Polymerisierbare Zementmischung, Federal Court of Justice, Germany, 11 May 2010, Case no. X ZR 51/06
As the nullity action in the first instance was only based on one or more ground(s) set out in Art. 138 (1) EPC the inclusion of a further ground for nullity in the appeal represents an amendment to the claim within the meaning of the requirement of § 533 no. 1 Code of Civil Procedure, which is also applicable in patent nullity proceedings pursuant to § 99 (1) Patent Act.
This Federal Court of Justice decision states that in patent nullity proceedings under the old law (patent nullity claims filed with the Federal Patent Court prior to 01.10.2009) the inclusion of a new ground for nullity may as a rule be regarded as relevant if the new ground for nullity can become part of the oral hearing in the appeal. Hence the inclusion of a new ground for nullity would normally be permitted.
On the other hand it is doubtful whether or not this applies to patent nullity proceedings filed after 01.10.2009. Pursuant to the new requirements set out in §§ 116, 117 Patent Act an amendment to the claim may as a rule only be supported by facts which were already subject of the first instance. Given the above, the inclusion of a new ground for nullity under the new law may only then be permitted if all facts necessary to illustrate the new ground were already pleaded in detail in the first instance so that on this basis alone a decision can be taken on the new ground for nullity.
Read the decision (in German) here.
Head note: Jan Dombrowski