AKTUELLES

February 6, 2018
headline_digitalbook

The subject matter of a patent must not extend beyond the content of the application as filed. This also implies that the subject matter of a granted claim needs to be disclosed in the original application documents. The question whether or not this limitation is violated in a patent persists to be one of the most frequently raised issues faced in patent trials and was recently again investigated by the German Federal Court of Justice (BGH) in their Decision of November 7, 2017 – X ZR 63/15 – “Digitales Buch”.

According to the BGH’s established case law, the subject matter of a granted claim is disclosed in the original application documents if the combination of features in the claim under consideration had been disclosed in the application as filed as part of the invention claimed therein. What the application disclosed as its subject matter was not limited to the claims as initially filed. It had to be determined on the basis of the application as a whole. That means that the skilled person had to be able to derive the combination of features in the contested claim directly and unambiguously from the initial application documents as a possible embodiment of the invention (BGH, Decision of February 11, 2014 – X ZR 107/12 – “Kommunikationskanal”).

The criteria, in many cases, may turn out to provide more flexibility in rewarding claims to the patentee than the EPO’s approach because it allows an intermediate generalization of the invention in a claim to be admissible if (already) the claimed features all together, but also individually, support the success of the invention (BGH, Decision of November 8, 2016 – X ZB 1/16 – “Ventileinrichtung”). That is, if the success of the invention was already reached by a specific selection of claimed features (i.e. by an intermediate generalization), a feature not contributing to the success of the invention could be dropped.

The BGH’s digital book Decision of November 7, 2017 – X ZR 63/15 – “Digitales Buch” demonstrates that the “test” whether or not the claimed subject matter can be directly and unambiguously derived from the initial application documents as a possible embodiment of the invention may also exclude the admissibility of a generalization – in this case the broadening of the term “digital book” into “digital display device for reproduction of text and/or image information”.

The initial application stated that “the invention relates to a digital book, i.e. to a mobile display device that is in particular usable for the reproduction of book, newspaper and magazine contents and other electronic and digital specifications and publications … by lay users”. Further, the specification set out that a digital book according to the invention provides simple handling and allows reading literature containing an arbitrary number of pages with a lightweight and handy device. However, there was no explicit definition in the application of what was meant by the term “digital book”.

The BGH held that the term “digital book” is not synonymous with the claimed term “display device for reproduction of text and/or image information”, because the latter also encompasses display devices which could be handled in a different manner than a digital book as characterized in the application. While any digital book is a digital display device, not every digital display device could be termed a digital book.

The BGH then confirmed the assessment of the German Federal Patent Court (BPatG) that only digital books (but not digital display devices in general) are disclosed in the application as part of the invention described therein.

This finding was expressively not based on the fact that the initial claims were only related to a digital book. Further, this finding did expressively not rely on the circumstance that laptops or notebooks were described in the application as unsuitable for the intended purpose of the invention (since also some known digital books were described as insufficient in the description). But the BGH held that the first instance decision was correct in pointing out that it was crucial that all embodiments in the initial application documents were directed to a digital book and relied on the usability of the device as a digital book as understood within the scope of the description.

According to the BGH, if a specific feature is included in all embodiments in the initial application documents, the patentee is excluded from claiming protection for an embodiment without this feature given that means of the invention as claimed serve to solve a technical problem which requires the existence of the specific feature. Here, the BGH identified as the means of the invention as claimed an interface for current supply within a swivel joint for folding the casing of the digital book open and shut. These claimed means (interface for current supply within the swivel joint) were discussed in the description to allow better placing of the digital book on a table surface, to impart favorable symmetry and balance to the device and to reduce the technical appearance of the device. These statements in the description, according to the BGH, required that the disclosure of the invention was restricted to a device that can be handled similar to a (conventional) book.

As a consequence, only a digital book was disclosed in the application, but not a digital display device for reproduction of text and/or image information. The revocation of the German part of the European patent EP 1 659 501 B1 as ruled by the BPatG was confirmed.

As a note aside, this decision clearly does not mean that if all embodiments in the application documents include a specific feature, this feature has to show up in a patentable claim. In contrast, emphasis is placed on the condition that the specific feature needs to be required by such means of the invention as claimed which serve to solve the technical problem underlying the invention. Or, put differently, if there is no concrete relationship between the specific feature and the claimed means for solving the problem, the specific feature – even though included in all embodiments as disclosed – does not need to be a part of the claim.

In this case, however, as the BGH found that there was a concrete relationship between the specific feature (digital book) and the claimed means for solving the problem (interface for current supply within the swivel joint), the claim could not be broadened from a digital book to a digital display device for reproduction of text and/or image information.

This decision again underscores the importance of the description for determining the alterability of claim language. In particular, the decision gives guidance under which circumstances a feature used in a claim and implemented in all embodiments can or cannot be broadened.

May 15, 2017

PARTIAL PRIORITIES FOR “OR”- CLAIMS UNCONDITIONALLY ACKNOWLEDGED – THE EPO PUTS AN END TO POISONOUS PRIORITIES AND TOXIC DIVISIONALS

In its order for decision G1/15 the Enlarged Board of the EPO held that a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise may not be refused partial priority provided that the alternative subject-matter has been directly and unambiguously disclosed in the priority document. Importantly, the order adds that “no other substantive conditions or limitations apply in this respect”.

Why was this last statement added to the order and what does it mean? The earlier decision G2/98 is the key for an answer of these questions.

In G2/98 the Enlarged Board of Appeal had to decide under which circumstances a claim containing a combination of two features A, B can enjoy a partial (or multiple) priorities. The Board made a distinction between “AND”-claims and “OR”-claims. An “AND”-claim is directed to the invention A+B, and given a first priority document discloses the feature A while (only) a second priority document (or the application itself) discloses the features A+B, the Board concluded that an “AND”-claim cannot enjoy a partial priority from the first priority document, simply because the invention A+B was disclosed only at the date of the second priority document.

However, as to an “OR”-claim, given the first priority document discloses feature A and the second priority document (or the application itself) discloses feature B for use as an alternative to feature A, the Board concluded that a claim directed to invention A or B can enjoy the first priority for part A of the claim and the second priority for part B of the claim. The Board then added in G2/98 that “[I]it is further suggested that these two priorities may also be claimed for a claim directed to C, if the feature C, either in the form of a generic term or formula, or otherwise, encompasses feature A as well as feature B. The use of a generic term or formula in a claim for which multiple priorities are claimed … is perfectly acceptable …, provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters.”

Thus, for a non-generic “OR”-claim, i.e. a claim expressively spelling out the two (or more) alternatives A and B, the part A of the claim can enjoy the first priority and the part B of the claim can enjoy the second priority. However, as recognized by the Board, the question becomes more intricate if the claim is a so-called generic “OR”-claim directed to feature C which, though encompassing A and B, is not disclosed in the first priority document. For this case, G 2/98 seems to impose a condition as to whether or not the use of a generic term or formula (i.e. feature C) in a claim for which multiple priorities are claimed is acceptable, namely only if feature C gives rise to the claiming of a limited number of clearly defined alternative subject-matters.

Following G2/98 divergence emerged in the case law caused by an uncertainty as to whether the words “provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters” have to be interpreted as a further test to be complied with for a generic “OR”-claim to enjoy partial priority.

As an example, consider an earlier (priority) application disclosing a range of 1-10 for a quantity while a later application claiming priority from the earlier application claims a wider range of 1-11 for the same quantity. This wider range, though encompassing the range of 1-10, is not disclosed in the earlier application. Then, for purpose of assigning priority, could the wider range 1-11, as claimed in the later application, be regarded as being split into a first notional part specifying the range 1-10, which was entitled to the priority of the earlier application, and a second notional part of 10-11, which was entitled only to the priority of the actual filing date of the later application? Or must the wider range of 1-11 be interpreted as a continuum of a numeric range of values which does not correspond to distinctive alternative embodiments as required by G2/98? In the latter case not even partial priority could be acknowledged for the narrower range disclosed in the priority document.

Whether or not a generic term (such as a broadened range) can be conceptionally split into subject-matter disclosed in the priority document and complementary subject-matter for assessing priority could have severe consequences for the fate of the later application. If the earlier application was a European patent application, its publication would be detrimental to novelty of the subject-matter of the later application if no partial (multiple) priority was accepted. This was referred to as „poisonous priority“ in literature. Even more, a later filed divisional EP application could be used to invalidate the parent application if the parent application were not entitled to partial priority. This somewhat bizarre situation that a divisional could be used to invalidate its parent application was paraphrased with the key word “toxic divisional”.

The decision G1/15 now clarifies the concept of partial priorities and puts an end to poisonous priorities and toxic divisionals. With its determination that no other substantive conditions or limitations apply in respect of entitlement to partial priority other than direct and unambiguous disclosure in the earlier application, it will always be possible to rely on partial priority with the effect that self-collision is ruled out in future for (generic or non-generic) “OR”-claims.

Consider again the example of a later EP application claiming a broadened range of 1-11 and claiming priority of an earlier EP application which discloses only the range of 1-10. Self-collision is ruled out according to G1/15. As far as the subject-matter of the later EP application is disclosed in the earlier EP application (i.e. for the initial range of 1-10), the entitlement to partial priority protects the claim against a lack of novelty. As far as the subject-matter extends over the disclosure of the earlier EP application (i.e. for the complementary range of 10-11), the earlier EP application, though representing prior art, does not disclose this subject-matter and is therefore not relevant in view of novelty.

No other substantive conditions or limitations apply in respect to entitlement to partial priority other than the concept of disclosure – as is expressively stated in the order of G1/15. Therefore, there is no more room for divergent rulings in this respect. The decision will improve the consistency of jurisdiction at the EPO and eliminates a major pitfall in previous European patent practice.

January 1, 2017

Added Matter – Is It Permissible to Generalize or Abstract a Disclosure in EP and DE Patent Applications after Filing?

In a recent decision (BGH, Decision of November 8, 2016 – X ZB 1/16 – “Ventileinrichtung”) the German Federal Court of Justice (“BGH”) affirmed their divergent view on what is the content of the disclosure of a patent application from the European Patent Office.

In 2015, the German Federal Patent Court (“BPatG”) revoked the German patent DE 10 2006 006 439 in opposition proceedings on the ground that the subject matter of the patent was considered to go beyond the content of the application as filed. This finding was in line with an earlier judgement of the Opposition Division of the European Patent Office (EPO) relating to the European counterpart patent EP 1 986 874 that found that essentially the same claims as considered by the BPatG contained added matter not disclosed in the initial application documents.

The claims under consideration (DE 10 2006 006 439 and EP 1 986 874) related to a valve device for manually varying the level of an air-sprung vehicle. The claims included an operating element which can be adjusted by means of a rotational movement “into at least one lowering position”.

The Opposition Division of the EPO, in an interlocutory decision of October 23, 2012, pointed out that throughout the disclosure the operating element was always described to be adjustable in at least five positions, among them a lowering position, a raising position, two stop positions and a driving position. However, the patented claims, by referring to “at least one lowering position”, allow less or even more than these five positions. The Opposition Division therefore concluded that the claimed limitation of “at least one lowering position” was an inadmissible generalization of the disclosure.

This ruling of the EPO came as little surprise. According to EPO case law, a generalization is only permissible if it is “directly and unambiguously” derivable by a skilled person using common general knowledge from the initial application documents as a whole. According to the strict approach of the EPO, the example of five positions in which the operational element can be adjusted could only be generalized to the teaching of at least one position if this broader teaching as such was undoubtedly derivable from the disclosure of the invention as filed. According to the EPO, examples without indication of a generalization may not be considered a sufficient basis for a generalization.

In the opposition proceedings of the counterpart German patent, the first instance court BPatG did also not permit the inclusion of the above-mentioned generalization. The patent was revoked for containing added matter (BPatG, Decision of September 28, 2015 – 9 W [pat] 49/10).

But the BGH, on review, reversed this decision. An (intermediate) generalization of an example of the invention, the BGH found, can be admissible. In particular, the applicant is permitted to include only one or a specific selection of features of an example into the claim if these claimed features all together, but also individually, support the success of the invention. Following the BGH, it was “directly and unambiguously” derivable from the application documents as filed that the success of the invention did not depend on the number of positions for the operating element.

It is quite instructive to follow the BGH’s thinking to arrive at this conclusion. As a starting point, the BGH took a look on the problem underlying the invention. The BGH found the problem was to devise a valve device which can be designed with or without an automated reset for the operating element into a stop position, with only minor changes in design needed to implement or not implement the automated function.

The BGH conceded that the application did not expressively mention that the number of positions in which this resettable latching function is implemented was irrelevant for (the success of) the invention. However, in one example of the application the resettable latching function was achieved in two positions and in another example in four positions. From this, the BGH said, it follows that a skilled person would understand that the precise number of latching positions is of no relevance. As a consequence the application does not disclose a specific number of positions. Then, the BGH concluded, the application as a whole “directly and unambiguously” discloses that the invention encompasses valve devices having only one latching position.

This decision once again sheds light on the differences between the German and European practice in terms of what subject matter is within the “pool of disclosure” and what is outside this pool area. While the EPO concentrates on the language of the description – in the above case the EPO emphasized that the application always mentioned the latching position in plural – the German approach considers the relevance of the subject matter in question for the success of the invention in light of the problem to be solved. That way, an abstraction or generalization which is not literally disclosed in the application may nevertheless be “directly and unambiguously” derivable from the originally disclosure if the features which were omitted for the sake of abstraction or generalization were not crucial for the success of the invention.

Recommendations to the Practitioner

  1. Include support for abstractions and (intermediate) generalizations in the disclosure

The EPO, in practice, requires explicit mentioning of abstractions or (intermediate) generalizations in the disclosure as an adequate support for claim amendments. Therefore, use language such as, e.g., “may also be implemented with a smaller or a greater number of/degree of ….”or “one or more of the intermediate layers/parts may be omitted … “ to prepare the disclosure for rephrasing the claims to include abstractions or generalizations.

  1. Dual EP and DE applications strategy

The divergent EPO and BGH rulings may recommend a dual EPO and German patenting approach for at least some of the most important inventions.

  1. Branching off a DE utility model

Often, the desire for generalization or abstraction in EP claims looms up already during the examining proceedings when the disclosure of a specific example has to be exploited for claim amendment. In this case it might be too late to file a German subsequent application. However, there is still the possibility to branch off a German utility model to capture the abstraction or generalization which may prove to be unattainable via an EP patent.