Opposition proceedings against patents (1): also by addressee of a preliminary injunction

Veröffentlicht am: 17. April, 2018

Sometimes it is only through a preliminary injunction that it becomes apparent that another property right may be infringed. Can the addressee of such an injunction still object to the contested patent? The Federal Supreme Court accepts this.

In a recent judgement (Case X ZB 3/15), the Federal Supreme Court clarified that the respondent and thus an addressee of an interim injunction may also join the opposition proceedings under Sec. 59.2 Patent Law as opponent.

The Federal Supreme Court interprets the wording of Sec. 59.2 Patent Law in such a way that it clearly mentions “action” in the light of the provisions of European patent procedure. The standard must be understood and interpreted in the context of its history. The provision was attributable to the Community Patent Act of 1979 (Federal Law Gazette I 1269), which served to approximate the German provisions to the corresponding European provision.

Respondent must be treated in the same way as declaratory plaintiffs

The German version of Art. 105 Convention on the Grant of European Patents (EPC) also expressly refers to an “action”. However, the English version does not contain such a restriction, only a general reference to the legal proceedings. Specifically, the English version of Art. 105 para. 1 lit. a EPC states “proceedings for infringement”. And judicial proceedings before German courts can also be ongoing or already completed preliminary injunction proceedings.

The respondent must therefore be treated in the same way as the accused of infringement and the declaratory plaintiff, since the decision on the merits taken in summary proceedings also has legally binding effect for the parties. “With the receipt of the request for an injunction. leave the area of mere extrajudicial proceedings against the third party and achieve a degree of dispute which is equivalent to filing an action”. It may be cheaper for the respondent to accept the injunction as valid. However, this denies him the possibility of inducing the patent proprietor to file the main action or to file negative declaratory action himself.

Reasons for opposition to a patent

Moreover, there may be different reasons to join opposition proceedings or to raise an objection yourself. A precondition is always that the opponent, within nine months of publication of the grant of the patent (or acceding party within the nine-month period, max. three months after the lis pendency of the infringement action or the application for an interim injunction), must exercise, for himself or herself, one or more grounds for revocation of the patents in writing.

These grounds for revocation are listed in Sec. 59 Patent Law and are either:

  • Lack of patentability,
  • lack of disclosure of the invention features,
  • wrongful removal or
  • inadmissible extension of the original version of the patent specification

Both the argument of lack of patentability and the argument of lack of disclosure and inadmissible extension of the original version of the patent specification may be brought as part of the defence in infringement proceedings. However, since the ordinary courts are bound by the patent once granted, they can only issue decisions with effect inter partes and also only with effect for the subject matter of the action. Another court could therefore decide differently in another proceeding in which the patentee relies on the same property right.

Further legal remedies to be expected from the patent owner?

Anyone who is involved in several legal disputes with the patent holder in connection with the same patent, or who fears that further legal remedies may be expected from a patent holder, might well try to have the patent revoked in whole or in part. Thus, with regard to the revoked part, it can be made clear which limits the property right is within in concrete terms.

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