Boeing's comma drama: Commas and taking the description into account when construing a claim (T 1127/16)
It is not only the choice of words that matter in patent claim interpretation. As the recent decision in T 1127/16 shows, grammar can be similarly important. In this decision, the lack of a comma in a claim led to a successful added matter objection against Boeing's patent EP1798872. Caught in the inescapable trap of added matter that cannot be deleted without unallowably broadening the claim, the patent was found invalid on appeal. However, aside from the obvious lesson to be scrupulous in your claim drafting, the decision in T 1127/16 is also worth a read for the Board of Appeal's comments on the primacy of the claims over the description for determining the scope of protection, as was also recently discussed in the High Court's application of the doctrine of equivalents (IPKat).
The importance of commas
The patent in question (EP1798872) in T 1127/16 related to a method of handling communications between a ground-based computer and an aircraft. The granted claim specified a process for selecting a preferred transmission network for the communication. The absence of a comma in one of the features meant that the step could be interpreted two ways. The ambiguity caused by the lack of comma is a classic linguistic peculiarity of English grammar (and also recently ignited yet further Brexit-related debate). In this case, a comma was needed to delineate a subordinate clause, a related but not identical issue to the use of Oxford commas.
In the case in question in T 1127/16, one feature of the method claim comprised the provision of a list. The subsequent feature in the claim was not separated from the list step by a comma. The subsequent feature could thus be construed as either forming part of the provided list, or as forming a second independent step. Given the absence of the comma, the Opposition Division (OD) construed the claim as requiring the features to be run together. Since the OD found no disclosure of this combined feature in the application as filed, the patent was found invalid for added matter (Article 123(2) EPC).
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| The IPKat hastily flying away from the comma drama at the EPO |
The Board noted that English does not have clear rules governing the use of commas. However, the Board determined that if the patentee had intended the relevant features to be separated, a comma would have been necessary in order to "even suggest" the separation to the reader (r. 2.6.4).
The Board of Appeal further found that a skilled person could not be expected to "speculate as to other possible meanings which might result from inserting commas at various places", as this would place undue burden on the reader. Looking solely at the claim language, therefore, the Board of Appeal agreed with the OD that the claim should be construed as requiring the features to be run together.
The claims, not the description, define the scope of protection
On appeal, the patentee argued that a skilled person reading the claim would consult the description in order to resolve the linguistic ambiguity in the claim. In doing so, the patentee argued, it would become clear to the skilled person that the method comprised identifying the most preferred network available as a separate step.
The Board of Appeal was not convinced by the patentee's arguments. The Board noted the often quoted T 190/99, according to which a "patent must be construed by a mind willing to understand not a mind desirous of misunderstanding" (Case Law of the Boards of Appeal II.A.6.1). However, the Board did not consider the case law as requiring consultation of the description as soon as any ambiguous feature occurs in the claim (r. 2.6.1):
"According to such a logic, an applicant (patent proprietor) could then arguably dispense with providing a clear and unambiguous formulation of claim features, e.g. during the grant proceedings, in order to be able to fall back on a more description-based interpretation at will during a subsequent opposition proceedings"
The Board of Appeal thus confirmed that a claim should essentially be read and interpreted on its own merits:
"... the description cannot be used to give a different meaning to a claim feature which in itself imparts a clear, credible technical teaching to the skilled reader [...] Otherwise third parties could not rely on what a claim actually states".
In the case in question, the Board of Appeal thus considered the pertinent question as being whether the claimed feature was meaningful and plausible from a technical point of view. In finding no technical reason for the claimed feature not to make technical sense, the Board of Appeal agreed with the OD that the claims was invalid for added matter (Article 123(2) EPC). The Board further rejected auxiliary requests in which the claims were amended to remove the possibility of the unwanted interpretation. However, these requests were rejected as broadening amendments, and thus not permitted post-grant (the "inescapable-trap").
Final thoughts
The contents of the description can be influential in questions of infringement. In the recent High Court case Illumina v MGI ([2021] EWHC 57 (Pat)), Mr Justice Birss (as he then was) found lack of infringement by equivalence in view of a strict definition of a term in the claim provided in the description (IPKat). Mr Justice Birss observed in Illumina v MGI that a limiting definition of a feature in the description, limits the scope of the claim. This observation appears at odds with the EPO case law, according to which the claims should be read on their own merits. The decision of the Board in T 1127/16 makes it clear that the description cannot be used to give a different meaning to claim language that is prima facie clear. The Board's statement that "otherwise third parties could not rely on what a claim actually states" is one of the main objections lodged against the broad doctrine of equivalents adopted by UK judges.
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This seems at odds with Art. 69 EPC. Is the board now saying we can't interpret claims using the description?!
ReplyDeleteA detailed review of the case law suggests to me a reasonably prevalent line of thought at the EPO Boards that the description (and Article 69 EPC) should not be used to "rescue" a claim which has a reasonable interpretation which is broader than advocated by the patentee, i.e. should not allow the patentee to benefit from a narrower definition provided in the description. If issues of claim breadth are detrimental to the validity of the patent, the proper solution in most cases would be to amend the claim to include the narrower definition... provided that the right support under Art 123 can be found, of course.
DeleteHaving said that, this approach hasn't always been consistently adopted by the Boards. If one searches for cases citing Article 69 EPC it also seems that some Boards have historically struggled to understand that the rationale underlying Article 69 is not merely limited to issues of infringement. As soon as article 69 is mentioned, the blinkers come down and they say, effectively, "scope of protection is a matter for infringement, which is not our job to determine," overlooking that claim scope, and the meaning of terms within the claims, can also of course be highly relevant for determining whether or not a particular claim feature is or is not disclosed in the prior art.
Is this a topic which is ripe for another EBoA referral?
The decision is to be applauded as it reminds of some fundamentals in matters of correspondence between the claims and the description.
ReplyDeleteIf in a claim it is question of a ventilator, it is irrelevant that the applicant/proprietor defines its ventilator as having a heating spiral in front in the description. A simple ventilator will be novelty destroying.
In T 1067/09 the presence of a comma led to an objection under Art 123(2) when it was omitted in the context of an amendment.
The description stated: "the sealing elements may be substantially planar, rectangular elements, substantially spherical, for example beads, or irregularly shaped“. After amendment the claim read "selecting sealing elements to be substantially planar", or "selecting substantially planar sealing elements ".
For the BA there were two types of sealing elements, planar and 3D. For the BA, The skilled person would therefore consider the expression "substantially planar, rectangular elements" meaning that the planar sealing elements could only be rectangular.
There is a long line of case law according to which when a claim is clear as such, there is no need to take into account the description, be it for added matter, e.g. T 30/17, extension of protection, e.g. T 1778/17 or clarity, e.g. T 515/19 or T 21/16.
The position of Mr Justice Birss in [2021] EWHC 57 (Pat)) is clearly at odds with the EPO case law. One cannot give a claim a different meaning depending of what is stated in the description. The claim has to be taken as it is written.
When I remember the long discussions opposing the reminder in the latest Guidelines about the mandatory adaptation of the description, I cannot but agree with the reminder. It is clearly to avoid such interpretations like that of Mr Justice Birss.
I wonder what would have happened in Actavis v Lilly if the description had included a definition of "sodium". Personally, I would say the term was crystal clear and provides legal certainty (a point Sumption didn't pay much attention to), but I am a chemist.
ReplyDeleteWhat if Lilly defined sodium in the description as "any alkali metal"? What definition is used for assessing validity/infringement?
Art. 69 EPC does state the description "shall" be used to interpret the claims, so Birss can't be at odds.
For another example of the power of a comma or lack of comma in legal outcome, see East West Street.
ReplyDeleteSorry, attentive observer, the decision while admittingly in line with the Case Law ia a disgrace for the EPO. A verbatim interpretation of claims as regularly performed by the Board of Appeal is simply add odds with legal interpretation. Mr. Justice Birss was very right not following the Boards of Appeal.
ReplyDeleteNot sure where Attentive Observer gets the idea Birss was wrong, given that he was looking at the scope of infringement, equivalents in particular, and the relevant provisions of the EPC for that are Art 69 EPC and the Protocol. Art 69(1) specifically says 'Nevertheless, the description and drawings shall be used to interpret the claims', not may, but shall. Furthermore, the Protocol, itself an integral part of the EPC says that 'Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims.' On the face of it, Mr Justice Birss was following the statute provided by the legislator.
ReplyDeleteArt 123(2) and Art 69 are two different countries. Whereas Mr Justice Birss is under the thumb of the "over-riding objective" of the CPR to dispose of cases justly, the Boards of Appeal are under no such burden. Instead, they are free to discipline Applicants, using Art 123(2), to draft perfectly and then prosecute without departure from the verbatim text as filed. The consequences of an injudicious prosecution amendment are hugely more severe than those of writing a less than perfect set of claims for the original filing.
ReplyDeleteOne might think that the EPO is getting the balance wrong but, hey, if it improves drafting standards world-wide, that is not a bad thing. And the EPO is not alone. As I understand it, the Chinese have the same unforgiving view of what constitutes new matter. So, the Americans will come round in the end even if, as of now, they think the EPO line on added matter is absurd.
Lord Mansfield it was, I think, perhaps 250 years ago, who counselled that it is better to have a legal Rule that is clear than one that is ultimately fairer but suffers from the disadvantage that it is not so clear. Legal certainty was, for him, the over-riding objective. For the EPO as well, it seems.
I'm not convinced the overriding objective of the CPR has anything to do with it. It requires judges to manage cases procedurally to do justice (and at proportionate cost). It does not require or even allow judges to interpret the law in a different way. It is not like the Human Rights Act which sets Convention rights at a level above other laws, requiring interpretation where possible to bend the law to fit the Convention rights.
DeleteThe reasons for the approach being different are no doubt numerous and probably have a lot to do with different legal traditions and histories. I also wonder if the fact that national courts, not just English ones, deal with cases of all kinds, has something to do with it. IP, in particular patents, is just one of many important things the courts deal with every day. There is perhaps an element of living in an ivory tower when patents is all there is, as at the EPO.
Thanks, Freddy, for that. What I had in mind is that the courts in England routinely have to judge not also validity but also infringement, in the same trial. They see both sides of the dispute and it makes them more thoughtful about how best to decide the case justly.
DeleteThen there is their experience before rising to the bench. Decades of plotting in smoke-filled rooms with a wily patent owner, and just as many years plotting, in other cases, with a wily accused infringer. That experience helps them to decide the dispute with justice. Who at the EPO has any such experience?
The differences between the UK courts and the EPO have nothing to do with the overriding objective of the CPR. Catnic reminded us to not to indulge in meticulous verbal analysis decades ago. The UK courts do not read a loose term in a contract and interpret the contract in a way which renders it commercially worthless to both parties to the contract. Whether you like the decision or hate it, the Supreme Court was clear in Lilly v Actavis that a patent is just another legal document and they made a point of referring to Wood v Capita, which was a contract case.
DeleteI'm coming back to this thread with more thoughts because the Decision troubles me. I want the case law of the Boards of Appeal to enjoy world-wide respect and I'm not sure that this Decision will receive respect. It seems to me careless, even perverse, to attempt to construe a claim without first reading through the specification in order to set the definition of the invention (in the claim) in the context of the description of the self-same invention in the specification of the patent. After all, the EPO itself insists that the description shall set the claimed invention in the context of the most relevant prior art. Why that insistence, that obsession, to include in the description an accurate summary of the closest art, if not to help the one who has to construe the claims? Presumably the Boards accept the overall truth that a patent specification is not a collection of different documents but, rather a single coherent document to be considered only as a single whole.
ReplyDeleteAccordingly, it would also seem to me right that the "mind willing to understand", contrary to a mind desirous of misunderstanding the claim, is a mind that, in its endeavour to arrive at an accurate understanding, would want first to read the specification before addressing the claim and before trying to divine what that claim means. You see, once you take into account what you have understood from the description, you will be much more inclined to find a meaning that reconciles what the claim defines as the invention with what the description describes as the invention, and less inclined wilfully to fix upon a meaning of the claim that results in the invalidation of the claim under Art 123(2) EPC.
As for the notorious "mind willing to understand" notion, I never guessed that it would be used to abort any reflective thinking about how to achieve harmony between the claim and the description. Taking up the B publication, and reading nothing but claim 1, finding it makes technical sense, willing oneself on to derive a credible understanding of it, and then abruptly ending there, without even a glance at the description, strikes me as NOT the proper way to arrive at a conclusion what the claim means, not what readers of patents do in the real world, and not what a mind desirous of understanding would do.
I( look forward to other Decisions, from other Boards, that temper and trim this decision, a touch on the tiller to put the jurisprudence of the BA's back on a track that commands respect from patent practitioners all around the world.
Sorry, Attentive, but to me the Board here was like the proverbial man with a hammer, for whom everything looks like a nail, the hammer here being of course Art 123(2) EPC.
I agree. Have you shared this decision on Patently-O yet? Love to the see the reactions.
DeleteIf we never have recourse to the description, that would make need for full translations during EP validation obsolete - is that the idea?
He who has not read a claim, not understood what it was waffling about, then read the description to try and understand, please raise your hand.
Share with Patently-O. No way. It would leave its readers fully convinced that the EPO is a mad-house and that's the last thing I want to happen.
DeleteThe decision might look odd at a glance, but I maintain that it is correct. That some people consider it as a disgrace is a point of view I do not share.
ReplyDeleteIn my opinion the BA is right when in point 2.6.1 it reminds that: an applicant (patent proprietor) could [then] arguably dispense with providing a clear and unambiguous formulation of claim features, e.g. during the grant proceedings, in order to be able to fall back on a more description-based interpretation at will during a subsequent opposition proceedings. This would however not be compliant with the main purpose of the provisions of Article 123(2) and (3) EPC, which is "to create a fair balance between the interests of applicants and patentees, on the one hand, and competitors and other third parties on the other".
Referring to the description is an ultima ratio and should be an exception rather than the rule. And I still do not agree with Mr Justice Birss as what he is doing is to ignore the claim and to look at the description. This is valid in both ways, which is when given to a claim a broader definition as in the description.
When reading the three linguistic versions of Art 69, the English text is the most mandatory. When reading the French text it is said that the description can serve to interpret the claim, but not to give it a different meaning. The German is somehow in between, but nearer to the French than to the English version.
Why was there such an outcry when applicants/proprietors were reminded in the last edition of the Guidelines that the description is to be brought in accordance with the claims? It is to avoid situations in which the description can be taken as disclosing something which is not in the claims and vice versa.
Talking about Actavis/Lilly: it is the non-adaptation of the description which allowed later Lilly to draw much more from the patent that what its contribution to the art was at filing. The only example properly disclosed was that of pemetrexed disodium. No other salt has ever been envisaged. The then applicant made no attempt to convince the examiner, for example by experimental data (cf. STIN) that it was not limited to disodium. He even attempted to claim pemetrexed in general, and the examiner rightly considered that it was not originally disclosed and raised an objection under Art 123(2). This was criticised by Lord Neuberger in its famous decision, but the examiner had no choice! To me the critic was deeply unfair.
In reply to the objection under Art 123(2) the applicant limited its claim to what he had actually disclosed, but staunchly refused to correctly amend the description. The examiner gave up, which is understandable. It is only later that the applicant came up with the broad interpretation he never considered during examination.
How on Earth is it possible to write a FTO opinion after Actavis/Lilly?
If "an applicant (patent proprietor) could [then] arguably dispense with providing a clear and unambiguous formulation of claim features, e.g. during the grant proceedings, in order to be able to fall back on a more description-based interpretation" does this not suggest that the Boards of Appeal would have no faith in the Examining Division to enforce Article 84 EPC properly? After all, Art 84 is there to ensure that claim features are, as far as possible, "clear and unambiguous"...
DeleteMore seriously, it is extremely rare that any claim, or claim feature, is truly "clear and unambiguous". An interpretation which is linguistically correct and even technically meaningful, yet departs completely from what the Applicant or their attorney envisaged or even intended, can almost always be found. The way that we make sense of claims is through context. Is it not a purpose of the description to provide the context in which the claims should be understood?
Can I put it this way: the reason for the EPO's insistence that the description be in strict conformity with the claims is that when the reader of the patent and claim 1 turns to the description for the context in which to construe the claim, she finds nothing contradictory. In Ordnung, I say, laudable.
DeleteThe reason for insisting on such strict conformity is NOT to render superfluous the task of reading the claim in the context of the description. It is downright irresponsible, and an affront to established legal practice throughout the EPC Contracting States, to pursue as an objective the idea that a claim must be construed as a freestanding document untethered from the guiding hand of the description.
I agree, MaxDrei. The EPO seems to be taking the literalist approach to claim interpretation which is expressly prohibited in the Protocol to Article 69.
DeleteIn making a few observations on this, I should just say that I have only read the decision itself and I have not read the patent.
ReplyDeleteThe Board make much of not consulting the description and drawings to interpret the claim since the interpretation of feature (g) adopted by the OD provides a credible technical teaching. Feature (g) contains three sub-features:
(g1) "evaluating a preference to determine a preferred
network of the plurality of transmission
networks,"
(g2) "wherein the preference comprises a preference
list identifying a selection of the plurality of
broadcast networks in order of preference"
(g3) "and identifying the highest in preference of the
plurality of broadcast networks in the preference
list that is available".
The Board maintained that in the absence of a comma between them, features (g2) and (g3) should be read together and since combining them provides a credible teaching, the description and drawings should not be consulted to interpret the meaning of feature (g). Here, the Board's reasoning seems linguistically bizarre. It says that the presence of the word 'identifying' in (g2) and (g3) makes it natural to associate the second identifying in (g3) with the first occurrence of identifying in (g2). However, since (g2) specifies a list identifying a broadcast networks in order of preference, it is then tautologous to talking of the list identifying the highest in preference; surely a list indicating an order of preference by definition is going to identify the 'highest in preference'. To me the credible reading of that feature (g), albeit not elegantly worded, is to combine (g1) and (g3) and regard (g2) as effectively a bracketed explanation of what the 'preference' of (g1) is (note the wherein which points to this). I would have thought this a more credible interpretation for the person trying to come up with a logical interpretation that makes technical sense per T 190/99, unless, of course, the description teaches something different [cough].
It is also quite ironic to see the Board say:
This would however not be compliant with the main purpose of the provisions of Article 123(2) and (3) EPC, which is "to create a fair balance between the interests of applicants and patentees, on the one hand, and competitors and other third parties on the other" (cf. G 1/93, Reasons 8).
Ironic, given that Art 123 EPC says nothing to this effect, yet of course the Protocol to Art 69 EPC does mention something like that [double cough].
As to the "purpose" of Art 123 EPC being (according to the EBA in G1/93) to deliver a "fair balance" between the public and patent owners, I'm astonished. I see that, here, Attentive quotes this utterance with approval but still I'm sceptical. I don't see any "balance". Instead, I see as Art 123(2) EPC as essential to the implementation of a "First to File" patent system, and Art 123(3) EPC as essential to achieve an acceptable degree of legal certainty for everybody. Without Art 123 EPC, the system descends into chaos that benefits neither the patent owner nor the public.
ReplyDeleteAlthough this case is one on Art 123, I can't help thinking that it is infected with unfortunate thinking, endemic at the EPO, about what constitutes Art 84 EPC "clarity". My opinion, uttered now for many years, is that in the context of verbal definitions of inventive concepts, there is no such thing as 100% clarity. It is trite to assert that only when one knows the context can one ascribe a meaning to any given word. The same applies to any given claim. The context comes from the description and drawings. Is the EPO's idea of "clarity" is "able to be construed correctly, even when stripped of all context"? Heaven help us if it is. But judging by some of the Communications I'm getting these days from Exam Divisions, it does seem to me that this might already be the case.
Mein lieber Max,
DeleteAre you really frequenting the Missouri speakeasy just to proselityse? Meine Güte!
This is by no means the first time a patent got canned at the EPO from a deadly prick by a stray comma, or a galopping semicolon infection. You will find more examples in the DG3 database. And there are the refusals and revocations that weren't appealed. I know of one.
The present BoA decision shouldn't shock your fan club stateside, as US courts are sticklers for punctuation too.
Daniel Victor: "Oxford Comma Dispute Is Settled as Maine Drivers Get $5 Million", The New York Times, 9 February 2018
Looking more specifically at patent matters:
James Yang: "Patent Drafting Tip: A comma affects meaning of items in list, IP Watchdog, 6 March 2017
The discussion begins with the ambiguity of certain dispositions of the AIA, but then offers some advice to drafters:
The words that we, as patent attorneys use are important and ever more so in a patent application. For this reasons, it would be prudent to be aware that utilizing a comma can change the meaning of a sentence or phrase. Patent counsel should be aware that the presence or absence of the comma in a list may affect the way that the list is interpreted and make a conscious decision to either add or remove the comma based on the desired end result intended by the patent drafter. Don’t let the comma have an unintended consequence.
PatentlyO also reported a case involving punctuation.
Dennis Crouch, Judge Plager: Construe Ambiguous Terms Against the Drafter 6 August 2013:
3M makes an interesting argument to be sure. But the argument creates its own grammatical problems. For example, there is no comma between “continuous” and “microtextured.” And the Chicago Manual of Style also tells us that adjectives that separately modify a noun are generally separated by a comma, unless of course the second adjective is a unit with the noun being modified (which would favor Tredegar’s construction). The Chicago Manual of Style § 6.33 (16th ed. 2010).
3M cited the CMoS as an authority, but one problem is that there are several competing sources with different views.
Style manuals are also essentially destined to authors and editors producing books or periodicals, and not necessarily of legal documents. I am quite sure that none approve of the run-on, repetitive, expansive, eye-glazing style [or lack thereof] imposed by single-sentence claim requirement edicted in MPEP. (I was quite surprised the day I learned that it was a US specific requirement, without any real counterparts elsewhere, yet much of the world conforms to it.)
DeleteRobert R. Sachs: Punishing Prometheus: Part IV – Machine or Transformation, We Hardly Knew Thee…, PatentlyO [again], 31 March 2012
We are trusted with carefully carving out a space for the broadest yet most precise statement of the invention, surrounded on all sides by the prior art, using nothing more than a single sentence. Where other legal writers suffer no consequence for employing laundry lists of verbs, nouns, adjectives―to throw in the kitchen sink of do not fold, spindle, mutilate, tear, shred, distort, etc.―we are compelled by case law to consider every word as critical. A misplaced comma, the use of “the” instead of “a,” “at least one” instead of “each,” can spell the difference between a patent worth millions and patent worth less than wallpaper. The California Civil Code includes a section of codified Maxims of Jurisprudence; my favorite is “Superfluidity does not vitiate.” True for every attorney but patent attorneys. Show me another area of legal drafting that is as highly constrained in both form and substance as patent claim writing.
[In my opinion, too many attorneys excel far more at drafting bills than patent applications or arguments. Mais passons...]
Before one harps about the fairness of the law or the reputation of the boards, one should look at the specifics of the case. I have trouble summoning much sympathy for the proprietor. The drafting and prosecution of this case was, in my opinion, and to use a mild qualifier, rather indifferent.
To be continued, eventually.
Roufousse, I welcome your arrival. Indeed so, those writing claims have a challenging task. Consider the Bake America case, where the claim was held invalid because it used the word "to" instead of "at" in the context of setting a baking oven temperature, leading to an absurd result, that the product of the claimed baking process would be not bread but carbon. I'm a fan of the "mind willing to understand" case law and do not like to see it abused. I'm critical of the tendency of the EPO to find added matter everywhere they look, and hope for a more pragmatic and "real world" application of the Gold Standard to individual cases. I'm critical of the notion that a claim can be clear to a degree of 100% and that 100% clarity is what Art 84 requires. The Art 84 clarity standard to be attained is a "fit for purpose" standard ie clear enough for the judges to work with in the patents courts.
ReplyDeleteAnd as to the Missouri-based blog, my main motive for posting there is to gain insights into the ways of thinking of patent attorneys in America. Sometimes, it's a bit strange, I find.
Thanks to Max Drei and Roufousse for their contributions.
ReplyDeleteThe discussion on Art 123(2) and on Art 84 seems indeed a bit overheated.
If you you want you can always find a kind of lack of clarity. When I say a thick wooden plank can be flexible I am correct under two conditions:
- at a macroscopic level when it is cantilevered and a sufficient force is applied on it
- at a microscopic level when I press with my finger on it, there is a micro deformation around the finger.
I claim that the context of the claim should be such that one can define whether the macro or the microscopic effect is at stake. And for this no need to look in the description.
What is not tolerable is a claim which is in clear contradiction with the description.
And for this it is right that clarifying the description with respect to the claims is a mandatory. This does not hinder reading a claim with a will to understand it.
Dear Max Drei,
ReplyDeleteI have some sympathy for your statements:
- “I'm critical of the tendency of the EPO to find added matter everywhere they look, and hope for a more pragmatic and "real world" application of the Gold Standard to individual cases.
- I'm critical of the notion that a claim can be clear to a degree of 100% and that 100% clarity is what Art 84 requires. The Art 84 clarity standard to be attained is a "fit for purpose" standard ie clear enough for the judges to work with in the patents courts,
but this sympathy is rather limited. .
As representative you might want to see a bit more lenient approach to Art 123(2) and Art 84, but you forget one important aspect: the position of third parties.
At least the case law of the boards for added matter has the advantage to be coherent, and this is to be welcomed. It is nice to request a not too strict approach when it comes to added subject-matter, but have a strict stance when it comes to disclosures in prior art by insisting on a pointer towards certain combinations which could endanger the novelty of the claim you defend.
One should never forget that added subject-matter and novelty are the two faces of the same coin.
As far as Art 84 is concerned, what is at stake is not the clarity as such, but also the coherence between claims and description. If you insist upon a woolly definition in the claim, hoping that the description will clarify the situation do not be surprised when you are faced with prior art you might find not relevant if you take a strict interpretation of the claim.
After all the claim is what matters and it is good so. It should also not be forgotten that when the EPC was drafted in 1973 and amended in 2000, the British delegation wanted Art 84 to become a ground of opposition. This was certainly not innocent, and it is right that the other contracting states refused to open this can of worms. By today would have needed more than just G 3/14.
Be it for added matter or clarity never forget that what you loose on one side, you gain on the other side and vice-versa. In other words you cannot have your cake and eat it.
"Be it for added matter or clarity never forget that what you loose on one side, you gain on the other side and vice-versa. In other words you cannot have your cake and eat it."
DeleteI work mainly on US derived applications. I often find the claims are so broad and vague that I have no option but to look to the description to try and make any sense from them. The description only makes it worse - a myriad of optional vague features. This problem has gotten worse over the years to the extent some patents are no longer paying the "fee" of disclosing an invention in return for a monopoly. Article 83 is one option to prevent this but the burden of proof for the EPO is high. It appears that you can have your cake and eat it.
I find older patents tend to disclose a concrete embodiment and "supported" claims. They are also much shorter whilst providing information that third parties can improve upon. When did we get so greedy with patents - wanting more scope and providing less information?
If 123(2) stops this style of drafting prevailing - so be it. It would be most welcome by (some) practitioners and third parties alike.
Although the current case may be unfair given the underlying facts, why is it fair that a third party has to consider whether a claimed combination might not be so and have to go to the description to decide whether they can proceed now or in 20 years' time?
I would say that if anything, the EPO's approach to added subject-matter is likely to foster a vague drafting style. When any attempt to add a feature to a claim is met with the response that half a page worth of allegedly tied features should come with it, attorneys are likely to want to write vague specifications to try and avoid that; I've certainly moved in that direction.
ReplyDeleteYou may avoid added-matter, but then have to contend with clarity, patentability, and sufficiency. It may not even be a zero sum game, but a fatal one in which no patent at all is possible. Nor should it. If you don't want to disclose an invention, then you don't get a patent.
DeleteI refer to AO's comment below. A vague drafting style is only making a further rod for your back; one with which the EPO will happily beat you.
Either half a page of features is a disclosed combination or it is not. Seems fair enough that you can't just conjure up a new claim combination to overcome the prior art. Third parties only have the luxury of reading a published application and not the prior art from which a new claim combination is derived. It's not the prior art's fault an intermediate position is not disclosed.
@ Anonymous of Tuesday, 20 April 2021 at 12:45:00 BST
ReplyDeleteIn reply to your comment, I would like to draw your attention to the last two paragraphs in Point 2 of T 1203/13:
“Linguistically, all the parts of the original description, which the appellant indicates as the basis for these amendments, are defined as optional by using "may" as an auxiliary verb in each sentence. Nevertheless, the disclosure as a whole clearly defines a single embodiment without alternatives. Thus, in this context the use of the auxiliary verb "may" does not provide its literal effect, since if it did, all aspects of the described process would be optional, thereby rendering unclear what was to be considered as part of the embodiment.
The board therefore considers the subject-matter of claim 1 of the main request to constitute an inadmissible intermediate generalisation which contravenes Article 123(2) EPC.”
In other words if everything is optional, nothing is optional and you end up very quickly with added matter.
This might be a good deterrent against US originating applications at the EPO.
In European practice, a claim has to be clear and supported by the description, but this does not mean that on top of the claim you have to systematically consult the description. Otherwise Art 84 can be deleted at once and only keep Art 69 and its protocol.
By the way, the protocol on Art 69 might speak about equivalents, but does not define them, so that each jurisdiction can have its own view on what is an equivalent, and here we are back at Actavis/Lilly.
There is a false logic to the penultimate paragraph of Attentive Observer's last post. Using that logic, one could say that on the other hand if Art 84 EPC requires that the precise meaning (and so the scope) of a claim should be discernible without reference to the description, the second sentence of Art 69(1) EPC and its Protocol can be deleted. It does not seem unreasonable to understand Art 84 EPC to require that claims are presented in a straightforward and non-convoluted fashion to aid comprehension and reduce the burden on third parties reviewing patents while at the same time allowing that the description and claims can be used to interpret the claims. Indeed for a good many patents with claims specifying parts that have no clearly recognised name, it is impossible to understand what a claim might mean without looking at the description and drawings.
ReplyDelete@ Anonymous of Thursday, 22 April 2021 at 15:12:00 BST
ReplyDeleteI beg to disagree and a more differentiated view is in my humble opinion necessary. Art 84 is to primarily be applied at the EPO. Examination should be such that any claim granted by the EPO should be clear, concise and supported by the description.
Should this aim not have been reached, then Art 69 comes into play. The fact that Art 69 exists does not mean that clarity is to be diluted from the start and that we should from the start have to take the description into account.
I would go as far as to say that if a claim is not clear by itself, then how on Earth is it possible to say that its subject-matter is at all novel or inventive?
I said it before, do not be surprised that with a woolly claim you face objections of lack of novelty or inventive step. But please do not come with the excuse that when you look at the description your woolly claim is crystal clear and the lack of patentability is not justified. If it is so crystal clear when one looks at the description, then why not bring it in the claim.
The BA are right when they state in general that Art 69 is not for the EPO, but mainly for post grant procedures.
When claims specify parts that have no clearly recognised name, then the best way to avoid an objection under Art 84 is to bring into the claim the more precise definition found in the description. It should not be required by third parties to look first at the description when trying to understand parts of the claims that have no clearly recognised name.
I fully understand the temptation to have leave some lack of determination in a claim so as to catch a maximum of potential infringers, but this is not what Art 84 allows.
Attentive Observer, when you say that Art 69 EPC is not for the EPO, but mainly for post-grant procedures, is it your contention that when the EPO assesses clarity, novelty and inventive step, particularly when assessing the latter two in post-grant proceedings, it should rely solely on the content of the claims, yet the courts when assessing novelty, inventive step and infringement should use the claims as interpreted using Art 69 EPC and its Protocol, which is mandatory? Or do you suggest that the courts should interpret the claims for novelty and inventive step using just the content of the claims, so as to be consistent with the EPO, and yet use a different method, per Art 69 EPC and the Protocol, when interpreting the scope of the claims for infringement?
ReplyDeleteArt 69 EPC and the Protocol both make it mandatory to interpret the claims to determine their scope using the description and drawing. If your approach is correct, I wonder what prompted the legislator to mandate one approach for third parties looking at the claims outside of EPO proceedings and a different approach for the EPO.
You say 'It should not be required by third parties to look first at the description when trying to understand parts of the claims that have no clearly recognised name.' Why? The legislator clearly intended that third parties should be required to consult the description and drawings when trying to understand what claims mean, otherwise, Art 69 EPC would not say 'Nevertheless, the description and drawings shall be used to interpret the claims.'
And the notion of having to provide more detailed descriptions of parts in claims where those parts have no recognised name is hardly practical and is not likely to lead to concise claims.
Anyway, I am delighted to discover that you seem to have found so many patents/applications whose claims are such that you can assess novelty and inventive step without consulting the description and drawings; if only a few would come my way.
I wonder what Attentive Observer would make, then, of the following examples of comments from the Boards of Appeal. Are these boards wrong that the description has a role in assisting the interpretation of claims in post-grant proceedings before the EPO?
ReplyDeleteT 274/00:
"The object of the Protocol, which provides a guide to the manner in which the technical features of the claim are to be interpreted, is clearly to avoid too much emphasis on the literal wording of the claims when considered in isolation from the remainder of the text of the patent in which they appear; and also to avoid too much emphasis upon the general inventive concept disclosed in the text of the patent as compared to the relevant prior art, without sufficient regard also to the wording of the claims as a means of definition. This approach to the interpretation of claims must be adopted by the EPO when determining the protection conferred for the purpose of Article 123(3) EPC."
T 488/97:
"The EPC rules that the subject-matter of the claims for which protection is sought should be supported by the description (Article 84 EPC) and, according to consistent case law of the boards of appeal, the disclosure of an invention is to be assessed on the basis of the specification as a whole, including the description and the drawings, and not of the claims alone (see for example decisions T 14/83, OJ EPO 1984, 105 and T 169/83, OJ EPO 1985, 193). Therefore, when examining the novelty of the subject-matter of claims 1 and 3, the wording of said claims shall not be considered and understood in isolation but in the framework of the overall disclosure of the specification and more particularly in the context of the description.
As a rule, a claim should normally be clear in the sense of Article 84 EPC and understandable as it stands i.e. the subject-matter for which protection is sought should be understandable without ambiguity from the wording of the claim. However, in opposition and appeal proceedings, when doubts exist about the exact meaning of a claimed feature and when the substance of the independent claims calls for closer consideration before a decision can be reached on the question of patentability of their subject-matter, the question of whether a claim is "clear" must be looked at only as regards the amendments made. Otherwise, the whole content of the specification shall be used to understand the wording of the claim since the provision in Article 69(1) EPC, stipulating that the description and drawings be used to interpret the claims, also applies during opposition and appeal proceedings (see for example decisions T 23/86, OJ EPO 1987, 316 and T 16/87, OJ EPO 1992, 212)."
T 16/87: "The provision in Article 69(1) EPC stipulating that the description and drawings (if any) be used to interpret the claims also applies during opposition proceedings when an objective assessment of the content of a claim has to be made to judge whether its subject-matter is novel and not obvious"
Hello,
ReplyDeleteI am interested to heart the views of others on the Actavis case in the scenario where the description was different. I posted the question last week but it may have been censored? It is good to see discussion on this post and Jacob is highly critical of the Actavis decision.
In a hypothetical scenario, had Lilly defined sodium in the description as "any alkali metal" do people believe the literal interpretation of the claim would have covered alkali metals other than sodium?
It is important to note that chemists understand 'sodium' solely as the element and not a word capable of broader construction or ambiguity. So, the claim is 100% clear, but the construction based on the description is clearly different, though clearly broader but still clear.
Thank You.
@ Anonymous of Tuesday, 27 April 2021 at 14:07:00 BST
ReplyDeleteYou cite three decisions of the BA quoting and claiming that the BA should look at the description when analysing a claim. Those decisions are very old and have been superseded by much more recent ones.
But even in those days, there were decisions which held that a clarity deficiency in a claim wording cannot be rectified by the fact that the description could possibly help the reader to understand the technical subject-matter which the claim was intended to define. See in this respect decision T 49/99, Reasons, point 12, referring to decision T 1129/97, OJ EPO 2001, 273, Reasons, points 2.1.2 and 2.1.3. In other words Art 69 is not to be used when assessing the content of the claim.
In the catchword of T 56/04, it was held that an interpretation in terms of Art 69(1) cannot cure a lack of clarity, because compliance with the requirements of Art 84 cannot be achieved by applying Art 69(1) (cf. point 2.12 of the grounds for the decision).
Other decisions of the same content: T 681/01, T 1279/04 and T 223/05
The nub of all recent decisions is to specify that when a claimed feature is taken with its ordinary meaning there no need no need to invoke Art. 69(1). There are too many decisions going in this direction so that it is pointless to start quoting all of them.
I will content myself to quote a very recent one T 30/17and the decisions cited therein: T 1018/02, T 0431/03, T 1404/05, T 1395/07 and T 0197/10.
T 1450/05 held that Art 69 and its protocol were intended to assist a patent proprietor in contending for a broader interpretation of a claim than perhaps its wording warranted, not for cutting down the scope of a claim.
How a claim is to be interpreted does not only have an effect when assessing the conformity of the claim with Art 84 but also with Art 123(2).
Repy to Attentive Observer: If T1450/05 does say that the purpose of Art 69 EPC and its Protocol are to are intended to assist the patent proprietor in contending for a broader interpretation of a claim that is warranted and not for cutting down its scope, that seems to be entirely wrong. We are actually told quite specifically that the purpose is to provide fair protection for the patentee and a reasonable degree of certainty for third parties; it's there in black and white in the Protocol. That might mean providing a broader scope than a literal reading of the terms of the claim, or a a narrower scope.
DeleteBased on the position the EPO takes and you appear to endorse, we have the bizarre situation that the courts/tribunals in the EPC states are required to interpret claims based on Art 69 EPC and the Protocol (as pointed out earlier in this thread, it's there in black and white in Art 69(1) EPC - shall be used to interpret), while the EPO uses a different standard. It seems remarkable that if this is what the legislator intended, it isn't stated in the EPC and you have to wonder why the legislator would think it appropriate that the granting body should interpret claims to a different standard to the courts.