Malte Nentwig, LL.M.

Malte Nentwig, LL.M.

Attorney at Law (Germany)
Certified IP Lawyer


Contact



Hollerallee 32
28209 Bremen
Germany

T +49 (421) 340 90
F +49 (421) 349 17 68




Malte Nentwig provides advice in trade mark law. This includes, in particular, strategic advice on how to develop suitable trade mark portfolios. He has a strong focus on German as well as international trade mark searches. For his German and international clients, he is responsible for the filing of trade marks at the German Patent and Trade Mark Office, the European Intellectual Property Office, and the World Intellectual Property Office, as well the coordination of worldwide applications abroad.

Malte Nentwig has longstanding experience in the maintenance of international trade mark portfolios, including watching services for the detection of potential infringement. He advises on how to protect, strengthen, and enforce trade marks. For his clients, he files opposition against infringing third parties and he acts as a litigator in trade mark infringement procedures.In matters of design patent law, he advises clients on how to obtain protection and how to enforce design patents. In competition law matters, he advises clients in relation to their planned marketing as well as product campaigns, and is also acting as a litigator in court procedures, including requests for preliminary injunctions.Malte Nentwig studied law at the University of Kiel and the University of Munich, Germany, as well as the University of Queensland, Australia (LL.M.). Malte Nentwig joined BOEHMERT & BOEHMERT in 2004 and made a secondment with an international blue chip company. As a German lawyer, he was awarded “Fachanwalt für den Gewerblichen Rechtschutz” (Specialist in IP Law).Malte Nentwig is the co-author of the chapter on patent law in the practitioners guide “Achenbach/Ransiek/Rönnau Handbuch Wirtschaftsstrafrecht,” as well as co-author (with Prof. Heinz Goddar) of the German chapter in “Manual IP, Kluver Law International”.Malte Nentwig serves on the expert IP-Committee for the Bar Association Hanseatische Rechtsanwaltskammer Bremen. He is a member of the Design Committee at the International Trademark Association (INTA) and an Overseas Member of Chartered Institute of Trade Mark Attorneys (CITMA) as well as of the Intellectual Property Society of Australia and New Zealand (IPSANZ).Since 2018, Malte Nentwig has been listed as a recommended lawyer in the practice area of intellectual property law for Germany by Best Lawyers.

Further Information about Malte Nentwig


Gross Peter, Attorney at Law at BOEHMERT & BOEHMERT

Peter Gross, LL.M. (Aberdeen)

Gross Peter, Attorney at Law at BOEHMERT & BOEHMERT

Peter Gross, LL.M. (Aberdeen)

Attorney at Law (Germany)
Certified IP Lawyer


Contact



Pettenkoferstraße 22
80336 Munich
Germany

T +49 (89) 55 96 80
F +49 (89) 55 96 85 090




Peter Gross has focused his activities on the development of trade mark strategies, and he is very experienced in the defense and enforcement of intellectual property rights within Germany and abroad.The owners of large trade mark portfolios as well as companies who are at the early stages of setting up their trade mark and IP rights find him to be a competent legal advisor.

Furthermore, he conducts infringement proceedings in patent, trade mark, competition and design law matters. He also has a great deal of experience in the field of sales and distribution of me-too products.

His clients value the fact that he not only focuses on the legal issues, but that he also focuses on developing a clear and practical approach with regard to how legal problems can be settled as quickly and as cost-effectively as possible. He never loses sight of the economic consequences of a proposed solution in infringement proceedings, so it is not uncommon that preference is given to a pragmatic approach instead of a lengthy judicial dispute.

After having completed his studies in law at the University of Regensburg, he spent one year at the University of Aberdeen, Scotland, on a postgraduate course as an ERASMUS scholar where he obtained his Masters of Law (LL.M.) degree. In addition, he worked as a research associate from 1998 to 2003 at the University of the German Federal Armed Forces, Munich, at the Institute for Comparative Business Law, Technology Law, and Procurement Law.

Peter Gross began his legal career in 2001 in a patent law firm where he built up and expanded the legal side of the practice. After being partner there for five years, he joined the Munich office of BOEHMERT & BOEHMERT.

He is co-author of the practice handbook “Intellectual Property in the Food Industry”. Peter Gross is recommended in the Managing Intellectual Property IP Stars Handbook 2015 and in “WTR 1000 – The World’s Leading Trademark Professionals 2019”. He is also repeatedly recognized as a “Best Lawyer” 2023 by the trade publisher Best Lawyers.

Peter Gross is a member of the German Association for the Protection of Intellectual Property (GRUR), the International Trademark Association (INTA), the German Bar Association (DAV), the German-Turkish Lawyers Association, and the Munich Bar Association.

CJEU: The antitrust as­sessment of licence con­tracts for patents which have become invalid

In its decision of 7 July 2016 (case C-567/14 – Genentech / Sanofi-Aventis), the CJEU followed up on its antitrust Ottung case law (320/87, EU: C: 1998: 195, para. 11 et sqq.) and confirmed that licence contracts on patents which have become invalid can be valid if the licensee can terminate the licence contract within a reasonable deadline.

According to the CJEU decision, the cartel ban of Article 101 Para. 1 TFEU is not violated if in the case of the invalidation or the non-infringement of a licenced patent during the entire period of the licence contract a fee is to be paid for the use of the patented technology, as long as the licensee can terminate the licence contract within a reasonable deadline. Therefore, licence contracts which stipulate the payment of a licence fee for the use of a patented technology – even in the case of invalidity or non-infringement of the licenced patent – do not contravene antitrust law as long as a reasonable cancellation period is foreseen in the licence contract.

The CJEU also confirmed once again its decision Ottung of 12 May 1989 (320/87, EU: C: 1998: 195, para. 11 et sqq.) which stipulated that a licence fee can still be charged for the exclusive use of a technology even after the expiration of the period of protection of a patent if the licensee can terminate this contract within a reasonable deadline.

Furthermore, it also follows from the CJEU’s Genentech / Sanofi-Aventis decision that licence fees which have already been paid in the past cannot be claimed back due to the (later determined) invalidity of a patent.

With regard to licence contracts where a payment is also stipulated in case of non-infringement of the licenced patent, the Technology Transfer Block Exemption Regulation (TTBER) (Regulation (EU) No. 316/2014 of the Commission of 21 March 2014) has to be considered. According to para. 101 of the guidelines on TTBER, a hardcore restriction according to Article 4 Para 1a, d of the TTBER is given if the licence fees in a licence contract are calculated on the basis of all product sales, irrespective of whether the licenced technology is used. According to para. 102 of the guidelines on TTBER, such a licence clause which covers all product sales can, however, be admissible if it is indispensable, for example because the licensor cannot verify the scope on which his technology is deployed. Possibly licence clauses calculating licence fees based on all product sales can be valid irrespective of para. 102 of the guidelines on TTBER due to the CJEU Genentech / Sanofi-Aventis decision, as according to this decision they do not contravene Art. 101 Para. 1 TFEU if they contain a reasonable cancellation period. Ultimately, however, there is no legal certainty, so that contract clauses where licence fees are calculated on the basis of all product sales, irrespective of whether the licenced technology is used, should be avoided.

What is also still unclear is the situation that patent licences are granted for areas in which no patent protection existed at any time. An example for such a situation would be if a patent licence with a quota licence for the whole of Europe is agreed upon, although no patent protection exists in Latvia. Whether a reasonable cancellation period for the area of Latvia would be sufficient here to avoid a breach of antitrust law, is questionable.

However, patent licences should at any rate be invalid if the parties are aware at the time of the conclusion of the contract that no valid patents exist (also not in other areas).