Patent amendments in Germany: Formal aspects

Transcription

1 Title Brevetto di invenzione: un titolo a geometria variabile? Patent amendments in Germany: Formal aspects Klaus Bacher Federal Court of Justice, Karlsruhe Milano, 27 and 28 June 2014

2 Agenda Overview Amendments during the first instance proceedings Amendments during appeal proceedings Infringement proceedings Preliminary Injunctions Damages Conclusions Klaus Bacher Patent amendments in Germany: Formal aspects Slide 1

3 Overview Bifurcation Separate proceedings on validity (nullity action) Amendments may lead to stay of infringement proceedings Nullity proceedings No specific rules for amendments New regulations on late filing since October 2010, also applicable to amendments Klaus Bacher Patent amendments in Germany: Formal aspects Slide 2

4 First instance proceedings Written notification by the court prior to the hearing (Patents Act, Section 83) As early as possible [normally: after the defendant has responded to the action] Any aspects that might be of particular importance for the decision or that will contribute to concentration on the essential questions Time limit for reaction by the parties Late filing Means of attack or defense [including amendments and auxiliary requests] filed after expiry of the time limit set by the court may be [and normally are] rejected No rejection if the other party is able to react in time without postponement of the hearing, there are sufficient grounds for the delay, or the party was not properly instructed as to the consequences of late-filing. Klaus Bacher Patent amendments in Germany: Formal aspects Slide 3

5 First Instance: decisions Bundespatentgericht, 13 December Ni 6/11 Amendments during the hearing: rejected Bundespatentgericht, 12 April Ni 21/09 Amendments during the hearing: not rejectable if there was no reason for amendments based on the notification according to Section 83 and the court changed its opinion afterwards Bundespatentgericht, 28 February Ni 16/10 Amendments during the hearing: not rejectable if the other party can give a written answer after the hearing and no further hearing is necessary Bundespatentgericht, 12 February Ni 59/10 Amendments during the hearing, based on sub-claims: rejectable, but not rejected because the patent was invalid for obviousness anyway Bundesgerichtshof, 8 August 2013 X ZR 36/12, GRUR 2013, 1174 Mischerbefestigung (fastening device for mixer) If the party s reaction to a notification under Section 83 is not sufficient, the court is not obliged to give a second notification. Klaus Bacher Patent amendments in Germany: Formal aspects Slide 4

6 Appeal proceedings Amendments accepted in the first instance No rejection in appeal proceedings Amendments rejected in the first instance Rejection is maintained in appeal proceedings if it was rightful in the first instance Amendments are taken into account if rejection was not rightful in the first instance New amendments (PA Section 117; Code of Civil Procedure, Sections ) New means of attack or defense [including amendments and auxiliary requests] are to be rejected unless the court of first instance has recognisably failed to see them or has wrongly held them to be insignificant, there was a defect in the first instance proceedings, or late-filing is not due to the negligence of the party. Klaus Bacher Patent amendments in Germany: Formal aspects Slide 5

7 Appeal proceedings: decisions Bundesgerichtshof, 28 August 2012 X ZR 99/11, GRUR 2012, 1236 Fahrzeugwechselstromgenerator (automotive alternator) New means of attack or defense may not be rejected if the party had no reason to file them with regard to the notification based on Section 83. Bundesgerichtshof, 28 May 2013 X ZR 21/12, GRUR 2013, 912 Walzstraße (rolling mill) If the contested decision is wrongly based on an interpretation of the patent which is too narrow, the subject matter of the patent may limited to this scope during appeal proceedings. Bundesgerichtshof, 27 May 2014 X ZR 2/13, soon in GRUR 2014 Analog-Digital-Wandler (analog/digital converter) Amendment may not be rejected if it is a proper reaction to a notification given by the court during the appeal hearing. Klaus Bacher Patent amendments in Germany: Formal aspects Slide 6

8 Infringement proceedings General rule The patent must be considered as valid unless it has expired or there is a final decision for revocation or nullification. The court has discretion to order a stay of infringement proceedings. In the first instance, a stay is ordered if the court estimates the chances for nullification at more than 50%. If the patent has been declared void in first instance, there will normally be a stay of infringement proceedings until the final decision on validity. Amendments If the patent is amended in nullity proceedings, the claimant is not obliged to make the same amendments in infringement proceedings. If the infringement action is based on a claim which is not defended in nullity proceedings, a stay of infringement proceedings is highly probable. To avoid this, the claimant can base infringement proceedings on the amended claim (BGH, 6 May 2010 Xa ZR 70/98, GRUR 2010, 904 Maschinensatz [machine unit]). Then, proceedings will go on if the court estimates the chances for nullification of this claim at no more than 50%. Klaus Bacher Patent amendments in Germany: Formal aspects Slide 7

9 Preliminary injunctions General rule Normally, preliminary injunctions are granted only if the court estimates the chances for nullification at a very low level. In one exceptional case (OLG Düsseldorf, 29. May W 47/07, GRUR-RR 2008, 329 [Olanzapin]) preliminary injunctions were granted even though the patent had been declared void in first instance because the infringement court held that this decision was obviously wrong. Amendments A preliminary injunction based on a claim which is not defended in nullity proceedings is possible in theory but next to impossible in practice. A preliminary injunction based on a claim which has been amended in nullity proceedings will be granted if the court estimates the chances for nullification of this claim at a very low level. Klaus Bacher Patent amendments in Germany: Formal aspects Slide 8

10 Damages General rule Strict requirements for negligence test: duty to search public registers for intellectual property rights that could possibly be infringed Compensation based on license analogy even without negligence (based on unjustful enrichment) No damages (neither for the past nor for the future) if the patent is finally nullified or if it is amended and the additional features are not present in the accused device. In these situations, final awards for damages or any other consequences of infringement are nullified on defendant s apply. Special rules for amendments made during litigation? No decisions dealing with this question Klaus Bacher Patent amendments in Germany: Formal aspects Slide 9

11 Conclusions Practical effects of the new regulation Average duration of appeal proceedings on nullity actions reduced from four years to eighteen months Longer duration of first instance proceedings Large number of auxiliary requests, especially in first instance Further changes No plans for new regulations. Since 2014: additional nullity panel (6. Nichtigkeitssenat) at the Federal Patent Court Klaus Bacher Patent amendments in Germany: Formal aspects Slide 10