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At-a-glance: German Patent and Trade Mark Office Zweibrückenstraße 12, 80331 Munich, Germany Tel: +49 89 / 2195-0, Fax: +49 89 / 2195-22 21 Email: info@dpma.de Website: www.dpma.de Germany has long been a centre for IP ligation in Europe, and... [more]

Germany has long been a centre for IP ligation in Europe, and 2012 proved another healthy year for contentious practices. "Every big piece of patent litigation had a German angle. Whether it was a litigation dispute about LED technology, or mobile phone wars, or WiFi patents, every dispute took place here," remarks one partner. Patentees choose Germany because it is fast, effective, relatively cheap and pro-right owner. The system remains this way, particularly as regards the speed of rendering a decision, because unlike the UK or the Netherlands, where London or The Hague have somewhat of a monopoly, there is good competition among the regional courts, namely Düsseldorf, Mannheim and Munich. Its bifurcated system, where invalidity and infringement are dealt with separately, is also attractive for patent-holders.

Progress made with the unitary patent was a keenly observed issue among German lawyers in 2012 with much speculation over how the new litigation system could affect the market. In particular, the EU's decision to award the central seat of the court to Paris while creating specialist divisions in London and Munich, which will cover pharmaceuticals and mechanical engineering respectively, antagonised some litigators. "We have one concern, the negative deal the German government struck with the unitary patent," explains one partner. "We [Germany] have 70% of patent litigation in Europe so why did we only get mechanical engineering? I'm really upset the UK got biotech and pharma. How can it be that a state which is always threatening the rest of Europe with the possibility of leaving the EU can get the largest piece of the cake? The UK system is too expensive and too lengthy." Others are less concerned, feeling the "the central division will not be so important because it's such a decentralised system. It will mainly be a benefit from a marketing perspective because the local divisions will see the first instance."

In terms of disputes, the smartphone wars were the story of 2012, dominating the headlines and the country's IP courts. Apple, Samsung, Nokia and Motorola were just some of the parties sparring over standards-essential patents. By no means new, the disputes between mobile phone manufacturers began more than two years ago, but lawyers note some developments over the last 12 months. "The battles have become a little more fierce. It used to be that we would litigate for a year and then settle, but now there are a couple of larger patent cases which do not look like they are going to settle. It's a reflection on the telecommunication market getting more competitive, but also that the players are realising that they can really make a difference in the market by asserting their patents against a competitor," says one partner.

A feature of growing importance in these cases, which has attracted the attention of clients, is the status of FRAND (fair, reasonable, and non-discriminatory) terms. "A trend has been how case law has developed in terms of FRAND offers. The most prominent case was Motorola and Apple but this is developing case law where there are only a few decisions in the world," remarks one patent litigator. Looking forward, lawyers predict designs disputes – such as Apple's infringement claim against the Galaxy tablet – will be more prevalent among mobile phone manufacturers as it offers an alternative means to "get competitors off the market".

A trend in relation to national judgments concerns the scope of protection. "If you look at recent decisions of the Federal Supreme Court, scope of protection is becoming narrower," says one partner.

In the pharmaceutical field, there has been an increase in litigation. With some of the biggest blockbuster drugs coming off patent, generic companies have been attempting to enter the market.

Filing figures have remained reassuringly high throughout 2012. "Last year [2011] was phenomenal and we filed a lot; this year it was stable," says one attorney. More generally, the German prosecution market saw several notable trends and developments. Arguably, chief among the latter was the progress made with the unitary patent. Some think the new system will encourage domestic prosecution boutiques to consider mergers. "Frankly, I think we will see a lot of smaller firms with no option but to enter into more stable relationships with their international best friends," notes one. Attorneys predict there will be reluctance on the client's part to commit to the new filing system while it's still in its naissance. "I think most will opt out until they see how the thing plays out," remarks one patent attorney. And those in the pharma field are expected to continue to file nationally for as long as possible for fear of European-wide revocation.

Nationally, a change to the IP legislation was made in 2012. Revisions to the patent law, passed in May, include: extending the time allowed to file an opposition to a patent post-grant from three months to nine; introducing extended search reports; making oral proceedings in oppositions public; and extending the term allowed to file the German translation of an application in English or French from three months to 12.

One area of concern shared by German patent attorneys and clients is how "very pedantic" the EPO has become – specifically, the "big procedural hurdles" it has put in place for patentees. One attorney notes how "easy it is to destroy a patent at the EPO". "The EPO in opposition proceedings now focuses more than ever on the criteria for patents rather than novelty and inventive step. I win many cases on sufficiency of disclosure," he says. Clients are similarly alarmed. "It's very difficult when words are being picked apart when you know the person from the EPO has no technical understanding whatsoever, nor do they think it's important to have it," notes one engineer. Another lawyer explains the number of revoked patents has been "drastically increased, by more than 10%". Lawyers, who note this trend has moved clients to consider reverting to filing nationally, say it is a way of avoiding "dealing with the complicated prior art".