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

Note This article is my contribution to the BARDEHLE PAGENBERG IP Report IV/2011. The article discusses the German approach to coordinating the two means available for invalidating a patent: on the on hand (German or European) opposition proceedings and national nullity proceedings on the other hand. Read the article as originally published at the BARDEHLE PAGENBERG website.

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 The patent was revoked during European opposition proceedings, whereupon the patentee filed an appeal against the decision to revoke the patent.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 bas…