IP Report
Patent Law

Sufficiency of Disclosure and Enablement
German Federal Court of Justice, judgment dated January 8, 2019 –docket no. X ZR 58/17
Reported by Dr. Axel B. Berger and Dr. Nils Lindenmaier

In its judgment dated January 8,
2019, docket no. X ZR 58/17, theGerman Federal Court of Justiceconsolidates its previous case law
regarding the requirements of aclear and complete disclosure of aninvention. For the purpose of such a
disclosure, it is not necessary that allconceivable embodiments coveredby the wording of the patent claim
may be realized with the aid of theinformation disclosed in the patent.
Rather, it usually suffices if at least
one enabling way of achieving theinvention is disclosed.

1. Background of the decision
The decision was based on the following
facts and circumstances:
The subject matter of the patent-in-suit isan apparatus for the drying of particulatematerial of a type known as such in which
the drying takes place in superheated steam
in a closed container, in the upper part ofwhich a dust-separation cyclone is arranged.

ously being swept into the dust separationcyclone together with the steam.
Specifically, the patent-in-suit defines thatthe problem to be solved by the invention
is the provision of an apparatus which has
a greater drying capacity than the known
types of apparatus, without this giving riseto an increase in the cost of the apparatus,
and without any reduction in the quality of
the finished product.
To solve the problem, the patent-in-suit provides that at least a half part of the steam
is fed into the upper part of the cyclone
through corresponding openings insteadof not feeding the steam into the bottompart of the dust separation cyclone, or onlyfeeding the steam into said bottom part to asmall extent, as was the case in the known
types of apparatus.
For this purpose, patent claim 1 suggests anapparatus for drying particulate material insuperheated steam, particularly comprisinga dust separation cyclone (8) for receiving
steam and dust and for separating the dust
from the steam, characterized, inter alia, inthatDr. rer. nat., Docteur,Dipl.-Biol. Axel B. Berger
German and European
Patent Attorney, PartnerDr. rer-nat., M. Sc.
(Chemistry)Nils Lindenmaier
Patent Engineer, Trainee
Patent Attorney

BARDEHLE PAGENBERG
Partnerschaft mbB
Patentanwälte Rechtsanwälte
Prinzregentenplatz 7

According to the patent-in-suit, a disadvantage of the known apparatus type isto be eliminated by means of the claimed
apparatus, namely the fact that the steam
flow and, thus, the drying capacity cannot
be increased without an unacceptably greatamount of particulate material simultane-

5.1 the dust separation cyclone (8) hasopenings (14) in the upper part
thereof for receiving at least a halfpart of the steam and dust therefrom,and81675 Munich
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F +49.(0)89.928 05-444
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5.2 that the residual steam and dust,
if any, is fed to the cyclone (8) frombelow.
The Plaintiff filed a nullity complaint
against the patent-in-suit with the German
Federal Patent Court, inter alia on thegrounds for nullity of a lack of enabling
disclosure, in particular with respect tothe aforementioned feature group 5. The
Plaintiff argued that the instruction offeeding at least a half part of the steam anddust to the dust separation cyclone throughthe openings (14) in the upper part thereof
and feeding the residual from below was notenabled because feeding x% of steam anddust to the openings (14) in its upper partand feeding (100 - x)% of steam and dust
from below in a targeted manner is technically impossible.
2. The Decision of the German Federal
Patent Court
The German Federal Patent Court dismissed the nullity complaint as unfounded
and, in particular, affirmed the enabling
disclosure of the invention. In its statementsof grounds, the German Federal Patent
Court also made reference to the worked
example described in the patent-in-suit,according to which all of the steam and dustis fed through openings in the upper part.

3. The Decision of the German Federal
Court of JusticeIn reaction to the Plaintiff’s appeal, theGerman Federal Court of Justice confirmed
the decision by the German Federal Patent
Court and dismissed the appeal, stating thefollowing:
The embodiment of the patent-in-suit shows
how a vaporization dryer in accordancewith the claim features has to be designed.
Said example also corresponds to features
5.1 and 5.2 in that the dust-containing
steam is exclusively fed through the openings arranged in the upper part of the dust
separation cyclone. The variation of feedinga part of the dust-containing steam to thedust separation cyclone from the bottom,according to feature 5.2, does not describe
any different teaching in this regard. The
German Federal Court of Justice explicitly
followed the finding by the German Federal
Patent Court, according to which this may begathered from the parenthetical phrase“if any” in feature 5.2. Thus, to enable realization of the teaching of said claim, showing
a subject matter in which the dust-containing
steam is exclusively fed from the top bymeans of the embodiment in the patent-insuit is sufficient, according to the German
Federal Court of Justice.

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Comments

The present decision confirms the principle
regarding enabling disclosure that had
previously been defined by the German
Federal Court of Justice, according to which
the person skilled in the art has to be able
to realize the teaching of the patent claim
without inventive skill and without undue
burden based on the whole disclosure of thepatent specification, including the description and the drawings, in combination withthe common general knowledge of the skilled
person on the date of filing or priority andto practically realize it in such a mannerthat the desired success is achieved. For thispurpose, however, it is not necessary that
all conceivable embodiments covered by thewording of the patent claim may be realizedwith the aid of the information disclosed in
the patent.

The European Patent Office (EPO) applies
the enablement regulations in a more stringent manner in this regard. While disclosing
a way in which the person skilled in theart may carry out the invention is usually
sufficient, even in the practice of the EPO,
this only applies if the invention may also be
realized in the whole area claimed on thisbasis. Therefore, in the present case, the EPO
could conceivably have considered the provision of only one enabling way of the claimed
invention in the form of the threshold valueof 100:0% not sufficient regarding the distribution of 50:50% to 100:0% of the steam andthe dust in the upper part claimed by meansof feature 5.1. This would have been conceivable at least if the person skilled in the art
had not been able to realize the full range
up to a distribution of 50:50% on this basis
without undue burden.

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