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AIPPI, Paris, November 7th, 2013 by Klaus Haft

STATUS OF THE HARMONIZATION OF MEASURES RELATING TO THE ENFORCEMENT OF IP RIGHTS - EU DIRECTIVE 2004/48/EC -. AIPPI, Paris, November 7th, 2013 by Klaus Haft. Outline . I. Implementation of 2004/48/EC in Germany II. Inspection orders III. Claim for information IV. Damages claims.

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AIPPI, Paris, November 7th, 2013 by Klaus Haft

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  1. STATUS OF THE HARMONIZATION OF MEASURES RELATING TO THE ENFORCEMENT OF IP RIGHTS- EU DIRECTIVE 2004/48/EC - AIPPI, Paris, November 7th, 2013 by Klaus Haft

  2. Outline I. Implementation of 2004/48/EC in Germany II. Inspection orders III. Claim for information IV. Damages claims

  3. II. Implementation of 2004/48/EC in Germany • Implementation due: April 29th, 2006 (Art. 20 (1) ED) • Nearly met: September 1st, 2008 (BT-DS 16/5048) • What was changed about: • Inspection orders: pre-existing, but now e.g. easier access to documents (§ 140c PatG) • Claims for information:  pre-existing, but extended (§ 140b PatG) • Damages claims:  Mainly case law converted into statutory law (§ 139 PatG) • Claim to remove goods from distribution channels:  pre-existing in theory, but new for practical purposes (§ 140a PatG)

  4. II. Inspection orders • History: • 1900 (i.e. prior to 1968…): §§ 809; 810 BGB • 1985: BGH „Print bar“ • High likelihood of infringement • No disassembly • 2002: BGH „Fax card“ • Reasonable likelihood of infringement • Disassembly (careful opening) • 2008: § 140 c PatG

  5. II. Inspection orders (c’td) • Procedure: • Order to take evidence, preliminary order to tolerate and order to applicant’s attorney and patent attorney not to report back to client • Appointment of court expert • Inspection by court expert and applicant’s attorney team • Expert opinion • Release procedure

  6. II. Inspection orders (c’td) • What you need to bring: • Sufficient likelihood of infringement based on facts • Need for inspection • Identification of objects / documents of potential relevance • Proposed measures • Facts establishing a “commercial scale” to get bank, financial or commercial documents

  7. II. Inspection orders (c’td) • What you get: • Opinion by court appointed expert which is regarded as full evidence for proceedings on the merits • Copies of identified documents • But no information subject to justified confidentiality interests (weighing of interests) • Problem: Search order (§758a ZPO)

  8. III. Claim for information • History: • 1900: §§ 242, 259 BGB • claim for rendering of account • Based on principles of good faith • 2008: § 140 b PatG • Adding focus on origin and prices of goods / distribution channels • Possibility of preliminary order

  9. III. Claim for information (c’td) • Procedure: • Either preliminary order in cases of obvious infringement • Or: • main proceedings on infringement • enforcement of information claim / rendering of account • damages proceedings / settlement

  10. III. Claim for information (c’td) • What you need to bring: • Evidence for infringement • What you get: • Origin of goods and copy for purchase docs/ manufacturing data • Individual supply data • Offerings / advertising • Costs and profits made

  11. IV. Damages claims • History: • Past: case law • License analogy • Infringer’s profits • Loss of profits • 2000: BGH “Overhead costs share” • 2008: § 139 (2) PatG • same • But: arguably more than license analogy (“based on”)

  12. III. Damages claims (c’td) • Procedure: • main proceedings on infringement • enforcement of information claim / rendering of account • damages proceedings / settlement

  13. III. Damages claims (c’td) • What you need to bring: • Evidence for infringement • What you get: • Lengthy procedures • Little satisfaction Settlement typically preferred option

  14. Thank You! Klaus Haft REIMANN OSTERRIETH KÖHLER HAFT Steinstraße 20 O7, 16 40212Düsseldorf 68161 Mannheim Tel. +49 (0)211 550 220 Fax +49 (0)211 550 22 550 www.rokh-ip.com

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