German Federal Supreme Court Decides About Procedural Rules in Nullity Appeal Proceedings

The decision of August 28, 2012 (X ZR 99/11) concerns the question to what extent new evidence and new lines of argumentations are admissible during appeal proceedings in patent nullity matters before the German Federal Supreme Court. Hereto the Court concluded that submitting for the first time in appeal proceedings, an expert opinion is admissible if its substance is to clarify and further explain arguments which have already been made in the first instance before the German Federal Patent Court. A line of argumentation can, however, be new in appeal proceedings if it has not been brought forward in the first instance proceedings, even if this line of argumentation is based on state of the art references which have been filed during the first instance proceedings. The new line of argumentation during appeal proceedings may nevertheless be admissible if the preparatory communication of the German Federal Patent Court in the first instance gave no incentive to the parties to bring this line of argumentation in the first instance.