The Scope of Patent Protection in Finland – Boundaries of Equivalence Still Unclear

Marcus Norrgård
Assistant Professor (HANKEN Foundation)
HANKEN Swedish School of Economics and Business Administration

The scope of protection of patents has in Finland been widely debated since the present Patent Act (550/1967) entered into force in 1968. The topic of discussion has not only been what the proper scope should be, but also what it actually is.

There are only few decisions by the Supreme Court, all of which date back to the 1980’s or even earlier. Moreover, they do not clearly guide the interpretation of patent claims. I will however, try to pinpoint some of the basic principles defining the scope of patent protection in Finland.

EPC and Finnish patents should be interpreted in the same way
One crucial issue is the impact of the European Patent Convention (EPC) on the interpretation of national patents. Section 39 of the Finnish Patent Act and Article 69 of the EPC are virtually identical. However, it has by no means been clear in practice nor in scholarly discussions that the same principles of interpretation apply to Finnish and EPC patents.

On 23 November 2000, the Finnish Supreme Administrative Court had ruled (Dec. No 3034) that the decisions of the European Patent Office (EPO) are not binding on the national patent office in the application phase.

In 2005, however, it was stated in the government bill on the implementation of EPC 2000 that national and EPC patents should be construed in an identical fashion. There is no Supreme Court case law on this issue yet, but it would seem reasonable to interpret national and EPC patents alike.

In the interpretation, the starting point is Section 39 of the Finnish Patent Act, which provides in line with the EPC – that the scope of protection is determined by the patent claims, and further, that the description may be used in the interpretation of the claims. There is not, however, any reference to equivalence as there is in Article 2 of the Protocol on the Interpretation of Article 69 EPC.

Don’t take the patent claim literally
The Protocol on the Interpretation of Article 69 EPC states that the scope of protection should not be defined by “the strict, literal meaning of the wording used in the claims”, nor should “the claims serve only as a guideline”.

Instead, the scope of protection should be “a position between these extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties.”

It has been difficult in Finland, as well as elsewhere, to find a safe passage between the Scylla of strict, literal interpretation and the Charybdis of claims as guidelines.

What goes around comes around – on the theories of claim interpretation
The IP laws of the Nordic Countries were prepared in the 1960s in close co-operation. Therefore, there is a strong tradition to refer to case law from other Scandinavian countries.

Since the adoption of the Patent Acts in the Nordic countries 40 years ago, the theory of equivalence has been widely debated, and different theories have been presented. According to the patent claim theory, no protection outside the wording of the claims (as interpreted by the skilled person) is allowed. The equivalence theory, on the other hand, is also based on the claims, but it extends protection outside the wording.

Despite the discussions for and against protection outside the claims both on national and international levels, a reasonable conclusion is that there must be protection also outside the wording of the claims. On one hand, EPC (2000) Article 69 requires fair protection for the patentee, and that equivalents should be taken into account. On the other hand, Finnish case law has accepted protection outside the wording of the claims, even though the term ‘equivalence’ has not necessarily been used.

There has been some debate in the Nordic countries over the use of the term ‘equivalence’, because it does not solve the question of infringement.

Protection outside the wording of the claims may bear different names, but traditionally it has been called the theory of equivalence. What is interesting, eventually, is not what the protection outside the wording of the claims is called, but what the criteria for protection are. The theory of equivalence does not have clear boundaries, but it does have a hard core.
When is an equivalent infringing?

In short, the scope of patent protection covers not only the wording of the claims but also insubstantially modified solutions.(1)

For insubstantial modifications to be within the scope of protection the infringing solution must, first of all, solve the same problem as described in the patent. The Swedish Supreme Court decision Tvillingkort (17 November 2000, Case No T4707-98, NJA 2000 s. 497) may be used to exemplify this criterion. A patent had been granted to a solution where the SIM card for one mobile phone may hold two different identities, so that the user can choose between the identities.

The problem described in the patent was that with a traditional one-identity SIM card it is difficult to keep e.g. work-related and private calls separate, whereas with two identities even two people can use the same phone each on his own account. The allegedly infringing solution was for two SIM cards for one cell phone, both originally of size of a credit card. The solution provided by this invention was that different mobile phones required SIM cards of different sizes.

Therefore, the court concluded that there could not be an infringement, because the problem solved was not the same as that of the patent.

When considering if a certain solution infringes a patent, the Court must also take into account the functional similarity between the patented invention and the alleged infringing solution Neither Finnish case law nor Finnish legal literature has decided whether this means a reference to the way the invention works (as is required in the UK) or to the same effect produced by the allegedly infringing solution (as is required in Germany).

The German solution with the focus on the effect is clearer, because it is difficult to decide if something works in the same way: a screw and a nail work in the same way on a very abstract level, since both are attached to a medium, whereas they work differently on a lower abstraction level.

One further requirement for an equivalent to be infringing is that the allegedly infringing solution is seen as an obvious alternative by a person skilled in the art. Otherwise, the patent could include patentable (new and inventive) subject matter.

“Gillette defence” – the question for Finland
It is also worth pondering if the scope of protection may cover even solutions that were not new and/or inventive on the priority date of the patent. The question for Finland is whether it acknowledges a “Gillette defence” as it is called in the UK or a “Formstein defence” as it is called in Germany.

By definition, a patent may not cover matter that was not patentable on the priority date. As a patent for such matter would not have been granted, it cannot be included in the scope of protection.

A special problem relates to so called missing elements, i.e. a situation where an element is not present in the allegedly infringing solution. At least three different solutions have been devised to this problem. According to the so called theory of overdetermination (ylimääritysoppi, överbestämningsläran), the claim may include words that are not necessary for achieving the result envisaged by the patent (e.g. a metallic cylinder of copper). In the interpretation of the claim, such overdetermined parts would not be taken into account.

It has also been suggested that some elements in the claim should be regarded as essential and others as nonessential. A missing nonessential element would infringe, whereas a missing essential element would not. The most promising way to deal with missing elements is, however, with the help of the theory of equivalence. Investigating a possible infringement, the court would simply need follow the normal principles, i.e. decide whether a missing element is an insubstantial alteration.

As for the decisive date, legal sources are not clear on whether the knowledge of the skilled person (an ordinary practitioner) is relevant on the priority date or on the infringement date. Clearly, the starting point is the priority date, but many commentators have rightly pointed out the problems of not being able to take into account the technological advances after that date.

In conclusion, it can be said that there is a theory of equivalence in Finland, which has a hard core, but the boundaries of which are (still) not clear. Hopefully, the Supreme Court will grant leave to appeal in many infringement cases in the coming years so that defining the scope of protection of patents could stand on a firmer basis.

(1) cf. the resolution of the AIPPI on question 175 “The role of equivalents and prosecution history in defining the scope of patent protection” (AIPPI yearbook 2003/II, p. 237-238), where two different ways of defining equivalents were presented: “An element shall be regarded as equivalent to an element in a claim, if, in the context of the claimed invention: a) the element under consideration performs substantially the same function to produce substantially the same result as the claimed element; and b) the difference between the claimed element and the element under consideration is not substantial according to the understanding of the claim by a person skilled in the art at the time of the infringement.”

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Literature on equivalence
Equivalence Study: How the concept “extent of protection conferred by a patent” is interpreted in Finland and some other countries. Ministry of Trade and Industry [of Finland]. In Finnish, abstract in English. (Ekvivalenssiselvitys; Patentin suojapiirin tulkinta Suomessa ja muissa maissa). MTI Publications 22/2004. ISBN 951-739-796-8. 75 pages.

Government bill to adopt the revisions on the European Patent Convention and the consequent revisions in the Finnish patent law (HE 92/2005): Hallituksen esitys Eduskunnalle Eurooppapatenttien myöntämisestä tehdyn yleissopimuksen uudistamiskirjan ja patenttilakisopimuksen hyväksymisestä ja laeiksi sopimusten lainsäädännön alaan kuuluvien määräysten voimaansaattamisesta sekä patenttilain muuttamisesta. HE 92/2005 vp.

Resolution of AIPPI: Question 175 The role of equivalents and prosecution history in defining the scope of patent protection. AIPPI Yearbook 2003/II pp.237 – 238.

Godenhielm, Berndt:Patentskyddets omfattning i europeisk och nordisk rätt. Helsingfors 1994. ISBN 951-640-695-5. xxviii, 333 pages.
Koktvedgaard, Mogen & Levin, Marianne: Lärobok i immaterialrätt. 8. uppl. Stockholm 2004. ISBN 91-39-20372-7. 540 pages.
Norrgård, Marcus & Bruun, Niklas: Analogiamenetelmäpatentin suojapiiri. Osat 1 & 2. Lakimies 5/2007 (pp. 679-705) & 6/2007 (pp. 830-862).
Stenvik, Are: Patenters beskyttelsesomfang. Oslo 2001. ISBN 978-820-2212612. 864 pages.
Stenvik, Are: Patentrett. Oslo 2006. ISBN 978-82-02-25953-2. 523 pages.