27/04/2023
Cross border patent infringement of telecommunication and software patents in Germany – A pointer for the territoriality principle at the UPC?
The Regional Court Munich I rules on a fragmented and geographically dispersed patent infringement in the decision 7 O 13977/21 of 18.08.2022, LG München I, Endurteil v. 18.08.2022 – 7 O 10368/21 – Bürgerservice (gesetze-bayern.de). Once again the court addresses the problem of a highly networked world, in which applications such as artificial intelligence or cloud computing take place as processes distributed across the globe.
The territoriality principle of patent protection is given in that granted patents give protection in their respective countries. A patent granted in one country is limited to the territory of that country and cannot be infringed in other countries. It is precisely this now extended radius of effect of the granted patent that is recently seen as one of the main advantages of the new Unitary Patent (UP) and the new Unified Patent Court (UPC).
Notwithstanding this, computer-, cloud- or network-implemented inventions in particular have always breached the territoriality principle of patent protection, as procedures and actions are often triggered worldwide with just a few clicks or queries in the field of modern telecommunication and computer technology. Therefore, corresponding patent infringing acts often take place in a fragmented and geographically widely distributed manner across the entire globe. The patent infringing actions therefore take place across borders and, accordingly, any patent infringement only takes place across borders, likely beyond the territorial boundary of the patent.
In its decision, the Regional Court Munich I recently ruled that the performance of one of several necessary steps in Germany may be sufficient for the offence of using a patent-protected process, if the other steps performed abroad are also attributable to the person acting in Germany. In the opinion of the Regional Court Munich I, partial acts committed abroad are to be treated as domestic acts if the patent infringer makes the acts committed abroad his own for an invention-corresponding success occurring in Germany.
The case law of the German patent infringement courts has long since ceased to follow the maxim that the patent proprietor must prove that all partial steps of a patent-protected process are carried out domestically, i.e. in Germany for a German patent.
The Higher Regional Court of Düsseldorf had already confirmed in its decision I-2 U 51/08, Oberlandesgericht Düsseldorf, I-2 U 51/08 (nrw.de), of 10.12. 2009 that even if process steps were partly carried out abroad, a patent infringement may exist for Germany if the invention-corresponding success occurs in Germany. Thus, a patent infringement may exist if even one step of the process is performed in Germany, at least if the result of the protected invention occurs in Germany and the invention is realised in Germany in the sense of the core idea that led to the affirmation of an inventive step.
It remains to be seen whether the recent decision of Regional Court Munich I will also influence how the Unified Patent Court (UPC) will interpret the territoriality principle and whether the UPC will follow the rather broad interpretation of the territoriality principle of the German patent infringement courts.
The case constellations before the Unified Patent Court will be similar, since it also applies to Unitary Patents that the server and cloud providers often exist outside the actual territorial scope of protection of the patent in suit. It is likely that the UPC will also find infringement even if individual steps are taken outside Europe, otherwise it would be contradictory to the system if the UPC were to become less effective in prosecuting global and cross-border patent infringements through a more restrictive interpretation of the territoriality principle.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
