5.4.2 Grounds for revocation
5.4.2.1 Lack of patentability
Pursuant to Section 21(1), in conjunction with Section 22(1), a German patent shall be revoked or declared null and void if it arises that the subject matter of the patent is not patentable according to Sections 1–5. These sections cover patent eligibility and statutory exclusions (Sections 1, 1a); ordre public, the cloning or genetic manipulation of humans, embryos or animals, plant or animal varieties, and methods of treatment of the human or animal body (Section 2); novelty (Section 3); inventive step (Section 4); and industrial applicability (Section 5). The very same applies to the revocation of a European patent with effect in Germany (with regard to the German part), pursuant to Article II(6) of the Act on International Patent Conventions.25 The subsections can only provide a very brief overview of these issues and will focus on aspects that have arisen in practice.
5.4.2.1.1 Lack of patent eligibility
Patents can only be granted for inventions in a technical field (Section 1(1)). The FCJ has defined a technical teaching in patent law as “a teaching to methodically utilize controllable natural forces to achieve a causal, perceivable result.26 Later, the Federal Supreme Court put the definition into perspective by stating that the concept of technology must leave room for future developments and therefore cannot be given a final definition.27 Today, the main applicability of Section 1 is in the field of computer-implemented inventions and business methods. While discoveries, scientific theories, mathematical methods, aesthetic creations, schemes, rules and methods for performing mental acts, playing games or doing business, as well as programs for computers and presentations of information, are specifically excluded from being “inventions” under Section 1, this exclusion only applies to the subject matter or activity “as such” and is generally construed narrowly. For example, the FCJ has decided that a mathematical method can only be considered nontechnical if it has no relation to the specific application of forces of nature in the context of the claimed teaching. Conversely, a sufficient connection to the specific application of forces of nature exists if a mathematical method is used for the purpose of gaining more reliable knowledge about the condition of, for example, an aircraft on the basis of available measured values and influencing the functioning of the system used to determine this condition.28
Currently, German courts examine the patentability of computer-implemented inventions and business-method-related patents using the following three-step approach:
- 1. Is at least part of the application in the technical field? (Section 1(1))
- 2. Is the subject matter of the patent a computer program as such (or business activity or mathematical method)? (Section 1(3), in conjunction with (4))29
- 3. If the application contains instructions that serve to solve a concrete technical problem by technical means, then examine for novelty and inventive step, but “nontechnical” features are not to be taken into account.
Most computer-implemented invention patents therefore pass the initial hurdle of patent eligibility, but an appreciable number of them fail on the inventive-step hurdle, particularly if the crux of the invention is “only” an improvement in the software or algorithm driving a certain technical system (such as a computer). The German approach is quite similar to the EPO’s “Comvik” approach,30 and the same applies to the results.
Conversely, German jurisprudence has no problem in patenting inventions that are (mainly) based on the discovery of a natural law, including the biological function of a DNA sequence or the like. The FCJ has decided that a teaching on a technical action that teaches the use of a discovery to bring about a certain success is amenable to patent protection irrespective of whether the teaching contains an “inventive surplus” over and above the purpose-directed use of the discovered natural law. This also applies to the provision of a nucleic acid sequence coding for a human protein.31
5.4.2.1.2 Lack of novelty
Section 3 of the German Patent Act substantially corresponds to Articles 54 and 55 of the EPC. An invention is deemed to be novel if it does not form part of the state of the art, which includes all knowledge made available to the public by any means before the date relevant for the priority of the application. Additionally, German, European and international applications with earlier relevant filing dates, and that have been made available to the public only after the date relevant to the priority date of the later application, also count as (fictitious) state of the art but only for the purposes of novelty (Section 3(2) and 4). Novelty of any substance or substance mixture included in the state of the art is not excluded when such is intended for use in a method for surgical or therapeutic application to the human or animal body or for diagnostic methods used on the human or animal body and when its use for such a process is not included in the state of the art (Section 3(3) and (4)).
In view of the identical statutory foundation, German courts have endeavored to bring their case law on novelty into harmony with that of the EPO. As a result, only small differences, if any, are still noticeable from time to time. Following the FCJ’s landmark decision in Olanzapin32 it is now established case law that a (prior art) disclosure may also include that which is not expressly mentioned in the patent claim or the description yet is plainly evident, from the point of view of a person skilled in the art, such that they are able to carry out the protected teaching and which therefore does not need to be specifically disclosed but will be “read in.” The inclusion of plainly evident subject matter, does not, however, permit that the disclosure be supplemented by expert knowledge. Instead, it only serves the purpose of full ascertainment of the content and its meaning – that is, the technical information, which the skilled reader will infer from the source against the background of their expert knowledge.33
A particularly interesting pair of decisions on the scope and boundaries of implicit disclosure in an Article 54(3) (fictitious) prior art document are the FCJ’s two decisions on a patent pertaining to a method of separating therapeutic blood-clotting proteins from human or animal plasma. In the first decision, the patent was maintained because the critical prior art document was found not to have implicitly disclosed a final lyophilization step, even though such a lyophilization step was considered as the “means of choice” and might “in most cases be nearly indispensable.”34 However, the FCJ found in this decision that the skilled person also had alternative means at their disposal to make a Factor VIII concentrate suitable for therapeutic use. The revocation action was, therefore, finally dismissed. However, an affiliated company of the claimant in the revocation action [hereinafter claimant], which the patentee had also sued for patent infringement, filed another revocation action based on the same ground and prior art reference. This time, the claimant succeeded on appeal, and the patent was declared null and void for lack of novelty.35 The FCJ found that the alternative it had recognized in its first judgment – filling the preparation into ampoules – was, in fact, no “alternative” but a preparatory step for the subsequent lyophilization, which was the common means at the priority date to secure a long-term therapeutic use. If it is apparent to a person skilled in the art, from the description of a process for the production of a protein concentrate suitable for therapeutic use, that further process steps are required to bring about therapeutic usability, then the measure that was the means generally used in practice at the priority date to achieve this goal is covered by the disclosure content of the publication.
5.4.2.1.3 Lack of inventive step (obviousness)
Pursuant to Section 4 of the Patent Act and Article 56 of the EPC, an invention is deemed to involve an inventive step if it is not obvious to a person skilled in the art from the state of the art. While the applicable statute is the same, the methodology for determining inventive step greatly differs between the EPO and the German courts. In particular, the German courts do not apply the EPO-specific problem–solution approach.
The starting point for evaluating inventive step, according to German jurisprudence, is any reference(s) that a skilled person would find realistic ante inventionem; there is no preference for a “closest prior art.” However, the choice of the starting point(s) should be justified.36
The problem underlying the invention should likewise not be defined by merely determining the difference between the invention and the closest prior art, because this would again be hindsight. Sometimes, it is plausible that the skilled person would have solved this problem; sometimes, the problem construed that way may be artificial. Generally, the German courts strive to define the problem in general and realistic terms and without hints to its solution.37 It is true, though, that the formulation of the problem is of relatively little impact on the final and determinative question of obviousness. The problem stated in the patent is not always relevant for the evaluation of obviousness; a different problem may also have suggested its solution to the skilled person.38
German case law on obviousness is both voluminous and complex and cannot be discussed in depth in a treatise like the present one. Particularly in chemical and biotechnology cases, the criterion of a reasonable expectation of success has recently been applied several times.39 Generally, a finding of obviousness requires that a skilled person would have arrived at the invention rather than that they merely could have done so,40 which means that the relevant state of the art must have contained a teaching, suggestion or motivation for arriving at the invention. Exceptionally, a person skilled in the art may also have reason to use, for solving the problem, a means that belongs to general technical knowledge and that could be considered for a multitude of applications. This requires that the use of the means is objectively suitable for solving the problem due to its functionality and that there are no special circumstances that make its use seem impossible, difficult or otherwise impractical from a technical point of view.41 The burden of proof for all these requirements is on the claimant.42 Secondary indicia may neither substantiate an inventive step nor replace a critical examination thereof.43
5.4.2.1.4 Others
Other grounds covered by lack of patentability – such as a lack of industrial applicability (Section 5), violation of ordre public (Section 2), exclusion of plant and animal varieties (Section 2a(1)(1)), exclusion of methods for the surgical or therapeutic treatment of the human or animal body (Section 2a(1)(2)) and so on – have played almost no role in practice so far.
5.4.2.2 Insufficient disclosure
A patent must be revoked or declared null and void if it does not disclose the invention in a manner clear and complete enough for it to be carried out by a skilled person (Section 21(1)(2), in conjunction with Section 22). Invalidations of patents in their entirety for this reason are fairly rare in Germany, where relatively high levels of skill are imputed to the skilled person, and it is recognized that one way to practice the invention is generally sufficient, even if many other ways that fall under a generic expression in a claim do not work.44 Also, broad functional claims (reach-through claims) have been approved by the FCJ in one case,45 contrary to the practice before the EPO. The FCJ’s generosity reaches certain limits in the case of claims containing open ranges that generalize the subject matter beyond the invention’s contribution to the state of the art.46 The degree of generalization that is permissible in this context depends, in each individual case, on whether the protection afforded by the respective version of the claim is within the scope of what, from the point of view of a person skilled in the art, can be inferred from the patent, taking into account the description and the embodiments contained therein, as the most general form of the technical teaching by which the problem underlying the invention is solved.47
5.4.2.3 Usurpation
According to Section 21(1)(3), a patent shall also be revoked if the essential contents of the patent have been taken from the descriptions, drawings, models, appliances or equipment of another or from a process used by another without the consent of said person (usurpation). However, this ground for revocation plays no role in practice since, in the case of usurpation, the entitled owner may also demand that the patentee assigns the patent to them (Section 8), and this is usually the more attractive means of redress.
5.4.2.4 Added matter
Section 21(1)(4), in conjunction with Section 22(1), stipulates that the patent shall be revoked or declared null and void if the subject matter of the patent extends beyond the content of the application as originally filed. Thus, the applicable provisions on added matter correspond to those enshrined in Articles 123(2), 100(c) and 138(1)(c) of the EPC.
Therefore, the jurisprudence of the German courts on added matter is, by and large, consistent with the EPO’s jurisprudence. In particular, both German and EPO decisions frequently refer to the “gold standard” for added matter, which is whether the amendments are directly and unambiguously derivable from the application as filed.48 Nonetheless, the concept of “direct and unambiguous” disclosure in Germany is interpreted more broadly and seeks to avoid unduly limiting the applicant or patentee in exhausting the disclosure content of either the application as filed or the priority application, if priority is at stake.49 Moreover, German courts spend considerable effort to carefully construe the claimed subject matter, sometimes even against its literal wording, when it results from a description that two terms in the claims are to be substituted for each other, which may help against an added-matter attack.50
Under German case law, not only the original claims and the general description but also the examples and drawings can, in principle, be used as the basis for an amendment, since they are considered part of the application’s disclosure. The main question to be asked is whether the feature to be included in the claim can be seen as a possible embodiment of the invention. Therefore, an amendment made by taking one feature from an example, rather than limiting the claim to the example as a whole, is allowable as long as it appears from the patent claim or the application as filed that the new combination of selected features is a possible embodiment of the invention.51 The same test is applied in cases of generalizations from drawings.
The FCJ’s jurisprudence is certainly much less formalistic compared to the EPO when it comes to limitations from numerical ranges in the application as filed. A numerical range is generally considered to disclose all possible intermediate values between the lower and upper limit – that is, every value and subrange within that range is equally disclosed.52 The FCJ is also less formalistic than the EPO when it comes to admitting disclaimers and has found a pragmatic solution for cases in which a patent application has been limited by an unallowable amendment during prosecution and is attacked later in opposition or revocation proceedings. While, in the EPO, this situation may put the patentee in an “inescapable trap,” where no option remains that ensures compliance with both Article 123(2) and 123(3) of the EPC, German jurisprudence still offers a solution: if the insertion of a feature that has not been disclosed in the application as filed results in a mere restriction of the protected subject matter, then the feature in question can remain in the claim but may not be relied upon in support of patentability.53 If, by contrast, the inserted feature deals with an aspect that has not been disclosed in the application as being part of the invention at all (aliud), the patent must be revoked or declared null and void.54