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Attention! Patent infringement in Germany affirmed – although a product showing all features of the patent was finally only produced in a patent-free area

For the first time, a court decided that there is the possibility of a conclusion to the content of the first offer in Germany and, therefore, a patent infringement in Germany in the following situation:

The products of the defendant presented in Germany had in common that none fulfilled all features of the German patent of the plaintiff. However, there was a device of the defendant in Sweden which realized all features of the disputed patent. The plaintiff complained about this Swedish device as infringement of his German Patent. 

The LG Düsseldorf already confirmed in the first instance that there is an offering according to § 9 German Patent Act due to the defendant’s actions. The first instance court was of the opinion that the action of offering was realized due to the various presentations. According to the court, the defendant had expressed to be able to produce and deliver a product according to the invention, independent of the fact that these different embodiments on their own do not realize all features of the disputed patent. 

The OLG Düsseldorf also confirmed that there is an offering according to § 9 no. 1 German Patent Act, however, it made a completely different approach: The offer was made from Germany. If the offer is followed by a delivery or the installation of the device, possibly, as presently the case, also in patent-free foreign countries, with the device realizing the features of the disputed patent, this generally justifies the conclusion that the previous (domestic) offer related to particularly such a subject according to the patent. The offer which was sent out from within the country for the delivery or installation would, therefore, have to be considered as infringing the patent. The fact that the offer came from within the country would not be changed by the circumstance that the initiative offer which was submitted by the domestic business location of the offering party did not yet contain all constructive details which lead to the use of the patent. Moreover, it is not important that specifications in this regard, which lead to the subject-matter according to the invention, were made later on, possibly even during conferences conducted abroad. This applies as long as the foreign actions lie within the frame of the original domestic subject of the offer, i.e. when they specify it in more detail, only, without changing it. 

Due to this decision, proving a domestic patent infringement could be facilitated, even if the inventive subject-matter was produced in patent-free foreign countries. Due to the fact that only in very few cases, the patent owner will have an insight into the documents of the offer, the possibility to make a conclusion from the finished product to a domestic offer would make the argumentation much easier. In this connection, however, it should be observed that this is the interpretation from the appeal proceeding, which has not yet been confirmed by the Federal Court of Justice.

Decision by the Higher Regional Court Düsseldorf
dated April 6, 2017, file no. I-2 U 51/16
Sabine Röhler (Attorney-at-Law)

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