Article 60 of the European Patent Convention and its Protocol - Essay Example

Article 60 of the European Patent Convention and its Protocol Article 60 of the European Patent Convention and its Protocol Introduction The general difficulty for the enforcement and protection of patents in Europe is that while the European Patent Convention prescribes a uniform set of laws for the granting, protection and enforcement of patents, these laws are subject to different interpretations by the various national courts. In order to overcome this difficulty, Article 69 of the European Patent Convention (as amended) and its protocol on the interpretation of patent infringement claims prescribes a means by which a measure of uniformity can be achieved among Member States for patent protection.1 In general the aim is to provide a means by which national patents in Europe will provide patent protection which is consistent with its claim so that the patentee receives fair protection and third parties are reasonably assured of the ambit of that protection. The purpose of this paper is to examine the ambit of Article 69 and its protocol and to determine how the UK has met its obligations under the Article for providing for outcomes that are consistent with the goals and intentions of the European Patent Convention. Quite often a patent claim can include language which can be interpreted to restrict its use so that the patentee has a monopoly on variants of the original patent. This may or may not be his intentions and in the absence of a protocol on interpretation the patentee’s intention may be unfairly misinterpreted. On the other hand, a third party may go to the expense and labour of developing variants and it may be unfair to extend a wider meaning to the patent claim that can not reasonably be inferred. The Protocol attempts to reconcile these competing interests. The case of American Home Products v Novartis [2001] 1 RPC 8 considers this juxtaposition and will be examined together with other key cases in determing how the UK courts have met the obligations for balancing these interests under the Protocol to Article 69 of the European Patent Convention. The European Patent Convention and Article 69 The European Patent Convention 1973 was amended in 2000 to take account of international law developments and to make provision for the minimum standards applicable to Intellectual Property rights and protection under the World Trade Organization.2 The European Patent Convention 2000 came into effect in December 2007 and is binding on all signatories to the European Patent Convention. In general the European Patent Convention and its subsequent amendment makes provision for: “...a system of law, common to the Contracting States, for the grant of patents for inventions.” 3 Article 69 of the European Patent Convention provides as follows: “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 Recognizing its obligations under Article 69 of the European Patent Convention, the UK repealed its Patents Act 1949 replacing it with the Patents Act 1977. Section 124 of the 1977 Acts requires that any question involving the construction and interpretation of a patent will be resolved by reference to Article 69 of the European Patent Convention.5 Among key changes made to the European Patent Convention 1973 in 2000 was an amendment to Article 69. (European Patent Convention 2000) The protocol on the interpretation of Article 69 as amended by the European Patent Convention 2000 provides that Article 69 “should not be interpreted” in such a way as to required that the patent protection granted under the European Patent Convention should be confined to its “literal meaning” as worded in the claims.6 Moreover, the “descriptions and drawings” should not be used merely for “resolving an ambiguity found in the claims.”7 Additionally, Article 69 should not: “...be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend o what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On 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."8 Article 2 of the European Patent Convention 2000 goes on to make allowances for the doctrine of equivalents by providing that when determining “the extent of the protection” granted by virtue of European Patents, “account shall be taken” of any element that is “equivalent to an element specified in the claims.”9 Brad Sherman explains that the overall intention of the protocol on Article 69 was and remains a means of encouraging national courts to take a purposive approach to the interpretation of patent infringement claims, failing which the doctrine of equivalents should be utilized.10 The Approach Taken by English Courts to the Protocol on the Interpretation of Article 69 The English Courts have adapted to the legal framework contained in Article 69 and its subsequent protocol on interpretation. In other words the court of the UK have taken an approach that accepts and recognizes that both a liberal and strict interpretation is forbidding and claims are no more than guidelines. The English courts have found a medium in which they attempt to reconcile the two competing approaches but adhere to a policy that recognizes that the language contained in the claim cannot be ignored. The English courts therefore attempt to discern the meaning that the words used intend. The current position has evolved from the House of Lords ruling in Catnic v Hill and Smith [1982] RPC 183. The House of Lords took the position that a patent description is comprised of specific skills relevant to the art and generally contains what the patentee considers to be the essential elements of his or her patented product. In order to ascertain what the essential elements are a purposive interpretation is necessary as opposed to a literal interpretation. What must considered is whether or not the skilled addressee would be able to understand that the patentee intended strict adherence with specific descriptive terms contained in the claim so that any variation would not amount to an infringement.11 However, there would be nothing to consider if a variation would impact the manner in which the invention functioned. This approach was simplified by the Court of Appeal in Improver v Remington [1990] FSR 181 where it was held that while UK patent law does not adhere to an independent doctrine of equivalents: “...in the end the question is always whether the alleged infringement is covered by the language of the claim...”12 The protection must therefore correspond with the language contained in the claims. The question comes down to whether or not the infringement claimed is one that a skilled person would have concluded was “within the ambit of the language.”13 A three-tier test arising out of the judgment in Improver v Remington represented the general approach taken by the UK courts to Article 69 and its protocol. This relevant questions can be summarized as follows: 1. With respect to the variant, does it materially impact the manner in which the invention functions? If the answer is yes, the variant does not fall within the claim. If the answer is no then question two arises. 2. Would the fact that the variant has no material impact have been evident at the date the patent was published to a skilled person of the particular art? If the answer is no, the variant does not fall within the claim. If however the answer is yes then question three arises. 3. Would a reader skilled in the relevant art have understood based on the language used in the claim that the patentee intended strict adherence with the primary interpretation as a vital requirement of his/her invention? If the answer to that question is yes, the variant falls outside the claim. However, if the answer is no, the variant amounts to an infringement.14 In Merck and Co. Inc. v Generics (UK) [2004] RPC 31, it was ruled that if the three question approach was adapted when taken account of the Protocol, it was only necessary to consider the third question.15 It would appear that the first two questions merely provided a short cut to the third question.16 The court considered the third question in Telsonic AG’s Patent [2004] RPC, 38 and ruled that turning the question around would be more appropriate with the result that the correct question should be: “...whether it would have been apparent to the skilled addressee from the wording of the claim that a limitation to exclude the variant could not have been intended by the patentee.”17 It is obvious that the courts in applying Patent laws by reference to Article 69 and its protocol on interpretation have formulated a medium in which the monopoly is not so narrow that it loses its potential value or is so broad that others cannot conduct further research into the process or product patented or improve upon it. This is especially important in the field of medicine and technology. A patent must therefore be clearly stated so as to permit performance of it by a skilled person. In this respect the law allows a certain level of latitude with respect to the skilled person. In general it is expected that a skilled person handling the patent: “...may need to carry out the ordinary methods of trial and error, which involve no inventive step and generally are necessary in applying the particular discovery to produce a practical result. In each case, it is a question of fact as to whether the steps needed to perform the invention are ordinary steps of trial and error which a skilled man would realize would be necessary and normal to produce a practical result.”18 In other words the addressee is permitted some latitude in filling the gaps left in the language of the patent claim, provided there is no innovative steps involved. This is necessary since it is entirely impractical to require that the patentee provide specific details of the patent. As explained in the case of Biogen Inc v Medera Plc [1997] RPC 1 the “specification” must be such that it permits “the invention to be performed to the full extent of the monopoly claimed.”19 Therefore if the invention is expressed in general terms so that it is of general application “the claims may be in correspondingly general terms.”20 The patentee is not required to demonstrate that “he has proved his application in every individual instance.”21 The facts of American Home Products v Novartis [2001] 1 RPC 8 demonstrate the difference between permitting a specific embodiment of an invention subjec to patent protection and allowing a broader embodiment of the claims contained in a patent description. The case also demonstrates the steps taken by the UK courts to fullful its obligations under Article 69 and its protocol on interpretation of patent claims. 22 In American Home Products v Novartis the American Home Products’ patent at issue was rapamycin which was known to contain material with therapeutic possibilites. The material included immunosuppressive activity which existed prior to the date of the patent. Novartis, the defendant had developed a product which was a by-product or deriative of rapamycin referred to as SDZ-RAD. Its chemical composition was different from that of rapamycin, but aside from this difference the two products were essentially identical.23 The title of American Home Products patent read “ Use of rapamycin and deriatives and products thereof in transplant rejection.”24 Claim One of the patent failed to mention derivatives of rapamycin and despite this failure, American Home Products claimed that upon a purposive interpretation of the patent, Novartis, by introduction of the SDZ-RAD product infringed its patent.25 The court at first instance ruled that there were millions of derivatives from rapamycin that could be produced. Moreover, the invention was for a new use of rapamycin and it was impossible to predict with any degree of certainty whether or not any of the million or so possible derivatives from rapamycin could “work.”26 The Court of Appeal referred to th judgment in Biogen ruling that in order for th patent to sufficient it was required to provide enabling diclosure to the extent that it covered the entire scope of the claim.27 According ot Aldous LJ, that there was big difference between a specification which essentially required that the skilled person utilize his or her skills to use an invention and a specification which would involve a skill person going to the expense of attempting to descern whether or not a product contained the requisite properties for infringment. If the skiled person was required to go to expense and use his own work the patent would be deemed insufficient.28 Based on the facts discerned by the judge at first instance, Aldous LJ explained that most derivatives of rapamycin would not show immunosuppresive activity. In any event isolating derivatives would necessarily require a methodical and persistent work process and even when the relevant derivative had been isolated it would be virtually impossible to know whether or not it contained defects or was contaminated. Ruling out these possibilities would require further tests at great time and expense. As a result the Court of Appeal ruled that the American Home Products’ patent was not sufficient to cover more than the single rapamycin compound.29 The manner in which the Court of Appeal approached the facts of American Home Products v Novartis and construed the patent claims is consitent with the ambit of the protocol on the interpretation of Article 60 of the European Patent Convention. The protocol requires a delicate balancing act which: “Combines a fair protection for the patentee with a reasonable degree of certainty for third parties.”30 The court in American Home Products v Novartis rigidly adhered to the Protocol by not going beyond that which was claimed in the American Home Products’ Patent and by adhering to the protocol’s mandate to be equally fair with respect to “the reasonable degree of certainty for third parties.”31 A vastly similar approach was taken by the courts in Merck and Co. Inc v Generics (UK) Ltd. [2004] RPC 31. In this case the court considered the requirements contained in the Protocol to ensure the patentee is fairly protected and that there is a reasonable degree of certainty with respect to third parties.32 It was ruled that the protocol by necessary implication required that the resulting monopoly should be sufficiently expressed so as to cover all embodiments whether they are specifically stated in the patent claims or not. They should be expressed in terms so as to enable a skilled reader to determine with a reasonable degree of certainty what it is that the inventor intends to have covered by the claim.33 If upon a constuction of the language used in the claim it was obvious that the inventor had no intention of covering variants of the product it was not for the court to extend the monopoly to variants of the invention.34 Likewise, if it a skilled reader could not come to the conclusion that the inventor intended to monopolize a specific embodiment, it could be inferred that the inventor did not intend to include that specific embodiment.35 The court went on to explain that if in such circumstances protection was allowed it could very likely be contrary to the patentee’s intention and at the same time it would deny third parties a reasonable degree of certainty.36 The Court of Appeal also noted that in balancing these competing interests it was necessary to consider the necessity of encouraging research and promoting competition as well as a mandate not to interpret the patent’s protection so as to be inconsistent with the patentee’s intention.37 It is obvious that although the English Courts have basically abandoned the traditional approach of applying the literal and strict meaning to the words used in a patent infringement claim they are not inclined to abandon applying the natural meaning of the words used. The House of Lords considered the application of the protocol on the interpretation of Article 69 in Kirin-Amgen v Transkaryotic Therapies Inc [2005] 1 All ER 667. According to the House of Lords, upon applying the mandate provided for in Article 69 the question turns on what an individual possessed of the particular art contained in the patent claim would have understood the patentee’s language as presented in the claim to have meant.38 Lord Hoffman went onto explain that in applying the “purposive construction” does not require going outside of the definition of the claims.39 Neither does it mean extending the definition. While it was important to keep in mind that the language used is entirely chosen by the patentee often with the benefit of expert advice it was also important to keep in mind that the patentee is attempting to describe an entirely new product, something which had not previously existed and might not be capable of generalization. Lord Hoffman explained that: “When speaking of the ‘Catnic principle’, it is important to distinguish between, on the one hand, the principle of purposive construction which gave effect to the requirements of the Protocol, and on the other hand, the guidelines for applying the principle to equivalents, which are encapsulated in the Protocol questions. The former is the bedrock of patent construction, universally applicable. This latter are only guidelines, more useful in some cases than in others.”40 Lord Hoffman went on to explain that while Protocol (Improver) questions are helpful in a majority of cases, they are not to be used as substitutes for attempting to gain some understanding of the what a skilled reader in the relevant art would understand the patentee to have meant based on the language expressed in the claims.41 According to Lord Hoffman there was really only one question that was directly relevant to Article 69 and its Protocol and that was what would a skilled reader understand the patentee to intend having read his claims. Anything else, including the three-tier test was nothing more than guidelines to be used in determining this question.42 Jacob LJ summarised the construction principles contained in the Protocol in Mayne Pharma v Phamacia Italia SPA [2005] EWCA Civ 137 as follows: 1. Article 69 itself provides the starting point. 2. Article 69 mandates that the protection itself is contained in the claims’ terms. It also provides for reference to be made to the drawings and description used for the purpose of interpreting the claims. 3. It therefore requires a purposive construction which invariably means the inventor’s purpose as can be ascertained from the drawings and descriptions. 4. The claim must therefore not be construed in isolation with the drawings and descriptions being used only to clear up ambiguities. 5. Purpose is not the decisive factor however since the language and its meaning are pivotal to determining the patentee’s intention. “It is the terms of the claims which delineate the patentee’s territory.”43 6. It therefore “follows that if the patentee” includes what amounts to a “deliberate limitation in his claims it must have a meaning.” Intentional elements that are obvious will not be ignored.44 7. If a patentee uses a term which has a particular meaning out of context, it doesn’t automatically have the same meaning when read in the context in which it appears. 8. There is “no general ‘doctrine of equivalents.’”45 9. A purposive construction can however, “lead to the conclusion that a technically trivial or minor” distinction between “an element of a claim” and a “corresponding element of the alleged infringement nonetheless falls within the meaning of the element” .46 It follows from the breadth of the rulings in the UK courts that in keeping with the mandate of Article 69 of the European Patent Convention and its Protocol the courts begin by attempting to ascertain the patentee’s intention. This invariably involves examining the words used from the perspective of the person to whom the claim is directed. As Lord Justice Sedley maintained the crucial question in each case is one of “first impression.”47 Despite the effort to harmonize the interpretation techniques of the national courts and the valiant effort by the UK courts to subscribe to the mandate contained in the Protocol to Article 69 of the European Patent Convention, some residual problems remain. As Brad Sherman explains, national courts are divided by language and culture which invariably have an impact on the interpretation of certain words, phrases and terms.48 Sherman explains that: “The fact that the rules of patent law are, like the technologies which the regulate, culturally and historically shaped, means that to compare decisions without recognition or awareness of the cultural and historical factors which shape them may lead to concentration upon matters of little or no, significance.”49 While Sherman’s argument has merits there are always barriers to harmony. The best that can be achieved is the adaptation of measures calculated to achieve set standards. Without minimum standards or guidelines the patent protection in all member states to the European Patent Convention would be a misnomer. Conclusion The Protocol to Article 69 of the European Patent Convention imposes upon its members states an obligation to interpret the patent claim in a manner fair to both the patentee and the addressee. This requires a delicate balancing act, one which the UK courts have adapted by taking a purposive approach. As demonstrated by the ruling in American Home Products v Novartis [2001] 1 RPC 8 the primary question for consideration is predictability. If the language used is such that the skilled reader cannot contemplate that variants of the patent are excluded the court will assume that the patentee did not intend to include them. This appears to be a fair approach to both sides and certainly demonstrates that the UK courts are not only prepared to but have actually met their obligations under the Protocol to Article 69 of the European Patent Convention. Bibliography American Home Products v Novartis [2001] 1 RPC 8 Anchor Building Products v Redland Roof Tiles [1990] RPC 283 Biogen Inc v Medera Plc [1997] RPC 1 Catnic v Hill and Smith [1982] RPC 183 European Patent Convention 1973 European Patent Convention 2000 Improver v Remington [1990] FSR 181 Kirin-Amgen v Transkaryotic Therapies Inc [2005] 1 All ER 667 Mayne Pharma v Phamacia Italia SPA [2005] EWCA Civ 137 Mentor v Hollister [1991] FSR 557 Merck and Co. Inc v Generics (UK) Ltd. [2004] RPC 31 Patents Act 1977 Protocol on the Interpretation of Article 69 of the European Patent Convention, 1977 Sherman, Brad. “Patent Claim Interpretation: The Impact of Protocol on Interpretation.” Modern Law Review Vol. 54, 499-510, 1991 Steinfl, Alessadro. “The Doctrine of Equivalents Through the Eyes of The European Patent Convention.” CASRIP Rethinking International Intellectural Property, No. 6, 114-123, 2000 Telsonic AG’s Patent [2004] RPC, 38 Wheatley and another v Drillsafe Ltd and others [2000] EWCA Civ 209 Read More