INFORMATION FROM THE CONTRACTING / EXTENSION STATES
GB United Kingdom
Decision of the House of Lords of 21 October 20041
Headword: „Erythropoietin/Kirin-Amgen Inc v. TKT "
UK Patents Act Section 1(1)(a)
Keyword: „Interpretation of patent claims - doctrine of equivalence - Protocol questions" - "Product-by-process claims"
I. a) "Purposive construction" does not mean that one is extending or going beyond the definition of the technical matter for which the patentee seeks protection in the claims. The question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean.
b) The Catnic principle of construction is precisely in accordance with the Protocol on Interpretation of Article 69 EPC as it is intended to give the patentee the full extent, but not more than the full extent, of the monopoly which a reasonable person skilled in the art, reading the claims in context, would think he was intending to claim.
c) The invention should normally be taken as having been claimed at the same level of generality as that at which it is defined in the claims. It would be unusual for the person skilled in the art to understand a specification to be claiming an invention at a higher level of generality than that chosen by the patentee.
d) When speaking of the "Catnic principle" it is important to distinguish between, on the one hand, the principle of purposive construction which gives effect to the requirements of the Protocol on Interpretation of Article 69 EPC, and on the other hand, the guidelines for applying that principle to equivalents, which are encapsulated in the so-called Protocol questions.2 The former is the bedrock of patent construction. The latter are only guidelines, more useful in some cases than in others.
e) The notion of strict compliance with the conventional meanings of words or phrases sits most comfortably with the use of figures, measurements, angles and the like, when the question is whether they allow for some degree of tolerance or approximation. In such cases, the contrast with strict compliance is approximation and not the rather pretentious figures of speech mentioned in the Protocol questions. New technology is another situation in which the Protocol questions may be unhelpful. On the other hand, if the claim can properly be construed in a way which is sufficiently general to include the new technology, the Protocol questions tend to answer themselves.
II. a) It used to be thought that despite Article 69 EPC and the Protocol on Interpretation of Article 69 , there remained serious differences between the approaches to claim construction of the United Kingdom on the one hand and Germany and the Netherlands on the other. However, it seems that this is not true any longer. The highest courts in both Germany (see BGH GRUR 1989, 903, 904 - "Batteriekastenschnur") and the Netherlands (see Hoge Raad, Ciba-Geigy/Oté Optics, Nederlandse Jurisprudentie 1995, 39) have said that the effect of Article 69 is to give the claims what the European Patent Office has called a "central role" (see G 6/88 - "BAYER/Plant growth regulating agent"  EPOR 257, 261; OJ EPO 1990, 114, 118-119). The Bundesgerichtshof (BGH, German Federal Supreme Court) said that the claims are no longer merely a point of departure but the decisive basis ("maßgebliche Grundlage") for determining the extent of protection.
b) Patent judges in Germany and the United Kingdom have declared that they regard the decisions of other countries on the extent of protection afforded by Article 69 EPC as important contributions to the jurisprudence of the own country.
c) The German courts have their own guidelines for dealing with equivalents, which have some resemblance to the Protocol questions. It seems that also the German courts are approaching the question of equivalents with a view to answering the question what a person skilled in the art would have thought the patentee was using the language of the claim to mean (cf. above, I.a)).
III. It is important that the United Kingdom should apply the same law as the EPO and the other member states when deciding what counts as new for the purposes of the EPC. The first requirement for allowing a product-by-process claim is that the product must be new; a difference in the method of manufacturing an identical product does not make it new. It is only if the product is different but the difference cannot in practice be satisfactorily defined by reference to its composition, etc. that a definition of the product by its process of manufacture is allowed.
1 Editors' headnotes to the opinion of Lord Hoffmann for the judgement in the cause Kirin-Amgen Inc and others (Appellants) v. Hoechst Marion Roussel Limited and others (Respondents) and Kirin-Amgen Inc and others (Respondents) v. Hoechst Marion Roussel Limited and others (Appellants) (Conjoined Appeals). The complete text of the decision is available under http://www.parliament.the-stationery-office.co.uk/pa/ld200304/ldjudgmt/jd041021/kirin-1.htm.
2 In Improver Corporation v Remington Consumer Products Ltd  FSR 181, 189 Lord Hoffmann summarised these guidelines as follows:
"If the issue was whether a feature embodied in an alleged infringement which fell outside the primary, literal or acontextual meaning of a descriptive word or phrase in the claim ("a variant") was nevertheless within its language as properly interpreted, the court should ask itself the following three 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 (ie 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.
On the other hand, a negative answer to the last question would lead to the conclusion that the patentee was intending the word or phrase to have not a literal but a figurative meaning (the figure being a form of synecdoche or metonymy) denoting a class of things which include the variant and the literal meaning, the latter being perhaps the most perfect, best-known or striking example of the class."
In Wheatly v Drillsafe Ltd  RPC 133, 142, the Court of Appeal dubbed these questions "the Protocol questions".