BPatG: Action for annulment with parallel infringement proceedings

An action for revocation of a patent often leads to a counterclaim alleging patent infringement. The German BPatG has issued a leading decision on the interest in legal protection in an action for revocation with parallel infringement proceedings.

In its leading decision ‘Blasenkatheterset’ (35 W (pat) 434/18), the BPatG defined the principles for invalidity proceedings with parallel infringement proceedings and the legal interest in continuing invalidity proceedings – even if the patent in suit has already lapsed “ex nunc” due to the passage of time.

Plaintiff’s own special need for legal protection

For an action for revocation against a patent that has already lapsed, the plaintiff must have a special, independent need for legal protection. The burden of proof and demonstration lies with the plaintiff (BGH GRUR 1995, 342 – Tafelförmige Elemente). Typically, such an interest in legal protection exists if an infringement dispute between the parties to the invalidity proceedings is pending at the time of the decision.

This was the case in the present case, which focused on the patentability of a ready-to-use bladder catheter set. An infringement action based on patent claim 1 was currently pending before the Düsseldorf Upper District Court following a first-instance decision by the Düsseldorf Regional Court, in which infringement of the patent in suit was affirmed. In the opinion of the court, it was not excluded that the infringement would subsequently also be based on further claims of the patent in suit in the context of infringement proceedings still pending at first or second instance.

The applicant’s legal interest in continuing the revocation proceedings is not precluded by the fact that the patent proprietor only relies on the main claim in the parallel infringement proceedings and at the time of the decision of the revocation action – without separately defending the subclaims attacked in the revocation proceedings, the BpatG therefore ruled in relation to revocation proceedings that also include the attack on all subclaims of the lapsed patent in suit.

The Federal Court of Justice has also already ruled that in the case of independent claims, the interest in the invalidation of one claim does not necessarily have to justify the interest in the invalidation of the other claim (Federal Court of Justice GRUR 2005, 749 – Aufzeichnungsträger).

An interest in legal protection for the attack also of the subclaims would therefore only have ceased to exist in the present case at the relevant time of the conclusion of the oral proceedings, BPatG stated in the present case Blasenkatheterset, if the defendant had previously bindingly waived all subclaims from the IP right vis-à-vis the plaintiff, also for the past.

Accumulation of several grounds for invalidity: admissible or not?

In the second part of its leading decision, the BPatG also provided more clarity on the admissibility or inadmissibility of the clustering of several grounds for invalidity. The assertion of several grounds for invalidity against identical patent claims with the invalidity action constitutes a permissible alternative accumulation of applications, the court ruled. This is because the grounds for invalidity form independent objects of dispute, the court explained, which are directed towards a uniform objective of the action. However, the unlawful taking is excluded from the admissible alternative application clustering, in particular with regard to a possible right to file a subsequent application under § 7 Patent Act in opposition proceedings as a subject-matter of the action requiring a decision.

On the other hand, however, the Federal Patent Court ruled that it is generally inadmissible if an initial or subsequent assertion of further grounds for invalidity (alternative application clustering) is made only in the alternative by way of amendment of the action under § 263 of the German Code of Civil Procedure.

The BPatG also referred to the more recent case law of its Court, according to which an “alternative accumulation of applications” is to be regarded as inadmissible with regard to the requirement of certainty arising from § 253 (2) no. 2 of the Code of Civil Procedure. However, the BPatG explained that this referred to cases of a uniform claim arising from several IP rights or from several claims under competition law for the prohibition of a certain advertisement. However, the special features of the patent law and also the trade mark law inventory proceedings were not comparable with the facts of civil law there.

Moreover, the court added, an alternative accumulation of claims did not violate the principle of equality of arms with regard to the defendant’s necessary defence and the burden of the costs of the proceedings. The fact that the patent proprietor is required from the outset to deal with all matters in dispute in the same manner does not result in unreasonable disadvantages for the patent proprietor, nor does it result in unreasonable disadvantages with regard to the fact that the alternative accumulation of claims is not reflected in the risk of litigation costs.

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