Patent Litigation 2023 Comparisons

An inventor can obtain protection for his invention in Germany via a German patent or a German utility model.

A German patent can be obtained either via the national route by applying at the German Patent and Trade Mark Office (GPTO) or via the regional route, ie, by applying for a European patent.

Furthermore, patent protection for Germany can also be obtained via a Unitary Patent as the Unitary Patent system is starting now in 2023.

A German utility model can be obtained either by applying to the German Patent and Trade Mark Office or deriving it from a pending German or European patent application.

Intellectual property rights in Germany are based on statutory law, eg, by the German Patent Act, the German Utility Model Act or the International Patent Convention Act and the Unified Patent Court Agreement. However, the interpretation of the laws are based on precedent decisions. This applies in particular to IP proceedings, where current case law is important in the material assessment, eg, of inadmissible extension and inventive step.

German Patents

In order to obtain patent protection in Germany, one can file a national patent application directly with the GPTO. Alternatively, one can apply for a German patent via the international filing system of the World Intellectual Property Organization (WIPO) or the regional examination and granting system of the European Patent Office (EPO). For obtaining a Unitary Patent with protection for Germany both the WIPO and the EPO system may be utilised for filing.

As German patents are examined, intellectual property rights patent applications will be examined according to the requirements of the German Patent Act or the European Patent Convention. This comprises by example whether the claimed invention is novel and inventive over the prior art which was publicly available at the filing date of the patent application. To obtain an earlier effective date, the priority of another patent application can be claimed, provided that no more than 12 months have passed between the priority and the filing of the application.

The patent application is published 18 months after filing and constitutes prior art itself.

After requesting examination (for German application latest within seven years after filing), the patent application is examined in terms of patentability, in particular novelty and inventive step. If the examiner of the GPTO, the WIPO or the EPO has doubts, the applicant is invited to comment in writing on the objections, and to amend the claims within the scope of the original application. Additionally, an oral hearing (GPTO) or oral proceedings (EPO) may be requested by the applicant during the examination procedure in order to comment on objections of the GPTO or the EPO.

If the application is considered to be patentable, the applicant will be informed. After the grantable version is agreed, the granted version of the patent is published. The date of the publication of the grant is the date when the patent comes into force with all its rights.

In view of the upcoming Unified Patent Court (UPC), it is possible to determine at the EPO, within the consent of the grantable version, whether the patent will be considered as a European patent or a European patent with unitary effect, ie, a Unitary Patent.

German Utility Model

The German utility model is not an examined but a registered intellectual property right. A speciality of German utility models is that, according to the German Utility Model Act, methods cannot be protected. Another difference from German patents is that utility models have a grace period of six months, during which publication by the applicant is not prejudicial to novelty. Moreover, prior use is only prejudicial to novelty if it has taken place in Germany.

The registration procedure for a utility model is also started by filing an application with the GPTO.

In addition to a direct application with the GPTO, a utility model can also be obtained in Germany by deriving it from an earlier pending patent application or utility model. Such a utility model is considered as an independent application and has the same time rank as the earlier patent application or utility model.

Given these features, utility models may advantageously be used in infringement proceedings when quick action is to be taken against an infringer, and the patent grant procedure can no longer be awaited. However, as German utility models are unexamined intellectual property rights, the uncertainty about the utility model’s validity may hinder the progress of the infringement proceedings.

Supplementary Protection

The supplementary protection under German unfair competition law is not granted by way of a formal procedure. In order for an invention to be granted supplementary protection under competition law, certain requirements must be met. The protection arises as soon as, and as long as, all the required conditions are fulfilled.

Patents

The patent grant procedure can take a few years due to the examination of patentability at the GPTO and/or EPO, depending on the technical field and the complexity of the invention. It has been observed that grant procedures typically take two to four years. However, if necessary, the duration can slightly be influenced by the applicant’s management of the procedure; in particular, the EPO provides a number of ways to speed up the examination, eg, PACE request.

Applicants not having their residence, place of business or branch office in Germany (German patent) or in an EPO member state (European patent) must have a professional representative, ie, a German (patent) attorney before GPTO and a European patent attorney before EPO. For residents it is not mandatory but highly recommended.

Typically, the official fees up to the grant for a German patent including the third and fourth annuity are below EUR1,000, whereas for a European patent (with or without unitary effect) they are about EUR6,000 without validating the patent in the contracting states.

Utility Models

The granting procedure for utility models is considerably shorter, taking only a few weeks to a few months, since there is no examination of patentability.

Regarding the representation, the same applies as for the German patent.

The official fees for requesting the registration of a utility model are below EUR100.

German and European patents (with or without unitary effect) have a term of 20 years from filing. With supplementary protection certificates (SPCs) this term can be extended for human or veterinary medicines and plant protection products.

Utility models have a term of ten years from filing.

There is no explicit provision on the term of protection of the supplementary protection under competition law as it is to be granted as long as all prerequisites are fulfilled.

Rights

The owner of a German patent, European patent and a German utility model has the right to an injunction, information about past infringing acts, damages, destruction of infringing products, recall and publication of the infringement judgment.

In case of an infringement of the supplementary protection of competitive performance, claims may include, in particular, injunctive relief, removal of the infringement, information and damages.

Renewal Fees

The applicant is obliged to pay annual renewal fees for the patent applications and patents, wherein the amount progressively increases with the year.

The annual fee for the German Patent has to be paid from the third year in advance for the year to follow, wherein the fee increases from EUR70 for the third year to EUR2,030 for the twentieth year.

The annual fee for the European Patent application also has to be paid from the third year at the end of the month, whereas the fee increases from EUR505 for the third year to EUR1,690 for the twentieth year.

After the grant, the fees for the European Patent only have to be paid in the designated countries. For the European patent with unitary effect, fees are to be paid for the member states of the UPC starting from EUR35 for the second year to EUR4,855 for the twentieth year. As a rule of thumb, from four designated countries on, the costs for the European patent are lower than the sum of national costs.

For the German Utility Model, three maintenance fees must be paid: EUR210 after three years, EUR350 after six years and EUR530 after eight years.

Public Information

The GPTO and the EPO both have registers with public information on the patent applications and patents filed with the offices. However, these registers do not comprise information about patents in relation to certain products.

There is the possibility in Germany for further protection after the term has lapsed. It is the so-called Supplementary Protection Certificate (SPC) for human or veterinary medicines and plant protection products, which can be requested for a German Patent and a European Patent. The SPC can give protection for the claimed product for a maximum of additional five years after the expiry of the original patent. As with the patent, annual fees must be paid for the SPC.

After publication of the application and before the grant of the patent an observation by third parties can be filed at GPTO and EPO.

With regard to the German patent application, the third-party observation involves only the provision of new prior art. The filing at GPTO has to be made in writing and does not require a reasoning. This is in contrast to the European patent application. Beside observations on novelty and inventive step, third-party observations may also be directed to clarity, sufficiency of disclosure and added subject-matter. At the EPO the written filing can be made via an online tool and anonymously, wherein a reasoning is mandatory.

Both the GPTO and the EPO inform the applicant about the third-party observation and allow them to comment on it during the grant procedure. The submitting third party, however, is not involved in the procedure. Thus, a carefully drafted third-party observation may be a cost-effective alternative compared to opposition proceedings for an already granted patent. However, it has to be considered that one does not become a party of the examination proceedings with a third-party observation and thus one has only limited influence on further proceedings.

If a German patent application is refused, the patentee receives a negative decision from the office. The applicant can file an appeal against this decision with the GPTO. If the GPTO cannot uphold the appeal, it will be forwarded to the German Federal Patent Court, which will then decide the outcome.

If the grant of a European patent is refused, the patentee can appeal against a negative decision to the Boards of Appeal. In certain cases of general interest, the patentee may appeal to the Enlarged Board of Appeal against a negative decision from the Boards of Appeal.

The German patent, the German utility model and the European patent are deemed to be withdrawn, when annual or maintenance fees are not paid. All fees are due on the last day of the month in which the anniversary of the date of filing falls and must be paid within two months. The fees can then be paid together with a penalty fee (EUR50 for German patent and German utility model; 50% of the respective annual fee for the European patent) until the end of the sixth month after the due date. If the payment has not been made by then, the IP right expires.

After expiry of these deadlines, the applicant can apply for re-establishment of right at the GPTO or the EPO. Re-establishment has to be requested within two months after the removal of the cause of non-compliance, but at least (with a very few exceptions) one year after the expiry of the missed due date. In the request it has to be justified that the due date has expired despite all due care being taken.

After the grant, the patentee can limit the claims of a German patent, a German utility model and a European patent, as far as the subject-matter does not go beyond the content of the original application and the amendment does not extend the scope of protection.

This can be done in the course of validity proceedings, namely for the German patent and European patent in opposition or nullity proceedings and for the German utility model in cancellation proceedings. In addition, a limitation of the claims can be made by request on a national basis at the GPTO or on a regional basis at the EPO.

The German legal system basically provides for two approaches to reach an out-of-court solution in an infringement case.

First, a request for authorisation (“Berechtigungsanfrage”) is a relatively moderate way to contact an alleged infringer to obtain an out-of-court solution. Here, the alleged infringer is asked, why he thinks he is authorised to use the IP right. This letter does not threaten the alleged infringer and does not trigger a cease-and-desist declaration. It rather invites the alleged infringer to present non-infringement arguments.

Second, as an alternative or an addition, a warning letter may be used. This measure can be used to obtain a cease-and-desist declaration from the infringer relatively quickly. However, due to strict case law regarding liability in the instance of unlawful warning letters, this measure has to be considered carefully.

It has to be considered that both out-of-court approaches may trigger counter-measures by the alleged infringer.

Additionally, mediation is a further option for avoiding a court decision. The Unified Patent Court has introduced a Patent Mediation and Arbitration Centre (PMAC) for this.

Court proceedings in Germany provide several remedies.

A request for a preliminary injunction is provided by German law, wherein the grant of a preliminary injunction – according to case law – requires:

• first, that the matter is urgent, ie, the patentee has learned about the patent infringement just recently; and
• second, that both the infringement and the validity of the patent in suit are established clearly so that a revision in main proceedings is unlikely.

German case law further specifies these requirements.

The grant of a preliminary injunction may also be obtained ex parte, if specific circumstances allow for it. However, it is quite usual that a request for a preliminary injunction is followed by an oral hearing, or at least the supply of additional information and the possibility of responding in writing.

Main proceedings initiated by an infringement complaint can of course also be initiated to enforce all claims provided by the German Patent Act (injunctions, information/rendering of accounts, damages, revocation, destruction, etc).

There are several remedies to remove the effects of technical IP rights in Germany.

Opposition

An opposition can be filed by any third party against a patent within nine months after the publication of the grant without any special legal interest. The opposition against the German patent must be filed at the GPTO, whereas the opposition for the European patent (with or without unitary effect) must be filed at the EPO.

Any person may file such an opposition, with the exception of the patentee themselves. No legal or commercial interest is necessary. However, the opposition has to comprise a detailed explanation of each reason for opposition that has been raised.

Each party bears its own costs for the proceedings.

Additionally, an intervention in opposition proceedings is possible after the expiration of the opposition period for a third party confronted with an infringement complaint under certain conditions.

Nullity/Revocation Action

After nine months from the publication of the grant, any third party can initiate nullity proceedings against a patent as long as no opposition proceedings are pending.

For filing a nullity action at the German Federal Patent Court, a court fee has to be paid. It is not necessary to prove any legal or commercial interest if the patent is in force.

A nullity/revocation action against a German patent and against the German part of a European patent which has been opted out of, the Unitary Patent system must be filed with the German Federal Patent Court. Against the German part of a European patent which has not been opted out of, the nullity/revocation action may be filed either with the German Federal Patent Court (during a transitional period of at least seven years) or with the central division of the Unified Patent Court (UPC). A revocation action against a European patent with unitary effect can be filed with the central division of the UPC.

If the nullity action was filed with the German Federal Patent Court, the appeal to the first instance decision is handled by the German Federal Court of Justice, which is the highest civil jurisdiction in Germany. For revocation actions filed with the UPC, the second instance is conducted before the Court of Appeal in Luxembourg.

The judgments in German nullity proceedings also comprise a cost decision, ie, which costs the parties have to bear. In general, the losing party has to bear the court fees and statutory attorney fees of the other party.

Cancellation of Utility Model

For a German utility model, cancellation proceedings at the GPTO may clarify whether the registered invention is patentable. The request for cancellation can be filed by any person in writing at the GPTO, wherein there is no requirement for a particular legal interest when the utility model is in force.

The decisions can be appealed at the German Federal Patent Court.

Declaration of Non-infringement

Generally, a declaration of non-infringement can be obtained under certain conditions.

With regard to the German patent and the German part of a European patent which has been opted out of the Unitary Patent System, a negative declaratory action can only be initiated before the patent infringement chambers of the civil courts. An action for declaration of non-infringement of a European patent which has not been opted out of can be filed at a patent infringement chamber of the German civil courts or the central division of the UPC. With regard to the European Patent with unitary effect, the action for declaration can be filed at the central division of the UPC.

However, in Germany such an action is only admissible if there are no infringement proceedings already initiated by the patentee to the third party in Germany.

Compulsory Licences

Actions for compulsory licences are possible in Germany but very rare. An exception has been a case regarding HIV medication in 2021.

The UPC does not provide a provision concerning compulsory licensing. Instead, the national laws of the participating member states should deal with compulsory licences for European patents with unitary effect.

National

Due to the German bifurcated system, there must be differentiation between infringement and nullity proceedings, which are handled by different courts.

Infringement proceedings are handled by specialised chambers of the Regional Courts in the first instance, wherein the patent infringement chambers of the Regional Courts of Düsseldorf, Mannheim, Munich and Hamburg are most commonly used. The second instance is handled by the respective specialised senate of the Higher Regional Courts. The Federal Court of Justice handles the revision, ie, the third instance in patent infringement proceedings.

Nullity proceedings are handled by the German Federal Patent Court in the first instance and the German Federal Court of Justice in the second instance. There is no third instance.

UPC

The first instance courts of the UPC comprise a central division as well as a decentralised structure with local and regional divisions in the member states. Four local divisions of the UPC are located in Germany in the cities with the most experienced patent infringement chambers, namely Düsseldorf, Munich, Mannheim and Hamburg. In addition, a section of the central division is located in Munich.

The Court of Appeal located in Luxembourg will decide on appeals against decisions of the courts of first instance.

There are no specialised bodies or organisations for the resolution of IP disputes.

In Germany, there are no prerequisites to filing a lawsuit. However, when the infringer immediately acknowledges the complaint (partly or in full) without hesitation, and if there has not been an out-of-court approach to the patent infringer, the plaintiff has to bear the corresponding court and reimbursable lawyer fees.

For Standard Essential Patents, so-called SEPs, the parties have to show that they are willing licensors and willing licensees according to the Court of Justice of the European Union (CJEU) and German case law. Thus, specific requirements have to be fulfilled by both parties in order to have a chance to either obtain or prevent an injunction.

National

In infringement proceedings at German courts, parties need to be represented by a lawyer in order to deal with the technical issues and validity better. Infringement proceedings are often handled by a team of lawyers (attorney at law) and patent attorneys.

In nullity proceedings, it is vice versa. Although lawyers are permitted to act in nullity proceedings, it is usual practice in Germany that nullity proceedings are led by a patent attorney.

UPC

Before the UPC, parties can be represented by lawyers authorised to practise before a court of a contracting member state.

In addition, parties may alternatively be represented by European Patent Attorneys who are entitled to act as professional representatives before the European Patent Office and who have appropriate qualifications, such as a European Patent Litigation Certificate (EPLC). Most German patent attorneys have completed the law course “Recht für Patentanwälte” (Law for Patent Attorneys), which is also considered an appropriate qualification.

National

Interim or preliminary injunctions are available in Germany.

The requirements for an interim injunction are: that the matter is urgent (see 2.1 Actions Available Against Infringement); and that the patent is clearly infringed and valid (eg, survived first instance validity proceedings). This means that the question of patent infringement and validity needs to be answered clearly enough so that it is very unlikely that this answer would be revised in the main proceedings.

In very clear cases, eg, infringement and validity has been confirmed already, say in extremely time-critical cases of infringement at trade fairs and the like, it might be possible that ex parte injunctions are issued.

UPC

Interim or preliminary injunctions are also available before the upcoming UPC.

With regards to urgency, the legal framework states that the court must take into account any unreasonable delay in applying for an interim injunction, so that the practice of the UPC on urgency must be awaited. The UPC should also take the validity of a patent into consideration; however, it will depend on how the requirement “reasonable proof that the patent is legally valid” is interpreted in practice.

Ex parte provisional measures will be possible at the UPC, in particular in cases where any delay is likely to cause irreparable damage to the applicant or where there is a demonstrable risk of evidence being destroyed.

National

German courts accept protective letters, which usually further reduce the risk of an ex parte interim injunction. The intention of such protective letter is to achieve at least an oral hearing if not the refusal of the interim injunction. A potential claimant will only be informed about a protective letter once a respective request for a preliminary injunction for the respective patent is filed.

The protective letters do not apply for normal infringement proceedings.

In infringement proceedings, the stay of the proceedings may be requested based on a high likelihood that the patent will be revoked or amended in a way in the opposition or nullity proceedings that there is no more infringement. Furthermore, for SEPs the potential opponent may raise under certain conditions the argument that the license offer of the claimant is not fair, reasonable and non-discriminating. Additionally, the German Patent Act has recently been amended by introducing a codified proportionality defence to injunctions in patent infringement proceedings.

UPC

A protective letter could also be filed at the UPC. Where a protective letter has been filed by the defendant, the court shall consider an oral hearing with both parties.

There are no special limitation provisions for patent infringement in Germany.

Germany has a limitation period of three years from the end of the year in which the patentee became aware of the infringement (or has not become aware of the infringement due to gross negligence). The UPC, instead, provides for a period of limitation of five years after the date on which the applicant became aware, or had reasonable grounds to become aware, of the last fact justifying the action.

An exception to the rules described above are supplementary protection claims. According to the German Unfair Competition Act, these claims regularly become time-barred six months after the claimant has become aware of them or should have become aware of them.

German courts developed a combination of preliminary proceedings with inspection proceedings. These special proceedings can allow the patentee an unannounced on-site visit to the alleged infringers’ facilities to investigate potential infringement. Products may be seized; experts may be allowed to examine the products and production methods to write a report. For those proceedings, a certain probability of infringement is required, but there is no need for definite proof in advance. Measures to secure confidential information obtained against the patentee may be ordered by the German courts.

The UPC also provides an application for preserving evidence and order for inspection, wherein the application has to be lodged at the division where the infringement proceedings are pending or at the division where the applicant plans to start proceedings.

In Germany, the initial pleadings have to provide sufficient information to the court to allow an understanding of the infringement allegation, where the judges need to be in a position to check if all preconditions for the requests are met. This generally requires a clear identification of the parties, a description of the patent and the scope of protection, a description of the attacked embodiment and a reasoning that it falls within the scope of protection of the patent. Offers to provide proof should be included in the initial pleadings.

As two briefs are usually exchanged in infringement proceedings, further arguments and evidence can be supplemented in the second brief. Arguments may be backed up by party expert opinions. Formal proof (witness statements, expert opinions, etc) may be required if the party contests the truth of the facts provided by the other party.

In opposition proceedings before the EPO, all reasons for opposition have to be named and reasoned when the opposition is filed. Furthermore, additional prior art can be introduced only under certain conditions. The situation is similar in nullity actions at the German Federal Patent Court.

In the German legal system, representative or collective actions are not permitted.

The most relevant restriction on asserting IP rights applies to Standard Essential Patents (SEPs). Special requirements, which have been defined by case law by the European Court of Justice and German courts, have to be fulfilled by the owner of an SEP in order to be able to claim for an injunction in court, in particular regarding the offer of a fair, reasonable and non-discriminatory (FRAND) licence.

In Germany, infringement proceedings can be initiated by the owner of the patent and an exclusive licence holder, where both have almost the same rights regarding their right to sue. Other legal persons, in particular non-exclusive licence holders, can only initiate infringement proceedings when they are allowed by contract. For this, the patent proprietor or the exclusive licensee must authorise the non-exclusive licensee to assert the claims for injunction, recall and destruction in its own name (so-called declaration of legal standing, “Prozesstandschaftserklärung”). Non-exclusive licence holders can further bring claims for compensation and damages or information, if the claims have been assigned by the patent proprietor. A patent holder that has authorised a non-exclusive licensee to bring a claim does not have standing to sue in addition to the licensee.

The UPC also distinguishes between exclusive and non-exclusive licence holders. Exclusive licence holders are entitled to bring action before the UPC under the same circumstances as the patent owner, whereas non-exclusive licence holders are allowed to do so only in so far as expressly permitted by the licence agreement.

Under German law, there is a difference between direct and indirect infringement. Direct infringement requires that the alleged infringing product fulfils all features of the asserted patent claim. Indirect infringement may be found, eg, if the alleged infringing products are only means relating to an essential element of the invention or, in the case of supplying goods, that are essential for implementing the patented invention. In both cases the supplier has to know, or it has to be objectively clear, that the supplied goods are both suitable and intended to implement the invention. This is further defined by German case law.

In the case of indirect infringement, the patent proprietor has almost the same claims (injunction, damages, information) as in the case of direct infringement.

However, if the product can also be used in a non-infringing way in the instance of indirect infringement, the patent owner only has a claim for the mildest possible way to avoid infringing use. This may be a warning sign as to possible infringement. Likewise, the claim for information is restricted to infringing uses and damages are due only for infringing uses.

The UPC also differentiates between direct and indirect infringement, wherein the wording of the article corresponds to the respective paragraph in the German Patent Act.

Generally, the offering and supplying as well as all steps of the process must be carried out within the territory of Germany.

The scope of protection of a patent is defined by its claims, which have to be interpreted. Starting with the claim wording, the description and the figures shall be used to interpret the claims. In this regard, how the person skilled in the art would understand the wording of the patent claim must be identified. The common general knowledge at the time of filing or priority can be taken into account. Also, prior art documents that are cited in the patent may also be considered for the claim’s interpretation.

In Germany, the file estoppel is usually not considered for the claim interpretation. However, in specific cases it may become relevant in which way features introduced in the granting procedure must be interpreted in order to delimit them from the prior art.

Prior use right may be used as a defence before German courts if the defendant had already begun to use (produced/brought to the market) the attacked product before the application date of the patent. Co-ownership of the patent can be used as a means of defence. As co-owner, the defendant is entitled to use the patent without the consent of the other owner. At the UPC, the defendant shall enjoy the same rights of prior use or right of personal possession of that invention as in the member state, ie, Germany.

An exhaustion of rights of the patentee can be used as a defence when the product may have been brought onto the German market with the consent of the patentee. The exhaustion of rights may also be used as a defence before the UPC when the product has been placed on the market of the European Union with the consent of the patentee.

A so-called FRAND defence is a possible means of defence with regard to a SEP if the alleged patent infringer can argue that the plaintiff is abusing a dominant position by refusing to conclude a patent licence agreement with the defendant on FRAND terms (see also 2.8 Protection for Potential Opponents and 2.13 Restrictions on Assertion of an Intellectual Property Right).

In Germany, the defendant has to apply for a stay in the infringement proceedings, as, due to the German bifurcation system, it is not possible to claim non-validity of the patent in the infringement proceedings. A stay is usually only granted if the patent is obviously invalid, for example not novel over prior art, that has not yet been considered in the examination procedures.

For compulsory licence, see also 2.2 Third-Party Remedies to Remove the Effects of Intellectual Property.

In Germany, there is differentiation between an expert used by the parties and an expert appointed by the court.

The expert used by the parties can be used to underline the respective argumentation. The parties may use the expert opinion at any time. The expert’s statements are considered as facts or opinions provided by the party and do not constitute as such any proof of the parties’ submissions. If the facts presented by the parties appear to be contradictory for the court, the court may, upon request, appoint an expert.

The court-appointed expert has to answer specific questions prepared by the court in order to resolve the contradictory facts. In view of the exhaustive experience of the infringement courts, such situations can often be clarified without court-appointed experts.

The UPC also distinguishes between experts who are used by the parties and can also act as witnesses upon request, and court experts who can be appointed by the court.

In German infringement proceedings, there is no separate procedure for construing the terms of a patent’s claims.

In German infringement proceedings, there is no system by which the court can seek or receive third-party opinions.

In Germany, no standing to sue is required for requesting to revoke patents and utility models after grant. The only exception is for the case where the patent has already expired. In such a case there needs to be legal interest for the nullity plaintiff, ie, a pending parallel infringement action, for filing a nullity action against the expired patent.

All third-party remedies described in 2.2 Third-Party Remedies to Remove the Effects of Intellectual Property also apply here. Only the remedies which go beyond that will be described in the following.

UPC  Counterclaim for Revocation

Within infringement proceedings pending at the first instance of the UPC, a counterclaim for revocation is a measure of defence, when the validity of the invoked patent seems questionable. The counterclaim for revocation has to be filed together with the statement of defence with the responsible first instance division of the UPC.

Reasons for Revocation of a Patent

There are minor differences between the GPTO, the EPO and the German Federal Patent Court with regards to the reasons. However, the main formal and material reasons for revocation of a patent are as follows:

• lack of patentability (lack of novelty or lack of inventive step);
• lack of enablement (invention not reworkable);
• inadmissible extension of the subject-matter in view of the original application and the parent application (added matter);
• subject-matter not regarded as invention (eg, scientific theories, mathematical methods), or exempted from patentability (eg, plant or animal varieties, method for treatment of the human and animal body), or not susceptible of industrial application; and
• in Germany it can be asserted that the invention has been seized, which can only be claimed by the aggrieved person.

Cancellation of Utility Model

For a German utility model, cancellation proceedings at the GPTO can be initiated (see also 2.2Third-Party Remedies to Remove the Effects of Intellectual Property). The reasons for cancellation are similar to those of a patent, wherein the main reasons are as follows:

• lack of patentability (ie, lack of novelty and lack of inventive step);
• inadmissible extension (added matter);
• lack of protectability (ie, lack a technical nature);
• lack of industrial application; or
• inadmissible double-protection (an identical, older intellectual property right exists).

In infringement litigation based on a German utility model, non-protectability can be asserted as a defence. Also, the validity of the utility model has to be examined by the infringement court, even though a parallel cancellation request has been filed. The effect of the decision on the validity of the utility model in infringement litigation is limited to the parties in those proceedings.

A partial revocation or cancellation of a patent or utility model is possible in cases where only specific claims have been attacked with the nullity or cancellation action.

Furthermore, the patentee may further limit the claims in order to overcome the objections set out in the opposition, nullity or cancellation action (also 4.3 Amendments in Revocation/Cancellation Proceedings). If these limited claims are allowable, this will result in a partial revocation or cancellation of the patent or utility model.

It is possible to amend the scope of protection during the revocation or cancellation proceedings by filing auxiliary requests with amended claims. However, the amendment must not lead to an extension of the scope of protection.

National

Due to the German bifurcation the revocation and infringement are not heard together, which in the past has led to a time gap between the two procedures. In order to reduce this time gap, the Patent Act was amended in 2022 to considerably speed up nullity proceedings. The main change is that the time limits for the submissions of parties have been fixed and that the preliminary qualified notice should be given within six months after service of the action.

With this amendment the chances are higher for the infringement court also to consider the preliminary qualified notice of the German Federal Patent court when assessing the request for a stay of the infringement proceedings in view of possible invalidity of the patent.

However, regarding the stay of proceedings, German infringement courts regularly apply a high standard and will only grant a stay if the patent is obviously invalid, ie, not new or not inventive (see also 2.8 Protection for Potential Opponents).

UPC

Whether or not revocation will be heard together at the UPC depends on the local or regional division to which the infringement action was brought. Indeed, the division, after having heard the parties, has discretion regarding the further course of the proceedings, having the following three options.

• First, the local or regional division may proceed with both the infringement action and with the counterclaim for revocation. In that event, the division has to request the allocation of a technically qualified judge.
• Second, the local or regional division may, with the consent of both parties, refer the entire case to the central division where infringement and revocation will be dealt with together.
• Third, the local or regional division may refer the counterclaim for revocation to the central division and itself either suspend or proceed with the infringement action, depending on the circumstances of the case.

In the first and second options revocation and infringement are heard together. Only in the third option are the infringement and revocation proceedings dealt with by different courts, leading to the (German-style) bifurcation of the proceedings. In this instance, the local or regional division may stay the proceedings or continue the proceedings, wherein the oral hearing before the central division, if possible, should be held before the date of the oral hearing in the infringement proceedings. It remains to be seen how this will be implemented in practice.

National

The procedure is generally determined by the German Civil Procedural Code.

Depending on the venue, there may be slight differences in the way the proceedings are conducted, wherein the typical timeline of civil proceedings is as follows.

• The plaintiff files a suit with the court and the court serves the complaint on the defendant.
• The defendant then has the chance to file a statement of defence within a term set by the court.
• After this the parties usually exchange another round of briefs in which they can further specify their arguments and provide further evidence or party expert opinions.
• The action is then heard orally in the main hearing.
• At the end of the proceedings, a judgment is announced at a set date.

This timeframe differs based on court and workload, and is usually in the range of 10 months to 18 months.

Fact witnesses and experts can be heard in the course of the main hearing, which is usually a single hearing. Only in exceptional cases are additional hearing dates required.

The presiding judge may permit the parties, and shall permit their attorneys upon request, to address questions directly to the witness. “Cross-examination” is thus possible; however, it has no character as in UK patent infringement proceedings.

The remedies of injunction and rendering of account for past infringements are decided in a first round of proceedings. Afterwards, the damages are fixed in separate proceedings.

UPC

With regard to the UPC, the course of the first instance proceedings is defined in the Rules of Procedure. In infringement proceedings, four submissions are exchanged: the complaint, the statement of defence, the reply, and finally the rejoinder.

The four submissions are also foreseen in the parallel proceedings of the counterclaim for revocation and the application for amendment of the claims. After the exchange of the submissions, a three-month interim procedure is conducted in which the hearing is prepared. The oral hearing is to take place shortly after the interim proceedings. Ideally, the duration of the proceedings should be between 9 and 11 months.

In all German or UPC proceedings, only specialised intellectual property judges are involved.

National

In German infringement proceedings, at first instance and in the second instance, the panel consists of three judges with a legal background.

In nullity proceedings at the German Federal Patent Court, the panel consists of five judges, two with a legal background and three with a technical background.

At the Federal Court of Justice, which is responsible for the second instance of nullity proceedings and third instance of infringement proceedings, the panel has five judges with a legal background.

The parties do not have influence over the choice of judges for the respective courts.

UPC

With regard to the UPC, each panel of the first instance has three judges. The local or regional division has three legally qualified judges and an additional technical judge can be requested. The panel of the central division consists of two legally qualified judges and one technical judge. The panel of the appeal court has five judges: three legally qualified judges and two technically qualified judges.

The parties can settle the litigation at any time without additional formal requirements. The parties may also jointly request a stay of proceedings, if additional time for settlement negotiations is required.

Even though settlement and mediation are provided by German procedural law and the courts are bound to ask the parties whether there is a chance for settlement, this non-mandatory option is currently less relevant for IP matters.

The UPC provides a patent mediation and arbitration centre.

If the patent or utility model is revoked in the first instance opposition, nullity or cancellation proceedings, the infringement proceedings are usually stayed until the final judgment in the appeal.

Judgments of other European jurisdictions have to be considered by the German courts according to case law; however, the German courts assess how these judgments will influence their decisions.

German Courts consider anti-suit injunctions, but usually they are not successful. However, some anti-anti-suit injunctions have been successful recently in Germany.

The main remedies for the patent owner in infringement cases are:

• permanent injunction;
• damages;
• provision of information/rendering of accounts on infringing acts; and
• destruction and recall.

For further details see 6.3 Types of Remedies.

In principle, the judge is bound by the claim and has no discretion in this respect. In particular, the court has no discretion with regard to injunctions. If there is an (direct) infringement, he must grant the injunction. However, in the case of actions for damages, the court is entitled to decide at its own discretion whether, and to what extent, damages have been incurred.

The plaintiff must reimburse the statutory attorney costs of the defendant together with other expenses of the proceedings such as expert opinions or translations. The statutory attorney costs are calculated based on the value in dispute.

The following remedies are available for the plaintiff when the court finds infringement of an IP right.

Permanent Injunction

Upon request, the court will grant a permanent injunction. There is no requirement for irreparable harm, no weighing of interests (or other aspects) which need to be fulfilled. The injunctive relief is available for practising and non-practising entities (see also 2.8 Protection for Potential Opponents and 6.1 Remedies for the Patentee).

Damages

The right-holder is entitled to damages if the infringer acted at least negligently, which is mostly the case, since the duties of care for avoiding negligence are strict. Three ways of calculating damages from which the right-holder can choose are established by German case law. These calculations can be based on the plaintiff’s loss of profits, based on a reasonable royalty rate or based on the infringer’s profit. There are no enhanced damages for wilful infringement.

Provision of Information

Provision of information about the past infringements may be requested by the plaintiff. This includes information about the origin and the distribution chain, the numbers manufactured, supplied, obtained and ordered, and the prices paid for, and the profits made with the infringing products.

Destruction and Recall

In addition, the right-holder may request the infringer to destroy all infringing products in its possession and recall the infringing products, unless this would be unreasonable. These claims are available regardless of negligence or intent on behalf of the infringer.

Notably, the claim for destruction extends to manufacturing equipment exclusively, or almost exclusively, used for manufacturing the infringing product.

Publication

The publication of the decision can be requested by the plaintiff at the infringer’s expense when the right-holder has a legitimate interest. The nature and scope of the publication will be specified in the judgment. This remedy is hardly ever granted by German courts.

Legal Costs

The infringer has to pay the necessary legal costs if the plaintiff wins (see also 6.2 Rights of Prevailing Defendants regarding the calculation). The reimbursement also covers the court fees paid for filing the complaint.

If a patent is found valid and infringed at first instance, the decision is preliminarily enforceable and not automatically stayed when an appeal is filed. Such a preliminarily decision may require the provision of security by the enforcing party. But the enforcing party is obliged to pay damages, also for loss of profit, when the first-instance judgment is enforced but later repealed.

With regard to infringement proceedings, there are no additional requirements in view of IP rights proceedings with the exception of the appeal term.

With regard to nullity proceedings, there is the special characteristic that the Federal Court of Justice is the appeal instance.

The appeal courts are not completely limited to the review of errors of law of the first instance. New facts can be presented within certain limits and preconditions: for example, when the reasons are not due to an error of the party.

The EPO appeal proceedings are focused on the revision of the arguments presented in the first instance. Additional arguments may be filed only in exceptional cases.

Before filing a lawsuit, the costs are limited to the costs for lawyers and/or patent attorneys, calculated usually on an hourly rate or legal fee.

For a justified claim, the fees for warning letters or protective briefs will also be reimbursed to the amount of the legal fee.

In Germany, the costs for the online filing of the protective brief are EUR100, while the protective brief at the UPC will cost EUR200.

In Germany, the court fees are calculated on the basis of the value of the dispute, which represents the economic interest that the patent owner pursues with the complaint.

At the UPC, the fee for an infringement action consists of a fixed court fee and a fee based on the value in dispute.

In Germany, as at the UPC, the losing party is required to reimburse the prevailing party and bears the costs of litigation. For partial prevailing or exceptional circumstances, costs may be ordered on an equitable basis or each party may be ordered to bear its own costs.

For a value in dispute of EUR1 million, the reimbursable fees (lawyer fees, court fees, first instance, one party) in Germany are about EUR45,000, whereas at the UPC the reimbursable fees are EUR112,000.

In view of the fact that mediation does not always provide the expected result, and in view of low litigation costs in Germany, infringement proceedings are initiated instead of alternative dispute resolution.

In principle, 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 these rights is possible without any formalities; even an oral assignment is effective. However, it shall be noted that IP rights cannot be acquired in good faith. Therefore, 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.

The assignment of an IP right is governed by the general rules of the German Civil Code and can in principle take place without any form by concurrent declarations of intent. It is sufficient that the transferor offers the assignment and the transferee accepts the offer. As a consequence of the transfer of the IP right, the transferee acquires the same rights and obligations as the transferor. This is preferably done in writing, but this is not mandatory (see also 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights).

IP rights may be licensed by the owner or the exclusive licence holder. In Germany, licensing of an IP right is preferably done in writing, but can also be done orally, with a few exceptions. The licences can be entered in the respective register, but this is not mandatory.

The owner of the IP right (licensor) and the licensee conclude a licence agreement in which the subject-matter of the licence is defined. The agreement is governed by the general rules of the German Civil Code. In Germany, a distinction is made in principle between exclusive and non-exclusive licences.

Regardless of whether it is exclusive or non-exclusive, a licence can be limited in terms of location, time and subject-matter. In return for the transfer of the IP rights, the licensee usually agrees to pay an appropriate licence fee.