Germany: Determining litigation value in patent appeals
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

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.


Stefanie Parchmann

Maiwald Patentanwalts GmbHElisenhof, Elisenstr 3D-80335, Munich, GermanyTel: +49 89 74 72 660 Fax: +49 89 77 64

more from across site and ros bottom lb

More from across our site

Firms explain how monitoring, referrals and relationships with foreign firms helped them get more work at the TTAB
Luke Toft explains why he moved back to Fox Rothschild after working in-house at Sleep Number for five months
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
In a seminal ruling, the Beijing Internet Court said images generated by Stable Diffusion counted as original works
Boston-based John Lanza is hoping to work more with life sciences colleagues on the ‘exciting’ application of AI to drug discovery
The Delhi High Court has expressed its willingness to set global licensing terms in the Nokia-Oppo dispute, but it must deal with longstanding problems first
Some patent counsel are still encountering errors even though the USPTO has fully transitioned to the new system
A senior USPTO attorney spoke at a Nokia-sponsored event on the EU’s proposed SEP Regulation today, November 29
IP counsel are ‘flooded’ with queries from clients worried about deepfakes, but the law has so far come up short
Each week Managing IP speaks to a different IP practitioner about their life and career