The use of prosecution history in post-grant patent proceedings. Maria CRUZ GARCIA, Isabel FRANCO, João JORGE, Teresa SILVA GARCIA

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1 Question Q229 National Group: Title: Portugal The use of prosecution history in post-grant patent proceedings Contributors: Filipe BAPTISTA, Maria CRUZ GARCIA, Isabel FRANCO, João JORGE, Teresa SILVA GARCIA Reporter within Working Committee: Teresa TRIGUEIROS CRESPO Date: 2 April 2012 Questions The Groups are invited to answer the following questions under their national laws. 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? The following post-grant proceedings are available for a Portuguese patent: A- Administrative (before the Industrial Property Office) i) Modification of the decision (Article 23 of the Industrial Property Code (IPC)) on the initiative of the owner, a third party or the Industrial Property Office, within a term of two months after publication of the decision of grant. The file is referred for a higher decision, with information concerning the facts that have come to light and make it advisable to revoke the decision given. ii) Amendment or correction of non-essential elements (Article 25 IPC) on the initiative of the owner; iii) Limitation of the scope of protection of the invention by amendment of the claims (Article 101(5) and (6); Article 11(10) IPC) on the initiative of the owner. B- Judicial i) Judicial appeal The parties entitled to appeal against decisions of the Industrial Property Office are the applicant, the opponents (the Portuguese patent system includes a pre-grant opposition procedure after publication of the application, to which the applicant 1

2 may reply; after these adversarial proceedings, the file is examined, taking account of the allegations made by the parties) and also any party directly and actually affected by the decision; ii) Civil action concerning the validity and/or infringement of a patent, including actions concerning sufficiency of disclosure (Court of Commerce of Lisbon for pending actions and for new actions as from March 30, 2012, the Intellectual Property Court); iii) Criminal patent infringement action. C- Arbitration appeal and other extrajudicial alternative dispute resolution (voluntary) D- Compulsory arbitration in cases involving industrial property rights relating to reference medicinal products and generic medicinal products (Law No 62/2011 of 12 December). Regarding the Portuguese part of a European patent, the proceedings available are those indicated under A iii), B ii), B iii) and D. 2) In your country or region, may the prosecution history be taken into account for purposes of interpreting claim scope during post-grant proceedings? No. For the purpose of interpreting the scope of the claims, which determine the scope of protection of a patent, the elements extraneous to the claims are exclusively the description and the drawings (Article 97(1) IPC). The Portuguese patent system is a constitutive registration system. The Letters Patent document must contain the elements necessary for the perfect identification of the right to which they refer (Article 7(2) IPC). Thus, the Letters Patent contains the textual elements which define the scope of the right (the claims), the elements which disclose the invention and subsidiary serve to interpret the claims (the description and the drawings), the title of the invention (which cannot cover a different subject matter at the risk of nullity of the patent) and the abstract (which cannot be used either to define the scope of the invention or for interpretative purposes). The Letters Patent constitutes proof of the right. Thus, the Letters Patent is sufficient in itself for defining the right. The opinions, arguments and intentions of the applicant during the proceedings should not be taken into consideration for delimitation or interpretation of the claims of the patent. In fact, contrary to other systems, the configuration of the final text for which the patent is to be granted is within the power/duty of the Patent Office, that can delimit the protected matter, delete claims, drawings, phrases in the abstract or in the description, or change the title of the invention, if the applicant does not voluntarily proceed with these amendments; the Industrial Property Office can proceed with the amendments and publish the notice of the partial grant of the respective patent in the Industrial Property Bulletin (Article 69 IPC). Even at an early stage of the application proceedings, the examiner has the power/duty to delete on his own initiative any claims or wording that he considers as being fancy expressions used to designate the invention, both from the Letters Patent and from any publications to which the application gives rise (Article 66(5) IPC). From the consideration of the Portuguese legal system, emerges the possibility of the use of prosecution history for delimitation of the scope of the legitimate exercise of the 2

3 patent right, but not the scope of the patent, where the patentee clearly exceeds the limits imposed by good faith, morality and the social or economic purpose of the right (Article 334 of the Portuguese Civil Code) or in cases involving bad faith litigation. Prosecution history may be taken into account in post-grant proceedings as evidence for the purpose of objectively assessing the legality of the grant of the patent. 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? 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? iii. Does applicable prosecution history include only amendments to the claims, or does it also include amendments to any aspect of the disclosure? 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? v. Does it matter if the prosecution history has the effect of broadening the interpretation of the claim, versus narrowing it? 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? 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? d) Is the applicability of prosecution history limited to infringement proceedings where equivalents are an issue? e) Could prosecution history from a corresponding foreign application be considered in a post-grant proceeding in your jurisdiction? If so, under what circumstances? f) Is the use of prosecution history authorized by statute or by case law in your jurisdiction? g) Explain the policy reasons for considering prosecution history during the claim interpretation process. 3

4 If the answer to question 2 is no, please answer the following questions: h) Is the disallowance of use of prosecution history mandated by statute or by case law in your jurisdiction? There is no legal or judicial disallowance. What happens is that Portuguese law does not specify, either literally or by logical interpretation, the use of any elements other than those mentioned above in the reply to question 2. Some case law has covered the matter of claim interpretation. Specifically, in a judgment of the Tribunal da Relação de Lisboa (Second Instance Court) of 7 April 2011, CARLOS MARINHO, 108/08.4TYLSB.L1-8, the Court rejected the analytical method used in the appealed decision which followed the rule of interpretation laid down in civil law (Article 9 of the Civil Code), ruling as follows: Rather, in the interpretation of the claims, it is necessary to take into account the semantic, logical and technical senses of the words and the grammatical content of the sentence construction. In another judgment of the Tribunal da Relação de Lisboa, dated 17 September 2009, ONDINA CARMO ALVES, it is stated that the analysis of the requirements for application of the doctrine of equivalents should be based on the logical (not strictly literal) and objective interpretation (finding the declared intent should prevail over finding the intent of the patentee) of the contents of the claims of the protected invention, in accordance with the interpretative content of Article 1 of the Protocol on the Interpretation of Article 69 of the European Patent Invention. Thus, the approach followed is to not consider the intent expressed by the applicant during the application proceedings for the purpose of interpreting the claims. i) Explain the policy reasons for not considering prosecution history during the claim interpretation process. Although the preparatory working reports to the Industrial Property Code currently in force are not public and the preamble to the Decree-Law which approved it does not make reference to this issue, we believe that the reasons for this legislative option are implicit in the law. As mentioned above, the Portuguese patent system is a constitutive registration system. Letters patent constitutes proof of the right and contains the elements necessary for defining the scope of the right, thus conferring the legal certainty expected from a patent. 3) Assuming that at least some countries will consider foreign prosecution history as part of claim interpretation in their jurisdictions, does this have implications for how you would handle prosecution of a patent application in your country? Is this problematic? The fact that there are some countries where foreign prosecution history of patents is considered in the interpretation of the claims naturally creates the need to examine the interventions of the applicant at the patent office. Likewise, amendments to the application and the respective arguments should be made bearing in mind the impact that they may have in countries where foreign prosecution history is considered for the 4

5 purpose of interpreting claim scope. Thus, amendments, comments and arguments should be analysed and coordinated taking account of the legal provisions or current practices in the countries where the applicant seeks to obtain protection. 4) In your country or region, may a patent be invalidated in post-grant proceedings on the basis of the same prior art which was taken into account by the examiner of the patent office during prosecution of the patent? If so, may the patent be invalidated on the basis of the same prior art and the same argument used by the examiner or may the same prior art only be used if it is shown that there is a new question based on some other teaching or aspect of that prior art? Yes, the prior art taken into account by the examiner during prosecution of the patent can be used in post-grant proceedings to substantiate the invalidation of a patent, including on the basis of the same argument, since in accordance with Portuguese law, the grant of a patent implies a mere legal presumption of the requirements of grant (Article 4 IPC). Proposals for harmonization The Groups are invited to put forward proposals for the adoption of harmonized rules in relation to the use of prosecution history in post-grant proceedings. More specifically, the Groups are invited to answer the following questions without regard to their national laws: 1) Is harmonization of the applicability of prosecution history in post-grant proceedings desirable? The Portuguese Group of AIPPI considers that a progressive harmonization would be desirable with regard to the general matter of claim interpretation, the choice of elements to be used in this interpretation being of obvious relevance. Harmonization is especially desirable at European level, particularly as regards the national parts of European patents, in order to prevent the creation of a fragmented market. 2) Is it possible to find a standard for the use of prosecution history that would be universally acceptable? In view of the great diversity of solutions and approaches in the various legal systems, in order to find a universally accepted standard for the use of prosecution history it would be necessary to follow a minimum degree of harmonization. The Portuguese Group considers that such a standard should be governed by the principle of legal certainty, both for patentees and for third parties. Such a standard should not mean that third parties would be unduly burdened by having to examine prosecution history whenever they wanted to know the scope of patents in the area that they operate, nor should it create an obstacle to applicants when they are still working on the final format of the text in relation to which their patent will be granted. For this purpose, the use of prosecution history for interpreting claim scope should be kept to an absolute minimum, being of a perfectly defined exceptional nature. 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. 5

6 In view of the principle of certainty, it is advisable that prosecution history should only be considered for the purpose of interpreting claim scope in the case of documents containing express written declarations of withdrawal by the applicant, in patent infringement actions involving an obvious conflict between the clear and definitive intent of the applicant during prosecution of the patent and the way in which the patentee is exercising his right. National Groups are invited to comment on any additional issue concerning the use of prosecution history in post-grant proceedings that they deem relevant. The Portuguese Group considers that for reasons of legal certainty, claim scope should be determined taking account of the elements which serve as the basis for the grant of the patent, i.e. the claims themselves, the description and the drawings, keeping to an absolute minimum the use of prosecution history for interpreting the scope of the claims. SUMMARY For the purpose of interpreting the scope of the claims, which determine the scope of protection of the patent, the elements extraneous to the claims as provided by law are exclusively the description and the drawings. Prosecution history can be taken into account in post-grant proceedings as evidence, for the purpose of objectively assessing the legality of the grant of the patent. The Portuguese Group of AIPPI considers that a progressive harmonization would be desirable with regard to the general matter of the interpretation of claim scope, the choice of elements to be used in this interpretation being of obvious relevance. However, for reasons of legal certainty, it is considered that claim scope should be determined taking account of the elements which serve as the basis for the grant of the patent, i.e. the claims themselves, the description and the drawings, keeping to an absolute minimum the use of prosecution history for interpreting the scope of the claims. 6