5.7.1 Permanent injunction
By far the most important remedy available under German patent law is the permanent injunction, by which the defendant is ordered to completely refrain from engaging in acts that have been found to infringe upon the patent. Moreover, all such acts that fall within the scope of the judgment for the same reasons, relying exclusively on the considerations of that judgment, are prohibited. Thus, minor modifications of the attacked embodiment, if it still fulfills the features of the patent claim as construed in the reasoning of the decision, will not suffice to avoid infringement (“core theory”).
As this is true for direct infringement, in cases of indirect infringement, the court will only grant an unlimited injunction if the means contributing to the infringement can only be reasonably used under infringing circumstances. If this is not the case, the court may not grant an unlimited injunction but may order the defendant to warn its customers that use of the invention is prohibited without the prior consent of the patentee and to put respective warning notices on the products. Alternatively, the court may oblige the infringer to conclude a cease and desist agreement, including a penalty clause, with its customers.
So far – except for extraordinary circumstances of the case – a permanent injunction is automatically granted if infringement is found, without weighing the interests of the parties or affected third parties. An injunction is, therefore, not dependent on the claimant being a practicing entity, so nonpracticing entities are, in principle, also entitled to injunctive relief. Since August 2021 the German legislator introduced wording into Section 139 of the Patent Act so as to exclude the right to an injunction where such a remedy appears to be disproportionate for the defendant or a third party, taking into account the circumstances of the case as well as the principle of good faith. Where a permanent injunction is excluded for these reasons, the infringed party is entitled to reasonable monetary compensation. However, the new law is not expected to change current court practice significantly because the principle of proportionality is already taken into consideration for exceptional cases, in which a use-by period may be granted.161
A central question next to that of whether infringement (direct, indirect or equivalent) is found is whether there is a risk of a first-time infringement or whether the defendant has already infringed upon the patent in the past and is therefore deemed to commit future infringement as well. This must be shown by the claimant. In almost all cases handled by the courts, an alleged infringement has already occurred in the past, whereas future infringement may sometimes play a role in preliminary proceedings to stop an alleged infringer from entering the market with its products. The courts will find in the affirmative even where the defendant has already desisted from selling the infringing products, as long as it did not sign a cease and desist declaration promising to pay damages owed under this declaration in case of an ongoing breach. Important to remark is that finding fault – be it negligence or willful misconduct – on the side of the infringer is not a prerequisite for a permanent injunction. An injunction is only available as long as the patent is in force.