Comparative Perspectives: German Patent Litigation and the Coming of the Unified European Patent Court - A Report from the APLI:SV, Part 5

By TAP Guest Blogger

Posted on January 5, 2016


This is the fifth report in a 7-part series from The 16th Annual Advanced Patent Law Institute: Silicon Valley.

The report is written by Kevin Hickey, Microsoft Research Fellow, Berkeley Center for Law & Technology at Berkeley Law School.


Although the bulk of the recent Advanced Patent Law Institute: Silicon Valley (APLI:SV) focused on the American patent law and practice, several panels looked at current developments in European patent law.


Germany has become an increasingly common and important forum for patent disputes. A panel led by Lisa Buccino, Eugene M. Paige, and Brad Waugh examined some of the differences between American and German patent litigation. The biggest procedural difference is the vastly broader discovery available in the United States. German law is much more protective of individual privacy, such that it can be difficult to take depositions, let alone obtain emails from employees’ computers. Trials themselves are quite limited in Germany—there is no jury, and witnesses are rare. Instead, the cases are often heard in a single day and decided essentially on the briefs. Perhaps the most striking difference is the bifurcated nature of patent litigation in Germany, wherein patent infringement and invalidity are assessed in separate proceedings. Infringement actions proceed in German state court and are normally decided within 18 months; invalidity actions, by contrast, proceed in federal court and take 2–3 years. Because patent injunctions are automatically awarded in Germany—there is no equivalent to eBay v. MercExchange—bifurcation is potentially very procedurally favorable to patent plaintiffs. If the infringement action is successful, plaintiffs obtain a powerful injunction before they have to defend their patent’s validity.


During the keynote address, the Right Honorable Professor Sir Robin Jacob discussed the coming of the Unified Patent Court in Europe. The Unified Patent Court—if it is implemented, which appears likely at the moment—would be the next step in the unification of European patent law. Europe already has a common patent granting system, allowing inventors to use a single application to seek patent rights in multiple countries. Patent litigation, however, is still conducted on a national basis. The proposed Unified Patent Court would change this, creating a system of common courts to hear patent cases and thus preventing conflicting results in different national jurisdictions.


The proposed procedures for the new courts allow very little discovery, and there is no jury right. Cases would be heard by local regional judges with assistance from “technical judges” with patent and/or scientific expertise. The unified system is designed to be self-funding, relying on court fees from litigants and “opt out” fees from patent owners. European patent owners who do not wish to be subject to the jurisdiction of the new court can pay a fee to opt out, and this may be wise strategy for owners of valuable patents who do not wish to be subjected to an untested court system. Although the proposed system is the product of some odd political compromises, and much will depend upon the quality of the judges, these courts have the potential to be a significant new forum for patent litigation. In Sir Robin’s words, “it is not difficult to be the best patent court in the world, but [the Unified Patent Court] would be a serious contender.”


Related Resources

Eugene M. Paige – Comparative Patent Litigation: Germany Versus the US


Read more on the Advanced Patent Law Institute: Silicon Valley


This conference summary was written by Kevin Hickey. Mr. Hickey is the Microsoft Research Fellow, Berkeley Center for Law & Technology at Berkeley Law School.