Federal Court of Justice on the inclusion of a non-disclosed disclaimer
In its recently published decision “Phosphatidylcholin” (judgment of July 25, 2017 – X ZB 5/16), the German Federal Court of Justice has decided that the inclusion of a feature that a preparation may not contain a certain substance does not necessarily represent an impermissible extension.
The decision is interesting in so far as it represents a delimitation against the former decision "Reifenabdichtmittel" (Urt. v. 12.7.2011 – X ZR 75/08) of the Federal Court of Justice. In this case, the Federal Court of Justice had taken the view that, if it is apparent from the original documents of the patent application that a product should "contain" certain components, it is not readily disclosed as belonging to the invention that no further components may be added to it. For this purpose, it would be necessary to have further indications in the original documents, such as the information that the exclusive consistence of the product of the certain components has particular advantages.
In its present decision "Phosphatidylcholin", the Federal Court of Justice now sees a sufficient disclosure in that phosphatidylcholine is disclosed as a possible component of the preparation and no hint is arising from the application documents for this component being necessary or even advantageous for the preparation. The Federal Court of Justice sees further confirmation in the fact that the formulation examples mentioned in the description do not contain phosphatidylcholine. As no indications should be present that the restriction caused by the disclaimer involves an additional technical effect or that the skilled person receives new technical information, the Federal Court of Justice denies an impermissible extension.
The decision "Phosphatidylcholin" of the German Federal Court of Justice thus represents an approximation to the jurisprudence of the Enlarged Board of Appeal by the EPO (G 2/10).