Comparison of the Litigation Systems in Germany, France and the UK by Dr. Ulla Allgayer Patent Attorney in Munich Germany

European Patent Convention European patents KRAMER BARSKE SCHMIDTCHEN Europe Europe Germany France United Kingdom European Union European Patent Convention European patents National German part of a European patent National French part of a European patent National UK part of a European patent National German patent National French patent National UK patent German courts (Landgericht, etc.) French courts (Tribunal de Grande Instance, etc.) English courts (High Court, etc.)

KRAMER BARSKE SCHMIDTCHEN Europe – EPO Members

Germany France England (UK) System? ? high/low damages? Europe? KRAMER BARSKE SCHMIDTCHEN Germany France England (UK) System? ? high/low damages? Europe? Long duration? barristers and solicitors? Low costs? High costs?

Preparatory measures (not obligatory) KRAMER BARSKE SCHMIDTCHEN Preparatory measures (not obligatory) Use inquiry (Berechtigungsanfrage) Formal cease-and-desist-letter (Schutzrechtsverwarnung)

Infringement of a Patent KRAMER BARSKE SCHMIDTCHEN Validity of a Patent Infringement of a Patent Federal Supreme Court Appeal in Nullity Federal Supreme Court Revision Appeal (if admitted) Federal Patent Court Nullity If patent is maintained with or without amendment Appeal Court Appeal in infringement EPO Board of Appeal Appeal in opposition Federal Supreme Court Appeal on a point of law (if admitted) no opposition filed Federal Patent Court Appeal in opposition District Court Infringement EPO Opposition Division Opposition GPTO Opposition Federal Patent Court Opposition Opposition filed before 2002 or after 2007 Opposition filed from 2002 to 2007 EP and DE patent EP and DE patent EP patent DE patent

Two separated systems for validity and infringement: KRAMER BARSKE SCHMIDTCHEN Two separated systems for validity and infringement: Infringement Court (one of 12 German district courts “Landgerichte”) will not consider validity of a patent Non-validity of a patent is not a defense argument in infringement proceedings Revocation of a patent can not be requested in infringement proceedings Infringement court is bound to the wording of the patent as granted

Timetable for Infringement Suit KRAMER BARSKE SCHMIDTCHEN Timetable for Infringement Suit * District Court Filing infringement action First formal hearing Answering brief Reply brief Detailed oral hearing Announcement of decision Service of decision 1 year 2 years 3 years 4 years 5 years Appeal Court -Filing appeal -Filing grounds of appeal -Reply brief -Explicit oral hearing -Announcement of decision -Service of decision Federal Supreme Court -Filing revision appeal -Filing grounds of revision appeal -Reply brief -Decision of court on admission of revision appeal -Explicit oral hearing -Announcement of decision -Service of decision Based on information from District Court Düsseldorf and Appeal Court Düsseldorf The course and timing of the proceedings may be different for other courts *

Timetable Nullity Suit KRAMER BARSKE SCHMIDTCHEN Timetable Nullity Suit Federal Patent Court Filing nullity action Answering brief Reply brief Detailed oral hearing Announcement of decision Service of decision 1 year 2 years 3 years 4 years 5 years Federal Supreme Court Filing appeal with the Federal Patent Court File send to the Federal Supreme Court Court appoints technical expert Expert renders opinion Parties file briefs commenting the expert opinion Detailed oral hearing Announcement of decision Service of decision Depending on Expert, parties and court

Timetable for parallel Infringement and Nullity Suit KRAMER BARSKE SCHMIDTCHEN Timetable for parallel Infringement and Nullity Suit District Court Filing infringement action First formal hearing Answering brief Reply brief Detailed oral hearing Announcement of decision Service of decision NULLITY INFRINGE-MENT Federal Patent Court Filing nullity action Answering brief Reply brief Detailed oral hearing Announcement of decision Service of decision 1 year 2 years 3 years 4 years 5 years Appeal Court -Filing appeal -Filing grounds of appeal -Reply brief -Explicit oral hearing -Announcement of decision -Service of decision Federal Supreme Court Filing appeal with the Federal Patent Court File send to the Federal Supreme Court Court appoints technical expert Expert renders opinion Parties file briefs commenting the expert opinion Detailed oral hearing Announcement of decision Service of decision Federal Supreme Court -Filing revision appeal -Filing grounds of revision appeal -Reply brief -Decision of court on admission of revision appeal -Explicit oral hearing -Announcement of decision -Service of decision Depending on Expert, parties and court *

KRAMER BARSKE SCHMIDTCHEN Infringement suit Nullity suit District Court Filing infringement action First formal hearing Answering brief Reply brief Detailed oral hearing Announcement of decision Service of decision Federal Patent Court Infringement court makes decision Filing nullity action Answering brief Reply brief Detailed oral hearing Announcement of decision Service of decision 1 year 2 years 3 years 4 years 5 years

KRAMER BARSKE SCHMIDTCHEN Infringement suit Nullity suit District Court Federal Patent Court Filing infringement action First formal hearing Answering brief Reply brief Detailed oral hearing Announcement of decision Service of decision Filing nullity action Answering brief Reply brief Detailed oral hearing Announcement of decision Service of decision Infringement court may wait for Nullity decision 1 year 2 years 3 years 4 years 5 years

Plaintiff has to procure all necessary evidence to prove infringement KRAMER BARSKE SCHMIDTCHEN Plaintiff has to procure all necessary evidence to prove infringement Despite recent decisions making it easier to obtain help from the court to obtain evidence in exceptionel situations, in normal infringement cases there is basically no help from the court for the plaintiff like discovery, disclosure, saisie etc. Evidence is usually in the form of documents, possibly written witness statements Party experts/ Court experts in 2nd instance proceedings

Representation in patent infringement litigation KRAMER BARSKE SCHMIDTCHEN Representation in patent infringement litigation First instance: Any Lawyer. Usually supported by patent attorney Second instance: Lawyer admitted to practice at the appellate court. Usually supported by patent attorney Third instance: Lawyer admitted to practice at the Federal Supreme court. Usually supported by patent attorney Representation in patent nullity litigation First instance: Patent Attorney only or Lawyer, usually supported by patent attorney Second instance: Patent Attorney only or Lawyer, usually supported by patent attorney

Damages No punitive damages Calculation methods: KRAMER BARSKE SCHMIDTCHEN Damages No punitive damages Calculation methods: Lost profit, infringer´s profit, license analogy Infringer´s profit becomes most attractive way for calculation of damages since a recent decision of the Federal Supreme Court forbids to deduct indirect costs from infringer´s sales.

Costs of the proceedings KRAMER BARSKE SCHMIDTCHEN Costs of the proceedings Calculated according to the value in dispute Relatively low but raising because of increasing damages refundable Infringement suit District Court Value in dispute Cost risk approx** 500,000 € 45,000€ 1,000,000€ 67,000€ 10,000,000€ 472,000€ Appeal Court Value in dispute Cost risk approx** 500,000 € 49,000€ 1,000,000€ 74,000€ 10,000,000€ 520,000€ Federal Supreme Court Value in dispute Cost risk approx** 500,000 € 64,000€ 1,000,000€ 97,000€ 10,000,000€ 680,000€

KRAMER BARSKE SCHMIDTCHEN Germany Two separated systems for litigation of infringement and validity No obligatory preparatory measures (use inquiry/warning letter) Difficult to obtain evidence Fast proceedings at least in the first instances Experienced judges Full appeal Relatively low costs but two parallel proceedings High percentage of costs refundable. Recently relatively high damages

Infringement and/or Validity Patent/Patent application KRAMER BARSKE SCHMIDTCHEN FRANCE Infringement and/or Validity of a Patent/Patent application Federal Supreme Court Revision Appeal (if admitted) If patent is maintained with or without amendment Appeal Court Appeal in Infringement/Nullity EPO Board of Appeal Appeal in opposition District Court Infringement /Nullity No separate opposition against FR patent EPO Opposition Division Opposition EP and FR patent EP patent FR patent

Preparatory measures (not obligatory) KRAMER BARSKE SCHMIDTCHEN Preparatory measures (not obligatory) Use inquiry Formal cease-and-desist-letter SAISIE Saisie contre facon is a very powerful tool to procure evidence necessary to prove infringement even before the law suit was filed The saisie contre facon allows to seize evidence in the factory and/or offices or the like of the future defendant even before starting the law suit The future defendant does not know that the saisie will be coming and, therefore, will likely not hide or destroy the evidence

Timetable for Patent Litigation Suit KRAMER BARSKE SCHMIDTCHEN Timetable for Patent Litigation Suit District Court Saisie Serving infringement action Registration at court Answering brief Reply brief Filing of statements Detailed oral hearing Service of decision 1 year 2 years 3 years 4 years 5 years Appeal Court -Filing appeal -Filing grounds of appeal -Reply brief -Explicit oral hearing -Service of decision Federal Supreme Court

Plaintiff has to procure all necessary evidence to prove infringement KRAMER BARSKE SCHMIDTCHEN Plaintiff has to procure all necessary evidence to prove infringement Saisie, Constat D´Huissier (e.g. test buy confirmed by a bailiff, internet pages confirmed by bailiff) Evidence not confirmed by a bailiff is less useful Usually no Party experts/ Court experts in 1st and 2nd instance proceedings

Representation in patent litigation KRAMER BARSKE SCHMIDTCHEN Representation in patent litigation First instance: Any Lawyer. Usually supported by patent attorney Second instance: Lawyer admitted to practice at the appellate court. Usually supported by patent attorney Third instance: Lawyer admitted to practice at the Federal Supreme court. Usually supported by patent attorney

Damages Calculation methods depending on whether KRAMER BARSKE SCHMIDTCHEN Damages Calculation methods depending on whether patentee uses patent or not: Patentee´s lost profit when using patent, rest: license analogy No punitive damages but increased licence Expert opinion for determination of damages

Costs of the proceedings KRAMER BARSKE SCHMIDTCHEN Costs of the proceedings No court fees 3000 to 15000 Euros are refundable per instance Only some percent of the real costs in case of abuse of procedure punitive damages (up to EUR 500.000.- recently)

France One system for litigation of infringement and validity KRAMER BARSKE SCHMIDTCHEN France One system for litigation of infringement and validity No obligatory preparatory measures (use inquiry/warning letter) Very powerful tool to obtain evidence (SAISIE) Slow proceedings Experienced judges but not usually not prepared before comprehensive hearing Full appeal Relatively low costs Low percentage of costs refundable Damages determined by an independent expert

Infringement and/or Validity KRAMER BARSKE SCHMIDTCHEN Infringement and/or Validity of a Patent House of Lords Court of Appeal If patent is maintained with or without amendment Patents Court in the High Court First Instance or appeal instance EPO Board of Appeal Appeal in opposition UK Patent Office Comptroller Patents County Court First Instance EPO Opposition Division Opposition EP and UK patent EP and UK patent EP patent UK patent

Preparatory measures (not obligatory) KRAMER BARSKE SCHMIDTCHEN Preparatory measures (not obligatory) Use inquiry Formal cease-and-desist-letter

Timetable for Patent Litigation Suit KRAMER BARSKE SCHMIDTCHEN Timetable for Patent Litigation Suit High Court Filing statement of case Counter statement Case management conference Orders Request for streamlined procedure Filing of written evidence Order as to disclosure Oral hearing (streamlined procedure about 9 month after start of proceedings) 1 year 2 years 3 years 4 years Separate proceedings for determination of amount of damages Appeal Court -Filing appeal -Filing grounds of appeal -Reply brief - Rarely new evidence -Explicit oral hearing -Service of decision Separate proceedings for determination of amount of damages Federal Supreme Court

Both plaintiff and defendant have to procure evidence KRAMER BARSKE SCHMIDTCHEN Both plaintiff and defendant have to procure evidence the Court may order the disclosure of documents relevant for the case during the proceedings Evidence is evidence of fact and expert evidence Selection of expert is very important Nearly all evidence is given orally, including cross examination

Representation in patent litigation KRAMER BARSKE SCHMIDTCHEN Representation in patent litigation First instance = Patents County Court: Patent Attorney only , or Solicitor only, usually supported by patent attorney. First instance = Patents Court in the High Court: Barrister and Solicitor, usually supported by patent attorney, or Solicitor only, usually supported by patent attorney Second instance =Appeal Court: Barrister and Solicitor, usually supported by patent attorney Third instance = House of Lords : Barrister and Solicitor, usually supported by patent attorney

Damages Damages have to be claimed in an (independent) KRAMER BARSKE SCHMIDTCHEN Damages Damages have to be claimed in an (independent) second stage of proceedings Three methods for calculating damages: licence analogy, lost profit, infringer´s profit Claimant has to show that he suffers commercial loss

Costs of the proceedings KRAMER BARSKE SCHMIDTCHEN Costs of the proceedings 60 to 70% of the costs of the winning party to be borne by the losing party No formula or statistics on average costs available US$500000 up for cases going to trial with High court as first instance

ENGLAND One system for litigation of infringement and validity KRAMER BARSKE SCHMIDTCHEN ENGLAND One system for litigation of infringement and validity No obligatory preparatory measures (use inquiry/warning letter) Fast proceedings Experienced judges Judges can order disclosure of evidence Full appeal Relatively high costs High percentage of costs refundable

Germany France England (UK) System? ? high/low damages? Europe? KRAMER BARSKE SCHMIDTCHEN Germany France England (UK) System? ? high/low damages? Europe? Long duration? barristers and solicitors? Low costs? High costs?

Germany France England (UK) KRAMER BARSKE SCHMIDTCHEN Two separated systems for litigation of infringement and validity One system for litigation of infringement and validity No obligatory preparatory measures (use inquiry/warning letter) Difficult to obtain evidence Very powerful tool to obtain evidence (SAISIE) Judges can order disclosure of evidence during proceedings Fast proceedings Experienced judges Slow proceedings Experienced judges but usually not prepared before comprehensive hearing Full appeal Full appeal if admitted Relatively low costs but two parallel proceedings Very high percentage of costs refundable. Relatively low costs Low percentage of costs refundable Relatively high costs?? High percentage of costs refundable High damages Damages determined by an independent expert High Damages

KRAMER BARSKE SCHMIDTCHEN Torpedo actions Courts in some European countries (BE, IT) are very slow Patent P is in force for DE, FR, GB for party A B sells in DE, FR, GB, BE, IT products which fall in scope of patent P B is suspecting A filing an infringement suit in DE B files in IT a declaratory action. Even though court in IT has not jurisdiction to decide the case, the court in IT may need several years to decide that they do not have jurisdiction. During this time A is not allowed to file an infringement action in DE

KRAMER BARSKE SCHMIDTCHEN Border Seizure Seizure possible on the basis of one single request for all EU countries Request is free of charge Important is to give guidance to the customs how to identify infringing products (packaging, easily recognizable features, importing company , destination …) Inspection and Evaluation possible Lawsuit ? Corresponding national regulations for inner EU transfer of goods Seizure possible for all goods protected by IP rights (Trademarks, Designs, Patents)

Number of seized products at EU borders KRAMER BARSKE SCHMIDTCHEN Number of seized products at EU borders

Some (real) examples of boarder seizure in 2003 at EC boarders KRAMER BARSKE SCHMIDTCHEN Some (real) examples of boarder seizure in 2003 at EC boarders Germany: 106036 packets of chewing gum, popcorn and waffels 1016088 bottles of vodka Denmark: 12498 toys 100 oil filters Mercedes 75992 pairs of Rayban sunglasses France: 19590 car spare parts 250000 labels Lacoste, Nike, Echo, Timberland

Type of products seized KRAMER BARSKE SCHMIDTCHEN Type of products seized