BPatG Decisions: What Patent Attorneys Should Know

BPatG Decisions: Current Case Law for Patent Attorneys

If you practice patent law in Germany and you are not regularly reading BPatG decisions, you are flying blind. The Federal Patent Court in Munich handles the cases that define how claims get interpreted, what counts as inventive step, and when a patent survives a nullity attack. Its rulings shape prosecution strategy, opposition arguments, and litigation outcomes. Here is what matters right now.

Claim Interpretation Is Getting Stricter

The BPatG's recent decision in 4 Ni 10/24 should be required reading for anyone drafting claims with vague terms like "substantially" or "approximately." The court ruled that such terms must be interpreted in the context of the specification and prosecution history, ultimately concluding that "substantially" meant plus or minus ten percent in the case at hand.

The practical takeaway is straightforward: if you use qualifying language in your claims, define it in the description. A sentence or two specifying the intended range or tolerance can save months of litigation. The court is sending a clear signal that it will not fill ambiguity gaps in the patentee's favor.

Inventive Step: Synergy or Nothing

In 20 W (pat) 5/24, the court addressed combination inventions and held that merely assembling known elements without a synergistic effect does not clear the inventive step bar. The skilled person was found to have had motivation to combine, and the expected results materialized without surprise.

This decision reinforces a trend that patent attorneys need to take seriously during prosecution. When your invention combines existing components, you need to articulate clearly what unexpected or synergistic effect emerges from the combination. The "whole is greater than the sum of its parts" argument only works if you actually demonstrate it. Describe the synergy in the application as filed, ideally with experimental data or at least a concrete technical explanation. Trying to argue synergy for the first time in appeal is a losing proposition.

Sufficiency of Disclosure in Biotech

Decision 3 Ni 8/24 delivered a pointed reminder to biotech practitioners: referencing "routine methods" is not a substitute for actual enablement. The court nullified a patent where the complete sequence was not disclosed, holding that the specification must enable the skilled person to reproduce the invention without undertaking an independent research program.

For biotech and pharmaceutical patent attorneys, the lesson is to err on the side of over-disclosure. Include complete sequences, detailed protocols, and specific examples. The cost of a longer specification is trivial compared to losing the patent in nullity proceedings because a panel decided your disclosure expected too much independent effort from the reader.

Partial Nullity and the Art of Fallback Positions

The decision in 2 Ni 15/24 illustrates why smart prosecution strategy pays dividends years later. The court allowed the patent to be maintained in amended form with narrower claims, but only because the limitation was properly based on the application as filed. The patent holder had built in defensible fallback positions from the start.

This is a lesson that begins at the drafting stage, not at the nullity hearing. Every patent application should contain enough intermediate generalizations and dependent claim language to support meaningful claim limitations later. If your only options in nullity proceedings are the broadest independent claim or nothing, you have already lost half the battle.

Strategic Thinking for Both Sides

Whether you represent the plaintiff or the defendant in BPatG proceedings, your approach should be shaped by these recent trends. Plaintiffs should lead with inventive step attacks, which remain the most successful ground for nullity, and should invest in comprehensive prior art searches that include non-patent literature, conference presentations, and prior use evidence. Defendants need to analyze all claims early, prepare limitation strategies based on the specification, and critically examine whether the plaintiff's prior art actually discloses what it claims to disclose.

Settlement should always be on the table. Nullity proceedings are expensive and uncertain. A well-negotiated license, cross-license, or coexistence agreement often delivers better outcomes for both parties than a judgment that one side will inevitably appeal to the BGH.

Using AI to Track BPatG Case Law

Monitoring BPatG decisions used to mean manually trawling the court's database or waiting for journal summaries. AI-powered research tools have changed the equation fundamentally. You can now query case law semantically, asking for decisions on inventive step for software patents from the last two years, and get relevant results with key holdings summarized. This is not a replacement for reading the actual decisions, but it dramatically reduces the time needed to identify which decisions matter for your case.

Research BPatG decisions efficiently with WunderChat -- AI-powered case law analysis for patent professionals. Try now

This article was reviewed and restructured on February 12, 2026 to improve readability. The substantive content remains unchanged.