T 0367/20 - Using the description to interpret the claims under Art. 123(2)

Key points

• Claim 1 as granted is unclear. Under one interpretation, the claim involves added subject-matter, under another interpretation, not.
• "A claim feature must, however, not be interpreted in isolation but in the context of the whole document it forms part of. The context to be considered for the interpretation of a feature in a claim does therefore not only include the other features in that claim and other claims but also the description and the drawings. The general principle that the claims of a patent, being a part of a document as a whole, need to be construed in their context was recognised early in the case law and has also been understood to underlie Article 69 EPC (see T 556/02, Reasons 5.3, fourth paragraph and, more recently, T 3097/19, Reasons 29.2)."
•  " Moreover, the principle that 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 (established case law; see Case Law of the Boards of Appeal, 10th edition 2022, II.A.6.1, first paragraph) was formulated for the first time with reference to Article 69 EPC (see T 190/99, Reasons 2; see also T 396/99, Reasons 3.5, in which the same board examined the patentability of the claimed subject-matter with reference to Article 69 EPC)."
• " It was set out in T 1473/19 (Reasons 3.11.3 and 3.11.4) that the first step in determining the extent of protection in accordance with Article 69 EPC consists in determining the claimed subject-matter under the "general principles" of claim interpretation under Article 1 of the Protocol on the Interpretation of Article 69 EPC (without taking account of equivalents under Article 2 of the Protocol on the Interpretation of Article 69 EPC at this stage; if required at all, this is only done in infringement proceedings as a second step following claim interpretation).
• Note, I understand T 1473/19 to depart from the (then) established case law. 
• "It was further set out in T 1473/19 (Reasons 3.12, 3.12.1 and 3.19) that the interpretation and determination of the subject-matter of the same claim in the same opposition (appeal) proceedings before the EPO should be uniform and consistent, including for the purpose of Article 123(2) and (3) EPC (the application of Article 69 EPC being mandatory for the determination of the "technical subject-matter of the claims" under Article 123(3) EPC, in accordance with G 2/88, Reasons 4 and 4.1)."
• Note that Article 123(3) refers explicitly to the scope of protection, Art. 123(2) does not.
• "Moreover, it was stated in T 1473/19 (in Reasons 3.14 and 3.11.3, last sentence) that the EPO in opposition (appeal) proceedings and the national courts and the UPC in revocation proceedings have concurrent jurisdiction on (post-grant) patent validity and that national courts apply the rules for the interpretation of claims in Article 69 EPC also in revocation proceedings"
• The present Board then cites decisions from several contracting states (UK, DE, FR, NL, CH, ES, AT) that would show that the national courts apply Article 69 EPC also in the context of the validity of the patent.
• "For the above reasons, the present Board considers that the principles of claim interpretation as set out in Article 69 EPC and Article 1 of the Protocol on its interpretation should be applied when establishing the meaning of the claimed features and determining the claimed subject-matter in the present proceedings. Accordingly, the description and the drawings must be considered when interpreting the claims, taking due account of the primacy of the claims."
• "The claims to be interpreted for assessing compliance with Article 123(2) EPC are the claims as granted. These must be interpreted in the context of the whole document they form part of, i.e. the whole disclosure of the patent as granted. Accordingly, it is the description and the drawings of the patent as granted which must be used for the interpretation of the claims as granted (see T 450/20, Reasons 2.16"
• " if - as in the present case - an amended description was submitted for the set of claims which was then granted, only the description of the patent is part of the text of the "European patent" which may be examined pursuant to Article 113(2) EPC).
• Note that Article 113(2) EPC seems to imply that the Board should use any amended description filed during the opposition when determining the validity of the patent.
• "To assess whether an amended patent claim contains added subject matter under Article 123(2) EPC, the claimed subject-matter must first be determined by interpreting the claim (i.e. establishing the meaning of the claimed features) from the perspective of the person skilled in the art. In a second step, it must be assessed whether that subject-matter is disclosed in the application as filed. In other words, the claim interpretation adopted by the deciding body defines the subject-matter which must be disclosed in the application as filed."
• I fully agree with this part of the decision (see here).  
  
  
• "In the case at hand, interpretation a) and interpretation b) of claim 1 as granted result in different claimed subject-matter and are mutually exclusive"
• "In this situation, the deciding body must not adopt two mutually exclusive claim interpretations simultaneously and must - if decisive for the outcome of the case - not leave the interpretation in that regard open either. Rather, the deciding body must consider which of the two claim interpretations is correct. As stated above, this interpretation defines the claimed subject-matter which must be disclosed in the application as filed."
• The Board finds the claim to have basis in the application as filed, noting that: "The description of the patent as granted, which must be taken into account for interpreting feature M5.1 of claim 1 as granted (see points 1.3.2 to 1.3.7 above), consistently discloses that the first switching pipe is "connected to the third heat exchanger in parallel"."
• The case is remitted.
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EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/t200367eu1

1. Added subject-matter of granted claims - Article 100(c) EPC

1.1 Under Article 123(2) EPC, the European patent application or the European patent may not be amended to contain subject-matter which extends beyond the content of the application as filed. Subject-matter implicitly disclosed to the skilled person, using common general knowledge, is part of the content of the application as filed. Implicitly disclosed subject-matter must be a clear and unambiguous consequence of what is explicitly mentioned (Case Law of the Boards of Appeal, 10th edition 2022, II.E.1.3.3).

1.2 The respondent submitted that the subject-matter of the claims of the patent as granted extended beyond the content of the application as filed. The objections of added subject-matter concern the following amended claim features:

- feature M5.1 in claim 1

- features M12, M13 and M14 in claims 1 to 3

1.3 Claim 1, feature M5.1

1.3.1 The parties submitted the following two alternative interpretations of feature M5.1 ("a first switching pipe which is connected to the fluid flows in parallel with the third heat exchanger"):

(a) the fluid flows are in parallel with the third heat exchanger (which would add subject-matter and would lead to an inescapable trap under Article 123(2) and (3) EPC)

(b) the first switching pipe is in parallel with the third heat exchanger (which is undisputedly disclosed in the application as filed)

The wording of claim 1 as granted is arguably unclear. Having said this, the requirements of Article 84 EPC play no role in the present opposition appeal proceedings (G 3/14, Reasons 55), and claim 1 as granted must be interpreted as it stands (see T 874/97, Reasons 2.1).

For the reasons set out below, the Board adopts interpretation b). Interpretation a) could in the Board's view only be considered viable if feature M5.1 were to be interpreted in isolation, i.e. out of context.

1.3.2 A claim feature must, however, not be interpreted in isolation but in the context of the whole document it forms part of. The context to be considered for the interpretation of a feature in a claim does therefore not only include the other features in that claim and other claims but also the description and the drawings.

1.3.3 The general principle that the claims of a patent, being a part of a document as a whole, need to be construed in their context was recognised early in the case law and has also been understood to underlie Article 69 EPC (see T 556/02, Reasons 5.3, fourth paragraph and, more recently, T 3097/19, Reasons 29.2). Moreover, the principle that 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 (established case law; see Case Law of the Boards of Appeal, 10th edition 2022, II.A.6.1, first paragraph) was formulated for the first time with reference to Article 69 EPC (see T 190/99, Reasons 2; see also T 396/99, Reasons 3.5, in which the same board examined the patentability of the claimed subject-matter with reference to Article 69 EPC).

1.3.4 Also the limitation on the weight which can be given to the description in relation to the claims was already in earlier case law derived from Article 69(1), first sentence, EPC (see T 1018/02, Reasons 3.8, concerning Article 123(2) EPC). This has been taken up recently and referred to as the primacy of the claims (see T 1473/19, Reasons 3.16.1; T 450/20, Reasons 2.15; T 73/19, Reasons 2.2), which in particular prohibits reading features into the claims which are only present in the description or the drawings.

1.3.5 It was set out in T 1473/19 (Reasons 3.11.3 and 3.11.4) that the first step in determining the extent of protection in accordance with Article 69 EPC consists in determining the claimed subject-matter under the "general principles" of claim interpretation under Article 1 of the Protocol on the Interpretation of Article 69 EPC (without taking account of equivalents under Article 2 of the Protocol on the Interpretation of Article 69 EPC at this stage; if required at all, this is only done in infringement proceedings as a second step following claim interpretation).

It was further set out in T 1473/19 (Reasons 3.12, 3.12.1 and 3.19) that the interpretation and determination of the subject-matter of the same claim in the same opposition (appeal) proceedings before the EPO should be uniform and consistent, including for the purpose of Article 123(2) and (3) EPC (the application of Article 69 EPC being mandatory for the determination of the "technical subject-matter of the claims" under Article 123(3) EPC, in accordance with G 2/88, Reasons 4 and 4.1).

Moreover, it was stated in T 1473/19 (in Reasons 3.14 and 3.11.3, last sentence) that the EPO in opposition (appeal) proceedings and the national courts and the UPC in revocation proceedings have concurrent jurisdiction on (post-grant) patent validity and that national courts apply the rules for the interpretation of claims in Article 69 EPC also in revocation proceedings. The present Board additionally notes that the grounds for opposition under Article 100(a) to (c) EPC correspond literally - including in their reference to the "subject-matter" of the patent - to the grounds for revocation under Article 138(1)(a) to (c) EPC (see also Article 65(2) UPCA), and that Article 68 EPC regulates the effect of the revocation or limitation of a European patent in an identical manner for both opposition and revocation proceedings. As to examples of national case law on claim interpretation according to Article 69 EPC in respect of revocation proceedings see:

- Court of Appeal of England and Wales, 14.01.2022, [2022] EWCA Civ 20, Reasons 32, referring to Article 69 EPC and Article 1 of the Protocol on its interpretation in relation to novelty, inventive step and sufficiency of disclosure; High Court of England and Wales, 07.03.2013, [2013] EWHC 467 (Pat), Reasons 67, addressing the primacy of the claims according to Article 69 EPC;

- German Federal Court of Justice, 15.12.2020, X ZR 180/18, Reasons I.5.b), applying Article 69 EPC for determining the subject-matter of the patent ("Gegenstand [...] des Patents") in relation to novelty and inventive step; German Federal Court of Justice, 04.02.1997, X ZR 74/94, Reasons 6a, excluding equivalents from the assessment in revocation proceedings;

- Court of Appeal of Paris, 19.10.2021, N°2017/22624, applying Article 69 EPC for claim interpretation (also) in relation to inventive step; Court of Justice of Paris, 24.03.2023, N°20/03907, Reasons 44 and 52, applying Article 69 EPC for claim interpretation in relation to added subject-matter;

- Court of Appeal of The Hague, 27.10.2020, 200.261.833/01, Reasons 4.5 and 4.45.2 (penultimate sentence), referring to a two-step approach in determining the extent of protection under Article 69 EPC and stating that equivalents are not to be taken into account in the assessment of novelty, inventive step and sufficiency of disclosure;

- Federal Supreme Court of Switzerland, 15.12.2020, 4A_317/2020, Reasons 3.1. and 3.3.2, stating that the principles of claim interpretation according to Article 69 EPC are also applicable when assessing novelty;

- Higher Regional Court of Vienna, 08.06.2018, 133 R 21/18p, Reasons 1.8, referring to claim interpretation according to Article 69 EPC in relation to inventive step;

- Court of Appeal of Barcelona, 24.11.2016, ROJ: SAP B 9303/2016, Reasons 16 to 19, applying Article 69 EPC (also) for determining the claimed invention ("el objeto de la invención") in relation to novelty and inventive step.

1.3.6 For the above reasons, the present Board considers that the principles of claim interpretation as set out in Article 69 EPC and Article 1 of the Protocol on its interpretation should be applied when establishing the meaning of the claimed features and determining the claimed subject-matter in the present proceedings. Accordingly, the description and the drawings must be considered when interpreting the claims, taking due account of the primacy of the claims.

1.3.7 The claims to be interpreted for assessing compliance with Article 123(2) EPC are the claims as granted. These must be interpreted in the context of the whole document they form part of, i.e. the whole disclosure of the patent as granted. Accordingly, it is the description and the drawings of the patent as granted which must be used for the interpretation of the claims as granted (see T 450/20, Reasons 2.16; see also the reference to the "description and drawings" and the "European patent" in the first sentence of Article 1 of the Protocol on the Interpretation of Article 69 EPC; moreover, if - as in the present case - an amended description was submitted for the set of claims which was then granted, only the description of the patent is part of the text of the "European patent" which may be examined pursuant to Article 113(2) EPC).

1.3.8 To assess whether an amended patent claim contains added subject-matter under Article 123(2) EPC, the claimed subject-matter must first be determined by interpreting the claim (i.e. establishing the meaning of the claimed features) from the perspective of the person skilled in the art. In a second step, it must be assessed whether that subject-matter is disclosed in the application as filed. In other words, the claim interpretation adopted by the deciding body defines the subject-matter which must be disclosed in the application as filed. In the present Board's view, this approach reflects what the Enlarged Board of Appeal stated in G 2/10, Reasons 4.5.2: "Whether the skilled person is presented with new information depends on how he or she would understand the amended claim, i.e. the subject-matter remaining in the amended claim and on whether, using common general knowledge, he or she would regard that subject-matter as at least implicitly disclosed in the application as filed." (emphasis added).

1.3.9 In the case at hand, interpretation a) and interpretation b) of claim 1 as granted result in different claimed subject-matter and are mutually exclusive in that claim 1 either requires the first switching pipe or, alternatively, the fluid flows to be "in parallel with the third heat exchanger". Contrary to what was indicated by the respondent, it cannot be required of the patentee that the claimed subject-matter according to either of these mutually exclusive interpretations be disclosed in the application as filed. Only the subject-matter which is actually claimed - as opposed to subject-matter which is merely hypothetically claimed - must be disclosed in the application as filed. In this situation, the deciding body must not adopt two mutually exclusive claim interpretations simultaneously and must - if decisive for the outcome of the case - not leave the interpretation in that regard open either. Rather, the deciding body must consider which of the two claim interpretations is correct. As stated above, this interpretation defines the claimed subject-matter which must be disclosed in the application as filed.

1.3.10 For the sake of completeness, the Board notes that whether or not two claim interpretations are in a given case mutually exclusive depends on the specific circumstances of the case which must be assessed by the deciding body. The present case concerning two mutually exclusive interpretations of a certain claim feature must in particular be distinguished from situations in which a claim feature can be interpreted in a broad manner to encompass "a multitude of possibilities" (see T 1408/04, Reasons 1). In such a case, these are different embodiments of the same, broad subject-matter.

1.3.11 Turning to the interpretation of Feature M5.1, the Board notes that this feature refers to a first switching pipe which is connected to "the fluid flows". Although a definite article is used, "the fluid flows" referred to in this feature are not previously introduced and defined in the claim.