Tuesday, 21 June 2011

Right to Oral Proceedings? Not Always!

According to §46(1) of of the German Patent Act, the Examining Division of the German PTO (DPMA) has to grant a request for oral proceedings provided that the latter is relevant to the case ("sachdienlich").

It is well-established case law that this relevance/pertinence is given, as a rule, for a first hearing, and a non-compliance with this requirement is generally considered a violation of the applicant's right to be heard. I have not learned of any exception to this rule - until now.

The 20th senate of the Bundespatentgericht had to decide on an appeal against a decision to reject an application in 20 W (pat) 94/05. The examining division had rejected the patent without scheduling oral proceedings despite of the applicant's auxiliary request to be heard orally.

The examining division had objected against the unity of multiple independent claims and had won the impression that the applicant would not be willing to react on these objections during oral proceedings. This impression was based on the resolute position the applicant took during the procedure in writing. As a consequence, the oral proceedings were considered not relevant to the case.

Surprisingly, the 20th senate has confirmed this ruling. This will surely increase the legal incertainty in the german application procedure. It is the primary task of patent attorneys to represent the cases of their client in a convincing, resolute and determined way. Shall we now express our doubts in our own arguments in the written submissions in order to avoid a rejection without oral proceedings?

The right to oral proceedings is based on the fact that an oral discussion has a nature different from a procedure in writing and I think that not only the applicant has to account for the possibility that the examining division changes its mind during the discussion but the examining divion also has to account for the possibility that it will be able to convince the applicant - no matter how determined the applicant appears in writing. Depriving the applicant of his right to oral proceedings is clearly a violation of the right to be heard and I hope that this decision will remain isolated.

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