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2. Specific Questions of Patent Enforcement in Germany
2.1. Litigation Procedure and Arguments for Defence
2.1.1. General Procedure
As stated above, any patent litigation procedure in Germany generally is starting by filing an appropriate motion at one of the "Patentstreitkammern" of the Federal Republic of Germany, i. e. special chambers of selected German district courts, the most important of them being Düsseldorf, at which more than 60% of all patent litigations in Germany take place - there is no definite basis for that, but it is the most experienced one in patent matters. Other wellknown patent litigation district courts in Germany are Hamburg. Mannheim and Munich.
There are several others, but for the purpose for this paper there will be no necessity to mention all of them. Generally a procedure at such a "Patentstreitkammer" will take about 1 -2 years for the first instance, with an appeal possibility to the respective appeal court to which
the "Patentstreitkammer" belongs, the appeal instance normally taking another 1 - 2 years until final decision.
Against the decisions of the appeal courts a further appeal to the Federal Supreme Court in Germany is possible, but only based on special appeal reasons of non-factual nature, like wrong interpretation of law etc., (the so-called revision procedure). It should be kept in mind, for the following discussion, that the ligitation courts are a part of the general civil court system in Germany, namely District Court (Landgericht/Patentstreitkammer) - Appeal Court (Oberlandesgericht/Patentsenat) - Federal Supreme Court (Bundesgerichtshof/Patentsenat).
On the other hand, grant of patents and utility models as well as invalidation actions against those industrial property rights take place at the German Patent Office/German Federal Patent Court/German Federal Supreme Court or, in case of EPC based German patents, at the European Patent Office, as far as grant and opposition procedure are concerned - in the latter case again bearing in mind that any invalidation action against an EPC based German patent must be filed at the German Federal Patent Court, as in case of national German patents, i. e. there is no EPC invalidation procedure.
The aforementioned procedure, as far as „ordinary“ litigations, i.e. with the exception of fast injunctions, are concerned, which will be dealt with specifically below, in the past usually only was started after appropriate warning of the defendant by a suitable warning letter. The purpose of such a warning letter is to avoid legal cost (court fees, attorney fees, etc.) charging to the plaintiff even in case of the latter winning the litigation procedure if the defendant would have surrended immediately after starting court litigation. In recent times, however, this has become obsolete, because the Brussels Convention gives the potential defendant the possibility to start a declaratory action for non-infringement in any country within the European Union, whereafter no further "positive“ patent litigation procedure can be started anymore by a plaintiff in another EU country during the pendency of the aforementioned procedure. If in such a case a defendant choses a country in which courts usually are known to work rather slowly, like e.g. in some regions of Italy, the plaintiff would be prevented from proceeding quickly against the infringer. Accordingly, it is sometimes not appropriate to send warning letters before filing a complaint in Germany, rather only after filing of the complaint and serving it by the Court to the defendant settlement negotiations etc. should take place.
2.1.2. Defence in Case of Litigation Based on National German Patents
The possible defense of an infringer accused of infringing a national German patent, besides of just arguing that he does not proceed as supposed by the plaintiff, is to argue that the scope of protection of the patent is not so broad that it covers the infringing features. In other words, without questioning validity of the patent itself, the defendant will argue that because of certain prior art the scope of protection of the patent is so narrow that the infringing article etc. does not make use of the protected teaching. The court, i. e. the infringement court, will have to take into consideration these arguments, following the general idea that a great invention will deserve a large scope of protection guaranteed by § 14 of the German Patent Act, namely as given by the claims interpreted with the assistance of the specfication etc.
If by all means possible, the defendant will start a counter-attack against the patent, with the aim of invalidating same, by filing an invalidation action at the German Federal Patent Court, the grounds of such invalidation action being the usual ones which also can be used in opposition procedures, namely lack of patentability e.g. due to lack of novelty or inventiveness.
The Federal Patent Court will, within a period of 1 - 2 years, make its decision in the first instance of the invalidation action, whereupon a factual appeal takes place to the patent senate of the German Federal Supreme Court.
After the defendant has filed its invalidation action at the German Federal Patent Court, normally immediately after the respective litigation has been started at the litigation court by the plaintiff, the court of litigation has the possibility to suspend the litigation procedure until the invalidation procedure either in the first or in the second instance has been finalized, such suspension being up to the litigation court's opinion as to whether it considers the invalidation procedure to be with all probability successful or not. With German national patents that usually means that in cases where the patent in dispute has been granted without any opposition procedure, the litigation court normally will suspend the procedure in case of an invalidation action, whilst in case that a patent has been granted even after opposition, or even more after an appeal opposition procedure at the German Federal Patent Court, normally no suspension will take place, provided that not quite surprisingly new arguments are introduced into the invalidation procedure by the defendant. One could say: The more "hardened" a German national patent is by the various procedures it has already survived (examination, appeal, opposition, opposition appeal), the less probability does exist that any suspension will take place in a litigation procedure based thereon.
For the sake of completeness it should be added that, as a matter of course, an opposition procedure pending or introduced at the German Patent Office against a German national patent on which a litigation is based will have to be considered in the same manner by the litigation court, i. e. if it considers the opposition procedure to be most probably successful, it would with all probability suspend the litigation procedure based thereon. In this connection, furthermore one should bear in mind that there are rather great differences in the suspension practice of the various German litigation courts, the Düsseldorf court, discussed already above, apparently being not inclined to suspend the litigation procedure whenever it seems to be appropriate to proceed, in order to prevent any factual suspension of the title and rights of the patentee in a litigation procedure.
If an opposition still can be filed or an opposition procedure, started by a third party, is still pending, no invalidation can be filed by the defendant, rather he has to file an opposition or join a pending opposition procedure started by a third party, respectively. In all other aspects, the above mentioned considerations apply in this case equally.
2.1.3. Defence in Case of EPC Based German Patents
Principally the defences for an infringer in a patent litigation procedure in Germany based on EPC based German patents are identical with those discussed above with the only point to be made that, with no material but quite considerable "technical" consequences, as discussed later on, even the opposition procedure in case of an EPC based German patent takes place at the European Patent Office, whilst in case of an invalidation action against the EPC based German patent the German Federal Patent Court will be the first authority under "national" practice, notwithstanding the fact that formally, as a matter of course, the requirements for patentability according to German Patent Law and European Patent Law are quite the same, with minor differences not playing a role in this connection.
2.1.4. Defence in case of Litigation based on German Utility Models
Entirely different from the case of a patent, whether a national German patent or an EPC based German patent, being the basis of a litigation, in case of a German utility model the defendant can, in the litigation procedure which is started at the litigation court, question the validity of the utility model itself. In other words, without starting any invalidation action at the German Federal Patent Office (with appeal possibility to the German Federal Patent Court), the defendant can win the litigation procedure by convincing the litigation court of lack of protectability of subject matter of the utility model in question. The other possibility, mostly chosen, however, is that also in this case the defendant will start an invalidation action against the utility model, and different from patent litigation procedure in which suspension of the procedure is more or less up to the litigation court and is ruled by the general provision of German civil law procedures, the German Utility Model law has a special provision according to which the court has to suspend the procedure if it considers the invalidation action to be successful, and may suspend it in general as long as it considers the outcome of an invalidation action as to be important for the litigation procedure. The duration of proceedings necessary is about the same as in patent cases.
2.1.5. Effectiveness of Litigation and Duration of Procedure
In many cases, the duration of a litigation procedure will have a considerable effect for the decision of the patentee whether a litigation really is worth to be conducted or not. According to this one should bear in mind that, as long as a litigation in Germany is based on a national German patent which is of "normal" quality, the chance that a litigation procedure is not suspended by the litigation court because of an invalidation action are fairly good; this applies parti-cularly if the litigation procedure is conducted at the Düsseldorf court. One may even say that in cases in which the patent has already overcome an opposition procedure at the German Patent Office, first instance, in general the particular Düsseldorf litigation court would not suspend the procedure at all.
On the other hand, it had to be observed that in case of European patents, even having overcome an opposition procedure at the European Patent Office, the procedure with a higher probability would be suspended in case of an invalidation started against this respective based German patent at the German Federal Patent Court. The reason for this may be that this is the first opportunity for a national German authority to "check" whether the patent "really" can be considered to be valid also under German practice: This does not mean, of course, that there would be any "material" difference in judging the protectability of certain subject matter under European or German Law, but as a matter of facts it has turned out that it seems to be much easier to overcome the European Patent Office's objections against patentability, based on non-inventiveness, than in case of e. g. similar objections of the German Patent Office. Therefore some infringement judges in Germany have a tendency to think that a European patent first of all would really be checked only in the invalidation procedure at the German Federal Patent Court, with the consequence that the outcome of the litigation procedure would be highly dependent upon the invalidation procedure, and again with the aforementioned consequence that in such cases with all probability one would have to face the possibility of a suspension.
2.1.6. Special Aspects – Opposition, Patent Restriction, and Derivative Utility Model
A special note should be given to a situation in which an infringer is attacked based on a patent which is pending under opposition by a third party: In this case, the alleged infringer has the possibility to join the opposition procedure within two months after formal receipt of the respective patent litigation complaint, so that from then on the defendant acts as a coopposer in the opposition procedure, with the full possibility to bring new arguments, prior art, etc.
A special note should also be given to a situation in which the patentee, wishing to start patent litigation, knows that the patent is not fully valid, but would be so only in a restricted form: In this case, at the German Patent Office a restriction procedure should be started and completed before filing the patent litigation complaint, such restriction procedure not taking more than six weeks, so that a "hardened" patent can be used in the patent litigation.
The aforementioned possibility of a restriction procedure also exists in relation to an EPC patent designating Germany.
A further note should be given to a situation in which a patent applicant cannot yet attack patent infringing actions because the patent has not yet been granted: In this case the possibility of filing a so-called derivative utility model in Germany should be taken into consideration, which can be filed at any time during the life of a patent application before patent grant, in which case the utility model will enjoy both the priority and application date of patent at the German and European Patent Offices, respectively. The registration of such a utility model, after filing, will only take about three months, whereafter full injunctional and indemnification relief, as in case of a patent, can be obtained based on a litigation using the derivative utility model.