If a patent is no longer in force, it can no longer be challenged with a nullity action. This was clarified by the Federal Court of Justice with a ruling on July 21, 2022 (Ref.: X ZR 110/21).
Patent protection is an important tool for protecting intellectual property. Since there can be a general interest in removing unjustly granted protection rights, a patent can, in principle, be challenged by anyone, explains the commercial law firm MTR Rechtsanwälte. However, if the patent has already expired, this general interest no longer exists and cannot be challenged with a nullity action unless the plaintiff has a corresponding need for legal protection, the Federal Court of Justice decided.
In the underlying case, an association filed a lawsuit against a patent because it believed it violated § 2 para. 2 sentence 1 no. 3 PatG and therefore should not have been granted. While the proceedings were still pending before the Federal Patent Court, the patent expired because the patent owner did not pay the annual fee for maintaining the patent. As the patent was therefore no longer in force, the Patent Court dismissed the lawsuit.
The plaintiff appealed against this, but was unsuccessful before the Federal Court of Justice. The judges in Karlsruhe stated that the lawsuit for annulment of a patent is designed as a popular lawsuit, thus granting anyone the opportunity to challenge a patent. The background is that there can be a general interest in withdrawing unjustly granted protection rights. However, this general interest no longer exists when the patent, as in this case, is no longer in force. Then, a nullity action is only admissible if the plaintiff has a need for legal protection, according to the Federal Court of Justice.
However, such a need for legal protection does not exist here. A general interest in ensuring the lawful granting practice of the patent office is not sufficient. Moreover, the rights of the plaintiff are not affected, as the patent has expired and no longer has any legal effects relevant to the plaintiff, the Federal Court of Justice decided.
Attorneys experienced in commercial legal protection can advise on matters of patent law, trademark law, copyright law, and competition law.
