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Clarity – a patent requirement nonexistent in German Patent Law

One of the requirements for a patent application according to § 34 (4) of the German Patent Act is that: “In the application, the invention must be disclosed as clearly and completely that it can be carried out by an expert.” This sentence contains the requirement of practicability for a skilled person. In the European Patent Convention Art. 83 EPC contains a corresponding requirement. Art. 84 EPC defines the requirement of clarity. However, there is no equivalent for Art. 84 EPC in German Patent Law. The question whether § 34 (4) Patent Act should also be understood as a requirement of clarity has been answered divergently by German jurisdiction in the last few years.

In the application appeal proceeding 15 W (pat) 9/13 “Polyurethanschaum” (polyurethane foam) before the German Patent Court against the rejection of the disputed patent application, the question regarding lawfulness of the rejection based on lacking clarity had to be answered. Due to the general significance of this question, the president of the German Patent and Trademark Office joined the proceeding and expressed her opinion1. In her statement, the president (Mrs. Rudloff-Schaeffer) was of the opinion that a rejection for lack of clarity should be possible. However, the 15th senate of the German Patent Court decided against this opinion of the president reasoning that lack of clarity was no reason for rejection. Therefore, the rejection of the patent application was cancelled and with the decision dated June 24, 2015, the application was remanded to the German Patent and Trademark Office.

The filing of an appeal to the Federal Court of Justice was admitted in this decision. However, an appeal was not filed by the president. Therefore, one has to wait for a later opportunity to get a statement from the Federal Court of Justice with regard to the question as to whether § 34 (4) Patent Law can also be understood as a requirement for clarity. As no appeal was filed, the president seems to have been convinced by the opinion and reasoning of the 15th senate. It can currently generally be said that in German Patent Law, a rejection of a patent application for the reason of lack of clarity is at least quite improbable.

The requirement of clarity belongs to the formal requirements on a patent application. As this requirement of clarity is not explicitly determined in German Patent Law, it should be noted that there are lower formal requirements in Germany with regard to the assessment of clarity in grant proceedings than in Europe. Therefore, for some patent applications, grant prospects can be better in Germany than before the European Patent Office. It should, however, be pointed out that clarity is not only important in grant procedures. Lack of clarity in an adversarial infringement action will go at the expense of the patent owner. Clear patent claims are desirable for obtaining a broad scope of protection.

Dr. rer. nat. Jörg Krujatz (PA)

1 Dieter Schneider, „Clarity of patent claims – comments on German and European Law“, Journal “Mitteilungen der deutschen Patentanwälte” (Information by German Patent Attorneys), February 2016, page 49 ff.

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