Still Alive: The German "Automatic Injunction" In Patent Infringement Cases Under The New Patent Act

• Published date: 09 May 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Jones Day
• Author: Dr. Christian Paul and Gerd Jaekel

In Short

The Situation: German courts have traditionally granted injunctions in patent cases more readily than other jurisdictions, with injunctions granted almost automatically where infringement is likely to be established and there is no overwhelming probability that the patent would be declared invalid.

The Development: In August 2021, the German Parliament approved a change to Section 139 of the German Patent Act ("PatG"). The new wording codifies pertinent case law that proportionality and the interest of both parties must be considered when granting an injunction. Consequently, almost all cases in which courts find infringement will lead to injunctions without any restrictions. Even in extreme cases where the balance of interests required in Section 139 is in favor of the infringer, at most only a limited grace period to sell off existing stock will be granted.

Looking Ahead: Despite the change to Section 139, Germany remains a very patentee-friendly jurisdiction where courts are open to grant injunctive relief as a remedy for patent infringement without restrictions.

The new PatG provides an exception to the general rule that injunctions result as a direct consequence of infringement for cases in which an immediate injunction would result in disproportionate hardship when weighing the interests of the patent holder and the infringer. Although this might appear to represent a considerable change in the patentee-friendly German litigation system, patentees can expect to readily obtain injunctions in appropriate future cases. This is due to a number of reasons.

First, the wording of the revised German Patent Act only codifies what the German Federal Supreme Court ("BGH") has already ruled. In 2016, it decided a case in which a car manufacturer argued that a patent infringement on a minor component should not impede the sale of the entire car (BGH X ZR 114/13 - W'rmetauscher "Heat Exchanger"). While the BGH confirmed the injunction in the case, it stated in its decision that as a matter of principle, proportionality and the interest of both parties must be considered to some degree when granting an injunction. Thus, even in a case where the defendant car manufacturer argued extreme undue hardship because its factory would have to close while the infringing item is a small part in a car, the court issued (unrestricted) injunctive relief.

Secondly, the scope of application of the exception in the PatG's new Section 139 is narrow. Section 139...