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Patent revocations in Germany

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

The IPKat has received a notice from his friends at the 24IP Law Group concerning an interesting legislative proposal. According to 24IP:

"The German Government has placed before the Bundestag (Parliament) a draft bill which will bring major changes to simplify and modernize patent revocation proceedings.

It is a basic principle of German law that the patent infringement courts may not decide the validity ... of a patent. Separate revocation proceedings must be filed in the German Federal Patent Court in Munich. The infringement courts may only suspend infringement proceedings if the request for revocation ... is considered to have an overwhelming chance of success. An application for revocation ... can be made at any time, even if the three month deadline for filing an Opposition to the grant of the patent has expired.

The bill provides that the current revocation proceedings should become better structured and more transparent to users. The general principles of German Civil Court Procedure will be followed more strictly. The Court will be obliged to indicate to the parties their preliminary views on the merits of the case at an early stage and will subsequently allow the parties to file additional submissions. Further arguments will not be considered once the parties have filed these submissions.

The amendments should also speed up the appeal proceedings which are held in front of the German Federal Court of Justice in Karlsruhe. The Appeal Court will only decide on points of law in the future. It cannot engage in further fact finding, except when this is deemed ?to be indispensable for ensuring that the lower court has found the true facts of the case?.

The legal provisions on the appeal proceedings will continue to be found in the German Patent Act, rather than in the German Code of Civil Procedure. Appeals will still be available as a matter of right ?- there will be no need to file for leave to appeal. However, the general codes of practice of the German civil courts will become important .... The arguments presented in the initial filing of the claim will become more important and the proceedings will be more compact. This is an excellent development, since infringement courts currently often suspend infringement proceedings for several years pending a decision on the validity of the
patent [says the IPKat: the Germans aren't the only nation to suffer this inconvenience. Look at the horrible case law on stays of UK actions pending EPO revocation proceedings].

Unfortunately the draft bill does not contain a proposed timetable for revocation proceedings. The bill will also not change the current situation in which decisions made during revocation proceedings will not bind the infringement courts and vice versa [Why not? Is it because it isn't as big a problem in practice as it is in theory? Can any German reader explain?]. However, we can expect a reduction of the duration of revocation proceedings because patent infringers will not be able to substantially delay decisions in the future by stretching out revocation cases. This should make it harder for an infringer to continue infringing without impunity for long periods of time".

Full post as published by IPKat on October 29, 2008 (boomark / email).