Germany: German Federal Supreme Court On The Consequences Of Originally Non-Disclosed Features In A Patent Claim In Opposition Proceedings

Last Updated: 11 May 2011
Article by Joachim Mader

German Federal Supreme Court On The Consequences Of Originally Non-Disclosed Features In A Patent Claim In Opposition Proceedings (Decision Of October 21, 2010 – Case Xa ZB 14/09 – Winkelmesseinrichtung/Angle Measuring Device)

A feature which was not disclosed as belonging to the invention in the originally filed documents and the deletion of which would lead to an extension of the scope of protection may remain in the patent claim if the introduction of this feature leads to a limitation in view of the content of the application.

A limitation in this sense is given if the added feature specifies a directive for technical actions which is disclosed as belonging to the invention in the originally filed documents.

In such cases it is generally not necessary to include a corresponding hint in the patent specification that no rights may derive from the addition of this feature.

According to Section 21 (1) No 4 PatG (German Patent Act) a patent has to be revoked, if its subject matter extends beyond the content of the patent application as originally filed. According to Section 21 (2) PatG, the patent is to be upheld with a corresponding limitation if the reason for revocation only relates to a part of the patent. On the other hand, according to Section 22 (1) PatG, it is not allowed to amend a granted pa-tent in such a way that the scope of protection thereof is extended in comparison to the version as granted.

In the decided case, German patent 195 49 795 was attacked in opposition proceedings inter alia with the argument that claim 1 as granted contained several unallowed amendments. In the course of the opposition appeal proceedings, claim 1 as granted was upheld in amended form and an additional hint was included in the pa-tent specification that certain features of claim 1 contain unallowed amendments to clarify that the features in question may not be considered for the discussion of patentability.

The German Federal Patent Court allowed the appeal to the Federal Supreme Court to answer in particular the questions if and under which circumstances a hint may be included in the description of the patent clarifying that certain parts of the patent claim represent an unallowed amendment, and to relieve the patent from the legal effects of such unallowed amendments. In the opinion of the Patent Court, these questions are of particular importance in view of the case law of the Enlarged Board of Appeal of the European Patent Office which does not consider the solution preferred by the German case law (i.e. adding a hint in the specification) as being in accordance with the regulations of the European Patent Convention.

The appeal of the opponent before the Federal Supreme Court was successful and the case was referred back to the Patent Court. According to the ruling of the Federal Supreme Court, the Patent Court did not sufficiently evaluate whether the illegitimately introduced features of the claim represent a mere limitation compared to the content of the application as originally filed, or whether these features represent a different invention, a so-called "aliud". The Federal Supreme Court affirmed the legal practice (BGH, GRUR 2001, 140 – Zeittelegramm) that an originally non-disclosed feature may remain in the patent claim if it results in the limitation of the subject matter of the application.

If the originally non-disclosed feature is not just a limitation but is indeed directed to a different invention, i.e. if the patent protects something which represents an "aliud" in view of the originally filed documents, then this feature must not remain in the claim. In this regard, the Federal Supreme Court clarified the meaning of the expression "limitation". According to the Federal Supreme Court, a limitation is given if the added feature specifies a teaching for technical action, which in the originally filed documents was disclosed as being part of the invention. In such a case, the Supreme Court further ruled, a corresponding hint in the description of the patent is not absolutely necessary, although it is generally not objectionable.

The Federal Supreme Court also commented on the corresponding situation before the European Patent Office. The Federal Supreme Court acknowledged that the German practice may lead to deviating results, at least in the case that a non-disclosed feature represents only a limitation when compared to the practice of the European Patent Office. However, the Supreme Court did not follow the ruling of the Enlarged Board of Appeal of the European Patent Office since the wording of Section 21 (1) PatG does not contain any explicit regulation for cases in which the necessary deletion of an originally non-disclosed feature from a claim would create a new reason for revocation of an unallowed ex-tension of the scope of protection of a granted claim.


With the reported decision the Federal Supreme Court clarifies that the case law developed for unallowed amendments in patent claims in German nullity proceedings is also applicable for German opposition proceedings. Thus, an originally non-disclosed feature may remain in a patent claim if the same represents a mere limitation compared to the originally filed subject matter. In this respect, the Supreme Court now clarifies that a limitation in this sense is present if the added feature specifies a teaching for technical action which was disclosed in the originally filed documents as belonging to the invention.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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