Washington, D.C. Location
Washington, DC 20015
Princeton, NJ Location
Princeton, NJ 08540
(1) Any person who exploits an invention contrary to Sections 9 to 13 may be sued by the injured party to enjoin such use.
(2) Any person who undertakes such action intentionally or negligently shall be liable for compensation to the injured party for the damage suffered therefrom. If the infringer is charged with only slight negligence, the German Patent Court may fix, in lieu of compensation, an indemnity within the limits of the damage to the injured party and the profit which has accrued to the infringer.
(3) If the subject matter of a patent is a process for obtaining a new product, the same product when produced by any other party shall, in the absence of proof to the contrary, be deemed to have been obtained by the patented process. In the adduction of proof to the contrary, the legitimate interests of the defendant in protecting his manufacturing and business secrets shall be taken into account.
If, prior to the grant of a patent, rights based on an application the files of which may be inspected by any person (Section 31(1), the second half of the second sentence and (2)) are claimed in German Patent Court proceedings, and if the decision on the litigation depends on whether an action exists under Section 33(1), the German Patent Court may order that the proceedings be deferred until the decision is made on the grant of the patent. If a request for examination pursuant to Section 44 has not been filed, the German Patent Court may, at the request of the opposing party, give a time limit for filing the request for examination to the party claiming rights on the basis of the application. If the request for examination is not filed within that time limit, the rights deriving from the application involved in the litigation may not be claimed.
(1) In the cases covered by Section 139, the injured party may require destruction of the product that is the subject matter of the patent and that is in the possession of the infringer or is his property unless the infringing nature of the product can be removed in some other way and its destruction would be disproportionate in the individual case for the infringer or the owner. The first sentence shall also apply in the case of a product that has been directly manufactured by means of a process that is the subject matter of the patent.
(2) The provisions of subsection (1) shall apply mutatis mutandis to devices that are the property of the infringer and that are used or intended exclusively or almost exclusively for the unlawful manufacture of a product.
(1) Any person who uses a patented invention in contravention of Sections 9 to 13 may be required by the injured party to give information as to the origin and distribution channels of the product used, without delay, except where disproportionate in the individual case.
(2) The person required to give information under subsection (1) shall give particulars of the name and address of the manufacturer, the supplier and other prior owners of the product, of the trade customer or of the principal, as also in respect of the quantity of products that have been manufactured, dispatched, received or ordered.
(3) In those cases where patent infringement is obvious, the obligation to provide information may be imposed by an injunction in compliance with the Code of Civil Procedure.
(4) Such information may only be used in criminal proceedings or in proceedings under the German Law on Minor Offenses [Gesetz über Ordnungswidrigkeiten] against the person required to give information, or against a dependent person under Section 52(1) of the German Code of Criminal Procedure [Strafprozessordnung], in respect of an act committed before the information was given, with the consent of the person required to give the information.
(5) Further claims to information shall remain unaffected.
Actions for patent infringement of the rights in a patent shall become statute-barred after three years from the time when the claimant obtains knowledge of the patent infringement and of the identity of the infringer and, irrespective of such knowledge, after 30 years from the patent infringement. Section 852(2) of the Germsan Civil Code [Bürgerliches Gesetzbuch] shall apply mutatis mutandis. If the infringer has obtained anything through the patent infringement at the expense of the claimant, the infringer shall be liable, even after expiration of the term of limitation, for restitution in accordance with the provisions on the surrender of unjust enrichment.
(1) Any person who, without the necessary consent of the patentee or the holder of the supplementary certificate of protection (Sections 16a and 49a)
1. makes or offers, puts on the market, uses or imports or stocks for these purposes a product which is the subject matter of a patent or a supplementary certificate of protection (Section 9, second sentence, item 1); or
2. uses or offers for use within the territory to which this Law applies a process which is the subject matter of a patent or a supplementary certificate of protection (Section 9, second sentence, item 2),
shall be liable to imprisonment not exceeding three years or a fine.
The first sentence, item 1, shall also apply if there is a product which has been directly produced by a process which is the subject matter of a patent or a supplementary certificate of protection (Section 9, second sentence, item 3).
(2) Where the offender acts by way of trade, he shall be liable to imprisonment of up to five years or a fine.
(3) The attempt to commit such an offense shall be punishable.
(4) Offenses under subsection (1) shall only be prosecuted on complaint unless the prosecuting authorities deem that ex-officio prosecution is justified in view of the particular public interest.
(5) Objects implicated in an offense may be confiscated. Section 74a of the German Penal Code shall apply. Where the claims referred to in Section 140a are upheld in proceedings under the provisions of the German Code of Criminal Procedure with regard to compensation of the injured party (Sections 403 to 406c), the provisions on confiscation shall not be of application.
(6) If a penalty is pronounced, the German Patent Court shall, at the request of the injured party and if the latter can show a justified interest, order publication of the judgment. The nature of the publication shall be laid down in the judgment.
(1) A product that infringes a patent protected under this Law shall be subject, at the request of the holder of the rights and against his security, to seizure by the customs authorities, on import or export, in those cases where the patent infringement is obvious. This provision shall apply in trade with other Member States of the European Union and with the other Contracting States to the Agreement on the European Economic Area only insofar as controls are carried out by the customs authorities.
(2) Where the customs authorities order a seizure, they shall advise the person entitled to dispose, and also the petitioner thereof without delay. The origin, quantity and place of storage of the product, together with the name and address of the person entitled to dispose, shall be communicated to the petitioner; the secrecy of correspondence and of mail (Section 10 of the Basic Law [Grundgesetz]) shall be restricted to that extent. The petitioner shall be given the opportunity to inspect the product where such inspection does not constitute a breach of commercial or trade secrecy.
(3) Where no opposition to the seizure is made, at the latest within two weeks of service of the notification under the first sentence of subsection (2), the customs authorities shall order confiscation of the seized product.
(4) If the person entitled to dispose opposes seizure, the customs authorities shall inform the petitioner thereof without delay. The petitioner shall be required to declare to the customs authorities, without delay, whether he maintains the request under subsection (1) in respect of the seized copies.
l. If the petitioner withdraws his request, the customs authorities shall lift the seizure without delay.
2. If the petitioner maintains his request and submits an executable court decision ordering the impounding of the seized copies or the limitation of the right to dispose, the customs authorities shall take the necessary measures.
Where neither of the cases referred to in items 1 and 2 is applicable, the customs authorities shall lift the seizure on the expiry of two weeks after service of the notification to the petitioner under the first sentence; where the petitioner can show that a court decision according to item 2 has been requested, but has not yet been received, the seizure shall be maintained for a further two weeks at most.
(5) Where the seizure proves to have been unjustified from the beginning and if the petitioner has maintained the request under subsection (1) in respect of the seized product or has not made a declaration without delay (second sentence of subsection (4)), he shall be required to compensate the damages that seizure has occasioned to the person entitled to dispose.
(6) The petition under subsection (1) is to be submitted to the German Regional Finance Office and shall be effective for two years unless a shorter period of validity has been requested; the request may be repeated. The cost of official acts related to the request shall be charged to the petitioner in accordance with Section 178 of the Fiscal Code [Abgabenordnung].
(7) Seizure and confiscation may be opposed by the legal remedies allowed by the fixed penalty procedure under the German Law on Minor Offenses in respect of seizure and confiscation. The petitioner shall be heard in the review proceedings. An immediate appeal shall lie from the decision of the Local Court; it shall be heard by the Provincial High Court.