Patent Infringement and Utility Model Infringement in Germany
To enforce a German patent or utility model in Germany, the proprietor can ask for damages and file for injunctive relief against an alleged infringer. In Germany, patent enforcement is typically commenced by requesting from the alleged infringer “the entitlement for right of use of the invention” (Berechtigungsanfrage) or by issuing a cease-and-desist warning.
With the request for entitlement for right of use, the alleged infringer is requested to explain why he is entitled to use the subject-matter protected by the IP right in Germany. Such request for entitlement for right of use opens a discussion between the patentee and the alleged infringer, whether the patent is infringed and valid. Both parties bear their own costs.
By a cease-and-desist warning, the alleged patent infringer can be requested to stop infringing subject to a penalty clause. The alleged infringer has to pay the costs of the cease-and-desist warning, if the warning is justified. However, in case the cease-and-desist warning is unjustified, the patentee has to pay the expenses of the alleged infringer incurred by rejecting the unjustified cease-and-desist warning.
In a patent infringement action in Germany the party who loses the case has to bear the costs of both parties. Generally, a patent infringer has to bear the costs of the case only, if he received a cease-and-desist warning prior to the patent infringement action.