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Germany: Better late than never

In the case underlying decision X ZB 1/16 ("Ventileinrichtung") discussed below, an opponent attacked a patent-in-suit based on lack of patentability. The Opposition Division of the German Patent and Trademark Office (DPMA) maintained the patent-in-suit as granted. In appeal proceedings, the complainant (opponent) introduced inadmissible extension as a new ground of opposition. The German Federal Patent Court (BPatG) fully revoked the patent-in-suit on the basis of inadmissible extension. The patentee filed an appeal on points of law against the BPatG's decision.

In an earlier decision X ZB 11/92 ("Aluminium-Trihydroxid"), the German Federal Court of Justice (BGH) ruled that it is not permissible for the BPatG to introduce new grounds of opposition. In this earlier decision, the BGH closely examined the legal situation regarding the scope of review of appeal proceedings against decisions of the Opposition Division but confirmed its earlier ruling: while the Opposition Division of the DPMA is allowed to introduce new grounds for revocation ex officio in order to be able to fully review granted patents in light of the public interest that only valid patents be registered in the patent register, appeal proceedings against decisions of the Opposition Division are actual legal remedies in which the scope of review of the decision is limited to the subject of these particular proceedings. In other words, it is not permissible for the BPatG as appeal instance to introduce new revocation grounds. Whereas opposition proceedings before the DPMA are intended to serve the public interest, appeal proceedings are intended to serve an opponent's individual interest of legal protection.

For the first time, the BGH now had to deal with the question of whether or not a complainant (opponent) is allowed to introduce new grounds of opposition in appeal proceedings against a decision of the Opposition Division. After briefly discussing possible legal bases, the BGH concluded that a complainant (opponent) is not hindered from introducing new grounds of revocation in appeal proceedings, since a complainant has the exclusive right of disposition over the object of the dispute, and the appeal instance is a fully fledged trial court. This, for instance, is supported by the fact that appeal proceedings are terminated when a complainant withdraws its appeal. The BGH further confirms the underlying BPatG decision that introducing new grounds for opposition in the appeal proceedings would have to be considered in the light of the rules of the Code of Civil Procedure with respect to modification of a suit.

On the facts of the case, the BGH revoked the BPatG's decision and remitted the case back to the BPatG, since it considered the patent-in-suit as not extending beyond the scope of the application as originally filed and the BPatG now has to decide on patentability.

Alexander Lahni

Maiwald Patentanwalts GmbH
Elisenhof, Elisenstr 3
D-80335, Munich, Germany
Tel: +49 89 74 72 660 
Fax: +49 89 77 64 24



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