Key points
- The proprietor argues a narrow interpretation of the claim in connection with inventive step.
- "the expression "gas turbine blade", is clear for a skilled person in the field of axial turbo-machinery. Knowledge in this field encompasses knowledge on inter alia gas turbine engines, their general structure, components and operating conditions. The skilled person will be aware that a gas turbine engine is generally composed of (seen in axial direction of incoming air flow) a compressor section for compressing the incoming air, a burner or combustor for combusting fuel in the presence of the compressed air and a downstream turbine section in which the exhaust gases resulting from the combustion drive the turbine (for example to generate electrical power). The skilled person will also be aware that the compressor and turbine sections are each composed of one or more stages of alternating rows of respective stationary blades (frequently also called vanes or nozzles) and rotating blades."
- "It is undisputed that the expression "gas turbine" can be understood by the skilled person to refer either to the entire gas turbine engine or to only the turbine section of such engine. Both interpretations are technically reasonable, and no argument or evidence has been submitted to the contrary. Similarly, the term "blade" used in this context will be understood by the skilled person to designate either a rotating or a stationary blade, without any of these understandings being technically unreasonable or illogical."
- "The opposition division was therefore correct to reject the respondent's [proprietor's] approach of a limited interpretation of the claim in the light of the description, on which the respondent in essence also relied in the present appeal proceedings. The respondent's arguments submitted with its statement of grounds of appeal are found unconvincing for the following reasons."
- "The Board considers that the principles summarised by the respondent on the basis of certain passages taken from decisions T 454/89, T 860/93 and T 1127/03 [...] do not lead to the conclusion that a claim which has a clear meaning for the skilled person shall be given a limited interpretation in the light of the description. In particular, the Board cannot find any consideration in the passages from these decisions referred to by the respondent, nor from the broader context from which the citations have been taken, which would support the respondent's conclusion that, if the wording of a claim is clear within the meaning of Article 84 EPC, the broadest technically reasonable interpretation [] would [read: can? ] be excluded."
- "In analogy to, for example, the situation underlying decision T 454/89 referred to by the respondent, in which it was held that a lack of clarity in a claim could not be cured by relying "on Article 69 EPC as a replacement for the Article 84 requirements, i.e. as a substitute for an amendment which would be necessary to remedy a lack of clarity", (ibid., reasons 4.1.(viii)), also in the context of the requirements of Article 54 and 56 EPC, a technically reasonable and not illogical understanding of the claim wording cannot be restricted by reference or an amendment to the description. In such a situation, it would, rather, be the claim wording that would require amendment (see for example T 1628/21, reasons 1.1.18)."
- The general principle: "A claim which is clear by itself should be interpreted as broadly as technically reasonable in the relevant technical field. This represents the commonly accepted approach on claim interpretation by the Boards of Appeal when assessing inter alia the patentability requirements of Articles 54 and 56 EPC, as was also confirmed in recent decisions, for example T 1628/21, reasons 1.1.2 and 1.1.7, or T 447/22 reasons 13.1 (see also the case law cited in these decisions). "
- " Moreover, the description of the patent in suit does not lead to a different conclusion either. The description of the patent as granted states in the final sentence of paragraph 1: "Generally, the gas turbine blade according to the present invention is not restricted to a gas turbine: rotor blades or guide vanes of a turbo-machinery fall legally under the present invention". "
EPO
You can find the link to the decision after the jump.
I wrote this blog post well before the referral decision in case G 1/24 was issued.
ReplyDeletePeter, I fully agree with you, it must be pointed out that the rule of interpretation to be applied by the EPO for validity assessment is that a claim should be given its broadest technically sensible meaning. This is the principle exposed in section I.C.4.1 of the CLB (release 2022, unamended in the 2024 release), entitled « General rule of interpretation », as « a well-established principle laid down by the boards' case law. »
ReplyDeleteSeveral recent decisions routinely refer to the rule of interpretation exposed in CBL: T 1705/17, T 1553/19, T 1628/01, and very recently T 1208/21 of 9 April 2024 , which stresses in Reason 2 that it is the shared approach of the Boards of appeal :
Reason 2. A claim which is clear by itself should be interpreted as broadly as technically reasonable in the relevant technical field. This represents the commonly accepted approach on claim interpretation by the Boards of Appeal when assessing inter alia the patentability requirements of Articles 54 and 56 EPC, as was also confirmed in recent decisions, for example T 1628/21, reasons 1.1.2 and 1.1.7, or T 447/22 reasons 13.1 (see also the case law cited in these decisions).
In this respect, I find truly astonishing in decision T 439/22. Its approach of claim interpretation at the EPO is solely focused on the application of Art 69 EPC to validity assessment, and in so doing it utterly ignores the well settled principle according to of the CBL case law regarding. Which leaves it completely in doubt whether the decision questions or approves this principle.
I am stating the obvious, but the description and drawings are always used and required anyway to gain understanding of the terms of a claim, without any need to refer to Art 69. This is explicited in the other parts of section I.C.4.1. In addition, a very concrete illustration is the requirement that numerals used to connect the description to the drawings be mentioned in the claims. Such principle has not so far required the application of Art 69.
In addition, decision T 439/22 presents very thin reasoning for what would amount to a major amendment of the EPC and of the current practice of the EPO, which applies Art 69 in accordance with its language i.e. the assessment of the extent of protection of granted claims for compliance with Art 123(3).
There is in my view an error in principle in decision T 439/22, which consists of underestimating the differences between the context of claim interpretation before the courts and in EPO proceedings and attempting to unify the rule of interpretation irrespective of the context.
ReplyDeleteIn an infringement action also including a counter revocation action, the issue of claim interpretation is focused on the terms of a claim in dispute between the parties. These terms, which are likely critical for the outcome, are dependent on the specific object the infringement of which is alleged. They are defined in concreto.
In contrast, during examination of an application before the EPO, there is no object to which the claimed subject matter can be compared. The issue of claim interpretation arises in abstracto. This justifies for the rule of interpretation to be as simple and general as possible, as is the case in section I.C.4.1.
Another major difference between the two contexts relates to the available resources. In this respect, the context of the examination of applications is characterised by drastic time limits and production requirements imposed on examiners, far remote from the resources typically available for court proceedings.
It is of note that the referral decision recommends in reason 6.2.5 a radical change in the examination procedure, consisting of adding a preliminary step to check that the terms of the claims are fully justified with regard to the description and drawings. This is consistent with the Board’s objective of unifying claim interpretation rules . But such an additional step would entail a substantial overload for examiners, totally unrealistic in view of their above-cited time constraints. In addition, it would be certain to generate frequent if not systematic disagreements with applicants, and resulting uncertainties and increase of costs and prosecution times.