Enforcing patent rights
Please note that the German Patent and Trade Mark Office is not allowed to provide legal advice. Therefore, the information below cannot replace legal advice by a lawyer, but will give you a rough and non-exhaustive overview of the options available to you.
How can you protect yourself from patent infringement?
The granted patent is an exclusive right. Thus, for example, other people are prohibited from producing and/or offering your invention without your consent (Sec. 9 Patent Act). You as the patent proprietor are responsible for defending the granted patent against infringers.
Get active as soon as possible. Make the work as difficult for patent infringers as possible. Watch the market and competitors to detect patent infringements. Professional providers of search services, such as the Patent Information Centres, offer assistance in this field.
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.
Our advice: 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. Have all the necessary patent documents ready to obtain an injunction. Try to document the patent infringement for possible legal disputes, for example take pictures and obtain the competitors’ catalogues.
How to enforce your patent
To enforce your patent right, you have the following options, among others: patent infringement action, injunction and/or application for border seizure. In addition, patent infringement may be punishable by law under certain circumstances.
- Patent infringement action
You can pursue IP infringement primarily under civil law, i.e. you can sue for patent infringement in the regional courts (Sec. 142a Patent Act).
Please note that you must appoint a lawyer to represent you before the regional courts. That means that you must have a lawyer to enforce your claims in court.
In patent infringement proceedings, you can assert the following claims, for example:
- claim for cessation and desistance (Sec. 139(1) Patent Act)
- claim for compensation (Sec. 139(2) Patent Act)
- claim for destruction (Sec. 140a 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.
- Application for border seizure
To prevent copied or fake products from entering the European market, you can submit an application for border seizure (Sec. 142a Patent Act) with the customs authorities.
Important: If a seizure proves to be unjustified from the outset, you may have to compensate the damage caused by the unjustified seizure.
- Criminal proceedings
Deliberate IP infringement is in principle punishable by law, but as a rule is only prosecuted upon request (Sec. 142 Patent Act).
How to challenge patents of third parties
If you discover that third-party patents infringe your patent, you can either file a notice of opposition or an action for revocation.
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.
The opposition may give grounds that argue against a lawful grant of the patent. In the opposition proceedings, it is re-examined, for a fee, whether or not the necessary requirements for the grant or maintenance of the patent are met.
After examination of the opposition, the patent can be maintained, maintained to a limited extent or revoked. Opposition proceedings end with a decision on the opposition.
- Action for revocation
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 under Section 81(2) of the Patent Act.
The successful revocation action as well as the 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.
An action for revocation must be filed with the Federal Patent Court. 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.
Example of a ballpoint pen
Using the example of a ballpoint pen that never needs to be refilled , we will show you what you can do if problems arise through third parties:
- Case 1: You learn that others are copying your patent.
- Case 2: You want to contest the patents of others, because you believe that your patent rights are limited by them.
- Application procedure for border seizure
- Enforcement directive
- Patent Information Centers
- Technology know-how protection by the Fraunhofer Institute for Production Technology (in German)
- German Chamber of Lawyers (in German)
- German Chamber of Patent Attorneys
Last updated: 13/09/19