UK: The House Of Lords Wakes Up

After a decade of refusing to take any patent cases, the House of Lords took 2; Kirin Amgen v Hoechst Marion Rousell and SABAF v MFI. Judgment was handed down respectively on 21 October and 14 October 2004. The former is more important than the latter. In each case the judgment was unanimous, and the leading judgment was given by Lord Hoffman who was formerly a Patents Court Judge and has been involved as a barrister in IP cases, and is still actively involved in IP professional issues.

The Court reviewed the decisions and writings of the leading judges in Germany and the Netherlands, and concluded that there is no room in the European Patent Convention and conformed national laws for a doctrine of equivalents. The message is quite clear; the claim means what is says and you cannot construe into the claim what is not there. The claim states what the patentee claims as his monopoly, and what is not claimed is disclaimed.

It is not permissible, and the Court observed this to be the normal position in the UK, Germany and the Netherlands, to look at the prosecution file, or to second guess what was in the mind of the draughtsman in his negotiations with the patent office.

The decision then set out the basis on which claims are to be construed having regard to Section 69 EPC and its Protocol. It held first how they are not to be construed; that is by taking the old English common law approach of narrow or forensic construction, or by taking the old continental European approach of the claims in which the claims were construed as point of departure in determining the inventive achievement disclosed by the specification as a whole.

Instead the Court said that claims are to be construed by reference to the words used, giving them the widest meaning they are reasonably capable of having, but no wider. They are to be given a purposive construction in accordance with the construction of all documents including statutes and contracts. Construction of a claim has to be viewed through the eyes of the skilled address. The question to be asked is what the claims mean to the skilled addressee.

Normally the answer will come back; exactly what they say, but there occasions, often but not exclusively where numerical or geometrical limits are used, where the claim means an approximation to those limits to the skilled reader. In the classic English case of Catnic Components which was about the interpretation of the vertical in a claim to the construction of a steel lintel for reinforcing door and window openings, that word was to be construed through the eyes of a builder or constructor and not through the eyes of a mathematician. The Court observed that most of the cases where strict language of the claims has not been observed relate to quasi mathematical limits, where the word "about" can be interpolated when construing how a man skilled in the art would construe the word or phrase.

Under Article 64(2) EPC, embodied in English law as section 60(3) Patents Act 1977, it is an infringement to import a product made directly by the process claimed. The House of Lords said that product by process claims are unnecessary. If they claim only the product when made by the claimed process they add nothing to the process claim. If they seek to claim more widely than the process then the claim has to be examined for sufficiency to see if it is enabled by the specification. Product by process claims are only acceptable where the process makes a new product because it is some material way different from what was previously known. But where that is so the product is new and can and should be claimed as such.

A new process for a known product does not make the product as such new, only the process, and any product by process claim which is dressed up to claim the product as such will be bad for lack of novelty.

The Kirin Amgen case puts a premium on good patent drafting. It is better to have fewer patents of good width than more patents of narrow width. It is worth having some wide claims which might be held invalid but where the litigation process and the existence of the claims might be a deterrent to competition. Where the pendulum has swung is that claim drafting should now concentrate on two series of claims; a narrow series to the strict invention and a wider series, which might not survive protracted litigation to exploring the boundaries of litigation. What is clear across Europe is that the patentee which has drafted his or her claims too narrowly can no longer rely on the court coming to his rescue with the doctrine of equivalents, however dressed up.

This issue is particularly applicable to the pharmaceutical and biotech industries, where monopolies are sought to be extended by new processes of manufacture. If the product of the process is not new, then the process should be claimed widely as well as narrowly, and if the product is new, it should be claimed as such.

It is worth pointing out that only two claims were in issue in Kirin-Amgen; 19 and 26, and although they were both found invalid and not infringed, the rest of the patent (the narrow claims) survived. The effect of the litigation appears to have been to keep the defendant off the market until about two months before the patent expired, so even though invalid and not infringed, the wide claims had real practical commercial utility.

The House of Lords also pronounced in SABAF on the issue of mere collocation. It held that where a claim contains integers which are themselves known and used for the purpose for which they are known and there is no claimed synergy from the combination, the claim will be invalid as being obvious. In the claim in that case, it was to a domestic stove burner with three known features which were put together for the first time. Each feature was performing the function for which it was known, and there was no synergy claimed between the features. This was held to be a mere collocation, and unpatentable.

The House of Lords also examined the question as to when a person is an importer for the purpose of the statutes on infringement, Patents Act 1977 section 60(1). It held that this work has its common sense meaning; that is to say the person who brings the goods into the UK. It is a question of title and legal possession. The person who makes the arrangements to ship the goods is not the importer unless he or she also retains title when the goods enter the UK.

After a 10 year drought of cases from the English House of Lords on patent issues, there have been two important cases; the Kirin-Amgen case affects patenting strategy and litigation strategy, and needs to be considered as a seminal case. SABAF warns that if known integers are put together without some synergistic advantage, the patent is unlikely to survive an obviousness attack.

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