Aprinciple of patent law is the principle of territoriality.
This concerns the limited validity and enforceability of the
patent in national territory.
Industry 4.0 and the Internet of Things (IoT) are mainly
based on IT infrastructures dispersed across multiple
territories. These geographically distributed systems are the
result of connectivity and interoperability. Current inventions
in these technologies usually only relate to improved
interaction in already known components, which are sometimes
operated in multiple countries all over the world at the same
The Regional Court of Munich ruled in the decision 7 O
16945/15 on the infringement of a geographically dispersed
system comprising a mobile phone and a server. The court
resolved the question of whether a device claim is infringed
when only parts of the claimed system are used in the territory
where the patent is protected while the remainder of the system
is in operation abroad.
The Regional Court of Munich transferred and analogously
applied previous considerations for geographically dispersed
methods in a decision of the Higher Regional Court of
Düsseldorf, Prepaid-Telefonkarte (2 U 51/08). The court
ruled in this case that for a violation of a method claim, it
is sufficient that only a few of the claimed method steps are
performed in the territory where the patent is protected if at
least an economic relationship is present with the country
covered by the patent. An economic relationship is established
if the method steps undertaken abroad can be assigned to the
entity carrying out the other process steps in the territory
where the patent is protected.
At the Regional Court of Munich, there was no dispute
between the parties that the defendant's server was located in
a patent free country, while the mobile telephone was used in
Germany, where the patent is valid.
The court affirmed the patent infringement. It is sufficient
that the claimed system is used in Germany insofar as the
mobile phones are located in Germany and communicate with the
server which could be assigned to the defendant. The actual
location of the defendant's server – undoubtedly one
of the two structural features of the main claim –
does not then matter anymore.
The ruling of the Regional Court of Munich illustrates the
scope of patent protection for device claims in relation to the
prevailing situation regarding Industry 4.0 and the IoT (the
operation of cross-border digital computer systems).
Offshoring of subsystems to territories where patents are
not protected does not mean patent protection can be bypassed.
The analogous application of the decision of the Higher
Regional Court of Düsseldorf to systems that are only
partially located in the national territory where the patent is
protected is appropriate and makes it possible to protect the
network or cloud implemented inventions of Industry 4.0 and the
Maiwald Patentanwalts GmbH
Elisenhof, Elisenstr 3
D-80335, Munich, Germany
Tel: +49 89 74 72 660
Fax: +49 89 77 64 24