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  • Recent Developments in German Patent Case Law 1/64

  • Recent Developments inGerman Patent Case Law

    Taipei 18 October 2012Taipei 18 October 2012

    Dr. Peter Meier-BeckPresiding Judge,

    Bundesgerichtshof (Federal Court of Justice)Honorary Professor,

    Heinrich-Heine-Universitt Dsseldorf

  • Patentability

    Disclosure

    Topics

    Recent Developments in German Patent Case Law

    Disclosure

    Claim Construction and Scope of Protection

    Patent Infringement

    Procedural Issues

    3

  • I. Patentability

    Recent Developments in German Patent Case Law 4

    I. Patentability

  • According to European and German patent law,there are only two criteria which an invention hasto meet for patent protection:

    patentability of its subject-matter

    sufficient disclosure.

    Invention

    Recent Developments in German Patent Case Law 5

    sufficient disclosure.

    Patentable is

    an invention (i.e. a technical teaching) which

    is new,

    involves an inventive step, and

    is susceptible of industrial application.

  • According to Art. 52(2) EPC the following inparticular shall not be regarded as inventionswithin the meaning of Art. 52(1) EPC:

    discoveries, scientific theories and mathematicalmethods;

    Invention

    Recent Developments in German Patent Case Law 6

    methods;

    aesthetic creations;

    schemes, rules and methods for performingmental acts, playing games or doing business,and programs for computers;

    presentations of information.

  • Art. 52(2) EPC shall exclude the patentability ofthe subject-matter or activities referred totherein only to the extent to which a European

    Invention

    Recent Developments in German Patent Case Law 7

    therein only to the extent to which a Europeanpatent application relates to such subject-matter or activities as such.

    The provision does not define which subject-matters are not "patent eligible".

  • A computer implemented invention relates toa technical teaching if the invention is embeddedin a technical device or process.

    Although relating to a technical teaching, a

    Invention

    88

    Although relating to a technical teaching, acomputer programme shall not be regarded asan invention if no specific technical problemis solved by technical means (Art. 52(2c)EPC).

    Recent Developments in German Patent Case Law

  • BGH, 22 April 2010 Xa ZB 20/08, GRUR 2010, 613 Dynamische Dokumentengenerierung (Method forDynamic Document Generation)

    A technical problem is solved by technical means if

    Invention

    99

    A technical problem is solved by technical means if

    a computer program is determined by technicalfacts outside the computer which runs the program(e.g. Anti-Lock Braking System) or

    the structure of the computer program isdetermined by technical limitations of the computeritself (e.g. poor storage capacity).

    Recent Developments in German Patent Case Law

  • European Patents shall not be granted in respectof methods for treatment of the human oranimal body by surgery or therapy anddiagnostic methods practised on the human oranimal body.

    Exclusions

    1010

    animal body.

    This provision shall not apply to products, inparticular substances or compositions, for use inany of these methods (Art. 53(c) EPC).

    Recent Developments in German Patent Case Law

  • EBA-EPO, 15 February 2010 G 1/07, O.J. EPO 2011,134 Treatment by surgery/MEDI-PHYSIC

    A claimed imaging method, in which, when carried out,maintaining the life and health of the subject is

    Exclusions

    1111

    maintaining the life and health of the subject isimportant and which comprises or encompasses aninvasive step representing a substantial physicalintervention on the body which requires professionalmedical expertise to be carried out and which entails asubstantial health risk even when carried out with therequired professional care and expertise, is excludedfrom patentability as a method for treatment of thehuman or animal body by surgery pursuant to Article 53(c) EPC.Recent Developments in German Patent Case Law

  • Novelty requires a new technical teaching.

    An invention may be based on the discovery ofa natural biological mechanism. The discoverymust not be disregarded because it is not "patent

    Novelty

    Recent Developments in German Patent Case Law 12

    must not be disregarded because it is not "patenteligible".

    Nevertheless the discovery as such does notestablish a new technical teaching.

  • BGH, 9 June 2011 X ZR 68/08, GRUR 2011, 999 Memantin (Memantine)

    The discovery of the function of an active agent whichserves as an antagonist against a pathologic status (in

    Novelty

    Recent Developments in German Patent Case Law 1313

    serves as an antagonist against a pathologic status (inthis case: excessive influx of calcium ions via N-methyl-D-aspartate receptor channels), linked to a certaindisease (Alzheimer's disease), cannot establish a newtechnical teaching if treatment of patients suffering fromsaid disease for abatement of symptoms was known inprior art and neither a new dosage regime is taught nora group of patients so far not treated with the agent isdisclosed to be a responsive group.

  • An invention shall be considered to be new if itdoes not form part of the state of the art (Art.54(1) EPC).

    The state of the art shall be held to comprise

    Novelty

    1414

    The state of the art shall be held to compriseeverything made available to the public bymeans of a written or oral description, by use, orin any other way, before the date of filing of theEuropean patent application (Art. 54(2) EPC).

    Recent Developments in German Patent Case Law

  • Paragraphs 2 and 3 shall not exclude thepatentability of any substance or composition,comprised in the state of the art, for use in a

    Novelty

    1515

    comprised in the state of the art, for use in amethod referred to in Article 53(c), providedthat its use for any such method is notcomprised in the state of the art (Art. 54(4)EPC).

    Recent Developments in German Patent Case Law

  • Paragraphs 2 and 3 shall also not exclude thepatentability of any substance or compositionreferred to in paragraph 4 for any specific use

    Novelty

    1616

    referred to in paragraph 4 for any specific usein a method referred to in Article 53(c), providedthat such use is not comprised in the state of theart (Art. 54(5) EPC).

    Recent Developments in German Patent Case Law

  • EBA-EPO, 19 February 2010 G 2/08, O.J. EPO 2010,456 Dosage regime/ABBOTT RESPIRATORY

    Where it is already known to use a medicament totreat an illness, Article 54(5) EPC does not exclude

    Novelty

    1717

    treat an illness, Article 54(5) EPC does not excludethat this medicament be patented for use in a differenttreatment by therapy of the same illness.

    Such patenting is also not excluded where a dosageregime is the only feature claimed which is notcomprised in the state of the art.

    Recent Developments in German Patent Case Law

  • Patentability also requires an inventive step.But:

    What must be examined is not the inventive stepbut obviousness. If there is no evidence for

    Inventive Step

    1818

    but obviousness. If there is no evidence forobviousness an invention shall be consideredas involving an inventive step.

    Recent Developments in German Patent Case Law

  • The ability of a skilled person to find the solutionto the problem underlying the invention is anecessary but not sufficient condition of

    Inventive Step

    Recent Developments in German Patent Case Law 1919

    necessary but not sufficient condition ofobviousness.

    What is decisive is whether the inventor'sconsiderations were suggested or motivatedby prior art and his or her general knowledge(cf. US TSM test).

  • BGH, 30 April 2009 Xa ZR 92/05, 182 BGHZ 1 = GRUR2009, 746 Betrieb einer Sicherheitseinrichtung(Operating a Safety Device)

    A solution of a technical problem which breaks new

    Inventive Step

    2020

    A solution of a technical problem which breaks newground generally cannot be considered to be obviousunless there were some hints, suggestion, ormotivation by prior art for breaking that ground.

    Recent Developments in German Patent Case Law

  • Suggestion cannot be substituted by the mereabsence of obstacles.

    But: An explicit pointer to the solution in a pieceof prior art is not necessary. Implicit hints may

    Inventive Step

    21

    of prior art is not necessary. Implicit hints maybe sufficient.

    The assumption that the addressed skilledperson would have consulted other experts ofdifferent skills has also to be justified.

    Recent Developments in German Patent Case Law 21

  • BGH, 20 December 2011 - X ZB 6/10, GRUR 2012, 378 Installiereinrichtung II (Installation Means II)

    It depends on the individual case and all of its relevantfacts to which extent and detail the skilled person

    Inventive Step

    facts to which extent and detail the skilled personneeds suggestions by prior art in order to advance aknown technical concept.

    Apart from explicit pointers characteristic featuresof the concerned field of technology, education andgeneral knowledge of persons skilled in the art, bestpractice, construction or application needs, and evennon-technical demands may suggest furtherdevelopment.

    Recent Developments in German Patent Case Law 22

  • BGH, 24 July 2012 X ZR 126/09, juris Leflunomid(Leflunomide)

    A c

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