Patent Law and Theory
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Patent Law and Theory

A Handbook of Contemporary Research

Edited by Toshiko Takenka

This major Handbook provides a comprehensive research source for patent protection in three major jurisdictions: the United States, Europe and Japan. Leading patent scholars and practitioners join together to give an innovative comparative analysis both of fundamental issues such as patentability, examination procedure and the scope of patent protection, and current issues such as patent protection for industry standards, computer software and business methods. Keeping in mind the important goal of world harmonization, the contributing authors challenge current systems and propose necessary changes for promoting innovation.
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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


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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