Amendments To The German Patent Act: Introduction And Discussion Of The Draft Of A Second Act For Simplifying And Modernising Patent Law

Author:Mr Thomas Mayer and Jonathan Konietz
Profession:Gowling WLG

On 14 January 2020, the German Ministry of Justice and Consumer Protection (BMJV) published the draft of a Second Act for simplifying and modernising patent law (hereinafter referred to as: "Modernisation Draft"). In this latest Insight, we discuss the most significant amendments.

  1. Limitation of the cease-and-desist claim(?)

    1. Problems

      There has hardly been another topic that dominated discussions of patent law in recent times as much as whether the principle of proportionality should be applied to cease-and-desist claims for patent infringement under sec. 139 (1) of the German Patent Act (PatG).

      One of the reasons for the discussion was the fact that due to the rapid speed of technological development, digitisation and networking, modern-day products tend to encompass an ever-growing proportion of patented and frequently mandatorily required technologies. These products may turn out to become the objectives of cease-and-desist claims in their entirety, even if the specific patent at issue only relates to a minor functional detail.

      The Modernisation Draft explains that this may result in considerable damage to the patent infringer, which may in a particular case, be disproportionate to the value of the invention in dispute. The Modernisation Draft further states, that although the principle of proportionality must already be taken into account de lege lata as a principle of constitution through sec. 242 and sec. 275 (2) of the German Civil Code (BGB), it has hardly found its way into the relevant case law yet.

    2. Suggested solution

      Therefore, the Modernisation Draft provides for an explicit "clarification" of sec. 139 (1) PatG according to which the claim is "excluded as far as the enforcement of the cease-and-desist claim is disproportionate because, due to special circumstances taking into account the interests of the patentee vis-à-vis the infringer and the principles of good faith, it constitutes undue hardship not justified by the exclusive right."

      This clarification is believed to be in line with the Enforcement Directive (RL 2004/48/EC), according to which the enforcement of a cease-and-desist claim might be disproportionate in a particular case. It is considered necessary to take into account that the cease-and-desist claim is independent of fault and must remain the "regular corrective" in patent infringements. Therefore, the plaintiff asserting a cease-and-desist claim shall not be required to initially set forth proportionality...

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