法律决定

20.10.2020: Federal Court of Justice (BGH) declares patent in suit null and void in its entirety - due to inadmissible extension

A patent shall not be declared invalid if the insertion of a feature not disclosed in the documents originally filed or not disclosed as belonging to the invention results in a mere limitation of the subject-matter of the application.

It is not a mere limitation in this sense, but an aliud, if the added feature relates to a technical aspect which cannot be inferred from the documents originally filed either in its concrete form or at least in abstract form as belonging to the invention.

Practical tip:

Contrary to the strict formal view of an "inadmissible broadening" under the EPC and the associated "inescapable trap", the Federal Court of Justice confirms its Aluid view, according to which invalidity of the patent can only be considered if there is no (explicit or abstract) indication of associated technical aspects or effects for the feature that is not clearly disclosed originally.

Accordingly, invalidity can (only) exist if the amendment is not accompanied by a concretisation but by an extension by a new technical aspect which is also not disclosed in abstract form in the documents originally filed.

This factual situation should be taken into account, for example, when deciding on the IP strategies in Germany and/or even the wording of the original application documents.