Typical Patent Infringement Proceedings

Typical patent infringement action in Germany
Your contact: Dr. Felix Klopmeier, LL.M. (Email)

The following is a typical process when enforcing a patent for a patent of standard compexity. Please note that in Germany it is possible to claim reimbursement of costs if you win court proceedings (details below). 


1. Warning letter

You would start by sending a warning letter to the alleged infringer. Reason is to give the infringer a chance to accept the claims. If you don’t do this, the infringer could accept the claims in court proceedings with the effect that the Claimant, although he wins the proceedings, has to bear the costs, because the proceedings would have been unnecessary if he had sent a warning letter first. It is advisable to consult an attorney at this stage already, as thre are certain formal requirements to a warning letter.


2. First Instance Infringement Proceedings – District Court

Court proceedings are initiated with filing the statement of claim and paying the court fee. The court fee is calculated based on the so-called “amount in dispute”, which is a rather theoretical figure representing the economic value of the matter for the parties. This is typically hard to guess in cases where intangible goods are involved. For patents, the amount in dispute is at least 250.000 EUR. In many casesa value of at least 500.000 EUR is realistic. We would try an estimate when preparing the statement of claim. Based on an amount in dispute of 500.000 EUR, the court fee would be 10.680 EUR. After payment of the fee, the statement of claim will be served to the Defendant.

In Germany, most evidence needs to be provided with teh statement of claim. So you need to have your evidence ready when preparing the brief.

If the Claimant is a company outside the EU, they usually have to provide a security for costs of the proceedings, if the Defendant files a respective request. This security is usually provided by a bank guarantee.

If these requirements are met, the Defendant will have to file a statement of defense.

Following these two brief, there is usually one more brief from each party (sometimes a little more) to prepare the oral hearing.

The oral hearing will typically just be a few hours. If no experts or witnesses have to be heard, there will be only one hearing. Experts are usually not required.

The first instance proceedings in Düsseldorf usually last for 9 to 18 months. However, German attorneys can represent their clients all over Germany and every court in Germany is just a few hours away from Düsseldorf.


3. Appeal Proceedings

It is possible to file an appeal against the first instance decision. The appeal court is also in Düsseldorf. Proceedings there usually require about 12-18 months.

They start with the appeal and subsequent brief containing the grounds for appeal. Then the other party has the opportunity to file a response, which is usually followed by one more brief from each side.

After the briefs have been exchanged, there will be usually only one oral hearing, which also takes just a few hours.

The decision of the appeal court in rare cases can be subject to appeal to the Federal High Court, but the court of appeals has to grant that the matter can be forwarded to the Federal High Court, which rarely ever happens. If there is no grant, the party can file an objection to the Federal High Court, that the appeal has not been permitted. A decision about that can’t be expected before 2 – 2,5 years. However, these proceedings do not affect the appeal court judgement, which will be binding unless the Federal High Court should revoke it (almost never happens).


4. Invalidity proceedings – “Bifurcation”

Usually, a Defendant will not just defend his case in the infringement proceedings, but will also file invalidity proceedings in order to have the patent in dispute invalidated. The proceedings start with a statement of claim, followed by the statement of defense. Then the Federal Patent Court sends a preliminary opinion to the parties, which identifies the issues the court feels are relevant to decide about the validity of the patent. Then both parties would typically file one more brief each. The oral hearing can be expected after about 2- 2,5 years. The decision will be rendered immediately, at the end of the hearing, which usually last just a few hours.

An appeal to the Federal High Court is possible and requires another 2-2,5 years. Here both parties will exchange briefs in preparation of the oral hearing, just like in regular appeal proceedings. The decision will be rendered just after the hearing (usually the same day). The hearing will last a few hours.

The decision if the Federal High Court in patent invalidity matters is final and binding.

Usually, infringement proceedings will not be stayed to wait for the outcome of the invalidity action. Only if the infringement court is convinced that the invalidity action will be successful, they will stay the infringement proceedings (rarely happens). If the patent has already survived an opposition or invalidity proceedings or if the patent holder limits the patent claim in anticipation of the outcome of the invalidity proceedings, the infringement proceedings will most likely not be stayed.

This means you can and usually will have a final and binding decision about infringement, even before the invalidity proceedings ended.


Cout Fees

Court fees (amount in dispute of 500.000 EUR for infringement) are as follows:

infringement 1. instance         10.608 EUR

infringement 2. instance         14.144 EUR

invalidity 1. instance               17.532 EUR

invalidity 2. instance               23.376 EUR


Reimbursement of costs

In Germany, the winning party can obtain reimbursement of costs from the losing party. In case of a partial success, the parties share the costs in the ration of success and loss.

Basis of the fee calculation is the so-called “amount in dispute”. In the current proceedings, with an estimated amount in dispute of 500,000.00 EUR for infringement (which corresponds to 600.000 for invalidity), the winning party would be entitled to a reimbursement of it’s own legal costs in an amount of

infringement 1. instance         8.052,50 EUR

infringement 2. instance         9.016,40 EUR

invalidity 1. instance               8.802,50 EUR

invalidity 2. instance               9.856,40 EUR

Ifthe litigating attorney-at-law involves a patent attorney or vice versa, the claim for reimbursement of costs doubles.

Please note that expenses for travel, experts, translations etc. will be added. Also, the losing party will pay all court fees listed above.

Please also note that IP attorneys usually do not charge their fees according to the statutory fee schedule, but based on hourly rates. So usually the actual costs are higher than the possible reimbursement.


Our Fees

We charge for our on the basis of an hourly rate. It is difficult to give an estimate for the entire proceedings, but for ideal proceedings, you will find an estimate below. The actual workload depends on the actions of the opponent (the quality and length of their briefs etc.). We will send an estimate for each step if required, so that the client has control of the costs and is not surprised by a high bill at the end of the proceedings.




First instance infringement:

Statement of claim including analyziz of infringing products: 20-40 hours, depending on the compexity of the technology and on how many products are found to be infringing.

Study of statement of defense, report to client and discussion of next steps: 5-10 hours

Brief in response to statement of defense (replication): 10-20 hours

Study of response brief from opponent (duplication), report to client and discussion of next steps: 5-10 hours

Preparation of oral hearing and oral hearing (in in Düsseldorf): 15 hours


First instance invalidity:

Statement of claim including search for prior art 20-60 hours, depending on the complexity of the technology and the availability of prior art.

Study of statement of defense, report to client and discussion of next steps: 10 hours

Brief in response to statement of defense (replication): 10-20 hours

Study of response brief from opponent (duplication), report to client and discussion of next steps: 5-10 hours

Preparation of oral hearing and oral hearing (in in Düsseldorf): 15 hours.


We can’t estimate the costs for possible appeal proceedings as easily, as the appeal depends on the reasoning of the court and the Defendants position. You can expect that the costs of an appeal will usually be about 1/3 higher than the costs of the first instance proceedings.