Fundamentals of German patent law

According to Section 139(1) of the German Patent Act, anyone who uses an invention protected by a patent may be sued for an injunction. Section 139(2) further provides that a person who infringes a patent intentionally or negligently is liable to compensate the injured party.

Section 139 of the German Patent Act

• Any person who uses a patented invention in contravention of Sections 9 to 13 may be sued by the injured party for an injunction if there is a risk of repetition. The claim also exists if an infringement is threatened for the first time.
• Anyone who commits the act intentionally or negligently is obliged to compensate the injured party for the resulting damage.

Section 139(2) is particularly important because it states that a negligent infringer may also be liable for damages. What exactly is meant by negligence?

According to Section 276(2) of the German Civil Code:

Section 276 of the German Civil Code

Anyone who fails to exercise the care required in business transactions acts negligently.

In the field of intellectual property, the required care includes a duty to obtain information. A business operator can be expected to keep informed about third-party intellectual property rights in the relevant field of activity. It must be checked whether applicable law is being infringed, including patent and trademark law.

If a business operator fails to carry out an investigation of the type and scope that can reasonably be expected, this may constitute fault, especially where there are or could have been concrete indications of an existing intellectual property right.

Patent law therefore does not only concern persons or companies that apply for patents or make inventions themselves.

Section 9 of the German Patent Act

The patent has the effect that only the patent proprietor is entitled to use the patented invention within the scope of applicable law. Without the proprietor’s consent, any third party is prohibited from:

• manufacturing, offering, placing on the market or using a product that is the subject matter of the patent, or importing or possessing it for those purposes;
• using a process that is the subject matter of the patent or, where the third party knows or it is obvious from the circumstances that use of the process is prohibited without the proprietor’s consent, offering that process for use within the scope of the Act;
• offering, placing on the market or using a product obtained directly by a patented process, or importing or possessing it for those purposes.

This means that anyone who commercially manufactures or markets a product protected by patent law without the patent proprietor’s consent may infringe Section 9 of the German Patent Act.

The conclusion is that patent law affects far more than companies that file patent applications themselves. Company directors and managers should therefore ensure that relevant intellectual property rights are clarified in good time. A supplier’s patent infringement can also affect downstream production and may lead to production stoppages, substantial costs and difficult legal consequences.