The use of prosecution history in post-grant patent proceedings. Jochen EHLERS, LL.M.

Transcription

1 Question Q229 National Group: German Group Title: The use of prosecution history in post-grant patent proceedings Contributors: Dietmar HAUG, LL.M. Dr. Ralph NACK Jochen EHLERS, LL.M. Dr. Tim MEYER-DULHEUER, LL.M. Dr. Karsten KÖNIGER Dr. Renate WEISSE Detlef von AHSEN Dr. Peter WIEGELEBEN Philipp NORDMEYER, LL.M. Oliver Jan JÜNGST Robin KEULERTZ Jens Christian KOCH Dr. Anja LUNZE, LL.M. Benjamin GRZIMEK Dr. Michael HARTIG Dr. Clemens HEUSCH Dr. Stefan SCHOHE Dr. Dirk JESTAEDT Claus BECKER Klaus HAFT Reporter within Working Committee: Dietmar HAUG, LL.M., Dr. Ralph NACK, Jochen EHLERS, LL.M. Date: May 18, 2012 Questions The Groups are invited to answer the following questions under their national laws. 1) What types of post-grant proceedings are available in your jurisdiction? Are post-grant proceedings available both at a patent office and at a court? a) National opposition proceedings: Within three months of the publication in the Patents Journal (Patentblatt) of the grant of a German patent granted by the German Patent and Trade Mark Office (Deutsches Patent- und Markenamt 1

2 (DPMA)), any person (section 59 of the German Patents Act ( 59 PatG)) other than the patentee himself may lodge an opposition against this patent at the German Patent and Trade Mark Office ( 59 PatG). In case of unlawful deprivation only the aggrieved party is entitled to lodge an opposition. The opposition must be based on at least one of the legal grounds of opposition ( 21 PatG). The grounds of opposition are the following: lack of patentability; insufficient disclosure; inadmissible extension and unlawful deprivation. There are no further grounds of opposition. Lack of clarity of the claims, for example, does not constitute an admissible ground of opposition. According to 73 PatG the decision rendered by the DPMA about the opposition may be appealed to the Federal Patent Court (Bundespatentgericht (BPatG)) and the Federal Patent Court s decision may be appealed on a point of law ( 100 PatG) to the Federal Court of Justice (Bundesgerichtshof (BGH)). b) European opposition proceedings: Within nine months of the publication of the notice of grant, opposition can be filed by any person other than the patentee himself at the European Patent Office (EPO) against a European patent granted by the EPO (Art 99 (1) EPC). The opposition must be based on at least one of the grounds of opposition stipulated in the European Patent Convention (EPC) (Art. 100 EPC). The grounds of opposition in proceedings before the European Patent Office correspond to the opposition grounds of the national German opposition proceedings except of the unlawful deprivation which does not constitute a ground of opposition in the European opposition proceedings. However, the ground of unlawful deprivation can be raised by way of an action for revocation of the German part of a European Patent. The opposition applies to the European Patent in all Contracting States in which the patent has effect (Art.99 (2) EPC). An appeal lies from the decision of the Opposition Division of the EPO (Art. 106 EPC). The Boards of Appeal of the EPO are responsible for the examination of appeals (Art. 21 EPC). Upon request the Enlarged Board of Appeal of the EPO may re-examine the decision of a Board of Appeal if fundamental procedural defects have occurred (Art. 112a EPC). c) German revocation action: The German patent revocation action is a court proceeding which is entirely independent of any pending infringement proceeding. In a revocation proceeding, the plaintiff aims for obtaining a declaration of invalidity of a granted German patent, a German part of a European patent or a supplementary protection certificate. Any person may initiate a revocation action at any time after the expiration of the opposition period stipulated for German or European patents or after the absolute termination of German or European opposition proceedings by filing the action with the BPatG (1 st instance) against the patentee recorded in the Official Register ( 81 PatG). The decision of the BPatG can be appealed to the BGH (2 nd instance). If the patent is entirely or partially revoked on one of the legal revocation grounds ( 22 PatG or Art. II 6 IntPatÜG), the decision is effective visà-vis everybody. The patent is deemed invalid from the outset (void ab initio) to the extent it has been revoked. The revocation grounds are identical to the opposition grounds of the national opposition and, therefore, also comprise unlawful deprivation regarding the German part of the European patent. An extension of the scope of protection of the patent after grant constitutes an additional ground of revocation. d) National limitation proceedings: Upon request of the patentee the granted German patent or the German part of a granted European patent may be restricted by amending the claims. Such a restriction has retroactive effect. Limitation proceedings are admissible even if opposition or revocation proceedings are pending. The request must be substantiated if the reason for the limitation is not an obvious consequence of the new prior art causing the limitation. Such new prior art must be notified. An examination of the amended claims regarding the patentability of the claimed subject matter over the new prior art is not carried out and is not 2

3 possible even upon request. However, the requested amendments of the claims are examined in order to establish that the amendments constitute a limitation of the scope of the previously existing claims and that the amended claims are sufficiently clear. The decision of the DPMA can be appealed to the BPatG and the BPatG s decision can be appealed on a point of law to the BGH. In practice, the national limitation proceeding is of no considerable importance. e) European limitation proceedings: Upon request of the patentee a European patent may be limited in its scope by amending the claims (Art. 105a,b EPC). The limitation will apply to the European patent in all Contracting States in respect of which it has been granted. The request must not be substantiated. An examination of the amended claims regarding the patentability of the claimed subject matter over the new prior art is not carried out and is not possible even upon request. However, the requested amendments of the claims are examined in order to establish that the amendments constitute a limitation of the scope of the previously existing claims and that the amended claims are sufficiently clear. The request shall be filed with the EPO. An appeal lies from the decision of the EPO (Art. 106 EPC). The Boards of Appeal of EPO are responsible for the examination of the appeal (Art. 21 EPC). Upon request the Enlarged Board of Appeal of the EPO (Art. 112a EPC) may reexamine the decision of the Board of Appeal which has been responsible for dealing with the appeal. In contrast to the German limitation proceedings (see above subparagraph d)) European limitation proceedings may not be conducted while opposition proceedings in respect of the European patent are pending (Art. 105a(2) EPC). However, European limitation proceedings may be conducted while German limitation proceedings (see above subparagraph d)) or revocation actions (see above subparagraph c)) are pending with respect to the German part of the European patent. f) Patent infringement proceedings: The patent proprietor or any other person entitled to enforce the patent because of infringement may assert claims due to infringement of German patents or European patents validated in Germany or supplementary certificates in a civil law suit before ordinary courts. Specified regional courts (Landgerichte) have the exclusive jurisdiction in 1 st instance ( 143 PatG in conjunction with the respective state ordinance). The decisions of the regional courts can be appealed to the corresponding upper regional court (Oberlandesgericht). The appeal decisions of the upper regional courts may be appealed to the BGH on points of law if the appeal on points of law is admitted. Patent infringement proceedings are mentioned here for the sake of completeness only. The principle of split jurisdiction ( Trennungsprinzip ) prevailing in the German patent system distinguishes between the Patent Offices (DPMA, EPO) and BPatG with their authority to grant and revoke patents on one hand and ordinary civil courts responsible for dealing with infringement proceedings on the other hand. The latter are bound to the version of the patent as granted or upheld after opposition, a revocation action or limitation proceedings. In case of doubts regarding the patentability the infringement proceedings may be stayed upon request of the defendant until the validity of the patent has been clarified by opposition proceedings or a revocation action ( 148 ZPO). Granting administrative bodies (DPMA, EPO) and courts (BPatG, BGH) responsible for conducting validity proceedings, may not, for their parts, make statements regarding the infringement of the patent. 2) In your country or region, may the prosecution history be taken into account for purposes of interpreting claim scope during post-grant proceedings? 3

4 According to German jurisdiction the subject-matter of the patent shall be construed on the basis of the currently existing claims and the currently existing description which may, in certain circumstances, deviate from the originally filed documents. Hence, the prosecution history which, according to German understanding, does not only comprise proceedings before grant but also possible opposition proceedings, revocation actions or limitation proceedings, is, as a matter of principle, not to be taken into account when construing a patent if events of the prosecution history do not show up in the patent specification as granted or amended after grant (see BGH, GRUR 2002, p.511 Kunststoffrohrteil (plastic pipe part)). Thus, only those amendments of the claims and/or the description of the granted and currently valid version of the patent are to be considered. Grounds and arguments filed in support of such amendments are generally not to be considered; the same applies to proposed amendments of the claims and/or the description which are not reflected in the granted and valid version of the patent because it may be that these proposed amendments were not sufficient and, therefore, had been replaced by different, more extensive amendments. This principle is not applied, however, when a patent is construed which has been limited in a preceding revocation action, because that part of the grounds of the decision which concerns the amendments of the claims may replace or complement the description of the issued patent specification. In case of a contradiction between the grounds of the decision and the amended version of the claims the operative part of the revocation decision will prevail even if the description is narrower. The following two cases deviate from the rule purporting that, in principle, the prosecution history is to be disregarded when construing patents: 2.1 If the claim or the description does not include an unambiguous definition of an element of the claim the understanding of the person skilled in the art must be considered when such an element is interpreted. In order to determine the understanding of the person skilled in the art the prosecution history may be used. This means that technical explanations given by the examiner during prosecution, for example, may constitute an indication of the understanding of the person skilled in the art. The same applies to statements made by the applicant during prosecution. Such aspects, however, constitute only circumstantial evidence. The court can and must consider any other piece of evidence for determining the understanding of the person skilled in the art. The prosecution history may be considered, in this context, only as one piece of evidence among others, for determining the skilled person s understanding. 2.2 Finally, the prosecution history may be taken into account if the defendant of infringement proceedings is the plaintiff in a revocation action or the opponent in opposition proceedings. In such a case the defendant in the infringement proceedings can defend himself by relying on statements made by the patentee in the preceding opposition proceedings or revocation proceedings as the patentee would otherwise act in a way constituting an abusive exercise of his rights ( venire contra factum proprium ). A third party who is otherwise not involved in the opposition or revocation proceedings, however, may not use such statements against the patentee. Statements made during opposition or revocation proceedings will, therefore, at most be effective inter partes in a sense that they may cause a limitation of the enforceability of the patent, but not erga omnes. They do not influence the construction of the patent which may be necessary in other situations (see BGH, Mitt. 1997, p Weichvorrichtung II (steeping device II)). If the answer to question 2 is yes, please answer the following questions: 4

5 a) Please explain the types of prosecution history that may be considered. For example: i. Does applicable prosecution history include amendments, arguments, or both? Amendments of the claims or the description, which appear in the granted or current version of the patent must always be considered. (However, the reasons for those amendments which may be derived from the prosecution history are to be disregarded as well as amendments which do not appear in the issued patent specification because they may have been insufficient and have, therefore, been replaced by other amendments which go beyond the previous amendments). Explanations and arguments of the applicant or of the examiner presented in the course of the grant proceedings according to the explanations in 2.1 may be considered as evidence. The special case according to 2.2 may only apply to statements made by the applicant. The special case according to section c) below, relates exclusively to the grounds of a final decision as far as a (partial) revocation is concerned. ii. Could applicable prosecution history include a limiting interpretation that is implied through the applicant s arguments, or would it include only explicit definitional statements? As far as the prosecution history according to the explanations of the special cases in sections 2.1 and 2.2 is considered, one can generally say that no explicit statement of the applicant or patentee is required according to which the patent should be limited to certain limiting interpretations. However, applicant s statements or the undisputed explanations of the examiner are only considered in the special case mentioned in section 2.1 if such statements or explanations contain a precise technical understanding of an element of the claim. In this regard, it should be sufficient if it is obvious that the statements or explanations are based on a specific technical understanding. In the special case described in section 2.2 case law requires that the (scope limiting) statements of the applicant must be at least sufficiently clear, if not explicit, in order to gain the opponent s confidence that certain embodiments shall not be protected. This is generally not the case with mere expressions of one s views. iii. Does applicable prosecution history include only amendments to the claims, or does it also include amendments to any aspect of the disclosure? Like amendments of the claims, amendments of the description and/or of the drawings must be considered when construing the patent. However, this consideration only applies to those amendments appearing in the issued patent specification. Reasons causing such amendments which may be found in the prosecution history must in principle, not be considered. Exceptions are the special cases described in sections 2.1 and 2.2. iv. Does it matter if the amendments and/or arguments are made to overcome prior art versus being made to address sufficiency or some other formal requirement? 5

6 If amendments and/or arguments are considered in the meaning of section 2.1 it does not matter why or in which legal context such amendments or such arguments have been made. Only in the special case described in section 2.2 it matters that the patentee s statement has been made in a contradictory proceeding. According to the circumstances the statement may be assessed as a declaration not to claim protection for certain embodiments. v. Does it matter if the prosecution history has the effect of broadening the interpretation of the claim, versus narrowing it? In grant proceedings only those statements and explanations which are reflected in the issued patent specification can have an extending effect on the scope of protection. The extension of the scope of protection by statements and explanations in opposition or revocation proceedings is not admissible and constitutes a ground of revocation which may be used for challenging the patent in a later revocation action. The special cases described in section c) always refer to the situation of a (partial) revocation of the patent. b) Does the applicability of prosecution history depend on when the prosecution history occurred? For example, does it matter if a particular statement by an applicant was made during initial examination as opposed to during a later invalidity proceeding? In so far as the prosecution history is taken into account as per the explanations contained in sections 2.1 and 2.2 it does not matter whether the statements in question by the applicant or patentee have been made during the proceedings before grant or after grant in subsequent opposition, revocation or limitation proceedings. c) Does the applicability of prosecution history depend on the type of post grant proceeding, or on the authority before which the proceeding is held? For example, would prosecution history be more applicable in an infringement action at court than in a post-grant patent office invalidity proceeding? In so far as the prosecution history is taken into account as per the explanations contained in sections 2.1 and 2.2 the construction of the patent does not differ in the various post grant proceedings. Also, the grounds of a (final) revocation decision (partially) revoking a patent must be taken into account. In such a case the grounds replace the description of the specification as far as it relates to the (partial) revocation. The grounds must be taken into account in the same way for determining the scope of the patent as the description of the patent. This does not apply to the grounds for partially or entirely rejecting a revocation action. Such grounds can only be considered according to the principles described in section a). Also, decisions made without prior examination at the merits of the case, for example, when a patent is defended only with limited scope, may not be taken into account. d) Is the applicability of prosecution history limited to infringement proceedings where equivalents are an issue? No. The use of the prosecution history may indicate to the court how a person skilled in the art may understand certain terms used in the claims at the time of the priority date even if literal infringement is claimed (special cases described in section 2.1). Statements made by the applicant during prosecution are, however, not legally binding. They are only indicative. 6

7 A legally binding consideration of statements is known only for final decisions in revocation actions where the grounds of the decision for (partial) revocation obtain the same relevance for the determination of the scope of protection as the description of the patent specification. e) Could prosecution history from a corresponding foreign application be considered in a post-grant proceeding in your jurisdiction? If so, under what circumstances? Statements and explanations given in foreign proceedings may be considered in national infringement proceedings - if at all - only as a party s statement. This may only be the case when the determination of the skilled person s understanding of an element of a claim is concerned. In any case it must be individually clarified if statements regarding parallel foreign patent applications are concerned with the identical element (having the identical technical sense). f) Is the use of prosecution history authorized by statute or by case law in your jurisdiction? Relevant legal regulations ( 14 PatG, Art. 69 EPC, Protocol on the Interpretation of Article 69 EPC) do not explicitly stipulate whether or not the prosecution history may be considered. Compulsory consideration is provided only for amendments of the claims and/or the description and/or the drawings which appear in the issued patent specification according to 14 PatG and Art. 69 EPC. The consideration of the prosecution history according to the special cases described in sections 2.1 and 2.2 is based on case law. g) Explain the policy reasons for considering prosecution history during the claim interpretation process. Consideration of amendments in the claims, in the description and in the drawings is based on the idea that the interpretation of the claim itself shall prevail over the description and the drawings. The main purpose of this policy is to provide legal certainty, since other statements and explanations which are not included in the patent specification itself are generally disregarded. The reasons for considering the prosecution history are different for the special cases described in sections 2.1 and 2.2: i) For the special case described in section 2.1 a consideration of statements made during prosecution is based on the following reasoning: statements made by persons skilled in the art, which have been involved in the prosecution proceedings, may provide evidence for the determination of the skilled person s understanding. In particular, the examiner is a person skilled in the art in the technological field in question. His understanding is, therefore, evidence for the general understanding of the addressed persons skilled in the art. ii) Use of the prosecution history in the special case described in section 2.2 is supported by the principle of good faith ( Treu und Glauben ) which is also applicable in procedural law. If the answer to question 2 is no, please answer the following questions: a) Is the disallowance of use of prosecution history mandated by statute or by case law in your jurisdiction? 7

8 The general disallowance of the use of the prosecution history does not explicitly result from the relevant legal provisions of 14 PatG or Art. 69 EPC. The BGH has, however, frequently interpreted these provisions in such a way that the determination of the scope of protection must be based compulsorily on the claims, the description and the drawings in the issued patent specification. Accordingly, the BGH rejected the use of the prosecution history since there is no practical need to consider evidence which is not laid down in the issued patent specification in order to determine the scope of protection (see BGH, GRUR 2002, p Kunststoffrohrteil). Therefore, 14 PatG and Art. 69 EPC are understood to be basically final regulations which denote all information relevant for the interpretation. The use of the prosecution history according to the special cases described in sections 2.1 and 2.2, however, also result from case law. b) Explain the policy reasons for not considering prosecution history during the claim interpretation process. The consideration of statements and explanations from prosecution, opposition, revocation or limiting proceedings for the claim construction which are not reflected in the issued patent specification may undermine the requirement of legal certainty, especially considering that such statements and explanations generally may not be fully documented and thereby contain gaps. But in the above mentioned decision Kunststoffrohrteil the BGH has recognized that a limitation of the scope of protection due to statements and explanations which can only be taken from the files will not harm the legal certainty of third parties (See section of the grounds of decision). 3) Assuming that at least some countries will consider foreign prosecution history as part of claim interpretation in their jurisdictions, does this have implications for how you would handle prosecution of a patent application in your country? Is this problematic? 3.1 In the case of several parallel patent applications concerning the same invention which are pending in different jurisdictions a German patent attorney (Patentanwalt) or solicitor (Rechtsanwalt) entitled to represent the applicant before the respective Offices (DPMA or EPO) and Courts (BPatG or BGH) always makes every effort to avoid negative impacts of his line of arguments/strategy on the claim construction of parallel patents granted in other countries. 3.2 This is problematic indeed under two aspects. On the one hand it means that the patent attorney or solicitor must factually execute the law of foreign states in order to avoid such negative impacts. Now, he or she normally doesn t practice such foreign law and thus is generally not that familiar with it as compared to the law of his or her home country. On the other hand certain statements made during grant proceedings may be differently interpreted and evaluated by different jurisdictions. Therefore, specific statements can only be correctly interpreted in the corresponding legal context. Offices and courts of a foreign state often do not have sufficient knowledge about the German legal practice and the grant proceedings of the EPO in order to correctly evaluate such statements in their own legal context. Therefore, these statements are often taken into account applying national measures from the very start. Thereby, such statements are taken out of their initial legal context. 4) In your country or region, may a patent be invalidated in post-grant proceedings on the basis of the same prior art which was taken into account by the examiner of the patent office during prosecution of the patent? If so, may the patent be invalidated on the basis of the same prior art and the same argument used by the examiner or may the same 8

9 prior art only be used if it is shown that there is a new question based on some other teaching or aspect of that prior art? 4.1 German as well as European patents may be invalidated in opposition proceedings or by revocation actions after grant on the basis of the same prior art as was cited by the examiner in the course of the examination proceedings already. The same applies to the relation between opposition proceedings and revocation proceedings: German and European patents may be declared to be entirely or partially invalid in a revocation proceeding on the basis of prior art already cited in a preceding opposition proceeding or in the course of the examination proceeding. 4.2 German and European opposition proceedings each have the character of an independent appeal where a decision is made about the upholding or revocation of an already granted patent. In contrast to the examination proceedings with one party only, the opposition proceedings is a contentious proceeding between parties having opposite interests and the right of equal treatment. As a consequence, the Patent Division of the DPMA or the Opposition Division of the EPO decides on the relevant opposition independently of the arguments of the applicant submitted in the examination proceedings and the objections raised by the examiner. It is, therefore, legally permissible and not ruled out in practice that the Opposition Division revokes a patent on the basis of the state of the art already taken into consideration in the examination proceedings and the same argument already made by the examiner against patentability in the examination proceedings, which the applicant has, however, rebutted. The same applies for invalidity proceedings, which are separate court proceedings independent of the grant procedure and the opposition proceedings. The German Federal Patent Court (BPatG) is not bound to the assessment carried out with respect to the state of the art by persons involved in the examination or opposition proceedings of the DPMA or EPO. An invalidity action can therefore lead to the invalidity or partial invalidity of the patent on the basis of the prior art already taken into account in the examination or opposition proceedings and with the same argument which the examiner in the examination proceedings or the Patent Division of the DPMA or the Opposition Division of the EPO has submitted in the opposition proceedings against the patentability and which the applicant has, however, rebutted. Proposals for harmonization The Groups are invited to put forward proposals for the adoption of harmonized rules in relation to the use of prosecution history in post-grant proceedings. More specifically, the Groups are invited to answer the following questions without regard to their national laws: 1) Is harmonization of the applicability of prosecution history in post-grant proceedings desirable? Harmonization of the law and jurisprudence is generally desirable. However, it has to be taken into consideration that the use of prosecution history in post-grant proceedings should be only one criterion among others relevant for determining the scope of protection. Furthermore, it should be considered that the various national legal traditions and basic legal theories significantly impact on the interaction of the various criteria determining the scope of protection. Therefore, harmonization of the use of prosecution history in post-grant proceedings is only desirable if there is also harmonization of the method for determining the scope of protection. 9

10 2) Is it possible to find a standard for the use of prosecution history that would be universally acceptable? It should be possible to agree on globally accepted rules for the use of prosecution history in post-grant proceedings when determining the scope of protection. Conditions to be met for that, are the following: the prosecution file is publicly available it is accepted that the scope of protection is essentially governed by the claims, and that prosecution history is regarded as only one optional criterion for determining the scope of protection wherein this criterion is ranked lower than the written description and the drawings of the patent specification and wherein the use of the prosecution history can never result in a broader scope of protection. 3) Please propose a standard you would consider to be broadly acceptable for a) the types of prosecution history that should be considered, if any; and b) the type of proceeding and circumstances in which it should be considered. The German group of AIPPI regards legal certainty as well as a fair remuneration of the inventor/applicant as most important principles governing the determination of the scope of protection. As a basic rule, one should assume that facts relevant for the determination of the scope of protection can be derived from the specification of the granted patent in consideration of the general common knowledge in the respective field of technology. Accordingly, the scope of protection of the claims should be primarily determined based on the written description and the drawings of the patent. The scope of protection should be determined based on objective criteria; the subjective intention of the inventor or the examiner should be irrelevant. The prosecution history can be used to determine the understanding of the person skilled in the art of certain terms used in the patent. However, the prosecution history shall have no greater significance than other sources of information; the consideration of evidence derived from prosecution history shall remain in the discretion of the court. If the scope of protection can be clearly defined based on the claims, if interpreted in the light of the written description and the drawings, there should be no room for further consideration of the prosecution history. National Groups are invited to comment on any additional issue concerning the use of prosecution history in post-grant proceedings that they deem relevant. Summary From the point of view of the German Group of AIPPI, the expression prosecution history in the present set of questions and answers comprises events occurring in the course of grant proceedings, opposition proceedings, nullity proceedings, and limitation proceedings, but only to the extent that these events have not resulted in amendments to the claims, the description and/or the drawings of the granted or current version of the patent specification. For the determination for the scope of protection of German and European patents, only the claims in the granted or current version are relevant, including any amendments made 10

11 thereto, but the claims are to be construed in accordance with the relevant version of the description and drawings of the specification, based on the skilled person s understanding of the terms in the specification. The legal basis for the determination of the scope of protection of German and European patents (Section 14 of the German Patents Act, Article 69 of the European Patent Convention, and Protocol on the Interpretation of Article 69 EPC) do not expressly state whether the prosecution history must or may be taken into account in the determination of the scope of protection, and hence, in the claim construction, or whether the prosecution history is to be disregarded therein. In accordance with case law, the prosecution history may, however, be consulted when determining the skilled person s understanding of claims that remain unclear even after having construed the claims by means of the description and drawings. However, the prosecution history is only one piece of evidence among others. Unambiguous declarations of surrender of protection that the patentee makes in opposition or nullity proceedings vis-à-vis another party or parties do limit the scope of protection, but only between the patentee and the very other party or parties (inter partes), and not vis-à-vis uninvolved third parties (erga omnes). For reasons of legal certainty, the German Group of AIPPI considers a more extensive use of the prosecution history, as compared to the present practice, to be problematic. If a clear and unambiguously defined scope of protection results from the claims in conjunction with the description, the drawings and the skilled person s general knowledge, there should be no room for a more extensive use of the prosecution history. Résumé Dans la perspective du groupe allemand de l AIPPI, la notion «d'historique de la procédure de délivrance» dans le sens de la série des questions et réponses ci-dessus comprend l historique des procédures de délivrance, d opposition, de nullité et de limitation d un brevet, mais seulement en ce que ces procédures n ont pas conduit à la modification des revendications du brevet, de la description ou des dessins figurant dans le fascicule du brevet tel que délivré ou en force. Seules les modifications des revendications du brevet dans la fascicule délivrée ou en force sont déterminantes pour l étendue de la protection. Toutefois, ces modifications doivent être interpretées en se fondant sur la description et les dessins de cette version du fascicule ainsi qu en se fondant sur la compréhension de l homme du métier. Les dispositions légales qui déterminent l étendue de la protection des brevets allemands et européens ( 14 Loi allemande sur les brevets (Patentgesetz), Art. 69 CBE, complété par son protocole interprétatif) ne précisent pas si l historique de la procédure doit être ou peut prise en considération, ou doit être négligée pour déterminer l étendue de la protection. D après la jurisprudence, l historique de la procédure de délivrance peut être prise en compte pour déterminer la compréhension de l homme du métier si le sens d un terme de la revendication reste obscur et ce, même après l avoir interprété à la lumière de la description et des dessins. Néanmois, l historique de la procédure n est qu un indice parmi d autres pour déterminer la compréhension de l homme du métier. Les déclarations de renonciations sans équivoque que le breveté effectue vis-à-vis de l autre partie ou d autres parties pendant la procédure d opposition ou de nullité limitent l étendue de la protection, mais seulement eu égard à la relation entre le breveté et l autre partie (inter partes) et non à l encontre des tiers (erga omnes). Le groupe allemand de l AIPPI considère qu une prise en compte de l historique de la procédure de délivrance dans une mesure plus étendue large que ce qui est actuellement pratiqué en Allemagne serait problematique pour des raisons de sécurité juridique. Si la portée de la protection résulte clairement et sans ambiguïté des revendications en prenant en considération la description, les dessins et la compréhension générale de l homme du métier, il ne devrait pas y avoir lieu à prendre en considération l historique de la procédure de délivrance. 11

12 Zusammenfassung Aus Sicht der Deutschen Landesgruppe der AIPPI umfasst der Begriff Erteilungsakte in der im vorliegenden Fragen- und Antwortkatalog verwendeten Sinne Vorgänge im Erteilungsverfahren-, Einspruchs,- Nichtigkeits- und Beschränkungsverfahren, allerdings nur insoweit, als diese Vorgänge keine Änderungen der Patentansprüche, der Beschreibung und/oder der Zeichnungen sind, die Eingang in die erteilte bzw. geltende Fassung der Patentschrift gefunden haben. Maßgeblich für die Schutzbereichsbestimmung deutscher und europäischer Patente sind nur die ggf. Änderungen enthaltenden Patentansprüche in der erteilten bzw. geltenden Fassung, die aber anhand der ebenfalls in dieser Fassung vorliegenden Beschreibung und Zeichnungen der Patentschrift und unter Zugrundelegung des fachmännischen Verständnisses der in der Patentschrift verwendeten Begriffe auszulegen sind. Die für die Schutzbereichsbestimmung deutscher und europäischer Patente maßgeblichen gesetzlichen Grundlagen ( 14 PatG, Art. 69 EPÜ, Auslegungsprotokoll) geben nicht ausdrücklich vor, ob die Erteilungsakte bei der Schutzbereichsbestimmung und damit bei der Auslegung berücksichtigt werden muss oder kann oder außer acht zu lassen ist. Nach der Rechtsprechung kann die Erteilungsakte aber zur Ermittlung des fachmännischen Verständnisses von selbst nach der mit Hilfe der Beschreibung und Zeichnungen erfolgten Auslegung unklar bleibenden Patentansprüchen zu Rate gezogen werden, wobei die Erteilungsakte aber nur ein Indiz (neben anderen) für das fachmännische Verständnis ist. Eindeutige Schutzverzichtserklärungen, die der Patentinhaber einer anderen Partei gegenüber im Einspruchs- oder Nichtigkeitsverfahren abgibt, wirken sich schutzumfangsbeschränkend aus, aber nur zwischen dem Patentinhaber und der anderen Partei (inter partes) und nicht gegenüber unbeteiligten Dritten (erga omnes). Die Deutsche Landesgruppe der AIPPI hält die Verwendung der Erteilungsakte in einem stärkeren Maße als sie gegenwärtig in Deutschland praktiziert wird, aus Gründen der Rechtssicherheit für problematisch. Ergibt sich aus den Ansprüchen unter Heranziehung der Beschreibung, der Zeichnungen und des allgemeinen Fachwissens ein klarer, eindeutig definierter Schutzbereich, sollte jedenfalls für eine weitergehende Einbeziehung der Erteilungsakte kein Raum sein. 12