The Scope of Protection of Patent Claims in Europe and the UPC Paul England*
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Journal of Intellectual Property Law & Practice, 2016, Vol. 11, No. 9 ARTICLE 689 The scope of protection of patent claims in Europe and the UPC Paul England* Article 69 of the European Patent Convention (EPC) The author states that the extent of the protection conferred by a Paul England is a senior associate and PSL at Taylor European patent or a European patent application shall Wessing. He is the editor of the forthcoming book be determined by the terms of the claims, using the de- UPC: A Practitioners’ Guide to the New European scription and the drawings to interpret the claims. Patent Litigation System (Hart Publishing, 2016) and Article 69 is to be interpreted according to the Protocol the consulting editor of Intellectual Property in the Downloaded from on Interpretation of Article 69 of the EPC (the Life Sciences (Globe Law and Business, 2015). ‘Protocol’). Article 1 of the Protocol states: This article Article 69 should not be interpreted in the sense that the ex- tent of the protection conferred by a European Patent is to Article 69 of the European Patent Convention links be understood as that defined by the strict, literal meaning of the scope of protection conferred by a patent to its http://jiplp.oxfordjournals.org/ the wording used in the claims, the description and drawings claims. The Protocol on Interpretation of Article 69 being employed only for the purpose of resolving an ambigu- EPC clarifies that courts should interpret the claims ity found in the claims. Neither should it be interpreted in adopting an approach that combines a fair protec- the sense that the claims serve only as a guideline and that tion for the patentee with a reasonable degree of the actual protection conferred may extend to what, from a certainty for third parties. In this perspective, the consideration of the description and drawings by a person claims should not be interpreted strictly, nor skilled in the art, the patentee has contemplated. On the con- trary, it is to be interpreted as defining a position between should they be treated as mere guidelines. these extremes which combines a fair protection for the pat- National courts have taken different paths towards by guest on November 29, 2016 entee with a reasonable degree of certainty for third parties. the application of Article 69 EPC. This article ex- The Protocol requires a middle way to be found between amines the approaches taken by courts in the UK, the two extreme approaches that it describes. These ex- Germany, France and the Netherlands, highlighting tremes are based on different philosophies: the first adopts their similarities and differences and examining the a literal approach where the words used in the patent are outcome of two parallel cases. restricted to their literal meaning, as interpreted by the pat- The UPC will need to build a coherent approach, ent and surrounding circumstances (contextual), or alter- seeking common grounds between the various na- natively ‘the meanings assigned to the words by a tional approaches and identifying appropriate solu- 1 dictionary and to the syntax by a grammar’ (acontextual). tions for areas of divergence. According to this philosophy, the words used by the patent draftsman are intended to mark out the claims of the pat- ent precisely. This approach provides a reasonable degree that the patent protects. This approach will provide a of certainty for third parties, as required by the Protocol, fair protection for the patentee, but it leaves third par- but also risks an injustice to the patentee if something he ties in doubt as to the activities that may infringe. thought he had claimed is excluded by a strict and unfor- The difficulty that has been encountered in applying giving construction of the language of the claim. the Protocol is finding the middle way between these The second approach is more liberal. According to two approaches: this approach, the wording of the claims is only taken Like the hippopotamus, the median position is difficult to as a guideline, to be read together with the specification define but the hope is that the man skilled in the art will and drawings. It aims to identify the ‘inventive concept’ recognise it when he sees it.2 * Email: [email protected]. 2 Ibid, 30. 1 H. Laddie, ‘Kirin Amgen – the end of equivalents in England?’ (2009) 40(1) IIC 3. VC The Author(s) (2016). Published by Oxford University Press. All rights reserved. doi:10.1093/jiplp/jpw116 690 ARTICLE Journal of Intellectual Property Law & Practice, 2016, Vol. 11, No. 9 A particular concern with the literal approach is that it art, the scope of protection is limited to the means pre- is likely to exclude immaterial variants—so-called sented in the claim. An example is the claim to detect ‘equivalents’.3 An equivalent is generally understood to HIV with a particular DNA fragment probe, using a spe- be a small variation to a product or process, which en- cific means of DNA/RNA hybridization.5 The function ables it to effectively use the patented inventive concept, of this specific means was known to the art at the prior- without literally infringing the language of the patent ity date. It followed that the claim could not be inter- claim—the product or process lies outside the claim, preted as protecting other methods of hybridization that strictly construed. To expressly address equivalents, the are not claimed but achieve the same function. Protocol was revised to add Article 24: [...] for the purpose of determining the extent of protec- Role of the prosecution file tion conferred by a European patent, due account shall be In the French approach to the scope of protection of taken of any element which is equivalent to an element claims, the prosecution file will form part of the general specified in the claims. factual context by which scope is determined. It has an How ‘due account’ is given to immaterial variants in a additional significance for claims that were narrowed dur- ing prosecution, especially when the claims were nar- clear and structured way goes to the central issue of Downloaded from how patent scope should be determined. rowed in order to secure the grant of the disputed patent. With the Unified Patent Court (UPC) expected to In these cases, a non-ambiguous claim with narrow scope come into force in 2017, this article examines the ap- cannot be given a general scope through interpretation, in proach taken to these issues in four jurisdictions experi- particular when the patentee has been forced, in order to distinguish the invention from the prior art, to limit the http://jiplp.oxfordjournals.org/ enced in patent litigation—France, Germany, the 6 Netherlands and the UK—and addresses whether there scope of the claim in the context of the granting process. is any common ground shared between them that might guide the UPC on this issue. The UK General principles France The specific mention of equivalents in Article 2 of the General principles Protocol was a source of interest in the UK because a by guest on November 29, 2016 Article 69 of the EPC, as amended by the EPC 2000, is ‘doctrine of equivalents’ had never been considered codified in French law by Article L.613-2 of the part of English law. However, even before the provision Intellectual Property Code. The doctrine of equivalents came into force in the UK, the House of Lords held in Kirin-Amgen that Article 69 EPC ‘shuts the door on any is not codified but has been widely adopted and under- 7 stood by the courts to mean that the scope of protec- doctrine which extends protection outside the claims’. Thus, any determination of patent scope must be lim- tion of claims includes variants that have the same 8 function and achieve the same result as those embodi- ited by the extent of the claims and no further : ments within the express language of the claim. Although art. 69 prevents equivalence from extending pro- Whether the doctrine of equivalents applies depends tection outside the claims, there is no reason why it cannot on whether the claims in question are drafted broadly to be an important part of the background of facts known to cover general means (moyens ge´ne´reaux)ornarrowlyto the skilled man which would affect what he understood the cover particular means (moyens particuliers). For the claims to mean. That is no more than common sense. It is doctrine to apply to moyens particuliers, the court must also expressly provided by the new art. 2 added to the Protocol by the Munich Act revising the EPC [...] first assess the function of that means to establish whether it is new. If it is new, a variant that has the same Since Kirin-Amgen, the Court of Appeal has sought to function and achieves the same result will be equivalent. organize the principles laid down by the House of On the other hand, if the means is already known to the Lords in a list of eleven guidelines.9 The ninth item on 3 For the purposes of this paper, the terms are used interchangeably. 6 Cour d’Appel, Paris, Case No. 08/00882 Hewlett Packard GmbH v Agilent 4 Munich Amendment Act to the European Patent Convention dated 29 Technologies Deutschland GmbH of 27 January 2010. November 2000. 7 Kirin-Amgen Inc v Hoechst Marion Roussel Ltd. [2004] UKHL 46; [2005] 5 Cour de Cassation, Appeal S 09-15668 Institut Pasteur v Chiron RPC 9. Healthcare of 23 November 2010. Compare Cour de Cassation, Appeal 8 Ibid, para 49.