Federal Patent Court concretizes deviation from cost principles for reasons of equity

Contrary to the plaintiff's request, however, the court decided against awarding all procedural costs to the defendant for alleged reasons of equity.

In the past, in individual cases of partial nullity, the Federal Patent Court had deviated from the principle of awarding costs to the loosing party according to Section 91 of the German Code of Civil Procedure for reasons of equity as set in Section 84 II of the Patent Act. This was based, inter alia, on the fact that the nullity plaintiff has no possibility to attack a patent claim in a limited manner from the outset in such a way that the owner of the patent in suit is determined by a new version of the attacked patent claim included in the paintiff’s request (BGH GRUR 1997, 272, 276 - ”Schwenkhebelverschluss”). Therefore, if the patent in suit is defended for the first time in the course of the nullity proceedings with newly worded patent claims in a limited manner and the plaintiff immediately agrees to this, it is not the plaintiff who bears the procedural costs incurred in this respect, but the defendant on the basis of the equitable grounds to be applied (BPatG GRUR 2009, 46, 50 - ”Ionenaustauschverfahren”).

In the present case, the nullity plaintiff invoked an allocation of costs in accordance with the ”Ionenaustauschverfahren”-decision, after they had declared agreement with auxiliary request 2’ prior to the oral proceedings and this request was ultimately to be upheld. However, the defendant had formulated and submitted auxiliary request 2’ on the basis that it was highly likely to succeed in accordance with the Senate’s previously issued qualified opinion. Similarly, the plaintiff had therefore agreed to auxiliary request 2’ when they already knew of its good prospects of success in the opinion of the Senate. In the subsequent judgment, the Senate stated in this regard that a reaction to dwindling prospects according to the court's assessment in the course of the proceedings alone would not justify a deviation from the general cost principles in the event of defeat. Rather, it would be important that a declaration of consent by the plaintiff to an auxiliary request is not only immediate, but also exclusively based on autonomous considerations with regard to patentability. Ultimately, an equal allocation of costs seemed appropriate to the Senate in the present case, since with regard to the maintained auxiliary request 2’ both parties would have benefited from the knowledge of the qualified opinion previously issued.

As a conclusion from the current decision of the Federal Patent Court, the following can therefore be said: If a nullity plaintiff wishes to have all procedural costs transferred to the defendant for reasons of equity, they should agree to a presumably patentable auxiliary request, insofar as this already appears acceptable with regard to its limited scope of protection, if possible immediately and for their own considerations - in particular without having waited for a corresponding preliminary assessment of the court.

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