The Federal Patent Court
Tasks | Organisation | Prospects
Four things belong to a judge:
to hear courteously, to answer wisely,
to consider soberly, and to decide impartially.
SOCRATES
Foreword
The Federal Patent Court celebrated its 50th anniversary in 2011 and is thus a comparatively young federal court. It
currently has approximately 120 judges who sit on 29 panels (called boards), making it one of the largest of the
federal courts. In organisational terms the Federal Patent Court is part of the field of responsibility of the Federal
Ministry of Justice.
The Federal Patent Court is one of the highest federal courts with jurisdiction over cases involving the granting,
denial or withdrawal of industrial property rights.
One special feature of the Federal Patent Court is that it not only has lawyers but also so-called ‚technical‘ judges
sitting on its boards with jurisdiction over technical property rights. These have degrees in a technical subject or in
one of the natural sciences and, as well as having gained professional experience in their specialist field, have legal
expertise in the field of patent law. Since they are experts in one particular technical field, the Federal Patent Court
generally has no need to call in external experts. That, firstly, leads to proceedings being cost-effective and swift.
Secondly, it is the cooperation between judges with a legal and judges with a technical background that accounts
for the special quality of the decisions rendered by the Federal Patent Court.
This information brochure describes the tasks of the Federal Patent Court and how these are performed. However,
the tasks of the Federal Patent Court will change on account of the increasing technical advances, which a court
dealing with industrial property rights cannot and should not ignore. For that reason this brochure also outlines
the ‘Electronic Court’ and ‘Administrative File’ projects. The Federal Patent Court is one of the first federal courts to
keep its administrative files electronically. Though the court files are still mainly kept in paper version, the electronic
filing gains more and more importance. The changeover, in particular concerning the previous proceedings, is quite
personnel and cost-intensive. The introduction of two ‘Electronic Courtrooms’ has already enabled our judges to
have access from there to their personal work centre and, thus, to electronic documents. Also the parties have the
possibility to exchange information with the court electronically during the oral proceedings. However, the technique does not replace but can only support the oral proceedings.
The judges and all the non-judicial staff at the Federal Patent Court welcome this new challenge and will do all they
can to make decisions efficiently and of high quality also in the future.
Beate Schmidt
President of the Federal Patent Court
1
Table of Contents
Administration of Justice
4
Tasks and Status
4
Judges
6
Presidium and Allocation Procedure
7
Composition of the Boards
8
Statistics of Case Load
14
Legal Remedies
19
Procedural Principles
Court Administration
15
22
3
Administration of Justice
Tasks and Status
The FPC was founded on July 1, 1961
as an independent,
autonomous federal court.
The FPC as a special court for
decisions affecting the existence of
an industrial property right
The Federal Patent Court is a higher federal court. It was founded on 1 July 1961.
Until its establishment, the decisions of the examining sections and of the departments of the German Patent Office concerning the registration or the existence
of industrial property rights were solely subject to re-examination by boards of
appeal which, from an organisational point of view, were part of the Patent Office
and whose members were civil servants. The opinion was held at the time that no
legal remedies were available against these decisions. With the entry into force of
the Basic Law for the Federal Republic of Germany that opinion was no longer tenable and the status of the boards of appeal needed to be clarified. Article 19 para. 4
first sentence of the Basic Law guarantees that anyone whose rights have been
violated by a public authority may have recourse to the courts. On 13 June 1959
the Federal Administrative Court issued a judgment on an administrative action
referring to this principle. The Court ruled that the German Patent Office was not
a court within the meaning of the law; the decisions of its boards of appeal were
administrative acts which could be contested before the Administrative Court. Following an Amendment of the Basic Law, the Federal Patent Court was established
as an independent, autonomous federal court with effect from 1 July 1961. Like the
German Patent and Trade Mark Office, the Federal Patent Court is located in Munich. It is within the remit of the Federal Ministry of Justice.
The Federal Patent Court – as a special court – has jurisdiction over decisions affecting the existence of an industrial property right. It thus rules on whether to
grant a property right (patent, trade mark, utility model, topography, design, plant
variety right) or to refuse to register a property right. The Federal Patent Court may
also, based on an appeal or on application, withdraw a previously granted property
right by revocation or cancellation.
It decides in the first instance on actions for the nullification of a registered patent. Nullity proceedings are independent proceedings for the cancellation of a
valid German patent or supplementary protection certificate, or a patent or supplementary protection certificate granted with validity for the Federal Republic of
Germany. They are separate from the patent granting and opposition proceedings.
The objective of such proceedings is to cancel the effect of the official act which
granted the patent and, as a matter of principle, can be instituted by any person
and at any time. Jurisdiction over nullity proceedings lies in the first instance with
the Federal Patent Court and in the second instance (Berufung – appeal on points
of fact and law) with the Federal Court of Justice. The constitutional basis for this
can be found in Article 96 (1) of the Basic Law.
As a court of judicial review, the Federal Patent Court has jurisdiction to rule in appeals against the decisions of the German Patent and Trademark Office on patents,
trademarks, utility models and designs, as well as against decisions by the appeal
boards of the Federal Plant Variety Office.
4
Further, the Federal Patent Court is competent to grant or withdraw a compulsory
licence and to determine the amount of the licence fee for compulsory licences
although such procedures do not play a major role in practice.
Actions brought on account of the infringement of industrial property rights are
dealt with by the civil courts of general jurisdiction. However, in these infringement suits the civil courts may not challenge the validity of the industrial property
rights in dispute, insofar as the conditions for granting protection have been examined in the proceedings for the granting of the right. Thus, for instance, in a patent
suit the civil court is not authorised to call the patent into question. Lawmakers in
Germany have so far not made any use of the possibility under Article 96 (1) of the
Basic Law of granting jurisdiction over infringement proceedings to the Federal
Patent Court as well.
F E D E R A L P AT E N T C O U R T


ACTIONS
APPEALS
1st Instance
(Judicial Examination of the Administrative Decisions)


to declare the nullity of
to grant or withdraw
• national patents
• compulsory licences and
determine the amount
of the licence fee
• European patents
effective in Germany
• Supplementary protection certificates
• regarding the
adjustment of fees
determined for a
compulsory licence
by judicial decision

against decisions by the sections and departments of
the German Patent and Trade Mark Office regarding
• patents
• trade marks
• utility models
• topographies
• designs
against decisions by the boards of appeal at the
Federal Office of Plant Varieties
Overview of the Jurisdiction of the FPC
5
Judges
Substantive and personal
independence of the judges
The Federal Patent Court currently employs approximately 120 judges,1 around one
third of whom are women. In accordance with the Basic Law, the Courts Constitution Act and the German Judiciary Act, the judges are independent and bound
only by the law. Accordingly, they are not bound in their decision-making by any
instructions or recommendations (substantive independence). Also, they may not
be put at a disadvantage on account of the content of their decisions, which is
why they cannot, as a matter of principle, be removed from office and may not be
transferred without their consent (personal independence). They are only subject
to disciplinary supervision to the extent that their independence is not compromised thereby.
The Federal Patent Court does not employ only lawyers as professional judges.
More than half of the judiciary at the Federal Patent Court are scientists or technicians and thus ‘technically’ skilled members of the court.
The legally qualified members of the boards must be qualified to exercise the
functions of a judge in accordance with the Judiciary Act, i. e. they must have completed the generally prescribed course of studies and training.2 Furthermore, they
are only appointed after they have qualified for this prominent office after working
for many years in the profession, perhaps in another branch of jurisdiction or working as an examiner at the Patent Office.
The technically qualified members of the boards, after completing a degree in one
of the natural sciences or a technical subject at a German university, have passed
a state or academic examination and have gained many years of practical professional experience and the necessary legal expertise, particularly in the field of patent law, which they generally acquired while working as a technical examiner at
the Patent Office. Like the legally qualified members of the Federal Patent Court,
they have the status of professional judges appointed for life and have all the
rights and duties of a professional judge. They are, therefore, not merely technical
experts nor are they only lay judges like those involved in criminal jurisdiction, in
trade law (trade judges), labour law, administrative law, financial law or social law
proceedings.
On account of their status as professional judges appointed for life, the technically
qualified judges are unique in the German judiciary. The technical members of the
Federal Patent Court have a particular expertise in one specialist technical field
and are used in cases where a decision needs to be taken regarding a property right
in their technical specialism.
6
1Section 65 (3) Patent Act; the associate judges are appointed by the Federal Minister of
Justice, BGBl. 1999, 713; 1972 I, 288.
2 Section 65 (2) second sentence Patent Act.
Presidium and allocation procedure
Two fundamental principles of German law govern the question of which judge
has jurisdiction over which cases.
The first principle is that of a person’s constitutionally guaranteed ‘lawful judge’,3
which provides that nobody may be removed from the jurisdiction of the judge
determined for him by law. This means that the determination of which court and
which judge exercise jurisdiction must be made before legal disputes arrive at the
court. This is ensured in a number of ways, inlcuding by means of an annual allocation plan4 to determine which pending actions and appeals will be allocated
to which board, how cases are to be distributed among the judges, and how the
judges are to be allocated to the boards.
The allocation plan determines
the allocation of the judges to
the individual boards as well as
their responsibilities.
The allocation plan, which is always issued in advance for a period of twelve
months, and which can only be amended pursuant to legally specified criteria, is
publicly available on the website of the Federal Patent Court (www.bundespatentgericht.de).
Secondly, one of the other principles of German law specifies that the aforementioned tasks, in particular that of deciding on the allocation plan, are to be performed not by the President of the court or the presiding judge of an adjudicating
body, but rather by the Presidium. The Presidium is the central organ of judicial
self-administration, which makes the decisions falling within its mandate independently and without being subject to the instructions of another authority. The
Presidium of the Federal Patent Court consists of ten of the Court’s judges (including at least one legally qualified member),5 who are each elected for a period of
four years, and the President, who is the presidium’s legal chair.
3
4
5
Art. 101 (1) second sentence Basic Law, Section 16 Judicature Act.
Section 68 Patent Act, Section 21e Judicature Act.
Section 68 (1) Patent Act, Section 21a ff. Judicature Act.
The Presidium as the
central organ of judicial
self-administration
7
Composition of the boards
Tasks of the individual
boards of the FPC and their
­correspond­ing registry offices
In order to define the tasks of the individual boards, taking into account the principle of the lawful judge, the members of each board must also jointly determine
at the start of each year the rules according to which they are to be involved in the
proceedings (board-internal allocation of cases).
The Federal Patent Court currently has 29 panels (boards) issuing judicial decisions. These boards have varying numbers of judges (members) with various backgrounds, depending on their jurisdiction. The Federal Patent Court currently comprises five nullity boards, one juridical board of appeal (being a nullity board at the
same time), 13 technical boards of appeal, eight boards of appeal for trade marks,
one board of appeal for utility models and one board of appeal in plant variety
cases.
Each board is assigned its own registry. The registry is responsible for registering
incoming proceedings and administers the files. It is also responsible for issuing
summonses, serving documents, establishing the record and drawing up decisions.
The nullity boards rule on actions for the declaration of nullity of a patent or of
a supplementary protection certificate and on actions for the granting or revocation of a compulsory licence – for patents issued both by the German Patent
8
Office and by the European Patent Office for the territory of Germany. The nullity boards sit with five judges, whereby the presiding judge must be a lawyer.
The nullity boards have one other legally trained member and three technically
trained members whose special expertise is in the technical field at issue in each
respective case.
Associate judges
1 legally trained member
1 technically trained member
Presiding judge
legally trained
member
Associate judges
2 technically trained
members
Nullity Board
Within the framework of the project
„Electronic Court File“, the FPC has
equipped two court rooms as well as two
consultation rooms with innovative IT
infrastructure – left hand the 20th board.
9
The juridical board of appeal sits with three legally trained members and rules
on appeals against decisions by the German Patent and Trade Mark Office in proceedings under the Trade Mark Act, concerning requests from the Patent Office
to determine administrative and coercive measures against witnesses or experts,
concerning challenges against judges, contesting the election of members of the
Presidium, and concerning appeals against the decisions of the German Patent
and Trade Mark Office regarding the determination of costs
Associate judge
legally trained
member
Associate judge
1 legally trained
member
Ü
Ü
1 legally trained
member
Presiding judge
Juridical Board of Appeal
When sitting with four judges,
tied votes are possible.
In that case the presiding judge
has the deciding vote.
The technical boards of appeal rule on appeals against decisions by the examining sections and the patent departments of the German Patent and
Trade Mark Office where they concern the rejection of a patent application,
the granting, the upholding, the revocation or the restriction of a patent in
their specialist field.6 The technical boards of appeal sit with four judges. The
presiding judge and two associate judges are technically trained members;
the third associate judge is a legally trained member. Sitting with four judges
means tied votes are possible, and so the law stipulates that in such cases the
presiding judge will have the deciding vote.7
Associate judge
1 legally trained
member
Presiding judge
technically trained
member
Associate judges
2 technically trained
members
Technical Board of Appeal
10
6
7
Section 66 (1) No. 1, Section 73 ff. Patent Act.
Section 70 (2) second clause Patent Act.
The boards of appeal for trade marks rule on appeals against decisions by the
trade mark offices and departments of the German Patent and Trade Mark Office.8
Since in these cases the focus is on legal not technical issues, these boards sit with
three legally trained judges, including the presiding judge.
Associate judge
1 legally trained
member
Presiding judge
legally trained
member
Associate judge
1 legally trained
member
Ü
Ü
Board of Appeal for Trade Marks
The board of appeal for utility models is responsible for ruling on cases involving
utility model and topography protection.9 This board sits with three judges with a
presiding judge, who must be a legally trained member. The associate judges are
legally or technically trained members, depending on whether the case refers to
technical or legal issues.
Dependent on the case,
the associate judges are legally or
technically trained members.
Rejection of the application:
Rejection of the application:
1 legally trained member
1 technically trained member
Associate judge
Associate judge
Cancellation:
Cancellation:
Associate judge
1 technically trained member
Other:
Associate judge
1 legally trained member
Associate judge
Presiding judge
legally trained member
1 technically trained member
Other:
Associate judge
1 legally trained member
Board of Appeal for Utility Models
8
9
Section 66 (1), Section 67 (1) Trade Mark Act.
Section 18 (3) Utility Models Act, Section 4 (4) third sentence Semiconductor Protection.
Act in conjunction with Section 18 Utility Models Act.
11
The board of appeal in
plant variety cases generally
sits with four judges
The board of appeal in plant variety cases is responsible for ruling on appeals
against decisions by the boards of appeal at the Federal Office for Plant Varieties. It
generally sits with four judges: two technically and two legally trained members.10
Its presiding judge is a lawyer. Sitting with four judges means tied votes are possible, and so the law stipulates that in such cases the presiding judge will have the
deciding vote.11 When asked to rule on appeals against decisions by the Federal Office for Plant Varieties concerning changes to the variety denomination in accordance with Section 30 Plant Variety Protection Act, the board sits with three legally
trained members.
Associate judges
2 technically trained
members
Presiding judge
legally trained
member
Associate judge
1 legally trained
member
Board of Appeal in Plant Variety Cases
12
10 Section 34 (5) Plant Variety Protection Act.
11 Section 36 Plant Variety Protection Act in conjunction with Section 70 (2) second clause
Patent Act.
13
Statistics of Case Load
Nullity and Trade Mark Appeal Proceedings from 2005 to 2012
Nullity Proceedings 2005 to 2012
received
nullified (also partly) 
dismissed 
withdrawn 
settled 
350
250
302
297
300
275
225
254
234
221
227
200
150
129
114
100
0
received 
withdrawn 
settled 
83
66
50
93
20
84
64
24
6
2005
95 101
19
11
2006
19
9
2007
87
79
26
17
2008
99
83
29
14
2009
22
10
2010
119
97
92
20
5
2011
7
Extrapolation
2012
Trade Mark Appeal Proceedings 2005 to 2012
1600
1491
1462
1400
1200
1142 1121
1224
998
1000
1401
1303
901
1064
1039
856 824
800
937
748
841
701
539
600
648
636
527
623
486
584
400
200
0
14
2005
2006
2007
2008
2009
2010
2011
Extrapolation
2012
Procedural Principles
Proceedings before the Federal Patent Court are always based on the provisions
of the Patent Act, the Utility Model Act, the Semiconductor Protection Act, the Designs Act, the Trade Mark Act and the Plant Varieties Act.12 The provisions of the
Courts Constitution Act and the Code of Civil Procedure are also applicable where
relevant, although only when the specifics of the patent law proceedings do not
provide otherwise.13 Only the most important aspects of these proceedings will
thus be touched on in the following.
Principle of Decisions Based on an Application
Regulations and specifics
of patent proceedings
Proceedings before the Federal Patent Court are not initiated ex officio, but rather
only on the filing of the relevant application by one of the parties involved (principle of decisions based on an application). The parties may also terminate proceedings by withdrawing their application (principle of disposal). The only exception
to this is the withdrawal of opposition, which only ends the participation in the
proceedings of the person who filed the opposition, and not the opposition proceedings themselves.14 Further, the application determines the subject-matter of
the proceedings. Pending proceedings are always conducted ex officio.
Principle of Investigation
The principle of investigation applies to proceedings before the Federal Patent
Court. That means that the Court is not as a matter of course limited to taking
into consideration the facts as submitted by the parties have (so-called principle
of the production of facts as, for instance, applies in civil law proceedings). Rather,
the Court must investigate the facts ex officio within the framework of the applications submitted; it is not bound by the submissions and applications for the hearing of evidence made by the parties.15 However, the parties are required to assist in
clarifying the subject-matter by making full and truthful statements regarding the
facts and circumstances.16
12
13
14
15
16
Sections 73 ff., 81 ff. Patent Act, Section 66 ff. Trade Mark Act, Section 18 Utility Models Act,
esp. Section 18 (3) in conjunction with Sections 73 ff. Patent Act, Section 4 (4) third
sentence Semiconductor Protection Act in conjunction with Section 18 Utility Models Act,
Section 23 (2) Design Act, Sections 34, 36 Plant Variety Protection Act.
Section 99 (1) Patent Act, Section 82 (1) first sentence Trade Mark Act.
Section 61 (1) second sentence Patent Act.
Section 87 (1) Patent Act, Section 18 (2) Utility Models Act, Section 4 (4) third sentence
Semiconductor Protection Act, Section 23 (2) Design Act, Section 73 (1) Trade Mark Act.
Section 124 Patent Act.
15
Representation by a Lawyer not Mandatory
The parties may be represented before the Federal Patent Court by a lawyer as their
legal representative.17 There is no statutory requirement that the parties must be
represented by a lawyer. Where certain conditions are met other natural or legal
persons are also authorised to take the place of a legal representative.18 Further,
it is possible to appoint what is known as a patent assessor as one‘s legal representative. Only those parties who have no place of residence or no branch office in
Germany must appoint a German patent lawyer or lawyer as their representative
in the legal proceedings (so-called domestic representative).19 This person may also
be a lawyer or patent lawyer from an EU Member State or one of the Contracting
States to the Agreement on the European Economic Area.
Procedure
Course of proceedings
before the FPC
Actions and appeals filed with the Federal Patent Court are submitted to the relevant board after they have been assigned a file number. Once all the parties have
had the opportunity to make submissions, the member of the Court who has been
designated as the reporting judge in line with the board-internal rules of procedure then draws up a written opinion which is passed on to the other members of
the board for comment. After studying the files, these members then make their
submissions. Thereafter, the presiding judge sets a date for consultations or for
an oral hearing. As a rule, before the oral hearing in nullity proceedings the board
issues a written qualified notification in accordance with Section 83 Patent Act. In
cases where an oral hearing is held, all the parties or their representatives are given
the opportunity to present their points of view in detail. Then the board discusses
with the parties all those issues relevant to a decision. The parties often modify
their applications during these discussions in order to avoid perhaps losing the
protected right altogether or in order to restrict the protected right so as to retain
it to a limited degree. After the oral hearing has been concluded the board reaches
its decision in secret and then pronounces its decision directly thereafter or in a
separate hearing. Instead of being pronounced during an oral hearing or on a separate date the decision can also be served on the parties in writing. In any event, the
board must provide written grounds for its decision, which is served on the parties
after being signed by all the members of the board.
The boards of appeal issue decisions.20 The nullity boards issue judgments.21
17 Section 97 (1) Patent Act, Section 81 (1) Trade Mark Act.
18Section 97 (2) – (4) Patent Act, Section 81 (2) – (4) Trade Mark Act – Sections 155, 156, 177,
178, 182 Ordinance on Patent Lawyers.
19 Section 25 (1), (2) Patent Act, Section 96 (1), (2) Trade Mark Act, Section 28 (1), (2)
Utility Models Act, Section 58 (1), (2) Designs Act.
20 Section 79 (1) Patent Act, Section 70 (1) Trade Mark Act.
21 Section 84 (1) first sentence Patent Act.
16
Involvement of the President of the German Patent
and Trade Mark Office
In legal proceedings before an administrative court the public authority issuing
the contested administrative act is one of the parties to the appeal proceedings. In
contrast, the German Patent and Trade Mark Office is not automatically involved in
appeal proceedings relating to its decisions. However, the President of the German
Patent and Trade Mark Office has the possibility, when he deems this to be appropriate and in the public interest, to make written submissions to the Federal Patent
Court in appeal proceedings, to attend hearings and to make statements during
hearings.22 The President of the Federal Office for Plant Varieties may also join the
proceedings at any time.23 If the President follows this suggestion, he thereby acquires the full rights of a party to the proceedings, which means that he may also
file an appeal on points of law against a decision.24
The president of the German
Patent and Trade Mark Office
with full rights to the proceed­ings
Oral Hearing
The nullity boards of the Federal Patent Court always render their judgments following an oral hearing. A decision may be handed down without an oral hearing if
the defendant does not make submissions on the action before a stipulated deadline.25 Where the defendant contests the nullity action in good time, an oral hearing must be held, unless the parties waive the right to a hearing.26
The boards of appeal at the Federal Patent Court always render their decisions
without an oral hearing. An oral hearing will, however, take place if
- one of the parties so requests,
- evidence is to be taken, or
- the Court deems the oral hearing to be pertinent.27
In the majority of cases the boards of appeal also render their decisions following
an oral hearing because the parties submit a relevant application or because the
board considers the oral hearing expedient to clarify the issues.
22
23 24
25
26
27
Section 77 Patent Act, Section 68 (2) Trade Mark Act.
Section 34 (4) Plant Variety Protection Act.
Section 77 in conjunction with Section 101 (1) Patent Act, Section 68 (2) in conjunction
with Section 84 (1) Trade Mark Act.
Section 82 (3) second sentence Patent Act.
Section 82 (2) Patent Act.
Section 78 Patent Act, Section 69 Trade Mark Act, Section 18 (2) Utility Models Act,
Section 4 (4) third sentence Semiconductor Protection Act, Section 23 (2) Designs Act,
Section 36 Plant Variety Protection Act.
17
Nullity Proceedings
A nullity action before the FPC
is often the consequence
of patent infringement proceed­
ings before a regional court.
An action for the declaration of a patent’s nullity is usually the result of infringement proceedings before the Regional Court (Landgericht). The party sued as infringer by the patent holder cannot challenge the existence of the patent before
the civil courts. The objection that the patent is invalid can be considered in civil
proceedings only following a successful action before the Federal Patent Court. If
such action is pending and there are any doubts as to the existence of the patent, it
lies within the duty-bound discretion of the civil court to await the final and binding decision in the nullity proceedings before issuing its own decision.
Filing an action for a declaration of nullity requires that no further opposition can
be filed against the patent and that no opposition proceedings are still pending.28
Opposition proceedings thus have priority over nullity proceedings, although the
latter may directly follow the former and can be filed between the same parties.
Nullity proceedings
come closest to civil actions.
Of all the proceedings before the Patent Court, nullity proceedings come closest to
civil actions. They are instituted after an action is filed with the Federal Patent Court
and are ruled on by judgment.29 The complaint is served on the defendant, who is
requested to comment within one month. Where the defendant does not comply
with this request, a decision may be taken on the complaint immediately without
an oral hearing. Where conclusive facts are submitted, each fact put forward by the
plaintiff may be deemed to have been proven.30 This rule is similar to that applied in
default proceedings before the civil courts. Where opposition is raised in good time
– and this is generally the case – the Court clarifies all the facts of the case and then, as
a rule, renders its (preliminary) assessment of the action’s prospects of success in the
form of a qualified notification (interim order).31 The interim order frequently sounds
the bell for a second round of challenge and defence between the parties, who – depending on the opinion that the board has already expressed – will attempt to influence the outcome of the litigation to their advantage by submitting new information
on the state of the art or by making further auxiliary motions.
Where the action is dismissed, the decision affects only the two parties to the
dispute. However, the declaration of whole or partial nullity cancels the patent
or restricts it with retrospective effect and with effect for all and against all. The
declaration of nullity or its restriction is recorded in the Patent Register and an announcement to that effect made in the Patent Gazette.
18
28
29
30
31
Section 81 (2) Patent Act.
Section 81 (1), Section 84 Patent Act.
Section 82 Patent Act.
Section 83 Patent Act.
Legal remedies
Depending on the underlying proceedings, either an appeal on points of fact and
law (Berufung) or an appeal on points of law against a decision (Rechtsbeschwerde) may be lodged against the judgments and orders issued by the Federal Patent
Court. The appeal instance is always the Federal Court of Justice. Because the Federal Court of Justice is the final instance in infringement disputes, the uniformity
of rulings is guaranteed.
Appeal on Points of Fact and Law (Berufung)
An appeal on points of fact and law may be filed with the Federal Court of Justice
against the judgments rendered by the nullity boards at the Federal Patent Court.32
No special leave to appeal is required. The Federal Court of Justice sits as a trial
court in the appeal proceedings, i. e. it must review the appealed judgment not
only as to the points of law but also as to the points of facts. It must therefore
– where necessary – also take evidence. Since the Federal Court of Justice does not
have any technically qualified members, it generally draws on the services of external experts.
Appeals on Points of Fact and Law 2005 to 2012
85
90
78
80
70
61
61
63
62
58
60
50
43
40
30
20
10
0
2005
32 Section 110 Patent Act.
2006
2007
2008
2009
2010
2011
Extrapolation
2012
19
Appeal on Points of Law against Decisions (Rechtsbeschwerde)
Appeal on points of law against
decisions at the FPC by the FCJ
An appeal on points of law may be filed with the Federal Court of Justice against
the decisions of the appeal boards at the Federal Patent Court.33 The legal remedy
of an appeal on points of law against a decision is comparable to an appeal on
points of law against a judgment (Revision) and, in contrast to an appeal on points
of fact and law in the case of nullity judgments, only leads to a review of the contested decision on points of law. The Federal Court of Justice is, however, bound by
the finding of facts by the Federal Patent Court.
The appeal on points of law is only admissible when certain conditions are met,
namely: Where the Federal Patent Court has explicitly admitted the appeal in its
decision. The appeal on points of law is admissible
-where the legal issue on which the ruling is based is of fundamental significance, or
-where the development of the law or the uniformity of the case law necessitate a decision by the Federal Court of Justice.34
Without explicit authorisation (no leave for an appeal on points of law required),
where the appellant complains of a serious procedural error as explicitly referred to
by law, for example that the Court was not properly constituted, one of the parties
was denied due process of law or no grounds were furnished in the decision
Appeals on Points of Law against a Decision to FCJ 2005 to 2012
50
admitted 
45
appealed 
40
appealed without admission 
46
36
35
35
30
29
26
31
28
25
22
24
21
19
20
16 16
15
11
18
16
11
11
10
14
11
8
8
2010
2011
13
9
5
0
20
2005
2006
2007
2008
2009
33 Section 100 Patent Act, Section 83 Trade Mark Act.
34 Section 100 (2) Patent Act, Section 83 (2) Trade Mark Act.
Extrapolation
2012
Jurisdiction of the Federal Court of Justice
The jurisdiction of the panels at the Federal Court of Justice is not dependent on
the type of legal remedy (appeal on points of fact and law, appeal on points of law
against a decision or appeal on points of law against a judgment), but rather on
the legal area affected. Thus, the 1st Civil Panel has jurisdiction over all legal disputes concerning trade marks and utility models, while the 10th Civil Panel deals
with all proceedings regarding patents, utility models, topographies and plant varieties. This prevents the law being applied differently in different instances and
guarantees the uniformity of the case law.
FEDERAL COU RT OF J USTIC E



Appeal on points of fact and law
(Berufung)
Appeal on points of law
against a decision (Rechtsbeschwerde)
Appeal on points of law
against a judgment (Revision)
FEDERAL PATENT COURT


Nullity action
HIGHER REGIONAL COURT

Appeal
German Patent and
Trade Mark Office

Appeal on points of fact and law
Federal Office
for Plant Varieties
REGIONAL COURT
21
Court Administration
The court administration comprises six divisions, each headed by a judge. The other
members of the division are civil servants and public service employees. The Federal Patent Court currently employs 110 non-judicial staff. The Court also trains five
young people each year.
COURT ADMINISTRATION
Division 1
Division 2
Division 3
Division 4
Division 5
Division 6
HR ( judicial staff)
Budget
Organisation
Information
technology
Press
spokesperson
Registry
Training and
business trips
HR (non-judicial
staff), salaries,
remuneration
Legal department
Central
tendering office
Patent lawyer
matters
22
Basic IT issues
(IT planning and
Ancillary s­ ervices, development,
(Advanced)
IT operation)
­training
Public relations
Business trips
non-judicial staff
Information
services
International
affairs
Internal service
E-Justice
‚E-Justice’ went online in 2003 at the Federal Patent Court. It enables legal dealings with external users to be carried out online via an electronic court mailbox. In
accordance with the legal framework,35 submissions can be made electronically in
all patent, trade mark, designs and utility model proceedings ([email protected]).
The Federal Patent Court has been gradually expanding its e-justice service since
2006 by:
- Developing and introducing a standardised IT-based processing system for
the Electronic Court and Administrative File (EGuVA), which comprises an eregister, an e-file and e-processing. In 2009, the Federal Patent Court switched
its administration to electronic file management using the VISkompakt
workflow management system as a precursor to managing electronic court
files, enabling the processing of administrative transactions without media
discontinuity and across all departments. The second part of the project is
the introduction of the electronic court file within the frame of the electronic
legal transactions. Two of the technical boards of appeal have been working
with e-files since early 2008 in order to gain experience and to enable further
improvements to be made. The legal conditions are currently being put in
place to enable e-files to function as the lead file.
- Integrating and developing the electronic court mailbox plus pigeon-holes
across the whole system and by developing a means of inspecting the files
electronically.
- Expanding the information and communication platform by incorporating
internet technology both as a user and as a provider of information.
The Federal Patent Court has currently equipped two court rooms as well as two
consultation rooms with innovative IT infrastructure. Not only the judges of the
Federal Patent Court but also the parties as well as lawyers may use the available
functionality serving as support for the proceedings, however, should not interfere
with the oral proceedings nor make them a multi vision show.
35 Cf. Ordinance on E-Justice at the Federal Court of Justice and the Federal Patent Court (BGH/BPatGERVV) of 24 August 2007.
23
Publications and Documentation
All final judicial decisions rendered by the Federal Patent Court since 2000 have
been published on the internet and are available on the Court‘s website (www.
Bundespatentgericht.de www.bpatg.de, menu item Entscheidungen (Decisions) in
neutralised copy – currently only available in German). This service is free of charge
when used for non-commercial purposes.
In addition, many decisions rendered by the boards are accessible via the juris database. This database provides access to decisions specified by the boards.
The Association of Judges at the Federal Patent Court, reg‘d society, publishes a
collection of decisions by the Federal Patent Court (BPatGE) – the so-called Blue
Volumes – which includes selected decisions rendered by the boards.
Selected decisions
by the boards of the FPC
are published in a
special collection.
Press and Public Relations Work
The annual report provides an overview of the activities and the business development of the Court and furthermore, presents important decisions rendered over
the past year on patent, trade mark, utility model and designs law.
Within the framework of the 2007 German EU Presidency the Federal Patent Court
organised its first international symposium. Since then biennial symposia have
taken place in Munich. A wide range of specialists in intellectual property rights
discuss – alternately – current issues on patent and trade mark law giving food
for thought for further activities. The previous symposia and the corresponding
published conference volumes were dealing with the topics „The Future of Patent
Jurisdiction in Europe” (2007), From Harmonised Trade Mark Law to Harmonised
Trade Mark Proceeding” (2009) and “The National Patent Jurisdiction in Europe”
(2011).
24
Imprint
Published by
The President of the Federal Patent Court
Department for Public Relations
and International Affairs,
Information Services
P.O. Box 90 02 53, D-81502 Munich
Edited by
Dr. Ariane Mittenberger-Huber
Judge at the Federal Patent Court, Munich
Layout
Grafikbüro Ehlers + Kaplan GbR, Mainz
www.grafikbuero.com
Photos
© Hans-Jörg Nisch/fotolia.com (C 2), der aether (P. 1),
BPatG, Dr. Müller, Kleinschmidt (all other)
Printed by
German Patent and Trade Mark Office (DPMA), Munich
This brochure can be ordered
in writing from the publisher or by
Phone: +49 (0) 89 69937 - 231
Fax: +49 (0) 89 69937 - 5 231
E-Mail: [email protected]
Internet: www.bundespatentgericht.de
This information brochure is also available
in German, French, Russian and Chinese language.
Munich 2012
© BPatG
Bundespatentgericht
Federal Patent Court
Cincinnatistraße 64
D - 81549 München
[email protected]
www.bpatg.de