Patent & Technology Law
Our experts in the field of Patent Law are recommended.(Kanzleimonitor.de 2019/2020)
Patents and technological innovations drive progress and are important assets for any company. Effective advice must take into consideration the requirements of all related areas of law, in addition to traditional elements, such as R&D, intellectual property strategies, employee invention law, technology transfers, the enforcement of intellectual property rights and litigation. Our interdisciplinary approach ensures that all relevant aspects are taken into account, including corporate and tax frameworks and antitrust and State aid law issues.
We provide advice on patent and technology law in the following focus areas:
Strategic patent advice
A patent strategy should be more than merely a registration strategy. A good patent strategy will mirror the innovation strategy of the company, form a significant element of the overarching mid- and long-term strategies of that company, and be an important indicator of the company’s competitiveness. Any successful patent strategy will not only align with the corporate strategy, but will also include essential factors, such as R&D structures, efficient management of employee inventions in compliance with the relevant laws, functioning internal and external communication processes and qualified and motivated employees.
Providing strategic patent advice is a focus of our work. We analyse the innovation and patent strategies derived from the corporate strategies of our clients. We develop new R&D structures and rules for the management of employee inventions and amend existing ones, and provide support in the improvement of communication processes. As part of the analysis of portfolios and products, we identify and rectify gaps in IP rights and work with clients to develop application structures that are appropriate to both, the market and the competitive environment. Our analyses help determine the added value of technical IP rights for companies, and we provide clients with the support they need to make the best use of these rights. We generate alternative exploitation options for IP rights, and assist with finding contractual partners and with contractual negotiations.
Employee invention law
Every tech-savvy, innovative company is faced with the challenge of satisfying the requirements of employee invention law. In practice, these requirements are often quite difficult to manage. The difficulty lies in establishing internal company and group processes and structures, which both satisfy the legal requirements and sufficiently take into consideration the existing corporate culture.
We can advise you on the establishment of internal company processes, provide training on how best to handle both employee inventions and the employee inventors themselves, work with you to compile guidelines - tuned to your corporate strategy - on managing invention disclosure, and develop remuneration schemes. In the event of a dispute with an inventor, we have the expertise to help you reach an out-of-court settlement and, should the case escalate, we represent you in arbitration or before the relevant courts.
Managing legal disputes / Litigation
Our expertise and experience with patent and technology disputes in invaluable. This includes the enforcement and defence of claims related to technical IP rights, software copyright, design and the complementary protection of related rights for technical products under the law of unfair competition. We have particular expertise with interim injunctions and with procedures to secure evidence (so-called inspection proceedings).
Enforcing the rights of our clients and defending these rights against attacks, and coordinating the enforcement or defence - even across borders - are part of our daily work. Our lawyers regularly appear before all major courts in Germany and are well acquainted with the respective customs. We execute border seizure procedures in cooperation with customs officials. We also safeguard your trade fair activities, prevent patent infringements at trade fairs and exhibitions, and work with authorities to organise the seizure of infringing goods.
We have significant experience with securing evidence in the run up to the enforcement of claims, especially with the initiation and execution of inspection proceedings in cooperation with technical experts, bailiffs and the police. This is especially pertinent and effective in the case of alleged infringements of working or manufacturing processes that are patent protected, copyright infringements involving computer programmes and source code changes, and the unauthorised use of trade and business secrets (e.g. technical drawings). In most parts of Germany, such procedures for securing evidence in summary proceedings are based on “case law”. The successful conclusion of a dispute during inspection or other interim proceedings therefore requires tact and knowledge of both, the requirements of the respective courts and the pitfalls of execution. This, in turn, requires experience and constant practice. We can offer swift assistance when competitors infringe your rights or you suspect that they have been infringed.
Protection of know-how
Much of our work in this field involves advising and representing companies in relation to the protection of know how, especially in connection with the illegal exploitation of know-how by third parties and the establishment of corporate protection strategies and mechanisms.
Our team has the depth and experience necessary to coordinate and enforce civil and criminal claims swiftly and simultaneously, preventing and penalising the unlawful exploitation of know-how. We advise in relation to know-how analyses and work with clients to develop protection concepts. We review contracts and assist with their drafting. In addition, we provide training for employees and division heads.
We have successfully advised our clients on technology transfers for many years.
Our experience in this area includes advising on the establishment of R&D intensive joint ventures, during contractual negotiations on the licencing-in or licencing-out of know-how and IP rights, with respect to the sale or purchase of companies, and on the structure of licencing and cooperation agreements. Our team also has considerable experience with M&A transactions involving significant technology.
Law & Technology Day
In the area of patent and technology law, every year in February BEITEN BURKHARDT, in cooperation with the patent law firm Horn Kleimann Waitzhofer, organises the Law & Technology Day. The event provides a platform for technology oriented companies ‑ especially German medium-sized companies ‑ for networking and a professional exchange. In addition to recent developments in patent and technology law, the focus of the event is placed on practical relevance.
The Law & Technology Day combines a professional transfer of knowledge with informal exchange in a familiar setting.
We look forward to seeing you at the coming Law & Technology Day in February 2019.
Programmes of past events can be found here:
- 2018 Programme: Protecting Innovations Before and After Market Launch (available in German only)
- 2017 Programme: R&D Cooperation and Technology Transfer (available in German only)
- 2016 Programme: Employee Inventions Law and Know-how Protection (available in German only)
Rechtsanwalt, LL.M. (Stellenbosch University), Licensed Specialist for Intellectual Property Law
Matthias W. Stecher
M.C.J., Rechtsanwalt, Licensed Specialist for Intellectual Property Law, Licensed Specialist for International Business Law
Prof. Dr Andreas Steininger