EPC 2000 improves position of Dutch patent proprietors

Background
Under Dutch patent law, patent proprietors are allowed to amend claims after grant (Article 63 of the Patents Act). If, during nullity proceedings, it appears that only part of the patent is valid, this stipulation may allow the proprietor to amend the claims on its own motion to (valid) patentable subject matter and thereby maintain the patent in amended form so that the patent is not entirely lost. The amended claims apply retrospectively.

The conditions for such amendments include that: 

• the amendment be based on the description (“no extension of subject matter”); and 
• the amendment not be a broadening of the claimed protection (ie, it should be a limitation). This is called “partial surrender”.

These conditions apply to both national patents (which are not examined) and validations of European patents.
These conditions are identical to the conditions imposed by the European Patent Convention (EPC) 2000 on amendments of granted patents during opposition proceedings (Articles 100 and 123 of the EPC 2000), and substantially similar to the conditions under which the EPC 2000 allows national law to revoke patents (Article 138).

Nullity and infringement lawsuit
In the Netherlands, infringement and nullity lawsuits are conducted through a single lawsuit. Hence, infringement accusations by a patent proprietor are generally replied to with nullity accusations by the accused infringer. During nullity lawsuits - whether a pure nullity lawsuit or a mixed infringement-nullity lawsuit - in principle, the proprietor may apply the above-mentioned stipulation and partially surrender the patent.

This stipulation applies to both national (unexamined) patents and validations of European patents. Since national patents may be granted with non-novel and/or non-inventive claims (due to the absence of examination), the stipulation is regularly used by proprietors to amend the claims to patentable claims before starting an infringement lawsuit. In this way, infringement proceedings are started with novel and inventive claims, which may even be tailored to the alleged infringing product or process.

Spiro-Flamco decision
In 1996 in the Spiro-Flamco Case the High Court considered the amendment of the granted claim of a national Dutch patent during an infringement-nullity lawsuit. The High Court decided that the claims could be amended only:

“to the extent that the person skilled in the art, in view of the contents of the patent in the context of the prior art at the priority date, by itself should have to come to the conclusion that the patent only could have been granted with the claims as amended in a partial surrender.”

In other words, if a person skilled in the art would not conclude that the amended set of claims was the only possible patentable option in view of the prior art and the patent, the amendment of the claims would lead to invalidity. Here, a new condition appeared to be created for those amendments after grant: these amendments should be foreseeable by a person skilled in the art.

Hence, the implication was that amendments of granted claims should be foreseeable by a person skilled in the art. This Spiro-Flamco argument was used many times by accused infringers during later lawsuits.

In the Spiro-Flamco Case the suggested claim amendment was based on part of the description of the patent. In a 2007 decision of the Court of The Hague (Philips Electronics NV v LG Electronics European Holding BV (HA ZA 06-955)), it was decided that dependent claims, if novel and inventive, could fulfil the Spiro-Flamco criteria (ie, a limitation to a dependent claim seemed “foreseeable” to a person skilled in the art). However, limitations based on subject matter taken from the description were allowable only if fulfilling the foreseeability condition. This created legal uncertainty for patent holders.

EPC 2000
The EPC 2000, the revision of the EPC 1973, came into force on 13th December 2007. The EPC 2000 has a slightly reworded Article 138 in the sense that the phrase “a European patent may only be revoked under the law of a Contracting State” has been changed to “a European patent may be revoked with effect for a Contracting State”.

Further, the EPC 2000 introduced a central limitation procedure (Article 105 of the EPC 2000). This central limitation procedure includes a centralised partial surrender of the European patent after grant, which applies to all national validations. The claims may be limited at any time after grant.

The conditions for such limitation (set out in Rule 95 of the EPC 2000) include only that the limited claim should be clear (Article 84 of the EPC 2000) and should not extend beyond the claims as granted or maintained in opposition (Article 123 of the EPC). The EPC 2000 does not include a foreseeability condition.

The EPC relates to European patents and, to a certain extent, to national validations of such European patents. The EPC does not relate to pure national patents. Nevertheless, the Dutch patent law is substantially the same as the EPC and Dutch case law tends to follow EPC case law. Therefore, it may be that the EPC 2000 could bring a change in the way limitations for claims after grant are received by the court.

Recent case law
In Boston-EGP (HA ZA 97-1605) the Court of The Hague indicated for the first time that after the entry into force of the EPC 2000, particularly in view of the modified Article 138, Spiro-Flamco and its foreseeability condition were no longer applicable.

Although this case related to a validated European patent, the decision is also expected to affect later decisions on national patents.

The foreseeability argument now seems to be consigned to case law history. Patentees are regaining their well-deserved fair protection and thus, slowly but surely, European patent law is moving closer towards harmonisation.