GERMANY LAW AND PRACTICE Contributed by: Dr. Clemens Tobias Steins, Dr. Michael Pfeifer, Dr. Daniel Grohs and Dr. Bianca-Lucia Vos, Hoffmann Eitle
Stay Because of Lis Pendens If proceedings involving the same cause of action between the same parties have been brought at another EU court, the German court must stay its proceedings according to Article 29 Brussels Regulation I (recast) until the court seized first has determined whether it has jurisdiction. If the proceedings are merely related, the court that has been seized later has discretion on whether to request a stay (Article 30 Brussels Regulation I (recast)). No Discretionary Stay – Taking Foreign Judgements Into Consideration The court, however, has no discretionary powers to stay the infringement proceedings, for exam - ple, to await a foreign decision in scenarios other than the one mentioned above. However, some - times, a court’s use of its discretionary schedul - ing powers can appear as if it was done to await a certain event. In principle, German courts must take decisions by a foreign court on another national part of the same European patent into consideration and, if the court comes to a different decision, explain why the court diverges. However, decisions from the USA or other overseas courts are not of much relevance since these courts’ practices A patent can only be amended in opposition or nullity proceedings, not infringement proceed - ings. In infringement proceedings, the plaintiff can - not amend the patent. However, a patent can be asserted in limited form (eg, to reduce the risk of a stay). This may also be done initially in the form of so-called “in particular” claims – that is, claims where the plaintiff substantiates are seen as being too different. 1.17 Patent Amendment
that certain dependent claims or features from the description are also realised by the attacked embodiment – without limiting their broadest request for a cease-and-desist order. This allows the plaintiff to potentially limit the asserted claim later in the proceedings (ie, if the patent is upheld in such amended form). 1.18 Court Arbiter The plaintiff may commence infringement pro - ceedings or provisional injunction proceedings regarding a patent at any of the twelve regional courts with specialised patent panels, at least as long as infringing acts are conducted or immi - nent in the court’s territory. In practice, this gives the plaintiff freedom to forum-shop between these courts. As plaintiffs usually choose an experienced court, the Regional Courts Dussel - dorf and Munich handle almost all infringement actions in the field of life sciences. As set out under Requirements for a Provisional Injunction (Validity), above, these courts have developed a somewhat distinct practice related to the patent’s validity standard in provisional injunction proceedings, albeit it has no signifi - cant relevance in the early generic entry cases.
2. Generic Market Entry 2.1 Infringing Acts
Under German law, different acts regarding a generic market entry can constitute a patent infringement, as outline below. • Offering or advertising on trade fairs despite patent protection. • Listing in the Lauer-Taxe: This research device contains all available drugs and other medicinal devices in Germany. It is also suf -
95
CHAMBERS.COM
Powered by FlippingBook