BGH: Interest in legal protection regarding dependent claims and further independent claims in a patent nullity action
Decision X ZR 96/18 "Data Packet Conversion”
In the recently published decision in the patent nullity action "Data Package Conversion", announced on August 11, 2020, the German Federal Supreme Court (BGH) discussed the question, whether a nullity action is admissible, if it is directed to an independent claim on the one hand and further to independent or dependent claims on the other hand. The plaintiff in the nullity suit was sued by the defendant of the nullity action in a parallel infringement proceedings based on the independent claim (but not the dependent claims) and the patent expired in the meantime.
The decision of the BGH was based on an opinion of the German Federal Patent Court (BPatG) according to which a nullity action is inadmissible with respect to a further independent claim and dependent claims, which were not claimed in the parallel infringement proceedings, in which the plaintiff of the nullity action was sued by the defendant of the nullity action, while in the meantime the patent had expired due to its age.
Especially, the plaintiff of the nullity action was sued based on claim 21, concerning a device for data packet compression. In addition to independent claim 21, the originally granted set of claims also included a claim 1, which was directed to a corresponding method for data packet compression. The Federal Patent Court (BPatG) concluded that the subject matter of claim 21 did not satisfy th requirement of being new over the prior art and that, to that extent, namely with respect to claim 21, the nullity action is admissible and has success. With respect to claims 1 to 20 and 22 to 26, i.e., with respect to the further independent and dependent claims, the nullity action was considered inadmissible, because the term of protection of the patent had expired and the parallel infringement action was not directed to the subject-matter of the dependent claims or to the subject matter of the further independent claim. According to the opinion of the Federal Patent Court the admissibility of a nullity action requires an interest for legal protection, which would no longer exist once the property right had expired.
In its decision, the German Federal Supreme Court came to a different conclusion, namely that the question of interest in legal protection must not be judged according to too strict standards and that in the present case there is interest in legal protection with respect to all patent claims.
The German Federal Supreme Court explains its opinion by pointing out that the plaintiff of the nullity suit must have the concern that he can still be sued after the expiration of the term of protection because of his actions in the past. This is especially true if an infringement action has already been filed, which expresses that the patent proprietor, i.e. the defendant of patent nullity, has already shown his will to enforce claims regarding an infringement of the patent. Thus, the Federal Supreme Court concluded that there is basically an interest in legal protection with regard to all dependent claims of the patent, if an infringement action has already been filed. This applies regardless of whether the infringement action is based only on one single patent claim.
In the case of the further independent claims, the decision of the Federal Supreme Court contains a limitation, namely that the interest in legal protection exists, if the content of the further independent claims is essential identical to the subject matter of the claim on which the infringement suit is based. In such cases, a legal interest in legal protection exits, because it cannot be excluded that the attacked embodiment realizes the additionally provided features in the further independent claim.
In addition to the opinions, concerning the interest in legal protection with regard to further independent claims and dependent claims in nullity actions, the decision "Data Package Conversion" confirms that a defence of a patent in amended version filed for the first time in the second instance is admissible according to § 116 (2) PatG, if the new request differs from a request already filed in the first instance only in that some of the features, added to the granted version, have been deleted.