Disputes relating to property rights
In Germany, the so-called ‘principle of bifurcation’ exists with regard to property rights: the enforcement of property rights and the examination of the legal validity of the property right are carried out in separate procedures.
Property rights are enforced in so-called infringement proceedings. These include, for example, patent infringement proceedings, utility model infringement proceedings or trademark infringement proceedings. These proceedings are conducted before the civil courts (regional court or higher regional court).
The legal status is examined in legal status proceedings. These include opposition proceedings and nullity proceedings to attack patents, as well as utility model cancellation and also cancellation proceedings for trademarks and designs.
The proceedings for the examination of the legal status are partly designed as "official legal status proceedings" and take place before the German Patent and Trademark Office. This applies to opposition and utility model cancellation proceedings. However, some of the proceedings also take the form of "judicial validity proceedings" before the Federal Patent Court. This applies in particular to patent nullity proceedings.
Out-of-court settlement
It does not always take a lawsuit to enforce intellectual property rights. In many cases, targeted dissemination of information about a company's protected technologies is enough to ensure an effective level of protection.
One also has the option of settling with competitors out of court. Requests for a showing of entitlement to the use of intellectual property (Berechtigungsanfragen), warnings with a cease-and-desist notice and penalty clause, etc., are examples of means to that end. Experience shows that, in the long run, extrajudicial solutions are the more efficient option as compared to court settlements, as they provide a cost-efficient avenue for reaching a large number of competitors.
Judicial enforcement of intellectual property rights
There are times when judicial enforcement of patents, utility models, designs or trademarks cannot be avoided. We advise our clients not only during judicial proceedings, but also during the pre- and post-proceedings phases with the aim of making effective and strategic use of the judiciary as an instrument of intellectual property rights enforcement. In particular, we aim to create a lasting and compelling impression on competitors of the client’s determination and ability to enforce its rights.
