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

A settlement between Philips and Transsion and a loss for AstraZeneca in the UK were also among the top talking points
Working with Harvey and Microsoft, the firm has been at the forefront of developing AI tools for its lawyers, and is now exploring new projects and business models
The Emotional Perception AI case, which centres on the patentability of an artificial neural network, will be heard next week
Developments included a court order related to InterDigital’s anti-anti-suit injunction against Disney, and clarification on recoverable costs
Partners at Foley Hoag examine how recent CJEU jurisprudence may serve as a catalyst for recalibrating US judicial reluctance to entertain foreign patent claims
International law firms have high hopes for their IP practices in Saudi Arabia, with many opening offices, but recruiting and retaining talent in the Kingdom presents unique challenges
Patrick Ogola joins us for our ‘Five minutes with’ series to discuss helping African entrepreneurs on the global stage, and explains why young lawyers should speak up
Heli Pihlajamaa, the EPO’s principal director for patent law and procedures, joins us to take stock of the unitary patent following its second anniversary
Kelly Thompson, chair of South African firm Adams & Adams, discusses self-belief, self-doubt, and the importance of saying yes
The renowned food brands were represented by a host of lawyers, including members of the firms’ IP teams
Gift this article