Matthias Rößler - 21. May 2018

Patent Infringement

Legal background

The concept of a patent serves the purpose of protecting a technical invention of third party usage. If the protected invention is unrightfully used by a third party legal actions as well as out-of-court settlements can be sought. Initially it is important to note, that in the event of a patent infringement the respective national court is responsible. In Germany that would be the Regional Court. The patent or license owner essentially holds the following rights:

  • Omission of the production of the questionable product.
  • Damage claims,
  • Information on origin, distribution channel and supplier chains as well as disclosure on the amount of the reproduction of the product in question
  • Recall as well as elimination of all reproduced items
  • Publication of the legal decision

In general, the patent holder has the choice of deciding between three possibilities of claiming the damage. The patent holder can either claim reimbursement of the infringing party or claim payment of the lost profit or payment of an appropriate license fee.

Out-of-court settlements

If a patent holder notices his protected invention being used by a third party, there are the possibilities of sending either an authorization enquiry or of sending a written warning. The main difference between these two out-of-court settlements is, that the authorization inquiry has no legal form specifications and is therefore a simple request made by the patent holder to a third party, if the infringing party is aware of the patent that prohibits unauthorized reproduction. This out-of-court action is a simple means of communication. If the authorization request does not resolve in the wanted solution, a claim can be enforced by a civil lawsuit.

Furthermore the patent owner holds the right to forward a written warning to any infringing third party. In comparison to the authorization request, the written warning suggests a mandatory request to refrain from any further production of the infringing product.

Once the written warning is send, the recipient either has the possibility to react to the letter by submitting or by also seeking legal assistance. Damage claims as well as restraining orders from further production can be enforced. If the third party submits to the warnings requests, a legal suit is averted.

If however it turns out, during further assessment, that the warning letter was unrightfully send, the opponent is entitled to damage claims on his side.

Court actions

In the event of a patent infringement case, the Regional Courts are responsible. Because of their relatively fast processing time of 8-14 months and the therefore resulting low cost, the Regional Courts enjoy a high standing amongst patent applicants. It is in any case important, to ensure evidence before the legal suit and have it assessed by experts. The German law states, that at this point a lawyer is obligatory.

Patent holders as well as license owners are entitled to file a legal suit in the case of a patent infringement.

Regarding Matthias Rößler:

Matthias Rößler, German and European Patent Attorney since 2003, studied mechanical engineering at the RWTH Aachen. He is co-founding partner of karo IP. A main focus of his practice is the management of large patent portfolios and the enforcement of bilateral litigation proceedings before patent offices and patent courts. His additional qualification as Master of Laws (LL.M.) qualifies him especially for multinational infringement matters in Europe.

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