The possible extraterritorial effects of patents, which are thought of as national in character, are a topic of discussion in many countries. The general principle is that a German patent has no effect abroad; similarly, foreign patents have no effect within Germany. Therefore, as a general rule, a German patent can be infringed only by acts committed within Germany.
However, in the past few years certain German court decisions have shown that there are several scenarios in which acts committed outside Germany can infringe a German patent.
In a 2006 decison the Dusseldorf Appeal Court (I-2 U 58/05 Thermocycler) first clarified that “offering” in the sense of Section 9 of the Patent Act must - other than a binding offer under commercial law - be construed solely in an economic sense; specifically, any preparatory act with the ultimate goal of generating interest in the product is considered as “offering” the product. This includes advertising the product on the Internet.
Even advertising on a non-German website and in a language other than German may be considered offering within Germany if the website can be accessed from Germany and is in a language which will be sufficiently understood by the trade circles concerned (as is certainly the case with English). With the advent of reliable online translation services, it remains to be seen whether the courts will expect a German website user to translate into German text that he or she does not understand (eg, Japanese or Chinese).
So, what can be done to prevent the presentation of a product on a website outside Germany from being considered an offer in Germany? First, a clear notice should be included on the website stating that this product is not being sold in Germany. Mentioning that a product is “temporarily” not sold in Germany can backfire: it can be held to mean that the product is eventually intended for the German market at a later date and the presentation on the website actually does constitute an offer in Germany.
A second way to exclude an infringing offer is to present the product in such a way that it cannot be determined whether it would infringe the German patent. However, not showing the invention does not provide a safe harbour if the product is known in the relevant circles as making use of the invention. In addition, if the patent owner buys the product in the United States and finds out that it makes use of the invention, the presentation on the website not showing the invention would still be an infringing offer in Germany.
Other, more rebuttable circumstances may lead the German court to conclude that what is presented there objectively must be considered to make use of the invention without showing this in the presentation.
Exhibiting in a trade fair outside Germany
Offering in Germany requires that either the place of the sender or the place of the recipeient be in Germany. Thus, if somebody sends an offer (eg, prospectus material) from abroad to Germany, this is considered to constitute offering in Germany.
Such a shipment into Germany can be made by post, courier or personal messenger. This latter is the vehicle that can turn the exhibition of a product in a trade fair abroad into an offer in Germany.
In a 2013 decision the Dusseldorf Appeal Court (I-2 U 134/10 Run-Flat Device) explained in more detail the prerequisites for this kind of offer in Germany. First, the fact that a trade fair is announced as being international and thus attracts German visitors does not suffice to assume an offer in Germany. The following must be proven to the court:
- In at least one case an entity sent a visitor to the trade fair, and the exhibitor presented to that visitor the infringing product in question.
- The visitor cannot make a purchase decision for the interested entity, but can only submit the information about the product to decision makers within the entity.
- The exhibitor is aware of the entity’s intention to use the visitor as a messenger.
Therefore, at a foreign international trade fair, such an offer cannot be found to exist in Germany without some sort of cooperation by the exhibitor.
A typical scenario is that a company interested in a new product of a supplier first shown at the trade fair abroad communicates to the supplier that it will send X to the supplier's booth at the trade fair, and request that X be given all necessary information and papers in order to be able to report fully about the new product to the German company's chief executive officer. X would then be considered a messenger carrying the offer into Germany, with the exhibitor thereby making an infringing offer in Germany.
Even if the patent owner owns the same patents in the territory of the trade fair and could thus sue in that territory, such offer would also allow a suit in Germany, if desired.
There is a danger of committing contributory infringement when a product which is not protected as such in Germany is imported into Germany. If this product relates to an essential element of a system or method protected in Germany, this may enable – or at least facilitate – the implementation of an infringing act by the purchasers in Germany.
In such a case, the foreign supplier can be sued for contributory infringement in Germany; if convicted, the verdict can be enforced within the European Union under the Brussels Regulation. However, there are also other cases in which an entity acting solely outside Germany may risk a suit for patent infringement in Germany.
According to a recent decision of the Dusseldorf Appeal Court (I-2 U 51/08 Prepaid Card), it may constitute direct infringement of a method claim – and there seems to be no difference with system claims – even if claimed elements of the method or the system are carried out outside Germany, if these steps are imputable to the entity that carries out the remaining steps in Germany (known as “offshoring”). They are imputable if the advantages of the claimed invention are intended to take effect in Germany.
Such a situation may often occur with computer-related inventions where, for example, the server is hosted outside Germany but the client computer is located in Germany.
There are other situations in which an actor outside Germany cannot feel safe - for example, if some acts are carried out outside Germany only to create artificially the defence of lacking territoriality. In one such case (Federal Supreme Court X ZR 53/04 Funkuhr II) the means relating to an essential element of the invention were shipped abroad in order to be used to manufacture a patented device which was intended to be re-imported into Germany. In this case the importer of the protected device committed direct infringement of the German patent, but the entity that supplied the essential means for manufacture abroad was also considered to be a contributory infringer.
This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com.