Disclosure (patent law)
The term revelation (English "disclosure") will be used incomprehension leading meanings in the German and European patent law in two different and confusing.
Most of the time, the term disclosure (or original disclosure or disclosure requirement) is the jargon-like designation of a nonetheless legally required criterion for the admissibility of changes to parts of a patent application or a patent or for the admissibility of the content of a divisional application. This content is presented below under heading 1 Disclosure as a requirement for admissibility for changes .
The meaning of the term, which is required and used much less frequently, but is given by the wording of the law, is the naming of a criterion relating to the technically complete description of an invention in a patent application. This content is explained below under heading 2 Disclosure as a completeness criterion for a technical teaching .
Disclosure as an admissibility requirement for changes
Regulatory content
The disclosure requirement stipulates, in colloquial terms and in abbreviated form, that no additional content may be introduced into a patent application or a patent after it has been filed. In jargon it is said that changes must be initially revealed. Necessary changes to the application or the patent must not generate any content that was not initially recognizable. This applies to the addition of features not initially described as well as to the omission or deletion of features that were initially described as mandatory. Regrouping or re-combinations of features are also checked for disclosure. In practice, this regularly concerns the revision of patent claims in examination, opposition or nullity proceedings.
In accordance with the disclosure requirement, divisional applications may not have any content that was not already contained in the parent application referred to.
Legal basis
Amendments to a patent application
In the German Patent Act (PatG), the disclosure requirement is laid down in Section 38 PatG. He also says that amendments are only permissible if they do not expand the subject matter of the application and that if they should have happened, no rights can be derived from them, i.e. the applicant or patent owner cannot use them to argue the patentability of his invention . In the European Patent Convention (EPC), Art. 123 (2 ) is the legal basis of the disclosure requirement for changes within a patent application or a patent, it requires that patent / applications may not be changed in such a way that their subject matter is beyond the content of the application the version originally submitted.
Content of a divisional application
The disclosure criterion mentioned so far relates to changes within an application. This does not include the filing of a divisional application for a patent application that is already pending, as this is not a process within an application. But even divisional applications should not go beyond the content of the parent application referred to when they are filed. Again in jargon it is said that the content of the divisional application must be disclosed in the parent application. In the German Patent Act, this results from Section 39 PatG. In the EPC this is the content of Art. 76 . It is formulated essentially the same as Art. 123 (2) EPC, but does not concern the processes within an application, but rather the relationship between the parent application and the divisional application.
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Systematic importance
The requirement of the original disclosure of changes means that after a patent has been filed with a patent office, no additional content can be included in a patent application. This is necessary for two reasons:
Key date system for "state of the art"
In order to check whether it is patentable, what is to be protected is compared with the "state of the art". That is the knowledge that somehow became known somewhere in the world before the filing date or priority date as a reference date. The disclosure requirement ensures that this reference date system is retained and that features recognized not only later (e.g. two years after registration) can be used to argue against a prior art that was earlier limited to the reference date.
Legal certainty
Patents are property rights against anyone in a certain territory. To make the situation as predictable as possible for the public concerned, patent applications are published as originally filed. The disclosure requirement for amendments to a patent application ensures that the design options for a patent or a patent application only exist within the scope of the published scope and that no surprises can arise beyond that, for example when "refills" are added two years later.
Impact in the examination process
The need for changes arises regularly when examining and formulating patent claims in the official examination procedure of a patent application before the patent is granted. The patent claims are those passages in the text of a patent which, on the one hand, reproduce the combinations of features that are intended to justify the granting of a patent, and on the other hand, limit the protection of the emerging patent to precisely these combinations. If changes are necessary here in the course of the discussion with the patent office during the examination procedure, one can use the original content of the application, but not going beyond the disclosure requirement.
Evaluation standards
Checking the disclosure requirement requires a comparison of the amended passage with the content of the application as originally filed. This can lead to a variety of constellations and questions. The comparison often requires interpretations of the original text and / or the amended passage to be assessed. The question then arises under which premises this should be done.
Similarities
Across the various patent law systems, there is a consensus that the requirement of the original disclosure of changes should not be understood as meaning that a changed passage must have literally been somewhere in the originally filed version of the application beforehand. Rather, the focus is on the understanding of a professional reader and asked whether the changed passages result from the original documents against the background of his specialist knowledge.
differences
Nevertheless, different patent offices apply the disclosure criterion with different degrees of rigor. The differences are considerable.
By far the strictest patent office in the world on disclosure issues is likely to be the European Patent Office. The argumentative effort in this respect for the European Patent Office and on the other hand the need for advice on this for the applicants is enormous, comes close to the effort required for the substantive work and is underestimated by inexperienced applicants, but also by patent examiners. The European Patent Office dedicates a separate chapter in its Examination Guidelines to the subject of "Amendments and corrections", the scope of which lags only slightly behind the chapter devoted to the material requirements.
The US Patent Office, on the other hand, has adopted a generous practice. As a result, applicants who are experienced in the US process sometimes formulate their patent application only in rudimentary form. In the US patent office, they often meet understanding examiners. In EP proceedings, on the other hand, they often have difficulties because rough descriptions that are sufficient for the US Patent Office are often judged by the EPO to be inadequate and cannot be supplemented or clarified because of the disclosure requirement.
Changes to utility models
The above statements also apply to changes to utility models.
Disclosure as a completeness criterion for a technical teaching
Regulatory content
The disclosure requirement as a criterion of completeness determines colloquially and in short, that a teaching, in order to be patentable, has to be explained to the extent that it can be carried out. The regulation thus turns against two scenarios:
- Technical nonsense can thus be sorted out under patent law, e.g. B. a registered perpetual motion machine, because they are not described until they are feasible.
- Even technically incomplete or (accidentally or intentionally) incompletely explained is not accessible to patent protection.
Legal basis
A sufficiently comprehensible presentation of a technical teaching on which a patent is based is required by Section 34 (4) of the Patent Act or the corresponding Art. 83 EPC entitled “Disclosure of the Invention” .
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practice
The requirement is not to be understood so broadly that a patent or its application must provide a reader with complete “building instructions” for an invention. Rather, the teaching described must be comprehensibly described on the conceptual level on which the invention lies. However, there is no need to describe a "functioning device" in the sense of an implementation or a prototype. It can also be left to the reader to carry out experiments himself on a smaller scale.
In fact, the criterion is rarely used against a patent or its application, because most patent applications are sufficiently written for him.
Violation often irreparable
However, if a patent or a patent application violates the requirement of clear and complete disclosure, this can often no longer be repaired by adding or correcting it. Because these would represent changes in the content of the patent or the associated application that would be inadmissible according to the other meaning of the disclosure criterion explained above. The only thing left then is the abandonment or rejection of the patent or application.
See also
Web links
Individual evidence
- ↑ Part H of the Examination Guidelines of the European Patent Office : Changes and Corrections
- ↑ Part G of the Examination Guidelines of the European Patent Office : Patentability
