In principle, patents may only be granted in the form in which they were applied for. Any change to the documents requires the written consent of the applicant. This does not apply to minor editorial corrections such as the rectification of spelling errors or obvious grammatical or linguistic mistakes.
In the “MOSFET Device” case, which the German Federal Patent Court (BPatG) now had to hear, the applicant filed an international application entitled “Edge Termination for Super Junction MOSFET Devices” on November 30, 2012, inter alia with Germany as the state of destination. In order to initiate the national phase at the German Patent and Trademark Office (DPMA), the applicant sent patent claims and description pages in German language, as well as drawings, specifying “Edge Termination for Super Junction MOSFET Devices” as the title of the invention. The DPMA supplemented this description with the words “and process for its production” and decided to grant the patent.
The patent applicant filed an appeal with the BPatG against the decision to grant the patent. The grounds of appeal were based on the fact that the addition to the title by the German Patent and Trademark Office was not lawful.
The BPatG allowed the appeal and clarifies in its reasoning that a change of designation by the DPMA essentially requires the consent of the applicant. Consequently, the BPatG assumed a violation of the principle of filing an application. It explained that the designation of the invention, as expressly stipulated in Section 10 (1) Patent Ordinance (PatV), must be indicated as the title at the beginning of the description pursuant to Section 34 (3) No. 4 Patent Law.
As the title of the description, the designation forms part of the description and in this function is also part of the content of the request for grant. The examiner may not change the title of the description without the applicant’s consent.
German Federal Patent Court (BPatG)
Reference No.: 7 W (pat) 1/19
December 7. 2020