In a decision dated 5 August 2026, the 9th Senate of the Federal Patent Court (BPatG) considered the question of whether a patent application may be rejected on the basis of a publication introduced for the first time during a hearing, if the applicant did not attend the hearing and requested a decision based on the file.

Subject-matter of the patent application

The patent application related to a vehicle and a method for determining the target positions of aerodynamic front and rear elements. The aim was to determine the position of an aerodynamic front element, taking into account vehicle status parameters and the previously determined position of the rear element.

During the examination proceedings, the German Patent and Trade Mark Office (DPMA) had initially cited publication D1 (DE 10 2011 114 767 A1) and raised objections to the patentability of the claims originally filed. The applicant subsequently submitted revised documents.

Course of proceedings and introduction of D2

After the Examining Division had continued to express doubts as to the patentability of claim 1, it convened a hearing on 22 February 2024. The applicant stated that, for reasons of procedural economy, she would not attend and requested a decision based on the file.

The Examining Division nevertheless held the hearing and, for the first time, introduced publication D2 (US 2007/0257512 A1) into the proceedings as new prior art. On the very same day, it rejected the patent application solely on the grounds that the subject-matter of patent claim 1 was not novel in relation to D2.

The applicant subsequently lodged an appeal, alleging in particular a breach of her right to be heard.

The decision of the Federal Patent Court

The Federal Patent Court found that the Examining Division had breached the applicant’s right to be heard.

In its reasoning, the Senate stated:

•    Prior notification of the grounds for rejection: Pursuant to Section 48, second sentence, of the patent law in conjunction with Section 42(3), second sentence, of the patent law, a patent application may only be rejected on the basis of circumstances which have been previously communicated to the applicant and on which the applicant has had the opportunity to comment within a specified period. This was  not the case with regard to D2, which had been introduced for the first time at the hearing.

•    No waiver of the right to be heard: The announced decision not to attend the hearing and the request for a decision based on the file did not constitute a general waiver of the right to be heard. The applicant could not have been expected to anticipate that the Examining Division would alter its previous basis for assessment and base the rejection on a previously unknown publication.

•    Opportunity to comment even if present: Even if the applicant had attended the hearing, the Examining Division would not have been entitled to reject the application simply on the basis of the newly introduced document D2. Rather, it should have given the applicant sufficient opportunity to comment on this publication within a specified time limit.

The Senate expressly left open the question of whether the Examining Division should have been permitted to hold a hearing at all, despite the request for a decision based on the file.

Annulment of the decision and refund of the appeal fee

The Federal Patent Court (BPatG) annulled the decision to reject the application and granted the patent on the basis of the documents revised during the appeal proceedings.

On the merits, the Senate found that neither D1 nor D2 disclosed the determination of the target position of the front element, taking into account the position of the rear element determined in a previous time step. The claimed subject-matter was, therefore, novel in relation to both publications and involved an inventive step.

Furthermore, the court ordered the reimbursement of the appeal fee in accordance with Section 80(3) of the patent law. As the rejection had been made in breach of the right to be heard and this procedural error had been a contributing factor for the lodging of the appeal, the reimbursement was deemed equitable.

Implications for practice

The decision clarifies that a request for a decision based on the file alone must not be construed as a waiver of the right to be heard. If the Examining Division introduces new prior art relevant to the decision, it must give the applicant the opportunity to comment before issuing a rejection. This applies regardless of whether the applicant attends a hearing.

Source: Decision of the Federal Patent Court (BPatG) of 5 August 2026, Ref. 9 W (pat) 6/24.