Subject of dispute in patent nullity proceedings

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The subject of the dispute in patent nullity proceedings is a procedural claim belonging to patent law, which, according to the prevailing opinion today (h. M.), is determined by the claim and - equally important - by the cause of action .

Introduction: subject of dispute in "normal" civil proceedings

Historical development

The recognition of the term in dispute in its current conception - because of the two determining components, claim and cause of action, is also referred to as the two-part term in dispute - was preceded by a decades-long dispute over the doctrines about the legal nature of the subject in dispute. The dispute was based on the one hand on the lack of a legal definition, and on the other hand in particular on the extraordinarily great importance of the subject of the dispute for civil proceedings.

Practical significance of the subject of the dispute

The subject of the dispute as the central concept of civil proceedings must in particular determine the action , Section 253 (2) No. 2 Code of Civil Procedure (ZPO), so that it has an enforceable content. In addition, the subject of the dispute is decisive for the factual and in some cases also for the local jurisdiction of the court, § 23 to § 23b Courts Constitution Act (GVG) or § 23 ff ZPO. Furthermore, the subject of the dispute must be based on a (general) need for legal protection of the plaintiff. Furthermore, no other lis pendens may exist on the same subject of dispute , Section 261 (3) No. 1 ZPO. Furthermore, no legally binding decision may have been made on the specific (identical) subject of the dispute, cf. Section 322 ZPO. Ultimately, however, the subject matter of the dispute is also decisive for the value in dispute and therefore for the legal costs.

Components of claim and cause of action

Claim

According to Section 253 (2) No. 2 ZPO, the term “application for action” includes not only the application to be made in the application as such, but also (and above all) the subject of the claim contained therein, the plaintiff's request. From the claim, the defendant must be able to see beyond any doubt what risk he is facing and what he has to defend against. If the plaintiff succeeds - even after being instructed by the court, cf. Section 139, Paragraph 1, Clause 2 of the Code of Civil Procedure (ZPO) - fails to give the application the requisite certainty, the action will already have to be dismissed as inadmissible.

Plea in law

From Section 253, Paragraph 2, No. 2 of the German Code of Civil Procedure (ZPO), there is also the requirement to specify the second component of the subject of the dispute, namely the cause of action. Plea means the specific facts, life process, from which the plaintiff derives the legal consequence sought , i.e. the facts giving rise to the claim. Like the claim, the plea is also subject to the requirement of certainty. Specifically, this means the presentation of those facts that are necessary for the determination and individualization of the subject of the dispute, i.e. H. for the (possible) delimitation from the subject of another process with the same application.

Claim and cause of action in patent nullity proceedings

Basics

Since the proceedings that deal with the revocation of a patent are civil proceedings - it takes place in the first instance before the Federal Patent Court (BPatG), Section 81 (4) sentence 1 PatG, and in the second (last) instance the Federal Court of Justice (BGH) instead, Section 110 (1) and (2) PatG, - here too (based on the so-called two-part concept of the subject of dispute) the subject of the dispute is determined by the components, claim and cause of action.

Claim

The legal basis for the claim is Section 81 (5) sentence 1 PatG. Here, the word “subject of dispute” does not denote a third determining component (in addition to the claim and cause of action), but rather the contested patent (patent in suit). The naming of this constitutes an (indispensable) part of the application for action . Without specifying the patent in suit , the application would not do justice to its requirement of certainty. The application requirement standardized for the first instance (before the BPatG, Section 81 (4) sentence 1 PatG) in Section 81 (5) sentence 1 applies in accordance with Section 99 (1) PatG in conjunction with V. m. § 528 ZPO also for the appellate body (before the BGH, § 110 para. 1 PatG). As in "normal" civil proceedings, and also in patent nullity proceedings, the scope of the appeal procedure is basically determined by the appeal applications.

Claims in detail

In most cases that is complete annulment of the patent applied for, § 22 para. 1 of the Patent Law. However, an application for partial annulment is also possible. This variant results from Section 22 (1) PatG in conjunction with V. m. Paragraph 2 of this provision (see also Section 21 Paragraphs 2 and 3 PatG in conjunction with Section 160 Paragraph 3 No. 2 ZPO). With regard to the application for partial annulment, the following may be considered:

  1. Application for a declaration of invalidity only for the main claim (usually patent claim 1) and / or one or more secondary claims. Ancillary claims are patent claims independent of the main claim with their own inventive content. The "fake" as well as the "real" subclaims are maintained in this case. So-called spurious subclaims are dependent patent claims (on the main claim or a subsidiary claim) with their own inventive content. “Real” subclaims are defined as dependent claims without any inventive content.
  2. Application for annulment of subclaims only. In this reverse case, of course, the main and secondary claims remain unaffected.
  3. Request for amendment (restriction of the scope of protection) of patent claims, in particular the main claim. Such a request comes primarily into consideration if the current state of the art does not allow the patent or the contested patent claim (s) to be declared null and void.
  4. Request to change the patent description and / or the patent drawing. Such an application for partial annulment is conceivable and also legally possible, Section 21 (2) sentence 2 PatG, but in practice it will only be filed very rarely because it leaves the patent claims and thus the scope of protection of the patent in suit largely untouched. The scope of protection of a patent or a patent application is determined by the patent claims according to Section 14 PatG.

Plea in law

Basics

The requirement to assert (also) this second essential determining component of the subject-matter of the dispute in the application results from Section 81 (5) sentence 2 of the Patent Act, according to which the facts (and evidence) serving as justification must be given. The general definition of the cause of action as a concrete factual situation from which the plaintiff derives the desired legal consequence , in this case the declaration of the full or partial nullity of the patent in question, also applies to the patent nullity proceedings. Sections 22 (1) and 21 (1) of the Patent Act apply to the grounds for action that may be considered in connection with the patent nullity suit. Each of the five grounds for invalidity listed there constitutes a procedural uniform plea. In addition - as a further three procedural grounds of action - the three grounds for nullity for so-called supplementary protection certificates for medicinal products.

Pleas in particular

  1. The lack of patentability, § 22 para. 1 1st alt. i. V. m. Section 21 (1) no. 1 PatG. Section 21 (1) No. 1 refers to Sections 1 to 5 of the Patent Act. However, the individual patentability requirements mentioned there (in particular novelty, inventive step, commercial applicability) are not a separate cause of action in the event that they are not applicable. Rather, the cause of the action is the “life issue” common to all individual cases, namely the lack of patentability. It should also be emphasized that this most important reason in practice can be invoked by any third party. In this regard, the patent nullity suit is designed as a popular one. Conversely, this also results from Section 81 (3) PatG.
  2. The inadequate disclosure, § 22 Paragraph 1 1st Alt. i. V. m. Section 21 Paragraph 1 No. 2 PatG. What has been said above about the individual patentability requirements applies here with regard to the two individual requirements, insufficiently clear disclosure and incomplete disclosure, accordingly. That is to say, the individual grounds for nullity standardized in the above provision have to apply procedurally as a single (common) ground of action. In principle, anyone can also raise the plea of ​​insufficient disclosure.
  3. The impermissible extension, § 22 para. 1 1st alt. i. V. m. Section 21 (1) no. 4 PatG. To determine an inadmissible extension i. S. v. Section 21 (1) No. 4 PatG, which can also be asserted by any third party, 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.
  4. The extension of the scope of protection of the patent, Section 22 Paragraph 1 2nd Alt. PatG. Superficially one could consider the grounds for invalidity according to § 22 Paragraph 1 1st Alt. i. V. m. Section 21 (1) no. 4 PatG (see above) on the one hand and in accordance with Section 22 (1) 2nd old. PatG, on the other hand, consider it a uniform plea. However, § 22 Paragraph 1 carries the 2nd old. PatG account for the fact that the scope of protection of an already granted patent may have expanded, 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 covered by the cause of action according to § 22 para. 1 1st alt. i. V. m. Section 21, Paragraph 1, No. 4 of the Patent Act does not apply if it is still within the scope of the original disclosure of the patent application (see above).
  5. The unlawful removal, § 22 Abs. 1 1st Alt. i. V. m. Section 21 Paragraph 1 No. 3 PatG. This is a case of intellectual property theft in which "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;" (according to the legal text of the above standard). Notwithstanding the above under 1.) to 4.), this is the only cause of complaint that cannot be asserted by anyone, but only by the "injured party" ( inventor or his legal successor ), § 81 para 3 PatG.
  6. The plea in Article 15 (1) lit a i. V. m. Art. 3 European Economic Community (EEC) Regulation 1768/62. This plea does not relate to patents in the narrower sense, but to so-called protection certificates for medicinal products. According to Section 16a (1) of the Patent Act, this is a supplementary protection that immediately follows the expiry of the patent (for the medicinal product in question). According to Art. 15 para. 1 lit a EEC Regulation 1768/62, the protection certificate is void if it has been issued contrary to the provisions of Art. 3 EEC Regulation 1768/62. Here, too, it should be noted that not every single one of the four (under lit a), b), c) and d)) conditions for granting a total of four in Art. 3 of the EEC Regulation, if it should not be fulfilled, for constitutes a separate plea. Rather - if applicable - all four (missing) conditions for grant belong to one common plea, namely the grant contrary to the provisions of Art. 3 EEC Regulation 1768/62.
  7. The plea in law of Art. 15 para. 1 lit b EEC Regulation 1768/62. According to this provision, the protection certificate is void if the basic patent (preceding the protection certificate) has expired before its legal term expires.
  8. The plea in law of Art. 15 para. 1 lit c EEC Regulation 1768/62. Accordingly, the protection certificate is null and void "if the basic patent is declared null and void or restricted in such a way that the product for which the certificate was issued is no longer covered by the claims of the basic patent, or if there are grounds for invalidity after the basic patent has expired would have justified the declaration of invalidity or restriction. ”The provision in question here again names a total of four individual grounds for invalidity, each of which is capable of inducing the invalidity of the protection certificate. Nonetheless, there is one common plea in law here too.

See also

Individual evidence

  1. ↑ See only: Thomas / Putzo-Thomas, Zivilprozessordnung, 25th edition, Munich 2003, Introduction II, Rn 5
  2. ↑ See in particular the case law of the highest court: Collection of decisions of the Federal Court of Justice in Civil Matters (BGHZ), vol. 117, p. 1; Zeitschrift Neue Juristische Wochenschrift (NJW) 1995, p. 1757; NJW 1996, p. 3152; NJW 1999, pp. 1407, 2119; NJW-RR 1997, p. 1217; Journal of the monthly German Law (MDR) 2000, p. 778
  3. ↑ 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. 60
  4. ↑ Peter Schlosser, Civil Procedure Law I (cognitive proceedings), Munich 1983, p. 320 ff (Rn 412 ff)
  5. ↑ Thomas / Putzo-Thomas, Zivilprozessordnung, 25th edition, Munich 2003, (individual references 1), p. 8 (Rn 2)
  6. ^ BGH, in: NJW 1983, p. 1056
  7. ↑ = the plaintiff's legitimate interest in a factual decision by the court
  8. ↑ Thomas / Putzo-Thomas, Civil Procedure Code, 25th edition, Munich 2003, (individual references 1), Rn 2
  9. ↑ 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
  10. ↑ BGH, in: NJW 1999, p. 954
  11. ↑ 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
  12. ↑ 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
  13. ↑ See only BGH, in: NJW, p. 2000 and 3493; as well as in: MDR 1976, p. 1005.
  14. ↑ 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. 61
  15. ^ BGH, in: Journal of Commercial Legal Protection and Copyright (GRUR) 1955, p. 466 f
  16. ↑ Benkard-Rogge, Patentgesetz, Utility Model Act, 10th edition, Munich 2006, § 22 PatG, marginal number 10. Likewise Schulte, Patentgesetz, 6th edition, Cologne, Berlin, Bonn, Munich 2001, § 21, marginal number 22
  17. ↑ Benkard-Rogge, Patentgesetz, Utility Model Act, 10th edition, Munich 2006, § 22 PatG, margin nos. 8 and 10. See in particular: Art 15 EEC - Regulation No. 1768/92, abr. in: Official Journal EG, No.L 182.
  18. ↑ Cf. collection of decisions of the Reichsgericht in Zivilsachen (RGZ), vol. 139, p. 3; BGH, in: GRUR 1964, p. 18f with additional information; Collection of decisions of the Federal Patent Court (BPatGE), vol. 6, p. 189
  19. ↑ See also the corresponding regulation for opposition proceedings in Section 59 (1) sentence 1 of the Patent Act. Opposition to European patents is regulated accordingly; see. Art 99 para. 1 sentence 1 i. V. m. Art 100 lit a European Patent Convention (EPC).
  20. ↑ Benkard-Rogge, Patent Law, Utility Model Law, 10th edition, Munich 2006, § 22 PatG
  21. ↑ See also § 35 PatG as well as Art. 83, 100 lit b European Patent Convention (EPC) and Art. 8 para. 2 Strasbourg Convention (Strasbourg Convention).
  22. ↑ BGH, in: GRUR 1992, p. 158
  23. ↑ BGH, in: GRUR 1988, p. 197
  24. ↑ Contents Art. 138 lit d EPC and Art. 56 para. 1 lit d Convention on the European Patent for the Common Market (Community Patent Convention , GPC)
  25. ↑ through the Community Patent Act (GPatG) of July 26, 1979 (Federal Law Gazette I, p. 1269)
  26. ↑ See in detail the official justification for the amendment to the law, abr. in: Journal of Patents, Designs and Signs (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, 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, Patent Law, 6th edition, Cologne, Berlin, Bonn, Munich 2001