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Conditions for an action for revocation even after patent expiry - protection of individual rights and interests

Date: 1 August 2023

In a judgement of 20 June 2023 (case number X ZR 31/21), the Federal Court of Justice (BGH) once again specified, when an action for revocation is still admissible even after the expiry of the patent in suit, namely in case that the plaintiff has an interest of his own, based on his person, in the revocation of the patent. The action is only possible to protect individual rights and interests.

The headnote goes on to say: "An interest based solely in the person of a third party is not capable of justifying an action for a declaration of invalidity, and also not an interest of the general public".

The present case concerned a portable GPS-based device for monitoring sportive performance. The patent was partially declared invalid in the proceedings, but this is not elaborated on, in this article.

The German Federal Court of Justice (BGH) stated that a separate (legitimate) interest could arise from the fact that the invalidity plaintiff was exposed to claims for past acts even after expiry of the term of protection, i.e., had to worry about such claims for infringement of the patent in suit. The standard should not be too strict. It was even sufficient if the plaintiff had an interest in averting a claim by a third party for infringement of the patent in suit. In the present case, a legitimate interest existed: In the constellation in which the customer of an invalidity plaintiff is held liable for infringement of the patent in suit by offering and marketing software, the plaintiff indirectly acts in the interest of his customers (as third parties) - but the invalidation of the patent in suit is typically in his own interest at the same time, since he provided the embodiments challenged by the infringement action and therefore it cannot be ruled out that he will be held liable by his customers [who themselves no longer have a right of action].

In the present case, customers who wanted to use one of the devices challenged in the original infringement action, had to conclude an agreement with the plaintiff on the processing of the data generated in the process. Since customers who purchase the devices in question for their own use are typically interested in using them as intended, which is only possible after entering into an agreement with the plaintiff, without which the sale of the devices is significantly impeded, the plaintiff provides a substantial assistance service. Therefore, the plaintiff had to seriously fear that it would also be held liable for infringement of the patent in suit.

Here is the link to the judgement: click here

We will be happy to advise and represent you if you would like to have more certainty in case you would like to sue an infringer even after the patent term has expired or, conversely, if you have to fear being sued by a patent proprietor or you have already been approached by a patent proprietor in this respect.


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