Once a patent is no longer in force, it can no longer be challenged with a nullity action.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 its ruling of July 21, 2022 (Ref.: X ZR 110/21).
Patent protection is an important tool to protect intellectual property. Since there may be a general interest in nullifying unjustly granted protective rights, a patent can fundamentally be challenged by anyone, explains the law firm MTR Legal. However, if the patent has already lapsed, this general interest no longer exists and it can no longer be challenged with a nullity action, unless the plaintiff has a corresponding need for legal protection, decided the Federal Court of Justice (BGH).
In the underlying case, an association sued a patent, claiming it violated § 2 paragraph 2 sentence 1 no. 3 of the Patent Act and therefore should not have been granted. During the proceedings before the Federal Patent Court, the patent lapsed because the patent holder did not pay the annual fee to maintain the patent. Since the patent was thus no longer in force, the Patent Court dismissed the action.
The plaintiff appealed against this, but was unsuccessful before the Federal Court of Justice (BGH). The judges in Karlsruhe stated that the action for the declaration of nullity of a patent is designed as an actio popularis, allowing anyone to challenge a patent. The background is that there can be a general interest in withdrawing unjustly granted protective rights. However, this general interest no longer exists if the patent is no longer in force, as in the present case. In such a case, a nullity action is only permissible if the plaintiff has a need for legal protection, according to the BGH.
However, such a need for legal protection does not exist here. A general interest in ensuring lawful granting practices of the patent office is not sufficient. Furthermore, there is no impairment of the plaintiff’s rights, since the patent has now lapsed and no legal effects affecting the plaintiff arise from it, decided the BGH.
Attorneys experienced in industrial property protection can advise on patent law, trademark law, copyright law, and competition law.
