After intensive debate,1 the proponents of reform were successful: Section 139(1) Sentence 3 of the German Patent Act in the version modified by the Second Act to Simplify and Modernize Patent Law (Zweites Gesetz zur Vereinfachung und Modernisierung des Patentrechts) stated expressly that the right to injunctive relief under Section 139(1) Sentence 1 of the German Patent Act is ‘excluded where asserting such a remedy would, due to the particular circumstances of the individual case and the principle of good faith, lead to disproportionate hardship for the infringer or third parties that is not justified by the exclusive right’. Section 139(1) Sentence 3 of the German Patent Act was adopted, inter alia, because trial courts took proportionality considerations into account ‘only very cautiously’ in their decisions,2 although the principle of proportionality3 is established both in EU law (Article 3 (2) of Directive 2004/48) and in the German constitution (Article 20 (3) of the Grundgesetz).4 The legislator wanted to clarify ‘that injunctive relief under patent law can be limited in individual cases by way of exception’.5

As far as can be seen, this objective of rendering the proportionality requirement more relevant in practice, at least in exceptional cases, has not been achieved. While the case law handed down since the entry into force of Section 139(1) Sentence 3 of the German Patent Act does reveal a double-digit number of decisions6 that address Section 139(1) Sentence 3 of the German Patent Act, in no case has the injunctive relief been restricted, although defendants have repeatedly invoked disproportionality.7 The low practical significance of Section 139(1) Sentence 3 of the German Patent Act is mostly due to the fact that the courts understand this provision as a mere legislative confirmation of previous court practice,8 in particular the Wärmetauscher decision9 of the German Federal Court of Justice. Whether this understanding is correct remains open for discussion.10 Rather, another aspect of the 2021 reform deserves more attention: in the explanatory memorandum, the German legislator expressly recognised that Section 139(1) Sentence 3 of the German Patent Act serves the purpose of implementing the EU law requirement of proportionality of patent law injunctions (Article 3(2) of Directive 2004/48) into national law.11 As a consequence, upon the entry into force of the Second Act to Simplify and Modernize Patent Law at the latest,12 German courts are obliged to interpret and apply Section 139(1) Sentence 3 of the German Patent Act in conformity with EU law and to abandon conflicting national case law.13 For this reason alone, the previous case law must be reviewed for its conformity with EU law.

Source: https://academic.oup.com/jiplp/advance-article/doi/10.1093/jiplp/jpaf058/8297160