• Press
  • Offices
  • Contact
  • Legal notice
  • EN
  • UPC
  • Firm
    • Main Focus
    • History
    • Guiding Principle
    • Awards and Rankings
  • Our Practice
    • Legal Areas
    • Industries
  • Our Team
  • Career
    • Working with us
  • News & Knowledge
    • News
    • Events
    • UPC-Update
    • IP-Update
    • Brexit-Update
    • Publications
    • B&B Bulletin
  • Menu Menu
FIND EXPERTS
  • UPC
  • Firm
    • Main Focus
    • History
    • Guiding Principle
    • Awards and Rankings
  • News & Knowledge
    • News
    • Events
    • UPC-Update
    • IP-Update
    • Brexit-Update
    • Publications
    • B&B Bulletin
  • FIND EXPERTS
  • Contact
  • Our Practice
    • Legal Areas
    • Industries
  • Our Team
  • Career
    • Working with us
  • Offices
  • EN

Three-year statutory limi­tation period in patent ownership disputes

1. May 2020/in Issue May 2020, Patents and Utility Models

To date, it has been disputed in the literature whether a statutory limitation period of only three years or of 30 years applies to claims for the assignment of a patent application filed by an applicant not entitled to the invention. Munich Regional Court (Landgericht München I) is the first German court to determine a limitation period of only three years, which could have a significant impact on the strategic approach to alleged co-inventors.

If a patent application is filed by an applicant not entitled to the invention, the correct owner (usually the inventor or co-inventor) has a valid claim for assignment of the application or the granted patents (claim for patent ownership).

The statutory limitation period applicable to claims for patent ownership has rarely been a decisive factor in legal practice, since both Section 8 German Patent Act, governing ownership claims to national patents, as well as the corresponding provisions governing ownership claims to European patents, provide for a specific limitation period of only two years from the date of the publication of the grant of protection for the respective patent. Upon expiration of this two-year period, claims for ownership to the patent can only be asserted if the correct owner can prove that the applicant, who was not entitled to the invention, was acting in bad faith at the time of the grant of protection.

It has been disputed in literature whether the claims for patent ownership are further subject to a 30-year limitation period applicable for ownership claims in property law or the regular three-year statutory limitation period, regardless of the date of the grant of the patent. By the decision of the Munich Regional Court (Landgericht München I) of November 21, 2018 (21 O 11279/17) a German court has for the first time taken a position on this question.

In its decision, the Munich Regional Court examines at length the arguments in favour of the applicability of the 30-year statutory limitation period and comes to the conclusion that only the regular three-year limitation period applies. Although the court’s arguments are well-founded, it remains to be seen how other courts, especially higher courts, position themselves in this matter.

The decision of the Munich Regional Court is of considerable strategic relevance for legal practice. Based on the judgment, grossly negligent lack of knowledge of the circumstances giving rise to an ownership claim is sufficient for the limitation period to commence. However, the court did not explicitly state whether grossly negligent lack of knowledge on the part of the entitled party can always be assumed from the time of publication of the patent application. Had it been the case, a patent vindication claim raised later than three years after the date of publication of a patent application could in theory be objected to by raising the statutory limitation argument. In any case, as soon as the entitled party learns about the patent application one way or another, the courts could likely assume that the limitation period has commenced.

Following the decision of the Regional Court Munich it is therefore recommendable for inventors to put a stronger focus to potential patent applications by non-entitled parties and, if necessary, to consider taking immediate legal steps. Respectively, it is advisable for applicants to consider informing any potential (co-)inventors of a successful application in due time, even if their role as (co-)inventors is not recognized, in order to unequivocally initiate the three-year statutory limitation period.

/wp-content/uploads/2022/04/boehmert_logo.svg 0 0 Petra Hettenkofer /wp-content/uploads/2022/04/boehmert_logo.svg Petra Hettenkofer2020-05-01 10:32:462022-08-24 14:02:59Three-year statutory limi­tation period in patent ownership disputes

Author

Dr. Sebastian Engels

Contents

More articles

  • It’s only human … 7. May 2020
  • Federal Court of Justice Redefines the Require­ments for… 1. May 2020
  • Additional defence op­tions for patent infringers and… 1. May 2020

More Articles

It’s only human … 07. May 2020
Federal Court of Justice Redefines the Require­ments for an Injunction in SEP Litigation in its Decision Sisvel ./. Haier (KZR 36/17) 01. May 2020
Additional defence op­tions for patent infringers and faster nullity procee­dings 01. May 2020
The Decision of the German Constitutional Court on the Unitary Patent Court (UPC) 01. May 2020
Use of trademarks for re­seller websites 01. May 2020
Back to the higher thres­hold? - The CJEU decision Cofemel 01. May 2020
New administrative invali­dation proceedings in German trademark law as of May 2020 01. May 2020
International jurisdiction for infringement of an EU trade mark by advertising on the Internet 01. May 2020

Menu

  • Firm
  • Our Practice
  • Career
  • News & Knowledge
  • FIND EXPERTS

Informations

  • Press
  • Contact
  • Legal notice
  • Data Protection
  • General Terms and Conditions
  • Contact

Legal Areas

  • Employee Inventions
  • Data Protection
  • Designs
  • Domains
  • Information Technology
  • Anti-Trust
  • Licencing
  • Trade Marks
  • Patent Valuation
  • Patents & Utility Models
  • Patent Litigation
  • Product Piracy
  • Copyright
  • Unfair Competition

© Copyright 2023– BOEHMERT & BOEHMERT

Scroll to top

We only use functional cookies and no third party services. Learn more in our privacy policy.

Powered by  GDPR Cookie Compliance
Privacy Overview

This website uses cookies so that we can provide you with the best user experience possible. Cookie information is stored in your browser and performs functions such as recognising you when you return to our website and helping our team to understand which sections of the website you find most interesting and useful.

Strictly Necessary Cookies

Strictly Necessary Cookie should be enabled at all times so that we can save your preferences for cookie settings.

If you disable this cookie, we will not be able to save your preferences. This means that every time you visit this website you will need to enable or disable cookies again.