Pages 240-247

NATIONAL JUDGES' PRESENTATIONS

DE Germany

Beate Schmidt - President of the Federal Patent Court - Recent developments in European and national patent law and case law

Good morning ladies and gentlemen.

Given the short time available, the title "Recent developments in German patent law and case law" perhaps promises too much. I will have to race through to present even just one development. So I will focus on issues relating to the inadmissible extension and limitation of patent applications, as the Federal Court of Justice has recently addressed these issues in-depth, also in the light of the Enlarged Board's case law.

Statistics

I would like to begin, however, by taking a brief look at the Federal Patent Court's current statistics, which paint an unusual picture:

The number of revocation actions before the court has been increasing continuously for years, going from 255 in 2010 to 297 in 2011. This year again, we are expecting many new cases, albeit not quite so many as last year.1 More than 70% of these actions are for revocation of the German part of a European patent. By contrast, the number of appeals lodged against decisions of the German Patent and Trade Mark Office - the DPMA - has been falling steadily for some years, although the roughly 50% drop in the number of new appeals in 2011, from 598 to 281, was unusually dramatic. The figures are up again slightly this year, with 200 new appeals having already been lodged in the first six months.2 But we are unlikely to get back up to the 2010 level by the end of the year. It should, however, be borne in mind that these figures probably have less to do with any genuine lack of interest among applicants in a review of DPMA decisions than with the fact that the DPMA closed fewer cases than usual last year following the introduction of a new system of electronic patent files, known by the abbreviation "ELSA", and that the transfer of these files to the court was not yet running entirely smoothly.

On the other hand, the court's settlement of pending appeal cases has kept pace this year with the rate of newly lodged appeals. Unfortunately, the same does not go for revocation cases: there have been delays in settling these cases as a result of a considerable increase in workload due, in part, to procedural changes introduced over the period since late 2009. This problem has been compounded by the fact that an especially large number of complex actions in the telecommunications field are currently being brought before the court. We too have not been spared by the "patent wars" between smartphone manufacturers and other major firms.

Inadmissible extension of application

I will now turn to the actual topic of my talk: the inadmissible extension of patent applications and its potential implications.

Under Section 21(1) No. 4 and Section 22 of the German Patent Law, a patent must be revoked or declared null and void if its subject-matter goes beyond the content of the application as filed. Equivalent provisions can be found in Articles 100(c) and 138(1)(c) EPC, which follow from the prohibition on extension under Article 123(2) EPC. These provisions cover, for example, changes to the patent claims resulting from the omission of individual features, the insertion of additional variants or the use of altered or generalised expressions. All of this can lead to the inclusion of additional subject-matter not previously covered, and none of it is admissible.

However, such changes do not inevitably result in a complete loss of the patent. It can, in some cases, be maintained, at least in part, in limited form. Section 21(2) of the Patent Law, like Article 138(2) EPC, allows such limitation and maintenance of a patent if the ground for revocation only applies to part of it.

Admissible limitation

In cases falling under Section 21(1) No. 4 of the Patent Law, the patent's subject-matter must be limited in such a way that it remains covered by the content of the application as originally filed. If the subject-matter disclosed in the original application documents has been inadmissibly generalised, it can usually be limited by deleting the inadmissible generalisation from the claim or, alternatively, by replacing it with an admissible limiting feature.

Let me illustrate this with two examples:

Although only a "telephone installation" was originally disclosed, the claim concerns a "telecommunications installation" encompassing, in addition to acoustic signals, non-disclosed optic ones. This patent can be limited by using the narrower term "telephone installation".

A patent can also be validly limited by re-inserting a previously deleted addition: if deletion of "ISDN" from the narrower term "ISDN telecommunications installation" leads to an inadmissibly more general claim for a "telephone installation", the claim can be admissibly limited by re-inserting it.

Inadmissible limitation

By contrast, problems can arise where a limitation inserted at a later stage proves to be inadmissible. Simple deletion is not an option if the insertion of a feature not disclosed in the original application documents has limited the subject-matter of the patent, as undoing the limitation would ultimately result in an extension of the scope of protection, itself inadmissible under Section 22(1) of the Patent Law, which provides that a patent will be revoked on request if one of the grounds listed in Section 21(1) of the Patent Law applies or the scope of protection has been extended.

The EPO's Enlarged Board of Appeal has concluded from the largely equivalent provisions in Articles 100(c) and 138(2)(d) EPC that, in such cases, the patent cannot be amended by deleting the limiting subject-matter from the claims. It can only be maintained if there is a basis in the application as filed for replacing such subject-matter by other (narrower) features without violating Article 123(3) EPC. In the absence of such an amendment, the patent can only be maintained if addition of the non-disclosed feature merely excludes protection for part of the subject-matter of the claimed invention and the feature makes no technical contribution to that subject-matter;3 then, the subject-matter does not go beyond the content of the application as filed. The Enlarged Board regards an amendment of this kind (which it calls a "disclaimer") admissible if it serves to restore novelty by distinguishing a claim from the content of a subsequently published patent application or an "accidental" anticipation, or if it is to disclaim subject-matter excluded from patentability under Articles 52 to 57 EPC as non-technical ("for non-technical reasons").4

German case law

For revocation proceedings, to which Section 21(1) and (2) of the Patent Law is applied by analogy, the Federal Court of Justice has ruled that a patent cannot be revoked where the insertion of a feature not disclosed in the application as filed merely limits the scope of the claimed subject-matter. Where, in such a case, the limiting feature remains in the patent claim, the public's legitimate interests are protected if it is ensured that otherwise, i.e. as far as the establishment of patent rights is concerned, no rights can be derived from the amendment.5 Several academics have endorsed this interpretation in the literature,6 and the Federal Patent Court has also taken this approach. However, it considers that, in such cases, a ("disclaimer-style") statement must be added to the claims or description to the effect that no rights can be derived from the inadmissible amendment.7 In the "Semantischer Disclaimer" case, the patent was therefore maintained only after addition of the following clarification to the description: "except for the feature 'automatic' because it extends the patent's subject-matter beyond the content of the application as filed".

In a more recent decision,8 however, the Federal Court of Justice has held that, as a rule, no such statement or disclaimer need be included because the Patent Law already makes it clear that no rights may be derived from the inadmissible insertion of a feature. It cannot be inferred from either Section 21(1) No. 4 or Section 22 of the Patent Law that a patent must always be revoked if its subject-matter has been limited as compared with the content of the application as filed by inclusion of a feature not disclosed in that application. While it follows from those provisions that the statute attaches considerable weight to protection of the public's legitimate expectations, Section 21(2) establishes that this public interest is already duly served if a breach of one of the validity requirements can be remedied by an appropriate limitation of the patent. In the situation at issue here, this can also take the form of leaving the non-disclosed limiting feature in the claim but disregarding it for the purposes of establishing patentability. In the Federal Court of Justice's view, this ensures that, although the feature remains decisive in determining the scope of protection, the patent's validity is not based on technical instructions not disclosed as part of the invention in the application. It is therefore unnecessary to revoke it. As the Federal Patent Court sees it, however, that does not rule out entirely the possibility of including a disclaimer.9

In the context of German law and German patents at least, such an approach is not precluded by the mandatory character of Article 123(1) and (2) EPC. In its Winkelmesseinrichtung decision,10 the Federal Court of Justice expressly stated that it did not share the Enlarged Board of Appeal's view as far as applying Sections 21 and 22 of the Patent Law was concerned. The Board itself had recognised in G 1/93 that its approach could have harsh consequences for the applicant,11 but considered that the mandatory nature of Article 123(1) and (2) EPC prevented it from reaching a different outcome. According to the senate of the Federal Court of Justice which deals with patent cases, this is not of crucial importance, at least not for German law. The Patent Law's wording does not include any express rule dictating, one way or the other, the outcome for cases in which the deletion of a feature from a claim required to overcome one ground for revocation might give rise to another ground for revocation. It must therefore be ascertained, on the basis of general principles of interpretation, whether the inadmissible insertion of a feature under Section 21(1) of the Patent Law must inevitably result in revocation of the patent in its entirety or whether the public's legitimate interests might not be duly protected by the fact that, as stated in Section 38(2) of the Patent Law, no rights can be derived from the amendment. Indeed, the Enlarged Board too considers that it may be admissible in certain cases to retain a feature not disclosed as part of the invention in the application as filed. This, according to the Federal Court of Justice, confirms that Article 123(1) and (2) EPC does not categorically preclude its chosen approach to such cases.

Disclaimers inadmissible in the case of an "aliud"

Nevertheless, this approach can only be adopted if inserting the feature not disclosed in the application as filed results in a limitation of the claimed subject-matter. It cannot be applied where, as a result of the feature's insertion, the claim in the granted patent is directed to an invention other than that in the application as filed, i.e. the patent protects an "aliud", that is, subject-matter different from that disclosed to the skilled person in the original application.12 The crucial question is whether addition of the feature merely results in more specific guidance on a practical teaching disclosed as part of the invention in the application as filed, or whether it introduces a technical aspect which would not have been understood to be part of the invention on the basis of that application, be it in that specific embodiment or even in abstract form. There is then no choice but to revoke the patent.