P6 Flashcards
How is ‘the art’ defined?
By the title and the opening paragraph, i.e., “the invention relates to…”.
How should the interpretation section be started?
1) Write “…what the person skilled in the art thinks he was intending to claim. Kirin-Amgen…” to show the examiner that you know the latest case law, and to remind yourself what you have to do;
2) State whether the art in question is broad or narrow in order to identify the person skilled in the art. It might be convenient to deduce that the art is a broad art, so that as many of the documents making up the P6 exam paper can be considered to be within the common general knowledge of the skilled reader. This will make it easier to launch an “obviousness” argument;
3) Interpret as through the eyes of the defined skilled person.
How should the interpretation of a conventional word like ‘comprising’ be addressed?
By explaining how the word is understood, then stating “because this is the conventional meaning of the word in a patent claim, and the skilled reader would know that”.
How is the word ‘for’ understood in a claim?
‘For’ is generally understood as meaning ‘suitable for’ rather than ‘specifically intended for’.
“‘For’ means ‘suitable for’ and includes anything that could perform the purpose, even if not in a totally ideal way, without major modification”.
How should the word ‘comprises’ be understood?
The ‘repercussive’ effect is useful, since if the sub-claims introduce further features, then the ‘comprises’ of the main claim must be ‘open’ (i.e., means ‘at least includes these features, and may possibly include other features as well’), and logically the remaining uses of the term will most probably be ‘open’ as well.
“‘Comprises’ is an ‘open’ word, meaning ‘includes at least’, because a dependent claim includes another component (repercussive effect)”.
“‘Comprises’ is an ‘open’ word, meaning ‘includes at least’ because the described embodiment includes other components and the described embodiment would be expected to be inside the claim”.
How should false antecedents be dealt with?
The inconsistency should be addressed, and possibly the suggestion should also be made that the claim should be amended. If the chain of dependency is wrong, it should also be pointed out that the dependent claim has been understood in a way that it makes sense.
“…the skilled person will immediately see there is an error”.
How should ‘means for’ be dealt with?
A decision should be made as to whether the phrase is broad or narrow, and the decision should be justified.
What are the three classes of word/phrase/point of difficulty that appear in the claims of a P6 paper?
1) Terms that are not relevant to the scope of the claim (e.g. because they appear in all documents), these can be dealt with briefly by saying that they take their ‘usual meaning’ or that the ‘term is clear in the context’.
2) Terms which are relevant to the scope of the claim, but which are clear on considering the text and/or drawings of the specification. These are terms that should be discussed, and where you should give your reason, identifying precisely where you find evidence in support of your conclusion;
3) Terms which are relevant to the scope of the claims which have more than one potential meaning based on the text of the specification. These are ‘balance-points’. The examiner does not mind which way you decide a ‘balance-point’, but the reasons for reaching a conclusion should be given, identifying the evidence relied on.
How should made-up phrases such as ‘a one-handed coupling’, or restrictions such as ‘a garden saw’, be dealt with?
Points of this type are most likely to be ‘balance points’, and consequently it doesn’t matter what conclusion you reach, provided that you justify your conclusion in some tangible way.
How should a relative term be dealt with?
The term may reasonably be construed to include all of the described examples, and to exclude the described prior art, which might help to define a useful border as to what is in and what is out. The underlying purpose of the parameter may lead to a definition of the border of the relative term. Evidence for this must come from the patent or the acknowledged prior art or the common general knowledge of the skilled person.
How should the interpretation of a feature in the patent be approached that is identical, or virtually identical, to one in the infringement and/or prior art disclosures?
In this case there is no need for an extensive construction of the relevant wording.
What should be considered when interpreting a single-ended range?
- If the range is ‘up to’ or ‘less than’, then is it essential that there is at east some of whatever is being referred to, or will everything be all right if there is none at all?
- If the range is a ‘more than’ range, how high up could you realistically go with the invention still working and still providing some sort of advantage?
What was the approach adopted in Smith & Nephew Plc v Convatec Technologies Inc & Anor [2013] EWHC 3955 with regard to ranges?
Justice Birss adopted the “significant figures” approach, where a range boundary should include everything equal to the boundary to one significant figure, calling it “the natural approach of the skilled person”.
How should ‘fudge’ words such as ‘about’, ‘approximately’ and ‘substantially’ be dealt with?
Look closely at the examples to see how far the specific examples are removed from the language of the claim. This may give you an ides of the degree of ‘stretch’ provided by the fudge word.
What should the approach be if there are two independent Claims?
Look at them very closely, to see where the language used is the same and where it differs. Often words that were critical to your interpretation of the first independent claim have been changed or omitted, so that the effective scope of the second independent claim is very different to that of the first.
What if there is no statement of invention, or the statement of invention differs from the language of the claim? Or, if words that are of crucial importance do not appear in the text of the patent at all?
This can often make the task of interpreting the claims more difficult, but gives an opportunity to suggest that the invention(s) of the claims are not sufficiently described in the specification.
Is it possible to have broad claims and a single embodiment?
Yes, if it would be in the ambit of the skilled person to develop the described embodiment to become other embodiments across the scope of the claims without providing any inventive input. However, there may well be an argument, in such a situation, that a description of a single embodiment is not an ‘enabling’ description of the
broad invention claimed.
According to the Patents Act 1977, how should the claims be interpreted?
SECTION 125
The claims should be interpreted by the description and drawings, and the Protocol on the Interpretation of Article 69 of the EPC applies.
What are the ‘Protocol Questions’?
1) Does the variant have a material effect upon the way the invention works? If ‘yes’, the variant is outside the claim. If ‘no’ -
2) Would this (i.e. that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art? If ‘no’ the variant is outside the claim. If ‘yes’ -
3) Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention? If ‘yes’, the variant is outside the claim.
Improver Corp. v Remington [1990] FSR 181
According to Lord Justice Jacob in Ancon, how should the claims be construed?
The claims should be construed purposively, with the inventor’s purpose being ascertained from the description and drawings. This can lead to the conclusion that a technically trivial or minor difference between an element of a claim and the corresponding element of the alleged infringement nonetheless falls within the meaning of the element when read purposively. This is not because there is a ‘doctrine of equivalents’, it is because it is the fair way to read the claim in context.
Ancon Limited and ACS Stainless Steel Fixings Limited [2009] EWCA Civ 498
Does the skilled person read a claim to distinguish it from prior art known to the applicant and acknowledged in the patent?
No, even though the skilled reader knows that the patentee is trying to claim something that is new, and will be averse to ascribe the claim a meaning which covers that which the patentee acknowledges as old, there is no rule that because prior art is referred to in the specification it cannot be found to have anticipated the invention claimed.
Tate & Lyle Technology Ltd and Roquette Frères [2010] EWCA Civ 1049
What does Virgin Atlantic Airways indicate as to how the skilled person would construe a European claim with a two-part form and reference numerals?
The skilled person knows that while the ‘characterised’ may expect to divide an acknowledgement of the prior art from the new or inventive part of the claim this is not necessarily so, and while numerals may help identify the components of the preferred embodiment specified by the phrases of the claim, the numerals must not be used to limit the claim in any way.
Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd. [2009] EWCA Civ 1062
What are Swiss-type claims?
Swiss-type claims are process claims:
“use of product X in the manufacture of a medicament for the treatment of indication Y”
According to BOS GmbH what is the ‘common general knowledge’ of the skilled person?
The ‘common general knowledge’ of the skilled person is considered to be all of the knowledge that is generally known and generally regarded as a good basis for further action by the bulk of those engaged in the art. While the skilled person is considered to know of the existence of some earlier products similar to the invention, that knowledge does not extend to the inner workings of those products.
BOS GmbH & Co KG and Cobra UK Automotive Products Division Ltd [2012] EWPCC 38
Is the scope of a Swiss-type claim broad enough to cover the use of the claimed compound during the manufacture of a medicament, even if the claimed compound is no longer present in the medicament itself?
No. The skilled person appreciates that a Swiss-type claim should be construed as being directed to the use as an active ingredient for the manufacture of a medicament that includes that ingredient, as to construe the claim otherwise would render the claim vulnerable to an attack of insufficiency.
Ranbaxy (UK) Limited and AstraZeneca AB [2011] EWHC 1831
What is infringement?
Infringement of a UK patent occurs if a validly patented product or process is exploited within the UK without the patentee’s consent in the absence of a valid defence.
What is the traditional test to determine if there has been a breach of confidence?
1) The information must have the necessary quality of confidence about it;
2) The information must have been imparted in circumstances imposing an obligation of confidence;
3) There must be a unauthorised use of that information to the detriment of the party communicating it.
Coco v A N Clark (Engineers) Ltd [1969] ROC 41, ChD
What determines whether information has the necessary quality of confidence?
In order to be held to be confidential, information must not be trivial or commonplace, in the public or too vague. If a person whose conscience is fixed by a confidence puts the information in the public domain themselves and this information is used to the detriment of the owner the usual remedy is damages.
What is a trade secret?
A trade secret is information that would cause real harm if it were disclosed to a competitor and the owner had limited its dissemination. To keep trade secrets protected, it must be established that the information is confidential, and it should be ensured that anyone informed of the trade secret signs a Non-Disclosure Agreement (NDA).
What is the springboard doctrine?
The action for breach of confidence can protect public domain information where one party uses information that they obtain in confidence to springboard themselves above competitors, and benefiting from the breach.
