EPLAW PATENT BLOG

DE – Kurznachrichten / bifurcation

Posted: December 8th, 2014

German Federal Supreme Court in re „Kurznachrichten“, docket no. X ZR 61/13

The attractiveness of litigating patents in Germany resides to a great extent in the bifurcated system which provides for separate and distinct proceedings concerning infringement on the one hand and invalidity on the other. Above all, this separation is for the following three reasons a privilege to the patentee: firstly, infringement proceedings are faster than invalidity proceedings, secondly, they are rarely stayed by the infringement trial courts in light of parallel invalidity proceedings and thirdly, it is very difficult to suspend the enforcement of provisionally enforceable infringement decisions.

The recent decision “Kurznachrichten” dated 16 September 2014 of the German Federal Supreme Court is of great importance in that context. In the operating provisions of this decision it is clearly spelled out that the enforcement of non-final infringement decisions must as a matter of principle be suspended if the patent in dispute is declared invalid in first instance invalidity proceedings. Only, if such invalidity decision is evidently wrong, a different approach might apply.

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Obiter dictum, the German Federal Supreme Court made some remarkable statements concerning the “stay” (=suspension) of the infringement proceedings in light of pending invalidity proceedings. Pursuant to the current practise of the German infringement trial courts, a “stay” is only warranted, if there is a “very high likelihood” (almost equating certainty) that the patent in dispute will be invalidated in the pending invalidity proceedings. In numbers this case law means that only about 10% of all infringement proceedings are stayed (in addition one must take into consideration that in many infringement proceedings, parallel invalidity proceedings are not commenced by the defendant at all).

Contrasting to this trial court standard, the German Federal Supreme Court states in the decision “Kurznachrichten” that a “sufficient likelihood” of invalidity (“hinreichende Wahrscheinlichkeit”) that the patent in dispute is declared invalid in pending invalidity proceedings should warrant a stay of the infringement proceedings. In addition, the German Federal Supreme Court emphasizes the importance of an efficient invalidity defence in order to safeguard the defendant’s constitutional rights.

Of course, this statement regarding the “sufficient likelihood” was only made “obiter dictum” so that it remains to be seen if such statement will impact the current stay practise of the infringement trial courts. However, the trend is clear: the German Federal Supreme Court obviously is trying to soften the unbalanced effects of the bifurcated system as currently practised in Germany.

Read the decision (in German) here

Head note: Tobias Wuttke, Meissner Bolte & Partner

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