Q&A with Dr Friedrich Emmerling
Dr Friedrich Emmerling is a patent attorney and an equity partner at BDPE in Munich, a genuine service boutique specialising in litigation and prosecution.
Acknowledged as one of Germany’s leading patent attorneys in the field of patent litigation, Friedrich has extensive experience in representing clients in a large number of opposition and nullity proceedings before the EPO, the German Patent Office, the German Federal Patent Court (GFPC), the German Federal Supreme Court and the Unified Patent Court (UPC).
What inspired you to pursue a career as a patent attorney?
The combination of technology, law, strategy – and problem solving. I’ve always been fascinated by technical innovation, but I also enjoy the analytical challenges, precision and structured thinking that the legal profession demands. Patent law allows me to work at the intersection of these fields, which is both intellectually stimulating and professionally rewarding.
How has the market changed since you first started practising?
When I transitioned from industry into private practice, the focus on electronics was mainly on patent prosecution. Patent disputes in this field were rare, particularly those involving standard-essential patents (SEPs). This changed significantly with the sale of large patent portfolios, the emergence of new market players, and shifts in market share. Today, SEP litigation plays a central role in IP strategy, especially in high-tech industries.
What are the greatest challenges currently faced by clients in the mobile communications and video technologies sectors?
A key challenge remains the lack of clarity around FRAND (Fair, Reasonable and Non-Discriminatory) terms in SEP disputes. Although case law has evolved, the treatment of FRAND still varies significantly across European jurisdictions. Additionally, the Unified Patent Court has now emerged as a new jurisdiction contributing to the development of SEP case law. As a result, clients must assemble the right team—capable of addressing infringement, validity, and FRAND issues—in the appropriate venue with tailored expertise.
What key attributes make for a successful patent attorney?
It is important to distinguish between patent attorneys focused on prosecution and those involved in litigation. Focusing on litigation, the essentials are deep technical and legal knowledge, strong analytical skills, and the ability to engage creatively with complex issues. Litigation often presents unexpected challenges, so flexibility and problem-solving are key. In larger cases, teamwork and clear communication are also critical in achieving success.
Finally, in the vast majority of the patent-based disputes, the decisive factor is the technical argument. Successfully developing such an argument requires a deep understanding of complex technical relationships within the context of patent law, the ability to find the right argument, and thus the ability to identify and assert the most persuasive line of reasoning, knowing which specific court accepts which kind of evidence and retrieving or producing exactly that evidence in support of the technical argument.
As a result, in both offensive and defensive patent litigation patent attorneys with experience, focusing exclusively on litigation bring a clear and strategic advantage. Moreover, perhaps the most important attribute is the patent attorney’s ability to work closely with the lawyers to ensure that the arguments are presented to the judges clearly and convincingly. To gain the necessary experience, it is essential for a competent patent attorney to be actively and, if possible, exclusively, involved in patent litigation.
If you could change one aspect of patent enforcement proceedings in Germany, what would it be and why?
Procedurally, I would not change anything. I find the German system well-balanced and adaptive. Over the past 20 years, I have observed the system evolve through both case law and legislative amendments—generally for the better. That said, granting the Federal Patent Court an extension of time for the preliminary opinion, upon reasonable request, could help avoid unnecessary preliminary opinions issued in haste.
One feature of UK High Court proceedings that I particularly appreciate is the requirement for parties to focus on their main arguments and submit skeleton arguments at the end of the written phase. Introducing a similar practice in Germany could help sharpen the focus and clarity of issues before trial.
What is the most memorable patent case you have been a part of and why?
It is difficult to single out one case—they’ve all been memorable in different ways. But Intellectual Ventures’ litigation against Deutsche Telekom, Vodafone, and Telefónica in its lawsuits against all major German telecommunications network providers stands out for two reasons. First, it debunked the idea that sheer volume wins cases; success was and is driven by the quality of the patents, not the quantity. Second, it showed that joint defence groups can be highly effective—if managed correctly. This case was a strong example of both principles in action.
What makes BDPE stand out from its competitors in the market?
Through our extensive experience, we have learned that patent litigation is not purely a legal issue — it is primarily a technical issue and a business matter. The final or long-term outcome of a patent dispute often depends heavily on the strategic effort invested.
At BDPE, we work closely with our clients, always keeping their business needs at the forefront. While we are committed to winning the case, we place equal importance on avoiding outcomes that are commercially unacceptable.
From the outset, we identify and clearly communicate potential risks, offering a full range of options and tools to respond effectively to the situation at hand. As the proceedings evolve, so does our risk analysis — continuously adapted to ensure our clients are empowered to make informed decisions, whether that involves gathering further evidence, investing in a workaround, or considering a license.
Based on long-term experience and knowledge of the courts involved, we also go one step further to win the case. If there is no clear evidence at hand, we consider how to and finally create convincing evidence.
In short, we don’t just aim to win — we aim to protect and advance your business.
What is the best career advice you've ever received?
Exceed expectations. It’s brilliantly simple and effective, and I have passed it on to others so many times in my career.