We understand your invention - we have carefully assembled our team to cover all the major disciplines:

• Life sciences, chemistry and materials science

• Mechanical engineering, physics and electrical engineering

• Computer-implemented inventions

• Trademarks

• Design protection

• Freedom to operate, infringement and licensing

• Employee inventions

We also bring our legal and business experience to the mix. We usually work together, taking an interdisciplinary approach on most projects.

We understand your business. Collectively we leverage decades of experience in protecting intellectual property. And we can explain complex matters in simple terms, too. We lecture in patent law, innovation and marketing at a number of higher education institutions.

One main emphasis of our work lies in understanding and explaining molecule-based inventions.

The following questions continually recur within biochemistry, cell biology and medicine:

• which aspects of the invention can be protected?

• what subject matter makes a sensible business case for protection?

• when is the best time to file an application?

• how much experimental evidence for a fundamental principle needs to be documented?

• how broad can the claims for the invention be?

The answers to these questions require an understanding of the planned exploitation strategy, as well as a feeling for the expectations and needs of the licensing partners and investors. A large number of patent applications we have produced have been successfully licensed, or have served as the basis for founding new companies.

Basic research discoveries in medicine can lead to inventions with practical applications, if the knowledge acquired is related to use of known substances in prevention or treatment of ailments. Here the ruling of the European Patent Office’s Boards of Appeal on the so-called (second) medical indication has opened up a multitude of possibilities for protecting these inventions in recent years.

The area of molecular diagnostics has become significantly more complex since the recent decisions made by the highest courts in the USA. Here, in cooperation with our American colleagues, we find solutions where costs can be kept properly in balance with the likelihood of success. Furthermore, we also take into account claim formulations mandatory in the Chinese practice in this field.

Frequently asked questions in pharmaceutical chemistry include how broad claims for protection of substances, crystal forms, dosage forms and pharmaceutical formulations can be. Where necessary we carry out searches of commercial databases, such as Registry and Marpat, to derive substances related to discovered active agents. We have extensive experience in protecting inventions in the area of antibodies and cell therapy.

Protection of synthesis strategies is one of our main emphases in our work in classical chemistry. We work for developers of new methods for manufacturing “active pharmaceutical ingredients” (API) to identify the intellectual property rights held by competitors, and advise on how to proceed in each context.

In materials science it is often important to find the best possible protection for newly developed materials. The focus here is not only the material itself, but also the processes involved in its manufacture and applications. In this area we frequently work hand in hand with our colleagues from the disciplines of medical technology, mechanical engineering and physics.

In our work in the areas of mechanical engineering, physics and electrical engineering we have a wide range of specialist expertise to fall back on.

This stretches from optics and thermodynamics to classical mechanical engineering and modern medical technology.

We have extensive experience in vehicle and plant construction. Our attorneys in this specialism have already overseen numerous contracts for German automobile manufacturers and their suppliers.

Alongside this, the weighting we have placed on the start-up and newly-founded companies scene has also led to us overseeing contracts from the areas of alternative fuel vehicles, renewable energies and cleantech.

In medical technology the areas of mechanical engineering, electrical engineering and physics intersect with materials science and life sciences. Nowadays many inventions occur at the interfaces of different disciplines. By working together along interdisciplinary lines we ensure we do justice to all aspects of your invention.

Our consultations always place emphasis on planning the strategy that suits you best:

• how do you plan to exploit the invention?

• when do you require enforceable protection in the market to start?

• which markets are relevant for you?

• what budget will be appropriate to commit, and when?

In order to obtain the best possible protection for your invention, it is fundamental that we understand it. This is why we base our work on detailed dialogue with you. This enables us to draft clear and detailed claims for your invention, which means not only are proceedings with the patent offices made easier, but the subsequent enforcement of your patent against infringement is too.

Another main emphasis of our work is so-called computer-implemented inventions; in short, software.

One issue arising frequently here is whether it is at all possible to gain patent protection for the software you have developed. This can at least be granted if your software contributes to solving a technical problem by essentially technical means.

We work with you to establish whether your software is “technical” in this sense, and how it can best be protected (where applicable).

Even if you do not wish to apply for any patents of your own, it could be that what you have developed infringes rights held by others. Resolving the question of whether your newly developed app conflicts with other people’s intellectual property rights is also becoming more and more of a major issue for financial investors and other partners. We show you ways to answer this question – without going over budget.

Your trademark captures the essence of your business in a few letters.

A good trademark distils customers’ enjoyment of your products into a name. It crystallises your staff’s pride into a logo. It sums up how you differ from the competition under a single heading.

Trademarks differ from patents in having no end date. Trademarks often outlast entire generations of products. Trademarks facilitate the accumulation of lasting intangible value for your company.

Good trademarks are distinctive and original. If word elements are the main focus, they should at least also be protected as wordmarks. If an applicant has already found simple wordmarks to be inadmissible, an evaluation of the trademark concept is often worthwhile.

Before filing or using a trademark we urgently advise you to have a search carried out for similar older trademarks, to reduce the risk of conflicting with older marks held by others. There is no advantage to be gained from skipping this step. Simply filing a trademark grants the owner of an older trademark, capable of being confused with yours, entitlement to request a cease and desist order. The costs you incur from this are frequently higher than the costs for an appropriate search.

We will be happy to assist you with the concept, registration and enforcement of your trademark rights, and we will show you possible options in trademark strategy, and support you in building up an international portfolio. As with all other aspects of our consulting services, we ensure that costs and benefits balance up appropriately.

Design grants your products uniqueness – which is why original design deserves appropriate protection.

Protection of your products’ outward appearance is fundamentally different from protection of their technical properties; the two approaches can be made to complement one another. With a suitable applications strategy even diverse portfolios can be registered at relatively reasonable cost.

When filing your design we pay special attention to achieving the best possible reproduction of the item in question, since this plays a decisive role in determining the scope of protection. It makes it easier for us to enforce your intellectual property right against copiers and imitators of your products should your protected design be infringed.

For many in business one of the most important questions is whether they are infringing other people’s intellectual property (IP) rights.

As well as offering classical expert opinions services on the risk of patent infringement we also explore alternative routes for clients on a lower budget. In so doing we involve you in the analysis of the IP rights situation. As a result you are empowered to deal better with IP rights issues, your interaction with us will be more efficient and there will be less drain on your resources.

If other people’s IP rights are actually obstructing your business activities, we will actively support you – wherever possible – in licensing, circumventing them or getting them revoked. Often contacting the owners of such rights with the aim of obtaining a licence is the appropriate route to take. We have already steered many such cases to a successful conclusion using these solutions.

On the other hand, of course we will also help you in enforcing your IP rights against infringers, whether out-of court by issuing a warning, or in court by means of a temporary injunction or legal action.

There is no question that disputes cost money and energy. We strive for pragmatic solutions, particularly where small firms and founders of companies are concerned, and try to avoid lengthy dispute situations which divert you from your main work activities.

Your IP rights are your property. This means that you can also sell or license them. We will advise you on all the legal questions in respect of buying or selling licences, as well as on transferring IP rights. During this process we will also draft appropriate contracts for you on request, and support you during negotiations.

Our thoughts are our own. But what about our inventions?

Germany has special laws governing employees’ inventions. An employee must declare anything invented at work to his or her employer. If the employer decides to take up their option on the invention they can register and exploit it, provided the employee gets appropriate financial compensation from them.

These regulations impose legal obligations on companies. We help you to fulfil these without major bureaucratic hurdles.

For inventors who are (or were) employees, questions frequently crop up concerning their contractual relationship to the employer, particularly on the obligation to declare their inventions. We help you to settle these questions. Throughout the process we stay focused on delivering a neat and robust solution to any problems which may present themselves.

This concise introduction to patent law and strategy combines legal, scientific and economic perspectives to provide a thorough foundation in the subject.

The result is a set of guiding principles that allow readers to develop a holistic patent strategy aligned with their needs, and those of both fledgling and established companies.

Written by experts with up-to-date and first-hand knowledge in the field, this book takes a global view, with particular emphasis on recent modifications to European Law and the particularities of US Law.

It is recommended as first reading for scientists, managers and financiers, as well as providing patent agents and advisors a balanced commercial perspective.

Editors: Claas Junghans, Adam Levy. With contributions by Rolf Sander, Tobias Boeckh, Jan Dirk Heerma, Christoph Regierer, Adam Levy, and Claas Junghans.

Further publications:

• Anmerkung zu BGH v. 15.08.2013 - I ZR 80/12 - „Überwachungspflichten bei rapidshare (File-Hosting-Dienst)“, Loy Ullmann in: juris PraxisReport Wettbewerbs- und Immaterialgüterrecht 12/2013, Anm. 1

• Anmerkung zu OLG Frankfurt v. 27.06.2013 - 6 U 27/13 - „Ausbeuten der Wertschätzung einer Handtasche“, Loy Ullmann in: juris PraxisReport Wettbewerbs- und Immaterialgüterrecht 8/2013, Anm. 2

• Anmerkung zu BGH v. 19.04.2012- I ZR 86/10 - „Pelikan (TÜV und kein Ende)“, Loy Ullmann in: juris PraxisReport Wettbewerbs- und Immaterialgüterrecht 12/2012, Anm. 5

• Anmerkung zu BGH v. 01.10.2009 - I ZR 134/07 - „Scherz und Ironie in der Werbung (Gib mal Zeitung)“, Loy Ullmann in: juris PraxisReport Wettbewerbs- und Immaterialgüterrecht 5/2010, Anm. 1

• Anmerkung zu OLG Brandenburg v. 15.05.2009 - 6 U 37/08 - „Teure Foto-Kopien“, Loy Ullmann in: jurisPraxisreport Wettbewerbs- und Immaterialgüterrecht 10/2009, Anm. 4

• Anmerkung zu BGH v. 17.07.2008 - I ZR 219/05 - „Anbieten von Software auf eBay als Werbung im Sinne des Urheberrechts (Clone-CD)“, Loy Ullmann in: jurisPraxisreport Wettbewerbs- und Immaterialgüterrecht 12/2008, Anm. 5

• Anmerkung zu OLG München v. 20.12.2007 - 29 U 5512/06 - „Urheberbenennung im Vorspann eines Films (Pumuckl-Illustrationen II), Loy Ullmann in: jurisPraxisreport Wettbewerbs- und Immaterialgüterrecht 2/2008, Anm. 4

• Anmerkung zu LG Berlin v. 01.06.2007 - 103 O 246/06 - „Keine Erstattung der Anwaltskosten eines zu Unrecht Abgemahnten“, Loy Ullmann in: juris PraxisReport Wettbewerbs- und Immaterialgüterrecht 10/2007, Anm. 6

• Anmerkung zu LG Mannheim v. 14.07.2006 - 7 S 2/03 - „Bedeutung der Honorarempfehlung der Mittelstandsgemeinschaft Foto-Marketing“, Loy Ullmann in: juris PraxisReport Wettbewerbs- und Immaterialgüterrecht 5/2007, Anm. 6

• Anmerkung zu BGH v. 27.04.2006 - I ZR 162/03 - „Markenrechtliche Erschöpfung beim Ab-Werk-Verkauf (ex works)“, Loy Ullmann in: juris Praxis Report Wettbewerbs- und Immaterialgüterrecht 12/2006, Anm. 4

• Anmerkung zu BGH v. 03.11.2005 - I ZR 29/03 - „Auslobung eines Luxussportwagens im Rahmen eines Preisrätsels (Gewinnfahrzeug mit Fremdemblem)“, Loy Ullmann in: juris PraxisReport Wettbewerbs- und Immaterialgüterrecht 6/2006, Anm. 2

• Anmerkung zu BGH v. 15.09.2005 - I ZR 151/02 - „Zum Verhältnis des ergänzenden wettbewerbsrechtlichen Leistungsschutzes zum Geschmackmusterschutz (Jeans)“, Loy Ullmann in: juris PraxisReport Wettbewerbs- und Immaterialgüterrecht 2/2006, Anm. 4

• Start-ups nach der Gründung (Article in Exist-News 1/2012)

• Mühe wird belohnt (© Gründungsservice TU Berlin; Photo: Ulrich Dahl)