5.3.2 Double-track system: patent infringement and patent validity proceedings
One of the distinguishing features of the German patent system is its double-track system: patent infringement and patent validity proceedings are separated.
Infringement proceedings are heard by regional courts in the first instance and can be appealed to higher regional courts and, eventually, if leave was given, to the FCJ. By contrast, nullity actions addressing a patent’s validity must be filed with the FPC, with the FCJ as the appellate court. Only at the FCJ do the separate jurisdictions converge; however, invalidity and infringement proceedings are also heard separately here.
Infringement courts have no jurisdiction to review whether a ground for the revocation of the patent-in-suit is given. Rather, the infringement court is bound by the grant of the patent. Consequently, the defense of invalidity is not admitted in infringement proceedings as it is in other jurisdictions. However, the infringement court has discretion to stay infringement proceedings in view of a pending nullity action before the FPC or an opposition proceeding pending before the German PTO or the EPO. Commonly, defendants in an infringement litigation will file nullity proceedings at the same time as their statement of defense. This allows them to request a stay of the infringement proceedings.
In the first instance, a stay is generally only issued if there is a high likelihood that the patent-in-suit will be invalidated in the opposition or nullity proceedings. This legal standard is applied with varying degrees of strictness by the regional courts, some of which follow a slightly more generous approach regarding the stay of proceedings than others. If infringement proceedings are stayed, the stay generally lasts until the first-instance decision in the nullity proceedings or the opposition proceedings is handed down.
If infringement proceedings are not stayed, this leads to comparatively speedy infringement proceedings, with a first-instance decision within 8 to 20 months, depending on the complexity of the case and the current workload of the respective regional court.11 Conversely, the stay of proceedings can prevent the plaintiff from enforcing their patent for a considerable period, as in nullity proceedings, where a first-instance decision can typically only be expected within 15 to 30 months. The situation (often referred to as an “injunction gap”) puts plaintiffs at an advantage: the plaintiff can enforce a first-instance injunction (if a security bond is provided) before there is a decision on the patent’s validity.
In this respect, the up-front preliminary opinions of the FPC given under Section 83(1) of the Patent Act12 in writing early in nullity proceedings play an important role in the infringement court’s exercise of discretion as to whether to stay the infringement proceedings. If the FPC indicates in such a preliminary opinion that it tends to consider a patent not to be valid, the infringement court will usually stay proceedings. In the future, the lack of synchronization between infringement and validity proceedings may be further mitigated, as Section 83(1) of the Patent Act has been amended recently13 to stipulate that the FPC should issue a qualified opinion within six months after service of the action.