marigoldafonso's version from 2017-08-14 19:14

Section 1

Question Answer
Patent law concernsnew, industrially applicable inventions.
The granting of a patent effectively gives the inventor a monopoly over the invention for a period of time.
Patent claims definethe protected aspect of invention.
They should be clear, concise and detailed.They should be supported by the description.
They should relate either to one or a group of inventions s.14(5) Patents Act (PA) 1977.
The primary objective of the claim is to limit the monopoly and not extend it.If the claim is not specific enough others can change the details and escape infringement.

Section 2

Question Answer
s.60(1) of the PAsets out those acts which will infringe a patent if they are completed without the patentee’s consent.
An act will only infringe if itfalls within the scope of the patent’s claims. This essay will discuss the judicial approach to the claims.
In order to determine whetheran act infringes, the court must first determine the extent of the monopoly claimed by the patent.
The essential question of the scope of the legal monopoly remains whether an activity falls within the scope of the claim
The construction of a patent claim must be in accordance withart 69 of the Protocol on the Interpretation of the European Patent Convention (EPC) 2000 (s.125 PA).
This approach may be described as a doctrine of equivalents: the function was the same and so the D’s variant fell within the claim.
The Protocol states that art. 69 should be interpreted to mean that the extent of protectionoccupies the middle ground between a strict literal meaning of the wording of the claim or seeing the claim as a mere guideline.

Section 3

Question Answer
The traditional approach was the ‘literal’ approach which takes the literal wording of the claim as marking off the boundaries of the monopoly.
In EMI v LissenRussel J stated that the function of the claim is to define the monopoly that is claimed by the patentee so that others will know if they are trespassers.
The onus is on the patentee to describe what they are claiming.As Russel J stated in Lissen ‘what is not claimed is disclaimed’.
Alongside this literal approachthe courts developed the narrow ‘pith and marrow doctrine’, which ignored immaterial deviations by the alleged infringer from the exact wording of the claim.
As seen in Rodi and Wienenberger the U shape of the watch strap was held to be an essential feature of the invention and so there was no infringement.

Section 4

Question Answer
However, the courts have not been clear in this area.The courts have been in doubt as to what practice has been harmonised amongst the courts of Contracting States.
UK courts feel justified in adopting a literal approach as the applicant has the opportunity to define their monopoly in their patent application as seen in Van Der Lely.
However, some argue this approach is inappropriate. A literal meaning should not consider the actual definition of the words, but what the skilled person would interpret those words to mean.
This was implemented by Lord Diplock in Catnic and was a break with the strict literal approach.
Lord Diplock took a purposive approach when construing the claim in Catnic. Using this approach, the court is less concerned with the literal meaning of the claim and more with the intention behind its wording.
Lord Diplock preferred the understanding of persons with practical knowledge and experience of the kind of work pertaining to the invention rather than the ‘meticulous verbal analysis’ of lawyers.

Section 5

Question Answer
Following Catnic, Hoffman J in Improver set out the test for infringement in a systematic way. When deciding whether a feature in an alleged infringement falls outside the primary, literal or a contextual meaning of a description in the claim (a variant), the court should ask the following three questions:
Firstdoes the variant have a material effect upon the way the invention works? If so, the variant is outside the claim.
Secondwould the variant have been obvious to a skilled person? If not, there is no infringement.
Thirdwould the skilled person have understood from the language that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention? If yes, there is no infringement.
In Improverthe claims were not wide enough when drafted. This case was also brought in Germany but it was held to infringe due to their purposive approach.
The Improver questions had become problematic. They asked two questions about the variant, and then considered the skilled reader’s interpretation of the variant.
Cornish and Llewelyn (2015) argue that the law had become repetitious and confusing.

Section 6

Question Answer
In Wheatley v Drillsafethe Improver questions were renamed the ‘Protocol questions’ and were examined in Kirin.
Lord Hoffman held that the questions are not always appropriate to use.
They are not legal rules but guidelines which assist in deciding what a skilled person would understand the patentee to mean.
Following Kirinthe only compulsory question to ask is what a person skilled in the art would have thought the patentee was using the language of the claim to mean.
Cornish and Llewelyn (2015) argue that the Protocol questions added nothing since the third question tended to ask what the literal, non-contextual meaning of the claim was, simply because it is often very difficult to strip the meaning of a word of its context.
However, Catnic may still be useful in cases where a measurement of substance or treatment is given an outer limit in a claim, and the alleged infringement goes just outside that limit.

Section 7

Question Answer
In Ancon Jacob LJ suggested that, following a claim, it is also important to remember that one must be concerned with the meaning of the language used.
The courts will be in the middle ground of a literal approach and viewing the claim as a mere guideline. This is in line with the EPC.
Other signatories to the EPC have taken a dissimilar approach to the construction of claims. However, the Virgin case moved the UK even closer to this in adopting a purposive approach.
Virgin held that there is no separate doctrine of equivalence. It took a general view that protection comes from the claim.
The claims will be construed in the context of the purpose and the skilled reader is key.

Section 8

Question Answer
The 2017 case of Actavis has changed the test for infringement. The Protocol questions were said to be helpful and were reformulated so that question two now imparts knowledge on the skilled person at the priority date.
The Supreme Court has effectively re-introduced a doctrine of equivalents into UK lawwith the aim reaching a consistent approach to the interpretation of the scope of patent protection across Europe.
It has achieved this by clarifying how article 69 EPC 2000 should be followed.
This re-formed approach to infringement will broaden the scope of protection afforded to patents in certain circumstances but may make it more difficult to provide infringement analysis and perhaps less certainty for third parties attempting to work-around an invention.