Harmonisation in Europe: one step closer

For a proper elucidation of Article 69 the European Patent Convention (EPC), a judge should refer to the protocol on its interpretation: “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.

"Nor 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.”

On the contrary, according to this protocol a judge has to take a position between these extremes, in order to “combine fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties”.

A case decided in May 2012 by the Supreme Court of the Netherlands (AGA v Occlutech) clarifies how to deal with the explanation of Article 69 EPC. AGA has a patent on a collapsible medical device, which can be used to treat heart defects.

This device has the shape of a dumb-bell. Occlutech made a similar medical device with the same result, but it is umbrella-shaped. The question was whether this device falls under claim 1 of AGA’s patent: “… characterised in that clamps are adapted to clamp the strands at the opposed ends of the device”. Occlutech’s device has only one clamp at one end of the device.

“BOTH COURTS CAME TO THE CONCLUSION THAT THE CHARACTERISED ELEMENT OF ‘CLAMPS’ HAD TO BE INTERPRETED AS MULTIPLE CLAMPS ON OPPOSITE SIDES, SO OCCLUTECH COULD NOT INFRINGE THE PATENT.”

AGA therefore tried to convince the court that it should not interpret the conclusion of the patent too literally but also consider the descriptions. The courts of first instance and appeal both declared there was no infringement. The Court of Appeal analysed the description and the prosecution file of the patent and found that clamping at the opposed ends of the device is an essential element of the claim and can’t be interpreted broadly.

The Supreme Court rejected the grounds of appeal by AGA as unfounded. In its opinion the Court of Appeal made the right decision in order to determine the scope of protection in Article 69 EPC. There was no evidence for the Court of Appeal to interpret the conclusion by measuring the drawings and descriptions in a view of the “inventive concept”.

AGA’s patent was formulated in a two-part form, which means that the part after the word “characterised” is the part that distinguishes the patent from the prior art. In this case the Court of Appeal didn’t consider only the characterised element, but also the foregoing elements. Even then, there was no reason for the Court of Appeal to interpret the “clamps” from the conclusion broadly, as it would imply “one or more clamps”.

The same case also came to court in the UK and Germany. Traditionally the English court gives priority to the conclusion with the drawings and descriptions supporting it. In contrast, the German court uses a broad interpretation for the patent conclusion, which takes account of the “inventive concept”. These two countries could be seen as the extremes mentioned in the protocol on the interpretation of Article 69 EPC.

It is therefore remarkable that both courts produced a similar outcome. They both came to the conclusion that the characterised element of “clamps” had to be interpreted as multiple clamps on opposite sides, so Occlutech could not infringe the patent of AGA by using only one clamp at one end of the device.

With these three decisions in three different countries, the objectives written in the last sentence of the protocol (“in order to combine a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties”), can be considered important for the harmonisation of interpretation of Article 69 EPC. We expect the agreement for a Unitary Patent, signed in February 2013, will bring further harmonisation.