Insights: Draft of a new patent law in Germany

Although substantive law regarding the grant of patents is largely harmonized across Europe, post grant infringement and validity procedures differ from country to country. In particular, unlike other European countries, Germany considers infringement and validity in separate (‘bifurcated’) proceedings. Germany has the largest economy in Europe and more than half of all patent infringement cases are decided by German courts. Changes to German patent law in respect of infringement and validity proceedings are therefore of global significance.

On 14 January 2020, the German Federal Ministry of Justice published a draft of a new patent law in Germany. The draft proposes modifications to the law, to address concerns arising from the bifurcated infringement and validity proceedings. A change to the automatic injunction is also proposed.

As a result of the bifurcated proceedings in Germany, a first instance ruling in an infringement case can occur months before a ruling on the validity. This leads to procedural complication (the so-called ‘injunction gap’), if a patent is found to be invalid after an infringement ruling.

To overcome this shortcoming, the German government proposes that a mandatory qualified opinion on the validity of a patent should be sent from the Federal Patent Court to the Infringement Court, after six months.

The new draft law also proposes to codify a body of case law regarding automatic injunctions. Current German Patent Law provides for a patentee to seek an injunction, when it is identified that there is a risk of recurrent or even first time infringement. The proposals of the German Federal Ministry of Justice are to soften this law where its enforcement would be disproportionate. In particular, it is suggested that such an injunction should not be awarded, if it would constitute a hardship to the alleged infringer that is disproportionate to the exclusive rights of the patentee.

The latter proposal is likely to prove controversial, since it would place the interests of manufacturers of complex products before the interests of those who hold exclusive patent rights to a specific component of such complex products.

If you would like any further information regarding these proposals, please contact our German patent team.

Dr Sebastian Stephan is a German Patent Attorney based in Boult Wade Tennant’s Frankfurt office.