Law applied:
Patent Act Sec. 81, Sec. 121 (2)
Code of civil procedure (ZPO) Sec. 93
Summary:
- A patent owner gives cause for filing a nullity action if, despite being requested to do so, it does not provide the potential nullity plaintiff with a legal position comparable to that after the patent has been declared invalid prior to filing the action (confirmation of Federal Supreme Court (BGH), judgment of August 13, 2013 - X ZR 73/12, GRUR 2013, 1282 para. 50 - Druckdatenübertragungsverfahren).
- A prior request on the part of the nullity action plaintiff is not already dispensable because the patent owner has indicated in the course of licensing negotiations that it will not avoid litigation.
Federal Supreme Court (BGH), judgment of 27.6.2023 - X ZR 59/21 -
Download full Judgment (machine translation)
Comment C&F:
Which party bears the legal costs in nullity proceedings if the disputed patent is declared invalid? The German Federal Court of Justice (FCJ) dealt with this question in its decision X ZR 59/21 – Anzeigemonitor (display monitor). In principle, the losing party must bear the legal costs in accordance with Section 91 of the German Code of Civil Procedure (ZPO). However, in the case of immediate acknowledgement pursuant to Section 93 ZPO, even if the nullity plaintiff prevails, the nullity plaintiff can be ordered to pay the legal costs if the defendant has not given cause for the action and if the defendant immediately acknowledges the claim of the nullity plaintiff.
In the present case, the FCJ ruled that the defendant had not given cause for a nullity action and had immediately acknowledged the claim of the nullity plaintiff through the defense of the patent in limited form in conjunction with the waiver of any additional protection exceeding this limitation for the past. In its reasoning, the FCJ concluded that the nullity plaintiff should have requested the patent proprietor to surrender the patent prior to the commencement of the proceedings in order to have cause for a nullity action. As a result, the nullity plaintiff was ordered to pay the legal costs, but only in part, as the patent proprietor had only partially acknowledged the plaintiff's claim by defending the patent in a limited manner.
The immediate acknowledgement pursuant to Section 93 ZPO must be taken into account by both the nullity plaintiff and the patent proprietor for tactical considerations regarding the decision on legal costs. Particularly from the perspective of the nullity plaintiff, the FCJ ruling underlines the importance of requesting a pre-litigation waiver. By doing so, the potential nullity plaintiff can avoid the risk that the patent proprietor does not bring cause for a nullity action, resulting in a negative decision on legal costs for the nullity plaintiff.
Picture credits: Gorodenkoff_AdobeStock.com
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.