德國高等法院民事庭要求德國專利法院要參考EPO與其他EPC會員國的專利相關決定 -- Germany Patent Court Required to Consider EPO decisions
原文: Patent court required to consider EPO decisions
德國高等法院民事裁定在相似的爭點上(包含專利發明的新穎性及進步性)，德國聯邦專利法院應參考EPO的專利決定與其他EPC會員國的專利相關決定。在此之前，德國法院皆不太願意去考慮由外國法庭所做出的決定。
Patent court required to consider EPO decisions
July 19 2010
Facts
Decision
Comment
The Supreme Court in Civil Matters has ruled that the Federal Patent Court is required to consider European Patent Office (EPO) decisions and decisions rendered in other member countries of the European Patent Convention if they pertain to similar issues, including whether an invention is novel and inventive. Hitherto, the German courts have appeared reluctant to consider decisions rendered by foreign courts.
Facts
The respondent was the registered owner of a utility model. The applicant held that the utility model was invalid and filed for a nullity suit at the Federal Patent Court. In its decision the court invalidated the utility model on the basis of a lack of inventiveness. The utility model was invalidated despite the fact that a parallel European patent, on which the utility model had been based, had not only been granted, but also upheld by the EPO upon opposition.
The respondent argued in his appeal to the Supreme Court that the Federal Patent Court had violated his constitutional right to be heard. He argued that the court had not considered the EPO decision and that the grounds of the Federal Patent Court's decision were incomplete since they lacked any reference to the EPO decision.
Decision
Although the Supreme Court did not ultimately overrule the Federal Patent Court, its decision contains some important findings regarding the consideration of decisions rendered by the EPO or by foreign courts.
The Supreme Court held that the lack of reference to the EPO decision in the grounds of the decision did not invalidate the decision. It stated that a decision is deemed to lack the necessary grounds only if an "independent means of attack or defence" is omitted (ie, an argument that would in itself establish, abolish, alter or negate a right). For this reason, the issue of whether an invention is novel and inventive must be addressed in a decision. However, the court explained that not every aspect considered by the court must be expressly mentioned in the grounds.
The court explained that the differing EPO decision did not constitute such an "independent means of defence", as it was merely an argument upon which the respondent based its claim that the invention was inventive. The court also found that the lack of reference to the EPO decision in the judgment did not violate the respondent's constitutional right to be heard by the court. The court stated that the courts are required to hear the parties' factual and legal allegations in order to consider whether they are relevant, and cannot base any decision on factors on which the parties did not have a chance to comment.
The court stated that it can be assumed in general that a court has considered the statements of the parties despite the fact that courts are not required to address every aspect in the grounds of the decision. The line is drawn in this respect where a court fails to address the main argument of a party in a matter that is of central importance to the case. In such cases it would be likely that the party's statement had not been given due consideration.
The court found that the Federal Patent Court was not required to address the EPO decision since the respondent had failed to submit a copy of the decision and to elucidate the grounds on which the decision had been based. Rather, the respondent had merely informed the court that the patent in question had been upheld by the EPO without further explanation.
Nevertheless, the court stressed the need to consider the grounds of previous EPO decisions when deciding on the validity of utility models or patents. The court stressed that although the EPO is not bound to decisions made by the national patent courts and the national courts are not bound by EPO decisions, it is in the interests of the harmonization of the respective patent regimes for the courts to consider decisions made in other jurisdictions.
In earlier cases the Supreme Court emphasized the importance of EPO decisions and held that they would need to be considered as expert opinions of considerable weight.(1) The importance of expert opinions has generally decreased in light of a recent Supreme Court ruling which held that the question of whether the state of the art has rendered an invention obvious is a question of law rather than of fact. However, the Supreme Court has now stressed the importance of EPO decisions in cases before the German courts, reasoning that such decisions address questions of law that are similar or identical.
Thus, in order to avoid divergent court decisions, to increase the predictability of legal decisions and to harmonize the jurisdiction in patent matters, it is necessary to consider decisions rendered by the EPO as well as by national patent courts in other member states. The court pointed out that divergent decisions may result if different documents regarding the state of the art are submitted in different proceedings, if such documents are considered differently or the rules on interpretation are applied in a different way.
Ultimately, the Supreme Court did not overrule the Federal Patent Court. While the Federal Patent Court did not address the EPO decision in its judgment, the Supreme Court did not attribute this failure to the court. Rather, it emphasized that the respondent had failed to explain the relevance of the EPO decision. Thus, the Federal Patent Court was not required to address the EPO decision.
Comment
This decision is remarkable. The Supreme Court could have limited itself to ruling that, in the case before it, the Federal Patent Court should have considered the EPO decision. Instead, the Supreme Court established as a rule that courts must consider EPO decisions. Furthermore, the court also held that the same would apply to decisions issued by the courts of other European Patent Convention member states.
Unfortunately, the effect of the decision is somewhat mitigated by the Supreme Court's holding that, although the courts are required to consider EPO decisions and those rendered in other European Patent Convention member states, the deviation of a national court from such decisions does not constitute grounds to appeal to the Supreme Court. From the perspective of harmonization, such a ruling might have been desirable.
