PatKat has been watching with keen interest as the first decisions applying the Enlarged Board of Appeal's recent ruling in G 1/24 have started to trickle in. The initial view from many commentators was that G1/24 "extinguished uncertainty" on the issue of claim interpretation. However, the Enlarged Board of Appeal (EBA)'s choice of wording in its G1/24 that the description "shall always be consulted to interpret the claims" (emphasis added) left some of us wondering, this Kat included, how much G1/24 actually allowed a patentee to rely on the description for the purposes of claim interpretation. After all, it is perfectly possible to "consult" someone for their opinion, and then entirely ignore their view when making a decision...
A new decision from the Boards of Appeal now addresses this question directly (T 2027/23) and finds once again for the primacy of the claims over the description. With a nod to the related controversy of description amendments (IPKat), the Board of Appeal warns that it is not the task of the EPO to perform "interpretative somersaults" to align claims with the description, and the burden of aligning the description with the claims falls to the Patentee. Interestingly, the decision in T 2027/23 has been given a "B" distribution status, meaning that it has been distributed to other Boards.
Legal background: after G 1/24, what does it mean to "consult"?
In G 1/24, the EBA sought to harmonise the EPO's approach to claim interpretation. In its decision, the EBA concluded that the description and drawings must always be consulted, not only when a claim is unclear. However, G 1/24 left open the crucial question of what "consulting" the description actually entails. Can a definition in the description be used to narrow a clear, but overly broad, claim term to rescue it from the prior art? If so, how generalisable does this definition need to be to the disclosure as a whole?
The present case, T 2027/23, related to the novelty of the patent in question (Article 54). The allowability of the claims hinged entirely on whether the claims could be interpreted narrowly in light of the description, as argued by the Patentee
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| Firefighter Kat |
A turntable tale of claim construction
The case at the centre of this decision was an appeal by the Patentee, Iveco Magirus AG, against the Opposition Division's decision to revoke its patent for a control system. The Opponent was Rosenbauer International AG. The patent in question related to a control system for an aerial apparatus, such as a "turnable ladder of a firefighting vehicle". The invention involved a joystick-like input device where its deflection is converted into a speed signal to move the ladder. The system also determines a possible maximum speed and uses "restricting means" to counteract or limit the joystick's deflection accordingly.
The main issue on appeal was novelty in view of a public prior-use vehicle used by the fire brigade in Tauberbischofsheim. The Patentee argued that key claim terms such as "processing unit" and "speed signal" should be interpreted in light of the description to mean they were limited to electrical systems. This interpretation, it argued, would distinguish the invention from the prior-use vehicle, which used a mechanical control system.
The three major takeaways from G1/24
The Board of Appeal considered how the process of interpreting the claims in this case should be approached in view of G1/24. For the Board of Appeal, there were three major takeaways from G 1/24 (r. 3.5.2):
The claims are the "basis" for interpretation, and the description should always be "consulted"
. However, G 1/24 is silent on the purpose of such consultation. (emphasis added) Discrepancies in claim interpretation practice between national courts, the UPC, and the Boards of Appeal should be avoided to foster harmonisation
. Patentees are the "masters of their fate" and it falls upon them to remedy any discrepancies between the description and the claims
. (emphasis added)
Applying these principles, the Board of Appeal flatly rejected the Patentee's invitation to read limitations from the embodiments into the claims. The Board of Appeal reasoned that such an approach would contradict the established case law and G 1/24. Crucially for the Board of Appeal, adopting the Patentee's approach would also undermine legal certainty by allowing patentees to behave like Professor Franzosi's "Angora cat". As Jacob LJ famously observed, this is where a patentee, when challenged, presents their patent as small and cuddly, but on the attack, "the fur bristles, the cat is twice its size with teeth bared and eyes ablaze". The Board of Appeal found it highly undesirable for a patentee to argue for a narrow interpretation for validity, and then for a broader scope of protection when enforcing the patent.
To reinforce its point on harmonisation, the Board of Appeal referenced decisions from the UPC (DexCom vs. Abbott, UPC_CFI_230/2023 (IPKat)), the German Federal Court of Justice, the US Court of Appeals of the Federal Circuit (Renishaw PLC v Marpass, 158 F.3d 1243 (1998)), and the Japanese Supreme Court, which the Board of Appeal considered to all support the principle that an example embodiment does not generally permit a restrictive interpretation of a claim specifying the invention in general terms.
On the interpretation of the order from G1/24 that the description should be "consulted", the Board of Appeal found the following:
'"consulting the description" does not imply any specific result of such consultation: A consultation of two conflicting authorities does not a priori determine who is master. Decision G 1/24 does not, as the appellant seems to suggest, require the Boards to give the description preference over the wording of the claim. To the contrary, according to the Order of G 1/24, "the claims are the starting point and the basis for assessing the patentability of an invention"' (r.3.5.4)
The Board of Appeal concluded that "a claim should not be interpreted, based on features set out in embodiments of an invention, as having a meaning narrower than the wording of the claim as understood by the person skilled in the art" (r. 3.5.6). In a final note, the Board of Appeal added that "in cases of discrepancy between the claim language and the description, it falls upon the patentee to remedy this incongruence by amending the claim. It is not the task of the Boards of Appeal to reach such alignment by way of interpretative somersaults" (r. 3.5.8). The appeal was therefore dismissed and the patent revoked
Final thoughts
The decision in T 2027/23 thus found that G1/24 is not an invitation for patentees to cherry-pick limiting features from the embodiments to save a claim from the prior art. It is notable that the Board of Appeal made explicit reference to the "Angora cat" problem and indicated that the EPO should seek alignment with practice at the UPC and in other major jurisdictions. However, as this Kat has recently observed, it remains open to question how much the UPC and EPO are in fact aligned on the issue of claim interpretation (IPKat). In the recent decision from the Hamburg Local Division in Agfa v Gucci (UPC_CFI_278/2023) the UPC found that, in contrast to recent Board of Appeal decisions, a narrowing description definition should be used to interpret the claims (IPKat). The Board of Appeal in this case also cited some divergence with the UPC (r. 3.5.5.).
However, the case of using narrowing definitions is subtly different to the case of importing narrowing language from specific embodiments in the description. Both the UPC and EPO appear to agree that patentees should not be allowed to use individual embodiments to narrow the claim language absent a more generalisable definition. The current divergence lies on the relevance of these more generalisable definitions (IPKat). Compare, for example, the interpretation of G1/24 in T 1999/23 (IPKat) and the approach of the UPC in Agfa v Gucci (UPC_CFI_278/2023) (IPKat)
The decision in T 2027/23 also has interesting implications for the now-pending referral G 1/25 on mandatory description amendments (IPKat). By stating that patentees themselves must fix inconsistencies, and that the Boards of Appeal will not perform "interpretative somersaults"
For this Kat, the message from this latest decision to apply G1/24 aligns with her view before even G1/24 was decided (IPKat). If you want the scope of the claims to be clear, the best place to ensure this is and has always been the claims, not the description.
Further reading
Reviewed by Dr Rose Hughes
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Monday, September 01, 2025
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Posts
Rose, your report leaves me gobsmacked. For decades the EPO has been warning Applicants "Be it on your own Art 123(2) head, if you make any amendments in prosecution. It's 100% YOUR responsibility" but at the same time insisting (the only Patent Office in the world to do so) that Applicants must strictly "conform" their descriptions to the allowable claims. Do we see here the start of a shift towards alignment of the EPO's Art 84 position with its Art 123(2) position?
ReplyDeleteThe EPO sees its role as to issue only patents that are so clear that even a non-technical judge, led astray by zealous lawyering, cannot possibly misinterpret the issued claims. Admirable as such, but isn't it somewhat patronising to "non-technical" judges?
And perhaps now the trans-national patents court in Europe is increasingly self-confident and bent on aligning itself with the rest of the world, where courts tell Patent Offices what to do, and not vice versa.
The courts cannot avoid exhaustive assessment of i) the granted claims and ii) the originally filed disclosure. Giving them an exhaustively "conformed" description to consider just as exhaustively adds inevitably to the court's workload.
And anyway, for those of us tasked to write FTO opinions on the basis of a WO-A publication, I doubt whether all tht work of "conforming" the description makes it any easier to write an FTO opinion after the patent issues. How does it help? What do other readers say?
Max, it is just as much the applicant's responsibility to submit a text (description, drawings, claims) that complies with Art. 84. There is no difference here.
Delete"And anyway, for those of us tasked to write FTO opinions on the basis of a WO-A publication, I doubt whether all tht work of "conforming" the description makes it any easier to write an FTO opinion after the patent issues. How does it help?"
DeleteThis is something I think the vast majority of us would agree with.
Description amendments do not make the granted patent clearer for third parties. If anything, they make it less clear because now we have the description as filed and the description as amended to look through and compare.
Also having spent so many years in the system, I now believe there is no harm in having uncertainty as it incentivises parties to talk to each other and settle. Where there is certainty those with strong IP terrorise those that don't have it, and I cannot believe that is good for the economy or R&D
DeleteDon't understand, Rowan, what point you seek to make. Sorry.
DeleteNo difference? What about i) the absence of Art 84 EPC from the grounds of invalidity versus ii) the fatal trap set by Art 123(2)/(3)?
If my claim, given primacy over the description, is in itself "clear" and furthermore enjoys adequate "support" from the description, I'm compliant with Art 84, aren't I? End of story, no?
Not sure that allowing more uncertainty does anything to reduce bullying of impecunious litigants by those with deep pockets. The bullying will continue unabated, regardless of the level of uncertainty.
DeleteUnless you have in mind that the more wiggle room you give non-technical judges the more opportunities they have to see to it that the bullies lose the case. But is that a good way to punish the bullies. I doubt it.
Der Max Drei,
DeleteThe EPO was right in warning that applicants that any amendment should not offend Art 123(2). I do not see here the start of a shift towards alignment of the EPO's Art 84 position with its Art 123(2) position. If the applicant/proprietor is invited to bring in the claim the interpretation from the description, I fail to see any upcoming problem of added atter, as the claim should contain exactly what has been originally disclosed.
What the boards do, before and after G 1/24, is to avoid the applicant/proprietor to have its cake and eat it. The applicant/proprietor cannot be allowed to benefit from one interpretation when it comes to infringement, i.e. the broadest possible, and a different one, more limited when it comes to validity and vice-versa. I fail to see here any patronising to "non-technical" judges.
When the proprietor wants to claim what is not stated in the claim, but tries to define its scope of protection in case of a discrepancy between claim and description, or vice-versa, post-grant judges are perfectly able to see what the proprietor wants to do, but is not allowed to.
Giving post-grant a "conformed" description to consider, does by no mean adds inevitably to the court's workload. The contrary is true.
By aligning claims and description, I am of the opinion that it makes work easier for those tasked to write FTO opinions, as they do not have to dig deep in the description to find out what the actual scope of protection could be.
For a certain length of time, digging into the description will remain, but once the take aways from G 1/24, will have come through at filing, or at the latest at grant, it will be easier for all.
The absence of Art 84 EPC from the grounds of invalidity does not withhold the EPO to request applicants/proprietors to abide by it. By the way, be it in 1973 or in 2000, the British delegation insisted that Art 84 should become a ground of opposition or invalidity. The other member states resisted this endeavour. And I think it was right so.
Hope you are well Max Drei. Just to briefly add that some UK Examiners also require the description to be amended for conformity with the claims, and occasionally they can be very strict on this (though a lot of the time the closeness of the compliance deadline means the Examiner ends up ignoring the description).
ReplyDeleteAlso whilst agreeing with your points, I would also say we shouldn't feel too sorry for the extra work the courts need to do to also consider the description (original and granted) in claim interpretation. At lot of the time all they actually need to do is decide between the positions the parties adopt on each issue, and it is the parties that (should) do the work in analysing how the description might affect the meaning of the claims. Litigation is complex by its nature and all the clever people involved (who are normally highly paid) can normally cope well.
Interesting, Santa. What provision of the UK Patents Act does a UKIPO Exr rely on, when refusing an application for an uncured descrn/claim disconformity? Is it that the claim is not clear, or that it lacks support, or perhaps it varies from case to case and Exr to Exr? I ask because, within the EPO, there might be different opinions on this.
DeleteAnd yes, I'm in good health, thanks. Kind of you to ask. I wonder what prompted you to ask. Hopefully not the tenor of my recent remarks (Ha Ha).
Thanks Max Drei. I don't know the legal basis UK Examiners have in mind for requiring an amended description. I think UK practice can be quite informal on such matters. They simply ask for one, and applicants are expected to oblige.
DeleteI asked about your health simply as a sort of greeting, having appreciated your comments for so many years for allowing a good discussion. Stay well.
As I see it, the sticking point here is the divergence between what the EPO believes is meant by "primacy of the claims" and what that concept means to the national courts and the UPC.
ReplyDeleteAccording to the EPO, terms used in the claims have their "standard" meaning unless the claim indicates otherwise, or it is not possible to make sense of the claims on their own.
National courts, such as those in the UK, see things a little differently. For example, whilst acknowledging that none of the terms used in the claims can be ignored, the meaning of each such term is determined by considering all of the available evidence, including the description.
In other words, national courts and the UPC interpret the claims by considering the context provided by the description, whereas the EPO effectively interprets claims as if they were an entirely separate legal document to the description.
It is not difficult to see how the two different approaches might lead to different interpretations of the claims. For example, where the description provides a mandatory, "custom" definition of a term used in the claims, the EPO will ignore that definition (if, in their view, the term in question has a "standard" definition) whereas the national courts and the UPC will interpret the claims in accordance with that definition.
Divergence of claim interpretation approaches between the EPO and the national courts / UPC is an outcome that the EBA explicitly indicated should be avoided. So why do the EPO's Boards of Appeal insist on driving headlong towards that outcome?
Also, if the EPO will insist upon adopting a "standard" definition of a term, which conflicts with a "custom" definition in the description, it ought to explain the legal and factual basis for selecting that particular "standard" definition. Otherwise, the EPO risks distorting, contrary to Article 123(2) EPC, the subject matter of the claims by introducing a definition for which there is no legal or factual basis.
Finally, it would be helpful if the EPO could explicitly acknowledge that its approach to interpreting the claims of a patent or application that is the subject of proceedings is not the same as its approach to interpreting the claims of any other patent document in the proceedings (such as priority or prior art documents). This is necessary to ensure that the EPO can preserve its gold standard approach that underpins the so-called uniform concept of disclosure.
https://www.epo.org/en/legal/case-law/2022/clr_i_c_4_1.html
https://www.epo.org/en/legal/case-law/2022/clr_ii_d_3_1_2.html
Pudding I think I am more sanguine than you, about the prospects for G1/25 and about the degree of conformity between claim construction as performed at the EPO prior to grant and at courts in Europe after grant.
DeleteGiven the EPO's burden to police compliance with Art 84 EPO and the EPC's prohibition on courts applying Art 84 to the granted claims, I have every sympathy with the EPO's attitude to claim interpretation prior to grant. The EPO can (and should) use every available lever to deliver to the courts, in its B publications, claims that are clear and supported by the description. If only the EPO could bring itself to accept that the description is a record of what Applicant conceived, on the filing date, as its invention, whereas the allowable claim is required to be a clear definition of the subject matter for which protection is sought, that would take all the heat out of the debate about "conforming" the description.
It remains to be seen how the EPO, going forward, wil construe claims in opposition proceedings. Really, I don't see (yet) any difficulty if the EPO continues to construe claims in one way prior to grant but in a different way after grant.
But hey, I'm not an attorney at law, just a retired patent agent. What do I know? Other readers, feel free to muck in!
@ Proof of the pudding,
DeleteYour position is well know, and has been made clear in a specific amicus curiae brief before G 1/24 was issued.
You consider that the EPO and its boards should disregard what the interpretation of a claimed to a skilled person implies and rather take into account the interpretation given by the applicant/proprietor in the description. I fail, up to today, to see the legal basis of your position in the EPC.
The EPO and its boards are free to interpret the claims as they think fit and are not bound by interpretation of claims given in post-grant actions, be it on invalidity or infringement. The same goes in the other direction.
Contrary to what you say, there will be no divergence of claim interpretation approaches between the EPO and the national courts / UPC if the definition in the description is brought into the claim. By doing this, the aim expressed by the EBA in G 1/24 will be achieved.
The boards are thus right to insist that, if the applicant/proprietor wants a certain definition of the scope of protection to be taken into account, this definition should be brought into the claim and not left hidden somewhere in the description.
G 1/24 has manifestly not delivered what you would have wished, but the conclusion which can be drawn from all the boards decisions published since G 1/24 has been issued is that, in order to respect the primacy of the claims, what the applicant/proprietor wants to see taken into account has to figure in the claim.
As far as I know the case law of the board, the way a disclosure is apprehended in the prior art, is the same for the application/patent. When it comes to prior art, what in general matters, is what is to be found in the description, which in general gives much more technical information than the claims. Only occasionally it is sufficient to take into account the claim. You are actually attacking the BA by insinuating that they take a different approach between prior art and disclosure in a patent application. This is not correct, and does not correspond to reality.
Dear Dr. Hughes,
DeleteI commented the decision in my blog, but I would like to come back on a comment of yours.
When you say that, “making it up to the patentee to align the description and the claims could be read as supporting the case that mandatory description amendments should not be forced on patentees, given that legal certainty is provided by an established approach to claim interpretation that focuses on the primacy of the claims and does not allow inconsistencies in the description to override the claim language”, I would come to a different conclusion: “if this is how claims are to be interpreted”, the need “is there to amend the description”. I compare our positions with that of a glass half full or half empty, depending on the side you stand.
Aligning description and claims is, imho, the only way to insure that in post-grant proceedings the proprietor will not attempt to give to the claims a broader or a different interpretation based on the description than which is given by the claims. This is exactly what the Agfa has done and the UP-LD Hamburg did not buy it. If the description had been aligned with the claims, Agfa would not have been able to do so.
I do however agree with your conclusion that, “If you want the scope of the claims to be clear, the best place to ensure this is and has always been the claims, not the description”.
I also agree with you that “T 2027/23 also has interesting implications for the now-pending referral G 1/25 on mandatory description amendments”.
I would more generally consider that G 1/24, and the interpretation of it by the boards, has paved the way for G 1/25.
Excellent comment Proof of the Pudding. I would add as a side remark, that whilst I agree with all the analysis of consequences in your comment, the actual outcome of decisions of the EPO and national courts is very dependent on the facts before it. And the written decision then uses logic/tests/philosophy to back up the decision. You are pointing out the patterns in the way claims are analysed, but actually individual court judges and examining/opposition divisions will in practice vary substantially in what they use to interpret the claims. This 'noise' in the system needs to be borne in mind, especially when advising clients on probable outcomes. [Also excellent writeup Rose!]
DeleteMax, the problem is precisely that the EPO are applying their unique version of a "primacy of the claims" principle to post-grant proceedings. If this trend continues, it will inevitably lead to patents being revoked by the EPO that would be (or have been) confirmed as valid by national courts and/or the UPC.
DeleteAs originally envisaged, the purpose of the UPC was to ensure that decisions on validity (or infringement) were consistent / harmonised across the Participating Member States. This was against a background of national court decisions that were typically well aligned but occasionally divergent.
My sense is that the cause of divergence between different national court decisions on the same EP patent has almost always been due to differences in facts / evidence rather than differences of interpretation of the same legal provisions. However, with the EPO's divergent approach to claim interpretation, we are now looking at a jurisdiction that has the power to invalidate patent protection in all EPC Member States systematically adopting a different interpretation of the same laws as those which apply to the UPC and national courts.
This rather undesirable outcome pretty much undermines the entire raison d'être of the UPC and is no doubt one of the reasons why the EBA in G 1/24 tried to steer the EPO's ship away from those particular rocks.
Perhaps the Boards of Appeal are throwing down the gauntlet to the UPC and testing out whether they can use their jurisdictional heft to force the UPC to bend to their way of interpreting claims. However, that it not a game of chicken that I care to see play out, and certainly not one that will benefit any stakeholders in the European patent system.
@ Proof of the pudding,
DeleteIt is abundantly clear that you do not agree with the way the EPO’s BA apply G 1/24. You would have liked G 1/24 to introduce a change of paradigm and only take into account the definition given in the description and ignore what is defined in the claims.
The problem is that the claims define the scope of protection and the description only is used to interpret what is in the claim. Interpretation does not mean substituting the claimed definition with that of the description. Why should third parties have to dig deep in the description in order to define what the scope of protection could be?
Art 69 as well as the Protocol thereto, do not say that what is stated in the claim is to be ignored and only what is defined in the description should be taken into account. For whatever reason, this is what you would like to see . Your opinion is a private opinion of yours and most probably not shared by the EPO’s BA.
G 1/24 did no try to steer the EPO's ship away from some particular rocks. It referred to the existing case law and gave purposedly no definition what should be understood by “consulting”.
T 2027/23 has made clear that if the applicant/proprietor wants the definition in the description to be taken into account, it is up to the latter to bring it in the claim. All board’s decision following G 1/24 go along this line: what matters is what is in the claim and not was is given as supplementary definitions in the description. This is the only way to abide by the primacy of the claims. In other words, the patent cannot be its own dictionary.
If the applicant/proprietor brings in the claim the definition in the description, whether it is broader or more limited, there should not be any different interpretation between the EPO and post-grant jurisdictions. The aim brought forward by the EBA in G 1/24 will thus be more than fulfilled, but not the way you would like it to be fulfilled.
You cannot mean it seriously when you think that the EPO’s BAs have thrown down the gauntlet to the UPC and are testing out whether they can use their jurisdictional heft to force the UPC to bend to their way of interpreting claims. Courts are independent in their interpretation of claims and assessment of evidence.
The applicant/proprietor has the choice: either introduce in the claims definitions hidden somewhere in the description or not. If he does this, then there will be no incongruency or discrepancy between claims and description, and all parties in the patent system will be happy.
If the applicant/proprietor wants to stick to a limiting definition in the description, but wants a broader scope of protection through its claim, he risks losing its application/patent for lack of novelty or inventive step.
If the applicant/proprietor wants a limited scope of protection in its claims, but introduces in the description a broader definition, leading to a broader scope of protection, it will be taken with what he wants, and the broader definition in the description can lead to a lack of novelty or inventive step, and he also risks losing its application/patent.
As stated in T 2027/23, “patentees are the masters of their fate”. In English, I would summarise this by saying that you cannot have your cake and eat it.
Mr Thomas, you have grossly misrepresented my position. However, that happens so frequently that it would almost certainly be a waste of my time pointing out the crucial points where my views diverge from how you have presented them.
DeleteI will therefore keep my comment to one, brief point: there is no such thing in patent law as a "claimed definition". There are terms used in the claims. There are meanings ascribed to each of those terms. Working out the meanings is an act of interpretation. In addition to common general knowledge, both the claims and the description should be used for this purpose. This is because the patent is a legal document and should therefore be interpreted as a whole.
@ Proof of the pudding.
DeleteI have not grossly misrepresented your position. I understood for a quite while that your theory is that claims might say something, but consultation of the description might lead to a different interpretation, and only the interpretation in the description has to be considered.
With your view, we would then come back to a situation comparable to that existing under the French law valid from 1844 until 1968. During all this time, no claims needed to be formulated in order to have a patent granted. In view of the situation, the French legislator considered that claims are necessary and introduced them in 1968.
If we come back to a situation in which the only interpretation which matters is that in the description, why bother to have claims, if third parties are obliged to look at the description to find out what is the scope of protection claimed by the applicant.
Following your point of view, essential features would not have to be present in the claims as the description would disclose those. It would then be to third parties to find out whether those features are essential or not. Why should it then be necessary to have claims if what matters is hidden somewhere in the description?
A well know late French lawyer, Me Mathely, who was specialised in litigation found out that the proprietor discovers his patent on the day of litigation. This would be result of your proposal. I do not find this situation ebjoyable. It would only nurture the litigation industry.
The patent is not a general legal document, but it is a legal document which addresses the skilled person. I hope you can at least agree on this.
That a patent is addressed to a skilled person and not to any person on the street, is an aspect you seem to have, willingly or not, ignored.
Terms used in a claim are terms which induce in a skilled person some associations or meanings. As the claims define the scope of protection under Art 84, the true meaning cannot be hidden somewhere in the depths of the description.
A spade defined in a claim could, at a pinch, be defined as a shovel in the description, but not as any possible device allowing to move soil. This is however what you want. That I disagree with such a view should not come as a surprise.
Despite all of your claims to the contrary, you still do not grasp (let alone correctly represent) the views that I actually hold. I shall give up trying to explain. It is clearly a futile exercise.
DeleteFor the record, I agree that the patent is a legal document addressed to the skilled person. Note "patent" and not just the claims.
Following your assertions, it seems to me that you think that it should be possible for the skilled person to assess FTO by considering the only claims (together with the prior art and common general knowledge) and that it should not be necessary to consult the description other than in exceptional cases, such as in the event of a lack of clarity. If you wish to conduct FTO exercises that way, that is your choice. Just don't expect me to follow suit.
@ Proof of the pudding, in reply to your comment of September 2d, 2025,
DeleteIt is not by invoking sub-optimal situations that you will bring me to change my point of view. Having been for nearly 5 decades in the patent business, I am not convinced that they often arise in practice. That this might be case in totally new technical areas, and as every rule, some allowance could be made in such situation.
However, this does not warrant your suggestion according to which some unclarities in the scope of a definition in a claim can be superseded by a definition to be found in the description. This is going way too far.
Your are free to allege that the EPO is grossly overstepping its remit, inappropriately attempting to force certain interpretations on the UPC / national courts and massively increasing added matter invalidity concerns for all patentees, but do not expect me to agree.
Any court is free to arrive at its own interpretation of claims and one court cannot impose its views to another in the absence of any legal basis to do so. I have no doubts and do trust post-grant courts to do their job properly, but this does not free the EPO and its boards to abide by the EPC.
It happens however that Art 84 has two prongs, one is clarity and the other is support. When the boards insist and require that any discrepancy between claims and description should not be accepted, they are doing what they are told to do by the EPC. That you dislike the way the boards interpret the EPC as they do, is actually irrelevant.
The direct consequence is the necessity imposed by the EPC that the interpretation of the claim found in the description has to be transferred into the claim. Why should this be wrong? By the way, you have never replied to my question: why should third parties be obliged to dig deep in the description to find out what is the actual scope of protection?
As you have apparently not correctly read what I said previously I will repeat it here: When it comes to prior art, what in general matters, is what is to be found in the description, which in general discloses much more technical information than the claims. Only occasionally it is sufficient to take into account the claim.
When it comes to take into account the technical content a patent document as piece of prior art, the primacy of claims is totally irrelevant.
Prior art other than patent documents, as well as evidence of common general knowledge, does not contain any claims. Hence I maintain that you are not correct when you are insinuating that the boards take a different approach between prior art in patent documents and disclosure in a patent application. If the boards would take the primacy of the claims when assessing prior art in patent documents, they would not be up to their job and you cannot claim that you are not aware of it.
Daniel it grieves me to see your difficulties with Pudding. I think i see both sides of the argument. I just wrote a long comment on your own blog, on the problem of a patent having a decription in which there is a definition of a term used in the claim. Ideally, the ED finds it and requires it to be written into the claim. But real life is messy. Sometimes the case gets through to grant without such a claim amendment. What shall the EPO do then, in opposition proceedings? It's not easy!
Delete@DXThomas
DeleteIf you read my comment again, you will find that I referred to "a prior art patent or priority document". So why discuss non-patent prior art? Nobody mentioned that.
In any event, you have confirmed my understanding. That is, when the EPO interprets the subject matter disclosed by the claims of a patent, the "primacy of claims" principle:
- is applied to a patent or patent application that is the subject of proceedings before the EPO; but
- in your words "is totally irrelevant" to patent documents that are in, but not the subject of, such proceedings.
If you take a few minutes to consider the practical implications of this fact (i.e. the use of different claim interpretation approaches, depending upon the status of a patent document in the proceedings), then you will realise that it produces some peculiar results.
A case in point is when a description of a patent application contains a "custom" definition of a term used in the claims. For such applications, it is possible to file identical documents (description, claims, abstract) as priority and EP filings, and yet still be told by the EPO that the subject matter of your claims, as interpreted by the "primacy of claims" principle, lacks entitlement to priority from either the description or the claims of your priority filing (the claims of which are instead interpreted according to the uniform concept of disclosure).
Of course, this does not happen in practice. But for no other reason than inconsistent application of the relevant claim interpretation principles (or straightforward glossing over of the logical implications of the use of different interpretation principles).
Dear Proof, everything you say is completely correct. At a basic level, it is clear that the claims are part of a legal document which should be interpreted according to the general principles of interpretation. The claims in a document have an objective meaning regardless of who stands to benefit from that interpretation, the manner in which the claims are published, the place in which they are published, the time at which they are published, and so on. It is astonishing that anyone could disagree with the idea that words could mean anything other than what they mean in context. Any other approach leads to the absurd results and contradictions which you have rightly identified.
Delete@ Anonymous,
DeleteLike Proof of the pudding you seem to be on the wrong track. Applicants/proprietor are free to draft their description, the way they wish. The EPC however requires some amendments you find unnecessary, but this is not the way the boards see it. And after all, they have the last say, whether we like it or not.
Mr Thomas, I can agree with you that there will be "no divergence" between the EPO and the national courts / UPC in cases where "the definition in the description is brought into the claim". However, that would have nothing to do with any alignment of claim interpretation approaches and everything to do with two different approaches converging on the same outcome.
ReplyDeleteRegardless, I believe that we can agree that bringing "custom" definitions into the claims is clearly the optimal approach in situations where taking account of that definition makes a difference for the assessment of validity. Where our views diverge is what should happen in the sub-optimal situations that so often arise in practice.
What you see as the best solution (strict adaptation of the description to the "standard" definition of terms applied by the EPO to the claims) I view as the EPO grossly overstepping its remit, inappropriately attempting to force certain interpretations on the UPC / national courts and massively increasing added matter invalidity concerns for all patentees. Whilst you do not like my proposed solution, it appears to me that this is because you simply do not trust the courts to reach the "correct" interpretation of the claims. Put simply, you worry about the risk of the courts creating Angora cats, whereas I have more confidence that the courts will find ways of ensuring that they do not reward overly avaricious behaviour by patentees.
We may never see eye to eye. So be it. However, before accusing me of "not correct" behaviour, perhaps you cold point me to TBA decisions (and established EPO practice based upon the same) in which the claims of a prior art patent or priority document have been interpreted by using a "primacy of the claims" approach? As far as I am aware, there are no such decisions (and no such practice).
Just to say how much I appreciate the summer/somer word-play, Rose. Your posts are always a pleasure to read. Long may they continue.
ReplyDeleteThanks Max - I aim to please!
Delete@ Proof of the pudding,
ReplyDeleteIn reply to your comment of Wednesday, September 3d, 2025 at 14:59:00 GMT+1.
If I included a reference to non-patent literature, it was merely to show how you are misrepresenting the work of the EPO and its boards, and even misinterpreting the EPC. Non-patent literature and patent literature cannot be dealt with separately when it comes to assessing the technical teaching they contain.
I made clear that what matters in the prior art, is the technical content of a patent document not the claims which are attached to it. Any differentiation between patent literature and non-patent literature would limit the technical content of a patent document to its claims. I never came across such a strange view on the assessment of patent literature. One of the purposes of the patent system is to give a temporary monopoly to its holder in exchange to the publication of its invention so that the skilled person can reproduce it. This helps technical development.
Therefore, I would like to observe firstly that claims represent in principle a certain generalisation of what has been disclosed. In case of a plurality of examples in a patent document, applicants/proprietors draft a generic claim covering the plurality of embodiments. Just looking at the claims would not do justice to the technical content of the corresponding description.
Secondly when it comes to the assessment of prior art under Art 54(3) it is the whole content approach which has been adopted by the European legislator and not the whole claim approach.
What you actually propose boils down to assess a prior art document only on the basis of the claims. Art 54(2) disposes that “everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application”, shall be taken into account. I do not see here that in case of patent documents that only claims have to taken into account.
Your comparison with the right of priority is in clear contradiction with G 2/98. A priority is validly claimed if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole. There is thus no interpretation a priori of the content of the claim in order to assess the validity of the priority. The validity of the priority is based on the content of the application as a whole. It might well be that the claim contains features which were not found in the earlier application, but this is a different issue.
The same goes for a divisional application, as long as the description is the same, a divisional application can, a priori, benefit from the filing date of its parent. Problems might arise when the claim contains features which were not found in the parent application, but this is again a different issue.
Those few examples show best that you are manifestly on the wrong track. Should you come up with such views before any deciding body of the EPO, you might at best earn a wry smile, but you will most probably not convince.
When the EPO grants a patent, it has the duty to abide by the EPC, and to take care that there is no discrepancy between claims and description. The true meaning of a claim cannot be hidden somewhere in the description. This is something we all have to accept, whether we like it or not.
@DXThomas
DeleteYou are missing the point.
I agree with you that a priority is validly claimed if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole. But this means that, in order to assess entitlement to priority, it is necessary to:
(a) determine the subject-matter of the claim; and
(b) determine whether the same subject-matter is disclosed in the priority document.
Because of the primacy of the claims principle, as applied by the EPO, the subject matter at (a) will be determined without reference to the "custom" definition in the description.
On the other hand, due to the "whole contents" approach that underlies the uniform concept of disclosure, the subject matter disclosed in the priority document will be determined with reference to the "custom" definition in the description.
The subject matter determined for (a) will therefore be different to that determined for (b). Different subject matter = no (full) entitlement to priority. And, remember, in this scenario, the priority and EP filings are based upon identical specifications.
It is as simple as that. No mangling or misinterpretation of the EPC or EPO case law. Just straightforward and consistent application of established case law, including the EPO's version of "primacy of the claims".
I realise that this conclusion might cause you to experience cognitive dissonance, as it means that two principles that appear to be very dear to you (ie the "gold standard" underpinning the uniform concept of disclosure and the EPO's primacy of the claims principle) are actually in conflict with one another. But it is what it is.
@ Proof of the pudding,
DeleteContrary to what you might say, I have not missed any point and I am not experiencing cognitive dissonance. I actually find your comment disgraceful and below the belt.
If you need to result to insult to bring your point forward, you must really be at your wits end.
Contrary to what you suggest, the gold standard underpinning the uniform concept of disclosure has little to do with the primacy of the claims.
The primacy of the claims means that an applicant/proprietor cannot come up with one interpretation of claimed feature when it comes to validity and with another one when it comes to infringement based on the description or vice versa. If this is the case, then, there is a discrepancy or an incongruency between claims and description.
This is the clear message which can be directly and unambiguously derived from the decisions of the boards following G 1/24. T 2027/23 is particularly eloquent in this respect.
It is your right not to like the way the boards apply and interpret G 1/24, but the boards do not depart from the case law they have been applying before G 1/24.
G 1/24 has simply made clear that the description has always to be consulted and not only if the claim is unclear.
Unless I am forced to react to your theories, I intend to ignore what you say. There must be an end to useless discussions.
@DXThomas
DeleteWho could have predicted that you would fail to follow the logic of the explanation that I provided? Perhaps Festinger:
"Tell him you disagree and he turns away. Show him facts or figures and he questions your sources. Appeal to logic and he fails to see your point".
https://en.wikipedia.org/wiki/Cognitive_dissonance
Please be assured that my intention is not to insult, but instead to discuss. The trouble with trying to discuss the issue of description adaptation is that, no matter the forum that I select, my efforts at stimulating debate / discussion inevitably elicit responses from you. Believe me when I say that I would be happy with that outcome were it not for the fact that our debates always end up going nowhere, other than a very unedifying exchange that is no doubt off-putting for others who might otherwise be tempted to contribute.
Perhaps we can agree to stop responding directly to one another’s comments, and instead focus on making entirely positive contributions to the discussion? For example, instead of repeating views that we have expressed before, we could:
- explain how certain conclusions flow (logically) from the EPC and/or case law; or
- point to (logical and/or factual) flaws in the reasoning relied upon by others.
Whilst I have no doubt that I have not always succeeded in doing so, I have attempted to ensure that my comments adhere to these guidelines. This is because I believe that it is pointless to merely state my views unless I can explain precisely why I hold those views and why I am not persuaded by the counter-arguments that I have heard. The latter point is particularly important, as it leaves the door open to being persuaded to change my views. Thus, if I saw any persuasive force in your arguments, I would say so. Even now - though obviously not yet, as you refuse to engage with what you call "theories" (but what are in fact logical deductions from existing case law).
Proof of the pudding,
DeleteReply, part 1, to your comment of 05.09.2025-15.32.00 GMT+1
You are really amazing as you actually force me to reply. I cannot accept that you add insult to injury in quoting in full Wikipedia on cognitive dissonance. You claim that your intention is not to insult, but instead to discuss. It remains that by quoting Wikipedia on cognitive dissonance in full it is exactly what you do, insulting.
You claim that you want to discuss, but you did not even bother to take position about my latest statements in my reply to you. I have no choice but you repeat it once more with some complements.
Contrary to what you suggest, the gold standard underpinning the uniform concept of disclosure has little to do with the primacy of the claims. I may add that if a concept is directly and ambiguously derivable from the description, then there is no problem whatsoever to bring it in the claim, as suggested for instance in T 2027/23.
Just an example: a claim contains the feature of a “perforated layer”. In the description the size of the holes is specified, as the perforated layer has to fulfil a specific technical effect, for instance not letting water pass through the perforated layer, but allowing air to pass. In other words it is a kind of Goretex ® membrane.
The claim containing only the perforated layer represents an intermediate generalisation with respect to the perforated layer, as the size of the holes is not defined in the claim, and yet the size is necessary to achieve the technical effect. I doubt that many readers would disagree with me that such a claim is infringing Art 123(2) or at least missing essential features. .
According to your views, it would be enough for third parties to consult the description to realise that there is a limitation on the size of the holes. Then, at the same rate, no objection under Art 123(2) should be raised. This cannot be true.
The primacy of the claims means that an applicant/proprietor cannot come up with one interpretation of a claimed feature when it comes to validity, and with a different one, broader or more limited, when it comes to infringement, based on the description or vice versa. If this is the case, then, there is a discrepancy or an incongruency between claims and description.
Proof of the pudding,
DeleteReply, part 2, to your comment of 05.09.2025-15.32.00 GMT+1
Art 84 EPC has two prongs, clarity and support. Leaving in the description a definition of a claimed feature which does not tie up with the meaning of said feature for the skilled person, introduces an inconsistency between claims and description. Whether Art 84, clarity, or Art 84, support applies, is irrelevant, as this inconsistency ought to be removed before grant or before maintenance in amended for. This requirement has been expressed in two decisions of the UPC as mentioned by Mr Hagel.
This is also the logical conclusion of G 1/24 and of the recent decisions of the boards applying G 1/24. The applicant/proprietor cannot rely on a different meaning in the description of a claimed feature having a clear meaning for the skilled person.
The catchword of T 2027/23 is abundantly clear: “In cases of discrepancy between the claim language and the description, it falls upon the patentee to remedy this incongruence by amending the claim. It is not the task of the Boards of Appeal to reach such alignment by way of interpretative somersaults”.
As I explained above with the perforated layer, the objection under Art 123(2) should come first, as then the alignment between claims and description is automatic. This is the advice I always gave to my examiners: if possible, avoid starting with clarity, but rather go for an objection under Art 54, 56 or 123(2). This will force the applicant to move.
If the claim is unclear, and the description does not help to overcome the clarity issue, take the broadest possible interpretation of the feature and then raise objections under Art 54, 56, and possibly Art 123(2).
If the unclear feature is clarified in the description, introduce it in the claim, as an essential feature is manifestly missing, and then object from this situation. This is the daily bread and butter of examiners at the EPO.
I have given sources in the EPC, brought in case law and have submitted an example. What else do you need?
It is your good right not to be persuaded by the counter-arguments that you have heard. I furthermore strongly doubt that it leaves the door open to being persuaded to change my views. You apparently want to get the last word by attrition.
By the way, I have not seen yet any case law of the boards of appeal of the EPO allowing you to show logical deductions from existing case law supporting your theories.
Other courts, for instance, the German Federal Court has established the notion of the patent being its own dictionary. This theory has never been acknowledged by the boards before G 1/24, and I do not think that it will ever be the case after G 1/24. The recent case law following G 1/24 does not leave any doubts about this.
I have said it before, but you remind of people prompt to see the straw in the eye of their vis-à-vis, but not wanting to see the beam in their own eye.
I hope you will come back with clear case law of the EPO supporting your theories, discuss the example I have given, and do not force me to react again.
@DXThomas
DeleteI am flattered that you dedicate so much time to responding to my comments. I also appreciate the references that you have made to the EPC and case law. This would make me happy were it not for one, crucial issue: you still appear to be missing (or avoiding?) the point that I made regarding why I believe that there is a conflict between the uniform concept of disclosure and the EPO's primacy of the claims principle.
I understand that, in your view, “the gold standard underpinning the uniform concept of disclosure has little to do with the primacy of the claims”. But that was not the point that I was making.
Perhaps it will help if I illustrate the point by reference to a real-life case. The one which comes to mind is the case which led to the referral in G 1/24. In that case, interpreting the claims according to the EPO's primacy of the claims principle means that the term “gathered” is afforded a meaning which:
- is not the definition of “gathered” set out in the description;
- appears to derive from technical fields relating to textiles; and
- leads to Claim 1 being interpreted as relating to subject-matter that is novel over the prior art.
But, considering only the wording of current Claim 1, what subject matter is clearly and unambiguously disclosed (according to the uniform concept of disclosure) by the application as originally filed? My understanding is that, following the uniform concept of disclosure means that the term “gathered” would be afforded a meaning which:
- is the definition set out in the description; and
- leads to the wording of current Claim 1 being interpreted as relating to subject-matter that is not novel over the prior art.
Would you agree with that conclusion? If so, then you will have grasped the point that I am trying to make. If not, then I would happily listen to any comments you may have on where you believe my reasoning is flawed.
Finally, whilst you appear to be very quick to take offence, I would point out that I only suggested that the existence of conflict between the uniform concept of disclosure and the EPO's primacy of the claims principle might cause you to experience cognitive dissonance. I did not say that you are experiencing that. And is it so outrageous to make such a suggestion given that your comments somehow always manage to avoid engaging directly with quite straightforward logic that others here seem to have grasped? Of course, there may be perfectly reasonable explanation for this that has nothing whatsoever to do with cognitive dissonance. It is just that, looking at the evidence, I cannot yet figure out what that explanation might be.
@DXThomas
DeleteAs you did not respond to a very straightforward question, I had assumed that the cat had got your tongue - or that you had metaphorically stormed off in a huff as a pretext for avoiding the question. But I see that you have been very active recently on your own blog. All fine and well, and very much your choice. But please leave me out of it. I have nothing to do with any recent comments on your blog.
You may have missed the point that I made in one of my recent comments on this forum, so I will make myself completely clear: I have no wish whatsoever to engage in endless and pointless debates with you. To that end, I have actively avoided initiating any discussions with you. It always ends badly, and you always avoid answering perfectly reasonable questions - instead preferring to resort to an over-exaggerated display of taking offence at even the mildest of comments (or at comments that you have deliberately misinterpreted).
You have made it abundantly clear that you strongly dislike both me and my views. But it seems to me that you keep making the mistake of letting this cloud your judgement. My suggestion would be to instead apply some critical thinking to the situation (https://en.wikipedia.org/wiki/Critical_thinking) and, in particular, question your assumptions. As has been proven by the false accusations made in your edits today on the comment on your blog, sometimes your assumptions are highly questionable.
@ Proof of the pudding,
DeleteIn reply to your comment of 08.09.2025 at 11.21.00 GMT+1
Being retired, even I do not have the time to reply by return of post you seem to have, be it in this blog or on my blog. But let’s forget this. It is just amusing.
As you have not taken position on the example I have given, the perforated layer, I should in principle abstain to get involved in your example. I will nevertheless indulge in replying. However, I will not use the term “gathered” as I do not have the intention to tell the board what should the decision to be taken.
I understand exactly what you want: you want the clear meaning for the skilled person of a claimed feature to be superseded by the interpretation given of the same feature in the description.
However, neither primacy of the claims nor uniform concept of disclosure do mean that, whatever might be said in the claim, it can be corrected by any statement found in the description with the intention of trying to give, a broader or a more limited interpretation of the claimed feature.
In any case, if the claimed feature would not have been present in the original filing, then bringing it in the claim would result in a clear infringement of Art 123(2).
If the applicant/proprietor includes in the claim, either at filing or later during prosecution, a feature which has a clear meaning for the skilled person, this feature should not induce an inconsistency or incongruity between claims and description.
If you look at the decisions of the boards following G 1/24, the boards have made it abundantly clear that, if the applicant proprietor wants the interpretation in the description to be taken into account, this interpretation should be brought into the claim. This is, in my opinion, the only way to avoid any inconsistency between claims and description, and will not oblige boards to make interpretative somersaults.
Reading “Tell HIM you disagree and HE turns away”, but at the same time claiming that you never meant that I am experiencing cognitive dissonance, cannot be taken seriously. Your aim was to insult, in spite of your denegation.
@DXThomas
DeleteThank you for providing such a comprehensive demonstration of the point that I was making about your tendency to avoid answering a simple, direct question.
It seems that you simply cannot bring yourself to answer "yes" or "no" to a question that, whilst related to T 439/22, would not in any way impact upon the decisions that the Board needs to make in that case. On the other hand, you seem to have no problem whatsoever pronouncing how claims should be interpreted in the light of G 1/24, which very much is a decision that the Board will need to make in T 439/22.
So, as your excuse for not answering a direct question now lies in tatters, can you bring yourself to provide a simple "yes" or "no" answer? Or are you too worried about what your answer might mean regarding the (in)consistency of principles found in established EPO case law?
@ Proof of the pudding,
DeleteYour find your reply quite hilarious, and it actually does not deserve a further reply. I will nevertheless tell you what I think.
I claim from myself that I am very well aware to the case law of the boards, and probably more than lots of representatives. My knowledge of case law is probably the reason why firms of representatives invite me regularly to update their members with the latest developments in case law at the boards.
You are free to consider the EPO case law is applying inconsistent principles. You are probably part of the group of representatives who thinks they know best what the EPO and its boards should do, but will not do. But they decide and not you.
I do not have the pretence to tell the board how it has to decide in T 439/22, so I leave you to guess what might reply could be, but not be mistaken, I have a clear one.
I repeat for the last time that the uniform concept of disclosure does not mean that the disclosure in the description can take precedence over the claims.
If this would be the case, claims would be unnecessary, and yet they are the first place for third parties to look what could be the scope of protection they are facing. This is what I consider the primacy of the claims. That claims have to be interpreted in the light of the description goes without saying.
There are situations in which statements in the description are to be ignored when it comes to validity, e.g. when a broad claim is given a limited interpretation in the description.
Conversely, statements in description are to be taken into account when it comes to validity, e.g. when a claim is given a broader interpretation in the description.
In order to avoid somersaults, it is thus best when the interpretation in the description is taken over in the claim. This also insures the same interpretation of a claim in post-grant procedures.
In both cases the description will have been consulted in application of G 1/24. What else do you want?
@DXThomas
DeleteI do not find my reply to be “hilarious”. I see it as a necessary to bring the discussion forward, by letting you know that I see through your tactics that are aimed at avoiding engaging with an “awkward” question.
Whilst a post on your own blog has now cast more light on your views regarding claim interpretation, there is another “awkward” question which you are still studiously avoiding: why do you insist on continuing to publish (on your blog) allegations made by you, and concerning me, that are demonstrably false?
Do you wish to be associated with the publication of false or misleading information? I would have thought not. I would also have thought that you would want to be careful to check your facts (or assumptions) before publishing anything that could be risky from a legal perspective.
@ Proof of the pudding,
DeleteIf you have something to criticise about my blog, why do you need another blog for accusing me to make allegations concerning you, that are “allegedly demonstrably false”? If you have gripes about what I have allegedly published on my blog, why do you not answer directly there? It would make things much easier.
On 15.09.2025 I did publish on my blog some views on how claims could be interpreted by consulting the description. In this publication, I mentioned that “there is no need to refer to general legal theories or what could have been meant in G 1/24 when it comes to “consulting” the description”. This is what I think, and I am saying it openly. I am not hiding behind a pseudo.
I have taken position in this publication on the different aspects involved. If you read my blog with a mind willing to understand, you must see that I have not left out any “awkward” question, whatever you might understand under "awkward".
You must have a rather sensitive skin, if you think that the comment above was aimed at you. I can reassure you, this comment is of general nature.
My aim was, like the one expressed in T 2027/23, to avoid a proprietor being able to assert one interpretation when it comes to validity, and to assert a different one when it comes to infringement. The proposal I made, has also the advantage to insure the same interpretation pre- and post-grant, without any need to dig dep into the description.
As the boards have said, if the applicant/proprietor wants a certain interpretation to be taken into account, then it is up to him to amend his claim accordingly. Anything else results in a discrepancy, inconsistency or incongruity which preferably has to be resolved before grant.
That my proposal might not be to your liking is manifest, but this is actually irrelevant.
You have previously threatened of legal action by addressing the webmaster of my blog and referring to the GDPR and Art 5 GG. This was to no avail.
Since you are acting under a pseudo, I am looking forward to any legal actionfrom your side. The first thing youwould need to do is to give away your pseudo and act as a natural person.
@DXThomas
DeleteI can see for myself that you have never responded positively to complaints on your blog about comments from you that others have been unhappy about. So why would I waste my time complaining directly to you? Especially when I am doing my level best to avoid initiating any interactions with you.
As to why I would think that a comment was aimed at me, I think that the first hint that I got were your words "You are Proof of the Pudding". I am guessing that you were referring to me, as I am not aware of anyone else posting under that pseudonym.
I had hoped that drawing your attention to the fact that you have made an evidence-free and entirely false allegation would lead you to correct / edit the offending comment on your blog. That you appear to have no intention of doing the right thing even in that scenario speaks (at least to me) to some unhealthy and unprofessional motivations on your part.
@ Proof of the pudding,
DeleteThere has ever only be one person having ever complained to the webmaster of my blog.
Thanks for confirming your identity with your present entry. “Marks and Spencer” is not far away….
Contrary to what you allege, I have not have made any evidence-free and entirely false allegations which needed to be corrected. You did not like the way I summarised your amicus curiae in G 1/24, but this is your problem and not mine. You actually got an appropriate reply from the webmaster of the blog.
What I have said is covered by freedom of speech and there is no reason whatsoever to correct anything. No comment of mine on my blog has been offending and hence needing any correction. I have even deleted comments which I found abusive and beside the point.
You might think whatever you want about myself. A difference in point of view does not imply any unhealthy or unprofessional motivations on my part. This is simply going too far and you add insult to injury. You seem very good at this.
Actually, your criticisms are totally abusive and flow off like water on a duck’s back, but they deserve a firm reply.
Coming up with statements as the above, actually shows your state of mind. I will stop here.
Thank you for effectively proving my point.
DeleteFreedom of speech might provide freedom to offend. What it does not do, however, is provide freedom to publish malicious falsehoods, baseless smears or deliberate misrepresentations. I doubt very much that you would be happy with such tactics being used against you. Thus, it is deeply troubling that you seem to have no hesitation publishing false or misleading information (or accusations) concerning others.
For the avoidance of doubt, the specific object of my complaint is your "Anonymous-Edited by the author" comment of 11 Sep 2025. That contains an allegation that I have informed you is false, and which I am certain you cannot prove to be true. Whatever evidence you think you have, I know for a fact that I am not the author of any comments on the blog post in question.
I can see that, at least in your eyes, you are always the victim and never the offender when it comes to insulting, abusive, offensive or just plain unjustifiable comments. But let's face it, what are the chances of that being true? The fact that you have fallen out, or at least had "snippy" exchanges, with numerous individuals online rather speaks for itself in this regard.
@ Proof of the pudding,
DeleteAs a representative in private practice, you must have a lot of spare time.
Contrary to what you think, nothing has whatsoever been proved. As you hide behind a pseudo, you can claim whatever you want, but it fails to convince.
The problem you do not appear to realise, is that your style and your views are amply known and give a clear signature. It is thus irrelevant whether you want to remain more anonymous than under your usual pseudo Proof of the pudding.
It is for this reason, that I have given up any pseudo when commenting on any blog. And I live perfectly with it.
I am happily receiving any proof that I have fallen out, or at least had "snippy" exchanges, with “numerous” individuals online. I agree that I can be snippy at times, but this is when my patience is exhausted. A quite normal attitude, isn’t it?
I have the advantage over you that I do not hide behind a pseudo. By refusing to give an e-mail address when posting a comment on my blog, you lose any right to complain. Is this so difficult to understand?
I find it abnormal, that you actually misuse IPKat to have discussions which should not occur on this forum. It “rather speaks for itself in this regard”, that you use another blog to vent your anger against my person and my views.
By the way, I invite you to look at T 1884/23, Reasons 2.5.2, published today. This is yet another scathing refutation of your position.
The wording of a claim cannot be corrected reading into the claim an implicit restrictive feature, present in the description, but not suggested by the explicit wording of the claim. What is valid for an implicit restrictive feature, applies mutatis mutandis to an implicit broadening feature contained in the description.
Well, it seems that my style and views must not be quite as peculiar to me as you have (incorrectly) assumed.
DeleteI wish I could say that I am surprised that you have reached a false conclusion based upon nothing other than suppositions and faulty logic, and that you continue to maintain your position despite having nothing of substance to back it up. However, I am not surprised. It explains a lot.
Another very rapid reply, which does not deserve any comment but to say that that nothing needs explaining. I have nothing to add or delete, and that’s it.
DeleteAs far as I am concerned, the game is over.
The implementation of G 1/24 in T 2027/23 affirming the primacy of the claims is welcome. This has obvious implications for the requirement to adapt the description to be discussed in G 1/25. Where the rule is the primacy of the claims, there is no justification for the requirement to delete or disclaim embodiments no longer covered by the claims, since such amendments would be considered irrelevant to claim interpretation.
ReplyDeleteT 697/22, the referring decision to G 1/25, provides in Reason 15.1.2 potent support against imposing such amendments on applicants. The Board reasons that the decisions under what it calls « the second line of case law » (i.e. which finds no basis in the EPC for the requirement) share the underlying idea that the inconsistent description and the possible consequences are the applicant’s responsibility.
This « underlying idea » is reflected in GL C-V 1 dealing with amendments at the 71(3) stage which states that the text the ED intends to use for the grant « may include amendments and corrections that the examining division made on its own initiative and can reasonably expect the applicant to accept ». If in doubt as to the applicant’s agreement, the ED should contact them, and the applicant’s agreement should be recorded.
The primacy of the claims is now settled case law of the UPC decisions. Recent decisions provide insights into the relevance of adaptations of the description to UPC decisions.
See UPC LD Paris 358/2023 HP vs Lama §41 dismissing disclaiming statements in the description of the granted patent. The court held that it may be justified to take into account the original description showing the disclaimed embodiments in Fig 4-8, because this may be helpful for claim interpretation.
See also the recent decision of LD Paris [363/2024] NJ Diffusion vs Gisela Mayer dealing only with equivalents (there was agreement between the parties as to claim interpretation and no revocation action). Headnote # 1 states that it does not matter if an embodiment (« on top of each other ») excluded from the claims remains in the description, what matters is the scope as delineated by the claims, which is limited to an « edge-to-edge » embodiment.
Interestingly enough, the court, referring to Agfa vs Gucci, added the obiter that the excluded embodiment should have been deleted during grant proceedings. Nonetheless, this remark is undermined by the court’s firm reminder that the rule is the primacy of the claims, as this implies that the court’s decision as to equivalents would have been the same if the excluded embodiment had been deleted or disclaimed.
Mr Hagel,
DeleteReply part 1
I read your comment with great interest.
I would however like to object that it is not only if the applicant/proprietor wishes to rely on a narrow interpretation based on information in the description or in dependent claims, but also in case the applicant/proprietor wishes a broader interpretation based on information in the description, that the respective information should be brought into the independent claim and not merely hidden somewhere in the description.
The primacy of the claims means simply that an applicant/proprietor cannot come up with one interpretation of claimed feature when it comes to validity and with another one when it comes to infringement based on the description or vice versa. If this is the case, then, there is a discrepancy or an incongruency between claims and description.
I fail to see in Reason 15.1.2 of T 697/22 “a potent policy argument supporting what it calls the « second line of case law « finding there is no basis in the EPC for the requirement to adapt the description to the amended claims”.
The contrary is true as the number of decisions holding that the description does not have to be adapted represent a very small minority of decisions, compared to all those holding the adaptation of the decision as necessary. Even the referring board in T 697/22, is of the opinion that the description has to be adapted to the claims. It is only in view of T 56/21 and the like, that it considered necessary to seek clarification of the issue by the EBA.
You have made abundantly clear that you are not in favour of the adaptation of the description. However, I cannot follow your view, as it ignores what the EPC requires and at the same time ignores the primacy of the claims.
Mr Hagel,
DeleteReply part 2
With G 1/24 and the decisions which have followed, it is clear that, if the primacy of the claims should be given any meaning, then the applicant/proprietor cannot leave in the description statements which are at odds with what the claim says. If this is the case, there is a manifest inconsistency, or incongruency to use the wording of T 2027/23, and the latest version of the GL F-IV 4.3 apply in full, as it is undeniable that the statement in the description indeed casts doubts on the scope of the claims.
For instance, this is already the case when a feature from a dependent claim is added to an independent claim in order to limit it. The corresponding feature cannot be left as optional in the description. The own responsibility of the applicant/proprietor cannot be taken as an excuse to leave such a manifest inconsistency in the description.
That post-grant court cannot be fooled in their decision by statements introducing a discrepancy between claims and description is a good thing. However, it cannot exonerate the EPO from its duty to abide by the EPC. When it comes to embodiments not any longer covered by the claims, I am not at all in favour of deleting those. However, they cannot be left in the description as representing embodiments covered by the claims. They simply have to be marked accordingly.
Headnote # 1 of the recent decision of the LD Paris [363/2024] (NJ Diffusion vs Gisela Mayer) does not state what you say. You conveniently just looked at the first sentence. The second sentence says: “It does not matter that the descriptive part refers to the method of implementation involving superimposition; what matters is the scope of protection as defined by the claims, which are expressly limited to the ‘edge-to-edge’ method. The Court also notes that the addition of the words ‘placed edge to edge’ in claim 1 should have led, at the time of grant of the patent, the removal of the method of implementation of the invention known as ‘superimposition’ mentioned in the description, as this method does not fall within the scope of protection of the teachings of the patent as finally retained in the claims. (See Agfa v Gucci decision, Hamburg Regional Court of 30 April 2025, UPC_CFI_278/2023, Headnote 3: "Specifications in the description that are not consistent with the granted claims cannot serve as a basis for a broad interpretation of a claim.")
What the third sentence of Headnote # 1 says, is exactly the opposite of what you claim. Description and claims ought to be aligned. The same applies when considering the obiter dicta of the CFI-LD Hamburg in the now famous Agfa/Gucci case. This remark is in no way “undermined by the court’s firm reminder that the rule is the primacy of the claims, as this implies that the court’s decision as to equivalents would have been the same if the excluded embodiment had been deleted or disclaimed”.
Primacy of the claims does not allow a different interpretation of the same feature in the claim and in the description, no more but no less. Courts can still decide, on the basis of aligned description and claims, whether there is infringement by equivalents or not.
Interesting that, in Alnylam v. Moderna, the Federal Circuit makes it clear that it has no problem with the concept of the patent serving as its own dictionary:
ReplyDeletehttps://www.cafc.uscourts.gov/opinions-orders/23-2357.OPINION.6-4-2025_2525006.pdf
According to the Federal Circuit:
"A patentee “may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (citing Hoechst Celanese Corp. v. BP Chemicals Ltd., 78 F.3d 1575, 1578 (Fed. Cir. 1996)); see Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc) (“[A]ny special definition given to a word must be clearly defined in the specification.”), aff’d, 517 U.S. 370 (1996); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). “[T]he intrinsic evidence must ‘clearly set forth’ or ‘clearly redefine’ a claim term so as to put one reasonably skilled in the art on notice that the patentee intended to so redefine the claim term.” Bell Atlantic Network Services, Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001) (citation omitted); see Merck & Co. v. Teva Pharmaceuticals USA, Inc., 395 F.3d 1364, 1370 (Fed. Cir. 2005). We conclude that the column 412 passage at issue here is definitional under that standard".
This seems reasonable to me. Of course, the law in Europe is not the same and so (to borrow from a famous uttering of a UK judge) the EPO is perfectly entitled to watch very carefully how things are done in the US, and to then ensure that they do not make the same mistakes. However, it does at least confirm that, even in the US, the concept of reading a patent document as a whole (and therefore taking account of a "custom" definition provided in the description) forms an integral part of patent law.
@ Proof of the pudding,
DeleteI do not agree with all what sir Robin Jacob has said, but there is no need to make fun of him as you have done. He is entitled to his opinions and the way they are made public is irrelevant.
The law is different on both sides of the Atlantic, and the CAFC position might contribute to one’s general patent culture, but is of little interest on this side of the Atlantic, and especially at the EPO.
I explained to you that in an previous comment that, neither primacy of the claims nor the uniform concept of disclosure, do mean that, whatever might be said in the claim, it can be corrected by any statement found in the description with the intention of trying to give, a broader or a more limited interpretation of the claimed feature.
The logical conclusion is that the patent cannot be his own dictionary. This is a notion which has been devised by the German Federal Court in order to save patents which otherwise would have been revoked, for example due to added matter.
This is certainly not what G 1/24 has decided, although this was manifestly your wish.
Er, who is making fun of Robin Jacob? Are you reading the correct comment? If so, then you have manifestly failed to grasp the meaning that it clearly conveys. Perhaps if you paid more attention to the context ... ?
Delete@DXThomas
ReplyDeleteWhilst it is frustrating that I am still left guessing what your response to my question will be, I see from your blog that you have now provided a complete explanation of your thinking on how the EPO should interpret claims in different circumstances.
Your explanation is certainly very useful for helping me to understand your thinking. However, it gives rise to numerous questions. The following are just a small selection of the questions that sprang immediately to mind.
1. According to your arguments, the existence of “discrepancies” between the claims and the description of a granted patent should lead to the claims being afforded different interpretations in infringement vs. validity proceedings.
What is the legal basis for applying different interpretation approaches to the claims of a granted patent , depending upon the purpose for which the interpretation will be used?
Should national courts and the UPC adopt the same (differing) approaches when assessing infringement and validity? Even if both of those are assessed in the same proceedings?
2. Where a patent application is identical to its priority document (ie has the same description and claims), your approach can lead to a claim being afforded one interpretation (F) in the patent application but a different interpretation (F+ or F-) in the priority document.
When this happens, ie when the claims but not the description contain the “unusual” definition (F+ or F-), why is it that a claim interpreted as relating to F is, in your view, nevertheless entitled to priority from a document which is interpreted as relating solely to different subject matter (F+ or F-).
Is that not contrary to the G 2/98 requirement that the skilled person must be able to directly and unambiguously derive the subject matter of the claim (F) from the previous application as a whole?
3. What happens in situations where the “unusual” definition of a feature in the description is neither broader nor narrower than the “standard” definition afforded to that feature in the claims?
For example, what happens when the two definitions either overlap (and so are both broader than each other in some respects) or are completely non-overlapping? Which claim interpretation approach should be used in those situations, either for infringement or validity?
@ Proof of the pudding,
DeleteReply to your comment of 15.09.2025 at 15.08.00 GMT+1
Part 1
It would have been easier if you had commented directly on my blog. Why bother another bog with your quarrel with myself?
I should not reply here, but I will do it nevertheless. The next time you will play this game again, my reply will be extremely short.
Answer to question 1
What is the legal basis for allowing a proprietor to come up with one interpretation when it comes to validity and a different one when it comes to infringement?
In the well-known Agfa/Gucci case, Agfa limited its claim to “achromatic” in view of the prior art cited in the search report. When it came to infringement, Agfa did not hesitate to claim infringement, not only on the basis of “achromatic”, but as well with “chromatic”. Why could Agfa do so? Because all references to “chromatic” had not been removed before grant. This was queried by the UPC-LD Hamburg.
Agfa’s behaviour is a perfect example of creating an Angora cat. Small when it comes to validity, and large when it comes to infringement. I call this proprietor’s behaviour dishonest.
The courts are free in their assessment, but if the interpretation in infringement and validity should be the same, the best way is, in accordance with T 2027/23 and the Agfa/Gucci decision, to adapt the description to what has been granted.
@ Proof of the pudding,
DeleteReply to your comment of 15.09.2025 at 15.08.00 GMT+1
Part 2- Answer to question 2
If you had read my blog with a mind willing to understand, you would not have raised question 2.
In order for you to understand better, I come back to may example with the perforated layer having, according to the description, to achieve a certain technical effect. In order to achieve this effect, the holes of the perforated layer have to have a specific size.
If the description and claim in the application claiming priority are identical, then priority is correctly claimed.
If the claim in the priority application corresponds to the definition found in the description, i.e. defines the size of the holes, there is nothing to worry about.
If the claim in the priority application only defines a perforated layer, then the priority is still valid, but the claim in the subsequent application lacks essential features, cf. Art 84, and cannot be granted. Adding the missing essential features, will confirm the validity of the priority. However, a grant will only be possible if the missing essential features are added into the claim.
If in the subsequent application, the claim is not identical to that in the priority application, then there is a problem.
In T 842/05, Reasons 4, the board made clear that an intermediate generalisation carried out between the priority document and the later filed application due to a specific feature being isolated from the combination of features as disclosed in the priority document and not maintained in the claims as filed is not a problem of Art 123(2), but leads to a loss of priority according to G 2/98.
Thus, if in the subsequent application, the claim is only about a perforated layer, then the subsequent claim is not entitled the priority as it does not claim the same invention, since the effect disclosed in the description will not be achieved.
In order for the priority to be validly claimed, the subsequent claim has to contain the size of the claims.
It is not possible to consider that, due to the fact that precise definition of the size of the holes is contained in the description, the priority is validly claimed.
This position ties up with T 2027/23, which has made clear that if the applicant/proprietor wants to have the definition in the description to be taken into account, he should amend its claim accordingly.
Contrary to what you think, a claim cannot be afforded one interpretation (F) in the subsequent application but a different interpretation (F+ or F-) in the priority document. If the description of the priority document discloses F+ or F-, and the claim in the subsequent application only defines F, then the priority is not validly claimed, as the subsequent application does not relate to the same invention.
If the claim in the subsequent application contains F+ or F-, but the description in both the priority document and the subsequent application discloses F, the priority is equally not valid, as it does not relate to the same invention.
To sum it up, in order to validly claim priority, what matters first is what is stated in the claim, but the definition in the claim cannot be substituted “intellectually” with that in the description. Again see T 2027/23.
@ Proof of the pudding,
DeleteReply to your comment of 15.09.2025 at 15.08.00 GMT+1
Part 3 - Answer to question 3
When the “unusual” definition of a feature in the description is neither broader nor narrower than the “standard” definition afforded to that feature in the claims, in order for the definition in the description to be taken into account, during prosecution before the EPO, the applicant/proprietor has the choice.
He either he brings the definition of the claim into the description, or vice versa, but he cannot have it both ways. He must make a choice in order to remove the discrepancy, inconsistency or incongruency between claims and description.
There again, see T 2027/23.
It could not be simpler. Whatever the situation is, the applicant/proprietor should not be allowed to play around as he thinks fit. I find the attitude of an applicant/proprietor wanting to choose one interpretation or the other depending on the situation deeply dishonest.
I have said it many times, third parties have to know where they stand without having to dig deep into the description.
OK, this seems like a good point to end the debate. What you presumably view as acceptable responses I see as attempts to evade the point. It is therefore futile for me to continue unless and until I am persuaded that you have made a good faith effort to address the multiple elephants in the room.
DeleteIn answer to your 1., Pudding, is there enough legal basis for you in the maxim that cheats should not prosper? The patentee as owner of the asserted right chooses whether or not to seed the patent with Angora Cats. If they do, they cannot legitimately complain when a court hoists them with their own petard, to the extent of using one of the possible claim constructions for deciding the infringement issue and another to decide whether the prior art invalidates the claim. How better to serve the interests of justice?
ReplyDeleteAnon, as a response to your question, I will pose a question of my own: if you were taking the EQE exams, would you write "cheats should not prosper" as an answer to a question seeking the legal basis in the EPC for claim interpretation rules?
DeleteI know that it may feel like hoisting patentees by their own petard is "the right outcome". However, the law operates on rules and not "vibes".
I should also point out that not every instance of a "custom" definition in the description (but not the claims) represents an attempt at "cheating" by a patentee. Indeed, this is likely quite a rare occurrence. As always, a c*ck-up is far more likely than a conspiracy. Also, there are many instances in which a "custom" definition in the description will be irrelevant to (ie not affect the assessment of) patentability, so is it really fair to "punish" patentees in those instances?
@ Proof of the pudding
DeleteLet’s remain serious. No candidate would ever answer like you suggest.
The legal provisions are to be found in the EPC and any EQE candidate should know them. This cannot be said from representatives having come on the list through the grandfather rule.
The important articles are: Art 52-57, Art 84, Art 87-88, Art 76(1) or Art 123(2), all interpreted by the boards and the EBA. Art 83 has a specific position: if the disclosure is not enabling, then it is moot to discuss patentability and especially to assess novelty or inventive step.
If the applicant/proprietor wants the "custom" definition in the description to be taken into account, the solution is simple: do what is said in T 2027/23.
What could be one of those “many instances in which a "custom" definition in the description will be irrelevant to (ie not affect the assessment of) patentability”.
Any statement in the claim or the description is there because the applicant/proprietor wanted it there. It is thus not correct to speak about punishment when the applicant is not allowed to change his mind as the thinks fit.
Nice answer Pudding, thanks. Let me turn the debate back on you though. Where in the EPC (or the UPC Rules) do I find a prohibition on using the claim as a nose of wax, construing the words of the claim one way when pondering its validity but in another way, when pondering whether to declare any given accused embodiment to be an infringement of that claim? What is it that prevents the UPC from doing that if, in its infinite wisdom, it so chooses? After all, it used to be that what comes after and infringes will, if coming before, anticipate, and we both know what happened to that Rule, long thought to be inviolable. Is there yet in Europe such a thing as a "Reverse Doctrine of Equivalents"?
ReplyDeleteI would have thought that the "prohibition" comes from Article 69 EPC, or the principles underlying that article. To my knowledge, national courts never purport to interpret claims based upon any other principles, whether for assessing infringement or validity.
DeleteTo be honest, it seems to me that the concerns about different interpretations for infringement vs validity all stem from past practice in Germany regarding bifurcated proceedings. But the most effective way to address those concerns is, and always was, harmonisation of (the principles applied in view of) the interpretation of Article 69 EPC. The EBA's decision in G 1/24 explicitly acknowledged this point.
Looking forward, it seems to me that, where there is an invalidity counter-claim, bifurcated proceedings are going to become the exception and not the rule. And I really find it hard to believe that a national court or the UPC would, in the same proceedings, deliberately select one interpretation for validity and another for infringement.
OK then, Art 69, EPC. That though, and its Protocol, is what knocked on the head the idea that what comes after and infringes will, if coming before, invalidate.
DeleteIt was from the USA that I drew the notion of a "nose of wax" and the so-called "Reverse Doctrine of Equivalents". I'm not as convinced as you that the courts operating under the UPC have no wiggle room to construe the claim one way when comparing it with the prior art and a different way when comparing it with the embodiment accused of infringing the claim. Perhaps it is like so much in the law; the facts of the early cases coming before the courts determine the direction of travel of the courts, as the flow of cases continues and increases.
I think that we are talking about different things.
DeleteI was talking about the subject matter of the claimed invention, as interpreted according to (the principles of) Art 69 and Article 1 of the Protocol. On the other hand, the concerns that you raise appear to me to relate solely to subject matter which is deemed equivalent to the claimed invention, in the sense of Article 2 of the Protocol.
I think that we need to discuss these two concepts separately. Patentability is assess relative to the subject matter of the claims, and not relative to allegedly "equivalent" subject matter.
If you have your concerns about how equivalents are assessed, especially in the UK, then I have some sympathy with those concerns. However, I think that the case law is still evolving, and that Gillette / Formstein defences will always win out, meaning that the old adage should remain valid - save for the issue of inherency, when it comes to claims in "substance / composition for use" format.
Different things, Pudding? It seems to me that there are at least three different "things" buzzing around this discussion. The first is "the invention", something which the EPC and the case law eschews to define. For me, it is that which is set forth in the patent application as filed, discoverable from the WO or A publication.
DeleteThe second is the "subject matter for which protection is sought". It is the task of the claim to announce what that is. Amending the claim during prosecution changes what that is. Whether it maps 1:1 to "the invention" is something I find highly questionable.
The third is the "scope of protection" delivered by the B publication. To fix that, and ONLY that, we are to required to use Art 69 EPC and the Protocol. Are there two sorts of infringement, literal and "by equivalent? Even if some courts say there are, does the EPC give them no choice. What is "literal infringement"? Does the relief given depend on whether the infringement is "literal" or "by equivalent"? There is only one sort of infringement, isn't there? It's a binary question, isn't it? If so, what the claim means for infringement might be different from what it means for the purposes of its validity
Given all this, why must we construe the claim the same for "infringement" as for "validity"? Who (other than commentators of the Pudding ilk) says? For my part, I (and Formstein) say that God (what comes after and ingfringes if coming before prejudices novelty) is dead. Who disagrees?
@ Proof of the pudding and all those having hoped for a change of paradigm after G 1/24
ReplyDeleteI would like to draw your attention to an interesting comment published by an Italian qualified representative.
https://www.bugnion.eu/en/a-commentary-on-the-decision-g-1-24/
The same comment has been published on Lexology.
From this comment it is clear that the practice will not change following G 1/24, but examiners will have to “consult” the description in all cases in order to see whether the definition in the description is broader or more limited than that a skilled person might derive from the wording in the claim.
If there is an inconsistency between claims and description, the claim ought to be amended to resolve the latter. At the same time, description and claims will be aligned.
Neither the boards, nor first instance divisions, are prepared to make interpretative summersaults to please applicants/proprietors, when they hide deep in the description definitions altering the scope of protection which can be derived by a skilled person from the claim wording.