5.1 Legal venue
Competence to hear patent infringement cases, both in the main suit and in temporary injunction proceedings, lies with 12 District Courts in Germany, at which special chambers for patent litigation have been established.
The suit must be filed either at the defendant’s main place of business or residence or at the place where the infringing activity has occurred. The latter is anywhere the recipient of an offer has his main place of business or his residence. In the case of offers on the Internet, the claimant will, as a rule, be free to choose between any of the 12 patent litigation courts.
5.2 Standing to sue
The rights under the patent can be asserted by the patent proprietor or the holder of an exclusive licence in his own name. The holder of a non-exclusive licence can only assert rights under the patent against third parties if he has been authorised to do so by the patent proprietor or by the holder of the exclusive licence and if he has a legal interest of his own in asserting those rights in court.
5.3 Service of the statement of claim
The statement of claim is served on the defen-dant by the court. If the defendant has his main place of business or residence in another country and no German counsel has as yet been appointed to represent him in litigation, the statement of claim has to be served in that other country. Any translations that might be necessary must initially be produced at the claimant’s expense. Various international agreements exist on conducting service in other countries. Depending on the country of service, service can take between 2 and 12 months. This period delays a patent infringement trial by that time, compared to the standard time taken.
When the statement of claim is served on the defendant, he is invited to declare his position on the suit. Since any declarations can only be made by an attorney-at-law admitted to a German bar, the defendant must retain an attorney-at-law for this purpose. One consequence of retaining an attorney is that any further documents can be served directly on the attorney retained, without the need for translations to be made by the court or claimant.
5.4 Instances/duration of proceedings
Suits in the main proceedings in patent infringement cases are heard in the first instance by specialised patent litigation chambers at the 12 District Courts.
These sit in each case with three judges, who have a legal training and have as a rule been involved in patent infringement cases for several years. Only in exceptional cases will the judges also have studied a technical subject. If the court is not capable of assessing any relevant technical issues itself, a technical expert is appointed. The inclination to commission an expert opinion varies from one District Court to another. In some cases, the submission of a privately commissioned opinion by the claimant can be helpful in furthering the court’s technical understanding and may thus go some way towards obviating the need for an expert to be appointed by the court.
In the course of the proceedings before the court of first instance, all the relevant facts and defences must be presented as a matter of principle, since the presentation of new facts is only permissible at the appeal stage subject to strict conditions. Only facts that were not yet known and could not have been known during the first instance can be submitted for the first time at the appeal stage without encountering problems.
The court file is not open to public inspection. Only the oral hearing is public. If any of the parties’ business secrets need to be discussed in the course of the oral hearing, the party concerned may request that the public be excluded.
The duration of proceedings in the first instance before the District Courts differs and varies over time. Normally a case will take between 8 and 15 months. Commissioning an expert opinion usually delays the proceedings by 9 to 12 months.
The proceedings in the first instance usually take place in the following seven steps:
- filing the statement of claim
- service of the statement of claim on the defendant by the court
- response to the suit by the defendant
- the claimant’s reply to the defendant’s statement of defence
- the defendant’s rejoinder to the claimant’s reply
- oral hearing (duration of the oral hearing: about 1-4 hours) and
- decision handed down by the court.
If the commissioning of a written expert opinion is ordered, both parties are also given an opportunity to comment in writing on the expert’s opinion. During an oral hearing, the expert may be questioned on their expert opinion by both the court and the parties.
After the judgment has been handed down by the District Court in the first instance, the losing party has the possibility of lodging an appeal with the Appeal Court within one month, and reasoning the appeal within two months. Each of the specialized panels at the Appeal Courts likewise sit with three judges, who have a legal training and will not normally have studied a technical subject. The appeal proceedings are not an instance for hearing new facts. The Appeal Court merely decides on the facts already submitted in the proceedings before the District Court and on any new facts which it is permissible to submit at the appeal stage.
The appeal proceedings before the Appeal Courts usually take between 15 and 24 months. If it should be necessary to commission an expert opinion, the proceedings are drawn out by up to 12 months. The course of the proceedings corresponds substantially to that of the first instance.
The appeal judgment can only be submitted to the Federal Supreme Court for an appeal on points of law subject to very strict conditions. The proceedings before the Federal Court of Justice usually take 2 to 3 years.