Claim construction and associated problems in France 4/2019

CLAIM CONSTRUCTION 1 First analysis by the French Judge Extent of protection A69 EPC – L613-2 CPI Amendments before grant Literal infringement Essential means of a claim

FIRST ANALYSIS Technical field General background Aim of the invention 2 FIRST ANALYSIS Not harmonized Technical field General background Aim of the invention Solution Invention as claimed Discussion of the submissions Rule 43 EPC Tailor-made

EXTENT OF PROTECTION Interpreting the claims a compulsory step 3 EXTENT OF PROTECTION Interpreting the claims a compulsory step Revealing the essence of the invention Scope not beyond what is claimed Basis for the doctrine of equivalents A 69 as a compromise

AMENDENTS BEFORE GRANT 4 AMENDENTS BEFORE GRANT In the past: NOT TAKEN INTO ACCOUNT 2019 Clearly: YES Feature added during Exam/Oppo & not reproduced no infringement

LITERAL INFRINGEMENT Direct reproduction All features 5 LITERAL INFRINGEMENT Direct reproduction All features Not established if a claimed feature not read on the Defendant product

ESSENTIAL MEANS Not all features reproduced What about a missing one ? 6 ESSENTIAL MEANS Not all features reproduced What about a missing one ? What about a supplementary one ? Ancillary features can be neglected

EXAMPLE: Paris 28-11-2017 Trolley 100 Base 120 Two sidewalls 130 Panels 130 with sheet 150 Two horizontal straps 160 having at 1st end means to attach to 1st sidewall and at 2nd end means to attach releasably to 2nd sidewall FR 2 848 188

EXAMPLE: Paris 28-11-2017 Defendant’s product Trolley with a base, two sidewalls, panels with sheet At 1st end of panel, means to attach to 1st sidewall at 2nd end of panel, means to attach releasably to 2nd sidewall No strap across the panel no literal infringement Straps added during procedure no infringement by 2nd differences Same function, same result, novel function equivalence

EQUIVALENTS IN FRANCE Means – structure - not reproduced 9 EQUIVALENTS IN FRANCE Means – structure - not reproduced Function reproduced Same result Function to be new The scope extends from the claimed technology to any variant combining in the same way different means performing the same function, the function of a means is the 1st technical effect caused by executing this means that allows to attain the result. The result shall be of the same nature.

Merci ! Dziękuję ! Danke! Michael KRAHN Cabinet NETTER European & French Patent and Trademark Attorneys 36 avenue Hoche  - 75008 Paris FRANCE   Tel:  +33 (0)1 58 36 44 22 Fax:  +33 (0)1 42 25 00 45 Merci ! Dziękuję ! Danke!