Guest Blog: Fish & Richardson Attorneys Explore European Patent System

 

Steven Carlson

Germany is a top country for patent enforcement. Knowing the German system is fundamental for technology companies that sell products in Europe, both for patentees and for companies pulled into German courts as defendants.

Alexander Harguth

In Germany, patent cases frequently take less than a year, at a fraction of the cost of U.S. cases.


A tremendous advantage to patentees is that infringement cases are tried separately from challenges to the validity of a patent. Likewise, many of the procedural “outs” that defendants enjoy in the United States (such as motions to dismiss, early claim construction rulings, and summary judgment proceedings) are unavailable in Germany — accordingly, the first time the parties appear in court is typically for the trial on the merits. Defendants, therefore, must be ready to act quickly to develop their case, to prepare their validity challenge, and to pursue other available defenses.

Customs actions provide another way to enforce patents. Customs authorities may seize goods upon the patentee’s request, after which the case may be referred to the trial courts. Therefore, potential infringers must be aware, for example, when presenting goods at a trade show, there could be a seizure action carried out on the floor of the exhibition.

German damages awards are typically lower than in the United States. Nonetheless, there may be nowhere better for winning an injunction if the patentee has strong patent rights. Although infringement relief will be limited to Germany’s borders, being enjoined from selling in Europe’s biggest market may be intolerable for many companies. A German enforcement strategy, or a parallel strategy of enforcement in Germany and the United States, may, therefore, result in a global settlement of disputes.

We have written a new book on the German IP system: “Patents in Germany and Europe: Procurement, Enforcement and Defense.” As native attorneys of Germany and the United States, we have tried to present Germany’s system to the U.S. audience in an accessible and authoritative handbook, including chapters on:

 

• Sources of law in Germany;

• The German court system;

• Procurement of IP rights in the German and European patent offices;

• Invalidity challenges through oppositions and nullity actions;

• Enforcement actions through infringement trials and customs proceedings; and

• Employee rights in inventions.

Moreover, key provisions of German and European law are provided in the appendices, as well as sample pleadings, ending with a list of key distinctions between U.S. and German/European law.

The book is available on Amazon.com. If your company has particular interest in the German system, we will be happy to provide a complimentary copy along with an in-person seminar where feasible. Please feel free to us contact directly, at Harguth@fr.com or Carlson@fr.com.

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