Claiming the Priority of a Patent Application

When filing a European patent application, the priority right of an earlier application can be claimed if both concern "the same invention". The Federal Court of Justice (BGH) had to decide the extent to which generalizations in a subsequent application are permissible without exceeding the disclosure content of the priority applications.

A European patent granted with effect for the Federal Republic of Germany, which concerns a radio communication system with primary and secondary stations as well as a method for operating such a system, was challenged by a nullity action. The patent proprietor had claimed the priority of several British patent applications.

The German Patent Court (BPatG) took the view that the subject matter of the patent in its granted form is indeed not patentable and declared the patent null and void. According to the BPatG, the patent proprietor could not claim the priority of all British applications, since the subject matter of the patent was not the same invention as that disclosed in the British patent applications. These contained explicit statements for the skilled person to the effect that the communication channel was a frequency division duplex communication channel and that power control and bit rate information would be transmitted via the control channels. The patent, on the other hand, generally claims a communication channel in which unspecified control information is transmitted via the control channels.

Decision of the Court

The Federal Court of Justice (BGH) decided in itsjudgment of 11. 02.2014 – Az. X ZR 107/12 (Communication Channel) that the priority of an earlier application can be claimed if the technical instructions described there on the basis of an embodiment or in any other manner represent, for the skilled person, an embodiment of the more general technical teaching set out in the subsequent application and this teaching in the generality disclosed in the subsequent application is already derivable from the earlier application as belonging to the filed invention.

The prerequisite for claiming the priority right of an earlier application when filing a European patent application is, as a general rule, that both concern the same invention.

According to established case law, this prerequisite is satisfied if the combination of features claimed with the subsequent application is disclosed in the earlier application in its entirety as belonging to the filed invention. It must then be clarified whether the subject matter of the claimed invention is identically disclosed in the priority document, whereby the disclosure of the subject matter of the first application is not limited to the claims formulated therein. Rather, this must be determined from the entirety of the application documents.

In assessing the identical disclosure, the Federal Court of Justice (BGH) applies the principles of novelty examination. According to this, it is required that the skilled person can derive the teaching designated in the claim from the original documents "directly and unambiguously" as a possible embodiment of the invention.

In this connection, it is therefore necessary – according to the BGH – to ascertain what the skilled person, in his understanding at the time of filing the patent application claiming priority, derives from the prior disclosure as the content of the general teaching given.

According to the Federal Court of Justice (BGH), the requirement of a direct and unambiguous disclosure must be applied in a manner that takes into account the fact that determining what is disclosed to the skilled person as the invention and what is disclosed as an embodiment of the invention has an evaluative character. An unreasonable restriction of the applicant must be avoided in exhausting the disclosure content of the earlier application.

In doing so, it must be taken into account that the applicant's interest is regularly directed towards the broadest possible protection and that a restriction to set out embodiments is not intended. Claims formulated in the application initially have only preliminary character; only upon grant of the patent with specific claims is a final determination of the scope of protection made.

Against this background, according to the Federal Court of Justice (BGH), generalizations of originally disclosed embodiments are, as a general rule, also permissible in exhausting the disclosure content.

Accordingly, a "broadly" formulated claim is, from the perspective of impermissible extension, in any case unproblematic if an embodiment of the invention described in the application represents, for the skilled person, an embodiment of the more general technical teaching set out in the claim and this teaching in the claimed generality is already derivable from the application for him – whether in the form of a claim formulated in the application or according to the overall context of the documents – as belonging to the filed invention.

According to the Federal Court of Justice (BGH), such generalizations have been permitted primarily when, of several features of an embodiment that, taken together but also considered individually, are conducive to the inventive success, only one or only some have been included in the claim.

On comparable grounds, the examination must then be carried out as to whether the subject matter of the invention is identically disclosed in the priority document.

The priority of an earlier application can – according to the Federal Court of Justice (BGH) – therefore be claimed if the technical instructions described there on the basis of an embodiment or in any other manner represent, for the skilled person, an embodiment of the more general technical teaching set out in the subsequent application and this teaching in the generality disclosed in the subsequent application is already derivable from the earlier application as belonging to the filed invention. On the basis of this examination standard, the Federal Court of Justice (BGH) concluded in the present case that the patent proprietor could claim the priority of the earlier application.

Conclusion

In the present decision, the Federal Court of Justice (BGH) summarized the prerequisites for effective claiming of the priority of an earlier application with a presentation of the relevant case law on "identical disclosure" and subsequently elaborated on them further. Thus, the Federal Court of Justice (BGH) provides a useful guide as to the extent to which the priority of an earlier application can be claimed, even if the subsequent application does not correspond to it 1:1.