Federal Court of Justice, judgment of 11 August 2021, ref. no. X ZR 96/18
This series of articles deals with the most recent decisions of the Federal Court of Justice (BGH) on the interest in legal protection with regard to an action for revocation after the expiry of the patent term (cf. also previous articles of 20 October 2020, 4 Jan 2021 and 10 Jun 2021).
In the underlying case, the patent in suit had already lapsed by the time the nullity actions were filed, while infringement proceedings based only on subsidiary claim 21 of the patent in suit were pending before the Regional Court of Düsseldorf.
The Federal Patent Court (BPatG) denied the admissibility of the nullity actions with respect to all claims not at issue in the infringement proceedings for a lack of a special need for legal protection. Moreover, the Court declared the patent in suit invalid to the extent of claim 21 for a lack of novelty (judgment of 15 November 2017, case no. 5 Ni 59/16).
In the appeal instance, the BGH deviated from this and affirmed the admissibility of the nullity action in itsentirety, declaring claims 1-20 of the patent in suit to be invalid and upholding claims 21-26 in amended form.
In justification, the Federal Court of Justice stated that the need for legal protection should not be assessed according to overly strict standards. In doing so, the Court confirmed its previous case law, according to which this need can only be denied if a claim by the patent proprietor is no longer seriously possible (with reference to the decision of 14 February 1995 – X ZB 19/94 – Tafelförmige Elemente as well as decision of 13 July 202, file no. X ZR 90/18 – Signalübertragungssystem),
In accordance with these principles, an infringement action that has already been brought generally gives rise to an interest in legal protection with respect to all claims of the patent, even if the action is only based on individual patent claims. This also applies to secondary claims, at least if their content is so largely identical that the realisation of the features of one claim (e.g. a device claim) typically lead to the realisation of the features of the other claim (e.g. a process claim). With regard to subclaims,an interest in legal protection could at most be denied if it is obvious that the challenged embodiment does not realise a feature provided for therein, either literally or by equivalent means.
The decision is in line with the most recent decisions of the BGH, according to which, even after the expiry of the patent in suit, no excessive requirements are to be placed on the interest in legal protection with regard to a nullity action. It remains to be seen, however, how the BPatG will implement the BGH’s requirements for the examination of the prerequisites for the need for legal protection in the case of subclaims. If one should take the BGH literally here, the BPatG would probably have to carry out a collateral examination of the infringement situation within the scope of examining the admissibility of the nullity action which on the one hand is not the task of the BPatG and on the other hand harbors the risk of a deviating assessment compared to the infringement court.
