Patent nullity actions

Legal validity proceedings - A German specialty?

In Germany, the so-called ‘principle of bifurcation’ exists with regard to property rights: the enforcement of property rights and the examination of the legal validity of the property right are carried out in separate procedures. While the civil courts (Regional Court or Higher Regional Court) have jurisdiction over the enforcement of property rights, proceedings relating to legal validity such as patent opposition proceedings, patent nullity proceedings and utility model cancellation proceedings are conducted before the Patent Office or the Federal Patent Court, a specialist court in Munich.

What to know about the Federal German Patent Court?

In contrast to the situation in ordinary courts such as Regional Courts or Higher Regional Courts, the judges who work in the Federal Patent Court have basic technical training. The judges are usually former patent examiners from the German Patent and Trademark Office or the European Patent Office. As patent attorneys, we worked at the Federal Patent Court for six months as part of our training so we are familiar with the thought processes and working methods of the judges. Thus, we are also able to be proactive and to obtain the best possible results for our clients in court proceedings relating to legal validity at the Federal Patent Court.

Nullity action: How it works?

Nullity actions may be filed with the Federal Patent Court against granted German patents and German parts of European Patents. This is usually done in parallel with a patent infringement proceeding in order to challenge the patent rights, whose infringement is claimed at the civil court. A nullity action is usually based on the reasons: lack of patentability, insufficient disclosure or a broadining of the scope. Without a filed nullity action, the German civil courts generally assume the legal validity of the patent in question. The nullity action is handled before a Senate of the Federal German Patent Court with five judges. Three of these judges usually have a technical background. Against a decision in a nullity action, the appeal is possible, which is being negotiated at the Federal Court of Germany (BGH).

Legal validity proceedings for trademarks and designs?

For trademarks and designs, the applicable rules are somewhat different. In these cases, the examination of legal validity after registration is sometimes done by the civil courts (Regional Court or Higher Regional Court), among other reasons because competition-law aspects are often also relevant to the examination of the legal validity of trademarks. Nevertheless, proceedings for ascertaining the legal validity of trademarks and designs before the Federal Patent Court also exist – these allow trademarks or designs to be cancelled if earlier registered rights exist.

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