BPatG Decisions: What Patent Attorneys Should Know

BPatG Decisions: Current Case Law for Patent Attorneys

The Federal Patent Court (BPatG) is the central authority for patent disputes in Germany. This article provides an overview of current case law and practical implications.

The BPatG: Overview

Jurisdiction

The BPatG handles:

Proceeding Type	Description
Nullity proceedings	Challenging granted patents
Appeals	Against DPMA decisions
Compulsory licenses	In exceptional cases

Instances

DPMA (Grant/Rejection)
        ↓
BPatG (Appeal/Nullity)
        ↓
BGH (Legal Review)

Current Key Decisions

Decision 1: Claim Interpretation (4 Ni 10/24)

Topic: Interpretation of "substantially" in claims

BPatG ruling:

• Vague terms require interpretation in context
• Specification and prosecution history relevant
• "Substantially" here meant ±10%

Practice tip: Define vague terms in the specification to avoid interpretation disputes.

Decision 2: Inventive Step (20 W (pat) 5/24)

Topic: Assessment of combination of prior art

BPatG ruling:

• Skilled person considered all relevant prior art
• Mere combination without synergistic effect not inventive
• Motivation to combine was present

Practice tip: Clearly describe surprising/synergistic effects in the application.

Decision 3: Sufficiency of Disclosure (3 Ni 8/24)

Topic: Requirements for biotechnology patents

BPatG ruling:

• Complete sequence must be disclosed
• Reference to "routine methods" insufficient
• Patent was nullified

Practice tip: Especially for biotech, provide complete enabling disclosure.

Decision 4: Partial Nullity (2 Ni 15/24)

Topic: Maintaining patent in amended form

BPatG ruling:

• Claims can be limited in nullity proceedings
• Limitation must be based on application as filed
• Partial maintenance with narrower claims

Practice tip: Keep fallback positions in mind during prosecution.

Nullity Proceedings: Process

Phase 1: Nullity Action

Requirements:

• Written action with grounds
• Court fee (€1,960 base + value fee)
• Evidence for nullity grounds

Phase 2: Response

Patent holder:

• 3 months for response
• Defense or limitation
• Counterclaims possible

Phase 3: Oral Hearing

Process:

• Typically 1-2 hours
• Technical judges question parties
• Often decision announced same day

Phase 4: Decision

Possible outcomes:

• Nullity in full
• Partial nullity
• Action dismissed

Nullity Grounds

Art. 138(1) EPC / § 22 PatG

Ground	Description	Frequency
Lack of novelty	Prior art anticipates	Common
Lack of inventive step	Obvious to skilled person	Very common
Insufficient disclosure	Not enabling	Occasional
Extension of subject matter	Beyond application as filed	Occasional
Impermissible extension	In prosecution	Rare

Strategic Considerations

For Plaintiffs

1. Choose strongest ground

   • Usually inventive step
   • Combine with novelty if possible

2. Comprehensive prior art search

   • Published documents
   • Prior use
   • Conference presentations

3. Consider timing

   • Parallel to infringement proceedings?
   • Costs vs. benefits

For Defendants

1. Analyze all claims

   • Which claims are attacked?
   • Which are defensible?

2. Prepare limitations

   • Fallback positions
   • Based on specification only

3. Attack prior art

   • Publication date
   • Disclosure content
   • Relevance to invention

Research Tools

BPatG Decision Database

Official database at bpatg.de:

• Searchable decisions
• Filter by chamber/year
• Free access

WunderChat for Case Law Research

Query: "Find BPatG decisions on
inventive step for software patents
from the last 2 years."

WunderChat provides:

• Relevant decisions
• Summary of key holdings
• Applicable principles

Best Practices

1. Know Current Case Law

Stay updated on:

• Recent decisions in your field
• Trends in assessment standards
• Procedural developments

2. Document Everything

For nullity proceedings:

• Priority dates
• Prior art sources
• Prosecution history

3. Consider Settlement

Often more economical:

• License agreement
• Cross-license
• Coexistence agreement

Outlook

Trends

• Increasing technical complexity
• More software/AI cases
• Interaction with UPC

Implications

Patent attorneys should:

• Maintain BPatG expertise
• Also develop UPC competence
• Use digital tools for research

Conclusion

BPatG case law is essential for German patent practice. Regular monitoring of decisions and use of modern research tools are key to successful representation.

---

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