T 0177/22 - Citing the UPCA CoA case law, claim interpretation

Key points

• "The Board holds that, in order to assess whether the claimed invention is disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art or is novel or inventive, the claimed invention must - to the extent to which this is decisive for the outcome of the case - first be determined by interpreting the claim from the perspective of the person skilled in the art (see T 367/20, Reasons 1.3.8 for added subject-matter). "
• "When doing this, a Board of Appeal is not limited to the claim interpretations advanced by the parties but may also adopt a claim interpretation of its own (T 450/20, Reasons 3.4.2; T 1537/21, Reasons 1.3.5)."
• Note, in that case, the Board must give the parties an opportunity to comment on the claim interpretation under Article 113(1), it seems to me. Indeed, in this case, "In the present case, the Board informed the parties of its interpretation of feature 1.11 inter alia in point 17.3.1(e) of its communication under Article 15(1) RPBA and, having heard the parties on this, confirmed this claim interpretation in the oral proceedings."
• The Board, putting a treatise in brackets in a very long sentence - I added the bullets for legibility: 
• " feature 1.11 of claim 1 as granted is to be interpreted not only in the context of the other features in that claim but also in the context of the description as granted (for recent case law on this matter see [: ]
• T 367/20, Reasons 1.3.2 to 1.3.7, referring to the principles of claim interpretation as set out in Article 69 EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC 
• and T 447/22, Reasons 13.1, referring to the general principle under the EPC that claims can be interpreted only in context, which includes the description and the drawings; 
• see also T 1473/19, Reasons 3.3 to 3.16.2, referring to G 2/88, Reasons 4, applying Article 69 EPC and the Protocol for interpreting "the technical features of the claim" when assessing extension of the scope of protection under Article 123(3) EPC, 
• and further G 6/88 (taken on the same day as G 2/88), Reasons 4, last sentence, referring to the question before it as a question of law of general nature concerning novelty, and Reasons 3, first sentence, 6, 7, and 7.1, where the Enlarged Board (directly) applied Article 69 EPC and the Protocol "to construe the claim in order to determine its technical features" when assessing novelty under Article 54(1) EPC; 
•  compare also Court of Appeal of the Unified Patent Court, UPC_CoA_335/2023, Grounds 4.d)aa), referring to Article 69 EPC and the Protocol as well as to G 2/88, and stating that the principles for the interpretation of a patent claim apply equally to the assessment of the infringement and the validity of a European patent; 
• as to the harmonised approach on claim interpretation introduced by the EPC see further G 6/88, Reasons 3, referring to Article 69 EPC and the Protocol on its interpretation as "a mechanism for harmonisation" which provides a "method of interpretation of claims of European patents throughout their life"; 
• see further T 1473/19, Reasons 3.14, referring to the legitimate interests of the users of the European patent system in a common approach to claim interpretation, 
• T 367/20, Reasons 1.3.5, third paragraph and the following comparative analysis of national case law, 
• and T 438/22, Reasons 5.5.3, referring to the overarching objective under the EPC that authorities, courts and the public interpreting the claims should, as far as possible, arrive at the same understanding of the claimed subject-matter as the EPO bodies deciding on its patentability; 
• as to the primacy of the claims under Article 69 EPC and the Protocol see T 1473/19, Reasons 3.16 to 3.16.2; 
• in regard to the latter compare also Court of Appeal of the Unified Patent Court, UPC_CoA_335/2023, Grounds 4.d)aa), referring to the patent claim as not only the starting point, but the decisive basis for determining its subject-matter and scope of protection)."
• The Board does not finish the literature review with any explicit conclusion, although it comes back to it later when referring to the list as "the applicable principles of claim interpretation". Note, however, that the Board uses "compare also", not "see", a meaningful difference. 
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• "The respondent [opponent] submitted that a different, broader, claim interpretation had to be adopted for the assessment of novelty and inventive step than for the assessment of sufficiency of disclosure (in regard to which the respondent had argued in favour of a narrower claim interpretation)."
• "The Board disagrees. The "invention" within the meaning of Article 54(1) EPC, the "invention" within the meaning of Article 56 EPC and the "invention" within the meaning of Article 100(b) EPC (and Article 83 EPC) all refer to the claimed subject-matter (see T 1473/19, Reasons 3.11.4, and T 92/21, Reasons 3.2, last sentence), and a given patent claim's subject-matter must be interpreted and determined in a uniform and consistent manner (see T 1473/19, Reasons 3.12.1). This excludes interpreting the same claim differently when assessing sufficiency of disclosure on the one hand, and when assessing novelty and inventive step on the other hand. It also presupposes that the same principles of claim interpretation must be applied when assessing compliance with any of these requirements under the EPC (as to the applicable principles of claim interpretation see point 2.2.7 above)."

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t220177eu1