GERMANY Law and Practice Contributed by: Clemens Tobias Steins, Michael Pfeifer, Daniel Grohs and Bianca-Lucia Vos, HOFFMANN EITLE
1.5 Timing for Main Proceedings on Infringement/Validity First-Instance Infringement Actions
ing level of substantiation. In this regard, the parties are prohibited from lying or misleading. It is, therefore, usually not sufficient for the defendant to merely dis ‑ pute that the contested embodiment is construed or operates according to the claim; the defendant must specify the allegedly non-infringing construction or operations. In this way, German courts largely manage without the need for investigation or evidence track ‑ ing. A legal instrument to request disclosure of a spe ‑ cific document under certain conditions is available but rarely used. Discovery or document disclosure is not available. If the court deems it necessary, it can call witnesses proposed by a party to be present at the hearing for questioning, predominantly by the court. This is, how ‑ ever, also rare in patent infringement proceedings. To prepare for the hearing, the reporting judge writes a preliminary opinion based on the written submis ‑ sions. This opinion is then discussed internally with the presiding judge and the third judge, resulting in the court’s preliminary opinion. At the outset of the hearing, the presiding judge presents this preliminary opinion to the parties involved. The attorneys then have an opportunity to respond to the court’s prelimi ‑ nary opinion. The entire hearing typically lasts about two to three hours. Upon the hearing, unless the court finds that its deci ‑ sion hinges on a factual issue for which evidence must be taken, the court will typically issue a judg ‑ ment within four to six weeks. If the decision favours the plaintiff, the plaintiff can provisionally enforce the judgment upon providing security. First-Instance Nullity Actions As with infringement actions, the plaintiff initiates the action by filing a complaint with the Federal Patent Court ( Bundespatentgericht ) and paying the court fee. The complaint must set out all validity attacks in suffi ‑ cient detail for the court to decide on this basis alone, should the defendant not dispute it. A nullity action can be served on either the proprietor or the representative, as recorded in the GPTO patent register.
An infringement action can be commenced at any time. As long as infringing activities are ongoing, the cease-and-desist claim will not be statute-barred. The claim can be considered waived, but only if the right holder takes steps that can be construed as a waiver. Claims for past damages and unjustified enrichment can be barred by the statute of limitations, even if the infringements are ongoing. To initiate an infringement action, the plaintiff must file a complaint with any regional court ( Landgericht ) with competence in patent matters and pay the court fee. German proceedings are front-loaded, so the com ‑ plaint must substantiate the infringement and offer evidence. The court will serve the complaint on the defendant. If service is outside the EU, it is served pursuant to the Hague Service Convention. Under the service, the court sets two deadlines for the defendant: the first for an attorney-at-law to assume representation, and the second for the submission of the statement of defence. After the initial exchange of complaint and statement of defence, the parties are free to exchange further briefs; one or two more rounds of briefs are typical. The presiding judge can exercise more or less control over this stage of the proceedings, eg, by: • setting time limits for further briefs; • scheduling an early court hearing; or • written guidance orders. In patent infringement proceedings, all of those are rather uncommon as of late. Eventually, the court will schedule the main hearing, usually about nine to 12 months after service. While the burden of proof for infringement is initially on the plaintiff, if the plaintiff sufficiently substantiates their case, the defendant must dispute it at a match ‑
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