German Draft Legislation for the UPC

The German Ministry of Justice and Consumer Protection (BMJV) has now published the draft ratification instrument and draft amendments to the Law on international patent conventions (IntPatÜG).

This blogger had been eager to learn how double protection would be dealt with.  Here it is: It will be possible to hold a national patent in parallel to a European Patent with Unitary Effect because, according to §15(1) of the draft amended IntPatÜG, the prohibition of double protection according to §8 IntPatÜG does not apply to European Patents with unitary effect. However, an infringement action based on such a national patent will be inadmissible if the EPC counterpart thereof is or was the subject of a procedure at the UPC (§18 of the draft legislation). This does not apply to nullity actions nor to utility models but does apply to cases where the UPC action is filed later than the national action.  The defendant may render any pending national infringement action inadmissible at any time by filing a parallel action for declaration of non-infringement.

This "prohibition of double-enforcement" is applicable for patents claiming the same priority (priority date or priority application?) and originating from the same inventor and insofar as the patents protect the same invention. In cases of doubt, the national court may stay the procedure.

The draft legislation is supposed to pass the parliamentary chambers (Bundestag and Bundesrat) in Summer 2016.

Blocked passages are no passages – OLG Düsseldorf 15 U 139/14

The OLG Düsseldorf had to deal with a motion for preliminary injunction based on a patent relating to a boiler with a combustion chamber provided with a flame defection component deflecting the flame into a space between a flame tube and a heat exchanger. A combustion chamber is surrounded by an exhaust gas chamber and separated therefrom by a heat exchanger surface provided with passages.

According to claim 1 of the patent in suit, these passages for hot combustion gases are provided over the entire length of the combustion chamber.

The defendant had been sentenced for an infringement in earlier proceedings and then came up with a modified version of the boiler were some of the passages in the metallic heat exchanger body were closed with some sort of plastic matter. As a result, only 85 % of the lengths of the combustion chamber were provided with (open) passages and the rest was clogged.

The plaintiff argued that the passages would still exist despite of being clogged by plastics and that the plastics would degraded and burned after a while such that the passages would be open. Export evidence on the last point was contradictory such that the court concluded that the allegedly infringing product as it was presented did not show passages provided over the entire length of the combustion chamber. Once the passages are clogged, they do no longer qualify as passages in the sense of the patent.

Turning to infringement by equivalent means, the board re-emphasizes that the finding of equivalence requires that the considerations of the skilled person are oriented on the technical teaching of the claim and that the claim is not only the starting point but rather the essential basis for the consideration of the person skilled in the art (BGH Pumpeneinrichtung). At the same time, the patentee is limited to the technical teaching he has requested to be protected (BGH Kunststoffurteil). According to the court, the technical teaching given by the patent has to be accepted by the person skilled in the art as sensible and must not be questioned in its technical justification when searching for an equivalent means as a replacement of a feature in the claim.

In the case at issue, the claim teaches that the cylindrical surface of the heat exchanger provided for exchanging heat can be and should be used in its entirety. Accordingly, the required uniform heat transmission onto the heat exchanger can be achieved only when the passages are provided over the entire length of the surface of the heat exchanger which separates the combustion chamber from the exhaust gas chamber.

Consequently, the allegedly infringing embodiment was found not to infringe the patent by equivalent means.

 

The German Text of the Judgement can be found here.

"Invalid but Infringed?" A paper

"Invalid but Infringed? An Analysis of Germany’s Bifurcated Patent Litigation System", by Katrin Cremers, Fabian Gaessler, Dietmar Harhoff and Christian Helmers (a.k.a. Discussion Paper No. 14-072) is a must-read for anyone who wants to see the results of careful, painstaking research into the effects of handling infringement and validity in different courts within the same jurisdiction.  The authors' conclusions are as follows:

Overall, our results suggest that the German bifurcated patent system favors strongly the patent holder in litigation [It's good to know that the patent holder's investment and efforts are being protected ...]. We show that the bifurcated system creates a substantial number of cases where an invalid patent is held infringed [... but not if it's at the expense of innocent parties whose sole vice is to trespass on non-existent property]. We also provide evidence that fewer patents are challenged than what we would expect based on the consideration of litigation systems where infringement and validity are dealt with jointly. This means that the number of ‘invalid but infringed’ cases is presumably biased downwards due to self-selection [Indeed, a challenge to validity isn't made simply because a patent happens to be invalid but because it stands in the way of the would-be defendant's business plans. If the patent is enforced and invalidity is still some way off, a prudent business decision may involve changing one's business plan]. Our results also indicate that the possibility of facing an injunction for infringing an invalid patent creates legal uncertainty [This is true even in non-bifurcated systems with regard to interim injunctive relief]. We find evidence for such legal uncertainty by looking at changes in firms’ opposition behavior following directly a divergent decision. We find that alleged infringers that were subject to a divergent decision file more oppositions immediately following the court case.

Our results provide empirical support for the criticism that has been directed at bifurcation (Hilty and Lamping, 2011; Münster-Horstkotte, 2012) [This shows that the pro- and anti- debate takes place even in Germany, a significant point for those non-Germans who assume that all Germans are monolithically pro-bifurcation]. Given the probabilistic nature of patents, the strong presumption of validity that is at the core of Germany’s bifurcated enforcement system favors the patentee and creates uncertainty for potential infringers. That said, the problems revealed by our analysis should be compared to possible benefits of bifurcation – in particular, the impact of technically trained judges at the BPatG on validity decisions and the lower costs of litigation due to less need for technical expert witnesses [Though it should be possible to design a non-bifurcated system that makes more use of technically qualified judges and less use of technical expert witnesses, as is mentioned below]. Indeed, the costs of litigation in Germany are remarkably low compared to for example the UK [where this blogger likes to believe that costs have dropped substantially in the wake of better case management and the growth of litigation in the Patents County Court/Intellectual Property Enterprise Court], but technically trained judges could also be incorporated in a court system in which validity and infringement are decided jointly, as is the case in Switzerland (Ann, 2011). It is also possible that reforms that increased case loads at the BPatG and its appeal court, BGH, aggravated the problems during our period of analysis. Regardless, our results suggest that the current system is in danger of overly favoring patent holders. 

One way of addressing the problems highlighted by our analysis could be an acceleration of proceedings at the BPatG, thereby either avoiding the injunction gap altogether or trimming its length. This could allow attaining the benefits of bifurcation while avoiding the uncertainty created by ‘invalid but infringed’ decisions [this would be good]. Alternatively bifurcation could be abandoned altogether. While such a drastic step may look appealing to some observers, its impact would be uncertain. It might for example encourage forum shopping. If courts depend on the number of cases they hear for fee income, prestige, etc. patent holders might find themselves again at an advantage [This blogger feels that judges should be reminded that they should have no interest in fee income and prestige. They are only public servants and in doing their job properly tbey should put all extraneous matters like this aside]. In any case, we do not present a counterfactual analysis that would allow us to evaluate such a drastic step. Our analysis still suggests that bifurcation has considerable drawbacks, at least the way it is currently implemented in the German enforcement system.

DPMA Challenges SIPO in terms of Growth Rate

Readers who thought that growth rates beyond 20% are only possible in china beware: The German Patent- and Trademark Office DPMA has published a press release on its annual statistics here. The number of granted patents has increased by not less than 22.1% in 2013 (as compared to 26.3% in China). The number of filings has increased by 2.9%, wherein the most important contribution to the latter increase comes from Japan (+ 20.7%) and the US (+9.5%).

According to this blogger's experience, the high official fees of the EPO and the formalistic attitude of the EPO examiners latter drives more and more applicants towards national filings. The modernization in the filed of online services, the extension of the possibilities to use English language and the uncertainty in connection with the quality and the costs of the UPC will eventually further accentuate this trend.

New Name and New Invalidity Procedure for German Registered Designs

Cornelia Rudloff-Schäffer - a friend
of handy names - at least for IP rights

The German IP right formerly known as Geschmacksmuster is a fairly powerful tool but has hitherto lingered in a niche existence. One of the reasons might have been that its name was difficult to pronounce for foreign applicants and even for the German public not very telling. According to the press release:

From 1 January 2014, designs - previously named "Geschmacksmuster" in German - will be called "eingetragenes Design" - meaning "registered design" - in Germany. The Act Modernising Designs Law and Revising Provisions for Notifications on Exhibition Protection (Gesetz zur Modernisierung des Geschmacksmusterrechts sowie zur Änderung der Regelungen über die Bekanntmachungen zum Ausstellungsschutz) of 10 October 2013 (Federal Law Gazette I 2013, no. 62, p. 3799) has also implemented other changes facilitating procedures for designs.

"With the renaming, we accommodate language developments," says Cornelia Rudloff-Schäffer, President of the DPMA. "The IP right's subject matter will become easier to understand, referring to both form and appearance of a product."

Invalidity proceedings for registered designs will also be introduced. The designs unit in Jena can declare a registration invalid if a respective application has been submitted. It can be based on absolute or relative grounds for invalidity. In civil proceedings, invalidity of a registered design can only be achieved by putting forward a counterclaim before the designs courts of the Länder from 1 January 2014.

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.

Revision of German Patent Act Finally Accepted

Good News for DPMA President
Cornelia Rudloff-Schäffer



Both the German Bundestag and the German Bundesrat have now accepted the proposal for a revision of the German Patent Act previously discussed here.

The main features include:

•  the possibility of online file inspection after the publication of the application,
• an extension of the delay for filing a German translation of the application documents for applications filed in English or French language from previously three months to twelve months from the filing date or fifteen months from the priority date, if the latter date is earlier, and
• an extension of the search report, so as to include a preliminary opinion on patentability.

The original proposal was modified by adding the exclusion of “plants and animals” obtained only by such methods “to the exclusion of essentially biological processes for the production of plants and animals" in § 2a (1) Nr. 1 of the German Patent Act to thereby address questions raised in the second referral to the enlarged board of appeal in the “Broccoli” case T0083/05 at the EPO.

 

Most of the amendments will enter into force with a delay of 6 months from the publication of the law, i.e. in February or March 2014 in order to allow for some technical preparations in the DPMA.



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

Nokia and HTC in Germany: a clarification

In the light of recent press coverage of the German litigation between Nokia and HTC (eg here, here, here and here), PatLit has received the following clarificatory statement from Laura Whiting (Hogan Lovells, who acted for HTC).

You may have seen recent reports of the judgment of the Mannheim District Court in case 2 O 119/12, one of a number of cases between Nokia and HTC that have been heard or will be heard this year. There appears to have been some confusion in the press reporting of the case in relation to the scope of the action and therefore of any injunction, should Nokia choose to enforce the ruling. It might be helpful to clear this up. To be clear, any injunction will apply only to three old HTC phone models – it will not affect any other HTC phones.

The judgment in German shows that the dispute revolved round the infringement of EP 0 673 175 – a patent concerning a niche piece of code for power reduction when the phone is in the GSM idle mode. HTC has implemented a workaround.

The case (and therefore any injunction) concerns only three phone models: the HTC Rhyme, Wildfire S and Desire S, all of which are all superseded models. 

In their post hearing brief dated 26 February 2013, Nokia made the following statements:

4. We furthermore note that the specified profits in the amount of Euro ● million [actual sum redacted] according to Defendants' submission should relate to the sale of all HTC devices in Germany. However, the present complaint challenges only three different embodiments. [ie. the Rhyme, Desire S and Wildfire S] The profits generated from the sale of all devices, thus also cannot serve as the basis for the provision of a security bond in the present proceedings. It is not known, what portion of the alleged profits should relate to the infringing embodiments. The affidavit thus is in any case not suitable to demonstrate any losses resulting from enforcement with regard to the infringing embodiments.

5. … We have to assume that the Defendants could easily avoid the patented technical teaching, not using the advantages of the patent. As has been explained in detail, with the patent, the infringing embodiments could only use two or three of the four BCCH/PCH messages transmitted by default. However, they also could be easily modified so that all four messages would always be used. This would only result in increased power consumption and a shorter standby period. It is, however, not apparent, how this should result in Defendants losing significant market shares...

2. In the judgment itself, the subject-matter of the dispute (and therefore the scope of the injunction) is defined as follows:

This action is brought against the following mobile devices, so-called smartphones (accused devices):

a) product designation: Wildfire S, equipped with a chipset of the company Qualcomm with a baseband processor MSM 7227 and sender-receiver RTR 6285 GSMW-CDMA,

b) product designation: Desire S, equipped with a chipset of the company Qualcomm with a baseband processor MSM 8255 and sender-receiver QTR 8200 GSM/W-DDMA,

c) product designation: Rhyme, equipped with a chipset of the company Qualcomm with a baseband processor MSM 8255 and sender-receiver QTR 8615 GSM/W-DDMA.

The chipset-supplier of the Defendant, the company Qualcomm, has its registered offices in the United States of America.

3. In Germany, a bank guarantee must be provided before an injunction can be enforced (this is referred to as a bond). The value of the bond to be deposited against enforcement is set according to the scope of the injunction. In this case, the amount of the bond Nokia must pay to enforce the injunction was set with reference to the three phone models named in the suit only rather than HTC's whole product range (in which case the bond amount would be much larger). Any injunction is therefore also limited to these three phones.

****************************************

In proceedings earlier this month, as reported by FOSS Patents here, the District Court of Mannheim dismissed an infringement complaint brought by Nokia against HTC, alleging that HTC infringed the German part of its EP0812120 patent for a “method for using services offered by a telecommunications network, a telecommunications system, and a terminal for it.” The court also awarded HTC its legal costs.

Semi-Nullification – BGH Polymerzusammensetzung

The BGH had to decide in a nullity appeal matter for a patent, the main claim of which was directed to a polymer composition. One ingredient of the composition was selected from a group comprising three different substances, which shall be named A, B, and C herein for the sake of simplicity.

The plaintiff had filed the nullity action requesting the nullification of claim 1 and other claims, insofar as the claims relate to or refer to compositions containing substance A.

The Bundespatentgericht had followed the usual practice and declared claim 1 invalid in its entirety, though only one of the three alternatives was attacked. Hitherto, a partial nullification of a claim was declared only if the patentee had filed a corresponding request, which was not the case here.

The BGH found that this does not comply with the disposition principle (non ultra petita) and that the Bundespatentgericht should have nullified only the part which was attacked, although the patentee did not submit a corresponding request with amended claims.

It will be interesting to see whether this decision will have consequences for cases where multiple alternatives in a claim are attacked and only one of them turns out to be invalid and for the cost distribution.

Please click here for the full text decision (in German).

Pointers to the Dead End Street

One thing that makes our life difficult is that innovations tend to make things better – but not in every respect. Cost-saving improvements might be less robust and “cool” designs might be less prestigious, not to speak of the advantages and drawbacks of atomic energy or genetic engineering.

This ambivalent nature of innovations might be one of the reasons why the requirement that the invention is a “technical progress” has been banned from the list of requirements to be fulfilled by patentable inventions in Germany as of 1978.

Ever since, courts and offices struggle with the assessment of inventiveness for alleged inventions making things – at least in important aspects - worse than before. While the case law of the Technical Boards of Appeal still provides a special treatment for so-called “disadvantageous modifications” (see e.g. T119/89) in that they are basically non-inventive right away as long as the disadvantages are foreseeable and not outbalanced by surprising advantages, the BGH in Germany has banned any such judgmental considerations from the assessment of inventive step.

Rather, the “incentive” (Anregung) for the skilled person to modify the prior art has been implemented in the last years as a very strict requirement for the assessment of obviousness (see e.g. here and here).

In the decision “Kniehebelklemmvorrichtung”, the BGH applies this approach to a modification which ultimately turned out to have major drawbacks, the drawbacks being – according to the patentee - an incentive for the skilled person to return to the prior art or to make further modifications rather than adhering to the solution according to the patent.

The patentee’s argument that adhering to the disadvantageous solution of the patent would therefore be non-obvious was rejected. The BGH emphasizes that the decisive question is whether or not there was an incentive or pointer to make the modification.

To put it differently: As long as there is a pointer at the beginning of the street, it is obvious to follow it – even if it ultimately turns out to be a dead-end street.

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.

Contributory Infringement and Territoriality

Simple question: a Belgian shopkeeper B sells a product infringing a German patent to his client C in his shop in Belgium. Infringement or not? Most of us would say the answer is plainly no – territoriality principle.

The BGH has now wondered whether this might change if the shopkeeper knows that the client wants to sell the product in Germany. Then, the act of selling could amount to contributory infringement.

The question became relevant not for patent infringement but because a copyright and trademark owner had sued a Belgian defendant before the German Courts by arguing that the contributor to a main infringement may be sued – according to the German Civil Procedure law - before the courts having jurisdiction for the main infringement action. In the above case, these would be the German Courts.

The BGH has therefore referred the following  question on the interpretation of Art. 5 Nr. 3 EUGVVO (Council Regulation (EC) No 44/2001) to the ECJ:

Must Article 5 Nr. 3 of the Council Regulation (EC) No 44/2001 be interpreted such that the harmful event occurred in one member state (member state A), when the tort, delict or quasi-delict, being subject of the procedure or from which claims are derived has been committed in a different member state (member state B) and consists in the participation in the tort, delict or quasi-delict, having occurred in the first-mentioned member state (member state A)? (freely translated by the author of this note)

If the answer would be positive, this would clearly open new and interesting options for cross-border litigation on the basis of Article 5 Nr. 3 of the Council Regulation (EC) No 44/2001 not only for copyright and trademark cases but also in patent cases where the application of Art. 6 Nr. 1 of the Council Regulation (EC) No 44/2001 is foreclosed after the ECJ-decision Roche/Primus, as long as Art. 22 Nr. 4 of the regulation does not enter the game.

On the same day, the BGH referred the same question on the interpretation of Art. 93 par. 5 of the Commnity Trademark Regulation (Council Regulation (EG) 40/94) to the ECJ. PatLit will keep you updated.

BGH on Using Cancerogenic Substances

Incentive to use?

In the decision “Glasfasern”, the German Bundesgerichtshof (BGH) had to rule in the novelty and inventivess of a “use” claim. The patent had been granted on the idea of using a particular kind of glass fibre material as glass fibre “not having cancerogenic potential”.

The glass fibre as such was (besides of some very minor differences not giving rise to an inventive step) known from at least one document in the prior art. In the same document, it was noted that the glass fibre would presumably have cancerogenic properties (in particular when  minute fragments accumulate in the lung of workers using the material for building insulation) and that two independent institutes had been entrusted to carry out an investigation on this issue.

According to the established case-law in Germany, the anticipation of “use” claims does not require evidence that the “use” has actually taken place. Rather, it is sufficient if the product or substance has been evidently prepared (“sinnfällig hergereichtet”) for such a use, e.g. by using a design adapted to that use or by supplementing the product or substance with a user manual or package leaflet disclosing the possible use.

In the case at issue, the presumption of cancerogenic properties was not considered sufficient to establish a lack of novelty.

Further, this presumption together with the information that studies in this regard had already been commissioned did not constitute an incentive for the skilled person to carry out these (expensive and complex) studies by himself.

An interesting point in this decision is that the “use” was not limited to a particular technical application of the glass fibre such as building insulation but rather covered all applications where cancerogenic potential was undesired (difficult to imaging where this is not the case). The discovery of a yet unknown property (here: lack of cancerogenic potential) of a known substance gives the discoverer the exclusive right to use the substance in applications where this property is relevant.

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".

It's Not Over When It's Over

Many jurisdictions know the legal remedy of re-establishment of rights or, as the humanists among us would call it, restitutio in integrum. A further common point is that the deadline for requesting the re-establishment of rights starts with the the removal of the cause of non‑compliance with the period, but ends at the latest within one year of expiry of the unobserved time limit.

The latter one-year term is usually considered an absolute one esuring legal certainty for third parties and expires irrespective of  the reasons for the failure observe a time limit.

Starting with the decision "Überwachungsvorrichtung" in 2009, the 10th senate of the German Bundespatentgericht and the BGH have develpoed a theory allowing for a re-establishment of rights even after expiry of the one-year term. The most spectacular decision "Crimpwerkzeug III" ( ZR 193/03) reported here and available (in German) here, the BGH granted re-instatement into the delay for filing new grounds of an appeal against the decision of an upper distruct court not to admit revision to the BGH because the new grounds related to contradictory claim interpretations in judgements, wherein the (binding) interpretation of the BGH was available only after the expiry of the delay.

In a very interesting new decision availabe here, the 10th senate of the Bundespatentgericht granted re-establishment of the right to pay the filing fees almost 2 years after the expiry of the time limit. The applicant had filed an application containing only claims and the office had informed him that the minimum requirements for the filing date were not met because a description was lacking. The office furhter noted that any fees would be refunded and that a new filing date could be obtained by filing complete documents.

The applicant responded by arguing that the claims would sufficiently describe the invention to qualify as a description. The argument was found convincing by the examiner who decided to keep the application pending. However, the office did not inform the applicant on this decision. The applicant got aware of this decision only after almost two years, when the GPTO notified the applicant that his right was lost due to non-payment of the filing fee.

Following the "Crimpwerkzeug" theory, the senate judges that re-establishment may be requested even after expiry of the one-year-term

"in specific exceptional cases for reasons of ensuring an effectice legal protection and the right to be heard, in particular when the reasons for the failure to comply with the time-limit do not lie in the sphere of the party but are rather to be assigned to the court/office".