The Federal Patent Court (15. Senate, Technical board of appeal) has by resolution of 14. October 2010 (AZ. 15 The (pat) 17/09) decided, that no legal aid is granted for a patent application, if the invention is not disclosed as being executable.

Key message

Legal aid according to § 130 Abs. 1 In addition to need, PatG requires a sufficient prospect of the patent being granted. That's what's missing, if the application does not disclose the invention as clearly and completely, that a professional can carry it out (§ 34 Abs. 4 Patgan). A mere list of conceivable substances and uses without specific instructions is not enough; the defect cannot be remedied after the registration date.

Facts

An individual applicant had 2007 filed a patent application with one page description and eight claims and at the same time applied for legal aid. “New mixtures of substances” with chemically modified ones were claimed (from. B. fluorinated, brominated or borated) biomolecules and a long list of possible uses, for example in detergents, cosmetics or electronic materials. The DPMA did determine the need, but rejected the application due to a lack of prospect of success. The complaint was directed against this.

The decision

The Senate rejected the complaint. There is only one executable disclosure, if the expert can implement the teaching without any inventive intervention and without unreasonable difficulties, that the desired success occurs - in this case mixtures of substances with advantages over conventional mixtures. That the modified biomolecules mentioned can be produced using known methods, is not enough for that.

The application contained neither an exemplary embodiment nor any reference to it, which mixture of substances should bring which advantages for which use. The Senate viewed it as a seemingly arbitrary list, which ultimately only represents an invitation, to become inventive yourself. Orientative experiments could not close this gap, and the subsequent submission of examples is excluded, because the invention must be disclosed on the filing date.

Importance for practice

Legal aid is not a sure-fire success: The office checks the chances of success of the application during the approval process. Individual inventors in particular should pay attention to this before filing, that the description contains at least one reworkable exemplary embodiment and the specific technical benefit. What is missing on the registration date, cannot be added later. The decision reflects the legal situation at the time it was issued.

Full text: Federal Patent Court, Decision of 14.10.2010 (CERTIFICATE 15 The (pat) 17/09), available via rechtsprechung-im-internet.de.

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Summary of the decision; no legal advice in individual cases.