IP Lecture 4: Patents

Definition and Scope

•  a legal right to exclude others from making, using, or selling an invention for a limited period of time

• Typically 20 years as of the filing date.

• This right is granted in exchange for the patent holder publishing an enabling disclosure of the invention.

  Crucially, a patent is NOT a right to use an invention.

• Owning a patent does not protect the holder from infringing an older patent that covers the patented technology.

Components of a Patent Document

• Title Page: Contains bibliographic data.

• Description: Includes the Background, Summary, Brief description of drawings, Detailed description, and Examples. (The summary should not go into too much detail, which might limit the patent scope).

• Claims: These are the most important part, as they determine the scope of protection/monopoly of the invention. Claims should be as broad as possible, but additional language (features) limits the protection scope.

• Drawings: Illustrations provided to improve the understanding of the invention.

Conditions

1. New / Novel (54 EPC)

2. Involve an Inventive Step (56 EPC)

3. Susceptible of Industrial Application (57 EPC)

• Broadly 52 EPC

• + disclosure / sufficiency Art 83 EPC

Scope of Exclusion

• found in the patent claim

• want to claims to be as broad as possible → the more information you add the further you limit the scope

• the description and drawings shall be used to interpret the claims.

National Patents

• Granted and litigated by national patent offices/courts.

• (E.g., the Dutch patent system issues "rubber stamp patents" that are not assessed for validity upon issue).

Bundle Patent

• traditional European patent

• Granted centrally by the EPO but must be validated state-by-state in the 39 signatory countries (EPC Member States), including non-EU members like the UK.

• Litigation regarding validity/infringement occurs separately per jurisdiction, potentially leading to contradicting decisions.

European Patent with Unitary Effect (Unitary Patent)

• This is a new title for participating EU Member States (18 countries).

• Advantages:

  • It provides protection across 18 countries for fees comparable to validating a traditional EP in only four countries (UK, Germany, France, Netherlands). It is easier to valuate for investors.

• Coverage: It covers the participating EU Member States, but patentees can still seek traditional EP protection in the remaining 14 countries.

• Opposition: Like the traditional EP, it is subject to opposition at the EPO, potentially leading to revocation across all jurisdictions.

Challenges to full unification

• structural complexity

• diverging national interests

• high costs

• centralised revocation risk

• fragmented litigation

• political resistance

Unified Patent Court

• supranational court common to the 18 Contracting Member States (CMS).

• Exclusive Competence (Subject Matter): The UPC has exclusive competence over patent actions listed in Article 32 UPCA, including infringement, protective measures, and revocation of Unitary Patents and classic European Patents (unless the proprietor has opted-out).

Jurisdiction of UPC

• competence of the Court of First Instance divisions (Art. 33 UPCA) is established in two ways:

  1. Infringement: The local division (LD) where the infringement takes place.

  2. Defendant Domicile: The LD where the defendant (or one of the defendants) has residence.

     • Actions against multiple defendants are allowed only if there is a "commercial relationship" and the "same alleged infringement".

Cross-border Jurisdiction UPC

• Jurisdiction is governed by the Brussels Regulation (BR):

  • Art. 4 BR (General Rule): Persons domiciled in a Member State shall be sued in the courts of that Member State. The jurisdiction established by Art. 4 is "universal" and may extend to infringement committed in all granted states.

  • Art. 24 BR (Exclusive Jurisdiction): Courts of the Member State where a patent's registration/validity is deemed to have taken place have exclusive jurisdiction over validity proceedings (regardless of whether the issue is raised by action or defense).

GAT v LuK

• Confirmed that exclusive jurisdiction over the validity of a patent lies with the court of the country of registration (Art. 24 BR).

BSH Hausgeräte v Electrolux

• Ruled that a national court, based on the defendant's domicile (Art. 4 BR), can hear cross-border infringement claims for all parts of an EP, even if an invalidity defense is raised.

  • However, for BR/Lugano Member States, the court may stay proceedings if there is a non-negligible possibility that the relevant national part of the patent will be declared invalid by the competent court.

  • For non-EU EPC Member States (where Art. 24 BR/22 Lugano does not apply, like the UK or Turkey), an inter partes decision on validity is possible by the non-forum court.

Exceptions to Patentablity (52(2) EPC)

• Discoveries, scientific theories, and mathematical methods.

• Aesthetic creations.

• Schemes, rules, and methods for performing mental acts, playing games, doing business, or programs for computers.

• Presentations of information.

Sufficiency (Art. 83 EPC)

• Requirement: The application must disclose the invention in a manner sufficiently clear and complete for a person skilled in the art to carry it out.

• Categories of Insufficiency:

  1. "Classic" insufficiency: The disclosure only provides one way of making the invention.

  2. "Biogen" insufficiency: The disclosure is insufficient because it does not enable the invention over the whole scope of the claim.

  3. "Uncertainty": It is uncertain whether the invention actually works.

• Case Example: Regeneron v. Kymab: The patents were invalidated for Biogen insufficiency because the description only enabled the creation of a small subset of the claimed transgenic mice, not the full range claimed.

Novelty

• Requirement (Art. 54 EPC): An invention is new if it does not form part of the state of the art.

• State of the Art (Prior Art): Everything made available to the public by written/oral description, use, or any other way, before the date of filing. Prior art can be obscure, but it must be public. A product sold publicly (a "Test product") can constitute prior use if a skilled person could examine its structure/composition.

• The "Gold Standard" Test

Gold Standard Test

•  Novelty requires direct and unambiguous disclosure in a single prior art document viewed as a whole.

  • Combination of documents is in principle not possible for novelty.

  • A disclosure must be explicit or implicitly follow "inevitably" from the prior art.

  • Example: If a recipe requires selection from multiple lists (e.g., type of sugar AND sugar range), it is not novelty-destroying. If a picture of the product differs anywhere, it is not clear and unambiguous.

Inventive Step

• Requirement (Art. 54(5) EPC): An invention involves an inventive step if, considering the state of the art, it is not obvious to a person skilled in the art. This is considered the core of the patentability requirements.

Skilled Person

• An experienced practitioner with average knowledge and abilities, aware of common general knowledge, who has access to all the state of the art.

• They are sometimes described as "a very boring nerd" who is incapable of "a scintilla of invention".

Problem Solution Approach

• This three-step test is used to assess inventive step objectively, preventing the use of hindsight (knowing that the invention works).

  • Identify the Closest Prior Art:

  • Define the Objective Technical Problem:

  • Examine Obviousness:

Identify the Closest Prior Art

• The single document that represents the "most realistic springboard" to the invention, disclosing the main features.

Define the Objective Technical Problem:

• Determined by finding the distinguishing features between the claim and the closest prior art, and identifying the technical effect associated with those features.

Examine Obviousness

• Determine if the skilled person, motivated by the objective technical problem, would have come to the claimed invention. There must be a pointer or motivation for the skilled person to combine prior art references.

Infringement - Claim Interpretation (69 EPC)

• Interpretation must balance fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties.

• It rejects both the strict literal meaning approach (traditional English) and the inventive concept approach (traditional Dutch/German).

• Interpretation is done through the eyes of a skilled person who reads the claims while considering the description and drawings.

• Case Example: Sonos v. Google (EP 491):

Sonos v Google

• The court interpreted the claim term "notification" not by its literal meaning, but by reading the patent specification (description, figures, and context). The specification revealed the invention was designed for "bookmarking for future availability," leading the court to interpret "notification" as "asynchronous" communication. Since Google's accused product used "synchronous" communication, it fell outside the scope of protection, and there was no infringement.

Direct Infringement

• requires that the accused product or method literally falls within the wording of the patent claims.

Doctrine of Equivalence

• applies when the allegedly infringing product does not literally infringe but is considered a technical equivalent to the claimed subject matter.

  • Case example Eli Lilly v Fresenius

Eli Lilly v Fresenius

• The patent claimed the combination of pemetrexed disodium + Vitamin B12. Fresenius used pemetrexed tromethamine + Vitamin B12.

  • The core issue was that the two salt forms yield the same active ingredient (the pemetrexed anion) in aqueous solution.

  • Equivalence Test (The Hague CoA 2020) involved four questions:

Equivalence Test

1. Did the skilled person recognize the infringing product as a technical equivalent? (Yes, because the active ingredient and Vitamin B12 were the same—it worked the same).

2. Did the skilled person recognize that the inventive concept reaches beyond the claimed embodiments? (Yes, the patent suggested using other salts).

3. Would the skilled person nonetheless have reason to assume the patentee sought limited protection? (No, there were no grounds to limit the scope).

4. Is the infringing product part of the prior art, or a non-inventive variant of the prior art? (No).

Indirect Infringement (26 UPCA / 53 DPA)

• (contributory infringement) applies when a third party supplies or offers to supply only part of the patented invention.

• Requirements (Art. 26 UPCA/Art. 53 DPA):

Requirements Indirect Infringement (Art. 26 UPCA/Art. 53 DPA):

• The supplier must:

• Supply means (e.g., a coffee capsule) that relate to an essential element of the invention.

• The means are supplied for the purpose of putting the invention into effect in the CMS.

• The third party knows, or should have known, that those means are suitable and intended for putting the invention into effect.

“Means Essential” Indirect Infringement

• This means must serve the inventive concept and the realization of the teaching of the patent.

  • Case Example:

    • Sara Lee v Intergro:

    • MSD v Teva:

Sara Lee v Intergro

• The Dutch Supreme Court originally ruled that a suitable coffee pad, while necessary for the device's operation, was not an "essential element" because it did not distinguish the patent teaching from the prior art.

MSD v Teva

• This later decision clarified that "means essential" is not limited to distinguishing features but must serve the inventive concept.