An International Guide to
Patent Case Management for Judges

5.4 Patent invalidity proceedings and invalidity grounds

5.4.1 First-instance proceedings

5.4.1.1 Court

The revocation action is not to be filed with the infringement court but with the FPC based in Munich. The FPC has a total of 25 panels, seven of which are nullity senates concerned with patent revocation proceedings. Each panel has a focus on particular technical areas, and, therefore, revocation actions are assigned to the respective panel based on the technical field of the patent-in-suit.

5.4.1.2 Admissibility

The threshold for filing an admissible revocation action against a German patent is rather low.

5.4.1.2.1 Form and timing

The revocation action must be in German (Section 126 of the Patent Act)¹⁴ and be filed in writing or as an electronic document using the communication methods provided by the FPC. If the patent-in-suit is a European patent that was filed and granted in another official language (e.g., English or French), a German translation should be provided. Translations of prior art references in English need not be filed in the first instance, but the FCJ usually requests German translations of the pertinent references on appeal. The claimant’s request may be for revocation of the patent either in its entirety or a part thereof.

With regard to the timing of a revocation action, Section 81(2) provides for a restriction: a revocation action cannot be filed as long as a notice for opposition can be filed with the respective patent office or as long as opposition proceedings are pending before the patent office. If a revocation action is nevertheless filed, it is rejected as inadmissible.

Besides this, there is no deadline or other timewise constraint. A revocation action can even be filed against a patent that is no longer in force if the plaintiff can show a special interest in the nullification of the patent. Such interest could, for example, result from the owner of the patent asserting or threatening to assert claims for damages arising from allegedly infringing activities during the lifespan of the patent. Such interest could also arise if the term of the patent lapses in the course of pending revocation proceedings and the plaintiff wants to continue the proceedings.

5.4.1.2.2 Content

Section 80(5) defines the mandatory content of a revocation action: naming the parties of the proceedings (i.e., the plaintiff and defendant), indicating the subject matter of the case, and the facts and evidence in support of the grounds. Moreover, the revocation action must contain a specific motion.

5.4.1.2.2.1 Parties

The defendant is defined in Section 81(1), according to which the revocation action shall be directed against the proprietor of the patent as named in the official register of the German PTO. Even if the register does not reflect recent changes in the ownership of the patent and is thus incorrect, the proprietor of the patent named in the register is still the legitimate defendant. If a plurality of proprietors is named in the official register of the PTO, the action must be directed against all of them.

With regard to the plaintiff’s standing to sue, there are nearly no restrictions. As a general rule, anyone can file a revocation action against a German patent unless the plaintiff has concluded an agreement with the patent proprietor precluding such an attack. If the person interested in the revocation of the patent prefers to remain unknown, the action for revocation can even be filed by a strawman (e.g., a patent attorney), but a strawman is subject to the same legal constraints as the truly interested party. If and when the revocation action is based on usurpation, only the aggrieved person is entitled to file the complaint (cf. Section 81(3)). Said person can, of course, additionally reason the revocation action with other grounds for revocation (e.g., lack of novelty or inventive step). As already mentioned, a further exception applies for a revocation action against a patent that has elapsed when the plaintiff needs to have a special legal interest in the nullification of the patent.

The action for revocation of a patent can also be jointly filed by two or more plaintiffs. If several actions for revocation are pending against the same patent, the proceedings are often merged into one. Furthermore, instead of filing a separate action for revocation, it is also possible for a party to join pending revocation proceedings. A joinder of parties on the plaintiff’s side is, however, only possible if the joining party has a special legal interest in joining the proceedings. Such interest could, for example, result from the patent proprietor asserting or threatening to assert the patent against the joining party.

German parties can pursue the proceedings before the FPC themselves: it is not mandatory to be represented by an attorney-at-law or a patent attorney (cf. Section 97(1)). The parties may, of course, choose to be represented by an attorney-at-law or a patent attorney or by another agent. Suitable other agents are defined in Section 97(2), according to which a party can also be represented by its employees or the employees of an affiliate company (Section 15 of the Stock Corporation Act of 6 September 1965),¹⁵ family members of full age, persons qualified to hold judicial offices, and joined parties, if the representation is not linked to a paid activity. Representation by an agent who does not fall within the above categories is not admissible. However, foreign parties must be represented by a patent attorney or an attorney-at-law (cf. Sections 97(1) and 25).

5.4.1.2.2.2 Motion

Since the subject matter of a revocation action is the nullification of a patent, the motion must be directed at a specific patent being nullified either in its entirety or partially with regard to certain claims. Other motions – for example, motions requesting that certain features of a patent claim be nullified or that certain clarifying passages be added to the specification of the patent-in-suit – are not admissible.

5.4.1.2.2.3 Subject matter and facts and evidence supporting the grounds

In the grounds of the revocation action, the plaintiff must set out the reasons for which the patent-in-suit is to be revoked either entirely or partially. This does not only require naming a reason for revocation (e.g., lack of novelty, lack of inventive step, added subject matter, or sufficiency) but also requires detailed argumentation. The plaintiff must detail why a certain claim of the patent-in-suit lacks, for example, novelty or inventive step over a certain piece of prior art. This includes identifying a specific passage of the prior art document for each of the claim’s features. Similarly detailed argumentation is also required for the other grounds for revocation. It is not sufficient to submit a number of prior art documents accompanied by the general statement that the patent lacks novelty or inventive step in view of those documents.

5.4.1.2.2.4 Security bond

If the plaintiff does not live in or has their place of business in a member state of the EU, in a contracting party to the Agreement of the European Economic Area or in a state where, due to international treaties, no such security deposit may be requested, the defendant may request that the court order the plaintiff to submit a security bond that covers the costs of the proceedings. The rationale behind this is to ensure that the defendant is reimbursed the costs of the proceedings if the plaintiff must bear the costs of the proceedings after the action for revocation is dismissed. Without a security bond, the defendant would need to enforce its claim for reimbursement abroad, which may be very time-consuming and costly.

Just like infringement proceedings, German revocation proceedings are front-loaded – that is, they are initiated by a written complaint (a revocation action) setting forth in detail why the patent-in-suit is invalid for at least one of the statutory grounds for revocation.

5.4.1.2.3 Front-loaded written proceedings

Once filed, a revocation action is transferred to the competent board within the FPC. The assignment of cases follows the main IPC class of the patent so as to ensure that technically competent boards deal with the respective actions.

The competent board then checks whether the action meets the formal requirements and, in particular, whether the appropriate court fees have been paid in advance. As these fees directly depend on the estimated value of the matter in dispute, the court also checks the claimant’s proposal in this regard, if any, and then preliminarily fixes the value of the matter in dispute by a decision. It may happen that the court disagrees with the claimant’s proposal and sets a higher value; in such a case, the claimant must pay the fees accruing from this higher value as well. The court will not process the revocation action until all requisite fees have been paid.

Court fees in German actions for revocation can be quite significant. This is because the value of the matter in dispute is normally assumed to be in the range of EUR 250,000 to EUR 30,000,000, which translates into court fees of about EUR 10,000 to about EUR 545,000. If an infringement action based on the patent-in-suit is already pending, the rule of thumb for calculating the value of the revocation action is the value of the infringement action plus a lump sum of 25 percent for own use and licensing of the patent.

Once the formalities have been checked and the requisite fees have been paid, the revocation action is served on the defendant by the FPC, and the defendant is invited to (formally) respond thereto within a one-month deadline (Section 82). Should the defendant fail to respond in due time, a decision on the action may be taken immediately without oral proceedings, wherein each fact asserted by the claimant is deemed to be proven. If the defendant declares that they will not defend the patent, it must be declared null and void without examination on the merits.¹⁶ If the defendant objects to the revocation action in due time, as is normal, they are usually granted a two- to three-month deadline for filing a fully substantiated defense.

The defendant (patentee) can either defend the patent in full or in an amended (limited) form. The court normally does not consider other claim versions than those defended by the patentee. Similarly, the court can revoke the patent only to the extent requested by the claimant, even if it is convinced that the entire patent is invalid. For the same reason, the defendant can only defend the patent in a limited form to the extent that it has been attacked; nonattacked claims are maintained but must not be amended.¹⁷ This follows from the principle of party disposition in civil proceedings, which also underlies the respective procedural provisions in the Patent Act (Section 99).

Conversely, this principle is overlaid by – and to some extent in tension with – the principle of ex officio examination enshrined in Section 87: “The Patent Court shall investigate ex officio the facts of the case. It shall not be bound by the factual statements and the requests to take evidence of the parties.” In practice, this means that the FPC can, for example, deem a prior art reference relevant for novelty, even though it was only asserted under lack of inventive step or vice versa. The court may also find a prior art reference on which the claimant has not particularly focused to be highly pertinent. In some past cases, the FPC has even introduced prior art references into the proceedings of its own motion. While this practice has since stopped, the FPC may still draw parties’ attention to references reflecting what it deems to have been common general knowledge at the priority day.

5.4.1.2.4 Preliminary evaluation by the court

Once all parties have had the possibility to submit their observations, the presiding judge of the competent board sets a date for oral proceedings and summons the parties to attend the same. Moreover, the board deliberates on the case and issues a first communication. According to Section 83(1), the purpose of this communication is merely

to draw the attention of the parties to matters which are likely to be of particular importance for the decision or which are conducive to concentrating the hearing on the issues essential for the decision. Such indication is not required if the aspects to be discussed appear obvious from the arguments of the parties.

In practice, however, the communication represents a reasoned preliminary opinion on the merits of the revocation action, which is already a fairly good indicator of the final outcome in most (but not all!) cases. This preliminary opinion is binding for the court insofar that deviating from it requires the issuance of a further preliminary opinion, either in writing or orally at the hearing. This is to prevent any surprising outcome for the parties and to safeguard the losing party’s right to be heard.¹⁸

According to Section 83(1), the board’s communication, including its preliminary opinion, should be issued within six months after service of the revocation action. In preparation of the preliminary opinion, the court may set a deadline for the final submissions of the parties. In pending infringement proceedings, the infringement court should also be provided with the preliminary opinion. The rationale behind this statutory provision is to safeguard that the FPC’s preliminary opinion on the validity of the patent-in-suit can be taken into consideration by the infringement court in deciding whether the infringement proceedings should be stayed.

5.4.1.2.5 Written statements

In accordance with the principle of party disposition, the parties to the proceedings are basically free to file submissions or replies at will, although the court will be entirely satisfied with the revocation action and a reasoned reply and will not invite the parties to file additional observations or requests unless some matters or requests need to be clarified.

However, pursuant to Section 83(2), the board usually sets a deadline for both parties for filing their final submissions and requests when issuing the preliminary opinion. This will normally also be the last chance to introduce auxiliary requests in time. Only if the board, before or at the trial, comes to a view different from what has been held in the preliminary opinion can the party adversely affected by this development be allowed to file a further request. It is at the discretion of the court whether to reject late-filed means of attack or defense, or a further amended version of the patent, if considering these new submissions would necessitate postponing the oral proceedings and if the party has not sufficiently excused the delay (Section 83(4)).

Overall, the written proceedings mainly serve the purpose of preparing the final oral proceedings to the maximum extent possible so that the requests, the means of evidence and the main lines of argumentation have been clarified before the hearing starts. The procedure in writing is open to public file inspection upon request except where the patentee proves a conflicting interest warranting protection (Section 99(3)).

5.4.1.2.6 Auxiliary defense by amendments of the patent

As mentioned above, a defendant patentee may elect to either defend the patent as granted or in an amended (limited) form. For a limited defense to be successful, it is required that the amendment be admissible as such – that is, that the subject matter of the amended claims does not extend beyond the content of the application as originally filed (Section 21(1)(4)) and that it does not extend the scope of the protection of the patent (Section 22(2)). Moreover, the limited subject matter must meet the patentability and sufficiency requirements (Section 21(1)(1)–(2)). The admissibility of the amendment and its compliance with the other requirements of the Patent Act are examined in the revocation proceedings. Thus, no separate proceedings for amendment or limitation need to be initiated.

In addition, the defendant (patentee) in a German revocation action has the option of a staggered defense. They may defend the patent-in-suit in the form of a main request (e.g., patent as granted or a limited version thereof) and one or several auxiliary requests presenting further limited sets of claims. This is quite similar to the procedure in German and EPO opposition proceedings. To the extent that the defendant does not defend certain claims against the revocation action, those claims are to be revoked without examination on the merits.¹⁹

The patentee is not limited in their defense to a subset of the claims as granted but may also amend the claims by including features from the description. The only limitation is the prohibition of adding matter (Section 21(1)(4)) and expanding the scope of the patent (Section 22(1)), which also excludes replacing the claimed subject matter by an aliud. Conversely, when resorting to an example or a particularly preferred embodiment disclosed in the description of the patent application as the basis for an amendment, the patentee is usually not obliged to include all features of this example or preferred embodiment in the claim. This is as long as the features taken from the example or embodiment were disclosed as belonging to the invention as originally disclosed and contribute to the claimed solution.²⁰

As a lack of clarity is no ground for revocation, claims that are attacked merely for this reason must be maintained as they are and cannot be amended. Even in the case of a limited defense by the patent proprietor in revocation proceedings, an examination of the clarity of the limited patent claim is not admissible, at least to the extent that the presumed ambiguity was already contained in the granted claims.²¹

The declaration that the patent is only defended in a limited form, or any auxiliary requests, do not need to be filed immediately when submitting the substantiated response to the revocation action, even though this is highly recommended to streamline proceedings and to assist the court in drafting a meaningful preliminary opinion (see above at 5.3.2). As a ground rule, it is advisable for the parties to front-load their complete cases in the first instance, similar to EPO opposition proceedings. The court may reject amendments filed after the expiration of a term set by the court under Section 83(4).

The FPC does not examine the unity or convergence of auxiliary requests. Furthermore, the FPC is not bound to examine the different auxiliary requests in the order used by patentee, but it will usually follow that order.

If the defendant (patentee) admissibly limits the patent of their own volition and the claimant withdraws the request for revocation to this extent, the patent is maintained in part based on said limitation, and declared null and void to the extent that it extends beyond this limitation, without further substantive examination. This may be one way for parties to settle the lawsuit, although the much more frequently used method to end revocation proceedings is by a withdrawal of the revocation action by the claimant. Such a withdrawal has immediate effect, even on appeal, and does not require the patentee’s consent.²² The patent is then maintained as granted.

5.4.1.2.7 Oral hearing

The final hearing concluding revocation proceedings follows a certain structure. First, the presiding judge opens the proceedings and checks the attendance of the parties and of the witnesses and so on, if any. Then, the value of the matter in dispute is finally set after having given all parties an opportunity to comment. Often, the court gives a reasoned indication based on the submissions of both parties and possibly also on general knowledge. This indication is then briefly discussed and usually accepted by the parties.

The presiding judge may then try to explore possibilities for settlement. Where appropriate, the court tries to “catalyze” such an agreement or may even gently push the parties to agree. The representatives are therefore expected to discuss the possibilities of a settlement with their respective clients before the hearing.

If no settlement is achieved, the presiding judge confirms and records the parties’ motions. Then they (or the reporting judge in exceptional cases) present the essential content of the files and explain the court’s provisional assessment of the case. This is followed by the parties’ pleadings and a discussion of the case (Section 91(1)). Judges may ask questions to the parties and occasionally avail themselves of this opportunity. Depending on the complexity of the case, the debate (including breaks) may take up to one full day.

The hearing is public (Section 69) except in extremely rare cases where the public is excluded from the proceedings at the request of one of the parties because the public nature of the proceedings threatens to endanger any interests of the requestor that warrant protection. Pursuant to Section 92, minutes of the hearing (including the taking of any evidence) are taken, but there is no transcript of the hearing. The minutes are often quite brief, though this varies from board to board.

After the parties have been heard and the case has been exhaustively discussed, the presiding judge closes the oral hearing, and the court retires for deliberation. The board may decide to reopen the hearing after deliberation or may proceed with giving the decision. Alternatively, the court may set a date for giving the decision (Section 94). It may also serve the decision on the parties rather than giving the decision orally in session. In practice, the FPC announces its decision most of the time on the same day after deliberation.

5.4.1.2.8 Decision

Pursuant to Section 84(1), the decision on the revocation action is rendered in the form of a judgment. The judgment normally concludes the dispute in this instance but is appealable. The FPC shall make its decision on the basis of its independent conviction gained in light of the results of the proceedings as a whole. The judgment contains the grounds for the decision (Section 93(1)).

The court’s judgment has an operative part wherein the patent-in-suit is either declared null and void in its entirety or partially or wherein the revocation action is dismissed. The operative part also contains a decision on the costs of the proceedings. In accordance with Section 84(2) and the applicable rules of the Code of Civil Procedure, the costs will usually be imposed on the losing party to the extent it lost the revocation action unless equity requires otherwise. Finally, the court usually orders that its decision be provisionally enforceable with regard to the costs if the cost creditor provides a security amounting to 120 percent of the amount to which they are entitled. The actual amount of the reimbursable costs is determined in a separate cost-fixation proceeding.

The fully reasoned decision in writing must be delivered within five months of the announcement of the decision. It should provide comprehensible reasoning on all points in dispute that were necessary for the court to arrive at its decision. However, the court does not need to give reasons for each attack or defense raised by one of the parties. For example, the FPC sometimes leaves the question of novelty undecided, even if it was controversial, but invalidates patents for lack of inventive step.

When a parallel decision from an EPO opposition division, a board of appeal or a national court of another EPC country is submitted by one of the parties, German courts are supposed to take note thereof and, as far as relevant for the decision in the case at hand, discuss such a decision as a weighty but not binding authority.²³ Generally, the FPC is relatively little influenced by the outcome of preceding EPO opposition or appeal proceedings or invalidation proceedings in other countries.

5.4.1.3 Evidence

The FPC may take evidence in oral proceedings pursuant to Section 88(1) of the Patent Act in connection with Section 355(1) of the Code of Civil Procedure. The necessity of taking evidence depends on whether relevant questions of fact that cannot be clarified otherwise are in dispute between the parties. Questions regarding the content or interpretation of the patent or prior art reference, as well as the evaluation of novelty, inventive step, sufficiency of disclosure and added matter, are considered to be legal questions that are not subject to the taking of evidence. Therefore, the taking of evidence before the FPC is the exception rather than the rule, particularly since the court is normally convinced that it has the necessary expertise to deal with all technical questions in dispute. Whether evidence is to be taken is determined by the court ex officio.

The type of evidence to be considered particularly includes the hearing of witnesses, experts and parties; inspections; and the consultation of documents. In practice, only experts, inspections and witnesses of fact play some role in revocation proceedings.

5.4.1.3.1 Experts

According to German civil procedural law, a strict distinction is to be made between experts appointed by the court (according to the procedure stipulated in Sections 402 et seq. of the Code of Civil Procedure) and party experts. Only the former are considered formal “means of evidence” and heard in court, whereas the opinions of the latter are simply assumed to be part of the submissions of the party that files them. Therefore, it is a rare exception for the FPC to interrogate a party expert in oral proceedings, even though it is possible.

If the FPC wants to consult a court expert, it must take a formal decision to this effect after hearing the parties. This normally takes place in the oral proceedings and may significantly extend the duration of the proceedings since an expert must first be identified, appointed and properly summoned. As this is hardly efficient – and, as the technical judges, due to their technical background, understand the technical aspects of the case at issue – appointing a court expert is a very rare event. Nonetheless, a specialist expert may be very helpful and advisable in complex cases or in cases involving new or specialist areas of technology. The FCJ expects the FPC to ensure that its decision is based on adequate technical expertise, either by means of the court’s technical judges or by means of a court-appointed expert.

The remuneration of the court expert (and any witnesses) is governed by Section 128a Patent Act and the Judicial Remuneration and Compensation Act.²⁴

5.4.1.3.2 Witnesses

Pursuant to Section 373 of the Code of Civil Procedure, evidence by hearing witnesses shall be offered by naming the witnesses and designating the facts regarding which the witnesses are to be examined. The general rules of taking evidence in revocation proceedings (Section 88(3) of the Patent Act) apply: that is, parties need to be notified of the decision to take evidence and need to have the opportunity to attend the taking of evidence. They are allowed to direct appropriate questions to witnesses or court-appointed experts in the hearing. Witnesses of fact mainly play a role in cases of an alleged public prior use.

5.4.1.3.3 Inspection

Inspection of a model or an apparatus can also serve as a means of evidence. This occasionally plays a role in mechanical engineering cases, particularly if a public prior use of the apparatus is asserted and the exact functionality or composition of the apparatus or parts thereof are in dispute.

5.4.1.4 Access to court files

The parties to the proceedings and third parties may request access to court files. A third party’s request is granted unless a party to the revocation proceedings can show that legitimate confidentiality interests would be affected by allowing a third party’s access to the court files (e.g., owing to commercial or technical aspects or trade secrets). In general, a legitimate interest of a party cannot justify a complete denial of access to the court files, because information that is to be kept confidential is usually only part of specific briefs or passages thereof. Therefore, access to the files is only excluded with regard to the respective specific briefs or respective confidential passages. These will be blackened prior to granting inspection of the files.

5.4.2 Grounds for revocation

5.4.2.1 Lack of patentability

Pursuant to Section 21(1), in conjunction with Section 22(1), a German patent shall be revoked or declared null and void if it arises that the subject matter of the patent is not patentable according to Sections 1–5. These sections cover patent eligibility and statutory exclusions (Sections 1, 1a); ordre public, the cloning or genetic manipulation of humans, embryos or animals, plant or animal varieties, and methods of treatment of the human or animal body (Section 2); novelty (Section 3); inventive step (Section 4); and industrial applicability (Section 5). The very same applies to the revocation of a European patent with effect in Germany (with regard to the German part), pursuant to Article II(6) of the Act on International Patent Conventions.²⁵ The subsections can only provide a very brief overview of these issues and will focus on aspects that have arisen in practice.

5.4.2.1.1 Lack of patent eligibility

Patents can only be granted for inventions in a technical field (Section 1(1)). The FCJ has defined a technical teaching in patent law as “a teaching to methodically utilize controllable natural forces to achieve a causal, perceivable result.²⁶ Later, the Federal Supreme Court put the definition into perspective by stating that the concept of technology must leave room for future developments and therefore cannot be given a final definition.²⁷ Today, the main applicability of Section 1 is in the field of computer-implemented inventions and business methods. While discoveries, scientific theories, mathematical methods, aesthetic creations, schemes, rules and methods for performing mental acts, playing games or doing business, as well as programs for computers and presentations of information, are specifically excluded from being “inventions” under Section 1, this exclusion only applies to the subject matter or activity “as such” and is generally construed narrowly. For example, the FCJ has decided that a mathematical method can only be considered nontechnical if it has no relation to the specific application of forces of nature in the context of the claimed teaching. Conversely, a sufficient connection to the specific application of forces of nature exists if a mathematical method is used for the purpose of gaining more reliable knowledge about the condition of, for example, an aircraft on the basis of available measured values and influencing the functioning of the system used to determine this condition.²⁸

Currently, German courts examine the patentability of computer-implemented inventions and business-method-related patents using the following three-step approach:

1. 1. Is at least part of the application in the technical field? (Section 1(1))
2. 2. Is the subject matter of the patent a computer program as such (or business activity or mathematical method)? (Section 1(3), in conjunction with (4))²⁹
3. 3. If the application contains instructions that serve to solve a concrete technical problem by technical means, then examine for novelty and inventive step, but “nontechnical” features are not to be taken into account.

Most computer-implemented invention patents therefore pass the initial hurdle of patent eligibility, but an appreciable number of them fail on the inventive-step hurdle, particularly if the crux of the invention is “only” an improvement in the software or algorithm driving a certain technical system (such as a computer). The German approach is quite similar to the EPO’s “Comvik” approach,³⁰ and the same applies to the results.

Conversely, German jurisprudence has no problem in patenting inventions that are (mainly) based on the discovery of a natural law, including the biological function of a DNA sequence or the like. The FCJ has decided that a teaching on a technical action that teaches the use of a discovery to bring about a certain success is amenable to patent protection irrespective of whether the teaching contains an “inventive surplus” over and above the purpose-directed use of the discovered natural law. This also applies to the provision of a nucleic acid sequence coding for a human protein.³¹

5.4.2.1.2 Lack of novelty

Section 3 of the German Patent Act substantially corresponds to Articles 54 and 55 of the EPC. An invention is deemed to be novel if it does not form part of the state of the art, which includes all knowledge made available to the public by any means before the date relevant for the priority of the application. Additionally, German, European and international applications with earlier relevant filing dates, and that have been made available to the public only after the date relevant to the priority date of the later application, also count as (fictitious) state of the art but only for the purposes of novelty (Section 3(2) and 4). Novelty of any substance or substance mixture included in the state of the art is not excluded when such is intended for use in a method for surgical or therapeutic application to the human or animal body or for diagnostic methods used on the human or animal body and when its use for such a process is not included in the state of the art (Section 3(3) and (4)).

In view of the identical statutory foundation, German courts have endeavored to bring their case law on novelty into harmony with that of the EPO. As a result, only small differences, if any, are still noticeable from time to time. Following the FCJ’s landmark decision in Olanzapin³² it is now established case law that a (prior art) disclosure may also include that which is not expressly mentioned in the patent claim or the description yet is plainly evident, from the point of view of a person skilled in the art, such that they are able to carry out the protected teaching and which therefore does not need to be specifically disclosed but will be “read in.” The inclusion of plainly evident subject matter, does not, however, permit that the disclosure be supplemented by expert knowledge. Instead, it only serves the purpose of full ascertainment of the content and its meaning – that is, the technical information, which the skilled reader will infer from the source against the background of their expert knowledge.³³

A particularly interesting pair of decisions on the scope and boundaries of implicit disclosure in an Article 54(3) (fictitious) prior art document are the FCJ’s two decisions on a patent pertaining to a method of separating therapeutic blood-clotting proteins from human or animal plasma. In the first decision, the patent was maintained because the critical prior art document was found not to have implicitly disclosed a final lyophilization step, even though such a lyophilization step was considered as the “means of choice” and might “in most cases be nearly indispensable.”³⁴ However, the FCJ found in this decision that the skilled person also had alternative means at their disposal to make a Factor VIII concentrate suitable for therapeutic use. The revocation action was, therefore, finally dismissed. However, an affiliated company of the claimant in the revocation action [hereinafter claimant], which the patentee had also sued for patent infringement, filed another revocation action based on the same ground and prior art reference. This time, the claimant succeeded on appeal, and the patent was declared null and void for lack of novelty.³⁵ The FCJ found that the alternative it had recognized in its first judgment – filling the preparation into ampoules – was, in fact, no “alternative” but a preparatory step for the subsequent lyophilization, which was the common means at the priority date to secure a long-term therapeutic use. If it is apparent to a person skilled in the art, from the description of a process for the production of a protein concentrate suitable for therapeutic use, that further process steps are required to bring about therapeutic usability, then the measure that was the means generally used in practice at the priority date to achieve this goal is covered by the disclosure content of the publication.

5.4.2.1.3 Lack of inventive step (obviousness)

Pursuant to Section 4 of the Patent Act and Article 56 of the EPC, an invention is deemed to involve an inventive step if it is not obvious to a person skilled in the art from the state of the art. While the applicable statute is the same, the methodology for determining inventive step greatly differs between the EPO and the German courts. In particular, the German courts do not apply the EPO-specific problem–solution approach.

The starting point for evaluating inventive step, according to German jurisprudence, is any reference(s) that a skilled person would find realistic ante inventionem; there is no preference for a “closest prior art.” However, the choice of the starting point(s) should be justified.³⁶

The problem underlying the invention should likewise not be defined by merely determining the difference between the invention and the closest prior art, because this would again be hindsight. Sometimes, it is plausible that the skilled person would have solved this problem; sometimes, the problem construed that way may be artificial. Generally, the German courts strive to define the problem in general and realistic terms and without hints to its solution.³⁷ It is true, though, that the formulation of the problem is of relatively little impact on the final and determinative question of obviousness. The problem stated in the patent is not always relevant for the evaluation of obviousness; a different problem may also have suggested its solution to the skilled person.³⁸

German case law on obviousness is both voluminous and complex and cannot be discussed in depth in a treatise like the present one. Particularly in chemical and biotechnology cases, the criterion of a reasonable expectation of success has recently been applied several times.³⁹ Generally, a finding of obviousness requires that a skilled person would have arrived at the invention rather than that they merely could have done so,⁴⁰ which means that the relevant state of the art must have contained a teaching, suggestion or motivation for arriving at the invention. Exceptionally, a person skilled in the art may also have reason to use, for solving the problem, a means that belongs to general technical knowledge and that could be considered for a multitude of applications. This requires that the use of the means is objectively suitable for solving the problem due to its functionality and that there are no special circumstances that make its use seem impossible, difficult or otherwise impractical from a technical point of view.⁴¹ The burden of proof for all these requirements is on the claimant.⁴² Secondary indicia may neither substantiate an inventive step nor replace a critical examination thereof.⁴³

5.4.2.1.4 Others

Other grounds covered by lack of patentability – such as a lack of industrial applicability (Section 5), violation of ordre public (Section 2), exclusion of plant and animal varieties (Section 2a(1)(1)), exclusion of methods for the surgical or therapeutic treatment of the human or animal body (Section 2a(1)(2)) and so on – have played almost no role in practice so far.

5.4.2.2 Insufficient disclosure

A patent must be revoked or declared null and void if it does not disclose the invention in a manner clear and complete enough for it to be carried out by a skilled person (Section 21(1)(2), in conjunction with Section 22). Invalidations of patents in their entirety for this reason are fairly rare in Germany, where relatively high levels of skill are imputed to the skilled person, and it is recognized that one way to practice the invention is generally sufficient, even if many other ways that fall under a generic expression in a claim do not work.⁴⁴ Also, broad functional claims (reach-through claims) have been approved by the FCJ in one case,⁴⁵ contrary to the practice before the EPO. The FCJ’s generosity reaches certain limits in the case of claims containing open ranges that generalize the subject matter beyond the invention’s contribution to the state of the art.⁴⁶ The degree of generalization that is permissible in this context depends, in each individual case, on whether the protection afforded by the respective version of the claim is within the scope of what, from the point of view of a person skilled in the art, can be inferred from the patent, taking into account the description and the embodiments contained therein, as the most general form of the technical teaching by which the problem underlying the invention is solved.⁴⁷

5.4.2.3 Usurpation

According to Section 21(1)(3), a patent shall also be revoked if the essential contents of the patent have been taken from the descriptions, drawings, models, appliances or equipment of another or from a process used by another without the consent of said person (usurpation). However, this ground for revocation plays no role in practice since, in the case of usurpation, the entitled owner may also demand that the patentee assigns the patent to them (Section 8), and this is usually the more attractive means of redress.

5.4.2.4 Added matter

Section 21(1)(4), in conjunction with Section 22(1), stipulates that the patent shall be revoked or declared null and void if the subject matter of the patent extends beyond the content of the application as originally filed. Thus, the applicable provisions on added matter correspond to those enshrined in Articles 123(2), 100(c) and 138(1)(c) of the EPC.

Therefore, the jurisprudence of the German courts on added matter is, by and large, consistent with the EPO’s jurisprudence. In particular, both German and EPO decisions frequently refer to the “gold standard” for added matter, which is whether the amendments are directly and unambiguously derivable from the application as filed.⁴⁸ Nonetheless, the concept of “direct and unambiguous” disclosure in Germany is interpreted more broadly and seeks to avoid unduly limiting the applicant or patentee in exhausting the disclosure content of either the application as filed or the priority application, if priority is at stake.⁴⁹ Moreover, German courts spend considerable effort to carefully construe the claimed subject matter, sometimes even against its literal wording, when it results from a description that two terms in the claims are to be substituted for each other, which may help against an added-matter attack.⁵⁰

Under German case law, not only the original claims and the general description but also the examples and drawings can, in principle, be used as the basis for an amendment, since they are considered part of the application’s disclosure. The main question to be asked is whether the feature to be included in the claim can be seen as a possible embodiment of the invention. Therefore, an amendment made by taking one feature from an example, rather than limiting the claim to the example as a whole, is allowable as long as it appears from the patent claim or the application as filed that the new combination of selected features is a possible embodiment of the invention.⁵¹ The same test is applied in cases of generalizations from drawings.

The FCJ’s jurisprudence is certainly much less formalistic compared to the EPO when it comes to limitations from numerical ranges in the application as filed. A numerical range is generally considered to disclose all possible intermediate values between the lower and upper limit – that is, every value and subrange within that range is equally disclosed.⁵² The FCJ is also less formalistic than the EPO when it comes to admitting disclaimers and has found a pragmatic solution for cases in which a patent application has been limited by an unallowable amendment during prosecution and is attacked later in opposition or revocation proceedings. While, in the EPO, this situation may put the patentee in an “inescapable trap,” where no option remains that ensures compliance with both Article 123(2) and 123(3) of the EPC, German jurisprudence still offers a solution: if the insertion of a feature that has not been disclosed in the application as filed results in a mere restriction of the protected subject matter, then the feature in question can remain in the claim but may not be relied upon in support of patentability.⁵³ If, by contrast, the inserted feature deals with an aspect that has not been disclosed in the application as being part of the invention at all (aliud), the patent must be revoked or declared null and void.⁵⁴

5.4.3 Appeal proceedings

5.4.3.1 Court

An appeal against a judgment in revocation proceedings is to be filed with the FCJ. Since the FCJ is also the final instance in the infringement proceedings, it can assure that the patent is interpreted in the same way in infringement and revocation proceedings.⁵⁵

Within the FCJ, the X^th civil senate is responsible for appeals in revocation proceedings. The X^th civil senate currently has eight members, all of whom are fully qualified lawyers. Before being promoted to the FCJ, the members of the X^th civil senate were (presiding) judges either at district courts, courts of appeals or the FPC. Not all members of the X^th civil senate are involved in every case. Cases are handled by a panel of five judges: the presiding judge or their deputy, and four associate judges one of whom is the reporting judge (the judge who is mainly responsible for handling the case prior to the oral hearing).

5.4.3.2 Limited de novo appeal

The purpose of appeal proceedings is not to reevaluate all facts and legal arguments brought forward in the course of the first instance. Therefore, experts or witnesses are rarely heard by the FCJ. The appeal proceedings are instead directed at evaluating whether the judgment of the FPC was based on a violation of federal law or if facts that are to be considered by the FCJ justify a different decision (cf. Section 111(1)). The latter aspect is the limiting factor: the basis of the FCJ’s decision is, first and foremost, the facts determined in the judgment of the FPC, whereas new facts and new means for challenge and defense (e.g., new evidence, new objections, new interpretations of or new arguments based on prior art documents that are already part of the proceedings) can only be considered to a very limited extent (cf. Section 117).

According to Section 117, which refers to certain provisions of the German Code of Civil Procedure, new means for challenge and defense are only admitted for consideration (1) if they concern an aspect that the FPC had recognizably failed to see or had held to be insignificant, (2) if they were not asserted in the first instance due to a defect in the proceedings, or (3) if their nonassertion in the first instance was not due to the party’s negligence. In practice, the last aspect is the most relevant. The standards for showing that the nonassertion of a means for challenge and defense was not due to the party’s negligence are rather high. For example, a party that wants to introduce a newly found prior art document in the appeal proceedings must reason why this piece of prior art was not found during the prior art search conducted in (the preparation of) the first-instance proceedings. This reasoning must include a detailed explanation as to the scope and content of said search and as to why the search profile that led to the prior art document had not been chosen back then. Parties are thus forced to carefully consider their position and bring all relevant arguments, as well as their means for challenge and defense already in the proceedings before the FPC, because an argument that has been held back in the first instance may not be considered in the appeal proceedings.

Moreover, Section 117 of the Patent Act and the applicable provisions of the Code of Civil Procedure state the means for challenge and defense that have been correctly rejected by the FPC must also not be considered by the FCJ, and that delayed means for challenge and defense may only be considered if their consideration does not defer the appeal proceedings (e.g., require a postponement of the oral hearing).

Whether or not an amendment of the action or a limited defense of the patent-in-suit with new claims is admissible follows the provisions set forth in Section 116. Admission requires the consent of the opposing party or that the FCJ deems the amendment to be expedient and that the amendment can be based on facts that are to be considered by the FCJ anyway. The threshold for expediency of a limited defense of the patent-in-suit is lower than that of an amendment of the action because the patent proprietor has no second chance to defend the patent-in-suit if it is revoked by the FCJ, whereas the plaintiff may file a new revocation action if the amendment is inadmissible.

5.4.3.3 Representation

In appeal proceedings before the FCJ, the parties need to be represented by an attorney-at-law or a patent attorney, either of whom may be accompanied by a technical adviser. Unlike in most other proceedings before the FCJ, the parties in patent revocation proceedings on appeal do not need to be represented by an attorney who is admitted to the bar at the FCJ but can choose any attorney-at-law or patent attorney who is admitted to practice in Germany.

5.4.3.4 Course of proceedings

5.4.3.4.1 Notice of appeal and statement of grounds for appeal

The deadline for filing a notice of appeal with the FCJ is one month from the service of the judgment in complete form (and five months following delivery at the latest if the judgment has not been seviced). The notice of appeal is a short brief whose mandatory content is a declaration that an appeal is being filed and an indication of the judgment against which the appeal is being filed. The mandatory statement of grounds for appeal does not need to be part of the notice of appeal but can be filed in a separate brief within three months from service of the judgment in complete form (and five months following delivery at the latest). Contrary to the deadline for filing the notice of appeal, the deadline for filing the detailed statement of grounds may be extended upon request by one month or, but only with the counterpart’s consent, longer.

The statement of grounds must contain a specific motion that sets out to what extent the judgment of the FPC is being contested and the extent to which its setting aside is requested. Moreover, the appellant must specifically deal with the reasoning of the FPC’s judgment and set out for which legal or factual grounds the judgment is considered to be incorrect. This requires pointing out that the FPC’s judgment violates the law and showing that the judgment was based on this violation of law – that is, that the decision would have been different without the alleged violation of law. Against this background, Section 112(3) states that the statement of grounds must contain the following:

• If a violation of law is alleged, the circumstances from which said violation of the law resulted need to be specified in the statement of grounds. The main scenario for this provision is that the appellant assesses the patent’s patentability in the light of the prior art differently than the FPC does. Thus, the appellant must explain why the assessment of the FPC is incorrect and why a correct assessment would result in a more favorable decision. The extent to which the grounds for revocation needs to be discussed depends on the person of the appellant: if this is the plaintiff, they must deal not only with the grounds for revocation discussed in the judgment but also with all other grounds for revocation that have been discussed in the course of the first-instance proceedings and that they want to pursue in the appeal proceedings. If this is the defendant (i.e., the patent proprietor is the appellant), they need deal only with all those grounds for revocation that led to the FPC (partially) revoking the patent.
• If a violation of procedural law is alleged, the circumstances that resulted in said deficiency need to be indicated. For example, if a violation of the right to be heard is alleged because the FPC did not inform the parties that it would no longer follow the assessment set out in the preliminary opinion, the appellant must set out in their statement of grounds for appeal which submission would have been made had they been informed of the change in the FPC’s opinion and why due consideration of this submission would have resulted in a more favorable decision.
• Finally, if the appellant wishes to introduce new means of challenge or defense (e.g., new prior art documents), these new means need to be mentioned in the statement of grounds for appeal, and the appellant also must set out why these new means are to be admitted in accordance with Section 111 (cf. Section 5.4.3.2).

5.4.3.4.2 Examination of admissibility and preparation of oral hearing

If the appeal is an available remedy, the FCJ checks whether the notice of appeal and the statement of grounds for appeal have been filed in due form and within the legal deadlines. If one of these requirements is not met, the appeal is dismissed as inadmissible; otherwise, an oral hearing is scheduled, which is further prepared by written statements from the parties. Following the appellant’s statement of grounds for appeal, the appellee can submit a written statement in defense of the FPC’s judgment setting out why the appeal should not be successful. Subsequently, further briefs may be exchanged in preparation for the oral hearing.

5.4.3.4.3 Cross-appeal

If the judgment of the FPC aggrieves both parties, but, at first, only one party appealed the judgment, the other party may file a cross-appeal. The deadline for filing the notice of cross-appeal is either two months from service of the statement of grounds for appeal or within the deadline set for responding to the statement of grounds for appeal. Unlike the notice of appeal, the notice of cross-appeal must include the statement of grounds. The cross-appeal is not an independent remedy and ceases to be effective if the appeal is withdrawn or dismissed.

5.4.3.4.4 Oral hearing and judgment

If the appeal is not dismissed as inadmissible, an oral hearing will be scheduled, and the parties will be informed of the oral hearing. The law requires that the parties be informed of the date of the oral hearing at least two weeks in advance, but, in practice, the oral hearing is generally scheduled roughly one year in advance. While the parties to infringement proceedings may request that the oral hearing be rescheduled if it is scheduled for July or August, such a possibility is not open to the parties of revocation proceedings, for whom oral hearings may also take place during the summer months.

The law provides for the possibility of dispensing the oral hearing if the parties consent, but this rarely happens. At the beginning of an oral hearing, the presiding judge will summarize the facts of the case and give a preliminary assessment of the case based on the deliberations of the senate that usually take place the day before the oral hearing. This assessment may include open questions on which the panel could not even form a preliminary view. The parties’ representatives will then plead their cases, and, depending on the case, there may also be a discussion between the judges and the party representatives about specific technical or legal questions.

In patent revocation appeal proceedings, the oral hearing may also be conducted and a judgment rendered if one party does not appear at the oral hearing. Even if both parties do not appear at the oral hearing, the court may render a judgment.

The FCJ gives its judgment on the basis of the oral hearing, but only after having been extensively briefed by the parties in the written proceedings. Thus, careful preparation of the court by the parties is essential. While the judgment is normally given directly after the oral hearing and deliberations, the court may also set a date a few weeks after the oral hearing for giving the judgment.

The appeal is dismissed if the judgment of the FPC is found to be correct or if its reasoning contains a violation of law but is correct for other reasons. If the appeal is deemed to be well founded, the judgment of the FPC is set aside or amended. The FCJ may remit the case to the FPC for new proceedings and a new decision, in which the FPC is bound to the legal assessment that led to the judgment being set aside. However, the FCJ may decide itself, if this is expedient,⁵⁶ and it must decide if the case is ready for a final decision. In practice, the FCJ almost always decides the case finally and does not remit it to the FPC.

The judgment of the FCJ needs to be reasoned. Only to the extent that the FCJ considers alleged violations of procedural law not effective, a reasoning is not necessary.

The judgment also contains a decision on the costs of the proceedings. Moreover, the FCJ must set a value in dispute. With regard to the setting of the value in dispute and the costs, the considerations set out above in the context of the first-instance proceedings apply accordingly (cf. Section 5.4.1.2.3 with regard to the determination of the value in dispute). In appeal proceedings before the FCJ, the court fees and the attorneys’ fees, which both are calculated according to a statutory schedule of fees, are significantly higher than those for the first-instance proceedings.