(a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how)

Patents under the German Patent Act (Patentgesetz – PatG) protect new, non-obvious, and industrially applicable inventions for 20 years from the filing date. In accordance with both German and European legal traditions, a patentable invention must always constitute a creation in the field of technology, understood as every teaching that methodically utilizes controllable natural forces to achieve a causal, perceivable result. While computer programs are excluded “as such,” software patents are available if the software solves a concrete technical problem with technical means, such as determining technical features outside the data-processing system or taking account of the technical features of the hardware. The German Patent and Trade Mark Office (Deutsches Patent- und Markenamt – DPMA) administers the patent system, with the Federal Patent Court (Bundespatentgericht – BPatG) handling appeals and nullity proceedings.

Utility Models (Gebrauchsmuster) provide protection for technical inventions under the Utility Model Act (Gebrauchsmustergesetz – GebrMG). Often called “small patents,” utility models offer faster, less expensive protection for up to 10 years maximum . The utility model system is specifically designed to provide small and medium-sized enterprises with a simplified and cost-effective means of protecting their inventions. Unlike patents, utility models cannot protect processes and receive only formal examination without substantive examination for novelty and inventiveness.

Supplementary Protection Certificates (SPCs) extend patent protection for pharmaceutical and plant protection products under EU Regulation 469/2009 and 1610/96, administered by the DPMA. SPCs compensate for time lost during mandatory regulatory approval processes and may extend patent protection by up to 5 years.

Trade Secrets receive comprehensive legal protection under the Act on the Protection of Trade Secrets (Geschäftsgeheimnisgesetz – GeschGehG), which transposed EU Directive 2016/943 into German law. A trade secret is defined as information that: (1) is not generally known or readily accessible; (2) is of commercial value because it is secret; and (3) has been subject to reasonable steps by its lawful holder to keep it secret. The act closely follows the Trade Secrets Directive and implements nearly verbatim the definitions as well as the rules on lawful or unlawful acquisition, use and disclosure of trade secrets.

(b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees)

Trade Marks under the Trade Mark Act (Markengesetz – MarkenG) protect distinctive signs for goods and services. The Act transposes almost all trademark law provisions from the European Union Trademark Directive into national law. Protection is granted to various types of trademarks, including conventional marks (words, logos, names) and non-traditional marks (three-dimensional shapes, colors, sounds, smells, textures, and animations).

Use-based Trademarks: Germany recognizes trademark protection through use in commerce, where a sign has acquired public recognition as a trademark within the affected German trade circles. Such recognition presupposes that a not insignificant share of the addressed public perceives the sign as an indication of origin, even if the company name is unknown. A The required level of recognition depends on the circumstances of the individual case and must usually be proven by empirical surveys testing awareness and distinctiveness among the relevant public. Passing Off (unlauterer Wettbewerb) under the Act Against Unfair Competition (Gesetz gegen den unlauteren Wettbewerb – UWG) protects against misrepresentation and confusion in business activities. This provides unregistered protection for distinctive business identifiers and prevents unfair commercial practices. The UWG protects against misleading practices, comparative advertising and unfair product imitation. These provisions often overlap with trademark protection but remain relevant for unregistered signs and broader unfair competition scenarios.

Trade Names and Commercial Designations encompass both trade names and titles of works under German trademark law. These designations enjoy legal protection with exclusive rights pursuant to Section 15 of the Trademark Act. Company signs are defined as ‘signs used in trade as a name, company name or special designation of a business operation or an enterprise.’ Additional protection exists under the Commercial Code (§ 37) for business names and under the Civil Code (§ 12) for general name rights. Trade names constitute ‘trade names’ under Art. 1(2) Paris Convention, ensuring national treatment for Paris Convention beneficiaries.

Geographical Indications  under German law are protected by §§126-129 MarkenG for all goods and services used in trade to identify geographical origin, unless the term is generic. The German system protects against signs that mislead the relevant public as to geographical origin or the properties or quality of a product and provides enhanced protection for well-known geographical indications against unfair advantage or detriment to their reputation.

Collective and Certification Marks under the MarkenG protect symbols indicating group membership or compliance with specific standards, serving quality assurance and collective identification functions. Collective marks (§§97-106 MarkenG) are available to associations and groups to distinguish goods or services of their members, while certification marks (§§106a-106h MarkenG) indicate compliance with specific standards set by the mark holder. Both types implement the full harmonization provisions of EU Trademark Directive 2015/2436.

(c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how)

Copyright (Urheberrecht)  under the Copyright Act (Urheberrechtsgesetz – UrhG) protects original literary, artistic, musical, and scientific works, including computer programs. Under German law, copyright arises automatically upon creation of a qualifying work with no registration requirement. German copyright law is fundamentally personalistic in nature: the author is always the natural person who created the work, and rights initially vest in the individual creator. The system features a monistic fusion of moral and exploitation rights in a single author right, meaning copyright cannot be transferred during the author’s lifetime but only licensed. Moral rights include the right of first publication, paternity rights, and integrity rights, which are subject to balancing of competing interests. German law strictly distinguishes between authors’ rights and neighboring rights, which protect performers, phonogram producers, broadcasters, and database makers. Computer programs are specifically regulated in §§69a-69g UrhG, implementing the EU Software Directive.

Design Rights  under the Design Act (Designgesetz – DesignG) protect the aesthetic appearance of products through registration with the DPMA. Registered designs provide exclusive rights for up to 25 years, renewable in 5-year periods, protecting novel aesthetic features such as lines, contours, colors, shapes, texture, and ornamentation of products. German law requires formal registration and does not provide unregistered design protection under national law. However, unregistered Community designs under EU law automatically provide 3 years of protection throughout Germany and the EU for designs that meet novelty and individual character requirements, without requiring any registration formalities.

Plant Variety Rights (Sortenschutz) under the Plant Variety Protection Act (Sortenschutzgesetz – SortSchG) protect new plant varieties that are distinct, uniform, stable, and novel. The Federal Plant Variety Office (Bundessortenamt) administers these rights. Protection excludes essentially biological processes for plant production, which cannot be patented.

Semiconductor Topography Rights (Halbleiterschutz) under the Semiconductor Protection Act (Halbleiterschutzgesetz – HalblSchG) protect the three-dimensional configuration of electronic circuits integrated into semiconductor products.

Trade Secrets and Confidential Information as described above under inventions also protect valuable technical and commercial information in this category, including secret know-how, customer data, and proprietary processes not covered by other IP rights.

Patents provide protection for a maximum term of 20 years from the filing date, subject to payment of annual maintenance fees from the third year onwards. Patent applications are published 18 months after filing.

Utility Models offer protection for up to 10 years from registration, renewable in periods of 3, 6, and 8 years, subject to payment of renewal fees.

Trade Marks provide protection for 10 years from registration, with unlimited renewal possibilities for further 10-year periods upon payment of renewal fees.

Copyright protection lasts for 70 years from the death of the author for most works. After expiration, the work enters the public domain.

Registered Designs provide protection for up to 25 years from registration, renewable in 5-year periods, subject to timely payment of renewal fees.

Plant Variety Rights provide protection for up to 30 years e.g. for trees and vines, and 25 years for other varieties.

Semiconductor Topography Rights: protection lasts 10 years.

Trade Secrets can last indefinitely, provided secrecy is maintained and reasonable protection measures continue.

Extension Procedures: For almost all registered IP rights, maintaining protection throughout the maximum term requires timely payment of renewal or maintenance fees. Patents require annual maintenance fees from the third year onwards to maintain the 20-year maximum term. Trademarks can be renewed indefinitely in 10-year periods, while designs must be renewed every 5 years within their maximum 25-year term. Utility models require renewal fees at 3, 6, and 8-year intervals. Failure to pay within prescribed deadlines results in automatic lapse, though grace periods with additional fees are typically available for late payments. Beyond these standard renewal procedures, Supplementary Protection Certificates may extend patent protection for pharmaceutical and plant protection products by up to 5 years to compensate for regulatory approval delays.

Patents and Utility Models initially vest in the inventor(s), with the right belonging to the inventor or their legal successor. Germany follows the first-to-file principle, with priority accorded to the first person to file the application.

Trade Marks vest in the first applicant to file with the DPMA or the first user to establish rights through use in commerce, depending on the basis of protection claimed.

Copyright initially vests in the author(s) of the work, with the author always being the natural person who created the work. German law maintains the personalistic approach where rights initially vest in the individual creator.

Registered Designs typically vest in the designer or the person who commissioned the design, subject to employment agreements. Where a design is created by an employee in the course of employment, the right belongs to the employer unless otherwise provided by contract.

Employment Scenarios: Employee inventions are governed by the Employee Inventions Act (Arbeitnehmererfindungsgesetz – ArbEG). Inventions made within the scope of employment must be reported to the employer, who may claim rights through a claiming declaration. For copyright works, rights generally remain with the employee-author under the personalistic principle of German copyright law, though employers typically receive usage rights through employment contracts. However, for computer programs created by employees, all economic rights automatically transfer to the employer unless otherwise agreed, representing the sole exception to the general rule that copyright remains with the author.

Commission Works  require specific contractual provisions to transfer IP rights from creator to commissioner, as German law generally favors creator ownership. For copyright works, the author right remains with the creator and cannot be transferred, meaning commissioners can only acquire usage rights (Nutzungsrechte) through licensing agreements. This reflects the personalistic structure of German copyright law that maintains the inalienable connection between author and work.

Registered Rights requiring formal registration include:

• Patents (with the DPMA )
• Utility Models (with the DPMA)
• Trade Marks (with the DPMA)
• Registered Designs (with the DPMA)
• Plant Variety Rights (with the Federal Plant Variety Office)
• Semiconductor Topography Rights (with the DPMA – enforcement dependent on filing application)

Unregistered Rights that arise automatically include:

• Copyright (arises upon creation)
• Trade Secrets (arise through secrecy measures)
• Unregistered Design Rights (limited protection under EU law)
• Trade Names and Commercial Designations (arise through use)

Patent Applications may be filed by any person, including inventors, assignees, or their representatives. The procedure involves filing detailed technical disclosure and claims with the DPMA, followed by novelty search and substantive examination for patentability requirements (novelty, inventive step, and industrial applicability). Upon request, the DPMA carries out a patentability search, preliminary examination, and eventually full substantive examination.

Utility Model Applications follow simplified procedures with formal examination only. Any person may file, and protection begins immediately upon registration without substantive examination.

Trade Mark Applications may be filed by any person intending to use the mark in commerce. Applications must specify goods/services according to the Nice Classification. The DPMA examines applications for absolute grounds of refusal, assessing whether signs are distinctive enough to distinguish goods or services. Before registration, the office checks formal conditions, fee payment, and examines eligibility and absolute grounds for refusal. Accelerated examination procedures are available for additional fees.

Design Applications may be filed by designers, commissioners, or their successors. Applications require representations of the design and meet basic formal requirements only, as no substantive examination is conducted.

Plant Variety Applications may be filed with the Federal Plant Variety Office (Bundessortenamt) by breeders or their successors. The procedure requires demonstration that the variety is distinct, uniform, stable, and novel, with the office conducting growing tests or other necessary investigations to verify these requirements.

Semiconductor Topography Applications may be filed with the DPMA by any person entitled to the topography right. Applications must be filed within two years of first commercial exploitation, or for unexploited topographies, protection begins upon filing the application. Enforcement requires filing an application regardless of when the right initially arose.

Patent prosecution typically takes 2-3 years from filing to grant, depending on examination complexity and applicant responses to office actions.

Utility Model registration usually occurs within 2-4 months of filing, as no substantive examination is required.

Trade Mark registration typically takes 3-4 months from filing to registration, absent office actions or opposition proceedings. Accelerated examination procedures are available for additional fees, with the DPMA guaranteeing completion within 6 months, though in practice examinations are often completed within 3 – 4 weeks.

Design registration usually occurs within 1-2 months for immediate publication or up to 30 months for deferred publication applications.

Plant Variety registration typically takes 2-3 years due to required growing tests and technical examinations to verify distinctness, uniformity, stability, and novelty.

Semiconductor Topography registration usually occurs within 2-4 months of filing, as only formal examination is conducted without substantive assessment of the topography’s characteristics.

German law does not provide formal rights for third parties to participate in or comment on pending IP applications during the examination phase. However, third parties may submit informal observations or information to the examining offices, which the offices may consider at their discretion but are not obligated to take into account. Opposition or nullity proceedings are available only after registration and publication of the respective IP rights, such as trade mark opposition within 3 months of publication or nullity actions for patents, utility models, and designs after grant or registration.

German law does not provide formal rights for third parties to participate in or comment on pending IP applications during the examination phase. However, third parties may submit informal observations or information to the examining offices, which the offices may consider at their discretion but are not obligated to take into account. Opposition or nullity proceedings are available only after registration and publication of the respective IP rights, such as trade mark opposition within 3 months of publication or nullity actions for patents, utility models, and designs after grant or registration.

Patent Fees (national application) include:

• Application fees: €40 (electronic) /€60 (paper), including 10 patent claims; for each further claim the fee is increased by €20 (electronic)/ €30 (paper)
• Search fees: €300
• Examination fee after a search request has been filed: €150
• Examination fee without previous search request: €350
• Annual maintenance fees: starting from €70 (year 3) increasing progressively to €2,030 (year 20)

Utility Model Fees include:

• Application fees: €30 (electronic)/€40 (paper)
• Search fee (not necessary for registration): €250
• Renewal fees: €210 (years 4-6), €350 (years 7-8), €530 (years 9-10)

Trade Mark Fees include:

• Application fees: €290 (electronic)/€300 (paper) for up to 3 classes
• Additional class fees: €100 each
• Application fee for a collective and certification mark: €900
• Fees for accelerated examination: €200
• Renewal fees: €750 for up to 3 classes
• Class fee upon renewal (for the fourth class and for each additional class): €260
• Renewal fee for a collective and certification mark: €1,800

Design Fees include:

• Application fees single design: €60 (electronic)/€70 (paper)
• Application fees multiple application: €6 per design, minimum fee 60 Euro (electronic)/ €7, minimum fee €70 (paper)
• Renewal fees for each design registered: €90, €120, €150, and €180 for successive 5-year periods

Plant Variety Fees include:

• Examination fees: varies by plant type and examination complexity between €1,100 and €2,000
• Registration fee: €660
• Annual maintenance fee: varies by plant type from €100 for the first year to €1,100 for the sixth and following years.

Semiconductor Topography Fees include:

• Application fees: €300
• No renewal fees: protection for fixed 10-year term

Failure to pay renewal or maintenance fees within prescribed deadlines results in automatic lapse of the respective IP right. German law generally provides grace periods for late payment with additional fees to remedy unintentional non-payment. In cases where deadlines were missed despite due care, restoration of rights (Wiedereinsetzung in den vorigen Stand) may be available under the respective IP statutes, such as § 91 MarkenG for trademarks, requiring demonstration that the failure was unintentional and occurred despite reasonable precautions. The specific grace periods, additional fees, and restoration requirements vary depending on the type of IP right.

German law does not generally require specific forms for assignments of IP rights, allowing transfers through written agreements, electronic messages, or even implied conduct. However, written agreements are strongly recommended to clearly identify the rights being transferred and ensure legal certainty. Copyright under the UrhG cannot be assigned due to its personalistic nature tied to the author, but exclusive usage rights (ausschließliche Nutzungsrechte) may be transferred. For copyright, written form is required only for agreements about future works and unknown types of uses. Patents, utility models, trademarks, and designs may be assigned with or without associated businesses, with assignments becoming effective upon conclusion of the contract regardless of registration.

Registration of assignments with the DPMA is optional under German law, as assignments become effective upon conclusion of the contract rather than upon registration. The register entries serve merely as presumptions of entitlement rather than constitutive requirements for ownership. However, registration provides practical advantages for enforcement proceedings. For trademark proceedings before the DPMA under §28(2) MarkenG, assignees may only assert rights from the time when the transfer request has been received by the office. Registration provides constructive notice and legal certainty. For copyright, no central registry exists for transfers of usage rights.

German law does not prescribe specific forms for IP licenses, allowing licensing through written agreements, electronic messages, or even implied conduct. However, written agreements are strongly recommended to clearly define the licensed rights, territorial scope, and duration. Trade mark licenses should for example include quality control provisions to maintain trademark validity and prevent abandonment, specifying permitted uses and quality standards. Copyright licenses may be exclusive or non-exclusive and should clearly define the scope of permitted uses, with special requirements for agreements about future works and unknown types of uses which must be in writing. German copyright contract law provides comprehensive author-protective provisions, including unwaivable rights to equitable remuneration and rights of revocation in certain circumstances. For all licenses, clear identification of the licensed subject matter, territorial limitations, and duration helps ensure legal certainty and enforceability.

There is no requirement to register licenses under German law. License registration with the DPMA is optional for patents, utility models, designs, and trademarks, serving declaratory purposes only. Since registration is not mandatory, there are no legal consequences for failing to register a license. Unregistered licenses remain fully valid and enforceable between the contracting parties. Registration may provide practical benefits such as constructive notice and legal certainty, but the absence of registration does not affect the validity or enforceability of the licensing arrangement. Copyright licenses cannot be registered as no central registry exists for copyright licensing arrangements.

German law distinguishes significantly between exclusive and non-exclusive licensees regarding enforcement rights. Exclusive licensees generally have the right to enforce licensed IP rights independently, including filing infringement actions without joining the rights holder, though this may be subject to specific license agreement terms. Non-exclusive licensees typically require cooperation from the rights holder to enforce licensed rights and generally cannot sue for infringement independently. The distinction affects not only litigation standing but also the licensee’s ability to grant sub-licenses, with exclusive licensees generally having the right to grant sub-licenses while non-exclusive licensees may not grant sub-licenses unless expressly agreed with the licensor.

German law criminalizes all intentional infringements of German (and EU) IP rights under the respective IP statutes, including patents (§142 PatG), trademarks (§143 MarkenG), copyright (§106 UrhG), designs (§51 DesignG), and trade secrets (§23 GeschGehG). The basic penalty for intentional infringement is a fine or imprisonment for up to three years, with enhanced penalties of up to five years imprisonment for commercial-scale infringement. The mere attempts to infringe IP rights are also punishable. Criminal enforcement requires filing criminal complaints with the police or state prosecutors, who decide whether to pursue charges. For non-commercial infringement, prosecution typically occurs only upon motion of the injured party, unless authorities consider ex officio intervention imperative due to particular public interest in prosecution.

Civil Court Proceedings: Regional Courts (Landgerichte) have jurisdiction over IP infringement cases, with specialized IP chambers in major courts including Düsseldorf, Munich, Hamburg, Frankfurt and Mannheim.

Federal Patent Court (Bundespatentgericht) Proceedings: Handle patent and utility model validity challenges, trade mark opposition and cancellation proceedings, appeals, and certain IP disputes.

Administrative Proceedings: The DPMA handles opposition and cancellation proceedings for German trade marks and designs as well as various administrative matters.

Customs Enforcement: Available through registration of IP rights with German customs authorities for border protection against counterfeit goods.

Cease and Desist Procedures: Court actions are usually preceded by warning letters (Abmahnung) requesting cessation of infringing activities and written undertakings with contractual penalties. This is common practice, and the IP owner is even entitled to to reimbursement of necessary expenses, including statutory attorney fees, if justified.

Civil Court Proceedings:

First Instance Proceedings: Typically take 12-18 months from filing to judgment in specialized IP courts. Appeal Proceedingsbefore Higher Regional Courts typically take 6-12 months.

Costs are borne by the losing party. These costs include court fees (calculated based on dispute value), attorney fees (following the German Attorney Fees Act and calculated based on dispute value), and expert witness fees, if any.

Administrative Proceedings:

Opposition proceedings typically take 12-18 months, with lower costs than court proceedings.

Jurisdiction: Regional Courts have jurisdiction over IP infringement cases, typically the defendant’s domicile or place of infringement. In many regional courts, IP cases are handled by specialized IP chambers. Furthermore, the Länder have assigned IP litigation to certain regional or local courts within their territory.

Starting Proceedings: Begin with filing a statement of claim (Klage) containing factual allegations, legal basis, and relief sought.

Procedure: Follows the German Code of Civil Procedure with written proceedings predominating. Defendant files response, followed by potential rejoinder and surrejoinder, then oral hearing.

Time to Trial: Oral hearings typically occur 6-12 months after filing, with judgment following within a few months thereafter if no additional evidence hearing is necessary.

Trial Format: Emphasizes written submissions, with oral hearings focused on legal argument rather than extensive fact-finding. Cross-examination is limited.

Time to Judgment: Typically 12-18 months in first instance, with additional time for appeals.

Appeals: Available to Higher Regional Courts on fact and law, and to the Federal Court of Justice on points of law only.

Bifurcation: Separates validity and infringement proceedings, with different courts handling each issue.

EU Regulation 608/2013 provides the framework for customs enforcement. Rights holders can file applications for customs intervention, enabling them to request suspension of goods release into the EU market.

Detention Procedures: Customs authorities (Zoll) may detain suspected infringing goods on their own initiative or following requests from rights holders.

Notification Process: Rights holders are notified of detentions and must take action within specified timeframes.

Scope: Covers imports, exports, and goods in transit through German territory.

Destruction or Release: Procedures exist for destruction of confirmed infringing goods or release of legitimate goods.

Subsidiary National Procedures: German IP statutes provide subsidiary competence for customs authorities in situations not covered by EU regulation, particularly illegal parallel trade and overruns.

No Mandatory ADR exists for IP disputes in Germany, though courts may encourage settlement discussions.

Opposition Proceedings: Trade mark applications may be challenged by an opposition during the three-month opposition period.

Pre-action Requirements: Cease and desist letters are common practice in IP infringement cases as well as in cases of of unfair competition. While it is not mandatory to send a warning letter before initiating legal proceedings for an IP infringement, it is strongly customary and highly recommended to send such a letter before filing a lawsuit or applying for an injunction. If you file a lawsuit without sending a prior warning, you risk having to pay the costs of the proceedings (“immediate acknowledgement”) even if you win the case but not legally mandatory.

Collective Management: For certain copyright uses, collective management through collecting societies may be practically mandatory due to representative status and extended collective licensing provisions.

Arbitration: Available for IP disputes, offering confidentiality and specialized expertise, though less commonly used than court proceedings. IP matters are generally arbitrable, except for validity of registered rights.

Settlement Negotiations: Commonly conducted during court proceedings, with courts encouraging settlement discussions.

Cease and Desist Settlements: Often resolve disputes through contractual undertakings with penalty clauses.

Arbitration Board: The DPMA hosts an Arbitration Board for disputes between collecting societies and copyright users, with mandatory arbitration in certain circumstances.

Patent Infringement: Requires comparison of the accused product or process with patent claims. Evidence includes technical analysis, expert testimony, and product samples. Both literal infringement and doctrine of equivalents apply. German patents also cover embodiments under the doctrine of equivalence if they solve the same problem with objectively equivalent means, subject to the Formstein defense.

Trade Mark Infringement: Requires establishing likelihood of confusion based on mark similarity, goods/services similarity, and distinctiveness. Evidence may include market surveys, and commercial circumstances analysis to prove an enhanced reputation of the mark at issue.

Copyright Infringement: Requires proof that a certain work qualifies for copyright protection as there are no registered copyrights in Germany. Furthermore, substantial similarity between protected work and accused work has to be shown, plus access to the protected work. Evidence includes creation documentation, distribution records, and expert analysis.

Design Infringement: Requires comparison showing that accused design produces same overall impression on informed user. Evidence includes design representations. The degree of freedom of the designer in developing the design influences the scope of protection.

Trade Secret Infringement: Requires proof of unlawful acquisition, use, or disclosure of secret information. Evidence includes confidentiality measures, access records, and misuse documentation.

a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence?

Technical Judges: The Federal Patent Court which handles validity proceedings is comprised of both legally qualified judges and technically qualified judges. Technical judges in Germany often have backgrounds as patent examiners or scientific experts and are professional judges appointed for life.

Court-Appointed Experts: In German patent litigation, court-appointed experts are the formal means of evidence. Commonly used for technical issues, appointed by the court and subject to examination by parties. These experts typically carry more weight than party experts.

Party Expert Witnesses: May be called to testify on technical matters but have less influence than court-appointed experts as they are considered part of the party’s submissions.

Agreed Experts: Parties may agree on joint experts, though this is less common.

b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?

Information Claims (Auskunft): May be ordered by a court against defendants to provide information about infringing activities, including financial details. German IP statutes set out comprehensive accessory information claims for infringers and third parties. In general, information only has to be provided, however, if the infringement has already been determined by the court.

Inspection Rights: May be granted to examine accused products or processes, subject to confidentiality protections.

Seizure Orders: May be obtained to preserve evidence of infringement, particularly useful in counterfeiting cases.

Limited Discovery: Germany does not have general pre-trial discovery, but since 2022, foreign courts may obtain limited pre-trial discovery through the Hague Evidence Convention, provided the request meets strict criteria. This only applies to cross-border disputes, however..

Written Emphasis: German civil procedure emphasizes written expert reports rather than oral testimony.

Limited Cross-Examination: Cross-examination is limited in German civil procedure, with written submissions typically preferred.

Expert Examination: Court-appointed experts may be questioned by parties and the court during oral hearings.

Document Scrutiny: Courts review written evidence and expert reports, with oral hearings focused on legal argument rather than extensive fact-finding.

Invalidity:

(a) Patent

A patent in Germany can be challenged and revoked on these grounds:

• Lack of patentability: The invention is not novel, not inventive (obvious), or not capable of industrial application.
• Insufficiency of disclosure (lack of enablement): The patent does not disclose the invention clearly and completely enough for an expert to reproduce it.
• Extension beyond the application: The patent’s subject matter goes beyond what was originally disclosed in the initial application.
• Extension of scope during opposition or limitation proceedings: If, during these proceedings, the scope of the patent was impermissibly broadened.
• Theft/usurpation of the invention: Only the aggrieved party may claim the invention was unlawfully taken

(b) Utility Model

The validity of a utility model can be challenged for:

• Lack of protection eligibility: The invention does not meet the criteria of novelty, inventive step, or industrial applicability.
• Earlier rights: The subject matter is already protected by an earlier patent or utility model.
• Extension beyond the original application: The utility model’s subject matter surpasses that described in the initial application.

(c) Trademark

German trademarks may be challenged on the following grounds:

• Existence of earlier rights: An earlier trademark, unregistered mark in use, company sign, title of work, protected geographical indication, or designation of origin.
• Bad faith registration: The trademark was registered in bad faith.
• Lack of genuine use: If a trademark is not used genuinely within five years following registration, it may be revoked for non-use.
• Other absolute grounds: E.g., the mark is deceptive, generic, or offensive, or cannot be graphically represented.

(d) Design Right

Design rights in Germany can be challenged for:

• Absolute grounds: Lack of novelty or individual character, or exclusion from design protection (the appearance doesn’t constitute a protectable design).
• Relative grounds: The design conflicts with an earlier design, copyright, or other established rights.
• Other statutory exclusions: For example, designs contrary to public order or morality.

Non-Infringement: Argues that the accused activity falls outside the scope of protection.

Exhaustion: Applies to goods placed on the market by the rights holder or with consent within the European Economic Area.

Prior Use Rights: May apply to patent infringement when the accused party was already using the invention before the priority date.

Experimental Use: Limited defense for research activities, particularly in patent law.

Fair Use/Limitations: Apply to copyright for certain purposes such as quotation, criticism, and research. German copyright law provides numerous statutory limitations but considers the list exhaustive.

FRAND Defense: For standard-essential patents, where the patent holder has promised to grant licenses on FRAND terms, injunctive relief may be denied if the infringer shows clear willingness to conclude a license agreement.

Patent Nullity: Any person may file nullity actions before the Federal Patent Court.

Trade Mark Cancellation: Any person may file cancellation actions based on absolute grounds or non-use Relative grounds can only be put forward by holders of conflicting earlier rights.

Utility Model Nullity: Any person may file nullity actions after registration.

Design Invalidity: Any person may file invalidity actions after registration, though relative grounds can only be put forward by holders of conflicting earlier rights.

Copyright Challenges: No formal invalidity proceedings exist, but validity may be challenged as defense in infringement proceedings.

Patent Nullity: Actions may be filed at any time after patent grant until expiration. Opposition may be filed within nine months of publication.

Trade Mark Cancellation: Actions may be filed at any time, though some grounds have time limitations (e.g., non-use after 5 years).

Utility Model Nullity: Actions may be filed at any time after registration.

Design Invalidity: Actions may be filed at any time after registration.

Opposition Proceedings: Trade mark opposition must be filed within 3 months of publication.

Patent Nullity: Federal Patent Court handles nullity actions with specialized technical senates. Grounds include lack of novelty, inventive step, insufficient disclosure, or impermissible claim amendments.

Trade Mark Cancellation: DPMA handles cancellation actions in first instance, with appeal to Federal Patent Court. Grounds include lack of distinctiveness, descriptiveness, conflict with prior rights, or non-use.

Utility Model Nullity: Federal Patent Court handles nullity actions. Grounds include lack of novelty, insufficient disclosure, or subject matter exclusions.

Design Invalidity: Regional Courts handle invalidity actions. Grounds include lack of novelty, individual character, or functionality exclusions.

Bifurcation System: Separates validity and infringement proceedings, with different courts handling each issue.

Compulsory Licenses: May be available for patents in exceptional circumstances under §24 PatG, including for ensuring adequate supply or for important technological advances.

Declaratory Judgments: May be sought to establish non-infringement or invalidity.

Revocation for Non-Use: Trade marks may be revoked for five years of non-use.

Limitation Periods: Various limitation periods apply to different types of IP claims.

Competition Law Defenses: May limit IP enforcement in certain circumstances involving abuse of dominant position.

Proportionality: Patent injunctions may be denied where assertion would lead to disproportionate hardship not justified by the exclusive right.

Interim Relief:

• Preliminary Injunctions: Available under §935 ZPO for urgent cases where irreparable harm would result from delay
• Seizure Orders: May be obtained to preserve evidence or prevent disposal of infringing goods
• Asset Freezing: May be available in exceptional cases involving risk of asset dissipation

Final Remedies:

• Permanent Injunctions: Primary remedy for IP infringement, available almost automatically upon finding of infringement. For patents, amended in 2021 to include proportionality exception where assertion would lead to disproportionate hardship.
• Damages: May be calculated based on actual losses, reasonable royalty, or defendant’s profits
• Destruction Orders: Mandate elimination of infringing products and potentially manufacturing equipment
• Recall Orders: May require removal of infringing products from distribution channels
• Information Orders: Require defendants to provide details about infringing activities, including financial information

Damages Calculation Options:

• Actual Damages: Include lost profits, price erosion, and additional expenses
• Reasonable Royalty: Based on hypothetical license negotiations
• Defendant’s Profits: May be claimed as alternative, requiring detailed financial disclosure

Unjust Enrichment: Infringers must pay equitable license fees regardless of fault, as they obtain unauthorized use of protected IP without legal grounds.

Moral Rights Compensation: Authors and performing artists may demand pecuniary compensation for non-pecuniary damage to moral rights.

Court Costs: Calculated based on the value in dispute and typically borne by the losing party.

Attorney Fees: Follow statutory rates under the German Attorney Fees Act (RVG) and are recoverable by the successful party.

Expert Costs: Court-appointed expert fees are shared between parties initially but ultimately allocated to the losing party.

Security for Costs: May be required from foreign plaintiffs or in preliminary injunction proceedings.

Cost Recovery: Successful parties generally recover reasonable costs, though full indemnification is not always available.

Limitation: Success fees and contingency arrangements are generally not permitted under German law.

Time Limitations: Claims for damages are subject to three-year limitation periods, though claims for surrender of profits have longer limitation periods (10 years after arising, maximum 30 years after infringement).

Warning Letter Costs: Justified IP infringement notifications entitle the injured person to reimbursement of necessary expenses, including statutory attorney fees. However, an unjustified warning letter may result in liability for interference with business operations.