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Interest in Legal Protection for a Nullity Action – Part 3

As reported here on January 8, 2021, the Federal Court of Justice (BGH) had several opportunities in 2020 to comment on a licensee’s interest in legal protection after the expiry of a patent term.

The fact that the BGH does not place too high requirements on proving legal interest in an action for revocation, even after the expiry of the patent in suit, has in the meantime been confirmed in a further decision in spring 2021 (decision of 26 January 2021, case no. X ZR 24/19 (BPatG)).

In the underlying case, the patent in suit had lapsed between instances due to the time that had passed.

While the Federal Patent Court (BPatG) had declared the patent in suit to be invalid in its entirety, the Federal Supreme Court (BGH) subsequently amended the judgment upon the defendant’s appeal and largely upheld the patent in suit.

The BGH affirmed the admissibility of the action for revocation despite the expiry of the patent in suit due to the passage of time. The required interest in legal protection resulted from the fact that the invalidity plaintiff had reason to fear that he could be exposed to the risk of claims arising from the patent due to past acts, despite the expiry of the patent. An interest in legal protection can therefore only be denied if a claim by the patent proprietor is seriously out of the question (as already stated by the Federal Court of Justice, decision of 13 July 202, case no. X ZR 90/18 – Signalübertragungssystem [signal transmission system], and judgment of 22 September 2020, case no. X ZR 172/18 – Truvada).

The BGH left open whether, in the present case, the concern of a claim based on a request for inspection filed by a licensee of the patent in suit (unsuccessful for formal reasons) was sufficient for this purpose. For the assumption of a sufficient cause for concern of a claim and thus of an interest in legal protection, the BGH instead found it sufficient if the patent proprietor declares after the conclusion of the inspection proceedings and after the expiry of the patent in suit that they are still willing to defend all IP rights relating to the product in dispute.

This decision once again confirms the rather low requirements that the BGH places on proving interest in legal protection in an action for revocation even after the expiry of the patent in suit. However, whether the effort required for time-consuming and cost-intensive nullity proceedings is justifiable for an alleged infringer, even after the expiry of the patent in suit, cannot be generally affirmed and should always be decided by thoroughly weighing up the advantages and disadvantages in the individual case.

Our blog contributions shall provide an overview with regard to legal topics, legislation and case law and are supposed to provide some general information rather than constituting any specific advice. Please do not hesitate to contact Maiwald and in particular the authors of the particular contributions if have any questions on the addressed topics or on other legal issues.

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Dr. Christian Meyer



Certified IP Lawyer

UPC Representative