Construction of patent claims and patent equivalents under ... Construction an… · Dr. Klaus...
Transcript of Construction of patent claims and patent equivalents under ... Construction an… · Dr. Klaus...
Construction of patent claims and
patent equivalents under Art. 69 EPC
presented at
EJTN Judicial Training – IP law seminar
20 September 2017, Bucharest, Romania
by
Dr. Klaus Grabinski
Federal Court of Justice , Germany
2
I. Article 69 (1) EPC:
The extent of the protection conferred by a European patent or a
European patent application shall be determined by the claims.
Nevertheless, the description and drawings shall be used to
interpret the claims.
Construction of patent claims and
patent equivalents
3
Protocol on the Interpretation of Article 69 EPC
Article 1 - General principles
1Article 69 should not be interpreted as meaning that the extent of the protectionconferred by a European patent is to be understood as that defined by the strict,literal meaning of the wording used in the claims, the description and drawingsbeing employed only for the purpose of resolving an ambiguity found in theclaims.2Nor should it be taken to mean that the claims serve only as a guideline and thatthe actual protection conferred may extend to what, from a consideration of thedescription and drawings by a person skilled in the art, the patent proprietor hascontemplated.3On the contrary, it is to be interpreted as defining a position between theseextremes which combines a fair protection for the patent proprietor with areasonable degree of legal certainty for third parties.
Article 2 - Equivalents
For the purpose of determining the extent of protection conferred by a Europeanpatent, due account shall be taken of any element which is equivalent to anelement specified in the claims.
Construction of patent claims and
patent equivalents
4
2-Step Test for determining the scope of
protection of a patent claim
1) Does the product/process infringe the patent
claim as a matter of normal interpretation?
• If yes, the patent is infringed by literal means.
2) If no, does the product/process nonetheless
infringe because it varies the invention in a
way or ways that is or are immaterial?
• If yes, the patent is infringed by equivalent means.
• If no, the patent is not infringed.
Construction of patent claims and
patent equivalents
5
II. Interpretation of the Patent Claim
1) Patent Claim
– No strict philological interpretation.
– The technical meaning has to be ascertained from the
point of view of a person skilled in the art at the
priority day.
– All features are important.
– Each feature to be interpreted in the overall context of
the patent claim.
Construction of patent claims and
patent equivalents
6
2) Description and drawings
The patent claim has to be interpreted always with regard to
• the description and
• the drawings.
Patent specification is a dictionary of its own.
In case of doubt the patent claim is to be construed in a
way that there are no contradictions between the claim
and the description.
An example embodiment in the description does not as a
rule permit a restrictive interpretation of a patent claim that
specifies the invention in general.
Construction of patent claims and
patent equivalents
7
Example 1: „Occlusion device “
Federal Court of Justice, 10 May 2011 – X ZR 16/09, 881 IIC 2011
– The patent relates to an intravascular device
• that is collapsible for deployment through a catheter and
• upon exciting the distal end of the catheter in a patient’s vessel
• will resiliently return to its expanded configuration
• in order to be accurately placed and firmly fixed in the patient’s vessel
• so that the vessel is occluded,
• e.g. to stop the blood flow through an artery to a tumor or other lesion.
Construction of patent claims and
patent equivalents
8
Patent claim
1) A collapsible medical device (60) comprising a metal fabric.
2) The metal fabric is formed of braided strands.
3) The device (60) has
a) a collapsed configuration for delivery through a channel in a patient's vessel, and
b) has a generally dumbbell-shaped expanded configuration.
4) The generally dumbbell-shaped expanded configuration has
a) two portions with expanded diameter (64)
b) which are separated by a reduced diameter portion (62) formed between opposed ends of the device.
5) Clamps (15) are adapted to clamp the strands at the opposed ends of the device.
Construction of patent claims and
patent equivalents
9
Allegedly patent infringing embodiment -
an occlusion implant to treat atrial septum defects
Construction of patent claims and
patent equivalents
10
Allegedly infringing occlusion implant
– is made of a fabric with monofilament wires of a nickel-titanium alloy (nitinol).
– The wires are inverted upon themselves by roughly 180°, resulting in the ends of the threads all being located at the proximal end of the finished device.
– Following heat treatment to give shape, a nitinol sleeve is fitted over the end of the bundle of wires.
– The bundle is cut off at the proximal end of the sleeve.
– An end section is welded to the sleeve.
Construction of patent claims and
patent equivalents
11
Literal Infringement?
Claim construction
• Feature 5 requires that clamps are adapted to clamp the strands at the opposed ends of the device.
• Does this mean that there always have to be more than one clamp?
• Clamps and ends can be interpreted as generic terms.
• However, as a result of the wording “at the opposed ends” there have to be necessarily two clamps.
• This is confirmed by feature 4 b in which the “opposed ends of the device” are already mentioned.
Construction of patent claims and
patent equivalents
12
– What about the description and the drawings?
• In the description it is mentioned that a flat sheet of woven
fabric can be used as shown in the following Figure 1B:
• Furthermore, it is explained that with such a fabric, the fabric
can be inverted upon itself to form a recess or depression and
the fabric can be clamped about the recess to form an empty
pocket (not shown) before the fabric is cut.
Construction of patent claims and
patent equivalents
13
3) File history to be taken into consideration for the interpretation of the patent claim?
Germany:
• Statements of the patent applicant or the examiner may give an indication of how the person skilled in the art would have interpreted the patent claim (Federal Court of Justice 34 IIC 302 (2003) – Permetrexed).
Netherlands
• Only if the question how the claim must be interpreted is still open after the description and the drawings have been taken itoconsideration (Hoge Rad, 28 IIC 748 (1995) – Ciba-Geigy AG/Oté Optics BV).
UK
• Reference to the file is only appropriate where (i) the point at issue is truly unclear if one confines oneself to the specification and the claims and the contents of the file unambiguously resolve the point, or (ii) it would be contrary to the public interest (UK Supreme Court, [2017] UKSC 48,
para 88 – Actavis/Eli Lilly).
France
• Quite ready to refer to the file history.
Construction of patent claims and
patent equivalents
III. Doctrine of Equivalents
German Approach
Element equivalent to an
element specified in the claim
i. Does it have essentially the
same effect?
ii. Was it obvious to the psa
that it has the same effect?
iii. Would the psa have been
able to find as having the
same effect by
considerations oriented to
patent claim?
UK Approach
Element equivalent to an
element specified in the claim
i. Does it have essentially the
same effect?
ii. On being told what it does
was it obvious to the psa
that is has the same effect?
iii. Would the psa have
concluded that strict
compliance with the literal
meaning of the claim was
essential?Construction of patent claims and
patent equivalents
15
Example 1: „Occlusion Device“
Is the attacked embodiment
is an equivalent infringement of the patent claim?
Construction of patent claims and
patent equivalents
16
1) Essentially the same effect?
– Yes.
2) Variant obvious to the psa?
– Yes.
3) Considerations oriented to the patent claim lead to the
variant?
No.
• In the description “alternative” ways of fixing the ends of the metal strands are mentioned like clamping, soldering, brazing, welding or any other manner.
• From these alternatives the claim makes a selection by requiring the strands to be “clamped” instead of requiring them just to be “fixed” in order to prevent them from unraveling.
Construction of patent claims and
patent equivalents
17
As a rule, it can be said that if an element is
disclosed in the description
but not specified in the patent claim
it may be concluded that it is not considered to be an
equivalent element by the psa.
Construction of patent claims and
patent equivalents
18
Example 2: „Pemetrexed”Federal Court of Justice, 14 June 2016 – X ZR 29/15, 208 IIC 2017 [English translation]; UK Supreme Court, 12 July 2017, [2017] UKSC 48 – Actavis/Eli Lilly; Swiss Federal Patent Court, 6 December 2016, 415 sic! 2017 [in German]
Claim:
• Use of pemetrexed disodium
• in combination with vitamin B12 as a medicament for treating tumor growth in mammals.
Allegedly infringing product:
• a medicament containing pemetrexed dipotassium in combination with vitamin B12 as an active substance.
• Pemetrexed is an anti-folate. Pemetrexed disodium and pemetrexeddipotassium are salts of pemetrexed.
• The claim specifying pemetrexed disodium cannot be interpreted as meaning (generic) pemetrexed.
• Pemetrexed dipotassium is not an element specified in the patent claim.
Construction of patent claims and
patent equivalents
19
Is pemetrexed dipotasium an equivalent element?
1) Essentially the same effect?
– Yes.
2) Variant obvious to the psa?
– Yes.
3) Considerations oriented to the patent claim lead to
the variant?
Yes (German and UK Supreme Courts; dissenting Swiss Patent Court)
• The description refers to “anit-folates” but not to pemetrexedsalts other than pemetrexed disodium.
• No plausible reason why the claim should have been limited to only pemetrexed disodium.
Construction of patent claims and
patent equivalents
20
Thank you very much for your attention!
Construction of patent claims and
patent equivalents