• Skip to main content
  • Skip to primary sidebar
  • Skip to footer
+49 (0) 69 / 606 278 – 0
[email protected]
Contact form
Patent- & Rechtsanwaltskanzlei

Patent- & Rechtsanwaltskanzlei

  • Deutsch

+49 (0) 69 / 606 278 – 0

  • Facebook
  • Twitter
  • Instagram
  • LinkedIn
  • xing
  • Email
MENUMENU
  • Services
    • Advice On Protective IP Rights
    • Patent Application /TM Registration
    • Enforcement Of IP Rights
    • Defence Against IP Rights Enforcement
    • Costs
  • Company
    • Fields of Law
      • Patent Law
      • Utility Model Law
      • Employees‘ Inventions
      • Trademark Law
      • Design Law
      • Trademark and Product Piracy
      • Expert Opinions
    • Our Law Firm
      • Dr. Karl-Hermann Meyer-Dulheuer
      • Dr. Tim Meyer-Dulheuer
      • Dr. Klaus Zimmermann
      • Zhichao Ying
      • Dr. Christoph Hölscher
    • Commitment
  • Contact
    • Where To Find Us
    • Write us!
    • Request call back
  • Blog

Liability for damages due to patent infringement – in spite of time-bar

16. April 2019

A patent infringer must surrender the profit he has made from the patent infringement – even after the limitation period for the liability for damages has expired. In a ruling on a guiding principle the BGH stated that there is a claim for residual damages for this profit and a comprehensive claim for information and accounting.

Restitution of unjust enrichment

liability for damages in spite of the time-barThe patent “power supply device” of the German plaintiff Lufthansa Technik AG was the patent in dispute in the previous proceedings (District Court Mannheim, decision of 06.02.2015 – 7 O 289/10 and Higher Regional Court Karlsruhe, decision of 09.11.2016 – 6 U 37/15). The liability for damages established extended not only to the period without limitation but also to acts committed during the period before 1 January 2007 – the period in which the limitation period for the claim for damages has expired.

The defendant challenged this, in so far as it had been ordered to render accounts, also stating the advertising carried out, the production costs and the profit made for the period barred by the statute of limitations. In its judgment of 26 March 2019 (X ZR 109/16), the Federal Court of Justice now dismissed the appeal and confirmed the judgment of the Court of Appeal.

A liability for damages also extends to the statute-barred period, but limited according to the provisions on the restitution and surrender of unjust enrichment.

BGH confirms the judgment of the Court of Appeal

The Court of Appeal had ruled: The applicant has a claim against the defendant for patent infringement for injunctive relief, information, invoicing and recall and also claims for damages. Irrespective of the limitation of the (unlimited) claim for damages, the defendant must also provide information on the advertising it has carried out, its production costs and the profit made. The limitation of the claim for damages for the period prior to 1 January 2007 had no effect on the scope of the accounting claim. The claim for residual damages under § 141, second sentence, Patent Law in conjunction with § 852 BGB (German Civil Law), which was not time-barred, was not necessarily limited to an appropriate licence fee but could be directed towards the surrender of the infringer’s profit.

Residual damage claim due to unjust enrichment

In § 141, 2nd sentence, German Patent Law (in German: Patentgesetz, PatG), the claim for residual damages by enriching the patent infringer with the words “attained at cost” is based on the act by which the property transfer was effected, i.e. on the patent infringement – from this follows the claim for damages for the use of the intangible object of protection, i.e. the technical teaching of the plaintiff’s patent. Since it is not possible,  this technical teaching to receive and deliver as a property, the value is to be replaced in principle according to § 818 exp. 2 BGB .

This is not only a royalty, but also a profit made by the patent infringement. The reference to unjust enrichment by the patent infringement justifies the liability for damages, more precisely a claim for residual damages. For that claim, it is sufficient that the enrichment would have arisen – it is no compensation for a concrete loss incurred. Nevertheless, the claim for residual damages under § 141 (2) Patent Law is linked to a transfer of assets caused by the patent infringement, i. e. an economic advantage of the patent infringer.

Entitlement to billing and information on the advertising

The Federal Court of Justice ruled that the infringer remains obligated to this even after the statute of limitations of the claim for compensation for the damage arising from the infringement has expired. It would not be fair to leave a profit to the infringer based on the culpable unauthorised use of the property right.

Accordingly, the claim to accounting includes, in addition to information on the profit, information on the production costs, which are necessary for the calculation of the infringer’s profit to be surrendered.
The same also applies to information on the advertising carried out, since this allows conclusions to be drawn with regard to the plausibility of the information on sales or the number of units sold. Moreover, the information on the advertising carried out was relatively easy to verify and could also indicate the care with which the accounts were drawn up, ruled the BGH.

Would you also like to assert a claim for damages or residual damage?

Our patent attorneys and attorneys at law are experienced and highly qualified in all areas of intellectual property law, both nationally and internationally.
Please feel free to contact us and welcome to us our callback offer.


 

 

 

Sources:

Judegement of BGH “liability of damages” X ZR 109/16

Picture:

012 /pixabay.com / CCO License  

  • share  
  • share 
  • share 
  • tweet 
  • share 

Category iconPatent Law Tag iconpatent infringement,  information on advertising,  BGH,  entitlement to billing,  Germany,  Restitution of unjust enrichment,  Liability for damages,  claim,  profit,  German patent law,  property transfer,  patent law,  guiding principle,  damages,  Residual damage

Reader Interactions

Leave a Reply Cancel reply

Your email address will not be published. Required fields are marked *

Primary Sidebar

More articles about: Patent Law

All articles

Blog Menu

  • Design Law
  • Healthcare & Lifesciences
  • International Intellectual Property
  • Licenses
  • News from our law firm
  • Overall
  • Patent Law
  • Product- and Trademark piracy
  • Trademark Law

Recent Posts

  • BPatG: Patent claim of cancer drug on active substance as salt 7. March 2022
  • Grant for European IP Protection: SME Fund 2022 4. March 2022
  • CODE-X vs. Cody’s: Likelihood of confusion in drinks? 25. February 2022
  • EOS lip balm no 3D trademark – appeal before ECJ not admissible 24. February 2022

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Das könnte Sie auch interessieren:

4. March 2022
Grant for European IP Protection: SME Fund 2022

Grant for European IP Protection: SME Fund 2022

22. February 2022
PAP is in force: UPC possible in 2022

PAP is in force: UPC possible in 2022

8. February 2022
Germany: Value in dispute and costs in proceedings

Germany: Value in dispute and costs in proceedings

3. February 2022
PCT application – does the principle of joint applicants apply?

PCT application – does the principle of joint applicants apply?

1. February 2022
Proof of patent infringement by whistleblower

Proof of patent infringement by whistleblower

19. January 2022
Computer Data identification declared invalid

Computer Data identification declared invalid

Contact us or request a call back

+49 (0) 69 / 606 278 – 0
[email protected]
Request a call back

Footer

Contact

Torhaus Westhafen
Speicherstrasse 59
D – 60327 Frankfurt am Main
Deutschland
+49 (0) 69 / 606 278 – 0
+49 (0) 69 / 606 278 – 199
[email protected]

Office Hours
Moday – Friday:   08:00-18:00

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Law Firm

  • Request non-binding call back
  • Company
  • Our Law Firm
  • ISO Certificate
  • Privacy Policy
  • Data handling for clients
  • Imprint

Follow Us

  • Facebook
  • Twitter
  • LinkedIn
  • xing
  • Email

Newsletter Signup

© Patent- & Rechtsanwaltskanzlei Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Contact Form

 

Give us a call, send us an email or fill out the contact form.

+49 (0) 69 / 606 278 – 0
[email protected]

Kontaktformular

 

Rufen Sie uns an, schicken Sie uns eine Mail oder füllen Sie das Kontaktformular aus.

+49 (0) 69 / 606 278 – 0
[email protected]