In an attempt to modernize the nullity procedure at the Bundespatentgericht, the German Patent Act has been reformed with effect as of October 2009. New features include the issuance of a preliminary opinion of the Bundespatentgericht (§ 81(1) PatG) identifying the points considered by the senate to be of particular relevance for the trial as well as improved possibilities of the BGH acting as the 2nd instance to reject new matter as late-filed (§ 117 PatG).
The decision “Fahrzeugwechselstromgenerator” (decicion of August 28, 2012, X ZR 99/11) was, according to this blogger’s knowledge, the first one to interpret these new rules.
In the case at issue, a supplementary expert opinion was submitted in the 2nd instance. The supplementary expert opinion sought to clarify and concretize issues addressed in an earlier expert opinion of the same (privately appointed) expert submitted in the 1st instance at the Bundespatentgericht. The BGH found that clarifications, explanations and concretizations of matter discussed in the 1st instance are not considered as new matter.
Further, the plaintiff had brought forward a new novelty/inventiveness attack which was, however, based on documents which had already been in the 1st instance procedure. The arguments were considered new matter.
According to the now applicable German Code of Civil Procedure (ZPO), new matter may be admitted in the 2nd instance inter alia if the failure to bring the matter forward in the 1st instance is not the result of a negligence of the submitting party.
In the case at issue, the Bundespatentgericht had expressed its preliminary opinion that the main attack against the validity brought forward in the 1st instance was convincing and finally decided to basically follow the plaintiff’s request. The BGH found that, given that the main attack was successful in the 1st instance, there had been no requirement for the plaintiff to submit auxiliary lines of argument. As a consequence, the failure to submit the new arguments in the 1st instance was not negligent and the new matter was allowable.
The BGH and the Bundespatentgericht clearly want to avoid excessively voluminous files resulting from parties submitting each and every possible argument even on the most remote aspects of the case. However, the allowability of the new argument could have been more problematic if e.g. the senate of the Bundespatengericht had changed its mind during the oral proceedings.
The lesson to learn is that a party might keep some trump cards up the sleeve when it is on the winning road. It is, however, better to play out everything you have if the preliminary opinion of the Bundespatentgericht is not favorable four your party at the latest.