A is the owner of a European patent that protects a process for manufacturing biodegradable packaging films. The process combines plant-based raw materials with a special drying and pressing process, resulting in a stable yet compostable film.
B, a competitor, also produces biodegradable packaging films and distributes them in Austria. When A learns of this, he files a lawsuit for patent infringement in an Austrian court.
However, the court considers the patent to be invalid. In its opinion, the process was already known from earlier publications (lack of novelty) and could easily have been developed anyway based on the technical knowledge in this field (lack of inventive step). B is therefore convinced that A's patent should never have been granted.
Despite these objections, A pursues his lawsuit and demands, in particular, cessation of further distribution of the films and damages for the deliveries already made.
One of the most common defense strategies of the alleged patent infringer is to object to the validity of the patent. This objection plays a central role in patent infringement proceedings, as the effectiveness of a patent only extends as far as the patent is legally valid. If the patent is invalid, it loses its protective effect even for the past. A patent is invalid if it does not meet the legal requirements for patentability, such as lack of novelty or inventive step. In addition, a patent is invalid if it is not executable or if the patent holder has made changes after the application that go beyond the original content.
In the case of biodegradable packaging films, this means that if the patent asserted by A turns out to be invalid, for example because the process was already known or there was no inventive step, it loses its effect retroactively – thus rendering all of A's claims against B void. The sale of the packaging films by B was therefore lawful.
A patent does not have to be declared completely invalid. The patent holder can save their patent by limiting it, either by resorting to dependent patent claims or by restricting the patent through other features. In the course of invalidity proceedings, the patent holder can file auxiliary requests to defend their patent. These auxiliary requests serve as alternatives to the original patent form and are examined in the order in which they are filed until either a valid version of the patent remains or the patent is declared completely invalid.
Even if the original patent claim 1 is considered invalid, the patent can still be maintained with limitations. Example: Claim 1 is invalid because it was too general. However, patent claim 2 contains an additional feature—such as the use of a specific plant-based additive in the process for manufacturing biodegradable films. If B this feature is also used in its manufacture, it still infringes the limited patent despite the partial invalidity.
It is important that a limitation of the patent does not extend the scope of protection. This means that the new, limited patent claim must not cover any subject matter that was not included in the original patent. In most countries, such an extension constitutes an independent ground for invalidity.
In the case of biodegradable plant films, A realizes during the proceedings that claim 1 was actually too narrowly formulated: he could have claimed the process more abstractly instead of limiting it to films “based on plant starch.” However, it is not possible to rectify this now—an extension of the scope of protection in ongoing proceedings is excluded.
For A, this means that the overly narrow wording of its claim remains in place, even if this means that competitor B may use objects that are not covered by the granted patent claim. If an extension were to be permitted in this situation, the interests of third parties such as B would be undermined, as they have to adapt to the scope of protection granted.
In many countries, including Austria and Germany, there is a division of proceedings for patent infringement and invalidity. In Austria, the Patent Office decides on the invalidity of a patent, while the civil court is responsible for patent infringement. In Germany, the patent litigation chambers are responsible for infringement, while the Federal Patent Court decides on invalidity. In other countries, such as Spain, however, the infringement court also decides on the question of invalidity.
On the one hand, this allows for specialization of the courts, but on the other hand, in infringement proceedings with a nullity objection, two different institutions must decide on the same facts. This leads to duplication of work and, in rare cases, can result in conflicting decisions if the courts interpret the scope of the patent differently.
If the defendant raises a nullity objection in Austrian or German patent infringement proceedings, the civil court first examines whether the objection appears justified. If this is the case, the infringement proceedings are interrupted and the defendant must initiate nullity proceedings. These proceedings can take several years. Only after a decision on the validity of the patent does the court continue the infringement proceedings.
A sues B for infringement of his patent on biodegradable plant films. In the proceedings, B submits two older publications which, in his opinion, show that the process is not new. The infringement court also concludes that the documents could be detrimental to novelty.
In practice, however, the court cannot declare the patent invalid itself. It must suspend the infringement proceedings until the competent patent office (in Austria) or the Federal Patent Court (in Germany) has decided on the invalidity.
Without additional procedural measures, the division of infringement and invalidity proceedings creates a protection gap in favor of the defendant, as the patent holder can often only enforce his claims after years of invalidity proceedings. To bridge this gap, the patent holder has the option of applying for a preliminary injunction (EV). This can be used to temporarily prohibit the alleged infringer from continuing the alleged patent infringement until a final decision has been made on the validity and infringement of the patent.
Option 1: No preliminary injunction: A decides not to apply for a preliminary injunction. The main proceedings are suspended due to the documents submitted that destroy novelty until the patent office decides on the invalidity of the patent. During this time, B may continue to freely distribute its plant films. This creates a gap in protection for A because it cannot enforce its claims and its market position may be significantly weakened.
Option 2: Preliminary injunction: A applies for a preliminary injunction to bridge the gap. The court could thereby temporarily prohibit B from offering or selling the plant films. For A, this means that he can immediately secure his market position and keep his competitor out of the market until the final decision in the main proceedings is available.
However, the instrument of a preliminary injunction also carries a considerable risk: if it later turns out that the patent is invalid or that there is no infringement, the preliminary injunction was unjustified. In this case, the defendant is entitled to damages for the disadvantages caused by the preliminary injunction (e.g., production stoppage, lost profits).
However, proceeding with a preliminary injunction is risky for A: if it later turns out that the patent is invalid or that there has been no infringement, the preliminary injunction was unjustified. In this case, A must pay damages to B, for example for lost profits or additional costs incurred as a result of the production stoppage.
If the patent is declared completely invalid in the nullity proceedings, this has retroactive effect. This means that the patent is treated as if it had never existed. In this case, the patent infringement suit is dismissed because there is no longer a legal position worthy of protection that could be infringed.
B submits two older technical articles that describe films with the same properties prior to the filing date. The patent office examines these documents in the nullity proceedings and concludes that the invention is not new. The patent is then declared completely invalid in Austria. It is thus retroactively considered never to have existed. In the parallel infringement proceedings, A no longer has any basis for asserting claims. The lawsuit against B is dismissed—the proceedings are terminated at this point.
If the patent is only partially declared invalid in the nullity proceedings, the patent can be maintained in a limited form. The civil courts in the infringement proceedings must then examine whether the limited version of the patent is still infringed by the defendant's actions.
A is the owner of a patent for a process for producing biodegradable plant films. In claim 1, he generally describes a process for producing such films using vegetable starch. In the nullity proceedings, B argues that such processes were already known and submits older publications on the subject. The patent office examines the documents and declares claim 1 invalid due to lack of novelty.
However, the patent contains an additional feature in claim 2: in addition to vegetable starch, the films also contain a special lactic acid-based plasticizer that improves elasticity. This feature was not disclosed in the earlier publications. The patent is therefore upheld in limited form – only in the variant with lactic acid plasticizer.
In the parallel infringement proceedings, the court must now examine whether B also uses this additional feature. If he does, he continues to infringe the partially invalidated patent despite the partial invalidity. If, on the other hand, he only uses standard plasticizers, there is no longer any infringement.
If the patent remains fully valid in the nullity proceedings, the defendant no longer has the option of defending himself by raising the nullity defense. The infringement proceedings can continue without restriction, and the patent holder is entitled to injunctive relief and, if applicable, damages.
The patent office examines the documents and concludes that they do not prejudge the novelty of the invention and that the process is also based on an inventive step. The patent therefore remains fully valid in its original form. This means that B is cut off from defending himself on the grounds of invalidity. The infringement proceedings can continue without restriction and it must be examined whether the plant film manufactured by B falls under A's remaining claim.
