Another case of catastrophic comma loss (T 1473/19): Interpreting the claims in view of the description

The Board of Appeal in the recent decision T 1473/19 revoked a patent for added matter following a normal interpretation of the claims that lacked basis in the description. The discrepancy between the meaning of the claims and the description was the result of a loss of commas delineating a crucial sub-clause in the claims. The decision in T 1473/19 has many similarities with that of T 1127/16, in which the Board of Appeal revoked a patent for added matter occasioned by the lack of a single comma in the claims (IPKat). Both decisions support the primacy of the claims over the description, and argue against the use of the description as a way to change the meaning of clear and unambiguous claim language. There are also a number of reasoned points in T 1473/19 relevant to the ongoing debate over adaptation of the description to the allowed claims.  

Case background: Do missing commas add matter?

At Opposition, the Opponent failed in their argument that the patent as granted contained added matter (Article 123(2) EPC). The Opponent appealed the decision. On appeal, the Patentee requested that the patent be maintained as granted. The patent (EP2621341) related to a rotary joint for a CT scanner. Claim 1 as granted related to a contactless rotary joint comprising inter alia a rotary joint body:

"said body having a free inner bore holding a capacitive data link

The Opponent argued that it was unambiguously clear that this phrase should be interpreted as meaning that the bore, and not the rotary joint body, held the capacitive data link. By contrast, the disclosure throughout the description was of a joint wherein the rotary joint body, and not the bore, held the capacitive data link. 

Don't forget your commas

Given that the language of the claim was prima facie clear, the Opponent argued that there was no reason to consult the description in order to interpret the claims. Furthermore, the Opponent argued that the lack of a disclosure in the application as filed of the embodiment specified by the claim meant that the claims added matter over the application as filed. 

The patentee submitted that the patent did not add matter given that the description could be used to interpret the claims. The patentee also submitted auxiliary requests for correction of the claims in line with the description (Rule 139 EPC), e.g. by adding commas:

"said body, having a free inner bore, holding a capacitive data link

However, the Opponent argued that these corrections would extend the scopes of protection conferred by the patent (the "inescapable added matter trap") (Article 123(3) EPC). It was therefore necessary for the Board of Appeal to interpret the claims in order to determine both whether the granted claims contained added matter under Article 123(2) EPC and whether correction of the granted claims would extend the scope of protection under Article 123(3) EPC

Does Article 69 EPC apply to claim interpretation in proceedings before the EPO?

The two provisions considered relevant to claim interpretation are Article 69 EPC and Article 84 EPC

Article 84 EPC provides that: "The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description."

Article 69 EPC provides that: "The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims."

Importantly, the scope of the claims may be distinct from the subject matter specified by the language of the claim. The claim scope may, for example, be found in national proceedings to encompass equivalent embodiments that do not fall under the normal meaning of the claim. In the previous decision T 1279/04, the Board of Appeal found that Article 69 EPC relates to claim scope, and so primarily relates to interpretation of the claims in infringement proceedings before the national courts. By contrast, in proceedings before the EPO, this Board of Appeal found that a literal interpretation of the claims should be applied pursuant to Article 84 EPC.

The Board of Appeal in the present case disagreed with this approach. The Board of Appeal acknowledged that interpretation of the claims under Article 69 EPC may involve consideration of infringement by equivalence, and thus involve determination of a claim scope going beyond the subject matter delineated by the claim language. However, the Board of Appeal noted that, in infringement analysis, the first step will still be the interpretation of the claim scope under a normal construction. The Board of Appeal further noted that a general application of Article 69 EPC is of legitimate interest, both in proceedings before the EPO and in proceedings of the national and unitary patent courts. The Board of Appeal thus concluded that the Article 69 EPC was relevant to claim interpretation in EPO proceedings, and particularly to the interpretation of the claims under both Article 123(2) and (3) EPC.

Taking the description into account in claim interpretation

The Board of Appeal found that, according to established case law, the claim of a patent should be interpreted through the eyes of the skilled person who should try to arrive at a sensible interpretation, "taking into account the whole disclosure of the patent". The Board of Appeal however noted divergent case law over the degree to which the description should be used to interpret the claims. According to some decisions, the description should only be used to interpret claim features that are otherwise ambiguous (T 197/10T 1127/16). According to other Boards of Appeal decisions, the description and the drawings should be used to interpret the claims (T 2365/15T 1167/13T 2773/18)

The question for the Board of Appeal thus became whether Article 69 EPC should be interpreted as requiring the description to be taken into account in claim interpretation. The Board of Appeal noted that the description provides context-specific information about the claimed subject matter, and that taking this into account would make claim interpretation more accurate and thus contribute to legal certainty ("all the more so if, as is often the case, patentees use terms idiosyncratically in the claims"). 

However, the Board of Appeal was clear that the description should not therefore, in any way, be considered to have the same weight as the claims. "Only the claims determine the extent of protection" (r. 3.16). In the case of a contradiction between the description and the claims, the ordinary meaning of the words in the claims should take precedence.

At Opposition, the OD agreed with the patentee that the claim should be interpreted in the context of the description, and that therefore, the granted claim should be read as including commas defining the "free inner bore" as a subclause not possessing the capacitive data link. However, the Board of Appeal found that, without the commas, the interpretation that the free inner bore possessed the capacitive data link was "technically sensible and plausible", and that there was no technical reason for the skilled person to depart from this interpretation. The Board of Appeal thus found no reason to depart from the normal meaning of the description and the patent was revoked for added matter. 

The Board of Appeal also rejected the patentee's auxiliary requests for correction of the claims. Applying the same interpretation of the claim language, the Board of Appeal agreed with the Opponent that the correction would extend the scope of protection of the patent to cover subject matter not covered by the granted claims. Furthermore, the Board of Appeal found that the correction would not have been obvious to a skilled person given that the claim made technical sense under a normal interpretation (Rule 139 EPC).  

Final Thoughts: Description amendments and claim interpretation

The question of interpretation of the claims in view of the description is highly relevant to the recent controversies over the EPO's strict provisions that the description be amended in line with the allowed claims. Interestingly, the Board of Appeal in T 1473/19 resoundingly rejected the argument that Article 84 EPC (often used to justify the description amendment requirement) should be understood as relating to claim interpretation. The Board of Appeal particularly found that Article 84 EPC "[a]t most defines the standard applied when assessing clarity". This puts the Board of Appeal in this case at odds with the decisions supporting the description amendment requirement as justified by Article 84 EPC e.g. T 3097/19 (IPKat). 

The Board of Appeal in T 1473/19 also made an interesting distinction between the "description and drawings" mentioned in Article 69 EPC, and "the application as filed" "which is not referred to in Article 69 EPC" (r. 4.4). Are we therefore to understand that an amended description may be used to interpret the claims in a way distinct to that of the description in the application as filed (as was suggested in T 471/20 (IPKat)? This reasoning appears to heighten the risk that a patent may be revoked for added matter in view of amendments made to the description during prosecution. 

On the other hand, an important reason that the Board of Appeal chose not to depart from the normal meaning of the claim wording in view of the description, was that the description did not expressly exclude the possibility of an embodiment following under the normal meaning of the claims. If the patentee had amended the description before grant to expressly exclude this embodiment, would this have saved the patent? The risk of added matter from non-disclosed disclaimers is a whole issue in itself (IPKat). 

If nothing else, T 1473/19 is yet another example of how easy it can be to fall into the inescapable added matter trap at the EPO, with even the loss of a simple comma or two from the claims causing the irretrievable invalidity of a granted patent. 

Further reading

Another case of catastrophic comma loss (T 1473/19): Interpreting the claims in view of the description Another case of catastrophic comma loss (T 1473/19): Interpreting the claims in view of the description Reviewed by Rose Hughes on Monday, January 16, 2023 Rating: 5

32 comments:

  1. Thank you, Rose. With "catastrophic comma loss" you add to the lexicon of useful expressions when talking about the case law of the EPO Boards of Appeal, to go along with the "inescapable trap" and the "Bermuda Triangle" formed by Articles 54, 84 and 123(2) EPC. How nice it must be, up there, simply to revoke every patent that the Board doesn't like the look of, with a shrug of the shoulders and an (implied) admonition to the patent attorney drafter or prosecutor to try a bit harder, next time around, to do the job competently.

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  2. I wonder if the problem of the missing comma does not result from the fact that both the proprietor and the representative were not native English speakers. Such a mistake can then easily happen.

    The decision might boil down to a missing comma, and it might be possible to consider that a patent should not be revoked due to this. But this is a final decision taken by an “independent” board in the eyes of the German Federal Constitutional Court. It is thus difficult to claim that the Board did not like the look of the patent.

    The decision is however problematic as Art 69 and its Protocol has never been brought in relation with Art 123(2) in a decision of the EBA. The only decision of the EBA dealing with Art 69 and its Protocol is G 2/88 which deals with Art 123(2).

    Talking about adaptation of the description: the description of EP 2 621 341 has manifestly not be adapted to the claims as granted. Nothing like this is to be seen in the description.
    Claim 1 as granted in EP 2 621 341 relates to the embodiment of Fig 4, which is the only embodiment which relates to heat dissipation and which was dealt with in claims 5 and 6 as originally filed.

    By the way, the present patent EP 2 621 341 is a divisional of EP 2 954 844. In oral proceedings of 15.12.2021, the parent has been maintained in amended form. Claim 1 of the parent relates simply to a rotary joint and not to a contactless rotary joint for a CT scanner. Claim 1 of the parent relates to the embodiment of Fig. 5 and the description of the parent as granted has neither been adapted to the granted claim.

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  3. The decision shows that a lack of clarity in the form of an ambiguity can, when that ambiguity is interpreted as not being an ambiguity by a deciding instance, cause a patent to fall. The judgement 4.2 was self-contradictory in deciding that there was no reason for the reader to deviate from a plain reading using " ... the usual rule that modifiers are generally placed next to the word they modify ..." even though it admits ("usual", "general") this is not a hard-and-fast rule. This shows that even the board admits, to its credit, that there were linguistically two meanings which could be seen as present. One would normally think that amending to one of the meanings that makes vastly more technical sense is not controversial under Art. 123(3) EPC. Best solution: never leave an ambiguity in the claims as this leaves you at the whim of the deciding instance using a forced narrow claim interpretation which is made by their own admission by them and "not by linguistic or technical experts" - which seems like a remarkably harsh self-criticism, or is that just me seeing a completely unlikely meaning in an ambiguity?

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  4. This decision is very unfortunate for the former patentee and for the wider patent-seeking community, particularly for those members of the community who are not experts in traditional English grammar.

    As a native speaker, I agree that a normal first reading in isolation of "said body having a free inner bore holding a capacitive data link" suggests that "the body has a free inner bore and the inner bore holds a capacitive data link". However, upon juxtaposition of a more detailed description of the subject matter explaining that "the body has a free inner bore and the body holds a capacitive data link" and finding no explanation of "an inner bore holding a capacitive data link", the skilled person would immediately realise that the language is ambiguous and requires some thought. My view is that the skilled person would then realise that this statement is ungrammatical, based on certain schools of thought, but nevertheless should be read as "the body has a free inner bore and the body holds a capacitive data link".

    The decision to the contrary shows this Board of Appeal, at best, to be pedantic and unfocussed on the task at hand, which is to grant and uphold patents for new and non-obvious inventions. Article 123(2) should be a tool to prevent patentees from improving their disclosure after filing, and not as a weapon to sink otherwise worthwhile patents. If a hard-fought and expensive patent can be lost on such a banal technicality, it is hard to see why any rational person would continue to seek them.

    This also raises questions about consistency between departments, diversity and inclusivity, and whiffs of hypocrisy at the EPO. Examination reports issued in English by non-native English-speaking examiners are typically littered with grammatical errors, which often makes them difficult to read and understand. Nobody questions this because to do so would be unfair - it is the technical content that should matter. The entire European patent community strives to understand each other regardless of language barriers. What's more, I cannot conceive of a European examiner accepting that a feature in a claim that reads, "said body having a free inner bore holding a capacitive data link", is novel over a prior art disclosure that reads, "said body, having a free inner bore, holding a capacitive data link". The examiner would read these as one and the same and raise a novelty objection.

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    1. Good points! It is worth noting that the offending language was actually suggested by the Examiner himself, who completely rewrote claim 1 in the 71(3) communication. The representative's mistake was not object to the lack of commas (or a clarifying "and").

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    2. I think calling that the "representative's mistake" is pretty harsh - especially as its quite clear from the formatting used in the form 2906 what the examiner meant the phrase to mean.

      The representative's may well have assumed that post-grant the claim would be interpreted in a sensible way. For example, not in a way that meant that a phrase with two potential meanings was interpreted such that all the embodiments were not covered by the claim.

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  5. In another thread, a commentator pointed out a difference between engineers and lawyers, when it comes to fact-finding. For an engineer, an electrical current is either flowing or it is not. For a lawyer though, whether it is flowing or not depends on what answer to that question suits the client. I suspect that we have here an example of a difference between i) what the interested and well-informed but neutral notional technical reader understands the language of the here-considered claim to mean, and ii) what the TBA (to suit its purposes) chooses to understand as the meaning of the claim. I think it is a pity that the Board, in construing the claim, did not give more weight to i) the principle of synthetical propensity, ii) the claim in its context as part of the patent specification, and iii) the viewpoint of a reader (deemed by the established case law to be a PHOSITA) who is curious to extract technical teaching from their reading of the patent, iv) the notion (well-established elsewhere) that if there are two ways to read the claim, of which one is in harmony with the rest of the specification while the other seems to contradict it, then (unless it is impossible) one should take the harmonious meaning as the meaning that the writer of the claim was striving to achieve when drafting the wording of the claim, and v) the Protocol to Art 69 EPC. In other words, Board members, I should welcome it if in future you were to construe the claims pragmatically and purposively, instead of seeing claim construction as an academic exercise. A real world balance is to be struck, between reasonable legal certainty for the public and fair protection for the claim owner. 100% textual certainty is unachievable in the rough and tumble real world full of the crooked timber of ordinary humanity. To hold patent owners to such an unachievable standard is not fair. To have been fair to the patent owner here would not have deprived the public of its right to a reasonable degree of certainty.

    Anybody disagree?

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  6. Surely the drafters of the Convention did not envisage such a strict interpretation of Art 123(2)?

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  7. As I pointed out in the comments in another blog, this case is noteworthy for another reason: the amendment which led to revocation was proposed by the Examining Division, in its communication pursuant to Rule 71(3) EPC.

    Of course, the applicant approved the text, so he alone has to bear the consequences. But European patent attorneys would be well advised to look at the file wrapper, and to draw the following lesson: whenever the EPO proposes an amendment, scrutinize it very carefully, and react appropriately if it might lead to revocation. Patent examiner and patent attorney are two different jobs. A patent examiner may intend to help the applicant by proposing an amendment to expedite grant, but ultimately hurt the validity of the patent in doing so.

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  8. Have a look at para 4.5 of the reasons, the concluding sentence in particular. It is plain wrong, isn't it? One starts to suspect that the aim of those responsible for this Decision is mischief-making, to foment the gathering rumblings of discontent within the interested circles, and ratchet up the pressure for a referral to the EBA (to mediate in the catfight between the various Boards).

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  9. This decision is indeed catastrophic as Rose wrote. This is terrible imagewise for the EPO.

    As pointed out by previous commenters, there is the « unforced error » of the Examining Division creating an ambiguity of it own motion : claim 1 submitted by the applicant was clear that the data link was held by the body and this was unambiguously supported by the description. Moreover, the amendment entered by the Examining Division was particularly unfortunate. They could have inserted with the same meaning a reference to the bore after the « body […] holding a capacitive data link », instead of between the body and the data link, and this would have raised no 123(2) issue.

    In addition, I have not found in the 71(3) notification any explanation supporting the amendment. It should be a general principle that the burden of proof is on the Examining Division to justify a claim amendment. This was recently stressed in T 2194/19.

    It is true that the applicant has not challenged the Examining Division’s amendment. It is shocking though that the applicant becomes responsible for checking compliance with 123(2), when this is an essential responsibility of the Examining Division.

    And then, the Board added another unforced error by opening a lengthy discussion about the reliance on the description in the interpretation of claims. When the issue is compliance with 123(2), the assessment has to look at the description of the original application anyway.

    I hope – this is a wish for the new year – that this decision will trigger a reckoning at the EPO about unreasonable and applicant-unfriendly behaviour of Examining Divisions in the handling of 71(3) notifications. At the very least, the Guidelines dealing with Article 84 should express robust warnings about the compliance with 123(2) of amendments introduced or required by Examining Divisions and the need to provide a clear justification. This should apply primarily to claim amendments but also to description amendments. As Rose noted, any description amendment, whether deletion or addition, may alter the interpretation of the claims by a court during litigation and lead to a patent being struck down for new matter.

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    1. 71(3) comm had form 2906 explaining basis in detail, so seems like not a fair point.

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  10. Pls enter response made earlier@ Francis Hagel: a wrong factual allegation concerning the contents of the file. Form 2906 explained basis for text proposed by division.

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    1. @Anonymous
      You are right that Form 2906 explains the addition of the "free inner bore" to claim 1. However the addition was not the issue in general, the issue only arose from the specific addition chosen by the ED which created the ambiguity.
      In my view, a major lesson of this case is that it is dangerous to allow the EDs brothe general issue is the excessive leeway

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  11. Unfortunately for the patentee, the wording of the claim "said body having a free inner bore holding a capacitive data link" mean what the board interpreted them to mean and not what the prosecuting attorney, defending attorney, examining division and patentee wanted them to mean.

    As an aside, adding the commas during examination could, and in my opinion should, have raised a clarity objection since would be unclear what would be doing the holding.

    Namaste.

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  12. Nice comment from Risto. What litigants and their advocates want is one thing. What the ED "wanted" here is something else. I wonder, what was the ED using the language of the claim to mean?

    The furore here reminds me of the test the UK Supreme Court uses (Kirin case) when it sets about construing a claim, namely, "what would the skilled person have understood the patentee to have used the language of the claim to mean?" Here, did the Board (being itself a disinterested skilled person) go to the effort of asking itself that question?

    It seems not for, if it had made that effort, it would have got to the answer "wanted" by that other skilled person involved, the ED.

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  13. Although simplistic, I have always thought a guiding factor in post-grant claim interpretation is that: if there is doubt of the meaning of a claim term, then the interpretation will at least involve a consideration of “what did the patentee intend the claim term to mean?”

    Here, both parties and the Board accepted that the claim term could have two meanings, and then the Board decided that the patentee intended the meaning of the claim term to be such that the claim did not cover all of their own embodiments. In other words, the Board decided that the patentee intended that all its own embodiments of the invention did not infringe the claim.

    What’s even worse, as is plainly obvious from 4.5 (“The situation in T 131/15, to which the respondent referred, was different. In that case, the dispute
    concerned an expression in a granted claim which, taken literally and in isolation, would have had the effect of excluding all of the disclosed embodiments from the extent of protection (Reasons 5.10 to 5.12). This is not the case in the present proceedings”), it seems that the Board fully considered this point, and still came to this conclusion.

    Has the Board just royally messed up? Or am I missing something?

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    1. As a prelude, I have been involved in an appeal where the comma was considered highly relevant to interpretation. It is worth pointing out here that the proprietor did not try to fix the issue by solely introducing commas, as stated in the article above. That in fact would not help since the second comma would be a dangling modifier. 5.1 of decision says proposed amendment is “said body having a free inner bore, said body holding a capacitive data link”.

      Given I had to study commas and their effect in the world of the EPO more than one would ever desire to do so, I understand at a general level, the Board’s approach is to only consult the description if the claim wording alone is unclear. If the wording otherwise is clear and imparts a credible technical teaching, then you are stuck with it. There are exceptions to this general rule of course.

      As to this decision diverging/agreeing from/with T131/15, the potential wording that added-matter was “opposite direction” (which firstly is relative and thus problematic, and secondly could include travelling both directions only on same side of road, or also include travelling both directions using different sides of the road). The claim related to a transmitter and receiver. The O argued granted claim required precise opposite direction propagation, whereas amended claim now covered more than just the precise opposite direction, and thus broadens the scope. The Board resolved this ambiguity by going to the description and observed how the O’s interpretation would exclude only disclosed examples. Whilst the same is true of the current case, the Board in T131/15 could have saved time and pointed out that O’s interpretation is unlikely to be a technically credible teaching (and thus unambiguous), since forwards and reflected wireless propagation in opposite directions is unlikely to only involve precise collinear propagation.

      That’s how I reconcile (and not endorse) the reliance on this earlier decision.

      Using the EPO’s current rule book, the present patentee perhaps fell foul of the O’s interpretation being technically credible and mostly unambiguous, such that the description was no recourse worth consulting. I say mostly because it’s not unreasonable to say it’s ambiguous as to where the capacitive data link is located from the wording alone. Reading the decision, it looks like this was O’s trump card since most of the decision was taken up by interpretation and 123(3) since it looked like P had overcome first instance 123(2) problems.

      I saved the best for last. I was defending the patent in the case so I was bemused by the power of the comma, but have learned from it. The only justification I have heard for the EPO’s approach is that in some member states only the claims are published in an official language of that state so it’s considered fair you are bound by what is written. Of course this is great in theory and assumes perfect translations and grammar experts to read the claim, the outcome is decisions like this.

      Apologies in advance for any incorrect comma use.

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    2. Just to clarify the below is in relation to T131/15:

      “Reading the decision, it looks like this was O’s trump card since most of the decision was taken up by interpretation and 123(3) since it looked like P had overcome first instance 123(2) problems.”

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  14. I find it somewhat strange that the board was able to derive a definitive meaning from an ambiguous formulation but at the same time considered that the mandatory language of Article 69, "shall", need not be followed.

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  15. @Francis Hagel, if I may: you write that the decision is “catastrophic”; I beg to differ.

    The Board did what it had to do to decide the case. The patent as granted contravenes Article 123(2) EPC because the drafting of the feature in question is utterly unclear – one might even say “insolubly ambiguous”. I, for one, would think that the Board would deserve a lot more criticism if it had twisted the law and the facts to rescue the patent from this deplorable situation.

    What is “catastrophic” is not how the Board decided the case, but how the amendment could have been suggested by the Examining Division and then approved by the applicant, even though it led to the patent being revoked.

    Granted, the case law of the Boards of Appeal says that the applicant, and only the applicant, is responsible for establishing the text of his patent; and as I said above, the applicant's representative should have requested an amendment under Rule 71(6) EPC.

    But perhaps, instead, the Examining Division should have drafted the amendment differently, or even not at all. Here, it rewrote claim 1 from scratch. I think that this was too much, and in fact, I have never seen this happen in a case where I was the representative.

    Perhaps the practice of proposing amendments at the Rule 71(3) EPC ought to be eliminated entirely, or at least curtailed so that the Examining Division cannot rewrite the claims. Again, patent examiner and patent attorney are two different jobs.

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    1. I don't want to speak for Francis Hagel, but you are misrepresenting the facts.

      The Board thought the claim was *so* clear that it thought that it didn’t need to look to the description to interpret the claim - and as a result the Board thought that it didn’t need to consider the fact that its “clear” interpretation meant that all the patentee’s embodiments would not infringe.

      Had the Board though that the claim was unclear, then logic says that the Board’s conclusion was that claim term in question was broad enough to cover both interpretations a) and b). In this case, amending the claim to the interpretation favoured by the patentee would not have offended Art 123(3), as it would have been considered a narrowing amendment – i.e. one that narrows the scope of protection by taking an ambiguous claim with two interpretations to a claim with one interpretation.

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    2. @Anonymous Thursday, 19 January 2023 at 14:25:00 GMT:

      I realize that my comment above was somewhat unclear (ironic, when we are discussing clarity, isn't it?): I meant to say that the claim language was so unclear that interpretations a) and b) were both tenable, which led to the outcome of the case. Otherwise, I agree with your comment.

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  16. @Extraneous Attorney
    I have no problem with your disagreement over the use of « catastrophic » in relation to the Board’s decision, this thread is a place for debate, and I am thankful for your comments. But in my view, it is the situation as the whole which is imagewise terrible for the EPO.

    Certainly the problem arose from the unfortunate amendment made by the ED in the 71(3) notification. The issue was not the addition of the « free inner bore » as such, which was explained in the 2906 Form as Anonymous pointed out, but the ambiguity created by inserting it between the « body » and the « data link ». As to claim language, the devil is in the details !
    Another point is that to my knowledge, the ED does not seem to have raised Article 84 objections earlier.

    As to the Board’s decision, it is extremely harsh for the patentee. The Board could have paid consideration to the specific circumstances which resulted in the ambiguity. Please see MaxDrei’s comments on this issue.

    Is it not ironical that the EPO is so picky over the addition of new matter by applicants/patentees, but can be that careless as to amendments brought by the ED ?

    As to your suggestion that the scope of amendments entered at the 71(3) stage, I entirely agree. Amendments should be restricted to the correction of typos or strictly formal issues. Substantive amendments should be excluded, whether in the claims or the description. All kinds of amendments may raise 123(2) issues. For example, in the claims, moving the term « characterised » ; or deleting the word « substantially » per GL F-IV 4.7 e.g. in « substantially vertical » (when the description never discloses a strictly vertical geometry) ; deletion of unclaimed embodiments ; addition of comments on the prior art. Any amendment which departs from the original application may alter the interpretation of the claims by a court and be considered new matter, leading to the court striking down the patent.

    A practical point is also that applicants and their representatives are not in the best position to challenge 71(3) amendments because of the additional delays, costs and uncertainties entailed by a challenge.

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    1. @Francis Hagel:

      In the end, we broadly agree, at least on the fundamental issue.

      I fully concur with your last point. When the ED substantively amends the application at the R71(3) stage, the representative might have a hard time recommending filing a response under R71(6), because from his client's point of view, the grant of the patent is delayed for (at least) months, whereas accepting the ED's proposal delivers a quick grant.

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  17. Reading this thread, and the more sensible ways the Board could have decided the case, the awful thought occurs, that morale within the membership of the Boards of Appeal is now so bad that numbers of them have lost any sense of collegiality and so are instead actively setting out to throw various spanners into the hitherto smoothly running machine called the Established Case Law of the Boards of Appeal.

    Or has EPO management instructed them to generate enough work to keep the emerging UPC busy from Day One and with this particular management edict they are quite happy to comply?

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  18. Another point not mentioned so far about the Board’s approach to interpreting the claim totally in isolation of the description is that (and I apologise for stating the obvious) the claims are *after* the description in the patent document.

    It would be perverse to argue that the patent is not read by the skilled person start to finish, and so it would be (in my view) equally perverse to argue that the skilled person would not always take the description into account when interpreting the claims.

    The only way the skilled person could not be influenced by the description at least to some degree would be if they had not read it, which is surely too bizarre to think seriously about.

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  19. @MaxDrei

    You may certainly spot ulterior motives in some of the recent BOA decisions, such as embarrassment for the EPO as a whole, or for the chairman of the BOAs or the management of the EPO, or personal prospects related to the UPC. My own view of the current confusion is that it is a knock-on effect of the EPO practice of requiring amendments to align the description with claim amendments, which it is plausible to see as a reaction to the UK Supreme Court Pemetrexed decision of 2017 and the unusual consensus of European national courts (no less than the courts of Switzerland, Italy, Germany, Sweden, Austria, Finland, Denmark, Portugal, Spain, Netherlands (except in the first-level District Court of the Hague) and France) which have followed suit. The consensus of national courts has been that a restrictive amendment of the claims to a specific Pemetrexed salt during examination did not preclude, for the assessment of infringement, a broader scope including another salt, based on equivalents or on the choice of the salt considered a secondary feature, as in the decision of the Paris judiciary court. In addition, the courts dismissed the argument of a prosecution estoppel linked to the claim restriction, based on the argument that the restriction was only aimed at addressing a formal matter and was not needed for distinguishing over the prior art.

    That this reaction has been an overreaction is now in plain sight with the fierce divide between BOAs over whether the amendment requirement has a basis in the EPC and even the divide between the BOAs which support the EPO practice over the rationale for the requirement, see T 3097/19 shifting the rationale from the support-in-the-description condition of Article 84 to a « creative » interpretation of the 1st sentence of Article 84, and in so doing, departing without explanation from the well established relevant case law and Guideline and undermining the initial rationale.

    It has also been an overreach. The objective was apparently to provide a sort of equivalent for a disclaimer and to comfort the prosecution estoppel argument, which can be depicted as an attempt to weigh in on the interpretation of claims and assessment of equivalents by national courts and the UPC in the future, covered by a thinly veiled concern for “legal security”.

    All of that shows the EPO’s inability to resolve internal differences and its inefficient governance. It makes highly desirable an assertion of leadership in the European patent arena by the UPC as soon as possible from its start.

    Meantime, the EPO should in my view consider including the description amendment issue in its « Convergence of practice » programme (part of its official 2023 objectives), implying work with European national patent offices towards a harmonised practice within Europe. The PCT Guidelines section 5.29 would offer helpful guidance in this respect. A clear drawback of the EPO current practice is that, as you have pointed out, the EPO is isolated on the issue within Europe and the rest of the world, much to the detriment of applicants and for no benefit to anyone.

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  20. Indeed, Francis. And your comment prompts another thought about how unfortunate the pemetrexed case was. If only the Applicant had included in the PCT as filed a dependent claim at the intermediate level of generalisation "pemetrexed or a salt thereof" there would have been no prosecution difficulty at the EPO and not even any litigation. How could a competent drafter have failed to include such a claim? Only in America, I suspect.

    English litigators are fond of an aphorism that goes something like: Bad cases make bad law. Here we have an awesome proof of it.

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  21. Thanks MaxDrei. I like this aphorism. I would only add that for a litigator, bad cases may mean good money. And from a professional standpoint, a win is more rewarding when the case was bad.
    Another joke about litigators : when they win, they say to the client "we won" ; when they lose, "you lost".

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  22. Imagine you have to review 1000 patents for your client who is hard pressed for budget and needs to release a product in 3 months time - you cannot review the file wrapper for each publication and recourse to the description should only be when the claim is fundamentally unclear, otherwise the task is simply impossible. In this situation the claims must be taken at face value, considered in the light of the technical knowledge.

    Many commenters upset with this result are likely predominantly drafting and prosecuting rather than conducting freedom to operate exercises - when you take the decision in the context of protecting the public from a misleading patent claim then you may be more sympathetic.

    I am in agreement with the decision: this claim is not unclear, instead it is absolutely clear. That it does not say what the patentee wanted, or wished they had said, is on the patentee and their representative. Hard luck, so it goes - perhaps consider in detail the examiner's suggestions rather than rushing to grant next time.

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    Replies
    1. I prosecute patent applications and carrry out patent clearance reviews. Assuming I'd been able to make sense of the claim without first reading the description, if my belief there was no infringement was based solely on my reading of the term under discussion here, I would have been trawling through the patent as a whole to see whether I could rely on what at best looked like a small difference. I only base an opinion on infringement on a reading of the claims alone if there are such stand out differences there could not possibly be any infringement.

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