This article presents the current revocation rates with respect to granted patents in Germany on the basis of the case law of the German Nullity Senates of the German Federal Patent Court and the German Federal Court of Justice in the period between 2018 and 2020. It highlights patents from the field of software and telecommunications. Repeating this survey was prompted by the dispute regarding the presumption of validity of patents in preliminary injunction proceedings which has recently been escalated up to the Court of Justice of the European Union.
After several years, it is time to collect and analyze current data on the revocation rates in German nullity proceedings again.1
At the same time, there is also a specific reason for doing so: Judges are divided on the issue of the presumption of validity of a patent, which has been examined and granted, in preliminary injunction proceedings. According to the current case law of the three leading Higher Regional Courts (Düsseldorf, Karlsruhe and now also Munich), the assumption of validity is increasingly being challenged. In principle (with a few recognized exceptions), a preliminary injunction should only be considered where a patent has already successfully withstood contentious validity proceedings. However, if the validity of the patent has not yet been attacked, such patent is not suitable without more ado as a basis for granting a preliminary injunction. 2 The 21st Civil Chamber (Patent Litigation Chamber) of the Regional Court of Munich I considers this practice to be unlawful as it is irreconcilable with EU law, and it therefore sought clarification from the European Court of Justice.3
This article therefore summarizes the nullity case law of the German Federal Patent Court and the German Federal Court of Justice for the years 2018 2020 and reveals how many patents were revoked for what reasons and to what extent.
A. Tenor of the survey
All published judgments rendered by the German Federal Patent Court and the German Federal Court of Justice in German patent nullity proceedings between 2018 and 2020 inclusive (following on from an earlier survey for the years 2010 to 2013 inclusive) form the basis of the survey.4
The survey first involved examining the judgments of the Nullity Senates5 of the German Federal Patent Court (221 judgments in total6). These were organized according to date, Senate, and operative provisions. In addition, the grounds of the judgments were considered more closely in order to be able to better assess how often the various nullity grounds were successful. Furthermore, a differentiation was made between European and German patents, in order to clarify whether there were any differences in this respect.
Following this, the judgments from the nullity appeal proceedings before the 10th Senate of the German Federal Court of Justice were analyzed for the period between 2018 and 2020 inclusive. This involved a total of 115 judgments.7 These were also examined in accordance with the above criteria. Where the German Federal Court of Justice upheld a decision at first instance, a differentiation was made according to whether the patent was revoked, partially revoked, or maintained. However, amending judgments were categorized according to whether the patent was revoked, partially revoked, partially restored, or maintained or whether the proceedings were referred back to the German Federal Patent Court for a ruling.
Finally, the judgments relating to software and telecommunications patents (S/T patents)8 that are particularly relevant in practice were assessed separately and examined to determine how often lack of patentability as a result of public prior use was claimed and the success rate of these claims.
1 Müller-Stoy/Hess, Mitt. 2014, 439.
2 Higher Regional Court of Düsseldorf, GRUR-RR 2008, 329 - Olanzapin; GRUR-RR 2011, 81 - Harnkatheterset; Higher Regional Court of Karlsruhe, GRUR-RR 2015, 509 - Ausrüstungssatz; Higher Regional Court of Munich, GRUR 2020, 385 - Elektrische Anschlussklemme.
3 Regional Court of Munich I, decision dated January 19, 2021, docket number 21 O 16782/20 = GRUR-RS 2021, 301; for details of the division in the judges' opinions: see notes in Kühnen, GRUR 2021, 466; Pichlmaier's response, GRUR 2021, 557.
4 Müller-Stoy/Hess, Mitt. 2014, 439.
5 In the period between 2018 and 2020, this involved the Senates 1, 2, 3, 4, 5, 6, and 7.
6 All decisions were retrieved from the website of the German Federal Patent Court, https://www.bundespatentgericht.de. Upon inquiry, we were informed that the decisions collected include all decisions that the Senates intended to publish. A few decisions from 2020 are still to be included. As at July 22, 2021.
7 All decisions of the German Federal Court of Justice were retrieved from the latter's website, https://www.bundesgerichtshof.de. As at July 22, 2021.
8 All patents in the IPC main classes G and H are subsumed under these.
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