ABLETT & STEBBING - PATENT AND TRADE MARK ATTORNEYS
INTELLECTUAL PROPERTY NEWS
Two recent developments in UK patent law are the landmark decision of the House of Lords in the "Kirin-Amgen" case, and the new Patents Act 2004.
Kirin-Amgen Inc V Hoechst Marion Roussel Ltd
House of Lords [2005] R.P.C. 9
In this decision, the House of Lords took the opportunity to clarify the law of patent claim construction (i.e. the fundamental question of how the scope of protection of a patent should be determined) following its earlier "Catnic"1 and "Improver"2 decisions. It also decided upon the validity of so-called "product-by-process" claims (i.e. claims in which a product is defined in terms of the process by which it was produced, rather than the technical features of the product itself).
This decision is one of the most significant in patent law in recent years, and is likely to provide the definitive summary of the law of patent claim construction for many years to come. It has already been the subject of intense discussion within the patent profession.
This case concerns an appeal from the earlier decision of the Court of Appeal regarding the alleged infringement of European patent number 0148605B2, relating to the production of the hormone erythropoietin ("EPO") by recombinant DNA technology. A summary of the main legal points to be taken from this case is provided here, and the full decision can be found at http://www.publications.parliament.uk/pa/ld200304/ldjudgmt/jd041021/kirin.pdf.
Background: The law of patent claim construction - a brief summary
The scope of protection of a patent is determined according to Article 69 of the European Patent Convention (EPC), which states that:
"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."
To assist with interpretation of Article 69, a "Protocol" was agreed between member states:
"Article 69 should not be interpreted in the sense 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. 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 protection for the patentee with a reasonable degree of certainty for third parties."
In the "Catnic" case, the House of Lords stated that the patent claims should be interpreted "purposively", i.e. the language used should be given a meaning with a view to the practical purpose which the invention was intended to have, as it would be understood by the people to whom it was actually addressed.
This decision was confirmed and clarified in the "Improver" case, in which the House of Lords arrived at the three (in)famous "Improver" or "Protocol" questions which should be asked when considering the scope of protection of a patent claim. Thus:
"If the issue was whether a feature embodied in an alleged infringement which fell outside the primary, literal or acontextual meaning of a descriptive word or phrase in the claim ("a variant") was nevertheless within its language as properly interpreted, the court should ask itself the following three questions:
(1) Does the variant have a material effect upon the way the invention works? If yes, the variant is outside the claim. If no?
(2) Would this (ie that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art? If no, the variant is outside the claim. If yes?
(3) Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention? If yes, the variant is outside the claim.
On the other hand, a negative answer to the last question would lead to the conclusion that the patentee was intending the word or phrase to have not a literal but a figurative meaning (the figure being a form of synecdoche or metonymy) denoting a class of things which include the variant and the literal meaning, the latter being perhaps the most perfect, best-known or striking example of the class."
In Kirin-Amgen the House of Lords decided that:
1) Consideration of the "Improver" questions is not always appropriate, particularly in biotech and chemical cases. It is the Protocol which is the law and which must be followed. The Improver questions are merely guidelines useful for helping to interpret the claims when considering equivalents.
The overriding consideration is "what would a skilled person understand the author of the patent to have meant?", not "what did the author mean?" Thus, the claims are to be construed in context.
2) The product defined in a product-by-process claim in the UK must itself be novel and inventive. This brings UK law into line with that of the European Patent Office.
This decision has already been confirmed by the Court of Appeal in Mayne Pharma v Pharmacia Italia [2005] EWCA Civ 137, 17.2.05. This decision can be found at http://www.hmcourts-service.gov.uk/judgmentsfiles/j3107/mayne_pharma-v-pharmacia.htm.
1 Catnic Components Ltd v Hill & Smith Ltd [1982] R.P.C. 183
2 Improver Corp v Remington Consumer Products Ltd [1990] F.S.R. 181
The Patents Act 2004 received Royal Assent on 22 July 2004, and amends the existing Patents Act 1977. The main purposes of the Act are to modernise the UK patents system, to assist with the enforcement of patent rights, and to implement the provisions of the revised European Patent Convention (EPC 2000).
The Patents Act 2004 also facilitated the making of the The Patents (Amendments) Rules 2004, which have introduced some changes to UK patent practice, such as the introduction of an application fee, and the formalisation of the granting of certain extensions of time for responding to Official Letters from the UK Patent Office.
The principal changes brought about by the Patents Act 2004 are as follows:
Section 1 - medical methods
Medical methods are no longer unpatentable because they are regarded as lacking an industrial application, but are now simply excluded from patentability. This new exclusion is in practice of the same scope as the previous exclusion.
Section 2 - amendment of granted patents
Under existing UK law, granted patents may only be amended at the discretion of the Patent Office Comptroller or the Court. The Patents Act 2004 now requires the Comptroller and Court to take into account the relevant provisions of the EPC in this regard, which could result in UK practice changing to more closely reflect EPO practice (which does not apply discretion to refuse an amendment to a granted patent).
Section 3 - relief for partially valid patent
The Comptroller or Court can now make it a condition of granting relief for infringement of a partially valid patent that the patent is amended at the EPO, the amendment thus taking effect in all designated states.
Section 4 - revocation
Similarly to Section 3, the Comptroller or Court can now require a proprietor to amend a patent found partially valid, in revocation proceedings, at the EPO.
Section 5 - international obligations
Concerns amendments to the law relating to international obligations.
Section 6 - remedies in entitlement proceedings
Where the original application is withdrawn or refused, the successful party may file a new (back-dated) application, which is no longer dependent upon publication of the original application.
Section 7 - restrictions on filing abroad by UK residents
For most patent applications permission is no longer required before filing abroad, with the exceptions of applications which relate to military technology and applications which contain information which might be prejudicial to national security or public safety. The onus is on the applicant to decide this, but the Patent Office can be consulted if in doubt.
Section 8 - renewal fees
Renewal fees may be paid up to end of the month in which the anniversary of the filing date falls, rather than falling due on the exact anniversary date. The grace period for late payment and period for requesting restoration of a ceased patent now also expire at the end of the relevant month.
Section 9 - co-ownership
Co-owners rights are clarified regarding patent amendment and revocation. Thus, one co-owner may not amend the patent unless the others agree, and may not seek to have the patent revoked against the wishes of the others, although co-owners may agree otherwise between themselves.
Section 10 - employee inventor compensation
For an employee inventor to be granted an award of compensation from his employer, the existing "outstanding benefit" test still holds. However, now either the patent or the invention may be of outstanding benefit to the employer (previously it was the patent, not the invention, which had to be proven to be of outstanding benefit).
Section 11 - enforcement of damages
A simple County Court procedure is introduced fo enforce awards of damages.
Section 12 - threats
Significant changes have been made to the law regarding threats of patent infringement proceedings, with the aim of aiding genuine attempts to settle disputes whilst retaining protection against threats where required. There are three areas of change, regarding negotiating over an invalid patent, approaching an alleged primary infringer, and approaching an alleged secondary infringer. Considering these areas in turn: 1) the patentee is no longer liable for making unjustified threats if he has correctly assessed that infringing acts are taking place, and can show that although the patent is invalid he had no reason to suspect this when he approached the infringer; 2) a patentee can continue to threaten anyone in respect of alleged primary infringing acts, without proving that infringement is taking place, and can raise with that person any alleged infringing act which relates to that product; 3) a patent holder may approach an alleged secondary infringer and raise any allegedly infringing act if, despite his "best endeavours", he cannot locate the alleged primary infringer, and he explains the efforts he has made. It is not a threat to provide purely factual information about a patent, or to make enquiries for the sole purpose of finding out whether there has been any primary infringement, and by whom.
Section 13 - opinions by the Patent Office
The Patent Office can provide opinions upon request regarding the infringement and/or validity of patents, with a view to providing another route by which litigation can be avoided. The opinions are not legally binding.
Section 14 - costs and expenses
The Courts are required to take into account the financial positions of the parties when making an award of costs in infringement proceedings, with the aim of reducing the cost of litigation.
Section 15 - security for costs
Provides a general power to award security for costs in any proceedings under certain conditions.
The Patents Act 2004 also provides for other minor amendments to the Patents Act 1977.
Commencement
The different sections of the Patents Act 2004 come into force at different times:
Those sections which do not relate to EPC 2000 (including Sections 6, 7, 10, 11, 12, and 14) came into force on 1 January 2005.
Those sections which are subject to public consultation as a consequence of the need for substantive changes to the Patents Rules 1995 are likely to come into force later in 2005, including sections 8, 9, 13 and 15.
Those sections, including 1 to 4, which implement EPC 2000 will come into force when that convention does, which is dependent upon ratification by contracting states. This is expected to happen some time in late 2006/early 2007.
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