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Despite Criticism: German Bundestag Votes for Introduction of Proportionality Test in Patent Law

by Dr Christian Meyer

In the night from 10 to 11 June 2021, the German Bundestag voted in the 2nd/3rd reading in favour of the Federal Government's bill on the simplification and modernisation of patent law (19/25821) as amended by the Legal Affairs Committee (19/30498).

As explained in this context on 22 September 2020 and 25 January 2021, the primary purpose of the bill is to better synchronize patent infringement proceedings in civil courts with nullity proceedings in the Federal Patent Court, as well as to improve the protection of confidential information in patent, utility model, and semiconductor litigation.

Inparticular, the most relevant amendment applicable in practice, in the form of the introduction of a proportionality test inthe context of the claim for injunctive relief under Sec. 139 PatG (new version) was eagerly awaited.

In the version now adopted by the Bundestag, the wording of Sec. 139 S. 3 PatG n.F. which clarifies that the right to injunctive relief may be limited in exceptional cases of patent infringement, has been extended to include a reference to the principles of good faith. According to the explanatory memorandum, this is intended to clarify that an assessment of the overall circumstances of the individual case and a careful weighing of all circumstances, taking into account the requirement of good faith and the fundamentally overriding interests of the infringed party in the enforcement of its injunctive relief, is required.

A further amendment has been made, inter alia, to Sec. 139 p. 4 PatG n.F., with which a compensation claim from the infringed party against the patent infringer is made mandatory, in the event that the injunctive relief granted for patent infringement is exceptionally limited. The amount of damages, however, is subject to the reservation of reasonableness.

While critics of the planned proportionality test have argued that the German legal framework, including the case law of the Federal Court of Justice (such as the heat exchanger decision, file no. X ZR 114/13), already allow for the proportionality test for injunctive relief in the case of patent infringements, the legislator believes that the courts of instance have so far only considered this with great reluctance (see 19/25821, p. 31).

It remains to be seen whether, as feared by some, the bill now adopted by the Bundestag will lead to a softening of patent protection and thus to a weakening of the effective enforcement of patents in Germany, which has so far been viewed in a mostly positive light. At least according to the explanatory memorandum of the draft law, a possible restriction of the right to injunctive relief shall only be considered in particularly exceptional cases.


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