Patent infringement: How to act in an emergency

Anyone who has developed an invention and applied for a patent wants to prevent imitators from also using it and making a profit from it at all costs. In the case of products that are not identically copied, the question often arises: Is there a patent infringement or not?

As a rule, patent attorneys and courts have to deal with this issue if no agreement is reached. In this article, we explain what is important in the event of a patent infringement and what legal options you have.

Whether it's a trademark application, design patent or patent, WSL Patent has been successfully helping established companies and start-ups protect their intellectual property for 70+ years. As patent attorneys and attorneys-at-law, we have extensive industry knowledge and can advise you on all matters. Feel free to contact us for a non-binding initial consultation - whether in person at our office or digitally.

Types of patent infringement

Patent infringements can be divided into three main types, which are of central importance in practice: direct patent infringement, contributory patent infringement and equivalent patent infringement. Each of these forms differs in terms of the nature of the act and the reference to the protected patent.

Direct patent infringement

A direct patent infringement occurs when a third party manufactures, offers, places on the market, uses or either imports or possesses a protected product as specifically described in the claims for the aforementioned purposes without the consent of the patent proprietor. This also applies to the realization of a process by carrying out all process steps as described in the claims.

It is irrelevant whether the infringement was committed intentionally or unintentionally. The decisive factor is that an act is carried out which directly affects the scope of protection of the patent. In concrete terms, this means that all features of a protected patent claim are directly realized.

Indirect patent infringement

Indirect patent infringement requires an indirect act. It occurs when a third party supplies or offers means or devices that constitute essential elements of the patented invention to persons who could thereby directly infringe the patent.

A classic example of this is the sale of components that can only be used to manufacture a patented product. This type of infringement requires that the third party knew or should have known that these means could be used to infringe the patent.

Equivalent patent infringement

In the case of equivalent patent infringement, the protected product is not directly copied, but a modification is used that nevertheless implements the technical teaching of the patent in an equivalent manner.

This involves modifications that achieve the same effect as the protected patent despite technical differences. An equivalent infringement exists if the modification achieves the same technical effect, is obvious to a person skilled in the art and can be regarded as equivalent to the protected solution.

The so-called "Schneidmesser" questions serve to clarify whether a modified embodiment of a product is to be regarded as patent infringing because it implements the protected technical teaching in an equivalent manner. They originate from the case law of the Federal Court of Justice (BGH) and are of central importance for assessing equivalent patent infringement.

The following questions are asked:

  1. Equivalent effect: Does the modified embodiment achieve the same technical effect as the patent-protected solution?
  2. Obviousness: Was the modified embodiment obvious to the person skilled in the art on the basis of his knowledge and considerations, so that he could recognize the deviating solution as having the same effect?
  3. Equivalence: Does the skilled person rely on the considerations of the patent claim when finding the modified solution, so that the skilled person can regard the modification as an equivalent implementation of the invention?

These questions were formulated and specified by the Federal Court of Justice in the Schneidmesser I decision (BGH, judgment of March 12, 2002 - X ZR 168/00). In practice, they are decisive in determining the scope of protection of a patent and the limits of equivalent infringement.

The differentiation and classification of the infringing act into one of the three above categories is important as it can influence the legal claims of the patent proprietor. The respective type of infringement determines which claims can be asserted and what evidence is required.

Have you received a warning letter with a cease-and-desist declaration with penalty clause because you are accused of patent infringement? In this case, it often makes sense not to make any hasty decisions and not to sign anything for the time being. Have the validity of the warning letter checked by a lawyer and, if necessary, defend yourself in order to avoid unwanted financial obligations.

Types of proceedings in the event of patent infringement

There are two main types of proceedings in legal disputes over patents:

The first type of proceedings is infringement proceedings. This concerns the enforcement of a patent against alleged infringers. Infringement proceedings are heard before the ordinary courts, i.e. the regional courts (LG) and on appeal or revision before the higher regional courts (OLG) or the Federal Court of Justice (BGH). In infringement proceedings, the issue is whether someone has used an existing patent unlawfully.

In addition, the alleged patent infringer usually initiates so-called validity proceedings, which serve as a defense measure. These proceedings concern the question of whether a granted patent is valid. For German patents, they are conducted in particular before the Federal Patent Court (BPatG) in Munich. These include, for example, nullity actions in which a patent is sought to be declared invalid because, for example, it does not have the required inventive step or is not new. The Federal Patent Court is responsible for such national nullity proceedings at first instance, while the Federal Court of Justice (BGH) acts as the appeal instance.

A special characteristic in Germany is the separation principle, according to which validity and infringement proceedings are treated separately, which means that a possible invalidity of a patent must be asserted in separate proceedings before the Federal Patent Court.

The separation principle can lead to a patent being considered infringed before a regional court but later declared invalid in the context of validity proceedings. This often creates strategic complexity in patent disputes. We are happy to support you in asserting your rights and interests!

Patent infringement proceedings before the Unified Patent Court

The situation is different at the Unified Patent Court (UPC). The UPC has exclusive jurisdiction for unitary patents and national patents, unless their owners have made use of the so-called opt-out option to exclude the jurisdiction of the UPC.

With the Unified Patent Court, on the other hand, infringement issues and the legal validity of a patent can be dealt with together in one procedure. This not only offers a more efficient legal process, but also reduces the risk of contradictory decisions. The Unified Patent Court thus creates a new basis for the effective and Europe-wide enforcement of patent rights.

Another decisive advantage of the Unified Patent Court is its cross-border effect. Patent proprietors can now file an action that is simultaneously binding for several EU member states. This eliminates the need to file separate actions in individual countries, as was previously the case in Germany or other European countries, for example. This not only saves time and costs, but also enables a uniform decision on the validity or infringement of a patent, which increases legal certainty for companies and inventors.

You can find out more about the unitary patent and the Unified Patent Court in our corresponding article.

Suspension of proceedings in the event of patent infringement

If there are doubts about the legal validity of the patent, the defendant can apply for a stay of the proceedings before the infringement court. This is particularly useful if an action for revocation has been filed at the same time with the aim of declaring the patent invalid.

The decision on suspension lies with the infringement court. As a rule, a stay is only granted if there is an overwhelming probability that the patent will be destroyed. This means that there must be a good chance that the patent will be declared null and void in the validity proceedings (e.g. before the Federal Patent Court).

Temporary injunctions: Quick help with urgent legal protection

Preliminary injunctions are an important instrument of urgent legal protection in the field of intellectual property rights, especially in the case of patent infringements. They are used when a quick court decision is required, for example to obtain an immediate injunction against unlawful acts. A preliminary injunction is designed to secure legal positions in the short term before the main proceedings have been concluded. Its main purpose is to prevent irreparable damage or loss of rights that could result from the duration of regular court proceedings.

However, the application for a preliminary injunction is subject to strict conditions. The applicant must substantiate both the urgency of the case and the asserted claim. This is usually done by submitting evidence and affidavits. Urgency means that the action must be stopped immediately, otherwise the damage cannot be repaired. The courts carefully examine whether the requirements for a quick decision are met, as abuse of the proceedings should be ruled out.

Such proceedings typically only take several weeks, which is extremely short compared to regular court proceedings. However, it is crucial that the applicant acts quickly, as a delay can be interpreted as a lack of urgency. Preliminary injunctions are therefore an effective means of enforcing rights at short notice and limiting damage - an indispensable tool in modern patent protection.

Patent infringement: These costs are incurred

The costs of patent infringement proceedings depend on the amount in dispute, which is often in the range of several hundred thousand to several million euros. This amount in dispute determines the amount of the court and legal fees to be borne by the unsuccessful party, which can range from the mid five-figure range to six-figure amounts for one instance and one type of proceedings (infringement or validity proceedings), depending on the amount in dispute.

In addition to these costs, further expenses may be incurred, such as expert witness costs, costs for technical experts or costs in connection with the enforcement of a judgment (e.g. enforcement costs). Especially in international disputes or proceedings involving several instances, the total costs can increase considerably. It is therefore advisable to carry out a well-founded cost-benefit analysis at an early stage and to focus on good research and preparation as early as the patent application stage!

Patent search: Avoid disputes later on with good preparation

In order to avoid patent infringement proceedings, we recommend taking preventive action before launching a product on the market or filing a patent application and having a comprehensive patent search carried out by an experienced patent attorney. Even if this is already associated with costs, you can avoid finding yourself in such infringement proceedings later on.

Permanent patent monitoring is used to identify potential imitators of your own technology. We will be happy to advise you on possible implementation and legal action against imitators.

Conclusion: How a patent attorney provides support in the event of patent infringements

A patent attorney plays a central role in protecting and enforcing the rights of a patent holder or in defending an alleged infringer in patent infringement proceedings. He combines his technical expertise with legal know-how to develop promising strategies for the proceedings.

The patent attorney works closely with attorneys-at-law in infringement proceedings to ensure the best possible representation. He analyzes whether a patent infringement has actually occurred and deals with all technical issues. In particular, he assesses the prospects of success of a stay of the infringement proceedings if there are doubts about the legal validity of the patent.

In parallel validity proceedings, such as nullity actions or opposition proceedings, the patent attorney takes over the representation and helps to enforce your rights as patent proprietor or opponent / nullity plaintiff. His technical expertise is particularly crucial in the preparation and presentation of arguments in order to present complex issues in a comprehensible manner.

A patent attorney thus offers comprehensive support in the enforcement and defense of patent rights and makes a significant contribution to securing the economic value of a patent.

As a law firm specializing in patent and trademark law, we have the expertise and the right tools to support you in all matters relating to intellectual property rights. Thanks to our decades of experience, we can also provide you with comprehensive advice on the possible options and give you an assessment of the legal situation.

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