Congress Gothenburg Plenary Session Question Q189: Amendment of patent claims after grant (in court and administrative proceedings, including re-examination proceedings requested by third parties) Tuesday, 10 October 2006 (14.00 17.00) The meeting was chaired by Mr. Jochen BÜHLING, Deputy Reporter General. He opened the meeting and explained its structure. Before the working meeting, there would be two presentations, one given by Dr. Marina BLAZE, representing the European Patent Office, who would present the amendments to the European Patent Convention made following the 2000 Munich Treaty. Secondly, Mr. Mike KIRK, the Executive Director of AIPLA, would speak about recent draft amendments to US patent law. Each of these two speakers then gave a particularly full presentation which was followed by applause. After a break, Mr. Nicolaï LINDGREEN (Denmark), Assistant Reporter General, introduced question Q189 by presenting the group reports and the main problems raised by the amendment of patent claims. He stated that it was frequently found in practice that the protection enjoyed by a patent which had been issued was too wide in view of prior rights subsequently disclosed, which could lead to it being invalidated, whereas if its field of protection were more limited it would not be possible to dispute its validity. The question which therefore arises is whether the patent proprietor should not be given the option to amend the scope of his title or whether, on the contrary, because of the demands of third party certainty, it is necessary to retain the patent in the same state in which it was granted, in other words to make it immutable and incapable of being amended. The countries of the Munich European Patent Convention also recognized the utility of amending the claims of the granted patent while introducing it into the European Patent system by means of the review of the European Patent Convention which took place in 2000. The Chairman of the meeting introduced the Working Committee. The Chairman of the Committee was Mr. Jan D HAEMER (Switzerland), the Vice Chairman was Mr. Andrew MEUNIER (USA), the Secretary was Mr. Stephane PALIX (France) and the second Vice Chairman was Mr. Hirihioto KATSUNUMA (Japan). After a reminder about the voting rules, the Chairman of the meeting invited Mr. Jan D HAEMER, the Chairman of the Working Committee, to speak. Mr. D HAEMER thanked Mr. LINDGREEN, Assistant Reporter General, for his particularly full summarizing report. The Chairman of the Committee stated that there had been a broad consensus in favour of accepting the possibility of amending patent claims after a patent has been granted, but that certain questions could still give rise to discussion. He then presented paragraph 1 of the draft resolution, which did not give rise to any comment from the members of the AIPPI. Mr. BÜHLING put it to the vote and this paragraph was adopted almost unanimously. 1/8
The Chairman of the Committee then presented paragraph 2 of the draft resolution, which laid down the principle of prohibiting the extension of the scope of the patent in the event of any amendment of the claims. Mr. Marcelino CURELL (Spain) suggested that an amendment be made to the wording of paragraph 2 of the draft resolution. He wanted this paragraph to be replaced by the sentence: Any amendments made to the claims of a patent after it has been granted must always involve restricting its scope. He considered that it was necessary to state this principle explicitly in this way so as to maintain third party rights and avoid any risk of the AIPPI s position being inconsistent with the European Patent Convention. Mr. Peter MINLE (Canada) asked whether the Committee had considered the scenario in which a number of amendments were made at the same time to the wording of a patent. He considered that it was possible to imagine a scenario in which some of the features of a claim were amended in such a manner as to extend its scope, even if the protection granted overall by such a claim was limited. He considered that the proposal from the Spanish group had to be rejected. Mr. Hans HAHN (South Africa) also opposed the amendment suggested by the Spanish group, stating that amendments could sometimes serve to clarify the scope of a patent without necessarily extending its scope. Furthermore, the proposal by the Spanish group would exclude such an amendment, which both serves the interests of the patent proprietor but also the interests of third parties who would then be better informed as to the scope conferred by the patent. Mr. Giovanni GOZZO (Sweden) noted that the resolution did not appear to tackle the scenario of amendments which do not extend the claims but nevertheless change their scope. He asked the Chairman to consider that question. Mr. BÜHLING, after noting that nobody else wished to comment on the amendment proposal made by the Spanish group, put it to the vote. The amendment was rejected by a large majority. The full paragraph was then put to the vote and was adopted by a very large majority. The Chairman of the Committee then went on to paragraph 3 of the draft resolution and stated that this paragraph laid down the conditions which an amendment had to comply with in order to be accepted. Mr. David MERRYLEES (Brazil) proposed an amendment consisting of replacing the expression the description by the disclosure. He argued that the wording proposed by the Committee was inconsistent with the review of the European Patent Convention. Mr. Jan D HAEMER (Switzerland, Chairman of the Committee) considered that such wording was not appropriate as it risked including the summary of the invention also in the medium of the amended claim. Mr. KIM (South Korea) suggested that it was necessary to introduce an alternative, not require a combination. This comment met with approval among the Working Committee, who took the view that it was a drafting amendment which did not need to be discussed further. 2/8
Mr. Zsolt SZENTPETERI (Hungary) thought that paragraph 3 gave too much freedom to the patent proprietor. He emphasized that amended claims had to derive from the basic claims and he therefore opposed the suggestion by the Korean group. The Hungarian group considered that the ideal solution would be to delete the reference in paragraph 3 to the description and the drawing. Mr. LINDGREEN commented that this issue came under paragraph 5 of the resolution rather than paragraph 3. Mr. SZENTPETERI replied that that was correct but that there had to be no inconsistency between paragraph 3 and paragraph 5 of the resolution. That was why he was already intervening on this point. Mr. BÜHLING proposed that the amendments be voted on. The amendment proposed by Mr. KIM was adopted. However, the amendment proposed by Mr. MERRYLEES was rejected. Finally, Mr. BÜHLING put the whole of paragraph 3 to the vote and it was adopted by a very large majority. The Chairman of the Committee presented paragraph 4. Mr. Robert MITCHELL (Canada) intervened to query whether this paragraph did in fact correspond to the wording of the question as put to the AIPPI, which appeared to relate to the amendment of claims, rather than the deletion of claims as provided for in paragraph 4. No other person wished to intervene on the subject. Paragraph 4 was put to the vote, and was adopted by a very large majority. Mr. Jan D HAEMER then presented paragraph 5 which related to the manner in which possible amendments could be made to a claim. The Hungarian group renewed its criticism of this paragraph and suggested that the reference to the description of the patent be deleted. The Chairman of the Committee asked why the Hungarian group only wished to delete the reference to the patent description and not to the patent drawings. The Hungarian group replied that the drawings did not change in themselves and that, in actual fact, it was impossible to distinguish between the various features of a drawing. On the other hand, the patent description was sufficiently complete and frequently contained features which were not claimed in the original claims and it would constitute too great a risk to third parties to permit the patent proprietor to amend the claims on the basis of the description and not of the original claims. Mr. Fernand DE VISSCHER (Belgium) proposed the deletion of the second part of paragraph 5, which in fact merely constituted a repetition of paragraph 2 of the resolution which had already been adopted. Mr. Geoffrey BAYLISS (UK) considered that the deletion requested by the Hungarian group was undesirable. He noted that if the AIPPI resolution were to delete the reference to the patent description in paragraph 5, that would lead to a situation in which patent proprietors 3/8
would file particularly complex claims and would therefore not contribute towards increasing but rather towards reducing the security of third parties. Mr. MERRYLEES intervened to approve the suggestion by the UK group. Mr. Alain GALLOCHAT (France) supported Mr. MERRYLEES s comments. He noted that, if the amended claim were to be based only on the original claim, that raised the question of whether it was appropriate to make such an amendment. He also proposed that the wording of paragraph 5 be amended to make it compatible with the new version of paragraph 3. Mr. GOZZO approved Mr. GALLOCHAT s comments. The Dutch group intervened to ask the Chairman of the Committee what had led the Committee to propose two paragraphs, 3 and 5, which seemed to deal with the same problem. Mr. D HAEMER (the Chairman of the Committee) stated that paragraph 3 spoke of the need to maintain the claim by means of the description or the drawings. Paragraph 5 on the other hand, was about the manner in which this amendment was made. Mr. KIM intervened to oppose the Hungarian proposal to delete the reference to the description from paragraph 5. However, he thought that Mr. DE VISSCHER s proposal to delete the second part of paragraph 5 was reasonable and he approved it. Mr. BÜHLING, the Chairman of the Meeting, submitted various amendments to a vote. Mr. DE VISSCHER s amendment, consisting of the deletion of the second part of paragraph 5, was rejected. Mr. GALLOCHAT s proposal to introduce an alternative into paragraph 5 was approved. However, the proposal by the Hungarian group to delete the reference to the description was rejected by a very large majority. Subsequently, paragraph 5 as a whole was put to the vote and was adopted by a very large majority. The Chairman of the Committee then set out the purpose of the subject matter of paragraph 6 of the draft resolution, which referred to the possibility of correcting obvious errors. This correction related to obvious errors made, in particular, by the patent proprietor. Paragraph 7, which also related to the possibility of amending errors, applied to printing errors made by the authority responsible for issuing patents. Mr. Sebastien PINCKAERS (The Netherlands) noted that paragraphs 6 and 7 of the draft resolution did not correspond to the Munich Convention as amended in 2000 and he considered that those two paragraphs should not be adopted by the AIPPI. The South Korean delegate, Mr. KIM, proposed adding a proviso to these paragraphs relating to the consequences of the amendments, namely that these amendments did not extend the protection conferred by the claims. Mr. LINDGREEN intervened to say that, although such a proviso could in fact be justified as far as paragraph 6, relating to obvious errors committed by the patent proprietor, was concerned, it did not however appear justified if the purpose of the amendment was to correct ordinary printing errors. 4/8
Mr. Pierre VERON (France) suggested to the Chairman of the Meeting that he should consult the Chairman of the Committee on the comments made by the Dutch and South Korean speakers. Mr. MITCHELL asked whether it was appropriate to leave the possibility of amending the claims just to requests for amendments made by the patent proprietor whereas, for example, printing errors result from an act by a third party, namely the authority responsible for granting the rights. Mr. MERRYLEES asked about the extent of the expression obvious error. He recalled that there were countries which had several official languages and that, in such circumstances, it was possible for errors to result from a question of translation. In his view, only such an error would constitute an obvious error, but correcting it could lead to extending the scope of a claim. Furthermore, he considered that there was no reason in this scenario to oppose an enlargement of the scope of a claim where a simple translation error is concerned. Mr. MITCHELL intervened to suggest that paragraph 6 of the draft resolution be amended by deleting the reference to the patent proprietor. He considered that the request to amend patent claims because of obvious errors should not be limited just to the patent proprietor but that third parties could also have an interest in doing so. Mr. Peter SANDE (Sweden) stated that this possibility of action available to third parties was provided for by paragraph 9 of the draft resolution. Mr. DE VISSCHER considered that a clarification needed to be added to paragraph 7, indicating that this possibility of correcting printing errors applied even if it extended the subject matter of the patent. Mr. D HAEMER, the Chairman of the Committee, noted that the amendment of paragraph 6 by adding a proviso prohibiting the extension of the scope of the protection of the amended claim did indeed solve the problem of how to interpret paragraph 7 and it was not necessary in the circumstances to have the amendment proposed by the group. In any case, he opposed the draft amendment proposed by Mr. MITCHELL which was intended to delete the reference to the patent proprietor in paragraph 6. Mr. BÜHLING, the Chairman of the meeting put various amendments to a vote. The amendment limiting the amendments to those which did not extend the scope of the patent in paragraph 6 was rejected by a large majority. Likewise, Mr. MITCHELL s amendment was rejected by a very large majority (75% of the votes cast were against that amendment). Mr. BÜHLING then put paragraph 6 as a whole to the vote and it was adopted by a very large majority. Finally, Mr. BÜHLING put the amendment of paragraph 7, proposed by the Belgian group, to a vote. That amendment was rejected. Paragraph 7 was then adopted by a very large majority (91%). 5/8
The Chairman of the Committee, Mr. D HAEMER, then presented paragraph 8 which stated that the possibility of requesting the amendment of the claims after the patent had been granted had to be reserved to the patent proprietor alone. Mr. GALLOCHAT intervened in his own name. He asked whether it would not be useful to use the same expression, namely the patent proprietor instead of patentee which appears in paragraph 8. Mr. François CURCHOD (Switzerland), also acting in his own name, asked whether it was useful to provide the adjective individual in this paragraph when speaking about the claims. Mr. LINDGREEN explained that the purpose of this adjective was to exclude the idea of deleting a claim from the concept of amending it. That was why the draft resolution spoke about the amendment of an individual claim. Mr. BÜHLING, noting that nobody else wished to speak about this paragraph, put it to the vote and it was adopted by a very large majority. The Chairman of the Committee then explained paragraph 9. That paragraph did not give rise to any comment on the part of the members. It was therefore put to the vote and was adopted by a very large majority. The same procedure was adopted for paragraph 10, which was also adopted without discussion. The Chairman of the Committee intervened to present paragraph 11 of the draft resolution, which dealt with the effects of the amendment. According to the draft resolution, that amendment would have retroactive effect. However, in order for that retroactive effect to be fully effective in the event of infringement, an infringement had to apply with regard to both versions, the original claims and the amended claims. The Argentinean delegate, Mr. Frederico AULMANN (Argentina) intervened to suggest that the reference to this combination be deleted. He considered that, if the AIPPI agreed to grant ab initio effect to the amendment of the claim, it was sufficient for the infringement to be carried out as regards that new claim. Maintaining the cumulative requirement would then risk creating serious interpretation problems. Mr. MEUNIER, a member of the Committee, recalled that this question had been discussed vigorously at the meetings of the Committee. He stated that legal systems existed in which it was possible to amend claims by enlarging them. Only a cumulative requirement would prevent such an enlargement from having retroactive effect. This accumulation made it possible to maintain the legitimate rights of third parties and it was therefore necessary to maintain the working of paragraph 11 as proposed by the Committee. Mr. MERRYLEES intervened to approve the amendment suggested by the Argentinean group. He noted that the principle submitted by the AIPPI consisted of stating that the amendment must not enlarge the scope of the patent. Under the circumstances, he saw no reason for this cumulative requirement. Mr. LINDGREEN noted that amendments could sometimes, without enlarging the scope, have the effect of changing it. The cumulative requirement prevented a person who had commenced a non-infringing operation prior to the amendment of the patent from being accused of infringing a new claim when he could not have known of this amended claim. Furthermore, this cumulative requirement was clearly affirmed in the discussions at the 6/8
Committee meetings and he therefore opposed the amendment proposed by the Argentinean group. Mr. Wouter PORS (The Netherlands) intervened to recall that it had been stated that some errors could be amended while leading to the scope of the patent being enlarged. This applied in particular to printing errors. He therefore requested this paragraph 11 as proposed by the Committee be retained. Mr. Denis MONEGIER DU SORBIER (France) noted that the expression claims as granted could present an interpretation problem as, in his view, it was the published version of the amended claims which had to count. The question which therefore arose was the date from which that amendment would take effect because there could be differences between the grant dates and the publication dates. He asked the Chairman of the Committee to clarify the Committee s position on this question. Mr. PALIX, a member of the Committee, stated that it was the Committee s intention to have a rule which was as favourable as possible to the patentee, who should not suffer as a result of publication delays. Mr. KIRK (USA), opposed the amendment proposed by the Argentinean group and considered that it was appropriate to maintain the cumulative requirement as provided for by the draft resolution. Mr. BÜHLING therefore put the Argentinean group s amendment to a vote. That amendment was rejected. Subsequently, the amendment proposed by Mr. MONEGIER DU SORBIER, consisting of adding after the expression as granted when published was put to a vote. That amendment was also rejected. The whole of paragraph 11 of the draft resolution was therefore put to a vote and was adopted. The Chairman of the Committee intervened on paragraph 12. That paragraph did not give rise to any discussion and was therefore adopted. Paragraph 13, which provided the possibility of administrative proceedings for the purpose of amending claims, gave rise to an objection on the part of the Australian group, who proposed that the requirement be added to this paragraph that the equitable nature of the patentee s conduct should be examined. The Chairman of the Committee opposed that proposal because it could unjustifiably prolong the time limits for the amendment of claims. Mr. CURELL, intervening in his own name, proposed that this paragraph be amended by adding that the administrative authority was responsible for examining whether the amendment extended the scope of the patent. He presented this amendment as an alternative to the amendment by the Australian group. Mr. Gianfranco DRAGOTTI (Italy) intervened to recall that, in some countries, the administrative authorities did not carry out any examination as to patentability and that, in those circumstances, it appeared excessive to require them to examine whether the amended claims enlarged the protection of the patent. 7/8
Mr. BÜHLING put the amendment proposed by the Australian group to a vote and it was rejected by a very large majority. The AIPPI also rejected Mr. CURELL s amendment. Paragraph 13 of the draft resolution was adopted by a very large majority. The Chairman of the Committee presented paragraph 14 which stated that it was not appropriate, in the structure of the amendment, to favour Court proceedings or administrative proceedings. The DUTCH group suggested that this paragraph be modified by giving a clear preference to court proceedings, which must take precedence over administrative proceedings. Mr. MERRYLEES opposed that amendment because he stated that administrative proceedings could already be pending and that there was no reason to block them by introducing court proceedings. The Dutch amendment was put to a vote but was rejected. Mr. BÜHLING then put the whole of paragraph 14 to a vote and it was adopted. Likewise, paragraphs 15 and 16, which did not give rise to any comments on the part of the members of the AIPPI, were put to a vote. These two paragraphs were adopted. The Chairman of the meeting therefore put the entire resolution to a vote and it was adopted by a very large majority (92% of the votes in favour, 4% abstentions and 4% against). Mr. BÜHLING closed the meeting. 8/8