Right of further use

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Right of further use denotes a legal position, the owner of which does not require the permission of the patent owner to use an inventive subject matter protected by a third-party patent .

Legal basis

The legal basis of the right of further use is § 123 PatG. According 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 its reinstatement , in the period between the expiry of the patent and its re- entry into force or during this period has taken the necessary events, is authorized to continue to use 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 norm in question, Paragraph 5 is to be applied accordingly if the effect according to Section 33 Paragraph 1 PatG comes into force again as a result of the reinstatement.

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

The requirements of Section 123 (5) PatG in detail

Reinstatement in the previous state

The patent must - as a result of a failure to meet a deadline ( through no fault of the patent owner) vis-à-vis the patent authorities ( German Patent Office , Federal Patent Court ) - initially expire and later - due to successful reinstatement proceedings - have come into force again, Section 123 (1) sentence 1 PatG with the result that the patent holder has thereby regained his rights of use and prohibition according to § 9 PatG.

A corresponding application of the legal basis of Section 123 (5) PatG for the right of further use also takes place if the resumption of patent nullity proceedings concluded by a final decision leads to the restoration of the patent.

User good faith

When commencing his usage or event activities - cf. the legal definition in § 9 and § 12 PatG - have been in good faith. For this it is not necessary that he knew about the expiry of the patent. However, if he knew this and expected the patent to be revived or had to expect it (negligent ignorance), then he was not in good faith.

As far as the burden of proof is concerned, it is not up to the user to prove his or her good faith, but rather it is up to the owner of the re-enacted property right (patent or patent application) to prove that the user acted in bad faith.

User actions between expiration and revival of the patent

It is necessary to use it within the period between the expiry and re-entry into force of the patent, whereby these acts in Germany , i. H. within the scope of the patent.

Extension to patent applications

The relevant provision of Section 123 (6) of the Patent Act is a supplement to the regulation in accordance with Section 123 (5) in such a way that a right of further use not only in the case of revived patents , but also in the case of revived (not yet granted patents , but disclosed) patent applications must be granted, provided the requirements of para. 5 are met. In this case, the right of further use consists in the fact that the owner of the patent application cannot demand compensation from the user to which he is normally entitled under Section 33 (1) PatG.

Patent application with foreign priority

A further addition to Section 123 (5) contains Section 7 of this provision: If a patent application has the priority of an earlier foreign patent application as a result of being reinstated in the expired priority period, the domestic user in good faith has a right of continued use in accordance with Section 123 (5) to. The prerequisite is that he has used the subject of the registration in the period between the expiry of the twelve-month priority period and the re-entry into force of the priority right or has taken the necessary events.

Sense and purpose of the right of further use

The right of further use according to Section 123 Paragraphs 5, 6 and 7 of the Patent Act is based on considerations of equity by the legislature. The regulation is intended to protect the property acquired in good faith by a third party in good faith who has made use of the subject matter of the patent application or patent after the application has expired or the patent has expired. The right of continued use carries with it the special account that the disclosure of a patent application related protective effects of § 33 para 1 of the Patent Law or with the patent. Grant entering patent protection in accordance with § 9 of the Patents Act - came as a result of re-establishment force - unexpectedly for the user.

European patent applications and patents

A right of further use is also provided for European patent applications or patents in the event of reinstatement in missed deadlines. A regulation in this regard that largely corresponds to the provisions of Section 123 (5) and (6) of the Patent Act is contained in Article 122 (5 ) EPC .

See also

literature

  • Ruschke, On the question of the right of further use, in: Mitt. Der dt. Patentanwälte 1938, p. 305 ff
  • Starck, The right of further use in the case of reinstatement in the previous state, in: GRUR 1938, p. 478 ff

Individual evidence

  1. ↑ So already the Reichsgericht , in: Collection of decisions of the Reichsgericht in Zivilsachen (RGZ), vol. 170, pp. 51, 53
  2. ↑ Georg Benkard , Patent Law, Utility Model Law, 10th edition, Munich 2006, p. 1200 (marginal no. 77 on § 123)
  3. ↑ Federal Court of Justice (BGH), in: Journal " Commercial legal protection and copyright " (GRUR) 1952, pp. 564, 566 - laundry press