Patent enforcement using a ballpoint pen as an example
Patent for a ball pen that never needs to be refilled
You have invented a ballpoint pen that never needs to be refilled. Now you want to produce this ballpoint pen yourself and sell it in Germany. In order to prevent other manufacturers of ballpoint pens in Germany from copying your invention and including the same ballpoint pen in their product range, you apply for a patent for your invention at the DPMA and obtain a patent.
Please note that the German Patent and Trade Mark Office is not allowed to provide legal advice. The enforcement of industrial property rights requires extensive legal knowledge. Therefore, it is advisable in most cases to seek legal assistance from a lawyer.
- Lawyers with special knowledge in the field of IP protection (specialist lawyers for IP protection) in your region can be found via the chambers of lawyers.
- Patent attorneys can be found via a nationwide patent attorney search, a service of the Chamber of Patent Attorneys.
Case 1: You learn that others are copying your patent.
If a third party copies and sells your patented invention (the ballpoint pen), you can enforce your registered IP right (the patent for the ballpoint pen), for example, by means of a court decision and prohibit the third party from continuing to produce and sell your ballpoint pen. (But do not forget: Out-of-court settlements are also possible and often achieve the desired outcome faster).
How does this work in detail? (Conduct before a lawsuit, civil proceedings, criminal proceedings)
What to consider with regard to a possible lawsuit:
- Conduct before a lawsuit
As holder of the right, you can first try to solve the problem in an amicable way by contacting the infringer directly. If no amicable solution can be reached, you can also assert your claims in court.
- Patent infringement action
The regional courts have jurisdiction in civil proceedings for patent infringement. There you can, for example, assert a claim for cessation and desistance and/or compensation pursuant to Section 139 of the Patent Act, a claim for the provision of information pursuant to Section 140b of the Patent Act and, if applicable, a claim for destruction pursuant to Section 140a of the Patent Act. You must appoint a lawyer to represent you before the regional courts.
- Criminal proceedings
In addition, deliberate IP infringement is in principle punishable by law, but as a rule is only prosecuted upon request (Sec. 142 Patent Act).
It may often be time-consuming to commence court proceedings. A simultaneous injunction offers provisional legal protection.
Important: If an injunction proves to be unjustified from the outset, the opponent can claim compensation from the person filing the request for injunction.
How does this work at a trade fair?
At trade fairs in particular, it often occurs that patents are apparently infringed by competitors. For this reason, you should make special preparations for trade fairs by keeping available all the patent documents you need to obtain an injunction (Sections 935 et seqq. of the German Code of Civil Procedure [Zivilprozessordnung]) and try to document the patent infringement for possible legal disputes.
How can I prevent copied or counterfeit products from entering the European market? (border seizure)
In addition to civil and criminal proceedings, there is also the option of border seizure under Section 142a of the Patent Act in order to prevent patent-infringing products from entering the European market.
Important: If a seizure proves to be unjustified from the outset, you may have to compensate the damage caused by the unjustified seizure.
Case 2: You want to challenge other people’s patents because they limit your patent rights.
After you have produced and sold this ballpoint pen for a few years, you discover through a search that one of the world-leading producers of ballpoint pens has applied for a patent at the DPMA or is already using a patent whose subject-matter, in your opinion, is something already invented by you.
How does this work in detail? (opposition proceedings, revocation proceedings)
If a granted patent limits your patent rights obtained at an earlier date, you have two options:
- Opposition proceedings
Within nine months after publication of the grant of the patent you may give notice of opposition (Sec. 59(1), first sentence, Patent Act) to the patent.
After the grant of the patent, opposition proceedings provide an opportunity for a re-examination as to whether or not the necessary requirements for the grant or maintenance of the patent are met. Opposition proceedings end with a decision on the opposition.
- Revocation action
If more than nine months have elapsed since the publication of the grant of the patent and if no opposition proceedings are pending, you have the option of filing a revocation action with the Federal Patent Court (Bundespatentgericht), pursuant to Section 81(2) of the Patent Act.
The successful revocation action as well as opposition leads to the revocation of the patent. The owner of the IP right retroactively loses all legal positions previously based on the application. In essence, grounds for revocation are lack of patentability, lack of feasibility or usurpation of the invention. The second and final appeal instance is the Federal Court of Justice (Bundesgerichtshof). An action for revocation may be brought by any third party pursuant to Section 81 of the Patent Act. The subject-matter of the action may be any patent which is to be revoked on German territory.
Last updated: 8 May 2020