/ Created by Dr. Reinhard Fischer

Protection against imitation possible even after expiry of patent

Federal Court of Justice (BGH) ruling strengthens innovative companies

Düsseldorf, 27.08.2015 – A patent-protected product may be protected against imitation even after the end of the 20-year patent term – through the supplementary product protection under unfair competition law. This decision of the Federal Court of Justice announced in January 2015 has recently been made available in full text. The Higher Regional Court of Frankfurt had originally considered that supplementary product protection under unfair competition law is excluded if the decisive characteristics for this protection are the same technical characteristics for which patent protection was previously at hand. The Federal Court of Justice contradicted that decision: It considers that a product may be subject to supplementary product protection under unfair competition law – for an unlimited time – even after expiry of the patent protection. In this case however, a prerequisite is that technically equivalent alternative solutions are available to the competitor. It should thus also be possible to achieve the technical solution in another way while maintaining the same quality.

This particular case involved so-called Exzenterzähne by an Austrian manufacturer: The spreading elements are used for mounting plastic pipes and conduits for electrical installations. Due to their special plug-in technique, they can do without additional screws or dowels. The solution was patent protected until the year 2004. The decision regarding the question of further imitation protection for this solution has now been referred back to the Higher Regional Court of Frankfurt.

The verdict by the judges of the Federal Court of Justice rejects the common legal conception that the protection of a product cannot be extended under unfair competition law after expiry of the patent. “This decision of general principle is a good message for innovative companies”, says Dr. Reinhard Fischer of Cohausz & Florack. “After expiry of the patent protection it is advisable to also thoroughly examine the requirements under unfair competition law in order to proceed effectively against imitators”.