In an invalidity proceedings concerning a European patent, the BPatG decided on the continuation of the invalidity proceedings with regard to all subclaims, even if the patentee in the parallel proceedings bases the action there only on the main claim: a leading decision.
Leading decision in invalidity proceedings
In a landmark decision, the Federal Patent Court (BPatG) ruled that nullity proceedings will be continued, even if this includes all subclaims of the expired litigation patent, even though the patentee in the parallel infringement proceedings bases the action there only on the main claim and does not separately defend the subclaims in the nullity proceedings. Grounds for invalidity constitute separate matters in dispute.
The assertion of several grounds for invalidity against identical patent claims on the basis of the action for invalidity would constitute a permissible alternative accumulation of applications in accordance with § 99 (1) German Patent Law in conjunction with § 260 ZPO (in German: Zivile Prozessordnung, i. e. . civil code).
Disputed patent also in parallel infringement action
Since the patent in dispute has expired as a result of the expiration of time since 19 September 2017 (“ex nunc”, i.e. from that time), the court saw a special need for legal protection of its own on the part of the plaintiff, since he could no longer invoke the legal need of the general public. The invalidity proceedings, which focused on the European patent for a bladder catheter, were designed as a so-called popular action. According to the BPatG, it must be taken into account that in the existing proceedings, which are designed as popular dispute proceedings, the applicant or plaintiff only has one single claim for annulment or cancellation pursuant to § 21 and 22 of the Patent Law.
In addition, a parallel infringement action based on patent claim 1 is currently pending before the Düsseldorf Higher Regional Court following a first instance decision of the Düsseldorf Regional Court in which an infringement of the patent in dispute was affirmed.
The Court pointed out that the grounds for invalidity or revocation constitute separate matters in dispute in accordance with the case-law of the Federal Court of Justice. If the objective of the application is the same, the senates concerned with the decision – or even the DPMA – are free to choose the grounds for invalidity or the grounds for revocation which are at issue for the assessment of the legal situation and the order in which they are to be listed.
An initial or subsequent assertion of further grounds for invalidity (possible accumulation of applications) by way of an amendment of the action pursuant to § 263 ZPO only as an alternative to the decision is in principle inadmissible. However, a permissible alternative accumulation of applications pursuant to § 99 (1) Patent Law would exist if several grounds for invalidity were invoked against identical patent claims.
Disputed patent in main claim not patentable
In the invalidity proceedings themselves, the BPatG declared the European patent EP 1 145 729 (German file number DE 697 34 737) “A ready-to-use urinary catheter assembly” partially invalid for the territory of Germany. The patent did not exist because it was not patentable, since the doctrine defended admissibly according to patent claim 1 did not prove to be inventive (Art. II § 6 (1) No. 1 IntPatÜG, § 138 (1) (a) EPC, Art. 54 EPC), the BPatG ruled.
The patent in dispute describes a bladder catheter assembly in which the ready-to-use catheter can be inserted directly into the urethra in a particularly sterile state. The task of the patent was to provide a packaging set for hydrophilic bladder catheters in a ready-to-use, i.e. slidable form, even after storage and without an externally applied sliding coating. Therefore, the process for optimizing the packaging while avoiding evaporation of the swelling medium contained in it was essential in patent claim 1.
However, such a procedure already existed in the publication WO 96/30277 A1 (NK 29, publication published in the priority interval of the patent in dispute), in which laminates are explicitly mentioned as packaging materials and also those with metal foils, which are particularly vapour-impermeable to the expert due to his specialist knowledge. The BPatG thus ruled that, according to the main application, patent claim 1 did not have any validity because the doctrine at issue in it, based on the NK 29, in conjunction with the specialist knowledge of the expert in question, was obvious. In the same way – also with reference to NK 29 – the Hague Court of Justice and the High Court Of Justice in the UK have already ruled.
Patent in dispute partially invalidated
Although the BPatG declared claim 1 to be non-inventive and therefore not patentable, it recognised the patentee’s defence as successful in accordance with auxiliary application 3. With auxiliary application 3, feature group 3 of patent claim 1 is additionally supplemented by the specification that the liquid swelling medium is contained in a storage body made of a sponge-like or similar material in the cavity.
Therefore, the contested patent was only partially declared invalid. Because with patent claim 1 according to auxiliary application 3, subclaims 2 to 11 are also valid, which contain advantageous designs of the bubble catheter set. The patent subject-matter remaining protectable after auxiliary motion 3 is now nevertheless considerably restricted, because the catheter set is considerably complicated in manufacture by the judgment. The patentee may appeal against the judgment.
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Judgement of BPatG 4 Ni 50/17 (EP)
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