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Legislative Implementation of Flexibilities - Germany

Title:Sections 13, 24 and 81-85a of the Patent Law of 16/12/1980 (as last amended by the Act on Improvement of Enforcement of Intellectual Property Rights of 31/07/2009)
Field of IP:Patents
Type of flexibility:Compulsory licenses and government use
Summary table:PDF

Provisions of Law

Section 13

(1) A patent shall have no effect should the Federal Government order that the invention is to be used in the interest of public welfare. Nor shall the effect of a patent extend to any use of the invention ordered in the interests of the security of the Federal Republic by the competent highest federal authority or, on the latter's instructions, by a subordinate agency.

(2) Should an order under subsection (1) be challenged, the Federal Administrative Court [Bundesverwaltungsgericht] shall have jurisdiction if said order was issued by the Federal Government or the competent highest federal authority.

(3) In those cases referred to in subsection (1), the patentee shall have a claim against the Federal Republic for reasonable compensation. In the event of dispute as to the amount, legal action may be brought before the ordinary civil courts. Any order by the Federal Government under the first sentence of subsection (1) shall be communicated to the person recorded as patentee in the Register (Section 30(1)) before the invention is used. If the highest federal authority that has issued an order or an instruction under the second sentence of subsection (1) becomes aware that a claim for compensation has arisen under the first sentence, said highest federal authority shall communicate this to the person recorded in the Register as patentee.

Section 24

(1) A non-exclusive authorization to commercially use an invention shall be granted by the Patent Court in individual cases in accordance with the following provisions (compulsory license) if

1. the person seeking a license has unsuccessfully endeavored during a reasonable period of time to obtain from the patentee consent to use the invention under reasonable conditions usual in trade; and

2. public interest commands the grant of a compulsory license.

(2) When the person seeking a license is unable to exploit an invention for which he holds protection under a patent of later date without infringing the patent of earlier date, said person shall beentitled to the grant of a compulsory license from the owner of the patent of earlier date if

1. the condition stipulated in subsection (1), no. 1, is fulfilled and

2. the invention of said person includes, in comparison with the invention under the patent of earlier date, an important technical progress of considerable commercial significance.

The patentee may request the grant of a counter-license under reasonable conditions by the person seeking a license for the use of the patented invention of later date.

(3) Subsection (2) shall apply mutatis mutandis if a plant breeder cannot obtain or exploit a plant variety patent without infringing an earlier patent.

(4) A compulsory license under the provisions of subsection (1) may only be granted for a patented invention in the field of semiconductor technology if said grant is necessary to remove an anti-competitive practice on the part of the patentee that has been established in judicial or administrative proceedings.

(5) When a patentee does not work the patented invention or does not work it predominantly in Germany, compulsory licenses under the provisions of subsection (1) may be granted to ensure an adequate supply of the patented product to the domestic market. Importing shall insofar be deemed to constitute working of the patent in Germany.

(6) The grant of a compulsory license to a patent shall become permissible only after the patent has been granted. The license 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 said license has been granted. The patentee shall be entitled to remuneration from the holder of a compulsory license commensurate with the circumstances and taking into consideration the commercial value of the compulsory license. With regard to the recurring remuneration due in the future, should there be a significant change in the circumstances decisive for the determination of the amount of this remuneration, each party shall be entitled to demand 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 patentee may demand that the compulsory license be revoked.

(7) A compulsory license to a patent may only be transferred together with the business concerned with the exploitation of the invention. A compulsory license to an invention that is the subject matter of a patent of earlier date may only be transferred together with the patent of later date.

2. Nullity and Compulsory License Proceedings

Section 81

(1) Proceedings regarding a declaration of nullity of a patent or a supplementary protection certificate or regarding the grant or withdrawal of a compulsory license or regarding the adaptation of the remuneration determined by a judgment for a compulsory license shall be instituted by bringing legal action. The action shall be directed against the person recorded in the Register as patentee or against the holder of the compulsory license. An action against a supplementary protection certificate may be joined with an action against the underlying patent and may also be based on the fact that there is a nullity ground with respect to the underlying patent (Section 22).

(2) An action for declaration of nullity of a patent may not be brought as long as opposition may still be filed or opposition proceedings are pending. A legal action requesting declaration of nullity of a supplementary protection certificate may not be filed if requests can be made pursuant to Section 49a(4) or if proceedings deciding these requests are pending.

(3) In the case of usurpation, only the injured party shall be entitled to bring an action.

(4) An action shall be filed to the Patent Court in writing. Copies of the action and of all briefs shall be attached for the adversary. The action and all briefs shall be served on the adversary ex officio.

(5) An action shall designate the plaintiff, the defendant and the matter at issue and shall contain a specific request. The facts and evidence used as grounds are to be stated. If the action does not fully comply with these requirements, the presiding judge shall invite the plaintiff to file the necessary supplements within a specified period.

(6) Plaintiffs who do not have their usual place of residence in a Member State of the European Union or in a Contracting State to the Agreement on the European Economic Area shall provide security, at the demand of the defendant, with respect to the costs of the proceedings; Section 110(2), nos. 1 to 3, of the Code of Civil Procedure shall apply mutatis mutandis. The Patent Court shall determine, at its equitable discretion, the amount of the security and shall determine a time limit within which said amount shall have to be furnished. If the time limit is not observed, the action shall be deemed to have been withdrawn.(1) The Patent Court shall serve the legal action on the defendant and invite him to respond thereto within one month.

(2) Should the defendant fail to respond in due time, a decision complying with the legal action may be rendered forthwith without a hearing and every fact asserted by the plaintiff may be assumed to be proved.

(3) Should the defendant file a counterstatement within the time limit, the Patent Court shall inform the plaintiff of said

counterstatement and shall set a date for a hearing. If the parties agree, a hearing does not need to be held. Subsection (2) shall remain unaffected.

Section 83

(1) In proceedings regarding a declaration of nullity of a patent or a supplementary protection certificate, the Patent Court shall

notify the parties as early as possible as to any aspects that might be of particular importance for the decision or that will contribute to concentrating the proceedings on the questions essential for the decision. Such a notification will not be required if the aspects to be discussed appear to be evident from that stated by the parties.Section 139 Code of Civil Procedure shall apply mutatis mutandis.2) The Patent Court can set a time limit for the parties, within which they may file statements regarding the notification stipulated in subsection (1) by submitting expedient requests or by supplementing their submissions, and within which they may also otherwise file conclusive statements. The time limit can be extended if said party should present considerable reasons for this. These reasons shall have to be credibly shown.

(3) The powers as stipulated in subsections (1) and (2) may also be exercised by the presiding judge or by a member of the Court that has been designated by the presiding judge.

(4) The Patent Court can reject means of attack or defense by one party or an amendment to a legal action or a defendant's defense using an amended version of the patent that have been filed only after expiry of a time limit as stipulated herefor in subsection (2),and the Patent Court can render a decision without any further investigation if

1. considering the new submission would require postponement of the date for the hearing already scheduled and

2. said party has not provided sufficient grounds for the delay and

3. said party was instructed as to the consequences of not observing a time limit.

The reasons given for the excuse will have to be credibly shownSection 84

(1) The decision on a legal action shall be rendered in the form of a judgment. A decision on the admissibility of the action may be rendered in the form of an interim judgment.

(2) A decision shall be included in the judgment also on the costs of the proceedings. The provisions of the Code of Civil Procedure [Zivilprozessordnung] concerning procedural costs shall apply mutatis mutandis insofar as equity does not require otherwise; the provisions of the Code of Civil Procedure relating to the procedure for the fixation of costs and execution of decisions regarding the fixation of costs shall apply mutatis mutandis. Section 99(2) shall remain unaffected.

Section 85

(1) In proceedings regarding the grant of a compulsory license, the plaintiff may, at his request, be allowed by provisional disposition to use the invention if he credibly shows that the conditions laid down in Section 24(1) to (6) have been met and that an immediate grant of permission is urgently required in the public interest.

(2) The issuance of a provisional disposition can be made dependent on the posting of security by the petitioner due to the detriment facing respondent.

(3) The Patent Court shall render its decision on the basis of a hearing. The provisions of the second sentence of Section 82(3) and of Section 84 shall apply mutatis mutandis.

(4) The effect of a provisional disposition shall end with the withdrawal or dismissal of the legal action regarding grant of a compulsory license (Sections 81 and 85a); the decision as to costs may be amended if a party applies for amendment within one month after the withdrawal or after the dismissal becomes final.

(5) Should the issuance of a provisional disposition prove to have been unjustified ab initio, petitioner shall be required to compensate the respondent for damages which he has suffered due to the execution of the provisional disposition.

(6) The judgment granting the compulsory license may, on request, be declared provisionally enforceable with or without security, if such is in the public's interest. If the judgment is reversed or altered, the petitioner shall be obliged to compensate the respondent for the damages he has suffered through the enforcement.

Section 85a

(1) The procedures as stipulated in Article 5(c), Article 6, Article 10(8) and Article 16(1) and (4) of the Regulation (EC) No. 816/2006 of the European Parliament and of the Council of 17 May 2006 on compulsory licensing of patents relating to the manufacture of pharmaceutical products for export to countries with public health problems (OJ, L 157, p. 1) shall be instituted by legal action pursuant to Section 81(1), sentence 1.

(2) Where the procedures are not determined by Regulation (EC) No.816/2006, Sections 81 to 85 are to be applied mutatis mutandis.

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