Germany: Determining litigation value in patent appeals
At last, Germany has clear guidelines regarding the litigation value of an appeal to the German Federal High Court of Justice (BGH) in patent application or opposition matters.
In its recent decision X ZB 3/15-Ratschenschlüssel II, the BGH provides patent applicants, patentees and opponents with clear guidelines on lower limits for the litigation value of an appeal to the BGH. Such appeals are possible under the German Patent Act subsequent to first instance appeal proceedings before the Federal Patent Court regarding a patent application or an opposition.
The determination of the litigation value of appeal proceedings before the Federal Court of Justice has to follow the same rules applicable to appeal proceedings before the Federal Patent Court. The litigation value shall therefore be determined with fair discretion, taking into account the parties' interest, but is limited by the value of the underlying judicial procedure.
In the case of an opposition to a patent, the objective interest of the parties may be quantifiable based on the value of the patent plus any claims for damages for which, in the absence of any other indication, the litigation value of pending or past infringement proceedings may provide the most tangible indication. The value of a patent that goes beyond this can be calculated with a surcharge of one quarter of the value of the infringement proceedings.
If there is no sufficient factual evidence for such an estimation, as in proceedings regarding a patent application, or in opposition proceedings without infringement of the patent, the value has to be determined differently. The fact that an applicant invests effort and expenses in the filing of a patent application and appealing against its refusal, and that the applicant will usually do so only in expectation of an associated economic benefit, justifies a minimum litigation value of €50,000 ($57,000). If a patent is opposed, a higher value is justified, namely €75,000 in case of a single opponent. If several parties oppose, this usually reflects an even greater general interest in the revocation of the patent, which justifies a further increase by €25,000 for each additional opponent.
Headnote BGH X ZB 3/15 (translated): The litigation value of the subject matter of a patent lawsuit shall be determined based on the reasonable interest of the appellant in accordance with the principles governing the valuation in nullity proceedings, if there is sufficient factual evidence for an estimate of the patent's intrinsic value. Otherwise, the litigation value in application proceedings is regularly €50,000. In opposition proceedings, the higher general interest is usually to be taken into account by means of a surcharge of €25,000 per opponent.