According to two decisions of the Federal Court of Justice (BGH) of 18.12.2012 (file ref.: X ZB 6/12 and X ZB 11/12), the costs for the attorney at law participating in nullity proceedings are to be refunded under all circumstances where parallel infringement proceedings are pending. These decisions mean that this issue will no longer, as it has for years, receive varied treatment within the Federal Patent Court.

The stage was set for this clarification when both the Fourth and the Tenth Nullity Chambers at the Federal Patent Court accepted the appeal on a point of law against their assessment of costs, after the Fourth Nullity Chamber (in accordance with the First Nullity Chamber) found in this regard that pending parallel infringement proceedings do not constitute sufficient grounds per se for the costs of the participating attorney at law to be refunded (see Haberl/Schallmoser, GRUR Prax 2012, 314).

Indeed, the Federal Court of Justice makes clear that the admissibility of an appeal on a point of law cannot already be inferred from its acceptance, yet derives from Section 84(2), second sentence, of the German Patent Act (PatG) the corresponding application of Section 574(1)(2) of the German Code of Civil Procedure (ZPO) in patent nullity proceedings, meaning that, after acceptance, the path is clear for a review of the decision as to costs.

In substance, the BGH initially expressly denies a similar application of PatG Section 143(3), since a loophole is already wanting in this regard.

Meanwhile, the question as to whether the costs for the participating attorney at law are refunded pursuant to ZPO Section 91(1), first sentence, must, according to the BGH, be answered in the context of a typifying approach, since otherwise the gain in justice which could be achieved by means of a painstakingly differentiating consideration in a particular case is outweighed by the disadvantages which arise when it could be disputed in virtually each individual case whether the costs of a specific action are to be refunded (BGH, point 24).

In the context of this typifying approach, however, parallel infringement proceedings regarding the same patent suffice. It is not necessary for the same parties to be pursuing the lawsuit; rather it is enough for it to be the exclusive licensee instituting the infringement suit for refundability to exist. In this regard, the BGH stipulates that if an infringement suit and a nullity action relating to the same patent are pending at the same time in respect of a party which is either directly or indirectly involved in both sets of proceedings, this carries particular requirements (point 27). In particular the submissions on the interpretation and on the scope of protection of the patent should be aligned (point 28). While this obligation may not exist at a legal level, it is, according to the BGH, in the individual interests of the party to present coherent reasoning in the two sets of proceedings. It is also not rare to have to react at short notice to indications from the court and to evaluate the repercussions for the other set of proceedings. In order to do this, the BGH states that in-depth knowledge of the specific procedural situation in the other lawsuit and of the action alternatives under consideration for the remainder of the procedure is necessary (point 30). The BGH refutes the notion that the patent attorney acting in the nullity proceedings might undertake this reconciliation alone, since "reconciliation naturally requires the other representative to participate in the nullity proceedings too" (point 30).

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