Patents and utility models give their proprietor the right to make exclusive use of an invention and prohibit unauthorised third parties from using it.
On the other hand, it is possible for those who are accused of infringing the patent or utility model to defend themselves against the charge by destroying the patent or utility model.
German and European patents belonging to third parties can be attacked after grant within a time limit defined by law by filing an opposition with the German Patent and Trade Mark Office or the European Patent Office, respectively, in order to have the patent revoked in its entirety or at least in part. Oppositions may also be used as strategic measures to keep technical fields free from third-party patents for one’s own products or possible future products.
Anyone can file an opposition without explaining a particular interest. The costs of opposition proceedings are predictable, since each party bears its own costs.
An opposition has to be filed within the time limit and must be based on at least one of the grounds for opposition of lack of novelty, lack of inventive step, insufficiency of disclosure or inadmissible addition of subject-matter. The first instance of the opposition proceedings, which is initially conducted in writing, is concluded with oral proceedings. In a second instance, an appeal may be filed against the first-instance decision.
The patent attorneys of our firm have great experience in German and European opposition proceedings and represent both opponents and patent proprietors on a regular basis. The knowledge of the proceedings and the boards responsible obtained in the many years of experience allows a confident and successful representation in defending our clients' own patents as well as attacking competitors' patents.
Since the defendant in an infringement suit often has to expect serious consequences as a result of the injunctive relief and damage claims asserted against him, patent nullity proceedings are usually conducted by teams of attorneys at law and patent attorneys in order to counter in the best possible way the legal and technical problems associated with such proceedings, which are usually extremely complex.
In nullity suits against German patents or German parts of European patents, the Federal Patent Court has jurisdiction in the first instance and the Federal Court of Justice in the second instance. The litigation cost risk can be substantial in nullity proceedings, since the value in dispute is determined by the value of the patent and therefore usually exceeds the value in dispute of the parallel infringement proceedings.
In utility model cancellation proceedings, the German Patent and Trade Mark Office has jurisdiction in the first instance and the Federal Patent Court in the second instance. The cost risk of utility model cancellation proceedings is lower than that of nullity proceedings, due to lower official fees.
Nullity proceedings and cancellation proceedings take an average of two to three years for each instance.
It is not only the case that one’s own product can be strengthened in competition by means of these intellectual property rights, but rather products of competitors can usually also be prevented from coming undesirably close to patented products. The cost risk in patent litigation is usually considerably higher for the competitor committing the plagiarism than for the patent proprietor, since, in addition to the costs of the proceedings, the defeated competitor has to bear the costs for damages and the costs for products that have already been produced but might not be usable any longer.
The patent or utility model basically gives its proprietor a right to prohibit (injunctive relief). Additionally, further claims, such as claims for damages, for destruction of products infringing the patent or utility model, for recall and for the provision of information, form the basis for calculating the amount of damages.