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Germany: Infringing inventions dispersed across multiple territories

Aprinciple of patent law is the principle of territoriality. This concerns the limited validity and enforceability of the patent in national territory.

Industry 4.0 and the Internet of Things (IoT) are mainly based on IT infrastructures dispersed across multiple territories. These geographically distributed systems are the result of connectivity and interoperability. Current inventions in these technologies usually only relate to improved interaction in already known components, which are sometimes operated in multiple countries all over the world at the same time.

The Regional Court of Munich ruled in the decision 7 O 16945/15 on the infringement of a geographically dispersed system comprising a mobile phone and a server. The court resolved the question of whether a device claim is infringed when only parts of the claimed system are used in the territory where the patent is protected while the remainder of the system is in operation abroad.

The Regional Court of Munich transferred and analogously applied previous considerations for geographically dispersed methods in a decision of the Higher Regional Court of Düsseldorf, Prepaid-Telefonkarte (2 U 51/08). The court ruled in this case that for a violation of a method claim, it is sufficient that only a few of the claimed method steps are performed in the territory where the patent is protected if at least an economic relationship is present with the country covered by the patent. An economic relationship is established if the method steps undertaken abroad can be assigned to the entity carrying out the other process steps in the territory where the patent is protected.

At the Regional Court of Munich, there was no dispute between the parties that the defendant's server was located in a patent free country, while the mobile telephone was used in Germany, where the patent is valid.

The court affirmed the patent infringement. It is sufficient that the claimed system is used in Germany insofar as the mobile phones are located in Germany and communicate with the server which could be assigned to the defendant. The actual location of the defendant's server – undoubtedly one of the two structural features of the main claim – does not then matter anymore.

The ruling of the Regional Court of Munich illustrates the scope of patent protection for device claims in relation to the prevailing situation regarding Industry 4.0 and the IoT (the operation of cross-border digital computer systems).

Offshoring of subsystems to territories where patents are not protected does not mean patent protection can be bypassed. The analogous application of the decision of the Higher Regional Court of Düsseldorf to systems that are only partially located in the national territory where the patent is protected is appropriate and makes it possible to protect the network or cloud implemented inventions of Industry 4.0 and the IoT.

Simon Lud

Maiwald Patentanwalts GmbHElisenhof, Elisenstr 3D-80335, Munich, GermanyTel: +49 89 74 72 660 Fax: +49 89 77 64

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