A Handbook of Contemporary Research
Edited by Toshiko Takenka
Chapter 15: Extent of Patent Protection in the United States, Germany, the United Kingdom and Japan: Examination through the Concept of ‘Person Having Ordinary Skill in the Art of the Invention’
Toshiko Takenaka 1 Introduction The Interpretation Protocol of European Patent Convention Article 69 emphasizes a balance between the competing policies for fair protection with respect to the patentee’s interests and legal certainty with respect to public interests in determining the extent of protection offered by European patents.1 This protocol for determining the extent of patent protection is common in the United States and Japan.2 The rule that claim terms determine the extent of patent protection is also common to four important jurisdictions, namely the United States, Germany, the United Kingdom and Japan. However, the courts in these four jurisdictions do not literally interpret the claim terms to decide the extent of patent protection, although these courts adopt the same rule that claim terms determine the extent of protection. Reflecting the balance, the extent of protection defined by these courts can be narrower or broader than the literal scope supported by the claim terms. This flexible claim interpretation results from the adoption of a statutory hypothetical person having ordinary skill in the art (PHOSITA). Although Convention on the Grant of European Patents, October 5, 1973, art. 54, 1065 UNTS 255, 272 [hereinafter European Patent Convention] (entered into force on October 7, 1977), The Protocol on the Interpretation of Article 69 of the Convention, art. 1. 2 For the US, see Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 US 17, 37, 137 L. Ed. 2d 146, 166 (1997); For Japan, see Judgment of Supreme Court of Japan, February 24, 1998, 52...
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