GERMANY Law and Practice Contributed by: Michael Rüberg, Daniel Herrmann and Christoph Angerhausen, Boehmert & Boehmert
infringement, however, the claims are limited if the product can also be used in a non-infring- ing manner, usually to meet the requirement of applying a strict customer warning for future sales (instead of injunctive relief). 3.3 Process Patents In principle, a patent develops its material effects only within the territory of the granting state, which is why patents granted in or for Ger- many do not grant any protection abroad, while patents granted in or for other countries do not grant any protection in Germany. Accordingly, a German patent or a Europe- an patent granted with effect for the Federal Republic of Germany does not prohibit the use of the protected invention abroad. Therefore, the process must be used in the domestic market to be patent-infringing. 3.4 Scope of Protection for an Intellectual Property Right The scope of protection of a patent is deter- mined by the patent claim, which must be inter- preted/construed. First, the wording of the pat- ent claim is decisive; furthermore, the claims are interpreted on the basis of the description and figures. The understanding of the person skilled in the art is decisive. Prior art is also used for interpretation. The prosecution history usually (unless for specific cases) is not a valid source of interpretation. 3.5 Defences Against Infringement The potential infringer can, first and foremost, dispute the infringement, by arguing favourable claim construction or submitting facts and evi- dence which show a different structure and/or function of the accused product/process than identified by the right owner.
In addition, the validity of the right can be called into question. For utility models, this can be done by way of a counterclaim in the infringe- ment court; for patents (due to the bifurcated system, see 2.3 Courts With Jurisdiction ), this requires a separate attack in the FPC or by way of opposition (during the opposition period). In the latter case, a request can be made with the infringement court to stay the case pend- ing the outcome of the validity case. However, the courts only allow such request if there is an overwhelming probability that the patent will be declared invalid in parallel invalidity proceed- ings, which is a rather high bar. Another defence against patent infringement is the right of prior use, which states that the pat- ent does not take effect against the person who, at the time of filing the application, had already put the invention into use in Germany or had taken the necessary steps to do so. The statute of limitations can also serve as a defence against patent infringement if the asserted claim is already time-barred. If the patent proprietor has placed examples of a patented product on the market or if this has been done with their consent, exhaustion can be invoked against them regarding these examples. The aforesaid FRAND objection can be raised against the holder of an SEP. 3.6 Role of Experts Expert witnesses may be called upon to prove a party’s representations or to prove contradictory facts; they may be proposed by a party but are appointed by the court. However, the party itself may also submit as evidence an expert opinion that has already been obtained.
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