Patent Law Modernisation Act: Miriam Kiefer LL.M. lectures via online seminar at JETRO

The Japan External Trade Organization(JETRO) invited our Managing Partner Miriam Kiefer LL.M. to report on the latest developments of the Second Patent Law Modernization Law.

On 14 June 2022, Miriam Kiefer gave the participants an overview of the reform of the patent law in Germany in her 90-minute lecture. The subsequent discussion on the development of case law at the instance courts reflected the importance of the reform for businesses.

On the background:

Years have passed since the last major reform of industrial property protection by the Act on the Simplification and Modernisation of Patent Law of 31 July 2009. In order to ensure Germany’s outstanding position as a location for the protection of intellectual property in the field of industrial property rights also in the future in European and international comparison, it was necessary to review whether the current legal regulations still meet the requirements that effective and balanced protection of industrial property rights requires.

The result of the review of the regulations in this field of law was adopted by the German Parliament (Bundestag) in the form of the Federal Government’s draft lawon the simplification and modernisation of patent law (as amended by the Legal Affairs Committee) on 10 June 2021 (video), confirmed in the second Federal Council (Bundesrat) examination on 25 June 2021 and on 10 August 2021 in the Federal Law Gazette published.

The law reform focuses on three areas: First, the new law stipulates that in exceptional cases, injunctive relief for patent infringement may be limited for reasons of proportionality. Thus, Section 139 para. 1 sentence 3 Patent Act (PatG) now stipulates that the infringement of a patent does not necessarily entitle the infringed party to injunctive relief, but that this relief may be limited in exceptional cases by considerations of proportionality. In the case of a limitation of the right to injunctive relief, the infringed party shall be entitled to appropriate monetary compensation.

Secondly, the new Sec. 83 para. 1 sentence 2 Patent Act, according to which the Federal Patent Court shall give notice within six months from service of process, is intended to accelerate the nullity proceedings. This is intended to better synchronise nullity proceedings with infringement proceedings before the civil courts.

Thirdly, the new reference in Sec. 145a Patent Act to the provisions on the protection of trade secrets (GeschGehG) in patent litigation is an important step to ensure the protection of trade secrets also in patent infringement proceedings.

Miriam Kiefer LL.M. and Dr Christof Augenstein will be presenting further seminars with JETRO in the second half of the year, this time on the subject of UPC.

In the past, Dr. Christof Augenstein has already given a lecture in Tokyo on the subject of patent infringement proceedings at the invitation of JETRO. Patent infringement proceedings in Germany held.

JETRO (Japan External Trade Organisation), was established in 1958 by the Japanese Ministry of International Trade and Industry (MITI) to support and promote Japanese export efforts. In the 21st century, JETRO’s focus has shifted to promoting foreign direct investment in Japan and helping small to medium-sized Japanese companies maximise their global export potential.

JETRO has 76 overseas offices in 55 countries worldwide and 48 offices in Japan, including headquarters in Tokyo and Osaka. In Germany, JETRO is represented with three offices in Berlin, Düsseldorf and Munich.

On June 14, 2022, Miriam Kiefer gave the participants an overview of the reform of the patent law in Germany in her 90-minute presentation. The subsequent discussion on the development of case law at the courts of instance reflected the importance of the reform for companies.

Background:

Years have passed since the last major reform of industrial property protection by the Act on the Simplification and Modernization of Patent Law of July 31, 2009. In order to ensure Germany’s outstanding position as a location for the protection of intellectual property in the field of industrial property rights in the future as well in European and international comparison, it was necessary to review whether the current legal regulations still meet the requirements that effective and balanced protection of industrial property rights demands.

The result of the review of the regulations in this area of law was published in the Federal Government’s bill on the VSimplification and modernization of patent law (as amended by the Committee on Legal Affairs) on June 10, 2021 passed by the Bundestag (video), confirmed on June 25, 2021, in the second Federal Council review, and on August 10, 2021, in the Federal Law Gazette published.

The reform of the law focuses on three areas: First, the new law firmly establishes that in exceptional cases, injunctive relief for patent infringement may be limited for reasons of proportionality. Thus, § 139 para. 1 sentence 3 PatG now that the infringement of a patent does not necessarily entitle the infringed party to injunctive relief, but that this relief is subject to a proportionality test. In the event that the right to injunctive relief is limited, the injured party shall be entitled to appropriate monetary compensation.

Secondly, the new Section 83 para. 1 sentence 2 PatG, according to which the notice of the Federal Patent Court shall be given within 6 months from service of the action, serve to accelerate the nullity proceedings. This is intended to better synchronize nullity proceedings with infringement proceedings before the civil courts.

Third, the new reference in Sec. 145a Patent Act to the provisions on the protection of trade secrets (GeschGehG) in patent litigation is an important step to ensure the protection of trade secrets also in patent infringement proceedings.

Miriam Kiefer LL.M. and Dr. Christof Augenstein will conduct further seminars with JETRO in the second half of the year, this time on the subject of UPC.

In the past, Dr. Christof Augenstein has already given a lecture in Tokyo on the subject of patent infringement proceedings at the invitation of JETRO. Patent infringement proceedings in Germany held.

JETRO (Japan External Trade Organization), was established in 1958 by the Japanese Ministry of International Trade and Industry(MITI) to support and promote Japanese export efforts. In the 21st century, JETRO’s focus has shifted to promoting foreign direct investment in Japan and helping small to medium-sized Japanese companies maximize their global export potential.

JETRO has 76 overseas offices in 55 countries worldwide and 48 offices in Japan, including headquarters in Tokyo and Osaka. In Germany, JETRO is represented by three branches in Berlin, Düsseldorf and Munich.