Katfriend Heiko Sendrowski tells us that this approach is now being adopted by the German courts also. Just so we have our acronyms straight, the tale involves nullity proceedings which were decided at first instance in the Federal Patents Court, or Bundespatentgericht (BPatG) and which were appealed to the Federal Court of Justice, or Bundesgerichtshof (BGH) which is in effect the Supreme Court other than in constitutional matters.
Heiko tells us:
In case X ZR 111/13 - "Telekommunikationsverbindung" /telecommunication connection, the Federal Court of Justice has upheld the revocation of the German part of EP 1421771 by the Federal Patent court (BPatG). The BPatG had notified the parties that claim 1 lacked an inventive step. The patent was revoked for this reason, no auxiliary requests having been filed to defend against this attack.
On appeal before the BGH, the patentee defended the patent by filing three auxiliary requests. The BGH considered these requests inadmissible, because neither the claimant had agreed that a defense with these requests could be attempted, nor - and this is the surprising part - did the court consider the requests as pertinent ("sachdienlich" - something that is appropriate to further the case).
The BGH maintained that auxiliary requests in second instance proceedings are admissible if the second instance court's assessment diverges from that of the first instance. Also, auxiliary requests remain admissible if the first instance court issues a notification to the parties which does not cover all attacks or which indicates some attacks as being unlikely to succeed. In such cases, the patentee generally does not have any reason to prepare defenses against those unflagged or unpromising attacks.
However, where the BPatG as first instance court issues a notification to draw the parties' attention to an attack made by the claimant, then the patentee has enough inducement to file auxiliary requests in the first instance proceedings as a means of defence. If the patentee refrains from defending the patent by auxiliary requests, then such auxiliary requests are inadmissible in second instance proceedings.
Interestingly the auxiliary requests in the present case consisted of reduced claim sets, i.e. a defense based on some of the dependent claims as granted. The patentee argued that the first instance court had only discussed granted claim 1, and its notification was also only pertinent to this claim; there had been no discussion of inventiveness regarding the subject matter of any dependent claim at the BPatG. The BGH didn't buy this argument: As the patentee had defended the patent based on granted claim 1 and had himself never addressed any inventiveness of the subject matter of dependent claims, the second instance proceedings was limited to the claim set argued at first instance.