According to press reports, the German Ministry of Justice recently released a draft law proposal to restrict injunctions in patent cases by equitable considerations in individual cases. Currently, under German patent law, a permanent injunction is the automatic remedy if a patent is found to be infringed. And since digitalization has led to an increase in the number of patents involved in a single product (e.g., cars, smartphones), the grant of injunctive relief based on a single patent may therefore easily bring the production for an entire product line to a halt. This especially applies to the automotive sector and its “connected cars.”

In its draft, the Ministry proposes to limit injunctions through a commensurability test, whereby a claim for injunctive relief might be considered disproportionate in exceptional individual cases, e.g., if it would cause an extreme economic hardship for the alleged infringer.

Additionally, the Ministry suggests a change of procedural rules. One of the peculiarities of the German patent system is that infringement and nullity proceedings are tried in different courts. Decisions on infringement and validity might therefore not necessarily be rendered at the same time, which might lead to an “injunction gap.” According to the Ministry, both proceedings should, therefore, run as concurrently as possible in order to avoid an injunction before a decision on the validity of a patent has been rendered. The Ministry proposes that “qualified indications” (“Qualifizierte Hinweise”) issued by the invalidity courts about their view of the factual and legal considerations could also be provided to the infringement courts ex officio. Currently, such qualified indications may only be provided to the parties to the nullity proceedings.

The federal and state ministries have until 10 March 2020 to comment on the draft law proposal.


This article was originally published on AllAboutIP – Mayer Brown’s blog on relevant developments in the fields of intellectual property and unfair competition law.