Position Paper on the Envisaged Reform of the German Patent Act

18 Pages Posted: 8 May 2020

See all articles by Luc Desaunettes-Barbero

Luc Desaunettes-Barbero

Max Planck Institute for Innovation and Competition; Catholic University of Louvain (UCL); University of Strasbourg - CEIPI

Reto Hilty

Max Planck Institute for Innovation and Competition; University of Zurich; Ludwig Maximilian University of Munich (LMU)

Daria Kim

Max Planck Institute for Innovation and Competition

Matthias Lamping

Max Planck Institute for Innovation and Competition

Peter R. Slowinski

Max Planck Institute for Innovation and Competition

Hanns Ullrich

Max Planck Institute for Innovation and Competition

Date Written: March 10, 2020

Abstract

This position paper of the Max Planck Institute for Innovation and Competition provides comments on the amendments proposed by the German Ministry of Justice and Consumer Protection in its discussion draft of January 2020 on the modernization and simplification of the German Patent Act. While the Institute generally welcomes the initiative, the paper offers some suggestions aimed at increasing precision in the areas of first, the concept and the implementation of the proportionality test for granting injunctive relief, and, second, the need for enhanced protection of trade secrets in patent disputes.

With regard to the proportionality assessment, the Institute suggests that, rather than reducing it to an application of the principle of good faith, the concept of proportionality should be interpreted and applied in light of the ratio legis of patent protection with a view to preventing dysfunctional effects potentially resulting from the exercise of the exclusive right and the associated claim to an injunction. Scenarios involving complex products, non-practicing entities and standard-essential patents are used to illustrate the approach. As regards the weighing and balancing of interests when assessing proportionality, the position paper argues that it is neither desirable nor appropriate to prioritize the interests of the patentee over those of the infringer as a matter of principle. In addition, it is not only the interests of parties to the dispute, but also those of third parties, in particular the public interest, that should be taken into account.

With regard to the protection of trade secrets in patent disputes, the position paper refers to certain procedural insufficiencies of the Trade Secrets Act to adequately protect the defendant’s secrecy interests. It also points out a potential loophole in relation to the ‘Düsseldorf proceedings’ that may facilitate ‘fishing expeditions’.

Keywords: Patent, injunctive relief, injunction, proportionality, public interest, complex products, non-practicing entities, standard-essential patents, good faith, trade secrets, Düsseldorf proceedings, 'fishing expeditions'

Suggested Citation

Desaunettes-Barbero, Luc and Hilty, Reto and Kim, Daria and Lamping, Matthias and Slowinski, Peter R. and Ullrich, Hanns, Position Paper on the Envisaged Reform of the German Patent Act (March 10, 2020). Max Planck Institute for Innovation & Competition Research Paper No. 20-05, Available at SSRN: https://ssrn.com/abstract=3592465 or http://dx.doi.org/10.2139/ssrn.3592465

Luc Desaunettes-Barbero

Max Planck Institute for Innovation and Competition ( email )

Marstallplatz 1
Munich, Bayern 80539
Germany

Catholic University of Louvain (UCL) ( email )

Place Montesquieu, 3
Louvain-la-Neuve, 1348
Belgium

University of Strasbourg - CEIPI ( email )

Bâtiment LE CARDO, 7 Rue de l'Ecarlate
CS 20024
Strasbourg, 67082
France

Reto Hilty

Max Planck Institute for Innovation and Competition ( email )

Marstallplatz 1
Munich, Bayern 80539
Germany

HOME PAGE: http://www.ip.mpg.de

University of Zurich

Rämistrasse 74/7
Zürich, CH-8001
Switzerland

Ludwig Maximilian University of Munich (LMU)

Munich, 80539
Germany

Daria Kim

Max Planck Institute for Innovation and Competition ( email )

Marstallplatz 1
Munich, Bayern 80539
Germany

Matthias Lamping (Contact Author)

Max Planck Institute for Innovation and Competition ( email )

Marstallplatz 1
Munich, Bayern 80539
Germany

HOME PAGE: http://www.ip.mpg.de

Peter R. Slowinski

Max Planck Institute for Innovation and Competition ( email )

Marstallplatz 1
Munich, Bayern 80539
Germany

Hanns Ullrich

Max Planck Institute for Innovation and Competition ( email )

Marstallplatz 1
Munich, Bayern 80539
Germany

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