Germany: Intellectual Property

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

National patents and German parts of European patents; Supplementary protection certificates (for medicinal and plant protection products); Utility models; Trade Secrets (see EU directive 2016/943), which also protects confidential know-how and business information; possible ancillary protection under competition law.

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

Registered national and EU trademarks, or unregistered trademarks established by public recognition in trade circles or notoriety (Article 6bis Paris Convention); company names and work titles, geographical indications, designations of origin, traditional speciality; possible ancillary protection under competition law.

(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).

Registered national and EU design rights; unregistered EU design rights; copyright and database rights; semiconductor topography rights; EU and national plant variety rights; trade secret protection; possible ancillary protection under competition law.

(a) Patents, Utility Models

The general maximum term of patents is 20 years from the date of filing, subject to the payment of the annual renewal fees starting from the second year. Supplementary protection certificates (for medicinal and plant protection products) may extend the term for up to five years and for another six months for recognised paediatric studies (Regulation (EC) 1901/2006). The maximum term of utility models is 10 years from the filing date, subject to the payment of renewal fees after the third, sixth and eighth year.

(b) Trademarks, company signs and business names

Registered trademarks have no maximum term. They subsist as long as the renewal fees are paid every ten years. Trademarks which are not genuinely used for an uninterrupted period of five years can be revoked. Unregistered trademarks are protected as long as the acquired public recognition or notoriety subsists.

The protection of company names ends with the final cessation (i) of the use of the company name or (ii) of business operations.

Geographical indications are protected as long as a producer complies with the requirements of the protected location.

Possible ancillary protection under competition law protects products and services with a unique position against unfair imitation for as long as the unique position subsists.

(c) Trade secrets, designs, copyrights incl. databases, topographies, plant varieties

Trade secrets remain protected as long as they qualify as such. The maximum term of registered designs is 25 years from filing, subject to the payment of the renewal fees every five years, starting on the fifth year. The maximum term of unregistered designs is three years from being made available to the public within the EU (disclosures under CDA exempted).

The general maximum term of copyrights is reached after 70 years from the end of the year of the creator’s death, or from the first publication of the work of an anonymous creator. For certain works the term starts with the first publication, or in the absence of a publication with their creation. For these, the maximum term is 50 years for still and moving images below a creative threshold, and 15 years for databases. Sufficient modifications of the work may result in a new term.

The maximum term of semiconductor topographies is 10 years from the end of the year of a non-confidential commercial use or the filing date, whichever is earlier.

The general maximum term of plant varieties is 25 years from the end of the year of their registration, and 30 years for hop and potatoe (German national), or vine and tree varieties (both German national and EU).

(a) Patents, Utility models

The first owner is the inventor. German law distinguishes between the “right to the invention”, the “right to the patent” and the “rights conferred by the patent”. These rights can be individually assigned.

Service inventions created by employees can be claimed by the employer under the Act on Employee Inventions (AEI) and are deemed to be claimed unless released within four months after having been reported. Rights created under a commission are themselves subject to the AEI and may be contractually assigned from the commissionee to the commissionor.

The first owner of a trade secret is the entity who created and first controlled it. If the trade secret was created in the course of employment, the first owner is normally the employer.

(b) Trademarks, company names and business names

The first owner of a registered trademark is the entity in whose name it is registered. For unregistered trademarks, the first owner is the entity in whose favour the recognition or the notoriety is acquired. For trademarks created in the course of employment, regulations in the employment contract may apply.

The first owner of the right to company names and business name is the owner of the company or business. The first owner of work titles is the creator of the work.

(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).

The first owner of a design is its creator. Where a design (national, registered EU and non-registered EU) was developed by an employee in the execution of his/her duties or following the instructions given by the employer, the right to the design shall vest in the employer, unless otherwise provided by contract.

The first owner of a copyright is the creator of the work. The copyright cannot be assigned; however, use rights can be granted and assigned. If software meeting the copyright threshold is developed by an employee in the execution of his or her duties or following the instructions of the employer, the employer has an exclusive use right unless otherwise agreed. The rights to copy, distribute, or publicly reproduce databases meeting the copyright threshold are exclusively with the entity who made the investments required to obtain, verify or reproduce the database.

The first owner of a semiconductor topography right is its creator. Where a semiconductor topography right was developed by an employee in the execution of his duties or following the instructions given by his employer, or as the result of a commission, the right to the topography shall vest in the employer or commissioner, unless otherwise provided by contract.

The first owner of a plant variety right is the person who bred or discovered and developed the variety. The right can be assigned.

Patents, utility models, registered trademarks, collective marks, certification marks, registered design rights, registered designations of origin, registered geographical indications, registered traditional speciality guarantees, semiconductor topography rights and plant varieties described in section A.1. represent registered rights.

(a) Patents, utility models, semiconductor topography rights, plant variety rights

Anyone with the capacity to acquire rights can apply for these IP rights.

In the proceedings before the German Patent and Trademark Office (GPTO)/European Patent Office (EPO), the applicant is deemed to be entitled to the invention to avoid a delay of the examination the due to the need to establish entitlement.

The application has to be filed with the GPTO for protection in Germany or to the EPO for protection in currently 38 states covering a territory which differs from the territory of the European Union.

(b) Registered trademarks and registered design rights

Anyone with the capacity to acquire rights can apply for these IP rights.

The application has to be filed with the GPTO for protection in Germany or with the European Union Intellectual Property Office (EUIPO) for protection in all member states of the European Union. The IP right is registered after the examination by the GPTO/EUIPO for compliance with the legal requirements, but not as distinguishing from prior rights. EU trademarks are registered only in the absence of, or after termination of an opposition filed by third parties.

(c) Collective marks

An applicant of a German collective mark or an EU collective mark may be either associations of manufacturers, suppliers of services, or traders having the capacity to acquire rights and obligations as well as legal persons governed by public law.  In addition to the specific filing requirements of a trademark application, it will be determined whether the relevant regulations governing the use of a certification mark have been submitted and comply with the legal requirements and whether the mark is capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings. Regarding a German collective mark, the GPTO also examines if the mark is capable to distinguish the goods or services of the members of the proprietor of the collective mark from those of other enterprises in terms of their geographical origin, their nature, quality or other properties.

(d) Certification marks

Any natural or legal person, including institutions governed by public law, may apply for a German or an EU certification marks unless such person’s business involves the supply of goods or services of the kind certified. In addition to the specific filing requirements of a trademark application, it will be determined if the relevant regulations governing the use of a certification mark have been submitted and comply with the legal requirements and if the certification mark is capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified.

(e) Registered designations of origin, registered geographical indications, registered traditional speciality guarantees

In Germany, geographical indications can be registered only by way of a collective mark and, in exceptional cases, by way of an individual trademark. On the EU level, geographical indications for agricultural products and foodstuffs can be registered in a register maintained by the EU Commission for this purpose. Applications for registration can be submitted with the national trademark authorities by groups who work with the products with the name to be registered. Such a group may be any association of producers or processors dealing with the same product or a legal person governed by public law.

(a) Patents, utility models, semiconductor topography rights, plant variety rights

German Patent: about 24 – 36 months, if the examination fee has been paid and the examination request has been filed within the initial 4 months from the filing date.

EP Patent: about 24 – 36 months

German Utility models: about 2 weeks (if filed online) as these are unexamined IP rights.

(b) Registered trademarks, collective and certification marks

GPTO: about 1 – 3 months provided that there are no official refusals

EUIPO: about 4 – 6 months provided that there are no official refusals or objections by third parties

Both offices also offer accelerated application procedures, which reduce the registration period by  half.

(c) Design rights

GPTO: about 4 – 6 weeks

EUIPO: about 2 – 3 weeks

(d) Designations of origin, geographical indications and traditional speciality guarantees

About 6 – 12 months provided that there are no objections by  third countries or third parties with a legitimate interest.

(a) Patents, utility models, semiconductor topography rights, plant variety rights

Third-party observations can be filed by any third party (even anonymously) during the patent registration process. However, the third party is not formally involved in the examination process.

An opposition to a patent can be filed by any third party within nine months following publication of the grant of the patent.

Utility models and semiconductor topography rights cannot be opposed, but third parties can file a request for cancellation with the GPTO at any time. Anyone can file observations against the registration of a plant variety.

(b) Registered trademarks, collective and certification marks

These IP rights can be opposed within a period of three months after publication of the registration (GPTO)/application (EUIPO).

Furthermore, third parties can submit observations to the GPTO/EUIPO explaining on which grounds the mark should not be registered ex officio.

(c) Design rights

Third parties do not have the right to take part in or comment on the registration process.

(d) Designations of origin, geographical indications and traditional speciality guarantees

Third parties with a legitimate interest have the possibility to object to the registration twice: (1) within the framework of the examination of the GPTO after publication in the Trade Mark Journal, (2) during the examination by the EU Commission.

(a) Patents, utility models, semiconductor topography rights, plant variety rights

The applicant of a German patent can appeal against an unfavourable decision to the Federal Patent Court. For semiconductor topography rights and plant variety rights, an appeal against negative decisions is also available. At the EPO, an appeal to the Board of Appeal is available.

Further, a patent applicant may file a divisional application preserving the priority of the original application or may branch off a (e.g. German) utility model.

(b) Registered trademarks, collective and certification marks

GPTO: The applicant can either file a request for reconsideration with the GPTO or an appeal against the decision with the Federal Patent Court.

EUIPO: The applicant can appeal the decision to the Boards of Appeal.

(c) Design rights

GPTO: The applicant can appeal against the decision to the Federal Patent Court.

EUIPO: The applicant can appeal against the decision to the Boards of Appeal.

(d) Designations of origin, geographical indications and traditional speciality guarantees

Appeal against the GPTO’s decisions lies with the Federal Patent Court. The EU Commission’s registration decisions can be appealed at the CJEU.

(a) Patents, utility models, semiconductor topography rights

Patents

https://www.epo.org/law-practice/legal-texts/html/epc/2016/e/ma6.html

https://www.dpma.de/english/services/fees/patents/index.html

Utility models

https://www.dpma.de/english/services/fees/utilitymodels/index.html

Plant variety rights

https://cpvo.europa.eu/en/applications-and-examinations/fees-and-payments

https://www.bundessortenamt.de/bsa/en/for-applicants/fees/

(b) Registered trademarks, collective and certification marks

https://euipo.europa.eu/ohimportal/en/fees-payable-direct-to-euipo

https://www.dpma.de/english/services/fees/trademarks/index.html

(c) Design rights

https://euipo.europa.eu/ohimportal/en/rcd-fees-directly-payable-to-euipo

https://www.dpma.de/english/services/fees/designs/index.html

Failure to pay the renewal fees in time will lead to a loss of rights. The renewal fees can, however, be paid within a grace-period of 6 months from the renewal due date. If the renewal fee is paid within the grace-period, in most cases there will be a surcharge. For plant variety rights, the GPTO will manually set an additional deadline within the renewal fee is to be paid.

The assignment of the ownership of an EU trademark shall be made in writing and requires the signature of the parties to the contract, except when it is a result of a judgement.

The assignment of the ownership of a German trademark is effected by contract. There are no formal requirements, but for reasons of evidence and legal certainty it is advisable to conclude the contract in writing.

There is no formal requirement for the transfer of a German design/community design.

The assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract.

For the assignment of German patents, utility models, semiconductor topography rights, and plant variety rights there are no formal requirements.

Due to the principle of accessoriness, company names can only be transferred together with the business.

Copyright is not transferrable, unless it is transferred in execution of a testamentary disposition or to co-heirs as part of the partition of an estate.

The registration of the assignment in the register is not a prerequisite for an effective and valid assignment of rights. However, only after registration can the new owner of a patent/Community design assert claims for infringement against third parties. Also, if the assignment is not registered soon after the assignment, it is in general easier for a future defendant to contest the valid transfer of the IP right.

Under German law, no special legal requirements exist for the licensing of an intellectual property right. This applies to patents, utility models, trademarks, designs, know-how and plant variety rights. For the sake of legal clarity and to be able to produce evidence in case of a dispute, it is nonetheless recommendable to record every licence in writing.

A few exceptions apply:

Company names cannot be subject of a licence in rem, i.e. own rights to be enforced by a licensee against third parties. However, other entities can be allowed to use a company name.

Generally, there are no formal requirements for Copyright license agreements. There are some exceptions: For example, contracts concerning unknown types of use, or contracts as to future works require written form.

It is possible but not required to register a licence for a German intellectual property right. For example, patent and trademark licences are typically not registered in the register of the GPTO. When initiating litigation as a licensee, e.g. to document the standing to sue or to recoup damages, it is common to file a pro forma license agreement to prove the legal status of the licensee.

An exclusive licensee has an own right to enforce the IP right against third parties unless otherwise stipulated in the licence agreement.

A non-exclusive licensee can only enforce claims for infringement if (i) he has an own interest and (ii) is authorized by the licensor to do so.

All intellectual property acts provide for criminal sanctions for infringement, such as Section 142 (1) Patent Act or Section 143 (1) of the Trademark Act. In principle, an infringement of a patent or a trademark can result in imprisonment up to three years or a fine. Also, the criminal court can, in addition to sentencing the defendant, award damages. However, in practice, the criminal prosecution of IP infringements is very uncommon. Prosecutors or criminal law courts are unexperienced in IP matters, especially in technical issues surrounding patent infringement, and often seek to reject cases for formal reasons. However, it is not uncommon – and quite effective – to invoke criminal sanctions by initiating criminal investigations by the police e.g. at tradeshows.

• Main infringement actions and provisional injunction proceedings at civil courts (specifically for patents, there are 12 civil courts with specialised patent chambers, the most commonly frequented ones are the Regional Courts of Düsseldorf, Mannheim and Munich)
• Requests for inspection orders can be filed with civil courts aiming at having evidence inspected, secured and assessed by a court-appointed expert, potentially to be used in a subsequent main action
• Border measures and seizure can be requested at custom authorities based on either German law or EU regulation 608/2013
• Alternative dispute resolution, such as specialised arbitration and mediation centres (such as DIS or IIC)

Main enforcement action before German civil courts take between 9 to 18 months depending on the workload of the court. Depending on the complexity of the case, the number of parties involved and the need to hear witnesses etc., costs may range from EUR 150,000 to EUR 1,000,000.

Provisional injunctions can in urgent cases, such as generic launch or exhibitions on tradeshows, be obtained within 24 hours on an ex parte basis, i.e. without prior oral hearing. Regular provisional injunction proceedings take about a month and include an exchange of briefs and an oral hearing. Costs may range from EUR 80,000 to EUR 400,000.

Patent infringement actions can be filed with any court in whose district an infringement was arguably committed. Where the product is offered nation-wide, the plaintiff can choose where to bring the action. In the preparatory stage, each party has the opportunity to file at least two briefs followed by the main oral hearing.  The general procedure runs as follows:

• Filing and service of the complaint
• Statement of defence
• Plaintiff’s Reply
• Defendant’s rejoinder
• Oral hearing
• decision (about a month later).

The main oral hearing usually begins with a summary of the facts and legal issues of the case by the presiding judge, very often stating the preliminary opinion of the court. Focussing on the decisive issues, the party representatives will then plead orally. Usually the case is resolved within one oral hearing which may last between one to four hours. The court forms its first opinion based on the written briefs, whereby expert opinions may be filed in support of the parties’ assertions. Only in exceptional cases, the main oral hearing is followed by a phase of evidence-taking, e.g. the examination of court-appointed experts or witnesses.

Appeals are heard by the Higher Regional Courts. Upon specific admission, a further appeal can be filed with the Federal Court of Justice.

Border measures are available under EU regulation 608/2013 and/or national law for trademark violations as well as infringements of technical IP rights, such as patents or utility models. Pursuing border measures is advisable when the infringing embodiments can easily be identified by a custom officer. Any insight as to potential trade routes provided by the IP owner is helpful.

No. If the case lends itself to a settlement, the presiding judge may suggest the parties to try mediation or enter into settlement talks but doing so is not mandatory. Rejecting the suggestion for mediation does not impact the allocation of costs.

If infringement litigation has already been initiated, and the parties agree to try mediation, the proceedings can be suspended and the parties will be referred to another specially trained mediator judge of a different chamber.

Independent of court litigation, mediation and arbitration centres are available to provide facilities and trained mediators specialised in settling an intellectual property dispute.

Otherwise, contractual settlements are possible.

(a) Patents

To establish (direct) patent infringement, the plaintiff must demonstrate that the defendant has, in Germany, made, offered, put on the market or used, or possessed or imported for these purposes, a protected product, used or offered a protected process, or marketed or used (or imported or possessed for these purposes) a product directly obtained from a patented manufacturing method (regardless of where such product was actually made).

If the attacked embodiment does not literally fulfil the features of the patent in suit, it may still qualify as equivalent infringement if it (i) has the same technical effect, (ii) could be identified by the skilled person (in principle at the priority date) and (iii) is comparable to the claimed solution.

Supplying infringing products abroad may result in liability for patent infringement if the supplier should be aware that its customer will import the infringing product into Germany.

Supplying or offering means (mainly components or parts) relating to an essential element of the invention in Germany is actionable as indirect infringement if the supplier knows or should know that its customer intends to use the means for infringing the patent in Germany.

In general, the plaintiff bears the burden of proof, e.g. that the contested product was marketed by the defendant and fulfils all features of the asserted patent claim. By way of exception, the defendant must prove that its product was not made using protected manufacturing method if the product as such is new. Remarkably, German courts rather rarely take evidence in the strict sense, e.g. by appointing independent experts or hearing witnesses. One reason is that the parties’ assertions must be comprehensive and are deemed to be acknowledged unless contested, whereby the parties must not make false statements or knowingly contest accurate assertions. As a result, decisive facts are often undisputed. The second reason is that the infringement court does not assess the validity of the patent. If it has serious doubts in this regard, it can stay the infringement proceedings pending the outcome of parallel opposition or nullity proceedings. However, in this respect, the court cannot take any evidence whatsoever.

(b) Utility Models

The requirements to establish infringement of utility models are the same as for patent rights, with the exception that the defendant can challenge the validity of the utility model also by way of defence before the infringement court, which in that case may be required to formally take evidence, e.g. regarding the knowledge of the relevant skilled person.

(c) Supplementary Protection Certificates

A supplementary protection certificate (SPC) is a sui generis IP right which extends the duration of certain rights associated with a patent with respect to a specific pharmaceutical product for which it was granted. In principle, an SPC confers the same protection as the underlying basic patent. Under this qualification, the requirements to establish infringement are the same as for patent infringement.

(d) Designs

An infringement of a design is established where a third party uses the design without the consent of the owner of the design. In this respect, the protection of a design extends to any design which does not produce a different overall impression on the informed user.

(e) Trademarks and company names

An infringement of a trademark is established where a third party, without the consent of the owner of the trademark, in the course of trade in relation to goods or services

• uses a sign identical with the trademark in relation to goods or services which are identical with those for which the trademark is protected
• uses a sign being identical with, or similar to, a trademark and the sign is used for goods or services identical with, or similar to, those for which the trademark is registered and where there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark; or
• uses any sign which is identical with, or similar to, the trademark for goods or services where the trademark has a reputation in Germany/EU and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark having a reputation.

An infringement of a company name is established where a third party uses a company name or a similar sign in the course of trade without authorisation in a manner liable to cause confusion with the protected name.

(f) Confidential Information/Trade Secrets

A fairly new German Trade Secrets Act implements the European Directive EU/2016/943 on the protection of undisclosed know-how and business information. The act defines the notion of “trade secret” objectively as information subject to measures of trade secret protection which the “trade secret owner” would have to demonstrate. Previously a trade secret was only defined by its actual secrecy and the owners’ subjective need to keep it secret.

The Act then lists unlawful conduct with regard to the acquisition, use and disclosure of trade secrets without permission. Reverse engineering of a lawfully obtained product is now permitted, unless expressly prohibited by contract.

(g) Protection under Competition Law

The protection under competition law aims at protecting business from fraudulent or deceptive conduct of competitors. Even if a product does not infringe an intellectual property right like a patent or a trademark, it might free-ride on the efforts of a third party in an illegal manner.

The offering of goods or services might constitute an act of unfair competition according to Sect. 4 et seq. of the Act against Unfair Competition e.g. if it constitutes a degradation, libel, unfair imitation or obstruction of original products.

(h) Semiconductor topography rights

Under Sec. 6 Semiconductor Protection Act (Halbleiterschutzgesetz), it is prohibited for third parties to reproduce, offer, put on the market, distribute or import for such purpose the topography or the semiconductor product containing the topography without the owner’s consent.

To establish infringement, the plaintiff must especially prove the individual character of the topography (Sec. 1) and the exact act of violation, whereas the defendant must prove, if the topography has been produced by reverse engineering (Sec. 6 II no. 2, 3).

(i) Plant variety rights

As plant varieties as such are not patentable, the Plant Variety Protection Act (SortG) ensures the plant breeder an exclusive right similar to patents for technical inventions. To promote the plant breeding, it protects the breeder’s work by the licence of a private protection right. Except micro-organisms, all plant varieties can be subject to variety protection by any breeder or discoverer, when they are new, distinct, uniform and stable and when provided with a suitable variety denomination.

The Plant Breeder’s Rights confers the exclusive right to produce, market, export or import reproductive material of a variety i.e. plants, parts thereof and seeds.

The “breeder’s privilege” allows the use of a protected variety without authorisation to breed a new variety, similar to the experimental use exemption in patent law. The “farmer’s privilege” authorises farmers to use the product of their harvest as propagating material, if the breeder receives a fair compensation.

(j) Copyright

An infringement of a copyright is established where the owner’s exclusive rights are violated. Aside from blatant copies, copyright infringement can also be established in cases where the characteristic quality of the earlier work is residual in the work created afterwards, which is in turn dependant on the grade of individuality of the earlier and later works themselves. The owner’s exclusive rights include the rights to publish the work and to be named as the author, the right regarding distortion and other mutilation of the work, the rights of duplication, distribution, exhibition, presentation, the right of making the work available to the public, the broadcasting right as well as the rights of editing and rearrangement.

(k) Geographical Indication

An infringement of a geographical indication is established where a geographical indication is used in the course of trade for goods or services which do not come from the place, region, area or country indicated by the geographical indication, if there is a risk of consumers being misled as to the geographical origin of the goods or services if such names, indications or signs are used for goods or services of a different origin.

An infringement is also to be assumed if a geographical indication whose goods or services have special characteristics, or a special quality is used in the course of trade for goods or services which do not have these characteristics or this quality.

Finally, if there is a geographical indication enjoying a particular reputation, it may not be used in trade for goods or services of a different origin, even if it is not likely to mislead concerning the geographical origin, if the use provides without good cause an opportunity for goods or services of a different origin to take unfair advantage of, or be detrimental to, the reputation of the indication of geographical origin or its distinctive character.

1. The judges to a German infringement court are all lawyers with a purely legal background. However, due to the high case load of the courts, at least in Mannheim and Düsseldorf, the judges have substantial experience in handling technical cases. The Parties provide any information/evidence – fact or technical – which is required to decide the case. The court itself does not undertake any investigation into the case. In principle, the court can appoint an expert if it feels the need to do so, however in practice this is extremely rare. Usually the parties, or party experts on both sides, provide the relevant technical input.
2. German civil procedure does not provide for discovery or disclosure-like proceedings. The information is provided by the parties, and the court will in principle not request additional evidence or force a party upon the request of the other to provide further substantiation. If a party fails to present information in its favour, this will go to its disadvantage. However, where a patentee has an objective reason to believe that the defendant infringes the patent, but without fault of its own is unable to substantiate its claims without information from the defendant, e.g. in cases where the manufacturing method is subject to patent protection but cannot be detected by analysing the final product, the plaintiff can request an inspection of the defendant’s plant or product, which inspection is usually carried out without prior notice by a court appointed expert in the presence of the patentee’s counsel, who is ordered by the court to keep confidential what he/she learned during the inspection until the court allows the disclosure, which it usually does if the opinion confirms an infringement. The opinion can then be used as evidence in subsequent infringement proceedings. Where infringement proceedings are already pending, the plaintiff can, under similar conditions, request that the court order the defendant to produce such information. However, this possibility is very restrictively applied by German courts.
   When evidence is confidential or contains trade secrets, there are procedural means to limit disclosure to several selected people only and/or exclude the public from an oral hearing.

Most German IP litigation is decided on the basis of written or other documentary evidence. The examination of witnesses and court-appointed experts does take place but is the exception rather than the norm. There is no institution of cross-examination, however experts and witnesses can, after being interrogated by the court, be addressed by both parties.

Patents/utility models/SPCs:

• Non-infringement/ features of IP right not fulfilled by attacked embodiment
• Private use
• Exhaustion of rights
• Defendant’s own prior use
• Experimental use/Bolar exemption
• Compulsory licence / FRAND defence
• Forfeiture of rights/prescription of rights
• Invalidity of the utility model (not for patents or SPCs, which must be challenged in opposition and nullity proceedings, as the case may be)

Trademarks:

• No use as a trademark
• Defendant’s own prior rights
• Private use
• Plea of non-use
• Intermediate rights
• Exhaustion of rights
• Statute of limitations
• Forfeiture of rights
• Counterclaim for revocation and for invalidity based on relative grounds for invalidity.
• Counterclaim for invalidity based on absolute grounds (only EUTM)

Designs:

• Counterclaim for invalidity due to lack of novelty/individual character
• Exhaustion of rights
• Defendant’s own prior use
• Forfeiture of rights
• Statute of limitation
• Private use

(a) Patents, Utility Models

The owner of a patent or utility model is barred from challenging it. For all others, it depends on the grounds and the point in time. The ground of misappropriation, in which the entitlement of the entity registered as the owner is challenged, is reserved to the entity who suffered from the misappropriation. Otherwise challenges are open to anyone during the subsistence of the right, with an explicit or tacit exceptio pacti conventi barring challenges in nullity actions, but not in oppositions. After the expiry or lapse of the patent/utility model at issue, the challenger must demonstrate a legal interest.

(b) Trademarks, company names and business names

It depends on the challenge and the point in time. Challenging German trademarks or EU trademark applications on the basis that they fail to meet the thresholds for registration can be brought by anyone, against EU trademarks at any point in time, against German trademarks only up to the expiry of 10 years from registration. Challenging the trademarks, or company names and business names, on the basis that they are confusingly similar to a prior right is reserved to the entity exercising control of the prior right. Where an agent or representative of the proprietor of the trademark applies for registration of an EU trademark or has registered a German trademark in his own name without the proprietor’s consent, only the proprietor may bring the challenge. After the expiry or lapse of the trademark, the challenger must demonstrate a legal interest.

(c) Trade secrets, designs, copyrights incl. databases, topographies, plant varieties

Trade secrets and copyrights are not registered rights, so challenges occur once the rights are invoked.

Turning now to designs, anyone can in principle challenge non-registered EU designs. Challenges can be brought before a competent German court in isolated proceedings, as a defence in main or PI proceedings, or as a counterclaim.

Challenges against registered EU designs can be brought on two tracks, before the EUIPO or a competent German court. The entitlement to challenge registered EU designs depends on the track and the challenge.

If a challenge at the EUIPO is based on the non-entitlement of the registered holder, only the rightful holder may bring it. If the challenge is based on a prior design right, or that the design at issue is in conflict with prior rights such as an older trademark, a copyright, or official insignia in terms of Article 6ter of the Paris Convention, the holder of the prior right. If they are in conflict with badges, emblems and escutcheons other than those of Article 6ter but of public interest in a member state of the EU, the affected member state.

Challenges brought in a German court as a counterclaim in main proceedings, or as a defence on the basis of a prior design right in main proceedings, or as a defence on the basis of any revocation ground in provisional proceedings, are reserved to the defendant.

After the expiry or lapse of the design at issue, the challenger must demonstrate a legal interest.

German (registered) designs can be challenged either before the GPTO or in the form of a counterclaim before a German court. The entitlement to bring the challenges is as for registered EU designs.

Anyone can challenge semiconductor topography and plant variety registrations, unless the challenge is based on the non-entitlement of the registered owner; in this case, only the rightful owner may bring it.

Opposition against patents can only be brought within nine months from the publication of grant, or in the form of an intervention in pending opposition proceedings upon receipt of a sufficient threat or an infringement complaint. Otherwise, challenges are open to anyone during the subsistence of the right. Utility models can be challenged post-registration, at any time during the subsistence of the right.

EU trademarks can be challenged during the registration process, in the form of an opposition to be brought within three months from the publication of the application. Oppositions against German trademarks must be brought within three months from the publication of the registration. Challenging EU trademarks on the basis that they fail to meet the thresholds for registration is possible at any point in time, challenging German trademarks on this ground is possible only up to the expiry of 10 years from registration.

Designs and semiconductor topography registrations can be challenged post-registration, at any time during the subsistence of the right.

Applications for plant variety registrations can be objected to between the publication of the request for grant of the registration and the publication of the decision to grant (EU)/registration (DE). Challenges on the basis of non-suitability of the denomination of the plant variety are subject to a time limit of three months from the publication of the denomination.

German and EU plant varieties can be challenged on the basis of non-entitlement of the registered applicant/owner. For German rights the time limit is three months from the publication of the request, EU rights can be challenged on this basis within an objection, or in separate proceedings within a period of up to 5 years of publication of their grant.

Challenges are not excluded after the expiry or lapse of any of these rights, but the challenger must demonstrate a legal interest.

(a) Patents, Utility models

Within nine months from the publication of grant, patents can be challenged only in the form of an opposition to be brought by the patent office. Thereafter, and in the absence of, or after the termination of, opposition proceedings, patents must be challenged in the form of a nullity action to be brought at the German federal patent court. The succession of an opposition and a nullity action brought by the same party is possible. Counterclaims for invalidity are improper in litigation for an infringement of patents but are possible in utility model litigation.

Challenges of patents and utility models can be based on lack of patentability (non-eligible subject matter, lack of novelty and/or inventive step/obviousness relative to the prior art, lack of industrial application), insufficiency of disclosure, an inadmissible extension of the subject matter beyond the content of the application as filed, often paraphrased as added matter, a post-grant or post-registration extension of the protection they confer, and lack of entitlement of the entity registered as the owner. The definition of the prior art that can be cited against patents differs from the corresponding definition for utility models. Also, patent applications filed with effect for Germany before the effective filing date of the right at issue, but published thereafter, are used in a whole contents approach for the purposes of assessing the novelty of patented subject matter, whilst patents granted thereon, and also utility models, are used in a prior claims approach against utility models. Utility models filed before but registered after the effective filing date of patents can restrict the right of the patentee to enforce the patent.

The challenge is served upon the registered proprietor who will be given an opportunity to reply. After optional further briefs, a provisional opinion from the competent tribunal will be issued. Oral proceedings typically follow in which the parties present their cases, and after which the tribunal issues a decision. An appeal lies against this decision, with a limited opportunity to present new facts. If the first instance took place at the patent office, a third instance may review the decision issued on the appeal(s), subject to the third instance accepting the case.

(b) Trademarks, company names and business names

Within 3 months from the publication of the registration of a trademark, the owner(s) of prior rights may oppose the registration at the patent office. Third parties may also base the opposition on prior rights that are notoriously known.

Grounds for invalidity include e.g. non-eligibility for protection, cessation of the owner, failure to use a trademark in a genuine way or that rights have been registered in bad faith.

(c) Trade secrets, designs, copyrights incl. databases, topographies, plant varieties

Trade secrets and copyrights are not registered rights so that their challenge would only take place in litigation, in the form of a defence.

Turning now to designs, challenges against non-registered EU designs can be brought before a competent German court in isolated proceedings, as a defence in main or PI proceedings, or as a counterclaim.

Challenges against registered EU designs can be brought on two tracks, before the EUIPO or a competent German court. The entitlement to challenge registered EU designs depends on the track and the challenge.

If a challenge at the EUIPO is based on the non-entitlement of the registered holder, only the rightful holder may bring it. If the challenge is based on a prior design right, or that the design at issue is in conflict with prior rights such as an older trademark, a copyright, or official insignia in terms of Article 6ter of the Paris Convention, the holder of the prior right. If they are in conflict with badges, emblems and escutcheons other than those of Article 6ter but of public interest in a member state of the EU, the affected member state.

Challenges brought in a German court as a counterclaim in main proceedings, or as a defence on the basis of a prior design right in main proceedings, or as a defence on the basis of any revocation ground in provisional proceedings, are reserved to the defendant. Defences in main proceedings are also possible on the basis that the design at issue is contrary to public policy or to accepted principles of morality or fails to meet the statutory definition of a design.

After the expiry or lapse of the design at issue, the challenger must demonstrate a legal interest.

German (registered) designs can be challenged either before the GPTO or in the form of a counterclaim before a German court. The entitlement to bring the challenges is as for registered EU designs.

Anyone can challenge semiconductor topography registrations, unless the challenge is based on the non-entitlement of the registered owner; in this case, only the rightful owner may bring it.

Anyone can challenge plant variety registrations, unless the challenge is based on the non-entitlement of the registered owner; in this case, only the rightful owner may bring it. Counterclaims for invalidity are improper in litigation for an infringement of plant variety registrations.

Topographies are handled like utility models.

(a) Declaratory relief

A negative declaratory relief for non-infringement can be requested from a court with regard to all IP rights. The person seeking a declaratory judgment must show a legitimate interest in obtaining the declaration. Such legitimate interest may exist for example where that person has previously received a warning letter for an alleged infringement.

(b) Licences of right

Under certain conditions, it is possible to apply for a compulsory license, for example for plant varieties, or for patents on certain medicinal products the use of which is in the interest of the general public. Also, proprietors may be forced to tolerate a license under the FRAND principles in cases of standard-essential patents. In copyright law, there are provisions for compulsory licenses, but they are of hardly any practical importance.

(c) Right of prior use

As concerns patents, utility models and designs, the so called “right of prior use” is codified in Section 12 Patent Act, Section 13(3) Utility Model Act and Section 41 Design Act. The proprietor of the IP right shall not exercise rights against a third party who, before the date of filing, has in good faith commenced use in Germany, or has made effective and serious preparations to that end in Germany, of an identical invention or design which was developed independently of a registered patent, utility model or design. The third party is then entitled to use the invention / design as it was used before the date of filing. The “right of prior use” does not exist for trademarks.

(d) Exhaustion of IP rights

Parallel to the IP laws of the European Union, German law also provides for provisions on exhaustion of rights. The so-called exhaustion of an IP right means that a good may freely circulate after the first legitimate sale in Germany, and the legitimate IP holder cannot oppose the successive acts of use, such as reselling.

The following legal remedies are available:

• Cease-and-desist order (injunctive relief)
• Claim for damages, the actual award of damages is subject to a separate damages action;
• Claim to information, inter alia regarding the origin and distribution channels of the infringing products, names and addresses of manufacturers, suppliers and commercial customers and the quantities of infringing products manufactured and/or sold;
• Claim to rendering of account regarding the revenue and expenditures of the infringing products, including information on the profits made with infringing products;
• Claim to recall of products from the distribution channels;
• Claim to destruction of infringing products in case they are in the possession of the infringer within Germany;
• Publication of the judgment – rarely claimed and rarely granted.

The relief granted in preliminary injunction proceedings does not serve the purpose to finally resolve the case but shall provide an expeditious remedy to safeguard the right holder’s position. Damages, rendering of account, recall and destruction cannot be claimed in such proceedings. However, a sequestration of infringing products to secure the claim to destruction can be claimed.

The costs for IP enforcement proceedings depend on the technical complexity of the proceedings, the number of parties involved, the use of experts and witnesses etc. The court fees are defined by the value of claim which is based on a party’s estimate and often following a rule of thumb. It therefore does not necessarily reflect the precise value of the assets in dispute.

The German civil courts follow a “the loser pays the winner” system, which means that the losing party reimburses the winning party. The reimbursement is however not meant to recover the costs actually incurred but statutory court and attorney fees, including other expenses such as travel and translation costs. Even the winning party is therefore usually not able to recover the total costs, e.g. if charged on the basis of hourly rates rather than statutory fees. In the event of a partial loss or win, the parties bear the costs proportionally.

A plaintiff domiciled outside the EU/EEA must in principle provide a security for costs, usually in the form of a bank guarantee upon the defendants request according to Sec. 110 German Civil Procedure.

Whilst the COVID-19 pandemic has brought many temporary changes in terms of the patent offices and courts repeatedly extending deadlines and postponing hearings/oral proceedings, these changes are unlikely to be permanent. However, conducting hearings/oral proceedings before patent offices and/or courts by means of videoconferences has increased, and is expected to be used even after the pandemic.

In addition, German pandemic laws (“Infektionsschutzgesetz (IfSG)”) have been amended in March 2020 to establish a relatively informal system to grant a license-like right to patents protecting products relevant for crisis management, such as ventilators, faces masks, hand disinfectant etc., via the German ministry of health. The ministry of health or a sub-ordinate authority can instruct a third party to manufacture products making use of the IP if there is a public need. The third party shall however not be entitled to use the IP for its own commercial benefit. The manufacturing entity will not be subject to a license fee, but rather the state will provide a certain reimbursement which may be lower than a royalty rate.

The law does however not provide a general exemption from patent or design infringement for products essential for crisis management. This system will only be in place until the government waives the pandemic state of emergency.