Patent nullity litigation

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Patent invalidity proceedings are legal proceedings that can lead to the invalidation of a patent , Section 22 (1) of the Patent Act. The patent can also be partially declared null and void, Section 22 (2) in conjunction with (in conjunction with) Section 21 (2) sentence 1 of the Patent Act. According to § 22 para. 2 i. V. m. Section 21 (3) sentence 1 of the Patent Act "the effects of the patent and the application are deemed not to have occurred from the start". If the patent is declared null and void, this is done retrospectively . The same applies to a (possible) partial declaration of invalidity, sentence 2 of the aforementioned standard.

Litigation specifics

Legal nature

The patent nullity process deals with the review of the grant of a patent. This was ordered by an administrative authority, the German Patent and Trademark Office (DPMA), and is therefore an administrative act. The patent nullity process is similar to an administrative court procedure. The decisive difference to the administrative process , however, is that the patent nullity process according to Section 81 (1) sentence 1 PatG is carried out between persons with equal rights under civil law , namely a plaintiff (the so-called nullity plaintiff) and the holder of the challenged patent. The law does not provide for the involvement of the authority actually responsible for the administrative act, the granting of patents, the DPMA. For example, Section 99 (1) of the Patent Act consequently stipulates that "the Courts Constitution Act and the Code of Civil Procedure must be applied accordingly" in patent nullity proceedings , "if the peculiarities of the procedure ... do not preclude this". The patent nullity process is, after all, a civil process in terms of its legal nature .

Introduction and decision

The patent nullity process is initiated by legal action, Section 81 (1) sentence 1 of the Patent Act. According to sentence 2 of the aforementioned regulation, this must be directed against the person entered in the register as the patent holder. The patent nullity process is decided by judgment, Section 84, Paragraph 1, Sentence 1 of the Patent Act, whereby, in accordance with Sentence 2 of the aforementioned provision, the admissibility of the action can be decided in advance by means of an interlocutory judgment .

Jurisdiction

The Federal Patent Court (BPatG) is primarily responsible for carrying out the patent nullity process, Section 81 (4) PatG, according to which "the action" for declaration of (full or partial) nullity "must be brought in writing at the patent court". The jurisdiction for the second and at the same time last instance lies with the Federal Court of Justice (BGH), § 110 Abs. 1 PatG. According to this provision, "the judgments of the nullity senates of the patent court ... are appealed to the Federal Court of Justice".

Subsidiarity (subordination)

Pursuant to Section 81 (2) of the Patent Act, a patent nullity litigation may not take place as long as "an objection" (cf. Section 59 of the Patent Act) "can still be raised or opposition proceedings are pending". Otherwise the action for a declaration of invalidity of the patent is inadmissible. The patent nullity process is therefore subsidiary to any (possible) priority opposition proceedings against the patent.

Legal standing

In principle, anyone is entitled to take legal action in the patent nullity proceedings. So it is a popular lawsuit . The only exception is the so-called unlawful removal (= theft of intellectual property). Here is only the "injured person", i.e. H. in particular the inventor or his legal successor , has the right to sue. According to § 6 PatG, (only) the inventor (s) and his (their) legal successor have a right to the patent .

Disposition maxim (disposition principle)

The parties (nullity plaintiff and patent owner) have control over the procedure insofar as the examination and decision in the patent nullity process must be kept within the scope of the applications made. According to § 99 PatG i. V. m. According to Section 308 of the German Code of Civil Procedure (ZPO), a patent may not be declared null and void beyond the scope requested by the plaintiff. It also follows that the patent nullity process ends when the nullity plaintiff withdraws the action (or an appeal he has lodged against a negative judgment). In this case, the patent must not be declared invalid by the court.

Principle of investigation

In patent nullity proceedings - unlike in "normal" civil proceedings - the principle of investigation of Section 87 (1) PatG applies , according to which the court investigates the facts ex officio and is not bound by the parties' submissions and requests for evidence. However, Section 87 (1) PatG only relates to the problem of how the relevant facts for the court decision must be determined, but not to the questions of process design and the disposition of the process itself or its subject. In contrast to the negotiating principle that applies in "normal" civil proceedings , it is not up to the parties in patent nullity proceedings to decide which facts they want to present to the court for a judgment. It is therefore not in patent revocation process the respondent (proprietor) possible through an acknowledgment (v i. P.) Within the meaning of § 307 ZPO relative to induce the arguments put forward by the applicant, the facts, the Court relied on in accepting without further examination of the application.

Substantive legal foundations

The patent invalidity process then leads to the (full or partial) declaration of invalidity of the patent if at least one of the legal grounds for invalidity (see below) is given. An application by the plaintiff ( application for action ), Section 81 (5) sentence 1 of the Patent Act, expressly aimed at a declaration of the nullity or partial nullity of the patent to be designated is also required .

Lack of patentability

The patent is declared null and void if it is not patentable, Section 22 (1) in conjunction with V. m. Section 21 (1) no. 1 PatG. This is the case if at least one of the requirements for patent protection specified in Sections 1 to 5 of the Patent Act is not met.

Not an invention

According to Section 1 (1) of the Patent Act, there is no patentability if the subject of the patent is not an invention . A legal definition of the term "invention" does not exist, probably because, despite various efforts by jurisprudence and literature, it has not yet been possible to establish a definition of the term "invention" that is unassailable in all aspects. A definition that comes very close to the essence of the invention and which was conceived by Bruchhausen closely following Lindenmeier is as follows: "An invention is an instruction for the use of forces or substances of nature with the arbitrarily repeatable success of an immediately usable result that is not the previous one State of the art and was not to be expected within the framework of the average technical ability ". Section 1 (3) of the Patent Act contains a (non-exhaustive) list of what is not an invention.

Not novelty

The subject matter of the patent is not patentable if the invention is not new, Section 1 Paragraph 1 Sentence 1 2nd Clause (HS) PatG. According to Section 3 Paragraph 1 Clause 1 PatG "an invention is considered new" if it does not belong to the state of the art ". Conversely, this rule is not novelty if the invention belongs to the prior art. According to Section 3 (1) Sentence 2 of the Patent Act, the state of the art includes "all knowledge that was made available to the public through written or oral description, use or in any other way prior to the date relevant to the seniority of the application". Further details, the state of the art i. S. v. Section 3, Paragraph 1, Clause 1 of the Patent Act can be found in Paragraph 2 ff of Section 3.

Not based on an inventive step (no inventive step)

Patentability is also excluded if the invention is not based on an inventive step (no "inventive step"), Section 1 Paragraph 1 Clause 1 3rd HS PatG. Reversing the legal definition of § 4 sentence 1 PatG, "an invention" is not "based on an inventive step if it is obvious to the skilled person ... from the state of the art".

Commercial inapplicability

Furthermore, patentability is not given if the invention is not commercially applicable, reverse conclusion from Section 1 Paragraph 1 Clause 1 4th HS PatG. An invention is deemed not to be "commercially applicable if its subject matter cannot be manufactured or used in" any "commercial field including agriculture", reverse conclusion from § 5 PatG.

Offense against morality

Patentability is also excluded if the "commercial exploitation" of the invention "would violate public order or morality ...", Section 2 (1) 1st HS PatG, although "such a violation ... cannot be derived solely from the fact "that recovery is prohibited by law or administrative regulation", 2nd HS of the aforementioned standard. Finally, Paragraph 2 of the standard in question contains a (non-exhaustive) catalog of further exceptions for which inventions must be denied patentability despite the patentability criteria being met.

Lack of disclosure

The patent will be declared null and void if it does not disclose the invention so clearly and completely that a person skilled in the art can carry it out, Section 22 (1) i. V. m. Section 21 Paragraph 1 No. 2 PatG.

Illegal extension

According to § 22 Paragraph 1 1st Alt. i. V. m. According to Section 21 (1) No. 4 PatG, the patent is also declared null and void if "the subject matter of the patent goes beyond the content of the application in the version in which it was originally filed with the authority responsible for filing the application The same applies if the patent is based on a divisional application or a new application filed in accordance with Section 7 (2) of the Patent Act and the subject matter of the patent goes beyond the content of the earlier application in the version in which it was used for the filing of the earlier one Notification competent authority has originally been filed ". To determine an inadmissible extension i. S. v. Section 21 (1) No. 4 PatG is the subject of the granted patent, i. H. to compare the teaching defined by the patent claims, possibly to be interpreted with the help of a description and drawing, with the entire content of the original application documents. Accordingly, e.g. B. an extension of the patent claims compared to the original version thereof within the framework of § 21 para. 1 No. 4 PatG may still be permissible.

Extension of the protection area

The patent is also declared null and void if "the scope of protection of the patent has been extended", Section 22 (1) 2nd alternative (alternative) Patent Act. At first sight one could use the "inadmissible extension" i. S. v. Section 22 Paragraph 1 1st Alt. i. V. m. Section 21 (1) no. 4 PatG and the "extension of the scope of protection" according to Section 22 (1) 2nd alt. PatG for one and the same reason for invalidity. However, the provision of Section 22 (1) 2nd alt. PatG account for the fact that the scope of protection of a patent that has already been granted may have been extended subsequently, namely in an opposition procedure ( carried out after the patent was granted ). When creating Section 22, Paragraph 1, 2nd alt. PatG assumes that an extension after the patent has been granted is not already subject to the "inadmissible extension" according to § 22 para. 1 1st alt. i. V. m. Section 21 (1) no. 4 PatG does not apply if it is within the scope of the original disclosure of the patent application .

Unlawful removal

According to § 22 Paragraph 1 i. V. m. Finally, according to Section 21 (1) No. 3 Patent Act, the patent is also declared null and void if "the essential content of the patent has been taken from the descriptions, drawings, models, equipment or facilities of another person or from a method used by him without his consent (unlawful removal) ". This is a case of theft of intellectual property, for the assertion of which not everyone, but only the "injured party" (inventor or his legal successor) is entitled to make an application and therefore has the right to sue, Section 81 (3) PatG.

See also

Individual evidence

  1. ↑ See decisions of the Federal Administrative Court (BVerwGE), vol. 8, p. 350.
  2. ↑ Benkard-Rogge, PatG GebrmG, 10th edition, Munich 2010, marginal number 21 on § 22 PatG
  3. ↑ Benkard-Rogge, PatG GebrmG, 10th edition, Munich 2010, Rn 45 on § 22 PatG
  4. ↑ So already the Reichsgericht (RG), in: Journal of Commercial Legal Protection and Copyright (GRUR), pp. 738, 740
  5. ↑ Benkard-Schäfers, PatG GebrmG, 10th edition, Munich 2010, Rn 2 on § 87 PatG
  6. ↑ Benkard-Bruchhausen, PatG GebrmG, 10th edition, Munich 2010, marginal number 43 on § 1 PatG
  7. ^ Journal "Mitteilungen der Deutschen Patentanwälte (Mitt.) 1959, pp. 121, 124
  8. ↑ Federal Court of Justice (BGH), in: Journal of Commercial Legal Protection and Copyright (GRUR) 1992, p. 158
  9. ↑ BGH, in: GRUR 1988, p. 197
  10. ^ A b 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. 63
  11. ↑ through the Community Patent Act (GPatG) of July 26, 1979 (Federal Law Gazette I, p. 1269)
  12. ↑ See in detail the official justification for the amendment to the law, abr. in: Journal "Blatt für Patent-, Muster- undzeichenwesen" (BlPMZ) 1979, pp. 276, 281 to no. 12.

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, Code of Civil Procedure, 23rd edition, Munich 2001.
  • Georg Benkard, Patent Act, Utility Model Act, 10th edition, Munich 2006 (quoted: Benkard editor)
  • Rainer Schulte, Patent Law, 6th edition, Cologne, Berlin, Bonn, Munich 2001.