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DE – A fair warning relating to warning letters

19 Aug 2014

Order of the Higher Regional Court Düsseldorf, Germany, dated March 20, 2014, docket no. I-2 W 8/14

On March 20, 2014, the Higher Regional Court Düsseldorf had to decide whether the explicit assertion of claims based on one or several explicitly named national parts of an EP patent in a warning letter or a court action could implicitly also be deemed to be an entitlement to claims relating to further national parts of the identical EP patent against the alleged infringer.

_______Facts and findings of the case________
In the matter at hand, the patent holder had asserted rights based solely on the Turkish national part of EP´575 against an alleged infringer in an infringement action before a Turkish court. Neither the German national part of EP´575 nor any alleged infringing actions in Germany were referenced in a warning letter or in the pending Turkish court proceedings.

When the patent holder was requested by the alleged infringer to provide his opinion on whether the accused products could also be deemed to infringe the German national part of EP´575, the patent holder merely responded that he was not prepared to give any opinion on possible future actions against the alleged infringer. In return, the alleged infringer filed a declaratory action with the Düsseldorf Court, requesting the court to declare non-infringement of the German national part of EP´575.

In its court order, the Higher Regional Court Düsseldorf held that the plaintiff could not claim a legitimate interest in a German declaratory judgment as the patent holder had neither explicitly nor implicitly alleged to be entitled to infringement claims against the plaintiff in Germany. Due to the lack of any alleged claims deriving from the German national part of EP´575, the matter at hand did not present an unclear alleged infringement situation between the parties which could be resolved by the court.

In the light of this finding, the court held that the plaintiff could not prove a legitimate interest according to Section 256 para. 1 German Code of Civil Procedure which is a mandatory procedural requirement and thus held that the costs of the proceedings had to be borne by the plaintiff (the parties had already agreed on the case not proceeding to judgment, so the court only had to decide on the costs).

________Legal Framework_______
Under Section 256 para. 1 of the German Code on Civil Procedure, declaratory relief can only be sought if the plaintiff is able to prove a legitimate interest in a declaratory judgment. As a matter of principle, such legitimate interest is given if a patent holder either explicitly or implicitly alleges entitlement to claims deriving from a patent.

In its detailed grounds for judgment, the court explained the circumstances under which such an implicit entitlement is to be assumed or denied in case of an EP patent:

The court held that an implicit entitlement is to be assumed if the patent holder asserts claims from an “EP” without identifying specific national parts of the EP patent. In such a case, the assertion implicitly includes all national parts of the EP. Consequently, the addressee of such assertion may seek declaratory relief in Germany and potentially also in any other member state in which the national parts of the EP are in force (this depends of course on the applicable case law in such further member states). This implies a significant cost risk.

To allow for a better distinction, the court furthermore outlined the following circumstances, under which an allegation of entitlement will have to be denied:

• if the court action or warning letter refers to one or several foreign (= non-German) national parts of the EP patent;
• if the claims of the different national parts of the EP patent have an inconsistent wording;
• if the patent holder asserts claims under the doctrine of equivalence, as the assessment of a patent infringement under the doctrine of equivalence is dependent on the national case-law (which is often inconsistent in this respect);
• if an Enquiry of Authorization letter (“Berechtigungsanfrage”) is sent by the patent holder or if of the patent holder simply mentions his patent without asserting claims;
• if the patent holder is being asked for a statement whether a specific product could be deemed to be infringing and the patent holder does not respond to this inquiry.

For practitioners, the judgment emphasizes once again the importance of a carefully-worded warning letter or court actions. Warning letters as well as court actions must identify the national parts of the EP which are the basis for attack. Asserting rights from an “EP” without clearly specifying the national parts of the EP to which such assertion refers, involves the high risk that declaratory actions for non-infringement are started in Germany and other EPC member states in which the EP patent at issues has been validated.

Read the decision here.

Headnote: Tobias Wuttke