Objection of the free state of the art

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Objection of the free state of the art , also called " defense ...", is a means of defense of a person accused of patent infringement by the patent owner . In the patent infringement process, the latter asserts that the acts of use criticized by the patent proprietor only correspond to the "free" state of the art, which was accessible to everyone before the patent was applied for, and are therefore not illegal .

prehistory

Limitation period

The objection to the free state of the art must be seen against the background of Section 37 (3) of the old version of the Patent Act (PatG old version). According to this provision, a so-called preclusive period applied such that a patent could only be attacked by an action for annulment within a period of five years (after grant) . At the end of this period, the patent was unassailable - regardless of the same anticipatory state of the art (which might not be recognized until later).

Jurisprudence of the Reichsgericht

Given the conflicting interests resulting from the situation described above, patent holder on the one hand, general public on the other, the Reichsgericht (RG) in its decision of January 7, 1938 , considered the general public's right to participate in the given technical achievements with as little monopoly as possible as more important and restricted them Rights of the patent owner (exclusive right of use and right of prohibition) to the "immediate subject matter" of the patent, excluding all possible conceivable equivalent solution features. However, the RG has rejected a complete loss of the protective effect of the patent in suit. As a justification, it pointed out that there was no legal rule according to which previously used and previously described objects would in any case be in the public domain without any consideration of patent protection granted later. Admittedly, a patent with such limited scope could be circumvented comparatively easily.

Relevance according to the current legal situation

Situation after the expiry of the limitation period

The objection of the free state of the art amounts indirectly to the assertion that the patent in suit does not have any protective effect because the invention claimed therein is merely the state of the art, which was already known before the filing date of the patent and is therefore "free for everyone." "was usable. Consequently, the patent in suit should not have been granted at all. After the elimination of the five-year preclusive period in the context of patent infringement proceedings standardized in Section 37 (3) PatG, old version, there is no longer any room for such an argument. Because the defendant now has the option at any time to attack the patent in suit with an action for nullity ( Section 81 PatG). Regardless of this, the objection of the free state of the art also remains in view of the distribution of competences between the issuing authorities ( German Patent and Trademark Office (DPMA) and Federal Patent Court ) and nullity instances (Federal Patent Court and Federal Court of Justice (BGH)) on the one hand and the infringement courts ( ordinary jurisdiction ) on the other hand the factual effect of the granted patent as an administrative act by the granting authority is still controversial.

Case law of the Federal Court of Justice

According to the fundamental, so-called Formstein decision of the Federal Court of Justice of 1987, an objection of the free state of the art is only permitted in patent infringement proceedings if an embodiment of the defendant challenged by the patent owner (plaintiff) as an equivalent use of the patented invention with regard to the Prior art is not an invention. In this case there is no patent infringement. In the case of an identical , i.e. H. on the other hand, a collision that corresponds to the literal meaning of the patent claims of the patent in suit has occurred, and the defendant's objection of the free state of the art is irrelevant in this case.

The state of the art to be taken into account in this context must be based on the relevant features of Section 3 of the Patent Act. The same rules apply to the state of the art as to the assessment of the protectability of the patent in suit, regardless of whether this state of the art was taken into account in the procedure for granting the patent in suit.

Individual evidence

  1. ↑ Section 139 of the Patent Act (PatG)
  2. ↑ repealed by the ordinance amending the Patent Act of October 23, 1941, RGBl. II, p. 372
  3. ↑ Reimer - Nastelski , Patent Law and Utility Model Law , 3rd edition, Cologne, Berlin, Bonn, Munich 1968, p. 313 f
  4. ^ RG, in: Journal " Commercial Legal Protection and Copyright " (GRUR) 1938, p. 252
  5. ↑ Reimer-Nastelski (individual references 3), p. 270
  6. ↑ Decisions of the Imperial Court in Civil Matters (RGZ), vol. 167, p. 339 ff
  7. ↑ Benkard - Bruchhausen , Patentgesetz, Utility Model Act, 10th edition, Munich 2009, Rn 60 on § 9 PatG
  8. ↑ Benkard-Ullmann (individual ref. 7), marginal number 154 on § 14 PatG
  9. ↑ Decisions of the Federal Court of Justice in Civil Matters (BGHZ), vol. 98, p. 12
  10. ↑ Benkard-Ullmann (individual ref. 7), marginal number 156 to § 14 PatG

literature

  • Eduard Reimer, Patent Act and Utility Model Act, 3rd ed., Cologne, Berlin, Bonn, Munich 1968 (quoted: Reimer editor)
  • Georg Benkard, Patent Law Utility Model Law, 10th edition, Munich 2006 (quoted: Benkard editor)