DR. JAN-MALTE SCHLEY

Hermann-Sack-Str. 3 · 80331 Munich
+49-(0)89-809-1338-00
English · German
  • EDUCATION

  • PhD, University of Federal Armed Forces 2005

  • Dipl.-Ing., Universität Karlsruhe 2002

  • Electrical Engineering and Information Technology



  • ADMISSIONS

  • German Patent Attorney

  • European Patent Attorney



  • OTHER DISTINCTIONS

  • Semester abroad at the Research Laboratory of Electronics (RLE) at the Massachusetts Institute of Technology (MIT)

  • Member of the German National Scholarship Foundation

Jan-Malte Schley is a founding partner of the firm Peterreins Schley. His practice emphasizes patent litigation and patent prosecution including opposition and appeal work. Dr. Schley assists clients in optimizing their international filing strategies in view of different legal requirements such as in areas of software and medical inventions. His extensive experience gained from opposition, nullity and infringement proceedings pays off for clients in patent prosecution as well as in portfolio management and strategic counseling.

Dr. Schley is regularly lecturing for the Academy of the European Patent Office since 2011.

Before starting the firm Peterreins Schley, Dr. Schley was a partner at Fish & Richardson P.C. for which he helped starting their Munich office in 2007. Before joining Fish & Richardson P.C. , he worked at the IP boutique Bardehle Pagenberg.

Prior to becoming a patent attorney, Dr. Schley was a Development Engineer for flash memory cells with Infineon Technologies.


SPECIAL TECHNICAL EXPERTISE

  • Software (search engines, machine translations, user interfaces, encryption, location based services and gaming)
  • Telecommunications (networks, wireless communication, mobile devices, channel coding, video coding including extensive experience with international standards)
  • Optics (lasers, optical waveguides, optical communications)
  • Semiconductors (memory design and processing)
  • Electronics (robotics, control systems; vehicle navigation systems)
  • Medical devices (stents, catheters, pacemakers)

REPRESENTATIVE CASES

  • Sasial Vehicle Technologies LLC adv. Toll Collect GmbH (navigation systems) Successfully defended Sasial in nullity and nullity appeal proceedings filed by Toll Collect in parallel to a pending EPO opposition. Obtained dismissal of the nullity action in first instance by the Federal Patent Court. Ruling was confirmed by the German Federal Supreme Court in its headnote decision “Mautberechnung”. The Supreme Court found that in view of pending EPO opposition proceedings a nullity action is inadmissible even when based on national post published prior art.
  • Schönfeld-Schnuck adv. University of Neuchatel (solar cells) Represented a client in an opposition case before the European Patent Office against a solar cell patent held by the University of Neuchatel. The patent had been asserted by Oerlikon as exclusive licensee against Sunfilm. The Opposition Division of the EPO declared the patent invalid prior to the trial in the infringement litigation case. The Board of Appeal confirmed invalidity of the patent.
  • Atmel Germany GmbH adv. Andreas Schueppen (Si-Ge technology) Successfully defended Atmel in an inventorship dispute brought by Schueppen who claimed an inventorship compensation of over 40 Mio EUR. Case was dismissed by the District Court Mannheim.
  • Boston Scientific Corp. adv. Bayer Schering Pharma AG (balloon catheters for delivering drugs) Represented Boston Scientific in oppositions before the European Patent Office against patents of Bayer Schering Pharma AG relating to drug delivery balloon catheters for the treatment of restenosis. Opposition Divisions declared three patents invalid; appeal pending.
  • Smith & Nephew (Overseas) Limited adv. BASF Speciality Chemicals Holding GmbH, CH (wound healing) Successfully defended patent of Smith & Nephew in EPO opposition proceedings.
  • Pantech adv. Phillips (video coding techniques) Represent Pantech in intervention in a nullity case before the Federal Patent Court which subsequently declared the Phillips patent invalid. Case settled.
  • ODS Optical Disc Service GmbH adv. Members of MPEG LA (video coding techniques) Defended ODS in a patent suit brought by multiple members of the MPEG patent pool. Filed multiple nullity cases with the Federal Patent Court. Case settled.
  • Vamco International adv. Systeme + Steuerungen GmbH (feeding devices for stamping presses) Represented Vamco in enforcing a patent relating to feeding devices for stamping presses. District Court Mannheim confirmed infringement. Case settled during trial before the German Federal Patent Court.

PETERREINS SCHLEY
Patent- und Rechtsanwälte

info@ps-patent.com