BGH on enablement: disclosure may be enabling without being novelty destroying

The American Ethicon, Inc. (part of the Johnson & Johnson group of companies) sued an unnamed defendant based on the German part of EP 337 612 before the Landgericht Düsseldorf. The patent in suit claims an improved stapler for internal organs, or rather an "improved pocket configuration for internal organ staplers" (this sounds very painful, somehow).

The alleged infringer counter-sued before the Bundespatentgericht (Federal Patent Court) for nullity of the patent based on lack of enablement and lack of inventiveness. The Federal Patent Court, in a decision of 2007, declared the patent (which has in the meantime expired) void for lack of enablement without addressing the inventive step issues.

In a decision of 13 July 2010 (just published) the Bundesgerichthof (Federal Supreme Court) reversed. It notes that the term "disclosure" has to be understood in context and based on its function. A disclosure is novelty destroying only if it clearly and unambiguously discloses the claimed invention. However, the specifications of a patent sufficiently enable the invention if the person skilled in the art is, based on his general knowledge and the disclosure of the patent, able to carry out the invention without inventive activity. This does not require that at least one embodiment of the invention is disclosed such that it would be novelty destroying for the invention (para. 17 of the decision). In other words: a disclosure may be sufficiently enabling for an invention without being novelty destroying for the same invention.

In the case at hand, the Bundesgerichtshof held that the patent was enabling and reversed the Federal Patent Court's decision. The case was (unusually) sent back to the lower court because it had not made any findings on inventive step, which was the second claimed ground for nullity.