EP 3 356 109 B1 relates to a frame for a vehicle with at least one foam resin structural part and a production method therefore.
Claim 1 defines a frame (11) for a vehicle (10) with at least one structural part (15), wherein the structural part (15) is produced as a casting (52) in a mould (50), and the mould (50) reproduces the three-dimensional outer shape of the structural part (15), whereby the structural part of the frame (15) is formed by a self-swelling foam resin (20), the structural part (15) being at least partially coated from the outside with a protective layer (19) wherein at least two existing structural parts (15) form a supporting part of the frame (11).
The claim at stake is thus a product-by-process claim.
Brief outline of the case
The patent was not opposed at the EPO, and was first opted out and then opted in.
An action for infringement was started by the proprietors having acquired the patent from the original holders.
The alleged infringer filed a counterclaim for nullity. Lack of sufficiency, novelty and inventive step were grounds for nullity.
A cooperation agreement between the proprietors with the later infringer went apparently sour and the cooperation ended.
The patent was held to be valid and infringed.
The decision of the LD Düsseldorf
The LD Düsseldorf held that product-by-process claims are characterised by the fact that the technical content of the invention does not usually consist in the process as such, but in the technical properties imparted to the product by the process.
The decisive factor is how the skilled person understands the information on the manufacturing process and which conclusions it draws from this with regard to the nature of the product according to the invention.
In principle, the process serves solely to define the product. It is not itself the object of protection and does not restrict it. The process feature typically has the task of further specifying the product, which is not yet distinctively described by the other features, in that the process feature included in the claim leads to a certain additional configuration of the product, which distinguishes the product from known products and characterises it.
None of the prior art brought forward by the infringer in its counterclaim for nullity would allow the conclusion that the subject-matter of the claims lacks novelty or inventive step, nor that the invention was not sufficiently disclosed.
As the patent was valid, the differences invoked by the infringer in its products, two moulds to be used vs. a single one, were not enough to conclude that it did not infringe.
Comments
It is interesting to note that the LD Düsseldorf has expressly referred to the Guidelines F-IV, 4.12. The boards of appeal of the EPO have a much more distant attitude towards the Guidelines.
It will be interesting to see what the CoA UPC will have to say on this topic.
One of the key aspects which plays an eminent role in the allowability of product-by-process claims is that the products as such fulfil the requirements for patentability, and it is impossible to define the claimed product other than in terms of a process of manufacture.
There also it will be interesting what the CoA UPC has to say on this aspect.
Opt-out followed by an opt-in
Whilst during the transitional period an opt-out can be rescinded by the proprietor, this possibility has some effects which have not been correctly assessed when this possibility was opened to proprietors.
For any potential infringer, the situation changes drastically after withdrawal of the opt-out.
From only being able to be summoned before a national court with limited territorial competence, he will then be able to be summoned in front of an international court with a much more extended territorial competence and with a totally different bracket as far as representation costs and fees are concerned.
In any case it all depends on a unilateral decision of the proprietor to withdraw the opt-out.
It is doubtful that such a retroactive change of position to the detriment of a potential infringer, but to the exclusive advantage, and only within the realm of the proprietor, is at all tolerable.
It is clear that the question will never be answered by the UPC, but it gives an uneasy feeling. It should be checked whether such a possibility is at all to be considered constitutional in some contracting states. Normally legal provisions do not have a retroactive effect.
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