Dipl.-Ing. Michael Wieser

German and European Patent Attorney, European Trademark and Design Attorney.
 
Born in 1972 in Munich, Germany.
 
Studies of mechanical engineering at the Technical University of Munich in the fields of product development, aerospace engineering and automotive engineering.
 
Research assistant at the Institute of Astronautics, Technical University of Munich; several publications in the field of systems engineering and commercial space applications.
 
Since 2004 with Winter, Brandl and Partners, Munich.
 
Main practice areas include patent prosecution, oppositions, nullity and infringement actions as well as provision of freedom-to-operate and validity opinions in the field of mechanical engineering.

Contact:
Tel:+49.89.54301622
Fax:+49.89.54301700
E-mail:MWieser@wbetal.de

 
Patent Nullity Proceedings in Germany – Any Changes?
 
In Germany, there is a strict separation between infringement and nullity actions (principle of separate judgment). The question of whether or not a product/method infringes a German patent or the German part of a European patent is to be answered by the civil courts. The competent courts therefor are the district courts (first instance), the higher regional courts (second instance) and the Federal Supreme Court (revision). On the other hand, the question of validity of a patent \ is exclusively decided by the Federal Patent Court (first instance) and the Federal Supreme Court (second instance / appeal). Due to this separation, nullity of the patent cannot be used as a defence in infringement proceedings. Since the competent court in the infringement proceedings cannot disregard the patent as such (the court is bound by the granting act of the German Patent and Trademark Office), the alleged infringer has to file a separate nullity action before the Federal Patent Court. In such a situation, the infringement proceedings may be stayed and only be resumed upon final decision on the validity of the patent in question.
 
As already mentioned above, the action for a declaration of nullity of a patent is usually - but not necessarily – the consequence of parallel pending infringement proceedings. In addition, anybody is entitled to file a nullity action. Parties who have neither a domicile nor an establishment in Germany have to appoint a national representative.
 
In nullity proceedings, both parties are usually represented by patent attorneys rather than by attorneys at law, since the patent attorneys are familiar with the technical subject matter concerned and also speak the language of the technically qualified judges. However, in particular in case of parallel infringement proceedings, it is advisable that the attorney at law in charge of the infringement proceedings assists the patent attorney in the nullity proceedings and vice versa, since the outcome of the nullity proceedings directly affects the question of infringement.
 
In the second instance, each party should be represented by both a patent attorney and an attorney at law, irrespective of any pending infringement cases, by the patent attorney for his technical expertise to understand the opinion of the technical expert to be heard, and by the attorney at law for his procedural expertise and common understanding with the exclusively legally qualified members of the Board of Appeal of the Federal Supreme Court.
 
In the first instance, several Nullity Senates of the Federal Patent Court decide in a panel of five judges, the presiding judge and one associate judge being legally qualified and three further associate judges being technically qualified. In this context it is to be noted that the Federal Patent Court is the only court in the German court system to have professional judges who are technical experts with a fully- fledged academic education in science or engineering and are appointed for a lifetime. At present, there are roughly 60 technically qualified judges and 60 legally qualified judges members of the Court, all of them exclusively dealing with intellectual property matters. Unlike the courts in general civil proceedings, the matter in dispute before the Federal Patent Court is not restricted to the facts submitted by the parties. The court investigates the facts ex officio and is not bound by the facts and evidence provided by the parties. The parties, however, are under the obligation to assist in the clarification of the facts.
 
Nullity proceedings are instituted by filing a complaint with the Federal Patent Court. It is to be noted that, as long as the patent in question can still be opposed (within 3 / 9 months from publication of the grant of the German / European patent) or opposition (appeal) proceedings are still pending, nullity actions are not admissible. In case of an admissible complaint, the writ is served upon the defendant along with the invitation to file a reply thereto within one month. If the defendant fails to comply with this invitation, a decision without oral proceedings is possible. The court may consider the statements of facts made by the plaintiff in his writ as being true. If the defendant has contested the action in due time, the court fully clarifies the facts ex officio and renders, as a rule, its decision on the basis of oral proceedings. Up to the amendment of the law effective as from October 1, 2009, new facts and requests could be presented even until the end of the oral proceedings without any legal consequences.
 
If the action is dismissed, the decision is binding only inter partes, i.e. any other party can file again a complaint against the same patent. If instead, the patent is declared null and void partly or in toto, the patent is invalidated with retroactive inter omnes effect. The declaration of nullity is entered into the patent register and published in the Patent Gazette. Judgements of the Federal Patent Court on nullity actions are subject to appeal to the Federal Supreme Court. The Federal Supreme Court decides in a panel of five legally qualified judges.
 
Up to now, the subject matter of the appeal was not restricted, neither legally nor in terms of facts. The Federal Supreme Court acted in nullity appeal proceedings as an appellate court and reviewed the case on points of both facts and law. Both parties were allowed to present new facts and evidences which had not been subject to the proceedings of the first instance before. The Federal Supreme Court had the discretion to take all measures necessary for the investigation of the case. Since the Federal Supreme Court is not staffed with technically qualified judges, a written opinion of a technical expert had to be furnished in almost every case resulting in a further delay of the appeal proceedings. Due to an increasing number of appeals and the backlog of pending nullity appeal proceedings, the appeal proceedings before the Federal Supreme Court in nullity proceedings took up to 4 to 5 years at last.
 
In view of the above mentioned situation, the German Patent Act was recently revised and - inter alia – new provisions regarding the nullity proceedings entered into force, being applicable for all nullity actions filed on or after on October 1, 2009. These amendments cope with the above mentioned situation and implement some measures to streamline and accelerate the nullity proceedings in the first and second instance.
 
The amendments are as follows:
a) Review on points of law only
In future, the Federal Supreme Court acts no longer as a second instance reviewing the case on points of facts, but as an instance, which reviews contested decisions under aspects of law only. Therefore, the Federal Supreme Court is basically bound by the finding of facts by the Federal Patent Court, which, however, can rely on the technical expertise of its technically qualified judges. Whilst the right to appeal was not restricted according to the old practice, in future an appeal will be possible only to a limited extent, namely
 
1. in case of violation of federal law, in particular in case of any fundamental procedural defect, e.g. no reasons for the decision have been furnished, the Nullity Senate included a person not appointed as a member of the Nullity Senate, etc;
2. in case where facts taken into account by the Federal Patent Court and new (admissible) facts to be taken into account justify a different decision. As a rule, the decision of the first instance is supposed to be final.
3. we doubt that the Federal Supreme Court will be confronted with less newly filed appeals and the number of pending appeals will drop.
 
In case of an admissible appeal, a technical expert will no longer needed, since the Federal Supreme Court reviews the case only on points of law and only on the basis of those facts that were collected by the first instance. In case the Federal Supreme Court comes to the conclusion that not all relevant facts and evidences have been taken into account by the Federal Patent Court in its decision, it will most likely remit the case to the Federal Patent Court rather than to take evidence by themselves.
 
b) Notice of the Federal Patent Court before Oral
Proceedings
In order to streamline the proceedings in the first instance, the Federal Patent Court will issue in future a notice regarding the relevant issues to deal with previous to oral proceedings so that both parties can focus on those issues (specific prior art documents, specific features) which the Nullity Senate considers to be relevant for the further procedure and the validity of the patent in question.
 
c) Time Limit for Filing New Facts and Requests
Together with the above-mentioned notice, the Federal Patent Court may fix a time limit for filing new facts or requests. Facts or requests which are not submitted in due time by the parties concerned may be disregarded by the Federal Patent Court, in particular in case where this would result in an adjournment of the oral proceedings, the party concerned cannot provide any appropriate excuse and the party has been duly informed on the legal consequences. Late submissions are only taken into account, in case where the other party agrees or the court considers it appropriate. In this context, it is important to be noted that those facts and evidences, which have been rejected in the first instance, are also precluded from the subsequent appeal proceedings, unless the preclusion as such is considered to be a serious procedural defect.
 
Therefore, it is no longer advisable to make use of late submissions for strategic reasons or to withhold facts so as to introduce them only in the appeal proceedings. In view of the above, it will be important for both parties to present all attacking or defending aspects right from the beginning, at the latest before the preclusion period set by the Nullity Senate. In recent discussions of the attorneys concerning the future impact of the new law on strategic considerations it turned out that there will a tendency that the patentee (defendant) will file numerous auxiliary requests in order to avoid revocation due to a late filed request.
 
It will be interesting to see how both the attorneys and the judges will interpret each amendment to the respective provisions of the amended patent law and put them into practice in the future. Anyway, it is strongly believed that these measures introduced in the patent nullity procedures will help to streamline and accelerate the course of procedure in first instance before the Federal Patent Court and in second instance before the Federal Supreme Court, thereby further improving the competitiveness of the German patent system in the world.

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