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Monday, 6 September 2010

BGH on enablement: disclosure may be enabling without being novelty destroying

The American Ethicon, Inc. (part of the Johnson & Johnson group of companies) sued an unnamed defendant based on the German part of EP 337 612 before the Landgericht Düsseldorf. The patent in suit claims an improved stapler for internal organs, or rather an "improved pocket configuration for internal organ staplers" (this sounds very painful, somehow).

The alleged infringer counter-sued before the Bundespatentgericht (Federal Patent Court) for nullity of the patent based on lack of enablement and lack of inventiveness. The Federal Patent Court, in a decision of 2007, declared the patent (which has in the meantime expired) void for lack of enablement without addressing the inventive step issues.

In a decision of 13 July 2010 (just published) the Bundesgerichthof (Federal Supreme Court) reversed. It notes that the term "disclosure" has to be understood in context and based on its function. A disclosure is novelty destroying only if it clearly and unambiguously discloses the claimed invention. However, the specifications of a patent sufficiently enable the invention if the person skilled in the art is, based on his general knowledge and the disclosure of the patent, able to carry out the invention without inventive activity. This does not require that at least one embodiment of the invention is disclosed such that it would be novelty destroying for the invention (para. 17 of the decision). In other words: a disclosure may be sufficiently enabling for an invention without being novelty destroying for the same invention.

In the case at hand, the Bundesgerichtshof held that the patent was enabling and reversed the Federal Patent Court's decision. The case was (unusually) sent back to the lower court because it had not made any findings on inventive step, which was the second claimed ground for nullity.

12 comments:

MaxDrei said...

With the very recent DSS v. ECB case, following "Olanzapin"(?), the BGH has just decided that "disclosure" for the purposes of Art 123(2) is the same as "disclosure" in a document used as a novelty attack. But nevertheless, patent law is still complicated enough without making it more complicated by thinking about the disclosure in the description of the attacked patent having anything to do with novelty attacks on the claims of the patent in suit.

Conversely, if "novelty" is about "planting the flag" then we ought to be able to see from the description of the attacked patent that the inventor, by the filing date, had already "planted the flag" within the scope of the claim. This reminds me of the American "written description" requirement of 35 USC 112, that the inventor show in the appln as filed that, at the time of filing, he/she was "in possession" of the claimed invention.

So, even as the BGH this summer bends its knee to the European norm on "disclosure", is it opening another front, on sufficiency and enablement?

Or am I making something out of nothing?

Gobhicks said...

My head hurts. Does this mean that a claim is enabled if its subject matter is obvious in light of its accompanying description?

Anonymous said...

This is ad fontes and calls for Lord Hoffmann in SYNTHON at 32
"Likewise, the role of the person skilled in the art is different in relation to disclosure and enablement. In the case of disclosure, when the matter relied upon as prior art consists (as in this case) of a written description, the skilled person is taken to be trying to understand what the author of the description meant. ... the disclosure is either of an invention which, if performed, would infringe the patent, or it is not. The person skilled in the art has no further part to play. For the purpose of enablement, however, the question is no longer what the skilled person would think the disclosure meant but whether he would be able to work the invention which the court has held it to disclose."

Anonymous said...

I'm confused. This seems, to me, to suggest that a patent can enable an invention without telling you what that invention is, which just seems bonkers.

MaxDrei said...

Sorry Anon, what is "ad fontes". My copy of Nil Desperandum only has "fons et origo", so I suppose ad fontes is something like "back to the fundamentals".

Anonymous said...

This seems, to me, to suggest that a patent can enable an invention without telling you what that invention is, which just seems bonkers.

You haven't read many US-drafted patents, have you?

Mark Schweizer said...

The BGH is applying well-established EPO case law here, I believe. The skilled person has the same level of skill for assessing inventive step and sufficient disclosure (see T 60/89, OJ 6/1992, 268, T 694/92, OJ 9/1997, 408). When considering novelty, however, the skilled person is "dumb", so to speak. A prior art document is not novelty destroying if it does not disclose every single feature of the invention, even if the missing feature is obvious in view of the prior art. For sufficient disclosure, however, if a required step for enabling the invention is not disclosed, the invention is still sufficiently disclosed if the missing step is obvious for the skilled person. Gobhicks pretty much hits the nail on the head, imo.

MaxDrei said...

Mark, you haven't mentioned how "disclosure" is, when it comes to Paris Convention priority or prosecution amendments and Art 123(2)).

What a document "discloses" is always the same, isn't it, whether for added subject matter, for novelty, or for recognising that a priority declaration is valid. The description has to "support" the claims and enable the invention. In the EPC in English, both Art 55 and Rule 42(1)(c) use the word "disclose". But, in German, two different words are used. Interesting.

Me, I think Anonymous at 10.02 is bang on. What does Gobhicks think of that particular posting, I wonder.

Gobhicks said...

Max, re anon @10:02AM-7.9

“For the purpose of enablement, however, the question is no longer what the skilled person would think the disclosure meant but whether he would be able to work the invention which the court has held it to disclose."

I would read that as being consistent with the idea that a claim is enabled if it is obvious in light of a disclosure, whether that be the disclosure provided by its own specification or a prior art disclosure. Thus, if a claim is enabled by a prior art disclosure, it is invalid either for lack of novelty or for lack of inventive step.

As to anon@1:24PM-7.9, “This seems, to me, to suggest that a patent can enable an invention without telling you what that invention is, which just seems bonkers” – not a problem if you start from the premise that the invention is whatever is defined by the claim, as the Americans do.

Anonymous said...

What is the problem exactly?

The patent specification INCLUDING THE CLAIMS will always be novelty destroying for the claimed invention (had the patent specification been prior art, that is...).

In many cases (e.g. problem inventions) the invention as defined by the claims can be trivially carried out without the need for any detailed description.

I completely fail to see what is shocking about the BGH's decision.

Anonymous said...

@Gobhicks:
A claim is enabled if its subject-matter is obvious in light of the claims, the drawings, the description and the common general knowledge and without having regard to (what else is in) the state of the art.

In other (more complete) words:

A claim is obvious if the skilled person, using only his normal abilities and common general knowledge, would arrive at at least one of its embodiments when having regard to only the state of the art.

A claim is enabled if the skilled person, using only his normal abilities and common general knowledge, would be able to arrive at substantially all of its embodiments when having regard to the claims, description and drawings.

Gobhicks said...

Thanks anon 10:16
I did mean obvious in light of disclosure alone - i.e. disclosure plus CGK - not disclosure plus other specific disclosure from the state of the art. A point worth clarifying.

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