Webinar Frey “The reform of injunctive relief in patent law”

On Tuesday, 4 May 2021, doctoral student Anton Frey gave a digital lecture on “The reform of injunctive relief in patent law” in front of more than 100 experts.

According to Frey, the injunctive relief entails various consequential problems in view of the lack of a proportionality requirement as a prerequisite for the claim, which were explained in terms of their reasons and effects. On the one hand, the problem complex of injunctive relief for complex products was mentioned, illustrated by the example of the legal disputes between Apple and Qualcomm and between VW and Broadcom. This was attributed, among other things, to the increased incidence of intellectual property rights, the reasons for which were explained. This was followed by an illustration of the ambush situation as a further complex of problems in which often non-practising patent owners (NPEs) could build up patents as a “threat backdrop” to improve their own negotiating positions.

The more frequent occurrence of these NPEs was justified by the prominent position of German exclusive rights and e.g. the creation of an “injunction gap”. As a consequence, injunctive relief was said to have a “threat potential” that could lead to uncertainties in development and production as well as excessive use of corporate resources for litigation. Ultimately, this could prove to be an obstacle to innovation. Finally, Frey problematised the lack of consideration of third party interests in the assessment of injunctive relief and explained this using the example of the particularly relevant case group of public health.

As a possible means of counteracting this, the period of limitation in patent infringement proceedings was then cited. Already mentioned by the RG and also recognised by the BGH in the “Wärmetauscher” decision, this represented a possibility of limiting the injunctive relief from the point of view of proportionality. If use is made of this substantive limitation of the claim, which is mainly derived from Section 242 of the German Civil Code, the patent proprietor must tolerate the use of his patent for a certain period of time. The prerequisites for the period of tolerance were determined by weighting the interests of the patent proprietor and the infringer and, in appropriate cases, the legitimate interests of third parties. However, in view of the very high requirements, this possibility had not yet been used by the courts.

Finally, the draft bill on the 2nd Patent Modification Act was discussed. According to the current status, it would provide for the consideration of proportionality and legitimate interests of third parties and would also include Sections 16-20 GeschGehG as procedural means of protection in patent infringement proceedings. However, there is still considerable disagreement in politics, economics and jurisprudence.

In Frey’s opinion, the importance of the time limits for revocation will increase in the future in order to enable solutions that are tailored to the interests of individual cases. In his outlook, he also pointed to the upcoming shaping of the criteria to be taken into account within the framework of the balancing of interests as well as the possible addition of, for example, additional framework conditions. This would have the chance to eliminate the problems explained at the beginning, especially the “threat potential” and the impending obstacle to innovation as well as the lack of consideration of justified third-party interests.

In conclusion, a discussion took place under the leadership of Prof. Hoeren, in which in particular the influences of the GeschGehG, effects on neighbouring areas of law and practical problems of the legislative procedure were discussed.

The ITM would like to thank Anton Frey for the successful lecture and all participants for their active interest.