Monday, 14 March 2011

Nullity - refund for expenses of accompanying attorney at law

There is a recent tendency questionning the refund of expenses of an accompanying attorney at law in a nullity procedure at the German Patent Court (Bundespatentgericht) by the underlying party. Nullity procedures in Germany are in most cases conducted by a patent attorney who ist accompanied by an attorney at law as a support for legal questions, in particular of more procedural nature.

The former (before 2005) used to grant a refund of the expenses due to this "double-representation" by the underlying party. In the last years, the Supreme Court (BGH) emphasized that the claim for this refund of expenses has to be examined on a case-by-case basis, wherein this examination has to remain cursory in order to account for the difficulties in predicting the legal problems which might arise during the procedure. In cases where legal difficulties are very unlikely, a further representative with higher legal qualification may not be necessary such that the costs therefore would not be refunded (see e.g. BPatG
GRUR 2008, 735).

In a recent decision, the 5th senate of the Bundespatentgericht has back-pedalled a little by ruling that an accompanying attorney-at-law is always adequate in cases where an infringement procedure is co-pending for headnote (in german) see here)

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