As in several other jurisdictions, in Germany a patent belongs to the inventor or his successor in title. If this right is infringed, the lawful owner has two options, namely filing a suit for the recovery of his property with an ordinary court, or filing an opposition with the German Patent Office (DPMA), within the opposition period of three months. The latter option offers the unique opportunity to file a new patent application claiming priority of the unlawful application.
In the past, the German Federal Court of Justice (Bundesgerichtshof, BGH), held the opinion that non-patentable subject matter cannot be the subject of an unlawful deprivation. This view was in contrast to the proceedings in a suit for recovery of property where the patentability is not a prerequisite, and is not even considered.
In a recent decision, the BGH abandoned the previously held opinion and ruled – by confirming a previous decision of the Federal Patent Court – that a decision on the unlawful deprivation only, without considering the patentability, can be justified (X ZB 43/08 – Schweißheizung, February 22 2011). The decision is based on the unique right to re-file the application given to the opponent only in opposition proceedings.
In the underlying case, company C filed an opposition against a patent co-owned by C and two inventors BA and SO. Before filing the opposition, the company acquired the right of the patent from two further inventors co-owning the patent. It turned out that BA was not a true inventor, and the rights of SO were legally transferred to C in accordance with employee invention law. Originally, the application was filed by SO as the only applicant, who later transferred the application to all four inventors by obtaining the necessary signatures by fraud. In this specific constellation, the unique right to re-file the application justifies the filing of an opposition against the own co-owned patent. This truly is an exceptional case.
|
Nils Braun |
Maiwald Patentanwalts GmbH
Elisenhof, Elisenstr 3
D-80335, Munich, Germany
Tel: +49 89 74 72 660
Fax: +49 89 77 64 24
