Going Global: Getting the Right Patent Portfolio

The patent work and adviser work has changed in the last five years. Cases are more complex, with less time to resolve them.

Nils Schmid, Partner at Boehmert & Boehmert says: “I think that being a partner at a law firm is no longer a one-man show. It is very important that the team under you is chosen well; the partner must consider if the attorneys working under them are good at what they do and consider the recruitment of those involved at the law firm. It is time to end the one-man shows and think about how to construct a good strong team.”

He speaks more below about important considerations behind developing global design patent strategies how the UPC will change the IP sector.


You develop both German and global patent strategies; what further considerations must you make for the global strategy?

The most important issue, for all my clients, is the conflict of interest regarding costs on the one side, and on the other, multinational protection for companies based in several jurisdictions. Ideally you want worldwide protection, but this comes with enormous costs for each invention.

Usually the clients, or people working in the patent field, think that the most important question is: ‘where is the market and where can I sell my products?’, which is a costly strategy to take on. There are other issues to address first, the first question to ask is: ‘How long is the product on the market?’; some products are on the market for more than 10 – 15 years, and this is already a good parameter to judge to which countries you should apply for protection. For example, In Germany there are utility models which are much cheaper and have the same protection scope which last up to ten years. For short term products, this is a good strategy to avoid costs, therefore it is worth checking if this would better apply for the client beforehand.

The second most important part is telling my clients what a patent actually is. Patents are not just to do with ‘rights’ but can prohibit your competitor to ‘do’ something; so actually, I am not interested in getting protection for something which my client may use in some countries, but rather, to check where their competitors are sitting. This is very important for developing a global strategy. You find the competitor’s headquarters: find out the production sites and check the headquarters of distribution, because if you want to use patents for either as a defence or offence, you have to attack your competitors on the actions that they are doing, not what you think they may do. This is very important when fixing your global patent strategy.

Last but not least, is taking into account to how reliable the jurisdiction’s legal system is. You should ask: ‘do I really need to get protection in countries where I know I can find it difficult to enforce my patent rights?’. For example, the UK and Germany are traditionally very reliable; so even if there is no market or competitor in those countries, it is worth to consider them as part of the global strategy. The same, of course, goes for the US, which is a reliable system outside of the EU, as well as China, which is getting more interesting and is becoming more a reliable system for companies to develop innovation.


What do you think is the most difficult aspect of building up design patent portfolios?

Regarding my larger and midsized clients nationally, either in France, Germany or UK, I think it is very important to guide and teach the clients awareness about the strength of a design patent. Usually if you are considering technical innovation you should always have in mind patent protection, but this can take years, especially regarding prosecution. However, design patents can be very useful and a strong weapon to avoid copies. This is not in the awareness of even large companies.

The second aspect is being aware of the fact that your design patent – if, for example, is fixed by a drawing -, has its limits towards protection. How can you make the patent protection abstract, global and broad? This is something that is very important for the patent attorney; they need to establish patent design portfolio to use the tools of their design to get, not only the global protection, but rather finer details of the design protected.

The further difficulties involve the international filing system. There is of course the unified system, but there are other countries which might be important for the client’s global design patent portfolio. The legal systems are very different, and it is very important for a design patent lawyer knows these systems, in order to make a design patent application which works for all of those national systems.


From your experience, what do you think is the most common issue your clients deal with? What can be done for them to avoid such an issue?

For my larger clients, I think an issue is a lack of education regarding strategical patent positions. What does the client need to know in order to take the correct decision? The attorney needs to have a very good overview of what the patent portfolio is, its weaknesses and its strengths; on the other hand, they must know their clients and get to know their deciding person(s), as they know the economical background. It is very important that my knowledge is transferred, in a very effective way, to the deciding person(s). This person is not always the inventor so it is vital they too know the portfolio. Further to this the patent portfolio of the competitor(s) must be known by the CEOs. This is a big issue for patent attorneys, they must create a clear and effective line of communication, which allows the deciding person(s) to make the best decisions. It is hard work ensuring everyone is on the same page, but it is something I believe is very important for larger clients

For smaller clients, a common problem is that their deciding person(s) is not aware of the level of innovation in the company. They will not always be fully aware of the vast amount of innovative growth, thus not making the most sound decisions.


As thought leader in your field, can you share changes you are hoping to witness in your sector in 2018?

What is very important for those in the EU is the UPC. This is something that is very in the focus, because the future of IP depends on how it develops. It seems that it is not an accelerated project, for the time being, but it could be quickly implemented. The task is for all IP advisers to prepare everybody.

I am an honourable president of the union IP, which is an association of European patent attorney, and I am now in a position where I am invited by the UPC parliament. I gain insights into how the UPC are progressing and the advantages they could have.

Aside from the development of the UPC, the other issue is Brexit. I wonder how the UPC will involve a multinational entity post Brexit; I do not think I have one client that is not linked to the UK. I think that the UPC will have a positive impact and I hope that Brexit does not prohibit the UK from being a part of the impact.

I would also say how the EPO are tackling issues regarding efficiency discussions and are slowly raising the bar; I do hope the quality gets better in order for the betterment of the future.


You lecture at the University of Strasbourg for those preparing to qualify as a European Patent Attorney: what are three things you think are vital in order to be the best patent attorney in this given climate?

The European Qualification Examination (EQE) is quite close to the reality of practising law. The cases you handle there, are daily life cases and this is something I think is great.

Honestly, a young patent attorney should constantly question their skill. Because all of the candidates either have a PhD, or a master degree and they have a very good academic background. The years undertaken to be admitted for the exam are not sufficient enough to give you all the skills and even though the exam is relatively close to what they should expect post qualifying, I think it is very good the candidate remains humble regarding the profession, in order to check themselves to ensure they are really right. If they have this attitude, you are ready to become a patent attorney.


Nils T. F. Schmid

German Patent Attorney

European Patent and Trade Mark Attorney

Pettenkoferstraße 22
80336 Munich

T +49 (89) 55 96 80


21 Boulevard Haussmann
75009 Paris

T +33 (1) 5603 6591




Nils T.F. Schmid specializes in traditional mechanical engineering. For his clients, especially medium-sized companies in Germany/Europe and Asian and American big corporations, he develops both German and global patent strategies and sees to their implementation with regard to the building up and management of patent and design patent portfolios.


As one of the largest and best-known law firms for Intellectual Property (IP) in Europe, we offer our clients any and all services relating to IP. Our company is proficient with assisting clients with patents pertaining to technical inventions and the protection of designs and trademarks. We offer support in copyright, antitrust and competition law in all fields of applied and engineering sciences.

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