The use of prosecution history in post-grant patent proceedings

Transcription

1 SPAIN Question Q229 Title: Spanish Group: The use of prosecution history in post-grant patent proceedings Antonio Castán (President) Alicia Arroyo Isidro José García Egea Patricia Koch Jorge Llevat Manuel Lobato Dulce Miranda Darío Mohammadian Santander Ignacio Ramón Questions: 1) What types of post-grant proceedings are available in your jurisdiction? Are post-grant proceedings available both at a patent office and at a court? In Spain, post-grant patent proceedings are not available at the Spanish Patent and Trademark Office (SPTO). As a general rule, the total or partial annulment of a patent, be it national or the Spanish validation of a European patent, may be attacked in the mercantile courts, either directly, by bringing an invalidity action, or indirectly, through a counterclaim in response to an infringement action brought by the patent holder. It is also possible to contest a decision by the SPTO in relation to a national patent in contentious-administrative court proceedings. 2) In your country or region, may the prosecution history be taken into account for purposes of interpreting claim scope during post-grant proceedings? Spanish Patent Act 11/1986 of 20 March makes no provision for whether the prosecution history of a patent should be taken into account for the purposes of interpreting claim scope during post-grant proceedings. However, there is Spanish case law which has examined this issue in an inconsistent manner both in respect of invalidity actions and within the context of actions for infringement by equivalence.

2 The basis for this is the doctrine of actos propios which is embodied in the old regula iuris, followed in Spain for centuries, venire contra factum proprium non valet ( Estoppel under the Anglo-Saxon tradition, Verwirkung in Germany)- However, as mentioned above, this case law is not uniform. In invalidity actions against a Spanish patent, some judgments (for example, the judgment of Vizcaya Court of Appeal of 24 April 2006) have taken into account the conduct of the patent holder (waiving claims or limiting the patent s scope) at the European Patent Office when prosecuting the European extension of the patent. Contrary to this, other judgments (for example, the judgment of Barcelona Court of Appeal of 18 September 2006) have found that this kind of conduct is due to reasons of convenience and does not imply any acknowledgment of a lack of novelty of the invention. In what concern to infringement actions, although the Spanish courts have broadly accepted the importance that the patent prosecution history might have when defining claim scope (judgments of Madrid Court of Appeal of 16 May and 1 December 2008, and of Barcelona Court of Appeal of 17 January 2008, confirmed by the judgment of the Civil Chamber of the Supreme Court of 10 May 2011), there are also rulings (judgment of Barcelona Court of Appeal of 30 October 2009) which explicitly state that there is no reason why resorting to the prosecution history should be rejected straightaway, but it should not be blindly observed either. If the answer to question 2 is yes, please answer the following questions: a) Please explain the types of prosecution history that may be considered. For example: i. Does applicable prosecution history include amendments, arguments, or both? Generally speaking, the cases refer to amendments made during the prosecution, but they do not exclude the arguments or statements put forward in that regard either. ii. Could applicable prosecution history include a limiting interpretation that is implied through the applicant s arguments, or would it include only explicit definitional statements? The actos propios doctrine, as established in Spanish case law, is very clear on the requirement whereby the statements must be unequivocal, clear, precise, conclusive, undoubted and must not reflect any kind of ambiguity. From that perspective, only explicit statements would have to be considered.

3 iii. Does applicable prosecution history include only amendments to the claims, or does it also include amendments to any aspect of the disclosure? There is nothing to prevent amendments to the disclosure from being taken into account, where appropriate. iv. Does it matter if the amendments and/or arguments are made to overcome prior art versus being made to address sufficiency or some other formal requirement? It should not, in principle, matter why the amendments or arguments are made. v. Does it matter if the prosecution history has the effect of broadening the interpretation of the claim, versus narrowing it? In cases of infringement, the way in which the prosecution history is used by the parties depends on their position in the proceedings: for the defendant, the prosecution history will usually always be a means by which to limit the interpretation of the claim. For the patent holder, on the contrary, it will always be interpreted as a means by which to broaden the scope of the claims. Therefore, the effect of broadening or narrowing the interpretation of the claim depends on how it is viewed by each party. b) Does the applicability of prosecution history depend on when the prosecution history occurred? For example, does it matter if a particular statement by an applicant was made during initial examination as opposed to during a later invalidity proceeding? There is no case law on this difference or on whether the applicability depends on when the prosecution history occurred, but taking into account the fact that the actos propios doctrine has been accepted on some occasions, there is no reason why the degree of importance of the statement should depend on when they were carried out. That said, Spanish case law on this subject in general has deemed the pleadings or dialectical arguments used by lawyers in legal proceedings irrelevant. The degree of relevance of the statements made in invalidity proceedings therefore might sometime depend on the context in which they are made. c) Does the applicability of prosecution history depend on the type of post grant proceeding, or on the authority before which the proceeding is held? For example, would prosecution history be more applicable in an infringement action at court than in a post-grant patent office invalidity proceeding?

4 As we have indicated above, in Spain both actions would be handled by the courts, and therefore such a difference cannot be distinguished. d) Is the applicability of prosecution history limited to infringement proceedings where equivalents are an issue? In most cases, courts have seen the prosecution history in infringement proceedings for equivalence, especially those that require it as a prerequisite for determining the scope of patent protection. Nevertheless, it has also been considered in patent invalidity proceedings. e) Could prosecution history from a corresponding foreign application be considered in a post-grant proceeding in your jurisdiction? If so, under what circumstances? In principle, there is no provision explicitly preventing such a consideration. In general, the prosecution history of a granted European patent can be considered in post-grant proceedings relating to the Spanish part of said European patent. Since the national validation process does not always consider substantive aspects, the prosecution history is considered in post-grant proceedings as the only means by which to understand the substantive developments of the search and examination procedure. However, no case law has been identified wherein any other type of corresponding application/patent s prosecution history has been considered (such as from the same family). Although a party may always submit such considerations as arguments, the complexity of different prosecution procedures, under different jurisdictions, necessarily implies that the circumstances of a different case cannot be automatically translated to a present national case, and must be assessed on a case-by-case basis. f) Is the use of prosecution history authorized by statute or by case law in your jurisdiction? As indicated, there is no Spanish Act that regulates patent "prosecution history estoppel". There is likewise no consistent case law on the issue since the actos propios doctrine (venire contra factum proprium non valet) regarding infringement and invalidity proceedings is handled by the courts, giving rise to different judicial results depending on the circumstances of the case.

5 It can be inferred from this case law that as far as the Spanish courts are concerned, the actos propios doctrine alone will not suffice for the purposes of supporting a decision, but it could constitute another piece of evidence. g) Explain the policy reasons for considering prosecution history during the claim interpretation process. In the cases in which Spanish case law has used the prosecution history to interpret the claim, it has done so from the standpoint of the actos propios doctrine. However, it makes the application of this doctrine subject to the prior investigation of the meaning that should be attributed to the deletion or waiver of an item in the claim as filed. The applicant s waiver of broader protection during the prosecution of the patent, only to subsequently, following registration, seek to extend the scope of protection to include aspects that were removed due to the restrictions included by the applicant himself has been deemed contrary to the aforementioned doctrine (v.g. judgment of Madrid Court of Appeal of 1 December 2008). If the answer to question 2 is no, please answer the following questions a) Is the disallowance of use of prosecution history mandated by statute or by case law in your jurisdiction? b) Explain the policy reasons for not considering prosecution history during the claim interpretation process. Proposals for harmonization: 1) Is harmonization of the applicability of prosecution history in post-grant proceedings desirable? Prosecution history in post-grant proceedings clearly refers to the general principle that has been present in many European countries laws for centuries: venire contra factum proprium nulli conceditur. This doctrine constitutes a requirement of good faith and is a result of the need to observe coherent conduct in legal affairs. From that standpoint, all harmonization must be welcomed. 2) Is it possible to find a standard for the use of prosecution history that would be universally acceptable? It will not be easy to find a universally acceptable standard. In that regard, the actos propios doctrine itself (the so-called Estoppel or Verwirkung ) generally lacks a

6 uniform legal definition for all countries, and its construction is eminently jurisprudential. If this is the case for any sphere of law, it is unlikely that it will be possible to find a specific standard for the field of patents. 3) Please propose a standard you would consider to be broadly acceptable for a) the types of prosecution history that should be considered, if any; and b) the type of proceeding and circumstances in which it should be considered. Spanish case law concerning the actos propios doctrine has given rise to at least two requirements which could be exported as universally acceptable standards: (i) on the one hand, the behaviour, i.e. the statements or conduct of the patent holder during the prosecution of the patent, must be unequivocal, conclusive, undoubted and lacking in ambiguity; and (ii) on the other hand, those deeds must have been of legal significance in the sense of creating, defining, amending, distinguishing or clarifying a legal status Verwirkung, position or situation. SUMMARIES Q.229. SPAIN. In Spain, post-grant proceedings are only available at the courts. Spanish law makes no provision for whether the prosecution history of a patent should be taken into account for the purposes of interpreting claim scope during post-grant proceedings. However, there is Spanish case law which has examined this issue in an inconsistent manner both in respect of invalidity actions and within the context of the application of infringements actions by equivalence. This case law is embodied in the old regula iuris which has been followed in Spain for centuries: venire contra factum proprium non valet. This actos propios doctrine ( Estoppel under the Anglo-Saxon tradition, Verwirkung in Germany) constitutes a requirement of good faith and is a result of the need to observe coherent conduct in legal affairs. It can be inferred from this case law that as far as the Spanish courts are concerned, the actos propios doctrine alone might not suffice for the purposes of supporting a decision, but it could constitute another piece of evidence. Q.229. ESPAGNE. En Espagne, les procédures post-concession ne peuvent être exercées que devant les Tribunaux. Dans le cas d une procédure postérieure à la concession, la loi Espagnole ne prévoit pas de prendre en compte le dossier obtention d un brevet comme élément d'interprétation pouvant être utilisé dans le cadre d une revendication. Cependant, une jurisprudence espagnole a examiné cette question d'une façon incompatible à la fois en

7 ce qui concerne les actions de nullité et dans le cadre de l'application de l'action d infraction par équivalence. Cette jurisprudence est reflétée dans la regula iuris qui a été suivie en Espagne pendant des siècles: venire contra factum proprium non valet. Cette doctrine constitue une exigence de bonne foi et résulte de la nécessité d adopter un comportement cohérent dans les affaires juridiques. Dans la mesure où les tribunaux espagnols sont concernés, il peut être déduit de cette jurisprudence que la doctrine des "actos propios" ( Estoppel, Verwirkung ) ne pourrait pas seule suffire au fondement et au soutien d une décision. En revanche, elle pourrait constituer un élément de preuve complémentaire. Q.229. SPANIEN In Spanien sind Änderungen nach Erteilung nur vor den Gerichten verfügbar. Das spanische Recht regelt nicht, ob der Verlauf eines Patenterteilungsverfahrens für die im Rahmen eines nach der Erteilung erfolgenden Verfahrens stattfindende Auslegung der Ansprüche berücksichtigt werden sollte. Jedoch gibt es spanische Rechtsprechung, die diese Frage geprüft hat, und zwar in uneinheitlicher Weise sowohl was Löschungsklagen als auch Anträge wegen äquivalenter Verletzung anbelangt. Diese Rechtsprechung ist in den alten Rechtsregeln des römischen Rechts verkörpert, denen in Spanien seit Jahrhunderten gefolgt wird: venire contra factum proprium non valet (man darf sich nicht in Widerspruch zum eigenen Verhalten setzen). Bei diesem Grundsatz handelt es sich um eine Gutwilligkeitsanforderung, die sich aus der Notwendigkeit ergibt, in Rechtsangelegenheiten kohärentes Verhalten an den Tag zu legen. Aus der genannten Rechtssprechung lässt sich schließen, dass spanischen Gerichten der eigenes Verhalten - Grundsatz allein möglicherweise nicht genügen würde, um darauf eine Entscheidung zu stützen, dass er aber ein zusätzliches Argument darstellen könnte. AC/EJT/::ODMA\PCDOCS\GD\ \2