Germany: Patent litigation

Injunctions at a glance

Preliminary injunctions – are they available, how can they be obtained?Preliminary injunctions are available if a change in the existing situation could substantially impede the realisation of the patent proprietor’s claim, and infringement and validity are straightforward and beyond reasonable doubt. A corresponding request must be filed within a short period after the patent proprietor has become aware of the infringing act.
Permanent injunctions – are they available, how can they be obtained?Permanent injunctions are available and can be obtained if infringement is confirmed and validity is established beyond reasonable doubt.
SEP injunctions – are they available, how can they be obtained?SEP injunctions are available if the patent proprietor complies with FRAND requirements.
Is payment of a security/deposit necessary to secure an injunction?An injunction is issued without payment of any security/deposit. As a prerequisite for enforcement of the injunction and at the request of the defendant, the payment of a security/deposit may be ordered in first-instance decisions.
What border measures are available to back up injunctions?  Border measures for imports from non-EU countries are possible at German borders if infringement has been confirmed in a German court case.

Q: How can patent owners best enforce their rights in your jurisdiction?

The ‘silver bullet’ for patent owners is an infringement action on the merits, filed with one of the top German courts for patent infringement (ie, Dusseldorf, Mannheim or Munich).

An injunction will be granted when infringement is found. A preliminary injunction can be declared by the courts in as little as 24 hours. A verdict based on an infringement action on the merits takes between six and 18 months.

The basis of the available injunctive relief as a standard measure is that Germany is a patent venue with an incomparably detailed jurisdiction. Tens of thousands of actions have been filed before German courts in recent decades.

Patent litigation has always been affordable for small and medium-sized enterprises (SMEs), which have made fervent use of it. This has resulted in mutual benefits to both SMEs and the patent litigation system. In excess of 10,000 decisions with headnotes rendered by the first-instance courts, the appeal courts and the specialised X Senate of the Federal Court of Justice have been published and contribute to the system.

Recent amendments made to the Patent Law have confirmed that in very exceptional cases, enforcement of the injunction claim may be excluded insofar as the claim would lead to disproportionate hardship for the infringer. It is expected, and has been confirmed by first-instance court decisions, that this clarification will result in no practical perceptible effect.

Q: Are mediation and arbitration realistic alternatives to litigation?

Given the number of cases, alternative dispute resolution is not presently seen as a popular or realistic alternative to patent litigation in Germany.

Q: Who hears patent cases – for example, individual judges, a panel of judges, a mix of judges and technical experts, judges and juries?

There are 13 district courts elected by law that can hear patent infringement cases. Over 90% of the cases filed each year are filed before the ‘Big Three’ courts – Dusseldorf (which has been the clear leader in terms of cases heard for decades), Mannheim and Munich (which has gained traction over the past few years).

Each of the three first-instance patent litigation chambers in Dusseldorf, the two chambers in Mannheim and the three chambers in Munich are staffed by three legally trained judges. The same is true for the two patent litigation appeal senates in Dusseldorf and the appeal senates in Karlsruhe and Munich.

At the Federal Patent Court, validity cases are handled by six senates, each with a bench of two legally trained judges and three technically trained judges. The three technical judges – typically former members of the German Patent and Trademark Office (GPTO) – are assigned out of a pool of approximately 45 judges with complementary technical training. The X Senate of the Federal Court of Justice, competent for the infringement appeal proceedings on questions of law and appeal proceedings on validity, is staffed with five legally trained judges, as well as scientific staff.

There are no juries at these courts.

Q: What level of expertise can litigants expect from courts?

The level of court expertise is one of the key assets of the German jurisdiction. Most of the approximately 100 German judges that have specialised in patent infringement and validity spend 90% or more of their work hours on those issues.

The total number of patent cases before German courts has been at a very high level for about a century, as a result of the proceedings being affordable for SMEs. The number of cases is also reflected by an enormous number of Federal Court of Justice decisions.

This infringement and validity-related case law in connection with the regularly updated Patent Act established at the end of the 19th century provide for unrivalled predictability regarding court decisions.

Q: Are validity and infringement dealt with together in proceedings?

Although Germany is correctly considered as a country with a bifurcated system, this is only part of the story. The courts that hear infringement cases seriously consider arguments concerning validity: if there are convincing and relevant doubts in that regard, they will stay the infringement case. Typically, one-fifth of infringement cases are stayed owing to such doubts.

Validity cases are handled by the Federal Patent Court at first instance and the Federal Court of Justice at second instance. The specialised Patent Senate of the Federal Court of Justice is competent to hear appeals on questions of law regarding infringement decisions handed down by the appeal courts, as well as appeals on validity decisions handed down by the Federal Patent Court. The Federal Court of Justice is, therefore, the connecting element in the bifurcated system.

Q: Who may represent parties engaged in a dispute?

In patent infringement cases, the parties must be represented by attorneys at law who are members of the German Chamber of Lawyers. For validity proceedings, the parties can be represented by either a patent attorney admitted at the German Chamber of Patent Lawyers or an attorney at law.

In practice, in view of the legal and technical tasks to be dealt with, parties are in the vast majority of cases represented by an attorney at law and a patent attorney in both patent infringement and validity proceedings.

In infringement cases before the Federal Court of Justice, the parties must be represented by attorneys at law admitted before the Federal Court of Justice. This is not the case in validity cases, although it is recommended.

Q: To what extent is forum selection possible in your jurisdiction?

In practice, forum selection within the 13 district courts elected is possible. Only in rare cases is the plaintiff bound to a subset of those courts owing to a regionally restricted infringement. The venue should be diligently chosen based on the case’s complexity and any applicable time constraints.

Q: To what extent is pretrial discovery permitted?

If there is a high likelihood of patent infringement but material evidence is unavailable, the patent owner may ask to inspect the alleged infringer’s premises and infringing devices (eg, as exhibited at a trade fair). This is possible on an urgent basis.

Full pretrial discovery, to the extent known in the United Kingdom and the United States, does not exist in Germany.

Q: To what extent is evidence written and oral at proceedings?

In an overwhelming number of cases, evidence is written in German patent infringement and validity proceedings. Oral expert testimony or witness cross-examination is extremely rare. The parties are invited to present written expert opinions.

Q: What role, if any, can expert witnesses play?

Owing to the technical understanding of the judges, the specialised attorneys at law and the technically trained patent attorneys, the role of the expert witness is considerably restricted in practice compared to other jurisdictions.

German patent attorneys have a more active role in infringement and validity proceedings than elsewhere. This is because patent attorneys in Germany must have obtained at least a Master of Science.

In any event, an expert witness can be helpful in infringement and validity proceedings: when it comes to a dispute about the understanding of a person skilled in the art, an expert witness might be valuable.

Q: Is the doctrine of equivalents applied by courts in your jurisdiction and, if so, what form does it take?

Under the doctrine of equivalents, the scope of the patent also extends to solutions equivalent to those that have been claimed in view of function and quality. In addition, the solution must be available to a person skilled in the art without involving an inventive step. While this seems to be broad compared to other jurisdictions, infringement is, statistically, rarely found based on the doctrine of equivalents.

Q: Are there problems in enforcing certain types of patent relating to, for example, biotechnology, business methods or software?

As the German infringement courts accept patents granted by the EPO as they are, a patent’s validity will become an issue only in cases of obvious invalidity based on new facts. The technological field concerned, as such, is no reason to reconsider the validity of a granted patent.

On the contrary, Germany is, thus far, the only jurisdiction in the world that provides protection for data generated based on a patent-protected method. Such protection is available in some jurisdictions for chemical products produced involving a patent-protected method.

Injunctions based on SEPs are granted on a regular basis. In 2015, the European Court of Justice (ECJ) issued a ruling (Huawei v ZTE (C-170/13)) based on a case pending in Germany on the enforceability of an injunction claim regarding the infringement of SEPs that grant market dominance. The main conditions are the patent owner’s obligation to offer a reasonable licence and the licensee’s obligation to make a reasonable counter-offer. The patent owner’s reasonable licence offer may require worldwide coverage for the licensee and all the licensee’s affiliates.

Q: To what extent are courts obliged to consider previous cases that have covered issues similar to those pertaining to a dispute?

Owing to the high number of cases at all levels, unrivalled, rich precedents in the field of patent law are available in Germany. The Federal Court of Justice alone hands down more than 50 patent decisions every year. This means that a strong background can be built for each individual case, and accurate predictions can be made regarding the outcomes of cases.

The jurisdiction of the higher courts is binding on the lower courts; however, in general, previous decisions have no binding effect in Germany for the same court.

Q: To what extent are courts willing to consider the way in which the same or similar cases have been dealt with in other jurisdictions? Are decisions from some jurisdictions more persuasive than those from others?

Yes, German courts are willing to consider the reasoning of courts in other jurisdictions. Convincing arguments in the reasoning will be not discarded in cases presented by the parties; however, there is no general tendency for any particular jurisdiction to produce more persuasive decisions than others.

By law, German courts may forward legal questions on the interpretation of EU law to the ECJ. The resulting ECJ decisions are binding on all national courts of the EU member states. The landmark SEP decision Huawei v ZTE (C-170/13) was issued by the ECJ owing to a request from the Regional Court of Dusseldorf.

Q: What realistic options are available to defendants seeking to delay a case? How might a plaintiff counter these?

There is little opportunity to seek strategic delays in German patent infringement cases as there are only limited reasons to delay infringement proceedings. Delaying proceedings owing to an obvious lack of validity in view of new facts is the main option with practical relevance.

Depending on the venue, the complexity of the case may add considerable time to the schedule of the infringement proceedings.

Q: Under what circumstances, if any, will a court consider granting a preliminary injunction? How often does this happen?

First, the infringement must inflict irreparable damage on the patent owner to justify the granting of a preliminary injunction. Both infringement and validity must be apparent. Validity can be assumed to be apparent if, for example, the patent has already been the subject of post-grant validity proceedings. Preliminary injunctions are immediately enforceable.

In practice, the patent owner must file a request for an injunction within four weeks of becoming aware of the patent infringement – the sooner, the better. The starting point of a typical preliminary injunction case is patent infringement by a non-German presenter on a German fair: dozens of such injunctions are granted each year.

Q: What is the realistic timescale to get a decision at first instance from the initiation of proceedings?

In the case of infringement actions on the merits, the ‘Big Three’ German courts – Dusseldorf, Mannheim and Munich – usually render decisions within six to 18 months, depending on the venue and the court’s workload. A decision based on a request for a preliminary injunction can be issued within a few days and definitely within six weeks. This process can be expedited depending on the venue.

Q: How much should a litigant budget for in order to take a case through to a decision at first instance?

Approximately 3% of the value of the litigation (ie, the value that the patent owner realistically ascribes to its claims) is generally a good guideline, with the minimum amount being around €50,000. These numbers are based on the statutory minimum fees under the Attorneys’ Remuneration Law. Depending on the circumstances, attorneys may ask for additional fees.

The 3% also includes the statutory court fees of about 1.25 %. The courts can critically appraise the value of the litigation proposed by the plaintiff.

Q: To what extent are the winning party’s costs recoverable from the losing party?

The statutory minimum attorney’s fees – for both attorneys at law and patent attorneys – and court fees are fully reimbursable. The quotation of reimbursable fees accordingly depends on the ability of the attorneys to handle the case based on statutory fees.

Q: What remedies are available to a successful plaintiff?

The remedies granted in Germany to a successful plaintiff are an injunction claim and a claim to render accounts. The court will also decide whether the plaintiff is entitled to claim damages.

Defendant’s damages that arise owing to potentially unjust enforcement are reimbursed by the enforcing plaintiff. Accordingly, injunction claims granted by the first-instance court are enforceable based on the provision of a security bond to secure potential damages claims. The value of the security bond corresponds to the potentially considerable damages. Appeal decisions granting the injunction claim are enforceable without this constraint.

Q: How are damages awards calculated?

The courts apply three methods to calculate damages:

  • by analogy, an amount equal to royalty fees found in a licence between reasonable parties;
  • loss of profits by the patent owner; and
  • profits made by the patent infringer.

In practice, a calculation based on royalty fees is the most common way of calculating damages awards.

It is not possible to obtain punitive damages, at least to the extent of triple damages. The courts have confirmed that there are elements in the methods for calculating damages that have moderate punitive effects.

Q: Under what circumstances will courts grant permanent injunctions?

The court will grant a permanent injunction if it confirms that:

  • an infringement has taken place
  • no convincing or relevant doubts – based on new facts – exist regarding the patent’s validity; and
  • the patent is in force.

This is also the case if the plaintiff is a non-practising entity.

Q: Does the losing party at first instance have an automatic right of appeal?

The losing party in a first-instance case will always be granted the right to appeal. Even on appeal, the successful party may enforce the first-instance decision if it issues a security bond to cover potential damages owing to enforcement of a decision that may be overcome on appeal.

Q: How long does it typically take for the appellate decision to be handed down?

Infringement appeals handled by the appeal courts typically take between six months and two years.

Q: Is it possible to take cases beyond the second instance?

Yes. Decisions of the appeal court on infringement can be further appealed beyond the second instance on questions of law and taken to the Federal Court of Justice. This appeal must be admitted by the appeal court. Admission can be substituted by a decision of the Federal Court of Justice itself.

Decisions on validity by the Federal Patent Court can also be appealed to the Federal Court of Justice. A further appeal beyond the second instance is not possible in validity cases.

At the Federal Court of Justice, the X Senate is competent for appeals on questions of law in the infringement proceedings and appeals against validity decisions.

Q: To what extent do the courts in your jurisdiction have a reputation for being pro-patentee?

Statistically, patentees win about 40% of all patent infringement actions filed in Germany. Another 40% of the complaints filed are dismissed. The remaining 20% of cases filed are stayed owing to apparent validity issues. These are long-term trends. Compared to other jurisdictions, this might be seen as considerably pro-patentee.

Q: Are there other forums outside the court system in which it is possible to assert patents in your jurisdiction? If so, under what circumstances might it be appropriate to use them?

No, there are no other forums outside the court system in which it is possible to assert patents in Germany.

Q: In what circumstances do courts in your jurisdiction accommodate remote hearings, for example during pandemic-related lockdowns?

In pandemic situations, all parties to the proceedings (except the bench) may participate  from another location (eg, via videoconferencing). This provision may be used by one or both parties and all or some members of a party.

Q: Are there any other issues relating to the enforcement system in your country that you would like to raise?

The German patent enforcement system is considered to be one of the cornerstones of the German economy, being valuable not only for large industries but also for German SMEs. The German patent litigation courts clearly understand that a patentee is entitled to protection for patents granted by either the EPO or the GPTO. Accordingly, the courts are not only reasonably pro-patentee, but also apply strict punitive measures when necessary to enforce injunction claims once granted.

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