5. Thus, to come to a decision in the case at hand, the following three questions must first be answered, both to ensure the uniform application of the law and because a point of law of fundamental importance arises.
5.1 Is Article 69 (1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?
5.2 May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation?
5.3 May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions?
6. 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.
6.1 The CoA UPC has taken the first step in this direction by referring to the original case law developed by the Enlarged Board of Appeal of the European Patent Office in the days when the Enlarged Board had no doubt that Article 69 EPC and its protocol were applicable also when assessing patentability (see 3.2 and 4.3.4 above).
6.2 Should the Enlarged Board of Appeal reiterate this position, it seems that the rationale behind the main lines of case law of the boards could still be applied. However, the order of legal examination might change. The resulting practice might be equally suitable to adequately deal with both narrowing and broadening definitions found in the description. A closer look at the reasons behind the development of the case law may render this plausible.
6.2.1 As a granting authority dealing with almost 200 000 patent applications per year, the European Patent Office has a need to apply a robust, harmonised and predictable examination scheme. Furthermore, it is of utmost importance, as laid down in Article 84 EPC, that the claims, defining the matter for which protection is sought, be clear, concise and supported by the description. Thus, using known terms to describe something that does not correspond to the established meaning of such terms is a potential threat to the clarity of a claim.
This may not always be avoidable, as Lord Hoffmann put it in Kirin Amgen Inc v Hoechst Marion Roussel [2004] UKHL 46, [2005] RPC 9, 21 October 2004, in point 34:
"It must be recognised that the patentee is trying to describe something which, at any rate in his opinion, is new; which has not existed before and of which there may be no generally accepted definition. There will be occasions upon which it will be obvious to the skilled man that the patentee must in some respect have departed from conventional use of language [...]"
However, as Lord Hoffmann concluded:
"[...] one would not expect that to happen very often."
If it does happen, one might add, it is in the interest of legal certainty that the alternative meaning of the term be made apparent in the context of the claim itself. It is not so rare that any divergence would not be noticed by both the applicant and the examining division (for instance, because the focus in examining proceedings did not lie on that term) and come to light only during opposition proceedings. Also in these cases, although Article 84 is not directly applicable where the lack of clarity is not caused by an amendment, the boards felt a need not to sweep under the carpet that there is an ordinary meaning of the term and, thus, a certain probability that the skilled person reading the claim will give the term that known meaning. If patent proprietors are not willing to embed that alternative meaning directly in the wording of the claim although they could, they should not profit from alternative understandings based only on information in the description or the drawings.
6.2.2 These may be the reasons (expressed e.g. in T 1628/21, Reasons 1.1.18) for developing both the principle of "the description may only be consulted in case of ambiguities in the claim" (see above at point 3.3) and the principle of "the claims should always be construed on their own merits" (see above at point 3.3.6).
6.2.3 However, it does not seem to be necessary to totally disregard the description (because the claim language contains only terms with known meanings as in the first principle or under all circumstances as in the second principle) to achieve this aim.
To the contrary, also 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 as suggested by Article 69 (1), second sentence and its protocol, the fact that patent proprietors 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.
6.2.4 This approach would be in line with Article 69 EPC and its protocol and would not prevent a board from giving a term in a claim that has a narrower ordinary meaning than the one apparently intended in the context of the description and drawings the broader meaning resulting from the patent specification as a whole.
Thus, the two principles mentioned above in point 6.2.2 not only seem to be unnecessary to prevent applicants or patent proprietors from reading restrictive features into the claim based solely on the description or the drawings, they may also be detrimental to legal certainty when during examination and opposition, based on these principles, the claim would need to be interpreted more narrowly than it will be read after grant, see Professor Franzosi's famous angora cat analogy as referred to in European Central Bank v DSS [2008] EWCA Civ 192, 19 March 2008, point 5.
To disregard all the information in the description and the drawings on how a term used in a claim apparently was meant to be understood might also expose a board to the accusation that the patent is construed with a mind desirous of misunderstanding, this being counter to a central principle of claim construction in the case law of the boards since T 190/99 (Reasons 2.4):
"The skilled person when considering a claim should rule out interpretations which are illogical or which do not make technical sense. He should try, with synthetical propensity i.e. building up rather than tearing down, to arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent (Article 69 EPC). The patent must be construed by a mind willing to understand not a mind desirous of misunderstanding."
6.2.5 However, the aim of the two principles is a reasonable and valuable one that should be preserved both in the interest of legal certainty and the functioning of the European Patent Office as a granting authority (see 6.2.1 above). This seems to be possible as set out above in 6.2.3. However, it might require a reversal of the order of legal examination. First, the meaning of a term is determined in the context of the claims, description and drawings. Second, whether this meaning is sufficiently reflected in the claim is double-checked. If it is found not to be sufficiently reflected in the claim, a broader understanding encompassing all potential understandings derivable from the claim wording might be indicated.
6.3 On this basis, to what extent a definition or the like given in the description may be disregarded would also seem to be a less critical question.
6.3.1 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.
6.3.2 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 this is not done, another fundamental principle of claim interpretation, also common in national decisions, can be applied that any understanding of the claim wording which is technically reasonable should not normally be excluded by the claim (see e.g. T 1628/21, Reasons 1.1.2; BGH, Urt. v. 12.12.2006 - X ZR 131/02 - Schussfädentransport, point 17, Reasons III.4; along similar lines: Samsung Electronics Co. Ltd v Apple Retail UK Ltd & Anor [2013] EWHC 467 (Pat), 7 March 2013, points 67, 68 and 79). 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.
As to T 439/22 and G 1/24, I refer to my comments of July 14. A more recent decision T 367/23 rejects a stay of proceedings in view of G 1/24 and applies the well settled principle set out in CLB I.C.4.1 of giving claims their broadest technically reasonable interpretation. Reason 3.3 reads as follows :
ReplyDelete“3.3 The board is not concerned by the reasoning behind the proceedings in G 1/24. None of the passages in the patent specification cited by the patent proprietor clearly show that the support surface in claim 1 cannot consist of several parts.
The term "the support surface", which is clear in itself, was interpreted by the board only as broadly as is technically reasonable. The specific embodiment of the three support surfaces (5, 6, 7) shown in Figure 1 cannot be used as a basis for a restrictive interpretation of the term "the support surface" in claim 1. In particular, the description lacks a clear teaching that this specific embodiment of the support surfaces is absolutely necessary for the device of claim 1.”