28/05/2024
The present decision BGH X ZR 127/21 – “Trägerelement” can be seen as a welcome departure from the earlier German solo approach to the question of disclosure within the European practice. Disclosure is one of the most important, if not the most important, criterion of patent law, as it directly affects all requirements of a patent, most dominantly novelty and allowability of amendments, but also inventive step, clarity and sufficiency of disclosure.
In 2015, the German Federal Court of Justice (“Bundesgerichtshof”, abbreviated “BGH”) issued a much-noticed and debated decision on the question of disclosure. The decision BGH X ZR 112/13 – “Teilreflektierende Folie” represented to some extent a certain deviation from European case law.
In the decision, not explicitly disclosed values were derived from a patent figure and were consequently considered to be disclosed in the application even with a specific, figure-derived value. The way the patent figures were quantitatively analysed to extract specific values was seen to be in contradiction to the case law of the Boards of Appeal of the EPO, which stipulates to interpret figures of a patent only schematically. The decision of the Federal Court of Justice of Germany at that time also conflicted the established case law of the Boards of Appeal of the EPO on the question of disclosure of non-explicitly disclosed values as endpoints of claimed ranges, T 1990/10 and T 985/06. The Boards of Appeal established the view that any boundaries or endpoints of ranges must always be specifically disclosed.
In the present decision BGH X ZR 127/21 – “Trägerelement”, a convergence with European case law towards a somewhat more restrictive view of the disclosure can already be seen in the headnote of the decision .
The headnote of the decision reads as follows:
“A citation which specifies a minimum value of 1.0 µm for a certain parameter and describes embodiments in the range up to 4.4 µm does not automatically disclose the teaching to set the minimum value at 10 µm”.
This time, in contrast to the previous 2015 decision, the BGH now applied a more stricter standard, in line with European practice, for the question of what is disclosed, and the German court considered a distinctive minimum value undisclosed in the prior art as being novel and, in combination with a technical advantage, ultimately also as involving inventive step.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
