Generalizations in the wording of a patent claim

Abstract

As a matter of principle, when drawing up a patent claim the applicant is entitled not to restrict the protection claimed to embodiments that are described in the documents submitted. While the applicant may use generalizations when drawing up the patent claim, such a generalization may not seek protection going beyond what a person skilled in the art understands to be the most general form of the technical teaching through which the problem underlying the invention is solved, when the description submitted is taken into account as well as the examples of embodiments contained in the description. According to s 34(4) of the German Patent Act (PatG), the invention has to be disclosed in the patent application in a sufficiently clear and complete manner for it to be carried out by a person skilled in the art. The requirement of clear and complete disclosure of the invention is intended to ensure that the exclusive right granted to the applicant corresponds to the scope of the invention made available to the general public. Where an opposition is lodged against registration of a patent, the patent must be revoked in opposition proceedings under s 21(2)(1) of the PatG if it is held that the invention has not been disclosed in a sufficiently clear and complete manner. Under German patent law the opposition division of the German Patent Office decides on an opposition lodged against a patent. The decisions of the Patent Office are reviewed by the German Patent Court. An appeal to the German Federal Court of Justice (BGH) can be lodged against the decision of the Patent Court. The BGH then decides on the validity of the patent registered and hence on the scope of the patent claims.