Following the first discussion draft from January 2020, the Federal Ministry of Justice and Consumer Protection (BMJV) presented a draft bill for a Second Act to Amend Patent Law on 1 September 2020. Even though the discussion draft only emphasized a selective need for simplification and modernization, it was the subject of numerous, in part clearly critical, comments (Link to comments made by various market participants).
The main purpose of the draft law is to better coordinate infringement proceedings before civil courts with nullity proceedings before the Federal Patent Court, as well as to improve the protection of confidential information in patent and utility model litigation. Furthermore, the planned introduction of a proportionality test in the context of the injunction claim under Sec. 139 Patent Law is likely to be relevant in practice.
Unlike claims to recall and for destruction under Sec. 140a Patent Law, the previous injunctive relief under Sec. 139 Patent Law does not expressly provide for a proportionality test. Whether such a test must also be carried out in the case of a claim for injunctive relief has been hotly debated for some years now due to the increasing complexity of patent-protected products, the number of patents built into them and the effects of a threatened ban on sales of the product in question due to an assumed patent infringement.
While demands for a proportionality test originate in particular from the automotive and mobile telephony sectors, the planned revision of § 139 Patent Law is largely rejected by other market participants and the legal profession. One of the reasons given for this is the BGH decision “Wärmetauscher” (Case No. X ZR 114/13), according to which, even under the old version of Sec. 139 Patent Law, a court injunction in the event of a patent infringement could be restricted in individual cases by way of exception.
Even though this has hardly been applied in practice so far, the dissenting voices see this as a sufficient possibility for a proportionality test. By contrast, it is feared that the standardisation of an explicit proportionality test would weaken patent protection and thus also the effective enforcement of patents in Germany, which has been assessed positively in most cases so far.
It remains to be seen whether the draft bill will be adopted in this form and whether, as is also occasionally argued, the planned amendment to the law will remain largely irrelevant. Comments on the draft bill are still possible until 23 September 2020.
