German court refuses amendments filed on appeal

Patent attorneys in Europe have become accustomed in recent years to the EPO appeal boards refusing to consider on appeal claim amendments that could have been, but were not, filed in first instance proceedings.

Katfriend Heiko Sendrowski tells us that this approach is now being adopted by the German courts also. Just so we have our acronyms straight, the tale involves nullity proceedings which were decided at first instance in the Federal Patents Court, or Bundespatentgericht (BPatG) and which were appealed to the Federal Court of Justice, or Bundesgerichtshof (BGH) which is in effect the Supreme Court other than in constitutional matters.

Heiko tells us:
In case X ZR 111/13 - "Telekommunikationsverbindung" /telecommunication connection, the Federal Court of Justice has upheld the revocation of the German part of EP 1421771 by the Federal Patent court (BPatG). The BPatG had notified the parties that claim 1 lacked an inventive step. The patent was revoked for this reason, no auxiliary requests having been filed to defend against this attack. 
On appeal before the BGH, the patentee defended the patent by filing three auxiliary requests. The BGH considered these requests inadmissible, because neither the claimant had agreed that a defense with these requests could be attempted, nor - and this is the surprising part - did the court consider the requests as pertinent ("sachdienlich" - something that is appropriate to further the case). 
The BGH maintained that auxiliary requests in second instance proceedings are admissible if the second instance court's assessment diverges from that of the first instance. Also, auxiliary requests remain admissible if the first instance court issues a notification to the parties which does not cover all attacks or which indicates some attacks as being unlikely to succeed. In such cases, the patentee generally does not have any reason to prepare defenses against those unflagged or unpromising attacks. 
However, where the BPatG as first instance court issues a notification to draw the parties' attention to an attack made by the claimant, then the patentee has enough inducement to file auxiliary requests in the first instance proceedings as a means of defence. If the patentee refrains from defending the patent by auxiliary requests, then such auxiliary requests are inadmissible in second instance proceedings. 
Interestingly the auxiliary requests in the present case consisted of reduced claim sets, i.e. a defense based on some of the dependent claims as granted. The patentee argued that the first instance court had only discussed granted claim 1, and its notification was also only pertinent to this claim; there had been no discussion of inventiveness regarding the subject matter of any dependent claim at the BPatG. The BGH didn't buy this argument: As the patentee had defended the patent based on granted claim 1 and had himself never addressed any inventiveness of the subject matter of dependent claims, the second instance proceedings was limited to the claim set argued at first instance.
German court refuses amendments filed on appeal German court refuses amendments filed on appeal Reviewed by David Brophy on Thursday, March 10, 2016 Rating: 5


  1. The Federal Court of Justice is NOT to be considered as "Supreme Court". It is only the highest court in Germany in civil and penal cases. There are four other courts with equal rang:
    Federal Administrative Court
    Federal Finance Court
    Federal Labor Court
    Federal Social Court

  2. Anon, as the highest court in civil cases, is it not "in effect" a Supreme Court?

  3. Anon, that is why David wrote "the Federal Court of Justice, or Bundesgerichtshof (BGH) which is in effect the Supreme Court other than in constitutional matters." It is the Supreme Court since there is no further level of court above it (other than for constitutional matters as stated).

  4. I have a vague suspicion that the comment about the BGH being "in effect the Supreme Court other than in constitutional matters" in the original post may have been prompted by a comment I made on 30 November 2015 (on an otherwise uncommented article), saying that "Federal Supreme Court" was not the appropriate translation of "Bundesgerichtshof" (BGH). – Well, I would maintain that position and agree with the firs comment. As I said, there are four other courts of the same rank in Germany (as listed in the first comment above).

    Actually, if the BGH intends to deviate from an opinion held in an earlier decision by one of those other four courts, it would have to refer the point of law to the "Joint Senate of the [five] Highest Courts of Justice of the Federation" (Gemeinsamer Senat der obersten Gerichtshöfe des Bundes). This happens rarely – for example, a case in 2000 related to the question whether a computer fax (sent without involvement of any paper copy) was equivalent to a traditional fax (where a signed paper original existed), a question that can become relevant in any area of law. (As far as I can see, there may have been about 4 such cases where the Joint Senate had to decide since 2000.)

    The fact that the BGH cannot decide on such clearly non-constitutional matters without, if necessary, consulting with other courts, would, in my view, mean that it is not "supreme other than in constitutional matters", at least not in the way the Supreme Courts of the UK or the US are. Perhaps one could call it supreme in civil and criminal matters. But I would avoid the impression that it is "the" supreme court. (Interestingly, the English Wikipedia article on that Joint Senate is entitled "Joint Senate of the Supreme Courts of Germany").

    But why not simply refer to the BGH, in English, as the "Federal Court of Justice"?

  5. And if you translate "Gemeinsamer Senat der obersten Gerichtshöfe des Bundes" as the "Joint Senate of the Federal Supreme Courts of Justice", what does that imply for the BGH?

  6. Oh, really. Does no-one have any real work to do today?

  7. I will not enter the discussion on whether the BGH is a supreme court or not. To be honest this discussion is futile, and I agree with the last comment: nothing more intelligent to do?
    The present decision is interesting, and goes certainly in the direction of Art 12(4) RPBA. I would however like to know in which relation this decision is with another decision of of the BGH, „Sensoranordnung“, X ZR 109/08, in which it was held, that the lack of patentability of an independent claim does not lead automatically to the revocation of a patent. This conclusion is only to be taken, if the subject-matter of the dependent claims thereon is also not patentable.
    In other words, an examination ex-officio of the dependent claims has to be carried out as well. This is unheard of in European procedure.
    Decision X ZR 109/08 was often quoted in petitions for review from German representatives.
    I might have missed something, but how do those two decisions work together?

  8. The first headnote of the "Sensoranordnung" decision reads:

    "Wenn sich der Gegenstand eines Patentanspruchs als nicht patentfähig erweist, führt dies nicht ohne weiteres dazu, dass auch der Gegenstand eines auf ihn zurückbezogenen Unteranspruchs als nicht patentfähig angesehen werden kann. Das Patent ist aber auch hinsichtlich des angegriffenen Unteranspruchs für nichtig zu erklären, wenn weder geltend gemacht wird noch sonst ersichtlich ist, dass die zusätzlichen Merkmale zu einer anderen Beurteilung der Patentfähigkeit führen."

    Which may be translated into English as:

    The fact that the subject-matter of a (first) claim turns out not to be patentable does not necessarily imply that the subject-matter of a claim which is dependent on that (first) claim is to be regarded as unpatentable as well. However, the patent is to be revoked, also with respect to the (attacked) dependent claim, if the Patent Proprietor does not argue and there is no indication that the additional features of the dependent claim make any difference to the assessment of patentability.

    This is not quite what the previous comment suggests the decision says. That is, the decision did not exactly say "This conclusion is only to be taken, if the subject-matter of the dependent claims thereon is also not patentable", (which would perhaps imply that the patentability of the dependent claim has to be fully examined, ex officio as it were). It rather said, in my words, the patent (including the dependent claim) is to be revoked if the Patent Proprietor does not separately argue patentability for the dependent claim and it is not otherwise evident why the subject matter of the dependent claim should be patentable.

    So I do not see a contradiction between the two decisions.

    Further, I actually consider the decision ("Telekommunikationsverbindung") to be reasonable. Importantly, the court did not say that any request that could have been filed in the first instance is inadmissible in the appeal instance. But in cases where the patentee was told by the Patents Court before first instance oral proceedings that the main request was likely to be rejected for lack of patentability and did not react by submitting any auxiliary request, then they do indeed lose the chance to introduce such an auxiliary request in the second instance. One important consideration in this context (which would not apply to the EPO) was the fact that the first instance Patents Court has technically qualified judges, while the second instance Court (BGH) does not. -- As I said, I find this reasonable and fair.

  9. Good contribution on Sunday from Claus Beckmann, thanks. What's not to like then, readers, with the BGH Decision?

    Claus asks why we don't simply translate "BGH" as "Federal Court of Justice". Don't know about others, but for me that is unsatisfactory because it carries no suggestion that the BGH is an appeal instance. For patent cases in England, we start with a national court, then go to a national court of appeal, then go to a national supreme court. All three instances are courts "of justice" and all are in some sense "federal" aren't they? So how can English readers confronted with the name "Federal Court of Justice" be expected to get it, that the BGH is in fact the final appeal instance?

  10. In the first instance decision before the BPatG, the penultimate paragraph stated "Nachdem die Beklagten zunächst schriftsätzlich angekündigt hatten, sie beabsichtigten, das Streitpatent durch die Aufnahme von Merkmalen aus den Unteransprüchen hilfsweise zu verteidigen, haben sie auf die Nachfrage des Vorsitzenden in der mündlichen Verhandlung erklärt, es solle bei der Verteidigung der erteilten Fassung sein Bewenden haben. Einen eigenständigen erfinderischen Gehalt der rückbezogenen Unteransprüche haben die Beklagten nicht geltend gemacht. Ein solcher war für den Senat auch nicht ersichtlich."

    So the proprietor did not argue separate patentability at 1st instance despite being asked to do so and the court saw no patentable contribution in these claims. Not too suprising that the BGH threw them out.

  11. To Mr Beckmann

    Whilst I can follow your line of reasoning about the Headnote of the Sensoranordnung of the BGH, this does not seem the to be the understanding of that decision by the petitioner in the famous case R 19/12.

    See, and especially VII.4, page 32 of the petition.

    Here the petitioner claims indeed that there is, according to said decision, a duty to examine ex-officio the dependent claims, when the independent claim is not allowable.

    Why should your interpretation of said decision be more correct than that of the petitioner?

    I thus maintain my comment and my question.


All comments must be moderated by a member of the IPKat team before they appear on the blog. Comments will not be allowed if the contravene the IPKat policy that readers' comments should not be obscene or defamatory; they should not consist of ad hominem attacks on members of the blog team or other comment-posters and they should make a constructive contribution to the discussion of the post on which they purport to comment.

It is also the IPKat policy that comments should not be made completely anonymously, and users should use a consistent name or pseudonym (which should not itself be defamatory or obscene, or that of another real person), either in the "identity" field, or at the beginning of the comment. Current practice is to, however, allow a limited number of comments that contravene this policy, provided that the comment has a high degree of relevance and the comment chain does not become too difficult to follow.

Learn more here:

Powered by Blogger.