You often represent large multinational corporations in high-profile international disputes. How do you manage client relationships when the stakes are so high?
In the context of high-profile international disputes, managing client relationships is crucial to achieve good cooperation between the many members of the team and to successfully conduct the litigation. In my experience, direct and transparent communication, responsiveness and taking the needs of team members into account are very helpful strategies, as is a sporting spirit and an open attitude towards the different perspectives of other team members. While fast and precise emails remain the mainstay of communication, regular video conferences and – above all – face-to-face meetings help to build and maintain a good, trusting and efficient team across national borders.
You previously told IAM that you expected competition among attorneys and firms to increase in the wake of the UPC. One year on from the court’s launch, is this happening, and how is Zimmerman & Partners standing out?
Competition is clearly visible between attorneys and law firms from different jurisdictions involved in the UPC system – as there is now competition that did not previously exist. However, since patent litigation is competitive by nature, this has not yet had a major impact on the way that our firm operates. We do what we have always done – to develop the legal position of the client – and this keeps us in good business.
What do you predict will be the biggest challenge facing your clients over the next 12 months, and how are you preparing to help them mitigate this?
In the context of litigation, the main challenge is to adapt to the new UPC system and its working processes. The tight timeframe of UPC proceedings puts parties under a lot of pressure; the defendant has little time to conduct prior art searches, develop invalidity and noninfringement arguments, file identified prior art and submit documents in support of noninfringement. But the plaintiff also has limited time to develop a strategy for defending its patent in light of the prior art and possibly develop a new infringement theory, which could require presenting new evidence.
You studied physics, mathematics and natural sciences during your time at university. What inspired you to pursue a career in intellectual property, and how does your technical education shape your strategy as a litigator?
Physics has always been my passion – but not my only one. When I finished my PhD in semiconductor optics, I deliberately looked for a profession in an interdisciplinary environment where the people involved need different types of skills. I came to realise that the patent world is such a place, since it demands technical expertise, legal knowledge, creativity, linguistic proficiency, good management and communication skills, team-building capabilities and a sense of sportsmanship. I expected the profession of a patent attorney to optimally suit me with my personal talents and qualifications. Now, having served as a patent litigator for many years and having handled numerous high-profile international litigation cases, I can say that my expectation was justified, and I appreciate the versatile challenges of my job alongside a team of highly talented colleagues every day.
What are the key characteristics of a world-class patent team?
The key attributes of a world-class patent team include strong technical and legal expertise, a high level of creativity and language skills and top-notch management capabilities. There must be team members who can come up with unconventional ideas and think outside of seemingly immutable doctrines. They must have quick and meticulous minds, be able to dissect complex issues and carefully parlay them in simple terms for technical laymen (eg, judges and other team members) who keep the team cohesive. Given that even the slightest weakness in a patent case can be exploited by the other side, communication and team-building skills are crucial to motivate all team members to contribute to the case as well as they can. This requires excellent cooperative expertise, especially in large international teams that handle high-profile litigation, which consist of many individuals with diverse cultural and linguistic backgrounds.
Joel Nägerl
Partner
[email protected]
Joel Nägerl is a German and European patent attorney. His main practice area is patent litigation, where he advises and represents large multinationals in high-profile international disputes in the fields of telecoms, electrical engineering, semiconductor technology and optics. Dr Nägerl also serves as an appointed court expert at the Dusseldorf Higher Regional Court and has co-authored the Handbuch des Patentrechts and the Europäisches Patentübereinkommen.