Requirements to the clarity of claims regarding a decision of the Federal Patent Court.

§ 34 (3) No. 3 of the Patent Act implies that a registration must contain one or more claims which specify what can be protected by a patent. In the decision „Electrochemical Energy Storage“ (BPatG, Decision 22. Mai 2014 – 21 W (pat) 13/10 – effective) the court does not interpret this paragraph as a formality, but as a substantive prescription. Hereto, the decision determines, partly without further justification, that claims have to be clearly and tightly phrased. Further the court indicates that claims have to be understandable by themselves and that a person skilled in the art is, only for the common understanding of abstractly expressed terms and in individual cases, allowed to consult the expressions of the description.

Thereby, the court clearly abandons the German legal situation and the case-law of the Federal High Court of Justice (BGH) and completely agrees with the legal interpretation and practice of the European Patent Office (EPO). Hence, it has to be awaited how the German decision practice will further develop concerning the clarity of claims. However, due to a not performed appeal unfortunately no High Court decision will be tempered.