Stellbrink & Partner Patent Attorneys

Stellbrink & Partner new office - Widenmayerstraße 10 - MunichWidenmayerstraße 10
80538 Munich
Find Us on Google Maps

Tel.: +49 89 41112880

mail@stellbrink-partner.com

Site Logo

Innovation drives it all
Help you thrive

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.

We moved!

  • Categories: More   •   
  • Comments Off on We moved!   •   
  • by DJ

Stellbrink & Partner new office - Widenmayerstraße 10 - MunichWe are proud to announce that we are starting the New Year in our new and larger office. Starting immediately, you can find us at the following address:

Widenmayerstraße 10

D-80538 Munich

 

You can also reach us by phone at our new number  +49 89 41112880.

EPO decides: “No” to poisonous priorities

The Enlarged Board of Appeal has recently issued its much awaited order in the G 1/15 case relating to partial priorities of a generic claim.

Shortly summarized, this relates to the following situation. A first application is filed and discloses a specific embodiment (e.g., a screw). Later, a second application is filed and its claim relates to a more generic embodiment (e.g., means of attachment).

The question at issue is then whether the second application can validly claim the priority of the first application, as far as a screw is concerned – that is, whether the claim has a partial priority as far as it covers the screw. This is also relevant for the following reason: If the priority of the first application could not be validly claimed, it would destroy the novelty of the second application, as a specific embodiment (the screw) deprives the more general subject-matter (means of attachment) of novelty. This is why this scenario is also known as a “poisonous priority”.

The Enlarged Board of Appeal, which is the highest instance of the European Patent Office, has now ordered that the generic term can validly claim the partial priority of the more specific term previously disclosed. See the full order here.

This will be good news for patent applicants and patent practitioners!

Back from the dead – the Unitary Patent on track again

In the works since 2009, the European patent with unitary effect (EPUE), or, as it is more commonly known, the Unitary Patent, has faced many hurdles on its way to adoption. Legal challenges by Spain and Italy, lengthy negotiations on the locations of the courts, disagreements on translation requirements – all of those slowed down its arrival. However, June 23rd 2016 seemed to put the last nail in the Unitary Patent’s coffin. The Brexit vote meant that Britain would be unlikely to ratify the agreement any time soon (or at all!) and lead to many prominent figures in the IP world to coin the Unitary Patent as “dead”. Many said that the UK would pull out of the agreement, leaving it in rumbles (as it currently stands, Britain’s approval is necessary for the Unified Patent to come into being).

However, in an unexpected move on November 28th, Baroness Lucy Neville-Rolfe, the British minister for Energy and Intellectual Property, confirmed that Britain will ratify the unified patent system, Reuters writes (http://uk.reuters.com/article/uk-britain-eu-patents-idUKKBN13N2AW). The UK would sign the agreement in the first half of 2017.

A large part of the Unified Patent agreement centers around litigation courts that will rule on patent disputes across all of the member states. The central division is planned in Paris, with thematic divisions in Munich and in London. It may be that the UK’s desire to have a regional court in its metropolis played a role in this surprising decision. Some are sure to speculate what this decision means in the larger context of Brexit – will the UK seek closer EU ties than previously expected? As for patent professionals and innovators, we will keep watch to see how the other stakeholders will react to the British move. In particular, Germany has yet to ratify the agreement concerning the Unified Patent Court before it can enter into force. In any case, we will keep you updated about further developments.

From theoretical physicist to patent attorney – my first year as a patent attorney trainee

Whaaaat? Excuse me? Come again? Ohhh… Are the most common reactions when I tell people what I do. Patent attorney trainee or Patentanwaltskandidatin are not job titles that just roll off the tongue – in fact, it took me a lot of practice to master the second one. My elderly Bavarian neighbours have no idea what a patent attorney is, let alone a Kandidatin to become one. My family and friends mostly heard this job mentioned as a specific subset of a lawyer. In light of this, they often ask me: “Isn’t it boring? Don’t you have to do a ton of paperwork and stay up all night to memorize dusty ancient law manuscripts? Don’t you miss the excitement of solving problems and working with other scientists?” The answer to all three of those questions is no. No, it is not boring, the work is dynamic, and provides surprisingly many outlets for self-expression. No, all-nighters were never my thing, the manuscripts are all available online for reference, and no one actually knows them by heart. No, I don’t miss intellectually stimulating work and people, because I never left them behind. Problem-solving is an integral part of a patent attorney’s job – how else would we figure out the details of a complex patent application? Discussing the specifics of patent applications with inventors is not at all unlike the stimulating discussions with fellow scientists so valued in academia.

2016-02-25 at 16-32-43
Contemplating a most certainly very important case in the office.

So what exactly have I been doing for nearly a year now? The short answer is, a lot. The long answer could fill a book, so here is the shortish one. I read scientific literature on robotics, algorithms, and statistics to better understand the fields our clients are working in. I held technical discussions with inventors to get a better grasp on their ideas. I travelled to visit our clients on site and see how they do their magic. I wrote patent applications, got feedback on them from my bosses, the patent attorneys, as well as from clients, rewrote and improved my work. I did searches: prior art searches, freedom to operate searches – done to provide clients with an overview of what is already known in their field of operation or to determine whether they can bring their product to the market in a particular country. I went to oral proceedings – the most intense, yet the most rewarding part of a patent attorney’s job, where the fate of a granted patent can change, where decisions bearing enormous financial impacts for clients are made, where the goal is to convince the members of the examining, opposition or appeal divisions that your case is logically sound and your client is in the right. I estimated patent portfolio budgets, took part in strategic discussions concerning intellectual property and delivered IP landscape analyses. I learned to use several docketing systems – special programs patent attorneys use to keep track of all the cases, clients and, most importantly, deadlines. I struggled with the online patent application submission system of the European Patent Office, and called them to clarify things without restraint (they were very nice about it).

Bildschirmfoto 2016-08-11 um 09.11.37
Posing with the cutest invention ever.

It was not all work work work though. I had a lot of fun having lunch with my colleagues and discussing our lives or latest vacation plans. I was a fervent Germany supporter during our office football viewing parties (a real rite of passage in Germany). I gave a talk about my area of specialization in physics, cosmology, to my colleagues and friends, and we proceeded to watch Wall-E (our office is famous for its bi-monthly-or-so lecture-and-movie nights). I went to dinner with clients and had a blast talking about politics, recent events, history, technology…

So you see, if I had to describe my job in one word, I would use the opposite of “boring”, I would use “exciting”. It has been an amazing year, and I am very much looking forward to continue my training as I keep moving forward on the long and winding road towards the title of a European Patent Attorney. And maybe a German Patent Attorney as well, if I succeed in an epic fight against Bureaucracy, Rules and Language (German is hard!), but this is a story for another day.

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.

 

Our client Starship Technologies Revolutionizes the Transport of Goods

The Estonian Start-up Starship Technologies developed a self-driving robot that makes the transport of goods not only faster and cheaper, but also more eco-friendly. 

CmsMIelXYAAxhf7.jpg-largeStarship Technologies is an internationally oriented start-up established by the Skype co-founders Ahti Heinla and Janus Friis. Their vision is to effectively and drastically reduce the costs, delivery time and ecological impact of deliveries. While the American competitors Google and Amazon test drones, the Starship robot drives on streets and sidewalks to its customers. This results in a key advantage: equipped with an integrated navigation and obstacle detection system, the robot moves autonomously without being a danger for other traffic participants. Nevertheless, staff members are able to interfere at any time, to see the surroundings from the perspective of the robot, and even to communicate with other people through the robot. Unlike drones, these robots don’t need to show consideration for air traffic and therefore save substantial effort regarding safety and other legal issues.

As already mentioned, the start-up is focused on the last important mile that the parcel travels from the warehouse to its customer. This will only cost 10% of the current price and will provide more convenience to the client. The robot will be able to carry two grocery bags’ equivalent worth of deliveries. The delivery will take five to thirty minutes and the customer can choose a narrow time slot for it. In the meantime, the route of the robot can be monitored with an app in real time and the delivery is protected from theft because the robot can only be opened by the customer through the app.

It is also important for the company that no more polluting carbon dioxide will be emitted. The robot is battery-powered and needs less energy than a normal light bulb.

Cmq2OX2XEAAx718.jpg-largeSince Starship announced the testing program for their self-driving delivery robots with the largest European food delivery company Just East, leading German parcel delivery company Hermes, leading German retailer Metro Group, and London food delivery startup Pronto.co.uk on 6th July, the reaction in the press has been enormous: over 300 articles in print, online and TV have reached more than 450 million people around the world! WIRED UK, Forbes, BBC News, MIT Technology Review, The Independent, Daily Mail, Süddeutsche Zeitung and many more spread the message about the start of a new era in the revolution of delivery.

Stellbrink & Partner is pleased to be a part of that revolution and very happy about the rising success of our client.

Life after Alice: software patents under scrutiny

Ever since the US Supreme Court announced its decision in the Alice Corp. v. CLS Bank International case in 2014, the fate of software patents remained uncertain. Alice Corp.’s patents were invalidated, and the court’s statement included the following telling passages:

“A mere instruction to implement an abstract idea on a computer “cannot impart patent eligibility.””

“The mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”

“Stating an abstract idea while adding the words “apply it” is not enough for patent eligibility.”

“Nor is limiting the use of an abstract idea to a particular technological environment.”

The Alice ruling, widely seen as having broad implications, led to a sharp decrease in granted software patents, in particular those referring to business methods. This can be seen in the graph below. There was even some discussion on whether the US courts are taking the EPO route as regards software patents.

Graph of sharp decrease in granted software patents

A more recent ruling, however, brings a new hope to all those invested in software patents. In May 2016, the Federal Circuit ruled that two patents relating to databases are valid, reversing a previous decision of a lower court to invalidate them under Alice. The patents, belonging to Enfish LLC and used in an infringement case against Microsoft Corp., have been reinstated. The Federal Circuit reasoned that unlike in the Alice case, where an abstract idea was simply used in a certain technological environment, the Enfish database patents are patent-eligible, as they refer to improving the functioning of a computer. The Federal Circuit wrote “Accordingly, we find that the claims at issue in this appeal are not directed to an abstract idea within the meaning of Alice. Rather, they are directed to a specific improvement to the way computers operate,”. Even more generally, the court stated “we do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract”.

Only time will show how this Federal Circuit ruling will be interpreted in the general context of US software patents and whether Alice’s impact will be reduced. As for the infringement case, the Federal Circuit conceded that Microsoft did not violate one of the Enfish’s claims. The case will proceed further.

Stellbrink & Partner’s membership in the friends’ association of the Stiftung der Deutschen Wirtschaft

Stellbrink & Partner joined Stiftung der Deutschen WirtschaftWe are pleased to announce our membership in the friends’ association of the Stiftung der Deutschen Wirtschaft.
Click here for more information.

  • VAT identification number

    DE 305 677 242

  • Credits

    Concept and design
    by ANONIMA from Yin and Yang Wordpress theme by Onioneye. Team members portraits: Copyright Paolo Beccari.