Wednesday, September 22, 2004

Munich Ho! A very interesting article from IP Law & Business on Jones Day and the firm's decision to run its' own EU patent practice out of Munich (home to the German and European patent offices), in lieu of hiring local counsel. One of the criticisms of German practitioners was that they weren't "American" (read: aggressive) enough:

Kahrl, who works in the firm's Cleveland office, says that clients pushed Jones Day into Munich. They were disappointed with the German firms that represented them in patent-related matters. "The kind of hard-driven advocacy we're so accustomed to in the U.S.--and in Britain--is not present in Germany, where appearances before a judge tend to be more of an academic discussion as opposed to a presentation of the client's interests."

Clients found EPO opposition proceedings particularly nettlesome, Kahrl says. In an opposition, one party tries to block another's patent from issuing, or to cancel a patent after it's issued. In a number of EPO opposition proceedings, Kahrl says, German lawyers didn't press their case with a detailed presentation the way American lawyers would before the U.S. Patent and Trademark Office. This is critical because patent disputes in Europe are generally resolved in opposition hearings, says Paul Kimball, a patent partner in the Washington, D.C., office of Womble Carlyle
Sandridge & Rice. In the United States, patent disputes typically are resolved with litigation.

Others are saying it's a bad idea, because such moves risk alienating foreign counsel that often send work to U.S. firms. However you view it, it's an interesting strategy for Jones Day, and time will tell how this all plays out.

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