At a glance: patent enforcement proceedings in Germany

Patent enforcement proceedings

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?

In Germany, patent rights can be enforced in legal proceedings before the district courts by way of either preliminary injunction proceedings or main proceedings on the merits. To ensure that there is a group of judges with a frequent workload of patent cases and thus adequate competence, patent infringement matters are concentrated by law to specific patent chambers of 12 district courts: Munich I, Nuremberg, Mannheim, Frankfurt, Saarbrücken, Erfurt, Leipzig, Magdeburg, Düsseldorf, Braunschweig, Berlin and Hamburg.

In general, each federal state has at least one patent infringement court; however, some federal states share courts.

The most prominent – and busiest – courts are Düsseldorf, Mannheim, Munich I and Hamburg.

With the start of the Unified Patent Court (UPC), four local divisions (in Düsseldorf, Mannheim, Munich and Hamburg), as well as the central division in Munich, will be competent for cases relating to European patents, in particular unitary patents. The most experienced German judges have already been appointed to the UPC.

What is the format of a patent infringement trial?

German (national) patent infringement trials are front-loaded – comparable to proceedings before the UPC. The proceedings on the merits therefore 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. It 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.

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

The disputed issues are decided by (non-technical) judges (one presiding judge and two assessors).

Documents, live inspections, affidavits (only in preliminary injunction proceedings) and live testimony are used as evidence to prove or rebut the infringement. Expert witnesses are also 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 providing 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.

Depending on the court, it takes approximately seven 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.

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

In general, each party must set out and prove the actual features of the legal rule favourable to the respective party. The plaintiff must prove the conditions on which its claims are based. The alleged infringer must prove the facts that deny the claims. The specific distribution and extent of the burden of proof in the course of the proceedings depend on the submissions in the specific case. The more detailed the submission, the more detailed the response must be.

This means that it is the plaintiff’s duty to first substantiate all facts relevant to the decision (eg, the right to sue, infringement acts and the features of the patent claim), and all facts should be presented precisely and, if possible, with indication of the source of knowledge.

It is then the responsibility of the defendant to respond to this submission conclusively and, in the case of dispute, to provide proof for his or her allegations. This includes any defence he or she may rely on (eg, invalidity of the patent).

Only if specific facts submitted by one party are substantially disputed by the other party does the burden of proof rest on the party submitting those facts to provide sufficient proof for their assertions, by way of documents, witnesses or experts.

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?

The patent owner and a licensee (exclusive and non-exclusive) may sue for patent infringement. With respect to the latter, the extent of the right to sue and the respective remedies depend on the scope of the licence.

An accused infringer may bring an action for declaration of non-infringement – but only if there is an interest in legal protection, for example, due to the receipt of a warning letter.

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?

A person can be liable for contributing to an infringement under the conditions of section 10 of the Patent Act:

The patent shall further have the effect that any third party shall be prohibited, in the absence of the consent of the proprietor of the patent, from supplying or offering to supply, within the territorial scope of this Act, persons other than those entitled to exploit the patented invention with means relating to an essential element of the invention for use within the territorial scope of this Act if the third party knows or if it is obvious from the circumstances that those means are suitable and intended for using that invention.

It is therefore necessary that the alleged infringer provide means relating to an essential element of the invention. ‘Means’ refers to an element of the invention that is capable of interacting functionally with the invention in the realisation of the protected inventive idea. This is, for example, the case when offering and delivering a device element that can be combined with other elements to form the patented overall combination.

In general, multiple parties will be jointly liable.

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the defendants be accused of infringing all of the same patents?

Yes, multiple parties can be joined as defendants in the same lawsuit. The parties must be accused of infringing the same patent and the same infringing embodiment or methods.

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

According to the case law of the Federal Court of Justice (BGH), a person who enables a third party to use the protected object through his or her own conduct in breach of duty is also liable for patent infringement (see BGH, Case No. X ZR 120/15).

These principles also apply to foreign activities contributing to patent infringement committed in Germany. For example, where a person, in applying a procedure, takes advantage of the fact that certain steps of the protected procedure are carried out by a third party (abroad), that third party may also be liable for patent infringement. Foreign persons (companies) who supply products to a foreign customer are involved in an act of domestic use if they know that the customer will supply the products to Germany (BGH, Case No. X ZR 69/13 – Audiosignalcodierung).

To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?

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.

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?

The concept of discovery is unknown in German procedural rules.

To obtain evidence, the initiation of inspection proceedings pursuant to section 140(c) of the Patent Act is available. The inspection can also be enforced with a preliminary injunction, whereby the potential infringer usually learns of the latter only on the day of the inspection.

The requirements for obtaining a preliminary injunction for an inspection are low: it is sufficient merely to demonstrate a probability of patent infringement.

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

The litigation timetable depends on the concrete venue.

Depending on the court, it takes approximately seven 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 may take an additional six to 12 months.

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

The appeal stage (heard at the higher district court) will typically take another eight to 12 months.

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal? Are contingency fees permitted?

This depends on the disputed value of the court costs. In general, the total cost of an average case is a minimum of €70,000 to €120,000; the costs for an appeal can be assumed to be a little lower.

The total costs depend on the complexity of the case, the number of parties and the number of IP rights to be asserted.

Contingency fees are not permitted.

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit? Is new evidence allowed at the appellate stage?

An adverse (or partly adverse) decision on the merits before the district court can be appealed to the higher district court, which will conduct a full legal review of the case.

Generally, the appeals court must base its review on the facts and evidence determined by the first instance court; however, under very narrow circumstances, new facts or evidence are allowed:

• if there are doubts in relation to the correctness and completeness of the facts determined by the first instance court based on concrete indications; and
• explicitly allowed by law, in particular by section 531(2) of the Code of Civil Procedure, if:
• the court has apparently overlooked one aspect or inaccurately determined it as not relevant;
• the new facts were not considered owing to a procedural error; and
• the delayed submission of the new fact is not owing to negligence.

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition or a business-related tort?

According to established case law of the Federal Court of Justice, an unjustified warning based on an industrial property right may infringe the right of the alleged infringer to the established and practised business (business-related tort).

Enforcing a standard essential patent only with regard to specific infringers may, in certain circumstances, be relevant under competition law.

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

Some patent infringement courts particularly foresee mediation processes for suitable cases; the Munich court, for example, proposes internal court mediation to make use of the time between the dates of the oral hearings to achieve an amicable, appropriate and interest-based solution. The preliminary view of the case given by the chamber in the early first appointment often gives the parties reason to try mediation.

In addition, it is possible to resolve patent matters through out-of-court mediation or arbitration proceedings.