BPatG: Completion of cancellation proceedings in the event of waiver during the appeal instance

In a recent decision dated 19 November 2025, the 35th Senate of the Federal Patent Court dealt with the question of under what circumstances cancellation proceedings can be continued if the property right expires during the proceedings.

Course of the proceedings

The applicant sought the cancellation of a utility model for a ‘device for immobilising a patient's head’. She cited lack of protectability and unlawful appropriation as reasons. After the DPMA had rejected the cancellation request in the first instance, the applicant lodged an appeal.

Expiry during the appeal proceedings

While the appeal proceedings were still pending before the Federal Patent Court, the proprietor renounced the utility model, whereupon it expired with effect from 4 July 2024. In addition, the proprietor made a legally binding declaration towards the applicant to irrevocably waive all claims arising from the property right for the past.

The decision of the Federal Patent Court

Despite this waiver, the applicant wanted to continue the proceedings in order to achieve cancellation ex tunc (from the outset). She argued that the unlawful appropriation left a false impression in the register, violating the ‘inventor’s honour’.

However, the Federal Patent Court dismissed the appeal as inadmissible and decided to impose the costs of the appeal proceedings on the applicant. The reasons:

• Lack of gravamen: Due to the expiry of the utility model and the waiver of compensation claims, the applicant has no gravamen.
• No right to subsequent application: In contrast to patent law, the Utility Models Act does not provide for a right to subsequent application (Section 7 (2) PatG) in the event of unlawful appropriation. There is no ‘legal reflex’ here that would justify an interest in a declaratory judgment. Thus, there is no gravamen here, either.
• Inventor's honour: An impairment of the inventor's honour in the case of an already expired right was classified as legally irrelevant. Thus, there is no gravamen here, either.

Outlook Since the question of whether the allegation of unlawful appropriation justifies an exception to the loss of interest in a declaratory judgment is of fundamental importance, the appeal to the Federal Court of Justice was allowed.

Source: Decision of the Federal Patent Court of 19 November 2025; 35 W (pat) 440/23