Jonas Smeets, LL.M.

As an associate in our Düsseldorf IP team, I counsel clients on industrial intellectual property rights focusing on patents, utility models, unfair competition, as well as on the intersection with antitrust law.

Identifying infringements and potential work around solutions of our client's IP rights is the first step, before entering into negotiations with the opposing party and counsel. Subsequently, we gather evidence in preparation for litigation where we strongly represent our client throughout the case and in the oral hearings before court.

My cases include international (commercial) circumstances and concern multiple jurisdictions as well as potential standard-essential patent (SEP) scenarios. I thus have extensive experience in analyzing liabilities throughout the supply chain and in creating complex or multi-jurisdictional solutions to your individual case - whatever difficulties there may be.

Before joining our firm, I worked for an international law firm in Düsseldorf and for a leading international technology venture protecting their IP rights and commercial interests.

• Automotive industry - Representation of OEMs, Tier 1, and Tier 2 suppliers
• Interim injunction proceedings and proceedings to secure evidence, i.a. through execution of (border) seizure and dawn raids; selection and proposal of court-appointed expert to analyze gathered evidence.
• Litigation before the competent regional and higher regional courts in patent infringement proceedings and related validity issues, as well as nullity actions/opposition proceedings before EPO/DPMA/PatG
• Participation in a decision on the 'development of the law' by the Federal Court of Justice in favor of the client: BGH GRUR 2021, 1167 - Ultrasonic transducer in continuation of BGH GRUR 2017, 785 - Sealing system
• FTOs, Evaluation of Design Arounds, Infringement Scenarios i.a. for the following: Automotive Lighting, Autonomous Driving (including Software), Camera-sensors, LiDAR-sensors, Ultrasonic-sensors, Engine & Thermal Management, Material Composition, Transmission
• Commercial solutions to highly diverse and international cases, concerning infringement scenarios throughout the supply chain; handover of liabilities and specialized settlement agreements
• Telecommunication Industry - Representation of Service Providers & Patentees
• Advising on FRAND (fair, reasonable and non-discriminatory) negotiations to claim SEP (standard essential patent) infringement in and out of court; Drafting and concluding FRAND license agreements
• Consideration of increased secrecy requirements (Trade Secret Protection) in judicial proceedings
• Protecting clients by taking steps to force opponents into adequate enforcement collateral

• Federal Court of Justice decision on the 'development of the law': BGH GRUR 2021, 1167 - Ultrasonic transducer in continuation of BGH GRUR 2017, 785 - Sealing system
• Higher Regional Court of Munich : Defending against vindication of client's patent: 6 U 6188/19 (Regional Court of Munich I: 21 O 6020/18)
• Higher Regional Court of Dusseldorf : Appeal Cases with accompanying expert opinion (i.a. concerning trade secrets, document review according to sec. 142 Civil Procedure Code): I-15 U 43/17 & I-15 U 44/17
• Subsequent Decisions & Cases in favor of the client before the Regional Court of Dusseldorf (4b O [...]/20), Regional Court of Munich I (21 O [...]/20), Regional Court of Mannheim (2 O [...]/20; 2 O [...]/20) in a cross-boarder litigation asserting and enforcing patents i.a. in Germany, Czech, Austria
• Preliminary Injunctions & Evidence Procedures in software matters to confiscate developed programs & evaluate infringement through expert opinion before the Regional Court of Stuttgart (24 O 76/22; 24 O 98/20; 24 OH 4/22)