As a rule, pending examination proceedings before the European Patent Office are stayed once a rei vindicatio action is pending and if the European patent application was already published. A tip is to file the lawsuit with the administrative court (which does not have jurisdiction), since lis pendens arises there immediately upon filing the lawsuit, and then have the proceedings referred to the competent court.
During the stay, neither the applicant nor the Patent Office can change the legal status of the application, for example by withdrawing or granting the application.
With respect to German patent applications, a similar rule does not exist. Therefore, it is strongly recommended to request intermediate sequestration of the German application by way of parallel preliminary injunction proceedings (cf. below item 8), in order to prevent that the applicant transfers, limits or withdraws the application.
If a final decision has been rendered in favor of the plaintiff, the assignment of the patent (application) as well as the authorisation of the change of the entry in the patent register is deemed to have issued. In case of a favorable decision regarding a European patent (application), the plaintiff has the following three options:
(1) He can prosecute the European patent application as his own application in place of the applicant.
(2) He may file a new European patent application in respect of the same invention. The new application will be deemed to have the same priority date as the earlier application in so far as it does not extend beyond the content of the earlier application as originally filed.
(3) He may request that the older patent application be dismissed.
A legally binding decision regarding a European patent application is to be recognized in all EPC member states without further proceedings for recognition or acknowledgement. This does not apply to granted European patents, where in order to have the national patent offices change their registers, recognition or acknowledgment procedures have to be passed.