European IP Law (Patents), Catania, May 29-30, 2013 Scope of Protection

1. European IP Law (Patents), Catania, May 29-30, 2013Scope of Protection Prof. Dr. Martin Senftleben VU University Amsterdam Bird & Bird, The Hague

2. Contents • Legal sources • Interpreting the claims • Equivalence • Infringement • exclusive rights • exceptions • prior use

3. Legal sources

4. European patent law European Patent Convention concluded in Munich, October 5, 1973, revision: EPC 2000 Community Patent Convention concluded in Luxemburg, December 15, 1975, not in force

5. Art. 1 European Patent Convention (EPC) ‘A system of law, common to the Contracting States, for the grant of patents for invention, is established by this Convention.’ ... 38 Contracting States, 2 extension States

6. Territorial reach of the EPC system

7. European patents (art. 2 EPC) ‘Patents granted under this Convention shall be called European patents.’ ‘The European patent shall, in each of the Contracting States for which it is granted, have the effect of and be subject to the same conditions as a national patent granted by that State, unless this Convention provides otherwise.’

8. European and national phase result: bundle of national patents (national phase) centralized registration procedure at the European Patent Office (EPO)

9. National phase and harmonization no full harmonization of substantive patent law (infringement criteria): Community Patent Convention had strong influence on national legislation, but never entered into force! result: bundle of national patents (national phase)

10. Dream of a Community Patent result: Community Patent = unitary patent right for the entire EU territory EU registration procedure carried out by an EU Patent Office

11. European Patent with Unitary Effect result: patent governed by only one national law (but applicable national law differs from patent to patent) centralized registration procedure at the European Patent Office (EPO)

12. Interpreting the claims (EPC)

13. Art. 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.’

14. Addressee of the patent specification • person skilled in the art • artificial, objective standard • (average) specialist • skilled technician rather than leading expert • has working experience in the relevant field • has standard knowledge • knows the specific, relevant state of the art

15. Source material for interpretation • elements of the patent specification: • claims • description, drawings • different approaches to interpretation: • literal (wording of the claims) • teleological (core of the inventive idea) • in addition: application file?

16. Aims underlying interpretation infringement: wide construction to obtain broad scope of protection validity: narrow reading to shield the patent against prior art

17. Approaches in EPC countries • EPO allows consultation of application files • art. 69(1) EPC does not seem to preclude use for claim construction • rather reluctant: UK courts • nonetheless: if narrow meaning was given to a term to secure the patent grant, a later argument of wide interpretation unlikely to be accepted • more liberal approach in other countries • additional aid to clarify meaning of the claims • example: The Netherlands

18. Dutch Hoge Raad, December 22, 2006, Dijkstra/Saier • at issue: strength of a bucket sealing mechanism • use application file in favour of patent owner: • possible, but: cautious approach required • only if claims remain unclear after careful study of description and drawings • use application file against patent owner: • no reason for restricting use of the file if this supports position of the defendant

19. Protocol Concerning Art. 69 EPC • ‘Article 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.’ = literal interpretation (English tradition)

20. Protocol Concerning Art. 69 EPC • ‘Nor should [Article 69] 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.’ = teleological interpretation (German tradition)

21. Protocol Concerning Art. 69 EPC ‘On the contrary, [Article 69] 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.’ literal (legal certainty) teleological (fair protection) ‘position between these extremes’

22. Dutch Hoge Raad, January 13, 1995, Ciba Geigy/Oté Optics • Ciba Geigy: • has European process patent for disinfecting and cleaning contact lenses • according to the claims, the process is based on a specific sodium chloride solution which is isotonic • Oté Optics: • markets a cleaning product for contact lenses with a different solution that is isotonic

23. Dutch Hoge Raad, January 13, 1995, Ciba Geigy/Oté Optics • no strict, literal interpretation • core idea underlying the invention = starting point of the interpretation • but: additional test of legal certainty • third party interests may require correction of the interpretation • criterion: degree of novelty

24. Equivalence

25. Doctrine of equivalence the same function in the same way with the same results

26. Impact in practice doctrine (+) no need to specify each and every variant of the invention in the specification doctrine (-) more detailed claims advisable to close potential loopholes for competitors

27. Dutch Hoge Raad, October 31, 2003, Van Bentum/Kool • Van Bentum: • has a product patent concerning a truck for the transport of laden pallets • achieves optimal use of space by combining a movable lowest load floor with a fixed highest load floor • Kool: • markets a truck that has a movable highest load floor and a removable top

28. Dutch Hoge Raad, October 31, 2003, Van Bentum/Kool

29. Dutch Hoge Raad, October 31, 2003, Van Bentum/Kool • claims not drafted carefully • nonethelss: interpretation required that strikes a proper balance between fair protection for the patent owner and legal certainty for third parties • equivalent variant of the invention (+)

30. Different approaches in EPC countries • ‘Epilady’ saga (1990-1993) • plaintiff • holds patent rights to ‘Epilady’, a gadget for removing body hair with a coiled spring • defendant • applies same inventive idea • but: uses a rubber tube instead of the coiled spring • DE and NL: infringement (+) • UK: infringement (-)

31. UK approach: three questions • variant having material effect upon the way the invention works? • if yes, infringement (-) • if no: absence of material effect obvious at the date of patent publication? • if no, infringement (-) • if yes: claim indicating that strict compliance with the primary meaning of the terms essential to the invention? • if yes, infringement (-)

32. UK approach: three questions • inherent problem: last question takes the court back to interpretation • critique led to departure from the test • Kirin-Amgen vs. Hoechst Marion Roussel, [2005] RPC (9), 169 • no mechanical application, in particular less helpful in case of complex chemical or biotechnological inventions • example: claim to a whole group of chemical compounds expected to have similar characteristics

33. Protocol Concerning Art. 69 EPC, as amended under the EPC 2000 ‘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.’ = recognition of the doctrine of equivalence? • guarantee of a more uniform interpretation of patent claims in EPC countries?

34. Exclusive rights (CPC)

35. Art. 25(a) Community Patent Convention ‘A Community patent shall confer on its proprietor the right to prevent all third parties not having his consent: from making, offering, putting on the market or using a product which is the subject-matter of the patent, or importing or stocking the product for these purposes;…’

36. Art. 25(b) Community Patent Convention ‘from using a process which is the subject-matter of the patent or, when the third party knows, or it is obvious in the circumstances, that the use of the process is prohibited without the consent of the proprietor of the patent, from offering the process for use within the territories of the Contracting States;…’

37. Art. 25(c) Community Patent Convention ‘from offering, putting on the market, using, or importing or stocking for these purposes the product obtained directly by a process which is the subject-matter of the patent.’

38. Overview direct infringement product patent acts relating to the product (making, offering, using etc.) process patent use of the process acts relating to the product directly obtained from the process

39. Problem 1: identical product may be obtained with a different process process A process B process C process D

40. Art. 34(1) of the TRIPS Agreement ‘…if the subject matter of a patent is a process for obtaining a product, the judicial authorities shall have the authority to order the defendant to prove that the process to obtain an identical product is different from the patented process. Therefore, Members shall provide, in at least one of the following circumstances, that any identical product when produced without the consent of the patent owner shall, in the absence of proof to the contrary,…’

41. Art. 34(1) of the TRIPS Agreement ‘…be deemed to have been obtained by the patented process: a. if the product obtained by the patented process is new; b. if there is a substantial likelihood that the identical product was made by the process and the owner of the patent has been unable through reasonable efforts to determine the process actually used.’

42. Art. 35 Community Patent Convention ‘If the subject-matter of a Community patent is a process for obtaining a new product, the same product when produced by any other party shall, in the absence of proof to the contrary, be deemed to have been obtained by the patented process.’ ‘In the adduction of proof to the contrary, the legitimate interests of the defendant in protecting his manufacturing and business secrets shall be taken into account.’

43. Problem 2: further products may be required to obtain the final product father mother son final production of compact discs

44. Process patent infringement? (UK: Pioneer Electronics vs. Warner Music) A is holder of a UK process patent for the production of ‘father’ discs at a particular pressure. He wants to prevent B from importing final discs. B uses the patented process in China to obtain father discs and carry out the further production steps. He offers the final discs in the UK. father mother son final production of compact discs

45. Indirect infringement

46. Extending patent rights to preliminary acts indirect: rights against those who are essentially involved, in a preliminary way, in bringing about complete infringement direct infringement: rights against those who directly carry out prohibited acts

47. Art. 26(1) Community Patent Convention ‘A Community patent shall also confer on its proprietor the right to prevent all third parties not having his consent from supplying or offering to supply […] a person, other than a party entitled to exploit the patented invention, with means, relating to an essential element of that invention, for putting it into effect...’ = supplying means for putting a patented invention into effect to someone not authorized to work the patent

48. Art. 26(1) Community Patent Convention ‘…when the third party knows, or it is obvious in the circumstances, that these means are suitable and intended for putting that invention into effect.’ = supplier is treated as knowing what is obvious to a reasonable person in the circumstances

49. Dutch Hoge Raad, October 31, 2003, Sara Lee/Intergro

50. Dutch Hoge Raad, October 31, 2003, Sara Lee/Intergro • Sara Lee: • holder of a European patent relating to an ‘assembly for use in a coffee machine for preparing coffee, container and pouch of said assembly’. • Intergro: • offers pouches (coffee pads) on the market that can be used to prepare coffee in the way patented by Sara Lee.