What if a competitor has a patent that protects one thing on paper but in reality is used much more broadly to tackle infringements by others? Until recently this was something that could happen in Europe, but that has now changed thanks to a landmark case by patent attorneys Marcel Kortekaas and Thomas Remmerswaal.What exactly has changed?
The highest legal body of the European Patent Office, the Enlarged Board of Appeal, has ruled that when assessing a patent, the full picture should always be taken into account: not just the literal text of the claims, but also the description and accompanying drawings. That may sound technical, but it makes a world of difference.
The Angora cat paradox
For years, European patents were able to behave like Angora cats. These cats wriggle through a narrow cat flap and once inside they suddenly have a substantial amount of fur. Something similar can happen in the case of patents. They slip through narrow granting procedures with narrow claims, only to increase their protection considerably with broader definitions in the descriptions. They can make themselves small for the grant of the patent and big for infringement proceedings. This is useful for the patent holder, but of course not really fair.
Trying to claim more protection
We use the colour of a product to explain claims and descriptions in more detail. A patent consists of claims (the thing you want to protect), a description (the elaboration of the claims) and figures (drawings). A claim may state that the product you are protecting is black. During the grant procedure an assessment is made of whether black products are novel and inventive. Suppose as a competitor you find an older document that describes dark grey. Then black will still be novel, even if it looks a lot like dark grey.
However, if the description then states that black also includes dark grey, dark blue and dark purple the patentee will subsequently be able by law to tackle dark blue products in infringement proceedings before the national court or the new Unified Patent Court (UPC) as well. After all, the patent system (rightly) leaves room for patent holders to leave the protection slightly broader so that competitors cannot easily bypass the patent.
However, before Marcel and Thomas's case this did result in the terms dark grey, dark blue and dark purple occasionally being ignored when the patent was being assessed, even though the patent did protect them and existed before the patent application. The patent got approval for "black" but got protection for much more.
New case law
The Enlarged Board of Appeal put a stop to that last month. They ruled that when assessing novelty and inventive step, the description and figures should always be taken into account and not just the literal text of the claims. That's fair, because if you assess a patent at different times the criteria should be the same. It should not be possible to use easy criteria to get your patent granted and then use strict criteria to tackle infringers.
For the first time it has been ruled that the description and figures must always be taken into account, including when a patent is granted. This is an important outcome, because from now on this case will be referred to in similar situations. The ruling strengthens legal certainty for third parties in all EPC member states throughout the life of a patent.
The Diamond Standard
The ruling has already been jokingly referred to as the "Diamond Standard" at EP&C. The superlative of the "Gold Standard" from previous case law, but also symbolic of its great strength and brilliance. For Marcel Kortekaas this is the finest case of his long career. For Thomas Remmerswaal, who still has decades ahead of him, it is a promising start!
