Germany-Selected Compulsory Licensing, Government Use, and Notable Patent Exception Provisions

Patent Law

(Text of December 16, 1980, as last amended by the Laws of July 16 and August 6, 1996)

Part I

The Patent

1.-( 1) Patents shall be granted for inventions that are new, involve an inventive step and are susceptible of industrial application.

(2) The following in particular shall not be regarded as inventions within the meaning of subsection (1):

1. discoveries, scientific theories and mathematical methods;

2. aesthetic creations;

3. schemes, rules and methods for performing mental acts, playing games or doing business and programs for computers;

4. presentations of information.

(3) The provisions of subsection (2) shall exclude patentability only to the extent to which protection is sought for the above-mentioned subject matter or activities as such.

2. Patents shall not be granted in respect of:

1. inventions the publication or exploitation of which would be contrary to public policy or morality, provided that the exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation. The first sentence above shall not exclude the granting of a patent for an inven- tion falling under Section 50(1);

2. plant or animal varieties or essentially biological processes for the production of plants or animals. This provision shall not apply to microbiological processes or the products thereof.

[Amended by Law of March 27,1992]

5.-( 1) An invention shall be considered susceptible of industrial application if it can be made or used in any kind of industry , including agriculture.

(2) Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body shall not be regarded as inventions which are susceptible of industrial application within the meaning of subsection (1). This provision shall not apply to products, in particular substances or compositions, for use in any of these methods.

13.-(1) A patent shall have no effect where the Federal Government orders that the invention be exploited in the interest of public welfare. Nor shall the effect of a patent extend to any exploitation of the invention which is ordered in the interests of the security of the Federal Republic by the appropriate supreme federal authority or, on the latter's instructions, by a subordinate agency.

(2) Appeals from orders under subsection (1) shall be heard by the Federal Administrative Court where such orders have been made by the Federal Government or the appropriate supreme federal authority.

(3) In the cases mentioned in subsection (1), the patentee shall have a claim against the Federal Republic for reasonable compensation. In the event of dispute as to its amount, legal action may be brought before the ordinary civil courts. Any order by the Federal Government under the first sentence of subsection (1) shall be communicated to the person recorded as patentee in the Register (Section 30(1)) before the invention is exploited. If the supreme federal authority by which an order or an instruction under the second sentence of subsection (I) is issued learns that a claim for compensation has arisen under the first sentence, it shall give notice thereof to the person recorded in the Register as patentee.

24.-(1) A non-exclusive authorization to commercially exploit an invention shall be granted by the Patent Court in individual cases in accordance with the following provisions (compulsory license) if

1. the applicant for a license has unsuccessfully endeavored during a reasonable period of time to obtain from the patentee consent to exploit the invention under reasonable conditions usual in trade; and

2. public interest commands the grant of a compulsory license.

(2) If the applicant for a license is unable to exploit an invention for which he holds protection under a patent of later date without infringing a patent of earlier date, he shall be entitled within the framework of subsection (1) to request the grant of a compulsory license with respect to the owner of the patent of earlier date if his own invention comprises, in comparison with that under the patent of earlier date, an important technical advance of considerable commercial significance. The patentee may require the applicant for a license to grant him a counter license under reasonable conditions for the exploitation of the patented invention of later date.

(3) A compulsory license under subsection (1) may be granted for a patented invention in the field of semi-conductor technology only if such grant is necessary to remove an anti-competitive practice on the part of the patentee that has been established in judicial or administrative proceedings.

(4) If the patentee does not use the patented invention , or does not use it predominantly in Germany, compulsory licenses under subsection (1) may be granted to ensure an adequate supply of the patented product to the domestic market. Importing shall be deemed to constitute use of the patent in Germany in such case.

(5) The grant of a compulsory license in a patent shall be permissible only after the grant of the patent. It may be granted subject to restrictions and made dependent upon conditions. The scope and duration of use shall be restricted to the purpose for which they have been permitted. The patentee shall be entitled to remuneration from the holder of a compulsory license that shall be commensurate with the circumstances and shall take into consideration the commercial value of the compulsory license. In the event of a significant change, with respect to the repeated remuneration that will become due in future, in the circumstances on which the determination of the amount of the remuneration was based, each party shall be entitled to require a corresponding adjustment. If the circumstances on which the grant of a compulsory license was based no longer apply and if it is unlikely that they will reoccur, the patentee may require the withdrawal of the compulsory license.

(6) A compulsory license in a patent may only be transferred together with the enterprise concerned by the exploitation of the invention. A compulsory license in an invention that is the subject matter of a patent of earlier date may only be transferred together with the patent of later date.

[Amended by Law of July 16, 1998]

Part IV
The Patent Court

65.-(1) There shall be established a Patent Court as an autonomous and independent federal court for hearing appeals from decisions of the Examining Sections or Patent Divisions of the Patent Office and actions for declaration of nullity of patents and for compulsory licenses (Sections 81, 85). It shall have its seat at the seat of the Patent Office. It shall be designated the "Federal Patent Court".

(2) The Patent Court shall consist of a President, presiding judges and other judges. They must possess the qualifications required for judicial office under the German Law Relating to Judges (legal members) or must be experts in a branch of technology (technical members). For the technical members, Section 26(2) shall be applicable mutatis mutandis provided they have passed a State or academic final examination.

(3) Judges shall be appointed for life by the Federal President, except where otherwise provided in Section 71.

(4) The President of the Patent Court shall exercise official supervision over judges, officials, employees and workers.

[Amended by Law of July 16, 1998]