The German Experience: Patent litigation and nullification cases Dr. Oliver Schön, Judge at the District Court Munich I Moscow/ Skolkovo, 1st of December 2014 Technical knowledge in IP cases The German Experience: Patent litigation and nullification cases

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

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

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)

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

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

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

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)

Role of patent Attorneys University degree in a technical field Two years additional legal education There are about 3.000 patent attorneys in Germany

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

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

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

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

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

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

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

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