Insight

An Interview With Jan Bernd Nordemann of Boehmert & Boehmert, Winner of the 2019 "Law Firm of the Year" Award for Intellectual Property Law in Germany

The international property law attorney discusses his firm's recent successes and the trends taking over the IP field.

Q&A With LFOTY Boehmert & Boehmert
Best Lawyers

Best Lawyers

August 30, 2018 11:30 AM

Jan Bernd Nordemann, of Boehmert & Boehmert, spoke with Best Lawyers CEO Phillip Greer on his firm’s 2019 “Law Firm of the Year” award for Intellectual Property Law in Germany. Nordemann—who counts his father and his brother Axel Nordemann among his influences—discusses changes to the IP practice area, his landmark cases, and Boehmert’s dual focus on IP rights prosecution and litigation.

Phillip Greer: What achievements from this past year that you think helped lead your firm to being named a "Law Firm of the Year" for IP law?

Jan Bernd Nordemann: I think we have two very strong arms. The first arm would be our prosecution practice which is one of the largest in Germany, both for patents and trademarks. We file between 4,000 and 5,000 patent applications every year in the Germany/European patent office and PCC. We also file between 500 and 1,000 trademarks a year and we administer more than 100,000 registered IP rights. In Germany, we are consistently among the top three if not the top filer in patents and trademarks. And on the EU level, we are always among the top 10, if not among the top five filers. But we are also very strong in litigation, especially trademark litigation, but copyright litigation and patent infringement litigation as well.

Can you discuss the outcomes of a few recent landmark cases?

We had one very famous copyright case, which led to the first ever blocking order in Germany out of copyright against a rogue site. You oblige ISPs through court order to block out certain sites out of the country. And it was very difficult to establish that in Germany.

We also have ongoing trademark litigation concerning a color trademark between two pharma companies, which is a worldwide effort, and we are coordinating it for the defendant. Part of the litigation is in Germany, but there is also a case in Norway, a case in U.K, a case in South Korea, and a case in the U.S.—all the important markets in the world.

What recent trends have you witnessed within intellectual property law?

IP is growing more and more recognized for its value in the company. Because of this, not only prosecution, which means getting your rights registered and protected, but also litigation has become more important. Further, digitization is a big driver in IP. Cross-border enforcement has become increasingly important, especially within the EU. If you want to apply a pan-European enforcement strategy for IP rights, you first need to enroll an EU-wide protection strategy for IP rights. That's usually no problem, because you can rely on EU-wide rights. But to enforce them on a pan-EU level, that's something more complex. Still, it will be much more necessary in the future.

How does your firm stay agile against its competitors in this practice?

That's something that's a little complex to answer. I see two main reasons here. The first thing is that we are an integrated IP firm and can offer everything in IP: While our focus is on IP only, we do handle every aspect of IP. We consist of both patent attorneys and attorneys at law. We do prosecution for all IP rights, we do litigation for all IP rights, and all technical fields are covered. We are about 100 attorneys, which is pretty large for a German law firm, which does only IP. Basically, if you have an IP issue, we can solve it.

That said, we leave our partners a lot of freedom to do what they think is a good way to work and acquire new work. That also makes us strong because it gives us flexibility when it comes to going out to the world and offering our services in IP.

Is there anything else you'd like to share about your firm, perhaps something in this practice or in other groups that you are particularly proud of?

I think this integration of patent attorneys and attorneys at law creates a valuable synergy in our firm, with patent attorneys—who serve as technical experts—and attorneys at law working together in complex technology cases. We can offer something that other firms cannot offer.

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