Will we have a referral on using the description for claim interpretation or is the Board of Appeal jumping the gun? (T 439/22)
PatKat awoke from her mince pie induced doze to the intriguing news that there may be another referral to the Enlarged Board of Appeal (EBA) waiting in the wings. This potential referral concerns the all important question of how much the description should be taken into account for claim interpretation. In the pending appeal case T 439/22, the Board of Appeal suggests that a referral is needed in view of the conflicting case law on whether the description should be consulted in order to interpret otherwise clear claim language. However, do the facts of this particular case really justify a referral?
Gathered, spiralled or both?
The pending appeal in T 439/22 relates to a Philip Morris patent EP3076804. The patent was maintained at Opposition. On appeal, the Board of Appeal's non-binding preliminary conclusion was that the case hinges on the question of whether the description should be taken into account when interpreting otherwise clear claim language. Interpretation of the claims in line with the description favours the Opponent's case, whilst ignoring the description favours the Patentee. For the Board of Appeal, diverging case law on claim construction and the fact that the question is of fundamental importance would justify a referral.
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| Spiralled or gathered? |
The granted patent EP3076804 related to a cartridge for a "heat-not-burn" smoking device, in which tobacco is heated, not burnt. The question in the pending appeal is whether the claims are novel. The smoking device cartridge in the relevant prior art is described as comprising "spirally wound" smoking material (e.g. tobacco). The claims of the patent specify that the cartridge comprises "gathered" smoking material. It is critical to the novelty of the claim whether the "spirally wound" material of the prior art should be considered equivalent to the "gathered" material of the claim. The description provided a very broad definition of gathered: "As used herein, the term 'gathered' denotes that the sheet of tobacco material is convoluted, folded, or otherwise compressed or constricted substantially transversely to the cylindrical axis of the rod." The view of the Board of Appeal was that this definition was at odds with the normal, narrower, definition of the term as used in the tobacco industry.
The Opposition Division took what the Board of Appeal considered to be the "classical approach" to claim interpretation. Under this approach, the description should only be consulted in order to construe words in the claims that are otherwise unclear (T 169/20, IPKat). For the Board of Appeal, this line of case law prohibits any recourse to the description for the interpretation of otherwise clear claim language (IPKat). However, the Board of Appeal considered there to be an alternative branch of case law, according to which definitions provided in the description "cannot be left unconsidered" (T 1473/19).
Where is the real divergence in the case law?
Confusingly, the case cited by the Board of Appeal as taking the divergent "non-classical" approach to claim interpretation is one of the "catastrophic comma loss" cases (T 1473/19, IPKat). However, contrary to the Board of Appeal's suggestion in the present case, T 1473/19 found that in the case of a contradiction between the description and the claims, the ordinary meaning of the words in the claims should take precedence. In particular, "[t]he primacy of the claims [..] limits the extent to which the description may serve as a dictionary for the terms used in the claims." (T 1473/19, r. 3.16.2). T 1473/19 therefore appears entirely aligned with the approach that alternative definitions of otherwise clear language cannot be mined from the claims.
In this Kat's view, the divergence in the case law on claim interpretation is thus not to be found in the question of whether the description may be mined for definitions of otherwise clear claim language. The case law (including in T 1473/19) appears relatively aligned that this is not permissible. Are readers aware of any recent explicitly contradictory decisions?
As later admitted by the Board of Appeal in T 439/22, the divergence in the case law on claim interpretation is instead on the broader question of whether the description should be consulted in EPO proceedings pursuant to Article 69 EPC and/or Article 84 EPC (para. 7.) (see also IPKat). In the recent decision T 1924/20, for example, the Board of Appeal found that "a skilled reader of a patent claim would, for many reasons, interpret the claims based essentially on their own merits [...] This is because the 'subject-matter of the European patent' [...] is defined by the claims and only by them". In other words, according to this decision, claim interpretation in EPO proceedings should be performed pursuant to Article 84 EPC. This approach is different to one taken in T 1473/19, which found that the claims should be interpreted holistically, taking into account the drawings and description, pursuant to Article 69 EPC. A holistic approach to claim interpretation would also appear to permit functional language in the description to influence how the claims may be interpreted (T 450/20, IPKat). However, as mentioned above, the Board of Appeal in T 1473/19 did not consider interpreting the claims under Article 69 EPC as justifying a change to the interpretation of otherwise clear claim language in view of language provided in the description (IPKat).
It is at this juncture that we see the connection with the "adaptation of the description" debate, on which we are shortly expecting a separate referral in an unconnected case (T 56/21, IPKat). Boards of Appeal have defended the EPOs requirement for adaptation of the description in line with the claims in view of the relevance of the description for claim interpretation under Article 69 EPC and/or Article 84 EPC. However, arguably, this case law defending the "adaptation of the description requirement" conflicts with the broad consensus among the Board of Appeal that no approach to claim interpretation can alter the interpretation of prima facie clear claim language (IPKat). The opposing view is that holistic interpretation of the claims in view of the description pursuant to Article 69 EPC means that the description should be brought in line with the claims as a matter of patent quality.
Final thoughts
It is hard to think of a more fundamental question for patent law other than that of how the words in a claim should be interpreted. It is therefore highly undesirable for there to be confusing and contradictory Boards of Appeal case law on this issue. How is one expected to draft a patent application if the rules for the interpretation of a language used in the claims and description are unclear? The Board of Appeal has indicated that it intends to refer the question on how to interpret the claim wording to the EBA. It is now up to the parties whether they wish to first discuss the issue at oral proceedings. However, this Kat is not sure that the facts of the case in T 439/22 will convince the EBA that a referral is justified. Watch this space!
Update 11 Jan 2024: The Patentee in the case has now submitted that they do not withdraw their request for oral proceedings, and that they disagree with the Board of Appeal that a referral is justified: "The Board has referred to decision T1473/19 and T169/20 in the Communication. However, in both of these Decisions the respective Boards have underscored the primary of teh Claims and the language used therein".
Further reading
Claim interpretation
- Boeing's comma drama: Commas and taking the description into account when construing a claim (T 1127/16) (April 2021)
- Another case of catastrophic comma loss (T 1473/19): Interpreting the claims in view of the description (Jan 2023)
- EPO tries to have its cake and eat it on claim interpretation (T 0169/20) (March 2023)
- Construing the claims to include technical effects mentioned in the description (T 1924/20) (April 2023)
- The risk of pre-grant description amendments (T 450/20) (July 2023)
- Benefits and pitfalls of functional patent claims (and why the UK is out of step with the EPO on claim construction): Astellas v Teva [2023] EWHC 2571 (Pat) (Nov 2023)
Description amendments
- Board of Appeal finds no legal basis for the requirement to amend the description in line with the claims (T1989/18) (Dec 2021)
- Can amending the description to summarize the prior art add matter to the patent application as filed? (T 0471/20) (Jan 2022)
- EPO Board of Appeal toes the party-line on description amendments (T 1024/18) (April 2022)
- Board of Appeal case law against the description amendment requirement starts to mount up (T 2194/19) (16 Nov 2022)
- Another Board of Appeal enters the fray on description amendments (T 3097/19) (Nov 2022)
- Board of Appeal poised on the brink of a referral on description amendments (T 56/21) (July 2023)
- Adding matter by amending the description to exclude embodiments (Ensygnia v Shell [2023] EWHC 1495 (Pat) (Aug 2023)
- Referral on description amendments moves one step closer (T 56/21) (Nov 2023)
Reviewed by Rose Hughes
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Tuesday, January 02, 2024
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Posts
Thus far, all that I have done is a quick read-through of your valuable write-up, Rose. But I wanted to comment straightaway because I think the topic is so important and ought to gather (no pun intended) a lengthy thread of useful comment. I hope others will chip in.
ReplyDeleteWhy important? Because the underlying issue (description contains definition of term present in claim that widens the meaning of that term beyond what one would normally expect) is present in a very high proportion of the cases I prosecute at the EPO (all drafted in the USA). For example, in the case I was looking at yesterday, the description defined "substantially vertical" to surface X as lying in the range 10° to 90° to surface X. Egregious perhaps, but in my opinion the definition of "gather" here is just as egregious. When I twist my soaking wet woven towel into a spiral, and twist the spiral ever further, to squeeze ever more water out of the woven cloth, there is no "gathering" going on but I nevertheless fall within the given definition of what it is to "gather" that towel.
Why does the US drafter include such fatuous definitions? At the behest of US litigators. Should we in Europe let them get away with it? Should Boards of Appeal encourage such drafting practices? I think not.
In my "vertical" case, I am happy to report, the ED is alive to the issue, objecting under Art 84 and intimating that Art 123(2) is standing in the wings. I await with interest the moment when the EBA opens the lid of this can of worms.
In the meantime, until the EBA lays down the law definitively, cases like this will drive ED's to be ever-stricter in their demands for perfect conformity between description and claim. Of course!
If there is a referral in this case as well as in T 56/21, wouldn't it make sense for the proceedings before the EBA to be consolidated so that all of these issues can be dealt with together? This would be better than having issues of Article 84 and Article 69 being dealt with in piecemeal fashion in separate G decisions, with the attendant risk of inconsistencies or gaps in reasoning.
ReplyDeleteMr Justice Birss, an important UK patent judge, has talked in the past about the difficulties of making judgments where both case law is satisfied and justice to the parties is done. So there is an argument that the that the Enlarged Board should not be brought into too many matters, because too much detailed case law makes the system inflexible and more difficult to work with on a day to day basis. As an attorney I see claims all the time where individual terms are difficult to interpret with or without the description, and so it is clear there is an inherent problem with language which never goes away. At some point, we need to decide on each issue when we have enough case law, and we won't add to it. I suspect interpretation of claims is one of those issues when it would be better for us all to accept that we will never know what 'vertical' or any other technical term really means, and we just need to 'stumble' through whenever validity or infringement needs to be decided on.
ReplyDeleteSanta, I rush to support your viewpoint. In the drive towards ever more "legal certainty" we should be careful to leave open enough "wiggle room" for the courts to serve the interests of justice between parties in dispute over both infringement and validity. I cite Article 69 EPC. Every time an Examining Division scrutinises a prosecution amendment that I am making, I want the Division also to balance its zeal for legal certainty with the imperative of delivering fair protection to a deserving inventor. After all, the EPO's statutory mission is to "grant patents".
ReplyDeleteI am guessing though that, in the case study here, the definition of "gathered" was in the application as filed, as well as the claim that recited "gathered". And I assume that this was because the application drafter was aware of the "spiralled" prior art when writing the as-filed claims. Definitions in the description as filed, that (whether deliberately or accidentally) muddy the water: they ought not to be tolerated by the EPO.
On the US blogs today there are reports of litigation about coffee capsules and the machines that operate on them, where the key word in the claim was "barcode" and the prior art was "bitcode". As Robin Jacob used to say "We can learn a lot from the Americans: watch what they do, and then avoid making the same mistakes". A classic example is to watch how claims get construed, in the USA and then do it better, here in Europe.
At point 6 of their communication dated 5 December 2023, the Board makes what appears to be a reasonable point, which is essentially that if the EPO always interprets the claims without reference to the description, this can - where doing so results in a narrower claim scope - create an "Angora cat" situation. This is because, when dealing with patents granted by the EPO, national courts are of course obliged to interpret the claims in accordance with Article 69 EPC, which may prompt them to afford the claims a broader extent of protection (eg in the light of unusually broad definitions of certain terms that are provided in the description of the patent).
ReplyDeleteTo prevent the EPO from artificially creating too many "Angora cat" patents, various solutions can be envisaged.
Of course, the solution that the EPO currently favours is to enforce incredibly strict standards for adapting the description, with a view to preventing any "unusual" (or allegedly "conflicting") definitions in the application as filed being used to interpret the claims after grant.
There is much that can be said (and that has been said) about the EPO's current approach. However, perhaps the most telling observation is that, if successful in its objective, that approach effectively renders otiose both Article 69 EPC and the Protocol to that Article. This is because, in such a scenario, the EPO will:
- interpret claims without applying either of those provisions; and then
- ensure that adaptations of the description prevent national courts from reaching "conflicting" interpretations.
As much as I have sympathy with the aim of preventing the grant of "Angora cat" patents, the problem highlighted by the Board is all of the EPO's own making, as it is due entirely to the EPO's approach to interpreting patent claims.
In this regard, I will permit myself one more observation. If one were to consider "description" in Article 69(1) to refer to that of the application as filed, then this would have the effects that:
(a) the EPO's description adaptation practice would no longer serve any useful purpose; and
(b) terms given "unusual" definitions in the description will be interpreted (by national courts) accordingly unless narrower / different definitions are included in the claims.
This would not eliminate "Angora cat" patents, especially if the EPO continues its current approach to interpreting the claims. However, it would at least make it a lot easier for third parties to determine, from an early stage, the extent of protection that national courts are likely to afford to the claims of such patents.
I guess any answer from the Enlarged Board will be just as illuminating as in G 2/21 because the Protocol to Art.69 shows that it is difficult to give a bright line rule. It's also the institutional setup of the EPC that the EPO and the national courts (which includes the UPC) will have different approaches / case law on the matter.
ReplyDeleteI rather suspect that the clarity of (each of) the EBA's answer(s) will depend upon the questions that are posed.
DeleteIt is hard to see how the EBA could provide anything other than a straightforward answer to the question of whether, when assessing novelty and inventive step, the EPO should interpret the claims in accordance with Article 69 EPC. Either the provisions of that Article are relevant to such assessments or they are not. Other than in circumstances where the second sentence of Article 69(1) is arguably not relevant (eg where the wording of the claims is clear on its own), there is surely no room for the EBA to limit the applicability of that sentence only to certain assessments of novelty / inventive step.
Rose, whether T1473/19 and T169/20 are truly divergent is a good question. Despite the catchwords of those cases spelling out very similar principles, I think that they do take divergent views on the applicability of Article 69 EPC to the assessment of novelty and inventive step.
ReplyDeleteSee, for example, point 1.2.3 of T169/20:
"The present board finds itself in agreement with the reasoning in T 1646/12 (Reasons 2.1) that the provisions of Article 69(1) EPC do not apply to the interpretation of the claims for the purpose of assessing patentability but, in view of its explicit wording, to the determination of the "extent of the protection" of the patent or patent application, i.e. the object to be examined under Article 123(3) EPC or in infringement proceedings."
Compare and contrast that view to point 3.15 of T1473/19:
"In view of all of the above considerations, the Board holds that Article 69 EPC in conjunction with Article 1 of the Protocol can and should be relied on when determining the claimed subject-matter in proceedings before the EPO."
Nevertheless, it remains to be seen whether such a clear divergence of views between T1473/19 and T169/20 will persuade the EBA to admit questions concerning the applicability of Article 69 EPC to the interpretation of the claims for all assessments of patentability.
The Board’s suggestion for a referral to the EBA in this case is surprising indeed. In point 5.1 of the communication, the Board gives a black-and-white picture of the case law of the EPO as to whether the claims should be interpreted in the light of the description, in the form of two lines of case law. This looks like a distorted view, the case law is much more nuanced.
ReplyDeleteThe case at hand illustrates a situation where, the description provides a dictionary for the terms of the claims. As stated in CLB II.A.6.3.3,: « In several decisions the boards have stated that terms used in patent documents should be given their normal meaning in the relevant art, unless the description gives them a special meaning (see e.g. T 1321/04, T 1089/11, T 25/15, T 1844/15). According to the established case law, the patent document may be its own dictionary (see e.g. T 311/93, T 523/00, T 1192/02, T 61/03, T 1321/04, T 1388/09, T 2480/11, T 1817/14). »
This is quite clear and it is difficult to understand a justification for a referral for the EBA. The Board’s suggestion offers no specific explanation for why such « established case law », based on so many decisions, should be questioned.
The explanation could be that a referral would affect the potential referral T 56/21 regarding the adaptation of the description, based on the argument that this issue would be indirectly influenced by the role of the description for the interpretation of claims.
As to T 56/21 (EP3094648), I can mention that anonymous two third party observations have been submitted on November 24, citing a number of articles published by colleagues in epi information and CIPA Journal, including one I have authored, all challenging the adaptation requirement.
Frances, whilst I agree that the case law is nuanced, it seems to me that the problem identified by the Board highlights an inherent contradiction between different lines of "established" EPO case law. That contradiction arises in situations where the EPO believes that the claims do not contain any ambiguous terms.
DeleteUnder one line of case law, the patent can serve as its own dictionary. See the CLBA at II.A 6.3.3:
"In several decisions the boards have stated that terms used in patent documents should be given their normal meaning in the relevant art, unless the description gives them a special meaning (see e.g. T 1321/04, T 1089/11, T 25/15, T 1844/15). According to the established case law, the patent document may be its own dictionary (see e.g. T 311/93, T 523/00, T 1192/02, T 61/03, T 1321/04, T 1388/09, T 2480/11, T 1817/14; see also in this chapter II.A.6.3.5; as to the limits of this, see T 2221/10, summarised in this chapter II.A.6.3.1)."
However, under another line, the EPO will not interpret the claims by reference to any "unusual" definitions in the description. See the CLBA at II.A 6.3.1:
"A discrepancy between the claims and the description is not a valid reason to ignore the clear linguistic structure of a claim and to interpret it differently (T 431/03) or to give a different meaning to a claim feature which in itself imparts a clear credible technical teaching to the skilled reader (T 1018/02, T 1395/07, T 1456/14, T 2769/17).
In T 2221/10 the board referred to established case law according to which the description can be used as the patent's "dictionary" to assess the correct meaning of ambiguous terms used in claims (see in this chapter II.A.6.3.3). However, if a term used in a claim has a clear technical meaning, the description cannot be used to interpret such a term in a different way. In case of a discrepancy between the claims and the description, the unambiguous claim wording must be interpreted as it would be understood by the person skilled in the art without the help of the description. See also T 2328/15 and T 1642/17."
Personally, I am not persuaded that the decision in T 2221/10 resolves the contradiction. Indeed, I believe that the contradiction is emphasised by the different approach that the EPO takes when assessing post-grant amendments for extension of the scope of protection. See again the CLBA at II.A 6.3.1:
"Any information in the description and/or drawings of a patent directly related to a feature of a claim and potentially restricting its interpretation could not be removed from the patent without infringing Art. 123(3) EPC"
To my mind, in proceedings before the EPO, the description is either relevant for interpreting a claim or it is not. The Boards have so far got away with drawing distinctions between claims that arguably contain ambiguous terms and those that do not. However, the introduction of an ultra-strict approach to adapting the description has, in my view, made it untenable for the Boards to continue to hold that line.
Bravo, Pudding. Your final paragraph sums it up for me. Indeed "arguably". There is no limit to the talents of zealous advocate representatives to bring to light an ambiguity which not even the most conscientious ED could/should/would have spotted.
DeleteThe reality is that no claim is entirely free from a non-zero degree of ambiguity, whereby drawing a distinction between those claims that are free and those that are not is a misconceived and counter-productive endeavour. That's why the very sensible writers of the EPC deliberately excluded Art 84 EPC as an attack on validity.
The EBA ought to do its duty, screw its courage to the sticking place, and help the well-meaning but misguided TBA's out of the hole they have dug for themselves. A forlorn hope, I suspect, in which case the TBA's will just have to resort to internal debate to find a way out of the hole they are in.
I might come a bit late with my two pence of comments, but I have repeatedly said that when it comes to the application of Art 69 in procedures before the EPO, we are clearly in presence of different, not to say diverging lines of case law.
ReplyDeleteThat a board has decided to bring the matter to the EBA is to be welcomed.
The following lines of case law can be distinguished.
1) No recourse to the description
T 175/98, T 515/19, T 2370/16, T 1778/17, T 1583/17, T 21/16, T 1853/19, T 19/18 or T 1989/18
2) Interpretation of the claims in the light of the description under Art 69
T 16/87, T 416/87, T 684/95, T 587/95, T 942/96, T 275/10, T 1473/19, T 450/20
2a) Recourse to the description only in case of ambiguity
T 481/95, T 169/20
3) Neither one nor the other
T 274/94, T 1271/05, T 2309/11, T 42/22 Use of Art 69 in opposition
T 42/22 A bit of both
4) Recourse to the description only in case of ambiguity, cf. T 481/95, T 169/20.
5) Use of Art 69 only in opposition when assessing Art 123(3), cf. T 1271/05, T 131/15 or T 42/22.
6) Use of Art 69 only when assessing IS, cf. T 274/94.
The list is not exhaustive. Just examples are given.
Specific decisions
In T 367/20 the board even considered that the description should be taken into account when deciding on the non-infringement of Art 123(2). The same board also issued T 450/20 which was a continuation of T 1473/19, again from the same board. In T 450/20, taken by the present board in a different composition, the proprietor requested that in view of T 1473/19, some questions concerning claim interpretation be referred to the EBA. The board rejected the request for a referral as the quetions were too specific to the case.
All those decisions have been commented in another blog. When commenting T 1473/19, I noted that wanting to always interpret the claims in the light of the description is the usual way to deal with claims at the German Federal Court (BGH).
It is therefore debatable whether this approach should be taken over by the EPO, even with the proviso expressed in T 1473/19 that the primacy of the claims limits the extent to which the meaning of a certain claim feature may be affected by the description and the drawings.
I have also always considered that a referral only on the adaptation of the description, would not be as useful as a referral on the application of Art 69.
That a referral to the EBA always entails a certain risk, either to get an answer which is not wished by the majority of the users, not really useful, or that the question are reformulated by the EBA in order to get a political wished answer. Dynamic interpretations are always subject to caution as they are too much dependent on the “zeitgeist”.
@Proof of the pudding
ReplyDeleteThe principle of claim interpretation during examination is clearly formulated e.g in T 2502/19 :
"The board does not share the appellant's view. Rather, the claims should be taken by themselves, i.e. without relying on the description and drawings, and tested against the broadest possible or objectively reasonable construction which would occur to the skilled reader. This is because Article 84 EPC stipulates that the matter for which protection is sought is defined by the claims. It does not require to rely on any other part of the application documents."
The same is expressed in other recent decisions (T 2764/19 and T 1705/17).
The USPTO applies the same interpretation principle (MPEP 2111)
This assumes the terms of the claim are clear. The patent at hand is an example where the term « gathered sheet « is not so clear and the lack of clarity was cured by the specific definition provided in the description for this term.
What is clear from the case law is that an unclaimed feature disclosed in the description cannot be relied upon to distinguish the claimed subject matter over the prior art. This would be an inadmissible « interpretation », to take the word in the sense of Art 69. It is up to the applicant to amend the claim so as to make the unclaimed feature a claim limitation having legal effect.
Naturally, the description and the drawings if any are generally necessary for skilled readers to gain understanding of the terms of the claims. But this is to be distinguished from an « interpretation » allowing unclaimed features to be taken into account in the assessment of patentability conditions.
Frances, I understand perfectly that Art 84 EPC requires the claims to be clear on their own, with the consequence that any "unusual" definition provided in the description ought to be incorporated into the claims if it is necessary to distinguish the claimed invention over the prior art. However, I was not seeking to challenge that point of view.
DeleteIf you think about it, all that the above-mentioned requirement stemming from Art 84 EPC demands is that, to avoid any room for doubt, the claims should be explicitly aligned with any "unusual" definitions provided in the description. However, that merely reflects a principle underpinning the concept of clarity. That principle is therefore aimed at facilitating (an internally consistent) interpretation of the claims and not providing any rules for how the claims should be interpreted.
To my mind, interpretation of the claims should be approached in a consistent manner, regardless of whether the claims are being interpreted for the purpose of:
(a) determining the subject matter claimed, during a pre-grant assessment of the patentability of that subject matter;
(b) determining the subject matter claimed, during a post-grant assessment of validity; and
(c) determining the subject matter disclosed, during the assessment of the patentability / validity of claims of a later-filed patent (application).
For the purpose of (c), I think that it is clear that the skilled person would read and understand the disclosures of a published patent (application) by considering the disclosure of that document as a whole. This means that, should a prior art patent (application) provide an "unusual" definition for a term used in the claims, those skilled in the art would take that definition into account when determining the subject matter that is disclosed by that prior art document.
At this point, I think that it helps to consider a prior art patent (application) that:
- defines an invention in the description and the claims using identical wording; but
- contains, in the description only, an "unusual" definition of a term used in the claims.
If the "unusual" definition (of X) is expressed in terms such as "By X we mean...", it is hard to see why those skilled in the art would ignore that definition when determining which subject matter is disclosed by the claims. That is, it is impossible to imagine those skilled in the art concluding that, despite defining the invention in identical terms, the description and claims of the prior art patent (application) actually disclose different subject matter.
Relying upon the description to interpret the claims is really only an expression of the overriding principle of interpreting a disclosure of a document in the relevant context. For this reason, whilst I acknowledge that the EPC affords primacy to the wording of the claims, I do not think that it is correct - even where the claims are arguably clear on their own - for the EPO to ignore (whether pre- or post-grant) "unusual" definitions that the patent applicant clearly intended to form part of the definition of their invention.
@ Proof of the pudding
DeleteIrrespective of the application of Art 69, I have a question:
If the claim defines a ventilator and the description defines a ventilator as a device for only blowing hot air, is an opponent entitled to come up with a standard ventilator, i.e. a device for blowing air, irrespective of its temperature, in order to raise a novelty objection?
If the answer is NO, then there is something wrong in your reasoning. It is then too easy for the proprietor to conceal the true meaning of its claim if it would be allowed to use such tricks.
The claim mentioning a ventilator has to be amended before grant in order to have proper support of the granted claim by the description as originally filed, that means it ought to be limited to what has been actually disclosed.
If you are trying to figure whether there are any serious flaws in my arguments, I am not sure that you have identified the best (hypothetical) example to test that point.
DeleteBased upon established principles of claim interpretation, it seems to me that even a claim incorporating the description definition of "ventilator" would not be construed as limited to a machine that only blows hot air. See, for example:
https://www.epo.org/en/legal/guidelines-epc/2023/f_iv_4_13_1.html
A propos gathered, it was only the definition in the description which rendered the claim unclear. The pre-grant solution? Either delete the definition or insert it into the claim. The solution after grant? Is there one? Should there be one?
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