GERMANY Law and Practice Contributed by: Michael Rüberg, Daniel Herrmann and Christoph Angerhausen, Boehmert & Boehmert
3. Infringement 3.1 Necessary Parties to an Action for Infringement The necessary parties to an action for infringe- ment are, on the claimant’s side, the owner of the IP right or the exclusive licensee, who can both initiate the infringement action and, on the defence side, the possible infringer. Also, if contractually provided for, a licensee or other persons can be the claimant of an infringement action. German law allows for a third party, such as a supplier, to become a direct (further) party to these proceedings if sufficient legal interest (such as liability for the outcome of the litiga- tion) is shown. The third party can then file own motions and/or support the case of any of the other parties by their own submissions and pleadings. It is bound by the results of the court decision, if the third party is later subjected to its own claims relating to the subject matter of what has been decided before. 3.2 Direct and Indirect Infringement In German law, there is a difference between direct and indirect patent infringement: • direct infringement occurs when a person itself uses the protected invention – eg, by manufacturing, selling or using a patented product or process; and • indirect patent infringement occurs when a person induces or assists others to use a patented invention knowing or when they reasonably should know that doing so con- stitutes patent infringement – for example, supplying components or licensing the use of a patented invention in a way that constitutes direct patent infringement. In principle, the patent holder has the same claims in both cases. In the case of indirect
ment and to check if the preconditions of the complaint are met. Parties must be identified; the patent and scope of protection must be described. Also, the potential infringing product must be stated and why it falls into the scope of protection. To verify the stated information, offers of prove are also included in the com- plaint. This requires a rather fully documented complaint, which is why German proceedings are often called “front-loaded”. In further briefs during the proceeding additional arguments, information and proof can be submitted, subject to possible exclusion for late filing. 2.12 Representative or Collective Action Representative or collective actions are not per- mitted in any IP disputes in Germany. 2.13 Restrictions on Assertion of an Intellectual Property Right The owner of an SEP underlies special restric- tions when granting licences: they must be fair, reasonable and non-discriminatory (FRAND). Also, the owner of an SEP is required to offer such licence to the patent user prior to bringing a claim for injunctive relief, subject to the offer- ing and negotiation requirements established by the European Court of Justice (so-called FRAND ping-pong). German courts have recently been given more discretion to deny injunctive relief in cases of patent infringement, if found to be dispropor- tionate. However, so far German courts are very reluctant to use this possibility, so that an injunction (in some cases combined with a grace period) is still the standard relief in the case of patent infringement.
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