The Federal Court of Justice has decided by decision of 26. August 2014 (X ZB 19/12 – "Communication router") decided, that the Technical Appeal Senate of the Federal Patent Court generally has the necessary technical expertise and that an appeal due to a lack of an expert report is only successful in exceptional cases.

Guiding principle

• a) It is generally assumed, that the Technical Board of the Senate of the Patent Court on the technical fields, falling within its jurisdiction, due to the requirements, which represents the law of the professional qualifications of the technical judges, and whose experiential knowledge, built up through constant involvement with inventions in these areas, has the technical expertise necessary to assess the questions relevant to the decision. This does not preclude, may be that still to obtain an expert opinion appropriate in the individual case or offered, because it is based on professionally-technical questions on a section of the subject area, is responsible for the technical board of appeal, arrives and the judges appointed to make the decision do not have the specific expertise and, if necessary, experience required to make an exhaustive assessment (following BGHZ 53, 283 – Anthradipyrazol).
• B) The complaint of a violation of the right to be heard can generally only be successfully based on the failure to obtain the report of a judicial expert, if it is shown, due to which circumstances it had to be imposed on the Technical Complaints Senate, He would require the use of additional external expertise to assess the facts of the case.

Facts

The applicant had applied for a patent for a communications router, which reads the caller ID of a caller and, after activation on the device, authorizes it as an identifier. The DPMA and the Federal Patent Court rejected the application (Main application: invalid extension; Request for assistance: lack of inventive step). The applicant complained, among other things, that the appeal was not admissible, the Senate should have called in an expert in communications technology.

The decision

The BGH rejected the legal complaint. A technical judge does not have to represent the relevant expert; he just needs to be able to determine and evaluate his knowledge - if necessary with the help of external sources. That the training or professional practice of the judges is not specifically tailored to the area of ​​the invention, is not enough. In view of the relatively simple technical teaching, obtaining an expert opinion was not necessary.

There was also no surprise decision: The thing- and legal situation was discussed in the oral hearing. An announced one, but a request not made at the hearing does not constitute a lack of reasoning.

Importance for practice

Anyone who considers external expertise necessary in the complaint process, should explain specifically, which specific technical questions the Senate cannot itself assess. Applications must be made at the oral hearing; a written announcement is not enough. The summary reflects the legal status at the time of the decision.

Full text: rechtsprechung-im-internet.de (File number X E.g 19/12)

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Summary of the decision; no legal advice in individual cases.