Protection of Biotech-Inventions in Germany

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Own Publications as a bar to Patentability
 
Identity between a patent application claiming priority and the patent application establishing priority

 
1) The nature of priority
 
When an invention is registered for grant of a patent then the submission of the patent application establishes priority (patent application establishing priority, hereinafter referred to as the original application). The effect of such priority lies in the circumstances that for any subsequent patent application (application claiming priority; hereinafter referred to as subsequent application) the application date or the priority of the original application can be claimed as long as the subsequent application is submitted within 12 months from the application date of the original application. Priority can be claimed for a national application, a European application or an international application and claims can be made practically worldwide. The subsequent application or applications need not be submitted in the national jurisdiction in which the original application was filed.
 
Claim to priority is important to the extent that publications of third parties or of the inventor subsequent to the original application but prior to any subsequent application do not pose an obstacle to patentability if both applications are identical in contents.
 
2) Problems of a lack of content identity
 
During the priority interval and due to the inventor's progressive accumulation of knowledge or better knowledge of the relevant state of the art it frequently turns out that the invention should be defined more appropriately with a subsequent application. In such cases, for the subsequent application's contents more than one priority or more than one time ranking can be relevant, more specifically
 
  the priority of the previous application, where the original and the subsequent applications have the same contents, and
  the original application date for everything added afresh by comparison with the original application (surplus).

For domestic German patent applications and for European patent applications one must now assume that the previous application's priority will only be recognised if the original application and the subsequent one are identical in content (cf G2/98 in Official Journal 2001, at 413 and Federal Supreme Court XZR 168/98). The crucial importance of this practice only becomes recognisable if the inventor makes his invention available to the public perhaps through a publication or a lecture. If the original application is not identical in content to the subsequent one then the inventor's publication becomes the relevant state of the art for the subsequent application. This means that priority for the original application cannot be validly claimed for any eventual surplus in the subsequent application so that the inventor's publication poses an obstacle for such surplus. One can only imagine two exceptions to this.
 
(I)   The subsequent application's surplus is not only new when compared with the inventor's publication but per se inventive as well.
(II)   The subsequent application's surplus constitutes merely such a modification in relation to the teaching as a person skilled in the art would have perceived as a matter of course on the original application date with the knowledge of manuals (but not of individual publications such as patents) when reading the previous application.

For any other modification or for any other surplus of the subsequent application over the original one it must be expected that a publication undertaken by the inventor during the priority interval will pose an obstacle to subsequent application. Should an inventor thus publish the contents of the original application within 12 months of its application date then it cannot as a rule be ensured that by the end of the priority year any eventual surplus can be described and disclosed in such a way with the aid of a subsequent application as to be per se an inventive step when compared with the inventor's previous publication.
 
As a consequence of this, the inventor would be urgently advised against publishing the contents of the original application during the priority interval if a more appropriate description of the invention cannot be excluded with the aid of a subsequent application in the course of the next 12 months.