Patent Infringement in Germany – a Comprehensive Guide
Curious about patent infringement proceedings in Germany? Don’t know where to sue your competitor? German courts decide more than half of all patent infringement cases in Europe and more than 10 times the cases compared to the UK. Do you want to know why?
This is a very extensive guide on patent infringement proceedings in Germany – both for the plaintiff and the defendant. Here is a brief outline of the article for better navigation:
- Patent Litigation Statistics in Europe
- The Plaintiff Before the Complaint
- The Defendant Before the Complaint
- The Plaintiff After the Complaint
- The Defendant After the Complaint
- Does it Help to Have a Lot of Patent Claims
- Patent Prosecution History Estoppel
- Tailormade Scope of Patent Claims for Patent Litigation
Patent Litigation Statistics in Europe
In this section, I will dive into some interesting statistics on patent infringement in Europe. The full details of this section have been published in an article of the magazine The Patent Lawyer in the March/April 2015 issue, which I had co-authored with Dr. Thomas Kuehnen, presiding judge of the patent infringement chamber of the Higher Regional Court of Duesseldorf, which is the most busy court for patent infringement in Europe (Kuehnen/Claessen “The enforcement of patents in the EU”, The Patent Lawyer, March/April 2015, p. 15; also Kühnen/Claessen, GRUR 2013, 592). Our office is only around 25 km away from this important court.
Out of about 2,000 patent infringement cases, more than 1,200 cases are handled by German courts. For comparison, Great Britain has around 50 yearly cases and France, as the second most important country, has a little less than 300 cases per year. And there are actually 14 countries in the EU where there are no patent infringement cases at all.
What makes Germany so interesting for plaintiffs? First of all, the first instance ruling is typically delivered within a year. The second instance takes only one more year. And if people choose to try the third instance, the Federal Court of Justice in Karlsruhe, it will typically take another 3 years on average. All three instances in 5 years are very quick in comparison with the other EU countries. Another reason may be the comparatively low cost. The losing party has to refund the costs of the winning party and these costs are capped by law. The typical cost risk for the first instance for lawyer fees of both sides and court fees together is about 60.000 to 100.000 EUR, depending on the value of the case.
As for the first instance, the Regional Court of Duesseldorf handles around 500 cases per year. The courts in Mannheim is at around 265, the court in Hamburg is handling around 180 cases and the court in Munich handles around 150 cases. Other important courts are Nuremberg, Berlin, and Frankfurt. These numbers are dated 2011.
One interesting fact is the birfurcated system in Germany. The patentability is handled by the Federal Patent Court in nullity actions or by the German Patent and Trademark Office.
The Plaintiff Before the Complaint
You found out that a competitor is selling or producing your patented product in Germany? In this section, you find out what you can do as a plaintiff to maximize your chances in a patent infringement case in Germany.
So you start of course by collecting evidence. The biggest difference between Germany on the one hand and the UK and France and the US is that you have limited discovery abilities. If you have a method or process claim, you can ask a court for preliminary injunction with an aim to inspect the process or the method of a potential infringer. But you cannot do that by yourself or by your attorneys. You have to send an independent court expert and you have to give the court expert some homework on what exactly to look for. So for example: to press buttons on different machines, or to look at the recipes, or to have a USB stick inserted into computers and copying the relevant files for the method or process. So the possibilities are quite limited and you have to make sure that you are aware of this. In some instances, you can use discovery evidence from other countries and litigation proceedings. If you have already done some discovery in, let’s say, the UK or in France, or in the US, you can in some cases use that evidence in Germany as well.
Typically, first you want to send a cease and desist letter. You do that to avoid a cost risk. You have to know that in Germany the loser pays all costs. So if you lose your case, then you have to pay the attorney and court fees, also of the other party. So to limit that risk, you should file a cease and desist letter first because even if you win, and the potential infringer says in court “well they didn’t warn me – if they had warned me I would have immediately stopped”, then you get a positive decision by the court but you have to bear all the costs of the procedure. To avoid that you would send a cease and desist letter.
You may want to set a quite short timeframe, like one week, which probably the shortest fair period that you can use. Sometimes I also use two weeks, to be fairer. But one week is probably the shortest in patent cases because patent cases are quite complicated cases.
So if you want to stop somebody immediately you can do something that is particular to Germany. You can file a request for preliminary injunction. Typically that is used with designs or trademarks, but that works for patents as well. Sometimes these requests are granted. You have to understand that a preliminary injunction means that you file a request with a court and within sometimes one day, two days or three days, the court decides, that the potential infringer has to stop selling, producing, or offering the product in Germany immediately. So that is a quite a sword that you can use, a weapon. And if you are wrong, you have to pay a lot of damages. So you have to really be careful whether you want to use this weapon. Also, it’s difficult to convince the courts, since patent cases are quite complicated, and also the validity of the patent is not always clear. Some courts are granting preliminary injunctions. So you can try. You cannot be sure that you get this granted at least not without oral proceedings, hearing the other party.
Then preparing the complaint is quite similar to other legislation. When I became a patent attorney some time ago, I did an internship with the judges in Dusseldorf – the patent judges. And I found out how they deal with patent infringement cases. How they assess patent infringement. And one tool they use is the following. They mark the claim with colors – the features in the claim with colors. Then they get a figure, depiction, or an image of the infringing product, and mark the corresponding features in the infringing product with the corresponding color of the claim, to understand, whether something is infringing or not. So if you can provide this marked up claim with the corresponding depiction to the judges with the complaint, that probably helps your case, because you can use the colors as you would like the judges to use the colors. So you can basically mark the features in the infringing product the way you would like the judges to interpret the claim. I have an example in the video.
Then, last but not least it’s important to know where you want to file your complaint. Each state in Germany has defined one or two courts, where you can file patent infringement complaints. And I already mentioned that only a couple of courts have a lot of experience, for example, Dusseldorf, Munich, Mannheim, and Hamburg. The other courts do not really have a lot of patent infringement cases. On the other hand, you have to know that the larger and more important courts, as I’ve mentioned, also have a quite quick turnaround. Typically you’ll get your first instance ruling within one year. And a second instance ruling within another year.
The Defendant Before the Complaint
An example: you are launching a new pharmaceutical product in Germany and there is a patent that you are aware of that is very similar to your product. Then you might want to take precautionary measure to increase your chances of success in potential patent litigation in Germany.
What do you have to fear as a potential defendant in a patent litigation case in Germany? Of course, there can be a complaint but also more importantly in Germany, it is possible to get a preliminary injunction for plaintiffs on a very short notice. So, a plaintiff can request a preliminary injunction with a court and the court might decide within one, two, or three days to issue a preliminary injunction and you would have to stop offering, producing, or selling your product immediately. Then there is – of course- the chance that you get a cease and desist letter.
One strategy can be that you search for prior art and see whether you can invalidate the patent. In a first step, you do not really have to file any invalidation proceedings with the Bundespatentgericht, the Federal Patent Court, or file your arguments later in the patent litigation case. Rather you can basically make a draft for a cancellation action against the patent and you can send this draft to the patent owner and ask them for a free right to use the patent in exchange that you do not attack the patent with the enclosed draft. If you have good prior art and good arguments, the patentee might start discussing with you. The patentee, of course, wants to keep the patent to be able to go after other infringers. They might give you the right to use the patent and not file any complaint against you. This strategy, of course, has its weaknesses. If you are asking the patentee, then you are basically telling the patentee that you are possibly infringing their patent. So, you have to be very sure. It has to be a quite clear case that you can invalidate the patent. Otherwise, it would not be really useful to use this strategy.
What can you do to counteract the preliminary injunction? You can file a protective letter (“Schutzschrift”) with the relevant courts and the electronic registry for protective letters in Germany. In this protective letter, you would outline your arguments against patent infringement. So, basically non-infringement arguments and invalidity arguments against the patent – just enough to make the court think twice before issuing a preliminary injunction. Keep it to the point. Keep it concise. Keep it under 20 pages if possible. I have discussed with a couple of judges that they do not really like too many pages. So, if you can keep your protective letter short, it is probably a wise decision.
If you are aware of a patent that you could be infringing, then file a protective letter with the respective courts before launching a product or at the latest at the launch date.
Then finally, think about instructions to the people at the doors of your premises. In Germany, it is also possible to have some limited way of discovery, a discovery process, where an independent court expert can appear at the doors of your offices or manufacturing locations or research facilities and they can request to look at your product or especially your process and methods that you are using. The people at the door might not be well prepared to handle this kind of situation. So, before launching a new product, you might want to make a one-page information, not more, for the people that are guarding your doors of the different locations, where you basically state in case that there is an independent expert from the courts what they would have to do. For example, let them ask for their permit, the permission by the court that they can search your facilities. If they do not have that permit, then they would have to go back to the court and ask for that permission to enter the premises. Then you can ask them for two hours time to wait until you have an attorney on site. Then, of course, you want to ask the doorman, the person at the door, to seat the independent expert in the waiting room until the attorney is there and watch the independent expert. There may be other very useful instruction. Just send us a quick email for more information.
The Plaintiff After Filing the Complaint
First, I want to give you an overview of the overall procedure. There will be a first short hearing which will last only about five to 10 minutes and in this first hearing, the requests of the parties and especially the defendant will be heard and the dates will be set for the response of the defendant and the replication of the plaintiff and then, of course, the date for the main hearing will be set. So, in this first hearing, do not expect too much. It will just be five minutes where the judge basically just asks the parties for their requests and where the judge will set the different time limits and the dates.
So, what can you do before a court in German patent infringement cases? Maybe some general remarks. The judges really do not like to read more than about 20 pages. So try to be concise, try to be brief. Do not use font size below 10 points, preferably a little larger. Do not use single space lines. Give the lines a little room to breathe. Do not set the margins to two millimeters – leave some margins. That is especially important because the judges like to make notes on the margin. So leave them some room for them to make notes in your submissions.
Then you would have to file translations for anything that is not German, so that is important because otherwise the material cannot be used or may not be used.
And then there is another specialty in Germany. As you may know, the costs for the attorneys and for the court are set by the value of the case. They are defined by the Attorney Remuneration Act (Rechtsanwaltsvergütungsgesetz) and so, if your client asks you to be less expensive, then, of course, you could just use a very low value of the case. But that has backfired a couple of times in the past. So judges have said that “You Shall Not Lie”, especially judge Thomas Kuehnen. In Dusseldorf, there were several decisions that there named “You Shall Not Lie”. So do not use a value of the case that is much lower than it should be. Otherwise, the judges will just set the value of the case maybe to a much, much higher value.
So, how does the main hearing go? In the main hearing, the presiding judge will give you the preliminary opinion of the court, and he will also lay out the points that are of interest to the court. In your pleadings, stick to these points. That is my suggestion. Because otherwise, you are boring the court. The court wants an answer to exactly these points, so be kind to the court and focus on these points. If you really think there is one or two other important arguments, then go ahead and also argue these points. But be sure that you watch the judges whether they appreciate these additional points that you are making. The main hearing will last probably one to three hours and maybe some experts or witnesses are called.
One thing you have to know that there can be literal infringement and infringement under the doctrine of equivalence. So if you are the plaintiff, then you want literal infringement. Try to find good arguments for literal infringement. Otherwise, it might be easier for the defendant to evade a favorable decision for the plaintiff.
One other point that is important in Germany: the judges in patent infringement cases do not really judge about the patentability of the patent, the validity. So they will decide on infringement. The validity of the patent will be decided by the Federal Patent Court. So in some cases, the judges will stay the proceedings if there are parallel revocation proceedings. And sometimes they do not. So that would be good luck for you as a plaintiff.
The Defendant After Filing of the Complaint
In the previous section, I gave you some general remarks and tips about the overall procedure and the hearings and the different deadlines. So if you want to know more about that and tips, general tips about patent infringement in Germany, then go to the previous section.
What can you do as a defendant? First of all, you can ask for the security of costs for non-EU plaintiffs. That can be very efficient. If the plaintiff cannot deliver this security, then the whole case is moot. You can also immediately acknowledge all claims of the plaintiff if the plaintiff did not warn you or send a cease and desist letter. Then the costs of the whole proceedings will be shifted to the plaintiff.
Of course, you can challenge the validity of the patent with opposition proceedings or a revocation action (“Nichtigkeitsklage”) before the Federal Patent Court. That can be very efficient. The German system is bifurcated. So sometimes, the infringement court will stay the proceedings until there is a decision in the revocation action.
One other strategy is about making the judges limit the scope of the claims to the basically the drawing or the example given in the patent. You have to know that some judges are coloring the features in the claim and also in a depiction of the infringing good. They may be marking the features in the infringing good with corresponding colors. You can get a drawing from the patent, where the features are shown and color them in the corresponding colors of the colors that you used in the claim for the various features. Sometimes the court will use these drawings to interpret the claims. And then, naturally, sometimes the interpretation of the claims will be very narrow. So that can help you as well.
One other defense that I want to mention is the so-called Formstein defense. If you are working within the prior art, you cannot literally infringe a patent. That has been decided by the Federal Court of Justice in Germany a long time ago. So if you find yourself working within the prior art – you find a good piece of prior art that exactly describes what you’re doing – then maybe you can defend yourself with the Formstein defense.
Then another strategy is to find good arguments to move the argument from literal infringement to infringement under the doctrine of equivalence. That way you will have a lot more room for arguments to avoid a favorable decision for the plaintiff.
Does it Help to Have a Lot of Patent Claims
A lot of patent claims generally do not help, except maybe during prosecution. In this section, I will look into three different stages in the lifecycle of a patent: prosecution, validity challenges and enforcement. I looked at over 13.000 opposition cases and will present the first findings from this analysis.
In my opinion, the only stage where a lot of patent claims may help is the prosecution. The European Patent Office sometimes objects to a certain combination of features in claims that are supposedly not clearly and unambiguously disclosed in the application as a combination. Due to multiple dependencies in claims, you could just draft claims for all possible features and then have the perfect ground for combining any feature with any other feature. However, as you see later, a lot of claims can also have drawbacks.
Let’s look at the opposition stage. I have looked at over 13.000 random opposition cases at the EPO and analyzed them with regard to many parameters, such as the number of claims, length of claims, country of the representative, priority country, and about 100 more parameters. I will talk about other parameters in future videos. As for the number of claims, I found the following:
Oppositions are rejected in 17% of all cases, if the number of claims is 21 or more, whereas the opposition is rejected in 25% of all cases if the number of claims is 2 to 10. On the other hand, the patent is maintained in amended form in 38% of all cases, if the number of claims is 21 or more, whereas the patent is maintained in amended form in 29% of all cases, where the number of claims is 2 to 10.
As you may know from your experience, opponents may allow maintenance in amended form, if their own products would not fall into the scope of the amended claims. Many claims offer more choice to amend the patent in opposition proceedings.
And in litigation? Well, the single most important claims are the independent claims, as they determine the scope of the patent. The dependent claims can also play a role, but are sometimes even a hindrance for the patentee, since the independent claims are sometimes used to interpret the independent claims. In my personal view, a valid patent with only a small number of claims is the best.
Patent Prosecution History Estoppel
In this section I explain
- What is prosecution history estoppel?
- What was the case law until June 2016?
- What is the new case law in Germany?
Wikipedia has a very concise and nice definition of prosecution history estoppel: prosecution history estoppel, also known as file-wrapper estoppel, is a term used to indicate that a person who has filed a patent application, and then makes narrowing amendments to the application to accommodate the patent law, may be precluded from invoking the doctrine of equivalents to broaden the scope of their claims to cover subject matter ceded by the amendments. That means that if an applicant has limited the claims from fastening means to screws in prosecution, the applicant will not be able to invoke the doctrine of equivalents to also cover nails. This seems to be the current position in the US.
So what was the case law in Germany until June 2016? In 2002 the Federal Court of Justice in Germany issued a decision called Kunststoffrohrteil (X ZR 43/01), which basically stated that anything that happened before the grant in the granting procedure cannot be used to determine the scope of the claims during litigation.
However, in June 2016, the Federal Court of Justice in Germany took a slightly different approach in their Pemetrexed decision (X ZR 29/15). In this particular case, the court decided that under the doctrine of equivalents the claim cannot cover alternatives to a feature in the claim if these alternatives are mentioned in the description but have not been included in the claim. In the particular case, the applicant had limited a broader term “antifolate” to the specific compound disodium pemetrexed, because the examiner was of the opinion that the broader term was not supported by the examples and could not be generalized for the specific amounts.
So be careful when drafting patent applications for Germany or Europe to offer a variety of more specific alternatives as a replacement for broader terms. Also, try to keep this decision in mind when prosecuting your patent application in Germany or Europe.
Tailormade Scope of Patent Claims for Patent Litigation
Wouldn’t it be great to have an individually tailored scope of patent claims for each single patent enforcement against competitors? In Germany, this is not impossible. This is how it is done:
This strategy only works for product claims within the first 10 years of the lifecycle of a patent. You file a German patent application with a very broad claim 1 and as many different features in the claims and description as possible. You do not request examination until the latest possible date 7 years after filing. Then you keep the patent application pending as long as you can without being granted or rejected.
In Germany, you can derive a utility model from any product claim of a pending German patent application. If you see a competitor to copy your technology in their own products, you make a test purchase of the product and see, what exact features of your claims are infringed. Then you derive a utility model with a claim 1 including all disclosed features that you identified that are infringed. This claim covers the infringing product but is very narrow. Therefore, it will be very difficult for the infringer to invalidate such a claim with the prior art.
I hope that this compresensive article gave you a good overview of patent infringment proceedings and patent litigation in Germany. If you have any any more specific needs, feel free to contact us any time via email or phone (+49-211-159249-0).
I wish you success for whatever you do!