Late filed grounds: once decided, it's in the procedure

In the 1st instance case underlying the BGH decision X ZR 51/13 "Einspritzventil", the plaintiff had argued that  - besides of not being patentable - the patent did not enable the person skilled in the art to carry out the invention as defined in a certain auxiliary request without undue burden.

The Bundespatentgericht maintained the patent with this auxiliary request and rejected both the grounds of lacking patentability and lacking enablement.  The latter rejection was a bit brief but formulated as a decision, not as an obiter dictum.

The lack of enablement then came into the focus of the appeal procedure and the patentee submitted that it should not have been admitted in the first instance as it was late filed and that it should not be admitted to the 2nd instance either because it was not pertinent (sachdienlich).

The BGH did not follow: Means of attack or defence or modifications of the action which hat not been rejected in the first instance as being late filed under § 83 Abs. 4 PatG cannot be rejected in the second instance, either. Once the first instance has decided on a matter, the matter is automatically subject-matter of the 2nd instance.

Keep Records of your Search Queries

In the matter X ZR 19/12 “Tretkurbeleinheit”, the German BGH had to decide on a new means of attack based on a certain document D7 submitted with the grounds of appeal in the 2nd instance.

As already discussed earlier (see here and here), the party submitting new means of attack in the 2nd instance has to establish that one of the exceptions mentions in § 531(2) 1st sentence of the German Civil Procedural Act (ZPO) applies, e.g. in this case that the reason for the late submission is not negligence in the 1st instance.

In the case at issue, the plaintiff had argued that he came across the document D7 only in the course of a supplementary search carried out when preparing the grounds of appeal. The BGH did not consider this sufficient and established that the party filing the new document in the appeal instance has to establish why the document could not be found using suitably chosen search profile in the search carried out in the course of preparing the nullity action in the first instance (headnote I).

The practical implication is that the plaintiff in the nullity suit should keep records of his search queries (IPC classes and catchwords) in order to eventually establish why the late-filed document could not be found earlier.

New Skilled Person is New Matter

The German Bundesgerichtshof has added a new mosaic tile to the new case-law on late filing in the 2nd instance patent nullity proceedings (see earlier post here for some background).

The contested patent related to heating mats for use in underfloor heatings and the German Patent Court had identified a mechanical engineer with university degree (Diplomingenieur) and experience in the development of heating mats as the relevant person skilled in the art.

In the appeal, the patentee  argued that the person skilled in the art should be a craftsman experienced in laying the mats rather than the engineer. No reasons justifying the late submission were given.

The Bundesgerichtshof rejected this argument as being late under the new procedural rules (and, besides of being late, as incorrect).

This hints towards a strict application of the new rules and this blogger finds this decision surprising because the assessment of the inventive step including identification of the relevant skilled person is traditionally considered a question of law and not a question of fact in Germany.  Questions of law should not be considered late-filed.

The full text of the decision can be found here (in German).

Michael Thesen