判例

15.12.2020: Citations should already be subject of applicant's submission in nullity action in first instance

A citation which only came to the attention of the invalidity applicant at second instance may only be taken into account if the applicant explains and, if necessary, substantiates why a search which would have brought the document to light was not (yet) prompted at first instance.

Therefore the plaintiff must specifically demonstrate how he created the search profile of his first-instance search and why he chose such a profile and not the one that led to the identification of the new citation.

Practical tip:

To prepare an attack on a patent, a patent search should be carried out via professionals who prepare a comprehensive search strategy and corresponding reports and supporting documents.

It is also important to determine the direction of the search at an early stage and to incorporate any necessary twists in the case directly into this search strategy.

Accordingly, there should also be no waiting to carry out a supplementary search.