UK: Extent Of Patent Protection - Identifying The Scope Of The Patent

Last Updated: 10 December 2009
Article by Nick Beckett and David Sant

Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2009] EWCA Civ 1062


The Court of Appeal has again confirmed the principle in Article 69 of the European Patent Convention that the extent of protection of a patent is given by the patent claims and has provided further guidance on interpretation of patent claims containing reference numerals

The success or otherwise of any patent infringement claim will depend on the scope of the patent and it is therefore crucial to understand how the courts interpret the claim wording to identify the boundaries of the protection. The court is mainly concerned with identifying the inventor's purpose, given the claim wording. This case is a good demonstration of the rules of interpretation applied by the court to patents, the dominant consideration being the language used in the claim. The case involved two competitor airlines, this particular battle focussing on their seats and seating arrangements for first class passengers.

This case demonstrates that the commercialisation of a new product should include an assessment of the scope of any rival patent, in order to avoid patent infringement.


The case in question was Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2009] EWCA Civ 1062. In 2002, after working with several design consultancies in the preliminary stages of the development phase, Virgin appointed Premium to design, engineer and manufacture its new seat, which was known as the Upper Class Suite (UCS). The UCS was the seat and seating system disclosed by patent EP (UK) 1,495,908 (the patent), itself the result of a divisional application.

In 2004 Premium was approached by another airline about the development of a new business class seat. Premium enlisted the help of a design company to produce designs for the project with the brief that the airline required a seat that would compete with the UCS and other similar seats. The resulting seat, with a flip-over capability, was subsequently supplied to British Airways. Virgin considered the BA seating was a copy of the UCS and claimed for infringement of its patent, stating that BA version fell within the scope of the patent.

Virgin's claims for infringement of its patent and its unregistered design rights were dismissed in the High Court, which rejected the allegation of wholesale copying of the claimant's seat. Virgin appealed.

The case in the Court of Appeal hinged upon whether the scope of Virgin's patent was limited to flip-over variants and demonstrates how the court identifies the limits of a patent's scope. In addition, the court considered Premium's counterclaim that the Virgin patent was invalid in view of either added subject-matter (matter not in the parent application) or it was not inventive in the face of the prior art.

Main issues

The issues raised in the appeal included:

(i) whether the extent of protection was modified by the use of reference numerals in the claims;

(ii) whether extent of protection extended beyond systems which used flip-over seats;

(iii) whether the patent was invalid for adding matter not disclosed in the original application (the parent of the patent) and;

(iv) whether certain claims made in the application were obvious over the prior art.


The court allowed the appeal. Each of the issues above were analysed by the court as follows:

1. With respect to reference numerals, Jacob LJ said that numerals should not influence the construction of the claim at all. Rule 29(7) of the Implementing Regulations of the European Patent Convention states that numerals in a claim would not be used to limit it, so it would not be fair if a court subsequently paid attention to the numbers to limit the claim. The point of reference numerals was to help a reader orient himself at the stage when he was trying to get the general notion of the invention. However, once he came to construe the claim it must be construed as if the numbers were not part of it.

2. In order to establish the extent of protection, Jacob LJ applied the principle in the Kirin-Amgen v Hoechst Marion Roussel [2005] 1 All ER 667. In that case, the court had asked what would the skilled person understand from the words used in the claim. It followed that the claims were to be construed purposively.

The Court of Appeal could not accept that the claim was limited to systems which used flip-over seats. The 'lost space' and the space-packing idea of using the bed to extend into it were wholly unrelated to whether the bed flipped over or not. Therefore, the skilled reader would have no reason to suppose that the patentee intended to limit his claim to flip-over bed/seats. Moreover, the skilled reader would expect, if the claimed system was limited to flip-over bed/seats, to find something about that in the claim, which in the instant case was not there. The claim was not limited to flip-over seats and therefore Premium's beds fell within the claims. Accordingly, there was infringement of the patent.

3. The essential task for the court was to consider the disclosure of the parent and the patent and to ask whether any subject matter relevant to the invention had been added whether by deletion or addition. That comparison was a strict one. Subject would be added unless it was clearly and unambiguously disclosed in the parent. Where an application disclosed two or more different inventions it was not added matter later to claim them separately.

There was nothing in the parent to suggest that the concept of space packing could be used only with flip-over seats and the skilled person would know from his common general knowledge that there was no technical reason why it should be. The teaching of the parent would leave the skilled person in no doubt that it identified comfort and space saving as different problems and it described different and distinct ideas for solving them. The skilled man was not taught anything in the patent relevant to the invention which could not be found in the parent.
In view of the above the court held that the matter disclosed in the specification of the patent did not extend beyond that disclosed in the parent and the added matter objection therefore failed.

4. There had been material on which the judge had been fully entitled to come to the conclusion that the inventive concept in claim 1 of the patent was not obvious over the prior art. In all the circumstances, the judge had had ample material on which to find that the prior art had not made it obvious to fix the problems inherent in the swivel seats by moving back to a fixed seat arrangement. Accordingly, the judge had been right to reject the challenge to validity based on obviousness.

In view of the above, the court allowed Virgin's appeal against the High Court decision, ruling that the lower court judge had been wrong to dismiss Virgin's claim for infringement of its patent. Virgin's patent had been valid and it had been infringed by the defendant's seating system.


This case demonstrates again that Kirin-Amgen is the leading case for construction of patent claims and that the extent of patent protection is defined by wording of the claims.


Before bringing a product to market, it is important to identify any similar existing products, especially if a rival product is patented. To ensure that a third party's patent is not infringed it is essential to establish the scope of the patent and this case demonstrates how the wording of the claims is key to identify the boundaries of the patent.

The scope of protection is defined by the most general formulation in the claims and that the description serves only as an aide to understanding. If a limiting feature appears only the description, but is absent from at least one claim, then the scope of the protection is not limited by that particular feature. Moreover,the scope of protection is not modified by the use of reference numerals in the claims.

This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to

Law-Now information is for general purposes and guidance only. The information and opinions expressed in all Law-Now articles are not necessarily comprehensive and do not purport to give professional or legal advice. All Law-Now information relates to circumstances prevailing at the date of its original publication and may not have been updated to reflect subsequent developments.

The original publication date for this article was 09/12/2009.

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