GERMANY Law and Practice Contributed by: Michael Rüberg, Daniel Herrmann and Christoph Angerhausen, Boehmert & Boehmert
to this inherent risk, the owner of a technical IP right should be sufficiently convinced about the infringement situation before sending out any such letter. A pre-litigation letter is not a formal require- ment for filing court action in Germany, so that many cases are also directly brought to court, in particular if timing and/or a “surprise effect” has strategic advantages, or if there are no pros- pects of resolving the matter amicably. Court proceedings in Germany can take the form of preliminary injunction (PI) proceedings, or main proceedings (which are separate types of proceedings, following a different set of rules and a different timing), as set out below. PI proceedings are primarily directed at obtain- ing fast injunctive relief against the infringer. Accordingly, they are “fast tracked” and are often scheduled for an oral hearing within just days or weeks of the filing of the request (depending on the urgency of the request). In cases of utmost urgency, they can even be granted within hours and without hearing the infringer (ex parte) – eg, in relation to imminent infringements on a trade show. Main proceedings allow the owner of a techni- cal IP right to file all relevant requests, including requests for information/accounting, damages, recall and the destruction of infringing prod- ucts. Main proceedings take significantly longer, however, and usually require ten to 18 months from the filing date to a first-instance decision (depending on the venue, as German courts vary on the timing of these proceedings). If the owner of a technical IP right is not suf- ficiently sure about the infringement (eg, by a method performed in facilities of the assumed
infringer that the owner does not gain access to), another possible action is a request for inspec- tion ( Besichtigungsverfügung ), which allows the owner to obtain the necessary evidence for claiming infringement through the inspection of a product or method at the alleged infringer’s facilities (or any other location not otherwise accessible to the owner) with the help of a court instructed bailiff. This action can also serve as an enforcement measure, as it can have a signifi- cant impact on the alleged infringer and sends out a rather strong signal of the owner’s resolve to enforce their technical IP right. 2.2 Third-Party Remedies to Remove the Effects of Intellectual Property Any third party who wishes to remove the effects of a German patent can file an action for nul- lity at the Federal Patent Court (FPC). A court fee has to be paid to file this action. Other than that, there are no specific requirements to file this action, such as a specific legal interest. In addition, within nine months after the publica- tion of the grant of a German or European pat- ent, any third party, except the patentee, can file an opposition against such patent. Also here, a special legal interest or other specific right to sue is not necessary. For a purely German (national) patent, the opposition must be filed at the Ger- man Patent and Trade Mark Office (GPTO), for a European patent (EP bundle patent, or unitary patent) the opposition must be filed at the EPO. A DNI action can also be filed with the infringe- ment courts to limit the effects of a granted tech- nical IP right. However, such action does require legal interest (eg, in reaction to a warning letter) and does not limit the right owner to respond- ing with an infringement claim, which would then take the lead, including the owner’s choice of forum.
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