Transcript 15/01/99 - Kinds of IPRs - Patents Patents

12/16/09/10 – Civil, Product Piracy, and Criminal Measures in DE
Civil, Product Piracy,
and Criminal Patent
Enforcement Measures
in Germany – and how to
Defend
Heinz Goddar and CarlRichard Haarmann
Boehmert & Boehmert
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12/16/09/10 – Civil, Product Piracy, and Criminal Measures in DE
Outline
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The German Practice on Preliminary
Injunctions Orders
The German Practice on Border
Seizures
The German Practice on Police
Raids
The Necessity of Freedom to
Operate Searches
The Benefits of a Protective
Memorandum
General Strategy to avoid or reduce
Preliminary Injuctive Orders,
Customs Seizures and Police Raids
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12/16/09/10 – Civil, Product Piracy, and Criminal Measures in DE
The German Practice
on Preliminary
Injunctive Orders
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In Patent infringement matters it is
possible for Patent owners in case of
infringement to file patent infringement
action with a civil court
Such proceedings are quite speedy and
efficient, but do not provide for immediate
relief because the infringement can not
be stopped until at least a preliminarily
enforceable judgment has been rendered
In addition or alternatively to main
proceedings the German Civil Procedural
Code (ZPO) provides for the possibility to
obtain a preliminary injunctive order
Such court order includes a cease and
desist order and mostly an order for
limited information disclosure, it can also
include a seizure order
No damage claims or extensive
information disclosure claims are
awarded to the Patent owner in a PI
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How to obtain a
Preliminary
Injunctive Order?
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A request for PI can be filed with the
locally competent IP court
No prior warning necessary
IP owner needs to show
- that he is owner of a granted German
patent/ German part of European patent
- that there is reason to assume that the
underlying Patent is valid
- that there is a clear case of infringement
- that the defendant is responsible for this
infringement
- that the case is urgent (1 month after
knowledge of infringement)
Case and Patent may not be too
complicated
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How is a Pl granted?
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In many cases the IP court (District
Court) issues the PI within 48 hours
without oral proceedings and without
notifying the defendant
Court may reject the request or
summon oral proceedings, but this
does not happen in straight forward
cases
In patent infringement cases courts
tend to summon oral proceedings
before granting a PI if the patent has
not been subject to opposition or
survived nullity action
Once the PI is granted the court still
does not notify the defendant, this is
the plaintiff’s part
Plaintiff has 1 month to serve the
defendant with the PI, in most cases
with the help of a bailiff
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How are Preliminary
Injunctive Orders
enforced?
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Upon service of the PI the
defendant must immediately
obey
If the PI includes a seizure
order plaintiff will seize the
products and keep them in
custody until a final decision
has been rendered by the civil
court
If defendant does not obey the
Civil court will fix severe
punishment fees or even issue
an arrest order against the
defendant
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Legal Remedies for
the Defendant
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Appeal to the Civil Court
The court will then summon oral
proceedings which will, depending on
the case, be held on very short notice
In these oral proceedings the parties
have to present all evidence, the
court will not consider any facts or
evidence not available in the oral
hearing
After oral proceedings the Court will
issue a judgment which can be
appealed by the losing party
If the court maintains the PI the
defendant must continue to obey
Defendant can force plaintiff to file
main court action
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Conclusion
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PIs are a very strong and efficient
weapon in the hands of a patent
owner in Germany
They are easy to obtain, easy to
enforce, hard to appeal and often
come without prior warning at
unexpected and unwelcome
occasions (trade exhibitions)
The consequences of a PI for the
defendant are nearly as severe as
the consequences of a full judgment
In many cases the whole battle is
already lost for defendant before he
even knows that he is under attack
Thus everybody doing business in
Germany must try to avoid PIs
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The German
Practice on
Border Seizures
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The German border seizure regime is
very strict and efficient
Any patent owner can file a general
request for customs seizure
Basis: granted German patent/
German part of European patent
Only some general information is
provided to customs officers who are
not able to understand and analyze
complicated technical issues
If upon importation customs is
suspecting an infringement, goods
will be preliminarily seized
Importer and IP owner will be notified
If importer does not oppose to
seizure within 10 working days,
goods will be finally seized and
destroyed
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How to react to
Border Seizures
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Within 10 working days importer can
object to the seizure
In this case the patent owner must
obtain from a civil court a PI including a
seizure order or IP owner must file main
court action
Otherwise customs will lift the
preliminary seizure and release the
goods
If the seized goods are indeed
infringing, importer should not oppose
to the seizure and rather try to quickly
negotiate a solution with the patent
owner
If the seized goods are not infringing (or
infringement or validity of patent is
doubtful) importer should try to prevent
patent owner from obtaining a PI
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The German Practice
on Police Raids
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Any willful infringement of a granted
German patent/ German part of
European patent constitutes a
criminal offence under the laws of
Germany
Patent owner can file a criminal
complaint with police or public
prosecutor
In urgent cases police can act on its
own, but usually police will only
conduct a raid and seizure action
upon instruction by the public
prosecutor
He can only initiate a raid after
obtaining a search order from a
criminal judge
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Requirements for a
Search Order
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Criminal judge must have
“reasonable initial suspicion” that a
criminal offence is being or will be
committed
He must believe that the patent
infringement is being willfully
committed
Basically, the judge (and the
prosecutor) need to believe that the
underlying patent is valid and being
infringed
In patent infringement cases
prosecutors and judges can not be
able to judge on the validity of a
patent and on potential
infringement involving complicated
technical issues
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Conclusion
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Police raids on trade exhibitions are
quite common in Germany
Police raids related to suspected patent
infringement used to be unusual due to
the severe problems for prosecutors
and judges to handle complicated
technical matters
Yet, as previously explained, recently a
huge raid has been conducted in Berlin
during IFA 2008 (as well as 2009)
based on a number of “essential
patents” and the patent owners
allegation that more or less everybody
making use of certain technologies
must infringe his patents
Thus importers and exhibitors must
make sure to alert prosecutors and
criminal courts in advance that
complicated technical issues are
involved and that they are not able to
judge the questions of infringement and
validity of the patent
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12/16/09/10 – Civil, Product Piracy, and Criminal Measures in DE
The Necessity of Freedom
to Operate Searches
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In view of the threats to potential
patent infringers by PIs, main court
actions, customs seizures and
police seizures it becomes very
obvious that it is very dangerous
and can indeed be fatal for a
company to infringe patents in
Germany
Consequently, before introducing a
new product in Germany it is of
great importance to make sure that
no patents are being infringed
This causes the need to conduct a
freedom to operate search before
launching a new product in
Germany
It must be conducted by
experienced patent attorneys with
insight into the current German
jurisdiction
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The Benefits of a
Protective Memorandum
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The most efficient tool to avoid
customs seizures and police raids
is the Protective Memorandum
(also useful and well-known for/in
Civil Enforcement Procedures)
There is no legal provision for a PM
but legal practice has developed
this tool over long years
A PM is a court writ to be filed with
all civil courts that may potentially
be locally competent for the specific
case: depending on if the case is
about a potential infringement of
patent, trademark, design or
copyright different courts will be
competent
Usually, PMs are filed with about
20-25 different District Courts
throughout Germany, in addition
there is an online central register
for PMs, but not all District Courts
are yet using this register
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12/16/09/10 – Civil, Product Piracy, and Criminal Measures in DE
The Contents of a
Protective Memorandum
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Parties of the conflict
Rough outline of the patent
involved
Rough outline of the facts of
the case
Rough outline of the history
of the conflict (if any)
Reasons of the alleged
infringer to assume that a
potential request for PI is not
justified:
- no infringement
- patent not valid
- case not urgent
- case too complicated to be
decided in summary
proceedings
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12/16/09/10 – Civil, Product Piracy, and Criminal Measures in DE
The Intended Effect of a
Protective Memorandum
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Main goal is to
prevent court from
issuing a PI without
oral proceedings and
without notifying the
defender that a
request for PI has
been filed
In many cases the
filing of a PI can even
fully prevent the court
from issuing a PI
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How do Civil Courts
react to the Filing PMs?
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They keep them on file for a certain
period of time (no longer than 3
months)
If a request for PI for such case is
received by the court, the PM will
be submitted to the judge together
with the PI request, so the court will
consider both the complaint and the
defense arguments at the same
occasion
The court is free to decide:
- issue a PI despite the defense
arguments
- refuse to issue a PI
- inform the plaintiff that oral
proceedings must be summoned
before a PI can be issued (plaintiff
then often withdraws his complaint)
- immediately summon oral
proceedings
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Why is a Protective
Memorandum beneficial for
the Defendant?
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Only possibility to present
defense arguments to the
court before a PI can be
issued
Helps prevent the issuing of
unjustified PIs
At least helps winning time
and reacting to the threat by
preventing the issuing of a PI
without oral proceedings
Thus, PMs are the best and
most efficient tools in cases
of potential patent
infringement to defend
against aggressive patent
owners
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12/16/09/10 – Civil, Product Piracy, and Criminal Measures in DE
General Strategy to avoid or
reduce Preliminary Injunctive
Orders, Customs Seizures
and Police Raids
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In preparation for introduction of a new
product a freedom to operate search should
be performed
In preparation for trade exhibitions or in view
of threats with infringement action a
Protective Memorandum should be filed with
all potentially competent civil courts
Copy of this PM should be sent to the
Central Customs Authority of Germany
(Zentralstelle Gewerblicher Rechtsschutz)
and to the Public Prosecutor who might be
locally competent (for example in the city
where a trade exhibition is to be held)
This serves
- to alert customs and police/ prosecutors
that not every claim of the patent owner in a
request for PI, request for customs seizure
or criminal complaint may be true and well
founded
- to alert customs and police/ prosecutors
that complicated technical issues are
involved regarding infringement and validity
which they cannot and should not try to
judge
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Conclusion
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Well in advance of the launch of a
new product, freedom to operate
searches should be performed
In view of a threat with patent
litigation and in preparation of trade
shows/ product presentations a
Protective Memorandum should be
filed if there is any reason to
assume that any patent owner
might feel tempted to launch an
attack
Copies of this PM should be sent to
the Central Customs Authority and
to all potentially competent public
prosecutors
By following this approach you can
try to avoid infringements
Even more importantly you can try
to avoid the extremely negative
effects of PIs, customs seizures
and police raids
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