From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Thursday, 2 June 2016

Life as an IP Lawyer: Düsseldorf, Germany

The AmeriKat's professional life, be it on the Kat or sat at her desk litigating her hours away, involves a huge amount of coordination, support and opposition with lawyers from all over the world. One of the IPKat's key objectives is to bring this global IP community closer together by sharing IP decisions, legislation and practice from across the world with our readers, with the aim that by understanding our unique perspectives on the culture of IP practice we can work together to make IP a success story for innovators, creators, users and the public. With those grand aims, the AmeriKat thought it would be worthwhile to ask the next generation of global IP lawyers to illuminate IP practice in their jurisdiction, as well as to give readers some fun reading over their lunch-al-desko...


Philipp Schroler
(Simmons & Simmons)
For the fourth in the series, we travel 350 almost due east to Düsseldorf, Germany where IP lawyer Philipp Schröler at Simmons & Simmons gets to grips with complex technology, wishes for better German trade secrets law and dreams of experiencing US discovery in New York City.

What can you see from your office window right now?

A lot of clouds, as well as the rooftop terrace of our office building (the Kö-Bogen, designed by the Polish-American architect Daniel Libeskind). During the summer, the triangular shaped flowerbeds bring a burst of color to my day.

When did you know that you wanted to pursue a career in IP?

As teenager in school, in addition to sports, I was always interested in technical things like computers, mobile phones (and later on smart phones), as well as interior design and architecture. That is probably the reason why I developed a personal interest in the protection of the function and design of products during my law studies.  When I got the opportunity to specialize in my studies, I chose information, telecommunication and media law. This specialty discipline was (and still is) offered by the ITM Institute of the University of Münster, which is directed by Prof. Dr. Thomas Hoeren, one of the leading German academics in the field of media and software law.

The view from Philipp's window
Walk us through a typical day...

I usually take the subway or bike to the office, which is located directly in the centre of Düsseldorf. After arriving at the office at around 9 am, I switch on my computer and armed with a bottle of water and a cup of coffee, I start working on our pending matters.  At the moment this mainly means drafting of writs for patent law court proceedings. Depending on the case this can be briefs for main proceedings, applications for preliminary injunctions or protective letters.  A couple of times a week, there will also be status update conference calls with clients and/or colleagues from our other offices.  Our clients have many cross-border patent litigation cases that require a lot of co-ordination.  I also spend time debating and brainstorming procedural or substantive issues of a case with a partners.  I will usually meet up for lunch with my colleagues or friends from other firms that I know from my time at university and/or legal clerkship. Back at the office, I usually spend some time studying IP law articles and recent case law, before continuing my daily work. Depending on how long I stay in the office, in the evening I try to visit the gym or just head home for dinner with my fiancée.   However, in case there is a court hearing, the typical day can of course be completely different.

What are the key differences in your system that clients/other lawyers from outside the jurisdiction find surprising or strange?

One thing certainly is the so-called “bifurcation” of infringement and nullity proceedings with regard to patents. This means, that a patent infringement action and a nullity action are heard in separate instances and by different, specialised courts: civil courts have jurisdiction over infringement proceedings (where there are special patent chambers), and nullity actions regarding the German designation of a European patent or national German patent are heard exclusively by the German Federal Patent Court (“Bundespatentgericht”) as court of first instance. The most important effect of this bifurcated system is that counterclaims of invalidity are not possible in infringement proceedings, as the civil court hearing an infringement action has no competence to decide on the validity of the patent.

As the IPKat's readers are likely eating their lunch while reading this, what is a typical lunch for you?

There is no typical lunch. We are lucky to be able to choose from a variety of restaurants in the direct vicinity of our office that offer daily changing lunch menus, so a typical lunch may include Italian pasta, a Japanese noodle soup or even a hamburger.
Landtag of North Rhine-Westfalia

What are the key challenges that are facing the next generation of IP lawyers in your jurisdiction? How are those challenges different from the previous generation?

Clients, in particular large enterprises, seem to be increasingly demanding and can sometimes expect a legal advisor to be on call ready to provide immediate answers to all different kinds of legal problems.  Of course one is always keen to fulfill this demand to make a client happy, but I think it is also important to keep in mind that the supply of high quality legal services is a very complex thing - something which does not always lend itself to instantaneous answers. It is often in your clients best interests to give yourself enough time to think everything through, instead of giving an immediate (unprepared) answer in an e-mail written off the cuff.  Before the advent of instantaneous e-mail and mobile communication, lawyers generally had a bit more time and space to think think through and develop the best possible solution for the client.  A time before smartphones.

What are the misnomers that people have about IP practice in your jurisdiction? 

Many lawyers in larger German commercial law firms consider IP lawyers as “lifestyle lawyers”, because we often work with well-known trade marks, designs or technical gimmicks.  We can also be regarded as mere support lawyers for M&A transactions. However, this view is definitely wrong, as it underestimates the great significance that IP rights have for many companies, in particular for research-based companies.

If you could change one thing about IP practice in your jurisdiction, what would it be?

I think that the system of IP protection in German already has a relatively high standard. However, I would welcome a further improvement of the legislation that protects industrial and trade secrets (currently covered by sections 17-19 of the German Act against Unfair Competition (“UWG”). I think that industrial and trade secrets are essential for many companies, in particular if a company decides not to seek patent protection or if patent protection is not available. However, simple technical possibilities like USB sticks and/or computer viruses seem to make it increasingly easy for infringers to gain access to sensitive data of competing companies. In my opinion, it is therefore important that on the one hand the law must reflect the latest technical developments, so that the legislation contains no legal loopholes, and on the other hand it must provide sufficient sanctioning options to effectively dissuade potential offenders from committing trade secret theft. I think that in particular, the latter should be further tightened in Germany, because at the moment the sentence for the disclosure of trade and industrial secrets according to sec. 17(1) UWG is limited to imprisonment not exceeding three years or a fine.  However, in practice most cases, trade secret theft is only enforced inter partes under civil law.

What gives you the biggest thrill in your job?

Getting the chance to review and analyse new products (inventions) from all different kinds of technical fields.  The technical aspect of my legal work is the most thrilling and challenging.

What are the top trends or cases that we should be looking out for in your jurisdiction in 2016?

One of the biggest changes for IP practitioners in Germany (and Europe) in 2016/2017 will be the European Unified Patent Court that will hopefully start in Spring 2017. I think a supranational European court and the possibility that lawyers and patent attorneys from different European countries might try cases before the same court will be very challenging for all IP practitioners and probably also create a lot of competition between European (patent) law firms.
Media Harbor, Dusseldorf

To be successful in your jurisdiction, what are the key skills a young IP lawyer needs?

With regard to patent law, the ability to simply describe complex technical facts to judges. Apart from that, creativity and the ambition to solve challenging problems in a relatively short period of time.

What other jurisdictions do you work with the most in your practice?

At the moment I mostly work with colleagues from the Netherlands and the UK, whereas our clients are located all over the world.

Looking into your crystal ball, where do you see the profession in 10 years’ time?

Apart from the start of the UPC and the changes implied by such a supranational system, I don’t think that there will be any major developments within the next 10 years. There will probably be some novelties in Germany, for example that court documents can finally be filed electronically, but that is something that is probably long overdue.

If you could practice IP law anywhere else in the world for a year, where would that be and why?

Probably New York City, as I had the chance to spent one month during my studies as an intern at the office of a criminal defence attorney there. I really liked the city and I would love to be involved in a patent infringement action in the US, in particular to see and better understand how discovery proceedings work.

If you could have lunch with someone famous in the IP world (judge, lawyer, inventor, politician, alive or dead), who would that be?

Probably Steve Jobs. Although I currently don’t use any Apple devices, I was always excited and impressed by the design and the functionality of the Apple devices, for example the probably already forgotten “click wheel” of the early iPods. I would like to discuss Steve Jobs’ remarkable career and what kept him motivated during all those years, in particular during the company’s “crisis” at the end of the 1990s.
After a busy day in Dusseldorf, its time for an
© Johann H Addicks

What is the best piece of advice you have ever been given?

It was an advice for legal writing from my mentor during my legal clerkship: use short sentences and simple language when writing legal documents. Once you are finished, read the text aloud. If possible, one sentence should not include more than two breathing spaces; otherwise there is a high likelihood that readers will not be able to immediately get the meaning of your sentence.

If our readers were to come to your city, what are the top three things you recommend they see, do and eat (in that order)?

See: The media harbour (“Medienhafen”). Do: Take the elevator to the viewing platform of the TV-tower (“Rheinturm”) located next to the Media Harbour to enjoy the sensational view of Düsseldorf from a height of about 166 meters. Eat Drink: Try the different styles of top-fermented German dark beer (“Altbier”) in the various breweries in the Old City (“Altstadt”), where they also serve typical German food like sauerkraut and bratwurst.


Peter Bonetti said...

Please could you explain a little more about what you mean by "a lot" of clouds? Are the Düsseldorf clouds more numerous than the clouds that are experienced by other IP lawyers around the globe, or is it their unusual density which makes them particularly unique?

MaxDrei said...

I like these "day in the life of..." features. Questions for Philip:

Bifurcation. Do lawyers in Germany still maintain that this is the key feature to render patent litigation in Germany quicker and simpler, with more robust and durable decisions than those you get in other EPC countries? What should we expect in Germany under the UPC?

Patent attorneys: If what excites Philip most is technology, did he ever consider a career as a patent attorney and, if so, why did he opt instead for a career as an attorney at law?

Anonymous said...

If he was so excited about technology, he should have embraced a technical career, not a legal one.

Patents are a barrier for creators, not an enabler.

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