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Opposition and Revocation Proceedings

With regard to competition, the granted patents of one company will often inhibit the commercial activities of a rival company. It is therefore important to clarify whether the current or future actions of a company in terms of its production and marketing and its customers’ use of its products are covered by the scope of protection of a rival’s patent (whether just granted or long-standing) in order to avoid facing claims to injunctive relief and compensation. Clarifying these issues requires the involvement of a patent attorney. If it cannot be ruled out that a third party patent will be infringed, it may be possible to enter into licensing negotiations with the patent owner, with a view to obtaining a licence to the patent concerned. However, as competitors typically show little interest in granting licences, the only alternative may be to try to have the patent of the rival company revoked by way of opposition or revocation proceedings.

Anyone may file an opposition to a granted German or European patent in order to have the patent revoked, as long as the nine-month time period allowed for filing oppositions from the mention of the grant of the patent in the Patent Bulletin has not passed. If the time period for filing an opposition has passed or if the opposition proceedings by an opponent were unsuccessful, a revocation action may still be filed against the granted patent.

In the opposition or revocation action, reasons must be given as to why the patent was not rightfully granted. Prior to an opposition or revocation action being filed, its chances of success should be assessed by a patent attorney based upon the available prior art and an inspection of the file. If the action is deemed likely to be successful and the expense in view of the company’s own sales activities is considered justified, action may be taken against the patent.

In opposition proceedings, the relevant Patent Office will re-examine whether or not the necessary requirements for grant or maintenance of the patent are satisfied. This examination will be carried out by a panel comprising members of the Patent Office. Following an examination of the opposition, a decision will be issued as to whether the patent is to be revoked, maintained in restricted form, or maintained as granted. An appeal against the decision may be made before the German Federal Patent Court. A revocation action has to be filed at the Federal Patent Court.

The Federal Patent Court’s judgment may be to revoke the patent if the revocation action is deemed justified. An appeal against judgments of the revocation boards may be lodged at the German Federal Supreme Court.