Pages 129-148

WORKING SESSION

The role of intent in patent claims

Christopher FLOYD - Judge of the Patents Court, London - The role of intent in patent claims – old paint in new tins

1. This talk concerns the question of whether intention can properly form a feature of a patent claim. What sort of problems arise if intention is permitted to be a feature of a claim? Can intention be a feature in only some types of claim, and if so which? If only some types of claim, what is the logic behind restricting the role of intent in this way? I am going to conclude by suggesting that there is no logic in preventing features based on intention into any type of claim, provided that it does not result in a claim which has the potential to re-monopolise known acts. This will involve a more flexible use of claim language. The topic is likely to be one of increasing importance in the light of the decision of the CJEU in Monsanto v Cefetra1 on the impact of the Biotechnology Directive2. Before getting to these questions one needs to set the scene and then cover a little history, both ancient and modern.

Ways of tailoring claim scope

2. We are all familiar with the basics: claims can be to products or to processes. So the scope of a claim can be restricted, as every patent attorney knows, by adding more technical features to it.

3. It is sometimes forgotten that there is a second dimension in which a claim can be narrowed. A claim has a scope in a different sense: namely the range of acts which are prohibited by the claim. In the case of a product, the restricted acts are the manufacture, use, importation, offer for disposal, disposal and so on of the product. A process claim prevents use of the process and gives protection in relation to the direct product of the process.

4. All this means that a product claim can in principle be narrowed not only by means of technical features, but also by restricting the acts which fall within its scope of protection.

5. More fundamentally, every claim has to be to an invention, however it is claimed. The distinction between product and process claims is a convenient categorisation for many purposes, but there is nothing fundamental about it. Indeed a product claim includes within its scope the entire set of processes for manufacture of that product. The so-called "use" claim is a limitation of a product claim by reference to one of the restricted acts: use. It is not a fundamentally different thing from a product claim.

6. The important thing about claims is not the category into which they fall, but whether they are accurately tailored to the patentee's contribution to the art. The various dimensions in which claim scope can be narrowed give great flexibility in tailoring the claim in that way, provided that we do not place rigid obstacles in the way.

English law prior to the EPC

7. The traditional view of the English patent lawyer has always been that patents are for products and processes and nothing else. Intention as such has no role to play in any patent claim. So for example if a product is old, it does not become new because it is made for a different purpose. Or if a method is old it does not become new if it is carried out with a different objective in view. In either case the features of the product in question or the physical steps of the process must be new in themselves. Otherwise the patent re-monopolises old things and old activities.

8. Thus when a product claim, for example, contains words such as a "an apparatus for cleaning wooden floors" and the defendant makes an apparatus intended for cleaning marble floors, it is no answer to infringement if the defendant's apparatus was in fact suitable for cleaning wooden floors, and otherwise had all the features of the claim: his intention to use it for cleaning marble was irrelevant. That little word "for" was always interpreted as "in fact suitable for" rather than "intended by the maker, seller or user for". Similarly, one could not achieve a novel claim by merely adding "for cleaning wooden floors" after specifying the features of a known floor cleaner in fact suitable for cleaning marble.

9. The same is, in theory at least, true of process claims. In that case, however, the word "for" is much more likely to say something about the steps of the process. A process for making compound A is inherently likely to be different from a process for making compound B. But one could not re-monopolise identical process steps simply by means of a feature relating to the user's intention.

10. In Mr Blanco-White QC's classic book on the Law of Patents he has a section headed "For"3. He counselled strongly against the use of expressions such as "for a bicycle" in claims, because of the difficulties of interpretation they gave rise to. He said that limiting the product claim to a particular field by use of the word "for" would:

"at best tend to give bare novelty without inventive subject-matter; at worst, mere 'novelty of purpose'".

11. That passage is interesting. "Bare novelty" suggests that the claim is in fact novel: presumably because making the article suitable for the new purpose requires some adaptation. The difficulty in interpretation lies in deciding how much in the way of adaptation is to be implied. "Without inventive subject-matter" suggests that such adaptation for the new purpose is to be presumed to be obvious. In many cases that may be true. An example might be a type of bell known for a doorbell, but specified to be "for a bicycle". Some adaptation to make it suitable for attaching to a bicycle would be a requirement of the claim. Whether the skilled person would in fact think of adapting that particular doorbell for its use on a bicycle would be a question of fact.

12. When Mr Blanco-White said "at worst mere novelty of purpose" he is presumably thinking of a case in which no adaptation of the product is implied by the word "for". A known type of paint "for" painting bridges would be an example. The traditional view is: you do not make the product novel by specifying a new purpose. It may have a new set of instructions on the tin: but the paint is the same old paint. But should that always be so if it required invention ever to think of that new use? Is it an answer to say that you can always have a process claim instead? Most patentees would say "no" given the greater ease of enforcement of a product claim. And what purpose is served by forcing the patentee to frame it one way rather than another?

13. In Adhesive Dry Mounting v Trapp4 (1910) claim 1 of the patent was for a process of mounting photographs which involved placing a thin layer of material made as described between the photograph and the mounting board and then applying heat and pressure. Claim 2 was:

"For carrying into practice the [said] process, a pellicle which is adhesive when hot and consists of a thin sheet of paper or other carrier immersed in a solution of gum… in such a manner that the adhesive material is incorporated into the carrier…"

14. The patentee sued a seller of pellicles. He argued that claim 2 was for the pellicle intended for use in the process: so selling the pellicle with that intention amounted to infringement. In other words he was saying that it was a purpose-limited product claim.

15. Parker J said that the claim meant the pellicle itself i.e. it was a product claim, on the grounds that it was probably trying to claim something different from the first claim, to a process. Accordingly the sellers were infringing by selling the product. However, on that view, the claim was anticipated by a specification which disclosed the same material for a different purpose: for tracing paper or for wrapping tea or tobacco. He said this:

"The idea of using an old material for an entirely new purpose, not being analogous to purposes for which it has heretofore been used, may be good subject matter, but such idea, however ingenious, can hardly justify a claim for the material itself."

16. But of course the patentee was not asking for a monopoly in the pellicle itself: only for a monopoly in selling the pellicle with a particular intention: a limited sub-class of the protection afforded by a product claim. The judge declined to see the claim in that way, notwithstanding the fact that he saw inventiveness in finding a new use for a known product. He was no doubt right under the law as it then was – but are we sure that is the right approach in principle?

17. More recently, in Eli Lilly & Co's Application5 the Patents Appeal Tribunal was faced with an application for known chemical compounds for which new and valuable anti-inflammatory effects had been discovered. The claim sought protection for:

"The manufacture, supply or importation of … compounds … intending the same to be used as anti-inflammatory agents".

18. The claim is an interesting and imaginative hybrid type of claim. A claim to a product gives the patentee a monopoly in all the prohibited acts. This claim uses some of the prohibited acts normally granted in respect of product claims, manufacture, supply and importation, and cuts them down by reference to the intention with which they are performed. The patentee was going further than Adhesive Dry Mounting, where the court was asked to construe the word "for" as requiring intention: he was placing an express requirement of intention into the claim.

19. The Eli Lilly claim was an attempt to achieve under the old English law what was later achieved under the EPC by the decision in Eisai6 by the Swiss form of claim. Under both systems the option of a conventional method claim was obstructed by the exclusion of methods of treatment of the human body. So the claims have to retreat to the earlier steps in the supply line. Both claims focus attention on the manufacture of the product. The Eli Lilly claim also includes supply or importation.

20. The argument presented in support of the Eli Lilly claim was an interesting one as well. It argued that intention can be a material factor in deciding whether there is contributory infringement of a process claim. So there was no reason why the monopoly could not be cut down so as to restrict its scope by reference to intention.

21. The Tribunal was not impressed with counsel's ingenious claim and argument:

"From the earliest days the intention of an infringer acting alone has always been regarded as irrelevant to infringement. The test must be objective and not subjective and in this connection we refer to the well known words of Sir Thomas Wilde, C.J. in 1846 in Stead v Anderson (1846) 2 WPC 147 at 156: 'we think it clear that the action is maintainable in respect of what the defendant does, not what he intends'."

22. What these old English cases show is a reluctance to allow a patentee to frame a claim to a product intended for a particular use either expressly or by a process of construction of the word "for". But the point made by counsel in Eli Lilly is a powerful one. In modern terms the argument is this: if we have a law of contributory infringement that allows the monopoly to extend to selling products when the seller knows that they are "suitable for putting and intended to put the invention into effect", why can we not frame a claim in that way in the first place?

The law after the EPC

23. To what extent does this old English rule against purpose limitation of product claims survive the alignment of the law with the European Patent Convention? The Guidelines for Examination7 say that "for" must be construed as "suitable for", in line with the old English approach. Nevertheless, the Case Law of the Boards of Appeal says that use claims may be allowed where the only novelty is the purpose of the use8.

24. The story is made complicated because of the way in which it interacts with the patentability of second and subsequent medical uses, and the large exception crafted in the case law to overcome this problem. Others have written in detail about how that story unfolded. In short, the specific exception in favour of a first medical use came to be expanded in favour of second and subsequent medical uses by the device known the Swiss form of claim.

25. The Swiss form of claim relied for its novelty on the ultimate therapeutic purpose. The claim is in the form

Use of [known compound X] in the manufacture of a medicament for the treatment of [disease Y].

26. It is worth pausing for a moment over that claim. It is a complex form of claim. If one starts with a product claim to compound X one has cut it down in a number of ways. One has:

(a) limited the restricted acts to "use",

(b) further limited the use to "use in the manufacture of a medicament", and

(c) further limited the claim by reference to the intention as to use of the medicament.

27. Such claims are used where compound X has already been used in the manufacture of a medicament for treating some complaint. So there is nothing to distinguish the new claim from the old apart from the purpose for which the acts are performed. It is not difficult to see therefore why English judges were surprised by this outcome. But the judges loyally followed the direction of the EPO, with some obvious reluctance.9

28. The latest chapter in the medical use story is provided by the amendment to the European Patent Convention. These amendments now give statutory basis for claims directly to the product for use in a novel method of treatment, even if the substance or composition is previously known for a different method of treatment10:

a substance or composition for use in any specific use in a method [for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body] provided that such use is not comprised in the state of the art.

29. It is now recognised that this provision extends even to the case where the new medical use is only a new dosage regime11. The result is that it is now legitimate to claim the product itself for the new medical use. The Swiss form of claim has served its purpose and can now be retired.

30. The fact that an explicit statutory basis was required in this narrow area suggests that a statement of intent or purpose will not, in the general case, be adequate to confer novelty on an old product.

31. It might be thought that, as the particular problem of products for medical treatment has been solved, the problem of intention in patent claims would go away. In non-medical cases, there should be some legitimate process claim to provide adequate protection. However, long before the EPC 2000, the Swiss form of claim for a second medical indication had given birth to a child: the second non-medical use: Mobil/Friction reducing additive12. EPC 2000 has not legitimised this decision, and the problems it gives rise to are still of importance.

32. It is worth reminding ourselves of the reasoning in that case. Mobil had discovered that a known additive for lubricating oil, previously disclosed for inhibiting the formation of rust, produced a hitherto unknown effect of also reducing friction. Mobil were refused a simple product claim by the EPO, and so amended their claim to use of the compound "as a friction reducing additive".

33. No attempt was made to claim the additive "for reducing friction" i.e. a purpose-limited product claim. Mobil chose instead to retreat to a claim based on use of the additive as a friction reducing agent. The significance of the case was that, in terms of physical steps, the use claim did not define anything novel either. All that was required was to put the additive in the engine in the same amounts as it was put in for the old purpose. It seems from the facts of the case that both effects were unavoidable.

34. Thus, in Mobil the use was held by the technical board of appeal (TBA) of the EPO to be new because the use achieved a technical effect which was not disclosed in the prior art. Of course, if the technical effect was one which was not inherent in the prior disclosed use, there would be nothing remarkable in this decision. But the TBA held that the fact that the effect was inherent in the prior use was irrelevant: what mattered was whether the effect had been made available to the public.

35. Accordingly the TBA allowed the patent to be granted on the basis that the prior disclosed use did not make the newly discovered technical effect available to the public. The reasoning has been criticised elsewhere13. There is no doubt that it gives rise to difficulty.

36. Whatever one may think about that reasoning, there is no doubt that in many cases a valuable contribution is made by someone who discovers a new technical effect inherent in an old use. The medical treatment cases are examples of this. Quite apart from that, a prior document may have languished on the shelves of the libraries of the world because it disclosed a rather poor rust inhibitor. The inventor who discovers that it has a quite different and more valuable effect makes a contribution. The problem is how one gives that inventor a monopoly which adequately distinguishes between activities which make use of his contribution to the art and those which do not.

37. An example shows how difficult that could be. Suppose, unlike the facts of Mobil, someone had been selling the additive for some time as a rust preventer, without appreciating that it had friction reducing effects. A patent is subsequently granted for the use of the additive for friction reduction and a copy of the patent is sent to the prior user. He now knows that he is selling the additive and achieving the newly discovered technical effect. He is doing nothing different, but is now infringing because he is using it "for" the new purpose. He has the claimed "intention". He must either stop or get a licence from the patentee. Yet all he wants to do is to carry on what he was doing before.

38. Some answer this problem by suggesting that the prior user has a right to continue. If so that should be made plain – because the CPC does not14. It can never be a complete answer, in any case. Why should a new entrant to the market not be entitled to sell it exclusively for the old use?

39. Mobil was on its facts a very difficult case. But in my view the difficulties which it creates should be approached by defining something which is in fact new, rather than by resorting to intention alone. The difficulty which it gives rise to lies in defining a monopoly which gives the later inventor some protection whilst not allowing for the possibility of preventing the public from doing what is expressly taught by the prior art. The claim in Mobil was, it is submitted, inadequate for this purpose15:

"Use of at least 1% by weight based on the total composition of a borated glycerol ester or borated thioglycerol ester produced by [method] as a friction reducing additive in a lubricant composition comprising a major portion of lubricating oil."

40. The person who pours the oil plus additive into the engine must be using it as a friction reducing additive, whether he or she is carrying out the prior art or the patent. The patent system is based on the policy that a person should not be impeded by a patent from doing that which is old or obvious. It is a rather bizarre result that he could be impeded from doing what is old by simply being put on notice of a technical effect which is achieved by what he is doing, particularly if it is not one in which he is really interested. The patentee's claim ought not to reach as far as covering the identical activity performed with new knowledge.

41. But what of a more restrictive claim: to a tin of oil with additive with instructions for using it for reducing friction? Or a claim to advertising or promoting the use of the additive with a claim for friction reduction? Such claims are novel, rely on objective indicia of intention rather than intention per se, and do not interfere with the use for the old purpose. Anyone who advertises the new effect is making direct use of the patentee's contribution to the art, unlike the mere user with knowledge, who is not.

42. This approach too would have had problems in the UK before the EPC. The decision in Ciba Geigy (Durr's Applications) [1977] RPC 83 was concerned with the discovery that a known herbicide for dicotyledenous weeds could be used for selectively combating monocotyledonous weeds in monocotyledenous crops. The Court of Appeal took a legalistic approach and refused to allow a claim to the known compound with instructions for use: holding that it was not a "manner of new manufacture". But to commercial men and women that is exactly what it was.

43. Some would say that this is to create a "thought" tort, which runs against the old fashioned principles which I have referred to. But, given that the patent system is designed to prevent the use by others of inventive ideas, there is every reason in principle why protection should extend to all activities which make use of the idea, provided that the form of protection does not have the potential to interfere with known activities.

44. The reason that these simple solutions to the problem were not adopted is, I believe, because of a perceived lack of flexibility in claim drafting. But more flexibility in claim drafting would allow us to grant appropriate protection without potentially fencing off parts of the prior art.

45. The EPO has disallowed claims to instructions for use by regarding the instructions as non-technical features: see e.g. Procter & Gamble/Stain removal method T 553/02. But is it right to regard directions as to the steps to be taken in a method as non-technical and the steps themselves as technical?

46. In other factual situations there may be even better ways of capturing the patentee's contribution to the art without impacting on the right to use it for the old purpose, provided that one is not too rigidly confined by rules about claim drafting.

47. The English Court of Appeal hinted at this in Actavis v Merck [2008] EWCA Civ 444 in relation to Swiss claims at least.

"In BMS Jacob J wondered how such a claim might work so far as infringement is concerned and thought it might create difficulty. And so it might in some cases (e.g. where the product is just sold as a standard product, like aspirin tablets). But in many cases the difficulty may be more theoretical than real. This is because manufacturers, particularly for prescription medicines and probably many others, have to provide detailed instructions and information about the use(s) and dosage(s) of their products. So in practice you can tell whether someone has used X for the manufacture of a medicament for the treatment of Y. He will have to say that his product is for the treatment of Y on his product information leaflet."

48. So why is it not legitimate to claim "Compound X coupled with instructions for use in method Y"? An EPO and an English case suggested this was not possible. But I question why that should be so16.

49. The same case appears to give some obiter approval for the principle that purpose may confer novelty generally:

"Things are different under EPO case law as was first established in Eisai in 1984. Before we examine Eisai in more detail it is important to note a parallel, closely related, development which occurred a little later but outside the context of medical use. In [Mobil] the "use of X as a friction reducing additive in a lubricant composition" was held by an Enlarged Board new notwithstanding the fact that the use of X in such a composition for the purpose of rust inhibition was known. Novelty of purpose for use can confer novelty even if the substance is old and unpatentable as such. Lord Hoffmann in Merrell Dow v Norton [1996] RPC 76 noted the difficulties which this sort of claim may cause in respect of infringement but clearly deliberately refrained from holding that a Mobil-type use claim is invalid." (emphasis added).

50. Later he said:

"The policy reason for allowing such claims is closely akin (without the complication of the ban on therapeutic use claims) to that behind Mobil/friction reducing additives. As Jacob J observed in BMS: 57. … It is arguable that there is no logical or reasonable distinction between [Mobil] and the decision in Eisai. After all it is the novel (second medical use) purpose of the product of manufacture of the Swiss form claim which is said to create novelty. The product and its method of manufacture are old. So to try and to steer a course between accepting Eisai and yet holding Mobil wrong is at best going to involve more Byzantine logic."

51. I think some caution is necessary before wholeheartedly embracing purpose for use as giving a substance novelty. The debate has been taken further by two English decisions at first instance since Actavis.

52. Two English cases decided after Actavis v Merck are worthy of note. The first is FNM Corporation v Drammock International Limited [2009] EWHC 1294 (Pat). In that case Arnold J had to construe the term "composition for providing a supply of water-based cooling mixture". So it was a product for a particular purpose. The rival contentions were (patentee) that it meant "for the purpose of" whilst the defendant contended that it meant "suitable for". The result of the patentee's contention would be that compositions in the prior art which were not expressly for the specified use would not anticipate. The patentee relied on the words of Jacob LJ in Actavis v Merck which I have quoted above, and went on to argue that the notion that purpose could be a feature of a claim applied equally to product and to process claims. Arnold J's analysis was, correctly, that the law had, thus far, gone no further than use claims. But suppose the claim had been amended or construed to mean "composition with instructions for use"?

53. The second is Folding Attic Stairs Limited v The Loft Stairs Company Limited [2009] EWHC 1221 (Pat). The claim in that case required certain distance to be "preset". The deputy judge, Peter Prescott QC, held that this did invoke an element of intention on the part of the manufacturer. He doubted the general proposition that you cannot have an element of intention in a patent claim in the following words:

"There is an old prejudice or tradition in patent law that words of intent should not be used in patent claims (see Eli Lilly & Co's Application [1975] RPC 438, 444). It was said to go back to the early nineteenth century; but whether that is the law now under the 1977 Act and the European Patent Convention must be questionable. We have seen an abandonment of the concept in many pharmaceutical patents whose claims are in so-called "Swiss" form. What they really mean (and nobody pretends otherwise any more) is "The use of known ingredient X for making a medicine for treating disease Y", meaning for the purpose of, or with the intention of, treating disease Y. In this instance the law has moved on, and there is no doubt about it. In a recent decision of the Court of Appeal it was not even the intention to treat a different medical complaint that was the key point, but the intention to do so with a different dosage regimen (Actavis UK Ltd v. Merck & Co Inc [2008] EWCA Civ 444). The real reason that such claims are allowed is that, were it otherwise, the inventor would be quite unable to protect his invention at all. But they imply a test of purpose or intentionality on the part of the manufacturer. If that is permissible in pharmaceutical cases, I do not see why it could not be so in other industries. I believe the words 'predetermined' or 'preset' have long been used by patent draftsmen for the purpose of indicating intentionality, albeit rather covertly. Why not admit it openly?"

54. Another judge has also doubted the universality of the proposition that "for" can never mean "for the purposes of": see Lewison J in Zeno Corporation v BSM Bionic Solutions Management GmbH [2009] EWHC 1829 (Pat) at [26] – [30].

55. In a Swiss case17 the claims were to an apparatus for coating non-textile materials with a powdered substance. The question was whether the claims could be enforced against copied machines which were being marketed for coating textile substrates. The Bundesgericht held that statement of intention or purpose did not as a rule limit the scope of protection of a claim. However in the present case it was to be inferred, I believe from the procedural history of the patent, that there had been a conscious decision to limit to the use of the apparatus, rather than the apparatus itself. So there was no infringement. In this manner the statement of purpose was given effect to.

56. The distinction between the effect of purpose limitation in use claims and product claims appears still to reflect the practice of the EPO. Thus in a series of cases the boards of appeal have held that a statement of purpose does not give novelty to an otherwise known product: the statement merely implies that the product has to be suitable for that purpose18.

57. I think that all this may be too rigid. If one looks at the matter from first principles, the patent system should exist to give protection for inventive ideas. If a new purpose for a known product is inventive, then in principle one ought to be able to give protection by means of a monopoly in activities which make use of that idea. It was that desire which plainly motivated the result in Mobil. But the patentee should have been forced to retreat to a claim which monopolises its invention and did not have the potential to interfere with known uses of the additive. It was that desire which motivated the Swiss claim – but its dubious legal basis required statutory intervention.

58. I would advocate a much more flexible use of claim language to allow protection for inventions which do contribute to the state of the art by providing a new purpose for an old product, provided that such claims are drawn in ways which encapsulate the inventive contribution without monopolising the prior art. The old paint in a new tin giving instructions for the intended use is the sort of thing I have in mind.