Key points
- The description of the patent includes a broadening definition of a term used in the claim. Under the usual meaning of the term, the claim is novel. Under the broad definition given in the description, the claim is not novel.
- The Board referred questions to the Enlarged Board of Appeal.
- After an extensive review of the case law on the role of the description (and drawings) when interpreting the claims for patentability, the Board also proposes an answer.
- " when the term in the claim is in a first step regarded in the context of all the information given in the other features, the other claims, the description and the drawings [...] the fact that [patent proprietor] apparently willingly refrained from including information from the description and drawings that give the term an alternative meaning compared to the one ordinarily linked to it may be taken into account for the following reason. In that case, there is still the risk that the skilled person reading the patent and giving considerable weight to the claims as the place where the invention is defined and the extent of protection conferred by the patent is determined might understand the term in its ordinary meaning."
- "This may be a good reason to construe the patent when in doubt in a way that the term used in the claim is understood in a broad sense, such as to include both potential meanings. Thus, where the information giving the terms in the claims the meaning as intended in the patent is not included in the claims even though it could have been by amendment of the claims, the share of prior art examined that is potentially novelty-destroying or could render an invention obvious is increased during examination and opposition proceedings. "
- "Definitions or similar information narrowing the meaning of a term will, when only contained in the description, often not suffice to totally override the ordinary meaning of the term used in the claim. On the other hand, broadening definitions and the like in the description may be a clear signal that the term used in the claim may not only be understood in the conventional way but also in the broader sense set out in the description."
- "In both cases, it would be up to the patent proprietor to correlate the wording of the claims and the content of the description to make it clear what invention is actually claimed. Where [the proprietor does not do so], another fundamental principle of claim interpretation [...] can be applied [, namely] that any understanding of the claim wording which is technically reasonable should not normally be excluded by the claim [viz. the adopted claim interpretation? ] [...]. Where a patent specification contains a definition or the like of a term used in the claim, this may be seen as a clear indication that even the patent proprietor considered the meaning according to that definition to be (at least also) encompassed by the meaning of this term."
- Given this quite clear conclusion of the Board - and assuming it is not the minority view of one member of the Board - I wonder if the Board could perhaps have decided on the case without a referral. The proposed approach to claim interpretation seems consistent enough with the case law on claim interpretation as reviewed by the Board (indeed, as the Board observes, " It seems desirable to come to a common understanding on these questions neither by developing totally new standards nor by looking at national law alone but rather also by building on the case law of the boards developed over the last 40 years."
- The Board, elsewhere in the decision: "it is the subject-matter of these claims defining the invention that is examined for sufficiency of disclosure, novelty and inventive step under Articles 83, 52, 54 and 56 EPC."
- Note that Article 53 is not included in the list. See T 0944/15.