T 1849/23 is the first decision from the Boards of Appeal to apply G 1/24 to the use of information from the description to broaden otherwise clear claim language (many thanks to eagle-eyed Katfriend Alessandro Cossu for spotting this!). The approach of the Board of Appeal in T 1849/23 contrasts sharply with the many decisions confirming that "consulting" the description does not permit the narrowing of otherwise clear claim language. The Board of Appeal in T 1849/23 found that a broader interpretation of otherwise clear claim language could be imported from the description. The self-expressed aim of the EPO in its application of G 1/24 is legal certainty and harmonisation. Does the approach of the Board of Appeal in T 1849/23 help or hinder this?
Legal background: The G 1/24 "consultation" mandate
G 1/24 directly addressed the diverging case law on claim interpretation. In G 1/24, the EBA was asked whether the description may be consulted only if the claim is unclear and/or if it should be consulted generally. Many commentators interpreted the EBA's final order as providing clarity on this question:
"The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention... and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation".
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| Resisting the rotational forces |
However, it quickly became apparent that what it means to "consult" the description was open to interpretation (IPKat). Following the mandatory "consultation" of the description, the question remained how the claims should be interpreted in view of conflicting definitions in the disclosure as a whole, and whether definitions and/or embodiments in the description could be ignored (IPKat) (see also the recent decision dealing with conflicting language in the claims themselves (IPKat)). Notably, the EBA chose to avoid directly addressing the issue of conflicting definitions by leaving Question 3 of G 1/24 unanswered. Question 3 asked "[m]ay a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions?" The EBA felt that the answer to this question was encompassed by its answer to Question 2 that the description should always be consulted.
In this Kat's view, two questions arising from G 1/24 were therefore:
1) May otherwise clear claim language be narrowed by definitions and/or embodiments provided in the description.
2) May otherwise clear claim language be broadened by definitions and/or embodiments provided in the description.
The "no narrowing" consensus: Post-G 1/24 board of appeal decisions
Since G 1/24, we have had many decisions from the Board of Appeal finding that information in the description cannot be used to narrow the interpretation of otherwise clear claim language. See for example:
- T 1561/23: "G 1/24 does not even explicitly require that the definition of a term from the description must be used for the interpretation of a claim" (r. 2.10, machine translation from the German) (IPKat).
- T 2027/23: "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) (IPKat).
- T 1999/23: "a restrictive definition of a term in the description may not be used to restrict the subject-matter of the claim, which would otherwise appear clearly broader to the skilled person" (IPKat)
- T 1402/24: "for the purposes of judging novelty and inventive step, the description cannot be relied on to read into the claim an implicit restrictive feature not suggested by the explicit wording of the claim" (r. 2.5.2).
- T 412/24: "a sensible claim construction cannot be reinterpreted on account of the description being 'consulted' or 'referred to'" (r. 3.1.1).
- T 2034/23: "consultation of the description does not, however, mean that claimed features must always be construed as narrowly as any specific embodiments of the invention found in the description" (r. 3.6.2).
- T 1993/23: "claim 1 of auxiliary request 1 should not be interpreted, based on embodiments presented in the description, as having a meaning narrower than the wording of the claim as understood by the person skilled in the art" (r. 3.1).
- T 1819/23: The board wishes to add that, in accordance with decision G 1/24, interpreting a claim means establishing its proper technical meaning. This is distinct from reading into it limitations that are not present in its wording on the basis of the description" (r. 3.3).
- T 1465/23: "these terms are not to be re-interpreted or understood in a more limited way in the light of the specific embodiments of the patent description, which, in addition, contain subject-matter that is more limited than that claimed" (r. 2.4).
T 1849/23 case background
The case in T 1849/23 concerned an appeal by the Opponent (Alois Kober GmbH) against the Opposition Division's decision to maintain European patent EP 3166825. The Patentee was Lippert Components Inc. The patent related to a trailer oscillation and stability control device. The invention aimed to detect and control the dangerous swaying of a trailer. Claim 1 as granted (the main request) specified a device including an accelerometer and, crucially, "an angular rate sensor (16) positioned and configured to measure rate of angular trailer deflection about a hitch pivot point (18)".
The key issue before the Board of Appeal was novelty. The Opponent argued that the prior art, which disclosed a yaw rate sensor on the trailer, anticipated the claim. The Patentee argued in response that an "absolute yaw rate" and "the rate of angular trailer deflection about the hitch pivot point" (as specified by the claim) were distinct physical quantities. In the Patentee's view, a literal reading of the claim therefore excluded a simple yaw rate sensor. The Opposition Division agreed with the Patentee in its decision, finding this feature was not disclosed in prior art.
Consulting the description to broaden the meaning of the claims
On appeal, the Board of Appeal first conceded that "when the claim is read in isolation", the Patentee's strict, literal interpretation could be justified. However, the Board of Appeal then went on to immediately note that: "in accordance with G 1/24, the description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention". Consulting the description, the Board of Appeal found that the only specific implementation of the sensor disclosed in the entire patent was a "gyroscope sensor", i.e., a sensor for measuring the yaw rate. The description itself, in the preferred embodiments, described the sensor as a "raw angular rate sensor, i.e. a sensor measuring absolute yaw rate".
The Board of Appeal found that because the patent's own description used "angular rate sensor... about a hitch pivot point" and "gyro" (yaw rate sensor) interchangeably, the claim could not be strictly construed as the Patentee submitted. The Board of Appeal thus concluded that the claim "must be construed in a broader manner" (r. 1.3). This broader construction, informed by the description, was found by the Board of Appeal to encompass the yaw rate sensor disclosed in prior art. The Board of Appeal therefore found that the device of the prior art contained all the features and that the subject-matter of granted claim 1 thus lacked novelty. The main request was therefore rejected. Nonetheless, the patent was ultimately maintained on the basis of an auxiliary request relating to a method claim, and the case was then remitted to the Opposition Division for description adaptation.
This decision can be contrasted with all of the preceding decisions finding that information in the description generally cannot be used to narrow the claims. In T 1999/23, for example, the Board of Appeal applying G 1/24 "consulted" the description, found a restrictive definition, and then promptly ignored it, giving primacy to the clear, broader claim language "to protect legal certainty" (IPKat). By contrast, in the present case, the Board of Appeal consulted the description, found a broadening implementation, and used it to override the otherwise clear, narrower claim language, leading to revocation.
Definitions versus embodiments: Does the type of information matter?
There has been some debate as to the relative impact of different forms of "information" in the description. As outlined above, the EPO refers to information, definitions and embodiments from the description that may be consulted. However, a question raised by Agfa v Gucci, UPC_CFI_278/2023 is whether there is a difference between explicit "definitions" of terms and "embodiments" of the invention described in the examples. In its reasoning, the UPC Local Division rejected "broadening" information from the embodiments but found that a narrowing "definition" did limit the claims. It has been argued that the UPC may still be open to accepting interpretations based on broadening definitions versus embodiments. However, in its Headnotes, the Local Division found that "Specifications in the description that are not consistent with the granted claims cannot serve as a basis of a broad interpretation of a claim" (Headnote 3). Who knows whether "specifications" means just embodiments or also applies to definitions!
The clear view of the EPO is that the general prohibition against importing narrowing language from the description applies to both definitions and embodiments. As T 1561/23 notes, "G 1/24 does not even explicitly require that the definition of a term from the description must be used for the interpretation of a claim" (IPKat), whilst T 2034/23 found that "consultation of the description does not, however, mean that claimed features must always be construed as narrowly as any specific embodiments of the invention found in the description" (r.3.6.2).
In this present case, it was notable that both the entire description was found to support the broader interpretation, and that the only disclosed embodiments also supported the broader definition. It is possibly also important that the description and claims were not found to be directly contradictory (IPKat). We therefore still await clarity on the impact of an explicit broadening definition on claim interpretation (e.g., as in the referring case to G 1/24, T 439/22). We are also left with the question of what to do with conflicting information in the description itself, e.g., a broadening embodiment that contradicts a narrowing definition.
Legal harmonisation and preventing the patentee from having their cake and eating it
The Boards of Appeal have cited legal certainty as a reason for not incorporating narrowing definitions from the description into the claims. The EPO only considers validity, not infringement. From the EPO perspective, therefore, a broader definition will generally not be in the favour of the patentee, as it will encompass more prior art for the purposes of novelty and inventive step. This was the situation both in the present case and in the case underlying the referral in G 1/24. By contrast, in infringement proceedings, broader definitions will generally be in the patentee's favour.
The aim of the Boards of Appeal has been explicitly stated to be to prevent the patentee having their cake and eating it on claim interpretation. In T 2027/23, for example, the Board of Appeal took pains to note that it would be highly undesirable for legal certainty to allow a patentee a narrow interpretation for validity, and then to allow the patentee to argue for a broader scope of protection when enforcing the patent (r. 3.5.4). This is probably also the reason that the EPO is prepared to accept incorporation of broader interpretations for otherwise clear claim language from the description for the purposes of validity. The EPO wishes to prevent a disconnect between claim interpretation as assessed by the EPO and the scope of the claims as determined by courts. However, it could be argued that we already have such a disconnect in cases of infringement by equivalence (Article 69 EPC). Additionally, the courts will also often consider validity, and have already diverged from the now established EPO approach to narrowing definitions.
Final thoughts
Taking a step back, the practical lesson from T 1849/23 is the same as this Kat has previously highlighted with respect to the issues surrounding G 1/24 (IPKat). As illustrated in T 2027/23, the view of the EPO is that "Patentees are the 'masters of their fate' and it falls upon them to remedy any discrepancies between the description and the claims" (r. 3.5.2) (IPKat). As such, not only should patent drafters avoid unnecessary broadening definitions, they must also be careful that their specific examples do not inadvertently broaden their carefully crafted claim language beyond what they intended and encompass unforeseen prior art. For third parties assessing validity and freedom to operate, the job never gets any easier. The lesson from T 1849/23 is that the scope of the claims may not be as clear as it first appears, and could be considered to be significantly broader in view of language buried in the description, with a potential impact for both validity and infringement. It is also currently necessary to consider how claims may be differently interpreted by the EPO and the courts.
Further reading
- Beware of boilerplate: Practical lessons for patent drafting from G 1/24 (Claim interpretation) (April 2025)
- EBA decides G 1/24 on claim interpretation: The description should always be consulted (June 2025)
- First interpretation of G 1/24 (the description must always be consulted) (T 1561/23) (July 2025)
- G 1/24 in the spotlight: Description definitions do not override clear claim language (T 1999/23) (July 2025)
- BREAKING: Referral on description amendments finally confirmed! (G 1/25 - "Hydroponics") (July 2025)
- No change: The EPO's guidance to Examiners on how to apply G 1/24 (Aug 2025)
- Divergence between the UPC and EPO on claim interpretation and description definitions (Agfa v Gucci, UPC_CFI_278/2023) (Aug 2025)
- No claim interpretation summersaults for the EPO (T 2027/23) (Sep 2025)
- Insufficiency resulting from mutually exclusive definitions: The repercussive effect of dependent claims (T 0878/23) (Nov 2025)
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Tuesday, November 11, 2025
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Concerning that mysterious word "specifications" which you highlight above, this reminded me of one aspect of the head-scratching that followed the CJEU's SPC decision in C-121/17 (Teva).
ReplyDeleteIn the English version of Teva, which a great many practitioners rely upon in practice, the CJEU reasoned among other things that:
"the subject matter of the protection conferred by an SPC must be restricted to the technical specifications of the invention covered by the basic patent" (Teva at [46])
and that
"it is necessary to ascertain whether a person skilled in the art can understand without any doubt ... that the product to which the claims of the basic patent relate is a specification required for the solution of the technical problem disclosed by that patent" (Teva at [48]).
What did the CJEU mean by these? Well, it turns out that if one looks at the French version of the judgment - French being the internal working language of the CJEU and thus, presumably, the language in which the decision was originally written, even though the language of the case was itself English - at [46] the Court in fact said "caractéristiques techniques de l’invention" and at [48] it said "...que le produit visé dans les revendications du brevet de base est une caractéristique nécessaire pour la solution du problème technique divulguée par ce brevet."
Taking these into account, the meaning of the strange wording employed in the English judgment becomes a bit clearer; it seems to be a rather un-idiomatic translation from French.
I wonder whether something similar might be at work here, as a result of the UPC judges writing a decision in a language which is not the native tongue of any one of them? This is not a criticism, simply an observation that being a fluent user of a second language does not automatically equate to using that language in precisely the same way as someone who speaks it as their first language - and in cases like this, it can lead to unfortunate ambiguities of meaning.
I don't know much about trailers but I'm pretty certain trailer hitch pivot points can pivot about both the vertical and horizontal axes (otherwise trailers would never be able to go over bridges). The patentee's argument that "yaw rate" and the claimed "the rate of angular trailer deflection about the hitch pivot point" were distinct seems pretty weak to this armchair trailer expert.
ReplyDeleteIt is, at least in my view, impossible to derive any consistent claim interpretation principles from the Board of Appeal decisions that have (purportedly) applied G 1/24.
ReplyDeleteThere is, however, one common thread: if there is an interpretation that leads to a determination of invalidity then that interpretation can and shall be used against the patent proprietor.
This has been the outcome even in cases where the Board has admitted that there are other, equally valid claim interpretations that do not lead to that result. For example, the Board in T405/24 adopted an "all technically reasonable interpretations" approach, and held that the patent was invalid because, under at least one (but not all) of those interpretations, the claims contained added matter.
It is not hard to see what is going on here. Boards are looking for ways to quickly dispose of appeals, and are therefore latching on to claim interpretations which help them to achieve that aim. That is not to say that the Boards are inherently anti-patentee, just that they are not necessarily deciding cases based upon the most consistent set of principles. And that is even before we get to the question of the principle of party disposition ....
Something, Proof, perhaps to do with the absence at the EPO of a doctrine of "Binding Precedent"?
DeleteFaced with a particular individual case, how shall a Board best serve the interests of justice? Perhaps, first decide who should win the case, then look for a ratio decidens that will speedily and compactly deliver a just outcome?
Then swiftly move on the the next case, again with an open mind.
Another thing: Does not EPO management require the stats to be massaged as vigorously as possible, to minimise the number of occasions when a Board will tinker with, or reverse, what the ED or OD has already decided. International comparisons are being made. Who wants to be bottom of the League Table? And at the EPO, are not the Boards ever more subservient to what management expects of them?
Max, I do not think that it can be that simple.
DeleteI have no doubt that, in common with many other judicial instances, EPO Boards rely upon their "gut feeling" about a case a lot more than they would care to admit. What I find peculiar about the EPO's Boards, however, is an alarming tendency towards perception bias. That is, there are simply far too many instances where it appears to me to be impossible to deny that a Board's decision is based upon a misrepresentation (or highly subjective and dubious interpretation) of the facts and/or case law.
T1523/23 provides a very recent illustration of this phenomenon. At Reasons 2.5, the Board states "The Enlarged Board of Appeal [in G1/21] considered that, while suboptimal, oral proceedings by videoconference as such do not impair the right to be heard and the right to fair proceedings (Reasons 40 and 43)". However, what the EBA actually said at Reasons 43 was:
"All in all, the Enlarged Board considers that the limitations currently inherent in the use of video technology can make it suboptimal as a format for oral proceedings, either objectively or in the perception of the participants, but normally not to such a degree that a party’s right to be heard or right to fair proceedings is seriously impaired".
Interpreting the EBA's ruling by effectively omitting the word "seriously" completely changes its meaning. It also overlooks crucial context behind the EBA's pronouncement that there need to be "good reasons" to deny a party their choice of in-person proceedings. The Board in T1523/23 surely cannot have been blind to this. Their decision to misinterpret the ruling in G1/21 therefore cannot be ascribed to chance or to "gut feeling". The same could be said for the different, but equally absurd, attempts by the Boards in T1158/20 and T 618/21 to misinterpret (or reinterpret) G1/21.
It is not hard to see why the decisions of the Boards in T1523/23, T1158/20 and T 618/21 would be well received by EPO management. A full-scale return to in-person proceedings for all who want them would scupper their (financial) planning. The absurd (mis)interpretations of G1/21 by the Boards therefore looks very fishy in this context.
A similar pattern seems to be emerging with (mis)interpretations of G1/24. The EBA was crystal-clear that claim interpretation approaches should be harmonised between the EPO and the courts of the EPC Member States. And yet the Boards seem somehow incapable of adopting the claim interpretation principles that are required to achieve that harmonisation (and that are also required to ensure consistency with their own "gold standard").
It is perhaps too much to expect the Boards to always adopt a rigorous approach that starts by identifying the relevant legal provisions (and case law) and then interpreting them using all of the relevant methods under the VCLT. But it would be reassuring to see this happen more often, especially in "controversial" matters. What is striking about many of the decisions of the Boards that interpret and apply G1/24 case law is the lack of comprehensive and detailed reasoning on key aspects of the (case) law. The jury is still out as far as I am concerned, but it all looks a bit fishy so far.
@ Proof of the pudding,
DeleteIt is perfectly possible to derive a consistent claim interpretation principle from the Board of Appeal decisions that have (purportedly) applied G 1/24.
Be it only the whole list of decisions quoted in the present blog entry, they all show that a restrictive interpretation of the claim due to statements in the description will not be accepted by the boards. If the applicant/proprietor wants a restrictive interpretation of the claim found in the description, it is for the applicant/proprietor to amend its claim accordingly.
The Agfa/Gucci case before the UPC showed that the latter did not accept a broadened interpretation of a claim restricted in view of the prior art.
In the present case, the board has applied G 1/24 when construing the claim and decided that since the description allowed a broader meaning than the possible strict literal reading of the claim, claim 1 as granted lacked novelty.
This is perfectly normal and should not come as a surprise. It is not by hiding in the description an interpretation of the claim which deviates, either in a broadening or in a limiting sense, that the applicant/proprietor is allowed to interpret the claims depending on the circumstances. Party disposition does not mean that claim interpretation can vary as the applicant/proprietor thinks fit.
In T 2027/23, the board even mentioned the necessity of a harmonised claim interpretation between national courts or the UPC and the BA. For a long time, it has been considered unsatisfactory that patentees could get away with different claim interpretations for validity, on the one hand, and for infringement on the other.
There is, indeed, one common thread, but a different one: the proprietor will not be penalised if the interpretation in the description leads to an amendment of the claim so that claim and description are aligned.
It does thus not appear correct to claim that “if there is an interpretation that leads to a determination of invalidity then that interpretation can and shall be used against the patent proprietor”. It is in the hands of the proprietor to avoid this by aligning claims and description.
The board’s interpretation of G 1/24 makes it very clear that they will apply it in a way which will not suit most applicants/proprietors. G 1/24 has not decided that the interpretation given in the description should supersede the interpretation a skilled person make from the wording of the claim.
One further conclusion is, that, in the long run, the notion that the patent being its own dictionary will belong to the past. We will have to wait some time until the applicants have put to heart what G 1/24 requires from them.
G 1/24 and the board’s decisions following it will give third parties more legal certainty, as the applicants/proprietors will not be allowed to juggle between interpretations.
@ Proof of pudding, in matters of G 1/21,
DeleteWhilst the present decision relates to substantive patent law, all considerations relating to G 1/21 actually relate to procedural aspects. When looking at procedural case law, every board does more or les what it wants and in procedural matters it has become a lottery. Similar situations are not dealt with in a similar way.
I am of the opinion that G 1/21 is a political decision which was taken by the EBA in order to please the upper management of the EPO. It allowed the upper management to send examiners in home office and thus try to sell buildings.
The referring board did not make any distinction between oral proceedings before the first instance and before the boards of appeal, and yet the EBA limited its order to oral proceedings before the boards of appeal. Art 116, R 115 and 116 do not make any difference between instances before which oral proceedings take place.
In G 1/21, Art 31 VCLT has been quoted in the “Relevant legal provisions”, but cannot be found at any place in the reasoning of the EBA. One possibility is that, the decision of the EBA is not at all compatible with Art 31 VCLT, as it introduces a distinction between the instances, distinction which is absent from the corresponding legal rules, i.e. Art 116, R 115 and 116.
The problem with G 1/21 is that the gold standard for oral proceedings has been decided after Art 15a(1) RPBA had been enacted by the AC on proposition of the BOAC. After publication of the reasons for G 1/21, Art 15a(1) RPBA should have been amended, but there was no political will to do so. It conveniently allows members of the boards to hold oral proceedings in home office or in any member state of the EPC.
Whether in first instance or in appeal, it does not seem correct that the members of a deciding body do not sit together when they decide the fate of an application or of a patent. I do not know an EPC contacting state in which this is possible. Parties can be heard by ViCo, but the deciding body sits together. Why is the EPO allowing itself such an exception?
Hearing witnesses by ViCo is another heresy, as in the present system it cannot be verified whether the witness listens in the oral proceedings as member of the public or sitting next to a member of the public. Hearing of witnesses by ViCo should only be authorised when it is sure that the witness cannot be influenced by the way the oral proceedings progresses. When heard by ViCo a witness should sit in a room in which not contacts with the parties is possible, for instance in a court room in its country of residence.
Thank you for your comments. There is much to unpack. However, I will limit myself to the following two observations.
DeleteFirstly, party disposition does not mean that claim interpretation principles can vary as any party, including the EPO thinks fit.
Secondly, the EPC does not appear to provide any legal basis for varying the claim interpretation principles applied based upon whether or not the claims and the description are in perfect alignment with one another. Indeed, given that determining the correct interpretation of the claims can sometimes be very challenging indeed (and can depend upon evidence adduced by parties to litigation), it seems somewhat absurd for the EPO punish patentees for failing to achieve perfect alignment. That is hardly the most objective basis for determining how claims should be interpreted ... especially as there is no reason to think that the EPO will unerringly arrive at the correct interpretation of the claims.
@ Proof of the pudding,
DeleteIn view of the "principle of party disposition", parties are free to dispose of their claims – advancing, withholding or withdrawing them as they see fit – and may thereby control the course of the litigation cf. e.g. Wikipedia.
The logical conclusion is thus that the "principle of party disposition" does not withhold a party to attempt to give one interpretation of a claim in one forum and a different interpretation in a different forum. This is exactly what leads to the famous angora cats as explained in T 2027/23. This is also what Agfa has done before the LD Hamburg in the now famous Agfa/Gucci case.
The EPO does not punish patentees for failing to achieve perfect alignment of claims and description. It simply requires the applicant to bring in the claim the interpretation given by the applicant/patentee in the description and vice versa.
By doing so the EPO does by no means “unerringly arrive at the correct interpretation of the claims”. It actually takes over the interpretation of the applicant/proprietor. What better could be done to the benefit of the applicant/proprietor and of third parties? Thereby, the EPO simply avoids proprietors to come up with a different interpretation of the claim in pre- and post-grant proceedings.
If the claim is about a spade and the description is about a garden instrument, then applying G 1/24, the garden instrument has to come in the claim or the spade has to replace the garden instrument in the description.
Claiming a spade, but actually disclosing a garden instrument, or vice versa, shows a clear discrepancy between claims and description. This discrepancy has to be remedied by way of amendment.
This is the interpretation of the EPC given in G 1/24 and by the boards when applying G 1/24.
T 405/24 does not diverge from other decisions applying G 1/24. What was at stake in said decision was added matter. The board came to the conclusion that when a claimed feature can have a plurality of interpretations for the skilled person, i.e. in case of an ambiguity, not only the one derivable from the original description is to be taken into account, and thereby exclude other possible interpretations as well derivable for the skilled person. The board added that there is a significant body of case law holding that all technically reasonable interpretations of a disputed claim feature are to be taken into account when assessing compliance with Art 123(2).
In the absence of added matter, G 1/24 and the way the boards apply it, is to request alignment between claims and description.
That you do not agree with this point of view is your good right, but you should not forget that at the end of the day, boards sit at the longer lever.
Completely agree DXThomas with so much you have written. Just a small comment on the applicant/proprietor switching between interpretations. This does sometimes need to happen when the patent is sold or licenced and a different party is then controlling it. I therefore believe a consistent claim interpretation should not be forced upon the applicant or proprietor, and there is no real justification for this requirement in the EPC (though of course it is very relevant to fairness). Thanks
DeletePedros, it is an interesting question whether the EPC requires a consistent claim interpretation to be applied for all purposes (and in all scenarios).
DeleteThe so-called gold standard and the uniform concept of disclosure require a consistent approach across all of Art. 54, 87 and 123 EPC. All of those provisions involve a two-step assessment. The first step is the determination of the subject matter of the claim (or, for some Art 123(2) assessments, an amended description). The second step is the determination of the subject matter disclosed by another document, whether a prior art document (Art 54), a priority document (Art 87) or the specification as originally filed (Art 123).
It is hard to see how there could be a "uniform" approach if the EPO used different principles in different scenarios for either of the two steps. It is therefore possible to conclude that, at least according to established case law principles, a consistent claim interpretation (ie determination of the subject matter of a claim, according to the first step above) must be applied to at least Art. 54, 87 and 123 EPC.
Claim interpretations for the purpose of infringement assessments should not be of any concern to the EPO, as the courts of the EPC Member States have the exclusive remit to conduct such assessments. For what it is worth, however, my view is that there should be consistency of claim interpretation principles across all pre- and post-grant fora.
Of course, national courts are afforded the luxury of adequate time and lengthy submissions from the parties (potentially including expert opinions) and are therefore well placed to conduct detailed assessments on key claim interpretation issues. It is therefore only to be expected that, on occasion, a national court might, after due consideration of the parties' submissions, disagree with a claim interpretation applied by the EPO prior to grant. After all, EPO examiners cannot reasonably be expected to get things absolutely correct 100% of the time.
It is a shame that the EPO seems to believe that such differences of opinion on claim interpretation cannot be tolerated, and that the interpretation applied by the EPO therefore has to effectively be carved in stone by mangling the description in line with that interpretation. Such an intolerance of divergent opinions reflects poorly upon the EPO, not least because it amounts to judicial imperialism and an attempt at establishing an outsize role for the EPO in the post-UPC era.
Thank you Proof of the Pudding. Excellent comment. Just two things. My comment was about a change of claim interpretation in time (not across different patentability requirements). So the applicant/proprietor could use a different interpretation in 2025 versus 2026 and provide reasons as to why the later interpretation met all patentability requirements. This should surely be allowable where there is a recorded assignment of the application/patent from party A to party B??
DeleteAlso what do you think of the idea of an EPO representative being present as part of the 'tribunal' that makes the decision in a court proceedings on a EPO derived patent? Does this deal with your concerns?
Thank you again
Pedros, that certainly would not allay my concerns. Experience teaches me that claim interpretations adopted by the EPO during examination are rarely explained, let alone justified. They are most often just imposed / assumed at the stage of adapting the description.
DeleteInterpretations of certain features may sometimes be inferred from objections raised (or not) during examination. Other times, the applicant may explain why a claim feature, when correctly interpreted, is novel and/or inventive over the prior art. But none of these scenarios involves a comprehensive analysis of the wording of the claims, let alone an analysis based upon detailed consideration of the disclosures of the description and the common general knowledge of the person of ordinary skill in the relevant art.
So no, I do not see the involvement of the applicant in examination at the EPO as a good reason to adopt the same claim interpretation in all subsequent proceedings.
Thank you Proof of the Pudding. I don't have the time to continue commenting on this blog, but I very much valued your views.
DeleteIt has become clear in recent decades that courts in Europe are prepared to consider infringement scope broadly, with the aid of purposive construction, doctrine of equivalents, etc, and the 'technical effect' is increasingly being used to define this broad scope (and the UPC appears to be looking to go that way also I think). This perhaps is a way of doing justice to the contribution of the applicant to the world, which might not be seen as being properly reflected in a narrow literal claim scope. With that idea as background, the EPO now needs to look at ways in which a scope beyond the literal scope could be justified in enforcement proceedings, and needs to bring that into its decisions in all EPO proceedings. The more generous the courts get, the stricter the EPO will need to be on possible 'imaginative' ways the applicant/patentee can go beyond the literal scope, and so the system is adjusting to all that presently.
ReplyDeletePedros, what you are suggesting would amount to the EPO basing their practice on hypothetical scenarios that have not (and may well never) come to pass. It would also suggest that the EPO perceives that it has a role to play in policing the extent of protection that patentees can attempt to claim before courts of the EPC Member States.
DeleteIn other words, what you are suggesting is a practice that is completely divorced from the legal basis provided by the EPC. Still, it might help to explain the EPO's current thinking.
Thank you Proof of the Pudding. I don't have 100 percent certainty for what I said in my comment, but that is my present view. I know that the EPO takes some interest in the outcome of court decisions relating to European patents, and so probably monitors how the courts are interpreting claims. I also know that Examiners are given internal guidance notes that are never made public. Sometimes in a call an EPO Examiner will refer these to explain why they are raising the objection, but they cannot be given to the applicant (and so they are not only following the public Guidelines). Your comments on hypothetical scenarios and being divorced from legal basis are interesting and of course very valid. But I believe the EPO does also take 'private' actions to keep the system running well, and trying to guess at those actions and what their purpose might be can be helpful to explain what is happening in the behaviour of Examining/Opposition divisions and also in appeal decisions.
Delete@proof of the pudding and @pedros
DeleteTo those among the patent practitioners for whom a tenet as to the scope of claims is « the broader the better », this decision is a stern warning that the broader may also be the weaker (see the French saying: " qui trop embrasse mal étreint").
As to EPO internal documents for examiners’ guidance, this is not so secret. For example, the EPO 2024 quality report includes the following as part of the "EPO Quality action plan 2025" :
« We received feedback from our users that examiners sometimes make substantial amendments to the claims and propose the amended text for grant without consulting the applicant. To address this, we will revise the online training module regarding amendments and consultation and raise awareness in the examining divisions. We will also explore use of the shared area and other ways to collaborate with the applicant on any amendments. Indeed, consulting the applicant before substantial amendments are made by the division in the proposal to grant is crucial to ensure the applicant has an opportunity to address any issues before the application proceeds to the next stage. »
This suggests that user associations could request from the EPO public access to the « online training module ». I doubt though this would be accepted, given the legal implications of the guidelines, which an applicant may use to challenge an ED’s assessment if it does not comply with the guidelines, supposed to create a legitimate expectation to the benefit of applicants. The EPO would likely not take the risk that this expectation extend to internal training material.
Francis, it is not just divergence of unpublished material from the GL that might be subject to challenge. It is divergence from the provisions of the EPC or any logical (or at least arguably supportable) interpretation of the same. The GL are also open to challenges on this ground, with the commentary of "claim-like clauses" being a particular case in point.
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