Change of lawsuit in patent nullity proceedings

from Wikipedia, the free encyclopedia

In patent nullity proceedings , an amendment is - under certain conditions - the amendment of the underlying motion and / or cause of action . This is based on what is known as a two-part dispute , which is determined by the components of the claim and cause of action and which is predominantly recognized in civil procedure law .

Modification of the claim (without also changing the plea)

General

Changes to the application are not only possible in the first instance proceedings (before the Federal Patent Court (BPatG)), but also in the appeal instance (before the Federal Court of Justice (BGH)) in accordance with § 263 and § 264 of the Code of Civil Procedure (ZPO).

Application for the full, instead of the initially applied for partial, revocation of the patent

  1. If the plaintiff initially requested the declaration of the partial destruction of a patent claim and later requests the complete annulment of this patent claim, this is not an amendment to the action within the meaning of (i. S. v.) § 263 ZPO, which requires the consent of the defendant ( Patent holder) or would have to be considered pertinent by the court, but merely an extension of the action, which is readily admissible according to Section 99 (1) PatG in conjunction with (in conjunction with) Section 264 No. 2 ZPO.
  2. This also applies in the event that the plaintiff initially requests (only) the (full) declaration of invalidity of the main claim (or a subsidiary claim) of the patent and later extends his request for declaration of invalidity also to "genuine" subclaims.
  3. If the plaintiff initially applies for the annulment of only one or more sub-claims and later extends his application for the annulment of the main claim (or one or more ancillary claims), it is not just an (unproblematic) extension of the claim i. S. v. Section 264 No. 2 ZPO, but rather an amendment to the dispute, for which Section 99 (1) PatG i. V. m. Section 263 ZPO is relevant, and accordingly only penetrates if the defendant agrees or the court deems it relevant.

Application for the partial, instead of the initially coveted, full revocation of the patent

  1. It is the opposite of the application changes explained above. Since the plaintiff does not want “more” but “less”, § 263 ZPO is not relevant. Rather, it is a matter of a limitation of the main action, which does not require approval, in accordance with Section 264 No. 2 ZPO. At the same time, however, there is also a partial withdrawal of the action, so that in addition to Section 264 No. 2 ZPO, Section 269 (1) ZPO is also relevant. The plaintiff can declare the partial withdrawal of the complaint - as well as the complete withdrawal of the complaint - during the entire duration of the process, if necessary up to the announcement of the decision in the appellate body. The partial withdrawal of the action is therefore determined in accordance with Section 99 (1) of the Patent Act in conjunction with V. m. §§ 264 No. 2, 269 Paragraph 1 ZPO, according to which - at least until the start of the oral hearing on the main issue - no consent of the defendant to withdraw the action is required.
  2. A peculiarity of patent nullity proceedings compared to "normal" civil proceedings, however, is that, according to the highest court rulings - contrary to Section 269 (1) ZPO - the defendant's consent should not be required even if the action is only withdrawn after the start of the oral hearing.

Change of plea

Effects on the subject of the dispute

After underlying this concept of two-tier subject-matter of the dispute changes (even) if the action fundamentally changed, regardless of whether a change also of the claim is done in addition or not. Since the plaintiff specifies the direction in which the patent is to be checked for legal validity by stating a specific cause of action, in the case of changes in the subject matter of patent nullity proceedings, the emphasis is usually on changes to the cause of the complaint and less on changes to the motion of the complaint , although the latter are procedural Consequences, as set out above, are comparatively complicated. Under what conditions is there a change in the plea? In accordance with what has been said above, an - initially asserted - cause of action changes if, instead of or in addition to one of the above, another cause of action from the general catalog (see the examples below) is asserted.

Examples

  1. A change in the plea is z. B. before, if a lack of patentability according to § 22 para. 1, 1st alt. PatG i. V. m. Section 21 (1) No. 1 PatG based annulment action later with inadmissible extension according to Section 22 (1), 1st alt. i. V. m. § 21 para. 1 no. 4 PatG is justified, for example because the plaintiff came to the opinion in the course of the proceedings that the plea of ​​lack of patentability may not be upheld.
  2. There is also a change in the plea if the plaintiff has initially put forward a ground for nullity, e.g. B. lack of patentability, in the course of the proceedings by one or more other grounds for invalidity, e.g. B. insufficient disclosure and / or impermissible expansion, etc., added.
  3. On the other hand, there is no change in the plea if the plaintiff - z. B. - his request is initially (only) based on the lack of novelty of the patent subject and later asserts - as a substitute or in addition - a lack of inventive step (lack of "inventive step") and / or a lack of commercial applicability. Because if there is a lack of novelty, inventive step or commercial applicability, there are only three of several possible alternative requirements for one and the same plea, namely the lack of patentability, § 21 para. 1 no. 1 in conjunction with. V. m. Section 1 , Section 2 , Section 3 , Section 4 and Section 5 PatG.
  4. The situation is similar if the plaintiff initially asserts that the subject matter of the patent is not sufficiently fully disclosed - for the person skilled in the art to rework it - and later claims that there was no sufficiently clear disclosure. Both variants of justification fall under the cause of action of Section 21 (1) No. 2 PatG. There is therefore no change in the plea here either .

Procedural legal consequence of a change in the cause of action

If there is a change in the cause of action, it means a change in the action i. S. v. Section 99 (1) PatG in conjunction with V. m. Section 263 ZPO, which requires the consent of the defendant or the recognition of the relevance by the court. Changes to the cause of action, thus changes to the action, are - in accordance with Section 263 ZPO - also permissible in the appellate body.

See also

literature

  • Dietrich Scheffler, The subject of the dispute, its amendment and its procedural legal consequences in patent nullity proceedings, in: Rundbrief Deutscher Verband der Patentingenieure und Patentassessoren (VPP), No. 2, Munich, June 2005, pp. 60 ff.
  • Peter Schlosser, Civil Procedure Law I, Cognitive Procedure, Munich 1983.
  • Heinz Thomas, Hans Putzo, Civil Procedure Code, 23rd edition, Munich 2001 (quoted: Thomas / Putzo-Agent)
  • Georg Benkard, Patent Act, Utility Model Act, 10th edition, Munich 2006 (quoted: Benkard editor)
  • Rainer Schulte, Patentgesetz, 6th edition, Cologne, Berlin, Bonn, Munich 2001 (quoted: Schulte)

Individual evidence

  1. ↑ a b c Dietrich Scheffler, The subject of the dispute, its amendment and its procedural legal consequences in patent nullity proceedings, in: Rundbrief Deutscher Verband der Patentingenieure und Patentassessoren (VPP), No. 2, Munich, June 2005, p. 64
  2. ^ BGH, in: Journal of Commercial Legal Protection and Copyright (GRUR), 1955, p. 466 f. See also: Benkard-Rogge, Patentgesetz, Utility Model Act, 10th edition, Munich 2010, Rn 10 on § 22 PatG
  3. ↑ Schulte, Patentgesetz, 6th edition, Cologne, Berlin, Bonn, Munich 2001, Rn 22 on § 21 PatG
  4. ↑ Busse / Keukenschrijver , Patentgesetz, 8th edition, Berlin, New York 2016, Rn 32 to § 82 PatG and Rn 9 to § 116.
  5. ↑ See Section 99 (1) PatG in conjunction with (in conjunction with) Sections 263 and 267 ZPO
  6. ↑ BGH, in: GRUR 1955, p. 531 f
  7. ↑ Ancillary claims are patent claims independent of the content of the main claim and with their own inventive content.
  8. ↑ “Genuine” subclaims are patent claims that are dependent on the content of the main claim and have no inventive content of their own.
  9. ↑ Liedl (Ed.): Decisions of the BGH in Zivilsachen (BGHZ) - Nullity Actions, Vol. 65/66, pp. 328, 332.
  10. ↑ Busse / Keukenschrijver, Patentgesetz, 8th edition, Berlin, New York 2016, Rn 8 to § 83 PatG.
  11. ↑ A change in a complaint is “relevant” if it promotes the final, objective settlement of the dispute and prevents further litigation; see. BGH, in: Zeitschrift Neue Juristische Wochenschrift (NJW) 1985, p. 1841, and NJW 2000, p. 803.
  12. ↑ Liedl (Ed.): Decisions of the BGH in Zivilsachen (BGHZ) - Nullity Actions, Vol. 59/60, pp. 432, 436.
  13. ↑ Thomas / Putzo-Thomas, Civil Procedure Code, 25th edition, Munich 2003, Introduction II, Rn 5
  14. ^ BGH, in: GRUR 1953, pp. 385, 387.
  15. ↑ BGH, in: GRUR 1962, p. 294 f.
  16. ↑ BGH, in: GRUR 1964, p. 18 f. According to Busse / Keukenschrijver , Patentgesetz, 8th edition, Berlin, New York 2016, Rn 40 to § 82 PatG, a withdrawal of the action without the consent of the defendant is possible at any stage of the proceedings until it becomes final .
  17. ^ BGH, in: GRUR 1962, pp. 317, 322.
  18. ↑ So already the Reichsgericht (RG), in: Zeitschrift “Brandenschutz undbewerb” (MuW) 1939, pp. 215, 219 and 291, 293
  19. ^ German Patent Office (DPA), in: Journal "Sheet for Patent, Pattern and Signs" (BlPMZ) 1926, p. 116 f
  20. ↑ before the BGH, Section 110 (1) sentence 1 PatG