In a judgment in a low-key dispute concerning the infringement of a utility model, the Barcelona Court of Appeal (Spain’s most influential patents court) held that the scope of protection of a two-part claim was determined by its characterising portion, and not by the preamble portion. This finding, which should apply to patents as well, could shape infringement cases going forward.
Case date: 22 December 2017
Case number: No. 574/2017
Court: Court of Appeal of Barcelona
A full summary of this case has been published on Kluwer IP Law.
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Let’s hope this will remain a one-off decision.
It reminds me of a comparable theory brought forward by a very well known, late, lawyer in France, Me Mathely, who for the same reason came up with the notion of partial infringement. One could infringe the features in the characteristic portion, without infringing the features of the preamble. This was especially valid in case of dependent claims. It is not a surprise that this theory did not survive its author.
If possible in view of the rules valid in Spain, file one part form claims! What will then the court decide? Cut the claim in two parts? Let’s stop here.
I haven’t read the decision but I wonder how much the court suffered under a misapprehension which the litigators on both sides of the dispute did nothing to prevent.
As far as I am concerned, the notorious “2 part form” of claim is an artefact of the EPO’s “Problem and Solution” approach to the analysis of patentability under Article 56 EPC. Useful for teasing out, from I) the prior art starting point (D1) and ii) the disclosure in the patent application as filed, what is the “objective technical problem” solved (or not) by the claimed subject matter. But NOT to be used for any other purpose, certainly not for assessing the quite unrelated question, whether or not there is infringement.
Did the litigators not explain all this to the court? If not, why not?