Sunday, 11 March 2018

UNION-IP Round Table Event Report - Part 1: Germany

The question of indirect infringement comes up fairly often in cases before courts across Europe. Although substantive patent law has been roughly aligned in most European countries since the 1970s, there are some differences in what the law states and how it is applied. Indirect infringement is also not just of interest to those involved in litigation, but a crucial aspect to bear in mind when drafting and prosecuting patents before any patent office. Bearing these in mind, the programme for the UNION-IP Round Table event that was held at the German Patent Office in Munich on 23 February 2018, aimed to cover what the differences are between some of the main European jurisdictions and how the general patent practitioner can bear these in mind when drafting and prosecuting applications.

First to speak was Dr Klaus Bacher, Judge at the German Federal Court of Justice (Bundesgerichtshof), covering indirect infringement in Germany. Noting first that indirect infringement was not harmonised across Europe, the basic requirements of supplying means essential to implementing the invention, together with knowledge that the invention would or could be put into effect, were themes that would come up again in other presentations. How they were implemented, however, would in some ways differ. In Germany, one point of interest was that indirect infringement did not require there to be any direct infringement to take place. A counter to this was that, although an injunction could be granted, no damages would be awarded unless a direct infringement could be shown. Dr Bacher then went through four key cases from recent years in Germany. These were:

The first related to a claim that covered decoding encoded video data. The alleged indirect infringement was a DVD imported into Germany, which would be decoded when played. There was no direct infringement by the importation or sale, since decoding would only be performed on paying the DVD, so the question was whether the DVD constituted an indirect infringement. No such infringement was found though, as there was no interaction between the data stored on the DVD and the decoding system.

The second related to a similar theme, involving a USB stick that was able to receive TV signals and send them to a PC. The patent not only claimed the decoding steps, which were not performed by the USB stick, but also claimed the coding and transmission steps. Again, no indirect infringement was found, because the stick did not contribute to decoding the data but merely provided a preceding step that was not itself sufficient.

The third related to permetrexed, which has been the subject of litigation across Europe, including recently before the UK Supreme Court. The issue of indirect infringement came up in relation to whether permetrexed dipotassium could be an indirect infringement if it were to be dissolved in saline, thereby becoming (so it was argued) permetrexed disodium. Indirect infringement was, however, denied because the disodium version was not the subject of manufacture (the claim being in the Swiss form). What was protected was the substance for treating the particular condition, and not what it might become afterwards.

The fourth related to a tire repair kit, which was patented in Germany but not in Italy. Sales in Italy would somehow make their way into Germany and become infringing articles, but did the manufacturer and seller in Italy become liable? The finding was that the defendant would be liable if they knew, or had reason to know, about the intention to resell in Germany.

To be continued with coverage of Italy, the UK and France, together with some ideas on how to draft patent applications to try to avoid the need for indirect infringement.