BGH: invalidity action with pending EPO opposition

In the decision Aminopyridin, the Federal Supreme Court (BGH) commented on the connection and dependencies between invalidity actions and oppositions before the European Patent Office (EPO). The decision Aminopyridin (X ZR 47/22) dealt with the question:

When can I file an invalidity action if a European opposition is pending?

The facts

The case concerns an IP right relating to the sustained release aminopyridine composition for the treatment of multiple sclerosis. In its invalidity action filed on 20 August 2020, the applicant sought a complete declaration of invalidity of the patent in suit, claiming that the subject-matter attacked was not patentable.

In parallel, the defendant has defended this challenged IP right before the European Patent Office, inter alia, in two amended versions. Taking these amendments into account, the European Patent Office finally upheld the IP right in amended form. The decision of the European Patent Office was taken on 21 July 2022.

Even before this EPO decision, in its decision of 25 February 2022, the Federal Patent Court dismissed the invalidity action as inadmissible (BPatG - Fampridin (3 Ni 23/20 (EP)).

This was the subject of the applicant's appeal before the BGH, which continued to pursue a complete declaration of invalidity and, as a matter of priority, requested that the case be referred back to the Federal Patent Court.

BGH: Invalidity action with pending opposition proceedings

The Federal Patent Court based its decision in particular on the fact that the action was inadmissible under § 81(2) German Patent Act because the opposition proceedings before the European Patent Office were still pending.

The BGH said that the opposition proceedings had been concluded in the meantime. And thus the patent in suit had lost its effect insofar as its subject matter went beyond the version amended in the opposition proceedings before the EPO (BGH, judgment of 17 April 2012 - X ZR 55/09, GRUR 2012, 753 marginal no. 19 - Tintenpatrone III).

This raises the question: When do opposition proceedings end?

When do EPO opposition proceedings end?

The Federal Patent Court also has commented on this question in the Fampridin decision. According to this, the time of the conclusion of the oral proceedings, rather than the time of filing the action, was decisive for assessing the ground for refusal of an bar to action under § 81(2)(1) German Patent Act.

The BGH confirmed this assessment and added as a guiding principle that changes also have to be taken into account.

The leading principle of BGH:
"PatG § 81 (2), 1st sentence.
For the assessment of whether the ground for refusal under § 81 (2), first sentence, German Patent Law exists, the time of the decision on the action is to be taken into account, not the time of filing the action.
In this context, changes that only occurred in the course of the appeal proceedings must also be taken into account (see also BGH, judgment of 19 April 2011 - X ZR 124/10, GRUR 2011 - Mautberechnung)."

Thus, if - as in the present case - the European Patent Office has decided that the patent is maintained in amended form and this can no longer be challenged, an action for invalidity and revocation is only admissible to the extent that it is directed against the legal existence of the amended scope.

Contrary to the opinion of the patent court, it is not the sole decisive factor for the lapse of the cause of action established by opposition proceedings before the European Patent Office whether the proceedings have been formally terminated and the patent has been formally restricted in its legal existence.

Rather, the BGH said, the decisive factor is whether the opposition proceedings have reached a stage where there is no longer a risk of conflicting decisions or unnecessary duplication of proceedings. At any rate, at the time of the oral proceedings, the opposition proceedings had been concluded.

Finally, the case was referred back for a new hearing and decision before the Federal Patent Court. The Federal Supreme Court explained that the patent court had - logically from its point of view - not examined the merits of the claim. The BGH also considered the brief statements of the patent court not to be a suitable basis for deciding on the complex facts of the case.

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