The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) has recently considered questions relating to the use of the description and drawings of a patent specification when interpreting the claims. The answers to these questions are fundamental to the assessment of whether an invention is patentable, with claim interpretation central to a determination as to whether a prior disclosure is inside or outside the scope of the claims.
The questions are set out in more detail below, and the response of the EBA is expressed in decision G 1/24. In summary,
"The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC. The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation".
This will generally be seen as a simple and logical position for the EPO to take, and addresses some perceived inconsistencies in prior case law from the EPO's Technical Boards of Appeal. Encouragingly, the EBA's decision is (deliberately) consistent with the positions of both national courts and the Unified Patents Court, in which litigation of patents granted by the EPO may take place.
Background
There are many cases in which the patent drafter has a particular
intention in mind when using specific claim language to cover an
invention. The selected terminology may be the best way to express
the invention concisely, but other literal interpretations of that
terminology may also exist in different contexts that are further
removed from the invention. In such cases, the description and
drawings are typically used by the drafter to provide guidance as
to the meaning which is intended in a particular case.
There are also situations in which selected terminology may have a more established meaning in a technical field, with fewer alternative interpretations generally available. Nevertheless, the drafter may wish to deviate from an established meaning in a particular patent application by providing a particular definition in the description and drawings which they intend to be used to interpret the claims. This situation is the basis on which a referral was made to the Enlarged Board of Appeal.
The Appeal
The Patent at issue in this litigation was European Patent EP
3076804 (Philip Morris Products S.A.), which related to a vaping
device. The claims as granted specify that an
'aerosol-forming substrate comprises a gathered sheet of
aerosol-forming material circumscribed by a wrapper'. The
term 'gathered' is defined in the patent, in the
context of a tobacco sheet, as denoting that the sheet 'is
convoluted, folded or otherwise compressed or constricted
substantially transversely to the cylindrical axis of the
rod'.
The Patent was opposed by Yunnan Tobacco International Co., Ltd, who submitted that such a definition would include a gathered sheet which had been disclosed in the prior art, and that the patent should be rejected as unpatentable. The Opposition Division took a different view, however, citing little more than a Wikipedia entry for the term 'gather' in the context of sewing, in which it is more widely used. The Opposition Division used the interpretation for 'gathered' as 'geometrically modified into a more complex shape', derived from the Wikipedia entry, as an analogy of how the patent should be interpreted, in the absence of a more established interpretation. The complexity of the geometric modification was interpreted to exclude, for example, the simpler rolling of a sheet (as was disclosed in the prior art), and as such, the claims were considered to be patentable and the opposition was rejected.
The rejection of the opposition was appealed. In its consideration, the Technical Board of Appeal identified diverging lines of case law as to when the description should be taken into account when interpreting an allegedly clear term, and referred the following questions to the EBA:
1. Is Article 69(1), second sentence, EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?
G 1/24 Answer: No
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?
G 1/24 Answer: Yes, always
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?
G 1/24 Answer: Dealt with in answer to question (2).
The Protocol on the Interpretation of Article 69 EPC is an integral part of the Convention and was introduced by agreement of the member states in 2000 to help further harmonise patent law and to promote innovation and economic growth in Europe. The wording of the Protocol referenced in question (1) provides the possibility of interpreting the scope of protection of a European patent by reference to the description and drawings in a way which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties. The Protocol states that the protection should not be defined by strict, literal meaning of the wording used in the claims, nor that the claims provide only a guideline. However, the Protocol has been generally interpreted by the EPO as applying to determination of claim scope in infringements actions before national courts and the UPC, rather than in assessing patentability of claims during prosecution (whether this approach is justified is perhaps the subject of a separate debate).
The EBA considered that Article 84 EPC, requiring the claims define the matter for which protection is sought, is the only credible alternative as a legal basis for claim interpretation to assess patentability, but that this provides only an instruction as to the formal requirement of the content of a claim, rather than guidance on its interpretation.
Despite the resulting absence of clear legal basis for claim interpretation in the EPC, the EBA does note that consistent principles can be derived from the case law.
Firstly, it is established that the claims provide a starting point. Secondly, divergence in case law as to whether the description and drawings should always be considered, or only in the event of ambiguity or a lack of clarity, should be resolved in a way which avoids divergence from the practice of national courts and the UPC, and which avoids conflict with the Protocol, by rejecting the interpretation that the description and drawings should only be considered in the event of ambiguity. Further, the EBA notes that the consideration that the finding that a claim is clear and unambiguous is an act of interpretation, not a preliminary stage to such interpretation, such that the identification of a reason to justify consideration of the description and drawings is not logical.
Conclusion
As a consequence, the importance of the content of the description
and drawings of a patent specification is confirmed. Definition of
terminology must be carefully considered, particularly in cases
where such definitions diverge from those which are more widely
established. If a term in a claim has a clear meaning, a broader
definition in the description may cause a claim to lack
patentability. As an aside, the interpretation of the Opposition
Division in this case of the term 'gathered' from the field
of sewing is an interesting exercise in how a widely established
meaning of a term might be derived.
The relationship between the description and drawings and the claim language must also, as is being considered via a growing body of EPO case law, be considered to ensure that there is no conflict resulting from amendment of the claims during prosecution, in which description wording might, for example, affect the patentability of a claim via its effect on the interpretation of the claim wording. Further, such a conflict in meaning may have implications when testing if an amendment is supported by the application as filed (Article 123(2) EPC) or if the claim scope has been broadened after grant in opposition proceedings (Article 123(3) EPC). There may, therefore, be an increased focus on clarity of terminology during prosecution as a result of this decision.
While there are consequently practical points to note in terms of how patent specifications should be drafted, the overriding alignment of this EBA's decision with the harmonisation philosophy underlying the EPC is exceptionally positive, and the simplicity and logic of the EBA's decision is to be commended.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
