Maiwald
Europe Guide 2024
About
Managing Partners: Dr. Regina Neuefeind, Lutz Kietzmann, Dr. Norbert Hansen, Dr. Martin Huenges, Dr. Holger Glas, Dr. Dirk Bühler, Dr. Christian Schäflein, Dr. Alexander Schmitz, Angela Zumstein, Dr. Derk Vos, Dr. Berthold Lux, Dr. Eva Ehlich, Alexander Ortlieb, Dr. Andreas Ledl, Dr. Eva Dörner, Dr. -Ing. Sophie Ertl, Dr. Marco Stief, Dr. Ralf Kotitschke, Dr. Christian Pioch, Dr. Naho Fujimoto
Number of partners: 40
Number of lawyers: 85 (including partners)
Languages: English, French, German, Japanese, Korean, Chinese
Firm Overview:
As one of Germany’s largest and best-known firms in the field of intellectual property, Maiwald’s foremost aim is to achieve the best possible solution for each client in each particular case. Maiwald employs about 260 people working out of Munich and Dusseldorf. The interdisciplinary teams work closely with each other and with foreign associates, always with an eye to the client’s particular needs, whether start-up, mediumsized firm or large corporation, across all industrial sectors. Maiwald’s team does its utmost to ensure that all IP matters are handled with competence and care, irrespective of the client’s physical location, whether in Germany, Europe or beyond. Client-oriented solutions and personal consultation are at the heart of Maiwald’s professional approach. About 100 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 range of skills and experience at clients’ disposal in order to arrive at the best possible customised IP solutions. Client satisfaction is evidenced by the long-standing business relationships with many prestigious corporations.
Main Areas of Practice:
Maiwald advises and represents domestic and international clients from all technical fields across the entire spectrum of intellectual property law. When appropriate, an interdisciplinary exchange of information and expertise can take place between various teams, ensuring that the optimal solution is achieved in each particular case.
Maiwald’s 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. These include:
- Pharma & Biotech
- Organic Chemistry & Polymers
- Inorganic & Construction Materials
- Food & Agriculture
- Electrical & Mechanical Engineering
- Communication & Information Technology
- Mobility & Energy
- Displays & Light
- Measuring & Process Technology
- Medical Technology & Imaging
- Artificial Intelligence & Digitalization
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-tooperate (FTO) opinions based on thorough research and analysis to establish whether existing IP rights of third parties could potentially stand in the way of a client’s particular product or manufacturing process. Clients also benefit from the exceptional expertise in opposition and appeal proceedings before the German and European Patent Office as well as in infringement and nullity proceedings before the national courts.
Maiwald’s Attorneys-At-Law:
Maiwald’s team of attorneys-at-law can boast many years of experience in trademark, design, copyright, and contract law as well as patent infringement litigation, particularly in the conduct and coordination of international litigation proceedings. The firm’s legal expertise includes:
- Patents & Utility Models
- Supplementary Protection Certificates
- Trademarks & Designs
- Copyright
- Competition & Antitrust Law
- Compliance
- Contract Law
- Employee Invention Law
- Pharmaceutical Law
- Data Protection
- Plant Variety Protection
- UPC
Close cooperation between patent attorneys and attorneys-at-law is especially important in patent infringement litigation, since this type of proceedings generally calls for a comprehensive overview of the various national regulations as well as a thorough grasp of the particular technology. The interdisciplinary teams provide a comprehensive package of services to guarantee the successful conduct of legal proceedings in an international arena, also in cases where speed is of the essence, such as in preliminary injunction proceedings or border seizure procedures. However, Maiwald’s attorneys-at-law would be the first to acknowledge that litigation is not always the best solution. They are skilled advocates in arbitration and mediation proceedings and are trusted experts when it comes to negotiating licensing contracts.
Offices:
Düsseldorf:
Grünstraße 25, 40212 Düsseldorf
Tel: +49 211 301 2570
Fax: +49 211 301 25711
Email: [email protected]
Ranked Offices
Provided by Maiwald
- MunichElisenhof, Elisenstrasse 3, Munich, Bavaria, Germany, 80335
- Web: www.maiwald.eu
- Tel: +49 89 747 2660
- Fax: +49 89 776424
- View ranked office
Maiwald rankings
Articles, highlights and press releases
33 items provided by Maiwald
New referral to the Enlarged Board of Appeal – continuation of the appeal by intervener – T1286/23
In the opposition appeal proceedings “T1286/23”, which we had already reported on “here”, the interlocutory decision of the responsible Board of Appeal 3.2.4 has now been issued.
Equivalent infringement in different European jurisdictions
As part of our regular internal legal seminars, Dr. Wilhelm Eger held a talk on current developments in infringement under the doctrine of equivalency in various European legal systems. The talk addressed differences and similarities as well as the way in which numbers and measurements are handled.
Implementation of the Pharmaceutical Strategy for Europe and the IP Action Plan Pt.3
The first two articles in this three-part series deal with document protection and the planned changes to supplementary protection certificates for medicinal products. This article deals with the so-called Roche-Bolar rule.
Implementation of the Pharmaceutical Strategy for Europe and the IP Action Plan Pt.2
Part 2: In addition to the Pharmaceutical strategy for Europe[1], the European Commission adopted a new Action Plan for Intellectual Property[2] in November 2020, which is intended to support companies in protecting their intellectual property and envisaged to contribute to promoting the use of inte
Implementation of the Pharmaceutical Strategy for Europe and the IP Action Plan Pt. 1
Part 1: Back in November 2020, the European Commission proposed a new Pharmaceutical Strategy for Europe which aims at ensuring the quality and safety of medicines while strengthening the sector’s global competitiveness.
Revision of G3/04? – Discussion on the continuation of the appeal by intervener
In opposition appeal proceedings “T1286/23.3.2.04”, Board 3.2.4 intends to deviate from decision G 3/04 and thus raises the prospect of a corresponding question being referred to the Enlarged Board of Appeal.
Dr. Michaela Weigel-Krusemarck on current developments in formal priority law
In the course of our regular internal attorney seminar, Dr. Michaela Weigel-Krusemarck gave a presentation on current developments on the formal priority. The focus was on the consolidated decisions G 1/22 and G 2/22 of the Enlarged Board of Appeal of the EPO.
Quality Dashboard of the EPO – useful for applicants?
A few days ago, the European Patent Office (EPO) started publishing quality indicators on a specially created quality dashboard (see: https://www.epo.org/en/about-us/services-and-activities/quality/quality-dashboard ). These quality indicators come in addition to the quality reports that the EPO has
European Parliament Supports Use of Some Plants Generated By New Genomic Techniques
European Parliament Supports Use of Some Plants Generated By New Genomic Techniques (NGT) But Opposes Patents for all NGT Plants
Determining the value in dispute in patent nullity proceedings
Determining the value in dispute in patent nullity proceedings if the pharmaceutical product in question does not make use of the teaching of the contested patent – Value in Dispute V
News on EU Pharmaceutical and Medical Devices Laws
With the so-called Pharmaceutical Strategy, the EU Commission in parts fundamentally amends the legislation on pharmaceuticals for use in humans.
Maiwald appoints Dr. Michaela Weigel-Krusemarck and Dr. Andreas Eisele as partners
Maiwald, one of Germany's leading intellectual property law firms, has appointed patent attorneys Dr. Michaela Weigel-Krusemarck and Dr. Andreas Eisele as partners with effect from July 1, 2024.
Maiwald appoints Dr. Sun Jin Lee, Sebastian Herzog und Dr. Tobias Philipp as partners
Maiwald is pleased to announce the appointment of Dr. Sun Jin Lee, Sebastian Herzog und Dr. Tobias Philipp as partners. They will take up their new roles at the start of the new year. With these new appointments Maiwald has further strengthened its team at partner level in the growth segments pharma
Dr Isabel Tomerius joins Maiwald as Partner
Patent attorney Dr Isabel Tomerius joined Maiwald GmbH, one of Germany’s leading IP law firms, as partner with effect from October 1, 2023. Dr Tomerius is a specialist in the fields of chemistry and biochemistry, laboratory and medical technology, life science, mechanics and optics. She will be base
Maiwald appoints Martina Boidol as partner
Maiwald, one of Germany’s leading IP law firms, has appointed Martina Boidol as partner with effect from 1 July 2023.
To use or not to use – the nuisance of repeated trademark filings
The so-called grace period for use in the EU Trademark Regulation is intended to give applicants the opportunity to protect their trademark and thus an important marketing tool before the product is firmly established on the market.
FCJ: Current decisions on cease-and-desist declarations according to "Hamburger Brauch" - Part 2
In its judgment of 1 December 2022 (Case No. I ZR 144/21), the FCJ clarified firstly that the delivery of a cease-and-desist declaration with penalty clause can also be made after a second infringement by means of a contractual penalty promise in accordance with the so-called "Hamburg custom", and s
FCJ: Current decisions on the cease-and-desist declaration according to “Hamburger Brauch” (“Hamburg
In its ruling of October 27, 2022 (Case No. I ZR 141/21), the German Federal Court of Justice (FCJ) made it clear that the regular limitation period in a claim for payment of a contractual penalty under the so-called “Hamburg custom” does not begin until the creditor has determined the specific amou
Smack for Amazon (Judgement of the court (Grand Chamber) of December 22, 2022)
So far, Amazon has been able to claim that infringements of intellectual property rights committed on its platform are not attributable to it and that, if these are deleted after notification, Amazon is fulfilling its obligation. The EJC has made a decision in this regard.
No use as trademark in a company’s own customer loyalty system
According to a decision of the OLG Nuremberg, the use of a sign for a company’s own customer loyalty system does not constitute use as a trademark, unlike in the case of a cross-company customer loyalty system (OLG Nuremberg, decision of September 26, 2022, 3 U 1101/22).
Parallel import of pharmaceuticals: ECJ strengthens rights of trademark owners
On 17 November 2022, the ECJ in its cases C-253/20 and C-254/20[1] addressed the question of whether and under what conditions a parallel importer may import and market under the trademark of the reference drug a generic drug that is identical in all respects to the reference drug.
European Patent Office: Oral proceedings via video conference become standard
On 22 November 2022, a decision by the President of the European Patent Office (EPO) was issued that from January 1, 2023, onwards oral proceedings before the first instance (including opposition proceedings) will by default be held via video conference. It will still be permissible for the members
No trademark infringement by model designation even in case of double identity
If the question in infringement cases is usually whether the opposing goods and signs are similar, claims by the trademark owner can, however, also fail at an earlier stage, namely regarding the question of use as a trademark (OLG Düsseldorf, judgment of June 2, 2022, I-20 U 282/20 - FSP).
New timetable for the UPC: launch planned for 1 April 2023
On 6 October 2022, the Preparatory team for the Unified Patent Court announced an updated and detailed implementation timetable until the entry into force of the Agreement on a Unified Patent Court (UPCA). Thus, there are increasing indications that the UPC can be expected to become operational soon
No Interruption of Forfeiture Periods in the Event of Negligent Legal Action
In a recent judgment, the ECJ has now clarified under which conditions a cease and desist letter can interrupt forfeiture periods (ECJ GRUR 2022, 986 – HEITEC.).
News from Brussels – Stricter rules on pesticides and human substances for medical treatments
In the past few weeks the EU Commission made several legislative proposals in the areas of chemistry/food safety and safety of (medical) products. Two of those topics are presented in this article.
Free samples of medicinal products – Section 7 (1) Health Services and Products Advertising Act HWG
As previously reported, the plaintiff sought an injunction against the distribution of free samples to pharmacies of a medicinal product bearing the label “for demonstration purposes”. A regional Court allowed the action. The appeal against was successful before the Federal Court of Justice.
News from the UPC – New Court expected to start operating in early 2023
The Protocol on the Provisional Application of the UPCA entered into force on 19 January 2022 and the Unified Patent Court (UPC) was born as an international organisation. At the same time, the final phase of the establishment of the Unified Patent Court, the so-called Provisional Application Period
Germany terminates agreement with Switzerland on the use of trademarks
For owners of German trademarks who use their trademark only in Switzerland, caution is now advised! Germany has terminated an agreement of 1892, according to which owners of German trademarks could rely on a use in Switzerland for genuine use of their trademarks.
Reform of the German Act against Unfair Competition 2022 – compensation for damages for consumers
On 28 May 2022, the Act on Strengthening Consumer Protection in Competition and Trade Law came into force. It implements the requirements of Directive (EU) 2019/2161 of 27 November 2019 on the enforcement and modernisation of consumer protection rules and the amendments to the UCP Directive 2005/29/
New referral to the Enlarged Board of Appeal – continuation of the appeal by intervener – T1286/23
In the opposition appeal proceedings “T1286/23”, which we had already reported on “here”, the interlocutory decision of the responsible Board of Appeal 3.2.4 has now been issued.
Equivalent infringement in different European jurisdictions
As part of our regular internal legal seminars, Dr. Wilhelm Eger held a talk on current developments in infringement under the doctrine of equivalency in various European legal systems. The talk addressed differences and similarities as well as the way in which numbers and measurements are handled.
Implementation of the Pharmaceutical Strategy for Europe and the IP Action Plan Pt.3
The first two articles in this three-part series deal with document protection and the planned changes to supplementary protection certificates for medicinal products. This article deals with the so-called Roche-Bolar rule.
Implementation of the Pharmaceutical Strategy for Europe and the IP Action Plan Pt.2
Part 2: In addition to the Pharmaceutical strategy for Europe[1], the European Commission adopted a new Action Plan for Intellectual Property[2] in November 2020, which is intended to support companies in protecting their intellectual property and envisaged to contribute to promoting the use of inte
Implementation of the Pharmaceutical Strategy for Europe and the IP Action Plan Pt. 1
Part 1: Back in November 2020, the European Commission proposed a new Pharmaceutical Strategy for Europe which aims at ensuring the quality and safety of medicines while strengthening the sector’s global competitiveness.
Revision of G3/04? – Discussion on the continuation of the appeal by intervener
In opposition appeal proceedings “T1286/23.3.2.04”, Board 3.2.4 intends to deviate from decision G 3/04 and thus raises the prospect of a corresponding question being referred to the Enlarged Board of Appeal.
Dr. Michaela Weigel-Krusemarck on current developments in formal priority law
In the course of our regular internal attorney seminar, Dr. Michaela Weigel-Krusemarck gave a presentation on current developments on the formal priority. The focus was on the consolidated decisions G 1/22 and G 2/22 of the Enlarged Board of Appeal of the EPO.
Quality Dashboard of the EPO – useful for applicants?
A few days ago, the European Patent Office (EPO) started publishing quality indicators on a specially created quality dashboard (see: https://www.epo.org/en/about-us/services-and-activities/quality/quality-dashboard ). These quality indicators come in addition to the quality reports that the EPO has
European Parliament Supports Use of Some Plants Generated By New Genomic Techniques
European Parliament Supports Use of Some Plants Generated By New Genomic Techniques (NGT) But Opposes Patents for all NGT Plants
Determining the value in dispute in patent nullity proceedings
Determining the value in dispute in patent nullity proceedings if the pharmaceutical product in question does not make use of the teaching of the contested patent – Value in Dispute V
News on EU Pharmaceutical and Medical Devices Laws
With the so-called Pharmaceutical Strategy, the EU Commission in parts fundamentally amends the legislation on pharmaceuticals for use in humans.
Maiwald appoints Dr. Michaela Weigel-Krusemarck and Dr. Andreas Eisele as partners
Maiwald, one of Germany's leading intellectual property law firms, has appointed patent attorneys Dr. Michaela Weigel-Krusemarck and Dr. Andreas Eisele as partners with effect from July 1, 2024.
Maiwald appoints Dr. Sun Jin Lee, Sebastian Herzog und Dr. Tobias Philipp as partners
Maiwald is pleased to announce the appointment of Dr. Sun Jin Lee, Sebastian Herzog und Dr. Tobias Philipp as partners. They will take up their new roles at the start of the new year. With these new appointments Maiwald has further strengthened its team at partner level in the growth segments pharma
Dr Isabel Tomerius joins Maiwald as Partner
Patent attorney Dr Isabel Tomerius joined Maiwald GmbH, one of Germany’s leading IP law firms, as partner with effect from October 1, 2023. Dr Tomerius is a specialist in the fields of chemistry and biochemistry, laboratory and medical technology, life science, mechanics and optics. She will be base
Maiwald appoints Martina Boidol as partner
Maiwald, one of Germany’s leading IP law firms, has appointed Martina Boidol as partner with effect from 1 July 2023.
To use or not to use – the nuisance of repeated trademark filings
The so-called grace period for use in the EU Trademark Regulation is intended to give applicants the opportunity to protect their trademark and thus an important marketing tool before the product is firmly established on the market.
FCJ: Current decisions on cease-and-desist declarations according to "Hamburger Brauch" - Part 2
In its judgment of 1 December 2022 (Case No. I ZR 144/21), the FCJ clarified firstly that the delivery of a cease-and-desist declaration with penalty clause can also be made after a second infringement by means of a contractual penalty promise in accordance with the so-called "Hamburg custom", and s
FCJ: Current decisions on the cease-and-desist declaration according to “Hamburger Brauch” (“Hamburg
In its ruling of October 27, 2022 (Case No. I ZR 141/21), the German Federal Court of Justice (FCJ) made it clear that the regular limitation period in a claim for payment of a contractual penalty under the so-called “Hamburg custom” does not begin until the creditor has determined the specific amou
Smack for Amazon (Judgement of the court (Grand Chamber) of December 22, 2022)
So far, Amazon has been able to claim that infringements of intellectual property rights committed on its platform are not attributable to it and that, if these are deleted after notification, Amazon is fulfilling its obligation. The EJC has made a decision in this regard.
No use as trademark in a company’s own customer loyalty system
According to a decision of the OLG Nuremberg, the use of a sign for a company’s own customer loyalty system does not constitute use as a trademark, unlike in the case of a cross-company customer loyalty system (OLG Nuremberg, decision of September 26, 2022, 3 U 1101/22).
Parallel import of pharmaceuticals: ECJ strengthens rights of trademark owners
On 17 November 2022, the ECJ in its cases C-253/20 and C-254/20[1] addressed the question of whether and under what conditions a parallel importer may import and market under the trademark of the reference drug a generic drug that is identical in all respects to the reference drug.
European Patent Office: Oral proceedings via video conference become standard
On 22 November 2022, a decision by the President of the European Patent Office (EPO) was issued that from January 1, 2023, onwards oral proceedings before the first instance (including opposition proceedings) will by default be held via video conference. It will still be permissible for the members
No trademark infringement by model designation even in case of double identity
If the question in infringement cases is usually whether the opposing goods and signs are similar, claims by the trademark owner can, however, also fail at an earlier stage, namely regarding the question of use as a trademark (OLG Düsseldorf, judgment of June 2, 2022, I-20 U 282/20 - FSP).
New timetable for the UPC: launch planned for 1 April 2023
On 6 October 2022, the Preparatory team for the Unified Patent Court announced an updated and detailed implementation timetable until the entry into force of the Agreement on a Unified Patent Court (UPCA). Thus, there are increasing indications that the UPC can be expected to become operational soon
No Interruption of Forfeiture Periods in the Event of Negligent Legal Action
In a recent judgment, the ECJ has now clarified under which conditions a cease and desist letter can interrupt forfeiture periods (ECJ GRUR 2022, 986 – HEITEC.).
News from Brussels – Stricter rules on pesticides and human substances for medical treatments
In the past few weeks the EU Commission made several legislative proposals in the areas of chemistry/food safety and safety of (medical) products. Two of those topics are presented in this article.
Free samples of medicinal products – Section 7 (1) Health Services and Products Advertising Act HWG
As previously reported, the plaintiff sought an injunction against the distribution of free samples to pharmacies of a medicinal product bearing the label “for demonstration purposes”. A regional Court allowed the action. The appeal against was successful before the Federal Court of Justice.
News from the UPC – New Court expected to start operating in early 2023
The Protocol on the Provisional Application of the UPCA entered into force on 19 January 2022 and the Unified Patent Court (UPC) was born as an international organisation. At the same time, the final phase of the establishment of the Unified Patent Court, the so-called Provisional Application Period
Germany terminates agreement with Switzerland on the use of trademarks
For owners of German trademarks who use their trademark only in Switzerland, caution is now advised! Germany has terminated an agreement of 1892, according to which owners of German trademarks could rely on a use in Switzerland for genuine use of their trademarks.
Reform of the German Act against Unfair Competition 2022 – compensation for damages for consumers
On 28 May 2022, the Act on Strengthening Consumer Protection in Competition and Trade Law came into force. It implements the requirements of Directive (EU) 2019/2161 of 27 November 2019 on the enforcement and modernisation of consumer protection rules and the amendments to the UCP Directive 2005/29/