Germany: What happens when prior art is described in a patent?

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Germany: What happens when prior art is described in a patent?

In the decision Scheinwerferbelüftungssystem (X ZR 16/17), the German Federal Court of Justice was concerned with the issue of claim interpretation in terms of prior art described in the patent. As a general principle, highlighted in the decision, it must be considered for claim interpretation that a patent with its teaching seeks to delimit itself from prior art described therein. In particular, if the content of a state of the art description is equated with the preamble of a patent claim, the features of the characterising portion must, in case of doubt, not be construed as being part of the subject matter of the state of the art from which they shall differ.

Such claim interpretation finds its legal basis in the second sentence of paragraph 14 of the German Patent Act (corresponding to Article 69(1) EPC), hence "the description […] shall be used to interpret the claims". Prior art described in the patent has also been considered in claim interpretation in several previous decisions of the German Federal Court of Justice (e.g. BGH X ZR 37/76 - Stromwandler, BGH X ZR 45/85 - Befestigungsvorrichtung, BGH X ZR 25/06 - Insassenschutzsystemsteuereinheit). The interpretation rule developed in the present decision (the patent seeks to delimit itself from the prior art described therein) seems therefore to be in line with prior Supreme Court case law. According to the reasoning of the present decision, this interpretation rule seems to be derived from a principle set forth in a decision of the High Court of England and Wales (RPC 1995, 705; GRUR Int. 1997, 373ff., in extracts).

The present decision was made in patent nullity proceedings. Thus, a claim interpretation, applying the principles developed in the present decision, might be possibly in favour of the patent owner. A narrower interpretation of the claimed subject matter might lead to a delimitation from the state of the art cited by an opponent. At the same time, it is logical that that the interpretation rule employed in the present decision might be applicable to claim interpretation in infringement proceedings. In the worst case scenario for a patent owner, applying the interpretation principles employed in the present decision could lead to a narrower scope of protection and even exclude infringing matter. Admittedly, the foregoing scenarios are extreme ones. Moreover, the interpretation rule is only applicable when there is doubt. It is therefore unlikely to be sensible to draw general conclusions from this decision about the extent of acknowledging prior art when drafting a patent application or during the examination proceedings, since it is impossible to predict if one of the aforementioned scenarios will occur.

Trautmann

Martin Trautmann


Maiwald Patentanwalts- und Rechtsanwalts-GmbHElisenhof, Elisenstr 3D-80335, Munich, GermanyTel: +49 89 74 72 660 Fax: +49 89 77 64 24info@maiwald.euwww.maiwald.eu

more from across site and SHARED ros bottom lb

More from across our site

Tim Gilman, who joined Kasowitz alongside three other partners, says he is excited to be part of the firm’s ‘elite’ litigation team
A backlash against a White House video promoting deportation and Casalonga opening a new office in Düsseldorf were also among the top talking points
The firm has brought on board two counsel and an associate to complement two previously revealed partner hires
Bradford Newman, who has joined the firm’s new Silicon Valley office as head of complex technology disputes, discusses plans to build the practice group and attract local talent
Managing IP summarises the highlights from the IP STARS rankings for copyright and IP transactions work, the final firm rankings release of the year
Developments included the first judgment from the Nordic Baltic division, an injunction covering the UK, and a new code of conduct
Alston & Bird acted for InterDigital, while Samsung was represented by Fish & Richardson, during the arbitration process
Powell Gilbert lawyers reveal how they navigated parallel EPO proceedings and collaborated with European peers to come out on top in the Nordic-Baltic Division’s first judgment
The firms posted increases in revenue and profit per equity partner, with both giving a nod to their IP expertise
EasyGroup, the owner of the easyJet airline, said in a press release that UK-based first-instance judges are “less experienced”, bringing a long-running debate back to the fore
Gift this article