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23.02.2018

Germany: Invalidity due to inadmissible extension of claim (FCJ X ZR 63/15 – digital book)

Once the patent application has been filed, the maximum scope of protection is also set. It is not only important to have the right wording of the claims. Claims may well be changed during the course of the examination. Also important is the description, because it defines what one has to be understand to be part of the invention. In its judgment "digital book" the FCJ deals with the question under which circumstances the originally terminology may be generalized.

The parent application concerned a so-called digital book and the originally filed claim also explicitly used that wording as a generic term.

The patentee filed a divisional application, which resulted in a further patent. This uses as a generic term "display device in particular for the reproduction of text or image information". In the preamble the claim speaks of a housing, that is "to be opend and closed book-like around a folding axis of a swivel joint". The distinguishing feature is a plug in the swivel for power and / or data signals.

The specification has no definition of the term "digital book".

An action for annulment was brought against this patent. The Federal Patent Court (FPC) came to the conclusion that the patent would be valid only in its limitation to a "digital book" (auxiliary request II). The more general claim defended in the main request would go beyond the content of the original disclosure and would therefore be inadmissible.

The patentee appealed. The FCJ rejects the appeal and confirms the verdict of the FPC. He states that in the claim does not show the distinction that is emphasized in the description, namely the difference between the non-inventive large, difficult-to-use devices such as laptops and notebooks on the one hand and the inventive, easier-to-use devices such as digital books on the other hand. Therefore, the claim goes beyond the content of the original patent application and is invalid.

The FCJ first deals with the principles.

The person skilled in the art must be able to derive the technical teaching formulated in the claim directly and unambiguously from the application documents.

It may well be that embodiments of the invention also include certain generalizations of the disclosed examples. This is the case e.g. when of several features of an embodiment, only a few particular features are included in the claim, as long as these particular features are favorable to achieve the inventive success.

Also, a generalization of the disclosed teaching is not precluded by the original claim being limited to digital books.

Furthermore, a generalization is not excluded by the fact that all embodiments relate to a particular feature, here a "digital book".

However, because the means provided in the claim serve to solve a problem which requires the use of a digital book, only digital books have been disclosed as belonging to the invention.

With respect to the specific disclosure of the patent specification, the FCJ remarks the following:

Even though the patent specification as a whole does not contain an exact definition of the characteristics of a digital book or makes statements about the size, weight and of the functionality of the operating elements, it can nevertheless be deduced from the objective that only that device is considered as a digital book within the meaning of the patent , which, due to the totality of its features, enables a handling comparable to that of a conventional, not too voluminous and heavy book.

The term "display device for reproducing text or image information" used in the claim is not synonymous with "digital book". Rather, the term as claimed is broader and includes display devices that are not capable of being used like a book. This not only corresponds to the general understanding but also to the understanding of the patent specification. Thus, in several places the description expresses that a digital book falls under the term display device. On the other hand, it is nowhere apparent that the terms should be synonymous.

Also the further features in the claim do not lead to the subject matter of the claim being limited to a "digital book". Thus, e.g. the feature that "the housing has a main part and a side part" is satisfied not only in a digital book but also in a different device.

Since the claim does not list further requirements, such as e.g. that the device is easy to handle, and allows easy operation or that the two parts can be separated from each other it cannot be concluded that the claim meaning as a whole limits the claim to a digital book.

The claim thus goes beyond the original meaning of the application.

Note: This judgment shows that what counts is not only the choice of technical term, but also how the invention is delineated in the description from the prior art and what is presented as a problem to be solved. An inaccurate formulation in the patent application can usually no longer be improved in the course of the examination procedure.