GERMANY Law and Practice Contributed by: Michael Rüberg, Daniel Herrmann and Christoph Angerhausen, Boehmert & Boehmert
1.8 Remedies Against Refusal to Grant an Intellectual Property Right The applicant can file an appeal to bring the case to a higher instance. 1.9 Consequences of Failure to Pay Annual Fees If annual fees are not paid, there is a six month grace period during which no loss of rights occurs. If the owner pays the annual fees with a 50% surcharge within the six-month period, then a loss of rights is prevented. Otherwise, the right will lapse. 1.10 Post-Grant Proceedings Available to Owners of Intellectual Property Rights Post-grant, the owner can initiate limitation proceedings to limit the claims. In addition, the owner can limit the claims during opposition and revocation proceedings to be launched by a third party. The amendments must not extend the scope of protection vis-à-vis the granted claims and must be originally disclosed in the application as originally filed. During opposi- tion proceedings, the amendments must also be occasioned by a ground of opposition – ie, the owner cannot freely amend the claims post- grant.
Out of court, a first option to enforce the respec- tive right would be a pre-litigation letter, which can take the form of an informal request for authorisation ( Berechtigungssanfrage ), or the form of a formal warning letter ( Abmahnung ). With a request for authorisation (also called a “soft letter”), the owner of the technical IP right points towards the fact that they believe that the respective right is being used and asks the alleged infringer why they believe they are enti- tled to that use. This letter has no direct legal implications, but instead serves the purpose of entering discussions with the infringer, often with the aim of reaching an early settlement or extending a licence offer to the infringer. If draft- ed carefully, it also gives no rise for any counter- claims, such as claims for recovery of attorneys’ fees, and is therefore a rather “risk-free” way to start enforcing the respective right. It does bear the risk, however, of giving the infringer a heads- up about the potential further conflict, which the infringer may use to prepare for or even start an early attack on the validity of the technical IP right. With a formal warning letter, the infringer is simi- larly being informed about the assumed infringe- ment, but, at the same time, is requested to take certain measures to avoid court proceedings. In most cases, the requests will comprise a written cease-and-desist declaration from the infringer (usually also containing a contractual penalty payment in the case of default). Also, in many cases, the owner of the technical IP right will include requests for information and account- ing, damages and cost recovery. Other than the aforesaid “soft letter”, such formal warn- ing letter does allow the alleged infringer to file certain counterclaims, including for a declara- tion of non-infringement (a “DNI action”) and/or cost recovery with the competent courts. Due
2. Initiating a Lawsuit 2.1 Actions Available Against Infringement
Once the owner of a technical IP right has estab- lished infringement of that right (for instance, by way of purchasing and analysing a competitor’s product), they have different options to enforce such right against the identified infringer, which include various actions in and out of court.
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