Types of proceedings

• Appeal proceedings
• Revocation proceedings

Appeal proceedings

One type of procedure is the appeals proceeding. Every code of procedure which falls within the jurisdiction of the Federal Patent Court also provides for an appeals proceeding. In such cases, the Boards of Appeal of the Federal Patent Court take decisions as the judicial review instance of orders made by the German Patent and Trade Mark Office and by the Federal Plant Variety Office. The decisions are reviewed comprehensively both in terms of fact and law. To that end, the Federal Patent Court also engages in its own investigation (principle of ex officio investigation). The Federal Patent Court decides whether a property right (patent, utility model, topography of semi-conductor products, trade mark, design, plant variety) is to be granted, whether its registration is to be rejected, or whether a previously granted right is to be cancelled.

The legal remedy of an appeal to the Federal Court of Justice is available against the second-instance decisions of the Boards of Appeal of the Federal Patent Court. The Federal Court of Justice, seated in Karlsruhe, is the highest court of ordinary jurisdiction. A complaint on points of law results in
a legal review of the contested decisions. The Federal Court of Justice is, however, bound in principle by the factual findings of the Federal Patent Court. A complaint on points of law is admissible only if certain prerequisites have been met; namely, when the Federal Patent Court, in its decision, has
expressly so authorised. Without such permission, a complaint on points of law may be lodged admissibly (complaint without express authorisation) only if the appellant alleges one of the serious procedural breaches expressly enumerated in the law – for example, a violation of the right to a hearing in accordance with the law.

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Revocation proceedings

Revocation actions, i.e. actions to declare a registered patent invalid, are decided by the Federal Patent Court as a first-instance court. The Nullity Boards of the Federal Patent Court have jurisdiction for such cases. The patent revocation proceeding is separate from the registration procedure, in that decisions are made on the validity of registered national patents, European patents which apply to the Federal Republic of Germany, or supplementary protection certificates.

The revocation proceedings are commenced before the Federal Patent Court by submitting a complaint against the patent holder. An action for the revocation of a patent is usually the result of infringement proceedings. Actions to determine whether someone has infringed a granted patent (patent
infringement action) are decided by the courts of ordinary jurisdiction; namely, the regional courts, the higher regional courts, and in the final instance, the Federal Court of Justice (known as the principle of separation). Infringement proceedings involve an action by a patent holder (plaintiff) against alleged infringers (defendants). In patent revocation proceedings, the plaintiffs are potential infringers, and the patent holders are the defendants. If a revocation action is rejected, such a decision applies only between the participants in the proceedings and the parties named in the judgment. However,
if the patent is wholly or partially revoked, this decision has retroactive effect, and the patent is revoked or restricted for and against everyone. In other words, the effects go beyond the participants in the revocation proceeding. The revocation or restriction is noted in the patent register and published in the Patent Bulletin.

Nullity boards also make first-instance decisions in proceedings on the invalidity of a supplementary protection certificate, or on the grant or withdrawal of a compulsory licence, as well as the amount of the fee for a compulsory licence.

The legal remedy of appeal on points of fact and law (Berufung) is available against the judgments of the Federal Patent Court. The appellate instance is the Federal Court of Justice. Because ordinary jurisdiction for patent infringement proceedings also ends in the final instance before the Federal Court of Justice, uniform judicial decisions are ensured. In the appellate proceedings on fact and law, the Federal Court of Justice exceptionally functions as a fact-finder; i.e., it reviews the challenged judgment not only in terms of the applicable law, but in terms of the facts as well.

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