Out-Law News 4 min. read
04 Jul 2017, 3:56 pm
Peter Koch of Pinsent Masons, the law firm behind Out-Law.com, said that the judgment builds on earlier decisions of the court which concern findings of patent infringement relating to the supply of products outside of Germany.
According to the BGH's new ruling, businesses based outside of Germany that supply a product to customers also based outside of the country can be held liable for patent infringement in Germany if a German national patent or German-designated European patent applies, even if the supplier does not deliver or market the goods in Germany itself.
Koch said the BGH ruling clarified the circumstances in which such a finding could be made and offered guidance to explain the relevant factors that businesses should account for.
Under German patent law, businesses can be sued by patent owners "for recall of the products which are the subject-matter of the patent or for definitive removal of the products from the channels of commerce”.
The BGH clarified that both remedies can be pursued by rights holders at the same time. It also made it clear that the remedies cannot be automatically denied to rights holders just because an alleged infringer is based abroad. It follows on from a 2013 ruling by the Appeals Court of Düsseldorf in which the court took the view that a claim for recall is a mere aid for the enforcement of the claim for destruction, which is also provided for in the German Patent Act.
The BGH built on the Düsseldorf court's finding and said that the claim for destruction is not in a hierarchical or exclusive relationship to the claims for recall and/or removal. Instead they are all independent of each other. It said, therefore, that a claim for recall is also justified against an alleged infringer located abroad.
The BGH also reiterated previous case law it developed in 2009 which confirms that claims can be made, under German patent law, against businesses that facilitates or assists in others' use of a patent if they are capable of obtaining with reasonable effort the knowledge that the act they are supporting infringes the rights of the patent owner.
According to the ruling, even if businesses do not intend to assist others to use patents without a licence, they can in some cases be found liable for patent infringement themselves.
Koch said that the BGH clarified that, in such cases, any business' contribution to causing the infringement alone is not sufficient to establish accountability. Further justification to attribute the infringement of a right by a third party is required, he said.
"This, as a rule, consists in the breach of a legal obligation that in any case also serves to protect the infringed absolute right, and, if observed, would have meant that the contribution to causing the act would have been inapplicable or in any case would have been recognisable as a prohibited contribution to the third party's unlawful act by the acting party, and therefore an act that may not be performed," Koch said.
The BGH applied those principles and determined that where a business located outside of Germany supplies a customer also based abroad with products, the supplier can be held liable for patent infringement in Germany engaged in by that customer if they are aware that the customer is delivering the goods into Germany.
Even if the supplier is not aware of the behaviour of its customer in this regard, they can still be held liable for patent infringement of the customer if there are "concrete indications" that would make it obvious to the supplier that the product is put on the market in Germany, the BGH said.
Koch said the BGH provided some guidance on what would qualify as a 'concrete indication'.
The court said that positive knowledge of an already existing or an actually imminent further delivery of the product into Germany by the customer would be a 'concrete indication'.
Where the quantity delivered is of a size that would be too large for the patent-free market only, this could also be deemed as a 'concrete indication'. However, Koch said that it would be difficult for patent owners to know this information and therefore whether the factor was relevant to their claims without obtaining disclosure of suppliers' accounts.
Another 'concrete indication' that a product is to be put on the German market would be if there is evidence of customers preparing to place the product on that market, such as where German language operating instructions are provided alongside a product, the court said.
However, the BGH said that the mere fact that a product description is in German would not be enough on its own to be classed as a 'concrete indication'. Neither would the fact that a supplier is engaged in business activities in the market covered by the patent, it said.
Where 'concrete indications' are identified, suppliers must inform the customer about the potential patent infringement they are engaged in, and immediately stop their supply of the product to that customer, the BGH said.
Koch said it is not clear, however, whether suppliers that take such action would be immune from being held liable for patent infringement.
"The BGH's decision can be put into perspective in light of the never ending saga of the delay to the operation of the new Unified Patent Court (UPC)," Koch said. "While we are all waiting for the UPC project to start, the German Federal Supreme Court has once again confirmed that the existing German patent law provides the means to pursue patent infringement abroad and thereby extends the scope of remedies like the claims for recall and removal."
