1. Heinz Goddar and Carl-Richard Haarmann Boehmert & Boehmert
Civil, Product Piracy, and Criminal Patent Enforcement Measures in Germany – and how to Defend
Heinz Goddar and Carl-Richard Haarmann
Boehmert & Boehmert
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2. The German Practice on Preliminary Injunctions Orders
Outline
The German Practice on Preliminary Injunctions Orders
The German Practice on Border Seizures
The German Practice on Police Raids
The Necessity of Freedom to Operate Searches
The Benefits of a Protective Memorandum
General Strategy to avoid or reduce Preliminary Injuctive Orders, Customs Seizures and Police Raids
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3. The German Practice on Preliminary Injunctive Orders
The German Practice on Preliminary Injunctive Orders
In Patent infringement matters it is possible for Patent owners in case of infringement to file patent infringement action with a civil court
Such proceedings are quite speedy and efficient, but do not provide for immediate relief because the infringement can not be stopped until at least a preliminarily enforceable judgment has been rendered
In addition or alternatively to main proceedings the German Civil Procedural Code (ZPO) provides for the possibility to obtain a preliminary injunctive order
Such court order includes a cease and desist order and mostly an order for limited information disclosure, it can also include a seizure order
No damage claims or extensive information disclosure claims are awarded to the Patent owner in a PI
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4. How to obtain a Preliminary Injunctive Order?
How to obtain a Preliminary Injunctive Order?
A request for PI can be filed with the locally competent IP court
No prior warning necessary
IP owner needs to show
- that he is owner of a granted German patent/ German part of European patent
- that there is reason to assume that the underlying Patent is valid
- that there is a clear case of infringement
- that the defendant is responsible for this infringement
- that the case is urgent (1 month after knowledge of infringement)
Case and Patent may not be too complicated
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5.
How is a Pl granted?
In many cases the IP court (District Court) issues the PI within 48 hours without oral proceedings and without notifying the defendant
Court may reject the request or summon oral proceedings, but this does not happen in straight forward cases
In patent infringement cases courts tend to summon oral proceedings before granting a PI if the patent has not been subject to opposition or survived nullity action
Once the PI is granted the court still does not notify the defendant, this is the plaintiff’s part
Plaintiff has 1 month to serve the defendant with the PI, in most cases with the help of a bailiff
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6. How are Preliminary Injunctive Orders enforced?
How are Preliminary Injunctive Orders enforced?
Upon service of the PI the defendant must immediately obey
If the PI includes a seizure order plaintiff will seize the products and keep them in custody until a final decision has been rendered by the civil court
If defendant does not obey the Civil court will fix severe punishment fees or even issue an arrest order against the defendant
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7. Legal Remedies for the Defendant
Legal Remedies for the Defendant
Appeal to the Civil Court
The court will then summon oral proceedings which will, depending on the case, be held on very short notice
In these oral proceedings the parties have to present all evidence, the court will not consider any facts or evidence not available in the oral hearing
After oral proceedings the Court will issue a judgment which can be appealed by the losing party
If the court maintains the PI the defendant must continue to obey
Defendant can force plaintiff to file main court action
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8. Thus everybody doing business in Germany must try to avoid PIs
Conclusion
PIs are a very strong and efficient weapon in the hands of a patent owner in Germany
They are easy to obtain, easy to enforce, hard to appeal and often come without prior warning at unexpected and unwelcome occasions (trade exhibitions)
The consequences of a PI for the defendant are nearly as severe as the consequences of a full judgment
In many cases the whole battle is already lost for defendant before he even knows that he is under attack
Thus everybody doing business in Germany must try to avoid PIs
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9. The German Practice on Border Seizures
The German Practice on Border Seizures
The German border seizure regime is very strict and efficient
Any patent owner can file a general request for customs seizure
Basis: granted German patent/ German part of European patent
Only some general information is provided to customs officers who are not able to understand and analyze complicated technical issues
If upon importation customs is suspecting an infringement, goods will be preliminarily seized
Importer and IP owner will be notified
If importer does not oppose to seizure within 10 working days, goods will be finally seized and destroyed
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10. How to react to Border Seizures
How to react to Border Seizures
Within 10 working days importer can object to the seizure
In this case the patent owner must obtain from a civil court a PI including a seizure order or IP owner must file main court action
Otherwise customs will lift the preliminary seizure and release the goods
If the seized goods are indeed infringing, importer should not oppose to the seizure and rather try to quickly negotiate a solution with the patent owner
If the seized goods are not infringing (or infringement or validity of patent is doubtful) importer should try to prevent patent owner from obtaining a PI
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11. The German Practice on Police Raids
The German Practice on Police Raids
Any willful infringement of a granted German patent/ German part of European patent constitutes a criminal offence under the laws of Germany
Patent owner can file a criminal complaint with police or public prosecutor
In urgent cases police can act on its own, but usually police will only conduct a raid and seizure action upon instruction by the public prosecutor
He can only initiate a raid after obtaining a search order from a criminal judge
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12. Requirements for a Search Order
Requirements for a Search Order
Criminal judge must have “reasonable initial suspicion” that a criminal offence is being or will be committed
He must believe that the patent infringement is being willfully committed
Basically, the judge (and the prosecutor) need to believe that the underlying patent is valid and being infringed
In patent infringement cases prosecutors and judges can not be able to judge on the validity of a patent and on potential infringement involving complicated technical issues
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13. Police raids on trade exhibitions are quite common in Germany
Conclusion
Police raids on trade exhibitions are quite common in Germany
Police raids related to suspected patent infringement used to be unusual due to the severe problems for prosecutors and judges to handle complicated technical matters
Yet, as previously explained, recently a huge raid has been conducted in Berlin during IFA 2008 (as well as 2009) based on a number of “essential patents” and the patent owners allegation that more or less everybody making use of certain technologies must infringe his patents
Thus importers and exhibitors must make sure to alert prosecutors and criminal courts in advance that complicated technical issues are involved and that they are not able to judge the questions of infringement and validity of the patent
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14. The Necessity of Freedom to Operate Searches
The Necessity of Freedom to Operate Searches
In view of the threats to potential patent infringers by PIs, main court actions, customs seizures and police seizures it becomes very obvious that it is very dangerous and can indeed be fatal for a company to infringe patents in Germany
Consequently, before introducing a new product in Germany it is of great importance to make sure that no patents are being infringed
This causes the need to conduct a freedom to operate search before launching a new product in Germany
It must be conducted by experienced patent attorneys with insight into the current German jurisdiction
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15. The Benefits of a Protective Memorandum
The Benefits of a Protective Memorandum
The most efficient tool to avoid customs seizures and police raids is the Protective Memorandum (also useful and well-known for/in Civil Enforcement Procedures)
There is no legal provision for a PM but legal practice has developed this tool over long years
A PM is a court writ to be filed with all civil courts that may potentially be locally competent for the specific case: depending on if the case is about a potential infringement of patent, trademark, design or copyright different courts will be competent
Usually, PMs are filed with about different District Courts throughout Germany, in addition there is an online central register for PMs, but not all District Courts are yet using this register
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16. The Contents of a Protective Memorandum
Parties of the conflict
Rough outline of the patent involved
Rough outline of the facts of the case
Rough outline of the history of the conflict (if any)
Reasons of the alleged infringer to assume that a potential request for PI is not justified:
- no infringement
- patent not valid
- case not urgent
- case too complicated to be decided in summary proceedings
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17. The Intended Effect of a Protective Memorandum
Main goal is to prevent court from issuing a PI without oral proceedings and without notifying the defender that a request for PI has been filed
In many cases the filing of a PI can even fully prevent the court from issuing a PI
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18. How do Civil Courts react to the Filing PMs?
They keep them on file for a certain period of time (no longer than 3 months)
If a request for PI for such case is received by the court, the PM will be submitted to the judge together with the PI request, so the court will consider both the complaint and the defense arguments at the same occasion
The court is free to decide:
- issue a PI despite the defense arguments
- refuse to issue a PI
- inform the plaintiff that oral proceedings must be summoned before a PI can be issued (plaintiff then often withdraws his complaint)
- immediately summon oral proceedings
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19. Why is a Protective Memorandum beneficial for the Defendant?
Only possibility to present defense arguments to the court before a PI can be issued
Helps prevent the issuing of unjustified PIs
At least helps winning time and reacting to the threat by preventing the issuing of a PI without oral proceedings
Thus, PMs are the best and most efficient tools in cases of potential patent infringement to defend against aggressive patent owners
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20. General Strategy to avoid or reduce Preliminary Injunctive Orders, Customs Seizures and Police Raids
In preparation for introduction of a new product a freedom to operate search should be performed
In preparation for trade exhibitions or in view of threats with infringement action a Protective Memorandum should be filed with all potentially competent civil courts
Copy of this PM should be sent to the Central Customs Authority of Germany (Zentralstelle Gewerblicher Rechtsschutz) and to the Public Prosecutor who might be locally competent (for example in the city where a trade exhibition is to be held)
This serves
- to alert customs and police/ prosecutors that not every claim of the patent owner in a request for PI, request for customs seizure or criminal complaint may be true and well founded
- to alert customs and police/ prosecutors that complicated technical issues are involved regarding infringement and validity which they cannot and should not try to judge
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21. By following this approach you can try to avoid infringements
Conclusion
Well in advance of the launch of a new product, freedom to operate searches should be performed
In view of a threat with patent litigation and in preparation of trade shows/ product presentations a Protective Memorandum should be filed if there is any reason to assume that any patent owner might feel tempted to launch an attack
Copies of this PM should be sent to the Central Customs Authority and to all potentially competent public prosecutors
By following this approach you can try to avoid infringements
Even more importantly you can try to avoid the extremely negative effects of PIs, customs seizures and police raids
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