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Doctrine of Equivalence in Patents: Legal Insights from AIPPI Seminar, Paris

Highlighting the key points discussed at the AIPPI seminar in Paris on 7th November 2013 regarding patents, infringement under the doctrine of equivalence in Germany, legal provisions, principles, case law, and the interpretation of European Patent Convention. The seminar covered topics such as device designs for tick removal, extent of patent protection, interpretations of Article 69, and the concept of equivalence in patent law.

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Doctrine of Equivalence in Patents: Legal Insights from AIPPI Seminar, Paris

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  1. AIPPI seminar Paris, 7 November 2013 AIPPI seminar Paris, 7 and 8 November 2013 Patents: Infringement under the doctrine of equivalence - Germany - Karsten Koeniger, Harmsen Utescher Karsten Koeniger, Harmsen Utescher 1

  2. AIPPI seminar Paris, 7 November 2013 Patents: Infringement under the doctrine of equivalence - Germany – 1. 2. 3. Legal provisions Principles and case law Defences Karsten Koeniger, Harmsen Utescher 2

  3. AIPPI seminar Paris, 7 November 2013 Lady Remington Liberty Karsten Koeniger, Harmsen Utescher 3

  4. AIPPI seminar Paris, 7 November 2013 „Epilady“ (ca. 1991) Apparatus for hair removal (Dispositif d‘epilation) Karsten Koeniger, Harmsen Utescher 4

  5. AIPPI seminar Paris, 7 November 2013 Device for removing a tick (Dispositif pour enlever une tique) Düsseldorf District Court, decision of 15 September 2011 Karsten Koeniger, Harmsen Utescher 5

  6. AIPPI seminar Paris, 7 November 2013 EP 1 424 917: Device for removing a tick (Dispositif pour enlever une tique) a b A device being designed with a slit (36, 54, 50), for use in removing a tick …, characterised in that the device is adapted for keeping in wallet, pocket, bag or similar place, said device being designed as a credit card in size, said card is made of a relatively stiff material …, and said card has a corner area being designed with the slit (36, 54, 50) … . c d e f Karsten Koeniger, Harmsen Utescher 6

  7. AIPPI seminar Paris, 7 November 2013 Alleged infringing device (not absolutely exactly) Karsten Koeniger, Harmsen Utescher 7

  8. AIPPI seminar Paris, 7 November 2013 European Patent Convention 2000 Article 2 (2) The European patent shall… have the effect of and be subject to the same conditions as a national patent …, unless this Convention provides otherwise. Karsten Koeniger, Harmsen Utescher 8

  9. AIPPI seminar Paris, 7 November 2013 German national patents German courts: no difference between national and European patents regarding the determination of the extent of protection. Karsten Koeniger, Harmsen Utescher 9

  10. AIPPI seminar Paris, 7 November 2013 European Patent Convention 2000 Article 69 (1)The extent of the protection conferred by a European patent … shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims. = § 14 German Patent Act Karsten Koeniger, Harmsen Utescher 10

  11. AIPPI seminar Paris, 7 November 2013 European Patent Convention 2000 Protocol on the Interpretation of Article 69 Article 1 General principles Article 69 should not be interpreted as meaning 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 purpose of resolving an ambiguity found in the claims. Nor should it be taken to mean 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 patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties. Karsten Koeniger, Harmsen Utescher 11

  12. AIPPI seminar Paris, 7 November 2013 European Patent Convention 2000 Protocol on the Interpretation of Article 69 Article 2 Equivalents 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. Karsten Koeniger, Harmsen Utescher 12

  13. AIPPI seminar Paris, 7 November 2013 EP 1 424 917 Drawing Karsten Koeniger, Harmsen Utescher 13

  14. AIPPI seminar Paris, 7 November 2013 EP 1 424 917 Description [0011] The device according to the invention is so designed that … the card e.g. in a corner area is made with a… slit … . [0017] The disclosed slit … may alternatively, or as a supplement, also be provided at a short side of the card. Karsten Koeniger, Harmsen Utescher 14

  15. AIPPI seminar Paris, 7 November 2013 EP 1 424 917: State of the art Karsten Koeniger, Harmsen Utescher 15

  16. AIPPI seminar Paris, 7 November 2013 German courts: Two types of infringement „Literal“ (wortsinngemäß) equivalent (äquivalent) Karsten Koeniger, Harmsen Utescher 16

  17. AIPPI seminar Paris, 7 November 2013 Extent of Protection „Literal“ (wortsinngemäß) equivalent Karsten Koeniger, Harmsen Utescher 17

  18. AIPPI seminar Paris, 7 November 2013 „Literal“ infringement Not just the literalistic wording of the claim („Wortlaut“), but the semantic content to the person skilled in the art („Wortsinn“), The patent specification provides its own lexicon. Karsten Koeniger, Harmsen Utescher 18

  19. AIPPI seminar Paris, 7 November 2013 Equivalence: 3 step test since „Schneidmesser“-decisions of the Federal Court of Justice in 2002 1. Same effect (Gleichwirkung) 2. Obviousness (Naheliegen) 3. Equal value (Gleichwertigkeit) Karsten Koeniger, Harmsen Utescher 19

  20. AIPPI seminar Paris, 7 November 2013 First step: same effect (Gleichwirkung) Does the modified embodiment solve the problem underlying the invention with means that have objectively the same technical effect? Karsten Koeniger, Harmsen Utescher 20

  21. AIPPI seminar Paris, 7 November 2013 First step: same effect (Gleichwirkung) Alleged infringing device „Literal“ version Karsten Koeniger, Harmsen Utescher 21

  22. AIPPI seminar Paris, 7 November 2013 First step: same effect (Gleichwirkung) … same effect only, if the modified solution not only essentially achieves the overall effect of the invention, but also achieves the specific effect intended by the not literally realized feature. Where minimum requirements as to the quantity or quality of a certain effect arise from the interpretation of the patent claim, then modified means not satisfying those requirements cannot be considered to achieve the same technical effect under the aspect of an inferior embodiment …. German Federal Court of Justice, decision of 17 July 2012 „Pallet Container III“ („Pallettenbehälter III“) Karsten Koeniger, Harmsen Utescher 22

  23. AIPPI seminar Paris, 7 November 2013 Alleged infringing device „Literal“ version Karsten Koeniger, Harmsen Utescher 23

  24. AIPPI seminar Paris, 7 November 2013 Second step: Obviousness (Naheliegen) Was the person skilled in the art, using his specialist knowledge, able to find the variant at the priority date as having the same effect? Karsten Koeniger, Harmsen Utescher 24

  25. AIPPI seminar Paris, 7 November 2013 Second step: Obviousness (Naheliegen) At the priority date. But: “There may be equivalent patent infringement if the alternative means as such was not known at the priority date, because it was not made available until through the further advances in technical development.“ (Düsseldorf High Court, InstGE 10, 198 - "Zeitversetztes Fernsehen") Karsten Koeniger, Harmsen Utescher 25

  26. AIPPI seminar Paris, 7 November 2013 Alleged infringing device „Literal“ version Karsten Koeniger, Harmsen Utescher 26

  27. AIPPI seminar Paris, 7 November 2013 Third step: Equal value (Gleichwertigkeit) Are the considerations that the person skilled in the art had to apply oriented to the technical teaching of the patent claim in such a way that the person skilled in the art took the variant into account as being an equal value solution? Karsten Koeniger, Harmsen Utescher 27

  28. AIPPI seminar Paris, 7 November 2013 Third step: Equal value (Gleichwertigkeit) „The aforementioned responsibility of the patent holder to ensure that what he desires protection for is set out in the features of the patent claim therefore restricts the protection to what is to be related to the semantic content of its patent claims also in such cases in which the holder – for whatever reasons – has missed this opportunity and the patent, if considered objectively, remains less than a more extensive technical content of the invention.“ Federal Court of Justice, decision of 12 March 2002 „Schneidmesser II“ Karsten Koeniger, Harmsen Utescher 28

  29. AIPPI seminar Paris, 7 November 2013 Third step: Equal value (Gleichwertigkeit) If the description discloses a number of ways in which a specific technical effect can be achieved, but only one of these ways is included in the patent claim, the use of one of the other ways does not, as a rule, constitute an infringement of the patent with equivalent means. Federal Court of Justice, decision of 10 May 2011 “Occlusion Device” Karsten Koeniger, Harmsen Utescher 29

  30. AIPPI seminar Paris, 7 November 2013 Alleged infringing device „Literal“ version Karsten Koeniger, Harmsen Utescher 30

  31. AIPPI seminar Paris, 7 November 2013 EP 1 424 917 Description [0011] The device according to the invention is so designed that … the card e.g. in a corner area is made with a mainly acutely angled slit or cut … . [0017] The disclosed slit … may alternatively, or as a supplement, also be provided at a short side of the card. Karsten Koeniger, Harmsen Utescher 31

  32. AIPPI seminar Paris, 7 November 2013 Third step: Equal value (Gleichwertigkeit) If the description discloses a number of ways in which a specific technical effect can be achieved, but only one of these ways is included in the patent claim, an infringement with equivalent means can only be assumed if the modified solution distinguishes from the solution that is shown in the description, but not in the patent claim, in a similar way like the “literal solution”. Federal Court of Justice, decision of 13 September 2011 “Diglycidyl Compounds” (Diglycidverbindung) Karsten Koeniger, Harmsen Utescher 32

  33. AIPPI seminar Paris, 7 November 2013 Equivalence: Defences - „Formstein“-objection - Prosecution history? Karsten Koeniger, Harmsen Utescher 33

  34. AIPPI seminar Paris, 7 November 2013 Federal Court of Justice, decision of 29 April 1986 „Formstein“ Formstein am Straßenrand (pierre moulée à bas-côté) Karsten Koeniger, Harmsen Utescher 34

  35. AIPPI seminar Paris, 7 November 2013 Defences: „Formstein“-objection Does the modified embodiment, having regard to the state of the art, lack novelty, or is it obvious to a person skilled in the art? The Patent Office only examines whether the „literal“ subject matter of the patent is patentable. The same is true for patent opposition and nullity proceedings. Therefore the „Formstein“- examination has to be carried out in infringement proceedings. Karsten Koeniger, Harmsen Utescher 35

  36. AIPPI seminar Paris, 7 November 2013 EP 1 424 917: State of the art Karsten Koeniger, Harmsen Utescher 36

  37. AIPPI seminar Paris, 7 November 2013 Defences: Prosecution history? In the past, the Federal Court of Justice: the prosecution history may not to be taken into account when construing a patent unless events of the prosecution history show up in the patent specification as granted or amended after grant (see decision of 12 March 2002 ”plastic pipe part”; also see the report of the German national group of AIPPI regarding Q229). In its “Occlusion Device” decision of 10 May 2011 , the Federal Court of Justice had expressly left open the question if the publication of the application could be taking into account when construing a patent. Karsten Koeniger, Harmsen Utescher 37

  38. AIPPI seminar Paris, 7 November 2013 Defences: Prosecution history Development? Federal Court of Justice, decision of 17 July 2012 “Polymer Foam” (nullity proceedings): A comparison of the patent specification with the publication of the patent application could, at the most, come into consideration if there are contradictions between the description and the claims and such a comparison can contribute to the clarification of the scope of a limitation made during the grant procedure or in opposition proceedings. Karsten Koeniger, Harmsen Utescher 38

  39. AIPPI seminar Paris, 7 November 2013 Merci beaucoup! Karsten Koeniger, Harmsen Utescher 39

  40. AIPPI seminar Paris, 7 November 2013 Dr. Karsten Königer, Dipl.-Phys. Rechtsanwalt / Attorney at Law Harmsen Utescher Neuer Wall 80 20354 Hamburg Germany Phone +49 40 376 90 90 Fax +49 40 376 90 999 Karsten.Koeniger@harmsen.utescher.com www.harmsen.utescher.com Karsten Koeniger, Harmsen Utescher 40

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