WORKING SESSION
The role of intent in patent claims
Dieter BRÄNDLE - Handelsgericht Zürich [Commercial Court of Zurich] - The significance of subjective elements in patent law
Ladies and gentlemen,
My brief today is to talk to you about the significance of subjective elements in patent law.
I will therefore be presenting you with some of the fundamental aspects of this topic. Purpose indications in patent claims will not be referred to in my talk as they will be covered by Christopher Floyd and Rainer Moufang.
The presentation I will be giving is chiefly aimed at those of you for whom patent litigation is not a major part of your work. My apologies to any "old hands" present: I'm afraid you are unlikely to learn anything new here today.
1. Introduction
A patent is a declaration of intent. The applicant uses the patent specification to communicate the technical teaching he wants the patent to protect. This teaching is generally expressed as the solution to a problem that involves developing the prior art - as described in the application - to achieve the benefits made possible by the invention.
2. Questions to be addressed
In this context, there are a number of questions that spring to mind in relation to subjective elements. Of these, I would like to address the following:
- Whose intent is at issue here - the applicant's or the inventor's? (see 3.1)
- How should manifestations of intent in the procedure up to grant be handled? (see 3.2)
- What significance does the applicant's intent have? By intent, I mean the inner fact, or what the applicant actually wanted; this does not have to be the same as the intent he expressed in the application. (see 3.3)
- What happens if the declaration of intent is based on a misunderstanding of the prior art? For instance, if the application treats something as if it belongs to the prior art, even though it does not, or if it fails to take a certain prior art into account? (see 3.4).
What happens if the declaration of intent is based on technical misconceptions? Or it is unclear, incomplete or flawed? (see 3.5)
What role does the applicant's intent play in the interpretation of claims? (see 3.6)
3.1 Applicant or inventor
The right to a European patent belongs to the inventor or his successor in title (Art. 60(1) EPC).
Frequently, however, the inventor or the team of inventors responsible for creating the invention are employees. In this case, the right to the European patent is determined in accordance with the law of the state in which the employee is employed (Art. 60(1) EPC). And under this law, the invention either belongs to the employer from the very start or can be taken over by him. This is why the applicant is usually the employer, not the inventor. Of course, the inventor is entitled to be named as such (Art. 81 EPC), and may even be entitled to compensation under national law, but that is about as far as his rights go.
Even if the inventor is also the applicant, in the former capacity he takes a back seat once the application is filed.
It does not matter what the inventor may have thought or intended [the situation is somewhat different in the United States]. Within the context of the EPC, the only thing that counts here is what the applicant states in the form of text or figures in the application.
The inventor, astonishingly, is not even of interest under the heading "skilled person". The skilled person, who is a pivotal figure in the patent assessment, does not necessarily have anything in common with the person who actually made the invention. Far more relevant is the - fictional, as it were - skilled person who is usually involved in finding the solution to the problem in question.
Example: Long-time German chancellor Konrad Adenauer applied to patent a process for preparing a particular type of bread, namely a kind of wholemeal bread similar to the coarse rye bread of the Rhineland. Regardless of the identity of the actual inventor Konrad Adenauer, it is assumed that, for the purpose of assessing this patent, the skilled person is the baker, not the politician or lawyer.
In conclusion, the inventor is of no interest when it comes to assessing a patent. If anyone is of interest, it is the applicant.
There is one exception: in disputes relating to the attribution of an invention, the key party is naturally the inventor, not the applicant (Art. 60(1) EPC).
However, a dispute of this nature, i.e. about the identity of the inventor, is not heard by the EPO. Rather, the person who considers himself the inventor must bring an action against the applicant before the competent national court to obtain a declaration of entitlement to the grant of the European patent applied for. If the courts find in his favour, the inventor has three options under Art. 61(1) EPC. He can
(a) pursue the European patent application as his own application in place of the applicant,
(b) file a new application in respect of the same invention, or
(c) request that the application be refused.
A fascinating question to consider is precisely what constitutes the invention if it is to be considered at a point in time when it is still unclear what part of the original application will ultimately be regarded as a patentable invention. But that's a topic that deserves a paper all of its own.
3.2 Manifestations of intent in the procedure up to grant
What is the significance of the applicant's manifestations of intent have in the procedure up to grant?
Such manifestations can at most play a role when determining the extent of protection, which, as we know, is not strictly limited to the wording of the claim. Of greater relevance here is the interpretation of the claims under Art. 69 EPC and the protocol on the interpretation of that article. Although this interpretation is based on the claims, the description and drawings are nonetheless also referred to. Documents relating to the grant proceedings are not cited as a means of interpretation [this issue was considered during the EPC 2000 revision but was not included in the final text]. But even when interpreting claims, the principle of good faith has to be respected. This may render it necessary to consider statements made in the procedure up to grant if the patent proprietor assumes a position in infringement proceedings that clearly contradicts his statements in the procedure up to grant. Therefore explicit limitations and waivers made by the applicant in the (European) procedure up to grant have to be considered. In my opinion, this applies in in any case if the limitation was added to the claim.
Example: If the original claim refers to "metal" and, to exclude prior art, the applicant explicitly replaces "metal" with "noble metal", and ultimately with "rhodium" in response to another objection from the examiner, then I am of the opinion that the proprietor of the patent has to be barred in infringement proceedings from asserting, for instance, that aluminium was to be considered as an equivalent.
3.3 The applicant's inner will
What significance does the applicant's "inner will" have? What I am talking about here is his will or intent as an inner fact, or what the applicant actually wanted but did not manage to express properly, if at all.
The answer is simple: the applicant's inner will does not matter at all. The patent is directed to the world at large, and the only manifestation the public has of the applicant's expressed will is the patent specification and, apart from that, any statements in the procedure up to grant. Consequently, the only thing that can matter is this expressed will.
3.4 Errors surrounding prior art
Patent specifications are regularly concerned with developing the prior art cited in the description. The applicant's intent focuses on the further development of that prior art.
So if the right prior art is selected, there is nothing to worry about.
Assuming more prior art than is actually the case - i.e. taking as read, for instance, that something is known, even though it is not - means that the applicant considers one part of his development to be known and is only seeking patent protection for the other part. He makes the mistake of claiming too little, with the result that the protection claimed remains unchanged because the claim takes precedence. The unclaimed part involuntarily enters the public domain.
Conversely, if the applicant overlooks a piece of prior art and therefore (also) claims known or obvious subject-matter, the correct prior art prevails. This can lead to the revocation or partial revocation of the patent.
Thus, incorrect assumptions about the state of the art can limit, but never extend, the ultimately achievable scope of protection.
3.5 Declarations which are unclear, incomplete, flawed or based on technical misconceptions
Patent specifications, especially those that have not been through the opposition or appeals procedure, may contain the odd inconsistency or error in the description and even in the claims.
In such a case, patent claims should always be interpreted objectively and in accordance with the principle of good faith. In other words, do not take the applicant simply at his word - not only in relation to the claims, but also the description. By no means does this signify, however, that you should ask yourself what the applicant could have intended. That would involve the inner will, and that, as mentioned above, is irrelevant. What is important, rather, is to put yourself in the position of the person skilled in the art and, taking into consideration the description and drawings, try to identify the monopoly the applicant is claiming by means of the patent claims.
The use of subjective terminology that deviates from normal language is not only permitted to the applicant, it is actually what counts, because the patent specification constitutes its own glossary.
If, for example, the applicant uses the term "short screw" - this will be familiar to those who attended the 2002 symposium in Copenhagen - then it may be apparent from the context that, contrary to normal usage, an extremely short screw is meant.
If the stated problem does not match the solution, it gives the impression that the inventor did not solve the problem he set. In fact, it often turns out that the problem was poorly formulated - by the patent attorney, of course, not the inventor - after the invention had been created. A discrepancy of this kind is irrelevant if the skilled person recognises the problem that was actually solved.
Similarly, incorrect figures - it happens now and again - are not detrimental if the skilled person spots the error and is able to correct it without any effort.
Example: A patent claim (Swiss national patent filed in Italian [CH 661 437]) describes a pharmaceutical substance. This claim specifies, in figures, "145 [centoqurantacinque] atomi di carbonio", that is, "145 carbon atoms". It is clear for the skilled person that a typographical error has occurred and the text should read "1 à 5" [uno à cinque], or "1 to 5" - and not 145 - carbon atoms. This is then to be assumed.
If the skilled person spots an incorrect figure but cannot see straight away what the correct one should be, the patent can fail for lack of disclosure.
The same problem arises when the disclosure is incomplete in the application. If the skilled person can supply the missing part without undue burden or the need for inventive skill, it can be taken into consideration.
This applies to all errors in the description or claim. Whatever the skilled person can put right without any effort does not harm the applicant.
To conclude, the patent specification is not read in the way it was drafted, but rather in the way the skilled person realises it was meant.
3.6 The applicant's intent
The final issue to be addressed is the applicant's intent. This will be handled by Christopher Floyd and Rainer Moufang.
Thank you for your attention.