Patents

Case Note Amersham Pharmacia Biotech AB v Amicon Ltd.

Jane Lambert

24 June 1999 , Updated 14 Apr 2004

This article formerly appeared on the Old Colony House website

In this appeal from Laddie J (Amersham Pharmacia Biotech AB v Amicon Ltd. and others [2000] All ER (D) 1536), the Court of Appeal gave further guidance on the proper construction of patent claims pursuant to art. 69 of the European Patent Convention ("the EPC") as it now stands, rejecting, for the moment at least, any doctrine of infringement by equivalent effect by use of a different mechanism. It also indorsed Laddie J's dicta in Inhale Therapeutic Systems Inc. v Quadrant Healthcare plc [2002] RPC 21 on obviousness mentioned in the case note.

Infringement

S. 60 (1) of the Patents Act 1977 provides that a person infringes a patent for an invention if, but only if, while the patent is in force, he does any one of various things in the United Kingdom in relation to the invention without the consent of the patentee. S.125 (1) further provides that invention for the purposes of the Act shall be taken to be that specified in a claim of the patent specification as interpreted by the description and any drawings contained, except where the context otherwise requires, and the extent of the protection conferred by a patent shall be determined accordingly. This is equivalent to art. 69 of the EPC which provides that the extent of the protection conferred by a European patent shall be determined by the terms of the claims but the description and drawings shall be used to interpret the claims. Art. 69 is to be construed in accordance with a protocol on the interpretation of the article ("the Protocol") to which all contracting states adhere. That provides:

"Article 69 should not be interpreted in the sense that the extent of he protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purposes of resolving an ambiguity found in the claims. Neither should it be interpreted in the sense that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patentee has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties."

In England, the correct approach to construction of claims has been explored in a number of cases of which the most helpful are perhaps Catnic Components Ltd. v Hill & Smith Ltd. [1982] RPC 183, Improver Corporation v Remington Consumer Products Ltd. .[1990] FSR 181, Socété Technique de Pulversateur v Emson Europe Ltd [1993] RPC 513 and Wheatley v Drillsafe Ltd.[2001] RPC 133 In Aldous LJ's words, "the Protocol outlaws what can be termed strict literal and also liberal interpretation using the claims as a guideline. The correct approach is to achieve a position between those extremes."

The Appeal

The patentee appealed on the ground that his lordship had misinterpreted art. 69 of the EPC by taking into account a variant that produced an equivalent effect to that specified. The Court of Appeal rejected that contention and in particular the notion of any doctrine of equivalents in English law:

"I do not believe that the Protocol introduced into our law a doctrine of infringement by equivalent effect by use of a different mechanism. That may be for the future. But at the moment the task of the court is to construe the claim as part of the whole specification. Further the requirements of the Protocol do not mean that an integer can be treated as struck out (Société Technique de Pulverisation STEP v Emson Europe Ltd.)"

Aldous LJ no doubt had the Act to revise the EPC in mind when he referred to what may happen in the future. Art. 69 (1) itself is to be amended simply by the deletion of the words "by the terms of" in the first sentence of the paragraph but a new article is to be added to the Protocol:

"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."

How that will affect English law and, in particular, whether it will introduce anything like the US doctrine of equivalents, is unclear at this time.

Obviousness
In Inhale Laddie J provided useful guidance on the relevance of particular items of prior art for determining whether there had been an inventive step. The Court of Appeal quoted that part of his judgment with approval and applied it to this case. The defendant relied on the supply of one of its own products in 1986 that would have prompted a skilled addressee to do a patent search to discover a valve which would in turn have uncovered an American patent filed in 1900 for a valve used in paper manufacture. Not surprisingly the Court rejected those submissions as hopeless. Applying Laddie J's dicta. Aldous LJ concluded that that patent was so old and so distant from the field of technology covered by the patent in suit that he could not see how the skilled person would add it to the defendant's product.

Comment
In view of the changes likely to result from the amendments to the Protocol this case is likely to endure primarily for the endorsement of Laddie J's guidance of obviousness even though it played no part in the actual decision.
 

 

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