German Patent and Trade Mark Office (DPMA)
- Section 1 General
- Section 2 Private and/or non-commercial use
- Section 3 Experimental use and/or scientific research
- Section 4 Preparation of medicines
- Section 5 Prior use
- Section 6 Use of articles on foreign vessels, aircrafts and land vehicles
- Section 7 Acts for obtaining regulatory approval from authorities
- Section 8 Exhaustion of patent rights
- Section 9 Compulsory licensing and/or government use
- Section 10 Exceptions and limitations related to farmers' and/or breeders' use of patented inventions
- Section 11 Other exceptions and limitations
Section 1: General
1. As background for the exceptions and limitations to patents investigated in this questionnaire, what is the legal standard used to determine whether an invention is patentable? If the standard for patentability includes provisions that vary according to the technology involved, please include examples of how the standard has been interpreted, if available. Please indicate the source of law (statutory and-or case law) by providing the relevant provisions and/or a brief summary of the relevant decisions.
Patents are granted for inventions in all fields of technology provided that they are new, involve an inventive step and are susceptible of industrial application (Sec. 1(1) Patent Act).
Correspondingly, please list exclusions from patentability that exist in your law. Furthermore, please provide the source of those exclusions from patentability if different from the source of the standard of patentability, and provide any available case law or interpretive decisions specific to the exclusions.
- Discoveries, scientific theories and mathematical methods (Sec. 1(3) no. 1 Patent Act).
- Aesthetic creations (Sec. 1(3) no. 2 Patent Act).
- Schemes, rules and methods for performing mental acts, playing games or doing business (Sec. 1(3) no. 3 Patent Act).
- Programs for computers as such (Sec. 1(3) no. 3 and (4) Patent Act).
- Presentations of information (Sec. 1(3) no. 4 Patent Act).
- The human body, at the various stages of its formation and development, including germ cells, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene (Sec. 1a(1) Patent Act).
- Inventions the industrial exploitation of which would be contrary to “ordre public” or morality (Sec. 2(1) Patent Act
- Processes for cloning human beings and for modifying the germ line genetic identity of human beings (Sec. 2(2) no. 2 Patent Act).
- Uses of human embryos for industrial or commercial purposes (Sec. 2(2) no. 3 Patent Act).
- Processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes (Sec. 2(2) no. 4 Patent Act).
- Plant and animal varieties as well as essentially biological processes for the production of plants and animals (Sec. 2a(1) no. 1 Patent Act
- Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body (Sec. 2a(1) no. 2 Patent Act
2. As background for the exceptions and limitations to patents investigated in this questionnaire, what exclusive rights are granted with a patent? Please provide the relevant provision in the statutory or case law. In addition, if publication of a patent application accords exclusive rights to the patent applicant, what are those rights?
The patent owner has the exclusive right to use the patented invention (Sec. 9, first sentence, Patent Act). Any other person is prohibited from directly or indirectly using the patented products or processes (Sec. 9, second sentence, Patent Act, Sec. 10 Patent Act).
Under Sec. 33(1) Patent Act, the applicant is entitled to claim compensation as from the publication of his application.
3. Which exceptions and limitations does the applicable law provide in respect to patent rights (please indicate the applicable exceptions/limitations):
Private and/or non-commercial use;
Experimental use and/or scientific research;
Preparation of medicines;
Prior use;
Use of articles on foreign vessels, aircrafts and land vehicles;
Acts for obtaining regulatory approval from authorities;
Exhaustion of patent rights;
Compulsory licensing and/or government use;
Exceptions and limitations related to farmers’ and/or breeders’ use of patented inventions.
Section 2: Private and/or non-commercial use
4. If the exception is contained in statutory law, please provide the relevant provision(s):
Sec. 11 no. 1 Patent Act: The effects of a patent shall not extend to acts done privately and for non-commercial purposes.
5. If the exception is provided through case law, please cite the relevant decision(s) and provide its (their) brief summary:
[Note from the Secretariat: response was not provided.]
6.(a) What are the public policy objectives for providing the exception?
Acts undertaken in the private sphere for non-commercial purposes are excluded from the effects of a patent, because patents are not intended for intervention in the private sphere.
(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:
[Note from the Secretariat: response was not provided.]
7.-10.
[Note from the Secretariat: response was not provided.]
Section 3: Experimental use and/or scientific research
11. If the exception is contained in statutory law, please provide the relevant provision(s):
Sec. 11 no. 2 Patent Act: The effects of a patent shall not extend to acts done for experimental purposes relating to the subject matter of the patented invention.
12. If the exception is provided through case law, please cite the relevant decision(s) and provide its (their) brief summary:
[Note from the Secretariat: response was not provided.]
13.(a) What are the public policy objectives for providing the exception?
Patents are meant to encourage technological progress. For this reason the effects of the patent do not extend to acts done for experimental purposes. The provision is intended to prevent patent protection from hindering research and technological development.
(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:
[Note from the Secretariat: response was not provided.]
14. Does the applicable law make a distinction concerning the nature of the organization conducting the experimentation or research (for example, whether the organization is commercial or a not-for-profit entity)? Please explain:
The limitation of the effects of the patent for acts done for experimental purposes applies to all experiments relating to the subject matter of the patented invention, irrespective of the aim of the experiment, and of the person or organisation conducting the experiment.
15.-16.
[Note from the Secretariat: response was not provided.]
17. If any of the following criteria is relevant to the determination of the scope of the exception, please indicate:
Research and/or experimentation must be conducted on or relating to the patented invention (“research on”)
Please explain by citing legal provision(s) and/or decision(s):
Sec. 11 no. 2 Patent Act: acts done for experimental purposes relating to the subject matter of the patented invention.
18. If the commercial intention of the experimentation and/or research is relevant to the determination of the scope of the exception, please indicate whether the exception covers activities relating to:
The commercial intention of the experimentation and/or research is not relevant.
19.-22.
[Note from the Secretariat: response was not provided.]
Section 4: Preparation of medicines
23. If the exception is contained in statutory law, please provide the relevant provision(s):
Sec. 11 no. 3 Patent Act: The effects of a patent shall not extend to the extemporaneous preparation in pharmacies of medicines for individual cases in accordance with a medical prescription as well as acts concerning the medicines thus prepared.
24. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:
[Note from the Secretariat: response was not provided.]
25.(a) What are the public policy objectives for providing the exception? Please explain:
This provision is intended to facilitate the exercise of medical activities, since patents should not restrict the freedom of the doctor (physician) to prescribe medicines in the interest of health promotion. This is to allow doctors to prescribe medicines to their patients in the individual case, which are prepared in pharmacies, irrespective of possible patent rights. In addition, the provision is to supplement the prohibition of patent protection of methods for treatment of the human or animal body by surgery or therapy.
(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:
The above-mentioned objectives are mentioned in the explanatory statement to the draft law on the Community patent and on amending provisions in patent law (document of the Bundestag BT-Drucksache 8/2087; p. 25) and the memorandum on the Convention for the European Patent for the Common Market (official gazette BlPMZ 1979, p. 325, 333).
26. Who is entitled to use the exception (for example, pharmacists, doctors, physicians, others)? Please describe:
The provision is intended to facilitate the prescription of medicines by doctors by way of exempting persons from the effect of the patent, who are directly involved in preparing and processing medicines in the individual case. It therefore concerns the activities of pharmacists and doctors.
27. Does the applicable law provide for any limitations on the amount of medicines that can be prepared under the exception?
Yes.
If yes, please explain your answer by citing the relevant provision(s) and/or decision(s):
Sec. 11 no. 3 Patent Act does not contain explicit requirements concerning the admissible amount of medicines. However, the exemption from the effect of the patent only covers the "extemporaneous preparation for individual cases" (Sec. 11 no. 3 Patent Act). This is the amount which is required in one concrete individual case. The preparation of larger quantities of medicines for several patients is not covered by this provision.
28.-30.
[Note from the Secretariat: response was not provided.]
Section 5: Prior use
31. If the exception is contained in statutory law, please provide the relevant provision(s):
Sec. 12 Patent Act:
(1) A patent shall have no effect against a person who, at the time of the filing of the application, had already begun to use the invention in Germany, or had made the necessary arrangements for so doing. Such person shall be entitled to use the invention for the needs of his own business in his own plant or workshops or the plant or workshops of others. This right can only be inherited or transferred together with the business. If the applicant or his predecessor in title has, before applying for a patent, disclosed the invention to other persons and reserved his rights in the event of a patent being granted, a person learning of the invention as a result of such disclosure cannot, under the provisions under the first sentence, invoke measures which he has taken within six months after the disclosure.
(2) If the patent owner is entitled to a right of priority, the date of the prior application shall be substituted for the date of the application referred to in subsection 1. However, this provision shall not apply to nationals of a foreign country which does not guarantee reciprocity in this respect, where they claim the priority of a foreign application.
32. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:
[Note from the Secretariat: response was not provided.]
33.(a) What are the public policy objectives for providing the exception? Please explain:
The purpose of the provision is to protect the economic status of possession of the prior user. It is intended to prevent the destruction of legitimately created values. Investments in existing facilities are not to be devalued by another person's later patent application.
(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:
[Note from the Secretariat: response was not provided.]
34. How does the applicable law define the scope of “use”? Does the applicable law provide for any quantitative or qualitative limitations on the application of the “use” by prior user? Please explain your answer by citing legal provision(s) and/or decision(s):
The prior user can exploit the invention for his own enterprise. The Patent Act does not provide for explicit limitations of a quantitative or qualitative nature in respect of the admissible exercise of the right to continued use.
35. Does the applicable law provide for a remuneration to be paid to the patentee for the exercise of the exception? Please explain:
[Note from the Secretariat: response was not provided.]
36. According to the applicable law, can a prior user license or assign his prior user’s right to a third party?
Yes (The prior user's right can be assigned, but not licensed)
37. In case of affirmative answer to question 36, does the applicable law establish conditions on such licensing or assignment for the continued application of the prior use exception?
Yes.
If yes, please explain what those conditions are:
The entitlement of the prior user to exploit the invention for the needs of his own business can only be inherited or transferred together with the business.
38. Does this exception apply in situations where a third party has been using the patented invention or has made serious preparations for such use after the invalidation or refusal of the patent, but before the restoration or grant of the patent?
No.
39.-41.
[Note from the Secretariat: response was not provided.]
Section 6: Use of articles on foreign vessels, aircrafts and land vehicles
42. If the exception is contained in statutory law, please provide the relevant provision(s):
The effect of the patent shall not extend to:
- the use on board vessels of another State party to the Paris Convention for the Protection of Industrial Property of the patented invention, in the body of the vessel, in the machinery, tackle, gear and other accessories, where such vessels temporarily or accidentally enter the waters to which the territory of this Act extends on condition that such use serves exclusively the needs of the vessel (Sec. 11 no. 4 Patent Act);
- the use of the patented invention in the construction or operation of aircraft or land vehicles of another State party to the Paris Convention for the Protection of Industrial Property or of accessories for such aircraft or land vehicles, where these temporarily or accidentally enter the territory to which this Act applies (Sec. 11 no. 5 Patent Act).
43. If the exception is provided through case law, please cite the relevant decision(s) and provide its (their) brief summary:
[Note from the Secretariat: response was not provided.]
44.(a) What are the public policy objectives for providing the exception? Please explain:
Sec. 11 no. 4 and no. 5 Patent Act correspond to the provision under Art. 5ter of the Paris Convention for the Protection of Industrial Property. They are intended to protect international traffic from impairments which might result from claiming patent rights.
(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:
[Note from the Secretariat: response was not provided.]
45. The exception applies in relation to:
Vessels;
Aircrafts;
Land Vehicles.
46. In determining the scope of the exception, does the applicable law apply such terms as ”temporarily” and/or “accidentally” or any other equivalent term in relation to the entry of foreign transportation means into the national territory? Please provide the definitions of those terms by citing legal provision(s) and/or decision(s):
The effect of a patent does not extend to the use of the subject matter of the patented invention on condition that the vessels, aircrafts or land vehicles temporarily or accidentally enter the territory to which this Act applies (Sec. 11 no. 4 and no. 5 Patent Act).
47. Does the applicable law provide for any restrictions on the use of the patented product on the body of the foreign vessels, aircrafts, land vehicles and spacecraft for the exception to apply (for example, the devices to be used exclusively for the needs of the vessel, aircraft, land vehicle and/or spacecraft)? Please explain your answer by citing legal provision(s) and/or decision(s):
Sec. 11 no. 4 Patent Act explicitly stipulates that the subject matter of the patented invention is used exclusively for the needs of the vessel.
48.-50.
[Note from the Secretariat: response was not provided.]
Section 7: Acts for obtaining regulatory approval from authorities
51. If the exception is contained in statutory law, please provide the relevant provision(s):
Sec. 11 no. 2b Patent Act stipulates that the effect of the patent does not extend to studies, experiments and any related practical requirements that are necessary to obtain either a marketing authorisation for medicinal products within the European Union or an authorisation for medicinal products within the member states of the European Union or third countries.
52. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:
[Note from the Secretariat: response was not provided.]
53.(a) What are the public policy objectives for providing the exception? Please explain:
The purpose of the provision under Sec. 11 no. 2b Patent Act is to privilege the manufacturers of generic medicines. These manufacturers are allowed to carry out the use of the patent even before the term of protection ends under the condition that the use is necessary to obtain an authorisation for medicinal products.
(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:
Sec. 11 no. 2b Patent Act implements Article 10(6) of the amended Directive 2001/83/EC and Article of the amended Directive 2001/82/EC into national law.
54. Who is entitled to use the exception? Please explain:
Manufacturers of medicaments, especially generic medicines.
55. The exception covers the regulatory approval of:
Medicaments.
56. Please indicate which acts are allowed in relation to the patented invention under the exception?
Studies, experiments and any resulting practical requirements, i.e. any use under the patent’s scope of protection that is intended to meet the prerequisites of a privileged study or a privileged experiment (for example: production or importation of the still protected active substance intended to be used in the experiment).
57. If the applicable law provides for other criteria to be applied in determining the scope of the exception, please describe those criteria. Please illustrate your answer by citing legal provision(s) and/or decision(s):
The scope of admissible use comprises studies, experiments and any action to execute them, under the condition, that they are necessary to obtain an authorisation for medicinal products or approval. Therefore, a direct relation is required between the study, the experiment or its execution, on the one hand, and the authorisation or approval sought, on the other hand.
58.-59.
[Note from the Secretariat: response was not provided.]
Section 8: Exhaustion of patent rights
60. Please indicate what type of exhaustion doctrine is applicable in your country in relation to patents:
National and EU/EEA-wide (i.e. the goods protected by patent rights must have been marketed in the territory of a Member State of the European Union or a Contracting State to the Agreement on the European Economic Area)
If the exception is contained in statutory law, please provide the relevant provision(s):
Sec. 9b Patent Act contains a specific exhaustion provision applying to the propagation of biological material:
Where the patent owner or a third party with the owner's consent markets biological material having specific properties, due to the invention, in the territory of a Member State of the European Union or a Contracting State to the Agreement on the European Economic Area, and where further biological material is obtained from this biological material by way of generative or vegetative propagation, the effects of Sec. 9 shall not apply if propagation of the biological material constituted the marketing purpose. This does not apply where the material so obtained is subsequently used for further generative or vegetative propagation.
There are no legal provisions on exhaustion governing other cases.
If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:
e.g. Federal Court of Justice [BGH], judgment of 14 December 1999, X ZR 61/98 – Karate, published in GRUR 2000, 299:
(1) Exhaustion of the rights conferred by a patent granted with effect in the Federal Republic of Germany occurs at any rate on principle, if the protected product has been put on the market by the patent owner or with his consent in Germany, in a Member State of the European Community or a State party to the Agreement on the European Economic Area.
(2) Exhaustion constitutes an exception to the exclusive rights of the patent owner. The party invoking exhaustion has, on principle, the burden of production and proof as to the preconditions.
61.(a) What are the public policy objectives for adopting the exhaustion regime specified above? Please explain:
In the interest of the free movement of goods and trade, the patent should not give the owner the right to influence the trade with specific patent-protected objects forever, if these objects have been put on the market by the patent owner or a third party with the owner’s consent within a certain territory (Germany, EU, EEA). Once the patent owner has exercised his patent right by putting the protected object on the market himself or through a third party with his consent, there is no reason to give him further possibilities to influence the future fate of the protected object. Rather, the exclusive right to dispose of the protected object lies with the lawful acquirer (in relation to the patent owner) (BGH, judgment of 14 December 1999, X ZR 61/98 – Karate, published in GRUR 2000, 299). In the event that the protected object is put on the market in another Member State of the European Union by the patent owner or a third party with the owner’s consent, the exhaustion of the patent right arises from Art. 34 of the Treaty on the Functioning of European Union according to which all quantitative restrictions on imports and all measures having equivalent effect are, on principle, prohibited between Member States.
The particular exhaustion rule of Sec. 9b Patent Act is to ensure that a person purchasing propagation material in the European Union or a Contracting State to the Agreement on the European Economic Area, may in fact grow it since the material was bought for this purpose. Patent protection does not preclude the growing and exploitation. It should be noted, however, that this provision does not cover the later use of harvested material as seed.
(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:
[Note from the Secretariat: response was not provided.]
62. Does the applicable law permit the patentee to introduce restrictions on importation or other distribution of the patented product by means of express notice on the product that can override the exhaustion doctrine adopted in the country?
No
Please explain your answer by citing legal provision(s) and/or decision(s):
[Note from the Secretariat: response was not provided.]
63.-64.
[Note from the Secretariat: response was not provided.]
Section 9: Compulsory licensing and/or government use
Compulsory licenses
65. If the exception is contained in statutory law, please provide the relevant provision(s):
Sec. 24 Patent Act:
(1) A non-exclusive authorisation to commercially exploit an invention shall be granted by the Patent Court in individual cases in accordance with the following provisions (compulsory license) if:
1. the applicant for a license has unsuccessfully endeavoured during a reasonable period of time to obtain from the patent owner consent to exploit the invention under reasonable conditions usual in trade; and
2. public interest commands the grant of a compulsory license.
(2) If the applicant for a license is unable to exploit an invention for which he holds protection under a patent of later date without infringing a patent of earlier date, he shall be entitled to request the grant of a compulsory license with respect to the owner of the patent of earlier date if:
1. the requirements of subsection (1) no. 1 are met and
2. his own invention comprises, in comparison with that under the patent of earlier date, an important technical advance of considerable commercial significance.
The patent owner may require the applicant for a license to grant him a counter license under reasonable conditions for the exploitation of the patented invention of later date.
(3) Subsection (2) shall apply mutatis mutandis if a plant breeder has not obtained a plant variety right or cannot exploit it without infringing an earlier patent.
(4) A compulsory license under subsection (1) may be granted for a patented invention in the field of semi-conductor technology only if such grant is necessary to remove an anti-competitive practice on the part of the patent owner that has been established in judicial or administrative proceedings.
(5) If the patent owner does not use the patented invention or does not use it predominantly in Germany, compulsory licenses under subsection (1) may be granted to ensure an adequate supply of the patented product to the domestic market. Importing shall be deemed to constitute use of the patent in Germany in such case.
(6) The grant of a compulsory license in a patent shall be permissible only after the grant of the patent. It may be granted subject to restrictions and made dependent upon conditions. The scope and duration of use shall be restricted to the purpose for which they have been permitted. The patent owner shall be entitled to remuneration from the holder of a compulsory license that shall be commensurate with the circumstances and shall take into consideration the commercial value of the compulsory license. In the event of a significant change, with respect to the repeated remuneration that will become due in future, in the circumstances on which the determination of the amount of the remuneration was based, each party shall be entitled to require a corresponding adjustment. If the circumstances on which the grant of a compulsory license was based no longer apply and if it is unlikely that they will reoccur, the patent owner may require the withdrawal of the compulsory license.
66. If the exception is provided through case law, please cite the relevant decision(s) and provide its(their) brief summary:
Compulsory licences may also arise from cartel law. In his decision of May 6, 2009, Case No. KZR 39/06 – Orange Book Standard, published in IIC 2010, 269, the Federal Supreme Court ruled on a possible defence on the basis of cartel law:
“a) A defendant against whom an action has been filed on the basis of a patent may, in reply to the plaintiff patent holder’s application for an injunction, raise the defence that the latter is abusing a market-dominant position by refusing to conclude a patent licence contract with the defendant on non-discriminatory and non-obstructive conditions. b) A patent holder, however, only act abusively if the defendant has made him an unconditional offer to conclude a licence contract to which he remains bound and that the patent holder cannot refuse without infringing the prohibition on discrimination or obstruction, and if the defendant, if and as long as he is already using the subject matter of the patent, complies with those obligations that the licence contract to be concluded imposes on the use of the licenced object. c) If the defendant regards the patent holder’s licence requirements as abusively excessive or if the patent holder refuses to quantify the licence fee, the requirement of an unconditional offer is satisfied by an offer to conclude a licence contract under which the licensor shall specify the amount of the licence fee at this fair discretion.”
67. What grounds for the grant of a compulsory license does the applicable law provide in respect to patents (please indicate the applicable grounds):
Refusal to grant licenses on reasonable terms. Note: in this case the public interest must, in addition, command the grant of a compulsory licence (Sec. 24(1) no. 2 Patent Act)
Anti-competitive practices and/or unfair competition. Sec. 24(4) Patent Act contains a specific provision for compulsory licences in the area of semiconductor technology: in addition to the general requirements under subsection (1) (unsuccessful endeavour of the applicant for a licence and public interest) the compulsory licence must be required to remove an anti-competitive practice on the part of the patent owner that has been established in judicial or administrative proceedings.
Furthermore, there is, as stated above sub 66., an obligation to grant licences accruing from cartel law provisions (abuse of a dominant position - compare decisions of the Federal Supreme court of July 13, 2004, Case No. KZR 40/02 – Standard-Spundfass, published in GRUR 2004, 966 and of May 6, 2009, Case No. KZR 39/06 – Orange Book Standard, published in IIC 2010, 269).
Dependent patents (Sec. 24(2) and (3) Patent Act; see comments on question 75)
Other, please specify: Under Sec. 24(5) Patent Act, compulsory licences can be granted within the scope of subsection (1) to ensure an adequate supply of the patented product on the domestic market if the patent owner does not use the patented invention or does not use it predominantly in Germany.
68. (a) What are the public policy objectives for providing compulsory licenses in your country? Please explain:
The provision of Sec. 24 Patent Act is intended to protect the public from any abuse of the exclusive right to which the patent owner is entitled.
(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:
[Note from the Secretariat: response was not provided.]
69.-72.
[Note from the Secretariat: response was not provided.]
73. If the applicable law provides for the grant of compulsory licenses on the ground of refusal by the patentee to grant licenses on “reasonable terms and conditions” and within a “reasonable period of time”, please provide the definitions given to those terms by citing legal provision(s) and/or decision(s):
Under Sec. 24(1) no. 1 Patent Act, a compulsory licence will only be granted if the patent owner refuses to allow another person to use the invention despite an offer for reasonable compensation.
74. If the applicable law provides for the grant of compulsory licenses on the ground of anti-competitive practices, please indicate which anti-competitive practices relating to patents may lead to the grant of compulsory licenses by citing legal provision(s) and/or decision(s):
See above comments on questions 66 and 67.
75. If the applicable law provides for the grant of compulsory licenses on the ground of dependent patents, please indicate the conditions that dependent patents must meet for a compulsory license to be granted:
Under Sec. 24(2) Patent Act the applicant for a licence is entitled to request the grant of a compulsory licence with respect to the owner of the patent if the following requirements are met:
- dependent invention, i.e. the applicant for a licence is unable to exploit his later patented invention without infringing the earlier patent,
- the applicant for a licence has unsuccessfully endeavoured during a reasonable period of time to obtain from the patent owner consent to exploit the invention under reasonable conditions usual in trade, and
- the invention of the applicant for a licence involves, in comparison with that under the patent of earlier date, an important technical advance of considerable commercial significance.
Sec. 24(2) Patent Act applies mutatis mutandis if a plant breeder has not obtained a plant variety right or cannot exploit it without infringing an earlier patent (Sec. 24(3) Patent Act).
76. Does the applicable law provide a general policy to be followed in relation to the remuneration to be paid by the beneficiary of the compulsory license to the patentee? Please explain:
Under Sec. 24(6), 4th sentence, Patent Act the patent owner is entitled to remuneration from the holder of a compulsory license that is commensurate with the circumstances and takes the commercial value of the compulsory license into consideration.
In the event of a significant change, with respect to the repeated remuneration that will become due in future, in the circumstances on which the determination of the amount of the remuneration was based, each party is entitled to require a corresponding adjustment (Sec. 24(6), 5th sentence, Patent Act).
77. If the applicable law provides for the grant of compulsory licenses on the ground of “national emergency” or “circumstances of extreme urgency”, please explain how the applicable law defines those two concepts and their scope of application, and provide examples:
[Note from the Secretariat: response was not provided.]
78. Please indicate how many times and in which technological areas compulsory licenses have been issued in your country:
As far as the DPMA knows, the Federal Patent Court (BPatG) has issued a compulsory licence in just one case in the period from 1961 to 2004 (compare BPatG, judgment of 7 June 1991, no. 3 Li 1/90, published in BPatGE 32, 184). This compulsory licence was revoked by the judgment of the Federal Court of Justice (BGH) of 5 December 1995 (case no. X ZR 26/92, published in BGHZ 131, 247 – Polyferon).
79.-80.
[Note from the Secretariat: response was not provided.]
Government use
81.-88.
[Note from the Secretariat: the applicable law of Germany does not provide exceptions related to government use.]
Section 10: Exceptions and limitations related to farmers' and/or breeders' use of patented inventions
Farmers’ use of patented inventions
89. If the exception is contained in statutory law, please provide the relevant provision(s):
Sec. 9c Patent Act:
(1) Where plant propagation material is marketed to a farmer by the patent owner or by a third party with the owner's consent, for agricultural use, the farmer may use the product of his harvest for propagation or multiplication by him on his own farm, contrary to Sections 9, 9a and 9b, second sentence. Article 14 of the Council Regulation (EC) no. 2100/94 in the applicable version and the implementing rules established on the basis of this Article shall apply mutatis mutandis to the conditions and the extent of this authorisation. Any rights arising therefrom for the patent owner shall be claimed in accordance with the implementing rules established on the basis of Article 14(3) of the Council Regulation (EC) no. 2100/94.
(2) Where farm livestock or animal reproductive material is marketed to a farmer by the patent owner or by a third party with the owner's consent, the farmer may use the farm livestock or the animal reproductive material for agricultural purposes, contrary to Sections 9, 9a and 9b, second sentence. This authorisation includes making the animals or other animal reproductive material available for the purposes of pursuing his agricultural activity but not sale for the purpose or within the framework of a commercial reproduction activity.
(3) Sec. 9a(1) to (3) shall not apply to biological material whose production in agriculture was adventitious or technically unavoidable. Therefore, as a rule, no claims can be made against a farmer who has cultivated seeds or planting stock not protected by this patent.
90. If the exception is provided through case law, please cite the relevant decision(s) and provide a brief summary of such decision(s):
[Note from the Secretariat: response was not provided.]
91.(a) What are the public policy objectives for providing the exception related to farmers’ use of patented inventions? Please explain:
The objective is to allow the farmer to use a part of his harvest product again for planting even if the propagating material is patented, since the seeds are intended for agricultural use and were sold for this purpose. This applies mutatis mutandis to the reproduction of farm animals.
(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:
- Sec. 9c(1) Patent Act: This provision implements Article 11(1) of the Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions (OJ EC L 213 p. 13).
- Sec. 9c(2) Patent Act: This provision implements Article 11(2) of the Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions (OJ EC L 213 p. 13).
92.-94.
[Note from the Secretariat: response was not provided.]
Breeders' use of patented inventions
95. If the exception is contained in statutory law, please provide the relevant provision(s):
Sec. 11 no. 2a Patent Act: The effects of the patent do not extend to the use of biological material for the purpose of breeding, discovering and developing a new plant variety.
96. If the exception is provided through case law, please cite the relevant decision(s) and provide a brief summary of such decision(s):
[Note from the Secretariat: response was not provided.]
97. (a) What are the public policy objectives for providing the exception related to breeders’ use of patented inventions? Please explain:
Sec. 11 no. 2a Patent Act specifies the scope of the research exemption for breeding, discovering and developing new plant varieties on the basis of the declaration of the German delegation for the minutes in the Internal Market Council of 27 November 1997 (statement of reasons regarding the draft of an Act to implement the Directive on the legal protection of biotechnological inventions, document of the Bundestag BT-Drucksache 15/1709, p. 15).
(b) Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:
[Note from the Secretariat: response was not provided.]
98. Please explain the scope of the exception by citing legal provision(s) and/or decision(s) (for example, interpretation(s) of statutory provision(s) on activities allowed by users of the exception, limitations on their use, as well as other criteria, if any, applied in the determination of the scope of the exception):
The provision establishes a research exemption for breeding, discovering and developing new plant varieties and includes any use of biological material for the indicated purposes. The terms "biological material" and "plant variety" are defined in Sec. 2a(3) nos. 1 and 4 Patent Act: Under Sec. 2a(3) no. 1 Patent Act, "biological material" means, for the purposes of this Act, any material containing genetic information and capable of reproducing itself or being reproduced in a biological system. For the definition of the concept of "plant variety", Sec. 2a(3) no. 4 Patent Act refers to the Council Regulation (EC) no. 2100/94 of 27 July 1994 on Community plant variety rights in the applicable version (OJ EC L 227 p. 1).
99.-100.
[Note from the Secretariat: response was not provided.]
Section 11: Other exceptions and limitations
101. Please list any other exceptions and limitations that your applicable patent law provides:
Sec. 11 no. 6 Patent Act: The effects of a patent shall not extend to the acts specified in Article 27 of the Convention on International Civil Aviation of 7 December 1944, where such acts concern the aircraft of another State to which the provisions of that Article are applicable.
102. In relation to each exception and limitation, please indicate:
(i) the source of law (statutory law and/or the case law) by providing the relevant provision(s) and/or a brief summary of the relevant decision(s):
[Note from the Secretariat: response was not provided.]
(ii) the public policy objectives of each exception and limitation. Where possible, please explain with references to the legislative history, parliamentary debates and judicial decisions:
Sec. 11 no. 6 Patent Act takes account of the Convention on International Civil Aviation of 7 December 1944.
(iii) the entitlement and the scope of the exception and limitation by citing legal provision(s) and/or decision(s):
Art. 27 of the Convention on International Civil Aviation of 7 December 1944 provides for an exemption of seizure on the grounds of patent infringement if the construction, mechanism, parts, accessories or operation of the aircraft infringe a patent on occasion of an authorised entry or transit flight. This exemption also covers the storage of spare parts and spare equipment for the aircraft.
In addition, in relation to each exception and limitation, please explain:
(i) whether its applicable legal framework is considered adequate to meet the objectives sought (for example, are there any amendments to the law foreseen?):
[Note from the Secretariat: response was not provided.]
(ii) if there have been any challenges encountered in the practical implementation of the exception in your country:
[Note from the Secretariat: response was not provided.]
103. If other mechanisms for the limitation of patent rights external to the patent system exist in your country (for example, competition law), please list and explain such mechanisms:
Please see the comments on questions 66 and 67 regarding the obligation to grant licences accruing from cartel law.
[End of questionnaire]
September 2011