In connection with infringement proceedings, the validity of the intellectual property rights involved is often challenged. Such so-called opposition proceedings for patents or trademarks are relatively inexpensive official proceedings. After expiry of the deadlines for these appeals, there is still a possibility of initiating legal proceedings, e.g. in the form of nullity action for patents. As a result of opposition or nullity proceedings, the challenged property right can be revoked, limited, or maintained in its entirety.
Regardless of whether your property right is being challenged or whether you want to challenge the validity of someone else‘s property right – we’ll support you all the way. We’ll represent you before the Federal Patent Court and the Federal Supreme Court. In 2017, we filed close to 400 patent opposition proceedings and roughly 60 patent nullity proceedings as well as more than 400 trademark opposition proceedings.
Opposition and nullity proceedings
Granted patents often affect the activities of companies that are in competition with each other. There are cases in which the corresponding patent of a competitor may be revoked through opposition or nullity action. These include, for example, lack of novelty, lack of inventive step, fraudulent abstraction of the invention or an inadmissible extension of the patent subject matter (compared to the version of the application). The opposition procedure, as an administrative procedure, can be carried through at relatively low cost. Each party generally bears its own costs, which are independent of the amount in dispute. If you wish to take action against a patent, you should make sufficient grounds known to the DPMA or EPO—and keep a wary eye on the respite period. Your opposition must be filed within nine months of the publication of the granting of the patent. We can also submit an opposition on our behalf for you. In that way, your identity will remain anonymous. If the opposition deadline passes, you still have the possibility of legal proceedings in the form of an action for annulment before the Federal Patent Court. Compared to the opposition procedure, this is a possibly more expensive affair, as the court costs and attorney fees depend on the amount in dispute. These costs are then generally shouldered by the losing party. The result of opposition or nullity proceedings could be that the impugned patent is revoked or restricted or even completely upheld. In the case of revocation of the patent, the title owner loses all previously valid legal positions of the patent application with retroactive effect. The judgment is then subject to appeal by the respective party. We would be more than happy to support you with all important steps in connection with opposition and nullity proceedings!