More than 10 years after the last amendments to German patent law, the new (second) German Patent Law Modernization Act will enter into force on 1st May 2022.
Among a number of minor amendments, applicants may be pleased to notice that the term for entering the German national phase from an international PCT patent application has been increased to 31 months from the earliest priority date. The previous deadline was 30 months (IntPatÜbkG Art. III, §4(2-4)).
This means that, for PCT applications with a priority date of 1 November 2019 onwards, applicants have more time to decide whether they may want to enter the German national phase. As before, the German translation of the application documents must still be filed by the deadline for entering the German national phase, but applicants will surely appreciate the one month extension of this deadline.
The Patent Law Modernization Act further aims to streamline nullity proceedings before the German Patent Court in order to reduce the “injunction gap” in German infringement/nullity proceedings. Since German infringement proceedings are held before the civil courts while nullity proceedings are held before the Patent Court, infringement proceedings are typically stayed while the nullity proceedings are pending. Section 83 of the Patent Law has now been amended to require that the Patent Court forwards its reference decision to the infringement court within 6 months of receiving the nullity request. The Patent Court is also given the power to disregard arguments of the parties received after the expiry of the time limit for the reference decision.
Another notable amendment included in the German Patent Law Modernization Act is that the principle of proportionality (Verhältnismäßigkeit) is to be observed in patent and utility model infringement proceedings. Therein, the term “proportionality”/”Verhältnismäßigkeit” relates to avoiding unjustified hardship being imposed on the infringer or on third parties. According to the grounds provided with the Act, this is not intended to devalue patent law, as the amended section 139, paragraph 1 of the Patent Law and the corresponding section 24 of the Utility Model Law specifies that the proportionality is only to be considered when this is deemed to be necessary based on the specific details of an individual case, taking into account the requirement of good faith. Damages, as defined in section 139, paragraph 2 of the Patent Law, are to be awarded irrespective of proportionality considerations, and the patentee is to be receive an appropriate monetary compensation.
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