Pages 263-266

INFORMATION FROM THE CONTRACTING / EXTENSION STATES

DE Germany

Judgment of the Bundesgerichtshof (Federal Court of Justice), 10th Civil Senate, dated 5 December 1995

(X ZB 1/94)*

Headword: Corioliskraft (Coriolis force)

Article XI, Section 3(6), second sentence, IntPatÜG**

Section 3(4) PatG (Patent Law) 1981

Article 55(1) EPC

Keyword: "Period of grace - calculation"

Headnote

For the calculation of the six-month period of grace under Article XI, Section 3(6), second sentence, IntPatÜG - as with Section 3(4) PatG 1981 and Article 55(1) EPC - the dates to be taken into account are the priority date of an earlier patent application whose contents are prejudicial to novelty and the date of filing (not an earlier priority date) of the later patent application.

From the reasons

I. On 13 August 1986 the German Patent Office granted patent No. 28 33 037 (hereinafter: "patent in suit") (...) for the patent application filed on 25 July 1978, claiming the Union priority for an earlier application (...) of 25 July 1977. The respondent (hereinafter: "opponent"), amongst others, filed notice of opposition to the patent granted.

The opponent argued (...) that the contents of the earlier German patent application No. 28 22 087 (hereinafter: "citation") of 20 May 1978, published on 14 December 1978, were prejudicial to the novelty of the patent in suit; a Union priority date of 7 June 1977 is claimed for the citation.

(...) the German Patent Office revoked the patent in suit, stating that under the German Patent Law in force as from 1 January 1978, the citation prejudicial to the novelty of the patent in suit had to be taken into account in view of its priority. The patent proprietor filed an appeal against this decison (...). The Federal Patent Court dismissed the appeal. The patent proprietor's (...) appeal on a point of law is against that ruling.

II. The admissible appeal on a point of law is unsuccessful on its merits.

1. The appeal court dismissed the appeal on the grounds that the subsequently published citation with an earlier priority was prejudicial to the novelty of claim 1 of the patent in suit. The period of grace according to Article XI, Section 3(6), second sentence, IntPatÜG was of no benefit to the proprietor of the patent in suit, because the description in the citation was not made within the time limit of six months prior to the date on which the application for the patent in suit was filed. (...)

2. The appeal court was legally correct in examining novelty (...) on the basis of the Patent Law (...) in force as from 1 January 1978. On that (...) basis, the (...) ruling concluded that the subsequently published citation must be regarded as prior art vis-à-vis the patent in suit as a result of a legitimately claimed Union priority of 7 June 1977 within the meaning of Section 2(2) PatG 1978 (= Section 3(2) PatG 1981) (...).

3. (...) the appeal on a point of law unsuccessfully claims that the description in the citation based on the opponent's invention had been made within the period of grace and was therefore not prejudicial. (...).

The appeal court was right in calculating the six-month time limit from the day on which the application for the patent in suit was "filed", not its date of priority. This is in line with the law's wording and the prevailing view on the corresponding provisions of Section 2(4) PatG 1978 (= Section 3(4) PatG 1981) and Article 55(1) EPC (see Benkard, "PatG GebrMG", 9th edition, Section 3, point. 96; Schulte, "PatG", 5th edition, Section 3, point 96; Singer, "EPÜ" Article 55 point 2; Günzel, "Festschrift Rudolf Nirk", 1992, 441, 453; Swiss Bundesgericht BGE 117 II, 480 ff; finally also Bernhardt/Kraßer, "Lehrbuch des Patentrechts", 4th edition, Section 16 VI 1, 147 f; left open by EPO, decision of 1 July 1985 - T 173/83, GRUR Int. 1988, 246 - Antioxidans/Telecommunications1 ; viewed critically by Loth, "Gemeinschaftskomm. z. EPÜ", Article 55, point 62 ff; idem, "Neuheitsbegriff und Neuheitsschonfrist im Patentrecht", 1988, 302 ff; different view taken by Hoge Raad, Judgment of 23 June 19952 ) (...) In relation to Article 55(1) EPC this is confirmed by the stipulation in Article 89 EPC that the date of priority counts as the date of filing only for the purposes of Article 54(2) and (3) and Article 60(2) EPC; Article 55(1) EPC is not mentioned3. (...)

4. The appeal court was correct in calculating the six-month period of grace as from the priority date of the earlier application.

(a) The appeal court is right in regarding the citation's priority application of 7 June 1977 as the citation's decisive "description" under Article XI, Section 3(6), second sentence, IntPatÜG. (...)

(b) (...) The applicable law advocates - in broad terms at least - regarding a citation's priority application, not its later publication, as the "description" (...). Nor can doubts be raised as to whether the citation's priority application of 7 June 1977 should be regarded as the "description" required under the transitional arrangement on the basis of the provisions of Section 2(4) PatG 1978 (= Section 3(4) PatG 1981; Article 55(1) EPC). Under Section 3(4) PatG 1981 and Article 55(1) EPC, a "disclosure" of the invention (...) is not taken into consideration if inter alia it occurred "no earlier than six months" preceding the filing of the application. "Disclosure" should however be interpreted (...) as the presentation of the invention rather than its publication. Section 35(2) PatG 1981 and Article 83 EPC designate the description of the technical teaching (...) as the "disclosure" and refer to the (as yet) unpublished patent application. Another argument for interpreting the "disclosure" as the presentation of the invention is that under Section 3(2) PatG 1981 and Article 54(3) EPC (...) an (as yet) unpublished earlier patent application is also comprised in the (notional) state of the art. (...) Under Article 54(4) EPC earlier applications are only taken into consideration for the examination as to novelty if the territorial scope matches that of the earlier application. This confirms that the system is intended to help avoid double patenting. (...) This suggests that the purpose of the time limit prescribed in Section 3(4) PatG 1981 and Article 55(1) EPC is (...) to give the entitled person sufficient opportunity - particularly in the case of misuse - to file an application himself and, hence, that it is correct to refer solely to the age of the first application. (...)

5. (...) There is no sign of any intention to provide the lawful applicant with comprehensive protection for a period of more than six months prior to his later application (...).

DE 2/98