Preliminary Injunction issued in a Compulsory License Proceedings concerning a Medicament against AIDS

An Isenbruck Bösl Hörschler LLP team headed by Fritz Lahrtz is currently representing the proprietor of a pharmaceutical patent together with attorneys-at-law of an internationally known German law firm in a preliminary injunction proceedings according to § 85 PatG before the German Federal Patent Court concerning the request for a compulsory license according to § 24 PatG (German Patent Act). The matter in dispute concerns a medicament against AIDS (3 Li 1/16 and 3 LiQ 1/16).

The relevant sections of §24 PatG read as follows:

(1) The non-exclusive authorisation to commercially use an invention shall be granted by the Federal Patent Court in an individual case in accordance with the following provisions (compulsory licence) where

  • a licence seeker has, within a reasonable period of time, unsuccessfully attempted to obtain permission from the proprietor of the patent to use the invention on reasonable commercial terms and conditions, and

  • the public interest calls for the grant of a compulsory licence.

(5) Where the proprietor of the patent does not apply the patented invention in Germany or does not do so predominantly, compulsory licences in accordance with subsection (1) may be granted to ensure an adequate supply of the patented product on the German market. Import shall thus be equivalent to the use of the patent in Germany.

(6) The grant of a compulsory licence in respect of a patent shall be admissible only after the patent has been granted. The compulsory licence may be granted subject to limitations and made dependent on conditions. The extent and the duration of use shall be limited to the purpose for which the compulsory licence was granted. The proprietor of the patent shall be entitled to remuneration from the proprietor of the compulsory licence, such remuneration being equitable in the circumstances of the case and taking into account the economic value of the compulsory licence. Where, in relation to recurrent remuneration payments due in the future, there is a substantial change in the circumstances which governed the fixing of the amount of remuneration, each party shall be entitled to require a corresponding adjustment. Where the circumstances upon which the grant of a compulsory licence was based no longer apply and if their recurrence is improbable, the proprietor of the patent can require withdrawal of the compulsory licence.

Section (1) of §85 PatG reads as follows:

(1) In proceedings for the grant of a compulsory licence the claimant may, at his request, be permitted to use the invention on the basis of an injunction if he substantiates that the requirements under § 24 (1) to (6) are fulfilled and that there is an urgent need, in the public interest, for the immediate grant of the permission.

These cases are very rare proceedings, and according to the court itself it has never been faced with a request for a preliminary injunction for a compulsory license before. In the last two days, the hearing in the preliminary injuction proceedings took place and ended with the decision to grant the compulsory license including imposing on the claimant the obligation to pay reasonable royalty fees. The exact royality rate will then be determined in the proceedings on the merits. The next step of this dispute will be the oral hearing in the corresponding infringement proceedings before the German District Court of Dusseldorf.