On 14 June 2016, the German Federal Court of Justice (X ZR 29/15 "Pemetrexed") confirmed
prior decisions in which it held that patent infringement under the
doctrine of equivalents can, in principle, not be assumed, if the
patent discloses various ways that a certain technical result
can be achieved, but only one of those possibilities has found its
way into the claims.
The Court held that if the wording of the claims is narrower
than what would have been necessary—considering the technical
contribution of the patented invention to the prior art—
competitors and other interested parties can rely on the
applicant's carefully chosen words. The patent holder is not
allowed to subsequently claim protection for something that he
deliberately chose not to protect. According to the Court, this
rule shall even apply when a person skilled in the art realizes
that the effects of the invention go beyond the technical matter
for which the applicant sought protection in the claims.
Also, embodiments that are not explicitly disclosed but that can
easily be identified by a person skilled in the art from the
specification are, in principle, excluded from equivalent patent
protection. The latter, however, ultimately depends on the
reader's perception of the patent document.
However, this principle, like every other in the field of IP
law, has its limits. It shall only apply to circumstances where the
patent document (explicitly or inherently) discloses more than one
embodiment. An extension of this principle to embodiments that were
available to a person skilled in the art only through a vague
indication in the specification would, in the eyes of the Court, go
too far because the availability of equivalent embodiments is a
necessary precondition for a finding of infringement under the
doctrine of equivalents. If these embodiments were also excluded
from the scope of protection one would never be able to establish
infringement by equivalence.
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On 8 September 2016 (C-160/15), the CJEU ruled that the posting of a hyperlink to copyright-protected works located on another website does not constitute copyright infringement when the link poster does not seek financial gain.
The chapter on the UK summarises the IP court and litigation system in the UK, recent developments in relation to IP law and practice, the forms and availability of IP protection and trends and outlook in the IP sphere.
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