Germany: Claim interpretation if preamble equates to state of the art

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

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

Germany: Claim interpretation if preamble equates to state of the art

When interpreting a patent claim, it must be taken into account that a patent's doctrine seeks to distinguish itself from the state of the art described in it. If the specification equates to known prior art with the claim's preamble, the features of the characterising portion of the patent shall – in case of doubt – not be regarded as being understood according to features which are found in the state of the art from which they currently should have been distinguished. (Guiding principle of the Court)

PatG § 14; EPÜ Art. 69; BGH X ZR 16/17 (BPatG) – Scheinwerferbelüftungssystem

The defendant was the proprietor of European patent 0 764 811, relating to headlamps of motor vehicles with a ventilation system, which had meanwhile expired. An action for annulment will continue to be admissible owing to the fact that a declaration of invalidity of the patent in dispute opened up the possibility for the plaintiff to bring an action for restitution against its judgment.

The description of the patent in dispute was adapted in the course of the grant procedure to note that the expert was aware of a ventilation system, according to the preamble of independent patent claim 1 from a French patent application belonging to the state of the art. In the course of the grant procedure claim 1 was changed into a two-part form. The characteristic part of claim 1 of the patent in dispute provides, inter alia, that the ventilation system forms a labyrinth, with a twofold change of direction of the ventilation path.

The plaintiff asserts that such a labyrinth, with a twofold change of direction, is shown in the French patent application cited, which is why the subject matter of the patent at issue is not patentable owing to a lack of novelty, or at least due to a lack of inventive step. The BPatG dismissed the request.

The nullity appeal was directed against this judgement and the plaintiff continued to seek the full nullity of the patent in dispute.

The BGH rejected the appeal.Consequently, in nullity proceedings a novelty attack based on prior art cited in the patent specification might, in case of doubt, not be successful if the prior art in the patent is equated with the preamble of the claim as explained in this decision. On the other hand, a restrictive interpretation of the claims can be made in equivalent cases for infringement proceedings

tegeder-volker.jpg

Volker Tegeder


Maiwald Patentanwalts- und Rechtsanwaltsgesellschaft mbHElisenhof, 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

Lateral hires at Thompson Hine and Pierson Ferdinand said they were inspired by fresh business opportunities and innovative strategies at their new firms
The launch of a new IP insurance product and INTA hiring a former USPTO commissioner were also among the top talking points this week
The firm explains how it secured a $170.6 million verdict against the government in a patent dispute surrounding airport technology, and why the case led to interest from other inventors
Developments of note included the court partially allowing a claim concerning confidentiality clubs and a decision involving technology used in football matches
The firm said adding capability in the French capital completes its coverage of all major patent litigation jurisdictions as it strives for UPC excellence
Marc Fenster explains how keeping the jury focused on the most relevant facts helped secure a $279m win for his client against Samsung
Clients are divided on what externally funded IP firms bring to the table, so those firms must prove why the benefits outweigh the downsides
Rahul Bhartiya, AI coordinator at the EUIPO, discusses the office’s strategy, collaboration with other IP offices, and getting rid of routine tasks
A boom in transactional work and a heightened awareness of IP have helped boost revenue for the rebranded commercial services team
Clemens Heusch, head of global litigation and dispute resolution at Nokia, tells us why open conversations – and respectful challenges – lead to the best results
Gift this article