Nine-month window. European patents may be challenged during a limited window of time after their issuance. Within nine months after publication of the grant of a European patent, anyone is entitled to file opposition proceedings with the European Patent Office (EPO) (see Article 99 EPC). This narrow window is the only time during which the validity of a granted European patent can be challenged with respect to all European countries in which that patent has effect. After this nine-month period, parties seeking to invalidate a patent must resort to nullity proceedings on a country-by-country basis. Resorting to national-stage invalidation proceedings is usually more time consuming and may even lead to inconsistent results, with the patent being found valid in some countries and invalid in others.
To invalidate a patent (separate and apart from EPO opposition proceedings), a “nullity action” may be brought. Only one court in Germany, the Federal Patent Court in Munich, has the exclusive jurisdiction to adjudicate nullity actions aimed at invalidating a German national patent or the German part of a European patent. The Federal Patent Court has no jurisdiction over disputes concerning infringements of patents. That jurisdiction lies with the civil courts, namely the 12 district courts and 12 appeal courts, which are headed by the Federal Court of Justice.
Nullity actions may be brought only after the opposition window has closed. Thus the earliest that nullity actions may be instituted is three months after the publication of the grant of a German patent, or nine months after the publication of the grant of a European patent. If an opposition against a patent is filed, a nullity action is inadmissible until the opposition proceedings are finally terminated. Nullity actions are subsidiary to opposition proceedings, in order to avoid contradictory decisions of the EPO or GPTO and the Federal Patent Court.
Patent infringement proceedings are exclusively litigated through 12 district courts. The most active patent court is the District Court Düsseldorf, followed by the District Court Mannheim, District Court Munich and District Court Hamburg. The panels of the district courts are composed of three judges who are trained in patent law and have several years of practical experience with patent cases. Patent matters are assigned to dedicated chambers of the court. The district courts of Düsseldorf, Mannheim and Munich, which have especially high numbers of patent cases, each have two chambers dedicated to patent infringement matters.
A court has jurisdiction to hear a case if either the defendant has its residence or principal place of business within its district, or the infringing activities were committed in the court’s district. A simple offer for sale of the accused product via the defendant’s website might be sufficient to establish jurisdiction in any of the 12 district courts. The selection of the court is usually based on strategic considerations of the patentee. Defendants cannot influence the selection made by the plaintiff.
A particular challenge of the split system is to fairly balance the interests of the patentee to quickly enforce the patent rights with the interests of the accused infringer not to be prevented from commercial activities by an invalid patent. Of course, infringement proceedings are not completely disconnected from one another, and there are mechanisms that guarantee a fair resolution of the conflicting interests. The courts may order suspension. Requesting the suspension of the infringement proceedings requires that opposition or nullity proceedings against the asserted patent be already pending by the time of the suspension request. The court has discretionary power to suspend the proceedings. Based on the submitted record, the court makes its determination as to whether there is a predominant probability (or high likelihood) that the asserted claim will be invalidated in parallel invalidation proceedings.
Court’s Reasoning as to the Question of Suspension
Since there is no evidence-taking in respect to the question of suspension, the court makes a summary assessment based on the material submitted by the parties. The likelihood of a suspension is typically very low if the defendant’s request is exclusively based on prior art documents which were already considered by the patent office during the granting or opposition proceedings. The chances for obtaining a stay are higher if the request is based on previously undisclosed, novelty-destroying prior art. It is commonly understood that there is a high threshold to achieve a stay of infringement proceedings. Statistical information on the success of stay requests is not available, but based on Preu Bohlig’s experience litigating many patent disputes in Germany, suspensions or the appointment of court experts (see next section) generally occur in less than a third of the cases.
The court may conclude that the technical knowledge of an expert is necessary. In most cases, the court renders a decision without appointing an expert. The probability of the involvement of a court expert differs from court to court, and also depends on the subject matter of the case. Precise estimations are difficult, but based on Preu Bohlig’s experience litigating many patent disputes in Germany, the appointment of a court expert generally occurs in less than a quarter of the cases. In most cases, the court bases its decision on its own assessment of the technology, as understood through the material submitted by the parties. The following approximation concerning three major infringement courts might additionally be taken into consideration when selecting the court.