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| One or two referrals? |
We now have confirmation of the referral to the Enlarged Board of Appeal (EBA) on how and if the description should be used to interpret the claims of a patent (G 1/24). The following questions have been referred to the EBA in T 0439/22:
1. Is Article 69(1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied on the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?2. May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation?
3. May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions?
The referred case relates to a Phillip Morris patent (EP3076804) for a smoking article. The question before the Board of Appeal at opposition was whether the description of the patent should be used to change the definition of "gathered" tobacco from the normal definition of "gathered" known in the art. To justify the referral to the EBA, the Board of Appeal cites contradictory case law on whether the description should be used to interpret prima facie clear claim language and on the broader question of whether the description as a whole should be used to construe the claims.
The EBA will now have to decide whether to accept the referral as admissible. This Kat remains dubious that a referral is actually justified for the specific facts of the case (IPKat). Furthermore, even if the EBA finds the referral admissible there is still no guarantee that the broader legal questions surrounding claim interpretation will be clarified. The EBA has a habit of narrowing the questions referred to it if it considers them too broad with respect to the case in question. The EBA may also choose to give only high-level guidance, as in G2/21, and leave it to the Boards of Appeal to interpret the practical consequences.
In the meantime, we are also still awaiting a referral from the unrelated case T 56/21. In this case, the Board of Appeal indicated back in December 2023 that they were poised on the brink of a referral on the question of whether applicants should be forced to adapt the description in line with the claims (IPKat). The only advancement in this case since December has been some recently filed third party observations. What is the reason for the hold up? Was the Board of Appeal in T 56/21 perhaps waiting to see how the Phillip Morris case (now G 1/24) would proceed? There is an argument that the two referrals should be combined, given that both relate to the importance or otherwise of the description for claim interpretation. Stay tuned!
Further Reading
- 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)
- Imminent EBA referral confirmed on the question of using the description to interpret the claims (T 0439/22) (April 2024)
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Posts
The present referral has been discussed in another blog.
ReplyDeleteThe question of application of Art 69 and Art 1 of the Protocol in procedures before the EPO has been lingering for a while, and it is good that a board has now decided to refer this important question.
It is to be noted, that the analysis of the diverging case law by the referring board is quite impressive and actually shows the necessity of such a referral.
The referral has been limited to the application of Arti 69 (1) and Art 1 of the Protocol on Interpretation, when a claim has to be assessed with respect to Art 52-57.
The board did not bring in Art 123(2). This position differs from that adopted in T 450/20, and T 1473/19, In T 450/20, the board refused to refer questions about the application of art 69 and its Protocol to the EBA.
Although the boards in T 450/20 and T 1473/19 considered, the primacy of the claims, they considered that Art 69 its Protocol should also be applied when assessing added matter.
It is to be hoped that the EBA does not start rewriting the questions in order to answer questions which have not been referred to it.
The referring board can be supported in not wanting to include Art 123(2) in the referral.
I have always been of the opinion that the question of the application of Art 69 and its Protocol was more important than that of the adaptation of the description.
In EP 3 094 648, appeal pending under T 56/21, the board indeed envisaged to file a referral on the adaptation of the description.
As far as the question behind T 56/21 is concerned, a corresponding referral would most probably imply a production stop, mainly for DG1, but also for the boards of appeal.
I therefore doubt that the president would himself overcome the standstill and file a corresponding referral to the EBA.
The recent, 20.06.2024, anonymous observations of third parties, enquiring about the issuance of a decision or the appointment of OP, might not have the effect sought.
Firstly, the boards have shown a dislike for anonymous third parties observations. Secondly, a board cannot be forced to decide in favour of a referral. It would not be the first time that a board envisages a referral, but actually refrained from filing one.
There is certainly an argument that the two referrals could be combined, given that both relate to the importance or otherwise of the description for claim interpretation. However, the case law of the boards is rather clear about the matter of adaptation of the description.
After all, there is only a handful of decisions going against the adaptation of the description, so that the topic is not a burning one for the vast majority of the users of the EPO, even if it has become a matter of principle for some.
This has to be a good thing, although, whether they come to a decision I favour is of course a different matter. I know the USPTO interprets claims during prosecution in a different way to the courts, but it has always struck me as a nonsense that we have Art 69 telling us how claims should be interpreted and the EPO ignoring that with the resulting potential for different interpretations of the claims between the granting authority and the courts. Given the claims are the most important part of the claims, I think it unhelpful to employ this approach.
ReplyDeleteMy beef with the EPO ignoring A.69 is the wording in the article makes it obligatory to use the description and drawings to interpret the claims - shall, not may.
DeleteBut Kant, that's the point here, isn't it? I don't see anything intellectually dishonest in reliance on Art 69 to decide on the scope of protection, ie in infringement proceedings, and under Art 123(3) EPC, while at the same time and in the same trial of infringement and validity setting Art 69 considerations aside when examining the claim under Art 54 EPC. Isn't that what the TB is here asking the EBA to confirm?
DeleteI see no reason why A. 69 should not also be applied for consideration of patentability - it can work both ways. If the specification says "gathered" includes "spirally wound" then for a claim reciting "gathered", spirally wound prior art is anticipatory. Likewise, if the specification states that "gathered" means "drawn together with a draw string", this is the meaning of "gathered" in the claim.
DeleteThanks, Kant. My knee-jerk reaction to your comment is to agree with your second and third sentences. As for your first sentence, I fail to see any need to invoke Art 69 EPC when conducting an enquiry into the validity of the claim. OK, the "scope of protection" under Art 69 EPC might then go wider than the periphery of the claim for the purposes of its validity. But isn't that what the courts of (at least) England and Germany are already routinely doing. Where's the problem, if they continue to Formstein their way through trials of infringement and validity?
DeleteMax, your question relates to how the courts should handle A.69, rather than the EPO. For the courts, I don't believe there is any issue, other than whether an allegedly infringing article is within the literal scope of the claim or is an equivalent. For validity, anticipation rather than obviousness is really only relevant for A.54(3) prior art, otherwise the UK 'squeeze' or the German Formstein will sort the problem.
DeleteMy issue is with the EPO and patentability. Equivalence and obviousness may be related concepts but I don't believe that equivalence is an issue for the EPO to consider. Primarily it is the job of the EPO organ to determine what the wording of the claim means before determining whether the prior art lies within that meaning or there is a lack of inventive step. I am saying that A.69 requires them to consider the specification in order to understand the claim.
@ Kant
DeleteArt 69(1), second sentence says: "the description and drawings shall be used to interpret the claims". This is however to be brought in correspondence with Art 69(1), first sentence, which says: "The extent of the protection conferred ...... shall be determined by the claims".
It does not say that the validity of the claim has to assessed taking into account the description.
This is why some boards have considered that when a claim is clear and/or technically sound, there is no need to look at the description.
Other boards have said that the description cannot be used to give a feature in a claim a more limited interpretation than that resulting from the plain meaning of the feature of the claim.
A look at the description might be necessary if features of claims are ambiguous. In case of an ambiguous feature, the broadest interpretation possible is then to be used. In this case, the description cannot be used to give the ambiguous feature a narrow interpretation.
That Art 69(1) is to be used when assessing Art 123(3) is a consequence of the plain wording of Art 123(3). This is in my opinion the only case in which Art 69 should be used in procedures before the EPO.
A systematic interpretation of the claim according to Art 69, as it is done in German procedures, before any decision on infringement or validity is not required by the EPC. If the legislator wanted this, a corresponding Art or R would have been introduced in the EPC.
For the rest, I cannot but support Max Drei's position.
It is not just Art 69 that requires that though. What requires that one construes a claim in the context of the description is the fundamental rule how to construe any document, namely as a coherent single entity. There is no need to invoke Art 69,is there?
DeleteMaybe M. Thomas is influenced by the French wording of A69(1): 'Toutefois, la description et les dessins servent à interpréter les revendications.' This lacks the obligatory language 'shall' of the English version. Swapping the order of A.69(1) cannot be used to reinterpret the language. That the Boards do not follow the EPC does not surprise me.
Delete@ Kant,
DeleteEnglish is not my mother tongue, but I have been practising it long enough, to be able to realise that “shall” is stronger than “serve” or “is helpful” in interpreting the clams.
I would put the difference in wording on history. If I am well informed, pre-EPC, the notion of inventive step was unknown in the UK. Novelty mattered and if it was novel it was inventive. It was thus necessary to insist in the English version of Art 69 and more precisely in Art 1 of the protocol, that looking at the mere wording of the claims would be insufficient.
The best example is still the famous “Improver” case. It was, for example, infringing in DE but not in the UK as there was no spring in the infringing device. To me it was infringing in the UK as much as in all other countries. It would say since pemetrexed the situation might have changed in the UK. But even there, what Art 123(2) actually means, was not grasped by the UKSC.
I do not know what allows you to claim that the Boards do not follow the EPC. I would claim the contrary. They do, as much as they can. That they do not follow the EPC in matters of Art 69 in the way you consider they should, remains an opinion, but it is just an opinion, as respectable as it might be.
Furthermore, the EPO has neither the resources nor the time to envisage all possible interpretations which, on top, may vary from one country to the other during national litigation proceedings. This is the result of the comprise reached in 1973 as I have tried to explain many times.
Interestingly enough, I invite you to look at T 640/22 published on 09.07.24 but issued before. In this decision, the board made clear that the application of Art 69 as wished by the proprietor would render the requirement of Art 123(2) largely obsolete.
A corresponding comment will be published on my blog on 10.07.24. A detailed analysis and some comments will be found there. I invite you to look at them.
Just for completeness, under the UK Patents Act 1949 (the "Pre-EPC" UK Patents Act) obviousness was available as a ground of revocation post grant before the Comptroller or the Courts:
Deletehttps://www.legislation.gov.uk/ukpga/Geo6/12-13-14/87/section/32
https://www.legislation.gov.uk/ukpga/Geo6/12-13-14/87/section/33
The comment by D X Thomas that in the UK prior to 1978 the notion of inventive step was unknown in the UK needs feedback.
DeleteWhether or not the notion of "inventive step" was known, the notion of obviousness certainly was, as Anonymous has helpfully explained. What DXT might have had in mind is that the duties of a UK Patent Office person, examining for patentability back then, ex parte, prior to grant, did not include an enquiry into obviousness. Back then, it was thought that the only meaningful enquiry into obviousness was one conducted inter Partes, so that the decision-maker could do it with the benefit of having received "both sides" of the obviousness debate. An Applicant "deserved their day in court" it was thought, rather than losing their pending patent application to a negative subjective opinion of a mere Patent Office Examiner. So, novel but obvious subject matter got through to grant (unless somebody chose to delay grant by filing filing a pre-grant opposition fully loaded with evidence and argument of obviousness).
What a ,long way we have come, since then, on the notion of what is a patentably inventive step.
I welcome the Art 69 question referral. I recall Robin Jacob's "intellectually dishonest" criticism of the EPO line on Art 52 religibility but to my mind it is not intellectually dishonest to separate the issue of what the claim means from the issue of what amounts to an "equivalent" infringement of it. The age-old maxim that what comes after and infringes will, if coming before, prejudice novelty is not holy writ, is it? I prefer clean and predictable pre-grant ex parte examination of patentability at the EPO to endless argument about what is the "scope of protection" of the claim under Art 69 EPC.
ReplyDeleteBut we often do end up with endless argument about what the claim means, which is the essence of scope of protection, in terms of clarity objections under Art 84 EPC, where the EPO refuses to look at the description when assessing the clarity of the claims. And that is fundamentally dishonest because the vast majority of the claims I read, particularly in the mechanical field where many parts have no recognised name, are unintelligible until the description and drawings have been consulted.
DeletePlease see my answer to Kant, directly above, and only just now posted.
DeleteIf the answer to 2) is a flat “no”, then many telecoms cases will have issues post-grant with claims deemed to be meaningless.
ReplyDeleteFor example, many telecoms cases are granted by the EPO with claim 1 defining something general like a “terminal” and then use ultra-specific terminology such as “RRC layer” or “MAC CE”. Without reading the description (which is, after all, before the claims in the granted patent), how is the skilled person meant to know that the claim is for 5G-like technology?
Same goes for many areas of standards related technology that I work on, such as video or audio decoding.
These sorts of cases have claim language that is clear in context – but the context is obtained from the description.
This is not an issue. The claims in 5G cases can be hard to decipher and can generalize the specific embodiments description, but that is true of many patents. If the applicant wants their claim to be limited to 5G, they need to put some 5G terminology into the claims; otherwise the claims might inadvertently read onto 4G, or even something else. The EPO telecoms examiners are perfectly amenable to highly specific acronyms being included in claims. See EP3361820B1, EP3602890B1, EP3349487B1, EP3776967B1, EP3858037B1 as trivial examples of differing breadths. The basic point is, if you claim a "base station", you can't argue that the 4G prior art documents are irrelevant because your description is all about gNBs; the claims are too broad.
DeleteBreadth of my claim wasn't really my point. My point was more "how can anyone know what a MAC CE is without reading the description?" The term "MAC CE" is clear if you have the context of the description, but from the claim in isolation means nothing.
Delete@Anonymous 17:10: modifying the claim 1 in one of your examples slightly (EP3858037B1) what about a claim that read "1. A method for wireless communications by a user equipment, UE, comprising: receiving downlink control information, DCI,...". I think the EPO would not have problem with this pre-grant with Art 84, because the term "downlink control information, DCI," is very clear if you are familiar with 5G (i.e. that it is sent to the UE in a PDCCH). But after grant, without recourse to the description you could map "downlink control information" onto any information in the prior art used for control sent over any layer to the UE. That doesn't seem right. The EPO could solve this by requiring all such claims to be limited to 5G - but that doesn't really work for a number of reasons (e.g. Standards change over time, claims are drafted to read onto future Standards where possible etc)
DeleteThat the EPO interprets claims in a different manner than courts has its origin in the genesis of the EPC.
ReplyDeleteIt is often forgotten that the EPC is a follow-up to the four drafts for a European patent under the umbrella of the then EC, later the EU. Those four drafts remained drafts. The upcoming of the PCT has brought some member states to worry about being flooded with unexamined patents. This is why some EPC member states refuse a PCT direct access. IT now allows the PCT direct route.
The negotiations reopened on the basis of those four drafts. You will find in the “Travaux Préparatoires” lots of references to the four drafts.
During the renewed negotiations, a compromise was achieved. The EPC was to become an open convention, i.e. not restricted to CE/EU member states, but the EPO would only grant a patent. The way the patent and the corresponding rights are exercised was a matter for national courts, or now the UPC, in which the granted EP will have been validated.
We came thus from a fully integrated system in which grant and exploitation of the title were in the hands of a single unit, like in an national system with examination, e.g. Germany, to a system in which grant and exploitation of the title were separated.
In this situation, with a dichotomy between grant and exploitation of the patent, it was necessary to have an Art like Art 69 on the interpretation of the claims. The Protocol on interpretation of #Art 69 made clear that the interpretation should not be as strict as the former English interpretation, but not as lenient as the former German interpretation. It should be somehow in-between. The protocol mentions equivalents without ever defining what equivalents could be. In the Diplomatic Conference of 2000, the EPO proposed a definition of equivalents. This was not accepted by the member states.
It is however clear that interpretation when it comes to infringement can be different, to be precise broader, than the interpretation during prosecution. A good example is the pemetrexed case, were equivalents played an important role. In the absence of any mention in the original application of equivalents, a broad claim to pemetrexed had to be refused by the examiner in charge under Art 123(2).
It might be possible to align the interpretation of the EPO and its boards with that of the UPC on inventive step, but an alignment in matters of novelty and added matter seems difficult in view of the “golden standard”. It would need a new decision of the EBA to abandon the “golden standard”. Whether the UPC is prepared to accept the "golden standard" remains to be seen.
Just look at Reasons 1.8 of T 1168/22 published on 02.07.2024: “Firstly, equivalence of a claimed feature with parts of the original disclosure is not sufficient to provide for such a feature a direct and unambiguous disclosure according to the so-called gold standard (see G 2/10, reasons 4.3)”. However, infringement by equivalents can be envisaged.
The EPO is not ignoring Art 69, but when looking at the diverging case law of the boards in this matter, the necessity of a referral cannot be denied. There could be as many interpretations as national courts. In this respect why should the interpretation of the UPC be any better than that of any other national court, be it in EU member states or not.
The referring board related its questions to Art 52-57, but, for apparently good reasons, did not mention Art 123(2). In this respect a “disclaimer” on Art 54(1 to 3) could appear appropriate in order not to jeopardise the “gold standard”.
If I have an appeal (from an opposition decision) that these questions are directly relevant to, can I request a stay? I can only see reference to the EPO staying exam/opposition division cases, but it would be frustrating to have a case decided by an Appeal Board that (maybe) turns out to be bad law very soon after the Decision?
ReplyDeleteIf you don't request a stay before a board, you will never get it.
DeleteIf the board refuses a stay, it will heve to say why.
But the boards have a great discretion in thiis matter.
It reminds me of a say from an experience representative: in front of court you are like on high sea. You are in the hand of god.
Can anybody confirm that these three questions are limited (by the words "patent claims" in Q1) to post-grant proceedings, despite their use of "patentability" rather than "validity"? After all, prior to grant, when ED's are free to object under Art 84, EPC, there isn't any need for EBA clarification, is there?
ReplyDeletei would not give an excessive weight to the wording "patent claims" in Q1. In Q1 and in Q2, the wording is limited to "claims
DeleteThe President has spoken:
ReplyDelete"To ensure the proper functioning of the EPO and for legal certainty, the President of the EPO has decided that proceedings before the examining and opposition divisions should continue".
https://www.epo.org/en/legal/official-journal/notice-european-patent-office-dated-1-july-2024-concerning-continuation-examination-and-opposition
Does the phrase "should continue" indicate that proceedings will continue even if a party makes a request for a stay of proceedings and the outcome of those proceedings depends entirely upon the answers to the questions referred in G 1/24?
It certainly seems that the Notice from the President is intended to serve as an edict, with Examining and Oppositions Divisions forbidden from contravening the rule that it sets out. However, if that is the case, then the President is essentially instructing all Examining and Oppositions Divisions to commit substantial procedural violations in cases where, by rights, a stay of proceedings should be imposed (upon the request of a party).
Nobody should read restrictive narrow meanings into claims that can be read more broadly. Neither pre grant nor post grant. Clear terms in a claim can be enormously broad. The question which arises is not a need for a basis for interpretation, but lack of novelty. Art.69 cannot remedy it. Ambiguous terms in a claim result in lack of clarity and are not allowable. Once upon a time this was clear at the EPO.
ReplyDeleteMy thanks go to Proof of the pudding!
ReplyDeleteIn a comment on my blog Proof of the pudding has given a very pertinent comment on the problems raised by the presidents decision not to stay the procedure.
Reference was made to T 166/84 (OJ 1984, 489) and Guidelines E-VII, 3.
According to T 166/84, a first instance not staying a procedure when there is a question pending before the EBA which may affect the outcome of a case, then it commits a SPV.
According to E-VII, 3, when there is a question pending before the EBA which may affect the outcome of a case the proceedings may be stayed by the examining or opposition division on its own initiative or on request of a party or the parties.
If a party requires a stay, simply answering that there is a contradictory decision of the president may not be sufficient.