GERMANY LAW AND PRACTICE Contributed by: Dr. Clemens Tobias Steins, Dr. Michael Pfeifer, Dr. Daniel Grohs and Dr. Bianca-Lucia Vos, Hoffmann Eitle
action. These proceedings can have been initi - ated by the defendant or by a third party. They can be an opposition at the EPO or GPTO or a nullity action filed at the Federal Patent Court (Bundespatentgericht). Oppositions can only be filed within nine months after the grant. A nullity action is admissible when this opposition period ends, and no opposition is pending. In the infringement proceedings, upon the main oral hearing, if: • the requirement of parallel invalidity proceed - ings is met; and • the infringement court should conclude that the patent is infringed, the court may, in its discretion, order a stay of the infringement proceedings pending a decision in the parallel invalidity proceedings. In exercis - ing this discretion, the court must balance the interest in non-contradictory decisions with the plaintiff’s interest in a timely decision on infringe - ment. Defendants should, therefore, not wait too long before commencing a nullity action. 1.5 Timing for Main Proceedings on Infringement/Validity First-instance Infringement Actions 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 not without the defendant taking steps that can be construed as a waiver. Claims for damages and unjustified enrichment can become barred by statute of limitation, even if infringements are ongoing. To initiate an infringement action, the plaintiff must file a complaint with any of the regional courts ( Landgericht ) that have competence for
patent matters and pay the court fee. German proceedings are front-loaded, so the complaint must substantiate the infringement and offer evidence. The court will serve the complaint on the defend - ant. If service is outside the EU, it is served pur - suant to the Hague Service Convention. With the service, the court sets the defendant two deadlines, the first for an attorney-at-law to assume representation and the second for sub - mitting the statement of defence. After the initial exchange of complaint and state - ment of defence, the parties are free to exchange further briefs; one or two more rounds of briefs are typical. 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 matching level of substantia - tion. In this regard, the parties are prohibited to lie or mislead. It is, therefore, usually not suf - ficient for the defendant to merely dispute that the attacked embodiment is construed or oper - ates 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 document disclo - sure or discovery. A legal instrument to request disclosure of a specific document under certain conditions is available but rarely used. Discovery is not available. 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
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