Upon conclusion of patent nullity proceedings the Federal Supreme Court (Bundesgerichtshof, BGH) determined the maximum possible value of matter in dispute to € 30 Mio, even though both parties declared an amount of € 2.5 Mio (decision of 7/28/2009 – X ZR 153/04 – “Druckmaschinen-Temperierungssystem III”). This was based on a pending action for payment in the amount of more than € 32 Mio for patent infringement.

Generally, the decision makes sense. It is a long-standing practice to base the value of matter in dispute of a nullity action on the value of the infringed patent at the time the action or appeal was filed (BGH, decision of 10/11/1956 – I ZR 28/55; BPatG, decision of 11/4/1986 – 2 Ni 29/85, BGH, decision of 7/12/2005 – X ZR 56/04). According to the BGH, the value of matter in dispute of the infringement action constitutes the “only substantial clue” with regard to the value of the patent. In as far as the claim should not be justified, this should not be determined during the determination of the value of matter in dispute during the nullity proceedings. A “fantasy amount” in the infringement action could be ruled out anyway, because the plaintiff is required to pay a portion of the value of matter in dispute as an advance of court fees.

However, based on such a value of matter in dispute, the advance of court fees, payable by the plaintiff when the suit is filed, already exceeds the amount of € 400,000.-. The amount payable by the defeated party for the entire legal fees is in the millions. It is evident, that these kinds of sums will prevent a potential plaintiff from even filing a nullity action in the first place. Consequently, both parties to the proceedings were arguing for a low value of matter in dispute in part because they were afraid that such large amounts would have a “prohibitive effect”.

However, the BGH did not agree. The danger of an undue economic burden should be countered by a request to lower the value of matter in dispute. Apart from that, the BGH wants to be clear in that there is no room for considerations of equity. How serious the BGH is, can be seen by the formulation of a headnote saying that “generally, the stated value of matter in dispute of a patent infringement suit for compensation is to be fully considered”.

The decision and the headnote only refer to an infringement action where the value of matter in dispute is stated. However, it should be assumed that the BGH might not see things all too differently in actions without an explicitly stated value of matter in dispute, especially in suits to cease and decist. The monetary risk in patent nullity actions is therefore evident. It can be evaded by preventively raising an opposition against a problematic patent. The costs for opposition proceedings are markedly lower (European Patent Office, EPO: € 670.-; German Patent- and Trademark Office, DPMA: € 200.-) and there is generally no reimbursement of the costs (for more advantages concerning opposition proceedings in relation to nullity actions).