Our partner Dr. Markus Grammel analyzes for GRUR Patent (published by C.H. Beck Verlag) the recent decision “Planungseinrichtung” (X ZR 92/22) by the German Federal Court of Justice (BGH), which clarifies that an auxiliary request filed during first-instance proceedings but not decided upon cannot be rejected as late-filed on appeal.
In the underlying nullity case, Auxiliary Request 4 was submitted during the oral hearing but was not addressed by the Federal Patent Court, as a higher-ranking request was deemed allowable. The BGH has now ruled that: An auxiliary request filed in the first instance, which the patent court did not decide on because it considered the patent in dispute to be legally valid in a different version, cannot be rejected as late in the appeal instance pursuant to Section 117 PatG in conjunction with Section 531 ZPO or Section 530, 296 ZPO. § 531 ZPO or §§ 530, 296 ZPO as belated.
Dr. Grammel contrasts this with the currently stricter practice of the EPO Boards of Appeal, where such requests are often considered inadmissible amendments. The BGH thus sends a clear signal in favor of strengthening the procedural rights of patent owners in German nullity appeal proceedings.