The Impact of Patent Construction - How to Prove Infringement and Validity

This seminar provides a comprehensive overview of the principles of patent claim interpretation in the USA, UK and Germany.

Course Overview

This seminar provides a comprehensive overview of the principles of patent claim interpretation in the USA, UK and Germany, a comparison and explanation of the varying approaches for determining when a patent claim that does not literally describe an accused system is nonetheless infringed. As well as exemplary fact scenarios with comparisons of the USA, UK and Germany approaches to claim construction and validity determination.

This seminar will:-

  • Examine the UK Supreme Court introduction of a doctrine of equivalents in Actavis v Lilly* Contrast the doctrines of equivalents and purposive construction
  • Explore the decisions in Germany limiting the doctrine of equivalents
  • Contrast the doctrines of equivalents and purposive construction
  • Analyse validity requirements
  • Illustrate the major issues with panel discussion, comparative examples and case studies

Why you should attend

This seminar provides:

  • A full examination of the UK Supreme Court landmark judgment in Actavis v Lilly that, for the first time, recognised that the UK should give effect to a doctrine of equivalents. The scope of protection against infringement has been extended, whereas the meaning of patent claims and its effect on novelty has not
  • An indepth look at a long series of decisions in Germany limiting the application of the doctrine of equivalents. With its decisions Pemetrexed and ‘Heat Exchanger’ the Supreme Court put an end to this
  • A comprehensive overview of the principles of patent claim interpretation in the USA, UK and Germany
  • A comparison and explanation of the varying approaches for determining when a patent claim that does not literally describe an accused system is nonetheless infringed.
  • Exemplary fact scenarios, with comparisons of the USA, UK and Germany approaches to claim construction and validity determination
  • Recommendations for both litigating patents and preparing patent applications
  • Provision for participants to ask questions and discuss individual concerns through the day

Who should attend

  • Patent Professionals in private practice, including patent attorneys and lawyers
  • Heads of IP, Heads of Patents and in-house patent counsel at every level
  • Patent Engineers and inventors
  • All whose responsibilities include th need to understand the scope of patent coverage in USA, UK and Germany

Programme

I. Patent claim construction generally

A. In the USA

  • Inherent ambiguities of the ‘All Elements Rule’
  • Use of intrinsic and extrinsic evidence
  • Counterintuitive interpretation of functional claims

B. In the UK

  • Court’s approach to the ‘normal’ interpretation of the claims …
    • … and the (wider) scope of protection under the new UK doctrine of equivalents
  • Accepted principles of claim construction (Virgin Atlantic)
  • The approach taken to parameters, numerals and specific claim form

C. In Germany

  • Literal infringement and ‘functional’ interpretation
  • ‘Functional’ interpretation can result in construction ‘below’ the wording?
  • Numerals and literal infringement

II. Doctrines of equivalents and purposive construction

A. In the USA

  • Sub-tests for determining equivalents
  • Counterweights to ‘equivalence’
    • Vitiation
    • Prosecution history estoppel and its variants

B. In the UK

The ground-breaking judgment in Actavis v Lilly

  • Does a ‘variant’ vary from the invention in an immaterial way?
    • Achieving substantially the same result in the same way
    • Obviousness to skilled person of the same ‘way’
    • Is strict compliance to ‘normal’ claim meaning essential to the Invention?
  • Compliance with EPC Article 69 and Protocol
  • UK Court’s willingness to refer to EPO prosecution history

C. In Germany

  • The ‘Schneidmesser’ – questions
  • Relevance of ‘Pemetrexed’
  • Has the scope of protection become broader again?
  • Relevance of prosecution history

III. Validity analysis

A. In the USA

  • Four-part non-obvious analysis
  • Reliance on the specification to construe the claims but without importing limitations
  • Traps for European specifications filed in the USA

B. In the UK

  • Construction and the four-step ‘Pozzoli’ test for obviousness
  • Novelty: narrower claim meaning for novelty than scope for infringement

C. In Germany

  • Differences between approach of the EPO and the German Supreme Court
  • Consequences of Germany’s bifurcation system

IV. Comparative examples and case studies

Presentation and panel discussion on the construction, infringement and validity of granted patents: comparative analysis and case studies

Continuing professional development

This course qualifies for the following CPD programmes:

  • CPD certificate of attendance: 5.50 hours
  • General Council of the Bar: 5.50 hours

Book now

We do not currently have dates confirmed for this course; please contact us to be informed when it is scheduled; or to discuss running this course on an in-house basis for your staff.

Previous customers include...

  • Abzena plc
  • Alison Gallafent Limited
  • Appleyard Lees IP LLP
  • AstraZeneca
  • Boult Wade Tennant
  • Canon Europe Ltd
  • Clyde & Co LLP
  • Coloplast A/S
  • De La Rue Holdings plc
  • DSM IP & Licensing BV
  • DSM IP Assets BV
  • EGIS Pharmaceuticals PLC
  • Epping Hermann Fischer Patentanwalts GmbH
  • Holme Patent A/S
  • Infineum UK Ltd
  • Kao Germany GmbH
  • Kolster Oy Ab
  • Maiwald Patentanwalts GmbH
  • Metayage IP Strategy Consulting LLP
  • Müller Fottner Steinecke Rechtsanwalts- und Patentanwaltspartnerschaft mbB
  • Nestle Research Centre
  • Renishaw plc
  • Rolls-Royce plc
  • Sanofi Aventis Groupe
  • SHL Group AB
  • Sony Europe Limited
  • Stratagem IPM Ltd
  • Syngenta
  • Williams Powell
  • Zacco Denmark A/S

Lovely!

JoeGaal, Senior Patent Attorney, Syngenta Ltd