Following the high profile hearing last month, we are now waiting for the written decision of the Enlarged Board of Appeal (EBA) in G 1/24. IPKat readers can catch-up on the full background to the case here. There is also still plenty to discuss while we wait.
G 1/24 relates to the question of how to interpret the claims of a patent, and whether the description of the patent may be used for this purpose. Most patent attorneys like nothing more than arguing about the meaning of words. What then could be better than an argument about how to argue about the meaning of words, as we may liberally paraphrase G 1/24. However, whilst this is all very exciting for patent attorneys, we are still left with the question of the practical implications of G 1/24? Even before the EBA issues its decision, there are some lessons to be learnt from the case on drafting the description of a patent. These lessons are even more important with the increased use of AI patent tools for patent drafting.
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| Patent drafting whilst waiting for G 1/24 |
Beware of boilerplate
One key lesson from the case at the centre of G 1/24 can be summarised very succinctly. When drafting a patent, beware of overusing boilerplate language.
The patent at issue in the referring decision to G 1/24 (T 0439/22) was a Philip Morris patent for a heated aerosol-generating article for use with an electrically-operated aerosol-generating device (e.g. a heat-not-burn e-cigarette), in which an "aerosol-forming substrate comprises a gathered sheet of aerosol-forming material" (e.g. a sheet of gathered tobacco). A key question for the novelty of the claim was whether the product disclosed by the prior art disclosed a "gathered" sheet of tobacco. The prior art disclosed a product comprising a tobacco sheet that "may be spirally wound". The Board of Appeal in the case was convinced that a person skilled in the art would not normally consider the definition of a "gathered tobacco sheet" to include tobacco sheets that were spiralled. The skilled person, it was agreed, would normally understand a gathered tobacco sheet to be one that was "folded and convoluted".
However, critically, the description of the patent included the following definition:
As used herein, the term 'gathered' denotes that the sheet of tobacco material is convoluted, folded, or otherwise compressed or constricted substantially transversely to the cylindrical axis of the rod.
For the Board of Appeal in the case, this broader definition of the term "gathered" encompassed the spiralled tobacco sheet disclosed by the prior art. In other words, if the description could be used to redefine terms of the art used in the claims, then the patentee had shot themselves in the foot with their overly broad definition. In the view of the Board of Appeal in the case, using the broadening definition provided by the description, the claimed invention lacked novelty.
The case in T 0439/22 thus highlights the dangers of unnecessary boilerplate language. Given that the term "gathered" has an accepted definition within the field, why then does the term need to be defined in the description at all? If the patentee is intentionally trying to broaden the scope of protection offered by the claims to include sheets of tobacco not falling under the commonly accepted definition of "gathered", then, in this Kat's view, the claims would be the best place to do this. The patentee could simply have used different terminology in the claims. The use of the description to redefine words that are used in the claims creates a lack of clarity that is not conducive to legal certainty. As the case in G 1/24 illustrates, this lack of clarity may harm the patentee as well as third parties.
In short, beyond all the nuanced legal debate, a key practical take-home message from G 1/24 is simply to avoid, as much as possible, unnecessary boilerplate that may undermine your carefully crafted claims.
The importance of technical field
Arguably, the practical implications of G 1/24 for drafting practice vary according to the technical field. In the mechanical field of patent drafting, the definitions of words can be quite fluid and open to interpretation. It is often difficult in mechanical patents to interpret words without the context of the description. To interpret claim terminology such as for example, housing, member, plate, panel, and flange, it is generally necessary to understand what the purpose of these features are in the invention.
By contrast, in technically specialised fields such as biotech and software, terminology is often more clearly defined in the field. Terms such as cell, DNA, nucleic acid sequence, epitope, and chimeric antigen receptor have well-understood definitions. Of course, there will always be some scope for interpretation, but the definitions of such words are still far more delineated than the words often used in mechanical drafting. It is therefore no surprise that the referring case in G 1/24 was from the mechanical field. The point of contention in G 1/24 relates to a word ("gathered") that on the face of it appears relatively non-technical and open to interpretation.
However, even within the field of tobacco products, the terminology used in patent claims will of often have well-understood definitions. This was in fact the case in T 0439/22, in which it was accepted that gathered would normally be understood by a skilled person to refer to the type of tobacco sheets manufactured on standard crimping machines and thus not encompass spiralled tobacco. The problem for the patentee was the non-technical definition of gathered provided in the application. Given that "gathered" is a well-understood term in the field, defining it in the specification was arguably unnecessary.
A practical lesson from G 1/24 is thus to ensure that any definitions of technical terms provided in the specification which differ from their normal technical meaning are included with the full intention of redefining the term. As suggested above, the safest plan would be to define the invention clearly in the claim.
Beware even more of AI generated boilerplate
PatKat did have a grand plan of putting a series of AI tools through their paces for life sciences patent drafting. Unfortunately, following her first post, AI patent tool providers are no longer willing to offer her a free trial. It appears that these companies are not yet confident enough of their life sciences offering.
However, the increased use of these tools in the industry also raises interesting questions so far as definitions are concerned. Many of the tools on offer will draft definitions for the description based on your claims. In this Kat's experience, without extensive user input and prompting these definitions are often highly unsuitable and are in many cases overly narrowing. Filling the specification with impressive sounding technical language defining terminology used in the claims may give the impression of a well-drafted patent, but this impression would be misleading. G 1/24 is a timely reminder that the description of a patent may be highly influential for how the scope of the claims is determined. AI patent drafting tools to automate a comprehensive glossary of terms based on the claims, should therefore be used with care.
Final thoughts
Before even the Enlarged Board of Appeal issues its written decision in G 1/24, there are already a number of lessons for patent drafting that can be taken from the issues at stake in the case. Wherever the Enlarged Board of Appeal lands on description-based claim interpretation, the fundamental principle of patent drafting remains the same. If you want the scope of the claims to be clear, the best place to ensure this is in claims. As the arrival of AI drafting tools reminds us, there is no substitute for careful, deliberate drafting of both claims and description.
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Reviewed by Dr Rose Hughes
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Friday, April 11, 2025
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The question behind the referral in G 1/24 can also be summarised as follows: can the patent be its own dictionary? If this is the case, the applicant/proprietor can bring in the description any definition he wishes, even if it contradicts the meaning the skilled person would determine from the claim wording.
ReplyDeleteIn such a situation, a boilerplate definition incorporated in the description, with or without AI, should not be a problem.
That definitions obtained by AI are highly unsuitable and in many cases overly narrowing does not come as a surprise.
The problem can also be that the definition of a claimed feature in the description might be broader than the ordinary meaning of the claimed feature. And then we are heading towards a nice “Angora cat”.
Whether the definition in the description is broader or more limited with respect to the ordinary meaning of a claimed feature, there is a discrepancy between claim and description. Said discrepancy has to be corrected before a decision to grant can be issued. I would say that this discrepancy leads to the conclusion that the claim is not properly supported by the description.
Allowing such a discrepancy is completely ignoring the primacy of the claims. What good is it to have claims, if the applicant/proprietor is allowed to alter the meaning given by the skilled person to a claimed feature by giving it a different meaning in the description?
The way to solve the discrepancy is to bring claim and description is accordance with each other. Either the definition of the description is brought into the claim or the feature of the claim is brought in the description. If this is done correctly, the risk of being faced with an “Angora cat" is remote. This is actually what you propose.
If the ED had correctly ascertained the different definition of “gathered” in the definition, and requested that claim and description were put in accordance with each other, we might not have ended with G 1/24.
The question of the adaptation of the description is linked to a certain extent with the referral G 1/24. The representatives of the president during the OP pleaded for a reply in G 1/24 on this topic as well. It is doubtful that the EBA will follow this request.
Whilst in T 56/21, the board refrained to refer to the EBA the question of the adaptation of the description, and decided by itself, there is a referral on the way in EP 2 124 521 B1 (T 697/22). When looking a the register, the decision to refer should be published on July 30th 2025.
'Allowing such a discrepancy is completely ignoring the primacy of the claims. What good is it to have claims, if the applicant/proprietor is allowed to alter the meaning given by the skilled person to a claimed feature by giving it a different meaning in the description?'
DeleteThe problem with this approach is that it ignores Article 69 EPC, which specifically tells us that the description and claims should be used to interpret the claims. We have had an EPO created problem because the EPO took it upon itself to decide this only applies to scope of protection and not clarity. However, as I have pointed out to numerous examiners over the years and is mentioned in the article above, at least in the mechanical field, the vast majority of claims cannot be understood without reading the description and claims.
Somewhat ironically, one of the few claims I can recall reading that was perfectly comprehensible without first referring to the description and drawings and whose meaning was not affected by the content of the description and drawings, was rejected for lacking clarity.
Anyway, returning to the original point, this is an EPO manufactured problem. Quite why it has concluded that the legislator intended that we should use the description and drawings to understand the claims for the purposes of patent infringement proceedings, yet for proceedings before the examining divisions we the claims must be comprehensible without reference to the description and drawings has never been explained. A further irony is that many claims that are clear (even if you have to check the description and drawings to get the proper meaning) become a convoluted mess following amendments to put the claims into the two-part form and meet the bogus clarity and added subject-matter objections that so often arise during prosecution.
What an incredible waste of time. Who said that the claims must be read alone? Who invented the term “primacy of the claims”? A patent is a meaningful, self-contained legal document only when taken as a whole. Can we please step back to the principles, put many bad decisions of the boards in the last 35 years aside, and try to read the EPC with a natural mind? If the scope of protection conferred by a patent (art. 69) could finally turn out to be something different from the subject-matter for which protection was sought in an application (art. 84), then there would be an incurable dysfunction in the EPC. But since this cannot be the case, then art. 84 must necessarily be in agreement wit art. 69, which in fact is the case. Art. 84 provides that the matter for which protection is sought is defined not by the claims alone, but by the claims supported by the description. An isolated patent claim floating in the middle of nowhere is nothing but empty words.
ReplyDeleteYou make the point incredibly succinctly. The whole debate on interpretation and description amendments is caused by ludicrous semantic arguments that try to delineate "the invention" (which is not even defined in the EPC), "the matter for which protection is sought" and the "extent of the protection conferred by a European patent or a European patent application".
DeleteIf the EPC is interpreted as a (somewhat) consistent, self-contained set of rules telling us what patents are and what protection they provide, and if patents are interpreted as self-contained legal instruments that are interpreted in accordance with basic principles of law, most of the issues of the day vanish. The solution really is as simple as "read the EPC as a whole and in context and read the patent as a whole and in context", just as we do with any other statute and any other legal instrument.
Rather than distorting the meaning of the support requirement of Art. 84 in order to justify description amendments, the EPO could use the clarity requirement of Art. 84 to insist on description amendments. This is the case since, when the patent is interpreted as a unitary document using the description to guide the interpretation of the claims, any contradiction between the claims and description introduces a lack of clarity. This is a far more natural argument than relying on the support argument.
@ Anonymous 1+2,
ReplyDeleteI do not know who is wasting its time, but I will leave the answer open.
I have never said the claims should be read alone and "are something floating in the middle of nowhere". Claims and description go hand in hand. I fail to see any dysfunction in the EPC if the claims and the description are aligned on one another.
Contrary to what Anonymous 1 claims, Art 84 does not provide that the matter for which protection is sought is defined not by the claims alone, but by the claims supported by the description. I think the difference ilies in the interpretation of “supported”.
Art 84 reads: 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 has a different function than that of Art 69(1) and Art 1 of the Protocol. Art 84 does not say that the claims define the invention, which, indeed, is not positively defined in the EPC.
Art 69(1) reads: “The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims”.
Art 69(1) adds: “Nevertheless, the description and drawings shall be used to interpret the claims”. This does not mean that the description allows to give a meaning to claimed features which can be different from the ordinary meaning of a claimed feature.
Art 1 of the Protocol explains how Art 69 is to be applied: the extent of protection is not merely defined by the strict, literal meaning of the wording used in the claims, but also not that the actual protection conferred may extend to what the patent proprietor has contemplated. This is saying nothing else that Angora cats are prohibited.
The support of the claims by the description does not mean that an applicant/proprietor is allowed to conceal in the description a different meaning to a claimed feature which has a meaning on its own.
The primacy of the claims can also be seen in the fact that R 71(3) has never been amended since the onset of the EPO. Only the claims need to be translated in the official languages of the EPO, other than the language of proceedings.
In both comments, I fail to see an answer to a fundamental question: why is it necessary to bring in the description meanings which are different from the ordinary meaning of a claimed feature?
Unless you are in favour of Angora cats, it is difficult to follow the necessity of such a discrepancy between claims and description. Art 84 will be in agreement with Art 69, when the claims are aligned with the description and vice-versa.
A claim can be perfectly clear on its own, but it can well happen that the description allows a different interpretation of the claim, if claimed features are given in the description a meaning which can be either more limited or broader.
I therefore claim to have “read the EPC as a whole and in context and read the patent as a whole and in context", just as can be done with any other statute and any other legal instrument.
Reading the piece, and then the thread of comments, what strikes me is the difference between ex parte examination of an application and inter partes examination of a keenly-fought opposition. Prior to grant, is an Exam Division supposed to know exactly the meaning that "gathered" has for experts in the field, and therefore to know that the definition in the description is not in conformity with the claim so that (for as long as the definition remains) the claim is not clear (or not supported). The OD knows it now, and the TBA knows it now but, I suppose, only through the help of the opponent. Isn't it a bit much, to expect an ED to identify every instance in the docs intended for grant where clarity falls below 100% and isn't that adding disproportionately to cost and delay in examination prior to grant. Out of every 100 applications examined, how many get to be the subject of dispute after grant? Five perhaps?
DeleteHence Rose's warning to Applicants, themselves to be extra "careful what you ask for". With patents, as with everything else, the buyer must beware.
In any case, I'm all in favour of Europe setting out its patent adjudication stall on the basis that Applicants who try to have their cake and eat it too, by deliberately breeding Angora Cats whenever the chance arises, ought not to prosper over here from their US-style "best practice" drafting.
Yes, what I’m saying is precisely that art. 84 should be read with a new mindset as meaning that the claims define the matter for which protection is sought as “being supported by the description” i.e., with the support of the description. There is no other authentic interpretation of the claims than that naturally arising in the context of the entire disclosure. The contrary proposition, namely that art. 84 contained a requirement for the description to support claims that could be interpreted in the void, beyond and even in contradiction with the disclosure, only brought us after 35 years to present idle discussions wasting precious time and enormous resources of everyone.
DeleteDear Max Drei + @ Anonymous
ReplyDeleteI think that G 1/24 will give us the answer. the answer to Question 2 will be determining.
I would however argue that the fight against Angora cats, and the like, does not start the day of an opposition or litigation, but during examination. Waiting until opposition and litigation is way too late. If examination makes sense, then it should not be possible to end up with a discrepancy between claims an description.
If a claimed feature can be given a different meaning in the description than that resulting from the plain reading of the claim by the skilled person, then there is a discrepancy between description and claims, and this discrepancy has to be resolved before grant. In this respect, it is irrelevant whether the different meaning is broader or more limited than that in the claim.
In the case leading to T 439/22, the ED did manifestly not check the meaning given to “gathered” in § [0035] of the description. If instead of “gathered”, the claim would have made clear that “the sheet of tobacco material is convoluted, folded, substantially transversely to the cylindrical axis of the rod”, we would not have ended with G 1/24. It is however manifest that “otherwise(?) compressed or constricted”, also found in § [0035] lacks clarity.
Why is it so difficult to accept the alignment of the claims with the description? This still leaves a national court to decide how to interpret the claim according to Art 1+2 of the Protocol.
@Rose @DX Thomas @MaxDrei
DeleteRose’s views are indeed insightful for applicants. I would however take issue with the use of the word “boilerplate” for a definition of a claim term in the description. An applicant is free to include in the description a definition for a claim term which departs from its ordinary meaning, but in doing so, the applicant sets out a rule, and should not be allowed to change the rule during the game. In other words, the applicant should be bound to the rule it has himself set out. In that sense, the word “boilerplate” may be misleading in that it could incorrectly suggest that boilerplate statements might not be really binding. The key issue in my view is whether the applicant’s definition statement in the description can be seen as reflecting a clear and firm intent that the claim term is to be understood pursuant to the statement.
A patent is a legal instrument, and much like an agreement including in its preamble a list of definitions for the words used in the agreement, the applicant should be reminded by the ED that it is bound to the definition it has itself included in the description, esp. when it is as assertive as para [0035] of the patent-in-suit in T 439/22. I agree here with Mr Thomas, the ED should have dismissed the applicant’s argument to avoid the prior art anticipating some of the embodiments encompassed by the definition of para [0035], pursuant to the settled principle of the broadest reasonable interpretation : an applicant is not entitled to implicitly read into the claim a feature disclosed in the description. The ED should have required the applicant to enter into the claim a limiting feature specific to the embodiment which is not anticipated. I take from my experience as a member of SQAP panels having audited recent cases that such lack of vigilance by EDs is not infrequent and it is an identified area for improvement of quality at the EPO to enhance vigilance on this issue. MaxDrei’s remark regarding the distinction between ex parte and inter partes proceedings is well taken, however EDs’ vigilance in this respect is a must for quality. This requires management actions esp. as regards training of junior examiners.
As to the idea that the solution to the angora cat pattern would be to adapt the description to the claims, specifically to amend para [0035] to suppress the embodiments anticipated by the prior art, I would recommend to keep away from this route. First, such an amendment would entail the serious risk of raising a new matter issue. Second, it is cumbersome and procedurally inefficient. Third, the case law of the UPC so far is to disregard post-filing amendments of the description for claim interpretation. The EPO must take heed, if it is to work towards consistency with the UPC and legal security as we have heard from the EPO president and the chair of the BOAs.
@ Mr Hagel,
DeleteI have to disagree with you about what you call the “key issue”. If the applicant has the firm intent that the claim term is to be understood pursuant to a statement in the description, then why does it not put this statement in the claim? By doing so, the claim and the description are aligned.
Any ambiguity about the meaning would be avoided, but a national court or the UPC would still be able to determine whether there is infringement. For this, a national court or the UPC has merely to apply Art 1+2 of the Protocol on interpretation of Art 69.
What you are actually advocating is, in my view, nothing else than the concept that the” patent is its own dictionary”.
The concept of the patent being its own dictionary is a concept which stems from German jurisprudence and practice. It has, no surprise, also been adopted by the UPC.
The BA of the EPO have a different position about this concept. In various decisions, the BA have made clear that this concept is not to be adopted. I refer here, e.g. to T 454/23, T 169/20, Reasons 1.3.4 and T 1830/22, Reasons 1.3+1.4.
In T 1830/22 it was held that, neither the wording of Art 69(1) nor the established case law of the BA can provide a basis for the alleged concept of the “patent as its own dictionary”. Such a concept could in fact elude the objective comparability of a patent with the respective prior art, which in turn would of course be difficult to reconcile with the requirement of legal certainty.
However, should part of this statement lead to the claim not being novel and/or inventive, it cannot stay in the claim, but also not in the description. I fail to see there a potential source of added matter. By leaving it in the description, you are actually nurturing the famous Angora cat.
I fail also to understand why such an amendment of para [0035] would be cumbersome and procedurally inefficient. If part of this statement cannot be considered novel or inventive, it cannot stay in the claim, but also not in the description.
Whether the UPC might have a different interpretation of the EPC is a matter of fact which might well happen, but it should not lead to the EPO following blindly the case law of the UPC simply for the sake of harmonisation.
The EPO has regularly taken notice of the case law in contracting states, and I am convinced that it will do the same with the UPC, insofar as it corresponds to its own interpretation of the EPC.
That the EPO president and the chair of the boards want to work towards consistency with the UPC is normal and deserves to be encouraged, but this does not mean that the EPO and its boards should blindly follow the case law of the UPC. This is what all the proponents of the UPC would like to see, but this should not be the primary aim of the EPO and its BAs.
I can well imagine situations in which the EPO revokes a patent, whereas the UPC maintains it, at least in amended form, or vice-versa. In view of its shorter procedural delays, the UPC will normally decide first, but this does not mean that the EPO should, for the mere sake of harmonisation, merely follow the decisions of the UPC.
Agree with Francis Hagel on the use of the term 'boilerplate'. It seems to me that it is not appropriate to a definition crafted for a particular document, most likely with a sensible purpose. Boilerplate seems to me more apt to describe the paragraphs of description so often found in US originating applications telling us that singular should be taken as covering plural and vice versa, what 'and', 'or' and 'processor' mean and all that sort of stuff.
DeleteI also agree with the comment about a patent being a legal document and the use of definitions to help in understanding the document for its particular purpose. In some cases it can be difficult to come up with a generic term for particular features and dumping a list of options the applicant wishes to cover into the claims is not necessarily conducive to clarity. However, as Mr Hagel says, when you have such a definition in the description, you should be stuck with it and required to amend the claim if it results in an interpretation of the claim that results in a lack of novelty/obviousness.
If you note a discrepancy between what I have disclosed in my application and your “plain reading” of my claims, which you insist to read ignoring what I have disclosed, who is making troubles? And then you will even insist that I must “adapt” my disclosure or my claims or both. But why do you insist so stubbornly to ignore my disclosure when reading my claims?
ReplyDelete@ Anonymous
DeleteStaying polite and respectful has never hurt anybody.
I do by no way ignore, and certainly not stubbornly, what you have disclosed. I simply repeatedly come to the conclusion that your intent is to give to a claimed feature a different meaning in the description. In other words, what you state in the description does not tie up with what is in your claim.
I refer, once more to the example relating to the “gathered sheet” which has lead to G 1/24. If the definition of “gathered” in § [035] of the description would have been transferred to the claim, we would not have ended with G 1/24.
Your way of arguing boils down to simply consider that the patent should be its own dictionary. This is your good right, as it is my good right to disagree with you.
The concept of the patent being its own dictionary is a notion which stems from German jurisprudence and practice.
The BA of the EPO have a different position about this concept. In various decisions the BA have made clear that this concept is not to be adopted. I refer here, e.g. to T 454/23, T 169/20, Reasons 1.3.4 and T 1830/22, Reasons 1.3+1.4.
In T 1830/22 it was held that, neither the wording of Art 69(1) nor the established case law of the BA can provide a basis for the alleged concept of the “patent as its own dictionary”. Such a concept could in fact elude the objective comparability of a patent with the respective prior art, which in turn would of course be difficult to reconcile with the requirement of legal certainty.
You might consider those decisions as being wrong, but there is a difference: the boards are sitting at the long arm of the lever, not you.
As far as adaptation of the description is concerned, if a feature disclosed as optional in the original description is used to limit an independent claim, the optional character of the feature has to be deleted from the description. By not doing so, you are actually nurturing one of those famous Angora cats.
“The boards are sitting at the long arm of the lever, not you.” That reminds me of Trump’s argument “you don’t have the cards”. However I’m the applicant, and the boards are service providers. If they only keep on issuing bad decisions justifying ludicrous semantic discussions about the true meaning of words, and allowing artificial novelty and insufficiency objections in examination and opposition because a claim wording hypothetically covers what the inventors never regarded to be the invention, instead of looking at the whole disclosure, then the system does not deliver and is flawed.
DeleteWell, you have to understand that, by adopting a hypothetical interpretation of the claim wording, the examiner makes the examination process much more "efficient".
DeleteFirstly, it makes it easier for the examiner to compare apples in the prior art with "apples" in any subsequent application, even if a subsequent applicant chooses to define the "apples" of their invention quite differently to those of the prior art.
Secondly, it does away with all of the time that examiners would otherwise waste looking in detail at the disclosures of the description to understand which, if any, "custom" definitions can be found therein for words / phrases used in the claims to define the invention.
The EPO's practice means that all an examiner need do is select their "standard" definitions of terms used to define the claimed invention and proceed on that basis. This is very efficient, especially as the examiner does not need to even explain which "standard" definitions they have selected, let alone explain to the applicant which documentary sources support those "standard" definitions.
So you must understand that, whilst applicants may sometimes be dismayed that the EPO's interpretation covers what they never regarded to be the invention, this is a price that we all pay to ensure that patent applications are examined and granted using the minimum possible examiner time. After all, the interests of (the EPO's view of) efficiency are paramount!
@ Anonymous, n+1
DeleteYou might well be the applicant and you might rightly request a service from the EPO and its boards. You are free to consider that they continuously issue “bad decisions justifying ludicrous semantic discussions about the true meaning of words, and allowing artificial novelty and insufficiency objections in examination and opposition”.
Defining the claimed subject-matter is indeed playing with words, but as long the claims define the matter for which protection is sought, and the description merely allows to interpret the claims when it comes to infringement, the major part of the game is played in the claims and not in the description.
I might have thought the same if I were in your position, but have you ever thought why the boards continue to issue “bad decisions”? It could well be that they do not share your views and have a different approach from what you consider the correct one. I do however think that the boards have good reasons to think as they do.
At the end of the day, it remains a matter of fact, that the boards decide and not you. The boards and you have the same cards, but the boards have the last say. This is what I intended to express, and this has nothing to do with Trump.
You say that the 'description merely allows to interpret the claims when it comes to infringement' and as a consequence ' the major part of the game is played in the claims and not the description.' It is not clear to me where this notion that the description should only be used to interpret the claims for the purposes of infringement and not for examination comes from.
DeleteFor a start off, Article 69 states that the scope of protection shall be determined by the claims and that the description and drawings shall be used to interpret the claims, while Article 84 states that 'The claims shall define the matter for which protection is sought.' Given that both Article 69 and Article 84 are concerned with the protection provided by the European patent/application, it seems odd that the way in which the claims are interpreted for the purposes of each should different.
Someone above brought up the issue of post-grant validation where only a translation of the claims is required for some countries and referred to Rule 71(3) remaining unchanged. I have seen the EPO used this translations requirement as a basis for the proposition the claims should be fully comprehensible without reference to the description and drawings. Since Article 65 has always provided for post grant translation of the patent into a national language the EPC, a solution that undermines that proposition, it strikes me as bogus to argue that just because some countries have chosen to omit the requirement for a translation of the description, 'unchanged' Rule 71(3) now provides the basis for arguing that the description and drawings should not be available to interpret the claims, even more so given that the most likely most grant proceedings outside of the EPO are infringement proceedings and Article 69 tells us the description and drawings shall be used to interpret the claims.
A "plain reading" may be how the EPO interprets the claims an application during examination, or the claims of a patent during opposition. But that is not how the EPO interprets the same claims of the same document when the patent or application in question is prior art to, or a priority document for, a different application or patent that is the subject of proceedings before the EPO. In that case, the EPO instead adopts the much more logical approach of reading the document as a whole.
ReplyDeleteI would have thought that the subject matter disclosed by of a patent (application) is fixed on the date of its filing. However, it turns out that, in the EPO's view, the subject matter disclosed by a patent application can change after filing, simply by using different interpretation approaches in different proceedings. Who knew?