Law applied:
Sec. 83 (1), Sect. 116 (2), Section 117 of the Patent Act (PatG);
Sec. 296 (1), Sec. 529, 530 of the Code of Civil Procedure (ZPO)
Summary of the Court:
1. As a rule, the defendant in patent nullity proceeding has no reason to file auxiliary requests to delimit the prior art if the Patent Court expresses the preliminary view in the notice issued under Sec. 83 (1) Patent Act (PatG) that the subject matter of the patent in suit is patentable.
2. If the plaintiff submits a large number of new citations after such a notice, the defendant must check whether the supplementary submissions could lead to a different assessment and, if necessary, also submit appropriate auxiliary requests. However, if a large number of technical aspects prove to be potentially relevant in this context, it cannot be regarded as negligent without further ado if the defendant failed to take account of a single aspect through its auxiliary requests at first instance.
3. Auxiliary requests which are intended to take account of an interpretation of the patent in suit which is apparent from the judgment at first instance shall, in principle, be filed within the time limit for filing the statement of grounds of appeal. Requests filed later shall be considered if their admission does not delay the conclusion of the litigation.
BGH, Judgment of March 15, 2022 - X ZR 18/20
Download full Judgment (machine translation)
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