1. 16/20/11/09 – EU Civil Patent Enforcement HG-1 - 1 - Patent Rights in the EU – The Civil Enforcement Perspective Heinz Goddar Boehmert & Boehmert

2. 16/20/11/09 – EU Civil Patent Enforcement HG-1 - 2 - Enforcement Procedure n Justification enquiry? n Warning letter? n Enforcement/litigation

3. 16/20/11/09 – EU Civil Patent Enforcement HG-1 - 3 - Defence n Non-Infringement u Literal Infringement u Non-literal infringement n Invalidity of Patent u Attack against patent

4. 16/20/11/09 – EU Civil Patent Enforcement HG-1 - 4 - Patent Enforcement I (Germany) n 1st Instance – start of litigation u Complaint at specialized District Court, like Düsseldorf n 2nd Instance u “Factual“ appeal (re-studying of the merits) at specialized District Appeal Court n 3rd Instance u Legal appeal (no re-studying of the merits) at German Federal Court of Justice (10th Senate) n Qualification of Judges: legally trained, no technical background u In all three instances

5. 16/20/11/09 – EU Civil Patent Enforcement HG-1 - 5 - Patent Enforcement II (Germany) n Arguments heard in all three infringement instances: u Only non-infringement arguments „heard“ u No invalidity arguments decided u Only “staying“ request possible because of pending opposition or invalidation procedure n Parties must be represented by attorney at law u usually “accompanied“ by (a) patent attorney(s), who must be heard by the court upon request u attorney at law “leading“ presenter n Decision of first instance enforceable against bond u even in case of appeal

6. 16/20/11/09 – EU Civil Patent Enforcement HG-1 - 6 - Attack against Patent (EP or DE) n Opposition, if opposition period still pending u 9 months opposition period in case of EP patent, 3 months in case of German (DE) patent n Joining opposition procedure, started by third party, if still pending u within three months after complaint filed at District Court n Invalidation action, if opposition period has ended and no opposition by third party is pending anymore

7. 16/20/11/09 – EU Civil Patent Enforcement HG-1 - 7 - Invalidation Procedure I n Against German patents and German parts of EP patents n 1st Instance invalidation action u to be filed at German Federal Patent Court (FPC) n 2nd Instance u factual appeal at FCJ (10th Senate) n Qualification of judges: u “mixture“ of technically and legally trained judges at FPC u only legally trained judges at 10th Senate of FCJ

8. 16/20/11/09 – EU Civil Patent Enforcement HG-1 - 8 - Invalidation Procedure II n Invalidation action does not need “legal interest“ – open to “everybody“ n Arguments for invalidity u lack of patentability (novelty, inventiveness etc.) u insufficient disclosure (no enabling teaching) u broadening beyond original disclosure u broadening of scope of protection of granted patent u invention “stolen“ n Representation of parties at both FPC and FCJ by either patent attorney(s) or attorney(s) at law or both u “tandem“ of lawyer and patent attorney usual, if co-pending litigation u patent attorney usually “leading“

9. 16/20/11/09 – EU Civil Patent Enforcement HG-1 - 9 - Utility Model Enforcement I n 1st Instance – start of litigation u complaint at specialized District Court, like Düsseldorf n 2nd Instance u “factual“ appeal (re-studying of the merits) at specialized District Appeal Court n 3rd Instance u legal appeal (no re-studying of the merits) at German Federal Court of Justice (10th Senate) n Qualification of Judges: legally trained, no technical background u in all three instances

10. 16/20/11/09 – EU Civil Patent Enforcement HG-1 - 10 - Utility Model Enforcement II n Arguments heard in all three infringement instances u infringement u validity n Effect of invalidation by infringement court u only inter partes n Decision of first instance District Court preliminarily enforceable against bond n Representation of parties by attorneys at law u “tandem“ of lawyer and patent attorney usual u Attorney at law “leading“ for infringement arguments, patent attorney for invalidity arguments

11. 16/20/11/09 – EU Civil Patent Enforcement HG-1 - 11 - Utility Model Cancellation I n Cancellation request at German Patent and Trademark Office (GPTO) n Factual appeal at FPC n Legal revision at FCJ n Qualification of judges u legal and technical experts at GPTO u legal and technical judges at FPC u legally trained judges only at FCJ

12. 16/20/11/09 – EU Civil Patent Enforcement HG-1 - 12 - Utility Model Cancellation II n Reasons for cancellation (invalidation) u lack of protectability (novelty, inventiveness etc.) u unduly broadened beyond original disclosure u subject matter already protected by patent or utility model with earlier priority u invention “stolen“

13. 16/20/11/09 – EU Civil Patent Enforcement HG-1 - 13 - Preparation for Patent/Utility Model Litigation n Patent not yet granted: filing of branched-off (“derivative“) utility model at GPTO u based on co-pending German or EPC application designating Germany n Patent granted, but too broad to be defended u patent limitation/restriction procedure at EPO or at GPTO

14. 16/20/11/09 – EU Civil Patent Enforcement HG-1 - 14 - Fast Injunction Procedure n Available for both patent and utility model litigation n Specific requirements must be fulfilled u urgency u validity of patent/utility model beyond doubt u infringement situation beyond doubt n Risk of “sudden death“ by ex parte decision of court u preventive measure: caveat letter (“protective writ“)

15. 16/20/11/09 – EU Civil Patent Enforcement HG-1 - 15 - Duration of Litigation and Invalidation/Cancellation n Duration of first instance procedure rather short u in both patent and utility model litigation u less than one year in first instance u 1 – 2 years appeal procedure u 2 – 3 years at FCJ n Duration of invalidation/ cancellation u about one year in first instance u about 1 – 3 years in appeal

16. 16/20/11/09 – EU Civil Patent Enforcement HG-1 - 16 - Cost of Litigation and Invalidation/Cancellation n Losing party has duty to refund essentially all cost of winning party (court fees, attorneys‘ fees, expert cost etc.) n Invalidation and cancellation cost depend on subject value in dispute n In case of subject value in dispute of 500.000,00 EUR u cost risk of first instance litigation about 50.000,00 EUR u cost risk of first istance invalidation about 50.000,00 EUR n In general, even at higher subject values in dispute, litigation/invalidation cost only about 10% of comparable e. g. U.S. procedures

17. 16/20/11/09 – EU Civil Patent Enforcement HG-1 - 17 - Methods of Calculating Damages n License Analogy n Lost Profit of Patentee n Re-claiming of Infringer‘s Profit

18. 16/20/11/09 – EU Civil Patent Enforcement HG-1 - 18 - Meaning of „Damages“ in Germany n Compensation/Indemnification n „Restoration“ of situation as if no infringment would have taken place n No „punishment“ – i.e. no „treble damages“ or the like n No influence of „wilfulness“ on amount of damages

19. 16/20/11/09 – EU Civil Patent Enforcement HG-1 - 19 - License Analogy n Fictive arms-length License Agreement between Patentee („Licensor“) and Infringer („Licensee“) assumed n Running royalty rate as in arms-length deal taking into due consideration special circumstances, like u no minimum royalty u no downpayment u no risk of invalidation u no risk of unenforceability u no risk of lack of success of product u therefore: royalty rate often distinctly higher (up to two times) of „normal“ royalty rate n Royalty rate in Germany easily determined because of ample case law u particularly because of similar methods in calculating employee inventors‘ remuneration

20. 16/20/11/09 – EU Civil Patent Enforcement HG-1 - 20 - Patentee‘s Lost Profit n Proof of Profit, if Patentee would have made infringer‘s „business“ n Proof that Patentee would have made infringer‘s „business“

21. 16/20/11/09 – EU Civil Patent Enforcement HG-1 - 21 - Re-claiming of Infringer‘s Profit n General cost of infringer not deductible from turnover u unless „specified“? n Difficult to verify because of lack of discovery in Germany