You are standing on my property... I think

In a lecture delivered on November 4 to a class of Osgoode IP students, Lord Justice Jacob of the Court of Appeal for England and Wales provided an expert viewpoint of the ongoing debate revolving around the scope of patent monopolies.

By way of introduction, Lord Justice Jacob pointed to two points of view that have coloured interpretation of patent rights – the suspicious view of patents as an inhibition of trade, and the contrasting view of a patent being a reward for inventors’ efforts.  We do not have to look far to see these contrasting views – in the Canadian pharmaceutical marketplace these competing viewpoints are alive and well as innovators and generics constantly square off for a share of various areas of the market.

It is during these squabbles that courts are required to determine a patent’s scope by looking at the claims.  Interpretation of these claims, says Lord Justice Jacob, is what is causing problems.


In construing claims, courts around the world have taken one of two approaches.  The more restrictive approach is to say that a patentee is completely bound by the language of his claims.  If a claim requires two components in an invention to be “screwed” together, a defendant will not infringe if their corresponding two components are “glued,” “stapled,” or “nailed,” etc.  The second, more liberal view would say that there is a form of infringement here because, although a defendant is just outside a claim, she has taken the “pith and marrow” of the claimed invention.

The different approaches taken to construing claims has led to outcomes that have differed by jurisdiction.  Although article 69 of the European Patent Convention purports to declare a manner for claims construction through its protocol, the result is still a haze of uncertainty.  For example, in Germany, the courts regularly view claims as only guidelines when determining the extent of protection of a patent.  In the UK Catnic decision (Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183), the patentee developed a hollow beam as a support mechanism for use in construction.  The defendant prepared a similar beam, but argued they did not infringe since their beam was constructed slightly differently and thus did not fall within the exact wording of the claims.  The Court there developed the so-called 3-part “Catnic test” in order to find that the defendant infringed.

According to Lord Justice Jacob, this approach has been less than useful and has essentially been displaced.  In his view, the only question to be asked in these disputes is what the skilled man would understand the patentee to have meant, in view of what the claimed invention is for.

When it comes to the claim construction of patents we are dealing with a sophisticated art.  Patentees define their monopoly through patent claims and need to be careful to do so in a manner that protects all they have invented.  But according to Lord Justice Jacob, this protection will only be certain once an approach to claims construction can be agreed upon.

  1. I am uncertain whether a standard approach to patent construction can ever be agreed upon. However, perhaps the technique of statutory interpretation may very well be able to serve as a general guideline.

    Construing claims necessarily involves interpretation and different approaches to construing claims necessarily results in different outcomes.

    First possible guideline:
    In statutory interpretation, the legislature bears a significant role in that regard must at least minimally be paid to what they intended. Perhaps in claim construction, the patentee should be thought to have a similar role as well.

    Second possible guideline:
    In statutory interpretation, where legislation and case law are in conflict, there is a presumption that legislation trumps in so far as there is inconsistency. Could we perhaps use this mechanism here in relation to claims where the Plaintiff attempts to argue that other claims using similar words did not result in the interpretation the patentee is trying to support and that the patentee’s interpretation trumps in so far as there is inconsistency?

    Third possible guideline:
    Canadian courts have long endorsed a purposive approach, Driedger’s Approach to statutory interpretation “that words of an Act are to be read in their entire context and in their grammatical and ordinary sense, harmoniously with the scheme of the act and the intention of Parliament”. Perhaps, claim construction should also endorse this approach.

    The above demonstrates that there are three possible guidelines to the “sophisticated art” of claim construction. It seems however that there is no real standard. So perhaps instead of attempting to find a “standard” we should learn from the difficulties and issues statutory interpretation has faced and endorse Driedger’s approach as a guideline instead.

  2. Jon,
    I really like your post. The title is also excellent and reflects on the uncertainty of claim construction that European courts have created. I also agree with Gargi that achieving a uniform pattern of claim construction might be quite challenging.

    It is interesting to note that the courts in different jurisdictions[ Germany and UK are only one example] will interpret the language of the same patent, in accordance with the same law and yet their construction of the claims will differ substantially. In Improver Corporation and Others v. Remington Consumer Products Limited, both the German and the UK courts interpreted the claims in accordance with Article 69 of the European Patent Convention. The Convention states that an invention shall be taken to be that specified in the claims, as interpreted by the description and drawings in the specifications. Yet the two courts reached opposing views when interpreting the same set of claims. In this respect, I agree with Lord Justice Jacob that a consistent approach to claim construction among different jurisdiction is necessary. This would give clearer guidance to patentees as to how they should define their monopoly and how to meet the scrutiny of different countries.

    However, I wonder whether such uniformity among jurisdiction could be achieved. We have judges who disagree within the same court about what the law says, let alone judges across jurisdictions. Furthermore, as the Improver case illustrates, even if courts are bound by the same law, that is not a guarantee that they will interpret it in the same way. This is a proposition that Gargi clearly addresses in her comment.

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