According to its decision „Telekommunikationsverbindung“ the BGH has confirmed that in case of a nullity appeal only those means of defense can be substantially used by the patent proprietor which have already been submitted at the BPatG during the nullity hearings. This represents a continuation of previous decisions of the BGH.

This particularly applies for means of defense the patent proprietor had a reason to submit during the nullity hearings, e.g. due to an indication of the BPatG previously to the nullity hearings or by an inquiry of the nullity senate during the hearings. Consequently, said means of defense, which despite of a reason were not submitted at the BPatG, can be and are often rejected as invalid with a first-time submission in the appeal at the BGH.

Especially, in nullity hearings by which an appeal cannot be excluded all reasonable means of defense should be already introduced and submitted by the patent proprietor during the nullity hearings at the BPatG.