An International Guide to
Patent Case Management for Judges

5.8 Enforcement of judgments

5.8.1 Prerequisites of enforcement

Decisions of German courts are not self-enforcing. Therefore, to enforce a decision, the favored party must become active in bringing about the necessary prerequisites. As a general rule, compulsory enforcement requires:

• an enforceable title (e.g., a judgment or court order; Sections 704 and 794 of the Code of Civil Procedure);
• (a title) provided with a clause (“enforceable execution copy”; Sections 724 and 725);¹⁷¹ and
• the service of the title on the debtor (Section 750).

Titles for decisions that are appealable and therefore not yet final and binding (res judicata) may be provisionally enforceable (Sections 708, 709). In patent infringement proceedings, judgments of lower regional courts are declared provisionally enforceable against the provision of security (e.g., by escrow or bank guarantee),¹⁷² the amount of which is determined in the operative part of the judgment on the basis of the corresponding value in suit (see Section 709).¹⁷³ Decisions of higher regional courts, by contrast, are provisionally enforceable without the provision of security (Section 708(10)).

5.8.2 Violation of cease and desist order (penalty proceedings)

In practice, upon a corresponding petition, any judgment or court order containing an injunction is accompanied by a court warning in the operative part, according to which the defendant shall be subject to penalty measures in case of failure to comply with the cease and desist obligation (see Section 890(2) of the Code of Civil Procedure). Pursuant to Section 890(1), the court of first instance hearing the case, upon request of the creditor, is to sentence the debtor culpably (i.e., at least negligently)¹⁷⁴ violating its obligation to cease and desist. For each count of the violation, the debtor, at the discretion of the court, is sentenced to a coercive fine (up to EUR 250,000)¹⁷⁵ or to coercive detention¹⁷⁶ (up to six months but no more than two years in total).

The scope of the injunction is limited to the actions described as infringing in the operative part. Thus, only if it is apparent from the reasons of the enforced judgment that a variation or modification (in comparison to the infringing embodiment(s)) is also to be regarded as an illegal use of the patent-in-suit does the cease and desist order extend to said variation or modification.¹⁷⁷

The decision on penalties is issued by a court order (Section 891) and can be immediately appealed to the higher regional court within two weeks of service (Sections 793 and 567(1)(1)). The appeal has suspensive effect (Section 570(1)).

5.8.3 Failure to comply with further obligations (coercive measure proceedings)

In accordance with Section 888 of the Code of Civil Procedure, where actions may not be taken by anyone other than the debtor, the court of first instance hearing the case, upon request of the creditor, is to urge the debtor to take the action by levying a coercive penalty payment (up to EUR 25,000 for each violation) or coercive punitive detention (up to six months but no more than two years in total). This manner of enforcement, in particular, relates to the claims for the provision of information and the rendering of accounts (Section 140b of the Patent Act; Sections 242 and 259 of the Civil Code),¹⁷⁸ destruction (Section 140a(1) of the Patent Act) and recall (Section 140a(3) of the Patent Act).

Just as with penalty proceedings, the decision on coercive measures is issued by a court order (Section 891 of the Code of Civil Procedure) and can immediately be appealed to the higher regional court within two weeks of service (Sections 793 and 567(1)). Likewise, the appeal has suspensive effect (Section 570(1)). However, unlike for penalty proceedings, the creditor is responsible for the enforcement.¹⁷⁹

5.8.4 Provisional termination of compulsory enforcement

If a provisionally enforceable judgment is appealed, upon a corresponding request by the debtor and appellant, the court may direct a temporary suspension of the enforcement, either against or without provision of security (Sections 719 and 707 of the Code of Civil Procedure). Possible reasons for a suspension, inter alia, are that:

• based on a summary examination, it must be assumed that the appealed judgment will not be upheld (obvious incorrectness); or
• according to prima facie evidence,¹⁸⁰ the debtor may suffer extraordinary, irreparable damages (exceptional disadvantages); or
• a crucial aspect that raises difficult legal questions was left unexamined in the appealed judgment.

Obvious incorrectness may, for example, be assumed if the legal assessment with regard to infringement, right to sue or the capacity to be sued was evidently erroneous. In addition, the (partial) revocation of the patent-in-suit subsequent to the pronouncement of the appealed judgment can justify the provisional suspension of enforcement.¹⁸¹ Exceptional disadvantages, in particular, include the sufficiently likely possibility that the economic existence of the debtor is threatened by the enforcement. Given that – a fortiori, if a security has already been submitted by the enforcing party – the provisional termination of enforcement is the exception to the rule, and due to the fact that the judgment will be examined in the course of the appeals proceedings anyway, the chances of a suspension are generally rather low in practice.

The decision on the question of provisional termination is delivered by court order and is incontestable (Section 707(2)).