T 1473/19 - (II) Art. 69 for Art. 123(2) ?

Key points

• The Board in this decision departs from established case law and concludes that:  "Article 69 EPC in conjunction with Article 1 of the Protocol thereto can and should be relied on when interpreting claims and determining the claimed subject-matter in proceedings before the EPO, including for the purpose of assessing compliance with Article 123(2) EPC"
• See e.g. T 1646/12, "The board stressed that Art. 69(1) EPC concerned only the extent of protection, which in turn was relevant only for the purposes of Art. 123(3) EPC and in national infringement proceedings. A general requirement that claims be interpreted with the help of the description could not be derived from Art. 69(1) EPC." (CLBA II.A.6.3.2)
• At the outset, it must be noted that the Protocol, as amended by the EPC 2000, includes Article 2, which states that "For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims." However, according to established case law, a disclosure in the prior art of an equivalent does not anticipate a claim (is not novelty-destroying)*. The headnote of the present decision accordingly refers to Article 1 of the Protocol only.
• * - i.e. the argument that a claim which specifies "A" is not novel because the prior art discloses A* and A* is an equivalent of A and is hence included under the scope of protection of the claim under Art. 2 Protocol is invalid under established case law. 
• The present Board: "There is, however, also a significant body of case law according to which the description and the drawings should only be used to interpret claim features which are ambiguous; unambiguous terms in the claims should be interpreted without taking the description and the drawings into account (see, for example, T 197/10, Reasons 2.3 and T 1514/14, Reasons 12). It has also been stated that, for the purposes of assessing compliance with Article 123(2) EPC, the description and the drawings should not even be consulted in the case of ambiguous claim features (see T 1127/16, to which the appellant referred, Reasons 2.6.1)."
• "There are different views in the case law of the technical boards of appeal on the extent to which Article 69 EPC and the Protocol on the Interpretation of Article 69 EPC ("the Protocol") should be applied when interpreting patent claims. While these provisions have in some decisions been considered to be generally applicable, other decisions restrict their application in proceedings before the EPO to determining the extent of protection under Article 123(3) EPC [].  A leading decision in favour of the latter approach is T 1279/04."
• "In the present Board's view, Article 69 EPC and the Protocol are the only provisions in the EPC containing rules for the interpretation of patent claims. Article 84, first sentence, EPC does not contain any such rules. Rather, the rationale underlying both the specific requirements under Article 84, second sentence, EPC []  and the general requirement under Article 84, first sentence, EPC []  is to enable a clear delimitation of the extent of protection. In other words, claims must satisfy the requirements under Article 84 EPC so that they can fulfil their purpose of enabling the protection conferred by the patent to be determined under Article 69 EPC (cf. G 2/88, Reasons 2.5). Article 84 EPC, however, says nothing about how to interpret patent claims. At most, it defines the standard to be applied when assessing clarity."
• " the main rationale underlying T 1279/04, Reasons 3, seems to be that there is a difference between the subject-matter of a patent claim, which is determined in proceedings before the EPO and assessed under Articles 54(2), 56, 83 and 123(2) EPC, and its extent of protection, which is assessed under Article 123(3) EPC and in national infringement proceedings. While, as explained hereafter, the present Board acknowledges a difference, it does not consider this difference a convincing reason not to apply Article 69 EPC and the Protocol when determining the claimed subject-matter in proceedings before the EPO."
• "the Board notes that determining a patent claim's subject matter, i.e. establishing the meaning of the claimed features, is not distinguishable from interpreting that claim and its features. Understood this way, it is always necessary to interpret a patent claim in the proceedings before the EPO."
• This observation seems entirely correct.
• "The extent of protection of a patent claim can be understood as the (infinite) set of embodiments which infringe that claim. This set can conceptually be divided into two distinct subsets, the first formed by embodiments which infringe the claim by realising the elements specified in the claim (i.e. the claimed features), and the second formed by embodiments which infringe the claim by equivalent means (i.e., in the words of Article 2 of the Protocol, by an element equivalent to an element specified in the claims). The first subset of a patent claim's extent of protection is directly defined by its subject-matter."
• "When assessing whether an embodiment falls under the first subset of a patent claim's extent of protection, it is assessed whether that embodiment can be subsumed under the claimed features. To this end, the claimed features must be interpreted - and the claimed subject-matter thereby determined - in accordance with the rule on how "to interpret the claims" given in Article 69(1) EPC in conjunction with Article 1 of the Protocol. Interpreting the claimed features for the purposes of establishing the first part of a patent claim's extent of protection is thus not different from interpreting and determining the claimed subject-matter for the purposes of assessing compliance with Articles 54, 56, 83 and 123(2) EPC. Accordingly, national courts apply the rules for the interpretation of claims in Article 69 EPC and the Protocol [*] in both infringement and revocation proceedings as a matter of course."
• As a comment, it is not clear to me if the Board here (*) also meant to refer to Article 2 Protocol.
• " Assessing whether a certain embodiment falls under the second part of a patent claim's extent of protection, i.e. the part concerning equivalents under Article 69(1) EPC in conjunction with Article 2 of the Protocol, is a second step in the determination of the extent of protection which follows claim interpretation. It mainly consists in assessing whether a feature of an allegedly infringing embodiment is equivalent to an element specified in the claims, i.e. to one of the features defining the claimed subject-matter. As the "invention" in Articles 54, 56 and 83 EPC (see T 92/21, Reasons 3.2, last sentence) and, with regard to claim amendments, also the "subject-matter" under Article 123(2) EPC (see G 2/10, Reasons 4.5.2, last paragraph) refer to the claimed subject-matter only, equivalents are not to be taken into account when compliance with these provisions is assessed."
• " Under Article 123(3) EPC too, it is mainly "the technical subject-matter of the claims" before and after the amendment which is considered (see G 2/88, Reasons 4.1), although equivalents may theoretically play a role under this provision as it refers to the extent of protection (see T 1360/13, Reasons 4.13; see, however, also T 81/03, Reasons 3.7). In conclusion, equivalents are the part of the extent of protection which is indeed primarily relevant for infringement proceedings."
• The Board continues with further explanations regarding the role of the description and drawings when interpreting the claims. I can recommend reading the entire reasoning of the Board.
  
  
• In the course of the appeal, "an expert linguistic opinion on the wording of claim 1 as granted" was filed. The Board: "[in] view of the parties' various submissions on linguistic matters in the present case, the Board further points out that claim interpretation is overall a question of law which must as such ultimately be answered by the deciding body, and not by linguistic or technical experts. It does, however, involve the appraisal of linguistic and technical facts (see T 1776/18, Reasons 4.5.5), which may be supported by evidence submitted by the parties."
• Note 10.03.2023: emphasis added. The reference to the "appraisal of ... technical facts " also means that arguments regarding claim interpretations based on technical factual allegations can be inadmissible if the factual allegations are submitted late under Art. 114. However, arguments pertaining to the claim interpretation, which are not based on new (linguistic or) technical facts, are arguably purely legal arguments in view of the Board's remark and hence arguably always admissible. 
• 
  
• No role for translated claims
  "In line with Article 70(1) EPC a patent claim must be interpreted in its authentic text, which is the text of the patent in the language of the proceedings. Moreover, the material which can and must be taken into account for claim interpretation under Article 69 EPC - in addition to the claims themselves (in their authentic text) - is limited to the description and the drawings. Therefore, in the present case the German and French translations of claim 1 cannot be relied upon for its interpretation. At most, it is possible to deduce from these translations how the translators responsible for them understood the English version of claim 1."
   

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t191473eu1.html

3. Principles of claim interpretation

3.1 The parties disagree on the principles of claim interpretation, in particular whether and, if so, to what extent the description should be taken into account for the interpretation of a patent claim.

3.2 In the present case, the claim to be interpreted is claim 1 of the patent as granted. This claim must be interpreted in the following contexts:

- firstly for the purposes of assessing whether it contains added subject-matter under Article 123(2) EPC;

- secondly for the purposes of assessing whether it has been amended in the auxiliary requests in such a way that its extent of protection has been extended under Article 123(3) EPC.

3.3 According to established case law, patent claims must be interpreted through the eyes of the person skilled in the art, who should try with synthetical propensity to arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent (Case Law of the Boards of Appeal, 10th edition 2022, II.A.6.1, first paragraph). The whole disclosure of the patent includes the description and the drawings, which must therefore be taken into account for claim interpretation (T 2365/15, Reasons 4.3.1). Accordingly, in very many decisions the description and the drawings have been used to interpret the claims and identify their subject-matter (see, for example, T 1167/13, Reasons 2.2 and 2.3 and T 2773/18, Reasons 2.3; see also Case Law of the Boards of Appeal, 10th edition 2022, II.A.6.3.1, second paragraph, first sentence).

3.4 There is, however, also a significant body of case law according to which the description and the drawings should only be used to interpret claim features which are ambiguous; unambiguous terms in the claims should be interpreted without taking the description and the drawings into account (see, for example, T 197/10, Reasons 2.3 and T 1514/14, Reasons 12). It has also been stated that, for the purposes of assessing compliance with Article 123(2) EPC, the description and the drawings should not even be consulted in the case of ambiguous claim features (see T 1127/16, to which the appellant referred, Reasons 2.6.1).

3.5 As to the legal basis for interpreting patent claims, the only guidance provided by the Enlarged Board of Appeal is found in G 2/88. In this decision, the Enlarged Board stated that, for the purpose of assessing compliance with Article 123(3) EPC, "[d]etermination of the extent of protection has to be carried out in accordance with Article 69(1) EPC and its Protocol, which provides a guide to the manner in which the technical features of the claim are to be interpreted" (Reasons 4).

3.6 There are different views in the case law of the technical boards of appeal on the extent to which Article 69 EPC and the Protocol on the Interpretation of Article 69 EPC ("the Protocol") should be applied when interpreting patent claims. While these provisions have in some decisions been considered to be generally applicable, other decisions restrict their application in proceedings before the EPO to determining the extent of protection under Article 123(3) EPC (see the overview in Case Law of the Boards of Appeal, 10th edition 2022, II.A.6.3.2). A leading decision in favour of the latter approach is T 1279/04.

3.7 The Board in T 1279/04, Reasons 3, stated that the application of the principles of claim interpretation as laid down in Article 69 EPC and the Protocol was limited to the determination of the extent of protection, which was primarily of concern in infringement proceedings. It further indicated that in examination and opposition proceedings before the EPO Article 84, first sentence, EPC provided a legal basis for applying "a strict definitional approach" (see also T 30/17, Reasons 2.1.7). This approach to claim interpretation, in T 1279/04 also called "a strict literal definitional approach", seems to correspond to an approach based on the "strict, literal meaning of the wording used in the claims", i.e. an approach which is explicitly rejected under Article 1 of the Protocol.

3.8 In the present Board's view, Article 69 EPC and the Protocol are the only provisions in the EPC containing rules for the interpretation of patent claims. Article 84, first sentence, EPC does not contain any such rules. Rather, the rationale underlying both the specific requirements under Article 84, second sentence, EPC (as to clarity see, for example, T 6/01, Reasons 14) and the general requirement under Article 84, first sentence, EPC (see T 3097/19, Reasons 28 and 28.1) is to enable a clear delimitation of the extent of protection. In other words, claims must satisfy the requirements under Article 84 EPC so that they can fulfil their purpose of enabling the protection conferred by the patent to be determined under Article 69 EPC (cf. G 2/88, Reasons 2.5). Article 84 EPC, however, says nothing about how to interpret patent claims. At most, it defines the standard to be applied when assessing clarity.

3.9 The Board disagrees with the statement in T 1279/04, Reasons 3, that Article 84, first sentence, EPC is generally applicable in opposition (appeal) proceedings. Systematically, Article 84 EPC belongs to Part III of the EPC on the European patent application. Accordingly, "the requirements of Article 84 EPC [...] play no role in opposition proceedings where the proprietor seeks to have the patent as granted upheld" (G 3/14, Reasons 55). For this reason alone, the requirement under Article 84, first sentence, EPC cannot constitute a generally applicable legal basis for the interpretation of patent claims, including granted claims, in opposition and opposition appeal proceedings.

3.10 In T 1279/04, Reasons 3, it is also stated that "[a]mendment [...] should be the answer to genuine difficulties of interpretation in all aspects of the examination and opposition procedure". The present Board notes that it is up to the patent proprietor whether or not to file amended claim requests, and that its procedural behaviour in this regard has no bearing on the duty of the deciding body to interpret the claims before it. The Board further notes that the possibility of amending patent claims is not a unique feature of proceedings before the EPO but also exists in national court proceedings where, contrary to what is indicated in T 1279/04, the claim wording is not "set in stone" either.

3.11 However, the main rationale underlying T 1279/04, Reasons 3, seems to be that there is a difference between the subject-matter of a patent claim, which is determined in proceedings before the EPO and assessed under Articles 54(2), 56, 83 and 123(2) EPC, and its extent of protection, which is assessed under Article 123(3) EPC and in national infringement proceedings. While, as explained hereafter, the present Board acknowledges a difference, it does not consider this difference a convincing reason not to apply Article 69 EPC and the Protocol when determining the claimed subject-matter in proceedings before the EPO. As an initial remark, the Board notes that determining a patent claim's subject matter, i.e. establishing the meaning of the claimed features, is not distinguishable from interpreting that claim and its features. Understood this way, it is always necessary to interpret a patent claim in the proceedings before the EPO.

3.11.1 In G 1/16, Reasons 12, the Enlarged Board of Appeal stated that "[p]atent claims define the subject-matter for which protection is sought in terms of the technical features of the claimed invention", referring to both Article 69(1), first sentence, EPC and Article 84 EPC as a legal basis for this statement. The Enlarged Board thereby confirmed that there is a close link between the claimed subject-matter and the extent of protection (which is the term actually used in Article 69(1), first sentence, EPC). The nature of this link will be explained in the following.

3.11.2 The extent of protection of a patent claim can be understood as the (infinite) set of embodiments which infringe that claim. This set can conceptually be divided into two distinct subsets, the first formed by embodiments which infringe the claim by realising the elements specified in the claim (i.e. the claimed features), and the second formed by embodiments which infringe the claim by equivalent means (i.e., in the words of Article 2 of the Protocol, by an element equivalent to an element specified in the claims). The first subset of a patent claim's extent of protection is directly defined by its subject-matter.

3.11.3 When assessing whether an embodiment falls under the first subset of a patent claim's extent of protection, it is assessed whether that embodiment can be subsumed under the claimed features. To this end, the claimed features must be interpreted - and the claimed subject-matter thereby determined - in accordance with the rule on how "to interpret the claims" given in Article 69(1) EPC in conjunction with Article 1 of the Protocol. Interpreting the claimed features for the purposes of establishing the first part of a patent claim's extent of protection is thus not different from interpreting and determining the claimed subject-matter for the purposes of assessing compliance with Articles 54, 56, 83 and 123(2) EPC. Accordingly, national courts apply the rules for the interpretation of claims in Article 69 EPC and the Protocol in both infringement and revocation proceedings as a matter of course.

3.11.4 Assessing whether a certain embodiment falls under the second part of a patent claim's extent of protection, i.e. the part concerning equivalents under Article 69(1) EPC in conjunction with Article 2 of the Protocol, is a second step in the determination of the extent of protection which follows claim interpretation. It mainly consists in assessing whether a feature of an allegedly infringing embodiment is equivalent to an element specified in the claims, i.e. to one of the features defining the claimed subject-matter. As the "invention" in Articles 54, 56 and 83 EPC (see T 92/21, Reasons 3.2, last sentence) and, with regard to claim amendments, also the "subject-matter" under Article 123(2) EPC (see G 2/10, Reasons 4.5.2, last paragraph) refer to the claimed subject-matter only, equivalents are not to be taken into account when compliance with these provisions is assessed. Under Article 123(3) EPC too, it is mainly "the technical subject-matter of the claims" before and after the amendment which is considered (see G 2/88, Reasons 4.1), although equivalents may theoretically play a role under this provision as it refers to the extent of protection (see T 1360/13, Reasons 4.13; see, however, also T 81/03, Reasons 3.7). In conclusion, equivalents are the part of the extent of protection which is indeed primarily relevant for infringement proceedings.

3.12 The general application of Article 69 EPC and the Protocol in proceedings before the EPO is also required to ensure uniform and consistent claim interpretation. In G 2/88, Reasons 4, the Enlarged Board held that "the guide on the manner in which the technical features of the claim are to be interpreted" provided by the Protocol must be applied when interpreting a claim for the purposes of Article 123(3) EPC. However, the features which define a certain patent claim's subject-matter may need to be interpreted not only under Article 123(3) EPC but - as in the present case - for example also under Article 123(2) EPC. In order to avoid contradictions, the same principles of claim interpretation must be applied in both instances.

3.12.1 In this regard, it is immaterial that the tests to be carried out under these provisions are different. Under Article 123(2) EPC, an amended patent claim's subject-matter is compared with the content of the application as filed under the gold standard (G 2/10, Reasons 4.3), and under Article 123(3) EPC a possible extension of protection is assessed by comparing the totality of the claims before and after the claim amendment (G 2/88, Reasons 3.2). Despite these differences, the subject-matter of a given patent claim must be interpreted and determined in a uniform and consistent manner, and this all the more so if that claim is afterwards subject to both of these tests.

3.13 In T 556/02, Reasons 5.3, it was stated that Article 69 EPC is a specific application of the general principle that the claims of a patent, being a part of a document as a whole, always need to be construed in their context. Likewise, in T 1646/12, Reasons 2.1, it was held that a patent claim must, like any text, be interpreted in its context, which includes the description. In T 2007/19, Reasons 2.1.3, the Board held with reference to T 1646/12 that there was no general principle of claim interpretation according to which claim features always had to be given the broadest meaning irrespective of the context in which they were used. The present Board agrees with these statements and adds that the description and the drawings provide context-specific information about the claimed subject-matter. Taking this information into account when interpreting a patent claim from the perspective of the person skilled in the art makes claim interpretation more accurate, which contributes to legal certainty; all the more so if, as is often the case, patentees use terms idiosyncratically in the claims.

3.14 The Board further notes that the EPO opposition divisions and Boards of Appeal on the one hand, and the national courts of the Contracting States to the EPC and, soon, the Unified Patent Court on the other, have concurrent jurisdiction on the validity of European patents. Against this background, a common approach to claim interpretation based on the principles set out in Article 69 EPC and the Protocol also serves the legitimate interests of the users of the European patent system.

3.15 In view of all of the above considerations, the Board holds that Article 69 EPC in conjunction with Article 1 of the Protocol can and should be relied on when determining the claimed subject-matter in proceedings before the EPO.

3.16 Nevertheless, contrary to what was implied by the appellant, one must not deduce from the applicability of Article 69 EPC in conjunction with Article 1 of the Protocol that the description has the same weight as the claims. According to Article 69(1), first sentence, EPC only the claims determine the extent of protection. The Board notes that there is no contradiction on this issue between Article 69(1), first sentence, EPC and Article 84, first sentence, EPC.

3.16.1 Hence, although Article 69(1), second sentence, EPC requires that generally account be taken of the description and the drawings when interpreting a patent claim, the primacy of the claims under Article 69(1), first sentence, EPC limits the extent to which the meaning of a certain claim feature may be affected by the description and the drawings. The established case law of the Boards of Appeal that limiting features which are only present in the description but not in the claim cannot be read into a patent claim is thus fully compatible with relying on Article 69 EPC in conjunction with Article 1 of the Protocol as a legal basis for determining a patent claim's subject-matter.

3.16.2 Moreover, while it cannot be ruled out ab initio that a certain claim feature may, when interpreted in light of the description and the drawings, have a different meaning than it would have when interpreted in isolation, it would be at odds with the principle of the primacy of the claims if this allowed claim features to be defined in the description at will, including in ways which are not at all compatible with the feature's ordinary meaning. The primacy of the claims therefore also limits the extent to which the description may serve as a dictionary for the terms used in the claims.

3.17 In view of the parties' various submissions on linguistic matters in the present case, the Board further points out that claim interpretation is overall a question of law which must as such ultimately be answered by the deciding body, and not by linguistic or technical experts. It does, however, involve the appraisal of linguistic and technical facts (see T 1776/18, Reasons 4.5.5), which may be supported by evidence submitted by the parties.

3.18 In line with Article 70(1) EPC a patent claim must be interpreted in its authentic text, which is the text of the patent in the language of the proceedings. Moreover, the material which can and must be taken into account for claim interpretation under Article 69 EPC - in addition to the claims themselves (in their authentic text) - is limited to the description and the drawings. Therefore, in the present case the German and French translations of claim 1 cannot be relied upon for its interpretation. At most, it is possible to deduce from these translations how the translators responsible for them understood the English version of claim 1.

3.19 In the following, the Board will apply the aforementioned principles of claim interpretation to assess the compliance of claim 1 of the patent as granted with Article 123(2) EPC and to assess the compliance of claim 1 of auxiliary requests 1-3 with Article 123(3) EPC in view of claim 1 as granted. Both assessments concern the same feature of claim 1 as granted. The Board will interpret this claim feature under Article 123(2) EPC and under Article 123(3) EPC uniformly and in accordance with Article 69 EPC and the Protocol.