Action for annulment (patent law)
In German patent law, the nullity action is the action against a patent owner for (partial) nullification of his patent . The patent is either a German patent or the German part of a European patent.
Legal basis
In the German Patent Act (PatG) , § 21 and § 22 provide the material and § 81 ff the procedural legal basis for the nullity action.
The European patent law ( European patent convention ) does not recognize any procedure corresponding to the nullity action. For objection see under delimitation.
Regulation content and purpose
With the nullity action, the plaintiff can initiate the review of the patent's protectability at any time after the expiry of the patent's opposition period.
Very often the nullity suit is a response to a patent infringement suit. In the German patent infringement process, it is not permissible to raise the lack of legal validity of a patent as an objection to patent infringement. Rather, the question of protectability needs to be clarified separately. After the objection period has expired, an action for annulment is the method of choice. The roles of the plaintiff and the defendant are then reversed in the nullity action compared to the infringement case: the infringing defendant becomes the nullity plaintiff, the infringement plaintiff becomes the nullity defendant.
The outcome may be dismissal or partial or total nullity of the patent in question. Depending on the scope, this can then have an impact on a possibly pending infringement process.
Demarcation, differences
The institute of opposition is also familiar with German and European patent law . In substance, the same questions are discussed in opposition proceedings as in an action for annulment. However, the objection can only be raised for a limited period after the patent has been granted, while the nullity action can be raised at any time. The cost aspects of the opposition proceedings are regulated differently from those of the nullity action.
If an action for annulment is brought against the German part of a European patent, this has no legal effect on the parts of the European patent in other European countries. If an objection is lodged against a European patent before the European Patent Office , it has, if permissible, effect against all national elements of the European patent.
If an opposition is withdrawn by the opponent, the Patent Office can continue the opposition proceedings in accordance with the principle of official investigation. If, on the other hand, an action for annulment is withdrawn, the action is ended.
Grounds for nullity
The validly arguable grounds for invalidity are finally specified in Section 22 PatG (with reference to Section 21).
Lack of material patentability
The invention is compared to. Not worthy of patent in the state of the art, d. H. there is a lack of inventive step or a lack of novelty or another patenting exclusion of §§ 1 to 5 PatG.
The attack on account of lack of novelty or lack of inventive step is the most common reasoning for actions for annulment.
Lack of disclosure of the invention
The technical description of the invention is so inadequate that it cannot be carried out.
Unlawful removal
The registered owner is not the legitimate owner of the patent because he is not the inventor or his successor in title. In this case, only the person actually entitled is entitled to take legal action.
Illegal extension
The subject matter of the patent goes beyond the content of the originally filed application.
Protection area extension
In a previous opposition or nullity proceedings, the scope of protection of the previously granted patent was expanded.
Procedure
Competent court, legal process
The Federal Patent Court (BPatG) in Munich is exclusively responsible for nullity actions. Five nullity panels are set up in it. The senates decide by judgment.
The court of appeal against judgments of the BPatG is the Federal Court of Justice (BGH) in Karlsruhe.
procedure
The statement of claim for the nullity action is submitted in writing to the Federal Patent Court (BPatG) in Munich. After the complaint has been filed and the court fee has been paid, the BPatG serves the complaint on the defendant. This is followed by a written procedure.
The revocation plaintiff will argue against the patentability of the challenged patent and must justify this. He can do this on the basis of the material cited in the examination procedure before the patent was granted (state of the art) or he can provide new material. The patent proprietor can amend his patent if he deems this necessary, in particular by submitting amended patent claims that are to be used as the basis for the further process instead of the earlier ones.
Sooner or later there will be an oral hearing and finally a judgment of the responsible senate.
The duration of the proceedings is currently around 25 months.
Amendments to the patent
If the patent proprietor wishes to change his patent, these changes must meet two conditions in order to be admitted to the substantive examination:
- As in the examination procedure, the changes must meet the disclosure requirement of Section 38 PatG. This means that changes may not go beyond the content of the application once filed.
- The scope of protection of the patent must not be extended. No restrictions on the scope of protection may be deleted, because this would in turn constitute a reason for invalidity according to Section 22 PatG.
Cost, item value
The cost issues for an annulment action are designed as in conventional civil proceedings:
- The court costs and the lawyer's fees depend on the value of the subject and are regulated in the Court Fees Act (GKG) and the Lawyers Fees Act (RVG). The parties may also make other cost agreements with their attorney. The annulment plaintiff must first pay the court costs.
- Since the RVG does not apply to patent attorneys, their remuneration depends on the agreement with the client. It can e.g. B. the analogous application of the RVG can be agreed.
- Each party bears its own costs during the proceedings.
- In accordance with the principle of succumbing, the winner is entitled to a claim for reimbursement of costs against the loser.
The value of the nullity suit is often higher than that of a corresponding infringement suit, because the value of the nullity suit includes the value of the corresponding infringement matter, but also the value of the patent against other market participants.
details
Effect ex tunc
A (partial) declaration of invalidity of the patent is generally effective ex tunc, i.e. back to the past until it was granted. If claims have been made for damages for the past, the ex tunc declaration of nullity means that no damages are to be paid for a possible breach in the past. However, license fees that have already been paid do not usually have to be repaid.
Investigation principle
Since patents are rights against everyone, the court can also consider circumstances beyond the submission of the parties that are relevant to the questions to be discussed. However, if the plaintiff withdraws the action, the proceedings are ended.
Suspension of infringement proceedings
The court dealing with the infringing matter can suspend the infringement process after the annulment action has been brought until it has been decided, as the latter is preliminary for the former. The decision on this is at the discretion of the infringement court.
stand-in
The parties can be represented before the BPatG. This can be done by a lawyer or a patent attorney. Often both are involved together, as they are also handling the infringement claim together.
Pressure to agree
In the oral hearing on an action for annulment, the court often works massively towards an agreement between the parties. This agreement should then also contain the infringement aspect.
See also
Web links
Individual evidence
- ^ Annual report of the BPatG, 2014. 2014, accessed on May 12, 2016 .
