Law for the Simplification and Modernisation of Patent Law

On 10 June 2021, the Bundestag voted in favour of the Federal Government’s bill to simplify and modernise patent law as amended by the Legal Affairs Committee.

The most controversial aspect is probably the amendment of § 139 PatG and, analogously, § 24 GebrMG, according to which a claim for cease-and-desist against a patent infringer may be excluded if it causes disproportionate hardship to the infringer or to third parties. In such cases, the infringed party is entitled to monetary compensation. It is also noteworthy that the interests of third parties, e.g. customers of the infringer, are now to be taken into account. The legislator sees this amendment essentially as a clarification of the application of the principle of proportionality according to §§ 242, 275 II BGB (principle of good faith). The amendment is meant to be only relevant in exceptional cases. However, there are fears that this amendment could make it much more difficult to enforce a claim for injunctive relief.

Another amendment concerning §§ 82 and 83 PatG is intended to synchronise infringement and nullity proceedings. In practice, infringement proceedings were often concluded well before the nullity proceedings concerning the same patent. The amendments are therefore intended to accelerate the nullity proceedings, in particular by providing for an “immediate” service of the action, a two-month period for the defendant to file a defence (extendable by a maximum of one month) and a date for oral proceedings “as early as possible”. In addition, the patent court must issue a notice within six months on aspects of particular importance for the decision. In the case of pending infringement proceedings, this notice shall also be transmitted to the court having jurisdiction for such proceedings.

Also of importance is the new § 145a PatG, according to which §§ 16 to 20 GeschGehG are to be applied in patent litigation and compulsory licensing proceedings. According to this, a trade secret may be classified as confidential (§ 16 I GeschGehG), parties to proceedings must treat protected information as confidential (§ 16 II, 18 GeschGehG) and, upon request, access to documents or oral proceedings may be restricted to a narrow circle of persons (§ 19 I GeschGehG). Independent evidence proceedings are excluded from this regulation. This amendment is also applied to the utility model and semiconductor protection (§ 26a GebrMG and § 11 HalblSchG).

Dr. Matthias Vogt / Dr. Reta Schinkel