This protection provided by the European Patent is

This essay will critically evaluate the law of patent
claim construction in the context of the Protocol on the interpretation of
Article 69 and the extent to which the Protocol is not concerned with the
rules of construction of claims but with determining the scope of protection.

Article
69 establishes that the language of the patent claims and is the starting point to
ascertain the scope and extent of the patent protection. To that effect, Article
69 should not be understood as a rule that protection provided by the European
Patent is defined by the strict wording and literal meaning given by the
claims. At the same time, it is important to point out, that Article 69 is not
leaving claims with the role of the guidelines. While actual protection
conferred by the patent can be extended widely from what is considered in the
description and drawings. The main point of the article is to find a middle
ground, where claims must be defined as a position between two grounds which
combines a fair level of protection for the patentee as well as giving a
reasonable degree of certainty for the third parties.1

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Article
69 highlights that claims ought to be construed as establishing a balance
between fair protection for the patentee and a reasonable degree of certainty
for third parties.  This is important
not only to establish the scope of the protection of the invention and limiting
infringement by providing clarity and certainty to third parties. First point
is to take a literal approach to the interpretation of the claim to decide
that anything that
is not covered by the document is not protected. Such narrow approach can be
useful for third parties, as it gives a clear indication of what the patent
does and, by omission, does not cover. This way, third parties who wish to use
or build on the existing invention subject to the patent know whether they are
infringing or not. On the other side, such literal approach allows people to
use something slightly different, which technically does not violate the
patent.2

On
the other side of the spectrum, protection of the patentee is achieved by the
opposite approach to the interpretation of the claims of the patent. Such
approach involves a broad interpretation of the claims to ensure that any
possible variation, improvement, adjustment or change to the original invention
that is covered by the claims, ensuring a wider scope of protection. However, a
wide interpretation of a patent increases the range of uncertainty to a
dangerous level, where reasonable notice to the public is not given and it is
hard to understand the boundaries of the patent. Therefore, clarity of third
parties is undermined and the risk of infringement is increased.

Patents
are granted for new, non-obvious product or process inventions that have an
industrial application and which have not been excluded for patentability.3 The main purpose of the patent
system is to allow the owner of an invention a monopoly of usually 20 years to
exploit that invention. This encourages inventors to invest in research and
development in the know that if the invention qualifies for a patent, the
monopoly will allow them to recover their invention. Upon the expiration of the
period of protection granted by the patent, the invention is free to be used by
third parties without risk of infringement.  In other words, the monopoly
conferred to by the patent is the incentive for inventors to continue investing
in research and allow for advances in science, technology etc. 

There
are certain requirements for patentability, as it is important to be sure, that
the patent is given for the invention which can be defined as a
“non-obvious advance in technology”.4 A
patent may be granted to the new invention5,
which involves an inventive step6 and
capable of industrial application7 it
is important that it is not excluded8.

There
is a patent application form that needs to be filed appropriately, and this is
regulated by the UK Intellectual Property Office (IPO). The other way to obtain
a patent within the UK is to apply directly to the European Patent Office, and
the application must be filed under the European Patent Convention.9 Applications made under the EPC and
Patent Cooperation Treaty (PCT), are going through the UK IPO as it is acting
as a receiving body for such procedures. The registration process requires
patented invention to be recorded in a patent document, where all the necessary
details and information must be listed.10 The
first section of the patent must contain the basic details of it – the
inventor, priority claims, the applicant and when it was filled. There must be
a section, with the description of the invention, as it is important to show
and teach the skilled person how to make this product or start the process.
Drawings and tables can be included optionally, as they can contribute to the
description and make it smoother. There must be claims to define the scope of
protection, to set out the technological scope of the monopoly granted.10

There
is a specific reason why a patent must be supported by various types of
documents, as there is a strong relationship between the description in the
specification and the content of the claims. It is required11 that
the description of the patent teaches properly how to put the invention into
effect, this is also known as sufficiency or teaching.12 There
must be no uncertainties in this part, as it is required by the patent law11 that the invention to be taught
“clearly and completely enough to be performed by a person skilled in the
art”13.
Hypothetical “skilled person” is used by the law to answer the
questions whether it is obvious to use the patent14.
It is similar in certain ways with the “reasonable man” test from the
Criminal Law. It requires a hypothetical person, team or a group of people who
are involved in the field of technology of the invention. He must be aware of
all material available in the public domain related to the field, but not
combine ideas from different published sources unless they are cross-related.14

Infringement
occurs if a patented product or process is exploited in the UK without the
consent of the patentee15.
Infringing acts and their nature depend on whether the violation of the patent
is for process or the product, and it is important to separate them according
to the appropriate law.16 As
it was stated above, the Protocol on the interpretation of Article 69 states
that it should not be interpreted by the strict, literal meaning of the wording
used in the claims or be interpreted as a guidelines only, they must be used
for the purpose of resolving any ambiguity.17 The
traditional approach taken by the UK courts when interpreting claims to resolve
patent infringements, is the literal approach, while the purposive approach is
being developed through cases18 and
aimed to achieve a more balanced stance. It is important to point out that
purposive interpretation can be considered as a balanced method if used
properly. From one side, a patentee can draft his claim as wide as necessary,
which will lead to a greater scope of protection. On the other side, if the patentee
fails to draft claim properly, or to draft it too wide, this might cover prior
art and invalidate the claim for want of novelty. As a result, they have only
themselves to blame in such situation, and this brings the balance to the
purposive approach.19

It
was demonstrated in the Catnic Components Ltd v Hill & Smith Ltd 1982 RPC 183 (HL),
that the purposive approach needs further development as it was easily seen by
the “person skilled in the art” that vertical differences are much
easier identified that slightly off vertical. Where the patented product and
its similar variant were used for the same action and almost the same
principle, but using different constructions. The principle established was
used in Improver Corp. v Raymond Industries Ltd 1991 FSR
223, CA (Hong Kong) and as a result, the Improver questions were later renamed
as the Protocol questions. In Improver, the courts formulated three questions
to aid the interpretation of a patent claims and establish infringement:

1-
Does the variant have a material effect on the way the invention works?20

2-
Would this have been obvious at the date of publication of the patent to a
reader skilled in the art?22

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 for the invention?22

These
questions were affirmed in the case of Wheatly v Drillsafe Ltd 2001
RPC 133,142 and proven to be useful in resolving some disputes.21 At the same time, there are certain
problems when applying the Protocol/Improver questions, as they are not fitting
the rapidly developing fields, where highly complex technology may be the
subject matter of the patent. In such cases, a patentee must word their claims
in a way that include the new and yet unheard technology which can be
considered merely possible. This was developed in Kirin-Amgen Inc. v
Hoechst Marion Roussel Ltd 2005 RPC 9, HL and it was stated that the
Protocol questions are not fitting the case, and are merely a guide. It was
agreed, that the principle established in Catnic must be followed in the
questions related to the high-technology field.

Article
69 and its protocol are indeed used by the courts to resolve patent
infringement cases by way of interpretation of the claims in the patent.
However, the claim must be interpreted in context taking in consideration also
the description and drawings.22 On
the other hand, interpretation of the claims could not go so far as adding
features that were not mentioned in the claims. In this case, the patent claims
should be amended to reflect the inventor’s intentions. In contrast, the claims
cannot be considered in isolation. Interpretation of the claims serves to
determine a fair protection by reference of, inter alia, the description and
drawings.

Throughout the
essay, it has been demonstrated that the courts have had some difficulty in
establishing the scope of a patent claim and taken
different approaches to resolve any conflict. The difficulty involves
trying to understand and interpret the language of the claim as the extent of a
claim can seek a wider protection not literally stated in the claim. In the recent
case of Eli Lilly v
Actavis UK 2017 UKSC 48 the UK supreme court
attempted to claridy what infringement may entail.23

The main outcome of
the case, was the new established principle for the
infringement of the claims.

1-       There is infringement if the process or
product is falling within the literal meaning of the patent, and the
interpretation of the person skilled in the art is applied.

2-      If
the infringement of the process or product is not falling within the literal
meaning of the patent, there must be applied a three-step analysis applied. It
is like the existing Improver/Protocol questions but not identical there is
infringement by equivalence.

This judgement evidences a shift towards
the use of less interpretation of the claims, but to seek to clarify the scope
of protection by reading the claims in a more literal approach to identify the
intention of the inventor.  Consequently, the patent applicant is encouraged
to make the claim clearer and elaborate on the how the invention works which
will potentially expand the scope of protection only using language.

It
has been demonstrated that rules of construction of claims are an inherent part
of determining the scope of protection of a patent.  Without a clear and
thorough construction of a claim in a patent that allows the skilled person in
the art how reading the patent in context to make this product or start the
process, the inventive step would not be ascertained.  Equally, the
construction of the claims establishes the scope of the protection sought by
the inventor.  However, as seeing by the recent judgement, the courts
encourage the inventor to expand the explanation of the what is patented and how
it works, to avoid too much interpretation by the courts and ensure clarity for
third parties when reading the patent and therefore, avoid infringing.

Equally,
the ways the courts interpret the claims when a patent is infringed helps
clarify the scope of protection initially sought to ascertain whether
infringement is established and resolve it.  Therefore, it is impossible
to see how the construction of claims and the scope of protection are not
equally addressed in the article 69 and its protocol.

Finally,
from a practical perspective, the importance of a well and clearly drafted
description and the claim is important to establish a broader scope of
protection and clarity to third parties.