GERMANY Law and Practice Contributed by: Michael Rüberg, Daniel Herrmann and Christoph Angerhausen, Boehmert & Boehmert
In practice, most patent disputes are limited to written expert reports, which are consid- ered as substantiated party pleading, and not as direct evidence. The courts rarely hear the party expert but may appoint an independent (court-appointed) expert if there are relevant and remaining doubts after having considered the written expert reports. Often, the courts do not see a need to do so, but can decide on their own technical understanding based on the par- ties’ pleading and factual submission. 3.7 Procedure for Construing the Terms of the Patent’s Claim Commonly, there is no separate procedure for the interpretation of the claims; the interpreta- tion is carried out in the respective proceedings themselves. Claim construction often occurs in the main oral hearing – eg, by way of the court’s introduction to the case. As an exception to that rule, the Munich Court holds a preliminary (first) oral hearing some months prior to the main oral hearing, which can (but does not have to) take the form a “claim construction hearing”. 3.8 Procedure for Third-Party Opinions German law does not foresee the possibility to seek or receive third-party opinions.
Grounds for nullity include lack of patentability (eg, lack of novelty, lack of inventive step, lack of technical character), lack of enablement, inad- missible extension of the subject-matter of the patent compared to the original version of the application, unlawful withdrawal of the invention (can only be invoked by the infringed party) and extension of the scope of protection after grant. In general, no standing to sue is required to request revocation of a German patent which has been granted and is still in force. However, if a patent has expired, the plaintiff must prove a legal interest in the revocation of the contest- ed patent – eg, a pending parallel infringement action. In infringement proceedings based on a German utility model, non-protectability can be raised as a defence. In this case, the validity of the utility model must be examined by the infringement court, even if a parallel cancellation action is pending at the GPTO. 4.2 Partial Revocation/Cancellation After examination of the opposition, the pat- ent may be maintained, limited or revoked. The decision of the Patent Division may be appealed to the FPC. Similarly, the decision in the nullity action may maintain the contested patent or declare it invalid in whole or in part. The deci- sion of the FPC may be appealed to the Federal Court of Justice. The patent is maintained with a limited scope of protection if only certain claims are attacked. The patent will also be maintained with limited protection if it is patentable in this respect but not on the basis of the documents originally granted – eg, if it sufficiently distinguishes from the prior art, and if any other grounds for revoca- tion are overcome.
4. Revocation/Cancellation 4.1 Reasons and Remedies for Revocation/Cancellation
Any person may file an opposition against the granting of a German patent within nine months from the publication of the granting of the patent in the Patent Bulletin. After expiry of the oppo- sition period and if no opposition proceedings are pending, a granted patent can only be chal- lenged by nullity action before the FPC.
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