The Düsseldorf Higher Regional Court (Oberlandesgericht Düsseldorf) granted an action for restitution in its judgment of 19 December 2019. The decision is reproduced in GRUR-RR 2020, p. 414 et seq.
In patent infringement proceedings in Germany, the court is bound by the granted patent and must base its decision on the patent as amended at the end of the oral proceedings. The court cannot therefore dismiss the action on the grounds that the patent should not have been granted. There is no plea that the patent is ready for cancellation in patent infringement proceedings. This is different in utility model infringement proceedings; there the objection of the readiness for cancellation of the utility model can be raised in infringement proceedings, § 13 (1) GebrMG. This difference exists because a patent is an examined property right and a utility model is an unexamined property right.
If the infringing court has sentenced the defendant for patent infringement and the patent is revoked in opposition proceedings or declared invalid in nullity proceedings after the infringement judgement has become final and absolute, the basis for the infringement judgement is subsequently withdrawn, because on the basis of such a decision it can be assumed that the patent has not been granted at all. In such a case, the defendant in the infringement proceedings may, by analogous application of § 580 No. 6 ZPO, file an action for restitution with the aim of having the judgment(s) passed against him set aside.
The restitution proceedings take place in three stages, the prerequisites for each of which must be examined separately.
First of all, admissibility must be examined. The (exclusive) jurisdiction of the court results from § 584 (1) ZPO. If only the Court of First Instance has ruled on the merits of the case, it has jurisdiction. Should the Court of First Instance II. If the Court of Second Instance has also ruled on the substance, the Court of Second Instance has jurisdiction. If, on the other hand, the court of second instance has dismissed the appeal as inadmissible or referred the case back to the court of first instance, the court of first instance has jurisdiction unless the judgment on appeal is also challenged (cf. Cepl/Voß, Prozesskommentar zum Gewerblichen Rechtsschutz, 2nd ed., on § 585 ZPO, marginal no. 2). It must also be examined whether the one-month period for filing an action under section 586 (1) ZPO has been observed. This period begins on the day on which the defendant in the infringement proceedings becomes aware that the patent for the action has been revoked with final effect or declared invalid. This is an emergency period which cannot be extended. Within this (very short) period of one month, the restitution claim must be received by the competent court. It should also be noted that after five years have elapsed since the challenged judgement became final, an action for restitution is no longer admissible, § 586 (2) sentence 2 ZPO (“absolute limit”). Against the background of this time limit, it is advisable not to allow the infringement proceedings to become final for as long as possible, because experience shows that stock proceedings can drag on for several years.
In a second step, the merits of the restitution claim must be examined. If the patent has been revoked with final effect or declared invalid, the restitution claim is well-founded.
In a third step, a new hearing takes place before the competent court. The main issue of the “old” trial is heard again, § 590 (1) ZPO. Since the patent on the action no longer exists, the patent infringement action must be dismissed on the basis of this new hearing. It is also possible that the plaintiff waives his claims, so that the patent infringement action is then dismissed by way of a waiver judgment in accordance with § 306 ZPO.
In the case decided by the Düsseldorf Higher Regional Court, the plaintiff (restitution defendant) had already declared to the defendant that it waived all claims due to the revocation of the patent before the restitution proceedings were initiated, arguing in the proceedings that this waiver would mean that there was no need for legal protection for the restitution claim and that the defendant (restitution claimant) would have to bear the costs of the restitution proceedings in any case in corresponding application of § 93 ZPO (“immediate recognition”). The Düs¬seldorf Higher Regional Court did not follow both arguments. No particular legal interest in legal protection was required for the restitution action. This is readily apparent from the fact that the restitution claimant is burdened by a judgment in the world which has become factually incorrect and must therefore be formally removed. The provision of Paragraph 93 of the ZPO is not applicable to an action for restitution. It must be borne in mind that the original infringement proceedings were initiated by the applicant and are now being continued. If the patent had already been revoked with final and binding effect in the preliminary proceedings, the plaintiff, as the losing party, would have had to bear the costs under section 91(1) of the Code of Civil Procedure.
If the defendant has made payments to the plaintiff (such as reimbursement of costs or damages) on the basis of the final judgment which has now been reversed by the restitution action, the defendant can demand these payments back from the plaintiff in analogous application of § 717 (3) ZPO because the legal basis for the payments, namely the original judgment, has been eliminated. If the defendant has violated the judgment which was annulled by the restitution action and has accordingly paid fines or periodic penalty payments to the state treasury, he must first obtain the annulment of the decisions on the fine or periodic penalty payment, §§ 775 No. 1, 776 ZPO. Afterwards, he can demand the return of the fines or periodic penalty payments from the state treasury because the legal basis for these payments – namely the decision on the fine or periodic penalty payment – has ceased to exist.
