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
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).
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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The chapter on the UK summarises the IP court and litigation system in the UK, recent developments in relation to IP law and practice, the forms and availability of IP protection and trends and outlook in the IP sphere.
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