Patent no longer defended - Invalidity of patent ex tunc

If a defendant in invalidity proceedings for a patent decides to no longer defend the patent in dispute, this is a permissible self-restriction. However, this leads to the invalidity of the patent ex tunc – i.e. from the beginning, the BPatG ruled.

In invalidity proceedings for the EU patent “Semiconductor Radiation Emitter Package” for the territory of the Federal Republic of Germany (2 Ni 41/17 (EP)), which were before the Federal Patent Court (BPatG), the defendant no longer defended the patent in dispute. This is permissible by way of self-restriction, but has far-reaching consequences for the patent in dispute.

If a patent in dispute is no longer defended as a whole, it must be declared invalid – without any substantive examination and from the beginning.

The facts

The case before the Federal Patent Court concerned nullity proceedings for the EU patent “Semiconductor Radiation Emitter Package” with patent specification EP 1 169 735 B1 for the territory of the Federal Republic of Germany. The claims of the patent were mainly directed at a semiconductor device which emits optical radiation.

The action was based on the invalidity ground of lack of patentability (Art. II § 6 para. 1 IntPatÜG in conjunction with Art. 138 para. 1 lit. a) EPC), in particular the lack of novelty (Art. 54 EPC) and inventive step (Art. 56 EPC).

In these proceedings, the defendant withdrew its opposition and requested a written procedure. The applicant had not objected to the written procedure requested by the defendant and had therefore implicitly agreed.

Therefore, the Court could decide on the action without oral proceedings by judgment pursuant to Sec. 82 (3), 2nd sentence, Patent Law.

Annul without substantive examination

If a defendant declares that he no longer wishes to defend the fully contested patent, this constitutes, according to settled case-law, an effective limitation of the subject-matter of the invalidty proceedings, the Court explained. Since, however, a substantive examination can only take place within the limits set by the patents in dispute, such a self-limitation of the defendant leads to the fact that the patent in dispute is to be declared null and void without further substantive examination.

The BPatG clarified that this is justified by the idea of procedural economy and serves to avoid an isolated limitation procedure otherwise required under Sec. 64 Patent Law.

Patent is declared invalid ex tunc

The patent is not only declared null and void from the time of challenge – this would be called “ex nunc” – but it is considered null and void “ex tunc” and thus from the beginning. For the nullity of the patent in dispute has the consequence that pursuant to § 22 (2) in conjunction with § 21 (3) German Patent Law is deemed not to have occurred from the outset – in effect of the patent in dispute and also of the application for registration of the patent in dispute.

This is also the European rule under the European Patent Convention (EPC). If a European patent is revoked or limited in opposition, limitation or invalidity proceedings, the patent is deemed not to have occurred from the outset.

The situation is different with the waiver of a patent. In Germany, a waiver is declared at the German Patent and Trade Mark Office (DPMA) pursuant to § 20 (1) No. 1 PatG. The waiver of a patent applies ex nunc, i.e. the patent protection no longer exists from the date of the waiver.

At the European level, the waiver or lapse of the patent also applies ex nunc (i.e. from the date of the waiver), while the revocation applies ex tunc (i.e. as not having occurred from the beginning) in accordance with Art. 68 EPÜ.

The opponent may therefore have an interest in revocation if a patent expires or is surrendered.

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