This article explores how far patent damages can extend beyond expiry, where post‑expiry sales are linked to earlier infringement. Recent Munich decisions take sharply different approaches: one allows limited recovery for later sales, with diminishing weight over time, while the other emphasises that expired patents fall into the public domain and should not normally generate damages. The divide is driven in part by the type of patent involved—apparatus versus process—and highlights that the scope of damages depends not only on patent law, but on economic connection, claim type and procedural timing.
The question of the extent to which patent holders can participate in sales generated only after the expiration of the patent protection period has gained new momentum through two recent decisions by the Munich courts . The focus is on the interpretation of the German Federal Court of Justice (BGH) decision concerning upholstery reworking machines [1], in particular its scope for subsequent sales and its applicability to indirect infringements in the case of process patents.
The starting point is the Federal Court of Justice ‘s finding that profits from ancillary business activities can also be included in damages, provided they are based on the use of the patented teaching during the term of protection and have a sufficient economic connection to the infringing subject matter. However, this very broadening of the concept of damages leaves open the crucial follow-up question of how far this connection extends in terms of time.
The Munich Regional Court I (LG München I) [2] adopts these principles in its proceedings for damages and develops a far-reaching economic attribution from them. It also includes sales after the patent’s expiration, particularly for consumables used in connection with machines sold during the term of protection. To account for the diminishing causality of the original infringement, the court introduces a separate tapering model (” blurry factor”) that gradually reduces the attribution over a period of up to ten years. This line of reasoning, as applied to upholstery-related machinery, is understood as opening the door to a more comprehensive economic consideration of the infringer’s profits .
In contrast, the Higher Regional Court of Munich takes [3] a significantly more restrictive approach. It ties the liability for damages more closely to the patent term and recognizes subsequent sales only to the extent that they result directly from infringements committed within that period. From the Senate’s perspective, the principle of the public domain is particularly decisive: After the expiration of a process patent, its use is unrestricted, so that sales from such use can generally no longer be classified as resulting from infringement.
The differing applications of the German Federal Court of Justice (BGH) decision are largely determined by the respective claim category. While the upholstery reworking machine concerned an apparatus claim , the Munich decisions were based on a process patent . With apparatus claims, the economic exploitation typically manifests itself in a concrete product, so that subsequent sales appear more as a continuation of the infringement. With process patents, however, the invention is only realized in use; the attribution of later sales is therefore structurally less direct and more likely justifies a restrictive approach.
However, this does not constitute a methodological error on the part of the Munich Regional Court I. The decisive factor is the procedural situation: The decision in the higher-level proceedings was issued at a time when only an open and unspecific preliminary judgment existed, thus allowing for a corresponding degree of interpretation. It was only through the subsequent decision of the Munich Higher Regional Court that the scope of liability was clarified and this scope of interpretation subsequently narrowed. It is now clear that there is no longer any room for a different determination of the extent of damages in the further higher-level proceedings. Clarification of the overarching question of the extent to which the principles of the upholstery reworking machine decision are applicable to process patents could only have been achieved by way of an appeal against the preliminary judgment, which, however, was not permitted here.
The Munich decisions thus exemplify that the scope of liability for damages is not determined solely by substantive law. Rather, it arises from an interplay of the claim category, economic attribution, and – not least – procedural binding effect in the appeals process.
[1]GRUR 2024, 273
[2]Munich Regional Court I, Judgment of April 22, 2026, Case No. 7 O 8367/25
[3]Higher Regional Court of Munich, Judgment of May 7, 2026, Case No. 6 U 525/23 e
Ute Pfaller, Dr. Ernst-Ulrich Wittmann and Dr. Hendrik Bahre
This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP May 2026
