Wednesday, March 28, 2018

95 Theses on Stays in Patent Cases

This has to be one of the more creative ideas for an article on patents in recent memory:  Malte Köllner, Eric Sergehaert and Mihnea Hanganu’s 95 Thesen zur Aussetzung (“95 Theses on Stays”), in the January 2018 issue of Mitteilungen der deutschen Patentanwälten (pp. 8-15).  By way of background, in Germany infringement and validity proceedings are bifurcated (the so-called Trennungsprinzip), and thus a court may find a patent infringed while an invalidation proceeding takes its more leisurely course through the European or German Patent Office.  Courts sometimes stay the infringement proceeding or the enforceability of the judgment pending an invalidation proceeding, but to my knowledge they usually don't.  As I noted in my book (p.229 n.45):
Stays pending the resolution of an invalidity proceeding are possible, but are hardly automatic. For discussion, see Luginbuehl, supra note 34, at 40; Christian W. Appelt & Heinz Goddar, Enforcement of Patents in Europe—Germany as an Example, ip4inno Consortium, European Patent Academy (Nov. 27, 2006), at 6–8, available at (stating that the Düsseldorf court is reluctant to grant stays in patent proceedings, but that stays must be granted in utility model proceedings if the court believes the invalidation action will be successful); Bühling, supra note 24, at 28–29; Verhauwen & Bergermann, supra note 35, at 1 (reporting that “the court stays the infringement proceeding only if it is highly likely that the nullity action or opposition proceeding will be successful”; that this “is regularly assumed if state of the art can be presented that is novelty-destroying and in addition has preferably not yet been assessed in the examination proceeding”; and that “[i]f the validity argument is merely based on lack of inventive step it is most likely that the infringement court will not stay the proceeding”).
(This type of stay, by the way, should be distinguished from the Aufbrauchfrist, a stay pending transition, which to my knowledge is even more rare and doesn't result in an interim award of damages.  For previous discussion on this blog, see here and here.)  Anyway, I haven't read the article by Köllner et al. very carefully yet, but the authors seem to be of the view that German courts could be a bit more open to the practice.  Here is the abstract (my translation):
In a European comparison, the frequency of stays in patent infringement actions in Germany is compared with the frequency in England, France, and the Netherlands.  The comparison is based on stays in infringement disputes in which a parallel European opposition proceeding is pending.  Substantial differences emerge.  A following investigation of the legal arguments for handling stays in Germany raises serious concerns about the German practice with regard to stays. 
Footnote 1 reads (again in my translation): "According to tradition, these 95 Theses are said to have been nailed to the gates of the Düsseldorf and Munich District Courts on the Eve of All Saints' Day 2017.  The historicity of this proposition, however, is disputed."  Funny.  Perhaps an English-language subtitle could have been, "Here I stay, I can do no other."    

Image result for picture of luther nailing 95 theses

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