Answer ... 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.

Answer ... 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.

Answer ... 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.

Answer ... 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.

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

Answer ... 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.

Answer ... 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.

Answer ... 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).

Answer ... 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.

Answer ... 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.

Answer ... No.

Answer ... 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.

Answer ... 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.

Answer ... 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.