The requirements for novelty-destroying disclosure have been further refined by the judgment of the Federal Court of Justice dated March 31, 2026 (Case No. X ZR 41/24 – Prothesensteuerung). Far-reaching consequences for the assessment of the prior art in patent practice are derived from this decision.

The Facts: A patent regarding a method for controlling prosthetic motors was the subject of the proceedings. It was claimed that, following contact with an object, pulses with a significantly longer period than the original movement pulses are emitted to achieve force amplification. However, the patent was declared void by the Federal Court of Justice. It was reasoned that a prior art document (D2) already contained instructions for action, the execution of which inevitably realized the claimed period ratio.

Central Principles of Novelty Examination:

1. Instruction to Act and Inevitability: For a novelty-destroying disclosure, it is considered sufficient if an instruction to act is given, the execution of which inevitably realizes all features of the invention. An explicit disclosure of the underlying physical mechanisms is not required for this purpose.
2. Scope of Disclosure: The assessment of novelty is not made dependent on whether an object is explicitly identified in a prior art document as “belonging to the invention”. The only decisive factor is whether the object is directly and unambiguously apparent to a person skilled in the art from the document.

Detailed Practical Tips:

• Examination for Inevitability: During the analysis of the prior art, increased attention should be paid to whether the implementation of described process steps inevitably leads to the features of the own invention. This applies in particular if parameters are not explicitly mentioned in the prior art but are implied by examples.
• Distinction from Mechanisms of Action: Since the mere explanation of a physical effect is not regarded as establishing novelty, the focus of patent applications should be placed on additional, non-inevitable technical features.
• Analysis of Working Examples: The novelty examination should not be limited to the claims of prior art documents. Rather, diagrams or flow charts through which features are disclosed – possibly even unconsciously by the original applicant – are also of significance.
• Argumentation of Non-Inevitability: During the grant procedure, it should be demonstrated in detail why the claimed feature is precisely not an inevitable consequence of the instructions for action given in the prior art.