Supreme Court again reviews article 69 EPC




An atrial septal defect is a serious heart problem that restricts blood flow between the left and right atria via the interatrial septum. AGA Medical Corporation owns a patent on a medical device that can be applied through a catheter in the patient's heart to close the septum. Occlutech GmbH delivers such devices. In an infringement procedure, the Court of First Instance judged that Occlutech's devices do not comply with the literal wording of AGA's patent, nor are they within the scope of protection when interpreting the claims in accordance with the Protocol for article 69 EPC. In a subsequent appeal, this decision was confirmed.

In the review proceedings before the Dutch Supreme Court, AGA pleaded that the appeal court incorrectly applied the article 69 EPC Protocol. AGA's reasoning was primarily based on the question of equivalence, the explanation of a claimed feature and the role of the examination file history. In that respect AGA argued that the appeal court should not have taken into account a reply to an examination report where AGA explained what it considers as its invention over the prior art.

The Supreme Court confirmed its 1995 decision (Ciba/Geigy) to the effect that "the gist of the invention behind the wording of the claim", and "what is essential for the invention for which protection is sought" should be considered as a viewpoint and not as a starting point. In addition, the Supreme Court holds that it is not necessary that each of the possibly relevant aspects for the explanation of the scope of protection identified in Ciba/Geigy be considered in every case. This depends on the nature of the patent and the description of the invention as well as on the debate between the parties. The judgment also reminds the reader that the explanation of a patent is strongly interwoven with evaluations of a factual nature, so that it can be investigated only to a limited extent during legal review. The Supreme Court further confirmed that the role of the examination file is not limited to subject matter that the patent owner had not claimed before or which the owner had abandoned.

Dirk de Jong

Vereenigde Octrooibureaux NV
Johan de Wittlaan 7, 2517 JR The Hague
The Netherlands
Tel: +31 70 416 67 11
Fax: +31 70 416 67 99
patent@vereenigde.com
www.vereenigde.com




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