Decision of the Federal Court of Justice dated 17 February 2015
(X ZR 161/12) [ 1 ]
Wound treatment apparatus
DE-LIPT (Law on International Patent Treaties) Article II.6(1), first sentence and point 3[ 2 ]
"Inadmissible extension" - "limiting feature" - "inescapable trap" - "footnote solution"
If a claim in a European patent valid in Germany contains a feature not originally disclosed as part of the invention, the patent is not to be revoked if the feature leads to narrower protection and not to different subject-matter ("aliud"). The feature not originally disclosed is to be ignored when assessing patentability, as it cannot support it (further to FCJ judgments of 21 October 2010 in Winkelmesseinrichtung (angle-measuring device) - Xa ZB 14/09, GRUR 2011, 40, points 18 ff. - and of 21 June 2011 in Integrationselement (integration element) - X ZR 43/09, GRUR 2011, 1003, points 24 ff.).
The defendant holds European patent 1 088 569, granted for Germany on the basis of a divisional application filed on 8 January 2001, which derives in turn from an international ("parent") application dated 14 November 1996, published by WIPO as WO 97/18007 and by the EPO as European patent application No. 865 304. The patent is for a portable wound treatment apparatus, and has five claims. Claim 1, on which the other claims directly or indirectly depend, reads as follows:
"Apparatus for applying negative pressure to a superficial wound in a mammal which comprises a porous pad (102) of open, intercommunicating cellular flexible foam, a pump (6), a suction tube (101) for connecting the porous pad to the pump (6), a connector for connecting the pad to the suction tube, a surgical drape (701) for forming an air-tight seal over the wound site, over the pad and over the connector, said connector having a spout (602) for connecting the end of the suction tube (101) remote from the pump (6) to the wound site, characterized in that the connector comprises a disc-like cup (601) having its lower face in contact with said porous pad."
Claimant 1 sought revocation of the patent in its entirety, claimant 2 of its claims 1 to 4. The claimants argued that the subject-matter of claim 1 was not patentable and had been inadmissibly extended ("added matter"). The defendant sought maintenance of the patent as granted or as per one of six auxiliary requests. The lower court revoked it.
The defendant is now appealing that decision, and seeks dismissal of the claimants' suits, or alternatively the patent's maintenance with limited claims. The claimants seek dismissal of the appeal.
Reasons for the decision
I. The patent is for a portable wound treatment apparatus.
II. The main reasons for the lower court's decision were as follows:
The patent was to be revoked in its entirety because all versions of its subject-matter extended beyond the content of the earlier application as originally filed. It was not derivable from the documents as originally filed that feature 1.7b, stating that the lower face of the disc-like cup comprised in the connector was in contact with the porous pad, was part of the invention. ...
Adding feature 1.7b did not merely limit the subject-matter of claim 1; it led to another teaching (aliud). The application as originally filed taught the skilled person that the disc-like cup was arranged in such a way that its edge was disposed onto the porous pad, but certainly not its lower face - which however was precisely what the added feature presupposed. All the auxiliary requests contained that feature, and were therefore not allowable. So there was no need to consider whether the further revocation ground of non-patentability also applied.
Ill. The Court cannot entirely endorse that assessment.
1. The lower court rightly concluded that the subject-matter of claim 1 as granted extended beyond the content of the parent application as originally filed.
(a) Under Article II.6(1), first sentence and point 3 LIPT, a European patent valid for Germany is to be revoked if its subject-matter extends beyond the content of the application as originally filed. That content is to be established on the basis of the originally filed documents as a whole. ...
(b) Characterising the apparatus for applying negative pressure to a superficial wound as comprising only a porous pad, a pump, a suction tube, a connector with a disc-shaped cup and a spout for connecting the pad with the suction tube, and a surgical drape constitutes an inadmissible extension (added matter). The apparatus according to the invention is not disclosed in this general form in the application documents as originally filed, i.e. the parent application in this case.
(aa) The parent application's description - like the patent in suit's - is based on international patent application WO 96/05873, which describes an apparatus said to be effective for treating a wide variety of differing types and sizes of wounds. However, patients might be required to undergo treatment on the apparatus for some time. If they were confined to bed, this might not be a major problem, but if they were mobile it meant they would be confined for long periods while the treatment took place. An object of the invention was therefore to provide apparatus which could be used more conveniently, especially by patients who were reasonably mobile, and which had certain further advantages apparent from the description. In the first place, the invention provided a portable therapeutic apparatus for stimulating the healing of superficial wounds …
The embodiments disclosed in the parent application are characterised firstly by portability (claim 1) and secondly by pressure-detecting means (claims 3 and 5). The connector is mentioned only in the context of pressure detection and of the second tube - additional to the suction tube - required for that purpose. The suction tube and pressure-detection tube can be combined in a multi-partitioned tube (parent application, bottom of page 5), and the connector's spout is sized to accept this multi-lumen tube.
(bb) From the above, it is not directly and unambiguously derivable that the claimed invention as described is also an apparatus for applying negative pressure to a superficial wound which does not comprise means either ensuring portability or for detecting pressure at the wound site, but which rather consists solely of a porous pad, a surgical drape, a pump, a suction tube and a connector connecting pad and suction tube and comprising a disc-shaped cup and a spout sized to accept the suction tube.
(c) The lower court therefore rightly concluded that claim 1 as granted involved added matter and could not stand. That the patent derives from a divisional application makes no difference; in such cases, the requirements to be met by the original disclosure are no less stringent.
2. However, the lower court's finding that former auxiliary request 6 (new), now put forward by the defendant as auxiliary request I, involved added matter cannot be upheld.
Auxiliary request I adds to claim 1 the further feature that the suction tube (101) is in the form of an internal bore (606) in a multi-lumen tube which also comprises conduits (607) enabling a transducer (108) to measure the pressure at the wound site (feature 6).
The lower court erred in holding that the defendant's defence as limited in this auxiliary request was not allowable.
(a) Additional feature 6 ensures that the subject-matter of claim 1 does not extend, for the reasons given above, beyond the content of the parent application. The generalisation which, as argued in point Ill.1 above, led to added matter no longer applies now that the claim includes a transducer 108 (as pressure-detecting means) and a second tube (comprising the conduits 607 of a multi-lumen tube) connecting pad and pump, and the connector's configuration has been contextualised in that the suction tube accepted by the spout forms the internal bore 606 of the multi-lumen tube.
(b) True, the statement in feature 4b that the disc-shaped cup's lower face is in contact with the porous pad adds matter to claim 1. But that does not render unallowable the defendant's limited defence as per auxiliary request I.
(1) It this Court's case law that German patents or utility models amended such that their subject-matter extends beyond the content of the application as filed need not be revoked if the amendment adds a feature which, although not disclosed in the original application, merely limits the scope of the claimed subject-matter. Revocation is on the other hand unavoidable if the amendment of the subject-matter in the application as filed leads to different subject-matter (aliud) (FCJ judgments of 5 October 2000 in Zeittelegramm (time string) - X ZR 184/98, GRUR 2001, 140; of 21 October 2010 in Winkelmesseinrichtung (angle-measuring device) - Xa ZB 14/09, GRUR 2011, 40; of 21 June 2011 in lntegrationselement (integration element) - X ZR 43/09, GRUR 2011, 1003; of 6 August 2013 in Tintenstrahldrucker (ink-jet printer) - X ZB 2/12, GRUR 2013, 1135). Having so far left open whether its case law applies to European patents too (FCJ, Winkelmesseinrichtung, loc. cit., point 19), the Court now holds - contrary to a Federal Patent Court ruling (of 8 April 2014 in Fettabsaugevorrichtung (liposuction device), Mitt. 2014, 436) - that it does.
(2) The thinking behind the Court's case law is that, where a patent's subject-matter has been inadmissibly amended as compared with the disclosure in the application as filed, there is no need to revoke it if the legitimate interests of third parties, in particular the patentee's competitors, can be protected by less drastic means.
It is thus unnecessary to revoke a patent if the subject-matter disclosed in the original application documents has been inadmissibly generalised, as the added matter can be removed by deleting the inadmissible generalisation from the claim (FCJ, Winkelmesseinrichtung, loc. cit., point 14; lntegrationselement, loc. cit., point 19; see also EPO Enlarged Board of Appeal decision G 1/93 of 2 February 1994 in Limiting feature/Advanced Semiconductor Products, GRUR Int. 1994, 842, point 11).
In contrast, there is no choice but to revoke a patent if, as a result of adding a feature not disclosed in the application as filed, the claim as granted is for an invention other than that in the application as filed, i.e. the patent protects something different from the subject-matter originally disclosed to the skilled person (FCJ, Zeittelegramm, loc. cit., 140, 141; Winkelmesseinrichtung, loc. cit., point 21; Integrationselement, loc. cit., point 27; Tintenstrahldrucker, loc. cit., point 16). Maintaining it in such circumstances would create legal uncertainty for third parties, who can legitimately expect that a patent will not be granted for subject-matter which is broader than or different from that disclosed in the application. Maintaining a patent contested in opposition or revocation proceedings, on condition that, although the added feature stays in the claim, the patentee cannot derive any rights from it, is not an option in such cases, because the patent as worded after such proceedings would then contain subject-matter different from that originally disclosed (FCJ, Winkelmesseinrichtung, loc. cit., point 23).
The patent need not be revoked, however, if an added feature not disclosed as part of the invention in the application as filed merely limits the claimed subject-matter. Then, even if the limiting feature is maintained in the claim, the public's legitimate interests can be protected by ensuring that otherwise no rights can be derived from the amendment and, in particular, that when assessing patentability the undisclosed feature is ignored because it cannot support it (FCJ, Zeittelegramm, loc. cit., 140, 142 ff.; Winkelmesseinrichtung, loc. cit., point 16; Integrationselement, loc. cit., point 24; Tintenstrahldrucker, loc. cit., point 16).
(3) The Court's case law is not incompatible with the EPC.
According to the case law of the EPO boards of appeal, if a limiting feature not disclosed in the application as part of the invention is added to a claim, the patent will as a rule be revoked under Articles 123(2) and 100(c) EPC. Where the feature falls under Article 123(2) EPC, it cannot be maintained in the patent or deleted from the claim without infringing Article 123(3) EPC. The patent can - exceptionally - be maintained only if there is a basis in the application as filed for replacing limiting features with others without infringing Article 123(3) EPC (G 1/93, loc. cit., points 12 ff.).
In deciding whether to revoke a European patent valid in Germany, both the Federal Patent Court and this Court apply Article II.6 LIPT rather than Article 123(2) and (3) EPC. The German legislature's adoption of Article II.6 LIPT transposed the Article 138 EPC grounds for revoking European patents as the basis for their revocation with effect for Germany. Article 138 EPC provides that - subject to Article 139 EPC - a European patent may be revoked only on the grounds exhaustively listed there. It thus precludes national courts from deciding to revoke a patent in the absence of any of those grounds but, on the other hand, enables them to dispense with revocation even when such a ground applies, without thereby contravening Article 123 EPC as interpreted by the Enlarged Board of Appeal.
(4) European patents too are not to be revoked if adding a feature not disclosed in the application as filed, or at least not disclosed as part of the invention, merely limits the subject-matter claimed.
The Enlarged Board conceded that its approach could operate rather harshly against applicants (G 1/93, loc. cit., point 13), because they risked being caught in an "inescapable trap" and losing everything by amending their application, even if the amendment limited the scope of protection. This Court's above-cited case law, by contrast, makes it possible to avoid revoking the whole patent - in keeping with the constitutionally guaranteed protection of property (Article 14 Basic Law), which includes the right to a patent and protects its owner from unnecessary state interference - without compromising the legitimate interests of third parties or the public. That justifies applying this case law to European patents too.
(5) The feature in claim 1 that the lower face of the disc-like cup is in contact with the porous pad merely renders more specific the technical teaching disclosed as part of the invention in the application as filed.
(a) Whether adding a feature not disclosed in the original application merely limits the claimed subject-matter or leads to an aliud depends on whether it simply renders more specific the technical teaching disclosed as part of the invention in that application or whether it introduces a technical aspect which would not have been understood to be part of the invention on the basis of that application, be it in that specific embodiment or even in abstract form (FCJ, Winkelmesseinrichtung, loc. cit., point 22; lntegrationselement, loc. cit., point 29; Tintenstrahldrucker, loc. cit., points 26 ff.).
(b) So, contrary to what the lower court held, feature 4b cannot be regarded as an aliud. Its provision for a disc-like cup having its lower face in contact with the porous pad does not introduce a new technical aspect but is a mere limitation, of the kind described above, which conveys to the skilled person that the disc-like cup is to be arranged so flatly that, when it is pressed against the porous pad and secured with a surgical drape, the surface of its lower face is for the most part touching the pad.
3. The lower court's finding that claim 1 could not be allowably defended as worded in auxiliary request I (formerly auxiliary request 6 (new)) thus cannot be upheld on appeal.
[ 1 ] Abridged for EPO OJ publication. Full German text available via .
[ 2 ] Law on the Convention of 27 November 1963 on the Unification of Certain Points of Substantive Law on Patents for Invention, the Patent Cooperation Treaty of 19 June 1970, and the European Patent Convention of 5 October 1973 (Law on International Patent Treaties, LIPT).
The provision in question reads as follows:
(1) The European patent granted with effect in the Federal Republic of Germany shall be declared invalid on request if it appears that:
3. the subject matter of the European patent extends beyond the content of the European patent application in the form in which it was originally filed with the authority competent to receive applications or, if the patent was granted on a divisional application …, beyond the content of the earlier application in the form in which it was originally filed with the authority competent to receive applications;
4. the protection conferred by the European patent has been extended;