INFORMATION FROM THE CONTRACTING / EXTENSION STATES
DE Germany
Judgment of the Düsseldorf Landgericht (Regional Court) dated 16 March 1993
(4 O 137/92)1
Headword: Signalübertragungsvorrichtung (Signal transmission device)
Article II, section 8, IntPatÜG2
Keyword: "Ban on double protection - loss of effect of a German patent where a European patent with the same priority has been granted for Germany"
Headnote
1. In infringement proceedings, a defendant facing claims arising from a German patent can invoke the objection that the patent in suit has partly or wholly lost its effect, on the grounds that a European patent with the same priority has been granted for the same invention (Article II, section 8, IntPatÜG.)
2. The loss of effect, which does not impinge on the formal legal validity of the German patent and only nullifies the exclusive rights conferred by the patent to use the invention and prevent others from doing so, applies to the entire extent of protection conferred by the European patent with the same priority, including equivalent forms of infringement, inferior embodiments, etc.
3. A case invoking Article II, section 8, IntPatÜG cannot be brought in the form of a nullity suit but only via a request to pronounce legal consequences, inaccordance with Article II, section 8, paragraph 3, of that law3. However, if the scope of protection conferred by the German patent exceeds that conferred by the European patent, the remaining portion of the patent can be challenged via a nullity suit, especially where the grounds for nullity relate to lack of novelty and level of invention. With regard to the level of invention, the issue at stake is not whether the remaining portion of the patent is distinguished from the European patent by an inventive step, but whether- and only whether - its subject-matter contains an inventive step vis-à-vis the state of the art.
DE 1/94