Patent Office Issues First Chemical Ruling

In a recent decision the Czech Patent Office applied the theory of equivalence in declaratory proceedings concerning the issue of whether a process fell within the scope of protection of a patent and thus infringed it.

The case concerned a Czech process patent owned by a major research and development-based pharmaceutical company protecting the process of preparation of a chemical substance. The plaintiff in the declaratory proceedings, a manufacturer of generic pharmaceutical preparations, filed an action demanding a decision of the Patent Office to the effect that the process of preparation of the chemical substance would fall within the scope of protection of the patent.

In its decision the Patent Office dealt with determination of the scope of the patent in relation to the process described in the declaratory action.

The scope of protection of a patent is defined in Section 12 of Law 527/1990 on Inventions and Rationalization Proposals. According to this provision, the scope of protection conferred by a patent or a patent application shall be determined by the terms of the patent claims. For the interpretation of the patent claims, the description and drawings provided shall be used. The first and second patent claims of the patent at issue covered the final steps in the preparation of a chemical substance.

The Patent Office held that it was necessary to compare the equivalence (or similarity) of the compared processes to decide whether the preparations in question were carried out in the same way and had the same result.

The Patent Office concluded that the described process contained in the declaratory action did have features equivalent to the process protected by the patent at issue and thus did fall within its scope.

This is thought to be the first decision of the Patent Office to employ the theory of equivalence in determining the scope of protection of a patent. It should provide owners of chemical patents with a higher standard of protection.

For further information on this topic please contact Karel Cermák at Cermák Horejš Myslil by telephone (+420 2 9616 7401) or by fax (+420 2 2494 6724) or by e-mail ([email protected]).