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The patent and trademark office Hellmich has taken part in the breathing-gas-pressure-control decision of the Federal Court of Justice, Germany (JCoJ) on the appeal and plaintiff side.

FEDERAL COURT OF JUSTICE
(of Germany)

ON BEHALF OF THE PEOPLE

JUDGMENT (translation)

X ZR 53/08
breathing gas pressure control
Higher Regional Court Munich 7 - O 23286/02
Regional Court Munich I - 6 U 2675/05
Pronounced on:
May 17, 2011
Wermes
Administrative Court Employee as
Clerk of the Court
in the legal dispute
Breathing Gas Pressure Control
German Patent Act 63 (2); EPC, Implementing Regulations, Rule 20 (2)
a) The claim for correction of a designation of inventor exists regardless of the protectability of the relevant invention.
b) As with the claim based on rei vindicatio pursuant to Patent Act Sec. 8 (1), the claim for correction is due to the person who made a creative contribution to the subject matter of the protected invention. The examination to be carried out for this purpose must be based on the patent-protected invention as a whole, including its development (FCoJ acknowledgment, Judgment of February 20, 1979 - X ZR 63/77, BGHZ 73, 337 - Biedermeiermanschetten).
c) When examining the question as to which creative contributions were made by whom, the version of the patent claims is relevant only insomuch as they may reveal that a part of the invention defined in the description does not belong to the subject matter that was granted patent protection (clarification by the FCoJ, Judgment of September 16, 2003 - X ZR 142/01 - GRUR 2004, 50 - Verkranzungsverfahren).
As a result of the oral proceedings held on May 17, 2011 it was adjudged by the Division for Civil Matters X. of the Federal Supreme Court through the presiding judge Prof. Dr. Meier-Beck, judges Gröning, Dr. Bacher, Hoffmann and Schuster:
für Recht erkannt:

As a result of the appeal on points of law as lodged by the plaintiffs the judgment passed by the 6th Division for Civil Matters of the Higher Regional Court Munich, pronounced on February 28, 2008, is set aside.
The legal dispute is remitted to the court of appeal for a new hearing and decision to be passed, also on the costs incurred by the appeal proceedings relating to points of law.
According to Law
Statement of Facts:
1 The plaintiffs, scientists in the field of processing biological signals and executive assistants of the former S. GmbH (hereinafter referred to as S.) request to be named in addition to Dr. Sch., in place of defendants 1 to 3, as co-inventors of the subject matter of the European Patent 1 294 426, which was granted in the course of the appeal proceedings relating to points of fact and law, and the German Patent Application 101 92 802.5, which is pursued only within the scope of this European patent (both shall hereinafter only be referred to as: the patent in dispute).
2 Patent claim 1 of the patent in dispute reads [bracketed items added by the court of appeal]:
"[a]Device for detecting breathing activity of a person
[b] comprising at least a first means for supplying a first signal indicative with respect to a breathing gas flow v; and [c] at least one signal processing means for processing said first signal;
[d] said signal processing means being construed so as to generate a correlation-relation [e] between said reference relation and said first signal and [f] generate on the basis of an observation of at least said correlation-relation an output signal which is indicative with respect to the breathing activity or the physiological condition of the breathing person [g] and to adjust the breathing gas pressure control in accordance with said output signal, [h] characterized in that the signal processing means generates that reference relation on the basis of said first signal detected over a first time period, and [i] that the duration of said first time period is set so as to cover at least two breathing cycles."
3 The application for the invention filed in the German Patent and Trademark Office for the first time on June 30, 2000 was based on the following facts: The company M. GmbH & Co. KG (hereinafter referred to as M.), which has meanwhile ceased to exist, began in 1999 to develop an automatically controlled positive pressure respirator for the ambulant therapy of abnormal conditions of sleep-related respiratory disorders (sleeping apnea), which was to be a further development of a "self-set" device of M. usable in sleep laboratories. The purpose of these devices is to keep the respiratory tract of the sleeping patient open by means of respiratory pressure, so as to achieve a normalization of sleep and respiration. In order to improve the known control methods for such devices, M. instructed S. in 1999 with the technical realization of an automatic control based on the patient data to be procured by Dr. Sch., a sleep physician, and to be medically evaluated. The result of these works was written down by plaintiff 1 in an interim report (Exhibit K2) and by Dr. Sch. in the final report (Exhibit K1). Based on these two reports Patent Attorney R. worked out the international patent application WO 02/00283 (Exhibit B2), which claimed the priority of the application of June 30, 2000 and on which the patent in dispute is based. The rights therefrom were acquired from M. by defendant 4.
4 It was asserted by the plaintiffs that, apart from Dr. Sch., neither defendant 1, a graduate biologist working for M. since 1999, nor defendant 2, a medical specialist in the field of sleep medicine and defendant 3, an electrical engineer acting as managing director of M. in the field of instrument engineering from 1999 until the end of 2001, but only them, the plaintiffs, had made inventive contributions to the subject matter of the patent in dispute. The plaintiffs have requested before the Regional Court to sentence the defendants to agree that they, the plaintiffs, be named as inventors in the patent in dispute instead. The defendants have requested the dismissal of the action.
5 The Regional Court sentenced the defendants as requested. In response to their appeal on points of fact and law the Higher Regional Court has dismissed the action. This is objected by the plaintiffs' appeal on points of law only, which was allowed by the Senate.
Grounds for the Decision:
6 The appeal on points of law results in setting aside the objected judgment and in remitting the case to the court of appeal for a new hearing and decision to be passed.
7 I. The grounds stated by the court of appeal in support of their decision are basically as follows:
8 The plaintiffs did not make any creative contributions to the features of the main claim. Features a and b are state of the art. A signal processing device as recited in feature c is known from the international patent application WO 00/24446 (Exhibit K9) for the calculation of formulas. The fact that the first signal represents the respiratory flow curve as in illustration 2 of the interim report, Exhibit K2, does not justify a creative contribution because it is merely a respiratory measurement, and measurements of this type of a respiratory curve are likewise known in the state of the art. The same applies to the generation of a correlation-relation between the respiratory gas flow and another signal (features d and e). Insofar as it was pointed out by the plaintiffs that a different approach had been required as compared to the state of the art, for it would be crucial in what way two respiratory cycles are compared with each other, a specific comparison is not the subject matter of the patent claim. The development of an algorithm as claimed by the plaintiffs may have been the subject matter of the patent application, but has not manifested itself in the granted claims. In relation to the sub-feature "reference relation" (e) it had also been known to take into account for comparative purposes a preceding breath of air of the same patient. Insofar as the plaintiffs made reference to the "'difference to 1' at local maxima" (that is, the difference to the maximum value 1 of a curve describing the correlation between two breaths of air, Exhibit K2, middle of page 3) in respect of the "indicative output signal" (feature f), this is not the subject matter of the patent claim because it does not teach how the correlation-relation should be contemplated in order to generate an output signal on the basis thereof. The differentiation between different physiological sleeping states, as are documented in illustrations 3 and 4 of Exhibit K2, is not manifested in the granted main claim either. It is incontestable that feature g is known in the state of the art. Finally, creative contributions on the part of the plaintiffs cannot be seen either in the generation of the reference relation over at least two breathing cycles (features h and i). According to plaintiffs' submissions this had been "specified" in consultation with the physician. The other quoted contributions merely mention a more robust statistic by averaging, but do not say anything about the number of breathing cycles. Creative contributions to the invention on the part of the plaintiffs by contributing to the solutions defined in the dependent claims are not obvious either.
9 II. The objections raised against this evaluation in the appeal on points of law only are successful. Based on the grounds stated by the court of appeal the obligation on the part of the defendants to agree to the designation of the plaintiffs as co-inventors cannot be denied.
10 1. a) Pursuant to Patent Act Sec. 63 (2) Clause 1, if the person of the inventor is wrongly designated, the party seeking a patent or the patentee as well as the wrongfully designated party are obliged towards the inventor to submit a declaration of consent to the Patent Office, namely to the correction of the designation in the patent application document and the patent document as well as in the publication of the grant of the patent and the register. No corrections are made in official documents that have already been published (Patent Act Sec. 63 (3)).
11 Pursuant to Rule 21 (1) EPC Implementing Regulations an incorrect designation of the inventor (cf. Art. 62 EPC) is corrected on the request and with the consent of the party wrongfully designated as inventor and, if the request is made by a third party, with the consent of the applicant or patentee (Rule 21 (1) EPC Implementing Regulations). If an incorrect inventor designation is registered in the European Patent Register or has been published in the European patent bulletin the correction will be registered and published therein (Rule 21 (1) EPC Implementing Regulations). If the wrongfully designated inventor does not give the consent by himself it suggests itself to apply Rule 20 (2) EPC Implementing Regulations mutatis mutandis. According to this regulation a third party shall be recorded as inventor if he files with the European Patent Office a legally binding decision showing that the applicant or owner of a European patent is obliged to designate him as inventor.
12 b) The criteria for evaluating who, as the (real) inventor, can demand the consent to the correction of an inventor designation in German patent application procedures (Patent Act Sec. 62 (2) Clause 1) are the same ones that are applicable to a claim for the assignment of the claim for grant or for the assignment of the patent (Patent Act Sec. 8 (1)). Pursuant to the principles under Art. 2 (2) EPC the same has to apply to the consent to the correction in the European proceedings. Placing the same factual requirements on the inventiveness in the matter of a rei vindicatio based claim and a claim for correction is justified by the complementary regulatory content of both claims. While the legitimate person can obtain the legal position he is substantively entitled to, because he is the inventor or the legal successor thereof (Patent Act Sec. 6), by means of the rei vindicatio based claim, the claim pursuant to Patent Act Sec. 63 (2) Clause 1 serves the correct statement of the inventor status in the patent application document or patent document as well as the publication of the patent grant and in the register.
13 c) aa) As with the claim for assignment pursuant to Patent Act Sec. 8 (cf. in this respect FCoJ, Judgment of May 15, 2001 - X ZR 227/99), GRUR 2001, 823, 825 - Schleppfahrzeug), the protectability of the invention in question does not pertain to the factual requirements of the claim pursuant to Patent Act Sec. 63 (2) Clause 1 either. Incidentally, with a view to the rights pursuant to Patent Act Sec. 7 (2), the same applies to the opposition based on an unlawful deprivation (cf. in this respect FCoJ, Decision of February 24, 2011 - X ZB 43/08 - Schweißheizung). This is due to the circumstance that any one of these proceedings are solely concerned with the better rights in the subject matter of the invention, and not with the evaluation thereof under the patent law in respect of whether, and with what content, a patent can be granted on this subject matter.
14 bb) Accordingly, the contribution required for establishing the (co-) inventor status need not be independently inventive. It is not necessary that the contribution as such meets all the requirements of a patentable invention (cf. FCoJ, Judgment of September 16, 2003 - X ZR 142/01, GRUR 2004, 50, 51 - Verkranzungsverfahren). Only those contributions that have not affected the overall success and that are immaterial with respect to the solution, or have been created according to the instructions of an inventor or a third party, are not enough to establish the status as a (co-) inventor.
15 2. The assessment of the question whether the plaintiffs have made creative contributions to the invention for which a patent application was filed for the first time on June 30, 2000 by the court of appeal suffers from the fundamental deficiency that the court of appeal has not dealt with the technical teaching, which the inventors have developed and described in the patent application both in a general form and in the form of specific embodiments, in its entirety.
16 a) It was already pronounced by the Senate in the Judgment of February 20, 1979 - X ZR 63/77, BGHZ 73, 337 - Biedermeiermanschetten, that not alone the subject matter of the patent claims must serve as a criterion for the participation justifying a co-entitlement, but that the invention protected by the patent as a whole and the creation thereof have to be taken into account, and that the extent of performance contributed to the invention, which has to be taken into account in its entirety, by the individual has to be examined (BGHZ 73, 337, 343 et seq.). On examining the question which creative contributions were made by whom the version of the patent claims is relevant only insofar as they may reveal that a part of the invention presented in the description does not belong to that subject matter for which patent protection was granted. Contrary to the assumption of the court of appeal the point is not whether the patent claim is limited to the embodiment mentioned in the description, but merely whether a described embodiment is no longer covered by the patent claim, that is, whether it is outside the patent-protected subject matter and, therefore, cannot establish a co-inventorship in the protected subject matter either. Within this meaning alone should the Senate's judgment of September 16, 2003 (X ZR 142/01, GRUR 2004, 50, 51 - Verkranzungsverfahren) be understood, along with its reference to the subject matter of the invention protected in accordance with the main claims and the dependent claims. The court ruling of the Senate (FCoJ, Judgment of June 7, 2005 - X ZR 198/01, GRUR 2005, 754 - Knickschutz) relied on to support the viewpoint diverging insofar from the counter-statement in the appeal proceedings on points of law relates to the determination of subject matter and scope of protection of the patent, which cannot but take into account the patent claims (Patent Act Sec. 14 (56) EPC). This court ruling cannot be transferred to the problem in question because, as was stated, the performance of making creative contributions cannot be equated with the development of an inventive step which must have been manifested in the claims.
17 b) Besides, the same principles concerning the determination of the content of disclosure of a patent application apply. The subject matter of the invention is inferable from the application as a whole; the patent claims are merely a part of the overall disclosure (Judgment passed by the Senate on July 5, 2005 - X ZR 30/02, GRUR 2005, 1023, 1024 - Einkaufswagen II with further evidence).
18 Only if this is kept in mind is it guaranteed that the subject matter and the scope of the creative contribution to an invention are determined regardless of whether this invention has already been patented, how broad the claim on the basis of which the patent was filed or granted is drafted, and to what extent a broad claim is limited by posterior decisions in opposition proceedings, nullity proceedings or limitation proceedings. Such a limitation, e.g. by introducing features of an embodiment into the patent claim, can merely entail that he whose creative contributions are now no longer covered by the limited subject matter of the invention is excluded from the circle of co-inventors (of the invention still protected after the limitation). The circle of the co-inventors is "inextensibly" determined when the application for the invention is filed, and covers all those who have made a creative contribution to the technical teaching of the invention to which a patent claim relates or can be related according to the overall content of the original disclosure. Hence, contrary to the opinion of the court of appeal, it is irrelevant that the subject matter of patent claim 1 of the European patent has been narrowed by including claim 2 of the application.
19 3. Accordingly, it is legally incorrect, too, that the court of appeal has rejected contributions of the plaintiffs to the subject matters of the dependent claims as being "within the framework of the competent action of the skilled person" or "within the framework of the ordinary skills".
20 By means of such phrases it is occasionally expressed during the examination of the patentability that the subject matters of dependent claims of a superior patent claim, i.e. a claim anticipated by or suggested in the state of the art itself, have no independent inventive character, but that the person skilled in the art was compelled - within the framework of his ("competent") action - to additionally provide this anticipated or suggested subject matter with the embodiment defined in the dependent claim in question. However, the examination of creative contributions to embodiments of the invention, which are the subject matter of a dependent claim or of an exemplary embodiment, is not about the realization of a known or at least obvious subject matter, but about the concrete appearance of the (patentable) invention. They embody in many cases the form in which the invention has put on shape mentally, while the more abstract form of the superior claim is merely due to the effort of the applicant or his patent attorney to file a patent application for the concrete invention with the interest to obtain a broadest possible patent protection in an as general as possible form. The dispute in which particularly the filed patent claim 1 expresses the central idea of the invention at most suggestively, namely to make the breathing air pressure control dependent on the correlation between a breath of air and the "reference relation" generated over several breathing cycles, where applicable, filtered (adaptively) and/or smoothed, and thus on summed up and averaged and, where applicable, further modified comparative values, is a demonstrative example for this.
21 4. Finally, it is inappropriate to examine the individual features of the patent claim in terms of whether these features, seen individually, are known in the state of the art, in order to preclude them as a creative contribution of a co-inventor if this is the case. Apart from the fact that the protectability of the invention is irrelevant in a dispute anyway, it is not necessarily in conflict with the patentability of a technical teaching that any one of its features, seen individually, is known in the state of the art. Of relevance are the technical teaching as a whole, and the contributions made by the individual inventors to accomplish this teaching. The judgment passed in the appeal proceedings, which is not responsive to the first instance ascertainments and silent about who has actually made a substantive contribution to the invention, does not make any substantial statements in this respect.
22 III. In the reopened appeal proceedings the plaintiffs will initially have the opportunity to verify their motions. It is in the nature of things that a representational correction of already published printed documents is not provided. This is explicitly regulated in the Patent Act. The inventor is not corrected on official printed documents that have already been published (Patent Act Sec. 63 (3)). Nothing in Rules 20 and 21 EPC Implementing Regulations implies, and cannot be assumed in other ways either, that this would be different with regard to the European patent document. A correction by issuing a new European patent document is provided only under the requirements of Art. 103 EPC.
23 As regards the subject matter the court of appeal will have to work out as to where the invention can be seen in its entirety, i.e. which technical teaching had been developed and described in the patent application both in a general form and in the form of specific embodiments (II 2 b, c above). Subsequently, it will have to deal with the question whether the plaintiffs had made independent contributions which affected the overall success and which were not irrelevant with respect to the solution (II 1 c bb above). Only subject to the requirements defined in Sec. 529 of the Code of Civil Procedure is the court of appeal here not bound to the first instance ascertainments obtained after the taking of evidence. To this end, the counter-statement in the appeal proceedings on points of law refers to respective challenges in the appellate brief, however.
24 Inasmuch as the plaintiffs want to succeed in being designated as co-inventors instead of the defendants, in accordance with their previous motion, the full success of the action requires that the defendants did not make any contributions that have affected the overall success within the meaning of the above statements, but have been at most irrelevant with respect to the solution, or were made in accordance with the instructions of an inventor or a third party. Insofar it is incumbent on the plaintiffs to furnish negative evidence, which means, according to general principles, that they have to confute the substantive arguments brought forward by the defendants.
Meier-Beck Gröning Bacher
Hoffmann Schuster

Lower Instances:

Regional Court Munich I, Decision of March 10, 2005 - 7 O 23286/02 -

Higher Regional Court Munich, Decision of February 28, 2008 - 6 U 2675/05 -