The Entire Claim Rule Applies to Independent Claims Presented in Two-Part EPO Format

Author:Mr Justin Hill
Profession:McDermott Will & Emery

The English High Court has recently held that in accordance with Section 125 of the Patents Act 1977 (English domestic law), an invention is defined by the whole claim, as interpreted by the description and any drawings. The Court further held that the protocol on interpretation, Article 69 of the European Patent Convention, applies for this purpose and that a limitation has no less weight merely because it appears in the pre-characterising part of an independent claim cast in a two-part format. Storage Computer Corp. UK Limited v. Hitachi Data Systems Ltd., Case No. HC 01 No. 0101244, English High Court (August 21, 2002).

According to an approach preferred by the European patent office, independent claims are frequently cast in a two-part format, with the first part setting out features known from the closest prior art and the second part reciting novel features of the invention. The first part is called the "pre-characterising" part, and the second part is called the "characterising part." The protocol on interpretation states that claims should not be interpreted to limit the scope of protection by the strict, literal meaning of the words used in the claims, the description and drawings being employed only for the purpose of resolving ambiguity in claim language. Neither should claim language be interpreted as a mere guideline, the actual scope of protection extending to that contemplated by a patentee based on a consideration of the description and drawings by a skilled person in the art. Instead, claims are interpreted as defining a position between these extremes to provide a fair protection for the patentee and a reasonable degree of certainty for third parties.

Storage Computer brought infringement claims under two European patents against Hitachi Data Systems. The independent claims of the first patent were in the conventional two-part European format and included various limitations in the pre-characterising portion. The parties agreed that Hitachi did not "literally" infringe the claim. However, Storage Computer argued that in accordance with the protocol on interpretation of Article 69, the unsatisfied limitation should be disregarded...

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