CIER-lezing
Ex parte maatregelen
1 april 2009
Claim construction
69 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 art
Gillette defence
• Lord Moulton in Gillette Safety Razor Co v AngloAmerican 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 art
Gillette 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 defence
Example
• 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
Three cats
Examination
Examination Matters
Claims
Enforcement
23 September 2010
Three cats
Examination
Examination Matters
Claims
Enforcement
23 September 2010
Three cats
Examination
Examination Matters
Claims
Enforcement
23 September 2010
Black cat / White cat
Black
White
Prosecution history
example
• 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. Equivalents
Dutch 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
Equivalents
Dutch 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
Equivalents
Dutch 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 Kalden
District Court The Hague
E: r.kalden@rechtspraak.nl
T: + 31 (0)70 381 1305