Patent Litigation 2024 Comparisons

Apart from non-technical IP rights, like copyrights, trade marks and designs, national patents and national utility models are available in Germany. At the European Patent Office (EPO), European patents and European patents with unitary effect (“unitary patents”) are available, which are granted with effect for Germany. These technical IP rights are based on statutory law.

All technical IP rights require that an application is filed with the respective patent office. German patents and European patents (with or without unitary effect) require that the application undergoes search proceedings and, upon request, examination proceedings at the patent office before the right is granted by the respective patent office. During the search proceedings, prior art is searched by the patent office. During examination proceedings, the patent claims will be assessed to determine whether they fulfil all statutory requirements for patentability. Utility models are registered without substantive examination.

The average time for the patent to be granted is about two-and-a-half years from the request of examination. Utility models are registered within a few weeks after filing.

German and European patents have a term of 20 years from the filing date. For utility models, the term is ten years from the filing date.

The most relevant rights for an owner are the right to an injunction and to damages. The owner has to pay a regular (annual) renewal fee to maintain the right in force. Via the public patent registers at the patent offices, granted patents can be searched for certain fields of technology or for certain companies.

There are supplementary protection certificates (SPCs) for German and European patents. SPCs compensate patent holders for loss in effective patent term resulting from the time taken to receive marketing authorisation for such products. SPCs extend the period of effective protection by five years for patents on human or veterinary medicaments and plant protection products for which an authorisation to be placed on the market is required. First of all, there must be a basic patent that is still in force at the time the SPC application is filed in the member state in which the SPC application is submitted. Furthermore, the product must be protected by that basic patent. Also, the SPC must be based on the first valid authorisation to place the product on the market as a medicinal product. Finally, the product must not already be the subject of an SPC.

In proceedings before the European and German patent offices, following the publication of the patent application, any third party may present observations concerning the patentability of the invention to which the application relates. That person shall not be a party to the proceedings.

The applicant can file an appeal to bring the case to a higher instance.       

If annual fees are not paid, there is a six month grace period during which no loss of rights occurs. If the owner pays the annual fees with a 50% surcharge within the six-month period, then a loss of rights is prevented. Otherwise, the right will lapse.

Post-grant, the owner can initiate limitation proceedings to limit the claims. In addition, the owner can limit the claims during opposition and revocation proceedings to be launched by a third party. The amendments must not extend the scope of protection vis-à-vis the granted claims and must be originally disclosed in the application as originally filed. During opposition proceedings, the amendments must also be occasioned by a ground of opposition, ie, the owner cannot freely amend the claims post-grant.

Once the owner of a technical intellectual property right has established infringement of that right, for instance by way of purchasing and analysing a competitor’s product, they have different options to enforce such right against the identified infringer, which include various actions in and out of court. 

Out of court, a first option to enforce the respective right would be a pre-litigation letter, which can take the form of an informal request for authorisation (Berechtigungssanfrage), or the form of a formal warning letter (Abmahnung). 

• With a request for authorisation (also called a “soft letter”), the owner of the technical intellectual property right points towards the fact that they believe that the respective right is being used and asks the alleged infringer why they believe they are entitled to that use. This letter has no direct legal implications, but instead serves the purpose of entering discussions with the infringer, often with the aim of reaching an early settlement or extending a licence offer to the infringer. If drafted carefully, it also gives no rise for any counterclaims, such as claims for recovery of attorneys’ fees, and is therefore a rather “risk-free” way to start enforcing the respective right. It does bear the risk, however, of giving the infringer a heads-up about the potential further conflict, which the infringer may use to prepare for or even start an early attack on the validity of the technical intellectual property right. 
• With a formal warning letter, the infringer is similarly being informed about the assumed infringement, but, at the same time, is requested to take certain measures to avoid court proceedings. In most cases, the requests will comprise a written seize-and-desist declaration from the infringer (usually also containing a contractual penalty payment in case of default). Also, in many cases, the owner of the technical intellectual property right will include requests for information and accounting, damages and cost recovery. Other than the aforesaid “soft letter”, such formal warning letter does allow the alleged infringer to file certain counterclaims, including for a declaration of non-infringement (a “DNI action”) and/or cost recovery with the competent courts. Due to this inherent risk, the owner of a technical intellectual property right should be sufficiently convinced about the infringement situation before sending out any such letter. 

A pre-litigation letter is not a formal requirement for filing court action in Germany, so that many cases are also directly brought to court, in particular if timing and/or a “surprise effect” has strategic advantages, or if there are no prospects of resolving the matter amicably. 

Court proceedings in Germany can take the form of preliminary injunction (PI) proceedings, or main proceedings (which are separate types of proceedings, following a different set of rules and a different timing), as set out below. 

• PI proceedings are primarily directed at obtaining fast injunctive relief against the infringer. Accordingly, they are “fast tracked” and are often scheduled for an oral hearing within just days or weeks of the filing of the request (depending on the urgency of the request). In cases of utmost urgency, they can even be granted within hours and without hearing the infringer (“ex parte”), eg, in relation to imminent infringements on a trade show. 
• Main proceedings allow the owner of a technical intellectual property right to file all relevant requests, including requests for information/accounting, damages, recall and the destruction of infringing products. Main proceedings take significantly longer, however, and usually require ten to 18 months from the filing date to a first instance decision (depending on the venue, as German courts vary on the timing of these proceedings). 

If the owner of a technical intellectual property right is not sufficiently sure about the infringement (eg, by a method performed in facilities of the assumed infringer that the owner does not gain access to), another possible action is a request for inspection (Besichtigungsverfügung), which allows the owner to obtain the necessary evidence for claiming infringement through the inspection of a product or method at the alleged infringer’s facilities (or any other location not otherwise accessible to the owner) with the help of a court instructed bailiff. This action can also serve as an enforcement measure, as it can have a significant impact on the alleged infringer and sends out a rather strong signal of the owner’s resolve to enforce their technical intellectual property right.

Any third party who wishes to remove the effects of a German patent can file an action for nullity at the Federal Patent Court (FPC). A court fee has to be paid to file this action. Other than that, there are no specific requirements to file this action, such as a specific legal interest. 

In addition, within nine months after the publication of the grant of a German or European patent, any third party, except the patentee, can file an opposition against such patent. Also here, a special legal interest or other specific right to sue is not necessary. For a purely German (national) patent, the opposition must be filed at the German Patent and Trade Mark Office (GPTO), for a European patent (EP bundle patent, or unitary patent) the opposition must be filed at the EPO.

A DNI action can also be filed with the infringement courts to limit the effects of a granted technical intellectual property right. However, such action does require legal interest (eg, in reaction to a warning letter) and does not limit the right owner to respond with an infringement claim, which would then take the lead, including the owner’s choice of forum. 

In Germany, due to the bifurcated system, there are different courts handling the infringement and nullity cases, which have different jurisdictions. 

On the infringement side, and regarding the first instance, each German federal state (Bundesland) has designated one district court (Landgericht) as the competent court to hear matters relating to disputes on technical intellectual property rights within such state. Among these courts, however, only a few courts frequently hear such matters and have, therefore, developed significant expertise in this field. These are the courts in Dusseldorf, Mannheim, Munich, and Hamburg (which, by no coincidence, are also the cities that now host the German local chambers of the Unified Patent Court (UPC)). Most conflicts relating to technical intellectual property rights are governed by lex loci delicti, so that the owner of such right is free to choose between the competent courts, if the infringement occurs in the entire German territory (eg, by way of advertising on the internet). As such, most owners continue to choose among one of the aforesaid (four) courts. 

Still on the infringement side, the appeal is then filed with the Higher Regional Court (Oberlandesgericht) of the federal state in which the first instance case has been heard. A further appeal, which would be heard by the Federal Supreme Court (Bundesgerichtshof) is usually not allowed, unless the case touches upon fundamental questions of law. A request for exception permission of a further appeal (Nichtzulassungsbeschwerde) can still be filed with the Federal Supreme Court in relation to any appeal decision but is frequently rejected (unless for exceptional circumstances). 

On the nullity side, separate invalidity attacks in court are heard at first instance by the FPC in Munich (Bundespatentgericht). The appeal is then heard by the Federal Supreme Court, with no possibility for a further appeal or any relating requests.

There are no specialised bodies or organisations for the resolutions of disputes relating to technical intellectual property rights in Germany. Some courts, such as the Munich Court, offer court-mandated mediation proceedings as an alternative to a formal court decision. Also, there are some organisations offering arbitration if the parties agree to their rules, such as the German Arbitration Institute (DIS).

In order to file for injunctive relief in the German courts, the owner of the technical intellectual property right must be duly recorded in the relevant registers. Other than that, no formal prerequisites (such as pre-litigation letters, pre-litigation mediation) exist.

A formal warning letter might, however, help to avoid some specific issues, which may occur:

• if the infringer immediately acknowledges all claims (which may then, in the absence of a prior warning, leave the right owner with all procedural costs); or
• if an ex parte order is being sought (in which case the court may consider the lack of a prior notification to deprive the infringer of their constitutional right to be heard).

In Germany, infringement cases in the civil courts must be handled by a lawyer admitted to the bar in Germany, whereas invalidity cases can also be handled by patent attorneys. In practice, both type of proceedings are usually handled by a team of at least one lawyer and one patent attorney, which can work in the same or different firms.

Interim injunctions (synonymous to “preliminary injunctions” or “PI”) are available in Germany, if the following preconditions are met.

• Infringement must be proven by means of present evidence (including affidavits). The case must not be too complex for a court’s assessment within the available time frame.
• Validity must be proven beyond reasonable doubt, eg, if it has survived opposition or nullity proceedings, or if it has been broadly licensed out without any relevant challenges from competitors. There has been a change in recent case law lowering, to some extent, the bar for this requirement. Also, depending on the venue, this requirement is handled differently, thereby incentivising forum shopping.

• Urgency needs to be shown by the right owner, which some courts interpret to require the filing of the PI request no later than one month after the right owner’s first possibility to enforce the right (ie, existence of right, knowledge of infringement and infringer).

While increasingly difficult due to constitutional concerns, there is also the possibility to obtain a PI ex parte, ie, without the infringer having been heard on their possible defence. This practice has largely been limited to cases of extreme urgency and potential harm, such as trade shows.

A potential opponent can file a protective brief with the central register of protective briefs and thereby reduce the risk of an ex parte interim injunction being issued against them. If a protective brief has been filed, the court must hear the opposing party before issuing an interim injunction. This possibility only exists in interim injunction proceedings or at the UPC. In normal patent infringement proceedings, it is possible to apply for a stay of the proceedings if there is a high probability that the patent in dispute will be declared invalid in parallel nullity or opposition proceedings. Against an action for injunctive relief the potential infringer can raise the defence of disproportionality. In addition, in the case of standard essential patents (SEPs), the potential infringer has the option of asserting that the patent proprietor’s licence offer does not meet the FRAND requirements.

The statute of limitations for a patent infringement in proceedings before a German court is based on the general statute of limitations rules. The standard limitation period is three years and begins at the end of the year in which the claim arose, ie, the patent proprietor became aware of the infringement.

German patent law provides for inspection proceedings in which a potentially infringing product can be examined at the request of the patent proprietor. The preparation of an expert opinion or the seizure of potentially infringing objects are also possible. The prerequisite for these proceedings is, generally speaking, a probability of infringement.

A complaint in a German court must provide enough information for the court to be able to understand the allegation of patent infringement and to check if the preconditions of the complaint are met. Parties must be identified; the patent and scope of protection must be described. Also, the potential infringing product must be stated and why it falls into the scope of protection. To verify the stated information, offers of prove are also included in the complaint. This requires a rather fully documented complaint, which is why German proceedings are often called “front-loaded”. In further briefs during the proceeding additional arguments, information and proof can be submitted, subject to possible exclusion for late filing.

Representative or collective actions are not permitted in any intellectual property disputes in Germany.

The owner of an SEP underlies special restrictions when granting licences: they must be fair, reasonable and non-discriminatory (FRAND). Also, the owner of an SEP is required to offer such licence to the patent user prior to bringing a claim for injunctive relief, subject to the offering and negotiation requirements established by the European Court of Justice (so-called FRAND ping-pong). 

German courts have recently been given more discretion to deny injunctive relief in cases of patent infringement, if found to be disproportionate. However, so far German courts are very reluctant to use this possibility, so that an injunction (in some cases combined with a grace period) is still the standard relief in the case of patent infringement. 

The necessary parties to an action for infringement are, on the claimant’s side, the owner of the intellectual property right or the exclusive licensee, who can both initiate the infringement action and, on the defence side, the possible infringer. Also, if contractually provided for, a licensee or other persons can be the claimant of an infringement action. German law allows for a third party, such as a supplier, to become a direct (further) party to these proceedings if sufficient legal interest (such as liability for the outcome of the litigation) is shown. The third party can then file own motions and/or support the case of any of the other parties by their own submissions and pleadings. It is bound by the results of the court decision, if the third party is later subjected to its own claims relating to the subject matter of what has been decided before.

In German law, there is a difference between direct and indirect patent infringement: 

• direct infringement occurs when a person itself uses the protected invention, eg, by manufacturing, selling or using a patented product or process; and
• indirect patent infringement occurs when a person induces or assists others to use a patented invention knowing or reasonably should know that doing so constitutes patent infringement, for example, supplying components or licensing the use of a patented invention in a way that constitutes direct patent infringement.

In principle, the patent holder has the same claims in both cases. In the case of indirect infringement, however, the claims are limited if the product can also be used in a non-infringing manner, usually to meet the requirement of applying a strict customer warning for future sales (instead of injunctive relief).

In principle, a patent develops its material effects only within the territory of the granting state, which is why patents granted in or for Germany do not grant any protection abroad, while patents granted in or for other countries do not grant any protection in Germany.

Accordingly, a German patent or a European patent granted with effect for the Federal Republic of Germany does not prohibit the use of the protected invention abroad. Therefore, the process must be used in the domestic market to be patent infringing.

The scope of protection of a patent is determined by the patent claim, which must be interpreted/construed. First, the wording of the patent claim is decisive; furthermore, the claims are interpreted on the basis of the description and figures. The understanding of the person skilled in the art is decisive. Prior art is also used for interpretation. The prosecution history usually (unless for specific cases) is not a valid source of interpretation.

The potential infringer can, first and foremost, dispute the infringement, by arguing favourable claim construction or submitting facts and evidence which show a different structure and/or function of the accused product/process than identified by the right owner. 

In addition, the validity of the right can be called into question. For utility models, this can be done by way of a counterclaim in the infringement court; for patents (due to the bifurcated system, see 2.3 Courts With Jurisdiction), this requires a separate attack in the FPC or by way of opposition (during the opposition period). In the latter case, a request can be made with the infringement court to stay the case pending the outcome of the validity case. However, the courts only allow such request if there is an overwhelming probability that the patent will be declared invalid in parallel invalidity proceedings, which is a rather high bar.

Another defence against patent infringement is the right of prior use, which states that the patent does not take effect against the person who, at the time of filing the application, had already put the invention into use in Germany or had taken the necessary steps to do so.

The statute of limitations can also serve as a defence against patent infringement if the asserted claim is already time-barred.

If the patent proprietor has placed examples of a patented product on the market or if this has been done with their consent, exhaustion can be invoked against them regarding these examples.

The aforesaid FRAND objection can be raised against the holder of an SEP.

Expert witnesses may be called upon to prove a party’s representations or to prove contradictory facts; they may be proposed by a party but are appointed by the court. However, the party itself may also submit as evidence an expert opinion that has already been obtained.

In practice, most patent disputes are limited to written expert reports, which are considered as substantiated party pleading, and not as direct evidence. The courts rarely hear the party expert but may appoint an independent (court appointed) expert if there are relevant and remaining doubts after having considered the written expert reports. Often, the courts do not see a need to do so, but can decide on their own technical understanding based on the parties’ pleading and factual submission.

Commonly, there is no separate procedure for the interpretation of the claims; the interpretation is carried out in the respective proceedings themselves. Claim construction often occurs in the main oral hearing, eg, by way of the court’s introduction to the case. As an exception to that rule, the Munich Court holds a preliminary (first) oral hearing some months prior to the main oral hearing, which can (but does not have to) take the form a “claim construction hearing”.

German law does not foresee the possibility to seek or receive third-party opinions.

Any person may file an opposition against the grant of a German patent within nine months from the publication of the grant of the patent in the Patent Bulletin. After expiry of the opposition period and if no opposition proceedings are pending, a granted patent can only be challenged by nullity action before the FPC.

Grounds for nullity include lack of patentability (eg, lack of novelty, lack of inventive step, lack of technical character), lack of enablement, inadmissible extension of the subject-matter of the patent compared to the original version of the application, unlawful withdrawal of the invention (can only be invoked by the infringed party) and extension of the scope of protection after grant.

In general, no standing to sue is required to request revocation of a German patent which has been granted and is still in force. However, if a patent has expired, the plaintiff must prove a legal interest in the revocation of the contested patent, eg, a pending parallel infringement action.

In infringement proceedings based on a German utility model, non-protectability can be raised as a defence. In this case, the validity of the utility model must be examined by the infringement court, even if a parallel cancellation action is pending at the GPTO.

After examination of the opposition, the patent may be maintained, limited or revoked. The decision of the Patent Division may be appealed to the FPC. Similarly, the decision in the nullity action may maintain the contested patent or declare it invalid in whole or in part. The decision of the FPC may be appealed to the Federal Court of Justice.

The patent is maintained with a limited scope of protection if only certain claims are attacked. The patent will also be maintained with limited protection if it is patentable in this respect but not on the basis of the documents originally granted, eg, if it sufficiently distinguishes from the prior art, and if any other grounds for revocation are overcome.

In both opposition and nullity proceedings, the proprietor may file one or more auxiliary requests with amended claims in order to defend their patent to a limited extent if maintenance as granted is not possible or unlikely. Any amendment must be supported by the original application and must not lead to an extension of the scope of the granted claim set.

The court hearing the infringement case is only competent to decide on infringement. In contrast, the FPC decides on the validity of a patent (“bifurcation”). In order to reduce a possible time gap due to the bifurcation, rather strict time limits apply to the parties’ submissions in nullity proceedings. In addition, a preliminary qualified opinion should be issued within six months of service of the action on the defendant.

The court hearing the infringement case may stay the infringement proceedings after a nullity action has been filed until the nullity action has been decided, as the latter takes precedence over the former. The decision to stay the infringement proceedings is at the discretion of the infringement court. However, the court will only grant a stay if the patent is obviously invalid, eg, prima facie not novel.

In principle, the provisions of the German Code of Civil Procedure (ZPO) apply, with no special set of rules governing only this type of proceedings. The remedies of injunction and the general liability for damages are decided in a first round of proceedings, the amount of damages is fixed in separate proceedings once information has been provided. It is worth noting that there is no pre-trial discovery or discovery during the litigation in Germany, so that all relevant commercial information used to calculate damages usually only becomes available post-trial, because of the information and accounting claims that the court may grant as part of its infringement judgment.

In German law, no jury trial exists; every dispute is resolved by professional judges. In nullity proceedings, legal and technical judges decide jointly; in patent infringement proceedings, only legal judges decide. The parties have no influence on who the judges are, which are arbitrarily assigned to a case.

The parties can settle the case at any stage during the proceedings without further formal requirements. If they need more time to do so, they can ask the court to stay the proceedings. Court assisted mediation is only available in selected courts, such as the Munich Court, as set out in more detail at 2.4 Specialised Bodies/Organisations for the Resolution of Disputes.

German courts are not directly bound by precedents, but of course consider decisions by other German courts on similar questions of law.

Foreign judgments also need to be considered by German courts, whereas the courts have wide discretion as to the extent to which they follow the arguments in these judgments. According to case law, they should, however, provide reasons for deviating from foreign judgments, if the fact pattern and legal principles applied are substantially similar or identical.

In infringement proceedings, the patent proprietor is entitled to injunctive relief, damages, the provision of information and the surrender and destruction of infringing products. The judge is bound by the patent proprietor’s requests and cannot award any further claims. These claims are enforced in separate enforcement proceedings and/or through the bailiff enforcement system.

A prevailing defendant is entitled to reimbursement of the fees and their legal costs, the latter, however, is only limited to a statutory amount based on the amount in dispute.

There are no different types of remedies for different technical intellectual property rights. All owners of intellectual property rights are entitled to the claims described under 6.1 Remedies for the Patentee in the event of infringement.

If the patent is found to be valid and infringed in the first instance, this decision is provisionally enforceable, which in principle does not change even if an appeal is lodged against the first-instance decision. However, if the patent proprietor enforces the first-instance decision and this is later withdrawn on appeal, they are liable to compensate the defendant for the damage caused by the enforcement.

Under German law, the appeal procedure is governed by the same rules as the first instance proceedings. However, new facts and arguments can only be introduced if specific requirements are met, as no “second trial” should be incentivised.

In an appeal a limited review of the facts of the case and a full legal review can be done. The factual review is limited in view of the first instance court’s discretion on specific aspects of the case and in view of the court’s own fact finding (eg, hearing of witnesses), which the appeal court only replaces with its own fact finding in specific circumstances.

The only costs arising before filing a lawsuit relate to the right owner’s costs for receiving advice from its lawyers. To the extent that this advice leads to a warning letter, the statutory costs, which are governed by the value of dispute, can be recovered from the adverse side if the conflict is decided in favour of the right owner.

Court fees are calculated depending on the value in dispute of the respective proceedings. This in turn depends on the value of the patent in dispute and/or the commercial interest of the right owner in stopping the alleged infringement. Usually, only a rough (“best guess”) figure is provided, which is often not called into question by the other side (as this would require an order to lay open books), and therefore followed by the court.

Under German law, the losing party is required to reimburse the winning party for court fees, expenses and attorneys’ fees. The latter are limited to a statutory rate based on the value in dispute.

In Germany, due to the well-established and functioning court system, alternative dispute resolution is less common, and often not actively promoted by the courts.

As an exception, the Regional Court of Munich I offers the possibility, in patent litigation cases, of mediation under the supervision of a trained arbitrator, usually a member of the other patent litigation chamber, who may be assisted by an arbitrator from the FPC. The procedure provides for two dates. The early first date is intended to serve as a preliminary assessment and to provide an opportunity for settlement discussions, if necessary. For this purpose, the Landgericht München I offers patent mediation, ie, a conciliation procedure before a judge experienced in patent matters. The Munich procedure is also characterised by strict time limits: the number of pleadings and deadlines are agreed at the early first hearing and are generally adhered to. Often, the first instance proceedings can be completed in less than a year.

As a matter of course, parties may enter their own arbitration framework or try different ways of dispute resolution, including private mediation. This is often seen in cross-border cases, where foreign practice (eg, in the USA) can incentivise these mechanisms.

IP rights can be inherited and transferred without limitation or restriction, an exception thereto being the transfer of copyright during the creator’s lifetime. The transfer of a patent application shall be recorded in the European and German Patent Registers at the request of an interested party, upon production of documents providing evidence of such transfer. A contract signed by the transferor offering the assignment and signed by the assignee accepting the offer can function as evidence. Further, an administrative fee is to be paid. In general, it is important to document a transfer of IP rights in writing. If challenged in infringement proceedings, the entitlement needs to be proven; thus, written assignment is the safest way.

A contract signed by the transferor offering the assignment and signed by the assignee accepting the offer should be produced as evidence. For IP applications, this contract is filed with the office together with a writ requesting registration of the assignment in the register and an administrative fee is to be paid.

IP rights may be licensed, preferably in writing, by the owner or the exclusive licence holder. The licences can be entered in the respective register, which is not mandatory.

The owner of the IP right and the licensee conclude a licence agreement in which the details of the licence are defined. In Germany, a distinction is made between exclusive and non-exclusive licences.

A licence can be limited in terms of location, time and subject-matter. In return for the licence rights, the licensee usually agrees to pay an appropriate licence fee. That licence fee depends on the matter, such as the field of technology in patent matters, and has generally decreased in recent years.