Scope of protection (patent)
In the legally compliant use of the term, the scope of protection of a patent describes the entirety of the objects, substances, mixtures of substances and processes that fall under the information in the patent claims of the patent, i.e. a purely materially limited selection of objects and processes.
The protective effect of a patent is not only limited in terms of substance, but also with regard to the types of use covered, as well as limited in time and place. In addition, some exceptions and special regulations apply. These aspects are also described here.
Legal basis
German patent law
The current legal situation is partly prescribed by law and partly developed through case law. Section 14 of the Patent Act (PatG) stipulates that the patent claims provide the objective definition of the scope of protection of the patent. If there are any questions about the wording, the description should be used. Sections 9 and 10 PatG define the types of use prohibited for patented processes and objects and the territorial reference. Section 16 of the Patent Act defines the term of the patent. Sections 11 , 12 , 13 and 24 PatG define exceptions.
European Patent Convention
The European Patent Convention (EPC) also defines the patent claims in Art. 69 (1) as the objective definition of the scope of protection of the patent. The description should also be used here for questions of interpretation regarding the wording. The interpretation of Art. 68 EPC itself one was interpreting protocol adopted. The term of a European patent is specified in Art. 63 EPC. However, the EPC no longer makes its own statements about too many stipulations regarding the effects of a patent and a patent application and their limitations, but refers in Art. 64 and Art. 67 to national law, i.e. for Germany to the paragraphs of the German Patent Act cited above.
Protection area: Objective limitation of the protective effect of a patent
The objective limitation of the protective effect of a patent is called the scope of protection in the law . According to Section 9 of the Patent Act and the identical Article 69 (1) EPC, it is primarily given by the content of the patent claims of the patent. If necessary, the description and the drawings are to be used to interpret a claim. The protection goes further than what literally falls under the patent claims. Since patent claims can be directed to specific devices, but also to substances and mixtures of substances and also to work and manufacturing processes, the scope of protection of a patent can accordingly include specific objects, but also substances and mixtures of substances as well as abstract processes.
The factual system of protection is known, partly expressed by infringement facts, the direct and the indirect patent infringement. Immediate patent infringement is divided into identical infringement, equivalent infringement and partial infringement.
Immediate patent infringement
In the case of direct patent infringement, the infringing product is very close to the information in a patent claim of the patent. It is divided into identical injury, equivalent injury and partial protection.
Identical patent infringement
In the case of an identical patent infringement, an infringing product has all the features of a patent claim in direct identical correspondence. Striking example: A patent claim called for wood part A, wood part B, a screw connection between them, and other features XYZ. The identically infringing product then has all these characteristics.
Equivalent Patent Infringement
In the case of an equivalent patent infringement, all features of the patent claim are realized either identically or in an equivalent manner in an attacked product. "Equivalent" in this context means "having the same effect". The equivalent modification, however, is not widely allowed generously. Rather, it must be apparent to a person skilled in the art through simple considerations. Again example: The claim is as above. The offending product has a nail instead of a screw.
Partial protection
Partial protection is very rarely granted. If partial protection is assumed, an infringing product has a feature of the patent claim neither identical nor equivalent. In the interests of legal certainty, however, this is rarely accepted. Example: The patent claim requires the above and also two washers in the screw connection. The offending product only has one washer.
Contributing Patent Infringement
The construct of indirect patent infringement takes into account the fact that many infringing products can be broken down into two non-infringing sub-products and then manufactured and sold separately so that they do not constitute a direct infringement during production and in trade. The residual product, which is still viewed as indirectly infringing, then possibly does not have several features of a patent claim. However, it must be clear for the residual product that it
- is an essential part of the patented invention,
- is suitable for the use of the invention (i.e. for the formation of a product with all the features of the claim), and
- for the use of the invention is also provided.
Further limitations of the protective effect of a patent
Types of usage recorded
Patent protection ultimately includes all commercially interesting activities such as production, sale, trade, advertising, storage and transport of the factually recorded products.
The patent protection does not cover according to § 11 PatG
- Research and development on and with patented inventions,
- Use of a patented invention in the private sector,
- the individual manufacture of drugs,
- the use of inventions in ships, airplanes and vehicles for their purposes, if they only temporarily reach the territory of the FRG.
Territorial reach
Property rights such as patents have a territorial effect in the sense that their legal effect as an exclusive right or injunction against others is limited to the territory of the respective legislative country. A German patent has legal effect in the territory of the FRG, but nowhere else. After granting, a European patent is broken down into a bundle of national patents that can be designed by the applicant (e.g. a German, a French, a British), which in turn only have an effect in the respective territories.
In addition to the legally limited effect on certain territories, the effect of a patent can also have an impact on other territories. This can be the case if, for example, the logistics for handling different products - inherently infringing in patent-free territories and non-infringing in patent-covered territories - would become too complex. It may also be that the market in the patent-free remaining territory is not big enough to be able to do business there with an infringing product elsewhere.
Time limit
The protective effect of a patent begins with the publication of the patent grant and ends with the expiry of the patent either due to non-payment of a renewal fee , due to lapse of time (20 years after the filing date) or due to an official resolution or judgment to revoke the patent.
Special provisions, exceptions
Various positive and negative exceptions have been developed for the protective effects of patents in qualitatively different ways:
Prior use right
Someone who has started using the invention described therein or has made the necessary preparations before the time of filing the application for a patent can continue to use it in accordance with Section 12 of the Patent Act if a patent is later granted for this application.
Product from a patented process
If the content of a patent claim is a manufacturing process, the product directly manufactured by this process is also covered by patent protection according to § 9 3rd PatG, even if the patent does not have a patent claim directly related to the product.
"Shaped stone wall"
In the area of equivalent infringement, it can happen that a product that is a priori regarded as equivalent modified is no longer a patentable invention compared to the prior art. In the "Formstein" decision, the BGH decided on this constellation that such a product is no longer subject to patent protection, because that which is not patentable should not be protected.
Compulsory license, usage arrangement
In special cases relating to the common good, security issues or the public interest, a license to a patent may be compulsorily granted under Section 24 PatG or a state order for use may be issued under Section 13 PatG.
Protection certificate: term extension
In the case of products that are subject to very long approval procedures (e.g. medicinal products or pesticides), a supplementary protection certificate in accordance with Section 16a PatG and Regulation (EC) No. 469/2009 on A protection certificates can extend the term beyond the otherwise possible maximum of 20 years by max. can be extended for five years.
Special provisions for biological materials
Pat-G §§ 9a , 9b and 9c name special provisions for biological materials.
Double protection ban
If and to the extent that a patent holder has a German patent and, in parallel, the German part of a European patent with the same priority date and these two patents protect the same invention, the German patent loses by law from the end of the opposition period or from the legally binding end of the opposition proceedings to the European Patent its protective effect. Once the protective effect of the German patent has been lost, it will not be revived if the German part of the EP patent is later lost for any reason ( Section 8 IntpatÜG).
Regulations in other countries
Practically all patent systems in the world know the infringement patterns of identical, equivalent and indirect patent infringement. This means that in the major patent systems worldwide, well over 90% of all constellations that actually occur are regulated in qualitatively the same way, although the legal bases are nationally different and therefore different from one another.
Determination of the protection area
An abstract determination of the scope of protection of a patent beyond a specific product to be considered, which would provide more than the content of the patent claims does, will hardly be obtained, because that would only be the replacement of the binding text of a patent claim with another, non-binding text.
But one will very well want and be able to receive statements on whether and how likely a specific product at hand falls under a certain claim of a patent.
Assessment
Expert opinions can be obtained from competent persons on the question of whether a specific product infringes a specific patent. Since the interpretation of the patent claim and the associated examination of the scope of protection is a question of law, expert opinions are non-binding in the legal sense, but give factual suspicions. Therefore, a court is not bound by the findings of an expert as to whether there has been a violation.
It is part of the commercial duty of care of traders to inquire about the property rights situation before placing a product on the market. If a patent is found that is possibly relevant, an infringement report may be desired or necessary in cases of doubt. Often such reports are prepared by a patent attorney .
judgment
In an infringement process, a court will bindingly determine whether a specifically named product falls under the claim of a patent. The judgment makes positive or negative statements and justifies them. Other assessments than "yes" or "no" are not possible.
Arbitration agreement
Patent infringement disputes can also be or become subject to private law conciliation or arbitration agreements if the parties so wish. Depending on the design, private individuals can also make binding statements about the infringement of a patent claim by a specific product.
Protective effect of a patent application
The holder of a patent application cannot demand an omission from it. If a patent is last granted, it can acc. § 33 PatG for patent-infringing products for the period between publication of the application and granting of the patent, however, demand compensation. The amount depends on how similar the granted claims are to the claims previously published with the application. However, there is no entitlement if the infringer can rely on a right of prior use.
Protective effect of a utility model
The provisions for the protective effect of a utility model are largely the same as those for a patent. In particular, their objective limitation, i.e. the scope of protection of the utility model, is regulated in the same way as for patents. However, the duration of protection is max. 10 years from the filing date. A subsequent protection certificate is not available.
See also
Web links
Individual evidence
- ↑ Engels, Rainer: Patent Law . 10th edition. ISBN 978-3-8006-5532-8 , pp. Marg. 506 .
