GERMANY Law and Practice Contributed by: Clemens Tobias Steins, Michael Pfeifer, Daniel Grohs and Bianca-Lucia Vos, HOFFMANN EITLE
Third parties with their own interest in stopping the infringer may seek injunctive relief and the recall and destruction of infringing products if the patent pro ‑ prietor or exclusive licensee has authorised them to assert these claims on their behalf ( Prozessstand- schaft ). Non-exclusive licensees typically have such an interest if the infringing activities affect their sales. Joinders In an infringement action brought by an exclusive licensee, the involvement of the patent proprietor(s) is generally unnecessary, as the infringement court cannot invalidate a patent. There may, however, be other reasons for joining a third party in the litigation, and the German Code of Civil Procedure (GCCP) allows for such joinders. Nullity Actions and Oppositions In nullity proceedings, anyone has standing to sue, at least for as long as the patent is in force. If the patent has expired or lapsed, the plaintiff must demonstrate a legal interest in the action. The same applies to opposition proceedings before the European Patent Office (EPO) and the GPTO. However, the latter has little practical relevance in the field of life sciences. It is very rare, at least so far, to file a German national patent application for life sci ‑ ence inventions. Depending on the future experience with the Unified Patent Court (UPC), applicants may, however, wish to retain the possibility to litigate life science patents nationally by filing (also) nationally after the option to opt-out of newly filed European patent applications from the competence of the UPC has expired (prob ‑ ably in 2030). A further, albeit more limited approach is the branching-off of German utility models from pending European patent applications. It is confirmed that utility models can protect medical use inventions. However, the maximum lifetime of a utility model is ten years, counted from the application date of the European patent if the utility model is branched off. 1.2 Defendants/Other Parties to an Action German courts cast a wide net when it comes to pat ‑ ent infringers. Anyone who facilitates infringing activi ‑
ties in Germany, such as manufacturing, offering, or placing the infringing product on the market, can be considered an infringer. In the life sciences field, defendants are primarily the manufacturers or importers who hold the market ‑ ing authorisation. Wholesalers and others may be addressed in warning letters, but are rarely joined as defendants. A particularly interesting position in the German phar ‑ maceutical market is held by IFA GmbH, an informa ‑ tion service provider for the pharmaceutical market. Specifically, it maintains a database of all pharma ‑ ceuticals distributed through German pharmacies. The database, updated twice a month, is the basis (indirectly via providers of specialised software for pharmacies and other users) for all pharmacies’ trans ‑ actions with their customers and the pharmaceuti ‑ cal wholesalers who supply them. IFA is, therefore, a gatekeeper in the German pharmaceutical market. It regularly finds itself under pressure from (generic) manufacturers on the one hand and patent proprietors on the other, including as a defendant in provisional injunction proceedings. 1.3 Preliminary Injunction Proceedings Although main infringement proceedings in Germa ‑ ny are relatively fast by international standards (see below), provisional injunctions play an important role in life sciences litigation, especially in the case of a generic launch in the presence of pertinent patents (launch at risk). The reason for this is the immediate and irreversible impact of generic competition on originator prices in Germany and other countries that reference the German price. The provisional measures that may be requested include a cease-and-desist order and the seizure of infringing products. Requirements for a Provisional Injunction To obtain a provisional injunction, the petitioner must make it credible to the court that the patent is being infringed and that it would be unreasonable for the petitioner to be deferred to the main proceedings. The latter is a comprehensive assessment including the
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