GERMANY LAW AND PRACTICE Contributed by: Dr. Clemens Tobias Steins, Dr. Michael Pfeifer, Dr. Daniel Grohs and Dr. Bianca-Lucia Vos, Hoffmann Eitle
to be admissible. Requests for declarations of non-infringement thus typically depend on a particular behaviour exhibited by the defendant, such as claiming entitlement to certain rights in a warning letter. A negative declaratory action is considered subsidiary to and thus does not bar a full action for performance. “Arrow declarations”, ie, requests for a declara - tion stating that a specific embodiment is neither novel nor obvious in light of certain prior art (and thus cannot fall under the scope of protection of a patent granted later), have so far not been granted by a German court. In contrast, infringement actions typically contain merely a declaratory request that the defendant is obliged to reimburse the plaintiff for any dam - age suffered from the infringement. As a result, German patent litigation typically consists of two phases: the first focuses on the infringement itself, while in the second phase the amount of damages may be subject to a separate action (see 5.4 Damages ). 1.10 Doctrine of Equivalents The claims of a patent define the scope of protection of a patent, and due account shall be taken of any element equivalent to an ele - ment specified in the claim (cf Protocol on the Interpretation of Article 69 EPC). Based on the understanding of the claims, the courts assess whether the skilled person could find the modi - fied means used in the challenged embodiment to be equally effective for solving the problem underlying the invention, referring to three ques - tions (cf FCJ, X ZR 168/00 – Schneidmesser I ): • Does the attacked solution have essentially the same effect, ie, does it achieve the same results and advantages as the claimed inven - tion in essentially the same way?
• Was it obvious to the skilled person at the time of priority that the concerned solution had essentially the same effect? • Orientation by the wording of the claims: Would the skilled person find the modified means used in the challenged embodiment equally effective for solving the problem underlying the invention with the aid of his specialised knowledge? For striking a fair balance between the paten - tee’s interest in covering equivalent solutions and legal certainty, the third question is of par - ticular importance. Case law assesses each fea - ture in the context of the description as a whole. A limitation of the claims to a particular exam - ple from the description may result in pledging alternatively disclosed embodiments to the pub - lic (FCJ, X ZR 16/09 – Okklusionsvorrichtung ). Courts may turn to the patentee’s submissions in the grant proceeding to assess whether an amendment was indeed meant to limit the sub- ject matter of the patent, ie, to distinguish the claimed invention from the prior art, or merely to overcome formal objections (FCJ, X ZR 29/15 – Pemetrexed ). A court must not find equivalent infringement if the claimed solution was not novel or inventive over the relevant prior art (so-called Formstein defence, cf FCJ, X ZR 28/85). The rationale behind this defence is that the patent owner could not secure patent protection for an inven - tion that was already in the public domain when filing the application. 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 obli - gation to clear the way before launching a prod - uct, and failing to do so is not a factor consid -
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