Once the Patent Application has been filed, the maximum scope of protection is also defined. It is not only important to have the correct wording of the claims. Claims may well be amended in the course of the examination. The description is also important because it specifies what is to be understood as an invention. In its “digital book” ruling, the Federal Court of Justice deals with the question of the circumstances under which the original terminology may be generalized.

The parent application concerned a so-called digital book and the originally filed claim also explicitly used this wording as a generic term.

The patent proprietor derived a divisional application from the parent application, which led to a further patent. This uses the generic term “display device, in particular for displaying text or image information”. In the generic term, the claim refers to a housing that “can be opened and closed like a book around a hinge axis of a swivel joint”. The characterizing feature is a connector in the swivel joint for power and/or data signals.

The patent specification does not contain a definition of the originally used term “digital book”.

An action for revocation was brought against this patent. The Federal Patent Court (BPatG) came to the conclusion that the patent would only be legally valid in a scope limited to a “digital book” (auxiliary request II). The more general claim defended in the main application would go beyond the content of the original disclosure and was therefore inadmissible.

The patent proprietor appealed against this. However, the BGH dismissed the appeal and confirmed the judgment of the BPatG. It finds that the patent claim does not express what is emphasized in the description as the difference between the non-inventive large, more difficult-to-use devices such as laptops and notebooks on the one hand and the inventive handy, easier-to-use devices such as digital books on the other. Therefore, the patent claim goes beyond the content of the Patent Application and is invalid.

The BGH is based on the following principles.

The skilled person must be able to directly and unambiguously infer the technical teaching formulated in the claim from the application documents.

Certain generalizations of the disclosed embodiments may also be considered as possible embodiments of the invention. This is the case, for example, if only some of several features of an embodiment example are included in the claim, but these are conducive to the success according to the invention.

A generalization of the disclosed teaching is not already excluded by the fact that the originally filed claim was limited to digital books.

Generalization is also not excluded by the fact that all embodiments relate to a specific feature, in this case a “digital book”.

However, because the means provided in the claim serve to solve a problem which requires the use of a digital book, only digital books have been disclosed as belonging to the invention.

With regard to the specific disclosure of the patent specification, the BGH states the following:

Even if the patent specification as a whole does not contain an exact definition of the characteristics of a digital book or make any statements about the size, weight and functionality of the operating elements, it can be deduced from the objective that a digital book within the meaning of the patent can only be a device which, due to the totality of its features, enables handling comparable to that of a conventional, not too bulky and heavy book.

This not really exact demarcation may be associated with difficulties in certain cases. For example, if a modern device can be used not only like a book but also like a personal computer due to its features. However, in the view of the BGH, this is not a fundamental problem because there are indeed portable computers which, due to their weight and the arrangement of the controls, are not suitable for use like a book.

The term “display device for reproducing text or image information” used in the claim is not synonymous with “digital book”. Rather, the claim term is broader and also includes display devices that are not suitable for use like a book. This corresponds not only to the general understanding of the language but also to the understanding of the patent description. Thus, it is expressed in several places in the description that a digital book falls under the term display device. However, it is not apparent anywhere that the terms are intended to be synonymous.

Nor do the other features in the claim mean that the subject-matter of the claim is limited to a “digital book”. For example, the feature that “the housing has a main part and a secondary part” can be fulfilled not only for a digital book, but also for another device.

Since the claim does not list any further requirements, such as that the device is easy to handle and easy to operate or that the two parts can be separated from each other, it cannot be concluded that the meaning of the claim is limited to a digital book.

The claim thus goes beyond the original meaning of the Application.

Note: This judgment shows that it is not only the choice of term that is important, but also how the invention is delimited from the prior art in the description and what is presented as the problem to be solved. Careless wording in the Patent Application can usually no longer be improved in the course of the Examination Proceedings.

Links: juris.bundesgerichtshof.de/cgi-bin/rechtsprechung/document.py