Nullity Action – Definition and Significance
Die Nullity Action is an important legal instrument in German and European civil procedure law as well as in patent and trademark law. Its purpose is to subsequently declare a judicial decision, an administrative act, or a protective right—such as a patent or a trademark—null and void. Central to the nullity action is that its effect generally unfolds “ex tunc,” meaning the contested decision or right is deemed void retroactively from the outset.
Fundamentals of the Nullity Action
Legal Sources and Areas of Application
The nullity action is not a uniform type of action or challenge but is used specifically in various legal fields. Important areas of application include:
- Patent and Trademark Law (e.g., §§ 81 et seq. PatG, § 55 MarkenG)
- Corporate Law (e.g., challenge to resolutions of a stock corporation, § 241 AktG)
- Administrative Law (action against administrative acts with effect of nullity)
- European Law (action for annulment before the Court of Justice of the European Union, Art. 263 TFEU)
Distinction from Other Types of Actions
The nullity action differs from the action for annulment or declaratory action. While the action for annulment is directed against a valid but allegedly unlawful decision and only takes effect “ex nunc” (from the point of the judicial decision onward), the nullity action aims at establishing the invalidity of the act from the beginning.
Nullity Action in Patent Law
Legal Foundation
In German patent law, the nullity action is regulated in §§ 81 et seq. of the Patent Act (PatG). It enables third parties to assert the nullity of a patent before the Federal Patent Court.
Admissibility and Merits
Admissibility
The nullity action is admissible if there is a legitimate interest in establishing invalidity. Any third party is regularly entitled to bring an action (the so-called “everyone principle”).
Grounds for Nullity
The most important grounds for a nullity action against a patent are:
- Lack of Patentability (e.g., lack of novelty, absence of inventive step)
- Insufficient Disclosure of the invention (§ 21 (1) no. 2 PatG)
- Impermissible Extension of the scope of protection
- Illicit Appropriation of the invention
Procedure and Effects
The Federal Patent Court examines the grounds for nullity in ordinary proceedings. If the action is found to be justified, the court declares the patent null and void; the patent is then deemed retrospectively never to have existed (effect “ex tunc”). An appeal to the Federal Court of Justice is permissible against the decision.
Nullity Action in Trademark Law
Legal Regulation
In German trademark law, §§ 48 et seq., 55 MarkenG provide the possibility for a nullity action. The aim is the cancellation of a registered trademark in the register.
Grounds for Nullity
Key grounds include, for example:
- Lack of Registrability (e.g., absolute grounds for refusal under § 8 MarkenG)
- Absolute Grounds for Nullity such as deception, violation of public policy or morality
- Relative Grounds for Nullity such as conflicts with earlier rights
The proceedings end with the cancellation of the trademark if the requirements are met.
Nullity Action in Corporate Law
Significance in Stock Corporation Law
In stock corporation law, especially pursuant to § 241 AktG, the nullity action is a means to contest resolutions of the general meeting. It is particularly relevant when the resolution suffers from a particularly serious defect (e.g., lack of minimum publicity, failure to meet the required majority).
Difference from Action for Annulment
While the action for annulment takes effect “ex nunc,” a successful nullity action means retroactive invalidity of the resolution.
Nullity Action in European Law
According to Art. 263 TFEU, any natural or legal person may bring a nullity action before the Court of Justice of the European Union against acts of the institutions of the European Union (e.g., regulations, decisions) if these violate EU law. Proceedings may be initiated by Member States, institutions, and, under certain conditions, by individuals.
An annulment generally has effect “ex tunc” here as well. However, exceptions may apply if the Court temporally limits the effect.
Procedural Particularities of the Nullity Action
Plaintiffs, Defendants, and Jurisdiction
Depending on the legal field, the parties entitled to sue and the competent courts vary. In patent law, the Federal Patent Court is the court of first instance; in trademark law, it is the German Patent and Trademark Office or the Federal Patent Court; in corporate law, it is the civil courts.
Deadlines and Form
Deadlines are particularly relevant and regulated by law in patent and trademark law. The action must be filed in writing and substantiated. Serving the action and giving the defendant the opportunity to respond must be ensured in accordance with procedural safeguards.
Legal Consequences and Costs
A successful nullity action leads to the retroactive destruction of the contested legal position (e.g., patent, trademark, resolution). As a rule, the losing party bears the costs of the proceedings, but exceptions may exist.
Summary and Distinction
Die Nullity Action is an important legal remedy to retrospectively correct significant legal violations or grave errors in administrative acts, court decisions, protective rights, or corporate resolutions. Its essential feature is the retroactive removal of the legal act, thereby “restoring” the original legal situation.
The instrument of the nullity action strengthens legal certainty and creates clarity when legal errors of fundamental significance or violations of basic rules later come to light. Its precise form, scope, and procedural implementation vary depending on the legal field concerned.
References
- BeckOK Patent Law, Patent Act § 81 et seq.
- MüKoAktG, Commentary on the Stock Corporation Act § 241
- Schulte, Patent Act with EPC, 10th Edition
- CJEU, Legal Commentaries on Art. 263 TFEU
See also
- action for annulment
- Action for Cancellation
- System of Legal Remedies in Patent Law
Frequently Asked Questions
Within what period can a nullity action be filed?
The nullity action is generally not bound to a specific deadline, but can be filed during the entire duration of the patent. This stems from the principle that a patent not eligible for protection from the outset should not enjoy lawful protection. However, there are restrictions in connection with pending infringement proceedings: If an infringement suit has been concluded, a subsequently filed nullity action can generally no longer affect the substantively final decision. Furthermore, the filing of an action may be excluded if the patent has already been revoked ex officio or is no longer in force. The statute of limitations for specific claims, for example, for damages, is not affected by the possibility of a nullity action.
Who is entitled to bring a nullity action?
A nullity action can, in principle, be filed by anyone, since there is an interest in removing unjustly existing exclusive rights and the patent system serves the public interest (popular action). In contrast to the action for revocation of utility models, which may require a certain affectedness, no special affectedness is necessary for a nullity action against patents. The holder of a protective right infringed by the patent or a competitor may also file suit. The only limits apply to the person of the patent owner: They are not permitted to file a nullity action against their own patent, but may do so against a third party’s parallel patent.
Which court has jurisdiction for the nullity action?
Jurisdiction over a nullity action against a German patent lies exclusively with the Federal Patent Court. The action must be filed with the Nullity Senate located there. For European patents granted with effect for Germany, this jurisdiction likewise applies. Proceedings at first instance are conducted entirely at the Federal Patent Court. For the second instance and review of the first-instance decision, the Federal Court of Justice in civil matters (10th Civil Division) is responsible. Local patent courts and regional courts only have jurisdiction over infringement disputes, not nullity matters.
What costs are incurred in a nullity action?
The costs of a nullity action consist of court fees and attorney fees. The court fees are calculated based on the value in dispute, which according to § 39 GKG is determined in individual cases upon application or ex officio. The value in dispute typically reflects the patent owner’s economic interest in maintaining the patent, which regularly results in a high value in dispute (often in six-digit amounts). In addition, statutory attorney fees under the RVG apply, and representation before the Federal Patent Court and Federal Court of Justice requires legal counsel, with only attorneys admitted there permitted to appear before the Federal Court of Justice. In the event of unsuccessful proceedings, the losing party regularly bears not only its own costs but also the necessary costs of the other side.
What are the effects of a successful nullity action?
If the court finds the nullity action wholly or partly justified, the patent is destroyed retroactively (ex tunc), i.e., treated as if it had never existed. This has far-reaching civil law and economic consequences: ongoing infringement proceedings lose their basis with the legally binding nullity judgment, and infringement judgments that are already final but not yet enforced may, in certain circumstances, be set aside. Claims for damages or paid license fees, however, are not automatically refunded, but must, if necessary, be reclaimed in separate proceedings. The official registration of the patent is deleted.
Can a nullity action also be filed against a European patent?
A nullity action can be filed with the Federal Patent Court in Germany against a European patent that is effective in Germany (so-called ‘bundle patent’). The procedure and effect do not differ from those against national patents. If the European patent has already been revoked by a central opposition decision of the European Patent Office, a national nullity action becomes moot. For unitary patents (Unitary Patents) applied for and granted as of June 1, 2023, only the Unified Patent Court (UPC) has jurisdiction for nullity actions.
What defenses does the patent owner have in the nullity proceedings?
The patent owner can defend against a nullity action in various ways. On the one hand, they can defend the patent as originally granted; on the other hand, they may additionally submit limited versions of the patent as auxiliary requests. The limitation of the patent is permissible at any time until the conclusion of the last oral hearing (§ 83 (2) PatG). The patent owner may defend patentability and inventive step by referencing prior art, providing plausibility arguments, and submitting evidence and expert opinions. The claim will be dismissed only if the statutory grounds for deletion do not apply or the patent can lawfully be restricted.
