On June 10, 2021, the German Federal Cabinet approved the draft of a second law for the “simplification and modernization” of patent law. Among other things, the bill provides for an amendment to Section 139 of the Patent Act, which governs the right to injunctive relief by the patent proprietor in the event of patent infringements.

A new feature is the exceptional restriction of the right to injunctive relief for reasons of proportionality. Thus, this claim can be limited if its use would lead to disproportionate hardship for the infringer or for third parties due to the special circumstances of the individual case and the requirements of good faith, which would not be justified by the exclusive right. In this case, the patentee receives additional monetary compensation. The German Federal Court of Justice (BGH) had already conceded in the “Wärmetauscher” judgment of May 10, 2016 (X ZR 114/13) that in special cases and under narrow conditions a restriction of the right to injunctive relief by means of a time limit for use may be appropriate. The legislator now justifies this legal change by stating that the courts of instance have so far taken this BGH ruling into account only very cautiously.

Case law will show in the coming years in which particular cases this restriction of the right to injunctive relief will apply.

The draft law also seeks to accelerate patent nullity proceedings in order to achieve improved synchronization of infringement proceedings before the civil courts and nullity proceedings before the Federal Patent Court. This is because, at present, infringement proceedings are often decided in the second instance before the Federal Patent Court has ruled on the validity of the patent in the first instance. This is often unsatisfactory, since the party attacked on the basis of a patent cannot itself invoke a lack of patentability in infringement proceedings (“principle of separation”). The acceleration of the patent invalidity proceedings is to be achieved by streamlining the time limits for the parties to submit their observations, so that the Federal Patent Court can send an interim decision (the so-called qualified notice) to the infringement court within 6 months.

Other important changes:

• facilitated conduct of hearings by video conference at the German Patent and Trademark Office – similar to civil court proceedings – but only with the consent of the party(ies) joined by video conference,
• in patent and utility model infringement proceedings, the provisions of the German Business Secret Protection Act can now be applied accordingly,
• increase of annual fees for supplementary protection certificates,
• a slightly longer period for converting international patent applications under the PCT Treaty into German patent applications – 31 instead of 30 months from the priority date.

Since the Federal Council of Germany does not have to approve the law, it is expected to enter into force soon.

You can find the government draft here: https://www.bmjv.de/SharedDocs/Gesetzgebungsverfahren/DE/PatMoG_2.html;jsessionid=1743C6FAC86B86350FEC51F284B10C41.2_cid334?nn=6705022.