What responsibility do foreign companies bear for patent infringements in Germany? On June 8, 2021, the Federal Court of Justice (Bundesgerichtshof – BGH) handed down a new ruling on this matter (X ZR 47/19), thereby putting the relevant requirements in concrete terms.
The case concerned an ultrasonic transducer used in parking assistance systems for motor vehicles. The claimant was the holder of the patent valid in Germany. The claimant had sued a manufacturer based abroad who had supplied the ultrasonic transducer to a customer also based abroad. The latter had imported the components to Germany, thereby violating the patent. The claimant had confronted the defendant with the facts of the case prior to the proceedings and asked for a statement.
The Federal Court of Justice now upheld the ruling against the defendant due to the deliveries to the customer. According to the judgment, a company based abroad whose products are supplied to a customer also based abroad and ultimately placed on the German market in violation of the patent must cease and desist, provide information, and pay damages if there are concrete indications that activities in violation of the patent in Germany appear likely. Such indications may arise – as is the case here – on the basis of an “authorization enquiry” (Berechtigungsanfrage) by the patent holder, from which it can be concluded that the products in violation of the patent have reached the German market.
“The decision by the Federal Court of Justice confirms the case law from the German courts of first instance. Such case law takes appropriate account of the complexity of supply chains in the global economic system,” says Gottfried Schüll, patent attorney and partner at Cohausz & Florack. “Suppliers based abroad are thus subject to the effects of patent protection in Germany if it is evident to these suppliers that the products supplied infringe patents in Germany.”
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