2. Patent Protection of Technical Equivalents in Germany Prof. Dr. Christian Osterrieth Copenhagen August 2008

3. www.rokh-ip.com3 Content I.Introduction II.Conditions of Equivalence II.a Case Law Examples III.Functional Construction v. Equivalence III.a Case Law Example IV.Formstein-Defense V.Conclusion

4. www.rokh-ip.com4 I. Introduction  Determination of scope of protection is important –for the inventor, who has to get an appropriate remuneration –for legal certainty of third parties, who have to be able to assess/predict whether or not their product or process infringes any patents  National courts are responsible for determining the scope of protection of a patent  Jurisdictions in Member States of European Patent Convention (EPC) vary in determining scope of protection

5. www.rokh-ip.com5 I. Introduction Under German jurisdiction:  In order to determine the scope of protection it is necessary to find out the technical meaning of the claim. This requires three steps: 1.Understanding of a person skilled in the art is decisive. 2.Person skilled in the art attaches value to the technical function of each feature. 3.Person skilled in the art does not consider features separately but within the context of the entire claim.

6. www.rokh-ip.com6 I. Introduction (cont’d.)  The scope of the patent can extend beyond the wording of the claim. –Not only literal use of the technical teaching presents a patent infringement but also the use of an equivalent.

7. www.rokh-ip.com7 I. Introduction (cont’d.)  Art. 69 (1) European Patent Convention (EPC) “The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.”

8. www.rokh-ip.com8 I. Introduction (cont’d.)  Protocol on the Interpretation of Article 69 EPC 2000: Article 2:  For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims. BUT: Neither EPC nor protocol contain a definition of „equivalent“.

9. www.rokh-ip.com9 II. Conditions of Equivalence Federal Supreme Court (BGH), GRUR 1986, 803 – Formstein (Moulded Curbstone) “Solutions which the average person skilled in the art can determine due to his professional knowledge as being equally effective based on considerations oriented on the invention as paraphrased in the claims will generally fall within the scope of protection of the patent. This is required by the goal of adequate remuneration for the inventor under consideration of the aspect of legal certainty.” Two conditions: 1.Equally effective 2.Detectable on the basis of the claims

10. www.rokh-ip.com10 II. Conditions of Equivalence (cont’d.)  Formstein-Decision has been specified by five parallel Federal Supreme Court decisions, inter alia, BGH GRUR 2002, 515 – Schneidmesser I  In particular a third condition was added: 1.Equal Effect 2.Detectable 3.Equal Value

11. www.rokh-ip.com11 II. Conditions of Equivalence (cont’d.) 1.Equal effect  Does the modified embodiment solve the problem the invention is based upon with equally effective means? –Which effects achieved with the features of the claim have to come together in order to solve the problem the invention is based upon? This includes every effect that shall be achieved with the features separately or in combination. –Regards objective equality

12. www.rokh-ip.com12 II. Conditions of Equivalence (cont’d.) 2. Detectable  Is the person skilled in the art able to detect the modified means as equally effective? - Has the modified means been obvious or did the person skilled in the art have to be inventive?

13. www.rokh-ip.com13 II. Conditions of Equivalence (cont’d.) 3. Equal value  Are the considerations, which are necessary for the person skilled in the art in order to find the modified but equally effective means, oriented on the meaning of the technical teaching of the invention in such a way that the person skilled in the art has to deem the modified means as solving the problem equally? –Technical teaching of the invention has to be the decisive basis for the considerations of the person skilled in the art.

14. www.rokh-ip.com14 II.a Case Law Examples 1.Court of Appeal Düsseldorf,10 February 2005, I-2 U 80/02 – Murine Monoclonal Antibody FACTS:  Claimant owns patent that claims a murine monoclonal antibody, which binds a human breast cancer gene  Defendant markets medication for breast cancer treatment, which contains recombinant humanized monoclonal antibodies the hypervariable regions of which are derived from a murine antibody recombinant antibodies are partly human, partly murine

15. www.rokh-ip.com15 II.a Case Law Examples (cont’d.) Murine Monoclonal Antibody (cont’d.) DECISION :  No direct use of patent since patent covers only antibodies that are entirely murine  Equivalent use? Relevant was third condition (equal value):  Technical teaching refers to antibody against breast cancer produced by cells of only one species (here: mouse)  Person skilled in the art oriented on this teaching would have considered to create antibodies by using another species.  Skilled person oriented on this teaching would not have considered to modify antibodies by genetic engineering in a way that part of the animal DNA sequence would be replaced by human DNA (reason: (1) was uncertain whether recombinant antibodies can bind breast cancer antigen, (2) to extent scope to recombinant antibodies would contradict the principle of certainty of law)

16. www.rokh-ip.com16 II.a Case Law Examples (cont’d.) 2. Federal Supreme Court, GRUR 2002, 527 – Custodiol II FACTS:  Claimant was owner of European Patent regarding a protective solution for preventing ischemia damage to the heart and kidneys containing, inter alia, magnesium chloride 10 ± 2 millimols,  The apothecary of the defendant produced a protective solution, the composition of which corresponded with claim 1 of the patent, BUT: it contained 4 millimols magnesium chloride

17. www.rokh-ip.com17 II.a Case Law Examples (cont’d.) Custodiol II (cont’d.) DECISION:  Numbers and measurements are a binding part of the claim and determine the scope of protection, however, there is room for interpretation and tolerances (thus, a differing number can still infringe literally).  If the numbers are beyond the extent of tolerance equivalent use is possible if the specification provides the person skilled in the art with instructions according to which the impact of the invention can be achieved by means beyond the wording of the claim.  If the number within the claim presents a critical value, a different number does not solve the problem equally.  In the present case the Court found the deviation between the amount of magnesium chloride within the claim and within the attacked embodiment to be considerable. Since the invention regards a sensitive area the person skilled in the art would assume that due to pharmacological reasons it would be crucial to adhere to the tolerances of each part of the solution.

18. www.rokh-ip.com18 III. Functional Interpretation vs. Equivalence BGH GRUR 1999, 909 – Spannschraube, GRUR 2001, 232 – Brieflocher  Features and terms are to be interpreted in a way that is appropriate in view of their technical function according to the disclosed inventive idea.  Functional interpretation can have the consequence that understanding of a feature is not restricted to the claimed design if the specification shows that the invention does not depend on a specific design but on the specific technical impact that is achieved with the claimed design.  Embodiment which falls under the claim according to a functional interpretation presents a literal infringment (not an equivalent use!)

19. www.rokh-ip.com19 III. Functional Interpretation vs. Equivalence (cont’d.)  If functional interpretation of a claim is used to determine the scope of protection it is difficult to draw the line between literal infringement and equivalent use. –Functional interpretation can include modified means that have the same technical impact, i.e. are equally effective –equivalence requires a means that is equally effective

20. www.rokh-ip.com20 III.a Case Law Example District Court Düsseldorf, 31 July 2007, 4b O 297/06 – not published FACTS:  Claimant owns patent regarding an collapsible medical device for closing perforations within the cardiac septum, device comprises a metal fabric of braided metal strands and is characterized in that clamps (15) are adapted to clamp the strands at the opposed ends unfolded folded

21. www.rokh-ip.com21 III.a Case Law Example (cont’d.) DECISION:  The Court held that the attacked embodiment falls within the wording of the claim  The Court adopted a functional interpretation by asking what are the technical impacts of the feature in order to solve the problem the invention is based upon  The clamps have the function to prevent the strands from fraying out and to keep the strands in their braided configuration  By using a functional interpretation the wording “clamps” (the use of plural) means that only so many clamps should be used as are necessary in order to prevent the strands from fraying out.

22. www.rokh-ip.com22 III.a Case Law Example (cont’d.)  If the four free ends of the unfolded material are turned up  the following configuration needs only one clamp in order to prevent the free strand from fraying out and from returning to its unfolded status clamp Opposing ends of strand

23. www.rokh-ip.com23 IV. “Formstein-Defence” BGH GRUR 1986, 803 – Formstein (Moulded Curbstone)  In case of equivalent use of the patented invention the accused infringer can defend himself by stating –that the alleged infringement is identical to the prior art –that his product/process would not have been patentable due to lack of inventive step  Using a functional interpretation of the claim means that the product/process falls within the literal meaning of the patent although the interpretation goes in fact beyond the wording of the claim similar to equivalent use (see previous case law example) yet in this case the accused infringer cannot rely on the “Formstein-defence”.

24. www.rokh-ip.com24 V. Conclusion  Equal determination of scope of protection is important for legal security –within Germany where the separation principle applies (infringement and validity are assessed by different courts) –within Europe as it is the aim to harmonise patent law  Harmonisation difficult to achieve but equivalent use is now recognised in the Protocol on the interpretation of Art. 69 EPC

25. www.rokh-ip.com25 Thank You! Steinstr. 20 Tel. +49 (0)211 550 22 0 40212 DüsseldorfFax +49 (0)211 550 22 550 Christian.Osterrieth@rokh-ip.com