An interview with BDPE—your trusted litigation partner in Europe

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The German IP industry is one of the strongest and biggest in Europe. This is mainly based on the situation that we have several popular patent litigation courts in Germany like in Dusseldorf, Mannheim, Munich, etc. According to statistics, these courts altogether had more than 800 patent litigation cases filed in 2021, which is far more than all the other European countries together. We also have a very well-established case law here, so it is very attractive for international clients to start patent litigation in Germany. Additionally, now we have the strong local divisions of the Unified Patent Court (UPC) in Germany—Dusseldorf, Mannheim, Hamburg, Munich and we have the European Patent Office (EPO) headquarters in Munich. Therefore, Germany naturally provides a very strong IP service industry.

I have to say that BDPE is still a very young law firm with no more than 5 years of history. However, all of our founding partners are in this business now for over 20 years and have been focusing on patent litigation for more than 15 years, which means that we are already well-known in the IP and patent litigation community. We decided to focus on patent litigation since we have seen that there is a strong need for patent attorneys who are highly specialized in this field. Germany's strong intellectual property protection system and the current effectiveness of the UPC have both increased the demand for patent attorneys with patent litigation backgrounds. We believe that we are definitely right positioned for this kind of industry. We are located in Munich and Dusseldorf, with nine patent attorneys who are working only on patent litigation, which is quite unique in Germany. There are much bigger law firms here, but their patent attorneys are focusing mainly on patent prosecution. However, our patent attorneys are working full-time on patent litigation. 

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First of all, we have been thinking that this kind of service is missing. On the other side, I was with Bird & Bird, which started as one of the first big law firms in Germany to offer this kind of one-stop-shop service. I have to say, initially, I believed in this one-stop-shop strategy. However, it turned out that this really also has some problems. The main problems are as these firms receive so many cases that sooner or later potential client conflicts will arise either for the lawyers’ or the patent attorneys’ business.

In fact, we have not seen a one-stop-shop law firm offering both a top-ranked lawyer and a top-ranked patent attorney. If you want both you still have to choose from two different law firms. Our clients know this very well and do this kind of cherry-picking. Only the companies who are not so familiar with this kind of IP litigation will go to a one-stop shop, which, however, means they do not get both the top-ranked lawyers and experienced patent attorneys. This was the reason why we build up BDPE, and we are well-established at least in the specific market where we are working, although we are on the market only for five years.

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It depends on the cases. We are focused on electronics and in particular on telecommunications, where you have these cases for 3G, 4G, and 5G telecommunication technology, which is already challenging from technical perspective, so you need extensive experience in this area. Another challenge is that when dealing with these standard essential patents (SEPs), you have high risks for the clients because you may have got the injunction or preliminary basis already with the first instance judgment, which is a huge risk for the clients. Especially, if there is a litigation, usually we are not talking about one million or two million license fees. These are very high stake cases, so there is high pressure on the client. And these cases are completely different from patent prosecution. You have this time pressure, and you have to be available all the time, because you never know what the opposite party, i.e. the plaintiff or the defendant is just doing.

That's a completely different business if you are in this kind of multi-jurisdictional, multi-defendant cases. In some cases, we are working together with other defendants, and there are teams up to 30, 40 attorneys working together, defending against one plaintiff. This puts a high demand on our teamwork. The actions, the submissions, and the arguments all have to be coordinated. So this is completely different from the normal patent prosecution where you are as a patent attorney working alone for yourself, just responding to some arguments of the patent office. So it's more dynamic, it's more strategic. It's also time-binding and more challenging.

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We hire only people who have a respective technical background for these technologies, which is what distinguishes us from other patent law firms. We hire talents who worked not just in IP but also in technical areas including R&D or application fields. With this technical background, they are best positioned for handling these kinds of cases, because they know the needs of the industry. Furthermore, we have continuous trainings and seminars on the fields to help them keep improving and offering the highest level of service. And another thing is that we are working together with top clients like Huawei, Deutsche Telekom and top law firms including Bird & Bird, Clifford Chance etc. which is also always very helpful.

As I already mentioned, patent litigation is quite complex. There are people who like very complex cases. This is our chance. Patent attorneys who want to do more complex work are those we want to attract. Besides, we are well known in the market for handling these kinds of complex cases, so we get more and more resumes from people who want to join us. We support this with continuous professional training, and with all the options to work with the best law firms, the best lawyers and also with the great clients. What is also very attractive for the young talents is that they are immediately visible to the clients. Patent litigation really offers a very close contact with the client, which is what many young talents are looking for and don’t have if they do patent prosecution. Lastly, they can get support from the team. We always work in teams —— one partner and one young associate working together on the cases so that they are not working alone. 

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BDPE is handling around 70 cases for Chinese clients in parallel per year, in total more than 140 parallel nullity, opposition and infringement cases. Our patent attorneys are highly experienced. I can share with you some statistics. In Germany, we have about 800 patent litigation cases filed per year (with a certain number of cases settled), but we have roughly 3,000 patent attorneys, which means not every patent attorney will deal with a case per year. However, our patent attorneys handle an average of more than seven cases a year just for Chinese clients. In comparison, some patent attorneys deal only with a few litigation cases in their whole lifetime. Our firm is really quite unique in Germany for just handling almost only patent litigation cases.

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At Bird & Bird, we have represented Huawei, who have built great trust on us since then. However, because of client conflicts, we had decided to take the risk to leave Bird & Bird in order to still have the chance to represent Huawei. I think this a huge recognition of our service shown by Huawei at that time that they took our offer. What adds to our success, I think, is our service quality. We always try to identify potential risks for our clients as soon as possible and communicate the risk honestly and clearly so that they have all options to react to this new situation. Our rich experience in this field also helps us to access the risks and prepare the right strategy at the right time. I think we can usually give a very profound risk analysis of the situation and give the respective advice to the clients. This is particularly important, if clients are not very familiar with the German or European IP litigation and they just have to rely on the advice of their attorneys.

However, we have the impression that specific companies in China are meanwhile quite familiar with the IP business in Europe or in Germany and they know very well how to choose patent attorneys and law firms. They are not just looking at how big the law firm is, but are more focused on track record of the lawyers and patent attorneys and whether they are really good at their business. I think that is also one of the reasons why our clients choose us. Actually, the big players in telecommunication have known us for quite a while. 

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We have had great and excellent experiences and cooperation with the Chinese clients in the past. But what we see is that more and more technology is coming from China in the European market. China is a key driver in many advanced technology fields, so it is very likely there will be more and more patent disputes in the European market. Here we want to help Chinese clients to handle these risks in the European market.

We are already well known in the telecommunication business in China. But we want to spread also our expertise in other areas like medical equipment and renewable energy, etc. We have already represented successfully for this solar energy business of Huawei, which is now Huawei Digital Power section. Here we are well positioned, and we will try to attract more clients in this field. Meanwhile, we also want to attract more Chinese clients in fields including medical equipment, internet of things, electronics, and software, as well as certain parts of mechanical engineering.

At the moment we are growing and we are hiring a number of new patent attorneys. Our goal for the next 5 years is to build up a strong business in the field of renewable energies, and set up the excellent practice in the medical devices area with strong giant Chinese client basis. Also, we aim to create more and more awareness in the Chinese market that we are one of the top patent attorney teams to help them in UPC or German patent litigation on fields including medical devices and renewable energies.

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The biggest challenge is that we are not fully known by all the important players in the Chinese market. The first challenge is that we have to let the Chinese market know our expertise and experience of the team in German or UPC litigation. So that means we have to show more the capabilities that we have and the service we can provide and the benefit we can offer to the Chinese clients. And also, this is something we are doing with the existing clients. We hold seminars for them on German and UPC litigation so that they know how our services can help them in the European market.

China is one of the main markets for us. However, because of the pandemic, we have not been able to visit China over the last 2 years. Now, we will start our regular trip to China again. What we can say to all our potential Chinese clients is that we will go on our journey in October this year. We will visit a number of clients and we are looking forward to having more business and offering tailored services for Chinese clients. Also, we are further building up. Hopefully, we can also attract more Chinese patent attorneys to help us at BDPE in Germany.