The interpretation of claims for patentability purposes was adjudged by the EPO’s Enlarged Board of Appeal (EBA) to be inconsistent/ambiguous, in a case which highlights how claim interpretation must be performed in view of the patent’s description and drawings.
ARTICLE SUMMARY
- The claims of any patent continue to define the scope of protection of the patent.
- The Enlarged Board of Appeal (EBA) had previously approached claim interpretation from varying legal standpoints:
- G 2/88, G 6/88 identified Article 69 EPC and the Protocol as the legal basis.
- G 2/12 identified Article 84 EPC as the legal basis.
- The legal basis was not the decisive issue in any of these cases.
- The EBA considers that neither Article 69 EPC and the Protocol, nor Article 84 EPC are entirely satisfactory as a basis for claim interpretation when assessing patentability.
- The EBA has concluded that the description and any drawings should always be referred to when interpreting the claims.
EBA JUDGEMENT ON CLAIM INTERPRETATION
The EBA has provided its answers to the following questions:
Question 1: Is the extent of protection conferred by a European patent or application (Article 69(1), second sentence, EPC and Article 1 of the Protocol on the interpretation of Article 69 EPC) to be applied to the interpretation of patent claims when assessing the patentability of an invention (under Articles 52 to 57 EPC)?
Question 2: May the description and figures be consulted when interpreting the claims to assess patentability, and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation?
Question 3: May a definition or similar information on a term used in the claims, which is explicitly given in the description, be disregarded when interpreting the claims to assess patentability and, if so, under what conditions?
BACKGROUND
EP 3076804 (Philip Morris) was opposed by Yunnan Tobacco.
Claim 1 as granted contains the feature that the material is a “gathered sheet”.
The patent proprietor argued that if this term is assigned its usual meaning in the art, claim 1 is to be regarded as novel.
This term’s broader definition in the description contrasts with its narrower, usual meaning in the art.
The appellant-opponent argued that if the term is interpreted in the light of the description, then it would have a broader, although still technically sensible meaning. This interpretation of the feature would lead to a lack of novelty.
The Referring Board issued a communication in the pending appeal case in which it acknowledged divergence in the case law on the issue of how patent claims should be interpreted.
This led to the raising of the 3 questions identified above.
SUMMARY OF THE DECISION
For Question 1, the EBA considers that neither Article 69 nor 84 EPC is entirely satisfactory as a basis for claim interpretation when assessing patentability.
The strictly formal answer to Question 1 is “No”.
The following principles of claim interpretation are instead put forward by the EBA:
- The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC.
- The description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity.
The EBA rejects the case law of Boards that do not refer to the description and drawings when interpreting a claim, unless the claim is unclear or ambiguous.
For Question 2, the description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity.
The EBA notes that the current case law of the UPC, as exemplified in UPC Court of Appeal (NanoString Technologies -v- 10x Genomics), is consistent with the above conclusions.
Question 3 is inadmissible.
LEGAL BACKGROUND
Article 69 EPC states that:
- The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.
- For the period up to the grant of the European patent, the extent of the protection conferred by the European patent application shall be determined by the claims contained in the application as published. However, the European patent as granted or as amended in opposition, limitation or revocation proceedings shall determine retroactively the protection conferred by the application, in so far as such protection is not thereby extended.
Article 84 EPC states that the claims shall define the matter for which protection is sought. They shall be clear and concise and supported by the description.
Read the full decision here.
EBA JUDGEMENT ON IMPORTANCE OF DESCRIPTION
The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC, and not only if a claim is considered unclear or ambiguous when read in isolation.
This decision allows examiners and opponents to pay greater attention to the description and figures, which may be unhelpful to applicants if the initial description was not drafted with the same care and attention as the claims. This could be a particular concern if an applicant relies too heavily on AI tools to draft their applications.
The decision also increases the importance of scrutinising the description prior to grant for inconsistencies that an opponent may later seize upon to challenge the patent, or that may lead to an unintended, narrow interpretation that cannot be broadened after grant.
The claims are the starting point and the basis for assessing the patentability of an invention. The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention, and not simply in instances of unclarity or ambiguity.Applicants should not focus exclusively on claim amendments as applications progress to grant. It is more important than ever to be alert to the possibility that the description and figures could support a contrary claim interpretation, and to take action accordingly.
If this case raises issues you’d like to seek advice on, we’d love to hear from you. Contact our EPO Opposition and Appeals team today.
