Background
The applicant sought a patent for vehicles and methods that determine target positions for movable front and rear aerodynamic elements. The claimed control system determines a front element’s current target position using, among other inputs, a vehicle-state parameter and the rear element’s position from a preceding time step. The application claimed priority to two U.S. applications filed in 2015 and 2016.
The German Patent and Trade Mark Office initially objected based on DE 10 2011 114 767 A1. After the applicant declined to attend a scheduled hearing and requested a decision on the written record, the examining division nevertheless held the hearing without the applicant. At that hearing it introduced US 2007/0257512 A1 for the first time and immediately rejected the application solely because it considered claim 1 anticipated by that reference. The applicant appealed, alleging both patentability and a denial of its right to be heard, and later submitted revised claims and description pages.
The Court’s Holding
The Federal Patent Court set aside the rejection and ordered the patent granted on the revised claims and specification. It held that independent claims 1, 2, and 8 were novel and involved an inventive step. Neither cited reference disclosed using the rear aerodynamic element’s position from a preceding time step to determine the front element’s current target position. Even combining the references would not supply that feature. The court also found the claims sufficiently disclosed, workable, and supported by the original application.
The court further held that the examining division violated the applicant’s right to be heard. A request for a decision on the written record did not waive the right to address new, outcome-determinative material. Because the division first introduced the second reference at the unattended hearing and based its rejection exclusively on that reference without allowing a period for response, the rejection was procedurally unlawful. The same-day rejection would not have been permissible even had the applicant attended. The court therefore ordered reimbursement of the appeal fee under § 80(3) of the German Patent Act.
Key Takeaways
- An applicant requesting a decision on the written record does not thereby waive the right to respond to newly introduced prior art.
- An examining division may not reject an application solely on a reference first raised at a hearing without previously notifying the applicant and allowing time to respond.
- Prior art controlling front and rear aerodynamic elements independently did not disclose or suggest using one element’s preceding position to calculate the other element’s current target position.
Why It Matters
The decision establishes an important procedural limit in German patent examination: an applicant’s absence from a hearing does not authorize the Patent Office to introduce a new decisive reference and issue an immediate rejection. Applicants must receive meaningful notice and an opportunity to address every ground on which rejection rests.
Substantively, the ruling also illustrates that coordinated control of known vehicle components may be patentable when the claimed cross-component, time-dependent input relationship is neither disclosed nor suggested by the prior art.