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Preparatory/Preventive Measures before Exhibiting at Trade Fairs in Germany

Preparatory/Preventive Measures before Exhibiting at Trade Fairs in Germany. Heinz Goddar Boehmert & Boehmert. Market and Freedom-to- Operate (FTO) Studies.

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Preparatory/Preventive Measures before Exhibiting at Trade Fairs in Germany

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  1. Preparatory/Preventive Measuresbefore Exhibiting at Trade Fairs in Germany Heinz Goddar Boehmert & Boehmert - 1 -

  2. Market and Freedom-to-Operate (FTO) Studies • Before introducing a new product into Germany, a search should be conducted to identify Intellectual Property Rights (IPRs), i.e. patents, utility models, designs and trademarks, that possibly could be infringed by the product in question. • Such search should be conducted even before any offer, like via internet, into Germany • Search result should be evaluated by experienced IP expert (lawyer or patent attorney) familiar with German law • Depending on kinds of IPRs involved, even team of lawyers/patent attorneys advisable - 2 -

  3. Evaluation of Search Results – Patents asan Example • If FTO opinion shows no risk • exhibiting at trade fair and/or offering/importation are uncritical • If FTO opinion shows risk • further search (with evaluation) of validity of patents identified by search necessary • After determination of valid “hard core” of patents identified by search • final FTO opinion concerning infringement risk relating to hard core • If any intolerable risk remains • preparation of defence - 3 -

  4. Preparation of Defence • As far as probably valid - at least with regard to a hard core - patents (or other IPRs) have been determined, briefs to invalidate/cancel the respective IPR, ready to file, should be prepared • Opposition/invalidation against patents • Cancellation request against utility models • Cancellation request against trademarks • Protective Memorandum (PM) should be prepared - 4 -

  5. Protective Memorandum(PM) • Content of a protective memorandum (in a patent case) • Parties of the conflict • Rough outline of the patent involved • Rough outline of the facts of the case • Rough outline of the history of the conflict (if any) • Reasons of the alleged infringer to assume that a potential request for PI isnot justified: - no infringement - patent not valid - case not urgent - case too complicated to be decided in summary proceedings - 5 -

  6. The Use of a ProtectiveMemorandum againstCivil Proceedings • Main goal is to prevent court from issuing a Preliminary Injunction (PI) without oral proceedings and without notifying the defender that a request for PI has been filed • ex-parte PI very dangerous at least at trade fairs • In many cases the filing of a PI can even fully prevent the court from issuing a PI • inter-partes PI procedure allows appropriate defence, if well prepared, otherwise! - 6 -

  7. Additional Use of PM inCriminal and CustomsProcedures • After or simultaneous with filing PM at civil court, filing at public prosecutor to avoid criminal procedures • In addition to filing PM at civil court, simultaneously with filing at civil court and/or public prosecutor or shortly thereafter, filing of PM at customs authorities to prevent border seizure measures - 7 -

  8. Overall Strategy to Avoid or Reduce Preliminary Injunctive Orders, Customs Seizures, and Police Raids • In preparation for introduction of a new product a freedom-to-operate search should be performed • In preparation for trade exhibitions or in view of threats with infringement action a PM should be filed with all potentially competent civil courts • Copy of this PM should be sent to the Central Customs Authority in Germany (Zentralstelle Gewerblicher Rechtsschutz) and to the Public Prosecutor who might be locally competent (for example in the city where a trade exhibition is to be held) • This serves - to alert customs and police/prosecutors that not every claim of the patent owner in a request for PI, request for customs seizure or criminal complaint may be true and well founded - to alert customs and police/prosecutors that complicated technical issues are involved regarding infringement and validity which they cannot and should not try to judge - 8 -

  9. Conclusion • Well in advance of the launch of a new product, freedom-to-operate searches should be performed • In view of a threat with patent litigation and in preparation of trade shows/product presentations a PM should be filed if there is any reason to assume that any patent owner might feel tempted to launch an attack • Copies of this PM should be sent to the Central Customs Authority and to all potentially competent public prosecutors • By following this approach, PI and prosecution measures can often be avoided - 9 -

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