Mere Announcements are Not Enough - 7 W (pat) 81/14

The decision 7 W (pat) 81/14  relates to the request of an opponent to refund the appeal fee. The patentee had indicated to abandon the patent subject to the opposition by non-payment of the annuities and to not to derive any rights from the patent for the past.  The opposition division has then issued a decision to close the case and to consider the case as settled (Erledigung). The opponent filed an appeal and, in the course of the appeal procedure, the patent lapsed and the patentee waived (Verzicht) the patent for the future and the past.

The Bundespatengericht asserts that the decision suffers from a fundamental deficiency because the mere announcement to let the application lapse cannot be equated to a binding waiver such that the case had indeed not been settled when the decision was issued. The appeal fee was refunded.

How to claim your right despite of its being exlpicitly foreclosed by law?

In a recent post, I had discussed a notice issued by th 10th senate of the German Federal Patent Court (BPatG) according to which there may be an entitlement of a tird party to appeal a decision to grant provided that very exceptional circumstances are met.

This finding is rather surprising because the German Patent Act leaves no doubt that only the parties involved in the procedure in which the appealed decision was taken are entilted to appeal the latter.

Now, the full text of the decision has been published including a detailed line of reasoning.

While being so exceptional that the importance of this particular case constellation is probably very minute, I found it interesting that the line of reasoning emloyed may well be taken as a blueprint for other cases where no statutory basis for a claim may be found or - even more important - where the law explicitly forecloses the right your client desperately wants to enforce, as was the case here.

The BGH decision "Fischdosendeckel" cited in my previous post, the Supreme Court argued that the statutory foreclosure of 3rd parties from the appeal procedure as set out in §74 of the German Patent Act is the result of a balancing of interests between the interest in a completion of administrative proceedings within an adequate time and the encroachment of the intersts of the 3rd party, which, however, are at least partially preserved by the right to file third-party submissions.

The supremecourt then argues that in cases of grave contraventions of the basic principles of public procedures Jusitita's balance may swing to the other side so as to justify an exception to the written law.

The answer to the question in the title of this post is thus: Identify the balancing of interests on the basis of the foreclosure and prove that the interests being considered predominant as a rule are overbalanced by your interest in this particular case.

Broad Claims BPatG "Buprenophinpflaster"

The claim at issue mentioned a chemical composition comprising, besides some active substances, a "solvent". In all the embodiments, the solvent was such that it contained at least one acidic group and the technical teaching indicated that the acidic group has a function while giving no inducation how other suitable solvents could be found.

The Bundespatentgericht ruled that the claim was too broad because the invention was generalized beyond the contribution of the invention to the prior art. The disclosure is not sufficient in terms of practicability if the skilled person has to apply the priciple of trial and error for finding suitable chemicals out of a unmanageable quanity of possible candidates. For the full text (in German), click here.