Oppositions and Nullity

Is a granted patent hampering your business activity or are you specifically faced with possible patent infringement proceedings or a warning for example? In this case, you have the option of opposing the patent or, where the nine-month opposition period has expired, the option of filing a nullity complaint.

In opposition proceedings, the Opposition Division of either the German Patent and Trademark Office or the European Patent Office examines the patentability of the patent once again in court-like proceedings. It should be noted here that the Opposition Division is independent of the Examining Division. This examination is often based on new prior art introduced into the proceedings by the opponent. This prior art may also comprise products, for example, which were being sold before the date on which the patent was filed, but which the Patent Office failed to take into consideration in the patent grant procedure.

The same applies to patent nullity complaints filed against German patents or European patents with effect for Germany and brought before the German Federal Patent Court in Munich, where a nullity senate consisting of two legal judges and three technical judges again examine the legal validity of the patent granted.

Both the opposition and nullity proceedings initially involve submitting a number of comprehensive written briefs, generally followed by oral proceedings of several hours, at the end of which a decision is usually delivered. With regard to opposition proceedings before the German Patent and Trademark Office or the European Patent Office, decisions at first instance may be contested by appealing the decisions. In the case of patent nullity proceedings, an appeal may be lodged against the German Federal Patent Court’s decision before the German Federal Court of Justice in Karlsruhe.

As patent infringement and nullity complaints in Germany are heard before separate courts (“separation principle”), good coordination between the patent attorneys and attorneys-at-law in both proceedings, which are often conducted in parallel, is essential. As an opponent or nullity plaintiff, you want to be sure that the patent challenged will be fully revoked as far as possible or that the patent is at least limited so that the patent no longer poses a threat to your products. As the patentee, you want to be sure that, where the patent is limited, it still enjoys sufficient scope of protection, so that your products are sufficiently protected from patent infringements.

To this end, BARDEHLE PAGENBERG’s patent attorneys and attorneys-at-law have been working hand in hand since the firm was founded in 1977 — a fact that clearly sets us apart from the majority of our competitors.