Enforcement of Patents in Europe – Germany as an Example

Christian W. Appelt

1. Patent Enforcement in Europe – Present Situation

Neither the European Patent Convention (EPC) nor the Patent Cooperation Treaty (PCT) have touched and influenced in any manner the way in which patents can be presently enforced in the member countries of the European Union (EU) and/or of EPC. This situation, however, would change dramatically if some kind of a Community Patent (CP) would be introduced, the fate of a draft EU Regulation for introducing such a CP being unclear at the moment, however. Discussions amongst a group of member countries of EPC, with the aim of creating a centralized enforcement system for EPC based patents, are making soft progress, however.
In the following, the present system of patent enforcement, both for national and EPC based patents, as it is nowadays applicable in Germany will be discussed, followed by specific questions of the present situation with regard to cross-border patent enforcement. 

1.1. Enforcing National Patents
If a patentee or other party entitled under the patent wishes to proceed against an infringer based on a national German patent, the patentee will file a suitable suit (litigation) at one of the patent infringement courts of first instance in Germany, which consist of essentially one single designated patent chamber of one of the various district courts of each Federal State of Germany. As you may know, more than 60% of all patent litigations in Germany are filed at the Düsseldorf Court, which obviously is considered as the most competent and, to some extent, a court having a tendency to interpret the scope of protection of patents in favour of the patentee as broad as possible. 

At the patent infringement court, the defendant will not be heard with the argument that the patent is invalid, rather the district court ifself will have to consider the patent as valid as long as the defendant does not file a separate invalidation procedure against the patent at the German Federal Patent Court at Munich. If the patent infringement district court considers the outcome of the pending invalidation procedure as probably being in favour of the defendant, it will suspend the infringement proceedings until at least a first instance decision of the Federal Patent Court in the invalidation procedure has been issued. If an opposition procedure against the patent in dispute still can be started or is still pending, started by opposition by a third party, instead of starting an invalidation action the defendant will have to file opposition and to join the pending opposition procedure, respectively.

Against the decisions of the Federal Patent Court in the invalidation proceeding an appeal to the Federal Supreme Court is possible. In case of the patent infringement proceedings an appeal against the patent infringement district court decision is possible to the respective patent appeal court for the respective federal state of Germany, and against the decision thereof, again, an appeal to the Federal Supreme Court.

Therefore, in two steps, as far as the invalidation proceedings are concerned, and in three steps, as far as the infringment proceedings are concerned, the litigation will end with the same authority, namely the Federal Supreme Court at Karlsruhe, where the final decisions will be made both in relation to the invalidation and the patent infringement proceedings.

1.2. Enforcing EPC Patents
Due to the fact that the EPC bundle "patent" is not really a central patent, but is, as far as enforcement is concerned, handled in the same manner as a national patent, the enforcing of EPC patents in Germany - and in all other member countries of EPC - takes place in an analogous manner as with national patents as discussed under 1.1. Common to national patents and EPC obtained bundle patents is the fact that any decision of the national courts, say German courts, as far as validity of the patent, injunction and damages are concerned, are essentially only valid for the respective country, in our example Germany, and the proceedings in all other EPC countries would have to be conducted independently. 

In many instances even foreign patentees chose the possibility of going through a patent litigation and invalidation procedure in Germany first, because it is rather cheap, compared with the situation e. g. in U.K., whereafter the outcome of the German procedure very often leads to an EU wide settlement between plaintiff and defendant. One should bear in mind, however, that, whilst a certain psychological influence of the German procedures onto the other EU courts may have to be expected, there is no such binding connection at all.