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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.

US Supreme Court will shortly rule about indirect infringements potentially endangering free trade

2000px-Seal_of_the_United_States_Supreme_Court.svgCurrently, the US Supreme Court is reviewing a US patent infringement case (Life Technologies Corp. v. Promega Corp., No 14-1538). A decision on indirect patent infringement having negative consequences on trade with and export from the U.S. could be made in this case. The so-called Patent Trolls could also gain advantage from such a decision.

In a previous decision of the Federal Circuit, it was decided that the delivery from the US of only one non-patented standard component of a claimed combination product, to an European based manufacturing affiliate, who then assembles the multi-component product, using non-US sourced components, constitutes infringement of the US patent. This decision finds manufacturing activity in Europe to be infringement of a US patent, even though the European patent is not infringed (it has expired), and this would appear to contradict European law.

The subject of the case embraces a few patents that contain a kit with a container for a polymerizing enzyme for a primal-controlled polymerase-chain reaction. The defendant supplied the so-called Taq polymerase to a subsidiary in the U.K. from the U.S. The U.K. subsidiary then manufactured the kit, and sold it world-wide. Taq polymerase is a standard product for the polymerase chain reaction. The Federal Circuit then held that simply the supplying of the Taq polymerase is a patent infringement in the U.S.(!). A double domestic connection (i.e. delivery of an essential feature domestically and consequent infringing use also domestically), required in Germany for patent infringement, is not required under this court’s interpretation of the US patent statute. . 35 US Code § 271 (f) (1) of the US Patent Law states:

Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

Surprisingly, it was found in the previous instance that the export of a single standard component falls under the above text and would render the UK manufactured combination kit a patent infringement.

This interpretation would mean that in the future, any delivery of a standard product from the US for use abroad, could be considered an infringement in the US, if said standard product is part of a patented invention in the US and will be used as such abroad. Free trade and the legal certainty would thus be seriously compromised.