Under German equivalence practice, a patent‘s scope of protection may not be extended on embodiments which are disclosed in a patent specification, but not covered by a claim. In such situations, the courts assume a so-called „implicit waiver“, i.e. the disclosure of such embodiments gives rise to the assumption that the applicant recognized them, but did not – for which reasons whatsoever – want to claim them (see Article of 19/03/2014).

In its judgment „Pemetrexed“ of June 14, 2016 (ref.: X ZR 29/15), the Federal Court of Justice has refined its jurisprudence on such „implicit waivers“.

Accordingly, this case-law shall normally be directly applicably only if the patent discloses multiple specific embodiments, not all of which are covered by the claims. This is to be distinguished from cases in which only one specific embodiment (e.g. a molecule) is disclosed and claimed, but where the patent further discloses a more general subject-matter (e.g. a class of various molecules) and further shows that this more general subject-matter already may solve the technical problem underlying the invention.

In the latter situation, the court shall exame, taking into account all circumstances of the particular case, if the patent specification indicates that the claimed specific embodiment was purposefully selected. This may be the case, in particular, if the description associatess certain properties with the claimed embodiment, which properties are relevant to achieve the invention‘s function.

Further, the Court of Justice contemplated whether an „implicit waiver“ could be derived from the prosecution history. However, this would require that a limitation was made in order to establish  patentability. In the case at hand, the court found that the respective limitation was made for formal reasons only, so the court did not finally rule on the relevance of the prosecution history.