T 0916/15 - A123(2): No mind willing to understand

Key points

• According to this decision, the case law about reading patent applications with "a mind willing to understand" does not apply for Article 123(2) EPC.
• Compare e.g. T 2255/12 - link.

EPO T 0916/15 - link


1.3.1 According to established jurisprudence, under Article 123(2) EPC, an amendment to a claim can only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole application (cf. G 3/89, OJ EPO 1993, 117, points 1.3 and 3 of the Reasons, confirmed by G 2/10, OJ EPO 2012, 376, point 4.3 of the Reasons). 

In the board's view, however, the jurisprudence of the boards of appeal referring to "a mind willing to understand" does not apply for the purpose of assessing the allowability of amendments under Article 123(2) EPC, i.e. whether an amended feature of a claim is disclosed in the application as filed.
According to decision T 190/99, when interpreting a claim, the person skilled in the art should try, with synthetical propensity, i.e. building up rather than tearing down, to arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent. The patent must be construed by a mind willing to understand, not a mind desirous of misunderstanding (see decision T 190/99, point 2.4 of the Reasons, and Case Law of the Boards of Appeal, 8th edition 2016, Chapters II.A.6.1 and II.E.2.3.3). 

It follows from this jurisprudence that the concept of "a mind willing to understand" applies where it is necessary to interpret a claim of a granted patent for the purposes of Article 123(3) EPC and Article 69 EPC. Accordingly, in the board's view, an interpretation of a claim of a granted patent which is illogical or which does not make sense should be ruled out.

This is, however, not the issue at stake in the present case where it has to be determined for the purposes of Article 123(2) EPC whether a person skilled in the art would derive directly and unambiguously, using common general knowledge, the subject-matter of the amended claim of the patent from the whole application as originally filed. Hence, in the board's view, the appellant's argument on this point must fail.