1. Proceedings on Appeal

73.

(1) A patent appeal shall lie from the decisions of the Examining Sections and Patent Divisions.

(2) A patent appeal shall be filed in writing with the Patent Office within one month after service of the decision. Copies of the appeal and of all written statements shall be attached for the other parties. The appeal and all written statements containing motions pertaining to the matter or the declaration of withdrawal of the appeal or of a motion shall be served ex officio upon the other parties; other documents shall be communicated informally to those parties, where service has not been ordered.

(3) If a patent appeal lies from a decision to reject an application or from a decision on the maintenance, revocation or limitation of a patent, a fee as prescribed by the schedule of fees shall be paid within the period allowed for filing a patent appeal; if the fee is not paid, the appeal shall be deemed not to have been filed.

(4) If the authority whose decision is contested considers the appeal to be well founded, it shall rectify its decision. It may order that the appeal fee be refunded. If the appeal is not allowed, it shall be remitted to the Patent Court without comment as to its merits before the expiration of one month.

(5) If the appellant is opposed by another party to the proceedings, the provisions of the first sentence of subsection (4) shall not be applicable.

74.

(1) A patent appeal may be lodged by the parties to the proceedings before the Patent Office.

(2) In the case of Sections 31(5) and 50(1) and (2), a patent appeal may also be lodged by the competent supreme federal authority.

75.

(1) A patent appeal shall have a staying effect.

(2) A patent appeal shall have no staying effect, however, when it lies from a decision of the Examining Section by which an order under Section 50(1) has been issued.

76.

The President of the Patent Office may, if he considers it appropriate to safeguard the public interest, make written statements in appeal proceedings before the Patent Court, be present at patent hearings and make representations therein. Written statements by the President of the Patent Office shall be communicated to the parties by the Patent Court.

77.

The Patent Court may, if it considers it appropriate on an issue of law of basic importance, give the President of the Patent Office the opportunity to intervene in appeal proceedings. The President of the Patent Office shall become a party on receipt of the notice of intervention.

78.

A patent hearing shall be held if

l. one of the parties so requests;
2. evidence is to be taken before the Patent Court (Section 88(1)); or
3. the Patent Court considers it appropriate.

79.

(1) A decision shall be given on a patent appeal.

(2) If a patent appeal is not admissible or not lodged in the form provided by law and within the prescribed period, it shall be dismissed as inadmissible. The decision may be given without a patent hearing.

(3) The Patent Court may reverse the contested decision without itself deciding the case on its merits if

1. the Patent Office has not yet decided the case on its merits;
2. the proceedings before the Patent Office suffer from a substantial defect;
3. new facts or evidence have become known which are essential to the decision.

The Patent Office shall base its decision on the legal judgment on which the reversal is based.

80.

(1) Where more than one person is party to the proceedings, the Patent Court may decide that the costs of the proceedings shall be borne in whole or in part by one of the parties if and to the extent that this is equitable. It may, in particular, also order that the costs incurred by the parties shall, to the extent that they were necessary for the appropriate protection of the rights involved, be refunded in whole or in part by one of the parties.

(2) Costs may be awarded against the President of the Patent Office only if he has made petitions after his intervention in the proceedings.

(3) The Patent Court may order that the appeal fee (Section 73(3)) be refunded.

(4) Subsections (1) to (3) shall also be applicable if, either in whole or in part, the appeal, the application or the opposition is withdrawn or if the patent is relinquished.

(5) In other respects, the provisions of the Code of Civil Procedure relating to the procedure for the assessment of costs and the execution of decisions regarding the assessment of costs shall apply mutatis mutandis.

2. Nullity and Compulsory Patent License Proceedings

81.

(1) Proceedings for a declaration of nullity of a patent or supplementary certificate of protection or for the grant or withdrawal of a compulsory patent license or for the adaptation of the remuneration determined by a judgment under a compulsory patent license shall be instituted by bringing legal action. The action shall be directed against the person recorded in the Register as patentee or against the holder of the compulsory patent license. An action against a supplementary certificate of protection may be consolidated with an action against the basic patent and may also be based on the fact that one of the grounds for nullity exists in respect of the basic patent (Section 22).

(2) An action for a declaration of nullity of a patent shall not be brought as long as opposition may still be filed or opposition proceedings are pending.

(3) In the case of usurpation, only the injured party shall be entitled to bring an action.

(4) An action shall be filed with the Patent Court in writing. Copies of the action and of all written statements shall be attached for the defendant. The action and all written statements shall be served ex officio on the defendant.

(5) An action shall designate the plaintiff, the defendant and the matter at issue and shall contain a specific motion. The facts and documentary evidence relied on shall be stated. If the action does not fully comply with these requirements, the presiding judge shall invite the plaintiff to file the necessary additional materials within a specified period.

(6) A fee as prescribed by the schedule of fees shall be paid when the action is filed; if the fee is not paid, the action shall be deemed not to have been filed.

(7) Plaintiffs who do not have their usual place of residence in a Member State of the European Union or in a Contracting State to the Agreement on the European Economic Area shall provide security, at the demand of the defendant, with respect to the costs of the procedure; Section 110(2)1 to 3 of the Code of Civil Procedure shall apply mutatis mutandis. The Patent Court shall determine, at its equitable discretion, the amount of the security and shall fix a time limit within which that amount shall be furnished. If the time limit is not observed, the action shall be deemed to have been withdrawn.

82.

(1) The Patent Court shall serve notice of the action on the defendant and invite him to reply thereto within one month.

(2) If the defendant fails to reply in due time, a decision complying with the plaintiff’s request may be rendered forthwith without a patent hearing and every factual allegation of the plaintiff may be assumed to be proved.

83.

(1) If the defendant files a contesting reply in due time, the Patent Court shall notify the plaintiff of such reply.

(2) The Patent Court shall render its decision on the basis of a patent hearing. With the consent of the parties, a decision may be rendered without a patent hearing.

84.

(1) The decision on an action shall be delivered in the form of a judgment. An interim decision on the admissibility of the action may be delivered in the form of an interlocutory judgment.

(2) In the judgment, the costs of the proceedings shall also be decided. The provisions of the Code of Civil Procedure concerning procedural costs shall apply mutatis mutandis insofar as equity does not require otherwise; the provisions of the Code of Civil Procedure relating to the procedure for the assessment of costs and execution of decisions regarding the assessment of costs shall apply mutatis mutandis. Section 99(2) shall remain unaffected.

85.

(1) In proceedings for the grant of a compulsory patent license, the plaintiff may, at his request, be allowed to exploit the invention by a provisional order if he satisfies the Court that the conditions referred to in Section 24(1) to (5) are complied with and that an immediate grant of permission is urgently required in the public interest.

(2) A fee as prescribed by the schedule of fees shall be paid with the request; if the fee is not paid, the request shall be deemed not to have been filed. The issue of a provisional order may be made conditional on the furnishing of security, by the person making the request, for the damage which the defendant may suffer.

(3) The Patent Court shall render its decision on the basis of a patent hearing. The provisions of the second sentence of Section 83(2) and of Section 84 shall be applicable mutatis mutandis.

(4) The effect of the provisional order shall cease with the withdrawal or refusal of the action for the grant of a compulsory patent license (Section 81); the decision as to costs may be amended if a party applies for amendment within one month after the withdrawal or after the refusal becomes final.

(5) If the issue of the provisional order proves to have been unjustified ab initio, the person making the request shall be required to compensate the defendant for the damage which he has suffered from the execution of the provisional order.

(6) The judgment granting the compulsory patent license may, on request, with or without security, be declared provisionally enforceable if such is in the public interest. If the judgment is reversed or altered, the person making the request shall be obliged to compensate the defendant for the damage which he has suffered through the enforcement.

3. Common Rules of Procedure

86.

(1) For the exclusion and challenge of members of the Court, Sections 41 to 44 and 47 to 49 of the Code of Civil Procedure shall be applicable mutatis mutandis.

(2) The following shall also be excluded from judicial office:

1. in proceedings on appeal, persons who have participated in the previous proceedings before the Patent Office;
2. in proceedings for declaration of nullity of a patent, persons who have participated in the proceedings before the Patent Office or Patent Court relating to the grant of the patent or relating to opposition.

(3) The decision on the challenge of a judge shall be rendered by the Chamber to which the person who is challenged belongs. If, as a result of the elimination of the member who has been challenged, the Chamber is unable to render a decision, a Chamber of Appeal of the Patent Court consisting of three legal members shall render the decision.

(4) The decision on the challenge of a registrar shall be rendered by the Chamber in whose jurisdiction the matter falls.

87.

(1) The Patent Court shall investigate ex officio the facts of the case. It shall not be bound by the factual statements and the offers of proof of the parties.

(2) The presiding judge or a member designated by him shall, before the patent hearing or, in the absence of a patent hearing, before the decision of the Patent Court, make all arrangements necessary for the matter to be dealt with, if possible, in one patent hearing or in one session. In other respects, Section 273(2), (3), first sentence, and (4), first sentence, of the Code of Civil Procedure shall be applicable mutatis mutandis.

88.

(1) The Patent Court shall take evidence at the patent hearing. In particular, it may make inspections on the spot, examine witnesses, experts and the parties and order the consultation of documents.

(2) In suitable cases, the Patent Court may, prior to the patent hearing, have evidence taken by one of its members as commissioned judge or, specifying particular questions of evidence, request another court to take such evidence.

(3) The parties shall be notified of all patent hearings in which evidence is to be taken and may attend such patent hearings. They may put relevant questions to witnesses and experts. If a question is objected to, the Patent Court shall decide.

89.

(1) As soon as the date for a patent hearing is fixed, the parties shall be summoned with at least two weeks’ notice. In urgent cases, the presiding judge may shorten this period.

(2) It shall be pointed out in the summons that if a party fails to appear, the case may be heard and decided in his absence.

90.

(1) The presiding judge shall open and conduct the patent hearing.

(2) After the case is called, the presiding judge or recording judge shall report on the essential contents of the files.

(3) Thereupon, the parties shall be given leave to speak in order to make and substantiate their motions.

91.

(1) The presiding judge shall discuss with the parties the questions of fact and questions of law involved in the case.

(2) The presiding judge shall, upon request, permit each member of the Chamber to ask questions. If a question is objected to, the Chamber shall decide.

(3) After discussing the case, the presiding judge shall declare the patent hearing closed. The Chamber may decide to reopen the patent hearing.

92.

(1) At the patent hearing, and whenever evidence is taken, a registrar of the Court shall be called to act as minute-writer. If, by order of the presiding judge, no minute-writer is called, one of the judges shall record the minutes.

(2) Minutes shall be taken of oral proceedings and of all taking of evidence. Sections 160 to 165 of the Code of Civil Procedure shall apply mutatis mutandis.

93.

(1) The Patent Court shall take its decisions on the basis of its own conclusions freely reached in the light of the results of the proceedings as a whole. The decision shall state the grounds which led the judges to form their conclusions.

(2) The decision may be based only on facts and the results of evidence on which the parties have had an opportunity to state their views.

(3) Where there has been a previous patent hearing, a judge not present at the last session of the patent hearing may participate in rendering the decision only if the parties consent.

94.

(1) Final decisions of the Patent Court shall, if a patent hearing has taken place, be rendered at the court session at which the patent hearing was concluded or at a session to be fixed forthwith. This deadline shall not exceed three weeks except when important reasons, in particular the volume and the difficulty of the case, so require. Final decisions shall be served ex officio on the parties. They may be served on the parties instead of being pronounced in court. If the Patent Court makes its decision without a patent hearing, pronouncement of the decision shall be replaced by service thereof on the parties.

(2) Final decisions of the Patent Court by which a motion is refused or a legal remedy is decided upon shall state the grounds upon which the decision is based.

95.

(1) Clerical errors, errors in calculation and similar obvious errors in the decision may at any time be corrected by the Patent Court.

(2) The correction may be decided without a previous patent hearing. The decision concerning the correction shall be recorded on the decision itself and on the copies thereof.

96.

(1) If the statement of facts as set out in the decision contains other mistakes or obscurities, correction may be requested within two weeks after service of the decision.

(2) The Patent Court shall decide on this matter without taking evidence. In such decisions, only judges who have taken part in rendering the decision whose correction is requested shall participate. The decision concerning the correction shall be recorded on the decision itself and the copies thereof.

97.

(1) A party may, at any stage of the proceedings, be represented before the Patent Court by an authorized representative. A decision may be made ordering the appointment of a representative. The provisions of Section 25 shall remain unaffected.

(2) The power of attorney shall be filed in writing at the Court with the documents of the case. It may be filed later; the Patent Court may set a time limit for this purpose.

(3) The lack of a power of attorney may be raised at any stage of the proceedings. The Patent Court shall ex officio consider the lack of a power of attorney if an attorney-at-law or patent attorney does not appear as the representative.

98.

In proceedings before the Patent Court, the Law on Court Costs [Gerichtskostengesetz] shall apply mutatis mutandis with respect to expenses.

99.

(1) In the absence of provisions in this Law concerning proceedings before the Patent Court, the Judiciary Law and the Code of Civil Procedure shall apply mutatis mutandis unless the special nature of the proceedings before the Patent Court does not so permit.

(2) Appeals from decisions of the Patent Court shall lie only to the extent permitted under this Law.

(3) For the grant to other persons of permission to inspect the files of the case, Section 31 shall apply mutatis mutandis. The request for permission shall be decided by the Patent Court. Permission to inspect the files of proceedings for obtaining a declaration of nullity of a patent shall not be granted if and to the extent that the patentee proves an interest to the contrary worthy of protection.

(4) The first sentence of Section 227(3) of the Code of Civil Procedure shall not apply.