Production of parts in Germany but assembly in foreign countries

It is undisputed that a German patent is infringed by producing products protected by patents in Germany, and also when the product is exported to other countries where no such patent protection exists (BGHZ 23 100, 106; OLG Hamburg GRUR 1985, 923; Benkard/Bruchhausen, Patent Act, Section 9, Margin 11). Most legal experts believe that a German patent is also infringed by the production of parts of a patented device for delivery to a country where no patent protection exists, provided that these parts are only suitable for and intended to be assembled to form the device patented in Germany (Busse/Keukenschrijver, Patent Act, Section 9, Margin 132; RG GRUR 1901, 152; BGH GRUR 1957, 231). In such cases the Supreme Court of the German Reich has concentrated on the commencement of production of the complete device in Germany, even if completion takes place in another country. This view is upheld by the case law of the Federal Supreme Court. In the Diarähmchen-V decision (GRUR 1971, 78) regarding a device consisting of a combination of parts, the Federal Supreme Court expressed the view that the production or delivery of parts of the patented device constitutes direct – and not just contributory – patent infringement if the parts are specifically made to be used for the patented device. To fulfil this requirement, these parts must not be readily usable in any other way than in the patented device and must have been designed to work with the patented device.

As it is the commencement of production in Germany that is important, an act of use in Germany is affirmed even if the patented product is never put on the market in Germany. The Federal Supreme Court’s broad interpretation of the terms ‘making’ and ‘producing’ protects the patent owner against obvious attempts to circumvent the patent by delivering parts of a patented device to another country for assembly, since the completion of the patented device in Germany is no longer the decisive issue for assuming patent infringement. These legal principles are also applied by other German courts in agreement with the prevailing legal commentaries (see Benkard/Bruchhausen, Patent Act, Section 9, Margin 33; Schulte, Patent Act, Section 9, Margin 27; Busse/ Keukenschrijver, Patent Act 9, Margin 68, for an assessment of ‘making’ according to the Patent Act).

Completion by third parties in foreign countries

In accordance with the courts’ broad interpretation of the term ‘making’, the making of a product also occurs when a party starts making parts in such a way that the patented product necessarily results from the making. Therefore, a party that does not commit an act directly leading to the creation of the patented product may nonetheless be considered as a manufacturer infringing the patent if it controls the completion of the product by a third party.

According to case law by the Düsseldorf District Court, the same applies for a process patent (BGH GRUR 1977, 250 – Kunststoffhohlprofil; GRUR 1982, 165 – Rigg; LG Düsseldorf, Entscheidungssammlung (Collected Decisions) 1999, 75 – Verglasungsklotz; LG Düsseldorf, decision November 7 2000, InstGE 1, 26 – Cam-Carpet). This case law states that direct patent infringement – and not merely contributory infringement – is affirmed when the acting party does not itself perform the very last partial act of the patented process, but uses, as a tool for this purpose, a third party which completes the process predictably, necessarily and independently of any knowledge of the invention. Therefore, it is not decisive for assessing infringement whether the very last partial act of the protected process or of the production of a patented device is carried out in Germany or by a customer abroad

http://www.buildingipvalue.com/06EU/...

So no matter what happens with the USPTO anything shipped to the U.S from Germany can be licensed under our now valid German patent? Very Interesting (said with a German accent)