Patent Claim Construction in US, Canada, Europe and Japan - Patent Eligible

Part I: Introduction

Most patent infringement and validity cases turn on the question of claim construction and the determination of the scope of the claims of the patent. Patent claim(s) has to be construed before deciding the infringement or validity of the patent. Therefore, patent claim construction is one of the most important aspects of patent law. Patents in most jurisdiction contain claims, description, abstract, title, and drawings. Claim(s) is construed in this whole context, and sometimes even taking from external context outside the four corners of the patent. Such external contexts, such as the interaction with the patent office, testimony of expert witnesses, external documents, etc., even though might be important in some jurisdictions in some times, internal context bears the most prevalent weight.

Therefore, in this paper, in the beginning, the structure and the content of a patent application will be discussed to setup the context of patent claim construction.
After discussion all the parts of the patent application excluding claims, claims will be discussed in greater detail, including the literal and substantive content of the claims.
After setting this backdrop, patent claim construction will be discussed in greater detail.

In this age of globalization, patent is no longer a national concern, but rather an international concern by most of the patent owners. In this regard, the most important three jurisdictions are US, EU, and Japan. The patent offices of these three jurisdictions process the greater part (more than 85%) of all patent applications filed worldwide, including PCT applications.^[2] There is also a “Trilateral Co-operation” among the patent offices of these three jurisdictions since 1983.^[3] Claim construction of these three jurisdictions will be compared, and also Canadian jurisdiction will be compared with them.

Part II: Parts of a Patent Application including Claims – Context of Claim Construction

A patent application filed in Canada must contain a petition and a specification of the invention.^[4] The specification of an invention must

(a) correctly and fully describe the invention and its operation or use as contemplated by the inventor;
(b) set out clearly the various steps in a process, or the method of constructing, making, compounding or using a machine, manufacture or composition of matter, in such full, clear, concise and exact terms as to enable any person skilled in the art or science to which it pertains, or with which it is most closely connected, to make, construct, compound or use it;
(c) in the case of a machine, explain the principle of the machine and the best mode in which the inventor has contemplated the application of that principle; and
(d) in the case of a process, explain the necessary sequence, if any, of the various steps, so as to distinguish the invention from other inventions.^[5]

The specification must end with a claim or claims defining distinctly and in explicit terms the subject-matter of the invention for which an exclusive privilege or property is claimed.^[6] Where a claim defines the subject-matter of an invention in the alternative, each alternative is a separate claim.^[7]

A U.S. patent application must be made in writing^[8] by the inventor, and must contain^[9]

(A) a specification containing a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to make and use the same,^[10]
(B) a drawing where necessary for the understanding of the subject matter sought to be patented,^[11] and
(C) an oath stating the country of his citizenship that the applicant believes himself to be the original and first inventor of the process, machine, manufacture, or composition of matter, or improvement thereof, for which he solicits a patent^[12].

Claims are part of the specification. As 35 U.S.C. 112 states, the specification must conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.

A European patent application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.^[13] The invention disclosed in the application must be one invention only or a group of inventions so linked as to form a single general inventive concept.^[14] A European patent application must contain

(a) a request for the grant of a European patent containing the designation of the Contracting State or States in which protection for the invention is desired^[15];
(b) a description of the invention;
(c) one or more claims, which must be clear and concise and be supported by the description and must define the matter for which protection is sought^[16];
(d) any drawings referred to in the description or the claims; and
(e) an abstract, which merely serves for use as technical information, and not for any other purpose, in particular not for the purpose of interpreting the scope of the protection sought nor for the purpose of applying^[17] (European Patent Convention, Article 78(1)).

Besides these requirements, the application must also contain information identifying the applicant^[18], designation of the inventor^[19], and fulfill the language requirement of having the description and one or more claims or the translation thereof in English, French, or German^[20]. However, the European Patent Office publishes a specification of the European patent containing the description, the claims and any drawings.^[21]

The object of the Patent System of Japan is to encourage inventions by promoting their protection and utilization so as to contribute to the development of industry.^[22] A patent right for limited period and under certain conditions is granted in Japan to those who have developed an invention and disclosed the technical details of the invention so that the public can have an opportunity to gain access to the invention. Such disclosure is done through a patent specification, including claims and detailed description, and drawings that serves both as a technical document disclosing technical details of and invention and as a document of title defining the technical scope of a patented invention accurately.

Content of the Description or Specification

For Canadian patents, the description means the part of the specification other than the claims.^[23] The description must describe the invention and its operation or use as contemplated by the inventor.^[24] It must be in the same language as the claims, that is, wholly in English or wholly in French.^[25] As per subsection 27(3) of the Patent Act^[26], the description must be clear and accurate. It should be as simple, direct, and free from obscurity and ambiguity as possible.^{[27], [28], [29]} It is addressed to persons skilled in the art or science to which the invention pertains and must be so written that those persons would be able to put the invention to the same successful use as had the inventor.^[30] The description must both describe the invention and define the way it was produced or built. The description must enable a person skilled in the art or the field of the invention to produce it using only instructions contained in the disclosure.^[31] The specification is not directed toward a member of ordinary public, but toward a person skilled in art. The specification is adequate where disclosure enabling such skilled person to make invention so as to make it available for public at end of protected period.^[32] It is not necessary to describe every method by which invention can be carried out.^[33] The description must not contain erroneous or misleading statements likely to deceive or mislead persons to whom it is addressed. Nor should it be couched in such language as to render it difficult to comprehend the invention’s mode of operation without trial or experimentation. Broad assumptions or unproved statements made in the description are objectionable and must be removed. If only one embodiment is operable, alternatives must not be suggested even if skilled persons would probably choose the operable embodiment.^[34] The actual inventive step need not appear in a single sentence or paragraph in the description. It is sufficient if it can be seen that the invention is described in the description as a whole.^[35] Subsection 80(1) of the Patent Rules states that the description shall

(a) state the title of the invention, which shall be short and precise;
(b) specify the technical field to which the invention relates;
(c) describe the background art that, as far as is known to the applicant, can be regarded as important for the understanding, searching and examination of the invention;
(d) describe the invention in terms that allow the understanding of the technical problem, even if not expressly stated as such, and its solution;
(e) briefly describe the figures in the drawings, if any;
(f) set forth at least one mode contemplated by the inventor for carrying out the invention in terms of examples, where appropriate, and with reference to the drawings, if any; and
(g) contain a sequence listing where required by paragraph 111(a).^[36]

Drawings are not permitted in the description, abstract, claims, or the petition.^[37] However, the description, abstract and claims may contain chemical or mathematical formulae or the like.^[38] All drawings provided with an application for a patent must be described in the description making reference to corresponding reference numbers shown on the drawings identifying the various elements being depicted. All reference numbers in the description must appear in the drawings.^[39] The same reference number must describe the same feature throughout the application.^[40] The description may not incorporate by reference another document.^[41] The description may refer to a document that does not form part of the application, only if the document was available to the public on the filing date of the application.^[42] Any such document cannot be relied upon for the support of a claim in an application.^[43] The description of an application must describe all of the subject matter that the applicant intends to claim as his invention.^[44] When it is clear that the description of an application is not sufficient to support the claims without reference to a document referred to in the application being examined, it is objected to for insufficiency of description.^[45]

For U.S. patents, the specification must include a written description of the invention or discovery and of the manner and process of making and using the same, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to make and use the same.^[46] It must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter or improvement invented, and must explain the mode of operation or principle whenever applicable.^[47] The best mode contemplated by the inventor of carrying out his invention must be set forth. A brief summary of the invention indicating its nature and substance, which may include a statement of the object of the invention, should precede the detailed description.^[48] The applicant must furnish a drawing where necessary for the understanding of the subject matter sought to be patented.^[49] When there are drawings, there must be a brief description of the several views of the drawings and the detailed description of the invention shall refer to the different views by specifying the numbers of the figures and to the different parts by use of reference letters or numerals (preferably the latter).^[50] The drawing in a nonprovisional application must show every feature of the invention specified in the claims. However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled rectangular box).^[51] A model or exhibit will not be admitted as part of the record of an application unless in some specific situations.^[52] In return for a patent, the inventor gives as consideration a complete revelation or disclosure of the invention for which protection is sought. All amendments or claims must find descriptive basis in the original disclosure, or they involve new matter. Applicant may rely for disclosure upon the specification with original claims and drawings, as filed.^[53]

The description of the European Patent application must (a) specify the technical field to which the invention relates; (b) indicate the background art and cite the documents reflecting such art; (c) disclose the invention, as claimed, in such terms that the technical problem and its solution can be understood, and state any advantageous effects of the invention with reference to the background art; (d) briefly describe the figures in the drawings, if any; (e) describe in detail at least one way of carrying out the invention claimed using examples where appropriate and referring to the drawings, if any; (f) indicate explicitly, when it is not obvious from the description or nature of the invention, the way in which the invention is capable of exploitation in industry, unless because of the nature of the invention, a different manner or a different order would afford a better understanding and a more economic presentation. (Rule 27, Implementing Regulations to the Convention on the Grant of European Patents of 5 October 1973). If nucleotide or amino acid sequences are disclosed in the European patent application the description shall contain a sequence listing.

Patent Law of Japan Section 36(4) states:

The detailed description of the invention under the preceding Subsection (iii) shall state the invention, as provided for in an ordinance of the Ministry of Economy, Trade and Industry, in a manner sufficiently clear and complete for the invention to be carried out by a person having ordinary skill in the art to which the invention pertains.

Regulations under the Patent Law Section 24bis (Ministerial Ordinance) Statements of the detailed description of the invention which are to be in accordance with an ordinance of the Ministry of Economy, Trade and Industry under Section 36(4) shall state the problem to be solved by the invention and its solution, or other matters necessary for a person having ordinary skill in the art to understand the technical significance of the invention.

If “a person skilled in the art” who is supposed to have ordinary skill cannot understand how to carry out the invention on the basis of teachings in the specification (excluding claims) and drawings taking into consideration the common general knowledge as of the filing, then, such a description of the invention should be deemed insufficient for enabling such a person to carry out the invention. It is necessary to describe in the detailed description of the invention at least one mode that an applicant considers to be the best among the “modes for carrying out the invention” showing how to carry out the claimed invention in compliance with the requirements in Section 36(4). The “mode for carrying out the invention” referred to in this Guideline is the same as prescribed in the Regulation 5.1-(a)(v) under PCT (Patent Cooperation Treaty). For an invention of a product, the definition of carrying out the invention is to make and use the product. For an invention of a process, the definition of carrying out the invention is to use the process. Where an invention of a process is directed to “a process for manufacturing a product,” the definition of “the process can be used” means that the product can be manufactured by the process. When embodiments or working examples are necessary in order to explain the invention in such a way that a person skilled in the art can carry out the invention, “the mode for carrying out the invention” should be described in terms of embodiments or working examples. The explanation should be done by citing drawings, if any. Embodiments or working examples specifically show the mode for carrying out the invention.

Content of the Claims

This is discussed in detail in the next part of this document.

Content of Title and Abstract

For a Canadian patent application, an abstract is not a requirement for a filing date. An application, however, must contain an abstract in order to be complete (paragraph 94(1)(b) of the Patent Rules^[54]). Section 79 of the Patent Rules sets forth the required form and content of the abstract as follows:

An application shall contain an abstract which shall

(a) contain a concise summary of the matter contained in the application and, where applicable, the chemical formula that, among all the formulae included in the application, best characterizes the invention;
(b) specify the technical field to which the invention relates;
(c) be drafted in a way that allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention;
(d) be so drafted that it can efficiently serve as a scanning tool for purposes of searching in the particular art; and
(e) shall not contain more than 150 words.

Section 72 of the Patent Rules specifies that the abstract should be provided on a page separate from the description. For clarity, it should have a separate heading, such as,

“Abstract of the Specification”. Since the abstract will be used as a search tool in the Canadian Patent Office’s Techsource database, the text should avoid patent jargon so that it may be readily understood by technicians and scientists and other persons who are interested in obtaining information about opened patent applications and issued patents. It should provide a means for quickly determining the nature of the description so that the reader can decide whether a complete copy of the specification would be useful.

Each application for a Canadian patent must also have a title. The title of the invention must appear on the first page of the description and should preferably also appear on the page containing the abstract. It must be short and precise.^[55] It should be descriptive of the invention, and should use narrow terms rather than broad terms.

For U.S. patent, the title of the invention may not exceed 500 characters in length and must be as short and specific as possible.^[56] A brief abstract of the technical disclosure in the specification must commence on a separate sheet, preferably following the claims, in the same application. The abstract in an application filed under 35 U.S.C. 111 may not exceed 150 words in length. The purpose of the abstract is to enable the United States

Patent and Trademark Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure.^[57]

The abstract of European patent application indicates the title of the invention.^[58] The abstract has to contain a concise summary of the disclosure as contained in the description, the claims and any drawings; the summary shall indicate the technical field to which the invention pertains and shall be drafted in a way which allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention and the principal use or uses of the invention. The abstract shall, where applicable, contain the chemical formula which, among those contained in the application, best characterises the invention. It shall not contain statements on the alleged merits or value of the invention or on its speculative application.

The abstract of the European patent helps patent examiner to perform prior art search. The examiner has to find out the definitive content of the application from the abstract before carrying out the search.

Request for Grant

In Canada, the patent application must contain a petition.^[59] However, this requirement does not apply to PCT national phase applications.^[60]

In U.S. patent application, the applicant shall make oath that he believes himself to be the original and first inventor of the process, machine, manufacture, or composition of matter, or improvement thereof, for which he solicits a patent; and must state of what country he is a citizen.^[61]

The European Patent application must contain an abstract, though it has no legal effect on the application containing it. The purpose of the abstract is to give brief technical information about the disclosure as contained in the description, claims and any drawings.^[62]

Part III: Patent Claim

Section 27(4) of the Patent Act^[63] of Canada requires the patentee to end the patent with claims: “The specification must end with a claim or claims defining distinctly and in explicit terms the subject-matter of the invention for which an exclusive privilege or property is claimed.” Where a claim defines the subject-matter of an invention in the alternative, each alternative is a separate claim.^[64] The patent’s claims define the monopoly in words. The ambit of the invention must be circumscribed by definite claims.^[65]

A patent in Canada is granted for one invention only.^[66] Where a patent application describes more than one invention, the applicant may limit the claims to one invention only, and any other invention disclosed may be made the subject of a divisional application^[67], which is a separate and distinct application.^[68] If the subject-matters defined by the claims are so linked as to form a single general inventive concept, it is not claiming more than one invention.^[69]

In U.S. patent, the specification has to conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.^[70] A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form. A claim in dependent form must contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form must be construed to incorporate by reference all the limitations of the claim to which it refers. On the other hand, a claim in multiple dependent form must contain a reference to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim must not serve as a basis for any other multiple dependent claim. A multiple dependent claim must be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.^[71] The least restrictive claim should be presented as claim number 1, and all dependent claims should be grouped together with the claim or claims to which they refer to the extent practicable.^[72] The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.^[73] The specification, including the claims, may contain chemical and mathematical formulae, but must not contain drawings or flow diagrams. Claims may contain tables either if necessary to conform to 35 U.S.C. 112 or if otherwise found to be desirable.^[74] Two or more independent and distinct inventions may not be claimed in one national application, except that more than one species of an invention, may be specifically claimed in different claims in one national application.^[75]

The claims in European Patents define the matter for which protection is sought in terms of the technical features of the invention, containing, wherever appropriate, (a) a statement indicating the designation of the subject-matter of the invention and those technical features which are necessary for the definition of the claimed subject-matter but which, in combination, are part of the prior art; and (b) a characterising portion – preceded by the expression “characterised in that” or “characterised by” – stating the technical features which, in combination with the features stated in the designation of the subject-matter, it is desired to protect.^[76] The claims have to be clear and concise and be supported by the description.^[77]

The European patent application must relate to one invention only or to a group of inventions so linked as to form a single general inventive concept^[78], and the application may contain may contain more than one independent claim in the same category (product, process, apparatus or use) only if the subject-matter of the application involves one of the following: (a) a plurality of inter-related products; (b) different uses of a product or apparatus; (c) alternative solutions to a particular problem, where it is not appropriate to cover these alternatives by a single claim.^[79] Any claim stating the essential features of an invention may be followed by one or more claims concerning particular embodiments of that invention^[80]. Any claim which includes all the features of any other claim (dependent claim) has to contain, if possible at the beginning, a reference to the other claim and then state the additional features which it is desired to protect. A dependent claim also has to be admissible where the claim it directly refers to is itself a dependent claim. All dependent claims referring back to a single previous claim, and all dependent claims referring back to several previous claims, has to be grouped together to the extent and in the most appropriate way possible.^[81]

Patent Law of Japan Section 36(5) states:

In the patent claim under Subsection(3)(iv), there shall be set forth, by statements separated on a claim by claim basis, all matters which an applicant for a patent considers necessary in defining an invention for which a patent is sought. In such a case, it shall not preclude the statements of the patent claim(s) to be such that an invention claimed in one claim is the same as an invention claimed in another claim.

The first sentence of Section 36(5), therefore, provides that matters which the applicant deems necessary to define the invention for which a patent is sought be stated in the claim without excess or shortage, so that he/she neither states unnecessary matters nor omits necessary matters. The applicant shall state in the claim all matters the applicant himself/herself deems necessary to define the invention for which a patent is sought. The second sentence of the revised Section 36(5), which is the same as the old Section 36(6), states that a single invention shall not be defined in more than a single claims. The patent claim(s) must be separated into one or more claims each of which sets forth matters which the applicant deems necessary to define the invention for which a patent is sought.

Patent Law of Japan Section 36(6) states:

The statement of the patent claim(s) under Subsection (3)(iv) shall comply with each of the following paragraphs:
(i) statements setting forth the invention(s) for which a patent is sought and which is described in the detailed description of the invention;
(ii) statements setting forth the invention(s) for which a patent is sought and which is clear;
(iii) statements setting forth the claim(s) which is concise;
(iv) statements which are as provided for in the ordinance of the Ministry of Economy, Trade and Industry.

Subsection 36(6)(i) means that, a determination on whether an invention for which a patent is sought is “the one described in the detailed description of the invention” should be made based on whether a matter corresponding to what is claimed is written in the detailed description of the invention. Here, “not written” means that, (a) it is clear for a person skilled in the art that a matter corresponding to what is claimed is neither stated nor implied in the detailed description of the invention, or (b) terms used in the claims and those used in the detailed description of the invention are inconsistent for a person skilled in the art, and as a result, the relation between the claim and the detailed description of the invention is unclear. Where the statements in a claim are deemed clear by itself, according to subsection 36(6)(ii), the examiner examines whether a term in the claim is defined or explained in the specification (excluding claims) and drawings, and evaluate whether such definition or explanation, if any, makes the claim statements unclear. Where the statement in a claim are deemed unclear by itself, the examiner examines whether a term in the claim is defined or explained in the specification (excluding claims) and drawings, and should evaluate whether such definition or explanation, if any, makes the claim statements clear by considering the common general knowledge as of the filing. A claim is to be used for the basis of identifying the claimed invention which is a subject of examination of the patentability requirements such as novelty or inventive step, etc., and the description requirements. A claim also ensures the role of the specification which serves as a document of title defining the technical scope of a patented invention accurately. Therefore, it is adequate that claim statements are concise, complying with subsection 36(6)(iii), in order for the third parties to understand the claimed invention as easily as possible. Subsection 36(6)(iv) refers to the legal requirements regarding technical rules of claim drafting stated in the ordinance of the Ministry of Economy, Trade and Industry – Regulations under the Patent Law Section 24^ter, which states:

Statements of the scope of claim under Section 36(6)(iv) of the Patent Law which are to be in accordance with an ordinance of the Ministry of Economy, Trade and Industry shall be as provided in each of the following items:

(i) for each claim, the statements shall start on a new line with one number being assigned thereto;
(ii) claims shall be numbered consecutively;
(iii) in the statements in a claim, reference to other claims shall be made by the numbers assigned thereto;
(iv) when a claim refers to another claim, the claim shall not precede the other claim to which it refers.

Substantive Content of Claims

Patent Act^[82] of Canada, in section 2, defines “invention” as “any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter.” In Farbwerke Hoechst^[83] the Supreme Court of Canada mentioned that “invention” is an essential element of patentability. Definition of “invention” is broad enough to encompass unforeseen and unanticipated technology, but “anything under the sun that is made by man” is not patentable.^[84] Therefore, the Canadian patent claim has to be “new” and “useful” and has to be about or about improvement of an “art, process, machine, manufacture or composition of matter.” The subject-matter defined by a claim in an application for a patent in Canada must not have been disclosed before to satisfy the novelty of the claim.^[85] The subject-matter defined by a claim in an application for a patent in Canada must be subject-matter that would not have been obvious on the claim date to a person skilled in the art or science to which it pertains.^[86] Grant of a patent claim lies in the established criteria of (a) utility or being ‘useful’; (b) novelty or being ‘new’; and (c) non-obviousness.^[87] However, all ‘new’ and ‘useful’ ‘art’s and ‘manufacture’s are not necessarily an “invention”, as non-economics methods are excluded, for example methods of surgery or treating human beings, or methods belonging to a professional field.^[88]^,^[89] On the other hand, a new substance that is useful in the medical or surgical treatment of humans or animals is an “invention”, and process of making such a substance is also an “invention”, and therefore, can be stated in claim.^[90] Claim of discovery of a new use of an old compound is also patentable.^[91] ‘Art’ or ‘process’ is act(s) performed by some physical agent upon some physical object must producing in such object some change either in character or in condition, and must offer a material advantage distinguishing a ‘useful art’ from a ‘fine art’.^[92] The Supreme Court of Canada in Tennessee Eastman^[93] defined ‘art’ as a word of very wide connotation and was not to be confined to new processes or products or manufacturing techniques but extended as well to new and innovative methods of applying skill or knowledge provided they produced effects or results commercially useful to the public. The Court in Shell Oil Co.^[94], which is the leading case in Canada with respect to the definition to be applied to the word “art”, stated that the word “art” in the context of the definition must be given its general connotation of “learning” or “knowledge” as commonly used in expressions such as “the state of the art” or “the prior art”. “A disembodied idea is not per se patentable. But it will be patentable if it has a method of practical application.”^[95] Accordingly, the definition of the term “art” as provided by the Supreme Court includes a process that: (i) is not a disembodied idea but has a method of practical application; (ii) is a new and innovative method of applying skill or knowledge; and (iii) has a result or effect that is commercially useful.^[96] “Manufacture” or “composition of matter” does not include higher order life form, as decided by the majority in Harvard Mouse case^[97], and thereby Canada departed away from the rest of the world by making invalid the patent claims for higher order life form. A patent claim has to be ‘novel’. Anticipation or lack or novelty asserts that the invention claimed in the patent has been made known to the public prior to the relevant time. It is not enough to pick bits and pieces from a variety of prior publications and meld them together. One must look at a prior, single publication and find in it all the information, without the exercise of any inventive skill. Where the invention consists of a combination of all the elements claimed cannot possibly be anticipatory.^[98] Test of ‘anticipation’ was set out in Diversified Products v. Tye-Sil^[99]. Anticipation requirement is not fulfilled if the claimed invention (i) does not “teach the combination of all the elements claimed;”^[100] (ii) does not “give the same knowledge as the specification of the invention itself;”^[101] and (iii) does not “contain clear and unmistakable directions so to use it.”^[102] Furthermore, an impractical and inoperable device cannot represent anticipation. Finally, “whatever is essential to the invention or necessary or material for its practical working and real utility must be found substantially in the prior publication.” Prior sale to or use by the public, who is free to sue the invention as she pleases, can be a proof of anticipation, if the sale or use enables the public to make or obtain the claimed invention.^[103] A patent claim also cannot be obvious or lack inventiveness. Test for obviousness is set out in Samuel Parkes & Co. v. Cocker Brothers Ltd.^[104]: Whether a technician skilled in the art but having no scintilla of inventiveness or imagination in the light of the state of the art of common general knowledge as at the claimed date of invention would have come directly and without difficulty to the solution taught by the patent?

A claim has to be ‘useful’ in a practical sense, otherwise it is not an invention. ‘Utility’ or usefulness required for patentability of a claim, as of priority date, either to be demonstrated or be a sound prediction based on the information and expertise then available.^[105] If it is possible for the patentee to make a ‘sound prediction’ and to frame a claim which does not go beyond that limits within which a sound prediction remains sound, then the applicant is entitled to do so. ‘Sound prediction’, which is a question of fact, does not mean a certainty since it does not exclude all risk that some of the area covered may prove devoid of utility. The doctrine of ‘sound prediction’ has three components: (a) factual basis for the prediction; (b) having an articulable and ‘sound’ line of reasoning at the date of the application, from which a desired result can be inferred from the factual basis; and (c) proper disclosure, meaning full, clear, and exact description.^[106] According to subsection 27(8) of Patent Act of Canada, the claims also cannot be about “any mere scientific principle or abstract theorem.” Computer usage to perform calculations cannot make claim of mere scientific principle or abstract theorem patentable.^[107]

European patents are granted only for inventions outlined in the claims which are susceptible of industrial application, which are new and which involve an inventive step.^[108]

An invention outlined in the claims of a European patent application shall be considered to be new if it does not form part of the state of the art, which comprises of 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.^[109] State of the art also comprises of European patent application filed before this date of filing but published after this date under Article 93 of EPC. On the other hand, patentability of any substance or composition, comprised in the state of the art, for use in a method for treatment or diagnosis of the human or animal body, provided that its use for any method referred to in that paragraph is not comprised in the state of the art.^[110]

An invention outlined in the claims are considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.^[111] If the state of the art also includes European patents that have been filed but not published, these are not to be considered in deciding whether there has been an inventive step.

An invention outlined in the claims, as interpreted according to Article 69 of EPC, shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture.^[112]

The following claims in particular are not be regarded as patentable inventions and are excluded: (a) discoveries, scientific theories and mathematical methods; (b) aesthetic creations; (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; (d) presentations of information; (e) methods, but not including products, substances, or compositions, that are used for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body.^[113] The following patent claims are also excluded under EPC: (a) inventions the publication or exploitation of which would be contrary to “ordre public” or morality; (b) plant or animal varieties or essentially biological processes for the production of plants or animals, but not including microbiological processes or the products thereof.^[114]

The following claims in respect of biotechnological inventions are also not patentable: (a) processes for cloning human beings; (b) processes for modifying the germ line genetic identity of human beings; (c) uses of human embryos for industrial or commercial purposes; (d) processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes;^[115] (e) the human body, at the various stages of its formation and development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene, but this does not include an element isolated from the human body or otherwise produced by means of a technical process^[116]. However the following claims in respect of biotechnological inventions are patentable: (a) biological material which is isolated from its natural environment or produced by means of a technical process even if it previously occurred in nature; (b) plants or animals if the technical feasibility of the invention is not confined to a particular plant or animal variety; (c) a microbiological or other technical process, or a product obtained by means of such a process other than a plant or animal variety.^[117]

In Japan, to be patentable a claim for invention has to be “industrially applicable” and “statutory”. Section 29(1) of Patent Law of Japan states, “Any person who has made an invention which is industrially applicable may obtain a patent therefore … .”^[118] Section 2(1) of the Patent Law of Japan defines a “statutory” invention as “a highly advanced creation of technical ideas utilizing a law of nature”.^[119] The term “highly” only differentiates an “invention” from a “device” defined under Utility Model Law, and therefore, an invention only has to be “an advanced creation of technical ideas” as the courts disregard the term “highly” in judging whether an invention is statutory or not. For example^[120], a pure “law of nature” is not a statutory invention as it is the law itself, and not a creation utilizing the law. Similarly, an invention that is contrary to the “law of nature” is not a statutory invention. Claimed inventions utilizing any other law than the “law of nature”, such as economic laws, arbitrary arguments, mathematical methods, mental activities, etc., are not statutory inventions.^[121] Mere discoveries, which are not “creations” i.e. for which an inventor does not consciously create any technical idea, such as discoveries of natural things or natural phenomena, are not statutory inventions. However, if the natural thing is isolated artificially from the nature, e.g. chemical substances or microorganisms, then these are “creations”, and therefore, are considered to be a statutory invention. If a “technical idea” is not created, the invention is also not a statutory invention; for example, personal skill, mere presentation of information^[122], or aesthetic creations. Besides being “statutory”, the invention also has to be “industrially applicable.” Here, the word “industry” is interpreted in a broad sense, including mining, agriculture, fishery, transportation, telecommunications, etc., as well as manufacturing. For example^[123], methods of treatment of the human body by surgery or therapy and diagnostic methods practiced on the human body are “industrially” inapplicable. Commercially inapplicable inventions, which are not marketable or tradable, are also “industrially” inapplicable. Practically inapplicable applications are similarly “industrially” inapplicable. The burden of proof regarding the requirement for industrial applicability is placed on the applicant. However, the grounds for refusing the claims for not being industrially applicable, has to be indicated as specifically as possible by the patent examiner in the notification of reasons for refusal.

Patent Law of Japan Section 29(1) states:

Any person who has made an invention which is industrially applicable may obtain a patent therefore, except in the case of the following inventions:
(i) inventions which were publicly known in Japan or elsewhere prior to the filing of the patent application;
(ii) inventions which publicly worked in Japan or elsewhere prior to the filing of the patent application;
(iii) inventions which were described in a distributed publication or made available to the public through electronic telecommunication lines in Japan or elsewhere prior to the filing of the patent application.^[124]

Patent Law ss. 29(1)(i) to (iii) categorizes inventions lacking novelty, and permits grating of an exclusive right as a reward for disclosure of an inventions that are novel and not otherwise. “Prior to the filing of the patent application” rather than “prior to the date of filing of the patent application” implies the definite time of filing, even in hours or minutes. A “publicly known invention” within the meaning of Section 29(1)(i) means an invention the contents of which have been known to an unspecified person without obligation of secrecy. A “publicly known invention” is one actually known by non-specified persons through the medium of people, and in most of the cases available from speakers at lectures, presentations, etc. In such a case, the identification of an invention known is made based on the facts presented at the lectures or presentations. A “publicly worked invention” within the meaning of Section 29(1)(ii) means an invention which has worked under the conditions where the contents of the invention are to be publicly known or can be publicly known. A “publicly worked invention” is one worked under conditions where the invention is or can potentially be publicly known to non-specified persons through the medium of a machine, equipment or other systems. In such a case, the identifying of an invention is made based on the facts embodied in the machine, equipment or other systems. A “publication” in the context of Section 29(1)(iii) is a document, a drawing, or other similar medium for the communication of information, duplicated for the purpose of disclosing the contents to the public through distribution. “Distribution” in the context of the wording “inventions described in a distributed publication” provided in Section 29(1)(iii) means placing a “publication” in the condition where unspecified persons can read or see it, not necessitating a certain person’s actual access to such a publication. An “invention described in a publication” means an invention identified by the matters described or essentially described, though no literally, in a publication. “Matters essentially described, though not literally, in a publication” means those directly derivable from the matters described, taking into consideration the common general knowledge at the time of distribution of the publication. “The common general knowledge” means technologies generally known to a person skilled in the art (including well-known or commonly used art) or matters clear from empirical rules. “Well-know art” means technologies generally known in the relevant technical field, e.g., many prior art documents, those widely known throughout the industry, or those well-known to the extent needless to present examples. “Commonly used art” means well-known art which is used widely. ^[125] Namely, an “invention described in a publication” means an invention which a person skilled in the art can find on the basis of the matters either described or essentially described, though not literally, in a publication. Therefore, unless an invention can be found by a person skilled in the art on the basis of the matters either described or essentially described, though not literally, in a publication, such an invention is not deemed as “an invention described in a publication,” i.e., “a cited invention” under Section 29(1)(iii). Also, unless it is clear that an invention is described in a publication in such a manner that a person skilled in the art can make the product in case of a product invention or can use the process in case of a process invention, taking into consideration the common general technical knowledge as of the distribution of the publication, then, such an invention is not deemed as “a cited invention” under Section 29 (1) (iii).^[126] The patent examiner in Japan determines whether or not a claimed invention is novel by judging whether the claimed invention falls under the inventions categorized in the provision of Section 29(1)(i) to (iii). When there are two or more claims in an application the determination is made for each claim.^[127]

The identifying of the identical and different features of a claimed invention and a cited invention is conducted by comparing the terms and language to define the claimed invention and the terms and language to define an invention with respect to the cited invention. Where there is found no difference between the terms and language defining the claimed invention and the terms and language defining the cited invention as a result of the comparison, the claimed invention is not novel. Where there is a difference between the two, the claimed invention is novel.^[128]

“Inventive step” or “non-obviousness” is another requirement of patentability in Japan. Where an invention could easily have been made, prior to the filing of the patent application, by a person with ordinary skill in the art to which the invention pertains, on the basis of an invention or inventions referred to in any of the paragraphs of Subsection 29(1) of Patent Law of Japan, a patent shall not be granted for such an invention. This excludes inventions that are easily made by a person skilled in the art, because granting a patent right to such an invention does not contribute to and even hampers the progress of technology. “A person having ordinary skill in the art to which the invention pertains”, in the scope of Subsection 29(2) of Patent Law of Japan, means a hypothetical person, who has the ability to use ordinary technical means for research and development, including experimentation, analysis, manufactures, etc., who has the ability to exercise ordinary creativity in selecting materials and modifying workshop, and who is able to comprehend as his/her own knowledge all technical matters in the state of the art in the field to which a claimed invention pertains at the time of filing of a patent application. In addition, a person skilled in the art is supposed to be able to comprehend as his/her own knowledge all technical matters in the field of technology relevant to a problem to be solved by the invention.

The judgment of the “inventive step” depends on whether the invention could easily have been made by a person skilled in the art pertaining to the technical field based on the cited invention claim and current state of the art technology at the time of the application. Actually, after a claimed invention and a cited invention(s) are found, one of the cited inventions most suitable for a cause or a motivation is selected, claimed invention and cited invention are compared, and points of agreement and difference, of specified matters of the claimed invention and the cited invention are clarified. Then, the construction of logic that can deny the existence of inventive step in the claimed invention is tried from the contents and technical common sense of this cited invention and other cited inventions (including well known and commonly used art). For example, examination is made whether the claimed invention is applicable to the selection of optimum material from the cited invention or change in the design or mere aggregation, or if there is anything that can be a cause or a motivation of the contents of the cited invention. When advantageous effect in comparison with an effect of a cited invention is grasped definitely from the specification and others, it is taken into consideration as a fact helpful to affirmatively estimate and recognize the existence of the inventive step.

As a result, a complete cause or motivation holds a denial of inventive step for the claimed invention, and an incomplete cause or motivation nullifies a denial of inventive step.

Part IV: Claim Construction

How is the claim constructed or interpreted? Depending on different jurisdictions – Canada, U.S., EU, or Japan – it can be interpreted in different ways. Even in EU different nations might have different interpretations; for example German or English judges or EPO Patent Examiner might interpret the same claim in different ways due to different rules of claim construction.

Canada

In Canada, before the Supreme Court of Canada decided Free World^[129] and Whirlpool^[130] in late 2000, the Canadian Courts used two mutually inconsistent tests for claim construction:

(1) one of strict construction where the words of the claim are limited to their plain meaning and none can be ignored or altered;
(2) the other, amending language or omitting elements of the claim to broaden its scope beyond that of the strict language (referred to in the decisions as infringement of the “pith and substance” or taking the “essential features” of the invention).

Mr. Justice Binnie attempted to resolve the tensions between these two approaches in Free World and Whirlpool. Unfortunately, he merely merged them under the guise of a single test – purposive construction – thus giving confusing directions to future courts. One the one hand, the language of the claim is said to be paramount. Binnie J. used a “purposive construction” to give the terms in the claim the meaning intended by the patentee based on a reading of the claims in the context of the patent as a whole. Claims have to be divided into “essential” and non-essential” elements. The essential elements cannot be varied and must be present in order for there to be Infringement. Non-essential elements can be varied or omitted entirely and there will still be infringement.

A purposive construction may expand or limit the literal text of a claim, as indicated in Whirlpool: “Purposive construction may show that something that might literally be within the scope of the claim was not intended to be covered, so that there can be no infringement … .”^[131] Mr. Justice Binnie explicitly endorsed the dividing of claim elements into “essential” and “non-essential“ elements. In Free World, he stated:

“The appeal thus raises the fundamental issue of how best to resolve the tension between “literal infringement” and “substantive infringement” to achieve a fair and predictable result. There has been considerable discussion of this issue in Canada and elsewhere, which I will discuss briefly in support of the following propositions:

(a) The Patent Act promotes adherence to the language of the claims.
(b) Adherence to the language of the claims in turn promotes both fairness and predictability.
(c) The claim language must, however, be read in an informed and purposive way.
(d) The language of the claims thus construed defines the monopoly. There is no recourse to such vague notions as the “spirit of the invention” to expand it further.
(e) The claims language will, on a purposive construction, show that some elements of the claimed invention are essential while others are nonessential. The identification of elements as essential or non-essential is made:
- (i) on the basis of the common knowledge of the worker skilled in the art to which the patent relates;
- (ii) as of the date the patent is published;
- (iii) having regard to whether or not it was obvious to the skilled reader at the time the patent was published that a variant of a particular element would not make a difference to the way in which the invention works; or
- (iv) according to the intent of the inventor, expressed or inferred from the claims, that a particular element is essential irrespective of its practical effect;
- (v) without, however, resort to extrinsic evidence of the inventor’s intention.
(f) There is no infringement if an essential element is different or omitted. There may still be infringement, however, if non-essential elements are substituted or omitted.”^[132]

Mr. Justice Binnie further stated, “The non-essential elements may be substituted or omitted without having a material effect on either the structure or the operation of the invention described in the claims.”^[133]

After Whirlpool, in Novartis AG v. Apotex Inc.^[134], the Federal Court of Canada said in para. 99:

The key to purposive construction is therefore the identification by the court, with the assistance of the skilled reader, of the particular words or phrases in the claims that describe what the inventor considered to be the “essential” elements of his invention. This is no different, I think, than the approach adopted roughly 40 years earlier by Duff C.J. in J. K. Smit & Sons, Inc. v. McClintock, [1940] S.C.R. 279. The patent in that case related to a method of setting diamonds in devices such as rotary drill bits for earth boring. Duff C.J., citing the earlier jurisprudence, put the focus on the inventor’s own identification of the “essential” parts of his invention, at p. 285:

Obviously, the invention, as described by the inventor himself, involves the use of air suction to hold the diamonds in place while the molten metal is being introduced into the mold. There can be no doubt, in my mind, that as the inventor puts it, that is an essential part of his process. That part of his process is clearly not taken by the appellants. Adapting the language of Lord Romer, it is not the province of the court to guess what is and is not of the essence of the invention of the respondent. The patentee has clearly indicated that the use of air suction at that stage of the process is an essential, if not the essential, part of the invention described in the specification.

In Halford v. Seed Hawk Inc. et al^[135], Pelletier J. interpreted Free World as to construe strict construction, as he stated in para. 27, “The question of whether patents protect only the literal meaning of the claims or whether patent protection extends to the “substance” of the invention was put to rest in Free World Trust v. Électro Santé Inc. et al (2000) 9 C.P.R. (4th) 168. It is now clear that the patent protects only the invention described in the claims, as understood by a workman skilled in the trade, as of the date of the patent.”

U.S.

In U.S., during patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.”^[136] Broad interpretation by the patent examiner reduces the possibility that the claim, once issued, will be interpreted more broadly than is justified.^[137] USPTO is not required, in the course of prosecution, to interpret claims in applications in the same manner as a court would interpret claims in an infringement suit. Rather, the “PTO applies to verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in applicant’s specification.”^[138] The broadest reasonable interpretation of the claims must also be consistent with the interpretation that those skilled in the art would reach.^[139]

Patent claim construction is a matter of law exclusively to be determined by the trial judge, as held by the Federal Circuit Court in Markman^[140] and affirmed by the U.S. Supreme Court, because construction of written documents are determined by a judge rather than a jury^[141] and also because of the uniformity and predictability in patent cases.^[142] Prior to Markman, patent claim construction was left to the hands of juries uneducated in the complexities of patent law and the technologies underlying patents. Claim construction is reviewed de novo, “including any allegedly fact-based questions relating to claim construction,” because claim construction is a purely legal issue.^[143] In interpreting a claim, the court must first look to the “intrinsic” evidence of record – namely, the language of the claim, the specification, and, if available, the prosecution history.^[144] First, “the words of the claims themselves, both asserted and nonasserted” are to be considered, “to define the scope of the patented invention” and the words in a claim should be given their ordinary meaning, as they would be understood by one of ordinary skill in the art at the time of the invention, unless patentee has clearly defined a term in other ways.^[145] Second, a court must consider the patent specification when construing the claims because it “is always relevant to the claim construction analysis [and] is the single best guide to the meaning of a disputed term”^[146] and “may act as a sort of dictionary, which explains the invention and may define the terms used in the claims.”^[147] While one cannot read a limitation into a claim from the specification, it is proper to define terms already in the claims by their usage in the specification.^[148] Third, the prosecution history of the patent, if in evidence, should be considered, particularly the patent applicant’s “express representations … regarding the scope of the claims,”^[149] because the prosecution history “contains the complete record of all the proceedings before the Patent and Trademark Office, including any express representations made by the applicant regarding the scope of the claims, [it] is often of critical significance in determining the meaning of the claims.”^[150] These three – the intrinsic evidences – are the “most significant source of the legally operative meaning of disputed claim language” and should always be consulted.^[151] It is improper to rely on extrinsic evidence, such as inventor or expert testimony, technical publications, or dictionary definitions, when the intrinsic evidence alone resolves any ambiguity in a disputed claim term, because the intrinsic evidence is the “public record of the patentee’s claim, a record on which the public is entitled to rely … Allowing the public record to be altered or changed by extrinsic evidence introduced at trial, such as expert testimony, would make this right meaningless.”^[152] Only if there is some genuine ambiguity remains in the claims, after consideration of all available intrinsic evidence, should the trial court resort to reliance on extrinsic evidence.^[153] Since the focus of claim construction is determining what one of ordinary skill in the art at the time of the invention would have understood the terms to mean, it is proper to consider the prior art when it will assist the court in making this determination.^[154] Intrinsic prior art – that which has been cited in the patent or the prosecution history – is always admissible and relevant to the meaning of terms within the claims.^[155] Extrinsic prior art – that which has not been cited in the patent or the prosecution history – may be considered but only where the disputed terms cannot be understood from consideration of the intrinsic evidence, may not be used to vary claim terms from how they are defined.^[156] The U.S. Federal Circuit Court appears to prefer the use of prior art evidence to expert testimony because the written prior art is “more indicative of what all those skilled in the art generally believe a certain term means.”^[157] Expert testimony can be considered “to aid the court in coming to a correct conclusion as to the true meaning of the language employed in the patent,” but may not be used to vary or contradict the terms of the claims where they have been unambiguously defined by the intrinsic evidence.^[158] Dictionaries and technical treatises hold a “special place” among the types of extrinisic evidence and may sometimes be considered along with the intrinsic evidence when determining the ordinary meaning of claim terms.^[159] An inventor’s description of his invention in scientific articles or speeches is not a proper basis for construing the scope of a patented invention.^[160] Inventor’s testimony in connection with claim construction is also not a proper basis most of the times, because “the inventor’s subjective intent as to claim scope, when unexpressed in the patent documents” may not have any effect.^[161] In some instances, however, the U.S. Federal Circuit court has credited the testimony of the inventor as “an expert in the field”^[162] or “a competent witness to explain the invention and what was intended to be conveyed by the specification and covered by the claims.”^[163]

The U.S. doctrine of equivalents provides that if the claim says that two things are attached by a screwnail, then any fastener that performs the same function (fastening) in the same way (by mechanical attachment) to achieve the same result (attachment) constitutes an infringement of the patent.^[164] The U.S. Supreme Court in Warner-Jenkinson^[165], confirmed an “all elements” test, in which all claim elements are “material to defining the scope of the patented invention” and they (or their equivalents) must be present in order for there to be infringement. If an element or its equivalent is completely missing, there is no infringement. This test has the flavour of a “literal infringement “ test in the sense that even an element of the claim cannot be ignored while considering infringement.

European Union

In EU, Article 69 of the European Patent Convention (EPC) says that “the extent of the protection conferred by a European patent or a European patent application shall be determined by the terms of the claims, but nevertheless, the description and drawings shall be used to interpret the claims.”^[166] However, “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 purpose of resolving an 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 what, from a consideration of the description and drawings by a person skilled in the art, the patentee has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties.”^[167] The Protocol has been said to require a middle road between what may be characterised as the traditional English approach – looking at the strict literal meaning of the words used in the claims – and what may be characterised as the more liberal German approach – whereby the claims serve only as a guideline and the monopoly afforded by the patent is to be derived from what the patentee has contemplated as set out in the specification.

If the claims interpreted in such a way do not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, an opposition may be filed and the patent may be revoked.^[168] The subject-matter of the protection sought in the claims cannot extend beyond the content of the application.^[169]

In European Patents, for claims characterized by a combination of elements (e.g. A, B, and C) the sub-combinations, including elements individually (e.g. A and B, A and C, B and C, and also A, B, and C separately) are considered by patent examiners to make sure the claims are patentable, particularly for establishing the novelty of the element in order to assess the inventive step of the combination.^[170]

Priority of a previous application in respect of a claim in a European patent application in accordance with Article 88 EPC is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole.^[171]

Although EPC provides a general legal framework for interpretation of claims and determination of the scope of protection of claims throughout EU, national courts continue to adopt different approaches to claim construction – and this sometimes also leads to different results, as highlighted in pan-European patent litigation such as the famous Epilady cases.^[172] While nearly all Member States accept that a patent can be infringed on a “non-literal” basis, the approach for determining where the limits of protection are to be drawn varies between different European countries. Although the goal is clear (to achieve a result which combines fair protection for the patentee with reasonable certainty for third parties), it is left to the discretion of the national courts of different EU countries to determine the principles to be applied in order to achieve the goal in any particular case. In the absence of any detailed guidance, the national courts have tended to continue applying traditional principles of claim construction that were developed in their jurisdictions prior to implementation of the EPC and the Protocol. Juries are not involved in patent cases in any European court. So, the construction of the claims is always determined by the court, and not by the jury.

To state in over-simplified terms, the French courts adopt the broadest test for “equivalence” and the English courts the narrowest. The Netherlands and Germany, the other two most important jurisdictions for patent infringement in Europe, fall somewhere in between.

United Kingdom:

The traditional approach to claim construction in the UK is the “purposive approach” laid down by the House of Lords in the landmark Catnic^[173] decision and codified by the Court of Appeal in Improver v. Remington^[174]. This approach requires the court to consider in turn the following three questions (known as the “Improver questions” or, more recently, the “Protocol questions”):

(i) Does the variant (i.e. the difference between the alleged infringing article and the expressly claimed article) have a material effect upon the way the invention works? If yes, the variant is outside the claim. If no:

(ii) Would the fact that the variant has no material effect upon the way the invention works have been obvious at the date of the publication of the patent to a reader skilled in the art? If no, the variant is outside the claim. If yes:

(iii) Would a reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention? If yes, the variant is outside the claim. If no, the variant is an equivalent within the scope of the claim.

Catnic still applies to applies to patents under the 1977 Patents Act of UK, which set out for the first time express statutory principles relating to construction based on Article 69 of EPC and the Protocol.^[175] The Court of Appeal has confirmed in a number of decisions that applying the Improver questions is consistent with the Protocol. In Wheatley v. Drillsafe^[176], the Court of Appeal described the Improver questions as an “aid” to construction in accordance with the Protocol and re-dubbed the questions the “Protocol questions”. In AHP v. Novartis^[177], the Court of Appeal reversed a finding of infringement by the first instance judge (Laddie J) which had been reached without addressing sequentially the three Improver questions. Later, in Amersham v. Amicon^[178] and again in Dyson v. Hoover^[179] the Court of Appeal again approved the Improver questions.

Some of the judges of the UK High Court are not convinced that rigid application of the Improver questions will, in all cases (particularly chemical and biochemical cases), achieve the balance required by the Protocol. In Amgen v. Roche & TKT^[180], Neuberger J cautioned against applying the Improver questions blindly. Neuberger J. queried whether the questions place too much emphasis on form over substance and suggested that when considering the scope of the claim, one should bear in mind the technical contribution of the patent and not merely the words of the claims. In Pharmacia v. Merck^[181], the Court of Appeal also showed its willingness to adopt a more flexible approach. Aldous J said that this was a case where the Improver questions could not be used without modification. Instead the court sought the middle way required by the Protocol by considering the effect upon the patentee and the public of reading claim 1.

The role of the expert witness is to help the judge read the specification through the eyes of the man skilled in the art at the relevant date, because the general rule is that “patent specifications are intended to be read by persons skilled in the relevant art, but their construction is for the Court. Thus the Court must adopt the mantle of the notional skilled addressee, and determine … what the notional skilled addressee would understand to be the ambit of the claim.”^[182] The expert does this by informing the court of the state of knowledge at the relevant date and by assisting the court in understanding any scientific and technical matters or terms which the court cannot understand alone. The expert’s role does not, however, extend to construing the claims. This is a matter of law for the judge. “… [the expert] is not entitled to say what the specification means, nor does the question become any more admissible if it takes the form of asking him what it means to him as an engineer or as a chemist.”^[183]

There is no doctrine of “file wrapper estoppel” in England. There have, however, been some suggestions in some cases that the prosecution history may be relevant if (i) the patentee himself puts the prosecution file in evidence and relies on it; or (ii) reference to the prosecution history is necessary in order to resolve an issue of construction. In Furr v. Truline^[184], The patentee having himself put the prosecution file in evidence during an interlocutory motion, the judge relied on certain statements in it against the patentee as admissions against interest. As a result, for the purposes of the interlocutory application, the defendants were entitled to rely on the file wrapper.

Germany:

Article 69 of the EPC is reflected in section 14 of the German Patent Act. The Protocol is not specifically mentioned in the Act but, in accordance with German caselaw, it is binding in respect of both European Patents designating Germany and national German patents.

When considering whether literal infringement has taken place, German courts do not limit themselves to the acontextual meaning of the terms of the claims but look to the meaning that the terms would have to the skilled person in the context of the specification. If literal infringement is not found, German courts will consider whether there is infringement under the doctrine of equivalence. The leading case on equivalents is the 1986 decision of the Federal Supreme Court in Formstein^[185]. The Federal Supreme Court held that when considering whether there is infringement under the doctrine of equivalence what is important is how the skilled person would interpret the “scope of the invention” – the court will examine whether the result of the invention is achieved with equivalent means. The Court stated, “In determining the extent of protection of patents filed after 1 January 1978, the basic question is whether the person of normal skill in the art could, on the basis of his specialist knowledge, discover the methods used in the alleged infringement, which achieve the same effect from the claims, and using the specification and drawings and not whether the “principle” is the same.”

Accordingly, when considering infringement under the doctrine of equivalence, the

German courts adopt a two-fold test:

(1) Does the alleged infringement (as a matter of fact) have equivalent effect to that of the invention defined by the literal words of the claim?

(2) If so, was the alleged infringement one that the skilled person could arrive at as an equivalent solution to the problem, working from the invention defined by the literal words of the claim and using the specification and drawings and his skill and knowledge?

In Germany, as in many other European civil law jurisdictions, expert witnesses do not play an important role as they do in US or UK. Expert witnesses normally do not give any oral evidence in court, and even if they do, they are not subjected to the same intensive level of cross-examination as US or UK experts. Expert’s evidence is limited to written statements, which are usually much shorter than the ones submitted in US or UK. Construction of claims is for the court and experts need only give evidence on the meaning of technical terms in the claims.

In terms of the relevance of the prosecution file history, the general rule in Germany is that unless a restriction agreed by the patent applicant during prosecution or opposition proceedings can clearly be derived from the patent specification as granted and maintained, the patent applicant may not be held to that restriction.

Japan

In Japan, the finding of a claimed invention is made on the basis of the statements of the claim. Matters stated in the claim defining the claimed invention is construed in the light of the description in the specification (excluding the claim(s)), the drawing, and the common general knowledge as of the filing.^[186]

When the claim statements are clear, the finding of the claimed invention in the Japanese patent should be made just as stated in the claim. Terms or language in such a claim should be construed as what they normally mean. In 1992 (Gyo Ke) 116, the Court stated that, identifying of the claimed invention, that is, the final and conclusive decision of technical matters in the claim should be first based on the description of the claim. It is interpreted that when the description clear principally and accurately conveys the description of the invention, the gist of the invention added with matters listed in the detailed description of the invention is not used for identifying, and the description in the detailed description can be taken into consideration only when the description in the claim is insufficient to clearly indicate the technical meaning.^[187] In 1989 (Gyo Ke) 42, the Court stated: Identifying of the gist of the device is conducted to clear the technical matters described in the registered claim of the device, as a method to decide whether the device relating to the application comprises requirements for registration. As long as its technical matters are clear according to the description in the registered claim, the gist of the device should be found in accordance with the description, and the gist cannot be interpreted by limitation according to descriptions and drawings in the detailed description of the device.^[188] In 1987 (Gyo Tsu) 3, the Court found that, for trial examination of novelty and inventive step of an invention relating to patent application, the gist of an invention relating to patent application should be found, as a premise to compare this invention with inventions prescribed in Section 29, (1), each subparagraph. The identifying of the gist should be made based on the descriptions of the claim in specification as long as there are no specified circumstances such as ambiguous technical significance in the descriptions of the claim or errors in the descriptions obvious at a glance in the light of the descriptions in detailed description in the specification.^[189]

Even though a claim in Japanese patent is clear, however, when terms or language used in a claim are defined or explained in the specification (excluding claims) or in the drawings, that definition or explanation is considered in interpreting the terms or language. Mere examples of specific embodiments encompassed by the generic concept of terms or language used in a claim do not fall under the “definition or explanation in the detailed description of the invention or drawings.” When statements in a claim are unclear or difficult to understand, but can be clarified by interpreting terms or language of the claim in the light of the description of the specification (excluding claims), drawings and common general technical knowledge as of the filing, the specification, drawings and common general knowledge are referred to when interpreting the terms or language. As it was stated in 1994 (Gyo Ke) 78: The technical terminology in a specification should be commonly used scientific terms. Accordingly, it is necessary to refer to definitions and explanations in a dictionary etc. for understanding and interpretation of technical terminology in the specification. However, it is not proper to understand and interpret only by them. First, the descriptions in the specifications concerned and drawings should be referenced to understand and interpret the meanings and contents of the technical terminology to be used there.^[190] In 1966 (Gyo Ke) 62, the Court stated: In the case where the use of technical terms used in the description of the (scope of claims) are different from ordinary one, the effect is described in the (detailed explanation of the invention), the expression described in the (scope of claim) is hard to understand since the description is indefinite, and the meaning and the contents are made clear in the (detailed explanation of invention, it goes without saying that the descriptions of (detailed explanation of invention) are taken into consideration in interpreting the terminology and the descriptions.^[191] Similarly, in 1972 (Gyo Ke) 33, it was stated: Of course it is permitted deciding proper contents of meaning with the technical item and term of the unclear thing shown in there by taking into consideration of detailed explanation of the device, in order to interpret the description of claim rationally.^[192]

If a claimed invention is not clear, even by referring to the specification (excluding claims), drawings and common general technical knowledge as of the filing, the identification of a claimed invention is not done. Even if there is inconsistency between an invention found in a claim and an invention described in the specification (excluding claims) and drawings, the identifying and examination of an invention is not made based solely on the specification (excluding claims) and drawings, disregarding the descriptions of the claim. In addition, terms or language not stated in a claim are treated as they do not exist in the claim, even though they are described in the specification (excluding claims) or drawings. On the contrary, terms or language stated in a claim should be always considered, and should not be treated as they do not exist in the claim. For example, in 1966 (Gyo Ke) 62, the Court found that, when the description of the [scope of claims] is clear and its meaning can be captured accurately, it is not permitted to understand the contents of the invention concerned by adding the matters which are not described in the (scope of claims) at all and described in the (detailed explanation of invention) in finding of the claimed invention.^[193] Again, in 1973 (Gyo Ke) 62, the Court stated: Recognition and interpretation of the gist of inventions should be based on the description of the scope of claims. In this case, neglecting of the matters described in the claims and adding the matters not described are not permitted as far as special circumstances are not recognized.^[194]

Where a claim in Japanese patent includes a description intending to define a product using the functions, characteristics etc., such a description of the claim is construed as signifying all products with such functions, characteristics, etc. For example, “a building wall material incorporating a layer which insulates heat” should be interpreted as a building wall material incorporating “a product” that is “a layer with a work or function of heat-insulation.” However, when the functions, characteristics, etc. are inherent to such product, it is interpreted that the description is not helpful to define the product but means such product itself. When the terms and language to define the invention are considered, a claim is not interpreted as to signify a specified product among all products with such functions, characteristics, etc.

Where a claim in a patent filed in Japan includes an explicit description defining a product by its use or purpose of use, such a description is construed in the light of the specification and drawings taking into consideration the common general technical knowledge as of the filing. That description is determined to mean either (i) a product that is particularly suitable for the stated use, (ii) a product that is to be used solely for the purpose, or (iii) both of (i) and (ii). It could be a violation of Section 36(6)(ii) of Patent Law of Japan if the description can not be determined to mean either (i), (ii) or (iii).

When there is a description defining a product by its manufacturing process in a claim in a patent filed in Japan, such a description is interpreted as a product finally obtained per se, unless it is construed otherwise (i.e. considering the definition or explanation in the specification or the drawings, because although the claim statements are clear, terms or language used in the claim are defined or explained in the specification or the drawings).

Patent Law states that matters necessary to define an invention should be stated in a claim. The identifying of the identical and different features of a claimed invention and a cited invention is conducted by comparing the matters to define the claimed invention and the matters to define an invention with respect to the cited invention. The comparison of a claimed invention expressed in some manner in the cited invention is conducted, and identical features and differences between the both can be found. More specific concept of claimed invention includes detailed explanation of the invention or matters described in the working mode of the claimed invention in drawings, and others. Matters which are different from the above mentioned working mode also can be intended for the comparison, if they are included in more specific concept of claimed invention.

This alternative method is helpful for the novelty determination of claims with descriptions defining a product by the functions, characteristics, etc. or of claims with limitation by numerical range, etc. The terms and language defining a claimed invention may also be directly compared with the terms and language described in a publication. In doing so, the identifying of the identical and different features of claimed and cited inventions may be conducted by interpreting the terms and language described in the publication taking into consideration the common general technical knowledge as of the distribution of the publication. The comparison is never conducted between a claimed invention and a combination of two or more cited inventions.

Patent Law of Japan Subsection 44(1) reads:

An applicant for a patent may divide a patent application comprising two or more inventions into one or more new patent applications only within the time limit by which the specification or drawings attached to the request may be amended.

Under Patent Law Section 44(1), in order to be deemed to have been filed at the time of filing of the original application, a divisional application is required to meet both of the following two conditions: (1) Two or more inventions has to be described in the specification or drawings of the original application immediately prior to being divided; and (2) The claimed inventions of the divisional application has to be derived from a part of the inventions described in the specification or drawings of the original application immediately prior to being divided. The claims in such divisional applications are construed considering the whole application.

Section 36(5) of Patent Law of Japan makes the nature of the claims clear by clearly providing that it is in a claim that an applicant states matters which he/she deems necessary to define the invention for which a patent is sought. Section 36(5) also makes clear that the technical scope of the patented invention is determined on the basis of the statements of the claim and that the subject of the examination is the invention identified based on the statements of the claim. Since it should be at the applicant’s own volition to determine whether or not matters to be stated in a claim are necessary and sufficient to define the invention for which a patent is sought, it is not proper for the examiner to determine that any matter stated in a claim, which the applicant considers necessary to define the invention for which a patent is sought, is unnecessary or that further matters are necessary in addition to those stated in a claim, which the applicant deems as sufficient to define the invention for which a patent is sought. A claim constitutes a basic unit for the determination of patentability (Patent Law of Japan Sections 29, 29bis, 39 and 32), effect of a patent right (Section 68), abandonment of a patent right (Section 97), filing of a patent opposition (Section 113), demanding of a trial for invalidation (Section 123), registration fees (Sections 107 and 195), etc.

Part V: Conclusion

Although the form of the patent application is somewhat similar, containing claims, description, abstract, title, and drawings, the claim construction vastly differs among different jurisdiction. Even though there have been efforts to make the claim construction more uniform, for example in E.U., different jurisdictions still follow vastly different methods of claim construction. In this era of globalization, where the vast majority of patents are filed in multiple jurisdictions, it is desirable to have a uniform patent claim construction approach. Otherwise the same patent will still be constructed in different ways by different jurisdictions, and anomalies like the Harvard Mouse case^[195] and Epilady cases^[196] will be abound.

[1] Patent Claim Construction in US, Canada, Europe and Japan

[2] In 2002, there were 365,204 first filings in Japan, 179,642 first filings in U.S., and 121,932 first filings in EPC countries, compared to 167,651 first filings in the rest of the world. (This data is based on the statistics of EPO, JPO, and USPTO, and is also partially based on statistics from the World Intellectual Property Organization (WIPO) in Geneva). Source: Chapter 3: Worldwide Patenting Activities, Trilateral Statistical Report 2003, Jointly produced by EPO, JPO, and USPTO. https://www.trilateral.net/statistics/tsr/2003

[3] The co-operation set up in 1983 by the European Patent Office (EPO), the Japan Patent Office (JPO) and the United States Patent and Trademark Office (USPTO) in the field of industrial property is known as the “Trilateral Co-operation.” https://www.trilateral.net/

[4] Patent Act, R.S.C. 1985, c. P-4, s. 27(2), Application requirements

[5] Patent Act, R.S.C. 1985, c. P-4, s. 27(3), Specification

[6] Patent Act, R.S.C. 1985, c. P-4, s. 27(4), Claims

[7] Patent Act, R.S.C. 1985, c. P-4, s. 27(5), Alternative definition of subject-matter

[8] 35 U.S.C. 111(a)(1), Application

[9] 35 U.S.C. 111(a)(2), Application

[10] 35 U.S.C. 112 Specification.

[11] 35 U.S.C. 113 Drawings; 37 CFR § 1.81 Drawings required in patent application.

[12] 35 U.S.C. 115 Oath of applicant.

[13] European Patent Convention, supra, Article 83.

[14] European Patent Convention, supra, Article 82.

[15] Convention on the Grant of European Patents (European Patent Convention), of 5 October 1973, as amended by the act revising Article 63 EPC of 17 December 1991 and by decisions of the Administrative Council of the European Patent Organisation of 21 December 1978, 13 December 1994, 20 October 1995, 5 December 1996 and 10 December 1998, Article 79(1).

[16] European Patent Convention, supra, Article 84.

[17] European Patent Convention, supra, Article 85.

[18] European Patent Convention, supra, Articles 80(c) and 90. Information identifying the applicant is one of the requirements before the date of filing can be accorded (Art. 80), which is required for passing the examination on filing (Art. 90).

[19] European Patent Convention, supra, Article 81. If the applicant is not the inventor or is not the sole inventor, the designation shall contain a statement indicating the origin of the right to the European patent.

[20] European Patent Convention, supra, Articles 80(d), 14(1), 14(2), 90.

[21] European Patent Convention, supra, Article 98.

[22] Patent Law of Japan, Section 1.

[23] Patent Rules, Section 2, definition of “description”

[24] Patent Act, R.S.C. 1985, c. P-4, subsection 27(3)

[25] Patent Rules, subsection 71(3)

[26] Patent Act, R.S.C. 1985, c. P-4, s. 27(3)

[27] Mobil Oil Corp. v. Hercules Canada Inc. (1995), 63 C.P.R. (3d) 473, 188 N.R. 382, 98 F.T.R. 319 (Fed. C.A.) reversing in part (1994), 82 F.T.R. 211, 57 C.P.R. (3d) 488 (Fed. T.D.) leave to appeal to S.C.C. refused (1996), 203 N.R. 395, 66 C.P.R. (3d) vi (S.C.C.)

[28] Diversified Products Corp. v. Tye-Sil Corp. (1991), 125 N.R. 218, 35 C.P.R. (3d) 350, 41 F.T.R. 78 (Fed. C.A.); affirming (1987), 16 C.P.R. (3d) 207, 13 F.T.R. 16 (Fed. T.D.)

[29] Monsanto Co. v. Canada (Commissioner of Patents) (1979), 100 D.L.R. (3d) 385, [1979] 2 S.C.R. 1108, 42 C.P.R. (2d) 161 (S.C.C.)

[30] Mahurkar v. Vas-Cath of Canada Ltd. (1988), 16 F.T.R. 48, 18 C.P.R. (3d) 417 (Fed. T.D.); affirmed (1990), 105 N.R. 138, 32 C.P.R. (3d) 409 (Fed. C.A.)

[31] Pioneer Hi-Bred Ltd. v. Canada (Commissioner of Patents) [1989] 1 S.C.R. 1623, 97 N.R. 185, 60 D.L.R. (4th) 223, 25 C.I.P.R. 1, 25 C.P.R. (3d) 257, REJB 1989-67229 (S.C.C.); affirming (1987), [1987] 3 F.C. 8, 14 C.P.R. (3d) 491, 11 C.I.P.R. 165, 77 N.R. 137, 14 C.P.C. (3d) 491 (Fed. C.A.); affirming (1986), (sub nom. Re Application for Patent of Pioneer Hi-Bred Ltd.) 11 C.P.R. (3d) 311 (Can. Pat. App. Bd. & Pat. Commr.)

[32] Consolboard Inc. v. MacMillan Bloedel (Sask.) Ltd. [1981] 1 S.C.R. 504, 56 C.P.R. (2d) 145, 122 D.L.R. (3d) 203 (S.C.C.); reversing (1979), 41 C.P.R. (2d) 94 (Fed. C.A.); reversing (1978), 39 C.P.R. (2d) 191 (Fed. T.D.)

[33] Christiani & Nielsen v. Rice (1930), [1930] S.C.R. 443, [1930] 4 D.L.R. 401 (S.C.C.); reversing (1929), [1929] Ex. C.R. 111 (Can. Ex. Ct.); affirmed [1931] A.C. 770, 48 R.P.C. 511, 4 D.L.R. 273 (Canada P.C.)

[34] Mineral Separation v. Noranda Mines, 1947 Ex. C.R.

[35] Nekoosa Packaging Corp. v. AMCA International Ltd. (1989), 26 C.I.P.R. 206, 27 C.P.R. (3d) 153, 30 F.T.R. 127 (Fed. T.D.); additional reasons at (1990), 29 C.P.R. (3d) 540 (Fed. T.D.)

[36] Patent Rules, subsection 80(1), SOR/99-291, s. 8.

[37] Patent Rules, subsection 74(1)

[38] Patent Rules, subsection 74(2)

[39] Patent Rules, subsection 82(9)

[40] Patent Rules, subsection 82(10)

[41] Patent Rules, subsection 81(1)

[42] Patent Rules, subsection 81(2)

[43] Patent Rules, section 84

[44] TRW Inc. v. Walbar of Canada Inc. (1991), 39 C.P.R. (3d) 176, 132 N.R. 161, 50 F.T.R. 160 (Fed. C.A.); reversing (1986), 10 C.P.R. (3d) 184, 3 F.T.R. 160, 10 C.I.P.R. 163 (Fed. T.D.); leave to appeal refused (1992), 139 N.R. 400, 42 C.P.R. (3d) v (S.C.C.)

[45] Patent Rules, section 84

[46] 37 CFR 1.71(a)

[47] 37 CFR 1.71(b)

[48] 37 CFR § 1.73 Summary of the invention.

[49] 35 U.S.C. 113 Drawings; 37 CFR § 1.81 Drawings required in patent application.

[50] 37 CFR § 1.74 Reference to drawings.

[51] 37 CFR § 1.83 Content of drawing.

[52] 37 CFR § 1.91 Models or exhibits not generally admitted as part of application or patent.

[53] Manual of Patent Examining Procedure (MPEP) § 608, § 608.04, 8th Edition, August 2001 (August 2005 revision).

[54] Patent Rules, SOR/96-423, 28 August, 1996

[55] Patent Rules, subsection 80(1) paragraph (a)

[56] 37 CFR § 1.72(a) Title and abstract.

[57] 37 CFR § 1.72(b) Title and abstract.

[58] Rule 33(1), Implementing Regulations to the Convention on the Grant of European Patents, 5 October 1973.

[59] Patent Act, R.S., 1985, c. P-4, s. 27(2); Patent Rules, s. 2, definition of “petition”

[60] Patent Rules, SOR/96-423, section 61.

[61] 35 U.S.C. 115 Oath of applicant.

[62] European Patent Office, Guidelines for Examination in the European Patent Office, Munich, Germany, 2005.

[63] Patent Act, R.S.C. 1985, c. P-4, as amended.

[64] Patent Act, R.S.C. 1985, c. P-4, s. 27(5).

[65] B.V.D. Company Ltd. v. Canadian Celanese Ltd., [1937] S.C.R. 221 (per Davis, J.) at p. 233.

[66] Patent Act, R.S.C. 1985, c. P-4, s. 36(1).

[67] Patent Act, R.S.C. 1985, c. P-4, s. 36(2).

[68] Patent Act, R.S.C. 1985, c. P-4, s. 36(4).

[69] Patent Rules, SOR/96-423, section 36.

[70] 35 U.S.C. 112 Specification.

[71] 35 U.S.C. 112 Specification.

[72] 37 CFR § 1.75(g) Claim(s).

[73] 37 CFR § 1.75(d) Claim(s).

[74] 37 CFR § 1.58 Chemical and mathematical formulae and tables.

[75] 37 CFR § 1.141 Different inventions in one national application.

[76] European Patent Rules 29(1), Form and Content of Claims.

[77] European Patent Convention, supra, Article 84, The Claims.

[78] European Patent Convention, supra, Article 82, Unity of Invention.

[79] Rule 29(2), Implementing Regulations to the Convention on the Grant of European Patents, 5 October 1973.

[80] Rule 29(3), Implementing Regulations to the Convention on the Grant of European Patents, supra.

[81] Rule 29(4), Implementing Regulations to the Convention on the Grant of European Patents, supra.

[82] R.S.C 1985, c. P-4

[83] Farbwerke Hoechst AG Vormals Meister Lucius & Bruning v.Halocarbon (Ontario) Ltd. [1979] 2 S.C.R. 929

[84] President and Fellows of Harvard College v. Commissioner of Patents, [2002] 4 S.C.R. 45, [2002] S.C.J. No. 77, 2002 SCC 76, per Bastarache J. (majority).

[85] Patent Act, R.S.C 1985, c. P-4, s. 28.2(1).

[86] Patent Act, R.S.C 1985, c. P-4, s. 28.3.

[87] President and Fellows of Harvard College v. Commissioner of Patents, [2002] 4 S.C.R. 45, [2002] S.C.J. No. 77, 2002 SCC 76.

[88] Tennessee Eastman Co., a division of Eastman Kodak Co. v. Canada (Commissioner of Patents), [1974] S.C.R. 111

[89] Lawson v. Commissioner of Patents (1970), 62 C.P.R. 101 (Exchequer Court of Canada).

[90] Tennessee Eastman Co., a division of Eastman Kodak Co. v. Canada (Commissioner of Patents), [1974] S.C.R. 111

[91] Shell Oil Company v. The Commissioner of Patents, [1982] 2 S.C.R. 536.

[92] Lawson v. Commissioner of Patents (1970), 62 C.P.R. 101 (Exchequer Court of Canada).

[93] Tenessee Eastman Co. v. Commissioner of Patents, [1974] S.C.R.111

[94] Shell Oil Company v. The Commissioner of Patents, [1982] 2 S.C.R. 536.

[95] Shell Oil Company v. The Commissioner of Patents, [1982] 2 S.C.R. 536, at 554.

[96] Progressive Games, Inc. v. Canada (Commissioner of Patents), [1999] F.C.J. No. 1623, 177 F.T.R. 241, 3 C.P.R. (4th) 517 (Federal Court of Canada – Trial Division), affirmed Federal Court of Appeal [2000] F.C.J. No. 1829, 265 N.R. 392, 9 C.P.R. (4th) 479, at para. 16.

[97] President and Fellows of Harvard College v. Commissioner of Patents, [2002] 4 S.C.R. 45, [2002] S.C.J. No. 77, 2002 SCC 76.

[98] Beloit Canada Ltée/Ltd. v. Valmet (1986), 7 C.I.P.R. 205, 8 C.P.R. (3d) 289, 64 N.R. 287 (Fed. C.A.); reversing (1984), 2 C.I.P.R. 145, 78 C.P.R. (2d) 1 (Fed. T.D.); leave to appeal to S.C.C. refused (1986), 8 C.I.P.R. xlvii (note) (S.C.C.)

[99] Diversified Products Corp. v. Tye-Sil Corp. (1987), 16 C.P.R. (3d) 207, 13 F.T.R. 16 (Fed. T.D.); affirmed (1991), 125 N.R. 218, 35 C.P.R. (3d) 350 (Fed. C.A.)

[100] Beloit Canada Ltée/Ltd. v. Valmet (1986), 7 C.I.P.R. 205, 8 C.P.R. (3d) 289, 64 N.R. 287 (Fed. C.A.); reversing (1984), 2 C.I.P.R. 145, 78 C.P.R. (2d) 1 (Fed. T.D.); leave to appeal to S.C.C. refused (1986), 8 C.I.P.R. xlvii (note) (S.C.C.)

[101] Farbwerke Hoechst AG Vormals Meister Lucius & Bruning v. Canada (Commissioner of Patents) (1963), [1964] S.C.R. 49, 41 C.P.R. 9 (S.C.C.); reversing (1962), 39 C.P.R. 105 (Can. Ex. Ct.)

[102] Farbwerke Hoechst AG Vormals Meister Lucius & Bruning v. Canada (Commissioner of Patents) (1963), [1964] S.C.R. 49, 41 C.P.R. 9 (S.C.C.); reversing (1962), 39 C.P.R. 105 (Can. Ex. Ct.)

[103] Baker Petrolite Corp. v. Canwell Enviro-Industries Ltd., 2002 FCA 481 (Fed. C.A.)

[104] Samuel Parkes & Co. v. Cocker Brothers Ltd., 1929 WL 26095, 46 R.P.C. 241.

[105] Apotex Inc. v. Wellcome Foundation Ltd. (2002), 21 C.P.R. (4th) 499, 219 D.L.R. (4th) 660, 2002 SCC 77, [2002] 4 S.C.R. 153 (S.C.C.); affirming (2000), [2001] 1 F.C. 495, 195 D.L.R. (4th) 641, 262 N.R. 137, [2000] F.C.J. No. 1770, 10 C.P.R. (4th) 65 (Fed. C.A.); reversing in part (1998), 145 F.T.R. 161, 79 C.P.R. (3d) 193 (Fed. T.D.)

[106] Apotex Inc. v. Wellcome Foundation Ltd., 2002 SCC 77, 4 S.C.R. 153, 21 C.P.R. (4th) 499, 219 D.L.R. (4th) 660 (S.C.C.);

[107] Schlumberger Canada Limited v. Commissioner of Patents, [1982] 1 F.C. 845 (Federal Court of Canada, Court of Appeal)

[108] European Patent Convention, supra, Article 52(1), Patentable inventions.

[109] European Patent Convention, supra, Article 54(1), (2), Novelty.

[110] European Patent Convention, supra, Article 54(3), (5), Novelty.

[111] European Patent Convention, supra, Article 56, Inventive step.

[112] European Patent Convention, supra, Article 57, Industrial application.

[113] European Patent Convention, supra, Article 52(2), (3) and (4), Patentable inventions.

[114] European Patent Convention, supra, Article 53, Exceptions to patentability.

[115] Rule 23d, Implementing Regulations to the Convention on the Grant of European Patents, supra.

[116] Rule 23e, Implementing Regulations to the Convention on the Grant of European Patents, supra.

[117] Rule 23c, Implementing Regulations to the Convention on the Grant of European Patents, supra.

[118] Patent Law of Japan, s. 29(1), para. 1.

[119] Patent Law of Japan, s. 2(1).

[120] Examination Guidelines for Patent and Utility Model, Part II: Chapter 1. Industrially Applicable Inventions, 1.1 List of Non-statutory Inventions.

[121] This is only applicable to the patent applications filed on April 1, 1997, or later.

[122] This is only applicable to the patent applications filed on April 1, 1997, or later.

[123] Examination Guidelines for Patent and Utility Model, Part II: Requirements for Patentability, Chapter 1. Industrially Applicable Inventions, 2.1 List of Industrially Applicable Inventions.

[124] This provision is applied to a patent application filed on or after Jan. 1, 2000. For prior applications ss. 29(1)(i) and (ii) do not include “Japan or elsewhere” but only “Japan”, and s. 29(1)(iii) does not include “made available for the public through electronic telecommunication lines.”

[125] Examination Guidelines for Patent and Utility Model, Part II: Requirements for Patentability, Chapter 2. Novelty and Inventive Step, 1.2 Patent Law Section 29(1)(i) – (iii)

[126] Examination Guidelines for Patent and Utility Model, Part II: Requirements for Patentability, Chapter 2. Novelty and Inventive Step, 1.5.3 Finding of a Cited Invention as provided in Patent Law Section 29(1)(i) – (iii)

[127] Examination Guidelines for Patent and Utility Model, Part II: Requirements for Patentability, Chapter 2. Novelty and Inventive Step, 1.2 Patent Law Section 29(1)(i) – (iii)

[128] Examination Guidelines for Patent and Utility Model, Part II: Requirements for Patentability, Chapter 2. Novelty and Inventive Step, 1.5.5 The Finding of Novelty

[129] Free World Trust v. Électro Santé Inc. et al., (2001) 9 C.P.R. (4th) 168 (S.C.C. per Binnie, J.)

[130] Whirlpool Corp. v. Camco Inc. (2001) 9 C.P.R. (4th) 129 (S.C.C. per Binnie, J.)

[131] Whirlpool Corp. v. Camco Inc. (2001) 9 C.P.R. (4th) 129 (S.C.C. per Binnie, J.) at p. 151, para.

49(h) quoting Hayhurst; “The Art of Claiming and Reading a Claim” in Patent Law of Canada

(1994), edited by G.F. Henderson, Q.C., at p. 194.

[132] Free World Trust v. Électro Santé Inc. et al.,(2001) 9 C.P.R. (4th) 168 (S.C.C. per Binnie, J.) at p. 184, para 31.

[133] Free World Trust v. Électro Santé Inc. et al., (2001) 9 C.P.R. (4th) 168 (S.C.C. per Binnie, J.) at p. 180, para 20.

[134] Novartis AG v. Apotex Inc. [2001] F.C.T. 1129 (F.C.T.D.)

[135] Halford v. Seed Hawk Inc. et al [2001] F.C.T. 1154 (F.C.T.D.)

[136] In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000).

[137] In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969) (The court agreed that the claim was not limited to using a machine to carry out the process since the claim did not explicitly set forth the machine).

[138] In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997)

[139] In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999) (The court held that, one of ordinary skill would construe “restore hair growth” to mean that the claimed method increases the amount of hair grown on the scalp, but does not necessarily produce a full head of hair).

[140] Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d 517 U.S. 370 (1996).

[141] Markman, 52 F.3d at 978.

[142] Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).

[143] Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc), at 1456.

[144] Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); Bell & Howell Document Management Prods. Co. v. Altek Sys., 132 F.3d 701, 705-706 (Fed. Cir. 1997).

[145] Vitronics, 90 F.3d. at 1582.

[146] Id, at 1582.

[147] Markman, 52 F.3d at 979.

[148] See., e.g., Renishaw PLC v. Marposs Societa’ Per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998).

[149] Vitronics, 90 F.3d at 1582.

[150] Id.; Spectrum Int’l, Inc. v. Sterlite Corp., 164 F.3d 1372, 1378 (Fed. Cir. 1998).

[151] Vitronics, 90 F.3d at 1582.

[152] Id. at 1583.

[153] Id. at 1584.

[154] Kearns v. Chrysler Corp., 32 F.3d 1541, 1547 (Fed. Cir. 1994).

[155] Vitronics, 90 F.3d at 1583; Laitram Corp. v. NEC Corp., 62 F.3d 1388, 1393-94 (Fed. Cir. 1995).

[156] Vitronics, 90 F.3d at 1584.

[157] Id.

[158] Markman, 52 F.3d at 981.

[159] Bell Atlantic Network Servs.,Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1267

(Fed. Cir. 2001).

[160] Northern Telecom Ltd. v. Samsung Electronics Co., Ltd., 215 F.3d 1281, 1295-97 (Fed. Cir. 2000). See also, North Am. Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 1571, 1578 (Fed. Cir. 1996), cert. denied, 511 U.S. 1069 (1994).

[161] Vitronics, 90 F.3d at 1584.

[162] Hoechst Celanese Corp. v. BP Chems., Ltd., 78 F.3d 1575, 1580 (Fed. Cir. 1996).

[163] Voice Technologies Group, Inc. v. VCM Systems, Inc., 164 F.3d 605, 615 (Fed. Cir. 1999).

[164] Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d, 934 (Fed. Cir. 1987).

[165] Warner-Jenkinson Co. Inc. v. HIlton Davis Chemical Co., [1997] 520 U.S. 17 (1997), at p. 29.

[166] European Patent Convention, supra, Article 69(1), Extent of Protection.

[167] Protocol on the Interpretation of Article 69 of the European Patent Convention, adopted at the Munich Diplomatic Conference for the setting up of a European System for the Grant of Patents on 5 October 1973. The Protocol shall be an integral part of the Convention pursuant to Article 164, paragraph 1.

[168] European Patent Convention, supra, Articles 100(b), 138(b).

[169] European Patent Convention, supra, Article 100(c), 138(c) and (d).

[170] European Patent Office, Guidelines for Examination in the European Patent Office, Part B, Chapter III Characteristics of the Search, 3.9 combination of elements in a claim, Munich, Germany, 2005.

[171] EPO boards of appeal decisions, Case number G 2/98, 31 May 2001.

[172] Improver Corp. v. Remington Consumer Products, 21 IIC 561 (1990) (UK Court of Appeal), 21 IIC 572 (1990) and 24 IIC 838 (1993) (Dusseldorf Court of Appeals), 21 IIC 580 and 857 (1990) (Supreme Court of Hong Kong) and 24 IIC 388 (1993) (Hong Kong Court of Appeal), 21 IIC 589 (1990) (The Hague District Court) and 21 IIC 586 (1990) and 24 IIC 832 (1993) (The Hague Court of Appeals), 23 IIC 391 (1992) (Vienna Court of Appeals), 23 IIC 394 (1992) (Zurich Commercial Court).

[173] Catnic Components v. Hill & Smith Ltd. [1982] RPC 183 (House of Lords)

[174] Improver Corp. v. Remington Consumer Products [1990] FSR 181 (Court of Appeal)

[175] Section 125(1) of the Patents Act, 1977 provides that an invention shall be that specified in the claim “as interpreted by the description and any drawings… and the extent of protection inferred by a patent… shall be determined accordingly.” Section 130(7) provides that section 125 (which corresponds to Article 69 of the EPC) is to be interpreted in accordance with the Protocol on Interpretation of Article 69.

[176] Davina Wheatley & Anor. v. Drillsafe Ltd & Ors [2001] RPC 133

[177] American Home Products Corporation & Anor. v. Novartis Pharmaceuticals UK Ltd & Anor [2001] RPC 8

[178] Amersham Pharmacia Biotech AB v. Amicon Ltd & Ors, [2001] EWCA Civ 1042 (5 July 2001)

[179] Dyson Appliances Ltd v. Hoover Ltd [2002] RPC 22

[180] Kirin-Amgen Inc. v. Roche Diagnostics GmbH and Kirin-Amgen Inc v. Transkaryotic Therapies Inc. [2002] RPC 1

[181] Pharmacia Corporation & Ors v Merck & Co Inc & Anor [2001] EWCA Civ 1610 (14 December 2001)

[182] Lubrizol v. Esso [1998] RPC 727, at page 738.

[183] Scanvaegt International v. Pelcombe [1998] FSR 786.

[184] Furr v. Truline (Building Products) Ltd [1985] FSR 553

[185] [1991] RPC 597, [1987] IIC 795

[186] Examination Guidelines for Patent and Utility Model, Part II: Requirements for Patentability, Chapter 2. Novelty and Inventive Step, 1.5.1 Finding of a Claimed Invention

[187] 1992 (Gyo KE) 116

[188] 1989 (Gyo KE) 42

[189] 1987 (Gyo TSU) 3

[190] 1994 (Gyo Ke) 78

[191] 1966 (Gyo Ke) 62

[192] 1972 (Gyo Ke) 33

[193] 1966 (Gyo Ke) 62

[194] 1973 (Gyo Ke) 62

[195] President and Fellows of Harvard College v. Commissioner of Patents, [2002] 4 S.C.R. 45, [2002] S.C.J. No. 77, 2002 SCC 76 (Supreme Court of Canada).

[196] Improver Corp. v. Remington Consumer Products, 21 IIC 561 (1990) (UK Court of Appeal), 21 IIC 572 (1990) and 24 IIC 838 (1993) (Dusseldorf Court of Appeals), 21 IIC 580 and 857 (1990) (Supreme Court of Hong Kong) and 24 IIC 388 (1993) (Hong Kong Court of Appeal), 21 IIC 589 (1990) (The Hague District Court) and 21 IIC 586 (1990) and 24 IIC 832 (1993) (The Hague Court of Appeals), 23 IIC 391 (1992) (Vienna Court of Appeals), 23 IIC 394 (1992) (Zurich Commercial Court).