Federal Court of Justice, No. X ZR 110/11, "Polymeric Foam"

In Germany, the procedural law in nullity proceedings was changed in 2009. The first cases under the new regime have now been decided on appeal.


The new procedural rules have strengthened the role of first instance proceedings, adding, e.g., a preliminary opinion before trial as well as enhanced duties to clarify technical facts, e.g. by taking expert evidence - an element previously foreign to first instance nullity proceedings. The role of the Federal Court of Justice as appeal and final instance court has changed from previously having to perform a full review of the facts and law of the first instance decision to now only having to review the law. In this regard, Article 119 of the German Patent Act allows the Federal Court of Justice to remand a case back to the first instance if the facts of the case have not been fully established by the Federal Patent Court.

In its first published decision "Polymeric Foam", the Tenth Senate of the Federal Court of Justice clarified the application of the new appeal rules with regard to the remission of a matter back to the first instance proceeding. The court summarized that in cases where the oral hearing of a nullity appeal leads to the conclusion that the matter is not ready for final decision, the decision whether the Federal Court of Justice may decide on the matter by itself or remand it back to the first instance depends primarily on efficiency considerations, i.e. which court would deal with the open questions most efficiently and expediently.

For future proceedings, it is to be expected that the Federal Court of Justice will only make a final decision in matters where the Federal Patent Court has dealt with all relevant aspects of the case – and all those that do not seem relevant for its decision. This includes, in particular, the skilled person's understanding of the words used to describe the technical teaching of the patent in the claim.

Starting Point

The subject matter in the nullity proceedings at issue concerned a patent for polymeric foam-containing products and for the process of their manufacture.

The Federal Patent Court revoked the patent in first instance, holding that in view of the prior art the subject matter of the patent was not novel, and it was also obvious. The court based this result on the assumption that the patent claim did not provide a specific provision to add expanding micro-particles into a polymeric mixture before it was molten. The Federal Patent Court did not decide on the plaintiff's further inadmissible extension attack.


Upon appeal, the Federal Court of Justice remanded the matter back to the Federal Patent Court.

Reviewing the case, the court found that the micro-particles were to be mixed with a completely molten thermoplastic polymer, which was neither present in the prior art nor was it obvious to the skilled person. The subject matter of the patent was therefore new and inventive.

However, the court said that the matter was not ready for decision, as the judgment of the Federal Patent Court had not dealt with the plaintiff's further claim of inadmissible extension. Assessing whether it could deal with the matter more expediently by itself or if it needed to refer the matter back in its entirety, the Federal Court of Justice considered it would need to obtain an expert opinion from a court appointed expert - just like under the "old law" where it had acted as a second fact finder. However, the court said that the Federal Patent Court was more suitable to decide on the open questions based on its own knowledge and experience, given that it comprises both legal and technical members and is, therefore, in a better position to steer the evidentiary process. The Federal Court of Justice concluded that the remission of the matter back to the Federal Patent Court was more efficient.

In the future, more decisions of the Federal Court of Justice in nullity proceedings will discuss fundamental questions of the new appeal procedure. The next decision will be the, so far unpublished, decision "Automotive Alternator" which will deal with the admissibility of new factual representations on appeal and the provisions on late filing in Article 117 of the German Patent Act.