Germany: Infringing inventions dispersed across multiple territories
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

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 24info@maiwald.euwww.maiwald.eu

more from across site and ros bottom lb

More from across our site

The new head of Phillips Ormonde Fitzpatrick outlines his vision for the firm and explains why D&I measures need constant work
Based on surveys covering more than 25,000 in-house lawyers, the series provides insights into what law firms must score highly on when pitching to in-house counsel
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Tony Nguyen, who returned to Fish & Richardson this month after a year travelling overseas, tells Managing IP how and why he took the plunge
Tom Treutler, who previously managed the Vietnamese office of Tilleke & Gibbins, has joined East IP
Counsel discuss upcoming AI and data privacy legislation and what they’ve learned since Chile joined the Madrid Protocol
INTA has postponed its planned Annual Meeting in Dubai, but the organisation should think carefully about whether it wants to go there at all
The firm has named its new managing director after its former Asia head resigned earlier this year
As law firms explore how best to support clients at the UPC, members of the UPCLA network believe they have found the best of both worlds
The Industry Patent Quality Charter hosted a conference in which it discussed the importance of granting high-quality patents
Gift this article