Appeals in patent Appeals in patent examination and opposition examination and opposition in Germany in Germany

Karin FrieheKarin Friehe

Judge, Federal Patent Court, Munich, GermanyJudge, Federal Patent Court, Munich, Germany

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Federal Patent CourtFederal Patent Court

founded in founded in 19611961

situated in situated in MunichMunich

legally and legally and technically technically qualified qualified membersmembers

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Federal Patent Court - Federal Patent Court - JurisdictionJurisdiction actions for declaration actions for declaration

of nullity of of nullity of ** German national German national

patentspatents** European patents with European patents with

effect for Germanyeffect for Germany** supplementary supplementary

protection certificatesprotection certificates certain actions certain actions

concerning concerning compulsory licencescompulsory licences

appeals against decisions appeals against decisions by the German Patent by the German Patent and Trademark Office and Trademark Office regardingregarding** patentspatents** trademarkstrademarks** utility modelsutility models** topographiestopographies** designsdesigns

appeals against certain appeals against certain decisions by the Federal decisions by the Federal Office of Plant VarietiesOffice of Plant Varieties

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Federal Patent CourtFederal Patent Court

13 technical 13 technical boards of appealboards of appeal

8 trademark 8 trademark boards of appealboards of appeal

1 utility model 1 utility model board of appealboard of appeal

1 plant variety 1 plant variety board of appealboard of appeal

1 patent nullity board 1 patent nullity board and juridical board of appealand juridical board of appeal5 patent nullity boards5 patent nullity boards

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Technical boards of appealTechnical boards of appeal

13 technical boards of appeal13 technical boards of appeal responsible for responsible for

appeals against decisions of the German appeals against decisions of the German Patent and Trademark Office concerning Patent and Trademark Office concerning patent applications and patent opposition patent applications and patent opposition casescases

presiding judge: technically trained judgepresiding judge: technically trained judge associate judges: two technically trained associate judges: two technically trained

judges and one legally trained judgejudges and one legally trained judge principle of ex officio examinationprinciple of ex officio examination

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Technical boards of appealTechnical boards of appeal

appeals against decisions of the GPTO in appeals against decisions of the GPTO in patent casespatent cases

= appeals against final decisions that = appeals against final decisions that adversely affect the rights of a partyadversely affect the rights of a party

in particular: in particular: rejection of a patent applicationrejection of a patent application rejection of an oppositionrejection of an opposition revocation of a patent due to an oppositionrevocation of a patent due to an opposition

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Conditions for the admissibility Conditions for the admissibility of an appealof an appeal appellant was a party to the proceedings appellant was a party to the proceedings

giving rise to the decisiongiving rise to the decision appellant is adversely affected by the decisionappellant is adversely affected by the decision notice of appeal filed in writing within one notice of appeal filed in writing within one

month of notification of the decision under month of notification of the decision under appealappeal

notice of appeal must express the definite notice of appeal must express the definite intention to contest an appealable decision intention to contest an appealable decision

and contain sufficient information to identify and contain sufficient information to identify the appellant and the decision under appealthe appellant and the decision under appeal

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Conditions for the admissibility Conditions for the admissibility of an appealof an appeal fee must be paid within one month of fee must be paid within one month of

notification of the decision under appealnotification of the decision under appeal if not, the appeal is deemed not to have been if not, the appeal is deemed not to have been

filedfiled appeal feesappeal fees

200,- € for appeals concerning the rejection of an 200,- € for appeals concerning the rejection of an applicationapplication

500,- € for appeals concerning a decision in 500,- € for appeals concerning a decision in opposition proceedingsopposition proceedings

statement of grounds for appeal is not required statement of grounds for appeal is not required under German lawunder German law

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Conditions for the admissibility Conditions for the admissibility of an appealof an appeal notice of appeal to be filed and fees to be paid notice of appeal to be filed and fees to be paid

with the GPTOwith the GPTO in ex parte cases, the GPTO may choose to in ex parte cases, the GPTO may choose to

produce relief, in particular to grant the patent,produce relief, in particular to grant the patent, if they do not, if they do not, as generally in inter partes cases, they hand as generally in inter partes cases, they hand

over the case to the Federal Patent Courtover the case to the Federal Patent Court normally, the president of the GPTO is not a normally, the president of the GPTO is not a

party to an appeal caseparty to an appeal case but the Federal Patent Court may invite her to but the Federal Patent Court may invite her to

accede to the proceedingsaccede to the proceedings

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Appeal proceedings before the Appeal proceedings before the Federal Patent CourtFederal Patent Court in theory, the boards of appeal render their in theory, the boards of appeal render their

decisions without an oral hearingdecisions without an oral hearing oral hearing must take placeoral hearing must take place

if one of the parties so requestsif one of the parties so requests if evidence is to be takenif evidence is to be taken if the court deems the oral hearing to be if the court deems the oral hearing to be

pertinentpertinent in practice, the majority of the appeal cases in practice, the majority of the appeal cases

are decided on the basis of an oral hearingare decided on the basis of an oral hearing representation by an attorney is not representation by an attorney is not

mandatory before the Federal Patent Courtmandatory before the Federal Patent Court

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Appeal proceedings before the Appeal proceedings before the Federal Patent Court – ex parte Federal Patent Court – ex parte casescases ex parte cases (in particular):ex parte cases (in particular):

appeal against the rejection of a patent appeal against the rejection of a patent applicationapplication

appeal against a decision in an opposition appeal against a decision in an opposition case that is continued after the opposition has case that is continued after the opposition has been withdrawn been withdrawn

(according to German patent law, if the opponent withdraws (according to German patent law, if the opponent withdraws the opposition, the opposition proceedings are continued the opposition, the opposition proceedings are continued without the opponent)without the opponent)

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Appeal proceedings before the Appeal proceedings before the Federal Patent Court – ex parte Federal Patent Court – ex parte casescases in oral hearings before the technical boards in oral hearings before the technical boards

of appeal, the judges will usually accept and of appeal, the judges will usually accept and examine newly drafted claims examine newly drafted claims

often, the judges will give a helping hand to often, the judges will give a helping hand to the appellantthe appellant

in ex parte cases, there is only one party and in ex parte cases, there is only one party and thus no problem with impartialitythus no problem with impartiality

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Appeal proceedings before the Appeal proceedings before the Federal Patent Court – inter Federal Patent Court – inter partespartes inter partes > parties on different sidesinter partes > parties on different sides in particular: appeals in opposition casesin particular: appeals in opposition cases problem: late submissionsproblem: late submissions patent rightholder: restricted defense of the patent rightholder: restricted defense of the

opposed patent with amended claims submitted opposed patent with amended claims submitted only in the oral hearing only in the oral hearing

no problem if restriction through addition of the no problem if restriction through addition of the elements of dependant (granted) claimselements of dependant (granted) claims

problem: restriction through addition of elements problem: restriction through addition of elements taken from the description (or from drawings)taken from the description (or from drawings)

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Appeal proceedings before the Appeal proceedings before the Federal Patent Court – inter Federal Patent Court – inter partespartes amended claims with restricting elements taken amended claims with restricting elements taken

from the description or from drawings submitted from the description or from drawings submitted only in the oral hearing will be acceptedonly in the oral hearing will be accepted

but: the opponent has a but: the opponent has a right to be heardright to be heard therefore: the oral hearing has to be adjourned therefore: the oral hearing has to be adjourned

if the new defense based on the amended claims if the new defense based on the amended claims gives rise to new questions of facts and of law, gives rise to new questions of facts and of law,

the opponent applies for an adjournement to the opponent applies for an adjournement to comment on the new claims and comment on the new claims and

it is not appropriate just to have a breakit is not appropriate just to have a break

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Appeal proceedings before the Appeal proceedings before the Federal Patent Court – inter Federal Patent Court – inter partespartes the board of appeal will have to decide if they the board of appeal will have to decide if they

uphold the patent in amended (restricted) uphold the patent in amended (restricted) formform

valid restriction: valid restriction: restricting elements taken from the description restricting elements taken from the description

must have been disclosed to the person skilled must have been disclosed to the person skilled in the art as being part of the inventionin the art as being part of the invention

the subject-matter of the restricted patent must the subject-matter of the restricted patent must be patentable, thus (inter alia) new and be patentable, thus (inter alia) new and inventiveinventive

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Appeal proceedings before the Appeal proceedings before the Federal Patent Court – inter Federal Patent Court – inter partespartes according to German law, a notice of according to German law, a notice of

opposition based on one of the grounds for opposition based on one of the grounds for opposition that are enumerated in the opposition that are enumerated in the German Patent ActGerman Patent Act

has to be filed has to be filed in a written reasoned statement in a written reasoned statement within 3 months of the publication of the within 3 months of the publication of the

mention of the grant of the patentmention of the grant of the patent substantiation of the opposition: the reasons substantiation of the opposition: the reasons

in the notice of opposition must be as specific in the notice of opposition must be as specific as to allow the patent department of the as to allow the patent department of the GPTO to decide if the opposition is justified GPTO to decide if the opposition is justified

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Appeal proceedings before the Appeal proceedings before the Federal Patent Court – inter Federal Patent Court – inter partespartes grounds for opposition are:grounds for opposition are:

subject-matter not patentable subject-matter not patentable this includes lack of novelty and lack of this includes lack of novelty and lack of

inventive step inventive step insufficient disclosure of the inventioninsufficient disclosure of the invention proprietor is not entitled to the invention proprietor is not entitled to the invention subject-matter extends beyond the content subject-matter extends beyond the content

of the application as filedof the application as filed

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Appeal proceedings before the Appeal proceedings before the Federal Patent Court – inter Federal Patent Court – inter partespartes often, the opponent submits new documents often, the opponent submits new documents

to show that the subject-matter of the to show that the subject-matter of the contested patent is not new or not inventivecontested patent is not new or not inventive

this happens not only in the notice of appealthis happens not only in the notice of appeal but also in oral hearings in the appeal but also in oral hearings in the appeal

proceedingsproceedings the 3-months time frame may have elapsed the 3-months time frame may have elapsed

years agoyears ago what happens? what happens?

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Appeal proceedings before the Appeal proceedings before the Federal Patent Court – inter Federal Patent Court – inter partespartes in appeal proceedings the board of appeal may in appeal proceedings the board of appeal may

not base their decision on fresh grounds for not base their decision on fresh grounds for opposition (unless the patent rightholder agrees)opposition (unless the patent rightholder agrees)

no fresh grounds for opposition: no fresh grounds for opposition: grounds for opposition that have been discussed in grounds for opposition that have been discussed in

the decision under appealthe decision under appeal grounds for opposition that have been introduced by grounds for opposition that have been introduced by

an opponent even if that opponant withdraw his an opponent even if that opponant withdraw his opposition or does not participate in the appeal opposition or does not participate in the appeal proceedingsproceedings

very frequent:very frequent: lack of novelty and lack of inventive lack of novelty and lack of inventive step constitute only step constitute only one ground for opposition one ground for opposition (subject-matter not patentable) (subject-matter not patentable)

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Appeal proceedings before the Appeal proceedings before the Federal Patent Court – inter Federal Patent Court – inter partespartes if the patent is amended so that the patent if the patent is amended so that the patent

under consideration in the appeal instance under consideration in the appeal instance is not the same as in the first instanceis not the same as in the first instance

the board of appeal may examine the the board of appeal may examine the amended parts of the patent as to all amended parts of the patent as to all requirements for the grant of a patentrequirements for the grant of a patent

in this case, examination is not restricted to in this case, examination is not restricted to the grounds for oppositionthe grounds for opposition

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Appeal proceedings before the Appeal proceedings before the Federal Patent Court – inter Federal Patent Court – inter partespartes if the opponent submits a new document to if the opponent submits a new document to

show that the subject-matter of the show that the subject-matter of the contested patent is not new or not inventivecontested patent is not new or not inventive

the board of appeal have to check first if lack the board of appeal have to check first if lack of patentability was a ground for opposition of patentability was a ground for opposition in first instancein first instance

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Appeal proceedings before the Appeal proceedings before the Federal Patent Court – inter Federal Patent Court – inter partespartes if yes, they will assess the relevance of the if yes, they will assess the relevance of the

newly submitted documentnewly submitted document if it is relevant, meaning: if it challenges the if it is relevant, meaning: if it challenges the

validity of the patent more seriously than the validity of the patent more seriously than the other documents (etc.) in the caseother documents (etc.) in the case

the board of appeal will – after having heard the board of appeal will – after having heard the parties – introduce the document into the the parties – introduce the document into the casecase

if not, it will not be admittedif not, it will not be admitted

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Decision of the board of Decision of the board of appealappeal The appeal is rejected as inadmissible. The appeal is rejected as inadmissible. The appeal is dismissed. The appeal is dismissed. The appealed decision is set aside andThe appealed decision is set aside and

the patent is granted.the patent is granted. the patent is upheld.the patent is upheld. the patent is revoked.the patent is revoked. the patent is upheld in restricted form (and the patent is upheld in restricted form (and

partly revoked).partly revoked). the case is referred back to the GPTO.the case is referred back to the GPTO.

Thank you very Thank you very much much for your attentionfor your attention

Karin FrieheKarin Friehekfriehe@gmail.comkfriehe@gmail.com