BGH: Defense of a patent in the appeal instance in patent nullity proceedings with amended claims
Decision of 23 April 2020, X ZR 38/18 - Niederflurschienenfahrzeug
In the lower instance at the Federal Patent Court, the patentee limited claim 1 by a an additional feature. However, the Federal Patent Court considered the added feature to be not sufficiently clear disclosed as belonging to the invention. Therefore, the additional feature has not been taken into consideration for the assessment of patentability. The Federal Patent Court communicated this view to the patentee in a notice under § 83 (1) Patent Law.
After all, the Federal Patent Court concluded that the subject-matter of patent claim 1 in the granted version was not based on an inventive step.
The patentee appealed against this decision to the Federal Supreme Court. In this course, the patentee filed new patent claims for the first time in the appellate instance. In this respect, the Federal Supreme Court emphasizes that, according to the case law of the Federal Supreme Court, the defense of a patent with amended claims, which was asserted for the first time in the appellate instance, is usually based on § 116 (2) Patent Law, if the defendant (in this case the patent proprietor) takes into account a legal conception of the Federal Supreme Court which differs from the first instance assessment and restricts the subject matter of the patent to that which, in the opinion of the Federal Patent Court, already resulted from the granted version (BGH decision of 28 May 2013 - X ZR 21/12, Walzstraße). On the other hand, the alternative defence of the patent in dispute with amended claims in the appellate instance can usually no longer be regarded as relevant within the meaning of § 116 (2) No. 1 Patent Law if the defendant was given reason to do so in the first instance. Such an occasion for an at least alternatively limited defence may result from the fact that the Federal Patent Court has stated in its notice issued under § 83 (1) Patent Law that in its preliminary opinion the subject-matter of the patent in dispute should not be based on an inventive step (Federal Supreme Court, decision of December 15, 2015 - X ZR 111/13, Telekommunikationsverbindung).
In the present case, the newly submitted amended set of claims further defined a feature which was considered as being not originally disclosed in the previous instance before the Federal Patent Court, which was communicated to the patentee in the notification under § 83 (1) Patent Law. In view of the reference of the Federal Patent Court, the patentee had no reason to add further definitions to the feature which could have led to the affirmation of patentability. Consequently, the patent may be defended with the claim submitted for the first time in the appeal instance. Furthermore, the Federal Supreme Court states that the feature which was considered as being not originally disclosed in the first instance was directly and unambiguously deducible from the original documents as a possible embodiment of the invention for the person skilled in the art.
Nevertheless, the Federal Supreme Court found a lack of inventive step of the subject matter of the new claim 1.
This judgement once again shows how much attention should be paid to a professional and high-quality drafting of a patent application in order to avoid a priori difficulties regarding the disclosure content. Furthermore, the Federal Supreme Court confirms with this judgement that an amendment in nullity proceedings at the Court of Appeal is quite possible if the patentee proves that he was not given any reason to do so during the first instance.