IBIL Innovation Law Seminar: Patent Claim Interpretation

Institute of Brand and Innovation Law: Innovation Law Seminar 2010

Patent Claim Interpretation

Wednesday 17 November from 6 - 8.30pm

Speakers include:

• Prof. Dr. Peter Meier-Beck
  Presiding Judge at the German Federal Patent Court 
• Professor Dan Burk
  Chancellor's Professor of Law, University of California, Irvine 
• Dr Matthew Fisher
  UCL Faculty of Laws, Co-Director, UCL IBIL

The chair will be taken by Professor Daniel Alexander QC, UCL and 8 New Square


About this seminar: 

This seminar will examine some of the many issues that surround the interpretation of a patent's claims in Germany, the UK and US.  

Patents operate as a breakwater from competition, enabling control of the supply and use of a certain type of information; information that would otherwise be freely appropriable by all.  They create scarcity where there would naturally be none, marking out a  novel zone of virgin territory that may only be cultivated by the patentee or with their permission.  Due to this effect their scope is of critical importance.

In the UK, as in Germany and the US, the patent's claims are the key to its scope.  They are utilised by the granting Office when considering issues of patentability and by the courts in matters of validity and infringement.  Their breadth is important to the patentee as this defines the extent of their proprietary interest, and to their competitors for the very same reason.

In an ideal world claims would be so clear and unambiguous that no dispute over their meaning would ever arise.  But the world is not ideal; language is, by its very definition, multifaceted and layered with meaning; capable of simile and substitution.  Words are equivocal.  Human beings, themselves far from perfect, draft claims whist attempting to navigate through the treacherous waters bordered by the prior art.  The words that they use to define the invention must be broad enough to prevent unscrupulous copying, yet narrow enough to avoid encroaching on the rocky shore. They must encapsulate an invention that may not be challenged for up to twenty years after the application is filed, at which point the patent should, in the eyes of the law, be as fresh as the day it was penned.

Against these obstacles it seems unfair that the patentee should be bound by the literal meaning of the words used to describe their invention, especially where obvious variants exist.  The words in the claims are, however, all that the public and the patentee's competitors have to inform them of the scope of the monopoly grant; as such, the interpretation that they enjoy must provide a degree of predictability in deference to legal certainty.  It is the balancing of these competing objectives that lies at the centre of the debate over patent claim construction.   

This seminar brings together leading speakers from Germany, the UK and US to consider issues including:

• Article 69 EPC and its Protocol; their form and function;
• The German approach to claim interpretation;
• The Doctrine of Equivalents;
• The US approach to claim construction; and
• The current UK approach to construction.

Programme:

This course is accredited with 1.5 CPD hours by the Law Society of England and Wales. Our course provider reference is IU/UCL. It is also accredited by the Bar Standards Council and constitutes relevant CPD for CIPA Fellows.