In the past 10 years, the Supreme Court of the Netherlands has considered questions relating to patent law numerous times.(1) About half of its judgments have dealt with the scope of protection, roughly one-quarter with procedural law and the remainder mostly with validity.

The May 25 2012 judgment of the Supreme Court in AGA Medical Corporation v Occlutech GmbH is the first case in five years in which the court has considered the scope of protection.(2)

The scope of protection must be determined on the basis of Article 69 of the European Patent Convention (EPC), a rule of uniform European patent law. The national court is competent to apply Article 69.(3) An impressive body of case law(4) has been established on the matter, particularly by the highest courts of Germany and the United Kingdom - the Federal Court of Justice and the Supreme Court, respectively. These courts are traditionally well versed in patent law and did not take long to adapt from their national regimes following the introduction of the EPC.(5)

In patent law - the main exception to the primacy of free competition - the applicable law should be consistent across Europe. National courts would be well advised to monitor the decisions of the Federal Court of Justice and the UK Supreme Court, in the interests of harmonisation.(6) Unfortunately, the Supreme Court of the Netherlands has lacked such an outward-looking approach.(7)


AGA concerned a device made of metal strands in which clamps were "adapted to clamp the strands at the opposed ends of the device".

The challenged device had one clamp, which had been adjusted to clamp the strands at one end of the device. There was no clamp at the other end.

AGA, the patent holder, defended the position that such single-clamp devices were covered by the scope of protection of the claim and invoked passages from the description that allegedly disclosed such single-clamp devices. Neither the district court nor the court of appeal agreed.

On appeal to the Supreme Court, AGA complained of a purely linguistic interpretation of the claims that wrongly failed to attribute weight to the inventive concept and the extent of innovation allegedly introduced by the patent.

A note from the advisory opinion of the EU advocate general(8) mentioned that, in the context of the defence, copies of judgments of the highest German and English courts in parallel foreign cases had been submitted. Both courts had reached the same conclusion as the Hague courts: that no infringement had occurred.(9)


The Dutch Supreme Court gave primacy to Article 69 of the EPC.

In doing so, it opined on the relationship between Article 69 and the related protocol. Occlutech, the respondent, had argued that the protocol merely clarifies that if Article 69 is faithfully applied, then a conclusion will be reached "seemingly automatically". The court disagreed.(10) Based on this opinion, the protocol would be superfluous. According to the court, the protocol determines how Article 69 must be construed and thus how the patent must be interpreted. It suggested that the protocol is a guideline to be used to assist in answering the question of the scope of protection.(11) The court did not explain why this was the case.

It is regrettable that in the substantive treatment of the case, the court appeared to draw only on its own national case law. It is unknown whether the court considered the fundamental German and English practice under Article 69 that was also mentioned by the advocate general.

Points of view become optional
The court cited its previous decisions in Ciba Geigy (1995) and Lely v Delaval (2007), and quoted from its judgments in Meyn v Stork (1989) and Dijkstra v Saier (2006).

Concepts including "the essence" and "the inventive concept" - dubbed mere "points of view" in Lely in 2007 - were further marginalised in AGA. According to the court, it is unnecessary to take all such "points of view"(12) into account in each individual case: "The extent to which this is the case is determined by factors such as the nature of the patent and the description of the invention, as well as by the parties' debate."(13)

Of all these determining factors, the description of the invention is obvious and is even mentioned in Article 69. The nature of the patent is evident from the description, which must be read from the perspective of the average skilled person. By 'the parties' debate', the court likely means that the factors and points of view must have been adduced in the fact finding - meaning that those factors do not add up to much.

Grant file and good cause for waiver
The Supreme Court ruled that the court of appeal had "superfluously" found confirmation for its interpretation of the claims in the grant file. This finding did not underpin the judgment, which means that the Supreme Court need not have addressed the point. However, for the sake of completeness, the Supreme Court did say something about the file as a potential source of interpretation.

The file is not mentioned in either Article 69 or the protocol, and is therefore not accepted as a source of interpretation in Germany or the United Kingdom.(14) In contrast, however, in 2006 the Supreme Court of the Netherlands ruled(15) that the file can always be cited by the third party. Unfortunately, it did so without explaining why it wished to deviate from the interpretations of the German and UK courts.

AGA had argued that the grant file could not be used as a source of interpretation because the 2006 doctrine allegedly limits such use to matter that "had not been claimed before" or matter that "had been waived". According to AGA, the case at hand did not involve matter that had not been claimed before or that had been relinquished.

The court of appeal had established that the claim had in fact been limited during the grant procedure. On that point, the Supreme Court held that the 2006 doctrine was not limited to the matter asserted by AGA. However, the 1989 Meyn v Stork decision was again cited - namely, "that such a waiver may only be assumed" if there is "good reason" to do so, "given the substance of the patent specification in light of any other known data, including the public data from the patent grant file".

By reiterating the point from Meyn, the court suggested that a third party may invoke the file and thus may always assert that a certain characteristic or element from the claim must be construed as it was construed by the applicant during grant or opposition. This is followed by a waiver test of whether that construction is what the applicant really meant and whether there was a good reason for that construction.

Meyn v Stork
In Meyn, the court focused (almost) entirely on the doctrine of essence. Despite the entry into force in 1977 of the EPC, according to the 1989 Meyn judgment even patents obtained after the EPC's introduction protected "that which, as to the essence of the matter, comprises the patented invention".(16) It did not matter exactly how the claims or the description were formulated. The skilled person had to deduce a teaching from the entire patent specification (the essence of the invention), and anything covered by that teaching basically constituted infringement. This teaching determined the scope of protection.

The claim of Meyn's Dutch patent from 1981, which had been pre-examined by the old Patent Board, mentioned an unloading member that moved up and down in a straight line. In the description, reference was made to a prior art document that also described members that moved up and down on a curvilinear trajectory.(17) However, in that situation, according to the court, the skilled person would not need to understand that a curvilinear movement was not also covered by the scope of protection.(18)

That would differ only if the applicant had waived the scope of protection. Thus, in 1989 the court introduced a concept which resembled the Dutch doctrine of the 'waiver of right'. In order to determine such a waiver of the scope of protection, the skilled person must first take account of the essence of the invention as evidenced by the patent specification itself, and then determine whether the applicant intended to waive this essence by formulating the claim in a certain way. The court stated:

"third parties may only assume such a waiver to exist - ie, a waiver that must be derived from an intentional contrast between description and claims – 'if there is good reason to do so, given the substance of the patent specification in light of any other known data, including the data from the patent grant file of which they too may be deemed to be aware.'"(19)

In other words, only if "the substance of the patent specification" - possibly in light of data from the grant file - gives "good reason" to assume that the patent holder intended to be satisfied with less than the essence(because that essence was lacking in the claim) can a waiver be assumed.(20)

Waiver has no place in grant file debate
A spin-off of the doctrine of essence - the national legal doctrine from 1989 - no longer fits in with the European debate about the role of the grant file in the context of the application of Article 69.

Today, the primacy of the claims pursuant to Article 69 has largely been accepted throughout Europe. The Dutch Supreme Court accepted this in 1995. The description or the grant file can no longer change that. To reiterate the 1989 ruling would imply that the doctrine of essence is still in force.(21) However, the Supreme Court changed that doctrine to a point of view in 1995, and to a possible point of view in 2012.

As the grant file - along with the description and the drawings - is expressly considered part of the context of the claims in the Netherlands, the debate should revolve solely around the question of whether the documents from the European grant or European opposition indeed contain an interpretation of characteristics and elements that benefit the third party,(22) which must have been retained in or introduced into the claim. If so, that interpretation will carry weight in determining the scope of protection.

In AGA, the court applied the waiver.

While AGA had described the single-clamp variant, it had not claimed it. That is why AGA also went down the route of equivalence. In that context, the court accepted(23) the guiding principle set out by the Federal Court of Justice in the parallel German judgment that what is disclosed but not claimed is disclaimed.

Meyn v Stork and Van Bentum v Kool revisited
Had that guiding principle been applied in 1989, it would have saved Stork.

Had it been applied in 2002, it might also have saved Kool. The difference from Stork was that the variant that Van Bentum had forgotten to include in the claims was also not in the description, even though (because it was known or could have been known and was obvious at the time of drafting) it could have been included. The variant thus was claimable, but Van Bentum had failed to claim it.(24)

Extent of innovation
Another point of view introduced by the Supreme Court in 1995 was the extent of innovation introduced by the invention: if is the invention is highly innovative, there is room for a broader scope of protection.

AGA asserted that its invention was a pioneering invention, and that the court of appeal had disregarded that fact. The Supreme Court held that the court of appeal was allowed to do so. After all, the court of appeal was not obliged to include all points of view in its opinion. In addition, the court of appeal's opinion was understandable, because the essence of this particular point of view is that the drafter of the claim - precisely because it involves a pioneering invention - could not fully anticipate all of its possible applications and thus could not sufficiently describe and claim those possibilities. However, AGA had in fact described a single-clamp device.


Dutch patent attorneys, patent courts and patent lawyers thus not only continue to wrestle with the protocol, but must also contend with 'points of view' that are brought into play by 'factors'; while the applicability of the waiver doctrine likewise continues to raise questions.

For further information on this topic please contact Richard E Ebbink at Brinkhof by telephone (+31 20 30 53 221), fax (+31 20 30 53 201) or email ([email protected]).


(1) In the past 10 years (from January 1 2002 to December 31 2011) 17 judgments have been handed down in patent cases.
(2) The previous judgment about the scope of protection dates back to September 7 2007, NJ 2007,466, Lely v Delaval.
(3) Article 69 does not constitute grounds for opposition. The European Patent Office (EPO) Enlarged Board of Appeal has nevertheless devoted some words to it (G 2/88 and G 6/88, both dated December 11 1989) and its boards of appeal are likewise faced with the article regularly (see Case Law of the Boards of Appeal of the EPO, 2010, pp 279-287).
(4) The term derives from the Vienna Convention 1969 (Article 31 (3) (b)) and pertains to the case law of the national courts under articles of uniform law. In areas of law other than patent law, the Supreme Court is aware of the importance of uniform interpretation of international rules and of subsequent practice as a means of interpretation; see Supreme Court of the Netherlands, report on 2009-2010, in particular pp 17-21.
(5) Cf House of Lords 1981, Catnic Components v Hill & Smith (by anticipation, see Kirin Amgen – source in note 17); Federal Court of Justice 1986, Formstein.
(6) See Federal Court of JusticeApril 15 2010, Walzenformgebungsmaschine and Court of Appeal of England & Wales October 15 2010, Grimme v Scott.
(7) Cf Jan Brinkhof, Noten bij Noten, 1990, p11 et seq and BIE 2008, p134 (in the conclusion of a discussion of the patent annotations of Feer Verkade).
(8) February 3 2012, Advocate General Huydecoper.
(9) Remarkably, in the parallel German proceedings AGA had managed to convince both fact-finding instances of the contrary. Both Dusseldorf instances proved willing to attribute the primacy to the description.
(10) Explained by Brinkhof, BIE 2008, p 130 and in Kort Begrip, 2011, pp 63-64 (Hermans).
(11) See Supreme Court May 25 2012, legal finding 4.2.2, Paragraph 3.
(12) The 1995 points of view were possibly 'the literal meaning of the wording of the claims', 'the inventive concept underlying the words of the claims', 'the legal certainty', 'the nature of the specific case' and 'the extent to which the invention introduced innovation'. See in particular legal finding 3.3.1 of Ciba.
(13) See AGA, legal finding 4.2.2, Paragraph 5.
(14) See Federal Court of Justice March 12 2002, Kunststoffrohrteil, House of Lords October 21 2004, Kirin-Amgen v Hoechst Marion Roussel.
(15) Supreme Court, December 22 2006, NJ 2008, 538, Dijkstra v Saier.
(16) See Supreme Court, January 27 1989, NJ 1989, 506, Meyn v Stork, legal finding 3.3.
(17) Id, legal finding 3.4, in which reference is made to legal finding 13 from the Hague Court of Appeal's judgment.
(18) Id, ending. The Court of Appeal held that he would, and reasoned that the opinion to be propagated by the Supreme Court would be going "too far", see legal finding 13 in the Court of Appeal's judgment.
(19) Id, legal finding 3.5. Thus, there is a double threshold: subjective (it must have been the applicant's intention) and objective (it should have been the applicant's intention).
(20) See March 13 1981 Supreme Court judgment Ermes v Haviltex, (NJ 1981, 635) about the interpretation of written agreements. According to the Supreme Court it did not come down to the wording chosen (side-lined by the Supreme Court as "a merely linguistic interpretation") but "after all, it comes down to the meaning that the parties mutually could reasonably ascribe to these provisions in the given circumstances, and to what they could reasonably expect from each other in this regard. In that respect, etc."
(21) Jan Brinkhof identified this 'conflict' back in 2008 (BIE 2008, p 132).
(22) The Supreme Court only allows reliance on the grant file for the benefit of the patent holder under special circumstances, see Supreme Court December 22 2006, NJ 2008, 538, Dijkstra v Saier, legal finding 3.5.3, Paragraph 1.
(23) See the judgment of May 25 2012, legal finding 4.4.2.
(24) See Supreme Court March 22 2002, NJ 2002, 530, Van Bentum v Kool, legal finding 3.7. Partly for that reason, the Court of Appeal had ruled against Van Bentum.