Facts
In this case, the issue was the partial invalidity of a patent. Griesser AG had filed a lawsuit against Baumann AG for the declaration of invalidity of the disputed patent. The High Court had declared the patent partially invalid, but had failed to reformulate the part of the patent claim that was excluded from the invalidity. Griesser AG argued that the High Court should have ex officio examined whether the patent was only partially invalid. By omitting to do so, it had violated Art. 27 para. 1 PatA.Considerations
The Federal Court held that according to Art. 27 para. 1 PatA, the patent must be restricted by the judge if a ground for invalidity only applies to part of the patented invention. The judge must himself reformulate the part of the patent claim that is excluded from the invalidity. However, this does not mean that the judge must ex officio clarify the possibility of partial validity. Art. 27 PatA does not provide for such an official principle. The plaintiff in the invalidity proceedings must substantiate and prove his legal claim through factual submissions. If the patent holder waives protection for sub-claims or proposes another restriction of the patent in the invalidity proceedings, proof of the prerequisites on which the protection of the maintained invention depends may be required from him. However, the judge does not have to examine these prerequisites ex officio. The Federal Court upheld its previous case law, according to…