4.How do I begin to tackle interpretation?

How do I begin to tackle interpretation?

Coverage

The need for ‘interpretation’ or ‘construction’ is discussed, and interpretation techniques for use in ‘the real world’ and in ‘the FD4 world’ are considered.

After you have read this chapter you should be aware of:

1. The need for interpretation and interpretation techniques.

2. The constraints attached to interpretation in FD4.

3. The need to find evidence within the relevant documents to support an interpretation in FD4.

Aconsideration of the paper entitled ‘Claim Construction’ in the book Fundamentals of Patent Drafting by Paul Cole (if you are not familiar with this paper, please read it now, before continuing with the present chapter!) traces the history of interpretation in the UK up to the decision of the House of Lords in the Kirin-Amgen case, and also considers the different approach used in the US.

In FD4, as in the real world, it is necessary to ‘interpret’ a claim so as to express or define the real meaning of the claim, in order to determine if another item or process is, or is not, within the scope of the claim. In the real world the patent draftsman attempts to choose claim language that encompasses all reasonable possibilities while setting a clear boundary between what is inside the claim, and what is not inside the claim, but sometimes the attempt falls short of the mark.

In contrast, in FD4the examiner is often attempting to draft the claim in such a way that it is not at all clear where the boundary of the claim really lies. Generally, when the claims in the FD4paper are read for the first time they look very plausible, and the initial reaction might very well be ‘So where is the problem?’, but a second and third reading can often reveal areas where the claims are less than totally clear, and, when the prior art and the infringement are considered, further points where the claims can give rise to difficulties can be spotted.

But first of all, what is this ‘interpretation’ and how is it actually done?

The word ‘interpret’ means ‘to explain the meaning of words’ and this cannot really be done by using the words themselves. So, ideally, the words of the claim should be explained using other words or synonyms, but, most importantly, your explanation must be justified on the

basis of ‘evidence’ in the specification. It does, in a way, seem strange that a first set of words, carefully chosen by a patent draftsman, and often the result of careful thought, and closely reasoned discussions between the patent draftsman and the inventor, should be explained or amplified with other words, and the claim, as explained in this way should then be applied to the potentially novelty-destroying item, or to the potentially infringing item, to determine the important questions of validity and infringement. However, that is the way it is, and the important thing to note, from the point of view of sitting FD4, is the use of different words or synonyms. If you simply repeat the language of the claim, saying, for example, that “end” clearly means “end”, then there has been no interpreting in the sense of explaining the meaning of words, and no reasoning has been displayed. In the examination, if you do find yourself repeating the same words as used in the claim in order to interpret the claim language, you are not likely to score any marks (even if you repeat the claim wording in a different order, a common mistake)!

The examiner is looking for an explanation as to what the words in the claim mean on the basis of evidence found in the paper. Dictionary definitions of specific words do not score marks, and it seems that they just serve to irritate the examiner. You will do much better to find some evidence as to what the words might mean. The evidence may be ‘thin’ – the way the word is used in context, or ‘this is how it is shown in the drawings’ – but some evidence should be found if at all possible. You must show exactly where the ‘evidence’ is (e.g. Page 4 line 2) and preferably ‘quote’ it (e.g.

“the support stay is connected to the end of the arm”) and explain it (e.g. because the support stay is separated from the utmost end of the arm by the rubber ferrule 12, as can be seen in Fig.1, and so ‘end’ must mean ‘end region’ and not the point of termination). In FD4 the marks generally go for ‘reasoning’ and, to reason, you need some ‘evidence’ and then some logic. Here you have shown, as evidence, the fact that the support stay is separated from the utmost end by the ferrule, and you have shown that this evidence is found in Fig.1. You have then reached a conclusion. The use of the word ‘because’ may help you to reason, and not just make statements.

Just to clear up a point of confusion, ‘interpretation’ and ‘construction’ are terms that are synonymous. When a claim is ‘construed’ or ‘interpreted’, the intention is to set out the real meaning of the claim, often with specific attention being given to the location of the boundary of the claim in certain regions which are of interest as a consequence of the disclosure of the prior art, or the precise nature of the alleged infringing act.

But this still does not explain exactly how ‘interpretation’ is really approached, either in real life, or in the somewhat artificial world of FD4.

It all begins with section 125 of the Patents Act 1977 (as amended), but it also involves a Protocol which is part of the European Patent Convention, and additionally involves enough case law to fill a library.

Section 125 (correcting the printer’s error) says that an invention… shall be taken to be that specified in a claim of the specification… as interpreted by the description and any drawings contained in that specification… and also indicates that… the Protocol on the interpretation of Article 69 of the European Patent Convention… shall… apply.

So the law states that the claims are to be ‘interpreted by the description… and drawings…’ but this does not really explain what is to be done, and reference has to be made to a ‘protocol’.

The Protocol under Article 69 is, in itself, a most strange definition or yardstick. Effectively,

it sets out two end points, and says that the desired position is somewhere between the two end points, but does not really say precisely where. Of course, this is because it is, in reality, impossible to pre-define how to ‘interpret’.

Looking more closely at the Protocol it says that a claim is not to be interpreted to mean ‘that defined by the strict literal meaning of the wording used in the claims, (with) the description and drawings being used only for the purpose of resolving any ambiguity found in the claims.’

The Protocol also says that a claim should not ‘serve only as a guideline’.

Finally, the Protocol indicates that when interpreting a claim it is appropriate to take ‘a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties.’ The fact that a large proportion of patent disputes, especially infringement actions, revolve about the precise meaning of one or more claims, and the exact position of the boundary set by the claims, shows that the reasonable degree of legal certainty may be more of a wish than a reality.

With the introduction of EPC 2000 the Protocol was expanded, and now includes the requirement that ‘due account shall be taken of any element which is equivalent to an element specified in the claims’. Well, those words all seem quite clear, but what does this mean in real life?We will probably have to wait several years until there have been some cases in which the significance of these words is decided by the courts before we have any real idea.

Paul Cole, in Fundamentals of Patent Drafting looks at the question of claim interpretation or construction in the light of decisions in the US, the UK, and the EPO. For the purposes of FD4 we are only interested in the UK approach to interpretation.

Most academic discussions on interpretation from the UK point of view discuss items such as the Catnic case where the concept of ‘purposive construction’ made a first appearance, and the Improver case, where a slightly modified version of the ‘questions’ used in the Catnic case was set out. The questions have now become known as the ‘Protocol Questions’ even though the questions were initially posed before the Protocol was written. Added to this, we now have the Actavis case, which will be relevant for the 2018 paper onwards but is very new case law and it will be of great interest to the profession as a whole how this case will change practice and how further case law will clarify the position on equivalents.

The questions pre-suppose that there is a ‘variant’ of the invention that needs to be considered, and this can be recognised as something that differs from the subject-matter of the claim as initially understood, but which somehow can still be considered to utilise the invention.

The questions are:

1) Does the variant have a material effect upon the way the invention works? If yes the variant is outside the claim. If no –2) Would this (i.e. that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art. If no the variant is outside the claim. If yes –3) Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention. If yes, the variant is outside the claim.

Note that the word ‘obvious’ in question 2 has the meaning of ‘immediately apparent’. So one

supposes that the person skilled in the art is told about ‘the variant’ on the date of publication of the patent and is asked if the variant has a material effect on the way the invention of the patent works, i.e. doe the variant work the same way as the patented invention, and is asked if this (that it works the same way) is immediately apparent.

This precedent was followed for many years, but the situation seems to have undergone a sea-change following the decision in Kirin-Amgen. However, there have been a few subsequent developments, and so we will initially consider the Kirin-Amgen case and then consider the subsequent effect of the decision in Ancon Limited and ACS Stainless Steel Fixings, Limited [2009] EWCA Civ 498 –see www.bailii.org/ew/cases/EWCA/Civ/2009/498.html.

As mentioned in Chapter 1, the Kirin-Amgen case is a relatively complex biotechnology case, but the judgment includes passages which set out the latest approach to interpretation.

The opening paragraphs of the judgment set out the views of Lord Hoffmann, who had extensive experience as a Patents Judge in his younger days.

Initially, the decision summarises historically the approach to interpretation taken by the British courts. The ‘Protocol Questions’ are described as a guideline that does not set out any binding principle. Perhaps the flavour of the new approach as set out in the judgment can be gained by considering the following passages (with emphasis added). Paragraph 32 states:

32. Construction, whether of a patent or any other document, is of course not directly concerned with what the author meant to say. There is no window into the mind of the patentee or the author of any other document. Construction is objective in the sense that it is concerned with what a reasonable person to whom the utterance was addressed would have understood the author to be using the words to mean. Notice, however, that it is not, as is sometimes said, “the meaning of the words the author used”, but rather what the notional addressee would have understood the author to mean by using those words. The meaning of words is a matter of convention, governed by rules, which can be found in dictionaries and grammars. What the author would have been understood to mean by using those words is not simply a matter of rules. It is highly sensitive to the context of and background to the particular utterance. It depends not only upon the words the author has chosen but also upon the identity of the audience he is taken to have been addressing and the knowledge and assumptions which one attributes to that audience.

Paragraph 33 begins…

33. In the case of a patent specification, the notional addressee is the person skilled in the art. He (or, I say once and for all, she) comes to a reading of the specification with common general knowledge of the art. And he reads the specification on the assumption that its purpose is to both to describe and to demarcate an invention – a practical idea which the patentee has had for a new product or process – and not to be a textbook in mathematics or chemistry or a shopping list of chemicals or hardware. It is this insight which lies at the heart of “purposive construction”.

And paragraph 34 begins…

34. “Purposive construction” does not mean that one is extending or going beyond the definition of

the technical matter for which the patentee seeks protection in the claims. The question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. And for this purpose, the language he has chosen is usually of critical importance. The conventions of word meaning and syntax enable us to express our meanings with great accuracy and subtlety and the skilled man will ordinarily assume that the patentee has chosen his language accordingly. As a number of judges have pointed out, the specification is a unilateral document in words of the patentee’s own choosing. Furthermore, the words will usually have been chosen upon skilled advice. The specification is not a document inter rusticos for which broad allowances must be made. On the other hand, it must be recognised that the patentee is trying to describe something which, at any rate in his opinion, is new; which has not existed before and of which there may be no generally accepted definition. There will be occasions upon which it will be obvious to the skilled man that the patentee must in some respect have departed from conventional use of language or included in his description of the invention some element which he did not mean to be essential. But one would not expect that to happen very often.

Paragraph 47 commences...

47.The Protocol, as I have said, is a Protocol for the construction of Article 69 and does not expressly lay down any principle for the construction of claims. It does say what principle should not be followed, namely the old English literalism, but otherwise it says only that one should not go outside the claims. It does, however, say that the object is to combine a fair protection for the patentee with a reasonable degree of certainty for third parties. How is this to be achieved? The claims must be construed in a way which attempts, so far as is possible in an imperfect world, not to disappoint the reasonable expectations of either side. What principle of interpretation would give fair protection to the patentee? Surely, a principle which would give him the full extent of the monopoly which the person skilled in the art would think he was intending to claim. And what principle would provide a reasonable degree of protection for third parties? Surely again, a principle which would not give the patentee more than the full extent of the monopoly which the person skilled in the art would think that he was intending to claim. Indeed, any other principle would also be unfair to the patentee, because it would unreasonably expose the patent to claims of invalidity on grounds of anticipation or insufficiency.

You can see that the thread that is running through these passages is that the words of a claim are to be taken to mean what the notional addressee would have understood the author to mean by using those words.

In the context of a patent the notional addressee is the person skilled in the art. It is unusual for a patent attorney ever to meet a real person skilled in the art. Patent attorneys usually deal with inventors, or managers of research departments, or directors of companies. None of these people are considered to be persons skilled in the art, as they have too senior a position, or they have an inventive bent. In Smith International Inc v Specialised Petroleum Services Group [2005] EWHC 686 (Ch)– see www.bailii.org/ew/cases/EWHC/Ch/2005/686.html – the evidence of one witness (to the effect that the invention was obvious) was discounted, as that witness was the head of a team of designers, and so was not a simple person skilled in the art. On the other hand, in BOS GmbH & Co KG v Cobra UK Automotive Products Division Ltd [2012] EWPCC 38 –

see http://www.bailii.org/ew/cases/EWPCC/2012/38.html –it was argued that a witness who had several patents to his name was too inventive to be able to assist the court on the question of obviousness. However, it was held that, as a matter of principle, the fact that a witness has been named as an inventor on one or more patents does not disqualify the witness from giving such evidence. The witness was considered to be seeking to assist the court in appreciating what an uninventive skilled person would do and would think.

So, we reach a situation where, in order to interpret the claim we have to deduce what the person skilled in the art, who does not have an inventive bent, and who must be considered to be ‘ordinary’, would think the patentee was intending to claim when using the claim language found in the patent.

Bear in mind that the application of the principles set out in Kirin-Amgen can lead to some rather startling conclusions. In University of Queensland v Siemens [2007] EWHC 2258 (Pat) –see www.bailii.org/ew/cases/EWHC/Patents/2007/2258.html,it was held that the phrase ‘prior to shimming’ that appeared in a claim actually meant ‘after shimming’, as to reach any other conclusion would result in a meaningless claim. So black can now mean white in the appropriate circumstances!

The Kirin-Amgen decision, coming from the House of Lords, is a binding precedent, but the Court of Appeal has ‘illuminated’ this precedent by issuing further decisions that give guidance on interpretation.

The first decision we will look at is Ancon Limited and ACS Stainless Steel Fixings. In this decision Lord Justice Jacob set out a set of principles. He actually said (under the heading of ‘Principles of Claim Construction’):

I summarised the applicable principles in Technip France SA’s Patent [2004] RPC 46. They were approved in Kirin-Amgen, subject to a minor qualification (see per Lord Hoffmann at [33]). Pumfrey J adapted my earlier summary to take account of that criticism in Halliburton v Smith [2006] RPC 25 at [68]. What he said there is an accurate summary of the current law.

(a) The first, overarching principle, is that contained in Article 69 itself. Sometimes I wonder whether people spend more time on the gloss to Article 69, the Protocol, than to the Article itself, even though it is the Article which is the main governing provision.

(b) Article 69 says that the extent of protection is determined by the terms of the claims. It goes on to say that the description and drawings shall be used to interpret the claims. In short, the claims are to be construed in context.

(c) It follows that the claims are to be construed purposively — the inventor’s purpose being ascertained from the description and drawings.

(d) It further follows that the claims must not be construed as if they stood alone — the drawings and description only being used to resolve any ambiguity. The Protocol expressly eschews such a method of construction but to my mind that would be so without the Protocol. Purpose is vital to the construction of claims.

(e) When ascertaining the inventor’s purpose, it must be remembered that he may have several purposes depending on the level of generality of his invention. Typically, for instance, an inventor may have one, generally more than one, specific embodiment as well as a generalised concept. But there is no presumption that the patentee necessarily intended the widest possible meaning consistent with his purpose be given to the words that he used: purpose and meaning are different.

(f) Thus purpose is not the be-all and end-all. One is still at the end of the day concerned with the meaning of the language used. Hence the other extreme of the Protocol –a mere guideline –is also ruled out by Article 69 itself. It is the terms of the claims which delineate the patentee’s territory.

(g) It follows that if the patentee has included what is obviously a deliberate limitation in his claims, it must have a meaning. One cannot disregard obviously intentional elements. Hoffmann LJ put it this way in STEP v Emson [1993] RPC at 522 :

‘The well-known principle that patent claims are given a purposive construction does not mean that an integer can be treated as struck out if it does not appear to make any difference to the inventive concept. It may have some other purpose buried in the prior art and even if this is not discernible, the patentee may have had some reason of his own for introducing it.’

(h) It also follows that where a patentee has used a word or phrase which, acontextually, might have a particular meaning (narrow or wide) it does not necessarily have that meaning in context. A good example of this is the Catnic case itself — ‘vertical’ in context did not mean ‘geometrically vertical’, it meant ‘vertical enough to do the job’ (of supporting the upper horizontal plate). The so-called ‘Protocol questions’ (those formulated by Hoffmann J in Improver v Remington [1990] FSR 181 at p.189) are of particular value when considering the difference of meaning between a word or phrase out of context and that word or phrase in context. At that point the first two Protocol questions come into play. But once one focuses on the word in context, the Protocol question approach does not resolve the ultimate question — what does the word or phrase actually mean, when construed purposively? That can only be done on the language used, read in context.

(i) It further follows that there is no general ‘doctrine of equivalents.’ Any student of patent law knows that various legal systems allow for such a concept, but that none of them can agree what it is or should be. Here is not the place to set forth the myriad versions of such a doctrine. For my part I do not think that Article 69 itself allows for such a concept –it says the extent of protection shall be determined by the terms of the claims. And so far as I can understand, the French and German versions mean the same thing. Nor can I see how the Protocol can create any such doctrine.

(j) On the other hand purposive construction can lead to the conclusion that a technically trivial or minor difference between an element of a claim and the corresponding element of the alleged infringement nonetheless falls within the meaning of the element when read purposively. This is not because there is a doctrine of equivalents: it is because that is the fair way to read the claim in context.

(k) Finally purposive construction leads one to eschew what Lord Diplock in Catnic called (at p.243):

‘the kind of meticulous verbal analysis which lawyers are too often tempted by their training to indulge.’

Pedantry and patents are incompatible. In Catnic the rejected ‘meticulous verbal analysis’ was the argument that because the word ‘horizontal’ was qualified by ‘substantially’ whereas ‘vertical’ was not, the latter must mean ‘geometrically vertical.’

I would diffidently add three observations of my own. The first is merely the trite principle that the addressee of the specification is the person skilled in the art, who approaches the document with the common general knowledge. Secondly, there may be obscurities and difficulties in a claim that cannot be resolved by an appeal to context. It is very rare that some sensible meaning cannot be attributed to the words used in a patent claim, but where a claim permits alternative interpretations it is possible to be left with no alternative but to take the most straightforward. Finally, and most importantly, over-meticulousness is not to be equated to carefulness. Care in working out what the patentee was aiming at when he chose the words he used is absolutely necessary.

It is to be understood that these principles are really put forward as an ‘explanation’ of what was implicit in the Kirin-Amgen decision, and so does not depart from that decision in any way.

Further decisions from the Court of Appeal are also of value in trying to understand how to approach claim construction. These decisions illustrate some of the reasoning that the Court has followed to show why a specific construction has been adopted.

The following decisions that we will consider deal with the question of whether the skilled person does, or does not, have any knowledge of patent law.

Virgin Atlantic Airways Limited and Premium Aircraft Interiors UK Limited [2009] EWCA Civ 1062 – see www.bailii.org/ew/cases/EWCA/Civ/2009/1062.html discusses the knowledge of the skilled reader, and in particular whether the skilled reader has any knowledge of patent law.

The decision sets out an abbreviated version of the principles of construction as generally approved in Kirin-Amgen and as set out immediately above in the extract from the Ancon decision. The judgment then continues:

6. So far so good. Those are the general principles. But as stated they do not explicitly cover three matters with which we are concerned. They are related and involve this question: how much of the law and practice of the patent system is the skilled reader supposed to know and thus take into account when he is trying to work out what, by the words of his claim, the patentee was intending to mean?

7. The first matter relates to the use of numerals in a patent claim. Rule 29 (7) of the Implementing

Regulations to the EPC provides that if the application contains drawings:

“… the technical features mentioned in the claim shall preferably, if the intelligibility of the claim can thereby be increased, be followed by reference signs relating to these features and placed between parentheses. These reference signs shall not be construed as limiting the claim.”

8. So the question is this: does the skilled reader take into account that the patentee, when putting numerals into his claim, knew that they would not be used by the skilled reader to limit his claim?

Must he be taken to know this rule?

9. The next matter follows from the use of a two-part claim, the so-called “pre-characterising” and

“characterising” parts. Again the question arises because of a rule of the Implementing Regulations.

Rule 29(1) says:

“The claims shall define the matter for which protection is sought in terms of the technical features of the invention. Wherever appropriate, claims shall contain:

(a)a statement indicating the designation of the subject-matter of the invention and those technical features which are necessary for the definition of the claimed subject-matter but which, in combination, are part of the prior art; (b)a characterising portion – preceded by the expression “characterised in that” or

“characterised by” – stating the technical features which, in combination with the features stated in sub-paragraph (a), it is desired to protect.”

Does the skilled reader, when he sees such a two-part claim, take this rule into account so that he at least expects the pre-characterising portion to describe matter which is part of the prior art?

10.Finally, there is a somewhat more general question (because there is no express rule about drafting or construction involved) of whether the skilled reader will know about the practice of divisional applications. It arises because the Patent is a divisional and says so. If the skilled reader does know about the divisional system (provided for by Article 76 of the EPC, implemented by Article 25 of the Implementing Regulations) that may affect his understanding of a claim because he will know that there are, or may be, aspects of what is described in the patent which are actually claimed in some other patent or patents divided out from the original application.

Here the Court is clearly setting out three questions that need to be answered before the claims can be fairly construed. These questions were not explicitly addressed in Kirin-Amgen, but nevertheless, as we will see, the Court tries its best to show that the decision it reaches is within the precedent of the Kirin-Amgen decision. The judgment continues:

11.We think the answers to these questions follow from Kirin-Amgen itself. The notional skilled reader is to be taken as knowing these matters and bringing them to bear when he considers the scope of the claim. We say that for the following reasons:

12.First, in Kirin-Amgen itself Lord Hoffmann said that the skilled reader:

[33] … reads the specification on the assumption that its purpose is to both describe and demarcate an invention – a practical idea which the patentee has had for a new product or process.

And:

[34] … it must be recognised that the patentee is trying to describe something which, at any rate in his opinion, is new ..

13.So the skilled reader is taken to suppose that the patentee knew some patent law – that his claim is for the purpose of defining the monopoly and that it should be for something new. Knowledge of that may well affect how the claim is read – for instance one would not expect the patentee to have used language which covered what he expressly acknowledged was old.

This concept that the skilled person does have some appreciation of patent law may be considered to be new. In Improver Corp v Remington, the Judge (Hoffmann J – later to be the Lord Hoffmann who wrote the Kirin-Amgen decision), said ‘I do not think that the hypothetical skilled man is also assumed to be skilled in patent law…’ and drew the conclusion that the reader would think that the patentee had intentionally limited himself to the helical spring, thus excluding the slitted rubber rod from the claim.

It may well be that the skilled person may now be considered to have some general knowledge of patent law, while not being a patent ‘expert’.

Nevertheless, this decision of the Court of Appeal does indicate that the skilled person does have at least some knowledge of patent law.How does the decision develop? It continues:

14.Moreover as Lord Hoffmann said at [34]:

[34] … The words will usually have been chosen on skilled advice. The specification is not a document inter rusticos for which broad allowances must be made. [Inter rusticos is ‘legal Latin’ and means between rustics, or between illiterate people. It is usually used with regard to deeds or agreements made without professional help, where a more equitable interpretation approach might be taken.]

15.We think it would unrealistic – indeed perverse – for the law to say that the notional skilled reader, probably with the benefit of skilled advice, would not know and take into account the explicit drafting conventions by which the patent and its claims were framed. Likewise when there is a reference to the patent being a divisional application, it would be perverse to work on the basis that the skilled man would not know what that means. A real skilled man reading a patent which, as in the case of the Patent, refers to “the parent application” would surely say “what’s a parent application?” – and he would go on to ask a man who knows, probably a patent agent.

16.It follows that we need to address what the skilled man would actually make of the two explicit drafting rules. As regards Rule 29(7), Laddie J in Telsonic AG’s Patent [2004] R.P.C. 38, § 26 said that:

“Reference numerals… are designed to be, and can be, useful tools to elucidate the inventor’s intention. As such they may, depending on the circumstances, help to illustrate that the inventor intended a wide or narrow scope for his claim. On the other hand, they cannot be used to import into the claim restrictions which are not foreshadowed by the language of the claim itself.”

17.We think that is not quite right. In particular, we do not think that numerals should influence the construction of the claim at all – they do not illustrate whether the inventor intended a wide or narrow meaning. The patentee is told by the rule that if he puts numerals into his claim they will not be used to limit it. If the court subsequently pays attention to the numbers to limit the claim that is simply not fair. And patentees would wisely refrain from inserting numbers in case they were used against them. That is not to say that numbers are pointless. They help a real reader orient himself at the stage when he is trying to get the general notion of what the patent is about.

He can see where in the specific embodiment a particular claim element is, but no more. Once one comes to construe the claim, it must be construed as if the numbers were not part of it. To give an analogy, the numbers help you get the map the right way up, they do not help you to read it to find out exactly where you are.

18.Next, the two-part claim structure. The EPO Boards of Appeal have had a little to say about this.

In Siemens/Electrode Slide (T06/81) the applicant had put into his original pre-characterising clause material which was not in fact part of the prior art. He was allowed to amend so as to put that material into the characterising part. The Board said:

2.2. Under Rule 29(1)(a) of the Implementing Regulations to the EPC, the preamble of a twopart (independent) claim must contain the technical features of the subject-matter of the claim which, in combination, are part of the prior art. In principle, therefore, it may be assumed that the features included by the applicant in the preamble to the claim as filed, in combination with one another, are no longer new. On the other hand, the claim as originally worded must not be regarded as a binding statement as to the novelty of those features, but simply as an attempt to summarise the essential features of the invention. In the view of the Board, the question of which features are known and hence to be included in the preamble in the event of the application being successful must be decided purely in the light of the objective facts of the case.

19.In Boehringer/Diagnostic Agent (T99/85), a feature of the invention which in fact conferred novelty had been put into the pre-characterising clause. The Board held this did not matter and it did not have to be moved into the characterising clause. The official headnote puts it this way:

3. In the opposition proceedings there is no reason officially to insist on a change in the wording of the claim simply because one feature in the preamble to a two-part claim does not belong to the state of the art (Rule 29(1)(a) EPC).

The Board itself said:

[4] In establishing the novelty of the subject-matter of the disputed patent it was indeed shown that the feature stated in the opening part of Claim 1… does not, as the appellants claim, belong to the state of the art… in conjunction with the other features in the preamble. Nevertheless, the Board sees no reason for it solely on this account, to insist, that the wording of a patent claim already granted should be amended. The Board takes Rule 29(1) EPC for what it is – an

implementing regulation, primarily relevant to the patent grant procedure and therefore no more constituting a ground for opposition than for example Article 84 EPC (reference to T 23/86 of 25 August 1986, OJ EPO 1987, 316). Claim 1 can therefore be maintained in the text as granted.

20.From this Mr Vanhegan invited us to conclude that the skilled reader would have no, or at the very least only a slight presumption, that the pre-characterising portion of a claim was describing what the patentee considered to be old. He particularly emphasised the Board’s statement that it is

“primarily relevant to the patent grant procedure.” Mr Meade on the other hand submitted that when the skilled man sees a pre-characterising clause he will strongly incline to the view that the skilled man saw that as being old. And that inclination will be reinforced (perhaps steepened is a better word) where the clause concerned is clearly said by the patentee to be based on prior art which he specifically acknowledges.

21.We accept Mr Meade’s contention. Even without a two-part claim structure, because the skilled reader knows that the patentee is trying to claim something which he, the patentee, considers to be new, he will be strongly averse to ascribe to the claim a meaning which covers that which the patentee acknowledges is old. And if the patentee not only acknowledges that a particular piece of prior art is old but then has a pre-characterising clause which is fairly obviously based on it, the skilled reader will be even more strongly inclined to read that clause as intended to describe that old art.

It is interesting that the Court analyses several decisions, some from the EPO, to explain why the skilled person would construe the claim in a specific way. In other words, the Court is emphasising that skilled person has more than a basic grasp of the principles of patent law.

The decision does include a paragraph that relates to the realisation of the situation in a divisional case which says:

Now it is of course true that the only specific embodiment is a flip-over bed/seat. And, because that would strike the notional skilled reader as a good idea, he would expect it to be patented somewhere. But because he knows (see above) that the patentee has divided out what is in this patent from a parent application he would not necessarily expect that to be done in this patent.

This decision can help you in FD4, as it may provide you with reasons to support any conclusions that we reach. For example, even if the skilled person has only a hazy knowledge of patent law, they will appreciate that the claims seek to differentiate the invention from the prior art, and so the skilled person would tend to construe the claims in such a way that prior art that was known to the patentee was excluded from the monopoly claimed. So it may be appropriate to say that a feature in the claim is narrow, because if it were broad, the claim would be anticipated by the acknowledged art, by the art cited during prosecution, or by the common general knowledge.

Certainly, if the FD4 examiner produces a case with a two-part claim, with a novel feature in the preamble, the case gives a clear guideline.Really, when in the British courts, it seems that

the two- part form and the reference numerals have no significance at all, and one just reads the claim as if the ‘characterised in that’ phrase was ‘wherein’, and the numerals simply were not there. If you do have to construe a ‘European’ claim with numerals and ‘characterised in that’ there will be marks for saying that the skilled person knows that while the ‘characterised’ may be expected to divide an acknowledgement of the prior art from the new or inventive part of the claim, this is not necessarily so, and while the numerals may help identify the components of the preferred embodiment specified by the phrases of the claim, the numerals must not be used to limit the claim in any way.

However, even though the Virgin Atlantic case indicates that the skilled person does have some knowledge of patent law, it does not mean that in every situation the claim must be read to distinguish the claim from prior art known to the applicant and acknowledged in the patent. In Tate & Lyle Technology Ltd v Roquette Frères [2010] EWCA Civ 1049 (www.bailii.org/ew/cases/ EWCA/Civ/2010/1049.html)it was concluded that even though the skilled reader knows that the patentee is trying to claim something that is new, and will be averse to ascribe the claim a meaning which covers that which the patentee acknowledges as old, there is no rule that because prior art is referred to in the specification, the prior art cannot be found to have anticipated the invention claimed.

In Ranbaxy (UK) Limited v AstraZeneca AB [2011] EWHC 1831 (Pat) – see www.bailii.org/ew/cases/EWHC/Patents/2011/1831.html –the law set out in Kirin-Amgen and in Virgin Atlantic Airways was confirmed, and the skilled person was said to appreciate that a Swiss-type claim should be construed as being directed to the use as an active ingredient for the manufacture of a medicament that includes that ingredient, as to construe the claim otherwise in the case would render the claim vulnerable to an attack of insufficiency. Thus, the skilled person may be expected to construe the claim in a way that makes the claim valid, if this is possible, and also has a fairly detailed knowledge of patent drafting conventions.

In BOSGmbH & Co KG v Cobra UK Automotive Products Division Limited, it was held that the skilled reader would not disregard a particular feature in the claim, satisfying the principle that a feature cannot be treated as ‘struck-out’ even if this does not appear to make any difference to inventive concept. The feature may have some purpose, and the patentee may have had some reason of his own for introducing it into the claim.

The BOSGmbH case also touches on the question of the ‘common general knowledge’ of the skilled person. It is considered to be all of the knowledge that is generally known and generally regarded as a good basis for further action by the bulk of those engaged in the art. While the skilled person was considered to know of the existence some earlier products similar to the invention, that knowledge did not extend to the inner workings of those products.

The cases discussed above have been selected from many that relate to this point, to give a ‘flavour’ of the judgments. So, the skilled person is non-inventive but has ‘the common general knowledge’ of the relevant art (which will be discussed in more detail below) and also has quite a lot of ‘patent’ knowledge, or would be expected to ask a patent attorney if a point arose that was not immediately understood, like a reference to a ‘parent’ application. The skilled person expects the claims to define something the inventor thought was new, and will know that subclaims are meant to lie within the scope of a claim from which they depend, and are narrower in some respect than the claim or claims from which they depend, giving rise to the ‘repercussive

effect’. (The ‘repercussive’ effect can be explained with an example. Claim 1 says there is a ‘fastener’. Claim 2 says no more than the ‘fastener’ is a bolt. The argument is that the word ‘fastener’ in claim 1 must be understood to include ‘a bolt’, and additionally must include something other than ‘a bolt’ such as a screw, or a rivet, because claim 1 must be broader than claim 2, and if ‘fastener’ meant ‘bolt and nothing but a bolt’, then claim 1 and claim 2 would have the same scope). The skilled person knows about divisional applications, Swiss-form claims, ‘European’ claims, and various specific standard drafting/interpretation conventions that will be mentioned below. However, the skilled person also knows that the meaning of each claim must be found in the words of the claim, and words cannot just be ignored, especially if they are words that constitute a restriction in the claim.

Further, in the decision in Actavis UK Limited and others (Appellants) v Eli Lilly and Company (Respondent) [2017] UKSC 48, the Supreme Court effectively ruled that equivalents are mentioned in the Protocol and proper consideration should therefore be taken of this wording – i.e. equivalents are more likely to now fall within the scope of claims following this decision. Technically, this decision applies to your infringement analysis but in fact it will also impact your construction as a few more things will be caught by the claims.

Now that the legislation and the current case law have been considered, we may begin to see more clearly that in FD4, when we interpret, we have to reach some conclusion as to what a person skilled in the art would have understood the author to mean by the words of the claim, on reading the claim in the light of the specification and the drawings. In a real-life situation, you would, of course, be able to ask people who work in the relevant industry (even if they are at a level above that of the notional skilled addressee) what specific words or phrases might mean, but in FD4 you cannot.

You have to make deductions from the documentation provided, and because of the need to display your reasoning, since it is the display of reasoning that attracts the all-valuable marks, you must explain how you move from some sort of evidence to a conclusion in such a way that the examiner can see how you are thinking. Simply stating the conclusion does not score marks. While the examiner expects you to state a conclusion, rather than sitting on the fence and saying ‘It could mean this or it could mean that’ it is prudent to remember to ask the client if a skilled person agrees with your analysis.

There is no need to introduce your construction section, so don’t write ‘… what the person

skilled in the art thinks he was intending to claim. Kirin-Amgen…’ to show the examiner that you know the latest case law. All you need to do is demonstrate the application of the latest case law, not write about it (there are typically no marks for setting out an introduction or the relevant case law). As a matter of tactics in FD4 you might find it convenient to deduce that the art is a broad art, so that as many as possible of the documents making up the FD4 examination paper can be considered to be within the common general knowledge of the skilled reader. This will make it easier to launch an ‘obviousness’ argument. But what is meant by broad art and narrow art?

This may best be understood by considering an example. The field of the invention, which is really ‘the art’, is often defined by the title and the opening paragraph, regardless of the wording of the claim. If the title of a specification is ‘An airbag’ and if the specification begins ‘…This invention relates to an airbag, and more particularly relates to a driver’s airbag in a motor

vehicle…’ then the ‘art’ is ‘airbags’. Clearly the art must be broader than just ‘driver’s airbags’, since otherwise the ‘more particularly’ wording would not make sense. The art of airbags must include driver’s airbags, but must include other airbags as well. One would think that the art would include all vehicle-mounted airbags, but even in a straightforward example like this there is some doubt as to the outer boundary of ‘the art’. Would the art be considered to include those large airbags that are used by firemen, or other rescue services, which can be placed under lorries that have encountered problems and ended up on land that is too soft for a jack to be used? These airbags can be inflated to ‘lift’ the lorry as part of a recovery procedure.

However, in the example given, ‘the art’ would seem, on the face of it, to exclude bouncy castles and the like. This would mean that a publication relating to a bouncy castle that disclosed a key feature of the invention would not be available for use in an ‘obviousness’ attack, as the document would not be within the common general knowledge of the person skilled in the art.

Now consider the situation if the patent had the title ‘An inflatable element’ and the specification began ‘This invention relates to an inflatable element, and more particularly relates to an airbag in the form of a driver’s airbag…’.Now the field of the invention, and thus the knowledge of the skilled person, spans the whole area of inflatable elements, and would quite possibly be considered to include the publication about the bouncy castle.

The identity of the person skilled in the art, and the precise boundaries of their knowledge, is probably of most relevance when inventive step is being considered, but it may be appropriate just to include a brief passage identifying the skilled person as the section on interpretation is begun.

Having identified the skilled person, you now have to interpret as through the eyes of that person. Ideally, you will find evidence as to the meaning of phrases or words from the description and drawings, as required by section 125, taking into account the Protocol under Article 69, so you do not interpret too literally, and so that you do not interpret too ‘loosely’.

As we have seen, in a typical FD4 paper many of the words or phrases that need to be construed should really be discussed only in the light of the disclosure of the specification and drawings, and so it is impossible to provide close guidelines as to the meaning to be given to specific words. It is necessary to try and find the sense in which the relevant feature is described in the specification, and to see if any alternatives are given, or implied. Often, in Infringement and Validity, you find that the feature is not specifically described at all, or is described in words that are very different to those used in the claims.

This is the challenge of FD4 – can you make sense of a terribly drafted set of claims, which come with an equally terrible specification? Usually the claims and specification are horrendous, even though, on a quick read, everything can be understood. This is because the reader usually reads the documents trying hard to understand them, and, because the technology is so trivial, common sense enables you to fill in the missing gaps without even thinking about it. It is only when you go back to see what the specification really said that you can see what it did not say.

There are now no real ‘rules’ for interpretation, although some generally accepted approaches to the interpretation of claims may be reflected in the claims of a FD4 paper.

For example, it has been generally understood that the claims should be construed sensibly, with ridiculous constructions being ignored, and at least the broadest claim should be read broadly enough to include all of the described embodiments of the invention within the claim.

This can sometimes force you to give a broad interpretation to phrases in the claims that may at first sight appear to be narrow.This situation can, however, be a bit more complicated if there are two independent claims, and some examples of the invention fall within both of the claims, with some further examples only being within the first independent claim, and other examples being within the other of the independent claims.

It may seem reasonable for the skilled person to try his best to see that all of the described embodiments are somehow within the scope of at least one of the claims, but this may prove to be impossible if, for example the main claim specifically lists alternatives, such as copper or brass, and the described embodiments refer to copper, brass and aluminium. While it may be possible to ‘stretch’ some words when interpreting a claim, (as discussed above – making prior to shimming really mean after shimming) it may be difficult to conclude that the skilled person would understand that a member of a ‘family’ described in the specification should be considered to be present just because some other members of the ‘family’ are present in the claim.

Sometimes it is not necessary to explore the real limits of a term in a claim. If the relevant feature is virtually identical in every document in which it appears, then it may only be necessary to explain that the term in the claim must at least include the structure of the described embodiment. For example, a catch could be almost anything. However, if in the patent it is a resilient finger carrying a protrusion that engages an element once it has moved to a specific position to hold it in that position, and if all the other items that could be considered to be catches are of the same design, it would only be necessary to explain that the term ‘catch’ must at least include a resilient finger and protrusion which operates in the desired way.

As mentioned above, if there is a point of construction that can avoid a claim being found to be invalid over prior art acknowledged in the specification, it would be possible to argue that the skilled person would take the interpretation that made the claim valid, rather than the interpretation that would make the claim invalid, on the basis that this would be the intention of the inventor.Having said that, it is not at all unusual, both in FD4 and in real life, for prior art admitted in the opening paragraphs of the specification to be very damaging to the validity of the claims present in the patent. If the only realistic interpretation is one that makes the claims invalid over the admitted prior art, then so be it.

A similar line of thought can be applied in connection with disclosures that are within the knowledge of the skilled person at the date of filing, or during prosecution. The inventor can be understood to have at least the notional common general knowledge of the skilled person, and so one might conclude that the inventor would not intend words in the claim to have a meaning that would make the claim invalid (possibly on an ‘obviousness’ attack) in the light of a disclosure that forms part of the common general knowledge.

Also, it has been thought that no two claims can have the same scope, and so a sub-claim which apparently narrowed a feature of one or more preceding claims had a so-called repercussive effect on the scope of the preceding claim(s). For example, if the main claim defined a member as being made of ‘metal’, and a sub-claim stated that the ‘metal’ was brass, the repercussive effect is such that the word ‘metal’ in the main claim must be broad enough to embrace an alloy, since brass is an alloy and not a simple metal, and also the main claim must be broad enough to include a metal or alloy other than brass. This can lead to a very interesting situation if, for example, the specification indicates that it is specific properties of brass that

make the described embodiment actually work. In this situation the very broad claim is not actually supported by the description, and it clearly covers embodiments that will not work. In this case, the broad claim may be invalid for lack of a sufficient enabling description.Thus a claim must include within its scope all of the subject-matter of a sub-claim dependent on it, and must in some way be broader than the sub-claim.

Sometimes the repercussive effect may be triggered by a statement of invention that does not correspond with any of the claims. For example, there might be a statement of invention (usually immediately after the statement of invention corresponding to the main claim) that might simply say... preferably the metal is brass, while this particular snippet of information is not actually present in the claims themselves in any way.

It is sometimes the case that a narrow word or phrase is used in the specific description, and a broader word or phrase in the claim. For example, the description may refer to a battery, and the claim may identify a power source. Should the claim be read broadly, to cover any power source, or narrowly? It is possible to argue that the claim has been drafted with broader language than the description, and so it was the intention of the patentee that the claim would have relatively broad meaning, to embrace embodiments not strictly in compliance with the preferred embodiment. However, it is also possible to argue that if the patentee intended the claim language to be read broadly he would at least have outlined some possible alternatives to the described embodiment. Also, it may be suggested that if the claim is read broadly, the description does not support the claim, as there is no enabling disclosure across the breadth of the claim. So there is no ‘correct’ answer to the question, as it all depends upon which of the arguments looks strongest on the day (and in a good FD4 paper they may well look equally strong and equally weak!)

The Infringement and Validity examiner in previous years has been known to adopt all sorts of linguistic tricks in the claims. In some papers the examiner created ambiguities, for example with the use of ‘or’ or ‘and/or’, or with the use of ‘its’ when there were two or more items that the ‘its’ might refer to, or by using the same word to identify two different components of the invention. Such ambiguities may feature again in future papers, but have been absent in recent years.

There is always the possibility of the carefully constructed ‘typo’. One year the claim related to an abrasive article, which incorporated abrasive particles to give the abrasive effect. Everything was straightforward until a sub-claim referred to ‘said articles’. Was this ‘particles’ with a p missing, or article with an s added?And yes, it did make a difference!

The examiner still seems to be fond of ‘for’, ‘comprises/comprising’, incorrect antecedents, and incorrect claim dependencies. These are points that are usually easy to deal with, but comments must be provided if the marks are to be scored. You must explain how you understand the words of the claims, and give reasons, always remembering that the marks go

for the reasons, which may be ‘because this is the conventional meaning of the word in a patent claim, and the skilled reader would know that’ .

‘For’ is generally understood as meaning ‘suitable for’ rather than ‘specifically intended for’ – but defining a word by using that word may not necessarily show the examiner that you know what the word really means, and so ‘for’ may (if the context allows) be understood to mean capable of performing the function (that follows the ‘for’) without any significant alteration or modification. It may be impossible to find any evidence in the specification that this is what the

term means, and so if the term is interpreted in this way, it will not be easy to give a reason –let alone a reason deduced from the specification itself.

The word comprises (or comprising) frequently brings with it the baggage as to whether this term is an ‘open’ term, really meaning at least includes these features, and may possibly include other features as well… or whether it is a closed term, meaning consists solely of these features. An Australian court has held the word to be a ‘closed’ term, but that decision is not binding in any way in this country, and in any event in subsequent Australian decisions the term has been construed to be ‘open’.

However, the fact that an Australian court reached the ‘closed’ construction does show that even words that appear to have an accepted meaning may mean something else (and may make you very careful when you draft claims – especially if there is any chance of the claims being included in an application filed in, or designating, Australia).

If you do have decide on the meaning of the term in a FD4 paper, the ‘repercussive’ effect discussed above may be of use, since if the sub-claims introduce further features, then the comprises of the main claim must be ‘open’, and logically the remaining uses of the term will most probably be ‘open’ as well. On the other hand it may be possible that a narrow or closed construction of the term comprises may be necessary for the claim to be valid over the admitted prior art.

The false antecedent is very common in the claims of patents in Infringement and Validity papers.There are various types of false antecedent.

A completely new feature could be introduced for the first time, typically in a sub-claim, referred to as ‘the’ or ‘said’.

A feature that is possibly implicit can be introduced with a ‘the’… such as ‘the base of the channel…’ when only the channel has been identified previously. References to things such as the axis of the body when the nature of the body has not been defined at all… the upper end when, again, there is no description of form, or of orientation… the polymer when only a plastic has been mentioned previously are further examples of references being made to features that have not, strictly speaking, been introduced, but which may be considered to be implicitly present.

Another way that a false antecedent can be created is for the examiners to write a main claim that would say, for example, that item A was connected to item B. Subsequently, the claims would refer to said connector, or said connection.

In all of these types of false antecedent the intended meaning may not be difficult to fathom, but the inconsistency should be addressed, and possibly the suggestion should also made that the claim should be amended. You might propose (for the last example given) that the claim in which the word ‘connector’ appears for the first time should be amended, by adding in the preamble of the claim a reference to the fact that A is connected to B by a connector….

Another situation that could be engineered into the claims by the examiner would be to have strange claim dependencies which would lead to there being no antecedent for a word in a subclaim when dependent on one of two preceding claims, although the antecedent would be there when the claim was read on the other preceding claim. For example, claim 1 would say there was a connection and claim 2 would specify the connection as a pivotal connection. Claim 3 would be dependant on claim 1 or claim 2 and would indicate that the pivotal connection incorporates a limiter to limit the degree of pivotal movement. This language does not give any problem when claim 3 is read as dependent on claim 2, but when it is read as being directly dependent on claim 1, then there is no antecedent for the pivotal connection. If a situation like

this arises it is probably best to explain that you will read the claim as only dependent on claim 2, so that the claim makes sense, and then to suggest that an amendment or correction of an obvious error is made to make claim 3 depend solely on claim 2.

Most frequently, points of construction of the types mentioned above do not really alter the overall scope of the claims, but they may make the claims less than totally straightforward to read.

Here it should be mentioned that there are three classes of word/phrase/point of difficulty that appear in the claims of an Infringement and Validity paper.

Firstly, there are terms that are not relevant to the scope of the claim. Many of the ‘linguistic tricks’ outlined above fall into this category. However, many other words in the claims, which should be subject of a passing comment from you, may also be in this category. For example, if the claim calls for ‘a casing’, and all of the disclosures of the infringement(s) and the prior art in the paper each show something that is readily identifiable as a ‘casing’ – even if it is described as ‘a housing’, or ‘a hollow handle’ – then there is no need to go into great depth when construing the term ‘casing’ in the claim. One must define the term, or explain it, preferably giving a synonym or two, but only very, very briefly. For example, one might just comment that the term ‘casing’ is clear, or takes its usual meaning, and includes a housing, or an element that defines an internal chamber. But you must also give a ‘reason’ why this meaning is taken. Possible reasons would be that it must mean this to include or ‘catch’ the described embodiment, or that this is the only sensible construction that would occur to a person skilled in the art, but ideally you would look for the way that the word is used in the specification, and see if there are any phrases there that can be used as ‘evidence’ from which you can show ‘reasoning’. Then in the infringement and novelty sections you can discuss how what is shown is really ‘a casing’.

Secondly, there are terms which are relevant to the scope of the claim, but which are clear on considering the text and/or drawings of the specification.For example, the claim may say ‘a drive chain within the housing’. One of the prior art documents may show a drive chain that runs through the housing, but which is also exposed, over part of its length, exterior to the housing, leading to the question of whether the prior art chain is, or is not, inside the scope of the claim. If the example in the patent shows the drive chain partly exposed exterior to the casing, then you will be able to argue that the claim must be construed with ‘within’ meaning ‘at least partly within’.On the other hand, if the examples show the chain completely within the housing, and the description says ‘it is essential, for safety reasons, that the chain is completely enclosed within the casing’, then you can logically reach the opposite conclusion. These are terms that should be discussed, and where you should give your reason, identifying precisely where you find evidence in support of your conclusion.

Thirdly, and most importantly in the context of FD4, there are terms which are relevant to the scope of the claims which have more than one potential meaning based on the text of the specification.To continue with the example of the drive chain, while the claim says ‘a drive chain within the housing’ the description may identify the housing, and identify the drive chain and its drive sprockets, but fail totally to mention anything at all about the drive chain being ‘within’ the housing. The figure may show the chain completely within the housing, but should this part of the claim be construed narrowly or broadly? It can be seen that the result of the construction of this point may be the difference between the claim being novel, or being anticipated, and it is how you handle a point like this that will impress or not impress the examiner. You must look to see if there is any evidence that you can find anywhere in the patent

that might lead you, standing in the shoes of the skilled person, one way or the other – even if the evidence or clue is very subtle. You must be able to reach a conclusion, and give your reason, with the reason being based on information given in the question.

A point like this is a ‘balance-point’. If it is decided one way, then the patent is valid and infringed, but if it decided the other way, then either the patent is not infringed, or the patent is not valid. The examiner may build several ‘balance-points’ into a set of claims. Here it is important for you to understand that the examiner has designed the question so that most of the balance points can each logically be decided in either direction. So, there may well be some evidence to support the view (using the drive chain example) that the chain must be totally within the housing, and some evidence that it may be partly exposed. Sothe examiner may have put a reference to ‘drive chain completely within the casing’ which can be used to support an argument that ‘within means completely within’ – but there may be a reference to the fact that ‘in an alternative embodiment the forward drive sprocket can be at the end of the support arm’ which might be used by showing that if the sprocket is moved to this position the chain will inevitably, for part of its length, be outside the casing, which could be used to support the argument that ‘within means at least partly within’.

The examiner does not mind which way you decide a ‘balance-point’ – but you must give your reasons for reaching a conclusion, identifying the evidence that you rely on.

It is impossible to provide an exhaustive discussion of everything that could come up in the claims of a FD4 paper, but some words and phrase-formats (in addition to those discussed above) tend to make repeat appearances. We will now briefly look at examples of these words, to see how they can cause problems.

Means for is a phrase that has been seen in the claims in a FD4 paper. This phrase has all of the resonances of for with the added frisson of the vague word means. It is probably reasonable for the author to intend the word to include the described mechanism or arrangement, but it is not unknown for the specification in a FD4 paper to be very woolly at a point like this. You must just make a decision as to whether the phrase is broad or narrow, and try and justify your decision somehow.

Even a word like the word to can be problematical. If the claim specifies that something is heated to a specific temperature, what is the situation where the prior art or infringement heat to a higher temperature?Does the word to mean just up to or does it mean at least up to? You will have to look to see where the specification will help you divine what was intended by the word as used in the claim.

In another sense the word to can be intended to define the function of an element. So one element may be said to prevent movement of a second member. In the described embodiment, the first element will no doubt be described as operating to prevent the movement of the second member, but is the word to broad enough to catch an arrangement in which the first element could possibly be used to prevent movement of the second, even if it is not described in those terms? A ‘balancepoint’ like this can be very hard to resolve – and that is the whole point… can you deal with a difficult point in a clear way, reaching a definite conclusion based on logic, and showing the reasons for your conclusion? When you see a difficult point like this in the examination you should not shy away from it or ignore it, but grasp it firmly – because if you have found a difficult point, you have found an area on the marking schedule where there are marks to be found!

The examiner can sometimes use a made-up phrase, such as a one-hand coupling or an automatically engaging coupling…, or may include a restriction as to the area of use, such as a garden saw… or a caravan light fitting. If you are used to drafting, you give an internal shudder as your eye catches phrases such as this, because instinctively you know that you would never write a phrase like that yourself. However, if you see wording of this type, you will know that it has been planted in the claim for you to consider. Remember that you must look for some sort of evidence as to whether any real restriction is intended by the words one-hand, automatically engaging, garden or caravan. Again, points of this type are most likely to be ‘balance’ points, and consequently it does not matter (in the surreal world of FD4) what conclusion you reach, provided that you justify your conclusion in some tangible way.

Relative terms can be a nightmare in the real world, and this is reflected in FD4. Relative terms are words or phrases such as strong, weak, relatively strong, relatively weak, very strong, very weak, high absorptivity, low absorptivity, to some extent translucent. The list is really endless and the examiners are good at finding new examples each year. Look out for these terms when reading the claims. They will need to be construed, and some sort of tangible limit that is appropriate for the remaining documents in the case must be put forward and justified. Again, the term may reasonably be construed to include all of the described examples, and to exclude the described prior art and common general knowledge, which might help to define a useful border as to what is in and what is out.A consideration of the underlying purpose of the strength / weakness / absorptivity / translucence (or whatever parameter it may happen to be) may lead to a possible determination as to what is the limit of effectiveness. All evidence for the definition of a boundary of this type must come from the patent or the acknowledged prior art or the common general knowledge of the skilled person. You may not have to find an absolutely definitive boundary between, for example, the translucence in the claim and the opaqueness outside the claim – you only have to find a definition that will let you decide if the disclosure of each document is inside or outside the claim. Here the underlying purpose of the translucence may be of great importance.

So we can appreciate that the purpose of a feature in the described embodiments, or the way that the feature works, can be used to help determine the scope of the feature in the claim.

It is possible for the examiner to include in the invention of the patent, and also in one or more of the infringement and prior art disclosures, a feature that is identical or virtually identical, while being described in very different words. In a situation like this, it is possible to give the relevant wording of the claim a ‘purposive’ construction, pointing out the underlying purpose of the feature, and interpreting the words to mean, essentially, anything that can perform the function, or anything that can perform the function in the same way as described in the patent. If the actual structure of the invention and the prior art/infringement is essentially the same, then there should be no need for an extensive construction of the relevant wording.

Sometimes the examiner is lucky, or clever, enough to come across a word that can have two meanings, each of which would be a possibility. One example used in a past paper is the word ‘normally’. Was this used to mean ‘in its usual condition’ or ‘in a typical situation’… or since the word was used almost immediately after the use of the word ‘axially’, did it mean ‘perpendicular to the axis’.Yes, it was a very weak ‘pun’ put in by the examiner, but no doubt there was a mark, or part of a mark, for spotting it. In the event, it really did not matter which interpretation was put forward.

The examiner can have tremendous ’fun’ with numbers and ranges. The word number itself has been used to good effect…a number of levers and a number of drive rods… does the word number include the number 1, or even the number zero? The presence of the plural form (levers, drive rods) might indicate that two or more was intended, but that might not be the only evidence of intended meaning present in the patent.The double use of the word ‘number’ may mean that there are equal numbers of levers and drive rods, but that might not necessarily be the case.

Usually, if whole numbers are used to indicate the number of discrete articles present, the only debate can be as to whether a number greater than the specified number is within the claim. If the claim refers to a chair having three legs it would certainly seem that a two-legged chair would not be within the claim. A three-legged milkmaids stool might be (and is a stool a chair?), but a fourlegged chair might also be, as it certainly has three legs, and then an extra one as well. Here again one would be looking for evidence of intended meaning within the patent itself.

Ranges come in several forms. There is the integral element sort of range… between three and seven light-emitting diodes… where the nature of the items being considered makes it impossible to have a fraction or a decimal value, and ranges of this type are usually very specific and cannot easily be construed to mean anything other than what they say. The situation may be different if the numbers are large. For example, a reference to ‘between 100 and 400 bricks....’ might, in some circumstances, be ‘stretched’ to include 98 bricks, or 405 bricks on the basis that by using a round number of hundreds the draftsman was not setting a precise end to the range.Then there is the continuous sort of range… 3 to 7 degrees Celsius. Ranges of this type could logically be considered to extend half-way to the next significant figure. So a range of 3 to 7 might be described as running from 2.50 to 7.49. However, if the range was stated as being from 3.0 to 7.0, then the range could logically be considered to run from 2.95 to 7.05. This approach was adopted in Lubrizol v Esso BL C/110/96 and [1998] RPC 717 (CA). In Goldschmidt v EOC Belgium BL/83/99, a reference to ‘a pH value of 5 to 8’ was construed broadly because it was found that pH was usually recorded with an uncertainty of 0.2 to 0.5 units.

Smith & Nephew PLC v Convatec Technologies Inc [2013] EWHC 3955 (Pat) is a judgment that is well worth downloading and reading, to show the care and thoroughness given to a simple, but crucial, point by the judiciary.

A major part of the decision discussed a range stated in the claim to be ‘between 1% and 25%’, and where a potentially infringing process used a value of 0.77%. The judgment is worth reading to see the care with which the decision was made, and the reliance on expert evidence. In this case it was decided that the lower limit should be 0.95%, and the upper limit 25.5%. Part of the rationale was that the ‘accuracy’ at the lower end of the range would then be 5% (as compared with 50% if the lower end was deemed to ‘stretch to 0.5%) which was about the same order of magnitude as the ‘accuracy’ of 2% at the top of the range. This decision has, however, been reversed on appeal [2015] EWCF Civ 607.

The ranges shown above are double-ended ranges, that is to say ranges which have a beginning and an end. Sometimes there are single-ended ranges such as…up to 5%, less than 5%, or more than 5%. Should you need to try and determine the ‘other’ end of such a single-ended range, again you will have to look in the patent for some sort of evidence. If the range is up to or less than, then is it essential that there is at least some of whatever is being referred to, or will everything be all right if there is none at all?If the range is a more than range, how high up could

you realistically go with the invention still working and still providing some sort of advantage.

Numbers or numerals appearing in claims may also need to be understood to be ‘rounded’ in the same way as the ends of ranges as discussed above. With all numerical values there may be the further problem of a ‘fudge’ word such as ‘about’, ‘approximately’ or ‘substantially’. If any of these turn up, look closely at the examples to see how far the specific examples are removed from the language of the claim. This may give you an idea of the degree of ‘stretch’ provided by the fudge word.

Again, if there are two independent claims, remember to look at them very closely, to see where the language used is the same and where it differs. Often words that were critical to your interpretation of the first independent claim have been changed or omitted, so that the effective scope of the second independent claim is very different from that of the first.

Many years ago, before ‘purposive construction’ had been invented, the claims of a patent were read in the same way as a Deed and each word had to have a consistent meaning. Sometimes the FD4 examiner will ‘give a nod’ to this old convention and may use a word to identify two different things. For example, the claim may refer to… the end of the arm… and also to… the end of a rib. So the word ‘end’ is used in two contexts. Maybe it is clear from the examples given in the patent that the ‘end of the arm’ is not restricted to the very terminal point on the arm but really means ‘the end region’ of the arm or even ‘up to a quarter of the way along the arm from the terminal point’. The puzzle that this raises is this: does the word ‘end’ have the same degree of flexibility in the context of ‘the end of the rib’. The must be an argument that the word ‘end’ will have been used in the same way at each appearance, but there may be a contra-argument that the word has different meanings in the different contexts. This situation needs to be analysed, the two arguments sketched out, with reference being made to any ‘evidence’ that can be found, and a conclusion must be reached.

A similar dilemma can be created by the examiner by using a ‘fudge’ word, such as the word ‘about’ or ‘approximately’ in connection with two figures or ranges. Does the ‘fudge’ word imply the same degree of elasticity to each of the figures, or each of the ranges? Is the ‘elasticity’ ‘plus or minus two’… or is the elasticity ‘plus or minus five per cent’? These are the questions that may well have to be answered.

Often in a FD4 paper there is no statement of invention at all, or the statement of invention differs from the language of the claim. Sometimes words that are of crucial importance in the claim do not appear in the text of the patent at all. This can often make the task of interpreting the claims more difficult, but also gives an opportunity to suggest that the invention(s) of the claims are not sufficiently described in the specification.

The description in the specification should be sufficient for the skilled person to perform the invention(s) of the claims. If the claims are broad, a description of a single embodiment may be sufficient if it would be in the ambit of the skilled person to develop the described embodiment to become other embodiments across the scope of the claims without providing any inventive input. However, there may be an an argument, in such a situation, that a description of a single embodiment is not an 'enabling' description of the broad invention claimed. However, in FD4, where the subject-matter is usually simple, this may be unlikely.

You may find that some specific words or phrases in the claims are used in one or more of the prior art documents. It may just be possible to suggest that this use of language in the prior art

shows that the words are a ‘term of art’ with an accepted meaning, and that the meaning must be applied to the claims of the patent. This, however, is an interpreting tactic that you must use with extreme care, as it is evidence in the patent itself that is most persuasive in a FD4 paper. You cannot really use this technique for general words such as ‘incorporate’, ‘housing’, ‘flange’, etc.

As and when you come across ‘difficult’ points of construction, it may be wise to jot down any amendments that the patentee could make to overcome the problem, to make the task of understanding the claims easier. Can the patentee amend to clarify any passages that are possibly ambiguous, or to correct any lack of antecedents, or to correct claim dependencies when these are inappropriate?If you at least write notes concerning amendments as you go along, you may find it much easier and quicker to write a succinct section on amendment later on. Perhaps you should write the word ‘Amend’ (and underline it) at the bottom right hand corner of a paragraph discussing a point that could readily be improved (from the patentee’s point of view) by an amendment. This will show the examiner that you are aware of the possibility of amending, and when you come to the amendment section you will be able to skim your answer to find quite quickly the points where amendment may be of value.

But how should you actually ‘do’ the interpretation section? You know what sort of thing you are looking for, but what do you do when you have found it?

You need to identify words and phrases in the claims for construction. Here you can adopt a style that will help you save time in the later sections of your answer.

As we start on interpretation, you can divide up each claim into sections which may each be a phrase or a word. You can indicate the word or phrase that you will consider initially, and give it reference such as 1a or 1.1.Subsequent words or phrases can be 1b, 1c, etc, or 1.2, 1.3, etc. You need not write the whole of the phrase if it is long… just the first couple of words and the last couple of words to show the examiner what you are looking at.

To save time, many candidates use the claims page from the question paper and indicate on this how they have broken down the claims, usually by indicating the start and end point of each segment of each claim and the reference (e.g. 1.1, 1.2, 1.3) for each segment – this is then submitted as part of your answer, usually as page 1.

So you might put…

1.1 A safety belt buckle comprising (or just “1.1 =” if you’ve handed in the claims as page 1) (or “1.1 A….comprising” - the examiner will realise that you are indicating the opening words of the claim)

You can then give a ‘translation’ of this portion of the claim. Perhaps the ‘translation’ should use words which are not the same as the words in the claim. This will help you to demonstrate to the examiner that you have really understood the words.

You might identify the key parts of this portion of the claim are “safety belt buckle” and “comprising”, and so you next set out what each key part means:

“safety belt buckle” = a device to receive the tongue on a motor vehicle safety belt

“comprising” = which has at least the following features

As you will see, sometimes it is impossible to use ‘different’ words. There is no easy synonym for ‘safety belt’. If you are struggling to define something in a portion of the claim, i.e. you only seem to be able to define it using the same wording in a different order, then this is a likely indication that there simply isn’t a mark for this analysis and perhaps the wording is clear!!! Move on…

Sometimes you need to give your reason for reaching your conclusions, especially if you think that any of the key phrases might be a balance point or have alternative valid constructions that you have dismissed. If the reason is very straightforward… this is the only reasonable

construction… this is what is clearly shown in the drawings, and is described using the same phraseology… then you are unlikely to score many marks and should consider omitting writing anything and simply moving on, but if your reason could be more detailed then this might be because there is something to discuss that will be awarded marks by the examiners… p3 line 4

says ‘buckle 15 is designed to receive tongue 22 on the motor vehicle safety belt 12’ ‘Comprising’ is usually understood to be an ‘open’ term meaning ‘including at least’, and claim 4 introduces a further feature so ‘comprising’ cannot be a ‘closed’ term.

If you can find evidence in the description to support a particular interpretation, you should give the page and line numbers and at least mention the key words of the passage so that the examiner can see how you have got from this passage to your conclusion.

You will not spot every single point for discussion in the construction section, but (a) you should aim to spot all of the “patent word” such as “comprising”, “for”, ranges, optional features, lack of antecedence, incorrect dependencies, etc that are discussed earlier in this chapter and which occur in almost every FD4 paper; and (b) you should aim to spot and discuss the major points of debate in the claims – so any significantly unclear terms and any tipping points.

You need to continue this process, until you have worked through all of the claims. It is key to this paper to spend the time working through the claims and analysing the key phrases and words, or else it will be impossible to do justice to your answer for the rest of the paper.

You will see that the structure for this part of the answer comprises three parts. The first part identifies the passage or word of interest, the second part sets out the meaning of the identified passage or word (i.e. your construction), and do not forget the third part where you set out your reasoning if necessary. If you practise making sure that you have covered these three components to your answer, in whatever format you think works for you, and you use it in the examination, you will be forced to give your reasons. Another approach is to adopt a rigid style in the form of ‘Identify, means… because…’ So initially you identify the word or words being considered, then after the word ‘means’ you put the meaning, and then the word ‘because’ and the reasoning followed to deduce the meaning.

The reason can be the most important part of the answer in construction, and it is the part that most candidates tend to leave out. This may be because, in FD4, the reasons are often simple, easily understood, and may be considered to be ‘trivial’ and ‘not worth mentioning’. However, in FD4 the examiner is forced to use very straightforward technology, and any ‘invention’ is going to be very simple. However, the FD4 examiner wants to give you marks for selecting points and displaying reasoning where these is something to discuss. If your reason is “takes its normal dictionary definition” or “common drafting practice” then there are unlikely to be any marks,

but if there is more to why you chose your construction then please mention it to the examiner as they would love to be able to give you the marks for explaining yourself.

As you will see, if you use a logical numbering system for all of your sections of the claims, you can re-use the numbering system when considering infringement and novelty, which will save the repeated re-writing of the words of the claims.Any time that can be saved when answering a FD4 paper should be saved, as it is simply running out of time that seems to cause most of the unsuccessful candidates to fail.

Leave plenty of space on the page between the various numbered sections, by starting 1.2 several lines beneath the end of 1.1 or preferably on a new page. In this way if, when you do infringement or novelty you find that your interpretation did not deal with the difficulty adequately, you have room to amplify and clarify your interpretation and your reasons.There is no rationing of paper in the examination, and this approach would facilitate a very substantial revision and clarification of your interpretation, should that be necessary. The FD4 examination is not kind to trees!

Do not be afraid to use a drawing or sketch if will help you get your point across to the examiner.

As you approach the sub-claims, remember to interpret the claim dependency portion of each claim, and point out any inconsistencies with the dependencies (… if there are any). If anything, these are the “easy” marks, or at least the “low-hanging fruit” that all candidates must remember to deal with – a lot of candidates in the examination score awfully close to a pass and ensuring that you score all of the “easy” marks should hopefully get you across the line to a pass mark.

Looking at the published marking schedule for the 2014 P6 examination, in the construction section you will see that there were marks for explaining what ‘A panel according to claim 1’ and ‘A panel according to claim 2’ etc. meant. The examiner wants you to indicate the possible combinations of claims, and so for claim 4 expected candidates to say something like ‘A panel

according to claim 1, 2 or 3 ‘ means a panel having the all of the features of any one of claims 1, 2 or 3 and the following features, and so the following features may be combined with claim 1, claim 1+2, or claim 1+2+3, (but not claim 1+3) because this is conventional drafting practice’. The claim dependency combinations are of importance when considering novelty and inventive step.

Try and give some meaning to the omnibus claim. The examiner does not want you to say ‘This has its usual meaning’. He has often put in a nonsense omnibus claim that relates to what is described or what is shown in the drawings. It may be sufficient to say that the omnibus claim is restricted to an item that has all of the features described and shown, but some attempt to explain should be made.

If you find that reading the claims first, before you read anything else, is a good approach, then you might also find it beneficial to write out the claims in ‘bite-sized-chunks’, with a new sheet for each new chunk, as you do your initial reading of the claims (or break up the claim on the question paper and write that it is page 1 at the top of the page). This will force your brain to think about the claims even more than by just reading them, and you will have written out part of your construction in a very time-efficient way. Another tip is to use a yellow highlighter (as these do not photocopy) and highlight any words or phrases that immediately strike you as

worth construing) – thus you can do a first pass before you become too comfortable with the wording of the claims which will hopefully allow you to identify all of the “patent words” as well as the most unclear terminology in the claim.

While the reason is the most important part of the answer, you do not have the time to write reams and reams of reasoning about a single point nor for every point. In the real world, if there was a crucial point, and the matter was going to litigation, then there would be reams written about it, but you must try to develop a style that covers the ground succinctly. Also you should, wherever appropriate, give the location of the ‘evidence’ (support) in the patent that you rely on to make your conclusion. Sometimes you will not have anything useful to write and need to develop a skill for moving on without writing much or anything, or else you will waste time, as part of the skill set for FD4 is the ability to focus on the important points and providing reasoning and argument for these important points.

So, your answer (you will just have to imagine the questions) might include passages similar to the following:

The phrase ‘foam bodies’ must be expected to include (not necessarily be limited to) ‘a closed cell polystyrene foam’, because that is what is shown in the examples, (see example 1) and on a reasonable construction the claim must embrace the examples.

This language is very ‘positive’ and really relies on the understanding from Virgin Atlantic that the skilled person knows something about patent law, and expects the claims to embrace the examples. However, this sort of reason is only appropriate if there is no counterargument that the actual wording of the claim forces a different interpretation.

The phrase ‘foam’ must be expected to include foam which has additional particles in it because of the effect of dependent claim 3 which specifies the presence of particles (the repercussive effect).

Again, this sort of reasoning is only appropriate if there is no counter-argument that the words of the claim force a different interpretation.

Although only a hinged connection is described, the word ‘connection’ would be expected to include more than a hinge (as the skilled person, who knows a bit about patents, would be expected to know that no two claims should have the same scope) and dependent claim 4 simply says that the connection is a hinge. The claim may lack support, although there is an argument that the skilled person would readily recognize that connections other than a hinged connection could be used.

This reason again relies on the assumption that the skilled person knows some patent law and practice. Again, the reason is only appropriate if there is no counter-argument.

Also, in this last reason, the answer touches on the problem of ‘sufficiency’ as well as dealing with interpretation as such. Often problems like this are spotted at the interpretation stage. If a comment is made at this stage, you may score marks in the ‘sufficiency’ or ‘internal validity’ part

of the answer, even if you forget to discuss the point again later in your answer. Some candidates write their Sufficiency and Amendment answer sections in parallel with their Construction answer section to ensure they capture each of the points they spot in the correct part of their answer.

The word metal must be expected to be limited to copper because that is the only example given and there is no support for a wider interpretation, since page 4 line 2 says ‘it is essential that pure copper is used…'

Of course, there may be a strong counter-argument that if the description refers to copper, and the claim refers to metal, then the patentee must have intended the word ‘metal’ to include more than just ‘copper’… and you may have to discuss both possibilities before reaching a conclusion.

There are two possible interpretations of ‘an air gap between the panels’. It could mean that there is an air gap somewhere between the panels, but there may be further layers between the panels and the air gap, or it may mean that the panels themselves form the boundary of the air gap. The first interpretation is preferred as page 3 line 2 says ‘in other embodiments one or both sides of each panel may have a thin coating of heat resistant material.

Here we have clearly indicated two reasonable interpretations, and have selected one, giving a reason, and saying where the evidence can be found. Again, always look closely at anything, anywhere in a FD4, which is ‘in a modified embodiment’ or ‘in another example’ (or anything of that sort) since this is often where the examiner hides very relevant information.

The word ‘soldered’ can be understood to mean ‘welded’ since this is what is actually disclosed in the description, with no mention of solder or soldering in the specification at all.

Here it may be that there are strong arguments in other directions. Is there anything at all in the specification that can be used to show what the skilled person would think that the word ‘soldered’ might actually mean? There would be room to discuss whether a word that has a readily understood meaning (such as soldered) should be given a very different meaning (such as welded) just because no soldering is described… or should the word be given its usual meaning and the claim be found invalid for want of support.

‘For’ = ‘suitable for’ and includes anything that could perform the purpose, even if not in a totally ideal way, without any major modification.

The word ‘for’ was considered by the Court of Appeal in 2011 in Virgin Atlantic Airways Ltdv Delta Air Lines Inc [2011] EWCA Civ 162 (www.bailii.org/ew/cases/EWCA/Civ/2011/162.html).

‘about 8 to 10 widgets’ = would most probably be understood by the skilled person to include the embodiment of example 3, where only 6 widgets are present. The range

must be considered to be a guideline with some flexibility at each end and might be considered extend, at least, from 6 to 12.

‘elastic’ = capable of stretching up to 125% of its original length in claim 1 and so it must be expected to mean the same here in claim 4.

The fact that ‘elastic’ meant capable of stretching up to 125% of its length in claim 1 is of interest, but in this claim the word ‘elastic’ is used in a different sense and means ‘capable of returning to its original shape’ because in claim 1 the word ‘elastic’ was used in connection with the drive belt, and in this claim the word is used in relation to the carriage stop.

The two suggestions given above are intended to show that it is possible to reach different conclusions, both reasoned and reasonable, from the same starting point.

The word ‘anchor’ has no antecedent. Claim 1 called for the bracket to be anchored to the support plate. The skilled person would assume that ‘’the anchor’ is the item that performs this ‘anchored’ function, because this is what is described Page 3 ll1718 ‘… the anchor 6 anchors the bracket 1 to the support plate 4’

‘Comprises’… = ‘includes at least’ because claim 4 adds another component (repercussive effect), and conventional drafting practice.

‘Comprises’… is an ‘open’ word, meaning ‘includes at least’ because the described embodiment includes other components and the described embodiment would be expected to be inside the claim.

Claim 4 is dependent on claim 2 or 3 and says that the support arm is horizontal. The support arm is only introduced in claim 3. The skilled person will immediately see there is an error, and will see that if the claim is dependent on claim 2 it is a nonsense and so will read the claim as being dependent only on claim 3.

Here we have spotted a problem, and ‘fixed’ it in a logical way. However, the situation could be improved by making an amendment. If you are not writing your amendment section in parallel, you must somehow remember to deal with this at the amendment stage. Perhaps it would be best to write the word ‘amend’ and underline it near the left-hand margin. Like this:

AMEND

and then when we come to the amendment stage we can look back to find references to amendment (and even if we fail to do this the examiner may be kind and give a mark, or a part mark, for us noting that an amendment might help).

In the phrase... ‘the trailing arm is secured to the guide arm, which arm is horizontal’… may mean the trailing arm is horizontal or may mean the guide arm is horizontal, but the skilled person would understand it to mean the guide arm is horizontal because… (shown in drawings… only sensible…)

‘Within’ means totally contained inside because page 3 paragraph 2 stresses that all moving parts must be concealed and the drawings only show embodiments where the mechanism completely inside housing 3.

‘Within’ means at least partly inside, because if the key was totally inside, then there would be no part of the key that could be grasped to turn it. So part of the key must be accessible for it to perform the described function.

Finally, remember again that what you are doing in the interpretation section is to double-guess what the skilled person would think that the claim was intended to mean, and it may be prudent to say that you would run your reasoning past a skilled person to ensure that they agreed with your logic, your reasoning, and your conclusions. Also note that if you use a construction technique that you have seen used by the courts (for example, construing a number as in Lubrizol or Goldschmidt, or the more recent Smith & Nephew or construing ‘for’ as in Virgin Atlantic) you may score an extra mark (or part of a mark) if you can identify the relevant case.

EXERCISE 1

Please read the following claims to get an understanding of the invention. One or two read-throughs should be quite enough. All we are looking for is a general understanding of what the claims are all about.

Claims

1. A sequestering tile for a solar energy collector having a metal carbide collector surface, the tile comprising a water inlet and outlet, and a plurality of parallel small diameter water flow passages extending through the tile.

2. A tile according to claim 1 wherein the inlet and outlet are positioned to sealingly engage as the tile is set.

3.A tile according to claim 1 wherein there is a single sinuous passage between the water inlet and the water outlet.

4.A tile according to any one of the preceding claims wherein the channel in the tile has an inner coating of plastic and it has metal particles embedded in it.

5. A tile according to claim 4 wherein the metal is zinc.

6.A solar collector according to any one of the preceding claims wherein the particles have a diameter of from 0.5mm to about 1mm.

When you know what the invention is about, turn over the page

EXERCISE 1– notes

No doubt you spotted that the invention involved solar collector tiles which can be interconnected for water flow as the tiles are set. There is a water flow passage through each tile which has a plastic inner coating which incorporates zinc particles.

But what did you think about the claims as claims? Were they a good set of claims? Did you see any potential problems?

Go back and read the claims again, very carefully this time. Can you see any problems this time? Do the claims raise any questions in your mind? Note down any ‘points’ that you see.

When you have done this, turn over the page.

EXERCISE 1– notes

For a set of claims that gave us an understanding of the invention on a quick reading, there really are quite a lot of ‘problems’.

Here are some thoughts that might have passed your mind.

Claim 1.

What is a sequestering tile? The word may seem familiar to those who have studied chemistry, where sequestration is the removal of ions from a solution, but what could the word mean in the claim?

It is ‘for’ a solar energy collector. Does that include a tile intended for a very different purpose, such a tile for an underfloor heating system, which might have the necessary features and properties?

Does the ‘having a metal carbide collector surface’ apply to the tile itself, or to the solar collector in which the tile is to be used?

The tile has a ‘water inlet and outlet’. Could that be just one pipe, through which the water goes in and out, or must it be two separate things, an identifiable inlet and an identifiable outlet?

How many passages make a plurality?

How small is a small diameter?

The water flow passages extend through the tile…we might think they are in the plane of the tile, but could they go another way? Could these passages go from the top surface of the tile, through to the bottom surface of the tile, to prevent rainwater accumulating on the tile?

Claim 2.

How can the inlet and outlet of a tile engage each other? Or else what is it that the inlet and outlet engage? On a quick reading the impression might be obtained that the claim says that the outlet of one tile sealingly engages the inlet of the next tile… but there is only one tile in the claim.

Claim 3.

This is dependent on claim 1 where there is a plurality of parallel passages, but now we have a single passage. How could that work? What does ‘sinuous’ mean? Is there a repercussive effect on claim 1? Could the word ‘passages’ in claim1 be broad enough to mean ‘sections of a single passage’?

Claim 4.

The claim refers to ‘the channel’. What channel? There has been no reference to a channel before.

The inner coating of plastic seems reasonable. It has metal particles embedded in it. But what is the ‘it’? One might think it is the plastic, but could it be the tile? The grammar is very ambiguous. If the final words of the claim had been… and it has a metal edge to engage the metal edge of an identical adjacent tile… you would have taken the last phrase as relating to the tile as a whole.

Claim 5.

What could be more straightforward? This is claim depending on a single preceding claim, which had introduced the concept of metal particles, with the claim specifying the metal as zinc. But look again at claim 1 which refers to a metal carbide. Maybe the ‘metal’ of claim 5 is a reference to the metal of the metal carbide.

Claim 6.

This claim is dependent on any one of the preceding claims, but the concept of the particles was only introduced in claim 4.

The range is interesting. It goes from 0.5 mm to about 1 mm. So one end of the range is ‘made fuzzy’ or loosely defined by virtue of the word ‘about’ while the other end is precise. What can we make of that? Should the other end be equally ‘fuzzy’, or should it be precise as different language has been used? We will probably have to look at the examples in the patent for an answer to that one. Otherwise we will just have to jump one way or the other, and try hard to justify why the skilled person would reach that understanding. Also bear in mind that the courts may well take into account the technical possibility of accurate measurement. How do you measure diameter when there are a number of particles all of which can have slightly different sizes? Are the particles necessarily spherical? What is the diameter of a non-spherical particle? There are lots of considerations that may have to be taken into account. And we must do all of that in about 50 words! And even at this stage you can almost guess that somewhere in the infringement or the prior art there will be zinc particles having a diameter of 0.45 mm.

So, a set of claims which, at a quick reading, seem to be generally ‘all-right’ can be seen to be riddled with problems and points that need to be construed that we can identify before we see the specification at all! That is often the case of claims in the FD4 examination. It will be necessary for you to develop an appropriate style of reading, mentally questioning every word and phrase, if you are to see all of the points that have been incorporated in the claims in the FD4 examination paper.

EXERCISE 2

Here is a second set of claims. This time you are just to read the claims, see if there are any obvious problems, jot down notes on anything that you spot, and possibly draw a sketch of what you think the preferred embodiment will look like:

Claims

1. A blade for a bowsaw formed of a steel strip, the blade having teeth along one edge, the teeth having cutting edges and being arranged in groups of four.

2. A blade according to claim 1 wherein the teeth are offset alternately to one side of the blade or the other.

3.A blade according to claim 1 or 2 wherein the ends of the blade are configured to engage a peg on the bowsaw.

4.A blade according to any one of claim 1 to 3 wherein the groups are separated by clear spaces.

Just keep your notes to one side, as you will be seeing these claims again later on.