The Enlarged Board of Appeal (EBA) has issued its highly anticipated decision in G 1/24, relating to fundamental questions about how patent claims should be interpreted when assessing patentability. The referral arose from diverging Board of Appeal case law on whether the description and drawings should always be used to interpret the claims, or should only be referred to when the claims are unclear or ambiguous. The EBA found that the description and drawings should always be consulted when interpreting the claims.
However, for this Kat, there is an important nuance in the language of the EBA's final order in G 1/24. The EBA does not stipulate in its decision the descriptions should always be used to interpret the claims. The EBA instead orders that the description should always be consulted to interpret the claims. To this Kat, the act of consulting the description does not necessarily mean that the description should be used to override otherwise clear claim language. Question 3 in G 1/24 may have provided some clarity on this issue, but the EBA found this question inadmissible in view of its answer to Question 2. Therefore, as with most referrals, questions remain.
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| spiralled |
Legal background
The EBA noted that the EPC provides limited guidance on claim interpretation principles. The important provisions are as follows.
Article 69 EPC states:
"The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims."
Article 69 EPC is supplemented by Article 1 of the Protocol on the Interpretation of Article 69 EPC, which provides:
"Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Nor should it be interpreted as meaning that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties."
Article 84 EPC requires that:
"The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description."
The legal question that has troubled the EPO concerns which of these provisions should govern claim interpretation when assessing patentability, and whether the description and drawings must always be consulted or only in cases of unclarity or ambiguity.
Case Background
The referral in G 1/24 originated from Board of Appeal 3.2.01 in case T 439/22, concerning a Philip Morris patent for a heated aerosol-generating article for use with an electrically-operated aerosol-generating device. The key issue in the case was whether claim 1 of the patent as granted was novel. Claim 1 contained the feature that the material was a "gathered sheet". The Patentee argued that if this term was assigned its usual meaning in the art, claim 1 should be regarded as novel. The Opponent argued that if "gathered sheet" was interpreted in light of the description, it would have a broader, although still technically sensible meaning, which would lead to a lack of novelty.
The referring Board of Appeal identified diverging case law on claim interpretation and referred three questions to the Enlarged Board:
Question 1: Is Article 69(1), second sentence, EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?
Question 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?
Question 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 referring Board identified several diverging approaches in Board of Appeal case law. Regarding Question 1, one line of case law took Article 69 EPC and Article 1 of the Protocol as the legal basis for interpretation of patent claims when assessing patentability, whilst another line took Article 84 EPC as the basis. A further line of case law was not explicit about which article provided the legal basis.
Regarding Question 2, the referring Board of Appeal identified fundamentally different approaches. One line of case law held that boards only consulted the description and drawings when interpreting claims to assess patentability if the person skilled in the art found a claim to be unclear or ambiguous when read in isolation. A contrasting line of case law held that boards always consulted the description and drawings when interpreting claims to assess patentability.
The EBA's decision
The EBA found Questions 1 and 2 to be admissible, noting that the referring decision identified diverging case law and that both questions concerned points of law of fundamental importance. Question 3, on the other hand, was found inadmissible. The EBA particularly found that Question 3 was effectively encompassed within Question 2, and given that the EBA was providing an answer to Question 2, it considered it unnecessary to answer Question 3.
The Enlarged Board extracted two fundamental principles from existing case law:
1: The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC.
2: The description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity.
The EBA noted that Principle 1 could be considered a settled point in Board of Appeal case law, whilst Principle 2 had given rise to diverging case law.
Answer to Question 1: No clear legal basis
On Question 1, the EBA found that neither Article 69 EPC (and the Protocol) nor Article 84 EPC were entirely satisfactory as a basis for claim interpretation when assessing patentability.
The EBA explained that Article 69 EPC and the Protocol "are arguably only concerned with infringement actions before national courts and the UPC" (r.7). This conclusion was drawn from the wording of Article 69 EPC and the Protocol, their drafting history, and their position in the EPC, noting that Article 69 EPC is found in Chapter III concerning "Effects of the European patent and the European patent application".
Regarding Article 84 EPC as an alternative basis, the EBA was equally sceptical: "Article 84 EPC addresses the content of the patent application and is formal in nature, does not mention the invention and provides no guidance on how to interpret claims. It only sets out an instruction to the drafter of what needs to be in the claims, and an instruction to the EPO to determine whether the claims meet that purpose" (r.8).
The EBA thus concluded: "there is no clear legal basis, in terms of an article of the EPC, for claim interpretation when assessing patentability. Given the above, the strictly formal answer to Question 1 would be 'No'" (r.9).
The EBA nonetheless noted that its conclusion "does not mean that it is necessary to invent from scratch new principles of claim interpretation" (r.10). The EBA observed that whether Article 69 EPC or Article 84 EPC was taken as the basis for claim interpretation did not appear to affect the principles that were applied in practice. The EBA particularly noted that Boards of Appeal had applied the wording of these articles "in an analogous way to the examination of patentability under Articles 52 to 57 EPC. There is thus an existing body of case law from which the applicable principles of claim interpretation can be extracted" (r.10).
Answer to Question 2: Always consult the description
On Question 2, the EBA provided a clear and decisive answer, rejecting the case law that limits consultation of the description to cases of unclarity or ambiguity. For the EBA, this line of case law "is contrary to the wording, and hence the principles, of Article 69 EPC. It is also contrary to the practice of the national courts of the EPC states and to the practice of the UPC" (r.15). The EBA particularly found it "a most unattractive proposition that the EPO deliberately adopt a contrary practice to that of the tribunals that are downstream of its patents" (r.16).
The EBA thus answered Question 2: "the description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity" (r.18).
The EBA's final order is as follows:
The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC. The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation.
Comparison with the UPC
The EBA noted that the current case law of the UPC appeared to be consistent with its conclusions. It specifically referenced the UPC Court of Appeal decision in NanoString Technologies -v- 10x Genomics (IPKat). The language of the headnote to Nanostring, and the EBA's order in G1/24 are similar. In Nanostring, the UPC stipulated that "The description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim." Consistency in the approaches of the UPC and EBA to claim interpretation are welcome. However, for this Kat, there remains some scope for divergence in how much the whole disclosure or individual definitions should influence claim interpretation. After all, it is one thing to consult a dictionary for a definition. It is another thing to use that definition.
What does this mean for description amendments?
Initially, there was some speculation that the EBA would use the referral in G 1/24 to also address the related controversial issue of whether the description should be amended in line with the claims (IPKat). However, whilst the issue of description amendments was not addressed directly in G1/24, it seems that the issue of description amendments may also soon become the subject of its own referral in case EP 2124521 B1 (T 697/22) (thanks to DX Thomas for highlighting this!).
The outcome of G1/24 arguably gives weight to the argument that the description should be amended in cases where there is a discrepancy between the claims and the description, for the purpose of legal clarity. However, it is also notable that other jurisdictions such as the US that rely heavily on the specification for claim interpretation do not require amendment of the description. After all, as the EBA emphasised in its G1/24 order, the claims are the starting point and the basis for assessing patentability (r. 12). Furthermore, given that G1/24 only requires the description to be consulted, and not necessarily used to directly interpret or override the language of the claims, the argument that amendment of the description is unnecessary still carries weight.
Final thoughts
In G 1/24, EBA therefore does not state that descriptions should always be used to interpret claims. Rather, it requires merely that the description should always be consulted to interpret the claims. For this Kat, there is a critical distinction between these two statements. Consulting a description does not automatically equate to using it to override the clear meaning of the claims, nor does it necessarily mean that definitions provided within the description must be read directly into the claims.
The referring Board of Appeal in T 439/22 will now have to apply the order in G1/24 to the case in question. In particular, does the broader definition of "gathered" provided in the description affect how the term should be interpreted in the claim. For this Kat, the question remains whether consulting the description to interpret the claims means that claim in T 439/22 encompasses spiralled tobacco, or whether the clear language of the claim overrides the definition provided in the description. What do readers think?
Reviewed by Dr Rose Hughes
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Thursday, June 19, 2025
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Good point, Rose, about what "consult" implies.
ReplyDeleteOn another point though, you mention D X thomas and he has trenchant views about what "support" means in Art 84 EPC. His view might dominate within the EPC but I seriously doubt that it holds sway outside the EPO. Specifically, does "support" oblige the EPO to insist, under Art 84 EPC, on strict "conformity" between the description and the claims intended for grant.
You mention the USA. There too, the description has to "support" the claims but strict conformity is not imposed. Perhaps the difference between the two Patent Offices is explained by the fact that, up to now, no court of appeal has been able to inform the Patent Office what is the law. But with the UPC, that seems to be undergoing change now.
What do readers think, I wonder.
Dear Max Drei,
DeleteI know that we differ in matters of adaptation of the description. If you do not want to nurture angora cats, what do you propose?
I would like to add that the EBA has made clear that Art 69(1) and Art 1 of the Protocol are not for the EPO, but for infringement, and the answer to question 1 should be a clear no.
But then, by a twist, the EBA has rephrased a statement of the CoA UPC, without giving any guidance of what “consult” means and could be put in practice.
I'm not sure that I can square the EBA's view that Question 3 is encompassed within Question 2 with the idea that "consult" should mean something different to "use".
ReplyDeleteHi Rose, thanks for the article - though to this Reader at least it would seem a fairly bold position to take G1/24 as implying that whilst one must always consult the description in order to interpret the claims, one can then disregard what it says when it comes to that interpretation and interpret the claims in a "standalone" manner anyway....... :)
ReplyDeleteIt seems to me that the argument that "consulting a description does not automatically equate to using it to override the clear meaning of the claims" is contrary to the EBoA's position in at least paragraph [17] - "The finding that the language of a claim is clear and unambiguous is an act of interpretation, not a preliminary stage to such an interpretative act". That's because it seems to start from the position of assuming that the claims have a clear meaning per se, but (according to the EBoA) that can only be decided once you know what the overall disclosure of the specification is. And if an initial reading of the claim is contrary to the description at that point, I'd have thought it would follow that the claim can't really be said to have a clear meaning to override.
That is why I'm afraid I don't sign up to the premise of your question "whether consulting the description to interpret the claims means that claim in T 439/22 encompasses spiralled tobacco, or whether the clear language of the claim overrides the definition provided in the description." Because having consulted the description, the term "gathered" clearly (!) _isn't_ clear! I don't know whether in view of the entirety of the disclosure the referring Board will consider gathered to encompass spiralled or not, but that's not because the term is so fundamentally clear in its own right that it can only be decided one way or the other OR because the Board will chose to override a "clear" meaning with an "unclear" one, but rather it is because the Board will have to construe its meaning in the overall context of the disclosure (not just the claims, and equally not just the single passage allegedly defining that term, but the entire context including broader description and figures).
I fully agree. See also par. 14, which explicitly rejects the case law that sees no need to refer to the description and drawings if the language of the claim is clear.
DeleteSo are you saying ('Because having consulted the description, the term "gathered" clearly (!) _isn't_ clear!) that compliance with A.84 was insufficiently considered during examination?
Delete(and therefor that 'gathered' should not have been left unamended in the claims)
Reasons 20 of the decision seems to go in the same direction.
On the question whether use and consult are the same or different, think about the USA, where the description is not conformed during pre grant prosecution. Given claims granted that are a lot narrower than those originally filed, one should consult the originally filed description but not be compelled to construe the claim to be consistent with it.
ReplyDeleteFrom a UK perspective, the trajectory seems to be towards the "Kirin-Amgen" approach to interpretation, that is: "what the person skilled in the art would have understood the patentee to be using the language of the claim to mean" (specifically by way of consulting the Patentee's description).
ReplyDeleteConveniently, such an approach gives plenty of scope for case-to-case variation, which the Board seems to want given the answer to question 3, and which makes sense to have to account for the precise nature of a "definition" in the description and how it relates to the claims. It also accounts for "consulting" rather than "using", allowing for the avoidance of strictly following an explicit or implicit definition in the description that does not make technical sense.
The Enlarged Board may simply have used "consulted" because Question 2 uses the term. I'm not convinced that the board intends to either limit or create room for case-by-case variation by the wording of their order. I'm also not convinced that had the board ordered that "the description should be used to interpret the claims", that this would have prescribed how that interpretation should be done. Naturally an explicit definition of a claim term will have significant weight, but there is no reason why the rest of the description could not be used to override strict compliance with that explicit definition if the rest of the description provided basis for doing so.
DeleteI don't think I disagree. The reference to the "consult" issue was more in response to the original article, and I'm not personally convinced the wording choice is necessarily significant. It looks like we are probably in agreement, and, regardless of the choice of wording, one reason I think the final question was not answered is that it leaves space for not following an explicit definition, if the context of the claims and the remainder of the description justifies it (i.e. the answer to question 3 is that it is a case by case, context specific exercise, but which must always take account of the description).
DeleteInteresting discussion. In 4., the EBA essentially says that patent claims must always be interpreted when asessing patentability. This aligns with 17. where the EBA says that the finding that the language of a claim is clear and unambiguous is an act of interpretation. It appears the EBA feels that anything that goes beyond just reading the claims, is an 'act of interpretation' where the description must be consulted. Consequently, I think it is now impossible to say: 'the wording of the claims is clear so I don't need to go to the description'. You can only say 'the claims are clear' if this is what you conclude after having consulted the descrption. In the matter that gives rise to G1/24, I do not think it can be reasonably argued that this is the case.
ReplyDeleteWhile I understand the decision may leave some people disappointed, my takeaways are positive.
ReplyDeleteI welcome the reasoning that understanding the terms of the claims is so to speak the initial step of interpretation. This looks like a given : no interpretation is possible if the meaning of the terms has not been ascertained. With this starting point, it is clearly and always necessary to look at the description and the drawings, if any, to gain understanding of the claim terms. This is quite clear anyway from Rule 43.7 EPC and its requirement to mention the relevant reference numerals of the drawings after each term.
The reminder of the primacy of the claims implies the red line, well settled in the case law and known as the rule of the « broadest reasonable interpretation », that their interpretation cannot result in entering into a claim a limitation only disclosed in the description. This effectively restricts the way the description can be used when it is « consulted ».
The emphasis that the conditions of Article 84 deal with the claims does not support the requirement to adapt the description to remove inconsistencies between the claims as amended and the description. But the adaptation may be justified when the inconsistency does cast doubt on the meaning of claim terms, as laid out in the 2024 revision of the Guidelines.
The language « consulted » is broad. When looking at question 3 of the referral, i.e. whether the patent can be its own dictionary, which the EBA has held inadmissible, this broad language avoids a binary Yes or No approach. It allows the relevant definition(s) of the description to be assessed on a case-by-case basis in order to find if the applicant has clearly expressed its intent that the definition of the description for a claim term prevails over the ordinary meaning of that term.
Having by now seen lots of comments, I remain of the opinion that the term “consult” is too abstract or too vague. Reading the description, but not drawing any conclusions is also a form of “consulting” it.
ReplyDeleteOne benefit of G 1/24 could be seen in the necessity of examiners to read the description before searching and examining an application.
I consider it a basic necessity for an examiner to read the description first in order to understand what the claims could mean, and not start with first, or only, looking at the claims. How on Earth do you want to search or examine if you do not known on what the claims have been built.
This should also be done before granting, but should not lead to amendments forced upon applicants in the communication under R 71(3). It should also apply when examining an opposition.
When assessing added matter, you need to read or consult the description to spot the problem. When added matter creeps up in opposition, it is a clear sign that the claimed features have not been properly assessed with respect of the original disclosure. Another possibility is that the examiner took for correct (or simply swallowed) what the applicant/representative said in this matter.
Not merely a limitation only disclosed in the description, but not translated into the claims, as well as a generalisation of limiting claimed features should be tolerated before grant or before deciding maintenance in amended form. This leads to the necessity of a referral on this topic, as foreseen in case EP 2 124 521 B1 (T 697/22).
There is a clear need to adapt the description to remove inconsistencies between the claims as amended and the description.
If the ED had done its job properly before grant in the case leading to G 1/24, and in the Agfa/Gucci case, there would not have been the necessity for a referral.
Another benefit of G 1/24 could be the necessity to adapt the description to the claims so that the proprietor cannot later try to push the boundaries of its scope of protection. It is too easy for a applicant/proprietor to attempt to conceal in the description meanings of claimed features which do not tie up with the ordinary meaning of those claimed features.
Claiming that the patent is its own dictionary is a fallacy and should not be tolerated any longer. It is only if the claims and the description are aligned with one each other that the culture of Angora cats can be nipped in the bud. See "gathered" and Gucci.
Next to the standard criteria, novelty and inventive step + added matter, clarity of the claims and alignment of the description to the claims, will then allow the same interpretation of claims before and after grant.
This should not entail more work for the EPO, as it is work which has been done in the past. It has simply be abandonned in order to increase production/productivity.
Daniel, I think you are unrealistic to suppose that all that needs to be done is to give EPO Examiners more time to examine compliance with Art 84 EPC. It's not going to happen, is it?
DeleteFar better to put the burden on Applicants, to police themselves. You know, like with Art 123(2). Amending claim 1 during prosecution carries a potent risk of falling into the 123(2)(3) fatal trap. And so, Applicants police their own amendments. Imagine for a moment the typical dialoge between an EPO and a US attorney, when the US client suggests an ambitious amendment to claim 1.
The UPC should find a way to introduce an equivalent fatal trap that all those who choose to go to grant with an ambiguous claim will fall into.
I can't think of a better one than to impose on such zealous patent owners the wide meaning of Claim 1 when enquiring into the claim's validity, but the narrow one when judging what infringes. That would "serve them right" when they think it clever to seed their filings with potential Angora cats. The more they put in, the worse their prospects for catching the infringer.
Think "gathered" but also "for". When that word is in the claim, construe it as "suitable for" when looking at validity but "intended for" when deciding on infringement (and not the other way around).
I respectfully diagree with your 'I consider it a basic necessity for an examiner to read the description first in order to understand what the claims could mean, and not start with first, or only, looking at the claims. How on Earth do you want to search or examine if you do not known on what the claims have been built.'
DeleteThe patent is a legal document. The claims are decisive. The description is just there so that article 84 is complied with (in extremis, if the subject matter lends itself to it and the claims are superbly drafted, the description could just be limited to be a copy of the claims).
Now, if the patent were a technical document, aimed at transferring technical insights from the writer to the readers, this would be different.
The claims are not built on the description, but rather the reverse. The reality is that the claims are built on the applicant's desired scope of protection, and the description is drafted to be sufficient to fulfil the applicant's side of the principle of patenting: the exchange of a temporary monopoly for public disclosure of an invention.
'How on Earth do you want to search or examine if you do not known on what the claims have been built.'? Simple, you read the claims (the examiner is assumed to be skilled in the particular field, don't forget that!), and if that is insufficient, you object based on Art 84.
@ BJ,
DeleteI would first like to draw your attention to T 758/13. In this decision, the board held that a purely formal support by the description through repetition of the mention of a claimed feature does not meet the requirements of Art 84. This stance was reiterated in T 590/21. I therefore conclude that it is not correct to state that “the description could just be limited to be a copy of the claims”.
I would be inclined to say that a patent is the result of some work of an inventor. If some work is worth patenting, then a patent attorney comes into play. The role of the patent attorney is to define for the applicant, on the basis of the inventor’s work, a scope of protection as broad as possible.
That a patent is not a blue-print for the workshop is not at stake. After all the patent is addressed to a skilled person and not to the patent specialist, and to do this it has to read the description.
Have you forgotten what Art 83 says: “The European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art”. An objection under Art 83 purely based on a given claim is rarely successful. What matters is the whole disclosure, i.e. the description and the drawings.
I do not dispute “that the description is drafted to be sufficient to fulfil the applicant's side of the principle of patenting: the exchange of a temporary monopoly for public disclosure of an invention”. I do however hasten to add that a description should not be there to nurture Angora cats in case of infringement.
But this does not mean that the whole thrust has to go on the claim and that the description can be ignored. Your position is actually at odds with that of the EBA which has insisted heavily on the fact that the description and the drawings ought to be “consulted” when interpreting the claims.
I have thus to maintain that the before searching and examining, an examiner has first to read, or “consult”, what this term might ever mean, the description.
Max Drei might think that it is not realistic, but this is how I have been trained to become a search and a substantive examiner. Efficiency and the quest for a high production have made this reading of the description obsolete or unnecessary in some circles at the EPO.
DXThomas,
DeleteI beg to differ. 'A blanket of size 2.0 m by 2.0 m made of sheep's wool' will suffice as a claim and as description supporting that same claim. It may not be novel or inventive, but that's a different matter.
Yes, perhaps, as you state 'an examiner has first to read, or “consult”, what this term might ever mean, the description'.
But if he is then surprised by what he finds, the most likely two explanations are that the examiner is borderline or insufficiently skilled in this particular field (which can happen, depending on work load distribution, and certainly not the examiner's fault), or the claims are suspect as being suboptimally, or even badly, drafted, perhaps even on purpose to deceive the public and the examiner (and in that case the examiner should put on his 'protection of the public interest' cap and be very very critical of the claims.)
I am, on the other hand, fully supportive of the strict line taken in T56/21.
@ Anonymous of 27 June 2025 at 15:15:00 GMT+1
DeleteHaving been addressed directly, I will reply directly and hope that my reply will be published.
For a start, it it not clear on what you beg to differ with. I guess it is with T 758/13 and T 590/21. But simply repeating the wording of a claim in the description is not enough. Such a description would in any case be at odds with R 42.
Furthermore, I am always weary when being confronted with oversimplified examples. You have merely stated the wording of a claim, but have not said anything about the corresponding description.
The link with the claim 'A blanket of size 2.0 m by 2.0 m made of sheep's wool' and your approval of T 56/21 is not clear at all. I see here a big problem of clarity. That representatives are in favour of T 56/21 is not a secret.
On the topic of adaptation of the description we will have to wait until the referral in the pipe-line is actually filed and the EBA has decided. Any comment before is actually superfluous.
The only comment I will allow myself to make on T 56/21 is that the board actually chickened out, and after announcing a referral, hurried to publish a decision before G 1/24, actually pre-empting the latter.
Without any further explanations on what the examiner might have found in the description, you allow yourself to state that “the examiner is borderline or insufficiently skilled in this particular field”.
I find this comment deeply disrespectful towards examiners and as far as “borderline” or “insufficiently skilled in this particular field” is to be considered, I will leave my reply open, but you can well guess what I think.
If the applicant claims 'A blanket of size 2.0 m by 2.0 m made of sheep's wool' and the description says that actually the size can be varied by n% without giving any further explanations or specific effect to be achieved, then the examiner will indeed have to query this statement.
The same applies if in the description states that under sheep’s wool any blend between 0 and 100% of sheep’s wool is actually part of the invention, then the examiner will have to query this statement as well.
According to G 1/24, the examiner does not have to “perhaps” read the description, it is mandatory to “consult” it, i.e. at least to read it.
Hello DX. The anonymous was the same BJ you replied to earlier. Something went wrong while submitting the earlier message.
DeleteI did not intend to disrespect examiners. I respect them greatly, they have a difficult job. All I meant to say is that, in technical fields in which none (or an insufficient number) of the examiners are technically trained, it may occur that other examiners, who are perhaps not optimally technically skilled in that field, have to process the application anyway. (or is this not the case?)
I always understand the examiner to be an approximation of ' the skilled person', and usually even more than averagely skilled. In such a case, if the examiner does not understand the claims easily (without recourse to the description), it should set off a first potential alarm in relation to the clarity of the claims, because in such a case it is likely the average skilled person will struggle as well. This may be cured by reading the description, and then it is all fine, but nevertheless, (IMHO at least), the fact that the examiner has to read the description in order to understand the claims is an indication (but not decisive) that the clarity of the claims is sub-optimal.
My reference to T56/21 was made because there the BOA (in an understandable and eloborate reasoning) concluded (rephrased by me) that different interpretations in examination and infringement are undesirable, but with the EPC being as it is, this is not something that the EPO can solve, whereas in G1/24 (which sadly is too brief) the inverse approach is taken: different interpretations in examination and infringement are undesirable, and the EPO should solve this. Fundamentally opposed.
@BJ,
DeleteI accept that you did not intend to disrespect examiners, but, in view of its violence, your comment invariably led to this conclusion. No need to dwell on it.
Presently examiners are working in clearly defined domains, be it only in order to search efficiently. It can indeed happen that examiners have, due to a lack of cases in their original domain, to work in other technical domains. This is however an exception and not the rule. One should not draw general conclusions from exceptional situations, but this is exactly what you have done.
If an examiner is not working in its original domain, I do not see any other possibility than to “consult”, i.e. to first read the description, and not just if he finds the claim as being unclear. As examiner, and later as director, I regularly changed the technical domain I have been working in. It is by reading descriptions and general technical information, that it was possible, after a certain time, to feel at ease in totally new domains.
In view of the production pressure, the temptation, when working in a new domain, of simply granting without too much looking is however great, but examiners are not to be blamed for this. This has clearly be the case at the EPO and was one way "managers" used to reduce the backlog in search and examination in specific domains.
What you actually suggest is putting the cart before the horse. It is only after heaving read the description that an examiner can come to the conclusion that the claim is unclear. This is exactly what G 1/24 requires: not only “consult” the description when the examiner finds the claim unclear.
T 56/21 is an unfortunate decision which, in my opinion, should better not have been issued, although it pleased most, if not all, representatives. If the aim is to avoid angora cats, there is no way out of adapting the description to the claims. My position is amply known and need not to be repeated here.
With the dichotomy between grant and post-grant procedures as instituted by the EPC, the risk of having different interpretations is still present. G 1/24, attempted to overcome it, but I do not think the EBA will eventually be successful in this endeavour.
There will still be diverging interpretations of patents leading to diverging conclusions in different fora. One example is given in the Ortovox/Mammut case. The UPC LD Dusseldorf decide that the claims as granted were valid, but the Swiss Federal Patent Court held that the claims as granted were invalid, all with the same patent and the same prior art. This could be perfectly possible between the UPC and the bords of appeal of the EPO.
'What you actually suggest is putting the cart before the horse. It is only after heaving read the description that an examiner can come to the conclusion that the claim is unclear. This is exactly what G 1/24 requires: not only “consult” the description when the examiner finds the claim unclear. '
DeleteI suppose we will just have to disagree there. The essence is my position remains: if the (skilled person) examiner has to consult to the description to understand the claims, the claims are badly drafted. If an unusual, uncommon, or imprecise term is used to define the invention, this is a risk the applicant took and must bear the (potential) consequences of. The examiner should not have to bend backwards to make some sense of substandard drafting by the applicant.
The applicant is master of the application, after all, and should not get a reward (potentially more beneficial claim interpretation by the examiner) for sub-optimal claims.
(Situation A: the examiner interprets the claims narrower than the applicant intended, and a positive examination follows. The applicant will not complain. Situation B: the examiner interprets the claims wider than the applicant intended, and finds some prior art. The applicant will complain and point to certain sections from the description to convince the examiner. Ergo: the applicant never loses from sub-optimal claims (situation B), but potentially profits (situation A))
'T 56/21 is an unfortunate decision which, in my opinion, should better not have been issued, although it pleased most, if not all, representatives. If the aim is to avoid angora cats, there is no way out of adapting the description to the claims.'
I fundamentally disagree, even more than wrt the previous point: Another way to avoid angora cats (a better way IMHO), is to focus on, confirm, and strengthen the primacy of the claims as they are worded, both in examination and in infringement, time and time again.
Reduce the importance of the description for infringement, reduce the wiggle room offered by A69/Protocol, in other words. A69 is, after all, the main reason that embryonic Angora cats can mature.
(Part 1 of 3)
ReplyDeleteThere seems to be a lot of confusion and debate about the meaning of the ruling in G 1/24 and, in particular, the legal basis for that ruling. However, for me, the ruling seems pretty clear-cut.
I believe that the most important aspects of the EBA's ruling are as follows.
1. Neither of Articles 69 and 84 EPC provides adequate legal basis for any method of claim interpretation (Reasons 6 to 9).
2. The general principles that should be applied can be found in existing case law (Reasons 10).
With regard to the latter point, it is disappointing that the EBA did not explicitly indicate the principles to which it refers. However, there are at least two reasons why I believe that those principles are nevertheless clearly and unambiguously derivable from the EBA’s ruling. Those reasons are:
- the case law cited in Reasons 11; and
- the reference in Reasons 15 to "the principles ... of Article 69 EPC".
(Part 2 of 3)
ReplyDeleteThe case law cited in Reasons 11 includes the following, for which the only common thread is a contextual approach to interpreting the claims, i.e. interpreting in the light of the disclosure of the patent document as a whole.
- T 0439/22, Reasons 3.3.2 (b):
“Moreover, there are decisions where the need to always read the terms used in a claim in the context of the claims as a whole and of the description is emphasised, although Article 69 EPC is not held to be applicable for assessing patentability (see e.g. T 2684/17, Reasons 2.1.4; T 1283/16, Reasons 4; T 2196/15, Reasons 1.1; T 1871/09, Reasons 3.1; T 1646/12, Reasons 2.1; T 620/08, Reasons 3.8., 3.16 and 3.17) or is not referred to as the legal basis for taking the patent as a unitary document into consideration (see e.g. T 447/22, Reasons 13.1).
Thus, the question whether ambiguity in the claim is a prerequisite for taking the description and figures into consideration arises independently of the question whether Article 69 EPC and the protocol are applicable”.
- T 2684/17, Reasons 2.1.4:
“According to the settled case law of the Boards of Appeal, the terms of a claim or the wording of the claim as such must be interpreted contextually, i.e., in the overall context of the claim or description”.
- T1871/09, Reasons 3.1:
“Faced with the parties' divergent arguments as to the meaning to be given to the claims and, in particular, to certain concepts to which they refer, the Board sought to seek in the patent specification, considered in its entirety, the meaning that a person skilled in the art would have attributed to them. In doing so, the Board applied a general principle of interpretation, of which Article 69 EPC is merely an illustration, according to which a part of a document cannot be interpreted independently of its context, but rather that the entire document must be considered when seeking the meaning of a particular statement referred to (see decision T 556/02, section 5.3, unpublished). Therefore, even if the provisions of Article 69 EPC concerning the scope of protection are not intended, except in the specific case of challenges under Article 123(3) EPC, to apply to bodies having to decide on opposition cases, the principle set out in that Article nevertheless remains applicable”.
(Part 3 of 3)
ReplyDeleteIn my 14 November 2024 amicus brief, I pointed out that the wording of Article 69(1) EPC reflects the general legal principle that a document must be interpreted as a whole. The EBA’s reference (at Reasons 15) to "the principles ... of Article 69 EPC" therefore appears to refer directly to that general legal principle.
For me, this all points to the unavoidable conclusion that the claims must be interpreted in context, i.e. in the light of the disclosure of the patent document as a whole.
None of this is reinventing the wheel in any way. Indeed, the very same general legal principle underpins the so-called uniform concept of disclosure at the EPO (a concept, I might add, which itself underpins EPO case law and practice concerning issues such as added matter, novelty and entitlement to priority).
Regarding the national court / UPC angle, the structure of the EBA's decision indicates that this was only a secondary consideration which helped to confirm its conclusions based upon fundamental legal principles.
I do understand the disappointment of those who earnestly wished for a different outcome. I also understand the inclination to see the UPC as a key motivating factor behind the EBA's decision. But, for me, it all boils down to plain logic and general legal principles. Nothing more and nothing less.
Abraham Lincoln reminded us (albeit in the context of how to treat people of colour in the US armed forces) "The difficulty is not in stating the principle but in practically applying it". How is that relevant here? First, the EBA opinion is a fine example of what Abe was going on about. Second, one would wish that the EBA could have done a tad more to ease the difficulties, rather than adding to them, for the tribunals which have apply the law in everyday practice. Does this opinion help the Board that has to decide what "gathered" means? Or does it make that determination even harder than it was before?
ReplyDeleteAnd many thanks, MN, for giving me the quote.
In the context of the patent (application as originally filed) as a whole, what meaning would the skilled person ascribe to the term "gathered"?
DeleteAnswering that question might not be completely straightforward. However, it is the kind of task that national courts routinely complete without too much trouble.
Perhaps the "special" meaning is decisive. Perhaps it only applies to certain embodiments. Or perhaps it applies unless otherwise indicated. All will depend upon the context provided by the patent document as a whole.
Yes, I see that, Mike. So would you say that the only way to help those charged with writing an FTO opinion is for the EPO, pre-grant, to do its public duty thoroughly, and police with the utmost severity total compliance (conforming the description) with the provisions of Art 84 EPC?
DeleteIf resources at the EPO are limited (so little time, so few Examiners) should they be targeted at clarity rather than Art 56. You know, like the UK Patent Office did, prior to 1978.
Max, the duty of the EPO is to ensure that the claims comply with Article 84 EPC. In this respect, and for a more detailed explanation of my views, I suggest that you refer to section 8 of my 14 Nov 2024 amicus brief.
DeleteFrankly, interpreting the claims of a patent in the light of the description (and, of course, common general knowledge) is no different in principle to interpreting the disclosures of prior art patent documents for the purpose of assessing their relevance to patentability. Prior art patents are often A publications, and so have completely unamended descriptions. If is is possible to interpret the disclosures of such documents without excessive difficulty, then I do not see what is so different in principle with doing the same for a granted patent.
A definition is not the same as a description. Coming to a conclusion what is directly and unambiguously derivable from a document is not the same task as checking whether a definition is devoid of ambiguity. What do you say?
DeleteIt all boils down to determining the meaning of the words used. Whether those words are used in the description or in the claims makes no difference. The disclosures of the whole document are relevant to determining meaning, as they serve as the context in which those words appear.
DeleteIn the recent decision T56/21 the BoA observed that A69 may lead to different claims interpretations than those used for examination, but argued convincingly (IMHO) that this is a problem for the legislator to solve.
ReplyDeleteBasically, in that case the BoA found that the law has defects, but the EPO has to apply the law nonetheless.
They even literally stated (R.8) ' It must be borne in mind that the role of the Boards of Appeal is to interpret the EPC using generally accepted principles of interpretation of international treaties. The Boards are not mandated to engage in legislative policy. [....] In other words, the Board will refrain from applying considerations of legislative policy and from anticipating further harmonisation of the national laws or practices by way of a progressive interpretation of the law, which would encroach on the powers of the legislator (i.e. the contracting states as well as the Administrative Council).'
And a few months later the EBoA does just that (encroach on the powers of the legislator) with this decision, in particular r.16: "a most unattractive proposition that the EPO deliberately adopt a contrary practice to that of the tribunals that are downstream of its patents"
Indeed, 'a most unattractive proposition'. But not one that the EPO 'deliberately adopts' and can choose not to adopt, but one that is imposed on it by the legislator.
I really don't understand (nor agree with) the EBoA decision.
If you do not understand the EBA's decision, then you are presumably also at a loss to understand the legal basis for settled case law concerning the interpretation of prior art documents (or priority documents, or the disclosures of an application as filed for the purposes of Article 123(2) EPC). That case law, including T 56/87 and T 312/94, rests on the same legal principle:
Deletehttps://www.epo.org/en/legal/case-law/2022/clr_i_c_4_1.html
I believe I understand the case law concerning the interpretation of prior art documents, and agree with it. I see, however, no analogy with the present EBA decision, because a definition of a desired scope of protection is fundamentally different from a technical description of an object or method.
DeleteMaybe I should have been clearer: I understand the present decision, but I don't understand how they could have gotten to it.
I find especially incomprehensible the leakage of using description content from determining the scope of protection to claim interpretation for patentability evaluation, as it is not supported, even suggested, anywhere in the EPC.
Of course it is undesirable that claims are interpreted differently during infringement proceeding and during grant proceedings. But the solution is not to make claim interpretation during grant proceeding as imprecise as in infringment proceeding, because then we have double trouble. The solution is rather to be stricter on precise claim formulation in both cases, so also in infringement proceedings.
We shall just have to agree to differ.
DeleteI get that you are worried about claim interpretation becoming a more complex and cumbersome process. Even if I do not share your concern, I can see that arguably has a rational basis. However, I just don't understand how you can possibly agree with and approve of the uniform concept of disclosure but disagree with (and see no legal basis for) the ruling in G 1/24 ... even though the legal basis for the two is precisely the same.
Also, I will have to respectfully disagree with your assertion that "a definition of a desired scope of protection is fundamentally different from a technical description of an object or method".
I hope that you will agree that claims define the (subject) matter for which protection is sought. This is what the first sentence of Article 84 EPC says.
Claims use words. Words convey meaning. Determination of meaning requires consideration of the context in which the words appear. Only by determining the meaning of the words used can the subject matter to which those words relate be determined. Thus, the subject matter defined by the words used in the claims must be determined in context.
On the other hand, the extent of protection conferred by the claims is something else entirely, not least due to the need to consider Article 2 of the Protocol. That was the EBA's point when it ruled out Article 69 EPC as providing legal basis for claim interpretations.
Of course I fully agree that 'claims define the (subject) matter for which protection is sought.'
DeleteHowever, as claims define a 'forbidden area' for third parties, and it would be unfair to these third parties if they can not easily determine the limits of the forbidden area, UTMOST attention should be given to the words in the claims to avoid doubts as to the meaning of these words.
The meaning should be determined 'in context' perhaps, but ideally this should not be necessary. After all, if two skilled people talking to each other understand each other, why should we be more lenient if one skilled person expresses himself by means of claims, instead of orally?
My point simply is: if the claims themselves are insufficient for the examiner to determine the desired scope of protection (the examiner being a (more than) skilled person as well), there is something iffy about the claims. Perhaps not iffy enough to reject them, but nonetheless...
Extent of protection is not 'something else entirely'. An ideal patenting system should be set up/adjusted so that the scope during examination and the extent of protection are the same. Art 69 is there as a safety net to avoid excessive reliance on strict wording of the claims, (at least in my view), not as a way to sneak more subject matter in than was examined. To put things black and white (and I know that in reality they are not): if you need to rely on article 69 during infringement proceedings, you probably paid insufficient attention to the claims when drafting them (assuming that the applicant's intentions stayed the same, which is not always the case).
BJ, you appear to be looking at this solely from the perspective of third parties and FTO. You also appear to be confusing the subject matter of the claims with the extent of protection provided by the claims ... or at least wanting those two things to become identical.
DeleteMaybe in your "ideal patenting system" things would work out how you want them. However, we are dealing with the EPC, where it is as plain as a pikestaff that the extent of protection provided by a claim is very much not the same as the subject matter of a claim.
Exhibit A: Article 1 of the Protocol to Article 69 EPC, which reminds us that, when correctly determined, the extent of protection provided by a claim "combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties". Argue all you wish, but it is impossible to ignore that the Protocol explicitly requires the consideration of two perspectives, and not just the perspective of third parties. In particular, there is a need to balance a "fair protection for the patent proprietor" with a "reasonable degree of legal certainty for third parties", and to consider the issue of equivalents (Article 2) when doing so.
I am indeed wanting the subject matter of the claims and the extent of protection to become identical.
DeleteI know they will never be, but in my view all actors in the patenting systems (well, except the Angora cat loving applicants & their representatives) should at least work towards that goal.
Rather than diluting the primacy of the claims with the compromise from A69/the Protocol (which is clear in its intentions but murky in its execution), which is what the EBA condoned (see reasons 15 and 16), the logical, natural trend (at least in my view) should be the inverse: to push for precision and exactness, also when determining the extent of protection.
It feels that those desiring to 'game the system' have, unfortunately, won a battle.
Section 20 of the decision emphasises the importance of a examination of clarity while referring to passages in the President's comments, all of which describe current EPO practice on adaptation. Does this not send a very clear message that the EBoA endorses the current EPO practice?
ReplyDelete@ Anonymous,
DeleteWe will know whether the EBA will endorse the current EPO practice on the adaptation of the description when the referral in the pipeline will have been filed and decided by the EBA. I am inclined to say that it goes in the direction you suggest, but wait and see.
The EBA has however made clear that it does not endorse the current practice of the EPO at only looking at the description should a claimed feature lacked clarity. It should at least be “consulted”, whatever that might mean. The bare minimum should thus to read the description, and possibly draw conclusions from this reading.
If the aim of the EBA was to allow a in principle similar interpretation of claims in pre- and post-grant procedure, and therewith stop nurturing potential Angora cats, there is no way other than to align the description with the claims.
Daniel, I'm not as confident as you, that the only way for the courts to achieve uniform and consistent interpretation of claims is to amend the description as filed, and to keep on amending it until it conforms 100% to the claims allowed through to grant. No other jurisdiction requires such amendment. Perhaps that's because in those jurisdictions the description as filed is what counts, not only for compliance with Art 83 and Art 123(2) but also for "support". Are you telling us that the EPO is the world's only Patent Office that puts courts into a position to perform a consistent and accurate job of interpreting a granted claim? Why can't a court do that, on the basis of i) the descrn and drgs as filed ii) the originally filed claims and iii) the amended claims that Applicant chooses to take through to grant? Comparing the amended claims with what was originally filed gives a powerful insight into the meaning of the claims as granted, what Applicant was using the language of the (amended) claim to mean.
DeleteWhat further insight is provided by a grotesquely "conformed" description? I don't see it, yet.
Dear Max Drei,
DeleteLike plenty of people, you seem to regularly forget the history leading to the EPC. I have explained many times that in order to get over the four unsuccessful attempts for a “Community Patent”, later “EU Patent”, the compromise was to limit the work of the EPO to grant patents and to leave post-grant decisions to national courts. Another compromise was to open the EPC to non-EU contracting states.
This is the reason d’être of Art 69 and of the Protocol. There is thus a big difference with national courts and national patent offices, where it is easy to have everything under the same roof. National courts can impose their interpretation of the patent law to national granting authorities. Nothing like this exists for the EPO. The whole difficulties we presently experience is due to this dichotomy between grant and post grant procedures with European patents.
On the one hand, national or supra-national jurisdictions cannot impose their views on the EPO. On the other hand, national or supra-national jurisdictions are free to interpret the claims as they wish according to Art 69 and the Protocol.
The EPO has for task to deliver patents which claims should be clear, supported by the description, not comprise added-matter and be novel and inventive. This does not hinder national or supra-national jurisdictions to come to their own conclusions.
In order as well to leave applicant/proprietors little wriggle room as far as Angora cats are concerned, and for the safety of third parties, I consider it necessary to align claims with the description at the moment the patent is granted or maintained in amended form. Just have a look at the Agfa/Gucci case at the LD Hamburg. It says it all.
I do not see it as “grotesque” to conform the description to the claims before grant, for instance when the optional character of features incorporated in an independent claim are suppressed in the description. The same applies when some embodiments originally disclosed are not any longer falling under the granted claims and this mere fact is acknowledged in the description before grant.
On the one hand, you asked yourself why on Earth has the ED let “gathered” slip through at grant, but then you cannot in the same breath claim that it is “grotesque” to require an amendment of the description.
The day we have a file-wrapper estoppel à la US, then I will agree with you that the description will not any longer need to be adapted. The LD Munich had tried something similar in the Hanshow case, but the CoA did not accept it.
Once again, Daniel, I must apologise for not making myself clear. I do not condemn as "grotesque" any and all prosecution amendments. It is one thing to address a blatant contradiction between descrn and claims, quite another to sweep the description clean of any occurrences of any word like "about" or "approximately. My plea is for ED's checking for compliance with Art 84 to conduct themselves reasonably and sensitively.
DeleteThe famous Activis case (pemetrexed disodium) had a description not "conformed". Infringement by equivalent was found. The result might well have been different (at least in England) with a conformed description. Is EPO negligence therefore responsible for a miscarriage of justice. I don't think so. Conversely, the "gathered" example is a good Angora cat, but not every disconformity crates one of them. Take the case of alloy compositions in everyday industrial practice. Compositions ar always, to a degree, "approximate". Ist so. Is it fair to the inventor to excise from the description every instance of "approximately". Why can't you excise the word from the claims (the definition of the invention) while leaving the description to set out the reality of what the invention is and how it is practised? The court will construe infringement accoringly.
The English courts have long been adjudicating cases, some with conformed descriptions and some without. What they say about recourse to the EPO prosecution file is interesting. Only when the public interest demands it (like with Art 123(3) issues), or when the claim is hopelessly ambiguous and the prosecution history removes all ambiguity, will the court rely on the prosecution history to breathe meaning into the claim. The current CIPA journal article discussing English post-Activis cases on infringement by equivalent sums it up, that the issue is one decided on "fine margins" and "by hearts as much as by minds". As to whether all prosecution amendments to the decription make the court's Art 69 work easier or more difficult, whether conforming the description delivers better justice, and whether Activis was decided correctly, only time will tell.
Dear Max Drei,
DeleteLet’s forget about grotesque. But I confess having been shocked by the adjective.
As far as Actavis is concerned, the applicant/proprietor has blatantly refused to conform the description to the claim. In the end the examiner gave up.
But it is clear that the only salt disclosed was disodium.
I do not think that this would have changed matters since the UKSC found infringement by equivalent. This was perfectly possible under Art 69(1) and Art 1+2 of the protocol.
What was wrong was that Lord Neuberger and Sir Robin Jacob, told the examiner off when he insisted on limiting the claims to disodium. According to them Art 123(2) was not applicable.
The contrary is true and the examiner cannot be blamed for doing his job!
Let’s say the alignment of claims and description would have made the task more difficult for the proprietor. It is only once he saw that it was easy to circumvent his patent that he reacted.
I have never been an ayatollah anti “about” or anti “approximately”.
If there is no risk of confusion, there is indeed no need to intervene for an ED.
See also my reply to anonymous. The Guidelines require to act if a confusion is possible.
Any instruction in the Guidelines can however not be ignored by EDs.
That the Guidelines should be applied with reason is however not at stake.
It is alas easier to query approximately than to find relevant prior art.
I will leave it at this!
Daniel, on the subject of whether to resist demands to conform the description, I write below text from the UK Supreme Court which prompted the assessment in the CIPA Journal article and my words above:
Delete"the addressee of the patent would, as I see it, understand that the reason why the claims were limited to the disodium salt was because that was the only pemetrexed salt on which the experiments described in the specification had been carried out. However, it does not follow that the patentee did not intend any other pemetrexed salts to infringe: the suggestion confuses the disclosure of the specification of a patent with the scope of the protection afforded by the claims."
And here is the text from the CIPA article: "Lord Neuberger stated that if the specification matched the claims, he would have considered that would have been a more powerful indication that the patentee was intending to limit the scope of protection."
Not surprising, then, that the pemetrexed applicant resisted the ED's demands for conformity. Given the Activis precedent from the UK Supreme Court, one might expect push-back from now on, from patent attorneys called upon by the ED to conform the description strictly to the allowable claims and trying their best to secure for their clients a scope of protection which is not less than what the courts are willing to bestow upon them.
Max, it is interesting that you see the "gathered" example in the case underlying G 1/24 as a good Angora cat.
DeleteWhy so? Has the patent been litigated, with the patentee asserting a broad scope of protection supported by reference to the definition of "gathered" in the description? Have any courts been (a) persuaded to adopt that broad scope of protection and (b) not invalidate the patent in the light of prior art which anticipates that broad scope?
Or is it that you merely think that the broad definition in the description generates a hypothetical possibility for both (a) and (b) to occur in litigation?
Whilst Angora cats are much discussed in commentary, they are surprisingly difficult to spot "in the wild". I believe that the reason for this is that the national courts have hunted them to near extinction. Whilst there are occasional reports of sightings of live specimens, such reports are rarely (if ever) backed up by compelling evidence. For example, it seems to me that national courts adopt a pretty consistent approach for claim interpretation, and so would take the description definition of "gathered" into account for both infringement and validity assessments.
As an aside, it is interesting to contemplate what the legal situation for the patentee would have been had the description, prior to grant, been adapted to the narrow definition of "gathered" upon which the OD's decision was based. As far as I can see, that narrow definition had no basis whatsoever in the patent application as filed. The likely result of a "strict" adaptation of the description to that narrow definition would therefore have been the addition of new matter. All of which illustrates yet another good reason why patentees might reasonably be very wary of "strict" adaptation to claims that have been afforded an interpretation by the EPO which may well be wide of the mark (or at least not quite correct).
Agree with you about added matter and the problems of requiring strict conformity. My condemnation of the definition of "gathered" was perhaps excessive but I have long thought that those who draft in the USA think it good practice to incorporate as much wiggle room as they can, between broad interpretations for chasing infringers and narrow ones for defending against validity attacks. Isn't that what is going on here?
DeleteWhy no sightings in European patent litigation of Angora cats? I offer two thoughts.
First, it is not open to courts, post-grant, to find a claim indefinite. So they never do.
Second, even if they could, they wouldn't, because judges pride themselves on their ability to find meaning in a document so, and the EPC "tells" them to do exactly that so, to profess themselves unable to do that it to wimp out and admit defeat. judges don't do that, do they?
Dear Max Drei,
DeleteIn reply to your comment of Sunday, 29 June 2025 at 22:22:00 GMT+1, I would like to say the following:
We have discussed the Actavis case many times on many blogs. I can follow Lord Neuberger when he states “it does not follow that the patentee did not intend any other pemetrexed salts to infringe: the suggestion confuses the disclosure of the specification of a patent with the scope of the protection afforded by the claims." But this is not the real story.
When looking at the case, and in my opinion, at filing and during the whole prosecution, the applicant/proprietor wanted to claim any pemetrexed salt, although it had only disclosed pemetrexed disodium. He simply did not have the experimental data supporting this contention, and this is why the examiner considered a general claim to any pemetrexed salt as offending Art 123(2). This was incorrectly assessed by Lord Neuberger and Sir Robin Jacob. The examiner had no choice but to claim infringement of Art 123(2).
The applicant/proprietor did not possess the full breadth of the invention at filing. This was given to him by the UKSC in elaborating a theory of equivalents. The UK Court of Appeal was of the opposite opinion and considered the patent not infringed as it was limited to pemetrexed disodium.
It is a bit like considering the glass being half full or half empty.
I would like to make clear that, especially in view of the Actavis case, that it is of utmost importance to align the claims with the description. It is only because the applicant/proprietor refused to adapt the description to the claims, that it could later nurture a wonderful Angora cat. The whole reasoning of Lord Neuberger was based on the non-adapted description.
I agree with Art 69(1) and the Protocol, that the scope of protection could be broader than the mere wording of the claim, but not at the price of a contribution the applicant/proprietor did not possess when he filed its application. This was however the situation in the Actavis case.
My conclusion is therefore absolutely opposite to yours. Let’s wait and see what the EBA will say in matters of adaptation of the description.
To me, the Actavis case reinforces my position when it comes to the adaptation of the description. It is an absolute necessity.
Max, it can be difficult to discern what might have motivated a US-based author of a patent application to use certain words in the claims and to include specific definitions for (some of) those words in the description. My sense is that this approach is most often driven by "best practice" in the US, often combined with reliance upon a healthy dose of boilerplate language.
DeleteFrankly, I do not get the impression that the aim is ever to provide the applicant with a shot at giving birth to an Angora cat. However, that could have a lot to do with the technical field in which I operate, where patent quality (or strength) matters a lot more than patent quantity.
On the subject of Angora cats, it seems to me that the EPO's approach very much mirrors the attitude expressed by BJ on this thread. That is, the EPO seems to be far too concerned about stamping out every (remote) hypothetical possibility for an Angora cat, and not concerned anywhere near enough about the (much more likely) negative effects of their practice.
Added matter is one negative effect. Until G 1/24, but hopefully no longer, another negative effect was the "EPO-created" Angora cat: where the unique claim interpretation approach adopted by the EPO pretty much guaranteed that the national courts would interpret granted claims differently to the EPO.
But really one has to wonder why, in attempting to pre-emptively stamp out any possibility for Angora cats, the EPO has prioritised certainty for third parties over all other concerns, including the legitimate interests of the patentee in obtaining a fair scope of protection. As you have pointed out in connection with the pemetrexed case, adoption of the EPO's strict description adaptation practice would have almost certainly denied the patentee the protection for equivalents which represented a fair reward for disclosure of the invention. Has the EPO somehow forgotten that their role is to grant patents, and not to police how patentees might try to persuade national courts to interpret their claims?
Dear Daniel and PotP, your two replies leave me on tenterhooks what guidance the EBA will give us (and the EPO's Examining Divisions) about what degree of conformance of the description with the claims is enough to satisfy the provisions of Art 84 EPC. I wonder whether it will take any notice at al of how the pemetrexed case was assessed by the Supreme Court of the UK, because that court does provide a nice real case, a real life judgement, on how the act of conforming can reverse the eventual outcome. How does one best make the balance between the legitimate interest of the patentee and that of the public.
DeleteOh, and Daniel, what is all this about "possessing" the"full breadth" of "the invention" at the filing date. Something borrowed from the first to invent jurisprudence of the USA, I would wager? But is it meaningful in the context of the EPC and its Art 83? Can you perhaps give me a citation from The GL or the ECBA?
Regrettably, the EBA has refrained from answering Question 3. The EBA should have made it clear that in cases where the description does provide a definition of an expression recited in a claim, it is not permissible to refer to common technical knowledge for interpreting this term in a different manner. In the underlying case, the problem was caused when the Opposition Division applied an interpretation (of the expression "gathered sheet") which was derived from Wikipedia. As was pointed out by the opponent, this interpretation is inconsistent with the teaching of the patent (since it pertained to a different technical field).
ReplyDeleteAlso, at the examination stage, the Examiner should have required the Applicant to include the definition of "gathered" (as provided in the description) when claim 1 was amended by adding the feature "gathered sheed". According to the description, the features used to define the term "gathered" are essential rather than optional features.
Actually, the EBoA answers Q3 (in the context of Q2) . In §20 of the decision when asserting that the response to unclarity is amendment the EBoA refers to las sentence of par. 135 of the Comments of the President that reads "However, iin the interest of legal certainty for the public, the EPO will, as far as possible, require the claims to be amended so that their meaning is clear from the wording of the claims alone".
DeleteI wonder how this decision might change the approach of examiners to the use of 'approximately' in the claims.
ReplyDeleteSay I have invented a super new steel alloy comprising approximately 0.1-0.5% component A, approximately 0.6-1.2% component B, approximately 3-5% component C, balance iron and inevitable impurities. The examiner would require 'approximately' to be deleted from the claims (even if there is no specific disclosure without).
Leaving 'approximately' in the disclosure of the invention would allow me to argue infringement outside the specific ranges more readily than without. Does this also apply to validity before the OD? If the claims are read in the light of the description, the specific ranges are not hard boundaries. Perhaps the examiner would require the description to be amended in line with the claims but why should I limit the scope of protection because the EPO has developed an allergy with regard to the use of approximately in the claims?
Time will tell.
@ Kant,
DeleteAs far as the interpretation of “about” or “approximately” by examiners is concerned, I would like to refer to the Guidelines F-IV, 4.7.1. The possibly arising clarity objections are dealt with in F-IV, 4.7.2. Please look as well at Guidelines G-VI, 7.1.
When you claim that “Leaving 'approximately' in the disclosure of the invention would allow me to argue infringement outside the specific ranges more readily than without”, you are clearly wanting to nurture an Angora cat. This should not be allowed.
The EPO has NOT “developed an allergy with regard to the use of approximately in the claims”. Examiners apply the Guidelines and they have no other choice left.
In opposition the situation is different as far as the claims are concerned, as anything in a granted claim cannot be queried under G 3/14. As far as validity is concerned, the Guidelines apply.
For the surplus have a look at T 1677/13: the deletion of the term "about" before numerical values does not infringe Article 123(2) EPC according to normal practice under the Case Law of the Board of Appeals, unless the skilled person would understand, from the whole content of the application as filed, that an exact value as such could not have been meant, as was the case in T 934/96. The same applies mutatis mutandis to “approximately”.