Intellectual Property Office
125.01
s.130(7) is also relevant
Section 125 is intended to have, as nearly as practicable, the same effect as the corresponding provisions of the EPC, PCT and CPC.
| Section 125(1) |
| For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly |
125.02
This subsection sets out the meaning of an invention as that specified in a claim as interpreted by the description and any drawings, the protection conferred being determined accordingly. (The words for a patent in s.125(1) have apparently been inadvertently transposed and should follow the word application (first appearance), so then the sub-section should read: For the purposes of this Act an invention for which an application for a patent has been made or .. etc). It thus concerns the way in which the specification should be construed in this respect but does not impose any requirement with which the applicant must comply. Objection therefore should not be raised by the examiner under s.125(1) as such, although its provision may sometimes usefully be referred to when objecting on other grounds, eg under s.14(5). For example when a claim read on its own appears to be clear and to define the invention, such an objection under s.14(5) may arise if there is matter in the description which is inconsistent with the claim or in some other way casts doubt on the true scope of the invention, see 14.129, see 14.114 to 14.146.
125.03
[deleted]
125.04
[moved to 125.17.1]
125.05
[moved to 125.17.2]
125.06
S.123(3) and s.130(7) is also relevant
[deleted]
Biotechnological inventions
125.07
[moved to 125.27]
Section 125(2)
It is hereby declared for the avoidance of doubt that where more than one invention is specified in any such claim, each invention may have a different priority date under section 5 above.
125.08
If a claim is construed to specify more than one invention, the priority date of each invention should be determined separately. Note, partial priority may arise (see the chapter on section 5, particularly 5.20 to 5.25.3.
| Section 125(3) |
| The Protocol on the Interpretation of Article 69 of the European Patent Convention (which Article contains a provision corresponding to subsection (1) above) shall, as for the time being in force, apply for the purposes of subsection (1) above as it applies for the purposes of that Article. |
The Protocol on the Interpretation of Article 69 of the EPC
125.09
Article 69(1) of the EPC corresponds to s.125(1) of the Act and reads:-
The extent of the protection conferred by a European patent or a European patent application shall be determined by the terms of the claims. Nevertheless, the description and drawings shall be used to interpret the claims.
125.10
Both Article 69 of the EPC and s.125(1) of the Act should be construed in the light of the Protocol on the Interpretation of Article 69 of the EPC, which reads:
Article 1
General principles
Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Nor should it be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties.
Article 2
Equivalents
For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims.
125.11
[deleted]
125.12
[deleted]
General approach to construction
125.13
The reference in the first sentence of the Protocol to resolving an ambiguity rejects a literal approach to the construction of patent claims, where words were given their natural and ordinary meaning of words, ignoring their context or background unless they were ambiguous. The courts even prior to the Protocol were instead favouring a purposive construction of claims, by giving effect to what would have been understood by the notional addressee. In Catnic Components Ltd and another v Hill and Smith Ltd [1982] RPC 183, Lord Diplock stated (at page 243):- A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge.
125.14
The skilled reader is taken to suppose that the patentee knew some patent law that their claim is for the purpose of defining the monopoly and that it should be for something new, as held by the Court of Appeal in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2010] RPC 8. Knowledge of that may well affect how the claim is construed. For instance, the patentee would not be expected to have claimed what they had expressly acknowledged was old. However, the Supreme Court in Warner-Lambert Company LLC v Generics (UK) Ltd (t.a. Mylan) & Anor. [2018] UKSC 56 rejected the argument that, if the meaning of a term is ambiguous, the principle of validating construction (a concept derived from contract law) should be applied to give it a construction that results in a valid claim. Instead, claims should be construed purposively in light of the description, and validating construction should not be applied to give claims a meaning which preserves their validity, if this is not the meaning that the skilled person would read into the claim.
125.15
[deleted]
Relationship between the Protocol and the Catnic principle
125.16
[deleted]
Equivalents as a guide to construction and the Protocol questions
125.17
[deleted]
125.17.1
In approaching the construction of the claims the specification as a whole should be read to obtain the necessary background, and in some cases the meaning of the words used in the claims may be affected or defined by what is said in the body of the specification. In Palmazs European Patents (UK) ([1999] RPC 47, upheld on appeal [2000] RPC 631) Pumfrey J held that words of degree such as thin must take their meaning from the context. Different meanings could not be attributed either to exclude acknowledged prior art or to be consistent with representations made by the patentees patent attorneys in a letter to a patent office. Another example is Glatts Application [1983] RPC 122 at page 129, where Whitford J considered that if a particular claim were looked at alone, it would not be assumed that a certain fabric was one which was in itself necessarily and inherently air-permeable. However, against the description of the invention in question on its true construction the claims of the specification could properly only be read as being limited to an article suitable for conditioning fabrics comprising a flexible woven or non-woven air-permeable web.
125.17.2
In Hoechst Celanese Corp v BP Chemicals [1999] FSR 319 the Court of Appeal held that there was no rebuttable presumption that words in a patent specification which could have a technical meaning did have that meaning. The court was entitled to hear evidence on the meaning but thereafter had to decide on the meaning from the context in which they were used. See also 14.111 with regard to words used in a claim which are given a special meaning by the description. Caution should be used in considering the purpose or advantage of the