T 1372/24 - Second non-medical method claim (?)

Key points

• Is the preamble of a method claim limiting if it recites a technical effect? I.e., is the method anticipated by a prior art disclosure of the active steps of the method? What if the claim preamble recites a purpose that is not an implicit further limitation of the method?
• Claim 1 at issue: "A method of reducing spotting on dishware during automatic dishwashing, the method comprising the step of subjecting the dishware to a wash liquor comprising [a certain compound]"
• There is also a second non-medical use claim (claim 10). 
• D2 concerns biodegradable complexing agents and their use in products such as dishwashing detergents. The method is the same as in the patent, but D2 does not mention the effect of reduced "spotting". 
• "The board came to the conclusion that, in the present case, novelty is established by the purpose-related features alone.  "
• According to the opponent, "a reduction of spotting was inevitably achieved when dishware was subjected to a wash liquor free of phosphate and dispersant polymer and comprising at least 700 ppm MGDA. Therefore, as set out in T 1931/14 (point 2.2.4 of the Reasons), the stated purpose had no limiting effect on the method claim. 
• See my blog post about T 1931/14. The case is followed in the GL (F-IV, 4.13.3 "On the other hand, where the purpose merely states a technical effect which inevitably arises when carrying out the other remaining steps of the claimed method and is thus inherent in those steps, this technical effect has no limiting effect on the subject-matter of the claim."
• "However, the board does not agree with this for the following reasons. 
• "the board does not follow the approach taken in T 1931/14 "
• The Board observes that under G 2/88, the purpose provides novelty for use claim 10 (this seems correct to me). 
• The Board: "The same applies to method claim 1. The Enlarged Board of Appeal regards use claims and method claims as belonging to the same category, namely claims to a physical activity (G 2/88, point 2.2 of the Reasons). Whether one and the same teaching is expressed as a method of reducing spotting (claim 1) or as a use for the reduction of spotting (claim 10) is merely a question of wording and not of substance. There is therefore no reason why the considerations developed in G 2/88 and G 6/88 for use claims should not also apply to method claim 1."
• The TBA could have cited G 5/83 r.11: "The European Patent Convention, in general, allows both method claims and use claims but whether any activity is claimed as a method of carrying out the activity (setting out a sequence of steps) or as the use of a thing for a stated purpose (the sequence of steps being implied), is, in the opinion of the Enlarged Board, a matter of preference. For the European Patent Office there is no difference of substance. In the context of the present case" (and for that reason,  Art. 53(c) EPC is not escaped by rephrasing a medical method claim as a use claim). 
• G 2/88: The TBA does not cite the part of G 2/88 that deals with novelty of use claims and the limiting effect of a recited purpose for such claims. That part of G 2/88 speaks only of uses of known compounds, not of methods (The key part is in r.9: " In relation to a claim whose wording clearly defines a new use of a known compound, depending upon its particular wording in the context of the remainder of the patent, the proper interpretation of the claim will normally be such that the attaining of a new technical effect which underlies the new use is a technical feature of the claimed invention. ").
•  R. 2.2 of G 2/88, cited by the TBA, in fact states a terminology that the EBA did not adopt in G 2/88 ("There are basically two different types of claim, namely a claim to a physical entity (e.g. product, apparatus) and a claim to a physical activity (e.g. method, process, use). These two basic types of claim are sometimes referred to as the two possible "categories" of claim. In this decision [i.e., G 2/88], however, the word category is used to refer generally to the various different possible classifications of claim. "
• See also CLBA I.C.8.1.3.

EPO 

The link to the decision is provided after the jump.

G 1/25 - Additional rules for claim interpretation

Key points

• The EBA in G 1/25 essentially said that inconsistencies between the description and the claims sometimes must be removed from the application (by amending the description and/or the claims).  The debate on when precisely is lively (see the IPKat blog, the blog of Mr Thomas, and LinkedIn). I have nothing to add to that debate on this weblog for now.
• The debate concerns the interpretation of the order/headnote of G 1/25: "If the claims of a European patent, or patent application, are amended during proceedings before the departments of the EPO, or in appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description, including any drawings, of the patent, or application, and because of that inconsistency Articles 52 to 57, 76(1), 83, 84, 123(2) or 123(3) EPC are not complied with, it is necessary to adapt the description, including any drawings, to the amended claims so as to remove that inconsistency."
• The EBA gave some additional rules for claim interpretation. 
• These additional rules help to apply the instruction of G1/24 that "The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC. The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC". 
• The EBA, in G 1/25: "G 1/24 is not to be understood as establishing a sequential method under which the claim wording is first construed in isolation and the description and drawings are consulted only at a later stage if uncertainty remains." Instead, "claim interpretation is the result of reading the claims, the description and drawings as a unitary process ("holistic approach")."
• Note, the rejected sequential method involves two aspects: using two steps, and carrying out the second step " only ... if uncertainty remains" after the first step. I'm not so sure what is wrong with proceeding step-by-step, provided you always carry out the second step.  
• "The description and drawings may affect the meaning which the skilled person attributes to the claim wording, but they cannot be used to impose on the claim a limitation or expansion for which the claim wording provides no basis."
• "In line with this approach, a person skilled in the art reading the claim in the context of the description and drawings will try to take a definition found in the description at face value. As long as the definition is technically reasonable and complies with the overall teaching of the claims, description and drawings, the skilled person will read terms in the claim in the sense of the definition, taking into account both the broadening and limiting aspects" (approving of T 439/22, points 3.4 and 6)
• "G 1/24 was concerned with claim interpretation when assessing patentability under Articles 52 to 57 EPC. Its reasoning nevertheless identifies general principles of claim interpretation applied by the Boards of Appeal." (including Art. 123(2))
  
  
• Separately: "38. If, for example, a claim has successfully been amended to meet the requirement of non-obviousness in Article 56 EPC, but a statement in the description, including any drawings, expresses a technical teaching reflecting the claim before this amendment, and this statement thus conflicts with the fulfilment of the requirement of non-obviousness, this inconsistency in the description, including in the drawings, has to be removed."
• I don't know why the EBA does not use the term "inventive step". Non-obviousness sounds American to me. 

EPO 

The link to the decision is provided after the jump.

T 0866/24 - Unclear features and their technical effect

Key points

• Claim 1 of auxiliary request 2A differs from claim 1 of the main request in that the following feature has been added at the end (board's labelling and emphasis): 10) "wherein the SPR stops using a maximized proxy provider, at least for a period of time, when at least one of the configured maximum threshold is reached".
• The Board: "The patent description neither mentions the term "maximised proxy provider" nor appears to contain an embodiment having both a "dynamically [configured] utilisation threshold" as well as a "configured maximum threshold". The interaction of these two "thresholds" is thus left to the reader's imagination. ... Since an objection as to lack of clarity cannot be raised in the present case in view of G 3/14, the board has to accept the wording of feature 10) at face value. "
• "If unclear features are added from dependent claims to the independent claims in order to overcome an objection as to lack of inventive step, the onus to show that this objection is credibly overcome typically lies with the proprietor. On balance, in the absence of an objective technical problem which is credibly solved, feature 10) cannot contribute to an inventive step"
• In connection with a further auxiliary request: " According to the perception of this board, there is a recent tendency that dependent claims are less and less examined with respect to clarity in examination proceedings despite the fact that their full examination under Article 84 EPC was not considered "unrealistic" in G 3/14, Reasons 32. Such a full examination is even expressly encouraged by the Enlarged Board of Appeal in G 1/24, Reasons 20 (i.e. highlighting "the importance of the examining division carrying out a high quality examination of whether a claim fulfils the clarity requirements of Article 84 EPC"). The justification for such leniency may be found in the assumption that the protection conferred by a granted patent is defined only by the independent claims. "
• "Where dependent claims are subsequently added to an independent claim in the course of opposition proceedings, opponents are ultimately faced with unclear claim features which, as in the present case, are deemed to have been examined for clarity, although de facto they have not been. Nonetheless, they cannot be objected to under Article 84 EPC due to the conclusions of G 3/14."
• "The Board deems this result unsatisfactory, as an independent claim with unclear features leaves much to the readers' imagination. In addition, unclear features tend to elude a sensible comparison with the respective prior art. On top of that, since opponents may not anticipate with certainty which claim construction will be adopted by the board or a court in infringement proceedings, they may feel obliged to put forward different lines of argumentation for all of the different potential interpretations. "
• "Categorically barring opponents in such cases from raising clarity objections under Article 84 EPC causes undue complexities in the discussion on novelty and inventive step, to the detriment not only of opponents but also of the opposition divisions and the boards of appeal."
• "These unclear formulations of feature 12) do therefore not allow to determine whether the technical effect alleged by the proprietor is indeed achieved."

EPO 

The link to the decision is provided after the jump.

T 0405/24 - G 1/24 and Art. 123(2)

Key points

• The proprietor: "Thus, when applying the conclusions of G 1/24, i.e. in particular that the description and the drawings shall always be "consulted" to interpret a claim, to the present case, the skilled person in the field of data communications would have understood that such "forwarding" was providing a basis for the "routing" action of feature 1.7. In other words, [the proprietor argued that], if multiple technically sensible interpretations of a certain claim feature exist, the one which is supported by the patent description should prevail.
• The Board: "This argument is flawed right from the outset. First, even if the Order of the G 1/24 (related to assessing compliance with Articles 52 to 57 EPC only) could indeed be extrapolated to the assessment of compliance with Article 123(2) EPC, there is no indication in G 1/24 that "consulting" or "referring to" the description and drawings could translate to adopting a claim interpretation which ensures that the disputed feature is originally disclosed and thus necessarily complies with Article 123(2) EPC. 
• Such an approach which inherently assumes that there may be only one "correct" interpretation of a claim feature, namely the one derivable from the original description as its intended meaning (which is apparently advocated e.g. by T 367/20-3.2.03, Reasons 1.3.9 and 1.3.16 in the event of "mutually exclusive" interpretations or by the recent decision T 2048/22-3.3.02, Reasons 1.2.1 and 1.2.2 in the case of claim ambiguities), would not lead to an objective assessment of compliance with Article 123(2) EPC and thus jeopardise legal certainty. It would be tantamount to interpreting a claim feature such that, in the end, virtually no violation of Article 123(2) EPC within the meaning of the well-established "gold standard" could arise. 
• Rather, there is a significant body of case law holding that all technically reasonable interpretations of a disputed claim feature are to be taken into account when assessing compliance with Article 123(2) EPC (see e.g. T 945/20-3.4.02, Reasons 2.4; T 470/21-3.3.05, Reasons 2.1; T 2034/21-3.3.04, Reasons 11; T 193/22-3.3.06, Reasons 3.5)."
• As a comment, adding the number of the Board when citing a decision is not always done, but it can be helpful in specific contexts.
• Secondly, it would be good if there were more unity in the case law.
• Thirdly,  I'm not sure if I fully understand the Board's reasoning that "It would be tantamount to interpreting a claim feature such that, in the end, virtually no violation of Article 123(2) EPC within the meaning of the well-established "gold standard" could arise." 

EPO 

The link to the decision is provided after the jump.

T 0738/23 - What is used in a second medical use claim

Key points

• Claim 1 recites "A [medium chain fatty acid, MCFA ] for use in treating and/or preventing anxiety wherein the MCFA is decanoic acid or octanoic acid and wherein the MCFA is in the form of a medium chain triglyceride (MCT)."
• Claim 3 recites: "A composition comprising a MCFA as defined in any one of claims 1 to 2 for use in treating and/or preventing anxiety."
  
  
• Is claim 3 a dependent claim?
• Claim 1 is novel and inventive. Claim 3 is not novel. 
  
  
• "D3b does not identify which ingredient in go ghrita might be responsible for the anti-anxiety effect and is therefore not relevant [for the examination of inventive step of claim 1] for this reason."
• "Whereas claim 1 relates specifically to decanoic or octanoic acid in the form of MCT for the treatment of anxiety, claim 3 more broadly encompasses any composition comprising the same compounds as in claim 1, potentially along with additional substances, for the same therapeutic application."
•  D21 discloses a study investigating the impact of a diet containing goat milk fat (GMF) on inter alia the anxiety behaviour in rats (see Abstract);" [ follows a discussion of the results presented in D21]
•  D21 discloses the use of a composition comprising inter alia octanoic acid and decanoic acid in the form of triglycerides for the prevention or treatment of anxiety."" 
•  Although D21 does not attribute the anxiolytic effect of the GMF to the octanoic and decanoic acids in the form of MCT, a composition comprising octanoic and decanoic acids in the form of MCT for use in the prevention or treatment of anxiety cannot be regarded as novel because D21 discloses the occurrence of this effect in a composition comprising the same triglycerides."
• "Consequently, the subject-matter of claim 3 is not novel over the disclosure of D21, and the main request does not meet the requirements of Article 54 EPC."
• The interpretation of claim 1 seems to be based on  T 0286/09. The analysis of claim 3 is the same as in T 0378/13.
  
  
  
  
  

EPO 

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

T 2048/22 - G 1/24 for Art. 123(2)

Key points

• "Opponent 1 raised several objections of added subject-matter, as follows. It argued that the application as filed did not contain any basis for two kinds of pores or perforations, namely co-aligned and common pores or perforations as required by claim 1 as granted."
•  "when construing this feature in the light of the description of the patent (see in this respect decision G 1/24 of the Enlarged Board of Appeal, Order), the skilled person would have established directly and unambiguously that the same pores or perforations are intended. "
• " Contrary to opponent 1's view, the board further holds that the term "pores or perforations" in claim 1 as granted creates ambiguity since it is unclear whether it expresses two alternative items or the same item. However, the board concurs with the patent proprietor's view that the skilled person, when construing this term in the light of the description of the patent (see in this respect decision G 1/24 of the Enlarged Board of Appeal, Order), would have directly and unambiguously established that pores and perforations indicate the same entity. This conclusion results for example from reference sign 4: ... "
•  "For these reasons, the board concluded that the amendments to claim 1 of the application as filed contained in claim 1 of the patent as granted do not lead to any added subject-matter. Therefore the ground for opposition pursuant to Article 100(c) EPC does not prejudice maintenance of the patent as granted."

EPO 

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

G 1/24 - Annotated

Key points

• Decision G 1/24 was refreshingly short and analysed in many other social posts and blog posts already. I will add my comments to the text below. 
• The EBA held that: "The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC".
• The EBA did not specify in any way how the information derived from the description must be used when deciding on the scope of the claims. As of yet, the established caselaw seem unaltered that "when taking into account the description of the patent (see e.g. the headnote of G 1/24) - which is not necessarily, and indeed may rarely be, limiting for the claimed subject-matter due to the primacy of the claims which may be broader than particular limited examples and explanations given in the description" (T 161/24).
• Indeed, the EBA derived as the first principle for claim interpretation that "The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC." (and could have very well included this in the headnote as well).

EPO 

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

G 2/13 - On subject-matter and extent of protection

Key points

• "The referring Boards raised the question whether it was of relevance that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under Article 53(b) EPC [].
• The Enlarged Board: "the relevant point of law referred to the Enlarged Board is whether or not the "subject-matter" of a product claim or a product-by-process claim directed to a plant or plant material other than a plant variety is excluded from being patented under Article 53(b) EPC by virtue of the essentially biological nature of the process for making said plant or plant material. Thus, the aspect of the scope of protection conferred by such a claim has no direct impact on the point of law referred."
• "A distinction needs to be made between, on the one hand, the aspects of patentability and, on the other hand, the (protective) effects of European patents or patent applications. The EPC clearly provides for such a clear division, as the requirements for patentability are governed by Articles 52 to 57, 76, 83, 84 and 123 EPC whereas the extent of protection and the rights conferred by European patents or patent applications are specified in Articles 64(2) and 69 EPC in particular."
• "In this respect, reference is made to G 1/98 (supra, Order, point 3, and Reasons, point 4) where the Enlarged Board decided that Article 64(2) EPC is not to be taken into consideration in examining a claim to a process for the production of a plant variety (see also G 2/88, OJ EPO 1990, 93, Reasons, point 2.5)."
• See also points 4 and 5.1 of G2/88, of course. 
• See also Guidelines H-V, 7.1, in connection with Article 123(3): "If a patent is so amended that a claim to a product (a physical entity) is replaced by a claim to the use of this product, the degree of protection is not extended, provided that the use claim in reality defines the use of a particular physical entity to achieve an effect and does not define such a use to produce a product" (because in the latter case, the amended claim could cause the downstream product to fall under the infringing acts of the patent by the effect of Art. 64(2) EPC, see G 2/88 point 5.1 of the reasons). 
• "This conclusion applies mutatis mutandis to the examination of product and product-by-process claims directed to plants or plant products other than plant varieties."
• "As a consequence, whether a product claim [...]  is patentable is to be examined irrespective of the extent of protection that is conferred by it after grant. Its allowability depends upon the fulfilment of the formal and substantive requirements of the Convention for these kinds of claim categories."
• Not sure whether it is helpful, but I visualize it as shown below:

EPO 

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

T 2103/22 - Interpreting 'is' in context

Key points

• "The respondent [opponent] adhered to the conclusion of the opposition division regarding Article 123(2) EPC which was in particular reached considering that: -The wording "is" in the sentence "characterised in that said polyester resin is a blended polyester resin which is a blend of a lowly crystalline polyester resin and a highly crystalline polyester resin at a weight ratio of 90:10 to 10:90" was to be read, in the context of claim 1 of the main request, as "comprises", which meant that any other component different from the ones specifically mentioned in said claim 1 could be present in the blended polyester resin;"
• The Board: "a) However, claim 1 of the main request does not merely defines that "said polyester resin" is a blend of "a lowly crystalline polyester resin" and "a highly crystalline polyester resin" but specifies that "said polyester resin is a blended polyester resin which is a blend of a lowly crystalline polyester resin and a highly crystalline polyester resin ...". In the Board's view, said wording imposes that "said polyester resin" is obtained by blending the lowly and highly crystalline resins as otherwise defined in the claim, and only these resins. In particular, the term "said polyester resin" defines that the resin so defined must be a polyester, which excludes e.g. that other resins may be present as a main component in the blend. In addition, the combination of the term "is a blended polyester resin" directly followed by the term "which is a blend of ... and ... " constitutes a product-by-process formulation that defines that "said polyester resin" should be obtainable by a blending operation and as the result of blending the lowly crystalline resin and the highly crystalline resin, and only these two resins. "
• Indeed, in the Board's view, the use of the word "is" in this context ("is a blended polyester resin which is a blend of ...") leaves no room for the presence of any other components different from the lowly and highly crystalline resins making up "said polyester resin" according to claim 1 of the main request."
•  "b) It is noted that the above conclusion is reached on the basis of the wording of claim 1 only but that conclusion is also congruent with the description of the patent in suit which does not disclose the presence of any other resin(s), in particular polyester resin(s), blended together with the lowly and highly crystalline resins. If the use of optional blending agents is indicated in paragraph 42 of the patent in suit (paragraph 18 of the application as originally filed), this takes place in a further, i.e. subsequent, blending step. Therefore, the above reading of claim 1 of the main request is fully in line with the description of the patent in suit."

EPO 

The link to the decision and an extract of it can be found after the jump.

T 2133/21 - Broadest in context

Key points

•  "According to the legal approach to claim construction, it is a well-established principle laid down by Board of Appeal case law that a non-specific definition in a claim, here "prepolymer", must be given its broadest technical sensible meaning taking into account the context in which it appears, which also includes linguistic considerations."
  
  
• In this case, the proprietor argued for a broad claim interpretation, the opponent for a narrow one because  [short break as a brainteaser here]
  
  
• ...two of the examples in the patent exhibiting a certain technical effect were in accordance with the claim under the proprietor's broad interpretation.
  
  
• The Board agreed with the opponent's claim interpretation,
• finds the objectively solved technical problem to be the provision of an alternative,
• and concludes that the claim, therefore, includes obvious embodiments,
• such that the claimed subject-matter does not involve an inventive step.

EPO 

The link to the decision and an extract of it can be found after the jump.

T 0439/22 - G 1/24 referral - Interpreting the claims using the description

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. 

EPO 

The link to the decision and an extract of it can be found after the jump.

T 0566/20 - Claim interpretation, unwarranted advantages, and requests that would not have been considered

Key points

• " This board endorses the view that a patent proprietor would be awarded an unwarranted advantage if it were allowed to restrict the claimed subject-matter by discarding at will technically reasonable interpretations in view of the description (see T 1127/16, point 2.6.1 of the Reasons and T 169/20, point 1.3.3 of the Reasons)."
• "Therefore, the fact that the description and drawings support one interpretation of an ambiguous feature is not sufficient for other interpretations of the ambiguous feature that are technically reasonable in the context of the claim to be discarded. "
• The OD maintained the patent as granted, i.e. rejected the opposition.
• The Board finds claim 1 as granted to lack basis in the application as filed.
• The proprietor filed AR-1 with its reply to the appeal.
• "In the board's view, auxiliary request 1 should have been submitted in the proceedings leading to the decision under appeal."
• As a comment: why? And how would it serve the appeal? The OD would never have considered the auxiliary request as the OD found the claims as granted to be allowable. Moreover, any debate between the parties about the amendments in the auxiliary request would have to be presented again in appeal (no simple referencing to the submissions before the OD).
• "A patent proprietor cannot permissibly postpone the filing of requests that should have been filed at first instance simply because it considered the opponent's objections to be unfounded. A patent proprietor should be aware that a board of appeal may agree with the objections raised by an opponent. The patent proprietor takes a risk in refraining from filing claim requests during the first-instance proceedings in the belief that the objections raised are unfounded, only to file those requests during the appeal proceedings."
• Again, how does this rule serve the purpose of the appeal procedure, namely the judicial review of a first-instance decision?
• 
  
• The Board does not admit the request.
• 
  

EPO 

The link to the decision and an extract of it can be found after the jump.

T2030/20 - Using the description to interpret the claims

Key points

• The Board, in machine translation: "According to established case law, the terms used in a patent are to be given the meaning customary in the relevant prior art, unless a special meaning is given to them in the description of the patent (see Case Law of the Boards of Appeal, 10th edition 2022, Chapter II.A.6.3.3; see also T 1473/19, point 3.13 of the Reasons). If the latter is the case, this may also lead to a claim feature being given a broader meaning in the light of the description than the meaning customary in the relevant prior art. This is the case in the present case."
• the patent gives the term "immersion tube [Tauchrohr] " in the description a broader meaning that goes beyond the actual meaning of the word, according to which a dip tube can only protrude into the reaction chamber, i.e. can end anywhere within the reaction chamber above the liquid level. This is particularly clear from the following passages"
• "Therefore, according to the disclosure in paragraphs [0045], [0060], [0075] and [0086], the patent leaves no doubt that a dip tube [Tauchrohr] according to claim 1 can preferably be dipped into the culture broth, but also represents a dip tube within the meaning of the patent if the tube only protrudes into the reaction chamber."
• There is therefore no reason to deviate from the view of the opposition division that the subject-matter of claim 1 as granted is not novel over the disclosure in E1.
• An auxiliary request additionally specifies a diameter.
• "In the board's view, the phrase "a diameter" must be understood in the overall context of the claim and the patent specification (T 367/20, Reasons 1.3.2) as a measure of the extension of the head plate, i.e. as a measure of its overall diameter."
• There is also a separate attack based on public prior use.
• " The UniVessel single-use bioreactor described in Annexes 2 to 6 is, according to point 3.1 of the grounds of the contested decision, a single-use bioreactor in which [features] "
• "it is disputed whether the term "integral" in claim 1 can be interpreted broadly to include adhesive joints."
• "The head plate of the UniVessel bioreactor therefore does not meet the requirement of a one-piece design according to claim 1 in the usual technical sense. This understanding of the term "integral" is supported by the description of the patent."
• "The Board therefore concludes that the claimed subject-matter according to auxiliary request 4 is not obvious on the basis of the cited prior art. The appeal is therefore successful within the scope of auxiliary request 4."

EPO 

You can find the link to the decision and an extract of it after the jump.

T 1208/21 - Claim interpretation

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.

T 1203/20 - Using the description to broaden the claim - for validity

Key points

•  This is an appeal against a refusal. The application is about a system for post (physical posts) with compartments, e.g. lockers.
• "  According to the appellant, the definition "the recognition means provided at one or more compartments (8) and adapted to recognise if a package is deposited in a compartment" in the claim indicated that the recognition means of the claimed system were able to determine whether a package was actually deposited inside the compartment."
• "In contrast to that, the system of D1 used a sensor to determine when the door of the compartment was opened and closed in order to determine whether there was anything deposited inside the compartment. This determination, however, was based only on an assumption about the deposit of a package inside the compartment. It was possible for example that a user opened and closed the door of the compartment without depositing anything inside."
• The Board: "according to paragraph [0019] of the published application, the recognition means is not particularly limited to any specific component or software configuration. As described in this paragraph, the recognition means can be a sensor adapted to detect the opening of the door to the compartment, or the actuation of actuation means controlling the door. The recognition means may alternatively include a light sensor located in the compartment such that, when a light beam is broken by the presence of a package, the recognition means detects that a package is deposited therein. "
• "as the above-cited paragraph describes, the application does not limit the recognition means to any specific implementation. On the contrary, it is also envisaged that the recognition means can be a compartment door sensor as in the system of D1."
• The claim has some other differences with D1. Turning to inventive step: "the claimed system does not bill the users for their reservation(s) [as in D1] and thus it sets time limits to the reservation of the compartments so that users reserve them only for as long as they need them. The system monitors the time and when the reservation time (period) ends, it renders the compartments available for reservation (unless a package is detected inside the compartment)."
• "the claimed system differs from D1 only in the way the compartments and their reservations are managed. This is an administrative/business scheme defined by the manager of the post (locker) system."
• The claim is held to be obvious. 

EPO 

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

T 1886/21 - Formed; permits other elements

Key points

• "the appellant-opponent 1 has argued that the patent does not [sufficiently] disclose [under Art.100(b) EPC] an embodiment of the invention that implements the secondary drive mechanism in the way required by the penultimate claim feature, namely it being: formed by a stationary secondary guide track associated with the periphery of the rotatable carousel, and a follower wheel being kept in a lifted position by the secondary guide track"
•  "Before looking in detail at the embodiments, the Board notes that the usual meaning of the word form (see Oxford English dictionary on-line (OED)) is: To construct, frame; to make, bring into existence, produce. Const. from, of, out of (the material or elements). Thus the word form and its cognate formed used in this claim feature define elements of which the secondary drive mechanism is made or constructed but implies no exclusivity to those elements. In other words, contrary to how the appellant-opponent 1 has argued, the claim does not exclude that the secondary drive mechanism comprises more elements than a stationary secondary guide track and a follower wheel."
• " Bearing in mind that the claim does not require the secondary drive mechanism to be exclusively comprised of a secondary guide track and a follower wheel, the fact that the embodiment also includes a torsion spring does not mean that the skilled person cannot carry out the invention as the appellant-opponent has suggested. "
• "For these reasons, the Board considers that the invention according to claim 1 is sufficiently disclosed, Article 83 EPC. "

EPO 

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

T 2548/19 - The opportunity of cutting down the claims

Key points

• "3. According to the established case law, the skilled person should try, in a constructive way, to arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent (Case Law of the Boards of Appeal, 10th edition, 2022, II.A.6.1)."
• "6. It has to be noted, however, that whereas in the embodiment the control units are embodied as control "cards", there is no such limitation in claim 1. Also, whereas in the embodiment there is a control card for each pair of independent capstans 14, there is no such limitation in claim 1. According to established case law, for the purposes of judging novelty and inventive step, Article 69 EPC and its Protocol cannot be relied on to read into a claim an implicit restrictive feature that is not suggested by the explicit wording of the claim. In proceedings before the EPO, where the patentee has the opportunity of cutting down the claims to accord with stricter limits given in the description, the scope of a claim should not be cut down by implying into it features which appear only in the description, as this would deprive claims of their intended function (Case Law, II.A.6.3.4)."
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• EPO 

The link to the decision is provided after the jump.

T 1628/21 - Claim interpretation

Key points

• "The question ... arises as to the extent to which the description and drawings can be used to interpret the claims. Neither Article 69 nor its Protocol explicitly addresses this topic. Nevertheless, the principle of primacy of the claims seems to exclude the use of the description and drawings for limiting the claims if an interpretation of the claim in the light of common general knowledge already leads to a technically meaningful result. Similarly, the principle, established by case law, according to which "limiting features which are only present in the description and not in the claim cannot be read into a patent claim" is also fully compatible with Article 69 EPC and Article 1 of the Protocol (cf. T 1473/19, Reasons 3.16.1)."
• "the description itself is of course not without any function when considering the patent. When referring to the description, the reader is informed inter alia of the technology involved and the background used by the skilled person in understanding the patent, as well as prescribing particular embodiments of interest. The claims are thus not to be seen in a pure vacuum, but, having regard to the description, in the context of the area of technology addressed by the patent. Nevertheless the description should not normally be used to derive possible limitations to claim scope; it is the purpose of the claims and indeed the wording of the claims themselves which define a certain scope and thus the protection sought. It may be that the reader is presented with specific definitions in the description in cases where terminology in the claims is e.g. unusual or where special meanings are attributed. However such definitions, if relevant for validity, should normally be included in the claims, for example where the normal meaning of a term in the claim is no longer intended."
• "How such a definition might be presented in the description and whether it might have a special significance for the scope of the claim in a particular case, is however of no relevance in the case at hand since there is no such definition of "engaged with" in the description. Instead, in the paragraphs mentioned by the respondent, the references are far more general."
• "as discussed during oral proceedings before the Board, none of the passages of the description forms a definition of what "engaged with" must be understood to mean. Instead, the respondent [proprietor] attempts to rely on these "disclaimer-like" statements in the description to try to limit the claims, without however introducing any restricting definition or disclaimer into the claims themselves."
• Claim 1 at issue is held to be not novel.
• The case is remitted for auxiliary request 1. 
• "Although the Board notes that the patent expires in 2028 at the latest, this fact is not of itself a sufficient reason to override the parties' requests in the present case, noting that possibilities for requesting accelerated prosecution exist. Issues concerning the format of the claim, currently in an (incorrect) two-part form, may also be addressed by the parties."

EPO 

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

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.
• 
  
•  

EPO 

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

T 0169/20 - Claim interpretation - using the description only exceptionally

Key points

•  Recently T 1473/19 challenged the prevailing view in the case law and proposed that Art.69 is to be used for claim interpretation, not only for Art. 123(3) (as is conventional) but also for Art. 123(2) and Art.54 etc. (see this post)
• That Board, in that case, held that "Article 69 EPC in conjunction with Article 1 of the Protocol thereto can and should be relied on when interpreting claims and determining the claimed subject-matter in proceedings before the EPO, including for the purpose of assessing compliance with Article 123(2) EPC"
• "The [present] board disagrees with the findings in the above decisions [i.e. T 1473/19 ] for the following reasons:"
• "The board does also not agree in that Article 69 EPC provides the only guideline for interpretation of the claims in the EPC and, as explained in the next paragraphs, considers that the provisions in Article 84 and Rules 42 and 43 EPC set out the structure of the information in the patent or patent application to elucidate the subject-matter of the invention and thus provide guidance on how to interpret the claims for the purpose of assessing patentability."
• "the provisions of Article 69(1) EPC do not apply to the interpretation of the claims for the purpose of assessing patentability but, in view of its explicit wording, to the determination of the "extent of the protection" of the patent or patent application, i.e. the object to be examined under Article 123(3) EPC or in infringement proceedings. By contrast, the wording of Articles 54 and 56 EPC expressly states that the object to be examined for assessing novelty or inventive step is the "invention"."
• This implies that the scope of the claims is different for validity and infringement.
• This also raises the question of what Art. 52, 54 and 56 mean with the "invention".
• "According to Article 84 EPC, the claims shall define the matter for which protection is sought, which in view of Rule 43(1) EPC corresponds to the technical features of the "invention". It is thus apparent that the object to be assessed under patentability corresponds to the technical features in the claims. "
• "as concluded in G 2/98 (Reasons 2 and 9), the term "invention" in the EPC should be narrowly construed as the combination of technical features in the claims. As stated in T 1845/14 (Reasons 9.6), this construction of the term "invention" implies that the subject-matter to be assessed under Articles 83, 87, 54 or 56 EPC should not be interpreted restrictively or differently from what a skilled person would understand when reading the claims on the basis of technical aspects wich are part of the description but not implicitly or explicitly defined in the claims."
• The Board, turning to the role of the description: "If the wording of a claim is unclear for a person skilled in the art, the description may fulfil its supporting function by illustrating the meaning of the unclear feature/s. Conversely, when the wording of a claim is clear for the skilled person, the supporting role from the description is neither necessary nor justified. In addition, if the invention according to the description is narrower or different from that in the claim, the supporting role of the description under Article 84 EPC cannot be fulfilled, since an interpretation on this basis would not represent an illustration of the subject-matter of the claim with the aid or support of the description but a restriction or modification of the scope of the invention."
• "The board thus considers that the condition "supported by the description" in Article 84 EPC provides a legal basis for determining how and when claims should be interpreted in the light of the description. "
• "In particular, the wording of this provision explicitly limits the role of the description to an aid for understanding the subject-matter to be assessed under patentability, while implicitly confining this role to the exceptional cases where such support is both necessary and possible. The support of the description should be resorted to only in case of need, since it is the wording of the claims which defines the matter for which protection is sought (i.e. the invention) and it would not be justified to seek help in understanding a subject-matter which is in itself clear. Moreover, this support is only possible to the extent that there is a correspondence between the description and the subject matter of the claimed invention, so that the technical explanations in the description can serve to illustrate the meaning of the claimed features and not to limit or modify their scope with respect to what a person skilled in the art would understand when reading them."

• The Board also notes that: "While [Article 84 EPC, 2nd sentence]  is primarily applied to require that the claims be brought in line with the technical teachings of the description (i.e. due to an essential feature missing from the claim), or that the description be adapted to disclose the same invention as the claims, these issues ultimately seek to eliminate inconsistencies in order to enable the supporting function of the description as an aid for understanding the claims."

EPO 

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