The patentability must be assessed by the BPatG, the Federal Court of Justice clarified in the leading principle decision ‘Bausatz’. The patent in dispute, a construction kit, had been attacked for inadmissible extension.
The contested patent concerns a construction kit consisting of a wall-mounted object and a fastening device provided for this purpose. According to the patent description, European Patent 1 338 711 (the litigation patent), which was granted with effect for the Federal Republic of Germany, offers a precise and secure fastening system, flexible in its application.
Patent in dispute declared invalid by BPatG
The applicant had claimed that the subject-matter of the patent in dispute was not patentable and had been improperly extended. This was because the patent proprietor had added as an additional feature to the granted version that the fastening device can be retracted.
Furthermore, the described examples of the patent provided for elastically deformable wings with hook-shaped ends in the pre-assembly housing. The Federal Patent Court (Bundespatentgericht, BPatG) had therefore not allowed any generalisation of the design examples described in the application with regard to the term ‘pre-assembly housing’.
And according to Art. II § 6 (1), IntPatÜbkG, a European patent shall be declared invalid with effect in the territory of the Federal Republic of Germany if its subject-matter extends beyond the content of the application as originally filed.
The patent proprietor’s appeal against this judgement was directed before the German Federal Supreme Court (Bundesgerichtshof, BGH), which decided on 13 February 2020 (X ZR 6/18).
BGH does not see any inadmissible extension
The BGH ruled in favour of the patent holder. Contrary to the opinion of the BPatG, the subject-matter of claim 1 in the version defended by the main claim is not based on an inadmissible extension. Furthermore, the BGH ruled that it was patentable.
Generalisation in examples is admissible
The BGH emphasized that the relevant content of a patent application must be determined on the basis of the entirety of the documents originally filed and is by no means limited to the subject matter of the claims formulated in the application. In addition, the court added that generalisations of examples of designs disclosed as to their origin were also permissible when exhausting the disclosure content.
Therefore, contrary to the opinion of the BPatG, it was not objectionable that patent claim 1 only generally provided for a pre-assembly housing for establishing a contact between sleeve and object. It is not important for the solution of the problem according to the patent description that the contact between the sleeve and the object to be suspended is established with pre-assembly means such as the elastic wings. An expert recognizes that the general teaching is only explained by means of pre-assembly means as an example, the BGH decided.
Therefore, the generalized form with the formulation “pre-assembly housing for establishing contact between sleeve and object” was rightly used, without mentioning the elastic wings.
‘Retractable’ was disclosed
The BGH also rejected the allegation of an inadmissible extension by the addition ‘sinkable’ with regard to the fastening device. As the Federal Patent Court had correctly decided, such a kit is already disclosed in the application documents in claim 12.
Patentability must be assessed by the BPatG
The dispute also has the special feature that the patent court, in its reference under § 83 PatG, dealt with the patentability of the subject matter of the patent in dispute and affirmed it, taking into account the arguments of both parties. In such a case, a decision of the BGH in the appeal nullity proceedings is relevant, the BGH clarified as a leading principle decision.
In patent nullity proceedings, according to the leading principle decision, if the decision of the Federal patent court is set aside by the Federal Supreme Court for lack of usefulness, the matter must regularly be referred back to the Federal patent court for new hearings and decisions if the patent court has not yet carried out an initial assessment of the state of the art from the point of view of patentability.
This was also already stipulated by the BGH in its Bitrate Reduction I ruling in 2015. This is because patentability is first to be assessed by the patent court, which is composed of technically competent judges.
Patentability was affirmed by the BPatG
In the present case, the subject matter of claim 1 was not obvious from the prior art. In particular, a pre-assembly housing according to the patent description had not been suggested by any of the publications cited, nor did it contain any suggestion for a retractable fastening device, the court explained. In this respect, patentability had rightly been affirmed by the BPatG.
The BGH therefore amended the decision of the Federal Patent Court of 7 December 2017. Therefore, European Patent 1 338 711 is declared invalid with effect for the territory of the Federal Republic of Germany to the extent that claim 1 goes beyond a version in which the word “retractable” is inserted before the word “fastening device” and the further claims are related back to the claim thus worded.
For the rest, the action was dismissed.
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