claims, teaching and equivalence, seen from Festo and EPO

[PILCH Hartmut <phm@a2e.de>]

> Today I read an article on the WSJ, where a ruling was announced on
> patents. Apparantly it is possible now to sue also parties in the US,
> that have similar implementations of a patent. How far this can reach
> was not said. Parties opposing this included IBM, parties in favor of
> this included Sun Microsystems.

Is this about the Festo case?

About the extent to which claims can be interpreted non-literally to
include subject matter which uses the teaching but, due to some negligency
or limitation of language, falls out of the claim scope?

This discussion nicely illustrates one point:  an invention is only
imperfectly described by claims.  Behind the claims, there is an
assumption of a technical teaching = invention = general inventive thought
(allgemeiner Erfindungsgedanke, as it was called in the previous german
patent law).

Patent law development often goes in circles.  People try to
formalistically reduce an invention to what is seen in the claims, and
thereby try to circumvent restrictions such as Art 52.  Some people like
PA Horns take this formalism to extremes, by reiterating in their writings
that Art 52 is not about inventions but only about formal claim
constructions.

Yet, when formalists try to uphold their view of what is an invention,
they run into problems.  The formalistic construction makes patents narrow
and often easy to circumvent.  That is of course not what they want.  So
they have to sneak the concept of an underlying invention, a teaching that
is independent of the claim language, back in through the back door,
hoping that we don't notice, or maybe not even noticing themselves.

The same thing happens frequently with other formalistic debates, such as
that of "consisting in ...." vs "comprising ...".

The EPO caselaw has determined that claims should be narrowed by
specifying exactly what a substance or a system consists of, rather than
what it may "comprise", leaving room for other elements that were not
mentioned.  The result is of course that you can often build something
that formally falls without the scope of such narrow claims.  But when you
look at the relevant teaching, you find that the circumventing system is
actually the same system, making use of the same cause-effect relation.
Then the EPO will use a "doctrine of equivalence" or similar in order to
make up for the inadequacy of its "consisting" formalism, often leading to
an actual patent scope that is wider than what would be permitted in the
US or Japan.

Whenever people use formalistic arguments, they initiate another round of
circular movement.  Nevertheless, for apologetic purposes or for the
purpose of confusing the law and achieving short-term rule-changing goals,
using formalisms is very popular.

-- 
Hartmut Pilch, FFII & Eurolinux Alliance              tel. +49-89-12789608
Protecting Innovation against Patent Inflation       http://swpat.ffii.org/
115,000 signatures against software patents      http://www.noepatents.org/