Strategic dealing with IP rights from competitors
Patents create exclusivity – not only for a company’s own products, but also with respect to those of its competitors. Yet what can be done if a third-party right restricts one’s own business activities or poses a strategic obstacle? For companies, particularly small and medium-sized enterprises, it is crucial to understand: a patent is not unassailable.
Patent law provides effective tools to challenge unjustified or overly broad rights – both at the national and European level. The most important procedures: opposition and nullity action.
Opposition: fast, cost-efficient, and available at an early stage
An opposition may be filed against European or German patents – within 9 months of their grant (§ 59 German Patent Act, Art. 99 EPC). The competent authorities are:
- the German Patent and Trade Mark Office (DPMA) for national German patents,
- the European Patent Office (EPO) for European patents.
In opposition proceedings, the patent is examined in its entirety – often on grounds of lack of novelty, absence of inventive step, or insufficient disclosure. The key point: third parties without direct legal interest may also file an opposition, in some cases through straw persons – a legitimate way to position oneself strategically while remaining anonymous.
Nullity Action: the remedy against older, already granted patents
Once the opposition period has expired, the only remaining option is to bring a nullity action:
- Jurisdiction for German patents lies with the Federal Patent Court (BPatG) in Munich (§ 81 German Patent Act).
- For European patents with effect in Germany, jurisdiction likewise lies with the Federal Patent Court (BPatG) – unless the patent has been registered under the Unitary Patent system; in that case, competence rests with the Unified Patent Court (UPC).
Here too, complete or partial revocation of the patent may be achieved. The most common ground for nullity remains lack of patentability – in particular in view of the prior art.
Practical Example: Why SMEs Should Take Action
A mechanical engineering company discovers that a competitor holds a newly granted patent whose scope could also cover one of its own products. A warning letter is (as yet) not on the table. Nevertheless, an early opposition can create clarity and minimize risks – before costly redesigns or even license negotiations become necessary.
Equally important is awareness of opposition or nullity proceedings when planning IP strategies: anyone developing a new product should not only focus on their own applications, but also have older third-party patents reviewed to assess whether they can be successfully challenged.
Conclusion: Attack as a Form of Defense – with a Sense of Proportion
Opposition and nullity proceedings are not merely a form of legal defense, but an integral part of the toolbox of strategically minded companies – particularly for SMEs. They offer the opportunity to limit the effect of third-party rights, secure market access, and expand room for negotiation.
At the same time, it is essential that such proceedings are always prepared with both technical and legal expertise. Once filed without due consideration, they are difficult to correct – and that, too, is part of the strategy.