German Patent Law - Germany
Infringement of the patent:
In its recent decision "deaerator for milk collection equipment", the German Federal Supreme Court (FSC) has clarified with regard to patent claims which in addition to technical features also contain details as to the purpose, effect or function of those features. The decision concerned an infringement suit which had been filed by the Proprietor of a patent as well as a utility model concerning a deaerator for milk collection equipment. The patent had been upheld in nullity proceedings before the German Patent Court with a claim in which the essential features were that between the deaeration vessel and the vacuum pump placed, which is connected to the deaeration vessel by a valve and bypassing the line section between sel. The deaeration device was further characterised in that in the line section between the deaeration vessel and the foam collection vessel a valve had to be placed, which acted contrary to the valve present in the return line. The allegedly infringing embodiment contained valves in both lines as required by claim of the patent, but the electronic control of the valves did not allow a contrary action as required by the wording of the claim. The Appeal Court as the previous instance had affirmed an infringement of the patent based on the reasoning that it was sufficient for the realization of the feature "two contrary-action valves" that two valves are present at the required instances and that in principle, it was possible to install an electronic control by which the valves would be controlled so as to perform contrary action.
The FSC has now ruled that such a claim construction, as given by the Appeal Court ignoring the non-utilization of the functions contained in the claim is not correct. The Court emphasized that the scope of claim does not comprise devices with two valves in which such a functional connection is not given but may only be imposed on the device by the addition of a particular electronic control. On a more general basis, the FSC then stated that details as to purpose, effect or function can, as an element of a patent claim, be part of the latter functionj of distinguishing the protected subject matter from the state of the art, if they define the device to which they refer as one that must be designed in such a way that it can perform the function in question.
The present decision is an important one in both aspects the FSC gives a ruling on. First, the FSC has confirmed and further clarified its view of the interpretation of functional features in claims. Accordingly, a device does not fall under the terms of a claim if a functional feature is not fulfilled, in spite of the fact that all structural features may be fulfilled. This applies even if there may be a basic possibility to change the mode of interaction of the structural means so as to fulfill the required functions. The second aspect as pronounced by the FSC is also important, because in many inter-parties proceedings such as opposition, nullity or cancellation proceedings, the patent proprietor makes statements that some embodiments should not be regarded as falling under the scope of protection of a claim to improve his position versus the relevant prior art. The FSC has made clear that such statements should be considered as bringing at least between the two parties to opposition, nullity or cancellation proceedings which often takes place parallel to infringement proceedings. Thus, the defendant in an infringement action can now rely on the statement of the patentee or utility model Proprietor.
Inventive step for utility models:
In a recent decision concerning a cancellation action brought against a utility model, the German Federal Supreme Court made it clear that all attempts to define a different, lower standard in the assessment of inventive step for a utility model compared to the standard applied in patent matters are inadequate. The Court, first, considered that these attempts are possibly triggered by the different wording of the requirement of inventiveness in the Utility Model Act which requires an "inventive step" whereas in the Patent Act an "inventive activity" is required. However, in essence the Court came to the finding that for something to be inventive, it must have been non-obvious so that the standard to be applied in the assessment of an inventive step for a utility model is the same as in the assessment of inventive activity for a patent.
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