The reform and modernisation of patent law in Germany finally comes into force: the German Patent Modernisation Act entered into force on 18 August 2021. Essential are additions to § 139 PatG and § 145 PatG and the streamlining of invaldity proceedings.
The Patent Modernisation Act was prepared for a long time and was already in the government’s vote in 2020 – we reported. It finally came into force on 18 August 2021. The German Patent Modernisation Act is intended to improve two aspects in particular of the current practice of patent infringement proceedings:
Proportionality of injunctive relief
With the current entry into force of the Second Patent Modernisation Act, proportionality considerations will be taken into account with regard to injunctive relief in patent disputes. For this purpose, the previous § 139 Patent Act was supplemented by the statement that the claim for injunctive relief may be limited by way of exception if, due to special circumstances in the individual case, the claim for injunctive relief would lead to disproportionate hardship for the infringer or third parties not justified by the exclusive right.
Analogously, a similar passage was also drafted as law for utility models, as an amendment to 3 24 Utility Model Act.
With regard to the practical implementation of this legal innovation, the next judgments remain to be seen with interest. Up to now, German courts have regarded a restriction of the right to injunctive relief as an absolute exception.
End of Injunction Gap?
For long, there have been expectations from many sides to end the so-called “Injunction Gap” in Germany between patent infringement and invalidity proceedings, if possible. This refers to the sometimes very long time of nullity proceedings before the Federal Patent Court (BPatG), because until now the court set a date for oral proceedings and this could be tactically protracted.
The Patent Modernisation Act § 83 PatG therefore introduces a time limit within which the BPatG must issue its reference order to the infringement court: this must be done within 6 months. For this purpose, the Federal Patent Court is authorised to disregard arguments of the parties received after the expiry of the time limit for the reference decision.
Revocation and further processing of supplementary protection certificates
In addition, the Patent Modernisation Act legally establishes the revocation and further processing of supplementary protection certificates, as it has already been done in practice: supplementary protection certificates can be revoked upon request of the holder under Sec. 64 Patent Act and that the procedural institute of further processing (§ 123a Patent Act) also applies to supplementary protection certificates (§ 16a (2) Patent Act).
Business secret in court proceedings: new § 145a PatG
Finally, the Patent Modernisation Act added the second sentence of the new § 145a Patent Act, according to which all information introduced into the proceedings may be classified as trade secrets. Although § 145a PatG also provides for exceptions (namely independent evidence proceedings and compulsory licensing proceedings), it can be assumed that, especially in independent evidence proceedings, the opposing party will not have automatic access to all information obtained during the inspection at the defendant’s premises.