It’s good to litigate a patent or two

LSIPR talks to Thomas Friede and Johannes Heselberger about why Germany fits this mould.

LSIPR: What are the advantages of litigating a life sciences patent in Germany?

Thomas Friede: I believe that the litigation procedure in Germany is an advantage. It is a very streamlined procedure, which is basically an exchange of written briefs—usually two rounds— before an oral hearing. The oral hearing is very condensed and focused. Even in a large case, a hearing would only be four or five hours long. If that is compared to a full trial in the US or the UK, it’s a fraction of the time and therefore it costs less.

Johannes Heselberger: Some would say that is a disadvantage because you cannot go into too much detail, but experience shows that questions about the interpretation of the patent and what the facts are can be handled in a couple of hours. They don’t get much more illuminated after a week of discussion. That often comes down to philosophy, semantics and so forth, which don’t give you real additional substance for argumentation in a case.

TF: Related to that is the speed of proceedings. In quick courts, like Munich and Mannheim, you can have a main hearing and then a decision within six to eight months. Düsseldorf, traditionally the most-frequented litigation venue, has become slower simply because of the number of cases it hears. Right now, big cases can sometimes take well over one year before they are decided by the first instance.

JH: The overall litigation costs in Germany are significantly lower than in the UK, for example. As a rough guide, one may assume that the costs for an average first instance case in Germany may be about a third to a fifth of the costs of the corresponding UK case, and may be less than a 10th of the costs of a full-blown litigation case in the US. This is also a reason why Germany may be attractive for large US companies. They can use Germany as a test venue before starting a corresponding litigation in the US.

TF: Discovery is only available in Germany in a very limited sense, so that could be considered a disadvantage. Medical devices can be analysed, so you don’t need discovery. It’s the same for pharmaceuticals. If the patent relates to a manufacturing process, then it may become more difficult. For these cases, information from foreign discovery procedures may be helpful, if available (they may be shielded by a protective order).

Party experts do not have as much room as they do in the UK and the US. This is not a severe disadvantage, but certainly in some instances, a party expert might be able to explain things a bit more tangibly and credibly to a court than an attorney can.

JH: But it’s often surprising how judges, particularly those in Düsseldorf, have a technical understanding. Even in biotech, when a generally good understanding is not enough to fully grasp a patent in a case, judges can find their way through the cases in a profound and technically accurate manner.

LSIPR: What is a split court system, and what are the advantages and pitfalls of such a system?

JH: In Germany, infringement and validity proceedings are heard separately. Validity proceedings focus on the legitimacy of the patent, allowing the plaintiff to directly challenge the grounds for it being granted in the first place.

By separating the two types of proceedings, judges can approach the fundamentally different ways of thinking separately. Interpreting the patent and then looking at the accused embodiment that infringes, and analysing the prior art and then trying to find out whether the subject of the patent is novel and inventive, are different ways of thinking, so separating these tasks is generally a good idea.