1 april 2009CIER-lezing Ex parte maatregelen

Claim construction69 EPC

• Extent of patent protection shall be determined by the claims. Nevertheless the description and drawings shall be used to interpret the claims.

• Protocol:1: interpretation which combines fair protection for the patentee with a reasonable degree of legal

certainty for third parties

2: due account shall be taken of any element which is equivalent to an element specified in the claims.

A. Contextual interpretation

A Relevant context when interpreting a patent claim in NL:

1 Description and drawings

2 Prior art

3 Prosecution history – file wrapper estoppel

1. Description and drawings

a Definitions

b Examples

c Inventive concept−NL: the inventive concept behind the exact wording of the

claims is a ‘perspective’

−UK: part of ‘purposive construction’: What would a person skilled in the art have understood the patentee to have used the language of the claim to mean?

c. Inventive concept

• Determining inventive concept– Problem to be solved– Claimed advantages

• Interpreting a feature functionally – Difference NL-UK/DE: In NL this excercise is done

by reading the prosecution history as well

• Not allowed: – Disregard features on the basis of inventive

concept

2. Prior art

a Common general knowledge−Court determines how the skilled person reads claims in

context, in light of description and drawings, using his ‘open toolbox’ with common general knowledge

b Cited prior art (included in description by reference)

c Other prior art – Gillette/Formstein

c. Other prior artGillette defence

• Lord Moulton in Gillette Safety Razor Co v Anglo-American Trading Co (1913)

– Competitor “is entitled to feel secure if he knows that what which he is doing differs from that which has been done of old only in non-patentable (i.e. obvious) variations such as the substitution of mechanical equivalents or changes in material, shape or size”

• In DE known as Formstein defence

c. Other prior artGillette defence

• Materially a disguised nullity attack on a contingent ‘squeeze’ basis:– Either I do not infringe the patent because what I

do is state of the art / merely an obvious variation thereof

– Or the patent is invalid due to lack of novely / inventive step

• In DE bifurcation; considered as defence against equivalence: there cannot be infringement under the doctrine of equivalents as broadening the scope of the claim would bring it into the realm of the state of the art

Gillette defenceExample

• SKB v FAL DUIVEN 22/03/2006

– Claims are for PHH – unrestricted compound claim

– PHA no longer patented – free product– PHA may under certain circumstances (such as

pressure used when making tablets) transform into PHH spontaneously

– No infringement, as defendant must be able to do what was already known in the state of the art (making tablets) with the ‘free’ compound PHA

3. Prosecution history

• To pinpoint ‘Anchora cat schemes’:

– What was previously said to be outside the scope of the patent to argue novelty / inventive step, cannot be lateron argued to be within the scope of the claim when claiming infringement

• The patentee is considered to have abandoned protection now sought for.

3. Prosecution history

• Not in UK and DE, but i.a. in US, NL, Scandinavian countries, Belgium, Switzerland, Austria, Italy, China and Japan; France to a limited extent

• NL:– Always possible for third parties to refer to file

(which is on line), so: to the disadvantage of the patentee (SC Dijkstra/Saier)

– The patentee may only refer to the file when the claim is unclear; but: unclear scope is in principle a problem for patentee, so: not ruled out, but seems only theoretical possibility

Prosecution history

• Effect of the file wrapper history rule:– judge nearly always reads what the file says on

scope of protection –>

• Evaluation specific equivalents often redundant

Arguments against

a. Article 69 EPC + Protocol

b. Munich Diplomatic Conference

c. Legal certainty

d. Inaccessibility

Arguments in favour

a. File is specifically directed to this patent

b. File is always consulted by attorneys

c. Angora cats

Examination Matters 23 September 2010

Examination EnforcementClaims

Three cats

Examination Matters 23 September 2010

Examination EnforcementClaims

Three cats

Examination Matters 23 September 2010

Examination EnforcementClaims

Three cats

Black cat / White cat

Black White

Prosecution historyexample

• Occlutech / AGA Medical– claim element ‘clamps are adapted to clamp the

strands at the opposed ends of the device’– Added during examination to overcome nullity

argument examiner– NL: claim element means there must be two

clamps. Cannot be interpreted functionally resulting in there only one clamp being required; would contravene legal certainty of third parties

– For same reason: no equivalence– No infringement– DE: interpreted functionally as ‘a clamp’; claim

infringed

Why different outcome?

– Bifurcation makes it possible for the patentee to argue an expansive interpretation when asserting infringement and argue for a narrow interpretation of his claim when defending it (anchora cat)

– Absence of file wrapper estoppel in DE

B. EquivalentsDutch approach

• Article 69 Protocol paragraph 2– No clearly defined doctrine of equivalents in NL– Dutch Supreme Court leaves it to factual Courts

• Sometimes used: insubstantial differences, (particularly in chemical cases)

• Most commonly used in NL: – Function – way – result approach:

– Is with essentially the same means (taking into account the function it performs)

– In essentially the same way

– Essentially the same result obtained,

when compared with the relevant claim element

EquivalentsDutch approach

• Applying function-way-result automatically entails determining inventive concept of the claim– Essentially the same function in essentially the

same way providing essentially the same result

• In practice not too problematic an exercise:– Put on the glasses of the skilled person, open the

CGK toolbox of that person and determine whether he reads the modified means as falling within the meaning of the claim or not

– Rather down to earth: usually the way or the result is clearly different and thus not essentially the same

EquivalentsDutch approach

• No equivalence if the device with the modified element is to be considered inventive vis-a-vis the patent claim invoked

• The Dutch approach in determining scope (looking at inventive concept as a perspective) nearly always entails taking in equivalents

• Very similar to UK and DE approach

• No substantial differences in outcome in UK / NL / DE

Thank you for your attention

Rian KaldenDistrict Court The Hague

E: r.kalden@rechtspraak.nlT: + 31 (0)70 381 1305