European Patent Convention, Art. 69, Interpretation Protocol; Patent Act 1910, Art. 30(2) (former) - "Contact Lens Liquid"

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1 28 IIC 748 (1997) NETHERLANDS European Patent Convention, Art. 69, Interpretation Protocol; Patent Act 1910, Art. 30(2) (former) - "Contact Lens Liquid" 1. In order to determine the scope of protection of a patent, that part of the documents of the patent grant may be included which is accessible to third parties if the ordinary person skilled in the art, after reading the description and the drawings of the patent, still has reasonable doubt as to the interpretation of the patent claims. 2. Generally, the patent owner is accountable for the ambiguity caused by inaccurate formulation of the patent specification. Under certain circumstances, however, the accessible part of the documents of the patent grant may be considered for the patentee's benefit. Decision of the Supreme Court (Hoge Raad) January 13, 1995 Ciba Geigy AG v. Oté Optics B.V From the Facts: The following decision concerns European Patent No , owned by Ciba Geigy, for a process to produce contact lens liquid, with the priority date of December 21, After the opposition procedure, the patent was also granted for the Netherlands on November 27, The main patent claim reads as follows: Process to disinfect and cleanse contact lenses for the human eye, by which, during the first period of time, a solution of hydrogen peroxide is put on the contact lens to influence it and following that, during a second period of time, the hydrogen peroxide which is clinging on and/or absorbed by the contact lens is split into water and oxygen under the influence of a catalyst, characterized in that the hydrogen peroxide solution covering the contact lens after the first period of time is a table salt solution according to the concentration of eye fluid and containing catalase. Patent Claim 2 reads: Process according to Claim 1 characterized by a table salt solution containing catalase in which a mixture is used consisting of at least 100 to 1,000 volume units of an about 0.8 to 1 % table salt solution and one volume unit of a high concentrated catalase solution usual in the trade. The product of Oté Optics at issue is a contact lens liquid which contains about 0.13 % table salt, about 0.20 % phosphate, about % glycerin as well as catalase, and which has the same osmotic pressure as eye fluid (and which, therefore, is isotonic). Ciba Geigy issued a summons against Oté Optics in summary proceedings before the District Court of The Hague on November 20, and December 3, 1991, that it cease and desist from infringing the patent. At the court of first instance proceedings, Ciby Geigy maintained that the wording "a table salt solution corresponding to the concentration of eye fluid" of the main

2 claim of the patented invention describes a solution which is isotonic. As the use of an isotonic table salt solution was considered by the President of The Hague District Court as essential for the patented invention, the wording "table salt (solution)" could not be considered superfluous. Patent infringement was denied on January 14, In the appeal by Ciby Geigy, the complaint was based on the assertion that the wording of the main patent claim as cited above is to be understood as "a solution which contains table salt and which is isotonic." According to Ciba Geigy, the essence of the patented invention consists of the application of an isotonic solution with catalase to neutralize a hydrogen peroxide solution which has been used for cleaning contact lenses. This interpretation of the patent was rejected by The Hague Court of Appeals on October 7, The argument of Ciba Geigy based on the patent grant documents was not admissible, according to the court of appeals, as it would follow from Art. 69 of the European Patent Convention that third parties do not have to consider the documents of the patent grant. Similarly, the additional argument of Ciba Geigy that the main claim should not be interpreted as merely a solution with about 0.9 % table salt was dismissed by the court of appeals, because, otherwise, the second claim of the patent, referring to the application of a solution with about % table salt, would go beyond the main claim. Finally, the court of appeals determined that the ordinary person skilled in the art would read the description of the patent with the wording of the main claim as cited above to be a solution with about 0.9 % table salt. From the Opinion: Ciba Geigy complains that the court of appeals did not determine the essence of the patented invention; at the least, in as far as it did apply this standard, it has rendered an incomprehensible decision. This Court will first consider this complaint, as it requires a closer look at the question of the interpretation of patents by the Dutch courts according to the purpose of the provisions in Art. 30(2) Patent Act and Art. 69(1) European Patent Convention (EPC), and the corresponding Interpretation Protocol. It was stated by this Court on January 27, 1989 (1989 NJ, No. 506) 1 that the opinion developed in Dutch case law before the application of the Patent Act of January 12, in short, not the literal wording of the patent specification, but that which is considered as the essence of the patented invention is determinative - could also be used as a starting point after the entry into force of that Act. This must be done, however, with due observance to the requirement contained in Art. 30(2) Patent Act that the exclusive right "shall be determined by the terms of the claims of the patent specification, with the description and the drawings serving to interpret those claims." Consequently, as has been concluded in that decision, the purport of that provision is to pursue a middle course between two extremes, as mentioned in the Interpretation Protocol to Art. 69 EPC, and to combine, thus, "fair protection for the patentee" with "a reasonable degree of certainty for third parties." These two extremes are described in the first two sentences of the Protocol as follows: Article 69 should not be interpreted in the sense 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. Neither should it be interpreted in the sense 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 patentee has contemplated.

3 If one applies the above-mentioned opinion developed in Dutch case law according to Art. 30(2) Patent Act, one also has to explore the essence of the invention for which protection is sought by interpreting the claims of the patent specification in relation to the description and the drawings - in other words, the inventive thought behind the wording of the claims - in order to avoid an interpretation which is exclusively based on the literal meaning of the wording and which may, therefore, be either too restricted, or unnecessarily broad, for reasonable protection of the patent owner. This point of view, however, does not indicate the method for finding a middle way between reasonable protection for the patent owner and reasonable certainty for third parties, as stated by the Protocol. A court which has to interpret the claims of the patent specification will also have to consider whether the result of its investigation sufficiently warrants certainty for third parties. This latter point of view will justify a restrictive interpretation which is more closely related to the wording of the claims, in the sense that, in principle, the patent owner is accountable when there is lack of clarity for the ordinary person skilled in the art who wants to demarcate the scope of the patented invention. However, the nature of the case involved should be taken into account, including the innovative extent of the patented invention. The consideration in the decision of January 27, 1989, as cited above, that the opinion developed in former case law can still be taken as a "starting point" has to be understood in conformance with the determinations made here. In that respect, this consideration is in accordance with the purpose of Art. 69(1) EPC and the corresponding Protocol. The complaint by Ciba Geigy is to be dismissed insofar as it contains a different opinion on the interpretation of a patent. The court of appeals did investigate the basis of the solution offered by the patented invention for the ordinary person skilled in the art, considering the description of the patent, as well as its "surprising effect." Based on the result of this examination, the court concluded that the ordinary person skilled in the art would interpret from the wording in the main patent claim at issue that there is "a solution with about 0.9 % table salt." Also, the court of appeals considered that Ciba Geigy no longer asserted that the product at issue with respect to its components would constitute an equivalent to the patented invention and, thus, infringe the patent. These considerations of the court of appeals do not reveal an incorrect opinion of law. Another complaint of Ciba Geigy referred to the determination of the court of appeals that the conclusion - namely that the hydrogen peroxide on the contact lenses dissolves faster and more thoroughly with the addition of catalase - does not "touch upon" the dispute between the parties. Herewith, the court of appeals has only stated that the application of catalase in itself, i.e., without respect to the components of the solution containing catalase, is not protected by the patent and that this is not disputed. Ciba Geigy also complained that, according to the court of appeals, third parties do not have to consider the patent grant documents in order to interpret the patent. Summarizing the reasoning of the court of appeals, it results in the opinion that the documents of the patent grant (the part which is accessible to third parties) may be used - to a certain extent - against the patent owner, but never for an interpretation of the patent which is favorable to the patent owner and contested by the party allegedly infringing the patent. The court of appeals concludes this from the provision of Art. 69 EPC relating to the requirement of certainty for third parties. That complaint is justified insofar as the opinion of the court of appeals goes too far in its general validity. The purpose of Art. 69(1) EPC as determined by the corresponding Protocol offers, indeed, (also) reasonable certainty for third parties. But that purpose does not mean that the information in the grant documents, to the extent it is accessible for third

4 parties, may never be used for an interpretation of the patent which is favorable to the patent owner. On the other hand, for there to be reasonable certainty for third parties, restraint is required when applying arguments to benefit the patent owner which are derived from the documents of the patent grant. Clarifying information from the public part of the documents of the patent grant may only be used if the court is of the opinion that, even after studying the description and the drawings, an ordinary person skilled in the art would still have reasonable doubt as to how the contents of the claims should be understood. It also should be taken into account that ambiguities, which are caused by inaccurate formulation of the patent specification, are generally at the risk of the patent owner. The justification of the complaint, however, does not lead to a reversal of the judgment, as the court of appeals has investigated the documents of the grant as well - in its opinion as obiter dicta - and concluded that during the granting procedure (also) the European Patent Office and Ciba Geigy were of the opinion that the wording "a table salt solution corresponding to the concentration of eye fluid" in the main patent claim is to be interpreted as "an (isotonic) table salt solution with a volume unit of about 0.9 % table salt."... The court of appeals did not imply that, during the granting procedure, Ciba Geigy waved the application of a version in which the solution contains catalase, but less than 0.9 % table salt. This conclusion by the court of appeals only follows from the difference in the wording of patent Claims 1 and 2. The final complaint of Ciba Geigy fails because the courts are not required to be instructed by experts. H.E.R. Comment: (1) If all Supreme Courts of countries which have ratified the European Patent Convention would elaborate their case law on the interpretation of patents as the Dutch Supreme Court (Hoge Raad) has done in the last 20 years, indeed, true harmonization of this important domain of patent law could some day be realized. It seems, however, that it will take quite some time for this development. Although the provision in the Dutch Patent Act to determine the scope of protection was adapted to Art. 69 EPC in 1977, in a judgment of January 27, 1989, the Supreme Court stated the general rule that former case law on the interpretation of patents, in particular the focus on the so-called "essence of the patented invention," as developed by Dutch case law until then, could still be considered valid. 2 With respect to certainty for third parties as required by the Interpretation Protocol to Art. 69 EPC, former case law as well as that particular judgment have met with severe criticism. 3 Despite this criticism, the Supreme Court confirmed its point of view in later decisions. 4 In a following judgment of February 20, 1992, The Hague Court of Appeals (Gerechtshof) indicated, carefully, but clearly enough, that an attempt to determine the "essence" of the patented invention is generally not adequate to determine the scope of protection of a patent; this opinion was particularly based on the interests of third parties in sufficient certainty. 5 (2) From this latter point of view, an important aspect of the present decision of the Dutch Supreme Court is the fundamental consideration that the patent owner is generally

5 accountable for lack of clarity of the patent specification. But it is revolutionary that the Supreme Court has also drastically reduced the significance of the essence of the patented invention for the interpretation of patents, by evaluating this essence to be only one of the factors which are (also) to be referred to when interpreting patent claims under consideration of the description and drawings. Herewith, it is not the patent specification but the essence of the invention which is deemed as a mere aid for the interpretation of patents. At the same time, a more liberal attitude is recommended in regard to so-called "pioneer patents." This fundamental reduction of the role of the patented invention's essence is, in my opinion, completely in conformance with Art. 69 EPC and the Interpretation Protocol. (3) The application of the above-mentioned principles seems to reveal that the present case is more likely to be regarded as an example of a somewhat inaccurate formulation of the patent specification. If a characteristic feature of the patented invention is described as "a solution of table salt corresponding to the concentration of eye fluid," then the patent owner implicitly declares that the patent does not cover table salt solutions of whatever kind. If that would have been desired and in compliance with the state of the art, certainly, a different definition in the patent claims would have been possible and more adequate. The claims of the patent specification at issue were also interpreted in the latter sense by The Hague Court of Appeals. (4) The Supreme Court shows a general willingness to recognize the problems patent owners have in formulating patent claims as unambiguously as possible, by referring to the documents of the patent grant for interpreting the patent specification. Contrary to that, The Hague Court of Appeals held that a possible reference to the documents of the patent grant is incompatible with the concept of certainty for third parties as required by Art. 69 EPC and the Interpretation Protocol, insofar as such reference is used to support an interpretation of the patent which is not readily (clearly) visible in the patent specification. Thus, the documents of the grant could only be used to the detriment of the patent owner. However, according to the Supreme Court here, a reference to the documents of the grant could also be used - in exceptional cases - to benefit the patent owner. Since neither Art. 69 EPC nor the Interpretation Protocol mentions the documents of the patent grant, let alone the function of these documents for the interpretation of patents, the opinion of The Hague Court of Appeals is, in my view, preferable. Not only Art. 69 EPC, but also the Interpretation Protocol, exclusively refers to the patent specification and, in particular, to the mutual effect between the claims on the one hand and the description and drawings on the other hand. 6 If the documents of the grant should be considered whenever there is ambiguity in the patent specification (when is there really no doubt at all?), certainty for third parties is considerably jeopardized, for consulting the documents of the grant could also create new interpretation possibilities. Admittedly, the information in the patent grant documents could provide a more basic picture as to the significance of certain features of the patented invention and, thus, support an interpretation of the patent as desired by the patent owner. The wording of Art. 69 EPC and the Interpretation Protocol, however, force the patent owner to clarify the desired scope of protection exclusively in the patent specification, and as unambiguously as possible in the claims. It would not be in conformance with the wording of Art. 69 EPC and the Interpretation Protocol if the documents of the grant would be investigated in all infringement proceedings. But also a possible reference to the documents of the grant "in exceptional cases" threatens to re-admit the "essence" of the patented invention in its full height through the backdoor, even though the present decision had reduced this essence, for the first time, to its proper size.

6 Until now, the Dutch Supreme Court has paid particular attention to certainty in its patent law interpretation. Twenty years after the entry into force of the European Patent Convention it should be time to afford certainty to third parties as well. Heijo E. Ruijsenaars * Published in 1995 Rechtspraak van de Week 176 (No. 30); for German-language version see 1995 GRUR Int Supreme Court, Meyn v. Stork, 23 IIC 529 (1992) - Extraction Device, with comment by RUIJSENAARS. 2 See supra note 1. 3 See, e.g., BRINKHOF, "Noten bij noten, Commemoration to Wichers Hoeth" 21 et seq. (1990); RUIJSENAARS, see supra note 1, with further references. 4 See Supreme Court, 1991 BIE Globe v. Dupont, with comment by STEINHAUSER, 1991 NJ 6854 (No. 169), with comment by VERKADE; Supreme Court, 1994 NJ 1823 (No. 387) - Gierpompinstallatie, with comment by VERKADE. 5 The Hague Court of Appeals, 24 IIC 832 (1993) - Epilady Netherlands III, with comment by RUIJSENAARS. 6 See also BRINKHOF, 1995 Ars Aequi 511, 518 et seq. * Mr.; Member of the Research Staff of the Max Planck Institute for Foreign and International Patent, Copyright and Competition Law, Munich.