For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Wednesday, 29 October 2008

Patent revocations in Germany

The IPKat has received a notice from his friends at the 24IP Law Group concerning an interesting legislative proposal. According to 24IP:

"The German Government has placed before the Bundestag (Parliament) a draft bill which will bring major changes to simplify and modernize patent revocation proceedings.

It is a basic principle of German law that the patent infringement courts may not decide the validity ... of a patent. Separate revocation proceedings must be filed in the German Federal Patent Court in Munich. The infringement courts may only suspend infringement proceedings if the request for revocation ... is considered to have an overwhelming chance of success. An application for revocation ... can be made at any time, even if the three month deadline for filing an Opposition to the grant of the patent has expired.

The bill provides that the current revocation proceedings should become better structured and more transparent to users. The general principles of German Civil Court Procedure will be followed more strictly. The Court will be obliged to indicate to the parties their preliminary views on the merits of the case at an early stage and will subsequently allow the parties to file additional submissions. Further arguments will not be considered once the parties have filed these submissions.

The amendments should also speed up the appeal proceedings which are held in front of the German Federal Court of Justice in Karlsruhe. The Appeal Court will only decide on points of law in the future. It cannot engage in further fact finding, except when this is deemed “to be indispensable for ensuring that the lower court has found the true facts of the case”.

The legal provisions on the appeal proceedings will continue to be found in the German Patent Act, rather than in the German Code of Civil Procedure. Appeals will still be available as a matter of right –- there will be no need to file for leave to appeal. However, the general codes of practice of the German civil courts will become important .... The arguments presented in the initial filing of the claim will become more important and the proceedings will be more compact. This is an excellent development, since infringement courts currently often suspend infringement proceedings for several years pending a decision on the validity of the
patent [says the IPKat: the Germans aren't the only nation to suffer this inconvenience. Look at the horrible case law on stays of UK actions pending EPO revocation proceedings].

Unfortunately the draft bill does not contain a proposed timetable for revocation proceedings. The bill will also not change the current situation in which decisions made during revocation proceedings will not bind the infringement courts and vice versa [Why not? Is it because it isn't as big a problem in practice as it is in theory? Can any German reader explain?]. However, we can expect a reduction of the duration of revocation proceedings because patent infringers will not be able to substantially delay decisions in the future by stretching out revocation cases. This should make it harder for an infringer to continue infringing without impunity for long periods of time".

1 comment:

Anonymous said...

In Germany, revocation actions and infringement actions run in parallel. Legislation has assigned each to the judges with what was thought of as the higher competence for the questions at issue. The infringement courts are thus not competent to find on validity. However, infringement actions can be stayed if the revocation action has a sufficient likelihood of success. Who says so? The infringement courts. So they assess the merits of a revocation action, but in a cursory non-binding manner.

So typically, the infringement action will merrily go ahead, and be pending for some months before the revocation action is filed as a response. Pendency in the first instance revocation is about twice as long as that in the first instance infringement. So what then? The infringement judge usually goes ahead unless there is a clear cut novelty attack on the basis of art not considered by the Patent Office. That is more the exception than the rule. I do not agree that the infringement courts "often" suspend their action.

If the first instance revocation then makes the patent sufficiently narrow, the infringement (appeal) courts reconsider. They generally look at the decision on validity as a strong indicator of the final outcome and then stay their action. An appeal in the revocation action, however, has suspensive effect. So then the infringement action is stayed pending the outcome of the appeal in the revocation proceedings, and that takes a long, long time.

So where is the hiccup? In very exceptional cases, the infringement courts do not accept that the revocation court got it right in the first instance. So despite a finding of invalidity, they will continue - or despite a finding of validity, they will stay their action. With an appeal pending, the first instance decision is not effective so that the courts are not bound by the finding. It does happen, but not often. There is only one widely discussed decision where the infringement court pressed on despite a finding of invalidity.

It happens more often that the infringement actions are stayed because of a first instance finding of invalidity. However, this typically happens only in the appeal instance of the infringement proceedings. This means that Proprietor has a first instance finding on infringement, with a decision that is enforceable against security. If Proprietor believes in his patent, he can go ahead and enforce it despite the first instance finding of invalidity. If the patent eventually survives, everything is fine and dandy. If not, well, then Proprietor is liable to compensate for the damages caused by the enforcement. In practice, this seems to work quite well.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':