15.03.2022: BGH on auxiliary requests during nullity proceedings
Patent owners must announce auxiliary requests with which they defend the patent in due time before the first instance oral proceedings.
Even if the filing of new auxiliary requests not filed in the first instance is generally inadmissible in the appeal instance, the BGH concludes in the above-mentioned ruling that the patent proprietor may, under certain conditions, file further auxiliary requests at a later stage of invalidity appeal proceedings and that these do not necessarily have to be rejected due to lateness.
To this end, principles have been formulated.
Practical tip:
For a long time, the principle was: show strength and do not file an (unnecessarily large) number of auxiliary requests - this can probably no longer be upheld.
Patent owners should comprehensively discuss and plan the strategy in invalidity proceedings, especially in the context of the appeal, at the beginning of the process.
Precise analysis of the current situation and anticipation of issues relevant to the proceedings can lead to more effort at the beginning, but also to success at the end of the proceedings.