Intellectual Property and Sustainable Development

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Intellectual Property and Sustainable Development

• Dr Peter Meier-BeckPresiding Judge,
  Bundesgerichtshof (Federal Court of
  Justice)Honorary Professor, Heinrich-Heine-Unive
  rsität Düsseldorf

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Topics

• New Patent Law for New Technologies?
• The Concept of Technical Invention
• The Concept of Disclosure
• Scope of Patent Protection
• Conclusions

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I. New Patent Law for New Technologies?
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New Concept of Patent Law?

• According to European and German patent law,
  there are only two criteria which an invention
  has to meet for patent protection
• patentability of its subject-matter
• sufficient disclosure.
• Patentable is
• an invention (i.e. a technical teaching) which
• is new,
• involves an inventive step, and
• is susceptible of industrial application.

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New Concept of Patent Law?

• To promote sustainable development
• facilitating access to patent protection or
• impeding patent protection?
• The purpose of patent protection
• promoting technical innovation and progress by
  awarding the innovator
• in a way that does not harm competition and
  provides further incentives for further
  innovations.

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New Concept of Patent Law?

• Does the old concept fit?
• More patents versus more free competition?
• Patent Law versus Competition Law?
• Patent Law as a means of controlling competition

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New Concept of Patent Law?

• What competition controlling function of patent
  law does mean
• Defining the legal instruments in accordance with
  that function
• What competition controlling function of patent
  law does not mean
• Applying the legal instruments in accordance with
  that function
• Granting a patent if the invention represents a
  valuable contribution to technical, economic, and
  social advance.

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II. The Concept of Technical Invention
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Invention

• According to Art. 52(2) EPC the following in
  particular shall not be regarded as inventions
  within the meaning of Art. 52(1) EPC
• discoveries, scientific theories and mathematical
  methods
• aesthetic creations
• schemes, rules and methods for performing mental
  acts, playing games or doing business, and
  programs for computers
• presentations of information.

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Invention

• Art. 52(2) EPC shall exclude the patentability of
  the subject-matter or activities referred to
  therein only to the extent to which a European
  patent application relates to such
  subject-matter or activities as such.
• The provision does not define which
  subject-matters are not "patent eligible".

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Invention

• A computer implemented invention relates to a
  technical teaching if the invention is embedded
  in a technical device or process.
• Although relating to a technical teaching, a
  computer programme shall not be regarded as an
  invention if no specific technical problem is
  solved by technical means (Art. 52(2c) EPC).

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Invention

• BGH, 22 April 2010 Xa ZB 20/08, GRUR 2010, 613
• Dynamische Dokumentengenerierung (Method for
• Dynamic Document Generation)
• A technical problem is solved by technical means
  if
• a computer program is determined by technical
  facts outside the computer which runs the program
  (e.g. Anti-Lock Braking System) or
• the structure of the computer program is
  determined by technical limitations of the
  computer itself (e.g. poor storage capacity).

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Novelty

• Novelty requires a new technical teaching.
• A discovery as such does not establish a new
  technical teaching.
• But an invention may be based on the discovery of
  a natural (biological or physical) mechanism.
• The discovery must not be disregarded because it
  is not "patent eligible".
• The application of the discovery as such may be
  obvious or a state of the art method.

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Novelty

• BGH, 9 June 2011 X ZR 68/08, GRUR 2011, 999
  Memantin (Memantine)
• The discovery of the function of an active agent
  which serves as an antagonist against a
  pathologic status (in this case excessive influx
  of calcium ions via N-methyl-D-aspartate receptor
  channels), linked to a certain disease
  (Alzheimer's disease), cannot establish a new
  technical teaching if treatment of patients
  suffering from said disease for abatement of
  symptoms was known in prior art and neither a new
  dosage regime is taught nor a group of patients
  so far not treated with the agent is disclosed to
  be responsive.

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Novelty

• An invention shall be considered to be new if it
  does not form part of the state of the art (Art.
  54(1) EPC).
• The state of the art shall be held to comprise
  everything made available to the public by means
  of a written or oral description, by use, or in
  any other way, before the date of filing of the
  European patent application (Art. 54(2) EPC).

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Novelty

• Paragraphs 2 and 3 shall not exclude the
  patentability of any substance or composition,
  comprised in the state of the art, for use in a
  method referred to in Article 53(c), provided
  that its use for any such method is not comprised
  in the state of the art (Art. 54(4) EPC).

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Novelty

• Paragraphs 2 and 3 shall also not exclude the
  patentability of any substance or composition
  referred to in paragraph 4 for any specific use
  in a method referred to in Article 53(c),
  provided that such use is not comprised in the
  state of the art (Art. 54(5) EPC).

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Novelty

• EBA-EPO, 19 February 2010 G 2/08, O.J. EPO
  2010,
• 456 Dosage regime/ABBOTT RESPIRATORY
• Where it is already known to use a medicament to
  treat an illness, Article 54(5) EPC does not
  exclude that this medicament be patented for use
  in a different treatment by therapy of the same
  illness.
• Such patenting is also not excluded where a
  dosage regime is the only feature claimed which
  is not comprised in the state of the art.

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Novelty

• Caveat ever-greening patents.
• But no specific provisions necessary or even
  useful to avoid ever-greening.

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Inventive Step

• Patentability also requires an inventive step.
  But
• What must be examined is not the inventive step
  but obviousness. If there is no evidence for
  obviousness an invention shall be considered as
  involving an inventive step.

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Inventive Step

• The ability of a skilled person to find the
  solution to the problem underlying the invention
  is a necessary but not sufficient condition of
  obviousness.
• What is decisive is whether the inventor's
  considerations were suggested or motivated by
  prior art and his or her general knowledge (cf.
  US TSM test).

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Inventive Step

• BGH, 30 April 2009 Xa ZR 92/05, 182 BGHZ 1
  GRUR 2009, 746 Betrieb einer Sicherheitseinricht
  ung (Operating a Safety Device)
• A solution of a technical problem which breaks
  new ground generally cannot be considered to be
  obvious unless there were some hints, suggestion,
  or motivation by prior art for breaking that
  ground.

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Inventive Step

• Suggestion cannot be substituted by the mere
  absence of obstacles.
• But An explicit pointer to the solution in a
  piece of prior art is not necessary. Implicit
  hints may be sufficient.
• The assumption that the addressed skilled person
  would have consulted other experts of different
  skills has also to be justified.

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Inventive Step

• BGH, 20 December 2011 - X ZB 6/10, GRUR 2012, 378
  
• Installiereinrichtung II (Installation Means
  II)
• It depends on the individual case and all of its
  relevant facts to which extent and detail the
  skilled person needs suggestions by prior art in
  order to advance a known technical concept.
• Apart from explicit pointers characteristic
  features of the concerned field of technology,
  education and general knowledge of persons
  skilled in the art, best practice, construction
  or application needs, and even non-technical
  demands may suggest further development.

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Inventive Step

• BGH, 22 November 2011 - X ZR 58/10, GRUR 2012,
  261
• E-Mail via SMS
• A skilled person endeavouring to improve a detail
  of data structures as defined in an international
  standard may be motivated to solve the technical
  problem by a mechanism which is part of the tools
  offered by the standard itself.
• If the standard offers a manageable number of
  possible solution to the problem, each of them
  having specific advantages and disadvantages,
  each approach may be obvious to try.

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Inventive Step

• BGH, 15 May 2012 X ZR 98/09, GRUR 2012, 803
• Calcipotriol-Monohydrat (Calcipotriol
  Monohydrate)
• The court assessing as to whether prior art
  suggested a skilled person to apply a known
  scheme to a known subject matter may consider to
  which extent the skilled person could reasonably
  expect to succeed this way in solving the
  technical problem.

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Inventive Step

• It is the technical teaching instead of the
  product that is to be examined for obviousness.

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Inventive Step

• BGH, 24 July 2012 X ZR 126/09, GRUR 2012, 1130
  Leflunomid (Leflunomide)
• A combination of two active agents (in this case
  leflunomide und teriflunomide) was obvious, if a
  person skilled in the art who had made a
  mono-preparation (with the active agent
  leflunomide) in accordance with a method that,
  having regard to prior art, was obvious for its
  part had gained a product which had metabolised
  to the combination of both agents in the course
  of usual and tolerable shelf live.

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Inventive Step

• Non-technical presetting may influence the
  technical problem.
• This is of special importance when inventiveness
  of computer implemented inventions is to be
  considered.

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Inventive Step

• BGH, 30 July 2009 Xa ZR 22/06, GRUR 2010, 44
• Dreinahtschlauchfolienbeutel (Triple-Seam Tubular
  
• Film Pouch)
• Non-technical objectives achieved by the
  invention are not part of the solution but have
  to be considered when the technical problem
  underlying the invention is defined.

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Inventive Step

• BGH, 26 October 2010 X ZR 47/07, GRUR 2011, 125
  
• Wiedergabe topografischer Informationen
• (Presentation of Topographic Information)
• When examining inventive step, the court shall
  consider only those features of the invention
  which determine or at least influence the
  solution of the technical problem by technical
  means.
• Selection of a (central) perspective appropriate
  for presenting position-related topographic
  information to a car driver for navigation
  purposes is a non-technical presetting which does
  not contribute to the technical solution.

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Inventive Step

• BGH, 23 April 2013 X ZR 27/12, GRUR 2013, 909
  
• Fahrzeugnavigationssystem (Vehicle Navigation
• System)
• A feature of a navigation system patent according
  to which certain details (i.e. street names) are,
  under certain conditions, included in the voice
  output of the navigation instructions relates to
  the content of the visually or audibly
  represented information.
• Therefore the court when examining obviousness of
  the technical teaching of the patent shall not
  take into account the respective feature.

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III. The Concept of Disclosure
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Disclosure

• The European patent application shall disclose
  the invention in a manner sufficiently clear and
  complete for it to be carried out by a person
  skilled in the art (Article 83 European Patent
  Convention).

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Disclosure

• The disclosure of a document is its overall
  content, as read and understood by a person
  skilled in the art.
• What is disclosed by a document must always be
  determined in the same way, irrespective of the
  legal context (i.e. examination of novelty,
  priority right, enablement etc.).

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Disclosure

• The disclosure has to be direct and unambiguous.
• Subject-matter which a skilled person is enabled
  to deduce from the application by his or her
  general knowledge is not directly and
  unambiguously disclosed (BGH, 22 December 2009
  X ZR 27/06, GRUR 2010, 509 Hubgliedertor I).

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Disclosure

• BGH, 16 December 2008 X ZR 89/07, 179 BGHZ 168
  
• GRUR 2009, 382 Olanzapin (Olanzapine)
• The court has to identify the overall content of
  a prior art document in order to determine
  whether the document is novelty-destroying. What
  is decisive is the technical information
  disclosed to the skilled person.
• With regard to chemical compounds,
  novelty-destroying anticipation requires direct
  and clear disclosure of the individual compound
  in question.

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Disclosure

• BGH, 16 December 2008 X ZR 89/07, 179 BGHZ 168
  
• GRUR 2009, 382 Olanzapin (Olanzapine)
• The ability of a skilled person to make a greater
  or lesser number of compounds covered by a
  disclosed general formula does not, for the
  purpose of anticipation, equate to or substitute
  a specific disclosure of individual compounds.

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Extent of disclosure

• Albeit the identical general concept of
  disclosure, relevant subject-matter and necessary
  extent of disclosure are different.
• The applicant is entitled to claim everything
  that he or she has disclosed to be the invention
  or one of its embodiments.
• The applicant may also be entitled to
  intermediate generalisations.

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Extent of disclosure

• A feature of a device is, as necessary directly
  and unambiguously, disclosed as a feature of the
  invention if a skilled person, having regard to
  the overall content of the patent application,
  considers a device comprising that feature to be
  a feasible embodiment of the invention as claimed.

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Extent of disclosure

• BGH, 17 July 2012 X ZR 117/11, 194 BGHZ 107
• GRUR 2012, 1124 Polymerschaum (Polymer Foam)
• If different features of an embodiment of the
  invention independently as well as altogether
  serve the technical effect of the invention the
  patentee may amend the claim by adding a single
  feature or all of them (cf. BGH, 23 January 1990
  X ZR 9/89, 110 BGHZ 123 126 Spleißkammer
  Splicing Chamber).

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Extent of disclosure

• BGH, 17 July 2012 X ZR 117/11, 194 BGHZ 107
• GRUR 2012, 1124 Polymerschaum (Polymer Foam)
• The claimed combination must represent a
  technical teaching that can be derived from the
  application as a practical embodiment of the
  invention (BGH, 11 September 2001 X ZB 18/00,
  GRUR 2002, 49 Drehmomentübertragungseinrichtung
  Torque Transmission Device).

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Extent of disclosure

• BGH, 17 July 2012 X ZR 117/11, 194 BGHZ 107
• GRUR 2012, 1124 Polymerschaum (Polymer Foam)
• If the patentee were prevented from
  generalizing means that are useful to achieve a
  disclosed effect legitimate exhaustion of the
  full content of the application as filed would be
  obstructed.

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Extent of disclosure

• Reach of disclosure and extent of patent claims
  need not be identical.
• But there must be a fair balance between the
  disclosure and the breadth of the claims.
• The claims may go beyond the disclosed
  embodiments of the invention but must not go
  beyond the disclosed invention.

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Extent of disclosure

• BGH, 13 July 2010 Xa ZR 126/07, GRUR 2010,
• 916 Klammernahtgerät (Stapler)
• An invention is disclosed sufficiently clear and
  complete for it to be carried out when the
  information contained in the patent application
  provide for so much technical information that a
  skilled person, using his or her professional
  knowledge and skills, is enabled to successfully
  carry out the invention. It is not necessary that
  at least one practically usable embodiment is
  disclosed as such directly and unambiguously.

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Extent of disclosure

• BGH, 3 May 2001 X ZR 168/97, 147 BGHZ 306
• GRUR 2001, 813 Taxol
• A patent for a chemical synthesis method may
  claim a certain reaction in a generalized way
  (e.g. as esterification) even if known ways to
  carry out this reaction fail as long as at least
  one specific way to carry out the reaction is
  reproducibly disclosed. It does not matter
  whether other ways to carry out the reaction are
  also available to the skilled person.

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Extent of disclosure

• BGH, 25 February 2010 Xa ZR 100/05, 184 BGHZ
  300
• GRUR 2010, 414 Thermoplastische Zusammen-
• setzung (Thermoplastic composition)
• The patent may lack enabling disclosure if the
  patent-protected subject matter is generalized in
  the claim, by open range data concerning physical
  properties, beyond those solutions of the
  technical problem that have been made available
  to the skilled person so that the patent
  protection exceeds the invention's contribution
  to the state of the art.

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IV. Scope of Protection
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Scope of Protection

• 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
  (Art. 69 EPC).

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Scope of Protection

• (Article 69) is to be interpreted as defining a
  position which combines a fair protection for
  the patent proprietor with a reasonable degree of
  legal certainty for third parties (Art. 1 3rd
  sentence of the Protocol on the interpretation of
  Art. 69 EPC).
• 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
  (Art. 2 of the Protocol).

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Scope of Protection

• Determining the scope of patent protection
  involves striking the balance between the
  conflicting interests mentioned by the Protocol.
• It is the task of the courts to find criteria for
  a determination of the scope of protection which
  reconcile both demands.
• A suitable doctrine of equivalence cannot be
  restricted to the meaning of the claim (read in
  context) but is has to be based on and orientated
  toward this meaning.

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Scope of Protection

• The instrument of choice here is the cognitive
  faculties of a skilled person who endeavours to
  analyse the patent claim on the basis of his or
  her knowledge and skill in the art and uses the
  description and the drawings to interpret the
  claim.
• The scope of the patent is determined by this
  persons conclusions It extends to any variant
  that has been made obvious by the claim to the
  person skilled in the art.

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Scope of Protection

• The conditions of equivalent means are as
  follows
• Same technical effect
• Obviousness to a skilled person
• Claim-based considerations.
• These conditions are defined in more detail in
  the three Schneidmesser questions

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Scope of Protection

• BGH, 12 March 2002, 150 BGHZ 149 ENPR 2003, 309
• 33 IIC 873 Schneidmesser I (Cutting Blade I)
• Does the modified embodiment (the variant) solve
  the problem underlying the invention by means
  which have objectively the same technical effect?
• Was the person skilled in the art enabled by his
  or her expertise on the priority date to find the
  modified means as having the same effect?
• Are the considerations that the skilled person
  has to apply in order to find the modified means
  based on the technical teaching of the patent
  claim?

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Scope of Protection

• BGH, 10 May 2011 X ZR 16/09, GRUR 2011, 701
• Okklusionsvorrichtung (Occlusion Device)
• If the patent specification discloses in the
  description different ways of reaching a
  technical result but claims only one of these
  ways the use of the other ones as a rule
  constitutes no infringement by equivalent means.

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V. Conclusions
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Conclusions

• Competition can be controlled by several means
• Technology-specific legislation
• Subsidies and Taxes
• Patent Law
• Different competition controlling instruments use
  different means of controlling
• Legislative, political and financial incentives
  may be technology-specific means
• Patent law means should be universal

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Conclusions

• Exclusivity and freedom of competition are well
  balanced if
• technical solutions of technical problems are
  "patent eligible",
• protected technical solution ( invention
  technical teaching) is new and not obvious to a
  skilled person,
• protected technical solution is sufficiently
  disclosed to be carried out by a skilled person,
• extent of patent protection is assessed in
  accordance with the invention as claimed.

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