Protection of market entry into Europe
Problem and action needed
Our client is an overseas company offering special coatings for the automotive industry. An exclusive licensee under a third-party patent sent aggressive warning letters to our client’s European distributors in several countries. Our client considered the third-party patent to be invalid, but its non-infringement arguments were weak. The client wanted to expand activities on the European market and was particularly concerned that under the two-track German system an injunction could be issued against it despite strong invalidity arguments.
HOFFMANN EITLE’s team
An internationally experienced litigator from the patent litigation and licensing team and an equally litigation-experienced patent attorney headed the project. They were assisted by one attorney-at-law and one further patent-attorney.
To avoid Detriment to our Client under the German two-track system, a nullity action was filed before the German Federal Patent Court (FPC). In addition, we relied on case law of Italian courts to start an action for declaration of non-infringement (DNI) in Italy in regard to all national parts of the asserted European patent. Due to European law on civil procedure, the patentee or exclusive licensee could not – at least not easily – start an infringement action in Germany while the Italian proceedings were pending. After the FPC provided its preliminary opinion that the asserted patent was not patentable, the patentee accepted invalidation of the patent. A settlement with the exclusive licensee was thereafter entered into. All of these activities of the client were actively communicated to the market, and the client could enter the European market without disruption.