Thursday, 28 February 2013

Semi-Nullification – BGH Polymerzusammensetzung

The BGH had to decide in a nullity appeal matter for a patent, the main claim of which was directed to a polymer composition. One ingredient of the composition was selected from a group comprising three different substances, which shall be named A, B, and C herein for the sake of simplicity.

The plaintiff had filed the nullity action requesting the nullification of claim 1 and other claims, insofar as the claims relate to or refer to compositions containing substance A.

The Bundespatentgericht had followed the usual practice and declared claim 1 invalid in its entirety, though only one of the three alternatives was attacked. Hitherto, a partial nullification of a claim was declared only if the patentee had filed a corresponding request, which was not the case here.

The BGH found that this does not comply with the disposition principle (non ultra petita) and that the Bundespatentgericht should have nullified only the part which was attacked, although the patentee did not submit a corresponding request with amended claims.
It will be interesting to see whether this decision will have consequences for cases where multiple alternatives in a claim are attacked and only one of them turns out to be invalid and for the cost distribution.

Please click here for the full text decision (in German).

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