Appeals in patent examination and opposition in Germany

1. Appeals in patent examination and opposition in Germany Karin Friehe Judge, Federal Patent Court, Munich, Germany

2. Federal Patent Court • founded in 1961 • situated in Munich • legally and technically qualified members Karin Friehe

3. actions for declaration of nullity of * German national patents * European patents with effect for Germany * supplementary protection certificates certain actions concerning compulsory licences appeals against decisions by the German Patent and Trademark Office regarding * patents * trademarks * utility models * topographies * designs appeals against certain decisions by the Federal Office of Plant Varieties Federal Patent Court - Jurisdiction Karin Friehe

4. Federal Patent Court 1 patent nullity board and juridical board of appeal 5 patent nullity boards 1 utility model board of appeal 13 technical boards of appeal 8 trademark boards of appeal 1 plant variety board of appeal Karin Friehe

5. Technical boards of appeal • 13 technical boards of appeal • responsible for appeals against decisions of the German Patent and Trademark Office concerning patent applications and patent opposition cases • presiding judge: technically trained judge • associate judges: two technically trained judges and one legally trained judge • principle of ex officio examination Karin Friehe

6. Technical boards of appeal • appeals against decisions of the GPTO in patent cases • = appeals against final decisions that adversely affect the rights of a party in particular: • rejection of a patent application • rejection of an opposition • revocation of a patent due to an opposition Karin Friehe

7. Conditions for the admissibility of an appeal • appellant was a party to the proceedings giving rise to the decision • appellant is adversely affected by the decision • notice of appeal filed in writing within one month of notification of the decision under appeal • notice of appeal must express the definite intention to contest an appealable decision • and contain sufficient information to identify the appellant and the decision under appeal Karin Friehe

8. Conditions for the admissibility of an appeal • fee must be paid within one month of notification of the decision under appeal • if not, the appeal is deemed not to have been filed • appeal fees • 200,- € for appeals concerning the rejection of an application • 500,- € for appeals concerning a decision in opposition proceedings • statement of grounds for appeal is not required under German law Karin Friehe

9. Conditions for the admissibility of an appeal • notice of appeal to be filed and fees to be paid with the GPTO • in ex parte cases, the GPTO may choose to produce relief, in particular to grant the patent, • if they do not, • as generally in inter partes cases, they hand over the case to the Federal Patent Court • normally, the president of the GPTO is not a party to an appeal case • but the Federal Patent Court may invite her to accede to the proceedings Karin Friehe

10. Appeal proceedings before the Federal Patent Court • in theory, the boards of appeal render their decisions without an oral hearing • oral hearing must take place • if one of the parties so requests • if evidence is to be taken • if the court deems the oral hearing to be pertinent • in practice, the majority of the appeal cases are decided on the basis of an oral hearing • representation by an attorney is not mandatory before the Federal Patent Court Karin Friehe

11. Appeal proceedings before the Federal Patent Court – ex parte cases • ex parte cases (in particular): • appeal against the rejection of a patent application • appeal against a decision in an opposition case that is continued after the opposition has been withdrawn (according to German patent law, if the opponent withdraws the opposition, the opposition proceedings are continued without the opponent) Karin Friehe

12. Appeal proceedings before the Federal Patent Court – ex parte cases • in oral hearings before the technical boards of appeal, the judges will usually accept and examine newly drafted claims • often, the judges will give a helping hand to the appellant • in ex parte cases, there is only one party and thus no problem with impartiality Karin Friehe

13. Appeal proceedings before the Federal Patent Court – inter partes • inter partes > parties on different sides • in particular: appeals in opposition cases • problem: late submissions • patent rightholder: restricted defense of the opposed patent with amended claims submitted only in the oral hearing • no problem if restriction through addition of the elements of dependant (granted) claims • problem: restriction through addition of elements taken from the description (or from drawings) Karin Friehe

14. Appeal proceedings before the Federal Patent Court – inter partes • amended claims with restricting elements taken from the description or from drawings submitted only in the oral hearing will be accepted • but: the opponent has a right to be heard • therefore: the oral hearing has to be adjourned • if the new defense based on the amended claims gives rise to new questions of facts and of law, • the opponent applies for an adjournement to comment on the new claims and • it is not appropriate just to have a break Karin Friehe

15. Appeal proceedings before the Federal Patent Court – inter partes • the board of appeal will have to decide if they uphold the patent in amended (restricted) form • valid restriction: • restricting elements taken from the description must have been disclosed to the person skilled in the art as being part of the invention • the subject-matter of the restricted patent must be patentable, thus (inter alia) new and inventive Karin Friehe

16. Appeal proceedings before the Federal Patent Court – inter partes • according to German law, a notice of opposition based on one of the grounds for opposition that are enumerated in the German Patent Act • has to be filed • in a written reasoned statement • within 3 months of the publication of the mention of the grant of the patent • substantiation of the opposition: the reasons in the notice of opposition must be as specific as to allow the patent department of the GPTO to decide if the opposition is justified Karin Friehe

17. Appeal proceedings before the Federal Patent Court – inter partes • grounds for opposition are: • subject-matter not patentable • this includes lack of novelty and lack of inventive step • insufficient disclosure of the invention • proprietor is not entitled to the invention • subject-matter extends beyond the content of the application as filed Karin Friehe

18. Appeal proceedings before the Federal Patent Court – inter partes • often, the opponent submits new documents to show that the subject-matter of the contested patent is not new or not inventive • this happens not only in the notice of appeal • but also in oral hearings in the appeal proceedings • the 3-months time frame may have elapsed years ago • what happens? Karin Friehe

19. Appeal proceedings before the Federal Patent Court – inter partes • in appeal proceedings the board of appeal may not base their decision on fresh grounds for opposition (unless the patent rightholder agrees) • no fresh grounds for opposition: • grounds for opposition that have been discussed in the decision under appeal • grounds for opposition that have been introduced by an opponent even if that opponant withdraw his opposition or does not participate in the appeal proceedings • very frequent: lack of novelty and lack of inventive step constitute only one ground for opposition (subject-matter not patentable) Karin Friehe

20. Appeal proceedings before the Federal Patent Court – inter partes • if the patent is amended so that the patent under consideration in the appeal instance is not the same as in the first instance • the board of appeal may examine the amended parts of the patent as to all requirements for the grant of a patent • in this case, examination is not restricted to the grounds for opposition Karin Friehe

21. Appeal proceedings before the Federal Patent Court – inter partes • if the opponent submits a new document to show that the subject-matter of the contested patent is not new or not inventive • the board of appeal have to check first if lack of patentability was a ground for opposition in first instance Karin Friehe

22. Appeal proceedings before the Federal Patent Court – inter partes • if yes, they will assess the relevance of the newly submitted document • if it is relevant, meaning: if it challenges the validity of the patent more seriously than the other documents (etc.) in the case • the board of appeal will – after having heard the parties – introduce the document into the case • if not, it will not be admitted Karin Friehe

23. Decision of the board of appeal • The appeal is rejected as inadmissible. • The appeal is dismissed. • The appealed decision is set aside and • the patent is granted. • the patent is upheld. • the patent is revoked. • the patent is upheld in restricted form (and partly revoked). • the case is referred back to the GPTO. Karin Friehe

24. Thank you very much for your attention Karin Friehe kfriehe@gmail.com