Family Affairs - BGH X ZR 77/10 "Treppenlift"

Family Affairs - BGH X ZR 77/10 "Treppenlift"

Hitherto, the german judicial system had the reputation that it's first instance has the character of being closer to alternative dispute resolution (ADR) than to a real trial. Indeed, the possibilities to file furhter arguments, requests or evidence have been fairly generous as compared to e.g. those of our friends in good old England.

Indeed, the efforts made in the first instance to convice the judge have sometimes been fairly poor because the parties felt that it would be sufficient to get their stuff together when things are getting serious in the 2nd instance.

In an attempt to tighten up the procedure, the general procedural rules (ZPO-Zivilprozessordnung) has been amended as of 2002 and similar amendments have been introduced in §83 and §117 of the patent act (PatG) as of October 2009 for the nullity procedure. In a nutshell, arguments, requests and evidence is considered late if it could have been filed earlier.

Still, some of my colleagues are not yet very used to this and the case-law, in particular in patent matters, is not yet very detailed.

The decision “Treppenlift” BGH X ZR 77/10 is, as far as I know, one of the first decisions where the supreme court (BGH) has overruled the decision of the 2nd instance upper district court which considered a defence argument as being late-filed.

The case at issue had 2 defendants, one of which was a natural person A and the second was a a corporate body B, the manager C of which was married to A. A argued in the 2nd instance that the original inventor of the patent in suit was actually her husband C and that the invention was unlawfully usurpated by the plaintiff.

However, the right to raise the unlawful usurpation as a counterclaim is limited to the injured party C, who was, himself, not party of the infringement procedure and who had transferred the right to enforce the rei-vindication claim to A only after the completion of the 1st instance.

The upper district court found that, given the close relation between C and the defendants, this defence argument could have been filed earlier. After all, C had been personally attending to the procedure, although not as a party but only in his function as a representative of a party.

The BGH found that this reasoning was incorrect because there was no duty to C to transfer his rights at a given time and that A and B could not have argued with the unlawful usurpation prior to this transfer. As a consequence, the late-filing was due to the late completion of this transfer of rights rather than to any negligence of the parties.


In wonder if the denfence that late-filed material had been in the possession of a close relative will work for other cases as well.

Clarity is not at issue in Nullity after the EPO-limitation procedure

To the best of my knowledge, there has not been any case-law on the relation between the new EPO limitation procedure (Art. 105a and 105b EPC) and the nullity procedure.

The first decision in this regard has now been issued by the German Supreme Court (BGH, X ZR 72/08 "Kosmetisches Sonnenschutzmittel III).

There is a small catalogue of grounds for nullity of german patents, which is similar to the grounds for opposition in the EPC. Just as in the EPC, clarity does not count among these grounds.

However, if amendments are made during the nullity procedure in order to defend the patent in a limited form. the full examination including clarity is opened for theese amendments.

In the case at issue, the amendments were not made in the nullity procedure at the Federal German Patent Court (Bundespatentgericht) but in a co-pending limitation procedure before the EPO.

The BGH has now ruled that the claim as limited in the EPO-limitation procedure is to be considered as the valid patent claim and may not be examined for clarity because a pertinent ground for nullity is missing.

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.

Nullity - refund for expenses of accompanying attorney at law

There is a recent tendency questionning the refund of expenses of an accompanying attorney at law in a nullity procedure at the German Patent Court (Bundespatentgericht) by the underlying party. Nullity procedures in Germany are in most cases conducted by a patent attorney who ist accompanied by an attorney at law as a support for legal questions, in particular of more procedural nature.

The former (before 2005) used to grant a refund of the expenses due to this "double-representation" by the underlying party. In the last years, the Supreme Court (BGH) emphasized that the claim for this refund of expenses has to be examined on a case-by-case basis, wherein this examination has to remain cursory in order to account for the difficulties in predicting the legal problems which might arise during the procedure. In cases where legal difficulties are very unlikely, a further representative with higher legal qualification may not be necessary such that the costs therefore would not be refunded (see e.g. BPatG
GRUR 2008, 735).


In a recent decision, the 5th senate of the Bundespatentgericht has back-pedalled a little by ruling that an accompanying attorney-at-law is always adequate in cases where an infringement procedure is co-pending for headnote (in german) see here)