GERMANY Law and Practice Contributed by: Clemens Tobias Steins, Michael Pfeifer, Daniel Grohs and Bianca-Lucia Vos, HOFFMANN EITLE
1.13 Use of Experiments German courts treat experimental evidence the same as other factual assertions. Parties may submit the results of experiments through written reports, includ ‑ ing party expert reports. When the opposing party disputes experimental findings, the individuals who conducted the experiments may be summoned to provide witness testimony. Further, court-appointed experts may be requested to conduct certain experiments to answer the questions referred to them. 1.14 Discovery/Disclosure As stated in 1.7 Pre-Action Discovery/Disclosure , there is no pre-action discovery or disclosure, and neither is there in the proceedings. It is the plaintiff’s burden to substantiate and offer evidence for the facts underlying its legal claim. On the other hand, a party may utilise information from a variety of sources. In principle, even illegally obtained information may be used. Courts apply only limited exceptions, eg, if the manner in which the informa ‑ tion was unlawfully obtained violated a person’s con ‑ stitutionally protected fundamental rights. Moreover, the burden on the defendant to respond at a level of substantiation matching that of the claimant’s submis ‑ sion, and not to lie or mislead, compensates for the lack of pre-action discovery or disclosure. The GCCP allows a party to request that the court compel the opposing party to produce a specific document essential to the requesting party. However, this process requires a high degree of specificity, often proving unhelpful in practice. 1.15 Defences and Exceptions to Patent Infringement Patent infringement proceedings typically evolve along diverging views on the patent’s scope of protec ‑ tion. In addition, the defendant may rely on a number of defences, the most pertinent of which have been outlined below. • Permitted uses: Section 11 GPA enumerates the permitted uses of a patent (eg, private action, acts of experimental use and Bolar exemption, see 2.3
patent owner could not secure patent protection for an invention that was already in the public domain when the application was filed. It follows that these known solutions or embodiments cannot constitute a patent infringement. 1.11 Clearing the Way Under German law and practice, there is no obliga ‑ tion to clear the way before launching a product, and failing to do so is not a factor considered by the court when deciding on whether to grant an injunction. However, a defendant must submit their validity chal ‑ lenge early – well before the oral hearing date – if they want the infringement court to consider the likelihood of the patent being invalidated in its decision on an injunction. 1.12 Experts Expert evidence plays only a limited role in German proceedings, as courts prefer to decide a dispute based on the parties’ written submissions. Questions of claim interpretation and patent validity are consid ‑ ered legal questions for the court to decide. In infringement proceedings, parties often rely on statements and reports of private experts to verify and support the credibility of their assertions. Such evidence, however, is accorded no procedural status beyond that of regular submissions by representa ‑ tives, unless the parties’ experts are proposed and summoned as witnesses. Party experts are not sub ‑ ject to particular duties and obligations to the court. Intentionally false statements and misleading the court can have consequences under general criminal law rules. Upon request of the parties or its own assessment, a court may appoint a neutral expert as formal evidence for answering any specific factual question it considers relevant for deciding the dispute (Section 402 et seqq. Code of Civil Procedure). Court-appointed experts are required to maintain impartiality and to respond to the specific question posed by the court. Selecting experts, preparing and discussing the expert report, and typically conducting further oral hearing consid ‑ erably delay a decision on the dispute. In provisional proceedings, the court relies entirely on the parties’ submissions; court-appointed experts are not used.
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