Dipl.-Ing. Josef Bockhorni
The Federal Court of Justice decided in two judgements that in case of an expiration of the main license, a respectively granted sublicense remains in force; these judgements were made by the first Civil Senate responsible for trademark right, design act and copyright. In these judgements of the first Civil Senate, it is also mentioned that the latter has also conferred with the 10th Civil Senate which is responsible for patent law and utility model law. In this connection, the 10th Civil Senate has communicated that it shares the opinion of the first Senate of the Federal Court of Justice. Consequently, according to jurisdiction by highest judicial authority it is generally the case for intellectual property right that a sublicense remains in force when the main license expires.
These decisions by the Federal Court of Justice are pioneering as it is now clarified that in case of a termination of the contract between the main licenser and the main licensee independent of whether this happens because of lapse of time, contesting, rescission, termination or amicable termination, the agreement between the sublicenser and the sublicensee will in any case remain in force and the sub licensee may continue using the protective rights. One interesting thing is that the license fees still have to be paid to the hitherto main licensee unless the claims are assigned to the main licensor by the main licensee. Depending on the circumstances of the individual case, the assignment can also be enforced in court or by way of an action, respectively.
Federal Patent Court in the decisions “Take Five” (GRUR 2012, page 914 ff.) and “M2Trade” (GRUR 2012, page 916 ff.)
Author: Dipl.-Ing. Josef Bockhorni (Patent Attorney), Update 1/2013
Patent Attorneys and Lawyers Bockhorni & Kollegen
Munich/ Germany
www.patguard.de
