OLG Munich: Time limit of vindication claim

The OLG Munich ruled on the time limit of the vindication claim. This is a decision with practical relevance, because the case is about a vindication action against a divisional application from a European parent application.

The patent in suit (the German part of European patent ... 462 B1 / DE ... 895) concerns automated heat treatment of liquid samples. The parties to the dispute had cooperated on a project to improve real-time PCR (Polymerase chain reaction (PCR) for in vitro amplification of genetic material ( DNA )) devices from May 2004, but the cooperation was terminated by the defendant in 2009.

The plaintiff had filed its own US patent application in January 2009, from the priority of which it filed a PCT application and a German utility model in 2010. The defendant in turn filed a parent application at the European Patent Office (EPO) in November 2010, which was published in June 2012.

The matter of dispute arose in 2013 about a divisional application from the parent application:

- 3 April 2013: The defendant files a divisional application (the patent in suit) based on the parent application of Nov. 2010.

- 4 July 2013: The applicant asserts in writing through its legal representative an alleged infringement of its IP rights by the patent in suit.

- 17 July 2013: The patent in suit is published.

- 09 February 2017: The applicant brings an action for vindication and thus requests the assignment of the IP rights to the patent in suit.

In its judgement of 17 April 2019, the Munich Regional Court of First Instance dismissed the action for transfer of the patent rights (Ref.: 21 O 2247/17), but granted the request for information and the request for a declaratory judgement. Not surprisingly, both parties appealed against this decision.

Limitation of the vindication claim

The plaintiff argued that the defendant's plea of limitation should not be admitted because it was only raised at second instance and this was based on negligence on the part of the defendant (§ 531(2) no. 3 ZPO).

The OLG Munich rejected this with the following leading principle:

"The plea of limitation raised for the first time in the appeal proceedings is to be admitted irrespective of the prerequisites of § 531 para. 2 sentence 1 nos. 1 to 3 ZPO if the raising of the plea of limitation and the factual circumstances giving rise to the occurrence of the limitation are undisputed between the parties to the proceedings (following BGH, NJW 2008, 3434).

For claims under Art. II § 5 (1), first and second sentences, IntPatÜG (or § 8, first and second sentences, PatG) the regular limitation period of three years according to § 195 BGB applies - in the absence of a special provision."
(our Quotation, the first and second leading principles).

Three-year limitation period

The three-year limitation period began to run in the case at the end of 2013, explained the OLG Munich, and therefore expired on 31 December 2016. At the time the action was filed, the claim was thus already time-barred.

A limitation period of ten years (according to § 852 sentence 2 BGB) was also discussed before the OLG Munich. But a 10-year limitation period would only apply if the claim qualified as a special tort. And in the opinion of the OLG Munich, this is excluded in the present case, if only because claims for damages in German tort law are regularly linked to fault or at least generally dangerous conduct.

According to case law, the limitation period begins with the creditor's knowledge (or grossly negligent ignorance) of the patent application. In the case of a divisional application - as in the present case - the application for the parent application is to be taken into account and not the later divisional application (see also 21 O 6020/18, GRUR-RS 2019).

And even if the patent has been granted in the meantime, a vindication action then filed is not directed at the patent, but rather at the patent application for this patent - because the claim for assignment of the IP right has already arisen with the patent application (see leading principle 3). The grant of the patent does not start a new limitation period.

Vindication claim - parent application and divisional application identical

The vindication claim under Art. II § 5 (1), first and second sentences, IntPatÜG refers, according to the wording, to the invention ("its invention"). What is meant is the actual invention ("in the form and scope") as it was substantiated in the original application as a whole.

And since a divisional application may not go beyond the content of the earlier application as originally filed, the parent application and the divisional application are identical with regard to the invention (see the leading principles 5 and 6 of the present decision).

Vindication claim not comparable with property right

The OLG Munich explained that patent vindication was not comparable to a claim for surrender based on property or another right in rem. Accordingly, the application by the non-entitled person did not constitute a taking of possession of the invention, but a certain kind of use of the invention (see paragraph 4 above).

The OLG Munich summarised this to the conclusion that the weight of the economically relevant powers in the relationship according to § 8 Patent Act or Art. II § 5 IntPatÜG lies with the "patent owner", whereas in the owner-occupier relationship it lies with the owner (as already Tilmann, GRUR 1982, 98).

The Munich Higher Regional Court therefore allowed the defendant's appeal and amended the final judgment of the Munich Regional Court I to the effect that the action was dismissed in its entirety (OLG Munich: 6 U 2665/19). Any claim for damages by the plaintiff was also dismissed due to the statute of limitations.

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