Equivalence with regard to Analogous Process Patents under Finnish Law

The aim of the study is to give guidelines on the interpretation of section 39 of the Finnish Patents Act, which regulates the scope of protection of Finnish patents. This is done with the special regard to patents on so called analogy processes, which are inventions where the patent claims define processes for manufacturing a new and therapeutically valuable substance. Up till 1995 it was not possible to obtain product patents for food stuffs and pharmaceutical products. This legislative approach relates to the old internationally accepted restriction for patenting foodstuff and medicals which were – in an international perspective – lifted very late in Finland. Instead of product patents, analogy process patents were granted for pharmaceuticals, although the concept of analogy process is not even mentioned in the Finnish Patents Act, only in the Patent Regulations (patenttimääräykset). Analogy processes are characterised by the fact that the end-product is new and inventive, not the process in itself. The patent claims are, however, for the analogy process, and thus the scope of protection is bounded to certain ways of manufacturing the product. One of the problems with analogy process patents is that chemical compounds, including pharmaceuticals, can often be manufactured in different ways. For the analogy process patent protection to be effective, all economically feasible processes for the production of the new substance should be included in the claims. It is time-consuming and costly to search for all processes for manufacturing the new and inventive substance. Often, as the case has been in Finland, it is possible to make changes to the process in order to avoid literal infringement of the analogy process patent. The question is, however, do such changes amount to infringements under the doctrine of equivalence, which makes it possible to extend the patent protection to such a process that is evident for a person skilled in the art, although it is not explicitly included in the claims. This is the question we ultimately will try to answer.