Patent infringement

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Patent infringement is the use of an invention protected by a patent by an unauthorized third party .

Legal bases

Immediate patent infringement

The objective fact of direct patent infringement has its legal basis in Section 9 of the Patent Act (PatG). According to sentence 1 of this standard, "the patent ... has the effect that only the patent owner is authorized to use the patented invention within the framework of applicable law". It is expressed even more clearly in the prohibition rule in sentence 2 of the provision in question, where it says: "It is forbidden to any third party without his" (the patent proprietor's) "consent

  1. to manufacture, offer, market or use a product that is the subject of the patent or either import or possess for the stated purposes;
  2. to use a process that is the subject of the patent or, if the third party knows or it is obvious from the circumstances that the use of the process is prohibited without the consent of the patent proprietor, to offer it for use within the scope of this Act;
  3. offering, placing on the market or using a product directly manufactured by a process which is the subject of the patent or either importing or possessing it for the stated purposes ".

Here, number 1 refers to a patent that protects a product according to the invention, often referred to in practice as a “device patent”. Item 2 relates to a so-called process patent. Clause 3 stipulates a special feature, according to which the prohibition not only extends to the patented process as such, but also includes the products directly manufactured using the patented process.

Contributing Patent Infringement

Objective fact

However, the patent law prohibition not only covers direct acts of use, but also extends to indirect use by unauthorized third parties. According to Section 10 (1) of the Patent Act, they are prohibited “without the consent of the patent owner within the scope of this law, other persons than those authorized to use the patented invention to use means that relate to an essential element of the invention, to use the invention in the scope of this Law to offer or deliver ... "

Subjective fact

In addition to the fulfillment of the objective fact of indirect patent infringement, Section 10 (1) last half-sentence (HS) PatG presupposes in a subjective respect that “the third party knows or it is obvious from the circumstances that” the “means in question are suitable and are intended to be used for the use of the invention ”.

exclusion

The prohibition of indirect use of the patented invention does not apply in accordance with Section 10 (2) of the first HS PatG if the means are generally commercially available products. "However, the second HS of the aforementioned provision makes this exception more subjective According to this, the indirect use of commercially available products is prohibited, namely if “the third party deliberately induces the supplier to act in a way that is“ prohibited ”according to Section 9 sentence 2 (PatG).

Exceptions

In the case of some legally regulated exceptions, however, the effect of the patent and thus its prohibitive effect does not occur. The most important are: acts in the private sector for non-commercial purposes ( Section 11 No. 1 Patent Act), the so-called private right of prior use ( Section 12 Subsection 1 Patent Act), the right of use granted on the basis of a state order ( Section 13 Subsection 1 Patent Act ) as well as the right of further use in the case of interim use in good faith ( Section 123 (5) to (7) Patent Act).

Actions in the private sphere for non-commercial purposes

According to § 11 No. 1 PatG, the effect of the patent "does not extend to actions that are carried out in the private sector for non-commercial purposes". The exclusion of a patent infringement therefore depends on two conditions:

  1. The actions must be in the private sphere, e.g. B. in the home environment, the user.
  2. They must be made for non-commercial purposes.

If only one of the two conditions is not met, the exception regulation of Section 11 No. 1 PatG does not apply. Actions of use outside the private sphere are to be assessed as patent infringement, even if they are not carried out for commercial purposes. Example: Actions by schools or universities in teaching natural history.

Prior use right

The legal basis for the so-called private right of prior use is § 12 PatG. According to Paragraph 1 of this provision, the patent does not have any effect on anyone who at the time of filing the application was already using the invention in Germany or who had taken the necessary events. The “effect” of the patent is the (positive) rights of use and (negative) prohibition rights of the patent owner with regard to the invention protected by the patent, standardized in § 9, § 9a and § 10 PatG.

The patent holder can be entitled to a so-called priority right if he has already applied for a patent (or utility model ) for the invention at an earlier point in time (at home or abroad) . See § 40 PatG, § 41 PatG. If he has effectively exercised the right of priority (within a specific, prescribed period), in this case the date of filing of the current patent, rather than the filing date of the previous patent (or utility model), is decisive for the right of prior use, Section 12 (2) sentence 1 PatG.

The legislature sees the purpose of the right of prior use in protecting the existing commercial or economic property of the prior user for reasons of equity . It is unreasonable to destroy economic values ​​created in a legitimate exercise. This is prevented by the right of prior use. An existing acquis should not be invalidated by the patent application of another.

Sovereignly ordered right of use

The legal basis for the right of use granted by state order is Section 13 (1) PatG. According to this provision, "the effect of the patent ... does not occur in so far as the federal government orders that the invention should be used in the interests of public welfare . Furthermore, it does not extend to a use of the invention that is ordered in the interest of federal security by the competent highest federal authority or on their behalf by a subordinate body ”.

Right of further use

The legal basis here is Section 123 PatG. Pursuant to Paragraph 5 Clause 1 of this provision, a user “who in good faith in Germany has used the subject-matter of a patent that comes into force again as a result of reinstatement , or in the period between the expiry of the patent and its re- entry into force Zeit has taken the necessary events ... authorized to continue using the subject matter of the patent for the needs of his own company in his own or third-party workshops ".

According to Paragraph 6 of the standard in question, “Paragraph. 5 ... to apply accordingly if the effect according to Section 33 (1) PatG comes into force again as a result of the reinstatement ”.

Paragraph 7 of Section 123 grants “a right under Paragraph 5 ... also to those who, in good faith, apply for the subject matter of a patent application in Germany that claims the priority of an earlier foreign application as a result of the reinstatement ” ( Section 41 PatG ), "In the time between the expiry of the period of twelve months and the re-entry into force of the right of priority in use or took the necessary events during this time".

Further usage rights

Furthermore, usage rights arise from § 9b PatG - this is the so-called exhaustion regulation for (biological) propagation material - as well as from § 9c PatG. The latter regulation standardizes the so-called farmer's privilege concerning plant or animal reproductive material.

Sanctions

It goes without saying that a ban on patent infringement acts in most cases can only have the effect desired by the legislature if non-compliance results in severe sanctions for the patent infringer. These can be civil and - if necessary - even criminal .

Civil Sanctions

Injunction

Pursuant to Section 139 (1) Sentence 1 of the Patent Act, “anyone who uses a patented invention contrary to Sections 9 to 13 ... may be claimed to cease and desist from the injured party if there is a risk of repetition ”. The injunction not only requires non-compliance with Sections 9 to 13 of the Patent Act, but there must also be a risk of repetition of the infringing acts. On the other hand - according to § 139 Abs. 1 Satz 2 PatG - an injunction claim is already given "when there is a threat of an infringement for the first time". An act of infringement does not need to have taken place yet.

Of course, the injunctive relief not only presupposes the fulfillment of the objective facts of Section 139 (1) PatG, namely the use of the patented invention without the permission of the patent holder, but the act of use must also be illegal . This means that in the case of the exemption clauses explained above, i. H. the various rights of use granted to third parties (see above, Sections 2.1 to 2.5), which must be denied illegality and insofar as the patent proprietor does not have an injunction.

Claim for damages

"Anyone who undertakes the act intentionally or negligently is obliged to compensate the injured party for the resulting damage", Section 139 (2) sentence 1 PatG. However, the claim for damages - in addition to the fulfillment of the objective facts of Section 139 (1) PatG and the illegality of the act of use (see the above explanations) - also requires intent or negligence on the part of the infringer.

Further claims of the injured party

According to § 140a PatG, the injured party (patent owner) is entitled to the destruction of patent-infringing products and devices. Section 140b PatG also grants him the right to "immediate information about the origin and distribution channel of the products used". In addition, § 140c PatG stipulates a submission and inspection claim vis-à-vis the user of the patented invention with regard to documents or objects , if this is necessary to justify claims of the patent holder. Furthermore, in accordance with Section 140d PatG, the patent owner can, in the event of claims for damages, claim against the infringer "in the case of an infringement committed on a commercial scale ... also on submission of bank, financial or commercial documents or suitable access to the relevant documents ... "In the case of a patent infringement suit, finally, according to § 140e PatG" the prevailing party in the judgment can be granted the authority to make the judgment publicly known at the expense of the unsuccessful party if it demonstrates a legitimate interest ".

Criminal sanctions

Objective fact

According to Section 142, Paragraph 1, Sentence 1 of the Patent Act, "a prison sentence of up to three years or a fine ... is punished for anyone who does not have the required consent of the patent holder or the holder of a supplementary protection certificate ( Section 16a and Section 49a of the Patent Act)

  1. a product that is the subject of the patent or of the supplementary protection certificate (Section 9 sentence 2 no. 1), manufactures or offers, places on the market, uses or either imports or owns or for one of the purposes mentioned
  2. a procedure that is the subject of the patent or of the supplementary protection certificate (Section 9 sentence 2 No. 2), uses or offers for use within the scope of this Act ".

The threat of punishment in Section 142, Paragraph 1, Clause 1, No. 1 of the Patent Act also applies, in accordance with Clause 2 of the provision in question, “if it is a matter of a product that is directly subject to a process that is the subject of the patent or the supplementary protection certificate has been established (§ 9 sentence 2 no. 3) ".

The objective criteria of Section 142 (1) PatG correspond to the prohibition norms of Sections 9 and 10 PatG.

If the offender (patent infringer) acts commercially, the threat of punishment increases to imprisonment of up to five years or a fine, Section 142 (2) PatG.

Subjective fact

Another prerequisite for criminal liability for patent infringement is that the perpetrator not only objectively but also subjectively fulfills the criteria listed above, i.e. H. intentional , realized. This requirement arises from Section 15 of the Criminal Code (StGB).

For criminal liability of the perpetrator, it is not necessary for it to perfection has come of patent infringement. Rather, it is sufficient to attempt Section 142 (3) PatG. (Attempted patent infringement has only been criminalized since July 1, 1990.)

illegality

Furthermore, it is assumed that the actions of use are illegal. This is fundamentally given when the relevant elements of Section 142 PatG are fulfilled, unless the user of the patented invention can assert justifications . The exceptions explained above (see Sections 2.1 to 2.5) can be considered as grounds for justification. In this regard, what has already been said above with regard to civil law sanctions (omission, compensation, etc.) applies accordingly (see above, Section 3.1).

Criminal complaint

In the case of the elements of the offense according to Section 142 (1) PatG, it should also be noted that, according to Section 142 (4) PatG, “the offense will only be prosecuted upon request ”, “unless the prosecuting authority has a special public interest in the prosecution believes that ex officio intervention is necessary ”.

See also

literature

  • Georg Benkard , Patent Law Utility Model Law, 10th edition, Munich 2006 (quoted: Benkard editor)
  • Eduard Reimer , Patent Act and Utility Model Act, 3rd edition, Cologne, Berlin, Bonn, Munich 1968

Individual evidence

  1. ↑ Federal Constitutional Court (BVerfG), in: Zeitschrift Neue Juristische Wochenschrift (NJW) 1971, p. 216 ff
  2. ^ Federal Court of Justice (BGH), in: Journal of Commercial Legal Protection and Copyright (GRUR) 1964, p. 673; 675 f
  3. ↑ Collection of decisions BGH in Zivilsachen (BGHZ), Vol. 39, pp. 389, 397
  4. ↑ Benkard-Rogge, Patent Law Utility Model Law , 10th edition, Munich 2006, Rn 5 to § 142 PatG