1. Judicial System in Germany for IPR Protection presented at the 2009 International Conference on Judicial Protection of IPR 10 September 2009, Chengdu, China by Dr. Klaus Grabinski Judge at the Federal Court of Justice, Germany

2. Judicial System in Germany for IPR Protection 2 I. General Three different approaches for IPR protection a)Civil law protection  Specialised and experienced courts  Patent owner (or any other entitled person) can sue for infringement  Remedies available  Most popular approach for IPR protection b)Criminal law protection  Some specialised public prosecutors and courts  Public prosecutor will conduct the investigation  Only wilful IPR infringement is a criminal offence  In practice generally only product piracy cases are dealt with by criminal law. Three different approaches for IPR protection a)Civil law protection  Specialised and experienced courts  Patent owner (or any other entitled person) can sue for infringement  Remedies available  Most popular approach for IPR protection b)Criminal law protection  Some specialised public prosecutors and courts  Public prosecutor will conduct the investigation  Only wilful IPR infringement is a criminal offence  In practice generally only product piracy cases are dealt with by criminal law.

3. 3 I. General c)Customs protection  Council Regulation (EC) No. 1383/2003 of 22 July 2003 and national law  On request of the IPR proprietor, detention of goods that are suspected of infringing the IPR.  Judicial control (see civil law protection) of whether the good are IPR infringing available  In practice customs protection is efficient in trademark infringement cases and in some patent cases. c)Customs protection  Council Regulation (EC) No. 1383/2003 of 22 July 2003 and national law  On request of the IPR proprietor, detention of goods that are suspected of infringing the IPR.  Judicial control (see civil law protection) of whether the good are IPR infringing available  In practice customs protection is efficient in trademark infringement cases and in some patent cases. 3Judicial System in Germany for IPR Protection

4. 4 II. Civil Law Protection 1)Jurisdiction a)Infringement (1)Specialized panels in IPR implemented at all court levels: (1)District Court (2)Court of Appeal (3)Federal Court of Justice (X th Senate) (2)Action for IPR infringement can generally be brought to the District Court where (1)the defendant is domiciled or, if it is a company, has its seat or (2)an act of infringement occurred or is likely to occur  This means that in most cases the plaintiff can choose where to bring his action.  Most popular District Courts for patent infringement litigations are the District Courts of Duesseldorf, Mannheim and Munich.  Since these Courts get so many cases the judges are quite experienced in dealing with patent infringement litigations. 1)Jurisdiction a)Infringement (1)Specialized panels in IPR implemented at all court levels: (1)District Court (2)Court of Appeal (3)Federal Court of Justice (X th Senate) (2)Action for IPR infringement can generally be brought to the District Court where (1)the defendant is domiciled or, if it is a company, has its seat or (2)an act of infringement occurred or is likely to occur  This means that in most cases the plaintiff can choose where to bring his action.  Most popular District Courts for patent infringement litigations are the District Courts of Duesseldorf, Mannheim and Munich.  Since these Courts get so many cases the judges are quite experienced in dealing with patent infringement litigations.

5. 5 II. Civil Law Protection (3)Appeal (1)Decisions of the District Court are subject to an appeal to the Court of Appeal (restricted de novo appeal). (2)Decisions of a Court of Appeal can be appealed (on law only) to the Federal Court of Justice, only if leave is given either by the Court of Appeal or the Federal Court of Justice. (3)Appeal (1)Decisions of the District Court are subject to an appeal to the Court of Appeal (restricted de novo appeal). (2)Decisions of a Court of Appeal can be appealed (on law only) to the Federal Court of Justice, only if leave is given either by the Court of Appeal or the Federal Court of Justice. 5Judicial System in Germany for IPR Protection

6. 6 II. Civil Law Protection b)Validity (1)Infringement Courts have no competence to decide on the validity of a patent or a trademark. (2)The competence lies with the European Patent Office, the Office for the Harmonisation of the Internal Market or the German Patent and Trademark Office in case of an opposition or with the Federal Patent Court in case of a patent nullity action. (3)The panels at the Federal Patent Court that decide on patent nullity actions are composed of (1)2 legal judges and (2)3 technical judges (qualified in the technology of the patent-in- suit). b)Validity (1)Infringement Courts have no competence to decide on the validity of a patent or a trademark. (2)The competence lies with the European Patent Office, the Office for the Harmonisation of the Internal Market or the German Patent and Trademark Office in case of an opposition or with the Federal Patent Court in case of a patent nullity action. (3)The panels at the Federal Patent Court that decide on patent nullity actions are composed of (1)2 legal judges and (2)3 technical judges (qualified in the technology of the patent-in- suit). 6Judicial System in Germany for IPR Protection

7. 7 2)Proceedings on the Merits a)Duration of proceedings (1)Patent Infringement proceedings (1)Average duration of a patent infringement proceedings first instance before the District Court: 1 year Provided no court expert is appointed (2)One formal hearing and one main hearing (practice at the Duesseldorf District Court) two main hearings if a court expert is appointed (3)Front-loaded proceedings Exchange of written submissions (generally two submission for each of the parties including the writ of complaint) All allegations have to be brought forward in the submissions (not only a skeleton of what the parties intend to allege!). (4)Hand-down of a court decision about 3 weeks after the main hearing 2)Proceedings on the Merits a)Duration of proceedings (1)Patent Infringement proceedings (1)Average duration of a patent infringement proceedings first instance before the District Court: 1 year Provided no court expert is appointed (2)One formal hearing and one main hearing (practice at the Duesseldorf District Court) two main hearings if a court expert is appointed (3)Front-loaded proceedings Exchange of written submissions (generally two submission for each of the parties including the writ of complaint) All allegations have to be brought forward in the submissions (not only a skeleton of what the parties intend to allege!). (4)Hand-down of a court decision about 3 weeks after the main hearing II. Civil Law Protection

8. 8 (2)Patent Nullity Proceedings (1)Average duration before the Federal Patent Court about 1 ½ years (2)Patent Nullity Proceedings (1)Average duration before the Federal Patent Court about 1 ½ years II. Civil Law Protection 8Judicial System in Germany for IPR Protection

9. 9 b)Evidence (1)General rule: Plaintiff has to prove his claim. Defendant has to prove his defences. (2)Claim to inspection Inspection a product or a process by the IPR proprietor on the premises of the defendant in ex-parte proceedings possible provided –there is a certain likelihood that the product or the process infringe the IPR (in particular a patent), –there is no other way to get the evidence (e.g. process is only carried out on the defendant’s premises) and –confidential information of the defendant is protected (e.g. a court appointed expert conducts the inspection and submits a report to the court). –there is a demonstrable risk of evidence being destroyed. The product or process has to be specified. No fishing expeditions, no discovery. b)Evidence (1)General rule: Plaintiff has to prove his claim. Defendant has to prove his defences. (2)Claim to inspection Inspection a product or a process by the IPR proprietor on the premises of the defendant in ex-parte proceedings possible provided –there is a certain likelihood that the product or the process infringe the IPR (in particular a patent), –there is no other way to get the evidence (e.g. process is only carried out on the defendant’s premises) and –confidential information of the defendant is protected (e.g. a court appointed expert conducts the inspection and submits a report to the court). –there is a demonstrable risk of evidence being destroyed. The product or process has to be specified. No fishing expeditions, no discovery. I. Civil Law Protection 9Judicial System in Germany for IPR Protection

10. 10 c)Experts (1)Decision of the court to take expert evidence (2)Expert evidence in infringement proceedings at the District Court is taken generally only in about 10 to 15 % of all cases. (3)Expert evidence is taken mainly in order to establish facts with regard to the attacked product or process E.g.: Does the chemical product of the defendant contain substance X as provided for in the patent claim? (4)In the decision to take evidence the court will ask questions to the expert. (5)The expert (mainly university professors) is appointed by the court. (6)The expert submits a written opinion. (7)The parties comment the opinion. (8)Upon request the expert is questioned by the court and the party representatives in a final court hearing. (9)The court will issue the judgement after the hearing. c)Experts (1)Decision of the court to take expert evidence (2)Expert evidence in infringement proceedings at the District Court is taken generally only in about 10 to 15 % of all cases. (3)Expert evidence is taken mainly in order to establish facts with regard to the attacked product or process E.g.: Does the chemical product of the defendant contain substance X as provided for in the patent claim? (4)In the decision to take evidence the court will ask questions to the expert. (5)The expert (mainly university professors) is appointed by the court. (6)The expert submits a written opinion. (7)The parties comment the opinion. (8)Upon request the expert is questioned by the court and the party representatives in a final court hearing. (9)The court will issue the judgement after the hearing. I. Civil Law Protection 10Judicial System in Germany for IPR Protection

11. 11 d)Stay of Infringement Proceedings (1)If the defendant claims the invalidity of the patent or the trademark he has to commence a separate opposition proceeding, if still possible, or a nullity action. (2)With regard to a pending parallel opposition or nullity action the defendant can apply for a stay of the patent or trademark infringement proceeding. (3)However, the infringement courts will stay proceedings only if there is a preponderant probability that the patent or the trademark will be revoked. (4)In patent proceedings this can generally not be assumed if the closest prior art in the invalidity proceedings was already considered during prosecution or if the attack is only based on prior art to establish that the patent lacks inventiveness. d)Stay of Infringement Proceedings (1)If the defendant claims the invalidity of the patent or the trademark he has to commence a separate opposition proceeding, if still possible, or a nullity action. (2)With regard to a pending parallel opposition or nullity action the defendant can apply for a stay of the patent or trademark infringement proceeding. (3)However, the infringement courts will stay proceedings only if there is a preponderant probability that the patent or the trademark will be revoked. (4)In patent proceedings this can generally not be assumed if the closest prior art in the invalidity proceedings was already considered during prosecution or if the attack is only based on prior art to establish that the patent lacks inventiveness. I. Civil Law Protection 11Judicial System in Germany for IPR Protection

12. 12 e)Remedies (1)Injunctive relief (cease and desist) (2)Information on the origin and distribution networks of the IP infringing products (names and addresses of producers, distributors, etc., quantities and prices of products, etc.) (3)Destruction, Recall and definitive removal of infringing products (4)Damages, calculated on the basis of Lost profits Infringer’s profits Lump sum (licence analogy) (5)Publication of the court decision (6)Legal costs Reasonable legal costs and other expenses incurred by the winning party shall be borne by the loosing party. e)Remedies (1)Injunctive relief (cease and desist) (2)Information on the origin and distribution networks of the IP infringing products (names and addresses of producers, distributors, etc., quantities and prices of products, etc.) (3)Destruction, Recall and definitive removal of infringing products (4)Damages, calculated on the basis of Lost profits Infringer’s profits Lump sum (licence analogy) (5)Publication of the court decision (6)Legal costs Reasonable legal costs and other expenses incurred by the winning party shall be borne by the loosing party. I. Civil Law Protection 12Judicial System in Germany for IPR Protection

13. 13 3)Preliminary injunction a)Preliminary injunction are issued rarely in patent infringement cases and more often in trademark infringement cases. b)The validity and the infringement have to be obvious and the request of plaintiff has to be urgent. c)Ex-parte injunction are possible but are not often issued in patent cases (e.g. product piracy products exhibited at a trade fair). d)In most patent cases a date for a (one and only) court hearing will be set. e)The hearing will be prepared by written statements of the parties. f)Appeals from decisions of the District Court go to the Court of Appeal. No further appeal. 3)Preliminary injunction a)Preliminary injunction are issued rarely in patent infringement cases and more often in trademark infringement cases. b)The validity and the infringement have to be obvious and the request of plaintiff has to be urgent. c)Ex-parte injunction are possible but are not often issued in patent cases (e.g. product piracy products exhibited at a trade fair). d)In most patent cases a date for a (one and only) court hearing will be set. e)The hearing will be prepared by written statements of the parties. f)Appeals from decisions of the District Court go to the Court of Appeal. No further appeal. I. Civil Law Protection 13Judicial System in Germany for IPR Protection