The Federal Court of Justice has decided by decision of 20. March 2013 (X ZB 15/12 – „Patentstreitsache II“) decided, when the fee claim of a right- or patent attorney as a patent dispute within the meaning of § 143 PatG applies. That depends, among other things, whether the costs of a participating patent attorney are to be reimbursed.

Guiding principle

• a) For the fee of a law suit- or patent attorney, it is not necessarily a matter of patent litigation, is because the subject of the underlying contract is based on an invention or affected by a patent or patent application.
• B) Instead, this is not the case, when for the evaluation of, whether the fee claim is justified, the understanding of the invention does not matter and it therefore requires no special expertise, be able to detect and assess the relevant elements of the remuneration package of the attorney transferred obtaining a technical property right circumstances.

Facts

Patent lawyers had unsuccessfully sued their former client for fees for a European patent application. In the costs determination process, the successful defendant claimed not only the costs of its lawyers but also the costs of participating patent attorneys. The LG Berlin determined this, the Court of Appeal struck it down.

The decision

The BGH confirmed the Chamber Court. Patent litigation is to be understood broadly and includes all lawsuits, which relate to a claim on or from an invention or are otherwise closely linked to an invention. Meaning of the § 143 But PatG is, that the court and lawyers have special expertise in technical teaching. The content of the invention plays no role in the fee claim, this justification is missing. Since the content of the patent application was not significant from any point of view, There was no claim for reimbursement according to § 143 Abs. 3 Patgan.

Importance for practice

In honorarium- and other patent-related contract disputes, reimbursement of patent attorney fees is not automatically guaranteed. Whether a lawsuit is a patent litigation matter, depends on it, whether the decision actually depends on the understanding of the invention. The summary reflects the legal status at the time of the decision.

Full text: rechtsprechung-im-internet.de (File number X E.g 15/12)

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Summary of the decision; no legal advice in individual cases.