An International Guide to
Patent Case Management for Judges

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5.7.2 Recall, removal and destruction of patent-infringing products

Accompanying a claimant’s right to an injunction, the infringement court will grant an order to have infringing products recalled, removed from the distribution channels and destroyed pursuant to Section 140a of the Patent Act. These claims will only be allowed where direct infringement occurred but not in cases of indirect infringement.162 As a consequence of the territoriality of the German patent or the German part of a European patent, it is a prerequisite that the defendant owns or possesses infringing goods in Germany. The claim for destruction is available even when the patent has meanwhile expired because the infringer must not benefit from infringing acts committed in the past. The court will not order the products or – where a process is protected by the patent – the direct products manufactured by making use of that process, to be destroyed when such destruction seems disproportionate. However, this is rarely found to be the case. Destruction in the sense of the law does not necessarily mean physical destruction of the whole product but rather that the protected feature must not be used any longer. Thus, the duty to destroy may also be fulfilled by design-arounds to avoid use of the patent. If physical destruction is the only alternative, the defendant may do so itself or hand the attacked embodiments over to a bailiff for destruction at the defendant’s cost.

Supporting the right to have infringing products destroyed, the claimant may also be granted a right to remove all infringing goods from distribution channels by a recall (e.g., in a situation where the goods have not yet arrived at their final destination). Consequently, the infringer must approach its customers to return affected goods, which may cause negative publicity and be harmful for customer relations.