The Legal 500 IP Forum, organised in association with BARDEHLE PAGENBERG, is a networking event and will bring together in-house legal counsel from different industries to discuss profitable IP strategies, share ideas and experience, and look at future best-practice.

The event aims at helping you develop a better understanding and derive best practices of the way in which IP is being protected and managed in the German "Mittelstand", in particular in hidden champion companies (i. e. medium to large companies which are comparatively unknown outside of their sector but nevertheless technology leaders in their industry). We shall also be presenting the latest research we have just completed which will show the business, organisational and IP issues faced by in-house counsel in Germany both now and in the future. So whether you are an IP specialist or not, this forum will help you from both a legal and a business perspective.

With other in-house counsel and business managers with a responsibility for IP attending, you should expect to leave the The Legal 500 IP Forum with new ideas to help you improve IP throughout your organisation!

Timing: 12:00 – 17:00 plus networking drinks

Participation in this event is free.

IP Event
Licensing & trasferimento di tecnologia, Procedure di brevettazione, Marchi, Design, Copyright e diritto d’autore, Contenzioso brevettuale, Valutazione dei brevetti
Data
29.06.2018
Questo evento è già passato.
Indirizzo
BARDEHLE PAGENBERG Partberschaft mbB
Prinzregentenplatz 7
81675 Munich
Lingua della conferenza
Inglese
Si prega di considerare le nostre indicazioni relative alla protezione dei dati.

Executive Summary

(See http://www.legal500.com/assets/pages/client-insight/the-gcs-guide-to-profitable-ip-strategies.html and Download PDF "IP Insight publication")

High-quality protection of intellectual property (IP) is without doubt among the crucial factors for innovative companies to succeed in today’s competitive markets. In Germany, technology leaders have for a long time recognised the value of safeguarding the innovations within their core products, like cars, industrial machinery, medical devices and all kinds of consumer goods. In the wake of the all-embracing digitisation of virtually any classic industry, and the increasing need to distinguish products from the competition through software and ICT-based added services, strong IP protection is becoming even more important – particularly as completely new players enter the market to stake their claim, now or in the very near future.

In the search for IP management best practices, it is worthwhile looking at the German Mittelstand, in particular the vast amount of hidden champion companies, ie medium-to-large businesses, which are not part of the Fortune 500 but nevertheless global technology leaders in their respective industry niches. How do they protect, manage and use their IP? And what are the best practices that can be learned from them to maximise the value of IP? BARDEHLE PAGENBERG collaborated with The Legal 500 to find out.

This report, which consolidates the results of a survey of 105 in-house counsel and one-to-one interviews with industry patent managers, aims at drawing the big picture of the issues faced by technology innovators when it comes to IP protection today and in the near future. The findings of the study were discussed at an event jointly organised by The Legal 500 and BARDEHLE PAGENBERG, where various IP managers from innovative German companies shared their experiences and insights, which are combined in this report.

It turns out that an overarching theme is the growing complexity in-house IP managers are faced with – a complexity which comes in different dimensions. Building and maintaining IP portfolios is inherently complex from a strategic point of view, since they can be used both as a sword and a shield:

  • On the one hand, IP rights can be used to proactively keep competitors out of the market, either by means of the mere presence of the roadblocks that these rights represent or by the proprietor actively enforcing its rights against infringers.
  • On the other hand, IP rights are also useful for obtaining leverage against others’ IP, such as by enabling countersuing and cross-licensing potential.
  • But IP rights are also business assets that increase the company’s valuation and can generate revenue in their own right through out-licensing.
  • Lastly, and sometimes least considered, strong IP rights can also safeguard the proprietor’s rights in co-operations and partnerships in joint development, production and distribution scenarios.

What’s more, setting up a successful in-house IP department is also difficult from an organisational perspective, as the department has to interface with various different stakeholders: engineers and researchers (ie the creators of the IP), management and sales, as well as external counsel, to name just a few.

Further hurdles lay in wait throughout the lifecycle of IP rights. Regarding the initial creation of IP, the experts agreed that it is paramount for an IP department to strike the balance between: (a) fostering a culture of innovation and putting suitable incentives in place so that innovations are reported bottom-up out of the R&D departments; and (b) aligning the protection activities with the strategic business objectives of the company, ie in a top-down fashion.

Then, on the way to obtaining protection during IP prosecution, the experts point to finding the right interface between in-house IP managers and outside counsel that combines the strengths of both. Only in-house IP managers can ensure that the IP rights pursued are properly aligned with the business strategy and product roadmap of the company, while the in-depth expertise of outside counsel in IP law can hardly be attained by in-house personnel.

The strengths of in-house and outside counsel should also be aligned for the exploitation of IP rights. Every successful in-house department should have processes in place to actively manage the IP portfolio, eg by reviewing its coverage along the way as new products are developed and technology evolves, as well as keeping the budgets reasonable by regularly pruning obsolete IP rights, thereby making room for renewing the portfolio. On the other hand, in-house counsel are well advised to take advantage of the expertise of outside counsel when it comes to enforcing the IP, not only as a final measure in court, but also to take a strategic approach in the handling of IP conflicts.

BARDEHLE PAGENBERG’s IP practitioners are constantly striving to provide the best possible match for in-house IP departments to allow them to tackle the complexities outlined above. We pride ourselves on having a culture where our patent attorneys and attorneys-at-law collaborate at eye level, which has been part of the very DNA of our firm since its establishment. In particular, thanks to this synergistic setup our patent attorneys are able to feed back their expertise gained in high-stakes IP litigation into the prosecution process, which allows them to obtain strong IP rights that are not only legally valid but also enforceable and can be monetised at a later date.

Anna Bauböck

The Legal 500 Deutschland, Chief-Editor


Dr. Dana Ferchland

The Legal 500 Deutschland, IP Editorial Specialist


Johannes Heselberger, BARDEHLE PAGENBERG

Dipl.-Phys. Johannes Heselberger

Attorney-at-Law & European Patent Attorney, Managing Partner

Dipl.-Inf. Bastian Best

German and European Patent Attorney, Partner

Chaired by Anna Baubock, Chief-Editor of The Legal 500 Deutschland,  IP Editorial Specialist Dana Ferchland, our IP experts Johannes Heselberger and Bastian Best, this is primarily an opportunity to network and share information with other in-house counsel, the Editors and expert partners.

You decide what needs to be discussed - from the cultural aspects of IP such as training and innovation, to the business issues such as the role of IP in strategic partnerships and licensing agreements, to using IP to build company value and create effective marketing campaigns, and using external experts effectively, though to the operational issues such as patent litigation, patent prosecution, trademarks resolution and unfair competition.

The discussion will be split into two sessions which will focus on the following:

12:00

Registration | Lunch | Networking

13:15

SESSION 1: Obtaining patents

  1. Extracting Inventions from R & D Departments
  • Role of IP department: Receiving invention disclosure statement or active prosecution of inventions? Teaching engineers about patent law? Teaching patent people about the latest developments in the technology?
  • Fostering an innovative culture and environment: How do you create an atmosphere of innovation? Financial incentives (magnitude, milestones); Non-financial incentives (honour, career boost)
     
    1. Patent Prosecution
    • Inhouse vs. Outside: What is the right “interface” - what can attorneys in law firms do better, what are the strength of inhouse patent attorneys / managers?
    • Cost control: Prioritization (e. g. gold, silver, bronze), territorial coverage, conscious reduction of portfolio over time.

    Panellists

    • Dr. Deborah Schmauß, Efficient Energy GmbH (Patent Engineer)
    • Dr. Jörg Dreyhsig, ‎Fresenius Medical Care (Global Head of Litigation and Opposition, Global Intellectual Property)
    • Thomas Bereuter, European Patent Office (Program Area Manager, European Patent Academy)
    14:45

    Coffeebreak

    15:30

    SESSION 2: What to do with patents?

    1. Own patents
    • Own use: Is patent coverage reviewed along the way?
    • Portfolio Management: Macro management - Considerations and strategies (Should 80 % of the patent portfolio cover 20 % of the profit?);
      Micro management - Comparison, evaluation (Should five patents on a technology be maintained, if three of them are weak?)

    1. Competitors’ patents
    • Infringement watch: Organisation (sales force knows the market, patent people know the patents), documentation, strategies (aggressive vs. non-aggressive, licensing considerations)
    • Handling of IP conflicts: Licensing-in, attacking third party patents or avoid “waking up sleeping dogs”?
    • Inspiration: Feed-back to own R & D - How is this organized? Is this a “by chance” result or the result of a planned process?

    Panellists

    • Dr. Christian Reinders, Dräxlmaier Group (Chief IP Counsel)
    • Dr. André Körtgen, ‎THALES Deutschland (Vice President Legal & Contracts)
    • Thomas Bereuter, European Patent Office (Program Area Manager, European Patent Academy)
    17:00

    Networking drinks on the rooftop terrace and at the lounge area