During patent opposition proceedings before the German Patent and Trade Mark Office or an appellate court the opponent may sometimes wish to be substituted. In present legal practice a successful substitution of the opponent requires, inter alia, that the "sphere of interest" be transferred from the former opponent to the new opponent. However, correctly determining the scope of this sphere of interest may result in complex and lengthy legal proceedings.
Therefore, the substitution of one opponent with another often bears a considerable risk of failing in the opposition proceedings before a lower court, and even before an appellate court, if the required transfer of the "sphere of interest" cannot be proven.
In analogy to nullity proceedings, Peter Hövelmann, judge at the Federal Patent Court, now proposes to apply Section 263 of the German Code of Civil Procedure to opposition proceedings. Thus, a substitution of an opponent would (only) require a statement from both the former and the new opponent that a substitution has taken place and a declaration of approval from the patentee. This declaration could also be replaced by a decision from the German Patent and Trade Mark Office or a ruling from the court that such a change is expedient.
Implementation of this suggested procedure may lead to a procedural simplification and, even more importantly, to legal certainty, especially in cases which are complex from a corporate law point of view.
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| Alexander Ortlieb and Christian Schäflein |
Maiwald Patentanwalts GmbH
Elisenhof, Elisenstr 3
D-80335, Munich
Germany
Tel: +49 89 74 72 660
Fax: +49 89 77 64 24
info@maiwald.eu
www.maiwald.eu