The patentee is not limited on appeal to defending the patent in the (limited) version pursued in the first instance, but may revert to the version as granted and to other limited versions. A declaration in the response to the nullity action that the patent is defended in a limited form has no limiting effect; this effect only enters into force with the final decision in the nullity proceedings. The declaration does not constitute a waiver either, unless a waiver is explicitly declared by the patentee.
Case date: 20 November 2018
Case number: X ZR 17/17
Court: Federal Court of Justice of Germany
A full summary of this case has been published on Kluwer IP Law.
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It is interesting to compare this decision of the BGH with decision T 1181/17 of the Boards of Appeal of the EPO.
https://www.epo.org/law-practice/case-law-appeals/recent/t171181du1.html
The New Rules of Procedure of the BA valid as of 01.01.2020 would nip in the bud any attempt in this respect, cf. the three rings of convergence, and especially the first one.
Sorry I made a mistake read T 1695/14 instead of T 1181/17.
https://www.epo.org/law-practice/case-law-appeals/recent/t141695du1.html
Please rectify before publication