In Germany, the Federal Court of Justice (Bundesgerichtshof) ultimately governs infringement and nullity actions concerning German patents, German utility models, and German parts of European patents, while opposition proceedings for European patents fall within the competence of the European Patent Office and its Boards of Appeal. Moreover, nullity and infringement actions for other national parts of European patents are heard before other national courts. This may lead to situations of differing decisions by different courts concerning essentially the same question, yet posed at different stages in a patent's life or for parallel IP rights. In order to safeguard a uniform case law, therefore, the Federal Court has, in recent years, repeatedly expressed that German courts have an obligation to consider the reasons of national European courts and of the EPO if they wish to deviate from an earlier decision handed down by them.

 

This has led to an ever increasing convergence of the case law towards the European standards.

 

In two recent cases, however, the Federal Court has firmly and deliberately deviated from the practice of the EPO.

 

 

This decision concerned the German part of European patent EP 1 088 569 directed to a wound treatment apparatus. An apparatus of this kind known from the prior art is shown in fig. 1, where 210 is a wound, 36 is a porous foam pad, 37 is a suction tube and 43 is an air-tight seal.

Claim 1 of EP 1 088 569 as granted reads

Apparatus for applying negative pressure to a superficial wound in a mammal which comprises a porous pad ... and a connector for connecting the pad to a suction tube, said connector comprising a disc-like cup having its lower face in contact with said porous pad.

The Federal Court found that the feature of the disc-like cup having its lower face in contact with the porous pad (the "lower face" feature) was not disclosed in the original application as filed. According to the case law of the EPO, the patent should have been revoked, because it violates Art. 123(2) EPC and this cannot be rectified without violating Art.123(3) EPC.

 

However, in the nullity proceedings, the patent proprietor filed a new claim 1 in which the additional feature of "said connector having a spout for connecting to the end of the suction tube remote from the pump to the wound site" (the "spout" feature) was added to claim 1 (cf. Fig. 2). For this claim, the court found that the feature combination of claim 1 without the "lower face" feature was originally disclosed, so adding the "spout" feature is admissible. Moreover, the "lower face" feature merely defines a (voluntary, undisclosed) limitation to an otherwise admissible claim. According to the Federal Court's earlier decisions concerning purely national German patents, such a situation should not lead to an automatic revocation of the patent. Rather, the undisclosed feature should be disregarded in subsequent novelty and inventive step discussions.

The Court decided that, instead of revoking the patent in full, justice is better served by disregarding the pertinent feature of an undisclosed limitation in novelty and inventive step considerations and taking the limitation into account only in the infringement trials. This approach constitutes a better balance between:

• the constitutional right of the patent proprietor to keep his or her property; and

• the interest of the public in revocation of faulty patents

 

The Federal Court, in its "wound treatment apparatus" decision, points out that Art. 138 EPC reads "European patent may be revoked with effect for a Contracting State only on the grounds that ...", meaning that the national courts have no obligation to revoke that patent, but if they intend to do so, it may only be based on the grounds listed in Art. 138 EPC.

In particular, the Federal Court held that the use of "may" in Art. 138 EPC opens the opportunity for a national court to not revoke a patent, even if one of the grounds laid out in Art. 138 EPC is fulfilled. This and the considerations above would justify not revoking the patent in cases like this.

Accordingly, the Federal Court referred the case back to the court of first instance for consideration of novelty and inventive step of a claim 1 without the "lower face" feature.

"Partially Reflecting Foil"

 

"Teilreflektierende Folie", X ZB 112/13 of 15 September 2015

This decision concerned the German part of European patent EP 799 436, claiming priority from a German utility model DE 295 15 073.

Claim 1 as maintained after an opposition reads

 

Use of an image projector (12), of a reflecting surface (18) and of a smooth transparent and partially reflecting foil (20) for representing moving images in the background of a stage or the like, so that a virtual image (26) is created from the reflected light in the background of the stage (28), and that the foil (20) has a surface area of at least 3 meters times 4 meters.

 

Fig. 3 shows an embodiment of the invention (labeled Fig 2 from the utility model.) The feature of the foil having a "surface area of at least 3 meters times 4 meters" ("area" feature) was not disclosed in the utility model application. Indeed, the utility model application did not disclose any value at all for the dimensions of the foil.

 

The "area" feature was introduced as a dependent claim in the European patent application.

 

If the feature were not originally disclosed in the first filing, the priority of the utility model could not be claimed, with the effect that the (already published) utility model would destroy any inventive step for the European patent.

 

However, the Federal Court found that the "area" feature was directly and unambiguously disclosed in the original utility application. For this, the Federal Court considered Figs. 2 (cf. above) and 4 of the utility model application and observed that from the proportion of the height of the lecturing person compared to the distance between the stage floor and the stage ceiling, it can be seen that the foil shown there has a height of at least 3 meters. From a similar argument, using a front view on the stage, a width of at least 4 meters was derived. Therefore, the Federal Court concludes that the priority claim was valid, so that the German part of the European patent should be maintained.

 

According to the principles developed by the EPO concerning direct and unambiguous disclosure, one may be surprised by this line of reasoning. Not only does the figure show apparent disproportionalities (cf. the size of the people in the audience and the size of the lecturer) so that one may argue that proportions cannot be derived from this sketch, but it is difficult to argue why the lower limit of the surface area should not be, say 3.2 meters times 3.9 meters.

 

Moreover, as an alternative argument, the Federal Court mentioned in passing that even if the utility model application did not disclose any limit to the surface area (apart from the limits deriving from the foil being deployable on a stage of usual size), a limitation to the region claimed in the "area" feature could be seen as an admissible limitation to a subregion. This too is surprising, as it would amount to accepting a seemingly arbitrary selection of a subregion from a non-disclosed general region.

 

Comment

 

Both decisions, escaping the seemingly "inescapable trap" and widening the meaning of "direct and unambiguous", are remarkable. The Federal Court seems to deviate deliberately from the standard practice developed by the EPO in order to arrive at results that do not deprive the patent proprietor entirely from his or her rights.

 

One is tempted to say that the Federal Court of Justice is more proprietor friendly than the EPO or at least tries to find solutions that appear to be fair to all sides rather than dogmatically correct.

 

With the advent of the Unified Patent Court, the Federal Court of Justice will eventually lose its responsibility for German parts of European patents. These recent developments may be seen as an effort to provide an alternative (national) route to patents which is, as compared to the European approach, is not so plagued with formalities and is directed more to the inventors' rights.

Advice

1. Using the German national route to patent protection, • in addition to a European patent or • instead of a European patent, may prove to be a smart option to arrive at an acceptable result.

Moreover, filing German national patent applications in parallel to European patent applications may become popular again, as the current amendments to the German law in relation to the ratification of the Unitary Patent foresee the coexistent of (German parts of) European patents and German (national) patents, with the ban of double patenting being abandoned. This will be discussed in a later edition of this newsletter.

2. File English-language patent applications in Germany – they will be examined in English.

Recently, the time limit to provide a translation into German of a patent application filed in English has been extended to 12 months. This means that the search and first examination of a patent application will have to be carried out based on the English text, as long as the examiner does not require an earlier translation. We can confirm that in a number of cases handled by Maucher Jenkins, the first examination has been carried out without a translation. For cases where an English language specification and claims have been drafted, this allows postponing of the decision as to whether a translation into German should be prepared, until the merits of the case have been considered.

3. Opting out of the soon-to-be-formed UPC for one's European patents may prevent the patent proprietor from unpleasant surprises that may occur if the strict approach of the EPO is applied (which the new UPC may well adopt).

 

Written by Cornelius Mertzlufft-Paufler, Partner