Law applied:
Section 81 (2), 1st Sentence, Patent Act
Summary:
1. The assessment of whether the bar to filing an action under Sec. 81 (2), 1st Sentence, Patent Act exists shall not be based on the time of filing the action, but on the time of the decision on the action. In this context, changes that only occurred in the course of the appeal proceedings must also be taken into account (confirmation of BGH, judgment of April 19, 2011 - X ZR 124/10, GRUR 2011, 848 para. 17 - Mautberechnung).
2. The cause of action shall cease to exist if the European Patent Office has decided that the patent shall be maintained with an amended version of its claims and this decision can no longer be challenged.
3. In this constellation, a nullity action 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 European Patent Office.
BGH, Judgment of December 6, 2023 – X ZR 47/22 –
Download full Judgment (machine translation)
Comment C&F:
In the decision "Aminopyridine" (X ZR 47/22), the German Federal Supreme Court (BGH) deals with the question from which point in time a nullity action can reasonably be filed against a patent for which the opposition proceedings at the European Patent Office have not yet been finally concluded. According to the BGH, the decisive factor for the admissibility of the action is not the formal conclusion of the opposition proceedings, but rather that the proceedings have reached a stage at which there is no longer a risk of conflicting decisions or unnecessary duplication of proceedings. From a practical point of view, it may therefore make sense for a nullity plaintiff, for example, to file a nullity action with the Federal Patent Court immediately after the oral proceedings in the opposition appeal proceedings, provided that at that time the final version of the patent claims has already been established in an unappealable manner and a bar to action under Sec. 81 (2), 1st Sentence, Patent Act thus no longer applies.
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Our commentary on the above judgment serves the purpose of making it easily accessible. Simplifications and incompleteness are due to this purpose. For a complete understanding, please refer to the original German version of the publication of the judgment.