As a distinguished litigator who focuses on national and international patent litigation, what are some key considerations to keep in mind when commencing multi-jurisdictional cases before the courts? 

There is no secret recipe to successful patent litigation – and if there was, I would probably keep it a secret. A multi-jurisdictional litigation campaign certainly adds several layers of complexity. It is thus unsurprisingly crucial to carefully select your team and conduct proper and well-coordinated due diligence and strategy planning prior to commencing litigation. We have established trusted and litigation-tested relationships with outstanding colleagues all over the world. As we have no strings attached to foreign offices, we can individually assemble international teams to fit the profile of each specific case.

You cover a wide range of sectors in your practice, from telecoms to pharmaceuticals and consumer goods. How do you stay abreast of all the latest developments in such a broad array of fields? 

I do not claim nor try to be a technical expert in all of these fields. I am an expert on German and UPC patent law. I have been able to preserve my never-satisfied curiosity and aspiration to understand how the world functions, which I am now seeing in my kids. Paired with a reasonably good understanding of natural sciences, growing expertise and the excellent people that we work with – including patent attorneys and technical experts – I do also manage to understand highly complex inventions and, crucially, explain them to a panel of judges who do not have access to our resources. 

What are the most common mistakes that foreign rights holders make when it comes to enforcement in Germany, and how can they avoid these pitfalls? 

Probably the worst mistake is failing to have Germany and the UPC on the radar as potential litigation venues. Compared to other common jurisdictions for litigation, patent infringement proceedings are very efficient both in terms of timing and costs, with the prospect of being awarded an injunction in about one year after filing.

When it comes to SEP assertion, it is usually advisable to comply with all FRAND requirements established by the EU Court of Justice (CJEU) and the German courts before starting litigation. Rectifying the necessary steps is not impossible but usually more cumbersome than being well prepared beforehand.

AI tools are a hot topic in the IP world. How are you incorporating these into your daily practice, and what is the most important lesson you have learned so far? 

AI certainly is a hot topic and can be very helpful in many ways, such as patent-mining exercises, prior art searches and the like. The right AI tools can complement existing support tools quite effectively. However, while the results of AI algorithms are generally very impressive and often useful, as of today, I have not seen an AI application that has been sufficiently developed and perfected to be considered anything other than just that: an additional tool that we can use to support us in providing legal advice. Although they have great potential, they are still just one means of support among many. 

One year after the launch of the UPC, preliminary decisions are already shaping litigation strategies. What impactful developments are you watching for from the court in its second year? 

The UPC is handing down more and more decisions that provide helpful guidance regarding confidentiality regimes, for example, or the urgency requirement in preliminary injunction proceedings. Now that the first main actions are going to trial, it will be interesting to see the various divisions’ approaches on: 

• revocation actions (ie, which EPO case law will be adopted or how numerous claim limitations will be handled);
• SEP cases (eg, how the ZTE v Huawei CJEU judgment will be applied or whether rate setting will be possible); and
• damages (ie, whether a damages award will only be ancillary to an injunction or become a similarly important option for patentees).