Dr Benjamin Pesch

Lawyer

Vita

My name is Benjamin Pesch. I joined Kather Augenstein in 2017 and I am Counsel to the firm. Since my admission in 2016, I have been advising and representing national and international companies of various industries in the field of patent and utility model law. Before joining Kather Augenstein, I practiced patent law at a leading international law firm in Düsseldorf.

Following to my studies at the University of Cologne and after obtaining the first state examination, I did my doctorate in the field of commercial criminal law, inter alia, on the question of the protection of trade and business secrets in the context of due diligence. During my doctoral studies, I worked as a research assistant in an international business law firm in Cologne.

The Kather Augenstein lawyers are very precise in their predictions of case outcomes and the opponent’s next steps. It is very refreshing to have this clarity and certainty to build business decisions on.

Chambers and Partners, Ranking 2022

After completing my doctorate successfully with the grade summa cum laude, I worked for two other international commercial law firms in Düsseldorf as part of my clerkship.

I am a member of the German Association for the Protection of Intellectual Property and Copyright (GRUR).

Representative cases

  • Involvement in multiple series of lawsuits for patent infringement of various standard-essential patents (LTE, 5G) at three courts as a part of international disputes

  • Involvement in several patent infringement proceedings concerning medical devices in the field of intermittent self-catheterization – e.g. LG Düsseldorf GRUR-RS 2021, 35163

  • Involvement in several patent infringement proceedings concerning an endoscopic device for causing hemostasis – e.g. OLG Düsseldorf, GRUR-RR 2021, 345 ff.

  • Involvement in several preliminary injunction proceedings concerning the binding effect of a final declaration of the IFA (“Informationsstelle für Arzneispezialitäten”) vis-à-vis an originator and its effects on generic manufacturers, e.g. GRUR-RR 2020, 283

  • Involvement in obtaining an inspection order against a competitor concerning the production of a raw material for the food and pharmaceutical industry

  • Involvement in patent infringement proceedings concerning a device for laser emission spectrometry for the purpose of sorting scrap parts

  • Involvement in patent infringement proceedings relating to network protection devices

  • Involvement in patent infringement proceedings relating to an exoskeleton

  • Involvement in a proceeding concerning claims for entitlement to property rights relating to an electromagnetic drive for a nail gun

  • Involvement in a proceeding concerning claims for entitlement to property rights relating to a method of manufacturing an automobile component

  • Involvement in utility model cancellation proceedings at the German Patent and Trademark Office and opposition proceedings at the EPO concerning a paper filter for separation of paint mist

  • Involvement in trademark opposition proceedings before the German Patent and Trademark Office and the EUIPO

Publications
  • The object of the patent for medical indications, Comment on FPC, decision of 4 May 2023 – 3 Ni 2/21 (EP), GRUR-RS 2023, 20724 – Mirabegron, published in: GRUR-Prax 2023, 639
  • Right of prior use in case of modifications of a prior used device and subsequent restriction of the claim – Comment on FCJ, decision of 20 June 2023 – X ZR 61/21, GRUR-RS 2023, 17236 – Faserstoffbahn, published in: GRUR-Prax 2023, 564
  • The Pharmaceutical Intellectual Property and Competition Law Review: Germany, published in: The Pharmaceutical Intellectual Property and Competition Law Review, 4th Edition 2023
  • No new administrative remedies in case of unenforced administrative remedies – Comment on HRC Brandenburg, decision of 2 June 2023 – 7 W 61/23, GRUR-RR 2023, 392 – Operation of websites, published in: GRUR-Prax 2023, 540
  • Immediate appeal against the decision on the disclosure of expert opinions in inspection proceedings – Comment on FCJ, decision of 1 August 2023 – X ZB 9/21, GRUR-RS 2023, 20436 – Ästhetische Behandlung, published in: IP Rechtsberater (IPRB), 15.09.2023, p. 180 et seq.
  • Exhaustion in case of covenant not to sue and covenant to be sued last – Comment on BGH, decision of 24 January 2023 – X ZR 123/20, GRUR-RS 2023, 1929 – CQI Report II, published in: IP-Rechtsberater (IPRB), 15.04.2023, S. 64 ff.
  • No unwillingness to take a license in case of an anti-suit injunction in a litigation against a third party – Comment on RC Munich I, decision of 20 October 2022 – 7 O 13016/21, GRUR-RS 2022, 34108 – Steuersignalkodierung; published in: GRUR-Prax 2023, 43
  • The Pharmaceutical Intellectual Property and Competition Law Review: Germany, published in: The Pharmaceutical Intellectual Property and Competition Law Review, 3. Edition 2022.
  • Effect(s) of a feature known in the prior art and equivalent infringement – Comment on HRC Karlsruhe, decision of 12 January 2022 – 6 U 112/20, GRUR-RS 2022, 9744 – Flüssigkeitszufuhranordnung, published in: GRUR-Prax 2022, 409
  • No effective claim of priority in case of mere obviousness of a feature – Comment on FCJ, decision of 20 May 2021 – X ZR 62/19 (BPatG), GRUR-RS 2021, 15904 – Bodenbelag, published in: GRUR-Prax 2021, 412
  • Preliminary injunction and subsequent doubts regarding the validity – Comment on HRC Düsseldorf, decision of 29 January 2021 – 2 W 26/20, GRUR-RS 2021, 1830 – MS-Therapie II; published in: GRUR-Prax 2021, 1830
  • Direct patent infringement in case of programmable device – Comment on HRC Düsseldorf, decision of 16 April 2020 – I-2 U 15/19, GRUR-RR 2020, 289 – Repeater, published in: GRUR-Prax 2020, 374
  • Insufficient naming of the inventor in case of naming artificial intelligence – Comment on the decisions of the EPO of 27 January 2020 – 18 275 163 and 18 275 174, GRUR-RS 2020, 653 and GRUR-RS 2020, 647, published in: GRUR-Prax 2020, 84
  • Computer-implemented inventions in patent infringement proceedings – Focuses in case law; published in: MMR 2019, 223 ff.
  • Patentability of computer-implemented inventions – Overview of the relevant decision taking of the FCJ and EPO and recommended actions; published in: MMR 2019, 14 ff.
  • Doctoral thesis on “Consideration concerning criminal and regulatory Law with respect to the provision of information prior to block transactions,” Duncker & Humblot, Kölner Kriminalwissenschaftliche Schriften, Volume 65, 2015