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.

Documents as such are no Pleas or Arguments

In the decision X ZR 19/20 “Tretkurbeleinheit” discussed a few days ago here, the German BGH provides a very interesting discussion on the nature and role of pleas and arguments in a patent nullity suit.

Technical judges in the German patent court are usually recrutited among the examiners of the German Patent and Trademark Office (DPMA). From their experience in patent application and opposition procedures, they are used to apply the principle of official investigation, e.g. that the court is entitled to investigate the facts of the case on its own initiative, i.e. without being bound to the submissions of the parties involved.

Though everybody is aware of the fact that the applicability of this principle in the nullity suit is very limited, it is the experience of the author of this not that the judges are sometines unable to resist to the temptation to look into parts of the documents other than those highlighted by the parties or to to assess the inventiveness of subject-matter base on combinations of prior art which had not been proposed by the plaintiff.

According to the BGH, this approach is incorrect.

With reference to the earlier decision X ZR 99/11 “Fahrzeugwechselstromgenerator”, the court judges that the typically unlimited and unmanageable prior art is transformed into a plea by the specific explanations as to which concrete contribution which part of which document shall make towards the alleged lack of patentability.

A document unaccompanied with indications of such concrete contribitions is not a plea or argument, whereas a new argument based on a document already on file is a new plea oar argument and therefore admissible only in the exceptional situatons defined in § 531(2) of the German Civil Procedural Act (ZPO).

The important consequence of this clearcut difference between new documents and new pleas is that the court is not entitled to develop its own arguments and indications relating to eventual relevant contributions of documents on file to the alleged lack of paetentability. Considering any such court-generated argument would violate the principles of impartiality and party disposition  (Margin no. 36 of the decision, page 19, 3rd line from the bottom).

This does not necessarily mean that each and every possible line of argument based on every available document should be filed from the onset. The case as initially filed could wel focus on the most promising lines of argumentations.

Accounting for the principles established in the decision “Fahrzeugwechselstromgenerator” , the decisive point on time is the preliminary opinion of the patent court under § 83(1) of the German Patent Act. The parties should go “all in” if this opinion is negative to them because failure to do so could result in the foreclosure of new document of new arguments based on old documents on 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

Equality of Arms

In the case 4 Ni 43/10 (EP) "Bearbeitungsmaschine", the fourth senate of the Bundespatentgericht has rejected a new document as being late filed by applying the new rules for the German nullity procedure briefly discussed here.

While this alone may be already considered interesting for poeple used to the traditionally generous attitude of the Bundespatentgericht with regard to late filing, the even more intersting part of the decision is the senate's argument why the excuse presented by the plaintiff was not sufficient.

Our caselaw on novelty and inventiveness is based on the hypothesis that the person skilled in the art is aware of or is at least able to easily find every piece of prior art in his technical field. Some of us may have had doubts whether this assumption reflects the actual knowledge of a real-life engineer but a defence based on the argument that the inventor was unfortunately not aware of the most relevant piece of prior art is clearly doomed to failure in most jurisdictions.

In the case at issue, the plaitiff had argued that the document submitted lately was found only by chance and only very late despite of having taken all due care. The Bundespatentgericht rejected this excuse by referring to the principle of equality of arms ("Waffengleichheit"). It would be unfair to support an attack on the above hypothesis that the skilled person would have found the document easily while at the same time using problems to find the document to support the plaintiff's case.

The full text decision can be found here and the headnote here.