reasonable royalty, unjust enrichment, intellectual property, commercial success, licensing, negotiation, breach of contract, class action, labour economics, lost wages, discrimination, antitrust, competition, technology adoption, financial analysis, strategy, market analysis and valuation. His work spans a variety of industries, including pharmaceuticals, consumer products, medical devices, software, hardware, automobiles, natural resources, entertainment and sports. Dr Ferri’s work has been published, including a recent law and economics article in Landslide titled “Thinking Economically About Blocking Patents: Did Acorda Create a New Paradigm” (Landslide, Vol 4, Issue 12, March/April 2020). At Insight Economics, he has served as an economic damages expert in multiple cases in the US federal and state court systems. Previously, he managed projects in strategic business consulting and high-stakes IP litigation, including launching the sports business consulting practice, where he and his team consulted for teams and organisations in the National Basketball Association and Major League Baseball. In addition, Dr Ferri is founder and president of Economics Athletes, which teaches life lessons through sports and economics. Previously, Dr Ferri co-founded Enflux, a Y Combinatorbacked company that creates wearable sensors and mobile artificial intelligence to improve human movement. Dr Ferri earned his PhD in economics from the University of Chicago. There, Dr Ferri was awarded the Presidential Fellowship, the highest award the university grants to PhD students, as well as the Margaret G Reid Fellowship for excellence in research relating to consumer behaviour. Dr Ferri taught numerous courses at the University of Chicago’s Department of Economics and the Booth School of Business, including industrial organisation, microeconomics, public finance and the economics of sports. Dr Ferri graduated summa cum laude with degrees in quantitative economics, mathematics and computer science from Tufts University.
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Insight Economics 4275 Executive Square Suite 200 San Diego CA 92037 United States T +1 858 373 9901 See firm profile p1698
IAM Patent 1000 1267
Gerardi, Christopher
Vice President – Charles River Associates cgerardi@crai.com | www.crai.com
Christopher Gerardi is a vice president at Charles River Associates (CRA) based in Washington DC and New York. He has more than 25 years of experience providing economic, financial and accounting advisory services to companies, legal counsel, regulatory authorities and tribunals involved in transactions, investigations and disputes. Prior to joining CRA, Mr Gerardi was senior managing director at FTI Consulting and co-leader of FTI’s dispute advisory services practice. An internationally recognised adviser and economic damages expert, Mr Gerardi has expertise in matters relating to intellectual property, International Trade Commission (ITC) investigations and a wide array of commercial litigation (breach of contract, business interruption, tortious interference, merger termination, failed systems implementation and price discrimination), as well as international arbitration. He has provided substantive advisory services, including global market, competitive, dispute and regulatory analyses, to clients across a broad spectrum of industries, including: • aerospace and aviation (military and civilian); • banking, securities, financial markets and insurance; • chemicals and petrochemicals; • computer hardware, networking, and cloud computing; • energy (renewable, oil and gas); • industrial and building products; • life sciences (pharmaceuticals, assays, medical devices and biotechnology); • opto-electronics; • semiconductors; • software and information engineering; • telecommunications; and • transportation and automotive (self-driving and electric).
Charles River Associates Charles River Associates 1201 F Street NW Suite 800 Washington DC 20004-1229 United States T +1 202 662 3986 See firm profile p1666
In addition to economic damages issues, Mr Gerardi has worked with legal counsel, management and licensing professionals in the development and execution of contract compliance programmes, technology valuation and licensing strategy. He is a member of the Sedona Conference’s Trade Secrets Working Group and serves on the drafting committee for monetary relief in trade secrets litigation. Mr Gerardi has provided oral and written expert evidence in matters before multiple US federal and state courts, the ITC and multiple international arbitration forums. He is a regular speaker on the topic of patent, trade secret and commercial economic damages at several professional organisations.
1268 IAM Patent 1000
www.IAM-media.com
Green, Philip
Principal – Hoffman Alvary & Company philgreen@hoffmanalvary.com | hoffmanalvary.com
Philip Green is an expert in valuing and accounting for intellectual properties and intangible assets. For more than 30 years, much of his work has pertained to pharmaceutical and biotechnology companies, hardware and software developers, and consumer products industries. Mr Green has testified at trials in state and federal courts and in arbitration proceedings on over 50 occasions. He regularly teaches continuing legal education courses and serves as a guest lecturer at law schools. His professional experience includes valuing patents, copyright, trademarks and other intangible assets in connection with transactions, providing fairness opinions related to transfers of intangible assets and valuing equity interests in technology companies in connection with shareholder disputes. He also regularly analyses damages from infringement of patents, copyright and trademarks, and misappropriation of trade secrets. Mr Green assists clients and counsel in developing licensing strategies, identifying potential licensees, negotiating agreements, evaluating commercial success related to the use of a patented technology and analysing financial issues before the International Trade Commission, including domestic industry, remedy and bonding. Mr Green is a certified public accountant, a certified management accountant and an accredited senior appraiser by the American Society of Appraisers. Prior to founding Hoffman Alvary in 1996, he was a senior manager at Price Waterhouse LLP. He also was an executive consultant at Peterson Consulting and began his career as a staff accountant at Ernst & Whinney.
www.IAM-media.com
Hoffman Alvary & Company Seven Wells Avenue Newton MA 2459 United States T +1 617 758 0500
IAM Patent 1000 1269
Gunderson, Lance E
Managing Director – Echelon Analytics lgunderson@ea-us.com | www.ea-us.com
Lance E Gunderson is a managing director for Echelon Analytics, a specialised professional firm that provides economic, financial and forensic accounting consulting services. Mr Gunderson focuses primarily on the calculation of damages relating to intellectual property, including patents, trade secrets, trademarks and copyright. Mr Gunderson has testified as a damages expert throughout the United States in both federal and state court trial proceedings and has issued findings on matters in mediation and arbitration. He has also consulted with companies in a variety of industries, including aviation, banking, chemical, computers/software, construction, consumer products, healthcare, nuclear power, oil and gas, semiconductors and telecommunications. Mr Gunderson’s work includes quantitative analysis and assessments relating to sales, costs, lost profits, reasonable royalties, licence agreements, financial transactions, business valuations, licensing negotiations and other related financial analysis. His work also includes assisting companies and law firms with the identification of relevant financial and business information, the evaluation of damages alternatives and interaction with other experts and company personnel. Mr Gunderson is a member of the National Association of Certified Valuation Analysts. Mr Gunderson is also a member of the Licensing Executives Society, an organisation of more than 5,000 members including corporate executives and professionals involved in the licensing and valuation of patents, trademarks and other intellectual property. Mr Gunderson has been identified as a top patent damages expert in the United States since the IAM Patent 1000 2014 edition. Mr Gunderson has taught at universities, bar associations and law seminars, and has written articles on IP, damages and valuation-related topics. Mr Gunderson received an MBA from Texas A&M University and holds a BS degree in business management (finance emphasis) from Brigham Young University.
1270 IAM Patent 1000
Echelon Analytics 17302 House Hahl Road Suite 339 Cypress TX 77433 United States T +1 281 773 2019 Professional associations • LES • NACVA
www.IAM-media.com
Hall, Dawn
Senior Managing Director – FTI Consulting Inc dawn.hall@fticonsulting.com | www.fticonsulting.com
Dawn Hall is a senior managing director in the dispute advisory services practice and co-leader of the IP practice in the forensic and litigation consulting segment of FTI Consulting. Ms Hall has more than 20 years of experience assisting companies and counsel with complex economic, financial, accounting and litigation issues across many industries. She is based in New York. Ms Hall has directed numerous client engagements focused on applied economic and damages analyses related to intellectual property and commercial litigation matters. She also has extensive experience with other types of business dispute, such as breach of contract, breach of non-solicitation and non-compete agreements, and transfer pricing. Ms Hall has conducted complex damages studies involving lost sales, lost profits, incremental revenue and cost analyses, market share split analyses, apportionment analyses, manufacturing and marketing capacity, price erosion, reasonable royalty, unjust enrichment and prejudgment interest for both plaintiffs and defendants. She has issued expert reports reflecting professional opinions in these respective areas and has been qualified by US federal courts as a testifying expert on damages. Ms Hall has assisted trial attorneys in analysing company forecasts, business and strategic plans, financial statements and appropriate market data in the preparation of deposition issues for 30(b)6 and opposing experts and preparing trial exhibits, as well as preparing early case assessments. Ms Hall has served clients in many industries, including banking, securities and financial markets, aerospace and aviation, electronics, computer hardware, software and networking, chemicals and petrochemicals, automotive, medical device products and consumer products. In 2017 Ms Hall was recognised by Consulting Magazine’s Women Leaders in Consulting with the Future Service Award and the 2019 Top 25 Leading Women Intrapreneurs of New Jersey, honouring her contributions to the consulting industry. She is a frequent presenter on patents, trade secrets and commercial economic damages for national associations, such as the Patent Law Institute and the American Intellectual Property Law Association. She also is a member of the Licensing Executives Society and the American Bar Association.
www.IAM-media.com
FTI Consulting Inc Three Times Square Ninth Floor New York NY 10036 United States T +1 212 499 3662 See firm profile p1682 Professional associations • ABA • LES • Sedona Conference
IAM Patent 1000 1271
Jarosz, John
Managing Principal – Analysis Group john.jarosz@analysisgroup.com | www.analysisgroup.com
John Jarosz is an applied microeconomist and director of Analysis Group’s Washington DC office. He has been engaged in matters across numerous industries, including pharmaceuticals, medical devices, consumer and industrial products, computer hardware and software, automotive, telecommunications and the Internet. He has provided expert testimony in more than 280 depositions and roughly 100 trials and hearings involving intellectual property, licensing, commercial damages, FRAND and antitrust issues. Mr Jarosz’s experience in IP matters involves the evaluation of damages, FRAND commitments, commercial success and injunctive relief issues. He has done work in patent, copyright, trade secret, trademark and unfair competition cases. He has also consulted on strategy regarding the nature and value of technology, methods to share technology and reasonable compensation terms, and has helped dozens of clients with valuation and licensing matters outside litigation. A frequent author and lecturer on the economics of IP protection, Mr Jarosz has addressed many topics over the years, including the use of game theory in licence negotiations, the economics of noninfringing alternatives, the use and abuse of the 25% rule and the proper role of the hypothetical negotiation construct. His articles and papers have been published in the Stanford Technology Law Review, Law360, the Federal Circuit Bar Journal, Les Nouvelles: Journal of the Licensing Executives Society, The Journal of Business Valuation and the Journal of the Patent and Trademark Office Society. Mr Jarosz has given presentations at various meetings of the Licensing Executives Society and the Association of University Technology Managers. He has recently been actively involved in the Sedona Conference and Intellectual Property Owners Association. He has taught classes at Georgetown University Law Centre, the George Washington University Law School, the University of Pennsylvania Carey Law School and Wharton Business School, the Columbia Business School and the USPTO. Mr Jarosz holds an MA in economics and was a PhD candidate in economics (Washington University in St Louis); he has a JD (University of Wisconsin) and a BA in economics and organisational communication (Creighton University).
1272 IAM Patent 1000
Analysis Group 800 17th Street NW Suite 400 Washington DC 20006 United States T +1 202 530 3980 F +1 202 530 0436 See firm profile p1648 Professional associations • ABA • AEA • ALE
www.IAM-media.com
Kerr, William
Managing Director – Berkeley Research Group, LLC wkerr@thinkbrg.com | www.thinkbrg.com
William Kerr is an expert in the economics of intellectual property and competitiveness. He has produced several books and articles on these subjects, including a leading treatise on the economics of IP damages. In more than 30 years as a professional economist, Dr Kerr has taught economics and statistics and advised government and private clients on issues ranging from tax policy to economic development, as well as the development of international trade policy and licensing programmes. Dr Kerr testifies regularly as an expert in district court, in international and domestic arbitration and before the US International Trade Commission on intellectual property, antitrust issues and commercial disputes. Dr Kerr has also testified in IP litigation, on lost profits and reasonable royalty damages, commercial success and infringer’s profits. He also consults with clients on the value of intellectual property, and evaluating licensing and pricing strategies for exploitation of IP assets. Dr Kerr has a PhD in economics (industrial organisation, labour economics, international economics) and MS in economics from the Graduate Faculty of the New School. Dr Kerr also has a BS in social sciences from the New School for Social Research.
Berkeley Research Group, LLC 1800 M Street Northwest Second Floor Washington DC 20036 United States T +1 202 480 2648 M +1 703 408 9080 See firm profile p1656
www.IAM-media.com
IAM Patent 1000 1273
Kindler, Lauren
Vice President – Analysis Group lauren.kindler@analysisgroup.com | www.analysisgroup.com
Lauren Kindler is an economist with over 16 years’ experience assisting clients in a wide range of IP matters. She has been engaged in IP matters across numerous industries, including medical devices, consumer and industrial products, computer hardware and software, mobile devices, entertainment and social media platforms. Ms Kindler has provided expert testimony in numerous depositions and trials involving IP, licensing, commercial damages and FRAND issues. In a recent matter, she provided damages testimony at trial in Roku’s successful defence of a patent infringement case involving its screen mirroring and screen casting features. Ms Kindler’s experience includes the evaluation of lost profits, royalties and price erosion damages; FRAND licensing terms; commercial success; and injunctive relief issues. Within intellectual property, she has worked on patent, trade secret, trademark, trade dress and unfair competition cases. Her work also includes consulting on issues related to licensing and monetisation of patents and patent portfolios, and to valuation of patented technologies. Ms Kindler holds an MA in economics (Southern Methodist University) and a BA in economics (Tulane University).
Analysis Group Park Place Center 2911 Turtle Creek Boulevard Suite 600 Dallas TX 75219 United States T +1 214 523 1410 F +1 214 523 1401 See firm profile p1648
1648
1274 IAM Patent 1000
www.IAM-media.com
Kinrich, Jeffrey H
Managing Principal – Analysis Group jeff.kinrich@analysisgroup.com | www.analysisgroup.com
Jeffrey H Kinrich is a financial analyst, certified public accountant and valuation professional. He specialises in damage quantification and valuation in IP and commercial damages cases. His extensive experience spans numerous industries, including semiconductors, telecoms, medical devices and consumer products. Mr Kinrich has calculated damages in patent, trademark, copyright, trade secret and right of privacy matters under both lost profits and reasonable royalty approaches. He has also analysed profits and apportionment for actual damages and unjust enrichment claims in a variety of IP matters, and has addressed the issue of irreparable harm related to injunction motions. During his 40-year career, Mr Kinrich has served several hundred times as an expert witness in federal and state courts and before arbitration panels. Mr Kinrich has authored or edited articles and book chapters on topics such as the analysis and measurement of damages in patent infringement cases. He is the author of “Trademark Misuse”, a chapter in Litigation Support Report Writing: Accounting, Finance, and Economic Issues, and served as co-editor of the recently published book Lost Profits Damages: Principles, Methods, and Applications. Mr Kinrich is a certified public accountant in California and Illinois and is accredited in business valuation. He holds an MBA in finance and quantitative methods (University of Maryland), an MS in statistics (Stanford University) and a BS in mathematics (Pomona College).
www.IAM-media.com
Analysis Group 333 S Hope Street 27th Floor Los Angeles CA 90071 United States T +1 213 896 4544 F +1 213 623 4112 See firm profile p1648 Professional associations • AICPA • CalCPA
IAM Patent 1000 1275
Kline, Philip W
Managing Director– Ankura Consulting Group, LLC philip.kline@ankura.com | www.ankura.com
Philip W Kline is a managing director at Ankura based in Ann Arbor. He has extensive experience in IP valuation and monetisation, including assisting clients in negotiating IP licences. Mr Kline has represented a broad range of clients, including charitable foundations, small companies and multinational corporations. Mr Kline has valued intellectual property in a variety of contexts, including damages quantification, bankruptcy, tax planning and tax disputes. He has assisted in the quantification of damages resulting from numerous causes of action, including patent infringement, copyright infringement, trademark infringement, theft of trade secret, unfair competition, unjust enrichment, breach of contract and false advertising. Mr Kline’s experience spans a variety of industries. He has worked extensively in the wireless telecommunications space, assisting both licensors and licensees in assessing whether proposed royalty rates for standard-essential patents are fair, reasonable and non-discriminatory. He has also worked on engagements pertaining to medical devices, consumer electronics, industrial networking and transportation. Mr Kline has held a variety of leadership positions in industry organisations. He was the American Bar Association (ABA) Intellectual Property Law (IPL) Section’s liaison to the Licensing Executive Society’s Intellectual Property Valuation and Standards Committee. He is a past chair of both the ABA IPL Section’s Monetisation and Valuation of IP Committee and the ABA IPL Section’s Economics of the Profession Committee. Mr Kline is also a past member of the Certified Licensing Professional (CLP) Standards, Admissions and Recertification Committee and the CLP Exam Development Committee.
1276 IAM Patent 1000
Ankura Consulting Group LLC 215 E Washington Street Suite 201 Ann Arbor, MI 48104 United States T +1 734 369 3574 See firm profile p1650
www.IAM-media.com
Lasinski, Michael
Senior Managing Director – Ankura Consulting Group, LLC michael.lasinski@ankura.com | www.ankura.com
Michael Lasinski is a senior managing director at Ankura Consulting Group. Ankura has more than 1,400 professionals globally and Mr Lasinski leads the firm’s IP practice. Over the past 25 years, Mr Lasinski has consulted on hundreds of engagements pertaining to IPcentric transactions, IP valuations, IP damages analyses and FRAND licensing issues. Mr Lasinski has testified as an expert in federal, state, tax, international, International Trade Commission and arbitration proceedings on multiple occasions. He is a past president of the Licensing Executives Society United States and Canada, a past division chair for the IP Section of the American Bar Association and a former vice chair of the Intellectual Property Owners’ Valuation and Taxation Committee. He is also a certified public accountant, a certified licensing professional and certified in financial forensics. Mr Lasinski’s consulting experience includes a broad cross-section of clients and industries, including advertising, automotive, chemical, computer hardware and software, consumer products, e-commerce, food and beverage, the Internet, healthcare, life sciences, medical devices, mobile devices, pharmaceuticals semiconductors, telecoms and wireless communications. His clients include Fortune 500 companies, law firms, private equity investors, as well as others. Mr Lasinski holds a bachelor’s in electrical engineering (summa cum laude) and a master’s in business administration (high honours) from the University of Michigan.
www.IAM-media.com
Ankura Consulting Group, LLC 101 North Riverside Suite 2400 Chicago IL 60606 United States T +1 312 485 8500 See firm profile p1650 Professional associations • ABA • AICPA • LES
IAM Patent 1000 1277
Lathrop, Joshua
Director – Berkeley Research Group, LLC jlathrop@thinkbrg.com | www.thinkbrg.com
Joshua Lathrop provides expert financial and economic consulting services to parties in IP disputes. He is regularly involved in litigation and arbitration matters before federal and state courts, arbitral bodies and the US International Trade Commission. Mr Lathrop regularly testifies at depositions and hearings. His experience includes determining damages due to patent, trade dress and trademark infringement (eg, reasonable royalties, comparable licences, lost profits, accounting of profits) and the economic prong of the domestic industry requirement under Section 337. In other corporate consulting matters, Mr Lathrop has valued intangible assets in the chemicals industry, developed strategies to lower overall IP input costs in the game console industry and analysed compliance under royalty and profit-sharing agreements between major media entities. Mr Lathrop has lectured on IP damages, Section 337 topics and quantitative methods, and has acted as an arbitrator in fee disputes before the DC Bar Attorney/Client Arbitration Board. Mr Lathrop holds a BA in economics from William & Mary (summa cum laude, Phi Beta Kappa) and an MBA from the University of Virginia. Mr Lathrop’s career began with a decade at PwC. He has practised with Berkeley Research Group for a decade.
1278 IAM Patent 1000
Berkeley Research Group, LLC 810 Seventh Avenue Suite 4100 New York NY 10019 United States T +1 646 205 9276 See firm profile p1656
www.IAM-media.com
Lawton, Catharine M
Managing Director – Berkeley Research Group, LLC clawton@thinkbrg.com | www.thinkbrg.com
Catharine M Lawton is a managing director in Berkeley Research Group’s Chicago office. She is an IP damages expert with extensive consulting experience in many industries. During her 35-year career, Ms Lawton has studied the economic and financial impact of a wide range of technologies on product lines, companies and industries – and measured the increased productivity and profitability that they have enabled. Her experience tracks the evolution of technology in the US economy and the business strategies that have evolved to exploit it. From the mid-1980s to the present, she has undertaken extensive study of many important technologies of the day. Her work began with the mechanical technologies prevalent in the 1980s that enabled increased machine productivity, improved product quality and lower cost. This was followed by the rise of automation technology in the late-1980s and 1990s as warehouses and manufacturing processes were automated enabling further productivity gains. During the past two decades Ms Lawton’s studies have included computer software, hardware and systems, internet technology, semiconductors, telecommunications and smartphones that are the cornerstones of today’s information economy. She has also studied technology that transcends time, including pharmaceuticals, biotechnology and medical devices. In addition, she has also studied the evolution of technology beginning in the late-1800s and the associated technology disputes of earlier eras. In many instances, information and concepts gleaned from these earlier times provide an important historical backdrop and context for evaluating today’s technology issues and problems. Her clients include small and large companies, as well as many Fortune 500 companies in a wide range of industries. Ms Lawton has testified as an expert witness in federal courts, state courts and before arbitration panels across the United States. She has written and presented on various subjects related to the economics of technology and economic damages more generally. Ms Lawton earned a BS in Finance with high honours from the University of Illinois at Urbana-Champaign. Her studies also included extensive coursework in economics and political science.
www.IAM-media.com
Berkeley Research Group, LLC 70 West Madison Suite 5000 Chicago IL 60602 United States T +1 312 429 7910 See firm profile p1656
IAM Patent 1000 1279
Layne-Farrar, Anne
Vice President – Charles River Associates alayne-farrar@crai.com | www.crai.com
Anne Layne-Farrar is a vice president in the antitrust and competition economics practice of Charles River Associates and an adjunct professor at Northwestern University School of Law. She specialises in antitrust and IP matters, especially where the two issues are combined. Dr Layne-Farrar has advised clients in a variety of jurisdictions, including the United States, Europe and Asia (China, India and South Korea). Dr Layne-Farrar’s expert work for industry-leading clients has included analysing reasonable licensing, including FRAND, calculating damages, assessing economic incentives and firm behaviour within standard-setting organisations; conducting rule-of-reason analysis for alleged pharmaceutical reverse payments and product hopping and defining markets. Dr Layne-Farrar has given oral and written expert testimony in a variety of US courts and has provided other submissions, including ones before the US Supreme Court and before regulatory bodies including the US Federal Trade Commission, the US Department of Justice, the US Senate, the European Commission and China’s Ministry of Commerce. In addition, she has presented at academic and industry conferences around the world and is widely published. She co-authored a book on law and economics, book chapters on IP issues, and has published articles in academic journals, including AIPLA Quarterly Journal, Harvard Journal of Law and Public Policy and Texas Intellectual Property Law Journal.
Charles River Associates One South Wacker Drive 34th Floor Suite 3400 Chicago IL 60606 United States T +1 312 377 9238 See firm profile p1666 Professional associations • ABA • AIPLA Sample client list • Allergan • Boehringer Ingelheim • Dolby • InterDigital • Ericsson • Momenta • MPEG LA • Nokia • Sprint • T-Mobile
1280 IAM Patent 1000
www.IAM-media.com
Leonard, Gregory K
Vice President – Charles River Associates gleonard@crai.com | www.crai.com
Gregory K Leonard specialises in applied microeconomics and econometrics. He has provided testimony before US federal and state courts, government agencies and arbitration panels on issues involving antitrust, damages estimation, statistics and econometrics, surveys, valuation, and labour market discrimination. Dr Leonard has written extensively on the subjects of antitrust, industrial organisation, econometrics, intellectual property, class certification and labour economics. His publications have appeared in journals such as the RAND Journal of Economics, the Journal of Industrial Economics, the Journal of Econometrics, the International Journal of Industrial Organization and the Antitrust Law Journal. Dr Leonard’s writings were cited by the Court of Appeals for the Federal Circuit in its Uniloc decision. He is the editorial board vice chair for economics of the Antitrust Law Journal and has served as a referee for numerous economic journals. Dr Leonard has given invited presentations on antitrust and IP issues at the US Federal Trade Commission, the US Department of Justice, the former Anti-Monopoly Bureau of China’s Ministry of Commerce, the Supreme People’s Court of China and Japan’s Fair Trade Commission. He served as a consultant on the issue of immunities and exemptions to the US Antitrust Modernisation Commission. Dr Leonard holds an ScB in applied mathematics-economics from Brown University and a PhD in economics from MIT.
www.IAM-media.com
Charles River Associates 601 12th Street Suite 1500 Oakland CA 94607 T +1 510 595 2706 See firm profile p1666 Professional associations • American Bar Association • American Economic Association
IAM Patent 1000 1281
Lindsay, Daniel
Managing Director – IPFC Corp dlindsay@ipfccorp.com | www.ipfccorp.com
Daniel Lindsay is a co-founder and managing director of IPFC Corp. IPFC is an independent consulting firm that provides corporate, individual and law firm clients with financial, economic, valuation and damages quantification and assessment, and expert witness services for various business purposes and in the context of IP and commercial disputes. Mr Lindsay has more than 20 years of professional experience providing financial consulting and damage analysis services to law firms and companies of all sizes involved in litigation and other disputes. These matters have involved intellectual property, breach of contract, business interruption, antitrust, and oil and gas royalty issues. Mr Lindsay has worked with law firms and corporate clients in all phases of litigation, including early case damages assessments, discovery, motion practice, financial analysis, expert reports, depositions and trials. Mr Lindsay has significant experience consulting with companies regarding the financial aspects of intellectual property. His experience has included the quantification of damages in patent infringement disputes, as well as assistance with the negotiation of patent licence agreements outside the context of litigation. Mr Lindsay has consulted with numerous publicly traded and closely held companies in a variety of industries, including automotive, computer software and hardware, consumer products, electronic commerce, Internet, material handling and manufacturing, medical products, oil and gas, telecommunications and utilities. Mr Lindsay has been designated and testified as a damages expert in federal court.
1282 IAM Patent 1000
IPFC Corp 333 Clay Street Suite 3960 Houston TX 77002 United States T +1 713 335 5442 Professional associations • LES • NACVA
www.IAM-media.com
Maness, Robert
Vice President – Charles River Associates rmaness@crai.com | www.crai.com
Robert Maness received a PhD in economics from Texas A&M University, with a focus on industrial organisation (factors, including innovation, that affect the competitiveness of industries) and econometrics (the application of statistical methods to assessing economic theories). Dr Maness is an associate professor of the practice at Texas A&M, where he teaches industrial organisation, health economics, antitrust, financial economics and managerial economics, among other subject. Dr Maness has testified at trial in patent matters in relation to lost profits and reasonable royalties involving medical devices, pharmaceuticals, information technology, energy, transportation and a host of other industries. He has also testified at trial and in deposition in patent matters with regard to the assessment of commercial success and whether the patented features were responsible for the commercial success of the products surrounding claims of obviousness for several pharmaceutical products. Dr Maness has consulted with several generic pharmaceutical manufacturers on lost profits and reasonable royalty damages from potential ‘at risk’ launches. He has extensive research background in the pharmaceutical industry, including published research on competition between generic and branded pharmaceutical firms, and on the role innovation competition plays in the pharmaceutical industry. Dr Maness also has extensive experience in applying econometric techniques to litigation problems, including using econometric techniques to assess damages, lost sales, costs and profits in antitrust and IP matters. He has also used econometric techniques to isolate the value of the patented features relative to other factors driving sales and profits for specific products.
www.IAM-media.com
Charles River Associates Galleria Tower Suite 600 1716 Briarcrest Drive Bryan TX 77802 2759 United States T +1 979 268 6528 See firm profile p1666 Professional associations • American Bar Association • American Economic Association
IAM Patent 1000 1283
McDuff, DeForest
Partner – Insight Economics deforest@insighteconomics.com | www.insighteconomics.com
DeForest McDuff, PhD is a Princeton-trained economist, adjunct professor of economics, and experienced expert witness, with extensive experience in consulting, finance, and business. Dr McDuff’s expert opinions have been cited and relied upon by clients, courts, and government agencies. Dr McDuff was named in the IAM Patent 1000 as a top expert witness for patent cases in 2020. Dr McDuff co-founded Insight Economics in 2017. Dr McDuff provides economic consulting and testimony in many areas, including: • Economic damages: lost profits, unjust enrichment, reasonable royalty, loss of value, loss of reputation, business impact, and other issues • Intellectual property: patents, trademarks, trade secrets, copyrights, licensing • Antitrust: monopolization, price discrimination, tying, price fixing, mergers • Competition: economic harm, market definition, unfair competition, false advertising • Legal issues: class action, class certification, irreparable harm, commercial success • Other areas: valuation, financial analysis, labor, employment, lost wages, and more Dr McDuff’s expert witness experience includes more than 90 expert reports, 60 expert depositions, and 20 trials and hearings in courts across the country. His consulting experience outside the courtroom includes regulatory analysis, fair market value, licensing, negotiation, pricing, business strategy, product launches, strategic analysis, and a range of other topics. Dr McDuff earned a PhD in Economics from Princeton University, where he received a National Science Foundation Graduate Research Fellowship (awarded to 25 graduate students in economics nationwide each year) for his academic research in financial economics and applied microeconomics. He has published in peer-reviewed academic journals and widely reviewed industry publications. Dr McDuff graduated summa cum laude with a BA in economics and a BS mathematics from the University of Maryland. Dr McDuff is currently appointed as an Adjunct Teaching Professor in the Department of Economics at the University of North Carolina at Chapel Hill. Dr McDuff is also the co-founder of Integrity Seminars, an online company dedicated to teaching academic integrity to college students since 2006. The company offers the Academic Integrity Seminar, which is a personalised online educational intervention administered to >100 colleges and universities nationwide to promote the importance of social trust and mutual obligation in personal, academic, and economic relationships. Dr McDuff’s biography can be found at https://www. insighteconomics.com/deforest-mcduff/
1284 IAM Patent 1000
Insight Economics 555 Fayetteville Street Suite 201 Raleigh NC 27601 United States T +1 919 446 5755 Professional associations • American Economics Association • LES
www.IAM-media.com
McGavock, Daniel M
Vice President – Charles River Associates dmcgavock@crai.com | www.crai.com
Daniel M McGavock is vice president and IP practice leader of Charles River Associates (CRA), a global business, financial and economics consulting firm. Mr McGavock has specialised in the valuation and strategic management of intellectual property for more than 30 years. He has provided expert testimony in over 90 IP matters and has experience in a variety of forums, including international arbitration tribunals, federal courts, state courts, the US Court of Claims, the International Trade Commission (ITC) and the PTAB. He has addressed all areas of potential economic recovery in IP disputes, including lost profits, price erosion, reasonable royalty, profit disgorgement and unjust enrichment. He has also addressed commercial success, irreparable harm and economic issues in ITC Section 337 matters. Outside litigation, Mr McGavock has performed IP valuations in a variety of contexts, including licence, joint venture and M&A transactions, bankruptcy and restructuring, transfer pricing, and financial and tax reporting. He has assisted clients throughout the IP strategic management and transaction process, including in portfolio assessment, opportunity identification, competitive benchmarking, market research, partner screening, financial modelling, transaction negotiation and licence compliance audits. His industry experience includes aerospace, automotive, biologics and biosimilars, building materials, chemicals, computer hardware and peripherals, cloud-computing services, construction equipment, consumer electronics, e-commerce, defence technology, energy, environmental, financial services, fintech, food and beverage, industrial equipment, health and beauty products, medical devices, media and entertainment, mobile devices, pharmaceuticals, semiconductors, social media, software, telecommunications, travel and leisure, and wireless technology. Before CRA’s acquisition of InteCap in 2004, Mr McGavock served as InteCap’s president and a member of its board of directors. Mr McGavock is a registered certified public accountant and a certified licensing professional. He has served as chair of the Valuation and Taxation and Financial Markets Committees, vice chair of the International Audit Committee and a founding member of the Biopharmaceutical Royalty Rates and Deal Terms Global Survey Committee of the Licensing Executives Society. Mr McGavock has also been an adjunct professor at the Northwestern University Pritzker School of Law, teaching a course on IP valuation.
www.IAM-media.com
Charles River Associates One South Wacker Drive 34th Floor Chicago IL 60606 United States T +1 312 377 2279 F +1 312 357 1001 See firm profile p1666 Professional associations • AICPA • LES
IAM Patent 1000 1285
McLean, Justin
Managing Principal – Analysis Group justin.mclean@analysisgroup.com | www.analysisgroup.com
Justin McLean specialises in applying finance and economics to problems in complex business litigation, with an emphasis on intellectual property. His experience spans several industries, from banking, insurance and high tech to telecommunications and healthcare. He has served as an expert witness on numerous matters and has provided assistance in many phases of litigation involving IP misappropriation, false advertising disputes and other cases involving technological innovation and new product development. Mr McLean has assessed damages and testified in a range of matters relating to proprietary customer information, patents and software source codes. In addition to serving as a testifying expert, Mr McLean has led large case teams and supported academics in a number of high-profile matters, including supporting counsel for a large electronics manufacturer in litigation associated with features on smartphones and tablets. He frequently speaks on IP topics, including lost profits and damages calculations, patent valuation for software inventions, litigation strategies in IP cases and economic analysis in patent litigation. Mr McLean holds an MS in industrial administration (Carnegie Mellon University) and a BA in economics (Swarthmore College).
Analysis Group 800 17th Street NW Suite 400 Washington DC 20006 United States T +1 202 530 2591 F +1 202 530 0436 See firm profile p1648
1286 IAM Patent 1000
www.IAM-media.com
Milani, Michael
Managing Director – Ocean Tomo LLC mmilani@oceantomo.com | www.oceantomo.com
Michael Milani is a managing director in the expert testimony practice of Ocean Tomo. He combines 25 years of litigation experience with six years of corporate strategy expertise, and has been recognised as a leading IP strategist. Mr Milani’s experience covers all types of intellectual property and he has testified in federal court, state court, alternative dispute resolution, International Trade Commission and Patent Trial and Appeals Board proceedings. All combined, Mr Milani has worked on over 200 assignments, consulting clients on economic issues throughout the litigation process. Mr Milani’s professional experience covers a wide range of industries, including consumer products and electronics, medical equipment and devices, pharmaceuticals, semiconductors, computer networking equipment, cellular technologies, avionics, retail security, industrial/building products, lighting products, automotive products and carpeting/flooring products, among others. Prior to joining Ocean Tomo, Mr Milani was a senior manager with a multinational consulting firm. There, Mr Milani spent more than six years developing comprehensive business strategies for a wide variety of companies. His unique blend of litigation and corporate strategy expertise enables him to bring innovative approaches to his client engagements. In addition to his professional experience, Mr Milani has served as an adjunct professor, spending several years teaching both graduate level business and law school classes related to IP management and monetisation. He has also spoken on similar topics at a number of additional law school and business programmes, further reflecting his affinity for teaching. Mr Milani holds a BS in finance from the University of Illinois and an MBA from Northwestern University with concentrations in finance, marketing and strategy. He is also a Certified Licensing Professional (CLP) and has served on the CLP Recertification Committee.
www.IAM-media.com
Ocean Tomo LLC 200 West Madison Street 37th Floor Chicago IL 60606 United States T +1 312 327 4417
IAM Patent 1000 1287
Mulhern, Carla S
Managing Principal – Analysis Group carla.mulhern@analysisgroup.com | www.analysisgroup.com
Carla S Mulhern specialises in the application of economic principles to issues arising in complex business litigation and has substantial experience in IP matters. Ms Mulhern has assisted clients in a variety of industries, including pharmaceuticals, medical devices, automotive, entertainment, consumer products, computer hardware and software, and semiconductors. Ms Mulhern has provided expert witness testimony in district and state courts, before arbitration panels and before the US International Trade Commission (ITC). Her testimony has included the analysis of commercial success and of damages arising from allegations of the misappropriation of intellectual property and breach of contract. At the ITC, she has testified on economic issues related to commercial success, domestic industry, remedy, bond and public interest. Ms Mulhern’s IP damages experience includes cases involving allegations of patent, copyright and trademark infringement, as well as misappropriation of trade secrets. Ms Mulhern has assisted clients in all aspects of litigation, including development and review of pretrial discovery, development of economic and financial models to analyse damages, critique of analyses propounded by opposing experts and preparation of testimony. In nonlitigation matters, Ms Mulhern has conducted valuations of intellectual property in the context of prospective licensing negotiations, strategic alliances and joint ventures. A frequent writer and speaker on issues related to IP valuation and damages assessment, Ms Mulhern has co-authored articles published in outlets such as Law360 and The Licensing Journal. Ms Mulhern holds an MSc in economics (London School of Economics and Political Science) and a BS in mathematics (Bucknell University).
1288 IAM Patent 1000
Analysis Group 800 17th Street NW Suite 400 Washington DC 20006 United States T +1 202 530 3988 F +1 202 530 0436 See firm profile p1648 Professional associations • AEA • LES
www.IAM-media.com
Prowse, Stephen D
Senior Managing Director – FTI Consulting Inc stephen.prowse@fticonsulting.com | www.fticonsulting.com
Stephen D Prowse is a senior managing director in FTI Consulting Inc’s Dallas office, where he provides clients with economic, valuation, statistical and financial consulting services involving IP matters. Dr Prowse holds a PhD in economics from the University of California, Los Angeles, is a chartered financial analyst and a former Federal Reserve economist. He is a nationally recognised consultant and expert and has almost 20 years’ experience assessing economic damages in patent, copyright, trademark, trade secret and false advertising matters. He also has experience advising companies on the valuation and licensing of their intellectual property. Dr Prowse has calculated reasonable royalties, lost profits, lost convoyed sales and price erosion damages in numerous IP matters. He has performed studies of the market where the patented product is sold, determined the value of the patented feature to the end product and calculated the economic value of the intellectual property at issue. He has analysed the commercial success of patented products and whether such success is due to the patented features. Dr Prowse has provided expert testimony on these issues in state and federal courts across the country and in international and domestic arbitration. He has also performed numerous valuation projects relating to intellectual property. He has determined royalty rates and other terms for licensing agreements between related entities and provided consulting advice in licensing negotiations. Dr Prowse has also conducted economic analyses in numerous International Trade Commission (ITC) 337 investigations. He has evaluated economic and market factors relevant to the existence of a domestic industry, the appropriate bond rate, the appropriateness of limited and general exclusion orders and public interest factors. He has also performed economic analyses in assessing civil penalties in ITC enforcement actions. His experience covers a variety of industries, including semiconductors, pharmaceuticals, medical devices, mobile computing devices, telecommunications, financial services, computer software, oil and gas, chemicals and manufacturing. He has published his research in leading publications such as the Litigation Services Handbook and the Journal of Finance.
www.IAM-media.com
FTI Consulting Inc 2001 Ross Avenue Suite 1800 Dallas TX 75201 United States T +1 214 397 1696 F +1 214 397 1785 See firm profile p1682 Professional associations • AEA • CFA Institute • LES
IAM Patent 1000 1289
Putnam, Jon
Principal – Competition Dynamics, Inc jon.putnam@competitiondynamics.com | www.competitiondynamics.com
Jon Putnam founded Competition Dynamics as a platform for economic research and testimony at the intersection of intellectual property, competition and international trade law. Dr Putnam has been retained in more than 100 consulting engagements and has testified more than 40 times in patent, antitrust, copyright, trade secret, contract and tax actions in federal, state and bankruptcy courts; before the US Federal Trade Commission, International Trade Commission and Tax Court; in US and international arbitrations; and in regulatory proceedings in Canada and India. Cases with more than $1 billion in controversy include Medtronic v Internal Revenue Service; Apple v Qualcomm; Idenix v Gilead Sciences; Ericsson v Huawei; Ericsson v Apple; Ericsson v Samsung; and InterDigital v Samsung. Before founding Competition Dynamics, Dr Putnam held the Chair in the Law and Economics of Intellectual Property (funded by the Ontario Research and Development Challenge Fund) at the University of Toronto, and academic appointments at Boston University, Columbia University, Vassar College and Yale University. Recent articles include the following, available on the Social Science Research Network: • “Economic Determinations in ‘FRAND Rate’-Setting: A Guide for the Perplexed”, Fordham International Law Journal 41(4) (May 2018): 953-1015; • “The Smallest Salable Patent Practicing Unit (SSPPU): Theory and Evidence”; and • “Value Shares of Technologically Complex Products”.
Competition Dynamics, Inc 10 Federal Street Suite 301 Salem MA 01970 United States T +1 617 394 1941
Dr Putnam is also the author of: • “Patent Valuation” in The New Palgrave Dictionary of Economics (2008); • “The Law and Economics of International Intellectual Property: A Primer” in Frontiers of Economics and Globalization, Vol. 2: Intellectual Property, Growth and Trade (2008); and • Intellectual Property Rights and Innovation in the KnowledgeBased Economy (editor) (2006). Dr Putnam holds BA, MA and PhD degrees in economics from Yale University, where he specialised in international, macro and R&D economics. He received fellowships at Yale and Columbia law schools. Dr Putnam’s PhD thesis, The Value of International Patent Rights, was the first to measure the global value of patent rights.
1290 IAM Patent 1000
www.IAM-media.com
Rowe, Julia
Managing Director – Duff & Phelps LLC, a Kroll business julia.rowe@duffandphelps.com | www.duffandphelps.com
Julia Rowe has a unique combination of public policy, valuation and litigation experience relating to intellectual property. Clients come to Ms Rowe for strategic, thoughtful and timely advice for maximising value or minimising risk on complex IP issues. Ms Rowe has served as an expert witness through deposition and trial. Her case experience spans all types of intellectual property and several venues. Ms Rowe has more than a decade of experience evaluating economic issues in the context of litigation. This includes the calculation of damages in patent infringement cases, as well as breach of contract, trademark infringement, copyright infringement and theft of trade secrets. She has worked with both plaintiffs and defendants, and is well versed in issues such as analysing the competitive landscape, analysing demand drivers and the probability of sales absent infringement, and estimating ‘but-for’ profitability. In the US International Trade Commission (ITC), Ms Rowe has extensive experience analysing international trade issues, including public interest, domestic industry, injury, cease and desist, and bonding. Ms Rowe has been admitted as an expert witness in the ITC and has testified in ITC hearings. Ms Rowe is well known for her excellence in valuation-related consulting services. She is experienced in providing these services in a wide range of settings, including pre-suit evaluation, licensing negotiations, financial reporting, and mergers and acquisitions. Ms Rowe has worked across a broad number of industries and sectors, including agriculture, automotive, consumer products, computer software and hardware, gaming, medical devices and telecommunications. Ms Rowe has authored publications and has been an invited speaker on the subjects of valuation and licensing. She earned a bachelor in business administration from the Stephen M Ross School of Business at the University of Michigan and a master of accountancy from the Kellstadt Graduate School of Business at DePaul University. She is a certified public accountant registered in Illinois. At Duff & Phelps (now a Kroll business), Ms Rowe is a managing director in the IP advisory services practice.
www.IAM-media.com
Duff & Phelps LLC, a Kroll business 311 S Wacker Drive Suite 4200 Chicago IL 60606 United States T +1 312 697 4721 See firm profile p1676
IAM Patent 1000 1291
Schenk, Kimberly J
Vice President – Charles River Associates kschenk@crai.com | www.crai.com
Kimberly J Schenk is a vice president in the IP practice at Charles River Associates. She has nearly 20 years’ experience evaluating damages in IP matters. She has provided expert witness testimony in patent, trade secret, trademark and copyright litigation engagements across a variety of industries, including software, medical devices, telecommunications, pharmaceuticals and consumer products. Her experience includes quantifying damages in the form of lost profits, reasonable royalties, price erosion and unjust enrichment. She has also evaluated commercial success as a secondary consideration of non-obviousness and irreparable harm in the context of preliminary injunctions. Ms Schenk has testified as an expert witness in deposition and at trial in cases pending in Federal and State Court. In addition to her experience in IP matters, Ms Schenk has performed damages assessments for a variety of other types of business disputes, including breach of contract litigation and general commercial disputes. She has been involved in valuations of patents and patent portfolios, trademarks, non-competition agreements and other intangible assets. She has also managed several large business valuation projects in the context of estate tax and transfer pricing disputes. Ms Schenk earned two BSc’s in finance and economics from the Smeal College of Business Administration at Pennsylvania State University, with honours in economics, and holds an MA in forensic accounting from Florida Atlantic University. She is a certified public accountant and is certified in financial forensics.
1292 IAM Patent 1000
Charles River Associates One South Wacker Drive 34th Floor Suite 3400 Chicago IL 60606 United States T +1 312 377 2249 F +1 312 357 1001 See firm profile p1666 Professional associations • ABA • AICPA • AIPLA
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Schoettelkotte, Todd President – IPFC Corp wts@ipfccorp.com | www.ipfccorp.com
Todd Schoettelkotte is president and a managing director of IPFC Corp, a professional services firm that provides litigation consulting, financial analysis and valuation assessments in matters involving intellectual property. Mr Schoettelkotte has more than 20 years of experience in the evaluation and quantification of economic damages arising from IP and other disputes. His extensive background includes the determination of royalty rates, the valuation of licence agreement terms and the performance of studies involving lost profits, unjust enrichment and market analyses. Mr Schoettelkotte has testified as an expert witness in federal and state courts, arbitrations and before the International Trade Commission (ITC). In connection with Section 337 matters before the ITC, Mr Schoettelkotte has provided analysis and testimony relating to the economic prong of the domestic industry requirement, remedy (cease and desist and exclusion orders), bonding and public interest, as well as other economic issues. He has also presented on topics relating to litigation strategies, admissibility of certain evidence for damages, economic damages, valuations, trademarks and litigation risk. Mr Schoettelkotte has been recognised by IAM as one of the leading patent damages experts in the United States. Additionally, he has served as a guest lecturer at the Chicago-Kent College of Law, the Georgetown University Law Center, the John Marshall Law School and the University of Oregon School of Law on topics including accounting, IP valuation and IP management. Mr Schoettelkotte is also a past member of the State Bar of Texas Grievance Committee (2004-2009) and past treasurer of the Federal Bar Association (2007-2015). Additionally, he has served as an advisory board member for the Institution for Law and Technology. Mr Schoettelkotte is a certified public accountant and a certified valuation analyst. He has a bachelor’s in business management and a master’s in accounting from Rice University in Houston.
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IPFC Corp 333 Clay Street Suite 3960 Houston TX 77002 United States T +713 335 5455 Professional associations • AICPA • LES • NACVA
IAM Patent 1000 1293
Sheridan, Sean
Principal – Charles River Associates ssheridan@crai.com | www.crai.com
Sean Sheridan is a principal in the life sciences practice at Charles River Associates. He has developed numerous damages analyses related to patent infringement, breach of contract and trade secret misappropriation, including analyses quantifying lost profits, reasonable royalties and unjust enrichment. He has served as an expert witness in cases brought before federal and state courts, the Patent Trial and Appeal Board, the International Trade Commission and arbitration tribunals. Dr Sheridan has also provided financial consulting services for non-litigation purposes such as transaction due diligence, licence negotiations and strategic decision‐making. The engagements he has worked on span a wide range of industries and products, including pharmaceuticals, recombinant therapeutic proteins, vaccines, gene editing, medical devices, diagnostics, research tools, electronic health records and a variety of technologies outside of the life sciences. Previously, Dr Sheridan was as an assistant director at the technology transfer office at the University of Chicago where he was responsible for managing the IP strategy for a broad range of technologies and was frequently required to assess the value of technologies and potential products. In that role he personally negotiated numerous contracts, including licences, option agreements and collaboration agreements with companies ranging from Fortune 500 firms to small start-ups. Dr Sheridan is a frequent speaker and instructor on IP valuation, and also publishes on related topics.
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Charles River Associates One South Wacker Drive 34th Floor Chicago IL 60606 United States
T +1 312 377 9237 See firm profile p1666 Professional associations • AIPLA • IPO • LES
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Sims, Raymond
Vice President – Charles River Associates rsims@crai.com | www.crai.com
Raymond Sims is a vice president in the IP practice at Charles River Associates. He has more than 35 years’ experience consulting for a wide variety of clients on issues relating to valuation, strategic management and negotiating strategy involving IP assets. He frequently advises companies and their counsel on economic issues in commercial litigation and has served as an expert witness in more than 200 patent litigation matters. Mr Sims has been retained on behalf of both plaintiffs and defendants in high-stakes litigation matters involving patents in a variety of industries, including pharmaceuticals, biotechnology, consumer electronics, medical products, chemicals, automotive, computers and software, telecommunications, aerospace and consumer products. In each of these cases, Mr Sims has used his experience and expertise in patent valuation and economic analysis to determine damages suffered by patent owners resulting from infringement of their proprietary technologies. These damages have included lost profits from lost sales and price erosion, as well as reasonable royalties for use of the asserted patents. Mr Sims’ testimony has been accepted in courtrooms throughout the United States and Canada in more than 70 trials and he has offered opinions in seminal cases involving patent damages, including Grain Processing Corporation v American-Maize Products Company. Mr Sims has also used his expertise to address the issue of commercial success as a secondary consideration of non-obviousness in cases where accused infringers have challenged the validity of patents. In these cases, he has performed analyses of economic factors critical to assessing the level of, and reasons for, a product’s success in the market. Before Charles River Associates, Mr Sims headed the IP practice at AT Kearney, Inc, where he was a vice president in the firm’s economic consulting group. Prior to that, he was a partner in Price Waterhouse’s dispute analysis and corporate recovery practice and was co-leader of the firm’s IP practice. In both positions, Mr Sims focused his efforts on consulting on issues relating to intellectual property, especially in litigation matters.
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Charles River Associates One South Wacker Drive 34th Floor Chicago IL 60606 United States T +1 312 377 2345 F +1 312 577 5089 See firm profile p1666 Professional associations • LES
IAM Patent 1000 1295
Slottje, Daniel J
Senior Managing Director – FTI Consulting Inc dan.slottje@fticonsulting.com | www.fticonsulting.com
Daniel J Slottje is an emeritus professor of economics at Southern Methodist University in Dallas, Texas. Concurrent with his academic career, Professor Slottje has been working on high-profile IP litigation for over 30 years – first as a partner at KPMG and then as a senior managing director with FTI Consulting. He has been involved in some of the highest-stakes IP matters ever litigated. As an economist and a statistician, Professor Slottje brings a unique perspective and skill set to IP litigation relative to many of his peers. Professor Slottje’s expertise in the fields of consumer demand and industrial organisation, as well as econometrics, forms a strong synergistic core to enable him to rigorously analyse IP litigation matters. Professor Slottje has given over 200 depositions and testified at trial almost 100 times. In 1999 Professor Slottje was ranked in the world’s top three in applied econometrics based on his publishing record in the field. He has published over 150 journal articles and books, including as the editor on a John Wiley-published book on IP damages. He has been privileged to work with, and to continue to work with, many of the nation’s leading law firms.
FTI Consulting Inc 2001 Ross Avenue Suite 300 Dallas TX 75201 United States T +1 214 397 1703 See firm profile p1682 Professional associations • AEA • ASA • Econometric Society Sample client list • Allstate • Baltimore Ravens • Dallas Cowboys • Ent Arts • Ericsson • Ford Motor • General Motors • Hyundai • Intel • Oprah Winfrey • Procter & Gamble
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Stamm, Laura B
Affiliate – Analysis Group laura.stamm@analysisgroup.com | www.analysisgroup.com
Laura B Stamm specialises in financial and economic analysis, with particular expertise in lost profits analyses. She has served as a damages expert in IP cases involving patent infringement, copyright, trade secrets and trade dress in such diverse industries as financial services, telecommunications, software, medical devices, retail, manufacturing and consumer products. In these matters, she has provided lost profits analyses, reasonable royalty opinions and unjust enrichment assessments. Ms Stamm also provides damages analyses in other types of complex business litigation, including breach of contract disputes and false advertising and unfair competition matters. She has provided expert testimony at more than 100 depositions and trials in state and federal courts, in both bench trials and jury proceedings, as well as before various arbitration panels, including several international arbitrations. She also provides consulting assistance to industry clients in the valuation of patent portfolios in the context of licensing negotiations or other prospective transactions. Ms Stamm has been an invited speaker at legal and industry conferences and seminars on topics relating to IP valuation and damages. She is a certified public accountant and accredited in business valuation by the American Institute of Certified Public Accountants. Ms Stamm holds an SM in management with a concentration in finance (MIT Sloan School of Management) and an AB in mathematics (Williams College).
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Analysis Group 111 Huntington Avenue 14th Floor Boston MA 02199 United States T +1 617 425 8000 F +1 617 425 8001 See firm profile p1648 Professional associations • AICPA
IAM Patent 1000 1297
Stec, Jeffery
Co-chair and Managing Director, Economics & Damages – Berkeley Research Group, LLC jstec@thinkbrg.com | www.thinkbrg.com
Jeffery Stec is a managing director, leader of Berkeley Research Group’s IP practice, and co-leader of its economics and damages community. He has worked extensively over the past 20 years in the areas of antitrust, finance, intellectual property and survey research, as both a consulting expert and an expert witness. In the area of intellectual property, Dr Stec has conducted economic and econometric analyses to determine the value of intellectual property and the amount of economic damages resulting from patent, trademark, trade secret or copyright infringement. He has addressed economic issues such as the appropriate measurement of revenues associated with the use of the infringing intellectual property, the portion of those revenues that can be attributed to the intellectual property, and whether the apportionment can be regarded as reasonable. He has evaluated economic and survey research issues in the context of Section 337 investigations conducted by the US International Trade Commission (ITC). He has evaluated the effects of anticompetitive conduct as it relates to the use of intellectual property. In the area of survey research, Dr Stec has both created and critically evaluated surveys in the context of antitrust and IP engagements. He has developed complex sample designs, designed survey questionnaires, and collected and analysed survey data, including the derivation of complex variance estimates using simulation methods. He has conducted surveys that have been used to determine consumers’ perceptions and actions in the marketplace. He has also examined how products are used in the marketplace and how consumers value product features. Dr Stec has presented his research at the annual meetings of the American Statistical Association, American Association of Public Opinion Research, Midwest Association of Public Opinion Research, as well as other academic and trade association conferences. He has also published articles and book chapters on IP-related topics, including topics dealing with patents. Dr Stec has testified in district courts, state courts, arbitration forums and at the Copyright Royalty Board, PTAB, TTAB and the ITC.
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Berkeley Research Group, LLC 70 W Madison Suite 5000 Chicago IL 60602 United States T +1 312 429 7970 See firm profile p1656
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Tate, Michael
Vice President – Charles River Associates mtate@crai.com | www.crai.com
Michael Tate is a vice president of Charles River Associates (CRA) in its Chicago office. CRA is an international business consulting firm focusing on IP matters in the context of strategy, licensing, valuation and litigation consulting, among other things. CRA is a leading provider of expert damage analysis and testimony for complex IP litigation matters. Before joining CRA, Mr Tate was a principal in the IP practice at AT Kearney, Inc, an international management consulting firm, and a consultant in the dispute analysis and corporate recovery practice at Price Waterhouse. Mr Tate has served as a consultant and expert on IP matters for more than 30 years. He has served as a consultant and expert to a wide variety of business and industrial clients on matters involving financial analyses and modelling for the purpose of interpreting and projecting data and evaluating the economic impact of business decisions, transactions and economic events. Mr Tate has served as an expert witness or consultant in a wide range of litigation matters, including patent, trademark, copyright and trade secret infringement litigation. Although the issues have varied from case to case, most of the projects on which Mr Tate has worked have involved an analysis and evaluation of financial data for the purpose of determining the extent of financial damages, including the determination of lost profits and reasonable royalty damages. In addition, Mr Tate has testified on the issue of commercial success as a secondary indicia of non-obviousness in cases where the validity of a patent is being challenged. Mr Tate has also advised clients on strategic and valuation issues relating to IP and licence negotiations. Mr Tate has served as an expert and provided expert testimony on cases pending in federal and state courts, as well as in arbitration proceedings.
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Charles River Associates One South Wacker Drive 34th Floor Chicago IL 60606 United States T +1 312 377 2360 F +1 312 357 1001 See firm profile p1666 Professional associations • LES
IAM Patent 1000 1299
Teece, David J
Executive Chairman – Berkeley Research Group, LLC dteece@thinkbrg.com | www.thinkbrg.com
David J Teece is a renowned economist and an authority on matters of industrial organisation, technological change and innovation, particularly as it relates to antitrust and competition policy and intellectual property. He is the professor in global business and director of the Tusher Initiative for the Management of Intellectual Capital at the Haas School of Business at the University of California, Berkeley, and a former member of the board of overseers for the School of Arts and Sciences at the University of Pennsylvania. Dr Teece has a PhD in economics from the University of Pennsylvania and has held teaching and research positions at Stanford University and Oxford University. He has received nine honorary doctorates. Dr Teece has over 30 years of experience as an active consultant performing economic, business and financial consulting services to businesses and governments around the world. He has worked on matters in industries ranging from music recording to DRAMS, software, lumber and petroleum, and has testified in both federal and state court, before Congress and the Federal Trade Commission, as well as in several international jurisdictions. He is the author of more than two hundred books and articles, and is the co-editor of Industrial & Corporate Change (Oxford University Press). According to Science Watch (November/December 2005), he is the lead author on the most-cited article in economics and business worldwide from 1995 to 2005. In 2020 he was ranked as the world’s most-cited scholar in the combined field of business and management in an analysis of science-wide author citations published in PLOS Biology, a peer-reviewed journal. He has been recognised by Accenture as one of the world’s top 50 business intellectuals and was named to the 2020 Thinkers50 Hall of Fame. In addition, he is among the “A-List of Management Academics 2011”, an honorary group of 30 accomplished and distinguished US business professors. Visit Dr Teece’s website at davidjteece.com.
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Berkeley Research Group, LLC 2200 Powell Street Suite 1200 Emeryville CA 94608 United States T +1 510 285 3221 F +1 510 654 7857 See firm profile p1656 Professional associations • Council on Foreign Relations • International Academy of Management • LES
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Thomas, Vincent
Senior Managing Director – FTI Consulting Inc vince.thomas@fticonsulting.com | www.fticonsulting.com
Vincent Thomas is a senior managing director for FTI Consulting Inc and leads its IP practice. He is a nationally recognised consultant and expert with more than 30 years’ experience assisting companies and clients with complex accounting, corporate finance and litigation issues. He specialises in sophisticated economic analysis and the assessment of damages in matters involving various types of intellectual property, including patents, trade secrets, trademarks and copyright. Mr Thomas has provided expert testimony in hundreds of disputes, having testified in state and federal courts across the country. Such testimony has focused on valuation and damages issues in several industries, including computer technology, electronics, telecommunications, retail, manufacturing and life sciences. He has also provided expert testimony for various International Trade Commission Section 337 investigations on issues relating to domestic industry, remedy and bonding. In addition to serving as a consultant and testifying expert, Mr Thomas has significant experience in corporate, financial and accounting management positions, including as an analyst, controller and chief financial officer. In those roles, Mr Thomas has managed an IP portfolio and developed the strategic focus and direction for the financial, legal and marketing areas of a technology developer and a large distributor of consumer products. Mr Thomas has conducted seminars for various groups across the country and has participated in various panel discussions on topics involving economic damages, valuation methods and techniques for increasing shareholder value. He has also published articles on valuation and damage issues and co-authored a book on economic damages in patent infringement matters. Mr Thomas holds a bachelor’s in economics from DePauw University and an MBA from Indiana University. He is a certified public accountant, a certified valuation analyst, and is certified in financial forensics. He is also a certified licensing professional, certified patent valuation analyst and is accredited in business valuation.
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FTI Consulting Inc 227 West Monroe Street Suite 900 Chicago IL 60606 United States T +1 312 252 9329 F +1 312 630 3176 See firm profile p1682 Professional associations • AICPA • LES • NACVA
IAM Patent 1000 1301
Ugone, Keith R
Senior Adviser – Analysis Group keith.ugone@analysisgroup.com | www.analysisgroup.com
Keith R Ugone is an economist who specialises in the application of economic principles to complex business disputes, including IP, antitrust, false advertising, class certification-related, breach of contract and securities-related cases. Dr Ugone has testified at trial and in deposition more than 500 times. With respect to IP disputes, Dr Ugone has significant experience serving both as an expert and as a consultant in matters involving allegations of patent infringement, trademark infringement and misappropriation of trade secrets. In these and other cases, he has frequently evaluated lost profits, reasonable royalties, disgorgement and valuation-related issues. Dr Ugone has testified in IP disputes involving numerous publicly traded and privately held companies across a variety of industries, including software, medical devices, consumer products, electronics, biotechnology, and oil and gas. He has also testified on FRAND issues in disputes involving standard-essential technologies such as those used in wireless communication standards. He has significant experience constructing and analysing damages models that have included components such as lost sales analyses; incremental cost analyses; assessments of profitability; assessments of the capacity to produce additional units; the competitive business environment in which a damages claim is made; claimed lost business value; and claimed reasonable royalties. Dr Ugone holds a PhD in economics (Arizona State University), an MA in economics (University of Southern California) and a BA in economics (University of Notre Dame).
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Analysis Group Park Place Center 2911 Turtle Creek Boulevard Suite 600 Dallas TX 75219 United States T +1 214 523 1405 F +1 214 523 1401 See firm profile p1648 Professional associations • AEA • ASA • NAFE
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Van Uden, Bryan
Managing Director – IPFC Corp bvanuden@ipfccorp.com | www.ipfccorp.com
Bryan Van Uden is a managing director of IPFC Corp, a professional services firm that provides licensing, valuation and litigation consulting assessments in matters involving intellectual property. Mr Van Uden has more than 20 years of experience in evaluating and quantifying economic damages pertaining to IP disputes in matters across numerous industries, including consumer electronics, telecom, oil and gas, medical devices, and computer hardware and software. Mr Van Uden’s consulting experience in intellectual property has involved work in patent, trade secret, copyright, trademark and unfair competition matters. He has also consulted on licensing strategy both inside and outside of litigation, including significant experience in FRAND licensing matters. Mr Van Uden has testified as an expert witness in courts and arbitrations in the United States, as well as internationally. As part of his expert consulting work, Mr Van Uden has assisted clients in all aspects of litigation, including pre-case assessments, development of models to analyse damages, as well as analysis of opposing expert’s damages opinions. He has also presented on IP-related topics, including patent damages, trade secret damages and IP licensing issues. Mr Van Uden is a certified licensing professional, as well as master analyst in financial forensics. He has a bachelor’s in strategic management from Louisiana State University and a master’s in business administration from the University of Mississippi.
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IPFC Corp 333 Clay Street Suite 3960 Houston TX 77002 United States T +1 713 335 5453 Professional associations • ABA • LES • NACVA
IAM Patent 1000 1303
Vigil, Robert
Principal – Analysis Group robert.vigil@analysisgroup.com | www.analysisgroup.com
Robert Vigil specialises in the application of economics and finance to complex commercial litigation matters. His work includes assessments of lost profits, reasonable royalties, price erosion and unjust enrichment in IP and breach of contract cases; evaluations of patented drug products’ commercial success in connection with generic manufacturers’ abbreviated new drug application submissions to obtain early market entry; and analyses of issues related to the granting of permanent injunctions, such as irreparable harm and causal nexus. Dr Vigil has served as an expert witness on litigation matters in a variety of industries, including pharmaceuticals, medical devices, consumer products, telecommunications, computer hardware and software, and electronics. In non-litigation matters, he has assisted clients in valuing intellectual property for sale or licence; identifying and evaluating potential partners for licensing, acquisition or divestiture of assets; and analysing the impact of generic entry on prices and market shares of brand-name pharmaceutical products. Dr Vigil is a frequent speaker on issues related to IP valuation and damages assessment, and has taught courses in microeconomics and econometrics at the University of Maryland. He holds a PhD in economics (University of Maryland) and a BA in economics (Pepperdine University). He was granted the Certified Licensing Professional designation by the Licensing Executives Society.
Analysis Group 800 17th Street NW Suite 400 Washington DC 20006 United States T +1 202 530 3996 F +1 202 530 0436 See firm profile p1648 Professional associations • LES
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Yurkerwich, David
Senior Managing Director – Ankura Consulting Group, LLC david.yurkerwich@ankura.com | www.ankura.com
David Yurkerwich is a senior managing director and a leader of Ankura’s IP team. He is based in New York and works closely with companies and law firms throughout the United States, the United Kingdom, Germany and Asia. Mr Yurkerwich is a seasoned valuation and damages expert with over 35 years of experience. He has provided evidence in over 100 disputes and has facilitated global IP transactions. Mr Yurkerwich and his team continuously enhance their valuation models by combining timely competitive information with advanced analytical tools to consider the technical, legal and market risks in IP negotiations and litigation. Mr Yurkerwich works closely with inventors, owners and attorneys to assess patentability and markets for technologies to build and maintain competitive IP portfolios. He negotiates IP-based transactions and manages joint development, licensing and enforcement activities. Mr Yurkerwich’s expertise includes competitive benchmarking for portfolio development; identification and valuation of tangible and intangible assets; and portfolio analysis for evidence of market use and potential value. Mr Yurkerwich has provided expert valuation analysis and testimony in patent infringement cases, standard-essential patent FRAND disputes, international arbitrations and other business disputes involving companies throughout the world. This has included providing evidence in matters involving a broad range of technologies and markets. His work often includes the analysis of invention scope, markets and alternatives; the design of apportionment models; the preparation of expert reports; and the delivery of expert testimony. Mr Yurkerwich received a BS in business administration from the Villanova School of Business and became a certified public accountant at Arthur Andersen & Co. He was a founder of IP-focused consultancy teams at Peterson Worldwide, InteCap, Charles River Associates and Navigant Consulting (which became part of Ankura in 2018). Ankura is a global consultancy with professional teams in Asia, Australia, Europe, India, the Middle East and the United States that collaborate to create innovative customised solutions for clients facing a wide range of economic, governance and regulatory challenges and opportunities.
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Ankura Consulting Group, LLC 485 Lexington Avenue 10th Floor New York NY 10017 United States T +1 917 860 5151 See firm profile p1650 Professional associations • AICPA • IPO • LES
IAM Patent 1000 1305
United States: Arizona
Ballard Spahr LLP
Ballard Spahr has trademarked the term PATENTSCAPE, the brand under which it provides its patent services, signalling its enduring commitment to assisting clients through all phases of the innovative product lifecycle. The Philadelphia-based AmLaw 100 firm boasts technical expertise in abundance, with many of its 23 patent attorneys holding doctoral and other advanced degrees; but it is a laser focus on the business of intellectual property that really gives it an edge. Commercial considerations are likewise the guiding light for the firm’s litigators, such as Brian LaCorte, who keeps the big picture front and centre when it comes to setting case strategy. A seasoned patent and trademark litigator who has scored wins in forums throughout the country, La Corte flies Ballard Spahr’s flag high in Phoenix, while also helping to bolster its sterling national reputation.
Bryan Cave Leighton Paisner (BLP)
Bryan Cave Leighton Paisner delivers resoundingly on its promise of total patent support: it understands the importance of finely honed rights procurement, monetisation and enforcement skills in helping companies to put their intellectual property to optimum use. As a member of the firm’s international board and leader of its local IP group in Phoenix, George Chen is a lynchpin of the practice. His versatility as an IP lawyer – he is at ease on all manner of contentious and non-contentious tasks – chimes with clients from sectors as diverse as e-commerce, financial services, sporting equipment and consumer electronics.
Kercsmar & Feltus PLLC
Arizonan litigation boutique Kercsmar & Feltus tackles must-win patent and other IP conflicts swiftly and decisively. Its extensive contentious experience ensures it can quickly size up a case and plan accordingly; and its astute trial mindset helps it to create a threat value that often leads to settlement, while also standing it in good stead when matters escalate to the courtroom. Founding partner Geoffrey Kercsmar deftly handles patent cases within his broader litigation practice.
Perkins Coie LLP
An elite national and international outfit that takes on 100-plus patent cases a year, Perkins Coie can be found advocating for prestigious technology and life sciences companies in all major US patent litigation forums. Backing up its trial wins at the Federal Circuit
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Firms Ballard Spahr LLP Bryan Cave Leighton Paisner (BLP) Kercsmar & Feltus PLLC Perkins Coie LLP Snell & Wilmer LLP
Individuals Tyler R Bowen Perkins Coie LLP Chad S Campbell Perkins Coie LLP George C Chen Bryan Cave Leighton Paisner (BLP) Lee Fraley Snell & Wilmer LLP Charles Hauff Snell & Wilmer LLP Brian W LaCorte Ballard Spahr LLP Daniel J Noblitt The Noblitt Group PLLC
and pursuing the best strategies when lawsuits are diverted by way of the PTAB, the firm inspires confidence when the stakes are high. The people to call in Phoenix are Chad Campbell and Tyler Bowen. Campbell has the backing of an excellent team with great writers and skilled technologists, enabling him to fulfil his duties as a lead trial lawyer to superb effect – although he also loves to delve into the nittygritty of his cases. Bowen is hailed as an “extremely creative lawyer who can pick up a troubled matter on short notice and fix it efficiently and successfully”.
Snell & Wilmer LLP
A “rock-solid choice for patent services in Arizona”, Snell & Wilmer has a talented contingent of IP
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United States: Arizona lawyers which supports its regional clients in many meaningful ways. One of the best among them is Lee Fraley, whose guidance on portfolio, litigation and transactional questions is always spot-on. Throughout his career, he has honed his negotiation skills to a sharp point. The market also recommends Charles Hauff, who has similarly broad horizons. Adept in many technological theatres, he has a special affinity for chemistry matters.
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Other recommended experts
Daniel Noblitt takes centre stage at The Noblitt Group, a “compact but mighty” line-up of lawyers with a well-established practice in the mechanical and electrical engineering space. He is highly sought after as an opinion giver.
IAM Patent 1000 1307
United States: California
Arnold & Porter Kaye Scholer LLP
Arnold & Porter’s patent litigation team has been on a superb run of form in recent years, which speaks to the talent of its trial lawyers and the quality of the support and resources they have to draw on. It is entrusted with significant cases of critical importance to the parties involved – and with good reason, as it has individuals such as Deborah Fishman and Michael Berta on deck. Silicon Valley-based Fishman is in her element in complex life sciences suits and has lately been serving as lead counsel defending two of Regeneron’s patents protecting blockbuster drug Eylea against an ex parte re-examination challenge. In this, she is acting alongside brilliant prosecutor, counsellor and post-grant lawyer David Marsh from the DC office in a great example of the solid teamwork in which the firm’s practitioners constantly engage. Berta has continued to perform flawlessly for Google and recently scored a comprehensive victory for the internet giant in a case implicating Google Maps and Waze-related technologies. Arnold & Porter also excels on commercial IP briefs, many of which land on Thomas Magnani’s desk in San Francisco. “Tom’s skills as a technology transactions lawyer are virtually unparalleled – he is practical, innovative and business minded.” His trailblazing clients include Fullpower Technologies, which is at the forefront of AI biosensing; Magnani has supported the company in connection with numerous strategic partnerships, including with NIKE.
Baker Botts LLP
Courtesy of its first-time inclusion on the prosecution table, Baker Botts earns expanded coverage in the California rankings of the IAM Patent 1000 for 2021; once again featured on the litigation list, it presents a well-rounded patent practice on the West Coast, just as it does nationally. Focusing on the prosecution and counselling side reveals a dynamic practice that is relied on by numerous well-known technology names from areas such as social media and ride sharing. Palo Alto attorneys Hogene Choi and Travis Thomas are essential partners to Lyft, whose Level 5 Engineering Centre they assist with the development of the company’s autonomous driving systems and networks patent portfolio. Choi co-chairs the firmwide prosecution group and debuts in the rankings this year; also a gifted team and project manager, Thomas makes his return. They have a new colleague down the hall in ace counsellor Christopher Palermo, who joined from Hickman Palermo Becker Bingham in 2020 in a move that will considerably enhance the firm’s
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profile in Silicon Valley – Palermo’s stomping ground for nearly three decades. High-profile assignments are the order of the day for the local litigators, including eminent trial lawyer Hopkins Guy and Palo Alto IP chair Eliot Williams. Together, they secured a great result for DISH Network at the Federal Circuit, which ruled that configuring a computer to implement an improvement to an abstract concept is not patent eligible.
Bozicevic Field & Francis LLP
Bozicevic Field & Francis has “an unrivalled reputation for expertise in biotechnology patent prosecution”. Keeping pace with – indeed, often setting the pace for – innovators at the cutting edge of the life sciences, start-up guru Karl Bozicevic and strategic patent counsellor par excellence Carol Francis burn brightly.
Cooley LLP
Adept in all areas of patent practice – from prosecution and counselling to litigation and transactions – and active globally from bases in the United States and Europe, Cooley sees the whole playing field for clients and can offer incredibly valuable strategic and commercial guidance as a result. This is warmly appreciated by tech juggernauts such as Facebook, which consistently engages “top patent trial lawyer” Heidi Keefe for its most significant court cases and PTAB proceedings; and by marquee pharmaceutical and biotechnology entities, which call upon seasoned litigator and biochemistry and biophysics PhD Michelle Rhyu. The life sciences is another bastion of strength for Cooley’s elite transactional lawyers, such as Marya Postner, who captains the industryfocused partnering practice. Postner’s recent highlights include advising clinical-stage biotechnology company Sangamo Therapeutics on its global collaboration with Novartis to develop and commercialise gene regulation therapies. Mika Reiner Mayer is one of the firm’s best-rounded operatives: she’s an ace on patent and IP due diligence – she recently supported Vaxcyte in connection with its June 2020 flotation – and on prosecution and counselling.
Davis Polk & Wardwell LLP
Forming a dynamic strike force for prestigious clients, the trial lawyers at Davis Polk & Wardwell are a discerning choice of patent litigation counsel in commercially consequential cases when only a win will do. The practice is headed up by Ashok Ramani, an American College of Trial Lawyers fellow who has gone the distance for a litany of household-name
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United States: California technology companies and met with striking success on both sides of the ‘v’. His fellow partners in Northern California are David Lisson and Micah Block, each of whom – like Ramani – is superb on the strategic planning and oral presentation aspects of his craft. According to peers, they make for an “exceptional team that never goes through the motions, but is trial ready from day one”. They are the go-tos for Comcast, which they are currently representing in numerous patent cases initiated by Rovi Corporation (now part of Xperi); and recently acted for Cisco Systems against Centripetal Networks in the first federal bench trial conducted entirely by video.
Dentons
In California, Dentons has assembled quite the line-up of all-star patent prosecutors – and one which has helped to considerably elevate what was already an outstanding national patent team comprised of more than 100 lawyers and advisers in 19 offices. Zooming out, Dentons has over 600 IP and technology lawyers worldwide, giving clients easy access to a cavernous chest of resources. The leading lights on the West Coast include Peter Yim, who provides staunch leadership to a team of 20-plus practitioners spanning multiple bureaux both within and outside California. Yim is a repository of trust for some of the biggest and most exciting emerging names in technology, which seek to capitalise on his blend of prosecution, patent strategy, post-grant proceedings and litigation expertise, along with his international view and experience. Brian Ho – the co-head of the US IP and technology group – is similarly versatile and also someone who inspires and motivates as a leader. Yim and Ho link up with savvy global patent portfolio builder Randy Omid and Christopher Eide, whose bailiwick encompasses just about all areas of innovation in Silicon Valley, to form a uniquely strong core of patent protectors. Head to Southern California and the firm’s San Diego office brings Stephanie Seidman into view: she is enlisted by life sciences entities seeking the best in the drafting, filing and registration of patents that are sufficiently robust to form the foundation of business-critical licensing and partnering deals. Special mention should also be made of Dentons’ post-grant practice, which is supervised by Kevin Greenleaf, a Silicon Valley-based technically trained computer engineer who has made a major contribution to the firm’s astonishing track record of success for petitioners and patent owners.
Desmarais LLP
When it comes to high-stakes patent litigation, New York outfit Desmarais is hard to beat. Capable of taking on the toughest suits involving the widest
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range of subject matter, its trial lawyers make all the right plays while offering flexible and innovative fee arrangements specced to fit the needs of those they represent. The ensemble’s stature in California has increased considerably thanks to the efforts of San Francisco lawyers Peter Magic and Ameet Modi. Alongside national superstar John Desmarais, they have recently been defending Verizon against patent infringement claims made by Huawei relating to network infrastructure and internet and wireless communication technology; and defending Apple in a suit filed by nCap Licensing. Both Magic and Modi can be counted on for smart strategic calls in the preparation phase of litigation, as well as for resonant performances at trial. They were recently joined by former Ropes & Gray partner Gabrielle Higgins, a career patent litigator and trial lawyer with vast PTAB experience. See p1672 for firm profile
DLA Piper
Nothing is off limits in patent practice for DLA Piper, which has highly trained and experienced patent prosecutors, litigators and transactional lawyers on deck. For the 2021 edition of the IAM Patent 1000, the global outfit has a new face in the rankings in Erin Gibson, a “thorough, collaborative litigator with great ideas” and a veteran of many ITC investigations and district court trials. She is based in San Diego; as is Sean Cunningham, also a dyed-in-the-wool advocate with plenty of jury trial and ITC wins under his belt. Mark Fowler is another name for the address book for those in need of a seasoned litigator; as global IP and technology group co-leader, he is well placed to tap into DLA’s deep resources for the benefit of his clients. While these practitioners keep the focus on high technology, alongside Silicon Valley corporate securities and IP licensing specialist Mark Radcliffe, life sciences entities aren’t left out in the cold: they have Lisa Haile to call on as one of DLA Piper’s most technically adept and well-rounded patent counsellors.
Durie Tangri LLP
There’s no question about Durie Tangri’s consummate ability to strategise, fight and win bet-the-farm patent litigations: constantly in the thick of the action for Silicon Valley’s high-technology and pharmaceutical players, its lawyers have honed their trial skills to the sharpest point – and none more so than leader Daralyn Durie. “As good as it gets”, she is an “evenkeeled, well-organised lawyer who can roll with the changes while remaining focused and on top of everything”. In a patent infringement suit that will
IAM Patent 1000 1309
United States: California Firms: litigation
Weil Gotshal & Manges LLP
Fish & Richardson
Wilmer Cutler Pickering Hale and Dorr LLP
Gibson Dunn & Crutcher LLP
Winston & Strawn LLP
See p1744
Irell & Manella LLP
Desmarais LLP
See p1672
Latham & Watkins LLP
DLA Piper
Quinn Emanuel Urquhart & Sullivan LLP
Greenberg Traurig LLP
Arnold & Porter Kaye Scholer LLP
Jones Day
Baker Botts LLP
Kilpatrick Townsend & Stockton LLP
Cooley LLP
King & Spalding LLP
Davis Polk & Wardwell LLP
Kobre & Kim
Durie Tangri LLP
Mayer Brown
Fenwick & West LLP
McDermott Will & Emery
Goodwin Procter LLP
Morgan Lewis & Bockius LLP
Kasowitz Benson Torres LLP
Orrick Herrington & Sutcliffe LLP
Keker, Van Nest & Peters LLP
Perkins Coie LLP
Kirkland & Ellis LLP
Ropes & Gray LLP
Knobbe Martens
Sheppard Mullin Richter & Hampton LLP
Milbank LLP
Sidley Austin LLP
Morrison & Foerster LLP
Susman Godfrey LLP
O’Melveny & Myers LLP
White & Case LLP
Paul Hastings LLP
Wilson Sonsini Goodrich & Rosati
shape the market for targeted therapies to treat metastatic melanoma, she is currently representing Berkeley-based Plexxikon against Novartis – a good example of the industry-impactful matters that she routinely takes on. She has also represented Genentech and City of Hope in disputes with various companies seeking to market biosimilar versions of Avastin and Herceptin, Genentech’s blockbuster oncology drugs. At the forefront of the practice – and the market – alongside Durie is Mark Lemley, whose appellate expertise cannot be bested. He recently
1310 IAM Patent 1000
See p1740
represented the plaintiffs in Staley v Gilead Sciences, Inc, a dispute which has raised uniquely complex issues at the intersection of antitrust and patent law whose resolution will potentially change the law regarding generic suppression in the pharmaceutical industry. Durie and Lemley couldn’t take such mandates on without great support, and they have it in spades from a cadre of up-and-coming stars including Adam Brausa, Kira Davis (a new addition from Paul Weiss), Tim Saulsbury and Eugene Novikov.
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United States: California Fenwick & West LLP
Cutting-edge high-technology and life sciences innovation is the lifeblood of Fenwick & West, a Silicon Valley outfit that has played a key role in the ascent of many companies to market dominance. Strength in depth across the contentious/non-contentious divide distinguishes it as one of the nation’s premier one-stop shops for patent services – as reflected in the inclusion of multiple individuals on each of the prosecution, litigation and transactions tables. In terms of recent developments, the set has doubled down on its longstanding efforts to enhance efficiencies and reduce costs; the deployment of online filing technologies and proprietary databases that, for example, enable painless competitive intelligence gathering has been especially impactful for precision prosecutors such as Rajiv Patel, who continue to work miracles. IP chair Patel is peerless when it comes to advising early-stage companies on patent portfolio development and setting them on the optimal path for business success; he has concentrations of clients in areas such as cybersecurity, artificial intelligence (AI), big data and bitcoin mining. Also in a position of leadership, patent chair Michael Farn helps set the pace for this high-flying group and instils it with the commercial mindset that he has wholeheartedly adopted throughout his career. Farn likes to get hands on, making him well suited to particularly complex and mission-critical patent assignments. Undertaking matters of a similar nature for Facebook, meanwhile, are Robert Hulse and Antonia Sequeira, who continue to file and manage a substantial portion of its patents, including those protecting some of its most important product areas; both attorneys excel at building portfolios from the ground up. They are also adept at handling utility and design patents, which is also true of several others in this galaxy of stars, including John McNelis, Jae Won Song, Brian Hoffman and David Ahn. A former patent group chair and managing partner who has cultivated a high-level strategic view of intellectual property and its role in commercial life, McNelis has distinguished himself as a leader in the area of autonomous transportation. Song’s USP is his ambidexterity as a patent counsellor and litigator; while Hoffman brings sophisticated data privacy expertise to the mix. Ahn – who also supports the Facebook relationship – is a “consistently thoughtful strategist with a unique ability to place himself in the position of his clients and grasp their key priorities so as to enable ideal business decision making”. Doctor of medicine Daniel Becker is a go-to for cutting-edge biotechnology innovators such as Corvidia Therapeutics, for which he has drafted and prosecuted next-generation patent
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families and supported it through its 2020 acquisition by Novo Nordisk. Speaking of deal work in the life sciences brings Jake Handy, a favourite of early-stage biotechnology companies, into the discussion; he chairs the technology transactions group –an essential component of the wider IP practice – and has an affinity for innovative deal structuring and IP value creation. He represents Veracyte, a leading genomics diagnostic company, and recently handled its exclusive licence agreement with Yale University to advance the first genomic test for predicting disease progression in patents with idiopathic pulmonary fibrosis. Coleader of the life sciences and health technology industry group Stefano Quintini also weaves exciting new partnerships and collaborations with a magic touch in areas where disruptive technologies are transforming drug discovery and development and medical care. He recently advised Exicure – a pioneer in gene regulatory and immunotherapeutic drugs using spherical nucleic acid technology to deliver drugs – on a global collaboration, option and licensing agreement with Allergan Pharmaceuticals, which aims to discover novel treatments for hair loss disorders. In the internet, networking, cybersecurity, social media and other technology spaces, Ralph Pais is an M&A master at Fenwick, thanks to recent highlights such as representing ThousandEyes in its acquisition by Cisco, which was said to be valued at around the $1 billion mark. Stephen Gillespie also regularly leads IP diligence and negotiation teams in M&A scenarios for prestigious clients such as Amazon and Symantec. Completing the IAM Patent 1000 transactions line-up, David Hayes capitalises on his broad IP vision – he is a USPTO-registered patent attorney who has worked on many and various infringement matters – to sew up lasting deals. Turning to the contentious side, Fenwick’s litigators frequently collaborate with their colleagues in other practice areas to ensure that disputes strategies are mapped out with perfect exactitude. Just as in prosecution and transactions, the bench is a deep one: the firm has six lawyers recommended for litigation in the guide, which is the joint second-highest in California. The top name on the fight card is Michael Sacksteder, who is currently leading a large cross-office team – across San Francisco, Mountain View, Seattle and New York – defending Supercell in 11 patent infringement suits brought by GREE asserting 30 videogame patents and involving a great number of PTAB actions; a favourable verdict on damages was secured in the first trial, which took place in September 2020. Bryan Kohm, who is acting alongside Sacksteder on this matter, plays a key role in the firm as chief specialist in the ITC, where is he is currently representing Lashify in a
IAM Patent 1000 1311
United States: California patent enforcement campaign against manufacturers, distributors and resellers of copycat versions of its iconic false eyelashes, with Saina Shamilov as his co-lead. Shamilov has a reputation for excellence spanning all patent litigation forums, which stems from her proficiency in navigating large, procedurally complex disputes and resolving them successfully. She and David Hadden have been dealing with one such suit recently for a major technology company and dozens of its customers. Hadden is distinguished by his combination of trial and technical skill; so too Charlene Morrow, whose knowledge of case developments and vision on the future path of the law add tremendous value. Stuart Meyer is one of the firm’s pre-eminent post-grant minds, which is impressive considering the level of PTAB expertise that his litigation colleagues have built up. Integral to the launch of internal post-grant database and patent eligibility tools, Meyer goes above and beyond the brief to furnish clients with the patent knowledge they need.
Fish & Richardson
Judged purely on the strength of its trial lawyer contingent in California, Fish would be a potent force in patent litigation; but, being similarly stacked in key locations across the country, it is close to untouchable. San Diego alone is home to Juanita Brooks, Jonathan Singer, Chad Shear, Seth Sproul and Roger Denning – all of whom are legal lions. Brooks is a talismanic star of the practice with an illustrious reputation. Second to none in terms of advocacy skill, she continues to shine in the hightechnology, medtech and life sciences spaces. Recent highlights include defending biotechnology leader Illumina in a case filed by The Scripps Institute regarding technological tools for genomic testing. Singer captains the life sciences litigation practice and ranks among the pharmaceutical world’s foremost trial attorneys. He and Shear continued their Herculean efforts for Gilead Sciences in its hard-fought battle with Idenix Pharmaceuticals in 2020 with a Federal Circuit appearance that resulted in the denial of Idenix’s bid to reinstate a $2.5 billion verdict it had previously secured, but then lost as a result of Singer and Shear’s successful bid to wipe it out; we’re talking ‘best trial lawyers in the world’-type stuff here. One of the firm’s most technically adept practitioners, Sproul has been at the vanguard of developments in the 5G space; his cases have also involved complex FRAND issues. Denning has spearheaded trials in patent litigation hotspots around the country, including the ITC, where he is now representing Intuitive Surgical against Ethicon Endo-Surgery in a dispute whose outcome which will significantly impact on the robotically
1312 IAM Patent 1000
controlled surgical technology market. There are guiding lights in Silicon Valley, too, with David Barkan, Michael Headley and Betty Chen all springing to mind. Barkan is hailed as an “elite IP litigator with profound knowledge of the law, but above all strategic vision”. The dominant storyline in Headley’s recent practice was a fierce battle for Power Integrations against Fairchild Semiconductor, which is all closed off now with a $175 million settlement for his client. Chen makes her debut in the IAM Patent 1000 this year in recognition of the leadership she has shown for the likes of Microsoft and other blue-chips. She also serves the firm as global hiring principal. No less integral than their contentious counterparts to Fish’s overall patent practice are counselling and prosecution aces Hans Troesch and Eric Schulman. Troesch founded the Silicon Valley office in the early 1990s and has since assisted a rainbow of established industry leaders, solo inventors, start-ups and academic and research institutions with the creation and management of patent assets. Schulman can transform companies’ IP programmes with new and innovative strategies – something that he has done both in-house and in private practice.
Gibson Dunn & Crutcher LLP
When multinationals need to litigate with maximum impact for maximum gain, they call in Gibson Dunn & Crutcher. The trial lawyers here make for formidable adversaries in the courtroom, though a lot of their appeal from the client perspective derives from their proficiency and aggressiveness in pursuing earlier-stage wins. Whatever the best strategy is for any individual case, Wayne Barsky, Josh Krevitt, Jason Lo, William Rooklidge and Kenneth Parker will identify and develop it from the moment of filing through trial and beyond. Barsky’s legendary feats include defending EMD Serono and Pfizer in a long-running dispute against Biogen, which sought damages of $5.4 billion; in September 2020, the Federal Circuit reinstated a jury verdict that the asserted claims of Biogen’s patent were invalid as anticipated, and reversed the district court’s posttrial order granting Biogen judgment as a matter of law and a conditional new trial. This is one of the biggest defence victories ever in a patent infringement suit, and Barsky has effectively won it twice. Krevitt provided invaluable support in this effort; while Barsky has likewise supported Krevitt in his ITC litigation for Fitbit against Philips, which is just one of many important litigations on which he is leading. There are no sharp elbows here and nobody worries about who is running point – all the lawyers work collaboratively in trial teams configured according to the needs of
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United States: California Firms: prosecution
Firms: transactions
Highly recommended
Highly recommended
Fenwick & West LLP
Cooley LLP
Knobbe Martens
Fenwick & West LLP
Recommended
Latham & Watkins LLP
Baker Botts LLP
Sullivan & Cromwell LLP
Bozicevic Field & Francis LLP
Wilson Sonsini Goodrich & Rosati
Dentons
Recommended
Fish & Richardson
Goodwin Procter LLP
Goodwin Procter LLP
Knobbe Martens
Haynes and Boone LLP
Morgan Lewis & Bockius LLP
Kilpatrick Townsend & Stockton LLP
Morrison & Foerster LLP
Lowenstein Sandler LLP
Sidley Austin LLP
Mintz
Weil Gotshal & Manges LLP
Morgan Lewis & Bockius LLP
White & Case LLP
Morrison & Foerster LLP Nicholson De Vos Webster & Elliott LLP
See p1714
Perkins Coie LLP Schwegman Lundberg & Woessner PA
See p1724
Sheppard Mullin Richter & Hampton LLP Womble Bond Dickinson (US) LLP
the case and client. Cross-office integration also sees the likes of Lo link up with colleagues in New York, DC and Texas – as he has done recently in representing SoundCloud and other clients. Rooklidge has several long-term patrons which he continues to support through thick and thin. Parker is a new arrival, having switched from Haynes and Boone in August 2020, and brings extensive ITC experience to the group. Gibson Dunn also made additions to its sterling transactional
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See p1740
practice in 2020, hiring Karen Spindler from Goodwin Procter. The sophisticated life science deal lawyer has been acting for Sage Therapeutics in its $1.525 billion global collaboration and licence agreement with Biogen to develop and commercialise potential breakthrough therapies in depression and movement disorders. Carrie LeRoy draws on insight gained as a former in-house senior licensing professional in cochairing the technology transactions group.
Goodwin Procter LLP
Goodwin Procter has assembled an indomitable patent group in California with the self-sufficiency to support clients in all patent endeavours: it is home to broad-minded strategists, fearsome litigators and transactional specialists whose collective industry coverage is comprehensive. A good place to start on the counselling and deal side is with PhDs Michael Shuster and Kevin Kabler who, together with Sarah Solomon, take centre stage in Goodwin’s life sciences group. Often teaming up, Shuster and Kabler provide the right type of support at every stage of the business lifecycle, showcasing refined sector knowledge in
IAM Patent 1000 1313
United States: California Individuals: litigation Wayne Barsky Gibson Dunn & Crutcher LLP Michael J Bettinger Sidley Austin LLP Juanita Brooks Fish & Richardson Yar R Chaikovsky Paul Hastings LLP Neel Chatterjee Goodwin Procter LLP Morgan Chu Irell & Manella LLP Daralyn J Durie Durie Tangri LLP David Gindler Milbank LLP Andrei Iancu Irell & Manella Heidi Keefe Cooley LLP Josh Krevitt Gibson Dunn & Crutcher LLP Mark A Lemley Durie Tangri LLP Douglas E Lumish Latham & Watkins LLP Matthew D Powers Tensegrity Law Group LLP Ashok Ramani Davis Polk & Wardwell LLP Joseph R Re Knobbe Martens Edward Reines Weil Gotshal & Manges LLP
1314 IAM Patent 1000
Clement S Roberts Orrick, Herrington & Sutcliffe LLP Jonathan Singer Fish & Richardson Robert A Van Nest Keker, Van Nest & Peters LLP Charles K Verhoeven Quinn Emanuel Urquhart & Sullivan LLP Kathi Vidal Winston & Strawn LLP Adam R Alper Kirkland & Ellis LLP Brenton R Babcock Womble Bond Dickinson (US) LLP David M Barkan Fish & Richardson James R Batchelder Ropes & Gray LLP Michael A Berta Arnold & Porter Kaye Scholer LLP David Bloch Greenberg Traurig LLP Micah Block Davis Polk & Wardwell LLP Jared Bobrow Orrick, Herrington & Sutcliffe LLP Jim Brogan King & Spalding LLP Luke L Dauchot Kirkland & Ellis LLP Michael De Vries Kirkland & Ellis LLP James Dowd Wilmer Cutler Pickering Hale and Dorr LLP David P Enzminger Winston & Strawn LLP
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United States: California Deborah E Fishman Arnold & Porter Kaye Scholer LLP
Stephen Korniczky Sheppard Mullin Richter & Hampton LLP
Mark D Fowler DLA Piper
Ronald Lemieux Squire Patton Boggs
Richard G Frenkel Latham & Watkins LLP
David Lisson Davis Polk & Wardwell LLP
Thomas J Friel Jr King & Spalding LLP
Jack W Londen Morrison & Foerster LLP
Gary N Frischling Milbank LLP
Michael Lyons Morgan Lewis & Bockius LLP
William Gaede McDermott Will & Emery
Peter C Magic Desmarais LLP
Siegmund Y Gutman Proskauer Rose LLP
Fabio E Marino Polsinelli PC
Hopkins Guy Baker Botts LLP
Victoria F Maroulis Quinn Emanuel Urquhart & Sullivan LLP
J David Hadden Fenwick & West LLP
Richard T McCaulley Jr Haley Guiliano LLP
Benjamin W Hattenbach Irell & Manella LLP
Sonal N Mehta Wilmer Cutler Pickering Hale and Dorr LLP
Michael Headley Fish & Richardson
Stuart P Meyer Fenwick & West LLP
Jeffrey G Homrig Latham & Watkins LLP
Michael Ng Kobre & Kim
Anthony M Insogna Jones Day
Sean S Pak Quinn Emanuel Urquhart & Sullivan LLP
Michael A Jacobs Morrison & Foerster LLP
William C Rooklidge Gibson Dunn & Crutcher LLP
Kevin PB Johnson Quinn Emanuel Urquhart & Sullivan LLP
Michael Rueckheim Winston & Strawn LLP
Darcy Jones Kasowitz Benson Torres LLP
Michael J Sacksteder Fenwick & West LLP
Randy Kay Jones Day
Jeannine Yoo Sano Axinn, Veltrop & Harkrider LLP
Chris Kennerly Paul Hastings LLP
Brett M Schuman Goodwin Procter LLP
www.IAM-media.com
See p1345
See p1358
IAM Patent 1000 1315
United States: California Mark D Selwyn Wilmer Cutler Pickering Hale and Dorr LLP John B Sganga Knobbe Martens Saina Shamilov Fenwick & West LLP Stefani E Shanberg Morrison & Foerster LLP Chad Shear Fish & Richardson Jason Sheasby Irell & Manella LLP David J Silbert Keker, Van Nest & Peters LLP Darin W Snyder O’Melveny & Myers LLP Claude M Stern Quinn Emanuel Urquhart & Sullivan LLP J Rick Taché Buchalter Andrew N Thomases Ropes & Gray LLP Jonathan K Waldrop Kasowitz Benson Torres LLP Brett Williamson O’Melveny & Myers LLP Vernon M Winters Sidley Austin LLP Michael J Wise Perkins Coie LLP Darryl Woo Goodwin Procter LLP Ryan K Yagura O’Melveny & Myers LLP Craig Allison Dickinson Wright
1316 IAM Patent 1000
See p1355
their analysis and evaluation of third-party patents for risk mitigation and investment purposes. Coming in for special praise, Shuster is “the definition of a creative and skilful partner. He and his team use the most current technological resources to provide an excellent and – critical for small companies – costeffective service. Michael is exceedingly responsive and is available for calls early in the morning to late in the evening, even though he’s in such incredibly high demand”. More of a pure-play transactions attorney, Solomon is always engaged in topical matters and is the lead Goodwin lawyer advising long-time firm client Moderna Therapeutics in connection with its proprietary mRNA-based covid-19 vaccine candidate. Sanjeet Dutta keeps it real in high-technology areas such as software, autonomous driving, fintech and telecommunications; clients frequently consolidate their entire portfolios with him, given the quality he offers. On the contentious side, Neel Chatterjee, Darryl Woo and Brett Schuman land big hits in competitor tussles and other strategically and commercially important scraps. Chatterjee can be found by the side of blue-chips such as Facebook and in hot technology areas such as streaming and interactive media; in this latter field, for example, he is acting for eko (Interlude.fm) in a high-profile patent infringement, trade secret and breach of implied contract dispute. “Neel has an amazing grasp of technology and speaks the language of patents, but can also translate it for those who don’t. You can leave major litigations in his capable handles without having to micromanage the work being done – he tells you what you need to know and then litigates beautifully.” Integral to the eko litigation alongside Chatterjee and another go-to for Facebook, Woo is a tried-andtested trial lawyer who can’t be fazed. Schuman is engaged in a sprawling 24-patent dispute filed by TQ Delta against client CommScope-owned 2Wire, in the course of which he has successfully defeated several of TQ Delta’s patent assertions before trial. The former head of litigation for Goodwin in California marshals resources effectively for large matters and shows superb leadership.
Greenberg Traurig LLP
Looking at Greenberg Traurig (GT) through a wideangle lens reveals a muscular patent and IP litigation set-up with talented trial lawyers in locations around the country. Zooming in on San Francisco and Silicon Valley reveals a similar picture of strength, considering everything that locals Nicholas Brown, David Bloch and Scott Oliver bring to the practice. Brown furnishes the group with abundant trial skill, which he has refined in district courts and the ITC. His
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United States: California David Almeling O’Melveny & Myers LLP Michelle Armond Armond Wilson Martin Bader Sheppard Mullin Richter & Hampton LLP Jonathan Baker Dickinson Wright Marcus Barber Kasowitz Benson Torres LLP Stuart Bartow Duane Morris LLP Harper Batts Sheppard Mullin Richter & Hampton LLP Asim M Bhansali Kwun Bhansali Lazarus Elizabeth Brann Paul Hastings LLP Nicholas A Brown Greenberg Traurig LLP Shane Brun King & Spalding Anne Cappella Weil Gotshal & Manges LLP Betty Chen Fish & Richardson Matthew A Chivvis Morrison & Foerster LLP Megan M Chung Kilpatrick Townsend & Stockton LLP Joseph Cianfrani Knobbe Martens Thomas Counts Paul Hastings LLP Sean C Cunningham DLA Piper
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See p1335
recent activities have included extensive post-grant proceedings work on behalf of Satco Products as part of a cross-office Denver, New Jersey, New York, San Francisco and Virginia team; GT has always been highly effective at uniting different lawyers under a common cause. Given his Winston & Strawn pedigree, Bloch also knows his way around the courtroom. Teaming up with Scott Bornstein in New York and Vivian Kuo in DC, he is currently acting for specialty tobacco products company Kretek International and others in a multiforum ITC, Central District of California and Western District of Kentucky patent and trade secret litigation. Technical chops and specialist knowledge of patent pools and standards give Oliver his edge, especially in licensing disputes. Andrew Schwaab anchors the Northern California prosecution team, which has put in place vital IP protections for ShotSpotter, a pioneer in the field of gunshot detection technology to which US cities are increasingly turning to prevent and reduce gun violence.
Haynes and Boone LLP
Haynes and Boone has suffered some attrition in California, but its reputation as a preferred destination for prosecution and strategic counselling support remains undimmed; if anything, the recent effort put in by Orange County-based Tom Chen on behalf of innovators such as Lyft and Qualcomm has only elevated its status. Chen syncs well with engineers and in-house attorneys, and has a fine appreciation of companies’ technologies, legal needs and wider objectives; he leaves no stone unturned to protect his clients in the United States and internationally and help them move their business forward. Greg Michelson – a key member of the Lyft team – takes the lead in handling wide-ranging prosecution, licensing, risk assessment and counselling assignments for Peloton Interactive and FLIR Systems, a world leader in thermal imaging cameras, components and sensors. Nationally, Haynes and Boone is a premier prosecution firm according to a number of measures, including volume of applications filed, allowance rate and time to allowance.
Irell & Manella LLP
Irell & Manella practises at the apex of the patent litigation market; there’s no clearer evidence of this than its March 2021 $2.2 billion jury trial win for VLSI Technology against Intel in the Western District of Texas. This was masterminded by Morgan Chu, Benjamin Hattenbach and Alan Heinrich, who deserve all the props they get for this result – and for the consistency with which they have won big cases throughout their careers. Other impressive results of
IAM Patent 1000 1317
United States: California Roger Denning Fish & Richardson
Jason Lo Gibson Dunn & Crutcher LLP
Lauren Drake Milbank LLP
Tom Millikan Perkins Coie LLP
Robert M Galvin Wilmer Cutler Pickering Hale and Dorr LLP
Ameet A Modi Desmarais LLP
Erin Gibson DLA Piper
Michael A Molano Mayer Brown
Jon Gurka Knobbe Martens
Steven D Moore Kilpatrick Townsend & Stockton LLP
Shawn Hansen Nixon Peabody LLP
See p1340
See p1348
Charlene M Morrow Fenwick & West LLP
Brent A Hawkins Morgan Lewis & Bockius LLP
John Neukom Skadden Arps Slate Meagher & Flom LLP
Alan J Heinrich Irell & Manella LLP
Michael J Newton Alston & Bird LLP
Gabrielle E Higgins Desmarais LLP
Scott Oliver Greenberg Traurig
Julie M Holloway Latham & Watkins LLP
Philip Ou Paul Hastings LLP
Richard SJ Hung Morrison & Foerster LLP
Kenneth G Parker Gibson Dunn
James Isbester Kilpatrick Townsend & Stockton LLP
Sarah E Piepmeier Perkins Coie LLP
Edward Johnson Mayer Brown
Edward G Poplawski Wilson Sonsini Goodrich & Rosati
Matthias A Kamber Keker, Van Nest & Peters LLP
Erik R Puknys Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
L Kieran Kieckhefer Shearman & Sterling LLP
See 01341
Bryan A Kohm Fenwick & West LLP Jonathan Lamberson White & Case LLP Irfan Lateef Knobbe Martens
1318 IAM Patent 1000
Michelle Rhyu Cooley LLP Bhanu Sadasivan McDermott Will & Emery
See p1342
John P Schnurer Perkins Coie LLP
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United States: California Luann Simmons O’Melveny & Myers LLP
major cross-border deals with the greatest of ease. This is what Thomas Briggs – a founder of the firm’s specialised practice in this area – has been doing for much of his private practice career. Leaning on the litigation and prosecution expertise he has cultivated along the way, as well as experience as a company chief IP officer, he brings a multi-faceted perspective to the negotiating table. Jones Day is always high on the list for litigation, particularly among pharmaceutical companies, which turn to IP group leader Anthony Insogna as well as East Coast specialists such as John Normile. Insogna is a high-level strategist who has won huge patent infringement verdicts and safeguarded many billion-dollar drugs. Trade secret litigation is another string to the firm’s bow, which has an authority on the subject – and an excellent trial lawyer – in Randy Kay.
Seth Sproul Fish & Richardson Kalpana Srinivasan Susman Godfrey LLP David Stein Brown Rudnick Kerry Taylor Knobbe Martens Michael A Tomasulo Winston & Strawn LLP
Kasowitz Benson Torres LLP
Ellisen Shelton Turner Kirkland & Ellis LLP Bijal Vakil White & Case LLP
See p1359
Nimalka Wickramasekera Winston & Strawn LLP Eliot D Williams Baker Botts LLP Philip W Woo Duane Morris LLP Meng Xi Susman Godfrey LLP James Yoon Wilson Sonsini Goodrich & Rosati Daniel Zaheer Kobre & Kim
late have included a $506.2 million damages win for PanOptis in a patent suit against Apple involving 4G Long-Term Evolution (LTE) technology; central to this was Jason Sheasby, who has plenty of large monetary awards on his résumé. In April 2021, the firm welcomed former USPTO director Andrei Iancu back into the fold.
Jones Day
A prime destination for technology and IP-intensive transactions, Jones Day makes full use of its global network and deep institutional knowledge to sew up
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Tried and true in the courtroom, Kasowitz has gained the admiration of many of the world’s top technology companies as they navigate critical patent issues, as both patent holders and accused infringers. The team is a diverse and cosmopolitan one, but its members have a lot in common, including technical aptitude, toughness and calmness under pressure. Exemplifying these and many other attributes, Jonathan Waldrop provides strong leadership to the IP litigation group. He, Darcy Jones and Marcus Barber form a formidable team that puts its shoulder to the wheel for the likes of Google: they are representing the internet titan in an action brought by Eolas Technologies, which alleges infringement of a patent covering methods that enable internet uses to interact with online video, music and audio clips and other browser-embedded features. They have also been putting in the hours for ASUS in multiple cases and for Reddit, among many other prestigious clients. These three lawyers never let anyone down – not least because of the passion they pour into their work.
Keker, Van Nest & Peters LLP
Keker, Van Nest & Peters needs no introduction as one of the best litigation outfits in the United States. Famous for its memorable courtroom performances, it applies exceptional rigour and keen strategic vision throughout all phases of a case, putting it in pole position for a trial win if necessary, but also giving it an edge in negotiations. Its patent litigators – including Robert Van Nest, David Silbert and Matthias Kamber – are always in the frame when infringement suits threaten the core business of the parties involved, which are typically dominant forces in technology.
IAM Patent 1000 1319
United States: California Kilpatrick Townsend & Stockton LLP
Undertaking a prodigious volume of analysis, opinion and prosecution work, Kilpatrick Townsend is at the pinnacle of the patent counselling profession. Its substantial, richly resourced group is fluent in all areas of science and engineering, but overlays its technical and legal knowledge with a strategic and commercial approach that yields handsome benefits for clients. Electronics and software group co-leader Craig Largent, for example, has impeccable technical credentials and is a former practising scientist with his name on multiple patents; having partnered closely with start-ups and established companies in Silicon Valley for so long, he has cultivated an intuitive appreciation of the role that intangible assets play in driving business. He is protecting breakthrough graphene technology for the California Institute of Technology, and doing so internationally through an extended network of foreign contacts. Sujit Kotwal – who previously held the role that Largent now occupies – has a similar approach to portfolio building: the actions he takes are calibrated to generate valuable commercial opportunities. Another high-technology ace, William Shaffer has extensive contentious experience and so understands how patents can be attacked; this knowledge feeds into prosecution strategies that are designed to minimise future risk. Medical device maven Nena Bains has previously worked in-house and so sees things through clients’ eyes. A one-stop shop for patent services, Kilpatrick Townsend also handles litigation instructions with alacrity: its top advocates – many of whom have technical backgrounds themselves – draw on support from their prosecution colleagues to cut through the densest cases. Broader engagement in patent practice by trial lawyers such as Megan Chung further helps to integrate the firm’s various offerings. Chung has sharp transactional skills; as does James Isbester, who deploys his licensing expertise to help clients avoid costly litigation. Both lawyers – who jointly represent a leading scientific instrumentation company – can also bring the heat when necessary. So too can Steven Moore, who had a busy 2020 litigating for Japanese gaming and internet media company GREE in a major battle with Finnish mobile game developer Supercell; at trial in September, he obtained a verdict of wilful infringement and a damages award for GREE.
King & Spalding LLP
Significant growth in patent litigation is the central thread of King & Spalding’s recent IP narrative: the firm has added 12 specialised partners in the past two years and has invested in building out the teams around them with associates, counsel and technical specialists.
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Considering this expansion, and in view of the calibre of its trial lawyers, it is now a force to be reckoned with in district court and ITC litigation, Federal Circuit appeals and post-grant proceedings. One recent addition is Shane Brun, who has served as lead counsel for marquee names in patent and other IP disputes for more than two decades. A former in-house counsel, he takes a pragmatic approach to conflicts and prioritises the achievement of commercial aims. He joins fellow Silicon Valley-based lawyers Thomas Friel and Jim Brogan – two trial heavyweights who, true to form, have recently been putting in a superb showing in a complex and hard-fought competitor dispute regarding automotive emission technologies.
Kirkland & Ellis LLP
Kirkland & Ellis manifests a rare faculty for patent litigation and has a multitude of experienced and strong-willed trial lawyers who are relentless in their pursuit of clients’ commercial objectives. They always plan for trial, as this puts them in the strongest strategic position whichever way a case turns; but the focus is firmly on resolving disputes, as opposed to just fighting them. The leading lights in California are Luke Dauchot, Michael De Vries, Adam Alper and Ellisen Shelton Turner. Dauchot has litigated – and tried – a wide variety of commercial, IP and other cases, giving him an encyclopaedia of attack plans to choose from. De Vries and Alper recently secured their 2019 $125 million jury verdict for EagleView Technologies in a competitor case against Xactware Solutions and Verisk Analytics regarding aerial imaging technology after vigorous post-trial briefing in September 2020, in which the district court roundly rejected and denied the defendant’s request to reverse the verdict and declare a new trial. In support of lead partners Greg Arovas and Todd Friedman from the New York office, they and Turner are also representing Intel in litigation against Swiss patent licensing company PACT XPP Schweiz; the case is progressing, with Intel having successfully motioned to add claims of inequitable conduct for each of the 12 asserted patents and having filed inter partes review petitions challenging the validity of the asserted patents, 10 of which were instituted.
Knobbe Martens
Patent and IP powerhouse Knobbe Martens is virtually unsurpassed for prosecution, counselling and postgrant depth in the life sciences. Armed with PhDs in various relevant subjects, Salima Merani, Kimberly Miller, Eric Furman, Joseph Reisman, Kerry Taylor and Eli Loots all possess special attributes that put them in hot demand. A seasoned portfolio builder who can pinpoint IP value, Merani is the go-to diligence and
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United States: California Individuals: prosecution David Ahn Fenwick & West LLP Bing Ai Perkins Coie LLP Adeel Akhtar Knobbe Martens Daniel E Altman Knobbe Martens Nena Bains Kilpatrick Townsend & Stockton LLP Daniel M Becker Fenwick & West LLP Karl Bozicevic Bozicevic Field & Francis LLP Dion Bregman Morgan Lewis & Bockius LLP Matthew Bresnahan Wilson Sonsini Goodrich & Rosati Aaron Capron Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Michael W Farn Fenwick & West LLP Carol Francis Bozicevic Field & Francis LLP Michael L Fuller Knobbe Martens Eric Furman Knobbe Martens Kevin O Grange Lowenstein Sandler LLP Kevin Greenleaf Dentons Lisa A Haile DLA Piper Fred C Hernandez Mintz James M Heslin Wilson Sonsini Goodrich & Rosati Brian Ho Dentons Brian Hoffman Fenwick & West LLP
Ko-Fang Chang Weaver Austin Villeneuve & Sampson
Robert Hulse Fenwick & West LLP
Tom Chen Haynes and Boone LLP
Mark J Itri Morgan Lewis & Bockius LLP
Hogene Choi Baker Botts LLP
Jason J Jardine Knobbe Martens
Brian Coleman Perkins Coie LLP
Kenneth E Jenkins Mintz
Daniel M De Vos Nicholson De Vos Webster & Elliott LLP See p1338
Kevin Kabler Goodwin Procter
Sanjeet Dutta Goodwin Procter LLP
William Kezer Mintz
Christopher Eide Dentons
John King Knobbe Martens
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IAM Patent 1000 1321
United States: California Bryan A Kohm Fenwick & West LLP
Dan Ovanezian Womble Bond Dickinson (US) LLP
Sujit Kotwal Kilpatrick Townsend & Stockton LLP
Christopher Palermo Baker Botts LLP
Mark H Krietzman BakerHostetler
Rajiv P Patel Fenwick & West LLP
Viola Kung Perkins Coie LLP
Catherine M Polizzi Morrison & Foerster LLP
Craig Largent Kilpatrick Townsend & Stockton
Marina Portnova Lowenstein Sandler LLP
Eli A Loots Knobbe Martens
Joseph R Reisman Knobbe Martens
Jeffry S Mann Morgan Lewis & Bockius LLP
Dale Rieger Rimon PC
Andre Marais Schwegman Lundberg & Woessner PA
See p1346
Robert R Sachs Robert R Sachs PC
Mika Reiner Mayer Cooley LLP
James Scheller Womble Bond Dickinson (US) LLP
John T McNelis Fenwick & West LLP
Eric Schulman Fish & Richardson
Salima A Merani Knobbe Martens
Andrew Schwaab Greenberg Traurig LLP
Greg Michelson Haynes and Boone LLP
Stephanie L Seidman Dentons
Kimberly J Miller Knobbe Martens
Antonia L Sequeira Fenwick & West LLP
Alan Minsk FisherBroyles
William L Shaffer Kilpatrick Townsend & Stockton LLP
Judy Mohr McDermott Will & Emery
Kevin Shao Womble Bond Dickinson (US) LLp
David Nicholson Nicholson De Vos Webster & Elliott LLP
Terri Shieh-Newton Mintz
Randy Omid Dentons
Michael J Shuster Fenwick & West LLP
Cecily Anne O’Regan Buchalter
Amy Simpson Perkins Coie LLP
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United States: California Nathan Smith Morgan Lewis & Bockius LLP
Joshua Van Hoven Haley Guiliano LLP
Jae Won Song Fenwick & West LLP
Lee Van Pelt Van Pelt, Yi & James LLP
James W Soong Sheppard Mullin Richter & Hampton LLP
Gerard von Hoffmann Knobbe Martens
Judith Szepesi Nicholson De Vos Webster & Elliott LLP See p1352
Michael R Ward Morrison & Foerster LLP
Ardeshir Tabibi Alston & Bird LLP
Gary S Williams Morgan Lewis & Bockius LLP
Lorna Tanner Sheppard Mullin Richter & Hampton LLP
Michael J Wise Perkins Coie LLP
Travis Thomas Baker Botts LLP
Philip W Woo Duane Morris LLP
Nick Transier Patterson + Sheridan LLP
Peter Yim Dentons
Hans R Troesch Fish & Richardson
deal lawyer for medical technology and biotechnology investors. Playing the trusted adviser role to perfection, Miller shows impressive range as an all-IP counsellor and problem solver. Furman likewise has broad horizons, engaging in patent procurement, opinion work and licensing; the ambidextrous Reisman affords a lot of options through his proficiency in prosecuting and enforcing patents; and Taylor and Loots have well-developed post-grant skills that put them in the thick of the action at the PTAB. Other names to keep on the radar include Daniel Altman, Jason Jardine and Michael Fuller, who also have much to commend them. Altman is the first choice for international protection, particularly in Japan, China and other Asian markets; Jardine is appreciated for the creativity with which he pursues the registration of applications that have got stuck in the system under other counsel; and biotechnology practice leader Fuller excels at the confluence of life sciences and computer technology, and of law and business. The medical device industry is another notable stronghold for the firm: it has a leading specialist in Gerard von Hoffmann, who has served on multiple company boards. On the high-technology side, John King and Adeel Akhtar pave the way. Chair of the patent prosecution committee King is the first choice of start-ups for prosecuting foundational patents. A
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21-year partner at the firm and the leader of its San Francisco office, Akhtar makes light work of complex software, data processing and electronic technologies, and is also a reference for semiconductors. Knobbe Martens’ litigation offering is equally as sophisticated and well stocked with standout talent. The best known is Joseph Re, who has led trial teams to landmark victories backed up on appeal: “He has an amazing ability to connect with juries and a passion for his craft.” Joseph Cianfrani chairs the litigation group, in which he instils a business goal-oriented approach. John Sganga is guided by a strong sense of justice and gives his all for clients; while Jon Gurka litigates across the IP spectrum with poise and purpose. A polished advocate, negotiator and IP strategist, Irfan Lateef makes the most of all available tools to deliver success.
Kobre & Kim
Making its debut in the IAM Patent 1000 this year, disputes and investigations specialist Kobre & Kim garners enthusiastic recommendations: “The firm takes a streamlined approach to patent litigation and makes things happen fast – there’s no red tape like at larger competitors. Its lawyers are highly intelligent, driven, strategically focused and creative, constantly coming up with great ideas and new initiatives to better help their clients.” Playing a starring role in the practice, Michael Ng is “calm, thoughtful, open-minded in terms of solutions and an exceptional litigator all
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United States: California round”. He also “thoroughly understands the nuances of the litigation funding world and knows it better then anyone”. He and Daniel Zaheer “go up against the biggest firms and win substantial cases with lean teams”.
Latham & Watkins LLP
Latham & Watkins is abundantly rich in IP trial talent – 20 of its leading litigators in the United States make the IAM Patent 1000 for 2021. Some of the best of them – Douglas Lumish, Jeffrey Homrig, Richard Frenkel and Julie Holloway – can be found in the Silicon Valley and San Francisco offices, their launch pads for major competitor campaigns on behalf of technology world leaders. All four lead trial contingents in which practitioners from across the network collaborate willingly and enthusiastically – teamwork is baked into the model. Heading the fight card is Lumish, a habitual winner whose trial verdicts and non-trial resolutions are always satisfying to business leaders. The secret of Homrig’s success lies in his ability to make the abstruse accessible to juries and triers of fact. Engineering experience elevates Frenkel as a fine technical lawyer. Holloway also has a technical background (electrical engineering), which she combines with sparkling advocacy skills that she once put to the test in a remarkable four trials in one year. Latham is also an eminent transactions firm and has supremely capable lawyers in Judith Hasko and Anthony Klein, who oversee lucrative life sciences and high-technology deals respectively.
Lowenstein Sandler LLP
Lowenstein Sandler may not be a household name on the West Coast, but those in the know recognise it as an ideal fit for patent preparation and prosecution, portfolio building and IP commercialisation. These are the primary activities of Marina Portnova, who chairs the software and electronics practice within the patent counselling and prosecution group. She represents Google in protecting technologies relating to YouTube and GSuite; assists Lashify with US and international filing and pre-litigation strategy; and undertakes key assignments for a leader in autonomous driving. Kevin Grange, meanwhile, puts in the safeguards that keep a major technology company’s R&D team focused on innovating. Grange is primarily based in Utah, where he oversees the firm’s dedicated patent prosecution centre, but he stays close to all the goings-on in Silicon Valley.
Mayer Brown
“Mayer Brown’s Palo Alto team is exceptional on patent litigation, business consulting and licensing.
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Edward Johnson and his team deliver a best-in-class work product in terms of the briefs, motions and other materials generated in the course of litigation. Ward is also brilliant in depositions and excels in the courtroom.” Another source adds: “Ward is a uniquely skilled adviser – he has deep knowledge of black-letter law, coupled with a pragmatic approach and an invaluable ability to think outside the box.” He represents Gemalto, a worldwide leader in digital authentication, in multiple matters; and acts for LED lighting company Lumileds jointly with Michael Molano, the IP practice leading and hiring partner for Mayer Brown’s Northern California offices, and a seasoned district court and ITC litigator.
McDermott Will & Emery
The life sciences is a happy hunting ground for McDermott Will & Emery, as senior company figures observe: “Its agents and attorneys have strong technical backgrounds (many hold PhDs) and notable patent drafting, prosecution and litigation skills – a combination which is not easy to find.” Valued for its end-to-end services, the Silicon Valley team comes recommended for its “superior quality”. PhD Judy Mohr covers a huge amount of ground given her mastery of US and international prosecution, postgrant proceedings, IP due diligence, deal negotiation and strategic counselling. She frequently collaborates with litigation colleagues William Gaede and Bhanu Sadasivan – for example, on behalf of Heron Therapeutics, a NASDAQ-listed public company that provides technology solutions for the delivery of pharmaceuticals. Gaede is, first and foremost, a true-blue lead trial counsel; but he also “understands how changes in patent law potentially impact the life sciences industry”, making him an effective counsellor. He has been integral to jury trial wins for Amgen against Sanofi and Regeneron over drugs that lower bad cholesterol; as has Sadasivan, who makes her debut in the IAM Patent 1000 this year. “Bhanu draws on her experience as a litigator and her deep scientific background to provide astute guidance that addresses client needs directly. She is extremely intelligent and produces top-notch work in a timely, cost-effective fashion.”
Milbank LLP
Many high-exposure, high-impact life sciences and technology patent litigations bear Milbank’s fingerprints: for example, the firm was at the forefront of some of the first lawsuits to be filed under the Biologics Price Competition and Innovation Act and, more importantly, achieved fantastic results for clients Genentech and Biogen. Primarily responsible
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United States: California for these, David Gindler is a celebrated name in the biotechnology space. CEOs call him an “extraordinarily gifted lawyer with a commanding presence”, adding that “he inspires confidence as a counsellor who addresses complex legal and business issues in a practical manner, and as a trial lawyer in vital cases”. Away from the life sciences, he is acting for Chinabased Rosenberger Asia Pacific, the third-largest base station antenna manufacturer in the world, in defending a suit filed by US company CommScope, which is the second-largest – a representation in which Milbank’s global presence, Hong Kong office and USbased Chinese-speaking litigators all confer a major advantage. With Gindler on this is Gary Frischling, another litigator of great stature. Joining them in the listings this year, Lauren Drake is a rising star who is taking on increasingly significant roles, working alongside Gindler, Frischling and New York éminence grise Errol Taylor.
Individuals: transactions
Mintz
Michael L Fuller Knobbe Martens
When it comes to building patent portfolios and developing and implementing strategies that maximise their value, Mintz is world class. Life sciences innovators know this well, given their experience with William Kezer and Terri Shieh-Newton, who fly the firm’s flag high in San Francisco. They jointly represent Arcus Biosciences – Kezer handling its small molecule patents and serving as lead strategist, and Shieh-Newton taking on responsibility for its biologics patents. Both practitioners understand all that goes into protecting and strengthening clients’ competitive market standing, as well as what investors are looking for in a portfolio. To the latter point, Kezer’s recent work for Arcus included due diligence in connection with a nearly $2 billion investment by Gilead Sciences – a deal to which a portfolio handled by Shieh-Newton for an anti-TIGIT antibody was central. Kenneth Jenkins is another star of the practice with a fine appreciation for the scientific and business aspects of his craft. He represents a prestigious university, a leading cancer treatment centre and several corporate clients. Jenkins is based in San Diego, down the hall from patent prosecution and counselling chair Fred Hernandez, a touchstone lawyer for medical device and medical technology entities. The regularity with which industry leaders snap up the emerging companies whose portfolios he has developed is a telling measure of his quality.
Morgan Lewis & Bockius LLP
“Morgan Lewis has a seemingly endless reserve of highquality partners and associates to address any need. If you have a significant matter that you cannot afford
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Adeel Akhtar Knobbe Martens Megan Baca Ropes & Gray LLP Karen N Ballack Weil Gotshal & Manges LLP Thomas A Briggs Jones Day John P Brockland Hogan Lovells US LLP Kenneth A Clark Wilson Sonsini Goodrich & Rosati
Stephen D Gillespie Fenwick & West LLP Lisa A Haile DLA Piper Jake Handy Fenwick & West LLP Judith Hasko Latham & Watkins LLP David L Hayes Fenwick & West LLP Dana W Hayter Perkins Coie LLP Joshua Hofheimer Sidley Austin LLP Mark J Itri Morgan Lewis & Bockius LLP Paul E Jahn Morrison & Foerster LLP Rahul Kapoor Morgan Lewis & Bockius LLP
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United States: California Anthony R Klein Latham & Watkins LLP
Marya A Postner Cooley LLP
Carrie LeRoy Gibson Dunn & Crutcher LLP
Stefano Quintini Fenwick & West LLP
Seth Levy Nixon Peabody
See p1343
Mark F Radcliffe DLA Piper
Emma Maconick Shearman & Sterling LLP
See p1344
Aaron Rubin Morrison & Foerster LLP
Thomas A Magnani Arnold & Porter Kaye Scholer LLP
Tessa J Schwartz Morrison & Foerster LLP
Mika Reiner Mayer Cooley LLP
William I Schwartz Morrison & Foerster LLP
Salima A Merani Knobbe Martens
Sarah A Solomon Goodwin Procter LLP
Kimberly J Miller Knobbe Martens
Karen A Spindler Gibson Dunn & Crutcher LLP
Nader A Mousavi Sullivan & Cromwell LLP
Alexander Touma White & Case LLP
Glenn G Nash Sidley Austin LLP
Gerard von Hoffmann Knobbe Martens
James E Nelson Venable LLP
Michael R Ward Morrison & Foerster LLP
Daren Orzechowski White & Case LLP
See p1350
Ralph M Pais Fenwick & West LLP Rufus Pichler Morrison & Foerster LLP
to lose, it is the firm to turn to – you’ll have the best and brightest working on your behalf.” One of those is patent trial lawyer Michael Lyons: “Mike dives into the technical and other details of his cases and can crossexamine expert witnesses on very obscure concepts in a way that juries can follow and understand. He makes himself utterly and completely available to his clients, and is a trusted adviser and outstanding counsellor on the substance and strategy of cases – he tells it like it is and won’t sugar coat things just so they are easier to hear.” The Silicon Valley litigation
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See p1357
John E Wehrli Wilson Sonsini Goodrich & Rosati Joseph Yang PatentEsque Law Group LLP
practice leader added significantly to his résumé with a major victory for the Alfred E Mann Foundation for Scientific Research against Cochlear in a long-running patent infringement case; in March 2020, the Federal Circuit denied Cochlear’s petition for rehearing, cementing Lyons’s trial win and netting a payment of almost $280 million for his client. San Francisco’s Brent Hawkins – the group’s other elite West Coast IP litigator – is currently representing Zebra Technologies, a global leader in asset tracking technology. It is rare to find a firm that litigates at such a high level while also engaging in extensive and sophisticated patent prosecution and counselling work, as well as IP and technology transactions – but Morgan Lewis knocks
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United States: California it out of the park in all areas. Gary Williams, Mark Itri and Dion Bregman link up to advise a dominant global technology company and prosecute patents protecting many of its key technologies, from user interfaces to AI. Software maven Williams prosecutes with unbelievable precision, leveraging experience and technical fluency; while Itri is a seasoned strategist with a broad IP view. Bregman stands out for his post-grant proficiency, which he demonstrated recently in winning three inter partes reviews for One World Technologies. In two, the PTAB found all claims of the patent owner, Chamberlain Group, to be invalid for obviousness; and in the third, the claims were found to be unpatentable. These decisions follow a hotly contended ITC action that was ultimately resolved with a finding that One World Technologies’ redesigned products did not violate any ITC orders. Jeffry Mann and Nathan Smith offer the same exquisite level of service as their hightechnology colleagues, but focus predominantly on pharmaceutical and biotechnology innovation. They excel at giving commercial impetus to portfolios and ringfencing clients’ most strategic IP assets. Rahul Kapoor’s name resonates in Silicon Valley, where he is considered among the very best deal lawyers – he is a towering figure at Morgan Lewis, as he is in the wider market.
Morrison & Foerster LLP
A technology transactions heavyweight, Morrison & Foerster (MoFo) has 50 dedicated specialists across its US, Asian and European offices, and is thus first port of call for the sorts of global deals that cause seismic shifts in industry, as well as for cutting-edge patent and IP commercialisation more generally. The practice is chaired by Aaron Rubin, an authority on social media, online business, software and many other technology subjects. He represents a top social media company with San Francisco colleagues Rufus Pichler and William Schwartz, both of whom operate at the vanguard of business dealings in technology and intellectual property. Pichler’s practice – not workload – has been significantly impacted by covid-19: he has been supporting a leading private foundation on pandemic-related matters such as the funding of vaccine development and assisting a technology leader in setting up testing labs. When something vital is needed quickly, Pichler answers the call. Speaking of industry shifts, he has also been advising a multinational conglomerate on a multibillion-dollar company sale that will create a major AI player. The transactions wing of the firm derives much strength – particularly in terms of technical and scientific support – from its connectedness with MoFo’s wider IP practice, much credit for which goes to Schwartz and his role in
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co-founding the IP group. His broad engagement – and the versatility of Tessa Schwartz and Paul Jahn, who counsel on patent matters as well as negotiating deals – further cement the link between the two groups. Drilling into the wider IP offering brings an outstanding life sciences practice to the surface, which is captained globally by Michael Ward, one of the world’s foremost plant and agriculture IP lawyers. Biotechnology and pharmaceutical companies have another vital ally in Catherine Polizzi, who unerringly prosecutes applications to successful grant while custom-fitting portfolios to serve commercial ends. There’s a deep bench of litigators, too, so when things kick off, MoFo can sort them out: with advocates of the stature of Michael Jacobs on board, the firm is a smart choice for the most business-critical suits. This is why streaming start-up Quibi has instructed Jacobs to put a hard stop to threats from a key rival. Stefani Shanberg, Richard Hung, Matthew Chivvis and Jack Londen are all sure bets for do-or-die trials.
Nicholson De Vos Webster & Elliott LLP
At the heart of happenings in Silicon Valley, agile boutique Nicholson De Vos Webster & Elliott prosecutes patents, manages portfolios, advocates at the PTAB and provides essential litigation support – all with technical precision and strategic flair. A notable development for the ensemble in 2020 was the recruitment of Judith Szepesi, an experienced patent attorney and a perfect match for the firm, with her emphasis on harnessing intellectual property for business gain. This is likewise the special skill of Daniel De Vos, whose prizewinning patents have been successfully enforced through litigation, netting his clients handsome gains. He acts for a colourful catalogue of start-ups, mid-sized companies and Fortune 100s, and gets right to the crux of their commercial issues. His co-founder David Nicholson sees the whole playing field for the parties he represents, including pioneers in computer science and software. See p1714 for firm profile
O’Melveny & Myers LLP
Senior figures in blue-chip companies call O’Melveny & Myers a “pre-eminent firm for US patent litigation”. With numerous seasoned first-chair trial lawyers on deck, it makes light work of high-stakes cases and has an enviable hit rate. Notable recent highlights for the group include prevailing for Samsung against Image Processing Technologies in a six-patent dispute involving dozens of Samsung products using various camera functions. In this, Ryan Yagura and his colleagues instituted inter partes review proceedings
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United States: California to review the validity of most of the asserted claims; obtained a favourable claim construction ruling that invalidated several claims as indefinite; secured a motion to invalidate another claim under Section 101; stayed the district court litigation; won the postgrant proceedings, leaving just one claim standing; and then settled the case on favourable terms on the eve of trial. Never less than formidable, Yagura is a “star lawyer who you can trust with vital matters in district courts and the ITC. He cares deeply about his clients and is always ready to help with the most complicated of matters. He resolves issues promptly and efficiently, showing exceptional legal judgement and a sophisticated understanding of the business world.” Also attracting rave reviews is Luann Simmons, a former software developer who serves as regional head of litigation for Northern California. She brought home a series of victories against Barbaro Technologies on behalf of Niantic in a case involving its Pokémon Go game, ultimately resulting in a complete defence win. Co-leading on this and with Yagura on the Samsung brief, Darin Snyder also brings both trial skill and leadership to the table; he’s a past chair of the IP and technology group and currently serves as co-head of diversity and inclusion. The group’s successes invariably involve impressive displays of teamwork: in a recent defence of Google against Location Based Services, Simmons, Snyder and David Almeling partnered up to great effect. Almeling is chiefly known as one of the country’s best trade secret litigators, but he has patent law down cold too. One of the most practised lawyers in the fold, Brett Williamson is also at the height of his powers; he is currently leading Hulu’s defence in an infringement action against Sound View Innovations, which is being represented by patent litigation outfit Desmarais.
Orrick Herrington & Sutcliffe LLP
When it comes to high-stakes patent litigation and technology-intensive commercial disputes, Orrick doesn’t disappoint. Its experienced attorneys manage multi-faceted cases with impressive organisation and efficiency, and utilise finely honed trial skills to press their strategic advantage in negotiations and in courtroom clashes. The firm’s global IP group is chaired by Jared Bobrow, a patent and trade secret litigator who has spent decades on the frontlines of major battles involving cutting-edge technology. He forms a tailor-made strike force for prestigious clients with Clement Roberts, a determined advocate for whom there’s not such thing as a dead end: with his powers of persuasion and creativity, he always finds a way through.
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Paul Hastings LLP
Paul Hastings presents to the market a highly accomplished patent litigation group. The California contingent alone packs enough firepower for the largest and most complex suits; factor in the talent in New York, DC and Chicago, and you’re looking at one of the country’s elite. The quality and experience of its leading lights in each locale are vital factors in the ensemble’s success: practitioners of the calibre of Yar Chaikovsky, for example, are rare to find. Charismatic global IP group co-chair Chaikovsky is a dynamite trial lawyer who never lacks for a convincing story to tell. When it comes to gutting a plaintiff’s damages theory, challenging validity on Section 101 grounds and drawing lines in the sand, he does it all brilliantly. Other go-to lawyers in Palo Alto include Philip Ou and Chris Kennerly, two redoubtable leaders whose work not just at trial, but throughout all stages of a case is top drawer. Together with Chaikovsky and Elizabeth Brann, they undertake extensive litigation and post-grant proceedings for Samsung, for which they often have multiple cases on the go at any one time. Kennerly and Brann defended the chaebol, for example, in a patent infringement case brought by International Technologies and Systems Corp d/b/a ID TECH, a manufacturer of magnetic stripe card readers, implicating the Magnetic Secure Transmission technology in Samsung Pay; Kennerly and Brann’s claim construction theories were adopted, denying ID TECH the ability to prove infringement and leading to final judgment in Samsung’s favour, which the Federal Circuit affirmed. Brann’s forensic cross-examination of the plaintiff’s technical expert was instrumental in this one. San Francisco-based Thomas Counts, meanwhile, has been representing Alignt Technology in numerous large-scale cases against competitor 3Shape in district courts and the ITC, joining forces with DC-based Allan Soobert in a perfect illustration of productive bicoastal cooperation.
Perkins Coie LLP
“Perkins Coie knows the path to victory in critical patent litigation and excels at putting together, briefing, arguing and trying winning cases. Its lawyers are easy to partner with, make themselves available to in-house counsel and engineering teams at a moment’s notice, are team oriented and take both a legal and business approach to matters. From the moment of hiring, they impress with their technical expertise and creative and flexible – or rather, more strategic – style: they don’t stick to the cookie-cutter ‘prove technical non-infringement and/or invalidity’ method, but craft persuasive themes and stories that include much more than the usual patent defence.” A strong litigation
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United States: California bench in California is headlined by John Schnurer, Matthew Bernstein, Sarah Piepmeier and Tom Millikan. Schnurer and Bernstein serve as co-managing partners of the Taipei office and maintain vibrant ITC as well as district court practices. Schnurer – who recently handled one of HTC Corporation’s most significant patent cases, an 11-patent spat with Philips – is a “great negotiator and perfect communicator” who is extremely conscientious about the cost-benefit ratio of his actions. Bernstein – the relationship partner for the individual who provided the lengthy reference above – recently secured an initial determination of no violation of Section 337 in a three-patent infringement investigation relating to garage door and gate operator technology at the ITC on behalf of Nortec Security & Control. For Piepmeier, defending Cisco Systems against Netfuel was a big part of her 2020. Also focusing on high-technology affairs, Bing Ai, Amy Simpson, Brian Coleman and Dana Hayter fuel the firm’s West Coast prosecution and post-grant and transactions practices. Ai takes the lead on PTAB matters and is a vital buttress to litigators such as Schnurer, with whom he acts extensively on behalf of leading Asian communications and semiconductor companies. Simpson hails from a litigation background and thrives in inter partes reviews and other America Invents Act trials. Both entrepreneurially and technically minded, Coleman does a wonderful job prosecuting in the areas of social media, cloud computing, clean technology and many others. Transactional don Hayter undertakes licensing for a client supported by Ai and Schnurer, in a great example of the total support that Perkins Coie can offer. On the life sciences front, superb leadership is provided by Michael Wise, a renaissance man who manages portfolios, litigates in court and represents parties in post-grant proceedings. Chemistry and biochemistry PhD Viola Kung also acquits herself with distinction for pharmaceutical and biotechnology companies, specialising in patent procurement; she knows how R&D labs work, having spent over a decade in them herself, which ensures she can speak on a oneto-one level with inventors.
Quinn Emanuel Urquhart & Sullivan LLP
“The breadth and quality of Quinn Emanuel’s trial team promote healthy internal discussion and debate about strategy. You can count on the firm to have thought through each critical litigation decision from a variety of different angles, and to come up with the best and most tactical approach. Its agility also enables it to pivot quickly when the circumstances call for it.” The crack patent litigation outfit has some of its best trial lawyers stationed in California, including Victoria Maroulis and Kevin Johnson, who have been
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representing Samsung Electronics against Evolved Wireless in an infringement matter relating to five patents that Evolved alleges are essential to the LTE cellular standard; and fellow Silicon Valley attorney Claude Stern, who recently handled a critical case for autonomous vehicle start-up WeRide against two former employees and their new company, AllRide, obtaining two preliminary injunctions against the defendants. Holding it down in San Francisco, meanwhile, are national IP litigation practice co-chair Sean Pak and Charles Verhoeven, the head of the Northern California offices and an otherworldly trial lawyer with multiple billion-dollar wins on his record.
Ropes & Gray LLP
Complementing its district court litigation practice with highly specialised ITC and post-grant offerings, Ropes & Gray has proven itself a decisive winner wherever a patent dispute lands. Its life sciences practice has come on in leaps and bounds recently, thanks to the efforts of its East Coast lawyers; while out in California, special operatives such as James Batchelder and Andrew Thomases keep the firm hot on the radar of major technology companies. From a client perspective, though, east or west hardly factors into the equation, such is the seamlessness of the collaboration across offices. Batchelder, for example, has linked up with DC-based ITC ace Matt Rizzolo in representing Emerson Electric in a long-running battle with SIPCO concerning Emerson’s smart wireless products; recent wins include a January 2020 initial determination of no violation at the ITC and an August 2020 inter partes review result finding all claims of one of SIPCO’s asserted patents unpatentable. The Emerson Electric ITC and PTAB work, underlying which is a district court litigation, is an excellent example of the group’s multi-forum abilities, team approach and international proficiency: cooperating with German counsel, Batchelder and his colleagues also secured a judgment of non-infringement in their client’s favour before the Mannheim Regional Court. Thomases has also been partnering with Rizzolo to represent content streaming and device company Roku in various mission-critical suits, including most recently an ITC complaint filed by Universal Electronics. Ropes & Gray is also acclaimed for its dependability in technology and patent transactions scenarios. Making her debut in the IAM Patent 1000 this year, Megan Baca is the deals maven in California. Her recent biopharmaceutical engagements include advising a US client on a non-exclusive worldwide IP licensing agreement with a UK-based company; while on the high-technology side, she assisted Qorvo – a leader in radio frequency solutions – with numerous matters,
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United States: California including its acquisition of Decawave, a pioneer in ultra-wideband technology.
Schwegman Lundberg & Woessner PA
Firms don’t get as clear a look into competitors’ prosecution offerings as they do in the head-to-head practice of litigation, making peer feedback in this space harder to come by; that said, there’s never any shortage of recognition for the quality on offer at Schwegman. The innovative, technologically advanced boutique of 120 experienced attorneys and agents procures cast-iron patents that confer a distinct business advantage on their holders. Andre Marais is a magnet for Silicon Valley companies, but has an international reputation that draws in clients from Germany, China and elsewhere. He has a complete command of networking, software, communications and electrical technologies. See p1724 for firm profile
Sheppard Mullin Richter & Hampton LLP
Newly added to the California prosecution table this year, Sheppard Mullin takes care of the portfolio needs of some of the biggest names in technology. Silicon Valley-based James Soong represents Facebook and Lyft and, for both, has obtained a significant number of patents protecting their most critical innovations. Soong is blessed with rich global IP strategic expertise and is a former in-house counsel whose business sense chimes with clients. As a trusted adviser, Lorna Tanner is equally essential to her pharmaceutical and biotechnology followers, including Gilead Sciences, whose breakthrough hepatitis C drugs she is responsible for protecting. Both Soong and Tanner play a strong hand in the firm’s post-grant practice, which is recognised as one of the best in the country representing petitioners and one of the most successful overall. Central to this is Silicon Valley managing partner Harper Batts, who comes in for loud applause: “Harper is detailed oriented, extremely efficient, effective at communication and a great oral advocate. He knows every PTAB decision, which helps him keep his strategies current. He also understands the propensities of PTAB judges on specific issues.” Steven Korniczky and Martin Bader are also elite post-grant performers and, like Batts, excellent all-round litigators, too. Lately, they have won a significant number of matters on behalf of HTC against INVT SPE – a patent assertion company funded by Fortress Investment Group – in the ITC and at the PTAB. They also handled a complex case on behalf of u-blox, a Swiss developer of cellular modules used in automobile navigation systems, which alleged that Sisvel had violated antitrust law and used its monopoly of SEPs for cellular
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technology to demand unreasonably high royalty rates; the two companies entered into a worldwide, non-exclusive patent licence agreement in September 2020. Licensing disputes are something of a forte for the pair, who have also been representing Continental Automotive Systems in accusing various patent holders of standard-essential 2G, 3G and 4G cellular patents of colluding to artificially inflate royalties.
Sidley Austin LLP
Sidley Austin’s West Coast IP litigation team regularly makes the headlines, for all the right reasons. The endeavours of Michael Bettinger have everything to do with this: the eminent trial lawyer leads the group and puts in resonant performances on behalf of industry behemoths such as Microsoft and Amazon. For the latter, he has gone up against high-flying Texas-based outfit McKool Smith as the representative of Speedtrack, which alleges that the faceted search feature on commercial websites infringes its patent; for the past 10 years, Amazon has aggressively led the defence effort in the case, which has been filed against a number of other companies offering e-commerce services. Vernon Winters is another litigator for whom trial success is a recurrent storyline. He’s done some big things in the life sciences and, in a biosimilar litigation against Sandoz, recently won a favourable Federal Circuit ruling of validity of two Amgen and Immunex patents that describe and claim its blockbuster rheumatoid arthritis drug Enbrel and methods for making it; Amgen’s stock price increased by more than 8% upon news of the result. Big-ticket instructions are very much the order of the day for Sidley’s technology and IP transactions specialists, too. Global co-chair Glenn Nash represents Facebook in numerous strategic alliance deals with key technology partners such as Google, Samsung and Apple; and in deals with handset manufacturers and telecommunications companies. Joshua Hofheimer works across many industries, but has been on a sparkling run of form in the life sciences of late, including representing GlaxoSmithKline in a collaboration with and equity investment in Lyell Immunopharma to develop new technologies to improve cell therapies for cancer patients.
Sullivan & Cromwell LLP
Sullivan & Cromwell stands tall as one of the world’s best for technology deals. It comes close to perfection in its stewardship of complex standalone technology and patent transactions, as well as larger corporate deals, thanks in large measure to the leadership shown by “top IP strategist and innovative attorney” Nader Mousavi. Connecting with New York partner Mehdi Ansari, he recently represented DISH Network in its
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United States: California acquisition of the Boost pre-paid mobile business of Sprint for $1.4 billion in cash. Mousavi started his career as the general counsel of a telecommunications software company and works extensively in the TMT field, but he’s unbounded in terms of industry sector, technical subject matter and transaction type – he’s simply an amazing all-rounder.
Susman Godfrey LLP
Undaunted by the most challenging cases, Susman Godfrey has a hearty appetite for bet-the-company patent litigation. Its practitioners relish the opportunity to present in court and seize it with style while delivering on substance. Included in the IAM Patent 1000 California firm rankings for the first time this year, it also has a new face in the guide in Meng Xi, a recently promoted partner who has flourished with her newfound responsibilities. “Meng prepares very well-reasoned, highly effective briefs in both trial and appellate settings, and her oral advocacy is superb. She is also an excellent contract drafter and negotiator, which is a skill not commonly found in trial advocates. Her extensive technical background is a further benefit.” She has been an integral part of trial teams litigating on behalf of Personalized Media Communications – the owner of one of the world’s most valuable patent portfolios – in a series of cases pending in the Eastern District of Texas against streaming media providers Google, Netflix and Akamai; and for Vaporstream against SnapChat subsidiary Snap. Xi is following in the footsteps of managing partner Kalpana Srinivasan, who makes her sophomore appearance in the rankings. An exceptional leader, Srinivasan is taking the patent litigation world by storm.
Weil Gotshal & Manges LLP
As a national platform for high-dollar patent litigation, Weil turns the heads of the loftiest technology companies. Without making a song and dance of it, the ensemble diligently builds compelling trial themes and advances its clients’ business objectives. This is the modus operandi of Edward Reines, who co-heads the US patent litigation practice. Solid gold in the IAM Patent 1000, Reines is a calm and collected litigator with a marvellous trial performance history. On the biotechnology front in 2020, he secured a major Federal Circuit victory for long-time client Bio-Rad Laboratories and the University of Chicago, upholding a $24 million patent jury verdict – obtained in 2018 against 10X Genomics – and a permanent injunction against virtually all of its adversary’s infringing products. Fellow Silicon Valley lawyer Anne Cappella also litigates at the highest level, but plays a broader role in
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dedicating a substantial part of her practice to strategic IP counselling – she takes charge of Weil’s efforts in this regard. Leading on the transactions front, meanwhile, is Karen Ballack, an “outstanding drafter and negotiator whose deep knowledge of and experience with intellectual property proves invaluable in many types of deals”. Sources also highlight the superb training that Ballack gives to her associates, who “display the same professionalism and high standards as Karen does”. In advising Apergy on the technology and IP aspects of its Reverse Morris Trust acquisition of ChampionX Holding, she oversaw, among other things, the acquisition of 1,700 patent assets worldwide and a complex patent cross-licence arrangement.
White & Case LLP
White & Case unveiled Jonathan Lamberson as its new signing in Silicon Valley in September 2020. The former Fish & Richardson lawyer brings cutting-edge SEP and FRAND expertise to the team, along with extensive trial experience. Courtroom know-how was already in plentiful supply at the firm which, in Bijal Vakil, has another assured litigator on the West Coast, as well as an adept all-round strategist. Vakil is a vital cog at the firm, having led its Silicon Valley office for a lengthy period, founded its Taiwan practice and played an important role on the diversity and inclusion front. With a flair for the fine print of licensing agreements, Vakil also leans into a gilt-edged transactions practice, crucial to the success of which are Daren Orzechowski and Alexander Touma. Versatility characterises Orzechowski’s service, in terms of the clients he serves, the deals he brokers and the technologies he handles – nothing fazes him. A previous stint as an inhouse counsel has given Touma an appreciation of the practical and business realities faced by his clients. See p1740 for firm profile
Wilmer Cutler Pickering Hale and Dorr LLP
WilmerHale puts in frequent winning appearances in all the main patent venues and within its walls are some of the very best district court litigators, ITC specialists, post-grant proceedings professionals and appellate advocates the United States has to offer. Take Los Angeles partner James Dowd, for example: he’s a “seasoned and skilled trial lawyer” who is “willing to roll up his sleeves and do what’s necessary to master the technology and prior art so as to be able to put forth the best arguments”. “He is direct and succinct, and has a strong courtroom presence, as well as being very easy to work with.” Palo Alto-based Mark Selwyn, Sonal Mehta and Robert Galvin are all fashioned from the same material as Dowd. Selwyn serves as co-chair
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United States: California of the IP litigation group and has been a rock for the firm and its prestigious patrons since he joined in 1994. A much more recent arrival, Mehta has entered prime time and is fast establishing herself among the crème de la crème of Californian patent lawyers. Galvin is a must for life sciences and software suits.
Wilson Sonsini Goodrich & Rosati
Built to service the total corporate, IP, litigation and regulatory needs of ground-breaking innovators, Wilson Sonsini has made an indelible impression on the US patent landscape. The firm is especially well known for its rare transactional IP faculties and specialised, high-calibre practitioners, such as Kenneth Clark and John Wehrli, who shepherd transformative deals across the line. Both lawyers are fluent in the life sciences and responsible for strategic alliances that have the industry buzzing. Primarily supervising prosecution for pharmaceutical and biotechnology companies, Matthew Bresnahan also gets involved in transactions and was recently part of a team that advised Prometheus Biosciences on IP issues relating to its initial public offering. James Heslin is the centre of gravity for a vibrant medical technology practice; he fulfils a similar role to Bresnahan as a 360-degree counsellor. Edward Poplawski and James Yoon ensure Wilson Sonsini’s high-level engagement in complex patent litigation.
Winston & Strawn LLP
Winston & Strawn’s attorneys are famous for their imposing courtroom presence; an equally important ingredient in their success is the way in which they immerse themselves in the technologies at issue to understand them at the deepest possible level. “Terrific” patent litigator Michael Rueckheim is a case in point: “He has a keen technical ability along with practical judgement and a great ability to manage and run large teams – a combination of talents that is hard to find.” He is a central member of a California squad that includes Kathi Vidal, with whom he has been litigating extensively: they closed out an ITC case with a favourable settlement on behalf of Olympus Corporation regarding advanced, minimally invasive therapeutic and diagnostic technologies; and are representing VMware against Intellectual Ventures in two litigations and related PTAB proceedings involving 10 networking and virtualisation technique patents. Vidal is one of Winston’s top guns and serves as Silicon Valley managing partner. The group is full of big names, with additional firepower supplied in abundance by David Enzminger, Michael Tomasulo and Nimalka Wickramasekera. Coming in for praise, Enzminger is “deeply thoughtful about the most
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efficient and effective approaches to patent litigation and strategic case management. He responds quickly and solves complicated problems in practical fashion”. After five years of litigation – including a dozen inter partes reviews and a trip to the Federal Circuit – he and Tomasulo won a decisive victory for Take-Two Interactive Software in dismissing all claims made by a patent assertion entity alleging that Take-Two’s multi-player technology for its Grand Theft Auto and NBA 2K videogame franchises infringed its patents. Wickramasekera’s highlights include defeating a preliminary injunction sought by Nuvasive, a competitor to her client Alphatec, thereby keeping the latter’s new spinal surgery device on the market. See p1744 for firm profile
Womble Bond Dickinson (US) LLP
Intellectual property is a central pillar of Womble Bond Dickinson’s wider legal offering in California – in fact, it accounts for as much as 85% of its output. On the West Coast, it has assembled a cadre of precision prosecutors who undertake complex work for high-profile companies. For example, IAM Patent 1000 debutant Kevin Shao serves as outside patent counsel for Dell EMC, handling US and foreign patent procurement activities and managing more than 800 matters worldwide. Shao is a former electrical engineer, software developer and software consultant whose technology and industry experience stand him in excellent stead. James Scheller also shines on software matters within his broader electronics, computer science, internet and medical device practice. He’s a veteran with a fine-milled understanding of patent value. So too, all-seeing strategic counsellor Dan Ovanezian, who is part of a team serving as global preparation and prosecution counsel to enterprise data storage company Pure Storage. PTAB trial work is the other major focus locally, with Brenton Babcock in the driving seat. Exercising his powers of persuasion at the PTAB, he recently lodged an ex parte appeal and reversed an examiner’s final rejection of client Komori Corporation’s patent. His current caseload includes a matter for the Korean Advanced Institute for Science & Technology (KAIST), which retained him to lead an effort to reverse the USPTO’s rejection of its patent claims which occurred following an ex parte reexamination request by Samsung filed in the wake of KAIST’s $400 million jury verdict against it.
Other recommended experts
Craig Allison and Jonathan Baker form a superb litigation team at Dickinson Wright. They design and execute smart strategies, litigate vigorously, have an
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United States: California excellent record winning critical and heavily contested motions and acquit themselves with distinction all-round. Lately they have been putting in a strong performance defending Roku in multiple lawsuits, including one in the ITC, filed by Universal Electronics. Increasing in stature as a patent litigation boutique, Armond Wilson is primed and ready for complex court litigation, PTAB battles and Federal Circuit appeals. Michelle Armond – who recently represented Zoom Video Communications in a case relating to video conferencing technology – is brilliant on both the tech and the presentation. She and fellow founding partner Douglas Wilson, an Austin-based practitioner and fellow IAM Patent 1000 inductee, form a dynamic strike force. Duane Morris trial lawyer Stuart Bartow has had some notable successes for Trend Micro, including against Intellectual Ventures, and is currently representing it in the Western District of Texas against claimant Eighth Street Solutions. His strategies are aggressive, but thoughtful. In the firm’s Palo Alto office, colleague Philip Woo is an all-rounder with a wealth of litigation, prosecution and post-grant expertise. On the portfolio development side, Woo undertakes significant work for LG Electronics, including in the connected vehicle area, where he leans heavily on his standardsrelated knowledge. Asim Bhansali’s name is on the winning side of some oft-cited patent decisions; his number is dialled when there’s a lot on the line, thanks to the level and extent of his courtroom experience and know-how. He came up in the game at Keker & Van Nest, but now runs things at Kwun Bhansali Lazarus. John Brockland of Hogan Lovells is a technology transactions leader who has closed myriad big deals for leading technology companies. One of his 2020 highlights involved supporting Intel in connection with the IP aspects of its $900 million acquisition of Moovit – a deal overseen by colleagues in the corporate department. Aaron Capron builds portfolios from the ground up that create commercial opportunities for clients while limiting the manoeuvrability of their competitors. He can take seemingly unpatentable inventions and prosecute them to successful grant where others can’t – something he has done for innovative digital health solutions company Grand Rounds. He and Erik Puknys are Finnegan’s rainmakers in Silicon Valley and partner closely with patrons to protect them worldwide; they jointly support ASML Netherlands on all aspects of prosecution and patent strategy. Ko-Fang Chang joined Weave Austin Villeneuve Sampson in July 2020, following a switch from Kilpatrick Townsend. A savvy business counsellor and seasoned post-grant lawyer, he brings a lot to his new digs. Siegmund Gutman chairs the life sciences patent group at Proskauer – and
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it’s a good one (think of Fangli Chen in Boston and Daryn Grossman in New York). The star litigator in the practice, Gutman is an accomplished trial lawyer with reassuringly well-rounded strategic counselling and Food and Drug Administration regulatory expertise. He has carved out a sterling reputation in the biosimilars space and is representing Amgen in a high-profile matter under the Biologics Price Competition and Innovation Act concerning its development and commercialisation of a biosimilar to Genentech’s Avastin monoclonal antibody cancer therapy, one of the world’s blockbuster drugs. Shawn Hansen “has a strong command of US patent law and is an excellent litigator and well-spoken, succinct presenter who makes complex issues easy to understand. He does a superb job managing large cases and provides smart strategic advice”. He is based in Nixon Peabody’s Los Angeles office, down the hall from life sciences co-chair Seth Levy, who also comes in for enthusiastic praise: “Seth is very down to earth and a great communicator. He has specialist expertise advising universities and research institutions on strategic prosecution and portfolio management – and his licensing abilities are unmatched.” Flying the flag of BakerHostetler in Orange County, Mark Krietzman showcases an incredibly diverse IP skillset in handling prosecution, strategic advisory, transactional and contentious briefs involving patents and trademarks. He’s a straight shooter who understands how to minimise business risk. Squire Patton Boggs has a veteran litigator in Ronald Lemieux, who has represented A-list companies in IP disputes well into the triple digits. He has gone the distance at trial on many occasions and can back up his wins at the Federal Circuit. A pivotal member of Shearman & Sterling’s IP transactions group, Emma Maconick utilises a well-rounded patent and technology commercialisation and data privacy skillset to assist marquee clients such as Facebook Technologies, which she advises on product privacy, data security, intellectual property and other matters. Anchoring the west coast litigation practice, meanwhile is Kieran Kieckhefer, a savvy and experienced litigator who excels at getting to grips with complex and diverse technologies, cross-examining witnesses, and leading trial teams. Aside from running a dynamic practice, she makes an important contribution to the advancement of women in the legal profession. Fabio Marino is “an experienced litigator who thoroughly understands technology and is extremely well versed in patent law and USPTO procedures. He is highly devoted to his cases and his clients”. The Polsinelli partner has an affinity for complex computer-related technologies and serves as lead counsel representing Radware in litigation against F5 Networks. The successor to the
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United States: California Ropes & Gray rights management practice, boutique Haley Guiliano has a focus on prosecution, portfolio development and IP commercialisation. However, it is fielding an increasing volume and array of contentious instructions, many of which land on the desk of career litigator and trial lawyer Richard McCaulley. He has a pristine track record in the pharmaceutical and medical device spheres, given his combination of relevant technical expertise and advocacy skill. His colleague in San Jose Joshua Van Hoven focuses on the prosecution and counselling side, but also handles contested proceedings at the USPTO with finesse. FisherBroyles attorney Alan Minsk represents a diverse catalogue of clients from small to large and in many technological disciplines. He dials in the right strategies for each, neatly tailoring them to the wider commercial imperative; while his technical fluency means he is frequently called to support invention mining efforts. James Nelson takes the reins of Venable’s San Francisco office. An astute corporate attorney with a specialisation in technology and IP transactions, he understands the business of patents. John Neukom anchors Skadden’s patent litigation practice out west. He’s a veteran of the smartphone wars, has handled major trade secret litigation in the autonomous vehicle area and has represented a host of major technology names in dozens of suits. Previously based in Texas, Michael Newton of Alston & Bird recently took up residence in the firm’s Silicon Valley office. He’s an integral member of a potent litigation group and one of its most experienced trial lawyers in the Eastern District of Texas, where he recently secured a rare summary judgment ruling from Judge Gilstrap on behalf of Nokia – a client which he also supported in a major ITC investigation, to great effect. Alston & Bird maintains a robust patent prosecution and portfolio management practice too, which is anchored on the West Coast by smart strategist Ardeshir Tabibi, a favourite of the California Institute of Technology. Buchalter special counsel Cecily Anne O’Regan is a business-minded patent attorney who is warmly praised for her “deep strategic insight and invaluable coaching skills”: “She can put in place foundational patents on which rest the success of new business ventures – what she does is of unquestionable value.” She represents emerging companies in the medical device, biometric, software and clean technology arenas. Another highly rated Buchalter pro is IP co-chair and dynamic patent and trademark litigator Rick Taché: One client comments: “Rick is the smartest IP guy I have ever known. He can look at an aspect of a product’s function he doesn’t know about and immediately ask the most penetrating
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questions about the invention and its possible improvement – he’s an incredibly quick study. His service ethic is tremendous, which is of paramount importance – when we need him, he is always there for us.” Echoing similar sentiments, another adds: “Rick’s patent knowledge is second to none and his commercial expertise is self-evident, too. He can do in two weeks what would take other larger firms four weeks to complete – his speed is critical to us. He communicates regularly and is very clear on strategy, which is of immense comfort.” Matthew Powers is a fabled patent litigator and the founding partner of Tensegrity Law Group. A magician at trial, he pulls through in the heat of the moment. In January 2020, Jeannine Yoo Sano made the switch from White & Case to Axinn, joining a stacked bench of nationally reputed patent litigators who, like her, demonstrate refined trial skills. An experienced lead counsel with a number of firsts on her CV, she’s unafraid of tackling difficult cases involving challenging subject matter in any forum. Rimon partner Dale Rieger is a trusted adviser to life sciences companies; his portfolio management, litigation counselling and transactional skills are all top drawer. A household name in Silicon Valley, portfolio developer Robert Sachs has specialised knowledge of Section 101 issues and SEPs, putting him in hot demand as a strategic counsellor. Brown Rudnick onboarded David Stein as a partner in Orange County in August 2020. The former Greenberg Gross litigator knows how to handle himself in the courtroom, having tried 15 cases to verdict. He has an agile technical mind and thrives in complex cases in which the skill of breaking down technology for laypersons is especially important. For companies looking to build out their portfolios in the areas of AI, automotive technologies, software and telecommunications, among others, Nick Transier of Patterson + Sheridan is a discerning choice. The former systems engineer – and auto enthusiast – lives and breathes the technology, but has a good strategic head on his shoulders. Lee Van Pelt has been in the thick of patent practice in Silicon Valley for two-plus decades, during which he has prosecuted extensively and represented the interests of technology investors. He is a founding partner of Van Pelt, Yi & James. Joseph Yang of PatentEsque Law Group practises at the frontier of developments in IP law, technological innovation and the business of licensing. He is highly recommended for his expertise in convergence deals in which businesses that might not traditionally connect come together.
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Armond, Michelle
Founding Partner – Armond Wilson LLP michelle.armond@armondwilson.com | armondwilson.com
Michelle Armond is a founding partner of the IP litigation boutique Armond Wilson LLP. An award-winning litigation attorney specialising on IP disputes, litigation, inter partes reviews and appeals, Ms Armond focuses on patent, trademark and trade secret matters. She has handled disputes covering a wide array of industries and technologies including electronics, telecommunications, software, gaming, mechanical, electro-mechanical, energy, automotive, medical devices, consumer and household goods. Ms Armond is a registered patent attorney and Caltech-trained electrical engineer whose litigation successes, including defence wins and over $500 million in jury verdicts, have been featured in The New York Times, The Wall Street Journal, The Economist, the Daily Journal and Law360. She has prevailed as lead counsel in inter partes review proceedings, IP litigation in federal court and appeals before the US Court of Appeals for the Federal Circuit. Ms Armond is a media commentator, thought leader and invited speaker, and has served on the faculty for the Patent Resources Group teaching a course covering IP litigation, inter partes reviews and Federal Circuit appellate law to practising attorneys. Prior to entering private practice, Ms Armond clerked at the Federal Circuit Court of Appeals in Washington DC. She began her law practice at Irell & Manella LLP and was partner and practice group leader at the national IP firm Knobbe Martens Olson & Bear LLP.
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Armond Wilson LLP 895 Dove Street Suite 300 Newport Beach CA 92660 United States T +1 949 932 0778 Professional associations • Federal Circuit Bar Association • PTAB Bar Association
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Brady, Richard
Vice President – Intensity, LLC richard.brady@intensity.com | www.intensity.com
Richard Brady, PhD, is a vice president at Intensity with expertise in microeconomics, applied statistics and financial analysis. Dr Brady has extensive experience in high-stakes litigation matters involving the life sciences, biotechnology, consumer technology, telecommunications and tobacco industries. Dr Brady has taken the lead on all of Intensity’s matters at the International Trade Commission and in several highprofile cases in US district courts. Notably, he managed Intensity’s work on the Juno Therapeutics v Kite Pharma matter from the pre-litigation phase through trial completion and was instrumental in helping secure a full damages award for Intensity’s client, Juno Therapeutics. According to Intellectual Asset Management (IAM), Dr Brady “impresses with his creativity” and he is often sought to apply his expertise on economic issues pertaining to IP disputes, financial matters, contract disputes, and antitrust and competition. His experience includes: • lost profits; • reasonable royalties; • economic domestic industry; • unjust enrichment; • competition; • public interest analysis; • commercial success; • FRAND licensing; • irreparable harm; and • loss in company value. Dr Brady was recognised as a top US economic expert and rising star by IAM in 2020. He earned his PhD in economics from the University of California, San Diego, his MA in economics from Duke University, his MS in finance from the University of Memphis and his BS in finance and management from Christian Brothers University. Dr Brady has published economic research in several peer-reviewed academic journals – including Econometrica, Social Choice and Welfare, Games and Economic Behavior and Judgement and DecisionMaking.
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Intensity, LLC 12730 High Bluff Drive Suite 300 San Diego CA 92130 United States T +1 858 876 9348 F +1 858 876 9102 See firm profile p1698 Professional associations • AEA • Econometric Society • LES
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Chernichaw, Adam
Partner – White & Case LLP achernichaw@whitecase.com | www.whitecase.com
Adam Chernichaw is one of the founding members of White & Case’s global technology transactions practice. For over 20 years he has advised clients across a number of industry sections in structuring and negotiating innovative and transformative technology, collaboration and service transactions to help execute their strategic goals, to safely protect their assets and to avoid potential pitfalls across multiple jurisdictions. Mr Chernichaw has extensive experience in the fintech and payments space, as well as IT and business process outsourcing transactions. He represents a variety of global businesses across a number of industry sectors, including financial services, social media, life sciences, food services, commercial airlines and telecommunications. Mr Chernichaw also assists businesses in the sports, leisure and entertainment industries when structuring and negotiating business deals, working to achieve the best possible results around joint ventures, licensing, marketing and publishing agreements. His advisory work spans classic IT and business process outsourcings, cloud and ‘as a service’ offerings, payment processing services (including bank identification number sponsorship arrangements, peer-to-peer payments systems and other payment services), mergers and acquisitions and joint ventures. Mr Chernichaw has had the privilege of serving as a trusted adviser to a diverse range of US and international clients, including Facebook, WhatsApp, Deutsche Bank, RBC, Barclays, Gilead, Verizon and Intel.
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White & Case LLP 1221 Avenue of the Americas New York NY 10020-1095 United States T +1 212 819 8634 See firm profile p1740
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De Vos, Daniel M
Partner – Nicholson De Vos Webster & Elliott LLP dan@ndwe.com | www.ndwe.com
Daniel M De Vos is a partner at Nicholson De Vos Webster & Elliott LLP located in Silicon Valley. He has a background in computer science and over 20 years’ experience as a registered US patent attorney, counselling clients on IP matters. He has worked directly with start-ups through acquisitions and initial public offerings (eg, Meraki, Valicert, Malleable Technologies, Cavium Networks and Data Domain), as well as supporting in-house counsel of medium-sized and Fortune 100 companies. Mr De Vos provides a broad range of patent-related services, including managing patent portfolio development, conducting offensive and defensive patent reviews, rendering opinions on thirdparty patents, conducting patent post-grant proceedings and providing technical support during litigation. Four patents that Mr De Vos drafted or prosecuted have been enforced through litigation. One of these patents was awarded the client’s 2002 Patent of the Year Award. In addition, Mr De Vos has participated in inter partes reviews, inter partes re-examinations and ex parte re-examinations on behalf of prestigious companies (eg, Facebook, Guidewire and Autodesk). Mr De Vos has been listed in the IAM Patent 1000 (2013-2020), IAM Strategy 300 (2017-2020) and IAM Strategy 250 (2009-2011). In addition, he was named in Managing Intellectual Property’s 2014 IP Stars: Top US IP Lawyers. Mr De Vos works with technologies including software, network devices, network security and processors.
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Nicholson De Vos Webster & Elliott LLP 99 Almaden Blvd Ste 710 San Jose CA 95113 United States T +1 408 675 5565 See firm profile p1714 Professional associations • ABA
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Doshi, Dipu A
Partner – Blank Rome LLP ddoshi@blankrome.com | www.blankrome.com
Dipu A Doshi is a partner in Blank Rome’s Washington DC office and cochair of the firm’s national IP practice. Mr Doshi is an experienced litigator who concentrates his practice on patent litigation in US district courts as well as inter partes reviews before the Patent Trial and Appeal Board. In addition to his patent litigation practice, Mr Doshi also regularly advises clients in matters relating to patent portfolio management including due diligence, client counselling and patent prosecution. Mr Doshi represents an international clientele, including companies from Europe, the United States, Japan and Taiwan. His practice focuses on a variety of technological fields, with an emphasis on the chemical industry’s innovative green technologies in fields such as refrigerants, polymers, rechargeable batteries and semiconductor devices (including LED technology). Prior to practising law, Mr Doshi was a research associate at MedImmune Inc. While at MedImmune, he participated in several projects related to the development of novel vaccines derived from biological molecules. His tasks included optimising various cell culture lines for the expression and purification of monoclonal antibodies, antigens and other proteins. He also has experience in the expression and purification of clinical grade biological materials. Mr Doshi received his law degree from George Washington University in Washington DC and earned a master’s in biology from Johns Hopkins University.
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Blank Rome LLP 1825 Eye Street North West Washington DC 20006 United States T +1 202 420 2604 See firm profile p1658
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Hansen, John L
Vice President – TM Financial Forensics, LLC jhansen@tmfin.com | www.tmfin.com
John L Hansen is a vice president and founding member of TM Financial Forensics LLC. Mr Hansen has more than 30 years’ experience consulting for companies on economic, accounting and damages matters in a wide variety of industries. Mr Hansen has analysed and addressed claims for lost profits, price erosion, reasonable royalties, unjust enrichment, increased costs and diminution of asset, and business value in a variety of circumstances and industries related to breach of contract, class action, IP infringement, antitrust, unfair competition and other allegations. Mr Hansen’s IP experience includes evaluating the financial impact of alleged infringement and misappropriation for patents, trademarks, copyright and trade secrets. He has assisted clients with Section 337 investigations before the US International Trade Commission (ITC) addressing domestic industry, remedy, bond and commercial success issues. Additionally, Mr Hansen has consulted on the valuation and licensing of intellectual property. Mr Hansen has analysed the operations, financial condition and profitability of businesses in a variety of circumstances. He has prepared and analysed numerous valuations of businesses and business interests, the viability of continuing operations, trend and ratio analysis, cost of capital and discount rates, comparable companies and transactions, discounted cash flows and valuation multiples. Mr Hansen has also conducted forensic accounting analyses, including analysing the flow of funds and assets between entities and performing detailed tracing of transactions and documentation of their accounting treatment. Mr Hansen has testified as an expert on damages and economic issues in deposition, trial and arbitration in state courts, federal courts and before the ITC. Mr Hansen is a certified public accountant licensed in the State of California, certified in financial forensics, a certified licensing professional and a chartered global management accountant. Mr Hansen graduated with honours from Santa Clara University (SCU) with a BSc in commerce (major in finance and minor in economics), and currently serves on the advisory board for the Leavey School of Business at SCU.
1340 IAM Patent 1000
TM Financial Forensics, LLC 3595 Mt Diablo Blvd Suite 250 Lafayette CA 94549 United States T +1 415 692 6373 Professional associations • AICPA • CalCPA • LES
www.IAM-media.com
Kieckhefer, L Kieran Partner – Shearman & Sterling LLP kieran.kieckhefer@shearman.comm | www.shearman.com
L Kieran Kieckhefer is a partner in the litigation group of Shearman & Sterling LLP. Her practice focuses on patent, software copyright and technical trade secret litigation in federal district and state courts. Ms Kieckhefer has experience across a broad spectrum of technologies and has handled cases in fields such as semiconductors, software, consumer electronics, networking and cybersecurity. Ms Kieckhefer is an experienced trial attorney. She has participated in a dozen trials and first-chaired half of them. She has tried patent, trade secret, breach of employment contract and Lanham Act claims. She also has a breadth of experience before federal appellate courts, including the Ninth Circuit, Federal Circuit and the US Supreme Court. Ms Kieckhefer plays an active role in the support, mentorship and retention of women in law, having co-founded the Retention of Women in Intellectual Property Taskforce. In 2012 she had the privilege of serving the City and County of San Francisco as an assistant district attorney. She has also played an instrumental role in the launch of a new firm podcast titled “Barrier Blasters”, a series dedicated to enhancing diversity and inclusion in the communities in which we live and work. Ms Kieckhefer has been recognised by Benchmark Litigation numerous years. Most recently, she was listed in the magazine’s “40 & Under Hot List”, which honours “the top young talent in their respective litigation communities in the US”.
Shearman & Sterling LLP 535 Mission Street, 25th Floor San Francisco CA 94105-2997 United States T +1 415 616 1124 See firm profile p1726 Professional associations • ChIPs – Chiefs in Intellectual Property • Federal Bar Association • Retention of Women in Intellectual Property Taskforce Sample client list • Western Digital • Oracle • Price fx • Bright Pattern • Oh My Green / Garten • USA Dawgs
www.IAM-media.com
IAM Patent 1000 1341
Lamberson, Jonathan
Partner – White & Case LLP jonathan.lamberson@whitecase.com | www.whitecase.com
Jonathan Lamberson is a partner in White & Case’s global IP group based in the firm’s Silicon Valley office. As a trial attorney, Mr Lamberson has attended over a dozen patent jury trials in districts around the country, including as lead trial counsel for Microsoft in Microsoft v Corel, where a jury in the Northern District of California returned a verdict that Corel had wilfully infringed six Microsoft patents. Mr Lamberson is also a firm expert on fair, reasonable and nondiscriminatory damages. He led the damages team in the Huawei v T-Mobile litigation, which involved the assertion of 12 standardsessential patents relating to LTE technology. Mr Lamberson is familiar with the practices of standards bodies, including the Institute of Electrical and Electronics Engineers and the European Telecommunications Standards Institute. Mr Lamberson also has a significant appellate practice. He has participated in several appeals and has argued before the Federal Circuit and Ninth Circuit. He worked on the appeals in Williamson v Citrix, where the Federal Circuit went en banc to significantly change the law for means-plus-function claiming. Mr Lamberson has a significant post-grant practice as well. He is a member of the USPTO Patent Bar and has participated in multiple inter partes review proceedings, arguing before the Patent Trial and Appeal Board. Lastly, Mr Lamberson has participated in a number of meaningful pro bono cases in areas including constitutional rights, discrimination, class action and immigration matters. One of his pro bono cases was named a “Top 100 Settlement in California in 2017” by TopVerdict.com. In another matter, Mr Lamberson was able to obtain asylum for a fiveyear-old unaccompanied minor from El Salvador who fled violence and persecution in his home country.
1342 IAM Patent 1000
White & Case LLP 3000 El Camino Real 2 Palo Alto Square, Suite 900 Palo Alto CA 94306-2109 United States T +1 650 213 0300 See firm profile p1740
www.IAM-media.com
Levy, Seth
Partner, Co-chair, Life Sciences Practice – Nixon Peabody LLP slevy@nixonpeabody.com | www.nixonpeabody.com
Seth Levy is a partner and co-chair of Nixon Peabody’s life sciences practice. He represents academic, healthcare and research institutions in connection with their technology transfer and clinical research programmes. Mr Levy also represents companies that do business with these organisations across a range of IP and business transactions. Leveraging his background in biological engineering, Mr Levy works with his clients to procure patents or otherwise protect their intellectual property, license that intellectual property and enforce it against infringers. He has unique experience in patent licensing and direct enforcement campaigns on behalf of universities. Mr Levy also regularly advises his clients on the operational aspects of their technology transfer programmes, by establishing policies and procedures, coordinating various types of investment activities, addressing issues associated with complex research collaborations, and supporting innovative approaches among academic institutions to translate science from the lab to the marketplace. In addition, Mr Levy serves as outside general counsel to emerging growth and mid-stage life sciences companies and helps support their businesses in this complex ecosystem. Coordinating with other specialists at Nixon Peabody when needed, Mr Levy guides these clients through their fundraising efforts, IP strategy, partnering deals, board governance matters, as well as a full range of other operational issues.
Nixon Peabody LLP 300 S Grand Ave Suite 4100 Los Angeles CA 90071-3151 United States T +1 213 629 6161 F +1 877 644 1571 See firm profile p1716 Professional associations • Biocom • It Gets Better Project
www.IAM-media.com
IAM Patent 1000 1343
Maconick, Emma
Partner – Shearman & Sterling LLP emma.maconick@shearman.com | www.shearman.com
Emma Maconick is a partner in Shearman & Sterling LLP’s IP transactions and privacy and data protection practices. She also advises clients in the M&A and capital markets practices. She focuses on IP, data protection, privacy and security issues for major technology clients engaged in data and innovation-intensive activities. Ms Maconick’s subject matter expertise is depended on by legal, business and operational teams involved in real and virtual product development, commercial contracts, go-to-market strategies, M&As, strategic alliances, joint ventures, capital markets transactions and corporate and financial investments. Ms Maconick is a trusted adviser and solution provider to the biggest consumer platform operators, hyper-growth companies, fintech and financial institutions, big data and analytics providers, cloud and edge computing operators, ‘everything as a service’ businesses, developers, users and policy makers on artificial intelligence (AI), machine learning, advanced virtual and augmented reality, autonomous mobility manufacturers, hardware and software product developers and investors in all these spaces. Ms Maconick is known for providing pragmatic solutions, rightsizing risk and driving value for her clients, and advising boards, management teams and operators on a broad range of missioncritical matters. She is a thought leader who often speaks, writes and comments on technology, AI and data innovation as an industry, a product and a mindset. IAM Patent 1000 ranks Ms Maconick for her high performance in IP transactions. She is recognised for being sensitive to clients’ risk profiles and the publication notes that “she deftly negotiates deals in the fintech, data and cloud computing areas, among others”. Ms Maconick is a member of the International Association of Privacy Professionals and a board member of UPWARD Women, a global network for executive women.
1344 IAM Patent 1000
Shearman & Sterling LLP 1460 El Camino Real 2nd Floor Menlo Par CA 94025-4110 United States T +1 650 838 3704 See firm profile p1726 Professional associations • International Association of Privacy Professionals • UPWARD Women
www.IAM-media.com
Magic, Peter C
Partner – Desmarais LLP pmagic@desmaraisllp.com | www.desmaraisllp.com
Peter C Magic is the managing partner of Desmarais LLP’s California office. After graduating from Michigan Law in 2008, Mr Magic began his career in the patent litigation department of Kirkland & Ellis LLP in New York City. From 2009 to 2010, Mr Magic served as a law clerk to the Honourable James Ware, district court judge in the US District Court for the Northern District of California, San Jose Division, and afterward rejoined Kirkland. In 2014 Mr Magic joined IP trial boutique Desmarais LLP and moved in 2018 to San Francisco to open the firm’s first office outside of New York City. Mr Magic represents plaintiffs and defendants in patent litigation in a variety of industries. In representing defendants, he has helped clients secure judgments of non-infringement, invalidity and low damages. In representing plaintiffs, he has helped clients achieve substantial settlements, as well as an exclusion order at the International Trade Commission. Mr Magic’s recent work for defendants includes helping Cisco Systems Inc defeat allegations by Egenera Inc that certain Cisco data centre products infringed three patents. Mr Magic and two other partners at Desmarais LLP won a bench trial in which the court found the sole remaining patent in suit invalid for improper inventorship, crediting Mr Magic’s cross examination of a key witness. Mr Magic is a member of the Bars of California, New York, the US Supreme Court, the Court of Appeals for the Federal Circuit and numerous district courts. He is admitted to practise before the USPTO. Education • University of Michigan Law School, 2008, cum laude; Michigan Law Review, associate editor • University of Texas at Austin, MS, computer science, 2004 • The Johns Hopkins University, BS, computer science, 2002
Desmarais LLP 101 California Street San Francisco CA 94111 United States T +1 415 573 1899 F +1 415 573 1901 See firm profile p1672 Professional associations • ABA • AIPLA • NYIPLA
Professional memberships • New York Intellectual Property Law Association • American Intellectual Property Law Association • American Bar Association
www.IAM-media.com
IAM Patent 1000 1345
Marais, Andre
Principal – Schwegman Lundberg & Woessner PA amarais@slwip.com | www.slwip.com
Andre Marais is a registered patent attorney and principal at Schwegman Lundberg & Woessner. He has been included in Intellectual Asset Management’s (IAM) listing of the world’s 1000 leading patent attorneys (2012-2021) and IAM’s listing of the world’s 300 leading IP strategists (2016-2021), both published by Law Business Research. Mr Marais is passionate about architecting, building and managing patent portfolios with his clients. He takes the view that patent portfolios should be valuable, strategic assets that align with a solid business strategy. Having had the good fortune to work closely with a number of Silicon Valley’s most prominent software and companies since their early days, he brings an ‘in the trenches’ perspective to portfolio strategy and growth. His practice focuses on strategic IP counselling and patent prosecution (US and foreign), patent validity, infringement and clearance analyses and opinions, and IP due diligence work – particularly in the networking (including Internet), software, communications and electrical/electronic technologies. He has secured patents for, and currently represents, a number of prominent technology companies based in Silicon Valley and elsewhere, including Germany and China. Mr Marais is a frequent speaker on IP topics and is a co-author of several IP publications.
Schwegman Lundberg & Woessner PA 111 West Saint John Street Suite 1100 San Jose CA 95113 United States T +1 408 278 4042 F +1 408 849 4537 See firm profile p1724 Professional associations • AIPLA • California State Bar Association • Silicon Valley Intellectual Property Association
1346 IAM Patent 1000
www.IAM-media.com
Meyer, Paul K
President – TM Financial Forensics, LLC pmeyer@tmfin.com | www.tmfin.com
Paul K Meyer is president and co-founder of TM Financial Forensics LLC. Mr Meyer has provided consulting and valuation analysis in IP and licensing matters in a wide range of industries, including numerous high-tech assignments. His extensive IP experience includes damages valuation related to alleged infringement and misappropriation of patents, trademarks, copyright and trade secrets. Mr Meyer has consulted on a wide variety of products in many industries, including cellular communications, computer hardware and software, integrated circuits, consumer goods, flash memory, smartphones, pharmaceuticals and medical devices, satellite television, video games, aircraft, athletic footwear and automotive equipment. Mr Meyer has extensive experience in determining royalties for standard-essential technology subject to FRAND requirements. Mr Meyer has testified in over 200 depositions and approximately 75 trials and major arbitrations, including 35 jury trials. He has testified in federal and state court, the London Court of International Arbitration and before the International Trade Commission. Mr Meyer provided successful trial testimony in two of the largest copyright infringement trials in history: • On behalf of the defendant, Mr Meyer provided rebuttal testimony to a $1.8 billion plaintiff damages claim, and the jury awarded only $10 million in copyright damages. • Mr Meyer testified for the plaintiff, an international enterprise software company, in a copyright infringement dispute against a European competitor where the jury returned a $1.3 billion verdict.
TM Financial Forensics, LLC One Letterman Drive Building D Suite P100 San Francisco CA 94129 United States T +1 415 692 6360 F +1 415 391 7251 Professional associations • AICPA • INTA • LES
Mr Meyer is a certified public accountant (California and Virginia) and accredited in business valuation. As an adjunct professor at Stanford University’s School of Civil and Environment Engineering, Mr Meyer has held various appointments over 25 years with the university and has taught a course on financial, valuation and accounting issues. Additionally, Mr Meyer regularly lectures on damages and related economic issues to both industry and academic audiences. A graduate of the University of Virginia, Mr Meyer is an advisory board member for the McIntire School of Commerce and recently served as a board of trustees member for the University of San Francisco (2014-2018).
www.IAM-media.com
IAM Patent 1000 1347
Modi, Ameet A
Partner – Desmarais LLP amodi@desmaraisllp.com | www.desmaraisllp.com
Ameet A Modi is a trial lawyer who focuses on complex patent and technology-related cases. He has led teams through all phases of litigation in a variety of industries, including computer and mobiledevice hardware and software, telecommunications, e-commerce, pharmaceuticals and medical devices. Mr Modi has been with Desmarais LLP since the firm’s inception in 2010 and has been a partner since 2017. Mr Modi’s recent work for defendants includes his representation of Apple to secure complete dismissal of two lawsuits (spanning six patents) filed by VoIP-Pal.com Inc. In each case, the court granted Apple’s motion to dismiss all patent infringement allegations on the ground that the patent claims failed to satisfy Section 101. Mr Modi also was a member of the trial team that successfully defeated VirnetX’s patent infringement claims against Cisco, securing a rare complete defence verdict in the Eastern District of Texas, bringing an end to VirnetX’s $258 million claim against Cisco. In addition to his litigation work, Mr Modi regularly assists clients in negotiating settlement and licence agreements, and has represented and counselled clients on strategic patent licensing and inter partes review proceedings. Mr Modi also has substantial experience working on complex life sciences disputes. Leveraging his background in molecular biology, Mr Modi has represented and advised GlaxoSmithKline, Boston Scientific Corporation and others in cases involving pharmaceuticals and medical devices. Mr Modi is a co-chair of Desmarais LLP’s diversity and inclusion committee and is centrally involved in the firm’s diversity and attorney recruiting efforts. In those capacities, Mr Modi co-directs the firm’s efforts to ensure that attorneys from all backgrounds receive substantial professional opportunities and access to clients. Each year since 2017, Mr Modi has been recognised as a “Top Rated Intellectual Property Attorney” by Super Lawyers. In 2020 Mr Modi relocated to California to help further build the firm’s office and presence in San Francisco.
Desmarais LLP 101 California Street San Francisco CA 94111 United States T +1 415 573 1905 F +1 415 573 1901 See firm profile p1672
Education • Columbia Law School, JD, 2008 • University of California, Berkeley, BA, molecular and cell biology, 2003
1348 IAM Patent 1000
www.IAM-media.com
O’Regan, Cecily Anne
Special Counsel – Buchalter coregan@buchalter.com | www.buchalter.com
Cecily Anne O’Regan is a special counsel in Buchalter’s San Francisco office and a registered patent attorney with over 25 years of experience in patent and IP law. Ms O’Regan focuses her practice on securing worldwide IP protection and related business strategy for emerging technology clients, with an emphasis in the medical device, biometric, software and clean technology sectors. Ms O’Regan is a published author on IP law. She is a named inventor on eight issued patents and 12 patent publications in the medical device and software fields. She is also adjunct faculty at the University of San Francisco, School of Management where she has taught entrepreneurial management and entrepreneurial law. She is a frequent business plan competition judge and entrepreneur mentor. Ms O’Regan earned her JD at the University of San Francisco School of Law, where she was on law review. She earned an LLM, with distinction, at the University of Edinburgh (Scotland) in innovation, technology and law. She also earned a BS from the University of California at Irvine and a graduate certificate in biodesign from Stanford University.
www.IAM-media.com
Buchalter 55 Second Street, Suite 1700 San Francisco CA 94105-3493 United States T +1 415 227 0900 F +1 415 227 0770
IAM Patent 1000 1349
Orzechowski, Daren
Partner – White & Case LLP do@whitecase.com | www.whitecase.com
Daren Orzechowski is one of the founding partners of White & Case’s global technology transactions practice. He is also part of the leadership of the firm’s technology industry group. For over 20 years, Mr Orzechowski has represented clients from a variety of industries in connection with their most important strategic IP, data and technologyfocused transactions. He regularly counsels clients in connection with M&A and IP strategy and licensing matters. Mr Orzechowski is recognised as a top technology deal lawyer both in Silicon Valley, where he is based, and globally. He has handled matters relating to a wide variety of technologies. This experience provides him with a broad perspective that is essential to analysing difficult legal issues related to new and emerging technologies. These technologies include semiconductors, mobile devices, cloud computing and software-as-a-service offerings, drones, autonomous vehicles, artificial intelligence, infrastructure and platform technologies, wearable devices and virtual reality. His matters usually involve deep commercial and technical complexity. Both large corporate and start-up clients seek Mr Orzechowski’s advice regarding transactions involving the acquisition, development and licensing of intellectual property, software, hardware, and data. He has an extensive track record in M&A, strategic alliances and licensing arrangements, as well as day-to-day operational matters ranging from product development and the formulation of go-tomarket strategies to supply chain issues for devices and cloud-based solutions. He regularly handles complex international joint ventures and corporate transactions. Mr Orzechowski frequently speaks and writes about technology, privacy and IP matters. He has been quoted in a variety of major publications. In addition, he is an active member of several leading legal associations and is currently an officer of the Technology Law Committee of the International Bar Association.
1350 IAM Patent 1000
White & Case LLP 3000 El Camino Real 2 Palo Alto Square Suite 900 Palo Alto CA 94306-2109 United States T +1 650 213 0355 See firm profile p1740
www.IAM-media.com
Raffalovich, Aminta
Vice President – Intensity, LLC aminta.raffalovich@intensity.com | www.intensity.com
Aminta Raffalovich, JD/MS, is a vice president at Intensity specialising in the economics of technology and innovation. She applies her expertise in several areas, including intellectual property, antitrust and competition, finance, contract disputes and business tort litigation. In these areas, Ms Raffalovich provides expert analysis and economic consulting on issues including lost profits, reasonable royalties, unjust enrichment, commercial success, licensing, economic harm, valuation, economic domestic industry considerations, market definition, vertical restraints, harm to competition, consumer welfare and prejudgment interest. Ms Raffalovich has expertise and experience in a range of industries. Her work spans the life sciences (including pharmaceuticals, medical devices and diagnostics), electronics (including consumer electronics, semiconductors, computers and telecommunications), e-commerce, entertainment, payments and healthcare, among others. Ms Raffalovich earned her JD from the University of San Diego School of Law and is a member of the State Bar of California. Prior to law school, Ms Raffalovich graduated cum laude from the University of California, Berkeley, with a degree in environmental economics and policy. She went on to earn a master’s in economics from California State Polytechnic University, Pomona, where she also served as an instructor in macroeconomics and econometrics courses.
Intensity, LLC 12730 High Bluff Drive Suite 300 San Diego CA 92130 United States T +1 858 876 9327 F +1 858 876 9102 See firm profile p1698 Professional associations • San Diego Intellectual Property Law Association • State Bar of California
www.IAM-media.com
IAM Patent 1000 1351
Szepesi, Judith
Partner – Nicholson De Vos Webster & Elliott LLP judith.szepesi@ndwe.com | www.ndwe.com
Judith Szepesi is a registered patent attorney who provides a wide range of IP services including patent portfolio development; preparation and prosecution of domestic and foreign patent applications; design of patent programmes; review and evaluation of patent portfolios; negotiation and preparation of licences; due diligence; open source licensing compliance and policy design; trademarks; and IP transactions. Her goal is to help clients get the best value for their money and assist them in creating a useful and cohesive IP portfolio that aligns with their business goals. To do this, she delves into each client’s industry and business goals, and uses that foundation to create and execute practical solutions. Her electrical engineering background and decades of experience ensure that she can assist clients in identifying and protecting their intellectual property. Technology competencies • Sensor-based systems including personal data tracking, analysis and Internet of Things • Optics and VR/AR • Robotics • Telecommunications • Mobile applications • Communication and network systems • Hardware including storage systems, processors and memory
Nicholson De Vos Webster & Elliott LLP 99 Almaden Blvd Ste 710 San Jose CA 95113 United States T +1 408 675 0441 See firm profile p1714
Ms Szepesi’s abilities have been recognised by her peers and specialist publications alike – she has for example been named among IP Stars’ Top 250 Women in IP, IAM Patent Strategy 300 and Northern California Super Lawyers.
1352 IAM Patent 1000
www.IAM-media.com
Sullivan, Ryan
President – Intensity, LLC ryan.sullivan@intensity.com | www.intensity.com
Ryan Sullivan is president of Intensity and a leading expert in economics, finance and statistics. He applies his expertise to solve complex and challenging issues that organisations face in the competitive marketplace and the courtroom. Dr Sullivan has wide-ranging experience with the economics of intellectual property and technology, analyses of antitrust and competition, statistical modelling for labour and employment issues, and quantitative analyses for securities and finance disputes. Dr Sullivan develops and implements state-of-the-art predictive models that provide reliable insights across business challenges, including price optimisation, promotional programmes, business strategy, forecasting and investing. Dr Sullivan is often retained to provide expert testimony in highstakes litigation. He has provided expert testimony in more than a dozen cases, each contesting more than $1 billion. Dr Sullivan has testified at trial in more than 25 cases and provided expert reports and deposition testimony in more than 100 cases. Dr Sullivan has served as an invited member of the Economics Leadership Council at the University of California, San Diego. In this role, he provided guidance to the Department of Economics faculty on the application of economic science in private industry. Dr Sullivan has served as the treasurer and an officer on the board of trustees for San Diego Zoo Global, the world’s premier, non-profit zoological organisation, which operates the San Diego Zoo, Safari Park, Institute for Conservation Research and the Global Wildlife Conservancy. Dr Sullivan earned his BA, MA and PhD in economics from the University of California, San Diego. He has published economic research in top-tier, peer-reviewed academic journals – including Journal of Finance, Journal of Econometrics and International Journal of Forecasting – as well as articles on the economics of intellectual assets. Dr Sullivan has provided professional economic services since 1992. He established Quant Economics in 2006 and Intensity in 2014.
www.IAM-media.com
Intensity, LLC 12730 High Bluff Drive Suite 300 San Diego CA 92130 United States T +1 858 876 9105 F +1 858 876 9102 See firm profile p1698 Professional associations • AEA • Econometric Society • LES
IAM Patent 1000 1353
Schwartz, Steven
Managing Director – Intensity, LLC steven.schwartz@intensity.com | www.intensity.com
Steven Schwartz is a managing director at Intensity. Dr Schwartz has extensive experience in a wide variety of issues, acquired over 35 years of economic consulting. He has served as an economic expert in numerous litigation and non-litigation matters and has provided testimony before a variety of federal and state courts, the US International Trade Commission, the US Tax Court, the Federal Court of Canada and in a variety of arbitrated matters. Dr Schwartz has applied his expertise in high-stakes cases, including IP disputes (ie, involving patents, trademarks, copyright and trade secrets) related to lost profits, reasonable royalties, commercial success, irreparable harm, economic domestic industry considerations and unjust enrichment. His areas of expertise also include antitrust and competition matters, damages assessment in complex commercial disputes and class certification. Dr Schwartz’s consulting background spans many industries, such as software, technology-driven markets, social media, industrial products, consumer goods, pharmaceuticals/medical devices, retail distribution, electronics, gaming and hospitality, among others. He has also consulted in a variety of business, valuation and strategic planning issues for tax and other planning purposes, pre-litigation case assessment and strategic consulting. Before joining Intensity, Dr Schwartz was vice president at Charles River Associates and, previously, he was a managing director at Alvarez & Marsal Global Forensic and Dispute Services. Dr Schwartz also spent over two decades at NERA Economic Consulting. He has published numerous papers in economics journals and has co-authored articles for the Practicing Law Institute and American Bar Association publications. Dr Schwartz earned his BA in economics from Wesleyan University. He received his MA and PhD in economics from the University of Maryland.
1354 IAM Patent 1000
Intensity, LLC 12730 High Bluff Drive Suite 300 San Diego CA 92130 United States T +1 469 257 5581 See firm profile p1698
www.IAM-media.com
Taché, J Rick
Co-chair IP Group – Buchalter rtache@buchalter.com | www.buchalter.com
J Rick Taché is a shareholder in Buchalter’s Orange County office and firm-wide co-chair of the IP group. Mr Taché is a registered patent attorney focusing his practice on IP law, with an emphasis on patent and trademark litigation before US district courts throughout the country, the Federal Circuit Court of Appeals, the International Trade Commission and the US Patent and Trademark Office. In addition to his litigation experience, Mr Taché advises clients on a variety of complex transactions, including mergers and acquisitions, licensing, joint ventures, joint development, original equipment manufacturer and outsourcing agreements. His patent and trademark prosecution practice spans a variety of industries, including medical devices, aerospace, mechanical, software, hardware, Internet, business methods and various other technologies. In recent years, Mr Taché has been recognised by prestigious legal publications. He has been thus recognised by IAM Patent 1000: The World’s Leading Patent Practitioners every year since 2014 and by Managing Intellectual Property magazine in 2013, 2014 and 2017. Mr Taché earned his LLB from the University of Windsor in Canada and a JD from the University of Detroit, Mercy School of Law. He earned his MA in sports administration from Ohio State University and a bachelor of physical education degree from the University of New Brunswick.
www.IAM-media.com
Buchalter 18400 Von Karman Avenue Suite 800 Irvine CA 92612-0514 United States T +1 949 224 6446 F +1 949 720 0182
IAM Patent 1000 1355
Tamburo, Salvatore
Partner – Blank Rome LLP stamburo@blankrome.com | www.blankrome.com
Salvatore Tamburo is an IP partner in Blank Rome’s Washington DC office. Mr Tamburo focuses his practice on patent litigation. His experience includes dozens of matters, including seven jury trials in various US district courts. He has extensive experience litigating in various technologies, including wavelet compression; broadband services; safety caps; medical devices including suture anchors, surgical sutures and surgical techniques; nuclear technology; semiconductor technology; chemical pesticides; electrostatic dissipative industrial containers; video displays; and military armoured vehicles and weapons systems. Mr Tamburo’s experience also encompasses several other aspects of IP law, including licensing and counselling, drafting and prosecuting patent applications, and preparing opinions on patentability, infringement, validity and enforceability. Mr Tamburo’s non-litigation experience includes various technologies such as semiconductors, optics, robotics, imagers, laser doppler velocimeters, wind farm operations, medical devices, surgical methods, gaming software and various other technologies incorporating analogue and digital circuits. Prior to joining private practice, he worked as an electrical engineer with Signal Transformer Co Inc in Inwood, New York, from 1990 to 1998. Mr Tamburo attended St John’s University School of Law, where he served as an articles and notes editor on the American Bankruptcy Institute Law Review. He earned his bachelor of science degree in electrical engineering from New York University’s Tandon School of Engineering.
1356 IAM Patent 1000
Blank Rome LLP 1825 Eye Street North West Washington DC 20006 United States T +1 202 420 5164 See firm profile p1658
www.IAM-media.com
Touma, Alexander
Partner – White & Case LLP alex.touma@whitecase.com | www.whitecase.com
Alexander Touma is a partner in White & Case’s technology transactions practice. Mr Touma specialises in business transactions and counselling involving intellectual property, technology and payments services (including mobile payments and cryptocurrency services). He represents companies of all sizes and in a variety of industries, including fintech, payments, financial services, software, semiconductor and mobile technology companies. Mr Touma generally advises companies on all types of technologyrelated matter, including development and licensing agreements, manufacturing and supply agreements, distribution agreements, hosting agreements and services transactions. In recent years, Mr Touma has led payments-related technology transactions for clients focused on mobile peer-to-peer payments and cryptocurrency services. Before joining White & Case, Mr Touma served as senior counsel for a Bay Area technology start-up where he focused on commercial and IP law matters, including drafting and negotiating a variety of technology agreements, managing patent and trademark portfolios, and providing general legal advice on IP matters such as open source, trade secret, copyright, and patent and privacy issues. Mr Touma ‘s prior experience also includes working at a leading global law firm as an IP litigation associate representing technology companies. Before starting his law career, Mr Touma obtained a bachelor’s and master’s in computer science and briefly worked as an automation engineer. This experience gives Mr Touma a unique viewpoint, which he is able to leverage in his transactional practice.
www.IAM-media.com
White & Case LLP 3000 El Camino Real Palo Alto Square Palo Alto CA 94306 United States T +1 650 213 0352 See firm profile p1740
IAM Patent 1000 1357
Sano, Jeannine Yoo
Partner – Axinn, Veltrop & Harkrider LLP jsano@axinn.com | www.axinn.com
Jeannine Yoo Sano is a partner at Axinn and has been lead counsel in numerous jury and bench trials in district courts across the country over the past 27 years. She obtained one of the first district court dismissals based on unpatentable subject matter following the Supreme Court’s Alice decision and one of the first contested transfers out of the Eastern District of Texas following TC Heartland, in addition to achieving numerous victories in the Eastern District of Texas, Northern District of Texas, Delaware, Massachusetts, Central District of California, Northern District of California and Middle District of Florida. Ms Sano has also handled hearings in inter partes review proceedings before the US Patent Trial and Appeal Board, Section 337 investigations in the US International Trade Commission and appeals before the Federal Circuit. Ms Sano has tried patent and trade secret cases in a variety of technology fields, including radio frequency tuners, CMOS image sensors, DRAM, central processing units, chipsets, CAD software, video processing and mobile device communications. She was also previously honoured by the Animal Legal Defense Fund for her contributions in enforcing the California puppy mill ban against puppy mill brokers and breeders. She is a member of the Silicon Valley and Texas chapters of ChIPs, the Women Lawyers of Eastern District of Texas Advisory Committee and the Stanford Alumni Association.
1358 IAM Patent 1000
Axinn, Veltrop & Harkrider LLP 560 Mission Street San Francisco CA 94105 United States T +1 415 490 1490 See firm profile p1652 Professional associations • ChIPs Silicon Valley/Texas Chapters • Women Lawyers of the Eastern District of Texas
www.IAM-media.com
Vakil, Bijal
Partner – White & Case LLP bvakil@whitecase.com | www.whitecase.com
Bijal Vakil has a successful track record litigating complex patent cases in district courts, the International Trade Commission and before the Federal Circuit. Clients also benefit from his experience advising on patent portfolios and assisting with technology licensing agreements. His practice covers a wide range of technologies, including computer software, semiconductors, e-commerce, social media, payments, autonomous vehicles, consumer electronics and telecommunications. The knowledge and insight that he brings to the most complex patent disputes has made him a valued asset for technology companies ranging from Fortune 100 companies to Silicon Valley start-ups. Current clients include Daimler, GlobalFoundries, Google, Intuit, LG Electronics, MSI Computer, NETGEAR, Palantir Technologies, Square, Walmart, Zynga and other leaders in technology. Mr Vakil served as the executive partner of White& Case ‘s Silicon Valley office from 2010 to 2019 and is the founder of the firm’s Taiwan practice. He is an active member of the firm’s global technology industry group and chair of the firm’s US diversity committee. Widely recognised by legal professionals as an authority in his field, Mr Vakil has held leadership positions in several bar associations and non-profit organisations. He currently serves as a mediator in the US District Court for the Northern District of California’s Alternative Dispute Resolution Programme and was previously selected by the judges of the US District Court for the Northern District of California as co-chair of the Lawyer’s Representative Committee. Mr Vakil also frequently teaches a patent/IP course at the University of California Davis Law School. Mr Vakil is often sought out by the media and industry conferences to speak on various hot issues affecting the industry, in particular the future intersection of hardware and software in the self-driving car space.
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White & Case LLP 3000 El Camino Real Palo Alto Square Palo Alto CA 94306 United States T +1 650 213 0303 F +1 650 213 8158 See firm profile p1740
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United States: Colorado
Adsero IP
“Adsero IP has a talented team with a number of commercially attuned practitioners who have interesting niches.” Kenneth Chang, for example, matches expertise in IP strategy, licensing and enforcement with rich cultural and business knowledge in the Asia-Pacific region, giving the firm a real USP. Katherine Lobel-Rice, meanwhile, is one of only a handful of Coloradans in the IAM Patent 1000 with a life sciences PhD – she earned her doctorate in pharmacology – creating an advantage for the ensemble in attracting complex pharmaceutical and biotechnology mandates. High-technology experts Chad King and Daniel Young, meanwhile, take advantage of their blended prosecution and litigation skillsets to support rights holders throughout all phases of the patent lifecycle in a way that few others can. These attorneys form a sophisticated collective with a laser customer-service and quality focus.
Brownstein Hyatt Farber Schreck LLP
Well versed in all facets of patent practice and in the mechanical, electrical and software arts, Brownstein Hyatt Farber Schreck provides a reassuringly comprehensive offering to technology companies. Deriving strength from its proficiency not just in procuring patent rights, but also in monetising them, the firm makes it its mission to add bottomline value. Craig Hemenway does this particularly well, which is one of the reasons why householdname companies such as T-Mobile seek him out for wide-ranging patent and licensing matters. Benno Guggenheimer demonstrates his understanding of the business of intellectual property in “delivering actionable advice which is sensitive to clients’ commercial needs”: “Benno has immense technical expertise and is highly efficient. He crafts detailed and accurate patent applications, producing work that inventors love to see. He is insightful, thorough and incredibly practical, and very personable, too.” He is well thought of among Silicon Valley companies, but has an international reputation and serves as primary US patent counsel for Australian software company Atlassian.
Dorsey & Whitney LLP
Dorsey & Whitney is admired for its “well-rounded practice” that spans patent and trademark protection and IP litigation: “Its attorneys have mastered their art and are loved by their clients.” This is certainly true of Kerith Kanaber, who co-chairs the healthcare industry group and trades as a prosecutor and
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portfolio manager for consumer products, medical device and life sciences entities. “Kerith has exacting attention to detail, is flexible in terms of budgeting, has a thorough understanding of the portfolios in her care, appreciates her clients’ unique business needs to better shape strategy and is highly responsive.” Naturally talented and self-motivated, she has also benefited greatly from the mentorship of Lee Osman, the long-serving leader of Dorsey’s patent group. In competitive industries, Osman keeps clients out in front of their rivals by obtaining valuable intellectual property and deploying it in commercially clever ways. Gifted at getting multiple parties pulling in the same direction, he links up with the right collaborators across the firm and leverages his connections with top service providers worldwide to support patrons wherever they need him. Alongside Kanaber, one of Osman’s most valued colleagues is Gregory Tamkin, who is the star litigator on deck in Denver.
Faegre Drinker Biddle & Reath LLP
Between them, Kirstin Stoll-DeBell, Kathleen Ott and Timothy Scull cover all bases for all types of innovators, creating a potent platform in Colorado for Faegre Drinker. Stoll-DeBell puts the focus on high technology and acquits herself with distinction as a portfolio strategist and opinion giver; she also litigates and brings valuable trademark know-how to the table. Her practice dovetails neatly with that of Ott, who prosecutes with precision in the computer science and software space, but also extends into the medical device and pharmaceutical area; he adds another dimension to the firm’s offering as a triedand-tested post-grant lawyer. Tim Scull is a guiding light for electronics and especially software clients, including industry leaders.
Holland & Hart LLP
“Holland & Hart’s group of patent prosecutors is one of the very best in the world. It functions as an extension of in-house teams by making it a point to understand clients’ technologies and develop strong relationships with inventors. You can always trust its lawyers to write quality applications, prosecute them timeously and work tirelessly to achieve the best possible results. As any in-house practitioner will attest, having diligent, reliable prosecution counsel such as Holland & Hart enables companies to increase their individual leverage and focus on other pressing matters for their business.” “The firm has top talent on board, including attorneys and engineers, and a
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United States: Colorado Firms: transactions
Firms: prosecution
Brownstein Hyatt Farber Schreck LLP
Highly recommended
Dorsey & Whitney LLP
Holland & Hart LLP
Kilpatrick Townsend & Stockton LLP
Kilpatrick Townsend & Stockton LLP
Merchant & Gould
Perkins Coie LLP
Perkins Coie LLP
Polsinelli PC
Sheridan Ross
Sheridan Ross
well-structured workflow that results in high-quality outcomes.” “The group’s success and deep expertise is a direct result of Michael Drapkin’s masterful leadership and recruiting. Michael – himself one of the world’s foremost experts in patent matters – has the ability to identify, develop and deploy talent in a way that rivals the sporting world’s greatest general managers. His team includes personable relationship managers, seasoned patent professionals, highly credentialed technologists, skilled negotiators and multilingual drafters – all of whom approach matters with a singular focus on excellence.” Also garnering high praise is Paul Schramm, who “never fails to impress with his creativity and resourcefulness”: “Paul always goes the extra mile to help you invest strategically in your intellectual property without breaking the bank. His clear thinking enables smart decision making – he carefully enumerates options, showing a good grasp of the technical and business picture.” Per Larsen is another key cog of the practice, particularly given his technical fluency: he enjoyed a career as a design engineer prior to entering the practice of law. Patent litigation is another forte of the firm, which in Timothy Getzoff has one of the state’s elite contentious lawyers. Getzoff is a veteran who has litigated all over the country – primarily in the patent area, but also in trademark and copyright disputes.
Kilpatrick Townsend & Stockton LLP
Recommended on each of the prosecution, litigation and transactions tables, Kilpatrick Townsend presents a well-rounded offering in Colorado – and one which is seamlessly integrated with a national group that is among the biggest and best. The firm got off to a great start in Denver in the mid-1990s as the local office was established by one of the city’s top patent prosecution, counselling and transactions lawyers, Darin Gibby. He obtains patents that serve as cornerstones for the business growth of worldwide
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Recommended Adsero IP Brownstein Hyatt Farber Schreck LLP Dorsey & Whitney LLP Faegre Drinker Biddle & Reath LLP Merchant & Gould
companies and that help those launching new product lines to do so without a hitch. He comes from a mechanical engineering background, but works on a lot of cool stuff in diverse sectors from software, finance and telecommunications to medical devices, sporting goods and food processes. He is one of several percipient strategists locally, including chemistry PhD and superb draftsman Eugene Bernard, with whom he regularly collaborates; Thomas Franklin, who has a proven ability to grow portfolios around technologies that are hard to patent – and to do so quickly in industries in which competition is ramping up; and Denver managing partner Justin Krieger, a polished performer in postgrant proceedings who has been instrumental in the firm’s representation of Ascend Performance Materials against Samsung, which recently resulted in the successful invalidation of a Chinese patent.
Merchant & Gould
Merchant & Gould has been an IP touchpoint for innovative companies and academic institutions for over a century. With more than 100 lawyers, patent agents and technical experts on deck, the wellresourced boutique continues its legacy of partnering excellence, which individuals such as Andrew
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United States: Colorado Firms: litigation
Individuals: transactions
Sheridan Ross
Highly recommended
Holland & Hart LLP
Darin J Gibby Kilpatrick Townsend & Stockton LLP
Adsero IP Dorsey & Whitney LLP Kilpatrick Townsend & Stockton LLP Perkins Coie LLP Polsinelli PC Wilmer Cutler Pickering Hale and Dorr LLP Jagenow and George Lewis do much to sustain; both are skilled portfolio managers with heightened awareness of business and risk. Mechanical engineer Jagenow focuses on manufacturing and medical devices; trained in the electrical and chemical arts, Lewis works across a vast range of industries. The fulcrum around which the Denver practice turns is Gregory Leibold, who serves as local managing partner, co-chair of licensing and leader of the electrical and software group. The former general counsel counts versatility as a key strength.
Perkins Coie LLP
The sheer volume of instructions it handles and an astonishing hit rate across all major forums – often in precedent-setting cases – set Perkins Coie apart as a formidable force in patent litigation. Among its many stellar advocates, Amanda Tessar stands out as a “highly intelligent and energetic lawyer with a will to win. She has superb experience representing clients in complex matters in the semiconductor industry”. “She doesn’t waste money on arguments that won’t advance her case, and she provides practical solutions and timely updates – and sticks to her budget.” Compared to many other general practice patent litigation high-flyers, Perkins Coie also has an especially robust prosecution and licensing offering. As on the contentious side, its services here are sophisticated: the firm may get several thousand US and foreign patents issued each year, but it’s no mere filing mill – its patenting efforts are underpinned by deep strategic thinking around the business of intellectual property. Engaging freely in this, David St John-Larkin, Brian Kinnear, Michael Henson and Peter Kinsella form a high-calibre line-up in the Denver office. St John-Larkin takes
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Peter Kinsella Perkins Coie LLP Gregory D Leibold Merchant & Gould Lee Osman Dorsey & Whitney LLP Charles A Schwab Catalyst Law Group Recommended Scott M Alter Michael Best & Friedrich LLP Kenneth S Chang Adsero IP Cara L Crowley-Weber FisherBroyles LLP Benjamin Fernandez Wilmer Cutler Pickering Hale and Dorr LLP Thomas D Franklin Kilpatrick Townsend & Stockton LLP Jason D Haislmaier Bryan Cave Leighton Paisner LLP Craig Hemenway Brownstein Hyatt Farber Schreck LLP David Kellis Sheridan Ross Rex O’Neal Sage Law Group, LLC Paul J Prendergast Davis Graham & Stubbs LLP David St John-Larkin Perkins Coie LLP
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United States: Colorado the lead in representing a key client in the 5G space and undertakes prosecution tasks while regularly conducting due diligence and patent analysis in support of proposed transactions, with a focus on the licensing of SEPs. Exposure to litigation has given Kinnear refined risk sensitivity, which translates into effective long-term strategising. Central to the firm’s blockchain practice, Henson is endorsed as a “creative lawyer skilled in his craft and who sees the big picture”. Licensing maven Kinsella is responsible for negotiating the sorts of collaborations that define the trajectories of emerging industries.
Polsinelli PC
Polsinelli’s Denver office is one-stop shop for innovators: the team prosecutes patent applications with finesse, has a flair for the fine print of IP-rich transactions and litigates with tenacity. The local group has a new face in the IAM Patent 1000 this year in Taryn Elliott, one of several next-gen stars making Polsinelli a prime destination now and into the future. “Taryn understands the competitive IP market and her strategies for navigating it are essential to business growth. Perfectly fitting the description of trusted business adviser, she thinks beyond intellectual property and adds value to any discussion.” She leads the product design and user interface group. On speed dial for several Fortune 500 medical technology companies as well as prestigious universities, Wade Johnson is also enthusiastically recommended: “Wade is adept at grasping the unique details of complex systems and goes the extra mile to visit facilities and discuss new products with inventors. He provides tremendous support in identifying what is patentable, surveying the landscape, reviewing competitive product and harvesting claims, among other things; and does excellent work at an affordable cost.” Gregory Durbin demonstrates impressive technical range and, in a similar fashion, loves to get hands-on with new communications, computer hardware, software, energy and other technologies. His guidance smooths the path for those introducing new flagship products to the market in fiercely competitive spaces. Anchoring the litigation practice are John Posthumus and Michael Dulin, who both stand out for their trial experience. Gold-ranked Posthumus has an “incredible intellect” and is a “true professional of the utmost integrity”.
Sheridan Ross
“A lot of firms fail to successfully monetise patents, but this is something that Sheridan Ross excels at – and it is ultimately what matters to clients and funders. It’s a high-performance litigation outfit too:
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its lawyers have good judgement and risk assessment ability. The firm is easy to work with, reasonable on terms and has great technical depth.” On the latter point, the eminent local boutique has the largest number of individuals (seven) recognised for prosecution in the Colorado rankings. Co-president Matthew Ellsworth is a must for the protection of complex electrical and software technologies; as is Douglas Swartz, with whom he connects on behalf of gaming technology and computer companies. The pair integrate well with product development and in-house teams in a way that streamlines work and pays rich dividends. Bruce Kugler and David Kellis also build lasting connections. Kugler is close to many international companies with diverse portfolios, which rely on his broad patent and trademark, counselling, licensing and litigation skillset to get the most from their intangible assets. A recently elected shareholder, Kellis has an intuitive business understanding that strengthens his relationships; he too treats clients to a well-rounded service by drawing on his patent strategy, transactional and litigation expertise. Meanwhile, Gary Connell and David Walker have earned Sheridan Ross a loyal following in the life sciences. Like Ellsworth and Swartz, they form another highly capable pairing and have recently been supporting a pharmaceutical start-up on all IP matters, including the development of an extensive inter-continental licensing and supply agreement. On the litigation front, Rob Brunelli sets the pace for the group, which is also home to Todd Blakely. Gifted at brokering lucrative settlements, Brunelli also has plenty of trial experience to call on if negotiating isn’t a suitable option. The wide-ranging contentious and non-contentious nous of fellow veteran Blakely helps him to see paths through difficult disputes that others miss.
Wilmer Cutler Pickering Hale and Dorr LLP
For high-stakes patent mandates, particularly those that are litigious in nature, WilmerHale is always a smart choice. The prestigious outfit has a global reputation for its prowess in the courtroom, equally integral to which are the finely honed advocacy skills and thorough scientific education of its lawyers. Home to Mary (Mindy) Sooter and Benjamin Fernandez, the Denver office lacks neither trial proficiency nor technical talent. A seasoned firstchair litigator trained in electrical engineering and telecommunications, Sooter can effortlessly distil technology for laypersons and makes light work of complex, multi-patent, multi-forum disputes. Fernandez is an efficient utility infielder who manages
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United States: Colorado Individuals: prosecution Highly recommended Michael L Drapkin Holland & Hart LLP Gregory P Durbin Polsinelli PC Thomas D Franklin Kilpatrick Townsend & Stockton LLP Darin J Gibby Kilpatrick Townsend & Stockton LLP Lee Osman Dorsey & Whitney LLP Paul Schramm Holland & Hart LLP Timothy B Scull Faegre Drinker Biddle & Reath LLP David Larkin Perkins Coie LLP
Benjamin Fernandez Wilmer Cutler Pickering Hale and Dorr LLP Benno M Guggenheimer Brownstein Hyatt Farber Schreck LLP Craig Hemenway Brownstein Hyatt Farber Schreck LLP Michael R Henson Perkins Coie LLP Andrew Jagenow Merchant & Gould S Wade Johnson Polsinelli PC Kerith Kanaber Dorsey & Whitney LLP David Kellis Sheridan Ross Chad E King Adsero IP
Recommended
Brian Kinnear Perkins Coie LLP
Scott M Alter Michael Best & Friedrich LLP
Justin L Krieger Kilpatrick Townsend & Stockton LLP
Eugene M Bernard Kilpatrick Townsend & Stockton LLP
Bruce A Kugler Sheridan Ross
Todd P Blakely Sheridan Ross
Per Larsen Holland & Hart LLP
Heath J Briggs Greenberg Traurig LLP
George C Lewis Merchant & Gould
Gary J Connell Sheridan Ross
Katherine Lobel-Rice Adsero IP
Cara L Crowley-Weber FisherBroyles LLP
Craig Neugeboren Neugeboren O’Dowd PC
Taryn Elliott Polsinelli PC
Kathleen E Ott Faegre Drinker Biddle & Reath LLP
Matthew R Ellsworth Sheridan Ross
Paul J Prendergast Davis Graham & Stubbs LLP
1364 IAM Patent 1000
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United States: Colorado Douglas W Swartz Sheridan Ross
Michael P Dulin Polsinelli PC
David Walker Sheridan Ross
Lee Johnston Haynes and Boone LLP
Timothy Worrall Polsinelli PC
Evan Rothstein Arnold & Porter Kaye Scholer LLP
Rita Wu FisherBroyles LLP
Mary (Mindy) V Sooter Wilmer Cutler Pickering Hale and Dorr LLP
Individuals: litigation
Kirstin L Stoll-DeBell Faegre Drinker Biddle & Reath LLP
Timothy P Getzoff Holland & Hart LLP
Gregory S Tamkin Dorsey & Whitney LLP
John R Posthumus Polsinelli PC
Jon R Trembath Michael Best & Friedrich LLP
Amanda Tessar Perkins Coie LLP
Ian Walsworth FisherBroyles LLP
Todd P Blakely Sheridan Ross
Daniel S Young Adsero IP
Rob Brunelli Sheridan Ross
portfolios, analyses competitive landscapes, issues opinions and licenses patents with a sure hand. Crocs is one client that makes use of the full range of his abilities, which extend across the areas of design patents, utility patents and trademarks.
Other recommended experts
Scott Alter and Jon Trembath give Michael Best a solid presence in Denver – Alter as a global patent procurement lawyer, portfolio manager and strategic counsellor; Trembath as an experienced litigator. “Heath Briggs has a rare level of knowledge in metallurgy and alloys, along with exceptional commercial acumen and global expertise. He is incredibly responsive and never hesitates to communicate any concerns or opportunities regarding worldwide prosecution and freedom to operate issues, which is greatly appreciated.” Greenberg Traurig is his base of operations. Creating IP value is the metier of Cara Crowley-Weber, whose understanding of the innovation and business mindset has won her a dedicated following of pharmaceutical, biotechnology, medical device and healthcare clients. She has
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a microbiology and immunology PhD; as does fellow FisherBroyles partner Rita Wu, who comes recommended for her “amazing skill at handling large, complex portfolios”. Another key contact at the firm is Ian Walsworth, an “incredible litigator with a deft touch in sensitive cases”. For licensing and patent and technology transactional support, Bryan Cave Leighton Paisner’s Jason Haislmaier is a discerning choice. His negotiation skills are on point and his deal know-how incredibly diverse. Lee Johnston is an adept trial lawyer called on for representation in fraught commercial and IP cases. He wears the colours of Haynes and Boone. Craig Neugeboren has design engineering, in-house and private practice experience, enabling him to see IP problems in the round and present well-thought-out solutions. He founded Neugeboren O’Dowd, a boutique which is relied upon for a wide range of strategic IP support. Technology companies love having Rex O’Neal in their corner: he really understands them and their issues, having founded companies and served as general counsel at others. He delivers unerringly accurate advice, whatever commercial or IP issues come up, and excels as a transactional partner. Paul Prendergast is an IP-focused finance and acquisitions specialist at Davis Graham & Stubbs. He draws on his
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United States: Colorado experimental pathology PhD to provide technically, legally and commercially perceptive counsel to life sciences companies. Evan Rothstein co-captains the TMT industry group at Arnold & Porter. As a litigator, he has won important jury verdicts locally and in other districts, and fulfils the roles of lead counsel and team player very effectively. He is playing a strong hand in a group comprised of New York, Colorado, and DC lawyers representing Charter Communications in a major trade secret battle against Sprint. Charles
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Schwab of Catalyst Law Group is recommended in the IAM Patent 1000 as an astute global deal maker. His transactional know-how encompasses the broadest range of IP and technology-driven deals. Timothy Worrall recently made the move from Polsinelli to BakerHostetler, taking up dual residence in its Denver and San Francisco offices. He has an agile technical and strategic mind, and provides value-creating guidance to life sciences and medical device companies.
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United States: DC Metro Area
Adduci, Mastriani & Schaumberg, LLP
No other firm compares with Adduci, Mastriani & Schaumberg when it comes to ITC experience. It draws on decades of practice at the intersection of intellectual property and international trade to guide clients and support premier IP outfits around the country as they engage in battle in this forum. The team recently secured a win for LG Energy Solution in a major trade secret case; its forensic probing exposed the respondent’s extensive destruction of evidence, which was crucial to the win.
Akin Gump Strauss Hauer & Feld LLP
Akin Gump has what it takes to prevail in bet-thecompany patent litigation and is a trusted ally of high-technology and life sciences industry leaders and other key stakeholders in the innovative community, such as Unified Patents, a memberbased organisation focused on deterring the number of NPE assertions in key technology areas. Cono Carrano is representing Unified Patents against the Korea Advanced Institute of Science and Technology and Korean Broadcasting System in challenging a patent directed to video compression techniques; his petition for inter partes review was granted by the PTAB which, in its subsequent final written decision, found multiple claims of the challenged patent to be unpatentable. The firm’s top gun in DC, Carrano has impeccable ITC credentials and recently resolved an investigation with a favourable settlement on behalf of VIZIO, against which Innovative Foundry Technologies asserted several patents relating to semiconductor and integrated circuit technologies. With him on this was David Vondle, another experienced ITC and PTAB lead counsel. Vondle is listed in two IAM Patent 1000 tables this year, having retained his litigation placement and earned inclusion on the transactions list; deal making is a significant component of his practice, his advocacy skill being of great benefit in negotiations. Andrew Holtman has a facility for post-grant proceedings and has considerably amped up Akin Gump’s PTAB activities since coming on board in late 2019. His combination of technical talent – he earned his PhD in molecular genetics at Rutgers University, where he also worked as a research fellow – expertise in coordinating multijurisdictional matters and presentation abilities is a huge plus for the group.
Arnold & Porter Kaye Scholer LLP
High-stakes patent litigation is meat and drink to Arnold & Porter, which has built up a real head of
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steam following victory after victory. Many of these have been delivered by Matthew Wolf, “one of the best you’ll ever see on his feet in the courtroom”: “He is a wonderful first-chair trial lawyer and appellate advocate who can adapt quickly as matters evolve.” Recent highlights include a complete jury win invalidating the patent claims brought by bioMerieux against clients Hologic and Grifols – claims which were anticipated by Hologic and Grifols’s earlier work developing market-leading assays for screening the worldwide blood supply for disease. Wolf also achieved a full victory in a closely followed biotechnology case in which Amgen sought billions in damages and a permanent injunction against the sale of clients Sanofi and Regeneron’s cholesterolreducing drug Praluent. In this, he convinced the jury that two of the five patent claims asserted were invalid and had post-trial motions granted finding the other claims invalid for lack of enablement; this was upheld by the Federal Circuit in February 2021. No lone wolf by nature, he recognises the value of teamwork and collaboration, and leans on all the right people. Jennifer Sklenar is a valued colleague locally with whom he partnered on the Hologic matter; a “responsive, knowledgeable and dedicated lawyer with an excellent grasp of technology as well as trial skill”, the IP group co-chair debuts in the IAM Patent 1000 for 2021. She earns further praise for “finding solutions that are compatible with wider business strategy”. Arnold & Porter also provides extensive representation in patent prosecution and associated contentious matters, with David Marsh the centre of gravity for this practice. He represents Bayer in prosecuting patents that are critical to the protection of key DNA breakthroughs in the field of plant genetics. Major strings to his bow – and valuable ones in connection with the Bayer work – are his proficiency in both US post-issuance proceedings and European oppositions, and his all-round global strategic IP percipience. There’s yet more on offer at the firm, which has additionally cracked the code of patent and technology commercialisation. Co-leading operations is this area is Susan Hendrickson, a smooth broker of life sciences and high-technology deals. She recently represented the American Red Cross in connection with joint venture, licensing and services agreements with OneBlood to form ARC-One Solutions, a software company focused on the management of blood supplies. Joining her in the guide this year is life sciences ace Kristen Riemenschneider, who provides vital assistance to companies engaging in US government-funded R&D.
IAM Patent 1000 1367
United States: DC Metro Area Individuals: litigation David J Ball Jr Paul Weiss Rifkind Wharton & Garrison LLP Steven Baughman Paul Weiss Rifkind Wharton & Garrison LLP David Berl Williams & Connolly LLP
See p1398
Ruffin B Cordell Fish & Richardson
Matthew J Moore Latham & Watkins LLP Michael A Morin Latham & Watkins LLP George F Pappas Covington & Burling LLP Adam L Perlman Latham & Watkins LLP
Edward C Donovan Kirkland & Ellis LLP
Carter G Phillips Sidley Austin LLP
Alan M Fisch Fisch Sigler LLP Bruce R Genderson Williams & Connolly LLP
Naveen Modi Paul Hastings LLP
Bert C Reiser Latham & Watkins LLP See p1406
Maximilian A Grant Latham & Watkins LLP Gary M Hnath Mayer Brown J Michael Jakes Finnegan, Henderson, Farabow, Garrett & Dunner, LLP William G James II Goodwin Procter LLP Thomas L Jarvis Winston & Strawn LLP Charles B Klein Winston & Strawn LLP Steven Lieberman Rothwell, Figg, Ernst & Manbeck, PC Charles E Lipsey Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Matthew M Wolf Arnold & Porter Kaye Scholer LLP Steven Anzalone FisherBroyles William P Atkins Pillsbury Winthrop Shaw Pittman LLP James R Barney Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Jamie B Beaber Mayer Brown Jessamyn S Berniker Williams & Connolly LLP Shannon Bloodworth Perkins Coie LLP Paul F Brinkman Kirkland & Ellis LLP Smith R Brittingham Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Gregg F LoCascio Kirkland & Ellis LLP
Brian M Buroker Gibson Dunn & Crutcher LLP
Michael McKeon Fish & Richardson
John Caracappa Steptoe & Johnson LLP
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See p1399
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United States: DC Metro Area Cono A Carrano Akin Gump Strauss Hauer & Feld LLP
Alexander J Hadjis Jenner & Block
Gregory A Castanias Jones Day
Kevin Hardy Quinn Emanuel Urquhart & Sullivan LLP
Christian Chu Fish & Richardson
Doris Johnson Hines Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Frank C Cimino Jr Venable LLP
Mark L Hogge Dentons
Joseph V Colaianni Fish & Richardson
M Andrew Holtman Akin Gump Strauss Hauer & Feld LLP
Kevin B Collins Covington & Burling LLP
Joseph A Hynds Rothwell, Figg, Ernst & Manbeck, PC
Mark G Davis Goodwin Procter LLP
Blair M Jacobs Paul Hastings LLP
Sharon Davis Rothwell, Figg, Ernst & Manbeck, PC
William M Jay Goodwin Procter LLP
Erin M Dunston Panitch Schwarze Belisario & Nadel LLP
Song K Jung Dentons
Tracy-Gene G Durkin Sterne Kessler Goldstein & Fox PLLC
Lisa Kattan Baker Botts LLP
Tara D Elliott Latham & Watkins LLP
Robert Katz Banner Witcoff
Brian E Ferguson Weil Gotshal & Manges LLP
Jeffrey P Kushan Sidley Austin LLP
Stanley Fisher Williams & Connolly LLP
See p1404
Gregory Lantier Wilmer Cutler Pickering Hale and Dorr LLP
David P Frazier Latham & Watkins LLP
Patrick J McCarthy Goodwin Procter LLP
Kenneth Gallo Paul Weiss Rifkind Wharton & Garrison LLP
William G McElwain Wilmer Cutler Pickering Hale and Dorr LLP
Lori A Gordon King & Spalding LLP
James Monroe Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Lawrence J Gotts Latham & Watkins LLP
Eric Namrow Morgan Lewis & Bockius LLP
Paul Goulet FisherBroyles
Brian Nester Sidley Austin LLP
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IAM Patent 1000 1369
United States: DC Metro Area John O’Quinn Kirkland & Ellis LLP
“Kristen does a fantastic job overseeing valuable and complex transactions. Extremely smart and a tough negotiator who handles pressure well, she is an essential deal team member with exceptional industry knowledge.”
Ronald Pabis Goodwin Procter LLP
BakerHostetler
Joseph E Palys Paul Hastings LLP Robert Parker Rothwell, Figg, Ernst & Manbeck, PC Mark A Perry Gibson Dunn & Crutcher LLP Richard Rainey Covington & Burling LLP Jay H Reiziss McDermott Will & Emery Timothy W Riffe Fish & Richardson Steven J Routh Orrick, Herrington & Sutcliffe LLP John Christopher Rozendaal Sterne Kessler Goldstein & Fox PLLC Eric W Schweibenz Oblon Thomas HL Selby Williams & Connolly LLP Stephen Shahida Goodwin Procter LLP Stephen Smith Cooley LLP Sturgis Sobin Covington & Burling LLP Allan M Soobert Paul Hastings LLP Robert Steinberg Latham & Watkins LLP Thomas P Steindler McDermott Will & Emery
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See p1412
BakerHostetler’s national patent offering is supremely well resourced and well balanced: the firm maintains a substantial group of specialists (many with industry and in-house experience) and displays an equal affinity for prosecution, litigation and transactions. With representatives in the DC rankings from all three branches of the practice, the local office is a persuasive one-stop shop. On the prosecution side, electrical, mechanical and computer science team co-leader Kenneth Sheehan and life sciences group co-head Hussein Akhavannik between them support companies across the technological spectrum. Both have major clients for which their versatility adds tremendous value: Sheehan acts for Sinclair Broadcast Group, one of the United States’ largest and most diversified television broadcasting companies, procuring and maintaining patents worldwide, monitoring competitors and advising on licensing and enforcement matters; while Akhavannik covers similar ground for Fresenius Kabi USA. Another rangy professional, Tayan Patel has a background in electrical and chemical engineering, giving a diverse look to his client base. The former USPTO examiner knows how to take patent applications through to successful grant efficiently and with the minimum of fuss, making him a great fit for companies looking to grow their portfolios quickly; mature transactional skills also set him apart. Robert Hails heads the litigation fight card: “Bob has the technical expertise to properly analyse patents and infringement claims, and the practical ability to put them into real-world scenarios and contexts that are readily understandable to judges. He is smart, efficient, good on strategy and tactics, down to earth and very easy to work with.” Another source adds: “We bring him on as soon as we receive a demand letter or threat, even if litigation isn’t imminent. He can quickly debunk the other side’s arguments and we’ve avoided a significant amount of litigation as a result of his early intervention. In the cases he has handled, he’s gotten us some really fantastic results.” The multitalented Hails continues to prosecute patents for Apple and others, alongside his contentious duties. BakerHostetler stands ready to deploy in all patent litigation forums and, in Cy Walker and William Bergmann, has seasoned experts for ITC and Court of Federal Claims cases respectively.
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United States: DC Metro Area Robert Greene Sterne Sterne Kessler Goldstein & Fox PLLC
Lauren Degnan Fish & Richardson
Einar Stole Covington & Burling LLP
Bryan C Diner Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Seth P Waxman Wilmer Cutler Pickering Hale and Dorr LLP
Patrick A Doody Pillsbury Winthrop Shaw Pittman LLP
Amy Kreiger Wigmore Wilmer Cutler Pickering Hale and Dorr LLP
Dipu A Doshi Blank Rome LLP
Jon E Wright Sterne Kessler Goldstein & Fox PLLC
Eldora L Ellison Sterne Kessler Goldstein & Fox PLLC
Daniel E Yonan Sterne Kessler Goldstein & Fox PLLC
Shamita D Etienne-Cummings White & Case LLP
William Zimmerman Knobbe Martens
Matthew L Fedowitz Buchanan Ingersoll & Rooney PC
Cook Alciati Gardella Grace PA
See p1397
See p1339
See p1403
Tia D Fenton Oblon
Dan L Bagatell Perkins Coie LLP
Elizabeth D Ferrill Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Stephen Baskin King & Spalding LLP
Michael J Flibbert Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Matthew Bathon Steptoe & Johnson LLP
Mareesa Frederick Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
William Bergmann BakerHostetler
Joshua Goldberg Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Jeffrey A Berkowitz Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Dov Grossman Williams & Connolly LLP
Aziz Burgy Axinn, Veltrop & Harkrider LLP
James Heintz DLA Piper
See p1400
See p1408
Chris Campbell King & Spalding LLP
John R Hutchins Banner Witcoff
Alexander Chinoy Covington & Burling LLP
Nicole M Jantzi McDermott Will & Emery
Boyd Cloern Steptoe & Johnson LLP
Michael E Joffre Sterne Kessler Goldstein & Fox PLLC
Ahmed Davis Fish & Richardson
Michael L Kiklis Bass, Berry & Sims PLC
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IAM Patent 1000 1371
United States: DC Metro Area Andrew Kopsidas Fish & Richardson Alex Lasher Quinn Emanuel Urquhart & Sullivan LLP Joseph Lavelle DLA Piper Lionel M Lavenue Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Christine Lehman Reichman Jorgensen Robert Mattson Mattson IP Frederic M Meeker Banner Witcoff Erik Milch Cooley LLP F Christopher Mizzo Kirkland & Ellis LLP Indranil Mukerji Willkie Farr & Gallagher C Kyle Musgrove Parker Poe Adams & Bernstein LLP Jeffrey A Pade Paul Hastings LLP Luke K Pedersen Baker Botts LLP Scott J Pivnick Alston & Bird LLP Kecia J Reynolds Pillsbury Winthrop Shaw Pittman LLP Barbara Rudolph Finnegan, Henderson, Farabow, Garrett & Dunner, LLP H Keeto Sabharwal Pillsbury Winthrop Shaw Pittman LLP Paul Schoenhard McDermott Will & Emery
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Baker Botts LLP
Ideally placed to weather uncertainty in the market, thanks to the breadth of its patent capabilities, Baker Botts maintains a large group of versatile lawyers who stay sharp in multiple areas of patent practice and can pivot with agility when needed. Regardless of the economic situation, the firm draws immense strength from its well-roundedness and attracts prestigious patrons with its promise of a fulsome service. Helping it to deliver on this resoundingly is the ambidextrous Luke Pedersen, who provides insightful opinions, prosecutes extensively, litigates and closes deals for the likes of Brother Industries; he recently filed an ITC case for the Japanese multinational taking aim at 30-plus companies in the United States and China that are allegedly infringing Brother’s toner cartridge technology patents. With him on this is Lisa Kattan, DC IP group chair and leader of the ITC practice. A former senior investigative attorney at the ITC, Kattan has insider knowledge which hones her strategic focus. Michael Sartori is the other linchpin in DC and a prosecution maestro who builds longstanding relationships based on trust, quality and businessaligned outcomes.
Banner Witcoff
Banner Witcoff’s USP is its world-class design patents capability – very few competitors in the United States have anything near its levels of know-how in this niche. Robert Katz and Darrell Mottley run the show and produce flawless design patent procurement and enforcement work for prestigious brands such as Nike, which has instructed the firm since 1992. Katz and Mottley are also integral to the utility patent practice, which is relied on for watertight protection by Fortune 500s, solo inventors and everyone in between. Frederic Meeker is a go-to for innovators in the communications field, among others. He takes the lead in representing Comcast, which benefits from his prosecution prowess, superlative post-grant expertise and litigation experience. With such a multilayered practice, Meeker is brilliant at long-range strategic thinking. Anyone interested in videogames and intellectual property should have Banner Witcoff on their list; in Ross Dannenberg, it has an authority on matters at the intersection of these subjects. He has helped Wargaming.net to develop a portfolio of 20-plus patents encompassing various technologies such as input techniques, user training and player matchmaking for games including World of Tanks. It is clear from the quality of his work and his dedication that he loves what he does. This level of passion is shared by a lot of folks here, which is another hallmark of the firm. John Hutchins gives 110% as a patent litigator and is ready
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United States: DC Metro Area to do battle over any type of technology. He shoulders a huge load for clients such as ZTE Corporation, which he is representing in two matters against Sisvel – one involving 12 patents and the other nine – as well as 12 associated inter partes reviews.
Birch, Stewart, Kolasch & Birch, LLP
Birch, Stewart, Kolasch & Birch dispenses the full suite of patent services, but is best known for its proficiency in prosecution. The boutique has prepared, filed and successfully registered a dizzying number of patents over the past 45 years, giving it vast institutional knowledge of USPTO practice. Adept in all kinds of post-grant proceedings as well as litigation, it protects clients through thick and thin. For a key contact, look to biochemistry PhD MaryAnne Armstrong, who anchors the life sciences practice. She was recently appointed to the EPO’s Standing Advisory Committee, which is testament to her eminent international standing.
Blank Rome LLP
A trusted guide throughout all phases of the patent lifecycle, Blank Rome fields accomplished litigators and prosecutors in DC, Houston, Philadelphia and New York, who work collaboratively to get things right first time. Zooming in on the prosecution practice, the firm has an aptitude for software patent protection, but also performs adroitly in the electrical engineering and life sciences spaces – the respective focuses of Stephen Soffen and James Brady. Soffen has cultivated a broad view of the patent world through his involvement in prosecution, post-grant, litigation and licensing, making him a sought-after opinion giver and counsellor. Brady also demonstrates impressive range for his pharmaceutical and biotechnology patrons. Between them, they have many decades of experience. On the contentious front, Dipu Doshi and Salvatore Tamburo spearhead important campaigns, keeping their eyes firmly trained on the prize. One recent victory came in July 2020 with an early summary judgment win defending Oshkosh as a contractor to the US government which was sued for patent infringement by Ideal Innovations and others. Doshi seamlessly transmutes from counsellor and portfolio manager to tenacious litigator and serves his global clients with agility, whatever they need. Tamburo has been to trial on numerous occasions, but often facilitates early wins. See p1658 for firm profile
Bookoff McAndrews PLLC
Among the best in the country in its focused domain of patent counselling and prosecution, Bookoff
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McAndrews has fostered an environment in which egos are checked at the door and teamwork, engagement, responsiveness and fun are prioritised. This brings a real energy to its practice that clients relish – not least in the quality of outcomes achieved: “BoMc provides the best service you could ask for: it’s technical understanding is exemplary, its commitment to excellence unquestionable and its billing transparency and reasonableness on fees commendable.” The firm was designed to a high specification by Les Bookoff and Roland McAndrews, two lawyers who can’t be beaten for portfolio management skill, strategic insight, business acumen or medical device industry knowledge. They have assembled a diverse, highperforming squad that is only getting stronger as newly elected partners such as Jessica Winchester step up their contributions. Propelled into the IAM Patent 1000 on a wave of outstanding feedback, Winchester is “diligent, detail-oriented, efficient, communicative, dependable and incredibly service oriented. When you send instructions her way, you can rest assured they will be carried out to the highest standard without any oversight required”. She is an integral member of a large team doing cutting-edge work for Boston Scientific, other members of which include the two name partners and Dinesh Melwani and Kirsten Johnson, who also garner glowing notices. “Dinesh is clear and concise in his explanations and recommendations, and a great lateral thinker whose broad insight and analysis enhance discussions tremendously.” “Kirsten doesn’t just get what she needs to draft a patent and file it; she talks to her clients about their innovation, the market, the end user, the exit strategy and budgets, and in this way dives deeper than other attorneys. Understanding why you are filing a patent, she writes up claims that your company valuation will benefit from and maps out where you can take things globally.” Reflecting on a recent due diligence project, one source comments: “We were grilled by an investor’s IP attorneys, but Kirsten took over and made them extremely comfortable with our IP position. She never put a foot wrong and turned an intense interrogation into a walk in the park – she doesn’t crack under pressure.” Another “top-notch attorney who deserves all his recognition”, Christopher Agrawal shares many of these attributes and has put them to good use growing the firm’s computer and internet practice. His leadership inspires his colleagues and clients such as Honeywell International, whose aerospace division he supports with the patenting of industrial Internet of Things (IoT) technologies.
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United States: DC Metro Area Stephen T Schreiner Carmichael IP PLLC
Jamie Underwood Latham & Watkins LLP
Adam Shartzer Fish & Richardson
Dennies Varughese Sterne Kessler Goldstein & Fox PLLC
Christopher N Sipes Covington & Burling LLP
David Vondle Akin Gump Strauss Hauer & Feld LLP
Jennifer Sklenar Arnold & Porter Kaye Scholer LLP
T Cy Walker BakerHostetler
S Lloyd Smith Buchanan Ingersoll & Rooney PC
Steven Weihrouch Rothwell, Figg, Ernst & Manbeck, PC
Robert E Sokohl Sterne Kessler Goldstein & Fox PLLC
Mark L Whitaker Morrison & Foerster LLP
Andrew Sommer Greenberg Traurig LLP
Brandon White Perkins Coie LLP
Rich Sterba Fish & Richardson
Jovial Wong Winston & Strawn LLP
Sanya Sukduang Cooley LLP
Megan S Woodworth Venable LLP
Salvatore Tamburo Blank Rome LLP
See p1356
D Sean Trainor O’Melveny & Myers LLP
Buchanan Ingersoll & Rooney PC
With many former USPTO examiners among its 45 registered practitioners – who collectively have nearly 7,000 patents in active prosecution – Buchanan maintains a rich and vibrant procurement and opinions practice. An added specialisation in postgrant proceedings and litigation gives it the feel of a boutique, but one that offers the advantages of a full-service outfit. The firm has a new face on the prosecution listings this year in Shawn Cage, who co-chairs the electrical group. He acquits himself with distinction supporting the portfolio development of Mastercard Worldwide, a client for which Buchanan’s broad IP horizons are a major boon. Cage does this alongside IP co-chair Charles Wieland, an attorney who guarantees efficiency, cost effectiveness and above all quality. Wieland has an impressive record at the PTAB, too – one which rivals that of top specialists in the group. Taking the lead on mechanical matters, meanwhile, is William Rowland, a stalwart of the
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Qingyu Yin Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Martin M Zoltick Rothwell, Figg, Ernst & Manbeck, PC
practice who has instilled a client and qualityfirst mentality in the group. Steeped in post-grant know-how – he is an authority on interferences – sophisticated strategist and advocate Todd Walters heads the USPTO contested proceedings practice, working alongside other high-level contributors including Patrick Keane and Matthew Fedowitz. A percipient patent strategist, Keane understands how to use litigation and America Invents Act (AIA) proceedings, among all other available tools, for the purposes of IP value creation. Fedowitz’s duality as a prosecutor and litigator gives him a skillset fit for successful PTAB representations. For Lloyd Smith, who has fought and won cases in all IP categories, court litigation is the name of the game. He and Fedowitz have teamed up on a number of pharmaceutical cases, giving his recent patent activities a strong life science bent.
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United States: DC Metro Area Mercedes K Meyer Faegre Drinker Biddle & Reath LLP
Individuals: prosecution Highly recommended Erika Harmon Arner Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Les Bookoff Bookoff McAndrews PLLC
Michael Sartori Baker Botts LLP Mark D Sweet Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Courtenay Brinckerhoff Foley & Lardner LLP David L Cavanaugh Wilmer Cutler Pickering Hale and Dorr LLP
Ping Wang Morris Manning & Martin LLP Recommended Christopher Agrawal Bookoff McAndrews PLLC
Tracy-Gene G Durkin Sterne Kessler Goldstein & Fox PLLC Greg H Gardella Gardella Grace PA
W Karl Renner Fish & Richardson
See p1405
Hussein Akhavannik BakerHostetler
Jorge Goldstein Sterne Kessler Goldstein & Fox PLLC
MaryAnne Armstrong Birch, Stewart, Kolasch & Birch, LLP
John F Hayden Fish & Richardson
W Todd Baker Kirkland & Ellis LLP
R Danny Huntington Rothwell, Figg, Ernst & Manbeck, PC
Jack Barufka Pillsbury Winthrop Shaw Pittman LLP
Thomas L Irving Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Jonathan Bockman Morrison & Foerster LLP
Song K Jung Dentons Robert Katz Banner Witcoff
James W Brady Jr Blank Rome LLP Martin A Bruehs Dentons
Michael Q Lee Sterne Kessler Goldstein & Fox PLLC
Adriana L Burgy Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
David R Marsh Arnold & Porter Kaye Scholer LLP
Elizabeth Burke Jones Robb PLLC
Roland G McAndrews Bookoff McAndrews PLLC
Shawn B Cage Buchanan Ingersoll & Rooney PC
Scott A McKeown Ropes & Gray LLP
James T Carmichael Carmichael IP PLLC
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IAM Patent 1000 1375
United States: DC Metro Area Richard Chinn Grüneberg and Myers PLLC
See p1401
Richard D Coller III Sterne Kessler Goldstein & Fox PLLC Jeffrey L Costellia Nixon Peabody LLP
John Harrity Harrity & Harrity LLP Paul Harrity Harrity & Harrity LLP
See p1402
Andrew Harry Xsensus LLP
Henry J Daley Venable LLP
Aydin Harston Rothwell, Figg, Ernst & Manbeck, PC
Ross A Dannenberg Banner Witcoff
David L Holt Fish & Richardson
Michael Dilworth Dilworth IP
Nick Jepsen Fish & Richardson
Jacob A Doughty Element IP
Kirsten Johnson Bookoff McAndrews PLLC
Donald J Featherstone Sterne Kessler Goldstein & Fox PLLC
Susanne T Jones Jones Robb PLLC
Matthew L Fedowitz Buchanan Ingersoll & Rooney PC
David EA Jordan Fish & Richardson
Elizabeth D Ferrill Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Alan J Kasper Sughrue Mion PLLC
Thomas Fiala Fiala & Weaver PLLC
Patrick C Keane Buchanan Ingersoll & Rooney PC
Michael E Fogarty McDermott Will & Emery
Brian L Klock Venable LLP
James Gatto Sheppard, Mullin, Richter & Hampton
Mark R Kresloff Dentons
Natalie J Grace Gardella Grace PA
See p1407
Phyllis K Kristal Fish & Richardson
C Gregory Gramenopoulos Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Stephen G Kunin Maier & Maier PLLC
Kirsten A Grüneberg Grüneberg and Myers PLLC
Kevin B Laurence Laurence & Phillips IP Law
See p1409
Paul Gurzo Harrity & Harrity LLP
Hosang Lee Morgan Lewis & Bockius LLP
Robert L Hails Jr BakerHostetler
Angel Lezak Polsinelli PC
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See p1410
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United States: DC Metro Area Carmichael IP PLLC
Bradley Lytle Xsensus LLP Jill D MacAlpine Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Stephen B Maebius Foley & Lardner LLP Christopher Maier Maier & Maier PLLC Timothy J Maier Maier & Maier PLLC Frederic M Meeker Banner Witcoff
Cooley LLP
Dinesh N Melwani Bookoff McAndrews PLLC Erik Milch Cooley LLP Marina I Miller Oblon Darrell G Mottley Banner Witcoff Eric Myers Grüneberg and Myers PLLC Tayan Patel BakerHostetler Luke K Pedersen Baker Botts LLP Daniel J Pereira Oblon George E Quillin Foley & Lardner LLP Timothy W Riffe Fish & Richardson Kevin D Robb Jones Robb PLLC Brian Rosenbloom Rothwell, Figg, Ernst & Manbeck, PC
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Carmichael IP provides a wide range of strategic patent services but, established by former PTAB judges, it manifests a rare faculty for post-grant proceedings. Knowledgeable about AIA trials to a degree that few other firms are, it is a repository of trust for patent owners in urgent need of a win. One of those former judges, James Carmichael – who has also served the USPTO in other capacities – has rich prosecution, post-grant and Federal Circuit experience to draw on, making him a vital strategic sounding board. Stephen Schreiner holds his own in all manner of contentious matters and is gifted at prosecution, portfolio development and other facets of patent practice, making him another discerning choice for wraparound counsel.
See p1411
At the national level, few rivals can claim Cooley’s maturity across the full patent spectrum. A must for holistic support, it attracts high-level clients for which patent rights are pivotal to business. The key contacts for many of these are based in its DC metro area offices, which are home to several current and former practice group leaders. Michael Tuscan, for example, previously served as counselling and prosecution group co-chair and is now the DC partner in charge. A prime pick for biotechnology companies within an acclaimed US and international life sciences practice, Tuscan drafts and prosecutes patents with finesse, while adding tremendous value as a far-sighted strategist and IP commercialisation lawyer. He manages the worldwide IP portfolio of Compass Pathways, which recently became the first pharmaceutical psilocybin company to be listed on a US exchange. Reston’s Scott Talbot has a similarly broad skillset which he applies on behalf of innovative medical technology companies such as Farapulse, which is at the cutting edge of pulsed field ablation therapy for atrial fibrillation; Talbot has built its entire patent portfolio and defended IP diligence by investors in several financing rounds. On the contentious front, DC-based Stephen Smith chairs the firmwide IP litigation practice and makes his IAM Patent 1000 debut for 2021 in recognition of the stellar leadership he brings both to the group and to cross-office litigation teams. He and fellow trial lawyer Erik Milch recently linked up to reverse a jury verdict awarded against long-time client Nintendo, consequential to which loss was an unsuccessful inter partes review in which Nintendo was advised by another firm; that they overturned a jury verdict in Texas in this way is a good measure of their high-calibre advocacy skills. Cooley’s trial bench has grown stronger with the recent arrival of
IAM Patent 1000 1377
United States: DC Metro Area William C Rowland Buchanan Ingersoll & Rooney PC
former Finnegan partner Sanya Sukduang, who brings added pharmaceutical patent litigation firepower. He is representing CSL Bhering in a competitor biologics case with corresponding UK and German litigation and EPO opposition proceedings. Adam Ruttenberg is the local licensing and transactions star.
Thomas Rozylowicz Fish & Richardson Takashi Saito McDermott Will & Emery
Covington & Burling LLP
Daniel G Shanley Hunton Andrews Kurth LLP Jason M Shapiro Edell Shapiro & Finnan LLC
See p1413
Kenneth J Sheehan BakerHostetler Vincent K Shier Oblon Philippe Signore Oblon Michele Simkin Foley & Lardner LLP Robert Smyth Morgan Lewis & Bockius LLP
Dentons
Stephen A Soffen Blank Rome LLP Robert E Sokohl Sterne Kessler Goldstein & Fox PLLC Eric Sophir Foley & Lardner Eric K Steffe Sterne Kessler Goldstein & Fox PLLC Deborah Sterling Sterne Kessler Goldstein & Fox PLLC C Scott Talbot Cooley LLP David M Tennant White & Case LLP Michael Tuscan Cooley LLP
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Major technology companies place their faith in Covington & Burling and dial it up for representation in bet-the-farm patent litigations. Its formidable contentious capabilities come courtesy of luminaries such as American College of Trial Lawyers fellow George Pappas; Kevin Collins, whose broad-ranging IP and commercial litigation practice has taken him through nearly 50 trials; and Richard Rainey, who brings top-level in-house experience to the table. For ITC matters of distinction, Covington is incredibly well equipped, with Sturgis Sobin and Alexander Chinoy both specialists in this vital forum. A preferred choice for life sciences mandates, too, it puts Einar Stole and Christopher Sipes onto the playing field for maximum impact. The firm’s deal practice is just as sophisticated, thanks to the captaincy of John Hurvitz, who also co-chairs the life sciences group; he has brokered deals of just about every variety around the world. Meanwhile, settlement negotiations maestro Stuart Irvin ensures that the transactions and litigation practices are well connected.
See p1414
Dentons has a unique ability to fulfil global patent needs and leverages a vast network and some 600 IP and technology-focused lawyers to superb effect. More than 100 of these are based in offices across the United States, giving innovators exceptional national coverage. Without integration, though, these resources would not have half their value – which is where Song Jung comes in: awesome as global chair of the practice, he has a gift for motivation and gets the entire firm pulling in the same direction. He bears weighty responsibilities for his clients too – most notably LG, for which he handles a docket of over 8,000 US patent matters across its electronics, display and chemical businesses. With him on this is Mark Kresloff, a prosecution expert who has operated at the cutting edge of developments in mobile technologies throughout his career; his work – as well as time spent overseas, including in South Korea – has given him a global IP view. Chemical practice Martin Bruehs likewise has a broad wheelhouse and executes cross-border IP protection and development strategies for life sciences, medical technology and other innovators. He also leans heavily into the litigation practice and recently took
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United States: DC Metro Area Michele Van Patten Frank Venable LLP Todd R Walters Buchanan Ingersoll & Rooney PC Jeffrey S Weaver Fiala & Weaver PLLC Steven Weihrouch Rothwell, Figg, Ernst & Manbeck, PC Charles F Wieland III Buchanan Ingersoll & Rooney PC Jessica Winchester Bookoff McAndrews PLLC Jeffrey A Wolfson Haynes and Boone LLP
the lead in obtaining a favourable settlement for Bodor Laboratories in a patent licensing dispute comprised of two district court actions and an arbitration proceeding against Brickell Biotech and Kaken Pharmaceutical. True-blue litigator Mark Hogge has orchestrated complex patent proceedings in all major forums involving all fields of technology. He brings the heat in the ITC where, alongside Jung, he has recently been representing LG Chem against SK Innovation in a trade secret misappropriation matter relating to batteries for electric vehicles.
Faegre Drinker Biddle & Reath LLP
Nothing is off limits in patent practice for Faegre Drinker, which has the technical might to prosecute and manage large global portfolios in any domain and the contentious muscle to enforce and defend patents against the toughest opponents; its IP and technology lawyers also collaborate with colleagues in other departments to assist clients with their patent-driven commercial dealings. Well known to the life sciences community, the firm has a marquee name in DC in Mercedes Meyer. Showcasing strong commercial instincts, she guides pharmaceutical and biotechnology concerns through the patenting process with a deft touch, always acting in accordance with wider strategic plans and with an eye out for business opportunities. Another compelling reason to call on Faegre Drinker in DC is the presence of Robert Stoll, a former USPTO leader and a lawyer with vast experience at the vanguard of modern IP development.
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Yanbin Xu Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Michael X Ye Morris Manning & Martin LLP Masahito Yokoyama Xsensus LLP Michael Young Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Ngai Zhang Pillsbury Winthrop Shaw Pittman LLP Martin M Zoltick Rothwell, Figg, Ernst & Manbeck, PC
Fiala & Weaver PLLC
Configured to meet and exceed all prosecution needs, Fiala & Weaver offers the highest quality at a reassuringly sensible price point. Leanly structured and comprised of highly trained, technically accomplished members, the firm deploys state-ofthe-art technologies to procure and manage patents with utmost efficiency. Instilling the group with a laser business focus are directors and co-founding partners Thomas Fiala and Jeffrey Weaver. Both elevated strategic thinkers, they have been drawing a growing crowd from the IoT, data encryption and IT automation fields of innovation.
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP The conscientious cultivation of a diverse, inclusive workplace has been crucial to sustained IP success at Finnegan: freely exchanging creative ideas – in the same way that clients do in the innovative process – the lawyers here thrive. Unbelievable depth is another key feature of the group, which handles the gamut of patent assignments across all technological disciplines with exactitude. Global reach is a further selling point: Finnegan’s offices in London, Seoul, Shanghai, Taipei and Tokyo are staffed with likeminded professionals who combine to support clients when and where required. Putting the ensemble’s prosecution activities under the microscope, Finnegan files roughly 3,000 US patents each year and half that number again overseas, with a fantastic hit rate. Newly featured in the IAM Patent 1000 prosecution rankings for 2021 are Jill MacAlpine and Michael Young, both of whom play important roles: organic chemistry PhD MacAlpine
IAM Patent 1000 1379
United States: DC Metro Area captains the patent office practice and, with her broad skillset, is a perfect fit for dynamic life sciences entities innovating across multiple therapeutic areas. Young prosecutes principally in the computer science field and is the lead partner for a top bank whose domestic and international prosecution he oversees. Both are also noteworthy for their contentious expertise, with MacAlpine playing a strong hand in Hatch-Waxman litigation and Young in post-grant proceedings. Few of Finnegan’s lawyers can be easily pigeonholed, which is a great strength of the firm; a multiplicity of purpose is discernible in the practices of Mark Sweet, Adriana Burgy, Yanbin Xu and Gregory Gramenopoulos, who round out the prosecution list. Chairman and former managing partner Sweet undertakes wide-ranging portfolio, counselling and post-grant duties, as does Burgy; Xu litigates and prosecutes with aplomb; and Gramenopoulos excels as a strategic counsellor and licensing negotiator. Working alongside designs authority Elizabeth Ferrill, another multi-talented star, Gramenopoulos represents Google in protecting its innovative graphical user interfaces and icons, as well as product designs for mobile devices. Google is just one of Ferrill’s household-name clients; she also treats Caterpillar and Eli Lilly to an exemplary service. Finnegan’s litigation and post-grant practices have also been cooking in recent years, with contributions coming from a great many lawyers, including Charles Lipsey and Michael Jakes, heavyweights of the firm’s market leading life sciences patent litigation and appellate offerings respectively. Other crack pharmaceutical litigators include James Monroe, Bryan Diner and Barbara Rudolph – the latter a key member of a cross-office Atlanta, DC and Tokyo team that recently achieved a Federal Circuit victory for Kaken Pharmaceuticals and Bausch Health that revived a key patent covering its Jublia product, which the PTAB had declared unpatentable for obviousness. ITC litigation is another Finnegan forte, with Smith Brittingham, Qingyu Yin and Mareesa Frederick forming a high-calibre line-up of Section 337 investigations specialists. Brittingham and Yin have lately represented SZ DJI Technology, against which Autel Robotics requested an investigation seeking to prevent DJI from selling drones with intelligent operations such as obstacle avoidance; they secured a favourable initial determination from the administrative law judge, following which great success was achieved at the PTAB challenging the asserted claims from all three patents involved in the ITC proceeding. Meanwhile Frederick, together with James Barney and Taipei-based Gary Ma, secured a summary determination of no infringement on behalf of REC Solar Holdings and REC Americas against
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Hanwha Global Asset Corporation, which sought to exclude REC’s solar cells and modules from importation into the United States, granted by the administrative law judge and adopted by the full ITC. Lionel Lavenue also has ample experience in this forum, as in many others – which is unsurprising, given his handling of some 200 patent cases. In one recent precedential suit, he vacated a $110 million judgment against client TCL Communication, which was sued for patent infringement in the Eastern District of Texas by Ericsson and found to have wilfully infringed – a decision which he had reversed by the Federal Circuit. The wins on the post-grant side also come thick and fast, thanks again to the efforts of many – not least Erika Harmon Arner and Thomas Irving, two celebrities who have demonstrated thought and practice leadership since the passage of the AIA. New to the IAM Patent 1000 for 2021, Joshua Goldberg takes charge of the PTAB practice and has special expertise on inter partes reviews arising in connection with ITC cases. Michael Flibbert’s advocacy and technical talents are frequently on show at the PTAB, as well as in ITC matters and Hatch-Waxman Act litigation. Jeffrey Berkowitz is another Swiss Army knife of a practitioner: with the knowledge and skills of a precision prosecutor, he also makes light work of all types of adversarial proceedings. The versatility of Finnegan’s lawyers helps to create valuable connections between different divisions: Doris Johnson Hines , for example, bridges the litigation and transactions units and has a flair for FRAND issues. Advocacy and deal brokering are likewise twin focuses for Brian Kacedon; he and Hines have been jointly representing a leading automaker in connection with the licensing of SEPs. John Paul’s name reverberates in licensing circles: he is the president-elect of the Licensing Executives Society International. Alongside him, William Pratt is another doyen of Finnegan’s transactions group. See p1678 for firm profile
Fisch Sigler LLP
Trial boutique Fisch Sigler believes in the power of diversity, maintains a collaborative culture, practises with civility, makes optimum use of legal technology solutions and offers flexibility on fee arrangements. All these things make it a vital ally in the trenches of highstakes patent and IP disputes, and contribute to its dynamite record of success. One recent highlight was a settlement for Largan Precision in its long-running dispute with optical lens competitor Ability OptoElectronics Technology. A genius trial lawyer who does things in the right way and for the right reasons, Alan Fisch continues to stand out even among his fellow gold-tier occupants in the IAM Patent 1000.
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United States: DC Metro Area Fish & Richardson
World-class IP outfit Fish is scarcely rivalled for global patent prosecution. Leveraging its presence in the United States, Europe and China and an incredibly deep pool of technical and strategic talent, it prosecutes some 5,000-plus US patents and 4,000-plus foreign patents each year. Steering the ship is DC-based patent group leader John Hayden, whose management abilities, instinct for efficiency savings and sophisticated understanding of patent quality make him perfect for the role. Fellow highlevel operatives in DC include Nick Jepsen, David Jordan and Phyllis Kristal, each of whom brings something special to the table. In the electrical, computer and medical technology spaces, Jepsen “provides great value in developing invention concepts into patentable intellectual property and writing strong and defensible claim sets; he is highly adept at negotiating with USPTO examiners, too”. Prolific prosecutor Jordan has an amazing success rate in the challenging field of software protection – one which he has absolutely mastered. Mechanical engineering is the metier of Kristal, a senior stateswoman of the firm who joined in 1993 and has been dispensing sage counsel and opinions to a huge number of innovative companies in many sectors ever since. Special attention should also be paid to Fish’s post-issuance proceedings experts, who drive the market’s busiest PTAB practice – and certainly one of the best. The fulcrum around which this turns is Karl Renner, a veteran of hundreds of AIA proceedings and a founding director of the PTAB Bar Association, which he now serves as president elect. Timothy Riffe doubles up as one of Fish’s top ITC litigators and has one of the most sophisticated contentious IP toolkits not just in the firm, but in the country. PTAB Bar Association board member Thomas Rozylowicz and David Holt bring added dynamism to the group, courtesy of their proficient advocacy and technical dexterity. To the latter point, Rozylowicz has impressive engineering experience on his résumé, having directed research into secure communications at the National Security Agency; while former examiner Holt was previously a software engineer in industry. Despite all the wonderful achievements of its prosecution and post-grant divisions, Fish remains best known for its contentious prowess and its indomitable performances in trials, appeals and Section 337 investigations. The headline acts are Michael McKeon and Ruffin Cordell, whose trial seasoning, calmness under pressure, strategic acumen and narrative gifts are behind many genre-defining wins. They are two among several potent ITC lawyers
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– other notable names being Riffe, Rich Sterba, Andrew Kopsidas and Joseph Colaianni. Sterba has tried more than a dozen cases at the ITC out of nearly 30 investigations he has handled; alongside colleagues in Boston and San Diego, he is currently representing Intuitive Surgical at the ITC and in co-pending inter partes reviews against Ethicon Endo-Surgery in a dispute over robotic surgical systems. Kopsidas and Colaianni also make the difference in this fast-paced forum – the former with his tenacity and efficiency, and the latter with his encyclopaedic procedural knowledge and sparkling presentation. All of Fish’s litigators translate their advocacy into success no matter what the forum. Lauren Degnan hammers out the right results in high-technology suits spanning many district courts, the ITC, the PTAB and the Federal Circuit; as do Christian Chu, a top appellate lawyer; Ahmed Davis, a compelling storyteller; and rising star Adam Shartzer, a “well-organised, thoughtful and effective communicator”.
Foley & Lardner LLP
Foley & Lardner has always emphasised wellroundedness in patent law: it isn’t just chasing the big litigations for prestige or fees (although it handles many), but rather prioritises the provision of a holistic service. Cross-practice expertise is something that many of its leading lights in DC and other offices can justly claim: Stephen Maebius, for example, negotiates prizewinning deals, represents parties in litigation and post-grant proceedings, and supports many clients as a portfolio manager and counsellor. He, Courtenay Brinckerhoff and Michele Simkin form the backbone of a thriving life sciences practice that has all bases covered for pharmaceutical and biotechnology innovators. Brinckerhoff knows which the way the wind is blowing in the industry and tailors her advice accordingly; she undertakes significant prosecution and post-grant assignments. Simkin brings strong leadership to the firmwide IP department, serving as its chair, and also lights the path forward for clients when it comes to procuring, managing and commercialising patents. Eric Sophir, meanwhile, has become an anchor of the electronics practice since he joined in Spring 2020. He operates artfully across the contentious/non-contentious divide, but is at his best designing and executing long-play patent strategies. A vital sounding board on all kinds of patent matters, veteran partner George Quillin is a noted authority on post-grant proceedings and leader of the PTAB practice.
IAM Patent 1000 1381
United States: DC Metro Area Tayan Patel BakerHostetler
Individuals: transactions Jack Barufka Pillsbury Winthrop Shaw Pittman LLP David L Cavanaugh Wilmer Cutler Pickering Hale and Dorr LLP Jeffrey L Costellia Nixon Peabody LLP
See p1402
John C Paul Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Luke K Pedersen Baker Botts LLP
Nora E Garrote Venable LLP
William H Pratt Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Jorge Goldstein Sterne Kessler Goldstein & Fox PLLC
Michael B Ray Sterne Kessler Goldstein & Fox PLLC
Susan E Hendrickson Arnold & Porter Kaye Scholer LLP
Kristen Riemenschneider Arnold & Porter Kaye Scholer LLP
Doris Johnson Hines Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
William T Russell Venable LLP
John Hurvitz Covington & Burling LLP
Adam Ruttenberg Cooley LLP
Stuart Irvin Covington & Burling LLP
Jason M Shapiro Edell Shapiro & Finnan LLC
Song K Jung Dentons
Robert E Sokohl Sterne Kessler Goldstein & Fox PLLC
D Brian Kacedon Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Robert Greene Sterne Sterne Kessler Goldstein & Fox PLLC
Patrick C Keane Buchanan Ingersoll & Rooney PC
David M Tennant White & Case LLP
Michael Q Lee Sterne Kessler Goldstein & Fox PLLC
Michael Tuscan Cooley LLP
Stephen B Maebius Foley & Lardner LLP
David Vondle Akin Gump Strauss Hauer & Feld LLP
J Derek Mason Oblon
Ping Wang Morris Manning & Martin LLP
Gardella Grace PA
Gardella Grace knocks it out of the park when it comes to post-grant proceedings, but is also a discerning choice for a whole range of patent procurement, trade secret protection, IP transactions and litigation tasks. The ensemble’s work for Aon Corporation speaks to
1382 IAM Patent 1000
See p1413
See p1414
its versatility: Greg Gardella has developed a broad portfolio for the company, whose full IP needs he takes care of. The firm’s representation of medical device company Fulfillium is another case in point; Gardella, with back-up from his team, has obtained patents for it and successfully enforced them against multiple parties
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United States: DC Metro Area in multiple forums. Best known for his PTAB prowess, Gardella has a superlative track record defending companies’ most valuable patents in post-grant proceedings. In all endeavours, he gets robust support from Natalie Grace, who debuts in the IAM Patent 1000 this year. The pair are recommended for their “downto-earth, get-the-job-done attitude and complete lack of hubris”. They are also “extremely user friendly for non-lawyers” because “their communication is so easy and clear”. Another newcomer to the listings is Cook Alciati, the firm’s principal litigator. See p1684 for firm profile
Gibson Dunn & Crutcher LLP
Gibson Dunn has the moxie to take on and win betthe-company patent litigations; its phalanx of eminent trial lawyers pursues aggressive strategies to resolve disputes favourably in court or, as is often the case, much earlier. Holding the fort in DC, Brian Buroker is a master tactician and oral advocate who knows what resonates and persuades in district court, ITC and PTAB proceedings. He has been a key member of trial teams representing major clients such as AT&T and a leader of them in other matters of high importance. A good example in this regard is his representation of Allergan in an ITC investigation against Korean company Daewoong Pharmaceutica arising from its import and sale of a botulinum toxin product that was allegedly developed with trade secrets misappropriated from Medytox, Allergan’s licensing partner; in July 2020, the administrative law judge issued a final initial determination in favour of Allergan. When matters go up on appeal, Gibson Dunn has a not-so-secret weapon in Mark Perry, who co-chairs the national appellate and constitutional law group and is key to the firm’s formidability.
Goodwin Procter LLP
Goodwin Procter is impeccably prepared for Section 337 investigations at the ITC, with specialised and well-adapted professionals Patrick McCarthy, Ronald Pabis, Stephen Shahida and Mark Davis on deck. Coming in for special praise, McCarthy impresses for his “dedication, diligence, enthusiasm, constant availability and excellent results in very challenging cases”. He has recently represented large lightemitting diode (LED) display manufacturers, including Glux Visual Effects Tech, which hired him in place of previous counsel for several inter partes reviews. He, Pabis and Shahida have also teamed up to represent Ecoservices in an appeal arising from a jury trial win against Certified Aviation Services. Whichever forum their matters take them to, all four lawyers work with agility and weave together unique stories that cause
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opponents to shift positions, creating new strategic openings to capitalise on. The firm’s DC office is graced by the presence of other luminaries such as William James and William Jay. One of the top pharmaceutical patent litigators in the capital, James is recommended as a “whip-smart, even-keeled and strategic lawyer with a very strong courtroom presence”; he has “immediate credibility with judges, technical experts and anyone else he comes across”, and “understands how to simplify the science to argue his point”. “Bill also appreciates how to staff matters to ensure budgets are met and takes a very hands-on and collaborative approach.” He works closely with New York’s Elizabeth Holland – a fellow IAM Patent 1000 gold-ranked lawyer – in many Hatch-Waxman litigations. Jay leads the local litigation group and co-chairs the national appellate practice. He’s an award-winning Federal Circuit and Supreme Court lawyer with incredible experience in patent and other IP disputes.
Grüneberg and Myers PLLC
Rave reviews flood in for this “exceptional boutique”. “I have worked with several firms on patent matters in recent years, but none has been as professional or attentive to our needs as Grüneberg and Myers – frankly, they’re not even close,” reports one source. “It tracks and monitors every aspect of our filings so our executive team has never had to stress about deadlines or decisions – we are automatically reminded when actions are due and receive detailed recommendations on courses of action at each point in the process. The legal advice has been sound and we’ve secured our patents much quicker than we expected to do so. The practitioners there are always available to answer any questions and respond immediately to our needs; they also provide exceptional value for the reasonable cost of their services.” The firm was founded by organic chemistry PhD Kirsten Grüneberg, who has masterminded continued expansion, rapid growth in business from Asia, success in high-value pharmaceutical projects and the implementation of legal technology to enhance efficiencies. She is joined in the listings this year by co-founder Eric Myers and fellow PhD Richard Chinn – the former recommended for his strategic and business sense and the latter for his deep scientific knowledge. See p1688 for firm profile
Harrity & Harrity LLP
“Efficient, timely and cost effective”, Harrity & Harrity is the preferred choice of many when it comes to patent prosecution. A “role model”, it has “implemented some clever procedures and modes of operation, enabling it to consistently deliver work
IAM Patent 1000 1383
United States: DC Metro Area of the very highest standard of quality”. Central to this are the thorough second-attorney review system and uniform writing style championed by founding partners John Harrity and Paul Harrity, who are also responsible for the boutique’s innovation drive, by which large numbers of statistics are tracked so that performance can be precisely measured and improvements implemented. These improvements are often underpinned by technology such as the massive proprietary database that the firm uses to drive intelligent prosecution and its interactive Patent 300 dashboard, which gives clients access to rare insights harvested by the patent analytics group. The software experts here had a busy 2020, developing several new products, such as a patent drafting tool designed to help their attorney colleagues – including the Harrity brothers and Paul Gurzo – focus on patent quality as opposed to more administrative tasks.
Luminaries G Brian Busey Morrison & Foerster LLP E Anthony Figg Rothwell, Figg, Ernst & Manbeck, PC Alan M Grimaldi Mayer Brown Perry Saidman Saidman DesignLaw Group Robert L Stoll Faegre Drinker Biddle & Reath LLP
Dedicated to excellence in patent prosecution and counselling, Jones Robb provides a captivating service whose hallmarks are partner attention, collaboration, flexibility, quality and sensitivity to price. The ensemble astutely leverages technology to carry out its assignments with singular efficiency; things aren’t done in automated fashion, however, thanks to the strategic perspicacity which senior team members such as Susanne Jones, Kevin Robb and Elizabeth Burke apply in their endeavours. Jones prosecutes patents informed by a rich understanding of the competitive marketplaces in which her clients – including leaders in robotic-assisted surgical systems and life sciences solutions – operate. Robb manoeuvres deftly in challenging patenting and legal environments faced, for example, by data processing business solutions companies, and builds coherent, high-value portfolios. Burke protects clients’ crownjewel patent assets globally for start-ups as they move towards the all-important release of their first products.
acting for NCR Corporation against Pendum – a former authorised reseller and service provider for its ATM machines in a multi-layered copyright, trade secrets, breach of contract and tortious interference claim. Well suited to a case such as NCR, Baskin has honed his advocacy skills to a fine point and developed well-rounded IP knowledge through serving as lead counsel in many patent, trademark and copyright litigations. Chris Campbell, meanwhile, has synced up with lawyers in Denver on some of his recent briefs, which include defending Contec Medical Systems in a Northern District of Illinois suit filed by Beijing Choice Limited asserting a patent related to pulse oximetry. With great results to show for it, Campbell has litigated around the country and in the ITC and PTAB. The top specialist for post-grant proceedings, however, is Lori Gordon, who has been working with Silicon Valley lawyers Tom Friel and Jim Brogan in a big competitor shootout in the chemical industry. King & Spalding is outperforming many in the PTAB thanks to Gordon’s efforts and the contributions of many others, including Gerald Flattmann and his New York life sciences colleagues.
King & Spalding LLP
Kirkland & Ellis LLP
Jones Robb PLLC
King & Spalding inspires confidence of a win in major patent disputes. It has many seasoned trial lawyers from coast to coast who have proven their mettle in technically demanding cases across the science and engineering spectrum – and who are eager to collaborate across offices to ensure that clients benefit from the right mix of skills and experience. DC-based Stephen Baskin and New York’s Allison Altersohn, for example, form a dynamic pairing and have been jointly representing Delta Air Lines in patent infringement against Sound View Innovations and
1384 IAM Patent 1000
Primed and ready for any high-stakes district court, ITC or Federal Circuit action, Kirkland & Ellis’s DC patent litigation team has seen and done it all in the patent space. Displaying the firm’s trademark commitment, strategic agility, decisiveness and trial prowess, Gregg LoCascio stands tall as one of the elite patent lawyers not just in the capital, but in the country. So too Edward Donovan, who is distinguished by his adroit navigation of Section 337 proceedings, among other things. He, LoCascio and Paul Brinkman – the most specialised among his colleagues – give the firm a
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United States: DC Metro Area strong presence on the national ITC rankings. In terms of recent highlights, Brinkman has been representing Heineken and affiliates in two ITC cases – and one in the Southern District of New York – adverse to Anheuser-Busch InBev; all three are being coordinated with multiple European actions, making this a great example of the sorts of large-scale, multi-front competitor battles for which Kirkland & Ellis is made. For disputes that go up on appeal, John O’Quinn has the right stuff, as he recently proved in securing an appellate victory for BASF in its ongoing patent enforcement efforts against SNF Holding Company; his reversal of a trial loss by BASF (then represented by another firm) clarified the law on when confidential materials can and cannot constitute invalidating prior art. Kirkland & Ellis’s recent addition of former Oblon practitioner Todd Baker gives it enhanced PTAB capabilities, making its contentious practice even more compelling. Christopher Mizzo also has ample post-grant experience, accumulated in the course of a wide-ranging patent litigation practice that has put him in important roles in bet-the-company cases across all forums.
Latham & Watkins LLP
In DC, Latham & Watkins has amassed many accomplished patent trial lawyers and is a hypercar among its supercar competitors which – geared for big-ticket pharmaceutical and high-technology litigations, ITC investigations and post-grant proceedings – performs well over any road surface. The firm has five representatives in the IAM Patent 1000 gold tier for DC – more than any competitor – with Maximilian Grant, Michael Morin, Matthew Moore, Adam Perlman and Bert Reiser all scoring top marks. Grant has a gift for inspiring and motivating trial teams to great things. Healthcare and life sciences industry group global co-chair Morin also shows superb leadership, which is just one of the reasons why his clients instruct him on a repeat basis. Moore is a clearsighted strategist who is well suited to the largest litigation campaigns; Perlman advocates superbly for pharmaceutical originators; and Reiser distinguishes himself as a foremost ITC specialist. Meanwhile, Jamie Underwood, David Frazier, Lawrence Gotts, Tara Elliott and Robert Steinberg each bring special skills and attributes to the mix. Underwood is appreciated for her advocacy and strategic advisory talents, which are on full display in her ITC-focused practice; Frazier has a flair for complex biotechnology suits; Gotts and Elliott have sharp trial skills honed through exposure to a wide variety of IP and non-IP cases; and Steinberg lights the path in PTAB proceedings.
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Mayer Brown
Clients and peers alike are nothing less than delighted with the service on offer at Mayer Brown. Partnering with it in the context of a major patent litigation, one source comments: “From the initial introductory meeting to the collection of all pertinent documents and all other trial preparation steps, Jamie Beaber and Mayer Brown have been clear, concise and extremely focused. A lot of attorneys elsewhere speak in legalese and give non-committal advice that leaves issues vague, but this is not the case with Jamie and his team.” Beaber is an integral member of the firm’s potent national patent litigation practice and an anchor in DC alongside celebrated veteran Alan Grimaldi, with whom he works extensively in district court actions. Beaber also has an affinity for ITC matters and leads the Section 337 practice, of which Gary Hnath is a key member. A former president of the ITC Trial Lawyers Association, Hnath is the partner of choice for many Chinese entities litigating in the forum. By all accounts, he is a “high-calibre specialist and an intelligent, diligent, conscientious and responsive lawyer”. His ITC win for Ninestar, with a finding of non-infringement of seven laser toner cartridges asserted by Canon, was recently upheld by the Federal Circuit in a Rule 36 affirmance.
McDermott Will & Emery
“When you need to bring out the big guns in patent litigation, McDermott is the firm to call. The people there – such as Jay Reiziss and Charlie McMahon – are smart and savvy litigators who understand the pressures of in-house attorneys and how to work within the system of the companies they represent. In high-stakes cases, it is essential to have lawyers who know how to be team players, as McDermott’s professionals do.” Reiziss takes centre stage in the firm’s ITC practice and is a dynamic force at the commission, which he knows inside out, having previously served in multiple posts there. His recent achievements include successfully defending Target Corporation on behalf of its indemnitor Feit Electric Company in a case adverse to the University of California (UC) Santa Barbara, which initiated an investigation against Target and multiple other retailers regarding alleged infringement of four patents relating to vintagestyle filament LED lightbulbs; a strong defensive case led to the withdrawal of the case by UC. Other high-calibre members of the DC squad include Thomas Steindler, Paul Schoenhard and Nicole Jantzi, who have joined forces to represent Bausch Health US against Mylan Pharmaceuticals in an abbreviated new drug application (ANDA) litigation.
IAM Patent 1000 1385
United States: DC Metro Area Firms: prosecution
Cooley LLP
Highly recommended
Dentons
Bookoff McAndrews PLLC
Faegre Drinker Biddle & Reath LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP See p1678
Fiala & Weaver PLLC
Fish & Richardson Harrity & Harrity LLP Rothwell, Figg, Ernst & Manbeck, PC Sterne Kessler Goldstein & Fox PLLC See p1734 Recommended
See p1684
Grüneberg and Myers PLLC
See p1688
Jones Robb PLLC McDermott Will & Emery
Morris Manning & Martin LLP
BakerHostetler
Oblon
Baker Botts LLP
See p1718
Pillsbury Winthrop Shaw Pittman LLP
Banner Witcoff
Sughrue Mion PLLC
Birch, Stewart, Kolasch & Birch, LLP See p1658
Buchanan Ingersoll & Rooney PC Carmichael IP PLLC
Veteran Hatch-Waxman lead counsel and head of the DC IP litigation group Steindler stands out for his “technical expertise, tenacity and consistent ability to outwork and outthink his opponents”. Schoenhard has exhibited his strategic perspicacity and advocacy skill across many forums and in disputes over many types of technology; likewise Jantzi, with whom he frequently collaborates to winning effect. The firm’s prosecution practice is also well developed, ensuring that the litigators don’t hog the limelight. Michael Fogarty maintains a close relationship with Panasonic, for which he manages hundreds of patents. Leading on this with him is Takashi Saito, a former semiconductor engineer and IP specialist for a global electronics manufacturer with a first-hand understanding of the innovation process.
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Gardella Grace PA
Morgan Lewis & Bockius LLP
Arnold & Porter Kaye Scholer LLP
Blank Rome LLP
Foley & Lardner LLP
Venable LLP Xsensus LLP
See p1748
Morgan Lewis & Bockius LLP
Morgan Lewis has three individuals recommended in the IAM Patent 1000 DC rankings who between them cover a huge amount of ground. In its versatility, the local group is much like the national one; few fullservice commercial outfits are as heavily invested in all facets of patent protection, litigation and monetisation as Morgan Lewis. On the prosecution and counselling side, Hosang Lee offers valuable cross-cultural and commercial US-Korean know-how to companies in the high-technology and automotive sectors. His counterpart in the life sciences is pharmacology PhD Robert Smyth, who has vast prosecution experience, keen strategic global vision and abundant post-grant expertise not just in the United States, but in Europe, Asia and Latin America. Eric Namrow is the leading litigator residing in DC and captain of the firmwide ITC practice. He has played crucial roles in 75-plus investigations, two dozen of which have gone to trial, giving him a deep playbook to draw upon for the next challenge.
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United States: DC Metro Area Morris Manning & Martin LLP
The life sciences is a stronghold for Morris, Manning & Martin, which serves up perspicacious strategic counsel to pharmaceutical and biotechnology companies as they look to protect their competitive advantage and capitalise on their intangible assets for business purposes. In Ping Wang, the ensemble has “one of the most exceptional legal minds on the planet”, according to the clients who line up to sing her praises: “Ping consistently demonstrates the ability to take an idea – whether in a crowded space or not – and develop patent applications that achieve granted status. Her issuance percentage is ridiculously high, making her an extremely productive IP lawyer. She has a clear vision for the service she wants to deliver, along with excellent leadership skills, and has assembled a team whose members have all bought into her relentless approach to patent prosecution.” The breadth of her knowledge is a boon to companies such as Q3 Medical Devices, for which she recently performed pre-IPO due diligence in connection with its listing on the Hong Kong stock exchange and brokered a lucrative licensing deal with Medtronic, alongside handling its entire IP portfolio. By her side is Michael Ye, who has unique talents when it comes to transactions in China. Scientifically gifted and acutely aware of clients’ commercial imperative, Ye never fails to make an impact.
Morrison & Foerster LLP
Morrison & Foerster has several practice leaders, formal and informal, stationed in DC who make essential contributions to what is an outstanding national patent practice. An expert in advanced materials, among other technologies, East Coast prosecution group Jonathan Bockman formulates competitive IP strategies with a deft touch. He is the first port of call for patent procurement matters, portfolio management, IP due diligence and more, including representation in inter partes reviews. He also regularly supports IP litigation – the primary focus of Mark Whitaker, who co-chairs the global practice as well as the firm’s cross-disciplinary IP group. Accustomed to leading – he is also a past AIPLA president – he inspires and motivates his team to achieve major feats in district courts and the ITC, a forum which he knows well and in which he has experienced great success. Brian Busey also makes light work of Section 337 investigations, having handled so many in a storied career focused on the ITC. The senior counsel is a valuable strategic sounding board.
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Oblon
Dispensing the full suite of services via a large and well-configured team of attorneys, Oblon aligns itself as a key strategic patent partner to innovators. The boutique delivers crisp results in prosecution, the bedrock of its wider practice, taking advantage of deep familiarity with the USPTO developed over the course of thousands upon thousands of filings, examiner interviews and registrations. Assignments are carried out efficiently and cost effectively, thanks to a smart prosecution programme designed to obtain high-quality patents with the fewest office actions; this has yielded superb results, with the firm securing over 6,000 patents each year. Many of these protect chemical sciences technology – the specialist subject of PhDs Daniel Pereira, Marina Miller, Vincent Shier and Derek Mason, who form one of the best teams for the chemical industry in the entire country. Cochair Pereira is an ace at litigation counselling and keeping clients out of trouble. Miller has litigated ANDA cases and applies contentious learnings in procuring lasting patents. Shier is highly active in Oblon’s postgrant practice, but also maintains his counselling and portfolio management skills at the highest level. Mason performs flawlessly in licensing negotiations and transactional IP scenarios. Managing partner Philippe Signore, meanwhile, anchors the electrical and mechanical prosecution group; he has lectured on US patent law around the world, gaining vital insight into international patent law and practice in the process. In litigation, Oblon continues to do good things at the ITC thanks to the diligence and quality of Eric Schweibenz: “Eric is a top expert in ITC litigation – he knows the ins and outs of Section 337 practice and has a strong enthusiasm for it. He’s super-responsive, mindful of budgets and is constantly thinking about clients’ broader objectives beyond the confines of a particular case – he understands litigation as a means to an end.” Joining him in the guide this year is litigation group cochair Tia Fenton, who concentrates on pharmaceutical and chemical patent litigation. Together with Schweibenz, she has been representing Japan-based global food and chemical company Ajinomoto in a suit filed by Kyowa, which asserted patents relating to the process for manufacturing glutamic acid, used to make monosodium glutamate. See p1718 for firm profile
IAM Patent 1000 1387
United States: DC Metro Area Firms: transactions
Firms: litigation
Highly recommended
Covington & Burling LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
See p1678
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP See p1678
Sterne Kessler Goldstein & Fox PLLC See p1734
Fish & Richardson
Recommended
Kirkland & Ellis LLP
Arnold & Porter Kaye Scholer LLP
Latham & Watkins LLP
Buchanan Ingersoll & Rooney PC
Paul Hastings LLP
Cooley LLP
Williams & Connolly LLP
Covington & Burling LLP
Adduci, Mastriani & Schaumberg, LLP
Venable LLP
Arnold & Porter Kaye Scholer LLP
Paul Hastings LLP
The trial lawyers at Paul Hastings – both in DC and across its network – never blink in the spotlight of highstakes patent infringement litigation; they maintain a clear and intense focus on themes that compel juries and triers of fact to decide things their way and have a terrific record at trial and at other litigation turning points. The firm has carved out a reputation for superiority in post-grant matters, with global vice chair of the IP group Naveen Modi driving the practice to the greatest of heights. Modi is one of, if not the most prolific PTAB attorney in the country and knows just about all there is to know about challenging and defending patents under the AIA. He and Joseph Palys have worked together for more than two decades and form a perfect partnership for complex cases in and outside the PTAB. One of their freshest victories saw the invalidation of claims of six patents for wireless phone charging asserted by NuCurrent against client Samsung Electronics – a great result in a complex, multi-layered IP dispute also involving claims for trade secret misappropriation. An authority on trade secret litigation, Jeffrey Pade was also closely involved in this one. Forming an immensely potent team with Allan Soobert and California’s Yar Chaikovsky, Modi and Palys have also been acting for Applied Materials in multiple litigations against Demaray, which is being represented by elite trial shop Irell & Manella. Soobert is a leader within the firm and the market, and someone to whom cutting-edge companies turn in times of great need. He is also acting for Samsung Electronics in an important campaign to protect its
1388 IAM Patent 1000
See p1742
Fisch Sigler LLP Gibson Dunn & Crutcher LLP Goodwin Procter LLP McDermott Will & Emery Paul Weiss Rifkind Wharton & Garrison LLP Rothwell, Figg, Ernst & Manbeck, PC Sidley Austin LLP Sterne Kessler Goldstein & Fox PLLC See p1734 Venable LLP Wilmer Cutler Pickering Hale and Dorr LLP Winston & Strawn LLP
See p1744
Akin Gump Strauss Hauer & Feld LLP BakerHostetler Baker Botts LLP Banner Witcoff Blank Rome LLP
See p1658
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United States: DC Metro Area Buchanan Ingersoll & Rooney PC
Morrison & Foerster LLP
Cooley LLP
Oblon
Dentons
Perkins Coie LLP
King & Spalding LLP
Pillsbury Winthrop Shaw Pittman LLP
Mayer Brown
Steptoe & Johnson LLP
Morgan Lewis & Bockius LLP
Weil Gotshal & Manges LLP
three-dimensional memory chips. Continuing the theme of effective cooperation, Soobert and Blair Jacobs enjoy a profitable partnership in commercially consequential suits and have lately gone out to bat for a medical device company in a dispute with its primary competitor.
Paul Weiss Rifkind Wharton & Garrison LLP
Helping to power Paul Weiss’s undeniably brilliant patent litigation offering is a booming post-grant practice spearheaded by Steven Baughman, a consummate all-round advocate and pre-eminent PTAB specialist whose hit rate invalidating and protecting patents – including many of the most valuable assets in the world – is unsurpassed. He chalked up another win recently in upholding the validity of Chugai Pharmaceutical’s patents relating to a simpler, less costly method of purifying antibodies, with the Federal Circuit then rejecting a major pharmaceutical company’s follow-on appeals. With this and many other representations, Baughman has burnished the firm’s market-leading reputation for biologics matters. He isn’t the only big hitter in the DC office, which is also graced by the presence of litigation department co-chair Kenneth Gallo and of counsel David Ball. All three lawyers have teamed up to defend SAP in an action brought by business analytics provider Teradata alleging trade secret misappropriation and antitrust violations – the type of complex, multi-threaded, multi-forum dispute for which Paul Weiss is ever-ready.
Perkins Coie LLP
Perkins Coie assists life sciences innovators throughout all phases of the product and business lifecycle. It brings together astute prosecution and counselling lawyers – Chicago-based firmwide prosecution chair David Fournier and Palo Alto’s Viola Kung come to mind – with elite patent litigators such as IP group co-chair Shannon Bloodworth and IAM Patent
www.IAM-media.com
See p1718
1000 newcomer Brandon White. Bloodworth is the fulcrum around which the DC IP practice turns and a seasoned lead counsel in pharmaceutical litigations for whom success in district court, PTAB and Federal Circuit cases is a recurring narrative. Propelled into the listings by widespread praise, up-and-coming partner White “is calm under pressure, provides considered strategic advice and is a talented advocate who works tirelessly to achieve the best results for his clients. He handles all aspects of his cases, including presenting arguments and testimony to district courts and administrative panels; he has especially earned the respect of PTAB judges for his ability to grasp and explain highly complex scientific concepts, and for his uncommonly clear and concise writing”. Another new face in the guide, Dan Bagatell leads the patent appeals practice. He was instrumental in obtaining a precedential decision for Hulu and Netflix in which the Federal Circuit held that the PTAB may reject proposed substitute claims in an inter partes review on eligibility grounds, even though it cannot review the patent eligibility of the original, already issued claims.
Pillsbury Winthrop Shaw Pittman LLP
Home to technically fluent lawyers, professional engineers, former USPTO examiners, patent agents and technical consultants, Pillsbury provides goldstandard assistance in prosecution. In any 12-month period, it obtains over 1,000 US patents and half that number again of foreign patents in every major theatre of innovation. Responsible for much of this activity, Ngai Zhang garners enthusiastic recommendations from the market. One client comments: “I have worked with so many IP attorneys and can say with great confidence that Ngai is by far the best of them. He dives deep into the technology, understands it, asks the right questions, grasps all the prior art and then drafts the strongest patents. He secures patents when other lawyers get nowhere. We are lucky to have him as our IP counsel.” Zhang is part of a large team of lawyers supporting UBS, which outsources its
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United States: DC Metro Area entire IP function to Pillsbury. Other members include Jack Barufka and William Atkins, both of whom are hailed for their complex problem-solving abilities. IP group lead Barufka is highly accomplished in all areas of patent practice and is adept at designing comprehensive IP strategies. Tried-and-tested trial lawyer Atkins is a master at coordinating multi-forum disputes, with a sophisticated understanding of the strategic interplay between district court litigation and PTAB proceedings. The ensemble’s post-grant practice is chaired by Patrick Doody, who is “at the very top of his game”: “Patrick defines what it means to be a professional – he has an extremely impressive depth of knowledge, tonnes of experience and great judgement and integrity. He performs at the highest level with such consistency and has a track record that inspires confidence.” Underscoring the all-inclusive nature of Pillsbury’s offering, Keeto Sabharwal and Kecia Reynolds earn inclusion in the IAM Patent 1000 as outstanding pharmaceutical and ITC litigators respectively.
Rothwell, Figg, Ernst & Manbeck, PC
There’s nothing flashy about Rothwell Figg; unswervingly dedicated to meeting clients’ needs, it executes with assurance on complex prosecution, litigation, post-grant proceedings and licensing briefs. Many of its prosecution-focused attorneys have multi-disciplinary expertise, having acted not only in a USPTO-facing capacity, but also on contentious and transactional matters – and Aydin Harston is one of them. The biochemistry PhD has seen applications through to grant hundreds of times, furnished vital support to litigation teams and represented parties before the PTAB – a diversity that has elevated his strategic thinking beyond his years. He makes his debut in the IAM Patent 1000 on the back of glowing client references: “Aydin has been a strong advocate for our company for years and prosecuted our foundational patents. Handling complex life sciences innovations, he consistently demonstrates great intelligence, professionalism, organisational skill and creativity.” A rising star in the practice, he has been working with the firm’s most senior attorney, Anthony Figg, in managing valuable patent portfolios for Biogen. Figg needs no introduction as a life sciences and litigation luminary whose strategic counsel and opinions are like gold dust. Harston and Figg also manage crown-jewel patent assets for Coherus Biosciences in collaboration with Joseph Hynds, one of the set’s best-rounded lawyers and the complete package for life sciences and high-technology players. Danny Huntington also operates at the cutting edge of developments in biotechnology and pharmaceuticals,
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and is successfully growing the portfolio of Editas Medicine, a leading gene editing company focused on developing CRISPR medicines. Huntington is another dynamic and versatile practitioner with a wealth of industry knowledge. Taking care of essential matters on the high-technology front, meanwhile, are Steven Weihrouch, Brian Rosenbloom and Martin Zoltick. Weihrouch has an ardent following of Japanese clients: as examples, he has obtained hundreds of patents for Tokyo Electron relating to semiconductor manufacturing equipment and dozens of patents for Suzuki Motor Corporation. Rosenbloom and Zoltick represent Ericsson in the business-aligned prosecution of patents relating to 5G wireless communications. Both have a pre-law background in software, but are quick studies when it comes to myriad technologies. They also play a key role in the ensemble’s trailblazing litigation practice and have had a hand in notable recent cases. Rosenbloom partnered with Steven Lieberman and Sharon Davis in representing CBS Corporation against Personal Audio in a complex suit: Personal Audio initially won a jury trial in the Eastern District of Texas, but its asserted patent was invalidated at the PTAB before post-trial briefing was complete; the Federal Circuit affirmed the PTAB’s decision, leading the district court to vacate the jury’s verdict. This was appealed to the Federal Circuit which, in a January 2020 decision, upheld the PTAB’s invalidation of the patent (and the Federal Circuit affirmance thereof), thus precluding Personal Audio from asserting its (now invalid) patent claims against CBS and solidifying Federal Circuit precedent on the procedural interplay between inter partes reviews and litigation. Lieberman possesses whetted trial skills and can be counted on for textbook-worthy performances. So too Davis, who is endorsed for her “masterful knowledge of the law and ability to convey complex arguments in a nuanced and effective manner”. Zoltick has been representing Nichia Corporation together with Robert Parker in an international arbitration involving a dispute with a cross-licensee and in six district court patent infringement actions. Parker gets difficult jobs done in any forum, but the ITC is a happy hunting ground: he is a former president of the ITC Trial Lawyers Association and served as counsel to the chairman of the ITC.
Sidley Austin LLP
As a trial team, Sidley can go toe to toe with any firm in the country and bring home the victories when they are needed most. Undaunted by large financial claims in competitor suits, its lawyers work with intense concentration on the dispositive issues and on devising trial strategies that shift momentum in their
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United States: DC Metro Area favour. Coordinator of the IP litigation practice Jeffrey Kushan does this masterfully in district court cases, appeals and USPTO-contested proceedings; as does Brian Nester at the ITC. Carter Phillips backs them up with pitch-perfect advocacy at the Federal Circuit and Supreme Court. From a DC perspective, securing a complete ITC victory for LONGi Solar Technology at the ITC against a competitor in the solar cell space was a particular highlight; Nester played a strong hand in this one.
Steptoe & Johnson LLP
When stellar performances are required in major ITC battles, Steptoe & Johnson steps up to provide them: its DC lawyers know the venue extremely well, having litigated there extensively and winningly. They also perform adroitly in district courts and the PTAB, making them ideally situated for complex disputes playing out across all three forums. IP group co-chair John Caracappa brings gravitas to the courtroom and is a highly effective trial team leader. He has had a busy time lately at the ITC, representing Broadcom in asserting multiple patents related to infotainment systems; securing a complete victory for Xiamen Leedarson Lighting in three investigations enabling it to freely import and sell its products in the United States; successfully settling a case for Resideo Technologies involving a patent related to the IoT; and acting for US solar technology company Solaria in an ITC matter and related district court case. With him on a number of these matters, Matthew Bathon – a former senior investigative attorney in the ITC’s Office of Unfair Import Investigations – debuts in the listings this year as a Section 337 specialist to keep firmly on the radar. In Boyd Cloern, Steptoe also has an expert for heavy-duty trade secret cases. He is currently representing Hytera Communications in a complex trade secret and copyright infringement suit in which Motorola claims that several Hytera employees misappropriated a substantial number of trade secrets and copied various portions of source code. For this, Steptoe has marshalled a potent team from its DC and other offices, capitalising on its impressively deep bench.
Sterne Kessler Goldstein & Fox PLLC
The group of patent lawyers at Sterne Kessler is wonderfully cohesive: members support and learn from each other, so their advice contains the distilled essence of the firm’s incredible institutional knowledge. This encompasses all technical and scientific disciplines and everything you could possibly do with a patent – from filing to licensing and enforcing or defending it in court. The array of rankings that its
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lawyers achieve in the IAM Patent 1000 for 2021 bears testament to this dexterity. Making her first appearance in the guide is molecular and cellular biology PhD Deborah Sterling, whose recent highlights include supporting Roviant in connection with complex pharmaceutical exclusivity analyses and strategies, as well as prosecution and other tasks; Roviant builds nimble, entrepreneurial subsidiary biotech and healthcare companies with a unique talent for sourcing and incentivising approaches to develop clinical-stage assets. Sterling chairs an outstanding biotechnology and chemical group which includes the awesome Eldora Ellison, one of the nation’s foremost postgrant proceedings authorities. She serves the Regents of the University of California, whose CRISPR gene editing patent position vis-à-vis the Broad Institute – which UC is battling with over the technology – she has improved dramatically; she is also representing it as lead counsel in an interference. Ellison burns brightly as an all-round patent strategist; as do Jorge Goldstein and Eric Steffe, with whom she is acting for UC. The electronics group also engages in work of the highest order, much of it overseen by directors Donald Featherstone, Robert Sokohl, Michael Ray and Michael Lee. Group leader Featherstone couples unimpeachable foundational prosecution skills with comprehensive international knowledge and keen commercial acumen, and builds enduring relationships with clients. Sought after for prosecution, infringement and validity opinions, due diligence, postgrant proceedings and litigation, Sokohl is amazingly versatile – a boon for clients such as Capital One, which he and Sterne Kessler assist on wide-ranging matters. Cut from similar cloth, Ray sees issues in the round and can chart optimal paths forward for clients; he does this for the firm, too, in his role of managing director. Lee navigates competitive markets with an unerring compass and has been acting for Roku in the streaming space, proving highly successful at overcoming prior art and Section 101 challenges on his way to a high patent allowance rate. The mechanical and design patent group has its celebrities, too – most notably Tracy-Gene Durkin, a design patents savant for whom cutting-edge global work for Apple continues to be a major practice feature. Richard Coller comes from a biomedical engineering background and leans into multiple practices, including post-grant, litigation and appeals, which has sharpened his strategic instincts. Sterne Kessler has also been hitting home runs in major disputes recently: John Christopher Rozendaal and Michael Joffre, for example, landed a huge victory in June 2020 for Teva Pharmaceuticals, clearing the way for it to bring to market a generic version of Narcan nasal spray. Though several of Adapt
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United States: DC Metro Area Pharmaceutical’s patents survived inter partes review challenges, the guys managed to secure a finding that all four patents in suit were invalid as obvious. Daniel Yonan, the ensemble’s ITC ace, has been working with Juul on a global enforcement campaign that involves district court, ITC and overseas actions. He also prevailed for Wirtgen – the world’s largest manufacturer of road milling machines – against Caterpillar in Section 337 investigations; and arising from this, he won a US Court of International Trade suit against US Customs and the Department of Homeland Security based on unlawful interagency discussions with the ITC that led to the exclusion of a number of redesigned Wirtgen machines which had previously been allowed to enter the country. Also involved in the Juul matter, Dennies Varughese has struck gold for Amneal Pharmaceuticals at the PTAB and the Federal Circuit in challenging the validity of an Orange Book-listed patent for Almirall’s acne treatment Aczone. The appellate practice here is a strong one, with contributions coming from many and staunch leadership from Jon Wright. The overall picture at Sterne Kessler is one of excellence – much of the credit for which goes to Robert Greene Sterne, who has nourished the firm since its beginnings and instilled key attributes such as innovativeness, collaboration and big-picture thinking. See p1734 for firm profile
Sughrue Mion PLLC
A statistical leader in terms of patents filed and obtained, Sughrue knows how to work with the USPTO and sews up all the right protections for clients. It fields a large team of technically trained experts who effortlessly grasp the intricacies of complex technologies, operating with efficiency throughout all phases of prosecution and in post-grant actions at the PTAB, of which they handle a great many. For a key contact, look to Alan Kasper, an internationally experienced attorney with a precise handle on the state of patent law in the United States and overseas.
Venable LLP
Pioneering companies get all the patent support they need under one roof from Venable, one of the few firms with multiple representatives on each of the IAM Patent 1000’s DC prosecution, litigation and transactions tables. Calling the shots for the prosecution and counselling group, Brian Klock runs point on matters for Canon, with which Fitzpatrick – the celebrated boutique which merged into Venable in 2018 – has enjoyed an enduring relationship over several decades; given the diversity of technologies in which Canon innovates, Klock stays sharp and ready for anything.
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Michele Van Patten Frank supervises the group’s life sciences activities and, in providing fulsome support to clients, draws on insight from her time as an examiner and her blended patent procurement, transactions and litigation expertise. “Michele is available when you need her and always makes the time to explain matters clearly. She pushes projects forward very effectively, taking feedback in her stride and carrying herself with the utmost professionalism. She is great to partner with.” Physics PhD Henry Daley – who has also engaged in high-level contentious affairs – prosecutes in the life sciences and other areas with panache, making him a hit with several prestigious academic institutions. Turning to litigation, Frank Cimino and Megan Woodworth have been on a sparkling run of form of late. Connecting with Michele Frank, they recently acted on behalf of Viveve – a women’s health company focused on the commercialisation of a revolutionary, non-surgical medical device that remodels collagen and restores tissue – in connection with the satisfying settlement of crucial litigation against ThermiGen. They have also acted for a major automobile group at the ITC and for a leading telecommunications company in the Eastern District of Texas. Reputed for their toughness and commerciality, Cimino and Woodworth are always in hot demand. Nora Garrote and William Russell are the top IP and technology transactions specialists on deck. Diversity is the watchword for their practice: they do all kinds of deals for all kinds of companies, giving them high-level know-how that provides invaluable when breaking new ground. Garrote also serves as partner in charge of diversity and inclusion.
Weil Gotshal & Manges LLP
Weil Gotshal is no stranger to game-changing patent litigation: in fact, it’s what its IP lawyers, such as DC’s Brian Ferguson, live for. Ferguson co-heads the patent litigation practice and has been instrumental in promoting close inter-office cooperation, which is one secret of its success. A veteran enforcer and protector for some of the world’s major technology companies, he calls the right play at every stage of a case, whatever the forum. Lately he has been representing Nuance Communications in Delaware and Georgia against competitor M*Modal, in the course of which he has successfully invalidated patents in inter partes reviews. At the same time, he has been continuing his work for GE Aviation in 36 inter partes petitions challenging 30 Pratt & Whitney patents; after 15 PTAB hearings, 360 claims across 25 of the challenged patents have been invalidated and a Federal Circuit appeal has been won. A master tactician, Ferguson is well suited to such sprawling campaigns.
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United States: DC Metro Area Williams & Connolly LLP
“Williams & Connolly is the best patent trial outfit in the United States,” enthuses one chief IP counsel. “Its collaboration is always seamless and its success story unlimited.” This is a popularly held opinion of a firm for which high-exposure patent and licensing litigation is a daily business. Bringing together accomplished lead trial lawyers and scientific experts – there are 15 former Federal Circuit clerks in the group and 13 USPTO-registered practitioners – Williams & Connolly deploys a highly sophisticated toolkit with which it has netted groundbreaking wins in myriad life sciences and high-technology suits. The team litigates the right way too, showcasing standards that really set the bar – something that has much to do with the leadership of world-class advocate and strategist Bruce Genderson. He has also instilled a strong team mentality which sees members of the group put ego aside and work hand in hand to get difficult jobs done. Linking up with David Berl and Dov Grossman, Genderson has been representing Bayer in ANDA litigation against Apotex over its Stivarga anti-cancer drug. Gold-ranked Berl earns plaudits for his “incredible intellect, creativity and strategic acuity”; while Grossman makes his debut in the IAM Patent 1000 and is a rising star of a group that has shown striking proficiency in developing younger talent through the delegation of responsibility and opportunity. Stanley Fisher and Jessamyn Berniker, together with Genderson and several others, have been doing battle for Merck Sharp & Dohme in HatchWaxman litigation and PTAB proceedings against 14 ANDA filers seeking to produce generic versions of its diabetes drug Januvia. Berniker is ideally suited to the patent litigation co-chair role she assumed in January 2020, thanks to her instinct for leadership: inspired and motivated, her colleagues pull out all the stops. Fisher has vast biopharmaceutical experience and makes full use of his finely honed advocacy skills and intuitive understanding of Food and Drug Administration regulatory requirements and antitrust law. Contributing on the life sciences front, while also spearheading important campaigns involving high-technology, software and communications innovations, executive committee member Thomas Selby gets a lot done. Like Berniker, he has a unique ability to get the best out of those around him. See p1742 for firm profile
Wilmer Cutler Pickering Hale and Dorr LLP Devastatingly effective in trials and at the Federal Circuit and Supreme Court, WilmerHale is the perfect partner for big-ticket patent litigation. It
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draws astutely on its resources – it is abundant in trial lawyers, appellate specialists and technical experts – to configure the optimum team for each case, ensuring it can hit the ground running and pursue the most effective strategies. Its DC lawyers are front and centre of many high-profile briefs: as an example, William McElwain was key to recent back-to-back Federal Circuit victories on behalf of Becton, Dickinson and Company and Roche against Enzo Life Sciences, in which the court unanimously affirmed a rare summary judgment ruling in the District of Delaware which invalidated the key patent asserted against his clients. David Cavanaugh and Gregory Lantier, meanwhile, obtained WilmerHale’s first final written decision in a post-grant review proceeding, on behalf of GMG Products, invalidating certain claims of a patent owned by competitor Traeger Pellet Grills. Both lawyers are recommended in the IAM Patent 1000’s national post-grant table, on which Cavanaugh – a veteran of over 250 inter partes reviews – is one among just 10 individuals. On the life sciences side, Amy Kreiger Wigmore is in the thick of things and has satisfying recent results to show for her efforts. Together with Bill Lee, she obtained a trial win for Bristol-Myers Squibb and Pfizer in litigation concerning their blockbuster Eliquis drug used to treat and reduce the risk of blood clots and the risk of stroke; initially filed against 25 different generic drug companies, the case started out as one of the largest Hatch-Waxman litigations ever. Seth Waxman is WilmerHale’s Supreme Court and appellate supremo and has been vital in cementing many of the group’s wins.
Winston & Strawn LLP
Winston & Strawn’s prowess in the IP space is wrapped up in its incredible trial proficiency. Built to win the toughest cases, its national group of redoubtable advocates strikes hard, fast and smart, capitalising on even the smallest strategic openings; a pristine record as a defence firm places it among the elite. Sustained excellence on the life sciences side is a notable storyline: Winston is prolific in Hatch-Waxman litigation and is increasingly noted for its facility for Biologics Price Competition and Innovation Act cases – not least thanks to the sterling efforts of DC lawyers Charles Klein and Jovial Wong, who work almost telepathically both as a team and as collaborators with colleagues in other offices. Klein’s newsworthy recent activity includes a trial win for Hikma invalidating six patents for Amarin Pharma’s only drug, Vascepa, backed up at the Federal Circuit, which denied Amarin’s appeal; this will enable Hikma to launch a generic version of the
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United States: DC Metro Area hypertriglyceridemia treatment long before the patent expiration date. Wong’s resounding victories include the successful invalidation of six patents asserted in district court litigation by Huvepharma against client Associated British Foods. Winston continues to acquit itself with distinction outside of its life sciences niche – for example, at the ITC, where Thomas Jarvis and California partners Kathi Vidal and Michael Rueckheim are duking it out for Chamberlain Group against competitor Overhead Door Corporation – a dispute with a district court litigation component, too. Jarvis is a veteran Section 337 lawyer and a former senior investigative attorney who knows the ITC inside out. See p1744 for firm profile
Xsensus LLP
Xsensus has a unique culture founded on the values of collaboration, respect and efficiency. Its attorneys utilise sophisticated workflow systems and technical tools to deliver a precision service emphasising electrical engineering prosecution, but recently broadening out to include post-grant proceedings, litigation and licensing, as well as life sciences and chemistry. Though only two years old, the boutique has attracted many prestigious patrons and is constantly adding to its roster; its combination of quality, personal service and cost effectiveness is proving hard to resist. Founding partners Bradley Lytle and Andrew Harry both garner warm reports. Of Lytle, one source comments: “We have huge trust in his professional skills and appreciation for his high rate of success in overcoming any rejections and prosecuting applications through to grant. His strategies are on point and his service prompt and friendly.” “Andy knows how to accelerate the prosecution process and how to build strong portfolios. He ensures there’s never any needless back and forth or paper pushing with the USPTO; he is adept at conducting examiner interviews to get to the core issues and advance matters without excess cost.” They are joined in the guide this year by Masahito Yokoyama, a fellow founder with whom they work on many projects. Yokoyama’s cross-cultural Japan-US business and IP understanding gives Xsensus a valuable added dimension. See p1748 for firm profile
Other recommended experts
FisherBroyles has been on a talent acquisition spree of late, with two of its most notable pick-ups being former Winston & Strawn ITC specialists Steven Anzalone and Paul Goulet. Besides the high-level trial skills that both possess, Anzalone has rich technical knowledge and Goulet deep procedural
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expertise. Aziz Burgy is one of the most seasoned Hatch-Waxman litigators in DC and a key cog in the dynamic life sciences patent litigation practice at Axinn. In advancing novel arguments and pressing accelerated case schedules, for example, he pulls all the levers he can with impeccable timing. Gregory Castanias captains the Federal Circuit team at Jones Day. He has persuasively argued appeals on dozens of occasions in disputes over diverse life sciences and high-technology innovations. Nixon Peabody’s Jeffrey Costellia is intimately familiar with clients’ innovations and business objectives, and designs tight strategies around them – a benefit of the longterm relationships he forges. He’s a superb portfolio builder with extensive international connections. Michael Dilworth understands both the creative and commercial mindset and has a passion for facilitating, protecting and commercialising innovation. The Dilworth IP founder best fits the description of patent strategist: well versed in all facets of patent practice, he plays this role to perfection. A master of the chemical arts, Jacob Doughty sees the whole playing field for his and Element IP’s clients; he prosecutes, manages patent assets, gives opinions, conducts due diligence and shines in post-grant proceedings. A wellorganised manager, he ensures the efficient, cost-effective delivery of high-quality work product. Appreciated for her meticulous prosecution, staunch representation in post-grant proceedings and allround strategic savvy, Erin Dunston is a popular pick among biotechnology, pharmaceutical and medical device companies. She has settled into her digs at Panitch Schwarze nicely since joining just over a year ago. Shamita Etienne-Cummings’ burnished technical credentials serve her well in litigation: an assured lead counsel with acute ITC expertise, she tackles high-exposure cases with confidence and poise. She serves on White & Case’s global management team. Colleague David Tennant works miracles on USPTO-facing matters and particularly post-grant proceedings, in which he capitalises on his technical fluency, patent procurement experience and litigation know-how. Jim Gatto of Sheppard Mullin is “extremely impressive in his ability to break down technical complexity”; “he has such a strong intellect and is exceptional counselling on issues at the intersection of technology, law and business.” “The work Jim does provides his clients with a competitive advantage well into the future.” Alexander Hadjis joined Jenner & Block in January 2021, having moved on from his post at Oblon. He’s an ideal match for his new firm, thanks to his mature trial abilities. Kevin Hardy recently switched from Williams & Connolly to another elite litigation firm, Quinn Emanuel. The
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United States: DC Metro Area gifted trial lawyer has a penchant for licensing disputes. He joins Alex Lasher, the head of the ITC practice, in the firm’s DC office. Staying sharp on prosecution, DLA Piper’s James Heintz carries an advantage into patent litigation in terms of technical know-how. Colleague Joseph Lavelle is one of the firm’s pre-eminent patent trial lawyers, who adapts well between district court, ITC and Federal Circuit proceedings. Kevin Laurence of Laurence & Phillips is a trailblazing patent strategist, seasoned PTAB lead counsel, savvy prosecutor and respected author and educator. For worldly wisdom on patent law, he’s an absolute must. An abundant source of insight on ITC litigation, Christine Lehman marries whetted advocacy skills with a complete command of technology; the former investigative attorney at the Office of Unfair Import Investigations is based at trial outfit Reichman Jorgensen. Few, if any practitioners in the IAM Patent 1000 have a background in music composition and theory, but Polsinelli’s Angel Lezak is one of them. She appreciates the opportunity to showcase creativity that patent practice affords and demonstrates artistry in prosecution. Noteworthy, too, is her role as a mentor to other women in the technology world. Michael Kiklis carries out all assignments with a laser business focus, including litigation and post-grant proceedings, which are his bread and butter. The Bass, Berry & Sims partner leverages broad-ranging patent experience encompassing licensing and strategic counselling and deep technical expertise to protect clients to the hilt. Patent boutique Maier & Maier guides diverse players – Fortune 500s, universities, small and medium-sized enterprises and others – through the patent process with alacrity and finesse. The architects of its personalised, accessible service are brothers Christopher Maier and Timothy Maier, for whom intellectual property is a family tradition. Excellent on the mechanics of electrical engineering prosecution, both read competitive patent landscapes accurately and provide valuable strategic advice. They also know their way around the post-grant space; though their colleague Stephen Kunin is the go-to on that front. Kunin has spent nearly five decades in the game and has a level of policy and practice knowledge that sees him called on for expert testimony. Former Oblon litigator and ITC ace Robert Mattson recently established his own self-titled boutique which offers highly specialised litigation risk assessments and insightful opinions on infringement issues. Ropes & Gray’s Scott McKeown is an undisputed leader in the post-grant space and a lawyer whom many would put in their top five PTAB attorneys. He has handled more than 300 inter partes reviews and other AIA
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proceedings since 2012 and in recent years has achieved many notable wins for Google. Engaged in extensive thought-leadership activity, he significantly elevates the post-grant discussion. Indranil Mukerji moved from Fish to Willkie Farr & Gallagher at the start of 2021, with responsibility for building out its high-technology patent litigation practice. Possessing sophisticated analytical and advocacy skills, he has a well-established reputation for shouldering difficult cases on behalf of industry leaders. Parker Poe trial lawyer Kyle Musgrove thrives in the cut and thrust of pharmaceutical patent litigation. A seasoned counsellor too, he sees conflicts in their wider context and has a knack for resolving them in ways that cause the least disruption to business. Scott Pivnick takes the reins of Alston & Bird’s IP litigation group in Washington DC. He’s a stirring trial team leader with wide-ranging patent, trademark and unfair competition expertise and a broad technical compass. Preliminary injunctions are hard to obtain in patent cases, but Pivnick recently secured one for client Pierce Manufacturing in a competitor spat against E-One relating to single axle quint fire trucks. Steven Routh is a veteran of dozens of trials and knows just what to do when there’s a lot on the line in court. The Orrick partner is a fellow of the American College of Trial Lawyers and has a loyal following in Asia. Perry Saidman, the founder of Saidman DesignLaw Group, practises at the cutting edge of design law in the United States and globally. He and his colleagues protect designs, set strategy and litigate guided by profound subject-matter knowledge and practical experience. Daniel Shanley undertakes high-level prosecution and strategic counselling work for prestigious patrons such as Toyota Motor Company and NICHIA Corporation. The Hunton Andrews Kurth partner is steeped in the electro-mechanical arts and maintains a global practice. Jason Shapiro of Edell Shapiro & Finnan has been a fixture in the IAM Patent 1000 for several years. He earns his place courtesy of his exceptionally well-founded complex prosecution and post-grant proceedings capabilities, all-round strategic wisdom and commercial acumen. Greenberg Traurig’s Andrew Sommer is a confident trial team leader for patent disputes in any forum. He has an affinity for PTAB cases, of which he has handled many for both patent owners and petitioners. He has lately engaged in numerous proceedings for Satco Products against The Regents of the University of California as part of a large cross-office team the likes of which his firm is brilliant at assembling. High-powered patent litigation outfit O’Melveny & Myers maintains a strong presence at the ITC thanks to Sean Trainor, a top specialist in the forum. There he has been
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United States: DC Metro Area representing Samsung Electronics in a series of highstakes suits filed by Dublin-based Neodron, which include multiple Western District of Texas cases. Neodron is seeking to exclude some of Samsung’s flagship Galaxy products from entry into the United States. Jeffrey Wolfson is the distinguished leader of Haynes and Boone’s patent prosecution and counselling practice. His forward-thinking approach to asset procurement and management is informed
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by a keen understanding of how patents are litigated, paving the way for longer-lasting protection. He takes the lead for Nabors Industries as primary patent counsel. William Zimmerman is a polished pharmaceutical patent lawyer and co-chair of the Hatch-Waxman litigation and life sciences groups at Knobbe Martens. Understanding how to get the best out of people, he runs trial teams with striking efficacy and efficiency.
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Alciati, Cook
Principal – Gardella Grace PA calciati@gardellagrace.com | www.gardellagrace.com
Cook Alciati specialises in IP litigation, with a particular emphasis on patent litigation. Mr Alciati regularly represents clients in district courts around the country. Mr Alciati also frequently represents clients in inter partes review proceedings before the US Patent and Trademark Office’s Patent Trial and Appeal Board. Mr Alciati’s practice also involves representing clients in appellate matters, principally before the US Court of Appeals for the Federal Circuit. In addition to his experience litigating patents, Mr Alciati also has experience in complex commercial litigation, trade secret litigation, and trademark and copyright litigation. Mr Alciati has worked with a broad range of technologies, including aseptic processing, electronics, LEDs, footwear, sporting equipment, software, cloud computing, machine learning and medical devices, including implantable devices, wound closure devices and obesity treatment devices. Mr Alciati’s clients include a wide range of companies, from publicly traded companies to mid-size family businesses and technology-driven start-ups. Mr Alciati has a JD from Villanova University and an LLM from the University of Edinburgh in Scotland focused on intellectual property. Mr Alciati’s graduate studies at the University of Edinburgh focused on the intersection of technological advancements and IP law across various jurisdictions and legal systems.
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Gardella Grace PA 80 M Street SE 1st Floor Washington DC 20003 United States T +1 703 721 8379 F +1 703 740 4541 See firm profile p1684
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Berl, David
Partner – Williams & Connolly LLP dberl@wc.com | www.wc.com
David Berl is co-chair of the firm’s patent litigation practice and focuses principally in the biotechnology, pharmaceutical and energy fields. Mr Berl has served as lead counsel in Hatch-Waxman trials, in appellate proceedings in the Court of Appeals for the Federal Circuit and in inter partes review proceedings before the USPTO. He regularly serves as lead counsel to major corporations in significant patent litigations and has tried numerous patent cases that have resulted in verdicts favorable to his clients. Benchmark Litigation selected Mr Berl as a “National Practice Area Star” and “Local Litigation Star” for intellectual property in their 2020 edition. Mr Berl has also been recognised as a “Life Science Star” by LMG Life Sciences from 2013 to 2020. The 2019 edition quotes his IP peers describing him as “one of the best lawyers working in this space” and “deserv[ing] the accolades he gets”. He was also selected as a leading patent litigation attorney in the 2014 to 2020 editions of IAM Patent 1000, with the 2020 issue noting that Mr Berl has “amazing intellect and is creative, appropriately aggressive and technically superb”. Previous editions of IAM Patent describe him as having “a great deal of experience in high-level litigious matters and is fast, thorough and effective” and “can communicate with our scientists and our engineers and is an all-round brilliant advocate”. Mr Berl was also named a “Rising Star” in intellectual property by Law360 in 2015.
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Williams & Connolly LLP 725 Twelfth Street North West Washington DC 20005-5901 United States T +1 202 434 5491 F +1 202 434 5029 See firm profile p1742
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Berniker, Jessamyn S Partner – Williams & Connolly LLP jberniker@wc.com | www.wc.com
Jessamyn S Berniker is co-chair of the firm’s patent litigation practice. She has nearly two decades of experience focused on patent litigation and licensing disputes in the pharmaceutical, biotechnology, electronic, mechanical, digital media and medical device industries. Ms Berniker has served as counsel to companies such as AstraZeneca, Pfizer, Merck, Takeda, Roche, Novartis and Bayer. The National Law Journal has selected her as one of the 40 “most accomplished young attorneys in the D.C. area”. She has been recognised in the 2018-2020 editions of IAM Patent 1000, the World’s Leading Patent Practitioners. The 2018 edition praises her as a “biotech star” who “can carry the day in other types of disputes too”. Benchmark Litigation named her to its 2017-2019 “Under 40 Hot List”. Managing Intellectual Property has recognised Ms Berniker as one of the global “IP STARS - Top 250 Women in IP” from 2013 to 2017, and since 2018, the publication has recognised her as an “IP Star”. LMG Life Sciences recognised her as a “Life Science Star” in the area of patent litigation from 2012 to 2020. Ms Berniker served as the co-chair of the Pharma Litigation Subcommittee for the American Bar Association Intellectual Property Law Patent Litigation Committee for a number of years. She serves on the advisory board of the Center for WorkLife Law at the UC Hastings College of Law, a research and advocacy organisation that seeks to advance gender and racial equity in the workplace and in higher education. Ms Berniker earned her BS in chemistry, magna cum laude, from Pacific Lutheran University in 1998 and her JD, cum laude, from Harvard Law School. Prior to law school, she spent several months conducting organic chemistry research at Argonne National Laboratory.
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Williams & Connolly LLP 725 Twelfth Street North West Washington DC 20005-5901 United States T +1 202 434 5474 See firm profile p1742
IAM Patent 1000 1399
Burgy, Aziz
Partner – Axinn, Veltrop & Harkrider LLP aburgy@axinn.com | www.axinn.com
Aziz Burgy is a partner at Axinn and a registered patent attorney with nearly two decades of patent litigation and trial experience, serving as lead counsel to clients in numerous venues. Mr Burgy’s practice is focused on the life sciences, particularly pharmaceuticals, medical devices and biotechnology. With respect to pharmaceuticals, Mr Burgy is a savvy and seasoned Hatch-Waxman practitioner, having litigated over 70 such cases in the past 10 years. Although many of his cases have focused on pharmaceuticals, he has also represented clients in the banking, medical device, internet security, robotics, software and GPS technology industries and has handled other IP matters beyond patent disputes, including trademark and copyright cases. Before attending law school, Mr Burgy worked as a research associate at MedImmune Inc. During his time there, Mr Burgy was awarded the Chairman’s Award, in part for his work on the development of a humanised monoclonal antibody (palivizumab) with activity against respiratory syncytial virus and a vaccine consisting of self-assembling, virus-like particles for the prevention of human papillomavirus (HPV) infection. His industry experience, advanced life sciences coursework and his extensive legal experience provide him with the technical and legal expertise necessary to successfully represent his clients in scientifically complex matters. Mr Burgy is a frequent lecturer on US IP rights. He regularly lectures at industry conferences and teaches classes on intellectual property at the University of North Carolina at Chapel Hill. Not only is Mr Burgy at the forefront of patent jurisprudence, he has also helped shape legislation related to patent laws. Specifically, Mr Burgy has advised clients and Congress on various patent legislation matters dealing with the America Invents Act. Mr Burgy earned his BS in biology from University of North Carolina at Chapel Hill, an MS in biotechnology from Johns Hopkins University and his JD from the University of New Hampshire.
1400 IAM Patent 1000
Axinn, Veltrop & Harkrider LLP 950 F Street North West 7th Floor Washington DC 20004 United States T +1 202 721 5417 See firm profile p1652 Professional associations • AIPLA • ITC Trial Lawyers Association • PTAB Bar Association
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Chinn, Richard
Partner – Grüneberg and Myers PLLC rc@gandmpatent.com | www.gandmpatent.com
Richard Chinn’s fluency in organic chemistry, and especially in heterocycle synthesis, stands head and shoulders above most chemical patent attorneys. He brings a wide range of experience in client counselling, patent prosecution, application preparation, patentability and infringement evaluation and litigation in chemical technologies to the practice of patent law. Dr Chinn works with start-ups, emerging and multinational foreign and domestic companies in industries ranging from polymer and chemical processing to biotech, semiconductor, petroleum products, alternative energy, pharmaceuticals, cosmetics and food. He also counsels universities on their patent needs. After understanding clients’ needs and goals, Dr Chinn provides a value-driven approach, offering confidence in achieving the desired outcome. He guides clients through the complexities of the US patent system, advising, offering opinions and prosecuting all aspects of patent protection. He addresses issues ranging from inventorship disputes and inequitable conduct to on-sale bar restrictions. Dr Chinn’s breadth of experience allows him to see the bigger picture of clients’ issues, addressing not only the problems presented but also the broader implications and related concerns. With an advanced degree in synthetic organic chemistry and firsthand experience from his post- doctoral fellowship researching and investigating methodologies for heterocycle synthesis, Dr Chinn brings a deep understanding of the science underlying clients’ inventions. In addition to total synthesis and heterocycle methodologies, Dr Chinn’s scientific expertise includes pharmaceutical agents, carbohydrates, enzymology, agricultural chemicals, biotechnology, polymer chemistry, dye stuffs and semiconductor processing. Dr Chinn has published numerous scientific articles in the areas of organic synthesis, mechanistic organic chemistry and heterocyclic methods.
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Grüneberg and Myers PLLC 1775 Tysons Boulevard 5th Floor Tysons VA 22102 United States T +1 571 458 7785 See firm profile p1688 Professional associations • ABA • AIPLA • American Chemical Society
IAM Patent 1000 1401
Costellia, Jeffrey L
Partner – Nixon Peabody LLP jcostellia@nixonpeabody.com | www.nixonpeabody.com
Jeffrey L Costellia is a co-leader of Nixon Peabody’s IP group and also chairs the firm’s global strategies committee. He represents both US and foreign companies to develop overall, global IP protection strategies involving all phases of patent and trademark prosecution and enforcement. Mr Costellia has over 25 years of experience providing practical IP protection strategies that help clients meet or exceed their business objectives. He works with US and international companies to develop global patent protection strategies involving all aspects of patent prosecution and enforcement protection. He has extensive experience prosecuting patents before the USPTO. He also counsels domestic and foreign business entities on patent validity and infringement matters. Mr Costellia has represented companies from a broad range of industries, including secondary batteries, electronic circuits, semiconductors, LCD and electroluminescent displays, nuclear reactor technology, chemical composites and polymers, transportation monitoring devices and sensing technologies, and mining technologies. With face-to-face meetings being impossible in the context of the covid-19 pandemic, Mr Costellia has embraced the regular use of enhanced electronic communication tools to keep in regular contact with his clients, meaning that his work for them has continued without pause in the challenging current context.
1402 IAM Patent 1000
Nixon Peabody LLP 799 9th Street NW Suite 500 Washington DC 20001-5327 United States T +1 202 585 8207 See firm profile p1716 Professional associations • ABA • AIPLA • INTA
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Etienne-Cummings, Shamita D Partner – White & Case LLP setienne@whitecase.com | www.whitecase.com
With more than 20 years of experience in litigating patent and commercial disputes before US district courts, the International Trade Commission and the International Commercial Court, Shamita D Etienne-Cummings is a trusted adviser to many leading global technology companies. As a leader in White & Case’s IP practice group, Ms Etienne-Cummings combines a client-focused business practicality with substantial knowledge of law and technology. As a former electrical engineer, Ms Etienne-Cummings’s industry experience includes emphasis in mobile communication, semiconductor design and processing, media, aerospace, defence, consumer electronic devices and medical devices. Her clients benefit from her exceptionally deep technical knowledge, based on her previous work at GTE Corporation (now Verizon), where she designed and implemented wireless communication and satellite systems. In addition to being a first chair trial attorney, Ms EtienneCummings also serves as the office executive partner for the Washington DC office and as an elected member on the firm’s eight strong global management team. Ms Etienne-Cummings has held a number of roles at White & Case, leading on important firm issues such as diversity and inclusion, partner development and advancement, as well as lateral partner recruitment. In addition to her contributions to the firm and clients, Ms Etienne-Cummings is an adjunct professor of law at George Washington University School of Law, where she teaches a patent trial course.
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White & Case LLP 701 Thirteenth Street NW Suite 600 Washington DC 20005-3807 United States T +1 202 626 3695 See firm profile p1740
IAM Patent 1000 1403
Fisher, Stanley
Partner – Williams & Connolly LLP sfisher@wc.com | www.wc.com
Stanley Fisher is a trial lawyer and counsellor who focuses his practice primarily on issues that affect technology companies in the biopharmaceutical, chemical, diagnostic, mechanical and electronic sectors. Mr Fisher has tried numerous cases before judges and juries in federal and state courts, before arbitration panels and in the PTAB on behalf of many of the world’s largest biopharma, medical device and high-technology companies in litigation involving patent, Food and Drug Administration and antitrust disputes and issues, as well as matters involving contracts, licensing and business torts. He also has an active practice litigating trade secrets, trademarks and copyright. IAM Patent 1000 recognised Mr Fisher as a “Leading Patent Litigation Attorney” in its 2020 edition. The publication noted that he has “broad horizons as a trial lawyer and litigates with confidence and poise in diverse technical fields, across all areas of intellectual property and in regulatory, antitrust and contract disputes”. Mr Fisher is a recent past president of the Giles S Rich American Inn of Court, the Intellectual Property Inn of Court in Washington DC generally affiliated with the US Court of Appeals for the Federal Circuit. Mr Fisher serves as professorial lecturer in law at The George Washington University Law School, where he teaches chemical and biotech patent law, a course focused on patent, regulatory and antitrust issues arising in Hatch-Waxman, Biologics Price Competition and Innovation Act and other pharmaceutical and biotechnology patent matters. Mr Fisher received his BS in molecular biophysics and biochemistry from Yale College in 1997 and his JD from The George Washington University Law School in 2004, where he graduated with highest honours and served as editor in chief of The George Washington Law Review. He joined Williams & Connolly in March 2006 after clerking for Judge Richard Linn at the US Court of Appeals for the Federal Circuit.
1404 IAM Patent 1000
Williams & Connolly LLP 725 Twelfth Street North West Washington DC 20005-5901 United States T +1 202 434 5289 See firm profile p1742
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Gardella, Greg H
President – Gardella Grace PA ggardella@gardellagrace.com | www.gardellagrace.com
As noted by IAM in its 2018 rankings: “Greg H Gardella has taken the lead on many of the higher-profile inter partes reviews. A former Irell, Fish and Oblon lawyer, he has real pedigree and an incredible depth of knowledge. The wonderfully savvy lawyer recently broke away from Oblon to form Gardella Grace.” Mr Gardella has been honoured as one of the best lawyers in the United States for multiple consecutive years and has likewise received various awards and recognition from Managing Intellectual Property, Super Lawyers and Who’s Who Legal. He has also repeatedly been named as one of the nation’s top post-grant practitioners by IAM, which previously reported that “the phenomenal Greg Gardella is extremely experienced in the post-grant space and a dynamic all-round patent consultant” and noted that his “former bigticket patent litigation experience has served him well in contested re-examination proceedings, of which he is regarded a master”. Mr Gardella successfully defended the famous TiVo DVR patent which thereafter generated over $1 billion in licensing revenue. Before the PTAB Mr Gardella also successfully defended four patents covering aseptic packaging technologies, which are used to process approximately two billion bottles per year. On the challenger side, he prevailed for St Jude Medical in nine post-grant proceedings targeting numerous Medtronic patents, which purportedly covered the billiondollar denervation industry. In these cases every challenged claim was finally adjudicated to be invalid on multiple grounds. Mr Gardella was also the editor of a treatise on post-grant practice entitled “Post Grant Proceedings Before the Patent Trial and Appeal Board”, published by the Practicing Law Institute. He has frequently lectured on post-grant proceedings and strategies for the effective execution of concurrent litigation, post-grant proceedings and patent prosecution.
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Gardella Grace PA 80 M Street SE 1st Floor Washington DC 20003 United States T +1 703 556 9600 F +1 703 740 4541 See firm profile p1684
IAM Patent 1000 1405
Genderson, Bruce R Partner – Williams & Connolly LLP bgenderson@wc.com | www.wc.com
Bruce R Genderson founded and is the senior trial lawyer of Williams & Connolly’s patent litigation practice. He is nationally known for his work representing major corporations in patent disputes. Over the course of his more-than-three-decade career, he has represented some of the world’s largest companies in patent infringement suits involving billiondollar-a-year pharmaceuticals, complex biotechnology inventions, computers and electronics and medical devices. He has represented a number of emerging companies in patent litigation in different industries as well. Mr Genderson has been named an “IP Star” by Managing Intellectual Property every year since 2013. The 2015 edition stated that he “has been described by peers as a ‘superb trial lawyer’ and a ‘brilliant strategist’”. LMG Life Sciences 2012 states that “peers consider [him] to be ‘one of the best patent litigators in the country’” and the publication recognised him as a “Life Science Star” from 2012 to 2020. In 2015 LMG inducted him into its Hall of Fame and in 2019 Mr Genderson was awarded “Branded Hatch-Waxman Litigator of the Year”. Mr Genderson also received top rankings in IP litigation in the 2013 to 2019 editions of Chambers USA: America’s Leading Lawyers for Business and was recommended in the 2015 edition of The Legal 500 in the area of commercial litigation. Since 2016, Benchmark Litigation has named him a “Local Litigation Star” in the category of IP litigation. In 2020 Benchmark also shortlisted Mr Genderson with five others for Intellectual Property Attorney of the Year and recognised him as a “National Practice Area Star”. Mr Genderson began building Williams & Connolly’s patent litigation practice in the mid-1990s, and it is now among the firm’s largest practice groups. He has practised in state and federal courts across the country. He has also assisted in litigation outside the United States, including a trial in Australia. His pharmaceutical clients include Bayer, Eli Lilly, Merck, Novartis and Alcon, and his electronics clients include Samsung and Google.
1406 IAM Patent 1000
Williams & Connolly LLP 725 Twelfth Street North West Washington DC 20005-5901 United States T +1 202 434 5999 See firm profile p1742
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Grace, Natalie J
Vice President – Gardella Grace PA ngrace@gardellagrace.com | www.gardellagrace.com
Natalie J Grace’s IP experience touches upon diverse technologies and aspects of IP protection. Ms Grace has exercised expedited prosecution strategies to gain portfolios of new, strengthened patents on behalf of litigation clients that have proven to both withstand post-grant attack and obtain favourable outcomes for firm clients. She also has extensive experience in grant proceedings, having collaborated in argument development and drafting coordination for a variety of high-stakes post-grant matters. She further frequently assists clients with patentability and infringement evaluation, landscape study, patentability analysis and freedom-to-operate research. Ms Grace applies her electrical engineering degree and nearly a decade of software development experience to building patent portfolios in the software, electronic and medical devices spaces, in relation to, among others, consumer electronic devices; electronic payment services; network communications management; software development platforms; hardware design simulation platforms; electronic gaming platforms; social media platforms and tools; wireless technologies; financial management and market analysis tools; threedimensional printing applications; semiconductor manufacturing; industrial automation; wearable sensor technology for medical diagnosis, monitoring and intervention; and other software used in medical imaging, diagnosis and treatment. In particular, she has enjoyed focusing on developing successful drafting techniques for obtaining patent protection for artificial intelligence (AI) and machine learning innovations domestically and abroad. The machine learning and AI inventions include many cross-over technologies combining, for example, financial industries or life sciences with big data analysis such as genomic sequencing analysis, software systems for bioinformatics and reinsurance portfolio risk analysis. Beyond her technological areas of expertise, Ms Grace has extensive background in patent prosecution in the mechanical arts, including aerospace, transportation and medical device technologies. Before entering the legal field, Ms Grace worked as a senior software design engineer with Cisco Systems and Lucent Technologies.
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Gardella Grace PA 80 M Street SE 1st Floor Washington DC 20003 United States T +1 703 740 4538 F +1 703 740 4541 See firm profile p1684 Professional associations • Boston Patent Law Association
IAM Patent 1000 1407
Grossman, Dov
Partner – Williams & Connolly LLP dgrossman@wc.com | www.wc.com
Dov Grossman is an accomplished trial lawyer with over 15 years of experience litigating biopharmaceutical patent disputes, including as lead counsel. Mr Grossman’s educational background is in chemistry – with an emphasis on medicinal chemistry – and he has relied on that experience to successfully represent some of the world’s largest innovator pharmaceutical companies in a wide variety of patent disputes, including for multiple billion-dollar products. Mr Grossman has extensive experience litigating Hatch-Waxman cases, both in the district courts and on appeal. He has also litigated brand v brand patent disputes between innovator companies and has handled numerous inter partes review proceedings before the PTAB. In addition to pharmaceutical-related matters, Mr Grossman has litigated patent cases in the medical device and telecommunications industries. He also has advised clients on the negotiation of patent licensing agreements, including as the lead outside attorney handling the negotiations. Mr Grossman earned his JD, with honours, from the University of Chicago, where he was articles editor for The University of Chicago Law Review and a member of the Order of the Coif. He clerked for Judge William C Bryson of the US Court of Appeals for the Federal Circuit. He received his AB in chemistry, magna cum laude, from Harvard University in 1997, and an MSc in chemistry from the Weizmann Institute of Science in 1999. Aspects of his Weizmann research were published in Letters in Peptide Science in 2002 (“Potentiating Vanadium-Evoked Glucose Metabolism by Novel Hydroxamate Derivatives”).
1408 IAM Patent 1000
Williams & Connolly LLP 725 Twelfth Street North West Washington DC 20005-5901 United States T +1 202 434 5812 See firm profile p1742
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Grüneberg, Kirsten A
Managing Partner – Grüneberg and Myers PLLC kg@gandmpatent.com | www.gandmpatent.com
Kirsten A Grüneberg established the Grüneberg and Myers firm in 2017, aiming to provide high-quality service while maximising efficiency and minimising internal bureaucracy and expenses. With a business model differing from many traditional law firms, Grüneberg and Myers is highly adaptable to the economic requirements of corporate clients. Dr Grüneberg leads a team of professionals with extensive experience in intellectual property, ranging from chemical, pharmaceutical and biotech to electrical and mechanical technologies, bolstering their ability to deliver on these goals. Within three years, the firm was recognised as one of the world’s leading IP firms. Dr. Grüneberg has the rare honour of being listed in IAM Patent 1000 as well as IAM Strategy 300, which name the world’s top IP professionals and IP strategists. Dr Grüneberg supports many of the world’s largest chemical, biotech and pharmaceutical companies, including Fortune 50, Fortune Global 200 and Nikkei 225 companies, in addressing their IP and business needs. She counsels clients on freedom-to-operate opinions, prosecution, worldwide portfolio management and postgrant proceedings, including inter partes reviews and reexamination. Dr Grüneberg also has significant experience with IP issues in mergers and acquisitions in the United States, Europe and Asia. Dr Grüneberg has successfully defended high-value pharmaceutical patents in post-grant proceedings, helping to secure business deals worth several hundred million dollars. She is also active on the post-grant petitioner side. After receiving her PhD in organic chemistry, magna cum laude, from the Technical University of Berlin, Dr Grüneberg was awarded a Lynen Fellowship from the Alexander von Humboldt Foundation in Germany to perform research at the Centre for Bio/Molecular Science and Engineering at the US Naval Research Laboratory. She was a visiting professor at Georgetown University Medical Centre in Washington DC. She also worked as a senior scientist at Geo-Centres Inc and the US Naval Research Laboratory, and as a research scientist at the Max Planck Institute of Colloids and Interfaces in Berlin.
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Grüneberg and Myers PLLC 1775 Tysons Boulevard 5th Floor Tysons VA 22102 United States T +1 571 458 7783 See firm profile p1688 Professional associations • Alexander von Humboldt Association of America • LES Germany • VPP Germany
IAM Patent 1000 1409
Laurence, Kevin B
Partner – Laurence & Phillips IP Law klaurence@lpiplaw.com | www.lpiplaw.com
Kevin B Laurence and his colleagues at Laurence & Phillips have compiled an impressive record in inter partes reviews and other postgrant proceedings at the USPTO’s Patent Trial and Appeal Board (PTAB) and related appeals to the US Court of Appeals for the Federal Circuit. Laurence & Phillips has been honoured to be included by US News – Best Lawyers in their top tier of US firms in patent law, the only small firm to be recognised in this prestigious list of 50 firms in 2020 and 2021. In addition to his three decades of experience, Mr Laurence has developed a depth of relevant knowledge by continuously studying cases at the PTAB and the Federal Circuit. IAM noted in its 2020 rankings: “Kevin Laurence is a mastermind when it comes to post-grant proceedings with a level of experience that is hard to beat” and that he “knows all the details of his cases and is extraordinarily perceptive at a strategic level, too”. Mr Laurence has been honoured to be included in IAM’s list of leading post-grant practitioners in the United States every year since 2012. Additionally, Best Lawyers in America named Mr Laurence their 2016 “Lawyer of the Year” in patent law for Washington DC. Mr Laurence has taught a course on post-grant proceedings as an adjunct professor at the George Washington University Law School every year since 2015. He taught a bi-annual three-day advanced course on post-grant proceedings for Patent Resources Group from 2009 until 2019. He is a co-author of a two-volume treatise entitled Post-Grant Patent Practice, first published in 2009 and updated at least annually until 2019. He has written over 40 articles on post-grant patent topics and has enjoyed lecturing internationally on post-grant patent topics since 2009. He served on the Interim Board of Directors for the PTAB Bar Association for the 2016-2017 term. He served as vice chair of the Intellectual Property Owners Association’s US Post-Grant Patent Office Practice Committee from 2012 until 2015.
1410 IAM Patent 1000
Laurence & Phillips IP Law 2220 Pennsylvania Ave, NW 4th Floor East Washington DC 20037-1701 United States T +1 202 558 6180 F +1 202 558 6081
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Myers, Eric
Partner – Grüneberg and Myers PLLC em@gandmpatent.com | www.gandmpatent.com
Eric Myers counsels clients on a wide variety of patent issues, including patentability, invalidity, non-infringement, design-around strategies, and challenging granted patent validity. In addition to prosecution, Mr Myers opines on patents in various contexts, including pending acquisitions and potentially adversarial circumstances. Companies worldwide, including in North America, Europe and Asia, have relied on Mr Myers to carefully and timely evaluate patent concerns. Appreciating that IP issues can greatly impact clients’ business, Mr Myers seeks to provide well-supported and clear analysis to guide clients’ decisions and obtain favourable outcomes. Having studied developments in the patent and regulatory laws governing pioneer and generic pharmaceuticals, Mr Myers provides counsel on issues unique to pharmaceutical intellectual property. His experience extends to matters of patent term extension, Orange Book listings and IP-related aspects of Food and Drug Administration submissions. Multinational corporations, start-ups and academic institutions alike trust Mr Myers to obtain strong patent coverage from their applications before the USPTO. Mr Myers handles all stages of prosecution, frequently discussing matters with examiners to efficiently resolve issues in clients’ applications. Mr Myers also advocates before the Patent Trial and Appeal Board, both in briefs and in oral hearings. In other exceptional cases, Mr Myers has been effective in filing petitions to the director of the USPTO. Mr Myers brings perspective from decision-makers in highly contentious proceedings. He spent a year working under Paul J Luckern, the longest-serving administrative law judge in the history of the International Trade Commission. There, Mr Myers handled responsibilities including drafting claim construction, infringement, and validity findings for Section 337 investigations. These experiences set the foundation for Mr Myers’s commitment to high standards of quality in prosecution and counselling. Prior to his career in patent law, Mr Myers researched metal oxide nanoparticle synthesis and catalysis, culminating in an honours thesis as a member of the Schreyer Honors College at Penn State. Mr Myers also investigated carbon nanotube applications in atomic force microscopy with support from the National Science Foundation.
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Grüneberg and Myers PLLC 1775 Tysons Boulevard 5th Floor Tysons VA 22102 United States T +1 571 458 7784 See firm profile p1688 Professional associations • Giles S Rich American Inn of Court • VPP Germany
IAM Patent 1000 1411
Selby, Thomas HL
Partner – Williams & Connolly LLP tselby@wc.com | www.wc.com
Over the past 20 years of practice, Thomas HL Selby has concentrated his practice in two (usually) distinct areas: patent litigation and professional liability defence. He is the former co-chair of the firm’s patent litigation practice group working on patent and licensing litigation. Over that same period, Mr Selby has represented national accounting firms in dozens of major trial, arbitration, investigatory and regulatory matters. He is a member of Williams & Connolly’s executive committee. On the patent side, Mr Selby has represented clients in IP disputes over software, biotech, pharmaceutical, medical device and communications technologies. In 2019 he served as lead counsel in patent or licensing matters for Dropbox, Pfizer, Danaher and Envista entities and others. He has been recognised in the 2014-2019 editions of Washington, DC Super Lawyers Magazine under the category of Intellectual Property Litigation and has been listed as a “Life Science Star” in the 2015-2020 editions of LMG Life Sciences. Since 2016, Mr Selby has been recognised as a “Leading Patent Practitioner in Litigation (DC)” by IAM Patent 1000. Since 2019, Managing Intellectual Property has recognised him as an “IP Star”.
1412 IAM Patent 1000
Williams & Connolly LLP 725 Twelfth Street North West Washington DC 20005-5901 United States T +1 202 434 5066 See firm profile p1742
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Shapiro, Jason M
Partner – Edell Shapiro & Finnan LLC js@usiplaw.com | www.usiplaw.com
With more than 25 years of experience in the IP field, Jason M Shapiro is recognised as a go-to attorney for complex patent prosecution matters, post-grant proceedings, non-infringement and invalidity opinions, technology transactions and protection of IP rights in US government contracts. Leveraging his experience as both a registered US patent attorney and a patent litigator, Mr Shapiro has been actively involved in America Invents Act post-grant proceedings since they were first introduced, representing both patent owners and petitioners. He has been extremely successful in defending patent owners against the institution of inter partes review and in seeking inter partes review on behalf of petitioners. Mr Shapiro rejoined the attorneys at Edell, Shapiro & Finnan in 2016, after five years as in-house patent counsel at Northrop Grumman Corporation and 10 years as a partner at Rothwell, Figg, Ernst & Manbeck. Before entering the legal profession, Mr Shapiro conducted research for the US Navy in the field of experimental hydrodynamics and supervised the fabrication of advanced prototypes at Martin Marietta Corporation. His graduate research at the Johns Hopkins University involved the use of optical interferometry in the field of experimental mechanics.
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Edell Shapiro & Finnan LLC 9801 Washingtonian Boulevard Suite 750 Gaithersburg MD 20878 United States T +1 240 864 2434 F +1 301 762 4056
IAM Patent 1000 1413
Tennant, David M
Partner – White & Case LLP dtennant@whitecase.com | www.whitecase.com
David M Tennant leads the Patent Office practice in White & Case’s Washington DC office. His background in electrical engineering gives him an unusually clear understanding of the highly technical concepts and products that he helps to patent and challenge in post-grant proceedings, in areas such as software, computer servers, network routers, microprocessors, semiconductor processes, semiconductor devices, image sensors, circuits, consumer electronics, and mobile products and services. Mr Tennant has a successful track record of protecting and challenging patents in post-grant proceedings implemented under the America Invents Act. In such proceedings, clients benefit from his experience in both litigating complex patent cases in district courts and the International Trade Commission and procuring patents. In patent procurement matters, Mr Tennant has extensive experience drafting and prosecuting patent applications. He understands how to leverage his patent litigation experience in order to obtain patents of utmost quality. In addition, clients turn to him for his guidance on establishing, developing, maintaining and leveraging their patent portfolios to maximise value. Mr Tennant brings knowledge and insight to transactional matters, including patent licensing negotiations, technology agreement negotiations and service provider agreement negotiations. He also provides advice on patent invalidity, enforceability and infringement studies. Mr Tennant is a frequent lecturer on all aspects of IP protection. International in experience and outlook, he has spent extended periods of time working abroad with a Japanese client and has served as in-house counsel for a leading Japan-based international consumer electronics manufacturer.
1414 IAM Patent 1000
White & Case LLP 701 Thirteenth Street NW Suite 600 Washington DC 20005-3807 United States T +1 202 6260 3684 See firm profile p1740
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United States: Delaware
Ashby & Geddes
Ashby & Geddes has instilled a ‘get to know you’ culture with clients that engenders significant loyalty. Whether instructed directly by in-house counsel or by leading IP firms across the country, the team is conscientious in gaining an understanding of clients’ technologies and business needs, the satisfaction of which it prioritises throughout all phases of patent litigation. Fit for any patent case going, Steven Balick, John Day and Andrew Mayo form a tight-knit crew of strategically and commercially smart litigators.
Bayard PA
Making light work of technically dense cases, Bayard is a perfect fit for Delaware counsel roles in important patent and other IP litigations. Growth in the pharmaceutical practice is a notable recent storyline; the team represents both branded and generic drug companies, affording it deeper insight into the tactics of its opponents. Software and high-technology briefs – also on the increase – are similarly dispatched with aplomb. Lead partner Stephen Brauerman and his colleagues have recently been engaged in extensive Hatch-Waxman litigation on behalf of Sandoz and Teva, under instruction from Goodwin Procter; for Hetero USA and Shilpa Medicare; and for Dr Reddy’s Laboratories. They have also been busy with a series of patent infringement cases for Dynamic Data Technologies regarding imaging and video processing patents. Brauerman takes on a wide range of commercial and IP cases – variety which has refined his pragmatic, results-focused style.
Connolly Gallagher LLP
“Connolly Gallagher can be relied on for the right steer on all issues that come up in patent litigation; and for efficient, knowledgeable representation.” Carrying out its local counsel assignments with the minimum of fuss while always adding value, it is regularly selected by some of the most formidable litigation firms for mission-critical cases. The presence of Arthur G (Chip) Connolly – a third-generation Wilmington lawyer who is deeply rooted in the Delaware Bar and plugged into the federal judiciary – inspires true confidence: “He is even tempered, thoughtful and insightful – the consummate professional.” He has handled numerous pharmaceutical suits recently, including for Hospira, Pfizer and Torrent Pharma; and has also been dialled in on communications matters for HTC and Comcast Cable Communications Management.
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Devlin Law Firm LLC
Agile, commercial and cost effective, Devlin Law Firm is a popular pick both for patent litigation and for strategic counselling. The boutique has an enviable hit rate on both sides of the docket – not just in the District of Delaware, but across the United States. Taking centre stage are seasoned advocates Timothy Devlin and James Lennon. The technology-focused Devlin – a fellow of the Litigation Counsel of America – is well known as a leading plaintiffs’ lawyer. Lennon, who co-chairs the trademark practice, has a technical background that also suits him well in complex patent proceedings; leveraging his broad IP knowledge, he keeps all strategic avenues open for clients.
Farnan LLP
Delaware trial boutique Farnan engages in a wide range of commercial and non-business litigation and sees a tremendous amount of action in the courtroom. Highly proficient in patent matters, former local judge Joseph Farnan and Brian Farnan acquit themselves with distinction on complex cases and navigate with an unerring compass towards satisfying business results.
Fish & Richardson
Eminent patent litigation outfit Fish & Richardson has a superb reputation in the First State, just as it does around the country. Its lawyers in Delaware and elsewhere prepare with incredible diligence in prelitigation and draw upon extensive trial experience to pursue optimal strategies from the moment that a case is filed. Strategic wisdom on the interplay between district court litigation and post-grant proceedings further defines the Fish & Richardson edge. On the frontlines of the practice are Douglas McCann, Jeremy Anderson, Susan Morrison and Martina Tyreus Hufnal, each of whom is worthy of special mention. Leadership is one of McCann’s most distinctive traits – he can inspire and motivate trial teams to achieve their best. Anderson is adept in technology-intensive litigation of all types, not just patent cases, and has cultivated a rich strategic playbook; this is helpful for long-running, hard-fought cases, such as one he is currently litigating on behalf of LG Electronics against Arendi which was filed in 2013 and has since gone through lengthy PTAB and Federal Circuit proceedings. Morrison is “incredibly practical and solutions oriented”, and has “a strong understanding of business”. Hufnal has tried a variety of suits, but has a special affinity for pharmaceutical disputes. Gwilym Attwell, meanwhile, anchors the firm’s highly sophisticated prosecution, counselling and opinions
IAM Patent 1000 1415
United States: Delaware Firms
Luminaries
Fish & Richardson
Joseph J Farnan Jr Farnan LLP
Morris Nichols Arsht & Tunnell LLP Richards Layton & Finger PA Shaw Keller LLP
Rudolf E Hutz Reed Smith LLP
Womble Bond Dickinson (US) LLP
the dispute along with top Chicago outfit Jenner & Block. Well suited to multifaceted proceedings, too, the team – led by Michael Flynn – is representing ClearOne in proceedings involving patent infringement, false advertising, deceptive trade practices, tortious interference and unfair competition. On the pharmaceutical front, Jeremy Tigan is acting for CyDex in a series of related Hatch-Waxman suits, riding high on winning performances for Galderma Laboratories against various generic pharmaceutical companies; while Karen Jacobs is lead counsel for Sunovian in numerous actions involving seizure drug Aptiom alongside Jennifer Ying, an up-and-coming partner who debuts in the IAM Patent 1000 this year.
Young Conaway Stargatt & Taylor LLP
Potter Anderson & Corroon LLP
Ashby & Geddes Bayard PA Connolly Gallagher LLP Devlin Law Firm LLC Farnan LLP Potter Anderson & Corroon LLP
practice locally, while also making pivotal contributions on the post-grant front. He has a background in the life sciences, which remains a core industry focus alongside digital health and medical devices.
Morris Nichols Arsht & Tunnell LLP
Morris Nichols is a force to be reckoned with in Delaware patent litigation. It has a deep bench of crack litigators whose dynamism translates into polished performances in a huge number of pharmaceutical and technology disputes. Capitalising on vast trial experience, the group often prevails through pre-trial motion practice and tactical negotiations, earning credit for its problem-solving efficiency and cost effectiveness. The talisman is Jack Blumenfeld, who needs no introduction as the unequivocal marketleading patent litigator in Delaware. He and rising star Brian Egan have been doing battle for 16 of 40 defendants sued by Midwest Energy Emissions Corp in a patent infringement action concerning patents relating to a process for mercury removal from coalfired power plants; having secured a motion to dismiss all claims against their clients, they are now seeking to do so again following an amendment of the complaint. Making this a good example of the weight that Morris Nichols can throw behind a big action, Rodger Smith II is representing several additional parties in
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Storied Delaware ensemble Potter Anderson & Corroon possesses a comprehensive IP toolkit and supports innovative companies in many meaningful ways. Unlike most of its peers, it has a presence on the prosecution table in the form of Janet Reed, who heads the IP counselling and transactions practice. Armed with a biochemistry PhD, Reed executes prosecution tasks with precision and manages portfolios with welldesigned strategies. The litigation bench is a deep one, headlined by veteran commercial and IP litigators David Moore and Philip Rovner; and patent and IPfocused up-and-comers Alan Silverstein and Bindu Ann Palapura.
Richards Layton & Finger PA
A premier choice for patent litigation, Richards Layton Finger is tried and tested in high-stakes scenarios. In 2019, it handled 83 IP cases filed in the District of Delaware and hasn’t slackened off the pace since, remaining right in the thick of the action when it comes to conflicts over pharmaceutical drugs, medical devices, communications technology and computerrelated innovations. Recent co-counsel highlights include representing Gilead Sciences against the US government and acting for Charter Communications against Sprint; while lead counsel roles include defending STMicroelectronics against TriDiNetworks, which filed a complaint alleging infringement of a patent directed to tools and methods for wireless
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United States: Delaware Jeffrey L Moyer Richards Layton & Finger PA
Individuals: litigation Steven J Balick Ashby & Geddes
Rodger D Smith II Morris Nichols Arsht & Tunnell LLP
Jack B Blumenfeld Morris Nichols Arsht & Tunnell LLP
Jeremy A Tigan Morris Nichols Arsht & Tunnell LLP
Fred Cottrell Richards Layton & Finger PA
Jeremy D Anderson Fish & Richardson
Kelly E Farnan Richards Layton & Finger PA
Daniel M Attaway Womble Bond Dickinson (US) LLP
Douglas E McCann Fish & Richardson
Neal C Belgam Smith Katzenstein & Jenkins LLP
John W Shaw Shaw Keller LLP
Kristen Cramer Womble Bond Dickinson (US) LLP
Mary W Bourke Womble Bond Dickinson (US) LLP
Francis DiGiovanni Faegre Drinker Biddle & Reath LLP
Stephen B Brauerman Bayard PA
Brian Egan Morris Nichols Arsht & Tunnell LLP
Arthur G (Chip) Connolly III Connolly Gallagher LLP
Brian Farnan Farnan LLP
John G Day Ashby & Geddes Timothy Devlin Devlin Law Firm LLC Kenneth L Dorsney Morris James LLP Anne Shea Gaza Young Conaway Stargatt & Taylor LLP Karen Jacobs Morris Nichols Arsht & Tunnell LLP Karen Keller Shaw Keller LLP Andrew Mayo Ashby & Geddes David E Moore Potter Anderson & Corroon LLP
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Michael Flynn Morris Nichols Arsht & Tunnell LLP See p1420
Martina Tyreus Hufnal Fish & Richardson Pilar Kraman Young Conaway Stargatt & Taylor LLP James M Lennon Devlin Law Firm LLC Susan E Morrison Fish & Richardson Bindu Ann Palapura Potter Anderson & Corroon LLP Adam W Poff Young Conaway Stargatt & Taylor LLP Philip A Rovner Potter Anderson & Corroon LLP
IAM Patent 1000 1417
United States: Delaware Dana Severance Womble Bond Dickinson (US) LLP Alan Silverstein Potter Anderson & Corroon LLP Jennifer Ying Morris Nichols Arsht & Tunnell LLP
Individuals: prosecution Gwilym Attwell Fish & Richardson Janet E Reed Potter Anderson & Corroon LLP Patricia Smink Rogowski Rogowski Law Geoffrey Zelley Faegre Drinker Biddle & Reath LLP
and wired network design installation and formation. Spearheading the Gilead matter, Fred Cottrell and Kelly Farnan form a tailor-made strike force for prestigious clients. Cottrell chairs the IP group and has long been a go-to for titans of technology. Also solid gold in the IAM Patent 1000, Farnan is “smart, highly capable, deeply knowledgeable regarding local judges and an integral member of any litigation team”. Responsible for the STMicroelectronics matter, litigation department vice chair Jeffrey Moyer is a seasoned commercial litigator with a flair for technology cases and licensing disputes.
Shaw Keller LLP
Built from the ground up to litigate patent infringement, trade secret and commercial disputes, Shaw Keller is an agile boutique with an intensity of focus that sees it through the toughest cases. The lawyers here aren’t mind readers, but they do have an instinctive feel for the thinking of Delaware judges and for what juries will find persuasive. John Shaw turns this to his advantage time and again, delivering messages that resonate in courtrooms locally and further afield, including the ITC. He takes the reins in high-technology battles; well prepared for these, too, Karen Keller puts the emphasis on chemical and life sciences matters, for which her background in biochemistry and molecular biology proves useful.
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Womble Bond Dickinson (US) LLP
Womble Bond Dickinson has a strong core of life sciences experts in Delaware, placing it in pole position for pharmaceutical patent litigation. Mary Bourke, who captains the firm-wide life sciences group, has vast industry experience which enables her to drive disputes outcomes that fulfil clients’ wider commercial objectives. She recently netted a gratifying result for plaintiff Ferring Pharmaceuticals in a declaratory judgment action for non-infringement in the Southern District of New York’s first fully remote trial, in which the court issued an opinion finding for Ferring, awarding fees and holding Serenity Pharmaceuticals’ patents invalid for written description, enablement and improper inventorship. Supporting on this, savvy ANDA tacticians Dana Severance, Kristen Cramer and Daniel Attaway manage large cases with ease and present them effectively in court.
Young Conaway Stargatt & Taylor LLP
Throughout all phases of patent litigation, Young Conaway’s lawyers demonstrate exacting attention to detail and strategic foresight; they also benefit from keen insight into the local judiciary and further impress with their economical handling of cases. Inspiring leadership is provided by Adam Poff and Anne Shea Gaza, who both garner rave reviews. Of Poff, one source comments: “Adam is the best of the local Delaware counsel I have partnered with; he is someone you can lean on heavily to vet overall case strategies in view of judges’ tendencies and procedures. Any time I have a case in Delaware, I look to partner with him – he is fantastic all round.” “Anne is a fabulous litigator and trial lawyer,” observes another. “She’s a tireless advocate whose work is consistently top-notch.” Among her big-ticket cases, Gaza has represented Seattle Genetics in a successful request to stay Daiichi Sankyo’s district court declaratory judgment action regarding the ownership of incredibly valuable IP rights. Joining her colleagues in the rankings for the first time, Pilar Kraman is a talented litigator and collaborative partner with superb communication skills.
Other recommended experts
Complex commercial and IP litigation is meat and drink to Neal Belgam. The Smith Katzenstein & Jenkins partner is highly experienced in the Delaware counsel role and a favourite of top law firms across the country for disputes involving any technical subject matter. He sees things through the eyes of the companies he represents, thanks to general counsel experience, and understands that litigation
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United States: Delaware is a means to business ends. Faegre Drinker partners Francis DiGiovanni and Geoffrey Zelley are key contacts for litigation and prosecution respectively. DiGiovanni is a perfect fit for multi-layered cases in which patent, antitrust and other issues intersect. Zelley has a refined understanding of life sciences innovation and is a technically gifted lawyer who maintains a heavy workload without dropping the ball on anything. Kenneth Dorsney litigates across the IP spectrum with confidence and poise, but has an affinity for pharmaceutical patent cases. He chairs the IP group at Morris James. Reed Smith senior counsel Rudolf Hutz is one of the most seasoned appellate advocates not just in Delaware, but in the
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country. He has been in the patent litigation game for more than five decades and is as sophisticated a strategist as anyone. Patricia Rogowski of Rogowski Law is a wonderful patent and all-round IP counsellor, with deep experience in litigation: “Pat’s opportunity spotting fuels white space innovation, leading to optimised coverage and protection. She is quick to react when matters are urgent, precise in sizing up potential problems and effective at devising strategies to tackle them. She has the rare ability to translate legalese into plain English, making it so much easier to make prompt and sound decisions on IP matters.” She also offers “better quality at a better price”.
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Devlin, Timothy
Managing Partner – Devlin Law Firm LLC tdevlin@devlinlawfirm.com | www.devlinlawfirm.com
Timothy Devlin is the founder and managing partner of Devlin Law Firm LLC. His practice has focused on patent infringement litigation for almost 20 years, representing plaintiffs and defendants, Fortune 500 companies and individual inventors. He is listed among the best lawyers in his field by numerous publications, including Chambers USA, Best Lawyers USA and Legal 500. Mr Devlin’s trial victories involve patents covering a broad spectrum of technologies, including such diverse areas as semiconductor wafer processing, silicon hydrogel contact lenses, network security, internet ticketing, high-speed internet services, mobile messaging, stents and stent grafts, and computer architecture. He stresses teaching technology in a way that juries can understand and draws narrative themes from the technology story. Mr Devlin’s interests also include the intersection of risk analysis and patent issues. He was formerly co-chair of the IP risk management group of one of the nation’s largest patent law firms. Throughout his career, Mr Devlin has involved himself in junior lawyer training and mentoring, assisting with training programmes directed by the National Institute for Trial Advocacy. Mr Devlin graduated from University of Michigan Law School, cum laude, and received undergraduate degrees in physics and mathematics, with honours in economics, from Penn State University.
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Devlin Law Firm LLC 1526 Gilpin Avenue Wilmington DE 19806 United States T +1 302 449 9010 F +1 302 353 4251 Professional associations • AIPLA • FBA
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United States: Georgia
Alston & Bird LLP
With prosecutors and portfolio strategists building strong IP foundations and hard-hitting litigators standing sentinel against infringers, Alston & Bird is the complete package for technology companies. An integrated approach across the contentious/noncontentious divide creates the ideal conditions for one-stop shopping, which high-profile names such as Energizer Brands are all too keen to capitalise on. Facilitating stellar global portfolio management and enforcement outcomes for Energizer are Jason Cooper and Keith Broyles, who respectively anchor the prosecution and litigation practices in Atlanta. Firm-wide IP group co-chair Cooper has an acute understanding of clients’ business, technologies and competition, and puts the right tools to the right use to keep them at the vanguard of the mechanical, manufacturing and medical device industries that are his focus. In taking him into the PTAB, Cooper’s practice dovetails with that of Broyles, who advocates with poise in post-grant, district court and Federal Circuit proceedings. Other notable patrons supported through incisive counselling include the University of Florida and Liberty Mutual – both clients of Dane Baltich, who debuts in the IAM Patent 1000 for 2021. Adept at procuring and commercialising patent assets in high-technology areas such as blockchain and artificial intelligence, Baltich produces “consistently great-quality work”. Like Baltich, Chris Lightner has a facility for prosecution, advisory and transactional briefs; he’s a touchstone lawyer for mechanical patents. For out-and-out licensing and deal matters, however, the best bet is David Teske, who leads the technology and privacy group; he cements partnerships that take their signatories to the next level. Joining Broyles in the litigation table, meanwhile, is Robert Lee: “Bob offers high-quality representation for a very reasonable price. He is commercially savvy, practical and cost conscious, and a great fit for mid-sized cases – he never disappoints and can be recommended without hesitation.”
Baker & Hostetler LLP
BakerHostetler has unique capabilities in the area of patent indemnification recovery and an ace up its sleeve in Lisa Collins, who helms a specialised practice in this area. Collins brings much more beyond this niche, though, as a seasoned litigator, portfolio manager and business adviser; she is also a leader on the diversity and inclusion front within the firm and the wider Atlanta community. Another
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Firms Alston & Bird LLP Fish & Richardson Kilpatrick Townsend & Stockton LLP King & Spalding LLP Baker & Hostetler LLP Ballard Spahr LLP Duane Morris LLP Finnegan, Henderson, Farabow, Garrett & Dunner, LLP See p1768 Meunier Carlin & Curfman Hill, Kertscher & Wharton, LLP
See p1696
Lee & Hayes, PC
See p1700
McDermott Will & Emery Pabst Patent Group LLP Thomas Horstemeyer LLP Womble Bond Dickinson (US) LLP
Luminaries Anthony Askew Meunier Carlin & Curfman
top local asset is Christopher Arena, a former chief IP counsel who serves as relationship partner for a world-leading telecommunications company; he spearheads major patent prosecution efforts for it, while Collins supervises things on the indemnity side, recently handling indemnity enforcement for 35 patent cases. Between them, they run a sophisticated operation in Georgia – and one which helps to undergird BakerHostetler’s remarkably robust and comprehensive national practice.
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United States: Georgia Ballard Spahr LLP
Ballard Spahr “staffs patent matters extremely efficiently and its rates are highly competitive”. Its attorneys work well with inventors, but can translate science into layman’s terms, which “helps nontechnical folks understand and lose their fear of patents and the patenting process”. The life sciences is a happy hunting ground for the firm, which provides invaluable strategic advice on cutting-edge pharmaceutical platforms, more traditional chemical innovations and everything in between. Staunch leadership comes from chemical and pharmaceutical team chair Brian Shortell, who ensures that “the right mix of experts is matched up with each brief, making interactions with inventors and everything subsequent a straightforward process. Brian himself is proactive, great to discuss strategy with and provides crystal-clear opinions”. Other major contributors on this front include Brian Meadows, a decisive and fast-acting lawyer who captains the patent group; immediate past chair of the IP department and allround patent caretaker Mitchell Katz; and head of biotechnology Scott Marty, who is intimately familiar with the entire drug development process. Shortell and Meadows form a dynamic pairing on behalf of numerous clients including Plastipak Holdings, whose core chemistry patents in its bottle designs and plastic packaging materials they handle. Shortell also represents the University of Utah Research Foundation as part of a team that supports the institution in patent prosecution, transactional and enforcement actions, other key members of which include Marty and Charley Brown. Electrical, software and business method team chief Brown leans into the life sciences practice as an expert in bioinformatics, an area in which he has research experience; but he gets his hands on a lot of cool high-technology inventions in his broad-ranging prosecution, portfolio management, counselling and opinion work. Wearing the captain’s armband for the litigation group, Richard Miller has an engineering background and a highly developed strategic sense, granting him a technical edge in court and a deep playbook to draw from.
Duane Morris LLP
In patent litigation, Duane Morris is “effective, organised and efficient, and gets excellent results on a consistent basis”. Multinationals such as Cisco Systems know this well: the tech conglomerate has instructed Matthew Gaudet and Norwood (Woody) Jameson on many occasions. Both play vital leadership roles in a high-octane group of trial lawyers with a complete command of the technical
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Individuals: litigation Keith Broyles Alston & Bird LLP Virginia L Carron Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Holmes J Hawkins III King & Spalding LLP Wab Kadaba Kilpatrick Townsend & Stockton LLP Mitchell G Stockwell Kilpatrick Townsend & Stockton LLP Matthew C Gaudet Duane Morris LLP Steven G Hill Hill, Kertscher & Wharton, LLP
See p1430
L Norwood Jameson Duane Morris LLP Thad C Kodish Fish & Richardson John Livingstone Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Richard W Miller Ballard Spahr LLP Shane Nichols Alston & Bird LLP John L North Hill, Kertscher & Wharton, LLP
See p1433
Katrina M Quicker Baker & Hostetler LLP William M Ragland Jr Womble Bond Dickinson (US) LLP Stephen M Schaetzel Meunier Carlin & Curfman
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United States: Georgia Jason E Stach Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Jeffrey Toney Kasowitz Benson Torres LLP James F Vaughan Womble Bond Dickinson (US) LLP R Bruce Bower Lee & Hayes, PC
See p1428
Corrin Drakulich Fish & Richardson Bill Dyer Lee & Hayes, PC
See p1429
Noah Graubart Fish & Richardson Christopher Green Fish & Richardson John Harbin Meunier Carlin & Curfman Stephen Kabakoff Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Aamir Kazi Fish & Richardson Robert L Lee Alston & Bird LLP Robin L McGrath Duane Morris LLP Renae Wainwright Kilpatrick Townsend & Stockton LLP Trenton A Ward Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
and advocacy elements of effective litigation – Gaudet as patent litigation co-chair and Jameson as IP group chair. Besides their Cisco activities, they have a lot else going on: Gaudet, for example, recently scored a win for Palo Alto Networks in a patent infringement
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case filed by Selective Signals; he stayed the district court case before invalidating all asserted claims of the patent in an inter partes review. Additional firepower in Atlanta is supplied by Robin McGrath, whose characteristic versatility was put on display in recent battles in the energy, internet security and automotive fields. Financial technology is a specialist subject for her, though, and she takes charge of the firm’s dedicated industry group.
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
A US and global leader in intellectual property, Finnegan has it all sewn up when it comes to patent practice. Prolific in prosecution, it has 225-plus USPTO-registered attorneys who put shoulder to the wheel to procure valuable patents, along with a deep bench of post-grant experts and top-flight litigators. Several of the latter can be found in the boutique’s Atlanta office, including PTAB specialists Jason Stach and Trenton Ward; life sciences trial lawyer John Livingstone; and all-round IP litigator Virginia Carron. Stach is a veteran of well over 100 post-grant trials in which he has directly participated, and many others in which his strategic input has made the difference. A former administrative patent judge, Ward knows the PTAB better than most, which makes him an essential component of just about any trial team. He recently worked alongside lead partner John Livingstone to prevail in a case for Kaken Pharmaceuticals and Bausch Healthcare at the Federal Circuit on appeal from an inter partes review. Carron has won patent and trademark suits in many different forums for prestigious clients such as Nestlé, which she has supported in multiple PTAB actions. See p1678 for firm profile
Fish & Richardson
In the state of Georgia, Fish has a stacked line-up of trial lawyers who contribute to one of the country’s mightiest patent litigation practices. The first name on the team sheet is Christopher Green, who gets ringing endorsements from clients: “Chris is extremely sharp in dissecting complex problems and brings tremendous clarity to them. He is an outstanding case and project manager, as well as a brilliant mentor to his colleagues and associates.” Many at Fish are “creative and practical advocates who do great legal work to achieve business objectives” – which certainly holds true for Thad Kodish, with whom Green has recently been collaborating in the defence of patent infringement allegations on behalf of Samsung Electronics. They are joined in the IAM Patent 1000 for 2021 by Noah Graubart and Corrin Drakulich, both
IAM Patent 1000 1423
United States: Georgia of whom play prominent roles at the firm. Gaubart co-founded Fish’s Atlanta office and has also recently had matters on for Samsung Electronic, defending it in a six-patent Eastern District of Texas shootout over digital camera and image processing technologies. Drakulich leads the local litigation group and orchestrates a wide range of patent campaigns, with a focus on medical device and life sciences disputes. She handles multiple cases for Exela Pharma Sciences. Aamir Kazi also debuts in the guide on the say-so of clients, who call him a “knowledgeable, attentive and efficient patent litigator and general counsellor who clearly cares about providing value above billable time”. “Aamir considers all angles to a case without getting lost in the weeds.” A valuable contact point in Atlanta for those requiring prosecution, portfolio management and counselling services is Tracy Hitt, who’s a go-to in the city for anything software related.
Hill, Kertscher & Wharton, LLP
Hill, Kertscher & Wharton practises dynamically in intellectual property and has an exemplary record of success in patent infringement battles. It deploys a SWAT team captained by Steven Hill and John North to carry the day in complex disputes between industry competitors. Cool under pressure, Hill and North are accomplished litigators and compelling advocates, adept at coordinating large matters involving many patents, multiple districts and large numbers of defendants. In early 2020, the firm brought Jerry Liu on board, hiring him for his technical perspicacity and strategic chops. Liu is a named inventor on 20-plus patents with in-house experience who has engaged in all kinds of patent work over the course of his distinguished career. See p1696 for firm profile
Kilpatrick Townsend & Stockton LLP
Home to 50 PhDs and nearly 100 attorneys and technical staff with master’s degrees, Kilpatrick Townsend is virtually unsurpassed for technical know-how, giving it a huge advantage in prosecution. This is only part of the story, however: many of the folks here have litigated, prosecuted and done many other things with patents, and as a result have cultivated a 30,000-foot view of intellectual property that translates into well-rounded, commercially meaningful advice. The group is also the trusted partner of myriad industry leaders and is thus hands-on with the technologies that are shaping new markets. Making it all click, Atlanta-based Wab Kadaba chairs the IP group and is a good example of the versatility commonly found at the firm: he is
1424 IAM Patent 1000
a technically trained, USPTO-registered counsellor who also happens to be a crack litigator. Key patrons include adidas, whose patent infringement, diligence and other matters he handles alongside Mitchell Stockwell, another consummate litigator. Both lawyers have also gone out to bat for Novelis against Arconic in a fierce competitor battle involving a treatment process for aluminium parts produced for Ford F-150s, in which Arconic has accused their client of trade secret misappropriation. Also leading on this fact-intensive, sprawling case is Renae Wainwright, a patent protection, enforcement and licensing ace with an industrial engineering background and a penchant for high-level strategic thinking. This is shared by Dean Russell on the electrical engineering side and neuroscience PhD Tina McKeon in the pharmaceutical and biotechnology realm. McKeon has a loyal following of academic institutions and research foundations and, for example, is currently involved in several European oppositions for Emory University.
King & Spalding LLP
Meeting the needs of a high-level client base for which patent and IP assets are pivotal, King & Spalding has a sizeable set of high-calibre specialists who devote the necessary resources to securing optimum results. A number of these are based in Georgia, including Rebecca Kaufman, Robert Neufeld and Scott Petty, who are stars of the counselling practice; and Holmes Hawkins III, one of the ensemble’s most formidable trial lawyers. Kaufman is well known for her representation of The Coca-Cola Company, on whose behalf she leads a team of experienced patent attorneys and agents undertaking domestic and international prosecution, adversarial proceedings, opinion work and strategic counselling. Neufeld fulfils a similar function for Chevron; as does Petty for the Federal Reserve Bank of Atlanta and Delta Airlines. All three work wonders not just in protecting their clients, but also in advancing their commercial cause. Recent highlights for Hawkins include a Federal Circuit win for the Federal Reserve Banks affirming a PTAB ruling that Bozeman Financial’s patents which were the subject of the dispute were ineligible; in a precedential opinion, the Federal Circuit held that the Federal Reserve Banks are ‘persons’ authorised to petition the PTAB for review of covered business method patents and are therefore, for the purposes of the America Invents Act, separate from the US government, which the Supreme Court has previously ruled is not a person so authorised.
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United States: Georgia Jerry Liu Hill, Kertscher & Wharton, LLP
Individuals: prosecution Christopher M Arena Baker & Hostetler LLP
Scott D Marty Ballard Spahr LLP
Dane Baltich Alston & Bird LLP R Bruce Bower Lee & Hayes, PC
Tina McKeon Kilpatrick Townsend & Stockton LLP See p1428
Charley Brown Ballard Spahr LLP
Robert Neufeld King & Spalding LLP
Jason P Cooper Alston & Bird LLP
Patrea Pabst Pabst Patent Group LLP
Griff Griffin Eversheds Sutherland (US) LLP
W Scott Petty King & Spalding LLP
Miles Hall Meunier Carlin & Curfman
Dean W Russell Kilpatrick Townsend & Stockton LLP
Tracy Hitt Fish & Richardson
Brian D Shortell Ballard Spahr LLP
Robert Hodges Pabst Patent Group LLP
Scott Sudderth Womble Bond Dickinson (US) LLP
Scott A Horstemeyer Thomas Horstemeyer LLP
David S Teske Alston & Bird LLP
Mitchell A Katz Ballard Spahr LLP
Renae Wainwright Kilpatrick Townsend & Stockton LLP
Rebecca Kaufman King & Spalding LLP
Tim Tingkang Xia Locke Lord LLP
Robert King Greenberg Traurig LLP
Jeffrey R Kuester Taylor English Duma LLP Chris Lightner Alston & Bird LLP
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Brian Meadows Ballard Spahr LLP Andrew Meunier Meunier Carlin & Curfman
Lisa Collins Baker & Hostetler LLP
Sherry M Knowles Knowles IP Strategies LLC
See p1432
Lee & Hayes, PC See p1431
Lee & Hayes’s intuitive understanding of the business of intellectual property is its USP: it was established with the goal of protecting and leveraging IP rights as commercial assets, and has been tremendously successful in realising monetary gains for companies operating at the cutting edge of technological innovation. Bruce Bower’s mastery in this regard stems from the dexterity with which he utilises prosecution, transactional and litigation methods to realise clients’ objectives; while Bill Dyer’s
IAM Patent 1000 1425
United States: Georgia derives from his litigation and licensing skill and inhouse insight. See p1700 for firm profile
McDermott Will & Emery
McDermott Will & Emery established its 13th US office when it opened its doors in Atlanta in May 2020. Among those kick-starting operations was Jeffrey Toney, who arrived with two other IP-focused professionals from Kasowitz. Toney is blending in well at his new firm, given his lengthy track record in patent litigation; he also brings outstanding international arbitration expertise to the table. He serves as lead defence counsel to Mallinckrodt Pharmaceuticals. In September 2020, McDermott made another strong play in recruiting Shane Nichols from Alston & Bird. Nichols is another seasoned lead trial counsel with multi-industry exposure. He is representing The CocaCola Company in a patent infringement suit against Rothschild Connected Devices Innovations, which is seeking $24 million in damages and attorneys’ fees in a case implicating Coca-Cola’s Freestyle touchscreen dispenser.
Meunier Carlin & Curfman
The team at Meunier Carlin brings refined technical nous and worldly wisdom to the practice of patent law: its lawyers and agents are highly trained in diverse scientific and engineering fields, and many bring valuable extra dimensions to the mix, having worked in academic environments and in legal and business positions in-house. Patent litigation is a notable forte for the group, which counts John Harbin, Anthony Askew and Stephen Schaetzel among its leading advocates. Harbin and Askew stand out for the depth of their trial experience, which they have accumulated over the course of 80-plus years between them. Schaetzel argues persuasively and presents resonantly, too, but comes with the bonus of portfolio management expertise. For the best in prosecution and counselling, PhDs Miles Hall and Chris Curfman and founding partner Andrew Meunier are the names to know. All three exhibit an exceptional command of the chemical arts, life sciences and medical technology. Hall is prized for his pitch-perfect representation of emerging companies, many of which he has guided to major exit events; Curfman has original ideas on patent matters that go down well among pioneering companies; and Meunier is skilled in postgrant proceedings.
Pabst Patent Group LLP
Recommended in the IAM Patent 1000 for the first time this year, Pabst Patent Group is a preparation and
1426 IAM Patent 1000
prosecution boutique that, though compact in size, has an international reputation. According to sources, it “thoroughly understands the needs of start-ups, universities and research institutions” as they innovate in the chemical, pharmaceutical and biotechnology fields. First among equals is Patrea Pabst, a percipient strategy and business counsellor and US and international post-grant proceedings ace. Joining her in the listings this year, biochemistry PhD Robert Hodges is a go-to “when you have a tough problem you just can’t figure out”. Communicating on a one-to-one level with scientists, he shines on the technical aspects of his craft, but is a big-picture thinker who prosecutes patents that can withstand litigation challenges.
Thomas Horstemeyer LLP
An Atlanta outfit rich in technical know-how, Thomas Horstemeyer is proficient in all areas of patent practice, but is especially celebrated for its rights procurement and portfolio management prowess. “Uniquely strong at patent prosecution in the electrical engineering space”, founding partner Scott Horstemeyer is an “exceptionally gifted attorney with a creative mind”. He’s a leading figure on a 20-plus team of partners, all of whom are dedicated to excellence in intellectual property.
Womble Bond Dickinson (US) LLP
Womble Bond Dickinson’s Atlanta team is trusted by global technology innovators, major energy providers, firearms companies and others to supervise patent matters of critical importance. Clients know they are in safe hands with seasoned lawyers such as James Vaughan, Scott Sudderth and William Ragland Jr to turn to. Vaughan chairs the IP department and distinguishes himself as a strategist with profound IP insight informed by decades of high-level patent litigation experience. He directs Womble Bond Dickinson’s handling of all patent prosecution, portfolio management and litigation for Graphic Packaging International, a leading designer and manufacturer of packaging for commercial products; as part of this, he designed and implemented a unique internet-based patent portfolio management tool. Renaissance man Sudderth takes care of Remington Arms Company’s total patent, trademark and other needs, showcasing his sophistication as an IP value creator. Ragland is the top trial lawyer on the roster and, like his colleagues, draws on decades in the game to provide percipient counsel and thorough, well-calibrated representation. He’s a superb relationship partner who coordinates well with other practice groups and gets diverse teams of lawyers all pulling in the same direction.
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United States: Georgia Other recommended experts
Griff Griffin has a talent for whipping patent portfolios into optimal shape and gives perceptive advice on how to develop and enhance global IP platforms. Eversheds Sutherland is his base of operations. Miller & Martin gained a valuable IP asset in April 2020 in the form of Stephen Kabakoff; the former examiner and Finnegan lawyer is well rounded in the practice, having engaged in highlevel prosecution, litigation and licensing during the course of his career. He sees the whole playing field for his high-technology, mechanical and materials clients. Flying the flag of Greenberg Traurig in Georgia, Robert King is an astute patent portfolio manager with a focus on the electrical arts. Having also represented parties in litigation, he takes a forward-thinking approach to procure futureproofed patents. Sherry Knowles of Knowles Intellectual Property Strategies displays total commitment to her biopharmaceutical followers, which she serves as a
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counsellor and transactional lawyer. Reflecting her sensitivity to developments in the law and her instinct for the direction in which it is heading, her advice is like gold dust. Jeffrey Kuester heads the patent practice at Taylor English Duma. He has prosecuted patents for more than three decades as part of a varied contentious and non-contentious practice and is a high-impact lawyer whatever comes up. Katrina Quicker takes advantage of comprehensive patent expertise and guides rights holders on global prosecution, patent commercialisation initiatives, post-grant proceedings and litigation. The former BakerHostetler attorney founded Quicker Law in February 2021. Locke Lord’s Tim Tingkang Xia has secured more than 4,000 US patents for his clients and also has a flair for the fine print of international corporate and IP transactions. Vanderbilt University, Northwestern University and AU Optronics, Tencent Technology and MediaTek are among his prominent patrons.
IAM Patent 1000 1427
Bower, R Bruce
Partner – Lee & Hayes, PC bruce.bower@leehayes.com | www.leehayes.com
R Bruce Bower helps companies with complex issues in all areas relating to patents, including litigation, strategic counselling, prosecution and licensing. He has served as lead counsel in litigation in federal district courts and the US Court of Appeals for the Federal Circuit, negotiated licence agreements and worked on investigations in the International Trade Commission. Mr Bower regularly advises clients on infringement risks during the design process and on potential enforcement actions against competitors. Clients have successfully relied on his opinions in defending against wilfulness charges during litigation. He also has led patent due diligence investigations in the purchase and sale of businesses. Mr Bower’s diverse practice includes extensive activities before the US Patent and Trademark Office. He helps companies expand their patent portfolios through prosecution of patent applications in various technologies. He has successfully handled patent re-examinations during litigation, conducted interferences and argued patentability issues before the Patent Trial and Appeal Board and the Federal Circuit. Mr Bower began his career as a design engineer with Westinghouse Electric Corporation working in commercial nuclear power, power distribution and control, and defence electronics, where he was awarded US and foreign patents as an inventor. He is nationally recognised by Chambers USA, IAM and other organisations as a leader in IP law.
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Lee & Hayes, PC 75 14th Street Suite 2500 Atlanta GA 30309 United States T +1 404 736 1924 See firm profile p1700
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Dyer, Bill
Partner – Lee & Hayes, PC bill.dyer@leehayes.com | www.leehayes.com
Bill Dyer has more than 20 years of IP experience, including extensive experience as lead counsel in patent, trademark and trade secret cases in US district courts and before the International Trade Commission. Beyond his litigation expertise, Mr Dyer leads large-scale IP due diligence studies, clearance studies and freedom-to-operate studies, and has negotiated the sale and licensing of significant IP assets. Widely respected by bench and bar, he has accepted multiple appointments as special master in federal courts for issues including patent claim construction and discovery disputes. And as a former in-house IP counsel for a Fortune 100 company, Mr Dyer brings keen, business-oriented insight into strategic IP risk assessment, risk avoidance, growth and monetisation. Mr Dyer is nationally recognised by Chambers and Managing Intellectual Property as a leader in the IP field. Outside the office, he teaches advanced trial advocacy skills as a faculty member of the National Trial Advocacy College at the University of Virginia School of Law. He is also a decorated combat veteran, and currently serves as a brigadier general in the US Army Reserve.
Lee & Hayes, PC 75 14th Street Suite 2500 Atlanta GA 30309 United States T +1 404 736 1857 See firm profile p1700
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IAM Patent 1000 1429
Hill, Steven G
Partner – Hill, Kertscher & Wharton, LLP sgh@hkw-law.com | www.hkw-law.com
In 2018 IAM described Steven G Hill as “an accomplished trial lawyer with a proven record of success in multimillion-dollar brawls… he knows how to defend companies’ intellectual property from every conceivable angle”. There are good reasons for this statement. Since his career began in 1994, Mr Hill has served as lead counsel in over 250 cases in courts throughout the United States, including over 125 patent infringement cases. One of Mr Hill’s earliest patent cases as lead counsel went to trial in the Eastern District of Virginia, often called the ‘rocket docket’ for its speed to trial. There, Mr Hill’s client recovered over £1 million against a Fortune 500 company. His successes include other multimillion-dollar recoveries for IP owners, as well as defence victories for clients accused of infringement. Recently, after successfully defending three companies against over 20 patents, Mr Hill’s team persuaded the court to award his clients their attorney’s fees. Mr Hill’s past experiences also include defending five companies in a multidistrict patent case where 261 parties were accused of infringement. Additionally, Mr Hill has extensive post-grant patent review trial experience before the US Patent Trial and Appeals Board, representing both patent owners and parties accused of infringement. Mr Hill’s successes result from a combination of excellent training in competitive public speaking, legal writing, a hands-on approach to his cases and applying the lessons he has learned in the course of the many patent cases in which he has participated as lead counsel. Because Mr Hill’s practice is divided evenly between representation of patent owners and defendants accused of infringement, he is able to plot strategy and anticipate the opposition with a level of precision that may elude less-experienced counsel. In short, his exceptional training as a legal writer and a public speaker and his record of past experience have equipped him to handle IP cases with a unique level of sophistication.
1430 IAM Patent 1000
Hill, Kertscher & Wharton, LLP One Overton Park 3625 Cumberland Boulevard Suite 1050 Atlanta GA 30339 United States T +1 678 384 7450 F +1 770 953 1358 See firm profile p1696 Professional associations • State Bar of Georgia, IP and Trial Sections Sample client list • American Megatrends • Sinch • Tricentis
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Knowles, Sherry M
Principal – Knowles IP Strategies LLC sknowles@kipsllc.com | www.kipsllc.com
Sherry M Knowles is the principal of Knowles Intellectual Property Strategies (Atlanta, Georgia), providing global guidance on complex IP matters, litigation, licensing and prosecution strategy, policy and investor support. Ms Knowles has over 35 years’ experience in global corporate and private practice. From 2006 to 2010 Ms Knowles was senior vice president and chief patent counsel at GlaxoSmithKline (GSK), where she was worldwide head of patents for litigation and transactional matters, managing more than 200 people in 12 offices. In 2008 Managing Intellectual Property named Ms Knowles among the top 10 most influential people in intellectual property, referring to her as a “patent owner’s advocate”. In 2010 the New Jersey IP Lawyers Association awarded GSK (with Ms Knowles as representative) the Jefferson Medal for exceptional contribution to intellectual property. In 2010 Managing Intellectual Property named the GSK global patent team the “In-House IP Team of the Year 2009” for its constructive approach to intellectual property in the developing world, engagement with public policy in Europe and successful resolution of the USPTO rules matter in the United States. In November 2011 IAM listed Ms Knowles among the top 50 key individuals, companies and institutions to have shaped the IP marketplace in the previous eight years. Ms Knowles is listed in the IAM Strategy 250 (2011), the IAM Strategy 300 (2012-2020), Managing Intellectual Property’s Top 250 Women in IP (2014, 2016-2020), IP Stars (2016-2020) and the IAM Patent 1000 – the World’s Leading Patent Professionals (2015-2020). Ms Knowles testified before the US Senate Judiciary Committee on IP in 2019 on the state of patent eligibility in the United States. She is a frequent speaker and author on US and global patent policies. She is also the founder of The Kectil Program, which has mentored more than 2,000 young people in 72 developing countries on leadership, ethics, innovation and entrepreneurship (www.kectil.com).
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Knowles IP Strategies LLC 400 Perimeter Terrace North East Suite 200 Atlanta GA 30346 United States T +1 678 694 1390 F +1 678 691 7357 Professional associations • AIPLA • FCBA • IPO
IAM Patent 1000 1431
Liu, Jerry
Partner – Hill, Kertscher & Wharton, LLP jl@hkw-law.com | www.hkw-law.com
Jerry Liu is an award-winning IP attorney with more than two decades of experience as both in-house and outside counsel for entities of all sizes. He currently represents clients in complex patent prosecution and procurement matters, as well as high-stakes litigation and litigation management strategies, across a broad spectrum of industries – including communications, privacy and cybersecurity technology, software, electric power delivery and smart grid solutions, biomedical and patient safety engineering, and semi-conductor assembly. Prior to joining Hill, Kertscher & Wharton LLP, Mr Liu was a partner at a large law firm where he prosecuted patents for Fortune 500 companies. He also served as a director of patent development for AT&T, where he managed and developed 1,000+ patent assets for the company in multiple technology areas. In addition to his extensive work as an attorney, Mr Liu has been named as an inventor on over 20 patents. Mr Liu earned his juris doctorate from the Emory University School of Law, as well as his master and bachelor of science degrees in electrical engineering from the prestigious Georgia Institute of Technology. Mr Liu has been recognised for excellence in the practice of law by several organisations and publications such as Intellectual Asset Management and Georgia Trend Magazine. He is also a highly soughtafter speaker, having presented at national and regional events on topics such as patent monetarisation, engineering and international business transactions. Additionally, Mr Liu was an adjunct professor for 17 years at the Georgia Institute of Technology where he taught and mentored students studying technology law, policy and management. Mr Liu lives in Atlanta, Georgia with his family and is bilingual in conversational Mandarin Chinese.
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Hill, Kertscher & Wharton, LLP One Overton Park 3625 Cumberland Boulevard Suite 1050 Atlanta GA 30339 United States T +1 770 953 0995 F +1 770 953 1358 See firm profile p1696
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North, John L Partner – Hill, Kertscher & Wharton, LLP jln@hkw-law.com | www.hkw-law.com
For more than 30 years, attorney John L North has litigated complex IP matters involving patents, trademarks, copyright, trade secrets and unfair competition. He also serves as trusted counsel to clients in patent licensing, patent portfolio strategy, pre-litigation counselling and inter partes review matters. While his litigation work focuses largely on cases based in the United States, he has been involved in sophisticated matters for clients located across the world, including in Australia, Belgium, Canada, England, Finland, Israel, Italy, Germany and Taiwan. In total, he has served as lead counsel in over 100 IP disputes, and has been appointed Special Master by multiple district courts in US patent cases. Clients and peers have recognised Mr North for his knowledge, skill and client-focused approach to the practice of law. He has been named to the IAM Patent 1000 – The World’s Leading Patent Practitioners since 2012 and holds an AV Rating from Martindale-Hubbell. Mr North has also been selected to the list of Best Lawyers in America for more than a decade and is a Top 100 attorney in Thomson Reuters’ Georgia Super Lawyers annual publication. The IAM Patent 1000 2019 edition noted that “North has been called upon to represent clients across the globe in sophisticated litigation over his… career and is known for producing positive outcomes in the most challenging of cases”. Mr North’s clients run the gamut from billion-dollar revenue corporations to small and mid-size businesses facing legal issues equally as important to their future. He has considerable experience working both the defence and plaintiff sides of cases, and offers traditional hourly billing as well as alternative fee arrangements. Mr North has handled a broad range of technologies, including artificial intelligence, smart phone security, computer software and hardware, the Internet, telecommunications, chemicals, minerals, textiles, pharmaceuticals, healthcare information systems, electronic coupons, program guides, and various consumer and construction products. Prior to joining Hill, Kertscher & Wharton, Mr North co-founded and chaired the IP group at a large international law firm.
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Hill, Kertscher & Wharton, LLP One Overton Park 3625 Cumberland Boulevard Suite 1050 Atlanta GA 30339 United States T +1 678 384 7458 F +1 770 953 1358 See firm profile p1696
IAM Patent 1000 1433
United States: Illinois
Arnold & Porter Kaye Scholer LLP
Arnold & Porter has been one of the highest achievers in US patent litigation in recent years: its seasoned lead counsel put in textbook performances in impactful cases to get great outcomes for clients. Looking to continue this form, it added a hugely capable strike force in Chicago in August 2020 by recruiting Christopher Renk and Michael Harris from Banner Witcoff. Adept at handling all types of IP cases in all forums, they act for discerning players such as Nike, which they have successfully represented in numerous suits – including a recent Federal Circuit affirmance of a favourable PTAB decision in a highprofile action filed by Adidas in a bid to invalidate patents directed to Nike’s famous FlyKnit technology.
Baker & Hostetler LLP
Accomplished patent litigation outfit BakerHostetler is a popular pick among in-house counsel when infringement cases threaten the bottom line. The references for locally based trial lawyers John Letchinger and Leif Sigmond are glowing: “John has an extraordinary mastery of the law, takes ownership of things and is timely, responsive, communicative, motivated, determined and respectful.” He has lately been kept busy on several patent licensing disputes. “Leif is a superb leader, excellent strategist and terrific client service guy. He is especially good at assessing people’s needs and helping them develop solutions to their problems.” He is currently acting for plaintiff Trading Technologies in district court litigation relating to patents covering specialised graphical user interface tools for electronic trading.
Banner Witcoff
Banner Witcoff has numerous USPs, including a rich history – 2021 is its 101st year; an exceptional hit rate in registering patents; market-leading designs expertise; and razor-sharp litigation and post-grant abilities. As a result, it can fulfil any patent need for any innovative company. Working across the contentious/non-contentious divide, the contingent ably serves as a one-stop shop in its hometown of Chicago. The versatile Binal Patel and Joseph Berghammer feature in both the prosecution and litigation tables, providing forward-thinking, risk-smart counsel on rights procurement and management alongside technically astute representation in disputes. Patel’s specialist industries are financial services, insurance, automotive and heavy equipment, with prestigious clients including Bank of America Corp. Berghammer
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plays a strong hand in the chemical, mechanical and electrical areas and is assisting YETI Coolers with a broad spread of patent and non-patent IP matters. The most experienced first-chair litigator on deck is Timothy Meece, a perspicacious strategist and nimble advocate. He takes the lead in defending the many patents of Lexmark International and is a vital cog in a large team of lawyers acting for Comcast.
Bartlit Beck Herman Palenchar & Scott
Acclaimed trial outfit Bartlit Beck is a repository of trust for the most commercially consequential and complex lawsuits. Perfectly capable of taking on the toughest patent disputes itself, but always happy to collaborate with other counsel as the occasion demands, the firm has an intense results focus that leads to high-quality, efficient representation. All the leading trial lawyers here challenge themselves with a diverse range of cases; but those with a strong concentration of patent and IP suits include Steven Derringer, Chris Lind and Scott McBride. Recent high-profile victories include a $137 million verdict for Meso Scale Diagnostics against Roche Diagnostics, masterminded by Derringer together with John Hughes.
Brinks Gilson & Lione
In patent litigation, Brinks has a lot of horsepower under the hood, which it harnesses to drive satisfying wins in headline-grabbing cases. Anchors on the life sciences side include Dominic Zanfardino and Laura Lydigsen – the former especially noted for his finely honed trial skills and the latter for her appellate expertise. Lydigsen partners dynamically with highly experienced former in-house counsel Kent Walker and Mark Remus on behalf of Amneal Pharmaceuticals and others; Lydigsen and Remus also formed a pairing that was instrumental in seeing Brinks named to Novartis’s Preferred Firm Programme in February 2020. Remus leans heavily into the pharmaceutical and biotechnology practice, but also litigates with dexterity in other areas such as electronics and heavy equipment. For high-technology cases, James Sobieraj is the pick of the bunch. Competitive and tenacious, he puts his shoulder to the wheel for clients and has a pristine record to show for his efforts. Of course, Brinks is celebrated for its all-round patent capabilities and is enthusiastically endorsed for prosecution; using state-of-the-art proprietary software tools, it procures patents and manages large portfolios with great efficiency. At the forefront
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United States: Illinois McDonnell Boehnen Hulbert & Berghoff LLP
Firms: litigation Kirkland & Ellis LLP
Polsinelli PC
Sidley Austin LLP Winston & Strawn LLP
See p1708
See p1744
Bartlit Beck Herman Palenchar & Scott Brinks Gilson & Lione DLA Piper Green Griffith & Borg-Breen LLP Jenner & Block LLP Latham & Watkins LLP McAndrews, Held & Malloy Ltd Morgan, Lewis & Bockius LLP
Schiff Hardin LLP Taft Stettinius & Hollister LLP
Firms: prosecution Banner Witcoff Brinks Gilson & Lione Greenberg Traurig LLP K&L Gates LLP Leydig, Voit & Mayer, Ltd Marshall Gerstein & Borun LLP McAndrews, Held & Malloy Ltd
See p1704
Perkins Coie LLP
McDonnell Boehnen Hulbert & Berghoff LLP
See p1708
Quinn Emanuel Urquhart & Sullivan LLP
Nixon Peabody LLP
See p1716
Rakoczy Molino Mazzochi Siwik LLP
Perkins Coie LLP
Steptoe & Johnson LLP
Polsinelli PC
Paul Hastings LLP
Arnold & Porter Kaye Scholer LLP Baker & Hostetler LLP Banner Witcoff Greenberg Traurig LLP Haynes and Boone LLP Leydig, Voit & Mayer, Ltd Locke Lord LLP Marshall Gerstein & Borun LLP Mayer Brown McDermott Will & Emery
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of this practice are Joseph Hetz and Andrew Stover, who between them have prosecuted many thousands of patents in the United States and abroad. Electrical and computer innovation specialist Hetz is a “business-minded lawyer who keeps a strong focus on increasing value in a client’s portfolio”. This commerciality is a trait shared by Stover, whose remit encompasses mechanical and medical technologies.
DLA Piper
The trial nous of Chicago-based lawyers Matthew Satchwell and Paul Steadman plays a vital role in elevating DLA Piper’s national patent litigation practice. Both lawyers distinguish themselves in the ITC, where their collectedness, dedication and speed pay dividends; but are also highly adept in other forums, including district courts around the country, as well as the PTAB. Some of their best work has been
IAM Patent 1000 1435
United States: Illinois Firms: transactions Highly recommended Global IP Law Group LLC Kirkland & Ellis LLP Recommended Leydig, Voit & Mayer, Ltd Marshall Gerstein & Borun LLP McDonnell Boehnen Hulbert & Berghoff LLP
See p1708
Steger IP, LLC
See p1732
Luminaries Daniel A Boehnen McDonnell Boehnen Hulbert & Berghoff LLP
done in the automotive industry, though they are completely at ease with any type of mechanical or electrical technology.
Global IP Law Group LLC
When it comes to the monetisation of intellectual property, few firms in the world are as sophisticated as Global IP Law Group. It has added billions to clients’ pockets utilising the full breadth of its cultivated sales, enforcement, strategic counselling and valuation know-how. Ragnar Olson, Graham Gerst and David Berten form an elite line-up of professionals for those looking to extract maximum value from their intangible assets. Licensing ace Olson “knows everyone” and is “extremely thorough”. Gerst “delivers great economic results that surpass expectations” and is a “top-level litigator and negotiator with a uniquely deep knowledge of Section 101-related issues”. Berten, a former Kirkland & Ellis and Bartlit Beck lawyer, has sparkling credentials and leads the contentious practice; he has also orchestrated many eyewateringly large transactions.
Green Griffith & Borg-Breen LLP
With Jessica Tyrus Mackay making her debut in the rankings this year, Green, Griffith & Borg-Breen now has its full complement of leading individuals
1436 IAM Patent 1000
included in the IAM Patent 1000. The group’s patent litigation experience – and especially its trial seasoning – is impressive, as is its technical wherewithal: the combination has proved instrumental in numerous notable successes on behalf of top life sciences companies. The set also does much for clients away from the courtroom in counselling them at a strategic level on infringement and other matters, which makes for a well-rounded, reliable service. Coming back to Mackay, sources endorse her as a “thorough pharmaceutical patent litigator who leaves no stone unturned”. She has recently been engaged, alongside Caryn Borg-Breen, in Hatch-Waxman litigation on behalf of Horizon Medicines against Alkem Laboratories, protecting Horizon’s valuable Duexis patent portfolio. PhD chemist Borg-Breen “really gets the science and is incredibly skilled as a lawyer”; she “makes herself available and is easy and enjoyable to work with”. Robert Green and Christopher Griffith, meanwhile, have been serving as lead counsel in a case for Assertio and APR Applied Pharma Research. Green has spent decades handling pharmaceutical litigation, giving him a level of strategic wisdom and gravitas that carries clients across the finish line. Fellow veteran lawyer Griffith has a rare depth of life sciences industry knowledge which underpins his advocacy.
Greenberg Traurig LLP
Home to high-calibre prosecutors and litigators, and offering a comprehensive suite of services, Greenberg Traurig’s (GT) Chicago patent team is microcosmic of the firm-wide practice. Appreciated from both a local and national perspective, GT is never less than utterly impressive; the scientific breadth and erudition of its specialists and the depth of their district court, ITC and post-grant know-how are particular head turners. A stellar pairing for prosecution and strategic counselling is formed by Gary Jarosik and Keith Jarosik. They take a huge load off the shoulders of in-house counsel in procuring and managing patent assets domestically and internationally, as well as representing them in post-grant proceedings. They understand the specific needs of clients and devote all their energies towards meeting them with rare efficiency. An important contributor both on the prosecution front and in litigation, global patent litigation co-chair Richard Harris brings cohesion to the practice, making him a vital contact for companies seeking a consistent service across all their matters. His duality of purpose heightens his strategic sense. Cut from similar cloth, Herbert Finn has a level of trial experience that creates a high threat value, helping him to bring about the swift and early resolution of many cases.
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United States: Illinois Haynes and Boone LLP
Haynes and Boone has made some astute moves in the recruitment market in the past two years. In 2020, it added former USPTO director Joseph Matal to its bench in DC and brought former Kirkland & Ellis partner Eugene Goryunov on board to serve as a local post-grant proceedings leader for the Chicago office. These additions follow those of Ralph Gabric and Laura Beth Miller, who put Haynes and Boone on the Chicago patent litigation map in 2019; the firm is thus building a solid local practice that is adding a valuable extra dimension to its superb national offering. Gabric and Miller are seasoned lead counsel who can make a compelling case in any forum and any technological discipline.
Jenner & Block LLP
There’s no shortage of demand for Jenner & Block in the patent litigation arena: the firm is hailed for its ability to take challenging cases to trial and win, and admired for its record on behalf of industry leaders in the high-technology and life sciences realms. Providing robust leadership to the team is Reginald Hill, whose “common-sense yet sophisticated approach to litigation and licensing strategy” is much appreciated: “In significant litigation, Reggie and his team provide an excellent, professional and cost-effective service and, more importantly, drive fantastic outcomes.” In one recent example, he prevailed for Schneider Electric USA against Power Analytics Corporation in a dispute over power distribution technologies for data centres, which culminated in the denial of a cert petition by the Supreme Court following a summary judgment of patent invalidity under Section 101 granted to Schneider. Terence Truax recently represented the same client in an action spanning the ITC, the District of Massachusetts and the Western District of Texas involving patents directed towards smart thermostats and heating, ventilation and air conditioning systems. Truax served a five-year term as managing partner until the end of 2019 and is now back to full focus as a well-rounded commercial, patent and antitrust litigator. For life sciences patent litigation, the person to call is chemistry PhD Louis Fogel, who scored a vital result for Coherus BioSciences in having a biosimilar litigation filed by Amgen dismissed.
K&L Gates LLP
K&L Gates earns expanded coverage in the IAM Patent 1000 for 2021 through its addition to the Illinois prosecution rankings. There’s solid depth to the local team – headlined by IP group leader Robert Barrett and Thomas Basso, who debuts in the
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Individuals: prosecution Robert Barrett K&L Gates LLP Thomas Basso K&L Gates LLP Joseph J Berghammer Banner Witcoff Michael Borella McDonnell Boehnen Hulbert & Berghoff LLP Daniel J Burnham Nixon Peabody LLP
See p1451
Christopher V Carani McAndrews, Held & Malloy Ltd John Conklin Leydig, Voit & Mayer, Ltd Zareefa Burki Flener Flener IP & Business Law
See p1450
David B Fournier Perkins Coie LLP Michael P Furmanek Marshall Gerstein & Borun LLP Janet M Garetto Nixon Peabody LLP
See p1452
Troy Groetken McAndrews, Held & Malloy Ltd Herbert D Hart III McAndrews, Held & Malloy Ltd Joseph F Hetz Brinks Gilson & Lione Bradley J Hulbert McDonnell Boehnen Hulbert & Berghoff LLP Gary R Jarosik Greenberg Traurig LLP Keith R Jarosik Greenberg Traurig LLP
IAM Patent 1000 1437
United United States: States: Illinois Illinois John Kilyk Jr Leydig, Voit & Mayer, Ltd
Wil Rao McAndrews, Held & Malloy Ltd
Heather Kissling Marshall Gerstein & Borun LLP
Lily Rin-Laures RinLauresLLC
Jeremy Kriegel Marshall Gerstein & Borun LLP
David G Rosenbaum Rosenbaum IP
Deborah Laughton McAndrews, Held & Malloy Ltd
Randall G Rueth Marshall Gerstein & Borun LLP
Charles H Mottier Leydig, Voit & Mayer, Ltd
Ahsan A Shaikh McDermott Will & Emery
Michael Muczynski Marshall Gerstein & Borun LLP
Jeffrey S Sharp Marshall Gerstein & Borun LLP
Katherine L Neville Marshall Gerstein & Borun LLP
Andrew D Stover Brinks Gilson & Lione
Kevin E Noonan McDonnell Boehnen Hulbert & Berghoff LLP
Marcus Thymian GrowIP Law Group
Binal Patel Banner Witcoff
Donald Zuhn McDonnell Boehnen Hulbert & Berghoff LLP
individual listings – and a ton of great work being done for prestigious patrons. Barrett takes point in representing Nestlé on US patent matters and has done so for a decade, cultivating deep knowledge of the company which he translates into commercially tailored advice. Barrett’s exposure to wide-ranging strategic and transactional IP briefs has also served to enhance his business thinking. A big name in Japan, Basso is a fan favourite of the country’s technology and manufacturing companies, including Japan Display Inc and Murata Manufacturing; he’s a smooth communicator who adds further value through the training he hosts for them. Not limited to noncontentious assignments, the Chicago group is well equipped for litigation with James Shimota at bat. The “brilliant and creative attorney” is “as honest, hardworking and compassionate as they come” and “one of the top strategists in his profession”; he is also “an expert at marshalling the resources of his firm”.
Kirkland & Ellis LLP
Put simply, Kirkland & Ellis is one of the crème de la crème for hardcore patent litigation. Like firefighters on watch, its lawyers are always trial ready and bring an intensity to case preparation and development that serves them well both in the courtroom and
1438 IAM Patent 1000
in negotiations. The firm has a constellation of contentious stars across its California, DC, Chicago and New York offices, who collaborate effectively to give clients ultimate firepower. In Chicago, James Hurst is the name at the top of the fight card and virtually second to none in the country in terms of trial experience. He backs up his victories at the appellate level, too, recently capping a 2017 Delaware district court summary judgment win for Abbott in a suit brought by Enzo Life Sciences over DNA and RNA probe technologies used in medical testing with a Federal Circuit affirmance, which finalised the dispute following denial of a cert petition with the Supreme Court. Alongside him on this was DC appellate ace John O’Quinn and local colleague Amanda Hollis, who showcases impressive technical range, but acquits herself with distinction in pharmaceutical actions. Bryan Hales also relishes the cut and thrust of life sciences litigation. He recently acted for Eagle Pharmaceuticals, which sought to manufacture and market a competing drug to opposing party Eli Lilly’s Alimta chemotherapy treatment; he was brought in just a month before trial was due to commence, as testament to his life-saving capabilities. Russell Levine brings so much to Kirkland & Ellis, including trial and dispute resolution expertise, licensing
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United States: Illinois wizardry, all-round strategic wisdom and valuable leadership and mentoring. Not to be left out on the highlight reel, he achieved a big Federal Circuit win for Syngenta against agrochemical manufacturer Willowood in a multi-layered patent and copyright dispute. Notably, Levine prevailed on the copyright issue despite the US government filing a statement of interest in support of Willowood’s position; furthermore, an issue arising on the patent side of the case was one of first impression regarding the imposition of a single-entity requirement under 35 USC Section 271(g). Transactions are another forte for the firm, as illustrated by the sophisticated deal work of heavyweights Seth Traxler, Neil Hirshman and Jeffery Norman. Traxler plays a dual role as cohead of the technology and IP transactions group and leader of the cybersecurity and data privacy practice; Hirshman leverages his technical background and is hailed for his intellect, speed and efficiency; while Norman is a leading authority on software.
Latham & Watkins LLP
“One of the biggest of the big hitters in patent litigation”, Latham fields a deep national bench of trial lawyers who excel at designing and executing winning strategies in bet-the-company cases. Pharmaceutical patent litigation is a stronghold for the team in Chicago and the focus of Kenneth Schuler and Marc Zubick, though both have broad contentious horizons. David Callahan anchors the local practice outside the life sciences, including in the semiconductor and automotive industries. Like his colleagues, Callahan frequently features in the cases that matter most and is a business-minded advocate with many accolades to his name.
Leydig, Voit & Mayer, Ltd
Leydig, Voit & Mayer is a premier boutique in Chicago, but has national and international reach through additional bases in Alexandria, Boulder, San Francisco, Frankfurt and Shenzhen. It draws judiciously on these resources to support innovative companies globally, whatever they are seeking to achieve through the procurement, enforcement or commercial deployment of patents. Business awareness is a hallmark of the entire group, but especially of key individuals such as Charles Mottier, a shareholder in the firm for over 35 years and an anchor of the prosecution, counselling and litigation practices. His versatility is a common trait across the team: former electrical engineer John Conklin has a deft portfolio management and licensing touch, as well as abundant lead trial counsel experience; John Kilyk artfully spans the contentious/non-
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contentious divide, with a refined skillset that lends itself well to post-grant proceedings, in which he is a compelling and highly sought-after representative; Michael Hartmann makes hay from his global patent knowledge in litigation; and Bruce Gagala and John Augustyn have also seen and done it all in patent practice, but are in their element in high-stakes litigation. Innovative approaches to thorny problems are the result of their effective collaboration.
Locke Lord LLP
Home to more than 40 USPTO-registered attorneys, Locke Lord is a high achiever in prosecution and portfolio management. However, its recognition in the Illinois chapter – in which it makes its debut for 2021 – stems from its facility for life sciences patent litigation. Chicago lawyer Keith Parr has played a leading role in pharmaceutical cases for more than 30 years; his combination of scientific, regulatory and business knowledge and trial skill makes him a redoubtable opponent. Steven Trybus is another prominent member of the life sciences group and an essential contributor to its courtroom and post-grant success. He has recently been representing The Broad Institute in a patent interference regarding CRISPR-Cas9 technology.
Marshall Gerstein & Borun LLP
The IAM Patent 1000’s individual rankings show just how deep Marshall Gertein’s patent practice runs: with multiple practitioners listed on each of the prosecution, litigation and transactions tables, it has achieved a feat managed by only one other firm in Chicago. What’s also striking is the kaleidoscopic breadth of technologies covered by the group, which is steeped in just about all innovative disciplines. The life sciences are a bastion of strength, thanks to highly skilled prosecutors such as Katherine Neville, Heather Kissling, Michael Muczynski and Jeffrey Sharp; deal lawyers Pamela Cox and Julie Watson; and trial lawyers John Labbé, Mark Izraelewicz and Kevin Flowers. Together they make for a formidable team that can realise any goal for their pharmaceutical and biotechnology clients. In the mechanical and electrical areas, there’s an abundance of talent too: electronics and software ace Randall Rueth, mechanical pro and former industry engineer and in-house counsel Michael Furmanek and fellow mechanics maven Jeremy Kriegel distinguish themselves in the areas of prosecution, portfolio management and counselling; Robert Gerstein lights up the stage as a deal lawyer, opinion giver and strategist; and Benjamin Horton – who comes from an automotive and semiconductors background – brings the heat in litigation.
IAM Patent 1000 1439
United States: Illinois Mayer Brown
When it comes to patents, Mayer Brown is best known for its contentious prowess: its premier trial lawyers consistently put in resonant performances in district courts, the Federal Circuit, the ITC and the PTAB, exhibiting particular adeptness in multifaceted cases in which an understanding of the strategic interplay between different elements – trial and post-grant, for example – is key to success. One such lawyer is Chicago-based James Ferguson, who recently prevailed in a major patent dispute in Delaware on behalf of a global coalition of the 18 largest car manufacturers in Europe, Asia and the United States regarding ownership of a patented technology that measures blood alcohol level when a driver touches a car’s ignition button. Ferguson has led trials in many IP and non-IP cases, giving him a deep litigation playbook to draw from. Many of the firm’s patent lawyers have technical degrees and deploy their scientific erudition to support companies not just in litigation, but also in other ways. Vera Nackovic is a registered patent attorney who does an awesome job negotiating deals and developing global IP portfolios, as well as litigating, for life sciences companies. There’s a strong transactional focus to her present work, through which she has further refined her high-level industry and business understanding.
McAndrews, Held & Malloy Ltd
Marrying skill in litigation, prosecution, portfolio management and counselling, McAndrews, Held & Malloy can be relied on for the right steer on any patent matter and for cogent all-round strategic IP planning. The boutique has a flair for litigation and trial work, which is the metier of many leading individuals, including seasoned advocates Edward Mas, Thomas Wimbiscus, Robert Surrette, Sharon Hwang and David Headrick. Mas is distinguished by his energy, tenacity and Federal Circuit expertise – all of which make the difference in the toughest disputes. He has been representing Abbott in litigation against Fischell, with various filings and successes – including in an inter partes review – yielding a settlement. Wimbiscus’s caseload is also typically high value, which is testament to the trust placed in him; his PTAB abilities are extremely well regarded. President of the firm Surrette litigates with poise both across the IP spectrum and at all stages of a matter: in the preparation phases, in court and in post-trial settings. Executive committee member Hwang masters all elements of her cases to gain an advantage when it’s time to stand up and present. Headrick – who has billion-dollar disputes on his CV –
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is brilliant at marshalling sprawling suits: he recently brought five inter partes review petitions on behalf of RTI Surgical challenging more than 100 claims of LifeNet’s composite spinal bone graft and soft tissue graft patents on 32 grounds, and successfully staying a litigation filed by LifeNet just seven or so months earlier. Invaluable contributions to the contentious effort come from numerous others for whom the ‘all-rounder’ description fits neatly. Among these is Deborah Laughton, who earns her IAM Patent 1000 stripes for the first time this year: “She’s a key member of a client-friendly group of excellent prosecution professionals. She is smart from a tactical perspective and her work is of a high standard and cost effective.” Procuring, enforcing and defending valuable patent rights, Peter McAndrews is in the thick of all the action, but shines as a global portfolio manager for leading names in medical equipment, semiconductors and other areas. Multi-jurisdictional work is also meat and drink to Troy Groetken, who supports big-name life sciences clients wherever they need him and gets results that have a business-transformative effect. Wil Rao has an international reputation for quality, founded on his foresighted strategic advice flavoured by unique litigation and prosecution insights. Rao recently handled a complex cross-border litigation with related PTAB proceedings alongside Christopher Carani, the set’s celebrated designs doyen. Many of the lawyers here have played a hand in the firm’s post-grant success, and all of them benefit from the presence of Herbert Hart – an invaluable consultant with a profound practical and academic understanding of PTAB proceedings. See p1704 for firm profile
McDermott Will & Emery
McDermott’s US patent litigation team is in the vanguard of the action: in the past five years, it has handled some 210-plus district court cases, 100-plus PTAB proceedings and numerous ITC investigations. Its work often has a cross-border component, for which its international resources prove invaluable. Helping to sustain a pristine record of success out of all of this are Chicago-based litigators Michael Chu and Charles McMahon. Local IP litigation group leader Chu “handles troubling infringement lawsuits masterfully and is particularly adept at managing unpredictable and difficult opposing parties”. McMahon calls on his rich trial and licensing knowhow to achieve ideal outcomes in court cases and in settlement negotiations. McDermott also makes light work of prosecution and counselling assignments, many of which are fielded by global patent prosecution head Ahsan Shaikh, whose targeted
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United States: Illinois Marcelo Halpern Perkins Coie LLP
Individuals: transactions Highly recommended
H Michael Hartmann Leydig, Voit & Mayer, Ltd
David Berten Global IP Law Group LLC
Neil S Hirshman Kirkland & Ellis LLP
Pamela L Cox Marshall Gerstein & Borun LLP
Bradley J Hulbert McDonnell Boehnen Hulbert & Berghoff LLP
C Graham Gerst Global IP Law Group LLC
Ira Kalina Faegre Drinker Biddle & Reath LLP
Russell Levine Kirkland & Ellis LLP
Charles H Mottier Leydig, Voit & Mayer, Ltd
Ragnar Olson Global IP Law Group LLC Steven Steger Steger IP, LLC
See p1453
Vera Nackovic Mayer Brown
Recommended
Jeffery S Norman Kirkland & Ellis LLP
Thomas J Filarski Steptoe & Johnson LLP
Elizabeth Rudersdorf Steger IP, LLC
Lara Fitzsimmons Rakoczy Molino Mazzochi Siwik LLP
Seth Traxler Kirkland & Ellis LLP
Robert M Gerstein Marshall Gerstein & Borun LLP
Julie M Watson Marshall Gerstein & Borun LLP
Troy Groetken McAndrews, Held & Malloy Ltd
approach to IP value creation secures his reputation as a supremely efficient lawyer; the money spent on his fees is a wise investment, not a cost.
McDonnell Boehnen Hulbert & Berghoff LLP Many companies entrust their most important matters to McDonnell Boehnen Hulbert & Berghoff (MBHB), their confidence inspired by its imposing phalanx of eminent trial lawyers. Paul Berghoff, for example, has acted for leading pharmaceutical manufacturers in their competitor battles for many years, with an enviable hit rate at the district court and appellate level to show for it. The same is true of Daniel Boehnen in his focused domains of electrical, mechanical, software, communications, chemical and medical technologies. Both are wise
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See p1454
strategists and creative problem solvers who don’t back down when it’s necessary to draw lines in the sand. The firm is in pole position for post-grant action, too, with staunch leadership provided by Grantland Drutchas, whose tactical thinking is elevated by broad experience in litigation, licensing and counselling. Bradley Hulbert also effortlessly crosses over practice area divides; in terms of recent activities, the electrical group chair has developed a substantial portfolio for a multinational tool and diagnostics equipment producer while fending off patent assertion entities, and prosecuted extensively for a top software company. Software is the specialist subject of the commercially minded Michael Borella, whose former stint in corporate management saw him take charge of large groups of software engineers on multiple continents: “Mike engages in strategic patent prosecution with a view to increasing the value of clients’ portfolios, while minimising costs and ensuring no efforts are wasted. His ability to
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United States: Illinois Caryn C Borg-Breen Green Griffith & Borg-Breen LLP
Individuals: litigation Kenneth R Adamo Law Office of KRAdamo
See p1449
Richard Cederoth Sidley Austin LLP James F Hurst Kirkland & Ellis LLP Russell Levine Kirkland & Ellis LLP George C Lombardi Winston & Strawn LLP Bradford P Lyerla Tabet DiVito & Rothstein LLC David Nelson Quinn Emanuel Urquhart & Sullivan LLP William A Rakoczy Rakoczy Molino Mazzochi Siwik LLP Kenneth Schuler Latham & Watkins LLP Robert W Unikel Paul Hastings LLP Jason C White Morgan Lewis & Bockius LLP Michael J Abernathy Morgan Lewis & Bockius LLP John L Abramic Steptoe & Johnson LLP Imron T Aly Schiff Hardin LLP John M Augustyn Leydig, Voit & Mayer, Ltd Stephen Auten Taft Stettinius & Hollister LLP Paul H Berghoff McDonnell Boehnen Hulbert & Berghoff LLP
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Michael L Brody Winston & Strawn LLP David K Callahan Latham & Watkins LLP Christopher V Carani McAndrews, Held & Malloy Ltd Timothy J Carroll Dentons Steven Derringer Bartlit Beck Herman Palenchar & Scott David Donoghue Holland & Knight LLP Kelly Eberspecher Steptoe & Johnson LLP James R Ferguson Mayer Brown Thomas J Filarski Steptoe & Johnson LLP Kevin M Flowers Marshall Gerstein & Borun LLP Ralph J Gabric Haynes and Boone LLP Jeffrey R Gargano Morgan Lewis & Bockius LLP Robert F Green Green Griffith & Borg-Breen LLP Bryan S Hales Kirkland & Ellis LLP Richard Harris Greenberg Traurig LLP H Michael Hartmann Leydig, Voit & Mayer, Ltd Reginald J Hill Jenner & Block LLP
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United States: Illinois Gary E Hood Polsinelli PC
Paul R Steadman DLA Piper
John Hughes Bartlit Beck Herman Palenchar & Scott
Constantine L Trela Jr Sidley Austin LLP
John Labbé Marshall Gerstein & Borun LLP
Terrence J Truax Jenner & Block LLP
Chris Lind Bartlit Beck Herman Palenchar & Scott
Steven Trybus Locke Lord LLP
Edward A Mas II McAndrews, Held & Malloy Ltd
Shashank Upadhye Upadhye Tang
Kurt A Mathas Winston & Strawn LLP
Dominic P Zanfardino Brinks Gilson & Lione
Timothy C Meece Banner Witcoff
Joseph J Berghammer Banner Witcoff
Laura Beth Miller Haynes and Boone LLP
Daniel J Burnham Nixon Peabody LLP
Paul Molino Rakoczy Molino Mazzochi Siwik LLP
Michael P Chu McDermott Will & Emery
Jay Nuttall Steptoe & Johnson LLP
John Conklin Leydig, Voit & Mayer, Ltd
Michael K Nutter Winston & Strawn LLP
James B Coughlan Perkins Coie LLP
Keith Parr Locke Lord LLP
Grantland Drutchas McDonnell Boehnen Hulbert & Berghoff LLP
Sailesh K Patel Schiff Hardin LLP
Herbert H Finn Greenberg Traurig LLP
Thomas D Rein Sidley Austin LLP
Louis Fogel Jenner & Block LLP
Richard T Ruzich Taft Stettinius & Hollister LLP
Bruce M Gagala Leydig, Voit & Mayer, Ltd
Matthew Satchwell DLA Piper
Jeanne M Gills Foley & Lardner LLP
Douglas L Sawyer Perkins Coie LLP
Christopher Griffith Green Griffith & Borg-Breen LLP
James R Sobieraj Brinks Gilson & Lione
Michael J Harris Arnold & Porter Kaye Scholer LLP
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See p1451
IAM Patent 1000 1443
United States: Illinois David Headrick McAndrews, Held & Malloy Ltd
Charles M McMahon McDermott Will & Emery
Amanda Hollis Kirkland & Ellis LLP
Sanjay K Murthy Morgan Lewis & Bockius LLP
Benjamin T Horton Marshall Gerstein & Borun LLP
Kevin M Nelson Schiff Hardin LLP
Sara Tonnies Horton Willkie Farr & Gallagher
Binal Patel Banner Witcoff
Eric Hunt Rakoczy Molino Mazzochi Siwik LLP
Ivan M Poullaos Winston & Strawn LLP
Sharon Hwang McAndrews, Held & Malloy Ltd
Mark H Remus Brinks Gilson & Lione
Mark H Izraelewicz Marshall Gerstein & Borun LLP
Christopher J Renk Arnold & Porter Kaye Scholer LLP
John Kilyk Jr Leydig, Voit & Mayer, Ltd
Maureen Rurka Winston & Strawn LLP
Stephanie Koh Sidley Austin LLP
James Shimota K&L Gates LLP
John S Letchinger Baker & Hostetler LLP
Leif R Sigmond Jr Baker & Hostetler LLP
Laura A Lydigsen Brinks Gilson & Lione
Emer Simic Green Griffith & Borg-Breen LLP
Jessica Tyrus Mackay Green Griffith & Borg-Breen LLP
William C Spence SpencePC
Adam Marchuk Perkins Coie LLP
Robert A Surrette McAndrews, Held & Malloy Ltd
Deanne M Mazzochi Rakoczy Molino Mazzochi Siwik LLP
Kent M Walker Brinks Gilson & Lione
Peter J McAndrews McAndrews, Held & Malloy Ltd
Thomas J Wimbiscus McAndrews, Held & Malloy Ltd
J Scott McBride Bartlit Beck Herman Palenchar & Scott
Marc Zubick Latham & Watkins LLP
navigate complex issues around Section 101 and give pragmatic, useful advice is highly appreciated – he is a known and published expert in this area. Another interesting aspect of his background is that he is also an inventor.” Kevin Noonan and Donald Zuhn are
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the widely acclaimed leaders of MBHB’s incredibly well-developed life sciences patent procurement, protection and management practice. See p1708 for firm profile
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United States:Country Illinois Morgan Lewis & Bockius LLP
There’s a high concentration of litigation and trial know-how in Morgan Lewis’s Chicago office, which is home to Michael Abernathy and fellow veteran first-chair trial lawyers Sanjay Murthy, Jason White and Jeffrey Gargano. Individually and collectively, they make a major contribution to a potent national patent litigation practice group that lights up district courts around the country, as well as the ITC and PTAB. Abernathy, White and Murthy showcased what they can accomplish as a unit by obtaining a complete victory for Praxair before the Federal Circuit in an ANDA case filed by Mallinckrodt Hospital Products IP, INO Therapeutics and Ikaria involving INOmax DSIR, Mallinckrodt’s second-best selling drug; the Federal Circuit upheld a District of Delaware decision invalidating multiple asserted patents under Section 101 and finding the remaining patents non-infringed by Praxair’s ANDA application for its nitric oxide delivery system. Impact cases such as this are in the safest of hands with them. IP disputes practice coleader Abernathy “demonstrates practical leadership, gives crisp advice that is always well received and is brilliant at presenting”. Gargano also garners applause as a “great strategic thinker”, which he leverages in counselling his clients – including numerous Chinese companies looking to gain a foothold in the United States – on broad IP maters and as a predominantly pharmaceutical-focused litigator.
Nixon Peabody LLP
“Nixon Peabody is great to work with: it has a number of exceptional advocates who are well supported by great associates. All the lawyers there are diligent and focused on putting their clients in the most advantageous position.” Flying the firm’s flag high in Chicago is Daniel Burnham, a “proactive and responsive partner who handles urgent litigations with skill, while giving smart recommendations on business strategy”. A truly well-rounded lawyer, he is also “integral to company success in prosecution and post-grant proceedings”. “Dan has a fabulous legal mind and is cost conscious and always willing to be flexible around fee arrangements. His skills are matched by his genuine personality, sense of humour and customer-focused approach.” Janet Garetto also impresses for her versatility: she handles patent and brand matters with aplomb, making her the ideal fit for those with diverse portfolios seeking a consistent approach to their intellectual property. Her advice is directed towards business as much as legal matters – and all the more valuable for it. See p1716 for firm profile
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Paul Hastings LLP
Paul Hastings is a prime destination for globally impactful IP disputes: with litigators standing by in the United States, Europe and Asia, it is ideally positioned in terms of resources; while its maturity of approach chimes with companies faced with the sternest tests. Earning its first berth in the IAM Patent 1000 Illinois rankings for 2021, the firm has a hero in Chicago in Robert Unikel, the architect and implementer of prize-winning strategies on behalf of many industry titans, who ascends to the gold tier this year. Recent work on behalf of Google and Motorola Mobility against ContentGuard attests to his remarkable abilities as a litigator. In 2015 he won an Eastern District of Texas jury verdict – affirmed on appeal in 2017 – of non-infringement by Google and Samsung on five patents relating to digital rights management technology, for which ContentGuard was seeking damages of more than $500 million; he then invalidated the patent claims that ContentGuard had asserted against Google and its Android partners in covered business method (CBM) review proceedings, in the course of which he won two further appeals – one against the institution of the CBM and another, in May 2020, against the PTAB’s decision in it.
Perkins Coie LLP
Perkins Coie may not be a headline act in Chicago in the same way as in Seattle, for example, but it nonetheless has a solid foothold in the city, with a patent team that exemplifies the best of what the wider organisation offers more broadly. Covering all bases, the local office is home to firmwide prosecution and counselling practice chair David Fournier; seasoned trial lawyers Douglas Sawyer and Adam Marchuk; ITC ace James Coughlan; and transactions whizz Marcelo Halpern. Fournier hails from a clinical research background, giving him an insider’s perspective on the drug development process; his life sciences industry knowledge translates into highly practical, strategic advice on global portfolio management. Sawyer attracts warm praise from high-level private practitioners and the C-suite: alike “Doug is a go-to for running and winning complicated patent assertion campaigns and litigations. He has a great sense of humour and is brilliant to work with. He understands the business value of his actions and puts his focus on where he can add value.” Both Sawyer and Marchuk handle a diverse range of cases – including patent, trade secret, false advertising and unfair competition actions – through which they have developed refined advocacy skills. Coughlan co-chairs the ITC practice
IAM Patent 1000 1445
United States: Illinois and splits his time between Chicago and DC; linking up with colleagues in California and Texas, he recently won an initial determination of no violation of Section 337 in a three-patent infringement investigation relating to garage door and gate operator technology – a matter which put everything on the line for client Nortek Security & Control. With an affinity for all kinds of emerging technologies, especially blockchain, Halpern is a smooth broker of IP and technology-driven deals for his diverse clientele, including a top software company.
Polsinelli PC
No longer lacking in name recognition, Polsinelli is a widely admired firm with real clout in all facets of patent practice. Much of the credit for its expansion and market ascent in recent years is owed to individuals such as Gary Hood, who joined as chair of IP litigation a decade ago and has served on the board since December 2019. Hood inspires and attracts clients and talented laterals through his sterling performances in pharmaceutical litigation, as both a strategic case developer and a courtroom advocate. He’s a true team player who makes optimum use of Polsinelli’s resources and is always looking to support those around him.
Quinn Emanuel Urquhart & Sullivan LLP
“Quinn Emanuel’s lawyers are smart, appropriately aggressive and very strategic in their approach – and they never get out-argued or out-briefed on a matter. Their goal is to win, whatever that means to any particular client; and they remain conscious of the spend involved to accomplish their wins, putting the appropriate number of lawyers on cases.” Holding the fort in Chicago, David Nelson has an unbelievable level of trial experience and co-chairs the national IP litigation practice.
Rakoczy Molino Mazzochi Siwik LLP
For generic drug manufacturers, Rakoczy Molino Mazzochi Siwik is a godsend; the prolific life sciences patent litigation boutique has handled several hundred Hatch-Waxman and Biologics Price Competition and Innovation Act suits since opening its doors in 2004, giving it a major advantage and a rich playbook to utilise for the next few hundred cases. At the forefront of the practice, William Rakoczy, Paul Molino and Deanne Mazzochi understand perfectly what clients need them to do, and have all the litigation and trial skills and technical, regulatory, IP and competition know-how to get results of fundamental importance to business success. They also have a gift for talent development,
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as shown by the rise to fame of fellow litigator Eric Hunt, who joined as a summer associate in the year of the ensemble’s founding and has served as partner for more than five years. One source comments: “Eric is easily one of my favourite lawyers and a go-to for reality checks regardless of the question at hand. He is always available and ready to dig in to the meatiest legal and business issues; he provides balanced, real-world counsel. I am proud to put him in front of my board of directors.” He makes his sophomore appearance in the guide this year; while Lara Fitzsimmons debuts as a leading regulatory counselling and deal lawyer. She is a vital cog in the firm’s litigation efforts thanks to her facility for settlement negotiation, which she flexes within a broader transactional practice.
Schiff Hardin LLP
Resonating in the pharmaceutical world, the name of Schiff Hardin is closely associated with victory on the generic side of Hatch-Waxman litigation. The team is paced by Imron Aly, a “renowned patent litigator with a unique ability to break down the most complex scientific concepts and build strong litigation positions. Brilliant at drafting briefs as well as in oral arguments, he is wonderfully effective in cross-examining prominent figures in the scientific community. He is a vigorous advocate with decades of top-level experience”. Also fulfilling a leadership function is Sailesh Patel, a fellow trial dynamo who gets everything right, whether designing strategies, selecting experts, coordinating teams of lawyers inside and outside his firm, or arguing in court. Tasked with challenging matters, Patel is representing Aurobindo Pharma in seeking to introduce a generic version of Pfizer’s Ibrance breast cancer therapy, which is protected by a patent on the palbociclib drug molecule that is difficult to prove invalid. Whether pairing up with Aly and/or Patel or running cases himself, Kevin Nelson also shines; he marries finegrained regulatory knowledge with a special aptitude for biosimilar litigation.
Sidley Austin LLP
Sidley Austin packs a mighty punch in patent litigation and is an essential resource for the most missioncritical competitor disputes. The 25 partners in its group collaborate well within and across offices in a way that enhances efficiency – the right people are put on cases based on skills and experience, rather than location, bringing increased focus to case preparation and delivery. Unbeatable Supreme Court and Federal Circuit advocacy is another key differentiator for the organisation, ensuring that trial wins don’t fall away
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United States: Illinois due to a lack of preparedness for appeals. One recent highlight in which these strengths came into play saw Stephanie Koh, Thomas Rein and Constantine Trela score an important result for CalAmp Corporation in appealing a decision that it had wilfully infringed four Omega patents – arising from a trial overseen by a different firm – and then handling a retrial in which infringement was narrowed down and deemed not wilful; post (re)trial motions filed by Omega seeking a trebled ongoing royalty rate, among other things, were subsequently denied, adding gloss to the outcome thus far. Koh serves as Chicago IP litigation leader, Rein as global leader and Trela as a key member of the Supreme Court and appellate group, which he founded. In terms of effective cross-state connections, the link between Richard Cederoth and San Franciscobased Mike Bettinger is a strong one; Cederoth is an A-lister not just of Sidley’s team, but of the wider US patent litigation market.
Steger IP, LLC
A coal-and-ice partner to those seeking the best in patent transactions and monetisation support, Steger IP was only founded in 2018, but is already lighting up the patent world. It has a gift for ascertaining the untapped value in high-spec patent portfolios and then getting huge returns on it; the team looks way beyond simply narrowing down assets to assert in litigation. The ensemble is the brainchild of superlative strategist Steven Steger, a former chief IP counsel and “game changer who is assembling a world-class team”. In an inspired move, he recently recruited Elizabeth Rudersdorf, one of the most organised deal drivers that a client could dream of; her work – such as managing claim charting activity and outreach to potential buyers – is never less than flawless. She acts as outside general counsel to Allied Inventors and oversees the monetisation of its patent portfolio – a task that, in the past year, has seen her lead on dozens of deals involving hundreds of patents in areas such as augmented reality, social networking and automotive and financial technology. See p1732 for firm profile
Steptoe & Johnson LLP
“From an in-house perspective, Steptoe checks all the boxes. Its name carries a great reputation; it is responsive and service minded, and also full of great talent.” Two of its Chicago members who distinguish themselves are John Abramic and Jay Nuttall: they have “the perfect blend of business sense and legal knowledge”, and are “willing to work with clients with respect to budgets”. “They deliver on their word and deserve all the praise they get for
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their patent litigation and post-grant proceedings representation.” Both are vital components of a highfunctioning practice group that staffs seamlessly across offices to secure positive results in high-stakes cases. Capitalising on the support around him in this way, Thomas Filarski thrives in the fray life sciences patent litigation and is regularly retained by Sandoz, including in a recent Hatch-Waxman case involving a diabetes drug; other victories for Sandoz include a win against Allergan and Duke University regarding its right to launch a generic version of Latisse, a drug used to grow and darken eyelashes. On many of these matters, he joins forces with partners in New York and California, while also drawing on support from associates in Chicago and DC. Kelly Eberspecher is the other local trial supremo to keep on the radar. He has been on a sparkling run of form in inter partes review proceedings, representing Panduit Corp against Corning Optical as both petitioner and patent owner.
Taft Stettinius & Hollister LLP
Taft is a veritable a SWAT team for generic pharmaceutical companies. Pairing up seasoned trial lawyers with PhD-level scientific advisers, the firm has turned Hatch-Waxman litigation into an art form, handling dozens upon dozens of such cases. It also exhibits a deft touch on other crucial instructions, including post-grant proceedings, portfolio evaluation and transactions. At the helm is Stephen Auten, a thought leader and consummate litigator with all-encompassing industry knowledge. On many campaigns he partners with Richard Ruzich, a collaborator cut from the same cloth. For example, the pair are acting for Alkem Laboratories in ANDA litigation involving several generics, with one matter taking on added importance given Alkem’s at-risk launch of the product; they are also a go-to for Apotex, which they represent in litigation and support at the lobbying level.
Winston & Strawn LLP
A gilt-edged patent litigation firm with which few can compete – whether in Chicago or at the national level – Winston & Strawn has the resources, trial mentality, technical know-how and experience to carry the day in the toughest, highest-exposure cases in any forum. The esteemed firm’s Chicago coverage has increased this year with the addition of Ivan Poullaos to the rankings; clients hail him as a “highly adept litigator who is incredibly effective in developing creative, factually driven legal positions through all phases of a case”. He also has “a great track record in terms of efficiently driving matters and sticking to budgets”.
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United States: Illinois He’s an up-and-coming player in what is undoubtedly one of the most formidable pharmaceutical patent litigation groups around, which is also blessed by the presence of Maureen Rurka and Michael Nutter. Rurka – who, like Poullaos, is another star with a lot of headroom – has deep knowledge of regulatory law which enhances her contentious capabilities. Nutter has this too, and plays a vital role as a strategic counsellor to clients, as well as lead trial lawyer. When occasion demands, he forms a devastatingly effective pairing with George Lombardi, a celebrity of the practice who knocks it out the park when it comes to distilling down complexity to present a clear, compelling case. Lombardi is a prime example of the transferability of high-level trial skills: plentiful though his successes in blockbuster drug cases may be, he also has wins aplenty in other areas to his name. This is true of most all the folks at Winston, including Kurt Mathas, a veteran of many newsworthy life sciences and high-technology patent and antitrust litigations. Michael Brody continues to add new highlights to his litany of high-profile successes in disputes involving communications, semiconductor and other technologies. See p1744 for firm profile
Other recommended experts
Few lawyers in the United States have Kenneth Adamo’s level of strategic perspicacity when it comes to patent litigation, post-grant proceedings and alternative dispute resolution. Consulting him helps any party to sail through the most demanding of cases. Dentons has an elite trial lawyer in Chicago in Timothy Carroll, who has a superlative reputation for his adroit handling of big-ticket cases. He was hired to defend Arthrex in a 22-patent dispute brought by Zimmer Biomet, a major competitor in the orthopaedic medical device space, which put at risk a product line worth more than $100 million in annual revenue; Carroll’s negotiation skills played a huge part in resolving the matter with minimal disruption. David Donoghue captains Holland & Knight’s national IP group and has led it to many notable achievements in patent and IP litigation. He has some high-level matters on his desk right now, and is defending Motorola Mobility and Lenovo against patent infringement claims brought by WiLAN relating to how Motorola Mobility mobile phones operate on cellular networks – the case potentially brings with it significant FRAND and SEP issues. Zareefa Burki Flener has her finger on the pulse of the life sciences and applies keen business instincts to help clients manage and maximise the value
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of their IP portfolios. The firm she established in 2014, Flener IP & Business Law, is well known for its stellar results and superior client service. A member of the management committee and vice chair of the national IP department, Jeanne Gills is an eminent figure at Foley & Lardner. She has abundant experience across all categories of intellectual property, though is particularly well suited to patent matters, thanks to her technical background. Former Jenner & Block lawyer Sara Tonnies Horton recently joined Willkie Farr & Gallagher. She’s a rising star of the patent litigation and post-grant proceedings scene, with insight beyond her years. Ira Kalina accurately and perceptively reads the innovation and business landscape and moves swiftly to help clients capitalise on patent and technology commercialisation opportunities. The Faegre Drinker partner is highly recommended as a transactional lawyer and relationship builder. Bradford Lyerla is a heavyweight patent litigator who has tried many cases involving cutting-edge technologies to verdict. He joined Tabet DiVito & Rothstein at the start of 2020, having moved on from Jenner & Block, where he spent much of his career. Highly prized by inhouse counsel and the C-suite for her strategic and business smarts, Lily Rin-Laures performs flawlessly as a portfolio manager, regulatory lawyer, deal broker and counsellor for life sciences entities. David Rosenbaum of Rosenbaum IP doesn’t do things by rote, but pitches his advice and service perfectly for each client. He dispenses perspicacious counsel on myriad IP matters, including portfolio development and transactions, and seeks to create business value with unwavering focus. “Emer Simic gives clear, constructive and practical advice and is an excellent long-range thinker.” She recently moved from Green, Griffith & Borg-Breen to Neal Gerber Eisenberg. Spence PC is a dynamic IP and litigation boutique whose heart and soul is trial lawyer William Spence. The registered patent attorney, IP commercialisation expert and former Kirkland & Ellis lawyer has strategies at the ready for any complex IP or commercial case. Marcus Thymian recently moved on after 22 years at MBHB to set up GrowIP Law Group. His fine-grained understanding of all facets of patent practice will serve as an excellent platform for this new boutique. A founding partner of Upadhye Tang, Shashank Upadhye is a beacon of light for both branded and generic drug manufacturers, with a profound knowledge of pharmaceutical and Food and Drug Administration law. Having built the global IP department of Apotex, he has valuable in-house experience that has always given him an edge in private practice.
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Adamo, Kenneth R
Principal – Law Office of KRAdamo kradamo23@gmail.com | www.kradamo.com
Kenneth R Adamo is the owner of the Law Office of KRAdamo. Mr Adamo has extensive trial experience as lead counsel in jury and non-jury cases before state and federal courts and before the US International Trade Commission (ITC), as well as ex parte and post-grant PTAB experience in the US Patent and Trademark Office. He has had substantial experience as lead counsel in arbitrations and other alternative dispute resolution (ADR) proceedings, and actively practises before the US Court of Appeals for the Federal Circuit, having appeared in over 45 appeals to date. Major representations in IP litigation as lead counsel have included US federal court and ITC cases for Citicorp, CQG, IBM, JP Morgan Chase, MediaTek, Procter & Gamble, Otter Products, Samsung, TEL, Texas Instruments, TSMC and Xilinx, and USPTO post grant proceedings for IBM. Lead counsel and neutral experience in mediations, arbitrations and other ADR proceedings are not matters of public record. Education • John Marshall Law School, LLM, 1989 • The Albany Law School of Union University, JD, 1975 • Rensselaer Polytechnic Institute, BSChE, 1972 Admissions • 1975, Illinois • 1976, New York • 1984, Ohio • 1988, Texas • USPTO Reg No 27299
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Law Office of KRAdamo 360 W Illinois Apt 620 Chicago IL 60654 United States T +1 312 527 0620/216 632 9537 Professional associations • ABA IPL • AIPLA • AIPPI
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Flener, Zareefa Burki
Managing Partner – Flener IP & Business Law zflener@fleneriplaw.com | www.fleneriplaw.com
Zareefa Burki Flener is the founder and managing partner at Flener IP & Business Law, a women-owned and WBE-Certified IP and business/ corporate law firm. Ms Flener, is registered with the USPTO, and has more than two decades of experience managing international and domestic patent and trademark portfolios in a wide range of areas. Zareefa is well regarded by clients and peers worldwide, is included in the IAM Patent 1000 and is recognized by Managing Intellectual Property as an “IP Star” and one of the “Top 250 Women in IP”. She has also been recognized by High Times magazine as a “Leader in Cannabis Law”. Before becoming an attorney, Ms Flener received her MSc from Loyola University of Chicago with distinction. Her scientific research and experience span 10 years and are in two particularly highly publicized areas: HIV transmission and pathology, and mapping of the human genome. She also obtained her MSc with high distinction. Ms Flener is well published in the field of HIV pathology in such journals as the American Journal of Pathology, Clinical Immunology and the Journal of Clinical Investigation. While her science background is useful in understanding inventions related to the plant chemistry, and biotech, her business acumen and holistic approach to a company’s business goals have led to successfully achieving and maintaining market dominance for clients. For instance, a client was awarded the TIME.com Invention of the Year Award and another has been recognized by FAST Company as one of the most innovative companies. She continues to manage the firm, IP portfolios (from Fortune 500 companies to solo inventors and universities), while also contributing to public IP know-how through participation in panels and publications. Ms Flener is a member of Forbes Business Counsel, the American Intellectual Property Law Association, the International Association for the Protection of Intellectual Property, INTA, the American Bar Association and the Chicago Bar Association, serves on various boards and actively supports women’s professional groups including Chicago Women in IP. When not working, Ms Flener can be found on a golf course, spending time with family, and when permitted, travelling.
1450 IAM Patent 1000
Flener IP & Business Law 77 West Washington Street Suite 800 Chicago IL 60602 United States T +1 312 724 8874
www.IAM-media.com
Burnham, Daniel J
Partner – Nixon Peabody LLP dburnham@nixonpeabody.com | www.nixonpeabody.com
Daniel J Burnham has a comprehensive IP practice that encompasses a diverse range of sophisticated technologies and legal issues. He is a registered patent attorney who represents clients in federal courts and at the US Patent and Trademark Office. Leveraging his engineering experience, Mr Burnham works closely with clients in their product development process by helping them avoid competitive patents and ensuring commercial exploitation of their new products through effective patent protection. He has significant experience in developing and managing patent portfolios for small, emerging-growth companies, as well as for large, established corporations. Mr Burnham has been involved in numerous litigation matters and alternative dispute resolution proceedings in the United States, Europe and China. Negotiating and drafting licence agreements and other technology-related contracts is another practice area that he is frequently called upon to handle. By combining his practical, hands-on industry experience with knowledge of key aspects of IP law, Mr Burnham provides domestic and international clients with strategic IP counselling that helps them achieve their business objectives. Some representative areas of Mr Burnham’s technical knowledge include biosensing technology; medical devices; gaming software and processes; MEMS devices; digital-dentistry software and processes; coin and currency machines; laser systems and semiconductor laser diodes; casino gaming machines; nutraceuticals; acoustic transducers; surface treatment technology; consumer products and packaging; pipe repair technology; hearing aids; dental implant systems; and biorefinery technology.
www.IAM-media.com
Nixon Peabody LLP 70 West Madison Street Suite 3500 Chicago IL 60602 United States T +1 312 425 8513 See firm profile p1716 Professional associations • ABA IPL • AIPLA • Intellectual Property Law Association of Chicago
IAM Patent 1000 1451
Garetto, Janet M
Partner – Nixon Peabody LLP jgaretto@nixonpeabody.com | www.nixonpeabody.com
Janet M Garetto is a co-leader of Nixon Peabody’s food, beverage and agribusiness industry team. She advises her clients on the full scope of IP matters involving both patent protection and patent litigation prevention issues. Ms Garetto also helps companies develop brand strategies and goals. This involves trademark procurement, trademark portfolio development and maintenance, addressing brand misuse issues, and developing internal branding guidelines and best practices. Leveraging her chemistry background, Ms Garetto’s patent experience encompasses drafting and prosecuting patent applications in various chemical and mechanical areas and preparing infringement, invalidity and due diligence opinions. Her work also includes patent procurement, patent portfolio development and maintenance, competitive patent intelligence, and analysis and enforcement of patents. She has prosecuted patents and provided counselling across a wide variety of technical areas, including chemical products and processes; stretch-film products and processes; epoxy compositions; foam products and processes; herbicides; controlled release devices; packaging and storage devices; consumer products such as furniture, surgical, medical and dental products; and biomechanical devices. Ms Garetto prioritises the strategic goals for her clients’ significant inventions and research and development investments. She also assists with ongoing US and international patent deadlines. Ms Garetto closely monitors the food, beverage and agribusiness industry trends that impact her clients’ businesses, which enables her to proactively counsel her clients on issues before they become costprohibitive.
1452 IAM Patent 1000
Nixon Peabody LLP 70 West Madison Street Suite 3500 Chicago IL 60602 United States T +1 312 425 8514 F +1 866 568 1033 See firm profile p1716 Professional associations • Chicagoland Food & Beverage Network • Executives’ Club of Chicago • Intellectual Property Law Association of Chicago
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Steger, Steven
Managing Partner – Steger IP, LLC steve@stegerip.com | www.stegerip.com
Steven Steger is the founder of Steger IP LLC, where he concentrates on all aspects of monetising intellectual property through sales, licensing and assertion campaigns, and strategic IP counselling. Mr Steger has a broad range of experience, having served as chief IP counsel at both multinational corporations and smaller start-up companies, as well as representing a vast array of clients while in private practice. His experience includes strategic IP counselling, patent monetisation through sales and licensing, infringement litigation, and patent and trademark prosecution and portfolio management. Mr Steger has sold many patent portfolios of various sizes; spearheaded the licensing of large patent portfolios; developed IP policies and procedures for both mature patent portfolios and start-up IP management; and built internal capabilities for management, licensing and prosecution of large patent portfolios. Prior to founding Steger IP, Mr Steger was founder and managing partner of Global IP Law Group. Before Global IP, Mr Steger was vice president of licensing and chief IP counsel for Ygomi, where he led a patent licensing business and directed all aspects of IP protection for multiple operating companies. Previously, Mr Steger was deputy general counsel and chief IP counsel for Brunswick, a Fortune 500 company that manufactures recreational and lifestyle products under some of the world’s best-known brands. Before moving in-house, Mr Steger was in private practice, first with Brinks Hofer Gilson & Lione and then with Mayer Brown, where his practice included patent infringement litigation, patent and trademark prosecution, patent and corporate transactions and strategic IP counselling. Mr Steger’s combination of in-house and major law firm experience gives him particular insight into what is important to a business from an IP perspective and how outside counsel can best add value to a corporate IP programme. Mr Steger is recognised as a world leader in intellectual property by numerous publications and organisations, is a frequent lecturer on IP monetisation around the globe and has published numerous articles on IP issues.
www.IAM-media.com
Steger IP, LLC 1603 Orrington Avenue Suite 600 Evanston IL 60201 United States T +1 847 942 2391 See firm profile p1732
IAM Patent 1000 1453
Rudersdorf, Elizabeth
Partner – Steger IP, LLC elizabeth@stegerip.com | www.stegerip.com
Elizabeth Rudersdorf’s practice focuses on monetisation of IP assets and strategic counselling to patent owners and investors with respect to their intellectual property. She is a partner at Steger IP and currently acts as outside general counsel to Allied Inventors, LLC. Ms Rudersdorf has extensive experience in the monetisation and valuation of IP assets and strategic counselling related to building and extracting value from IP portfolios. Her transactional work includes patent sales and licensing, and has returned value to her clients in the billions of dollars. She has also performed valuations for companies ranging from start-ups to large corporations that have been used to raise investment funds and secure debt, one of those valuations being a multi-billion-dollar debt raise secured by the client’s patents. Ms Rudersdorf also has experience in patent litigation and international arbitration work. Ms Rudersdorf has most recently practised in-house as general counsel at Allied Inventors. Prior to that, she was a partner at a boutique IP-focused firm, and an associate at a large international firm, both in the United States and the United Kingdom. Through her more than 10 years in practice, she has represented inventors, small companies, investors and some of the largest patent owners in the world.
1454 IAM Patent 1000
Steger IP, LLC 1603 Orrington Avenue Suite 600 Evanston IL 60201 United States T +1 630 862 0785 See firm profile p1732
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United States: Massachusetts
Choate Hall & Stewart LLP
“The Choate team is cohesive – its members genuinely like and support each other, and are all exceptionally accommodating, which results in a well-rounded patent service that, from a client’s perspective, feels seamless.” Instrumental in this regard is the leadership of Charles Lyon, who – alongside Rolando Medina and Brenda Herschbach Jarrell – sets the pace for one of Boston’s destination life sciences practices. “Charles is one of the best IP lawyers you could ever partner with. He is incredibly intelligent, with a unique ability to quickly understand the most complex concepts and synthesise large amounts of information. He distils complex webs of prior art into succinct summaries, which enables easy decision making – for example, around investment opportunities. Whether taking on work himself or appropriately delegating it, he knows precisely the status of his clients’ matters at any given time. In short, he’s a superhero who pulls it all off effortlessly.” He and Medina – a neuroscience PhD with broad patent talents – counsel Editas, a leading player in the field of gene-editing using CRISPR/Cas technology. As chair of the IP and life sciences groups, Jarrell is constantly mindful of trends in the industry and does a wonderful job keeping the practice at the cutting edge. Clients benefit readily from her support: for example, she has been by the side of genetic medicines company WAVE Life Sciences since its earliest days; it is now a public company with multiple products in clinic. Sources call her an “exceptional lawyer and terrific strategist”. Choate features prominently on the IAM Patent 1000 litigation table too, with Robert Frank and Eric Marandett in gold, Michael Bunis and Paul Popeo in silver and newcomer Sophie Wang in bronze. Frank is the statesman of the group and a former managing partner and chairman of the firm. IP litigation team captain Marandett is “the person you call for a gut check, because he’s so experienced”. He and Bunis team up very effectively, scoring high marks as “impressive lawyers who give rock-solid legal analyses along with practical, actionable advice. They have good judgement and are sensitive to business issues”. Popeo is another lawyer whom the C-suite likes to keep close, because of his strategic smarts. Cited by a gold-tier lawyer at another firm as a “huge up-and-coming talent”, Wang makes essential contributions to the group’s trial and postgrant success.
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Clark+Elbing LLP
Many of the most innovative life sciences companies rely on Clark+Elbing for the best in patent prosecution and portfolio management. The ensemble draws on a deep well of scientific, legal and business know-how to support clients globally and at the most meaningful strategic level. The first name on the team sheet is founding partner Karen Elbing, who leads by example and produces work of stunning quality for the likes of Genentech. So too does James DeCamp, a founding member and nearly 20-year partner with a gift for designing IP platforms from which rapid growth can be achieved. He supports Flagship Pioneering alongside Elbing and neurobiology PhD Michael Belliveau, a seasoned attorney who keeps a laser focus on business and IP value through all phases of prosecution. Joining his colleagues in the listings this year, chemistry PhD Jeffrey Ellison more than deserves his debut. He brings deep regulatory expertise to the table and is a popular pick for international counsel. One source comments: “When my clients venture into the United States, my first choice for solid advice is Jeffrey. He is extremely reliable and legally and technically brilliant.” See p1668 for firm profile
Cooley LLP
Cooley’s patent offering is a compelling one; the firm has an international group of more than 110 patent lawyers and professionals who think deeply about the business side of intellectual property. Value creation is the name of the game for the eminent life sciences minds in Boston, including PhDs Heidi Erlacher, Dean Farmer and Matthew Pavao. Local partner-in-charge Erlacher helps companies to navigate crowded spaces with smart portfolio strategies and designs patent protection schemes that prioritise commercialisation opportunities and revenue growth. Farmer is well placed for complex patenting at the intersection of different scientific disciplines and has a rare ability to read the global risk picture for clients. Pavao’s gift of foresight brings sharp commercial focus to his work developing worldwide portfolios for pioneers in areas such as cancer treatment. Scott Weston leans into the life sciences practice, but also extends into mechanical and medical devices, energy and other matters. He has broad horizons and can advise holistically, tapping experience in prosecution, litigation and transactions.
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United States: Massachusetts Firms: prosecution Highly recommended Choate Hall & Stewart LLP Fish & Richardson Greenberg Traurig LLP Wolf, Greenfield & Sacks, PC Recommended Clark+Elbing LLP
See p1668
Cooley LLP Dechert LLP Finnegan, Henderson, Farabow, Garrett & Dunner, LLP See p1678 Foley Hoag LLP Goodwin Procter LLP Hamilton Brook Smith Reynolds Lando & Anastasi LLP McCarter & English, LLP
See p1706
McDermott Will & Emery McNeill Baur PLLC Morgan Lewis & Bockius LLP Nixon Peabody LLP
See p1716
Proskauer Rose LLP Sunstein LLP
See p1738
White & Case LLP
See p1740
Dechert LLP
Dechert’s life sciences practice is a lightning rod for praise; chief patent counsel look to hire the firm and global industry group co-head Andrea Reid at every available opportunity for their perspicacious strategic, policy and business advice and favourable
1456 IAM Patent 1000
prosecution and portfolio development outcomes. “An intelligent and fun lawyer to work with, Andrea is nothing short of amazing. The applications she is responsible for are superbly written, with creative claim sets, and her portfolios are some of the cleanest, best managed you’ll ever see.” Recent highlights of her sophisticated transactional practice, meanwhile, include acting for Arrakis Therapeutics on its $190 million collaboration and licensing deal with Roche to help develop a suite of RNA-targeted small molecule drugs; and handling patent strategy and diligence for Navitor Pharmaceuticals in its development and option agreement with Supernus Pharmaceuticals for mTORC1-targeted therapeutics. Chemistry PhD Chad Davis is another go-to in Boston and an essential partner to drug companies throughout all phases of the product development lifecycle.
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Globally influential boutique Finnegan is steeped in all facets of patent practice and provides one of the most complete and satisfying IP services to dynamic companies in all industries. This comprehensiveness is only enhanced by the wide-ranging capabilities of leading lights such as Eric Raciti, Linda Thayer and Leslie McDonell, who fly the firm’s flag high in Boston. Local managing partner Raciti excels as a strategist and commercial IP lawyer, but is also relied on for contentious support; upon being sued for patent infringement by OrthoAccel Technologies, Propel Orthodontics dialled his number and ended up avoiding a business-crippling preliminary injunction award against it. Maintaining litigation and prosecution talents in perfect balance, Thayer contributes on many fronts; for example, he plays an important role in Finnegan’s outstanding PTAB practice. McDonell also relishes getting to grips with the intricacies of post-grant proceedings as well as EPO oppositions, and mines a rich seam of life sciences patenting know-how in doing so. See p1678 for firm profile
Fish & Richardson
The crown jewel of the US legal market when it comes to patent practice, Fish is a potent force in litigation, a leader in post-grant proceedings and a global prosecution powerhouse. The firm doesn’t just have handfuls of people dotted around the country, but teams stacked with accomplished trial lawyers and high-level strategists in innovation hubs from coast to coast. The Boston group boasts incredible strength in depth across the contentious/non-contentious divide. Zooming in on the prosecution side brings superlative
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United States: Massachusetts Firms: transactions
Firms: litigation
Highly recommended
Fish & Richardson
Goodwin Procter LLP
Wilmer Cutler Pickering Hale and Dorr LLP
Ropes & Gray LLP
Choate Hall & Stewart LLP
Recommended
Goodwin Procter LLP
Cooley LLP
Mintz
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP See p1678
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP See p1678
Greenberg Traurig LLP
Foley Hoag LLP
Lando & Anastasi LLP
Holland & Knight LLP
McCarter & English, LLP
See p1706
Lando & Anastasi LLP
McDermott Will & Emery
McCarter & English LLP
Morgan Lewis & Bockius LLP
McDermott Will & Emery
Proskauer Rose LLP
Proskauer Rose LLP
White & Case LLP
See p1740
Wilmer Cutler Pickering Hale and Dorr LLP Wolf, Greenfield & Sacks, PC
life sciences and medical technology practices into focus. Biochemistry PhDs Janis Fraser, Anita Meiklejohn and Christine Goddard are the anchors of the former; Peter Fasse and Michael Hamlin pillars of the latter; and Todd Garcia central to the success of both. Fraser capitalises on 25 years in the game to dispense advice that is richly laced with strategic insight; she deals with bleeding-edge innovations every day, which helps her stay out in front of the most pressing patent issues that scientific developments give rise to. Meiklejohn prosecutes with finesse in all areas of molecular biology and biochemistry; while Goddard’s previous in-house experience gives her an insider’s view of pharmaceutical product development. Fasse has an accurate read on the global patent landscape and devises clever strategies to help medical device and other clients stay two steps ahead of their competitors; Hamlin is in hot demand for opinions on diverse patent matters and for his astute approach to risk management; and Garcia provides
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See p1706
Wolf, Greenfield & Sacks, PC
leadership as managing principal of the Boston office. Fasse and Garcia have worked hard together to build up a valuable patent portfolio for Roche covering a complex system for automatically analysing patient blood samples. Jeffrey Barclay, meanwhile, is the go-to for anything high-technology-related; he excels at developing portfolios and extracting commercial value from them. The top names on the fight card when it comes to litigation, meanwhile, are Frank Scherkenbach and Kurt Glitzenstein. Scherkenbach has tried dozens of cases to verdict and advocates with unblemished distinction in the district courts, the ITC and at the Federal Circuit; he is currently representing Intuitive Surgical as lead counsel in an ITC case and co-pending inter partes reviews. Glitzenstein, who leads the firmwide litigation group, also brings the heat, but not just in court – he’s awesome on the prep and strategy piece, too. Proshanto Mukherji is a rare trial lawyer with a PhD (computer science), giving him an edge on the technical aspects of cases. Adam Kessel has a total command of the issues in multi-layered patent, trade secret and unfair competition actions, and is also a confident presenter. A well-rounded litigator, post-grant lawyer and counsellor, Lawrence
IAM Patent 1000 1457
United States: Massachusetts Kolodney has made many valuable contributions to the success of both the firm and its clients; he also serves as chair of Fish’s market-leading pro bono programme.
Foley Hoag LLP
Well credentialed in the patent litigation space, Foley Hoag puts onto the playing field a crack squad of seasoned trial lawyers to afford pharmaceutical and biotechnology entities robust, technically adept and outcomes-based representation. Co-chairs of the patent litigation group Barbara Fiacco and Donald Ware put clients at ease with their assured leadership and considered strategies. Fiacco’s star is on the ascendant, not least due to his recent tenure as president of the American Intellectual Property Law Association. Experience and regulatory expertise give Ware his advantage. Philip Swain has also tried multiple cases and finds practical, business-focused resolutions whatever the brief. Foley Hoag is also gifted in prosecution and, with Dana Gordon in the fold, is always on the shortlist for in-house counsel seeking commercially on-point advice on IP planning and asset management.
Goodwin Procter LLP
Established and headquartered in Boston, Goodwin Procter has long been a model of excellence in the city and a headline act in the patent and life sciences domains. Few firms take a more integrated approach to assisting pharmaceutical and biotechnology innovators as Goodwin, whose elite prosecutors, deal lawyers and litigators work collaboratively to ensure that commercial value is created and sustained for clients. Reflecting the depth of its bench, the firm has new faces in the IAM Patent 1000 for 2021, with Christopher Denn earning recognition on the transactions table and Theresa Kavanaugh debuting on the prosecution list. Denn helms the IP transactions and strategies group and represents a prestigious and global client base that includes CRISPR Therapeutics, which he has advised on strategic collaboration and licensing agreements, among other things. Kavanaugh is hailed as “an accessible partner, good communicator and realistic optimist”; she also has “a great eye for detail and understands what matters most in protecting and successfully litigating pharmaceutical patents”. She assists Blueprint Medicines with global IP clearance, registration and maintenance; while Denn runs point for the company on transactional matters. They take their place alongside a number of illustrious colleagues, including Kingsley Taft, Stephen Charkoudian, Joel Lehrer and Duncan Greenhalgh.
1458 IAM Patent 1000
Taft is “pragmatic and business savvy, and uniquely able to appropriately characterise and prioritise risks within any collaboration structure”. Lehrer is “extremely creative, measured and strategic”. He comes recommended for both prosecution and transactions; as does biochemistry PhD Greenhalgh, a “consummate professional” and superb relationship partner who works wonders in positioning portfolios for commercial opportunities. Much of the group’s activity has a transformative effect on clients’ fortunes, which also holds true for the litigation contingent. Leading the line is Daryl Wiesen, a highfunctioning Hatch-Waxman litigator who recently represented Fresenius and Actavis in litigation against Sanofi concerning a prostate cancer treatment. Anthony Downs is a veteran trial lawyer and former chair of the litigation practice who has consistently elevated the firm over more than three decades as a member. Douglas Kline is another former group captain who continues to show leadership. He and Elaine Blais – a font of insight on biosimilars – are lead counsel for Teva against Eli Lilly in a brandversus-brand biologics case.
Greenberg Traurig LLP
Teeming with technical talent, Greenberg Traurig’s Boston office is a magnet for high-technology and life sciences companies seeking the best in global prosecution, portfolio management and strategic IP planning. The firm gets it all spot on – its entrepreneurially spirited lawyers really listen to clients and flexibly adapt to their needs in terms of budget and delivery, although quality always comes first, as the following testimonial for emerging technologies co-chair Chinh Pham confirms: “There are hardly words to describe the quality of the work done by Chinh and his team. They are not only incredibly skilled at writing the broadest claims, but also brilliant at navigating through challenging prior art landscapes. During prosecution, they show tenacity and skill in working with examiners to get our patents issued. They are an integral part of our enterprise and have played a critical role in the creation of immense value for us.” Pham focuses principally on the high-technology space; his efforts are matched in the life sciences domain by PhDs Melissa Hunter-Ensor, Fang Xie and David Dykeman. Hunter-Ensor chairs the global prosecution group, but this never keeps her from giving 110% for the biotechnology, pharmaceutical, chemical and medical device companies she represents, such as Aspira Women’s Health, for which she has obtained myriad patents around the world. A gifted scientist and strategist, Xie acts for a diverse coterie of
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United States: Massachusetts companies, academic and research institutions and investors, giving her a broad and deep understanding of the business of intellectual property. She has assisted listed clinical-stage biopharmaceutical company Provention Bio since its formation in 2017, developing and commercialising its patent portfolio to great effect alongside Dykeman, a “thought leader in global intellectual asset management who displays inexhaustible commitment to clients, colleagues and the community at large”. Also collaborating with Dykeman is Roman Fayerberg, whose international experience brings great benefit: they represent dynamic medtech provider Trividia Health and recently handled its $273 million sale to Sinocare Group, China’s leading diagnostics company.
CV, particularly in the telecommunications sector. He recently acted for Verizon and Ericsson in an action against Traxcell Technologies; and for Ericsson and AT&T against Uniloc. The diversity of his caseload – which encompasses all kinds of IP infringements, along with various commercial suits – has sharpened his advocacy skills to the finest point.
Lando & Anastasi LLP
Hamilton Brook Smith Reynolds provides essential patent support to diverse company clients – including Fortune 500s – and demonstrates a high degree of specialisation acting for university research departments. Tailoring their service brilliantly, its professionals harness technical skill in combination with commercial acumen to deliver exactly what’s needed on the prosecution, strategic IP advisory and contentious fronts. Garnering special praise, Mark Solomon is someone to whom many look for favourable patent examination results: “Mark shows great initiative and is highly efficient in identifying and resolving problems – he makes the whole process of patent protection a smooth, satisfying and enjoyable experience.” He is also a soughtafter opinion giver with a “keen ability to ascertain subtleties in competitors’ patent claims and ensure others can’t accuse his clients – with any merit – of infringement”. He anchors the electrical engineering practice while Susan Glovsky shows leadership on the biotechnology and chemistry fronts. Also warmly recommended, “Susan is extremely conscientious and has excellent judgement” stemming from her experience at the USPTO and in the courtroom.
“The folks at Lando & Anastasi produce patent work of outstanding quality. They also understand their clients’ business objectives and maintain an excellent rapport with in-house counsel, inventors and company senior management.” This connectedness makes them doubly effective at spotting and seizing commercial IP opportunities; while their custombuilt strategies yield desired outcomes on time and within budget. The chief architect of this service is Peter Lando, who inspires those he works both for and with to achieve the best. Though not engaged in hardcore litigation, there’s little else, if anything, that he cannot do in the practice: he prosecutes with precision in diverse technical areas; gets major IP-driven transactions inked; and develops futureproofed IP management and enforcement strategies. The results of his efforts are always impactful on the bottom line and IP culture of his patrons. Sitting on the management committee with Lando, Keith Noe is another pivotal member of the group. Distinguished by his wealth of in-house insight and ability to see matters from the client’s point of view, Noe unerringly calculates the most efficient path to maximum protection. He acts for Schneider Electric on prosecution and strategy matters alongside founding partner Thomas Sullivan, whose scientific fluency is matched by business sensitivity. There’s a robust litigation practice at Lando & Anastasi, too, which is spearheaded by Craig Smith: an assured representative however a dispute unfolds, he has a knack for early resolution that rights holders thoroughly appreciate.
Holland & Knight LLP
McCarter & English, LLP
Hamilton Brook Smith Reynolds
More compact in patent practice than some firms, but by no means slight, Holland & Knight staunchly protects and enforces the rights of discerning companies that pace the field in their various industries. On the prosecution side, for example, the team enjoys close and longstanding relationships with DellEMC and Nuance Communications. Taking the lead here is national prosecution practice leader Brian Colandreo, a former software engineer who covers all bases for clients. Joshua Krumholz is the go-to for trials and has some impressive work on his
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Innovative patrons of McCarter & English have a cavernous chest of resources to draw upon: the firm has more than 100 professionals (lawyers, technical specialists and patent agents) across nine regional offices with a complete command of almost all fields of science and engineering and all types of patent activity. The Boston office is the fulcrum around which an outstanding life sciences practice turns, being home to three biochemistry PhDs – Jonathan Sparks, Maria Laccotripe Zacharakis and Jill Ann Mello – and molecular biology PhD Marcie Beth Clarke. Each
IAM Patent 1000 1459
United States: Massachusetts James D DeCamp Clark+Elbing LLP
Individuals: prosecution Highly recommended
David J Dykeman Greenberg Traurig LLP
Fangli Chen Proskauer Rose LLP Edward R Gates Wolf, Greenfield & Sacks, PC Brenda Herschbach Jarrell Choate Hall & Stewart LLP Charles E Lyon Choate Hall & Stewart LLP Anita Varma White & Case LLP
See p1484
Ronald I Eisenstein Nixon Peabody LLP
See p1476
Karen L Elbing Clark+Elbing LLP
See p1474
Jeffrey Ellison Clark+Elbing LLP
See p1475
Heidi Erlacher Cooley LLP
Recommended
Dean Farmer Cooley LLP
Lisa Adams Mintz
J Peter Fasse Fish & Richardson
Stephen Altieri Morgan Lewis & Bockius LLP
Roman Fayerberg Greenberg Traurig LLP
Jeffrey Barclay Fish & Richardson
Neil P Ferraro Wolf, Greenfield & Sacks, PC
Michael J Belliveau Clark+Elbing LLP
See p1469
Mark James FitzGerald Nixon Peabody LLP
Joseph A Capraro Jr Proskauer Rose LLP
Steven Frank Morgan Lewis & Bockius LLP
Y Jenny Chen Polsinelli PC
Janis Fraser Fish & Richardson
Marcie Beth Clarke McCarter & English, LLP
See p1472
See p1477
Todd Garcia Fish & Richardson
Brian J Colandreo Holland & Knight LLP
William C Geary Mintz
Kristin Connarn Hogan Lovells US LLP
Richard F Giunta Wolf, Greenfield & Sacks, PC
Peter F Corless Mintz
Susan Glovsky Hamilton Brook Smith Reynolds
Chad Davis Dechert LLP
Christine Goddard Fish & Richardson
1460 IAM Patent 1000
See p1473
www.IAM-media.com
United States: Massachusetts Dana M Gordon Foley Hoag LLP
John D Lanza Foley & Lardner LLP
Edward A Gordon McDermott Will & Emery
Joel E Lehrer Goodwin Procter LLP
Duncan A Greenhalgh Goodwin Procter LLP
Leslie A McDonell Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Michael R Hamlin Fish & Richardson
Christopher McKenna Foley & Lardner LLP
Jason Honeyman Wolf, Greenfield & Sacks, PC
Rebecca McNeill McNeill Baur PLLC
Melissa Hunter-Ensor Greenberg Traurig LLP
Rolando Medina Choate Hall & Stewart LLP
John P Iwanicki Banner & Witcoff, Ltd
Anita L Meiklejohn Fish & Richardson
Theresa Kavanaugh Goodwin Procter LLP Maria Laccotripe Zacharakis McCarter & English, LLP
Jill Ann Mello McCarter & English, LLP See p1485
Peter C Lando Lando & Anastasi LLP
brings much more than scientific erudition to the table. Sparks has cracked the code of commercialising intellectual property; the versatile Zacharakis juggles global patent prosecution, IP transactions, PTAB proceedings, EPO oppositions and patent infringement matters and never drops a ball; Mello’s all-round strategic percipience keeps her practice humming; while Clarke designs and implements worldwide patent protections for clients’ platform technologies and clinical candidates. High-stakes litigation brings Lee Carl Bromberg and Erik Paul Belt to the fore: both are polished trial and appellate lawyers who can quickly grasp the complexities of any case and weave a persuasive narrative around them. See p1706 for firm profile
McDermott Will & Emery
Flexing wide-ranging patent capabilities and a highly integrated approach to the practice, McDermott Will & Emery dispenses holistic advice and wraparound solutions to many eminent technology names. Further enhancing the seamlessness of its service, the firm has gifted scientists and lawyers in key innovation hubs
www.IAM-media.com
See p1480
Keith F Noe Lando & Anastasi LLP
around the country, putting it right at the heart of the action and within easy reach. Its US practitioners also collaborate with their European IP colleagues, lending an international dimension to the firm’s offering. Boston is a vital cog in the machine as the home base of litigator par excellence Sarah Chapin Columbia and Edward Gordon, who was recently appointed global head of the IP transactions practice. Coming in for special praise, “Sarah has a profound understanding of legal issues but also views things from a practical perspective – she sees the details and the big picture, and manages risks skilfully. Her way of thinking is highly organised and she’s a highly persuasive trial lawyer with a way of explaining science in simple terms that juries love; she knows what kind of arguments will move the needle.” No type of case is off limits, although she has a special faculty for complex life sciences litigation – her trial victory for Amgen in its long-running battle with Sanofi and Regeneron Pharmaceuticals over drugs that lower bad cholesterol was a recent major notch in the win column. The specifics of Gordon’s recent matters can’t be disclosed, but he has neatly woven together the IP threads of many large-scale deals, proving himself to be a silver-tongued negotiator. McDermott Will &
IAM Patent 1000 1461
United States: Massachusetts Timothy J Oyer Wolf, Greenfield & Sacks, PC
Mark Solomon Hamilton Brook Smith Reynolds
Matthew Pavao Cooley LLP
Jonathan Sparks McCarter & English, LLP
Chinh H Pham Greenberg Traurig LLP
Thomas M Sullivan Lando & Anastasi LLP
Randy Pritzker Wolf, Greenfield & Sacks, PC
Bruce D Sunstein Sunstein LLP
Eric Raciti Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Colleen Superko Wilmer Cutler Pickering Hale and Dorr LLP
Andrea LC Reid Dechert LLP David Resnick Nixon Peabody LLP
See p1481
Robert H Underwood Hogan Lovells US LLP Patrick RH Waller Wolf, Greenfield & Sacks, PC
Robert Sahr Wolf, Greenfield & Sacks, PC
Fang Xie Greenberg Traurig LLP
McNeill Baur PLLC
A force to be reckoned with in the biotechnology and pharmaceutical industries, McNeill Baur acquits itself with distinction as a trusted prosecution and counselling partner. The group stands out for its diversity, erudition – seven of its nine leading individuals have PhDs from prestigious institutions – encyclopaedic understanding of the USPTO and unshakeable commitment; all of which are astutely leveraged to provide a high-quality, flexible and costeffective service. One of the best tricks that founding partner Rebecca McNeill has mastered is attracting and retaining top talent; while as a practitioner, she aligns her advice with the business needs of each company on her roster, be they publicly traded or early stage. With a varied workload including prosecution, offensive and defensive EPO oppositions and due diligence assignments, she stays sharp and ready for anything.
1462 IAM Patent 1000
See p1483
Linda J Thayer Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Edward J Russavage Wolf, Greenfield & Sacks, PC
Emery has increased its presence in the IAM Patent 1000 prosecution table for 2021 courtesy of the addition of Jenny Chen, who joined in August 2020 by way of Polsinelli. Well connected in the life sciences world and a highly capable lawyer, she has already fit right in.
See p1482
Mintz
Mintz lights up the patent litigation scene by its deft handling of globally relevant, high-impact cases in the semiconductor foundry, microprocessor and circuit technology arenas, breaking new ground on issues such as standard essentiality. IP chair Michael Renaud has driven the practice to great heights both as a poised litigator and above all as a stellar strategist: “Mike is extremely good at developing cases, budgeting appropriately and assessing the scope and shape of the risk confronting his clients. Plenty of lawyers have the technical ability to handle complex patent matters, but Mike has a special understanding of and sensitivity to business issues that sets him apart. He has an incredibly effective ability to orchestrate multi-pronged litigation campaigns that extend into foreign jurisdictions such as Germany and China.” He also “sees the potential for monetisation in a portfolio and leverages a detailed understanding of broader industry issues that makes him the ideal partner for the C-suite”. This puts him in pole position to implement integrated licensing and enforcement programmes for the likes of Innovative Foundry Technologies; he has also recorded some stunning results at the ITC, including a $5.5 billion
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United States: Massachusetts win for GlobalFoundries against its largest direct competitor, Taiwan Semiconductor Manufacturing. A leading light on SEPs, James Wodarski – like Renaud – is nominated to both the IAM Patent 1000 and the IAM Strategy 300. He also brings the heat in ITC matters and, together with Renaud and Thomas Wintner, secured a limited exclusion order award against a German biotechnology company on behalf of Glycosyn, a pioneer in the field of human milk oligosaccharides – another fight between arch competitors. Wintner shines in trial courts, at the Federal Circuit, at the PTAB and in arbitral forums, with a talent for complex pharmaceutical and biotechnology litigations. Mintz blends sophistication in litigation, prosecution and counselling to fulfil the role of a strategic and business, rather than just pure legal, partner. Lisa Adams, William Geary, and Peter Corless form a high-calibre line-up equipped to assist life sciences, chemical, medical and other technology companies throughout the innovation process and product lifecycle. Geary is a go-to for patent and technology commercialisation for clients such as Janssen Pharmaceuticals, which he supports in its acquisition of technologies from innovative companies; Corless is a staunch global patent and brand protector for his corporate and university clients, including many prestigious names; and Adams debuts in the rankings this year in recognition of her accomplished performances for Baker Hughes, managing a high volume of patent prosecution; and at the other end of the company spectrum, for start-up Droplette – which has developed a needle-free skincare device for below-surface ingredient delivery – in developing its patent portfolio.
Morgan Lewis & Bockius LLP
Morgan Lewis is all things to stakeholders in the life sciences patent community: the firm tackles bigticket litigations (see Mike Abernathy in Chicago) and procures and monetises patents in a way that creates significant commercial value. For the latter, the offices of Stephen Altieri and Mark Hayman in Boston are the destination of choice. Altieri loves exploring state-of-the-art biotechnology innovations and has an instinctive ability to synthesise the science with the business picture. He also understands the in-house point of view and adroitly fine tunes his advice for easy absorption. Putting his negotiation skills on display, he recently helped emerging Boston-based biotechnology company Orionis Biosciences to close a collaboration agreement and equity investment with Novartis. Possessed – like Altieri – of exceptional scientific credentials, Hayman has a flair for maximising patent and regulatory
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exclusivities. Moving to the high-technology side of the practice brings Steven Frank into view: he’s a talented deal lawyer who also shines in patent procurement for prestigious patrons such as Harvard University, for which he prosecutes in the computer technologies area.
Nixon Peabody LLP
Nixon Peabody’s patent practice is certainly well specced: in total, the firm has 64 patent professionals (52 of them lawyers and 15 of them PhDs) and inspiring leaders stationed in multiple major markets – including DC, Boston, Chicago and Los Angeles – who power through 1,000-plus US patent filings a year and myriad litigations in hotspots such as Delaware, the Eastern District of Texas and Northern California. It enjoys a sterling reputation among corporates as well academic and research institutions, with representation of the latter a significant area of specialisation for many years. Boston-based David Resnick and Ronald Eisenstein, for example, are long-term collaborators with Harvard University, which they have recently been assisting with prosecution matters relating to covid-19. The distinguished Resnick sets the quality benchmark high as a portfolio manager and prosecution attorney. “Strategic and innovative”, Eisenstein “combines excellent analytical skills with a pragmatic mindset” and “goes above and beyond to serve the best business interests of his clients”. Another linchpin of the life sciences practice, Mark James Fitzgerald, also garners vocal praise: “He is an exceptional attorney and has become one of the faces of microbiome intellectual property; he knows the IP package of all the leading companies in the space and has his finger on the pulse of the patent challenges they face. Mark is refreshing because he isn’t someone you need to teach or train – he is unique in the breadth of his knowledge, is great to brainstorm with and is someone you can trust to manage your portfolio and define your IP strategy. He’s nothing short of incredible to work with.” Outside of his microbiomes niche, he fields diverse life sciences mandates and manages an extensive portfolio of patents for Boston University alongside Eisenstein. See p1716 for firm profile
Proskauer Rose LLP
Recommended on each of the IAM Patent 1000 Massachusetts tables for prosecution, litigation and transactions, Proskauer Rose presents a reassuringly well-rounded patent practice to the market. Rich in scientific expertise, dispute resolution and trial nous, and business know-how – and globally capable,
IAM Patent 1000 1463
United States: Massachusetts Mark Hayman Morgan Lewis & Bockius LLP
Individuals: transactions Highly recommended
Jason Honeyman Wolf, Greenfield & Sacks, PC
Edward G Black Ropes & Gray LLP
Jeffrey D Hsi Wolf, Greenfield & Sacks, PC
Stephen G Charkoudian Goodwin Procter LLP
Jeffrey P Johnson Wilmer Cutler Pickering Hale and Dorr LLP
Edward R Gates Wolf, Greenfield & Sacks, PC
Peter C Lando Lando & Anastasi LLP
Kingsley Taft Goodwin Procter LLP Recommended
Charles Larsen White & Case LLP
Stephen Altieri Morgan Lewis & Bockius LLP
Joel E Lehrer Goodwin Procter LLP
Michael J Belliveau Clark+Elbing LLP
See p1469
Charles E Lyon Choate Hall & Stewart LLP
Joseph A Capraro Jr Proskauer Rose LLP
David M McIntosh Ropes & Gray LLP
Christopher Denn Goodwin Procter LLP
Rolando Medina Choate Hall & Stewart LLP
David J Dykeman Greenberg Traurig LLP
Warren L Nachlis Jones Day
Steven Frank Morgan Lewis & Bockius LLP
Michael T Renaud Mintz
Edward A Gordon McDermott Will & Emery
Edward J Russavage Wolf, Greenfield & Sacks, PC
Duncan A Greenhalgh Goodwin Procter LLP
Anita Varma White & Case LLP
Michael R Hamlin Fish & Richardson
Scott Weston Cooley LLP
thanks to a strong presence in Asia and Europe – the firm offers so much to its dedicated life sciences and technology industry followers. An absolute star of the practice, biotechnology and pharmaceutical savant Fangli Chen distinguishes herself through her dynamism, diligence and commerciality, among many other attributes. She’s a litigation strategist, postgrant lawyer and transactions and investment expert
1464 IAM Patent 1000
See p1479
See p1484
all rolled into one, so she never misses an opportunity to protect her clients or realise IP value for them. Versatility is likewise a key trait of Joseph Capraro, who heads the prosecution, technology licensing and post-grant groups. Clients such as Hypertherm – a worldwide leader in material processing systems – take full advantage of his prowess in brands and patents and his cultivated international insight.
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United States: Massachusetts Lawrence Kolodney Fish & Richardson
Individuals: litigation Steven C Cherny Quinn Emanuel Urquhart & Sullivan LLP
Joshua C Krumholz Holland & Knight LLP
Sarah Chapin Columbia McDermott Will & Emery
Matthew B Lowrie Foley & Lardner LLP
Robert S Frank Jr Choate Hall & Stewart LLP William F Lee Wilmer Cutler Pickering Hale and Dorr LLP Eric J Marandett Choate Hall & Stewart LLP Lisa J Pirozzolo Wilmer Cutler Pickering Hale and Dorr LLP Michael T Renaud Mintz
See p1470
Elaine Herrmann Blais Goodwin Procter LLP
Michael H Bunis Choate Hall & Stewart LLP J Anthony Downs Goodwin Procter LLP Barbara Fiacco Foley Hoag LLP Kurt L Glitzenstein Fish & Richardson Douglas J Kline Goodwin Procter LLP
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Linda J Thayer Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Donald R Ware Foley Hoag LLP
Robert M Asher Sunstein LLP
Daryl L Wiesen Goodwin Procter LLP
Lee Carl Bromberg McCarter & English, LLP
Michael J Summersgill Wilmer Cutler Pickering Hale and Dorr LLP
Michael A Albert Wolf, Greenfield & Sacks, PC
Frank Scherkenbach Fish & Richardson
Erik Paul Belt McCarter & English, LLP
Paul D Popeo Choate Hall & Stewart LLP
See p1471
See p1468
Peter M Dichiara Wilmer Cutler Pickering Hale and Dorr LLP Jason Honeyman Wolf, Greenfield & Sacks, PC Adam Kessel Fish & Richardson Charles Larsen White & Case LLP
See p1479
Proshanto Mukherji Fish & Richardson Charles Sanders Latham & Watkins LLP Craig Smith Lando & Anastasi LLP Philip C Swain Foley Hoag LLP Cynthia D Vreeland
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United States: Massachusetts Wilmer Cutler Pickering Hale and Dorr LLP Sophie Wang Choate Hall & Stewart LLP Thomas Wintner Mintz James Wodarski Mintz
Ropes & Gray LLP
Ropes & Gray ascends to the gold tier for patent transactions this year – there’s no denying the sophistication of its work in the area, which is global in scope, cutting edge in terms of the technologies and industries covered, and hugely impactful in terms of the value generated. One recent disclosable deal that attests to this is David McIntosh’s representation of Massachusetts-based Sarepta Therapeutics in a collaboration and licensing agreement giving Roche exclusive rights to launch and commercialise its investigational single-treatment gene therapy for Duchenne muscular dystrophy outside the United States; the agreement is one of the biggest research-stage, single-product deals by upfront value, with Sarepta receiving a payment of $1.5 billion. Ed Black is the other heavyweight of the Boston team. He relishes the opportunity for creativity that transactional work gives him and regularly breaks new ground in the deal space.
Sunstein LLP
The solid technological underpinnings on which Sunstein’s IP platform is based promote a high degree of efficiency in all areas of its practice, including patents. The dedicated patent group applies a rigorously commercial mindset in carrying out its prosecution and portfolio management assignments; this translates into the creation of enforceable assets that also appeal to acquisitive companies and potential licensing partners. Bruce Sunstein sets the standard when it comes to patent quality; highly respected for his IP wisdom, he is regularly called on as an expert witness and arbitrator. Skilled in the arts of advocacy and prosecution, Robert Asher runs point for a post-grant practice that is never short of work or successes. See p1738 for firm profile
White & Case LLP
There is immense value in the globality of White & Case’s patent counsel, putting the firm in hot
1466 IAM Patent 1000
demand among innovative companies which depend on coherent international strategies to fulfil their commercial imperative. In her capacity as chair of the IP group, Boston’s Anita Varma is ideally placed to maximise the value of the firm’s well-rounded IP and other capabilities for clients and ensure the delivery of a seamless service. As a practitioner, she showcases impressive range and dexterity; life sciences entities enlist her to procure enforceable patents, assist them in post-grant proceedings and biosimilar litigations, and issue opinions on patentability, freedom to operate and countless other points of interest. Her USPTO and EPO qualifications further elevate her standing on the market. Charles Larsen also has a unique profile as a US patent attorney and an English solicitor. Covering similar ground for his medical technology patrons and crossing geographic borders, he can do whatever is asked of him wherever it is needed. See p1740 for firm profile
Wilmer Cutler Pickering Hale and Dorr LLP
WilmerHale practises at the summit of the US patent litigation scene: it has brought together some of the world’s best trial and appellate lawyers and surrounded them with wonderful technical talent, guaranteeing compelling representation in the most legally challenging, technically dense and commercially consequential cases in all forums. Synonymous with the success of the practice, William Lee is an amazing courtroom communicator with a virtually unrivalled ability to make technically complex concepts easy to understand for factfinders and juries. Co-chair of the IP litigation group Lisa Pirozzolo is another talismanic member of the line-up in Boston and the ideal choice for many leading pharmaceutical and biotechnology companies when there’s a lot on the line. She enjoys robust backing from Colleen Superko, a source of perspicacious counsel throughout all phases of drug development who plays a crucial role in patent litigation efforts, leveraging her high-level industry knowledge and technical insight. Innovators on the high-technology side are spoilt for choice in their quest for an experienced lead counsel. Michael Summersgill fits the bill perfectly for multifaceted ITC matters with parallel inter partes review proceedings, such as client Intel’s recent dispute with R2 Semiconductor; in this one, Summersgill and the team achieved total victory, staying the ITC investigation following a victory at the PTAB which was affirmed on appeal. Cynthia Vreeland has fought the corner of EMC in numerous high-value cases, prevailing in district courts and the PTAB. A veteran of over 20 trials, many of which she
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United States: Massachusetts has first-chaired, she knows exactly what to do when in the courtroom. Like Superko on the life sciences side, former senior hardware and software engineer Peter Dichiara partakes in a wide range of prosecution and strategic counselling activities and has a bird’s-eye view of the patent world as a result, which is of tremendous benefit in litigation. Jeffrey Johnson spearheads the technology transactions and licensing practice, which is also in the upper echelons of sophistication. Recent highlights include acting for AxonVibe in the deployment of its Essential Connector mobile app with the Metropolitan Transportation Authority, which provides alternative transportation to essential workers when the New York subways are closed for cleaning.
Wolf, Greenfield & Sacks, PC
The IAM Patent 1000 rankings reflect Wolf Greenfield’s incredible strength in patent practice: the firm has multiple individuals recommended on each table, including the highest number of any Massachusetts firm in prosecution and joint highest in transactions. Also noteworthy is the technical dexterity on display, with representatives from the life sciences, chemical, mechanical and electrical practices all making the grade. Starting with the life sciences, Edward Gates, Jeffrey Hsi, Robert Sahr and Patrick Waller have all the procurement, counselling and transactional skills that a company could wish for. Former longtime chairman Gates continues to provide the firm and its prestigious patrons with outstanding and dynamic leadership; he is an authority on university IP matters and on the business of intellectual property more broadly. Hsi has a similar gift for realising the value of intangible assets: he sees issues in the round and dispenses holistic advice on patent strategy. Former neuroscientist Sahr is a sought-after portfolio builder and opinion giver; as is Waller, a source of enlightening patent and competitor landscape analyses and a keen-eyed licensing opportunity spotter. Switching gears to the mechanical group, Neil Ferraro and Jason Honeyman provide a topnotch service to innovators from many industries. With a CV including mechanical engineering and in-house IP attorney experience, non-contentious specialist Ferraro connects on a one-to-one level with individuals at all levels of a company. Honeyman maintains vibrant practices in litigation, prosecution and deals, granting him the ability to see the big picture for clients. Anchoring the high-technology division are Randy Pritzker and Edward Russavage; they understand their commercial role and play
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it to perfection. Pritzker chairs the electrical and computer technologies group and is a font of wisdom on efficient and effective IP due diligence. Longserving president and managing partner Timothy Oyer, meanwhile, focuses on chemical innovation, maintaining the highest standards of client care and service. Wolf Greenfield’s scientific and engineering know-how affords a distinct advantage in litigation and post-grant proceedings, which trial lawyer Michael Albert and inter partes review ace Richard Giunta do well to capitalise on; with them in the fold, the ensemble is always on the list of leading representatives for complex disputes.
Other recommended experts
Steven Cherny is one of the best trial lawyers at one of the most feared litigation firms, Quinn Emanuel. His intellect and litigation instincts are razor-sharp. Kristin Connarn has rich cancer research experience, which informs her prosecution, portfolio development and asset management practice. She and Bob Underwood keep Hogan Lovells out in front of the latest trends and developments in the life sciences – not just locally, but worldwide. John Iwanicki gives eminent boutique Banner Witcoff a strong presence in Boston. For more than three decades, life sciences companies of all stripes have profited from his blended prosecution and litigation skillset. Foley & Lardner’s sphere of patent operations is extremely broad – as it is for many of the firm’s individuals, John Lanza being a case in point. Instruct him on any brief involving the procurement, monetisation or enforcement of patents and he gets stellar results. Foley’s leading trial lawyer locally, though, is the formidable Matthew Lowrie. Down the hall in Boston, Christopher McKenna similarly stretches his talents widely, though not thinly; prosecution and portfolio management are at the heart of his practice, but he’s also well equipped for litigation. Latham & Watkins is renowned for its clout in patent litigation: it has trial lawyers the length and breadth of the country who are revved up for the biggest fights going. Warren Nachlis has been a fixture in the IAM Patent 1000 for many years; his recognition is well deserved, thanks to his deep licensing and technology transactions experience. Taking advantage of his international surroundings at Jones Day, he negotiates mission-critical deals for a global following across all innovative industries. Holding the fort in Boston, Charles Sanders racks up the wins in all key forums, including the PTAB, where his filing experience certainly comes in handy.
IAM Patent 1000 1467
Asher, Robert M
Partner – Sunstein LLP rasher@sunsteinlaw.com | www.sunsteinlaw.com
Robert M Asher is chair of the PTAB litigation group at Sunstein LLP. As a partner in this IP-focused law firm, his particular emphasis is on inter partes reviews where he is able to leverage his deep experience in patent litigation and patent prosecution. Mr Asher has been lead counsel on over two dozen inter partes reviews. Mr Asher has appeared before the Federal Circuit Court of Appeals on several occasions, most notably obtaining a reversal of an adverse inter partes review ruling on behalf of software patent client Arendi in its battle with Apple. Mr Asher has litigated patents involving technologies that include infrared thermometers, automotive trim carpets, interactive cable television, power converters, solar cells, microwave antennas, consumer electronic appliances, satellite tuners, robot arms, call routing, flame detectors and anterior cruciate ligament surgery. Mr Asher has extensive experience before the USPTO defending and preparing patent portfolios for litigation. His patent application work has encompassed a wide variety of businesses and technologies, including integrated circuits, data storage, interactive television, medical equipment, pharmaceuticals, digitising tablets, bottling and weighing equipment, lidar, microwave antennas, caching, scanning, printing, telecommunications and bar codes. Patents that Mr Asher has prosecuted have been used by clients to support multi-million-dollar acquisitions and secure millions of dollars through litigation against infringing companies. For example, he prosecuted the ActiveVideo patents successfully asserted in court against Verizon, producing a settlement of over $260 million. Mr Asher served as co-chair of the Patent Litigation Subcommittee of the American Bar Association Litigation Section for over a decade. He holds degrees in electrical engineering from the Massachusetts Institute of Technology and in law from Harvard Law School.
1468 IAM Patent 1000
Sunstein LLP 100 High Street Boston MA 02110-2321 United States T +1 617 443 9292 F +1 617 443 0004 See firm profile p1738 Professional associations • ABA • AIPLA • AIPPI
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Belliveau, Michael J
Partner – Clark+Elbing LLP mbelliveau@clarkelbing.com | www.clarkelbing.com
Michael J Belliveau exclusively focuses on the biotechnology and pharmaceutical fields. Dr Belliveau has over 20 years of patent prosecution experience. His practice combines his legal training with his scientific experience and knowledge to help identify commercially relevant solutions for biotech and pharma clients of all sizes. Dr Belliveau advises clients pursuing inventions in various fields of biotechnology and pharmaceuticals, including gene, cell and mRNA therapies, cancer therapeutics and diagnostics, infectious disease therapeutics and molecular diagnostics. As an experienced patent prosecutor, Dr Belliveau is adept at obtaining strong global patent protection that provides commercial advantages in the marketplace. Dr Belliveau represents numerous start-up biotechnology companies, utilising imaginative legal and technical approaches to help build a strong IP position from inception. Dr Belliveau also provides counselling on infringement and patent validity issues and post-issuance proceedings. Dr Belliveau has shepherded more than a dozen companies through their initial public offerings, working closely with securities counsel to ensure a smooth process. Additionally, Dr Belliveau has performed extensive IP due diligence analyses on behalf of venture firms for acquisition and investment purposes, as well as marketing and manufacturing clearances for biopharmaceutical products on behalf of several of his clients. Dr Belliveau received his PhD in neurobiology from Harvard University.
Clark+Elbing LLP 101 Federal Street 15th Floor Boston MA 2110-1800 United States T +1 617 428 7051 See firm profile p1668 Professional associations • Massachusetts Bar • USPTO Sample client list • AVROBIO • Cidara Therapeutics • Keros Therapeutics • Repare Therapeutics
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IAM Patent 1000 1469
Belt, Erik Paul
Partner – McCarter & English, LLP ebelt@mccarter.com | www.mccarter.com
Erik Paul Belt is a trial attorney specialising in patent, trademark and licensing disputes before the federal courts, arbitrations and the USPTO. He has extensive experience representing national and international clients in patent litigation before the federal courts throughout the country, including the US Court of Appeals for the Federal Circuit. Mr Belt has successfully enforced patent rights and has also defended companies accused of infringement. He has handled a wide range of technology cases involving, for example, software, diagnostic and medical devices, laboratory equipment, telecommunications electronics, water purification systems, light-emitting diodes, polymer technology, x-ray inspection systems and consumer products. Mr Belt’s litigation victories include a jury verdict of noninfringement after a one-week trial for a defendant in the plaintiff-friendly Eastern District of Texas. In another case in which he represented a patent owner, Mr Belt obtained penalties against an alleged infringer for making material misrepresentations to the court and for other misconduct, including an award of attorneys’ fees and striking of the validity defences. He also successfully moved to exclude the alleged infringer’s expert witness. This case settled on the first day of trial, after Mr Belt and his team defeated the accused infringer’s motion for summary judgment of non-infringement and won a number of motions in limine. Mr Belt writes and speaks on IP and litigation issues. He is a past president of the Boston Patent Law Association (BPLA) and, on behalf of the BPLA, has authored and submitted numerous amicus briefs to the Federal Circuit and Supreme Court. In 2017 the judges of the District of Massachusetts appointed Mr Belt to chair a blue-ribbon committee charged with drafting proposed revisions to the local rules governing patent infringement cases. That effort led to adoption in June 2019 of a new local rule for patent litigation in the district. He has been honoured annually as a Massachusetts Super Lawyer in the field of IP litigation and is listed in The Best Lawyers in America (2014 to 2021).
1470 IAM Patent 1000
McCarter & English, LLP 265 Franklin Street 14th Floor Boston MA 02110 United States T +1 617 449 6506 F +1 617 607 6035 See firm profile p11706 Professional associations • Alan D Lourie Boston IP American Inn of Court • BBA • BPLA
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Bromberg, Lee Carl
Partner – McCarter & English, LLP lbromberg@mccarter.com | www.mccarter.com
Lee Carl Bromberg has tried patent infringement cases on behalf of national companies in courts throughout the United States. He has a record of wins for his clients in pharmaceuticals, medical devices, life sciences, power systems, software and electronics, thanks to his skilful presentation of complex technical and scientific subject matter to courts and juries. In a medical device case, for example, Mr Bromberg secured a jury verdict denying any recovery on a claim for over $30 million in patent infringement damages. In a pharmaceutical case, he teamed with a New York firm to obtain a jury verdict of $65 million – the largest verdict of the year in Massachusetts. Mr Bromberg also obtained a verdict of infringement for Abbott Laboratories which upheld a multiyear licensing programme for patents directed to immunochemical diagnostic devices. He also obtained a technology licence arbitration award of over $11 million for an R&D lab that had developed groundbreaking medical technology. In the areas of electronics and software, he has won a $25 million judgment for wilful patent infringement in a case involving electromagnetic motors; a verdict of infringement and a multimillion-dollar settlement in a subsequent case; and a non-infringement verdict in the Eastern District of Texas defeating a software patent claim for $90 million – plus summary judgment of non-infringement for a maker of power converters, which foreclosed a multimillion-dollar damages claim. He has also defeated a multimillion-dollar claim based on speech recognition software patents and secured enforcement of a licensing programme for computer-aided design/computer-aided manufacturing (CAD/CAM) software. Mr Bromberg also won a jury verdict of noninfringement in plaintiff-friendly Marshall, Texas, defeating a $26.5 million claim based on a software patent for automated real estate valuation. In many cases, he has upheld his trial victory in the appeals court. His practice has involved pharmaceuticals, biotechnology, recombinant DNA, immunochemistry, high-speed chromatography, electrochemical biosensors, polymer plastics, intravenous valves and equipment, surgical techniques, diagnostic devices, voice recognition software, CAD/CAM software, website-operating software, telephone circuitry and call-routing systems, image-processing systems, electric motors, circuits, motor drives, electronic appliances and devices, mechanical compression packing and road-marking devices. Mr Bromberg has served as a court-appointed discovery master in patent litigations and led the taskforce that obtained implementation of local patent rules in the Massachusetts Federal Court.
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McCarter & English, LLP 265 Franklin Street 14th Floor Boston MA 02110 United States T +1 617 449 6538 F +1 617 443 6161 See firm profile p1706 Professional associations • ABA • AIPLA • BPLA
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Clarke, Marcie Beth
Partner – McCarter & English, LLP mclarke@mccarter.com | www.mccarter.com
Marcie Beth Clarke, PhD, helps clients develop effective worldwide IP strategies to protect and facilitate commercialisation of pharmaceutical products and platform technologies. She works with a broad range of clients, including start-ups, established pharmaceutical companies and academic institutions, particularly in the fields of biotechnology, molecular biology, immunology, microbiology, molecular diagnostics, gene therapy, antiviral therapeutics, agriculture and protein therapeutics. In particular, Dr Clarke has extensive experience in: • patent drafting; • worldwide patent prosecution; • patentability analyses; • freedom-to-operate and competitive landscape analyses; • IP opinions and diligence for financings, including initial public offerings; • patent validity and non-infringement opinions; • investigation and resolution of inventorship disputes; and • involvement in multi-million-dollar licensing strategies, negotiations and agreements. Dr Clarke has a passion for understanding the science and commercial objectives behind clients’ intellectual property and is known for her attention to detail and responsiveness when working with clients. She has been recognised as a “Massachusetts Rising Star” in Super Lawyers 2016-2020. Dr Clarke is also a member of McCarter & English’s IP Procedures Committee, which helps to establish internal practice guidelines based on new case law and patent office rules, and McCarter & English’s Diversity & Inclusion and Women’s Initiative Committees.
1472 IAM Patent 1000
McCarter & English, LLP 265 Franklin Street 14th Floor Boston MA 02110 United States T +1 617 449 6537 See firm profile p1706 Professional associations • BPLA • NAWL Sample client list • Generation Bio Co • Scholar Rock Inc • Synlogic
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DeCamp, James D
Partner – Clark+Elbing LLP jddecamp@clarkelbing.com | www.clarkelbing.com
James D DeCamp is a founding member of Clark+Elbing and a partner since 2002. He enjoys working with clients to understand fully their circumstances and to obtain practical commercial outcomes, efficiently and effectively. Mr DeCamp counsels clients in nearly all facets of patent law, including global patent prosecution, as well as the preparation of inventorship, patentability, non-infringement and invalidity opinions. He also has extensive experience in handling the complex IP issues that arise during due diligence. Mr DeCamp handles matters in a spectrum of technologies, including agriculture, life sciences and medicine, biotech, molecular biology and pharmaceutical sciences. His clients include start-ups, large and small companies, universities, medical centres, research institutions and academic inventors from North America, Europe and Asia. In an example of cross-border cooperation, together with inhouse and European counsel, Mr DeCamp has successfully defended key patents covering drugs in clinical trials in European opposition proceedings. In other instances, he has deployed with his colleagues strategies for revoking third-party patents. He has also developed a patent portfolio for protecting a humanised monoclonal antibody in clinical development which was licensed to a Fortune 500 company. As a scientist, Mr DeCamp was a research associate and postdoctoral fellow in the Department of Cellular and Developmental Biology at Harvard University. His research included work in the areas of plant developmental biology, plant storage proteins, chloroplast and nuclear gene expression, chloroplast transformation and protein chemistry.
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Clark+Elbing LLP 101 Federal Street 15th Floor Boston MA 02110-1800 United States T +1 617 428 0200 F +1 617 428 7045 See firm profile p1668 Professional associations • ABA • Federal Circuit Bar Association
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Elbing, Karen L
Partner – Clark+Elbing LLP elbing@clarkelbing.com | www.clarkelbing.com
Exceptional problem-solving skills combined with creative thinking characterise Karen L Elbing’s approach to patent prosecution, IP portfolio management and strategic counselling. Since co-founding Clark+Elbing in 1996, Dr Elbing has represented clients ranging from start-ups and educational institutions to Fortune 500 companies. Clients rely on her deep scientific background and legal acumen developed over her lengthy career to identify intellectual property, build and maximise worldwide patent portfolios through strategic patent prosecution, in-licensing and patent term extension and analyse competitors’ IP positions. She regularly carries out clearance analyses on key products and provides advice on patent infringement, validity and inventorship issues. Her practice touches on a wide range of technologies, including protein therapeutics (with a particular emphasis on antibody therapeutics), gene therapies, immunotherapies, companion diagnostics, drug-delivery systems and small-molecule therapeutics, as well as platform technologies such as antibody engineering approaches and emerging drug-discovery technologies such as DNA-encoded libraries. As a scientist, Dr Elbing studied molecular biology at Harvard University. She is the first author on research articles in Cell and the Journal of Bacteriology. She is also an original and ongoing contributor to Current Protocols in Molecular Biology. Prior to founding Clark+Elbing, Dr Elbing was a patent attorney at Fish & Richardson, where her practice included patent prosecution and litigation. Dr Elbing has been rated an AV Preeminent Lawyer, an honour based on strong legal ability and high ethical standards and shared by only 10% of attorneys nationwide. She has been described in client reviews as “superlatively thoughtful”, a “one-of-a-kind counselor” and “absolutely stand-out”.
1474 IAM Patent 1000
Clark+Elbing LLP 101 Federal Street 15th Floor Boston MA 02110 United States T + 1 617 428 7008 See firm profile p1668 Professional associations • Massachusetts Bar • US Court of Appeals for the Federal Circuit • USPTO
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Ellison, Jeffrey
Partner – Clark+Elbing LLP jellison@clarkelbing.com | www.clarkelbing.com
A partner at Clark+Elbing, Jeffrey Ellison advises clients on a wide range of patent-related matters, including the preparation and prosecution of patent applications; management of complex patent portfolios; analysis of patent validity, enforceability and infringement issues; drafting of patent licences and other agreements concerning the development and/or transfer of technology; and IP due diligence for venture capital investments, mergers and acquisitions, and licensing opportunities. Mr Ellison is well versed in patent portfolio management, the interplay of intellectual property with Food and Drug Administration (FDA) regulatory matters, and the evaluation and protection of business plans involving FDA-approved products. Mr Ellison’s practice emphasises inventions in various areas of technology, including pharmaceuticals, drug delivery systems, polymers and medical devices. Mr Ellison has given numerous presentations about IP issues of specific interest to the protection of FDA-approved products. These presentations typically emphasised the statutory requirements for the approval of generic drugs and biologics, and the resulting implications for patent drafting, patent prosecution and the valuation of various types of patent claims. Other topics included the relevance of the Doctrine of Equivalents to the protection of certain classes of FDAapproved products. Mr Ellison worked as a chemist in the pharmaceutical field prior to joining Clark+Elbing over 19 years ago.
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Clark+Elbing LLP 101 Federal Street 15th Floor Boston MA 2110-1800 United States T +1 617 428 7022 F +1 617 428 7045 See firm profile p1668
IAM Patent 1000 1475
Eisenstein, Ronald I
Partner – Nixon Peabody LLP reisenstein@nixonpeabody.com | www.nixonpeabody.com
Ronald I Eisenstein focuses his practice on advising biotechnology and pharmaceutical companies, research institutes and universities on patent portfolio management, post-issuance strategies, dispute management and due diligence. He is also a member of Nixon Peabody’s life sciences team. Leveraging his scientific background, extensive legal experience and business acumen, Mr Eisenstein strategically counsels clients on upcoming legal and business trends. He focuses his practice in the life sciences sector where he provides patent prosecution, interferences, oppositions, client counselling, transactional matters, due diligence and patent litigation services. He represents major US research institutions, US companies and foreign corporations in interferences before the USPTO, which have involved immune modulation including antibodies; gene therapy; cancer vaccines; angiogenesis modulation; personalised medicine, including diagnostics, proteomics, biomarkers, companion diagnostics and related systems; synthetic biology; small molecules; magnetic resonance imaging; and primate lentiviruses. Mr Eisenstein has extensive experience in prosecuting biotechnology, medical, and chemical cases, and counselling with respect to strategic management of IP portfolios, including due diligence and evaluation of portfolios held by third parties and responses to infringement and validity opinions, acquisitions and strategic use of oppositions. Additionally, Mr Eisenstein helps clients understand and effectively use post-issuance procedures such as oppositions, interferences and inter partes reviews – both offensively and defensively. He also provides freedom-to-operate guidance to clients, as well as due diligence for acquisitions and financing.
1476 IAM Patent 1000
Nixon Peabody LLP Exchange Place 53 State Street Boston MA 02109- 2835 United States T +1 617 345 6054 See firm profile p1716
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FitzGerald, Mark James
Partner – Nixon Peabody LLP mfitzgerald@nixonpeabody.com | www.nixonpeabody.com
Mark James FitzGerald concentrates his practice on IP and patent law, representing industry and academic/non-profit institution clients from the United States and abroad for the strategic development of patent portfolios, analyses of freedom to operate, patent validity and infringement and associated opinion preparation, transactional due diligence, and associated client counselling. Leveraging his molecular biology background and experience, his work relates to the biotechnology patent arena, working with clients to secure meaningful patent protection for their own technology, as well as assisting them in charting a course through the patent protection shoals of their competitors. Mr FitzGerald has prosecuted patents and counselled clients in microbiome-related technology involving IBD, Crohn’s, C diff and other gut dysbioses; CNS disorders, eating disorders and vaginal dysbioses; recovery from post-antibiotic dysbioses; skin dysbioses; and cosmetics. Mr FitzGerald has obtained issuance of US patents covering microbiome technology, including therapeutics for food allergy, eating disorders and asthma for numerous clients. In addition to strategic patent portfolio development, Mr FitzGerald also works with clients to evaluate the patent landscape regarding their technology, and the strengths and weaknesses of their competitors’ patent positions, consulting on design-around options, as well as providing reasoned opinions regarding patent invalidity and noninfringement where necessary. Additionally, he has spoken at a number of conferences and summits and is the editor of Nixon Peabody’s Gut Check microbiome patents newsletter.
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Nixon Peabody LLP Exchange Place 53 State Street Boston MA 02109- 2835 United States T +1 617 345 1058 See firm profile p1716 Professional associations • ABA • AIPLA • Massachusetts Bar Association
IAM Patent 1000 1477
Hansen, Shawn
Partner – Nixon Peabody LLP shansen@nixonpeabody.com | www.nixonpeabody.com
Shawn Hansen is a trusted adviser to his clients across a range of industries in the development and execution of IP enforcement strategies that best serve their business objectives. He has a successful track record of more than two decades representing his clients in IP litigation in federal courts throughout the United States, including across Northern California, and also has substantial experience litigating patent cases before the US International Trade Commission. Mr Hansen excels at synthesising cutting-edge technologies with legal strategy and is particularly adept with technologies, from software and semiconductors to pharmaceuticals and medical diagnostics. Mr Hansen also brings to bear exceptional capabilities to communicate complex technology to lay audiences and to keep the forest and the trees in focus at once. He has represented technology companies, as well as academic institutions, in large-scale patent enforcement campaigns and leverages this combined experience when representing his clients that are focused on protecting their innovations. Mr Hansen is dedicated to helping research institutions and other clients in the life sciences, technology and media industries craft and execute intellectual strategies that optimise for their business objectives. These include high-stakes litigation to technology transfer and IP licensing activities.
Nixon Peabody LLP One California Plaza 300 S Grand Ave Suite 4100 Los Angeles CA 90071 United States T +1 213 629 6190 F +1 855 780 9262 See firm profile p1716 Professional associations • ABA • AIPLA • Federal Bar Association
1478 IAM Patent 1000
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Larsen, Charles
Partner – White & Case LLP charles.larsen@whitecase.com | www.whitecase.com
Charles Larsen is an IP partner based in White & Case’s Boston office, with a dual practice in London. He concentrates his practice on providing strategic patent advocacy and is licensed to practise before the US Patent and Trademark Office, the European Patent Office (EPO), the US district courts and the UK High Court. His patent practice includes advising on multi-jurisdictional disputes and conducting patent validity, infringement and freedomto-operate studies, as well as IP due diligence, in the United States and Europe. He also advises clients in inter partes reviews, European oppositions, other post-grant proceedings, and US and European litigation strategies. He has served as counsel of record in 23 Patent Trial and Appeal Board proceedings and re-examinations, and in numerous EPO oppositions. With a unique trans-Atlantic approach to patent disputes in the United States and Europe, Mr Larsen is also a leading voice in the United States on preparing US companies for Europe’s Unified Patent Court. Mr Larsen’s practice also includes portfolio due diligence for equity investments and acquisitions, working with clients to structure their transactions to address the IP risks involved. A significant part of his practice involves advising clients on developing and positioning strategic patent portfolios for licensing and litigation. Mr Larsen has advised on a wide range of engineering and life sciences applications, including medical technologies, chemistry and pharmaceuticals, drug delivery systems, consumer electronics and signal processing, combustion and energy technology, fluid mechanics, manufacturing processes, software and hardware. In the medical technology sector, his experience spans a number of areas, including implantable heart pumps, respiratory systems, orthopedics, neuromonitoring, spine technology, electrical stimulation, vascular technology, healthcare informatics, biological manufacturing and diagnostics. Additionally, Mr Larsen provides counsel to clients outside of the life sciences sector in industries such as the consumer products, finance, media and technology industries.
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White & Case LLP 75 State Street Boston MA 02109-1814 United States T +1 617 979 9336 See firm profile p1740
IAM Patent 1000 1479
Mello, Jill Ann
Partner – McCarter & English, LLP jmello@mccarter.com | www.mccarter.com
Jill Ann Mello, PhD, has 20 years of experience as a patent professional. Her practice focuses on the life sciences and includes particular experience in the technology areas of biotechnology, molecular biology, immunology, microbiology, molecular diagnostics, cell-based therapeutics, nucleic acid therapeutics, protein therapeutics including antibodies, small molecule therapeutics, drug formulations, drug discovery platform technologies and bioinformatics. Dr Mello has extensive experience assisting clients in the strategic development and management of complex patent portfolios worldwide that are aligned with her clients’ business objectives. She assists clients with patentability analysis, validity, infringement and freedomto-operate opinions, with IP due diligence for acquisitions, licensing and financings, including initial public offerings, as well as with the negotiation of collaboration and licence agreements. Dr Mello has experience with involvement in opposition proceedings before the European Patent Office. She represents a wide array of clients including early stage companies, small and mid-size biotechnology companies, pharmaceutical corporations, academic institutions and venturecapital firms. Prior to joining McCarter & English, Dr Mello earned her PhD in biochemistry from the Massachusetts Institute of Technology. Her doctoral thesis focused on elucidating the therapeutic mechanisms of the anticancer drug cisplatin. Following her PhD, Dr Mello carried out postdoctoral research on chromatin dynamics at the Curie Institute in Paris, France. Her work has been presented at international scientific meetings and published in leading peer-reviewed journals.
1480 IAM Patent 1000
McCarter & English, LLP 265 Franklin Street 14th Floor Boston MA 02110 United States T +1 617 449 6563 See firm profile p1706 Professional associations • BBA • BPLA • WBA
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Resnick, David
Partner – Nixon Peabody LLP dresnick@nixonpeabody.com | www.nixonpeabody.com
David Resnick focuses his practice, which includes patent procurement, strategic patent management, transactional matters and associated client counselling, in the life sciences industry. He has extensive experience prosecuting applications for major US research institutions and domestic and international corporations across a broad range of subject matters, including proteomics, tissue engineering, drug delivery systems, stem cells, angiogenesis modulation, microbiomes, cancer vaccines, treatment of cancer, immune modulation, medical devices and diagnostics. Mr Resnick has developed a particular focus on pharmacogenomics, proteomics and disease biomarkers and their application in the evolving field of personalised medicine. He has represented major US research institutions, US companies and foreign corporations in interferences before the US Patent and Trademark Office that have involved complex technical areas. In addition, Mr Resnick regularly assists clients in building and evaluating their IP portfolios, as well as in evaluating the intellectual property held by competitors. He routinely conducts freedom-to-operate analyses and prepares infringement and validity opinions involving complex and cutting-edge technologies. Mr Resnick has written articles on patent prosecution practice, personalised medicine and technology issues for Nature Biotechnology, The Journal of Biolaw & Business and Personalized Medicine, among other publications. He is also a member of the editorial board of Pharmaceutical Patent Analyst.
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Nixon Peabody LLP Exchange Place 53 State Street Boston MA 02109-2835 United States T +1 617 345 6057 F +1 866 947 1613 See firm profile p1716 Professional associations • AIPLA • Association of University Technology Managers • Personalized Medicine Coalition
IAM Patent 1000 1481
Sparks, Jonathan
Partner – McCarter & English, LLP jsparks@mccarter.com | www.mccarter.com
Jonathan Sparks, PhD, is chair of McCarter & English’s IP practice group and has almost 20 years of experience as a patent professional representing clients in diverse areas of technology. Dr Sparks is known for his technical and strategic acumen – as he decisively identifies and aligns IP value with business objectives. He counsels clients on general IP matters, including patent prosecution, domestic and foreign patent strategy, due diligence and patent lifecycle management. He also assists clients with the preparation of patentability, infringement, validity and freedom-to-operate opinions. His clients include individual inventors and companies of all sizes. Dr Sparks has assisted clients in commercialising technology in the biotech, chemical, pharmaceutical, alternative energy, mechanical device and medical device areas. Prior to starting his legal career, Dr Sparks did research in the areas of physical biochemistry and molecular biology while obtaining his PhD at Texas A&M University. This work was presented at various scientific meetings and published in leading scientific journals.
McCarter & English, LLP 265 Franklin Street 14th Floor Boston MA 02110 United States T +1 617 449 6509 See firm profile p1706 Professional associations • AIPLA • BBA • BPLA
1482 IAM Patent 1000
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Sunstein, Bruce D
Partner – Sunstein LLP bsunstein@sunsteinlaw.com | www.sunsteinlaw.com
Bruce D Sunstein is the founder of Sunstein LLP, a Boston law firm of 25 attorneys, handling work in all phases of intellectual property. His practice focuses on the development, management and monetisation of IP portfolios. Patents issuing on applications on which Mr Sunstein has worked have led to eight and nine-figure infringement awards. He has served as an expert witness, a mediator and a special master in a range of IP disputes. Mr Sunstein is a frequent lecturer in IP matters and has authored numerous papers on IP subjects. Mr Sunstein provides strategic advice for developing and enforcing IP rights and for structuring technology-based business transactions. He provides representation in inter partes review proceedings, ex parte reexaminations and patent appeals to the PTAB and the Federal Circuit. Mr Sunstein has been named by the publishers of Law & Politics and Boston magazine as among the top 100 lawyers in Massachusetts. His peers have selected him for inclusion on the Best Lawyers in America list in the fields of Patent Law and Litigation – Intellectual Property, and he has been named a Massachusetts Super Lawyer for his intellectual property work. His practice involves computer hardware and software (including business methods and artificial intelligence), quantum computing, optical and x-ray systems, medical devices, pharmaceuticals, bioinformatics, electronic circuits and systems, communications and speech, and mechanical devices. Mr Sunstein is a named co-inventor of a cannulated screw system for use in knee surgery (Patent 9,452,007) and a business method for assisting in the prevention of identity theft (Patent 6,985,887). Mr Sunstein holds degrees from the Massachusetts Institute of Technology (MIT) (BS), Indiana University (MA) and the University of California at Berkeley School of Law (JD). He also serves as a mentor for start-up companies in the MIT venture mentoring service.
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Sunstein LLP 100 High Street Boston MA 02110-2321 United States T +1 617 443 9292 F +1 617 443 0004 See firm profile p1738 Professional associations • AIPLA • BPLA • IEEE
IAM Patent 1000 1483
Varma, Anita
Partner – White & Case LLP anita.varma@whitecase.com | www.whitecase.com
Anita Varma is chair of White & Case’s global IP practice group. She is based in the firm’s Boston office, with a dual practice in London. She is qualified to practise before the US Patent and Trademark Office (USPTO) and the European Patent Office (EPO). Ms Varma provides strategic patent counselling to life sciences industry companies, guiding them through every stage of a product’s lifecycle. She works with clients in obtaining enforceable claims and supporting them in post-grant proceedings, as well as in developing and executing both offensive and defensive patent strategies. She also conducts strategic review of patent portfolios to identify strengths and weaknesses, and opportunities to minimise threats and maximise revenue. As part of this strategic counselling, Ms Varma regularly advises on patentability, validity and freedom-to-operate issues, provides pre-litigation assessments and opinions regarding patentability, conducts IP due diligence for strategic transactions, and advises on listing and delisting matters in the US Food and Drug Administration’s Orange Book. Clients also benefit from Ms Varma’s experience in navigating biosimilar litigation strategies. She has skilled expertise among diverse life sciences subjects, including immunology, antibody therapeutics, RNA interference therapeutics, small molecules, gene therapy, biotechnology, pharmaceuticals, clustered regularly interspaced short palindromic repeats (DNA sequences), ocular products, biophotonics, messenger RNA therapeutics, protein therapeutics and protein traps. Ms Varma is named one of the top lawyers in the United States for patent prosecution matters (Legal 500), and is viewed by competitors as “an extremely skilled attorney with both legal and business smarts” (LMG Life Sciences). Clients appreciate her “’business savvy’ approach and her familiarity with the biotechnology and pharmaceutical industries” and note that “the experience [of working with Anita] has been very positive” (independent survey by Chambers and Partners).
1484 IAM Patent 1000
White & Case LLP 75 State Street Boston MA 02109-1814 United States T +1 617 979 9326 See firm profile p1740
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Laccotripe Zacharakis, Maria Partner – McCarter & English, LLP mzacharakis@mccarter.com | www.mccarter.com
Maria Laccotripe Zacharakis, PhD, has close to 25 years of experience in IP matters. Dr Laccotripe Zacharakis focuses on the area of life sciences, especially in the fields of biotechnology, molecular biology, immunology, biochemistry, interfering RNA, microbiology, tissue engineering, molecular diagnostics, protein therapeutics and stem cell therapies. She assists clients in developing and implementing effective IP strategies and building strong patent portfolios that protect and facilitate commercialisation of biological and pharmaceutical products, as well as platform technologies. She also assists clients, such as companies and investors, in evaluating IP assets in connection with acquisitions, licensing, collaborations and financing. Dr Laccotripe Zacharakis has developed worldwide strategies to protect products in the market with multi-billion annual sales, as well as performed the IP due diligence for multiple multi-million dollar transactions. She represents a broad range of clients, including start-up biotechnology and pharmaceutical companies, established biopharmaceutical corporations and academic institutions. Dr Laccotripe Zacharakis has extensive experience in: • patent preparation and worldwide patent prosecution; • due diligence evaluations of patent portfolios; • analysis, evaluation and opinions on the patentability of inventions; • freedom-to-operate assessments; • patent validity opinions; • competitive landscape analyses; • interference proceedings before the Patent Trial and Appeals Board; • opposition proceedings before the European Patent Office; • investigating and resolving inventorship disputes; and • involvement in licensing strategies, negotiations and agreements.
McCarter & English, LLP 265 Franklin Street 14th Floor Boston MA 02110 United States T +1 617 449 6512 See firm profile p1706 Professional associations • AIPLA • BBA • BPLA
Dr Laccotripe Zacharakis has also conducted pre-litigation investigations and advised clients on patent infringement, Biological Price Competition and Innovation Act litigations and abbreviated new drug application actions under the Hatch-Waxman Act, as well as played an active role in the proceedings when they matured beyond the investigatory stage. Dr Laccotripe Zacharakis is the managing partner of McCarter & English’s Boston office.
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IAM Patent 1000 1485
United States: Michigan
Brooks Kushman PC
A Michigan-based IP outfit with an outstanding national reputation, Brooks Kushman nets excellent reviews from those who know it best: “It is from a smaller market, meaning its rates are more affordable, but the quality of its work is on par if not better than any major market law firm. It functions like an extension of in-house teams, is extremely easy to partner with and gives practical and timely advice whatever your IP needs. Its lawyers have abundant experience in non-US IP law and guide clients on international issues expertly, collaborating with a wide network of foreign associates as needed.” Its prosecutors are “real hands-on engineers at heart and quickly understand the most technical of inventions” before writing “clean and succinct applications for a very reasonable price”. “They are good at getting to the heart of the novelty and engage in compact prosecution, which brings cases to grant faster, saving further on costs.” Tiffany Fidler and Michael Brodbine, both staunch protectors for innovators of all stripes, co-chair the practice. Fidler has a background in mechanical engineering and a special affinity for automotive and aviation technologies. Brodbine is blessed with wonderful mentoring skills, which he displays internally as the associate-trainer in chief and externally for the benefit of his many global patrons. CEO Sangeeta Shah also provides leadership; she has cultivated post-grant expertise and oversees much of the group’s inter partes review activities. Brooks Kushman capitalises on its litigation pedigree to fine-tune claim drafting strategy, shielding patent rights from litigation challenges. Some of the firm’s top advocates are litigation co-chairs John LeRoy and Marc Lorelli, and president of Brooks Kushman Frank Angileri. “John is someone you can trust with your most important technology and highest exposure patent and trade secret litigations. He is a winner who sees strategic opportunities other even big-name lawyers miss.” Lorelli and Angileri spearheaded a team of trial attorneys that recently triumphed for Ford Motor Company in a 13 design patent claim where the jury returned a verdict of wilful infringement and the judge awarded $2.1 million in attorneys’ fees – a result affirmed on appeal. See p1664 for firm profile
Dickinson Wright
Debuting in the IAM Patent 1000 Michigan rankings this year, Dickinson Wright provides abundant
1486 IAM Patent 1000
Firms Brooks Kushman PC
See p1664
Honigman Harness, Dickey & Pierce, PLC Reising Ethington PC
See p1722
Dickinson Wright Fishman Stewart PLLC Foley & Lardner LLP Howard & Howard Quinn IP Law
support to rights holders from soup to nuts. Its specialists are adept at prosecuting applications through to grant at the USPTO and internationally, strategic in litigation and experienced at negotiating licensing and other deals. The set mines a rich seam of knowledge in the automotive and medical device sectors but has the technical wherewithal for just about anything. Anchoring the IP litigation practice, John Artz has fought battles in district courts across the country and the ITC. He has also advocated at the Federal Circuit in numerous appeals and recently won a first-of-its-kind fees and costs award for client Hikansut, which filed a patent infringement suit against the US government in the Court of Federal Claims, upheld, creating new jurisprudence to assist patent holders in lawsuits against the government.
Fishman Stewart PLLC
The attorneys at Fishman Stewart possess exemplary technical credentials enhanced, in many cases, with real-world engineering experience – they communicate with inventors one-to-one and prepare stronger, broader patent claims as a result. They also understand the business of intellectual property, walking in step with commercial executives and offering advice to fulfil company objectives. A brilliant corporate adviser, Michael Stewart is one of the top all-rounders in Michigan; he can handle anything you can throw at him, including court litigation, and is an expert at IP value creation.
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United States: Michigan Foley & Lardner LLP
Intellectual property is a central pillar of Foley & Lardner’s 360-degree commercial service. Highly skilled in all facets of patent protection, enforcement and monetisation, and broad in its technical and industry coverage, the firm is an excellent one-stop shop. In Detroit, local IP practice leader and chair of the mechanical and electromechanical technologies practice Marcus Sprow is more than just a useful contact – he’s an essential choice for portfolio management and IP transactions with niche expertise in venture capital investment in technology and government and university contracting.
Harness, Dickey & Pierce, PLC
Venerable IP firm Harness Dickey is a long-established leader in the field of automotive technologies but well-versed in computer-related patent assignments, too. It has robust drafting and prosecution skills – it files nearly 5000 patents in the United States annually – but adds tremendous value with its cutting-edge expertise in overcoming Section 101 challenges. It has a new entrant in the IAM Patent 1000 this year in Glenn Forbis, underscoring the group’s litigation bench strength. Forbis is an accomplished lead trial attorney who recently secured a jury verdict of wilful infringement – and a lost profits damages award – in favour of Western Plastics in an Eastern District of North Carolina lawsuit against Dubose Strapping. David Utykanski is also recommended for litigation – a major part of his wide-ranging patent procurement, enforcement and commercial exploitation practice. Harness Dickey’s recent highlights include forming a new agricultural and food and beverages industries team, captained by Bryant Wade, whose combination of US and global IP expertise is a claim to fame. Other top contacts for prosecution include Mark Elchuk – a go-to for computer and electromechanical matters – and Paul Keller, a vastly experienced lawyer in the automotive, aerospace, chemistry and energy fields.
Honigman
“Honigman really understands companies’ strategic patenting goals and takes a portfolio-wide view when giving advice, which is quite rare – many law firms are unable to look beyond individual matters and often get lost in the details.” “It is as thorough, thoughtful and high quality as any of the BigLaw players, but charges far more reasonable rates.” Reviews for leading individuals are similarly enthusiastic: IP chair Jonathan O’Brien is “easy to discuss matters with because he understands the bigger picture in terms of what you are looking to accomplish. He’s a mastermind when it comes to
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Individuals: litigation Frank A Angileri Brooks Kushman PC John Artz Dickinson Wright E Colin Cicotte Reising Ethington PC Glenn E Forbis Harness, Dickey & Pierce, PLC Richard W Hoffmann Reising Ethington PC J Michael Huget Honigman John S LeRoy Brooks Kushman PC Marc Lorelli Brooks Kushman PC Gregory Morris Honigman Matthew Schmidt Reising Ethington PC Sangeeta G Shah Brooks Kushman PC Michael B Stewart Fishman Stewart PLLC David Utykanski Harness, Dickey & Pierce, PLC
efficient prosecution approaches.” A chemistry PhD, he has abundant life sciences industry experience and is a top-drawer global portfolio manager and counsellor for prestigious pharmaceutical companies. Fernando Alberdi and Gregory Morris also have life sciences doctorates (biochemistry/ immunology and organic chemistry respectively) but play different roles. Alberdi is a patent strategy sage, particularly in the biotechnology domain, while Morris is a top brand-side Hatch-Waxman litigator. For high-technology and mechanical engineering matters, the person to seek out is patent group co-
IAM Patent 1000 1487
United States: Michigan Individuals: prosecution Fernando Alberdi Honigman William Boudreaux Barnes & Thornburg LLP Michael S Brodbine Brooks Kushman PC Kelly K Burris Burris Law, PLLC E Colin Cicotte Reising Ethington PC Eric Dobrusin The Dobrusin Law Firm Mark D Elchuk Harness, Dickey & Pierce, PLC Tiffany Fidler Brooks Kushman PC Grant Griffith Honigman Eric T Jones Reising Ethington PC Paul A Keller Harness, Dickey & Pierce, PLC
leader Brett Krueger, who, alongside Grant Griffith, undertakes rigorous work for Google in emerging areas such as speech translation, machine learning and artificial intelligence. Michael Huget, Morris’s litigation counterpart in the technology theatre and a seasoned trial lawyer, garners rave reviews: “Mike is a great lawyer who partners closely with the C-Suite in bringing light to the protective and assertive practices of patent law. He educates and advises his clients in ways that are profoundly useful.”
Howard & Howard
A full-service outfit with an entrepreneurial and business-oriented culture, Howard & Howard earns its first inclusion in the IAM Patent 1000 this year following recommendations from overseas and closer to home. A Canadian source highlights the firm’s medical device work and notes the high degree of
1488 IAM Patent 1000
Brett Krueger Honigman Jean McCarthy Quinn IP Law Jonathan P O’Brien Honigman Christopher W Quinn Quinn IP Law Sangeeta G Shah Brooks Kushman PC Dustin H Shunta Warner Norcross + Judd LLP Marcus Sprow Foley & Lardner LLP James D Stevens Reising Ethington PC Michael B Stewart Fishman Stewart PLLC David Utykanski Harness, Dickey & Pierce, PLC Bryant Wade Harness, Dickey & Pierce, PLC
trust clients place in it, while a domestic peer cites Jake Grove and Gerald McGlynn as forming a “strong and seasoned litigation team”.
Quinn IP Law
A high-calibre prosecution set-up that values patent quality above all else, Quinn IP Law is the discerning choice for innovative companies seeking to procure cornerstone IP assets to build their business. Flexible with its billing arrangements, this cost-conscious set appreciates budget needs and works with impressive efficiency and economy. Founding partner Christopher Quinn has a passion for supporting individuals and companies throughout all phases of the innovation process; feeding off it, those he represents carry enhanced energy into their creative efforts. Jean McCarthy is similarly dynamic and puts 110% into designing and implementing US and global patent strategies.
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United States: Michigan Reising Ethington PC
Established in Detroit over 150 years ago, Reising Ethington has the richest tradition in Michigan intellectual property. It sees the whole picture for its clients and gives perspicacious advice laced with unique insights harvested through constant engagement in high-level global IP asset management, patent litigation, post-grant proceedings and competitive landscape analysis. Several of the firm’s leading lights including Colin Cicotte, Matthew Schmidt and Eric Jones contribute on many fronts. Cicotte has a dual ranking in the guide, appearing on both the prosecution and litigation tables, highlighting his versatility and maturity on both sides of the contentious/noncontentious divide. His technical compass points north to electrical, mechanical and computer technologies. Equally strong in these areas, Schmidt procures patents deftly and helps rightsholders make the most of them in the real world. Jones’ well-founded knowledge of patents, brands and trade secrets gives him an edge. James Stevens and Richard Hoffmann choose to specialise; Stevens focuses on global portfolio management and opinion work and Hoffman litigates. A tally of IP disputes numbering into the triple digits has given him ample opportunities to hone and showcase his oral advocacy. See p1722 for firm profile
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Other recommended experts
William Boudreaux gives strategic patent advice that goes straight to the heart of the business matters facing his pharmaceutical and biotechnology clients. Enthusiastically recommended, “Bill’s knowledge and commitment to service are unsurpassed. He supervises a terrific team that produces work of the highest quality and in a timely fashion. His combination of in-house and private practice experience renders him particularly well suited to giving practical, commercially-oriented advice.” Find him in his Ann Arbor office at Barnes & Thornburg. Kelly Burris is a smart selection for mechanical, materials science and electrical patent matters and for comprehensive and strategic portfolio management. Passionate about supporting her clients, she tailors her work and service to their needs with precision. She is the founder of Burris Law. Having written several published works on intellectual property, Eric Dobrusin stands out for his erudition. He puts his sharp mind to great practical use, too, and dispenses wise counsel to companies innovating in the materials, biomedical and automotive fields. He founded the Dobrusin Law Firm. An expert in videogame intellectual property and electrical engineering and computer science more broadly, Dustin Shunta maintains a vibrant practice at Warner Norcross + Judd.
IAM Patent 1000 1489
United States: Minnesota
Carlson Caspers Vandenburgh & Lindquist, PA
Patent litigation is the bread and butter of Carlson Caspers, a boutique that relishes diving into cuttingedge technologies, unanswered legal questions and high-stakes business issues in the courtroom. Alan Carlson, Philip Caspers, Derek Vandenburgh, Timothy Lindquist, Doug Williams and Tara Norgard all bring the heat and have major jury verdicts and bigticket awards on their CVs. Their collective track record of success spans district courts across the country, the PTAB, the Federal Circuit, the Supreme Court and arbitral forums; wherever a dispute takes them, they are ready with strategies that instantly turn things in their favour.
Dorsey & Whitney LLP
Companies facing off against competitors in missioncritical patent infringement suits rely on Dorsey & Whitney for full-bodied representation. Its trial lawyers – of which it has many between its Salt Lake City, Seattle, Denver and Minneapolis offices – are ready to roll in any forum and in disputes involving just about any technology. Minneapolis-based Clint Conner is one of the winningest among them. He has ample ITC experience – some of it gained representing Japanese and other companies on US matters during a stint in Tokyo – and recently settled a matter filed at the ITC (and in parallel in the Northern District of Ohio) by LILLEbaby against client BabyBjörn, a household-name childcare products company.
Fish & Richardson
Towering boutique Fish is a compelling choice for the most dynamic, innovative and prestigious companies in the life sciences; its global capabilities, technical know-how, prosecution prowess, deal-making record and trial supremacy give it a huge advantage. The firm has a concentration of industry experts in its Twin Cities office, including Patrick Finn, Teresa Lavoie, Betsy Flanagan and John Adkisson. Prosecution maestro and all-round strategic counsellor Finn “understands both hardcore biotechnology and business, and is a true partner to clients in their efforts to bring lifesaving treatments to patients”. Throughout the patent and product lifecycle, Lavoie provides essential insight, analysis and action plans, and has been sensationally successful in developing portfolios that realise billions of dollars in value on sale. An assured litigator, Flanagan recently represented Mayo Medical Laboratories in a suit against Athena Diagnostics that raised fundamental questions
1490 IAM Patent 1000
regarding the patent eligibility of medical diagnostic tests, earning a critical win at the Federal Circuit; the Supreme Court’s denial of Athena’s petition for cert in January 2020 brought the case to a close. In this litigation, the district court and Federal Circuit cited Mayo’s 2012 precedent-setting Supreme Court win against Prometheus, which was also orchestrated by Fish. In the recent matter, Flanagan worked alongside John Adkisson, a Hatch-Waxman ace who has also been making waves in biosimilar litigation. Accustomed to leadership, having previously helmed the firm’s market-leading, 200-plus lawyer litigation group, Adkisson assumed the post of president and CEO in February 2020. Other Minnesotan stars include William Woodford and John Dragseth. Woodford has led trial teams to emphatic wins, but also spends his time designing alternative fee models and establishing efficient strategies to bring down the cost of litigation – initiatives that form a central plank of Fish’s wider innovation effort. Dragseth is celebrated as one of the country’s pre-eminent appellate lawyers. Special attention should also be paid to Fish’s prolific postgrant offering – particularly considering its recent milestone in becoming the first firm to chalk up 1,000 PTAB appearances. The post-grant group is co-chaired by Dorothy Whelan, who has played a key strategic role in hundreds of those appearances. Coming in for praise, Michael Hawkins “demonstrates aa complete mastery of inter partes review practice in terms of filing and defending petitions”. His recent work highlights, though non-disclosable, have all seen him represent companies that anyone would know. Stuart Nelson has handled inter partes reviews in the triple digits and is another rock-solid choice.
Fredrikson & Byron PA
Highly proficient at the intersection of intellectual property, technological development and business, Fredrikson & Byron combines a sophisticated patent offering with complementary insight in data privacy, cybersecurity and other matters of importance to innovative companies. Communicating on a one-toone level with inventors, in-house counsel and the C-suite, its attorneys make light work of complex prosecution, litigation and transactional briefs. Taking the reins of the prosecution group, Thomas Hipkins homes in on clients’ underlying objectives, accurately analyses the risk landscape and proposes optimal patent protection strategies. He supports, among others, a diversified technology and manufacturing entity and a pioneering medical diagnostics company – both global leaders. For the latter, he links up with
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United States: Minnesota Firms: prosecution
Firms: transactions
Highly recommended
Fish & Richardson
Fish & Richardson
Fredrikson & Byron PA
Schwegman Lundberg & Woessner PA See p1724
Robins Kaplan LLP
Shumaker & Sieffert PA
Schwegman Lundberg & Woessner PA See p1724
Recommended Fredrikson & Byron PA
run the standard playbook, but carefully calibrate strategies for each matter.
Greenberg Traurig LLP
Greenberg Traurig LLP
Merchant & Gould Patterson Thuente IP Seager Tufte & Wickhem LLP Chuck Segelbaum in an effective pairing. Segelbaum gets right down to business, figuratively and literally: his advice is straightforward and direct, as well as commercially focused. Extensive engagement in due diligence has given him a fine appreciation of patent value. This is shared by Ann Ladd and David West, the central pillars of the firm’s technology transactions practice. They have an informed view of the market and great judgement, which they capitalise on in practical and problem-solving ways. Ladd is further applauded for her “exceptional responsiveness and partnering approach to achieving clients’ goals” – predominantly within the life sciences, medical technology and healthcare industries. These are also strongholds for West, although her recent deal activities have been concentrated in the manufacturing sector. Another secret to the ensemble’s contentious success is the dynamic teamwork that sees Kurt Niederluecke, Lora Friedemann and Grant Fairbairn regularly collaborate. Niederluecke and Friedemann, for example, recently showed their tenacity in defending Medtronic in a suit filed by Teleflex Innovations asserting infringement of seven patents; they succeeded in having the plaintiff’s preliminary injunction motion denied and stayed the district court case upon institution of more than 10 inter partes reviews seeking to invalidate the plaintiff’s patent claims. Niederluecke and Fairbairn, meanwhile, are representing Edelbrock against competitor Whipple Superchargers in a dispute involving superchargers and intercoolers for performance cars. They don’t just
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With its entrepreneurial, innovative mindset, Greenberg Traurig is the perfect match for businesses in the Twin Cities; and as intellectual property is a focal point of its Minnesotan offering, it’s a great choice for vital patent matters. Alexander Kim, who anchors the practice, enjoys a sterling reputation locally and acts for a St Paul-based civil engineering company. Fluent in Korean, he also attracts a slew of instructions from the Asia-Pacific region and has recently successfully prosecuted a US patent for a university and research and development foundation in Seoul – a matter that was transferred to him from another firm which had allowed the application to languish. Kim has a background in physics and chemistry and an extremely diverse workload from a technology perspective, ensuring that he stays sharp and ready for anything.
Merchant & Gould
Merchant & Gould is a major deal in Minneapolis: headquartered in the city, it has been at the forefront of local IP practice for over 120 years. It is home to a large contingent of attorneys, patent agents, project managers, paralegals and other staff who collectively provide a 360-degree patent service encompassing myriad scientific and engineering disciplines. Those embroiled in complex cases would do well to call in litigator Rachel Hughey, an accomplished advocate and brief writer who knows her way around the Federal Circuit: she’s a former law clerk at the appellate body and has supervised many appeals in her private practice career.
Patterson Thuente IP
The complete package, Patterson Thuente IP is a discerning choice for high-level strategic patent counsel, precise and efficient prosecution services and robust representation in complex litigation. Notable recent developments include the October 2020 addition of David Swenson as chair of the
IAM Patent 1000 1491
United States: Minnesota Firms: litigation
Individuals: prosecution
Carlson Caspers Vandenburgh & Lindquist, PA
Highly recommended
Fish & Richardson
Timothy Bianchi Schwegman Lundberg & Woessner PA
Robins Kaplan LLP Dorsey & Whitney LLP Fredrikson & Byron PA Merchant & Gould Patterson Thuente IP
litigation practice. A force to be reckoned with at trial, Swenson is also distinguished by his appellate expertise and abundant appearances at the Federal Circuit, and debuts in the IAM Patent 1000 this year. Making their return to the rankings, meanwhile, are James Patterson, Brad Pedersen and Amy Salmela – three professionals with broad IP horizons who make a difference for clients in many meaningful ways. Patterson has instilled an unwavering service mentality in the group while setting the highest standards as a portfolio manager, clear-sighted global strategist and opinion giver. Chair of the patent group Pedersen sees the whole playing field, too, thanks to his diverse experience in technology, entrepreneurship and law; like Patterson, he has a talent not just for creating valuable IP assets, but also for putting them to use in business. Commercial growth is likewise an outcome prioritised by Salmela, who is blessed with rich international legal knowledge and excellent connections.
Robins Kaplan LLP
Few do it better in the courtroom than Robins Kaplan: outthinking, outworking and generally running rings around opponents, the practitioners in its IP and technology litigation group have pursued perfectly pitched, custom-designed strategies to victory in myriad technology areas and in all forums. Industry leaders put huge faith in, and are never let down by, trial doyens such as executive board chair Ron Schutz, who has a glittering record of jury verdicts. The group’s success stems not only from refined oral advocacy skills, however, but also from exceptional diligence in all litigation phases. On global business and technology sourcing group chair Christopher Seidl, one client comments: “Chris leads teams that partner with us to mine portfolios, stress-test use cases
1492 IAM Patent 1000
See p1497
John A Dragseth Fish & Richardson J Patrick Finn III Fish & Richardson Teresa A Lavoie Fish & Richardson Steven Lundberg Schwegman Lundberg & Woessner PA
See p1500
Brad Pedersen Patterson Thuente IP Dorothy P Whelan Fish & Richardson Recommended Suneel Arora Schwegman Lundberg & Woessner PA
See p1496
Bradley Forrest Schwegman Lundberg & Woessner PA
See p1499
H Sanders Gwin Jr Shumaker & Sieffert PA Michael Hawkins Fish & Richardson Thomas R Hipkins Fredrikson & Byron PA Alexander Kim Greenberg Traurig LLP Jason Kraus Faegre Baker Daniels LLP Steven A McAuley Seager Tufte & Wickhem LLP Stuart Nelson Fish & Richardson
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United States: Minnesota James H Patterson Patterson Thuente IP Jessica Rauckman Shumaker & Sieffert PA Scott Rothenberger Barnes & Thornburg LLP Amy M Salmela Patterson Thuente IP Glenn Seager Seager Tufte & Wickhem LLP Charles Segelbaum Fredrikson & Byron PA Steven J Shumaker Shumaker & Sieffert PA Kent J Sieffert Shumaker & Sieffert PA Jeffrey R Stone Barnes & Thornburg LLP Brian N Tufte Seager Tufte & Wickhem LLP Scot Wickhem Seager Tufte & Wickhem LLP
Individuals: transactions Ann Ladd Fredrikson & Byron PA Christopher K Larus Robins Kaplan LLP Teresa A Lavoie Fish & Richardson Brad Pedersen Patterson Thuente IP Charles Segelbaum Fredrikson & Byron PA David West Fredrikson & Byron PA
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and build litigation strategies, as well as execute them. He and his colleagues understand how our business operates and they tailor their service to our needs.” The lawyers here are much more than just hired guns – for example, of health and life sciences leader Jake Holdreith, another referee remarks: “More so than almost any external counsel I have encountered, Jake is a business adviser. He is a pre-eminent trial lawyer who understands how litigation strategies align with our overall business objectives.” The lawyers here channel lots of other qualities. Patrick Arenz “has an unmatched work ethic and is a phenomenal writer and powerful communicator. He is sharp, principled and makes all the right decisions when it comes to legal strategy. To work with him is to be on the winning team”. Christopher Larus, meanwhile, blends expertise in patent monetisation and litigation to drive outcomes – in and out of court – that generate revenue growth. He brings strong leadership to the national IP and technology litigation group; while Cyrus Morton gifts it with vital post-grant proceedings insight.
Schwegman Lundberg & Woessner PA
A stellar boutique at the forefront of innovation in patent practice, Schwegman has a virtually unsurpassed reputation for sophistication and quality. Notable threads in the firm’s recent narrative include deploying state-of-the-art docketing, analytics and machine learning tools to drive efficiency, and deepening its international expertise with the addition of attorneys schooled in European and Chinese patent law. Taking advantage of its well-developed remote working infrastructure, which it has invested in since its earliest beginnings, the firm has also maintained its outstanding service and collaborative culture throughout the pandemic without interruption. Schwegman has a new name in the IAM Patent 1000 for 2021 in Suneel Arora, whose ability to keep plates spinning in perfect balance for large institutional technology companies with global portfolios and patent needs earns him credit. His practice accentuates the protection of electrical software, mechanical and biomedical technologies. Making their return to the listings, meanwhile, are Steven Lundberg, Timothy Bianchi and Bradley Forrest, who each benefit the group in unique ways. Lundberg is the engine of the firm’s legal technology innovation and an authority on software patenting; Bianchi is an internationally acclaimed strategist and post-grant proceedings leader; and Forrest has a passion for technology and a first-hand understanding of the invention process, having previously managed the IP department of IBM. See p1724 for firm profile
IAM Patent 1000 1493
United States: Minnesota Individuals: litigation Alan Carlson Carlson Caspers Vandenburgh & Lindquist, PA Christopher K Larus Robins Kaplan LLP
Lora Friedemann Fredrikson & Byron PA
Ronald J Schutz Robins Kaplan LLP J Derek Vandenburgh Carlson Caspers Vandenburgh & Lindquist, PA Doug J Williams Carlson Caspers Vandenburgh & Lindquist, PA John Adkisson Fish & Richardson
Jake M Holdreith Robins Kaplan LLP Rachel C Hughey Merchant & Gould
Kurt Niederluecke Fredrikson & Byron PA
Felicia J Boyd Norton Rose Fulbright US LLP Philip P Caspers Carlson Caspers Vandenburgh & Lindquist, PA
See p1498
Clint Conner Dorsey & Whitney LLP
Seager Tufte & Wickhem has the fundamentals of patent preparation and prosecution down cold. Its lawyers, patent agents, engineers and scientists apply themselves with exceptional rigour to the task of obtaining watertight protection for clients’ most critical innovations. Far from just a filing shop, it flexes polished portfolio development, strategic counselling and transactional skills to deliver a reassuringly well-rounded service. Forming the backbone of the team are medical device and asset management ace Glenn Seager; electrical engineering sage Brian Tufte; commercial IP strategist and chemical and mechanical arts specialist Scot Wickhem; and
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Timothy E. Grimsrud Faegre Baker Daniels LLP
Timothy A Lindquist Carlson Caspers Vandenburgh & Lindquist, PA
Patrick M Arenz Robins Kaplan LLP
Seager Tufte & Wickhem LLP
Grant Fairbairn Fredrikson & Byron PA Betsy Flanagan Fish & Richardson
Cyrus A Morton Robins Kaplan LLP
Eric H Chadwick DeWitt LLP
John A Dragseth Fish & Richardson
Tara Norgard Carlson Caspers Vandenburgh & Lindquist, PA Christopher A Seidl Robins Kaplan LLP David Swenson Patterson Thuente IP William Woodford Fish & Richardson
former chief patent counsel Steven McAuley, who has a loyal following of life sciences and medical device players.
Shumaker & Sieffert PA
Glowing references mark Shumaker & Sieffert out as a high-performance patent boutique: “In instituting several stages of review for any work (regardless of who produced it), its deliverables are highly refined. Its docketing system is incredibly robust, so you can rely on it to handle everything from matter intake to filing without needing to send reminders. The firm has excellent leaders who stay on top of the latest developments in technology and the law;
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United States: Minnesota while its attorneys have expertise in a wide variety of technical fields and an uncanny ability to get things right the first time. A lot can be learned from seeing them in action.” The architects of this compelling model, Steven Shumaker and Kent Sieffert “are essential partners who think strategically about how patents translate into business value for clients”. Sanders Gwin is well known in the Twin Cities IP community for his “sharp intellect, soft-spoken wisdom and genuine love of patent law”. “He gives concise, spot-on legal advice, and drafts strong patent specifications and diverse claims that have a clear scope and meaning, and are more likely to withstand an invalidity attack in litigation. He also constantly seeks ways to create efficiencies and find cost savings.” Jessica Rauckman “thinks about the big picture before generating an application and delivers highly sophisticated work”. In terms of specialisation, Shumaker, Sieffert and Rauckman have concentrations in electronics and software; while Gwin distinguishes himself in the chemicals, materials and mechanics spaces.
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Other recommended experts
Norton Rose Fulbright’s Felicia Boyd is brilliant at managing and coordinating large IP cases – and at presenting them in court. She also has sparkling alternative dispute resolution credentials. Co-chair Eric Chadwick is building up momentum for the IP litigation group at DeWitt. Having tried multiple cases to verdict, he knows exactly what to do in the courtroom and how best to do it. Timothy Grimsrud is a trial lawyer with an advanced degree in chemistry; his blend of advocacy skill and technical aptitude gives him an advantage in PTAB proceedings, which are a regular component of his practice. His colleague at Faegre Drinker Biddle Jason Kraus leans in to the litigation effort, but predominantly focuses on portfolio building. His background is in mechanical engineering. Chemistry PhD Scott Rothenberger shows an impressive command of prosecution, licensing and litigation, and draws on a well-developed patent toolkit to support the business development of his cuttingedge chemical, pharmaceutical and biotechnology clientele. Fellow Barnes & Thornburg practitioner Jeffrey Stone concentrates on prosecution and counselling, but has a facility for licensing. He has a cultivated knowledge of the medical device industry.
IAM Patent 1000 1495
Arora, Suneel
Principal – Schwegman Lundberg & Woessner PA sarora@slwip.com | www.slwip.com
Suneel Arora brings a pragmatic and service-oriented approach to his practice, which includes attentively crafting assets, and guiding and advocating for numerous firm clients. Having begun his career as an integrated circuit design engineer building life-saving implantable medical devices, he values robust quality work that is consistently tethered to client business strategy and guided by enforcement considerations learned from his previous experience as a judicial law clerk in a US district court. Above all, Mr Arora appreciates the creative optimism and artistry of client inventors and entrepreneurs commercialising products. He brings an enthusiastic team-oriented approach to handling complex IP issues, such as due diligence, freedom-to-operate, analytics and opinion work. He is involved in firm management, including serving on the firm board and constantly tinkering with and systematising firm processes. Mr Arora also serves on a number of other boards, including at Mitchell Hamline School of Law. Mr Arora’s IP experience spans a wide range of complex technologies, including semiconductor devices, circuits, packages and systems; orthopedic, opthalmic, implantable, endoscopic, interventional and other medical devices; imaging and radiation treatment; software, signal processing and artificial intelligence; LIDAR, hyperspectral imaging and other optical systems; and access control, robotics, mechanical devices and consumer products. Mr Arora has authored numerous articles and spoken on a wide range of IP-related subjects, including opinions for business transactions, freedom-to-operate analysis and interplay between patent law and Food and Drug Administration law. He enjoys mentoring attorneys and law students. Outside of work, Mr Arora enjoys spending as much time as possible hiking, biking and exploring.
1496 IAM Patent 1000
Schwegman Lundberg & Woessner PA 121 South 8th St Suite 1600 Minneapolis MN 55402 United States T +1 612 373 6951 See firm profile p1724 Professional associations • IEEE • IPO • MSBA Sample client list • Analog Devices • ASSA ABLOY • Elekta • Ergotron • HID Global • iRobot, Nortek • Olympus
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Bianchi, Timothy
Principal – Schwegman Lundberg & Woessner PA tbianchi@slwip.com | www.slwip.com
Timothy Bianchi is a principal of Schwegman Lundberg & Woessner. He has been with the firm since its inception in 1993. He is active in patent procurement, post-grant challenges, opinions, due diligence and acquisitions. Mr Bianchi represents clients in post-grant proceedings, such as inter partes reviews and post-grant reviews. His background is in electrical engineering and physics, and he has patented in the areas of medical devices, signal processing, communication electronics, computer hardware and software, and semiconductor inventions. He was formerly employed by IBM, Honeywell and the University of Minnesota. Mr Bianchi has been named in the IAM Global Leaders (2020-2021), IAM Strategy 300 (2017-2019) and IAM Patent 1000 (2012-2020) by IAM magazine (published by Law Business Research); a “Minnesota SuperLawyer” (2004-2020) by Thomson Reuters; and “PTAB Litigator of the Year” (2015) and “IP Star” (2020 and 2021) by Managing IP magazine (Managing IP is part of the Euromoney Institutional Investor PLC group). His blog (www.reexamlink.com) covers the dynamics and strategies of patent procurement, patent challenges and patent litigation. A frequent speaker on IP matters, Mr Bianchi has a master’s in electrical engineering from the University of Minnesota. He earned his law degree magna cum laude from William Mitchell College of Law.
Schwegman Lundberg & Woessner PA 121 South 8th St Suite 1600 Minneapolis MN 55402 United States T +1 612 373 6912 F +1 612 339 3061 See firm profile p1724 Professional associations • AIPLA • Institute of Electrical and Electronics Engineers • Minnesota Intellectual Property Law Association
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IAM Patent 1000 1497
Chadwick, Eric H
Co-Chair Intellectual Property Litigation – DeWitt LLP ehc@dewittllp.com | dewittllp.com
Eric H Chadwick’s practice includes representing clients in various technology and commercial disputes throughout the United States. He focuses primarily on IP litigation, working with his clients to achieve goal-oriented litigation. Additionally, Mr Chadwick has taken 10 cases to verdict, in matters ranging from life-saving medical devices to farming technology. Prior to entering private practice, Mr Chadwick served as law clerk to the Honourable Peder B Hong in Minnesota’s First Judicial District. He earned a JD, cum laude, from William Mitchell College of Law and a BS in industrial engineering from Iowa State University Client recommendations Mr Chadwick represented H&S Manufacturing in a contentious, patent infringement matter, which was a bet-the-company case. H&S Manufacturing’s chair and CEO, Chris Heikenen, noted: I knew Eric was crackerjack smart and quick, but was stunned by his skill in the heat of the battle. It was a tough case and we got the best outcome we could reasonably expect in light of some unanticipated pretrial rulings. My company, my retirement, everything was on the line. If things had gone badly, I would have been in a world of hurt. There was no one I would rather have had to represent me.
DeWitt LLP 1400 AT&T Tower 901 Marquette Avenue Minneapolis MN 55402 United States T +1 612 305 1426 F +1 612 305 1414 See firm profile p1674 Professional associations • AIPLA • Minnesota Intellectual Property Law Association • Minnesota State Bar Association
1498 IAM Patent 1000
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Forrest, Bradley
Principal – Schwegman Lundberg & Woessner PA bforrest@slwip.com | www.slwip.com
Bradley Forrest enjoys connecting with inventors and discussing complex technologies. Sharing in inventors’ passion for their inventions and crafting IP protection in diverse technical areas is very rewarding for him. He also enjoys freedom-to-operate studies, and infringement and non-infringement opinion work. He is involved in the business side of law firm management, being instrumental in helping to grow and manage the firm, currently serving as general counsel and chair of the board. From 1984 to 1993, Mr Forrest worked at IBM in Rochester, Minnesota, as counsel and manager of the IP law department. He identified several key inventions and wrote many important patents, including the RAID V patent, magneto-optic recording patents, operating system patents, distributed computing patents, networking patents and basic patents covering server-driven work processing, known as IPC. From 1994 to 1995, he was a division counsel and the copyright and trademark counsel for IBM worldwide in New York, and he was featured in the National Law Journal as an attorney having reached the peak of his profession. Looks like he proved them wrong. With Schwegman Lundberg & Woessner, he has written and prosecuted patent applications in diverse technologies, including cloud-based computing, machine learning, nanotechnology, apps, applications, operating systems, disk drives, memories, optical networks, optical ring resonators, WiFi, semiconductor, medical device, CVD Diamond, circuits, and other technologies. He is currently chair of the Patent Relations with the USPTO Committee at the American Intellectual Property Law Association (AIPLA) that prepares AIPLA comments on notices of public rule making. served on the AIPLA Board of Directors from 2013 to 2015, has served as chair of several AIPLA committees, including the Special Committee on Publications, the Electronics and Computer Law Committee and the Emerging Technologies Committee. As a member of the Minnesota State Bar Association, he served on the Board of Governors and was previously president of the Minnesota Intellectual Property Law Association. Mr Forrest is an active speaker on all areas of IP protection.
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Schwegman Lundberg & Woessner PA 121 South 8th St Suite 1600 Minneapolis MN 55402 United States T +1 612 373 6972 F +1 612 339 3061 See firm profile p1724 Professional associations • AIPLA • Minnesota Intellectual Property Law Association • Minnesota State Bar Association
IAM Patent 1000 1499
Lundberg, Steven
Principal – Schwegman Lundberg & Woessner PA slundberg@slwip.com | www.slwip.com
Steven Lundberg is a registered patent attorney and a founding partner of Schwegman Lundberg & Woessner. He works with entrepreneurs, Fortune 100 companies and much that’s in between, providing practical legal counselling and time-tested IP strategies. Mr Lundberg received his BSEE in 1978 from the University of Minnesota and his law degree from William Mitchell College of Law (JD, 1982). He has published and spoken widely on software and electronic patent protection and is a coeditor of Electronic and Software Patents: Law and Practice, a leading IP treatise published by BNA Books. He is also is a principal contributor to the Patents4Software blog – found at www.patents4software.com. One area of particular interest to Mr Lundberg is patent analytics. As Schwegman’s chief innovation officer, Mr Lundberg has led the development of the firm’s own patent analytics platform, which enables Schwegman’s clients to gain both technical and legal strategy insight through filing trend analytics and by comparing company patent portfolios, thereby enabling deep understanding of technical development and patenting emphasis. In addition, Mr Lundberg helped develop Schwegman’s ClaimScape tool, which assists attorneys in performing fast and accurate categorisation and mapping claim of large portfolios, performing patent landscapes and conducting freedom-tooperate studies. More recently, Mr Lundberg has led the firm’s efforts to use artificial intelligence and machine learning to automatically perform docketing and generate patent applications and responses.
Schwegman Lundberg & Woessner PA 121 South 8th St Suite 1600 Minneapolis MN 55402 United States T +1 612 373 6000 F +1 612 339 3061 See firm profile p1724 Professional associations • AIPLA • Minnesota Intellectual Property Law Association
1500 IAM Patent 1000
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United States: Missouri
Armstrong Teasdale LLP
St Louis-headquartered general practice Armstrong Teasdale showcases an incredibly robust and dynamic patent practice. It puts its cavernous chest of resources at the full disposal of clients, which can call on 55 USPTO-registered professionals and all the technical expertise they could wish for. There’s plenty of prestige work and successes for the group to highlight, including securing a contract from the National Institutes of Health to provide biotechnology patent services and conducting a major freedom-to-operate analysis for a major healthcare company in connection with the US market entry of a medical device. Taking the lead on both matters, Christopher Goff is a superstar of the practice whom innovators praise to the heavens: “Chris gives pragmatic advice and easily navigates complex and nuanced matters, while being highly effective at managing time and deadlines. He has built a hugely capable team that can efficiently handle a great diversity of technologies in the medical device and other areas. Easy to partner with and an excellent issue spotter, he ensures the delivery of a top-quality product.” Equally noteworthy is Daniel Fitzgerald, whose bailiwick encompass prosecution, IP due diligence, patent analysis and more; lately he has run point on numerous IP projects for a global payments and technology company and a premier insurance entity. Fitzgerald is a fitting captain for the outstanding electrical and computer science group. Then there’s Michael Munsell, who consistently performs at a high level for industry heavyweights in aerospace and other sectors: “Distinguished by his exceptional business understanding, Mike is a thought leader when it comes to patent strategy.” The firm also acquits itself with distinction on the litigation side, with Richard Brophy spearheading the most important campaigns. Having gone the distance at trial many times, Brophy is fantastic at sizing up a case and plotting the optimal path to its resolution.
Bryan Cave Leighton Paisner (BLP)
Bryan Cave Leighton Paisner dispenses the full suite of patent counselling, prosecution, transactional and litigation services and, by representing clients through all phases of the product lifecycle, has developed the keenest sense of the business value of intangible assets. Helping to instil this commercial mindset in the team as co-head of the IP group is Daniel Crowe, a litigator who confidently and decisively tackles a wide range of patent, trademark and
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Individuals Richard Brophy Armstrong Teasdale LLP Corey Casey Polsinelli PC Daniel A Crowe Bryan Cave Leighton Paisner (BLP) Matthew Cutler Harness, Dickey & Pierce, PLC Elton Dean Polsinelli Daniel Fitzgerald Armstrong Teasdale LLP Christopher Goff Armstrong Teasdale LLP Keith Grady Tucker Ellis Kurt James Stinson LLP Michael Munsell Armstrong Teasdale LLP David A Roodman Bryan Cave Leighton Paisner (BLP) Joseph Walsh Jr Harness, Dickey & Pierce, PLC Bryan K Wheelock Harness, Dickey & Pierce, PLC Patrick C Woolley Polsinelli PC
copyright infringement suits. Hailing from a technical background, he has also proved himself adept at prosecution, making him a superb all-rounder. Another name to note in St Louis is David Roodman, a former leader of the group who continues to set standards as an accomplished IP litigator and transactions lawyer.
IAM Patent 1000 1501
United States: Missouri Firms Armstrong Teasdale LLP Harness, Dickey & Pierce, PLC Polsinelli PC Bryan Cave Leighton Paisner (BLP) Stinson LLP
Harness, Dickey & Pierce, PLC
One of Michigan’s leading boutiques, Harness Dickey maintains a presence in Texas, DC and Missouri, giving patrons a broad platform to leverage. Stacked with talent, the St Louis team offers impressive coverage, making it ideally suited to the role of IP watchdog for clients. At an individual level too, the folks here are impressively well rounded. Take Joseph Walsh, for example, a former in-house counsel who supports clients at the most meaningful strategic level, whatever might come up. Walsh is at his best on IP commercialisation assignments, but he’s the prototypical trusted confidante. Matthew Cutler is equally versatile: best known as a post-grant ace, he also has buckets of litigation and portfolio management experience. Bryan Wheelock keeps the focus on prosecution and does first-rate work in the mechanical and electromechanical areas.
Polsinelli PC
Richly resourced in both technical and contentious expertise, Polsinelli sees to a sizeable docket of prosecution matters, PTAB proceedings, district court cases and appeals, notching up an eye-catching track record in all endeavours. For sophisticated technology and life sciences entities, there are surefire options in the firm’s Kansas City and St Louis offices. Based in the former are Patrick Woolley and Corey Casey, both of whom provide vital support to a major pharmaceutical company for which
1502 IAM Patent 1000
Polsinelli functions as general IP counsel. Firmwide IP group chair Woolley’s international know-how and proficiency in litigation, licensing and asset management are appreciated by a diverse roster of clients, from Fortune 500s to start-ups and research institutions; having seen so much in the practice, he’s in hot demand as an opinion giver. A doctor of pharmacy and registered pharmacist, Casey adds value as a skilled prosecutor and litigation support lawyer. “Corey’s written work is of the highest quality you’ll see from outside counsel; he can be highly recommended for high-value and complicated patent clearance tasks.” Another standout technologist is Elton Dean, who studied nuclear engineering at the Massachusetts Institute of Technology: “Elton is incredibly sharp and continuously comes up with new and innovative ways for companies to bolster their IP portfolios. He provides timely assistance to inventors and in-house attorneys throughout the prosecution process, and does so with a businessfocused approach.”
Stinson LLP
Stinson is a fully specced commercial outfit with nearly 500 attorneys spread across 13 US offices. It has a penchant for complex legal work and gets stuck into IP and technology assignments with enthusiasm and commitment – something that St Louis-based partner Kurt James has been doing for more than three decades. An anchor of the patent practice since the boutique at which he served as managing partner merged into Stinson in 2018, James fulfils the role of counsellor with poise, thanks to his gift for helping innovators make the most of their intangible assets in business.
Other recommended experts
“Phenomenal litigator” Keith Grady is a seasoned first-chair patent trial lawyer. He recently took his talents to Tucker Ellis, having drawn his 13-year career at Polsinelli to a close.
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United States: New Jersey
Chiesa Shahinian & Giantomasi PC
A repository of trust for industry leaders and exciting emerging companies alike, Chiesa Shahinian & Giantomasi PC completes patent search, prosecution and opinion work with unerring accuracy and a commercial touch. Notable patrons include AT&T, Topcon Positioning Systems and Bloomberg, which benefit from the group’s deftness before the USPTO and extensive international connections for overseas matters. Recent developments include increased inbound instructions from Japanese law firms, with which it has forged enduring relationships. Lawyer in charge Jeffrey Weinick and his team garner enthusiastic recommendations from the market: “Jeff and his associates provide comprehensive analyses of innovations and well-judged prosecution strategies. He and his colleagues have excellent technical skills and great expertise in patenting software and AI-based inventions.” “Smart and responsive, Jeff delivers timeously on complex matters.”
Dentons
Newly featured in the New Jersey rankings this year, Dentons has a stellar profile in the state courtesy of Joel Bock, a Swiss Army knife of a patent lawyer with highly sophisticated prosecution, litigation and transactional skills and acute strategic vision. He is currently representing Columbia University in connection with patent matters arising in diverse fields including stem cells, chemistry, robotics and diagnostics, proving himself an essential partner to some of the institution’s leading innovators in patent procurement and monetisation. Bock has all the support he needs at his fingertips as part of a richly resourced national IP and technology team of more than 100 lawyers in 19 offices – and, of course, as a member of a 600-strong global group.
Fox Rothschild LLP
Showcasing outstanding depth in patent practice, Fox Rothschild has a large squad of technically adept attorneys – many of them with PhDs – standing ready to deploy on all complex patent briefs. The New Jersey office is the epicentre of its dynamic life sciences practice, which is a go-to for Rutgers University, the Rockefeller University, Bristol Myers Squibb and many others. The fulcrum around which the local group turns is Princeton managing partner Gerard Norton, whose strategic instincts are on point thanks to vast experience throughout all phases of the patent lifecycle. This year, special praise is awarded to Peter Butch, a savvy prosecutor and
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Individuals: litigation Joel N Bock Dentons Charles Chevalier Gibbons PC David E De Lorenzi Gibbons PC James DeCarlo Greenberg Traurig LLP John E Flaherty McCarter & English, LLP
See p1507
Gregory S Gewirtz Lerner David Littenberg Krumholz & Mentlik LLP Keith Gilman Lerner David Littenberg Krumholz & Mentlik LLP Christopher Kinkade FisherBroyles LLP Gerard P Norton Fox Rothschild LLP Robert Rhoad Dechert LLP Bruce H Sales Lerner David Littenberg Krumholz & Mentlik LLP Scott R Samay Lerner David Littenberg Krumholz & Mentlik LLP Christopher Strate Gibbons PC
sought-after opinion giver: “Always well prepared, Peter has mastered all aspects of patent and contract law. He communicates well with inventors and has an excellent counselling touch. He prosecutes patents that net large compensation rewards when licensed.” No less brilliant are PhDs Jianming Jimmy Hao and Wansheng Jerry Liu, who add tremendous value with their cross-cultural US and China know-how and commercial wisdom. See p1680 for firm profile
IAM Patent 1000 1503
United States: New Jersey Samuel Megerditchian Gibbons PC
Individuals: prosecution Thomas Bean Gibbons PC
Gerard P Norton Fox Rothschild LLP
Joel N Bock Dentons
Robert J Paradiso Lowenstein Sandler LLP
Peter J Butch Fox Rothschild LLP
Robert Rudnick Gibbons PC
James DeCarlo Greenberg Traurig LLP
Barry Schindler Greenberg Traurig LLP
Jianming Jimmy Hao Fox Rothschild LLP
Michael Teschner Lerner David Littenberg Krumholz & Mentlik LLP
Mark P Kesslen Lowenstein Sandler LLP
Estelle Tsevdos Gibbons PC
Wansheng Jerry Liu Fox Rothschild LLP Beverly W Lubit McCarter & English, LLP
Gibbons PC
Jeffrey M Weinick Chiesa Shahinian & Giantomasi PC See p1508
That many of its IP specialists have previously held senior in-house positions at top companies makes Gibbons as commercially streetwise in patent practice as any firm. It’s a compelling choice for companies seeking blended legal and business support, whether on intangible asset management briefs, major IP transactions or enterprise-threatening litigation. Focusing on the non-contentious side first, there are some incredibly seasoned prosecutors on deck, such as former Hoffmann-La Roche senior counsel Samuel Megerditchian, who is highly prized for his “ability to see things from all angles and provide exceptionally well-rounded advice”. “Sam understands precisely the internal political forces acting on company patent departments and is ideally placed to advise on the best way to present proposals to internal stakeholders to move things along in an efficient way. He’s also extremely responsive and always ready to help at a moment’s notice.” He and Robert Rudnick act for the Kessler Foundation, a global leader in rehabilitation with a mission to change the lives of those with disabilities. It’s not hard to see effective collaboration when looking through Gibbons’ window – it is evident in many key representations.
1504 IAM Patent 1000
Harris A Wolin Myers Wolin
Rudnick and Thomas Bean riff off each other particularly well as a result of their shared in-house background and equal talent as patent strategists and value creators. New to the IAM Patent 1000 this year, life sciences and medical device ace Estelle Tsevdos – who has been working with Megerditchian for a New Jersey-based drug company – procures patents with the benefit of litigation insight that alerts her to risk and enhances her long-termism. She has a gift for overcoming USPTO rejections. Moving over to the contentious side of the practice brings another superb line-up of practitioners into focus. IP group chair David De Lorenzi is a heavy hitter with decades of trial experience and an agile technical and business mind. He recently represented GemShares in a breach of contract and patent infringement case, securing a finding of wilful infringement and an award of treble damages. With him on this, Christopher Strate effortlessly traverses the contentious/non-contentious divide, lending weight to his recommendations on strategy; he has one of the broadest technical compasses in the group, too. Charles Chevalier is the star of the firm’s pharmaceutical patent litigation practice and the advocate of choice for the likes of Merck Sharp & Dohme and Pfizer.
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United States: New Jersey Individuals: transactions
Firms
Joel N Bock Dentons
Gibbons PC Greenberg Traurig LLP
David E De Lorenzi Gibbons PC Keith Gilman Lerner David Littenberg Krumholz & Mentlik LLP Mark P Kesslen Lowenstein Sandler LLP
See p1702
Chiesa Shahinian & Giantomasi PC Dentons Fox Rothschild LLP
Alan Leeds Morgan Lewis & Bockius LLP Beverly W Lubit McCarter & English, LLP
Lerner David Littenberg Krumholz & Mentlik LLP
See p1680
Lowenstein Sandler LLP See p1508
Robert Rudnick Gibbons PC
McCarter & English, LLP
See p1706
Bruce H Sales Lerner David Littenberg Krumholz & Mentlik LLP
competitor battles and complex matters involving large numbers of patents. He is representing Echelon Fitness Multimedia against Peloton Interactive in a dispute involving patents directed towards online fitness leaderboard technology.
Barry Schindler Greenberg Traurig LLP
Lerner David Littenberg Krumholz & Mentlik LLP
Greenberg Traurig LLP
Greenberg Traurig is an “enormous, excellent firm with top expertise in diverse areas”; its patent team “offers outstanding work product for a reasonable price”. A rare faculty for US and global patent prosecution sets it apart from its general practice brethren; this is the special focus of New Jersey-based Barry Schindler, who spearheads the non-contentious practice. “Barry’s depth and skill as a prosecutor are extraordinary: he addresses difficult problems with keen intelligence, broad and up-to-date knowledge and an aptitude for creative thinking. He excels at strategising for the short and long term, so that portfolio development aligns with clients’ business objectives.” He and shareholder Lennie Bersh are cited as “two of the country’s best practitioners in the fintech space” and both “consistently excel in the area of business method patents”. Recent highlights include procuring commercially critical patents for Unilever and advising global materials science company WL Gore on key projects. Greenberg Traurig is also a sure bet for sterling representation in patent litigation, with folks such as James DeCarlo never missing their target. DeCarlo comes well equipped for
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An “eminent IP boutique full of great lawyers”, Lerner David has a rich history of providing sophisticated patent services to cutting-edge innovators. Its prosecutors have an impressive allowance rate and bring refined IP asset management skills to the table to assist patrons in building valuable portfolios that support meaningful business development. Meanwhile, its litigators consistently rack up the wins in a multitude of forums. The firm gains a clear edge from the experience of its team, which includes luminaries such as Roy Wepner and William Mentlik, both trial and appeal heavyweights; managing partner Keith Gilman, a seasoned practitioner with intuitive litigation and licensing instincts; and commercially minded global patent strategist Bruce Sales. The bench is a deep one and there are plenty of others to recommend: Gregory Gewirtz has impeccable lead counsel credentials and abundant post-grant know-how; Scott Samay litigates with equal dexterity in the high-technology and life sciences spaces; and the versatile Michael Teschner – Lerner David’s representative on the IAM Patent 1000 prosecution table – is an adept draftsman, soughtafter opinion giver and well-prepared post-grant and litigation lawyer. See p1702 for firm profile
IAM Patent 1000 1505
United States: New Jersey Luminaries George M Gould Gibbons PC George W Johnston Gibbons PC William L Mentlik Lerner David Littenberg Krumholz & Mentlik LLP Roy H Wepner Lerner David Littenberg Krumholz & Mentlik LLP
Lowenstein Sandler LLP
For high-technology and life sciences players, Lowenstein Sandler is a font of practical, resultsoriented patent advice. The team is alive to industry trends and developments; and with Mark Kesslen as chair of the practice, is firmly embedded in the venture capital and start-up worlds to a degree that few of its competitors can match. Kesslen is a dynamic commercial IP and technology lawyer with incredible in-house insight and a passion for entrepreneurship, complemented by a coaching and mentoring mindset. He makes a game-changing impact for clients which include e-commerce platforms, media and communications companies, cloud computing leaders and many others, and is as knowledgeable as they come on software and business method patents. Anchoring the life sciences practice, registered pharmacist Robert Paradiso also maintains the highest standards of counselling and deal-making excellence. He oversees US and foreign patent prosecution as part of his cosmopolitan practice.
McCarter & English, LLP
The foundations of McCarter & English’s patent division are incredibly robust: the firm has over 30
1506 IAM Patent 1000
PhDs, double that number of USPTO-registered attorneys and a sizeable contingent of tried-andtested litigators. Taking full advantage of this platform in her pharmaceutical, biotechnology and medicaldevice focused practice is Newark-based microbiology PhD Beverly Lubit; not only brilliant on the technical stuff, she is also a transactional IP mastermind with a gift for pinpointing exactly where IP value lies and extracting it for clients. John Flaherty is one of the set’s best trial lawyers and makes McCarter & English a premier destination for Hatch-Waxman litigation. See p1706 for firm profile
Other recommended experts
FisherBroyles has been amassing talent and in December 2020 added former Fox Rothschild lawyer Christopher Kinkade to its team sheet. Kinkade is an astute business and IP attorney with finely honed litigation skills. Alan Leeds fulfils a key leadership role in Morgan Lewis & Bockius’s life sciences practice. For top pharmaceutical companies entering into major transactions, he provides unwavering support that makes the difference between a deal done and a relationship scuppered. He recently represented Regeneron Pharmaceuticals in its collaboration with Alnylam Pharmaceuticals to discover, develop and commercialise new RNA interference therapeutics. A highly feted litigator at Dechert, Robert Rhoad is in his element on complex pharmaceutical and other cases. His trial ever-readiness helps to secure optimum outcomes, whether cases go the distance or are settled out. Recent highlights include going out to bat for Endo Pharmaceuticals subsidiaries in multiple ANDA cases alongside Philadelphia-based superstar Martin Black. Highlighted by sources in China as “efficient and highly professional”, Myers Wolin’s Harris Wolin makes his IAM Patent 1000 debut for 2021. His blended corporate and IP legal experience translates into a resolutely commercial approach to intangible asset protection and management.
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Flaherty, John E
Partner – McCarter & English, LLP jflaherty@mccarter.com | www.mccarter.com
John E Flaherty’s practice is focused on civil litigation in state and federal courts. He is experienced in handling trade secret and patent infringement matters on behalf of plaintiffs and defendants. He regularly assists in Hatch-Waxman litigation on behalf of major pharmaceutical companies. Mr Flaherty represents defendants in all types of tort cases arising from product defects, medical devices and pharmaceutical products, chemical exposures, and industrial processes and building products. He has represented defendants in single plaintiff and mass tort cases, as well as employment discrimination and whistleblower cases. Mr Flaherty is a member of the US District Court for the District of New Jersey Local Patent Rules Committee and Lawyers Advisory Committee. He is a master and past director of the John C Lifland American Inn of Court. Mr Flaherty was for many years an editor of the Civil Trial Handbook, volume 47, of Thomson-West’s New Jersey Practice Series.
McCarter & English, LLP Four Gateway Centre 100 Mulberry Street Newark NJ 07102 United States T +1 973 639 7903 F +1 973 297 3971 See firm profile p Professional associations • AIPLA • ECBA • NJBA
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IAM Patent 1000 1507
Lubit, Beverly W
Partner – McCarter & English, LLP blubit@mccarter.com | www.mccarter.com
Beverly W Lubit, PhD, advises clients on complex IP matters, focusing on the pharmaceuticals, biotechnology, medical devices and energy industries. She has experience in Hatch-Waxman (small molecule drugs) and Biologics Price Competition and Innovation Act (biosimilar drugs) issues relating to litigation and transactional matters, patent litigation, IP due diligence evaluations, opinion letters, licensing, patent prosecution and regulatory issues with a particular emphasis on life sciences. In addition, Dr Lubit works closely with emerging companies, venture capitalists and company boards to develop practical IP strategies in order to help them bring their products and services to market. On behalf of life sciences, medical devices and technology companies, Dr Lubit negotiates key IP agreements including: • master supply agreements; • clinical trial agreements; • clinical services agreements; • compound library agreements; • consultant agreements; • collaborative research agreements; • development or manufacturing services agreements; • distributor agreements; • informed consents; • investigator-initiated clinical research study agreements; • key opinion leader agreements; • licence agreements; • material transfer agreements; • non-disclosure agreements; • quality agreements; • sponsored research study agreements; • sponsored clinical research study agreements; • subgrant award agreements; • supply agreements; • trademark agreements; and • IP provisions of merger agreements, including disclosure schedules.
McCarter & English, LLP Four Gateway Centre 100 Mulberry Street Newark NJ 07102 United States T +1 973 639 7992 F +1 973 297 3896 See firm profile p Professional associations • AAAS • AIPLA Sample client list • Caladrius Biosciences Inc • COTA Inc • HMH Hackensack University Medical Center • Vectracor Inc
Dr Lubit has been recognised among the New Jersey Law Journal’s Top Women in Law (2016), received the Lexology Client Choice Award, Intellectual Property: Patents for New Jersey (2013 and 2015-2017) and was listed in Chambers USA, New Jersey Intellectual Property (20132016).
1508 IAM Patent 1000
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United States: New York
Alston & Bird LLP
Alston & Bird puts wide-ranging patent expertise at the fingertips of clients: when they need prosecution services, it calls to action advanced technical specialists with an affinity for IP value creation; and when they need to enforce patent rights or defend them against commercial competitors, it deploys seasoned litigators to the battlefield. One such is trial lawyer Natalie Clayton, who provides superb captaincy to the life sciences patent litigation group. She has extensively represented Merial (now Boehringer Ingelheim Animal Health) in the International Court of Arbitration, district courts and the PTAB. Wherever a case takes her, she gets the job done, leveraging sparkling advocacy skills and profound patent and regulatory know-how.
Arnold & Porter Kaye Scholer LLP
Arnold & Porter thrives in the cut and thrust of pharmaceutical and biotechnology patent litigation and is a go-to for representation in the most complex and highest-exposure cases. One look at its line-up in New York settles any nerves: David Barr, Daniel Reisner, Aaron Stiefel and Daniel DiNapoli bring a tremendous amount of experience to the table and have seen and done it all before. Coming in for praise, Barr is a “detail-oriented lawyer and deep thinker who is excellent on the technical aspects of his craft”. He recently linked up with DC’s Matthew Wolf to win a jury trial for Hologic and Grifols against bioMerieux regarding blood-screening assays. He and Reisner – as well as Wolf and Silicon Valley partner Deborah Fishman – also secured a major victory for Sanofi and Regeneron against Amgen, which had sought billions in damages and a permanent injunction against the sale of Sanofi and Regeneron’s cholesterol-reducing drug Praluent. Stiefel and DiNapoli, meanwhile, have continued their sterling representation of Pfizer against generic challenges to multiple blockbuster drugs, including Xeljanz, Viagra and Celebrex.
Axinn, Veltrop & Harkrider LLP
When pharmaceutical and biotechnology companies need to enlist special forces support, many dial up Axinn’s patent trial lawyers, who form one of the most dynamic groups in the country. This is piloted to win after win by head of the intellectual property and Food and Drug Administration (FDA) practices Chad Landmon, an agile, business-focused advocate with exceptional regulatory knowledge. Lately, he has been defending Zydus Pharmaceuticals in a HatchWaxman infringement action brought by Boehringer
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Ingelheim Pharmaceuticals involving three drug products that improve glycaemic control in sufferers of type 2 diabetes; as this case confirms, Landmon excels at mounting aggressive challenges to patent validity. Managing partner Matthew Becker has a talent for undermining plaintiffs’ cases through astute cross-examination of witnesses, which has proved pivotal in many of his wins. Together with Landmon, he recently went out to bat for Norwich Pharmaceuticals against Salix Pharmaceuticals in a District of Delaware case involving 23 patents and more than 460 asserted claims. A huge asset given his in-house experience, David Silverstein is also critical to the ensemble’s success: having previously overseen all aspects of litigation at Par Pharmaceutical, he understands what clients are seeking to achieve through litigation. See p1652 for firm profile
Baker Botts LLP
Baker Botts is home to multiple individuals with multiple IAM Patent 1000 rankings, which attests to the well-roundedness with which they – and the firm – practise patent law. Paul Ragusa, for example, is recommended for prosecution, transactions and litigation, and is the full package for clients such as Columbia University and Ethypharm. Steve Lendaris and Daniel Hulseberg, meanwhile, are tipped for both prosecution and transactions. Lendaris provides strong leadership to the life sciences IP group and gives fulsome support to industry leaders on patent protection and diligence matters, drawing judiciously on Baker Botts’ deep technical bench. Due diligence maestro Hulseberg acquits himself with distinction on behalf of one of the world’s largest global healthcare companies; his instinct for assessing competitive landscapes and identifying strategic opportunities is second to none. One of relatively few lawyers to be highlighted for prosecution and litigation, global IP chair Robert Scheinfeld is key to the firm’s Hitachi relationship: he and fellow trial lawyer Robert Maier handle the conglomerate’s 1,000-plus patent portfolio and fight its corner in litigation. A sought-after opinion giver and counsellor, Neil Sirota also demonstrates versatility: in his focused domain of litigation, he and Maier have been trusted allies of Samsung Electronics for many years. Trial and appellate lawyer Jen Tempesta completes the line-up. Together with Scheinfeld, she recently won a major victory for Mastercard International against which Alexsam asserted failure to pay licence royalties; the court ruled in favour of Mastercard on all issues, including
IAM Patent 1000 1509
United States: New York Individuals: prosecution Carl A Morales Dechert LLP Samuel B Abrams Dechert LLP Adriane M Antler Jones Day Jonathan D Ball Greenberg Traurig LLP Elizabeth Barnhard Leason Ellis LLP Samuel Borodach Fish & Richardson Jack Brennan Fish & Richardson Margaret Brivanlou Ballard Spahr LLP Daniel R Brownstone Fenwick & West LLP Laura C Brutman Schiff Hardin LLP Susie S Cheng Leason Ellis LLP Mark S Cohen Pearl Cohen Zedek Latzer Baratz Michael A Davitz Leason Ellis LLP Dianne G El Hioum Fox Rothschild LLP Edward J Ellis Leason Ellis LLP Ivor R Elrifi Cooley LLP Peter N Fill Locke Lord LLP
1510 IAM Patent 1000
Melvin C Garner Leason Ellis LLP Christopher Glynn Fox Rothschild LLP Joseph M Guiliano Haley Guiliano LLP James F Haley Jr Haley Guiliano LLP Daniel Hulseberg Baker Botts LLP Oleg Kaplun Fay Kaplun & Marcin LLP Matthew Kaufman Leason Ellis LLP David Leason Leason Ellis LLP Steve Lendaris Baker Botts LLP Ying Li Steptoe & Johnson LLP Janet MacLeod Fox Rothschild LLP Karen Mangasarian Haley Guiliano LLP Michael Mercanti Lucas & Mercanti LLP Gerard Messina Norton Rose Fulbright Zeev Pearl Pearl Cohen Zedek Latzer Baratz Paul Ragusa Baker Botts LLP Robert C Scheinfeld Baker Botts LLP Pejman Sharifi Winston & Strawn LLP
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United States: New York Deborah A Somerville Fox Rothschild LLP Kenneth H Sonnenfeld Ballard Spahr LLP Clifford A Ulrich Carter De Luca Tony Zhang Fish & Richardson
patent claim construction and interpretation of the agreement, and found that Alexsam was judicially estopped from demanding licensing royalties under the agreement.
Baker McKenzie
Baker McKenzie has its flag firmly planted in the New York IP market, courtesy of James Blank, an experienced lead patent trial counsel with a highprofile international following. Since he arrived in 2019, and while continuing to litigate at the elite level, he has also leaned into the firm’s global patent prosecution practice and manages matters for Sientra, an innovator in plastic surgery implantable devices and others, working alongside DC colleague Richard Wells. The worldwide coverage that Baker McKenzie can afford is a real boon for those seeking far-reaching protection.
Ballard Spahr LLP
Recommended in the IAM Patent 1000’s New York rankings for the first time this year, Ballard Spahr has a star practitioner in the city in Kenneth Sonnenfeld, a pharmacology PhD with decades of experience at the cutting edge of development in the life sciences. Reflecting on its relationship with him, one client comments: “We have had the pleasure of working with Ken for many years, during which he has unequivocally become our most trusted source for IP advice. Ken understands our business and risk tolerance, and has always ensured his advice is centred on the things that are most relevant and important to us. He has never failed to deliver on an assignment in a timely manner or with less than impeccable quality work. We treasure our relationship with him.” A Swiss Army knife of a practitioner – he is recommended on all three practice area tables in the guide – he provides high-calibre support on prosecution, licensing and disputes matters. He came on board from King & Spalding in January 2020 alongside Margaret Brivanlou, a molecular biology
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PhD who also has the magic touch when it comes to counselling on strategy and extracting IP value. They have fitted in well at a firm that prioritises a wellrounded, commercially tuned patent service.
Cravath, Swaine & Moore LLP
Otherworldly in terms of sophistication of representation and quality of service, Cravath is a repository of trust for global innovators when there are tough, multi-threaded patent, antitrust and licensing disputes to be fought or seismic deals to be signed, sealed and delivered. Its trial and transactional lawyers draw on incredibly broad legal, strategic and mercantile horizons to devise creative solutions to the problems that keep in-house counsel and business leaders awake at night. The first name on the litigation team sheet is Keith Hummel, who does an exemplary job developing strategy for disputes, communicating options, preparing clients when they need it and, above all, executing on their objectives: “Keith is an unbelievably hard worker who makes himself available at clients’ convenience and is one of the best lawyers in any practice area.” There are no sharp elbows at Cravath and plenty of highly effective collaboration is in evidence: Hummel and Sharonmoyee Goswami connect brilliantly together, as they did recently on behalf of Amgen. Goswami became a partner in January 2020: having joined the firm as a summer associate a decade ago, she has risen through the ranks thanks to her exceptional command of the law, technical dexterity, intellect and positivity. Evan Chesler and Richard Stark – whose representation of Qualcomm in IP, antitrust and contract actions brought by Apple and resolution thereof is the stuff of legend – have reunited on behalf of short-form streaming start-up Quibi in consolidated patent and trade secret litigation against Israeli technology company JBF Interlude 2009. With them on this is David Marriott, an American College of Trial Lawyers fellow who is as seasoned as they come. On the transactional side, the venerable David Kappos continues to set standards of excellence and thought leadership that are virtually impossible to meet. In one recent highlight, he is acting for Mylan in its pending $50 billion combination with Upjohn, a division of Pfizer, which involves many complex IP licensing issues. See p1670 for firm profile
Davis Polk & Wardwell LLP
Davis Polk is a go-to for IP-intensive transactions: blue-chip patrons take confidence from the brokering experience and industry knowledge of top specialists Frank Azzopardi and David Bauer, who preside over
IAM Patent 1000 1511
United States: New York Jennifer B Coplan Sidley Austin LLP
Individuals: transactions Highly recommended
Ivor R Elrifi Cooley LLP
Garrard R Beeney Sullivan & Cromwell LLP
Jose A Esteves Skadden Arps Slate Meagher & Flom LLP
Michael A Epstein Weil Gotshal & Manges LLP David J Kappos Cravath, Swaine & Moore LLP
See p1551
Lori Lesser Simpson Thacher & Bartlett LLP
John Evangelakos Sullivan & Cromwell LLP Lisa Ferri Mayer Brown Adam H Golden Hogan Lovells
Stuart D Levi Skadden Arps Slate Meagher & Flom LLP
Daryn A Grossman Proskauer Rose LLP
Jeffrey Osterman Weil Gotshal & Manges LLP Charan J Sandhu Weil Gotshal & Manges LLP Charles A Weiss Holland & Knight LLP
Arlene Arin Hahn White & Case LLP
See p1545
Erin Hanson White & Case LLP
See p1547
Recommended
Daniel Hulseberg Baker Botts LLP
Carl A Morales Dechert LLP
Jeffrey C Johnson Pryor Cashman LLP
Jordan Altman Shearman & Sterling LLP
See p1533
Violetta Kokolus Ropes & Gray LLP
Mehdi Ansari Sullivan & Cromwell LLP
David Leason Leason Ellis LLP
Frank J Azzopardi Davis Polk & Wardwell LLP
Noah M Leibowitz Dechert LLP
Elizabeth Barnhard Leason Ellis LLP
Steve Lendaris Baker Botts LLP
David Bauer Davis Polk & Wardwell LLP
Michael J Lennon Potomac Law Group
Adam Chernichaw White & Case LLP Mark S Cohen Pearl Cohen Zedek Latzer Baratz
1512 IAM Patent 1000
See p1337
David MacDonald Kirkland & Ellis LLP Brian W Nolan Mayer Brown
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United States: New York Zeev Pearl Pearl Cohen Zedek Latzer Baratz Thomas Pease Quinn Emanuel Urquhart & Sullivan LLP Paul Ragusa Baker Botts LLP Harry Rubin Kramer Levin Naftalis & Frankel LLP Alicia Russo Venable LLP Resa K Schlossberg Skadden Arps Slate Meagher & Flom LLP Pejman Sharifi Winston & Strawn LLP Kenneth H Sonnenfeld Ballard Spahr LLP Samuel Waxman Paul Hastings LLP Ha Kung Wong Venable LLP
high-value deals of all kinds. Practice head Azzopardi is a veteran of transactions that have helped to shape the consumer products and retail, energy and industrial solutions, airline and transportation and high-technology sectors; while biosciences PhD Bauer has done the same in the pharmaceutical and biotechnology space. They set the pace, but rely on outstanding support from a diverse, highly trained group of colleagues.
Dechert LLP
Dechert’s elite life sciences prosecution and counselling practitioners work hand in glove with its crack litigators to provide pharmaceutical and biotechnology innovators with total support throughout all phases of the patent lifecycle. In terms of USPTO-facing work and portfolio development, the key names to know in New York are synthetic organic chemistry PhD Carl Morales and strategic IP planning maestro Samuel Abrams. Morales has had a busy time of it on the transactions front lately, advising Royalty Pharma – a purchaser of biopharmaceutical royalties – in connection
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with numerous deals; he also conducts high-level prosecution of patents for drug products that are FDA approved or in a state of near approval. Abrams is constantly on call for multinationals and academic institutions as they procure and commercialise IP assets; a former member of the patent departments at Procter & Gamble and Merck, he has an insider’s view of the innovation process. On the litigation side, Katherine Helm, Noah Leibowitz and Stephen Rabinowitz form a formidable contingent of trial lawyers. An absolute dynamo who makes significant contributions both to the Dechert practice and to the wider IP community, Helm never fails to impress. Eli Lilly and Company recently benefited from her trial and post-grant prowess in an infringement action brought by Genentech over Eli Lilly’s blockbuster immunosuppressant antibody therapy Taltz – a case which involved one of the few life sciences post-grant reviews, and one of the first such challenges to apply written description and enablement law to antibody technology. Leibowitz aids clients in many meaningful ways as a first-chair trial counsel and deal lawyer; he is recommended in the guide for both litigation and transactions. Rabinowitz is among the most scientifically gifted litigators in the country.
Desmarais LLP
Senior general counsel hail Desmarais as “unparalleled in terms of expertise and client service when it comes to high-stakes litigation”. The richly resourced team lives to fight mission-critical patent, trade secret, antitrust and other technology-intensive cases for household names, and has cracked the code of winning trials – on both sides of the ‘v’ – in all key forums in the United States. Meanwhile, its flexible and innovative fee arrangements further set it apart. Repeating its stellar showing in the previous edition, it once again has several new faces in the IAM Patent 1000 this year in Bindu Donovan, Todd Krause and Yung-Hoon (Sam) Ha, which attests to the sheer depth of the squad. Donovan and biological sciences PhD Krause are anchors of the life sciences practice and poised advocates for drug originators in Hatch-Waxman litigation and other pharmaceutical and biotechnology disputes. Together, they recently represented patent holder Actelion Pharmaceuticals in a case against Zydus Pharmaceuticals and Cadila Healthcare relating to a treatment for pulmonary arterial hypertension. Materials science and engineering PhD Ha is the team’s top post-grant specialist. As a key ingredient of its success, the firm puts leanly configured but rigorously cooperative teams onto the playing field – a model which sees those already named join up with the likes of gold-
IAM Patent 1000 1513
United States: New York Keith R Hummel Cravath, Swaine & Moore LLP
Individuals: litigation Peter J Armenio PC Quinn Emanuel Urquhart & Sullivan LLP
Josh Krevitt Gibson Dunn & Crutcher LLP
Gregory S Arovas Kirkland & Ellis LLP
Lisa B Pensabene O’Melveny & Myers LLP
Garrard R Beeney Sullivan & Cromwell LLP Paul A Bondor Desmarais LLP
E Joshua Rosenkranz Orrick, Herrington & Sutcliffe LLP See p1535
F Dominic Cerrito Quinn Emanuel Urquhart & Sullivan LLP
Kathleen M Sullivan Quinn Emanuel Urquhart & Sullivan LLP Errol B Taylor Milbank LLP
Robert V Cerwinski Goodwin Procter LLP Evan R Chesler Cravath, Swaine & Moore LLP
Bruce M Wexler Paul Hastings LLP See p1536
Dominick Conde Venable LLP
Mark J Abate Goodwin Procter LLP Robert A Appleby Kirkland & Ellis LLP
Edward J DeFranco Quinn Emanuel Urquhart & Sullivan LLP
Jim Badke Sidley Austin LLP
John M Desmarais Desmarais LLP
See p1537
Dimitrios T Drivas White & Case LLP
David K Barr Arnold & Porter Kaye Scholer LLP
See p1539
David Bassett WilmerHale
Gerald J Flattmann Jr King & Spalding LLP
Matthew Becker Axinn, Veltrop & Harkrider LLP
Christopher J Gaspar Milbank LLP Nicholas Groombridge Paul Weiss Rifkind Wharton & Garrison LLP Robert J Gunther WilmerHale Edgar H Haug Haug Partners LLP Elizabeth J Holland Goodwin Procter LLP
1514 IAM Patent 1000
See p1550
See p1534
Scott J Bornstein Greenberg Traurig LLP Sandra A Bresnick Quinn Emanuel Urquhart & Sullivan LLP Daniel G Brown Latham & Watkins LLP
See p1549
Patricia Carson Kirkland & Ellis LLP James W Dabney Hughes Hubbard & Reed LLP
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United States: New York Daniel P DiNapoli Arnold & Porter Kaye Scholer LLP
Jonas R McDavit Desmarais LLP
Eric W Dittmann Paul Hastings LLP
Kevin X McGann Fenwick & West LLP
Richard Erwine Quinn Emanuel Urquhart & Sullivan LLP
Thomas J Meloro Willkie Farr & Gallagher LLP
Lisa Ferri Mayer Brown
John J Molenda Steptoe & Johnson LLP
Porter F Fleming Haug Partners LLP
See p1541
John Flock Hunton Andrews Kurth LLP Mark Hannemann Shearman & Sterling LLP
See p1557
Deepro R Mukerjee Katten Muchin Rosenman LLP Clement Naples Latham & Watkins LLP
See p1546
Douglas R Nemec Skadden Arps Slate Meagher & Flom LLP
David Hecht Hecht Partners
Raymond N Nimrod Quinn Emanuel Urquhart & Sullivan LLP
Katherine A Helm Dechert LLP
John Normile Jones Day
Benjamin Hershkowitz Gibson Dunn & Crutcher LLP
Catherine Nyarady Paul Weiss Rifkind Wharton & Garrison LLP
Colleen Tracy James Quinn Emanuel Urquhart & Sullivan LLP
Jeffrey Oelke Fenwick & West LLP
Alan S Kellman Desmarais LLP
See p1552
Thomas Pease Quinn Emanuel Urquhart & Sullivan LLP
Chad Landmon Axinn, Veltrop & Harkrider LLP
See p1554
Chad Peterman Paul Hastings LLP
Michael J Lennon Potomac Law Group
Filko Prugo Ropes & Gray LLP
Jeffrey ID Lewis Foley Hoag
Stephen S Rabinowitz Dechert LLP
Robert Maier Baker Botts LLP
David C Radulescu Radulescu LLP
Thomas R Makin Shearman & Sterling LLP
See p1555
Paul Ragusa Baker Botts LLP
David R Marriott Cravath, Swaine & Moore LLP
See p1556
Preston K Ratliff II Paul Hastings LLP
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IAM Patent 1000 1515
United States: New York Scott K Reed Venable LLP
Allison Altersohn King & Spalding LLP
Daniel L Reisner Arnold & Porter Kaye Scholer LLP
Isaac Ashkenazi Paul Hastings LLP
P Anthony Sammi Skadden Arps Slate Meagher & Flom LLP
Michael Autuoro Fish & Richardson
Michael P Sandonato Venable LLP
Edmond R Bannon Fish & Richardson
Robert C Scheinfeld Baker Botts LLP
James S Blank Baker McKenzie
James Shalek Proskauer Rose LLP
Christopher Borello Venable LLP
Neil Sirota Baker Botts LLP
Karen Bromberg Cohen & Gresser LLP
Brian V Slater Haug Partners LLP
See p1560
William E Solander Venable LLP Richard J Stark Cravath, Swaine & Moore LLP
Joseph A Calvaruso Orrick, Herrington & Sutcliffe LLP Angus Chen Quinn Emanuel Urquhart & Sullivan LLP
See p1561
Arlene L Chow Latham & Watkins LLP
Aaron Stiefel Arnold & Porter Kaye Scholer LLP
Natalie C Clayton Alston & Bird LLP
Eric Alan Stone Paul Weiss Rifkind Wharton & Garrison LLP
Alan Clement Locke Lord LLP
Daniel J Thomasch Gibson Dunn & Crutcher LLP
Rose Cordero Prey Greenberg Traurig LLP
Bryan Vogel Robins Kaplan LLP
Sona De Sidley Austin LLP
Charles A Weiss Holland & Knight LLP
Anish Desai Weil Gotshal & Manges LLP
Elizabeth S Weiswasser Weil Gotshal & Manges LLP
Evan Diamond King & Spalding LLP
Jennifer H Wu Paul Weiss Rifkind Wharton & Garrison LLP
Bindu Donovan Desmarais LLP
Gary Abelev Hunton Andrews Kurth LLP
Peter N Fill Locke Lord LLP
1516 IAM Patent 1000
See p1538
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United States: New York Todd M Friedman Kirkland & Ellis LLP
Patrice P Jean Hughes Hubbard & Reed LLP
Ching-Lee Fukuda Sidley Austin LLP
Michael P Kahn Akin Gump Strauss Hauer & Feld LLP
Adam Gahtan Fenwick & West LLP
Allan A Kassenoff Greenberg Traurig LLP
Raj Gandesha White & Case LLP
See p1542
Paul Keller Allen & Overy LLP
Elizabeth Gardner Robins Kaplan LLP
Michael Kahn Akin Gump
Melvin C Garner Leason Ellis LLP
Todd L Krause Desmarais LLP
Frank M Gasparo Venable LLP
Gene W Lee Perkins Coie LLP
Sharonmoyee Goswami Cravath, Swaine & Moore LLP
See p1543
Noah M Leibowitz Dechert LLP
Vishal C Gupta Steptoe & Johnson LLP
Jane Love Gibson Dunn & Crutcher LLP
Dustin F Guzior Sullivan & Cromwell LLP
Joseph A Loy Kirkland & Ellis LLP
Yung-Hoon (Sam) Ha Desmarais LLP
See p1544
Yuval Marcus Leason Ellis LLP
Alison Hanstead White & Case LLP
See p1548
William J McCabe Perkins Coie LLP
Christopher J Harnett Maynard Cooper & Gale PC
Richard McCormick Mayer Brown
Jeanne M Heffernan Kirkland & Ellis LLP
Michael M Murray FisherBroyles
Pablo D Hendler Potomac Law Group
Brian W Nolan Mayer Brown
Philip Hirschhorn Panitch Schwarze Belisario & Nadel LLP
Christopher Noyes WilmerHale
Robert M Isackson Leason Ellis LLP
Karim Z Oussayef Desmarais LLP
Charlotte Jacobsen Ropes & Gray LLP
Tamir Packin Desmarais LLP
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See p1553
See p1558
IAM Patent 1000 1517
United States: New York Krishnan Padmanabhan Winston & Strawn LLP
James Trainor Fenwick & West LLP
Steven Pepe Ropes & Gray LLP
Robert W Trenchard Gibson Dunn & Crutcher LLP
Richard C Pettus Greenberg Traurig LLP
Clifford A Ulrich Carter De Luca
Hilary L Preston Vinson & Elkins LLP
Alexandra Valenti Goodwin Procter LLP
Joshua L Raskin Greenberg Traurig LLP
Francisco A Villegas Armstrong Teasdale
Brian Rosenthal Gibson Dunn & Crutcher LLP
Baldassare Vinti Proskauer Rose LLP
Hassen Sayeed O’Melveny & Myers LLP
Scott T Weingaertner White & Case LLP
David Silverstein Axinn, Veltrop & Harkrider LLP
See p1559
Calvin Wingfield Goodwin Procter LLP
Kenneth H Sonnenfeld Ballard Spahr LLP
Ha Kung Wong Venable LLP
Laurie Stempler Sullivan & Cromwell LLP
Vanessa Yen King & Spalding LLP
Arun Subramanian Susman Godfrey LLP
Guy Yonay Pearl Cohen Zedek Latzer Baratz
Jen Tempesta Baker Botts LLP
Michael T Zoppo Fish & Richardson
ranked John Desmarais and Paul Bondor, both of whom are talismanic figures for the group. “John is the best in the profession – a wise, analytical, clearthinking lawyer with great courtroom presence, who identifies the key issues that lawyers elsewhere miss. He has built a group with tremendous depth and which gets superb results in case after case.” He and likeminded lawyer Bondor are frequently hired to take over matters – as they were when Johnson & Johnson subsidiary Auris Health decided to make a switch before the close of fact discovery in a patent infringement suit brought by Intuitive Surgical involving robotic-assisted surgery technology; since becoming involved, the plaintiff has dropped three of the eight patents it originally asserted. Working with them on this is Tamir Packin, who is also heavily engaged in the firm’s representation of Cisco Systems;
1518 IAM Patent 1000
See p1562
he and Jonas McDavit – together with San Franciscobased Peter Magic – recently earned an important trial win invalidating $400 million in claims brought against the tech conglomerate by software company Egenera. An “excellent trial lawyer and brief writer”, McDavit is “one of the best litigators at one of the best firms”. Further firepower comes from Alan Kellman and Karim Oussayef, who also have a lot on. Kellman has acted for Sound View Innovations in infringement litigation against multiple parties relating to multimedia streaming architecture, real-time data analytics and distributed computing technologies; while Oussayef, alongside John Desmarais, is representing IBM in asserting the infringement of 12 patents against online real estate website Zillow. See p1672 for firm profile
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United States: New York Fay Kaplun & Marcin LLP
Covering all bases in intellectual property, Fay Kaplun & Marcin provides joined-up counsel on patents, brands, copyright law and trade secrets, making those with diverse portfolios feel safe and protected. Maintaining a strong presence in all innovative industry sectors, the team conducts error-free prosecution while dispensing insightful guidance on strategic matters including IP transactions and PTAB proceedings. Spearheading the practice is Oleg Kaplun, a precision draftsman and prosecutor, and a trusted adviser for high-technology companies.
Fenwick & West LLP
Few firms have as mature an understanding of the technology world as Fenwick & West. By the side of cutting-edge companies at every stage of their innovation and business journey, the Silicon Valley native understands the potency of intellectual property as a commercial tool and how to harness it for maximum gain. This is a gift of Daniel Brownstone, a long-time member who acts as primary patent counsel to a ride-sharing service and an investment bank – both famous names with valuable IP holdings. Turning to litigation, Fenwick & West has come on in leaps and bounds in New York in recent years, as Jeffrey Oelke, Kevin McGann, James Trainor and Adam Gahtan – who joined as a redoubtable strike force in 2018 – quickly settled into their groove. Staying up on his grind, Oelke has been putting in the shifts for a leading global healthcare concern and a prestigious pharmaceutical company, showcasing his persuasiveness in trial and post-grant settings in the process. Sources appreciate his “open and honest dialogue, trustworthy legal assessments and willingness to go the extra mile and add value”. McGann and Trainor have also seen plenty of life sciences action, handling multiple matters for UCB and Lohmann Therapie-Systeme; in one case, they obtained a Federal Circuit-affirmed verdict of infringement under the doctrine of equivalents, having replaced prior counsel two years into the litigation and just four months before trial. Gahtan was also central to this result, as Fenwick’s appellate mastermind. Although life sciences work has been the dominant feature of their practices of late, none of these lawyers can be pigeonholed – which is a measure of the transferability of their refined trial skills.
Fish & Richardson
Fish & Richardson sets the coordinates for success in must-win patent litigation and engages hyperdrive to achieve it. In every venue, its lawyers make sound strategic plays and, when the time comes to stand
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Firms: prosecution Baker Botts LLP Ballard Spahr LLP Dechert LLP Fay Kaplun & Marcin LLP Fish & Richardson Fox Rothschild LLP
See p1680
Greenberg Traurig LLP Haley Guiliano LLP Leason Ellis LLP Norton Rose Fulbright Pearl Cohen Zedek Latzer Baratz Steptoe & Johnson LLP
up and present in court, they hit all the right notes. New York managing principal Michael Autuoro is great at mobilising colleagues and resources in the optimum configurations to get difficult jobs done. An experienced trial lawyer in his own right, he is also happy to play support roles when needed and took his cue from Edmond Bannon in a recent infringement matter for Floodbreak, which designs and manufactures flood mitigation systems that NYC Transit has purchased to prevent the subway system from being inundated in the event of a storm. Bannon is praised for his ability to “mount successful defences, work with third-party technical experts and help clients understand and prepare for depositions”. He is also credited for his abilities in the ITC, where he recently secured a business-critical win as lead counsel for respondent Momentive UV Coatings in a four-patent case against DSM Desotech and its parent involving patents on optical fibre coatings and coated optical fibres – one in which DSM sought an exclusion order against Momentive’s largest-selling coating. The ITC found all asserted claims of the patents in suit invalid or not infringed – a decision that the Federal Circuit subsequently upheld. Michael Zoppo is another adept litigator, but also leans into the prosecution and portfolio practice – which, from a New York standpoint, is another strong one. Tony
IAM Patent 1000 1519
United States: New York Zhang and Jack Brennan each have PhDs – Zhang in chemistry and Brennan in genetics – and produce superior results for their life sciences followers. One notable client of Zhang’s is Reflection Biotechnologies, a patient-founded company with a focus on rare genetic diseases; his prosecution efforts have helped to attract major pharmaceutical companies to the licensing and collaboration deal table. Samuel Borodach repeats Zhang and Brennan’s success in the electronic, software and mechanical technologies areas and is a vital contributor to Fish’s exceptional post-grant offering.
Fox Rothschild LLP
In the words of senior in-house folks: “The patent prosecution team at Fox Rothschild is first rate.” The firm has a great mix of technical talent – PhDs and engineers with law degrees – complemented by lawyers with both contentious and non-contentious and litigation experience. Led by Deborah Somerville in the New York office, the team “understands clients’ needs to a tee”. Immersing herself in the business side of things, Somerville “makes sure your intellectual property supports your commercial goals and fulfils her partnering role with the utmost professionalism, dedication and comradery. She’s first rate and a great asset to have on side”. She is by no means the only eminent life sciences patent attorney on deck: local managing partner and molecular pharmacology PhD Janet MacLeod, chemistry PhD Christopher Glynn and patent group leader Dianna El Hioum are also great options in this space. MacLeod undertakes prosecution and portfolio management for Lytix Biopharma and is a critical component of teams supporting academic institutions. Glynn regularly collaborates with Somerville – for example, in handling extensive due diligence tasks on behalf of Healthcare Royalty Partners. El Hioum supervises prep and pros relating to therapeutic antibodies – including FDAapproved therapeutics – for various cancer treatments for a leading biotechnology company. See p1680 for firm profile
Gibson Dunn & Crutcher LLP
Bet-the-company patent litigation is meat and drink to Gibson Dunn. Its lawyers shoulder the heaviest burdens for innovators in the media, technology, software and life sciences sectors, astutely leveraging the firm’s resources to advance creative, decisive strategies that get right to the heart of the dispositive issues in a case. Just seeing the name of Josh Krevitt, Daniel Thomasch or any number of their colleagues at the top of a brief is enough to take the wind out of opposing parties’ sails. Krevitt is a solid-gold lawyer
1520 IAM Patent 1000
whose feats in and out of court give him an aura of invincibility. He has undertaken extensive work on behalf of AT&T recently, scoring many quick successes against NPEs through aggressive motion practice and the development of ironclad defences. With him on a number of these matters, Benjamin Hershkowitz and Brian Rosenthal are similarly specced as unflappable trial advocates. Notable recent New York-led activities on the life sciences side include a significant victory for Novartis in which all challenges to a patent covering its blockbuster multiple sclerosis drug Gilenya were rejected. In this one, Jane Love and Robert Trenchard stayed the course through an inter partes review (2018), a preliminary injunction proceeding (2019) and a four-day bench trial (2020), and emerged victorious. Love is a registered patent attorney who demonstrates strategic brilliance in her handling of district court litigation (in which she serves as first chair) and copending PTAB proceedings. She and Trenchard form a dynamic pairing with an enviable hit rate.
Goodwin Procter LLP
Goodwin Procter makes light work of complex patent litigation in both the life sciences and high-technology domains, and New York is home to linchpins of both specialised practices. The firm is one of the most prolific players in Hatch-Waxman actions and an emerging leader in the field of biosimilars – see its Big Molecule Watch blog for all the latest on that front – and has a compelling trio of lawyers in Elizabeth Holland, Robert Cerwinski and Alexandra Valenti. Holland is an influential industry figure who has spent decades duking it out for pharmaceutical originators and generics. In one of her most significant ongoing cases, she is representing Novartis as complainant in an ITC action against Regeneron seeking an exclusion order against Regeneron’s newly launched Eylea pre-filled syringe product. Cerwinski is “someone you’re always happy to have on your side. He does a superb job as a team leader and gives clear strategic advice, helping clients to cut through the patent thicket”. With “outstanding IP knowledge”, he is “a sharp, creative, communicative lawyer who can be wholeheartedly recommended”. He is acting for Dr Reddy’s Laboratories in proceedings concerning its generic equivalent to Suboxone alongside Valenti and colleagues in Boston. Growing in stature and supremely confident in her trial skills, Valenti isn’t afraid of litigating outside her pharmaceutical stronghold and makes a significant contribution to the non-life sciences practice, which is headlined by Mark Abate and Calvin Wingfield. Both garner effusive client feedback: “Mark is a highly intelligent, professional and client-oriented litigation counsel.
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United States: New York He has a deep appreciation of our patents – their development and how they improve the features and functionality of the products that embody them – along with the internal genesis of our innovations and the needs they were intended to address. He also has a deep understanding of how our products are perceived in the marketplace and therefore how to strengthen our defences. Mark collaborates well with in-house IP counsel, engineers and senior management, and is sensitive to the need for accurate litigation budget planning. All this applies equally to Calvin, who is excellent at explaining the complex aspects of patent litigation to those tasked with gathering and giving context to evidence required for presentation at trial. He meticulously tracks the evidentiary requirements to ensure they are met, and his all-round thoroughness and thoughtfulness are heartening.” They performed admirably for Pass & Seymour in a long-running dispute with Leviton Manufacturing, its core competitor in the ground-fault circuit interrupters market, emerging with a rare jury verdict of patent invalidation due to obviousness in a declaratory judgment action.
Greenberg Traurig LLP
Greenberg Traurig’s commerciality, energy, agility and service mindedness are put on full display by the New York IP team. Much credit for this is owed to Scott Bornstein, who recently took on the role of co-managing shareholder of the local office, which he fulfils while also co-leading the global IP and technology and patent litigation groups and serving on the executive committee. A wonderfully dynamic leader for the firm, he also puts in serious work as a litigator and trial lawyer: he recently represented Teva in a Paragraph IV challenge; and Kretek International, Dryft Sciences and others in an ITC and multi-district court litigation against Swedish Match and others involving tobacco-less nicotine pouch products. For Teva, he has linked up with smart life sciences and high-technology litigation strategist Richard Pettus and Jonathan Ball, an organic chemistry PhD who contributes vitally to the firm’s prosecution, portfolio management, licensing, post-grant and litigation practices. Holding it down in conflicts over computer, financial, medical device and communications technologies, meanwhile, is Joshua Raskin, who receives outstanding reviews: “From a customer service standpoint, Josh is incredible; he is also the sort of lawyer who you want to present to boards on litigation strategy. An excellent decision maker and writer, he consistently outworks and outthinks counterparties to lead his clients to sweeping victories.” He was recently hired by JPMorgan to
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defend against an inventor’s allegations of patent infringement and swiftly had the case dismissed. For this, he partnered with Rose Cordero Prey who garners equally enthusiastic praise: “Rose is organised, quick, responsive, diligent and a logical thinker who is brilliant at juggling all aspects of a litigation, while never losing sight of the big picture. She has such a robust patent skillset that she can quickly adapt to new cases, technologies and clients.” Raskin also forms a highly productive connection with Allan Kassenoff, with whom she has been defending Deezer in a patent infringement suit in which the court found all asserted patent claims invalid under Section 101. Kassenoff has tried multiple cases to verdict and maintains a vibrant practice spanning diverse industry sectors.
Haley Guiliano LLP
Technical dexterity and strategic assuredness are the hallmarks of Haley Guiliano’s offering. Focused on commercially consequential patent matters, the ensemble neatly aligns its approach and service with the business needs of clients, which enhances the value of its work product and its efficiency. For biotechnology and pharmaceutical players, James Haley and Karen Mangasarian are rock stars when it comes to global prosecution, portfolio management and IP planning. Haley takes advantage of his career-long exposure to complex litigation to chart risk-free paths forward and set patent rights in stone. Mangasarian has an affinity for landscape analysis and is a savvy transactional lawyer who ensures that clients can capitalise fully on commercial IP opportunities. Managing partner Joseph Guiliano provides the same high-impact service to high-technology companies. Like Haley, he has well-developed mentoring and leadership skills, meaning that those around him are highly motivated to achieve their best.
Haug Partners LLP
Haug Partners may have made its name as an agile, business-focused contentious force, but today it is increasingly seen as a well-rounded boutique with a deft counselling touch and cultivated prosecution and transactions capabilities. The main headlines are still written by the group’s redoubtable trial lawyers, who include Edgar Haug, Porter Fleming and Brian Slater. Haug is distinguished by his firstchair seasoning, appellate expertise and international experience; Fleming by his tirelessness and tenacity; and Slater by his life sciences industry knowledge and versatile patent procurement, licensing and enforcement skillset. See p1692 for firm profile
IAM Patent 1000 1521
United States: New York Firms: transactions
Davis Polk & Wardwell LLP
Highly recommended
Dechert LLP
Cravath, Swaine & Moore LLP
See p1670
Kirkland & Ellis LLP
Skadden Arps Slate Meagher & Flom LLP
Leason Ellis LLP
Sullivan & Cromwell LLP
Mayer Brown
Weil Gotshal & Manges LLP
Pearl Cohen Zedek Latzer Baratz
Recommended
Proskauer Rose LLP
Arnold & Porter Kaye Scholer LLP
Shearman & Sterling LLP
Baker Botts LLP
Venable LLP
Baker McKenzie
White & Case LLP
Hughes Hubbard & Reed LLP
Hughes Hubbard has etched its name into the patent history books on a number of occasions: cases that bear its stamp include KSR International v Teleflex – a Supreme Court decision that set a precedent on the interpretation of the non-obvious subject matter condition for patentability under Section 103; and TC Heartland v Kraft Food Group Brands, which established a new standard for interpretation of the rules on patent venue. This reflects the firm’s willingness and ability to push boundaries, which is something that IP and technology group chair – and adjunct professor of law at Cornell Law School – James Dabney has done throughout his storied career. He and Patrice Jean continue to make a splash in weighty cases: for example, they recently successfully represented Cipla in resolving patent and antitrust litigation against rival Amgen, enabling their client to import and sell a generic version of prescription drug Sensipar. Jean chairs the life sciences group and is a litigator and counsellor par excellence, with a PhD in molecular biology.
Hunton Andrews Kurth LLP
Renaissance man Gary Abelev embodies Hunton Andrews Kurth’s well-roundedness in patents in his own practice, which encompasses litigation, due diligence studies, portfolio management and development, patent procurement and licensing. At ease with myriad technologies, he has an incredibly broad sphere of operations – one reason why several prestigious universities select him as their preferred patent counsel. Showcasing the firm’s suitability for
1522 IAM Patent 1000
See p1726
See p1740
high-stakes patent litigation, on the other hand, is John Flock, “one of the market’s most strategic and pragmatic litigators” and “a top choice to lead complex global cases”. Well known for his work on behalf of Sony, he has continued to represent the company recently, including in an investigation at the ITC. Indeed, Hunton Andrews Kurth should be noted for the robustness of its ITC practice: it ranks high among the most active and best-performing firms in the forum.
Jones Day
Pioneers in the life sciences derive major benefits from partnering with Jones Day: it fields elite-level strategic counsellors and litigators, and offers a global support package. For complex prosecution, insightful opinions and flawless representation in post-grant proceedings and touch-and-go transactional negotiations, Adriane Antler is the essential choice. An accomplished HatchWaxman litigator who has enforced patents protecting many blockbuster drugs, John Normile is the person to call for hotly contentious matters.
King & Spalding LLP
King & Spalding enjoys an outstanding reputation in the pharmaceutical and biotechnology fields. Key reasons for this include the quality, experience and track record of its litigators; but these are by no means the only reasons. The firm also runs a mature, industry-focused prosecution, counselling, diligence and licensing practice, and integrates its IP offering with highly rated practices in FDA regulatory law, product liability and government investigations, among others – all of which makes for a sophisticated
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United States: New York White & Case LLP
Firms: litigation Cravath, Swaine & Moore LLP
See p1670
WilmerHale
Desmarais LLP
See p1672
Alston & Bird LLP
Gibson Dunn & Crutcher LLP
Fish & Richardson
Goodwin Procter LLP
Haug Partners LLP
Kirkland & Ellis LLP
Hughes Hubbard & Reed LLP
Paul Hastings LLP
Hunton Andrews Kurth LLP
Paul Weiss Rifkind Wharton & Garrison LLP
Jones Day
Quinn Emanuel Urquhart & Sullivan LLP
Leason Ellis LLP
Arnold & Porter Kaye Scholer LLP
O’Melveny & Myers LLP
Axinn, Veltrop & Harkrider LLP
See p1652
See p1740
See p1692
Pearl Cohen Zedek Latzer Baratz
Baker Botts LLP
Perkins Coie LLP
Dechert LLP
Proskauer Rose LLP
Fenwick & West LLP
Robins Kaplan LLP
Greenberg Traurig LLP
Ropes & Gray LLP
King & Spalding LLP
Shearman & Sterling LLP
Latham & Watkins LLP
Skadden Arps Slate Meagher & Flom LLP
Mayer Brown
Steptoe & Johnson LLP
Milbank LLP
Sullivan & Cromwell LLP
Sidley Austin LLP
Weil Gotshal & Manges LLP
Venable LLP
Winston & Strawn LLP
wraparound service. Returning to those trial lawyers, Gerald Flattmann, Evan Diamond and Vanessa Yen form an imposing line-up fit to tackle any complex case. The close-knit team has had a lot going on recently: by way of example, it represented Galderma in a trial regarding Sun Pharmaceuticals’ attempt to design around the formulation patents covering Oracea, Galderma’s rosacea treatment, which has chalked up $3 billion in sales since its launch. Sun’s product was found to infringe Galderma’s patents and its invalidity claims were rejected; Sun also withdrew
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See p1726
See p1744
its appeal to the Federal Circuit, keeping the trial win in place and resolving the last pending challenge to the Orange Book listed patents protecting Oracea. As global chair of life sciences patent litigation, Flattmann brings strong leadership to the group. High-technology concerns aren’t left feeling shortchanged by King & Spalding’s New York contingent: Allison Altersohn is there with them both in litigation and as a portfolio and licensing strategist. She recently achieved an impressive walkaway win for Delta Airlines, against which Sound View – which has
IAM Patent 1000 1523
United States: New York been terrifically successful in monetising its patent portfolios through litigation against other companies – asserted four patents directed to high-performing computing functionality.
Kirkland & Ellis LLP
Kirkland & Ellis is ever-ready for trial – a state that helps it to develop clear, compelling themes from the moment a case is filed, create threat value to drive favourable settlements and assert its will in the courtroom. The firm’s New York lawyers have kept the results tracker busy of late: Gregory Arovas, Todd Friedman and Robert Appleby, for example, scored a major victory for Intel and its customers Acer, AsusTek Computer, Lenovo and Micro-Star International at the ITC with a May 2020 final determination of no violation in an action filed by Tela Innovations, which sought to prevent the import and sale of Intel’s most cutting-edge microchips, as well as the customer-manufactured devices containing them. This result will be beneficial in the context of the district court litigation between the two parties on the same patents running in parallel. Arovas, Appleby and Jeanne Heffernan carried the day in another notable ITC matter which cannot be disclosed, but which pitted a global technology leader against an NPE. Arovas and Patricia Carson swiftly saw off a challenge against Samsung Electronics in a suit filed in the Eastern District of Texas by Greenthread alleging infringement of patents relating to semiconductor memory chips and image sensors. In terms of ongoing action, Joseph Loy has teamed up with illustrious colleagues Paul Brinkman in DC and Nicola Dagg in London to represent AutoStore Technology in multi-jurisdictional patent litigation against Ocado Group and its subsidiaries concerning patents relating to automated storage and retrieval systems. The takeaways from all this are that Kirkland’s lawyers are trusted by cutting-edge industry leaders to handle the biggest cases playing out across multiple US forums and internationally – and they consistently deliver satisfying outcomes. More than just a side hustle, the firm also handles big-ticket transactions with aplomb, and David MacDonald is the fulcrum around which this practice turns in New York. On the life sciences side, recent highlights include representing Boehringer Ingelheim in negotiations to restructure its diabetes alliance with Eli Lilly and Company; and acting for Samsung Bioepis in licensing negotiations regarding its biologics. On the high-technology front, he has served as outside counsel to the Open Innovation Network in its role as a patent non-aggression community that supports freedom of action in Linux as a key element of open source software.
1524 IAM Patent 1000
Latham & Watkins LLP
Latham & Watkins has been making power plays in the life sciences patent litigation arena lately: the recruitment of gold-ranked Adam Perlman from prestigious firm Williams & Connolly was a major move at the start of 2020, and was followed up in the summer with the addition of Arlene Chow from Hogan Lovells. Chow is a seasoned representative of branded pharmaceutical companies in all kinds of drug litigation. Passionate about the science, she has the essential gift of distilling the technical complexity out of her cases to present clear and resonant narratives in court. She joins fellow New Yorker Daniel Brown, an expert in FDA and regulatory law with a blended trial and transactional skillset. Their counterpart on the high-technology side is Clement Naples, who brings the heat in semiconductor, communications, automotive technology and other disputes.
Leason Ellis LLP
Only four firms out of a total of 48 listed in the IAM Patent 1000 New York section are recommended on each of the prosecution, litigation and transactions tables – and Leason Ellis is one of them. Its outstanding versatility is further reflected in the individual rankings: it has six attorneys honoured for prosecution along with three in litigation and two in transactions. This gives it the deepest prosecution bench in the city, which highlights just how strong its patent fundamentals are. Commenting on this, clients acknowledge: “It has a well-balanced staff of lawyers with wide-ranging technical expertise and an excellent comprehension of some of the more abstruse areas of technology. The group is highly organised, uses up-to-date practice management techniques and is well connected overseas with toprated foreign counsel.” The most enthusiastically endorsed practitioners include Elizabeth Barnhard, who chairs the pharmaceutical and biotechnology practice: “Working with Elizabeth leads to added value and business growth. She steers patent matters in assured fashion and secures allowances with the minimum level of exchange with examiners, which is key to saving costs. Her strategies are productive and effective, and she gives clients full confidence in the achievement of their commercial objectives.” She and fellow life sciences maven Susie Cheng are “thorough professionals who always keep your, not their, best interests in mind. They are reliable and fast communicators who complete assignments swiftly and provide great recommendations leading to successful registrations”. A fluent Cantonese and Mandarin speaker, Cheng takes charge of a dedicated China practice group that gives the firm a real USP.
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United States: New York Physician Michael Davitz also levels up the practice, given his extensive research background, global prosecution expertise, transactional know-how and disputes experience. Technology innovators looking to procure valuable patents have similarly highspec partnering options in Matthew Kaufman and founders David Leason and Edward Ellis. Kaufman applies his enforcement learnings to great effect in prosecution, securing his followers cast-iron rights that can withstand any challenges. Managing partner Leason is a one-stop shop for strategic IP counsel, given his deep familiarity with all IP categories; he brings innovative ideas to the table that spark ‘lightbulb moments’ for clients. Chair of the patent group Ellis also thinks on a higher strategic plane, but is a down-to-earth lawyer who listens to clients so that he can better understand what they need and tailor his service accordingly. Yuval Marcus, Robert Isackson and Melvin Garner form the backbone of the litigation practice, with Marcus serving as chair. Coming in for special praise, Isackson “applies a practical, common-sense approach and has the ability to explain complex matters simply, yet precisely. Unlike many lawyers, he doesn’t equivocate, but provides direct and useful advice. He is insightful about how intellectual property can be employed to drive value for a company”. He and Garner give Leason Ellis a great deal of trial seasoning.
Mayer Brown
Mayer Brown provides fulsome support to pharmaceutical originators, biotechnology companies and medical device innovators. Well equipped to litigate high-profile Hatch Waxman and Biologics Price Competition and Innovation Act cases at the trial and appellate level and before the PTAB, the firm is also in hot demand for commercial deal work, in recognition of which it secures its first inclusion on the IAM Patent 1000 New York transactions table for 2021. Taking the lead on all fronts is Lisa Ferri, who co-chairs the global IP and life sciences groups. She is currently representing patent holder Gilead Sciences and its licensee of the patents in suit, Astellas, in a HatchWaxman action in the District of Delaware against 11 defendants’ groups involving Gilead’s successful Lexiscan product. An especially notable transactional highlight, meanwhile, saw her link up with Brian Nolan plus Dusseldorf-based patent partner Christoph Crützen to advise Bristol-Myers Squibb on its $74 billion acquisition of Celgene. Nolan is one of Ferri’s frequent collaborators, as is Richard McCormick; the three of them form a dynamic and agile team whenever a case or matter demands added firepower.
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Milbank LLP
A SWAT team for high-stakes litigation, Milbank has a proven ability to win when everything’s on the line. The practice in New York is anchored by Christopher Gaspar and Errol Taylor, two dyed-inthe-wool trial lawyers and strategic visionaries who provide exceptional leadership from start to finish of a matter and who can take over tough cases and turn them around. Gaspar keeps a lot of balls in the air without dropping them or giving clients anything less than a stellar service. He is currently representing MRSI Systems in proceedings brought by Palomar Technologies relating to the use of a machine in the manufacture of semiconductor products; defending Fujitsu Network Communications in a complaint filed in the Eastern District of Texas by Capella Photonics, which he has beaten on the same technology in a previous action; and acting for healthcare-focused private equity company Auven Therapeutics in the defence of claims made by The Curators of the University of Missouri concerning inventions treating ocular conditions. Meanwhile, Taylor is fighting the corner of Tris Pharma in multiple suits.
Norton Rose Fulbright
Norton Rose Fulbright offers a comprehensive suite of patent services, but is recognised in New York for its prosecution proficiency. Gerard Messina and his colleagues get to grips with large portfolios with the greatest of ease, while applying finely honed drafting skills to the procurement of fresh patent assets. One of the ensemble’s largest clients is Robert Bosch, which assigned it back in 2016 with responsibility for more than 2,000 pending US applications. Some of the technologies involved relate to autonomous driving, which plays into one of Messina’s sector strengths – automotive; he also acts for KnorrBremse, a global leader in braking systems for road and rail vehicles.
O’Melveny & Myers LLP
There’s always a buzz around O’Melveny’s New York patent group, which punches well above its weight in numbers to take on the most complex and demanding Hatch-Waxman and Biologics Price Competition and Innovation Act litigations – and win. Lisa Pensabene brings tremendous energy to the practice and comes in for vocal praise from the clients that know her best: “Lisa is an excellent attorney and strategic thinker who can go toe to toe with anyone on the technical side; she takes apart opposing experts on crossexamination with ease. She has this unique ability to develop rapport and trust with witnesses, so they have the utmost confidence when testifying – a skill
IAM Patent 1000 1525
United States: New York which also serves her well before many judges.” She litigates extensively for Onyx Therapeutics, an Amgen company, and recently earned an important trial win in litigation involving cancer drug Kyprolis, in which the District of Delaware chief judge ruled that claims in all three asserted patents were valid and infringed by Cipla. With her on this was Hassen Sayeed, who also attracts glowing reviews: “Hassen is thorough and responsive, and achieves clients’ goals even under immense time pressure. His work product is consistently excellent and he’s brilliant at spotting tangential issues that ultimately are of importance.”
Paul Hastings LLP
For pharmaceutical originators and biotechnology companies facing business-critical contentious threats, Paul Hastings is a guiding light. It deploys hard-hitting, exceptionally rigorous trial lawyers to the frontlines while taking full advantage of its rich technical resources – the life sciences IP group comprises 40 lawyers and advisers with relevant technical degrees, including 10 PhDs – and international office network. The indomitable Bruce Wexler paces the team in New York and serves as global co-chair of the IP practice. The value of his leadership cannot be overstated in the context of big-ticket litigation, which is why he is highly prized by some of the largest drug companies in the world – Johnson & Johnson among them. He and Preston Ratliff have represented Actelion Pharmaceuticals, a Johnson & Johnson company, in multiple patent infringement suits – some of which are ongoing, but others which have closed with what effectively amounted to walkaway wins, the defendants having entered consent judgments and agreed to respect the asserted patent’s full term. Ratliff II, who captains the litigation practice in New York, has flourished at Paul Hastings, being blessed with the temperament, talent and trial skill necessary to bear heavy loads for the firm’s clients. He and global IP group vice chair Eric Dittmann are cut from the same cloth and are both present and future stars of US patent litigation practice. For Dittmann, defending key Orange Book patents covering blockbuster endocrinology drugs Invokana and Invokamet on behalf of Mitsubishi Tanabe Pharma Corporation (MTPC) has been a major recent focus; this involved conducting a Hatch-Waxman trial over Zoom which, at the time, was only the second such case to have been tried virtually. Other key contributors to this soaring group include Isaac Ashkenazi, who supported Dittmann in his MTPC work and has led other matters alongside Wexler; and Chad Peterman, who litigates with confidence and poise in the life sciences and high-technology realms. Well-equipped for high-level
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transactions, too, Paul Hastings has an experienced M&A, emerging growth company and IP licensing lawyer in New York in Samuel Waxman.
Paul Weiss Rifkind Wharton & Garrison LLP
Paul Weiss is a compelling choice for the most newsworthy patent disputes, thanks to the obsidian-sharp trial, appellate and post-grant skills of its lawyers, its strategic innovativeness and its outstanding track record. All of this is on full display in its cutting-edge representation of Amgen in a host of patent litigations and related PTAB proceedings concerning competitor applications to market biosimilars under the Biologics Price Competition and Innovation Act. Spearheading this is Nicholas Groombridge, who is simply one of the best courtroom lawyers in the country. His approach is a collaborative one that supports the seamlessness with which Paul Hastings configures optimised litigation teams. He regularly connects with DC-based post-grant supremo Steve Baughman and New York colleagues Eric Alan Stone, Catherine Nyarady and Jennifer Wu. Stone guides clients through unique challenges with an unerring compass and has put in resonant performances for Genetech; Nyarady has been integral to Paul Weiss’s representation of market leaders Edward Lifesciences and Nichia Corporation in multi-jurisdictional battles; and Wu is an engine of the firm’s biologics work.
Pearl Cohen Zedek Latzer Baratz
International outfit Pearl Cohen earns rave reviews: “Its highly professional, dedicated, smart and practical lawyers navigate complex areas of intellectual property in a masterful way. Their attention to detail is impeccable and they are immediately responsive, too.” The focal point for praise is managing partner and technology, medical and telecoms group chair Zeev Pearl, a “rare combination of businessman, patent attorney and scientist”. “Zeev understands technical issues perfectly, but his starting point is always ascertaining the commercial objectives of his clients. Incredibly thorough and articulate – and responsive 24/7 – he is a trusted adviser and true partner who delivers the highest standard of work.” To give but a sampling of his activities, he undertakes prosecution assignments for Morgan Stanley; marshals a cross-border team that takes care of Telit Communications’ large global portfolio; and secures vital registrations at the USPTO for Volkswagen Group. His counterpart in the pharmaceutical area is global life sciences group chair Mark Cohen, who represents the University of
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United States: New York Pennsylvania and the University of California, Los Angeles, as well as companies such as Humanigen, to which he provides sweeping strategic patent support. As a leading commercial IP lawyer, Cohen also runs a busy deal practice alongside his prosecution work. Guy Yonay anchors the litigation division. Having been put to the test in a diverse array of IP (not just patent) cases, as well as unfair competition and other disputes, he has sharpened his advocacy skills to a fine point.
Perkins Coie LLP
Perkins Coie litigates patent cases constantly, putting in winning performances in district courts, as well as at the ITC, the PTAB and the Federal Circuit. The firm has elite patent litigators stationed in economic hubs all around the country, including New York, where William McCabe and Gene Lee – two lawyers with vast experience representing a worldwide client base in US and international high-technology litigations – are based. Together – and with the support of local colleagues, as well as associates in Texas, Colorado and California – they act for Finnish Android-based smartphone manufacturer HMD Global, known as the home of Nokia phones, defending its technology in multiple cases.
Proskauer Rose LLP
A one-stop shop for life sciences and technology innovators, Proskauer Rose capitalises on the rich scientific expertise of its staff for prosecution, calls and executes the right plays in complex litigation, and gets signatures on the dotted lines of major transactions. It can carry out instructions globally, too, with members of its US, European and Asian bureaux regularly interacting with patent offices all over the world to secure consistent cross-border protection for clients. Flying the firm’s flag in New York are litigators James Shalek and Baldassare Vinti; and managing partner and head of life sciences Daryn Grossman, a shrewd transactional lawyer. Shalek builds longstanding relationships of trust with patrons and has taken the lead on contentious matters for British Telecommunications, Church & Dwight and many others. He’s great at breaking down the science and weaving stories around it that appeal to juries and triers of fact. Vinti, with whom he regularly works, brings great energy and commerciality to his representations and excels throughout all phases of litigation, including trial. Grossman cements the deals that are most critical to the success of her clients’ global expansion strategies. In one recent highlight, she advised Grifols on the closing of its $1.9 billion alliance with Shanhai RAAS Blood Products, China’s
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leading blood plasma company; among other notable points, this was the first-ever stock-for-stock deal involving an overseas public company and a non-state controlled Chinese public company. Grossman is at the top of her game right now.
Quinn Emanuel Urquhart & Sullivan LLP
Quinn Emanuel has made intellectual property a central pillar of its full-bodied commercial practice and enjoys prominent status as a market leader for patent litigation, both in the United States and globally. When there’s much to gain and much to lose, technology leaders take heart from the firm’s measured aggression, tactical nous, win rate and bench depth. On this latter point, Quinn Emanuel has a large number of representatives in the IAM Patent 1000’s New York coverage. They include national IP litigation group co-chair Edward DeFranco; Peter Armenio, a life sciences doyen whose work for the likes of Allergan ensures years of additional patent protection and revenue generation; fellow pharmaceutical stars Sandra Bresnick, Dominic Cerrito and Colleen Tracy James; biochemistry PhD Angus Chen; litigation, standards and licensing ace Thomas Pease; computer hardware and software specialist Richard Erwine; and Raymond Nimrod, who plays a strong hand in life sciences disputes – he is currently acting as lead counsel for Janssen Pharmaceuticals in Hatch-Waxman litigation relating to its blockbuster diabetes drugs Invokana and Invokamet, which have combined sales of over $1 billion – and high-technology cases. Trial skill, experience and a will to win are what these lawyers all have in common. The other name to note is Kathleen Sullivan, one of the foremost appellate advocates in the country.
Robins Kaplan LLP
Robins Kaplan acquits itself with distinction enforcing patents for monetisation purposes and defending clients’ innovations; operating on both sides of the ‘v’ affords it rare insight into the tactics and mindset of its opponents, which it turns to its advantage time and again. Bryan Vogel founded the New York office over a decade ago and has been a powerful engine of the firm’s success in US patent litigation (across all forums), arbitration and cross-border litigation. He puts in work at the ITC and captains a dynamic Section 337 investigations practice. Elizabeth Gardner joined in 2018 and has since ramped up the life sciences division considerably. She knows when to push and when to hold back, and is guided by an appreciation of the commercial big picture.
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United States: New York Ropes & Gray LLP
Active in the lateral recruitment market, Ropes & Gray has transformed its New York IP group in recent years, giving it added impetus in the life sciences litigation and patent transactions domains in which the firm is so strong at the national and international level. The most recent addition was Violetta Kokolus, who joined in May 2019. The former Dechert partner is in her element negotiating IP and data-intensive licensing agreements and resolving complex IP issues arising in the course of major M&A transactions. The previous year saw the arrival of Filko Prugo and Charlotte Jacobsen, who have seamlessly carried on doing what they do best: litigating complex pharmaceutical, biologics and other cases. Together, they are representing ArcherDX in proceedings filed by competitor Natera relating to amplifying and sequencing cell-free DNA; the suit concerns almost every product in ArcherDX’s portfolio, making it of critical business importance. Prugo and Jacobsen pull all the right levers in district courts, the PTAB and at the Federal Circuit, and afford complete coverage for their clients. An absolute rock for the firm throughout a period of change, Steven Pepe is a seasoned lead and cocounsel with a focus on semiconductors, computers, communications and consumer products. Not just an excellent presenter, he’s also brilliant at coordinating large cases across multiple forums.
Shearman & Sterling LLP
The IP specialists at Shearman & Sterling never lose sight of the commercial imperative when litigating patent cases; as a result of this laser focus, their strategies are better targeted and more carefully calibrated, and their outcomes – whether trial wins or settlements – are custom fitted to client needs. Head of intellectual property Mark Hannemann and fellow New Yorker Thomas Makin are the firm’s driving forces on the East Coast and both garner warm praise from the market. “Mark is smart and efficient, and his advice and arguments are always very much to the point. He’s great on the technology and a quick study in terms of how clients’ products work and what makes their business tick.” “Someone you can trust”, Makin “builds persuasive stories around his theories. He is thoroughly up to date on relevant industry and patent law developments, and gives sage advice that helps direct smarter future decision making”. Their recent highlights include a significant win for Nichia and OSRAM against Lighting Science Group in the ITC: the administrative law judge granted summary determination of no infringement on each of Nichia’s and OSRAM’s products and lack of technical
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domestic industry on half of the patent claims, and subsequently issued an initial determination finding the remaining claims – some of which were deemed invalid – to be not infringed. Shearman & Sterling is, of course, a premier corporate law firm and as such runs a high-performance IP and technology transactions practice. Integral to this, Jordan Altman is a deal driver with a broad IP skillset, thanks to a background prosecuting and litigating patents. He undertook intensive IP work on behalf of Raytheon Technologies with respect to its merger of equals with United Technologies. See p1726 for firm profile
Sidley Austin LLP
“Sidley Austin has incredible depth as a full-service legal provider and as partner for patent litigation.” The prestigious firm’s New York team is stacked full of high-level operatives, including Jim Badke and Ching-Lee Fukuda, who are cited by appreciative patrons for their special attributes. “Jim is fully engaged in his matters and provides the very highest level of service. His cases are crafted with attention to detail and his teams work with amazing efficiency, engaging in healthy and smart debate on substantive issues without egos ever getting in the way. He’s incredibly practical and a tenacious fighter who never quits.” Fukuda is a “wonderful team player with superb legal acumen who can handle the most complex of cases”. Together they netted a significant victory for BioTelemetry (CardioNet) when the Federal Circuit, reversing a district court decision, found BioTelemetry’s patent to be eligible under Section 101; this is a rare Federal Circuit win for a patent owner on Section 101 and is significant in providing guidance on the importance of reciting the advantages of an invention in the specification – particularly in the medical technology and diagnostics space. They form a close-knit and formidable unit with Sona De; all three have been representing Bayer Healthcare in a Federal Circuit appeal which followed a major high-profile damages award secured against Baxalta in US litigation as a component of a global legal battle between the two parties concerning the market for haemophilia treatments. Worthy of special mention, too, is Sidley’s technology and IP transactions practice, which is co-led globally by Jennifer Coplan. Breaking new ground in the insurance sector, Coplan and co recently assisted a major life insurance company on the negotiation of a technology services transaction for the development and provision of an artificial intelligence (AI) driven accelerated underwriting technology solution.
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United States: New York Skadden Arps Slate Meagher & Flom LLP
High-end patent litigation and transactions are the metier of Skadden, which is a go-to when creative patent strategies are needed. New York is the epicentre of its contentious and non-contentious practices, as the home of trial lawyers Anthony Sammi and Douglas Nemec and top deal brokers Jose Esteves, Resa Schlossberg and Stuart Levi. Head of IP litigation Sammi is advising Caterpillar in an ongoing patent and IP licensing dispute with a software services provider; representing pressure control equipment manufacturer FHE USA in two competitor infringement disputes; and acting for Juno USA in multiple infringement cases relating to ride sharing technology. Working alongside Sammi on all of these matters, Nemec has also represented Array Biopharma in a dispute with AstraZeneca, shooting down the latter’s attempt to dismiss a contract claim brought by Array, which alleged that AstraZeneca had failed to pay $200 million in royalties due under a previous deal in which it sublicensed Array’s drug selumetinib to Merck. Recent transactional highlights for Esteves include advising Massachusetts Mutual Life Insurance Company on the $2.35 billion sale of its retirement plan business to Empower Retirement; and assisting ZeniMax Media with its high-profile $7.5 billion acquisition by Microsoft. Schlossberg’s mega-deals include DuPont de Nemours’ $45.4 billion merger of its nutrition and biosciences business with International Flavours and Fragrances Inc in a Reverse Morris Trust transaction. Levi – who co-heads the IP and technology group – remains a leading name in the transactions field, but has sharpened his focus on blockchain, privacy and cybersecurity matters.
Steptoe & Johnson LLP
The support package that Steptoe & Johnson provides to pharmaceutical and biotechnology companies is extremely well rounded. In immunology PhD Ying Li, the firm has a magnificent portfolio manager, counsellor and due diligence lawyer with superb technical credentials. “Ying is an outstanding strategist and someone you can trust with your most valuable portfolios. She is also a wonderful mentor and has built a strong team of associates.” The specifics of her recent work can’t be disclosed, but she gives rigorous support to top pharmaceutical manufacturers, innovators in the field of gene editing and rare diseases, and a biotechnology-focused venture capital company. Meanwhile, in John Molenda – another of the group’s PhDs – and Vishal Gupta, the firm has eminent litigators who join forces to provide a
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killer one-two punch. They have been litigating extensively for Apotex in cases involving its generic versions of Celgene’s blockbuster blood cancer drug Revlimid and Pfizer’s renal cancer drug Inlyta. They also continue to be engaged in Sanofi and Regeneron’s battle with Amgen over Praluent, and are now at the Federal Circuit following Amgen’s appeal of its remand trial win in August 2019, in which all asserted patent claims were invalidated.
Sullivan & Cromwell LLP
Sullivan & Cromwell’s litigators and transactional specialists live for cutting-edge, genre-defining, commercially significant IP and technology disputes and deals. Their work often takes them into uncharted patent waters, which they navigate with an unerring compass to bring clarity to issues and victory to clients. Among the very best that the market has to offer, trial lawyer Garrard Beeney is a model of civility, sophistication and excellence in the law. As part of his current workload, he is representing Columbia University in litigation against Symantec regarding inventions used to detect malware in computer systems; capitalising on his refined transactional skillset, he is also acting for Via Licensing in a dispute arising from a licensing agreement. With him on the former matter is Dustin Guzior, a rising star of the practice who makes his first appearance in the IAM Patent 1000 this year. They were recently joined by former Desmarais lawyer and experienced IP litigator Laurie Stempler, who took up the role of special counsel in March 2021. On the transactions side, Mehdi Ansari and John Evangelakos have been making waves brokering billion-dollar deals. Linking up with Palo Alto’s Nader Mousavi, Ansari represented DISH Network in its acquisition of the Boost pre-paid mobile business of Spring Corporation for $1.4 billion in cash; he also represented Novartis in its acquisition of The Medicines Company for an equity value of $9.7 billion. Evangelakos remains a reference for technology and financial services deals, and is a leading authority on cybersecurity.
Venable LLP
With its New York lawyers in the driving seat, Venable has been on a fine run of form in patent litigation of late. Much credit for this is owed to Dominick Conde, William Solander, Ha Kung Wong and Scott Reed, who form the nucleus of one of the best pharmaceutical and biotechnology groups around – as their caseload bears out. IP division co-chair Conde represents Allergan and is opposing a challenge to a patent relating to its Botox product; Solander has
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United States: New York enjoyed great success in multiple post-grant reviews on behalf of Grünenthal and Abiogen Pharma to invalidate patents owned by Antecip Bioventures II relating to treatments for complex regional pain syndrome; Wong has been contributing in vital ways on the litigation front – for example, supporting Conde in his Allergan work – while also maintaining a strong focus on licensing and acquisitions; and Reed continues to bring leadership as co-chair of the IP litigation life sciences group. Props also go to Michael Sandonato, Frank Gasparo and Christopher Borello, who take centre stage when high-technology disputes need to be fought and won. Sandonato has been busy for long-time client Canon and is defending it in two NPE suits; Philips is his other main representation – he is serving as lead counsel for the company in a set of consolidated cases involving patents on graphical user interface, streaming and content protection technologies, many of which have been resolved favourably, but with one trial coming up. He co-chairs the IP litigation division with Gasparo, an adept, business-focused trial lawyer who makes all the right plays in district courts, the ITC, the PTAB and the Federal Circuit. Not easily pigeonholed, Borello performs adroitly in pharmaceutical and non-life sciences cases; capitalising on his patent counselling and portfolio development know-how, he addresses litigation issues holistically. An expert on biologics and small molecule pharmaceuticals with research experience on her CV, Alicia Russo is a highly proficient deal lawyer. She does great and many things for Gilead Sciences, and recently oversaw its $21 billion acquisition of Immunomedics.
Weil Gotshal & Manges LLP
Weil has an enduring reputation for excellence in high-exposure patent litigation between competitors, whose results transform fortunes and impact on entire industries. Elite lawyers in Silicon Valley, Houston, DC and New York help to sustain the firm’s legacy, Elizabeth Weiswasser and Anish Desai among them. Weiswasser is perfectly suited to her role as co-head of life sciences, given her strong technical background, decades on the frontlines of headline-writing cases, leadership and mentoring skill, and commitment. Desai is making a name for himself in district court litigation, post-grant proceedings and appeals, and frequently collaborates with colleagues such as Weiswasser and DC’s Brian Ferguson, with whom he has been representing GE Aviation in 36 inter partes review petitions challenging Pratt & Whitney patents. With a 26-lawyer specialised group spanning Silicon Valley and New York, Weil is also a dominant force when it comes to patent and
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technology transactions. Cutting-edge instructions are very much the order of the day for Michael Epstein, Jeffrey Osterman and Charan Sandhu, each of whom is highly recommended in the IAM Patent 1000 alongside just five other New York-based specialists from competing firms. Talisman of the practice Epstein continues to do amazing things for Campbell Soup Company, L’Oréal, Sanofi and others. Garnering special praise this year, Osterman has deep scientific knowledge and legal expertise that are unsurpassed in the profession. Working long hours seven days a week to deliver an outstanding-quality end product, “he makes the life of a general counsel much easier”. He is a trusted confidant to major pharmaceutical companies. Sandhu has racked up many billion-dollar deals and is the first choice of one of the world’s leading technology companies. Her efforts on the diversity front and her civic contributions also deserve applause.
White & Case LLP
White & Case is in pole position to take on bet-thecompany disputes with complex patent, antitrust, breach of contract and licensing componentry. The broad horizons of its top trial lawyers are immeasurably helpful in this regard. A-lister Dimitrios Drivas, for example, brings to bear profound life sciences industry and technical knowledge along with a well-rounded contentious, counselling and transactional toolkit. Alison Hanstead – who also possesses heightened pharmaceutical powers – has a rare faculty for matters in which patent and competition issues intersect; so too does Raj Gandesha who has litigated a diverse array of IP, antitrust and commercial suits with equal dexterity throughout his career. Scott Weingaertner’s versatility allows him to switch between major biosimilar and high-technology conflicts without batting an eyelid. Sophistication is also a hallmark of White & Case’s transactional practice. Adam Chernichaw – who was pivotal in launching the firm’s global technology transactions offering – is at the leading edge of business in the fintech space; Arlene Arin Hahn hails from a litigation background and has finely honed presentation skills that serve her well at the negotiating table; and global thinker Erin Hanson sees things through clients’ eyes. See p1740 for firm profile
WilmerHale
The high-calibre attorneys at WilmerHale have a rich comprehension of the life sciences, with many regularly putting in textbook-worthy performances at trial. Boston-based IP litigation co-chair Lisa
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United States: New York Pirrozzolo immediately comes to mind; as do New York residents Robert Gunther, David Bassett and Christopher Noyes, who form a tailor-made strike force for prestigious clients. Gunther is at the vanguard of biosimilar patent litigation and is near-constantly on assignment for Genentech in such matters; this work alone has given him huge experience in PTAB proceedings, which he handles – and coordinates with litigation – with exceptional poise. Bassett has served as lead counsel at trial on many occasions and is a veteran of Hatch-Waxman and other life sciences suits. New to the IAM Patent 1000 for 2021, Christopher Noyes is “an absolute star who never misses his mark”: “Chris’s attention to detail is top notch; as is his appreciation of the real needs of his clients.”
Winston & Strawn LLP
One of the country’s elite patent litigation firms, whichever way you cut it, Winston & Strawn has an NFL-sized squad of trial lawyers which takes on some of the highest-stakes representations and gets the job done in all forums. Increasing Winston’s visibility in New York is Krishnan Padmanabhan, a former semiconductor engineer for a major aerospace company with impressive technical fluency and commercial acumen – attributes he applies to great effect throughout all phases of complex litigation. He has turned heads with his litigation efforts in the communications and networking fields, and recently represented Cisco in seeking a declaratory judgment of non-infringement of a patent that Uniloc alleged was infringed; following Uniloc’s counterclaim, Padmanabhan and California-based David Enzminger obtained judgment on the pleadings that the claims were unpatentable under Section 101, which they then backed up at the Federal Circuit. Winston is also a destination for patent prosecution and counselling – a practice which Pejman Sharifi keeps humming. See p1744 for firm profile
Other recommended experts
Karen Bromberg provides staunch leadership to Cohen & Gresser’s IP and technology and privacy and data security practices; she is also an adept litigator and deal negotiator, with a strong business sense. Laura Brutman takes charge of Schiff Hardin’s prosecution practice. She has forged longstanding relationships with major players in diverse areas such as industrial manufacturing, computer technology and semiconductors, which trust in her technical abilities, strategic counsel and insightful opinions. Confident in his deep experience, extensive preparation and well-considered strategies, Joseph
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Calvaruso never flinches in the courtroom; he is one of Orrick’s crack IP litigators, while colleague Joshua Rosenkranz is a primed and polished appellate lawyer. Proficient across the IP spectrum and an allround pharmaceutical litigator, patent filer, licensing lawyer and counsellor, Locke Lord IP chair Alan Clement sees the whole playing field for clients. Colleague Peter Fill has a similarly broad IP view: he undertakes extensive patent procurement and protection assignments for an innovative leader in 5G, networks and phones and a multinational energy sustainability and efficiency-focused technology company, earning him a spot in this year’s IAM Patent 1000 prosecution rankings. Ivor Elrifi excels in his role as chair of Cooley’s global patent counselling and prosecution group. His strategic advice is like gold dust for pharmaceutical and biotechnology companies, universities, research foundations and others on whose behalf he has sewn up many transformative deals and alliances. Adam Golden captains Hogan Lovells’s New York corporate practice, but earns his IAM Patent 1000 stripes courtesy of his specially developed IP transactions nous. Many notable deals in the pharmaceutical, biotechnology and medical device spaces bear his fingerprints. Christopher Harnett has built his career on his ability to prevail in tough patent infringement and other IP disputes. A blend of advocacy skill, technical knowhow and business sensitivity makes the Maynaard Cooper shareholder a force to be reckoned with. An “aggressive litigator and tough negotiator”, David Hecht of Hecht Partners “has a brilliant legal mind and a passion for the law along with free-flowing writing skills”. “He gives personal attention to his clients and their cases, is extremely patient, excellent at communication and brilliant on strategy”. Philip Hirschhorn has over 30 years of litigation and trial experience and has seen combat in a great variety of technology areas and industries, notably including the life sciences. He is an astute legal problem solver who never takes his eyes off the business picture. Panitch Schwarze is his base of operations. Pryor Cashman partner Jeffrey Johnson understands the business of intellectual property and educates SMEs on the best strategies for protecting intangible assets and getting optimum return on their investment in them. An anchor member of Akin Gump’s sterling patent litigation group, Michael Kahn undertakes significant work for Boston Scientific, which he is currently representing in a series of cases in the District of Delaware against Nevro Corp regarding patents relating to spinal cord stimulation therapy; and for 3M Company and 3M Innovative Properties, for which he recently successfully denied institution
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United States: New York of an inter partes review in a dispute in the dental composite space. Commercially consequential suits between competitors such as these are a daily occurrence for him and see him at his best. Paul Keller joined Allen & Overy in March 2020, giving the UK Magic Circle firm and global powerhouse a versatile patent litigator and all-round IP counsellor on the East Coast. He relishes the opportunity to do battle over emerging and disruptive technologies such as AI, the Internet of Things and autonomous driving. Potomac Law has been adding to its bench in significant ways and, in April 2020 recruited veteran technology litigator and licensing ace Michael Lennon in New York. Then, in September 2020 it unveiled Pablo Hendler as its new signing – another consummate litigator, this time with a focus on life sciences and medical devices. The leader of Simpson Thacher’s IP practice, Lori Lesser is one of New York’s best patent and technology transactions lawyers; privacy and cybersecurity are further strings to her bow. Foley Hoag bolstered its patent litigation offering in June 2020 with the arrival of Jeffrey Lewis, a seasoned life sciences litigator with a deft counselling and licensing touch. Thomas Meloro chairs the IP department at Willkie Farr & Gallagher. He has long blazed a trail in the life sciences as a litigator and trial lawyer. Lucas & Mercanti founding partner Michael Mercanti keeps his ear to the ground in clients’ markets and leverages his understanding of the competitive life sciences landscape to design and implement effective global strategies. For generic pharmaceutical companies, Deepro Mukerjee is a linchpin of success in Hatch-Waxman litigation, but adds terrific value as an all-round strategic adviser, too. He co-leads Katten’s patent litigation practice. Michael Murray is a fresh face at FisherBroyles. The former Winston & Strawn lawyer is a gifted litigator and trial lawyer who has spent decades pressing his clients’ advantage in all key forums. A leader in Vinson
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& Elkins’s IP litigation and commercial disputes practices, Hilary Preston designs and executes clever defence strategies for multinationals such as Japan Display, which she recently represented in three patent infringement lawsuits filed by Vista Peak Ventures in the Eastern District of Texas involving patents directed to LCD technology. David Radulescu is never thrown off his trial game: he is highly experienced, supremely confident on the technical subject matter – he’s an authority on the subject of semiconductors – and extremely committed. He founded patent litigation boutique Radulescu LLP. IP commercialisation is the specialist subject of Harry Rubin, Kramer Levin’s technology and IP transactions chair. He distinguishes himself as a global thinker and deal closer, and a font of insight and analysis on fintech matters. Arun Subramanian wears the colours of Susman & Godfrey and does the elite trial firm proud with his poised performances. He and Texas partner Joe Grinstein are representing Personalized Media Communications in a series of Eastern District of Texas cases against streaming media providers Google, Netflix and Akamai. Clifford Ulrich joined Carter De Luca in 2020, significantly amping up the firm’s prosecution, PTAB and strategic counselling practice. The former Kenyon & Kenyon and, later, Hunton Andrews Kurth partner is a veteran in the post-grant space, with experience representing petitioners and patent owners. Francisco Villegas took his talents from Cohen & Gresser to Armstrong Teasdale in September 2019. An intuitive litigator, Villegas also has a sharpened transactional skillset that he uses to support and oversee diverse corporate and IP commercialisation deals. A hugely popular name in the life sciences, Holland & Knight’s Charles Weiss has as good a handle on industry issues as any patent lawyer. This stems from his engagement in high-level litigation as well as transactional work and deep scientific, regulatory and business know-how.
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Altman, Jordan
Partner – Shearman & Sterling LLP jordan.altman@shearman.com | www.shearman.com
Jordan Altman is a partner in the IP transactions group of Shearman & Sterling LLP in New York. He practises corporate law with an emphasis on structuring, drafting and negotiating agreements that focus on the development, transfer, procurement, commercialisation and maintenance of intellectual property and technology. He also counsels clients, including public companies, growing technology-driven businesses and start-ups, on IP portfolio development. He has extensive experience working with clients in the pharmaceutical, medical device, chemical, entertainment, sports, automotive, software and financial services industries. Prior to joining Shearman & Sterling, Mr Altman practised patent and trademark prosecution for pharmaceutical and medical device companies and participated in patent and trade secret litigation. He also examined patent applications for inventions relating to immunological functions at the US Patent and Trademark Office before obtaining his law degree. Mr Altman has been recognised as a “Top Intellectual Property Lawyer in North America” by MergerLinks (2019) and is a recommended attorney in IAM Patent 1000 (2019 and 2020). Mr Altman’s recent notable transactions include his work representing the Dow Chemical Company in connection with its $130 billion separation and spin-off from DowDuPont; Raytheon in connection with its $120 billion merger of equals with United Technologies Corporation; and CVS Health Corporation in its $69 billion acquisition of Aetna Inc.
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Shearman & Sterling LLP 599 Lexington Avenue New York NY 10022-6069 United States T +1 212 848 7125 See firm profile 1726
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Becker, Matthew Managing Partner – Axinn, Veltrop & Harkrider LLP mbecker@axinn.com | www.axinn.com
Matthew Becker serves as Axinn’s managing partner and focuses his practice on IP litigation, analysis and counselling. His IP litigation practice predominantly includes patent infringement and trade secret litigation and his counselling practice focuses on advising clients on avoiding third-party IP rights in conjunction with product development, conducting patent infringement and validity analyses, and providing strategic advice regarding patent portfolio development. Mr Becker has served as lead counsel in significant patent infringement lawsuits, disputes concerning patent inventorship and patent ownership, claims of breach of licence agreements, trade secret misappropriation, breach of contract and business torts. Many of these actions have involved the chemical or electrical arts. He has handled a significant number of Hatch-Waxman pharmaceutical patent infringement litigations, and has also litigated patent infringement cases involving electronic components of nuclear detection equipment, embedded computers, brushless direct current fans and hard drive motors, specialty optical fibres, product packaging, tools and hardware, and various business methods. Mr Becker’s role in these matters has included the development of trial strategy, Markman hearings, jury trials and all aspects of discovery. In addition to being listed in IAM Patent 1000, Mr Becker was recently selected as a “National Law Journal Intellectual Property Trailblazer”, recognised as a “Litigation Star” by Benchmark Litigation and named a “2020 Life Sciences Star” by LMG Life Sciences.
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Axinn, Veltrop & Harkrider LLP 90 State House Square Hartford CT 06103-3702 United States T +1 860 275 8177 See firm profile p1652 Professional associations • ABA • AIPLA • Connecticut Intellectual Property Law Association
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Bondor, Paul A Partner – Desmarais LLP pbondor@desmaraisllp.com | www.desmaraisllp.com
Paul A Bondor is a veteran trial lawyer and partner of Desmarais LLP, where his practice focuses on the litigation of complex technologydriven disputes, particularly patent infringement jury trials. As lead trial counsel for Boston Scientific, Mr Bondor won a judgment of more than $42 million in a patent infringement case involving coronary stents, and he, along with others from Desmarais LLP, helped secure a recordsetting $1.54 billion jury verdict on behalf of Lucent Technologies, which was the largest patent jury verdict in history at the time. Mr Bondor and his trial teams have also secured multiple exceptional defence verdicts for his clients – even against adversaries who were able to secure nine-figure jury verdicts in prior cases asserting the same patents. Mr Bondor’s litigation experience spans a wide range of industries, including medical devices, semiconductor processing, computer memory design, voice-over-IP technology, networking and computer software. He has also led teams in unfair competition, trade secret, trademark and design patent matters, as well as coordinated multinational patent litigation with counsel across Western Europe. Mr Bondor started his career as a law clerk for Judge Louis Stanton in the US District Court for the Southern District of New York. He then began private practice with Kenyon & Kenyon, where he was elected partner in 2001. In 2004 John Desmarais asked him to join the New York office of Kirkland & Ellis as a partner in the IP litigation group. After seven years there, he again joined forces with Mr Desmarais to build Desmarais LLP. Mr Bondor is admitted to the Bars of New York and the District of Columbia, as well as the US Court of Appeals for the Federal Circuit and various federal district courts. He is also registered to practise before the USPTO.
Desmarais LLP 230 Park Avenue New York NY 10169 United States T +1 212 351 3424 F +1 212 351 3401 See firm profile p1672 Professional associations • ABA • AIPLA • NYIPLA
Education • University of Michigan Law School, JD (magna cum laude), 1993; Order of the Coif; Michigan Law Review, contributing editor 1992-1993, associate editor 1991-1992 • Princeton University, BSE (cum laude), mechanical and aerospace engineering, 1990; Sigma Xi
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IAM Patent 1000 1535
Chesler, Evan R Partner – Cravath, Swaine & Moore LLP echesler@cravath.com | www.cravath.com
Evan R Chesler is Cravath, Swaine & Moore LLP’s chair. One of the most highly regarded litigators in the United States, Mr Chesler has extensive experience handling trials, arbitrations and appeals in a wide variety of matters, including intellectual property, for clients in virtually every industry. He has achieved numerous successes for major pharmaceutical and technology companies in ‘bet-the-brand’ litigation over valuable patent rights. Mr Chesler recently represented Qualcomm in its global fight with Apple concerning Qualcomm’s patent licensing and modem chipset businesses. After his opening argument at trial in the central action, the companies announced a global settlement that resolved all litigation between the parties and includes a payment from Apple to Qualcomm, as well as a six‑year licence agreement and a multi-year chipset supply agreement. Mr Chesler’s other representations include securing a trial victory for Merck Sharp & Dohme in a patent infringement suit concerning its antifungal agent Noxafil; representing Mylan in winning both a judgment after trial upholding the validity of its patents on the respiratory drug Perforomist and a Federal Circuit Court of Appeals decision concerning the validity of pharmaceutical composition patents covering the drug; and securing damages of over $442 million for Bristol-Myers Squibb and Sanofi-Aventis in patent infringement litigation against Apotex regarding Plavix. He currently represents Quibi, a short-form streaming start-up, in consolidated patent infringement and trade secret litigation against Eko relating to Quibi’s use of its ‘Turnstyle’ video display technology. Mr Chesler has been recognised as a leading litigator in the IP arena by numerous professional publications, including Chambers USA, Chambers Global, The Legal 500 US, Benchmark Litigation and The Best Lawyers in America. Mr Chesler received an AB in history from New York University, an MA in Russian area studies from Hunter College and a JD from the New York University School of Law. He previously served as the firm’s head of litigation, deputy presiding partner and presiding partner.
1536 IAM Patent 1000
Cravath, Swaine & Moore LLP Worldwide Plaza 825 Eighth Avenue New York NY 10019 United States T +1 212 474 1243 See firm profile p1670 Professional associations • ABA • ACTL • IBA
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Desmarais, John M Partner – Desmarais LLP jdesmarais@desmaraisllp.com | www.desmaraisllp.com
John M Desmarais is the founding partner of Desmarais LLP. In 1988, after graduating from New York University Law School, Mr Desmarais started his career at Fish & Neave. After practising in the area of IP litigation and counselling for several years, he left private practice to serve as an assistant US attorney in the Southern District of New York, where from 1992 to 1995 he tried criminal jury trials for the federal government. After leaving the government, Mr Desmarais returned to the practice of IP litigation at Fish & Neave, later joining the New York office of Kirkland & Ellis. From 1997 to 2009 he was a partner at Kirkland, and he served as a member of the firm management committee from 2004 to 2009. After 13 years at Kirkland, he left to found IP trial boutique Desmarais LLP. Mr Desmarais is a member of the Bars of California, New York, Washington DC, the US Supreme Court, the Federal Circuit Court of Appeals and various other federal district courts and courts of appeal. Mr Desmarais is also registered to practise before the USPTO. He obtained a degree in chemical engineering from Manhattan College and a law degree from New York University. Professional memberships • American Bar Association • American Institute of Chemical Engineers • California Bar Association • DC Bar Association • Federal Bar Council • New York Bar Association • New York City Bar Association • New York County Lawyers’ Association • New York Intellectual Property Law Association
Desmarais LLP 230 Park Avenue New York NY 10169 United States T +1 212 351 3420 F +1 212 351 3401 See firm profile p1672 Professional associations • ABA • AIChE • NYIPLA
Publications • “The Sedona Conference Commentary on Patent Damages & Remedies”, The Sedona Conference Journal, Volume 15, 53 (editor in chief and chair, Working Group 9, Autumn 2014) • “State Responses to Leaking Underground Petroleum Storage Tanks”, Annual Survey of American Law, 731 (1987) Qualifications • Manhattan College, BChE, 1985 • New York University School of Law, JD, 1988
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IAM Patent 1000 1537
Donovan, Bindu Partner – Desmarais LLP bdonovan@desmaraisllp.com | www.desmaraisllp.com
Bindu Donovan is a partner in Desmarais LLP’s life sciences practice, focusing on pharmaceutical and medical device litigation. She has more than two decades of experience in life sciences patent litigation, and has significant experience handling cases filed under the Hatch-Waxman Act on behalf of innovator drug companies. She has represented some of the world’s leading life sciences companies in high-stakes patent disputes, including cases relating to cancer, influenza, diabetes, hypertension, neurological and ophthalmic disorders, biotechnology and drug-eluting stents. Ms Donovan was named as one of the “Top 250 Women in Litigation” and as a “Local Litigation Star” by Benchmark Litigation, a publication honouring the achievements of lawyers in litigation practices in the United States. In addition, Ms Donovan was recognised for her life sciences-related patent work by LMG Life Sciences, and as an “IP Star” and as one of the “Top 250 Women in IP” by Managing Intellectual Property. Ms Donovan began her career as an associate at Fish & Neave in 1998. In 2005, Ms Donovan moved to Sidley Austin LLP’s New York office, and in 2008 she was elevated to partner in the firm’s IP litigation practice. She joined Desmarais LLP as a partner in 2018. Professional memberships • American Bar Association • New York Intellectual Property Law Association
Desmarais LLP 230 Park Avenue New York NY 10169 United States T +1 212 351 3428 F +1 212 351 3401 See firm profile p1672
Education • Fordham University School of Law, JD, 1998 • Western University, MS, biology, 1993 • York University, BS, biology, 1990
1538 IAM Patent 1000
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Drivas, Dimitrios T Partner – White & Case LLP ddrivas@whitecase.com | www.whitecase.com
A partner in White & Case’s global IP practice group, Mr Drivas’s practice focuses on patent litigation and counselling, and technology transfer. As a registered US patent attorney, Mr Drivas represents clients in complex patent and technology-related disputes in the Patent Office and courts, and before arbitration panels. His extensive practice experience enables him to guide clients through often highly technical matters. Drawing on his background in biotechnology, he brings particular insight to IP issues in the life sciences sector. In addition to his litigation practice, Mr Drivas provides clients with advice on the acquisition and licensing of IP rights, joint development agreements and strategic alliances. Mr Drivas has over 30 years of experience in IP law and the resolution of complex commercial disputes. He has been lead trial counsel in patent litigations, Abbreviated New Drug Applications litigation, patent antitrust litigations and arbitrations involving complex transactions and agreements. He has represented clients such as Pfizer, Google and UCB. Mr Drivas is highly ranked and recognised as a leader in his field in The Legal 500, PLC Which Lawyer?, Best Lawyers, Chambers Global and Chambers USA, with clients describing him as “an outstanding attorney” and “very experienced in the life sciences space”.
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White & Case LLP 1221 Avenue of The Americas New York NY 10020-1095 United States T +1 212 819 8286 See firm profile p1740
IAM Patent 1000 1539
El Hioum, Dianna G Partner – Fox Rothschild LLP delhioum@foxrothschild.com | www.foxrothschild.com
Dianna G El Hioum is more than just a talented patent attorney. Recently named chair of Fox Rothschild’s 100-plus-member national IP department, Ms El Hioum has a background in chemistry and biotechnology that helps her understand the development of drugs and medical devices – from early stage research to Food and Drug Administration approval, production and marketing. She also has extensive experience in the shooting sports industry. Before graduating cum laude from Boston College Law School, she received a bachelor’s degree in chemistry from the Massachusetts Institute of Technology. She also worked at an international biotechnology company involved in large-scale manufacturing of clinical and commercial drug products. It is with that history that Ms El Hioum – who most recently served as chair of the firm’s patent practice group – has been able to develop valuable global patent portfolios for her clients, enabling them to expand their business around their intellectual property and to avoid and resolve disputes. A skilled negotiator and persuasive writer, she counsels clients on a variety of issues, including post-grant proceedings, drafting and negotiating licence agreements, dispute resolution, freedom-to-operate investigations and assessments of noninfringement, invalidity, patentability and enforceability issues. For businesses, inventors and entrepreneurs in the shooting sports sector, Ms El Hioum delivers a rare combination of top-notch legal know-how and technical knowledge of guns and weaponry. The chair of her former firm’s shooting sports practice, she frequently handles IP matters for Fox Rothschild related to firearms, components, accessories and ammunition, including issues involving the US Department of Defence. In 2020 Ms El Hioum, who is based in New York, helped secure a preliminary injunction that cleared the way for a Georgia company to retrieve equipment, parts and inventory from a Utah manufacturer that failed to produce a firearm that had been pre-ordered by nearly 700 customers.
1540 IAM Patent 1000
Fox Rothschild LLP 101 Park Avenue, 17th Floor New York NY 10178 United States T +1 212 878 7967 See firm profile p1680
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Fleming, Porter F Partner – Haug Partners LLP pfleming@haugpartners.com | www.haugpartners.com
Porter Fleming leads the firm’s litigation practice group and has more than 30 years of IP litigation experience. Not only is he comfortable in the courtroom, before a judge or jury, he has also developed a unique ability to effectively advise and guide senior management and in-house counsel, whether asserting IP rights or defending against infringement claims. His varied experiences and significant results speak for themselves. Within the litigation practice group, Mr Fleming represents a diverse range of clients, from large corporations to individual inventors. He is known to draw upon the extensive resources of the firm, creating casespecific teams of attorneys, technical experts and scientific advisers to address the various legal and technical aspects of a specific case to efficiently prepare and present the case to a resolution. Mr Fleming’s leadership, knowledge and experience in IP law is valued by many of the world’s leading pharmaceutical and science-based corporations. Mr Fleming has been recognised by his peers and third-party organisations: Martindale Hubbell since 2004 as AV Preeminent; New York SuperLawyers since 2009; and for Patent Litigation by Intellectual Asset Management (IAM) Patent 1000, The World’s Leading Patent Practitioners since 2015. Mr Fleming received his BS in metallurgical engineering from the Colorado School of Mines and his JD from Franklin Pierce Law Centre.
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Haug Partners LLP 10th Floor 745 Fifth Avenue New York NY 10151 United States T +1 212 588 0800 See firm profile p1692
IAM Patent 1000 1541
Gandesha, Raj Partner – White & Case LLP rgandesha@whitecase.com | www.whitecase.com
Raj Gandesha is a partner in White & Case’s Global Intellectual property practice and represents US and international clients in high-stakes IP, antitrust and commercial litigation matters, with a special focus on litigationsthat raise novel issues, at the intersection of patent law, innovation policy and competition law. Mr Gandesha’s recent matters include the following: • Defending Pfizer in multiple nationwide class action antitrust and RICO litigations with respect to EpiPen, Lipitor, Effexor XR, Humira and Celebrex accusing the company of delaying entry of generic competition through, among other things, alleged “reverse payment” patent settlements, “sham” FDA citizen petitions, “sham” patent litigation, fraud on the FDA, purported “product hopping” and fraud on the USPTO; • Representing a European innovator of speech recognition technology in US patent litigation commenced by an incumbent US competitor in which the former asserts antitrust and unfair competition counterclaims against the latter based on patent thicketing, sham patent litigation and other competitionforeclosing conduct; • Representing a generic drug manufacturer in multiple state and federal actions alleging False Claims Act, common law fraud and consumer protection claims based on allegations that drug manufacturers reported inaccurate pricing benchmarks, which allegedly caused state Medicaid agencies to overpay for prescription drugs provided to Medicaid beneficiaries; • Securing on behalf of a major national oil company the complete dismissal at the motion to dismiss stage, under, among other things, the political question and act of state doctrines, of a putative class action alleging price fixing of refined petroleum products relating to OPEC; • Representing a major pharmaceutical manufacturer in a novel trade secret misappropriation matter before the US International Trade Commission concerning alleged theft of bacterial strains that resulted in a successful settlement for our client; • Securing on behalf of landline and wireless telephone companies the complete dismissal of multi-party federal patent infringement actions concerning international call-blocking technology; and • Representing a performing rights society in litigation concerning novel copyright issues relating to the transmission of music on the Internet.
1542 IAM Patent 1000
White & Case LLP 1221 Avenue of the Americas New York NY 10020-1095 United States T +1 212 819 8975 See firm profile p1740
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Goswami, Sharonmoyee Partner – Cravath, Swaine & Moore LLP sgoswami@cravath.com | www.cravath.com
Sharonmoyee Goswami is a partner in Cravath, Swaine & Moore LLP’s litigation department. Her practice focuses on intellectual property, antitrust and litigation involving complex scientific issues. Ms Goswami is representing Alarm.com in an International Trade Commission (ITC) investigation initiated by EcoFactor seeking an exclusion order to prevent certain products, among them Alarm.com’s smart thermostats, from entering the United States. The matter was tried in November 2020 in one of the first all-virtual ITC patent infringement trials. She also represents Abiomed, a global medical device company that develops groundbreaking cardiovascular products, in two patent infringement matters relating to patents for guidance systems used to place intravascular blood pumps. Ms Goswami was recognised in 2020 for her patent litigation work by The Legal 500 US. She was included in Benchmark Litigation’s “40 & Under Hot List” in 2020 and named a 2021 “Future Star” by the publication. Recently, Ms Goswami was appointed vice chair of the Federal Circuit Bar Association’s Patent Trial and Appeal Board and Trademark Trial and Appeal Board Committee. In 2020 she was selected to serve as a member of Law360’s Life Sciences Editorial Advisory Board. Ms Goswami received a BSE in chemical engineering from Princeton University in 2009 and obtained certificates (minors) in engineering biology and materials science. She received a JD, magna cum laude, from the New York University School of Law in 2012.
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Cravath, Swaine & Moore LLP Worldwide Plaza 825 Eighth Avenue New York NY 10019 United States T +1 212 474 1928 See firm profile p1670 Professional associations • Federal Circuit Bar Association • NYCBA
IAM Patent 1000 1543
Ha, Yung-Hoon (Sam) Partner – Desmarais LLP yha@desmaraisllp.com | www.desmaraisllp.com
Yung-Hoon (Sam) Ha’s practice focuses on post-grant proceedings before the PTAB, patent litigation and advising clients on patent matters. His practice covers high-tech engineering and materialsrelated technologies, having represented clients on matters relating to microprocessor fabrication, microprocessor architecture, carbon nanotubes, fullerenes, quantum dots, glasses, polymers, batteries, solar cells and solar concentrators. Dr Ha has significant experience before the PTAB in numerous inter partes review proceedings for both patent owners and petitioners. He also has significant experience with all aspects of patent litigation, including development of case themes, Markman hearings, expert discovery and trials. Dr Ha has also prosecuted several hundred patent portfolios, procuring patents for large academic institutions, large corporations and start-up companies alike. Dr Ha started his law career at Oblon Spivak (now Oblon, McClelland, Maier & Neustadt) as a patent agent. He then joined WilmerHale as a technology specialist, eventually being promoted to partner in 2017. In 2020 he ended his 15-year tenure at WilmerHale and joined Desmarais LLP to help build out its post-grant practice group. Dr Ha is a member of the Bars of New York and the Federal Circuit Court of Appeals. Dr Ha is also registered to practise before the USPTO. Prior to entering the practice of law, Dr Ha was a post-doctoral researcher at the US Naval Research Laboratory and a research and teaching assistant at the Massachusetts Institute of Technology. Dr Ha has published approximately 10 scientific articles and is a named inventor on two US patents.
Desmarais LLP 230 Park Avenue New York NY 10169 United States T +1 212 351 3411 F +1 212 351 3401 See firm profile p1672 Professional associations • ABA • NYSBA
Education • Fordham University School of Law, JD, 2009 • Massachusetts Institute of Technology, PhD, materials science and engineering, 2002 • Cornell University, BSc, materials science and engineering, cum laude and with honours, 1997
1544 IAM Patent 1000
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Hahn, Arlene Arin Partner – White & Case LLP ahahn@whitecase.com | www.whitecase.com
Arlene Arin Hahn is a partner in the technology transactions practice, within White & Case’s global M&A group and global IP group. She is a transactional attorney who advises on IP and technology matters ranging from standalone technology transactions to the IP aspects of M&A and other corporate transactions. Ms Hahn has advised on hundreds of consummated transactions, ranging from initial start-up investments to joint development agreements and from whole business securitisations to some of the largest M&A deals in their respective industries. She represents strategic and financial clients in a broad range of industries, including software, consumer products, pharmaceuticals, medical devices, financial services, power, media, semiconductors, fashion and sports. Ms Hahn has extensive experience with standalone IP matters, including patent and technology licensing, technology transfers, joint ventures and strategic alliances, joint development agreements, software licensing, outsourcing, content licensing, trademark coexistence, merchandising and brand licensing, and settlement of IP disputes and litigations. Prior to focusing on transactional work, Ms Hahn was an IP litigator and advised on a variety of matters, including patent infringement, trademark and copyright infringement, counterfeiting, unfair competition and trade secret misappropriation. Ms Hahn has appeared as a featured guest on BloombergTV and is a member of Law360’s 2019 Advisory Board for Intellectual Property. She has lectured on the IP aspects of commercial transactions at various seminars and conferences and is an advisory board member of NYU School of Law’s Grunin Center for Law and Social Entrepreneurship and a member of MIT’s Executive Council. Ms Hahn is also co-contributing editor and co-author of the inaugural edition of “Technology M&A” (2018, 2019), published by Lexology/Getting the Deal Through.
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White & Case LLP 1221 Avenue of the Americas New York NY 10020-1095 United States T +1 212 819 8506 See firm profile p1740
IAM Patent 1000 1545
Hannemann, Mark Partner – Shearman & Sterling LLP mark.hannemann@shearman.com | www.shearman.com
Mark Hannemann has been litigating patent cases for more than 25 years. He is a partner in the litigation practice of Shearman & Sterling LLP and is based in the firm’s New York office. He is a leading patent litigator with extensive first-chair experience for both plaintiffs and defendants in jury trials, bench trials, International Trade Commission hearings and Patent Office proceedings. He has frequently appeared in the Eastern District of Texas, the District of Delaware and other US district courts, and has a successful appellate practice. Mr Hannemann has experience across a broad spectrum of industries, including consumer electronics, computer networking, memory systems, LEDs, software and many different automotive systems. He also serves as the IP editor of Shearman & Sterling’s Need-to-Know Litigation Weekly newsletter regarding notable developments and trends in various areas of IP litigation. Mr Hannemann’s frequent clients have included OSRAM, Robert Bosch and Volkswagen. He is recommended in the 2013 edition of The Legal 500 in the area of “IP – Patent Litigation: full coverage” and the 2014 edition of New York Super Lawyers. He has also been recognised as a New York “IP Star” by Managing Intellectual Property (2014). Most recently, IAM Patent 1000 recommended him as a “legal theory and strategy thinker” (2020), noting that the Shearman team includes “an expert panel of patent litigators”.
Shearman & Sterling LLP 599 Lexington Avenue New York NY 10022-6069 United States T +1 212 848 7696 See firm profile p1726 Professional associations • Federal Circuit Bar Association Sample client list • OSRAM GmbH • Robert Bosch GmbH • SS&C Technologies Holdings, Inc • Volkswagen AG
1546 IAM Patent 1000
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Hanson, Erin Partner – White & Case LLP erin.hanson@whitecase.com | www.whitecase.com
Erin Hanson is a partner in White & Case’s technology transactions practice, within the firm’s global mergers and acquisitions group and global IP group. She is also a member of White & Case’s global technology industry core group. Ms Hanson is a transactional attorney, specialising in transactions and counselling involving intellectual property and technology. She offers clients legal and commercial advice on all types of standalone IP and technology matters, including software, content and data licensing, development and services agreements, evaluation and testing agreements, strategic alliances and collaborations, and distribution, outsourcing and ‘as a service’ arrangements. Ms Hanson also advises on the IP and technology aspects of M&A, private equity and other corporate transactions, including acquisitions, divestments, carve-outs and joint ventures. Her work includes representing both strategic and financial clients across a number of industries, including social media, software, hardware, telecommunications, clean technology, data and analytics, digital health and financial services. Ms Hanson’s recent transactions have involved a wide variety of technologies, including e-commerce, platform technologies, artificial intelligence, autonomous driving and the Internet of Things. Ms Hanson has gained valuable experience working on secondment at a global technology company. Her clients also benefit from her strong international experience, as she has practised in both Australia and the United States.
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White & Case LLP 1221 Avenue of the Americas New York NY 10020-1095 United States T +1 212 819 2516 See firm profile p1740
IAM Patent 1000 1547
Hanstead, Alison Partner – White & Case LLP ahanstead@whitecase.com | www.whitecase.com
Alison Hanstead is a partner in the IP practice group of White & Case’s New York office. Ms Hanstead represents clients in complex patent and antitrust litigations and commercial disputes, in both federal and state courts. She has significant experience with Hatch-Waxman-related litigation, and advises clients on the IP and regulatory aspects of transactional matters in the pharmaceutical industry. Clients also benefit from her experience conducting due diligence investigations and drafting licence agreements. Significant experience includes the following: • Defending Pfizer and Hospira against allegations of patent infringement and claims for lost profit damages in connection with Pfizer’s and Hospira’s manufacture and sale of its NivestymTM biosimilar; • Representation of Novo Nordisk in Hatch-Waxman litigations against Teva, Amneal and Sun Pharmaceutical for infringement of patents covering Novo Nordisk’s drug Vagifem. Obtained a favourable settlement for our clients; • Counsel to Boehringer Ingelheim in In re Aggrenox Antitrust Litigation MDL (D Conn) concerning antitrust challenge to a patent settlement agreement; • Counsel to Pfizer in a series of patent infringement cases against multiple defendants concerning patents that cover DETROL LA, a long-acting version of Pfizer’s market-leading drug for overactive bladder. Won claim construction hearing on all disputed terms and the cases then settled on favourable terms for Pfizer; and • Counsel to Pfizer in its five-year patent infringement case against Teva and IVAX concerning patent that covers DETROL. After a fiveday bench trial, the District Court for the District of New Jersey issued an opinion rejecting all defendants’ challenges to the validity of Pfizer’s patent.
1548 IAM Patent 1000
White & Case LLP 1221 Avenue of the Americas New York NY 10020- 1095 United States T +1 212 819 8433 See firm profile p1740
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Haug, Edgar H Chairman – Haug Partners LLP ehaug@flhlaw.com | www.haugpartners.com
Edgar H Haug is the chair of Haug Partners LLP and was a founding member of the firm in 1997. Mr Haug is a “ranked trial lawyer” by Chambers, a member of the National Association of Distinguished Counsel and was recently a member of the Advisory Council for the US Court of Appeals for the Federal Circuit. Mr Haug has extensive experience in bench and jury trials, as well as appellate proceedings having appeared before the US Supreme Court, the Court of Appeals for the Federal Circuit and the Second and Fourth Circuits. Mr Haug has also represented clients involved in proceedings before the UK High Court, the German Federal Supreme Court and the Tokyo High Court. In addition to his activities as the firm’s chair and a practising trial attorney, Mr Haug recently served as president of the Federal Circuit Bar Association (FCBA) and as a member of its board of governors. The FCBA is a national bar association representing approximately 2,000 lawyers, judges and academics practising before the US Court of Appeals for the Federal Circuit, which sits a short walk away from the firm’s Washington DC office. The Federal Circuit hears all appeals of patent cases in the United States and offers a forum for common concerns and dialogue between the private bar, corporations, government employees and the court. Mr Haug is a frequent lecturer throughout the world regarding all aspects of trial advocacy with a frequent focus on IP matters.
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Haug Partners LLP 10th Floor 745 Fifth Avenue New York NY 10151 United States T +1 212 5880 800 See firm profile p1692
IAM Patent 1000 1549
Hummel, Keith R Partner – Cravath, Swaine & Moore LLP khummel@cravath.com | www.cravath.com
Keith R Hummel is a partner in Cravath, Swaine & Moore LLP’s litigation department. He has extensive experience litigating complex IP matters and other disputes for plaintiffs and defendants in a range of industries, including telecommunications, internet technology, pharmaceuticals, consumer products, chemicals and biotechnology. Mr Hummel has led jury and bench trials in federal and state courts and before arbitration tribunals. He advises clients on national and worldwide IP strategy, and often supervises and coordinates concurrent litigation in several countries. He also leads efforts to identify IP assets that can be effectively used for offensive or defensive purposes. Mr Hummel represents Abiomed, a global medical device company that develops groundbreaking cardiovascular products, in two patent infringement matters relating to guidance systems used to place intravascular blood pumps. He is also representing Vitaworks in patent litigation against manufacturers, importers and distributors of taurine, an organic compound used in consumer products, including energy drinks. Vitaworks’ patents cover improved methods of manufacturing this important compound that virtually eliminate waste products. Mr Hummel obtained a settlement of over $750 million for Medinol after a seven-week trial in a dispute with Boston Scientific Corporation, and obtained a favourable settlement for OrbusNeich Medical and its international affiliates in patent infringement actions against Boston Scientific’s coronary stent systems. Mr Hummel has been recognised as a leading IP practitioner by numerous publications, including Chambers USA, Chambers Global, The Legal 500 US, Benchmark Litigation and The Best Lawyers in America. He co-authored the Intellectual Property Law Answer Book, published by the Practising Law Institute, currently in its ninth edition. Mr Hummel received a BA from the University of Notre Dame in 1987 and graduated magna cum laude from the Georgetown University Law Centre in 1990.
1550 IAM Patent 1000
Cravath, Swaine & Moore LLP Worldwide Plaza 825 Eighth Avenue New York NY 10019 United States T +1 212 474 1772 See firm profile p1670 Professional associations • IBA
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Kappos, David J Partner – Cravath, Swaine & Moore LLP dkappos@cravath.com | www.cravath.com
David J Kappos is a partner at Cravath, Swaine & Moore LLP. He is widely recognised as one of the world’s foremost leaders in the field of intellectual property, including IP management and strategy, the development of global IP norms, laws and practices, as well as commercialisation and enforcement of innovation‑based assets. From 2009 to 2013, Mr Kappos served as undersecretary of commerce and director of the USPTO. In that role, he advised the president, the secretary of commerce and the administration on IP policy matters. Mr Kappos led the agency in dramatically re-engineering its entire management and operational systems and its engagement with the global innovation community. He was instrumental in achieving the greatest legislative reform of the US patent system in generations through the passage and implementation of the LeahySmith America Invents Act 2011. Prior to leading the USPTO, Mr Kappos served as IBM’s chief IP lawyer from 2003 to 2009. In that capacity, he managed all global IP activities for IBM. During his more than 25 years at IBM, he also served in a variety of other roles such as litigation counsel and Asia-Pacific IP counsel, where he led all aspects of IP protection, including licensing and transactions support for the region. Mr Kappos has received numerous accolades for his contributions to the field of intellectual property, including being named one of the Top 25 Icons of IP by Law360, one of the 50 Most Influential People in IP by Managing Intellectual Property, one of the Top 50 IP Trailblazers and Pioneers and one of the 100 Most Influential Lawyers in America by The National Law Journal and being inducted into the IP Hall of Fame by IAM in 2012. Mr Kappos received a BS summa cum laude in electrical and computer engineering from the University of California, Davis in 1983 and a JD from the University of California, Berkeley in 1990.
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Cravath, Swaine & Moore LLP Worldwide Plaza 825 Eighth Avenue New York NY 10019 United States T +1 212 474 1000 See firm profile p1670 Professional associations • CGE • IPO Education Foundation • Partnership for Public Service
IAM Patent 1000 1551
Kellman, Alan S Partner – Desmarais LLP akellman@desmaraisllp.com | www.desmaraisllp.com
Alan S Kellman is one of the original partners of Desmarais LLP, where his practice focuses on the trial and litigation of complex, technologydriven disputes. Mr Kellman has tried cases in the federal district courts, before the International Trade Commission and in arbitration, and has argued before the US Court of Appeals for the Federal Circuit. In addition, he has represented clients in trade secret, antitrust and unfair competition matters in federal and state courts. Mr Kellman has represented and counselled clients in disputes relating to a wide range of technical subject matters, including pharmaceutical and surgical products, network switching equipment, telecommunications equipment, local and wide area networks, digital signal processing systems, digital audio and video coding systems, cellular telephony, personal computers, digital watermarking, semiconductor processing technology, microprocessor design and development, electrochemical lighting systems, lottery networking systems and remote surgical robotics. After graduating from Harvard Law School, Mr Kellman began his career at Kirkland & Ellis, where he was named partner in 2005. After litigating numerous high-profile cases at Kirkland, Mr Kellman left the firm in 2010 along with John Desmarais to open Desmarais LLP. Mr Kellman is admitted to the Bar of New York, as well as the US Court of Appeals for the Federal Circuit and various federal district courts. He is also registered to practise before the USPTO.
Desmarais LLP 230 Park Avenue New York NY 10169 United States T +1 212 351 3404 F +1 212 351 3401 See firm profile p1672
Education • Harvard Law School, JD, 1999, cum laude; editor in chief, Harvard Journal of Law & Technology • University of Pennsylvania, BSE, systems engineering, 1996, summa cum laude, university scholar
1552 IAM Patent 1000
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Krause, Todd L Partner – Desmarais LLP tkrause@desmaraisllp.com | www.desmaraisllp.com
Todd L Krause is a partner at Desmarais LLP with more than 23 years of experience litigating patents for some of the world’s largest pharmaceutical and biotechnology companies. Dr Krause has litigated a broad range of patent issues in the life sciences industry, including pharmaceutical drugs (eg, many Hatch-Waxman cases against generic drug companies), biologic drugs, gene amplification techniques, cellbased assays, veterinary vaccines, recombinant nucleic acids and proteins, and medical devices. Dr Krause has served as litigation and trial counsel in cases involving a variety of drugs and biologics whose annual sales exceed $1 billion. He presently serves as litigation and trial counsel for GlaxoSmithKline/ViiV Healthcare and Shionogi related to the HIV drug Biktarvy. Dr Krause recently served as trial counsel for Johnson & Johnson subsidiary Janssen Pharmaceuticals in two Hatch-Waxman trials related to the blockbuster prostate cancer drug Zytiga and the blockbuster blood-thinner Xarelto. He also served as trial and/or litigation counsel for Merck on the blockbuster cancer immunotherapy Keytruda; Johnson & Johnson subsidiary Janssen Pharmaceuticals on the pain treatment Nucynta; Forest Laboratories on the blood pressurereducing agent Bystolic; Sunovion Pharmaceuticals on the asthma and chronic obstructive pulmonary disease treatment Xopenex HFA; and Merck and Schering on the blockbuster cholesterol-lowering drugs Zetia and Vytorin. Before joining Desmarais in 2018, Dr Krause was a partner in Sidley Austin’s New York office where he spent over a decade in the IP litigation practice. He holds a PhD in biological sciences from the University of Texas at Austin and performed postdoctoral work in the Department of Molecular and Human Genetics at Baylor College of Medicine in Houston, Texas.
Desmarais LLP 230 Park Avenue New York NY 10169 United States T +1 212 351 4906 F +1 212 351 3401 See firm profile p1672 Professional associations • ABA • AIPLA • NYIPLA
Professional memberships • American Bar Association • New York Intellectual Property Law Association • American Intellectual Property Law Association • New Jersey Intellectual Property Law Association • American Association of the Advancement of Science Education • University of Houston Law Center, JD, cum laude, 1997 • University of Texas at Austin, PhD, biological sciences (neuroscience), 1993; Phi Kappa Phi; Doctoral Dissertation Award • Trinity University, BA, economics, 1985
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IAM Patent 1000 1553
Landmon, Chad Partner – Axinn, Veltrop & Harkrider LLP clandmon@axinn.com | www.axinn.com
Chad Landmon chairs Axinn’s IP and Food and Drug Administration (FDA) practice groups and focuses his practice on patent litigation and counselling, and FDA law. He maintains a particular focus on patent trial work, having served as a first-chair trial lawyer on multiple cases and having litigated over 50 cases during the past 10 years alone, many of which included products with billions of dollars in annual sales. For example, Mr Landmon led the efforts in fighting off a temporary restraining order and obtaining a favourable claim construction and non-infringement judgment at both the district court and the Federal Circuit in a case involving a product with over $9 billion in annual sales. Recently, Mr Landmon served as lead appellate and trial counsel in obtaining a decision from the Federal Circuit affirming a decision entered after trial by the US District Court for the District of Delaware (with Federal Circuit Judge William Bryson sitting by designation) that the asserted patents were invalid, removing the patents as a barrier to market entry for Axinn’s client. By coupling his patent litigation experience with his FDA expertise, Mr Landmon enables life sciences clients to develop and execute on patent and FDA strategies to bring products to market in the most efficient and profitable manner. During the course of his career, Mr Landmon has worked on eight of the top 10 generic drugs ranked by cost savings and nearly half of the top 100 generic drugs by sales volume. His active FDA litigation practice has enabled clients to maintain their marketing exclusivity rights and obtain market entry. In fact, Mr Landmon obtained a court order that has been described as the first time a court has ordered the FDA to approve a product. Listed in IAM Patent 1000, Mr Landmon was also recently selected as a “National Law Journal Healthcare/Life Sciences Trailblazer”, recognised as a “Litigation Star” by Benchmark Litigation and named a “2019 Life Sciences Star” by LMG Life Sciences for Hatch-Waxman patent litigation.
1554 IAM Patent 1000
Axinn, Veltrop & Harkrider LLP 90 State House Square Hartford CT 06103-3702 United States T +1 860 275 8170 See firm profile p1652 Professional associations • AIPLA • Food and Drug Law Institute • Biosimilars Council
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Makin, Thomas R Partner – Shearman & Sterling LLP thomas.makin@shearman.com | www.shearman.com
Thomas R Makin is a partner in Shearman & Sterling’s litigation group, and is based in New York. Mr Makin focuses on IP litigation in federal and state court, in arbitration and before the International Trade Commission (ITC). He participates in post-grant proceedings before the US Patent and Trademark Office, and counsels clients regarding substantive patent law, patent valuation and licensing issues. Mr Makin represents plaintiffs and defendants across a wide range of technologies: vehicular safety, propulsion, infotainment and control systems; semiconductor circuitry, fabrication and packaging; lighting systems; rechargeable battery systems; fintech software; monoclonal antibodies; and medical devices. In his most recent trial, Mr Makin was lead counsel to Nichia Corporation in a three-patent ITC investigation. After a weeklong hearing, in which Mr Makin directed the respondents’ main technical witness and cross-examined the complainant’s expert, the administrative law judge – and, ultimately, the ITC – found all patent claims not infringed, not supportive of a technical domestic industry and/or invalid. Mr Makin has been recognised in a number of legal publications, including The Legal 500 and IAM Patent 1000. IAM Patent 1000 has noted: “His knowledge of case law is something to behold and he has a great imagination, always willing to look at things in different ways and come up with new ideas. He takes the time to understand your patents (and other intellectual property), and does things when he says he’s going to do them. He exhibits real mental fortitude.”
Shearman & Sterling LLP 599 Lexington Avenue New York NY 10022-6069 United States T +1 212 848 7698 See firm profile p1726 Professional associations • American Society of Mechanical Engineers (ASME) • Sigma Xi, the Scientific Research Society Sample client list • DENSO • Genmab • Nichia • SS&C Technologies • Toyota • Volkswagen
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IAM Patent 1000 1555
Marriott, David R Partner – Cravath, Swaine & Moore LLP dmarriott@cravath.com | www.cravath.com
David R Marriott is a partner in Cravath, Swaine & Moore LLP’s litigation department. Mr Marriott has tried, argued and litigated IP and other complex commercial matters in both state and federal courts across the country. Mr Marriott has represented a number of major pharmaceutical and technology companies, including Mylan, IBM, Novartis, Alcon Laboratories, Qualcomm, Bristol-Myers Squibb, Eli Lilly and AT&T. Mr Marriott is representing Quibi, a short-form streaming start-up, in consolidated patent infringement and trade secret litigation against Eko relating to Quibi’s use of its ‘Turnstyle’ video display technology. He recently represented Qualcomm in two patent infringement actions against Apple before the US International Trade Commission seeking to bar iPhones containing non‑Qualcomm wireless modem chips from entering the country. Both cases were ultimately resolved by a global settlement between the companies. Mr Marriott has also represented Merck Sharp & Dohme as plaintiff in three separate patent infringement actions seeking to enjoin the marketing and sale of generic versions of Merck’s antifungal agent, Noxafil, as well as Juno Therapeutics in a lawsuit filed by City of Hope (COH) alleging Juno violated an exclusive licence agreement to certain COH patents. He also represented Mylan in a patent infringement suit over Teva Pharmaceuticals’ development of a generic form of Mylan’s respiratory drug Perforomist. Following a seven-day bench trial, the court upheld the validity of Mylan’s patents and enjoined Teva from marketing a generic version of the drug until Mylan’s patents expire. The decision was affirmed on appeal. Mr Marriott is a fellow of the American College of Trial Lawyers and the International Academy of Trial Lawyers, an adjunct professor at the New York University School of Law and a lecturer in law at the Columbia University School of Law. He has been recognised as a leading lawyer by numerous professional publications, including Benchmark Litigation, The Legal 500 US and Lawdragon. Mr Marriott received a JD from the New York University School of Law in 1994 and a BA from Brigham Young University in 1991.
1556 IAM Patent 1000
Cravath, Swaine & Moore LLP Worldwide Plaza 825 Eighth Avenue New York NY 10019 United States T +1 212 474 1430 See firm profile p1670 Professional associations • ABA • IBA • ICC
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McDavit, Jonas R Partner – Desmarais LLP jmcdavit@desmaraisllp.com | www.desmaraisllp.com
Jonas R McDavit is an IP litigation partner at Desmarais LLP, focusing on patent infringement and antitrust litigation. Mr McDavit is a former submarine officer in the US Navy. Following his naval career and law school, Mr McDavit joined the IP department in Kirkland & Ellis LLP’s New York office. In 2010 Mr McDavit joined John Desmarais and Alan Kellman at Desmarais. He was the first associate at the firm and the first associate to be made a partner. Mr McDavit has represented and counselled clients in cases involving a broad range of technologies, including computer hardware and software, photo imaging equipment, chemical processes, telecommunications technology and pharmaceuticals. He has also served as pro bono counsel in a variety of matters, including landlordtenant disputes, Freedom of Information Act litigation and Department of Veterans Affairs benefits appeals. Education • Georgetown University Law Centre, JD, cum laude, 2006; senior articles editor, Georgetown Journal of Legal Ethics • University of Notre Dame, BA, government, magna cum laude, 1996; student academic commissioner
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Desmarais LLP 230 Park Avenue New York NY 10169 United States T +1 212 351 3425 F +1 212 351 3401 See firm profile p1672
IAM Patent 1000 1557
Packin, Tamir Partner – Desmarais LLP tpackin@desmaraisllp.com | www.desmaraisllp.com
Tamir Packin’s practice focuses on trials of complex patent cases. He has led teams through all phases of litigation ensuring that they approach every task with an eye towards reaching a favourable verdict (or favourable pre-verdict judgment), and securing it during post-trial proceedings and on appeal. Mr Packin’s trial and litigation experience spans a wide range of industries and technologies, including personal computers, data centre servers and switches, mobile handset technologies, computer security and software, networking equipment, wired and wireless telecommunications, voice-over-IP, cable modems, semiconductor processing, flash memory, pharmaceuticals, robotics, medical devices and ceramics. Mr Packin’s trial skills and success have earned him recognition as one of the top up-and-coming trial lawyers in the United States. In 2020 Law360 recognised Mr Packin as a “Rising Star” – one of four individuals identified as the country’s top trial lawyers under the age of 40. Also in 2020, Mr Packin was honoured by The National Law Journal as a “Winning Litigator” – one of 2020’s “Masters of the Courtroom” – for securing a defence victory in a bench trial with $400 million in damages claims at stake against Cisco. Beyond his technology-focused trial practice, Mr Packin also regularly volunteers to take on cases for those who cannot afford representation. His pro bono practice spans claims ranging from constitutional prisoners’ rights to simple torts.
Desmarais LLP 230 Park Avenue New York NY 10169 United States T +1 212 351 3403 F +1 212 351 3401 See firm profile p1672
Education • Benjamin N Cardozo School of Law, JD, 2007, cum laude; Order of the Coif; associate editor, Cardozo Law Review • Princeton University, BSE, 2004, mechanical engineering, aerospace engineering, certificate in robotics and intelligent systems; Sigma Xi
1558 IAM Patent 1000
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Silverstein, David Partner – Axinn, Veltrop & Harkrider LLP dsilverstein@axinn.com | www.axinn.com
David Silverstein is a registered patent attorney with nearly 20 years of experience handling legal and regulatory matters, on the generic and the branded side, relating to pharmaceutical and biotech products. Mr Silverstein has served as lead counsel in matters before the US district courts, the US Patent Trial and Appeal Board and the US Court of Appeals for the Federal Circuit. In addition, Mr Silverstein’s practice includes performing due diligence, licence negotiation and counselling in connection with complex commercial transactions involving pharmaceutical and biotech products. Mr Silverstein is frequently involved in Food and Drug Administration (FDA) strategy and counselling, including filing or responding to citizen petitions, and coordinating FDA strategy with patent litigation strategy. Mr Silverstein previously practised in-house at Par Pharmaceutical and, prior to that, at major New York firms. While in-house, Mr Silverstein oversaw and managed all aspects of patent, antitrust, unfair competition and trade secret litigation. He also served as Par’s in-house regulatory counsel, advising on regulatory strategies and frequently representing Par before the FDA’s Office of Chief Counsel and other regulators. Together with his graduate training at Cornell University in protein crystallography and structure-based drug design, Mr Silverstein combines his courtroom and industry experience to develop strategies that enable his clients to achieve their technical, legal and commercial objectives simultaneously.
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Axinn, Veltrop & Harkrider LLP 114 West 47th Street 22nd Floor New York NY 10036 United States T +1 212 261 5651 See firm profile p1652
IAM Patent 1000 1559
Slater, Brian V Chair of Life Sciences – Haug Partners LLP bslater@haugpartners.com | www.haugpartners.com
Brian V Slater is a partner in the New York office of Haug Partners LLP. Mr Slater is a first chair trial lawyer with over 25 years of experience litigating complex patent disputes. Mr Slater has led trial teams to success in a variety of forums, including federal district courts and the Patent Trial and Appeal Board, as well as in arbitration. Clients describe him as a “lead trial lawyer with a wealth of experience” and as a “great decision maker” who is “admired for his strategic nous and calm demeanour in pressurised litigation scenarios” (IAM Patent 1000). Mr Slater has served as lead litigation counsel for life sciences innovators in high-value patent disputes, including Gilead, Merck and Sanofi. Among his notable successes, he led the team that helped Forward Pharma secure a $1.25 billion settlement in its worldwide patent dispute with Biogen over rights to its Tecfidera multiple sclerosis treatment. Mr Slater has extensive experience in Hatch-Waxman patent litigation against ANDA (abbreviated new drug application) challengers and has been described by clients as “brilliant on biosimilars” (IAM Patent 1000 2014). His wide-ranging patent and trade secret litigation experience also includes cases involving biologics, medical devices, diagnostic kits, aircraft composites, toner cartridges, automotive parts, vending machines and magazine cover coatings. Mr Slater previously served as chair of life sciences at Kramer Levin Naftalis & Frankel LLP. Before that, he spent over 20 years at Fitzpatrick, Cella, Harper & Scinto (now Venable LLP), where he served on the management committee and was chair of the due diligence practice.
1560 IAM Patent 1000
Haug Partners LLP 10th Floor 745 Fifth Avenue New York NY 10151 United States T +1 212 588 0800 See firm profile p1692
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Stark, Richard J Partner – Cravath, Swaine & Moore LLP rstark@cravath.com | www.cravath.com
Richard J Stark is a partner in Cravath, Swaine & Moore LLP’s litigation department. His practice focuses on IP, antitrust and other technologically intensive litigation for both plaintiffs and defendants. Mr Stark represents Alarm.com in an International Trade Commission (ITC) investigation and in patent infringement litigation initiated by EcoFactor concerning certain smart thermostats, smart heating, ventilation and air conditioning systems and components thereof. The ITC matter was tried in November 2020 in one of the first all-virtual ITC patent infringement trials. He also represents the company in patent infringement litigation brought by Vivint related to Alarm.com’s interactive security and home automation technology. Mr Stark is also representing Blue Yonder as plaintiff in a patent infringement case against Kinaxis and its affiliates relating to Blue Yonder’s patents on managing supply chain processes, as well as Quibi in consolidated patent infringement and trade secret litigation against Eko relating to Quibi’s use of its ‘Turnstyle’ video display technology. Mr Stark has represented Qualcomm Incorporated in a number of US and international matters relating to Qualcomm’s patent licensing and modem chipset businesses. He recently represented Qualcomm in connection with IP, antitrust and contract actions brought by Apple on three continents, including the central action in California, which resulted in a global settlement resolving all litigation between the companies. Mr Stark has been recognised as a leading IP practitioner by numerous publications, including The Legal 500 US, Benchmark Litigation and Lawdragon. Mr Stark is a member of the Council of the American Bar Association Section of Intellectual Property (ABAIPL). Previously, he served as chair of ABA-IPL’s Committee on Antitrust Interface with IP Rights and vice chair of the Section’s Division of Specialised IP. Mr Stark is also a member of the Institute of Electrical and Electronics Engineers. Mr Stark received an AB from Harvard College in 1986, with a dual concentration in government and computer science, a JD from the New York University School of Law in 1991 and an MS in computer science from Columbia University in 2014.
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Cravath, Swaine & Moore LLP Worldwide Plaza 825 Eighth Avenue New York NY 10019 United States T +1 212 474 1564 See firm profile p1670 Professional associations • ABA • AIPLA • IBA
IAM Patent 1000 1561
Weingaertner, Scott T Partner – White & Case LLP sweingaertner@whitecase.com | www.whitecase.com
Scott Weingaertner has focused s on the litigation and trial of complex technology and life sciences IP disputes, as well as on related strategy and counselling, for more than 25 years. He has led teams in highstakes cases involving medical devices, smart phone operating systems, search engines, network security systems, memory modules, automotive systems, and other technologies, and has considerable experience in the litigation of biosimilars cases. Mr Weingaertner currently serves as lead trial counsel in one of the largest medical device cases in the United States. He led the team that served as co-counsel in one of the largest and best-known patent cases in recent years, successfully fending off multiple patents and a multibillion damages demand against a well-known mobile phone operating system, scoring a successful jury verdict on all asserted patent claims, which was not appealed. He served as trial counsel on behalf of one of the world’s leading computer companies, winning a jury verdict and judgment as a matter of law of non-infringement, affirmed on appeal. In addition to his appearances in district courts across the country, Mr Weingaertner is experienced before the Patent Trial and Appeal Board of the USPTO, as well as in international and domestic arbitration of IP-intensive commercial disputes. As co-lead counsel he prevailed on behalf of a European-based company in multi-year London arbitration and related US district court litigation with one of the largest US technology companies in a case concerning FRAND royalties. Mr Weingaertner and his team were awarded Managing IP Law’s Milestone Case of the Year. He is ranked as a leading practitioner by Best Lawyers, IAM 1000, IAM Strategy 300 and other directories.
1562 IAM Patent 1000
White & Case LLP 1221 Avenue of the Americas New York NY 10020-1095 United States T +1 212 819 2583 See firm profile p1740
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United States: North Carolina
Alston & Bird LLP
Alston & Bird maintains a sterling reputation in patent prosecution and litigation, while the duality of its expertise also gives it a distinct advantage in the postgrant space. The well-roundedness of its national offering is reflected at the local level in North Carolina: its Charlotte office plays host to top prosecutors Guy Gosnell and Brian Ellsworth; leading litigators Michael Connor, Bruce Rose and Benjamin Pleune; and post-grant ace Christopher Douglas. Electrical and computer science group captain Gosnell has a pristine track record obtaining broad and robust patent protection; and through his cutting-edge work in the telecommunications space, has cultivated a rare facility for SEPs. Collaborating with colleagues in trademarks and designs, contractual law and litigation, he provides fulsome support to in-house teams. Ellsworth co-chairs the patent group and is an advanced mechanical and electrical technologies specialist who draws on keen analytical skills and commercial thinking to pinpoint patent value and extract it in a multitude of ways. Michael Connor is the most senior trial lawyer on deck and a former leader of the firm’s IP litigation group. He kick-started 2020 with a win for Ford against the Massachusetts Institute of Technology and Ethanol Boosting Systems in a suit implicating Ford’s EcoBoost engines; efforts in this regard are ongoing, with Ford having successfully instituted three inter partes reviews and the plaintiffs having filed a new suit against Ford on additional patents. Rose and Pleune, meanwhile, have been busy at the ITC handling a complaint on behalf of Honeywell asserting infringement of seven US patents relating to bar code readers and scanners, which settled in early 2020 alongside a parallel district court action; coordinating with foreign counsel in the Netherlands and Germany, they also filed several additional actions in Europe, which are ongoing. This matter is a great example of their ability to lead major campaigns. Douglas – newly ranked in the IAM Patent 1000 US national post-grant table this year – is working with Connor on the Ford litigation and supporting other colleagues in a dispute between client Dell and Alacritech involving data processing and internet protocol patents.
Barnes & Thornburg LLP
Barnes & Thornburg has quickly established itself as a life sciences go-to in Raleigh, where it opened an office in late 2019. Its ascent has much to do with the brilliance of seasoned former in-house patent counsel Amy Fix, who attracts vocal praise from the
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Individuals: litigation John C Alemanni Kilpatrick Townsend & Stockton LLP Timothy G Barber King & Spalding LLP Michael S Connor Alston & Bird LLP Matias Ferrario Kilpatrick Townsend & Stockton LLP Steven Gardner Kilpatrick Townsend & Stockton LLP Joseph A Mahoney Mayer Brown Jitty Malik Katten Muchin Rosenman LLP John F Morrow Jr Womble Bond Dickinson (US) LLP Benjamin Pleune Alston & Bird LLP Bruce Rose Alston & Bird LLP Mark Wilson Moore & Van Allen PLLC
market: “Amy has deep expertise with agricultural, veterinary and pharmaceutical small-molecule drug development and intellectual property. She partners closely with scientific and business development teams, guiding innovation efforts and building commercially valuable portfolios.” One source confides: “I have been working with patent attorneys on various early-stage projects for decades and, in my opinion, Amy is the best, most capable and helpful of them all. She has high-level technical expertise and is a great strategic thinker.” Her illustriousness is matched by that of Allen Baum, who also enjoys eminent standing in the pharmaceutical industry as a result of his great and many in-house and private practice achievements. He manages large portfolios with a deft touch and is a sought-after opinion giver.
IAM Patent 1000 1563
United States: North Carolina Individuals: prosecution Allen R Baum Barnes & Thornburg LLP Ryan Cagle Womble Bond Dickinson (US) LLP Christopher Douglas Alston & Bird LLP Brian C Ellsworth Alston & Bird LLP Amy Fix Barnes & Thornburg LLP Guy R Gosnell Alston & Bird LLP Jeffrey Gray Moore & Van Allen PLLC Christopher M Humphrey Womble Bond Dickinson (US) LLP
Kilpatrick Townsend & Stockton LLP
For strategic counsel that unlocks patent and portfolio potential, Kilpatrick Townsend is a sure bet. The sheer volume of its workload has afforded countless learning opportunities, which it has capitalised on to build incredible institutional knowledge regarding not just the mechanics of prosecution, litigation and transactions, but also the business of intellectual property. Crystallising this in diverse areas of patent practice are a number of versatile practitioners in North Carolina, including Steven Gardner, Matias Ferrario, John Alemanni and Charles Calkins. Collaborating effectively to give patrons the benefit of their combined wisdom, they provide total support to clinical diagnostics laboratory LabCorp, which the firm represents in connection with IP counselling, licensing and transactions, prosecution (in all IP categories), post-grant proceedings and patent infringement litigation. Gardner and Ferrario are the top litigators locally; Alemmani the leading post-grant mind; and Calkins the standout all-rounder.
King & Spalding LLP
For innovative companies, King & Spalding has numerous persuasive selling points: its patent group is well resourced nationally, rich in technical expertise and industry knowledge, and comprehensive in its
1564 IAM Patent 1000
Chris Knors Moore & Van Allen PLLC Kevin Lyn Womble Bond Dickinson (US) LLP Kevin Ransom Moore & Van Allen PLLC Andrew T Spence Womble Bond Dickinson (US) LLP Arles Taylor Jenkins, Wilson, Taylor & Hunt Steve Terranova Withrow + Terranova Henry Ward Moore & Van Allen PLLC Ben Withrow Withrow + Terranova
ability to protect, monetise and enforce or defend patent rights. Worthy of special mention is its big-ticket litigation prowess, which is channelled by Timothy Barber, one of the best and most experienced patent trial lawyers certainly in the Southeastern United States, but also in the country.
Moore & Van Allen PLLC
Flexing high-calibre prosecution, portfolio management and transactional capabilities, Moore & Van Allen has earned the trust of a host of bluechip companies looking to procure strong patent rights and put them to good use commercially. The IP group benefits from exceptional leadership provided by Kevin Ransom, a world-class prosecutor and strategist relied on by financial, manufacturing and high-technology multinationals. Chemistry PhD Chris Knors is cut from the same cloth and provides an equally essential service to medical and life sciences concerns. Joining them in the rankings for the first time this year, Jeffrey Gray has impressive credentials with his blend of mechanical and design engineering and business training. All three regularly engage in due diligence work and lean heavily into a stellar transactions practice which is primarily manned by Dickson Lupo, Todd Taylor and Henry Ward. Lupo is a trusted ally in touch-and-go negotiations and a master at getting critical deals through. Taylor’s in-house experience is a boon to the
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United States: North Carolina Individuals: transactions
Firms
Allen R Baum Barnes & Thornburg LLP
Alston & Bird LLP
Charles W Calkins Kilpatrick Townsend & Stockton LLP Amy Fix Barnes & Thornburg LLP Dickson M Lupo Moore & Van Allen PLLC Todd Taylor Moore & Van Allen PLLC Henry Ward Moore & Van Allen PLLC
group, as is his fine-grained understanding of data privacy and cybersecurity matters; while Ward has a flair for the fine print of licensing agreements. Moore & Van Allen also handles complex litigation with confidence and poise, putting Mark Wilson on to the field to call the right plays.
Withrow + Terranova
Highly specialised patent outfit Withrow + Terranova acquits itself with distinction in all areas of patent practice, short of court litigation. Particularly sought after for its preparation and prosecution dexterity and perspicacious opinions, the firm provides a tailored, efficient and cost-effective service without compromising on quality. Ben Withrow is the main draw for innovators in the telecommunications, semiconductor, electronics and software domains; an experienced engineer with sophisticated prosecution skills and litigation insight, he’s the complete package. Likewise Steve Terranova, an inventor himself with first-hand engineering and general counsel insight. Without taking the edge off their laser business and results focus, they have fostered an informal, collaborative culture in which they and their colleagues thrive.
Womble Bond Dickinson (US) LLP
Gaining significantly enhanced coverage in the IAM Patent 1000 North Carolina rankings this year, Womble Bond Dickinson has high-spec patent experts – all of whom play leadership roles in the firm-wide group – stationed in Raleigh, Winston-Salem and Charlotte, who combine to give a 360-degree service. Alongside
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Kilpatrick Townsend & Stockton LLP King & Spalding LLP Moore & Van Allen PLLC Womble Bond Dickinson (US) LLP Barnes & Thornburg LLP Withrow + Terranova Christopher Humphrey and Andrew Spence, who make their return to the guide, Ryan Cagle and Kevin Lyn both earn debuts on the prosecution table; while John Morrow secures his place on the litigation table. As leader of the national patent group, Humphrey has instilled a business-minded, strategic approach that goes down a treat for one major tobacco company, among many other clients for which he lights up IP and commercial pathways. Electronics and computer technology ace Spence takes the lead in managing a 300-plus patent portfolio for a global aerospace and defence company. Conducting meticulous prosecution in support of both relationships, Cagle captains the chemical, pharmaceutical and biotechnology team. As a lead attorney, he acts for 8 Rivers Capital, a technology development company working with zero-emission power production, space launch systems and carbon neutral/negative technologies, for which he has built an 800-strong portfolio of patents and applications worldwide. Assisting on this brief, Lyn leads the mechanical patent team and plays a key role for the firm with respect to diversity and inclusion initiatives. Morrow chairs the US IP litigation group and is an assured advocate in any type of IP case in any court across the country.
Other recommended experts
Pharmaceutical patent litigation is the metier of Mayer Brown partner Joseph Mahoney. A doctor of pharmacy, he goes beyond the brief to provide astute IP due diligence assessments and wraparound strategic counsel. Katten’s Jitty Malik draws on a deep well of life sciences technical and industry knowledge to guide companies throughout all phases of the drug development process and in litigation challenges. Arles Taylor flies the flag of
IAM Patent 1000 1565
United States: North Carolina patent boutique Jenkins, Wilson, Taylor & Hunt and spearheads its practice in the life sciences and chemical fields. He is an adept prosecutor at the USPTO and global portfolio manager.
1566 IAM Patent 1000
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United States: Oregon
Alleman Hall Creasman & Tuttle
With international expertise a chief selling point, the proficient practitioners at Alleman Hall Creasman & Tuttle join forces to secure patent protection for innovative companies wherever in the world they need it. Adept in all major technology areas, the team dots the Is and crosses the Ts in prosecution while also eyeing up strategic IP monetisation opportunities and swiftly resolving conflicts, making it a persuasive onestop shop. Mark Alleman shines in high-technology areas and brings to the table prior experience as a foreign lawyer registered in Japan. He works across the contentious/non-contentious divide, which enhances the quality of his overarching strategic advice. An expert on patents and brands, Jason Creasman can singlehandedly and efficiently support clients in all their IP endeavours.
Klarquist Sparkman LLP
One of the West Coast’s most venerable boutiques, Klarquist is the patent service provider of choice for a litany of prestigious companies, research centres, academic institutions and government agencies. “No matter the type of patent work, you feel you are in the safest of hands when Klarquist is in your corner, as the quality of its advice is second to none on the US market. Its attorneys have deep insight into the law, understand commercial realities and are brilliant at strategic thinking.” Focusing first on the life sciences, outstanding contributions to the practice come from Sheree Rybak and Gregory Scott, who link up to support the US Food and Drug Administration (FDA); notably, Klarquist is the only firm to be awarded an FDA contract for full lifecycle patent legal services. Applying her patent savvy and virtually unrivalled breadth of biotechnology knowledge, Rybak has meticulous drafting and prosecution skills, and distinguishes herself as an opinion giver. Scott conducts himself flawlessly in the prosecution of international patent families for top universities in areas such as cancer immunotherapy. Moving to the high-technology side, it’s a similar picture of high-calibre performance on behalf of industry leaders – Robert Scotti, for example, manages a portfolio of cloud services technology patents for one of the leading players in the country. He joins the IAM Patent 1000 for the first time this year on a wave of effusive reviews: “Robert isn’t afraid to ask questions and maintains a great rapport with inventors, enabling him to grasp their innovations and quickly put together strong patent applications. He is always highly responsive, making him an ideal fit for time-sensitive matters; he never overcommits
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Firms Klarquist Sparkman LLP Alleman Hall Creasman & Tuttle Schwabe Williamson & Wyatt Stoel Rives LLP
and under-delivers, but judges everything perfectly.” Kyle Rinehart, meanwhile, fields instructions from Microsoft relating to the protection of media processing technologies; he is superb at analysing portfolios and identifying strengths to exploit and weaknesses to fix. The litigators here have also done much to earn the firm its lofty reputation – take John Vandenberg, for example, “one of the most efficient and practical lawyers you could ever encounter”: “John doesn’t over-lawyer things or take what you might call a standard approach; he sizes up the importance of each issue immediately and finds the quickest, most effective ways to tackle it.” Recent work included litigating for Dexcom against WaveForm Technologies – he obtained a decisive summary judgment declaring the patent claims asserted by the latter to be invalid for indefiniteness. Teaming up with him on this were Kristin Cleveland and Scott Davis, whose report cards are similarly glowing. “A passionate advocate for her clients, Kristin is amazingly intelligent and finds clever and creative solutions to problems.” Davis can “put the most important IP matters on his shoulders and manage massive IP projects involving unique legal issues and many stakeholders”. Other elite advocates on deck include Christopher Carraway, who recently secured an affirmance from the Federal Circuit of two earlier summary judgment victories on behalf of SAP America and HP against Big Baboon; and seasoned commercial-turned-IP litigator Jeffrey Love, who has all the trial skills you could ever need, but also performs with panache at the PTAB. The star of the ensemble’s dynamic post-grant practice, however, is undoubtedly Andrew Mason, who has recently taken the lead in filing inter partes reviews for Microsoft against patents relating to online multimedia slide shows asserted by Hypermedia Navigation in district court litigation. Mason’s blend of technical insight – he’s a former circuit designer – prosecution expertise and global patent litigation know-how serves him tremendously well.
IAM Patent 1000 1567
United States: Oregon Individuals Nika Aldrich Schwabe Williamson & Wyatt Mark Alleman Alleman Hall Creasman & Tuttle Justin Brask Schwabe Williamson & Wyatt J Christopher Carraway Klarquist Sparkman LLP Kristin Cleveland Klarquist Sparkman LLP Jason Creasman Alleman Hall Creasman & Tuttle Scott E Davis Klarquist Sparkman LLP Scott Eads Schwabe Williamson & Wyatt Kassim M Ferris Stoel Rives LLP Brenna K Legaard Schwabe Williamson & Wyatt Jeffrey S Love Klarquist Sparkman LLP
Schwabe Williamson & Wyatt
Schwabe has a deep bench of IP professionals in Oregon, with 16 attorneys in the fold and PhDlevel talent on both the life sciences and electrical engineering sides. Whether litigating high-stakes cases, prosecuting patents or counselling, their enthusiasm for technology is plainly evident; as are their industry nous and business understanding. Fully committed to clients, they are also firmly plugged into technology-sector economic development initiatives in Oregon and the wider region. Dedication and passion are traits that allow Steven Prewitt to thrive as a precision prosecutor with a refined appreciation of the business value of strong patents and well-formed portfolios. Cut from similar cloth, Justin Brask also prosecutes with poise; the former Intel researcher has many patents to his name – into the triple digits – and understands the inventive
1568 IAM Patent 1000
Steven T Lovett Stoel Rives LLP Andrew M Mason Klarquist Sparkman LLP Matthew Phillips Laurence & Phillips IP Law Steven Prewitt Schwabe Williamson & Wyatt Julie L Reed Miller Nash Graham & Dunn LLP Kyle Rinehart Klarquist Sparkman LLP Sheree Rybak Klarquist Sparkman LLP Gregory Scott Klarquist Sparkman LLP Robert F Scotti Klarquist Sparkman LLP Robert Teel Stoel Rives LLP John D Vandenberg Klarquist Sparkman LLP
process on a different level. Nika Aldrich and Scott Eads anchor the contentious practice and have been working together for Columbia Sportswear North America in a first-of-its-kind civil liability case against competitors that engaged in fraudulent conduct in pursuing invalidation proceedings under the America Invents Act against its patents. Both Aldrich and Eads have buckets of first-chair trial experience, which inspires confidence.
Stoel Rives LLP
The patent prosecutors at Stoel Rives focus on supporting and realising clients’ business objectives, benefiting from the full-service commercial environment in which they operate. Their technical chops are also impressive: collectively, they cover multiple branches of science and engineering, affording broad coverage to the firm’s technology patrons. Robert Teel and Kassim Ferris are the key contacts for those seeking to procure patents
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United States: Oregon and build broader IP strategies around them. Teel is a quick study when it comes to complex software, electrical circuitry and optoelectronics innovations. Ferris doubles up as an international trade regulation and IP lawyer, giving him a unique profile. Steven Lovett is the top patent litigator on the roster and a former IP and technology group chair who continues to bring strong leadership to the team.
Other recommended experts
Through her engagement in all aspects of patent practice, Brenna Legaard sees the whole playing field for clients and provides hugely valuable strategic advice as a result. She recently made the switch
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from Schwabe to K&L Gates. Matthew Phillips is a respected name not just in the Oregonian IP community, but nationally, thanks to his sterling representation in post-grant proceedings. With a sparkling track record that speaks to his technical and tactical acumen and advocacy skill, he knows how to win whether acting for patent owners or petitioners. Julie Reed demonstrates impressive range as a patent practitioner, in terms of both the industries and technologies that she is comfortable with and the services she provides. The Miller Nash Graham & Dunn partner has a keen appreciation of how best to use patents in a business context.
IAM Patent 1000 1569
United States: Pennsylvania
Akin Gump Strauss Hauer & Feld LLP
Firms: prosecution
When patent infringement issues put them under pressure, industry leaders would be wise to bring Akin Gump on side. Handling complex, commercially consequential pharmaceutical and technology cases in exemplary fashion, its hard-hitting litigators astutely leverage all the firm has to offer in terms of appellate, international trade and policy expertise to support clients in the most meaningful way. For life sciences companies, there’s hardly a better line-up of lawyers in the country than Dianne Elderkin, Steven Maslowski, Matthew Pearson and Rubén Muñoz. Elderkin needs no introduction as an eloquent and elevated trial lawyer with leadership qualities in abundance and a striking record of success in many cases that have advanced the state of the law. As head of intellectual property and a seasoned trial team captain, Maslowski is another commanding leader; sources call him “sharp and insightful” – a description that suits him perfectly as a strategist, technical lawyer and advocate. Biochemistry PhD Pearson has earned a stellar reputation for the results he secures in biologics cases. Philadelphia office head Muñoz demonstrates a mastery of diverse technologies and benefits the group with his wellhoned post-grant know-how. All four are currently defending Johnson & Johnson Consumer in a suit brought by Medical Light Technology relating to phototherapy product patents; Maslowski and Muñoz have also been busy for 3M and Merck & Co in district courts and the PTAB.
portfolio management and transactions; his range and strategic perspicacity make him a dream to work with for in-house counsel. Ambidexterity is likewise a hallmark of Steven Samuels, a high-technology prosecutor with keen contentious nous whom clients deem a “reliable and talented teammate” and “brilliant on matters that are difficult or unusual in nature”.
BakerHostetler
Ballard Spahr LLP
“BakerHostetler is great to work with on a variety of patent litigation matters. Its lawyers are creative, collaborative and approachable, and provide excellent representation while staying within budget.” First of mind for many is Philadelphia-based national patent litigation team co-leader Daniel Goettle, who is “always on the shortlist for matters that need to be handled in a cost-effective manner”. “Dan is excellent at managing all aspects of cases as well as advocating for clients; he fulfils his role in a thoughtful and caring way, which is really appreciated.” He recently went out to bat for Comcast in a patent infringement action in Florida brought by WhereverTV involving patents for over-the-top content delivery by streaming. Goettle focuses on computer sciences and electrical and mechanical engineering cases; while for life sciences entities, Joseph Lucci is the one to call. He litigates with aplomb but adds tremendous value courtesy of well-rounded expertise in prosecution,
1570 IAM Patent 1000
BakerHostetler Ballard Spahr LLP Buchanan Ingersoll & Rooney PC Caesar Rivise PC Duane Morris LLP Fox Rothschild LLP
See p1680
K&L Gates LLP Morgan Lewis & Bockius LLP The Webb Law Firm Troutman Pepper
Ballard Spahr’s IAM Patent 1000 coverage has significantly increased for the 2021 edition: the firm has several new individuals listed across multiple offices and makes debut appearances in the Arizona, New York and Pennsylvania rankings, reflecting its strength in depth and comprehensive patent service. When it comes to road mapping patent procurement, monetisation and enforcement strategies, Ballard Spahr has a well-developed toolkit. This extended coverage is also a tribute to the stewardship of Philly-based IP chair Lynn Rzonca, an agile patent and brands sage with finely cultivated contentious and non-contentious skills. She serves as lead outside counsel to Exelon Corporation, for which she manages a great many IP activities. By her side on this brief is John Chionchio, a pure-play patent lawyer who helms the mechanical and medical technologies team. He provides a tip-top service to several prestigious companies, including Smith &
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United States: Pennsylvania Firms: transactions
Firms: litigation
Highly recommended
Akin Gump Strauss Hauer & Feld LLP
Buchanan Ingersoll & Rooney PC
Dechert LLP
Recommended
BakerHostetler
K&L Gates LLP
Ballard Spahr LLP
Morgan Lewis & Bockius LLP
Buchanan Ingersoll & Rooney PC
Troutman Pepper
Caesar Rivise PC
Wesson, for which he has obtained myriad valuable patents. Robert Baron is the other local star and an anchor of the IP litigation practice. The dynamic trial lawyer “skilfully handles complex issues, communicates well with business leadership and provides smart, efficient counsel”.
Buchanan Ingersoll & Rooney PC
Deep specialisation in the IP vertical and an allencompassing patent skillset distinguish Buchanan Ingersoll & Rooney from most of its general practice competitors. With a total command of all aspects of prosecution, litigation and patent commercialisation, the collaborative group lets nothing slip through the cracks and ensures that opportunities are never missed. The strength and quality of its patent prosecution skills give the practice extremely strong foundations, which further enhance the undoubted quality of its contentious offering. Individuals here aren’t siloed, creating the ideal conditions for companies to capitalise on their outstanding versatility. Chemical group co-chair Duane Stewart, for example, prosecutes, manages portfolios and litigates with poise, showing a deft touch on international matters. He supports a top university alongside Lynn Alstadt and Ralph Fischer, helping its licensing officers and inventors to obtain valuable patents at home and abroad. Alstadt draws on her encyclopaedic knowledge of patent law and contemporary understanding of technology to dispense essential strategic advice and advocate in numerous litigation forums. Steeped in all aspects of intellectual property, Fischer is also a dab hand in many technical domains. Cut from similar cloth, Michael Dever is another major draw for the group: recommended on each of the prosecution, litigation and transactions tables, he’s a true patent polymath. Though active across diverse theatres of innovation, Dever is a trained chemical
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K&L Gates LLP Morgan Lewis & Bockius LLP The Webb Law Firm
engineer with a penchant for chemical matters; these are likewise a forte for Craig Cochenour, a past leader of the firm’s pharmaceutical industry group and a former in-house counsel who neatly tailors his service according to need. David Gurwin and Susan Hartman, meanwhile, are the ensemble’s sharpest IP transactions lawyers. Gurwin’s recent licensing activities have included representation of a professional sports team, a playwright, an autonomous vehicle technology company and an international pharmaceuticals manufacturer; this diversity exposes him to issues across the spectrum, further honing his exceptional problem-solving abilities. Hartman partners closely with client teams and is a repository of trust on the most commercially significant matters.
Caesar Rivise PC
Caesar Rivise has been a standard setter among Pennsylvanian boutiques for many years, especially in the area of pharmaceutical patent litigation. With Robert Silver in the fold, the firm affords global and US generic drug companies sterling representation in Hatch-Waxman Act and other cases. Silver chairs the litigation department and is a veteran trial lawyer with an astonishing hit rate. No one trick pony, Caesar Rivise is also a beacon for innovative companies of all kinds that want to protect and smartly manage their intellectual property. Scott Slomowitz prosecutes applications through to successful grant timeously and cost effectively, and implements optimal IP strategies for the benefit of clients.
IAM Patent 1000 1571
United States: Pennsylvania Individuals: prosecution Lynn J Alstadt Buchanan Ingersoll & Rooney PC Samuel Apicelli Duane Morris LLP Amelia Feulner Baur McNeill Baur PLLC Louis W Beardell Jr Morgan Lewis & Bockius LLP Richard L Byrne The Webb Law Firm Roberto Capriotti K&L Gates LLP Noland Cheung Dentons Cohen & Grigsby John Chionchio Ballard Spahr LLP T Daniel Christenbury DLA Piper Craig G Cochenour Buchanan Ingersoll & Rooney PC Michael L Dever Buchanan Ingersoll & Rooney PC
Dechert LLP
When must-win cases loom, Dechert is the partner of choice for many A-list high-technology and pharmaceutical companies. The patent litigation team is muscular, well-resourced and superbly led by Martin Black. According to clients, Black is “one of the finest first-chair litigators in the country and a wonderful strategist”. “He understands intricate science and can restate it in a way that a layperson trier of fact can understand. He is sensitive to the atmosphere of whatever hearing he is in and is extremely quick on his feet, masterfully steering people away from sensitive areas and into his cases’ strengths.” He also “distinguishes himself in terms of responsiveness and diligence”. More generally, Dechert “is richly experienced in the life sciences area, with other excellent lawyers who take a pragmatic, business-focused approach to litigation”. One of those
1572 IAM Patent 1000
John Donch Jr Volpe and Koenig PC Stanley Ference Ference & Associates
See p1576
Ralph G Fischer Buchanan Ingersoll & Rooney PC Joseph Lucci BakerHostetler John W McIlvaine III The Webb Law Firm Raymond A Miller Troutman Pepper Steven B Samuels BakerHostetler James M Singer Fox Rothschild LLP Scott M Slomowitz Caesar Rivise PC Nicole Stakleff Troutman Pepper Duane A Stewart III Buchanan Ingersoll & Rooney PC
is Kevin Flannery, who is “outstanding in terms of both advocacy skill and customer care”: “Kevin is smart about the law and about client needs such as cost control, and provides a super-efficient and valuebased service.” Black is currently acting for Hitachi and Mondis Technology in a major licensing and litigation campaign, in the course of which he secured a trial victory and a significant damages award against LG Electronics; he and Flannery, meanwhile, have linked up to represent GlaxoSmithKline. All three clients are longstanding relationships, which speaks to the firm’s enduring quality.
Duane Morris LLP
Duane Morris’s robust prosecution practice is a major factor in its patent litigation success: the firm gets patents at the most meaningful level, having gone through the process of obtaining, managing and commercialising them, and has abundant technical expertise across the full range of disciplines. The
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United States: Pennsylvania Individuals: transactions
provides prosecution and strategic counselling services to high-profile innovators such as Xerox Corporation as well as many early-stage companies, which place a premium on his IP value creation know-how.
Noland Cheung Dentons Cohen & Grigsby
K&L Gates LLP
Michael L Dever Buchanan Ingersoll & Rooney PC George Dickos K&L Gates LLP David A Gurwin Buchanan Ingersoll & Rooney PC Susan M Hartman Buchanan Ingersoll & Rooney PC Raymond A Miller Troutman Pepper James M Singer Fox Rothschild LLP Lisa Casey Spaniel Blank Rome LLP
See p1577
Peter M Watt-Morse Morgan Lewis & Bockius LLP
preparation and prosecution group takes its cue from Samuel Apicelli, a strategic counsellor par excellence and a vital support to many litigation teams as they get to grips with the subject matter of their cases. He has safeguarded the innovations and advanced the business objectives of patrons for many years; for Wright Medical, for example, he has worked magic for nearly two decades, securing it over 500 patents and advising extensively on the patentability of inventions and wider IP strategy.
Fox Rothschild LLP
The well-specced patent practice at Fox Rothschild is staffed by 45-plus USPTO-registered attorneys alongside several patent agents, a technical specialist and an IP services director. The group – senior contact points for which can be found in Pennsylvania, New York, New Jersey, Colorado, Florida, DC, California and Minnesota – prosecutes in the United States and globally with rare efficiency, while maintaining a laser focus on quality. Providing strong leadership is Pittsburgh-based national IP department chair James Singer, who has a gift for realising clients’ business objectives through IP growth and development. He
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Impressive global IP capabilities and resources give K&L Gates a clear USP in the market: firmwide, it has more than 200 specialised IP practitioners on deck, giving it the transmission capacity to handle just about any patent instruction going. The Pittsburgh bureau can serve as a one-stop shop by itself, thanks to the combined talents of Roberto Capriotti, Patrick McElhinny and George Dickos, who complete the Pennsylvania line-up in the IAM Patent 1000. Renaissance man Capriotti acquits himself with distinction across the contentious/non-contentious divide, making him indispensable to companies such as Westinghouse Electric Company, for which he handles all global non-litigation patent matters. McElhinny is “fantastic in every respect” as a trial lawyer: “He engages with his clients at all levels of management to understand their processes, products and practices, in order to better tailor his service. He thinks like an in-house counsel and gets difficult jobs done with the least intrusion into company life, achieving optimal results in the process.” Dickos is the go-to for IP transactions and licensing; the breadth of his intangible asset commercialisation expertise gives him a hawkish eye for new opportunities and connections.
Morgan Lewis & Bockius LLP
There are no gaps in Morgan Lewis’s patent offering: the firm’s sophisticated prosecution, litigation, postgrant and transactional groups collaborate seamlessly and all operate at the highest level. By calling on the firm’s Pennsylvania offices, patrons can cover all bases, whatever they hope to achieve; they also gain quick and easy access to the wider IP group, of which Philadelphia-based Louis Beardell is global captain. Beardell is hard to beat for those seeking to establish and implement advanced patent programmes and smart IP protocols. His intuitive understanding of the pharmaceutical industry resonates with life sciences clients, which can also count on staunch representation from Eric Kraeutler when enterprising-threatening infringement suits arise. Kraeutler is one of the state’s most dynamic and seasoned life sciences and hightechnology trial lawyers and is fazed by nothing, be it subject-matter complexity, a difficult fact pattern or an unfriendly forum. Pittsburgh’s Peter Watt-Morse is the resident IP and technology transactions guru and a master at designing lucrative deal structures.
IAM Patent 1000 1573
United States: Pennsylvania Individuals: litigation Martin Black Dechert LLP Dianne B Elderkin Akin Gump Strauss Hauer & Feld LLP Eric Kraeutler Morgan Lewis & Bockius LLP Lynn J Alstadt Buchanan Ingersoll & Rooney PC Kent E Baldauf Jr The Webb Law Firm Robert Baron Ballard Spahr LLP Richard L Byrne The Webb Law Firm Michael L Dever Buchanan Ingersoll & Rooney PC Kevin M Flannery Dechert LLP
The Webb Law Firm
An eminent, storied Pennsylvania boutique full of well-trained, talented lawyers, The Webb Law Firm is a destination of choice for a thorough, high-quality patent service. The team understands the innovation mindset and aligns its approach to the individual needs of patrons, including both well-established and emerging players across virtually all areas of technology. All three of the firm’s IAM Patent 1000 2021 representatives – Richard Byrne, John McIlvaine and Kent Baldauf – have cultivated broad patent skills throughout their distinguished careers; rights holders can dial up any of them for any patent issue and come away knowing the best steps to take. Byrne – the most experienced among them – is a natural leader and mentor who instils immense confidence in those he represents; incredibly knowledgeable about patents and brands, he dispenses a fulsome service. Another generous educator, McIlvaine is in hot demand for clear-sighted counsel on international patent and IP matters. Baldauf garners plaudits for his command of the litigation process and balance and control in a courtroom setting.
1574 IAM Patent 1000
Daniel J Goettle BakerHostetler Joseph Lucci BakerHostetler Steven Maslowski Akin Gump Strauss Hauer & Feld LLP Patrick J McElhinny K&L Gates LLP John W McIlvaine III The Webb Law Firm Rubén Muñoz Akin Gump Strauss Hauer & Feld LLP Matthew A Pearson Akin Gump Strauss Hauer & Feld LLP Lynn E Rzonca Ballard Spahr LLP Robert Silver Caesar Rivise PC
Troutman Pepper
Born of deep technical expertise, Troutman Pepper’s advice on patent matters also comes infused with commercial insight. The lawyers here have a profound understanding of the health sciences industry and work hand in glove across practice area divides to support clients in the most relevant and purposeful ways. Raymond Miller and Nicole Stakleff form a dream team in Pittsburgh. Miller showcases his legal and business talents by helping pharmaceutical, biotechnology and other companies to take giant leaps forward in better managing and capitalising on their intangible assets; he has a natural instinct for IP value creation. Similarly, Stakleff champions the cause of business development as much as she does legal security, leveraging blended patent and regulatory know-how to great effect.
Other recommended experts
McNeill Baur founding partner Amelia Feulner Baur has made the life sciences her own. She fulfils multiple roles to perfection, from preparation and prosecution lawyer to worldwide patent strategist and due diligence counsel, and excels at individualising her advice cleverly and cost effectively for each client. Flying Dentons’ flag locally in Pittsburgh,
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United States: Pennsylvania Noland Cheung is a former in-house chief patent counsel and corporate lawyer who appreciates how best to put intellectual property to business use. Co-chair of DLA Piper’s patent prosecution practice, Daniel Christenbury draws judiciously on the firm’s global infrastructure to protect innovators to the hilt worldwide. He treats a diverse coterie of clients large and small to wise patent opinions and a refined portfolio development service. John Donch is a discerning choice for risk-smart strategic patent prosecution and licensing counsel. He puts in maximum effort for clients, but never neglects other important aspects of his leadership role both at Volpe and Koenig and in the wider community; he promotes diversity in the practice and invests
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time in educating companies and students on IP issues. Senior in-house counsel are only too happy to furnish recommendations for Ference & Associates, a boutique with “experienced, knowledgeable and personable attorneys”: “The firm never fails to impress with its responsiveness, timeliness, willingness to listen, adaptability and quality.” The architect of this stellar service is Stanley Ference, an IP all-rounder who is equally comfortable prosecuting and resolving litigation issues. Lisa Casey Spaniel is one of the best contacts in Pennsylvania for softwarerelated matters and patent and technology licensing. The Blank Rome IP and technology group co-chair also brings well-developed cybersecurity and data privacy expertise to the table.
IAM Patent 1000 1575
Ference, Stanley Principal – Ference & Associates sference@ferencelaw.com | www.ferencelaw.com
Stanley Ference practises in all aspects of IP law. His experience includes securing domestic and foreign patent, trademark and copyright rights. He is a national leader in online brand protection and anti-counterfeiting litigation. He has been registered to practise before the US Patent and Trademark Office since 1989. Mr Ference has obtained patents for clients in the United States and in foreign countries. He also has experience filing and prosecuting international patent applications under the Patent Cooperation Treaty and managing foreign filings under the Paris Convention. His prosecution practice covers all areas of technology, with an emphasis on writing and prosecuting applications in the electronic circuit, computer software, optical processors, signal processing and electromechanical related arts. Mr Ference has a leading practice in online brand protection. Since 2018, he and his team have secured injunctive relief and over $800 million in judgments against online counterfeiters in federal courts. Mr Ference has a Martindale-Hubbell Peer Review Rating of AV Preeminent. He has been recognised by Best Lawyers in America and IP Stars. He is a master of the bench member of the Q Todd Dickinson Intellectual Property American Inn of Court. Mr Ference has previously been on the faculty of the Practicing Law Institute’s Patent Bar review course and is currently on the faculty of the Practicing Law Institute’s patent fundamentals bootcamp course. He is also an e-discovery special master for the US District Court for the Western District of Pennsylvania. Prior to forming the law firm of Ference & Associates, Mr Ference was associated with the IP group of Reed Smith Shaw & McClay in Pittsburgh – Pennsylvania’s largest law firm. Prior to that time, he was an associate with Brumbaugh, Graves, Donohue & Raymond, an IP firm in New York, New York. Brumbaugh, Graves subsequently merged into Baker Botts LLP.
1576 IAM Patent 1000
Ference & Associates 409 Broad Street Pittsburgh PA 15143 United States T +1 412 741 8400 Professional associations • AIPLA • Allegheny County Bar Association • Pennsylvania Bar Association
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Spaniel, Lisa Casey Partner – Blank Rome LLP casey@blankrome.com | www.blankrome.com
Lisa Casey Spaniel is a partner in Blank Rome’s Philadelphia office and co-chair of the firm’s IP and technology practice group. Ms Spaniel concentrates her legal practice in IP matters – namely, software and technology licensing; data analytics and related data licensing arrangements; cybersecurity and privacy issues; outsourcing and supply agreements; mergers, acquisitions and other business agreements and transactions; software development; and promotions law. She counsels clients on matters relating to: • software, technology, copyright, patent, trademark and other IP licences and agreements, including development, implementation, integration, hosting, software as a service (SaaS) and other cloud-related agreements, as well as underpinning maintenance and support, service level, disaster recovery, data security and source code/SaaS escrow agreements; • collection, use, licensing and sale of aggregate and personally identifiable information, including data supply and licence agreements, as well as related security and privacy issues; • acquisition and sale of public and private entities with respect to intellectual property and other intangible assets; • website software and application development and commercialisation, including large-scale software implementation and data migration projects, focusing on project management and related methodologies; • outsourcing, original equipment manufacturers, value-added resellers, resale, private-label, supply, manufacturing, fulfilment and other sourcing and distribution agreements and models; • bio and nano technology and other life sciences agreements, including licences, joint venture agreements and technology transfer agreements; and • creation, administration and registration and bonding of sweepstakes, contests and other promotions, including rule preparation, liability releases, review of advertising and marketing materials, and response to regulatory inquiries.
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Blank Rome LLP One Logan Square 130 North 18th Street Philadelphia PA 19103 6998 United States T +1 215 569 5337 See firm profile p
IAM Patent 1000 1577
United States: Texas
Ahmad Zavitsanos Anaipakos Alavi & Mensing PC
“In complex patent and IP litigation, AZA is efficient and cost effective, and delivers excellent results. Its lawyers listen to their clients and understand their needs, and are superb at tailoring their services accordingly.” “Amir Alavi and Demetrios Anaipakos are among the best lawyers in the entire country for patent cases – they are smart, experienced and creative, and can be trusted to get on with things without close supervision.” Todd Mensing is also highly rated, with one source reporting: “If a case really matters to us, he gets the first call every time. Todd sees the big picture without losing focus on the details and is brilliant at adapting on the fly as circumstances change and the law evolves.” The group applies immense pressure on opposing parties in hard-fought battles and more than deserves its gold-tier ranking. Also noteworthy is the intrepidness of the team – for example, in challenging patent infringements in multiple Chinese courts, including recently on behalf of Advanced Codec Technologies against Xiaomi. The actions taken by AZA are never cavalier, but playing it safe isn’t the default position either. See p1644 for firm profile
Baker Botts LLP
Baker Botts illuminates the entire patent world for clients; well versed in all facets of patent law, its richly resourced, talented and versatile team procures commercially valuable rights, litigates with confidence and poise, and wins hearts and minds around the deal negotiating table. The practitioners here employ a global scheme of thinking, too, further shattering the limits on their practice. For 2021, the firm has new faces in the IAM Patent 1000, with Samir Bhavsar and Margaret Sampson deserved additions to the lists of top Texans. Both play a leadership role, with the former co-chairing the prosecution group and the latter co-leading the IP transactions practice. A former chief IP counsel with fine-grained telecommunications, electronics and software knowledge, Dallas-based Bhavsar understands the client mentality better than most and applies his considerable faculties in driving quality prosecution, litigation and licensing outcomes. His patrons include Lennox International, a global innovator in climate control technology, for which he undertakes strategic portfolio development and defensive patent analysis work. From her office in Austin, Sampson designs and executes major transactions with aplomb,
1578 IAM Patent 1000
Firms: prosecution Highly recommended Baker Botts LLP Fish & Richardson Haynes and Boone LLP Norton Rose Fulbright Recommended Dentons Hunton Andrews Kurth LLP Munck Wilson Mandala LLP
See p1712
Osha Bergman Watanabe & Burton Pillsbury Winthrop Shaw Pittman LLP Polsinelli PC Slater Matsil LLP
drawing on her scientific background – she has a PhD in molecular and human genetics – and broad practice horizons to dot the Is and cross the Ts. They join a host of colleagues who make returns to the rankings; among them, Barton Showalter, Christa Brown-Sanford and Kevin Meek stand out for their agility, each playing a strong hand in the prosecution, litigation and licensing fields. Showalter served as IP department chair for 12 years until 2019 and remains an influential figure both internally and for clients such as Cisco Systems, for which Baker Botts does everything under the sun as far as patents are concerned. He is brilliant at embedding law firm with in-house teams, creating the ideal conditions for optimised collaboration. Brown-Sanford, who also supports the Cisco relationship, distinguishes herself as a business thinker who confidently leads on major IP initiatives with many stakeholders; her valuable efforts to foster a diverse and inclusive workplace are also laudable. Taking the reins in Austin, Meek demonstrates outstanding range in his far-reaching support of Dell, for which he handles portfolio management, IP commercialisation and
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United States: Texas diverse contentious matters. With him on this is Roger Fulghum, a vital member of a high-powered contingent of litigators that includes post-grant lead Michael Hawes, trial lawyers Kurt Pankratz, Doug Kubehl and Paul Morico. Coming in for special praise, Fulghum and Hawes “get fantastic results with great consistency and provide rock-solid advice from technical, legal and business perspectives”. Pankratz has racked up wins in many forums and is a strategically savvy advocate who strikes the right tone both in the courtroom and in settlement negotiations. He and Kubehl – a lawyer who bestrides the global litigation and licensing stage – are vital components of the Cisco team. Houston-based Morico has litigated extensively over energy and power-related patents, but is also adept in the life sciences.
Caldwell Cassady & Curry
Having led the way to more than $2 billion in verdicts and settlements since its establishment in 2013, trial boutique Caldwell, Cassady & Curry has earned the loyalty of myriad top technology companies for its resonant performances in big-ticket IP and commercial litigation. In a notable recent highlight, it cemented a 2016 trial victory and $439 million patent infringement judgment for VirnetX against Apple with the rejection of a motion filed by Apple to set aside the decision. Overseeing this, Bradley Caldwell, Jason Cassady and Austin Curry form an unstoppable trio of trial lawyers who fight hard but practise with great integrity.
Dentons
Dentons offers an incredible prosecution support package which encompasses the expertise of more than 80 practitioners – over 20 of whom are PhDs – and persuasive global capabilities. The practice benefits from robust leadership, too, supplied by Dallas-based Robert Hanson, who chairs the US IP and technology group and sits on the firm’s US board. Hanson has close relationships with Texas A&M, the University of Texas at Austin and the University of Texas Southwestern Medical Center, which he supports in connection with prosecution and counselling in diverse areas such as plant protection, pharmaceuticals and medical devices. He also acts for blue-chip corporates, managing prosecution efforts worldwide with rare efficiency.
Fish & Richardson
Fish & Richardson is one of the elite IP players in the United States; in key business centres across the country it is not only present, but scene shaping, thanks to the number and influence of its patent lawyers. There are
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Firms: transactions Baker Botts LLP Fish & Richardson Haynes and Boone LLP Hunton Andrews Kurth LLP Norton Rose Fulbright Pillsbury Winthrop Shaw Pittman LLP Thompson & Knight LLP Womble Bond Dickinson
Firms: litigation Ahmad Zavitsanos Anaipakos Alavi & Mensing PC
See p1644
Baker Botts LLP McKool Smith Norton Rose Fulbright Susman Godfrey LLP Winston & Strawn LLP
See p1744
Caldwell Cassady & Curry Fish & Richardson Gibson Dunn & Crutcher LLP Haynes and Boone LLP Heim, Payne & Chorush LLP
See p1694
Munck Wilson Mandala LLP
See p1712
Skiermont Derby LLP
See p1728
Thompson & Knight LLP Morgan Lewis & Bockius LLP Pillsbury Winthrop Shaw Pittman LLP
IAM Patent 1000 1579
United States: Texas Polsinelli PC
Gregory Howison Munck Wilson Mandala LLP
Vinson & Elkins LLP
Sushil Iyer Fish & Richardson
Ward, Smith & Hill PLLC Weil Gotshal & Manges LLP
Michael Krawzsenek Norton Rose Fulbright US LLP
Individuals: prosecution
Michael Kucher Slater Matsil LLP
James Babineau Fish & Richardson
Ira S Matsil Slater Matsil LLP
Jeffrey Bergman Osha Bergman Watanabe & Burton
David L McCombs Haynes and Boone LLP
Samir Bhavsar Baker Botts LLP
Jill A McWhirter King & Spalding LLP
Randall C Brown Haynes and Boone LLP
Kevin J Meek Baker Botts LLP
Christa Brown-Sanford Baker Botts LLP
William A Munck Munck Wilson Mandala LLP
Srini Chakravarthi Slater Matsil LLP
Tracy Druce Polsinelli PC Michael A Glenn Perkins Coie LLP J Kevin Gray Fish & Richardson Joshua Griswold Fish & Richardson Robert Hanson Dentons US LLP Alan Herda Haynes and Boone LLP
1580 IAM Patent 1000
See p1600
Wes Musselman Fish & Richardson
Brad Y Chin Bracewell LLP David M Doyle Munck Wilson Mandala LLP
See p1597
Gregory Novak Polsinelli PC See p1594
David O’Brien Haynes and Boone LLP David O’Dell Haynes and Boone LLP Jonathan P Osha Osha Bergman Watanabe & Burton Michael Piper Conley Rose
many Texan contributors to Fish’s formidable reputation when it comes to the procurement, enforcement and monetisation of intangible assets. Helping to maintain the foundational prosecution and counselling skills that the firm has so conscientiously cultivated are Dallasbased attorneys Sushil Iyer and Jonathan Solomon, and Austin managing principal James Babineau. Iyer capitalises on the international environment in which he
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United States: Texas Gregory L Porter Hunton Andrews Kurth LLP
all comers benefit from his gift for IP value creation. Of course, patent litigation is a real forte for Fish: the firm is dominant at the district court level, in the ITC and at the Federal Circuit. Many of its most significant wins can be credited to Texas litigators including Jayme Partridge, John Lane, Danielle Joy Healey and David Hoffman. Partridge’s leadership qualities pay handsome dividends in high-exposure competitor battles such as a recent dispute between client Tenaris and Global Tubing, in which she captained an all-female team to a satisfying Markman hearing result. Down the hall in Houston, seasoned trial lawyers Lane and Healey have also been calm and collected in the spotlight of late, acting for Seabed Geosolutions against Magesis, a competitor in the field of ocean bottom seismometers. Austin-based Hoffman sees the big picture and pursues litigation strategies that bring business benefits; he is helped in this regard by a broad patent skillset that encompasses prosecution and portfolio management. Versatility is likewise a strength of Terry Stalford, Wes Musselman and Joshua Griswold, who promote joined-up thinking across Fish’s contentious and noncontentious practices. Stalford knows how best to pursue patents in thorny areas that will stand up to litigation challenges and thus creates tremendous value for patrons; Musselman manages risk superbly; while Griswold shines in a post-grant group that is one of the best in the country. By contrast, Kevin Gray is a pureplay transactional IP lawyer and a repository of trust for senior business managers who are looking to cut deals that will take their companies to the next level.
Constance Rhebergen Bracewell LLP Gina N Shishima Norton Rose Fulbright US LLP Barton E Showalter Baker Botts LLP Steven Slater Slater Matsil LLP Gary B Solomon Foley & Lardner LLP Jonathan Solomon Fish & Richardson Terry Stalford Fish & Richardson Mark A Tidwell Haynes and Boone LLP Josh Tucker Pillsbury Winthrop Shaw Pittman LLP Rutherford Ross Viguet Norton Rose Fulbright US LLP Garth Vivier Schwegman Lundberg & Woessner PA
Gibson Dunn & Crutcher LLP See p1604
Mark Bradley Wilson Norton Rose Fulbright US LLP Russell Wong Blank Rome LLP
See p1606
practises – Fish has solid footholds in Europe and China – and provides a premier global portfolio management and development service to innovators in the mechanical, chemical and computer technology fields; he is also an authority on privacy matters. Solomon does sophisticated work with a focus on software and communications; while his training and mentoring mindset is evident in the time he generously gives to new Fish recruits and, through his pro bono work, to Texas inventors and entrepreneurs. Babineau adapts his counselling style to fit different clients brilliantly, though
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Few are more willing or better able to take on game-changing suits for industry-leading media, technology, software and life sciences companies than Gibson Dunn. It is home to a large contingent of battle-hardened trial lawyers who get right to the heart of their cases and, outmanoeuvring opposing parties, advance them quickly, advantageously and cost effectively. Well prepared, technically adept, creative, aggressive when necessary and highly experienced in the courtroom, Mark Reiter creates a threat level that often paves the way for early dispute resolution. He has recently been acting for Amazon, Microsoft and HP in a suit filed by the University of Tennessee Research Foundation alleging infringement of multiple database and distributed processing technology patents.
Heim, Payne & Chorush LLP
Heim, Payne & Chorush is a high-powered patent litigation firm that punches well above its weight in numbers and has a striking hit rate in the cases that
IAM Patent 1000 1581
United States: Texas matter most to clients. Its lean approach intensifies the strategic focus and enhances cost effectiveness, which translates into favourable results and refined customer care. Its committed, clued-up partners play a hands-on role: unless matters are transferred to them from other counsel at a late stage – a notuncommon occurrence – individuals such as Michael Heim and Leslie Payne don’t just parachute in at the last minute, but get to know the intimate details of their cases, ensuring the confident presentation of the most dispositive issues at trial. Heim has scored big against some of the technology world’s top players and is a practice innovator in terms of staffing models and flexible fee arrangements – all of which endears him immensely to those he represents. Cut from similar cloth, Payne is always up to speed on the latest legal, technology and business trends and developments, and adjusts his strategies with agility accordingly; he has impeccable trial and appellate credentials. Heim, Payne & Chorush also scores highly for its technical prowess, key contributors in this regard being Eric Enger and Russell Chorush. Enger is a former National Instruments and Dow Corning engineer who manages cases with finesse and can communicate the densest technical concepts to triers of fact; while chemistry PhD Chorush masters the science in the complex pharmaceutical suits he takes charge of. In different configurations, these partners band together to superb effect: Payne and Enger recently secured a favourable settlement for WiLAN in patent infringement litigation against LG; Heim and Payne hammered out a satisfying settlement for Red Rock Analytics in an infringement suit against Apple; and Chorush, Heim and Enger represented a class of direct purchasers of Alzheimer’s drug Namenda accusing Allergan of abusing patent laws in a reverse payment scheme to keep generics off the market, which led to a $750 million settlement – one of the largest ever by a single drugmaker in an antitrust case. See p1694 for firm profile
McKool Smith
McKool Smith needs no introduction: one of the leading patent litigation outfits not just in Texas, but in the United States, it is hailed as a “brilliant firm and absolute powerhouse full of top-drawer advocates”. The team keeps the wins coming thick and fast; Ted Stevenson and Nicholas Mathews recently secured a ruling for Ericsson preventing Samsung from enforcing a Chinese anti-suit injunction and thus enabling Ericsson to pursue litigation in the United States over 4G and 5G SEPs. Stevenson is one among several lawyers – including Mike McKool and Samuel Baxter – who are unanimously regarded as world-
1582 IAM Patent 1000
class advocates. Mathews is building his reputation off the back of assured performances in FRAND cases.
Morgan Lewis & Bockius LLP
Morgan Lewis combines the strengths of a boutique with those of a powerful international commercial outfit to provide a high-end patent service tailored to the varied interests of cutting-edge technology and life sciences companies. A key selling point for the firm is its formidable trial capability: it has a large contingent of first-chair litigators who have collectively met with great success in all major US patent litigation forums, including the ITC. This brings Texas-based lawyers Winstol Carter, David Levy and Rick Rambo into focus: all three have the moxie to spur trial teams to big wins and have done so regularly throughout their careers. Carter and Levy were recently retained by Ferrari in a patent infringement action in the Western District of Texas over alleged infringement of patents directed to the development of the Halo protective device in race cars; while Levy and Rambo have been acting for ConocoPhillips, chalking up superb results at the PTAB that have enhanced its position in district court litigation against In-Depth Compressive. The latter highlight is a good example of the firm’s ability to bring lawyers together across different offices – Levy and Rambo linked up with Silicon Valley post-grant ace Dion Bregman on this – and design and implement strategies for multi-layered, multiforum disputes.
Munck Wilson Mandala LLP
The accolades pour in for Munck Wilson Mandala, a technology-focused boutique in hot demand for its sophisticated global patent filing and management strategies, multilingual communication skills and extensive foreign network. “The calibre of its work and the value it adds are far superior to those of any large national or local specialty outfit; its quality, cost-effectiveness and attentiveness really set it apart.” Setting the standard as managing partner and chair of the technology and IP group, William Munck, is celebrated for his outside-the-box thinking and appreciation of the needs of business leaders as they navigate their most difficult challenges. He takes the reins in representing Samsung Electronics in connection with 1,500-plus active patent matters. His exceptional leadership skills have also been pivotal in helping the firm to attract and retain diverse talent up and down the roster. Several other senior-level practitioners motivate and inspire the individuals around them, including Gregory Howison, a prosecution, licensing and post-grant doyen with
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United States: Texas David L McCombs Haynes and Boone LLP
Individuals: transactions Highly recommended
Jill A McWhirter King & Spalding LLP
Jeff C Dodd Hunton Andrews Kurth LLP
Kevin J Meek Baker Botts LLP
James W Repass Norton Rose Fulbright
Peter E Mims Vinson & Elkins LLP
Barton E Showalter Baker Botts LLP
David O’Dell Haynes and Boone LLP
Stephen E Stein Thompson & Knight LLP
Gregory L Porter Hunton Andrews Kurth LLP
Jeffrey S Whittle Womble Bond Dickinson (US) LLP Recommended
Constance Rhebergen Bracewell LLP
Lance Anderson Dickinson Wright
Margaret Sampson Baker Botts LLP
James Babineau Fish & Richardson
Gina N Shishima Norton Rose Fulbright US LLP
Christa Brown-Sanford Baker Botts LLP
Terry Stalford Fish & Richardson
Edward A Cavazos Pillsbury Winthrop Shaw Pittman LLP
Mark A Tidwell Haynes and Boone LLP
Randall E Colson Haynes and Boone LLP
Mark Bradley Wilson Norton Rose Fulbright US LLP
J Kevin Gray Fish & Richardson
Russell Wong Blank Rome LLP
Gregory Howison Munck Wilson Mandala LLP
See p1597
Douglas M Kubehl Baker Botts LLP
exemplary technical expertise in fields such as software and telecommunications; David Doyle, who applies keen strategic vision in his counselling, prosecution and portfolio management role; and Michael Wilson, a dextrous trial lawyer with major verdicts to his name. See p1712 for firm profile
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See p1606
Richard L Wynne Thompson & Knight LLP
Osha Bergman Watanabe & Burton
Osha Liang rebranded as Osha Bergman Watanabe & Burton (OBWB)in October 2020, in celebration of the contributions made to the practice by a larger group of partners. As a result of this change, the top-specced boutique went into 2021 with added momentum undimmed by the Covid-19 pandemic, which has only put an added premium on the sort of superior quality work and service that the firm has always prioritised. Fielding locally qualified attorneys in Houston, Paris, Hangzhou and Tokyo, OBWB can cater to clients’
IAM Patent 1000 1583
United States: Texas Theodore Stevenson McKool Smith
Individuals: litigation Amir H Alavi Ahmad Zavitsanos Anaipakos Alavi & Mensing PC Demetrios Anaipakos Ahmad Zavitsanos Anaipakos Alavi & Mensing PC
See p1590
See p1591
Samuel F Baxter McKool Smith
Michael A Bittner Winston & Strawn LLP
Winstol D Carter Morgan Lewis & Bockius LLP
Brett C Govett Norton Rose Fulbright US LLP
Jason D Cassady Caldwell Cassady & Curry
Joseph S Grinstein Susman Godfrey LLP
Russell Chorush Heim, Payne & Chorush LLP
Wesley Hill Ward, Smith & Hill PLLC
See p1593
Max Ciccarelli Thompson & Knight LLP
John R Keville Winston & Strawn LLP
J Austin Curry Caldwell Cassady & Curry
Mike McKool McKool Smith
Tracey B Davies Gibson Dunn & Crutcher LLP
Thomas Melsheimer Winston & Strawn LLP
See p1602
Bruce S Sostek Thompson & Knight LLP
global patent prosecution needs; technical dexterity spanning all scientific and engineering disciplines is another USP. Global chair Jonathan Osha has promoted the use of sophisticated technologies and staffing approaches to drive efficiency while elevating quality, and in doing so has shown himself to be exceptionally mindful of clients’ needs. He maintains a vibrant practice which touches on many of the hottest areas of technological development. Manager of the Houston office Jeffrey Bergman prosecutes extensively in the chemical area, among others, and earns plaudits for his perspicacity on international patent law and insightful opinions.
1584 IAM Patent 1000
Charles B Walker Norton Rose Fulbright
Bradley W Caldwell Caldwell Cassady & Curry
Douglas Cawley McKool Smith
Paul J Skiermont Skiermont Derby LLP
Max L Tribble Susman Godfrey LLP
Eric Enger Heim, Payne & Chorush LLP
See p1595
Chad Everingham Ward, Smith & Hill PLLC
Polsinelli PC
Polsinelli’s IAM Patent 1000 coverage has increased significantly in recent years: one of the US market’s movers and shakers, the firm has been astutely reinforcing its already comprehensive national patent practice with fresh blood. One of its strongest expansionist plays came back in 2016, when it welcomed 40-plus attorneys from IP boutique Novak Druce into the fold, deepening its technical bench and giving it a strong presence in Texas. As dyed-in-thewool IP counsellors, Houston-based Gregory Novak and Tracy Druce display total commitment to their clients, which include leading global corporations
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United States: Texas Roger Fulghum Baker Botts LLP
Justin A Nelson Susman Godfrey LLP
Hilda Galvan Jones Day
Kurt Pankratz Baker Botts LLP
Michael Hawes Baker Botts LLP
Leslie Payne Heim, Payne & Chorush LLP
Michael Heim Heim, Payne & Chorush LLP
See p1596
Phillip B Philbin Thompson & Knight LLP
Sharon A Israel Shook Hardy & Bacon LLP
Mark Reiter Gibson Dunn & Crutcher LLP
Douglas M Kubehl Baker Botts LLP
Barton E Showalter Baker Botts LLP
Doug McClellan Weil Gotshal & Manges LLP
Garland T Stephens Weil Gotshal & Manges LLP
David L McCombs Haynes and Boone LLP
T John Ward Jr Ward, Smith & Hill PLLC
Kevin J Meek Baker Botts LLP
Alexandra White Susman Godfrey LLP
Todd Mensing Ahmad Zavitsanos Anaipakos Alavi & Mensing PC
Douglas Wilson Armond Wilson
See p1599
Paul Morico Baker Botts LLP William A Munck Munck Wilson Mandala LLP
See p1600
Brian Nash Pillsbury Winthrop Shaw Pittman LLP
in diverse sectors including energy and IT and networking. They partner closely with in-house counsel and the C-suite to design and implement sophisticated IP strategies that keep companies ahead of their competitors in the global technological marketplace. The combination with Novak Druce also brought on board Suni Sukduang, who has thrived as chair of Polsinelli’s high-flying post-grant group. One source comments: “Suni provides consistently highlevel support at critical times and is an indispensable part of our organisation. He goes above and beyond the brief and, from initial engagement through billing, is a pleasure to work with.”
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See p1601
Michael C Wilson Munck Wilson Mandala LLP
See p1605
Richard L Wynne Thompson & Knight LLP Richard S Zembek Norton Rose Fulbright
Skiermont Derby LLP
An IP trial and litigation boutique that puts in memorable performances on both sides of the docket, Skiermont Derby can always be trusted when the chips are down. “Big on talent and efficiency”, it has several new faces in the IAM Patent 1000 for 2021, reflecting its strength in depth and diversity – though he’s massive part of the ensemble’s success, it isn’t all about Paul Skiermont. New to the listings are Sarah Spires and Mieke Malmberg, each of whom brings immense value to the practice. “Sarah is super-responsive and has the admirable and rare quality of knowing all the pertinent facts of her cases; what’s more, she can recall them at a moment’s notice and synthesise them into the big picture.” “Mieke is excellent at evaluating
IAM Patent 1000 1585
United States: Texas Jamil N Alibhai Munsch Hardt Kopf & Harr
Eric Klein Vinson & Elkins LLP
Steve Borgman Kilpatrick Townsend & Stockton
John R Lane Fish & Richardson
Jeffrey Bragalone Bragalone Olejko Saad
See p1592
David J Levy Morgan Lewis & Bockius LLP
Peter J Chassman Reed Smith LLP
Mieke Malmberg Skiermont Derby LLP
Justin S Cohen Thompson & Knight LLP
Peter E Mims Vinson & Elkins LLP
Steven Daniels Dickinson Wright
Jayme Partridge Fish & Richardson
(John) Russell Emerson Haynes and Boone LLP
Rick L Rambo Morgan Lewis & Bockius LLP
John G Flaim Baker McKenzie
Robert R Riddle Reed Smith LLP
Eric B Hall Norton Rose Fulbright
Sarah E Spires Skiermont Derby
Andres Healy Susman Godfrey
Suni Sukduang Polsinelli PC
Danielle Joy Healey Fish & Richardson
M Craig Tyler Perkins Coie LLP
David Hoffman Fish & Richardson
Jay F Utley Baker McKenzie
a case upfront and capably handle small matters or large campaigns that incorporate district court trials, patent office proceedings and appeals.” They are rising stars of the patent litigation practice and beneficiaries of the wonderful leadership of Skiermont – a lawyer who is “at the elite level in terms of thoroughness and sophistication of legal analysis and effectiveness of presentation”. He has fostered an approach whereby, from the moment of instruction, intense concentration is given to clients’ ultimate business objectives and foresighted strategies are designed with these in mind. Alternative fee structures are another signature of the practice and one which further sharpens the focus on results. Recent highlights include a July 2020 Federal Circuit affirmance of an earlier trial victory for Packet Intelligence against NetScout Systems and Tektronix Communications; and notable inter partes review
1586 IAM Patent 1000
See p1598
See p1603
success against Google on behalf of WiLAN-owned IPA Technologies. IPA also selected Skiermont Derby to take over the assertion of its foundational Siri patents from another firm.
Slater Matsil LLP
The essential choice of companies to which patent quality is everything, Slater Matsil has prosecution down to a fine art. Statistical data highlights the firm as one of the most active and best performing in the country; and with new mandates coming in from top industry players – including a leading Japanese telecommunications company – it is only becoming more impressive to behold. Hallmarks include the diversity, cosmopolitanism, technical and scientific erudition and business comprehension of the team, which has been custom built by founding partners
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United States: Texas Steven Slater and Ira Matsil – two worldly-wise practitioners with more than 60 years in the game between them. Expertise in prosecution, licensing and transactions and litigation grants former trial attorney Slater an enlightened perspective on high-level patent strategy. Equally as cultivated, Matsil understands with great acuity the technologies and business needs of his clients and how to harness their intellectual property for commercial ends. Also highly rated are Srini Chakravarthi, who makes his sophomore appearance in the guide this year; and debutant Michael Kucher. An inventor himself, Chakravarthi has rich industrial R&D experience and an incredibly agile technical mind when it comes to cutting-edge high-technology innovation. Kucher has an in-house background in the semiconductor industry, and understands the US and European patent systems and how to work within and between them. Others building strong profiles in the wider market include established partner Benjamin Nise, newly minted partner Elizabeth Iglesias and Landon Wiebusch – all of whom garner enthusiastic recommendations from clients.
and Nelson recently led a team representing Barkan Wireless IP Holdings in patent litigation against Samsung, which they have successfully battled against on numerous occasions.
Susman Godfrey LLP
A force to be reckoned with in the Eastern District of Texas, Ward, Smith & Hill is feared by many of the leading patent litigation firms in the United States. Its crack team always maintains a trial mindset, which informs its no-stone-unturned preparation and paves the way for highly effective representation when matters go the distance. As a former Eastern District magistrate judge, Chad Everingham has unique insight into what does and doesn’t work in this patent litigation hotspot. He forms an A-team with Wesley Hill, a commercial and IP litigator with a rare level of trial nous; and Johnny Ward, an American College of Trial Lawyers fellow who has beaten up on many technology world leaders.
Susman Godfrey is a go-to for high-risk litigation: “The people there are not litigators, but true trial lawyers who always deliver top-quality legal work.” The goldranked firm has a unique culture in which each lawyer has an equal say on matters such as hiring and case selection, and in which those who go to court stand up to present. Individuals at every level have thus bought into its mission to take on and win the toughest, most valuable cases, giving it a formidable intensity of focus. Routinely spearheading precedent-setting campaigns are Houston partners Joseph Grinstein, Andres Healy, Lexie White, Max Tribble and Justin Nelson, each of whom proves devastatingly effective in the courtroom. Garnering especially effusive references this year and ascending to the gold tier as a result, Grinstein is “an adept manager of potent trial teams and a hugely capable advocate whose cross-examinations and closing arguments are persuasive and compelling”. “Joe is a lifeboat lawyer with no identifiable weaknesses. Extremely intelligent and diligent, he can make complex matters easily understandable and, on top of it all, is a personable, kind and generous person who relates well to others.” He recently tried the first-ever patent infringement lawsuit filed against Snapchat subsidiary Snap, winning summary judgment both defensively and offensively. Healy and White, meanwhile, have been working wonders for repeat client Koninklijke KPN in battles against the likes of HTC Corporation. Tribble
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Vinson & Elkins LLP
Intimately familiar with the inner workings of the Eastern District of Texas, Vinson & Elkins has a fine reputation for patent litigation in the Lone Star State. Its cadre of seasoned litigators builds effective cases and presents them resonantly, and has trial wins aplenty – backed by success at the appellate level – to show for it. One of the busiest in the group is Eric Klein, whose tried-and-tested strategies in telecommunications and SEP cases frequently carry the day. Capable of dialling up the aggression as required and working swiftly and decisively, he was recently engaged by AU Optronics Corp to take over a number of patent infringement lawsuits filed by Vista Peak Ventures relating to LCD technology. Peter Mims also litigates with assurance, while also running a dynamic IP transactions practice.
Ward, Smith & Hill PLLC
Weil Gotshal & Manges LLP
At the national level, Weil is an elite patent litigation performer with a knack for securing optimum results in make-or-break suits that affect not just the parties to them, but also entire industries. The group’s principal lawyers are based in Silicon Valley, Houston, New York and DC, but physical separation is no barrier to their effective collaboration; when you instruct Weil, you get the trial team that is right for your case in terms of expertise. The engines of the Texas contingent are Houston-based Doug McClellan and Garland Stephens, both of whom possess razor-sharp trial skills and a tremendous amount of experience. McClellan has lately seen competitor combat, representing Nuance Communications against
IAM Patent 1000 1587
United States: Texas M*Modal in a matter involving speech recognition patents; for this, he linked up with DC lawyer Brian Ferguson and New York’s Anish Desai to invalidate two of M*Modals asserted patents in inter partes review proceedings. He and Stephens are also currently fighting the corner of a US-based multinational technology company.
Winston & Strawn LLP
One of the best-known patent defence trial firms in the United States, Winston & Strawn has a battalion of litigators at the ready including some of the country’s best out-and-out trial lawyers – 25 of its approximately 130 patent litigation attorneys have first-chaired multiple trials. Few have done so more than Dallas managing partner Thomas Melsheimer, whose track record is replete with victories in a broad range of patent and non-patent disputes; he can present any case in any court and has many momentous decisions to his name. Recent high-profile patent work includes acting for Ericsson as indemnitor in a case filed by SOL IP, which asserted in the region of 30 patents against three major carriers; on this, he joined up with frequent collaborator Michael Bittner, who plays the role of strategist, case manager and advocate to perfection. John Keville is the other star on the Texas bench: brilliant both at understanding the technology and presenting it in court, he undertakes significant competitor cases in the energy and high-technology spheres, netting significant wins for Sunoco, among others. See p1744 for firm profile
Womble Bond Dickinson (US) LLP
Standing out for its energy, biomedical and pharmaceutical sector expertise, Womble Bond Dickinson has a fast-growing following of bluechip companies in Texas. The firm opened its Houston office in early 2019 and hired licensing and transactional IP connoisseur Jeffrey Whittle to lead it – a plan that has worked out nicely and laid strong foundations for further success. Having landed some big clients which are keen to draw on the generous IP resources that Womble Bond Dickinson makes available, Houstonites Whittle et al have come into immediate and close contact with colleagues in, for example, North Carolina, California and Georgia; they derive strength from this connectedness, which often takes longer to establish for new teams. With Whittle at the helm, the group has a particular flair for commercial IP matters; though Joshua Davis is a confident life sciences and medical device patent infringement litigation lead.
1588 IAM Patent 1000
Other recommended experts
Jamil Alibhai recently made the switch from Munck Wilson Mandala to full-service commercial outfit Munsch Hardt Kopf & Harr. He’s a decorated lead litigation counsel who really moves the needle for the parties he represents. Flying the flag of Dickinson Wright in Texas are Lance Anderson and Steven Daniels, both of whom garner enthusiastic recommendations from the market: “Time and again Lance shows his outstanding expertise in navigating the patent protection and commercialisation process. His counselling on early-stage patentability, prosecution, post-allowance strategy, infringement and assertion, licensing and regulatory matters plays a huge part in supporting client growth and success.” On litigator Daniels, one source comments: “Steve demonstrates superior legal reasoning and communication skills and goes above and beyond for those he represents. He understands the market – the value of the technology at issue and the infringer’s position – enabling him to make smart decisions about filing a case.” Kilpatrick Townsend & Stockton recently bolstered its IP capabilities in Houston with the arrival of former Vinson & Elkins lawyer Steve Borgman. He brings 30 years of patent prosecution, counselling and transactional know-how to the practice. Jeffrey Bragalone has the trial chops to see innovators to victory in the most challenging and high-value patent and technology litigations. He has been gifted with the power to persuade, which he applies to great effect in myriad PTAB, district court and Federal Circuit actions. He takes the lead at litigation boutique Bragalone Olejko Saad. Reed Smith has two outstanding patent litigators in Texas in Peter Chassman and Robert Riddle. The former stands out for his polished courtroom performances, particularly in the Eastern District of Texas; while the latter is known for his technical dexterity. Brad Chin and Constance Rhebergen chair Bracewell’s IP and technology groups respectively. Both are do-it-all patent lawyers skilled in the arts of rights protection, licensing and litigation. Adept in many technical areas and internationally experienced, they see the whole playing field for clients, concentrations of which come from the chemical and energy industries. John Flaim demonstrates impressive versatility in patent practice: top banks and energy companies, among others, entrust important litigations to him, as well as prosecution and transactional assignments. He can cover a lot of ground efficiently and with joined-up strategies. Having previously chaired Baker McKenzie’s global IP group, he has extensive international connections which prove a boon to clients with global interests; the role also honed
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United States: Texas his leadership and mentoring skills, which have made the difference for many in the firm. Down the hall in Dallas is Jay Utley, a seasoned litigator in the high-technology realm. He completes his work with precision and knows how best to elevate the skills of those around him. Jones Day’s go-to lead counsel in Texas, Hilda Galvan has abundant jury trial experience in competitor cases and a résumé replete with significant wins secured over the course of her nearly 30-year career. Michael Glenn develops robust patent portfolios that help keep high-flying companies at the forefront of their industries. He is an anchor on the prosecution side of Perkins Coie’s patent practice; while Austin colleague Craig Tyler works his magic on the contentious front. “Craig is a strong business partner and strategist who looks to achieve commercially beneficial outcomes. He can be highly recommended for IP litigation and related advice.” Sharon Israel’s unique insights on patent law and policy have led her to leadership positions in the American Intellectual Property Law Association and other organisations. Her wisdom in this regard enhances her strategic approach as a patent litigator. She is based at Shook Hardy & Bacon’s Houston office. Jill McWhirter utilises her well-developed corporate and IP expertise to meaningfully support clients on many levels. For example, she acts for Key Energy Services in connection with portfolio management, post-grant proceedings and transactional due diligence matters. In-house counsel appreciate her critical thinking and problem-solving abilities, and practical business focus. Conley Rose president
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Michael Piper has a range and sophistication of experience and level of know-how that immediately put him in the trusted adviser role for new clients. He often serves in an in-house counsel-type capacity, showcasing his legal and business smarts and interpersonal skills to the fullest. Gary Solomon has quickly become an anchor of Foley & Lardner’s electronics patent prosecution practice since he joined the firm just over a year ago. A former practising engineer with finely honed drafting skills, he also applies keen strategic vision in building commercially valuable portfolios. Schwegman Lundberg & Woessner has a reputation for excellence and innovation in patent law which has attracted a loyal following of Silicon Valley technology companies and start-ups. Many of these make a beeline to Garth Vivier, a top strategist with an international outlook and an eye for patent quality and flair for value creation. Douglas Wilson is hailed as an “outstanding strategic thinker and highly impressive, succinct and composed oral advocate”. He is a founding partner of Armond Wilson, a fast-rising patent litigation boutique with a well-developed post-grant toolkit. Recent highlights include representing patent owner Vaporstream and saving a portfolio of patents challenged by Snap in inter partes review proceedings. The co-chair of Blank Rome’s IP and technology group, Russell Wong is a perspicacious portfolio strategist, licensing ace and litigator. A former chief IP counsel at a Fortune 50 company, he has a first-hand knowledge of the business of intellectual property.
IAM Patent 1000 1589
Alavi, Amir H Partner – Ahmad Zavitsanos Anaipakos Alavi & Mensing PC aalavi@azalaw.com | www.azalaw.com
Amir H Alavi represents plaintiffs and defendants in complex commercial litigation throughout the United States. He has a particular focus on IP cases and The World’s Leading Patent Professionals 20162020 has called him an “unflappable advocate that you can greenlight for a billion-dollar case with 100% confidence”, and a “judicious strategist” with an “acute sense of how to present a damages case”. Mr Alavi is board certified in civil trial law by the Texas Board of Legal Specialisation, a distinction reserved for Texas trial lawyers with a high degree of trial experience and expertise. He has been recognised by attorneys across the country as one of the Best Lawyers in America for commercial litigation, is AV-rated by Martindale Hubbell and is a life fellow of the Texas Bar Foundation. And he has been consistently recognised on the Thomson Reuters Texas Super Lawyers listing and by H Texas magazine as a “Top Lawyer in Houston”. Intellectual Asset Management (IAM) magazine also said Mr Alavi “is a commercial litigator par excellence with valuable in-house insight, having previously served as general counsel of a company with 5,000 employees. The savvy case handler knows when to take up arms and when to chase a settlement”. IAM also described him as “someone you can match up against any lawyer in the country and be confident of a win. Drawing on a deep reservoir of trial experience he delivers knifelike advocacy timed to perfection”. Prior to joining Ahmad Zavitsanos Anaipakos Alavi & Mensing PC, Mr Alavi was the general counsel of a privately held company with over 5,000 employees. While there, he managed the mergers and acquisition department and handled several acquisitions of public and private companies.
Ahmad Zavitsanos Anaipakos Alavi & Mensing PC 1221 McKinney Street Suite 2500 Houston TX 77010 United States T +1 713 655 1101 F +1 713 655 0062 See firm profile p1644 Professional associations • ABA • College of the State Bar of Texas • Texas Bar Foundation Sample client list • Liberty Oilfield Service • Rembrandt Wireless Technologies • Saint Lawrence Comm • Versata Software
1590 IAM Patent 1000
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Anaipakos, Demetrios Partner – Ahmad Zavitsanos Anaipakos Alavi & Mensing PC danaipakos@azalaw.com | www.azalaw.com
Demetrios Anaipakos is a trial lawyer recognised for his prowess at representing both plaintiffs and defendants in patent litigation and complex commercial litigation. He has tried significant patent cases to winning verdicts in the United States and has helped other clients to secure victories in international patent litigation in various venues, including Germany, Japan and China. He regularly handles all sorts of commercial litigation matters, including trade secrets litigation, fiduciary litigation and a wide array of contractual disputes. Mr Anaipakos is recognised for his general commercial litigation work by Chambers USA: America’s Leading Lawyers for Business. He has also been recognised by attorneys across the United States, making the list of the Best Lawyers in America for commercial litigation in the US News & World Report survey. Mr Anaipakos has been featured by Texas Super Lawyers since 2004 and has repeatedly been included in the Houston Super Lawyers Top 100. He has also been awarded a ‘distinguished’ rating by the Martindale-Hubbell Law Directory and has been named as a Litigation Star by Benchmark Litigation from 2016 to 2018. Mr Anaipakos has been counsel on several significant cases involving allegations of damages of hundreds of millions of dollars. He is certified in civil trial law by the Texas Board of Legal Specialisation, a distinction reserved for Texas trial lawyers with a high degree of trial experience and expertise. His high-profile cases and courtroom victories have attracted statewide, national and sometimes international attention. He has been featured in numerous US and international publications and television shows.
Ahmad Zavitsanos Anaipakos Alavi & Mensing PC 1221 McKinney Street Suite 2500 Houston TX 77010 United States T +1 713 655 1101 F +1 713 655 0062 See firm profile p1644 Professional associations • ABA • FCBA • Texas Bar Foundation Sample client list • Liberty Oilfield Services • Rembrandt Wireless Technologies • Saint Lawrence Comm • Versata Software
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IAM Patent 1000 1591
Bragalone, Jeffrey Shareholder – Bragalone Olejko Saad PC jbragalone@bosfirm.com | www.bosfirm.com
Jeffrey Bragalone is a founder of Bragalone Olejko Saad PC in Dallas, Texas. He received his JD, with honours, from the University of Texas School of Law in 1987, where he was a member of the National Moot Court team and was selected to the Order of Barristers. Mr Bragalone and Bragalone Olejko Saad PC have a nationwide complex commercial litigation practice, with an emphasis on patent and IP litigation matters and technology-related cases. Mr Bragalone has a wide variety of experience, including more than 100 inter partes review proceedings before the PTAB and extensive patent litigation involving wireless networking; liquid crystal displays; semiconductor devices, including dynamic random-access memory, static randomaccess memory, electrically erasable programmable read-only memory and flash; predictive text algorithms; circuit breakers; optical character recognition; inter-ocular lenses; user interfaces; object-relational mapping software; telephone circuitry; network switches; asymmetric digital subscriber line; voice coding; computer batteries; disk drives; vibratory finishing processes; satellite broadcasting; personal computer compression software; and computerised reservation systems. Mr Bragalone also has significant experience in Lanham Act litigation, as well as trademark, copyright and trade dress litigation. In non-IP cases, Mr Bragalone has been lead counsel in numerous complex matters, including qui tam or False Claims Act whistleblower litigation; securities litigation; commercial lending; Racketeer Influenced and Corrupt Organisations Act proceedings; probate and estate litigation; bankruptcy adversary proceedings; employment disputes; and class actions. Mr Bragalone also has an active appellate practice, having successfully argued appeals in precedent-setting cases before the Federal Circuit Court of Appeals and the Fifth Circuit Court of Appeals. Mr Bragalone is a trustee of the Dallas Theatre Centre, where he serves as immediate past president of the board. He can sometimes be seen onstage as a performer in the Dallas Bar Association’s annual “Bar None” variety show. Before forming Bragalone Olejko Saad PC, Mr Bragalone was a name partner in another Dallas IP law boutique firm and was a former partner at McKool Smith PC.
1592 IAM Patent 1000
Bragalone Olejko Saad PC 2200 Ross Avenue, Suite 4500 W Dallas TX 75201-7924 United States T +1 214 785 6670 F +1 214 785 6680 Sample client list • Cellular Communications Equip • Resesas • Stingray LLC • Super Interconnect LLC • Valencell
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Chorush, Russell Partner – Heim, Payne & Chorush LLP rchorush@hpcllp.com | www.hpcllp.com
Russell Chorush is a co-founder of Houston-based Heim, Payne & Chorush, a patent litigation boutique that is known for its sophisticated and effective litigation related to patent infringement and patentrelated antitrust work. Mr Chorush is a true pioneer in patent-related antitrust litigation against pharmaceutical companies under the Sherman Antitrust Act and FTC v Actavis Inc, 133 S Ct 2223 (2013). He plays leadership roles on multi-firm teams and has assisted in securing groundbreaking recoveries in excess of $1 billion, prevailing in every case he has tried to final decision. With a PhD in chemistry, Mr Chorush is uniquely qualified to handle patent-related antitrust litigation on behalf of direct purchasers and retailers that are harmed when pharmaceutical manufacturers abuse patent laws for an unfair competitive advantage. Prior to attending law school, Mr Chorush served as a laboratory manager for Texas Instruments Inc (TI) and Air Liquide Corporation. He is a co-author of the book Handbook of Chemicals and Gases for the Semiconductor Industry, as well as a number of published articles and is a named inventor on several patents assigned to TI. He is an author of six published articles in peer-reviewed journals, including the Journal of the American Chemical Society, Analytical Chemistry and the Journal of Mass Spectrometry. He received his PhD in analytical chemistry from Cornell University in 1994 and a BS in chemistry from the University of Texas at Austin in 1989.
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Heim, Payne & Chorush LLP 1111 Bagby Suite 2100 Houston TX 77002 United States T +1 713 221 2000 See firm profile p1694
IAM Patent 1000 1593
Doyle, David M Partner – Munck Wilson Mandala LLP ddoyle@munckwilson.com | www.munckwilson.com
David M Doyle is a partner in Munck Wilson Mandala’s IP practice. He is registered to practise before the US Patent and Trademark Office and has more than 20 years of experience counselling companies in the identification and protection of their IP assets. Mr Doyle’s experience in the preparation and prosecution of patents in high technology includes semiconductor devices and device fabrication, hardware and software development for computer and other data processing systems, process control systems, military and defence systems, and landline and wireless telecommunications systems. In 2018 Mr Doyle helped client Raytheon obtain the 10 millionth patent issued by the US Patent and Trademark Office. Before joining Munck Wilson Mandala, Mr Doyle was an associate at a multinational, general practice law firm in Dallas. Prior to his legal career, he worked as a test programmer for a telecommunications company. Mr Doyle’s extensive experience includes patent preparation, prosecution, appeals, enforcement and defence; long-range strategies for domestic and international patent procurement and portfolio management; licensing; patentability, infringement and validity; and third-party re-examination proceedings. Mr Doyle is recognised as a Texas Super Lawyer in intellectual property by Thomson Reuters. He received a BS in computer engineering magna cum laude from Texas A&M University and earned his JD from Franklin Pierce Law Center.
1594 IAM Patent 1000
Munck Wilson Mandala LLP 600 Banner Place Tower 12770 Coit Road Dallas TX 75251 United States T +1 972 628 3671 See firm profile p1712 Professional associations • Dallas Bar Association • State Bar of Texas
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Enger, Eric Partner – Heim, Payne & Chorush LLP eenger@hpcllp.com | www.hpcllp.com
Eric Enger has a deep understanding of the issues at the heart of patent disputes involving complicated technology. Clients look to him for his skills in running cases, formulating legal strategies, writing compelling briefs and oral advocacy. Mr Enger’s practice focuses on patent litigation and post-grant challenges at the US Patent Trial and Appeal Board. He prosecutes and defends high-tech companies in multi-patent litigation all over the United States. He also has considerable experience litigating trade secret misappropriation cases. With an engineering background and deep legal expertise, he is often sought out by software companies and asked to consult on cases involving intellectual property. He manages cases with extreme diligence and attention to detail. In addition, he is known as a lawyer who shares his experiences and knowledge to help young attorneys develop. Mr Enger attended the University of Texas, where he received a bachelor of science in electrical engineering. He went on to attend the University of Houston Law Centre, graduating cum laude. From 2008 to 2018, he was selected each year as a Texas Rising Star. In 2019-2020, he earned a selection to Texas Super Lawyers by Thomson Reuters for his work in IP litigation. He also is rated AV Preeminent by MartindaleHubbell. Mr Enger is licensed to practise in Texas, as well as the US District Courts for the Northern, Southern, Western and Eastern Districts of Texas.
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Heim, Payne & Chorush LLP 1111 Bagby Suite 2100 Houston TX 77002 United States T +1 713 221 2000 See firm profile p1694 Professional associations • Texas Bar Foundation • The Honorable Nancy F Atlas Intellectual Property American Inn of Court
IAM Patent 1000 1595
Heim, Michael Managing Director – Heim, Payne & Chorush LLP mheim@hpcllp.com | www.hpcllp.com
Michael Heim is a nationally prominent trial lawyer who focuses on IP litigation and antitrust lawsuits involving intellectual property for clients across industries. He is managing director and founding partner of Heim Payne & Chorush, a firm that handles the most complicated disputes for some of the largest energy and technology firms, as well as individuals and smaller companies going up against behemoths of industry. Mr Heim represents plaintiffs and defendants throughout the United States in patent litigation in a wide range of technologies, from microprocessors, computer architecture, memory control systems, cellular telephone systems and data transmission systems, to online gaming systems, database caching software, logging-while-drilling systems and a host of other technologies. He has led litigation teams from complaint to judgment in federal district courts in the Eastern District of Texas and across the country, winning favourable verdicts and settlements for his clients. Mr Heim has expertise in evaluating patent portfolios and developing strategies to enforce and license those portfolios. With formidable legal instincts and technical acumen, he is able to understand and communicate highly complex technical and legal issues to both judges and jurors, enabling him to help protect countless innovative ideas on behalf of his clients. Mr Heim has also successfully litigated class action antitrust lawsuits against pharmaceutical companies that abuse patent laws to maintain a competitive advantage. Mr Heim has a BS in electrical engineering from the University of Missouri with numerous academic honours. He received his JD from the George Washington University Law School, also with honours. While in law school, he served three years as a patent examiner at the US Patent and Trademark Office, with his primary work focusing on electrical communications and computer software and hardware. His numerous professional accolades include recognition by Chambers USA, the IAM Patent 1000 and Texas Super Lawyers, as well as being named an IP Trailblazer by the National Law Journal.
1596 IAM Patent 1000
Heim, Payne & Chorush LLP 1111 Bagby Suite 2100 Houston TX 77002 United States T +1 713 221 2000 See firm profile p1694 Professional associations • ABA • Houston Intellectual Property Law Association • State Bar of Texas Intellectual Property Law Association
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Howison, Gregory Partner – Munck Wilson Mandala LLP ghowison@munckwilson.com | www.munckwilson.com
Gregory Howison is a partner in Munck Wilson Mandala’s (MWM) IP law practice. A registered US patent attorney with more than 36 years’ experience in IP law, he specialises in the software, telecommunications and semiconductor industries, as well as e-commerce. Mr Howison has prepared and obtained significant patent coverage on several large telecommunications networks, voice messaging systems, video conferencing systems, semiconductor devices, neural network systems and software systems. Considered one of North Texas’s most experienced IP veterans, Mr Howison was the founding partner of Howison & Arnott LLP, which he established in 1999 with a primary focus on intellectual property. In 2017 Mr Howison and his team joined MWM, combining two strong IP practices. Mr Howison frequently travels and serves as a consultant to companies (both patentees and licensees) involved in patent licensing negotiations in the United States, Japan and China. He has served as lead counsel on numerous inter partes reviews before the PTAB for both patent owners and petitioners. Mr Howison is one of MWM’s leading patent prosecutors with established global and regional clients. He has helped the firm sign a significant Japanese electronic parts manufacturer based in Kyoto with a US location in Silicon Valley. Mr Howison also represents firm clients in the telecommunications and semiconductor industries. Prior to entering law school, Mr Howison was employed for over nine years as a design engineer in the field of high-frequency communications, digital and analogue design, including service with Westinghouse Defense Center, Texas Instruments Inc and Rockwell International. He had risen to the level of senior engineer/scientist prior to entering law school. Mr Howison is honoured as a Texas Super Lawyer by Thomson Reuters in intellectual property and he is rated AV Preeminent by Martindale-Hubbell. He received his bachelor’s in electrical engineering from the Catholic University of America and his JD from the Southern Methodist University School of Law.
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Munck Wilson Mandala LLP 600 Banner Place Tower 12770 Coit Road Dallas TX 75251 United States T +1 972 628 3624 See firm profile p1712 Professional associations • AIPLA • IEEE • INTA
IAM Patent 1000 1597
Malmberg, Mieke K Partner – Skiermont Derby LLP mmalmberg@skiermontderby.com | www.skiermontderby.com
Mieke K Malmberg is a patent trial and appellate lawyer with expertise in all areas of patent disputes, including: • patent litigation and Section 337 investigations before the International Trade Commission; • patent appeals before the US Court of Appeals for the Federal Circuit; • inter partes review proceedings; and • advising on IP monetisation and strategy. Ms Malmberg regularly represents pharmaceutical companies in Hatch-Waxman disputes, as well as entities involved in standardessential patent disputes. Her experience covers a wide range of technologies, including pharmaceuticals, medical devices, software, electronics and telecommunications. Ms Malmberg has extensive experience practising before the US Court of Appeals for the Federal Circuit, from briefing to oral argument, and has had particular success in winning Federal Circuit appeals on cases taken over post-trial. Prior to joining Skiermont Derby LLP, she worked in a medical research laboratory and was a principal at McKool Smith. She has been named a Super Lawyer for multiple years, placing her among the top 5% of all practising lawyers in Southern California. Ms Malmberg speaks regularly on issues relating to recent developments in patent litigation and damages calculations in IP cases, and co-chairs the California Lawyers Association’s Patent Interest Group. Ms Malmberg holds a BS in biochemistry and cell biology, as well as a BA in history, both from the University of California, San Diego. She received her law degree from the University of California, Hastings College of the Law, where she also served as an articles editor for the Hastings Law Journal.
1598 IAM Patent 1000
Skiermont Derby LLP 800 Wilshire Boulevard Suite 1450 Los Angeles CA 90017 United States T +1 213 788 4500 F +1 213 788 4545 See firm profile p1728 Professional associations • California Lawyers Association • Federal Circuit Bar Association • Texas Bar Association Sample client list • Colibri Heart Valve LLC • HEC Pharm Co Ltd • IPA Technologies Inc • Unwired Planet LLC
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Mensing, Todd Partner – Ahmad Zavitsanos Anaipakos Alavi & Mensing PC tmensing@azalaw.com | www.azalaw.com
Todd W Mensing focuses on complex commercial litigation. Having tried more than 50 cases, Mr Mensing is board-certified in civil trial law by the Texas Board of Legal Specialization, a distinction reserved for Texas trial lawyers with a high degree of trial experience and expertise. During the past ten years, an average of fewer than ten attorneys per year statewide has earned the distinction. He is recognised among the top lawyers in the United States for commercial litigation and construction litigation in The Best Lawyers in America. Mr Mensing is also recognised in the area of Texas General Commercial Litigation in the 2014-2020 editions of Chambers USA: America’s Leading Lawyers for Business published by London-based Chambers and Partners. He earned the highest possible AV Preeminent rating based upon peer reviews from Martindale-Hubbell. He has also been elected to the prestigious American Board of Trial Advocates (ABOTA), an elite group of the country’s leading trial lawyers. Mr Mensing has tried cases in virtually every arena, including in the areas of complex commercial litigation; intellectual property and trade secret disputes; executive employment claims; catastrophic personal injury cases; as well as white-collar criminal defence matters. Mr Mensing has been named one of the top 100 lawyers in Texas and Houston in the annual Texas Super Lawyers. He was put on the Super Lawyers list in only his fifth year of practice and was one of the youngest attorneys in Texas to be named to the list. The IAM Patent 1000 ranked him as a leading Texas patent litigation litigator in 2020. Prior to joining Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing PC, Todd graduated with honours and in the top ten per cent of his class at the University of Texas School of Law. He obtained his undergraduate degree with honours from Stanford University.
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Ahmad Zavitsanos Anaipakos Alavi & Mensing PC 1221 McKinney Street Suite 2500 Houston TX 77010 United States T +1 713 655 1101 F +1 713 655 0062 See firm profile p1644 Sample client list • Liberty Oilfield Services • NexTier Oilfield Solutions • TechnipFMC plc • US Well Services Inc
IAM Patent 1000 1599
Munck, William A Managing Partner – Munck Wilson Mandala LLP wmunck@munckwilson.com | www.munckwilson.com
William A Munck is the managing partner of Munck Wilson Mandala (MWM) and chairs the firm’s IP section. He is considered one of the leading IP authorities in North Texas and leads one of the strongest and most reputable IP teams in the Southwest. In addition to representing global clients in high-tech and defence, Mr Munck and his team represent start-ups, small-caps and privately held companies in all areas of technology and business. Mr Munck began his career with a full-service Texas-based law firm and a prominent New York IP litigation boutique. Prior to his legal career, he worked as a lead software engineer and project manager with Axiom Systems Inc in New York, where he managed a design team responsible for developing an industrial laboratory control system. He has been with MWM since 1997 and grew the firm from six to more than 70 attorneys over the past two decades. Under Mr Munck’s leadership, MWM has expanded its national presence to the West Coast through the acquisition of a Los Angeles IP boutique and expanded practice capabilities in complex litigation, education law, sports law, real estate and cannabis law. Winning frequent accolades, Mr Munck was named a Diversity and Inclusion Champion in 2020 by Texas Lawyer magazine and the firm was honoured as Litigation Department of the Year in general litigation that same year. Mr Munck is listed among the prestigious Dallas 500 by D CEO Magazine, and MWM ranks as one of the largest patent law firms in North Texas annually by the Dallas Business Journal. Mr Munck holds BS and MS degrees in computer science, electrical engineering and mathematics, and he is honoured as a Distinguished Alumnus by his law school, the Maurice A Deane School of Law at Hofstra University.
1600 IAM Patent 1000
Munck Wilson Mandala LLP 600 Banner Place Tower 12770 Coit Road Dallas TX 75251 United States T +1 972 628 3630 See firm profile p1712 Professional associations • ABA • Dallas Bar Association • State Bar of Texas
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Payne, Leslie Partner – Heim, Payne & Chorush LLP lpayne@hpcllp.com | www.hpcllp.com
Co-founder of Houston-based Heim, Payne & Chorush, Leslie Payne has helped build a nationally respected team of lawyers and has led litigation resulting in numerous eight and nine-figure verdicts and settlements. He has more than 25 years of experience representing patent owners and alleged infringers in high-profile patent litigation across all technology sectors, as well as extensive experience in trade secret litigation. His work spans the litigation timeline, from pre-suit strategy to the filing of a case, discovery, trial, verdict and appeal. Mr Payne serves as lead counsel or co-lead counsel in jurisdictions throughout the country, often managing large teams of lawyers in a way that ensures synergistic coordination among team members. As part of his patent litigation practice, Mr Payne also represents clients in inter partes review proceedings at the US Patent and Trademark Office, where he has frequently prevailed in matters both challenging the validity of patents and upholding the validity of claims. In addition, he has extensive experience at the Federal Circuit Court of Appeals and he served as one of the lead attorneys for the patent owner in Commil USA v Cisco at the US Supreme Court, which resulted in a landmark decision regarding the standard for inducing infringement under 35 USC 271(b). He is a diligent and thorough trial lawyer who routinely wins strategic victories throughout the course of litigation, including two patent infringement verdicts featured in the VerdictSearch Texas Verdicts Hall of Fame.
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Heim, Payne & Chorush LLP 1111 Bagby Suite 2100 Houston TX 77002 United States T +1 713 221 2000 See firm profile p1694
IAM Patent 1000 1601
Skiermont, Paul J Partner – Skiermont Derby LLP pskiermont@skiermontderby.com | www.skiermontderby.com
Paul J Skiermont is a trial lawyer with a national litigation and inter partes review practice. He represents small and large companies in litigation involving complex science and technology, including pharmaceuticals and other life sciences, natural language processing, telecommunications, aerospace and consumer electronics. Mr Skiermont was lead trial counsel for the patent owner in a recent successful jury trial in East Texas – in which the verdict included a finding of wilful infringement. He also represented the patent owner and exclusive licensee in a patent infringement lawsuit accusing Apple’s Siri personal assistant of infringing a natural language processing patent owned by Rensselaer Polytechnic Institute. The case was settled on the eve of trial with Apple paying $25 million for a nonexclusive licence. Skiermont Derby LLP was recognised by online legal news service Law360 as one of 10 national boutique practices “that have established brands on par with the biggest firms” and are “capable of competing with – and beating – the best big firms at the highest level”. The firm offers a variety of alternative fee agreements to clients based on the value of its work, as an alternative to the number of hours it spends working on a case. Before co-founding his own firm, Mr Skiermont was a partner at BartlitBeck LLP, a nationally renowned litigation boutique known for its success in high-stakes cases. Mr Skiermont obtained his bachelor’s degree, with honours, from the University of Kentucky. While an undergraduate, he was twice awarded First Place Speaker at the Intercollegiate National Debate Tournament – one of only three people to win the award twice since the tournament began in 1947. Before law school, Mr Skiermont coached the undergraduate debate team at Harvard University. He earned his law degree from the University of Chicago with high honours, Order of the Coif. After law school, he was a judicial clerk for Judge C Arlen Beam at the US Court of Appeals for the Eighth Circuit.
1602 IAM Patent 1000
Skiermont Derby LLP 1601 Elm Street Suite 4400 Dallas TX 75201 United States T +1 214 978 6600 F +1 214 978 6601 See firm profile p1728 Professional associations • Federal Circuit Bar Association • LES • Texas Bar Association Sample client list • Bell Semiconductor LLC • Fisiopharma srl • HEC Pharma Co Ltd • Serenity Pharmaceuticals • United Technologies Corporation
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Spires, Sarah E Partner – Skiermont Derby LLP sspires@skiermontderby.com | skiermontderby.com
Sarah E Spires is a registered patent attorney and focuses her practice on inter partes reviews, patent infringement litigation and advising clients on IP transactions and disputes. She has been named by Super Lawyers as a Texas Rising Star from 2016-2021 and in 2020-2021 was named one of the Texas Rising Stars Up-and-Coming 50 Women. Ms Spires has been lead or back-up counsel on over 70 inter partes reviews spanning a wide range of technologies and has been named one of the Top 50 Women in PTAB Trials by the Patent Trial and Appeal Board (PTAB) Bar Association. She has significant expertise in briefing and arguing cases to final written decision before the PTAB on behalf of both patent owners and petitioners. Ms Spires has successfully tried numerous cases to verdict in jury and bench trials throughout the country, and to final decisions in international arbitration proceedings. Her litigation and trial expertise includes Paragraph IV disputes under the Hatch-Waxman Act (generic and brand), and patent litigation involving technology ranging from biotechnology and medical devices to LCD technology and wireless and telecommunications devices. She also represents clients in complex commercial litigation matters, including trademark infringement, trade secret disputes, contractual and patent licensing disputes, and antitrust and false claims act cases. Ms Spires has successfully briefed and argued numerous cases before the US Court of Appeals for the Federal Circuit on behalf of clients involved in appeals from inter partes reviews and district court litigations. Most recently, she obtained a favourable precedential opinion for her client in Gensetix, Inc v Board of Regents of University of Texas System, 966 F.3d 1316 (Fed Cir 2020). Ms Spires’s technical background includes conducting cell cycle research at the Massachusetts Institute of Technology’s (MIT) David H Koch Institute for Integrative Cancer Research. Prior to joining Skiermont Derby LLP, Ms Spires practised at Gibson, Dunn & Crutcher LLP and Morrison & Foerster LLP. She graduated from the University of California, Berkeley School of Law and earned her bachelor’s degree in biology from MIT.
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Skiermont Derby LLP 1601 Elm Street, Suite 4400 Dallas TX 75201 United States T +1 214 978 6613 F +1 214 978 6601 See firm profile p1728 Professional associations • DFW Women in IP • Federal Circuit Bar Association Global Fellows • Honourable Barbara MG Lynn American Inn of Court Sample client list • Daiichi Sankyo • HBK Capital Mgmt • Paranoid Fan • Plexxikon • Specific Media • Veerappan Subramanian
IAM Patent 1000 1603
Vivier, Garth Principal – Schwegman Lundberg & Woessner PA gvivier@slwip.com | www.slwip.com
Garth Vivier is a registered patent attorney and principal of Schwegman Lundberg & Woessner. His focus for 28 years has been the procurement of high-value patents for both multinational corporations and startups. On a regular basis, Mr Vivier assists start-ups in Silicon Valley (and abroad) develop IP strategies tailored to the tight budgets most startups face. A patent strategy should be closely aligned with business objectives and, after 18 years in Silicon Valley, Mr Vivier has gained insight into how to accomplish this. His experience extends to both software and hardware-related inventions. Example technologies include artificial intelligence/machine learning, the Internet of Things, business-related inventions, database technology, mobile devices, memory devices, electronic circuits, computer architecture, hard drives, communication networks, memory devices, silicon photonics and digital audio. Mr Vivier also has experience in patent portfolio development (eg, to enhance acquisition value), portfolio management, IP due diligence, product clearance, and validity and infringement analyses and opinions. His experience also extends to international patent protection, particularly via the European Patent Office, the Patent Cooperation Treaty, in China and in Japan. Prior to joining Schwegman in 2004, Mr Vivier was a partner in two other law firms. He also worked as an engineer designing missile guidance systems before entering the patent profession.
1604 IAM Patent 1000
Schwegman Lundberg & Woessner PA 111 West Saint John Street Suite 1100 San Jose CA 95113 United States T +1 408 278 4041 See firm profile p1724 Professional associations • California State Bar Association
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Wilson, Michael C Partner – Munck Wilson Mandala LLP mwilson@munckwilson.com | www.munckwilson.com
Michael C Wilson is a trial lawyer well known for his skills handling complex and technical cases. He is repeatedly listed as a Texas Super Lawyer in commercial litigation and a Best Lawyer in America© (Woodward White). Clients trust Mr Wilson with their largest and most important cases. Mr Wilson frequently represents plaintiffs or defendants where the amounts in dispute exceed $100 million. In the past five years, Mr Wilson has served as trial counsel in two trials resulting in eight-figure jury verdicts. Mr Wilson frequently represents inventors, technology companies and other businesses in disputes involving patent infringement, trade secret claims and other business torts in the Northern and Eastern Districts of Texas, Delaware and numerous other state and federal courts throughout the country, including California, Connecticut, Florida, Georgia, New York, Ohio and Wisconsin. Mr Wilson’s cases cover a wide range of technologies, industries and technical issues, including pharmaceuticals (Hatch Waxman litigation), consumer electronics, wireless communication devices/ systems, semiconductors, software, commercial construction and design, manufacturing equipment and systems, and power and electrical distribution systems. In 2015 Mr Wilson was trial counsel for a technology company in a case alleging theft of trade secrets and patent infringement resulting in a judgment of $77 million, one of the largest jury verdicts in the nation that year. In addition to commercial and IP litigation, Mr Wilson has over 26 years of experience litigating and trying other commercial matters, including insurance matters, product liability cases, construction defect disputes and business torts.
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Munck Wilson Mandala LLP 600 Banner Place Tower 12770 Coit Road Dallas TX 75251 United States T +1 972 628 3657 See firm profile p1712 Professional associations • American Trial Lawyers Association • Dallas Bar Association • State Bar of Texas
IAM Patent 1000 1605
Wong, Russell Partner – Blank Rome LLP rwong@blankrome.com | www.blankrome.com
Russell Wong is a partner in Blank Rome’s Houston office and co-chair of the firm’s national IP and technology practice group. Mr Wong helps clients meet their business goals when dealing with IP issues. He concentrates his practice on advising clients on handling IP issues, including resolving disputes – whether it’s litigation or an out of court assertion; licensing intellectual property, both inbound to the client or outbound of the client’s technology; and developing and implementing strategies for building a valuable patent portfolio strategy. Mr Wong’s clients range from start-ups to large multinational corporations. Mr Wong combines his law firm experience with his past experience as chief IP counsel of a Fortune 50 company to achieve those objectives. He uses those experiences to keep in mind the business goals when addressing legal issues. He represents a wide range of clients, in many technologies, such as nanotechnologies (including carbon nanotubes and quantum dots), petrochemicals and chemistries, including processes, equipment and catalysts, computer hardware and software, LED technologies, and oilfield technologies. His patent litigation experience spans the technology areas mentioned above, including LED signs, video technology, notebook computer technology, chemical drag reducers and mapping technology. Mr Wong frequently speaks on IP topics, including patent licensing, business method patents and standards activities.
1606 IAM Patent 1000
Blank Rome LLP 717 Texas Avenue Suite 1400 Houston TX 77002 United States T +1 832 446 2420 See firm profile p1658
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United States: Utah
Dorsey & Whitney LLP
Bringing together a high-spec prosecution team with a muscular IP litigation unit, Dorsey & Whitney comprehensively caters to innovative companies in need of patent support. As in Minneapolis, Denver and Seattle, the firm has a well-rounded line-up of specialists in Salt Lake City which derives strength from both self-sufficiency and integration into the national group. Anchoring the prosecution practice locally are Grant Foster, Marcus Simon and Bryan Pratt, who form a triumvirate of experienced portfolio managers and strategists. Grant Foster has been in the game for more than three decades and delights with percipient, forward-thinking patent counsel informed by litigation learnings. In a practice emphasising energy, mining and medical devices, Simon displays his affinity for untangling complex problems; he takes a collaborative approach and leans on litigation colleagues to ensure that clients receive holistic solutions. Pratt has been pivotal in growing the firm’s relationship with a world-leading multinational technology company; he handles a dizzying number of instructions without letting quality slip in the slightest. Spearheading litigation campaigns in which the stakes are high, Brett Foster and Mark Miller form a strong one-two punch. Foster’s recent representations have come on behalf of firearms maker Browning and sporting goods company Hoyt Archery, the latter engaging in conflict with several Chinese companies. For another firearms company, Miller – together with Foster – recently put to bed a five-year dispute by entirely invalidating the patent asserted against his client.
Holland & Hart LLP
Helping to make Holland & Hart a premier destination for patent counselling is a cadre of high-calibre professionals in Salt Lake City, all of whom garner glowing reviews from the market. Commenting on Phil Harris and Scott Karren, one source confides: “They are among my most trusted advisers. Phil’s understanding of patent law and strategy is overshadowed only by his commitment to client service. I would recommend him without hesitation; only selfishly, I want to keep him to myself! He has led key portfolio development efforts for us and has added a tremendous amount of value, earning the trust of our most talented innovators and helping identify and protect important inventions we might otherwise not have harvested.” Karren is acknowledged by the high-technology industry as a go-to for the most difficult prosecution cases.
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Firms Dorsey & Whitney LLP TraskBritt PC Workman Nydegger
See p1746
Holland & Hart LLP Keller Jolley Preece Lowenstein Sandler LLP Maschoff Brennan Ray Quinney & Nebeker Stoel Rives LLP
“Though polite and diplomatic, he is a very tenacious advocate for us,” reports one client. Meanwhile, his thoughtful mentorship and management of practitioners across Holland & Hart’s offices undergird the firm’s ability to handle high-volume, short turnaround patent development projects with finesse. On the life sciences side, Loren Hulse also attracts rave reviews from patrons: “Loren has efficiently expanded our IP protections and extended our portfolio is a better, more timely way than we have ever managed in-house. He used his firm’s state-ofthe-art AI tools to upgrade our IP security, bringing a huge added benefit. In one instance, he revived some in-process patents that had been languishing and was able to overcome seemingly insurmountable examiner objections by way of some brilliant manoeuvres. Communication problems with respect to billing and cost-containment are non-existent, too.” A respected figure in the aerospace, life sciences and outdoor recreation sectors, the versatile Joshua Randall is an “exceptional, responsive and thorough attorney and counsellor”, who “relays complex issues in ways that can be easily understood”.
Keller Jolley Preece
Despite its compact size and location outside Silicon Valley, prosecution boutique Keller Jolley Preece attracts repeat custom from many world-leading high-technology companies, which pays testament to its unwavering commitment to quality and consistent delivery. Founders Ryan Keller, Greg Jolley and
IAM Patent 1000 1607
United States: Utah Individuals: litigation
too – qualities that endear him to both research and development teams and the C-suite.
Brett L Foster Dorsey & Whitney LLP Brent P Lorimer Workman Nydegger
Maschoff Brennan See p1616
Mark M Bettilyon Thorpe North & Western LLP Dickson Burton TraskBritt PC Edgar Cataxinos Magleby Cataxinos & Greenwood Larry R Laycock Durham Jones & Pinegar Mark Miller Dorsey & Whitney LLP Samuel C Straight Ray Quinney & Nebeker
Kelly Preece set the pace and bring special attributes to the practice. Demonstrating creative flair, Keller puts in polished performances for multiple Fortune 500s whose domestic and international patent portfolios he manages. Jolley has a deep strategic playbook with options aplenty for established and emerging businesses. Former general counsel Preece has the magic touch when it comes to generating bottom-line growth for companies through astute portfolio management, licensing and litigation means.
Lowenstein Sandler LLP
Lowenstein Sandler situates its dedicated patent prosecution centre in Utah – a facility designed from the ground up to process applications through to successful grant efficiently and cost effectively. Its creation has had a significant impact on the firm’s technology group at large, freeing up top attorneys in New Jersey and Palo Alto to concentrate on what they do best: designing and implementing patent strategies that deliver tangible commercial advantages to clients. Dividing his time between Palo Alto and Utah, Kevin Grange has a dual role as chair of the prosecution centre and a leading strategist. He has an acute appreciation of the detail of the innovations he is tasked with protecting and leveraging, but is a big-picture business thinker,
1608 IAM Patent 1000
One of Utah’s largest IP outfits, Maschoff Brennan enjoys a burgeoning reputation thanks to “good leadership and high-quality work”. Debuting in the IAM Patent 1000 for 2021, John Gadd is considered “one of the brightest minds at the firm”. A perspicacious software patent portfolio manager and developer, he “may be out of the limelight, but is key to the group’s success”. Software is also a forte for Eric Maschoff, whose computer engineering expertise, problem-solving proclivities, commercial acumen and negotiation skill make for strong selling points. With a facility for high-technology and mechanical engineering, Burns Israelsen has impressive range and pitches his advice perfectly for diverse audiences. A discerning pick for domestic and international patent and trademark prosecution, Richard Gilmore is a gifted educator who gives clients the tools to help themselves.
Ray Quinney & Nebeker
Setting standards of legal excellence in Utah for 80-plus years, distinguished commercial ensemble Ray Quinney & Nebeker is held in high regard. This is certainly true in intellectual property, in which its specialised group matches finely honed patent procurement capabilities with contentious potency to provide a fulsome service at highly competitive rates. In lighting business-aligned prosecution pathways, Paul Taylor has proven himself indispensable to in-house counsel. He has forged many longstanding relationships with clients and, thanks to wordof-mouth recommendations for his partnering approach and quality, has grown the group’s practice considerably since his arrival in 2017. Samuel Straight is the person to call when disputes kick off: he knows what to do right away, which calms nerves, and charts a steady course through all phases of a case. Should he need it, he has the support of the firm’s commercial litigators at his back, too.
Stoel Rives LLP
Full-service outfit Stoel Rives has broad IP horizons and is stacked with rigorously trained technical experts (attorneys and patent agents) and courtroom heroes ready to enforce and defend clients’ hardwon rights. Across the contentious/non-contentious divide, the team keeps the focus on creating and protecting revenue-generating assets. Forming the backbone of the team in Salt Lake City, Matthew Bethards, Aaron Barker and Whitney Johnson
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United States: Utah R Whitney Johnson Stoel Rives LLP
Individuals: prosecution Aaron Barker Stoel Rives LLP
Greg Jolley Keller Jolley Preece
Matthew S Bethards Stoel Rives LLP
J Scott Karren Holland & Hart LLP
Justin Cassell Workman Nydegger
Ryan Keller Keller Jolley Preece
Edgar Cataxinos Magleby Cataxinos & Greenwood
Adrian J Lee Workman Nydegger
L Grant Foster Dorsey & Whitney LLP Mike Frodsham Workman Nydegger
Jonathan Lee FisherBroyles LLP See p1612
John Gadd Maschoff Brennan
Bryan Pratt Dorsey & Whitney LLP
Kevin O Grange Lowenstein Sandler LLP
Kelly Preece Keller Jolley Preece
J Jeffrey Gunn TraskBritt PC
Joshua Randall Holland & Hart LLP See p1613
Bryan Hanks FisherBroyles LLP
Marcus Simon Dorsey & Whitney LLP John C Stringham Workman Nydegger
Phil Harris Holland & Hart LLP
See p1617
Paul N Taylor Ray Quinney & Nebeker
Loren Hulse Holland & Hart LLP
Allen C Turner TraskBritt PC
Burns Israelsen Maschoff Brennan Jens C Jenkins Workman Nydegger
Ryan L Marshall Barnes & Thornburg Eric Maschoff Maschoff Brennan
Richard C Gilmore Maschoff Brennan
John M Guynn Workman Nydegger
See p1615
Joseph A Walkowski TraskBritt PC See p1614
Kevin K Johanson Patent Law Works LLP
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IAM Patent 1000 1609
United States: Utah Individuals: transactions
Luminaries
Kevin O Grange Lowenstein Sandler LLP
Rick D Nydegger Workman Nydegger
Timothy Nichols Workman Nydegger John C Stringham Workman Nydegger
See p1617
express this commerciality in their strategy-oriented practices. A touchstone lawyer for medical device, life sciences and chemical concerns, Bethards prosecutes and manages portfolios worldwide, helping clients to accelerate, improve and take better advantage of their IP initiatives. Electrical engineer Barker achieves similar outcomes for his high-technology followers, which he furnishes with valuable additional support on licensing and litigious matters. Johnson, meanwhile, makes light work of software and computer science briefs and coordinates cross-border patent activities with a sure hand.
TraskBritt PC
There’s a rare sophistication to TraskBritt’s patent work and advice, which stems from its attorneys’ seasoning, worldliness, critical thinking and commerciality. Paragons of this approach are Joseph Walkowski, Allen Turner, Jeffrey Gunn and Dickson Burton. Senior counsel Walkowski is without doubt one of the pre-eminent business minds in intellectual property in the state of Utah, as well as one of the best-rounded professionals; benefiting from his blend of in-house and private practice insight and experience in all areas of patent practice, he sees issues from all angles. Another former in-house counsel, Turner is cut from similar cloth and understands the connectedness between the prosecution, litigation and transactional issues that his life sciences clients face. Managing shareholder Gunn also showcases his versatility in counselling diverse technology companies on prosecution, licensing and contentious matters concerning patents and brands. Burton, on the other hand, is a litigator par excellence with a national reputation for superb courtroom advocacy.
Workman Nydegger
As the IAM Patent 1000 rankings make obvious, bench depth is a real USP for Workman Nydegger: it has nine individual representatives in the listings, which is four more than its closest competitor.
1610 IAM Patent 1000
Harnessing this horsepower very effectively, the group prosecutes with unerring accuracy across a rainbow of technologies, shepherds deals of myriad structures over the line and litigates its way to a winning record. Zooming in on the patent procurement side, the firm supports a major multinational technology player, with which it has sustained a longer relationship than any other patent provider that the company engages – a feat which speaks directly to its quality. Taking the lead in filing hundreds of patents for this marquee client – with a superlative registration rate to show for it – are Jens Jenkins and Adrian Lee, both precision drafters and superior global strategists. Workman Nydegger maintains a vibrant university-focused practice, too, at the forefront of which is John Stringham, who also builds portfolios that help start-ups to rocket their way to stardom. Mike Frodsham has a similar knack for positioning companies as market leaders in highly competitive industries. His work for DIRTT Environmental Solutions, which innovates in the architectural space design area, is a good example in this regard: the custom IP approaches he has developed for it have paid dividends in the form of a substantially expanded international portfolio. Other skilled prosecutors include Justin Cassell, Timothy Nichols and John Guynn, each of whom adds to the practice in special ways. Cassell maintains an easy rapport with inventors, taking the time to meet with them and fully explore their innovations in a manner that enhances effective prosecution; he is also an adept litigation strategist. Nichols – who supports Cassell in representing a worldwide leader in orthopaedics – has a rich comprehension of brands and patents and an eye for IP value creation opportunities. A named inventor on several patents, Guynn understands the innovation process from the inside and is a prime pick for medical device and life sciences matters. When litigation flares up, it is Brent Lorimer who rides to the rescue; the many major verdicts and awards he has won for clients attest to his strength. He remains an influential contributor to patent law, policy and education in Utah, in the same way as luminary Rick Nydegger does both locally and nationally; they and their colleagues at the firm give a great deal back to the community. See p1746 for firm profile
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United States: Utah Other recommended experts
Mark Bettilyon earns his keep in the IAM Patent 1000 through his abundant trial nous. He has litigated across the IP spectrum for decades, giving him confidence going into high-exposure battles. He leads the litigation group at Thorpe North & Western. Dually talented in prosecution and litigation and knowledgeable on the subject of Food and Drug Administration regulatory law, Edgar Cataxinos can cover all bases for life sciences entities. He is a founding partner of Magleby Cataxinos Greenwood. Flying the flag of FisherBroyles are Bryan Hanks and Jonathan Lee. They form an excellent pairing that can take on any complex high-technology brief and
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whip any large portfolio into shape. Together with their team, they run a tight ship on prosecution. A master of the electrical arts, Kevin Johanson has obtained cornerstone patents for Fortune 500s and start-ups. More than just a successful filer, he’s an astute international portfolio builder. Patent Law Works is his base of operations. Larry Laycock is the managing shareholder of Dentons Durham Jones & Pinegar’s Lehi, Utah office. Well suited to his leadership role, he has the expertise and gravitas of an elite litigator. At Barnes & Thornburg, Ryan Marshall is a font of analysis on all things patents and an expert in all aspects of chemistry: “His advice is always enlightening.”
IAM Patent 1000 1611
Frodsham, Mike Shareholder – Workman Nydegger mfrodsham@wnlaw.com | www.wnlaw.com
Michael J Frodsham draws on his background in biochemistry and his previous career as a genetic sequence analyst at Myriad Genetics to assist his clients in drafting and prosecuting patents in computer software, architectural, chemical and medical arts, as well as the preparation and prosecution of patent, trademark and copyright applications. Additionally, Mr Frodsham prepares patent opinions, due diligence analyses and competitive guidance. He also assists with litigation support in the United States and internationally for clients ranging from single inventors and medium-size companies to Fortune 500 clients. Recent projects have included multiple complex reissue applications in connection with various inter partes reviews at the USPTO. Mr Frodsham has given frequent lectures on IP topics at local colleges and universities in relation to science, engineering, art and business. He has served as a mentor to multiple entrepreneur groups in various competitions. Now the chair of Workman Nydegger’s business development and lateral recruiting committee, Mr Frodsham has also served multiple terms on the firm’s board of directors, and chaired the firm’s recruiting committee. In his spare time, Mr Frodsham enjoys working with local youth groups, coaching baseball and football, and travelling with his family. With a background in playing viola, he enjoys teaching his kids and playing with them in various local orchestral groups. Mr Frodsham also enjoys snow skiing and hiking in the beautiful Wasatch mountain range.
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Workman Nydegger 60 East South Temple Suite 1000 Salt Lake City UT 84111 United States T +1 801 533 9800 F +1 801 328 1707 See firm profile p1746 Sample client list • 3form LLC • DIRTT Environmental Solutions, Ltd • L3 Harris Inc • Monovo LLC • ObservePoint LLC
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Guynn, John M Shareholder – Workman Nydegger jguynn@wnlaw.com | www.wnlaw.com
John M Guynn has over 25 years of patent law experience, with extensive skills in patent drafting, patent prosecution, post-examination proceedings, patent portfolio analyses, freedom-tooperate opinions and expert witnessing. Mr Guynn has extensive experience and success in conducting in-person examiner interviews to streamline prosecution and obtain desirable client outcomes. Mr Guynn has conducted hundreds of examiner interviews and successfully prosecuted over 1,000 patents in the United States and countries outside the United States, particularly Europe, Eurasia, Canada, Australia, China, Japan, India, Korea, Malaysia, Gulf Cooperation Council and Latin America. Mr Guynn’s clients prize his extensive experience and creativity in formulating patent strategies that create high client value. He has created patent portfolios that have been cumulatively valued at over $1 billion in capital raises, initial public offerings and asset purchases. Mr Guynn has knowledge and expertise in several technical fields, including chemical formulations, materials science, life sciences, biotechnology, medical devices, cannabis and related processes of manufacture and use. Mr Guynn has provided pro bono services mainly in the field of intellectual property, has trained several patent attorneys over the years who have achieved great success and was an adjunct patent law professor. Lastly, Mr Guynn is fascinated with chemistry and has invented several patented technologies in diverse fields such as environmentally friendly blended cements and concrete and topical cannabin pain relief formulations.
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Workman Nydegger Suite 1000 60 East South Temple Salt Lake City UT 84111 United States T +1 801 533 9800 See firm profile p1746
IAM Patent 1000 1613
Jenkins, Jens C Shareholder – Workman Nydegger jjenkins@wnlaw.com | www.wnlaw.com
Jens C Jenkins has over 20 years in experience and a deep understanding of patent drafting, patent prosecution and postexamination proceedings. Mr Jenkins’s practice also includes client counselling, portfolio analysis, opinions and licensing. Mr Jenkins’s practice is particularly tailored to include in-person examiner interviews at the US Patent and Trademark Office. Having conducted over 1,000 examiner interviews, Mr Jenkins is one of the most experienced attorneys in the country with such a practice. This has helped Mr Jenkins obtain patents of increased value for a variety of clients and covering a broad range of technologies, including computer software, computer hardware, business methods, games, complex mechanical systems, military products, survival products and medical device technologies. Mr Jenkins has been an adjunct law professor for many years, teaching classes directed to practical patent drafting and prosecution. He has also served many years in an ongoing collaboration with the US Patent and Trademark Office. In this capacity, Mr Jenkins helps provide instructions and activities that are directed at informing new examiners about practitioner perspectives that can be utilised to promote efficient and compact prosecution. Mr Jenkins also spends significant time on pro bono activities that promote diversity in intellectual property, such as the Foundation for Advancement of Diversity in IP Law, in which he is a current trustee and member of the mentoring committee, and the HNBA/VIA Intellectual Property Law Institute programme, in which he has served as a mentor and instructor for many years.
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Workman Nydegger Suite 1000 60 East South Temple Salt Lake City UT 84111 United States T +1 801 533 9800 F +1 801 328 1707 See firm profile p1746 Sample client list • Microsoft Corporation
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Lee, Adrian J Attorney – Workman Nydegger alee@wnlaw.com | www.wnlaw.com
As a seasoned attorney, Adrian J Lee puts his legal experience to work for clients as both a patent prosecutor and litigator. He has practised law in two technological hotbeds – Silicon Valley and Salt Lake City. He holds advanced degrees in electrical engineering, mechanical engineering and business. He also speaks, reads and writes Japanese, allowing him to effectively counsel top tech companies in both the United States and Japan. Mr Lee’s wide-ranging technical proficiency and education enable him to effectively and prolifically draft and prosecute patent applications in the fields of machine learning, computer software, networks, communications, optics, electronics, semiconductors and mechanical devices, and systems that involve combinations thereof. Having practised IP law for a quarter of a century, Mr Lee has now been involved with the drafting and prosecution of over 1,000 US patent applications and countless international and foreign patent applications. He is also highly active in the training and mentoring of younger attorneys and enjoys their every success. Mr Lee also assists the firm’s largest clients with strategic patent planning and has served as lead counsel for complex IP litigation. But he also takes pleasure in collaborating with and counselling mid-sized and smaller companies and independent inventors, each with their unique needs.
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Workman Nydegger Suite 1000 60 East South Temple Salt Lake City UT 84111 United States T +1 801 533 9800 See firm profile p1746
IAM Patent 1000 1615
Lorimer, Brent P Partner – Workman Nydegger blorimer@wnlaw.com | www.wnlaw.com
Brent P Lorimer’s wide-ranging technical and litigation experience contributes to his success in IP and complex commercial litigation. His practice focuses on patent, trademark, copyright, licensing and trade secret litigation and related counselling. He has led litigation teams in a wide variety of technologies, including radar-based ‘dilemma zone’ systems, automatic lane allocation, measurement of volume, occupancy and other traffic patterns, embolic microspheres for use in treatment of uterine fibroids and other benign and malignant tumours, nano fibres used in stents and other devices, devices and methods for thrombo-embolectomy, devices and methods for angiography, haemostasis methods using devices employing chitosan, endoluminal graft and stent design and placement, blood pressure transducers, acute and chronic dialysis catheters, e-commerce, dental bleaching compositions, GPS technology, thin film optics, exercise equipment, nutritional supplements and industrial wastewater treatment. Mr Lorimer has obtained eight-figure awards and settlements for his clients in patent litigation, as well as directing the successful defence of claims against his clients. He has also represented clients before the Patent Trial and Appeal Board in inter partes reviews and other postgrant proceedings, mediation and arbitration matters and inter partes proceedings before the European Patent Office. Mr Lorimer also has an active trademark/unfair competition practice, representing both plaintiffs and defendants across the country and has represented clients in high-stakes commercial litigation in a wide variety of legal disputes. When he is not practising law, Mr Lorimer loves spending time with his beautiful wife, children and grandchildren. He has spent most of his adult life leading and counselling teenagers and young adults, trying to help them navigate the difficult decisions confronting young people today. On the weekends, Mr Lorimer is a part-time cowboy, gathering and branding cows and providing comic relief for the real cowboys.
1616 IAM Patent 1000
Workman Nydegger Suite 1000 60 East South Temple Salt Lake City UT 84111 United States T +1 801 533 9800 F +1 801 328 1707 See firm profile p1746 Sample client list • Merit Medical Systems Inc • Wavetronix LLC
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Stringham, John C Shareholder – Workman Nydegger jstringham@wnlaw.com | www.wnlaw.com
John C Stringham is registered to practise before the US Patent and Trademark Office and is admitted to the US Supreme Court, the Federal Circuit Court of Appeals and the Utah Supreme Court. His practice includes all facets of IP law with an emphasis on the preparation and prosecution of patent, trademark and copyright applications in the United States and foreign countries. Mr Stringham also engages in the preparation of licensing, publishing and other agreements related to intellectual property, as well as opinions regarding clearance, infringement and validity of patents, trademarks and copyright. He further has extensive experience in due diligence investigations. Mr Stringham also engages in inter partes proceedings before the US Patent and Trademark Office. Mr Stringham served as chair of the IP Section of the Utah State Bar Association in 1999-2000 and as vice chair the year before. He also served on the Executive Committee of the Copyright Law Section and as chair of the Copyright Transactional Issues Subcommittee for the American Intellectual Property Law Association. Mr Stringham is a trained mediator and serves as a court-appointed mediator for the US District Court for the District of Utah in intellectual property. He has served as an adjunct professor at the J Reuben Clark Law School at Brigham Young University, teaching courses in IP law. He has been a featured speaker at many legal conferences and seminars and has served numerous terms on his firm’s board of directors. Mr Stringham’s extensive experience has involved a number of technologies including computer software/Internet, e-commerce, business methods, robotics, medical device and biomedical technologies, as well as general mechanical systems. Mr Stringham has worked with multiple companies, from start-up through billiondollar valuations and initial public offerings. Mr Stringham has also served on many community and charitable boards. He has served as an adult leader in Youth Making a Difference, Operation Nishtha, which provides humanitarian assistance and education in India to help promote underprivileged education with a special emphasis on educating women.
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Workman Nydegger Suite 1000 60 East South Temple Salt Lake City UT 84111 United States T +1 801 533 9800 See firm profile p1746
IAM Patent 1000 1617
United States: Washington
BakerHostetler
BakerHostetler is a go-to for patent and technology work in Seattle, thanks in large measure to the local leadership of Timothy Casey, an extremely well-rounded prosecutor, strategic counsellor and transactional lawyer: “Tim turns heads with his thorough understanding of complex problems and his pragmatic approach to resolving them. He is a top guy in the technology and software space, and someone you want on your side when Section 101 issues crop up.” As a former in-house counsel, he understands the business of intellectual property and focuses on creating IP value in managing extensive worldwide portfolios for the likes of Avigilon Corporation in the area of AI-powered security solutions and Trilumina Corporation with respect to vertical cavity surface emitting laser technology. Michael Swope is another magnet for high-level prosecution and licensing instructions, as well as litigation, and the representative of choice for several Asia-based innovators and a leading US cloud platform. Both practitioners uphold the firm’s reputation for excellence in all areas of patent practice and are pivotal to the success of a nationwide group of some 130 IP lawyers.
Christensen O’Connor Johnson Kindness PLLC
Mention Christensen O’Connor Johnson Kindness (COJK) to innovators in the Seattle area and beyond and you’ll be met by an outpouring of praise. In the words of one source: “I can call the firm at any moment and get valuable feedback on prosecution status and meaningful strategic insight on international filing, freedom to operate and patentability issues. The team produces work of a very high standard and does so cost effectively.” Another reports: “It has customised its workflow process to suit us and bent over backwards to ensure matters are transacted smoothly. Comparing it with other US outfits, it offers a higher-quality, more efficient and customer-friendly service.” Comments directed towards COJK’s leading individuals are also glowing. Head of the patent group David Sheldon is a “wonderful, incredibly responsive, intellectually astute and thorough lawyer, who doesn’t tell clients what they want to hear, but – in a measured way – what they need to hear”. He focuses on computer science, which is also the forte of Adrian Mihailovic – a prosecutor who “writes clean, novel and non-obvious claims without legalese, advocates well at the USPTO, files strategically, demonstrates superb interpersonal skills alongside technical expertise, understands how
1618 IAM Patent 1000
patents fit into the wider business picture and charges an extremely reasonable price”. Moving to the life sciences, industry group head George Renzoni and Rhys Lawson “provide a tailored service that optimises the value of patents”, and are “extremely helpful in partnering with clients to identify budget-sensitive approaches to both day-to-day activities and larger projects and initiatives”. Melissa Nowak, meanwhile, is cited as a “highly pragmatic counsellor who achieves consistently great things”. When it comes to litigation, John Denkenberger and Brian McMahon “cannot perform better in terms of their representation, dedication, availability, quick turnaround, attention to detail and business sensitivity”. The COJK depth chart is impressive: Jerald Nagae and Brandon Stallman are also warmly recommended and are key contributors on both the contentious and noncontentious fronts. Nagae supervises prosecution, litigation and licensing efforts with a deft touch and is a vital member of a team that manages the worldwide patent and trademark portfolios for JBT Corporation; while Stallman makes light work of prosecution briefs and is a polished performer in post-grant, litigation and transactional settings.
Cooley LLP
Seattle lawyers Bill Christiansen and Carol Laherty deploy special weapons and tactics to deliver IP and business advantages to life sciences innovators. Both leverage deep technical and industry knowledge along with refined prosecution, strategic counselling, portfolio management and transactional skillsets to get patrons maximum commercial returns on their IP investments. They have at their back a sophisticated global group that is supremely well equipped for any contentious or non-contentious matter. Christiansen leverages this adroitly in his worldwide portfolio development work for Frequency Therapeutics and Revolution Medicines – two companies that he supports alongside Boston-based Dean Farmer.
Dorsey & Whitney LLP
Recognised for its prosecution and litigation proficiency in the IAM Patent 1000 Washington rankings for 2021, Dorsey & Whitney covers a lot of ground for its high-tech following. Pacing the group in the prosecution and portfolio management domain, Kimton Eng performs flawlessly for prestigious patrons such as Micron, for which the firm has served as patent counsel for more than two decades, securing it some 3,000-plus US patents. Eng brings outstanding technical know-how to the table, but is
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United States: Washington Individuals: litigation Ramsey M Al-Salam Perkins Coie LLP Parker C Folse III Susman Godfrey LLP Jerry A Riedinger Perkins Coie LLP David K Tellekson Fenwick & West LLP William F Abrams Schwabe Williamson & Wyatt Matthew R Berry Susman Godfrey LLP John D Denkenberger Christensen O’Connor Johnson Kindness PLLC Geoffrey Godfrey Dorsey & Whitney LLP Lawrence Graham Lowe Graham Jones Andres Healy Susman Godfrey LLP
also a big-picture thinker with a rare aptitude for longrange strategic IP planning. Anchoring the contentious practice, meanwhile, are Geoffrey Godfrey – cochair of the firmwide IP litigation group – and Paul Meiklejohn. Coming in for special praise, Godfrey is “particularly skilled as a defence counsel – he sizes up matters quickly, identifies his strongest positions and capitalises on them with great efficiency”. A rising star of the market, he recently represented Verizon Communications and affiliates in several key cases. Veteran lead counsel Meiklejohn has a deep playbook to address all issues that might crop up in a major multi-layered dispute.
Fenwick & West LLP
Respected globally as an elite technology firm, Fenwick & West supports innovative companies in many meaningful ways. Life sciences entities particularly cherish it for the sterling representation it affords in mission-critical disputes; for this, they look to Seattle-based practitioners Melanie Mayer
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Melanie L Mayer Fenwick & West LLP Ryan J McBrayer Perkins Coie LLP Christina McCullough Perkins Coie LLP Brian McMahon Christensen O’Connor Johnson Kindness PLLC Paul T Meiklejohn Dorsey & Whitney LLP Carol Pitzel Cruz Knobbe Martens Douglas Stewart Bracewell LLP Michael Swope BakerHostetle Genevieve Wallace Susman Godfrey LLP Mark P Walters Lowe Graham Jones
and David Tellekson, two seasoned advocates with superlative leadership skills. Molecular biology and genetics PhD Mayer co-chairs the life sciences industry group and has built a striking record of success on solid foundations of technical expertise and presentation ability. Collaborating with her New York colleagues Adam Gahtan and Kevin McGann, she is currently representing Quest Diagnostics Investments in District of Delaware litigation against Laboratory Corporation of America Holdings (LabCorp), which Quest alleges has infringed its patents relating to vitamin D and testosterone tests using mass spectrometry; in the course of this, she successfully defeated a motion that the patents were invalid under Section 101, and had Quest’s proposed claim constructions accepted and LabCorp’s argument of patent invalidity through indefiniteness rejected. Mayer and Tellekson, meanwhile, have been linking up on behalf of a university client, representing it in interference proceedings, licensing disputes and other matters. Both lawyers showcase their range and winningly tackle disputes in other technology areas, such is the depth of their trial nous.
IAM Patent 1000 1619
United States: Washington Han Santos PLLC
Han Santos is distinguished by the maturity of its patent practice: the individuals on its bench have impressive technical credentials as well as business and industry insight, enabling them to communicate on a one-to-one level with inventors and the C-suite. This is reflected in optimal prosecution and transactional outcomes and greater efficiency of service. The senior team takes its cue from managing partner Patrick Santos, who co-founded the ensemble in 2013. His CV includes extensive software engineering experience, a stint as a USPTO examiner and a leadership role in the IP counselling practice of a national law firm; the multi-dimensional view of patents and the innovation process that this has given him informs his dynamic transactions and strategyfocused practice. Taking the lead on prosecution, Elliott Chen is an excellent team manager, client service guy, draftsman and commercial thinker who acts for several Fortune 500s in the software, telecommunications and aerospace areas. Chen debuts in the IAM Patent 1000 this year – as does the firm itself. See p1690 for firm profile
Kilpatrick Townsend & Stockton LLP
Kilpatrick Townsend’s Seattle-based lawyers are the preferred counsel for several blue-chip companies: together, Roger Wylie and Jesse Bennett support a world-leading technology player on multiple projects, including some of its most sensitive, which often involve innovation in the field of artificial intelligence. Further demonstrating his utility, Wylie also prosecutes, conducts due diligence, advises on litigation and issues opinions for the innovation arm of a Fortune 100 company which is seeking to disrupt the retail industry with new technologies. As managing partner, Wylie sets the standard on the prosecution and counselling side, for which Kilpatrick Townsend is internationally renowned. Bennett is an up-and-comer who is turning heads for his ability to align prosecution strategy with broader business objectives. Equal dexterity is on display in the life sciences team – home to Andrew Serafini, an immunology PhD with a splendid reputation for his scientific fluency, global connectivity, business acumen and civic engagement.
Knobbe Martens
Large boutique Knobbe Martens fits the bill perfectly for companies in need of sophisticated and comprehensive IP counsel. The firm’s lawyers are tuned into market trends and developments, and demonstrate exceptional percipience on issues
1620 IAM Patent 1000
Individuals: prosecution Highly recommended Frank Abramonte Cozen O’Connor Maria Anderson Knobbe Martens Stephen C Bishop Perkins Coie LLP Bill Christiansen Cooley LLP Christopher Daley-Watson Perkins Coie LLP Kimton Eng Dorsey & Whitney LLP Bart Eppenauer Shook Hardy & Bacon LLP Larry Harris Athorus PLLC Chun M Ng Perkins Coie LLP Melissa A Nowak Christensen O’Connor Johnson Kindness PLLC Paul T Parker Perkins Coie LLP George Renzoni Christensen O’Connor Johnson Kindness PLLC Andrew T Serafini Kilpatrick Townsend & Stockton LLP Mauricio Uribe Knobbe Martens Jim White VLP Law Group LLP Roger Wylie Kilpatrick Townsend & Stockton LLP
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United States: Washington Jerald E Nagae Christensen O’Connor Johnson Kindness PLLC
Recommended Richard Allen Lee & Hayes, PC
See p1626
Margie Aoki Polsinelli PC Jesse S Bennett Kilpatrick Townsend & Stockton LLP
See p1631
Rob Peck Lee & Hayes, PC
See p1632
Emily C Peyser Polsinelli PC
Timothy D Casey BakerHostetle Elliott Chen Han Santos PLLC
Brett Nelson Lee & Hayes, PC
Maurice Pirio Perkins Coie LLP See p1627
John D Denkenberger Christensen O’Connor Johnson Kindness PLLC
Aaron Poledna Perkins Coie LLP Brooke W Quist Seed Intellectual Property Law Group LLP
David Divine Lee & Hayes, PC
See p1628
Rob Hartman Lee & Hayes, PC
Michael Rosato Wilson Sonsini Goodrich & Rosati
See p1629
Stephen J Rosenman Seed Intellectual Property Law Group LLP
Melissa Harwood Polsinelli PC Karl R Hermanns Seed Intellectual Property Law Group LLP Bea Koempel-Thomas Lee & Hayes, PC
See p1630
Carol Laherty Cooley LLP Steven Lawrenz Seed Intellectual Property Law Group LLP Rhys Lawson Christensen O’Connor Johnson Kindness PLLC Shoko I Leek Seed Intellectual Property Law Group LLP Adrian Mihailovic Christensen O’Connor Johnson Kindness PLLC Kevan L Morgan Seed Intellectual Property Law Group LLP
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Jeffrey M Sakoi Seed Intellectual Property Law Group LLP Melanie Seelig Knobbe Martens David Sheldon Christensen O’Connor Johnson Kindness PLLC Brandon C Stallman Christensen O’Connor Johnson Kindness PLLC Michael Swope BakerHostetle Samuel E Webb Seed Intellectual Property Law Group LLP John M Wechkin Perkins Coie LLP C Rachal Winger Lee & Hayes, PC
See p1634
IAM Patent 1000 1621
United States: Washington Individuals: transactions Maria Anderson Knobbe Martens Stephen C Bishop Perkins Coie LLP Neil P Calvin The Law Offices of Neil P Calvin PLLC David V Carlson Seed Intellectual Property Law Group LLP Timothy D Casey BakerHostetle Bill Christiansen Cooley LLP Christopher Daley-Watson Perkins Coie LLP John D Denkenberger Christensen O’Connor Johnson Kindness PLLC
such as standard essentiality and patentability under Section 101. This is true of Mauricio Uribe and Maria Anderson, two eminent strategists whose work in the computer science and software domains is always hugely impactful for clients. Uribe complements his pure-play prosecution skills with a deft licensing touch; while Anderson has a finely cultivated understanding of patents and brands. High-technology players also have an essential ally in Melanie Seelig, another professional who reads patent and innovation landscapes with unerring accuracy. The Seattle office is also a vital touchpoint for Knobbe’s life sciences patrons, which call on thorough and diligent litigator Carol Pitzel Cruz when complex patent infringement problems requires decisive answers.
Lee & Hayes, PC
Supremely capable across virtually all technologies and industry sectors, Lee & Hayes has crafted a uniquely strategic approach to patenting and portfolio development that sets it apart not just in the Pacific Northwest, but nationally and further afield. Garnering special references this year are Rachal Winger and Brett Nelson, who anchor the life sciences and chemical practices respectively. “Rachal’s patent applications are outstanding and
1622 IAM Patent 1000
Bart Eppenauer Shook Hardy & Bacon LLP Larry Harris Athorus PLLC Jerald E Nagae Christensen O’Connor Johnson Kindness PLLC Paul T Parker Perkins Coie LLP Patrick Santos Han Santos PLLC
See p1633
Michael Swope BakerHostetle Mauricio Uribe Knobbe Martens Greg Wrenn Pragmatica Law LLP
she prosecutes them efficiently and thoughtfully. She asks the right questions to fully capture the nuances of an invention and, beyond that, is just a wonderful person to work with.” “Knowledgeable, humble and an excellent leader with great vision, Brett sees far past clients’ basic legal needs and adds value by strategically defining future IP targets.” Mechanical and electro-mechanical technologies ace Richard Allen is also showered with praise: “He works diligently to get jobs done in a timely manner and finds ways to save money while getting powerful patents issued at home and abroad. He is exceptionally responsive and has a phenomenal eye for detail.” Lee & Hayes also has a constellation of high-technology sages deserving of the spotlight, including Rob Hartman, Rob Peck, David Divine and Bea Koempel-Thomas. Hartman is appreciated for his commerciality; Peck for his tailored, creative approaches; Divine for his USPTO insight and perfect balance of economy and quality; and Koempel Thomas for her expansive global know-how. See p1700 for firm profile
Lowe Graham Jones
Seattle boutique Lowe Graham Jones marries efficiency and quality to great effect. In exhibiting the former trait, it capitalises on the advanced technical learning of its team – which negates the need for companies to spend time bringing lawyers up to
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United States: Washington speed – as well as smart staffing of the most suitable practitioners according to the nature and significance of each matter. The quality on offer, meanwhile, stems from the proficiency, passion and collaborative approach of the group, as well as the leadership given by Lawrence Graham and Mark Walters – two assured litigators who can be entrusted with any important IP trial or appeal.
Perkins Coie LLP
Outstanding in terms of technical bench strength, Perkins Coie is chock-full of highly trained patent attorneys and agents – many with valuable industry insight (both scientific and legal) – who come together to dispense holistic counsel on patent procurement, asset management and portfolio development. Several of its Seattle-based attorneys play pivotal roles within the richly resourced national group, such as Aaron Poledna, who captains the prosecution department with aplomb. “Aaron is a patent all-star who can quickly learn new technologies and distil complex ideas into easy-to-understand concepts; he has an excellent feel for business, too. He is service oriented and provides enormous value at the strategic level.” Also exceptional in this regard are Stephen Bishop, Paul Parker, Maurice Pirio and Christopher Daley-Watson, who put Perkins Coie at the cutting edge of key innovation fields – Bishop in software and internet technology; Parker in medical devices; Pirio in blockchain and machine learning; and DaleyWatson in 5G. Another stalwart of the practice is John Wechkin, who, like his colleagues, avails fully of the firm’s state-of-the-art, technology-focused solutions and patent analytics tools to manage and enhance valuable portfolios worldwide. Perkins Coie also deserves its reputation as a contentious powerhouse – one which Ramsey Al-Salam and Jerry Riedinger, who represent half of the IAM Patent 1000 Washington gold tier for litigation, have done a great deal to sustain. Recent highlights include securing summary judgment of non-infringement in an action filed by Genuine Enabling Technology (GET) against client Nintendo, alleging infringement of GET’s patent by Nintendo’s videogame console controllers; Riedinger masterminded this one, drawing on support from colleagues locally and in the Madison, Wisconsin office. Other litigators to keep on the radar include Ryan McBrayer and Christina McCullough, who are both entering the prime of their advocacy careers. McBrayer is trusted when the chips are down and recently represented HTC Corporation in an 11-patent, high-exposure case initiated by Philips regarding smartphone functionality patents; collaborating with partners in San Diego and Shanghai, he benefited
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Firms: prosecution Christensen O’Connor Johnson Kindness PLLC Kilpatrick Townsend & Stockton LLP Perkins Coie LLP Seed Intellectual Property Law Group LLP Cooley LLP Knobbe Martens Lee & Hayes, PC
See p1700
BakerHostetler Dorsey & Whitney LLP Han Santos PLLC
See p1690
Polsinelli PC Shook Hardy & Bacon LLP
immensely from Perkins Coie’s all-hands-on-deck culture, deep bench and international reach. Admired by hiring partners at competitor firms, McCullough’s contributions are great and many in district court cases and inter partes reviews. The star turn on the post-grant side is Chun Ng, whose blended prosecution and litigation skillset lends itself well to PTAB actions and associated appeals.
Polsinelli PC
Each of Polsinelli’s Washington representatives in the IAM Patent 1000 comes enthusiastically endorsed by the market. In her electrical, mechanical and chemical-focused full patent lifecycle management and counselling practice, Emily Peyser makes astute use of her “quick thinking, strategic mind and keen technical expertise”. She also has a “warm, friendly and inviting personality”, which “puts clients at ease and helps foster collaborative thinking”. Furthermore, “she is creative in overcoming potential roadblocks and completes her work in a thorough but timely fashion”. Former mechanical systems engineer Margie Aoki plies her trade as a clearance, prosecution and licensing professional in a diverse range of sectors, including medical devices, heavy machinery and aerospace. “Margie is a team player who earns the trust of engineers through her detailed understanding
IAM Patent 1000 1623
United States: Washington Firms: litigation
Firms: transactions
Perkins Coie LLP
Christensen O’Connor Johnson Kindness PLLC
Susman Godfrey LLP
Han Santos PLLC
Christensen O’Connor Johnson Kindness PLLC
Knobbe Martens
Fenwick & West LLP
Perkins Coie LLP
Knobbe Martens
Seed Intellectual Property Law Group LLP
Dorsey & Whitney LLP
Shook Hardy & Bacon LLP
Lowe Graham Jones
of their innovations and diligence in protecting them. She understands clients’ risk profiles and longterm strategic goals.” Life sciences maven Melissa Harwood is a “highly experienced patent prosecutor with a first-rate technical background who can be counted on for excellent results”. All recent arrivals at Polsinelli, they are building something special in Seattle and are vital to the success of the firm’s regional expansion.
Seed Intellectual Property Law Group LLP
Abundant in technical talent, Seed IP is a discerning choice for innovative companies in all industries and disciplines seeking the best in domestic and international patent prosecution and strategic counselling. With bespoke teams configured in agile fashion to suit the demands of each matter, the ensemble’s internal culture of collaboration enhances connectivity with clients, creating the ideal conditions for an efficient service that directly addresses companies’ needs. On the life sciences front, the seniority and industry knowledge of specialists including Karl Hermanns, Stephen Rosenman and Samuel Webb confer a major advantage. Hermanns is in it for the science and the business, and gets a kick out of establishing strong patent foundations for early-stage companies and surveying competitive landscapes. Rosenman previously worked in a start-up environment, giving him a firsthand understanding of the challenges facing newly established businesses. With a stint in-house at a pharmaceutical company on his CV, Webb speaks the language of clients fluently. In the high-technology domain, there are also quality options aplenty. In software, Steven Lawrenz and Kevan Morgan both demonstrate a flair for high-level portfolio and
1624 IAM Patent 1000
See p1690
transactional briefs. So too do David Carlson – who chairs the electrical engineering and computer science group – and Brooke Quist, though their remit also extends to litigation. Versatility sets Shoko Leek apart: she is a staunch patent and trademark protector with followers in industries ranging from electronics to communications, software and medical devices. Jeffrey Sakoi is also hard to pigeonhole, but has an affinity for chemical matters, having been a patent attorney at a major chemical company.
Shook Hardy & Bacon LLP
Shook Hardy & Bacon takes a rigorously strategic and commercial approach to the practice of patent law. A major part in instilling this is played by Bart Eppenauer, a partner of high renown thanks to past achievements at Microsoft and consistent counselling and transactional excellence in private practice. He is revered as a thought leader on patent law and policy and Section 101 issues.
Susman Godfrey LLP
A premier litigation firm celebrated for its trial prowess, Susman Godfrey has secured more than $1 billion for clients in IP jury verdicts and settlements in the past three years alone.A lot is made of the firm’s non-hierarchical structure, lean staffing and fee model flexibility, which are all important ingredients in its success, but most fundamental is the calibre of the lawyers on deck. Speaking of Matthew Berry, for example, one source says: “I have been in intellectual property for decades – over 60 years – and dealt with many lawyers, and Matt is surely one of the best. He’s formidable and has surrounded himself with talent, smartly recognising that, in patent litigation no lawyer does it alone.” He makes his debut in the listings this year alongside Andres Healy, with whom he currently serves as co-lead counsel for Ethanol Boosting Systems and Massachusetts Institute of Technology in
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United States: Washington a Delaware suit asserting infringement of four patents by Ford engines. Healy also garners loud applause as a “master of patent law and a brilliant litigator who knows how to craft concise, winning arguments”. “Running them in a calm and consistent fashion, Andres gets trial teams functioning at the highest professional level, all under the pressure of tight schedules and high stakes. As his client, you always know where your case stands – and you don’t need to ask, because of his proactive style of communication. He has a strong desire to win and sets extremely high standards for himself and his team, but also has a down-to-earth manner.” Already at the elite level, Berry, Healy and Genevieve Wallace still have a huge amount of headroom and look set to dominate for decades to come. In this way, they are following in the footsteps of Parker Folse, who founded Susman Godfrey’s Seattle office in the mid-1990s. Folse is an inspirational leader and consummate trial lawyer who has been pivotal to many of Intellectual Ventures’ successes over the past decade.
Other recommended experts
Frank Abramonte co-chairs Cozen O’Connor’s prosecution practice and leads the way in the patenting of electrical, software and medical device technologies. Equally adept at licensing and litigation, he provides impeccably well-rounded counsel. William Abrams is a seasoned trial and appellate lawyer who has successfully quarterbacked many notable litigation campaigns. This has given him an acute understanding of IP risk, which he parlays into
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a superb counselling practice. He is a shareholder at Schwabe Williamson & Wyatt. In the Seattle area, there are plenty of impressive former in-house counsel in private practice, but – alongside one or two others – Neil Calvin stands out, having served as director of patent licensing at Microsoft. Focused on licensing and other patent and technology transactions, he runs his own self-titled law office. For a global perspective on patent procurement, portfolio development and monetisation, former Amazon. com associate general counsel Larry Harris is the essential choice. Highly knowledgeable regarding all the latest PTAB developments and a poised lead counsel in post-grant proceedings, Michael Rosato of Wilson Sonsini is the person to call if you want to get up to speed on things or have a difficult case. As a registered patent attorney and seasoned advocate, Bracewell’s Douglas Stewart always delivers, but has enjoyed particular success in complex litigation in all forums. Jim White of VLP Law Group is an authority on domestic and international patenting in the computer science space. A go-to for many prestigious global companies as they procure, manage and monetise rights, he’s at the leading edge of his field and a standard setter in terms of patent quality. Greg Wrenn is one of the foremost software experts in the United States. He draws on incredibly rich inhouse experience to play the role of outside general counsel for many dynamic technology companies. He can be found at Pragmatica Law, a boutique that takes ownership of clients’ matters in a uniquely meaningful way.
IAM Patent 1000 1625
Allen, Richard Partner – Lee & Hayes, PC richarda@leehayes.com | www.leehayes.com
Richard Allen is a partner in the patent practice group in Lee & Hayes’s Spokane, Washington office. He practises patent law with a focus on mechanical and electro-mechanical technologies. His extensive experience covers a diverse range of industries, including manufacturing, electronic and textile consumer goods, medical, agricultural, aeronautical, automotive and green technology. Within these technologies, Mr Allen provides a variety of services to assist clients as they pursue business interests. These services include preliminary concept searching; drafting and prosecution of patent applications, both domestic and foreign; and opinion and evaluation of existing patents, ideas and products for the purpose of determining invalidity, infringement, patentability, and freedom to operate. Mr Allen carefully strives to understand the needs and desires of clients to provide the best value and the best quality work, whether the client is a large corporation, a start-up or a solo inventor. Mr Allen works directly with clients to create a strategy-driven patent portfolio so as to position the client with the greatest chance for success. Mr Allen is licensed to practise in the Commonwealth of Virginia, the State of Washington and before the USPTO.
Lee & Hayes, PC 601 West Riverside Suite 1400 Spokane WA 99201 United States T +1 509 944 4653 See firm profile p1700
1626 IAM Patent 1000
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Chen, Elliott Partner – Han Santos PLLC elliott@hansantos.com | hansantos.com
Elliott Chen is the partner in charge of Han Santos’ patent preparation and prosecution practice. He has extensive experience in both patent drafting and counselling on IP conflicts for several international software, telecommunications and aerospace companies in the Northwest. Mr Chen’s patent procurement experience and professional background are rich in both diversity and technicality, with a client portfolio spanning multiple technologies, including mechanical devices and chemical processes. He is also an expert in design patents and provided counsel for a telecommunications company’s response to the Apple v Google litigation. Mr Chen specialises in patent conflict matters. This includes offensive and defensive patent portfolio reviews, opinion letters and due diligence analysis. He also counsels clients on IP licensing and acquisition matters. Over the course of his career, Mr Chen successfully prepared and prosecuted over 450 US and foreign patent applications for major Fortune 500 companies. Prior to joining the team, he spent seven years at a national IP law firm. Before transitioning his career to IP law, Mr Chen conducted research at the University of Washington. He performed laboratory research and data analysis for the Department of Microbiology and the Department of Environmental Health for three years. His work resulted in several articles published in Toxicology Letters and the Journal of Toxicology and Environmental Health. Mr Chen’s passion for data integrity and analysis helps ensure not only a high degree of success in filing patents, but also that his clients are covered on all bases, start to finish.
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Han Santos PLLC 500 Union Street Suite 800 Seattle WA 98101 United States T +1 425 786 9734 See firm profile p1690 Professional associations • AIPLA • IEEE • WSPLA
IAM Patent 1000 1627
Divine, David Partner – Lee & Hayes, PC daved@leehayes.com | www.leehayes.com
David Divine focuses on developing comprehensive IP strategies that give companies a competitive advantage in the marketplace. He assists his clients in building global portfolios tailored to their business objectives. In the course of his career, Mr Divine has developed expertise in a wide variety of technologies, including automotive, consumer electronics, holographic displays, computer software and hardware, e-commerce, medical devices, smart grid and other clean energy technologies, and telecommunications technologies. Mr Divine’s practice includes preparation and prosecution of both utility and design patent applications. This range of experience gives him a breadth of understanding to draw from when approaching unique situations. Mr Divine is very familiar with the nuances of prosecuting patent applications through the US Patent and Trademark Office, having served as a patent examiner prior to joining Lee & Hayes. The insight gained from working as a patent examiner has allowed Mr Divine to more efficiently prosecute applications through the patent office, minimising costs to his clients.
Lee & Hayes, PC 601 West Riverside Avenue Suite 1400 Spokane WA 99201 United States T +1 509 944 4733 See firm profile p1700
1628 IAM Patent 1000
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Hartman, Rob Partner – Lee & Hayes, PC rob@leehayes.com | www.leehayes.com
Rob Hartman is a partner in Lee & Hayes’s Spokane office, where he focuses on developing and managing IP portfolios according to each client’s unique strategies and market positions. In addition to developing and managing portfolios, Mr Hartman assists clients in crafting strategies for achieving their business objectives with use of their IP assets. Mr Hartman has extensive experience interfacing and strategising across different groups within a client, such as legal counsel, engineers, accounting departments, marketing departments and the like. With this experience, Mr Hartman is able to understand each group’s needs and utilise the client’s IP assets to meet these needs. Mr Hartman is proficient in a wide array of technologies, including computer software, hardware, and architecture, consumer electronics, e-commerce technologies, networking software and hardware, cryptography, semiconductor fabrication, telecommunications, electromechanical devices, optics, financial products, business methods and internet-related technologies. He uses his experience with these technologies to meet his client’s IP needs.
Lee & Hayes, PC 601 West Riverside Avenue Suite 1400 Spokane WA 99201 United States T +1 509 944 4765 See firm profile p1700
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IAM Patent 1000 1629
Koempel-Thomas, Bea Partner – Lee & Hayes, PC bea@leehayes.com | www.leehayes.com
Bea Koempel-Thomas’s practice is devoted to advising on and assisting US-based and international clients with IP issues, including preparation and review of inventor agreements, drafting of US and PCT patent applications, prosecution of patent applications in the United States and managing international patent portfolios – all with an eye to enhancing the business value of each client’s IP assets. She speaks regularly on IP topics, including US activities shaping the international patent landscape, drafting patents for computerimplemented inventions with a focus on successful prosecution in the United States, China, Japan, Canada and before the European Patent Office, patentable subject matter, patent quality in the United States, international protection of intellectual property, and foreign filing licence and inventor remuneration requirements. Ms Koempel-Thomas applies her knowledge of US and global patent policy and procedures to meaningfully advance her clients’ interests in the areas of information security, artificial intelligence – including machine learning, machine vision and data mining – and related computer technologies, as well as business methods, financial technology and energy management solutions.
Lee & Hayes, PC 601 West Riverside Avenue Suite 1400 Spokane WA 99201 United States T +1 509 944 4759 See firm profile p1700
1630 IAM Patent 1000
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Nelson, Brett Partner – Lee & Hayes, PC brettn@leehayes.com | www.leehayes.com
Brett Nelson is a partner in Lee & Hayes’ Spokane office and is active in driving the firm’s growth. He has been instrumental in building the firm’s chemical and life sciences group, as well as its Asia practice, and is often invited to speak on IP topics in the United States and China. Mr Nelson helps clients – from start-ups to large corporations – develop comprehensive IP strategies and advises on a variety of IP matters, with particular experience in the areas of chemical engineering, microbial engineering, vaccine technology, green technology and cosmetics. Mr Nelson has earned a reputation as the go-to person for shepherding difficult patent applications through the US Patent Office and has been instrumental in a number of his clients gaining allowance of key foundational patents within their technology areas. Mr Nelson’s time as in-house counsel at a multinational chemical company enabled him to expand his practice into the area of IP transactions and he has provided support for several mergers and acquisitions. In addition, he worked at the USPTO as a complex biotech patent examiner and as a research associate developing novel conjugate vaccine platforms for a small biotech start-up.
Lee & Hayes, PC 601 West Riverside Avenue Suite 1400 Spokane WA 99201 United States T +1 509 944 4630 See firm profile p1700
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IAM Patent 1000 1631
Peck, Rob Partner – Lee & Hayes, PC robp@leehayes.com | www.leehayes.com
Rob Peck focuses on developing and managing IP portfolios according to each client’s unique strategies and business goals. He has over a decade of experience doing so. For much of that time, Mr Peck has also served as an in-house, seconded patent counsel to a telecommunications industry leader, helping that company significantly increase its disclosures and filings. He is also a law firm innovator and leader: Mr Peck has served as a member of Lee & Hayes’s board of directors for four years and leads a multi-office team of attorneys and agents. This experience with executive decision-making informs his strategic IP advice. Mr Peck is very experienced in a number of technologies, including telecommunication networks and devices, wireless networking, network security, e-commerce, search engines and optimisations, digital media, virtualisation, imaging, resource management, code optimisation, web services, and mechanical and medical devices. He has drafted and prosecuted US and international patent applications for these technologies and advised clients on innovation selection, targeted innovation, and strategic portfolio levelling and planning. Also, Mr Peck performs patent validity and infringement analyses, evaluates patents for acquisition and licensing, and supports litigation, licensing and joint development efforts.
Lee & Hayes, PC One Convention Place 701 Pike Street Suite 1600 Seattle WA 98101 United States T +1 206 876 6019 See firm profile p1700
1632 IAM Patent 1000
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Santos, Patrick Firm Managing Partner – Han Santos PLLC patsan@hansantos.com | hansantos.com
Patrick Santos is the managing partner for Han Santos PLLC. He established the firm with partner Andy Han in 2013. He currently oversees the firm’s growth and expansions of the firm’s scope of practice. Mr Santos has an extensive technology background and is experienced in systems software, including database systems, operating systems, compilers, packet networks, cellular networks, cloud infrastructure and cryptography. He began his career as a software engineer for 12 years, seven of which were spent at Microsoft. Mr Santos worked on the Visual C++, Xbox and Windows XP teams, as well as in Microsoft Research. His work at Microsoft resulted in being named co-inventor on three patents (US patent nos 7,174,540; 7,321,897 and 8,065,307). Mr Santos took a short break from Microsoft to join the US Patent and Trademark Office as a patent examiner, first specialising in cryptography and cybersecurity, and later in database and distributed applications. He returned to Microsoft in 2005 as a patent analyst for legal and corporate affairs (LCA) where he was an LCA scholar. Mr Santos moved on to a national law firm where he was co-chair of their IP counselling group as well as partner. He was also a C/C++ instructor at Bellevue College and a C/C++ adjunct instructor for the University of Washington, Seattle. Presently, Mr Santos is a seconded IP attorney for a major Seattle area corporation where he provides IP conflict matter and IP strategy counsel. His desire to establish the firm sprang from the observation that patent attorneys are often limited in their understanding of the actual technology. His dream was to build a firm that housed technical subject matter experts who also are skilled legal practitioners with solid foundational understanding of the needs of corporations. This ensures his clients have trusted partners that can reliably counsel on all aspects of business, innovation and protection of intellectual property.
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Han Santos PLLC 500 Union Street Suite 800 Seattle WA 98101 United States T +1 425 786 9734 See firm profile p1690 Professional associations • AIPLA • NAPABA • WSPLA
IAM Patent 1000 1633
Winger, C Rachal Partner – Lee & Hayes, PC rachalw@leehayes.com | www.leehayes.com
C Rachal Winger works in the Seattle office of Lee & Hayes and is the lead of the chemical and life sciences practice group. She advises clients on a variety of IP matters in the area of life sciences including therapeutics and vaccines (cancer, auto-immune disease, chronic pain, wound healing, obesity, and viral and bacterial infection); diagnostics and risk detection (cancer, obstetrical complications, microbiome perturbations, and in-field assays); delivery systems (formulations, carriers, and nanoparticles); methods of detecting targets for therapeutic intervention; and health-related technologies (dietary supplements, and exercise devices and programs). Ms Winger is well versed in working with clients on creating and commercialising their IP portfolios while performing competitive analyses and assessing competitor’s intellectual property. She has worked with a wide range of clients, from start-ups and emerging growth companies to universities, multinationals, and private equity and venture capital investors. She performs domestic and international patent prosecution and portfolio management, patentability and freedom-to-operate assessments, due diligence, and litigation evaluation and support. Prior to joining Lee & Hayes, Ms Winger was a partner at an international law firm. Before her law degree, she earned her PhD in behavioural neuroscience. Her dissertation focused on the effects of immune activation on brain function and included developing and treating an animal model of AIDS-related dementia.
1634 IAM Patent 1000
Lee & Hayes, PC One Convention Place 701 Pike Street Suite 1600 Seattle WA 98101 United States T +1 206 876 6017 F +1 206 315 4004 See firm profile p1700
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United States: Wisconsin
Andrus Intellectual Property Law LLP
Responsible for thousands of pending US and foreign patent applications and issued patents, Andrus “delivers superb quality for a reasonable price” to a bevy of longstanding clients. Its technically proficient attorneys – several whom have served stints in-house – benefit from stellar prosecutionside leadership from Joseph Kuborn, who has long represented General Electric (GE) in connection with US patent matters, particularly in the biomedical domain. Consistently keeping GE and many other innovators up to date on file status and costs, he’s an excellent communicator who always puts clients first. Colleague Peter Holsen runs point for Brunswick Corporation – a company that Andrus has represented since 1944: “Peter is incredibly service minded and polite, and has an outstanding ability to understand extremely complicated technology.” Also recommended is Benjamin Imhoff, whose hit rate for the likes of American Orthodontics is impressive. The mid-sized outfit packs a punch in litigation too, with accomplished lawyers such as Aaron Olejniczak and Christopher Liro on deck. Olejniczak, who leads the contentious line-up, has ample experience advocating across the IP spectrum and invariably strikes the right notes in court, before administrative law bodies and in alternative dispute resolution forums. Liro shines when it comes to civil procedure.
Boyle Fredrickson SC
Cited by competitors as one of Wisconsin’s most respected boutiques, Boyle Fredrickson is a major player in the local patent community. Its contingent of high-calibre patent lawyers protects patrons’ inventions to the hilt and can be counted on for the right support in licensing and transactional negotiations, as well as disputes scenarios. Founding partner Jim Boyle is a key contact for prosecution, litigation and strategic advisory matters.
DeWitt LLP
The crowning jewel of the Madison legal market, DeWitt – which also has a presence in Milwaukee and Minneapolis – makes light work of the most complex patent briefs. Recent developments for the set include the establishment of a new IP litigation unit in a move that should consolidate its position as a prime destination for contentious matters. Integral to this group are Joe Miotke and Harry Van Camp, two seasoned professionals who bring a lot to the practice beyond sheer advocacy skill. A champion of diversity in the legal profession, broad-minded IP
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strategist Miotke also devotes his time and energy to supporting Wisconsin’s entrepreneurship scene; while Van Camp creates efficiencies as a legal tech guru, ensuring that clients enjoy a seamless service. The prosecution practice, meanwhile, continues to hum thanks to the efforts of IP group co-chairs Christopher Scherer and Joseph Leone, and Charles Sara. Scherer is “brilliant at communicating with inventors and working with USPTO examiners to find pathways to the allowance of the most meaningful and useful claims”. The “utterly dependable partner” is “highly creative” and “always willing to take time out to talk through hypothetical situations without you having to worry about the meter running”. Leone is an essential partner to many academic and research institutions, including the Wisconsin Alumni Research Foundation, but also acquits himself with distinction for corporations large and small. Veteran IP rights protector Sara has a deft touch in the life sciences and the mechanical arts. See p1674 for firm profile
Foley & Lardner LLP
Singled out among Wisconsin-based firms for its “unparalleled regional, national and international reach”, Foley & Lardner is “in a class of its own”. The commercial outfit’s Milwaukee office is the base of operations for a talented and versatile group of IP partners who collectively cover all bases for patrons. For those seeking a well-rounded counsellor, any one of Scott Anderson, Jeffrey Gundersen or Joseph Ziebert would fit the bill perfectly. Underscoring his versatility, Anderson is a key member of multiple technology and industry-focused teams. Gundersen thinks globally when optimising IP strategies and is an ace on commercial IP matters. Ziebert manages significant portfolios with aplomb and is a deft deal negotiator and IP due diligence support lawyer. Anchoring the litigation practice locally is consummate trial and appellate lawyer Jeffrey Costakos, whose know-how cuts across myriad technologies.
Godfrey & Kahn
A new addition to the IAM Patent 1000 for 2021, Godfrey & Kahn is a Wisconsin stalwart, with five offices in the state and a branch in DC. The general practice is appreciated for its results-focused approach to IP matters; whether prosecuting patents, strategising around them or litigating, its attorneys always keep clients’ broader objectives
IAM Patent 1000 1635
United States: Wisconsin Firms
Individuals: litigation
Andrus Intellectual Property Law LLP
Donald Best Michael Best & Friedrich LLP
Boyle Fredrickson SC DeWitt LLP
See p1674
Foley & Lardner LLP Godfrey & Kahn Green Griffith & Borg-Breen LLP Michael Best & Friedrich LLP Perkins Coie LLP Quarles & Brady LLP
in mind. As one source comments: “The firm takes the time to understand us operationally and culturally, which inspires confidence that we are moving in the right direction and will be protected when threatened. It is a valued business as well as legal partner.” Recommended for his prosecution dexterity, the internationally well-connected Brian Gilpin is someone you can trust to manage a global portfolio to optimum effect. Working hand in glove with foreign associates in many jurisdictions, he secures all the right protections for Pacific Cycle, which manufactures and distributes top bike brands Schwinn, GT and Mongoose. He is joined in the listings by “collaborative and cost-effective” IP group chief Shane Delsman, who “provides highly valuable assistance in prosecuting applications and capturing potential intellectual property in the R&D and product development process”.
Green Griffith & Borg-Breen LLP
For redoubtable representation in life sciences patent litigation, Green, Griffith & Borg-Breen is a sure-fire bet. Specialising in Hatch-Waxman Act and other pharmaceutical cases, the boutique’s formidable lead counsel have chalked up many significant victories in district courts, at the Federal Circuit and before the PTAB. Their trial nous is matched by abundant technical expertise and commercial understanding, both of which shine through on every instruction. Partnering closely with their colleagues in Chicago are Middleton-based attorneys Jeffrey Ward and Wendy Ward, who between them have spent several decades at the patent coalface. The
1636 IAM Patent 1000
Jeffrey N Costakos Foley & Lardner LLP Shane Delsman Godfrey & Kahn Kristin Graham Noel Quarles & Brady LLP Christopher G Hanewicz Perkins Coie LLP David G Hanson Reinhart Boerner Van Deuren SC Christopher R Liro Andrus Intellectual Property Law LLP Jonathan H Margolies Michael Best & Friedrich LLP Joseph T Miotke DeWitt LLP
See p1640
Aaron T Olejniczak Andrus Intellectual Property Law LLP John Skilton Perkins Coie LLP Michelle Umberger Perkins Coie LLP Harry Van Camp DeWitt LLP Jeffrey S Ward Green Griffith & Borg-Breen LLP Wendy M Ward Green Griffith & Borg-Breen LLP
former is “resolute and crystal clear in his advice, even in complex cases with unexpected turns”; while the latter is a former senior IP director at a generic pharmaceutical company whose industry insight is a crucial point of difference.
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United States: Wisconsin Individuals: prosecution Scott D Anderson Foley & Lardner LLP David A Casimir Casimir Jones SC Jack M Cook Quarles & Brady LLP Brian Gilpin Godfrey & Kahn Jeffrey S Gundersen Foley & Lardner LLP Peter T Holsen Andrus Intellectual Property Law LLP Benjamin R Imhoff Andrus Intellectual Property Law LLP Daniel S Jones Michael Best & Friedrich LLP Richard Kaiser Michael Best & Friedrich LLP
Michael Best & Friedrich LLP
Michael Best & Friedrich has forged exceptionally strong links with Wisconsin innovators; and as a national outfit and Lex Mundi member, it enjoys close relations with businesses across the United States and around the world. Exposed, as a result, to all manner of patent briefs, it has developed a comprehensive toolkit and a sharpened problemsolving approach. Bench depth is another key selling point for the IP group, which is represented in the IAM Patent 1000 Wisconsin listings by Daniel Jones, Richard Kaiser and Thomas Miller on the prosecution side and Donald Best and Jonathan Margolies on the litigation side. Jones and Kaiser are precision prosecutors with a fine-grained understanding of mechanical technologies; software expert Miller has an eye for portfolio optimisation; and Best and Margolies bring the heat in all types of IP cases.
Perkins Coie LLP
A leading technology firm which also runs one of the busiest and best IP contentious practices in the United States, Perkins Coie cuts a dash on the
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Joseph D Kuborn Andrus Intellectual Property Law LLP Joseph T Leone DeWitt LLP
See p1639
M Scott McBride Quarles & Brady LLP Thomas A Miller Michael Best & Friedrich LLP Joe T Miotke DeWitt LLP
See p1640
Charles Sara DeWitt LLP
See p1641
Rebecca B Scarr McNeill Baur Christopher Scherer DeWitt LLP
See p1642
Tambryn K VanHeyningen Quarles & Brady LLP Joseph Ziebert Foley & Lardner LLP
national patent scene. Its pristine track record in all major patent litigation forums – including the PTAB, the Federal Circuit and ITC – gives it an air of invincibility, which is enhanced by the size and smarts of its trial lawyer line-up. Madison is home to firmwide patent litigation chair Christopher Hanewicz, who has done much to foster a collaborative culture in the group while leaving the hunger of its individuals undiminished. He sees a lot of action in the Western District of Wisconsin, where he is devastatingly effective. The same can be said of local managing partner Michelle Umberger who, like Hanewicz, is in her prime right now as an advocate. She is part of a large cross-office team currently litigating for the venerable Carnegie Institution of Washington and licensee WD Lab Grown Diamonds to enforce foundational patents for single-crystal diamond creation. One of the most seasoned attorneys in the entire firm, John Skilton has spent nearly 50 years in the game and is as savvy as any patent trial lawyer around.
IAM Patent 1000 1637
United States: Wisconsin Quarles & Brady LLP
An AmLaw 200 commercial firm with a storied history and rich tradition of excellence, Quarles & Brady is a repository of trust for myriad companies, including many at the cutting edge of technological development. Medical device and high-technology innovators have an able running mate in Jack Cook, who takes the reins of the prosecution practice; research and education institutions trust implicitly in his skills. Anchoring the life sciences practice, meanwhile, are molecular microbiology PhD Tambryn VanHeyningen and research scientist Scott McBride, whose sphere of operations encompasses prosecution, portfolio development, licensing and opinion giving. Kristin Graham Noel captains the IP litigation team, which she regularly leads to swift victory in the Western District of Wisconsin.
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Other recommended experts
David Casimir of Casimir Jones sees the whole playing field for clients as a result of his engagement in all aspects of the protection, enforcement and monetisation of patents, which adds immense value to his strategic advice. The leader of Reinhart Boerner Van Deuren’s IP group and co-chair of the litigation practice, David Hanson puts his finely honed powers of persuasion to good use as a first-chair IP litigator. A go-to boutique for biotechnology and pharmaceutical companies, McNeill Baur has a number of highfunctioning, PhD-holding attorneys on deck who are intimately familiar with the life sciences industry and the USPTO environment. One of those is Rebecca Scarr, a meticulous prosecutor and clever portfolio manager who gets the business side of things, too.
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Leone, Joseph T Co-chair of the Intellectual Property Group – DeWitt LLP jtl@dewittllp.com | dewittllp.com
Clients around the world turn to Joseph T Leone to secure and enforce their IP rights. This includes securing patents, trademarks, copyright and trade secrets, as well as asserting and defending these rights in the state and federal courts. Mr Leone is frequently engaged in opinion work, drafting freedom-to-operate opinions for US manufacturers and foreign companies importing goods into the United States. He serves as an expert witness in state and federal actions regarding Patent and Trademark Office practices and procedures. Additionally, he regularly represents both applicants and opposers in actions before the Trademark Trial and Appeal Board. Mr Leone’s education includes earning a JD from Marquette University, an MS in organic chemistry from Marquette University and an AB in chemistry from Kenyon College. Clients Mr Leone’s clients run the gamut from multinational corporations and large research universities to start-ups and individual inventors. Recent clients for whom Mr Leone drafted patent applications includes Silatronix, COnovate, Auburn University, University of Saint Thomas, Evets Corporation (maker of Danelectro-brand guitars) and Modern Fence Company. Mr Leone’s trademark clients include Evets Corporation, Diesel Forward, Sonic Foundry and Country Kitchen Restaurants, among many others. Notable representations In patent litigation, Mr Leone currently represents the defendants and counter-claim plaintiffs Proclip USA and Brodit in an infringement suit involving three patents, lodged in the Western District of Wisconsin (National Products Inc v Proclip USA Inc, Case no 20-CV-439). In opposition matters before the European Patent Office, Mr Leone recently prevailed in two matters for the same client, Verso Paper Holding LLC. The first was a successful defence of a patent opposition (EP Pat No 2 651 652); the second was a successful defence of an appeal brought by the losing party in an earlier opposition (EPO Boards of Appeal Case no T2557/16-3.3.02). In trademark matters, Mr Leone is currently defending against a trademark opposition on behalf of Sonic Foundry (RLP Ventures LLC v Sonic Foundry Inc, TTAB Case no 91/267,495).
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DeWitt LLP 2 E Mifflin Street Suite 600 Madison WI 53703 United States T +1 608 395 6743 F +1 608 252 9243 See firm profile p Professional associations • American Chemical Society • University of Wisconsin Extended Campus • Wisconsin Intellectual Property Law Association
IAM Patent 1000 1639
Miotke, Joe Co-chair Intellectual Property Litigation Group – DeWitt LLP jtm@dewittllp.com | dewittllp.com
For more than 20 years, Joe Miotke has distinguished himself as a leading IP litigator, registered patent attorney and IP strategist. Serving as co-chair of DeWitt’s IP litigation group, Mr Miotke has represented clients from Boston to Los Angeles in IP litigation matters. He has worked across a wide spectrum of patent, trade secret, copyright and trademark matters involving technologies ranging from artificial intelligence and machine learning to energy production and hydraulic fracturing. Mr Miotke has also counselled clients through a wide array of IP transactions. Providing leadership in the Wisconsin and US IP community, he is a past president of the Wisconsin Intellectual Property Law Association and currently serves as the national chair for IP Basic Education for the Licensing Executives Society (LES). He has developed LES courses that are taught throughout North America. Mr Miotke is likewise a leader in Wisconsin’s legal, education and entrepreneurship communities. He has been appointed by two Wisconsin governors and confirmed by the Wisconsin Senate to serve on the Wisconsin State Public Defender Board. Serving as the state-wide leadership chair for the project Lead The Way Wisconsin, he guides one of the largest science, technology, engineering and maths education programmes for schools (from kindergarten to Grade 12) in the United States. Through service on the Board of Directors for BizStarts, a Milwaukee-based non-profit organisation, he provides education and mentorship services to entrepreneurs from underserved communities. Mr Miotke earned his BS in civil engineering from Marquette University and graduated magna cum laude from Marquette University.
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DeWitt LLP 13845 Bishop’s Drive, Suite 300 Brookfield, WI 53005 United States T +1 262 784 2871 F +1 262 754 2845 See firm profile p Professional associations • LES • LES • Wisconsin Intellectual Property Law Association • Wisconsin Intellectual Property Law Association
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Sara, Charles Partner – DeWitt LLP css@dewittllp.com | dewittllp.com
A former English teacher, football and wrestling coach at Fork Union Military Academy, VA, Charles (Chuck) Sara followed an unusual path to IP law. After teaching, he spent a few years in the Dairy Science Department at Virginia Tech before turning to law school, where his science background helped to develop his niche in intellectual property. He earned a JD from George Mason University School of Law, a BA from the University of North Carolina and attended Virginia Tech, where he completed degree work towards a master’s in dairy science. He has more than 30 years of experience in: • US and foreign intellectual property; • patent prosecution, protection and litigation; • patent infringement and validity opinions; • trademark prosecution, protection and litigation; • copyright prosecution, protection and litigation; and • licensing and technology transfer. As a registered patent attorney, Mr Sara helps clients, large and small, domestic and foreign. His patent expertise focuses on: • biotechnology; • animal and plant agriculture; • dairy and cheese science; • medical products; • food and nutrition; • pharmaceuticals; and • mechanical arts, including sporting goods, automotive parts, hunting fishing equipment and construction.
DeWitt LLP 2 E Mifflin Street, Suite 600 Madison WI 53703 United States T +1 608 395 6784 F +1 608 252 9243 See firm profile p Professional associations • AIPLA • BioForward Wisconsin • Wisconsin Law Foundation
Client recommendations I have had the privilege of working with Chuck Sara for several years, both directly as his client for biotechnology intellectual property matters, and in the leadership role he played in building the Wisconsin Biotechnology Association. He is one of the most responsive, trustworthy, competent professionals I’ve ever met, always going beyond the call of duty – often at his own expense – and always making his clients’ best interests his top priority. Chuck Oehler, chair and CEO, Primorigen Biosciences Inc
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IAM Patent 1000 1641
Scherer, Christopher Co-chair Intellectual Property Group – DeWitt LLP cms@dewittllp.com | dewittllp.com
Christopher Scherer is the co-chair of DeWitt’s IP group and is also a member of the firm’s executive committee. His domestic and international practice involves all facets of IP law, especially patent and trademark prosecution. He also serves as in-house corporate counsel on a contract basis for clients, where he manages IP portfolios, outside counsel and any litigation matters which may arise. Additionally, in his capacity as in-house counsel, he works to implement legal policies and guidelines across multiple departments, negotiates agreements with licensors, licensees and suppliers, oversees document retention and assists with due diligence in negotiating the sale of companies. He has prepared and prosecuted hundreds of domestic and international patent applications, particularly for electrical and electronic circuits and systems, computer software, artificial intelligence, machine learning, medical devices, medical patient monitoring and treatment technology, device fabrication, optical devices and systems, security notes and mechanical devices. Mr Scherer manages several domestic and international trademark portfolios and administers domestic trademark portfolios for foreign clients as well. His experience with global design patent prosecution includes Hague Convention filings and managing a portfolio for a major, international fashion industry company. He successfully negotiated a settlement in a trademark opposition matter between the defendant client, a regional winery, and the largest privately held winery in the world. The settlement was fashioned such that the client reserved trademark rights to enforce on a third winery that was infringing the client’s trademarks. Mr Scherer earned a JD from the University of Illinois – Chicago’s John Marshall Law School and a BS in electrical engineering from Marquette University.
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DeWitt LLP 13835 Bishop’s Drive Suite 300 Brookfield WI 53005 United States T +1 262 754 2862 F +1 262 754 2845 See firm profile p Professional associations • AIPPI • State Bar of Wisconsin • Wisconsin Intellectual Property Law
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Van Camp, Harry Co-chair Intellectual Property Litigation Group – DeWitt LLP hvc@dewittllp.com | dewittllp.com
Harry Van Camp has extensive experience litigating complex cases in state and federal court. After a jury returned a large verdict in favour of Mr Van Camp’s client, the judge commented: “You should win the attorney-of-the-year award!” Similarly, after receiving a favourable jury verdict, he was greeted in chambers by a judge who said: “Well, here comes the magician!” Mr Van Camp has achieved numerous multimillion-dollar verdicts on behalf of clients. Trial advocacy is an art. Effective communication skills are the key to successful advocacy, and this is something Mr Van Camp knows well. Efficiently communicating with clients is where it all begins. The hope is always to resolve the dispute quickly and inexpensively in the client’s favour. Clearly and convincingly presenting the client’s position to opposing counsel, judges and, ultimately, jurors is Mr Van Camp’s objective. Not only have juries ask judges for permission to award his client’s attorney fees, his clients have been effusive about his advocacy on their behalf as well. Following one of his closing arguments to a jury, a tearful business owner thanked him and said: “If I could have found the right words to say to the jury, I would have said exactly what you said!” Hours later, that jury returned a $4.3 million verdict in the business owner’s favour. Innovation in the practice of law has been a long-term passion. At a time when good law office systems did not exist, Mr Van Camp developed computer software for law office management and served as president of the corporation that sold and supported these computer systems across the country. He was one of the first lawyers to pioneer the use of computers in the courtroom to support trial activities. This year he developed a new method to hyperlink exhibits, video and other digital media into documents he files with state and federal courts on behalf of clients. Mr Van Camp earned a JD from the University of Oklahoma City and a BA from the University of Denver.
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DeWitt LLP 2 E Mifflin Street, Suite 600 Madison WI 53703 United States T +1 608 252 9336 F +1 608 252 9243 See firm profile p Professional associations • ABA • Computer Law Association
IAM Patent 1000 1643
Ahmad Zavitsanos Anaipakos Alavi & Mensing PC www.azalaw.com
“AZA [[Ahmad Zavitsanos Anaipakos] is a firm of top-notch patent litigators who excel at trial work – when they get up to handle witnesses and present legal arguments, they have this uncanny ability to convince judge and jury that they are right whatever the circumstances. They are great on the briefing side too, and run cases in an organised, lean and efficient manner,” wrote IAM Patent 1000 – The World’s Leading Patent Professionals 2020, which ranked AZA among the best Texas patent litigation firms for the sixth year in a row. “Litigation thoroughbred Ahmad Zavitsanos Anaipakos has successfully resolved disputes across virtually all technologies, industry sectors and forums; its lawyers’ gift for constructing tightly woven and compelling narratives works in any setting,” IAM Patent 1000 wrote of AZA in its 2018 ranking. “This Houston trial boutique dazzles in patent infringement cases across the United States and beyond,” the magazine ranking stated in 2017. The IAM survey also named AZA partners Demetrios Anaipakos and Amir Alavi among the best Texas patent litigators. “They keep the whole case in view and get great results. Its lawyers work with complete integrity and really make you feel like part of the same team,” the magazine stated, calling them “hugely respected and unflappable advocates that you can greenlight for a billiondollar case with 100% confidence”. The 2019 IPR Intelligence Report by Patexia Inc named AZA the 12th best-performing law firm in the country in a study of more than 1,100 law firms active in inter partes review patent cases over the previous five years. AZA lawyers have experienced great success representing clients in IP and IP-related cases throughout the world, including Europe, Asia and the Middle East. Languages spoken by IP team members include Arabic (some), Cantonese, Farsi, French, Mandarin, Russian, Spanish, Ukrainian and Urdu/Hindi. We regularly handle patent infringement, trademark, copyright and trade secret cases and were ranked one of the 10 largest IP firms in Houston in 2020 and many years before by the Houston Business Journal. Our patent lawyers have experience in numerous industry sectors including energy, technology, chemistry, biochemistry, telecom,
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“Elite litigation firm… Focused on securing the best results for their life sciences and high-tech following, whether at home or abroad” hardware and software, and transportation. We have had success representing both plaintiffs and defendants in IP cases. AZA’s IP stable includes experienced trial lawyers and lawyers with technical backgrounds in chemistry, electrical engineering, software and biochemistry. Included are partners Mr Anaipakos, Mr Alavi, Scott W Clark and Michael McBride; and of counsel David Warden, Brian E Simmons, Joshua Wyde and Drew Kim. Partner Masood Anjom has extensive Patent Trial and Appeal Board experience. The team boasts three boardcertified trial lawyers and several lawyers licensed as patent attorneys before the US Patent and Trademark Office. We also have lawyers who focus on trademark, copyright and trade secret cases. We’ve seen an uptick in trade secret cases, especially in the energy industry, and we’ve handled them successfully both for companies claiming the theft of trade secrets and for executives defending against a claim. We’ve also defeated trademark infringement claims for some clients and steadfastly protected trademarks and copyright for other clients. Examples of cases our lawyers have handled include the following: • AZA lawyers were called in a few months before trial and developed a previously untapped lost profits claim theory for Versata. On the eve of trial, the court dismissed everything but the lost profits model that AZA developed. With AZA’s help, Versata won the nation’s second largest patent verdict in 2011 at $391 million, according to Verdict Search (Versata Software Inc v SAP America Inc).
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• AZA beat the odds when it obtained a $15.7 million jury verdict in the US District Court for the Eastern District of Texas in a 2015 patent infringement case. Jurors deliberated only one hour to find that Korean electronics giant Samsung Electronics Co Ltd infringed on two Rembrandt Wireless Technologies LP patents covering Bluetooth technology. The victory received widespread press coverage.
Main address 1221 McKinney Street Suite 2500 Houston TX 77010 United States
AZA is overseeing potentially precedentsetting IP cases in the United States and Germany for the owner of six families of voice coding patents that are essential to the wideband speech audio coding standard for high-definition voice in mobile telephony known as AMR-WB (adaptive multi-rate wideband).
Professional contacts Amir H Alavi Partner E aalavi@azalaw.com
T +1 713 655 1101 F +1 713 655 0062 E jzavitsanos@azalaw.com
Demetrios Anaipakos Partner E danaipakos@azalaw.com Sample client list • Liberty Oilfield Services • Rembrandt Wireless Technologies • Saint Lawrence Communications • Versata
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IAM Patent 1000 1645
Aitken Klee LLP www.aitkenklee.com
Since its inception in 2013, Aitken Klee LLP has consistently been recognised as one of the leading IP litigation firms in Canada. We are the go-to firm when other IP firms need external counsel. We represent clients in all areas of intellectual property, including medical devices, biotechnology, resource industries, consumer goods, food products, aerospace and pharmaceuticals. Our team has successfully represented clients in high-stakes patent litigation in the natural resources sector involving technology from hard rock directional drilling to oils sands tailings pond remediation. Our lawyers were successful as lead counsel on the seminal case that defined the test for anticipation by prior use in Canada in the context of a patent for a method to remove hydrogen sulphide from natural gas (Baker Petrolite Corp v Canwell Enviro-Industries Ltd, 2002 FCA 158). We represent Coil Solutions Inc in a suit by Varco I/P Inc for infringement of a patented coiled tubing injector system (Varco I/P Inc v Coil Solutions Inc, T-229-18). We represent Aziwell in a patent infringement suit by Devicos AS with respect to directional drilling technology (T-429-18). We successfully represented Thermon Manufacturing Co in resisting an application to amend the named inventors of a patent on pipe heating cable used in mining operations (Drexan Energy Systems Inc v Canada (Commissioner of Patents), 2014 FC 887). We successfully defended Suncor Energy Inc in a patent infringement action in the Federal Court of Canada involving Suncor’s oil sands tailings pond remediation technology. Aitken Klee also has an unrivalled track record successfully representing pharmaceutical manufacturers in patent litigation under both the Patent Act and the Patented Medicines (Notice of Compliance) Regulations, including at the Supreme Court of Canada. In small molecule drugs, we have taken on some of the most difficult cases, including successfully addressing numerous compound, formulation and use patents on blockbuster drugs. We have also been successful in a number of seminal cases, including defining the requirements of written description and clarifying the meaning of ‘inventive concept’, that continue to shape Canadian patent law and have twice won a prestigious patent case of the year award. Complementing its litigation experience, our team has the deep technical background required
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for biopharmaceutical and biosimilar products. Nearly half of our lawyers have a life sciences master’s or doctoral degree, including those with first-hand experience in the expression and high-resolution characterisation of recombinant protein products. Our team was counsel in the first biosimilar litigation in Canada involving filgrastim. Our lawyers have a long history of representing innovative and successful medical device companies, from large multinational corporations to start-ups. Our lawyers combine their strong technical backgrounds with their world-class litigation experience to achieve creative and successful results for our clients. Our lawyers represent LivaNova and Boston Scientific as its Canadian counsel in a multi-jurisdictional dispute over patents related to transcatheter aortic valve replacement (T-1831-16). We successfully defended WL Gore & Associates in a patent infringement case involving artificial blood vessels against Bard Peripheral Vascular. The corresponding litigation in the United States was described by the court as the most complicated case the court had presided over (T-2105-13).
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“Elite litigation firm… Focused on securing the best results for their life sciences and high-tech following, whether at home or abroad”
Main address 100 Murray Street Suite 300 Ottawa ON K1N 0A1 Canada T +1 613 695 5858 F +1 613 695 5854 E info@aitkenklee.com Professional contacts Marcus Klee Managing partner E mklee@aitkenklee.com Other offices Toronto
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IAM Patent 1000 1647
Analysis Group www.AnalysisGroup.com
Analysis Group is one of the largest international economics consulting firms, with more than 1,000 professionals across 14 offices in North America, Europe and Asia. Since 1981, we have provided expertise in economics, finance, health care analytics and strategy to top law firms, Fortune Global 500 companies and government agencies worldwide. Our internal experts, together with our network of affiliated experts from academia, industry and government, offer our clients exceptional breadth and depth of expertise. Analysis Group’s expertise covers the full spectrum of IP issues, from patent, copyright, trademarks, and trademark infringement to misappropriation of trade secrets and unfair competition. We have extensive experience handling IP matters across a range of industries, including: • Airlines • Chemicals • Consumer products and services • Electronics • Hardware • Health care • Internet • Life sciences • Manufacturing products and processes • Media and entertainment • Pharmaceutical • Software • Telecommunications
We have worked on many notable IP cases for major companies, including Amazon, Bombardier, Del Monte Foods, Emerson Electric, Eli Lilly, Google, Medtronic, Microsoft, Priceline, Qualcomm, Samsung, Skechers, and Verizon. We also have helped corporate clients manage their intangible assets to achieve competitive advantage and growth. This includes the valuation, transfer and structuring of IP assets in business settings. We have structured optimal business arrangements relevant to the sale or licensing of IP, and recommended appropriate compensation structures, scopes of agreement and levels of collaboration between or among the parties. In all of our IP engagements, we deliver specialised expertise by drawing upon our firm’s capabilities in related practice areas. Clients benefit from our ability to deploy both traditional and advanced analytical tools and methodologies in assessing sales impacts, prices, profits and substitution patterns. Examples include econometric demand analyses, conjoint surveys, social media analyses and machine learning tools. We also work closely with our networks of highly distinguished experts from leading universities and industry experts to develop and present innovative, fact-based solutions for our clients. The combination of our case teams’ experience with the specialised skills and knowledge of our academic and industry experts allows us to offer a unique breadth and depth of IP expertise to our clients.
Our professionals have assisted attorneys and corporate clients in all phases of litigation and on a variety of matters, including: • Bonding • Commercial success • Damages (lost profits, price erosion, reasonable royalty) • Domestic industry • Financial modelling • Fair, reasonable and non-discriminatory (FRAND) compliance • Irreparable harm • Licensing • Preliminary/permanent injunction • Technology transfer • Unjust enrichment • Valuation
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“Outstanding IP credentials and a superlative track record… Distinguished not only by the depth of its bench but also by its collaborative approach”
Main address 111 Huntington Avenue 14th Floor Boston MA 02199 United States T +1 617 425 8000 F +1 617 425 8001 E john.jarosz@analysisgroup.com Professional contacts John Jarosz Managing Principal E john.jarosz@analysisgroup.com Other offices Beijing, Boston, Brussels, Chicago, Dallas, Denver, London, Los Angeles, Menlo Park, Montreal, New York, Paris, San Francisco, Washington DC Sample client list • Abbott • Apple • Cox Communications • Del Monte • Google • Samsung • Sony • St Jude Medical • Verizon
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IAM Patent 1000 1649
Ankura Consulting Group, LLC www.ankura.com
Ankura Consulting Group is a global consultancy with more than 1,500 professionals based in offices in the United States, Europe, Asia and Australia. We doubled the size of our IP consulting practice with our acquisition of 284 Partners LLC in late 2019. The focus of the IP practice is valuation, economic and data analysis, and expert testimony in national and global disputes. Our experts have been involved in some of the highest-stakes controversies and significant transactions, including patent and trademark infringement, theft of trade secrets, licensing disputes, tax disputes, bankruptcies and breach of contract matters. They assist clients with the challenges and opportunities associated with assessing, valuing and managing IP assets in today’s global innovation economy. They combine timely competitive information and stateof-the-art valuation methodologies using advanced data and analytical tools to deliver practical business solutions. Our clients include many of the Fortune 1000 companies and the law firms they select to represent them. We are hired not just because of our track record in the courtroom, but because of our deep experience in managing and transacting the types of assets we are valuing when providing our expert opinions. For decades we have been active in helping companies buy, sell, license out, license in and, when necessary, help enforce IP rights or defend their businesses. This out-ofthe-courtroom experience is invaluable when explaining our opinions to juries and other triers of fact. This ‘real world’ transactions experience is one of the reasons we are retained together with our in-depth analysis, understanding of the entire case (not just our part), ability to communicate our opinions and ultimately the results we help deliver. While we are active in all types of IP matters, our experts are leaders in economic and data analysis and royalty rate determination for standard-essential patents, which are subject to fair, reasonable and non-discrimination (FRAND) encumbrances. These matters have been ongoing in the semiconductor, electronics and mobile device industries and have recently moved to the automotive and Internet of Things industries. We help companies determine FRAND rates in US and international litigation, arbitration, licensing-in and licensing-out negotiations, as well as other settings.
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We also work closely with inventors, owners and attorneys to assess patentability and markets for technologies to build and maintain competitive IP portfolios. We actively negotiate IP-based transactions, and structure and manage joint development, licensing and enforcement activities. We have been involved in IP matters in virtually every industry, including automotive, telecommunications (including mobile devices, infrastructure and service providers), electronics, semiconductors, medical devices, pharmaceuticals, consumer products, food and beverages, publishing, oil and gas, and entertainment. Our experts and the people that support them have held and currently hold key roles in many industry associations. Some of those include the Licensing Executives Society United States and Canada, Licensing Executives Society International, Intellectual Property Owners Association, American Bar Association (IP Section) and American Institute of Certified Public Accountants (and similar state societies). We also are certified licensing professionals, certified public accountants, certified valuation analysts and certified in financial forensics. We have been qualified as experts in federal, state, tax, bankruptcy and international courts, as well as arbitration proceedings and at the International Trade Commission. Members of our team have been recognised in the IAM Patent 1000 and IAM Strategy 300 by their clients and peers for over a decade.
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“Premier business advisory firm… Testifying expertise, team-oriented approach and creativity”
Main address 485 Lexington Avenue 10th Floor New York NY 10017 United States Professional contacts Michael Lasinski Senior managing director E michael.lasinski@ankura.com David Yurkerwich Senior managing director E david.yurkerwich@ankura.com Other offices Ann Arbor, Chicago, Dallas, Frankfurt, Hong Kong, London, Los Angeles, San Francisco, Washington DC
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IAM Patent 1000 1651
Axinn, Veltrop & Harkrider LLP www.axinn.com
Axinn combines the skills, experience and dedication of the world’s largest firms with the focus, responsiveness, efficiency and attention to client needs of the best boutiques. The firm was established in the late 1990s by lawyers from premier Wall Street firms with a common vision: provide the highest level of service and strategic acumen in antitrust, IP and high-stakes litigation. Axinn’s lawyers have served as lead or co-lead counsel on nearly half a trillion dollars in transactions and, in the past 10 years alone, have handled more than 250 litigations. Axinn has numerous seasoned IP trial lawyers and has become a go-to firm for IP matters of strategic importance. The firm typically has two dozen or more pending patent and trade secret cases, and often tries multiple cases annually. Axinn has served as lead trial counsel in some of the most significant recent patent cases for the world’s leading pharmaceutical, biotech, medical device, diagnostics and consumer products companies, including Johnson & Johnson, Thermo Fisher, Unilever and Par Pharmaceuticals. On numerous occasions, the firm has been asked to take over cases during or after discovery and serve as lead counsel at trial, including the defence of a multibillion dollar jury trial. Utilising their advocacy skills, within the past few years Axinn attorneys have obtained, for example, a favourable Federal Circuit decision on a novel double patenting legal issue that led to a settlement which allowed the firm’s client to market an important influenza treatment; a multi-million dollar jury verdict in a medical device patent case involving spinal implants; and the first-ever decision by a district court ordering the Food and Drug Administration to approve a generic version of a drug. Attorneys also offer an exceptional depth of technical experience, including numerous attorneys with advanced technical degrees and extensive hands-on industry training. Axinn has more than 50 full-time antitrust lawyers working on M&A, litigation, criminal and conduct investigations. Axinn has been global lead on mergers worth close to half a trillion dollars, including Dell’s $67 billion acquisition of EMC; Thermo Fisher’s $13.2 billion acquisition of life technologies; Ball Corporation’s $6 billion acquisition of Rexam; Johnson Controls’ $2 billion sale of Scott Safety to 3M; and McKesson’s $3.4
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“When pharmaceutical and biotechnology companies need to enlist special forces support, many dial up Axinn… One of the most dynamic groups in the country” billion joint venture with Change Healthcare. Axinn has extensive experience in major trials and class actions, including In Re Blue Cross antitrust litigation (for IBC), Poultry Growers antitrust litigation (for Tyson Foods), SawStop (for Stanley Black & Decker), biosimilar antitrust litigation (for Momenta), German and Asian auto parts litigation, as well as monopolisation and conspiracy cases for Thermo Fisher, Danfoss, Hexcel, University of Pittsburgh Medical Center and Affinia. The firm has litigated six merger cases brought by government agencies (winning five) and has a strong presence and track record in ongoing Department of Justice (DOJ) criminal antitrust matters and related litigation, including in auto parts and air cargo. The antitrust group has extensive experience in matters involving antitrust and IP issues, including Google’s settlement with the Federal Trade Commission (FTC) on standard-essential patents and is lead counsel in a major litigation involving biosimilars. Axinn has deep contacts with the staff and front offices of the FTC and DOJ in both Republican and Democratic administrations and employs lawyers with more than 60 years of government antitrust experience. Axinn serves clients for whom high-stakes litigation is a vital or unavoidable aspect of business. In recent years, Axinn has defeated billions of dollars in asserted liability for defendants and obtained hundreds of millions of dollars for plaintiffs. Axinn lawyers regularly try cases across the United States and in arbitral forums, and are often brought in to handle cases that are close
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to trial. Axinn has unusually broad experience representing both plaintiffs and defendants. The firm has devised creative solutions for clients that have earned them hundreds of millions of dollars as plaintiffs. Axinn lawyers have also successfully defended the firm’s clients against class actions and business disputes involving everything from insurance coverage, auction rate securities, cybersecurity, data breaches and healthcare financing, to cell phones, infant formula, auto parts and cable television.
Main address 114 West 47th Street 22nd Floor New York NY 10036 United States T +1 212 728 2200 F +1 212 728 2201 E mbecker@axinn.com Professional contacts Matthew Becker Managing partner E mbecker@axinn.com Chad Landmon IP practice chair E clandmon@axinn.com Other offices Hartford, San Francisco, Washington DC
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IAM Patent 1000 1653
BCF Business Law www.bcf.ca
It is with unfaltering passion for innovation and entrepreneurship that BCF’s founders were determined to change the way business law was practised. Our story reflects our ambition: as a collaborative and daring firm, BCF now has over 500 members, including 300 professionals, providing outstanding innovative service. It is this entrepreneurial spirit that makes us stand out from the crowd; we walk the walk and we talk the talk. BCF is recognised by business leaders, entrepreneurs, growing companies and wellestablished global companies as a stepping stone to growth and success in Canada and abroad. We understand our clients’ businesses and are well positioned to partner with organisations, whatever the size or nature. Our team helps turn clients’ ambitions into viable and innovative businesses by putting the right resources on the table. We help our clients reach business objectives by providing pragmatic and forward-thinking solutions. Our clients’ success is our success. IP and patent team BCF’s patent team comprises experienced patent agents and attorneys distinguished by their multijurisdictional IP expertise, their hands-on corporate experience and their emphasis on providing personalised service to their clients. Notably, the BCF team boasts patent agents qualified and admitted to represent clients in the United States, Canada and Europe, maximising their patent potential in multiple jurisdictions and providing a ‘one-stop shop’ for patent and design protection. Our team members have extensive experience working in-house in the telecommunications, IT, medical device, biotechnology, machinery, transportation and aerospace industries, enabling them to deliver business-relevant IP advice. The BCF patent team consistently delivers high-quality, business-relevant IP advice and services including: • IP management and strategic counselling; • patentability, infringement, freedom-to-operate and validity opinions; • patent drafting, filing and prosecution service throughout the world, including direct representation in the United States, Canada and Europe; • licensing and due diligence of IP rights; • contentious patent proceedings; and
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• negotiating and drafting of IP-related agreements. BCF also advises clients on a wide variety of other IP matters, including: • industrial designs, trademarks and copyright; • trade secret strategies and management; • free and open-source software policies; and • data privacy and protection matters. BCF Global Focusing exclusively on IP law, BCF Global’s offer features Canadian and US patent agents and attorneys, as well as French and European patent attorneys, all working as a team. Thanks to the multidisciplinary expertise of its team and its strategic geographic position on two continents, BCF Global is seeking to provide its European clientele with privileged access to the North American market, and to assist visionary and innovative businesses in the fields of information technology, medical devices and life sciences grow and thrive. BCF Imagine BCF Imagine offers an exclusive legal and strategic programme to help innovative start-ups accelerate their growth. Since BCF Imagine’s creation in 2017, we have implemented a rigorous selection process to identify the best technology start-ups and assist them legally – for instance, in terms of cooperatives, corporate financing, venture capital, and IP strategies and execution. BCF Ventures BCF Ventures, a spin-off of BCF Business Law, is a pioneer in the Canadian investment scene by being one of the very first Super Angel funds. BCF Business Law’s partners pooled their resources to establish BCF Ventures, which launched on 1 June 2018. The fund benefits from the expertise, resources and insights of the BCF law firm and invests jointly with other successful funds across North America and Europe. BCF Ventures invests at the seed and series A stage of technology-based start-ups, mostly in Canada, the United States and occasionally in Israel, China and Western Europe. BCF Ventures is also a designated organisation authorised by the government of Canada to invest and support potential start-ups under the Start-Up Visa Program.
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Main address 25th Floor 1100 Rene Levesque Boulevard West Montreal QC H3B 5C9 Canada T +1 514 397 8500 F +1 514 397 8515 E info@bcf.ca Professional contacts Tuba Yamaç Partner E tuba.yamac@bcf.ca Ilya Kalnish Partner E ilya.kalnish@bcf.ca Dominic Goudreault Partner E dominic.goudreault@bcf.ca Other offices Lyon, Paris, Quebec Sample client list • Alcatel-Lucent Enterprise • Bombardier Recreational Products • OVHcloud • Yandex
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IAM Patent 1000 1655
Berkeley Research Group, LLC www.thinkbrg.com
Berkeley Research Group (BRG) is a global consulting firm that helps leading organisations advance in three key areas: disputes and investigations, corporate finance, and strategy and operations. We have over 1,200 professionals worldwide who provide independent and objective economic analyses, litigation support and expert testimony on prominent litigation cases in court proceedings, arbitrations and mediations, and before governmental agencies. IP overview BRG’s IP practice is led by Chicago managing director Jeff Stec. Our experts excel in advising clients on how effectively to develop, manage, value, monetise and protect their intangible assets in the face of high-stakes litigation, important strategic decisions, business transactions, structured finance, commercialisation, wrongful transfer of assets and/or compliance issues. Our experts’ experience in litigation covers a wide range of IP disputes, including allegations of patent, copyright and trademark infringement, and theft of trade secrets. Our experts regularly testify on damages, injunctions, irreparable harm and commercial success. They also deal with the IP aspects of tax and international trade disputes, as well as breaches of contract and technology agreements. Our experts have worked on some of the world’s largest patent infringement, trade secret misappropriation and copyright infringement cases for both plaintiffs and defendants. They have special experience and expertise in issues raised when patents must be practised to comply with technical standards and on matters involving intellectual property and antitrust. What we do Our experts advise our clients on how effectively to develop and realise the value of their intangible assets through the execution of IP strategies, which includes the assessment and valuation of their intellectual property. Our experts have a wealth of IP valuation and IP strategy experience across a wide range of industries and technology areas. Our experts also advise on all stages of litigation, including the development of quantitative financial models related to lost profit and reasonable royalty damages, prejudgment
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interest and competitive aspects of relevant markets. They frequently deliver testimony on these issues in federal and state courts, before the US International Trade Commission (ITC), Copyright Royalty Board, Federal Trade Commission, as well as other government organisations, and before domestic and international arbitration panels. Our services include: • asset management and valuation; • assessment of economic harm or damages from infringement or misappropriation; • evaluation of economic factors related to injunctions; • development of strategic licensing programmes and market intelligence; • definition of relevant IP and antitrust markets; • misuse and antitrust claims related to intellectual property; • price erosion and suppression claims; • royalty audits and compliance; • transfer pricing; • ITC Section 337 matters; • royalties and economic impact of RAND and FRAND commitments; • evaluation of commercial success; • economic significance of Hatch-Waxman settlements; and • irreparable harm analyses. Notable cases BRG experts provided testimony on damages in The California Institute of Technology v Broadcom Limited, in which a California federal jury found that Apple and Broadcom infringed three California Institute of Technology (Caltech) error-correction coding data transmission patents in Wi-Fi chips used in hundreds of millions of iPhones and other devices. The jury awarded the university approximately $1.1 billion in damages. On behalf of Caltech, BRG experts David Teece and Cathy Lawton provided expert testimony on damages. In Apple Inc v Wi-LAN Inc, BRG’s David Kennedy was the expert for Wi-LAN. The trial resolved damages for Apple’s infringement of two WiLAN patents related to voice call quality, upload speed and download speed for Apple iPhone LTE capability with Mr Kennedy opining, and the jury awarding, the appropriate damages for sales of infringing units through August 2018 was $85 million.
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“A repository of trust for many… Its experts seamlessly collaborate with trial counsel, but approach their damages and economic analysis work with scrupulous independence” In Apple v Qualcomm in the US District Court for the Southern District of California, BRG experts provided analysis of liability issues in antitrust litigation related to SEP licensing. Recent awards Global Competition Review has ranked BRG as a top 20 competition economics firm in the world in the GCR 100: Economics 20. Chambers ranked BRG as a “Band 1 Firm” in its 2020 Litigation Support guide. The firm also has numerous experts listed in Who’s Who Legal (WWL) and WWL has recognised BRG as one of the world’s top 15 consulting experts’ firms, noting BRG “boasts a high level understanding of economics, finance, statistics, public policy, and business strategy”. In addition, Forbes named BRG as one of “America’s Best Management Consulting Firms” in 2021.
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Main address 2200 Powell Street 12th Floor Emeryville CA 94608 United States T +1 877 696 0391 E info@thinkbrg.com Professional contacts Jeffery A Stec Co-chair E jstec@thinkbrg.com David Teece Executive chair E dteece@thinkbrg.com Catharine M Lawton Managing director E clawton@thinkbrg.com Other offices Atlanta, Baltimore, Beijing, Bogota, Boston, Buenos Aires, Calgary, Chicago, College Station, Dallas, Denver, Detroit, Dubai, Hong Kong, Houston, Johannesburg, Las Vegas, London, Los Angeles, Mexico City, Miami, Mumbai, Nashville, New Jersey, New York, Panama City, Pensacola, Philadelphia, Phoenix, Pittsburgh, Rio De Janeiro, Ryiadh, Salt Lake City, San Diego, Sao Paulo, Singapore, Sydney, Tallahassee, Tampa, Tokyo, Toronto, Washington DC
IAM Patent 1000 1657
Blank Rome LLP www.blankrome.com
Blank Rome’s IP practice covers every aspect of national and international patent, trademark and copyright law. Our attorneys are dedicated to helping clients develop, protect, strategically manage and maximise the value of their intellectual assets. Our IP team includes a team of 35+ dedicated patent attorneys located across the country. Our attorneys are all registered to practise before the US Patent and Trademark Office (USPTO) and are active in industries such as chemicals, medical devices, artificial intelligence, computer hardware and software, data processing, telecommunications, biotechnology and bioscience, pharmaceuticals, manufacturing, semiconductors, internet technology, energy and petroleum services, aerospace and transportation, fibre optics, media and publishing, and financial services. Patent litigation We have extensive experience litigating every aspect of US and international patent cases. With home offices in California, Delaware, Texas and Washington DC, we regularly appear in district courts in top jurisdictions across the country and have successfully represented clients in patent disputes with hundreds of millions of dollars on the line. We also regularly appear before the Patent Trial and Appeal Board (PTAB), the Court of Federal Claims and the Court of Appeals for the Federal Circuit. We have appeared in numerous infringement suits and declaratory judgment actions, representing both patentee and accused infringers. At the forefront of contested proceedings before the USPTO, we have filed more than 100 petitions for inter partes reviews, post-grant reviews and covered business method patent review. Blank Rome has a concentration in representing clients before the Court of Federal Claims, a national court in Washington DC that hears cases concerning monetary claims against the federal government. Because of our strong government contracts practice, we act for numerous companies that serve the government and sometimes seek to challenge procurement decisions on IP grounds. In addition, we leverage our strengths in appellate advocacy to defend or challenge lower court holdings in the Court of Appeals for the Federal Circuit.
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Patent prosecution We represent clients in every phase of the patent application process, from initial consultations with the inventor and prior-art searches through drafting of the specifications and claims; filing of the application; meeting with the patent examiner; responding to USPTO actions and, if necessary, appealing such actions before the PTAB; and enforcing or defending infringement claims. We file approximately 1,600 US and foreign patent applications each year and manage more than 28,000 active patent applications for 1,500+ clients. In addition to traditional patent prosecution services, we help clients develop their own invention disclosure processes and incentive programmes to encourage inventorship and protect inventions with increased patent filings. Members of the team routinely visit client sites to present new or changing patent prosecution rules and to provide input during patent strategy meetings. Transactional/licensing Our patent team works with our market-leading government contracts team on patent transactional matters. Many of the government contracts we work on involve billions of dollars, with much of the value of those deals tied up in sensitive intellectual property. We also provide legal counsel concerning a broad range of issues involving IP monetisation; licensing contracts and agreements; university tech transfer; due diligence for complex business transactions; antitrust; trade secrets; cybersecurity; and insurance coverage. About Blank Rome Blank Rome is an Am Law 100 firm with 14 offices and more than 600 attorneys and principals who provide comprehensive legal and advocacy services to clients operating in the United States and around the world. Our professionals have built a reputation for their leading knowledge and experience across a spectrum of industries and are recognised for their commitment to pro bono work in their communities. Since our inception in 1946, our culture has been dedicated to providing top-level service to all of our clients and has been rooted in the strength of our diversity and inclusion initiatives. We advise clients on all aspects of their
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businesses, including intellectual property and technology, commercial and corporate litigation; consumer finance; corporate, M&A and securities; environmental, energy and natural resources; finance; restructuring and bankruptcy; government contracts; insurance coverage; labour and employment; maritime; international trade; matrimonial; products liability; mass torts; policy and political law; real estate; tax, benefits and private client; and white collar defence and investigations. For more information, visit BlankRome.com.
Main address One Logan Square 130 North 18th Street Philadelphia PA 19103 6998 United States T +1 215 569 5500 E info@blankrome.com Professional contacts Dipu A Doshi Partner E ddoshi@blankrome.com Russell T Wong Partner E rwong@blankrome.com Other offices Chicago, Cincinnati, Fort Lauderdale, Houston, Los Angeles, New York, Pittsburgh, Princeton, San Francisco, Shanghai, Tampa, Washington DC, Wilmington
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IAM Patent 1000 1659
Borden Ladner Gervais LLP www.blg.com
As the largest, truly full-service Canadian law firm, Borden Ladner Gervais LLP (BLG) delivers practical legal advice for domestic and international clients across more practices and industries than any Canadian firm. With over 725 lawyers, IP agents and other professionals, BLG serves the legal needs of businesses and institutions across Canada and beyond – from M&A and capital markets to disputes, financing, and trademark and patent registration. BLG’s IP group works closely with you to make protecting and enforcing your intellectual property a top priority. Many of our professionals hold advanced degrees in engineering, technology and scientific fields, have extensive litigation experience and publish in peer-reviewed journals – bringing an insider’s understanding to your most challenging IP issues within Canada and globally.
Copyright With today’s immediate access to digital media, copyright protection and enforcement can significantly affect your bottom line. Whether protecting your copyright or defending them from infringement claims, working with a trusted, proactive team of advisers who can address complex copyright issues across numerous industries and help achieve your business’s goals is critical. Our experience and multidisciplinary approach provide comprehensive assistance in a range of areas, including: • copyright due diligence; • litigating copyright issues; • managing copyright portfolios; • copyright protection, including registration; • copyright enforcement and licensing; and • government copyright policies and legislation.
Patents BLG’s patent professionals can help you maximise assets and devise strategies to protect and manage risk in a global market. Our team can assist you with a wide range of services across the spectrum of science and technology, including: • worldwide patent portfolio strategy planning, analysis and development; • patentability, infringement, validity and freedom-to-operate opinions; • Canadian, US and international patent application preparation and filing; and • cost-reduction and cost-benefit analyses of patent strategies.
Litigation Intellectual property is one of your most valuable assets. We understand the value of intellectual property and the need to enforce and defend your IP rights. Whether you are pursuing infringers or defending against allegations of IP infringement or misappropriation, it is essential to have an experienced team of vigilant advocates on your side. Our professionals speak your language and bring together the best of both worlds: the trial experience to communicate highly technical and legal issues to judges, and the technical expertise to help you address IP issues. Our team includes lawyers who specialise in pharmaceutical litigation, including issues with Patented Medicines (Notice of Compliance) Regulations.
Trademarks A trademark’s success hinges on having an experienced legal team that can provide comprehensive trademark portfolio management and enforcement services, and offer sound advice on maximising opportunities in an evolving global marketplace. We can help you plan and implement programmes to clear, select, register and enforce trademark and trademark-related rights. Our professionals will work with you to understand your needs in a variety of areas, including: • brand management; • operations, business goals and industry; • packaging and advertising; and • opportunities and threats.
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Licensing BLG’s licensing group can structure comprehensive licensing transactions by exploring the technology’s lifecycle, its potential applications to other areas and market direction. We can help you develop and capitalise on your IP portfolio by negotiating and drafting licensing agreements, as well as trademark, copyright, patent, trade secret and know-how licences. Industrial designs Protecting the aesthetic appearance of your product is a key part of a comprehensive IP
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“Its bench strength and technical prowess are simply undeniable… The life sciences are a forte” strategy. Industrial designs (design patents in the United States) can provide effective protection against competitors, particularly in industries susceptible to imitation. Our team works with clients across a broad range of industries, including transport, machinery, small/large appliances, furniture, fixtures, garments and footwear, computers and electronics. We also assist with electronic icons, graphical user interfaces and designs where colour is now protectable as part of a design.
Main address 100 Queen Street Suite 1300 Ottawa ON K1P 1J9 Canada T +1 613 787 3598 F +1 613 230 8842 E kpejemsky@blg.com Professional contacts Jason Howg National leader E jhowg@blg.com Other offices Calgary, Montreal, Ottawa, Toronto, Vancouver
Awards and recognition BLG has been recognised as a leading law firm by some of the most prestigious national and international legal publications including Chambers Canada (2021), which ranked BLG in Band 1 – the highest level of recognition – in 11 practice areas and recognised 125 lawyers. Members of our IP group have also received numerous distinctions for their expertise by some of the most renowned IP publications. The WTR 1000 (2021) recognised BLG as a gold-tier firm for the eighth consecutive year and named five BLG professionals in its list of globally recommended trademark professionals.
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IAM Patent 1000 1661
Brion Raffoul LLP bripgroup.com
Brion Raffoul LLP is a premier Canadian IP boutique firm located in Ottawa. Since our founding in 2008, our firm has been committed to providing excellent quality service in a timely manner to meet all of the IP needs of our clients. Our IP and technologyfocused lawyers are known for offering practical, business-oriented legal advice that centres on protecting your strategic intellectual property, as well as navigating competitors’ IP rights and the IP landscape. Brion Raffoul’s team of lawers and patent and trademark agents are exceptionally skilled in securing and managing IP assets globally. Our patent agents, with backgrounds in engineering and other scientific disciplines, are highly experienced in procuring patents in cutting-edge fields such as artificial intelligence and machine learning. We offer a complete suite of IP services that includes managing patents, trademarks and design registrations in Canada, the United States and worldwide. We are able to provide our IP services in English, French, Spanish and Chinese. We have a strong Canadian client base that includes local inventors, small, medium and large businesses, as well as multinational corporations, universities and Canadian government agencies. Our clients operate across a broad spectrum of technical domains, including artificial intelligence, cyber security, telecommunications, electronics, mechanical inventions, heavy equipment, consumer products, sports apparel, metallurgy, oil and gas, microbiology and pharmaceuticals. From start-ups to universities and government agencies to both private and publicly traded companies, our tailored strategies help protect the IP interests of our clients worldwide. Through our robust international network of associates, we protect our clients’ IP assets throughout the world. In addition to our Canadian clients, we represent a broad array of foreign clients seeking to protect their intellectual property in Canada both directly and through foreign associates. Using a results-based approach that has provided us with an enviable track record of success for our clients, we have developed a solid reputation with our foreign associates. We pride ourselves in providing timely, effective, and practical advice at reasonable rates.
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Patent services • Patentability searches and opinions • Patent drafting, filing and prosecution services • International and Canadian patent application filing and prosecution • Infringement and validity assessments • Due diligence reviews of patent portfolios • Invention mining assistance for companies • Advice and consultation on effective IP management and procurement strategies • Patent portfolio management Trademark services • Trademark branding strategies • Canadian and international trademark clearance searches and opinions • Canadian and international trademark filings, prosecution, registration and renewals • Trademark monitoring and watch services • Trademark licensing and assignments • Opposition and cancellation proceedings • Trademark portfolio management Design services • Industrial design searching of Canadian and international databases • Industrial design application preparation, filing and prosecution for any industrial product • Industrial designs registrability opinions • Industrial design infringement assessments • Infringement dispute resolution Copyright services • Strategic advice on copyright protection • Copyright registration • Copyright licensing agreements • Copyright disputes related to software copyright infringement Legal services • Strategic IP advice on the management of registrable and non-registrable IP assets, such as the interplay between managing company trade secrets and patents • IP infringement dispute resolution services, such as mediated settlements • Negotiating and drafting settlement agreements along with effective cease and desist letters • IP licensing and procurement strategies
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• Due diligence on IP purchases or licensing agreements • Infringement opinions • Freedom-to-operate and validity opinions • International IP portfolio management, including coordinating foreign contentious patent proceedings (opposition hearings, litigation, and/or arbitration) • Customised IP ownership agreements, software licence and service agreements, end-user licence agreements, material transfer agreements and non-disclosure agreements • Consulting on trade secret strategies and management • Reviewing and revising employment agreements and consulting contracts to ensure corporate ownership of intellectual property developed by employees and contractors
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Main address 329 Churchill Ave N Ottawa ON K1Z 5B8 Canada T +1 613 521 8844 E nraffoul@bripgroup.com Professional contacts Natalie Raffoul Managing partner E nraffoul@bripgroup.com Art Brion Founding partner E abrion@bripgroup.com Sample client list • Element AI Inc • Husqvarna AB • Natural Resources Canada
IAM Patent 1000 1663
Brooks Kushman PC www.brookskushman.com
Brooks Kushman PC is a full-service IP firm, serving clients nationally and internationally from offices in Michigan and California. With more than 70 IP professionals who specialise in various technical disciplines, we proudly represent many of the world’s largest corporations and major educational institutions, as well as small to mediumsized companies. In over 30 years of practice, Brooks Kushman has earned a reputation for providing leading IP strategy and counseling with a keen focus on clients’ business objectives. We work with clients around the globe and across many industries to protect, enforce, and monetise their intellectual property, including patents, trademarks, copyright, and trade secrets. Our mission is to generate value for our clients’ businesses, which we achieve through superior IP counsel, technology solutions, supportive working relationships, and the drive to earn our reputation every day. Patent prosecution Our patent practice is regularly recognized for our level of excellence by leading industry organizations and is ranked among the top patent firms in the United States in terms of patent filings. Our patent practitioners, who are trained in a variety of disciplines, harness the combined technical expertise and legal prowess that clients around the world turn to for expert patent counsel. Our attorneys strive to obtain the most effective and efficient patent protection for our clients, leveraging our vast experience to secure patents for many types of innovations involving mechanical, electrical, chemical, computer software, life sciences, biomedical, and product design arts. IP litigation Brooks Kushman’s skilled and experienced litigators are known for achieving outstanding results that clients demand. We have represented plaintiffs and defendants in intellectual property and other technology-related disputes in federal, appellate, and state courts around the country. We have also represented clients before administrative bodies, including the U.S. Patent Trial and Appeal Board and the International Trade Commission. Many of the world’s largest and most recognizable companies, as well as other businesses and innovators of all sizes, rely on
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Brooks Kushman to handle complex, high-stakes matters. Our litigation team has a proven track record of winning for our clients as plaintiffs and defendants throughout the nation. We efficiently represent each client with an assembled litigation team with complimentary talent and skills to give our clients a strategic advantage at trial. Post-grant proceedings We understand the intricacies and implications of post-grant challenges, how to staff them, what resources to deploy, and the technical issues at the heart of each matter. Our attorneys know what it takes to prevail in inter partes reviews, ex parte re-examination, post-grant reviews, and covered business method reviews. When appropriate, we coordinate post-grant efforts with parallel district court litigation and appeals, always keeping in mind the effect that a decision can have on a patent portfolio, market opportunities, and the bottom line. Preventively, our prosecution team develops and implements client-specific strategies to help insulate a patent portfolio from post-grant challenges. Our inhouse patent searchers track related post-grant proceedings, monitor patent filings from our clients’ competitors, and search for and examine relevant prior art to anticipate potential future challenges and institute measures to minimise potential risk. Broad perspective Brooks Kushman attorneys hold numerous advanced degrees in a wide range of technical disciplines, including chemical engineering, biomedical engineering, cellular and molecular biology, computer science, and electrical and mechanical engineering. We bring this knowledge to bear as we work with clients across many different industries, including chemical and biotechnology, cybersecurity and privacy,
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construction and home improvement, consumer products, electrical and computer technology, e-commerce, food and beverage, IT services and solutions, life sciences, medical devices, and mechanical and industrial manufacturing. To further enhance our perspective, our attorneys have a wealth of practical client-side experience. Nearly one-third of our attorneys have served as in-house counsel and many others have worked as engineers before joining the firm.
Main address 1000 Town Centre Suite 2200 Southfield MI 48075 United States T +1 248 358 4400 F +1 248 358 3351 E fangileri@brookskushman.com Professional contacts Frank Angileri President E fangileri@brookskushman.com Sangeeta Shah Chief executive officer E sshah@brookskushman.com Other offices Los Angeles
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IAM Patent 1000 1665
Charles River Associates www.crai.com
Charles River Associates (CRA) is a leading global consulting firm that offers economic, financial and strategic expertise to major law firms, corporations, accounting firms and governments around the world. Our experts bring a unique combination of cutting-edge research, state-of-the-art methods and proven experience to bear on our clients’ most complex challenges. CRA specialises in management consulting and economic litigation. Our senior-led teams include leading academic experts and business leaders with experience across industries. Because of our proven skills in complex cases and exceptional strength in analytics, clients depend on our objective, fact-based advice for their high-profile, high-stakes matters. About our IP practice CRA’s IP experts advise on IP matters involving patents, trademarks, trade secrets and copyright. We have experience at every stage of the value chain, from IP development through commercialisation and enforcement. Our industry knowledge and expertise in economics, finance, accounting and business strategy make us uniquely qualified to understand and convey the value and impact of proprietary rights in the marketplace. Our consultants prepare, communicate and defend well-supported positions based on comprehensive analysis and provide our clients with the depth and breadth of skills that the IP litigation environment demands. Our consultants have both ‘real world’ transaction and valuation experience and courtroom experience that enhances CRA’s credibility and depth in both contexts. Courtroom expertise Courts increasingly require rigorous economic analysis in the determination of damages awards. Law firms retain CRA for expert testimony and analysis in IP-related litigation. Our consultants provide economic analysis, advice and testimony for IP disputes, including patent, trademark and copyright infringement, misappropriation of trade secrets and antitrust counterclaims. Our experts have assessed damages in thousands of disputes, including civil litigations, arbitrations, administrative proceedings and international arbitrations. CRA’s economic expertise has also
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been used for antitrust counterclaims, commercial success determinations for abbreviated new drug application and PTAB matters, FRAND determinations for standard-essential patents, pharmaceutical pay-for-delay settlement cases and International Trade Commission Section 337 investigations. Transaction, valuation and business advisory CRA provides valuation, business and financial advisory services to help clients execute IP licensing programmes and other IP-rich transactions. Our consultants have a broad range of hands-on transactional experience developed both at CRA and in prior managerial positions in industry, government and academia. Our consultants have a deep understanding of licensing practices and structures in multiple industries and contexts. We assist at all stages of the transactional process, including strategy development, identifying and evaluating licensing opportunities, and ongoing licensing and settlement negotiations. An interdisciplinary approach to intellectual property While CRA has a dedicated IP practice, intellectual property is often at the heart of disputes across many of our litigation-based practices. Colleagues in our life sciences, competition, finance, investigations and transfer pricing practices frequently advise on high-stakes matters involving IP rights. This cross-practice approach has broadened CRA’s reach and enables us to support clients with deep industry know-how and a highly tailored, multidisciplinary approach to solving problems. For more information about our services, visit www.crai.com/services/intellectual-property.
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“Virtually unrivalled in terms of its depth in intellectual property… Professionals who have done themselves and their clients proud in complex and highstakes infringement disputes”
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Main address One South Wacker Drive 34th Floor Suite 3400 Chicago IL 60606 United States T +1 312 357 1000 F +1 312 357 1001 E dmcgavock@crai.com Professional contacts Daniel M McGavock Vice president E dmcgavock@crai.com Other offices Boston, Brussels, Dallas, London, Munich, New York, Paris, Salt Lake City, San Francisco, Sao Paulo, Sydney, Toronto, Washington DC, Zurich
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Clark+Elbing LLP www.clarkelbing.com
Clark+Elbing LLP is a top-tier IP law firm focused on protecting and promoting innovations in the life sciences, chemistry, devices and diagnostics industries. Founded in 1996 by a group with a shared passion for science, our firm has a long-held reputation as a premier law firm for patents. We are proud to offer a robust team of IP attorneys with advanced degrees in science who are supported by a group of PhDs who are at the forefront of scientific innovation. We are curious, collaborative, precise and creative. We are unapologetic science enthusiasts with a deep appreciation for technology. We understand what it is, how it works, why it matters and what it is worth. Clients Clark+Elbing represents clients at the forefront of scientific discovery and technological innovation. From universities, medical centres and companies of all sizes to the investors who back them, we represent leaders in their respective fields. Our practice encompasses intellectual property in the areas of life sciences, chemistry, devices and diagnostics. How we work While other law firms may claim that they think “outside of the box”, we are not confined by such platitudes. Our creative problem solving is informed by sound legal analysis and driven by the same passion for discovery that energises our clients. We share clients’ passion of science as well as their business vision, and together we find the path that gets them there. As IP attorneys with advanced degrees in science, we understand complex scientific principles, so no time or resources are wasted on basic instruction. We offer a focused, consistent team of experts that stays involved with clients throughout the IP lifecycle. Our partners remain actively involved in all aspects of representation. Our team works side by side with clients’ executives and scientists, providing a high level of efficiency and effectiveness. With our deep experience in the scientific, strategic and legal aspects of intellectual property, we are up to speed from the word ‘go’.
We advise on all aspects of patent prosecution in both the United States and worldwide, from receiving an invention disclosure and determining inventorship through to obtaining the patent and protecting it through post-grant proceedings. We work with clients to maximise the patent term and lifecycle for innovations. Our expertise covers a broad spectrum of technical areas, including the life sciences, chemistry, devices and diagnostics industries. Corporate and investment diligence Understanding the value of a company’s IP assets can influence prices in M&A, financing and licensing transactions. We take a broad view of intangible assets and analyse all of a client’s intellectual property, including patents, patent applications, licensing agreements, know-how and trademarks, to assess their overall IP strengths and liabilities. We conduct due diligence reviews of intellectual property for acquiring and merging companies as well as for institutional investors and venture capitalists. We also assist our clients in diligence by these groups. Through working with corporate clients, including Fortune 500 companies and other global leaders with track records of success, we are intimately familiar with the business realities of intellectual property. Our work with investors also keeps us current on what the market looks for in evaluating IP assets. As we have extensive experience working on both sides of deals, clients benefit from a comprehensive view of the diligence process.
Patent prosecution
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“Many rely on Clark+Elbing for the best in patent prosecution and portfolio management… Deep well of scientific, legal and business knowhow”
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Main address 101 Federal Street 15th Floor Boston MA 02110 United States T +1 617 428 0200 F +1 617 428 7045 E ceinfo@clarkelbing.com Professional contacts James D DeCamp Partner E jddecamp@clarkelbing.com Sample client list • Genentech Inc • Massachusetts General Brigham • ModernaTX Inc
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Cravath, Swaine & Moore LLP www.cravath.com
Cravath has been known as one of the premier US law firms for over two centuries. Each of its practices is highly regarded and its lawyers are recognised around the world for their commitment to the representation of their clients’ interests. Intellectual property is one of Cravath’s core practice areas and a cornerstone of Cravath’s reputation as the firm of choice for clients with respect to their most challenging legal issues, most significant business transactions and most critical disputes. In the 19th century, the firm handled the telegraph patent litigation for Samuel Morse and mechanical reaper patent matters for Cyrus McCormick. Today, the firm’s expertise covers the entire innovation marketplace, spanning the consumer products, energy, healthcare, media and entertainment, pharmaceuticals, retail, technology and telecommunications industries, among others. Cravath also advises on matters in connection with emerging technologies, including artificial intelligence, blockchain and fintech, as well as data privacy and data security issues. Cravath’s strength in intellectual property stems in part from the firm’s unique culture. Cravath’s lawyers are trained as generalists and, over time, as partners, many focus on and deepen their expertise in specific areas. As a result, Cravath has a dedicated team of IP practitioners with an extensive understanding of patent and other issues, as well as experience in a broad range of trial and
“Otherworldly in terms of sophistication of representation and quality of service… Draws on incredibly broad legal, strategic and mercantile horizons to devise creative solutions”
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transactional work, which enables them to devise creative and commercially practicable solutions to complex problems. Cravath’s governance as a true partnership ensures that all clients receive the benefit of the firm’s overall knowledge, expertise and experience. Corporate IP practice Cravath has a broad-based corporate IP practice representing clients ranging from early‑stage startups to global companies in contexts across the full spectrum of IP disciplines, technologies and jurisdictions. Its lawyers work hand in glove with the firm’s premier M&A team to handle the many IP issues that arise in complex transactions, including issues relating to patents, trademarks, copyright, data, trade secrets, privacy and information security. In addition, Cravath provides strategic counseling, review and analysis in developing and managing IP portfolios, commercialising innovation‑based assets and optimising IP rights to ensure its clients are maximising value from their intellectual property in the United States and in non-US markets. Litigation IP practice Representing both plaintiffs and defendants at the trial level, on appeal, in investigations or in an advisory capacity, Cravath’s litigators are adept at handling a wide variety of matters involving patents, trade secrets, copyright and trademarks, as well as the commercial litigation that frequently arises from IP matters, such as antitrust and breach of licence claims. Whatever the subject matter at issue, the firm’s litigators bring to each case a trial lawyer’s courtroom perspective and deep trial expertise in a variety of matters. As a result, clients turn to Cravath to protect them from infringement of their most important intellectual property or to defend valuable products against claims of infringement. Cravath has supervised and coordinated IP disputes that span the entire globe. The firm regularly advises on national and worldwide IP strategy and the identification of patents and other assets that can be used effectively for offensive or defensive purposes. Its practice also includes participation in inter partes review matters.
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International clients Cravath regularly advises clients based outside the United States on a wide range of transactions, including cross-border mergers and acquisitions, international capital markets and bank financings, general corporate and Securities and Exchange Commission compliance matters. Its lawyers also handle US litigation, international arbitrations and investigations for non-US clients, and plan, coordinate and supervise multinational proceedings. The firm works closely with a network of leading law firms in major international markets, each of which has demonstrated a commitment to achieving the same high standards that clients expect from Cravath. Cravath and its lawyers have been recognised as leaders in intellectual property by numerous industry publications, including Chambers USA, Chambers Global, The Legal 500 US, Benchmark Litigation, The Best Lawyers in America, Law360, Managing Intellectual Property, U.S. News-Best Lawyers’ Best Law Firms and IAM.
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Main address Worldwide Plaza 825 Eighth Avenue New York NY 10019 United States T +1 212 474 1000 F +1 212 474 3700 E newyork@cravath.com Professional contacts Keith R Hummel Partner, litigation E khummel@cravath.com David J Kappos Partner, corporate E dkappos@cravath.com Other offices London Sample client list • Abiomed • Alarm.com • Amgen • Merck • Novartis • Prosus • Qualcomm • RELX • Technicolor • Unilever • Viatris
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Desmarais LLP www.desmaraisllp.com
Desmarais LLP is a trial boutique focused on the litigation of complex, often technology-driven disputes. Our lawyers have successfully tried some of the most important IP disputes in recent times for some of the largest companies in the world. We also handle significant appellate matters, having argued the appeal of numerous cases that have shaped the substantive direction and development of IP law. Clients Desmarais represents a diverse set of clients, including both plaintiffs and defendants, in a wide variety of technology areas. Our clients include Fortune 100 companies which rely on us to protect their most important IP assets and to defend them against claims that jeopardise their critical business interests. In addition, we represent smaller entities, including individuals, that seek to enforce the exclusive rights in their inventions or technology. Litigation Our firm handles all stages of litigation and we have significant trial experience in every major forum for technology disputes in the United States. We have successfully tried cases before juries and judges throughout the country, as well as before administrative bodies (including the International Trade Commission) and arbitration panels. At the appellate level, we have successfully briefed and argued cases before numerous appellate courts, including the Court of Appeals for the Federal Circuit. Desmarais and its lawyers have been consistently recognised in industry publications as leaders in its areas of practice, and virtually all are technically trained, with degrees in engineering or the sciences. In addition, the firm boasts an unusually deep bench of lawyers with real-world jury trial experience, particularly in the nation’s busiest districts for patent litigation. Whether for jury trial, bench trial or appellate argument, in whatever jurisdiction, our focused approach will bring a lean team of experienced and creative professionals dedicated to achieving clients’ business goals. Although the cases that we litigate span a wide range of subjects, Desmarais’s practice centres on technology-related disputes. Our lawyers have
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achieved successful trial results for clients in dozens of patent infringement cases, concerning technologies as diverse as semiconductors, telecommunications and networking, computer software, consumer electronics, pharmaceuticals, medical devices, biotechnology, chemicals and transportation. On appeal, we have preserved both offensive and defensive victories for our clients in various subject matter areas, obtained reversal of adverse results and steered the development of substantive law in our clients’ interests. Our technology litigation expertise extends well beyond patent infringement cases. We have also successfully litigated, for both plaintiffs and defendants, a wide range of other technologydriven disputes, including antitrust, unfair competition, trade secret, fraud and contract claims. Further, even beyond technology matters, we have built a strong track record of litigation success in other IP areas. For example, our attorneys have successfully conducted trials and appeals in high-profile trademark, trade dress and counterfeiting matters. Innovative fee structures In addition to our record of success, our flexible and innovative approach to fee arrangements sets us apart from other top-tier firms that handle the same types of large, complex litigation. We have abandoned the traditional (and frequently inefficient) billable-hour approach in favour of fee arrangements more closely tailored to clients’ interests. For clients that want predictability, our fee structures will accommodate a flat fee negotiated at the outset. For those interested in a shared-risk approach, we are open to contingent fee arrangements and hybrid fee structures tailored to meet the needs of our clients and the case.
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“Unparalleled in terms of expertise and client service when it comes to highstakes litigation… Has cracked the code of winning trials – on both sides of the ‘v’”
Main address 230 Park Avenue New York NY 10169 United States T +1 212 351 3400 F +1 212 351 3401 E pbondor@desmaraisllp.com Professional contacts Paul A Bondor Partner E pbondor@desmaraisllp.com Peter C Magic Partner E pmagic@desmaraisllp.com Justin PD Wilcox Partner E jwilcox@desmaraisllp.com Other offices San Francisco, Washington, DC Sample client list • Amazon • Apple • Avanos • Cisco • Enzo • Gigamon • Google • GSK • IBM • Intel • J&J • Microsoft
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IAM Patent 1000 1673
DeWitt LLP dewittllp.com
DeWitt LLP was founded in 1903 and is one of the 10 largest law firms in Wisconsin, with an additional presence in Minnesota. It has more than 120 attorneys practising in Green Bay, Madison and Metropolitan Milwaukee, Wisconsin, and in Minneapolis, Minnesota, and has the experience to service clients of all scopes and sizes. The firm is known for its work in a variety of legal areas including intellectual property, patents, trademarks and copyright law, construction litigation, corporate law, employment, environmental, employee benefits, estate planning, family business, family law, government relations, healthcare, litigation, real estate and tax law. Recognised as leaders in the IP field by IAM Patent 1000, WTR 1000, IP Stars, Martindale-Hubbell and others, our attorneys work with clients around the world in all matters related to intellectual property. Whether it is an invention or trademark, licensing or trade secret, we help our clients safeguard their competitive edge and protect their intellectual property against theft and misuse. DeWitt’s IP attorneys regularly work with our clients to navigate the complex patent process, protect international rights, resolve disputes and address countless issues often associated with business processes, innovation, ownership, know-how and entrepreneurship. We stay at the forefront of what we do best so that you can concentrate on what you do best. The firm’s client base is diverse. DeWitt represent clients of all scopes and sizes, ranging from non-profit organisations to universities, large corporations to international clients and individuals, just to name a few. In addition to clients based in the United States, our IP group has clients in the United Kingdom, Monaco, Australia, New Zealand, The Netherlands, India, Canada, China, Taiwan and Sweden. Distance and location are not an impediment to our working relationships
“Crowning jewel of the Madison legal market… Makes light work of the most complex patent briefs” 1674 IAM Patent 1000
with clients. We also have very close relationships with representatives in most foreign countries. DeWitt is, quite literally, capable of representing your company in all its IP needs, worldwide. Whether you require assistance with patent, trademark, copyright, acquisition, litigation, inlicensing, out-licensing or deal brokering, we have a highly qualified and successful team of attorneys and patent agents ready and able to assist. IP specialties Patents • Preparation, filing and prosecution in the United States and internationally • Litigation • Licensing • Opinions and searches • Freedom to operate • Infringement • Patentability • Validity • Due diligence (acquisitions, divestitures, mergers) • Portfolio analysis Trade secrets • Litigation • Licensing • Policy review
• • • • •
Copyright Registration Litigation Licensing Due diligence Portfolio analysis
Trademarks and unfair competition • Preparation, filing and prosecution in the United States and internationally • Litigation • Licensing • Opposition and cancellation proceedings • Opinions and searches • Availability • Infringement • Registrability • Validity
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Examples of industries DeWitt covers • Aerospace • Agriculture • Artificial intelligence software • Alternative energy • Animal science • Arts • Biofuels • Clothing • Communications • Construction • Consumer products • Cookware • Dairy and cheese science • Data processing • Defence technologies • E-commerce • Entertainment • Fluid handling • Food and nutrition • Hydraulic fracturing • Hydraulics • Jewellery • Kitchen accessories • Labelling • Laboratory instrumentation • Machining • Manufacturing • Medical devices • Medical products • Optics/micro-optics • Packaging • Paper pulp • Petrochemicals • Pharmaceuticals • Photo imaging • Plant science • Restaurant services • Security documents and notes • Semiconductors • Small-batch distilleries • Sporting goods • Transportation • Veterinary products • Video and voice analytics
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Examples of technologies DeWitt covers • Bio medical • Biotechnology • Chemical • Computer sciences • Electrical • Electromechanical • Green technology • Industrial • Information technology • Life sciences • Mechanical • Nanotechnology • Software More information is available at dewittllp.com. Main address 2 E Mifflin Street Suite 600 Madison WI 53703 United States T +1 608 255 8891 F +1 608 252 9243 E info@dewittllp.com Professional contacts Christopher M Scherer Intellectual property group co-chair E cms@dewittllp.com Joseph T Leone Intellectual property group co-chair E jtl@dewittllp.com Other offices Brookfield WI, Minneapolis MN
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Duff & Phelps LLC, a Kroll business www.duffandphelps.com
For nearly 100 years, Duff & Phelps has helped clients make confident decisions in the areas of valuation, real estate, taxation and transfer pricing, disputes, M&A advisory and other corporate transactions. Duff & Phelps, a Kroll business, is a recognised leading provider of valuation, transfer pricing, consulting and expert witness services related to IP rights and transactions. We offer a comprehensive suite of services designed to assist companies, attorneys and investors in the management of their intellectual property and intangible assets, including patents, trade secrets, trademarks and copyright. We provide our clients strategic assessment of IP assets’ use. Our professionals have a wealth of experience addressing the full range of IP-related challenges, including: • litigation, arbitration and damages expert testimony in federal court, state court, international arbitration and other venues; • management, strategy and licensing; • intangible asset valuation; • tax and transfer pricing; • protection and investigation; and • transactions. For more information, visit www.duffandphelps. com. About Kroll Kroll is the world’s premier provider of services and digital products related to governance, risk and transparency. We work with clients across diverse sectors in the areas of valuation, expert services, investigations, cyber security, corporate finance, restructuring, legal and business solutions, data analytics and regulatory compliance. Our firm has nearly 5,000 professionals in 30 countries and territories around the world. For more information, visit www.kroll.com.
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“Leading global advisory firm with a loyal following of Fortune 100 companies… Razorsharp IP analyses and acute awareness of technology industry trends and developments”
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Main address 55 E 52nd Street 17th Floor New York NY 10055 United States T +1 212 871 2000 E chris.bakewell@duffandphelps.com Professional contacts Chris Bakewell Managing director E chris.bakewell@duffandphelps.com Julia Rowe Managing director E julia.rowe@duffandphelps.com Other offices Beijing, Buenos Aires, Dubai, Dublin, Frankfurt, Hong Kong, London, Madrid, Mexico City, Milan, Moscow, Mumbai, Paris, Silicon Valley, Singapore, Sydney, Tokyo, Toronto
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Finnegan, Henderson, Farabow, Garrett & Dunner, LLP www.finnegan.com
Finnegan, Henderson, Farabow, Garrett & Dunner LLP is one of the world’s largest firms focusing on IP law. With offices in the United States, Asia and Europe, Finnegan practises all aspects of trademark, copyright and patent law, including counselling, prosecution, licensing and litigation. Finnegan also represents clients in IP issues relating to advertising, trade secrets, European patents and trademarks, international trade, portfolio management, the Internet, e-commerce, government contracts, antitrust and unfair competition. Finnegan offers full-service IP legal and technical experience in virtually every industry and technology, including consumer products, sports and fitness, textiles, food and beverages, automotive, biotechnology, pharmaceuticals, life sciences, chemicals, electronics, semiconductors, computers and software, industrial manufacturing, medical devices, clean energy and renewables, robotics, artificial intelligence, media and threedimensional printing. With its practice centred on intellectual property, the firm is able to create economies of scale and focus all resources on providing the best tools, practices and procedures for clients’ IP matters. More than 300 of Finnegan’s legal professionals hold degrees in scientific disciplines (over 60 hold PhDs), more than 200 are registered to practise before the US Patent and Trademark Office (USPTO) and nearly 40 are former USPTO patent examiners. With more than 50 years’ IP experience, Finnegan handles hundreds of litigation cases across the spectrum of IP-related venues, including district courts, the US International Trade Commission (ITC), the USPTO’s Patent Trial and Appeal Board (PTAB), the Federal Circuit and the US Supreme Court. Being one of the first firms to file a petition and subsequently argue a post-grant review of a covered business method case following the implementation of the America Invents Act, Finnegan is one of the busiest law firms representing petitioners and patent owners in post-grant review proceedings, with more than 90 covered business method reviews, more than a dozen post-grant reviews (relatively few of which have been filed) and more than 900 inter partes review proceedings. The firm files approximately 2,500 US and 1,000 foreign patent applications annually.
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“Sustained IP success… Global reach is a further selling point… Fantastic hit rate” Surveys conducted by legal and business publications consistently rank Finnegan as one of the leading IP law practices in the world. The firm is consistently ranked in the United States for contentious and prosecution patent and trademark work by publications including Managing Intellectual Property and The Legal 500, which have ranked Finnegan as a top-tier firm in nearly every significant IP category for more than 10 years. The publications cite the firm’s winning record, technical expertise and deep bench of talent in all aspects of IP litigation, including trials, appeals and proceedings at the USPTO and in ITC investigations. Representative engagements • Handled appeal after TCL received an unfavourable judgment of wilful infringement in district court, which resulted in a damages award of over $110 million. Convinced the Federal Circuit that the claims were patent ineligible under 35 USC § 101. The court reversed the district court’s ruling of no invalidity, vacated the entire judgment and awarded costs to TCL. Finnegan further persuaded the Eastern District of Texas to tax $2.35 million in costs. • Represented petitioner DJI at the PTAB in a series of inter partes reviews against five Synergy Drone patents, resulting in cancellation of all 76 claims related to unmanned aerial vehicles. • Appealed adverse inter partes review decision to the Federal Circuit for Kaken Pharmaceuticals and Bausch Health, arguing that the final written decision finding the patent obvious/ unpatentable was based on an erroneous claim construction ruling. The Federal Circuit overturned the PTAB’s claim construction of a key term in the patent, reversing the finding of obviousness that led to the finding of unpatentability and remanding to the PTAB. • Convinced the Federal Circuit to vacate and
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remand adverse PTAB decisions for client FOX Factory, finding the patent owner was not entitled to any presumption that the patented invention (related to bicycle chainring technology) was responsible for the alleged secondary considerations. On remand, the PTAB found all of patent owner’s claims unpatentable. • Provided strategic worldwide IP counselling to Vertex with a focus on Vertex’s Food and Drug Administration-approved cystic fibrosis products, including Kalydeco®, Orkambi® and Symdeko®, as well as several preclinical compounds, for several still-expanding patent portfolios protecting these approved and future products for treatment of cystic fibrosis.
Main address 901 New York Avenue North West Washington DC 20001-4413 United States T +1 202 408 4000 F +1 202 408 4400 E anand.sharma@finnegan.com Professional contacts Anand K Sharma Managing partner E anand.sharma@finnegan.com Mark D Sweet Chair E mark.sweet@finnegan.com Other offices Atlanta, Boston, London, Palo Alto, Reston, Seoul, Shanghai, Taipei, Tokyo Sample client list • AstraZeneca • Eli Lilly • FedEx • FIS • Google • LG • Nestlé • Otsuka • Philips • SharkNinja • Sprint • Toyota
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Fox Rothschild LLP www.foxrothschild.com
When a company’s intellectual property is on the line, experience is important. And for more than 113 years, Fox Rothschild has been ready to help. Founded in 1907 in Philadelphia, the firm now has more than 950 attorneys in 27 offices across the country. A full-service law firm that strives to provide clients the focus and service of a boutique, it handles a wide variety of legal matters – from antitrust to mergers and acquisitions, real estate to white collar criminal defence. Intellectual property is of particular interest to the firm. Fox attorneys understand copyright, trademark and patent law and are capable of addressing legal issues around the globe – including in Asia, Europe and Israel. For patents, they have experience with: • domestic and foreign prosecution, including re-examination, reissue, interference and post-grant review proceedings before the US Patent and Trademark Office (USPTO) and other authorities; • corporate due diligence investigations during licensing, acquisitions and other technologyrelated transactions to identify and define the scope of the relevant intangible assets; • counselling relating to new products, designs, structures, systems and methods; • opinions regarding patent invalidity and noninfringement; • patent portfolio strategies for early stage ventures and universities; and • drafting and negotiating international patent portfolio in-licensing and out-licensing agreements, security agreements using patents as collateral and agreements for the acquisition and sale of patent portfolios. In 2020 alone, a team of 45-plus registered patent attorneys and agents secured more than 1,200 patents worldwide, including nearly 500 in the United States. About 28% of those were for either electronics or software patents, 22% were mechanical and 17% involved pharmaceuticals and biotechnology. The list includes a Turkish coffee maker, an automated air-pillow dispenser and a treatment of infectious diseases involving glucose uptake inhibitors. Those statistics are, in part, the result of the firm’s ability to work closely with companies and their scientists, technicians and researchers. Fox’s
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IP department includes 110 professionals, more than a dozen of whom hold doctoral degrees in the sciences and engineering. There is a patent agent who holds advanced degrees in biology, chemistry and computer science and previously served as a research fellow at a Fortune 500 pharmaceutical company. Another agent holds a PhD in physical chemistry and is a named inventor on three patent applications. And one of the attorneys is a veterinarian who attended law school after veterinary school. The team also includes former USPTO examiners, former university and industry researchers and former in-house attorneys and corporate engineers. They understand the patent system because they have lived and worked in it for years. Fox always works to keep an eye on a company’s bottom line, designing legal strategies that align with a client’s overall goals and setting about to achieve them efficiently and effectively. At the same time, the firm also tries to leverage intellectual capital for its maximum value. The attorneys are dedicated to procuring, monetising and enforcing our clients’ IP rights. Over the years, Fox attorneys have represented a variety of clients, including Bristol-Myers Squibb, Merck, Rutgers University and Argo AI, an autonomous vehicle systems company. They’ve assisted Xerox Corporation with patent prosecution and strategic counselling regarding security printing technologies and MeiraGTx, a clinical-stage gene therapy company, perform IP due diligence that led to the successful closing of an initial public offering that raised $75 million in gross proceeds. Each day, Fox attorneys provide their clients the razor-sharp focus of a boutique coupled with the robust resources of a national firm. They make sure individuals and businesses — whether they be public or private, family-run or multinational — receive the firm’s unwavering commitment to client satisfaction.
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“Outstanding depth in patent practice… Large squad of technically adept attorneys standing ready to deploy on all complex patent briefs”
Main address 2000 Market Street 20th Floor Philadelphia PA 19103-3222 United States T +1 215 299 2000 F +1 215 299 2150 E marketing@foxrothschild.com Professional contacts Dianna El Hioum Partner E delhioum@foxrothschild.com Other offices Atlanta; Atlantic City; Blue Bell, Pa; Charlotte NC; Chicago; Dallas; Denver; Exton, Pa.; Greensboro; NC; Greenville, SC; Las Vegas; Los Angeles; Miami; Minneapolis; Morristown, NJ; New York; Pittsburgh; Princeton, NJ; Raleigh, NC; San Francisco; Seattle; Tysons, Va.; Warrington, Pa.; Washington DC; West Palm Beach, Fla; and Wilmington Del
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IAM Patent 1000 1681
FTI Consulting Inc www.fticonsulting.com
FTI Consulting is an independent global business advisory firm dedicated to helping organisations manage change, mitigate risk and resolve disputes – whether financial, legal, operational, political and regulatory, reputational or transactional. Individually, each practice is a leader in its specific field, staffed with experts recognised for the depth of their knowledge and a track record of making an impact. Collectively, FTI Consulting offers a comprehensive suite of services designed to assist clients across the business cycle – from proactive risk management to the ability to respond rapidly to unexpected events and dynamic environments. We are unmatched in the depth and breadth of expertise we bring to bear on our clients’ behalf. FTI Consulting’s global IP practice consists of more than 50 professionals with strategic, operational and courtroom experience. In addition to North America, we have professionals throughout Europe, Asia, Africa and Australia with IP capabilities. Our roster includes professionals with all relevant skills for a project and deep industry experience across the entire IP lifecycle, and our experts help clients deal with the myriad of challenges and complexities of successful IP management. We combine financial, competitive and industry information with our in-depth understanding of IP value to provide litigation support and damages quantification, as well as IP valuation, licensing and technology, and IP management and commercialisation. We have testified in federal and state courts, before arbitration tribunals, the International Trade Commission (ITC) and other administrative agencies. From early case assessment through trial, our experienced professionals help form and shape the case. We offer practical, hands-on experience that helps unravel the complexities of each situation to develop a solid litigation strategy. We assist in developing and responding to interrogatories and other discovery requests. We use proven methodologies to analyse financial records and business conduct and assist counsel in determining potential causes of action and potential recoveries. We critique opposing expert analyses, prepare and issue reports, offer financial advice in the settlement process and assist with witness preparation. We also develop and prove complex theories and articulate the resulting
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concepts in a convincing manner to both judge and jury. Our work in ITC Section 337 investigations often requires economic analysis to obtain an exclusion order blocking certain products from entering the United States. Analysing ‘the numbers’ and understanding the relevant markets are at the heart of: • establishing the existence of domestic industry; • demonstrating the commercial success of the patented invention; • determining appropriate bonding rates; • assessing commercially significant inventory; and • evaluating the EPROM factors and other issues related to the appropriate remedy, such as exclusion of downstream products. Our IP expertise also extends well beyond the courtroom to strategic and valuation consulting services, including: • intangible asset valuations for buying, selling or transferring intellectual property; • royalty rate determinations for licensing and strategic tax planning; • IP due diligence (divestiture or acquisition); • IP consideration/contribution in equity investment opportunities; and • IP best practices and benchmarking, including open innovation. Moreover, intangible assets can be the primary source for creating wealth and value in most industries worldwide, far surpassing the contributions of tangible assets. A such, we offer a wide range of services to meet a company’s intangible asset needs with experience in matters addressing: • purchase price allocations; • sale, disposition and transaction support; • restructuring and liquidation; and • accounting and tax regulations. Lastly, underreporting of royalties can occur for a variety of reasons, ranging from a lack of understanding of the agreement by the licensee to calculation errors, to poor internal controls. Our professionals work with clients to determine the amount of any unpaid royalties, prevent future losses and strengthen their relationships
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“You won’t find a weak spot in FTI’s business advisory practice… Comprehensive suite of services across all phases of the innovation process” with business partners in the future. Royalty compliance services include: • reviewing royalty agreements, royalty reports and royalty calculations; • determining whether the licensee’s understanding of its obligations matches that of the licensor; • auditing information and presenting findings and recommendations to the client; and • designing programmes for future monitoring of licensees.
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Main address 555 12th Street Northwest Suite 700 Washington DC 20004 United States T + 1 312 252 9329 E www.fticonsulting.com Professional contacts Vincent A Thomas Senior managing director E vince.thomas@fticonsulting.com Other offices Atlanta, Boston, Chicago, Dallas, Houston, Los Angeles, New York, San Francisco, Seattle
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Gardella Grace PA www.gardellagrace.com
Gardella Grace represents clients from start-ups to multinational corporations in a customised, personal manner that differs from those of larger IP firms. The professionals at Gardella Grace bring a variety of perspectives to each matter due to their uniquely broad experience in IP enforcement and patent procurement. The Gardella Grace team has directed multinational enforcement campaigns, procured large international patent portfolios, defended and defeated patents in post-grant proceedings, licensed IP portfolios, developed and implemented defensive and risk mitigation strategies for large corporations, and executed trade secret protection programmes.
also enables us to keep patent families ‘alive’, or pending, which in turn enables us to react to new and sometimes unanticipated developments in the market. The Gardella Grace team has broad technical aptitude arising from varied technical degrees and years of representations involving medical devices; polymerisation processes; genetic sequencing techniques; semiconductor fabrication and device structure; computer architecture; wireless telecommunications; network data communication; software ranging from microcode to application layer; signal processing; VLSI design; microstructured films; industrial equipment; and immunochemistry.
Patent procurement Because the firm has litigated, challenged and defended so many patents, its approach to prosecution is very different from that of most other firms. Overly broad patents are difficult to enforce and easy to defeat, and the firm understands the value in having every patent specification provide rich and detailed descriptions of all potential alternative implementations of a given innovation. This provides maximum flexibility in crafting patent coverage that blocks competitors from a given space. Gardella Grace also knows the importance of keeping patent families ‘lean’ by focusing resources on obtaining patent coverage in key jurisdictions – and avoiding the temptation to procure patents in countries where the IP rights provide little competitive leverage. Keeping portfolios lean
Post-grant proceedings Gardella Grace professionals are known for handling many of the highest-stakes post-grant matters ever adjudicated by the US Patent and Trademark Office. Greg H Gardella, the firm’s president, regularly serves as lead counsel for both challengers and patent owners in matters having stakes running into the billions of dollars – for example, he successfully defended the famous TiVo DVR patent, which generated well over $1 billion in licensing revenue. On the challenger side, Mr Gardella prevailed for St Jude Medical in an array of post-grant proceedings targeting numerous Medtronic patents directed to renal denervation. He has also prevailed in a wide variety of proceedings for Oracle, eBay and Roche Molecular Diagnostics.
“An experienced line-up of patent professionals... PhDs with in-house experience, scientific research prize-winners and crackerjack litigators”
Patent and trade secret litigation The team’s enforcement campaigns have included infringement suits in the United States, Europe and Asia involving both patent infringement and trade secret misappropriation. Gardella Grace’s principal, Cook Alciati, has experience specifically in complex commercial litigation, trade secret litigation, and trademark and copyright litigation across a broad range of technologies, including aseptic processing; electronics; LEDs; footwear; sporting equipment; and medical devices, including implantable devices, wound closure devices and obesity treatment devices. His unique understanding of clients’ needs and concerns come from years of inhouse experience.
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Mr Gardella was lead architect of many US and international bet-the-company enforcement efforts. These campaigns have involved infringement suits in the United States, Europe and Asia involving both patent infringement and trade secret misappropriation. Gardella Grace professionals are also intimately familiar with the latest litigation financing options available in the United States. The firm will tap these resources as appropriate to support clients’ enforcement campaigns and sometimes to help fund defence of lawsuits. IP transactions Gardella Grace professionals have decades of experience in negotiating and drafting outbound and in-bound licence agreements. The firm often monetise our client’s portfolios without the need to resort to litigation, although sometimes litigation does prove necessary. Many of Gardella Grace’s clients also have strategic business partners with which they work collaboratively to develop key intellectual property; many of the agreements we negotiate are in the context of such joint development efforts. The firm also crafts settlement agreements as an extension of successful patent and trade secret enforcement efforts. Many corporate clients are advised on the IP aspects of employment and supply agreements.
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Main address 80 M Street SE 1st Floor Washington DC 20003 United States T +1 703 556 9600 F +1 703 740 4541 E info@gardellagrace.com Professional contacts Greg H Gardella President E ggardella@gardellagrace.com Sample client list • 10X Genomics • Roche Molecular Systems • Saint Jude Medical • St Croix Surgical Systems • Steuben Foods
IAM Patent 1000 1685
Gilbert’s LLP www.gilbertslaw.ca
If you want a creative solution to a complex problem, contact Gilbert’s LLP. Gilbert’s is a boutique law firm based in Toronto. Gilbert’s is built to fit the legal and business needs of innovation-driven organisations in creative industries, including pharmaceutical, software, technology, energy, clean-tech, gaming, and media and entertainment. Launched in 2001 by managing partner Tim Gilbert armed with only a briefcase and a cellphone, Gilbert’s was founded on the aim to break out of the conventional approach to legal services. Our lawyers and staff work in an integrated, multi-talented and principled manner to enable clients to overcome complex and unconventional challenges with creative solutions. With a practice that encompasses litigation, patents, trademarks, government relations and IP disputes across borders, our firm excels where law, science, business and government intersect. Gilbert’s provides deep industry knowledge and excellent, responsive client service. Offering a robust and well-rounded team, the firm succeeds for clients because it strives to make business sense of the complex. We also investigate, vet and incorporate the use of new software technologies, including secure communication tools, to streamline our intra-office work and create deliverables. In April 2018, Innovation, Science and Economic Development Canada commissioned a Gilbert’s report on integrated approaches to managing intellectual property. The report included case studies of eight Canadian companies and recommends best practices for a successful IP strategy. Litigation Gilbert’s is at home in the courtroom and the boardroom. The firm represents some of the largest pharmaceutical and tech companies in bet-thecompany litigation. The firm has a reputation for managing international legal disputes and litigating Canadian cases. In the hotly contested pharmaceutical industry, the firm acts for both brand and generic manufacturers. In the emerging area of biosimilars, Gilbert’s is familiar with both sides of the industry. Prosecution
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“Thoughtful and imaginative… If you need a firm that will invest its all into a case, it is among the best – if not the best” Gilbert’s has a robust rights creation team, including professionals with strong scientific and technical expertise. Our team-based approach allows our prosecution professionals to incorporate insights from litigation successes to improve client outcomes. Copyright Gilbert’s acts for many major industry players, as well as individuals, in protecting valuable artistic and software assets. Vik Tenekjian leads the firm’s enforcement efforts. Key personnel Tim Gilbert – an IAM Patent 1000 Recommended Individual – is the founder and managing partner of Gilbert’s. Nisha Anand – an IAM Patent 1000 Recommended Individual – is a partner at Gilbert’s and a patent litigator with a doctorate in molecular biology, genetics and cancer. Ms Anand has particular expertise and a keen interest in the area of biologic drugs. She has extensive knowledge and experience relating to complex, cross-border pharmaceutical patent disputes, as well as regulatory aspects of the pharmaceutical industry. Ms Anand also has patent litigation experience in other industry sectors, including information technology and oil and gas. Zarya Cynader is a partner at Gilbert’s and licensed to practise law in Ontario and New York. Ms Cynader’s practice extends to all areas of intellectual property, including copyright, trademarks, industrial design, trade secret law and patents. She has experience coordinating complex pharmaceutical and IT patent litigation.
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Before Gilbert’s, Paul Banwatt served as chief operating officer and general counsel of the 3D scanning start-up Matter and Form Inc. He has spoken on law and emerging technologies for the Intellectual Property Institute of Canada, the American Intellectual Property Law Association, the Mexican Association for the Protection of Intellectual Property, INTA and the USPTO. Mr Banwatt’s practice includes high tech IP litigation, emerging technologies and entertainment law. Kevin Siu is a creative and practical advocate who represents clients in all manner of IP disputes. Mr Siu has fought for numerous clients from multinational pharmaceutical companies, video game developers, to local small businesses. Mr Siu also has experience in drafting patents, obtaining trademark registrations and negotiating agreements.
Main address Toronto Dominion Centre 77 King Street West Suite 2010 Toronto ON M5K 1K2 Canada T + 1 416 703 1100 F + 1 416 703 7422 E tim@gilbertslaw.ca Professional contacts Tim Gilbert Managing partner E tim@gilbertslaw.ca Nisha Anand Partner E nisha@gilbertslaw.ca Christine Tapper Office manager E christine@gilbertslaw.ca
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IAM Patent 1000 1687
Grüneberg and Myers PLLC www.gandmpatent.com
Grüneberg and Myers turned the traditional law firm model on its head, to set a new standard for in-depth, personalised, cost-efficient patent counsel. Now in its fourth year of operation, the firm has grown to a team of over 20 professionals led by three partners with substantial experience in patent prosecution, appeals, litigation, post-grant proceedings and counselling. The firm is 100% women and ethnic minorityowned, and includes diverse representation at all levels. Varied backgrounds strengthen the firm and provide wide-ranging perspectives. Cost-efficient high quality In an ever-changing market, Grüneberg and Myers offers cost savings for patent legal budgets. Because adaptations to modern business practices are difficult for traditional IP firms, Grüneberg and Myers started in 2017 to clean the slate and begin anew. With innovative office concepts and modern, paper-free law practice management systems, the firm reduced overhead, bringing prices to a very competitive level. Constantly updated, state-of-theart file and docket management software provides robust cybersecurity and increased efficiency, within a reasonable technology budget. A modern office concept encourages collaboration between team members, and high-tech systems enable attorneys to monitor matters and serve clients on the go. At the same time, the firm maintained high quality by recruiting experienced attorneys and staff. The founders have been ranked as individuals in the IAM Patent 1000 and Thomson Reuters’ Super Lawyers, respectively. The team includes graduates from prestigious universities such as Cornell, Duke, Penn State, George Mason University and George Washington University, as well as a Lynen fellow of the Alexander von Humboldt Foundation. Team members have previously worked at the International Trade Commission, the Court of Appeals for the Federal Circuit, the US Patent and Trademark Office (USPTO), in-house positions, large general practice firms and IP boutiques. The professionals at the firm include native German, Chinese and Japanese speakers. Experienced staff support the firm’s attorneys. While the firm itself started in 2017, the firm’s staff leadership has worked in managerial and supervisory roles in larger, high-volume patent
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prosecution firms, thus carrying forward decades of institutional knowledge in an innovative, efficient environment. Patent prosecution The attorneys at Grüneberg and Myers prepare and prosecute US and international patent applications with skill and experience. Using the full menu of options available at the USPTO, including examiner interviews, pilot programmes and accelerated examination, Grüneberg and Myers pursues optimised, strong patent protection for its clients. The firm prides itself on detailed analysis of office actions and other requirements with fast turn-around, avoiding the need for extensions and facilitating greater familiarity with cases, both for applicants and examiners. The firm also coordinates global patent prosecution and portfolio management. Often travelling and maintaining relationships with patent procurement firms globally, the attorneys at Grüneberg and Myers consolidate patent strategies and take the work off of in-house counsel. With its low-overhead model, Grüneberg and Myers can prosecute applications within competitive alternative fee structures. Post-grant proceedings, PTAB appeals, counselling and FTO The attorneys at Grüneberg and Myers have years of experience with counselling, freedom-to-operate, PTAB appeals and post-grant matters. In addition, the attorneys at Grüneberg and Myers have performed large product IP clearance projects and have helped clients to navigate pharmaceutical Hatch-Waxman exclusivity and complex strategies in patent subject matter eligibility. The attorneys of the firm have also achieved substantial positive outcomes for clients in re-examination and in inter partes review proceedings. When in-house counsel needs to operate on a budget, the firm can provide predictable costs. Clients Large, global corporations, including Fortune 50 companies, Fortune Global 200 companies, and Nikkei 225-listed companies trust Grüneberg and Myers with important roles in building and maintaining patent portfolios and in operating in competitive IP environments. The firm serves major
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“Rave reviews flood in… professional and attentive” companies in Europe, Asia and the Americas, supporting in-house counsel in the chemical, pharmaceutical, biotechnology, medical devices, construction, artificial intelligence and machine learning, electronics, and tools and machinery industries. Clients have expressed a high level of satisfaction with the firm’s procedural and substantive handling of their patent matters, as well as with the firm’s flexibility to offer competitive pricing.
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Main address 1775 Tysons Boulevard 5th Floor Tysons VA 22102 United States T +1 571 458 7790 E patent@gandmpatent.com Professional contacts Kirsten A Grüneberg Co-founder E kg@gandmpatent.com Eric Myers Co-founder E em@gandmpatent.com
IAM Patent 1000 1689
Han Santos PLLC hansantos.com
Work with a firm that represents more than just the matter at hand. We at Han Santos have been where you are, have sat where you sit – we can make your business goals a reality, in alignment with your technology and legal needs. Nexus of law, technology and business strategy Imagine discussing your invention with a patent expert who could code it from scratch or landing a licensing deal with advice from a senior lawyer who has negotiated hundreds of them. Picture what could be possible if your counsel not only advised you but also advised the policy makers themselves. What if your corporate counsel went beyond simply drafting your deals and had a proven track record of designing and implementing business plans and departmental strategies? At Han Santos your business goals are our business goals. We’ve sat in your seat; we’ve patented our own technologies and we’ve protected our own futures. Our experienced attorneys and technical experts provide expertise from all perspectives: legal, business and technology. Services that support your growth From company formation and governance to guidance on patents, copyright and trademarks, we provide support at all stages of organisational development – including capital formation, mergers and acquisitions, licensing and more. Work that is representative of technical accumen and diverse business expertise We serve companies of all sizes – from startups to Fortune 50 – in fields including software, e-commerce and biotech. Our clients all have one thing in common, however: each is at the top of its game. We deal in difficult technologies. We lean into the labyrinth of legal structures. We are pivotal privacy experts. In short, our business model is becoming experts in your business strategy and success. A focus on tech Han Santos shines in the technical space. Many of our attorneys have been senior working engineers
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“Distinguished by the maturity of its patent practice… Impressive technical credentials as well as business and industry insight” in industry and are able to efficiently converse with architect level engineers in their subject matter. Specific areas of expertise are software, semiconductors, telecommunications, fintech and cybersecurity. Unique expertise Our collective backgrounds include a diverse range of industries and technologies; the clients we serve and our areas of expertise are accordingly expansive. Highlighted associate backgrounds include: • three former general counsel for a leading Fortune 50 technology company; • former director of intellectual property for one of the largest telecommunications organisations in the United States; • current general counsel for a US national industry group, as well as a board member of a US standards-setting committee; • former Microsoft and Boeing developers familiar with systems programming, graphics programming, cloud infrastructure and microservices; • former telecommunications engineers capable of advising in 5G and core network technologies; • privacy experts (certified information systems security professionals and certified information privacy professionals) with deep knowledge of payments and a doctoral fellow in blockchain mathematics; • former semiconductor core architecture team members with both analog and digital expertise; and • former Boeing aerospace engineers with knowledge of modern composites.
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Diversity matters to us We are a fully minority-owned law firm and have the track record to demonstrate that diversity within our organisation provides a key competitive advantage; key to having the rare bona fide openness to any and all ideas critical to innovation and creativity; and key to and deep and authentic understanding of your business, your clients and you. Han Santos does not just seek to do business with clients. We seek to empower our clients to harness their unique identities into their competitive and economic advantage. In doing so, we believe that not only do we enable all those with different backgrounds to thrive in society, we then as a society share in the richness those diverse backgrounds. In this way, Han Santos seeks to embody the best of how a law firm can be a force for good.
Main address 500 Union Street Suite 800 Seattle WA 98101 United States T +1 425 786 9734 E info@hansantos.com Professional contacts Pat Santos Firm managing partner E patsan@hansantos.com Glen Johnson Practice lead IP counselling E glen@hansantos.com John Murphy Senior attorney special projects E john.murphy@hansantos.com Other offices New York, Washington DC
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IAM Patent 1000 1691
Haug Partners LLP www.haugpartners.com
Positioning itself for the future, as it has done throughout the course of its existence, Haug Partners LLP continues to evolve, meeting the needs of its clients and the challenges facing the legal community. Though much has changed since we opened our doors in 1997, our commitment to excellence, innovation and integrity in servicing our clients’ needs has not wavered. Originally established in New York City on the traditional IP practices of patent prosecution and litigation, the firm has grown and redefined its practice areas so that it now encompasses various areas of law to complement its founding areas of expertise. Our geographic expansion into Washington DC and Boston reflects that growth into a full-service IP practice. The mission of Haug Partners over its 20+year history has been to provide synthesised, multidisciplinary legal services for life sciences and technology businesses. Our size, structure and technical capabilities enable us to seamlessly assimilate our various specialties, thus efficiently assisting our clients in the creation, expansion and protection of their intellectual property. We align product, patent, regulatory and commercial life cycle strategies with the timelines, business goals and resources of those we represent. Our personalised guidance has been a hallmark of how we address our clients’ objectives. Haug Partners delivers added value by assembling a multidisciplinary team tailored to each client’s needs that thoroughly analyses a matter, develops a comprehensive legal strategy and then delivers an integrated solution. We continue to be second to none in the areas of IP preparation, procurement and litigation. The firm’s flagship New York City office boasts a state-of-the-art litigation suite with a fully functional mock courtroom. Our expanded and redefined service offerings include Food and Drug Administration compliance; antitrust litigation and counselling; due diligence; International Trade Commission actions; commercial investigations, compliance, risk mitigation and litigation; licensing and transactions; and trademarks and unfair competition. Haug Partners’ strength resides in its people. We have attorneys and advisers with advanced degrees in specialised technical fields and extensive industry experience. Our team includes former
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research scientists, in-house corporate counsel, government attorneys, US Patent and Trademark Office examiners and US Patent and Trial Appeal Board judges. Our core practice area since our inception has been the life sciences, where we have represented clients in the pharmaceutical, chemical, biotechnology, medical device and cosmetic space. Through our expansion, we now work across a broad range of industries, including in the aerospace, automotive, information technology, e-commerce, consumer electronics, telecommunications, energy, semiconductors, financial services and insurance sectors. We assist clients from the inception of an idea through commercialisation and next-generation planning. Our technical expertise, legal acumen and business judgement enables us to consistently deliver optimal outcomes. Haug Partners values contribution to the legal community through service in bar and industry associations, including the Federal Circuit Bar Association, the Licensing Executives Society, ChIPs, the International Trademark Association, the Intellectual Property Organization, the Patent Trial and Appeal Board, Biotechnology Innovation Organisation (BIO) International, NJ BIO, MassBIO and the Food and Drug Law Institute. Our frontline involvement in these organisations enables us to influence law and policy to the benefit of our profession. We also participate in numerous pro bono organisations, including Volunteer Lawyers for the Arts, New York Lawyers for the Public Interest, the Innocence Project, the Veterans Consortium Pro Bono Program, New Jersey Patent Rules Committee and the New York City Corporation Counsel. The firm has assisted pro bono clients in matters that include administrative proceedings before the federal government and at all levels of the court system, including before the US Supreme Court. Haug Partners is conscious of the dynamic environment of intellectual property, whether stemming from precedential court decisions, developing agency guidelines or game-changing bills passed by Congress. However, we recognise that the marketplace and the factors that influence our clients’ assets are global. To protect these assets worldwide, Haug Partners has developed and maintains close working partnerships with law firms in Germany, the United Kingdom, China
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“Agile, businessfocused contentious force… Well-rounded boutique with a deft counselling touch and cultivated prosecution and transactions capabilities”
Main address 10th Floor 745 Fifth Avenue New York NY 10151 United States T +1 212 588 0800 F +1 212 588 0500 E firm@haugpartners.com Professional contacts Kyle Haug Chief marketing officer E khaug@haugpartners.com
and Japan. We collaborate with all of our clients to provide comprehensive legal strategies consistent with the global, ever-changing legal, regulatory and commercial environment in which they operate.
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IAM Patent 1000 1693
Heim, Payne & Chorush LLP www.hpcllp.com
Heim, Payne & Chorush (HPC) represents plaintiffs and defendants nationwide in patent and antitrust litigation in a broad range of technologies. HPC attorneys have proven technical and legal skills that enable them to handle all facets of IP disputes and obtain the best possible results for clients. The firm provides counsel to large and small business entities, as well as individuals at both the state and federal levels regarding IP litigation. The firm has also developed extensive expertise in representing clients in post-grant proceedings at the US Patent and Trademark Office, including inter partes review proceedings, re-examinations and other contested proceedings. The firm employs attorneys holding various types of technical degrees and having the legal and technical expertise to handle highly complex cases. The founding partners each have vast experience in evaluating patent portfolios and developing strategies to enforce and license those portfolios. They are skilled litigators, able to understand and explain highly complex technical and legal issues to judges and jurors, and are known in the patent community for their abilities and results. The firm also has a tremendous amount of experience in patent infringement cases relating specifically to antitrust cases in the pharmaceutical industry. Again, the founding partners have invaluable experience in evaluating and developing strategies to successfully navigate these antitrust cases. The firm’s attorneys have the specific education and experience for prosecuting and defending actions in the federal and state courts, both at the trial and appellate levels in the IP areas relating not only to infringement, but also to unfair competition, trademark infringement, copyright infringement, trade secret misappropriation, breach of contract, non-compete covenants, tortious interference, fraud and other areas. The firm often shares the risks and rewards with clients, thereby aligning interests to produce a more synergistic relationship. HPC attorneys devote a significant portion of their time to litigation under fee agreements that link the fees to the results achieved. In addition to standard hourly rate arrangements, the firm has developed fee arrangements with clients that range from partial contingent fees that reduce hourly rates for a stake in the outcome, to full contingent arrangements. On
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the defence side, the firm is open to using reverse contingent fee arrangements where the amount saved for clients determines compensation. HPC attorneys treat every case as a representative model of the firm’s abilities and integrity, and work on behalf of clients has resulted in the successful resolution of several nationally and internationally publicised cases. HPC takes pride in its ability to partner with other attorneys and firms to bring the best possible trial team together for the benefit of the client. That is why so many clients and co-counsel contact HPC when they have a new case. Each HPC attorney has one or more degrees in electrical engineering, computer engineering, chemical engineering, aerospace engineering, physics, chemistry or biochemistry, and many are registered to practise before the US Patent and Trademark Office. Six HPC attorneys have completed judicial clerkships at venues including the US District Court for the Eastern District of Texas, the Southern District of Texas and the US Court of Appeals for the Federal Circuit. In addition to the Chambers USA recognition in Intellectual Property Litigation, HPC is ranked among the best in IP Litigation and Patent Litigation by US News & World Report and Best Lawyers in America.
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“High-powered patent litigation firm that punches well above its weight… Striking hit rate in the cases that matter most to clients”
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Main address 1111 Bagby Suite 2100 Houston TX 77002 United States T +1 713 221 2000 E ademers@hpcllp.com Professional contacts Michael Heim Managing director E mheim@hpcllp.com
IAM Patent 1000 1695
Hill, Kertscher & Wharton, LLP www.hkw-law.com
The law firm of Hill, Kertscher & Wharton LLP (HKW), based in Atlanta, Georgia in the United States, has earned an international reputation for achieving positive results in complex IP matters. From litigating sophisticated technology patents in the United States to successfully securing licensing rights for companies across the globe, the HKW team continues to provide top-tier, cost-effective solutions to individuals and organisations of all sizes. Founded in 1999, the firm has amassed considerable experience in a wide array of patent issues, including prosecution and procurement, litigation, portfolio management and licensing across industries such as computer arts, healthcare and pharma, electrical and mechanical engineering, chemistry and aerospace. According to firm co-founder and director of the IP practice group Steven G Hill, the firm’s success is based on an unwavering commitment to its clients. “We simply believe in earning our clients’ trust and confidence every single day, regardless of the magnitude of the challenges their matters present or the amount of work we must do to achieve the right outcome.” Patent litigation HKW continues to be a leader in the patent litigation field, having successfully resolved hundreds of disputes on behalf of clients worldwide. The firm has successfully handled patent-related claims in trial courts and appellate courts throughout the United States. Our litigation team has extensive experience in every phase of patent litigation, including due diligence, discovery, alternative dispute resolution, trial and appeals. We take a team-based approach in most cases, staffing the case based on the client’s needs, budget and objective of the litigation. Our litigation team leaders average over 25 years of law practice experience and are well versed in all aspects of high-stakes patent litigation. Most recently, our team successfully defended three computer manufacturers accused of infringing 25 US patents, with more than $1 million in attorney’s fees awarded to our clients.
procurement and protection process, including prosecution, licensing, portfolio management and strategic counselling. In the past five years, HKW’s patent experts have represented German, UK and Dutch organisations in a variety of matters before the US Patent Office, and have a proven record of positive outcomes in the filing of US national phase applications. Post-grant review Post-grant review of US patents continues to be an important tool in patent litigation cases. Our partners have amassed an impressive record in post-grant review trials, particularly in inter partes review (IPR) proceedings before the Patent Trial and Appeal Board. HKW’s team has been ranked in the Patexia IPR Intelligence Report as a top 20 law firm for its work in this field. HKW’s ability to obtain exceptional results for clients has not gone unnoticed. The firm’s patent attorneys are routinely recognised for excellence in the practice of law by their peers, as well as independent lawyer rating services such as the IAM Patent 1000, Best Lawyers in America, MartindaleHubbell, Thomson Reuters and Avvo. In addition to its thriving patent practice, HKW provides legal services to individuals and businesses in the areas trademark, copyright and trade secrets, as well as corporate transactions and governance, employment law and insurance coverage. We are committed to providing a diverse and inclusive workplace and treating all individuals with respect and dignity. For more information about how we can assist your organisation and leadership team, please visit www.hkw-law.com.
Patent prosecution and licensing Our team of proven patent lawyers brings significant experience to all phases of the
1696 IAM Patent 1000
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“Practises dynamically in intellectual property… Has an exemplary record of success in patent infringement battles”
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Main address One Overton Park 3625 Cumberland Boulevard Suite 1050 Atlanta GA 30339 United States T +1 770 953 0995 F +1 770 953 1358 E info@hkw-law.com Professional contacts Steven G Hill Director, IP practice group E sgh@hkw-law.com
IAM Patent 1000 1697
Intensity, LLC www.intensity.com
Intensity is a professional services firm that generates powerful research, analysis and expertise to solve the most complex challenges in the marketplace and courtroom, especially in the areas of economics, finance and statistics. Using worldclass academic training and industry expertise, Intensity’s professionals conduct thorough research and analysis, develop independent conclusions and articulate these conclusions in ways that help decision-makers – from corporate executives to judges and juries – make informed decisions. Intensity’s success centres on a simple formula of meticulous research, insightful analysis and effective communications. This formula provides top organisations with unmatched quality, reliability and responsiveness. The company is therefore proud to have clients that include Fortune 500 companies such as Microsoft, IBM, Novartis, MasterCard and Adobe, and to have established itself as a top-tier expert services firm among the Am Law 200 for high-stakes litigation and disputes. Here is an example of the many accolades bestowed on the company: Client testimonial: “We had a case with some tough economic issues in terms of isolating the effect of alleged conduct separate and apart from other factors that influenced competition and financial performance. Intensity rose to the challenge and quickly created an analysis that was both sophisticated and intuitive. Indeed, Intensity’s analysis successfully survived intense scrutiny from three opposing experts! It is always a pleasure working with the Intensity team.” Since the company’s founding in 2006, the core building block of success has rested on having an outstanding group of talented professionals. A fourtime winner of the San Diego Business Journal’s annual Best Places to Work award, Intensity understands that hiring the best ensures stellar work product and optimal outcomes for its clients. Intensity continues its impressive growth trajectory with dedicated professionals including analysts, associates, economists and experts. Headquartered in San Diego, Intensity’s professionals are located throughout the United States, including New York, San Francisco, Texas and Washington DC. Intensity is also proud to announce that four of its professionals are recognised as experts by IAM. This adds to the roster of recognised IAM experts
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dating back to 2014 and continuing annually ever since. Intensity has exceptional knowledge of the economics of intellectual property and technology across a spectrum of life sciences, electronics and other industries. The following two examples highlight our expertise: • A jury awarded $2.175 billion based upon the expert testimony of an Intensity economist, who provided trial testimony on behalf of VLSI Technology in patent litigation involving Intel’s microprocessors. • A jury awarded $752 million based upon the expert testimony of an Intensity economist, who provided trial testimony on behalf of Juno Therapeutics and Sloan Kettering in patent litigation involving cancer immunotherapy. The company continues its ambitious plans to build upon historic successes. Please contact us any time!
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“High-stakes commercial and patent litigation is meat and drink to Intensity… Incredible work ethic, responsiveness, timely delivery and quality of output”
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Main address 12730 High Bluff Drive Suite 300 San Diego CA 92130 United States T +1 858 876 9101 F +1 858 876 9102 E info@intensity.com Professional contacts Laura Valera Director E laura.valera@intensity.com
IAM Patent 1000 1699
Lee & Hayes, PC www.leehayes.com
Lee & Hayes is a pre-eminent IP practice with expertise that goes beyond the basics of intellectual property. More than 80 seasoned IP specialists provide patent, trademark, copyright and litigation services to individuals and companies ranging from start-ups to members of the Fortune 100. Lee & Hayes’ corporate and US Food and Drug Administration practices synergise with our IP core to plan and execute comprehensive business strategies for our technology and life sciences clients. Lee & Hayes rose to prominence championing the understanding that intellectual property and its complimentary disciplines are not a commodity but an asset class. With this mantra central to all we do, we partner with our clients creatively and nimbly, in a value-based way that energises each of their businesses. At Lee & Hayes, we are more than intellectual property; we are effective and valued partners. This unique model gives Lee & Hayes unparalleled insight when servicing clients – but do not just take our word for it: • Lee & Hayes has been recognised by US News & World Report – Best Lawyers 2020 as a best law firm; • The firm has been ranked as a top-quality US patent firm overall and for information technology by IAM for seven consecutive years; and • Our attorneys have been recognised by Super Lawyers as 2020 Rising Stars.
IP litigation Lee & Hayes’ nationally recognised IP litigation attorneys enforce and defend clients’ patent, trademark, trade dress and trade secret rights in every possible venue, including federal district and appellate courts, state courts, before the US Patent and Trademark Office and Trademark Trial and Appeal Board, and at the International Trade Commission. We represent individuals and companies ranging from start-ups to members of the Fortune 100. And with significant expertise challenging and defending the validity of patents through the inter partes review process, we craft and execute dispute resolution strategies focused on minimising disruption and expense to your business, while achieving excellent outcomes.
Our guiding tenets are as follows: • Clients first – Lee & Hayes represents a select number of premier clients worldwide and collaborates closely with them. • Intellectual property at the core – as intellectual property is often the most valuable asset of clients, we designed our firm with an array of sophisticated IP services at the core, supported by transactional, litigation and corporate services. • Innovation – Lee & Hayes continues to innovate IP strategy to help clients align their IP strategies with their business objectives, offering value-added insights on a wide range of IP-based, business-critical issues.
1700 IAM Patent 1000
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“Intuitive understanding of the business of intellectual property… Tremendously successful in realising monetary gains for companies operating at the cutting edge of technological innovation”
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Main address 601 West Riverside Avenue Suite 1400 Spokane WA 99201 United States T +1 509 324 9256 F +1 509 323 8979 E info@leehayes.com Professional contacts Richard Denenny President E richardd@leehayes.com Other offices Atlanta, Austin, Portland, Rochester, Seattle, Washington DC
IAM Patent 1000 1701
Lerner David Littenberg Krumholz & Mentlik LLP www.lernerdavid.com
Lerner David has been a globally renowned IP boutique for 50 years. While other boutiques sold out to large law firms, Lerner David has stayed true to its passion – teaming with clients to focus solely on building and protecting IP assets (patents, copyright and trademarks). Grounded in exceptionally high standards of professionalism, integrity and character, the firm’s attorneys and paralegals are highly sophisticated and committed to this mission. Having a reputation for effecting positive results for its clients – in patent and trademark offices, in court and at the bargaining table – it is the firm’s role as counsellors that remains paramount. It is the firm’s sound, practical advice that helps clients make informed decisions. Coupling a businessoriented approach with a broad international reach, Lerner David has succeeded in fostering long-term relationships with its clients. Practice areas • IP litigation • Post-grant proceedings (inter partes reviews) • US International Trade Commission (ITC) proceedings • Patent and trademark procurement • M&A diligence • Risk assessment/management • IP transactions • Clearance opinions • Copyright and computer software • Alternate dispute resolution • Privacy and data
“Rich history of providing sophisticated patent services to cuttingedge innovators… Consistently racks up the wins in a multitude of forums” 1702 IAM Patent 1000
IP litigation “When we need someone to really dig in and fight a good fight, we typically turn to Lerner David.” This Fortune 100 client recognised our firm’s focus on detail and achieving business goals. Our experience in technology and IP procurement enables the firm to readily distil complex information and present creative legal arguments, such that the arbiter is more apt to embrace our positions. In 2015-2020 the New Jersey Law Journal named Lerner David as the winner of its Intellectual Property Litigation Department of the Year award. Post-grant proceedings (inter partes reviews) Lerner David’s post-grant practice has always been active. Whether used as an alternative or adjunct to district court litigation, defending or attacking patents, we have the tools and experience to guide clients through any post-grant proceeding. ITC proceedings Lerner David’s foundation in technology and litigation has enabled it to swiftly navigate the complexities in Section 337 investigations. Lerner David has guided multinational clients in diverse industries and technologies before the ITC. Our lawyers have served as lead trial counsel for both complainants and respondents at the ITC, and have also acted as shadow or monitoring counsel on many other investigations. Patent procurement Our attorneys team up with clients to parlay critical inventive features into solid IP assets. The firm’s keen understanding of technology, Patent Office proceedings, licensing and litigation enables it to build portfolios with real-world value. Efficiencies are realised given our investment in a contemporary infrastructure and in our pool of talented paralegals. Trademark procurement Important for operating in today’s global economy, the firm has assisted clients with the selection of brands to be used around the world. This requires not only an understanding of different laws and legal systems, but also sensitivity to cultural implications of brands in different countries and regions.
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M&A diligence Lerner David’s full-service IP practice supports the skillset needed to measure and manage risk in product and technology acquisition. Focusing on the quality of a target’s intellectual property, as well as potential infringement risks, Lerner David provides valuable input to the M&A team. Having the foresight to visualise and plan the allimportant integration of the target intellectual property and products, Lerner David adds value before and after closing. Clearance opinions IP roadblocks can undermine the development, acquisition and success of a product. The firm’s clearance efforts lead to written opinions for business guidance, as well as the development of potential ‘design arounds’ that best position the product. Our experience in establishing robust due diligence programmes has resulted in far less litigation for our clients.
Main address 20 Commerce Drive Cranford NJ 07016 United States T +1 908 654 5000 F +1 908 654 7866 E international@lernerdavid.com Professional contacts Keith E Gilman Managing partner E kgilman@lernerdavid.com Marianne Kinsella Legal recruiting and attorney development administrator E mkinsella@lernerdavid.com Other offices Guangzhou, Tokyo
Privacy and data Lerner David leverages its technology expertise to navigate through an evolving and complex array of global requirements governing the privacy landscape. We assist clients in high technology areas assess and implement the compliance framework required for privacy and data management in today’s fast-moving business environment.
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IAM Patent 1000 1703
McAndrews, Held & Malloy Ltd www.mcandrews-ip.com
McAndrews, Held & Malloy is a premier, full-service IP and technology law firm. From world-class patent portfolio development, trademark, and design protection to its exceptional record of litigation success against highly regarded law firms, McAndrews excels at all things IP. That is why the firm is relied upon by industry-leading companies, as well as businesses and innovators of all sizes and in virtually every technical field. McAndrews is also uniquely positioned and structured to serve clients efficiently and effectively, providing exceptional lawyers, insights, service and value. Clients appreciate the firm’s collaborative, team-based approach, as well as the extraordinarily high levels of senior-attorney, hands-on attention our model affords. McAndrews’ IP-only focus results in our having distinct advantages in terms of both how we staff client teams and how efficiently, economically and effectively we serve clients. We also emphasise responsiveness and build long-term relationships with them. We earn their longstanding trust, as demonstrated by our strong retention record. In addition, at a time when there is a battle for talent in this country, we are also proud to note that over 70% of our attorneys have spent their entire career at McAndrews. Our track record of winning is truly exceptional, whether considering an exclusion order at the US International Trade Commission in a heralded trade secret case (Tianrui v ITC), winning a $254 million jury verdict (Stryker v Zimmer) or defending more than $1 billion in sales (Cordis v Abbott). Our courtroom experience also supports our post-grant practice at the PTAB, which is one of the most active in the country – a significant feat for a firm of our size. The experience in the courtroom also provides helpful perspectives when strategically developing patent, trademark, copyright and other IP asset portfolios, and as we counsel many clients on transactional issues. In fact, during the past five years alone, McAndrews has been involved in IP transactions representing a total value of almost $5 billion. In prosecution, McAndrews currently manages an active IP portfolio of tens of thousands of matters, including patent and trademark applications. Our firm is also among the top ten law firms to have secured issued design patents in the United States in 2020.
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Our attorneys have degrees in technical fields such as electrical, computer, chemical and mechanical engineering, and chemistry and biochemistry. Many have advanced degrees and almost all are registered to practise before the USPTO. Twenty percent of our lawyers and agents have a PhD in science, technology or engineering. Many also have prior work experience in technology and IP-focused industries. Our clients know that – along with technical and legal knowledge – our attorneys offer exceptional business sense. McAndrews prides itself on its progress on diversity and inclusion, and it continues to focus intently on those issues. While we do not typically recruit laterals, minorities and women usually make up a large percentage of our summer clerk classes. Each year McAndrews also awards a Diversity in Patent Law Fellowship stipend and paid summer clerkship to a diverse first-year law student.
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“Relied on for the right steer on any patent matter and for cogent allround strategic IP planning… Flair for litigation and trial work”
Main address 500 West Madison Street, 34th Floor Chicago IL 60661 United States T +1 312 775 8000 F +1 312 775 8100 E info@mcandrews-ip.com Professional contacts Eligio C Pimentel Shareholder E epimentel@mcandrews-ip.com Robert A Surrette President E bsurrette@mcandrews-ip.com Sample client list • Corning Inc • Navistar • Samsung Electronics Corporation • The Coca-Cola Company • VTech
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IAM Patent 1000 1705
McCarter & English, LLP www.mccarter.com
McCarter & English’s renowned IP team has more than 100 IP lawyers, technical specialists and patent agents with industry experience and graduate degrees in engineering and life sciences (including 30 PhDs and one MD). We draw on our experience in patent prosecution and litigation, technology licensing and transfer, corporate transactional, regulation and general business matters to assist clients in building and managing patent portfolios that best serve their strategic business goals – whether developing patent portfolios for pre-clinical products of early-stage companies or blockbuster biologics for major pharmaceutical companies. We work with client patent committees, research and development and product development groups, laboratory and research teams, engineers and scientists to identify appropriate patentable subject matter in order to devise patent prosecution strategies to maximise US and international protection. Patent prosecution Members of McCarter’s patent prosecution team have advanced degrees in fields such as molecular biology, cell biology, immunology, biochemistry, microbiology, organic chemistry and inorganic chemistry, and have years of pharmaceutical industry experience – including former scientific and in-house counsel positions – and former patent office examiners well versed in the intricacies of the USPTO. Our life sciences IP group prosecutes patent applications involving biomarkers, gene therapy, protein formulations, diagnostic assays, crystallography, ribonucleic acid interference, biofuels, genetic engineering, small molecule pharmaceuticals, medical devices, polymer chemistry, formulations and plant biotechnology. We prosecute antibody patents, including human antibodies, humanised antibodies, multi-specific and multivalent antibodies, antibody production and clinical uses of antibodies. We serve our life sciences clients in all facets of IP development, maintenance and enforcement. Our attorneys are as experienced and innovative when it comes to the development of strategies for protecting critical core technologies as they are in patenting new innovations based on clients’ immediate and long-term business goals. We help
1706 IAM Patent 1000
“Cavernous chest of resources to draw upon… Complete command of almost all fields of science and engineering and all types of patent activity” some of the biggest names in the biotechnology, pharmaceutical, university and life sciences fields to build and manage complex patent portfolios in order to protect blockbuster biotech and small molecule drugs and develop global strategic plans. Post-grant review The America Invents Act has shifted the landscape for patent challenges from the courts to the USPTO. Validity will primarily be decided in the USPTO and then shift to the federal district courts for infringement. Now, a successful challenge or defence requires both experienced patent prosecutors with significant knowledge of post-grant challenges before the USPTO and experienced trial lawyers for the discovery phase and oral proceedings before the board. We have a proven track record in inter partes reexamination, inter partes review and post-grant review of covered business method patents as both experienced prosecutors and trial lawyers. We have a multitude of active inter partes reviews and covered business method reviews and additional petitions that have already resulted in settlement. Team members have industry and academic expertise in material science, chemistry, biology, physics, engineering and software, and have worked in the most prestigious labs in the United States, Europe and China. Our trial lawyers have decades of experience of high-profile and successful trials and alternative dispute resolution.
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Litigation An intelligent approach to the pursuit of clients’ business objectives is a hallmark of our litigation practice. Our patent litigation team counsels leading life sciences companies with a pairing of experienced trial strategy and scientific depth. We advocate for clients in patent, International Trade Commission, Hatch-Waxman cases and Markman hearings in courts nationwide. Our cases involve pharmaceuticals, biotechnology, medical devices, surgical techniques, chromatography, immunochemical diagnostic devices, electrochemical biosensors, polymer plastics and medical lasers. McCarter combines broad experience in patent cases and IP disputes with a depth of technical and scientific knowledge, a thorough understanding of patent and IP law, experienced mastery of litigation strategy and jury trial skills. Transactions Our IP transactions team provides strategic advice to companies in all critical phases of development – from aiding pre-clinical earlystage companies seeking seed funding to structuring joint ventures and acquisitions for major pharmaceutical companies with blockbuster biologics. In coordination with our patent specialists, the team performs due diligence for licensing, acquisitions and funding of companies. This multidisciplinary approach, applied to every aspect of the transaction (eg, deal structure, closing strategies and research, development, manufacturing, marketing and regulatory compliance guidance), results in timely and cost-effective legal services for clients.
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Main address 265 Franklin Street 14th Floor Boston MA 02110 United States T +1 617 449 6500 F +1 617 607 9200 E info@mccarter.com Professional contacts Jonathan M Sparks Partner E jsparks@mccarter.com Other offices East Brunswick, Hartford, New York, Newark, Philadelphia, Stamford, Washington DC, Wilmington Sample client list • AbbVie Laboratories • Berg Pharma LLC • BioDelivery Sciences International • Hayward
IAM Patent 1000 1707
McDonnell Boehnen Hulbert & Berghoff LLP www.mbhb.com
McDonnell Boehnen Hulbert & Berghoff LLP (MBHB) provides creative, pragmatic business solutions through a variety of IP services, including litigation, prosecution and general client counselling. With offices in Illinois and California, MBHB provides comprehensive legal services to obtain and enforce clients’ IP rights, from navigating patent office procedures to litigating complex infringement actions. MBHB attorneys prosecute patent and trademark applications both in the United States and abroad, handle IP litigation matters in trial and appellate courts across the country, and counsel clients nationwide and worldwide on the enforcement and defence of their IP rights. MBHB attorneys are experienced in the procurement, licensing, enforcement and defence of patents, trademarks, copyright, trade secrets and unfair competition actions in a number of technological disciplines and product categories, including biotechnology and pharmaceuticals, cannabis, chemical, electrical, mechanical and materials, medical device and diagnostics, software and business methods, and telecommunications. MBHB devotes almost half of its practice to patent and trademark prosecution and counselling. The firm counsels clients on the management and development of their IP assets and crafts strategies consistent with their business goals. MBHB dedicates the rest of its practice to litigation. The firm is proud to stand at the forefront of legally complex, highly technical patent litigation. This uniquely balanced focus on both prosecution and litigation enables MBHB to approach a client’s needs from multiple perspectives. MBHB’s greatest resource is its people. Many of its attorneys have both worked and published in their respective industries. MBHB attorneys are admitted to practise law in at least one jurisdiction or are registered to practise before the USPTO. The MBHB professionals have first-rate legal and scientific credentials; they also speak the languages of law and science – and of the people they serve. All of the firm’s attorneys and technical advisers hold science or engineering degrees. Of these, nearly 50% hold PhDs or other advanced degrees. Comprising 65 attorneys and 10 technical professionals, MBHB provides effective and serviceoriented representation on a case-by-case basis. MBHB attorneys undertake each challenge with a full understanding of the client’s business plan
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and the ways in which the firm’s services can help each client achieve its goals. Regardless of MBHB’s role, the firm never loses sight of clients’ business objectives. MBHB clients know that they have entrusted knowledgeable, principled professionals who have their best business interests in mind with their legal issues and plans for the future. MBHB’s client list includes Fortune 100 companies, medium-sized companies, start-ups and academic institutions. MBHB has deep experience in patent filing and a capacity to handle a variety of patent filings, as evidenced in the volume of applications it files – the firm processed 7,103 patent applications (including national phase applications) in 2020 alone, to serve the majority of its clients that are prosecution oriented. Also in 2020, MBHB assisted with the issuance of 1,445 US patents for firm clients. MBHB has a dedicated prosecution support staff composed of prosecution paralegals, docket clerks, annuities clerks and file clerks, all managed by a highly experienced prosecution staff manager. MBHB’s singular focus on IP law, coupled with its culture of teamwork, means that clients benefit from the collective knowledge of the entire firm. This growing base of specific knowledge is of tremendous value to clients. Despite MBHB’s unsurpassed legal and technical skills, the focus of its professionals remains on clear communication – with judges, juries, patent examiners, other lawyers and, most importantly, clients. Collaboration with clients comes easily. MBHB attorneys and technical advisers speak the language of the scientists and inventors with whom they work. They are up to date on today’s ways of thinking regarding science and technology. They are up to speed on current IP law. The result is a positive, spirited firm culture – one that fosters teamwork and enables MBHB’s professionals and staff to be more flexible and efficient in meeting client needs.
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“Many companies entrust their most important matters to it… Imposing phalanx of eminent trial lawyers”
Main address 300 South Wacker Drive Chicago IL 60606 United States T +1 312 913 0001 F +1 312 913 0002 E info@mbhb.com Professional contacts Gavin O’Keefe Managing partner E okeefe@mbhb.com Other offices Mountain View
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IAM Patent 1000 1709
Merizzi Ramsbottom & Forster www.mrfip.com
Merizzi Ramsbottom & Forster (MRF) was founded in 2013 to create a modern multidisciplinary firm that relied on available technological solutions to enhance service offerings through efficient and cost-effective approaches to case management, office procedures, team development and collaboration. Each of the firm’s founding partners, André Merizzi, James Ramsbottom and Alistair Forster, relied on a decade of past experience working both in-house and at reputable Canadian IP firms to craft MRF’s practices, objectives and priorities. MRF has since grown organically to meet our clients’ needs and exceed their expectations through our personalised strategic consulting services. Indeed, MRF now services clients directly in Ottawa (Ontario), Vancouver and Victoria (British Columbia) and Gatineau (Quebec), delivering services in both English and French. Specialties Our professionals specialise in patent and trademark portfolio development and offer personalised strategic consulting services in intellectual property. Our team has the determination and strategic expertise required to protect our clients’ inventions and brands. They work in close collaboration to offer the technical and legal solutions best adapted to the clients’ personal and business needs, for the development of a winning strategy that will ensure success today without limiting their options for tomorrow.
“A go-to for any prosecution needs… Has the expertise and genuine creativity to prepare patent applications in emerging and novel disciplines” 1710 IAM Patent 1000
We offer comprehensive technical assistance and legal consulting services in intellectual property and patent and trademark protection across Canada, the United States and abroad, through our extensive network of associates. Our professionals offer first-rate services to clients worldwide via our proven advanced case management system. Team MRF relies on a team of highly reputable IP lawyers and registered agents who stand apart for their vast technical and legal experience, as well as their client-centred approach, all while delivering creative and high-quality services with a human touch. MRF is led by its three founding partners supported by three additional professionals focusing on patent and trademark procurement for their clients. With extensive backgrounds in science and technology, the MRF team never shies away from digging deep into their clients’ technologies to get their hands dirty and fully investigate patentable concepts in formulating commercially viable IP strategies. Indeed, the team has proven particularly successful in efficiently and cost-effectively securing market-relevant intellectual property for their clients by comfortably arguing highly technical nuances with examiners locally and abroad. The MRF team also develops comprehensive and creative trademark procurement and enforcement strategies for their technical and non-technical clients alike, to great success. Combined with strategic virtual in-house IP legal services, the MRF team can help its clients build a solid IP foundation. Technical fields From software and photonics clients in the tech industry to research and diagnostics clients in the medical field, we are leading the information age in patent procurement, specialising in the hightech sector. We regularly represent clients in the following fields: • Software/information technology – we have a proven track record of prosecuting softwarerelated inventions in Canada, the United States and abroad, while navigating this continually evolving legal landscape, often through direct
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examiner interviews (in Canada and the United States) in which our clients’ true innovations can be more readily explained and highlighted to secure meaningful claims. Photonics/optics – our professional team counts three in-house post-graduate physicists who readily dive deep into our clients’ technology to creatively capture the essence of their innovations. Mechanical – a picture is worth a thousand words, and in mechanical patents, pictures are key to a fully enabled description of your invention; but an effective mechanical patent claim strategy should go well beyond those pictures to truly capture the essence of your invention, and avoid creative workarounds. Biotech/natural sciences – vectors, cDNA, pharmaceutical compounds and compositions, natural health products, methods and products-by-process – if it is publishable or saleable, chances are there is patentable subject-matter. We help our clients navigate where strategic claim drafting can help to protect the patentable aspects of their research and lay the groundwork for protecting future research streams. Industrial design registrations/design patents – MRF advises on strategic design protection (often underestimated) that goes beyond the basics to truly capture the various innovative design aspects and variants of our clients’ products so to best secure their slice of the market.
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Main address 1325 Bear Mountain Parkway Suite 105 Victoria BC V9B 6T8 Canada T +1 778 677 8772 E info@mrfip.com Professional contacts André Merizzi Partner E andre@mrfip.com James Ramsbottom Partner E james@mrfip.com Alistair Forster Partner E alistair@mrfip.com Other offices Gatineau QC, Ottawa ON, Vancouver BC
IAM Patent 1000 1711
Munck Wilson Mandala LLP www.munckwilson.com
Munck Wilson Mandala (MWM) is a technologyfocused law firm known for the development and enforcement of market-focused offensive and defensive IP portfolios. MWM represents clients in the hardware, software, firmware, gaming, pharmaceutical, defence, wired/wireless communications, energy, medical device/ healthcare, and electromechanical fields, among others. MWM offers full-service counsel in the areas of IP litigation, complex commercial litigation, IP portfolio development, corporate transactions and securities, and employment law. Firm history Founded in 1997, MWM began as a small boutique in Dallas. William A Munck joined the firm in the late 1990s and was soon the managing partner, successfully growing the firm from six to more than 70 attorneys in the past two decades. In addition to legal services in corporate, M&A, labour and employment, and commercial litigation, Mr Munck has assembled one of the strongest IP teams in the Southwest, known as an IP powerhouse among legal industry experts and ranked as the largest patent law firm in North Texas. International experience MWM has an extensive network of foreign associates and counsel around the world. MWM attorneys frequently travel to France, Germany, China, Korea and other foreign locations to serve clients. MWM represents businesses around the world in connection with patents, trademarks, trade secrets, copyright and technology transactions. Several MWM attorneys have worked
“Accolades pour in… Calibre of its work and the value it adds are far superior to those of any large national or local specialty outfit” 1712 IAM Patent 1000
internationally in-house and the IP and litigation teams are familiar with legal issues and crossborder challenges that technology and other clients face. Languages MWM attorneys are fluent in English, Cantonese, French, German, Hindi, Italian, Japanese, Korean, Mandarin Chinese, Spanish, Persian and Tamil. Notable cases MWM has a distinguished IP litigation practice. As the editors of Chambers USA wrote, MWM is “especially well known for its expertise in IP disputes”. This expertise comes from a combination of high-tech knowledge and experience and exceptional trial skills. By teaming talented IP lawyers with accomplished trial lawyers, MWM delivers focused, strategic, high-value representation in a wide range of patent, trademark, copyright, trade secret and unfair competition matters. The litigation team is uniquely qualified to understand complex IP disputes and explain cases to the judge or jury. The Texas Lawyer honour for law firms that have produced the highest verdicts from 20142018 noted two MWM IP cases: Texas Advanced Optoelectronic Solutions, Inc v Intersil Corp (over $88.85 million) and iLife Technologies Inc v Nintendo of America Inc ($10.1 million) as Hall of Fame Verdicts in 2019. Number of partners/patent experts MWM has 40+ registered patent attorneys, 75 attorneys firm-wide and over 900 years of technical and IP law experience. MWM clients span a full spectrum from global defence and technology companies to small cap/privately held companies and start-ups. MWM’s IP practice (both domestic and foreign) comprises approximately: • 45% patent, copyright and trademark preparation and prosecution; • 35% IP litigation; • 10% IP licensing; and • 10% technology-based transactional work, including asset valuation/due diligence.
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Recent developments In 2020 MWM was one of the few law firms that did not announce layoffs as a result of the pandemic. The firm started the year with 75 attorneys and completed the year with the same number. MWM continues to expand its presence on the West Coast with eight attorneys working out of the Los Angeles office. This year, the firm promoted three female attorneys to partner and now has 31% female partners and a total female attorney proportion of 38%. MWM’s attorney headcount has increased from 50 attorneys in 2016 to 75 in 2021, with 40 registered patent attorneys and four offices – three in Texas and one located in the heart of Silicon Beach – the third-largest tech hub in the country. In September 2020 MWM was named Litigation Department of the Year by Texas Lawyer magazine and the Dallas Business Journal ranked the firm the largest patent law firm in North Texas. MWM was also the only fullservice law firm to be selected as an Inc. Best Workplace in 2020.
Main address 600 Banner Place Tower 12770 Coit Road Dallas TX 75251 United States T +1 972 628 3600 F +1 972 628 3616 E marketing@munckwilson.com Professional contacts William A Munck Managing partner E wmunck@munckwilson.com Shannon Tipton PR director E stipton@munckwilson.com Stephanie Lewis Marketing manager E slewis@munckwilson.com Other offices Austin, Los Angeles, Marshall Sample client list • Crane Co • iLife Technologies, Inc • Raytheon Co • ROHM Semiconductor • Samsung Electronics
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IAM Patent 1000 1713
Nicholson De Vos Webster & Elliott LLP www.ndwe.com
Nicholson De Vos Webster & Elliott LLP is a boutique IP law firm located in Silicon Valley. Leveraging decades of experience, the partners founded the firm in 2015 with a focus on the preparation and prosecution of patent applications, patent portfolio management, postissuance proceedings and patent litigation support. Borrowing from the tactics of the companies that the firm represents, Nicholson De Vos uses current technology to provide a flexible and secure environment for attorney and client collaboration. Although a relatively new firm, Nicholson De Vos has grown to include 21 attorneys and two patent agents, most of whom have worked together for many years. Nicholson De Vos is proud of its distinguished attorneys, who have been listed among the world’s leading patent practitioners, with some recognised among California’s “SuperLawyers”. Nicholson De Vos is also listed as one of Juristat’s top 100 firms of 2018 and among the top firms in the United States in 2019 and 2020 for applications filed in USPTO Technology Center 2100: Computer Architecture, Software and Information Security. The team has extensive experience in a robust range of technologies, with many having technical degrees in electrical engineering or computer science. The firm uses this depth of knowledge and experience to pursue protection for clients’ intellectual property. Practising in Silicon Valley gives Nicholson De Vos access to companies at the forefront of technological innovation. This physical presence affords firm attorneys the opportunity, on short notice and at the convenience of clients, to meet in person with inventors and in-house counsel to understand fully their technology and counsel on patent strategy. The firm’s clients range from start-ups to Fortune 100 companies. The firm has expertise creating and managing patent programmes from scratch, as well as seamlessly working with established client guidelines and procedures. Key industries serviced by the firm include microprocessors, graphics, telecommunications, networking, internet protocol television, memory and storage, virtualisation software, cloud computer including storage and services, machine learning, network security and optimisation, the Internet of Things, wearable technology and electric vehicle infrastructure.
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“Agile boutique… Technical precision and strategic flair” Nicholson De Vos’s patent prosecution practice focuses on filing and prosecuting patent applications not only in the United States, but also internationally. The firm routinely files Patent Cooperation Treaty applications before both the USPTO and the International Bureau. In addition, individuals at the firm have longstanding relationships with attorneys at firms in other countries, with whom they work to file and prosecute direct and national phase filings in those countries according to the relevant rules and best practices. For example, Nicholson De Vos’s attorneys have helped to direct patent prosecution efforts in Australia, Brazil, China, Europe, India, Israel, Japan, Korea, Mexico, New Zealand, Russia and Singapore. Patent preparation and prosecution Our team of patent attorneys has extensive experience identifying inventions, elements of inventions and discoveries that are eligible for patent protection. We develop strategies for obtaining patent protection that are carefully tailored to our clients’ needs and goals. Patent portfolio management Our experienced and skilled patent attorneys and patent agents work closely with each client to find the best way to manage their patent portfolio. We assist clients with: • identifying patentable ideas; • developing strategies to maximise the value of the portfolio; and • evaluating competitors’ activities that could affect the portfolio. Patent post-issuance proceedings We offer a team of highly skilled and experienced patent professionals who can assist in numerous types of post-issuance proceedings, including: • inter partes review; • covered business method; • post-grant review;
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• ex parte re-examination; and • request for supplemental examination. Litigation support Our attorneys have decades of combined experience in patent litigation support, assisting our clients’ litigation counsel through patent infringement analysis and patent invalidity analysis.
Main address 99 Almaden Blvd Ste 710 San Jose CA 95113 United States T +1 408 675 0441 F +1 408 675 0442 E firm@ndwe.com Professional contacts Daniel M De Vos Partner E dan@ndwe.com David Nicholson Partner E dave@ndwe.com Judith Szepesi Partner E judith@ndwe.com
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IAM Patent 1000 1715
Nixon Peabody LLP www.nixonpeabody.com
At Nixon Peabody, we see 21st century law as a tool to help shape our clients’ futures. Our focus is on knowing what is important to our clients now and next, so we can foresee obstacles and opportunities in their space and smooth the way. We ensure they are equipped with winning legal strategies as they navigate the exciting and challenging times we live in. Our ability to do this comes from these working principles: • We’re curious and extremely focused on understanding our clients’ businesses and industries. • We tap the collective intelligence of Nixon Peabody to deliver the best thinking and create value for our clients throughout the world. • We lean forward into the future, together with our clients, to see and prepare for what’s ahead. • Working together, we handle complex challenges in litigation, real estate, corporate law and intellectual property anywhere in the world. • In terms of our IP practice, we provide a full offering of patent services, including prosecution, litigation and transactions. Our lawyers develop, maintain and license valuable patent portfolios, as well as provide counselling, opinions and evaluations on: • patentability; • competitors’ patents; • due diligence; • inventorship/ownership investigations; • corrective actions for existing patents; and • patent interferences/inter partes reviews/ covered business method reviews and re-issues. One-third of our lawyers and patent agents, including 15 PhDs, hold undergraduate and/ or advanced degrees in biology, biochemistry, chemistry, microbiology or some related area. These backgrounds enable us to leverage top-notch legal skills, scientific and engineering knowledge, and business acumen to help our clients extract maximum value from their patents, gain a competitive advantage and minimise risk. In 2020 we filed 1,364 patent applications in the United States and 776 foreign patent applications. Our first-chair trial lawyers are experienced in all facets of patent litigation, including jurisdiction
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and venue motions, discovery, use of experts, claim construction (Markman) hearings, dispositive motions, trials and appeals. Since 2010, we have handled more than 50 cases in the Eastern District of Texas, 20 disputes in Delaware and approximately 30 matters in the Northern District of California. We are also well-versed in handling post-grant review proceedings before the US Patent and Trademark Office. These proceedings include inter partes reviews and covered business method reviews. We have been involved in more than 45 proceedings where we have represented either the petitioner or the patent owner before the Patent Trial and Appeal Board. We have particular strength in representing university technology transfer clients, including Brown, Caltech, Harvard, the University of Southern California, Vanderbilt and the University of Washington. For more than 20 years, we have helped tech transfer clients identify, protect, monetise and enforce their intellectual property. Our goal is to help these clients bring their technologies and innovations to market and extract the maximum value from their IP assets. Consequently, we know the challenges facing these institutions when it comes to enforcing their IP assets, especially against consumer products, electronics and other companies for whom litigation (or the meaningful threat of it) is often the only viable option to secure a licence. Our representation of the University of California, Santa Barbara in a groundbreaking patent enforcement campaign involving filament LED lighting technology is an example of cutting-edge legal work in this area. In addition, our IP lawyers work with a number of companies as well as leading research institutes and academic medical centres that are active in the microbiome, biotech and gene therapy space. We also keep our clients up to date on innovative topics through publications such as Gut check: Microbiome patent update, which summarises recently issued microbiome patents, and Patent Plantings, which examines trends and regulations impacting on patents in the biotech agribusiness space.
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“Patent practice is certainly well specced… Sterling reputation among corporates as well academic and research institutions”
Main address Exchange Place 53 State Street Boston MA 02109- 2835 United States T +1 617 345 1000 F +1 617 345 1300 E info@nixonpeabody.com Professional contacts Jeffrey L Costellia Practice group co-leader E jcostellia@nixonpeabody.com Jason Kravitz Practice group co-leader E jkravitz@nixonpeabody.com
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IAM Patent 1000 1717
Oblon www.oblon.com
Oblon began providing IP services over 50 years ago based on the concept of providing quality services at reasonable prices. From the very beginning Oblon has serviced cutting edge technologies such as pharmaceuticals, nuclear, and semiconductors, and now includes areas like artificial intelligence (AI) and digital health. Very quickly Oblon began providing not only patent application services but also litigation, trademark, counseling and opinions. The firm also became the one of the first to hire associates with advanced degrees to better understand and substantively address clients’ needs. This practice continues to this day with Oblon attorneys having advanced degrees which allow them to understand today’s ground breaking technologies including CRISPR, AI and the like. Oblon trial attorneys have handled highstakes IP litigation from start-up companies to multinationals. These companies include Toshiba, Toyota, Roku, Ricoh, L’Oréal, EssilorLuxottica and Valeo. Oblon’s attorneys approach litigation using value-driven and no-nonsense strategies. Such strategies led to our success before the Supreme Court in Festo Corp v Shoketsu Kinzoku Kogyo Kabushiki Company. Our years of experience in dealing with the USPTO allow us to leverage reissue practice and Inter Parte Reviews to the maximum advantage for our clients. Our attorneys have successfully litigated cases across the United States, from Massachusetts to California, and Wisconsin to Texas. In addition we have been active in litigating cases before the International Trade Commission representing both complainants and respondents. Our attorneys also develop strategies to protect our clients’ technology. Recently Oblon attorneys devised a strategy to strengthen patent protection for a $2 billion/year pharmaceutical product to the fullest extent possible. Oblon’s successes in developing patent strategies for clients is reflected in Oblon’s 30+ years domination at the U.S. Patent and Trademark Office (USPTO), having obtained more U.S. patents than any other law firm. Unlike many firms, Oblon specializes in IP and only IP. Such specialization allows us to focus our attention on the specific IP challenges facing our clients with unique knowledge. Whether it is the challenge of obtaining diagnostics patents in the face of headwinds at the USPTO or the challenge of implementing the best strategies for new
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technologies, Oblon’s singular focus allows us to develop the most effective strategies necessary for our clients. Our successes have resulted in Oblon being recognized by our peers as a preeminent law firm. The awards include: • Tier 1 in the regional ranking (Washington DC) and Tier 2 of the national ranking for Litigation – Intellectual Property and Litigation – Patent Law, by US News and World Report’s Best Law Firms 2021 (respectively); • Tier 5 for Patents: Prosecution (including Reexamination and Post-Grant Proceedings) by IAM Patent 1000 2020; • Recognition as one of the United States’ leading firms in the area of patent prosecution and post-grant proceedings by The Legal 500 2020; • Ranked in sixth position among Vault’s Best IP Boutique Law Firms 2020 and recognized among the Top 150 under 150, Vault’s list of leading mid-size law firms; and • Ranked in Band 2 for Northern Virginia by Chambers & Partners 2019.
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“Key strategic patent partner to innovators… crisp results in prosecution, the bedrock of its wider practice”
Main address 1940 Duke Street Alexandria VA 22314 United States T +1 703 413 3000 F +1 703 413 2220 E oblonpat@oblon.com Professional contacts Philippe Signore Managing partner E psignore@oblon.com Other offices Tokyo
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IAM Patent 1000 1719
Osler, Hoskin & Harcourt LLP www.osler.com
With an integrated network of offices in Toronto, Montreal, Calgary, Ottawa, New York and Vancouver, Osler, Hoskin & Harcourt LLP’s team of more than 460 lawyers, patent agents and trademark agents has the breadth and depth of experience to help solve clients’ problems and provide the answers that they need in all areas of business law, including intellectual property. Strength in intellectual property Our top-ranked IP team is renowned for its diverse strengths, including IP litigation and patent disputes. We have acted as counsel in complex litigation in every field of intellectual property and before every level of the Canadian courts, and have coordinated and managed prosecution and litigation strategies through multiple jurisdictions. Our international reputation for excellence in Canadian IP patent litigation has been built on our winning litigation record, representing some of the world’s largest generic pharmaceutical, technology, biotech, life sciences, electronics, energy, consumer products and many other international and domestic innovators. We have extensive experience in drafting, filing, prosecuting and maintaining patent and industrial design applications in Canada and the United States, including for Canadian and multinational companies in medical devices, electronics, consumer products, chemistry, biotechnology, pharmaceuticals, sports, food services and other sectors. We also supervise the filing and prosecution of patent applications outside North America on behalf of clients through our network of foreign associate law firms. The Osler IP team also serves a growing and robust international practice, representing Canadian patent interests of foreign companies. Osler’s integrated team of professionals is involved in preparing numerous patent infringement and validity opinions, drafting patents and advising on the exploitation of obtaining IP rights with a coordinated worldwide strategy consistent with clients’ commercial business. Our exposure to complex litigation matters has proven invaluable in our drafting and prosecution practices – we are well aware of the many pitfalls to avoid.
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Recognition Osler’s Patent team has been recognised as one of the leading practices in Canada by IAM Patent 1000, Chambers Canada, IP Stars, The Canadian Legal Lexpert Directory, The Legal 500 and Benchmark Canada. In 2021, Osler was named Patent Contentious Firm winner for Canada at the Managing Intellectual Property Americas Awards and took home several Impact Cases of the Year awards. Recent notable cases • Lead outside counsel to Mylan Pharmaceuticals in connection with numerous complex patent litigation, class action and other matters, including ongoing cases seeking early market entry. • Representing Teva Canada in numerous Patented Medicines (Notice of Compliance) Regulations proceedings. • Acting in Yves Choueifaty v Attorney General of Canada – an important decision that should help provide clarity on the correct approach to claim construction when a patent application is being prosecuted before the Canadian Intellectual Property Office. • Representing Awesense Wireless Inc in a complex patent proceeding before the Federal Court. • Representing VMware in a complex technology patent proceeding before the Federal Court. • Lead Canadian counsel responsible for the prosecution, management, enforcement and licensing of patent and industrial design portfolios for various leading national and multinational companies, or indirectly through foreign law firms on an agency basis.
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“Going gangbusters in the life sciences right now… Dozens of client wins and acting on some super-impressive mandates”
Main address First Canadian Place 100 King Street West Toronto ON M5X 1B8 Canada T + 1 416 362 2111 F + 1 416 862 6666 E patents@osler.com Professional contacts J Bradley White Partner E bwhite@osler.com Other offices Calgary, Montreal, New York, Ottawa, Vancouver Sample client list • Awesense Wireless • Mylan Pharmaceuticals • Samsung Bioepis • Teva Pharmaceuticals • VMware • WOW Tech
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IAM Patent 1000 1721
Reising Ethington PC www.reising.com
Since its founding in Detroit in 1865, Reising Ethington PC has specialised in practising IP law. Our areas of expertise include IP prosecution and litigation, global patent and trademark portfolio management, post-grant proceedings and trade secrets, as well as licensing and other IPrelated agreements. Reising’s attorneys manage global IP portfolios for Fortune 500 clients, oversee both US and foreign IP assets and help start-ups navigate the shoals of IP law. The firm represents some of the world’s most innovative and foremost IP owners, including automotive manufacturers and suppliers, medical technology companies, aerospace companies, universities, industrial equipment makers, robotics companies and consumer product companies. These IP owners rely on Reising to possess both technical and legal understanding and to develop elegant solutions for their IP needs. Reising is home to attorneys with electrical, computer, mechanical and chemical engineering and life sciences degrees. As the Reising team can digest and master nearly any technology, clients can be confident that their research will be clearly understood by our attorneys. Given their broad knowledge and deep technical expertise, Reising attorneys can tackle even the most complex technologies. Reising is particularly adept at translating its technical knowledge into legal solutions. Our patent team regularly prevails before the PTAB and the Trademark Trial and Appeal Board, as well as the Federal Circuit and many other federal district court jurisdictions. Reising’s clients achieve their desired legal solutions through effective communication with the firm. The IP community has consistently recognised our attorneys as thought leaders who provide helpful insight into both developing and longstanding IP topics. Our attorneys hone their understanding of IP law and educate others through speaking engagements, articles and continuing legal education. Dating back several decades, Reising’s attorneys have authored seven editions of the US law school textbook Cases and Materials on Patent Law Including Trade Secrets. They have taught IP law at Wayne State University, the University of Detroit Mercy and the Ave Maria School of Law. Our firm
1722 IAM Patent 1000
also helped found the Detroit College of Law (now the Michigan State University College of Law). Reising’s attorneys have been decorated by a number of industry leaders, including Super Lawyers, the US News and World Report (Tier 1 ranking) and the IAM Patent 1000. These recognitions at least partially reflect of our firm’s dedicated participation in professional organisations where our attorneys are recognised for their service to the profession. Groups such as the American Intellectual Property Law Association, the Michigan IP Inn of Court and the Michigan State Bar IP Law Section all claim our attorneys as both leaders and members. Reising has a rich history of client partnerships – including in the automotive industry where the firm has protected the ideas of automotive pioneers Ransom E Olds, David Buick and the Fisher Brothers – and intends to maintain this collaborative spirit with the next wave of industry innovators.
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“Venerable Michigan boutique… Creates strong, coherent portfolios of diverse IP rights that – crucially – are also enforceable”
Main address 755 West Big Beaver Road Suite 1850 Troy MI 48084 United States T +1 248 689 3500 F +1 248 689 4071 E info@reising.com Professional contacts E Colin Cicotte Shareholder E cicotte@reising.com Jim Stevens Shareholder E stevens@reising.com Rick Hoffmann Shareholder E hoffmann@reising.com
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IAM Patent 1000 1723
Schwegman Lundberg & Woessner PA www.slwip.com
Schwegman Lundberg & Woessner was founded in 1993 with the goal to develop a new IP law firm model with the primary aim of obtaining excellent quality patents while maintaining a commitment to innovation. Today, Schwegman has grown to over 120 patent attorneys and agents, many with advanced technical and life sciences degrees. What we do Schwegman is an IP boutique firm that focuses on original drafting and filing of patent applications, with high-tech clients located throughout the United States and elsewhere in the world. In addition to patent prosecution services, we also have deep experience with freedom-to-operate clearance, opinions of counsel, post-grant review and inter partes review, due diligence investigations to support fundraising or mergers and acquisitions, licensing and agreement work, and litigation support. Schwegman does not have a litigation practice; however, we can partner with litigation and trial attorneys from law firms of your choosing. IP services • Copyright and data counselling • Foreign rights • Fractional in-house counsel • Freedom to operate • Licensing • M&A/start-up due diligence • Open-source licensing • Opinions
“Stellar boutique at the forefront of innovation… Outstanding reputation for sophistication and quality”
• • • • •
IP analytics Patent prosecution Post-grant proceedings Portfolio management and analysis Trademarks
Industries (selection) • Chemical and materials science • Clean technologies • Electrical and computers • Life sciences and pharma/biotechnology • Mechanical and electromechanical • Medical technologies • Software and e-commerce Innovation Schwegman’s culture of innovation enables us to provide excellent IP services and technology solutions. We built one of the first softwareas-a-service docketing platforms, Foundation IP (later sold to CPA Global), a claim-mapping tool (Claimscape®), a file history summary tool (ClaimTracker), and a portfolio management tool (Dashboard) that allows instantaneous access to in-depth performance metrics around a group of patents. Analytics-managed prosecution Our trademark and patent analytics team helps our clients make informed choices about their filings. Validating filing strategies with competitive and personal portfolio metrics can help clients make better and more cost-effective decisions about their investment in intellectual property. Benefits to clients Client-centric teams Attorneys, paralegals, a quality assurance officer and case management staff are assigned directly to every client. Our highly trained staff, well-established internal procedures and quality checks guide every operation. Excellent work at cost-effective levels Our technology, low attrition, multiple-office locations and structure enable our attorney hourly rates to be reasonable. Ability to meet a wide range of filing capacities
1724 IAM Patent 1000
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We have the bandwidth to handle high volumes within narrow timeframes, urgent filings, prosecution, post-grant proceedings and noninfringement/validity opinions. Commitment to diversity and inclusion Schwegman values diversity in our inclusive office environment. We believe that diversity can help contribute to collaborative efforts and to building a positive and supportive workplace and community. Our Diversity and Inclusion Steering Group continues to actively foster a culture embracing diversity. The group is committed to leading, advocating and coordinating firm-wide diversity and inclusion efforts. Commitment to our community Involvement in the Twin Cities, the Silicon Valley community and Austin, as well as other communities where our satellite attorneys live and work, is an important part of our work and mission. Schwegman fosters and maintains a strong bond within our communities through participation in non-profit organisational and financial support of charitable organisations and causes.
Main address 121 South 8th St Suite 1600 Minneapolis MN 55402 United States T +1 612 373 6900 F +1 612 339 3061 E info@slwip.com Professional contacts Steven Lundberg Principal E slundberg@slwip.com Other offices Austin, London, San Jose
International presence Schwegman is privileged to serve an international roster of clients that includes multinational corporations, middle-market businesses, start-ups, universities and individuals. Our clients benefit from the highquality, strategic counselling and client service that are our hallmark. In addition to our Minneapolis, Silicon Valley and Austin locations, Schwegman also has a UK team. Further, our dedicated director of China Intellectual Property, Aaron Wininger, counsels both US and Chinese companies on portfolio development and preparation of their patent applications and office action responses. His knowledge of both the Chinese and US markets enables him to advise his clients as they expand their patent portfolios and look for investors to help the company grow.
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IAM Patent 1000 1725
Shearman & Sterling LLP www.shearman.com
As one of the first law firms to establish a presence in key global markets, Shearman & Sterling has led the way in serving clients wherever they do business for more than 140 years. From major financial centres to emerging markets, the firm has the reach, depth and global perspective necessary to advise clients on their most complex worldwide business needs. Shearman & Sterling is organised as a single, integrated partnership with more than 850 lawyers in more than 20 offices located throughout the Americas, Asia, Europe and the Middle East. The firm’s lawyers come from some 75 countries and speak more than 60 languages. Shearman & Sterling understands its clients’ needs, with an innovative spirit honed over its long history to find creative ways to anticipate and address their problems. Harnessing the intellectual strength and deep experience of its lawyers across the firm’s extensive global footprint, Shearman & Sterling represents many of the world’s leading corporations, financial institutions, emerging growth companies, governments and state-owned enterprises. Those clients continue to choose the firm for its distinctive ability to leverage the knowledge and judgement of one of the world’s largest and most accomplished cross-border legal teams – a team ideally situated to counsel clients in this challenging 21st-century global economy. Given the firm’s capabilities, it has attained recognition in a number of legal publications and industry rankings for its work in the United States and internationally across a range of practices areas, including dispute resolution/litigation, intellectual property, international arbitration, project finance, public international law, capital markets and mergers and acquisitions. The firm is dedicated to pro bono work and believes it is an essential aspect of every lawyer’s practice. In that spirit, the firm encourages lawyers to work together to affect change for those who need it most. The pro bono practice is multijurisdictional, working to address issues around the world. The firm has successfully played a role in settings ranging from a legal clinic for lowincome entrepreneurs in San Francisco to Tanzania, where the firm supported the efforts of the Office of the Prosecutor at the International Criminal Tribunal for Rwanda. In 2020 Shearman & Sterling lawyers and staff devoted over 58,000 hours to pro
1726 IAM Patent 1000
bono matters, ranging from assisting low-income veterans to micro-finance and development work for low-income entrepreneurs around the globe. Shearman & Sterling also has a longstanding diversity and inclusion committee, which designs and implements initiatives to promote awareness and encourage open dialogue on matters of diversity and inclusion. For more than 20 years, the committee has been supporting diversity projects and professional events, both internally and in the broader legal community. Within the firm, diversity and inclusion programming is woven into the professional development curriculum at all levels. It is included in the curriculum for firstyear and summer associates, in global associate leadership conferences, as well as in the annual new partner orientations. In addition, the firm’s six associate-led inclusion networks help to foster a sense of community and build awareness through firm-sponsored programmes that serve to educate and inform. In the legal community, Shearman & Sterling is an active sponsor of organisations and programming that promote the inclusion, advancement and professional development of historically under-represented groups. As such, the firm collaborates with clients, non-profit organisations, bar associations, community groups and pipeline programmes that share the firm’s commitment to helping people of all backgrounds achieve academic and professional excellence.
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“IP specialists at Shearman & Sterling never lose sight of the commercial imperative when litigating patent cases… Their strategies are targeted and carefully calibrated”
Main address 599 Lexington Avenue New York NY 10022-6069 United States T +1 212 848 4000 E media@shearman.com Professional contacts Mark Hannemann Partner E mark.hannemann@shearman.com Thomas R Makin Partner E thomas.makin@shearman.com Jordan Altman Partner E jordan.altman@shearman.com Other offices Austin TX, Menlo Park CA, New York NY, San Francisco CA
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IAM Patent 1000 1727
Skiermont Derby LLP www.skiermontderby.com
Skiermont Derby LLP is a litigation boutique of trial lawyers with offices in Dallas and Los Angeles. The firm practises in federal and state courts throughout the United States and has extensive experience litigating all types of IP claims, including those asserted in combination with related claims of antitrust, contract disputes, defamation and unfair business practices, as well as actions including copyright infringement, trademark and trade dress claims, trade secret misappropriation, rights of publicity and privacy, false advertisement and unfair competition. The firm has achieved success in patent infringement jury trials in diverse venues such as Chicago and East Texas, including jury verdicts of wilful patent infringement. The firm has a successful track record assisting companies that have been accused of patent infringement and supporting inventors and businesses enforce and monetise their patents. Our experience spans many technical fields, including aerospace, pharmaceuticals, biotechnology, telecommunications, computers, consumer electronics, e-commerce, natural language processing and speech recognition. The firm also has a thriving practice in pharmaceutical patent litigation both in federal district courts and before the PTAB. The firm has substantial experience litigating Hatch-Waxman patent cases on behalf of both brand and generic drug companies involving many different drugs, including Glienya, YAZ, Alimta, Treanda and ella. The firm also represents direct purchaser clients in pharmaceutical antitrust litigation arising from brand/generic settlements of Hatch-Waxman patent litigation, including In re Loestrin 24 FE Antitrust Litigation. The firm has substantial inter partes review experience on behalf of both patent owners and petitioners that are challenging patents. With regard to patent owners, the firm has succeeded at the institution stage in all nine of its cases involving contested inter partes reviews in computer-related technology. With regard to petitions, the firm represented the Coalition for Affordable Drugs in several Orange Book patent challenges and represents Neptune Generics in its challenge to the sole Orange Book patent protecting Alimta from generic drug competition. The firm can carefully weigh the pros and cons of filing an inter partes
1728 IAM Patent 1000
review petition. We are equipped to handle every aspect of the inter partes review proceeding for both patent owners and petitioners. Our firm philosophy is “complexity simplified” because we never forget that judges and juries who decide winners and losers in court can be persuaded only by facts and arguments they understand. From the moment we are retained as trial counsel, we start to visualise the complex aspects of the case and develop powerful trial demonstratives and graphics to make our trial themes accessible to the judge and jury. We begin each new case by envisioning its end: the closing argument, summary judgment motion and final appellate brief. Using this vision of how we expect to win, we develop and execute a focused roadmap to trial and beyond. In addition to our role as trial lawyers, we understand that our clients need trusted advisers. While our objective is to provide the highest-calibre litigation and trial services, the only way to reach this goal is to understand and achieve our clients’ overarching business strategies and objectives. Working with our clients, we think creatively to develop strategic alternative solutions. Sometimes a ‘win’ means finding a creative way to avoid a dispute altogether, while other times it means turning a dispute into a new business opportunity or simply finding a way to control legal costs. But for some commercial disputes, the only way to win is to succeed in court – and Skiermont Derby LLP was formed to be on the shortlist of law firms that clients call when they need experienced trial lawyers.
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“Memorable performances on both sides of the docket… Big on talent and efficiency”
Main address 1601 Elm Street Suite 4400 Dallas TX 75201 United States T +1 214 978 6600 F +1 214 978 6601 E pskiermont@skiermontderby.com Professional contacts Paul J Skiermont Partner E pskiermont@skiermontderby.com Other offices Los Angeles Sample client list • Fisiopharma srl • HEC Pharma Co Ltd • Netlist Inc • Vizio Inc • WiLan Inc (IPA Technologies)
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IAM Patent 1000 1729
Smart & Biggar www.smartbiggar.ca
Smart & Biggar is recognised as Canada’s largest firm practising exclusively in IP and technology law. The firm works directly with global and domestic organisations, and seamlessly as one team with associate firms, to help clients secure, protect and maximise the value of their inventions and IP investments in Canada. Consistently recognised as the leading Canadian IP firm by a wide range of third-party domestic and international rankings, Smart & Biggar has a history that spans over 100 years of providing the world’s leading brands with sophisticated and creative IP solutions. From five offices across Canada, the firm offers the full complement of IP services, including strategic IP counselling, IP litigation, IP transactions support, licensing and patent and trademark agency services. It serves many of the world’s leading organisations representing the broad spectrum of industries. The firm’s focus on value includes the following: • Client service excellence – Smart & Biggar has an international reputation for client service excellence. The firm leverages sophisticated project management and back office systems to manage clients’ matters, and constantly seeks new ways to streamline and increase the efficiency and value of its service offering. • Expertise – Smart & Biggar has one of the largest IP teams in Canada and offers clients experience in the combined scientific, technical and legal fields, along with highly specialised industry knowledge. • Technical strength – virtually every one of the firm’s 100 lawyers, patent agents and technical consultants have an engineering or scientific educational background, and many possess graduate degrees in a diverse range of areas. Over 55 members of the firm, including most of the firm’s lawyers, are registered patent agents.
“Gold-standard firm definitely lives up to its name... One of the country’s top filers” 1730 IAM Patent 1000
• History of partnering – Smart & Biggar carefully nurtures long-term relationships with clients and expert associate firms around the world. These relationships endure because the firm consistently seeks out opportunities to continuously add value and deliver superior client service. Patent services The firm draws on its professionals’ unparalleled technical knowledge in evaluating an invention, reviewing its patentability and developing strong and enforceable patent rights throughout the world. It also works closely with its clients to develop customised patent protection strategies that provide a powerful competitive advantage. As patent experts, the firm’s lawyers and patent agents are consistently recognised around the world as leaders in the field. The firm’s dedication to providing the best IP service, advice and solutions is why the world’s most innovative and sophisticated businesses look to it to protect, exploit and defend their IP rights. Above all, the firm is committed to understanding the issues faced by clients and efficiently providing IP services and advice of the highest quality. The firm’s recognised strength in patent law and ability to provide superior service is the basis for its having prepared and filed more patent applications than any other firm in Canada. The firm’s patent services include: • patentability, infringement and validity opinions; • clearance and right-to-use opinions; • prior art searching and performing patent audits; • Canadian patent application preparation and filing; • filing and prosecution in the United States and throughout the world; • licensing and due diligence in commercial IP transactions; • IP management and strategic counselling; and • patent litigation. Smart & Biggar also advises clients on a wide variety of existing and emerging IP and technology law matters, including: • industrial designs; • copyright and media;
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• internet and domain names; • advertising and marketing; and • pharmaceutical regulatory and compliance.
Main address 55 Metcalfe Street Suite 900 PO Box 2999 Station D Ottawa ON K1P 5Y6 Canada T +1 613 232 2486 F +1 613 232 8440 E ottawa@smartbiggar.ca Professional contacts Daphne Lainson Partner E dclainson@smartbiggar.ca Matthew Zischka Partner E mzischka@smartbiggar.ca Elliott Simcoe Partner E esimcoe@smartbiggar.ca Other offices Calgary, Montreal, Toronto, Vancouver
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IAM Patent 1000 1731
Steger IP, LLC www.stegerip.com
Steger IP was founded by Steve Steger in 2018. Elizabeth Rudersdorf joined the firm in 2020. Mr Steger and Ms Rudersdorf have a combined experience of over 35 years of practising law and, more specifically, of advising clients with respect to their intellectual property and how to extract value from it. Mr Steger and Ms Rudersdorf have worked together for over 10 years, including as partners at Global IP Law Group (which Mr Steger founded and for which Ms Rudersdorf was the first attorney hired), and as counsel and client. Firm approach The firm’s approach is to counsel each client based on its business needs and risk profile, step by step through the realisation of its goals. The firm partners have acted for every type of client, ranging from individual inventors to small start-up companies, and some of the largest technology companies in the world. Steger IP’s partners have represented clients as sellers, buyers, debtors and creditors, all under the umbrella of IP counsel acting to maximise IP value. They have also played the role of client, including as chief IP counsel at a large multinational company, chief IP counsel at a start-up company and general counsel at an IP fund. From this experience, Steger IP understands how a client thinks and appreciates that IP strategy is often one part of a more complex set of business needs. Unique experience Steger IP is just shy of three years old, but its partners’ patent transaction and monetisation experience is unique. Together, the firm partners have secured billions of dollars on behalf of clients for their intellectual property. They have worked on the largest patent sale ever and the largest IP-backed secured debt financing deal in history. Each of these representations was unique both in transaction value and in the role played by now Steger IP partners. Each involved advising a client regarding its portfolio strengths, weaknesses, monetisation options and strategy, providing a valuation and acting for the client through the close of the deal. Steger IP leverages decades of distinct experience and continues to advise clients in an improved way, from beginning to end. Currently, the firm manages a set of high-value client
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“Coal-and-ice partner to those seeking the best in patent transactions and monetisation support… Lighting up the patent world” portfolios for which it advises on monetisation strategy and execution of those portfolios. Since its founding, the firm has closed over a dozen sale or licence deals on behalf of its clients for an aggregate value in the tens of millions of dollars. Select representations Below are noteworthy representations by Steger IP partners over the past 10 years: • Acting for an IP fund to manage its patent monetisation programme, which has closed more than 25 deals and is still actively monetising its portfolio. A few of those deals include: • sale of a semiconductor portfolio to an operating company for a seven-figure price; • transfer of IP rights related to video compression patents; • licence of a financial transactions portfolio to a US aggregator; • sale of a cloud portfolio to an operating company; and • sale of an augmented reality portfolio to an operating company; • Represented a location-based services company to license its portfolio to a leading US consumer device company for eight figures; • Acted for an individual inventor to sell his portfolio for $6 million to a Japanese operating company; • Represented Nortel Networks in the sale of its 6,000-asset patent portfolio for $4.5 billion to a buyer consortium including Apple, Microsoft, Ericsson, RIM, and Sony – the largest patent sale in history;
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• Acted for Alcatel-Lucent and provided a valuation of its 45,000-asset patent portfolio, which was used to obtain financing in excess of €2.1 billion, where the patent assets were secured as collateral; • Acted for a potential buyer of Blackberry by leading its IP diligence efforts and providing a portfolio valuation to financing sources; • Acted for a large licensing entity to build a 10-year strategic licensing plan including technology and market recommendations, financial modelling and revenue projections; acted for the same entity to review, analyse, value and market one of its high-value longterm evolution patent portfolios; and • Represented the Official Committee of Unsecured Creditors to Eastman Kodak in its Chapter 11 bankruptcy proceedings; advised the committee with respect to all IP-related issues including the sale of Kodak’s digital capture portfolio to consortium of buyers for around $525 million.
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Main address 1603 Orrington Avenue Suite 600 Evanston IL 60201 United States T +1 312 819 5332 E elizabeth@stegerip.com Professional contacts Elizabeth Rudersdorf Partner E elizabeth@stegerip.com Steven Steger Partner E steve@stegerip.com
IAM Patent 1000 1733
Sterne, Kessler, Goldstein & Fox PLLC www.sternekessler.com
Sterne, Kessler, Goldstein & Fox PLLC is a leading IP law firm based in Washington DC and distinguished by the strong technical experience and knowledge of its team. Sterne Kessler has over 40 years’ experience helping companies to strategise, build and enforce worldwide IP portfolios, including inter partes matters (lawsuits, appeals, oppositions and post-grant proceedings such as inter partes review and covered business method patent review); preparation and prosecution of patent and trademark applications before the US and foreign patent offices; and advice on portfolio strategies (valuation, acquisition and due diligence). Sterne Kessler launched its USPTO litigation service as a response to the implementation of the America Invents Act, beginning in 2012. The law ushered in a variety of ways to either challenge or strengthen patents at the PTAB of the USPTO, including inter partes review, post-grant review, covered business method patent review, derivations, interferences and re-examination. In 2020 the firm was named “PTAB Firm of the Year” for the third time by a leading IP journal and received national rankings as a “Best Law Firm” in patent litigation and prosecution categories from Best Lawyers. Sterne Kessler attorneys and agents, including over 50 PhDs, are carefully recruited for their technical expertise and industry experience. Most have earned an advanced technical degree and have significant industry or academic experience across a wide spectrum of technical areas, including electronics, software, biotechnology, clean technology, pharmaceuticals, chemical products and processes, and consumer products. Many of the firm’s patent prosecution attorneys have previously worked as patent examiners and have unique insights into the inner workings of the USPTO.
“Wonderfully cohesive… Incredible institutional knowledge” 1734 IAM Patent 1000
Sterne Kessler lawyers are trained to evaluate intellectual property in the context of client business issues to ensure alignment with company goals. Strong patent claims constructed around strategic goals are invaluable as companies commercialise ideas or defend leadership positions against interferences, re-examinations and oppositions. Practising in Washington DC is a distinct advantage. The firm’s proximity to the USPTO, the US Court of Appeals for the Federal Circuit, the International Trade Commission (ITC), the US Supreme Court and Congress gives it the opportunity to help to shape the IP landscape. Over four decades, Sterne Kessler attorneys have formed substantive professional relationships with examiners, given their regular presence at the USPTO. Sterne Kessler’s client base includes emerging and established companies, venture capital firms, individual entrepreneurs and universities – from bleeding-edge technologies, pharmacogenomics, nanomedicine and biofuels to next-generation electronics and other consumer products. While the firm provides the full range of services, it is organised internally around four main practice groups: • the biotechnology/chemical group; • the electrical group; • the mechanical/consumer products group; and • the trial and appellate (litigation) group. In total, more than 400 people are employed by the firm. The firm’s main service areas include business methods filings, design patents, due diligence, Hatch-Waxman, generic and proprietary, IP valuation, inventorship dispute resolutions, ITC Section 337 investigations, licensing, litigation and appeals, patent forensics, USPTO litigation, patent prosecution, product lifecycle management, opinions, oppositions, strategic IP advice, trademarks and trade secrets/unfair competition. Key industries serviced by the firm include biosimilars, biotechnology, chemistry, clean technology, consumer products, electronics, food science and packaging, industrial products, medical devices, nanotechnology, software, pharmaceuticals and automotive.
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The firm is consistently ranked among the premier IP firms in the United States. Awards and recognition for the firm range from 18 consecutive years of Band 1 rankings in Chambers & Partners USA to consistent toptier rankings in the IAM Patent 1000 and other market recognition programmes. In 2015, 2016 and 2018, the Financial Times selected the firm as one of the most innovative law firms in the United States. Law360, Vault and the National Law Journal have recognised Sterne Kessler for its diverse partnership and the firm is consistently distinguished as a great place to work by The Washington Post and the Washington Business Journal based on attorney and staff survey results.
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Main address 1100 New York Avenue NW Suite 600 Washington DC 20005 United States T +1 202 371 2600 F +1 202 371 2540 E adonovan@sternekessler.com Professional contacts Adam Donovan Director of business development E adonovan@sternekessler.com
IAM Patent 1000 1735
Stout www.stout.com
Stout is a global investment bank and advisory firm specialising in corporate finance, valuation, financial disputes and investigations. We serve a range of clients, from public corporations to privately held companies, in numerous industries. For more than 30 years, our clients and their advisers have relied on our premier expertise, deep industry knowledge and unparalleled responsiveness on complex matters. Stout’s IP practice has a fully integrated team of valuation professionals, damages experts, compliance professionals, investment bankers and technical experts with the ability to execute a broad spectrum of IP services. Stout’s experts have decades of experience assisting clients to fully create, acquire, protect, manage and extract value from IP assets, including patents, trademarks/ brands, trade secrets, copyright, the right of publicity and other intangible assets such as software, license agreements and domain names. Expert testimony and consulting – IP disputes Stout’s IP disputes professionals have decades of experience in providing expert testimony in IP litigation across a broad spectrum of industries. They deliver a cross-disciplined approach that creates value by offering clients a team of testifiers and consultants, including certified public accountants, MBAs, actuaries, individuals with engineering backgrounds and individuals with other accreditations, such as staff accredited in business valuation, chartered financial analysts and certified fraud examiners. Stout’s team provides the following services: early case assessment, preparation of discovery requests, review of produced documents to ensure compliance with associated requests, assessment of licensing agreements, preparation of key expert and fact witnesses, computation of damages, expert testimony, preparation of demonstrative exhibits and development of positions for mediation. Valuation – IP/intangible asset valuation Stout’s IP valuation professionals bring clarity to the most complex IP assets. Stout’s independent, third-party valuations use various approaches and methodologies relevant to the type of asset being valued and the underlying purpose of the valuation. Our valuations are performed
1736 IAM Patent 1000
“360-degree proficiency in intellectual property, which is its defining edge… Multidisciplinary setup enables it to provide all-embracing support to trial teams” for a variety of purposes including transactions (licensing, purchase/sale, joint ventures, mergers and acquisitions), tax strategy and compliance (related-party transactions, trust and estate issues), corporate strategic decision-making, use of intellectual property to attract capital (debt and equity financing), financial reporting, regulatory compliance (Stark Law, Anti-Kickback Statute) and bankruptcy. Stout stands above the competition because our experts are thought leaders who frequently speak about and teach IP valuation at the most well-known and respected industry organisations, universities and law firms. Transactions – IP advisory and transactions Stout’s IP advisory and transactions professionals have deep patent expertise with an emphasis on litigation, portfolio evaluation, and complex licensing and sales transactions. The team brings expansive expertise in evaluating and monetising IP assets and has worked with numerous global technology leaders, from Fortune 500 corporations to emerging companies. Leveraging Stout’s multi-disciplinary IP expertise, the IP advisory and transactions team at Stout helps both buyers and sellers capitalise on opportunities and control risk with deep IP licensing, financing and transaction expertise. Every engagement is founded upon thorough analytics and guided by decades of experience.
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Compliance – royalty audit services Stout’s dedicated team of royalty audit experts assists clients in realising the full value of IP assets by ensuring compliance with existing licence agreements. The team offers several services to meet the specific needs of clients, including desk audits, field audits, royalty compliance and monitoring programmes, and evaluation of licensing agreements. Stout’s royalty audit team delivers value beyond identification of underpayments because they understand that the licensors and licensees have common interests in a collaborative resolution of differences that will keep their business relationships mutually profitable. Why Stout? Stout experts have been retained by over 75 of the AM LAW 100 law firms, premier litigation boutiques, Fortune 100 corporations and federal agencies. Stout experts have been retained in 47 US states, as well as by clients throughout Asia and Europe for a wide range of matters, including disputes where alleged damages were over $1 billion. Stout’s net promoter score – a measure of our clients’ willingness to recommend Stout’s services on a scale of -100 to +100 – is consistently in the +90s, which is indicative of our clients’ trust. Stout’s professionals are fluent in many languages other than English, including ChineseMandarin, Chinese-Yue, French, German, Greek, Hindi, Italian, Korean, Latvian, Polish, Portuguese and Spanish.
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Main address One South Wacker Drive 38th Floor Chicago IL 60606 United States T +1 312 857 9000 F +1 312 857 9001 Professional contacts John Bone IP group leader E jbone@stout.com Scott Weingust IP valuation practice leader E sweingust@stout.com Mitchell Rosenfeld IP advisory and transactions practice leader E mrosenfeld@stout.com Other offices Atlanta, Baltimore, Berlin, Cleveland, Dallas, Denver, Detroit, Grand Rapids, Hong Kong, Houston, Irvine, Lausanne, London, Los Angeles, Milan, New York, Philadelphia, San Francisco, Shanghai, Singapore, Tysons Corner, Washington DC
IAM Patent 1000 1737
Sunstein LLP www.sunsteinlaw.com
At Sunstein, a leading US IP firm based in Boston, we are passionately focused on our clients. Our firm’s distinct ability to excel in each area of specialisation – litigation, patent and trademark prosecution, IP portfolio development and business transactions – sets us apart. Using innovative approaches to solving problems and delivering outstanding results, we focus on providing clients with significant value by helping them win immediate objectives and achieve long-term business goals. Intellectual property is a rapidly evolving area of law, and we are not afraid to break new ground on behalf of our clients. We love what we do, our client relationships and the impact we make on our clients’ businesses and the law. Our patent practice group features dedicated and experienced patent practitioners who prosecute applications in a wide variety of technical areas to help our US and international clients create valuable patent portfolios with an eye toward advancing their business objectives. Our professionals Our professionals combine their IP expertise and technical knowledge with strong business acumen and well-honed litigation skills to drive success in complex and demanding legal situations. Our attorneys have unmatched experience in intellectual property and always put their client relationships and client goals first. Whether the project is challenging litigation, sophisticated patent prosecution or a complex business transaction, our lawyers draw upon multidisciplinary experience to achieve our clients’ objectives. Our attorneys are comfortable working in the most sophisticated and advanced areas of science and technology.
“Solid technological underpinnings… High degree of efficiency in all areas of its practice” 1738 IAM Patent 1000
Our patent and trademark lawyers have experience in both business matters and scientific and technical research, in addition to patent and trademark prosecution. To serve our client’s litigation needs, our litigators provide skilled courtroom advocacy combined with their IP law expertise and knowledge about a wide spectrum of technologies. This breadth of experience enhances our ability to assist clients in developing strategies to protect their technology and all of their intellectual property. Our practice Our practitioners integrate expertise in science, engineering and business with their deep experience as trial lawyers, patent prosecutors and transactional lawyers. Our collective knowledge ensures that our clients have access to the latest thinking about all aspects of intellectual property. IP litigation Aggressive representation in high-stakes IP litigation is a hallmark of our firm’s trial practice. Our litigators have handled significant cases in courts throughout the United States and have achieved superior results by carefully tailoring litigation strategy to our clients’ business objectives and to the requirements of the case. Patent and trademark prosecution Our attorneys work strategically in building IP portfolios for a wide range of clients. We prosecute patent and trademark applications in the United States and, working with our network of foreign associates, throughout the world. Our attorneys are regularly involved in the licensing of patents, trademarks, copyright and trade secrets. Business We represent businesses in the full range of legal matters companies may encounter as they grow, including protection and licensing of the company’s technology under patent, trade secret and copyright laws; selection, licensing and protection of trademarks; contracts with employees, customers and others; public and private offerings; securities law compliance; business acquisitions; and antitrust compliance.
www.IAM-media.com
Our clients We represent clients located throughout the United States and abroad, including public and private companies, major academic and research institutions, government agencies and individuals. We serve emerging and established companies in a wide range of technology-based enterprises, including computer hardware and software, pharmaceuticals, medical instruments, media, finance, healthcare, education, insurance, advertising and entertainment. Individual clients include inventors, artists and authors who have an interest in protecting and commercialising their creative efforts. Regardless of a client’s size, business or location, the services we provide are individually fashioned to meet each client’s specific needs and wishes.
www.IAM-media.com
Main address 100 High Street Boston MA 2110-1618 United States T +1 617 443 9292 F +1 617 443 0004 E knoll@sunsteinlaw.com Professional contacts Kathryn E Noll Patent practice group co-chair E knoll@sunsteinlaw.com Alexander J Smolenski, Jr Patent practice group co-chair E asmolenski@sunsteinlaw.com
IAM Patent 1000 1739
White & Case LLP www.whitecase.com
White & Case is a global law firm with a longstanding presence in the markets that matter today. The firm’s on-the-ground experience, crossborder integration and depth of local, US and English-qualified lawyers help clients work with confidence in any one market or across many. White & Case guides clients through difficult issues, bringing its insight and judgment to each situation. The firm’s innovative approaches create original solutions to clients’ most complex domestic and multi-jurisdictional deals and disputes. The firm’s main areas of practice are outlined below. Antitrust Clients throughout the world seek the advice of White & Case antitrust lawyers. They count on the firm’s extensive experience in litigation against governmental authorities or private parties, counselling on delicate questions and comprehensive worldwide coverage of merger control regimes. Banking Since White & Case’s founding, banking has been at the core of the firm’s practice. Today, the firm represents major banks worldwide, including many of the largest. The firm provides guidance related to acquisition finance, commercial lending, project finance, bankruptcy and debt restructurings, and regulatory advice.
“Pole position to take on bet-thecompany disputes… Broad horizons of its top trial lawyers are immeasurably helpful” Financial restructuring and insolvency White & Case is a recognised leader in complex cross-border insolvencies and workouts. The firm represents global clients in all aspects of restructurings, workouts and insolvency matters, including both transactional and litigation matters. Intellectual property White & Case was one of the first full-service firms to develop an IP practice. Its lawyers protect and defend clients’ innovations, creative works and brands around the world, offering advice related to patents, copyright and designs, IP audits and due diligence, licensing and merchandising, sourcing and technology, and privacy and data protection.
Capital markets White & Case has a formidable reputation in the field of international securities and finance. Clients benefit from the firm’s capabilities in equity and debt offerings, sovereign issues, high-yield debt, securitisations, derivatives, investment funds and regulatory and broker-dealer matters.
International arbitration White & Case is the only leading global law firm with large and long-established arbitration teams in New York, Washington DC, London, Paris, Geneva, Singapore and Stockholm, along with significant strength in other key cities, including Frankfurt, Moscow, Miami, Seoul, Hong Kong and Sydney.
Commercial litigation Clients entrust White & Case with their ‘mustwin’ matters – disputes in which huge sums, invaluable patents and brands, and even outand-out company survival are at stake. The firm has won major trials and appeals for clients in an array of industries, including financial services, pharmaceuticals, technology, sports, media and entertainment, and consumer products.
Mergers and acquisitions White & Case is among the world’s leading law firms in mergers and acquisitions. The firm advises corporations, financial institutions and private equity firms across a variety of industries, in all manner of complex cross-border and domestic M&A transactions. Its M&A lawyers are leading practitioners in all major jurisdictions around the world.
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www.IAM-media.com
Private equity White & Case’s financial sponsor practice has a truly global reach, with market-leading service offerings in New York, London and Hong Kong, as well as fully integrated, full-service private equity practices across Europe, the Middle East and Africa. White & Case represents numerous preeminent large-cap and mid-market sponsors, as well as their portfolio companies, in their domestic and cross-border transactions. Real estate White & Case is highly regarded for its skill in helping clients complete complex real estate financings and its in-depth experience with legal matters relating to real estate investment funds. The group handles acquisitions and dispositions, joint ventures, portfolio sales and securitisation, financings and sales/leasebacks.
Main address 1221 Avenue of the Americas New York NY 10020- 1095 United States T +1 212 819 8200 F +1 212 354 8113 E anita.varma@whitecase.com Professional contacts Anita Varma Partner E anita.varma@whitecase.com Arlene Arin Hahn Partner E arlene.hahn@whitecase.com
Tax White & Case’s tax lawyers and advisers are strategically located in financial centres and government capitals worldwide to provide timely, effective advice on evolving tax law and policies. The practice has provided clients with innovative, practical approaches to minimise tax liabilities on issues ranging from mergers and acquisitions to financings and investment fund transactions. Trade White & Case helps clients manage the risks and maximise the opportunities associated with the increasing regulation of international trade in goods and services. The firm has an interdisciplinary, full-service global trade practice that is one of the world’s largest and most active in trade remedies and in the law of the World Trade Organisation. White collar White & Case helps clients deal with government investigations and enforcement matters. In addition to years of front-line prosecutorial experience, the firm has substantial experience defending clients through all phases of investiga tions, as well as criminal and civil enforcement proceedings. Clients include large corporations, as well as individuals prominent in business and political affairs.
www.IAM-media.com
IAM Patent 1000 1741
Williams & Connolly LLP www.wc.com
Williams & Connolly’s reputation for handling ‘bet-the-company’ civil litigation at the trial and appellate levels applies equally to the firm’s thriving IP practice. Major corporations, including Google, AstraZeneca, Dropbox, Roche/Genentech, Samsung, Pfizer, Intel and Eli Lilly, place their trust in Williams & Connolly litigators to handle major IP matters, particularly in patent litigation and related licensing disputes. About 50 Williams & Connolly attorneys devote a substantial portion of their practice to patent cases, including 17 former clerks of the US Court of Appeals for the Federal Circuit. Many of our lawyers practising in this area have science degrees, and 13 have been admitted to practise before the US Patent and Trademark Office. A major part of Williams & Connolly’s patent litigation practice is representing pharmaceutical companies in Hatch-Waxman pharmaceutical patent litigation. Williams & Connolly has handled over 100 inter partes review proceedings, including numerous concurrent with district court proceedings in HatchWaxman cases. Representative areas of concentration are outlined below. Biotechnology/pharmaceuticals A major part of Williams & Connolly’s patent litigation practice is representing brand-name pharmaceutical companies in Hatch-Waxman and pharmaceutical patent litigation brought under the Biologics Price Competition and Innovation Act against competitors seeking to sell generic and biosimilar versions of the brand companies’ drugs. Over the years, the firm has achieved significant successes for many companies in these disputes and others involving a diverse array of highly successful drugs, prevailing numerous times at trial and in the Federal Circuit. Electronics and software The firm handles major patent and licensing matters in the electronics and software fields. The firm routinely serves as counsel in trial courts and the Federal Circuit, as well as in international arbitrations, on behalf of major technology firms including Samsung, Google, Dropbox, Acer, ASUS, Motorola, AOL and Intel.
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Medical and mechanical devices The firm has handled or is handling a number of significant patent and licence disputes concerning a wide variety of devices, including surgical instruments for cancer diagnosis and treatment, implantable defibrillators, marine seismic survey technology, laser hair removal equipment and biosensors for blood testing. Inter partes review/patent office disputes The firm has handled close to 100 inter partes review proceedings before the US Patent and Trademark Office, and our lawyers currently serve as lead counsel in a number of inter partes reviews for both patent owners and petitioners. Many of the inter partes reviews handled by the firm involve parallel district court litigation. The firm has served as counsel in other patent office proceedings of strategic importance to the firm’s clients, including interferences. Other proceedings William & Connolly’s patent experience is also brought to bear in other contexts. For example, the firm has been lead counsel in multiple antitrust matters involving allegations of unlawful settlements of Hatch-Waxman litigation, including in the first-class action antitrust trial involving claims for ‘pay-for-delay’ after the Supreme Court’s decision in FTC v Actavis. Williams & Connolly also has been retained on numerous occasions by other major law firms accused of malpractice resulting from patent litigation or prosecution. In the past year, the firm received the award for Hatch-Waxman Litigation Firm of the Year – Branded from LMG Life Sciences. In June 2020, the firm was recognised among the top 10 leading practices nationally and among the top four practices in Washington DC by IAM Patent 1000 – The World’s Leading Patent Practitioners. And in May 2020, Managing IP ranked the patent litigation practice group nationally in the bio/life sciences and patent contentious categories. The American Lawyer also named Williams & Connolly among four finalists for Intellectual Property Department of the Year.
www.IAM-media.com
“Best patent trial outfit in the United States… Groundbreaking wins in myriad life sciences and high-technology suits”
Main address 725 12th Street NW Washington DC 20005 United States T +1 202 434 5000 F +1 202 434 5029 Professional contacts David I Berl Partner E dberl@wc.com Jessamyn S Berniker Partner E jberniker@wc.com Sample client list • AstraZeneca • Dropbox • Eli Lilly • Google • Intel • Pfizer • Roche/Genentech • Samsung
www.IAM-media.com
IAM Patent 1000 1743
Winston & Strawn LLP www.winston.com
Winston & Strawn LLP has built a reputation as a trial lawyers’ firm. Our litigators are some of the most seasoned in the industry, bringing extensive courtroom experience to every matter our firm handles. Moreover, our long history of taking cases to trial – and winning – gives our clients tremendous settlement leverage with their adversaries, as well as confidence in a successful outcome if and when they go to trial. More than 25 of our attorneys have first-chaired multiple patent trials, and in the past five years we have taken 49 patent cases to trial (Lex Machina). National recognition With nearly 130 attorneys, Winston’s patent litigation practice is one of the most active and highly regarded in the country. Most recently, Winston was recognised as US Patent Ligation Firm of the Year 2020 by IAM and WTR’s Global IP Awards. Winston has also been recognised for its excellence in IP litigation (United States – Tier 1) by Benchmark Litigation. Our IP litigation practice has been ranked in the first tier nationally by US News & World Report in its Best Law Firms survey, and both Chambers USA and The Legal 500 selected our IP practice for national rankings. US district court litigation Winston patent litigators regularly appear in all of the leading patent jurisdictions. Over the past five years (2016-2020), our attorneys have handled more than 500 patent cases in 30 district courts, including: • 104 cases in the District of Delaware; • 66 cases in the Eastern District of Texas; • 35 cases in the Western District of Texas; • 49 cases in the District of New Jersey; • 41 cases in the California courts; and • more than 50 cases in other key jurisdictions, including the Northern District of Illinois, the Eastern District of Virginia, the Southern District of New York and the Southern and Northern Districts of Texas. ITC litigation Winston has substantial experience litigating high-stakes patent infringement cases before the International Trade Commission (ITC). The firm’s experienced team comprises a number of attorneys who have first-chaired successful ITC trials, as
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well as a former ITC senior investigative attorney and former US patent examiners. Our attorneys have the education and industry experience to immediately understand complex technology, a working knowledge of the specialised procedural law and the substantive experience to formulate and execute the strategies necessary to succeed at the ITC. PTAB trials Winston is ideally positioned for litigation before the PTAB in proceedings such as inter partes reviews, covered business method patent reviews and post-grant reviews. Winston has significant experience litigating these proceedings successfully. Winston attorneys have appeared in more than 100 PTAB matters and tried several of the first cases to reach hearing. Patent prosecution Winston has an active patent prosecution practice that assists clients with the prosecution, development, maintenance and licensing of patent portfolios worldwide. Our patent prosecution attorneys typically file 100 to 150 US patent applications and obtain approximately 70 to 80 US patents annually. The firm’s scientifically trained attorneys and patent agents are experienced in the preparation and worldwide prosecution of patent applications pertaining to the traditional sciences, as well as in new and developing technologies. Many of our patent attorneys have technical degrees in fields such as electrical engineering, computer science, physics, chemical engineering, chemistry, materials engineering and metallurgy. Statistics Additional statistics about our patent practice include the following: • More than 50 of our attorneys have technical degrees and 21 are members of the Patent Bar. • More than 25 of our partners have first-chaired IP trials in various courts throughout the United States. • During the past five years, our attorneys have handled more than 500 patent cases and more than 130 Federal Circuit appeals. • Our ITC group has collectively appeared in more than 60 Section 337 ITC investigations.
www.IAM-media.com
“Gilt-edged patent litigation firm… Can carry the day in the toughest, highestexposure cases in any forum”
Main address 35 West Wacker Drive Chicago IL 60601-9703 United States T +1 312 558 5600 F +1 312 558 5700 E postmaster@winston.com Professional contacts David Enzminger Co-chair, IP practice E denzminger@winston.com Charles Klein Co-chair, IP practice E cklein@winston.com
www.IAM-media.com
IAM Patent 1000 1745
Workman Nydegger www.wnlaw.com
Founded more than 35 years ago, Workman Nydegger specialises in IP law, providing prosecution, litigation, licensing, counselling and related services. The firm’s areas of practice include patents, trademarks, copyright, trade secrets and unfair competition. The technologies in which the firm has expertise include computer systems, software, e-commerce and information technology; electronics and electrical engineering; pharmaceutical, nutraceutical, chemical, biotechnology, and medical and life sciences technologies; physics and optics; and mechanics and mechanical engineering. Workman Nydegger represents US and foreign clients in all aspects of US and foreign patent and trademark prosecution. The firm works closely with inventors, corporations, and domestic and foreign counsel on application preparation, domestic and international filing strategies, and examination in both the United States and abroad. Workman Nydegger has extensive experience in assessing and advising clients on IP issues surrounding mergers, acquisitions, joint ventures, partnerships; conducting due diligence for IP portfolios; and licensing transactions. The firm also specialises in client counselling matters such as non-infringement, invalidity and freedom-tooperate opinions, design-around strategies to avoid infringement and clearance searches. Workman Nydegger has excellent working and reciprocal relationships with other IP firms all around the world, both in terms of coordinating patent and trademark prosecution and related enforcement proceedings in other countries for its US-based clients and in handling US patent and trademark prosecution on behalf of other IP firms and their clients located outside of the United States. Workman Nydegger also represents various public and private universities, assisting their technology transfer offices with IP prosecution and licensing in relation to universitydeveloped technology. Workman Nydegger’s litigation team has enforced patents and trademarks throughout the United States and has coordinated enforcement efforts in the European Union and Asia in a wide variety of technologies, including medical device technology, radar-based traffic management systems, polysomnography, exercise equipment, e-commerce, dental compositions and appliances,
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thin film optics, wastewater treatment facilities, consumer electronics and irrigation systems. The same skills Workman Nydegger litigators bring to bear in IP litigation generate favourable client results in complex commercial litigation. Workman Nydegger’s appellate practice group has successfully handled matters before the US courts of appeals and in particular before the US Court of Appeals for the Federal Circuit. Workman Nydegger’s lawyers include a number of former law clerks and interns at the Federal Circuit. The firm’s lawyers have been selected to author amicus briefs on behalf of institutions such as the International Association for the Protection of Intellectual Property in cases before the US Supreme Court (Metro-Goldwyn-Mayer Studios Inc v Grokster, 2005) and the Federal Circuit (In re Beauregard, 1995; Phillips v AWH Corp, 2004; In re Aqua Products Inc, 2016) Workman Nydegger frequently participates in mediation and arbitration proceedings as an alternative to costly and time-consuming litigation. Our attorneys are qualified and serve as mediators in complex commercial and IP-related disputes. We are proud of our diversity, equity and inclusion efforts at Workman Nydegger. We offer scholarships at two universities for diverse undergraduate students. They have the opportunity to present their undergraduate work at the firm and in turn, they learn about the possibility of becoming attorneys specialising in IP law. Workman Nydegger is also a founding sponsor of the Utah Centre for Legal Inclusion (UCLI). UCLI’s mission is to further the diversity, equity and inclusion efforts in the legal community. Workman Nydegger takes a creative approach to your intellectual property. Our attorneys are engineers, developers and scientists – craftspeople of their trade who saw a need to protect the work in which they were immersed.
www.IAM-media.com
“Bench depth is a real USP… Prosecutes with unerring accuracy across a rainbow of technologies, shepherds deals of myriad structures over the line and litigates its way to a winning record”
www.IAM-media.com
Main address Suite 1000 60 East South Temple Salt Lake City UT 84111 United States T +1 801 533 9800 F +1 801 328 1707 E info@wnlaw.com Professional contacts Mike Frodsham Attorney E mfrodsham@wnlaw.com Shauna Huston Executive E shuston@wnlaw.com Megan Cedar HR assistant E mcedar@wnlaw.com
IAM Patent 1000 1747
Xsensus LLP www.xsensus.com
At Xsensus, we do things differently. Since our founding in 2018, we have taken the traditional IP law firm framework and turned it upside down. We focus on relationships, bright minds and the latest technology to deliver innovative and creative solutions to our clients. Xsensus is reinventing the way an IP law firm works. While larger firms are often trying to contain costs by having less experienced patent agents or technical advisers produce work while being supervised by a partner, Xsensus is focusing on an open and collaborative environment between our experienced attorneys. This enables Xsensus to be free of the inefficiencies associated with the inertia that plagues so many of the traditional prosecution firms. We respect each other and share a common vision of making our clients happy and successful. Our approach has worked. Having been founded in 2018, Xsensus was recognised as the “Fastest Growing IP Firm” in the TOP 100 in both 2019 and 2020, and has consistently acquired top talent from firms throughout the industry. The firm’s success continues to rely on its founding ethos: create a collaborative teamwork climate, invest in technology-driven processes and be motivated by results. Headquartered blocks from the USPTO, we dedicate our resources to developing and maintaining strong client relationships, managing direct dialogues with the USPTO and continually investing in our internal team and our community. We take the time to understand our clients’ needs and issues, and then work closely with them to provide services and creative solutions to their challenges. Our goal was to establish a modern practice filled with top talent that also aligns with client expectations: excellent attorneys who share an interest in obtaining commercially respected patents; efficient and error-free administration; reasonable fees; and collaborative working relationships with patent examiners who also share an interest in issuing valid patents in as few office actions as possible. The firm’s culture also allows the same attorneys who worked at Big Law to now work in an environment where it is encouraged to take time to get to know each client’s real interests, as opposed to a strong focus on selling them on a
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new litigation. Our clients are deeply appreciative of working with attorneys whose main aim is to address the issues that are important to their wellbeing. We’ve been pleased to learn that we are now considered the go-to IP firm for many of the global leaders in technology, including companies in the US, Japan, China, Europe and Scandinavia. At the conclusion of each company’s evaluation period, we consistently hear that Xsensus will now be receiving the company’s most important projects. The rationale has been uniform: Xsensus’ attorneys are not only knowledgeable, we also truly care about protecting our client’s best interests, something we demonstrate by performing extra tasks to ensure success, regardless of the company’s original request. Brad Lytle, Xsensus founding partner and patent attorney We specialise in the following practice areas: • patent procurement and prosecution; • industry standards; • counselling and strategic advice; • trademark and design atents; • IP licensing and transactions; and • contested proceedings. Our expertise spans a variety of high-tech industries, including: • consumer electronics; • Internet, mobile and software; • telecommunications; • semiconductors; • infrastructure, energy and heavy industry; • manufacturing and logistics; • medical devices; • chemicals; and • pharmaceutical and biotech.
www.IAM-media.com
“Values of collaboration, respect and efficiency… its combination of quality, personal service and cost effectiveness is proving hard to resist”
www.IAM-media.com
Main address 200 Daingerfield Road Suite 201 Alexandria VA 22314 United States T +1 571 376 6333 F +1 571 376 6334 E xsensus@xsensus.com Professional contacts Andrew Harry Attorney E andrew.harry@xsensus.com
IAM Patent 1000 1749
United States: National
2020 was a red-letter year in terms of large patent damages awards in the United States; multiple verdicts of $100 million-plus were handed down by the courts and then $1.9 billion was awarded in October to Centripetal arising out of its dispute with Cisco over network protection technology. The overall volume of patent lawsuits also rose in 2020 after several years of decline – and a particularly big fall in 2019 – as did the number of PTAB petitions. How 2021 will play out remains to be seen, but March brought news of a huge $2.2 billion jury trial win for VLSI Technology against Intel in the Western District of Texas, making litigation increasingly attractive from the perspective of licensors. On the filing side, the full impact of covid-19 won’t be known for some time, but while the pandemic certainly slowed things down for a period, 2020 saw the overall number of applications increase by 5% over 2019. Technology and life sciences companies have put in measures that enable their innovators to continue working unaffected, as far as possible, by social distancing measures, and there are spheres of innovation that have exploded as a result of covid-19, particularly the life sciences, but also software. The economic downturn induced by the pandemic may, on the other hand, bring down R&D budgets and reduce filing activity. Meanwhile, the departure from office of USPTO director Andrei Iancu had people reflecting on progress over his term with respect to Section 101 and changes to PTAB practice. Regarding the former, Iancu updated the USPTO’s examination guidelines but continued uncertainty was fuelled by decision making at the Federal Circuit which, in Cleveland Clinic v True Health explicitly stated it was not bound by the PTO’s guidance. While numbers in 2019 indicated a drop in 101 rejections for applications for artificial intelligence from 60 to 32% and, more recently, grants of diagnostic patents have been climbing, legislative reform remains on the agenda. Regarding practice at the PTAB, 2020 saw a marked increase in the use of discretionary denials, bringing the inter partes review institution rate down in a win for the patent-owning community.
Individuals: Court of Appeals for the Federal Circuit
William M Jay Goodwin Procter LLP
Dan L Bagatell Perkins Coie LLP
William F Lee Wilmer Cutler Pickering Hale and Dorr LLP
Gregory A Castanias Jones Day
Mark A Lemley Durie Tangri LLP
Yar R Chaikovsky Paul Hastings LLP
Charles E Lipsey Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Morgan Chu Irell & Manella LLP
Deanne E Maynard Morrison & Foerster LLP
John A Dragseth Fish & Richardson
William L Mentlik Lerner David Littenberg Krumholz & Mentlik LLP
Nicholas Groombridge Paul Weiss Rifkind Wharton & Garrison LLP
John J Molenda Steptoe & Johnson LLP
Blair M Jacobs Paul Hastings LLP
John O’Quinn Kirkland & Ellis LLP
J Michael Jakes Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Adam L Perlman Latham & Watkins LLP
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www.IAM-media.com
United States: National Mark A Perry Gibson Dunn & Crutcher LLP
Michael A Jacobs Morrison & Foerster LLP
Carter G Phillips Sidley Austin LLP
Robert Katz Banner Witcoff
Joseph R Re Knobbe Martens
Darrell G Mottley Banner Witcoff
Edward Reines Weil Gotshal & Manges LLP
Perry Saidman Saidman DesignLaw Group
William C Rooklidge Gibson Dunn & Crutcher LLP E Joshua Rosenkranz Orrick, Herrington & Sutcliffe LLP
Individuals: International Trade Commission Highly recommended
Frank Scherkenbach Fish & Richardson
Paul F Brinkman Kirkland & Ellis LLP
Kathleen M Sullivan Quinn Emanuel Urquhart & Sullivan LLP
G Brian Busey Morrison & Foerster LLP
Constantine L Trela Jr Sidley Austin LLP
Ruffin B Cordell Fish & Richardson
Steven Trybus Locke Lord LLP
Maximilian A Grant Latham & Watkins LLP
J Derek Vandenburgh Carlson Caspers Vandenburgh & Lindquist, PA
Gary M Hnath Mayer Brown
Seth P Waxman Wilmer Cutler Pickering Hale and Dorr LLP
Thomas L Jarvis Winston & Strawn LLP
Roy H Wepner Lerner David Littenberg Krumholz & Mentlik LLP
William F Lee Wilmer Cutler Pickering Hale and Dorr LLP
Matthew M Wolf Arnold & Porter Kaye Scholer LLP
Michael McKeon Fish & Richardson
Individuals: design patents
Brian Nester Sidley Austin LLP
Christopher V Carani McAndrews, Held & Malloy Ltd
Bert C Reiser Latham & Watkins LLP
Tracy-Gene G Durkin Sterne Kessler Goldstein & Fox PLLC
Sturgis Sobin Covington & Burling LLP
Elizabeth D Ferrill Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
www.IAM-media.com
IAM Patent 1000 1751
United States: National Recommended Mark J Abate Goodwin Procter LLP Michael J Abernathy Morgan, Lewis & Bockius LLP Steven Anzalone Winston & Strawn LLP James R Barney Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Paul Goulet Winston & Strawn LLP Alexander J Hadjis Oblon Blair M Jacobs Paul Hastings LLP Lisa Kattan Baker Botts LLP Gregg F LoCascio Kirkland & Ellis LLP
Jamie B Beaber Mayer Brown
Laura Beth Miller Haynes and Boone LLP
Smith R Brittingham Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Eric Namrow Morgan, Lewis & Bockius LLP
Maureen F Browne Covington & Burling LLP Cono A Carrano Akin Gump Strauss Hauer & Feld LLP Yar R Chaikovsky Paul Hastings LLP Alexander Chinoy Covington & Burling LLP Joseph V Colaianni Fish & Richardson James B Coughlan Perkins Coie LLP Mark G Davis Goodwin Procter LLP Edward J DeFranco Quinn Emanuel Urquhart & Sullivan LLP Edward C Donovan Kirkland & Ellis LLP
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Jay H Reiziss McDermott Will & Emery Kecia J Reynolds Pillsbury Winthrop Shaw Pittman LLP Eric W Schweibenz Oblon Andrew N Thomases Ropes & Gray LLP D Sean Trainor O’Melveny & Myers LLP Jamie Underwood Latham & Watkins LLP David Vondle Akin Gump Strauss Hauer & Feld LLP T Cy Walker Baker & Hostetler LLP Daniel E Yonan Sterne Kessler Goldstein & Fox PLLC
www.IAM-media.com
United States: National Individuals: post-grant proceedings Highly recommended Erika Harmon Arner Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Steven Baughman Paul Weiss Rifkind Wharton & Garrison LLP Timothy E Bianchi Schwegman Lundberg & Woessner PA
See p1497
David L Cavanaugh Wilmer Cutler Pickering Hale and Dorr LLP Eldora L Ellison Sterne Kessler Goldstein & Fox PLLC Greg H Gardella Gardella Grace PA R Danny Huntington Rothwell, Figg, Ernst & Manbeck, PC Scott A McKeown Ropes & Gray LLP Naveen Modi Paul Hastings LLP W Karl Renner Fish & Richardson Recommended Bing Ai Perkins Coie LLP Brenton R Babcock Womble Bond Dickinson (US) LLP Harper Batts Sheppard Mullin Richter & Hampton LLP
James T Carmichael Carmichael IP PLLC Philip P Caspers Carlson Caspers Vandenburgh & Lindquist, PA Patrick A Doody Pillsbury Winthrop Shaw Pittman LLP Christopher Douglas Alston & Bird LLP Erin M Dunston Panitch Schwarze Belisario & Nadel LLP Michael Fleming Irell & Manella LLP Richard F Giunta Wolf, Greenfield & Sacks, PC
See p1405
Lori A Gordon King & Spalding LLP Kevin Greenleaf Dentons US LLP Herbert D Hart III McAndrews, Held & Malloy Ltd Michael Hawkins Fish & Richardson Gabrielle E Higgins Ropes & Gray LLP David L Holt Fish & Richardson M Andrew Holtman Akin Gump Strauss Hauer & Feld LLP Joseph A Hynds Rothwell, Figg, Ernst & Manbeck, PC
Dion Bregman Morgan, Lewis & Bockius LLP
Thomas L Irving Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Heath J Briggs Greenberg Traurig LLP
John Kilyk Jr Leydig, Voit & Mayer, Ltd
www.IAM-media.com
IAM Patent 1000 1753
United States: National Stephen G Kunin Maier & Maier PLLC
Barry Schindler Greenberg Traurig LLP
Gregory Lantier Wilmer Cutler Pickering Hale and Dorr LLP
Jason M Shapiro Edell Shapiro & Finnan LLC
Kevin B Laurence Laurence & Phillips IP Law
Amy Simpson Perkins Coie LLP
See p1410
See p1413
Steven Lieberman Rothwell, Figg, Ernst & Manbeck, PC
Paul J Skiermont Skiermont Derby LLP
Stephen B Maebius Foley & Lardner LLP
Andrew Sommer Greenberg Traurig LLP
Andrew M Mason Klarquist Sparkman LLP
Jason E Stach Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
David L McCombs Haynes and Boone LLP Dinesh N Melwani Bookoff McAndrews PLLC Stuart P Meyer Fenwick & West LLP Cyrus A Morton Robins Kaplan LLP Chun M Ng Perkins Coie LLP Joseph E Palys Paul Hastings LLP Brad Pedersen Patterson Thuente IP Matthew C Phillips Renaissance IP Law Group LLP George E Quillin Foley & Lardner LLP Timothy W Riffe Fish & Richardson
See p1602
Robert Greene Sterne Sterne Kessler Goldstein & Fox PLLC Suni Sukduang Polsinelli PC Kerry Taylor Knobbe Martens Clifford A Ulrich Hunton Andrews Kurth LLP Todd R Walters Buchanan Ingersoll & Rooney PC Trenton A Ward Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Dorothy P Whelan Fish & Richardson Thomas J Wimbiscus McAndrews, Held & Malloy Ltd Martin M Zoltick Rothwell, Figg, Ernst & Manbeck, PC
Michael Rosato Wilson Sonsini Goodrich & Rosati
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www.IAM-media.com
Notes
www.IAM-media.com
IAM Patent 1000 1755
Notes
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www.IAM-media.com
In the second half of 2021, the IPBC brand is returning to conference rooms around the world as IAM brings together the world’s IP leaders to discuss the key issues in IP value creation.
events
Taking place in four locations, we are offering risk-free registration for each event. Should IPBC Global, IPBC Europe or IPBC Asia 2021 not take place, registration fees will be fully refunded
4-5 OCTOBER 2021 THE SHELBOURNE HOTEL, DUBLIN
An
event
14-16 NOVEMBER 2021 THE HYATT REGENCY, SEATTLE
6-7 DECEMBER 2021 | SHENZHEN 9-10 DECEMBER 2021 | TOKYO
Register risk free at
www.IPBC.com
www.IAM-1000.com