Dr. Markus Jacobi

Dr. Markus Jacobi

Position

Patent Attorney
European Patent Attorney
Partner

Languages German, English, French

Location Mannheim

Contact us

You would like to talk to Dr. Markus Jacobi about a specific project?

+49 621 42 271-0 jacobi@ib-patent.de

Markus Jacobi’s work at the firm focuses primarily on advising large companies on all IP matters and IP-relevant contracts, on oppositions and appeals, German nullity proceedings, the provision of validity and infringement opinions, Freedom to Operate analysis and IP due diligence as well as litigation support.

Previously, as an executive of a major pharmaceutical company Markus Jacobi was responsible for large patent portfolios for many years, managed IP litigation at various locations, and supervised the sale and acquisition of companies.

Both his background in various areas of chemistry, pharmaceutics and medical engineering and his 30 years of experience in the field of patents, including his position as Vice President of Patents at Sanofi in Paris, provide an ideal basis for his work. Markus Jacobi has been a partner of the firm for over 12 years and is the author of many articles in the areas of patent law and technology transfer.

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Qualifications

  • European Patent Attorney
  • German Patent Attorney
  • European Trademark and Design Attorney
  • Degree of Dr.phil.nat.: Thesis in organic drug synthesis at the Goethe University, Frankfurt
  • Degree of Diplom-Chemiker: Thesis in organic chemistry at the Goethe University, Frankfurt
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Memberships

  • epi Institute of Professional Representatives before the European Patent Office
  • FICPI International Federation of Intellectual Property Attorneys
  • Patentanwaltskammer (Chamber of Patent Attorneys)
  • VPP Association of Intellectual Property Experts
  • GRUR German Association for the Protection of Intellectual Property
  • LES Licensing Executive Society
  • RI Rotary International
  • StuSti German National Academic Foundation
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Publications

January 2015

“EPO T 1247/12 – Inventive Step for Insecticide-Treated Textiles”, IP kompakt No. 1, Bundesanzeiger Publisher, Cologne

December 2012

“Aluminum Vehicle Assemling Element – Evidence Submitted Late to the EPO T 02300/09”, IP kompakt No. 12, Bundesanzeiger Publisher, Cologne

October 2012

“Metathesis Catalysts – Subject-Matter of the Appeal T 0266/09”, IP kompakt No. 10, Bundesanzeiger Publisher, Cologne

October 2011

“Nebivolol – Novelty of a Drug Patent in the Pharmaceutical Sector X ZR 88/08”, IP kompakt No.10, Bundesanzeiger Publisher, Cologne

January 2011

“Transdermal Therapeutic System – Federal Supreme Court BGH Xa ZR 30/07, IP kompakt No. 1, Bundesanzeiger Publisher, Cologne

April 2010

“Requirements for the Use of a Trade Mark”, IP kompakt No. 4, Bundesanzeiger Publisher, Cologne

January 2010

“When a Skilled Person Uses an Ordinary Path”, IP kompakt, Bundesanzeiger Publisher, Cologne

October 2009

“EPO – An Avoidable Priority Trap”, IP kompakt, Bundesanzeiger Publisher, Cologn

2000

“Little Danger through Expiring Patents”, FUTURE 2, 72

2000

“Patents, the Elixir of Life for Biotech Start-Ups – Stock Market Success with Biotechnology”, Finanzbuch publisher, Munich

November 1999

“The Elixir of Life for Biotech Start-Ups – Biotechnology and the Significance of Patents”, Going Public

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Speaking Engagements

Mannheim 2016

“On the Disclosure of the Invention”, Mannheimer IP-Lunch

Heidelberg 2015

“Patent Law and Procedures”, Seminar at the University of Heidelberg

Heidelberg 2012

“The Patent Attorney as Guardian of Intellectual Property”, Lecture at the University of Heidelberg

Mannheim 2012

“Life-Cycle-Patents”, Lecture at the University of Mannheim

Frankfurt am Main 2011

“The Patent Attorney as Guardian of Intellectual Property”, Seminar at the German National Academic Foundation

Munich 2010

“Practical Experiences with German Pharma Patent Infringement”, Foley Symposium

Johannesburg 2010

“Patent Term Extension and Licensing”, LES-International Conference

Moscow 2010

“Supplementary Protection Certificates in Biotech”, Workshop at Russian Patent Office

Istanbul 2008

“Creating Intellectual Property Strategies in a Company”, Chamber of Commerce

London 2008

“Utilising Second Pharmaceutical Use Claims”, IQPC-Pharma Conference

Bad Homburg 2008

“The Protection of Intellectual Property”, Rotary-Meeting

New Orleans 2007

“Intellectual Property Portfolio Management”, AIPLA Conference

Moscow 2006

“The Role of Technology Transfer in Innovation”, LES Conference

Zagreb 2006

“The Patent System in Europe and in Croatia, SPC”, Seminar of the EPO, SPCs in Biotech

Warsaw 2005

“The Role of Supplementary Protection Certificates in Pharmaceutical Industry”, European Patent Office Workshop

Havana 2002

“The Significance of Patents and Licenses in the Pharmaceutical Sector”, Cuban Technology Transfer Workshop

Munich 2001

“Patent Strategy and Technology Transfer from the Point of View of a Pharmaceutical Company”, Akademie Fresenius Konferenz

Mannheim 2001

“Technology Transfer and the Pharmaceutical Business”, Bardehle-Symposium

Frankfurt am Main 2000

“History of Invention Protection”, Lecture at the Goethe university

London 2000

“Implementing Effective Biotech Licensing Strategies”, European Centre for Pharmaceutical Information Conference

London 1999

“Patent Licensing in Technology Transfer”, Biopharm Patent Forum

Bad Homburg 1999

“Safeguarding Technologies through Patents”, Technologieholding Venture Capital Conference

Areas of expertise

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Organic Chemistry

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Organic Synthesis

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Peptides

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Pharmaceuticals

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Pharmaceutical Chemistry

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Polymers