In a recent decision (Ionenaustauschverfahren; 3 Ni 48/06 (EU)), the German Federal Patent Court (BPatG) ruled on who has to bear the costs in a nullity suit against a patent that is upheld with restricted claims that were not attacked by the plaintiff.

In the underlying case, a nullity suit was filed by the plaintiff, who attacked only a part of the claims as granted for lack of patentability. The patentee defended the attacked patent as granted, and filed auxiliary request claim sets with restricted scope of protection. During the nullity proceedings the plaintiff explicitly declared that he did not wish to attack the auxiliary request claims filed by the patentee. The BPatG held that the subject-matter of the patent as granted was not patentable, and partially nullified the patent to the extent that it goes beyond the restricted claims of the auxiliary request claims without any further examination, since the restricted claims were formally admissible and have not been attacked by the plaintiff.

In the obligatory decision on costs, instead of apportioning the costs between the parties, the BPatG then held that the patentee had to bear the total costs of the nullity suit for equity reasons in accordance with Section 84, Section 2 of the German Patent Act. The court argued that it is only fair that the patentee should bear all the costs, since the plaintiff never attacked the auxiliary request claims forming the basis for partial maintenance of the patent. The BPatG emphasized that the patentee has the choice to either voluntarily restrict his patent having claims which are too broad in a limitation procedure before the Patent Office, or to risk bearing all the costs in a nullity suit in the event that the plaintiff immediately agrees to a claim restriction proposed by the patentee and accepted by the court.

Therefore, it may be advisable to use the limitation procedure provided by Section 64 of the German Patent Act or Article 105a EPC, newly introduced into the EPC 2000, to restrict a patent granted with a scope that is too broad, instead of relying on the possibility to restrict the patent in a potential nullity suit.

Norbert Hansen

Maiwald Patentanwalts GmbH
Elisenhof, Elisenstr 3
D-80335, Munich
Germany
Tel: +49 89 74 72 660
Fax: +49 89 77 64 24
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