5.4.1 First-instance proceedings
The revocation action is not to be filed with the infringement court but with the FPC based in Munich. The FPC has a total of 25 panels, seven of which are nullity senates concerned with patent revocation proceedings. Each panel has a focus on particular technical areas, and, therefore, revocation actions are assigned to the respective panel based on the technical field of the patent-in-suit.
The threshold for filing an admissible revocation action against a German patent is rather low.
22.214.171.124.1 Form and timing
The revocation action must be in German (Section 126 of the Patent Act)14 and be filed in writing or as an electronic document using the communication methods provided by the FPC. If the patent-in-suit is a European patent that was filed and granted in another official language (e.g., English or French), a German translation should be provided. Translations of prior art references in English need not be filed in the first instance, but the FCJ usually requests German translations of the pertinent references on appeal. The claimant’s request may be for revocation of the patent either in its entirety or a part thereof.
With regard to the timing of a revocation action, Section 81(2) provides for a restriction: a revocation action cannot be filed as long as a notice for opposition can be filed with the respective patent office or as long as opposition proceedings are pending before the patent office. If a revocation action is nevertheless filed, it is rejected as inadmissible.
Besides this, there is no deadline or other timewise constraint. A revocation action can even be filed against a patent that is no longer in force if the plaintiff can show a special interest in the nullification of the patent. Such interest could, for example, result from the owner of the patent asserting or threatening to assert claims for damages arising from allegedly infringing activities during the lifespan of the patent. Such interest could also arise if the term of the patent lapses in the course of pending revocation proceedings and the plaintiff wants to continue the proceedings.
Section 80(5) defines the mandatory content of a revocation action: naming the parties of the proceedings (i.e., the plaintiff and defendant), indicating the subject matter of the case, and the facts and evidence in support of the grounds. Moreover, the revocation action must contain a specific motion.
The defendant is defined in Section 81(1), according to which the revocation action shall be directed against the proprietor of the patent as named in the official register of the German PTO. Even if the register does not reflect recent changes in the ownership of the patent and is thus incorrect, the proprietor of the patent named in the register is still the legitimate defendant. If a plurality of proprietors is named in the official register of the PTO, the action must be directed against all of them.
With regard to the plaintiff’s standing to sue, there are nearly no restrictions. As a general rule, anyone can file a revocation action against a German patent unless the plaintiff has concluded an agreement with the patent proprietor precluding such an attack. If the person interested in the revocation of the patent prefers to remain unknown, the action for revocation can even be filed by a strawman (e.g., a patent attorney), but a strawman is subject to the same legal constraints as the truly interested party. If and when the revocation action is based on usurpation, only the aggrieved person is entitled to file the complaint (cf. Section 81(3)). Said person can, of course, additionally reason the revocation action with other grounds for revocation (e.g., lack of novelty or inventive step). As already mentioned, a further exception applies for a revocation action against a patent that has elapsed when the plaintiff needs to have a special legal interest in the nullification of the patent.
The action for revocation of a patent can also be jointly filed by two or more plaintiffs. If several actions for revocation are pending against the same patent, the proceedings are often merged into one. Furthermore, instead of filing a separate action for revocation, it is also possible for a party to join pending revocation proceedings. A joinder of parties on the plaintiff’s side is, however, only possible if the joining party has a special legal interest in joining the proceedings. Such interest could, for example, result from the patent proprietor asserting or threatening to assert the patent against the joining party.
German parties can pursue the proceedings before the FPC themselves: it is not mandatory to be represented by an attorney-at-law or a patent attorney (cf. Section 97(1)). The parties may, of course, choose to be represented by an attorney-at-law or a patent attorney or by another agent. Suitable other agents are defined in Section 97(2), according to which a party can also be represented by its employees or the employees of an affiliate company (Section 15 of the Stock Corporation Act of 6 September 1965),15 family members of full age, persons qualified to hold judicial offices, and joined parties, if the representation is not linked to a paid activity. Representation by an agent who does not fall within the above categories is not admissible. However, foreign parties must be represented by a patent attorney or an attorney-at-law (cf. Sections 97(1) and 25).
Since the subject matter of a revocation action is the nullification of a patent, the motion must be directed at a specific patent being nullified either in its entirety or partially with regard to certain claims. Other motions – for example, motions requesting that certain features of a patent claim be nullified or that certain clarifying passages be added to the specification of the patent-in-suit – are not admissible.
126.96.36.199.2.3 Subject matter and facts and evidence supporting the grounds
In the grounds of the revocation action, the plaintiff must set out the reasons for which the patent-in-suit is to be revoked either entirely or partially. This does not only require naming a reason for revocation (e.g., lack of novelty, lack of inventive step, added subject matter, or sufficiency) but also requires detailed argumentation. The plaintiff must detail why a certain claim of the patent-in-suit lacks, for example, novelty or inventive step over a certain piece of prior art. This includes identifying a specific passage of the prior art document for each of the claim’s features. Similarly detailed argumentation is also required for the other grounds for revocation. It is not sufficient to submit a number of prior art documents accompanied by the general statement that the patent lacks novelty or inventive step in view of those documents.
188.8.131.52.2.4 Security bond
If the plaintiff does not live in or has their place of business in a member state of the EU, in a contracting party to the Agreement of the European Economic Area or in a state where, due to international treaties, no such security deposit may be requested, the defendant may request that the court order the plaintiff to submit a security bond that covers the costs of the proceedings. The rationale behind this is to ensure that the defendant is reimbursed the costs of the proceedings if the plaintiff must bear the costs of the proceedings after the action for revocation is dismissed. Without a security bond, the defendant would need to enforce its claim for reimbursement abroad, which may be very time-consuming and costly.
Just like infringement proceedings, German revocation proceedings are front-loaded – that is, they are initiated by a written complaint (a revocation action) setting forth in detail why the patent-in-suit is invalid for at least one of the statutory grounds for revocation.
184.108.40.206.3 Front-loaded written proceedings
Once filed, a revocation action is transferred to the competent board within the FPC. The assignment of cases follows the main IPC class of the patent so as to ensure that technically competent boards deal with the respective actions.
The competent board then checks whether the action meets the formal requirements and, in particular, whether the appropriate court fees have been paid in advance. As these fees directly depend on the estimated value of the matter in dispute, the court also checks the claimant’s proposal in this regard, if any, and then preliminarily fixes the value of the matter in dispute by a decision. It may happen that the court disagrees with the claimant’s proposal and sets a higher value; in such a case, the claimant must pay the fees accruing from this higher value as well. The court will not process the revocation action until all requisite fees have been paid.
Court fees in German actions for revocation can be quite significant. This is because the value of the matter in dispute is normally assumed to be in the range of EUR 250,000 to EUR 30,000,000, which translates into court fees of about EUR 10,000 to about EUR 545,000. If an infringement action based on the patent-in-suit is already pending, the rule of thumb for calculating the value of the revocation action is the value of the infringement action plus a lump sum of 25 percent for own use and licensing of the patent.
Once the formalities have been checked and the requisite fees have been paid, the revocation action is served on the defendant by the FPC, and the defendant is invited to (formally) respond thereto within a one-month deadline (Section 82). Should the defendant fail to respond in due time, a decision on the action may be taken immediately without oral proceedings, wherein each fact asserted by the claimant is deemed to be proven. If the defendant declares that they will not defend the patent, it must be declared null and void without examination on the merits.16 If the defendant objects to the revocation action in due time, as is normal, they are usually granted a two- to three-month deadline for filing a fully substantiated defense.
The defendant (patentee) can either defend the patent in full or in an amended (limited) form. The court normally does not consider other claim versions than those defended by the patentee. Similarly, the court can revoke the patent only to the extent requested by the claimant, even if it is convinced that the entire patent is invalid. For the same reason, the defendant can only defend the patent in a limited form to the extent that it has been attacked; nonattacked claims are maintained but must not be amended.17 This follows from the principle of party disposition in civil proceedings, which also underlies the respective procedural provisions in the Patent Act (Section 99).
Conversely, this principle is overlaid by – and to some extent in tension with – the principle of ex officio examination enshrined in Section 87: “The Patent Court shall investigate ex officio the facts of the case. It shall not be bound by the factual statements and the requests to take evidence of the parties.” In practice, this means that the FPC can, for example, deem a prior art reference relevant for novelty, even though it was only asserted under lack of inventive step or vice versa. The court may also find a prior art reference on which the claimant has not particularly focused to be highly pertinent. In some past cases, the FPC has even introduced prior art references into the proceedings of its own motion. While this practice has since stopped, the FPC may still draw parties’ attention to references reflecting what it deems to have been common general knowledge at the priority day.
220.127.116.11.4 Preliminary evaluation by the court
Once all parties have had the possibility to submit their observations, the presiding judge of the competent board sets a date for oral proceedings and summons the parties to attend the same. Moreover, the board deliberates on the case and issues a first communication. According to Section 83(1), the purpose of this communication is merely
to draw the attention of the parties to matters which are likely to be of particular importance for the decision or which are conducive to concentrating the hearing on the issues essential for the decision. Such indication is not required if the aspects to be discussed appear obvious from the arguments of the parties.
In practice, however, the communication represents a reasoned preliminary opinion on the merits of the revocation action, which is already a fairly good indicator of the final outcome in most (but not all!) cases. This preliminary opinion is binding for the court insofar that deviating from it requires the issuance of a further preliminary opinion, either in writing or orally at the hearing. This is to prevent any surprising outcome for the parties and to safeguard the losing party’s right to be heard.18
According to Section 83(1), the board’s communication, including its preliminary opinion, should be issued within six months after service of the revocation action. In preparation of the preliminary opinion, the court may set a deadline for the final submissions of the parties. In pending infringement proceedings, the infringement court should also be provided with the preliminary opinion. The rationale behind this statutory provision is to safeguard that the FPC’s preliminary opinion on the validity of the patent-in-suit can be taken into consideration by the infringement court in deciding whether the infringement proceedings should be stayed.
18.104.22.168.5 Written statements
In accordance with the principle of party disposition, the parties to the proceedings are basically free to file submissions or replies at will, although the court will be entirely satisfied with the revocation action and a reasoned reply and will not invite the parties to file additional observations or requests unless some matters or requests need to be clarified.
However, pursuant to Section 83(2), the board usually sets a deadline for both parties for filing their final submissions and requests when issuing the preliminary opinion. This will normally also be the last chance to introduce auxiliary requests in time. Only if the board, before or at the trial, comes to a view different from what has been held in the preliminary opinion can the party adversely affected by this development be allowed to file a further request. It is at the discretion of the court whether to reject late-filed means of attack or defense, or a further amended version of the patent, if considering these new submissions would necessitate postponing the oral proceedings and if the party has not sufficiently excused the delay (Section 83(4)).
Overall, the written proceedings mainly serve the purpose of preparing the final oral proceedings to the maximum extent possible so that the requests, the means of evidence and the main lines of argumentation have been clarified before the hearing starts. The procedure in writing is open to public file inspection upon request except where the patentee proves a conflicting interest warranting protection (Section 99(3)).
22.214.171.124.6 Auxiliary defense by amendments of the patent
As mentioned above, a defendant patentee may elect to either defend the patent as granted or in an amended (limited) form. For a limited defense to be successful, it is required that the amendment be admissible as such – that is, that the subject matter of the amended claims does not extend beyond the content of the application as originally filed (Section 21(1)(4)) and that it does not extend the scope of the protection of the patent (Section 22(2)). Moreover, the limited subject matter must meet the patentability and sufficiency requirements (Section 21(1)(1)–(2)). The admissibility of the amendment and its compliance with the other requirements of the Patent Act are examined in the revocation proceedings. Thus, no separate proceedings for amendment or limitation need to be initiated.
In addition, the defendant (patentee) in a German revocation action has the option of a staggered defense. They may defend the patent-in-suit in the form of a main request (e.g., patent as granted or a limited version thereof) and one or several auxiliary requests presenting further limited sets of claims. This is quite similar to the procedure in German and EPO opposition proceedings. To the extent that the defendant does not defend certain claims against the revocation action, those claims are to be revoked without examination on the merits.19
The patentee is not limited in their defense to a subset of the claims as granted but may also amend the claims by including features from the description. The only limitation is the prohibition of adding matter (Section 21(1)(4)) and expanding the scope of the patent (Section 22(1)), which also excludes replacing the claimed subject matter by an aliud. Conversely, when resorting to an example or a particularly preferred embodiment disclosed in the description of the patent application as the basis for an amendment, the patentee is usually not obliged to include all features of this example or preferred embodiment in the claim. This is as long as the features taken from the example or embodiment were disclosed as belonging to the invention as originally disclosed and contribute to the claimed solution.20
As a lack of clarity is no ground for revocation, claims that are attacked merely for this reason must be maintained as they are and cannot be amended. Even in the case of a limited defense by the patent proprietor in revocation proceedings, an examination of the clarity of the limited patent claim is not admissible, at least to the extent that the presumed ambiguity was already contained in the granted claims.21
The declaration that the patent is only defended in a limited form, or any auxiliary requests, do not need to be filed immediately when submitting the substantiated response to the revocation action, even though this is highly recommended to streamline proceedings and to assist the court in drafting a meaningful preliminary opinion (see above at 5.3.2). As a ground rule, it is advisable for the parties to front-load their complete cases in the first instance, similar to EPO opposition proceedings. The court may reject amendments filed after the expiration of a term set by the court under Section 83(4).
The FPC does not examine the unity or convergence of auxiliary requests. Furthermore, the FPC is not bound to examine the different auxiliary requests in the order used by patentee, but it will usually follow that order.
If the defendant (patentee) admissibly limits the patent of their own volition and the claimant withdraws the request for revocation to this extent, the patent is maintained in part based on said limitation, and declared null and void to the extent that it extends beyond this limitation, without further substantive examination. This may be one way for parties to settle the lawsuit, although the much more frequently used method to end revocation proceedings is by a withdrawal of the revocation action by the claimant. Such a withdrawal has immediate effect, even on appeal, and does not require the patentee’s consent.22 The patent is then maintained as granted.
126.96.36.199.7 Oral hearing
The final hearing concluding revocation proceedings follows a certain structure. First, the presiding judge opens the proceedings and checks the attendance of the parties and of the witnesses and so on, if any. Then, the value of the matter in dispute is finally set after having given all parties an opportunity to comment. Often, the court gives a reasoned indication based on the submissions of both parties and possibly also on general knowledge. This indication is then briefly discussed and usually accepted by the parties.
The presiding judge may then try to explore possibilities for settlement. Where appropriate, the court tries to “catalyze” such an agreement or may even gently push the parties to agree. The representatives are therefore expected to discuss the possibilities of a settlement with their respective clients before the hearing.
If no settlement is achieved, the presiding judge confirms and records the parties’ motions. Then they (or the reporting judge in exceptional cases) present the essential content of the files and explain the court’s provisional assessment of the case. This is followed by the parties’ pleadings and a discussion of the case (Section 91(1)). Judges may ask questions to the parties and occasionally avail themselves of this opportunity. Depending on the complexity of the case, the debate (including breaks) may take up to one full day.
The hearing is public (Section 69) except in extremely rare cases where the public is excluded from the proceedings at the request of one of the parties because the public nature of the proceedings threatens to endanger any interests of the requestor that warrant protection. Pursuant to Section 92, minutes of the hearing (including the taking of any evidence) are taken, but there is no transcript of the hearing. The minutes are often quite brief, though this varies from board to board.
After the parties have been heard and the case has been exhaustively discussed, the presiding judge closes the oral hearing, and the court retires for deliberation. The board may decide to reopen the hearing after deliberation or may proceed with giving the decision. Alternatively, the court may set a date for giving the decision (Section 94). It may also serve the decision on the parties rather than giving the decision orally in session. In practice, the FPC announces its decision most of the time on the same day after deliberation.
Pursuant to Section 84(1), the decision on the revocation action is rendered in the form of a judgment. The judgment normally concludes the dispute in this instance but is appealable. The FPC shall make its decision on the basis of its independent conviction gained in light of the results of the proceedings as a whole. The judgment contains the grounds for the decision (Section 93(1)).
The court’s judgment has an operative part wherein the patent-in-suit is either declared null and void in its entirety or partially or wherein the revocation action is dismissed. The operative part also contains a decision on the costs of the proceedings. In accordance with Section 84(2) and the applicable rules of the Code of Civil Procedure, the costs will usually be imposed on the losing party to the extent it lost the revocation action unless equity requires otherwise. Finally, the court usually orders that its decision be provisionally enforceable with regard to the costs if the cost creditor provides a security amounting to 120 percent of the amount to which they are entitled. The actual amount of the reimbursable costs is determined in a separate cost-fixation proceeding.
The fully reasoned decision in writing must be delivered within five months of the announcement of the decision. It should provide comprehensible reasoning on all points in dispute that were necessary for the court to arrive at its decision. However, the court does not need to give reasons for each attack or defense raised by one of the parties. For example, the FPC sometimes leaves the question of novelty undecided, even if it was controversial, but invalidates patents for lack of inventive step.
When a parallel decision from an EPO opposition division, a board of appeal or a national court of another EPC country is submitted by one of the parties, German courts are supposed to take note thereof and, as far as relevant for the decision in the case at hand, discuss such a decision as a weighty but not binding authority.23 Generally, the FPC is relatively little influenced by the outcome of preceding EPO opposition or appeal proceedings or invalidation proceedings in other countries.
The FPC may take evidence in oral proceedings pursuant to Section 88(1) of the Patent Act in connection with Section 355(1) of the Code of Civil Procedure. The necessity of taking evidence depends on whether relevant questions of fact that cannot be clarified otherwise are in dispute between the parties. Questions regarding the content or interpretation of the patent or prior art reference, as well as the evaluation of novelty, inventive step, sufficiency of disclosure and added matter, are considered to be legal questions that are not subject to the taking of evidence. Therefore, the taking of evidence before the FPC is the exception rather than the rule, particularly since the court is normally convinced that it has the necessary expertise to deal with all technical questions in dispute. Whether evidence is to be taken is determined by the court ex officio.
The type of evidence to be considered particularly includes the hearing of witnesses, experts and parties; inspections; and the consultation of documents. In practice, only experts, inspections and witnesses of fact play some role in revocation proceedings.
According to German civil procedural law, a strict distinction is to be made between experts appointed by the court (according to the procedure stipulated in Sections 402 et seq. of the Code of Civil Procedure) and party experts. Only the former are considered formal “means of evidence” and heard in court, whereas the opinions of the latter are simply assumed to be part of the submissions of the party that files them. Therefore, it is a rare exception for the FPC to interrogate a party expert in oral proceedings, even though it is possible.
If the FPC wants to consult a court expert, it must take a formal decision to this effect after hearing the parties. This normally takes place in the oral proceedings and may significantly extend the duration of the proceedings since an expert must first be identified, appointed and properly summoned. As this is hardly efficient – and, as the technical judges, due to their technical background, understand the technical aspects of the case at issue – appointing a court expert is a very rare event. Nonetheless, a specialist expert may be very helpful and advisable in complex cases or in cases involving new or specialist areas of technology. The FCJ expects the FPC to ensure that its decision is based on adequate technical expertise, either by means of the court’s technical judges or by means of a court-appointed expert.
The remuneration of the court expert (and any witnesses) is governed by Section 128a Patent Act and the Judicial Remuneration and Compensation Act.24
Pursuant to Section 373 of the Code of Civil Procedure, evidence by hearing witnesses shall be offered by naming the witnesses and designating the facts regarding which the witnesses are to be examined. The general rules of taking evidence in revocation proceedings (Section 88(3) of the Patent Act) apply: that is, parties need to be notified of the decision to take evidence and need to have the opportunity to attend the taking of evidence. They are allowed to direct appropriate questions to witnesses or court-appointed experts in the hearing. Witnesses of fact mainly play a role in cases of an alleged public prior use.
Inspection of a model or an apparatus can also serve as a means of evidence. This occasionally plays a role in mechanical engineering cases, particularly if a public prior use of the apparatus is asserted and the exact functionality or composition of the apparatus or parts thereof are in dispute.
188.8.131.52 Access to court files
The parties to the proceedings and third parties may request access to court files. A third party’s request is granted unless a party to the revocation proceedings can show that legitimate confidentiality interests would be affected by allowing a third party’s access to the court files (e.g., owing to commercial or technical aspects or trade secrets). In general, a legitimate interest of a party cannot justify a complete denial of access to the court files, because information that is to be kept confidential is usually only part of specific briefs or passages thereof. Therefore, access to the files is only excluded with regard to the respective specific briefs or respective confidential passages. These will be blackened prior to granting inspection of the files.