Germany: Why Patent Litigation in Germany is Attractive for International Corporations

Last Updated: 20 February 2003
Article by Reinhardt Schuster

Litigating intellectual property rights is common in Germany, in particular with patents. Companies can perceive patent litigation as a legitimate and efficient means in the fight for market shares. With the high tech industries' rush for innovation, especially in biotechnology, pharmaceuticals, software and producers of semiconductor, products are developed which are technically often situated critically close to competing products. If they are identical or very comparable with regard to protected details or functions, competing companies may have to go to court in order to litigate their IP disputes. Here, much can be at stake: past investments in R&D as well as expected profits and market shares.

Global awareness for IP

IP creates worldwide networks: by technology transfer from academic and commercial research centers to industry, by co-operations and licensing programs between companies in different industries and countries. With the globalization of the economy, the growing importance and awareness for IP has spread to all industrialized nations. As a consequence there are now frequently whole series of cross-country law suits, in particular patent infringement suits, with Germany playing a pivotal role as the largest market and most frequented patent litigation venue in the EC. Even in times without economic growth, modern companies are concentrating on the financial realization of their protected or acquired innovations. Thus, corporations are founding limited companies exclusively for the purpose of "mining" for and realizing protected inventions, for purchasing patents and financing infringement lawsuits. Patent related risks (such as potential infringement and the ensuing costs of a lawsuit) can be insured nowadays by specialist insurers. Specialized law firms providing the full range of services related to intellectual property offer their expertise and international services and connections.

In particular during the past 10-15 years the awareness for the value of intellectual property within companies has risen enormously. If, before 1985, there might have been a certain general hesitance towards filing applications, today there is a veritable race for IP-protection which is reflected in the exponentially rising statistics of applications for patents and trademarks in Europe, in the U.S. and in the other major industrialized countries.

While formerly the first priority was to file a patent (or utility model) application for any invention that seemed to be "patentable", there has now been a certain shift towards a more strategic approach. Patents and intellectual property in general are undergoing a revolution with regard to their appreciation as intangible assets. Today, often up to 85% of the value of the market capitalization is attributed to the immaterial assets of a given company. Up-to-date studies by financial service providers show that the highest rate of return with regard to investment is achieved by immaterial values, these consisting mainly of patents, trademarks and the know-how of employees.

The "dotcom bubble" did not burst because of any lack of innovative values, says one provocative thesis exchanged in professional circles, but because of a lack of knowledge about the economic asset called IP. Any innovative company will only survive if it contributes appropriate attention and resources to its intellectual property, learning to conceive and to use IP as a profit center, subjugating patents to analysis of risk and cost/benefit as well as using them in a strategic long term way. This is termed "Intellectual Asset Management" or "Patent Strategy", veritable departments within companies employing interdisciplinary know-how of law, business administration and technical fields. The IP manager's task is to nurture a strong patent portfolio, maximize profit, for example, from license agreements and build up strategic advantages against competitors which, if necessary, have to be put to the test in litigation.

Reliability of German Courts

The reasons that internationally acting corporations are giving preference to the German courts when defending their intellectual property rights can be found in the general reliability of the German courts and professional circles as well as in the comparably favorable conditions of time and costs. But small and middle sized companies, too, run a fair chance in this country of defending their patented products successfully in the internal market against the competition of international "giants" by being able to conduct, to finance and - that's what counts - to win a patent infringement lawsuit. As a consequence of the advancing harmonization of patent law within the European Community, patent infringement suits conducted in Germany are often attaining also legally a pivotal status and are being appreciated as such by companies in their patent litigation strategy. In the following some cornerstones of the German system are explained, with a special view to the attractiveness it holds to the patent owner as plaintiff.

In which court to sue? - A strategic choice

In first instance, patent infringement matters are heard by specialized chambers of 11 selected district courts (Landgerichte), the most highly frequented being the courts of Düsseldorf, Mannheim and Munich. Düsseldorf handles approx. 30% of all European and more than 50% of all German patent cases.

When choosing the appropriate district court, a number of strategic criteria should be considered: Apart from the regional competence (residence of infringer, area of distribution and marketing of infringing articles), also a certain differing in the "pro-patentee attitude" of the individual court may play a role as well as the individual judge's tendency to appoint a technical expert or to stay the infringement suit because of a parallel nullity action.

Specialized courts and attorneys

Most patent judges have a fair understanding of technical issues because of their continuos exposure to patent matters. In the US, by comparison, plaintiffs can only in the appeal instance count on judges specialized in patent law, while in first instance, at the US district courts, cases of many different areas of law are heard (and often decided with the participation of a lay jury). German patent judges can, if necessary, commission experts on demand or at their own initiative, whereas an expert opinion submitted by a party has no direct value of evidence. Since the tendency for the appointment of experts varies from judge to judge, this aspect should also be carefully considered by the patent law practitioner. A relatively liberal interpretation by German judges of the so-called doctrine of equivalents may be a further plus for a foreign plaintiff. (According to the case law of the German Federal Supreme Court (BGH), an equivalent embodiment is falling under the scope of protection if (1) this differing embodiment is solving the problem of the invention with means that lead to the same effect, (2) the average person skilled in the art assesses these differing means according to his specialist knowledge as achieving that same effect, and if (3) the necessary considerations correspond to the technical sense of the content of the patent claims describing the invention.)

In summary, a detailed knowledge of the particularities of the individual courts and judges can be decisive for the planning of a successful patent litigation.

For an infringement lawsuit, parties are obliged to be represented by an attorney-at-law. Today, this will be an IP specialist with a practice focus on patent law, who in the majority of cases will be accompanied by a patent attorney with respect to technical aspects of the case. In the German Patent Court in Munich, a patent attorney acting in a nullity suit may be supported by an attorney-at-law. The separate or parallel conduct of infringement suits and nullity actions demands special care and professional experience for an efficient guidance and coordination of these dual procedures. Defendants counter the majority of infringement suits with a nullity suit or with an opposition procedure in the Patent Office. Specialist IP Law firms, offering the integrated services of patent attorneys and attorneys-at law, can combine both professions in teams to apply their technical and legal know-how on the specific problem of the client as well as acting more effectively before both types of courts.

The Recent Revision of the German Civil Procedural Code – does it allow "US style" discovery?

A fresh wind in German patent infringement suits is expected by many practitioners of the reform of the German Civil Procedural Code (ZPO) which has come into force in January of 2002. Since the burden of proof lies with the plaintiff, the suing party is often in the unfortunate position to have to produce evidence from the opponent's sphere about the imitation or illegal commercial use of its patented invention. Before the reform of the ZPO, the court did not support the plaintiff in this respect - contrary to US procedure, where usually the procurement and submission of evidence is compulsory by order of the court. In Germany, however, up to now this legal concept was generally interpreted quite to the contrary, namely that "nobody can be forced to put a weapon in the hands of his enemy." By the amendment of §§ 142, 144 ZPO, the door to a court-ordered clarification of the factual situation has been opened to some extent. Now the judge can order submission and inspection of evidence from either party as well as from thirds not involved in the suit. The coming months and related case law will show to what extent patent owners and courts will use this instrument, particularly as there is still major reservation with respect to the opponent's interest for secrecy, reasonableness and the right to refuse to give evidence.

The time factor

In first instance, patent infringements are mostly decided within a maximum of one year or even less, varying with the workload of the respective court, while the appeal instance (Oberlandesgericht) takes between one and two years. In international comparison, this is a rather fast procedure, and the revision of the ZPO has introduced a number of measures for accelerating civil lawsuits which may also lead to a further streamlining and shortening of patent infringement suits.

In contrast to Anglo-Saxon procedure, there is, as a rule, no lengthy and cost intensive cross-questioning of experts and witnesses. Court hearings in patent cases rarely take longer than a couple of hours. The argumentation and giving of evidence is submitted in written briefs before the start of the main court session.


Generally, the owner of a patent is entitled to calculate and to assert damages in three different ways. The purpose of awarding damages is to put the plaintiff into the position he would have been in had the infringement not occurred. No punitive damages are known under German civil law and there is no concept of maximum or minimum damage. The patentee may assert damages on the basis of "lost profit", which includes the profit not obtained through the infringing actions. The amount of "lost profit" has to be estimated by the court under all special influences which are, in particular, the profit margins of the concrete product. This assessment of the evidence means a relief for the patentee who generally has the burden of proof. The claimant has to demonstrate and calculate his damage and to disclose his internal calculation. The assessment of damages on the basis of "lost profit" requires that the patentee actually distributes or at least commercially exploits the invention.

As a further option, the patentee is entitled to claim the profit achieved by the infringer. The infringer's profit is not considered to be identical with the profit generally achieved by selling the specific infringing product, but concerns only profit which could only have been achieved as a consequence of the patent infringement.

In the majority of cases, the patentee is alternatively entitled to assert payment of a reasonable license fee, which he would have obtained by a third party. The case law clearly states that the infringer is to be treated as if he had concluded a license agreement under reasonable conditions.

The above three different options to calculate damages cannot be asserted cumulatively. Rather, the patentee has to decide which of these three options he will use to concretely calculate the damages. This decision can be made until the claim is fulfilled or a final assessment by the court is reached.


The losing party has to pay the court fees and reimburse the winning party for its statutory attorneys’ fees and related expenses such as travel and translation costs. The cost reimbursement for attorney and patent attorney fees follows a statutory fee regulation (BRAGO) which determines attorney's fee according to the value in litigation fixed by the court. The value in litigation is a measure for the value of the case for the plaintiff, including potential damages and the value of a cease and desist order. For typical values of litigation between € 500.000,- and € 5.000.000,- , the total cost risk of a patent infringement lawsuit in first instance ranges between € 50.000,- and € 250.000,- for higher values in litigation, the cost risk increases roughly linearly.

For the second instance the cost risk is roughly thirty percent higher than for the fist instance; for the third instance the cost risk is roughly twice as high as for the first instance. Therefore, the total cost risk of a patent infringement lawsuit through all three instances varies in the above example on a range of about € 170.000,- to about € 830.000,-

Provided that plaintiff can prove a clear case of patent infringement and there is an urgent need for a quick decision, patent owners can in appropriate cases stop the import and distribution of their competitor's patent infringing product by way of a preliminary injunction with a court order to cease and desist further infringing acts.

In the majority of cases, the strategy of the suing party will therefore focus on obtaining a permanent or preliminary injunction.


The special competence in patent law of German judges and law firms is providing for the parties considerable reliability which, along with the streamlined procedure and comparatively low costs, are making a patent infringement suit in Germany a calculable and not unattractive venture. Even though the reform of the German civil procedural code may not lead to spectacular US-style discovery of files and other documents, patent infringement suits in this country are promising to become an even more thrilling confrontation of highly specialized experts at the crossroads of modern technology and contemporary jurisdiction.

© by Reinhardt Schuster, 2002. This article was first published with Globe White Page, in "Building and enforcing intellectual property value", London 2002.

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.




To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions