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the Case in Favour of Prosecution History Estoppel

the Case in Favour of Prosecution History Estoppel. EPLAW Annual Meeting & Congress, Brussels, 2 December 2011 Jean-Christophe Troussel Bird & Bird Brussels. USEFUL INTERPRETATION TOOL (1) « FREE CAR WASH WITH GAS » « MAYBE I SHOULD HAVE WORDED IT DIFFERENTLY ».

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the Case in Favour of Prosecution History Estoppel

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  1. the Case in Favour of Prosecution History Estoppel EPLAW Annual Meeting & Congress, Brussels, 2 December 2011 Jean-Christophe Troussel Bird & Bird Brussels

  2. USEFUL INTERPRETATION TOOL (1)« FREE CAR WASH WITH GAS »« MAYBE I SHOULD HAVE WORDED IT DIFFERENTLY »

  3. USEFUL INTERPRETATION TOOL (2) • A « mind willing to understand » wants to use that tool • objective information • from a person skilled in the art • Useful to clarify ambiguous wording • Example: essential feature • « SO YOU SEE YOUR HONOUR, • IT’S OBVIOUS »

  4. ARTICLE 69 & PROTOCOL • Munich Convention 2000: PHE not included into the EPC => no obligation • No exclusion / prohibition either • Article 69 not exhaustive • Equivalents were used before they were included in the Protocol – Why a different regime for PHE? • Conclusion : issue of national law

  5. GOOD FAITH–FAIR PROTECTION (1) • « nemo potest venire contra factum proprium » • Consistent behaviour of the patentee during patent application and during validity or infringement proceedings • Integrity of patent office review

  6. GOOD FAITH–FAIR PROTECTION (2) • Clear surrender? • Statement unambiguously narrowing the scope of protection? • Determinative for the patent grant? • Implemented in the wording of the claim/description?

  7. PREDICTABILITY & LEGAL CERTAINTY • Reduces the uncertainty which is inherent in equivalents analysis • Proper counter-balance to equivalents • File is publicly available • Third parties do rely on it as a source of information

  8. AVOID OVERLY BROAD CLAIMS • Induces applicants to avoid overly broad claims • Induces applicants to apply for the right claims right from the start

  9. USE OF STATEMENTS MADE ABROAD? • In prosecution of parallel patents? • In other parallel court cases?

  10. Jean-Christophe Troussel Partner Bird & Bird Avenue Louise 235 box 1 1050 Brussels Tel: +32 (0) 2 282 60 17 Fax: +32 (0) 282 60 11 jtr@twobirds.com Bird & Bird is an international legal practice comprising Bird & Bird LLP and its affiliated businesses. www.twobirds.com

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