After receipt of a negative preliminary opinion (§ 83 par. 1 PatG) of the senate, he plaintiff in the nullity suit 4 Ni 13/10 had extended the subject-matter under dispute and filed new documents D1 - D5 to support the alleged lack of patentability.
At trial, the senate disagreed with the interpretation of one of the documents (D1) and maintained the patent in the amended form as defended by the plaintiff.
A further document D7 was submitted by the plaintiff in the appeal instance in order to provide further evidece for what was originally intended to be proven by the document D1 .
The new document was not admitted to the procedure by the BGH. The question arises whether the Bundespatengericht should have issued a further preliminary opinion under § 83 par. 1 PatG in order to give the plaintiff the possibility to suitably react on the adverse interpretation of the Bundespatentgericht and to eventually file the document in the 1st instance.
The BGH found that - under these circumstances - no procedural violation (§ 531 (2) Nr. 2 ZPO) justifying the submission of new evidence was comitted by not issuing a new communication with a written preliminary opinion on the (already late filed) documents D1 - D5 and that the mere adverse finding of the senate in the 1st instance does not as such justify the admission of new means of attack in the appeal instance.
The decision emphasizes once more the importance to file the complete case at the onset in order to avoid the rejection of evidence as being late filed.
The full text decision (in German) can be accessed here. The 1st instance decision here.