Sept. 2

A Comparison of the Federal Patent Court of Germany and the PTAB

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After the United States, Germany has the second most active patent docket in the world. With so much activity, Germany has a body dedicated to patent invalidity and appeal proceedings, known as the Federal Patent Court (“Bundespatentgericht”). This forum has original jurisdiction over challenges to a patent’s validity and appellate jurisdiction over decisions issued by the German Patent and Trademark Office (“DPMA”).



Similarities Between PTAB and Germany’s Federal Patent Court

Similar to America’s Patent Trial and Appeal Board (“PTAB”), the Federal Patent Court of Germany provides parties with an alternative to civil litigation for patent disputes. However, unlike the United States, Germany has separate courts for adjudicating disputes regarding infringement and disputes regarding invalidity, referred to as a “Split System”. In the U.S., a party can challenge the validity of a patent both in Federal District Court and in the PTAB. In contrast, in Germany, a challenge to validity (called a “nullity action”) must be filed in the Federal Patent Court.


Another similarity between the PTAB and the Federal Patent Court of Germany is the lack of jury trials, with technically and legally qualified patent law judges serving as the ultimate fact-finders and decisions makers. The proceedings in the Federal Patent Court are post-grant Inter Partes proceedings, again, similar to the PTAB’s Inter Partes Review proceedings. The timeline of a Federal Patent Court proceeding also mirrors the PTAB, with an average time of two years from the initial filing to a final decision. The PTAB, by statute, must resolve trials within one year of institution, and institution usually occurs five or six months after filing. See 35 U.S.C. § 316(a)(11). Therefore, the timeline for the PTAB is close to the two-year time frame for resolution in Germany’s Federal Patent Court.



EPO Board of Appeal Opposition Division

Disputes involving European patents are governed by European 
Patent Organization’s (EPO) Board of Appeal, which is governed by the European Patent Convention. The Board of Appeal has a dedicated invalidity proceeding, much like the Federal Patent Court and the PTAB, called an Opposition proceeding. An Opposition may be filed by any member of the public against the patent owner, again comparable to the post-grant Inter Partes proceedings at the PTAB and the Federal Patent Court. See IPR2013-00217, No. 10 (“Standing technically is not a requirement in an IPR.”).




The Future: Europe’s Unified Patent Court

Notwithstanding the forums mentioned above, the countries of the European Union have agreed to establish a tribunal, the Unified Patent Court, to unite European patent law. The proposed Unified Patent Court (“UPC”) would be open to all members of the European Union, and would hear both infringement cases and validity cases. The purpose of the UPC is to mitigate the myriad of issues that accompany enforcement and revocation of patent rights in multiple countries, such as conflicting law, conflicting procedure, forum shopping and the prohibitive costs of litigation.








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