Facts
In this case, it was about a lawsuit filed by [C. AG] against [A. GmbH] and [B. GmbH] for infringement of various features of a patent. During the proceedings before the Federal Patent Court, [C. AG] notified that it had limited the Swiss part of the patent EP x B1 by a partial waiver with the Swiss Federal Institute of Intellectual Property (IGE) (CH/EP x H1).
The Federal Patent Court allowed the introduction of the limited patent into the proceedings, but took into account in the allocation of costs that [C. AG] had only declared the partial waiver at a late stage in the proceedings.
[A. GmbH] and [B. GmbH] filed a complaint against the judgment of the Federal Patent Court and requested that the proceedings be dismissed as devoid of purpose, as the original patent on which the lawsuit was based no longer existed due to the limitation.
Considerations
The Federal Supreme Court upheld the complaint. It stated that the limitation of the patent, even if it had occurred outside the civil proceedings, should not be treated differently under the law of novation than a patent limitation in civil proceedings. The admissibility of the limitation depends on whether it could not have been presented earlier with reasonable care within the meaning of Art. 229 para. 1 lit. b CPC.
The Federal Supreme Court concluded that the limitation…