Innocent Questions and the Sound of Silence

The question "should I better file an auxiliary request now?" may put judges in real trouble. 

We as attorneys rarely have the opportunity to glimpse into the minds of judges when being faced with such questions. The decision 7(W) pat 66/09 published with a headnote gives us one such rare example.

 The Bundespatentgericht BPatG had to decide in an appeal against a decision of the Opposition Division (OD - actually, the OD is identical to the examining division at the DPMA) to revoke the patent. According to the protocol, the chairman asked whether anybody had new requests before closing the oral procedure.

The patentee filed a request for correction of the protocol, in which he argued to have told the OD that he had brought auxiliary requests and asked whether he should better file these auxiliary requests and that the chairman explicitly said that this would not be necessary.

In the decision rejecting the request for correcting the protocol, the OD declared not to have said anything about auxiliary requests, neither encouraging the patentee to file such request nor that the filing of auxiliary requests was not necessary. However, the OD did not dispute that the patentee has indicated to have auxiliary requests in his briefcase.

The Bundespatentgericht decided that this "saying nothing" constitutes a violation of the right to be heard.

Accordig to the 7th senate, this right includes the right not to be caught by surprise by the decision of the court, i.e. that the decision does not correspond to what the parties might have reasonably expected as a possible result. The latter expectations may only be based on the indications the OD-gives during the procedure. Furhter, these indications do not only include explicit answers to questions of the parties. Provided that the patentee had really offered the auxiliary requests in advance, the fact that a question whether or not he should file them by now was left unanswered could be interpreted by the patentee only in such a way that he could expect his main request to be granted.

What should the OD have answered? According to the 7th senate, the OD should have answered that it is not entitled to give indications on the chances of success and that it is in the discretion of parties to file auxiliary requests or not. Given that the result is open, the OD should have said that "in the case of doubt (im Zweifel), it is always advisable to file auxiliary requests".