IP-INFO
 


       
  Patent Litigation in Germany

Overview

Process principles

Jurisdiction diagram

Nullity reasons

 

Cause of action

 

European litigation aspects

German Process Principles
 

  • Substantiation of the action (The substantiation contains the facts and means of evidence of the stated grounds for invalidation and infringement)
     

  • The plaintiff rather than the defendant has to produce evidence (There are no discovery or pre-trial procedure like in the US)
     

  •  The scope of the action is defined by the claims of the plaintiff and the defendant (The Court is bound to the requests for invalidation in full or in part. Thus, it may not revoke more than is actually requested)
     

  • Settlement by compromise (In every instance a settlement by compromise is possible, which is supported by the court, including negotiation about licenses and about costs, withdrawal of the nullity action etc.)
     

  •  The loser has to pay for the costs (A good estimation is that every instance costs the party 4% of the value of dispute (average 2-6 Mio Euro), which leads to a reimbursement of 8% per instance or 40% for all 5 Instances (Nullity and infringement).

  • Further details of costs and the time schedule can be found in this overview.

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Jurisdiction Diagram of the Litigation in Germany
 

The infringement Court doesn't decide about the validity of the patent, but it may suspend the infringement action if an opposition or an invalidity/nullity action is pending and if good a chance of a revocation of the patent is given.

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Nullity Reasons
  (a) §21(1)1 PatG: Lack of patentability (lack of novelty or inventive step or non-compliance with Articles 1 to 5 of the German Patent Law or Articles 52 to 57 of the European Patent Convention).

The aforementioned non-compliance includes the disregard of the other requirements for patentability existing separately from the novelty and inventive step requirements (for instance, the non-patentability of discoveries, of aesthetic creations or of methods for treating the human or animal body; applications contrary to "ordre public" and morality, etc.).
(b) §21(1)2 PatG: Lack of disclosure (not allowing the invention to be put into practice, lack of reproducibility, lack of operability).

(c) §21(1)3 PatG: Unlawful usurpation, i.e. usurpation by an unauthorized person (i.e., if the invention was stolen by a third party).

(d) §21(1)4 PatG: Inadmissible broadening of the subject-matter of the patent during the examination procedures (broadening of the original filed disclosure).

(e) §22(1)2 PatG: Broadening of the claimed scope of the patent after granting (i.e. Broadening amendments made after the granting of the patent).
 
     
 

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Cause of Action
 
  • Sue for discontinuance
     
  • Sue for damages (no triple damage as in the US, the damage can be calculated on virtual license)
     
  • Sue for information (revenue, seller, reseller, production costs etc.)
     

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Interpretation of the Claims (Equivalence Considerations)

  The European Protocol on the Interpretation of Article 69 EPC  provides the following interpretation, which is now quoted:

"Article 69  should not be interpreted in the sense that the extent of protection conferred by a European patent is to be understood as that defined by the strict literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Neither should it be interpreted in the sense that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patentee has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties."

Based on this protocol the German  jurisdiction has developed a two-step check:

  • Examination of the literal meaning of the wording (features) of the independent claims
  • Examination of equivalent embodiments (A feature is equivalent if the used feature is functionally equivalent and the person skilled in the art is able to find the feature without being inventive)

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European Patent Litigation
  The rights conferred by a European Patent are determined by Articles 2(2) and 64 EPC. According to these Articles, any infringement of a European Patent is dealt with by the national law of the particular contracting state:

Article 2(2) EPC:
"The European Patent shall, in each of the contracting states for which it is granted, have the effect of and be subject to the same conditions as the national patent granted by that state, unless otherwise provided in this Convention."

Articles 64(1) and (3) EPC
"Rights conferred by a European Patent:
(1) A European Patent shall, subject to the provisions of paragraph 2, confer on its proprietor from the date of publication of the mention of its grant, in each contracting state in respect of which it is granted, the same rights as would be conferred by a national patent granted in that state.
(3) Any infringement of a European Patent shall be dealt with by national law."


Consequently, the national patent of every European country act has to be applied in evaluating the extent of protection of a European Patent granted with respect to Germany and in examining the question of infringement. There is no single action for Europe yet, but the above mentioned protocol is a harmonization of the European national law.
 

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 © 2004 Patentanwalt - Patent Attorney - Frankfurt - Germany - info@2kpatent.de