Marc L. Holtorf and Julia Traumann of Pinsent Masons were commenting after the Bundesgerichtshof (BGH) considered when nullity proceedings can be brought in Germany in cases where the patents at issue are subject to opposition proceedings before the European Patent Office (EPO).
The German Patent Act stipulates that revocation claims are only admissible in Germany if the German Patent and Trademark Office (DPMA) or the European Patent Office (EPO) have formally "concluded" their granting procedures. This basically means a still-pending granting procedure legally blocks a nullity action in Germany.
Until the BGH’s ruling (link in German), it had been generally considered that granting procedures are only "concluded" within the meaning of the relevant provision of the German Patent Act if the final formal steps, for example the adaptation of amended patent claims, have been implemented by the EPO.
The BGH has now clarified that the period of inadmissibility ends following the oral proceedings before the Board of Appeal (BoA). Businesses therefore do not need to wait for the amended patent claims decided in the oral proceedings to be documented in written form to raise nullity proceedings in Germany – a process that can take several months and sometimes more than a year. In the written decision, the BGH said: “[…] [The] obstacle falls away when the EPO has decided that the patent is maintained with an amended version of its claims, and this decision can no longer be challenged. In this constellation, a nullity is only admissible to the extent that it is aimed at eliminating the legal validity of the patent to a greater extent than can be expected according to the binding decision of the EPO.”
Holtorf said: “This means that in practice a nullity action can be filed, for example, on the date of the oral proceedings for the opposition appeal proceedings, which can be determined from the European patent register.”
Traumann said: “The outcome of the BoA oral proceedings will, of course, have an impact on the nullity proceedings, as the BGH acknowledged. In this regard, it said an action for nullity is only admissible to the extent that it is directed at eliminating the legal existence of the patent to a greater extent than is to be expected according to the binding decision of the European Patent Office. In extreme cases, this can then lead to the nullity action becoming inadmissible if the patent at issue is revoked by the Board of Appeal. However, this ruling is good news for parties wanting to invalidate a patent.”