Insight

This German Firm Protects Their Clients in the Face of Emerging Technologies

Johannes Heselberger discusses theft of trade secrets, the pharmaceutical industry, and fake goods.

An Interview With Bardehle Pagenberg
Best Lawyers

Best Lawyers

January 23, 2020 08:00 AM

This interview was conducted as part of the 2020 Edition of The Best Lawyers in Germany “Law Firm of the Year” award recognitions. Our partner Handelsblatt, also published these awards on June 27, 2019, online and in print in their June 2019 edition.

Bardehle Pagenberg is Germany's 2020 “Law Firm of the Year” in Intellectual Property Law. For Johannes Heselberger, the firm's managing partner, aiding clients in the face of emerging technologies and helping protect clients is an exciting challenge. Mister Heselbrger joins Phillip Greer, CEO of Best Lawyers, to discuss those issues and how he handles one of his specializations, the pharmaceutical industry.

Trade secrets have become a notable topic of discussion in recent news cycles, notably in the U.S. China trade war. How prevalent is theft of trade secrets and what do you advise clients to do better to protect themselves?

Johannes Heselberger: It is an issue. Custom officers tell us that the theft of trade secrets by well-organized circles who have the technical means and, apparently, also the funds and manpower to carry out such attacks, is a reality. All-in-all, we see that many companies are ill-prepared for this challenge. Customs authorities gave us many examples of what they see every day. According to their experience, many companies and decision-makers are not aware of the threat. And that really is the starting point: Be aware of the threat.

Of course, the next steps are raising awareness, taking measures, and ending the threat. And the new German Trade Secret , which transposes a directive for trade secret protection into German law, is indeed along those lines. Certain protective measures have to be taken and have to be documented in order to protect certain trade secrets against theft—if the trade secrets still shall be recognized and protected as such. That is the starting point of our specific advice to a client.

With respect to one of your specializations, can you speak to what types of IP protection cases are most tricky in the pharmaceutical industry?

JH: There are quite a few examples. The first one, I would say, is related to marketing authorization, MAs. The European law provides for data exclusivity and a marketing exclusivity period provided. That can give patent-like protection, a monopoly based on the use of certain data, certain information, e.g. on clinical trials, in a marketing authorization application for a medication of a competitor. That is a tricky business, which takes place in front of the BfArM—the German authority for the admission of medications—and, in case of litigation, in our Administrative Courts. We have had a rather interesting case in this field.

The second tricky field, I would say, are compulsory licenses. They have been very rare for decades. Until recently, there had been only two cases since World War 2. Now, many more companies think about compulsory license situations. Of course, the importance of a compulsory license can be crucial because it can simply break the patent monopoly, which, as such, is still accepted as being justified as a standard relief. So the patent may be valid and infringed, but, nevertheless, the monopoly is broken for other reasons.

These are two tricky fields in pharmaceutical industry at present, I would say. There is one related area, touching on trademarks, namely parallel import cases. There's a Falsified Medicines Directive, which plays a big role here. That's another interesting part.

Fake goods have always been around but seem to thrive in an eCommerce environment. What strategies have you used for your clients to protect them?

JH: It is true that counterfeit items are increasing in number in online distribution. It was very interesting to hear the Head of the Central Unit for IP Matters at the German Customs talk a couple of months ago at our firm 's IP Academy about the change in their daily practice. He said that the number of seizures has exploded over the last few years, but the value per seizure has dramatically decreased. In earlier days, they would seize a container being shipped from somewhere into Hamburg, and all of the goods in it would be falsified goods. Nowadays, they are not after the container; they are after the small parcel, which is ordered by a private individual who buys on the internet. Now what can we do against that? The first step is that we counsel our clients to monitor the online businesses of their "competitors." And Custom Authorities are able and absolutely willing to help here.

This interview has been edited for length and clarity.

Related Articles

Announcing The Best Lawyers in Germany™ 2023


by Best Lawyers

The results include an elite field of top lawyers and firms from Germany.

Black, red and yellow stripes

Announcing the 2022 Best Lawyers™ in Germany


by Best Lawyers

The results include an elite field of top lawyers and firms, including our inaugural Best Lawyers: Ones to Watch recipients.

Announcing the 2022 Best Lawyers™ in Germany

The Company They Keep


by Best Lawyers

Thomas Richter discusses the idea of corporate criminal liability.

An Interview With HammPartner

Easy Being Green


by Best Lawyers

Markus Deutsch discusses the impact of climate change on the firm and its clients.

An Interview With Dolde Mayen & Partner

Impact of Climate Change on Real Estate Law


by Best Lawyers

Dr. Christian Schede discusses rent in large cities, the effect of Airbnb, and more.

An Interview With Greenberg Traurig

How to Advise Clients in International Arbitration and Mediation


by Best Lawyers

Karl Pörnbacher discusses how his firm stays at the forefront of advising clients.

An Interview With Hogan Lovells

The Future of German Technology


by Best Lawyers

How Germany's Law Firm of the Year in Information Technology is leading the way.

Isabell Conrad Schneider Schiffer Weihermulle

Hengeler Mueller on How German Firms Can Compete in the Global M&A Arena


by Best Lawyers

Germany's 2020 “Law Firm of the Year” honoree in Mergers and Acquisitions Law

An Interview With Hengeler Mueller

An Interview With Gleiss Lutz


by Best Lawyers

Germany's 2020 “Law Firm of the Year” in Labor and Employment Law

An Interview With Gleiss Lutz

An Interview With Latham & Watkins


by Best Lawyers

Germany's 2020 “Law Firm of the Year” honoree in Banking and Finance Law

An Interview With Latham & Watkins

An Interview With Rainer Krause of Hengeler Mueller, 2019 “Law Firm of the Year” Award Recipient for Corporate Law in Germany


by Best Lawyers

Rainer Krause discusses the unique training approaches that make Hengeler Mueller one of Germany's top firms.

Hengeler Mueller “Law Firm of the Year” Q&A

The 2024 Best Lawyers in Germany Launch


by Best Lawyers

The results honor the top lawyers and firms in Germany, including the 15th edition of The Best Lawyers in Germany™ and the 3rd edition of Best Lawyers: Ones to Watch in Germany™ recipients.

Germany town beside a river and bridge with clear blue sky above

Announcing The Best Lawyers in Switzerland™ 2023


by Best Lawyers

The results include an elite field of top lawyers and firms from Switzerland.

Red flag with white cross

Announcing The Best Lawyers in Austria™ 2023


by Best Lawyers

The results include an elite field of top lawyers and firms from Austria.

Red and white stripes

Announcing The Best Lawyers in Italy™ 2023


by Best Lawyers

The results include an elite field of top lawyers and firms from Italy.

Green, white and red stripes

Staunch Competition


by Andrea E. Nieto, Catherine H. Molloy and Jennifer W. Corinis

On the other side of the pandemic, after record numbers of employee resignation, protecting trade secrets is both challenging and being challenged.

Protecting Trade Secrets During Period of Res

Trending Articles

Announcing the 2023 The Best Lawyers in America Honorees


by Best Lawyers

Only the top 5.3% of all practicing lawyers in the U.S. were selected by their peers for inclusion in the 29th edition of The Best Lawyers in America®.

Gold strings and dots connecting to form US map

Announcing the 2022 Best Lawyers® in the United States


by Best Lawyers

The results include an elite field of top lawyers listed in the 28th Edition of The Best Lawyers in America® and in the 2nd Edition of Best Lawyers: Ones to Watch in America for 2022.

2022 Best Lawyers Listings for United States

2021 Best Lawyers: The Global Issue


by Best Lawyers

The 2021 Global Issue features top legal talent from the most recent editions of Best Lawyers and Best Lawyers: Ones to Watch worldwide.

2021 Best Lawyers: The Global Issue

The U.S. Best Lawyers Voting Season Is Open


by Best Lawyers

The voting season for the 31st edition of The Best Lawyers in America® and the 5th edition of Best Lawyers: Ones to Watch® in America is officially underway, and we are offering some helpful advice to this year’s voters.

Golden figures of people standing on blue surface connected by white lines

How To Find A Pro Bono Lawyer


by Best Lawyers

Best Lawyers dives into the vital role pro bono lawyers play in ensuring access to justice for all and the transformative impact they have on communities.

Hands joined around a table with phone, paper, pen and glasses

What the Courts Say About Recording in the Classroom


by Christina Henagen Peer and Peter Zawadski

Students and parents are increasingly asking to use audio devices to record what's being said in the classroom. But is it legal? A recent ruling offer gives the answer to a question confusing parents and administrators alike.

Is It Legal for Students to Record Teachers?

How Palworld Is Testing the Limits of Nintendo’s Legal Power


by Gregory Sirico

Many are calling the new game Palworld “Pokémon GO with guns,” noting the games striking similarities. Experts speculate how Nintendo could take legal action.

Animated figures with guns stand on top of creatures

The Best Lawyers in Australia™ 2024 Launch


by Best Lawyers

Best Lawyers is excited to announce The Best Lawyers in Australia™ for 2023, including the top lawyers and law firms from Australia.

Australian Parliament beside water at sunset

Best Lawyers: Ones to Watch in America for 2023


by Best Lawyers

The third edition of Best Lawyers: Ones to Watch in America™ highlights the legal talent of lawyers who have been in practice less than 10 years.

Three arrows made of lines and dots on blue background

Inflation Escalation


by Ashley S. Wagner

Inflation and rising costs are at the forefront of everyone’s mind as we enter 2023. The current volatile market makes it more important than ever to understand the rent escalation clauses in current and future commercial lease agreements.

Suited figure in front of rising market and inflated balloon

A Celebration of Excellence: The Best Lawyers in Canada 2024 Awards


by Best Lawyers

As we embark on the 18th edition of The Best Lawyers in Canada™, we are excited to highlight excellence and top legal talent across the country.

Abstract image of red and white Canada flag in triangles

8 Different Types of Criminal Defenses in Law


by Best Lawyers

Learn about the different types of criminal defenses available in law, including innocence, self-defense, insanity and more. Protect your rights today.

Silver handcuffs laying on finger printed papers

Wage and Overtime Laws for Truck Drivers


by Greg Mansell

For truck drivers nationwide, underpayment and overtime violations are just the beginning of a long list of problems. Below we explore the wages you are entitled to but may not be receiving.

Truck Driver Wage and Overtime Laws in the US

The Upcycle Conundrum


by Karen Kreider Gaunt

Laudable or litigious? What you need to know about potential copyright and trademark infringement when repurposing products.

Repurposed Products and Copyright Infringemen

Choosing a Title Company: What a Seller Should Expect


by Roy D. Oppenheim

When it comes to choosing a title company, how much power exactly does a seller have?

Choosing the Title Company As Seller

Unwrapping Shrinkflation


by Justin Smulison

Through the lens of the United States, we take a closer look at the global implication of companies downsizing products while maintaining and often raising prices.

Chocolate bar being unwrapped from foil