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Patent Infringements in Germany

The proprietor of a registered patent or utility model is entitled to file claims against third parties who may have used the protected intellectual property in an identical or equivalent form.

In the first place, it is possible to solve the unpleasant situation with an extrajudicial proceeding, a patent infringement lawsuit, a preliminary injunction due to breaching of patent rights, and if necessary, a penal proceeding can also be taken into consideration.

The alleged infringer may operate in the respective procedures (such as patent nullity proceedings or similar).  A patent infringement procedure often starts with an authorization enquiry for possible patent infringement/abuse of utility models or a corresponding warning. While interim relief procedures are more frequent in particular situations (e.g., trade fairs) such infringements are rare because of the difficult technical issues, as compared to a patent infringement case.

Within the portfolio management of patent portfolios, patent infringements are initially summarily examined, without an externally visible action, in such a way that an analysis of the characteristics of the patent can establish whether the object/process is patent- infringing.

In addition to the usual legal plea, the party attacked may also question the patent itself with a patent nullity proceeding.

Determination of a patent/utility model infringement

The starting point for the question as to whether a patent infringement exists is, in Germany, Article 9 of the Patent Act (PatG):  once an object has been registered as a patent, only the patent holder is authorized to use this patented invention, according to the applicable law. Third parties are not allowed to use the patented invention without an official authorization of the patent holder.

To product, offer, place on the market or use a product which is the subject of a protected patent, or either introduce or possess it for the above-specified purposes is not legal without the consent of the proprietor.

An analysis of the characteristics of the patent proceeding will help us understand whether a patent infringement/utility model infringement is present. However, determining the scope of the protection, as the purpose, the effect, advantages and the state of art of this object has to be taken into account in deciding the range of protection.

The breaching of intellectual property rights may then concern an identical patent infringement, a “nearly”-identical patent infringement, a technically equivalent patent infringement (same function), a patent-related equivalent patent infringement (equivalent functionality) or  an indirect patent infringement.

It is generally considered more difficult to analyse a patent-related equivalent patent infringement or an indirect patent infringement than a clear equivalent patent infringement.

Patent infringement: authorization enquiry against the infringer

On a case-by-case basis, it is better to start with an authorization enquiry against the infringer instead of notifying the legal violation with a written warning.

This is actually a much milder remedy than the warning. Here, potential infringers are only asked why they think they are entitled to these actions.

In this evidence, the infringer receives the opportunity to take a very early position and to avoid any possible infringement proceedings.

For further clarifications on this topic, we would highly recommend you to contact an attorney.

Patent infringement: Warning

By means of the warning, the infringer is informed about the previous protection of the patent in question and is cautioned about the actual situation. This typically means: request of compensation for the past and future license or omission. If the opponent party takes the warning into consideration, an injury procedure can be avoided and the desired result is achieved. If the warning is ignored, the patent infringement action has to go further.

Patent Infringement Lawsuit/Utility models infringement proceedings

A breach of intellectual property rights can primarily be prosecuted under civil law, i.e. patent infringement proceedings are brought before the patent litigation Chamber of the regional court (§ 140 b Patent Law).

In judicial proceedings, a legal representation is mandatory. In regards to patent infringement proceedings, the following claims can be issued:

  • Injunctive Relief (§ 139 PatG);
  • Claim for abatement or removal (§ 140a PatG);
  • Property Claims (§ 139 para. 2 PatG) /Compensation for damages;
  • Disclosure (§ 140b PatG)

At the end of the process, as a rule, the party losing the case will bear all the legal costs.

If a patent proprietor files a court proceeding for a patent infringement, this may have various reasons besides the report of the sole protective rights violation; financial interests can sometimes be the main reason. Patent infringement proceedings are in Germany particularly inexpensive if compared to the international framework. The legal and judicial costs are based on the value of the dispute. Thus, a first-instance procedure causes a total cost of approx. EUR 15000 up to approx. EUR 45000 (cost estimates apply to typical disputes). This is the most favourable value in Europe.

In addition, the "major" patent courts - starting with the regional courts in Düsseldorf, Munich and Mannheim - have also achieved an above-average reputation for their rapid and reliable decisions.

The typical patent infringement process in court is by no means terminated with a judgment or even passed over several instances. The reasons for the premature termination of an infringement procedure are the following:

  • Amount of the item value: If the infringement court charges a high amount of the dispute, the costs for the company, which loses the process, increase in part significantly. An out-of-court settlement is in this case definitely more attractive. However, the court costs are rather low compared to the legal costs. It is therefore not surprising that this effect is statistically significant but relatively small.
     
  • An annulment application before the legal proceeding: another factor that could lead to the termination of the proceedings is the possibility for the defendant patent infringer to bring an action for annulment before the Federal Patent Court.  A successful action would jeopardize the patentee´s patent. The risk that the patent is partly or, in the worst case, annulled in its entirety may lead the applicant to consider a comparison in the ongoing process.
     
  • Specialist Reports: the third event, which can lead to the premature trial, is the inclusion of external experts (made by the judge). The hearing of the experts leads to the fact that the information levels of the opponent and defendant align themselves with one another and thus also their expectations regarding the process exit. This increases the probability of a comparison by a remarkable ten percent.  

Moreover, patent infringement proceedings are still cost-intensive, particularly if expert reports are included.

Interim proceedings related to patent infringements

A lawsuit could require some time. In urgent cases, an interim injunction provides interim relief. With an injunction, the trademark infringer may be prohibited from infringing the patent if a license or order it threatened. As a rule, the Court of First Instance is responsible for the application for an interim injunction (in this case, therefore, the Patent and Trademark Litigation Chamber).

The interim injunction may be issued without consultation with the other party. If a provisional injunction proves to be unjustified, the opponent can assert a claim for damages against the applicant. A third party threatened by an interim injunction may deposit a protective precaution. This can prevent a provisional injunction from being issued without a prior consultation with the opposing party.

In fact, interim injunctions often result in patent or utility models infringements.  In many cases, evidences can also be substantiated by means of easy technical circumstances or particular events (such as fair trades etc.).

Penal proceedings related to patent infringement

An intentional infringement of property rights is punishable by law.

There is the possibility of filing for a penal application. The criminal application must be submitted to the District Court within a period of three months after the offense has been reported (§ 77b German Penal Code-StGB).

The various Public Prosecutors Offices often apply particular laws for infringements of property rights. In defines of a criminal proceeding, special procedures may also be considered.

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© German lawyer Michael Horak 2002-2017

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