Transcript IP and Sustainable Development

Intellectual Property and
Sustainable Development
Dr Peter Meier-Beck
Presiding Judge,
Bundesgerichtshof (Federal Court of Justice)
Honorary Professor,
Heinrich-Heine-Universität Düsseldorf
TONGJI GLOBAL IP FORUM
Shanghai 4 December 2013
Topics
 New Patent Law for New Technologies?
 The Concept of Technical Invention
 The Concept of Disclosure
 Scope of Patent Protection
 Conclusions
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I. New Patent Law
for New Technologies?
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New Concept of Patent Law?
 According to European and German patent law,
there are only two criteria which an invention has
to meet for patent protection:
 patentability of its subject-matter
 sufficient disclosure.
 Patentable is
 an invention (i.e. a technical teaching) which
 is new,
 involves an inventive step, and
 is susceptible of industrial application.
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New Concept of Patent Law?
 To promote sustainable development
 facilitating access to patent protection or
 impeding patent protection?
 The purpose of patent protection
 promoting technical innovation and progress by
awarding the innovator
 in a way that does not harm competition and
provides further incentives for further
innovations.
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New Concept of Patent Law?
 Does the old concept fit?
 More patents versus more free competition?
 Patent Law versus Competition Law?
 Patent Law as a means of controlling
competition
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New Concept of Patent Law?
 What competition controlling function of patent
law does mean:
 Defining the legal instruments in accordance with
that function
 What competition controlling function of patent
law does not mean:
 Applying the legal instruments in accordance with
that function
 Granting a patent if the invention represents a
valuable contribution to technical, economic, and
social advance.
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II. The Concept
of Technical Invention
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Invention
 According to Art. 52(2) EPC the following in
particular shall not be regarded as inventions
within the meaning of Art. 52(1) EPC:
 discoveries, scientific theories and mathematical
methods;
 aesthetic creations;
 schemes, rules and methods for performing
mental acts, playing games or doing business,
and programs for computers;
 presentations of information.
 …
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Invention
 …
 Art. 52(2) EPC shall exclude the patentability of
the subject-matter or activities referred to
therein only to the extent to which a European
patent application … relates to such subjectmatter or activities as such.
 The provision does not define which subjectmatters are not "patent eligible".
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Invention
 A computer implemented invention relates to
a technical teaching if the invention is embedded
in a technical device or process.
 Although relating to a technical teaching, a
computer programme shall not be regarded as
an invention if no specific technical problem
is solved by technical means (Art. 52(2c)
EPC).
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Invention
BGH, 22 April 2010 – Xa ZB 20/08, GRUR 2010, 613
– Dynamische Dokumentengenerierung (Method for
Dynamic Document Generation)
 A technical problem is solved by technical means if
 a computer program is determined by technical
facts outside the computer which runs the
program (e.g. Anti-Lock Braking System) or
 the structure of the computer program is
determined by technical limitations of the
computer itself (e.g. poor storage capacity).
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Novelty
 Novelty requires a new technical teaching.
 A discovery as such does not establish a new
technical teaching.
 But an invention may be based on the
discovery of a natural (biological or physical)
mechanism.
 The discovery must not be disregarded because it
is not "patent eligible".
 The application of the discovery as such may be
obvious or a state of the art method.
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Novelty
BGH, 9 June 2011 – X ZR 68/08, GRUR 2011, 999 –
Memantin (Memantine)
The discovery of the function of an active agent which
serves as an antagonist against a pathologic status (in
this case: excessive influx of calcium ions via N-methylD-aspartate receptor channels), linked to a certain
disease (Alzheimer's disease), cannot establish a new
technical teaching if treatment of patients suffering
from said disease for abatement of symptoms was
known in prior art and neither a new dosage regime
is taught nor a group of patients so far not treated
with the agent is disclosed to be responsive.
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Novelty
 An invention shall be considered to be new if it
does not form part of the state of the art (Art.
54(1) EPC).
 The state of the art shall be held to comprise
everything made available to the public by
means of a written or oral description, by use, or
in any other way, before the date of filing of the
European patent application (Art. 54(2) EPC).
 …
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Novelty
 …
 Paragraphs 2 and 3 shall not exclude the
patentability of any substance or composition,
comprised in the state of the art, for use in a
method referred to in Article 53(c), provided
that its use for any such method is not
comprised in the state of the art (Art. 54(4)
EPC).
 …
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Novelty
 …
 Paragraphs 2 and 3 shall also not exclude the
patentability of any substance or composition
referred to in paragraph 4 for any specific use
in a method referred to in Article 53(c), provided
that such use is not comprised in the state of the
art (Art. 54(5) EPC).
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Novelty
EBA-EPO, 19 February 2010 – G 2/08, O.J. EPO 2010,
456 – Dosage regime/ABBOTT RESPIRATORY
 Where it is already known to use a medicament to
treat an illness, Article 54(5) EPC does not exclude
that this medicament be patented for use in a
different treatment by therapy of the same illness.
 Such patenting is also not excluded where a dosage
regime is the only feature claimed which is not
comprised in the state of the art.
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Novelty
 Caveat ever-greening patents.
 But no specific provisions necessary or even
useful to avoid ever-greening.
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Inventive Step
 Patentability also requires an inventive step.
But:
 What must be examined is not the inventive step
but obviousness. If there is no evidence for
obviousness an invention shall be considered
as involving an inventive step.
 …
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Inventive Step
 …
 The ability of a skilled person to find the solution
to the problem underlying the invention is a
necessary but not sufficient condition of
obviousness.
 What is decisive is whether the inventor's
considerations were suggested or motivated
by prior art and his or her general knowledge
(cf. US TSM test).
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Inventive Step
BGH, 30 April 2009 – Xa ZR 92/05, 182 BGHZ 1 = GRUR
2009, 746 – Betrieb einer Sicherheitseinrichtung
(Operating a Safety Device)
A solution of a technical problem which breaks new
ground generally cannot be considered to be obvious
unless there were some hints, suggestion, or
motivation by prior art for breaking that ground.
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Inventive Step
 Suggestion cannot be substituted by the mere
absence of obstacles.
 But: An explicit pointer to the solution in a piece
of prior art is not necessary. Implicit hints may
be sufficient.
 The assumption that the addressed skilled
person would have consulted other experts of
different skills has also to be justified.
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Inventive Step
BGH, 20 December 2011 - X ZB 6/10, GRUR 2012, 378
– Installiereinrichtung II (Installation Means II)
 It depends on the individual case and all of its relevant
facts to which extent and detail the skilled person
needs suggestions by prior art in order to advance a
known technical concept.
 Apart from explicit pointers characteristic features
of the concerned field of technology, education and
general knowledge of persons skilled in the art, best
practice, construction or application needs, and
even non-technical demands may suggest further
development.
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Inventive Step
BGH, 22 November 2011 - X ZR 58/10, GRUR 2012, 261
– E-Mail via SMS
 A skilled person endeavouring to improve a detail of
data structures as defined in an international
standard may be motivated to solve the technical
problem by a mechanism which is part of the tools
offered by the standard itself.
 If the standard offers a manageable number of
possible solution to the problem, each of them having
specific advantages and disadvantages, each approach
may be obvious to try.
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Inventive Step
BGH, 15 May 2012 – X ZR 98/09, GRUR 2012, 803 –
Calcipotriol-Monohydrat (Calcipotriol Monohydrate)
The court assessing as to whether prior art suggested a
skilled person to apply a known scheme to a known
subject matter may consider to which extent the skilled
person could reasonably expect to succeed this way
in solving the technical problem.
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Inventive Step
 It is the technical teaching instead of the
product that is to be examined for obviousness.
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Inventive Step
BGH, 24 July 2012 – X ZR 126/09, GRUR 2012, 1130 –
Leflunomid (Leflunomide)
A combination of two active agents (in this case:
leflunomide und teriflunomide) was obvious, if a person
skilled in the art who had made a mono-preparation
(with the active agent leflunomide) in accordance with a
method that, having regard to prior art, was obvious for
its part had gained a product which had metabolised to
the combination of both agents in the course of usual
and tolerable shelf live.
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Inventive Step
 Non-technical presetting may influence the
technical problem.
 This is of special importance when inventiveness
of computer implemented inventions is to be
considered.
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Inventive Step
BGH, 30 July 2009 – Xa ZR 22/06, GRUR 2010, 44 –
Dreinahtschlauchfolienbeutel (Triple-Seam Tubular
Film Pouch)
Non-technical objectives achieved by the invention
are not part of the solution but have to be considered
when the technical problem underlying the invention is
defined.
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Inventive Step
BGH, 26 October 2010 – X ZR 47/07, GRUR 2011, 125 –
Wiedergabe topografischer Informationen
(Presentation of Topographic Information)
 When examining inventive step, the court shall
consider only those features of the invention which
determine or at least influence the solution of the
technical problem by technical means.
 Selection of a (central) perspective appropriate
for presenting position-related topographic
information to a car driver for navigation purposes is
a non-technical presetting which does not
contribute to the technical solution.
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Inventive Step
BGH, 23 April 2013 – X ZR 27/12, GRUR 2013, 909 –
Fahrzeugnavigationssystem (Vehicle Navigation
System)
 A feature of a navigation system patent according to
which certain details (i.e. street names) are, under
certain conditions, included in the voice output of
the navigation instructions relates to the content of
the visually or audibly represented information.
 Therefore the court when examining obviousness of
the technical teaching of the patent shall not take
into account the respective feature.
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III. The Concept
of Disclosure
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Disclosure
 The European patent application shall disclose
the invention in a manner sufficiently clear and
complete for it to be carried out by a person
skilled in the art (Article 83 European Patent
Convention).
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Disclosure
 The disclosure of a document is its overall
content, as read and understood by a person
skilled in the art.
 What is disclosed by a document must always be
determined in the same way, irrespective of
the legal context (i.e. examination of novelty,
priority right, enablement etc.).
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Disclosure
 The disclosure has to be direct and
unambiguous.
 Subject-matter which a skilled person is enabled
to deduce from the application by his or her
general knowledge is not – directly and
unambiguously – disclosed (BGH, 22 December
2009 – X ZR 27/06, GRUR 2010, 509 –
Hubgliedertor I).
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Disclosure
BGH, 16 December 2008 – X ZR 89/07, 179 BGHZ 168 =
GRUR 2009, 382 – Olanzapin (Olanzapine)
 The court has to identify the overall content of a
prior art document in order to determine whether the
document is novelty-destroying. What is decisive is the
technical information disclosed to the skilled
person.
 With regard to chemical compounds, noveltydestroying anticipation requires direct and clear
disclosure of the individual compound in question.
…
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Disclosure
BGH, 16 December 2008 – X ZR 89/07, 179 BGHZ 168 =
GRUR 2009, 382 – Olanzapin (Olanzapine)
…
 The ability of a skilled person to make a greater or
lesser number of compounds covered by a disclosed
general formula does not, for the purpose of
anticipation, equate to or substitute a specific
disclosure of individual compounds.
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Extent of disclosure
 Albeit the identical general concept of disclosure,
relevant subject-matter and necessary extent
of disclosure are different.
 The applicant is entitled to claim everything that
he or she has disclosed to be the invention or
one of its embodiments.
 The applicant may also be entitled to
intermediate generalisations.
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Extent of disclosure
 A feature of a device is, as necessary directly
and unambiguously, disclosed as a feature of
the invention if a skilled person, having regard
to the overall content of the patent application,
considers a device comprising that feature to be
a feasible embodiment of the invention as
claimed.
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Extent of disclosure
BGH, 17 July 2012 – X ZR 117/11, 194 BGHZ 107 =
GRUR 2012, 1124 – Polymerschaum (Polymer Foam)
 If different features of an embodiment of the
invention independently as well as altogether serve
the technical effect of the invention the patentee may
amend the claim by adding a single feature or all of
them (cf. BGH, 23 January 1990 – X ZR 9/89, 110
BGHZ 123 [126] – Spleißkammer [Splicing Chamber]).
…
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Extent of disclosure
BGH, 17 July 2012 – X ZR 117/11, 194 BGHZ 107 =
GRUR 2012, 1124 – Polymerschaum (Polymer Foam)
…
 The claimed combination must represent a technical
teaching that can be derived from the application as a
practical embodiment of the invention (BGH, 11
September 2001 – X ZB 18/00, GRUR 2002, 49 –
Drehmomentübertragungseinrichtung [Torque
Transmission Device]). …
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Extent of disclosure
BGH, 17 July 2012 – X ZR 117/11, 194 BGHZ 107 =
GRUR 2012, 1124 – Polymerschaum (Polymer Foam)
…
 … If the patentee were prevented from generalizing
means that are useful to achieve a disclosed effect
legitimate exhaustion of the full content of the
application as filed would be obstructed.
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Extent of disclosure
 Reach of disclosure and extent of patent claims
need not be identical.
 But there must be a fair balance between the
disclosure and the breadth of the claims.
 The claims may go beyond the disclosed
embodiments of the invention but must not go
beyond the disclosed invention.
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Extent of disclosure
BGH, 13 July 2010 – Xa ZR 126/07, GRUR 2010,
916 – Klammernahtgerät (Stapler)
 An invention is disclosed sufficiently clear and
complete for it to be carried out when the information
contained in the patent application provide for so
much technical information that a skilled person,
using his or her professional knowledge and
skills, is enabled to successfully carry out the
invention. It is not necessary that at least one
practically usable embodiment is disclosed as such
directly and unambiguously.
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Extent of disclosure
BGH, 3 May 2001 – X ZR 168/97, 147 BGHZ 306 =
GRUR 2001, 813 – Taxol
 A patent for a chemical synthesis method may claim a
certain reaction in a generalized way (e.g. as
esterification) even if known ways to carry out this
reaction fail as long as at least one specific way to
carry out the reaction is reproducibly disclosed. It
does not matter whether other ways to carry out the
reaction are also available to the skilled person.
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Extent of disclosure
BGH, 25 February 2010 – Xa ZR 100/05, 184 BGHZ 300
= GRUR 2010, 414 – Thermoplastische Zusammensetzung (Thermoplastic composition)
 The patent may lack enabling disclosure if the
patent-protected subject matter is generalized in the
claim, by open range data concerning physical
properties, beyond those solutions of the technical
problem that have been made available to the
skilled person so that the patent protection exceeds
the invention's contribution to the state of the
art.
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IV. Scope of Protection
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Scope of Protection
 The extent of the protection conferred by a
European patent shall be determined by the
claims. Nevertheless, the description and
drawings shall be used to interpret the claims
(Art. 69 EPC).
 …
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Scope of Protection
 (Article 69) is to be interpreted as defining a
position … which combines a fair protection
for the patent proprietor with a reasonable
degree of legal certainty for third parties
(Art. 1 3rd sentence of the Protocol on the
interpretation of Art. 69 EPC).
 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
(Art. 2 of the Protocol).
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Scope of Protection
 Determining the scope of patent protection
involves striking the balance between the
conflicting interests mentioned by the Protocol.
 It is the task of the courts to find criteria for a
determination of the scope of protection which
reconcile both demands.
 A suitable doctrine of equivalence cannot be
restricted to the meaning of the claim (read in
context) but is has to be based on and
orientated toward this meaning.
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Scope of Protection
 The instrument of choice here is the cognitive
faculties of a skilled person who endeavours
to analyse the patent claim on the basis of his or
her knowledge and skill in the art and uses the
description and the drawings to interpret the
claim.
 The scope of the patent is determined by this
person’s conclusions: It extends to any variant
that has been made obvious by the claim to
the person skilled in the art.
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Scope of Protection
 The conditions of equivalent means are as
follows:
 Same technical effect
 Obviousness to a skilled person
 Claim-based considerations.
 These conditions are defined in more detail in the
three Schneidmesser questions:
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Scope of Protection
BGH, 12 March 2002, 150 BGHZ 149 = ENPR 2003, 309
= 33 IIC 873 – Schneidmesser I (Cutting Blade I)
 Does the modified embodiment (the variant) solve the
problem underlying the invention by means which
have objectively the same technical effect?
 Was the person skilled in the art enabled by his or her
expertise on the priority date to find the modified
means as having the same effect?
 Are the considerations that the skilled person has to
apply in order to find the modified means based on
the technical teaching of the patent claim?
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Scope of Protection
BGH, 10 May 2011 – X ZR 16/09, GRUR 2011, 701 –
Okklusionsvorrichtung (Occlusion Device)
…
 If the patent specification discloses in the description
different ways of reaching a technical result but
claims only one of these ways the use of the other
ones as a rule constitutes no infringement by
equivalent means.
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V. Conclusions
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Conclusions
 Competition can be controlled by several
means
 Technology-specific legislation
 Subsidies and Taxes
 Patent Law
 Different competition controlling instruments use
different means of controlling
 Legislative, political and financial incentives may be
technology-specific means
 Patent law means should be universal
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Conclusions
 Exclusivity and freedom of competition are
well balanced if
 technical solutions of technical problems are
"patent eligible",
 protected technical solution (= invention =
technical teaching) is new and not obvious to a
skilled person,
 protected technical solution is sufficiently
disclosed to be carried out by a skilled person,
 extent of patent protection is assessed in
accordance with the invention as claimed.
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