T 0169/20 - Claim interpretation - using the description only exceptionally

Key points

•  Recently T 1473/19 challenged the prevailing view in the case law and proposed that Art.69 is to be used for claim interpretation, not only for Art. 123(3) (as is conventional) but also for Art. 123(2) and Art.54 etc. (see this post)
• That Board, in that case, held 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"
• "The [present] board disagrees with the findings in the above decisions [i.e. T 1473/19 ] for the following reasons:"
• "The board does also not agree in that Article 69 EPC provides the only guideline for interpretation of the claims in the EPC and, as explained in the next paragraphs, considers that the provisions in Article 84 and Rules 42 and 43 EPC set out the structure of the information in the patent or patent application to elucidate the subject-matter of the invention and thus provide guidance on how to interpret the claims for the purpose of assessing patentability."
• "the provisions of Article 69(1) EPC do not apply to the interpretation of the claims for the purpose of assessing patentability but, in view of its explicit wording, to the determination of the "extent of the protection" of the patent or patent application, i.e. the object to be examined under Article 123(3) EPC or in infringement proceedings. By contrast, the wording of Articles 54 and 56 EPC expressly states that the object to be examined for assessing novelty or inventive step is the "invention"."
• This implies that the scope of the claims is different for validity and infringement.
• This also raises the question of what Art. 52, 54 and 56 mean with the "invention".
• "According to Article 84 EPC, the claims shall define the matter for which protection is sought, which in view of Rule 43(1) EPC corresponds to the technical features of the "invention". It is thus apparent that the object to be assessed under patentability corresponds to the technical features in the claims. "
• "as concluded in G 2/98 (Reasons 2 and 9), the term "invention" in the EPC should be narrowly construed as the combination of technical features in the claims. As stated in T 1845/14 (Reasons 9.6), this construction of the term "invention" implies that the subject-matter to be assessed under Articles 83, 87, 54 or 56 EPC should not be interpreted restrictively or differently from what a skilled person would understand when reading the claims on the basis of technical aspects wich are part of the description but not implicitly or explicitly defined in the claims."
• The Board, turning to the role of the description: "If the wording of a claim is unclear for a person skilled in the art, the description may fulfil its supporting function by illustrating the meaning of the unclear feature/s. Conversely, when the wording of a claim is clear for the skilled person, the supporting role from the description is neither necessary nor justified. In addition, if the invention according to the description is narrower or different from that in the claim, the supporting role of the description under Article 84 EPC cannot be fulfilled, since an interpretation on this basis would not represent an illustration of the subject-matter of the claim with the aid or support of the description but a restriction or modification of the scope of the invention."
• "The board thus considers that the condition "supported by the description" in Article 84 EPC provides a legal basis for determining how and when claims should be interpreted in the light of the description. "
• "In particular, the wording of this provision explicitly limits the role of the description to an aid for understanding the subject-matter to be assessed under patentability, while implicitly confining this role to the exceptional cases where such support is both necessary and possible. The support of the description should be resorted to only in case of need, since it is the wording of the claims which defines the matter for which protection is sought (i.e. the invention) and it would not be justified to seek help in understanding a subject-matter which is in itself clear. Moreover, this support is only possible to the extent that there is a correspondence between the description and the subject matter of the claimed invention, so that the technical explanations in the description can serve to illustrate the meaning of the claimed features and not to limit or modify their scope with respect to what a person skilled in the art would understand when reading them."

• The Board also notes that: "While [Article 84 EPC, 2nd sentence]  is primarily applied to require that the claims be brought in line with the technical teachings of the description (i.e. due to an essential feature missing from the claim), or that the description be adapted to disclose the same invention as the claims, these issues ultimately seek to eliminate inconsistencies in order to enable the supporting function of the description as an aid for understanding the claims."

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/t200169eu1.html

Reasons for the Decision

1. Claim interpretation

1.1 Regarding claim 1 as granted, both the proprietor and the opposition division considered that the wording "...the detergent composition having a fluid phase and containing a second container..." implied that:

i) the second container was contained within the fluid phase of the detergent composition, and that

ii) the fluid phase of the detergent composition was contained in the at least one compartment of the (first) container.

1.1.1 In its preliminary opinion, the board argued that the subject-matter of claim 1 encompassed embodiments going beyond the above interpretation, because while the expression "the detergent composition having a fluid phase and containing a second container" defined that the detergent composition included a fluid phase, it did not specify that the second container had to be contained within this fluid phase. The wording of the claim thus encompassed embodiments in which the second container was contained in a different phase of the detergent composition (e.g. a powder phase or a solid phase), which also implied that the fluid phase of the detergent composition could be contained in the second container.

1.1.2 In its letter dated 22 December 2022 and at the oral proceedings, the proprietor argued that if a claim was ambiguous and there were doubts as to how it should be interpreted, the description should be consulted to resolve the ambiguity in order to assess patentability. It cited decision T 16/87 (Reasons 6), according to which patentability should be assessed on the basis of the subject-matter of the claims interpreted in the light of the description and the drawings, in line with the provision of Article 69(1) EPC. It further referred to decision T 303/94 (Reasons 4.3 and 4.4), which concluded that when the scope of a granted claim could not be exactly established as a result of an ambiguity, the description had to be relied upon to interpret the claims.

The proprietor also indicated that there seemed to be contradictory approaches in the jurisprudence of the Boards of Appeal in the question of when and how the claims should be interpreted in the light of the description.

1.1.3 To clarify this issue, the board will hereinafter provide a detailed discussion on this matter.

1.2 Legal provisions underpinning claim interpretation

1.2.1 In decision T 16/87, the board concluded (see headnote) that the provision of Article 69(1) EPC was applicable to the interpretation of the claims for the assessment of patentability. A similar conclusion was reached in recent decision T 1473/19 (Reasons 3.11.3), which held that Article 69(1) EPC, in conjunction with Article 1 of the protocol of interpretation, was applicable to the interpretation of claimed features when assessing Articles 54, 56, 83 and 123(2) EPC. More specifically, decision T 1473/19 concluded (Reasons 3.8 and 3.9) that the only provisions in the EPC for interpreting the claims were provided by Article 69 EPC. The purpose of Article 84 EPC was to enable a clear delimitation of the scope of protection in order to ensure that the extent of protection of the patent could be determined under Article 69 EPC. Article 84 EPC was included in part III of the EPC on the European Patent Application and, as indicated in G 3/14 (Reasons 55), it played no role for the examination of granted claims in opposition proceedings, so its provisions could not constitute an applicable legal basis for the interpretation of patent claims in opposition or opposition-appeal proceedings.

1.2.2 The board disagrees with the findings in the above decisions for the following reasons:

In the board's view, the fact that the provisions under Article 84 EPC are not a ground for opposition does not detract from their validity as a legal basis for the development of arguments in opposition or opposition-appeal proceedings. This issue is addressed in G 3/14 (Reasons 55), which states that even though Article 84 EPC cannot be invoked to object granted claims, it "may still be highly relevant in opposition proceedings in that it can influence the decisions under Article 100 EPC", including those relating to patentability. The same applies to other provisions in part III of the EPC, such as Articles 80, 85 or 87 EPC, which are not examined under Article 101 EPC and yet include legal provisions which might be relevant to elucidate questions of law in opposition and opposition-appeal proceedings. As a further example, in G 2/98 (Reasons 6.2) the wording of Article 84 EPC was relied upon as a legal basis for deducing how the term "invention" should be construed in Article 87(1) EPC and in other provisions of the EPC.

The board does also not agree in that Article 69 EPC provides the only guideline for interpretation of the claims in the EPC and, as explained in the next paragraphs, considers that the provisions in Article 84 and Rules 42 and 43 EPC set out the structure of the information in the patent or patent application to elucidate the subject-matter of the invention and thus provide guidance on how to interpret the claims for the purpose of assessing patentability.

1.2.3 The present board finds itself in agreement with the reasoning in T 1646/12 (Reasons 2.1) that the provisions of Article 69(1) EPC do not apply to the interpretation of the claims for the purpose of assessing patentability but, in view of its explicit wording, to the determination of the "extent of the protection" of the patent or patent application, i.e. the object to be examined under Article 123(3) EPC or in infringement proceedings. By contrast, the wording of Articles 54 and 56 EPC expressly states that the object to be examined for assessing novelty or inventive step is the "invention". The basis for the interpretation of the claims for the evaluation of patentability must therefore be sought in those provisions of the EPC relating to the concept "invention".

1.2.4 According to Article 84 EPC, the claims shall define the matter for which protection is sought, which in view of Rule 43(1) EPC corresponds to the technical features of the "invention". It is thus apparent that the object to be assessed under patentability corresponds to the technical features in the claims. Also according to Article 84 EPC, 2nd sentence, the claims should be supported by the description, whose role is inter alia (see Rule 42(1)(c) EPC) to disclose the invention as claimed in such terms that the technical context can be understood.

1.2.5 In the board's view, the requirement in Article 84 EPC, 2nd sentence that the claims shall be "supported by the description", as well as the corresponding expressions in the other official languages ("[Die Patentansprüche müssen] von der Beschreibung gestützt werden" in German or "[les revendications doivent] se fonder sur la description" in French), provides a direct and unambiguous indication of the description's function as a support for understanding the subject-matter of the claims. While this provision is primarily applied to require that the claims be brought in line with the technical teachings of the description (i.e. due to an essential feature missing from the claim), or that the description be adapted to disclose the same invention as the claims, these issues ultimately seek to eliminate inconsistencies in order to enable the supporting function of the description as an aid for understanding the claims.

If the wording of a claim is unclear for a person skilled in the art, the description may fulfil its supporting function by illustrating the meaning of the unclear feature/s. Conversely, when the wording of a claim is clear for the skilled person, the supporting role from the description is neither necessary nor justified. In addition, if the invention according to the description is narrower or different from that in the claim, the supporting role of the description under Article 84 EPC cannot be fulfilled, since an interpretation on this basis would not represent an illustration of the subject-matter of the claim with the aid or support of the description but a restriction or modification of the scope of the invention.

The board thus considers that the condition "supported by the description" in Article 84 EPC provides a legal basis for determining how and when claims should be interpreted in the light of the description. In particular, the wording of this provision explicitly limits the role of the description to an aid for understanding the subject-matter to be assessed under patentability, while implicitly confining this role to the exceptional cases where such support is both necessary and possible. The support of the description should be resorted to only in case of need, since it is the wording of the claims which defines the matter for which protection is sought (i.e. the invention) and it would not be justified to seek help in understanding a subject-matter which is in itself clear. Moreover, this support is only possible to the extent that there is a correspondence between the description and the subject matter of the claimed invention, so that the technical explanations in the description can serve to illustrate the meaning of the claimed features and not to limit or modify their scope with respect to what a person skilled in the art would understand when reading them.

1.2.6 The board notes that similar conclusions on the limits of claim interpretation may be drawn from the meaning of the concept "invention" (i.e. the object to be assessed under patentability). In particular, according to Rule 43(1) EPC and as concluded in G 2/98 (Reasons 2 and 9), the term "invention" in the EPC should be narrowly construed as the combination of technical features in the claims. As stated in T 1845/14 (Reasons 9.6), this construction of the term "invention" implies that the subject-matter to be assessed under Articles 83, 87, 54 or 56 EPC should not be interpreted restrictively or differently from what a skilled person would understand when reading the claims on the basis of technical aspects wich are part of the description but not implicitly or explicitly defined in the claims.

1.2.7 Based on the above, the board concludes that the provisions in Article 84 EPC and Rules 42 and 43 EPC provide an adequate legal basis for claim interpretation when assessing the patentability of an invention.

1.3 Case law concerning claim interpretation

1.3.1 Despite the above discussed discrepancies regarding the relevant legal provisions to be applied for interpreting the claims, the present board considers that the established practices of the Boards in deciding when and how the claims should be interpreted in the light of the specification are reasonably homogeneous. Such practices validate, in the present board's view, the legal framework proposed in the preceding paragraphs.

1.3.2 In a number of decisions the Boards have concluded that the specification may be used to interpret ambiguous or unclear features or to confirm the most obvious interpretation of the claims (see CLBA, 10th Ed., II.A.6.3.3). Decision T 56/04 (Reasons 2.10) stated that an interpretation of the claims in the light of the description should only be contemplated if the following criteria are fulfilled: i) such interpretation must be necessary to understand the claim, for example because the claim is unclear and cannot be objected under Article 84 EPC, or because including the definition of the unclear feature would prejudice the readability of the claim (note here the analogy with Rule 43(6) EPC), and ii) the definition of the unclear feature should be readily recognisable in the specification. The board notes that these conditions essentially correspond to those derived from the legal framework based on the provision "supported by the description" in Article 84 EPC (see last paragraph of 1.2.5 above).

The specification has also been relied upon by the Boards to determine the underlying technical context of the invention (see for example T 1844/15, Reasons 3.3; T 2365/15, Reasons 4.3.1; T 1646/12, Reasons 2.1). Under this approach, the true meaning of the features is illustrated in the light of the relevant technical context of the invention, rather than being interpreted literally and in isolation. In other words, the technical information in the specification is used to discard alternatives which, while formally encompassed by the literal wording of the claim, would be incompatible with the technical framework of the invention. This way of interpreting the claims reflects the well-established principle that patent claims should be read and interpreted through the eyes of a person skilled in the art, and is also coherent with the supporting role of the description under Article 84 EPC.

1.3.3 On the other hand, there is also a broad consensus in the Boards that the specification should not be used to read restrictive features not suggested by the wording of the claims (see CLBA, 10th Ed., II.A.6.3.4), or to give a different meaning to a claim feature which in itself imparts a clear and credible technical teaching to the skilled reader (see T 1018/02, Catchword and T 197/10, Catchword). For example, if a claim is defined broadly, it should be construed as covering all technically logical interpretations thereof (see

T 1408/04, Reasons 1), even if the specification explicitly instructs the reader to interpret the features more narrowly than justified by the wording of the claim (see T 1902/16, Reasons 2.2).

Moreover, as concluded in some decisions (see e.g.

T 1127/16, Reasons 2.6.1 or T 470/21, Reasons 2.1), if a claim is ambiguous and can be interpreted in more than one technically reasonable way (none of them being more obvious or apparent than the rest), it would not be permissible to restrict its meaning in view of the description by discarding one of the technically reasonable interpretations, as this would be tantamount to rewarding the applicant or patent proprietor for an unclear drafting of the claims by allowing him/her to resort at will to more restrictive interpretations of the features on the basis of the description.

The board notes that these practices are also in line with the legal framework proposed in the present decision (see in particular points 1.2.5 and 1.2.6 above).

1.3.4 Lastly, the board will briefly address two well-known legal expressions which have been cited in a number of decisions (see for example T 311/93, Reasons 2.4;

T 523/00, Reasons 2; T 1321/04, Catchword) as a guideline to address the question of claim interpretation: "the patent is its own dictionary" and "the terms used in patent documents should be given their normal meaning in the relevant art, unless the description gives the term a special meaning".

In the present board's view, the above expressions have been a major source of confusion in the debate on claim interpretation, as they seem to indicate that it would be permissible to rely on the definition of a feature given in the description to modify its meaning in the claim, even if the claim wording is as such clear and technically reasonable and/or if the meaning assigned in the description deviates from the conventional meaning of the feature within the relevant technical context. Such approach would not only be contrary to the legal framework proposed by the present board (as well as that based on Article 69(1) EPC) but would also be at odds with the well-established principle of the primacy of the claims. It is however noted that a closer reading of some decisions citing these expressions reveals that the actual practice in many of these cases did not follow them to the letter, but instead construed them, in line with point 1.3.2, 2nd paragraph above, as a way to express that the features in a claim should be interpreted within the specific technical context of the invention as provided in the specification (see for example T 311/93, Reasons 2.4 and 2.7 and T 1844/15, Reasons 3.3-3.5).

1.4 Conclusions on claim interpretation

The approach followed by the present board, which is based on the legal framework presented in points 1.2.3 to 1.2.7 above and aligns with the well-established practices described in points 1.3.2 to 1.3.4 above, can be summarised as follows:

The object to be assessed under patentability is the "invention", which according to Article 84 EPC and Rule 43(1) EPC corresponds to the combination of the technical features in the claims. It is thus the wording of the claims which primarily determines the subject-matter of the invention, and the sole function of the description in this respect, pursuant to Article 84 and Rule 42(1)(c) EPC, is to assist or support in understanding the meaning of these features in those exceptional cases where this aid is both necessary and possible.

On the other hand, if the wording of a claim is clear and technically reasonable in itself, it is neither necessary nor justified to interpret it in the light of the description. In particular, the support of the description should not be used for restricting or modifying the subject-matter of the invention beyond what a skilled person would understand when reading the wording of the claims, for example by excluding interpretations which are both reasonable and technically sensible within the relevant technical context.

1.5 In the present case, the board has concluded that the wording of claim 1 at issue is clear and technically meaningful taking into account the technical context of the invention presented in the description. Thus, in line with the conclusions in the 1st paragraph of point 1.3.3 above, there is no reason to interpret it in light of the description.

The conclusion that the claim is not restricted to a configuration in which the first container contains both the fluid phase and the second container (i.e. that the second container floats in the fluid phase) is not based on a linguistic ambiguity but on the fact that the claim omits any indication in this respect. In particular, as explained in the preliminary opinion and in point 1.1.1 above, the expression "the detergent composition having a fluid phase and containing a second container" in claim 1 simply states that the detergent composition includes a fluid phase and that the second container is contained in the detergent composition (in general), because the conjunction "and" clearly links the requirement "containing a second container" to the detergent composition and not to the fluid phase. There is thus no indication in the claim (also not an ambiguous one) that the second container should be contained in the liquid phase of the detergent composition (rather than in any of the other phases of the detergent), or that the liquid phase should be arranged in the first container.

In fact, even if the proprietor's argument was followed and claim 1 was considered to be ambiguous and to have two different meanings (namely the one proposed by the board and the one suggested by the proprietor, wherein the second container is contained in the fluid phase of the detergent), this would still fall within the situation described in the 2nd paragraph of point 1.3.3 above, because both ways of resolving the ambiguity would be equally reasonable within the technical context of the invention. The outcome would therefore not change, since discarding one of these reasonable interpretations in the light of the description would represent an inadmissible restriction of the subject-matter of the invention rather than an interpretation of its meaning with the support of the description.

1.6 The subject-matter of claim 1 is thus understood as defining a packaged or pouched detergent composition having a first and a second container, wherein the detergent composition includes at least a fluid phase and wherein the second container is contained in the detergent composition. The detergent composition can thus include different phases and the second container can be contained in any of them. The board therefore sees no reason to conclude that the wording of claim 1 excludes embodiments in which the second container contains the fluid phase of the detergent composition while being contained in a different phase (e.g. powder, gel, a second fluid phase, etc.) of this composition.