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Modern approach to claim construction in the English Courts
The Patents Act 1977 has been described in the U.K. as a
“watershed”.[25]
In addition to incorporating the European Patent Convention and the
Patent Co-operation Treaty into domestic law, the Act also
introduced a statutory definition of infringement into English law.
In place of the wording of a patent itself, the Act sets out[26]
what types of conduct are capable of being acts of infringement. The
Act also provides in section 125 an explicit definition of the
extent of protection conferred by a patent. This states that:
(1) For
the purposes of this Act an invention for a patent for which an
application has been made or for which a patent has been granted
shall, unless the context otherwise requires, be taken to be that
specified in a claim of the specification of the application or
patent, as the case may be as interpreted by the description and any
drawings contained in that specification, and the extent of the
protection conferred by a patent or application for a patent shall
be determined accordingly.
(3) The
Protocol on the Interpretation of Article 69 of the European Patent
Convention (which Article contains a provision corresponding to
subsection (1) above) shall, as for the time being in force, apply
for the purposes of subsection (1) above as it applies for the
purposes of that Article.
The wording of the
Protocol is as follows:
Article 69 should not be interpreted in the sense that the extent of
protection conferred by a European patent is to be understood as
that defined by the strict, literal meaning of the words used in the
claims, the description and drawings being employed only for the
purpose of resolving ambiguity found in the claims. Neither should
it be interpreted in the sense 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 patentee has contemplated. On the
contrary, it is to be interpreted as defining a position between
these extremes which combines a fair degree of protection for the
patentee with a reasonable degree of certainty for third parties
The origins of the Protocol lie in an attempt to reconcile
the previously divergent approaches to claim interpretation in
Europe. In contrast to the common law “fence post” approach in which
patent protection was closely tied to the wording of the claims,
civil law countries such as Germany adopted a “sign post” approach
where claims were seen as defining the general inventive concept or
“Kerntheorie” of an invention.[27]
Under this “sign post” approach a patent would be infringed if the
identified inventive concept were utilised even if the infringement
did not fall literally within the wording of the claims. With the
adoption of the Protocol, the German courts now accept that the
claims are no longer merely a pointer towards a claimed inventive
concept, and that the claims now define the boundaries of a
monopoly.[28]
The English Courts have also accepted that the strict literalism of
the past and the limited application of the doctrine of the pith and
marrow has been superseded by a “purposive” approach to claim
construction, where the scope of protection extends beyond its
literal meaning to encompass variants of a claimed invention.[29]
Together Article 69
and its Protocol form the basis of modern English claim
interpretation. The wording of Article 69 as reflected in section
125 clearly states that the extent of protection conferred by a
patent is that defined by the claims as interpreted in light of the
specification and drawings. The Protocol then goes on to state that
this scope of protection extends beyond the literal meaning of the
wording of the claims themselves to include a penumbra of protection
which combines a fair degree of protection whilst being limited to
the extent that the claims themselves provide third parties with a
reasonable degree of certainty as to the scope of protection.
Just as under the common law, therefore, the starting point
for determining the scope of a patent remains the wording of the
claims. From the Protocol, it can be taken that anything which falls
within the literal wording of the claims as properly interpreted
necessarily falls within the scope of a patent, as the Protocol
identifies the literal interpretation of the claims as being less
than the minimum extent of protection. Article 69 also provides
guidance as to how the wording of the claims is to be interpreted.
It states that the claims are to be interpreted in the light of “the
description and any drawings contained in [the accompanying]
specification.” Together the provisions of Article 69 therefore
identify the claims, description and drawings of a specification as
the primary arbiters of determining claim scope.
However, this is not to exclude all other evidence as to the
meaning of the claims. In addition to the materials to be used to
interpret a claim, it is also necessary to identify from whose
viewpoint the claims are to be read. In the U.K., it is well settled
that: “patent specifications are intended to be read by persons
skilled in the relevant art, but their construction is for the
Court. Thus the Court must adopt the mantle of the notional skilled
addressee, and determine … what the notional skilled addressee would
understand to be the ambit of the claim.”[30]
The role of expert evidence in the U.K. is therefore to enable a
judge to understand the description, claims and drawings as the man
skilled in the art would understand them.
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