ARTICLE
29 March 2022

German Patent Law Modernization Act Enters Into Force

H
HLK

Contributor

HLK logo
HLK is a global cooperation combining Haseltine Lake Kempner LLP and HL Kempner Partnerschaft mbB and provides a full suite of IP services advising across the entire IPR Lifespan™ in all technical and scientific disciplines. With offices in London, Bristol, Munich, Leeds, Glasgow, and Guangzhou (China), HLK provides IP services across the globe. HLK’s resources and expertise are exclusively dedicated to IP protection: safeguarding the inventions, creative designs, brand identities and other innovations of its clients. HLK advises on the strategy, identification, protection, opposition and appeal, exploitation and enforcement of IP rights, and defends its clients from allegations of infringement by focusing on acquiring competitive advantage for its clients. HLK is privileged to work with some of the most exciting and forward-looking businesses in the world which are at the forefront of innovation and product development in their various spheres.
More than 10 years after the last amendments to German patent law, the new (second) German Patent Law Modernization Act will enter into force on 1st May 2022.
Germany Intellectual Property

More than 10 years after the last amendments to German patent law, the new (second) German Patent Law Modernization Act will enter into force on 1st May 2022.

Among a number of minor amendments, applicants may be pleased to notice that the term for entering the German national phase from an international PCT patent application has been increased to 31 months from the earliest priority date. The previous deadline was 30 months (IntPatÜbkG Art. III, §4(2-4)).

This means that, for PCT applications with a priority date of 1 November 2019 onwards, applicants have more time to decide whether they may want to enter the German national phase. As before, the German translation of the application documents must still be filed by the deadline for entering the German national phase, but applicants will surely appreciate the one month extension of this deadline.

The Patent Law Modernization Act further aims to streamline nullity proceedings before the German Patent Court in order to reduce the "injunction gap" in German infringement/nullity proceedings. Since German infringement proceedings are held before the civil courts while nullity proceedings are held before the Patent Court, infringement proceedings are typically stayed while the nullity proceedings are pending. Section 83 of the Patent Law has now been amended to require that the Patent Court forwards its reference decision to the infringement court within 6 months of receiving the nullity request. The Patent Court is also given the power to disregard arguments of the parties received after the expiry of the time limit for the reference decision.

Another notable amendment included in the German Patent Law Modernization Act is that the principle of proportionality (Verhältnismäßigkeit) is to be observed in patent and utility model infringement proceedings. Therein, the term "proportionality"/"Verhältnismäßigkeit" relates to avoiding unjustified hardship being imposed on the infringer or on third parties. According to the grounds provided with the Act, this is not intended to devalue patent law, as the amended section 139, paragraph 1 of the Patent Law and the corresponding section 24 of the Utility Model Law specifies that the proportionality is only to be considered when this is deemed to be necessary based on the specific details of an individual case, taking into account the requirement of good faith. Damages, as defined in section 139, paragraph 2 of the Patent Law, are to be awarded irrespective of proportionality considerations, and the patentee is to be receive an appropriate monetary compensation.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Mondaq uses cookies on this website. By using our website you agree to our use of cookies as set out in our Privacy Policy.

Learn More