Art. 69.1 EPC (EPC 2000) establishes that: “The scope of protection granted by the European patent or the European patent application shall be determined by the claims. However, the description and drawings shall serve to interpret the claims”. Article 1 of the Interpretative Protocol of the aforementioned provision states: ” 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 “.

It is not a matter of making a subjective interpretation of the scope of protection of the patent, looking for the inventor’s intention when drafting the patent, but to objectify that interpretation through the figure of the person skilled in the art, in order to provide legal certainty to third parties who read the patent and could know how far its scope of protection reaches.

The description and drawings cannot be used to broaden the subject matter of the patent or model, nor can they be used to extend the patent or model to what is stated in the description or drawings but is not covered by the wording of the claims. In the case examined by this Judgment, the subject matter of the invention is a “flexible rod for spectacles”, the title requiring a degree of flexibility such that it can be bent to the point of being incorporated into a case or case “so that the bent rod does not protrude from the space occupied by the frame” (claim 1). The claim therefore requires that the various features of the invention be attached cumulatively (hence the use of the copulative conjunction “and”), so that the rod which is the subject of the invention does not protrude when bent from the space occupied by the frame. Therefore, if some temples protrude from the frame when bent, the product does not invade the scope of protection of the patent or model.

On the other hand, for the protection conferred by a patent or model to be extended to products that do not literally correspond to those in which the technical rule is specified, it is an essential requirement that such products do not present fundamental, substantial or relevant differences in relation to the elements or characteristics that define them as protected invention. In the present case, the characteristic element of the products in which the technical rule is specified is – according to the aforementioned claim – that when the temple is bent, it does not protrude from the frame, because the other prior characteristic (that they can be kept inside a case or pouch) is not restrictive (since the size of the case or pouch is not even specified in the claim).

The infringement action is dismissed, since the allegedly infringing product does not reproduce feature 1.f) of the first claim of the utility model at issue in these proceedings, according to which “the central area presents a degree of flexibility such as to allow the bending of the rod to the point that the glasses can be incorporated into a glasses case or case and in such a way that the bent rod does not protrude from the space occupied by the frame”

Commercial Court of Barcelona, October 11th, 2022.