Die Digitalisierung sorgt für neue Herausforderungen im Patentrecht und für mehr gemeldete Patente
Research News  |  05/05/2020

Modernizing Patent Law: New Rules for the Digital Age

The claim for injunctive relief under patent law shall be subject to proportionality in the future. The Institute has issued a position paper on the amendments proposed by the Federal Ministry of Justice and Consumer Protection.

Digitization poses new challenges for patent protection. In particular, the large number of patent-protected individual components used in some products makes it difficult to identify all the relevant property rights and to acquire the necessary licenses.

Just over ten years after the last amendment to the Patent Act by the (first) "Act to Simplify and Modernise Patent Law" the, the Federal Ministry of Justice and Consumer Protection submitted a discussion draft at the beginning of this year that provides for a selective revision of the Patent Act. At the heart of the amendment is the flexibilisation of the injunctive relief in Section 139(1). This grants the patentee the right to prohibit the use of his patent by third parties. The discussion draft proposes to insert a third sentence to the Section, clarifying that the enforcement of the injunction can be excluded in individual cases if it would be disproportionate.


Suggestions for the further legislative process

In practice, such constellations are likely to arise in the case of "complex products" which often comprise a large number of individually patented components that, in themselves, contribute only marginally to the value of the final product. As a result, each patentee enjoys a position of power that is out of proportion with the contribution of its invention to the final product, since the patentee can, under certain circumstances, stop the production of a product with an injunction. In the case of standard-essential patents (SEPs) or “non-practicing entities”, which do not have or do not want to establish any production capacity themselves, the granting of injunctive relief may also be disproportionate in individual cases.

The Institute, which issued a position paper on the discussion draft in March, in principle welcomes the proposed limitation of the claim to injunctive relief. However, the Institute does also provide certain suggestions with regard to the further legislative process, for example with regard to the criteria used for the assessment of proportionality. The discussion draft ties in with the principle of good faith; in the statement, the "leverage effect" of the injunction is in the foreground.  The authors are particularly concerned about the prioritisation of the patentee's interests over the interests of other parties or the public. “Such prioritisation is neither desirable as a matter of policy, nor justifiable by the exclusive nature of the patent right”, argues the position paper.

The position paper also criticizes the fact that the discussion draft rejects the consideration of third party interests and public interests in the context of the proportionality assessment categorically. The Institute contradicts the argument of the Federal Ministry that general interests are sufficiently and conclusively protected by the institute of compulsory licensing under Sec. 24 Patent Law.

Read the full text of the Institute's position paper here

Study  |  04/30/2020

Digitalization by Corona? New bidt Study on Remote Work in Germany

Dietmar Harhoff, director at the Max Planck Institute for Innovation and Competition and member of the board of directors of the Bavarian Research Institute for Digital Transformation (bidt), is co-author of the study on the spread and acceptance of remote work in Germany. He stresses that companies should not return to old organizational patterns after the crisis.

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Illustration: bidt

The Bavarian Research Institute for Digital Transformation (bidt) has examined important questions concerning the spread and acceptance of work from home. To this end, bidt conducted a representative short survey among 1,595 employed adult Internet users in Germany. The analysis shows:

  • The use of remote work has increased during the crisis.
  • The satisfaction with the current situation of remote working is high.
  • Before the Corona crisis, some employers did not allow remote work.
  • Employers were generally well prepared.
  • The acceptance of remote work has increased.
  • The desire for more working from home is strong.

Dietmar Harhoff explains that there is a high level of acceptance among employees for remote work. The economy must take up this willingness, he says. Germany is lagging behind in the EU comparison when it comes to remote working. Home-based work is not only a question of organizational culture. It also leads to new management concepts and strengthens digitalization and innovative ability.

To the detailed bidt study (in German).

Here you can also listen to the podcast “Job Cuts and Remote Work: How Corona Is Changing the World of Work” (in German) in the NDR Info Speaking Time (30 April 2020) with contributions from Dietmar Harhoff.

Opinion  |  03/11/2020

Position Paper on the Proposed Reform of the German Patent Act

The Position Paper generally welcomes the initiative of the Federal Ministry of Justice and Consumer Protection, but makes suggestions for improvements, in particular, with regard to the application of the principle of proportionality in the injunction relief proceedings and the protection of trade secrets in patent litigation. 

Opinion  |  02/11/2020

Comments on the Draft Issues Paper of the WIPO on Intellectual Property Policy and Artificial Intelligence of 11 February 2020

Cover der neuen GRUR International
Research News  |  01/13/2020

English Relaunch of a Well-Established Law Journal

GRUR Int. has entered the new year with a revised concept: The journal is now called "GRUR International" and is published exclusively in English. Articles will be selected based on an independent peer-review process.

Cover of the new GRUR International
The first issue of the new GRUR International

A pioneer among international journals in the field of IP and competition law, the "Gewerblicher Rechtsschutz und Urheberrecht, Internationaler Teil” (GRUR Int.), which first appeared in 1952, has modernized its concept to give it a stronger alignment with its target audience. Since 1967, the academic responsibility for the journal has been in the hands of the Max Planck Institute for Innovation and Competition, as it is called today. The economic patron has always been the German Association for the Protection of Intellectual Property and Copyright Law (Deutsche Vereinigung für Gewerblichen Rechtsschutz und Urheberrecht, GRUR e.V.), which is also responsible for a series of partner journals.

While the journal’s structural basis – despite an increase in its English content – has remained German up until now, the new journal, which is called „GRUR International – Journal of European and International IP Law” in full, will now be published entirely in English. The first issue of the refurbished journal was released in January. This step takes into account the fact that German has increasingly lost its role as an international language in the fields of law covered by the journal, especially among the new generation of legal scholars.

However, the basic concept of the leading international and comparative law journal in the field of Intellectual Property law remains unchanged. Once a month, GRUR International will continue to publish academic articles, reports, book reviews and, above all, a detailed case law section. The journal will still address developments in patent, copyright, trademark and competition law, with a particular focus on civil law countries in which English is not an official language. By translating important decisions from such jurisdictions, GRUR International will close a gap, enhancing their dissemination internationally.

Simultaneously with the change to publishing exclusively in English, GRUR International is introducing an independent peer-review process for all scholarly articles. The team of peer reviewers consists of around 50 specialized and highly qualified experts from all continents in the various subareas of IP and competition law. In addition to substantive criteria, geographical aspects and specific knowledge of the reviewers with regard to different countries also play an important role in the composition of the team.

The main publishing responsibility for GRUR International will lie, in future, with the internationally renowned publishing house Oxford University Press (OUP), which will also be responsible for sales outside the German-speaking countries. For subscribers from Germany, Austria and Switzerland, C.H. Beck-Verlag will remain responsible for the distribution of the printed magazine. Both publishers will operate independent online sites, through which selected parts of GRUR International’s content will be accessible.

To the first issue of the new GRUR International 

Study  |  12/11/2019

Science Quality and the Value of Inventions – New Study in Science Advances

The new study “Science Quality and the Value of Inventions” by researchers of the Institute has now been published in the journal Science Advances. The study shows a strong positive correlation between the scientific quality of research contributions and the economic value of patents based on these contributions.

Science Advances, 12/2019

Science governance and funding seek to promote excellent science output by allocating resources to those projects, researchers and institutions from which outstanding results are expected. But the commonly used measures for scientific quality, such as the number of citations, do not take into account the potential of scientific results for technology transfer and commercialization.

The findings of the new study “Science Quality and the Value of Inventions” by Poege et al. imply that what is considered excellent within the science sector also leads to outstanding outcomes in the technological and commercial realm. Excellent scientific articles are referenced in substantially more patent documents than articles with lower scientific quality. Patents with references to often-cited scientific contributions are of much higher commercial value than patents referring to less-cited publications.

The analysis comprises references to scientific contributions from 4.8 million patent families of the European Patent Office and the U.S. Patent and Trademark Office and approximately 43 million scientific publications in the Web of Science from the year 1980 onwards.

Previously known was the fact that patents with references to scientific publications are substantially more valuable than patents without a direct science link. The new study contributes the insight that the quality of the scientific bases is of crucial importance. Patents with references to excellent scientific publications are particularly valuable, while this does not apply to patents with references to low quality scientific publications.

The results indicate that quality measures commonly used in science can serve as good criteria for a system of science funding which simultaneously provides a basis for societal benefit and technological progress.

Science Advances is a peer-reviewed multidisciplinary open access journal published by the American Association for the Advancement of Science and complements the journal Science, referred to as Science Magazine, which has been published since 1880.

To the publication in Science Advances

The authors: Felix Poege Dietmar Harhoff Fabian Gaessler Stefano H. Baruffaldi

Suggested citation:

Poege, Felix; Harhoff, Dietmar; Gaessler, Fabian; Baruffaldi, Stefano (2019). Science Quality and the Value of Inventions, Science Advances, 5 (12), eaay7323 (11 December 2019). DOI: 10.1126/sciadv.aay7323

Research News  |  10/30/2019

Technical Aspects of Artificial Intelligence from an IP Perspective: 10 Questions - 10 Answers

A Research Group of the Institute’s legal departments is investigating the effects of Artificial Intelligence on Intellectual Property Law. A concise Q&A document with 10 questions and 10 answers examines technical aspects of Artificial Intelligence with potential relevance for IP law.

Machine Learning is currently the most important subfield of AI.

Artificial Intelligence (AI) changes - often invisibly - everyday life. In the field of IP law, however, AI raises new questions and challenges. A research project of the legal departments of the Max Planck Institute for Innovation and Competition led by Professor Reto M. Hilty and Professor Josef Drexl is investigating these issues.

The Research Group “Regulation of the Digital Economy” examines whether the existing IP system can fulfil its fundamental functions in the context of AI. Since a sound understanding of technology is indispensable for this task, the members of the group researched technical literature, conducted interviews with practitioners and organized a workshop with international AI researchers. The result is the present paper "Technical Aspects of Artificial Intelligence: An Understanding from an Intellectual Property Law Perspective".

The paper forms the basis for the group's ongoing legal research: How do current IP rights apply to AI? To what extent should the existing IP system be adjusted to adequately reflect social and economic changes due to AI?

Miscellaneous  |  10/25/2019

10 Years „Münchner Verfahren“ − Max Planck Researchers Carry Out an Evaluation of the Munich Proceedings in Patent Litigation

The regional court Munich I is one of only 12 German courts responsible for patent matters. For the past ten years, the “Münchner Verfahren” (Munich Proceedings in Patent Litigation) has been an important factor for Munich as a patent location. Researchers of the Institute will now carry out an evaluation of the procedure.

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Photo: Justiz Bayern.

With the European Patent Office (EPO), Federal Patent Court (BPatG), German Patent and Trademark Office (DPMA), institutions of the new Unified Patent Court (UPC), the Patent Attorney Chamber, numerous lawyers and patent attorneys, patent services as well as many innovative Bavarian companies with large patent portfolios, Munich applies as the “European Patent Capital”.

The regional court Munich I is one of only 12 German courts responsible for so-called patent matters, in particular patent infringement cases. As a rule, the plaintiff has the choice of which court to call. The regional court Munich I is third in terms of the number of entries behind Düsseldorf and Mannheim. An important factor for the patent location Munich is the “Münchner Verfahren” (Munich Proceedings in Patent Litigation).

Ten years after its introduction, the procedure is now to be evaluated in order to gain knowledge for future improvements. The scientific evaluation is carried out by the Max Planck Institute for Innovation and Competition as part of a research project.

As soon as the results are available, we will report.

Research News  |  08/01/2019

New Study on Gender Wage Gaps – Opportunities in Growing Online Labor Markets

Yes, indeed – women and men are different. Recent Max Planck research on one of the world’s largest online labor market platforms finds that gender wage gaps can largely be explained by gender-specific behavior in the competition for contracts. Yet, online labor markets could help female workers to obtain a higher expected income.

Photo: Myriam Rion.

For this purpose, a sample of more than 250,000 digitally performable projects from 188 countries with more than 2.5 million wage bill proposals of 65,010 freelancers from 177 countries was analyzed.

Female freelancers are willing to complete projects at a lower wage than their male competitors – which largely explains the observed gender wage gap. However, the analysis also shows that female freelancers are more likely than their male competitors to win the competition for contracts. Overall, this leads to a higher expected wage for female freelancers when making wage bill proposals.

One possible implication of the new Max Planck study by Frank Mueller-Langer, Affiliated Research Fellow at the Institute, and his co-author Estrella Gómez-Herrera, Joint Research Centre of the European Commission, is that online labor markets could help female workers to obtain a higher expected income.

See Publication

EU-Mercorsur Flags symbolizing the treaty
Research News  |  07/29/2019

After the Mercosur deal: Meaningful standards of protection for Latin America?

The new trade agreement promises to open up new markets for Europe in South America. But what will it mean for the protection of intellectual property in those markets? A team of researchers in the IP Department under Director Reto M. Hilty examines the standards of protection that apply in Latin America to determine which systems of protection are most appropriate in the context of economic development

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If you order Parmesan with your pasta in Buenos Aires, the waiter will most likely give you a friendly nod, but what he brings to your table is not likely to be recognized by lovers of Italian cuisine as “Parmigiano Reggiano”.

This will change with the new free-trade agreement between the European Union and the states of the Southern Common Market Mercosur, on which both sides reached an agreement in principle in late June.

The Mercado Común del Sur (Mercosur) constitutes South America's largest internal market. If ratified by the EU Member States and by Argentina, Brazil, Paraguay and Uruguay, the trade agreement would create a free-trade zone for approximately 770 million people. The goal of the deal is to open up the European Single Market for products from the Mercosur states, in return for abolishing customs and trade barriers for industrial goods from the EU. In addition, the EU has negotiated protection for 357 food and agricultural products like cheese, ham or wine that are protected by “geographical indications of origin” from copying or misuse in the EU and, soon, in Mercosur territory. So next time you order Parmesan in Argentina, you will have a better chance of actually getting a typical Parmiggiano.

The details of the agreement are not yet finalized. The protection of other kinds of intellectual property, for example, such as technological inventions, literary and musical works, or plant varieties, is also to be included the trade deal. It remains to be seen what the specific design will be. It is already clear, however, that Latin America has very diverse rules and standards of protection that apply to these intangible goods.

“The provisions in the patent, copyright, plant variety protection, or trademark laws vary in Latin America from country to country, regardless of which trade association they belong to”, explains Reto M. Hilty, Managing Director of the Munich Max Planck Institute for Innovation and Competition. “During the course of the 20th century the overwhelming majority of Latin American states did commit to the high standard of protection of the industrial nations by way of international, regional and bilateral agreements, so that they could in turn take part in world trade. This despite the fact that strong protection is not necessarily in their own interest, considering the current development stage of the Latin American economies”, observes the intellectual property law expert. Analyzing these protection mechanisms and studying their effects on the economic development of the region is the goal of the research initiative “Smart IP for Latin America”.

An eight-member team is set to research the significance and functioning of different standards of protection and the effect of regulations on the dynamics of competition.

The results of this research are relevant not only for the policy-making processes of the local legislative powers, but also for companies that are interested in investing in or expanding to this region. “In Brazil, for example, methods for manufacturing transgenic plants are patentable, but not in Argentina”, points out Juan Ignacio Correa, a legal scholar and native of Argentina. And yet the question of whether and how to protect innovations in the countries themselves is essential for a forward-looking agricultural and industrial policy.” Correa will head up the new “IP Observatory” at the Universidad de Buenos Aires. Scheduled for launch in October of 2019, the observatory will coordinate Institute projects in the region.

In the four projects currently ongoing, legal scholars are studying the current status of IP protection in different Latin American countries. They have to consider historical, cultural, social, economic and political particularities in order to understand the effects of the applicable laws and identify misguided or lacking regulations.

In the area of patent law the researchers are putting together country reports detailing what can be protected under the national patent systems, what types of use are exempted from patent protection and what limitations to patent protection exist, which is significant particularly in the areas of pharmaceutics or plant protection, but also in other industries. “We collect this data from different sources: the local experts' answers to a detailed questionnaire, the sources of law and case-law, and our exchange with public agencies and interest groups in the respective country”, explains Matthias Lamping, Senior Research Fellow at the Max Planck Institute in Munich and an expert on Latin America.

“Experience shows that strong patent protection will hardly benefit a country that generates little innovation itself but primarily relies on importing products or technologies to meet its own population's demand, for example in medicines”, reports Reto M. Hilty. Furthermore, the revenues from such innovations as a rule fail to benefit the national economy, because the great majority of owners of national patents are located outside the country. While the scope for limiting national patent protection under international law is often taken advantage of, a positive effect may still not be felt due to other factors such as a lack of competition among generic drug manufacturers.

A further field of research treats copyright protection in this region that is rich in art and music. “Films and music from the region are currently popular as far away as Asia and enjoy wide dissemination. It is doubtful, however, that the protection of authors and the system of collective rights management through CMOs, in their current form and method of operation, will really lead to Latin American artists being able to draw income from them”, asserts Hilty. The focus in this research is on examining the functionality of the rights management system and developing recommendations for lawmakers.

In the area of technology transfer the research teams are studying the functioning and effectiveness of the existing legal framework in individual countries and analyzing ways in which the innovation potential in Latin America can be optimally realized. One important aspect of this project is international technology transfer, both between highly industrialized states and the countries of Latin America and between the latter countries themselves.

In the area of protection of geographical indications of origin it has become clear that the marketing potential of regional products is nowhere near being fully realized. While a few protection labels have been created for products like coffee providing legal protection for their indication of origin, this is not yet the case for a great number of foodstuffs. “For one thing, there is a lack of coherent marketing concepts to publicize the excellent quality of some of these products, whether they rely on geographical indications of origin or collective marks; in addition, there is not enough technological innovation in the agriculture sector that could be protected by patents or plant variety rights”, explains Juan Correa. In this project as well the legal researchers employ country-specific questionnaires to determine which legal frameworks are in place and how practitioners deal with them.

One thing the research projects all have in common is their comparative approach in empirically studying regulatory and factual conditions. In the view of the research team, the only way to draw up guidelines for future legal developments is by analyzing the current situation in all its political, social and economic facets and contexts. Among the important questions: How do incentives arise for market players? Are there specific regulatory approaches that can better realize the economic and cultural potential of the Latin American region?

In the initiative “Smart IP for Latin America”, therefore, it is important to engage in a dialogue with other disciplines such as economics, sociology or political science. “Only evidence-based research allows us to make sound recommendations for action that ultimately can be addressed to political decision-makers in Latin America”, explains Prof. Hilty. He clarifies that the point is precisely not to achieve and enforce the strongest possible protection of intellectual property - at least, not in countries where the business sector currently has no competitive advantages internationally and no relevant potential for creating them. Instead, the goal of this long-term initiative is to map out a system of protection that is optimally tailored to the specific conditions and needs of each individual society and economy in the region.

“Smart IP for Latin America” advocates the promotion of cooperation between the states with specific reference to IP law on different levels extending beyond academic discourse and including long-term support. Assistance for this initiative will be provided by an Advisory Committee composed of leading Latin American scholars.

A kick-off conference for the initiative took place in early 2018 in Santiago de Chile. It was organized in cooperation with the Chilean patent and trademark office, Instituto Nacional de Propiedad Industrial (INAPI), and was followed in the fall of 2018 by a workshop in Buenos Aires dedicated primarily to the patent project. The second annual conference took place in April 2019 in Cartagena, Colombia, in cooperation with Universidad de los Andes; at this meeting the precise orientation of the research projects already underway was defined. The Instituto Nacional de Defensa de la Competencia y de la Protección de la Propiedad Intelectual (INDECOPI), the competent institution for IP rights in Peru, has agreed to host the third annual conference in March 2020, tentatively in Lima.

Whether the final version of the free-trade agreement between the EU and the Mercosur states will be available by this date remains to be seen. In any case, following the basic agreement reached in June, both sides will work in tandem in the coming months to elaborate a final version of the deal, and this will then be submitted to the Council and the European Parliament for approval. Meanwhile, there is no doubt about the significance of the agreement: for the EU it will bring better business opportunities than are available today. And in the participating Latin American states, it will sow the seeds of unprecedented development - though harvesting them will only be possible with an increased awareness of which system of protection will yield the best results in each economy.