Overview

Ulrich Worm is a partner in the Frankfurt office of Mayer Brown and heads the German Intellectual Property practice. His practice focuses on technology related advice.

Ulrich advises clients in IP related matters, including patent, trade secrets, design right, trademark, unfair competition and copyright matters. He represents clients in patent infringement and nullity proceedings and other IP litigation cases before courts in Germany. In addition to litigating IP cases before German courts, he coordinates cross-border IP litigation cases. Further to his IP litigation practice, Ulrich advises on patent related matters such as patent license and other technology transfer agreements and is experienced in fighting counterfeiting of patent, design right and trademark protected products.

His practice further covers IT-related matters, including advising on cloud services, data and software licensing agreements, SaaS agreements, software development projects, e-commerce, and related data privacy and cybersecurity questions.

Ulrich represents clients of various industries with a particular focus on the Life Sciences and Chemicals sectors as well as the Automotive and TMT industries.

Prior to his legal career, he earned a professional training diploma in chemistry (staatlich geprüfter Chemisch-Technischer-Assistent).

Ulrich is an assistant professor at the University of Applied Sciences, Mainz.

Lenguajes Hablados

  • English
  • German

Experiencia

Patent Litigation and Patent Advisory

  • Defended an airline against allegations of patent infringement by a non-practicing entity in relation to a mobile boarding software solution. [Emirates vs. Aeritas]
  • Advised European conglomerate of companies in the machinery sector on freedom-to-operate and design-around questions [Coesia/Flexlink vs. J+P]
  • Represented Japanese company in the telecommunication sector in several patent infringement and patent invalidation litigation cases concerning mobile communication devices against US based technology company [Hitachi/Maxell vs Apple].
  • Represented Chinese producer of aerogel materials in several patent infringement and nullity/opposition proceedings against US competitor. [Alison vs. Aspen]
    Represented Chinese producers of artificial sweeteners in patent oppositions proceedings against US based competitor before the European Patent Office. [Jinhe/Hope/Vitasweet vs. Celanese]
  • Represented US based producer of chip sets in several patent infringement and nullity proceedings against non-practicing entity. [ARM vs. AST]
  • Represented a pharma company in a patent dispute with a competitor in relation to the market entry of a new pharmaceutical product.[Alexion vs. Chugai]
  • Represented Japanese company in the telecommunication sector in several patent infringement and patent invalidation litigation cases concerning mobile communication devices against Chinese telecommunications giant.[Hitachi/Maxell vs. Huawei]
  • Represented US based producer of fitness equipment in several patent enforcement activities. [Nautilus]
  • Advised an international investment bank on the implications of pan-European patent litigation cases involving one of the companies the investment bank had previously invested in. [Goldman Sachs on patent dispute between Mount Sinai and Shire regarding Fabrazyme]
  • Advised a US-based hedge fund on the implications of pan-European patent litigation cases involving two portfolio companies. [BlueMountain Capital – Biogen and Forward Pharma]
  • Represented an airline in a patent litigation case related to a mobile boarding software solution. [Air Berlin vs. Aeritas]
  • Advised a German automotive supplier on a Joint Venture in the field of carbon and other composite fibers. [Benteler – SGL Carbon]
  • Represented a China-based medical devices manufacturer in six patent litigation cases (three cases in proceedings on the merits and three cases in preliminary injunction proceedings). In addition to conducting patent infringement and invalidation litigation in Germany, the matter required coordination with parallel litigation cases in the US. [BMC vs. ResMed]
  • Represented a Netherlands-based electronics conglomerate in a dispute with a Korean competitor concerning LED technology. In addition to conducting patent infringement and invalidation litigation in Germany, the matter required coordination with parallel litigation cases in the US and Korea. [Philips vs. Seoul Semiconductor]
  • Represented a US-based medical devices manufacturer in a pan-European patent litigation case. [St. Jude Medical]
  • Represented a UK-based manufacturer of electronics and electrical components in several German patent litigation cases and coordinated parallel court actions in Asia and other European countries. [Strix]
  • Advised a US-based automotive supplier in a technology dispute with major European car manufacturers and other automotive suppliers. [Federal-Mogul vs. Daimler, Bosch and others
  • Advised a Chinese car manufacturer on the acquisition of technology from a European competitor. [BAIC – Saab and Opel]
  • Advised a German-based manufacturer of sanitary products on fighting Chinese copies of its patent protected products.
  • Represented a US-based medical devices manufacturer in a patent litigation case which involved a preliminary injunction against the patent infringer. [St. Jude Medical]
  • Advised a US-based specialty chemicals producer on fighting knock-offs of its process patent protected chemicals.
  • Represented a German manufacturer of household appliances in a patent infringement action against an Eastern European infringer.
  • Represented a US-based medical devices manufacturer in a patent litigation case against a Swedish competitor.
  • Represented a Hong Kong-based household appliances manufacturer in a patent dispute with a German competitor.
  • Represented a German plastics producer in a patent litigation case against one of its domestic competitors.
  • Represented an international sports apparel producer in a patent litigation case which interfered with the contemplated closing of a corporate transaction. [Pearl Izumi vs. Salomon]

Trademark Litigation and Trademark Advisory

  •  Represented one of the largest global internet sales platforms in several court cases about Intellectual Property infringements committed by users of its platform. [Alibaba vs. Coty, Vitra and others]
  • Advised US based producer of sports equipment on trademark dispute with German competitor [Callaway Golf vs. Sioux]

Information Technology

  • Advised major bank on the development and implementation of a digital asset management platform. [Coba – Digital Asset Management Platform]
  • Advised a German player in the fashion industry on a cloud computing project, on a project to restructure its IT infrastructure, and on an outsourcing project. [Atelier Goldner Schnitt – HP, DXC, Key-Work u.a.]
  • Advised a US-based software provider on the licensing of accounting software to a leading car manufacturer. [TeamMate (Wolters Kluwer) – Volkswagen AG]
  • Advised a global supplier for the rail industry on a software related dispute with one of the leading European train operators, on an IT Co-Operation agreement with another supplier and a research organization, and on a dispute related to software and hardware with another supplier for the rail industry. [Progress Rail vs. Deutsche Bahn and others]
  • Advised a Europe-based private equity house on the acquisition of an IT software provider for the debt collection industry. [Tesch Group – mediafinanz AG]
  • Advised a US-based player in the Chemical industry in relation to a “hate-posting” on Facebook against one of its managers. [Albemarle]
  • Advised one of the leading global accounting firms on an IT outsourcing project. [PwC - SAP]

Data Privacy and Cybersecurity

  • Advised German private equity house regarding data breach and data privacy issues. [Avedon]
  • Advised US based producer of implantable medical devices about data privacy and cybersecurity in relation to health data transmitted by the medical devices. [CVRx]
  • Advised US based producer of fitness equipment on data privacy aspects of fitness-apps. [Nautilus]
  • Advised Brazilian financial services company on a data breach incident under the GDPR. [B3]
  • Advised Brazilian media company on its GDPR compliance project. [Grupo Globo]
  • Advised a US-based rating agency on data protection implications of a contemplated investment in the field of solutions for the rating of small and medium sized companies. [Moody's – Euler Hermes]

Educación

University of Frankfurt am Main, PhD in Law

Second State Law Examination (bar exam), Frankfurt

Legal Clerkship (Referendariat), Higher Regional Court Frankfurt am Main

First State Law Examination, Mainz

University of Mainz

Kerschensteinerschule, Wiesbaden, Professional training diploma in chemistry

Admisiones

Bar

  • Frankfurt am Main, Germany

Membresías

  • Deutsche Vereinigung für gewerblichen Rechtsschutz und Urheberrecht (GRUR)
  • Recognized by Best Lawyers® 2019 for Intellectual Property Law
  • Ulrich Worm heads the German IP group. With enough automotive, pharmaceuticals and chemicals knowledge to compete with the very best, he “exhibits the highest level of professionalism, always balancing the technical details of a case with the hard realities of the litigation process”. As one client sums up nicely: “There is no more telling indicator of Ulrich’s value than the fact that we continue to use him after all these years; we are in a position to choose anyone we want, but we’re not remotely considering switching.”  IAM Patent 1000 2019
  • Ulrich Worm at Mayer Brown consistently performs at the top level. "He is responsive, cost effective, knowledgeable and a great communicator. One of the most valuable traits in an attorney is the ability to combine substantive legal knowledge with an understanding of the practical aspects of the business world. Too many attorneys have one but not the other. Ulrich can intelligently and articulately explain the legal nuances of IP law in Germany, but also has brilliant business acumen. He helps clients make informed decisions on a day-to-day basis." – IAM Patent 1000 2018
  • Recognized by Best Lawyers® 2018 for Intellectual Property Law
  • "Ulrich Worm of Mayer Brown is a dab hand at coordinating pan-European and transatlantic cases, especially those pertaining to complex chemistry patents." – IAM Patent 1000 2017
  • Ulrich Worm "possesses a rare combination of strategic legal analysis and tactical advice, while also understanding the business aspects of clients’ affairs. The end result is excellent work product, cost-effective and practical advice, and a focus on strategies designed to produce the optimal result – in other words, the best outcome at the best price". – IAM Patent 1000 2016
  • "Recommended lawyer" in the area of Dispute Resolution - Commercial Disputes – Legal 500 Deutschland 2016
  • "Recommended lawyer" in the area of Regulatory - Health Care Sector – Legal 500 Deutschland 2015