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The role of patent attorneys in patent infringement disputes in Germany and Europe

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Bo-Hyun Lee of Maiwald considers how the Unified Patent Court will affect the successful German model of having patent attorneys and attorneys-at-law work together to handle the technical aspects of infringement proceedings

In the context of the Fourth Industrial Revolution and the rivalry between major countries for technological supremacy, global patent disputes are intensifying, and winning or losing patent disputes determines market leadership and dominance.

Complex technical problems often require a high level of responsiveness from lawyers working in patent litigation. They need to have a good grasp of legal intricacies, coupled with a detailed understanding of technical issues, and, above all, be able to articulate their case in a clear and comprehensible manner. For all these reasons, Germany has built up a smooth and effective system of cooperation between attorneys-at-law, who can seamlessly present a case in court, and patent attorneys, who act at the interface between the technical and legal spheres.

Teamwork has therefore become an established facet of patent litigation, with attorneys-at-law and patent attorneys jointly managing the entire process through all stages of litigation.

When planning strategy in patent infringement proceedings, it is crucial to first establish clarification on important points, such as:

  • Whether an infringement has actually occurred;

  • The validity of the patent in dispute;

  • The degree of infringement; and

  • The lines of argument.

Patent attorneys generally handle all stages of the patent life cycle – from invention analysis to filing, through to examination procedure and registration – and so understand better than anyone else the technology involved, the procedural technicalities, and the patent strategy to be followed. Therefore, in Germany, patent attorneys join the litigation team from the start of proceedings, through to the preparation of submissions, right up to oral hearings, and they work hand in hand with attorneys-at-law in the planning of effective defence strategies.

German practice

Pursuant to Section 4 (2) and Section 3 (1) No. 1 of the Patent Attorneys' Regulations (Patentanwaltsordnung), a patent attorney may act in matters or legal disputes concerning patent law, utility model law, semiconductor protection law, trademark law, employee invention law, design law or plant variety protection law conducted outside the German Patent and Trademark Office and the Federal Patent Court.

The patent attorney's participation in oral hearings on patent disputes is today taken for granted, and the parties usually grant a broad power of attorney to the patent attorney to ensure sufficient flexibility in the conduct of the proceedings.

In addition, according to Section 397 of the Code of Civil Procedure, the plaintiff and defendant parties are allowed to question witnesses directly, and, at the request of a representative, the judge shall allow the direct questioning of an attorney-at-law or a patent attorney. Under this provision, the patent attorney acting jointly with an attorney-at-law in the oral proceedings also has the right to examine the witness.

During the oral hearing, the attorney-at-law and the patent attorney assigned to the joint hearing sit together facing the presiding judge, each identifiable by the colour of their respective robes. The attorney-at-law wears a black robe with a black collar, and the patent attorney wears a black robe with a blue collar.

Vaccine dispute demonstrates the importance of technical expertise

In summer 2022, the German biotechnology company CureVac filed a patent infringement suit against Pfizer and BioNTech, claiming that their COVID vaccine infringed its patent. As the first pioneer of mRNA technology, CureVac insisted that its intellectual property rights should be recognised and respected in the form of equitable remuneration.

CureVac appointed Bird & Bird, a law firm specialising in patent litigation, as its representative and the patent attorney team of Maiwald and Graf von Stosch, the law firm responsible for CureVac's patent applications, as technical representatives. For further information, click here. This is an indication of how companies realise how important it is to involve patent attorneys with technical expertise in patent infringement proceedings from the very beginning.

The Federal Court of Justice, in its judgment of February 22 2011, Case No. X ZB 4/09, stated: "The assignment of a patent case to the competent district court, where only certain panels are regularly entrusted with patent litigation, and the participation of patent attorneys in patent litigation are intended to ensure that both the court and the attorneys appointed to represent a party and those assisting in the representation of the party in the proceedings have special expertise in order to be able to grasp and assess the technical teaching of an invention and the factual circumstances relevant for its understanding and for determining its scope."

An efficient patent infringement system

Attorneys-at-law and patent attorneys can conduct speedy and strategically superior oral proceedings through joint pleadings, which can shorten litigation. In an infringement action at first instance in Germany, an enforceable decision is rendered approximately 10 to 15 months after the action is filed. Patent infringement proceedings before German courts are frequently cited in other jurisdictions owing to the high quality of courts' judgments, efficiency and speed.

In addition, as patent infringement proceedings are often conducted in parallel with patent nullity proceedings, smooth and effective cooperation between patent attorneys and attorneys-at-law is essential to ensure a consistent strategy for both types of proceedings. Such a coherent strategy creates synergies that reduce litigation costs.

The outlook under the Unified Patent Court

Although a system has been established in Germany whereby attorneys-at-law and patent attorneys in practice act jointly in patent infringement proceedings to ensure smoother conduct of the patent litigation process and to protect the rights and interests of legitimate consumers, the Unified Patent Court, which is due to open in June 2023, has allowed individual representation by European patent attorneys under certain conditions.

The IP Federation – an association of companies, including Nokia and AstraZeneca – has issued a statement strongly supporting recognition of the right of representation of European patent attorneys to ensure wider options and better access to justice for the technology-based SMEs that are the guarantors of Europe's technological future. In recognition of this need, the patent attorney's right of representation in litigation is becoming more widely acknowledged.

The reform of the EU justice system with a view to resolving disputes quickly and cost effectively has major implications for what the IP justice system will look like in the future for innovative and ‘venturesome’ companies.

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