GERMANY LAW AND PRACTICE Contributed by: Dr. Clemens Tobias Steins, Dr. Michael Pfeifer, Dr. Daniel Grohs and Dr. Bianca-Lucia Vos, Hoffmann Eitle
1. Life Sciences and Pharma/ Biopharma Patent Litigation 1.1 Claimants/Plaintiffs to an Action Patent Infringement Actions Generally, only patent proprietors and exclu - sive licensees have standing to sue for patent infringement. Nevertheless, others may also be granted the authority to assert certain claims under specific conditions and limitations. Patent Proprietors A patent proprietor, including a co-owner, has standing to sue for patent infringement. In this regard, depending on the particular claim of relief being requested, it is the formal registra - tion as proprietor which is decisive, rather than the substantive ownership: • the claims of relief of cease-and-desist, recall and destruction of infringing products may only be asserted by the person registered as proprietor in the register of the German Pat - ent and Trademark Office (GPTO); and • for the claims of damages and rendering of accounts, the person(s) registered in the GPTO patent register as proprietor is pre - sumed to have been the proprietor(s) over the time of their registration, but the defendant may challenge this; if the challenge is suc - cessful, the plaintiff must request the render - ing of accounts on behalf of the actual own - ers and the damages to be paid to them. Co-owners may generally request a cease-and- desist order and the recall and destruction of infringing products on their own, ie, without the involvement of the other co-owner(s), unless stated otherwise in their agreement. With respect to damages, a co-owner must request the rendering of accounts and payment to all co-owners.
Exclusive licensees An exclusive licensee also has standing to sue with respect to all available claims of relief, pro - vided the infringing product and activity is within the scope of the licence. It is not necessary to register the licence with the GPTO. Others Persons other than proprietors and exclusive licensees do not have their own standing to sue but may be empowered to assert certain claims by a proprietor or exclusive licensee. Claims for damages and unjust enrichment are generally assignable and may, therefore, be asserted by an assignee. 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 proprietor or exclusive licensee has authorised them to assert these claims on their behalf ( Prozessstandschaft ). Non-exclusive licensees typically have such an interest if the infringing activities affect their sales. Joinders In an infringement action brought by an exclu - sive licensee, involving the patent proprietor(s) is generally unnecessary since the infringement court cannot invalidate a patent. There may, however, be other reasons for join - ing 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.
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