GERMANY LAW AND PRACTICE Contributed by: Dr. Clemens Tobias Steins, Dr. Michael Pfeifer, Dr. Daniel Grohs and Dr. Bianca-Lucia Vos, Hoffmann Eitle
If a patent applicant wishes to stop infringe - ments before the grant, an option may be to spin off a utility model from the pending appli - cation. A cease-and-desist order can be based on such a utility model after a few days or weeks, as only registration is required. Utility models are available for product claims, include medical use claims, and have a term of ten years (if spun off from a patent application, calculated from the application date of the patent). The plaintiff bears the burden of proof regarding the infringement. In the case of a manufacturing process, this can be challenging. The German Patent Act (GPA), however, reverses the burden of proof if the patented manufacturing process creates a new product. 1.7 Pre-Action Discovery/Disclosure Under German law, there is no pre-action dis - covery or disclosure. 1.8 Search and Seizure Orders Inspection orders are available under Section 140c GPA. While the requirements in the books have been mostly aligned with procedures known in other European jurisdictions follow - ing the implementation of the EU Enforcement Directive 2004/48, inspection proceedings in Germany still have their own procedural par - ticularities. To obtain an inspection order, (i) the patentee or an authorised person is required to demonstrate that (ii) infringement is sufficiently likely, ie, that there are concrete indications for infringing acts by the defendant or another person, whereas (iii) the inspection into specific objects or docu - ments assumed with the defendant (iv) is neces - sary for the applicant for establishing its claims. The court will then assess the proportionality of issuing such an order. In essence, an inspection
order has the best chance of being granted if the applicant has collected all pieces for establish - ing infringement except for certain facts that are otherwise inaccessible to the applicant. Inspec - tions can be sought in preliminary proceedings (Section 140c(3) GPA) and granted ex parte, pro - vided that are is a sufficient reason (eg concerns that the purpose of the inspection may be frus - trated if the defendant had advance knowledge of the request) and, according to some courts, urgent action of the applicant. In order to ensure the confidentiality of the results while also fulfilling the proportionality require - ment and permitting use of the obtained evi - dence in main proceedings, inspection requests are frequently combined with an evidence pres - ervation procedure, as detailed in Section 485 of the Code of Civil Procedure. This process, known as the Düsseldorf procedure (Düsseldor - fer Verfahren), involves a court-appointed expert conducting the inspection according to the tasks specified by the court. The applicant’s outside counsel will accompany the expert and must adhere to a strict confidentiality order. The process concludes with the expert providing a written report, after which the court will decide on the release of an unredacted version, hav - ing considered the parties’ arguments. This final stage is generally completed within six months of the initial application. Per Section 493 Code of Civil Procedure, the expert report may be utilised in subsequent infringement or unrelated proceedings (Section 411a Code of Civil Procedure). 1.9 Declaratory Relief Under German law, declaratory actions require the plaintiff to demonstrate a specific legal inter - est in the declaration being sought for the action
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