“Protective Covering” (Schutzverkleidung)Decision of the Federal Supreme Court (Bundesgerichtshof) 14 May 2019 – Case No. X ZR 95/18

The prior user can be banned from modifying the previously used embodiment not only when this interferes for the first time with the subject-matter of the invention protected by the patent, but also when the prior use already corresponds to the teaching of the invention, but the contested embodiment carries it out in a different design or method.The limits of the right based on prior use can be overstepped when the modification realises an additional advantage that was not brought about by the unmodified embodiment. This can be the case when an embodiment is used for the first time which is emphasised due to this additional advantage in a sub-claim or in the patent description.If, on the other hand, two fully equivalent alternatives for a feature are named in a patent claim, the fact that the prior user only used one of these alternatives will as a rule not justify a corresponding limitation of that user’s use right. It will likewise have to be assessed if in the patent specifications a modification of the previously used embodiment is disclosed that is an obvious alteration that, from the point of view of the skilled person, is readily compatible with the prior user’s possession of the invention at the time of registration or priority.The manufacturer of individual components which technically and economically can only sensibly be assembled to the entire device in accordance with the invention therefore manufactures the entire device even when it does not itself assemble the individual components, but supplies a third party with them, who then assembles them into the protected entire device.The manufacturer of individual components may, under these circumstances, also use a process protected by the patent to manufacture the entire device, as long as the patent claim’s instructions for the process teach no more than the only technically and economically sensible assembly.