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UNITARY PATENT


“GERMAN ATTORNEYS MAY HAVE LESS OPPOSITION WORK, SINCE NULLITY ACTIONS AGAINST EUROPEAN PATENTS ARE NOW AVAILABLE IN ONE COURT FOR THE WHOLE OF EUROPE, EVEN AFTER THE OPPOSITION PERIOD HAS EXPIRED.”


referral of the entire case to the Central Division upon filing of a counterclaim for revocation), the situation will change dramatically. Patent proprietors will probably select a local division comprising two legally qualified judges who are experienced in handling both infringement and revocation proceedings. Tis might not be a German court and, in any event, patent proprietors might want to select a forum without bifurcation.


So German litigators will have to adapt to litigating abroad. German local divisions, however, will have to be willing to handle infringement as well as validity in the future (and to promote it) if they want to continue the German success story. n


Dr Anton Pfau is partner at Grünecker, Kinkeldey, Stockmair & Schwanhäusser in Munich. He can be contacted at: pfau@grunecker.de


opposition period has expired. For the same reason, the German Federal Patent Court will have substantially fewer nullity actions to handle.


Litigation


German litigation is distinctive for its speed (in Mannheim within eight months), focus (only issues of relevance are discussed) and bifurcation (nullity questions are handled in a different court).


Tere may be less translation work for German translators. While a European Patent with unitary effect will demand translation of the specification into a language other than English, this can be any language ‘of the union’. Some applicants might choose Spanish as a second language, not only so the patent can be validated in Spain, but because translations from prosecutions in South America might be available.


Finally, German attorneys may have less opposition work, since nullity actions against European Patents are now available in one court for the whole of Europe, even aſter the


It is the implementation of bifurcation in the Agreement on the Unified Patent Court that will be most important for the future of German patent litigation. Article 15a (2)(b) of the agreement provides that local divisions can refer the counterclaim for revocation to the Central Division and proceed with the infringement proceedings. If Article 15a (2)(b) survives into the final version, patent proprietors will continue to have reason to file suits in Germany. A local division panel in Germany will comprise two German legally qualified judges, with the emphasis on their being German. Tese judges will, doubtless, be selected from those currently sitting in patent infringement courts in Germany. Future patent litigation procedure will therefore—while giving deference to the agreement and rules of procedure yet to be draſted—be heavily influenced by German practice. Tis includes referral of counterclaims of revocation to the Central Division and selecting German as the language of the proceedings under Article 29 of the agreement. So parties that have selected Germany as a forum in the past will continue to do so.


If Article 15a (2)(b) fails and there is no longer bifurcation (or the defendant can even demand


Dr Anton Pfau is a German and European Patent attorney with a degree in physics. He supports mid-sized domestic and medium to large overseas companies in patent prosecution and litigation, with a focus on patent validity proceedings and opinion work.


Dr Ulrich Blumenröder is a partner at Grünecker, Kinkeldey, Stockmair & Schwanhäusser in Munich. He can be contacted at: blumenroeder@grunecker.de


Dr Ulrich Blumenröder LLM focuses on patent litigation in all German courts, especially in Düsseldorf, Mannheim and Munich. He has also experience in cross- border litigation, organising and conducting multinational litigation and arbitration. His clients range from mid-sized German entities to large Korean, US and Japanese companies.


World Intellectual Property Review January/February 2012 35


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