1. The German Experience: Patent litigation and nullification cases
Dr. Oliver Schön, Judge at the District Court Munich I Moscow/ Skolkovo, 1st of December Technical knowledge in IP cases
The German Experience:
Patent litigation and nullification cases

2. Introduction Overview Bifurcation system Role of patent attorneys
The Federal Patent Court
Infringement cases
Role of patent attorneys
What are technical questions?
Court appointed experts
Private experts
Summary

3. German Patent and Trademark Office
Bifurcation System
Federal Supreme Court
Higher Regional Court
District Court
Infringement
Federal Patent Court
German Patent and Trademark Office
Nullification

4. Jurisdiction of the Federal Patent Court in Patent Cases
Opposition against decisions of the German Patent and Trademark Office
Refusal of patent registration
Opposition of third parties
Panel of four judges (one legal judge, three technical judges)
Nullification of Patents (about 300 cases p.a)
German patents (20 %)
German part of European patents (80 %)
Panel of five judges (two legal judges, three technical judges)

5. Proceedings Federal Patent Court and Supreme Court handle facts
Concentration in one oral hearing
Principle of investigation
Since 2009: The Federal Patent Court is obliged to give a detailed indication concerning their understanding of the case in advance to the oral hearing
Speed up proceedings
Reduction of court expert appointments at the Federal Supreme Court

6. How to become a judge at the Federal Patent Court
Technical and legally qualified judges (total: 112 in 2012)
Legal judges (47 judges)
Lawyers of the German Patent and Trademark Office
Judges from regular courts
Technical judges (65 judges)
Senior patent examiners
According to their field of expertise

7. Patent Infringement Cases
12 Courts in Germany have jurisdiction
Specialized Chambers
Panel with three judges (presiding judge and two judges), all with legal education
Facts are handled at disctrict court and higher regional court
Federal Supreme Court: Only questions of law

8. Relation between infringement and nullification proceedings
No direct relation between proccedings
Duration until first instance judgement:
Infringement court: 12 – 16 month
Federal Patent Court: 18 – 24 month
Infringement court can stay proceedings, if:
There is an infringement
If there is a high possibility that the patent will be nullified (Burden of proof: defendant)

9. Role of patent Attorneys
University degree in a technical field
Two years additional legal education
There are about patent attorneys in Germany

10. Role of patent Attorneys
Germany: Loser pays all principle:
Refundable costs are based on the value of the case
In patent and trademark cases the costs for the lawyer and the patent attorney are refundable

11. How to present facts in a court case
Rule
Inter parte process: Each party has to present all facts that are necessary to establish the claim
Patent Attorney:
Provides a technical analysis of the subject matter
Lawyer:
Helps the patent attorney to prepare the technical facts in a way that the (legal) judges can understand the technical problem
Provides legal analysis

12. Questions of law/ technical questions
Legal question
Novelty
Inventive step
Scope of protection of the patent claim
Infringement
Theory of equivalence
Technical question
Technical details of the invention
Knowledge of the person skilled in the art

13. Use of court appointed experts
Possible evidence are:
Documents
Witnesses
Inspections
Court appointed experts
Hearing of parties (very limited)

14. Use of court appointed experts
Appointment of court experts is very rare in recent years
In infringement cases judges get well prepared data from the parties
In nullity cases the technical experience of the technical judges is sufficient
In appeal cases at the Federal Supreme Court the number of court expert appointments is reduced, because of the detailed advance indication

15. Use of private expert opinions
Private expert opinions are possible
They are handled as parties opinion
They should be – in general – covered in the judgement

16. Summary Bifurcation system speeds up infringement proceedings
Technical judges ensure technical knowledge in nullification proceedings
Court appointed experts rarely used in infringement proceedings, parties provide detailed technical explanations to the court

17. Thank your for your attention.