12.10.2020: Federal Patent Court rules: Defense with a non-attacked subclaim is inadmissible
If a utility model proprietor defends a utility model attacked with a partial cancellation request directed against individual claims with a non-attacked subclaim, this is inadmissible.
The corresponding principles for the limited defence of a patent which is only partially attacked with an action for revocation are applicable in this respect. This applies in particular if the challenged claims are only defended to the extent of subsequently filed claims.
If a utility model proprietor limits his opposition against a cancellation request to claims previously filed, it is appropriate to base the decision on costs in such cases on the extent to which the utility model proprietor was able to successfully defend the challenged utility model with the subsequently filed claims.
Practical tip:
The strategy for the formulation of protective claims for utility models, their abandonment or attack/defence in cancellation proceedings can have a significant influence on the prospects of success and cost consequences for both parties.
This should therefore already be examined in detail when filing utility models or cancellation applications.