GERMANY Law and Practice Contributed by: Clemens Tobias Steins, Michael Pfeifer, Daniel Grohs and Bianca-Lucia Vos, HOFFMANN EITLE
5.3 Discretion to Award Injunctive Relief (Final or Preliminary) German law provides for a compulsory licence action, which can be brought before the Federal Patent Court. To prevail in this action, the applicant must demon ‑ strate that: • they have unsuccessfully tried to obtain a use right from the proprietor on reasonable terms; and • the public interest calls for the grant of a compul ‑ sory licence. A public interest exists in cases where the use right is required to provide a medicament for a serious illness that has either greater efficacy or fewer side effects than any other available medicament. Besides this specific provision, before granting an injunction, a court must generally consider whether circumstances exist according to which the injunc ‑ tion would lead to disproportionate hardship for the infringer or third parties, relative to the plaintiff’s inter ‑ est in excluding them based on the intellectual proper ‑ ty right granted to him. German courts apply this only in very exceptional cases, and in principle, it cannot replace the above action for a compulsory licence. 5.4 Damages In German infringement proceedings, plaintiffs typical ‑ ly request only a declaration establishing the defend ‑ ant’s liability for damages and an obligation to render accounts, rather than seeking a specific monetary award in the initial action. Upon obtaining the render ‑ ing of accounts, the plaintiff can commence a follow- on lawsuit, claiming payment of a specific amount of damages. Damages are only meant to compensate for a loss suffered, not to penalise. In general, German courts are conservative regarding the amount of damages awarded. Those damages can be calculated according to the
be extended by up to two additional years if clinical studies are completed in accordance with an agreed PIP. Proposed plans to reform the EU pharmaceuti ‑ cal legislation may alter regulatory exclusivity periods. Currently, orphan drugs are not eligible for SPC term extensions. To apply for a paediatric six-month SPC extension, the orphan designation must first be with ‑ drawn.
5. Relief Available for Patent Infringement 5.1 Preliminary Injunctive Relief
Instead of a permanent injunction in the main pro ‑ ceedings, German law provides a right to commence provisional injunction proceedings separately from the main proceedings. We have addressed the relief available in those proceedings under 1.3 Provisional Injunction Proceedings . 5.2 Final Injunctive Relief A first-instance judgment in favour of the plaintiff may include an order to cease and desist from undertaking certain specified activities (permanent injunctive relief) as well as further claims of relief, such as the recall and destruction of infringing products. The enforcement of a first-instance judgment that is not (yet) final requires the plaintiff to provide security (often in the form of a bank guarantee) to the defend ‑ ant for damages incurred due to the enforcement, should the judgment be overturned on appeal. The amount of security is within the court’s discretion but is usually set at the same level as the value in dispute on which the court fees and reimbursement claims are based (see 5.5 Legal Costs ). To enforce the cease-and-desist order, the plaintiff must indicate to the defendant that the judgment is enforced by serving a copy of the judgment and the aforementioned security. The defendant can petition the appeal court to stay the enforcement, but this is granted only in excep ‑ tional cases.
methods of: • lost profits;
• infringer’s profit; and • reasonable royalty.
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