Discrepancies in the description should be amended in line with the claims, but do not affect interpretation of the claims (T 0447/22)
T 0447/22 is another addition to the debate over how much the description of a patent should be used to interpret the claims. The case considers two issues that may soon be referred to the Enlarged Board of Appeal (EBA): claim interpretation and adaptation of description. The Board of Appeal in this case found that inconsistencies between the description and the claims can be ignored in claim interpretation, whilst simultaneously defending the need for adaptation of the description to the claims for purposes of clarity.
Construing the claims in view of the description
T 0447/22 related to an opposition of the granted patent EP2425173 for a device for renovating pipes. The patentee also brought infringement proceedings in Germany against the opponent. Claim construction was a key issue in the opposition case.
Claim 1 as granted specified a "[a] machining device for machining the material of a pipe system". The device was defined as comprising a) protruding parts, b) means for removing a material and c) a steering device. A key question on appeal was the meaning of the term "steering device". The patentee argued that the steering device did not necessarily have to be different to the protruding parts. In support of this interpretation, the patentee pointed to parts of the description which mentioned that the protruding parts could also act to steer the device. According to the patentee, a claim did not require there to be a separate "steering device".
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| Pipes |
The Board of Appeal noted the "extensive body of case law of the Boards of Appeal" according to which a claim may be interpreted with the help of the description (r. 13.1). It was clear to the Board of Appeal that "[t]t is a general principle applied throughout the EPC that a term of a claim can be interpreted only in context. The claims do not stand on their own, but together with the description and the drawings they are part of a unitary document, which must be read as a whole" (r. 13.1).
However, the Board of Appeal also noted that there are certain limits to this general principle that the claims should be interpreted together with the description. Namely, the description cannot be used to "read into the claim features appearing only in the description". In other words, the description cannot be used as a repository of definitions that can be used to change the meaning of otherwise clear claim language, as "[t]his would not be to interpret claims but to rewrite them" (r. 13.1). As such, "in the event of a discrepancy between the claims and the description, those elements of the description not reflected in the claims are not, as a rule, to be taken into account for the examination of novelty and inventive step" (r. 13.1).
In the case in question, the Board of Appeal found that the passages in the description indicating that the protruding parts may act as the steering device could not be used to alter the meaning of the claim. As such, for the Board of Appeal the term "steering device" in the claim required there to be "an actual physical component of the machining device which is adapted for actively controlling the direction of the machining" (r. 12). The claim language therefore required there to be protruding parts that were separate and distinct from a steering device.
In the national infringement proceedings, the claims were construed differently. The Regional Court of Düsseldorf found that the protruding parts specified in the claims could also be the steering device. However, the Board of Appeal did not think a decision by a national court was sufficient reason for it to alter its own conclusions (r. 13.7). The Board of Appeal concluded: "the present case is one where the interpretation of a claim in the light of the description reaches its limits". Particularly, incorporating into the claim the features provided in one embodiment described in the description could "only lead to a technically discrepant claim interpretation which the skilled person would be unwilling to adopt and would actually deprive the claims of their intended function" (13.6).
Under the interpretation of the main request by the Board of Appeal, claim 1 of the main request was found to lack novelty in view of the cited prior art. Claim amendments submitted as an auxiliary request were considered novel and inventive.
The requirement to adapt the description post-grant
The Board of Appeal also had to consider whether an auxiliary request submitted by the patentee should not be allowed because it was inconsistent with the description. The opponent particularly argued that the description should be amended in line with the Board's narrower interpretation of the claims, i.e. that the steering device should be physically distinct from the protruding parts specified in the claim.The opponent argued that the patentee had not made all the amendments necessary to the description required by the claim amendments of the auxiliary request. However, the Board of Appeal did not agree. For the Board of Appeal, the passages of the description identified by the opponent contained inconsistencies with the claims that were present on grant. As such, the lack of clarity did not newly arise as a result of the post-grant amendments. As such, the Board of Appeal found that the opponent's request to revoke the patent due to the absence of further amendments to the description, lacked legal basis and must be rejected (r. 86).
The Board of Appeal thus remitted the case to the opposition division with the order to maintain the patent as amended on the basis of the auxiliary request.
Final thoughts
The Board of Appeal in this case was unequivocal that, under the prevailing case law of the Boards of Appeal, inconsistencies between the description and the claims render the claims unclear under Article 84 EPC. The decision in T 0447/22 nonetheless provides some comfort by confirming that a lack of conformity between the description and the claims cannot be used to revoke a granted patent if this lack of conformity existed at grant. We await the expected referral (or referrals) to the Enlarged Board of Appeal around the issues of adaptation of the description and claim interpretation.
Despite defending the need for the description to be amended in line with the claims under Article 84 EPC, T 0447/22 also undermines the practical importance of such a requirement. The Board of Appeal admitted that "those elements of the description not reflected in the claims are not, as a rule, to be taken into account for the examination of novelty and inventive step". Therefore, whilst the Board of Appeal accepted that there were clear discrepancies between the granted claims and the description, leading to a lack of clarity under Article 84 EPC, the Board of Appeal found that these discrepancies nonetheless had no impact on claim interpretation or the consequent validity of the patent. What mattered was the wording of the claims. If discrepancies between the description and the claims can be ignored in this way, why does the EPO continue to feel the need to get on its high horse about description amendments?
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)
- Will we have a referral on using the description for claim interpretation or is the Board of Appeal jumping the gun? (T 439/22) (Jan 2024)
- Don't shoot yourself in the foot: European file history in US patent claim interpretation (K-fee v Nespresso) (Jan 2024)
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)
- Deletion of claim-like clauses: Board of Appeal finds legal basis for adaptation of the description from "the EPC as a whole" (T 0438/22) (Jan 2024)
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The logical flaws and inconsistencies in the EPO’s approaches to Art 84 and Art 69 EPC number more than a few.
ReplyDeleteFirstly, the majority line of case law adopts the position that the “principle of the primacy of the claims” means that, where the claims are clear enough on their own, the description should not be used to interpret the claims. As I have commented on another blog (https://blog.ipappify.de/t-1628-21-on-the-application-of-art-69-in-procedures-before-the-epo-when-it-comes-to-interpretation-of-the-claims/) this can lead to situations where the EPO affords different meanings to the same wording of the same claim, depending upon whether that claim is present in:
- an application or patent that is the subject of proceedings before the EPO; or
- an application or patent that is prior art for a later case that is the subject of proceedings before the EPO.
Secondly, the majority line of case law asserts that “inconsistencies” between the description and claims should be eliminated, on the grounds that they “could cast doubt on the extent of protection conferred by the patent>”. This is problematic for at least four reasons.
(a) The EPO’s approach to interpreting the claims (discussed above) means that they only determine the plain meaning, as opposed to the intended meaning. According to consistent case law of multiple national courts, only the latter is correct (and is, in fact, what Art 69 EPC and its Protocol demand). Thus, adapting the description to what is likely to be the wrong interpretation of the claims is liable to generate grounds for invalidity due to addition of subject matter.
(b) The majority case law permits “support” objections under Art 84 EPC to be raised on a purely hypothetical basis, and without proper reasoning. All that need be asserted is that an alleged inconsistency could cast doubt upon the scope of the claims, not that it actually does so. However, as illustrated by the decision in T447/22, the presence of alleged “inconsistencies” does not necessarily cast doubt upon how the claims should be interpreted.
(c) It is well-established case law of the EPO that the claims must be clear on their own. The reasons given for this (see https://www.epo.org/en/legal/case-law/2022/clr_ii_a_1_1.html) essentially relate to legal certainty, with the Boards explaining that:
- the purpose of the claims is “to enable the protection conferred by the patent to be determined”)
- “The public should not be left in any doubt as to which subject-matter is covered and which is not”; and
- “The skilled person should be able to establish the demarcation of the scope of the claim (i.e. its extent of protection) without undue burden”.
Thus, if the EPO is satisfied that a claim set complies with the clarity requirement of Art 84 EPC, this would appear to preclude any subsequent assertion that there is any “doubt as to which subject-matter is covered and which is not”.
In other words, the EPO’s own case law contradicts both the theory and (as illustrated by T447/22) the practice behind Art 84 EPC support objections.
(d) The EPO may interpret the claims. However, with the possible exception of cases where issues under Art 123(3) EPC arise, it never determines the extent of protection conferred by the claims. It is therefore nonsensical for the EPO to worry about hypothetical issues relating to a matter (the extent of protection conferred by the claims) upon which it makes no determination and, frankly, is beyond its remit.
All of the above simply deepens the mystery of why the EPO is so insistent on sticking with its description adaptation practice. Cui bono? The only answer to this question that I have is: certainly not patent applicants or proprietors!
I would have thought the fact that the Regional Court of Düsseldorf found that the protruding parts specified in the claims could also be the steering device (and that an expert opinion submitted during the subsequent appeal proceedings also found that the protruding parts could be the steering device) would be evidence that the claims are unclear enough to allow interpretation using the description.
ReplyDeleteIt seems very arrogant of the board to state that the claims would have a single clear interpretation to the skilled person when another court and an expert came to a different interpretation.
@ Anonymous of 20.03.2024 at 09:23:00 GMT
ReplyDeleteWhere is there any arrogance to be seen in the fact that the BA of the EPO has come to a conclusion which does not correspond to that of another court and of an expert mandated by this court. The courts are independent from each other and they are perfectly entitled to come to different conclusions on the same case. This goes in both directions.
When it comes to the validity of a claim, the last word lies with the BA after appeal in opposition. This is how the European Patent system has been conceived. It might not correspond to the views of a national court, but that is how it is.
A national court might conclude to infringement, but once the BA has decided to revoke the European patent or to maintain it in amended form, this decision is applicable in all contracting states of the EPC in which the European patent has been validated.
I would also like to observe that a BA does not have to resort to an expert opinion as it is always composed of two technical and one legal member. This is not the case in German courts only composed of legal members.
I find the conclusion of the BA much more convincing than that of the German courts supported by an expert opinion. The protruding parts cannot be considered as steering device. The protruding parts are simply allowing the device to follow the course of the pipe and cannot do anything else.
The steering device can, as stated by the BA, change the direction of travel. This is the more so as the protruding parts and the steering device were defined in separate features of claim 1.
For the surplus, I have commented T 447/22 in another blog.
Of course the courts and BoA are entitled to come to a different opinion about what the claim means. Nothing arrogant in that.
DeleteBut if another court and expert came to a different opinion, it seems arrogant to insist that the claims are perfectly clear such that no resort to the description is necessary. If they were truly so clear, how did a different court/expert manage to read them differently?
It may surprise you, but I happen to agree with you that there was no "arrogance" on the part of the Board in reaching a different conclusion on claim interpretation to a different (quasi-)judicial instance. Such differences of opinion between different instances are commonplace.
DeleteHowever, I believe that Anonymous may be right to criticise the manner in which the Board chose to interpret the claims. Sticking to the plain meaning (instead of the intended meaning) of the wording of the claims might accord with established EPO case law. However, that is not what Art 69 EPC and its Protocol demand. In this respect, the interpretation adopted by the Regional Court of Düsseldorf is arguably more (legally) correct than that adopted by the Board.
I can understand the EPO's reasons for preferring, even post-grant, interpretations based upon the plain meaning of the claims. That will have been the meaning used throughout examination at the EPO. Thus, any different or broader meanings might well encompass "unexamined" subject-matter. However, that is the inevitable result of a pragmatic decision taken by the EPO not to apply all aspects of Art 69 EPC in order to simplify examination proceedings. In my view, the Boards (and ODs) should learn to live with those results, rather than doggedly stick with incorrect claim interpretations (i.e. interpretations that, at best, are based upon only partial application of Art 69 EPC).
@ Doubting Thomas
DeleteThe whole discussion here turns around whether Art 69 is to be applied in all procedures before the EPO or only when it comes to assessing the requirements of Art 123(3). In this respect, I hope that a referral to the EBA will sooner or later help clarifying the situation.
Even if I would follow you about the “intended meaning”, whatever this expression might cover, I do not agree with you that the board stuck with an incorrect claim interpretation.
That as a proprietor, you want to push the limits of your interpretation in order to catch a potential infringer is understandable. This is not an aim for the EPO.
The analysis of the board of the whole disclosure is technically coherent and does not encompass "unexamined" subject-matter. With the best will, the protruding parts cannot be equated with a steering system. For the surplus, I invite you to look at my replies to Anonymous and to Kant.
Mr Thomas, I would be grateful if you could stop telling me what my motivations are for taking certain positions. That kind of mansplaining is the height of rudeness.
DeleteMy motivation is not to push any limits of interpretation, but rather to ensure that patents either stand or fall based upon the correct interpretation of the wording of the claims. By “correct interpretation” I mean the interpretation:
- derived by application of all of the provisions / principles of Art 69 EPC and its Protocol; and
- in which the words used in the claims are afforded their intended meaning, i.e. the meaning that results from giving due consideration to both context (provided by the application as filed) and the inventor’s purpose.
Even by your own admission, it is very clear that the EPO does not (routinely) interpret the claims in this way. For example, the Board in T447/22 essentially arrived at an acontextual interpretation of the “steering device”. This is evident from the Board’s:
- reliance upon an alleged “natural reading” and a “generally accepted meaning” (see points 10 and 11 of the Reasons); and
- refusal (at point 13.2 of the Reasons) to take account of relevant context in the form of a clear pointer in the description to a different meaning of “steering device”.
I have no doubt that the approach to claim interpretation adopted by the Board accords with a long line of case law, in particular case law indicating that the description cannot be used to impart a different meaning to terms of the claims that have a clear or generally accepted meaning. However, this does not change the fact that such an approach to claim interpretation is not strictly correct. This is because it does not take due account of context and purpose and does not apply all of the provisions / principles of Art 69 EPC and its Protocol. For reasons that I have explained at length, both here and elsewhere, this can lead to absurd and unjustifiable results.
Here is an example of the UK Court of Appeal using the description to construe a claim in a validity-only case.
Deletehttps://caselaw.nationalarchives.gov.uk/ewca/civ/2024/276
@ Kant,
DeleteIn a first third party observation on behalf of Manitou, it was communicated to the EPO that the French and Italian part of EP 2 263 965 had been declared invalid.
Eventually the request for limitation filed by JCB was rejected, following further third parties observations on behalf of Manitou.
The French and Italian decisions correspond to that of the High Court of Justice. It is not known whether those decisions were appealed in France or Italy.
It is interesting to note that in the case referred to in your comment, the appeal decision overturned the decision of the High Court of Justice.
I do however fail to see any reference to Art 69 EPC in the decision of the Court of Appeal.
It is thus difficult to follow why this decision, in which any reference to Art 69(1) and its Protocol is missing, to be a reference to be used in the present discussion.
Maybe paragraph 69?
DeleteToday I read the JCB appeal court decision and found in it a nice example of an entire case turning on just one word in claim 1. Here "disable". One would think the word clear. One would think there is no need for an Art 84 EPC objection to it during pre-grant prosecution. Only when the prior art doc "Aichi" is applied for the first time, in a petition to revoke the patent, does it emerge that "disable" can be construed in two different ways.
DeleteThus, the case is a helpful reminder that it is a futile pursuit of the EPO, to suppose that in ex Parte pre-grant proceedings it can anticipate every objection to the clarity of every word in claim 1 of the patent in suit.
Of the two meanings of "disable" the court of first instance jumped one way and the court of appeal (CA) the other. What consideration was it, that persuaded the CA to jump the other way? Why, the technical purpose of the act of disabling. And how to divine that purpose? Look at the specification.
For me, the CA decision (from the very experienced patentJudge Colin Birss) got it right. Obviously, the judge was helped enormously by the content of the file of litigation, the argument over the facts, right up to that point. How often does a TBA at the EPO see the case differently from the OD? How every tribunal other than the English CA got it wrong, I don't understand. Perhaps by construing the patent in suit differently from any other document, by taking the claim in isolation rather than in the context of the description?
I'm grateful to Kant for flagging up the case. Despite its failure to include the magic words "Art 69, EPC" I still see it as very relevant to the debate about how to construe a claim at the EPO, both before and after grant.
Haven't done any more than skim the case report but when I read "steering" and "protruding parts" my mind strays to the protruding whiskers on the face of the cat in the illustration. I contrast them with the protruding flange on the wheels of a rail vehicle and ask myself whether such a flange is a steering means. When the patent muses that a protuding part can be used as a steering means, I imagine the writer had in mind something like a cat's whiskers as opposed to a feedback-free protuding flange on the wheel of a rail vehicle. They are qualitatively different, aren't they?
ReplyDelete@Anonymous of 21.03.2024 at 08.06.00 GMT
DeleteI can agree that the protruding flange on the wheel of a rail vehicle is different from cat's whiskers, but my agreement stops there.
The wheel flange of a rail vehicle acts as a guide, for instance when the rail vehicle goes along a bend or when it goes over a switch. In those situations, the wheel flange is not feedback-free as it guides the wheel along the rail head. There are even flange lubrications systems so as to reduce friction between the rail head and the flange when going along a bend or a switch.
Cat’s whiskers are “mounted” on the cat’s head which is quite flexible and can change directions very easily. Cat’s whiskers are thus in no way comparable with the “protruding parts” in the claim.
The protruding parts in the claim are comparable to the wheel flange. They guide the device like the wheel flange of a rail vehicle does. The path followed by the protruding parts (or the wheel flange) is given by the small pipe in which they are pushed (like the wheel flange follows the rail head).
The path followed by the protruding parts cannot be changed. There is thus no steering in the usual meaning of this word. The protruding parts guide the device in the pipe. This is not to be confused with an actual action of steering.
In the claimed device, it is the steering system, and only the steering system, which enables the whole device to change direction. Furthermore, the change of direction is only possible when the device comes into a large pipe. As long as the device is in the smaller pipe, there is change of direction in the sense of a steering. Just look at the figures I have given in my two blog publications.
It appears to me that there was no reason for the Board to discuss the meaning of feature c) in such detail as the decision was not dependent on whether features a) and c) could be provided by the same entity or not. By setting out its opinion, the Board was acting ultra vires in a case where it knew that a national court had already expressed its opinion and as such would have been well advised to reach its decision without discussing issues irrelevant for the case is hand.
ReplyDelete@ Kant
DeleteIt was the patentee’s interpretation of the claim which was adopted by the national court following the “expert” opinion. That the board came to another conclusion is thus perfectly legitimate.
The steering system (c) is quite distinct from the protruding parts (a). The function of the steering system is quite different from that of the protruding parts which are only guiding but by no means steering. See my reply to “Anonymous”.
Keeping the rotational axis of the machining device along the longitudinal axis of the pipe, cannot be said that it is for steering the machining device. At best it is for guiding the machine device before it cuts a hole in the other pipe.
Be it only by a different choice of terms in the claim, the proprietor must have had a different meaning in mind meaning and function between the two features. The few places in the description, e.g. § [0019], [0030] and [0037], in which the proprietor claimed that the protruding parts “steer” the whole device do not appear correct.
Claiming that the board acted ultra vires appears thus misplaced. In my opinion, the opinion of the national court does not resist a technically reasonable interpretation of the whole disclosure.
The interpretation of the claim proposed by the patentee was that claim 1 could be read onto an arrangement whereby features a) and c) could be satisfied by the same entity, such that the claim had a narrow interpretation and a broad interpretation. The opponent and the board considered that only the narrow interpretation was applicable.
DeleteSince the board held that the narrow interpretation was not patentable, there was no reason for them to enter into this discussion because it could not affect the decision, hence ultra vires.
I wonder what the discussion would have been like if a granted dependent claim recited that features a) and c) were the physical same entity.
@Doubting Thomas
ReplyDeleteReferring to the requirement to remove inconsistencies between the description and the claims, the 2024 draft revision of Guideline F-IV 4.3 includes a welcome change. It states : « Any inconsistency between the description and the claims must be avoided if it casts doubt on the subject matter… » . The wording « if it casts doubt » (present tense) replaces the former wording « if it could cast doubt » (hypothetical). Importantly for applicants and for consistency between the PCT and EPO Guidelines, this would make the wording of the EPO Guideline closer to the PCT ISPE Guidelines 5.29. It clarifies that the onus is on the Examining Division to show by specific reasoning that the inconsistency does cast doubt. This is especially significant for amendments entered by the ED at the 71(3) stage. Let’s hope this is the signal that the EPO management has begun to retreat on this issue.
As to 71(3) amendments, it is to be pointed out that Guideline C-V 1.1 states : « This text may include amendments and corrections made by the examining division on its own initiative which it can reasonably expect the applicant to acccept. The applicant should be contacted by telephone or an official communication has to be written. » This principle is at loggerheads with an authoritative implementation of Rule 71(3) by EDs imposing amendments the applicant is unlikely to accept, without prior communication, which amounts to arm-twisting the applicant.
Furthermore, as stressed by Rose in her final thoughts, T 447/21 Reason 13.1 makes it clear that the principle of the primacy of claims implies that such description amendments as disclaiming clauses or deletions of unclaimed embodiments are irrelevant to the interpretation of claims for the examination of novelty and inventive step, provided the wording of the claims is clear. Note that if they were relevant of interpretation, there could be a new matter issue in court proceedings, based on the argument that such amenments have altered the interpretation of the claims.
The more recent T 1628/21 reported by Mr Thomas on his blog (delivered by a different BOA than T 447/21 with different members) in on the same line.
In T 1628/11, the Board affirms (Reason 1.1.16) the principle of the primacy of the claims over the description under Art 69 and the weight of the CGK in the interpretation. No limitation of the claims can be based on the description. If the patent owner wants to rely in their argument on unclaimed features, they have to amend the claims to include these features.
The Board states (Reason 1.1.2) that « a claim should be interpreted as broadly as technically reasonable in the relevant art ». This is a very important clarification, since this rule exactly matches the rule of the settled case law applicable to the examination of applications.
The Board further addresses in Reasons 1.1.19 and 1.1.20 the weight to be given to the « disclaiming clauses » (examples « which do not form part of the present invention ») introduced by the applicant and/or before grant, by the ED at the 71(3) stage. The Board clearly holds that such disclaiming clauses cannot be used by the patent owner to try to limit the claims. What matters is the language of the claims, assuming they are clear in themselves. This implies that such clauses are ineffective, and that the EPO current practice of requiring such clauses (or the deletion of the examples from the description) is unjustified.
Getting back to the draft 2024 revision of the Guidelines, please note that you have the opportunity to submit comments until April 2.
Comments will be shared within the SACEPO working group on quality, which is a joint group including EPO personnel and appointees of users’ representative associations.
As far as I am concerned, I plan to submit comments at least on the Guidelines sections relevant to the adaptation of description issue.
Good to read (thank you, Francis Hagel) that the draft of the 2024 Guidelines has "if it casts doubt" instead of "if it could cast doubt". What discussions have taken place, I wonder, between the drafters of the Guidelines and EPO Quality Management, about this seemingly innocuous but in fact highly significant change of wording.
DeleteYou see, I doubt whether individual EPO Examiners feel strongly about the imperative perfectly to "conform" the description to the allowable claims. I suspect they are under pressure from Quality Controllers to see that perfection is achieved. For me, the most encouraging thought about the editing of the 2024 Guidelines draft is that it might indicate that all the criticism from outside the EPO has given the Quality Controllers in the background pause and prompted them to take a step back. If the pressure on Examiners from EPO management on this specific issue is eased, the way is clear to restore commonsense and a more harmonious working relationship between representatives and Examining Divisions. Hooray!
Mr Hagel, thank you for your comments.
DeleteRegarding amendments made by the ED at the 71(3) stage, my experience is that this is all too common, including in situations where it ought to be abundantly clear that the applicant would not, of their own accord, have chosen to make the amendments in question. The practice set out in the GL at C-V 1.1 therefore seems to be honoured more in the breach than in the observation.
In this respect, whilst the changes to the GL at F-IV 4.3 should signal a change of EPO practice, you will forgive me if I am a little sceptical about whether this is what will actually happen. The problem as I see it is that it will be all too easy for an ED to simply assert, without explanation, that an alleged "inconsistency" casts doubt upon the extent of protection conferred by the claims. In other words, and whilst I really do hope that I am wrong, I believe that the most likely outcome will be a change in form (i.e. how the examiners express support objections) rather than a change in substance.
Question: have you ever seen (or heard of) a case in which an ED provided a reasoned explanation of why an alleged "inconsistency" cast doubt upon the scope of the claims? I have not. Indeed, it would be interesting to see how an ED might explain away the inherent contradiction between:
- an ED alleging that certain “inconsistent” disclosures in the description cast doubt upon the scope of the claims; and
- the fact that the ED was itself able to determine that the claims undoubtedly do not encompass the alleged “inconsistent” disclosures in the description.
For me, this contradiction arises because the EPO’s practice improperly uses support objections under Art 84 EPC as a surrogate for clarity objections. If the disclosures of the description cast doubt upon the scope of the claims, then that is surely a matter of clarity. The logical flaws that illustrate the EPO’s confused thinking on this issue include those at (c) and (d) of my comment from 19 March.
Regarding my question to you, it seems that T 1695/21 provides a timely illustration of the offhand (and largely unreasoned) manner in which the EPO’s Boards can demand amendments to the description based upon the support requirement.
Deletehttps://www.epo.org/de/boards-of-appeal/decisions/t211695du1
https://blog.ipappify.de/t-1695-21-necessity-of-the-adaptation-of-the-description-in-opposition/
In point 3.1 of the Reasons, the Board in T 1695/21, the Board identifies passages in the description (including paragraphs [0008] to [0010] and [0055]) which relate to subject matter falling outside of the scope of the claims. The Board then reasons that:
“The person skilled in the art understands paragraphs [0009] and [0010] of the description according to the main application to mean that the task mentioned in paragraph [0008] is solved by the subject matter of claims 1 and 6. However, it is not clear from this that embodiments in which the first colour is generated in scattered light are not in accordance with the invention. This causes an inconsistency with the invention defined in claims 1 and 6 of the main request (see in particular feature 1.7a) and therefore violates Article 84 EPC”.
Thus, the mere absence of a clear distinction in the description between claimed and non-claimed subject-matter creates an “inconsistency” that violates Art 84 EPC. I am sure that Mr Thomas would agree. However, you will note that the Board did not even attempt to explain why the alleged inconsistencies cast doubt upon the scope of the claims (which the Board clearly had no trouble interpreting, despite the existence of “inconsistencies” in the description).
This poses another question: if the Boards are essentially going to stick with the practice set out in the previous GL, is there a chance that the amendment at F-IV 4.3 might ultimately prove ineffective?
Mr Hagel,
DeleteI can agree with you, and I have said it many times, that amendments at the R 71(3) stage are a disgrace and are not acceptable. It is the good right of an applicant to refuse them.
I will not come as a surprise that I do disagree with you when it comes to the primacy of claims. It is not because primacy of claims is a kind of red line for lots of boards, that description amendments as disclaiming clauses or deletions of unclaimed embodiments are irrelevant to the interpretation of claims for the examination of novelty and inventive step, provided the wording of the claims is clear.
You can also be considered postulating that claims are always clear, which is, alas, not the case, and this brings about difficulties in opposition. As G 3/14 says correctly, if a clam is unclear, we have to leave with it. Then it is important to refer to the description to make head or tail of unclear features.
All applicants have to be treated on a par. Stating that, if in the view of the applicant/proprietor a claim is clear, then no adaptation is required goes simply too far.
Trying to clarify issues or features can indeed lead to added matter, but this is different from acknowledging what is prima facie covered by the claims or not.
A feature which is in an independent claim cannot be left as optional in the description. Leaving the optional character in the description is indeed casting doubt". This doubt is moreover independent whether the feature is as such clear or not! I repeat it once more, besides conciseness, Art 84 has two main prongs. Clarity as such and support.
The present case is exemplary of the interpretation of the claim as broadly as technically reasonable in the relevant art. It is, and for very convincing technical reasons, contrary to that of the Regional Court of Düsseldorf, but this is part of life’s rich tapestry. I refer also to my comments to Anonymous, Kant and Doubting Thomas.
@Doubting Thomas and @Anonymous
ReplyDeleteLooking at Guidelines F-IV .3 and C-V 1.1 in combination, both binding on the EDs, the burden of proof on the ED is not only to provide a reasoned explanation as to why an inconsistency casts doubt on the claimed subject matter but also to ensure the amendment is one the ED can reasonably expect the applicant to accept. The latter is in line with the principle that the applicant is ultimately liable for the content of the granted patent (as we all know, the EPO incurs no liability, even if an amendment entered by the ED raises a new matter issue and makes the patent invalid).
In other words, if you challenge a 71(3) amendment by saying that you disagree, this means that the ED got it wrong when expecting you to accept, and the ED should withdraw the amendment.
In real life, applicants and their representatives frequently prefer not to challenge the amendment in view of the additional delay and costs it entails and/or because they think the amendment does not affect the scope of the claims and a challenge is not worth the effort. But I have recently heard from colleagues that challenges have become common practice.
Of course, amendments entered by the ED at the 71(3) stage which relate to the claims require very close attention. I have audited cases in which the ED had shifted the « characterised » word or deleted the word « substantially » as in « substantially vertical », simply citing Guideline F-IV, 4.7, without looking at the description to see whether « substantially vertical » was not quite clear in context for the skilled person and to check if a strictly vertical geometry was explicitly disclosed - if not, there is a new matter issue.
As to explanations for the replacement of « could cast doubt » with « cast doubt » in the Guideline F-IV 4.3, it may be that the number of challenges to 71(3) amendments has increased to a level the EPO management and quality experts have found counterproductive and an embarrassment. The displeasure massively expressed by representatives and applicants may have played a role (I hope, I was one of them). Another reason may be that as we now see, more and more BOA decisions applying Art 69 in opposition proceedings to the assessment of validity have held that deletion of unclaimed embodiments or disclaiming clauses are irrelevant to claim interpretation. Which undermines the rationale put forward by the EPO for its practice so far.
Mr Thomas,
ReplyDeleteSorry for this tardy response to your comment.
The principle of the primacy of claims in claim interpretation may be a « red line » for BOAs as you suggest. But this principle does not in any way negate the crucial and obvious role of the description and of the drawings, if any, to gain understanding of and convey meaning to the terms of the claims. Concretely, this is illustrated when there are drawings by the requirement to include in the claims reference numbers used in the drawings and the description.
There is a red line anyway, it is the well established principle that the interpretation of a claim for the assessment of patentability cannot read into the claim unclaimed features disclosed in the description. An argument based on an unclaimed feature to distinguish over the prior art, if acknowledged as convincing by the deciding body, must also be considered ineffective unless the applicant or patent owner amends the claim to enter this feature.
As to the case of a claimed feature presented as « optional » in the description, I am not surprised by your position. But I do not see this inconsistency as an issue of serious concern. When a feature is entered into a claim, it implies that it is made objectively essential and considered as such by the applicant or patent owner. This makes obsolete the presentation of the feature in the description as « optional ». And in my opinion, such a presentation casts no doubt either as to clarity (the meaning is not affected by the term « optional » in the description) or support (the feature is disclosed in the description whether presented as optional or not).
The term « optional » or equivalent terms are objectionable when they are included in a claim e.g. if the feature is preceded by such as « preferably » or « for example ».
Mr Hagel,
DeleteUse of “preferably” or “for example” in a claim is not generally objectionable. It simply means that the following feature is not limiting. A claim for a shoe, preferably a climbing shoe, means simply that the claim relates to a shoe in general and not to a climbing shoe. Such an expression is only objectionable if it introduces an ambiguity. I refer here to the Guidelines F-IV, 4.9.
As far as reference signs in the claims are concerned, their purpose is to increase the intelligibility of the claim, and they cannot be construed as limiting the claim. This does however not mean that any equivalent of the feature designated by a reference sign is part of the claim, unless this equivalent is disclosed directly and unambiguously disclosed in the description.
Leaving in the description the optional character of a feature introduced in an independent claim is, contrary to what you might think, introducing an inconsistency between claims and description.
Claim interpretation is open to national judges and they can decide as they they think fit. Nothing would withhold a national judge to nevertheless consider the feature at stake as being optional, since it is said so in the description. It is certainly not for the EPO to prescribe a national judge how it has to interpret a claim under Art 69 and the Protocol, it is simply to avoid misinterpretations at national level by removing before grant any inconsistencies between claims and description as required by Art 84, support.
Lack of clarity is neither a ground for opposition nor for nullity, hence it is important for the EPO to check, before grant, if all aspects of Art 84 are fulfilled, especially clarity and support. Carrying out this check does by no way “negate the crucial and obvious role of the description and of the drawings, if any, to gain understanding of and convey meaning to the terms of the claims”.
Mr Thomas:
DeleteIf "it is certainly not for the EPO to prescribe a national judge how it has to interpret a claim under Art 69 and the Protocol", please can you explain how it is then legitimate for the EPO "to avoid misinterpretations at national level"?
I don't see how those two positions are compatible with one another.
For starters, who determines what is or is not a "misinterpretation"? If that is the EPO, either national judges are then obliged to follow the EPO's view - which does mean that the EPO is prescribing how they should interpret the claims - or else the national judges are not obliged to follow the EPO's view - in which case the EPO's decision on what is a "misinterpretation" is completely irrelevant for national proceedings, and therefore pointless.
@ Doubting Thomas Friday 22.03.2024 at 17:42:00 GMT
ReplyDeleteI never spoke about your personal motivations for taking certain positions. There is thus nothing rude in stating that for a proprietor, which you most probably represent, it is obvious that he wishes a most extensive interpretation of the claims.
You must have misread me, as I never considered that, in T 447/22, the board in essentially arrived at an “acontextual” interpretation of the “steering device”.
My point of view is that the few passages in which the proprietor attempts to define that the protruding parts can have the function of steering are misleading to say the least. The “natural reading” and the “generally accepted meaning” of “guiding” and “steering” is that those concepts are quite different and are not to be mixed by the skilled person.
I further refer to my replies to Anonymous and to Kant about the technicalities involved.
A technically sound and correct interpretation of the claims cannot lead to absurd and unjustifiable results.
Certainly in the present case, the approach of the board to claim interpretation is absolutely correct and technically sound, and is moreover clearly in line with Art 69 and its Protocol of interpretation.
“I never spoke about your personal motivations for taking certain positions.”
DeleteIf that is the case, then I suggest that you avoid using the word “you” to refer to a third person (“That as a proprietor, you want to push the limits of your interpretation in order to catch a potential infringer is understandable”).
Perhaps also stop making lazy assumptions about the motivations of patent proprietors. It is simply not true that all proprietors want the “most extensive interpretation of the claims”. Indeed, the mere existence of the IPQC demonstrates that not all patent applicants want the EPO to grant them the broadest possible claims, irrespective of validity concerns. Not everyone acts solely in accordance with their own personal interests and without a thought to the interests of society.
Regarding the “acontextual” interpretation in T 447/22, I mentioned that to illustrate the broader point made in the preceding sentence, namely the fact that the EPO does not (routinely) interpret the claims in accordance with all of the provisions of Art 69 EPC and its Protocol.
In a post on another blog, you have expressed the view that there are diverging lines of case law regarding the application of Art 69, and that:
“Strictly speaking Art 69 is only to be used when determining the scope of protection under Art 123(3) in opposition. No other part of the EPC relies directly or indirectly to Art 69 during procedures before the EPO.”
You now express the view that “the approach of the board [in T 447/22]to claim interpretation is absolutely correct and technically sound, and is moreover clearly in line with Art 69 and its Protocol of interpretation”.
Therefore, if I follow your reasoning, you believe that:
- except for determining compliance with Art 123(3) EPC, Art 69 EPC should not be applied during procedures before the EPO; but
- an example of a claim interpretation which follows this approach (and, in your view, is “absolutely correct”) is nevertheless fully in line with Art 69 EPC and its Protocol.
All that I can say to this is that I now understand why no amount of rational analysis, or application of logic and reason, has enabled me to understand how you arrived at your current viewpoint.
Doubting Thomas
DeleteThanks for drawing my attention to my misuse of English language. I did never meant you as a person, but as representative of applicants/proprietors (or opponents), what you certainly are.
It is my true opinion that Art 69 main use should be to assess whether a claim infringes Art 123(3). Any other application of Art 69 would end up in lengthy discussions between ED and applicant/proprietor, especially if it should be applied as well to documents of the prior art.
If a granted claim is unclear, lack of clarity will not be a ground for amendment, and there is then no choice but to look at the description. In such a case, the intended meaning becomes irrelevant. What matters is the soundest possible technical meaning the skilled person could give to a feature.
If the wording of the claim does not give rise to any ambiguity, there should be no need to resort to the description, especially in order to give features in the claim a different meaning, or intended meaning, be it broader or more limiting. A feature in a claim is to be considered at face value.
Whether a national court decides later, that there is infringement by equivalents, there is nothing to say, but it it is not the role of a granting authority to look at every possible intended meaning of a claimed feature.
For example, if a claim comprises the feature “ventilator”, the skilled person understands that the feature relates to a device which moves air in a given direction. If the applicant associates in the description a heating device so that the ventilator only blows hot air, then it will be ignored when reading the claim. A piece of prior art disclosing a ventilator will be novelty destroying.
In T 447/22, the board rightly reacted to the pretence of the proprietor that, due to certain passages in the description, the guiding device could as well have a steering function. There is no acontextual reading of the description by the board to be seen in T 447/22.
The board rightly disagreed with the proprietor, since steering and guiding are two different functions and it is technically not possible to consider that the protruding parts have a steering function, even if the proprietor meant that this could be the case. By looking at the description in T 447/2, the board indirectly applied Art 69 and told the proprietor that its intended meaning was technically incorrect.
If there is one good example of the difference between an intended meaning and a correctly assessed meaning, in other words, a technically sound meaning, it is the device in claim 1 as granted in T 447/22. You could not have chosen a worse example than that in T 447/22 for illustrating what you see as a correct vs. incorrect application of Art 69.
It is abundantly clear that yours and mine viewpoints are not converging. But claiming that only you have made use of a large amount of rational analysis, or application of logic and reason, it extremely rude towards myself.
Like for Art 84, support, I said everything I had to say, and vice-versa, so we better leave it at this.
As far as Art 123(3) and Art 69 are concerned, I invite you to have a look at the recent decision T 2194/21 and the decisions discussed therein.
To be clear, I did not claim that only I have made use of rational analysis, logic or reason. The clear and unambiguous meaning of my comment was instead that the positions that you adopt on different aspects of the same topic are impervious to (my) rational / logical analysis. This is because those positions appear to me to be logically inconsistent with one another.
DeleteFor example, as the EPO’s claim interpretation practice does not (routinely) take account of Art 69 EPC (let alone its Protocol), it is illogical to assert that the results of that practice are fully in line with Art 69 EPC and its Protocol. This will only be true in those cases where there is absolutely no difference between “plain” and “intended” meaning of the wording of the claims. However, it will not be true in any other cases.
In connection with T 447/22, you state that it is “technically not possible to consider that the protruding parts have a steering function, even if the proprietor meant that this could be the case”. By “technically not possible” it appears that you are referring to the different (plain) meanings of “steering” and “guiding”, as opposed to the proprietor’s interpretation of the claims being technically unfeasible (which it was clearly not).
In this regard, your comments suggest that you believe that the correct approach to interpretation is to adopt the strict, literal meaning of the wording used in the claims. However, since Article 1 of the Protocol to Article 69 EPC warns that this is very much not the correct approach, I think that I will not be alone in questioning your assertion that your approach (or the EPO’s approach) is in fully line with that Protocol.
From your previous comments, it seems to me that you view UK case law on (purposive) claim interpretation as being informative but not persuasive (as to the correct interpretation of Article 69 EPC and its Protocol). However, are you aware of any claim interpretation case law from any jurisdiction other than the EPO’s Boards of Appeal that aligns with your view on how Article 69 EPC and its Protocol should be interpreted and applied? Given your comments on the interpretation adopted in the parallel infringement proceedings in Germany, I assume that German case law does not align with your views. However, I would be interested to learn if you are aware of relevant case law from other jurisdictions.
Mr Thomas I wonder about the extent to which you have just shot your argument in its foot when you assert that:
ReplyDelete"...steering and guiding are two different functions..."
Ask on the internet if steering and guiding are synonyms and one gets the unequivocal answer that they are. Imagine trying to get an ED to accept novelty of a claim over a prior publication when the only difference is the different words that are synonyms of each other. BUT: in the US Appeal Court Decision Medtronic vs Teleflex, dated March 21, 2024, readers are reminded that:
"..the only meaning that matters in claim construction is the meaning in the context of the patent"
How else did you come to the idea that steering and guiding functions are "different" except by construing the claim in the context of the description that supports it (and not in isolation from it)? Just like in the English JCB case, where the case turned on the meaning of one word in the claim, namely "disable", context is king. It strikes me therefore as perverse, unreasonable and unjust for an ED, prior to grant, to insist on construing a claim acontextually, even while it knows full well that after grant the claim is inevitably going to be construed in context.
Y'all need to take a break from trying to cobble together a coherent body of case law from disparate decisions of different boards of appeal based on different sets of facts.
ReplyDeleteBoards of appeal need to stop opining on the totality of the case law when deciding what a claim means - assess the facts from the perspective of the skilled person. Sometimes a reference to the description will be appropriate. Sometimes it will be helpful. Sometimes the meaning of a claim should be stretched to cover a particularly embodiment in the description. Sometimes the description discloses unclaimed subject matter. Some decisions will take one view, others will take another.
The EPO needs to stop insisting that the the description be adapted. The EPC does not require it. The requirement for the claims to be supported by the description does not require that they be co-terminus. A broader description is capable of supporting a narrower claim. This does not reduce legal certainty - a claim accompanied by a description disclosing unclaimed subject matter is highly beneficial for the public because it provides them with a pre-formed work around for the claim.
I've said it before (and frankly had no decent response from the pro-description amendments crowd) - they are reading an imaginary "only" into Art. 84. As in, the wording of Art. 84 leaves it entirely open for claims other than those on file to be supported (as a reminder: "The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description"). Art. 84 does not say that ONLY the claims on file at the end of prosecution must be supported.
DeleteThe relevant test for support is: was the claim on file at the end of prosecution supported by the description as originally filed? If yes, then the support requirement is met.
If, alternatively, one wishes to rely on the "clear" requirement mentioned in Art. 84, then this is also a dead end to insist on description amendments. Art. 84, as indicated by its title, is a requirement of the claims, not the description. The description is only referred to in Art. 84 with respect to support. It is not clarity "in light of the description", or claims to be clear "with respect to the description" or any other imaginary formulation that these overly bureaucratic zealots wish to foist upon the Applicant.
I could hardly agree more.
DeleteIt is not difficult to imagine a world where the claims seem to be clear, but nevertheless cases arise in which it can be argued one way or another that an embodiment (prior art or infringement) satisfies the requirements of the claim. In that case, a wholistic approach to determine the intended meaning of the claim, including where necessary reference to the original description and the common general knowledge, is made. It is then open to whichever panel is asked to determine whether to adopt the interpretation it considers is most likely. This interpretation will be the same for patentability and infringement (no equivalents) and then there is a question of whether there is infringement by an obvious equivalent.
None of this requires amendment of the description. Ever. Every single patent office and court has done this for decades without requiring description to conform to the claims. Amending the description does nothing to assist with the interpretation of the claims, but in fact makes the whole issue more complicated by introducing consideration of what the patentee intended to do when it amended its description.
What is the difference between:
ReplyDelete- interpreting a claim (for the purpose of assessing validity, e.g. in proceedings before the EPO); and
- determining the extent of protection conferred by a claim?
My personal understanding is that:
- for both analyses, the first step is to determine the meaning (to those skilled in the art) conveyed by the wording of the claims; and
- it is only in subsequent steps that any differences arise (e.g. comparing the meaning to the subject matter disclosed in the art vs. assessing whether the features of an alleged infringement differ in any material way from that meaning).
If this is correct, the EPO and the (national) courts of EPC Member States should all, for the first step, determine the meaning conveyed by the wording of the claims in the manner demanded by the EPC.
This means that every EPC instance / jurisdiction should useboth Article 69(1) EPC and Article 1 of the Protocol to determine the meaning conveyed by the wording of the claims. Anything else is, strictly speaking, a non-EPC interpretation of the claims.
I know that the EPO has pragmatic reasons for not following the correct approach to interpreting the claims. That is, examination becomes a much simpler (and more predictable) affair if the claims are interpreted by reference to the strict, literal meaning of their wording. Using such a “rough and ready” approach to examination, whilst non-ideal, is therefore at least tolerable. However, to the extent that it has any impact on claim interpretation post-grant, trying to permanently imprint into the description the results of such a “rough and ready” approach is a gross violation not only of the legitimate interests of applicants but also of the EPC itself.
But Doubting, what about the problem the courts of at least England and Germany have addressed, namely, the demise (thanks to Art 69 of the EPC) of that old wisdom, that what comes after and infringes must, if coming before, destroy novelty? Might it be, that not only the EPO but also the courts of validity and infringement, prefer to go on assessing claims as they do now, rather than as you would have them do it?
DeleteThe old adage that you mention is alive and kicking in the form of the Gillette and Formstein defences. What else do you think is needed? What problem do you think Art 69 EPC has caused that the courts have not already solved (or cannot possibly solve)?
DeleteMore to the point, why would any court prefer to interpret claims by a “rough and ready” approach (i.e. by reference to the strict, literal meaning of their wording) instead of in accordance with the EPC? I was under the impression that courts are obliged to decide cases based upon the law, and not upon their personal preferences.
What problem? That the old adage no longer holds.
DeleteImagine you are the patent owner and you assert that my product X is infringing under Art 69 EPC. I reply with evidence that I was selling X before your priority date so your claim lacks novelty. You say that novelty is not prejudiced and that the courts will agree with you so that, despite all that, X still infringes.
It sounds as though the person selling X would be able to assert a lack of novelty based upon prior public use and/or assert their right (under Section 64 UK Patents Act) to continue use begun before the priority date. Why, therefore, do you imagine that the scenario would play out in a way that the person selling X would be forced to stop doing so? And what has that got to do with interpreting the claims according to their intended meaning, as opposed to the strict, literal meaning of their wording?
DeleteI had thought, Thomas, that the debate was about what the claim means i) when discussing its novelty and ii) when discussing what infringes it. Shall the claim have just the one meaning? Or shall it mean one thing when it comes to assessing its novelty, and quite another when it comes to assessing the "scope" of protection which it confers?
DeleteMy understanding is that the English courts baulk at holding that something which infringes, but only by equivalent, if coming before the date of the claim would be prejudicial to its novelty. Instead, the novelty of the claim remains untainted. I see in Gillette and Formstein commonsense thinking on the issue whether the accused infringer has a defence, can escape liability for infringement, but no answer to the question: one meaning or two.
I remain astonished, that we can't agree on this point.
Anon, I think that our wires are getting crossed. The comment to which you initially responded argued that:
Delete- in view of Article 69 EPC and Article 1 of its Protocol, analyses of validity and infringement should both start with the same (purposive) construction of the claims; and
- it is only in subsequent steps that there should be any divergence between the analyses; but
- the EPO essentially ignores the interpretation required by Article 69 EPC and instead adopts an approach (based upon the strict, literal meaning of the claims) that Article 1 of the Protocol to Article 69 EPC warns is not correct.
Regarding the matter of claim interpretation, I therefore do not think that there is any divergence of views between us. That is, it seems to me that:
- we both agree that the claim interpretation adopted under Article 69 and Article 1 of its Protocol should be the same for both infringement and validity; and
- your concern relates to the differences between subsequent steps in analyses of infringement and validity, and in particular the additional scope of protection captured (for infringement purposes) by considering equivalents, as per Article 2 of the Protocol to Article 69 EPC.
Tricky problems can indeed arise when it comes to determining infringement by equivalents. In particular, it is almost impossible to determine equivalence except by detailed consideration of one or more specific (allegedly infringing) embodiments. However, I believe that the courts will inevitably apply a dose of common sense, eg by way of the Formstein defence, to avoid contravening the old adage that you mention.
Wires crossed? Could well be. If I understand you right, you see an infringement by equivalent as lying outside the area defined by the claim, that area being arrived at purposively and being the same for both validity and infringement. Call this area if you like a "core area", it being surrounded by a "penumbra" in which there is infringement by equivalent.
DeleteAs of now, infringing acts in the penumbra, if they were to have happened prior to the date of the claim, would not have prejudiced the novelty of the claim, regardless whether you determine the scope of the core area strictly or purposively. That's why I think that the old adage no longer holds.
Formstein and Gillette concern defences to infringement but, if I understand them aright, avoid any enquiry into whether or not the claim lacks novelty. That's why I see them as not helping the debate about whether or not the old adage still holds.
Currently, the EPO applies Art 69 EPC only when it addresses Art 123(3). Some people say that it should apply Art 69 EPC more widely. I take that to mean that there should be coincidence between what is inside the claim for the purposes of Art 54 EPC and what's inside when the claim is asserted against an article accused of infringing it. That, as I see it, would restore the old adage that is currently out of commission.
I think the old adage can be very easily amended to resolve any perceived tension between the novelty-infringement test and the doctrine of equivalents:
Delete- that what comes after and infringes must, if coming before, destroy novelty;
- that what comes after and infringes by virtue only of the doctrine of equivalents must, if coming before, destroy inventive step.
Ta da! I fixed it.
There is a minor flaw: this does not account for secret prior art (Art 54(3)/S2(3)) which is not citable for inventive step. As secret art, there is no justification for taking this into account when interpreting the scope of the claim, whether under a strict, literal interpretation or under the doctrine of equivalents. Accordingly, an equivalent disclosed in secret prior art is susceptible of being held to be an infringement under the doctrine of equivalents. The applicant of that secret prior art would need to (and could) avail themselves of the secret prior use defence to infringement.
Who would have thought that the legislator already provided us with all of the means necessary to prevent old technology from being injuncted by a patentee?