1 Legal framework

1.1 What are the sources of patent law in your jurisdiction?

  • The Patent Act of 16 December 1980, last amended on 8 October 2017; and
  • The Patent Regulations of 1 September 2003, last amended on 10 December 2012.

1.2 Who can register a patent?

The applicant – that is, the inventor or the inventor's legal successor (eg, individual, firm, company). Foreigners and nationals who do not live in Germany must appoint a representative with a business address in Germany.

2 Rights

2.1 What rights are obtained when a patent is registered?

Any third party is prohibited from manufacturing, offering, putting on the market or using a product which is the subject matter of the patent, and from importing or stocking it for these purposes, without the consent of the patent owner.

Any third party is prohibited from using a process which is the subject matter of the patent without the consent of the patent owner or, if the third party knows or it is obvious in the circumstances that the use of the process is prohibited, from offering it for use within the scope of the Patent Act without the consent of the patent owner.

2.2 How can a patent owner enforce its rights?

In Germany, patents are enforced in the courts. Twelve specialised regional courts have jurisdiction to hear patent infringement cases at first instance.

Appeals against judgments of the regional courts are heard by the higher regional courts, which have similar specialist panels for patent litigation, comprised of three judges. There is one higher regional court for each regional court. On appeal, the higher regional courts can review issues of law and fact. However, the parties can introduce new facts only under limited circumstances (eg, if the facts were unknown during the first-instance proceedings).

2.3 For how long are patents enforceable?

Protection begins upon publication of grant of the patent in the Official Bulletin.

The duration of patents is 20 years from the day following the filing date; an extension is not possible (with the exception of supplementary protection certificates – see question 3.6).

3 Obtaining a patent

3.1 Which governing body controls the registration procedure?

A patent application should be submitted to any branch of the German Patent and Trademark Office (GPTO), whose main address is as follows:

German Patent and Trade Mark Office
Central Customer Care and Services
Zweibrückenstraße 12
80331 Munich, Germany
Tel: +49 89 2195 1000
Fax: +49 89 2195 2221

The filing requirements for an application are as follows:

  • the specification (applications may be filed in any language; but if not German, a German translation must be filed within three months or, in case of a translation of an English or French-language application, within 12 months of the application date or within 15 months of the priority date) (not applicable when nationalising a Patent Cooperation Treaty (PCT) application in Germany);
  • an abstract comprising the title and an extract of the disclosure, but not exceeding 150 words; if reference is made to a drawing, that drawing must be added;
  • the patent claims;
  • drawings (if designated);
  • a power of attorney for the representative (this can be filed later on and no legalisation is required); if the representative is a patent attorney or a lawyer, the GPTO will normally refrain from asking for a power of attorney;
  • a declaration of inventorship (to be filed within 15 months of the filing date or priority date respectively), containing the full name, profession and address of the inventor or inventors, and the date of assignment. The declaration of inventorship can be signed by the representative; and
  • a copy of any priority application (no certification required), to be filed within 16 months of the priority date, indicating the country, filing date and file number of the first application.

3.2 What is the cost of registration?

No answer submitted for this question.

3.3 What are the grounds to reject a patent application?

Patents cannot be granted for:

  • mere discoveries;
  • scientific theories and mathematical methods;
  • aesthetic creations;
  • schemes, rules and methods for performing mental acts, playing games or doing business;
  • computers programs as such;
  • presentations of information as such;
  • inventions whose commercial exploitation would be contrary to public order or morality, such as torture instruments, letter bombs and apparatus for illegal gambling or for the production of clearly harmful or dangerous food or drinks;
  • plant or animal varieties;
  • the human body at the various stages of its formation and development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene;
  • processes for cloning human beings;
  • processes for modifying the germ line genetic identity of human beings;
  • uses of human embryos for industrial or commercial purposes;
  • processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to humans; and
  • methods for treatment of the human or animal body by surgery or therapy and diagnostic methods.

3.4 What programmes or initiatives are available to accelerate or fast track examination of patent applications?

In response to a justified request for accelerated proceedings, urgency must be given to proceedings if the otherwise expected duration of the proceedings would lead to considerable disadvantages for the applicant. Requests for acceleration apply in principle only to the next procedural step, but that will be accelerated if the request for acceleration is granted.

To protect an invention internationally, an acceleration request under the Global Patent Prosecution Highway (GPPH) may be an interesting option. This allows innovators to apply for international protection and have their inventions examined more quickly. Participation in the GPPH is free of charge at the GPTO.

To participate in the GPPH, the applicant must have already filed a patent application with the same content and seniority at a GPPH partner office. In addition, the first filing office must have assessed the invention as patentable – at least for a patent claim. This means, for example, that the applicant must have obtained a patent or a positive PCT search report.

It is also possible to file a patent application simultaneously with several GPPH patent offices. As soon as one of these offices deems the invention to be patentable, the applicant can request accelerated examination at the other patent offices with the same claims. In submitting the request for accelerated examination, the applicant may have to file suitably adapted patent claims. In this case, the authorities can mutually use their work and search results. However, they are not bound by the work results of the other offices.

3.5 Are there any types of claims or claiming formats that are not permissible in your jurisdiction (eg, medical method claims)?

In Germany, the Federal Court of Justice has held that a Swiss-type claim drafted in the format "The use of a compound X for the manufacture of a medicament for treating condition B, wherein the medicament is administered in a dosage regime" does not comply with Section 5(2) of the Patent Act (Decision X ZR 236/01 – Carvedilol II, dated 19 December 2006). However, the court considered the following, slightly modified wording allowable: "The use of a compound X for the manufacture of a medicament for treating condition B, wherein the medicament is prepared to be administered in a dosage regime."

A mere medical method claim is excluded from patentability in Germany

3.6 Are any procedural or legal mechanisms available to extend patent term (eg, adjustments for patent office delays, pharmaceutical patent term extension or supplementary protection certificates)?

A supplementary protection certificate (SPC) is a way to obtain extended protection for medicinal products and plant protection products. It is true that the SPC is a sui generis IP right. However, since the SPC has the same effects during its lifetime as the patent on which it is based, the protection initially conferred by the patent is de facto extended by the SPC. However, the protection conferred by a certificate extends only to the product covered by the authorisation to place the corresponding medicinal or plant protection product on the market, and specifically extends to any use of the product as a medicinal or plant protection product that has been authorised before the expiry of the SPC.

3.7 What subject matter is patent eligible?

Patents shall be granted for technical inventions which are new, involve an inventive step and are susceptible of industrial application (Section 1(1) of the Patent Act).

This also applies to inventions concerning products that consist of or contain:

  • biological material;
  • a process by means of which biological material is produced, processed or used; or
  • biological material which is isolated from its natural environment or produced by means of a technical process, even if it previously occurred in nature (Section 1(2) of the Patent Act).

‘Biological material' means any material containing genetic information and capable of reproducing itself or being reproduced in a biological system. If an invention concerns biological material, a sample of this biological material capable of reproducing itself may be deposited – instead of a repeatable process of supplying or manufacturing – for the purposes of disclosing the technical information (see also Information Leaflet X 1200).

If an invention is based on biological material of plant or animal origin, or if it uses such material, the application should include information on the geographical origin of such material, if known (Section 34a, first sentence of the Patent Act).

In particular, the following are not protectable as patents (Sections 1(3) of the Patent Act):

  • discoveries (ie, finding something that already exists, but was previously unknown, such as magnetism), as well as scientific theories and mathematical methods;
  • aesthetic creations (however, design protection may be obtained for shapes, patterns and colour configurations if the relevant requirements are met);
  • schemes, rules and methods for performing mental acts (eg, building plans, dress patterns, teaching methods for human beings and animals, musical notes, shorthand systems), for playing games or for doing business (eg, accounting systems), and computer programs as such (ie, insofar as they do not contain a technical teaching);
  • presentations of information (eg, tables, forms and typographical arrangements); and
  • constructions and processes which cannot be carried out – for example, because they are contrary to the laws of nature (eg, a machine that is supposed to operate without energy supply (perpetual mobile engine)).

Furthermore, patents cannot be granted in respect of:

  • the human body at the various stages of its formation and development, including germ cells, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene (Section 1a of the Patent Act);
  • inventions whose industrial exploitation would be contrary to public order or morality (Section 2 of the Patent Act); such violation, however, cannot merely be derived from the fact that the use of the invention is prohibited by law or regulation;
  • processes for cloning human beings and for modifying the germ line genetic identity of human beings;
  • uses of human embryos for industrial or commercial purposes (Embryo Protection Act);
  • processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes;
  • plant and animal varieties, essentially biological processes for the production of plants and animals, and plants and animals that are exclusively produced by such processes (Section 2a(1) no 1 of the Patent Act); and
  • methods for treatment of the human and animal body by surgery or therapy and diagnostic methods (Section 2a(1) no 2 of the Patent Act).

3.8 If the patent office does not grant a patent, is an appeal available and to whom?

The appeal must be filed at the GPTO and the GPTO has a remedy.

An appeal against decisions of the GPTO is provided for (Sections 73 and following of the Patent Act). The appeal procedure is a genuine second-instance procedure, in which the challenged decision is reviewed in law and in fact. The review in factual terms may be extensive. The subject of the appeal is the appellant's request, not the challenged decision. Thus, the Senate can decide on the substance of the case itself.

The appeal proceedings of the Patent Court require a decision on the merits (order).

Under Section 79 II of the Patent Act, the contested decision may also be revoked and referred back to the GPTO.

The appeal shall be decided by means of a decision. Oral proceedings are not mandatory.

4 Validity/post-grant review and/or opposition procedures

4.1 Where can the validity of an issued patent be challenged?

Opposition: Within a period of nine months of grant, which cannot be extended, an opposition against the patent may be filed by anybody before the German Patent and Trademark Office (GPTO).

Nullification action: A granted patent may be annulled at any time during its duration, or in special cases even thereafter, through a nullification action. The nullification action may be lodged against the patent owner for the same reasons as an opposition, but not during the nine-month opposition period and not while a filed opposition remains pending. A nullification action must be filed at the Federal Patent Court.

4.2 How can the validity of an issued patent be challenged?

Opposition: Within a period of nine months of grant, which cannot be extended, an opposition against the patent may be filed by anybody before the GPTO.

Nullification action: A granted patent may be annulled at any time during its duration, or in special cases even thereafter, through a nullification action. The nullification action may be lodged against the patent owner for the same reasons as an opposition, but not during the nine-month opposition period and not while a filed opposition remains pending. A nullification action must be filed at the Federal Patent Court.

4.3 What are the grounds to invalidate an issued patent?

The grounds for revocation are as follows:

  • lack of patentability;
  • lack of ability to carry out the patented invention;
  • inadmissible extension of the patent's subject matter in comparison to the application;
  • usurpation of an invention (this may be claimed only by the aggrieved party); or
  • extension of the patent's scope of protection.

4.4 What is the evidentiary standard to invalidate an issued patent?

Opposition: A patent shall be presumed valid. The burden of establishing the invalidity of a patent or any claim thereof rests on the party asserting such invalidity.

Nullification action: A patent shall be presumed valid. The burden of establishing the invalidity of a patent or any claim thereof rests on the party asserting such invalidity. In the case of a nullification action, this means that the party challenging the validity of a granted patent in proceedings before the court bears the burden of producing clear and convincing evidence to support its factual assertions.

4.5 What post-grant review or opposition procedures are available for third parties to challenge the validity of a patent?

Oppositions and nullification actions.

4.6 Who can oppose a granted patent?

Anybody, with very few exceptions, such as the vendor of the patent.

4.7 What are the timing requirements for filing an opposition or post-grant review petition?

Opposition: Within a period of nine months of grant, which cannot be extended, an opposition against the patent may be filed by anybody before the GPTO.

Nullification action: A granted patent may be annulled at any time during its duration, or in special cases even thereafter, through a nullification action. The nullification action may be lodged against the patent owner for the same reasons as an opposition, but not during the nine-month opposition period and not while a filed opposition remains pending. A nullification action must be filed at the Federal Patent Court.

4.8 What are the grounds to file an opposition?

The grounds for revocation are as follows:

  • lack of patentability;
  • lack of ability to carry out the patented invention;
  • inadmissible extension of the patent's subject matter in comparison to the application;
  • usurpation of an invention (this may be claimed only by the aggrieved party); or
  • extension of the patent's scope of protection.

4.9 What are the possible outcomes when an opposition is filed?

Total revocation, partial revocation or maintenance of the patent.

4.10 What legal standards will the tribunal apply to resolve the opposition or challenge, and which party bears the burden of proof?

Each party bears the burden of proving the facts which it alleges. In opposition proceedings, the opponent bears the burden of proving the existence of the grounds for revocation. This burden of proof is mitigated by a principle of official investigation.

In a nullification action, the plaintiff for annulment bears the burden of proving the existence of the grounds for revocation.

The standard of proof is the overriding probability. This standard of proof is lower than the standard of proof for criminal proceedings and corresponds to the burden of proof in civil proceedings.

4.11 Can a post-grant review decision be appealed and what are the grounds to appeal?

Opposition procedure decisions of the GPTO can be appealed to the GPTO. However, the procedure takes place at the Federal Patent Court.

Nullification procedure decisions of the Federal Patent Court can be appealed to the German High Court.

5 Patent enforceability

5.1 What makes a patent unenforceable?

A patent becomes unenforceable if it is revoked on one of the following grounds:

  • lack of patentability;
  • lack of ability to carry out the patented invention;
  • inadmissible extension of the patent's subject matter in comparison to the application;
  • usurpation of an invention (this may be claimed only by the aggrieved party); or
  • extension of the patent's scope of protection.

5.2 What are the inequitable conduct standards?

In rare exceptions, misconduct is important in this regard (eg, violation of fair, reasonable and non-discriminatory rules).

5.3 What duty of candour is required of the patent office?

Violation of the duty of candour does not result in the invalidity or unenforceability of a patent.

6 Patent infringement

6.1 What Constitutes Patent Infringement?

The scope of protection of a patent is defined by its claim(s) (Section 14 of the Patent Act and Article 69 of the European Patent Convention 1973 (EPC)). Therefore, patent infringement is assessed by comparing the features of a product or process to those of a patent claim. If the product or process reads on all features of the claim, the patent is infringed by anyone that, in Germany and without the consent of the patent owner:

  • in the case of a product claim, manufactures, offers for sale or places the product on the market (or imports or possesses the product for such purposes); or
  • in the case of a process claim, implements the process, offers the process for implementation or, in the case of a manufacturing process, does any of the acts mentioned above in relation to a product directly obtained by the process.

To determine whether a product or process violates a patent claim, the court must determine the meaning of the claim through the eyes of a notional person of average skill in the relevant art. Article 1 of the Protocol on the Interpretation of Article 69 of the EPC sets out the general principles that should guide the court in its claim construction. German courts apply these principles both to national and to European patents. In essence, Article 1 provides that the court should read the language of the relevant patent claim against the background of the patent description and the drawings, and should seek to strike a balance between fair protection for the patent owner and a reasonable degree of legal certainty for third parties.

If the court concludes that the relevant product or process falls within the meaning of the claim as construed on that basis, it will consider the patent to be ‘literally infringed', subject to any applicable defences of the alleged infringer.

If the relevant product or process does not fall within the meaning of the claim as construed by the court, it may still infringe the patent by ‘equivalent means' under the doctrine of equivalents. This is determined by the following test:

  • Is the technical problem underlying the invention solved by an alternative means that is different from that claimed in the patent, but which nevertheless solves the problem with the same technical effect?
  • Would the common general knowledge have enabled the skilled person to identify the alternative means without inventive step on the priority date?
  • Are the considerations leading the skilled person to the alternative means closely linked to the essence of the technical teaching protected by the claim so that the skilled person would consider an implementation using the alternative means to be equivalent to the original (literal) implementation? This final part of the test is not satisfied if:
    • the relevant patent claim demonstrably reflects a deliberate selection over a wider disclosure in the patent or a deliberate limitation during prosecution for substantive reasons (eg, to avoid prior art as opposed to formal reasons, such as avoiding an inadmissible extension); and
    • assuming equivalence would effectively result in a reversal of that selection or limitation.

6.2 Does your jurisdiction apply the doctrine of equivalents?

If the relevant product or process does not fall within the meaning of the claim as construed by the court, it may still infringe the patent by ‘equivalent means' under the doctrine of equivalents. This is determined by the following test:

  • Is the technical problem underlying the invention solved by an alternative means that is different from that claimed in the patent, but which nevertheless solves the problem with the same technical effect?
  • Would the common general knowledge have enabled the skilled person to identify the alternative means without inventive step on the priority date?
  • Are the considerations leading the skilled person to the alternative means closely linked to the essence of the technical teaching protected by the claim so that the skilled person would consider an implementation using the alternative means to be equivalent to the original (literal) implementation? This final part of the test is not satisfied if:
    • the relevant patent claim demonstrably reflects a deliberate selection over a wider disclosure in the patent or a deliberate limitation during prosecution for substantive reasons (eg, to avoid prior art as opposed to formal reasons, such as avoiding an inadmissible extension); and
    • assuming equivalence would effectively result in a reversal of that selection or limitation.

6.3 Can a party be liable if the patent infringement takes place outside the jurisdiction?

The export of a patented product is regarded as patent infringement. Although a party can be liable if the patent infringement takes place outside the German jurisdiction, the German courts normally deny their legal competence.

6.4 What are the standards for wilful infringement?

A precondition of patent infringement is an infringing act. This could be the manufacture, offer or placing on the marketing of products that are covered by the patent. The plaintiff must substantiate these actions during the court proceedings and also prove them if the defendant disputes them.

6.5 Which parties can bring an infringement action?

The patent owner and an exclusive licensee may bring an infringement action.

6.6 How soon after learning of infringing activity must an infringement action be brought?

An infringement action must be brought within three years of learning of the infringing activity.

However, in general, the sooner the action is filed, the better – unless use of the patent can be easily avoided and the interest in licence fees is paramount.

6.7 What are the pleading standards to initiate a suit?

German procedural law follows the concept of fact pleading. The plaintiff in patent infringement proceedings should submit sufficient facts so that the statement of claim can fully illustrate how the patent has been infringed. In German civil courts, the ‘principle of party presentation' applies. This means that the litigants themselves must submit all relevant facts. In the statement of claim, the plaintiff should offer to provide the necessary evidence to support its allegations.

6.8 In which venues may a patent infringement action be brought?

The patent owner may choose to file an action in any of the 12 first-instance infringement courts. The standards of the German courts are in theory the same. However, the courts vary both in experience and in the speed with which they try cases. Some courts are more plaintiff- friendly when it comes to claim construction, but they may have a tendency to suspend proceedings more easily in view of co-pending nullity proceedings.

There is no clear rule as to which court to choose. Usually, it is a safe choice to pick one of the big three courts (Dusseldorf, Mannheim or Munich).

6.9 What are the jurisdictional requirements for each venue?

The plaintiff has some liberty to choose the venue: that is, the court either the place where the infringement occurred or at the location of the defendant.

6.10 Who is the fact finder in an infringement action?

If there is a high likelihood of patent infringement, but material evidence is unavailable, the patent owner may ask to inspect the alleged infringer's premises and/or infringing devices (eg, as exhibited at a trade fair). Pre-trial discovery, to the extent that it is known in the United Kingdom and the United States, does not exist in Germany.

There is no jury in German court proceedings, including patent infringement proceedings. Professional judges discuss and assess all factual and legal issues. Although some German courts involve lay judges, this is never the case in patent litigation.

Another key point in German civil procedure, and thus in German patent infringement disputes, is the ‘principle of party presentation'. This means that the courts will decide only on facts and evidence that the parties submit during the proceedings. It is the parties' sole responsibility to establish the facts of a case. The principle ‘dabo mihi factum, dabo tibi ius' (‘Give me facts and you will be given justice') applies.

6.11 Does the fact finder change based on venue?

No.

6.12 What are the steps leading up to a trial?

Before bringing an action, the plaintiff should confirm that the patent register identifies it as the legitimate patent owner. If not, the plaintiff will need:

  • either an exclusive licence or authorisation from the legitimate patent owner; and
  • a personal interest in enforcing the patent.

The claimant must establish the facts of the infringement as accurately as possible. This can be done through test purchases or test orders. The claimant must take care to clarify the true liabilities in as much detail as possible – in particular, which places are offering or delivering infringing products. These preparatory measures should include complete documentation of the investigation.

Further steps – such as a warning letter or mediation/arbitration – are possible, but are not mandatory.

6.13 What remedies are available for patent infringement?

Under the Patent Act, a patent owner may seek various remedies where a court determines that patent infringement has occurred or is imminent. These claims are an inevitable consequence of a finding of a patent infringement, provided that all other requirements of the remedy at issue are met.

A patent holder's most powerful remedy against an infringer is a cease-and-desist order (injunction).

The main remedies sought by plaintiffs are:

  • (permanent) injunctions;
  • information and accounting;
  • damages;
  • destruction of infringing goods;
  • recall from distribution channels; and
  • publication of decisions.

Injunctive relief generally follows as an automatic legal consequence of a finding of infringement.

There are three accepted methods of damages calculation. The most important in practice are the licence analogy and infringer's profits.

6.14 Is an appeal available and what are the grounds to appeal?

All decisions of the district court in enforcement proceedings may be appealed. In the appeal proceedings, the district court will consider whether it wants to uphold, annul or confirm its decision. If the district court confirms its decision, it forwards the case to the higher regional court.

The higher regional court then decides, under its own competence and based on its own assessment of the facts and the law, on the imposition of measures of compliance such as administrative fine or arrest. It is not bound by the district court's findings and legal assessments.

7 Discovery

7.1 Is discovery available during litigation?

German patent litigation does not include pre-trial discovery. On filing a lawsuit, the plaintiff should already have enough information to substantiate its claims. The plaintiff should present this information to the court in the statement of claim.

The patent owner has several means to obtain information. These means are far less extensive than fully fledged pre-trial discovery in common law jurisdictions.

If one party has contested decisive facts of the case, the court will take evidence. Depending on the nature of the facts, evidence can be taken in particular by hearing witnesses or experts.

7.2 What kinds of discovery are available?

The right to submission and inspection can be asserted only against a person that is suspected either of being an infringer or of participating in an infringement. It is sufficient for the infringement not to have occurred yet, but to be imminent.

7.3 Are there any limitations to the amount of discovery allowed?

See question 7.2. The right to submission and inspection can only be asserted against a person that is suspected either of being an infringer or of participating in an infringement. It is sufficient for the infringement not to have occurred yet, but to be imminent.

8 Claim construction

8.1 When during a patent infringement action are claim terms defined by the tribunal?

In the first hearing, the court discusses with the party mainly questions of claim construction and patent infringement.

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

According to Article 69 of the European Patent Convention (EPC), the extent of the protection conferred by a European patent is determined by the claims, and the description and drawings are used to interpret those claims. All European jurisdictions agree that Article 69 of the EPC prioritises the patent claims over the description and drawings.

Although invalidity and infringement proceedings are separate, the two interact.

Attacking a patent in invalidity proceedings can also backfire on the infringer. This is particularly true if the Federal Patent Court adopts a broader claim construction than the infringement court and the invalidation attempt still fails. In that case, the infringer not only loses on one of its important defensive arguments, but also causes the infringement courts to consider the application of the Federal Patent Court's broader claim construction.

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

The claim terms define the scope of protection.

9 Remedies

9.1 Are injunctions available?

Yes, permanent injunctions are available.

9.2 What is the standard to obtain an injunction?

Injunctive relief generally follows as an automatic legal consequence of a finding of infringement.

9.3 Are damages available?

Yes.

9.4 What types of damages are available?

There are three accepted methods of damages calculation. The most important in practice are the licence analogy and infringer's profits.

9.5 What is the standard to obtain certain types of injunctions?

Injunctions are an automatic legal consequence of a finding of infringement.

9.6 Is it possible to increase or multiply damages due to a party's actions?

No.

9.7 Are sanctions available?

Wilful patent infringement is sanctioned under criminal law.

9.8 What kinds of sanctions are available?

Criminal sanctions (very rare).

9.9 Can a party obtain attorneys' fees?

According to German civil procedure law, the losing party must pay the winning party's costs, whether or not the losing party culpably caused the proceedings to take place. These costs include attorneys' fees, other necessary costs of the winning party and court fees. This applies to both infringement proceedings and invalidity proceedings.

9.10 What is the standard to obtain attorneys' fees?

See question 9.9.

Attorneys' fees are calculated on the basis of the amount in dispute according to the Law on the Remuneration of Attorneys.

10 Licensing

10.1 What patent rights can a party obtain through a licence?

A party can obtain all patent rights through a licence. If another person or legal entity wishes to use the technology protected by a patent, that person must either acquire the patent by virtue of a purchase agreement or obtain a licence to use the patent by virtue of a licence agreement.

10.2 What limits can a patent owner impose on a licence?

The licensee gains access to the patents, which the licensor possesses, in return for remuneration. Remuneration will typically take the form of a royalty payment, a lump sum and/or milestone payments, or a combination of one or more of these.

The parties may agree to limit the licence to certain fields of use – for example, by:

  • limiting the types of products for which the licence is granted (eg, by further defining the licensed products);
  • limiting the applications for which a patented process may be used;
  • limiting the acts which are permitted for the licensee; and
  • limiting the volume of the licensed products.

11 Antitrust

11.1 Are there any limits on patent protection due to antitrust laws?

The enforcement of patents is limited only in fair, reasonable and non-discriminatory cases for standard-essential patents.

Like any other agreements, licence agreements are subject to the limitations of competition law rules. Most relevant in Germany are the European antitrust rules.

Article 101 of the Treaty on the Functioning of the European Union prohibits two or more enterprises from entering into antitrust agreements for the purpose of limiting competition in a market by way of agreeing on coordinated prices, the division of markets or the like. Licence agreements – both patent licence agreements and know-how licence agreements – which contain any such restraints on competition are as a starting point covered by this prohibition; and agreements entered into in contravention of Article 101 may result in the invalidity of the agreement in question, as well as in substantial fines.

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.