/ Created by Hans-Joachim Meyer

Submitting new grounds for revocation in opposition appeal proceedings permitted

C&F: “BGH decision is welcomed”

Düsseldorf, March 13, 2017 – Anyone who files an opposition against a German patent and subsequently wishes to appeal the decision upholding the patent, may in the appeal proceedings bring forward additional reasons for revocation which were not the subject of the contested decision. This was the ruling made by the Bundesgerichtshof (Federal Supreme Court – “BGH”) on November 8, 2016 (file number X ZB 1/16, “Ventileinrichtung”). In its ruling, the BGH concurrently confirmed a 1995 decision, where it was found that the Federal Patent Court itself is not authorized to consider and base its decision on new grounds for revocation submitted in opposition appeal proceedings that were not the subject of the opposition proceedings before the Patent Office. “The decision by the BGH is welcomed, as it provides clarity to the vested powers of the Federal Patent Court and the admissibility of submitting ​​new grounds for revocation in appeal proceedings,” says Hans-Joachim Meyer, patent attorney and partner at Cohausz & Florack.

The specific case concerned a patent for a valve device for air suspension systems in vehicles, against the granting of which a company had lodged an opposition. The patent had been upheld in its entirety in the first instance opposition proceedings before the Patent Office. Thereafter in appeal proceeeings, the opponent brought forward as further grounds for revocation the fact that the subject matter of the patent extended beyond the content of the originally filed application documents.

The current BGH decision differs from the case law of the European Patent Office (EPO), where an opponent as an appellant is generally prevented from introducing new grounds of opposition in appeal proceedings (G 10/91).