What is the embodiment in a patent

The possibility of infringing a patent beyond the exact wording of the granted patent claims - by way of the so-called equivalent patent infringement - has long been recognized in German courts. The conditions that must be met for an equivalent patent infringement to be affirmed have been developed in case law. In particular, the replacement means for the solution according to the claims must have the same technical effect, be obvious to the person skilled in the art and be based on the meaning of the invention.

An interesting aspect in this context is the question of whether an equivalent patent infringement can also be affirmed if the originally filed application teaches different embodiments (each of the embodiments represents a solution for the technical problem to be solved), but only one of these embodiments is received found in the granted claims. In an earlier decision ("Occlusion device", X ZR 16/09), the BGH answered this question in the negative for the case in which all said different embodiments were explicitly mentioned in the application originally filed.

In two of its most recent decisions, the BGH has now dealt with this question again. In the first decision (“Pemetrexed”, X ZR 29/15) a group of chemical compounds was described in the patent specification using a generic term. All compounds included by the generic term were named as a solution to the problem to be solved. However, only one of the various compounds falling under the generic term was also explicitly mentioned in the application. The granted claim only related to this explicitly named connection. The defendant in the infringement proceedings brought a different connection - which was not explicitly mentioned in the claims, but was covered by the generic term - on the market. The decisive question in the infringement proceedings was therefore whether the remaining options - which were not explicitly mentioned in the description but were encompassed by the generic term - could or not represent an equivalent violation of the scope of protection of the granted claims. The BGH first confirmed that - in principle - even in such a case, concrete alternative possible solutions, which are only mentioned in the description, could not fall within the scope of protection of the granted patent. However, something different could then apply if the solution according to the claims serves only as an example of a general technical concept and the person skilled in the art is able to derive further embodiments from the wording of the claim that represent an implementation of this general technical concept.

This view was confirmed again in a subsequent decision by the BGH (“V-shaped guide arrangement”, X ZR 76/14). In this case, according to the wording of the granted claims, the V-shaped configuration of a special part of a device was provided. In the description, other shapes were generally mentioned as alternative solutions, but without referring to specific alternative shapes. The defendant in the infringement proceedings now brought devices into circulation in which the said particular part was equipped with a U-shape instead of a V-shape. As in the Pemetrexed decision, the BGH came to the conclusion that a general teaching in the description, which in principle enables the person skilled in the art to find further embodiments, is not sufficient on its own to deny an equivalent patent infringement in principle. This is true even if only a specific embodiment is reflected in the claims. Only if other specific embodiments were explicitly (!) Mentioned in the description (but not the subject of the granted claims), an equivalent patent infringement in accordance with the principles developed in the occlusion device decision would be denied in principle.


In summary, it can be stated that the BGH has "defused" its earlier occlusion device decision by making it clear that the principles set out in this decision should only apply without restriction if only one of several explicitly named embodiments is included in the granted claims has found. The general mention of other embodiments, for example using generic terms, is not sufficient to categorically deny an equivalent patent infringement. Against the background of these decisions, greater care must be taken to ensure that all embodiments that are explicitly mentioned in the application documents are also covered by the granted patent claims.