Patent Litigation Comparative Guide -

1 Legal framework

1.1 Which laws and regulations govern patent litigation in your jurisdiction?

Patent litigation in Germany is mainly governed by the Patent Act, which includes provisions on:

patentability, prosecution and opposition procedures before the German Patent and Trademark Office;
nullity and compulsory licence proceedings before the Federal Patent Court; and
infringement, based on which patents may be asserted before the German civil courts. Proceedings before the civil courts are governed by the Code on Civil Procedure.

Employee inventions are governed by the Act on Employee Inventions.

The protection of utility models is regulated by the Utility Model Act.

1.2 Which bilateral and multilateral agreements with relevance to patent litigation have effect in your jurisdiction?

IP law in Germany is strongly influenced by the legislation of the European Union. This includes:

regulations which are immediately effective in EU member states; and
directives which require formal implementation into national law.

This has resulted in a noticeable degree of harmonisation across the EU member states. Relevant EU legislation includes, for example:

the Enforcement Directive (2004/48/EC);
the Regulation on the Customs Enforcement of Intellectual Property Rights (608/2013);
the Regulation on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters (1215/2012, amended by Regulation 542/2014);
the Unitary Patent Regulation (1257/2012);
the Unitary Patent Translation Arrangements Regulation (1260/2012); and
the Regulation Concerning the Supplementary Protection Certificate for Medicinal Products (469/2009).

Germany is also a party to the following international treaties relevant to patents:

the Paris Convention for the Protection of Industrial Property 1883, governing the right of priority, among other things;
the Patent Cooperation Treaty, regulating a common international patent application procedure;
the Act Revising the European Patent Convention 2000, on a uniform and centralised application and patent grant procedure; and
the Agreement on a Unified Patent Court, providing a pan-European patent court system and substantive law regarding the infringement and validity of certain European patents. The Unified Patent Court commenced operations on 1 June 2023.

1.3 Which courts and/or agencies are responsible for interpreting and enforcing the patent laws? What is the framework for doing so?

Patent infringement proceedings are tried before the German civil courts. In the first instance, 12 regional courts are generally competent to hear patent infringement cases. These regional courts have specialised patent chambers, each consisting of a panel of three judges. The judges are legally qualified (ie, they have been educated as attorneys at law) and do not usually have a formal technical background. The courts with the highest case numbers in Germany are the regional courts of Dusseldorf, Mannheim, Munich and Hamburg.

Judgments of the regional courts can be appealed to the competent higher regional court. The higher regional courts have specialised senates consisting of three legally qualified judges.

Subject to certain restrictions, judgments of the higher regional courts can be further appealed to the Federal Court of Justice, the court of third and final instance.

2 Forum

2.1 In what forum(s) is patent litigation heard in your jurisdiction? Are patent infringement and validity decided in the same forum or separate forums?

Germany has a bifurcated system – that is, infringement and validity proceedings are decided in separate proceedings.

The German civil courts have exclusive jurisdiction over patent infringement proceedings. They have no jurisdiction to decide on the validity of the asserted patent but can order a stay of the infringement proceedings if the defendant has demonstrated a high likelihood that the asserted patent will be revoked in parallel pending nullity proceedings.

The Federal Patent Court has exclusive jurisdiction over first-instance nullity proceedings, in which a decision on validity is taken. The Federal Court of Justice also has jurisdiction over appeals in such proceedings.

2.2 Who hears and decides patent disputes (eg, a judge, a panel and/or a jury)?

Patent infringement cases are heard and decided by a panel. There is no jury trial in Germany.

In first and second-instance infringement proceedings, the panel consists of three legally qualified judges.

In first-instance nullity cases, the bench of the Federal Patent Court is composed of five judges (two legally and three technically qualified judges).

The benches of the Federal Court of Justice (responsible for third-instance infringement proceedings and second-instance nullity proceedings) sit with five legally qualified judges.

2.3 Are there any opportunities for forum shopping in your jurisdiction? If so, where and how do those opportunities exist?

Besides bringing an infringement action at the place of the infringer's domicile or registered seat, a patent holder can file an infringement action with the court where the infringing act took place. This means that if the infringing products or services are offered throughout the entire German territory (eg, via an offer through a website), the patent holder can choose its preferred regional court from any of the 12 competent regional courts.

3 Parties

3.1 Who has standing to file suit for patent infringement? What requirements and restrictions apply in this regard?

An action for patent infringement can generally be filed by:

the patent holder; or
an exclusive licensee (depending on the terms of the licence agreement).

The patent holder must be entered in the German Patent and Trademark Office's register as the owner of the patent, while there is no comparable requirement for the licensee.

A non-exclusive licensee cannot per se claim based on its own rights, but only has standing to sue if:

it has been authorised to enforce third-party rights by the patent holder and it has a legal interest in enforcement; or
certain claims, such as claims for damages, have been assigned to the non-exclusive licensee.

3.2 Can a patent infringement suit be brought against a defendant who is a foreign entity with only a residence or place of business outside the jurisdiction?

Yes. A patent infringement suit can also be brought against a defendant that has its residence or place of business outside of Germany, provided that the infringing act took place within Germany.

3.3 Can a single infringement action be brought against multiple defendants? What requirements and restrictions apply in this regard?

Yes. A single infringement action can be brought against multiple defendants, provided that similar claims based on similar factual and legal grounds are brought against the defendants. This is the case, for example, if claims for patent infringement are asserted based on:

the same patent; and
the same infringing product or service.

3.4 Can a third party seek a declaration of non-infringement or invalidity in your jurisdiction? If so, how?

A third party can seek a declaration of non-infringement in Germany if it has a legitimate interest in obtaining such a declaration. This requirement is fulfilled if the patent holder or exclusive licensee has previously asserted claims for patent infringement against the third party – for example, in a warning letter. The interests of the third party in a declaratory judgment generally cease to exist if an infringement action is filed in Germany between the same parties.

A third party cannot seek a declaration of invalidity from a German civil court, but can only challenge the validity of a patent by either:

filing an opposition within nine months of grant with the German Patent and Trademark Office or the European Patent Office; or
bringing a nullity action before the Federal Patent Court after the expiry of the opposition period.

If the patent is in force, any third party can generally file a nullity action with the Federal Patent Court. After the patent has expired, the third party must demonstrate a legitimate interest in the retroactive invalidation of such patent.

4 Patent infringement

4.1 What constitutes patent infringement in your jurisdiction?

German law recognises both direct infringement and contributory infringement.

Direct patent infringement is committed by anyone that, without the consent of the patent holder:

manufactures, uses, offers for sale, distributes on the market, imports or possesses for such purposes a product that is the subject matter of the patent (product protection);
uses a process that is the subject matter of the patent or offers the use of the process in Germany if it is known or obvious from the circumstances that the use of the method is prohibited without the consent of the patent holder (process protection); or
offers for sale, distributes on the market, uses, imports or possesses for such purposes a product directly obtained by a process that is the subject matter of the patent in Germany (product-by-process protection).

Contributory infringement requires that:

parts of the claimed invention be offered or supplied in Germany that relate to an 'essential element' of the invention when it is clear or apparent from the circumstances that the parts offered are suitable and intended for use in the claimed invention; and
not only the attacked parts of the claimed invention be offered or supplied in Germany, but also the (intended) infringing use by a recipient take place in Germany (so-called 'double domestic nexus').

4.2 How is infringement determined?

Patent infringement is determined by comparing the features of the attacked product or process against the features of the patent claim. For literal infringement, the attacked product or process must practise all features of the patent claim.

4.3 Does your jurisdiction apply the doctrine of equivalents?

Besides literal infringement, a patent can be infringed under the doctrine of equivalents. Infringement under the doctrine of equivalents requires the fulfilment of three prerequisites:

The alternative means must solve the technical problem underlying the invention with the same technical effect as the claimed means;
The skilled person must have been able to find the alternative means based on the patent description without an inventive step at the priority date; and
The considerations of the skilled person to find the alternative means must be so closely linked to the technical teachings protected by the patent claim that the skilled person considers the technical solution of the alternative means as comparable to the claimed technical solution.

4.4 Is wilful infringement recognised? If so, what is the applicable standard?

Wilful infringement is not recognised in Germany. Claims for injunctive relief, recall, destruction, provision of information and rendering of accounts are available regardless of the intent or negligence of the infringer. Only damages require that the infringer have acted at least negligently. However, there are no punitive or enhanced damages in case of wilful infringement.

5 Bringing a claim

5.1 What measures can a patent holder take to enforce its rights in your jurisdiction? Are interim measures available before receiving a ruling on the merits?

The patent holder can either:

file a main infringement action with one of the competent regional courts; or
in urgent cases, request the grant of a preliminary injunction.

The request for a preliminary injunction is a separate proceeding from the main infringement action and can be asserted independently. The grant of a preliminary injunction requires the fulfilment of strict requirements, including in general that:

there is clear infringement of the patent in suit;
there are no serious doubts as to the validity of the patent; and
the application was filed without undue delay after the patent holder learned of the infringing act ('urgency element').

5.2 What is the limitation period for patent infringement in your jurisdiction?

The limitation period for claims due to patent infringement in Germany is generally three years from the end of the year in which the patent holder became aware of the infringement and the infringer's identity. Irrespective of the knowledge of the infringer's identity, claims due to patent infringement become statute barred after 10 years from the end of the year in which the claim arose.

5.3 Must the alleged infringer be notified in advance before a claim is brought?

There is no general requirement to notify the alleged infringer before filing an infringement action. The patent holder can assert claims for patent infringement in a cease-and-desist letter prior to filing an action. However, if the assertion is objectively unjustified or if the cease-and-desist letter does not meet certain formal requirements, the recipient may be entitled to:

reimbursement of legal costs;
injunctive relief; and
if the patent holder acted at least negligently, damages.

5.4 What are the procedural and substantive requirements for bringing a claim for patent infringement? How much detail must be presented in the complaint?

Patent infringement proceedings are initiated by filing a complaint with one of the competent regional courts. The complaint must include:

the names and addresses of all parties;
the asserted patent;
details of the alleged infringing acts in Germany; and
details of the allegedly infringing product, service or process.

The complaint must further include:

the motions that the plaintiff intends to assert in the patent infringement proceedings; and
reasoning including a legal assessment of the alleged infringement and the requested remedies.

Full proof and evidence of the alleged infringement must be presented in the complaint. Upon advancement of the court fees by the plaintiff, the complaint is served on the defendant by the court.

5.5 Are interim remedies available in patent litigation in your jurisdiction? If so, how are they obtained and what form do they take?

A patent holder can file a request for a preliminary injunction to obtain a quick provisional decision. The grant of a preliminary injunction requires that the plaintiff demonstrate, by prima facie evidence, that:

the asserted patent has been infringed (claim for injunctive relief); and
the enforcement of the asserted patent by means of the preliminary injunction is necessary and justified (grounds for an injunction).

As part of the grounds for an injunction, the court must assess three requirements:

The plaintiff has acted quickly enough after becoming aware of the potential patent infringing act and the identity of the infringer. Although there is no absolute or legal time limit, the plaintiff should file a request for a preliminary injunction within one month of becoming aware of the infringing acts.
The validity of the asserted patent is sufficiently secured. Most German courts require that the asserted patent have already survived first-instance opposition or nullity proceedings to confirm that there are no doubts as to the validity of the patent. Exceptions from this requirement exist under specific circumstances – for example, in case of:
- the imminent expiry of the patent; or
- an imminent generic launch in the case of pharmaceutical patents.
In this situation, it is sufficient if, from the point of view of the infringement court:
- patentability is to be affirmed positively; or
- with regard to the distribution of the burden of proof, the question of patentability remains at least unresolved, so that the infringement court, if it had to decide on the merits, would have to confirm the validity.
The interest of the plaintiff in enforcing the asserted patent by a preliminary injunction to prevent imminent disadvantages outweighs the disadvantages that the defendant might suffer if the preliminary injunction is issued.

Once granted, the preliminary injunction is immediately enforceable – often against provision of security, since the plaintiff is liable for damages if the preliminary injunction is subsequently overruled.

5.6 Under what circumstances must security for costs and/or damages incurred by the other party be provided?

The defendant in main infringement proceedings may generally request that the plaintiff be ordered to provide security for the defendant's litigation costs if the plaintiff does not have a residence in:

an EU member state; or
a state which is a party to the Agreement on the European Economic Area.

The obligation to provide security for costs does not apply where, for example:

due to international treaties, no such security may be demanded;
the decision as to the defendant's reimbursement of the legal costs can be enforced against the plaintiff on the basis of international treaties; or
the plaintiff owns in Germany real estate assets or other definitively secured claims to cover the costs of the proceedings.

As noted in question 5.5, the court may also order the applicant for a preliminary injunction to provide security prior to enforcement of the injunction order. This security can generally be waived only if:

the applicant is unable to provide it; or
the timeframe is too short to provide it – for example when an injunction is granted extremely quickly due to the presentation of infringing items at a trade fair.

6 Disclosure and privilege

6.1 What rules on disclosure apply in your jurisdiction? Do any exceptions apply?

One of the core principles of German civil procedures is that each party must present its own evidence. There is no obligation of the court to clarify the matter itself. Also, there is no pre-trial discovery comparable to that in the United States. However, German civil procedural law provides certain claims for the inspection of premises of the alleged infringer to gather additional evidence prior to infringement proceedings and the production of documents in infringement proceedings.

The claim for inspection of premises aims to enable the patent holder to assess whether there is actual patent infringement. This claim will be granted if the patent holder can demonstrate:

a certain likelihood of patent infringement in Germany; and
that an inspection is required because the patent holder otherwise cannot obtain any information about the infringement.

A court can also order a party to submit a certain document or object referred to during the proceedings by a party. However, this discretionary procedural tool is used very restrictively by the German courts.

6.2 What rules on third-party disclosure apply in your jurisdiction? Do any exceptions apply?

There is no pre-trial discovery. However, the German courts can order a third party to submit a certain document or object referred to during the proceedings by a party.

6.3 What rules on privilege apply in your jurisdiction? Do any exceptions apply?

Attorney-client privilege does not play a significant role in infringement proceedings in Germany due to the limited options of discovery. However, German patent law provides for certain protective measures to be ordered if business or trade secrets of a party are to be disclosed. For example, the courts may:

limit the number of persons that can access secret information to be disclosed;
exclude the public from a hearing; or
restrict access to the court files.

7 Evidence

7.1 What procedure(s) exist for collecting and presenting evidence in patent infringement litigation?

The German courts can order a party or a third party to submit certain documents or objects; and the patent holder can assert a claim for inspection of premises in preparation of infringement proceedings.

If the court finds that proof of a certain factual allegation requires the taking of evidence during legal proceedings, it will issue a corresponding order – for example:

appointing a court expert to provide an expert opinion; or
scheduling a further hearing to examine a witness.

7.2 What types of evidence are permissible in your jurisdiction? Is expert evidence accepted?

The types of evidence available under German law include:

expert opinions by court-appointed experts;
visual inspections by the court;
hearing of witnesses;
consideration of documents; and
hearing of the parties.

7.3 What are the applicable standards of proof?

The court must be convinced that the asserted patent is infringed, which requires a very high level of probability that an infringement of the asserted patent has occurred.

7.4 On whom does the burden of proof rest?

The burden of proof usually rests with the party asserting a claim or a defence.

8 Claim construction

8.1 Is there a procedure for construing claims during a patent infringement action? If so, when and how is it performed?

Claim construction is a question of law and must be decided by the courts. There are no separate proceedings or hearings on claim construction, as known for example in the United States. Instead, claim construction is discussed together with infringement and any defences raised by the defendant in the main oral hearing.

8.2 What is the legal standard used to define disputed claim terms?

Article 69 of the European Patent Convention (EPC) provides that the extent of the protection conferred by a European patent or a European patent application will be determined by the claims. The scope of a patent claim is construed based on the claim wording from the view of a person skilled in the art who is familiar with the technology concerned. The description and drawings will be used to construe the claims. Article 1 of the Protocol on the Interpretation of Article 69 of the EPC provides that a court should:

read the wording of the patent claim against the background of the patent description and the drawings; and
find a balance between fair protection for the patent holder and a reasonable degree of legal certainty for third parties.

8.3 What evidence does the court consider in defining the claim terms?

A German court may also consult the patent description and drawings when interpreting the patent claims. In this regard, the patent description is its own lexicon for the terms used in the claims.

The prosecution file is not considered during claim construction. Also, no file wrapper estoppel exists. An exception applies only if, during opposition or validity proceedings brought by the same defendant, the patent holder has expressly declared certain disclaimers regarding products or methods not covered by the patent which resulted in upholding the patent, but subsequently tries to argue infringement against the defendant by these same products or methods.

8.4 Can the claims of a patent be amended in the course of the proceedings?

Due to the bifurcated German system, the patent holder cannot amend patent claims directly in the infringement proceedings; but it can amend the claims during pending opposition or validity proceedings and can then rely on the amended claims in the infringement proceedings.

9 Defences and counterclaims

9.1 What defences are typically available in patent litigation?

The main defence in patent litigation is that the allegedly infringing act does not fall within the scope of patent protection because the patent holder is relying on an incorrect claim construction and/or incorrect facts.

Other defences include the following:

a right to use the invention based on a valid licence agreement or a prior use right before the priority date;
exhaustion of the patent holder's rights because the allegedly infringing product has been put on the market in a member state of the European Union or the European Economic Area with the consent of the patent holder;
unenforceability of the patent granted for the invention against the defendant due to the unlawful extraction of the invention from the defendant;
time-barred claims; and
the Roche-Bolar exemption, according to which generic manufacturers are permitted to perform acts of use during the patent term that are necessary to obtain marketing authorisation.

9.2 Can the defendant counterclaim for revocation or invalidation of the patent? If so, on what grounds and what is the process for doing so?

Due to Germany's bifurcated system, the defendant cannot file a counterclaim for revocation of the asserted patent in the infringement proceedings. The defendant can only request a stay of the infringement proceedings if it can demonstrate a high likelihood that the asserted patent will be invalidated in pending nullity proceedings.

In nullity proceedings before the Federal Patent Court, German patents and the German part of European patents can be invalidated on the following grounds:

Lack of novelty: The claimed invention was already part of the public domain before the priority date.
Lack of inventiveness: The claimed invention was obvious to the skilled person on the priority date.
Lack of industrial applicability: Use of the invention is impossible in any kind of industry.
Excluded subject matter: The patent covers a subject matter for which no patent protection can be obtained, such as business methods or the human body and its elements.
Insufficiency: The patent does not enable the skilled person to practise the invention because it does not disclose the invention sufficiently clearly and completely.
Added matter: The subject matter of the granted patent extends beyond the content of the patent application as originally filed.
Inadmissible extension: The patent claim has been amended so that its scope of protection is wider than the scope of the claim as originally granted.
Unlawful extraction: The invention for which the patent was granted has been unlawfully taken from the plaintiff in the validity proceedings without consent.

9.3 Are there any grounds on which an otherwise valid patent may be deemed unenforceable against a defendant?

If the patent is a standard-essential patent (SEP) for which a fair, reasonable and non-discriminatory (FRAND) declaration has been provided, claims for injunctive relief, recall and destruction based on such patent may become unenforceable if the patent holder does not fulfil its obligations as set out by the Court of Justice of the European Union in its 2015 judgment in Huawei v ZTE (C-170/13) before seeking injunctive relief, recall or destruction. These obligations include the following:

The SEP holder must inform the alleged infringer of the infringement by identifying the relevant patent and the asserted infringement.
After the alleged infringer has expressed its willingness to take a licence on FRAND terms, the SEP holder must provide the alleged infringer with a written offer for a FRAND licence, specifying, in particular, the royalty and its calculation.

10 Settlement

10.1 Are mediation and/or other forms of settlement discussions required by the court in your jurisdiction or merely optional to the parties?

Previous mediation or other forms of settlement discussions are not required in German patent infringement proceedings. According to the Code of Civil Procedure, however, the courts will aim to reach an amicable settlement of the dispute or of individual issues at each stage of the proceedings. Therefore, they usually briefly explore at the beginning of the hearing whether the parties are willing to settle the case. If not (which is common practice), the case proceeds.

10.2 Can the proceedings be stayed or discontinued in view of settlement discussions?

The parties can mutually request a stay of the infringement proceedings due to pending settlement negotiations or for other important reasons. To continue the proceedings, a request by only one party is sufficient.

10.3 Is it necessary to report the results of settlement discussions to the court? If so, how; and what are the implications?

There is no requirement to report the results of settlement discussions to the court. If the parties settle, the settlement usually also includes provisions on how to terminate the pending infringement proceedings – for example, an obligation of the patent holder to withdraw the infringement action. It is common practice, however, that the parties briefly note that they settled the case.

Instead of settling outside the court proceedings, the parties can also submit a settlement proposal to the court. The court then establishes the conclusion and the content of a concluded settlement by means of an order.

11 Court proceedings for infringement and validity

11.1 Are court proceedings in your jurisdiction public or private? If public, are any options available to the parties to keep the proceedings or related information confidential?

The oral hearing in infringement and validity proceedings are public. A party can request the court to exclude the public from certain parts of the oral hearing relating to confidential information. In addition, a party submitting confidential information can request the court to order measures for the protection of confidential information.

The court files are generally not accessible by the public. A third party that wants to access them must file a request with the court and show a legal interest in the inspection. No such legal interest is required to inspect the court files in validity proceedings, but the parties can request that specific submissions be excluded from such inspection.

11.2 Procedurally, what are the main steps in patent infringement proceedings in your jurisdiction? Is patent validity handled in the same proceedings as infringement or is it handled separately? If separate validity proceedings are available, what are the main steps in those proceedings?

Patent infringement proceedings are initiated by:

the filing of an infringement action with the competent court; and
its service on the defendant by the court.

The court sets the defendant:

a deadline for submitting its notice of defence; and
a further deadline for filing the statement of defence, which is usually within two to four months.

The statement of defence is followed by a further round of written submissions according to the further deadlines set by the court. After conclusion of the written procedure, the oral hearing takes place. In the hearing, the court provides its preliminary opinion, which guides the parties as to what they should address in their oral pleadings. Commonly, claim construction, infringement and the defences raised by the defendant are discussed. The decision and the written grounds of the decision are usually issued subsequently, which may take up to some weeks after the oral hearing. The first-instance judgment is usually declared to be provisionally enforceable, subject to the provision of security by the enforcing party.

Patent validity proceedings are handled separately and are initiated by filing a nullity action with the Federal Patent Court. Upon service of the nullity action, the court sets the patent holder:

a deadline for filing its formal opposition to the nullity action within one month of service; and
a second deadline for filing the reasoning for the opposition within two months of service.

The second deadline can be extended by one month. Under the Second Act for the Modernisation and Simplification of Patent Law (which entered into force on 18 August 2021), the court should now provide the parties with a preliminary written opinion on the validity of the patent within six months of service of the action. With the preliminary opinion, the court sets the parties:

a first deadline for commenting on the preliminary opinion; and
a second deadline for commenting on the other party's comments.

After conclusion of the written proceedings, the oral hearing takes place. The decision is usually announced at the end of the hearing. The written grounds of the decision are typically issued in the months following the hearing (commonly between two and four months after the hearing).

11.3 What is the typical timeframe for patent infringement proceedings? If separate patent validity proceedings are available, with is the typical timeframe for those proceedings?

Depending on the court, first-instance infringement proceedings usually take between 12 and 15 months from filing of the complaint until the issuance of the judgment.

First-instance validity proceedings before the Federal Patent Court commonly take between 22 and 26 months from filing of the complaint until the issuance of the decision.

11.4 To what extent do the decisions of national or foreign courts or bodies influence the court's decision?

As Germany is a member state of the European Union, the German courts are bound by decisions of the Court of Justice of the European Union (CJEU) regarding the interpretation of European law. Otherwise, there is no concept of binding precedent in Germany. However, in practice, the courts take into account relevant decisions from other German courts and usually follow the rulings of higher courts – that is, the higher regional courts and the Federal Court of Justice. The courts are also not bound by the decision of foreign national courts. However, such decisions are nevertheless often filed by parties when they relate to parallel national proceedings in a dispute over the same patent, for example. Parties hope to influence the courts as they might examine such decisions despite not being bound to consider the arguments for their own rulings.

12 Remedies

12.1 What remedies for infringement are available to a patent holder in your jurisdiction?

The patent holder can seek:

a permanent injunction;
recall and destruction of infringing products;
provision of information on the distribution chain; and
rendering of accounts to prepare its damage claim.

The grant of a permanent injunction does not require:

irreparable harm;
a weighting of interests; or
any other test.

However, under the Second Act for the Modernisation and Simplification of Patent Law, the patent holder is not entitled to a permanent injunction if, in light of the specific circumstances of the case and the principle of good faith, the grant of a permanent injunction would cause the infringer or third parties disproportionate hardship which is not justified by the exclusive right granted to the patent holder by the patent.

Provided that the infringer acted at least negligently, it can also request damages.

The patent holder may further request that the decision confirming patent infringement be published at the infringer's expense.

12.2 Are punitive or enhanced damages available in your jurisdiction? If so, how are they determined?

No punitive or enhanced damages are available in Germany. The purpose of damages under German law is exclusively compensatory.

12.3 What factors will the courts consider when deciding on the quantum of damages?

The plaintiff can choose between three different methods to quantify its claim for damages:

Infringer's profits: The infringed party may claim the infringer's profits, which are calculated based on revenue minus costs. However, the infringer may only subtract costs directly associated with the infringing product from its revenue; general overhead costs are not deductible.
Lost profits: The patent holder must demonstrate that its own lost profits were caused by the infringing acts. This method is rarely used, since the patent holder must:
- demonstrate that its loss was caused by the infringement (causality); and
- disclose its own information on revenues, costs, margin and so on.
Reasonable royalty: The damages are calculated based on a royalty which would have been agreed on between reasonable parties for an implied licence. Previous licence agreements can serve as an indication for an appropriate reasonable royalty.

13 Appeals

13.1 Can the decision of a first instance court or body be appealed? If so, on what grounds and what is the process for doing so? Please also describe the availability and process for additional levels of appeal.

A first-instance judgment by a regional court can be appealed to the competent higher regional court. On appeal, the higher regional court can review issues of law as well as issues of fact. However, new facts can only be introduced under limited circumstances.

Subject to certain restrictions, a judgment of a higher regional court can be further appealed on issues of law to the Federal Court of Justice.

A first-instance judgment by the Federal Patent Court can be appealed to the Federal Court of Justice as the court of final instance in patent validity proceedings.

13.2 What is the average time for each level of appeal in your jurisdiction?

Infringement appeal proceedings before the higher regional courts take approximately 10 to 15 months. The average time for appeal proceedings before the Federal Court of Justice is approximately 18 to 24 months.

14 Costs, fees and funding

14.1 What costs and fees are incurred when litigating in your jurisdiction? Can the winning party recover its costs?

Depending on the complexity of the case and the value in dispute, the costs of first-instance infringement proceedings may range between $100,000 and $500,000.

The losing party must pay the costs. The winning party can recover:

any advanced court fees; and
its reasonable costs and expenses.

However, the recovery of attorneys' fees is limited to statutory attorneys' fees, which are determined based on the value of the case in dispute.

14.2 Are contingency fee and/or other alternative fee arrangements permitted in your jurisdiction?

Contingency fee or other alternative fee arrangements are generally not permitted in Germany. In litigation, attorneys must at least charge statutory fees which are determined based on the value in litigation of the case.

14.3 Is third-party litigation funding permitted in your jurisdiction?

Third-party litigation funding is permitted in Germany, but there are no specific applicable legislative or regulatory provisions.

15 Trends and predictions

15.1 How would you describe the current patent litigation landscape and prevailing trends in your jurisdiction? Are any new developments anticipated in the next 12 months, including any proposed legislative reforms?

Germany is the preferred venue for patent litigation within the European Union, as reflected in the high case filing numbers. What attracts litigants is the friendliness of the German patent litigation system towards patent holders. This is caused by the bifurcated system combined with the more or less automatic grant of an injunction in case of infringement, which results in the so-called 'injunction gap'. This means that the first-instance infringement proceedings are usually decided earlier than the parallel first-instance nullity proceedings. As first-instance judgments are usually enforceable on a preliminary basis, patent holders have a strong tool to protect their market position versus competing patent infringers.

Due to the forum-shopping options available to patent holders, there seems to be some competition between the various competent German regional courts to attract plaintiffs to their venues, which in our perception has led to more patent holder-friendly approaches, especially by the Regional Court of Munich.

The reforms under the Second Act for the Modernisation and Simplification of Patent Law aim to accelerate nullity proceedings before the Federal Patent Court. In particular, the issue of a written preliminary opinion by the Federal Patent Court on the validity of a patent will provide the first-instance infringement courts with additional guidance when deciding on a stay of infringement proceedings.

The Unified Patent Court (UPC) commenced operations on 1 June 2023, giving patent holders a new venue in which to enforce their European patents in currently 17 participating EU member states through one centralised proceeding. In the coming months and years, it will become clear whether this new venue is accepted by patent holders as an alternative to proceedings before national courts and how it may change the patent litigation landscape in Europe. Based on the first case filing numbers published by the UPC, a sizeable number of cases are already pending at the UPC and in particular at the German UPC Divisions, which underlines the importance of Germany as a venue not only for national but now also for international European patent litigation.

16 Tips and traps

16.1 What would be your recommendations to parties facing patent litigation in your jurisdiction and what potential pitfalls would you highlight?

As Germany is the biggest consumer market in Europe and sees a considerable volume of patent litigation, the German courts have very experienced and specialised judges who exclusively practise patent law. The costs of litigation are comparatively low. From the perspective of patent holders, Germany's bifurcated system is therefore beneficial. First-instance infringement decisions are issued comparatively quickly and can be provisionally enforced while the defendant is still awaiting a first-instance decision on the validity of the patent. Germany is hence an attractive venue for patent holders.

However, the bifurcated system also requires close coordination between the infringement proceedings and the validity proceedings. It is therefore important:

to thoroughly prepare a case; and
to cross-check the pleadings for the sake of consistency.

Litigants taking care of this should be well prepared.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Germany: Patent Litigation Comparative Guide