The Formstein Defence

Author Rklawton Licence CC BY-SA 4.0 Source Wikimedia Commons


Yesterday the Intellectual Property Office added a new para 125.17.8 on the Formstein defence to its Manual of Patent Practice.  Considering that the defence is a doctrine of German law and that there has been no firm decision on whether that doctrine applies to this country, that is quite remarkable.

Para 125.17.8 describes the doctrine as:

"a principle developed under German patent law in relation to infringement and the doctrine of equivalents (DoE), whereby if an alleged infringer can show that an equivalent is a non-inventive variant of the claimed invention, then the patent’s scope for the purposes of determining any infringement is held to its normal construction – in other words the DoE does not apply."

I have referred to the doctrine in Patents - Technetix BV and others v Teleste Ltd. on 19 Feb 2010 and 
Patents - Facebook Ireland Ltd v Voxer IP LLC
on 5 June 2021.

To understand it properly, a little bit of background is required.  S.125 (1) of the Patents Act 1977 provides:   

"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."

As the Act was passed to implement the European Patent Convention in the United Kingdom, s.125 (3) added:

"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."

Art 69 (1) of the Convention is as follows:

"The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims."

The Protocol on Interpretation was agreed by the contracting parties because different courts construe patent claims in different ways which could have led to inconsistent judgments.

For many years, the Protocol consisted of a single article:

"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."

At a displomatic conference that took place on 29 Nov 2000, the contracting parties agreed to an Act that revised the Convention.   One of the agreed changes was a second article to the Protocol:

"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."

It took a long time for the courts of the United Kingdom to take account of this new article, but in Eli Lilly v Actavis UK Ltd and others [2017] RPC 21, [2017] Bus LR 1731, [2017] UKSC 48 the Supreme Court acknowledged that there had been a change in the law.  Lord Neuberger said at para [54] of his judgment:

"In my view, notwithstanding what Lord Diplock said in Catnic [1982] RPC 183, 242, a problem of infringement is best approached by addressing two issues, each of which is to be considered through the eyes of the notional addressee of the patent in suit, ie the person skilled in the relevant art. Those issues are: (i) does the variant infringe any of the claims as a matter of normal interpretation; and, if not, (ii) does the variant nonetheless infringe because it varies from the invention in a way or ways which is or are immaterial? If the answer to either issue is “yes”, there is an infringement; otherwise, there is not. Such an approach complies with article 2 of the Protocol, as issue (ii) squarely raises the principle of equivalents, but limits its ambit to those variants which contain immaterial variations from the invention. It is also apparent that the two issues comply with article 1 of the Protocol in that they involve balancing the competing interests of the patentee and of clarity, just as much as they seek to balance the encouragement of inventions and their disclosure with the need for a competitive market. In my view, issue (i) self-evidently raises a question of interpretation, whereas issue (ii) raises a question which would normally have to be answered by reference to the facts and expert evidence."

One of the consequences of the Supreme Court's judgment is that it extends significantly the protection afforded to a claim.   The Formstein defence reins back that extension and goes a long way towards restoring the balance between "a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties."   As Lord Justice Birss explained at para [216] of his judgment in Facebook Ireland:

"I would hold that the right approach is the Formstein approach so that the conclusion if the equivalent device lacks novelty or is obvious is that the claim scope must be confined to its normal construction in that respect. I would do so for two reasons. If the claim on its normal construction is valid, then it seems harsh to invalidate it on this ground. What else could the patentee do but write their claim in a way which, normally construed, did not cover the prior art. So that approach promotes certainty. Secondly, since it is clear that other EPC countries work that way, this is a reason in itself for this EPC state to take the same approach."

Lord Justice Birss's remarks were obiter as were Judge Hacon's in  Technetix BV and others  v Teleste Ltd [2019] EWHC 126 (IPEC) and Mr Justice Nugee's in E Mishan & Sons, Inc (t/a Emson) v Hozelock Ltd and others  [2019] EWHC 991 (Pat).  That has led Amanda Ebbutt and Justnya Ostrowska to question whether a Formstein defence is needed at all on the basis that  "the test for obviousness is flexible enough to incorporate features of the analysis under the doctrine of equivalents" (see Ebbitt and Ostrowska Is Germany's Formstein defence to patent infringement becoming part of English law? 7 July 2021 TaylorWessign's website).  The new para 125.17.8 suggests that the IPO thinks that it is part of English and Welsh law and the doctrine does seem to make sense.

Finallty, if anyone is interested, Wikipedia states that the word "Fomstein" means "moulded kerbstone" in German and that the first case in which it was raised was Schneidmesser II; GRUR 1986, p 803. Federal Court of Justice of Germany, 29 April, 1986 (see Formstein Defence Wikipedia).  Anyone wishing to discuss this note may call me on +44 (0)20 7404 5252 during nomral business hours or send me a message through my contact form.


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