Transcript Folie 1 - CONOPA

Patent Protection of Technical
Equivalents in Germany
Prof. Dr. Christian Osterrieth
Copenhagen August 2008
Content
I.
II.
Introduction
Conditions of Equivalence
II.a Case Law Examples
III. Functional Construction v. Equivalence
III.a Case Law Example
IV. Formstein-Defense
V. Conclusion
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I. Introduction
 Determination of scope of protection is important
– for the inventor, who has to get an appropriate
remuneration
– for legal certainty of third parties, who have to be able
to assess/predict whether or not their product or
process infringes any patents
 National courts are responsible for determining
the scope of protection of a patent
 Jurisdictions in Member States of European
Patent Convention (EPC) vary in determining
scope of protection
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I. Introduction
Under German jurisdiction:
 In order to determine the scope of protection it
is necessary to find out the technical meaning
of the claim. This requires three steps:
1. Understanding of a person skilled in the art is
decisive.
2. Person skilled in the art attaches value to the
technical function of each feature.
3. Person skilled in the art does not consider
features separately but within the context of
the entire claim.
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I. Introduction (cont’d.)
 The scope of the patent can extend
beyond the wording of the claim.
– Not only literal use of the technical teaching
presents a patent infringement but also the
use of an equivalent.
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I. Introduction (cont’d.)
 Art. 69 (1) European Patent Convention
(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.”
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I. Introduction (cont’d.)
 Protocol on the Interpretation of Article 69 EPC
2000:
Article 2:
 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.
BUT: Neither EPC nor protocol contain a definition
of „equivalent“.
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II. Conditions of Equivalence
Federal Supreme Court (BGH), GRUR 1986, 803 – Formstein
(Moulded Curbstone)
“Solutions which the average person skilled in the art can
determine due to his professional knowledge as being equally
effective based on considerations oriented on the invention as
paraphrased in the claims will generally fall within the scope of
protection of the patent. This is required by the goal of adequate
remuneration for the inventor under consideration of the aspect of
legal certainty.”
Two conditions:
1. Equally effective
2. Detectable on the basis of the claims
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II. Conditions of Equivalence (cont’d.)

Formstein-Decision has been specified
by five parallel Federal Supreme Court
decisions, inter alia, BGH GRUR 2002,
515 – Schneidmesser I
 In particular a third condition was added:
1. Equal Effect
2. Detectable
3. Equal Value
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II. Conditions of Equivalence (cont’d.)
1. Equal effect
 Does the modified embodiment solve the
problem the invention is based upon with
equally effective means?
–
–
Which effects achieved with the features of the
claim have to come together in order to solve the
problem the invention is based upon? This includes
every effect that shall be achieved with the features
separately or in combination.
Regards objective equality
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II. Conditions of Equivalence (cont’d.)
2. Detectable
 Is the person skilled in the art able to
detect the modified means as equally
effective?
- Has the modified means been obvious or did
the person skilled in the art have to be
inventive?
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II. Conditions of Equivalence (cont’d.)
3. Equal value
 Are the considerations, which are necessary for
the person skilled in the art in order to find the
modified but equally effective means, oriented
on the meaning of the technical teaching of the
invention in such a way that the person skilled in
the art has to deem the modified means as
solving the problem equally?
– Technical teaching of the invention has to be the
decisive basis for the considerations of the person
skilled in the art.
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II.a Case Law Examples
1. Court of Appeal Düsseldorf,10 February 2005, I-2 U 80/02 – Murine
Monoclonal Antibody
FACTS:
 Claimant owns patent that claims a murine monoclonal antibody,
which binds a human breast cancer gene
 Defendant markets medication for breast cancer treatment, which
contains recombinant humanized monoclonal antibodies the
hypervariable regions of which are derived from a murine antibody
recombinant antibodies are partly human, partly murine
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II.a Case Law Examples (cont’d.)
Murine Monoclonal Antibody (cont’d.)
DECISION:
 No direct use of patent since patent covers only antibodies that are
entirely murine
 Equivalent use? Relevant was third condition (equal value):
 Technical teaching refers to antibody against breast cancer produced by cells of
only one species (here: mouse)
 Person skilled in the art oriented on this teaching would have considered to
create antibodies by using another species.
 Skilled person oriented on this teaching would not have considered to modify
antibodies by genetic engineering in a way that part of the animal DNA sequence
would be replaced by human DNA (reason: (1) was uncertain whether
recombinant antibodies can bind breast cancer antigen, (2) to extent scope to
recombinant antibodies would contradict the principle of certainty of law)
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II.a Case Law Examples (cont’d.)
2. Federal Supreme Court, GRUR 2002, 527 – Custodiol II
FACTS:
 Claimant was owner of European Patent regarding a
protective solution for preventing ischemia damage to
the heart and kidneys containing, inter alia, magnesium
chloride 10 ± 2 millimols,
 The apothecary of the defendant produced a protective
solution, the composition of which corresponded with
claim 1 of the patent, BUT: it contained 4 millimols
magnesium chloride
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II.a Case Law Examples (cont’d.)
Custodiol II (cont’d.)
DECISION:
 Numbers and measurements are a binding part of the claim and determine
the scope of protection, however, there is room for interpretation and
tolerances (thus, a differing number can still infringe literally).
 If the numbers are beyond the extent of tolerance equivalent use is possible
if the specification provides the person skilled in the art with instructions
according to which the impact of the invention can be achieved by means
beyond the wording of the claim.
 If the number within the claim presents a critical value, a different number
does not solve the problem equally.
 In the present case the Court found the deviation between the amount of
magnesium chloride within the claim and within the attacked embodiment to
be considerable. Since the invention regards a sensitive area the person
skilled in the art would assume that due to pharmacological reasons it would
be crucial to adhere to the tolerances of each part of the solution.
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III. Functional Interpretation vs. Equivalence
BGH GRUR 1999, 909 – Spannschraube, GRUR 2001, 232 –
Brieflocher
 Features and terms are to be interpreted in a way that is
appropriate in view of their technical function according to the
disclosed inventive idea.

Functional interpretation can have the consequence that
understanding of a feature is not restricted to the claimed
design if the specification shows that the invention does not
depend on a specific design but on the specific technical
impact that is achieved with the claimed design.

Embodiment which falls under the claim according to a
functional interpretation presents a literal infringment (not an
equivalent use!)
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III. Functional Interpretation vs. Equivalence
(cont’d.)
 If functional interpretation of a claim is used to determine
the scope of protection it is difficult to draw the line
between literal infringement and equivalent use.
– Functional interpretation can include modified means
that have the same technical impact, i.e. are equally
effective
– equivalence requires a means that is equally effective
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III.a Case Law Example
District Court Düsseldorf, 31 July 2007, 4b O 297/06 – not published
FACTS:
 Claimant owns patent regarding an collapsible medical device for closing
perforations within the cardiac septum, device comprises a metal fabric of
braided metal strands and is characterized in that clamps (15) are adapted
to clamp the strands at the opposed ends
•
unfolded
• folded
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III.a Case Law Example (cont’d.)
DECISION:
 The Court held that the attacked embodiment falls within the
wording of the claim
 The Court adopted a functional interpretation by asking what are the
technical impacts of the feature in order to solve the problem the
invention is based upon
 The clamps have the function to prevent the strands from fraying out
and to keep the strands in their braided configuration
 By using a functional interpretation the wording “clamps” (the use of
plural) means that only so many clamps should be used as are
necessary in order to prevent the strands from fraying out.
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III.a Case Law Example (cont’d.)

If the four free ends of the unfolded material are turned up

the following configuration needs only one clamp in order to prevent the free
strand from fraying out and from returning to its unfolded status
Opposing ends of strand
clamp
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IV. “Formstein-Defence”
BGH GRUR 1986, 803 – Formstein (Moulded Curbstone)
 In case of equivalent use of the patented invention the accused
infringer can defend himself by stating
– that the alleged infringement is identical to the prior art
– that his product/process would not have been patentable due to lack of
inventive step
 Using a functional interpretation of the claim means that the
product/process falls within the literal meaning of the patent
although the interpretation goes in fact beyond the wording of the
claim similar to equivalent use (see previous case law example)
yet in this case the accused infringer cannot rely on the
“Formstein-defence”.
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V. Conclusion
 Equal determination of scope of protection is
important for legal security
– within Germany where the separation principle
applies (infringement and validity are assessed by
different courts)
– within Europe as it is the aim to harmonise patent law
 Harmonisation difficult to achieve but equivalent
use is now recognised in the Protocol on the
interpretation of Art. 69 EPC
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Thank You!
Steinstr. 20
40212 Düsseldorf
Tel. +49 (0)211 550 22 0
Fax +49 (0)211 550 22 550
[email protected]
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