... Revision,

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1 Revision Table of Contents Table of Contents K Table of Contents Abbreviations... XXIII Introduction... XXVII Part 1: Protection of Intellectual Property Rights Chapter 1: Patents and Utility Models... 1 A. Sources of Patent Law... 1 I. National Statutes and Regulations... 1 II. European Legislation and International Treaties... 2 B. Requirements of Patentability... 2 I. General. 2 II. Patentability Exclusions from Patentability Technical invention Novelty... 4 a) General... 4 b) Priority... 5 c) Prior Art... 5 d) Legal Standard of Novelty Inventiveness Susceptible of Industrial Application... 6 III. Term of Protection... 6 IV. Supplementary Protection Certificate... 6 C. Ownership and Assignment of Patents General Right to the Invention Right to the Patent Effect of the Registration of the Grant of the Patent Patent Vindication... 9 D. Patent Office Proceedings... 9 I. Patent Prosecution General First-to-File Principle Proceedings before the PTO... 9 a) Requirements... 9 b) Timetable c) Costs European Patent Application PCT-Application II. Observations, Oppositions and Patent Office Appeals Observation on Patentability... 12

2 XII KTable of Contents 2. Opposition to Patents Appeals III. Modification of Patents.. 13 E. Licensing I. Voluntary Licensing II. Compulsory Licensing F. Patent Enforcement I. Rights of the Patentee II. Limitations of the Rights of the Patentee Priveleged Use of a Patent Right of prior use Exhaustion of Rights.. 16 III. Types of Infringement Claim Construction and Doctrine of Equivalents Inducement/Contributory Infringement Infringement by Activities Abroad IV. Remedies for Patent Infringement Injunction against Infringement Monetary Remedies for Infringement Claims for Information and Rendering of Accounts Claims for Destruction, Recall and Final Removal Publication of Court Decision Statute of Limitations. 21 G. Litigation in Patent Cases I. Civil Law System II. Pre-Litigation Strategy Authoriziation Enquiry Warning Letter Filing without Warning III. Standing to Sue Infringement Proceedings Actions for Declaratory Judgment of Non-Infringement Nullity Actions IV. Specialized Courts for Patent Matters District Courts First Appellate Level (Berufung) Second Appellate Level (Revision) European Court of Justice V. Invalidity Defense / Separate Nullity Proceedings VI. Subsequent Action for Damages VII. Preliminary Relief and Anticipatory statement of defense Requirements for Preliminary Injunctions Proceedings Anticipatory Statement of Defense Standard of proof Enforcement of Preliminary Injunctions VIII. Litigation Timetable and Trial Format.. 28

3 K 1. Duration of Proceedings a) Infringement Proceedings b) Nullity Proceedings Initial Service of Statement of Claim Early First Session Motion for Security for the Costs of the Proceedings Third-Party Notice.. 29 Table of Contents XIII 6. Pleadings The Oral Hearing IX. Discovery and Taking of Evidence No Pre-trial Discovery Taking of Evidence Prior to Commencing the Infringement Action a) Independent Procedure for the Taking of Evidence b) Disclosure Proceedings Abroad Taking Evidence in the Course of the Proceedings a) General Principles b) Means of Evidence c) Court Orders to Produce Evidence d) Expert Testimony e) Witness Testimony The Acting Persons in Patent Litigation a) Litigators b) Patent Attorneys 35 c) Judges Litigation Costs a) Court Fees b) Attorney Fees c) Reimbursement of Costs Appellate Remedies a) General b) First Appeal (Berufung) c) Second Appeal (Revision) Enforcement and Execution of Judgments a) General b) Provisional Enforcement c) Avoiding Execution d) Enforcement Abroad H. Utility Models I. Sources of Law II. Subject Matter and Scope III. Requirements IV. Validity Challenges Novelty Inventive Step Grace Period V. Enforcement I. Emerging Trends II. London Agreement II. Community Patent and European Patent Litigation Agreement... 43

4 XIV KTable of Contents Chapter 2: Know-How and Other Technical Intellectual Property Rights A. Protection of Know-How and Trade Secrets I. General. 45 II. Know-How and Trade Secrets III. The Concept of Know-How Protection Disclosure of Know-How and Trade Secrets a) Misappropriation of Know-How by Employees b) Industrial Espionage c) Illegal Exploitation of Know-How Illegal Use of Documents Practical Consequences IV. Remedies Injunctions Damages Disclosure of Information Destruction or Return Publication of Judgments Statute of Limitations. 49 V. Enforcement and Procedure Pre-Litigation Strategy Preliminary Relief B. Topographies of Semiconductor Products I. Sources of Law II. Subject Matter, Requirements and Ownership of Topographies Topographies Protectable Subject Matter Duration of Protection Requirements for Protection Ownership and Assignment Rights of the Owner of a Topography. 52 III. Office Proceedings IV. Validity Challenges V. Enforcement C. Plant Variety Rights I. Sources of Law II. Subject Matter, Requirements and Ownership Protectable Subject Matter Requirements for Protection a) Distinctiveness b) Uniformity c) Stability d) Novelty e) Suitable Designation Ownership and Assignment Term of Protection III. Office Proceedings IV. Rights of the Holder of the Plant Variety Right Scope 57

5 K Table of Contents XV 2. Exclusionary Right as Regards the Variety Exclusionary Right as Regards the Denomination Limitations V. Enforcement Chapter 3: Copyright A. Sources of Copyright Law II. Domestic Statutes II. European Legislation and International Treaties B. Requirements, Scope and Ownership of Copyright I. Categories of Works Protected II. Requirements for Protection III. Copyright Ownership IV. Term of Protection C. Rights of the Copyright Owner D. Limits to Copyright I. Legal Licenses II. Permitted Use Without Remuneration III. Exhaustion of the Right of Distribution E. Licensing II. Form Requirements II. Scope of Licensing Contractual Options Contractual Interpretation if the Scope is Unclear Rules for Licenses in Employment Relationships Grants of Rights for Unknown Forms of Use Reasonable Remuneration to the Licensor F. Neighboring Rights I. Protection of Scientific Editions and Unpublished Posthumous Works II. Protection of Non-Creative Photographs and Non-Creative Films III. Protection of Performing Artists IV. Neighboring Rights for Entrepreneurs Neighboring Rights for Organizers of Performances Neighboring Rights for Producers of Sound Recordings Neighboring Rights for Broadcasters V. Neighboring Rights for Film Producers VI. Neighboring Rights Protection for Databases G. Copyright Infringements and Remedies 69 I. Types of Infringement Direct Infringement Contributory and Vicarious Liability II. Remedies for Copyright Infringement Injunctions Against Infringement Monetary Claims for Infringement a) Compensation for Actual Damages 71 b) Compensation for Immaterial Damage... 71

6 XVI KTable of Contents 3. Claims Based on Unjust Enrichment Claims for Information and Rendering of Accounts Claims for Destruction, Recall or Restitution of Infringing Copies and Equipment Exceptions to Remedies for Infringement Publication of Court Decision Statute of Limitations Criminal Law H. Copyright Enforcement Proceedings I. Pre-Litigation Strategy Warning Letter Starting Court Action Without a Warning Letter II. Standing to Sue III. Specialized Courts in Copyright Matters Court of First Instance First Appellate Level (Berufung) Second Appellate Level (Revision) European Court of Justice Chapter 4: Design Rights A. Sources of Design Law.. 77 II. Domestic Statutes II. European Legislation and International Treaties B. Requirements, Scope and Ownership of Design Rights.. 78 I. Protectable Subject Matter The Standard for Novelty a) Legal Standard b) Grace Period for Novelty c) Priority of Previous Foreign Application d) Exhibition Priority Individual Character of the Design Parts of Complex Products Designs Excluded from Protection II. Requirements for Protection Registered Designs Unregistered Community Designs III. Ownership and Assignment of Design Rights Ownership Presumed Entitlement Assignment of Design Rights Claim to be Recognized as Holder of a Design IV. Term of Protection Registered Designs Unregistered Community Designs C. Office Proceedings Before the German PTO and OHIM I. Application Timetable and Costs II. Application Proceedings Before the German PTO and OHIM... 83

7 K III. Opposition Proceedings. 83 IV. Invalidity Proceedings Application for Declaration of Invalidity Before OHIM and the German PTO Cancellation Action Against a German Registered Design Counterclaim for Declaration of Invalidity of a Community Design Invalidity Action Against an Unregistered Community Design Table of Contents XVII D. Rights of the Owner of a Design I. Scope of Protection II. Specific Rights of the Owner of a Design Exclusive Rights of the Owner of a Registered Design Exclusive Rights of the Owner of an Unregistered Community Design Rights of Prior Use of a Third Party III. Limits to the Exclusive Rights of the Owner Legal Limitations to Rights Exhaustion of Rights.. 86 E. Licensing F. Design Infringements and Remedies II. Types of Infringement Direct Infringement Contributory and Vicarious Liability.. 87 II. Remedies for Design Infringement Injunctions against Infringement Monetary Claims for Infringement Claims Based on Unjust Enrichment Claims for Information and Rendering of Accounts Claims for Seizure of the Infringing Products and Materials and Implements Used to Manufacture Them Claims to Destruction of Infringing Goods and Equipment Exceptions to Remedies for Infringement Publication of Court Decision Statute of Limitations Criminal Law G. Design Enforcement Proceedings I. Pre-Litigation Strategy II. Standing to Sue III. Specialized Courts in Design Matters Courts of First Instance First Appellate Level (Berufung) Second Appellate Level (Revision) European Court of Justice Chapter 5: Trademarks A. Sources of Trademark Law II. Domestic Statutes II. European Legislation and International Treaties... 93

8 XVIII KTable of Contents B. Requirements, Scope and Ownership of Trademarks and Commercial Designations I. Protectable Subject Matter Trademarks Commercial Designations Geographical Indications of Origin II. Requirements for Protection Registered Trademarks Unregistered Trademarks Having Acquired Secondary Meaning Secondary Meaning as a Tool to Obtain Registration Commercial Designations Geographical Indications of Origin III. Ownership and Assignment of Trademarks and Commercial Designations Ownership of Trademarks Ownership of Commercial Designations Assignment of Trademarks Assignment of Commercial Designations IV. Term of Protection Registered Trademarks Other Designations Protected under the German Trademark Act C. Trademark Office Proceedings I. Application Timetable and Costs German Trademarks Community Trademarks II. Application Proceedings before the German Patent and Trademark Office and OHIM General Priority and Seniority Claims Relative Grounds for Refusal Appeals Against Office Decisions III. Opposition to Trademarks German Trademarks Community Trademarks IV. Challenges to Trademarks Beyond Opposition Proceedings D. Rights of the Trademark Owner I. Scope of Protection Trademarks Other Designations Protected under the Trademark Act Geographical Indications of Origin II. Specific Rights of the Owner of a Trademark or Commercial Designation. 106 III. Limits to the Exclusive Rights of the Owner Legal Limitations to Rights Exhaustion of Rights Limitation/Estoppel E. Licensing F. Trademark Infringement and Remedies.. 108

9 K Table of Contents XIX II. Types of Infringement Direct Infringement Contributory and Vicarious Liability II. Remedies for Trademark Infringement Injunctions Against Infringement Monetary Claims for Infringement Claims Based on Unjust Enrichment Claims for Information and Rendering of Accounts Claims for Destruction and Recall of Infringing Goods Exceptions to Remedies for Infringement Statute of Limitations Criminal Law G. Customs Actions H. Trademark Enforcement Proceedings I. Pre-Litigation Strategy II. Standing to Sue III. Specialized Courts in Trademark Matters Courts of First Instance First Appellate Level (Berufung) Second Appellate Level (Revision) European Court of Justice Chapter 6: Arbitration and Mediation of IP Disputes A. Introduction II. Traditional German Litigation of IP Disputes II. Advantages of Arbitration and Mediation 114 B. Arbitration of IP Disputes I. German Legislation on Arbitration Arbitration Act International Treaties II. Arbitration Agreement Arbitrability Content and Form Requirements a) Content Requirements of an Arbitration Agreement b) Form Requirements III. Constitution and Composition of the Arbitral Tribunal Appointment of Arbitrators Challenge of Arbitrators IV. Jurisdiction of the Arbitral Tribunal Competence of the Arbitral Tribunal to Rule on Its Jurisdiction Interim Measures of Protection a) Dual System b) Enforcement of Interim Measures V. The Arbitral Proceedings General Rules of Procedure Language of the Arbitral Proceedings Place of Arbitration 121

10 XX KTable of Contents 4. Default of a Party Taking of Evidence. 122 a) General Approach to Fact-Finding and Gathering of Evidence b) Documents c) Witnesses d) Experts Confidentiality of Proceedings a) Confidentiality of the Arbitration 123 b) Confidentiality of Evidence inter partes Settlement Attempt by the Arbitral Tribunal VI. Role of Courts in Arbitral Proceedings 124 VII. Making of an Award and Termination of Proceedings Applicable Rules to Substance of Dispute Form and Content Requirements of an Award Decision on Costs Application for Setting Aside an Award VIII. Recognition and Enforcement of an Award Domestic Award Foreign Award IX. The German Arbitration Landscape Tradition and Development Specialized Types of Arbitration a) Business and Trade Specific Arbitration Institutions b) Domain Name Disputes C. Mediation of IP Disputes I. German Approach to Mediation II. Advantages of Mediation III. Mediation Required by German Law IV. Mediation Clauses and Agreements German Law on Mediation Agreements Ignoring an Obligation to Mediate a) Duty to Mediate b) Commencing Litigation in Contravention of a Mediation Agreement V. Mediation Proceedings Reference to Rules of a Mediation Institution Mediation and Court Proceedings a) Defense of Mediation Agreement. 132 b) Confidentiality Obligations c) Suspension of the Limitation Period VI. Mediator Service Agreement Mediator s Duties: Rules of Professional Conduct Remuneration of Mediators Liability of Mediators VII. Conclusion of Mediation Proceedings Settlement Agreement Enforcement of the Settlement Agreement D. Emerging Trends

11 Table of Contents K Part 2: Relevant Legislative Instruments Chapter 1: German Legislative Instruments (Excerpts) A. Patent Act B. Act on Utility Models C. Act on Copyright and Neighboring Rights XXI D. Act on the Administration of Copyright and Neighboring Rights E. Act on the Protection of Designs and Models F. Trademark Act G. Act Against Unfair Competition H. Semiconductor Protection Act I. Act on Plant Variety Rights Chapter 2: European Legislative Instruments A. European Patents B. Community Trademarks 584 C. Community Designs D. Community Plant Variety Rights E. Other Intellectual Property Legislation Chapter 3: Foreign National Legislative Instruments A. Collection of Laws for Electronic Access 584 B. List of WIPO Administered Treaties Part 3: Samples and Other Tools Chapter 1: Samples of Pre-Litigation Correspondence A. Authorization Enquiry (Berechtigungsanfrage) B. Warning Letter (Abmahnung) and Cease and Desist Undertaking (Verpflichtungserklärung) C. Application for a Preliminary Injunction (Antrag auf Erlass einer einstweiligen Verfügung) D. Anticipatory Statement of Defense (Schutzschrift) E. Request for taking of evidence (Beweisantrag) Chapter 2: Sample Calculations of Costs of IP Disputes in Germany Chapter 3: Internet Links A. PTOs and Other Authorities Directory of Intellectual Law Offices Worldwide Directory of Regional Offices European Patent Office Office for Harmonization in the Internal Market (Trade Marks and Designs) European Judicial Atlas German PTO

12 XXII KTable of Contents B. Online Search Services DEPATISnet Scientific Technical Information Network (STN) C. Case Law European Court of Justice/European Court of First Instance: Decisions of the EPO Boards of Appeal Decisions of the OAMI Boards of Appeal (Trademarks) Decisions of the OAMI Invalidity Division (Designs) Judgments of Community Design Courts Concerning Community Designs) German Federal Court of Justice German Federal Patent Court Patent Chambers of Düsseldorf Chapter 4: Bibliography A. Commentaries and Books in the German Language B. Books, Articles and Journals in the English Language Chapter 5: German-English Glossary Index