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Applying for a patent

Patentability

What are the criteria for patentability in your jurisdiction?

Patentable inventions must be new and eligible for industrial application, and involve an inventive step. Under Sections 1 to 3 of the Patent Act, patents must have absolute novelty. For further details and utility models, see the “grace period” section below.

When determining novelty, only direct and unambiguous disclosure is relevant. However, this requirement is broadly interpreted when compared to the practice before the European Patent Office (EPO).

With respect to the inventive step, some similarities exist between German and EPO practice. However, the EPO problem-solution approach – although generally known by German patent law practitioners – is of considerably lower importance. The decisive question in Germany is often whether the prior art can provide any motivation or incentive to add further features to an already-known solution of the prior art.

There is no difference between the inventive steps of patents and utility models.

What are the limits on patentability?

According to Section 1 of the Patent Act,  the following are not regarded as inventions:

  • discoveries, scientific theories and mathematical methods;
  • ecstatic creations;
  • schemes, rules, methods for performing mental acts, playing games or doing business and computer programs; and
  • presentations of information.

However, this applies only where protection is sought for the subject matter or activities referred to as such.

To what extent can inventions covering software be patented?

Under Section 1(3) of the Patent Act, "programs for computers" will not be regarded as inventions. However, this applies only to the extent that protection is sought for the subject matter as such.

Another restriction on software is the requirement under Section 1(1) of the Patent Act that patents are granted to inventions or fields of technology, excluding any subject matter considered to be non-technological.

In practice, it is seldom difficult to establish novelty. However, when considering the inventive step, non-technical or software features are not usually considered. 

To what extent can inventions covering business methods be patented?

Under Section 1(3) of the Patent Act, "methods for doing business" will not be regarded as inventions. However, this applies only to the extent that protection is sought for the subject matter as such.

Another restriction on business methods is the requirement under Section 1(1) of the Patent Act that patents are granted to inventions or fields of technology, excluding any subject matter considered to be non-technological.

Again, in practice, it is seldom difficult to establish novelty. However, when considering the inventive step, non-technical or business method features are not usually considered.

To what extent can inventions relating to stem cells be patented?

The patenting of stem cells is not prohibited; however, it is only possible if the stem cells can be obtained without the destruction of human embryos.

Are there restrictions on any other kinds of invention?

Yes, the human body at all stages of its formation and development, including germ cells and the simple discovery of one of its elements (including the sequence or partial sequence of a gene) cannot constitute a patentable invention.

In addition, patents will not be granted for inventions which concern:

  • processes for cloning human beings;
  • processes for modifying the germ line genetic identity of human beings;
  • use of human embryos for industrial or commercial purposes; or
  • processes for modifying the genetic identities of animals which are likely to cause them suffering without any substantial medical benefit to man, animal or animals resulting from such processes.

Finally, patents will not be granted in respect of:

  • any plant or animal varieties;
  • essentially biological processes for the production of plants or animals;
  • methods for treatment of the human or animal body by surgery or therapy; or
  • diagnostic methods practised on the human or animal body.

The latter provision does not apply to products, in particular substances or compositions, used in any of these methods.

However, patents can be granted for inventions which concern:

  • plants or animals if the technical feasibility of the invention is not confined to a particular plant or animal variety; and
  • microbiological or other technical processes, or a product obtained by means of such a process, other than a plant or animal variety.

The Patent Act defines the following terms:

  • 'Biological material‘ – any material containing genetic information and capable of reproducing itself or being reproduced in a biological system.
  • ‘Microbiological process’ – any process involving, performed on or resulting in microbiological material.
  • ‘Essentially biological process’ – a process for the production of plants or animals consisting entirely of natural phenomena (eg, crossing or selection).
  • ‘Plant variety’ – a variety as defined under the EU Community Plant Variety Rights Regulation (2100/94), as amended.

Grace period

Does your jurisdiction have a grace period? If so, how does it work?

 In principle, Germany does not provide a grace period for patents. However, pursuant to Section 3(5) of the Patent Act, the disclosure of an invention will not be taken into consideration if:

  • it occurred no earlier than six months before the filing of the application; and
  • it was due to or in consequence of:
    • an evident abuse in relation to the applicant or its legal predecessor; or
    • the fact that the applicant or its legal predecessor had displayed the invention at an official or officially recognised international exhibition (few international exhibitions fall under this exception).

However, a grace period does apply to utility models. Use of the invention or description published in the six months before the priority date is not deemed to be detrimental to novelty, provided that it is based on the applicant’s own work or that of its predecessor in title.

Oppositions

What types of patent opposition procedure are available in your jurisdiction?

In Germany, the opposition process occurs after grant of the patent. A third party may file an opposition within nine months of the publication of a grant. The opposition may be based on one or more of the following grounds:

  • lack of novelty or inventive step;
  • the subject matter is not patentable in another respect;
  • the patent does not disclose the invention in a sufficiently concise and complete way to enable a person skilled in the art to carry it out in practice;
  • essential elements of the patent were taken without consent from a third party; or
  • the subject matter extends beyond the content of the patent application as originally filed.

The grounds for opposition must be substantiated within the nine-month opposition period. Oppositions are handled before the Patent Office Examination Division and a panel of three examiners will decide upon the case. Before the decision, an oral hearing will take place if requested by one of the parties.    

Apart from oppositions, are there any other ways to challenge a patent outside the courts?

Patents cannot generally be challenged before the civil courts, but rather through an opposition or a nullity case. Nullity actions are dealt with at the Federal Patent Court and can be lodged by any third party over the lifecycle of a patent.

The first phase of the proceedings is in writing, after which the Federal Patent Court will generally send a summons for an oral hearing with an unbinding first opinion on the case. The decision is made by five judges after the oral hearing. Appeals can be brought before the German Supreme Court.

If an opposition proceeding is already pending, a party which has received a cease and desist letter or against which a claim for patent infringement has been brought may intervene in the pending proceedings if the term for filing an opposition has expired. Such a party will be a full independent party of the opposition proceedings.

Further, the German patent procedure allows for third-party observations to be filed during examination of a patent. Third parties may bring forward any facts or arguments; however, they will not be an official party to the proceedings.

Cancellation actions against utility models can be brought before the German Patent and Trademark Office (GPTO). After a cancellation request has been submitted, the utility model owner will be notified and must oppose the cancellation request within one month. If it fails to do so, the utility model will be cancelled automatically. If the utility model owner opposes the cancellation request, a full cancellation procedure will commence.

How can patent office decisions be appealed in your jurisdiction?

Decisions in patent opposition proceedings can be appealed within one month of receipt of the decision. This term cannot be extended. The appeal must be filed with the GPTO and the prescribed appeal fee must be paid within the term for filing the appeal. A separate appeal fee is due for each appellant. An appeal reasoning, which is not mandatory but advisable, can be filed at a later date. Patents can be defended in appeal proceedings by filing main and auxiliary requests.

Oral proceedings take place:

  • upon request of the parties;
  • if evidence is taken before the Federal Patent Court; or
  • if the Federal Patent Court deems oral proceedings to be appropriate.

It is advisable to request oral proceedings. A decision is passed at the end of the oral proceedings and a written decision is issued at a later stage. Federal Patent Court decisions can be appealed to the Federal Court of Justice if an appeal is admitted in the decision. The due date for filing an appeal is one month after receipt of the Federal Patent Court decision. The filing of a reasoning is mandatory. If the appeal is not expressly admitted in the Federal Patent Court decision, an appeal to the Federal Court of Justice is allowed only under extraordinary circumstances (eg, a violation of the right to be heard).

The rejection of a patent application in examination proceedings can also be appealed. The procedure is similar to that for patent opposition proceedings. However, contrary to patent opposition proceedings, the GPTO can redress the appeal within one month if it is considered to be justified. Otherwise, the GPTO will forward the appeal to the Federal Patent Court.

Timescale and costs

How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?

According to the GPTO, patent application grants or rejections take an average of two-and-a-half years, provided that a request for examination was filed at the time of the application. A first-office action containing comments on the patentability is usually issued within nine months of the filing date if the application was first filed in Germany.

The total costs – from the filing of the patent application to the grant of the patent by the GPTO – depend on:

  • the complexity of the application;
  • the number of prior art documents cited by the GPTO; and
  • the length of the examination proceedings.

On average, the total costs (including official and attorney fees) vary between €4,000 and €6,000, excluding the drafting of the application. 

Enforcement through the courts

Strategy

What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

The most common way to enforce patent rights is by initiating proceedings on the merits, which are usually directed to injunctive relief, among other things. Further available remedies include claims for:

  • information and rendering of accounts;
  • damages;
  • destruction of the infringing products;
  • recall and removal of the infringing products from the distribution channels; and
  •  publication of the judgment.

In urgent cases, a preliminary injunction may be granted. However, due to its preliminary nature, such an injunction is not equivalent to a permanent injunction following proceedings on the merits. Therefore, either patent owners should seek confirmation of the preliminary injunction in proceedings on the merits or the defendant must declare that the preliminary injunction is accepted as being equivalent to a judgment on the merits, upon which all remedies and appeals are waived. The latter is a formalised procedure out of court which is governed by case law.

A further strategy is the initiation of inspection proceedings pursuant to Section 140(c) of the Patent Act. The inspection can also be enforced with a preliminary injunction. The requirements for obtaining a preliminary injunction for an inspection are low (eg, it is sufficient merely to demonstrate a probability of patent infringement). In addition, its enforcement allows:

  • the patent owner’s attorney, as well as a court appointed expert, to enter the premises of the potential infringer; and
  • the seizure of possible infringing products and records.

This puts considerable pressure on potential infringers. Further, if the subsequently rendered expert opinion considers a patent infringement to be present, infringers will often be willing to negotiate a settlement without proceedings on the merits. 

What scope is there for forum selection?

First-instance patent infringement proceedings must be tried before one of twelve district courts, which have been awarded special competence by law. In general, each federal state has at least one patent infringement court; however, some federal states share courts.

In principle, the patent infringement court of the district in which the defendant is domiciled has jurisdiction. In addition, under Section 32 of the Code of Civil Procedure, any court has jurisdiction if the infringement was committed in its district. This is the case if the infringement (ie, the making, offering, placing on the market or using of the product) was committed in the district of the court. In cases of nation-wide infringement via the Internet, all German patent infringement courts have jurisdiction.

Finally, the parties can agree that a specific patent infringement court will have jurisdiction. This agreement is binding for the court.

If the patent owner files a complaint with a patent infringement court which has no jurisdiction and the defendant does not object to this choice in the first oral hearing, the court is also awarded jurisdiction.

Pre-trial

What are the stages in the litigation process leading up to a full trial?

 The proceedings on the merits commence with the filing of a statement of complaint with the court. The statement of complaint contains the requests and a detailed account of the infringement.

The statement of complaint is then formally served on the defendant, usually with a summons to an early oral hearing, which may also be a case management conference in which only the deadline regime is set and the motions are made. Some courts use this hearing to try to negotiate a settlement between the parties.

Before the main oral hearing, each party usually files two briefs:

  • the plaintiff – a statement of complaint and a rejoinder; and
  • the defendant – a statement of reply and a counter rejoinder).

Due to this detailed preparation, cases are often tried in one main oral hearing before the first-instance decision is rendered. 

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

 In patent infringement cases, the courts usually impose a strict deadline regime which sets out the dates for filing all major court submissions (eg, the statement of reply, rejoinder and counter rejoinder), as well as the date of the oral hearing. Term extensions will be granted only if there are sufficient and justifiable reasons or the other party agrees to the extension. Therefore, defendants have very little room for delay.

How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?

Nullity actions may be filed with the Federal Patent Court in Munich at any time. However, if the deadline for filing an opposition has not expired, a nullity action is not admissible.

At trial

What level of expertise can a patent owner expect from the courts?

Patents owners can expect an extremely  high level of expertise from the courts. Germany has twelve district courts with a special competence for patent infringement suits. All patent infringement cases must be tried before these specialised courts.

Are cases decided by one judge, a panel of judges or a jury?

Cases at first instance are decided by a panel of three judges. In theory, a decision by one judge is possible; however, in practice, this does not happen. No decisions are issued by juries.

Appeals are decided by a panel of three judges.

In ex parte preliminary injunction cases, the presiding judge may issue the preliminary injunction. 

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

In Germany, there are no jury trials.

What role can and do expert witnesses play in proceedings?

Expert witnesses are an important means of evidence. However, if the court deems that an expert witness opinion is necessary to hand down a judgment, it will appoint its own expert witness. Such expert witnesses are the most common means of evidence in patent infringement cases. Expert witnesses appointed or submitted by the parties have less importance.

The court will carefully consider the expert opinion rendered by its appointed expert witness. However, it is not bound by this opinion and may deviate from it.

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

Yes, German patent law applies the doctrine of equivalents. The requirements are as follows:

  • The accused product must solve the problem of the invention with objectively equal means;
  • The skilled person must be able – based on his or her specialist knowledge – to find the technical solution of the altered version of the accused product as objectively equal; and
  • The skilled person must determine that the altered accused product is equivalent to the objective (literal) solution of the patent.

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

 Yes, it is possible. The threshold for granting preliminary injunctions varies from court to court. However, the standard of proof is generally lower than that in proceedings on the merits. Additional means of proof (eg, sworn affidavits) are admissible.

The patent owner must show that the patent has been infringed and that the matter is urgent (ie, that awaiting a decision on the merits is not justified).

The patent owner must initiate the preliminary injunction proceedings without undue delay upon positive knowledge of the patent infringement (ie, it must show that it has taken appropriate measures to obtain a speedy decision). The case law varies from court to court regarding what constitutes an undue delay. In general, if the preliminary injunction proceedings commence within four to six weeks following knowledge of the infringement, there is no undue delay.

The validity of the disputed patent must be beyond a reasonable doubt. According to case law, the patent must have survived opposition proceedings or nullity proceedings.

How are issues around infringement and validity treated in your jurisdiction?

Germany has a bifurcated system (ie, the patent’s validity cannot be challenged in the infringement proceedings). Defendants in infringement proceedings will usually initiate a nullity action against the relevant patent before the Federal Patent Court in Munich, which has sole jurisdiction over validity attacks after the opposition period has expired.

In an infringement proceeding, the defendant may request a stay of the proceedings until the Federal Patents Court has decided on the validity of the disputed patent. The threshold is extremely high and such requests are successful in only 5% to 10% of cases. New prior art which has not been considered in the grant proceedings or possible prior opposition proceedings must usually be presented.

Will courts consider decisions in cases involving similar issues from other jurisdictions?

Yes, these will be considered but are not binding. For example, in the Federal Supreme Court Pallet container II (X ZR 97/11) decision, the court discussed a parallel British decision in great detail.

Damages and remedies

Can the successful party obtain costs from the losing party?

Yes, but not the entire costs incurred by the successful party. The recoverable costs depend on the disputed value and are set out in a statutory fee schedule. In addition, adequate expenses which have been incurred (eg, travel, translation, copy and postage costs) can be recovered.

What are the typical remedies granted to a successful plaintiff?

Typical remedies include:

  • injunctive relief;
  • claims to information and rendering of accounts in order to calculate the damages;
  • damages;
  • destruction of infringing products in the possession or comprising the property of the defendant, as well as material and devices which are the property (possession is not sufficient) of the infringing party and served mainly for the manufacture of the infringing products;
  • recall and removal of infringing products from the distribution channels; and
  • publication of the judgment.

How are damages awards calculated? Are punitive damages available?

Damages may be calculated in three ways:

  • lost profits of the patent owner;
  • licence analogy – damages calculated on the basis of the amount that the infringer would have paid as an appropriate licence fee if it had obtained permission to use the infringed right; or
  • infringer’s profit – the profits that the infringer made as a result of the infringement (product-related costs incurred specifically through the manufacture or distribution of the infringing products are deductible; overhead costs are not).

The patent owner may choose between the above calculation methods. It may alternate between these methods until a final decision on the damages is handed down. Lost profits of the patent owner is seldom chosen due to the difficulty of proving what profits the patent owner would have made absent the infringement.

Punitive damages are not available.

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

Granting permanent injunctions is a standard statutory remedy for patent infringement under German law. If the plaintiff files a motion for permanent injunction and the court holds for patent infringement, a permanent injunction will be granted.

Timescale and costs

How long does it take to obtain a decision at first instance and is it possible to expedite this process?

It takes around 12 to 15 months from the service of the statement of complaint on the defendant until a first-instance decision is handed down by the court. Where evidence is taken, the procedure will take six to 12 months longer.

As the court sets a strict deadline regime, there is little scope for expediting the process.

How much should a litigant plan to pay to take a case through to a first-instance decision?

This depends on the disputed value of the court costs. In general, the total cost of an average case should be calculated at a minimum of €70,000 to €100,000.

Appeal

Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?

The right to appeal is available by law if the value of the subject matter of the appeal is greater than €600, which will commonly be the case in patent infringement proceedings or if the court of first instance grants leave to appeal.

New arguments or evidence are admissible under strict conditions only.

The appeal proceedings usually take 12 to 18 months.

Options away from court

Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?

Arbitration procedures are available before a non-state arbitration court. Arbitration is available only if an arbitration agreement exists between the parties. This precludes judicial recourse to the civil courts. Disputes between arbitrators are settled by a decision of one or more arbitrators. This decision replaces a state court judgment. It is binding on the parties and can be declared enforceable.

Without an arbitration agreement, patent infringement suits must be brought before a patent infringement court.