The following persons are authorized to conduct patent infringement proceedings:
the owner of the patent entered in the register,
the exclusive licensee,
the simple licensee under certain conditions.
The exclusive licensee may independently enforce the claims arising from §§ 139 ff. Patent Act. He is not dependent on an assignment of claims and may claim compensation for his own damage caused by the infringing acts (established case law, see e.g. BGH GRUR 2008, 896 et seq.)
The simple licensee, on the other hand, cannot independently assert the claims under Sec. 139 et seq. In order for the simple licensee to be actively legitimised, it is necessary that the patentee or the exclusive licensee authorises the simple licensee to assert the claims to injunctive relief, recall and destruction in his own name (so-called declaration of status of proceedings) and assigns the claims to information and accounting, compensation and damages to the simple licensee. Furthermore, the simple licensee must have a vested interest in the enforcement of the claims. Such “own interest” of the ordinary licensee is regularly given because he may lose sales revenue due to the actions of the infringer.
In the present case a “technical licence agreement” was concluded on 1.11.2011. It was obviously not clear from the wording whether the second plaintiff had received an exclusive or a simple licence. In the legal dispute, the second plaintiff submitted a supplementary agreement dated 23/26 June 2017 to the “technical licence agreement” of 1 November 2011. In this agreement it stated inter alia :
“In clarification of Art. 7.1 of the existing license agreement, the exclusive licensee granted to H to C for the German part of the European Patent EP…. retroactively valid from 1.11.2011.”
The declaration of litigation status and assignment agreement required for the active legitimation of the simple licensee was obviously not available. Accordingly, the legitimation to take action of the second plaintiff was only given if the retroactive clarification/confirmation of the exclusive license was effective. If this was not the case, the action would have to be dismissed for lack of legitimation to act.
The Higher Regional Court of Düsseldorf initially stated that it was not possible to retroactively convert an exclusive licence into a simple licence by means of a later agreement because of the character of an exclusive licence which is effective towards everyone. It was also not possible to retroactively convert a simple licence into an exclusive licence by means of a later agreement.
However, a retroactive grant of an exclusive license was unobjectionable if the licensee had exercised it in the period covered by the agreement in any case with the consent of the property right owner as such and had made use of the protected technical teaching. In such a case, the subsequent “granting” of an exclusive license would ultimately only bring the already de facto situation into paper form. The subsequent licensing would then correspond to a subsequent approval of the practice practised until then, which would take into account the fact that the licensee had in fact already had the same position as he later had under the exclusive license agreement.
According to the Oberlandesgericht Düsseldorf, those conditions are fulfilled in the present case. Accordingly, the second plaintiff has been the exclusive licensee since 1 November 2011 and thus actively legitimised.
However, if the second plaintiff had not been able to prove that it had in fact already had an exclusive licence since 1 November 2011, this might have had the consequence that it would not have been able to prove its active legitimation with the consequence that its action would have been dismissed.
The licensor in the decided case was probably domiciled abroad (Japan). The Düsseldorf Higher Regional Court therefore also had to deal with the question of which law was applicable in particular to the Supplementary Agreement of 23/26 June 2017.
For the question of the applicable law, a distinction must be made between the granting of an exclusive licence and the granting of a simple licence.
For the granting and transfer of an exclusive license right, the so-called protection country principle is relevant. The connection to the country of protection principle is mandatory and not open to a different choice of law by the parties. If the subject matter of the exclusive license is thus a German patent or the German part of a European patent, German law applies to the granting and transfer of the exclusive license.
For the granting and transfer of a simple licence, on the other hand, the contractual statute is relevant. For all contracts concluded since 17.12.2009, the Rome I Regulation is applicable in the European legal area. For contracts concluded before 17.12.2009, Art. 27, 28 EGBGB old version continue to apply.
The supplementary agreement of 23/26 June 2017 at issue here was concluded after 17 December 2009, so that the Rome I Regulation was applicable. Pursuant to Art. 3 para. 1 sentence 1 Rome I Regulation, a contract is subject to the law chosen by the parties. The contracting parties had wisely made use of this option and agreed on the applicability of German law.
If the parties had not made a choice of law, the question of the applicable law would have had to be assessed according to Art. 4 Rome I Regulation. For license agreements, the question of the applicable law is, according to the prevailing opinion, governed by the law of the licensor’s habitual residence (see Munich Commentary on the BGB/Martiny, International Private Law II, on Art. 4 Rome I Regulation, para. 265). Thus, if the contracting parties had not made a choice of law in the present case, the law of the licensor’s habitual place of residence would have been decisive for the supplementary agreement of 23.6/26.6.2007, i.e. Japanese law. This would have given the defendants the opportunity to dispute that the Supplementary Agreement of June 23/26, 2017 was valid under Japanese law. This in turn might have led to the German court having to obtain an expert opinion on the question of validity under foreign law, § 293 ZPO.
In the present case, the parties to the contract have “circumnavigated” this “pitfall” by agreeing to German law (which is always recommended for legal disputes in Germany in the case of such agreements).