International Patent Litigation in Germany

First, the patent proprietor can sue for patent infringement. To prove its standing to sue, its ownership must be registered in the patent register of the German Patent and Trademark Office (DPMA) and it must submit respective excerpts from the register to the court. The proof is possible until the date of the last oral hearing at the latest.

If two or more parties are proprietors of the same patent, each of these parties may initiate infringement proceedings without the other co-owner having to agree. Each co-owner may only sue in its own name, the other co-owners do not automatically become parties to the proceedings.

Furthermore, the exclusive licensee is entitled to sue for patent infringement. A non-exclusive licensee may only sue for patent infringement if it is authorised by a written declaration from the licensor to enforce the patent (gewillkürte Prozesstandschaft).

Yes, it is possible to include any number of parties as defendants in the same proceedings. Several parties may jointly sue or be sued as joint litigants if they have a common interest in the right at issue or if they are entitled or obliged to sue for the same factual and legal reason

Yes, it is possible to involve suppliers or other third parties in the proceedings. If the outcome of the litigation could be relevant for a claim of or against a third party (e.g., a supplier who is obliged to provide the disputed products free of third-party rights), the defendant may serve this party with a third-party notice (Streitverkündung). The third-party notice has the effect that the legal and factual findings in the judgment are established with a binding effect between the defendant and the third party and the defendant may hold these findings against the third party in potential recourse proceedings.

The third-party has the right to intervene in the proceedings and assert its own means of attack and defence and conduct all procedural actions unless these actions contradict those of the main party.

In general, patent infringement actions may be brought anytime during or after the effective period of the patent. An injunction may only be sought while the patent is in force. With respect to claims for accounting, damages, recall and destruction, the general time-limitation periods apply, i.e.:

• up to the end of the third calendar year after the plaintiff became aware of the facts of infringement and the identity of the infringer; or
• ten years from the infringement, regardless of any knowledge.

The time-limitation periods are suspended once formal proceedings are initiated.

If more than one patent is infringed by the same facts, the patent proprietor must assert all infringed patents in a single action. In practice however, this requirement hardly ever applies because German courts construe the term “same facts” very narrowly and accept even the slightest factual deviations to establish a new case.

In Germany, infringement and invalidity proceedings are separate from each other (“bifurcation”).

The civil chambers of the Regional Courts have exclusive jurisdiction for all infringement proceedings, regardless of the value in dispute. Dedicated patent litigation chambers exist at twelve Regional Courts. The best known are Düsseldorf, Mannheim, Munich, and Hamburg.

The action must be brought either at the court which  is locally competent for the place of the defendant’s registered office / residence or for the place of the infringement. The latter is wherever a recipient of an offer has its registered office or place of residence. In the case of offers on the Internet, the plaintiff generally has a choice of all patent courts.

Invalidity proceedings are strictly separated. The Federal Patent Court (Munich) is the first instance court for all nullity actions against German or European Patents which are validated in Germany.

Yes, there are local divisions in Hamburg, Mannheim, Düsseldorf and Munich. One seat of the central division is located in Munich.

Yes, it is possible to bring an action for a declaratory judgement of non-infringement if the plaintiff demonstrates and proves that he has a legal interest in such a declaratory judgment. This is usually the case when a third-party claims patent infringement or threatens to initiate patent infringement proceedings.

In most patent cases, such a legitimate interest is triggered by the patentee / beneficiary’s prior conduct, such as a prior cease-and-desist letter alleging infringement. However, if the patentee has filed an infringement action, the courts will not allow an action for a binding declaration of non-infringement. In turn, an action for a binding declaration of non-infringement does not preclude the patentee / beneficiary from filing a counterclaim for patent infringement.

In Düsseldorf and Mannheim, an oral hearing takes place usually 10 to18 months from filing the patent infringement action. In many cases, this will be the only oral hearing before the court issues its judgment. In Munich, an oral hearing is usually scheduled much earlier and the parties are allowed to file further briefs after the hearing. Each timing however depends on the current capacity of the respective court and the complexity of the case / technology.

In many patent cases, the Regional Courts issue a first instance judgment within four to eight weeks after  the oral hearing. In these cases, the first instance proceedings take between 12 and 18 months. Should the court decide to take evidence and get an expert opinion, the proceedings can easily be delayed by six  to 12 months. Should the Regional Courts have severe doubts regarding the validity of the patent, they may stay the infringement case until the parallel opposition / nullity proceedings have been finally concluded which further delays the proceedings (see below for details).  A first instance decision in a nullity proceeding before the Federal Patent Court can usually be expected within 24 to 36 months from filing the nullity action. However, since 2022, the German Patent Act requires the Federal Patent Court to provide a preliminary opinion on the case within six months from serving the nullity action  on the patent proprietor.

The patent infringement chambers at the Regional Courts comprise only legally qualified judges. However, judges at the patent chambers, particularly in Düsseldorf, Mannheim and Munich, are known for their technical expertise resulting from hundreds of patent cases they handle each year. In addition, some of the judges occasionally have a scientific academic background.

As a rule, proceedings may be stayed by the court if  an opposition is filed against a patent or an action for revocation is brought. A stay of proceedings is only granted if the opposition or nullity action is highly  likely to be successful.

The infringement court will thoroughly examine the opposition (e.g., at the EPO) or nullity action to determine whether:

• new prior art is asserted;
• it is closer to the invention; and / or
• it is prejudicial to novelty or clearly prejudicial  to the invention.

A defendant should initiate opposition / invalidity proceedings at a very early stage so as not to jeopardise a possible stay of proceedings.

In most cases, a nullity action against a patent is filed in response to a patent infringement action. To file a nullity action during the effective period of a patent, a plaintiff however does not need standing or any reason so a nullity action may also be filed as a pre-emptive measure before patent infringement proceedings are initiated or simply to clear the way for using a particular technology.

After the expiry of a patent, the plaintiff must demonstrate and prove a legal interest in a judgment on the patent’s validity. Such an interest is usually assumed if patent infringement proceedings are pending.

FRAND license

In Germany, FRAND licensing is mainly relevant in the form of the “FRAND defence” i.e., the defence of the implementer against an injunction based on the argument that the patent proprietor is obliged to allow the use of its patent under FRAND conditions (see below). It is not common for implementers in Germany to sue the patent proprietor for a FRAND license, although this may not be excluded legally.

Compulsory license

Compulsory license proceedings are handled by the Federal Patent Court similarly to nullity proceedings. A nullity senate of the Federal Patent Court decides as the court of first instance. The Federal Court of Justice is the court of appeal. The defendant is the registered patent proprietor. The action for a compulsory license is not precluded by a final and binding decision for patent infringement.

German courts accept the FRAND defence as a temporary defence against the injunctive relief claim of a patent proprietor who has not fulfilled its obligations to license its SEP under FRAND conditions. As a basis for the patent proprietor’s obligations, German courts apply the procedure described by the ECJ in its Huawei / ZTE decision.

A successful FRAND defence results in the patent proprietor being unable to enforce its injunction claim, i.e., the court will in its judgment not impose an injunction on the implementer. If the patent proprietor has previously offered a licence to the implementer, the court will decide whether this offer meets the FRAND criteria. Unlike in other countries, German courts do not determine a licence rate which, in the opinion of the court, corresponds to FRAND criteria. According to the principle “da mihi factum, dabo tibi ius”, German courts only determine whether an offer submitted by the parties meets FRAND criteria.

The parties may either submit a private expert opinion (which is not considered formal expert evidence) or designate the issues on which an expert opinion is to be provided. Formal expert evidence must be ordered by the court. If the court considers it necessary to take evidence, it will appoint the expert. The expert’s opinion is first submitted in writing. As a rule, the parties receive the expert opinion before it is introduced in the oral hearing. The parties may comment on the expert opinion, request to hear the expert in court and ask questions in the oral hearing.

German law in general does not provide for discovery  or similar means of collecting evidence before the proceedings.

As an exception, German patent law provides for a so called “inspection” claim. This means that a beneficiary of a patent may request the production of documents or inspection of equipment / means in the possession of the alleged infringer if a patent infringement is sufficiently probable. An inspection shall be ordered by the court only if there are no other means of establishing infringement. The court shall decide on the scope of disclosure and may order measures to protect confidential information.

Yes, the right of inspection may be exercised both in the main proceedings and in the preliminary injunction proceedings.

Infringement proceedings: Appeals against Regional Court decisions may be lodged with the Higher Regional Court. A further appeal to the Federal Court of Justice is only possible under certain conditions, namely if procedural rights have been violated or a legal question has not yet been decided at all or has been decided differently by two instances.

Invalidity proceedings: The judgments of the Federal Patent Court are subject to appeal to the Federal Court of Justice. Since the appeal procedure of the ordinary courts for patent infringement proceedings also ends in the last instance before the Federal Court of Justice, the safeguarding of a uniform jurisdiction is ensured.

Infringement proceedings: An appeal may be filed if the lower court’s decision is not properly supported by the law or if a different decision could have been made based on the facts of the case. Appellate courts will not rehear the case. Further evidence is admissible on appeal only under certain circumstances.

A further appeal to the Federal Court of Justice requires either admission by the court of appeal or by the Federal Court of Justice. It may be based on a fundamental violation of procedural rights or on legal questions of general importance.

Invalidity proceedings: The appeal may be based on a violation of procedural rights or on an incorrect assessment of the facts.

Infringement proceedings: Appeal proceedings before the Higher Regional Courts regularly take between 18 and 24 months. If it becomes necessary to obtain an expert opinion, the proceedings can easily be extended by up to 12 months or more. The course of the proceedings is essentially the same as that of the first-instance proceedings. The timescale of second-level appeals to the Federal Court of Justice are very much subject to the particularities of the case and the current workload of the court. Decisions on a non- admission complaint can be expected within six to eight months whereas the actual second level appeal proceeding may take approximately 12 further months.

Invalidity proceedings: The duration of appeal proceedings before the Federal Court of Justice is currently around 24 months.

In general, an appeal has a suspensive effect and thus prevents the decision from being final and binding. However, decisions of the infringement courts may usually be enforced preliminarily by way of depositing  a security or lodging a bond.

In patent infringement cases, legal costs comprise court fees, the fees for lawyers and supporting patent attorneys.

German court fees are calculated based on a fee table related to the “value in dispute”, i.e., the value of the claims which the plaintiff asserted. Court fees for the first instance usually range between thirty thousand euros (30,000 EUR) and one hundred and sixty thousand euros (160,000 EUR).

The fees for lawyers and patent attorneys depend  very much on the complexity of the case and the technology. Amounts above one hundred thousand euros (100,000 EUR) per asserted patent are usual.

It should also be considered that defending a patent infringement case usually requires initiating a nullity action against the patent which may double the costs.

The court fees of the appeal proceedings are around 30% higher than those of the first instance.

In Germany, the losing party must bear both court costs and opposing counsel’s fees. The recoverable lawyers’ fees are limited to the amount of statutory fees which is calculated based on a fee table in relation to the value in dispute. Since almost all law firms charge their fees on an hourly basis, the recoverable fee amount is usually lower than the amount which is actually incurred.

The main forms of ADR are:

• mediation;
• negotiation; and
• arbitration.

Negotiation is the most used process to reach a settlement in patent disputes.

The court is obliged to encourage the parties to settle the dispute amicably. If appropriate, the court may refer the parties to another judge for a conciliation hearing or propose to the parties to conduct alternative dispute resolution proceedings out of court. ADR is however not a mandatory requirement before or at any stage during the proceedings.

In patent infringement proceedings, the following remedies are available:

•  injunctive relief (including a preliminary injunction);
• destruction of the infringing goods in the infringer’s possession;
• damages;
• a claim for information / accounting; and
• a declaration that a patent has been infringed.

German courts will regularly grant injunctive relief during the effective period of the patent when they find patent infringement. This “automatic injunction” is a strong leverage for the patent owner to enforce its rights in Germany.

In 2021, the German legislator introduced a proportionality test in German patent law which shall allow the courts to refrain from granting an injunction in certain special cases in which such injunction would be disproportionate. The first decisions and publications of German patent judges however point to the exceptional character of this provision and indicate that the legislative amendment will not fundamentally change the German courts’ approach to automatic injunctions.

A successful plaintiff may calculate damages based on one of three methods: Damages may be calculated:

• based on the royalty analogy;
• based on lost profits; or
• based on a claim for profits earned by the infringer.

Frequently, the reasonable royalty is used as the basis. The calculation is based on the reasonable royalty that the infringer would have had to pay if it had been permitted to use the invention (e.g., under a license). If the beneficiary has entered similar licenses with other parties, this may be used in calculating the royalty.

Damages are rarely calculated based on lost profits, as it may be difficult for the beneficiary to prove the causal link and it may be unwilling to disclose its profits.

The profit to be reimbursed is determined based on the sales generated by the patent infringement minus the costs. As a result of the Federal Court of Justice’s case law, the third method is becoming increasingly popular. It has ruled that general expenses are deductible only if they are directly attributable to the patent infringing subject matter. General overhead costs are not deductible.

In the case of patent infringement, the patentee / beneficiary is entitled, among others, to immediate information on the origin, the distribution channel and the delivery quantities of the products used as well as on the names and addresses of the commercial customers (right to information).

To enable the patentee / beneficiary to quantify its damage claims, the infringer is also obliged to report its sales and profit. The infringer must provide all details which the plaintiff requires to quantify its damages (claim for reporting accounts).

Even though an infringer may be found liable for damages within the patent infringement proceedings, the patentee / beneficiary must initiate separate damage proceedings to assert its quantified damage claims.

There are no additional remedies in civil proceedings  if the infringement was intentional. However, if the infringement was deliberate, the patent proprietor may ask the public prosecutor to initiate criminal proceedings against the natural persons who are responsible for the patent infringement (e.g., managing directors of the defendant company).

Yes, in case of patent infringement, the patentee / beneficiary has a right to request recall and removal  of infringing products from the sales channels. The infringer must insofar as it can, use its best efforts to retrieve the infringing products from the market. The recall claims are subject to the statutory limitation periods (see above) but may also be excluded when it can be expected that the products which the infringer distributed are no longer in the sales channels.

Yes, preliminary injunctions are available. A party may seek a preliminary injunction against pending or impending patent infringement.

Beside pending or impending patent infringement, German courts will issue a preliminary injunction only  if the case is urgent and there is no question about  the validity of the patent.

With respect to the urgency requirement, German courts apply slightly diverging standards. Whereas southern German courts (e.g., Mannheim or Munich), require the applicant to file an injunction request within one month from obtaining knowledge of the infringement, other courts are somewhat more generous and affirm the urgency even after up to three months.

Yes. However, many of the specialised patent courts require the applicant to issue a prior warning letter and submit the response of the alleged infringer to the court. This shall allow the alleged infringer to put forward defence arguments. If the alleged infringer has not had an opportunity to respond to the infringement allegations and / or the infringement is not sufficiently clear for the court, the court may summon the parties to an oral hearing before issuing a preliminary injunction.

Depending on the court, preliminary injunctions can be obtained quickly, even within one day if the court does not order a hearing.

If a preliminary injunction has been issued without an oral hearing, the defendant may file an “opposition”  to it. Upon the opposition, the court will summon the parties to an oral hearing and decide again whether  the preliminary injunction is revoked or confirmed. If  the preliminary injunction was issued or confirmed  at the hearing before the Regional Court, it may be appealed to the court of appeal. The opposition and  the appeal as such do not suspend the effect of the preliminary injunction.

The enforcement of the preliminary injunction can be made dependent on the plaintiff providing security beforehand. Regarding the amount of the security, the courts are guided by the value in dispute.

Yes, unless the infringer accepts the decision in the preliminary proceedings as final and binding. In Germany, it is customary to send a finalisation letter to the defendant after successful preliminary injunction proceedings, asking it whether it is willing to accept the preliminary injunction as a final and binding decision to avoid proceedings on the merits.

German courts currently do not issue cross-border injunctions.

According to the decision practice of German courts, anti-suit injunctions constitute an encroachment on judicial sovereignty and sovereign rights. ASIs are therefore not permissible under German law.

However, in October 2019, the Munich I Regional Court issued the first so-called “Anti-Anti-Suit-Injunction” in Germany, which was confirmed by the Higher Regional Court.