2. Closing the “Injunction Gap” – Section 83 of the Patent Act
By synchronizing the nullity proceedings before the Federal Patent Court and the infringement proceedings before the Civil Courts, the so-called “injunction gap” is intended to be closed using procedural means.
The German patent system is characterized by the separation of nullity proceedings on the one hand and patent infringement proceedings on the other hand (the so-called principle of bifurcation). The question of infringement of the patent and the question of invalidity of a patent are examined and decided in separate proceedings and by different courts. The infringement judge is bound by the facts of the granted patent and is not authorized to question the validity of the patent. The judicial review of (legally binding) granted patents is the responsibility of the Federal Patent Court in the first instance and the Federal Court of Justice on appeal. Up to now, nullity proceedings usually take much more time than infringement proceedings, and it is therefore not uncommon for an injunction to be imposed on the basis of a patent that later proves to be legally invalid. An alleged infringer may suffer significant economic drawbacks by a provisionally enforced injunction because claims for damages that can be asserted later in the event that the patent in suit is declared invalid, in most cases do not fully compensate for the results of being squeezed out of the market due to the injunction.
In order to achieve a better synchronization of the timing of the two proceedings, the qualified notice under Section 83 Patent Act, by which the Federal Patent Court communicates its preliminary assessment of the legal status of the patent, shall be issued within six months after filing the nullity action. If a patent case is pending, the qualified notice shall be transmitted ex officio to the infringement Court, so that the infringement Court then regularly has a corresponding notice of the Federal Patent Court before the oral proceedings, which can be taken into account when deciding on a stay of the infringement proceedings.
3. Corresponding application of the German Act on the protection of Trade Secrets
The new Section 145a of the Patent Act draft stipulates applying more detailed provisions of the Law on the Protection of Trade Secrets of April 18, 2019 in the patent process. In patent litigation, confidentiality interests of the parties can be affected and can form a conflict of interests in Court proceedings. On the one hand, there is an interest also in using confidential information to substantiate the party's own legal positions in the legal dispute. On the other hand, such information should as far as possible not be disclosed in order to not impact its own competitive position. In order to achieve a better balance of this conflict of objectives, the newly provided Section 145a of the Patent Act stipulates a corresponding application of the procedural provisions of Sections 16 to 20 of the Law on the Protection of Trade Secrets in patent litigation. For example, protected information must be treated confidentially by the parties to the proceedings and may not be used or disclosed by them outside of court proceedings. The court may also restrict access to documents or to the oral proceedings to a narrow circle of persons upon request.
4. Official hearings, oral proceedings and hearings of witnesses via ViCo
Starting from May 1, 2022, for procedures under the Patent Act, the Utility Model Act, the Trade Mark Act, the Design Act, and the Semiconductor Protection Act, the option of participating in hearings, proceedings, and giving evidence by means of image and sound transmission shall be provided by analogously applying Section 128a of the Code of Civil Procedure. Parties can participate in sessions by video conferencing in suitable cases to be decided by the GPTO. It will still be possible to physically be present in order to participate in the sessions on site.
5. Extension of the period for PCT applications to enter the national phase
The period for PCT applications to enter the national phase will be extended from 30 to 31 months from the filing date or priority date, as the case may be. In future (entry into force: May 1, 2022), applicants will have one more month to pay the fee for entry into the national phase at the GPTO and, if applicable, to submit the German translation of the application (Article III sections 4 and 6 of the Act on International Patent Conventions).
6. Summary
The 2. PatModG is intended to strengthen the reputation of Germany as a location for the protection of intellectual property in the field of industrial property. In particular, dealing with the injunction gap will most likely be seen as a big step forward. Despite all concerns in the preparatory phase, it is not expected that the amended Section 139 of the Patent Act will have a negative impact on the enforceability of claims to injunctive relief under normal circumstances. Of course, in future cases attorneys will have to raise the issue of proportionality and the costs might augment. However, the courts will develop strategies for effectively dealing with the respective plea.
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