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INFORMATION FROM THE CONTRACTING / EXTENSION STATES

DE Germany

Judgment of the Bundesgerichtshof (Federal Court of Justice), 10th Civil Senate, dated 5 June 1997

(X ZR 73/95)*

Headword: Weichvorrichtung II (Steeping device II)

Section 14 PatG (Patent Law), Section 242 BGB (Civil Code)

Article 69 EPC

Keyword: "Extent of protection conferred by a patent - Relevance of limiting declarations in opposition proceedings"

Headnote

1. If, in opposition proceedings, a patent applicant declares that he does not wish to seek protection for a particular embodiment, and then, in infringement proceedings, vis-à-vis a party to the opposition proceedings, he nevertheless makes claims deriving from the patent in respect of that embodiment, he violates the principle of good faith by reason of the inadmissible exercise of a right (venire contra factum proprium) if his declaration is used as a basis for the grant of the patent (previously in accordance with the 1978 version of the Patent Law), or for its maintenance (under the 1981 version of the Patent Law) or for the wording in which it is granted, and if the defendant is entitled to put his trust in the patent applicant's probity and reliability.

2. In this case, the defendant has the right to invoke the principle of good faith also vis-à-vis the plaintiff/licensee.

DE 1798