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Feasibility of the invention in the case of generalizations in the patent claim "Setting of repeaters" (Federal Supreme Court)

Federal Supreme Court (BGH), Judgement of January 20, 2022 – X ZR 20/20

Law applied:

Art. 69, Art. 123 para. 2 EPC

Summary:

1. For a disclosure sufficient for the feasibility of the invention, it is sufficient if the person skilled in the art is able, without inventive step and without unreasonable difficulties, to practically realize the teaching of the patent claim on the basis of the overall disclosure of the patent specification in combination with the general knowledge of the art on the filing or priority date in such a way that the desired success is achieved (subsequent to BGH, Oct. 7, 2014 - X ZR 168/12, BeckRS 2014, 21431 - Fixationssystem). (para. 42)

2. In the case of a feature claimed in generalized form, it is not always necessary for the patent specification to show the person skilled in the art a feasible way of realizing it for every conceivable embodiment. (para. 43)

The degree of generalization that is permissible in this context depends in each individual case on whether the protection opened up by the respective version of the claim is within the scope of what can be inferred from the patent, from the point of view of the person skilled in the art, taking into account the description and the embodiments contained therein, as the most general form of the technical teaching by which the problem underlying the invention is solved (subsequent to BGH, GRUR 2019, 715 - Cer-Zirkonium-Mischoxid I). (para. 43)

BGH, Judgment of January 20, 2022 – X ZR 20/20 

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