BGH Mautberechnung: German Federal Court of Justice on the admissibility of a nullity action lodged during parallel opposition proceedings

9. Oktober 2011 • Veröffentlichungen • 208 mal gelesen • Themen: Einspruch, Nichtigkeit

According to Section 81 (2) German Patent Act, a nullity action is inadmissible as long as parallel opposition proceedings are pending (“Principle of Subsidiarity”). In its decision “toll calculation” (decision of April 19, 2011 – Case X ZR 124/10 – Mautberechnung) the German Federal Court of Justice establishes that this also applies if the nullity action is based only on a national prior right pursuant to Art. 139 (2) EPC – which cannot be considered in parallel European opposition proceedings.

The case to be decided in “toll calculation” related to European patent 0 824 731, which concerns a method and apparatus for determining a tax for a vehicle using a positioning system. The patent was revoked during European opposition proceedings, whereupon the patentee filed an appeal against the decision to revoke the patent.

While the European opposition appeal proceedings were still pending, a national German nullity action was lodged.

The nullity action was based on the grounds of lack of novelty in view of the German patent application 44 27 392, which was filed before the priority date of the attacked patent, but published only thereafter. As a result, this document – being post-published with respect to the attacked patent – constituted prior art relevant for novelty in the German nullity action (Section 3 (2) German Patent Act). However, it could not be considered in the European opposition proceedings, since Article 54 (3) EPC does not apply to post-published German patent applications.

The German Federal Patent Court rejected the nullity action for being inadmissible pursuant to Section 81 (2) German Patent Act. Accordingly, a nullity action cannot be lodged as long as an opposition can be filed or opposition proceedings are pending (“Principle of Subsidiarity”). The Court thereby confirmed its earlier decision “radiation control” (decision of July 12, 2005 – Case X ZR 29/05 – Strahlungssteuerung), which concerned a German nullity action and a European opposition based on the same grounds. According to the Court, the principle of precedence of the opposition over the nullity procedure applied also to the present case, where the nullity action was based on a national prior right that can be considered in the national nullity procedure only.

This decision was confirmed in second instance by the German Federal Court of Justice. Accordingly, a German nullity action lodged during ongoing European opposition proceedings is inadmissible, even if the nullity action is based only on a national prior right that cannot be considered during the European opposition proceedings.

The Federal Supreme Court also acknowledged that the above decision might give rise to a gap in legal protection, namely if a European patent undergoing a European opposition is asserted in a national infringement suit. In this constellation, the party accused of patent infringement has a legitimate interest in not being held liable, although the asserted patent is invalid in view of a national prior right that cannot be considered in the European opposition. Since a full-blown European opposition procedure (including the appeal instance) might well last several years, this would result in a long period of legal uncertainty about the validity of the asserted patent, namely until the party accused of patent infringement is eventually able to use the potentially invalidating national prior right in a national nullity action (which is admissible only after the European opposition has been decided).

Therefore, the German Federal Court of Justice also ruled in “toll calculation” that the national infringement court must consider the option to stay the infringement proceedings in view of an ongoing opposition procedure, even if it is likely that the opposition will not be successful, but if a subsequent nullity complaint has sufficient likelihood of success based on a document that can only be considered in the latter procedure.

Headnotes of the decision

Die bei laufendem Einspruchsverfahren erhobene Nichtigkeitsklage ist auch dann unzulässig, wenn sie nur auf ein älteres nationales Recht im Sinne des Art. 139 Abs. 2 EPÜ gestützt wird (Fortführung von BGH, Urteil vom 12. Juli 2005 – X ZR 29/05, BGHZ 163, 369 – Strahlungssteuerung).

Inofficial translation:
The nullity action lodged during pending opposition proceedings is inadmissible also if it is based only on a national prior right in the sense of Art. 139 (2) EPC (continuation of BGH, decision of July 12, 2005 – Case X ZR 29/05 – Strahlungssteuerung).

Der Verletzungsrichter kann und muss von der Möglichkeit, das Verfahren im Hinblick auf ein anhängiges Einspruchsverfahren auszusetzen, auch dann Gebrauch machen, wenn er damit rechnet, dass das Einspruchsverfahren erfolglos bleiben wird, eine im Anschluss daran erhobene Nichtigkeitsklage wegen einer Entgegenhaltung, die nur in diesem Verfahren berücksichtigt werden darf, aber hinreichende Erfolgsaussicht hat.

Inofficial translation:
The infringement judge may and must consider the possibility of staying the procedure in view of pending opposition proceedings, also if he reckons that the opposition will have no success, but that a subsequently lodged nullity action has sufficient likelihood of success due to a document which can only be considered in this procedure.