Protocol on the Interpretation of Article 69 EPC

The Protocol on the Interpretation of Article 69 of the European Patent Convention (EPC) is an instrument that forms an integral part of the Convention and specifies how the extent of protection conferred by a European patent is to be determined. It aims to harmonise national traditions that diverged profoundly when the Convention was adopted in 1973. It was supplemented during the 2000 revision of the Convention by a provision on equivalents.

A middle course between two extremes

Article 1 of the Protocol rules out two opposing readings of Article 69. The first would confine protection to the strict, literal meaning of the claims, the description and drawings serving only to resolve ambiguities. The second would treat the claims as a mere guideline, protection extending to what the person skilled in the art, having considered the description and drawings, would understand the proprietor to have contemplated. The Protocol requires an intermediate position, which combines fair protection for the proprietor with a reasonable degree of legal certainty for third parties. It thus governs all claim interpretation.

Taking account of equivalents

Article 2 of the Protocol, introduced in 2000, provides that, for the purpose of determining the extent of protection, due account shall be taken of any element which is equivalent to an element specified in the claims. The text neither defines equivalence nor lays down any test. National courts have therefore kept their own methods. The French courts traditionally find infringement by equivalence where a means of different form performs the same function for a result of the same nature, provided that this function is new, whereas the German and UK courts apply their own sets of questions.

The Protocol before the UPC

The Unified Patent Court (UPC) applies Article 69 and its Protocol directly. Its Court of Appeal has inferred from them that the claim is the decisive basis for protection, interpreted in light of the description and drawings. The question of equivalents is still taking shape before the Court, several local divisions having proposed analytical frameworks that borrow from national traditions, without a common method yet being settled. The Protocol thus provides the foundation for a harmonisation that remains to be completed, and which the doctrine of equivalents continues to inform.

Key points

The Protocol requires a reading of the claims that is neither purely literal nor detached from their wording, and it requires equivalents to be taken into account. It provides the common framework for interpretation in all States party to the Convention and before the UPC, but leaves open the method for assessing equivalence. In cross-border litigation, the equivalence method applied by each court seised should be checked, since the outcome may depend on it.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats litigates patent disputes before the Paris Judicial Court, the Paris Court of Appeal and the Unified Patent Court. Where the question arises in a real case, the useful moment is almost always before proceedings are issued.

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