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

2. 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.)

3. KRAMER BARSKE SCHMIDTCHEN
Europe – EPO Members

4. 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?

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

6. 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

7. 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

8. 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 *

9. 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

10. 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 *

11. 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

12. 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

13. 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

14. 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

15. 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.

16. 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€

17. 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

18. 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

19. 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

20. 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

21. 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

22. 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

23. 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

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

25. 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

26. 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

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

28. 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

29. 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

30. 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

31. 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

32. 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$ up for cases going to trial with High court as first instance

33. 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

34. 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?

35. 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

36. 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

37. 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)

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

39. 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:
packets of chewing gum, popcorn and waffels
bottles of vodka
Denmark:
12498 toys
100 oil filters Mercedes
75992 pairs of Rayban sunglasses
France:
19590 car spare parts
labels Lacoste, Nike, Echo, Timberland

40. Type of products seized
KRAMER BARSKE SCHMIDTCHEN
Type of products seized