Outline: Statute Art. 69 EPC Protocol on the Interpretation of Art. 69 EPC

1. Patent Claim Interpretation under Art. 69 EPC – Should prosecution history be used to interpret the patent? presented at Fordham 19th Annual Conference on Intellectual Property Law and Policy 29 April 2010, New York byDr. Klaus GrabinskiJudge at the Federal Court of Justice, Germany

2. Outline: • Statute • Art. 69 EPC • Protocol on the Interpretation of Art. 69 EPC • Interpretation of Patent Claim • Claim • Description and drawings • Prosecution history • Acts or statements in prosecution history • Published patent application or previous versions of patent specification before restriction of patent claim • Good faith argument

3. Statute Article 69 (1) EPC: The extent of the protection conferred by a European patent or a European patent application shall be determined by the terms of the claims. Nevertheless, the description and drawings shall be used to interpret the claims.

4. Protocol on the Interpretation of Article 69 EPC [EPC 2000] Article 1 - General principles 1Article 69 should not be interpreted as meaning that the extent of the protection conferred 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 drawings being employed only for the purpose of resolving an ambiguity found in the claims. 2Nor should it be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. 3On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties. Article 2 - Equivalents For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims.

5. Interpretation of Patent Claim • Patent Claim • Content of thepatent claim is decisive. • Each feature of the patent claim has to be interpreted in the overall context of the patent claim. • All features are important. No distinction is made between the preamble and the characterizing part of the claim. • No strict philological interpretation of the patent claim. • Instead, the technical meaning has to be ascertained from the point of view of a person skilled in the art at the priority day.

6. Description and drawings • The patent claim has to be interpreted always taking into consideration the description (state of the art, problems underlying the invention, advantages of the invention, examples of the invention) and the drawings (may illustrate the state of the art and the invention). • Patent specification is a dictionary of its own. • 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.

7. Prosecution history • Acts or statements in prosecution proceedings • Example: • In prosecution proceedings the patent holder alleges in a statement to the Patent Office that a narrow interpretation should be given to the patent claim. Consequently, the patent should be considered new with regard to a pre-published document. • The Patent Office grants the patent. • Later the patent holder sues a competitor for infringement giving a broad interpretation to the patent. • The competitor (defendant) argues that the patent holder is bound to his narrow interpretation.

8. “Acts or statements in the granting proceedings have no bearing on the determination of the patent scope”.* • Article 69 of the EPC bases the determination of the extent of protection exclusively on the patent claims, the description and the drawings. • Consequently, the issue does not turn on acts or statements in prosecution (grant) proceedings. *Federal Court of Justice, 34 IIC 302, 307 (2003) – Kunststoffrohrteil (Plastic Pipe Part)

9. Interpretation of patent claim from the angle of a person skilled in the art at the priority date • It is also settled case law* that statements in the prosecution file can be an indication as to how a person skilled in the art would have interpreted the patent claim at the priority date. • However, this is only one indication and does not supersede the general principles of claim interpretation as explained in files 5 and 6. *Federal Court of Justice, GRUR 886, 888 (1993) – Weichvorrichtung

10. Published patent application or previous versions of the patent specification before restriction • Example: • The patent claim of the published patent application provides a tool made up of either material A or material B. • The patent claim of the granted patent provides a tool made up of material A. • In the description of the granted patent, however, it is explained that the tool can also consist of material B. • The patent owner sues a competitor who sells a tool that consists of material B for equivalent infringement. He argues that an average person skilled in the art would consider a tool made of material B to be an equivalent of a tool made of material A since it is mentioned in the patent’s description. • The competitor argues that a comparison of the claims of the published patent application and the granted patent clearly shows that material B should not be protected by the granted patent.

11. In a recent decision* the Federal Court of Justice left it open whether discrepancies between the patent specification and the published patent application (or a previous version of the patent specification before restriction in opposition proceedings) can be taken into account in the construction of a patent. *Federal Court of Justice, 42 IIC 218, 223 (2011) – Gelenkanordnung (Articulation Arrangement)

12. Good faith argument The “Steeping device” case • After grant of the patent a competitor of the patent owner files an opposition. • In opposition proceedings the patent owner declares that he does not wish to seek protection for a particular embodiment. • On the basis of this statement the patent is upheld. • The opponent starts with the production and the marketing of the respective embodiment. • Later the patent owner sues the competitor for infringement of his patent. Judgement of the Federal Court of Justice*: In this kind of situation the patent owner violates the principle of good faith by reason of an inadmissible exercise of a right (venire contra factum proprium) if the defendant is entitled to put his trust in the patent owners reliability. *Federal Court of Justice, Official Journal EPO 141 (1998) – Steeping Device II (Weichvorrichtung II)