Stellbrink & Partner Patent Attorneys

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Why is my patent attorney based in Munich?

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  • by DJ

In Germany, there are approximately 4 ,400 patent attorneys. Approximately 1 ,600 of those are based in Munich. That is, approximately every third German patent attorney works in Munich. In this article, we would like to shed some light on the reasons for that.

The first likely reason is the large presence of very good technical universities in Munich. To qualify as a German patent attorney, one needs to hold an academic degree in natural sciences or engineering. Munich is home to the Technical University and the Ludwig Maximilian University. These universities have an outstanding reputation for engineering and natural sciences, both nationally in Germany as well as internationally. Thus, there are many candidates in Munich who could potentially qualify as patent attorneys.

In addition, many large companies with a technical focus are based in Munich or in Munich’s vicinity, e.g., BMW, Siemens, and Infineon. These companies do not only employ many patent attorneys, but also engage external patent attorneys for some additional tasks.

Further, and probably most importantly, the European Patent Office, the German Patent and Trademark Office, and the German Federal Patent Court are all based in Munich. The patent offices examine European and German patent applications, respectively, and the Federal Patent Court reviews decisions of the German Patent and Trademark Office. Patent attorneys often need to visit these offices and this court, e.g., for oral proceedings. A home base in Munich is therefore useful be close to these institutions, and to spare the clients costs for travelling and accommodation. Further, the patent offices and the patent court create an excellent “ecosystem” in Munich: Munich is home to numerous patent examiners, patent judges, and patent attorneys. This enormously facilitates the professional exchange, both at conferences and at an informal level.

Due to all these reasons, Munich is a very suitable base for patent attorneys, which is also why we decided to establish our practice in Munich.

Do you have any questions relating to patent law? If so, please feel free to contact us by calling +49-89-41112880 or via email to mail@stellbrink-partner.com. In case you are interested in qualifying as a patent attorney, or in case you are generally interested in working for our firm, please feel free to contact us by calling the above number or via email to careers@stellbrink-partner.com. We are looking forward to hearing from you!

Breaking: UK ratifies the UPC agreement

On April 26th, the United Kingdom became the 16th nation to ratify the Unitary Patent Court agreement, bringing the Unitary Patent closer to reality. Once in force, the agreement will make it possible to enforce IP rights across all countries that have ratified the agreement via a single court. With its implementation, the UPC agreement will bring forth closer European integration as regards patent litigation.

As our readers may recall, to enter into force, the UPC must be ratified by at least 13 nations, as well as all three of Germany, France and the UK (as the three nations with the largest number of active European patents). After Brexit, all eyes have been on the UK, as the UPC agreement was suddenly up in the air again. With the ratification by the UK, the last obstacle on the path to a Unitary Patent remains a German constitutional court challenge to the agreement, still pending at this date. The pressure is now on, and many heads will turn toward Germany with the hope and expectation to resolve the challenge quickly.

Bumpy road ahead for the unitary patent

The unitary patent has been in the works for a number of years. The basic idea is simple: allow for a central system of patent litigation for patents in Europe (as opposed to litigation being tied to each of the individual countries where a European patent is validated). Based on the agreed rules, a new court would be established having a central division in Paris, London, and Munich.

For the unitary patent to come into effect, France, the UK and Germany must ratify the agreement. France has done so in 2014 already. Ratification by the UK has been called into question after the Brexit vote, but since then there have been statements by the members of the UK government indicating that they are still open to ratifying the agreement. On June 13th, a new obstacle to the implementation of the unitary patent emerged. Germany, which was well on course to ratifying the agreement, put a halt to it in view of a complaint from an unnamed individual insinuating that the ratification would violate German law. The German constitutional court in Karlsruhe put the ratification process on hold while it investigates the complaint.

Although accelerated proceedings are expected, the process is likely to further delay the implementation of the unitary patent and the start of operation of the Unified Patent Court. It now seems more and more unlikely that the courts can start reviewing their first cases in December 2017, as originally planned. With further delay of German ratification, the UK’s Brexit negotiations can also further affect the start of the unified court’s operations. We will keep you updated on any further developments in the long and difficult story of the unitary patent.

Patent Infringement and Patent Invalidity Proceedings in Germany

 

As regards proceedings relating to patent infringement, Germany is the number 1 jurisdiction in Europe selected by patentees. In addition to moderate costs, the quality of the judges, and the predictability of the outcome, the German court system plays a role in this choice.

Germany has a “bifurcated” system. There are civil courts (most notably Düsseldorf, Mannheim and Munich) that are responsible for patent infringement proceedings (in the following: patent infringement courts), and there is the Federal Patent Court based in Munich that is responsible for patent invalidity proceedings (also known as patent nullity proceedings).

One main difference to other jurisdictions is that the patent infringement courts do not decide on the validity of the asserted patents. This has significant implications for the initially paid court fees. The court fees have to be initially paid by the party starting the proceedings. That is, the patentee has to initially pay the court fees when starting the infringement proceedings. On the other hand, the alleged infringer (or any party seeking to invalidate a patent) has to initially pay the court fees for the patent invalidity proceedings.

Another important consideration relates to the timing of the proceedings. First instance infringement proceedings typically last for about 1 year. First instance patent invalidity proceedings typically last for about 2.5 years. That is, one usually receives a ruling on patent infringement before receiving a ruling on patent validity. This may be most relevant for the cease and desist claim, as it may happen that (subject to a security by the plaintiff) the patent infringement court orders the alleged infringer to cease and desist from using an invention after one year, and that the patent is only found to be invalid 1.5 years later.

In light of this, there is the concept of staying the infringement proceedings. If the patent infringement court arrives at the conclusion that it is likely that the asserted patent will be invalidated in invalidity proceedings, it can stay the infringement proceedings. However, the patent infringement courts are generally reluctant to grant such a stay of proceedings, and the overall statistics is that only about 10% to 20% of the patent infringement proceedings are stayed.

All these aspects have to be taken into consideration when deciding whether or not to start patent infringement proceedings, in which country to start such proceedings, and which court to use for such proceedings.

Corresponding considerations apply for the defendant as well –the alleged infringer also has to take the above timings and probabilities into account when developing a defense strategy.

Stelbrink & Partner LogoWe note that the above article is a general outline of patent infringement and invalidity proceedings in Germany. Such an article can never replace individual legal counselling. If you have any questions relating to patent infringement and patent invalidity proceedings in Germany, please feel free to contact us at mail@stellbrink-partner.com. We are always happy to help you.

The Year of the Unitary Patent?

Italy is 12th country that ratified the Unified Patent Court (UPC) agreementOn Friday, February 10th, Italy has ratified the Unified Patent Court (UPC) agreement.

As of now, the deal has been signed by 12 countries including France. As we previously wrote, approvals from 13 countries including the UK, France and Germany are needed for the UPC to come to fruition. Germany has said that they will ratify the agreement, provided so does the UK.

After the Brexit vote in June 2016, strong doubts were raised regarding the future of the UPC. However, in November 2016, the British minister for Intellectual Property, Baroness Neville-Rolfe reiterated the UK’s commitment to the UPC and the Unitary Patent. She then stepped down in December 2016, prompting questions on whether her assurances would be honored by her successor as IP Minister, Jo Johnson. Mr. Johnson is the younger brother of the UK’s new Foreign Secretary, former mayor of London and a staunch Brexit supporter Boris Johnson. When asked on his stance regarding the UPC, Mr. Johnson claimed that it may form part of the wider Brexit negotiations.

Meanwhile, the UPC committee has announced that the court will start operations in December 2017. Stellbrink & Partner will keep you updated on the status of the Unitary Patent in these tumultuous times.

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