Patent Claim Interpretation: The Impact of the Protocol on Interpretation
| Date | 01 July 1991 |
| DOI | http://doi.org/10.1111/j.1468-2230.1991.tb00902.x |
| Published date | 01 July 1991 |
| Author | Brad Sherman |
Patent Claim Interpretation: The Impact
of
the
Protocol on Interpretation
Brad
Sherman
*
Introduction
The European Patent Convention (EPC), signed
in
Munich
in
1973,
marked an
important turning point
in
the patent laws of the various contracting states.' While
the main aim of the
EPC
was
to
provide an efficient mechanism for the grant of
European patents,*
in
order to achieve
this
end it
was
also necessary to ensure that
the substantive patent laws of the contracting states were harmonised. Much of the
groundwork for the task of harmonisation had, however, already been laid by the
1963
Strasbourg C~nvention.~ For our purposes, one of the most important deci-
sions made at the Strasbourg Convention was the agreement that the role of the
patent claims was
to
demarcate the scope of the m~nopoly.~ This provision was
adopted by the drafters of the EPC and is now to be found
in
Article
69
of the
EPCs5 One of the problems facing the drafters of the EPC, however, was the fear
that the harmonisation of patent laws would be hindered by the idiosyncratic
interpretations of the national courts.
In
part,
it
was this fear of divergency of
interpretation that led the drafters
of
the EPC
to
take the unprecedented step
of
attaching to Article
69
the Protocol on Interpretation. This is,
in
effect, an attempt
to
ensure uniformity of interpretation by stipulating the permissible readings
of
the
patent claims.
The Protocol on Interpretation reads:
Article
69
should
not
be interpreted
in
the
sense that the extent
of
the 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 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
*Lccturcr
in
Law, London School of Economics.
I
would like
to
thank Professor
W.R.
Cornish and
W.
Rothnie for their helpful conimcnts.
Having been set up by the Council of Europc rather than thc Council for
thc
European Economic
Community,
the
EPC is open
to
Europcan countries bcyond the members
of
the
EEC. The couiitrics
which hitvc ratificd or acceded to the EPC arc: Austria, Bclgiuni, Francc, Greecc, Italy, Licchtcnstcin.
l.uxcinbourg, Ncthcrlands, Spain, Sweden, Switzerland,
West
Germany and the
UK.
Dcnmark,
lrclatid
and Portugal
arc
expected to join shortly.
The EPC does not establish a single Europc wide patcnt,
so
much as a butidlc of national patents.
Tlic chief advantage of
thc
EPC is that because
it
provides for a centralised search and exaniination
process,
it
enablcs patentees to lodge one application for as many of
the
EPC countrics as they choose.
thus reducing
thc
amount of time spent on administration.
The Strasbourg Convention on the Unification of Certain Points of Substantivc Law on Pntcnts tor
Inventions (Council of Europe,
1963).
On
this see E. Armitagc, 'Origins of Rclcvant Provisions of thc Munich and Luxembourg Conventions'
in
J.
Kcmp (ed)
Paretit
Claitti
Dmjittg
arid
frircrpretatioti
(1983).
Section
125(1)
Patents Act
1977,
which is thc same
as
Article
69
EPC states: 'For the purposc of
this Act
an
invention for a patent for which an application has been made
or
for which
a
patent has
been grantcd shall, unless the context othcrwisc requires, be
takcii
to be
that
specificd
in
the claim
of the specification of the application or patent,
tis
the
case
may be,
as
interprcted by thc description
and
any
drawings contained
in
that specification, and the cxtctit
of
the
protection conferred
by
a
patent
or application for a patcnt
sliall
be determined accordingly.' Section
125(3)
Patents Act
1977.
cxprcssly
incorporutcs thc Protocol
on
thc Intcrpretation
of
Article
69
into
UK
law.
Tltc
Mdcrti
LIIV
R~v~~Iv
54:4
July
1991
0026-7961
499
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