GERMANY LAW AND PRACTICE Contributed by: Dr. Clemens Tobias Steins, Dr. Michael Pfeifer, Dr. Daniel Grohs and Dr. Bianca-Lucia Vos, Hoffmann Eitle
1.15 Defences and Exceptions to Patent Infringement Patent infringement proceedings typically evolve along diverging views on understanding the patent’s scope of protection. In addition, the defendant may rely on a number of defences: • Permitted uses: Section 11 GPA enumerates the permissible uses of a patent (eg, private action, acts of experimental use and Bolar exemption, see 2.3 Acceptable Pre-Launch Preparations and 3.3 Acceptable Pre- Launch Preparations below). • Private prior use before the priority date (Sec- tion 12 GPA): While a prior use right is limited to the undertaking at which the prior use occurred, courts have come to accept scaling up and amending the concerned embodiment unless the intrusion into the scope of protec - tion is intensified (FCJ, X ZR 95/18). Declaration of Willingness to Grant Licences Section 139(1)3 GPA, in theory, also allows the defendant to rely on third-party (patient) inter - ests for arguing that an injunction would have disproportionate effects but plays little role in practice due to a very high bar. • Positive right to use: If the defendant is the proprietor of a patent with an earlier priority date, whereas the plaintiff has a later priority date, the former may be deemed the right - ful owner of the patent. The defendant’s own patent precludes any infringement of the younger patent. • Unlawful extraction: If the plaintiff has extracted the intention from the defendant in an unlawful manner, the defendant is not deemed to have infringed the patent. • Exhaustion: If the product in question has been put on the market within the EU or the EEA with the patentee’s consent, the patent
protection in question shall be deemed to have lapsed for the concerned embodiment. As a transitional provision, EU law foresees a specific mechanism for the parallel import of pharmaceuticals from later-acceded member states in consideration of the diverging level of protection available at the time of applica - tion. • Statute of limitations: See 1.5 Timing for Main Proceedings on Infringement/Validity above. If the DoE is applicable, the Formstein defence may be invoked (see 1.10 Doctrine of Equiva- lents above) Due to Germany’s bifurcated system, a defend - ant can only indirectly assert the invalidity of the patent concerned, namely by requesting a stay of the infringement proceedings in view of the success chances of a pending validity attack before the EPO or the federal courts (see below). 1.16 Stays and Relevance of Parallel Proceedings Stay Because of Parallel Invalidation Proceedings As explained under 1.4 Structure of Main Pro- ceedings on Infringement/Validity , the infringe - ment court can stay the action in view of paral - lel German or EPO opposition proceedings or a German nullity action regarding the patent in suit. Stay Because of Parallel CJEU Proceedings Moreover, a court may also stay the infringement proceedings because of pending proceedings at the CJEU, eg, for a preliminary ruling, if the infringement court’s decision hinges on the out - come of the CJEU proceedings.
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