What is a possible patent infringement

Patent enforcement using the ballpoint pen case study

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Patent for a ballpoint pen that never needs to be refilled

You invented a ballpoint pen that never needs to be refilled. Now you want to manufacture this ballpoint pen yourself and sell it in Germany. In order to avoid that other ballpoint pen manufacturers in Germany imitate your invention and include the same ballpoint pen in their sales range, register your invention with the DPMA and obtain a patent.

Please note, that the German Patent and Trademark Office is not authorized to provide legal advice. The enforcement of industrial property rights requires extensive legal knowledge. It is therefore advisable in most cases to seek legal help.

  • You can find lawyers with specialist knowledge of commercial legal protection (specialist lawyers for commercial legal protection) in your region via the bar associations.
  • You can find patent attorneys using a nationwide patent attorney search service provided by the Chamber of Patent Attorneys.

Case 1: You learn that others are copying your patent

If a third party reproduces and sells your patented invention (the ballpoint pen), you can exercise your registered property right (ballpoint pen patent), for example with the help of a judicial decision enforce and prohibit the third party from continuing to produce and sell your pen. (But don't forget: out-of-court settlements are also possible and often lead to faster results.)

How does that work in detail? (Conduct before a trial, civil trial, criminal trial)

What to consider with regard to a possible process:

  • Behavior in front of a process

As the rights holder, you can first try to resolve the problem amicably in direct contact with the infringer. If an amicable solution does not succeed, you can also assert your claims in court.

The regional courts are responsible for civil law proceedings in the event of patent infringements. There, for example, a claim for injunctive relief and / or a claim for damages in accordance with Section 139 of the Patent Act, a claim to information in accordance with Section 140b of the Patent Act and, if applicable, a claim for destruction in accordance with Section 140a of the Patent Act. A lawyer is required before the regional courts.

In addition, an intentional infringement of property rights is generally punishable, but is usually only prosecuted upon application (Section 142 PatG).

Legal action can often take some time. At the same time, an injunction offers interim legal protection.

Danger: If an injunction proves to be unjustified from the start, the opponent can assert a claim for damages against the applicant.

How does it work at a trade fair?

At trade fairs in particular, it happens again and again that competitors apparently infringe patents. Therefore, prepare yourself for trade fairs in particular by keeping available all the necessary patent documents that you need to bring about an injunction (ยงยง 935 ff. Code of Civil Procedure) and try to document the patent infringement for possible legal disputes.

How can I prevent counterfeit or counterfeit products from entering the European market? (Border seizure)

In addition to civil and criminal proceedings, there is also the option of border seizure in accordance with Section 142a of the Patent Act in order to prevent patent-infringing products from reaching the European market.

Danger: If the seizure proves to be unjustified from the start, you may have to compensate for the damage caused by the unjustified seizure.


Case 2: You want to challenge the patents of others because this restricts your patent rights

After you have produced and sold this pen for a few years, you will find out through research that one of the world's largest pen manufacturers has applied for a patent with the DPMA or is already using it, which, in your opinion, relates to something that you have already invented .

How does that work in detail? (Opposition proceedings, nullity proceedings)

If a granted patent restricts your previously obtained patent rights, you have two options:

You can file an objection (Section 59 Paragraph 1 of the Patent Act) against the patent within nine months of the publication of the grant.

After a patent has been granted, the opposition procedure enables you to check whether the necessary requirements for the grant or maintenance of the patent are missing. The objection procedure ends with an objection decision.

If more than nine months have passed after the patent was granted and no opposition proceedings are pending, you can bring an action for annulment at the Federal Patent Court under Section 81 (2) of the Patent Act.

The successful nullity action, like the opposition, leads to the revocation of the patent. The owner of the property rights retroactively loses all legal positions previously based on the registration. Grounds for invalidity are essentially lack of patentability, lack of feasibility or the unlawful removal of the invention. The second and final appellate instance is the Federal Court of Justice. An action for annulment can be initiated by any third party according to Section 81 PatG. The subject of the action can be any patent that is to be declared null and void on German territory.

Status: 08/10/2019