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Patent Prosecution History Estoppel

I am Rolf Claessen, Partner with Michalski · Hüttermann & Partner, and in this video I explain how a recent decision of the Federal Court of Justice of Germany changed the case law regarding prosecution history estoppel in Germany. Subscribe https://www.youtube.com/subscription_... In this video I explain What is prosecution history estoppel? What was the case law until June last year? What is the new case law in Germany? I have a question for you: did you already come across the problem of prosecution history estoppel in your country? What was your experience? Please let me know in the comments. Wikipedia has very concise and nice definition of prosecution history estoppel: prosecution history estoppel, also known as file-wrapper estoppel, is a term used to indicate that a person who has filed a patent application, and then makes narrowing amendments to the application to accommodate the patent law, may be precluded from invoking the doctrine of equivalents to broaden the scope of their claims to cover subject matter ceded by the amendments. That means that if an applicant has limited the claims from fastening means to screws in prosecution, the applicant will not be able to invoke the doctrine of equivalents to also cover nails. This seems to be the current position in the US. So what was the case law in Germany until June 2016? In 2002 the Federal Court of Justice in Germany issued a decision called Kunststoffrohrteil (X ZR 43/01, http://lexetius.com/2002,247), which basically stated that anything that happened before grant in the granting procedure cannot be used to determine the scope of the claims during litigation. However, in June 2016, the Federal Court of Justice in Germany took a slightly different approach in their Pemetrexed decision (X ZR 29/15, http://lexetius.com/2016,1974). In this particular case, the court decided that under the doctrine of equivalents the claim cannot cover alternatives to a feature in the claim, if these alternatives are mentioned in the description but have not been included in the claim. In the particular case, the applicant had limited a broader term “antifolate” to the specific compound disodium pemetrexed, because the examiner was of the opinion that the broader term was not supported by the examples and could not be generalized for the specific amounts. So be careful when drafting patent applications for Germany or Europe to offer a variety of more specific alternatives as a replacement for broader terms. Also, try to keep this decision in mind when prosecuting your patent application in Germany or Europe. What is your personal opinion? Should limitations of claims during the granting procedure have an impact on the scope of the granted claims? I hope I was able to explain to you what prosecution history estoppel is. If you are new to my channel and want to learn more about patents, trademarks and designs, please subscribe to my channel. I am publishing a new video every Thursday. If you liked the video hit like. I am answering comments and questions below this video. And most importantly, protect your intellectual property and go make it count! Stichworte: Rolf Claessen, Patentanwalt, Michalski · Hüttermann & Partner, Patent Attorney Other useful websites: IP Fridays - http://www.ipfridays.com (intellectual property podcast) IP Newsflash - http://www.ipnewsflash.com (intellectual property news portal, free patent PDF download, free patent family search) About Rolf Claessen Rolf is partner of IP boutique law firm Freischem. The firm is managing about 4500 trademarks and 6500 patents and patent applications for mostly domestic medium sized clients in Germany in many technical fields. The focus of his practice is the prosecution of trademarks and patents and other intellectual property rights. His expertise in patent prosecution encompasses a deep understanding of patent law, prior art searches, prosecuting patent applications, patent drafting, opposition and defending against competitors. With the team at Freischem, he strives to be the external IP department for many medium sized companies. Contact Rolf at Dr. Rolf Claessen Michalski · Hüttermann & Partner Speditionstraße 21 D-40221 Düsseldorf Germany Telephone: +49 211 159 249 0 Facsimile: +49 211 159 249 20 Email claessen@mhpatent.de http://www.rolfclaessen.com Legalese and Disclaimer You have been watching a video by Rolf Claessen. The views expressed by the participants of this program are their own and do not represent the views of nor are they endorsed by their respective law firms. None of the content should be considered legal advice. This video should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents of this video are intended for general informational purposes only and you are urged to consult your own patent attorney on any specific legal questions. As always, consult a patent attorney.