A guide to the UPC and the UP - Flipbook - Page 168
Infringement Analysis
Claim Construction and the Scope of Protection
10-88 Art.69 EPC and the Protocol to art.69 EPC contain the rules of construction of the claims of a
European patent and are incorporated into the laws applied by the Court by way of art.24(1)(c)
UPCA. The Protocol to art.69 EPC states:
“Article 1
General principles
Article 69 should not be interpreted as meaning that the extent of the protection conferred by a
European patent is to be understood as that defined by the strict, literal meaning of the
wording used in the claims, the description and drawings being employed only for the purpose
of resolving an ambiguity found in the claims. Nor should it be taken to mean that the claims
serve only as a guideline and that the actual protection conferred may extend to what, from a
consideration of the description and drawings by a person skilled in the art, the patent
proprietor has contemplated. On the contrary, it is to be interpreted as defining a position
between these extremes which combines a fair protection for the patent proprietor with a
reasonable degree of legal certainty for third parties.
Article 2
Equivalents
For the purpose of determining the extent of protection conferred by a European patent, due
account shall be taken of any element which is equivalent to an element specified in the claims.”
10-89 Under the Protocol to Art.69 EPC the extent of protection conferred by a patent is determined
by its claims but the wording of the claims must be read through the eyes of the skilled man in
the art, by reference to the description and the figures. In some cases, the description may
expressly define the meaning of a particular word or phrase used in the claim. The description
and figures may also be used to resolve any ambiguity that might exist in the claims.
The Protocol to art.69 EPC requires that claims should be interpreted in the context of the
description and the figures and not as if they stand alone.
10-90 Beyond the general framework provided by art.69 EPC and the Protocol, national courts have
each developed their own detailed guidance on claim interpretation, often having historical
roots in their own national practice prior to adoption of the EPC. Given the diversity of
approaches presented by national law, this may be an area where the Court decides it is
appropriate to start afresh and develop a body of substantive law on claim interpretation based
solely on its own interpretation of art.69 EPC and the Protocol.
Equivalence
10-91 The current national laws of Contracting Member States all recognise that there is a penumbra
of some sort around the literal reading of a patent claim to afford somewhat broader scope of
protection than that which a strict reading of the words of the claim would provide. This follows
from the Protocol to art.69 EPC and in particular art.2 of the Protocol which provides that:
“For the purpose of determining the extent of protection conferred by a European patent, due
account shall be taken of any element which is equivalent to an element specified in the claims.”
10-92 National courts have taken a variety of approaches to give effect to this provision and a key
issue has been establishing the circumstances in which an element present in an alleged
infringement can be considered “equivalent” to an element specified in the claims of a patent.
The difficulty in defining such criteria is perhaps not surprising given the significant public policy
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 158
