Dr. Peter Steinecke

Dipl.-Biol.
German Patent Attorney
European Patent Attorney
European Trademark and Design Attorney
Registered representative before the Unified Patent Court (UPC)

 

steinecke@wjs-ip.de

Peter is specialized in prosecution and contentious inter partes proceedings before the European Patent Office (EPO) and has highest experience in opposition and appeal proceedings.

Peter studied Biology at the University of Cologne, Germany, and did his Ph.D. at the Max Planck Institute for Plant Breeding, Cologne, and at BAYER AG, Crop Protection Business Group, Monheim, Germany, where he already got in touch with intellectual property (IP) protection. Before becoming a patent attorney, he was project leader according to §§ 15 and 17 GenTSV in a biotechnological company (Bioplant GmbH). Besides working in private practice, Peter has gained experience in patent portfolio management in pharmaceutical companies abroad (Janssen Pharmaceutica, Johnson & Johnson).

Peter has been involved in several disputes within the biopharmaceutical and environmental technology area, including interferon beta (e.g. T1898/07); collagen-like protein polymers (T1331/07); methods of administering anti-TNF-alpha antibodies (EP 1 406 656 B1, Adalimumab/HUMIRA®); PDL BioPharma's antibody humanization patent (T2265/08); G-CSF biosimilar (e.g. T1125/12); antibody formulations (e.g. T0483/13); production of TNFR-Fc/Etanercept (T1571/13); and energy-from-waste plant MHKW Würzburg (3 O 3402/11, 3 U 853/12, X ZR 145/12). He has drafted and prosecuted valuable patents for his clients, including Aducanumab (BIIB037, anti-amyloid beta antibody); ENKASTIM® (anti-cancer HSP70 peptide); mi-TUMEX® (anti-HSP70 antibody); and Biograstim®/Ratiograstim®/Tevagrastim® (biosimilar G-CSF, filgrastim); and defended broad claims on antibodies, second medical use and pluripotent cell based drug discovery assays in opposition appeal proceedings (see, e.g., T2223/10, T2351/08 and T0385/14). His expertise is recognized in the EPO; he was, e.g., guest speaker for stem cell patenting on the seminar "Cell Day" before the EPO Examiners in 2010.

He applies this first-hand knowledge to his prosecution practice so as to maximize the strength of his clients' patents against subsequent opposition and their position in license negotiations and litigation. He established the patent portfolio of several biopharmaceutical start-up companies and supported their license deals.

Curriculum vitae

2023

Registered representative before the Unified Patent Court (UPC)

2020

Founding partner of WITTHOFF JAEKEL STEINECKE and, by way of transfer of business takeover of the patent department of MÜLLER FOTTNER STEINECKE

2009

Establishment of the Jülich office and expansion of the patent department

 

2004

Founding partner of MÜLLER FOTTNER STEINECKE and head of the patent department

2002

Joining the Munich office of Knauthe Eggers law firm

2000

Patent Law Department of JANSSEN PHARMACEUTICA (Johnson & Johnson), Beerse, Belgium. Entrusted with the protection and assessment of Intellectual Property in the field of biotechnology and drug development, in particular for the franchises CNS, gastrointestinal and infectious diseases, metabolic disorders, and pharmacogenomics; liasing with the Licensing and Research Collaboration & Technology Transfer Departments; rendering opinions on validity and infringement of patents on research tools and their use in drug discovery

1996 - 2002

Practice in the field of Intellectual Property protection with a large Intellectual Property Law firm in Munich including legal studies at the University of Hagen and eight months of training at the German Patent and Trademark Office and the Federal Patent Court, Munich.
Work in patent-related matters including opposition and appeal cases dealing with beta interferon, G-CSF, recombinant viruses, transgenic plants and animals, bacterial, yeast and mammalian expression systems, antibody technology, ribozymes, screening methods and with many other topics in the field of biotechnology
Cooperation with attorneys at law in infringement cases and nullity proceedings dealing with recombinant production of proteins, methods of producing virus-free pharmaceuticals

1995

Project leader at BIOPLANT – Biotechnological Research Laboratory GmbH, Ebstorf

1991 - 1994

Ph.D. (Dr. rer. nat.) degree in genetics, summa cum laude, with Professor Peter H. Schreier, MPIZ in Cologne, Dept. Professor Jeff Schell and BAYER AG, Crop Protection Business Group, Agriculture Center Monheim
Doctoral thesis: "Transcription and Replication of the phytopathogenic Bunyavirus Tomato Spotted Wilt Tospovirus (TSWV): Ribozymes as tools for the inhibition of transcription and gene expression of viral pathogens"
Scholarship of Boehringer Ingelheim Fonds

1985 - 1991

Studies in biology at the University of Cologne. Diploma thesis on the in vitro and in vivo activity of ribozymes with Professor Jeff Schell, Director of the Max-Planck-Institute for Plant Breeding (MPIZ) in Cologne and Professor Peter H. Schreier, BAYER AG, Crop Protection Business Group, Agriculture Center Monheim

Publications

  • German Utility Model Protection for medical use of a known compound in NEWSLETTER 12/2005 by Peter Steinecke

  • European Patent Office (EPO) affirmed method of administration as patentable feature in NEWSLETTER 11/2005 by Peter Steinecke

  • Why patents? Protecting inventions in biology and medicine in B.I.F. FUTURA Vol. 20 (2005), 170-174 by Peter Steinecke

  • Intellectual Property Due Diligence in Biotech - The Devil Hides Among the Details in www.legamedia.net (5/2003) by Peter Steinecke

  • Lack of industrial application? - Biotech Patents Take Flag in www.legamedia.net (1/2003) by Peter Steinecke

  • Are there any risks in prosecuting claims relating to alternative embodiments of a biotechnological invention in a European patent application? (published in Biotechnology Law Report, vol. 19, no. 3, June 2000, 310 - 314; published by Mary Ann Liebert, Inc.) by Hans-Rainer Jaenichen and Peter Steinecke

Academic publications

  • "Expression of a chimeric ribozyme gene results in endonucleolytic cleavage of target mRNA and a concomitant reduction of gene expression in vivo", Steinecke, P., Herget, T., Schreier, P.H., EMBO J. 11 (1992), 1525-1530.

  • "A stable hammerhead structure is not required for endonucleolytic activity of a ribozyme in vivo", Steinecke, P., Steger, G., Schreier P.H., Gene 149 (1994), 47-54.

  • "Ribozymes", Steinecke, P. and Schreier, P.H., In Plant Cell Biology, METHODS IN CELL BIOLOGY (Galbraith, D.W., Bourque, D.P., Bohnert, H.J., eds) Academic Press, Inc. 50 (1995), 449-453.

  • "Expression of a reporter gene is reduced by a ribozyme in transgenic plants", Wegener, D., Steinecke, P., Herget, T., Petereit, I., Philipp, C., Schreier P.H., Mol. Gen. Genetics 245 (1994), 465-470.

  • "Transcription and Replication of the phytopathogenic Bunyavirus Tomato Spotted Wilt Tospovirus (TSWV): Ribozymes as tools for the inhibition of transcription and gene expression of viral pathogens", Doctoral Thesis 1994.

  • "Early events of Tomato Spotted Wilt transcription and replication in protoplasts", Steinecke, P., Heinze, C., Adam, G., Oehmen, E., Schreier P.H., New Microbiol. 21 (1998), 263-268.